In Alexander v. Take Two Interactive Software, Inc. the Southern District of Illinois was tasked with answering the question: Who owns the rights to a tattoo — the person who wears it, or the person who inked it?
Catherine Alexander is a tattoo artist who made a motion for partial summary judgment against Take Two for copying the design on professional wrestler Randy Orton’s back — and depicting it within a popular video game. Take Two responded by filing a motion for summary judgment.
In cases like this, the burden is on the infringer to demonstrate that any such use was authorized by the work’s “author” (here, a visual artist). Alexander’s motion for partial summary judgment was confined to whether, as a matter of law, the video game had copied Alexander’s design — that is, Orton’s tattoo.
Apparently, Randy Orton is an important figure in the fictitious world of World Wrestling Entertainment, or WWE — formerly the WWF. Take Two partnered with WWE to produce a series of annual video game releases. As part of that, the WWE and Take Two argued, they merely had included Orton’s readily identifiable tattoos, including a sleeve on each arm and a prominent tribal pattern on his upper back inked by the plaintiff.
Take Two’s defense came in three parts:
- It had an implied license to use the tattoo designs;
- Use of the designs in the video game was protected by the fair use doctrine; and
- Whatever use there was, was de minimis.
According to Take Two, the implied license flowed from the fact that it was simply replicating Orton’s actual image, which meant including all of his tattoos. Previously, Alexander seemed to have not objected to the use of her tattoos in photos of Orton. However, she argued that she had never licensed her rights for any of her other clients to use her artwork in video games. The court found there was a question of fact about whether any such license were implied.
In asserting fair use, the defense cited Bill Graham Archives v. Dorling Kindersley Ltd. (2nd Circuit, 2006). In that case, the publication of Grateful Dead concert posters and illustrated ticket stubs in a coffee table book was deemed transformative because such use was for a different purpose; the original posters were meant to help sell tickets to a concert but the book was meant to be a showcase of “historical artifacts.” However, the court determined, that’s not what was going on in this case. The gaming company was trying to have a realistic portrayal of Orton. And by doing that, Take Two was reproducing the very artwork that made him identifiable. There was nothing transformative about that.
As for the fair use determination, the court analyzed whether the market for the work (here, the tattoos) would be impacted by the allegedly unauthorized use. Alexander asserted that while she was not materially impacted, there was a potential for lost income — for her and other artists, arguing that it would create a trend where video game manufacturers would take advantage of, and fail to pay licensing fees for, copyrighted works.
One more problem with the fair use defense is that, if applicable, Take Two should have only been using the minimum amount of the work necessary to carry out the purpose of including the work. Here, they used the entire illustration (granted, on a very small scale) to make the wrestler known to the digital audience. Related to fair use, Take Two attempted to defend that its use of the tattoos was de minimis, but the court held that “de minimis” means that a very small part of the work was copied, rather than the infringed work was a very small part of the infringing video game. In this case, they used the entire tattoo. A small picture, perhaps, but way too much of it.
The court ruled in favor of the plaintiff for summary judgment with regard to copying, and shot down Take Two’s implied license, fair use, and de minimis defenses. It was unclear whether, according to the judge, the artist and the wrestler ever discussed any implied license to display the tattoos in video games, independently of those actual arms and back muscles. That’s a question of fact that will need to be settled at trial.
This reminded me of the distinction between a compulsory license in music and synchronization rights. If a performer is just covering a song, all that’s required is to pay the underlying composer a statutory rate for use of the song. However, if someone were to take that song and attach it to anything in video — whether it’s a movie or a YouTube video or anything else — synchronization rights kick in, and technically the user is required to negotiate a license to use the music. Similarly, representation in a video game is above and beyond taking a photograph of the person. The video game incorporates into an audio/video experience the image of the person and includes the tattoos to enhance the realism of the game.
In its ruling, the court noted that a representative of WWE had “laughed at” Alexander when she approached them, claiming that she had no grounds to enforce any copyright in her illustrations— and that the WWE could do whatever it wanted with Orton’s image, including “his” tattoos. Alexander was offered $450 to drop her complaint, which she refused. (Note to practitioners: It’s a bad idea to laugh at someone who may have enforceable rights.) This case helps to confirm my notion that 90% of litigation is commenced by and fueled by at least one party feeling disrespected. Don’t assume, just because you’re big, bad, and muscular, that the will of an artist is not a force with which you may have to contend.
Mark S. Kaufman
Kaufman & Kahn
ka*****@*********hn.com
10 Grand Central, 155 East 44th Street
19th Floor
New York, NY 10017
Tel. (212) 293-5556
Fax. (212) 355-5009