RKO as Motion for Summary Judgment is Dismissed

A latest United States district court docket choice on copyright infringement has introduced the problem of recreation of tattoos in video video games again into the highlight, and has forged doubt on an earlier ruling from one other district court docket in a distinct judicial circuit.

The gravamen of the case was the digital depiction of 5 tattoos on skilled wrestler and present WWE champion, Randy Orton, within the “WWE 2K” skilled wresting online game collection.  The plaintiff, tattoo artist Catherine Alexander, filed the lawsuit in opposition to the defendants (collectively, “Take-Two”), who develop the WWE 2K online game collection and sought to recreate Orton’s tattoos in a digital format.  Whereas Take-Two had obtained permission to make use of Orton’s likeness within the online game, Alexander claimed copyright infringement pursuant to 17 U.S.C., § 501 with respect to Orton’s tattoos, and argued that her consent to incorporate Orton’s tattoos was required, however was not supplied.  Importantly, Alexander had earlier registered copyrights for every of the tattoos at concern.

Alexander filed a movement for partial abstract judgment on the problem of copyrighting, and Take-Two filed its personal cross-motion for abstract judgment, arguing that Alexander’s copyright declare was inadequate as a matter of legislation, and requested that the Court docket dismiss the declare accordingly.  Decide Staci Yandle within the US District Court docket for the Southern District of Illinois (Seventh Circuit) granted Alexander’s motion, but denied Take-Two’s motion.

The Copyright Act of 1976

Alexander’s claims are based within the Copyright Act of 1976, 17 U.S.C. §§ 101-810, which types the premise of copyright legislation in america.  The Copyright Act protects “authentic works of authorship,” together with, amongst different mediums, literal works, musical works, sound recordings, multimedia works, and pictorial, graphic, and sculptural works.

Pursuant to this federal statute, copyright infringement happens when anybody violates the unique rights of a copyright proprietor.  A plaintiff should set up two parts to convey a profitable declare for copyright infringement.  Firstly, the plaintiff should personal a legitimate copyright.  Secondly, there have to be copying of the constituent parts of the work which are authentic.

The Court docket Guidelines on Abstract Judgment

In its choice, the Court docket first thought of Alexander’s movement for abstract judgment and the undisputed details within the case.  As a result of there was no dispute that Alexander held legitimate copyrights for the tattoos, and that Take-Two copied these tattoos within the WWE 2K online game with out her consent, the applying of truth to legislation was simple: Alexander happy the weather of copyright infringement.

Underneath the legislation, if a plaintiff can exhibit {that a} defendant has used the plaintiff’s works, the burden of proving that the use was licensed falls on the defendant – on this case, Take Two.

To fulfill this burden of proof, Take-Two’s movement for abstract judgment introduced three affirmative defenses to justify their use of the tattoos and to exhibit that such use was licensed. These have been: (1) Implied License (2) Honest Use and (3) De Minimis Use.

(1) Implied License

First, Take-Two argued that that they had an “implied license” to make use of the copyrighted work.  An implied license exists when three parts are happy.  The licensee (Orton) should request the creation of the work, the licensor (Alexander) should make that individual work and ship it to the licensee who requested it, and the licensor (Alexander) should intend that the licensee (Orton) copy and distribute the work.

On the details at hand, the Court docket discovered that there was no dispute as to the satisfaction of the primary two parts.  Orton had requested the tattoos and Alexander had inked them on his physique.  In relation to the third factor, Take-Two argued that Alexander by no means informed Orton that additional use of the tattoos would symbolize infringement.  Thus, Orton subsequently granted WWE a proper to license his likeness to 3rd events and WWE then licensed Take-Two to make use of Orton’s likeness, together with his tattoos, within the video video games.

Take-Two’s implied license protection was denied.  The Court docket said that the query of whether or not Alexander and Orton had agreed permissible types of copying the tattoo works or whether or not any implied license included sublicensing rights was unclear, due partly to conflicting witness testimony.  Because of this, the proof raised “a triable concern of truth,” which meant {that a} beneficial ruling on abstract judgment was not permitted, and that the matter must be heard earlier than a jury.

(2) Honest Use

The truthful use doctrine is an exception to the copyright protections contained within the Copyright Act of 1976, and permits the usage of copyrighted materials even with out permission from the proprietor.  Codified in 17 U.S.C. § 107, the truthful use doctrine applies when the usage of copyrighted materials is finished for a restricted and transformative objective, resembling to remark upon, criticize, use in information reporting, or educating and different academic and informative functions.  In different phrases, the unauthorized use of copyrighted work is “truthful” to the extent the defendant adjustments the copyrighted work or in any other case makes use of it in a distinct context such that the work is remodeled into a brand new creation, and whether or not such use is for a non-profit and academic, slightly than industrial, objective.

The legislation requires courts to think about the next 4 components when figuring out the applicability of the doctrine:

• The aim and character of the use;
• The character of the copyrighted work;
• The quantity and substantiality of the portion utilized in relation to the copyrighted work as a complete; and
• The impact of the use upon the potential marketplace for or worth of the copyrighted work.

On the abstract judgment section, the bar for a profitable truthful use protection is excessive, and requires an inexpensive trier of truth to succeed in just one conclusion on the matter.  Take-Two fell wanting this customary, and the Court docket discovered that, on stability, the components didn’t weigh in favour of granting the truthful use protection as a matter of legislation on abstract judgment.  For instance, there have been materials factual disputes between the events in regards to the objective and character of Take-Two’s use of the tattoos (i.e. whether or not Take-Two used the tattoos for a similar objective as Alexander created them; to be displayed on Orton’s physique), whether or not the wholesale copying of the tattoos was essential to additional the aim of Take-Two’s use of portraying Orton’s likeness, and whether or not the related market would possibly stand to be harmed on this occasion.  The Court docket did observe, nonetheless, that the artwork of making a tattoo naturally entails a artistic and expressive effort, giving tattoos authentic copyright protections below federal legislation.

(3) De Minimis Use

Lastly, Take-Two argued that the usage of the tattoos was trivial and de minimis.  The de minimis protection permits the usage of copyrighted works if the copying is so minimal that it falls under the brink of considerable similarity; i.e. the use is just too trivial to benefit court docket intervention.  Notably, not each federal judicial circuit acknowledges this exception to copyright protections.

On this protection, Take-Two harassed that Orton was considered one of many wrestlers featured within the recreation, it was troublesome to obviously see the tattoos throughout gameplay, and that the tattoos made up solely a minor fraction of the sport knowledge.

As soon as once more, Take-Two was unsuccessful.  In denying Take-Two’s movement as to this protection, the Court docket harassed that neither social gathering had submitted any case legislation or proof indicating that the Seventh Circuit acknowledged the de minimis protection.  As well as, the Court docket harassed that earlier functions of the protection in different circuits had been profitable in permitting copying of small parts of copyrighted works, slightly than wholesale copying of works of their entirety, as had occurred on this case.

Conflicting judgment in NBA 2K case

This ruling is especially putting given a earlier lawsuit wherein Take-Two was concerned, and obtained a clear-cut abstract judgment ruling of their favor on comparable details (as reported by our Global IP & Technology Law Blog in April of this year).

In that case, a tattoo firm, Strong Oak Sketches LLC, sued for copyright infringement below the Copyright Act 1976 concerning copyrighted materials used within the “NBA 2K” online game collection.  The main focus of this lawsuit was the characteristic of a number of NBA gamers’ tattoos within the video games.  The lawsuit was filed in the United District Court for the Southern District of New York (Second Circuit) in March of this year.  Take-Two filed a movement for abstract judgment looking for to dismiss the copyright infringement declare and for the Court docket to additional enter judgment in Take-Two’s favor on its de minimis, implied license, and truthful use arguments.

Regardless of the similarities in details with the lawsuit filed by Alexander within the Southern District of Illinois (Seventh Circuit), the Southern District of New York reached a markedly contrasting choice and granted abstract judgment in Take-Two’s favor.  You will need to observe, nonetheless, that the plaintiff within the Southern District of New York lawsuit was not the tattoo artists themselves.  On this occasion, the plaintiffs have been Strong Oak Sketches LLC, an organization who have been later granted licenses by every of the tattooists.

With respect to the de minimis argument, the Court docket concluded that no affordable trier of truth may conclude that the looks of the tattoos within the recreation was considerably much like the tattoo designs themselves.  In its evaluation, the Court docket famous that solely three out of 400 out there gamers sport the tattoos at concern; that the precise recreation play is unlikely to incorporate such gamers; and, even when the online game consumer does choose one of many gamers at concern, the show of the tattoos is small and vague, showing as quickly transferring visible options in a bigger general recreation.  The Court docket additional famous that the tattoos should not featured in any advertising and marketing supplies.  Accordingly, the Court docket granted abstract judgment on this protection.

The Court docket additionally discovered that the gamers had implied licenses to make use of the tattoos as a part of their likeness.  As within the lawsuit filed by Alexander, the willpower got here all the way down to the third factor; whether or not the licensor meant that the licensee copy and distribute their work.  On this case, the Court docket concluded that the factual report supported an inexpensive inference that the tattoo artists knew that the gamers, who have been by no means requested nor agreed to restrict the show of their tattoos, have been more likely to seem in public and the media.  Subsequently, the gamers had implied licenses to characteristic the tattoos are a part of their likeness, which predated the licenses which the plaintiff obtained.

Lastly, and on the problem of truthful use, the Court docket discovered {that a} affordable trier of truth would decide that Take-Two’s use of the tattoos within the video video games constituted truthful use.  The aim and character of the use was held to be totally different, because the tattoos have been initially inked as a standing of expression, while Take-Two had copied them for the aim of authenticity.  It was additionally persuasive that the tattoos featured on solely three out of over 400 gamers within the recreation and can’t be seen clearly throughout gameplay, which was additionally key in establishing Take-Two’s de minimis protection.  The character of the copyrighted work, in distinction to the WWE case, was not deemed to be artistic or expressive, because the tattoos contained parts that have been copied from designs and photos that the tattoo artists had not created.  This level was supported by declarations from every of the related tattooists, which have been superior by Take-Two.  The Second Circuit Court docket additionally discovered that there was no proof {that a} marketplace for licensing tattoos to be used in video video games or different media was more likely to develop.

Transferring ahead, these two conflicting abstract judgment opinions, on considerably comparable details, might give rise to additional differing opinions in how the US federal judicial circuits analyze copyright claims on abstract judgment.

This put up was written by  Simon Watts-Morgan.