BY:  DOUGLAS DONESON

On February 10, 2003, while living in Las Vegas, Mr. Whitmill, a visual artist created a tattoo, which appears on the upper left side of former heavyweight champion boxer Mike Tyson’s face.[1] When Mr. Whitmill created the tattoo, Mr. Tyson agreed that Mr. Whitmill would own the artwork and thus, the copyright in the tattoo.[2] Warner Brothers Entertainment Inc. copied Mr. Whitmill’s tattoo and placed it on the face of another actor in its upcoming motion picture, The Hangover 2.[3] The studio did not contact Mr. Whitmill to obtain his permission or to credit his creation.[4]

Mr. Whitmill sued Warner Brothers for appropriation of his art and unauthorized use of that art. He claimed Warner Brothers infringed the use of his tattoo throughout the movie as well as in extensive advertising and promotions for the movie. In his complaint, Mr. Whitmill claimed that the unauthorized exploitation of the tattoo constituted copyright infringement.[5]

May 24, 2011, Chief Judge Catherine D. Perry, of the US District Court for the Eastern District of Missouri denied tattoo artist Mr. Whitmill’s motion for a preliminary injunction.[6] This insured that The Hangover 2 would be released as scheduled.

Chief Judge Perry based her decision on four factors: the likelihood of Mr. Whitmill succeeding on the merits, whether Mr. Whitmill would suffer irreparable harm, the balancing of equities, and the harm to the public if the injunction was
granted.[7]

Chief Judge Perry weighed the first factor, the likelihood of Mr. Whitmill succeeding on the merits, in favor of Mr. Whitmill. The court made it clear that Warner Brothers’ defenses to infringement were “silly” and soundly rejected the
defendant’s argument that tattoos are not protected by copyright, even if they had been first expressed on paper or another tangible medium of expression.[8]

She also weighed the second factor in favor of Mr. Whitmill. Chief Judge Perry was concerned with the plaintiff’s loss of control over his design as irreparable harm.[9] She noted that while there was no presumption of harm, it nevertheless was a law bar to reach, and was met by the plaintiff.[10]

The third factor, balancing of equities, weighed against Mr. Whitmill. The court held that the balancing of moneys that Warner Brothers would lose versus the irreparable harm suffered by Mr. Whitmill over the loss of control of his work
weighed in favor of Warner Brothers.[11]

Finally the last factor that seemed to weigh most heavily against granting the injunction was the harm to the public.[12] Movie theaters, concession vendors, and others who were not Warner Brothers and not party to the suit would suffer great economic harm if the movie was not released on time.[13]

This is not the first time a tattoo artist has tried to claim copyright ownership on a tattoo.  In 1998, while Rasheed Wallace was playing for the Portland Trail Blazers, he approached Matthew Reed from TigerLilly Tattoo.[14] Wallace told Reed they he wanted an Egyptian themed family design with a king, queen, three children, and a stylized sun in the background.[15] Reed researched the idea and came up with the design.[16] After he tattooed Wallace, he became aware of a Nike ad that focused on the tattoo and its creation.[17] Similar to Mr. Whitmill, Reed also claimed that the ad violated the copyright he held to “the Egyptian Family Pencil Drawing.”[18] The dispute between Reed and Wallace settled out of court.[19] So no precedent was set regarding whether or not a tattoo may be copyrighted.

According to Section 102(a) of the Copyright Act, copyright protection subsists in original works of authorship fixed in any tangible medium of expression.[20] A work of authorship may include literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial works, graphic and sculptural works, motion pictures, or sound recordings.[21] And, an original work of authorship must be fixed in a tangible medium of expression, meaning it must be embodied in a copy, phonorecord, or be sufficiently permanent or stable to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. Finally in order for a work to be original it must have a modicum of creativity, meaning that the collection and assembling of preexisting materials must be coordinated or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.[22] But this is a fairly low bar to overcome.

Certain things are not protected by copyright. Some of the things that may not be copyrighted are de minimus works (such as slogans, short phrases or words), straight facts (without original expression), government works[23], anything oral, typefaces, and scenes a faire.

Here, under the Copyright Act it seems like a tattoo may receive copyright protection. Tattoos are original works of art because they are graphic images drawn by an artist. Tattoos are fixed in a tangible medium of expression because they are tattooed onto skin; they are sufficiently permanent or stable to be perceived.  Finally, a tattoo probably meets the modicum of creativity requirement.

But, Professor David Nimmer of UCLA submitted on affidavit on behalf of Warner Brothers. Nimmer warns the court about the consequences of a person who “owns rights in an image inscribed into another human being’s flesh”—

The consequences of recognizing copyright protection for a tattoo, qua tattoo, include the following:

a.         The tattoo qualifies as an original “work of visual art” that may gain “recognized stature,” with the result that a court may enjoin its destruction. See 17 U.S.C. §106A(a)(3)(B). After a court invoked that provision to bar him from removing his tattoo, Mr. Tyson literally may not show his face to the world; that is he will be required to keep Mr. Whitmill’s handiwork spread across his face, regardless of his own desires. Copyright law thereby becomes the instrument to impose, almost literally, a badge of involuntary servitude, akin to the mark with which ranchers brand the cattle they own. See generally Thomas F. Cotter & Angela M. Mirabole, Written on the Body; Intellectual Property Rights in Tattoos, Makeup, and Other Body Art, UCLA Ent. L. Rev. 97, 112-14 (2003).

b.         If Mr. Tyson chooses to obtain an adjacent or overlapping tattoo on his face, he will have compromised the copyright owner’s right to prepare derivative works, thereby becoming a copyright infringer. See 17 U.S.C. §106 (2). As such, he is subject to a court order that the offending work be destroyed. See 17 U.S.C. §503(b). A court that vindicates Mr. Whitmill’s statutory rights by ordering laser removal of unauthorized product has allowed the Copyright Act to be perverted, once again, into an instrument rendering Mr. Tyson into a virtual slave.

c.         A magazine article that features a picture of Mr. Tyson’s face violates the copyright owner’s display right. See 17 U.S.C § 106(5). A Television network that broadcast’s Mr. Tyson’s boxing match violates the copyright owner’s performance right. See 17 U.S.C. §106(4). The same applies to a studio that makes a documentary about Mr. Tyson and the theatre that screens the film. If Mr. Tyson authorized those various usages, he is a contributory infringer in each instance.

Those considerations could be multiplied throughout the spectrum of copyright doctrine, but the foregoing three examples suffice to illustrate the dangers of adopting the unprecedented stance that tattoos are subject to copyright protection.[24]

Whether a tattoo may be copyrighted is still an unsettled issue, because, like Wallace’s case, this one settled too.  Warner Brothers’ lawyers appeared to be worried enough about their chances to declare in a court filing that the studio would digitally alter the facial design of the tattoo for the DVD release.[25] Further, Warner Brothers and Mr. Whitmill have amicably resolved their dispute.[26] “No other information will be provided,” Mr. Whitmill’s attorney Geoff Gerber, said in a joint statement with Warner Brothers.[27]

A tattoo seems to qualify for copyright protection under the Copyright Act, even though the consequences would be absurd and almost unenforceable. The defense attorneys in both Wallace’s case and the Warner Brothers’ case did not want to take the risk of losing and setting a dangerous precedent by proceeding to trial. From both of these cases settling, one might infer that a tattoo may qualify for copyright protection.

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