Govind Kumar Chaturvedi is an IPilogue Writer and an LLM graduate from Osgoode Hall Law School.
On 30 September 2022, the much-awaited jury verdict for Alexander v Take Two Interactive Software Inc. & Ors. was released. In the verdict form the jury stated that Defendants had not proven fair use, the Plaintiff (Alexander) should receive $3,750 USD for actual losses from the Defendant’s use of the tattoo designs, and did not answer as to profits can be attributed to the Plaintiff for use of the tattoos.
Alexander inked WWE professional wrestler Randy Orton with a total of six tattoos including tribal tattoos designed by another tattoo artist which Alexander extended per Randy Orton’s request. Take-Two created the WWE 2k video game series, which use “photo reference” to realistically reproduce the featured wrestlers from a photograph. Take-Two licensed Randy Orton’s likeness from WWE. WWE had a right to reject Take-Two’s game if it did not find it authentic. So, Take-Two reproduced Orton’s tattoos in the game to keep the depiction of Randy Orton authentic.
Arguments
Alexander filed a complaint before the District Court of Southern District Of Illinois for copyright infringement under 17 U.S.C. § 501 in 2018 and moved for partial summary judgement on the grounds that she never authorized WWE to recreate her tattoo. The Defendants also filed a motion for partial summary judgement on the basis of three defences: 1) de minimus, 2) fair use doctrine and 3) implied license.
The Court’s Conclusions
The Court, by order dated 22 September 2020, rejected the Defendants’ motion and allowed the Plaintiff’s motion for Partial summary judgement. The court found that protection of a work required a minimal degree of creativity, or intellectual production. In this context, a work is protectable once it is affixed to a tangible medium, and the tattoo fulfilled this affixation. The court opined that the dispute to copying does not arise as the defendants had admitted to copying the tattoo. Citing Muhammad-Ali v. Final Call, Inc., 832 F.3d 755, 761 (7th Cir. 2016) it stated that the burden is on the Defendant to prove the copying was authorised. Since Alexander had proven her copyright in the tattoo designs and that it had been copied, she met her onus and now the Defendants needed to prove authorisation for their reproduction.
Rejecting the defendant’s arguments, the Court stated that an implied license does not apply to this case. An implied licence only authorises the licensee to use the work, not further license it out., Alexander impliedly licensed Orton to disseminate and display the tattoos as part of his likeness, but due to the vague licensing terms between parties, the issue was triable and could not be allowed in partial summary judgement.
On fair use, the Court stated that it needed to consider four factors in determining whether the doctrine applies: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The Court found in favour of the Plaintiff in second and third issue and stated that the first and fourth issue were triable.
In assessing damages, the jury considered the value of the tattoo to the video game, what role it played in the Defendant’s profits from WWE 2K series, and the lost license fees for Alexander. The jury’s $3,750 USD award only accounted for the lost license fees, as the importance of the tattoos for the profit from the video game could not yet be inferred.
Would Alexander Have Won this Case in Canada?
In the US, the author only needs to show that that their work was original and was copied, and the defendant must prove consent. In Canada, the Plaintiff has the onus to prove consent. Section 27(1) of the Canadian Copyright Act clearly requires the copyright owner to prove that (1) the defendant did something the owner alone had the right to do, and (2) the defendant did it without the copyright owner’s consent. However, the US law 17 U.S.C. § 501 does not contain the word consent. Consent’s importance was recently affirmed in Harmony Consulting Ltd. v. G.A. Foss Transport Ltd, where the Canadian Court upheld the Plaintiff’s onus to prove consent was not given.
Applying this consent principle to the present case, the order stated that Catherine Alexander never consented as she refused and advised WWE that she did not give them permission to copy, duplicate or reproduce her design. So, Catherine Alexander might have also successfully proven absence of consent and would likely have had a similar outcome under Canadian copyright law..