Moviegoers may not have been surprised by the storyline in "The Hangover, Part II," but Warner Bros. was certainly caught off guard by two lawsuits filed in its wake.
The first considered whether the use of a well-known face tattoo is a copyright violation and the second introduced a novel theory about the trademark implications of using a knock-off product as a prop. Studying these cases can help avoid headaches the morning after a film’s release.
Tyson's Tattoo and Copyright Law
In the sequel, Stu, the timid dentist, wakes up in a seedy apartment in Thailand only to find that his face inexplicably bears the tribal tattoo made famous by boxer Mike Tyson. While the juxtaposition is undeniably funny, Victor Whitmill, the artist responsible for Tyson's tattoo, wasn’t laughing.
Copyright owners have the exclusive right to make copies and derivative works, with some limited exceptions designed to avoid stifling artistic creativity. One such exception is fair use, a commonly asserted but murky defense. Whether a use is fair is determined after considering four factors — the nature of the copyrighted work, the purpose of the use, the amount and substantiality of the use, and the effect on the potential market. Case law teaches that even fleeting appearances of props and set dressing (such as a nursery mobile or a church-themed quilt) can amount to copyright infringement.
Since the entire tattoo was prominently featured, Warners focused on the purpose of the use, asserting the transformative use is parody. To get the joke, you only need to see the promotional poster featuring the tattooed Stu pursing his lips to avoid sobbing. During the movie, Tyson himself appears, and Stu ultimately embraces the tattoo as he transforms into a tough guy. Yet, the court summarily dismissed the defense as “just silly.”
Fortunately for Warners, the court did not enjoin the release due to the hardships that would result.
As courts are given great leeway in the doctrine’s application, one cannot know beforehand whether a given use is fair. We won’t know for sure in this case either. After threatening to digitally remove the tattoo from the DVD release, Warners settled the case.
The Louis Vuitton Knock-off and Trademark Law
The second action arose out of the scene at LAX in which “socially inept and comically misinformed” Alan clutches what appears to be a Louis Vuitton bag, which is visible for only about 25 seconds, and tersely cautions another character to be careful around his "Lewis Vuitton." As it turns out, the bag is not authentic, but rather a knock-off by Diophy.
To establish a traditional trademark claim under the Lanham Act, LV would need to establish that the use of the bag was likely to cause confusion among ordinary prudent purchasers as to whether or not LV sponsored or was affiliated with the film. Apparently conceding that it has no such claim and cannot stop the filmmakers’ limited use and reference to its marks, LV concocted a novel theory, alleging Warners confused the public by passing off the fake as authentic and implying LV’s sponsorship or approval of it.
The court quickly disposed of LV’s claims relying upon the landmark case of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In that case, Ginger Rogers brought Lanham Act claims against the makers of the film entitled "Ginger and Fred" about two fictional performers who made their careers imitating Rogers and Fred Astaire. The court rejected Rogers' contention that the film confused consumers into thinking the film was about, and endorsed by, her. More specifically, it held that the Act does not prohibit "artistic works" like the film, unless the material has no artistic relevance, or the work explicitly misleads the public about its source or content.
Applying Rogers, the court held that Warners met the very low standard of "artistic relevance," essentially because the scene was funny. The court further held there was no risk that consumers would believe that the knock-off was a real LV bag, or LV approved of its use in the film. The court further commented that even if LV established actual confusion, the claim would fail because LV could not meet the heightened “particularly compelling” standard applied to expressive works. LV has appealed.
The Whitmill case reminds us that use of another’s copyrighted work is prohibited unless the user can establish one of the limited defenses, such as fair use and parody. Louis Vuitton’s lawsuit reconfirms that when it comes to trademarks, the key is avoiding consumer confusion.
In either case, the best practice is to clear all copyrighted and trademarked materials so as to avoid leaving such determinations in the hands of someone who may not share your sense of humor.
Mr. Garfinkel acknowledges and thanks Catherine Grech, a summer associate with Perkins Coie, for her contribution to this article.