Copyright and Tattoos: Hangover II Injunction Denied, But the Copyright Owner Got Some Good News Too–Whitmill v. Warner Bros. (Guest Blog Post)

by Yvette Joy Liebesman

[Eric's note: Yvette is a law professor at Saint Louis University specializing in copyrights and trademarks. She attended the hearing and sent in this first-hand field report!]

Whitmill v. Warner Bros. Entertainment Inc., 4:11-cv-00752 (E.D. Mo.). The complaint.

This morning, at the US District Court for the Eastern District of Missouri, Chief Judge Catherine D. Perry denied local tattoo artist S. Victor Whitmill’s motion for a preliminary injunction, thus ensuring that The Hangover Part II will be released as scheduled Thursday evening. While that’s good news for Warner Bros., the ruling also gives Whitmill some reason to believe he’ll be compensated for his troubles.

This is a copyright infringement case involving the use of a tattoo that was created by Whitmill and tattooed onto Mike Tyson’s face, which Warner Brothers has inked on one of the characters in the movie “The Hangover Part II.” Mike Tyson is not a party to the suit as either a plaintiff or defendant. He, in fact, appears in the movie, though he has an agreement with Whitmill which apparently allows Tyson to make such appearances while denying Tyson the right to reproduce the art in other forms. Tyson has no right to license use of the tattoo design to others, and Warner Brothers did not obtain a license by either Tyson or Whitmill. Whitmill registered the copyright in the work, but after the statutory period which would allow him to claim statutory damages.

Chief Judge Perry based her decision on four factors. The first two — the likelihood of Whitmill succeeding on the merits, and whether Whitmill would suffer irreparable harm — were both weighed in favor of the Whitmill. The court made it clear that Warner Brother’s defenses to infringement were “silly,” and soundly rejected the defendant’s novel argument that tattoos are not protected by copyright, even if they had first been expressed on paper or another tangible medium of expression. Judge Perry briefly discussed the defense’s claim of Fair Use, opining that there was no parody or transformative use, the entire tattoo in its original form was used (not in any parody form), the tattoo was not necessary to the basic plot of the movie, and that Warner Brothers used the tattoo substantially in its marketing of the movie. The court was concerned with the Plaintiff’s loss of control over his design as irreparable harm, and that while there was no presumption of harm, this was a low bar to reach, and was met by the Plaintiff.

The remaining two — the balancing of the equities an the harm to the public if the injunction was granted — were weighted in favor of Warner Brothers. The balancing of the moneys that Warner Brothers would lose versus the irreparable harm suffered by Whitmill over the loss of control of his work weighed slightly in favor of Warner Brothers. It seemed, however, that the factor weighed most heavily in deciding to deny the injunction appeared to be the harm to the public — namely, the economic harm that would be suffered by movie theaters, concession vendors and others who were not Warner Brothers and not party to the suit.

In denying the preliminary injunction, Judge Perry got it right. Her ruling was sound and it seemed to give the plaintiff ample reason to be optimistic in winning on the merits and a permanent injunction (scheduled to be heard in about a month, after the economic harm to third parties would be greatly diminished).

Since the plaintiff is seeking actual damages, and Warner Brothers expects to take in hundreds of millions of dollars in profits in the first few weeks of release, the combination of denying the preliminary injunction, the threat of a permanent injunction, and losing millions of profits to the damages awards puts the plaintiff in a good position to get a nice settlement, should he choose that route.

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Eric’s update: The NYT article quotes the judge as saying “This use of the tattoo did not comment on the artist’s work or have any critical bearing on the original composition. There was no change to this tattoo or any parody of the tattoo itself. Any other facial tattoo would have worked as well to serve the plot device.” From my perspective, this latter sentence seems plainly wrong. Any other tattoo would not be a Mike Tyson face tattoo, with all of the associated meaning in the context of the movie’s storyline. If the judge maintains a hardline on this point, I could see Warner Bros. needing to appeal the district judge’s liability ruling, and I would expect a more sympathetic ear from the appellate panel.

Eric’s Update #2: Prof. Nimmer’s declaration in the case, taking the very odd position that a human body cannot constitute a tangible medium of expression. As Ann Bartow highlights, this is a very convenient shift in opinion for Prof. Nimmer.