Contributing Authors: Daniel Rozansky and Michael Bernet
Should a tattoo artist be paid when her inked creations appear in a video game depicting a real-life athlete? Recently, in the first-ever tattoo copyright trial, and completely diverging from another recent New York decision involving the same video game company and arguments, an Illinois federal jury answered yes … but only in the amount of $3,750.
In 2018, tattoo artist Catherine Alexander sued World Wrestling Entertainment
Alexander tattooed the designs on Orton between 2003 and 2008 including “sleeve” tattoos of a dove, rose, skull, Bible verse, and tribal design, as well as an extension of the tribal design on his back (which was initially designed and tattooed by another artist). To fans and those familiar with Orton, the designs are recognizable as a part of his image. In fact, Alexander approached the franchise in 2009 to negotiate a licensing deal, but WWE only offered her $450, which she refused.
Beginning in 2015, Randy Orton’s character appeared in three consecutive releases of the WWE 2K video games series. His character was digitally created using “authentic” photographs of Orton, through a process known as “photo reference,” which requires little to no artistic input, and featured tattoos that were “substantially similar” to those Alexander “authored.” In 2018, Alexander filed a copyright infringement lawsuit against the video game creators and the wrestling franchise for their unauthorized copying of her “original” works.
In September 2020, an Illinois federal judge decided cross-motions for summary judgment in favor of Alexander, setting the stage for the recent trial. Specifically, the judge granted Alexander’s motion for partial summary judgment, finding it “undisputed” that Alexander held valid copyrights for five of her six tattoo designs, and that the defendants copied each of them. This ruling meant that at trial, the only issues to be decided were the merits of the defendants’ affirmative defenses, and if those defenses were found to lack merit, then the jury would decide the amount of damages to be awarded.
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The defendants presented three affirmative defenses, one of which the court dismissed on summary judgment and did not allow to be discussed at trial.
The first was that Alexander granted Orton an “implied license” to use her tattoo designs as a part of his public image, which he could then naturally sublicense to WWE. (As a sidebar, this defense has become increasingly popular, with the corresponding recent trend of copyright lawsuits filed by photographers against celebrities posting photographs of themselves on social media.) While the judge found that Alexander may have granted Orton an implied license of some nature (for example, to use in photos and videos), a “triable issue of fact” existed regarding its existence and scope, and specifically whether it extended to video games. Accordingly, the court decided that defense needed to be presented to the jury.
The second affirmative defense was the ubiquitous and sometimes mysterious “fair use” defense, which may permit the use of another’s copyrighted work, in various circumstances, including where the use is considered “transformative.” The transformative branch of fair use may apply where the original work is used in a different context, such that it becomes an entirely new creation, with a distinct new meaning or message.
(As another sidebar, the boundaries of the transformative fair use doctrine have long confounded courts and will soon be directly addressed by the U.S. Supreme Court in a closely watched case involving Andy Warhol’s “Prince Series” paintings, which were recently discovered to be based upon actual photographs of the music icon captured by Lynn Goldsmith. The Supreme Court will hear oral arguments on October 12, 2022.)
In support of their fair use theory, the defendants argued “their use is transformative because the size of the tattoos are small and difficult to observe, the video game is an entire virtual world whereby the tattoos are an element utilized to create a ‘fun, lush experience for game users,’ and the tattoos are a tiny fraction of the video games.” After applying the four fair use “factors” found directly in the Copyright Act (which are different from other fair use tests, such as for trademark claims), and finding they did not conclusively weigh in the defendants’ favor, the judge found another triable issue of fact existed that could only be resolved by the jury.
Lastly, the defendants claimed they made “de minimis use” of the tattoos, which is a defense used for violations “so trivial as to fall below the quantitative threshold of substantial similarity.” The judge dismissed the defense on summary judgment, however, as “unavailing,” and did not allow it to be presented to the jury, finding that the theory only applies where the defendant copies “a small and usually insignificant portion of the copyright works, not the wholesale copying of works in their entirety as occurred here.”
Ultimately, the jury was unpersuaded by the implied license and fair use defenses and ruled in favor of Alexander. Remarkably, however, the jury only awarded her $3,750 in damages, and denied her any amount of the video games’ profits, finding that her tattoos did not directly contribute to their commercial success.
While this verdict is significant for tattoo artists—as it demonstrates that at least one federal jury believes they should be compensated when their tattoo designs appear in video games, and presumably other digitally created content—it also sets a fairly low benchmark on economic damages for these artists, and represents a win, of sorts, for video game franchises because the lawsuit was not financially worthwhile for the artist or her attorneys. That said, with the recent passage of the CASE Act on December 27, 2020, which created a streamlined small claims court for copyright cases seeking no more than $30,000 in damages, aggrieved tattoo artists may still be able to pursue and win these types of claims without breaking the bank.
The damages awarded to Alexander could have been much higher, however, if she had registered the copyrights to her tattoo designs before the infringements began. (In fact, this could have led to an early resolution of the dispute.) Doing so would have entitled Alexander to seek, as an alternative to the default measure of damages, “statutory damages” of up to $150,000 per registered work, plus attorneys’ fees. But since she did not register the copyrights to her designs until 2018 (after the games were released), she was limited to the default measurement, i.e., her “actual damages” (which the jury found were only $3,750) plus the defendants’ “profits … attributable to the infringement” (which in this case, the jury found were zero). In awarding Alexander only $3,750, the jury found this amount represented a fair non-exclusive license fee that the video game franchise should have paid her for their usage of her tattoo designs.
The verdict is a complete reversal from a similar lawsuit Take-Two faced, beginning in 2016, involving tattoo designs on players featured in their NBA 2K video game series—where they were represented by the same counsel, who also raised the same defenses. In that case, in March 2020, a New York federal judge granted summary judgment in favor of the video game company, finding their “fair use” and “de minimis use” defenses were meritorious as a matter of law.
(As another sidebar, the NBA 2K decision followed a string of somewhat related trademark cases brought by brand owners whose distinctive marks appeared in video games without their authorization, supposedly in the name of “realism.” For example, in April 2020, a different New York federal judge granted summary judgment in favor of Activision Blizzard
The recent WWE verdict may signal a changing of the tides against video game companies, at least for copyright claims. Video game franchises and other digital content creators should be more careful when portraying original body art (or other content) in their works. If they digitally create designs that appear “substantially similar” to any original works, they should obtain permission directly from the copyright holder. Unless there is a written agreement to the contrary, the tattoo artist (or their employer) will likely be considered the copyright holder—not the person bearing the tattoo (or their employer).
Alternatively, video game creators could create their own and different tattoo designs to avoid these types of copyright claims. In fact, in the WWE case, the video game creators did exactly that, by designing around depictions of trademarks owned by Iron Maiden and Pepsi that were contained in different wrestlers’ tattoos, but just not with Alexander’s designs.
Additionally, now that the video game franchise has been found liable once for copyright infringement of tattoo designs, if it is found liable again in the future for the same or similar conduct, it may be considered a “willful” infringer, which could justify future damages awards against it imposing the maximum statutory damages award of $150,000 per registered design, plus attorneys’ fees.
While this verdict may make digital content creation a little more expensive, it also presents new licensing opportunities for tattoo artists. These artists should consider regularly registering the copyrights to their designs to gain leverage, and certainly before any infringement begins. Otherwise, all they may be entitled to is a small license fee when their works are copied without permission, and a lawsuit to recover only these small amounts may not be worthwhile.
While this verdict may create more questions than it answers, one thing seems certain: we will likely see more copyright lawsuits in the future involving tattoo designs depicted in creative works.
Legal Entertainment has reached out to representation for comment, and will update this story as necessary.
Daniel Rozansky is a Partner at Stubbs Alderton & Markiles LLP in Los Angeles. He practices in the areas of entertainment, intellectual property and business litigation, and represents clients across multiple platforms including film, television, music, concerts and touring, and digital media. He regularly reviews television pilots, screenplays and other material in development to assist those clients in identifying and avoiding potential liabilities.
Michael Bernet is an Associate at Stubbs Alderton & Markiles LLP in Los Angeles. He litigates intellectual property and general civil matters, including complex business and contractual disputes, and provides outside counsel for clients across a wide range of industries, including entertainment, apparel and consumer goods.