Whitmill applied what he calls the 'Tribal Tattoo' to Tyson's face in 2003. He is suing Warner Bros in relation to scenes in the film in which one of the characters wakes up - badly hungover - with a tattoo etched on the left side of his face. That tattoo, according to Whitmill, infringes his copyright in 'Tribal Tattoo'. Significantly, Judge Catherine Perry appears to have indicated (in the injunction proceedings) that Whitmill's claim has a reasonable prospect of success.
So, if there is a chance that Whitmill might succeed in the United States, how might an equivalent case be decided in Australia?
Are tattoos protected by copyright in Australia?
The Australian Copyright Act 1968 confers a range of exclusive rights on the creators of original literary, dramatic, musical and artistic works (as well as certain other subject matter, such as films and published editions). These exclusive rights are afforded to the copyright owner for the duration of the copyright, which varies according to the item under consideration and its publication status (but is generally 70 years after the death of the author). The exclusive rights include the right to reproduce, publish and adapt the author's work.
Therefore, in order for copyright to subsist in a tattoo under Australian copyright law, the tattoo must (amongst a few other things):
- fall within one of the classes of works or other subject matter that are protected under the Copyright Act; and
- be 'original'.
In the UK, the English Court of Appeal rejected the idea that distinctive facial make-up is a painting (within the meaning of the UK copyright legislation); however, this was largely on the basis that the make-up in question (applied to the face of Adam Ant) lacked permanency. By contrast, a tattoo (one could argue) is just as permanent as if the artist had rendered their design on paper or canvas or etched it into wood or stone. (And even if there is some doubt on that point, the artist may have made paper-based drawings or sketches of their tattoo design, each of which would separately be protected by copyright, and therefore form the basis of an infringement claim.)
In relation to originality, there seems little doubt that a tattoo such as 'Tribal Tattoo' would be 'original' in Australia for the purposes of the Copyright Act, as the threshold for originality is not that high. As long as Whitmill applied intellectual effort in coming up with the design, and did not copy it from somewhere else, it will be 'original' under the Copyright Act.
Would Warner Bros infringe copyright in Australia?
The first thing Warner Bros did was to reproduce the tattoo on the face of the actor who appeared in the film. The second thing they did was to film that actor (including the tattoo) and thus reproduce the tattoo on film.
If copyright protects tattoo in Australia (as we suspect it does), then reproducing the tattoo on the face of an actor using make-up would likely constitute copyright infringement.
In contrast, there is some scope to argue that filming the actor wearing the tattoo design on the side of his character's face for some portion of the film does not constitute copyright infringement in Australia. This is because there is an exception to copyright infringement (under section 67 of the Copyright Act) in relation to the filming of an artistic work that happens to only be incidental to the principal matters is included in the film.
Although the filming of the tattoo was certainly deliberate, it could still be incidental (the Federal Court has previously found that a deliberate filming of a work may still be merely incidental in the context of what was filmed). Although the tattoo is the focus of a particular segment of the film and has been prominently displayed in various advertisements for the movie, it could nevertheless be argued that, in the context of a feature length film, the reproduction of the tattoo is merely an incidental element.
What could Whitmill do about the copyright infringement?
So, at least under Australian law, there may very well only be one act of infringement here: the reproduction of the tattoo on the actor's face. It has already happened, so Whitmill would not be able to seek an injunction. He would be left with a claim for damages or an account of profits. Both would be difficult to quantify.
For a damages claim, Whitmill could seek compensatory damages (for loss or damage caused by the infringement, which might include the licence fee Whitmill would have charged for use of his copyright work) and additional damages (for example, having regard to the flagrancy of the infringement and benefit shown to have accrued to Warner Bros as a result of the infringement). It is, however, open to question whether Whitmill would be able to bring up the subsequent reproduction of the tattoo on the face of the character in film if that conduct did not itself amount to copyright infringement.
For a claim based on an account of profits, Whitmill would have to show a connection with the infringing conduct and the profits made by Warner Bros as a result of it. This would not get him far if he were not able to bring up the reproduction of the tattoo in the film. Even if he could bring it up, it is not certain how a court would apportion the total profit generated by the film compared with the profit generated by the depiction of the tattoo.
Has there been an infringement of Whitmill's moral rights?
If Whitmill is found to be the author of an artistic work, then under the Copyright Act, he has certain 'moral rights' - which include the right to be attributed as author of that work, and the right not to have his work subject to derogatory treatment (that is, treatment prejudicial to his honour or reputation).
We haven't seen the film, so we don't know if the depiction of the tattoo would be prejudicial to Whitmill's honour or reputation. But perhaps, as a result of the right of attribution of authorship, he would at least be able to get his name added to the long list of credits?
As interesting as this scenario is for us copyright lawyers, film producers may wish to consider obtaining the permission of any tattoo copyright owner before including their designs in a multi-million dollar film.
Partner: Paul Kallenbach
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