Tattoo Copyright
10:14 AM
hangover tattoo.jpg
Looks like The Hangover 2 continues to suffer some bad tattoo juju. First, the controversy surrounding who would play the small role of tattoo artist in the film. And now, the tattoo design itself.

Victor Whitmill, who did Mike Tyson's infamous facial tattoo in 2003, is suing Warner Bros. for copyright infringement in pirating his tattoo design "without attempting to contact [him], obtain his permission, or credit his creation"; he seeks damages and an injunction to stop the use of the tattoo in the film--which is essentially a big part of the movie. In The Hangover 2, a bachelor party once again leaves our wacky heroes with no clue of what happened the night before, except for a facial tattoo on the groom Stu (Ed Helms). There's also a monkey. See the trailer below.

Looks pretty funny but the legal claims are quite serious. [Download the complaint here.]

Tattoos. Copyright.
The media is loving it. But in so many discussions of the case, there's a great deal of misinformation, so I'd like to break it down as best as I can.

First, when I wrote "The Tattoo Copyright Controversy for BMEzine in 2003, I approached it like a law school hypothetical; that is, I played with how intellectual property rules would apply in various potential disputes involving the ownership of a custom tattoo design. It was hypothetical because, at the time, no actual cases on record could be found specifically addressing this issue. Well, a lot has changed since 2003. Tattoo artists have sued companies for infringement and a number have received large settlements. Even collectors, like model & photographer Amina Munster [NSFW], have registered their tattoos with the US Copyright Office to discourage other collectors from copying.

The basics behind "The Tattoo Copyright Controversy still hold in addressing what exactly is copyright and its relation to tattoos. A couple of years later, I updated the article for and continued to post developments on my old blog. So click these article links for more of a general discussion.

In this post, I'm going to break down the tattoo copyright issues in relation to Whitmill v. Warner Bros. Entertainment Inc., (E.D. Missouri), what I'll call:

The Mike Tyson Tattoo Copyright Case 101...
Mike Tyson Tattoo.jpg1. Whitman's tattoo design for Tyson can indeed be protected under copyright. Despite what you read in comment forums on this case, copyright does apply to tattoos. Protection exists from the time the work is created in fixed form, in sketch and/or on skin. No registration required. But to file an infringement suit, Whitman did have to register his copyright. [The registration was certified April 19, 2011.] If Whitman had registered his work before the infringement or within three months from the date of the tattoo, he may have gotten statutory damages (determined by law not just loss) if successful in his suit. But an award to recover actual damages and profits may still be available, as well as the injunction to stop the film. What those actual damages and loss of profits are is not stated in the complaint. Click here for more on damage rewards.

2. Based upon what I've read in the complaint, the tattoo is not a work for hire. Another huge misconception being floated about. In work for hire, the person commissioning a work is considered its author with regards to copyright. That person does not simply have a license in the work but owns the work, not the original creator. Work for hire can apply in employer/employee relationships and to independent contractors if certain requirements are met. Not all commissioned works fall under "work for hire." Even if a work meets the specific conditions for a work for hire [which tattoos don't seem to do], the parties must "expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." No work for hire here exists. Click here for more on work for hire.   

3. What does exist, based on the complaint, is a release form that Tyson signed acknowledging "that all artwork, sketches and drawings related to [his] tattoo and any photographs of [his] tattoo are property of Paradox-Studio of Dermagraphics" (Whitman's studio). Generally, when it comes to tattoos and copyright, a number of parties can have an interest in a particular work: the artist, the studio owner, the author of the original design, and the client -- individually or jointly. But here, Tyson allegedly signed over his rights in the work.  

4. But clearly Tyson can't go around covering his face every time there's a camera around, so one can argue that an implied non-exclusive license exists for Tyson who paid for and wears the work. Professors Kal Raustiala and Chris Sprigman do a great job discussing implied license in their Freakonomics article:

Because Whitmall's tattoo is a work of art attached to a person, any judge is going to have a hard time holding that Tyson can't do ordinary things because the tattoo artist owns the exclusive right to publicly display Tyson's tattoo. And for a celebrity like Tyson, ordinary things include appearing in films. So courts would tend to assume that there is an 'implied license' between Tyson and Whitmill that Tyson will appear on camera now and again, and therefore so would the tattoo.

So the real problem here is not that the tattoo appeared in The Hangover: Part II--or, for that matter, in The Hangover--without Whitmall's permission. It is that it was applied to Ed Helms. It is the copying that matters. So even if Helms' scenes were left on the cutting room floor, but he kept the tattoo on for a few days while hanging out, Whitmill would still have a case. But Tyson can appear in as many films as he wants, and Whitmill is unlikely to get a dime.

In his complaint, Whitman makes it very clear from the beginning that this isn't a case about Tyson showing up on the screen in all his tattooed glory:

For Mr. Whitmill, this case is not about Mike Tyson, Mike Tyson's likeness, or Mike Tyson's right to use or control his identity. This case is about Warner Bros. appropriation of Mr. Whitmill's art and Warner Bros. unauthorized use of that art, separate and apart from Mr. Tyson.

5. On more of an artistic front, I've read a lot of comments online saying that this is just some generic neo-tribal tattoo and there's nothing original about it to protect. I address the originality issue in greater detail in The Tattoo Copyright Controversy, but in a nut shell, a work can be original without being unique. Copyright protects the specific expression of concepts and ideas, even common ones. Whitman custom designed this tattoo and did not just take it from a flash sheet, and so yes, even squiggly lines can have protection.

6. Perhaps the strongest argument Warner Bros. may have is in the Fair Use Doctine. Purposes that could be considered "fair" in reproducing the work include criticism, comment, news reporting, teaching, scholarship, and research. Parody is also a big one, and I can see Warner Bros. using this in their defense. Stanford University Library has a good primer on Fair Use in which it discusses the four factors that judges look to in deciding whether a purpose and character of the use really is fair. A lot of that has hinged on how "transformative" the work is. In Campbell v. Acuff-Rose Music, Inc., the Supreme Court looked at whether "the new work merely supersedes the objects of the original creation, or whether and to what extent it is controversially 'transformative,' altering the original with new expression, meaning, or message." It added, "The more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use."  So, is this nearly exact copy of Whitman's tattoo on Tyson transformative in the film and could it be considered parody protected under Fair Use? That's up to the court. And I don't see the court throwing out the case on its face or deciding it before The Hangover 2 Memorial day release.

Tyson facial Tattoo.jpgThe smart money is on settlement -- which is what happened in two other major cases where tattoo artists sued because their work on a celebrity was used in publicity. In 2005, Portland tattooist Matthew Reed sued Rasheed Wallace and Nike to stop them from using the custom tattoos he designed for the basketball star in a Nike sneaker ad. The ad focused on the tattoo and even simulated its creation. Also in 2005, UK tattooist Louis Molloy threatened to sue David Beckham if he went ahead with a promotional campaign that also focused on a tattoo Molloy did for him (the guardian angel tattoo). With no clear answer on how judges would go in the cases, agreements between these athletes and artists were reached outside the courts. I'm guessing Whitman and Warner Bros. may do the same. [Although I am hoping that a tattoo copyright case is decided so I can put my hypotheticals to rest.]

The Wallace and Beckham cases got their share of press six years ago, so you'd think those in the public eye would learn an important lesson: 

Get an agreement down in writing detailing who owns the work & what can be done with it.
We'll be continuing this discussion within the next few weeks on balancing the rights tattoo artists have in publishing their work with the privacy rights of their clients, as well as those "tattooists" who copy custom tattoos and convey them as their own original work.

This article is not intended as legal advice. It is intended for only general information purposes. This article does not create any attorney-client relationship.

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