The Hangover II Injunction Denied

By Jay Lewis

S. Victor Whitmill v. Warner Bros. Entertainment, Inc., 4:11-cv-752 (E.D. Mo. 2011)

Plaintiff S. Victor Whitmill (“Whitmill”) is the tattoo artist who inked Mike Tyson’s face.  Whitmill sought a preliminary injunction against Warner Brothers Entertainment (“Defendant”) to enjoin the release of “The Hangover II.”  Actor Ed Helms sports an identical tattoo in the film which Whitmill believes infringes on his copyright. Missouri Eastern District Court Judge Catherine D. Perry orally denied Whitmill’s preliminary injunction at the hearing and issued a short one page order.

To obtain a preliminary injunction, the movant must show likelihood of success on the merits, irreparable harm, the balance of equities weighs in favor of the movant, and an injunction is in the public interest.  Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008). 

To be successful on the merits, Whitmill needed to demonstrate he had a valid copyright and the Defendant copied the protected work. See Plaintiff’s Memorandum in Support of his Motion for Preliminary Injunction, p 5, citing, Rottlund Co. v Pinnacle Corp., 452 F. 3d 726 (8th Cir. 2006).  Based on the facts set forth in the Plaintiff’s Memorandum, Whitmill demonstrated both a copyright and an unauthorized copy.  Plaintiff’s Memo, p 5-7. However, according to the Memorandum in Opposition to Plaintiff’s Motion for Preliminary Injunction, seen here, “[t]here are no reported cases addressing the copyrightability of tattoos.” (Memo in Opposition, p. 12).  Regardless, the Judge found a copyright, stating:

Of course tattoos can be copyrighted. I don’t think there is any reasonable dispute about that. They are not copyrighting Mr. Tyson’s face, or restricting Mr. Tyson’s use of his own face, as the defendant argues, or saying that someone who has a tattoo can’t remove the tattoo or change it, but the tattoo itself and the design itself can be copyrighted, and I think it’s entirely consistent with the copyright law.

NY Times, quoting Judge Perry.

The Defendant, in its Memorandum, offered several defenses to Whitmill’s copyright infringement claim. (Memo in Opposition, pp. 18-19).  The Defendant argued that displaying Tyson’s tattoo on a character in the film constituted Fair Use: 

[T]he fair use of a copyrighted work…for purposes such as criticism, comment…is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include — 

(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.

17 U.S.C. § 107.

Judge Perry rejected the Fair Use argument, stating, “This use of the tattoo did not comment on the artist’s work or have any critical bearing on the original composition. There was no change to this tattoo or any parody of the tattoo itself. Any other facial tattoo would have worked as well to serve the plot device.” NY Times.

The next factor, irreparable harm, is presumed if movant has established the likelihood of success on the merits in a copyright infringement case according to Plaintiff’s Memorandum which cites West Pub. Co. v. Mead Data Central, Inc., 799 F.2d 1219, 1229 (8th Cir. 1986); DF Inst. Inc. v. Marketshare EDS, 84 USPQ 2d 1206, 1212 (D. Minn. 2007).  (Plaintiff’s Memo, page 8).  Based upon the Judge’s statements that a copyright exists and the Defendant infringed upon it, supra, irreparable harm was presumed in this case.

Although Whitmill showed a likelihood of success on the merits and irreparable harm, the balance of harms and public interest tipped too sharply in favor of the Defendant. The Defendant and its partners had invested hundreds of millions of dollars into producing, marketing and distributing the film.  An injunction preventing the opening would have cost the Defendant millions in box office revenues over the Memorial Day weekend.  Additionally, the Defendant argued that a substantial likelihood existed that a delay in the release of the film would create a black market of pirated DVDs based upon the prints that already had been shipped to theaters around the country. (Memo in Opposition, pp. 36-40).

Judge Perry agreed with the Defendant:

The public interest does favor protecting the thousands of other business people in the country as well as Warner Brothers, and not causing those nonparties to lose money, and I think it would be significant, and I think it would be disruptive. I think that tilts the public interest in favor of Warner Brothers on this because all over the country people would be losing money if I were to enjoin this movie.

NY Times.

The Hangover II was released in theaters as scheduled.  It reportedly grossed $86 million over the weekend and $137 million since its release breaking previous box-office records for an R-rated comedy. LA Times.

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