It’s critical for anyone planning an estate, whether their own or someone else’s, to do a comprehensive analysis of anything that could be considered property of that estate upon the testator’s death. After all, section 2 of Ontario’s Succession Law Reform Act states that a “person may by will devise, bequeath or dispose of all property (whether acquired before or after making his or her will) to which at the time of his or her death he or she is entitled either at law or in equity”. Believe it or not, that seems to be applicable to the intellectual property rights of tattoo artists.
Copyright in Tattoos Generally
A few years ago, my Fasken colleagues Mark Penner and Olivia McKenzie wrote a bulletin on tattoos and copyright law (and as a tattoo enthusiast myself, I was super jealous that they didn’t ask me to help). The bulletin took a look at high-profile cases in the United States of America where tattoo artists were (and still are) suing their famous clients, such as the boxer, Mike Tyson, the football player, Colin Kaepernick and the professional wrestler Randy Orton. The lawsuits stem from the notion that each such person’s tattoos have been “reproduced”, either through a photographic medium (like a film or television show), or a video game, for profit. Of course, copyright law generally bars the reproduction of a copyrighted work without the consent of the author of the work, which is the basis for these lawsuits.
Of particular note is Whitmill v. Warner Bros. Entm’t the case that involved Mike Tyson, and the depiction of his face tattoo on the face of one of the characters in the hit comedy film The Hangover Part II. In that case, the plaintiff tattoo artist sought an injunction against the defendant film producers to prevent the release of The Hangover Part II. Note that while Mike Tyson was in the film, the plaintiff tattoo artist’s claim was on the basis that reproducing the tattoo on one of the other character’s faces was an unauthorized reproduction and thus copyright infringement. While the tattoo artist was unsuccessful on the injunction, Justice Catherine D. Perry, presiding over the United States District Court for the Eastern District of Missouri, stated in her reasons that “[o]f course tattoos can be copyrighted. I don’t think there is any reasonable dispute about that”. The case never went to trial, as the parties ended up settling.
Recently, in March 2020, the United States District Court for the Southern District of New York ruled for the defendants Solid Oak Sketches, LLC v. 2K Games, Inc. The plaintiff tattoo studio argued that it had entered into exclusive license agreements with the tattoo artists who had inked tattoos on certain NBA players that the defendant video game publishers depicted in their NBA 2K series of video games. In depicting these players the game publishers recreated the players’ real-life tattoos through the use of 3-D modeling and texturing. The tattoo studio alleged that the reproduction of the tattoos was copyright infringement.
In that decision, the court found in favour of the defendants on various grounds, including that the reproductions were a de minimis use (i.e. they were such a small, almost insignificant part of the games), and that they were fair use (i.e. they were reproduced in a legally-authorized way akin to other manners of fair use in copyright law). However, perhaps the most notable argument from the defendants with which the court agreed was that there was an implied license from the tattoo artists to the NBA players to reproduce the tattoos, as the artists understood that they were tattooing NBA players and that the tattoos would be part of their likenesses.
That being said, it seems that Solid Oak Sketches, LLC was quite fact-specific, as it dealt with a video game, and not a more traditional medium like a photograph or a film. The court in that case also did not address the assumption by the court in Whitmill that “of course” there is copyright in tattoos. Therefore, it is arguable that in the U.S., tattoo artists may still have copyright in their tattoos (depending on the facts).
The situation in Canada is far more ambiguous. As my Fasken colleagues pointed out, there has been no significant case law in Canada addressing the notion of copyright in tattoos. That being said, there is much to suggest that the federal Copyright Act applies to tattoos. As my colleagues stated in their bulletin:
Copyright provides the owner of artistic, literary, dramatic or musical works with a set of exclusive rights, including the right to the reproduction of the work in any medium. These rights vest in the author of the work and include the right to produce and reproduce any translation of the work as well as the right to prevent others from doing so. According to the Canadian Copyright Act (the “Act”), copyright subsists “in every original literary, dramatic, musical and artistic work: that is fixed in a material form. Given that many tattoos are complex and clearly require a level of creative and esthetic judgment, they would reasonably be considered artistic works under copyright law. Assuming that the tattoo was not copied from another work, it would also be considered original. Since a tattoo inked on human skin is in a “material form, capable of identification and having more or less permanent endurance”, there is no reason why human skin should not be an appropriate medium for fixation. In defining “artistic work”, Section 2 of the Act uses the word “includes”, indicating an open list of possible mediums on which a work may be fixed. Where a tattoo meets all of these criteria, it is reasonable to conclude that a tattoo, as applied to human skin, would be considered a copyrighted work.
The bulletin also suggests that just because the recipient of the tattoo has paid for the tattoo, and is thus the owner of the physical tattoo, absent an explicit assignment of the copyright, it cannot be automatically assumed that the tattoo artist assigned copyright in the tattoo to the recipient. Thus, at best, the recipient has ownership of the physical tattoo, but not the right to reproduce the tattoo in any other medium without the consent of the tattoo artist.
Assignment of Copyrights
While there is nothing that definitively states that tattoo artists have an absolute copyright in the tattoos that they produce, the wording of the Copyright Act and the developing state of the law in the U.S. suggest that estate planning for a tattoo artist should take these potential rights into account. Thus, such estate planning should consider such copyright as an assignable asset just like similar legal rights, particularly in the event that the testator-tattoo artist’s beneficiaries feel compelled to enforce the copyright should the circumstances requiring such enforcement arise. This is especially relevant if the tattoo artist has tattooed athletes, models, entertainers or other public figures.
In treating this copyright as an assignable asset, it’s important to note that the Copyright Act provides a few limitations, primarily one which can be crucial in the case of a tattoo artist employed by a tattoo studio: the notion of who the “first owner” of a copyright is. Under subsection 13(1) of the Copyright Act, the author of a work is presumptively the first owner of its copyright. This, however, is subject to subsection 13(3), which states that where the author of a work was in the employment of some other person and the work was made during the course of their employment, the author’s employer will, in the absence of any agreement to the contrary, be the first owner (with certain exceptions for contributors to newspapers and magazines). Thus, it is important to review any agreements that tattoo artists have with their employers; if there is no agreement that the tattoo artist retains copyright in the tattoos that they create in the course of their employment with the tattoo studio, then the tattoo artist likely will not be able to assign those copyrights in their will.
If there is such an agreement, or if the tattoo artist is self-employed, then they should also be cognizant of any copyright they may have assigned during their life. Subsection 14(1) of the Copyright Act states that where the author of a work is the first owner of copyright, no assignment of the copyright is valid beyond 25 years after that author’s death, other than by will. At the 25th anniversary of the author’s death, the interest of the copyright reverts to the legal representatives of the author as part of their estate, and any agreement purporting to dispose of that reversionary interest is void. This is applicable in situations where the tattoo artist perhaps knew that they were tattooing a famous athlete, model, entertainer and/or public figure assigned the copyright (i.e. the ability to reproduce the tattoo) in that tattoo to that person. The recipient would automatically lose their assigned copyright 25 years after the death in the artist, unless the artist made provision for such assignment in their will. This scenario, while obscure, is still something to keep in mind for high-profile tattoo artists.
Lastly, note section 6 of the Copyright Act, which sets an ultimate term for copyrights at 50 years after the end of the calendar year in which the author dies. This term exists despite any assignment of the copyright via will. Note that the section states that this is after the death of the author, thus, even a tattoo studio that is the first owner of the copyright will lose that copyright at the end of the term imposed by section 6. If a tattoo artist anticipates that copyright in a given tattoo may, for whatever reason, be of significant value, then they should consider this term limit when planning on how to distribute it through their will.
Assignment of Moral Rights
In addition to traditional copyright, just as with any other copyright holder, tattoo artists may also have “moral rights” in any tattoo design that they create. Subsection 14.1(1) of the Copyright Act states that, subject to certain circumstances, the author of a work as “the right to the integrity of the work” and “the right […] to be associated with the work as its author”. Section 28.2 states that the right to the integrity of the work is infringed, to the prejudice of its author’s “honour or reputation”, when it is “distorted, mutilated or otherwise modified” or “used in association with a product, service, cause or institution”. Thus, section 28.2 would give a tattoo artist significant control over how an athlete, model, entertainer and/or public figure’s likeness is reproduced, as, for example, the tattoo artist could assert their moral rights and prevent the person showing the tattoo in an advertising campaign for an organization that they dislike or with which they disagree (such as for an alcohol or tobacco company).
Subsection 14.1(2) of the Copyright Act states that moral rights may not be assigned (during the author’s life), but may be waived in whole or in part. However, subsection 14.2(2) do dictate what happens to an author’s moral rights in a work upon the author’s death, stating that they may:
- be specifically bequeathed (in a will);
- where there is no specific bequest of these moral rights and the author dies testate in respect of copyright in the work, the person to whom copyright is bequeathed; or
- where there is no specific bequest of the moral rights or copyrights of a work, to “the person entitled to any other property in respect of which the author dies intestate”.
There are a few things to unpack here. First, it is important to note that copyrights and moral rights are separate. It seems more likely than not that the person who is to receive the copyright in a tattoo should also receive the moral rights in a tattoo, or vice versa, but there may be reasons why a testator-tattoo artist would want to separate them (perhaps related to the fact that the copyright may be more financially valuable than the moral right). Furthermore, note that “specific bequest” presumably includes the residue clause of a will, which, if properly drafted, captures all property owned by the testator not specifically bequeathed elsewhere in the will. Thus, copyrights and moral rights should only pass on an intestacy if there is no will or if the will does not contain in a residue clause. That being said, it would be prudent to specifically assign these rights in the will.
Finally, note that under subsection 14.2(1), moral rights in respect of a work subsist for the same term as the copyright in the work. This means that moral rights also cannot be enforced beyond a period of 50 years after the calendar year of death of the author. Do note that, under subsection 14.1(2), the beneficiary of moral rights will not be able to assign those moral rights during their life, but, under subsection 14.2(3), will be able to deal with those moral rights through their will in the same way that the author was able to upon their death.
While the theoretical copyrights and moral rights associated with tattoos are probably only practically enforceable in certain situations, every tattoo artist should account for these rights in their estate planning should a situation arise where such rights are being compromised. A further protection involves registering copyright with the Canadian Intellectual Property Office. While it is not necessary to do this to enforce a copyright or moral right, it does provide an evidentiary basis for the existence of such rights. Of course, note that such registration could deter potential customers, and should probably only be done when an artist first draws out a design, and not after they’ve already tattooed it!
That being said, there could very well be many tattoo artists out there who don’t know that they have these rights, or have not accounted for these rights in their estate planning. Of course, we don’t yet have certainty in this area of Canadian copyright law, but it may very well be the case where one day someone, whether a tattoo artist or a beneficiary under their will, will attempt to enforce these rights. It would be prudent to take a “better safe than sorry” approach to these rights, and “ink” them in a will.
 No. 4:11-CV-00752 (E.D. Mo., filed 4/28/2011) (ECF No. 46).
 No. 16-CV-724-LTS-SDA, 2020 WL 1467394 (S.D.N.Y. Mar. 26, 2020).