Tattoo Artist Wins Copyright Claim, But Gets Zero Damages–Alexander v. Take Two

September 29, 2024 · by · in Copyright

Randy Orton Tribute to the Troops 2010 cropPrior blog post. Alexander inked 6 tattoos on wrestler Randy Orton. Videogames featured Orton and his tattoos, and Alexander sued for copyright infringement. A jury ruled for Alexander and awarded $3,750 in damages. The defendants sought to overturn the jury verdict. The denial of fair use stands, but the damages get zeroed out.

Fair Use

Nature of Use

“Defendants’ use of the tattoos was clearly commercial.” Really? The videogame made a commercial editorial use of the tattoo.

“The tattoos were included for their expressive value, rather than to merely display Orton’s likeness accurately. This was evident with Defendants’ “Create-A-Superstar” feature which enabled a user to take the tattoos and apply them to their own custom wrestler avatar. Thus, this usage had nothing to do with reproducing the tattoos in the video game to depict Orton most accurately.” Would the result have been different if the tattoos were displayed only in connection with Orton?

Nature of Work

“The art of creating a tattoo naturally entails creative and expressive efforts. Alexander testified about the creative process she utilized to ink the tattoos.”

Amount Taken

“Defendants assert that it was necessary to copy each tattoo in its entirety to depict real life accurately. But this assertion is belied by the “Create-a-Star” feature and by evidence produced at trial establishing that Defendants previously altered tattoos of wrestlers to avoid infringing on others’ intellectual property.”

Market Effect

This factor weighed in favor of the defense. “Alexander testified that she had never licensed her tattoos for video games or any other medium. Defense expert James Malackowski also provided unrebutted testimony that a market for licensing tattoos in videogames does not exist and was unlikely to be developed.”

I could see the fair use analysis going the other way on appeal. Obviously the court was bothered by the Create-a-Star feature. I wonder if the videogame makers can revamp or omit that feature from future editions?

Damages

“Alexander presented no evidence at trial that would support the jury’s damages award. There was no evidence of either a hypothetical lost license fee or the value of the infringing use to the infringer. Alexander’s expert, Dr. Jose Zagal testified that he believed a portion of the sales and profits of the video games were attributable to the five tattoos because Defendants needed Orton as a character in his game and he needed to have his tattoos. However, Dr. Zagal did not conduct an analysis of how much the video games’ sales or profits were attributable to the tattoos. Ryan Clark, Alexander’s expert, also offered no opinion regarding damages. Further, Alexander testified that she has never licensed a tattoo for use in any medium, and that she could not identify any business or clients that she lost due to Orton’s tattoos.”

Implications

The plaintiff getting gornisht is a spectacular denouenment. The jury’s damages award was pretty low–$3,750–but having even that small amount wiped away is humiliating. Alexander had multiple experts and none of them proved damages. I’m not sure if Alexander is eligible for a 505 fee shift; but with zero damages awarded, I can’t imagine a judge would grant it. I don’t know if Alexander is still eligible for an injunction. If not, then Alexander will come up completely dry after years of costly litigation. OUCH.

Defendants might get some chuckles from Alexander’s flameout, but overall this ruling is no laughing matter. The court held that depicting tattos in videogames could be infringing, and future plaintiffs will have timely registered copyrights sufficient to claim statutory damages or more savvy damages experts. So until the defendants categorically establish that tattoos can’t be infringed by videogames, they should be concerned about this case, even with no damages awarded. Fortunately, other courts have been more charitable to the defense, such as the successful implied license defense in the Hayden case. Reminder: if you are getting a tattoo, negotiate your IP licenses first. 😢

Case Citation: Alexander v. Take-Two Interactive Software, Inc., 3:18-cv-00966-SMY (S.D. Ill. Sept. 25, 2024)

Prior Tattoo Copyright Blog Posts