Alexander v. Take-Two Interactive Software program, Inc. et al
Case No. 3:18-cv-00966
United States District Court docket for the Southern District of Illinois
Filed April 17, 2018
Tattoo artist Catherine Alexander sued Take-Two Interactive Software program, Inc. (“Take-Two”), World Wrestling Leisure, Inc. (“WWE”), and associated entities for copyright infringement based mostly on the depiction of tattoos inked by Alexander on skilled wrestler Randy Orton within the WWE 2K collection of video video games. Our prior reporting on this post is here, however the related background is repeated beneath.
Orton licensed WWE to make use of his likeness, and WWE later licensed Take-Two to painting Orton’s likeness within the WWE 2K collection. As a part of this settlement, WWE was allowed to, and did, evaluate Orton’s tattoos for accuracy previous to launch and advertising of the video games. These tattoos embody “tribal tattoos on Orton’s forearm, a Bible verse on his arm, a dove, a rose, and a cranium.” Alexander testified that “she has by no means advised a shopper they wanted her permission to seem in several media, equivalent to pictures, television reveals, or video video games, nor has she ever given permission to any of her purchasers to make use of copies of her tattoo work in video video games.”
At first blush, this case seems to be similar to the Solid Oak Sketches, LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc. dispute that was the topic of frequent dialogue earlier this 12 months. Nonetheless, the Southern District of Illinois ruling diverged considerably from that of Southern District of New York in Stable Oak. Recall that in Stable Oak, the courtroom held the defendants didn’t violate Stable Oak’s copyright rights as a result of (1) the defendants had an implied license to show the tattoos; (2) the defendants’ use of the tattoos constituted honest use – particularly because of the transformative nature of the use; and (3) the defendants’ use of the Tattoos was de minimis throughout the full context of the NBA 2K video games.
Plaintiff’s Partial Abstract Judgment Movement
Alexander moved for partial abstract judgment on the difficulty of actionable copying, which was granted based mostly on Defendants’ admissions “to copying Alexander’s tattoos of their entirety so as to depict Orton in WWE 2K as he seems in actual life.” Though the Defendants argued their “copying” was approved and due to this fact non-actionable, the Court docket held that it’s Defendants’ burden to show their use is allowed, and since it’s undisputed that Alexander holds legitimate copyrights in all 5 tattoos, and people tattoos have been copied of their entirety, Alexander happy the burden essential to win partial abstract judgment on the difficulty of actionable copying.
Defendants’ Abstract Judgment Movement
Take-Two and WWE moved for abstract judgment, arguing the three affirmative defenses that have been profitable in Stable Oak: (1) Defendants had an implied license to show the tattoos; (2) Defendants’ use of the tattoos constituted honest use – particularly because of the transformative nature of the use; and (3) Defendants’ use of the Tattoos was de minimis throughout the full context of the WWE 2K recreation. In distinction to Stable Oak, the courtroom in Alexander v. Take-Two Interactive et al. was not persuaded by any of the Defendants’ affirmative defenses.
Implied License Affirmative Protection
On the difficulty of an implied license, the Court docket discovered a triable subject of reality associated to the portion of the evaluation requiring that “the licensor intends that the licensee-requestor copy and distribute her work,” saying it was unclear whether or not Alexander and Orton mentioned permissible types of copying and distributing the tattoos or whether or not any implied license included sublicensing rights such that Orton may give permission for others to repeat the tattoos. It is a notably greater bar for implied license than in Stable Oak, the place the license was discovered to be implied by advantage of the tattooists knowingly inking designs on well-known purchasers.
Subsequently, the Court docket denied the movement as regards to an implied license.
Truthful Use Affirmative Protection
In its honest use evaluation, the courtroom seemed on the 4 Truthful Use components:
(1) the aim and character of the use, together with whether or not such use is of a business nature or is for nonprofit academic functions; (2) the character of the copyrighted work; (3) the quantity and substantiality of the portion utilized in relation to the copyrighted work as an entire; and (4) the impact of the use upon the potential marketplace for or worth of the copyrighted work.
The courtroom discovered that (1) there are materials problems with reality associated to the primary issue; (2) the second and third components do not weigh in favor of honest use right here; and (3) market hurt will must be assessed based mostly on additional factual exploration of the primary three components.
Concerning the primary honest use issue, Alexander argues that she created the tattoos for show on Orton’s physique, and that Take-Two and WWE’s use of them on Orton’s likeness within the video video games is similar objective. Nonetheless, Take-Two and WWE argue that their use is “transformative as a result of the dimensions of the tattoos are small and troublesome to watch,” and creates a “enjoyable, lush expertise for recreation customers” as solely a small a part of the video video games as an entire. The Court docket discovered these to be materials factual disputes inappropriate for abstract judgment.
As to the fourth issue Take-Two and WWE argued that there isn’t a marketplace for licensing tattoos, and due to this fact Alexander has skilled no hurt. Alexander argued that Defendants’ use might create a slippery slope the place others will “make the most of and fail to pay licensing charges for copyrighted works (above and past simply tattoos) unilaterally deemed essential to create “realism.”’ Though Alexander’s argument doesn’t appear to deal with the particular case at hand, the Court docket was persuaded that this subject can’t be correctly resolved on abstract judgment.
Recall the Stable Oak courtroom discovered no proof of a marketplace for licensing tattoos to be used in video video games or different media, and in granting abstract judgment for the defendants, concluded that such a market was not more likely to be developed. On the contrary, the Alexander courtroom discovered that the fourth issue couldn’t be resolved on abstract judgment.
De Minimis Use Affirmative Protection
Lastly, the Court docket didn’t purchase Defendants’ argument that their use of the tattoos is de minimis as a result of the tattoos are onerous to see within the recreation and are solely a small a part of the sport as an entire, writing that the de minimis use protection “permit[s] copying of a small and normally insignificant portion of the copyrighted works, not the wholesale copying of works of their entirety as occurred right here.”
Subsequently, the Court docket denied the movement as regards to the de minimis use protection.
Take-Two and WWE additionally moved for abstract judgment on the grounds that Alexander can’t present precise damages as a result of she isn’t conscious of any misplaced enterprise on account of the usage of Orton’s tattoos in WWE 2K and argued that customers don’t buy the video games due to the tattoos. Nonetheless, Alexander argued that she might have misplaced licensing charges, and that the authenticity of wrestlers’ appearances within the video games do affect shopper’s choice to buy the video games. The Court docket denied the movement for abstract judgment on the difficulty of precise damages, discovering a problem of fabric reality.
The distinction between this choice and the abstract judgment choice in Stable Oak is stark, and appears to probably be the start of a longtime circuit break up on the difficulty of copyright licensing and tattoos. If these variations stay with such related reality patterns, it’s doable we’ll see this subject earlier than the Supreme Court docket within the years to return. Within the meantime, we’ll be watching to see if this case truly makes it to trial.
Because of our colleague Liz Brodzinski and Patent Arcade employees Riley Macdonald for getting ready this case write-up.