Here is an oldie but goodie from the worlds of sports licensing, which again reminds us that IP assignment agreements are not just for the rarefied world of lab researchers, but for the nitty gritty worlds of tattoo artists and technical foul prone power fowards as well.
Back when he was playing for the Portland Trail Blazers, basketball star Rasheed Wallace got an elaborate tattoo on his upper right arm depicting an ancient Egyptian royal family with the sun in the background (see photos here and here). For a fee of $450, Portland tattoo artist Matthew Reed created preliminary sketches of the tattoo for Wallace’s approval, then applied ink and needle to skin. Reed and Wallace signed a one page contract, but it was silent on who owned the intellectual property in the tattoo.
Wallace appeared in a Nike television commercial which focused on the tattoo in close up, and included an animation simulating the tattoo’s creation, with voiceover from Wallace explaining the meaning of the symbols.
Reed, surprised that his $450 creation was the focus of a multimillion dollar advertising campaign, sued Wallace, Nike, and its advertising agency for infringement of his copyright.
A person who creates intellectual property as an independent contractor generally owns that IP, in the absence of an agreement to the contrary. As mentioned, the contract between Reed and Wallace was silent on the issue of copyright ownership, so it could not be considered an assignment of copyright, and the tattoo did not fit one of the work made for hire categories, so it could not be considered a work made for hire. Since Reed was an independent contractor, the ownership of the copyright in the tattoo remained with him. Which meant that anyone who reproduced the tattoo without a license from Reed was infringing his copyright.
The lawsuit was settled confidentially, but it is likely that Reed walked away with a lot more than the original $450 fee.
So what rights did Wallace get for his $450? Wallace owns the physical manifestation of the tattoo, and has the right to display it to people in the same physical location, but has no right to make or sell reproductions, such as photographs or video, or to create derivative works, such as animations based on the tattoo. Similarly, the purchaser of a painting who does not obtain an assignment of copyright from the painter owns the canvas, and implicitly has the right to sell the original canvas or even destroy it, but does not have the right to make or sell copies of the painting on the canvas.
And it probably would not have helped Wallace’s case even if he proved that he conceived of the “idea” for the tattoo, because copyright does not protect ideas or concepts (e.g. the concept of an Egyptian royal family and a sun), only the expression of those ideas (e.g. an actual image of an Egyptian royal family and a sun).
Takeaway: when purchasing artwork, video, text, or other creative works that you may wish to make available to a broader audience, make sure that you have a written agreement with the seller/licensor either transferring ownership of the copyright to you, or licensing reproduction rights to you (coupled with a guarantee that he is indeed authorized to license those rights to you). Otherwise, you could get “tattooed” like Rasheed Wallace.