Alexander v. Take-Two Interactive Software, Inc. et al

Filing 321

ORDER: Defendants' Motion for Judgment as a Matter of Law (Doc. 313 ) is GRANTED in part and DENIED in part. Signed by Judge Staci M. Yandle on 9/25/2024. (mah)

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF ILLINOIS
CATHERINE ALEXANDER,

)
)
Plaintiff,
)
)
)
vs.
)
)
TAKE-TWO INTERACTIVE
SOFTWARE, INC. 2K GAMES, INC.,
)
2K SPORTS INC., WORLD
)
WRESTLING ENTERTAINMENT, INC., )
)
VISUAL CONCEPTS
ENTERTAINMENT, YUKE'S CO., LTD, )
)
YUKES LA INC.,
)
)
Defendants.

Case No. 18-cv-966-SMY

MEMORANDUM AND ORDER
YANDLE, District Judge:
Plaintiff Catherine Alexander is a former tattoo artist who inked six tattoos on World
Wrestling Entertainment. Inc. (“WWE”) professional wrestler Randy Orton between 2002 and
2008. Alexander filed suit against Defendants Take-Two Interactive Software, Inc., 2K Games,
Inc., 2K Sports Inc., Visual Concepts Entertainment, and WWE asserting copyright infringement
under 17 U.S.C. § 501 for the unauthorized use by Defendants of the registered tattoos in several
WWE videogames. This matter proceeded to trial where a jury reached a verdict in favor of
Alexander and awarded damages in the amount of $3,750.00 (Doc. 298).
The case is now before the Court for consideration of Defendants’ Motion for Judgment as
a Matter of Law and Conditional Motion for a New Trial (Doc. 313), which Alexander opposes
(Doc. 315). For the following reasons, the motion is GRANTED in part and DENIED in part.

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Discussion
Defendants move for judgment as a matter of law, asserting that the fair use doctrine
insulates their utilization of Alexander’s copyrighted tattoos in the WWE 2K videogames and that
she failed to prove actual damages. Federal Rule of Civil Procedure 50 governs judgment as a
matter of law in a jury trial, and the law imposes a high standard for overturning a jury verdict.
Pierson v. Hartley, 391 F.3d 898, 903 (7th Cir. 2004).
In reviewing a party's motion, all reasonable inferences are drawn in favor of the
nonmoving party, no credibility determinations may be made, the evidence may not be weighed,
and evidence that the jury need not have believed is to be disregarded. Reeves v. Sanderson
Plumbing Prods., 530 U.S. 133, 150–151 (2000). The verdict must stand unless no rational jury
could have rendered such a verdict. Walker v. Board of Regents of University of Wisconsin System,
410 F.3d 387, 393 (7th Cir. 2005); Thomas v. Cook County Sheriff's Dept., 604 F.3d 293, 301 (7th
Cir. 2010).
Fair Use
The jury found in favor of Alexander on Defendant’s fair use affirmative defense.
Defendants maintain, however, that their use of the copyrighted tattoos is the type of
transformative, non-substitutive copying that fair use is designed to allow as a matter of law and
that no reasonable jury could find otherwise.
The broad exclusive rights afforded copyright owners do not extend to certain forms of
copying which are considered indispensable to education, journalism, history, criticism, humor
and other informative endeavors. The doctrine of fair use encapsulates this category of permissible
copying. 17 U.S.C. § 107; see also Kienitz v. Sconnie Nation LLC, 766 F.3d 756, 758 (7th Cir.
2014). Under the doctrine, using another's copyrighted work is “fair” for such purposes as

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“criticism, comment, news reporting, teaching, scholarship, or research” and is therefore “not an
infringement of copyright.” Id.; Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994).
The following non-exhaustive factors are considered in determining whether the fair use doctrine
applies: (1) the purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the
amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C.
§ 107; see Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687, 692–93 (7th Cir. 2012).
Here, Defendants’ use of the tattoos was clearly commercial. Defendants contend that,
although the video games feature exact copies of the copyrighted tattoos, Take Two’s use of the
tattoos is “transformative” – that Defendants depicted the tattoos in WWE 2K to depict Orton
realistically. The word “transformative” has been employed “to describe a copying use that adds
something new and important.” Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1203, 209 L.
Ed. 2d 311 (2021).
Defendants’ purpose was to take the tattoos and, without altering or changing them, put
them in the video games. The tattoos were included for their expressive value, rather than to
merely display Orton’s likeness accurately. This was evident with Defendants’ “Create-ASuperstar” feature which enabled a user to take the tattoos and apply them to their own custom
wrestler avatar. Thus, this usage had nothing to do with reproducing the tattoos in the video game
to depict Orton most accurately. The jury saw the creation of various custom wrestlers featuring
the copyrighted tattoos – none of whom resembled Orton. A reasonable jury could have found
that this factor favored Alexander.

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The second factor focuses on the nature of the copyrighted work. 17 U.S.C. § 107(2). “In
general, the more creative the work, the more protection it should be accorded from copying;
correlatively, the more informational or functional the plaintiff’s work, the broader should be the
scope of the fair use defense.” (internal quotation omitted). Neri v. Monroe, 2014 WL 793336, at
*7 (W.D. Wis. Feb. 26, 2014) aff'd, 567 Fed.Appx. 465 (7th Cir. 2014). Defendants argue the
tattoos are not, or at best minimally, protected by copyright law. Alexander has a copyright for
five of Orton’s tattoos. The art of creating a tattoo naturally entails creative and expressive efforts.
Alexander testified about the creative process she utilized to ink the tattoos. Therefore, there was
sufficient evidence for a reasonable fact finder to conclude that the tattoos were sufficiently
expressive and creative, which also favors Alexander.
The third factor involves consideration of the portion of the work used by the alleged
infringers “in relation to the copyrighted work as a whole” in order to determine whether the
portion used was reasonable given the purpose of copying. 17 U.S.C. § 107(3). See, Campbell,
510 U.S. at 586–87 (“the extent of permissible copying varies with the purpose and character of
the use.”). The question is not on how much of the work was taken, but the extent to which the
protected elements were copied from the original and whether that amount was needed to further
the purpose of the use. Neri, 2014 WL 793336, at *7. Defendants assert that it was necessary to
copy each tattoo in its entirety to depict real life accurately. But this assertion is belied by the
“Create-a-Star” feature and by evidence produced at trial establishing that Defendants previously
altered tattoos of wrestlers to avoid infringing on others’ intellectual property. A reasonable
factfinder could find for Alexander on this factor.
The fourth factor, the effect of the use upon the potential market for or value of the
copyrighted work, requires consideration of not only the extent of market harm caused by the

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particular actions of the alleged infringer, but also whether unrestricted and widespread conduct
of the sort engaged in by the defendant would result in a substantially adverse impact on the
potential market for the original. Campbell, 510 U.S. at 590. The “market” in fair use cases
includes the potential market for not only the original work, but also derivative uses and licensing
rights. Red Label Music Publ'g, Inc., 388 F. Supp. 3d at 987.
Alexander testified that she had never licensed her tattoos for video games or any other
medium. Defense expert James Malackowski also provided unrebutted testimony that a market
for licensing tattoos in videogames does not exist and was unlikely to be developed. Although the
fourth factor favored Defendants, the other factors weighed against a finding of fair use and the
Court does not find that it was unreasonable for the jury to conclude that Defendants were not
entitled to their fair use affirmative defense. Accordingly, Defendants’ motion for judgment as a
matter of law regarding the fair use defense is denied.
Damages
Defendants contend that, even if their utilization of the copyrighted tattoos was not fair
use, they are entitled to judgment as a matter of law on Alexander’s claims for damages because
the jury award was based on undue speculation. “The Copyright Act permits a copyright owner
to recover actual damages suffered as a result of the infringing activity and any profits of the
infringer resulting from the infringement that are not otherwise taken into account in calculating
actual damages.” Bell v. Taylor, 827 F.3d 699, 709 (7th Cir. 2016) (quoting McRoberts Software,
Inc. v. Media 100, Inc., 329 F.3d 557, 566 (7th Cir. 2003)). Actual damages are “usually
determined by the loss in the fair market value of the copyright, measured by the profits lost due
to the infringement or by the value of the use of the copyrighted work to the infringer.” Id. A jury
may consider either a hypothetical lost license fee or the value of the infringing use to the infringer

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to determine actual damages, provided the amount is not based on “undue speculation.” Id. At a
minimum, the plaintiff must prove a causal connection or nexus between the infringement and
defendant’s gross revenues. See Bell, 827 F.3d at 710.
Alexander presented no evidence at trial that would support the jury’s damages award.
There was no evidence of either a hypothetical lost license fee or the value of the infringing use to
the infringer. Alexander’s expert, Dr. Jose Zagal testified that he believed a portion of the sales
and profits of the video games were attributable to the five tattoos because Defendants needed
Orton as a character in his game and he needed to have his tattoos. However, Dr. Zagal did not
conduct an analysis of how much the video games’ sales or profits were attributable to the tattoos.
Ryan Clark, Alexander’s expert, also offered no opinion regarding damages. Further, Alexander
testified that she has never licensed a tattoo for use in any medium, and that she could not identify
any business or clients that she lost due to Orton’s tattoos.
Because Alexander failed to present evidence of the tattoos’ value, the jury had to engage
in undue speculation in awarding damages. Accordingly, Defendants are entitled to judgment as
a matter of law on Alexander’s damages award.
Conclusion
For the foregoing reasons, Defendants’ motion for judgment as a matter of law pursuant to
Rule 50(b) (Doc. 313) is GRANTED in part and DENIED in part.
IT IS SO ORDERED.
DATED: September 25, 2024

STACI M. YANDLE
United States District Judge

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