Earlier this week, Judge Catherine Perry denied the request for a preliminary injunction against the release of Hangover 2 over a copyright claim related to a tattoo. What does that mean and why is this a huge problem for Warner Brothers?
Let me provide a little background on the case. The Plaintiff, S. Victor Whitmill, is the tattoo artist who designed and drew the tattoo on Mike Tyson’s face. A few weeks ago, Mr. Whitmill sued Warner Brothers for copyright infringement with regard to the release of “The Hangover II”. His suit is expressly not about the fact that (spoiler) Mike Tyson appears in the movie. Mr. Whitmill is claiming copyright infringement because Stu Price (played by Ed Helms), wakes up to find that he has an exact replica of the Mike Tyson tattoo on his face. 
Mr. Whitmill makes the (perfectly reasonable) argument that Warner Brothers was required to obtain his permission before copying his tattoo design onto another actor’s face. Mr. Whitmill’s lawyers also filed a motion seeking an injunction from the court to stop the release of the movie. Mr. Whitmill’s lawyers understood that if the injunction was granted, they could demand tens of millions of dollars from Warner Brothers to settle the case and remove the injunction. Yesterday, the motion was heard and, thankfully for Warner Brothers, the judge denied the injunction. However, for reasons I will discuss, this case is still a huge potential problem for Warner Brothers. In order to understand what’s going on, you need to be familiar with three other movies which drew copyright infringement lawsuits. 12 Monkeys, The Devil’s Advocate, and The Dukes of Hazzard.
12 MONKEYS
If you remember the Bruce Wills/Brad Pitt movie 12 Monkeys, then you may remember that Bruce Willis played a time traveler who came to present day America to stop an impending plague. In the beginning of the
movie, there is a scene where Willis’ character is brought into a room and strapped to a chair that is liftedvertically into the air. Well, it turns out that the set design of that room was taken from a book of drawings by German illustrator American architect Lebbeus Woods. Apparently, Terry Gilliam (the director) saw the drawing and basically told the production designer to use it in the movie. Mr. Woods sued Universal Studios a few weeks after the movie was released and asked for an injunction. The court granted the injunction and Universal was forced to pay an untold amount (but presumably in the millions) in order to keep the movie in theaters. Woods v. Universal City Studios, Inc. et al. 920 F.Supp 62 (S.D.N.Y 1996).
The 12 Monkeys case was the first major case where a court preliminary enjoined the distribution of a movie based on a relatively small amount of copyright infringement (only five minutes of the movie was set in the offending room).
The Devil’s Advocate
The Al Pacino – Keanu Reeves movie The Devil’s Advocate, was the second film to run into th is problem. Sculptor Frederick Hart claimed that his work “Ex Nihilo”, which hangs at the front of the Washington National Cathedral, was copied in the film and seen in the apartment of the devil, where it magically comes to life. Mr. Hart sued and asked the court to stop the home video sale of the film. The cort agreed with Mr. Hart and told Warner Brothers that unless they settled with Mr. Hart, it would grant the injunction.
The problem for Warner Brothers is that they had already manufactured 475,000 videos which were ready forshipping. Warner Brothers was forced to enter into a settlement with Mr. Hart in which they placed a sticker on each video cassette disclaiming any affiliation between the sculpture and the film. Warner Brothers also re-edited the scene to remove the infringing work and paid an untold amount to Mr. Hart.
The Dukes of Hazzard
Who knew that a not very good movie based on a mediocre television show from the ‘70’s would lead to one of the biggest copyright infringement cases of all time? When Warner Brothers decided to make a DOH film, they probably figured that wouldn’t be a problem. After all, they had produced the television show, so they certainly owned the right to turn it into a film, didn’t they? Apparently, not so much. It turns out that DOH was actually based on an obscure low-budget 1974 film titled “Moonrunners.” And when Warner Brothers first acquired the right to turn “Moonrunners” into a television show, it seems no one thought to also acquire feature film rights (this was way before the craze of turning every television show into a movie, but still). When the movie was announced, “Moonrunners” producer Robert Clarke sued for copyright infringement. And, again, the court granted Mr. Clarke a preliminary injunction, stopping it from distributing or even advertising the DOH movie. This was horrible for Warner Brothers as this was only 10 weeks prior to the release of the movie. Warner Brothers had already spent millions of dollars to advertise and market the movie and had commitments to spend millions more. So Warner Brothers had no choice but to settle with Mr. Clarke to avoid the injunction. Reportedly, Warner Brother paid Mr. Clarke $17.5 million dollars the day after the court issued the injunction.
What Does This Mean For The Hangover 2
I’m sure that the lawyers for Mr. Whitmill, knowing about these previous cases, would have raked Warner Brothers over the coals had the court issued the injunction. Considering the fact that the movie is scheduled for release in only three days and is expected to make over $400 million dollars, Mr. Whitmill would certainly have demanded (and received) tens of millions of dollars in settlement if the injunction was granted. But even though no preliminary injunction was granted, Mr. Whitmill is still in pretty good shape. While denying the injunction, the judge reportedly stated that Mr. Whitmill had a “strong likelihood of success” on the merits and that most of Warner Bros. defenses were “just silly.” If Mr. Whitmill were to prevail at trial or on summary judgment, the court would then grant him a permanent injunction against further distribution of the film as long as it contained the tattoo on Ed Helm’s face.
Now it might be possible that the filmmakers could use some CGI magic to change the design of the tattoo for the DVD and television release of the film and I’m sure they are looking into that possibility right now. But I’m guessing that there will be a confidential settlement between the parties sometime this summer. And that tattoo will become one of the most expensive pieces of art in history.
UPDATE: Warner Brothers now says that it will digitally change the tattoo before the film is released on DVD. This will severely cut into Plaintiff’s damage calculation as it will mean that Warner Brothers will not worry about an injunction. Instead, Mr. Whitmill is limited to arguing how much of the profits of the movie are attributable to the fact that they copied his tattoo design, as opposed to the important things, like the script, the director, and the actors. The court has scheduled a settlement conference for June 16th and I’m predicting a quick settlement after that.