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Alexander v. Take-Two Interactive Software, Inc.

In copyright infringement lawsuit involving depiction of professional wrestler’s tattoos in video game, district court denies defendants’ motion for summary judgment, rejecting implied license, fair use and de minimis use defenses.

Former tattoo artist Catherine Alexander filed a copyright infringement action against defendants Take-Two Interactive Software Inc., 2K Games Inc., 2K Sports Inc., Visual Concepts Entertainment and World Wrestling Entertainment Inc. based on the depiction of six tattoos that she inked on WWE professional wrestler Randy Orton in defendants’ WWE 2K video game series. In creating WWE 2K, the Take-Two defendants replicated Randy Orton’s likeness, including copying and digitally reproducing plaintiff’s tattoos. Take-Two obtained a license to portray Orton’s likeness from WWE, which had a license from Orton related to the tattoos. WWE reviewed and approved the digital depiction of the tattoos to make sure that they were accurate. Plaintiff moved for partial summary judgment on the issue of copying, and defendants moved for summary judgment, arguing that Alexander’s copyright claim fails as a matter of law based on a number of defenses. 

In her motion for partial summary judgment, plaintiff argued that no dispute of material facts existed on the required element of copying because defendants admitted to copying her original tattoos without her permission. Citing Second and Fifth Circuit decisions, defendants countered that Alexander had to establish legally actionable copying and that she could not. The district court rejected defendants’ argument, explaining that under Seventh Circuit precedent, plaintiff need only show that defendants used her property, while the burden of proving that the use was authorized falls squarely on defendants. The court granted plaintiff’s motion for partial summary judgment as to the copying element, because it is undisputed that Alexander holds valid copyrights for the tattoos at issue and that defendants copied her work. 

In their motion, defendants contended that Alexander’s copyright infringement claim fails based on three independent affirmative defenses: (1) Take-Two’s use of the tattoos was authorized by an implied license, (2) the fair use doctrine insulates their utilization of the tattoos and (3) the tattoos constitute a de minimis part of WWE 2K. Additionally, defendants argued that Alexander cannot prove any actual damages. The district court denied summary judgment for each independent affirmative defense. 

Defendants argued that Alexander impliedly licensed Orton to disseminate and distribute the tattoos as a part of his likeness because she created the tattoos at his request and never informed him that further use of the tattoos would constitute infringement. Alexander testified that she has never permitted clients to use copies of her tattoos in video games and argued that defendants have conflated Orton’s rights to his own likeness and to appear in the media with an implied license to use her copyrights for unlimited commercial purposes. The court denied summary judgment on this affirmative defense, finding it unclear whether Alexander and Orton ever discussed permissible forms of copying and distributing the tattoos, and whether any implied license would include sublicensing rights, constituting a triable issue of fact on the scope of any license. 

The court likewise found triable issues of fact on defendants’ fair use defense, including whether the purpose and character of the use of plaintiff’s tattoos were transformative, as defendants argued, or whether, as Alexander contended, her creation of the tattoos and defendants’ use of the tattoos was for the same purpose: to display on Orton’s body. The court also rejected defendants’ argument that tattoos are not (or are minimally) protected by copyright law, noting the creative and expressive efforts that go into tattooing and that Alexander holds a copyright for five of Orton’s tattoos. That defendants copied each tattoo in its entirety rather than using only those elements of the tattoos necessary to create realism for the video game also weighed against a finding of fair use. As to the market effect of the copying, the court found that potential market harm whereby other video game manufacturers fail to pay licensing fees for copyrighted works (potentially beyond tattoos) militates against fair use as an affirmative defense. 

Defendants argued that because Orton is one of many wrestlers depicted in the WWE 2K series, it is difficult to see his tattoos during game play, and because the tattoos make up a small percentage of the video game data, defendants’ use of Alexander’s work is de minimis. Finally, the court addressed the test for whether an allegedly infringing use is de minimis if the copying is “so trivial as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying.” Noting an open question as to whether the Seventh Circuit recognizes this defense, the court found defendants’ specific de minimis argument unavailing. “The defense has been successfully invoked to allow copying of a small and usually insignificant portion of the copyrighted works, not the wholesale copying of works in their entirety as occurred here.”

Defendants additionally claimed entitlement to summary judgment on the ground that Alexander cannot show actual damages or Take-Two’s profits. The court denied summary judgment on this basis, holding that an issue of material fact exists as to whether Alexander suffered actual damages based on the alleged infringing use. In particular, the court noted disputed evidence as to the value of Alexander’s copyrighted tattoos to the video game series. While defendants argued that evidence shows that consumers do not purchase the video games because of the tattoos, other evidence does show they purchase the WWE 2K series for the authenticity of the wrestlers’ appearance. Defendants admitted that they consider consumer response in their development design decisions and acknowledged both that consumers expect authenticity and that WWE would have rejected Orton’s video game avatar without his actual tattoos.

The court’s decision stands in stark contrast to the decision earlier this year by the Southern District of New York in Solid Oak Sketches, LLC v. 2K Games, Inc., in which the court granted summary judgment to 2K Games and Take-Two Interactive, concluding that the depiction of the tattoos of basketball players in the NBA 2K video games series was de minimis use, constituted transformative fair use and was subject to an implied license from the tattoo artists to use tattoos as part of players’ likenesses. (Read our summary of that decision here.)

Summary prepared by David Grossman and Mariah Volk

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