Alexander v. Take-Two Interactive Software, Inc. et al
Case No. 3:18-cv-00966
United States District Court for the Southern District of Illinois
Filed April 17, 2018

Tattoo artist Catherine Alexander sued Take-Two Interactive Software, Inc. (“Take-Two”), World Wrestling Entertainment, Inc. (“WWE”), and related entities for copyright infringement based on the depiction of tattoos inked by Alexander on professional wrestler Randy Orton in the WWE 2K series of video games.  Our prior reporting on this post is here, but the relevant background is repeated below.

Orton licensed WWE to use his likeness, and WWE later licensed Take-Two to portray Orton’s likeness in the WWE 2K series. As part of this agreement, WWE was allowed to, and did, review Orton’s tattoos for accuracy prior to release and marketing of the games. These tattoos include “tribal tattoos on Orton’s forearm, a Bible verse on his arm, a dove, a rose, and a skull.” Alexander testified that “she has never told a client they needed her permission to appear in different media, such as photographs, tv shows, or video games, nor has she ever given permission to any of her clients to use copies of her tattoo work in video games.”

At first blush, this case appears to be very similar to the Solid Oak Sketches, LLC v. 2K Games, Inc. and Take-Two Interactive Software, Inc. dispute that was the subject of frequent discussion earlier this year. However, the Southern District of Illinois ruling diverged significantly from that of Southern District of New York in Solid Oak. Recall that in Solid Oak, the court held the defendants did not violate Solid Oak’s copyright rights because (1) the defendants had an implied license to display the tattoos; (2) the defendants’ use of the tattoos constituted fair use – especially due to the transformative nature of the use; and (3) the defendants’ use of the Tattoos was de minimis within the full context of the NBA 2K games.

Plaintiff’s Partial Summary Judgment Motion

Alexander moved for partial summary judgment on the issue of actionable copying, which was granted based on Defendants’ admissions “to copying Alexander’s tattoos in their entirety in order to depict Orton in WWE 2K as he appears in real life.” Although the Defendants argued their “copying” was authorized and therefore non-actionable, the Court held that it is Defendants’ burden to prove their use is authorized, and since it is undisputed that Alexander holds valid copyrights in all five tattoos, and those tattoos were copied in their entirety, Alexander satisfied the burden necessary to win partial summary judgment on the issue of actionable copying.

Defendants’ Summary Judgment Motion

Take-Two and WWE moved for summary judgment, arguing the three affirmative defenses that were successful in Solid Oak: (1) Defendants had an implied license to display the tattoos; (2) Defendants’ use of the tattoos constituted fair use – especially due to the transformative nature of the use; and (3) Defendants’ use of the Tattoos was de minimis within the full context of the WWE 2K game. In contrast to Solid Oak, the court in Alexander v. Take-Two Interactive et al. was not persuaded by any of the Defendants’ affirmative defenses.

        Implied License Affirmative Defense

On the issue of an implied license, the Court found a triable issue of fact related to the portion of the analysis requiring that “the licensor intends that the licensee-requestor copy and distribute her work,” saying it was unclear whether Alexander and Orton discussed permissible forms of copying and distributing the tattoos or whether any implied license included sublicensing rights such that Orton could give permission for others to copy the tattoos. This is a notably higher bar for implied license than in Solid Oak, where the license was found to be implied by virtue of the tattooists knowingly inking designs on famous clients.

Therefore, the Court denied the motion with regards to an implied license.

        Fair Use Affirmative Defense

In its fair use analysis, the court looked at the four Fair Use factors:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

The court found that (1) there are material issues of fact related to the first factor; (2) the second and third factors do not weigh in favor of fair use here; and (3) market harm will need to be assessed based on further factual exploration of the first three factors.

Regarding the first fair use factor, Alexander argues that she created the tattoos for display on Orton’s body, and that Take-Two and WWE’s use of them on Orton’s likeness in the video games is the same purpose. However, Take-Two and WWE argue that their use is “transformative because the size of the tattoos are small and difficult to observe,” and creates a “fun, lush experience for game users” as only a small part of the video games as a whole. The Court found these to be material factual disputes inappropriate for summary judgment.

As to the fourth factor Take-Two and WWE argued that there is no market for licensing tattoos, and therefore Alexander has experienced no harm. Alexander argued that Defendants’ use may create a slippery slope where others will “take advantage of and fail to pay licensing fees for copyrighted works (above and beyond just tattoos) unilaterally deemed necessary to create “realism.”’ Although Alexander’s argument does not seem to address the specific case at hand, the Court was persuaded that this issue cannot be properly resolved on summary judgment.

Recall the Solid Oak court found no evidence of a market for licensing tattoos for use in video games or other media, and in granting summary judgment for the defendants, concluded that such a market was not likely to be developed. To the contrary, the Alexander court found that the fourth factor could not be resolved on summary judgment.

        De Minimis Use Affirmative Defense

Finally, the Court did not buy Defendants’ argument that their use of the tattoos is de minimis because the tattoos are hard to see in the game and are only a small part of the game as a whole, writing that the de minimis use defense “allow[s] copying of a small and usually insignificant portion of the copyrighted works, not the wholesale copying of works in their entirety as occurred here.”

Therefore, the Court denied the motion with regards to the de minimis use defense.

        Actual Damages

Take-Two and WWE also moved for summary judgment on the grounds that Alexander cannot show actual damages because she is not aware of any lost business as a result of the use of Orton’s tattoos in WWE 2K and argued that consumers do not purchase the games because of the tattoos. However, Alexander argued that she may have lost licensing fees, and that the authenticity of wrestlers’ appearances in the games do influence consumer’s decision to purchase the games. The Court denied the motion for summary judgment on the issue of actual damages, finding an issue of material fact.

The contrast between this decision and the summary judgment decision in Solid Oak is stark, and looks to potentially be the beginning of an established circuit split on the issue of copyright licensing and tattoos. If these differences remain with such similar fact patterns, it’s possible we’ll see this issue before the Supreme Court in the years to come. In the meantime, we’ll be watching to see if this case actually makes it to trial.

Thanks to our colleague Liz Brodzinski and Patent Arcade staff Riley Macdonald for preparing this case write-up.