A repeating theme on iplawforstartups.com revolves around the question: “Does my company have intellectual property?”
Our resounding answer is always, “Yes!” Not only does every company we can possibly imagine have intellectual property, but often, intellectual property is the core corporate asset – the goodwill of the brand, a patented technology, copyrighted content, or valuable tradesecrets.
A savvy tattoo artist beautifully illustrates our mantra:
“Your company does have IP and it’s important to protect it.”
My friends tell me I am quite an amateur; I’ve only seen The Hangover one time. The rest of the free world has been anxiously awaiting the opening of The Hangover Part II, to bask again in fresh hilarity and genius one-liners. A savvy tattoo artist almost successfully put the breaks on our National Joy over Mike Tyson’s fabulous face tattoo! As we have all seen on the billboards, movie trailers, and movie posters, Stu – who woke up married to a gorgeous stripper named Jade in The Hangover – wakes up in The Hangover Part II with Mike Tyson’s face tattoo on his face!
Hilarious, correct? Not for Warner Brothers. Little did they know that the tattoo artist had taken steps to protect his intellectual property rights in the tattoo. He sued Warner Brothers in federal court for copyright infringement and attempted to stop the release of The Hangover Part II. Here is a link to the official complaint with photos of the tattoos. The judge denied the motion for preliminary injunction that would have stopped the release of the movie because the harm would have been too great for Warner Brothers and the movie theaters. Warner Brothers had already spent $80 million dollars to advertise the movie for Memorial Day weekend. The judge, however, found that the tattoo artist was likely to succeed on the merits of the case as it goes forward in court.
The tattoo artist, S. Victor Whitmill, did several things correctly to protect his intellectual property rights:
- He recognized that he had intellectual property – a tattoo is an original work that is fixed in a tangible medium of expression. In this case, the tangible medium was Mike Tyson’s face.
- He recognized that his intellectual property was an important asset that he should protect.
- He identified the appropriate route of protection – a copyright.
- He used contracts to make sure the rights to his work were clean and clear – Tyson received the limited right to display the tattoo on his body – Victor retained all other rights in the tattoo. In otherwords, Tyson received only the limited right to display the tattoo but Victor retained the broader more important rights to authorize copies, create derivative works, and to sublicense the work to others.
Victor did not register his copyright with the U.S. Copyright Office until April 2011, just before filing suit. In order for Victor to assert his rights in the Tyson Tattoo, Victor had to have a Certificate of Registration. Victor waited until the last minute to do this, which increases his litigation costs and increases his burden in litigation (he will only be able to recover the damages he can prove). If he had registered his tattoo design with the Copyright Office within three months of applying the design to Tyson’s face – Victor would have been able to recover statutory damages, attorneys fees, and other remedies regardless of the amount of actual damage he could prove.
Therefore, all of our tattoo and creative-work startup friends out there (and there are some!) take note of the following lessons from The Hangover II lawsuit:
- Identify your creative works that may be protected by intellectual property law.
- Register your work with the Copyright Office. IDEALLY register your work within the first 3 months of publication – for example: You tattoo me on June 1, 2011 – you register your work BEFORE September 1, 2011. Registering your work will make you eligible for statutory damages and attorneys fees if there is infringement.
- Have CLEAR CONCISE contracts with your client. The contract should address:
- Who owns the Copyrights in the work – you or the client? (In the Tyson case – Victor the tattoo artist retained the copyright.)
- The rights granted to each party; (In this case, Tyson had the limited right to display the tattoo, Victor retained all other rights.)
- Both parties should agree in writing that the amount the client paid for the rights received was fair and adequate.
And Finally, What happens in Vegas stays in Vegas, except for . . . tattoos! They will come back with you!
Heather N. Schafer is a tattooed IP attorney who helps entrepreneurs protect their intellectual property.
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