There are many reasons why people get tattoos, the most common being memories, reinforcement of identities, reminders of important events, facts or values; or simply, for the love of art.
While most people have only one or two “ink wounds” there are some with copious amounts…like Rihanna, who has been said to be sitting on a whopping 21 and showing no desire to quit any time soon.
Tattoos may look intriguing, fun or even be said to satisfy some kind of weird addiction such as in the case of Riri, but have you ever considered that your tattoo could land you in trouble with the law?
There are two recent legal battles demonstrating this point. The first involves the production company, Warner Bros. Entertainment, Inc., which was sued for copyright infringement by the designer and tattoo artist of Mike Tyson’s facial tattoo because they had planned to release the movie “The hangover 2” with a scene where one of the actors receive a nearly identical tattoo to Mike Tyson’s. In the second case, the creators of the NBA 2K video game were sued for copyright infringement by tattoo artists for some high profile athletes such as Lebron James and Kobe Bryant for incorporating tattoos they had created on one of their video games.
Bringing this all back to South African Law, traditional trade mark infringement takes place when an owner of a registered trade mark can show that the alleged infringing mark is identical or similar to the registered mark, applied to identical or similar goods and is likely to cause confusion or deception. In the case of well-known trade marks essentially the same rules apply but one need not prove that the goods/services are identical or similar and thus, likelihood of confusion or deception is not a requirement.
Since a tattoo is inked onto your skin, which forms a part of your body as opposed to any particular goods or services – would one be likely to succeed in trade mark infringement? Infringement requires that the use complained of must be used in the course of trade, thus, it is difficult to see how a COCA-COLA would succeed in a case for infringement against the ordinary Joe, who decides to ink the COCA-COLA logo across his chest, and who does not display this or use it in any course of trade or advertisement. On the other hand, if a famous athlete inks the logo of a sportswear brand onto his arm, the outcome is likely to be different as public figures, especially athletes, often use their physical appearance and bodies to advertise or market certain goods or services that are related to their careers. In this context, use of a tattoo of a brand will be likely to constitute trade mark infringement as it will be use in the course of trade and the public is likely to interpret such use as meaning that the athlete is authorised to use the brand or is at least associated with it.
Where trade mark infringement will be of no avail, for example, because the unauthorised party is not in the course of trade, copyright infringement should come to the rescue.
In order to invoke and succeed in copyright infringement, you only need to prove that you are a qualified person in terms of the Copyright Act, that the work is original and that it is in material form.
So ultimately, how could this entire dilemma be avoided? In copyright, the general rule is that he who creates it owns it, but there are certain exceptions to this rule, one of which is that if a person commissions the painting or drawing of a portrait, that person will own the copyright in the work. While it may be an option to argue, in the case of a tattoo that constitutes a portrait of a person, that the copyrighted work belongs to the ‘tatooee’ under this exception; it would be safest, in all cases concerning works entitled to copyright protection, to ensure that the creator of the tattoo assigns copyright in the work to you to ensure that the artist doesn’t start inking your wickedly cool design onto any other ink-fiends that come their way. After all, I am sure that the last thing you need is to have trade mark or copyright issues tattooed on your skin.
Author: Zama Buthelezi, Attorney in Trade Mark and Anti Counterfeiting Department, KISCH IP