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Intellectual Property

The Hangover II Must Go On: Tattoo Artist Denied Injunction in Mike Tyson/Tattoo Copyright Suit against Warner Brothers

On May 24th, the Honorable Catherine D. Perry issued an oral opinion denying S. Victor Whitmill a preliminary injunction in his tattoo copyright suit against Warner Brothers and the Hangover II (S. Victor Whitmill vs. Warner Bros. Entertainment Inc., 11-cv-00752 (E.D. Mo. April 28, 2011)).

ORDER. IT IS HEREBY ORDERED that plaintiff's motion for preliminary injunction [# 2 ] is DENIED. IT IS FURTHER ORDERED that a telephone scheduling conference is set for Friday, June 17, 2011 at 10:30 a.m. Plaintiff's counsel is responsible for placing the call and having all necessary counsel on the line. The parties shall submit a joint scheduling plan no later than seven (7) days before the conference. (Joint Scheduling Plan due by 6/10/2011. Telephone Conference set for 6/17/2011 10:30 AM before Honorable Catherine D. Perry). Signed by Honorable Catherine D. Perry on 5/24/11. (KLH) (Entered: 05/24/2011)

Facts of the Case

Initially, Chief Judge Perry noted that the facts were largely uncontested. She noted that:

  • Whitmill created the tattoo as an original piece for Mike Tyson, who then signed a release to Whitmill;
  • neither Tyson nor Warner Brothers sought Whitmill's approval before either Hangover movie;
  • the Hangover I showed only Tyson's face and did not use the tattoo apart from his face. Not until the Hangover II was Whitmill aware of any non-Tyson uses of the tattoo;
  • the second movie, which uses the tattoo on another character's face, uses the tattoo in a majority of the scenes. However, the tattoo is insignificant to the plot line; and
  • Warner Brothers has spent millions promoting the film and its scheduled opening.

Legal Issues

In addressing the legal issues, Judge Perry looked to the factors set out in Dataphase Sys. v. C L Sys., 640 F.2d 109 (8th Cir. Mo. 1981) [enhanced version available to subscribers], which include: 1) plaintiff's likelihood of success on the merits; 2) whether plaintiff is threatened with irreparable harm; 3) the balance of the equities; and 4) the public interest.

Likelihood of Success on the Merits

Addressing the first factor, Judge Perry described plaintiff's likelihood of prevailing as "strong" and called defendant's countervailing arguments as "silly." She found no reasonable dispute regarding the copyrightability of tattoos, noting that the copyright did not apply to Tyson's face. Likewise, the use of Tyson's face was not being restricted, nor was Tyson being restricted in removing or changing the tattoo. The claim was limited to the copyrightability of the tattoo itself and the design itself. Judge Perry also called the contract/release "totally consistent and appropriate under copyright law."

As for the estoppel issue, Judge Perry limited Whitmill's knowledge with regards to the tattoo's use pre-Hangover II. Prior to the second movie, she noted that Whitmill only knew of the tattoo as it was associated with Tyson.

Judge Perry went on to underscore the lack of evidence regarding any kind of license for Warner Brothers to use the tattoo. Thus, Warner Brothers' use of the tattoo was unauthorized. She also noted that Tyson's trademark application was not inconsistent with Whitmill's copyright.

Finally, Judge Perry addressed Warner Brothers' fair use and parody arguments. She noted that Warner Brothers' use of the tattoo did not comment on the artist's work or have any critical bearing on the original composition. Change to the tattoo and parody were both lacking, and the tattoo as a plot device could have been replaced with any other tattoo. The copy was exact, which made sense to Judge Perry because it tied into Tyson's appearance in the Hangover II.

Irreparable Harm

Judge Perry found irreparable harm -- already suffered and possibly continuing -- because Whitmill had lost control over the tattoo/image. As an example, she pointed to a 7-Eleven promotion, where the image itself was being used. Whitmill had neither compensation nor the right to stop the tattoo/image's use.

Balance of the Equities / Public Interest

In looking at the final two factors, Judge Perry weighed the issues in Warner Brothers' favor. Balancing the equities, she described the harm to Warner Brothers as "very large" and outweighing Whitmill's harm. She noted:

  • Warner Brothers would lose millions if the movie was enjoined;
  • the rules, though the same for big versus little, applied, in this case at least, in favor of the big guy;
  • Whitmill, a relatively small player, was losing control of his art, while Warner Brothers, a big player, would potentially lose a lot of money; and
  • it was only one tattoo/design, without effect on the subsistence of Whitmill's business.

As for the public interest, which Judge Perry called an "interesting question," the public's desire to see the Hangover II was taken into consideration. Of importance, Judge Perry also underscored the effect on non-parties, particularly, theater owners and distributors. The public interest favored protecting business people and preventing nonparties from losing money, which would occur in the event of an injunction. This, Judge Perry stated, titled the public interest in Warner Brothers' favor.

Preliminary Injunction Denied

Putting all four factors together, Judge Perry denied Whitmill's motion for a preliminary injunction. However, despite the ruling, Judge Perry said Whitmill would "probably win" the case. 

For more information on this case read:

UPDATE: Tyson, Tattoos, and the Hangover II: Warner Brothers Punches Back in Round Two of Copyright Lawsuit


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