Grace Teoh explains the potential hazards of tattooing.
 
Apparently, there’s a saying among tattoo artists that goes: “You think it, I ink it”.
 
Typically, tattoos are obtained as a graphic self-expression by the individual. The designs are usually decided in one of the following three ways: one, the individual has the exact idea of a design to be used, e.g. logos or simple drawings; two, the individual has a concept and works with the tattooist to finalise the design; and three, the tattooist has carte blanche to design the tattoo for the individual.
 
A recent development in international copyright law indicates that copyright protection may extend to tattoo designs. This is unsurprising, given that the two main criteria of copyrightable artistic works, i.e. originality and fixation, appear to be fulfilled by tattoo designs.
 
So, how will the Malaysian courts view this unorthodox development?
 
COPYRIGHTABLE?
 
Section 7(3) of the Copyright Act 1987 provides that an artistic work shall not be eligible for protection unless it has fulfilled the prerequisites of originality and fixation.
 
Fixation simply means that the work must be reduced to a material form, i.e. the embodiment of the work is in a sufficiently permanent form which permits the work to be communicated. Arguably, tattoos fulfil this requirement, wherein the skin is the canvas for the graphic art.
 
The courts consider originality in the expression of the idea, not the originality of the idea itself. In Nordic Water Products Aktiebolag & Anor v Pumpen Environmental Sdn Bhd [2010] 7 AMR 523, it was held that the determination of “originality” does not include evaluating the creativity, novelty or uniqueness of the work itself, but “the time, effort, skill and labour expended by the author” in the creation of the work. Great news for Ryan Fitzgerald, the tattooist who allegedly inked an image of a pile of excrement with flies buzzing around it on his ex-girlfriend, as he may be able to claim copyright and deny others from copying his “shitty” creation.¹
 
However, in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, the English courts held that “slavish copying”, no matter how laboriously and skilfully done, would not equate to “originality”. So, just because one were to skilfully and laboriously replicate every last pixel of Da Vinci’s Last Supper as a tattoo on a thigh, it is unlikely that the work will be deemed “original”.
 
WHO OWNS IT?
 
Assuming that one’s tattoo fulfils the originality and fixation criteria - who owns it and gets to monopolise it; the individual or the tattooist? One would assume that the individual owns it - but one may be wrong, according to Victor Whitmill, Louis Malloy and Chris Escobedo.
 
Whitmill is the tattoo artist of Mike Tyson’s tā moko-inspired facial tattoo who filed a suit in the US against Warner Bros Entertainment for the alleged unauthorised reproduction of said tattoo in the movie “Hangover II”. During the interlocutory hearing for an injunction to stop Warner Bros from releasing the movie last summer pending the outcome of the suit, US District Judge Perry denied the motion for an injunction as Whitmill had not fulfilled the US equivalent of the American Cyanamid test, but noted that Whitmill was likely to win the suit.² Unsurprisingly, Warner Bros sought a settlement with Whitmill soon after. Apparently, the Maori tattoo experts take offense at Whitmill’s claim, as it is contended that Tyson’s tattoo was taken from tā moko designs.³
 
Malloy, the artist of nine of David Beckham’s tattoos, reportedly threatened the Beckhams with a copyright infringement suit when he caught wind that Beckham’s famous tattoos were about to be prominently displayed in advertisements.⁴ 
 
Escobedo is the tattooist of Carlos Condit’s lion tattoo on his torso, which was reproduced in THQ’s Ultimate Fighting Championship game that featured Condit. Escobedo recently sued THQ for copyright infringement in the alleged unauthorised reproduction of the lion tattoo on the game character resembling Condit.⁵
 
SOUNDS LEGIT? SEEMS SO
 
Under Malaysian copyright law, authorship and ownership are intertwined matters. According to Section 3 of the Copyright Act, authorship in artistic works other than photographs is deemed to vest in the artist. Generally, the author of the copyrighted work is considered the owner of the same - except in instances of employment, commission, consultancy, and joint undertakings. Ownership in these exceptions depends on the facts of the case.
 
In the circumstance where the individual and the tattooist contributed originality to the final tattoo design, it is arguable that both have joint authorship and thus joint ownership in the copyrighted work.
 
But, what if the tattooist had designed the tattoo for the individual? It is likely the courts would find that authorship vests in the tattoo artist - but is that the final argument in infringement suits?
 
DO I OR DON’T I (OWN IT)?
 
In Warner v Gestetner [1988] 4 EIPR D-89, the plaintiff was commissioned to develop a brand image for computer software for the purpose of an exhibition. Post-exhibition, the defendant continued using the drawings for promotional purposes and the plaintiff sued for copyright infringement. The court interpreted business efficacy in the arrangement and found that there was an implied term for unrestricted right to the use of the drawings.
 
Drawing an analogy, especially in situations where the tattooist had specially designed the tattoo for the individual, it would not make commercial sense for the individual to then be hit by lawsuits each time his inks are inadvertently featured. It would be rather odd that each time an individual is about to get inked, the tattooist and the individual would have to haggle over the terms of ownership and/or licence first.
 
This argument may not hold water however, if the tattooist did not design a new unique tattoo for the individual, as it cannot be said that the individual had commissioned the tattooist for the piece of work.
 
One wonders what Julia Gnuse, Tom Leppard, Horace Ridler and Etienne Dumont would say, as some of the people who own the most ink. These individuals are famous for literally being covered from head to toe in tattoo designs, some unique and some not so. They are regularly photographed, and the subjects of the photographs are the tattoos. Do they get threatened with lawsuits by their tattooists too?
 
WHAT CAN I DO WITH IT?
 
Section 13(2) of the Copyright Act provides a series of defences for the use of copyrighted material. In scenarios with Malaysian Whitmills, Malloys and Escobedoes, individuals could argue the tattoos are parody or pastiche of the original work, or even incidental inclusions in the larger picture of things. The key to these defences appears to be the fact that the individuals are not making a profit from the copyrighted work.
 
Finally, even if one has ownership in a piece of artistic work, one should still practice caveat emptor. There exists a small impediment to one’s exploitation of the artistic work, known as moral rights.
 
Moral rights include the right of acknowledgment as author, the right against false attribution, and the right to prevent derogatory treatment of the copyrighted work which would affect the author’s reputation. A moral right is not transferable nor can it be contracted out of.
 
In Syed Ahmad Jamal v Dato’ Bandar Kuala Lumpur [2011] 2 CLJ 569, the plaintiff, a renowned artist was commissioned in 1985 to complete a sculpture that was subsequently named “Lunar Peaks”. In 2000, the defendant carried out various modifications, including replacing glass slabs with stainless steel plates, replacing deep blue tiles with black tiles and adding chequered black and white tiles to the external landscape surrounding the sculpture. The court found that the plaintiff’s moral rights had been offended and awarded aggravated damages to the plaintiff in consolation.
 
In terms of tattoos, what would be considered an infringement of moral rights? What if the tattoo artist had inked a glorious gold dragon on the smooth skin of a youngster, and the youngster as well as the tattoo are frequently featured as the tattooist’s best work; then several years later when age and all its peculiarities catch up, turns the dragon into a fat faded yellow earthworm? Could the tattooist sue for derogatory treatment of the copyrighted work?
 
Following Syed Ahmad Jamal, it may be that such deterioration of the work would be considered offensive to the tattooist’s moral rights. But will the courts assume to tell individuals how to care for their physical bodies? Perhaps Malaysia will have its very own Honourable Judge Judy, the televised American judge who is infamous for her acerbic pearls of wisdom, before such a feat is explored.
 
‘CHOP’ DULU?⁶
 
On a side note, the Intellectual Property Corporation of Malaysia (MyIPO) launched the voluntary copyright notification system in June 2012. While copyright protection is automatic under the Berne Convention which Malaysia subscribes to, copyright owners (like tattooists) may wish to put the public at large on notice by filing a notification of copyright and depositing a copy of the eligible work with MyIPO. The process is merely a procedural one and does not involve the examination of the eligibility of the work. A certified extract of the Register of Copyright is prima facie evidence of ownership.
 
CONCLUSION
 
Admittedly, not all tattooists are as zealous as Whitmill, Malloy and Escobedo in protecting their work, but the temptation is still there, especially when the defendant has deep pockets. So, if one is thinking of getting a tattoo one of these days, before any court of law makes up its mind on this issue, one may wish to consider clarifying one’s position with one’s chosen tattoo artist first (especially if one is of, or hoping to gain, fame).

Endnotes –
 
¹  “Tatt-poo for Cheating.” The Sun 29 November 2011 Web 5 February 2013
²  “The Hangover II Must Go On: Tattoo Artist Denied Injunction in Mike Tyson/Tattoo Copyright Suit against Warner Brothers”. Travis Burchart, Lexis Nexis. 27 May 2011 Web 27 February 2013.
³  “Maori Angry About Mike Tyson's Tattoo Artist Claiming To Own Maori-Inspired Design”. Mike Masnick, Techdirt. 26 May 2011 Web 27 February 2013.
⁴    “Exclusive: I Own Beck's Tattoo … and I'll Sue.” The Mirror 27 June 2005 Web 27 February 2013.
⁵  Christopher Escobedo v. THQ Inc., 2:12-cv- 02470-JAT, U.S. District Court, District of Arizona (Phoenix). The cause papers filed on 16 November 2012 can be found at: http://randazza.files.wordpress.com/2012/12/escobedo-complaint.pdf
⁶ “Chop dulu” is a Malaysian slang which is equivalent to “calling dibs”.