Brent Randall is a JD candidate at the University of Ottawa.
On May 24, 2011, in Missouri, US District Court Judge Catherine D. Perry denied an injunction requested by tattoo artist S. Victor Whitmill against Warner Bros. to prevent the release of the upcoming comedy film “The Hangover: Part II” on May 26. Mr. Whitmill claims that the studio infringed his copyright in Mike Tyson’s famous face tattoo by having a character in the film get a similar one.
While Judge Perry denied the injunction for the sake of public interest (as Warner Bros. had already spent a lot of money advertising the film and theatres were equally relying on its stated release date), she allowed Mr. Whitmill’s case to go forward. What is more, she even affirmed that he had a, “strong likelihood of prevailing on the merits for copyright infringement.” How might Mr. Whitmill own copyright in something tattooed onto another person’s skin?
A key distinction to be made when considering this case is the difference between ownership of a material item embodying a copyrighted work and the ownership of the copyright itself. Section 13(4) of the Copyright Act (all references are to the Canadian Copyright Act) speaks to the ability of a copyright owner to grant an interest in his or her right by way of a licence. This means that when someone purchases a shirt with a brand logo on the front, that logo is licensed to be worn on the shirt, but does not entitle the buyer to then make additional shirts with the logo. Similarly, Mr. Whitmill is arguing that he created the design of Mr. Tyson’s tattoo and having it inked on the client's skin was a licence, not an assignment of the copyright.
In an interesting article from 2006, Chicago lawyer Christopher A. Harkins looked at the rather novel concept of copyright in tattoos with reference to the case of Reed v. Nike, Inc. et al. (see also this article by Jordan S. Hatcher for another opinion). In that case, Mr. Reed gave a tattoo to former NBA player Rasheed Wallace which was later prominently featured in an advertisement for Nike. According to Mr. Harkins’ article, Mr. Wallace and Mr. Reed collaborated to an extent on the Egyptian-themed design, but there was no agreement beforehand about who would own the rights to the image. In Canada, Mr. Wallace could possibly succeed with an argument of joint authorship and would likely be required to split any profits derived from the tattoo’s use with Mr. Reed. However, Mr. Reed could also be deemed the sole creator of the image, and therefore the first and only copyright owner based on section 13(1) of the Copyright Act if no arrangement was made otherwise. (See Neudorf v. Nettwerk, a case dealing with Sarah McLachlan and a producer collaborating on her music for more discussion on joint authorship). Mr. Reed’s claim was ultimately settled out of court.
All of this is to say that whether an artwork is on canvas or skin, ownership and protection of the copyright might still remain the same. But would treating copyright in tattoos similarly open the floodgates? Could Nike and their current NBA spokesperson Lebron James be liable for copyright infringement when their promotional materials clearly show his tattoos? The use of Mr. Wallace’s tattoo was the focus of the allegedly infringing advertisement, much like Warner Bros.’ alleged usage of Mr. Whitmill’s tattoo design is an aspect of promotion for their film. Mr. James’ tattoos are more incidental, it seems, which could make a difference.
What may stop any concern for the floodgates opening is an apparent “code” that many tattoo artists seem to follow. New York lawyer Marisa Kakoulas wrote in 2003 about how negatively many artists reacted to the idea of getting lawyers involved to protect the copyright in tattoos. However, Ms. Kakoulas, writing on Mr. Whitmill’s case, sees that this has started to change in the wake of cases like Mr. Reed suing Nike or a tattoo artist suing fashion designer Christian Audigier for using his designs in ways he never consented to, such as on pet accessories. The lesson Ms. Kakoulas sees from all of this: get an agreement down in writing detailing who owns the work and what can be done with it.
Warner Bros.’ counsel wrote in its opposition to Mr. Whitmill of its concern in recognizing skin as a “tangible medium of expression” covered by copyright. While the skin is certainly as tangible as a canvas, it has a distinct difference, namely, that it is connected to a person. For example, could a tattoo artist realistically have moral rights, set out in section 14.1 of the Copyright Act, in a tattoo inked onto a customer? A person should have the right to control what is on their skin, but an artist might feel an alteration of their tattoo art is objectionable treatment of their work. It would seem that any exercise of moral rights by the artist would directly impact the customer’s Charter rights. While copyright seems to easily apply to some aspects of tattoo art, the fact that the canvas is a person has to have some bearing on the protection afforded – to what extent it does will hopefully be answered by Judge Perry.
The ultimate decision in Mr. Whitmill’s copyright claim might be seen as stripping tattoo artists of significant creative rights, or it may bring a lot of contractual and legal issues (at least for celebrity customers) into tattoo parlours across the United States.