After showing (nearly) everything in ESPN The Magazine’s Body Issue[1] and on the cover of GQ Magazine[2], San Francisco 49ers quarterback Colin Kaepernick’s tattoos are getting almost as much attention as his play is – and not just from the general public. When a player becomes well-known for some aspect of his play, his photos, including his tattoos, are reproduced everywhere, including advertisements, magazines, and video games. If a specific tattoo is especially noteworthy or prominent, the tattoo artist who designed it and/or inked it may feel he deserves a benefit for doing so. The National Football League has reportedly encouraged its players to get waivers from their tattoo artists[3], to ensure that the players own the rights to the designs applied to their bodies. The idea is to avoid a situation like Rasheed Wallace, a National Basketball Association player whose prominent and distinctive arm tattoo was the focus of a Nike advertisement. Wallace’s tattoo artist sued him, along with Nike and the advertising agency[4]. The case settled[5], so no firm guidance was provided by any court. The topic has been the subject of several US blogs[6], and if you read the comments, it becomes very clear that this is still an open legal question, although many commentators know what the result would have been, or what they think it should have been.

The controversy in the US seems mostly to be based around the relatively restricted definition of “work for hire”, which is the knee jerk reaction to many tattoo artists’ claims. That provision of 17 U.S.C. §101 reads:

A “work made for hire” is—

(1) a work prepared by an employee within the scope of his or her employment;

or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

But what is the situation in Canada? Does the Canadian Football League Players Association need to warn its players about releases from their tattoo artists?[7] Should Brett Lawrie, who has arguably the most recognizable and plentiful tattoos on the Toronto Blue Jays[8], be talking to all of the artists who may have inked him at one time or another?

The relative provisions of the Canadian Copyright Act[9] read:

13.(1) Subject to this Act, the author of a work shall be the first owner of the copyright therein.

(3) Where the author of a work was in the employment of some other person under a contract of service or apprenticeship and the work was made in the course of his employment by that person, the person by whom the author was employed shall, in the absence of any agreement to the contrary, be the first owner of the copyright… .

So the general rule is that the tattoo artist, who is creating the work on the athlete’s skin, is the owner, not the athlete. Even if the tattoo artist is a freelancer, he or she is likely to be an independent contractor, given the general tests applied to distinguish between contracts of or for services[10]. Under the exception provided by ss.13(3), and assuming that the tattoo artist is employed by a tattoo studio, this seems to give ownership of the design embodied in the tattoo to the studio – still no help to the athlete. It looks like athletes who get inked in Canada should be looking for actual “agreements to the contrary” from their tattoo artists, setting out that the athlete owns the design in his tattoo.

There are likely other considerations, such as who actually designed the tattoo – did the athlete bring his general idea to the tattoo artist, who then created the final version? On the other end of the spectrum, did the athlete design the art himself, or have it done by someone else entirely? Or did both parties have joint input into the design?

However, even with such an agreement in place, the statutory inclusion of moral rights[11] gives Canadian creators the right to the integrity of the work. There is therefore an issue regarding what would happen if an athlete chose to remove a well-recognized tattoo, or hired another artist to alter or cover it up? Just another reason to remember that tattoos are permanent and that it is best to sort out all of the relevant rights before the dye is cast[12].

[1] http://espn.go.com/espn/bodyissue

[2] http://www.gq.com/entertainment/sports/201309/colin-kaepernick-cover-september-2013?currentPage=2

[3] http://www.thescore.com/home/articles/1288673-nflpa-tells-players-to-get-waivers-from-tattoo-artists

[4] Complaint, Reed v. Nike, Inc., No. 05-CV-198 BR (D. Or. Feb. 10, 2005); cite provided in http://law.lclark.edu/live/files/9636-lcb102harkinspdf

[5] Stipulation of Dismissal with Prejudice, Reed v. Nike, Inc., No. 05-CV-198 BR (D.Or. Oct. 19, 2005); cite provided in http://law.lclark.edu/live/files/9636-lcb102harkinspdf

[6] See e.g. http://www.forbes.com/sites/darrenheitner/2013/08/14/questions-concerning-copyright-of-athlete-tattoos-has-companies-scrambling/; http://freakonomics.com/2011/05/02/can-you-copyright-a-tattoo/; http://the1709blog.blogspot.it/2011/04/tattoos-and-moral-rights-couple-of.html; http://www.techdirt.com/articles/20110408/03173713822/who-owns-copyright-tattoo.shtml

[7] http://www.cfl.ca/article/story_written_all_over_new_eskimo; http://www.torontosun.com/sports/football/2010/11/03/15951736.html

[8] http://nationalpostsports.files.wordpress.com/2012/04/0404lawrie1.jpg?w=620

[9] R.S., c. C-30

[10] See e.g. 671122 Ontario Ltd. v. Sagaz Industries Canada Inc., [2001] 2 SCR 983 at para. 47: “The central question is whether the person who has been engaged to perform the services is performing them as a person in business on his own account. In making this determination, the level of control the employer has over the worker’s activities will always be a factor. However, other factors to consider include whether the worker provides his or her own equipment, whether the worker hires his or her own helpers, the degree of financial risk taken by the worker, the degree of responsibility for investment and management held by the worker, and the worker’s opportunity for profit in the performance of his or her tasks.”; <http://canlii.ca/t/51z6> retrieved on 2013-09-11

[11] R.S., c. C-30, s. 14.1

[12] Thanks to Adam Kay.