Start-Up Launchpad Blog

The Hangover Tattoo - Are Your IP Assets Covered? - July 25, 2011

Emily E. Harris, Patent Attorney

I know that understanding the complexities of intellectual property (IP) law is probably very low on the list of things that an entrepreneur wants to do.  A little bit of knowledge, however, can go a long way in helping you avoid legal problems related to IP and to boost the value and position of your business. In order to help make learning about IP a little more enjoyable, I'm planning on looking at some cases in the entertainment industry and pointing out IP lessons for startups along the way.

 

The first case to look at is S. Victor Whitmill v. Warner Bros. Entertainment Inc., which could also be known as The Tattoo Artist v. "The Hangover Part II".  Mr. Whitmill is a tattoo artist who inked Mike Tyson's face in a Vegas tattoo parlor in 2003.  Before applying the tattoo to Mike Tyson's face, Mr. Whitmill had Mike Tyson sign a release acknowledging that the tattoo artwork was property of the tattoo business. Fast forward several years to 2011 when the movie "The Hangover II" was set for release.  For anyone who hasn't seen the movie, I'll enlighten you on the tattoo:  Ed Helm's character Stu Price wakes up in a Bangkok hotel with a tattoo around his eye and no memory of how it got there. Stu's tattoo is practically identical to Mike Tyson's tattoo inked by Mr. Whitmill. 

 

Mr. Whitmill sued the movie studio, alleging that he owned the copyright for the Tyson tattoo and that the tattoo on Stu Price amounted to copyright infringement.  He then asked the court to block the release of the movie.  The judge in the case did not block the release of the movie, but did suggest Mr. Whitmill was likely to win the lawsuit.  Apparently in an effort to get Mr. Whitmill to settle his claims, the studio then said that it would digitally alter Stu's tattoo in the DVD version of the movie.  Ultimately the parties settled, presumably with a big paycheck going to Mr. Whitmill.

So, what does all of this have to do with a startup?  This case is ripe with examples of "what to do" (by way of Mr. Whitmill) and "what not to do" (courtesy of the studio):

  • Know what your company's IP is
  • Make sure that your company owns all of the IP
  • Take appropriate steps to register or protect your IP
  • Conduct searches to get clearance to use or move forward with your IP so as to avoid a lawsuit

Know What Constitutes Intellectual Property
No court has definitively settled the issue of whether a tattoo is protectable by a copyright, although the judge in the Hangover case appeared to believe tattoos to be so. Kudos to Mr. Whitmill, however, for recognizing that body art seems to qualify as intellectual property and taking steps to protect it.  For most businesses, determining what makes up intellectual property isn't such a gray area.  It's important to remember that intellectual property doesn't just mean patents (which protect inventions), but also trademarks (your brand), copyrights (which protect works of authorship, including website design, software code, advertising materials, brochures, and forms) and trade secrets (anything that gives your business a competitive advantage, including software code, customer lists, financial information, price lists, market studies, and business plans).  So, even if your business doesn't have any patentable inventions, it probably does have intellectual property.

Make Sure that Your Company Owns the IP
The records in the Hangover case show that Mr. Whitmill was able to get Mike Tyson to sign a release acknowledging that Mr. Whitmill owned the tattoo.  Ownership allows you to control how your IP is used, so Mr. Whitmill was able to complain that he did not authorize the use of the tattoo artwork on Stu Price. This is an important lesson for startups: pay attention to who owns your IP.  Certain types of contracts that should always be scrutinized by a startup to make sure that you aren't transferring ownership of your IP include vendor contracts, agreements with independent contractors, contracts with your customers, and agreements with all of your company's founders, consultants and strategic partners. 

Take Appropriate Steps to Register your IP
Not all intellectual property must be registered in order for rights to exist, but there are some instances where registration is required (patents) and others where it is advantageous to register (trademarks and copyrights).  In the Hangover case, Mr. Whitmill owned the copyright in the Tyson tattoo as soon as he created it.  He could not, however, sue the studio for infringement until he registered the copyright with the U.S. Copyright Office, which he obviously applied for and successfully obtained. 

There are certain benefits attached to registration of intellectual property: patent rights don't exist until the invention is successfully registered with the federal Patent Office, a federal trademark registration protects your right to expand your brand throughout the country and prevent others from using marks that are too close to yours, and a copyright registration gives you access to court and increased damages.  Ask an attorney to sit down with you to go over your IP portfolio and help determine what types of registrations should be obtained.

Check Before You Use IP
The movie studio seems to have missed this point.  While you can give them the fact that it hasn't been decided by a court whether a tattoo is protectable with a copyright, the studio must have had the resources to allow them to thoroughly vet the script and the props to identify IP risks, and it seems like copying the tattoo should have at least given them pause.  The actual tattoo itself doesn't really have any particular significance in the movie, so it seems that Stu could have woken up with any tattoo on his face without having any impact on the plot.  Not to mention the fact that the issue of tattoos as IP has been at least considered before and there's no reason why the studio shouldn't have seen this case and identified a red flag.

For most startups, the issue is simple: check out your intellectual property before your use it or adopt it.  In the typical startup, the main clearance issue is whether your proposed trademark is available for use or whether it is too close to someone else's mark.   

Are you educated yet? There is still a lot more to learn about IP and my future posts will expand on the issues identified above.  For more information about intellectual property for startups, sign up to be a client and download a free copy of The Startup's Guide to Intellectual Property.