Many an American has endured the pain of waking up the morning after a night of epic drinking – usually of the collegiate variety – only to discover that their throbbing in the head is not the only painful remnant of their hedonistic excess.   Only in Hollywood, however, can this type of situation be elevated to fine art.  In The Hangover, Part II, Stu (anchored by Ed Helms of television’s The Office fame) apparently awakens from his slumber to discover he has a tattoo on his face – not just any tattoo, but a tribal tattoo identical to one that adorns the face of Mike Tyson, the former heavyweight boxing champion (who also appeared in the original movie, The Hangover). Story arcs aside, the use of the tattoo on the character Stu in the sequel has stirred up a hornets nest of controversy that goes to the heart of copyright rights and fair use.

The artist who originally created the artwork in 2003, S. Victor Whitmill, filed suit against Warner Brothers this past April claiming that the copy of the tattoo on the character Stu infringed his rights as the author of the original artwork, and since he claims Warner Brothers did not obtain a license from him to use the copy in the film, that an injunction should issue preventing the film’s release.  The district court judge ruled against the issuance of the injunction on May 24th – the right ruling given the lack of irreparable harm that would be endured by the artist should the film be released (if anything, it will arguably help the artist by increasing exposure to the artist’s other works).  With the movie having been released to record returns for the Memorial Day weekend , the underlying issue remains:  Does Warner Brothers’ use of the artwork on a character in the movie constitute copyright infringement? The answer depends on a number of facts not evident at this point, but the journey in getting there presents some interesting issues surrounding copyrights, tattoos and fair use.

Copyright ownership vests upon fixation of an original work into a tangible medium.  Tattoo artists usually (though not always) create custom works on trace paper for transfer of the outline to the skin before filling in the tattoo.  Under such circumstances the artist clearly is the author of the work under copyright law, unless there is a written agreement to the contrary vesting ownership in the entire work in the recipient (in this case, Mike Tyson).  (NOTE: The “work-for-hire” doctrine under copyright law allows for employers to own “works made for hire” prepared by an employee within the scope of his or her employment, or for certain specially ordered or commissioned works to be owned by the commissioning party where a written agreement is in place, but we will get to that doctrine in later posts)  It is not uncommon for artists to have written agreements with their clients outlining the rights in the artwork that either remain with the artist, or are assigned to the artist to the extent originally created by the client for transposition into a tattoo.  Based upon the pleadings in this case,  it appears that the author retained all rights in and to the artwork, and in fact, had Mr. Tyson sign an artwork release vesting all rights in and to the artist (impliedly subject, by necessity, to a license to Mr. Tyson to publicly display the artwork affixed to his face).   In The Hangover Part II, Stu has what appears to be a virtually identical copy of the artwork placed on his face.  Assuming the pleadings are correct in indicating that Mr. Whitmill was never asked for a license and that there was no license to Warner Brothers to use a copy of the artwork in the movie, case closed, right? Not really.

Oddly enough, one of the foremost authorities on copyright law in the United States and author of the seminal treatise “Nimmer on Copyright” – UCLA Professor David Nimmer – is acting as an expert for Warner Brothers in this case and is essentially arguing that the human body cannot operate as a “tangible medium of expression” contrary to his earlier treatise position.   Although I understand and appreciate the position Prof. Nimmer takes on this topic (a scholar whose work I deeply respect), I cannot subscribe to it because the examples he gives refer to innately ephemeral media.  Moreover, his other arguments ignore the fact that the complaint is relatively narrow and the tattoo at issue in this case is applied to a different person than Mr. Tyson.  Nevertheless, Prof. Nimmer’s “clarification” demonstrates how reasonable minds may differ on the copyrightability of tattoos and the scope of their protection.

As entertaining as some of Warner Brothers’ defenses to the alleged infringement are upon first read – the silliness of which the judge in this case and I seem to share a common affinity from reports of oral argument on the injunction – there is an element of the fair use defense which may ultimately help decide this case.  In 1994, the  Supreme Court first recognized commercial parody as a legitimate “fair use” of a copyrighted work. To the extent the tattoo in the movie is part of an underlying theme that threads itself throughout the movie as satire, Warner Brothers may be able to successfully defend against the artist’s claims if it can successfully meet its burden of proof by applying the facts to the four “fair use” factors .  This is a big “if”, and one that will be fun to watch unfold.

Notwithstanding the above, the fact that this issue got to this point in the first place remains intriguing to me.  Movies must undergo rights clearances for distribution, and I find it incredible that throughout the entire clearance process in preparing the movie for distribution that this issue was either not addressed or ignored.  As aforementioned, the pleadings claim that Mr. Whitmill was never asked for a license and that there was no license given to Warner Brothers to use a copy of the artwork in the movie; however, it is very interesting that Warner Brothers expressly denies this claim in its answer.  Very interesting indeed.   In any event, Warner Brothers may have a successful sequel on their hands, but (from this commentators perspective) unless they can successfully present parody in its fair use defense, they may find themselves waking up with a tattoo of a different sort that would be as painful as a right hook from Mr. Tyson.  I, for one, will be keeping some popcorn handy as this case unfolds….as there is definitely more to this case than what is presented on its face…;)

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