Brent Randall is a JD candidate at the University of Ottawa.
On May 24, 2011, in Missouri, US District Court Judge Catherine D. Perry denied an injunction requested by tattoo artist S. Victor Whitmill against Warner Bros. to prevent the release of the upcoming comedy film “The Hangover: Part II” on May 26. Mr. Whitmill claims that the studio infringed his copyright in Mike Tyson’s famous face tattoo by having a character in the film get a similar one.
While Judge Perry denied the injunction for the sake of public interest (as Warner Bros. had already spent a lot of money advertising the film and theatres were equally relying on its stated release date), she allowed Mr. Whitmill’s case to go forward. What is more, she even affirmed that he had a, “strong likelihood of prevailing on the merits for copyright infringement.” How might Mr. Whitmill own copyright in something tattooed onto another person’s skin?
A key distinction to be made when considering this case is the difference between ownership of a material item embodying a copyrighted work and the ownership of the copyright itself. Section 13(4) of the Copyright Act (all references are to the Canadian Copyright Act) speaks to the ability of a copyright owner to grant an interest in his or her right by way of a licence. This means that when someone purchases a shirt with a brand logo on the front, that logo is licensed to be worn on the shirt, but does not entitle the buyer to then make additional shirts with the logo. Similarly, Mr. Whitmill is arguing that he created the design of Mr. Tyson’s tattoo and having it inked on the client’s skin was a licence, not an assignment of the copyright.
In an interesting article from 2006, Chicago lawyer Christopher A. Harkins looked at the rather novel concept of copyright in tattoos with reference to the case of Reed v. Nike, Inc. et al. (see also this article by Jordan S. Hatcher for another opinion). In that case, Mr. Reed gave a tattoo to former NBA player Rasheed Wallace which was later prominently featured in an advertisement for Nike. According to Mr. Harkins’ article, Mr. Wallace and Mr. Reed collaborated to an extent on the Egyptian-themed design, but there was no agreement beforehand about who would own the rights to the image. In Canada, Mr. Wallace could possibly succeed with an argument of joint authorship and would likely be required to split any profits derived from the tattoo’s use with Mr. Reed. However, Mr. Reed could also be deemed the sole creator of the image, and therefore the first and only copyright owner based on section 13(1) of the Copyright Act if no arrangement was made otherwise. (See Neudorf v. Nettwerk, a case dealing with Sarah McLachlan and a producer collaborating on her music for more discussion on joint authorship). Mr. Reed’s claim was ultimately settled out of court.
All of this is to say that whether an artwork is on canvas or skin, ownership and protection of the copyright might still remain the same. But would treating copyright in tattoos similarly open the floodgates? Could Nike and their current NBA spokesperson Lebron James be liable for copyright infringement when their promotional materials clearly show his tattoos? The use of Mr. Wallace’s tattoo was the focus of the allegedly infringing advertisement, much like Warner Bros.’ alleged usage of Mr. Whitmill’s tattoo design is an aspect of promotion for their film. Mr. James’ tattoos are more incidental, it seems, which could make a difference.
What may stop any concern for the floodgates opening is an apparent “code” that many tattoo artists seem to follow. New York lawyer Marisa Kakoulas wrote in 2003 about how negatively many artists reacted to the idea of getting lawyers involved to protect the copyright in tattoos. However, Ms. Kakoulas, writing on Mr. Whitmill’s case, sees that this has started to change in the wake of cases like Mr. Reed suing Nike or a tattoo artist suing fashion designer Christian Audigier for using his designs in ways he never consented to, such as on pet accessories. The lesson Ms. Kakoulas sees from all of this: get an agreement down in writing detailing who owns the work and what can be done with it.
Warner Bros.’ counsel wrote in its opposition to Mr. Whitmill of its concern in recognizing skin as a “tangible medium of expression” covered by copyright. While the skin is certainly as tangible as a canvas, it has a distinct difference, namely, that it is connected to a person. For example, could a tattoo artist realistically have moral rights, set out in section 14.1 of the Copyright Act, in a tattoo inked onto a customer? A person should have the right to control what is on their skin, but an artist might feel an alteration of their tattoo art is objectionable treatment of their work. It would seem that any exercise of moral rights by the artist would directly impact the customer’s Charter rights. While copyright seems to easily apply to some aspects of tattoo art, the fact that the canvas is a person has to have some bearing on the protection afforded – to what extent it does will hopefully be answered by Judge Perry.
The ultimate decision in Mr. Whitmill’s copyright claim might be seen as stripping tattoo artists of significant creative rights, or it may bring a lot of contractual and legal issues (at least for celebrity customers) into tattoo parlours across the United States.
4 Responses
A similar dispute arose in the early 1980s in England on whether the mock native warpaint that pop singer Adam Ant (a.k.a. Stuart Goddard) painted on his face comprised a “painting” under the U.K. Copyright Act 1956. The English Court of Appeal held that it did not. Lawton LJ for the court said (Merchandising Corp of America v Harpbond Ltd [1983] FSR 32, 46):
“Mr. Wilson’s bold submission at the beginning of his presentation of his clients’ case was that the marks on Mr. Goddard’s face by way of facial make-up were painting. That caused me very considerable surprise, because, although there are various statutory provisions in the Act defining various words used in it, there is no statutory definition of a painting. “Painting” is a word in the ordinary usage of the English language and it is a question of fact in any particular case whether that which is under discussion is or is not a painting. It seemed to me, right at the beginning of Mr. Wilson’s submissions (and I want to be restrained in my language), that it was fantastic to suggest that make-up on anyone’s face could possibly be a painting.
“Mr. Swift, in his succinct and concise reply, pointed out what had occurred to me and I had mentioned to Mr. Wilson in the course of argument, that a painting must be on a surface of some kind. The surface upon which the startling make-up was put was Mr. Goddard’s face and, if there were a painting, it must be the marks plus Mr. Goddard’s face. If the marks are taken off the face there cannot be a painting. A painting is not an idea: it is an object; and paint without a surface is not a painting. Make-up, as such, however idiosyncratic it may be as an idea, cannot possibly be a painting for the purposes of the Copyright Act 1956.”
This sounds all wrong. Nothing in the Copyright Act says that a face cannot be a surface; and ephemeral art (sand or ice sculpture) is as protectable as any other. In the UK then & now, “artistic work” is said to “mean” a closed list of items, of which painting was one. In Canada, artistic work is said to “include” a similar closed list, so that something that did not qualify as a painting could qualify as a generic work of art. So tattoos should easily qualify.
Whether there is a user right is a problem. Authority in the U.S. is against inclusion of an art work in a film counting as a fair use (Ringgold v. Black Entertainment Television Inc. 126 F3d 70 (2d Cir 1997) and I doubt the de minimis rule applies. So we come to remedy. Clearly, the case is all about money & the court should not grant an injunction or delivery up of anybody’s face, in whatever jurisdiction such as case is brought.
A couple of comments on the points Mr Randall makes in his interesting note: An argument of implied licence may be open, for which no writing is required either in the US or elsewhere. The argument would be that, having paid for the tattoo, Mr Tyson expected he would have the right to allow people to photograph him without expecting them to have to pay a further fee to the tattooist. And why should it matter whether the photographer paid Mr Tyson for this privilege or not? In other words, the implied licence should cover sub-licences, whether for money or not. This implication would be a reasonable implication in the contract between the Mr Tyson & the tattooist. I think that’s quite a strong argument. In Canada, it would also apply to moral rights in the former of an implied waiver allowing the wearer to modify or wipe out the tattoo as he wished (if he could).
There may be a case for arguing joint authorship, depending on how specific Mr Tyson’s instructions were to the tattooist, but the Neudorf case Mr Randall cites on the test for joint authorship is no longer good law in Canada: see Neugebauer v. Labieniec, 2009 FC 666 at [51]–[52], aff’d 2010 FCA 229 ; Beckingham v. Hodgens, [2002] EMLR 45, aff’d [2003] EWCA Civ 143 at [12] & [49]–[53].
Thank you for this reply Professor Vaver, including the update on the situation with joint authorship. I was not aware of this new development in the case law.
Regarding Mr. Tyson having an implied licence to have people photograph his tattoo, I agree. I don’t think that Mr. Whitmill would have any way of stopping Mr. Tyson from appearing in any kind of media that he wants. However, I think Mr. Whitmill has an argument in that it may be implied, in giving the tattoo to Mr. Tyson, that the transaction is between those two parties and whatever incidental interaction may occur with others (such as TMZ taking a photo of Mr. Tyson and putting it on their website). It might not be implied that the tattoo will be exploited in such a way that it is essentially being taken from Mr. Tyson’s face and put onto another’s (Ed Helms, who plays the character that gets the tattoo in the Hangover II), for the sake of getting some laughs at the character’s expense as well as being prominently used in promotional materials for the film.
There is nothing particularly unique about the tattoo in itself. I think the tattoo is noteworthy because 1) it is on Mike Tyson and 2) it is on his face, which is rather uncommon. People don’t recognize the tattoo because of Mr. Whitmill’s artistry. If it wasn’t Mr. Whitmill it would have been another tattoo artist tattooing Mr. Tyson’s face, and we’d still be talking about it in a similar way. However, the tattoo is still, to whatever extent, still an exercise of Mr. Whitmill’s creativity, and that creativity is arguably being used for the ends of Warner Bros., not Mr. Tyson.
Courts imply terms to fulfil what the parties’ reasonable expectations of imperfectly expressed agreements. An implied term that nobody need pay the tattooist if Mr Tyson appeared in any film seems reasonable. A little less so, but not impossible, for an implication to cover his agreeing to let actors play or spoof him in a film. The implication stops where the film company has an actor play Mr Tyson without asking his consent (as it need not do for, eg, a biography). Why should the film company need a tattooist’s consent for this? If Mr Tyson had a distinctive hairstyle, would his stylist have to consent? What about a film on the band Kiss, with their distinctive makeup – would the makeup artist have to give consent, or be paid a royalty or damages? I don’t know the answers to these questions but just want to suggest that there is a distinction between using an artist’s painting in a movie, as in the Ringgold case where the artist recovered, and tattooists and makeup artists stopping people who act or whose lives are acted or alluded to from having such portrayals. For, in theory, were the artist asked ahead of time, he could say no, and why shouldn’t he then get an injunction if the film goes ahead without his consent if the subject is the central character? Possibly one would be refused in the court’s discretion and damages (or an account of a percentage of the profits ordered, as in the Sheldon v MGM case?) awarded. The reasonableness or disproportion of makeup artists, tattooists & hairstylists having such a right to control over what can be done with visual portrayals of another person’s character may be the central point of the case if it ever goes to trial.
According to The Hollywood Reporter (http://www.hollywoodreporter.com/thr-esq/hangover-ii-tattoo-lawsuit-warner-196349), Warner Bros. is prepared to digitally alter the tattoo if a settlement is not reached with Mr. Whitmill before the film is released on DVD.
It seems that Mr. Whitmill will not win his attempt to stop the distribution of the film, but theatrically, with the tattoo intact, it has grossed almost $347M worldwide. Mr. Whitmill could be in for a hefty settlement.
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