On February 1, 2016, Solid Oak Sketches, a company that buys the rights to various tattoo artists’ works, filed a civil complaint alleging copyright infringement against the companies behind the popular “NBA 2K” basketball video game for depicting images of its tattoos on NBA stars such as LeBron James in the game. See Complaint at ¶ 11. Citing social media posts and online news articles, the complaint attributes the “monstrous” first week sales of the game to improved graphics, which include “smoother looking character models and more individualized tattoos.” See Complaint at ¶¶ 13–16. This case is not the first to raise this issue, but the case law is sparse on how courts might rule due to the fact that these type of cases typically settle. However, there is one case that proves informative.
In Whitmill v. Warner Bros. (“Whitmill”), No. 4:11-cv-752 (E.D. Mo. 2011)., Victor Whitmill (“Whitmill”), the tattoo artist who inked the infamous tribal tattoo on Mike Tyson’s face sued Warner Brothers (“Warner”) for their unauthorized use of the his work in the movie The Hangover 2, the sequel to the movie The Hangover. Tyson signed a release stating the tattoo was the intellectual property of Whitmill, who was doing business as Paradox-Studio Demographics. See Complaint at ¶ 7. Tyson appeared in The Hangover with the tattoo on his face, but the issue was not Warner’s depiction of Tyson with the tattoo in that movie, but rather Warner’s use of the tattoo in The Hangover 2 in which the character Stu Price (played by Ed Helms) got an exact replica of Tyson’s tattoo on his face during a wild night of drinking. According to the complaint, Warner did not get Whitmill’s permission to reproduce the work in the movie, and Warner used the design extensively in promotions for the movie. In his motion for a preliminary injunction, Whitmill asserted that he worked hard to establish his respectable reputation by being responsible and valuing client safety, and that Warner’s use of his work threatens his reputation because it depicted an irresponsible tattoo artist giving a tattoo to an extremely intoxicated person. He further asserted that use of his work infringes upon his exclusive rights in the original work, which is required to protect his clients.
Although the case eventually settled, the court’s Hearing for Preliminary Injunction in which it denied Whitmill’s motion provides some guidance as to how courts might approach cases like Solid Oak. See Hearing on Motion for Preliminary Injunction, 2011 WL 11819138 (E.D. Mo. May 24, 2011). The court applied the four factor test for a preliminary injunction: (1) likelihood of success on the merits; (2) whether plaintiff is threatened with irreparable harm; (3) the balance of the equities; and 4) the public interest. Id.
With respect to likelihood of success on the merits, the court stated that, “I think plaintiff has a strong likelihood of prevailing on the merits for copyright infringement.” Judge Perry went on to say that, “[o]f course tattoos can be copyrighted. I don’t think there is any reasonable dispute about that. They are not copyrighting Mr. Tyson’s face, or restricting Mr. Tyson’s use of his own face, as the defendant argues, or saying that someone who has a tattoo can’t remove the tattoo or change it, but the tattoo itself and the design itself can be copyrighted, and I think it’s entirely consistent with the copyright law, and after all, in this case, Mr. Whitmill and Mr. Tyson did have a contract dealing with this issue, which is totally consistent and appropriate under copyright law.” Id. The judge rejected Warner’s fair use and parody arguments due to the fact that there was no change to the tattoo whatsoever; it was an exact copy. Id.
The Judge also found that there was irreparable harm to the plaintiffs. Id. The court noted that there was no presumption that “simply because there is a finding of likelihood of success on copyright infringement, or even a finding of actual copyright infringement that there must be an injunction, or there must be a finding of irreparable harm.” Id. However, the fact that the artist “lost control over image he created” was enough to show that the plaintiff had suffered irreparable harm and was in danger of suffering more irreparable harm. Id.
However, the court found in favor of Warner on the balance of the equities. The court’s reasoning was that “I look at Warner Brothers, they are a very big player, and they are going to lose a lot of money, but when you consider all of those things, I do think that Warner Brothers' losses if I were to enjoin them outweighs the harm to Whitmill if I were not.” Id.
Lastly, the court turned to the public interest analysis and decided in favor of Warner. The court noted that likelihood of success on the merits of the copyright infringement claim and public interest typically goes hand-in-hand because the public interest favors copyright protection, however this case was different due to the fact that, in addition to Warner, people who were not parties to the case might loose a lot of money if the injunction was granted. The court noted that “[t]he public interest does favor protecting the thousands of other business people in the country as well as Warner Brothers, and not causing those non-parties to lose money, and I think it would be significant, and I think it would be disruptive.” Id.
After weighing the four factors together, the Judge denied the preliminary injunction. Id. But the court subsequently stated “I do think that the plaintiff has a strong likelihood of success on the merits, and will probably win the case at trial for money damages.” Id. This may be an indication for plaintiffs in these types of suits that the preliminary injunction will typically weigh in favor of the party who is at risk of losing more money, but Judge Perry’s words also suggest that plaintiffs such as Solid Oak might have a good chance at winning money damages at trial. That may be why these cases typically settle. For now, Whitmill provides some guidance in this interesting area of the law.
If the Judge is right that cases such as Solid Oak and Whitmill are likely to succeed on the merits, then some argue that this poses risks to public policy. One article argues that granting copyright protection for tattoos on humans might allow the copyright owners to exercise too much control over that person. The article further argues that this may implicate the Thirteenth Amendment’s prohibition against involuntary servitude. Id.
All this suggests that before a high profile public figure gets a tattoo that is visible to the public, they may want to have a discussion (and sign a contract) with their tattoo artists about who owns the rights to the tattoo(s) and the scope of those rights. If discussed beforehand, there may be an opportunity for both parties to benefit from the agreement.
This can be a difficult conversation due to the complexity of intellectual property law. If you have general questions about this subject, or if you need specific help with drafting and negotiating complex intellectual property agreements, please give us a call at 650-271-9395, or email us at email@example.com.
Written By: Matthew Trejo
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