The eagerly awaited release of “The Hangover Part II” will go forward this week despite a request for a preliminary injunction to stop its release.  As pointed out in a previous blog post, S. Victor Whitmill, the tattoo artist behind Mike Tyson’s distinctive tribal face tattoo, sued Warner Brothers for copyright infringement over the use of a virtually identical piece of art in the movie.  Promotional posters and movie trailers depict the movie’s character, Stu, an uptight conservative dentist, waking up from a night of drunken debauchery with a face tattoo identical to that of Tyson’s.  The viewers of the first Hangover movie will immediately recognize the reference to Tyson (who has a cameo appearance in both films).

In his complaint, Whitmill alleges that he has a valid copyright in the tattoo, as evidenced by his Certificate of Registration issued by the U.S. Copyright Office.  Further, a contract signed by Tyson is provided as an exhibit to the complaint and states that “all artwork, sketches and drawings related to my tattoo and any photographs of my tattoo are property of Paradox-Studio of Dermagraphics.”  Whitmill alleges that the evidence proves he owns the facial tattoo and that the use of the tattoo in the movie is “reckless copyright infringement.”  The complaint provides a side-by-side comparison of Stu’s tattoo and Tyson’s tattoo.  As shown in the side-by-side comparison reproduced below, the tattoos are very similar.  To the chagrin of movie goers across the country, Whitmill requested an injunction to stop the release of the movie.  However, two days before the scheduled movie release, U.S. District Judge Catherine Perry denied the request for a preliminary injunction despite her statements that Whitmill was likely to succeed in this copyright infringement claim.  See, Reuters article.

tatoo

In order to be granted a preliminary injunction, a plaintiff must establish “that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor, and that an injunction is in the public interest.”  Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008).  Thus, the court “must balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief.”  Id.  Although Judge Perry found that Whitmill would probably win on his copyright infringement claim, she found that the balance of equities tipped in favor of the theater owners that would be irreparably harmed if the movie release was delayed. Accordingly, the judge refused to grant the injunction.

However, the judge stated that she would hold an expedited trial on the issue of copyright infringement and consider a request for a permanent injunction which would stop the film’s distribution on DVD.  See, Reuters article.  So, now the question turns to the validity of the copyright.  Is the judge correct in stating that Whitmill is likely to succeed on his copyright infringement claim?

The case is not as clear as it might appear on first blush.  As Warner Brothers points out in its response to the complaint, “[t]he very copyrightability of tattoos is a novel issue” and that it is a “radical” idea to claim the right “to control the use of a tattoo…created on the face of another human being.”

US copyright law protects “original works of authorship fixed in any tangible medium of expression” including pictorial and graphic works.  On its face, it seems like tattoos clearly fall within the scope of copyright protection.  However, because a tattoo is so intimately tied to a person’s body, a number of issues arise by holding that a tattoo is copyrightable.  For example, if a tattoo created on a human being is indeed copyrightable, then the tattoo artist has the exclusive right to reproduce and distribute copies of the work.  17 U.S.C. § 106.  Does this mean that Whitmill can insist on royalty payments for every photo taken of Tyson’s face?  Or, as my colleague pointed out, did Whitmill merely give Tyson an implied license to have his tattoo publicly displayed and photographed?  If so, what about a person adorning an unlicensed copy of the tattoo?  Could a court force such a person into surgery to remove the offending work?

Moreover, if the tattoo is copyrightable, the law provides the tattoo artist with the exclusive right to prepare derivative works based on the tattoo.  17 U.S.C. § 106.  Thus, if Tyson ever sought to modify the tattoo, could Whitmill enjoin him from doing so? If the tattoo qualifies as a “work of visual art” under 17 U.S.C. § 101, and gains a “recognized stature,” as would clearly be the case with the Tyson tattoo, could Whitmill “prevent any destruction of [the] work?” 17 U.S.C. § 106A(a)(3)(B).  Under the statute, it appears that Whitmill could not only prevent Tyson from modifying the tattoo, but also from ever having the tattoo removed.  It seems a bit far-fetched that a court would give the tattoo artist, rather than the tattooed person such control over how the tattoo is photographed and filmed.  However, these are exactly the type of issues that will arise if the court holds that Tyson’s tattoo is copyrightable.

Assuming that the court finds that Whitmill holds a valid copyright in Tyson’s tattoo, as Judge Perry points out is likely, does Warner Brothers have a defense?  In my opinion – yes.  Warner Brothers has a strong argument that the film’s use of the tattoo is a parody and thus, is statutorily protected “fair use.”  Courts have long held that artists can mock, or parody, images and likenesses of others under a “fair use” exemption in the Copyright Act.  17 U.S.C. § 107.  Thus, the use of copyrighted material for the purposes parody is not an infringement of copyright.

The side-by-side photos above (provided in Whitmill’s complaint) provide the best indication that the tattoo is used as a parody in the movie.  On the left is Stu, a frightened, cowering man curled up into the fetal position.  On the right is Tyson, a dangerous fighter with a formidable glare.  Clearly, the film pokes fun of the tribal warrior tattoo being worn on a quivering and meek character.  As pointed out in Warner Brother’s response to the compliant, the “tattoo joke” pays off as Stu finds his “inner Tyson” throughout the movie.  Thus, the contrast between the two tattooed men is an element of commentary on the tattoo itself.

Further, the Supreme Court has held that “the single most important element of fair use” is whether “unrestricted and widespread conduct of the sort engaged in by the defendant…would result in a substantially adverse impact on the potential market” for the original or its derivative.  Campbell v. Acuff-Rose Music, Inc., 510 US 569, 590 (1994).  “[A] use that has no demonstrable effect on the potential market for, or the value of, the copyrighted work need not be prohibited in order to protect the author’s incentive to create.”  Sony Corp. of America v. Universal City Studios, Inc., 464 US 417, 450 (1984).  In this case, it does not appear that the use of the tattoo in the movie will negatively impact Whitmill’s tattoo business.  The use of the tattoo in the movie does not replace or compete with the market for the original tattoo. Thus, while it appears that Whitmill may have a legitimate claim of copyright infringement, Warner Brothers has an equally strong fair use defense.