Part III, No. 1: Tattoos, Video Games and the Quasi-Fallacy of “Innocent Infringement”

Thanks for reading so far. If you’re just joining the discussion, I’m posting the final exam I gave to my Vanderbilt Copyright Law class last term, with annotations about what I was looking for in the answers and some additional notes about how students answered. In the first part, I explained the perfectly good reasons why I made the exam to beastly to grade (and to take, I’m sure!), and set forth the annotated Part I of the exam (short answers). In the second part, I basically just set out the Part II, which consisted of short essays.

I was going to post Part III of the exam as one long post, but it’s really too much, since it consists of two long essay topics. The fact patterns are long, and there’s a lot to annotate. So I’m splitting the two long essay topics into two posts.

One of the main things I was testing with the long essays, in addition to analytical ability, was nerve. Copyright law is often counter-intuitive, and you have to trust what you know over what your gut is telling you.* In Essay No. 1, there are two such moments: you think Corgar must have something to do with validity, but he doesn’t really (but he might be a ticket out of the thicket); and you think Little Billy must have a water-tight defense (not really—luckily there are no provable damages).

Of course, just because copyright law is sometimes counter-intuitive doesn’t mean it’s always counterintuitive, so you can’t just go around thinking copyright law is the opposite of whatever your initial thoughts about it were.

If the fact pattern of Essay No. 1 is a little familiar, that’s because it’s based on a real case filed last October or November, involving a tattoo of a lion, a wrestler and a video game. I made up “Little Billy,” though.

Part III: Long Essay:

49% of total grade.

Write long essays on both of the following topics. Essay No. 1 is worth 22 points. Essay No. 2 is worth 27 points. It is suggested you budget about 40 minutes on Essay No. 1, and 50 minutes on Essay No. 2.

The fact patterns for these essays are lengthy and contain numerous legal issues, some  more important than others to your task, and some requiring more analysis than others. Not every single fact is significant, and there are some red herrings, but most facts are significant in some way.

If you are pressed for time, it is recommended that you go for breadth over depth at first, making sure you’ve identified as many issues as you can and have described their general analytic contours, then perform as much in-depth analysis as you can. Also, choose substance over form. Organization and clarity are important, but getting your substantive thoughts down is even more important (provided you are clear and organized enough to be understood by the grader!).

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Tommy Tuffguy is a professional mixed-martial artist. Five years ago, he was at a tournament in Colorado Springs, Colorado, where learned of a revered tattoo artist, Joey Tatman, who worked there. After the tournament, Tuffguy paid Tatman a visit. Tatman showed Tuffguy a number of black-and-white tattoo designs. Tatman made clear that these designs were just a starting point, and that he could and would make substantial free-hand changes to the designs. In addition, the tattoo could be in color, so colors would need to be selected. After the examining the designs, Tuffguy picked out a design of a serious-looking male lion that looked as though it were about to pounce. Tuffguy indicated that he would like the tattoo across his chest, about five times bigger than the design. Tatman said he could do that and asked if Tuffguy had any other instructions. Tuffguy said that he trusted Tatman’s judgment with regard to any other changes. Then they discussed colors. Tuffguy suggested a scheme of blue, green and red, but Tatman said in practice those colors would look terrible. Tatman suggested a scheme of blue, green and purple, and Tuffguy agreed. Tatman then applied the tattoo across Tuffguy’s chest. He deviated from the design in three significant respects. First, he filled in much of the empty space (the result of increasing the size of the design) with additional detail, for example, the nap of the lion’s fur. Second, he changed the lion’s expression from serious-looking to snarling. Third, he made the mane appear as though it were being blown by a breeze. Tuffguy was pleased with the results and paid Tatman his fee. Before Tuffguy left, Tatman took a photograph (with permission) of Tuffguy with the tattoo. That photograph still hangs in Tatman’s studio.

Tatman’s designs come from a variety of sources. The pouncing-lion design was from a book of designs produced and distributed by Tats-R-Us, Inc., which specializes in distributing tattoo designs. Tatman purchased the book about ten years ago. No license accompanied the book.

The pouncing-lion design was made by a freelance artist named Leon Corgar. He was not an employee of Tats-R-Us. Instead, he “sold” the design to Tats-R-Us, along with a number of other tattoo designs. Among Tats-R-Us’ files is a “memorandum” on Tats-R-Us letterhead that names Corgar, lists a number of tattoo designs and sets forth a single dollar amount. At the bottom of the document is a section entitled “acknowledgement” signed by Corgar that states: “I hereby sell these designs to Tats-R-Us.” The document is dated 20 years ago. Corgar died several years ago intestate with three children. Under the laws of Corgar’s state of residence, his three children inherited equal shares of Corgar’s estate. The three children are all alive and can be located with some effort.

Corgar’s pouncing-lion design is nearly identical to a photograph of a lion first published in a 1902 edition of National Geographic. The pose is the same, but for obvious reasons the design is less detailed, and Corgar used some artistic stylization to suggest some of the lost detail. For example, Corgar did not portray every hair of the lion’s mane, but portrayed it as silhouetted mass of hair. (Ironically, Tatman would portray individual strands of hair on Tuffguy’s tattoo.) Twenty-two years ago, this picture was included in a properly authorized collection of National Geographic wildlife photographs called National Geographic’s Greatest Wildlife Photos. This book was available at Corgar’s local library. In fact, library records (obtained through subpoena) show that Corgar checked this book out several times before and after the time he made the pouncing-lion design.

Since getting the tattoo, Tuffguy has risen in prominence in the sport and, for about the last year, could truly said to be a “star.” Though he has several tattoos on his body (as do most mixed-martial artists), the pouncing-lion tattoo has become strongly associated with Tuffguy. Among mixed-martial arts aficionados (i.e., well-informed fans), the pouncing-lion tattoo immediately makes one think of Tuffguy. It is difficult to think of Tuffguy without the tattoo.

Video Game Concepts (“VGC”) is a designer, manufacturer and distributor of computer games. One of its most popular game franchises is a mixed-martial arts game called Blood Sport MMA in which players control fighters in fairly realistic matches, either against the computer or against a friend. The fighters in Blood Sport MMA—known in the business as “avatars”—are based on real, professional mixed-martial artists. To make these fighters, VGC places the real person in a CAT-scan-like machine that makes a 3D model of the person’s body, then converts the 3D model to a format that can be used by the video game’s “game engine.” VGC always gains all necessary permissions from the professional mixed-martial artists it uses. About a year ago, VGC was developing Blood Sport MMA IV and asked Tuffguy to “be” one of the “avatars.” VGC and Tuffguy negotiated a contract whereby Tuffguy gave VGC permission to use his image for the game, in exchange for a royalty. VGC made a very realistic “avatar” of Tuffguy. This “avatar” prominently includes the lion tattoo on Tuffguy’s chest. When you play “Tuffguy” on Blood Sport MMA IV, the lion tattoo is clearly visible. However, much of the fine detail, such as the strands of the lion’s mane and the nap of the lion’s fur, is either missing or blurred. The lion is clearly snarling, though, and the mane retains its overall shape. Tuffguy is one of ten such “avatars” in Blood Sport MMA IV, all of whom are based on real mixed-martial artists.

Blood Sport MMA IV was released three months ago and was a success. In just those three months, VGC made $250,000 profit on $1,000,000 revenues. When all is said and done, VGC reasonably expects to make an additional $1,000,000 in profit on $4,000,000 revenues.

Tatman enjoys playing Blood Sport MMA and bought Blood Sport MMA IV. Playing it, he recognized the lion tattoo and thought it wasn’t fair he wasn’t compensated for it.

Little Billy is a child who lives in Tatman’s neighborhood. Tatman hates Little Billy. Tatman knows that Little Billy owns a copy of Blood Sport MMA IV and has “played” the “Tuffguy” on the game.

Tatman did not register the copyright in the lion tattoo, but has applied for registration, which has yet to be granted. He used a copy of the signed photograph of Tuffman as the deposit.

Tatman sues VGC and, for the heck of it, Little Billy. He does not move for a preliminary injunction and seems more interested in money. He is, however, not above threatening other remedies to improve his bargaining position for settlement. You represent VGC and Little Billy (with any conflicts having been properly waived). In discovery, you learn about Corgar.

GENERAL COMMENT: This fact pattern is typical in that it involves a lot of sloppy business transactions made out of ignorance of copyright law. Sad but true: if a business is not regarded as “copyright heavy” (e.g., music, motion pictures, certain kinds of computer software), a copyright lawyer will usually not be consulted, leading to unholy messes like this. The fact pattern is atypical in that it’s more complex and layered than most.

This fact pattern is based on a case filed November 16, 2012, by a tattoo artist against a video-game company, involving a mixed-martial artists and a lion tattoo.

A. Assess the strength of Tatman’s case against VGC, and of VGC’s affirmative defenses.

COMMENT: There are two very important keys here. First, you have to have the courage of your convictions. All that stuff about Corgar and Tats R Us? It is irrelevant to the questions of (1) is the tattoo copyrightable and (2) if so, how much of it is copyrightable? All that matters is whether Tatman added something original and creative to the template. It is absolutely true that the tattoo is an adaptation, and adaptations do not extend to parts of the work unlawfully used. But Tatman pretty clearly added separable elements for which he is entitled to copyright. (Unless, you really are prepared to say that the template so pervades the tattoo that, like a translation, Tatman’s contributions really can’t be separated out.) Further, does he not have at least an implied license from Tats R Us? Even if Tats R Us didn’t acquire the copyright from Corgar, Corgar wouldn’t be able to block the copyrightability of the tattoo. At worst, he (or more precisely his heirs) could sue Tatman for infringement—an important point that will come in handy later.

Second, you had to keep your eye on the ball as to what copyrightable elements really belong to Tatman. VGC must have made an exact duplicate of the tattoo in make the 3D model (more on this later), but is it really the case that Tatman’s expressiveness really comes through in the computer game itself? Many students analyzed this under de minimis, probably because they had George and his painting on the brain (from Part II). But isn’t the first step to determine whether there is substantial similarity in the first place? If the copyrightable elements aren’t really displayed, then is there really substantial similarity? That’s actually a close question under these facts. What’s more, the answer might depend on whether you’re following the “subtractive” (or “analytical”) approach (much better for VGC) or the “discerning reasonable observer” (or “holistic”) approach (much better for Tatman). The best answers performed the infringement analysis under both approaches or, at least, noted how the other approach would come out differently.

A few very sharp minds brought up the so-called (and confusingly called) “monopoly problem” of adaptation and whether “extra originality” might be required. A few other sharp minds brought up contributory liability, with VGC’s customers as the direct infringers, which is correct to the extent the customers are infringers (see the analysis of Little Billy), assuming the public display right is infringed in the first place.

What about VGC’s defenses? Yes, de minimis is one, but it’s almost never your best choice. But its best defense is, actually, fair use, IF you conclude (or are willing assume) that the public display right isn’t infringed. Remember that one fairly common form of fair use is the intermediate copy necessary to make some non-infringing use of the copyrighted work. Isn’t that exactly what we have here? A perfect copy of the tattoo, stored somewhere on a VGC server, but the end result isn’t infringing?

The next best defense is a kind of implied license. The reasoning goes like this: Tatman implicitly licensed Tuffguy to display publicly the tattoo. Any time Tuffguy wanted to get photographed with his shirt off, did he really need Tatman’s permission? It is arguable, at least, that Tatman’s implied license also includes an implied right to sub-license. That would be a pretty novel argument, but under the circumstances, it’s pretty persuasive. Then again, photographs are one thing: 3D scans for video games might be beyond the scope of the implied license.

Minor issues regarding the registration: You were asked to note the split of authority regarding registrations applied for but not yet granted. You were also asked to determine whether the photograph is a sufficient deposit for the registration. And you were asked to determine whether the registration, if granted, could serve its function as prima facie evidence of ownership, etc. Remember that you get the benefit of the filing date as the date of registration. Since the tattoo was fixed five years ago from “today,” and Tatman applied to register the copyright before “today,” he should get that benefit.

Miscellaneous minor issues: Is the human body a tangible medium for fixation? I don’t see why not, but I was certainly intrigued by the arguments of those who thought it shouldn’t be. Joint ownership: Tuffguy’s contributions probably don’t amount to a joint work. Some very sharp students wondered if there wasn’t a merger issue because there may be only a few ways, for example, to render the nap of a lion’s fur. (One suspects that there are enough.)

B. Assess Tatman’s remedies against VGC.

COMMENT: The focus really should be on money damages. Actual damages will be hard to prove. There probably isn’t a market for licensing tattoos in video games. Profits, on the other hand, are do-able. The key, of course, is establishing causation for the amount attributable of VGC’s revenues attributable to the tattoo. There is evidence that fans would expect the tattoo to be on Tuffguy’s “avatar.” No, Tatman wouldn’t be entitled to all of VGC’s profits, but the situation isn’t as hopeless as many said it was.

Still, it’s again important to keep one’s eye on the ball. The tattoo might be important, but the bits of the tattoo that properly “belong” to Tatman aren’t that important. The nap of the lion’s fur, for example, doesn’t help identify Tuffguy (though the change in pose might).

Regarding injunctions and other equitable remedies, it was important to bear in mind that an injunction can’t reach cartridges already sold. Also, there would be no cause for even a permanent injunction if the court found that the total revenues for sale of the game would be about $4 million. That’s because Tatman would have been fully compensated monetarily.

C. Assess the strength of Tatman’s case against Little Billy, and of Little Billy’s affirmative defenses.

COMMENT: To the extent you believe the tattoo as displayed in the game infringes Tatman’s copyright, then you must analyze whether Little Billy violated the public display right (which almost everyone did) and the reproduction right (which almost no one did). As for the public display right, Little Billy is probably safe because he’s rarely going to play the game in front of enough of the right (or wrong, depending on your point of view) kind of people. The reproduction right? When Little Billy puts the cartridge into the console, a copy of the game—and therefore the data that makes up the tattoo—is copied into the console’s RAM. That’s a reproduction. Of the few people who noticed this, most said the Essential Step Defense would apply. The fact is we don’t really know because (1) courts are split on that defense, and (2) we don’t know enough to guess whether Little Billy is an “owner of a copy.” There’s also a pretty decent fair-use argument to be made here. A reproduction of a minor part of a game made as a necessary step to play the game, for personal use, where the display of said minor part is fuzzy, and there is no effect on the market for said minor part… that sounds pretty good.

A lot of people seemed to assume that Little Billy should win simply because Tatman is a bully for suing him. Some even called this “copyright misuse,” which it isn’t. The instinct is correct in this case, it seems to me, but outrage isn’t by itself a defense. You still need to analyze the situation and explain why Little Billy has a defense. The scary thing is that, while he has good defenses, he doesn’t have slam-dunk defenses. If Tatman had better remedies, he could easily bully Little Billy into a settlement.

A lot of people wanted to say that Little Billy was immune because he was an “innocent infringer.” Remember, that’s not actually a defense. See below for more on that.

D. Assess Tatman’s remedies against Little Billy.

COMMENT: The good news for Little Billy is that his exposure is limited. He had no profits to disgorge, and actual damages are next to impossible to prove. The worst he might have to endure is an injunction against playing the game, which would be a bummer, but at least it’s not $35,000?

(An aside: Consider if Tatman had actually registered his copyright timely? If he could prove infringement, Little Billy’s exposure is very different: up to $35,000. The good news is that he really is a very definition of an innocent infringer, which means the “floor” for statutory damages is $250. But that’s still not $0! And the jury doesn’t have to return a verdict of $250. All the “innocent infringer” business does is create the option of a statutory penalty between $250 and $750. Under the circumstances, one certainly hopes the jury would be sympathetic.)

E. Short of stopping sales of Blood Sport MMA IV, what steps might you take to strengthen your clients’ cases and bargaining positions for settlement (or, conversely, weaken Tatman’s case and bargaining position for settlement)?

COMMENT: The cleverest thing you could consider doing is prevail upon one of Corgar’s heirs (you only need one) to sue Tatman for infringement of Corgar’s template. (It’s a little up in the air whether VGC would simply buy the heir’s interest in the copyright. Section 501(b) requires that the infringement occur during your ownership of the exclusive right infringed to have standing, but it’s generally assumed that if you acquire an interest in that exclusive right later, you step into the previous owner’s shoes for standing purposes, inheriting any claims.) It would be advisable to get a license from said heir, since VGC would in theory be infringing on Corgar’s work (assuming the heir really has an interest in the copyright), so it’s a risky strategy.

Now all this business about National Geographic and Tats R Us become relevant. How much leverage you could generate against Tatman would depend on how strong the heir’s case is. There are two primary issues, which most people analyzed, just in the wrong context: (1) is Corgar’s work really original, or did he just copy something that’s now in the public domain, and (2) did he transfer his copyright to Tats R Us? Those are both very close questions, and the evidentiary challenges are enormous since Corgar is dead.

If you decide that Tats R Us really did obtain the copyright, then this strategy doesn’t work very well. Even if you could prevail upon Tats R Us to sue (or sell you the copyright), Tatman almost certainly has an implied license to make the tattoo.

Note that it’s possible for both the Corgar heir AND Tatman to win their respective lawsuits, since they’re suing over slightly different aspects of the lion image. After all, Tatman’s copyright extends only to those bits that he is responsible for, which is exactly what Corgar’s heir can’t claim.

Next time, the real last post in this series, essay topic no. 2, which involves multiple send-ups of Harry Potter.

Thanks for reading!