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Tattoo Lawsuit Against Take-Two in 7th Circuit Headed for Jury Trial
The court granted the plaintiff a partial victory while denying Take-Two’s MSJ entirely, teeing the case up for a jury trial early next year. The court’s analysis, though, left me scratching my head more than once.
Catherine Alexander, a former tattoo artist, inked six tattoos on a WWE wrestler, Randy Orton, between 2002 and 2008. She stopped working full time as a tattoo artist in 2009 and never licensed her tattoos. Take-Two makes WWE 2K, a series of realistic video games that incorporates real-world wrestlers, with duly licensed likenesses from the wrestlers (via WWE). In 2009, Ms. Alexander called WWE’s legal department to negotiate a tattoo sleeve product featuring her tattoos, but made no headway. WWE did offer her $450 for extensive rights to use her tattoo designs on WWE products, but she declined and told them they didn’t have permission to reproduce her tattoo designs. After Orton (with Alexander’s tattoos visible on his body) appeared in WWE 2k16, WWE 2k17, and WWE 2k18, Ms. Alexander sued for copyright infringement.
During the litigation, both parties moved for summary judgment.
ALEXANDER’S PARTIAL MSJ ON COPYING
Ms. Alexander moved for partial summary judgment, solely on the issue of copying.
Take-Two opposed the motion on four grounds: (1) the copying was de minimis; (2) the tattoos weren’t original to Ms. Alexander both because they were unauthorized copies of tattoos created by another tatooist and, separately, featured common elements and motifs common across tattoos; (3) Alexander granted an implied license when she inked the tattoos; and (4) the use in the video game was a fair use.
Without addressing any of these arguments — including the argument about lack of originality — the court concluded that Take-Two “admitted to copying her original copyrighted tattoo artworks without permission.” Strangely, the court then accused Take-Two of relying on “Second and Fifth Circuit decisions” to argue that Ms. Alexander needed to prove legally actionable copying. While Take-Two does cite cases from those circuits, it also relies on authorities from courts in the Seventh Circuit, including a case that makes the well-settled point that copying is only actionable to the extent original elements were copied. So does the court, in fact, which cites, in its order, to Muhammad-Ali v. Final Call, Inc., 832 F.3d 755, 760 (7th Cir. 2016), which explains that to establish copyright infringement a plaintiff must “prove two elements: ‘(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.’”
The court’s conclusion that, under Seventh Circuit law, “Alexander only needs to show that Defendants used her property” is correct; but the court misunderstands that “her property” requires a showing that the tattoos included original elements authored by Alexander and not (as Take-Two argued was the case) elements originated by another tattoo artist or comprised of common, unprotectable motifs. The court simply ignores this in granting Alexander’s partial MSJ.
TAKE-TWO’S MSJ ON AFFIRMATIVE DEFENSES
Take-Two, for its part, filed an MSJ on the three affirmative defense grounds, i.e., implied license, de minimis use, and fair use. [Note: Lack of originality, discussed above, is not an affirmative defense — it is part of the required showing a plaintiff must make to prove infringement, which again, the court seems to have misunderstood.]
On the first defense — implied license — the parties agreed that an implied license is created when (1) a person (the licensee) requests the creation of a work; (2) the author (licensor) creates the work and gives it to the licensee; and (3) the author intends that the licensee copy and distribute the work. The parties disagreed on the third factor, however, and the court decided that “[i]t is unclear whether Alexander and Orton discussed permissible forms of copying and distributing the tattoo works or whether any implied license included sublicensing rights such that Orton could give permission for others to copy Alexander’s tattoo works.” Huh? This isn’t what Take-Two was arguing, and obviously people who get tattoos don’t discuss licensing rights with their tattoo artists. The whole point of an implied license is that it’s implied by conduct and situational expectations, not expressly “discussed.” I felt like I was watching that Simpsons episode where Homer is telling Bart about a ship in international waters rebroadcasting MLB with implied oral consent not express written consent. Very silly stuff.
On the second defense — fair use — the court goes through the standard four-factor test. Right from the get-go, though, the court again left me puzzled. The court remarks: “Alexander contends she created the tattoos for the purpose of displaying them on Orton’s body and that Defendants used the tattoos for the same purpose; to display them on Orton’s body in the videogames.” The court sees this as a material factual dispute. What? As the Second Circuit observed in Cariou v. Prince, 714 F.3d 694, 707 (2d Cir. 2013), “[w]hat is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work.” Interestingly, the Second Circuit made its observation in reliance on a Seventh Circuit case involving a South Park parody of the viral internet video “What What (In The Butt).” In that case, the court completed the first factor analysis after deciding that “the only two pieces of evidence needed to decide the question of fair use…were the original version of the video and the episode at issue.” Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir.2012). Here, too, all the court needs for the fair use analysis is a copy of both works to compare. Finally, after muddling through the less important second and third factors, the court totally fails to analyze the fourth factor (market harm) at all. It simply regurgitates the parties’ arguments and recites statements of law about the fourth factor.
On the third defense — de minimis use — the court questions whether the Seventh Circuit even recognizes this defense to copyright infringement and asserts that neither party cites any Seventh Circuit decisions applying the defense and that the court is aware of none. Again, what? Take-Two, in its brief, had already directed the court to two cases in the opening paragraph of its de minimis use argument:
Copying is de minimis if the amount of “protected material” copied “is so trivial as to fall below the quantitative threshold” for infringement. Isringhausen Imports, Inc. v. Nissan N. Am., Inc., No. 10 Civ. 3253, 2011 WL 6029733, at *6 (C.D. Ill. Dec. 5, 2011); see also G.R. Leonard & Co. v. Stack, 386 F.2d 38, 40 (7th Cir. 1967) (copying five of 90,000 entries in travel guide was de minimis and not infringement).
Catherine ALEXANDER, Plaintiff, v. TAKE-TWO INTERACTIVE SOFTWARE, INC., 2K Games, Inc.; 2K Sports, Inc.; World Wrestling Entertainment, Inc.; Visual Concepts Entertainment; Yuke’s Co., Ltd.; and Yuke’s LA, Inc., Defendants., 2019 WL 8109809 (S.D.Ill.)
I actually went to look up the G.R. Leonard case just to read the section on de minimis use for myself because I had a hard time believing that the Seventh Circuit had never dealt with this issue before. Take-Two was right, of course. Alas, needless to say, the court found against Take-Two on this defense also.
Finally, the court denied Take-Two’s MSJ on the issue of damages finding that there “is disputed evidence regarding the value of the copyright tattoo works to the videogames.”
The only real winners here are the lawyers. It really felt like the court just wanted to punt everything to the jury and didn’t want to deal with this case. If the court thought that maybe this would pressure the parties to settle, the court was probably wrong. My guess is that Take-Two won’t settle this case and will continue fighting through trial. The only thing this does is drag the case out unnecessarily for several more months.