A jury in the District Court for the Southern District of Illinois in the case of Alexander v. Take-Two Interactive Software found that the depiction of tattoos on wrestler Randy Orton in a video game published by Take Two Interactive infringed the tattoo artist’s copyright in the tattoos. In this author’s personal opinion, the District Court got it all wrong.
Tattoo artist Catherine Alexander sued Take-Two and 2K Games in the U.S. District Court for the Southern District of Illinois for depicting tattoos that are actually on World Wrestling Entertainment wrestler Randy Orton in the video game WWE 2K. On a motion for summary judgment, Take Two made the same arguments that garnered it a win in Solid Oak Sketches v 2k Games. Those arguments were that (1) Take-Two’s use of the tattoos was authorized by an implied license, (2) the fair use doctrine insulates their utilization of the tattoos and (3) the tattoos constitute a de minimis part of the video game.
At trial, Alexander testified in 2009, that she contacted WWE’s legal department to negotiate a license for a possible faux tattoo sleeve product depicting her tattoo works. She testified that a WWE representative laughed at her and stated she had no grounds and that they could do what they wanted with Orton’s images because he was their wrestler. She further testified that WWE then offered her $450 for extensive rights to use and produce the tattoo designs on WWE products. Alexander testified that she declined the offer and advised WWE that she did not grant it any permission to copy, duplicate, or otherwise reproduce any of her designs. WWE and Take Two then released wrestling video games “WWE 2K16”, “WWE 2K17”, and “WWE 2K18”, all of which featured Orton depicted with his tattoos.
Take Two had good reason to believe in its implied license defense. In Solid Oak, the court found that the sports figures featured in the video game NBA 2k had an implied license to use the tattoos on their bodies as elements of their likenesses and the video game publisher’s right to use the tattoos in depicting the players derived from this implied license. A crucial element of the court’s finding of an implied license in Solid Oak was that the tattoo artist knew their subject was likely to appear in public, on television, in commercials, or in other forms of media.
Alexander claimed that she has never given permission to any of her clients to use copies of her tattoo works in videogames and argued that the WWE and Take Two are conflating Orton’s rights to his own likeness and right to appear in media with an implied license to use her copyrights in unlimited and other commercial ways, such as in video games. In the ruling on Take Two’s motion for summary judgment, the court found that it wasn’t clear whether Alexander or Orton actually discussed whether and to what extent Orton had permission to copy and distribute the tattoos and whether any implied license would include sublicensing rights. On this basis, the District court denied summary judgment on this affirmative defense.
The District Court also found that the use was not fair use. The key to a finding of fair use is whether the new use is transformative; does the new work merely “supersedes the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message. Take Two argued that its use of the copyrighted tattoos was transformative. Take Two argued that Alexander inked the tattoos at Orton’s request to reflect his personal expression whereas Take Two depicted the tattoos in WWE 2K to depict Orton realistically. The District Court found a factual dispute in this case as to Take Two’s purpose in using the tattoo works. Alexander contended she created the tattoos for the purpose of displaying them on Orton’s body and that Take Two used the tattoos for the same purpose; to display them on Orton’s body in the videogames. The court accepted Alexander’s argument.
After the court’s ruling on Take Two’s motion for summary judgment, the matter proceeded to trial. Apparently, shortly before trial the District Court held that the de minimis use defense was not applicable. Then, it appears that the court refused to allow the jury to hear instructions on the implied license affirmative defense, even though neither party objected to the jury getting this instruction. Similarly, the court refused to allow the jury to hear instructions on the affirmative defense of waiver.
However, the jury did get instructions on fair use. However, as the Supreme Court recently reminded us all in Google LLC v. Oracle America Inc., Fair use is a mixed question of law and fact, and the jury is only supposed to resolve disputed factual issues underlying the defense which, according to the District Court’s ruling on Take Two’s motion for summary judgment, was Take Two’s purpose for using the tattoos. After that, it was for the court to determine the ultimate applicability of fair use. So, it seems that the jury didn’t get instructions on the affirmative defenses it should have decided and essentially decided both the factual and legal issues applicable to the fair use of affirmative defense.
While I am certain that Take Two will appeal, businesses in the creative arts such as video game publishers, photographers, and production companies will have to deal with the aftermath of this decision. Counsel for Alexander is quoted as saying that Alexander’s win at the trial court could “open the floodgates of litigation) and I think I agree with him.
What the District Court also seemed to ignore was what the practical effect of the ruling would be. Essentially, once someone gets a tattoo, that person no longer has full control over that body part. The tattoo artist has, essentially, a blocking right on the depiction of that part of the body with the tattoo. If a celebrity has an arm tattoo and that celebrity must be shirtless in a movie, unless the producer covers the tattoo up with makeup- which they very well may need to do after this ruling, the producer would need to get a release from the tattoo artist. And what if the tattoo artist didn’t want to grant a release and for some reason the producer is unable to cover the tattoo up, that could mean that the actor may lose the job. Sounds a bit extreme, but this is a logical extension from the decision.
And what if that arm tattoo is fully visible in the celebrity’s social media pictures. Technically that would be an infringing public display of the work, I understand the fundamentals of a paparazzi suing a celebrity when that celebrity posts a picture taken by the paparazzi without permission, but consider the reality of a tattoo artist suing a celebrity when the celebrity takes a selfie that captures the tattoo on the celebrity’s arm.