Posted On: July 20, 2011 by Melvin N.A. Avanzado

ENTERTAINMENT LITIGATION: WARNER BROS. SETTLES "HANGOVER II" LAWSUIT

STUDIO SETTLES COPYRIGHT INFRINGEMENT CLAIM BROUGHT BY TATTOO ARTIST

Hangover II Movie Poster

Late last month, Warner Bros. settled the copyright infringement lawsuit brought by the tattoo artist who designed the tatoo which appears on the face of former world heavyweight boxing champion Mike Tyson. The tattoo artist, S. Victor Whitmill, sued Warner Bros. for copyright infringement in April 2011 because Ed Helms' character in The Hangover: Part II sports a similar tattoo to the one Tyson made famous. Whitmill initially sought (unsuccessfully) to prevent or delay the release of the film. When that failed, Whitmill pursued his lawsuit in Missouri federal court, seeking damages and removal of his purported copyrighted work in any further exploitation of the movie. The settlement, of course, now eliminates the chance that Warner Bros. might be forced to digitally alter the movie.

After the jump, I'll discuss some of the legal issues raised by Whitmill's claims and why Warner Bros. likely felt it had to settle the case.

ALLEGATIONS REGARDING THE ORIGINAL WORK

Whitmill's complaint alleged that he not only created the "Original Tattoo" but also that “Mr. Tyson agreed that Mr. Whitmill would own the artwork and thus, the copyright in the Original Tattoo." Thus, Whitmill claimed that the use of the tattoo on Helms' character in the movie infringed Whitmill's copyrights.

Whitmill failed in his bid to enjoin Warner Bros.' theatrical release of the highly-anticipated sequel. Whitmill’s request was denied, probably in large part because of the thousands of movie theaters set to release the movie which would suffer irreparable economic harm by such an injunction as well as the risk that delay would increase the the risk of the film being leaked and pirated. Whitmill's lawsuit then proceeded as a claim for damages and permanent injunction -- meaning that, if Whitmill prevailed, Warner Bros. and the producers of Hangover II would be required to pay Whitmill money AND remove the offending art from any further distribution of the film. With this cloud of litigation hovering, the film opened in the U.S. over Memorial Day weekend as planned, raking in $137.4 million at the domestic box office. The film has grossed over half a billion dollars in worldwide box office – eclipsing the $467.5 million record held by the first Hangover film to become the biggest R-rated comedy of all time.

As an aside, in opposing Whitmill's request for a preliminary injunction and accelerated trial on a permanent injunction, Warner Bros. represented to the court that, if the case did not settle before the home video release on DVD and Blu-ray in December, Warner Bros. would voluntarily remove the offending tattoo from those prints. Thus, Warner Bros. was likely motivated to settle to avoid having to digitally alter the film.

Published accounts of the settlement did not disclose the financial terms.

THE COPYRIGHTABILITY OF TATTOOS

Under the Copyright Act, copyright protection subsists in “original works of authorship fixed in any tangible medium of expression.” Nothing in the Copyright Act expressly excludes tattoos from its coverage. Whitmill filed a copyright registration for the tattoo design and submitted Tyson's release granting rights in the work. These were the bases of his claim that the studio infringed upon his intellectual property by using that tattoo design on Helm's character's face.

Substantially similar?On the other hand, Warner Bros. argued that “[t]he very copyrightability of tattoos is a novel issue.” Warner Bros. contended that “[t]here is no legal precedent for [Whitmill]’s radical claim that he is entitled, under the Copyright Act, to control the use of a tattoo that he created on the face of another human being.” Warner Bros. also argued (a) that their use of the tattoo on the face of a character of a movie is a fair use parody (and the movie storyline does indeed include a parody of Tyson through the Helms character); (b) that their use was permitted by Tyson’s implied license as a result of his appearance in both Hangover films; and (c) that Whitmill is estopped from asserting a claim because of his failure to object to the use of the tattoo in the first Hangover film.

TAKEAWAYS

I have no doubt that a tattoo design is, in the abstract, capable of being a "work of authorship" under the Copyright Act. However, when the tattoo is inked onto a human being's skin, my issue becomes whether a human organ -- our skin -- can really be "fixed in a tangible medium of expression." If so, does every picture of Mike Tyson infringe Whitmill's purported copyright? More importantly, did Whitmill enforce his purported copyright every time Tyson was photographed? Indeed, since Tyson appeared in the film as well, did Whitmill make any claims based upon Tyson's appearance with the tattoo in the film? I prefer Warner Bros' "side" on all of these issues.

Nevertheless, even if Warner Bros. were likely to win at trial, the decision to settle is not surprising. The cost of digitally erasing the tattoo from Helms' face is probably significant. And those costs would be on top of the actual cost of continuing the litigation. Economic reality therefore dictated that the studio pay SOME amount to Whitmill, if for no other reason than to avoid those costs.

That said, it's somewhat disappointing that these novel copyright issues will not be adjudicated. Whether a tattoo on a human face (that is not the purported copyright holder) is a protectible work under the Copyright Act -- even if protectible, whether the use of the tattoo is a fair use parody of the original "work" -- and whether Tyson's appearance in the first Hangover film and in this second film affects Whitmill's claim that the appearance of his tattoo design in the film infringes upon his rights -- these are issues that may never be settled. (What tattoo artist would initiate such a suit again.)

Like I said, I would side with the studio on all of these issues. (Once upon a time, I represented Warner Bros. on intellectual property issues relating to a film.) However, even if I were defending this case now, it's hard to question the decision to settle -- even without knowing how much the settlement is going to cost the studio. The risks and potential costs are just too great, even if the merits of the claim are questionable. Still, it would have been fun to watch these issues be adjudicated had the studio drawn the proverbial line in the sand.

Maybe next time.

This post was co-written by Ailleen R. Gorospe of The Avanzado Law Firm. Ailleen will be instrumental in my attempts to increase the frequency of posts on this blog..

The Entertainment Litigation Blog is published by Melvin N.A. Avanzado, an entertainment litigator and civil trial lawyer in Los Angeles. Mel is an accomplished trial lawyer with over 20 years experience. Mel's practice includes extensive experience representing plaintiffs and defendants in complex disputes, including the representation of motion picture studios, television networks, media companies, and significant individuals in the entertainment and sports industries.

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