UIC Law Open Access Repository

 i                Volume 24, Issue 2                Table of Contents  Essay:   THE FTC’S BAN ON NONCOMPETE AGREEMENTS: SETTING SAIL ON A SEA OF DOUBT ..................................................................................... 101 By Jeffery M. Cross   Case Notes:   THE BASTARD OF THE ARTS AND COPYRIGHT LAW: THE INTERSECTION OF DANCE AND COPYRIGHT IN HANAGAMI V. EPIC GAMES, INC. ..................................................................................................... 104 By Alyssa Sitkowski  A PROPOSAL ON DECIDING TRADEMARK INFRINGEMENT CLAIMS TO LIMIT CONFUSION FOR CONSUMERS .............................................. 121 By Abigail Holtzman  CATCH-22: THE ELUSIVENESS OF COMMUTED PER-UNIT ROYALTY CONVERSIONS AND THEIR SUFFICIENCY IN HYPOTHETICAL NEGOTIATION CALCULATIONS UNDER PROTECTIVE ORDER ...... 142 By Kenneth L. Woodard Jr.     ii UIC  REVIEW OF INTELLECTUAL PROPERTY LAW   EDITORIAL BOARD 2024-2025   KENNETH L. WOODARD JR.* Editor-in-Chief  JOANNA GORO* Managing Editor   JULIA BLUM* Candidacy Editor ALEXIA CHIAMBAS* Production Editor  ANTHONY V. LETTO* Administrative Editor  ANDREA M. MELARAGNO* Lead Articles Editor  JACOB R. ALLEN* Lead Articles Editor  DOMINIKA KOZANECKA* Articles Editor  PRIYAL PATEL* Lead Articles Editor  ANTONIO RENE ZUNIGA* Lead Articles Editor  GIULIA POROPAT* Articles Editor  MADELYN SCHEUBER* Articles Editor  MAGGIE A. BROWN* Articles Editor CASSIE GAIL HINTON* Articles Editor  MCKENZIE M. KELLY* Social Media/Executive Development Editor                 * Denotes a May 2025 graduate  iii ADVISORY BOARD   DONALD L. BESCHLE Director of Law Reviews Professor of Law UIC School of Law  YOLANDA M. KING Review of Intellectual Property Law Advisor Director & Associate Professor of Law Center for Intellectual Property, Information & Privacy Law UIC School of Law  DAVID E. SORKIN Review of Intellectual Property Law Co-Advisor Associate Dean for Academic Programs Associate Professor of Law UIC School of Law  FRANK YOUNG Review of Intellectual Property Law Advisor Louis L. Biro Law Library UIC School of Law    iv Letter from the Editor-in-Chief Dear Readers,   In this second issue of Volume 24 of the UIC Review of Intellectual Property Law (“RIPL”), our board presents to you a holistic exhibition of intellectual property topics. We start with the least well known of the four IP areas—trade secrets—by way of an essay from UIC Law Professor, Jeffery M. Cross. Second, we explore a student case note dealing with copyright law in the video game context. Third, we venture into trademark law through the lens of home delivered cuisine. Finally, we cover patent law, focusing on calculating damages.   The 2024-25 UIC RIPL Editorial Board has selected these four written works because we wanted this issue to provide a fairly representative impression of the kind of topics involved in IP law. Notwithstanding its approachable nature for law students, this issue also offers substantive and relevant content for the lawyers, judges, and IP enthusiasts as well.   In his essay, The FTC’s Ban on Noncompete Agreements: Setting Sail on a Sea of Doubt, Professor Cross covers the impact of the recently published Federal Trade Commission rule banning employer/employee noncompetes. Employers can no longer rely on noncompetes to keep valuable company secrets from spilling out to their competitors. The new FTC rule finds that protecting trade secrets, confidential information, and other intellectual property is an insufficient justification for noncompete agreements.  In her case note, The Bastard of the Arts and Copyright Law: The Intersection of Dance and Copyright Law in Hanagami v. Epic Games, Inc., Alyssa Sitkowski examines two different circuit courts’ approaches to evaluating copyright claims for choreographic works. The context for this legal battle is an interesting one given that it involves a viral pop culture dance routine and one of the most popular video games of our time.   In Abigail Holtzman’s, A Proposal on Deciding Trademark Infringement Claims to Limit Confusion for Consumers, the stage is set for a different kind of legal battle. Instead of dance moves, this case revolves around dinner delivery services. Specifically, Holtzman delves into how courts set legal standards so that consumers can distinguish between trademarks.  Lastly, in my case note, Catch-22: The Elusiveness of Commuted Per-Unit Royalty Conversations and their Sufficiency in Hypothetical Negotiation Calculations under Protective Order, I discuss how the Federal Circuit should handle patent cases when damages calculations are under protective seal.  To the authors of Volume 24, Issue 2: Thank you for expanding our understanding about IP law. To our dedicated readers and subscribers: We appreciate your steadfast engagement and interest in the scholarship the RIPL board produces.   Kind Regards, Kenneth L. Woodard Jr. Editor-in-Chief 

English

Table of Contents & Introductory Material

Holtzman, Abigail

A Proposal on Deciding Trademark Infringement Claims to Limit Confusion for Consumers

Charles, Patrick J.

The Second Amendment and Heller’s “Sensitive Places” Carve-Out Post-Rahimi: A Historiography, Analysis, and Basic Framework

Cross, Jeffery M.

UIC  REVIEW OF INTELLECTUAL PROPERTY LAW THE FTC’S BAN ON NONCOMPETE AGREEMENTS: SETTING SAIL ON A SEA OF DOUBT  JEFFERY M. CROSS ABSTRACT In this essay, Professor Jeffery Cross covers the impact of the recently published Federal Trade Commission rule banning employer/employee noncompetes on long-recognized benefits to competition of noncompete agreements. In that rule, the FTC concluded that noncompete agreements were an unfair method of competition under Section 5 of the FTC Act. This essay considers the FTC’s rule in the historical context of Judge William Howard Taft’s decision in United States v. Addyston Pipe & Steel Co. Judge Taft identified noncompete agreements entered between an employer and his or her prospective employee as one kind of restraint that could have procompetitive benefits such as encouraging employers to hire and thoroughly train employees without fear the employees might exploit the company’s trade secrets. The new FTC rule gives a nod to such benefits by finding that protecting trade secrets, confidential information, and other intellectual property is an insufficient justification for noncompete agreements, as employers have less restrictive alternatives for safeguarding such information. These alternatives, which include reliance on trade secret law and nondisclosure agreements, reasonably accomplish the same purpose as noncompete agreements and burden competition to a less significant degree.  Cite as Jeffery M. Cross, The FTC’s Ban on Noncompete Agreements: Setting Sail on a Sea of Doubt, 24.2 UIC REV. INTELL. PROP. L. 101 (2025). [24.2:101 2025]  The FTC’s Ban on Noncompete Agreements: Setting Sail on a Sea of Doubt 101 THE FTC’S BAN ON NONCOMPETE AGREEMENTS: SETTING SAIL ON A SEA OF DOUBT JEFFERY M. CROSS* In 1898, only ten years after the passage of the Sherman Act, then Judge William Howard Taft issued his seminal antitrust decision, United States v. Addyston Pipe & Steel Co.1 Judge Taft, of course, would go on to become President of the United States and then Chief Justice of the Supreme Court. In his decision, Judge Taft examined the treatment of restraints of trade under the common law. He concluded that restraints should be condemned when they lack any justification or excuse, and where the sole object of the parties is to restrict competition and enhance or maintain prices. 2  However, he identified various restraints that were enforced at common law. One restraint involved noncompete agreements used in the sale of a business. In such a restraint, the seller or owner has built up a business with extensive goodwill. The buyer of such a business wants some reassurance that the seller won’t engage in the same business after the sale to the detriment of the buyer. This protection often takes the form of a restrictive covenant, committing the seller not to compete for a period in a limited area.3 Another restraint cited by Judge Taft involved noncompete agreements entered between an employer and his or her prospective employee. Judge Taft noted employers want to hire the most capable employees and to “instruct them thoroughly,” including sharing the company’s trade secrets with them.4 Employers would be reluctant to do so unless the employee would agree not to set up a rival business “after learning the details and secrets of the business of their employers.” 5  This agreement is often referred to as a “noncompete agreement.” Judge Taft concluded that restraints such as the noncompete agreement were ancillary to a procompetitive arrangement. Increasing the employment of staff and assistants would expand businesses and increase output. This is clearly a procompetitive justification that would benefit consumers. The noncompete agreement facilitates that increase in employment. It would also encourage employers to hire and train employees. Judge Taft cited several English and American decisions upholding and enforcing such restraints.6 Judge Taft also concluded that the restraint should be “reasonably necessary” to protect the employer. He elaborated on this later test as follows:  * © 2025 Jeffery M. Cross. Adjunct Professor at the University of Illinois Chicago where he teaches antitrust law. He is also the author of a treatise on Section 1 of the Sherman Act prepared at the request of the Federal Judicial Center, the educational arm of the federal courts. The treatise is a basic primer on Section 1 for new federal judges or judges without a great deal of antitrust experience. 1 85 F. 271 (6th Cir. 1898), aff’d 175 U.S. 211 (1899).  2 Id. at 282-83. 3 Id. at 281. 4 Id. 5 Id. 6 Id. at 282.   102 [24.2:101 2025]                 UIC Review of Intellectual Property Law                           The main purpose of the contract suggests the measure of the protection needed and furnishes a sufficiently uniform standard by which the validity of such restraint may be judicially determined.  In such a case, if the restraint exceeds the necessity presented by the main purpose of the contract, it is void for two reasons: first, because it oppresses the covenantor [employee], without any conspiracy benefit to the covenantee [employer], and second, because it tends to a monopoly.7 In a famous passage, Judge Taft cautioned against attempting to determine how much restraint of competition is in the public interest and how much is not. To Judge Taft, evaluating contracts that serve no purpose beyond mutual restraint—without regard to procompetitive benefits or anticompetitive effects—is to “set sail on a sea of doubt.”8 Despite the long-recognized benefits to competition of noncompete agreements, the Federal Trade Commission, in a final rule published in the Federal Register in April 2024, banned employer/employee noncompetes across-the-board. 9  The FTC concluded that noncompete agreements were an unfair method of competition under Section 5 of the FTC Act. However, the FTC rule allowed noncompete agreements between sellers and buyers of businesses. The FTC certainly cannot have doubts about its decision based on the depth of its investigation. The FTC received over 26,000 comments on its proposed rule. It also considered several empirical research studies. That review of comments and studies resulted in a 162-page version of the final rule as it appeared on the FTC’s website. In determining the anticompetitive effect of noncompete agreements, the FTC’s rule appears to place a great deal of weight on the impact of noncompete agreements on labor markets. The FTC found that noncompete agreements tended to negatively affect competition in labor markets by suppressing labor mobility and earnings and reducing job quality. This emphasis is consistent with the FTC’s issuance of a revised policy statement on the meaning and scope of Section 5 of the FTC Act. In this revision, the FTC clearly viewed the reach of Section 5 as extended beyond the traditional  7 Id. at 282. 8 Id. at 283-84. Addyston Pipe was overshadowed by the Supreme Court’s decisions in Standard Oil Co. of New Jersey v. United States, 221 U.S. 1 (1911) (holding that restraints of trade under Section 1 must be unreasonable), and Bd. of Trade v. United States, 246 U.S. 231 (1918) (setting forth a standard for the Rule of Reason). Addyston Pipe was essentially ignored as precedent until its revival by the Chicago School of Antitrust. See, e.g., ROBERT H. BORK, THE ANTITRUST PARADOX 28 (1978); Rothery Storage & Van Co. v. Atlas Van Lines, Inc., 792 F. 2d 210 (D.C. Cir. 1986) (Bork, J.); and Polk Bros., Inc. v. Forest City Enterprises, Inc., 776 F.2d 185 (7th Cir. 1985) (Easterbrook, J.) Addyston Pipe’s revival, especially the “reasonably necessary” test, can be seen in Supreme Court decisions such as Broadcast Music, Inc. v. CBS, Inc., 441 U.S. 1 (1979); Nat’l Soc’y of Pro. Eng’rs v. United States, 435 U.S. 679 (1978); and NCAA v. Alston, 594 U.S. 69 (2021). 9 Non-Compete Clause Rule, 88 Fed. Reg. 3482, 3509 (proposed Jan. 19, 2023) (to be codified 16 C.F.R. pt. 910). The FTC defines a noncompete agreement as “a contractual term between an employer and a worker that prevents the worker from seeking and accepting employment with a person, or operating a business, after the conclusive of the worker’s employment with the employer.”  [24.2:101 2025]  The FTC’s Ban on Noncompete Agreements: Setting Sail on a Sea of Doubt 103 consumer welfare standard of antitrust law to consider the impact of a restraint on labor markets. This position was confirmed by the FTC Chair Lina Kahn in response to my question during a question-and-answer session at the Loyola University Chicago Antitrust Colloquium in April 2023. Judge Taft’s concern in his famous “setting sail on a sea of doubt” passage in Addyston Pipe was that courts embark on uncertainty when they assume the power to determine how much restraint of competition serves the public interest and how much does not. The FTC’s across-the-board ban on noncompetes appears to undertake little consideration of the procompetitive benefits recognized under the common law for noncompetes. Under Judge Taft’s explanation of the restraint in Addyston Pipe, employers are incentivized to hire and train employees when they can be confident that doing so will not result in the employee leaving to start a competing business. Implicit in Judge Taft’s description of the common law’s treatment of the restraint is the idea that businesses grow, employment rises, and output increases. The FTC rule gives a nod to such benefits by finding that protecting trade secrets, confidential information, and other intellectual property is an insufficient justification for noncompete agreements, as employers have less restrictive alternatives for safeguarding such information. These alternatives include reliance on trade secret law and nondisclosure agreements. The FTC acknowledged that such alternatives may not be as protective as employers would like. It concluded, however, that such alternatives reasonably accomplish the same purpose as noncompete agreements and burden competition to a less significant degree. Trade secret and nondisclosure laws need to be strengthened to fully protect employers and incentivize them to hire and train employees, thereby expanding output. If such alternative laws are in fact amended, the FTC may very well find itself “setting sail on a sea of doubt” as it attempts to determine how much restraint imposed by trade secret law and nondisclosure agreements serves the public interest and how much does not. 

The FTC’s Ban on Noncompete Agreements: Setting Sail on a Sea of Doubt

UIC Law Review Volume 58 Issue 4 Article 1 2025 Masthead Follow this and additional works at: https://repository.law.uic.edu/lawreview Recommended Citation Masthead, 58 UIC L. Rev. (2025) https://repository.law.uic.edu/lawreview/vol58/iss4/1 This Front Matter is brought to you for free and open access by UIC Law Open Access Repository. It has been accepted for inclusion in UIC Law Review by an authorized administrator of UIC Law Open Access Repository. For more information, please contact law-reference@uic.edu. UIC LAW REVIEW VOLUME 58 SUMMER 2025 ISSUE 4  FAYE VASILOPOULOS Editor-in-Chief EDITORIAL BOARD 2024-2025  DEREK RHEA Managing Editor  FATIMA SIDDIQUA Executive Lead Articles Editor  JACOB BARON Lead Articles Editor  ROXY FREEL Lead Articles Editor  SKYLAR NAFZIGER Lead Articles Editor  RICHARD LEE Lead Articles Editor  JACOB HULBERT     Executive Production Editor  DAVID GIRGIS Administrative Editor BETHANY NELSON Candidacy Editor  JORDAN ROBINSON Executive Student Publications Editor  TAYLOR CHANTRY Student Publications Editor  ERIN OWEN Student Publications Editor  ANITA SALIU Student Publications Editor  AMANDA MEDENDORP Student Publications Editor  HEIDI HOPSON Production Editor  STAFF EDITORS  EYRAM ANAGLATE ISABEL BEEBE IMANI JOHNSON   VICTORIA MOONCOTCH VINCENT OLSON  ANTHONY RAY  JACOB ROTOLO  SEBASTIAN ROZPADEK      STAFFSOPHIA	ANASTASIA AMI	BERANEK	HANS	BROWNSTEIN SAMUEL	CROAK ALEXA	ESSER ALEXANDRA	HERMAN NICASIA	LACORTE HAMZA	MEMON CHRISTINE	PILLADO ELLIOT	ROSE ANGELA	VIVACQUA ANNIE	WISE KYLE	ANDERSON KIRSTEN	BERKEY CLARE	BRUNN SAMUEL	DAUNER CHANG	GAO DANIEL	HRYNKO ANNA	LANTZ ALEX	NASCA MARLEE	REISCHL JORDAN	SALZMAN ERIN	WALLANDER JACK	WOEHLER OMAR	ARAFEH MAHA	BOKHARY KHALA	CARTER STEFAN	DAVITKOV IVAN	GARCIA CAMERON	IPPOLITO BRENDAN	MCDONOUGH NICHOLAS	NASTRUZ RYAN	RICHTER MAXWELL	SEEWALD MICHAEL	WARREN  ROBERT	ARANDA	 JASMINE	BOOTHE JESSICA	CHUKWUMA VIRAJ	DESETTY SARA	HABIB SHAHID	JABER ADAM	MEIXNER PETER	PIEROPOULOS JACQUELINE	ROBBINS KATIE	STONICH	MARILYN	WEBB		FACULTY ADVISORS  DONALD L. BESCHLE MARK E. WOJCIK ISSN	2836-7006	

Masthead

Owen, Erin

No Hope in Sight: Rethinking the Constitutionality of Solitary Confinement With Hope v. Harris

Mundy, Hugh

Ginsberg, Marc

From the Mouths of Babes: Evidentiary Issues, Child Declarants, and Statements Made for Medical Diagnosis or Treatment

King, Yolanda M.

UIC  REVIEW OF INTELLECTUAL PROPERTY LAW   GAME ON: THE CONTINUING CHALLENGES FOR ENFORCEMENT OF TATTOO COPYRIGHTS YOLANDA M. KING ABSTRACT In this essay, Professor King revisits the challenges that tattoo artists encounter when they seek to establish infringement of an exclusive right in a tattoo inked on a client’s body. In August 2014, Professor King published The Enforcement Challenges for Tattoo Copyrights, the second article in a series of articles to examine the applicability of copyright law to tattoos. While The Enforcement Challenges observed that the selection of the human body as the medium of expression for artists’ works raises legal and practical concerns that necessitate a diminution in the exclusive rights of copyright owners vis-à-vis tattoo bearers, it also concluded that vigorous enforcement of tattoo artists’ rights is warranted. The past ten years have demonstrated that the issues raised in The Enforcement Challenges are still complex and evolving. Tattoo artists continue to face insurmountable challenges in the enforcement of their rights, whether the users of their works are their clients or third parties outside of the artist-client relationship. This essay reconsiders the enforcement challenges for tattoo copyrights in light of recent cases and determines that, while courts have found in favor of defendants based on de minimis use, fair use, and implied license, there is a court decision that signals to tattoo artists that copyright law will be properly applied to prevent unfettered uses of their works in video games, particularly where the uses are not connected to the avatars who represent the tattoo bearers in real life.  Cite as Yolanda M. King, Game On: The Continuing Challenges For Enforcement Of Tattoo Copyrights, 25.1 UIC REV. INTELL. PROP. L. 1 (2025). [25.1:1 2025]        Game On: The Continuing Challenges for Enforcement of Tattoo Copyrights 1 GAME ON: THE CONTINUING CHALLENGES FOR ENFORCEMENT OF TATTOO COPYRIGHTS YOLANDA M. KING* Welcome to my life, tattoo We’ve a long time together, me and you I expect I’ll regret you but the skin graft man won’t get you You’ll be there when I die Tattoo   —Lyrics from “Tattoo,” by The Who1  After years of settlements, 2  a few tattoo artists are taking their copyright infringement suits to trial, both as plaintiff3 and defendant.4  Over a decade ago, I authored a series of articles about copyright protection for tattoos and the enforcement of tattoo copyrights, The Challenges “Facing” Copyright Protection for Tattoos5 and The Enforcement Challenges for Tattoo Copyrights, respectively.6  At a time when there were no reported decisions on the eligibility of tattoos for copyright protection and the  * © 2025 Associate Professor of Law, University of Illinois Chicago School of Law.  J.D., Harvard Law School, B.A., Indiana University-Purdue University at Indianapolis. I wish to thank Dean Nicky Boothe and University of Illinois Chicago School of Law whose generous support assisted in the preparation of this Article.  Also, I am grateful to the University of Illinois Chicago School of Law Review of Intellectual Property Law Board and my Student Legal Aide, Alyssa Sugay, for their diligence and hard work in assisting me with this essay. 1 THE WHO, Tattoo, on The Who Sell Out (Decca Recs. 1967). 2 See, e.g., Compl., Reed v. Nike, Inc., No. 3:05-CV-00198 (D. Or. Feb. 10, 2005), dismissed, (D. Or. Oct. 19, 2005) (plaintiff alleged copyright infringement based on unauthorized use of copyrighted tattoo in television commercial); Compl., Whitmill v. Warner Bros. Ent. Inc., No. 4:11-CV-752 CDP (E.D. Mo. Apr. 28, 2011), dismissed, (E.D. Mo. June 22, 2011) (plaintiff alleged copyright infringement based on unauthorized use of copyrighted tattoo in the motion picture The Hangover Part II and in promotion and advertising for the motion picture); Compl., Allen v. Elec. Arts, Inc., No. 5:12-CV-3172 (W.D. La. Dec. 31, 2012), dismissed, (W.D. La. April 9, 2013) (plaintiff alleged copyright infringement based on unauthorized use of copyrighted tattoo on video game cover and in video game itself); Compl., Escobedo v. THQ, Inc., No. 2:12-CV-02470-JAT (D. Ariz. Nov. 16, 2012), dismissed, (D. Ariz. Dec. 11, 2013) (plaintiff alleged copyright infringement based on unauthorized use of copyrighted tattoo in video game). 3 See, e.g., Compl. Hayden v. 2K Games, Inc., et al, No. 1:17-CV-02635 (N.D. Ohio Dec. 18, 2017) (plaintiff alleged copyright infringement based on unauthorized use of copyrighted tattoos in video game); Compl., Alexander v. Take-Two Interactive Software, Inc., No. 3:18-CV-00966 (S.D. Ill. April 17, 2018) (plaintiff alleged copyright infringement based on unauthorized use of copyrighted tattoo in video game). 4 See Compl., Sedlik v. Von Drachenberg, No. 2:21-CV-01102 (C.D. Cal. Feb. 7, 2021) (plaintiff alleged copyright infringement based on unauthorized reproduction of plaintiff’s photograph on arm of defendant’s client and on social media). 5 See Yolanda M. King, The Challenges “Facing” Copyright Protection for Tattoos, 92 OR. L. REV. 129 (2013)  (this article was the first of a series of three articles to examine the applicability of copyright law to tattoos). 6 See Yolanda M. King, The Enforcement Challenges for Tattoo Copyrights, 22 J. INTELL. PROP. L. 29 (2014)  (this article was the second of a series of three articles to examine the applicability of copyright law to tattoos; Yolanda M. King, The Right of Publicity Challenges for Tattoo Copyrights, 16 NEV. L.J. 441 (2016) (the third and final article in the series, is beyond the scope of this essay).     2 [25.1:1 2025]                      UIC Review of Intellectual Property Law                         enforcement of tattoo copyrights, these Articles concluded that (1) tattoos are pictorial works that are eligible for federal copyright protection7 and (2) in light of the unique challenges posed by the selection of the human body as a medium of expression, tattoo artists’ can expect diminution of their exclusive rights in enforcement efforts against their tattoo-bearing clients to a significant degree and diminution of their exclusive rights in enforcement efforts against parties outside of the tattoo artist-client relationship to a lesser degree.8 Now that courts have addressed the scope of enforcement for tattoo copyrights, particularly for tattoos reproduced and displayed on video game avatars in Solid Oak Sketches, LLC v. 2K Games, Inc.,9 Hayden v. 2K Games, Inc.,10 and Alexander v. Take-Two Interactive Software, Inc.,11 it is apparent that courts are unlikely to favor tattoo artists in some instances, but the ability to establish copyright infringement of a tattoo used in video games is not foreclosed.  In 2016, tattoo licensing company Solid Oak Sketches sued developers, marketers, and distributors of the NBA 2K video game series for copyright infringement based on five tattoos inked on National Basketball Association (“NBA”) players’ bodies that appeared on the avatars for these same players in the video game series.  In 2017, tattoo artist James Hayden sued the same defendants for copyright infringement on similar grounds, the use of Hayden’s copyrighted tattoos inked on the bodies of NBA players that later appeared on the avatars of the same players in the NBA 2K video game series.  In 2018, tattoo artist Catherine Alexander sued Take-Two Interactive, Inc. and World Wrestling Entertainment, Inc. for the use of copyrighted tattoos on wrestler Randy Orton’s body that later appeared on Orton’s avatar and other avatars at users’ discretion in the WWE 2K video games.   The Solid Oak Sketches and Hayden courts both rejected the plaintiffs’ copyright infringement claims, 12  finding the tattoo uses were de minimis, 13  fair use, 14  and  7 King, supra note 5, at 160 (“If that tattoo meets the requirements of copyrightability and is conceptually separable from the human body, then it is a copyrightable PGS work.”). 8 King, supra note 6, at 70. 9 Solid Oak Sketches, LLC v. 2K Games, Inc., 449 F. Supp. 3d 333 (S.D.N.Y. 2020). 10 Hayden v. 2K Games, Inc., 375 F. Supp. 3d 823 (N.D. Ohio 2019). 11 Alexander v. Take-Two Interactive Software, Inc., No. 18-cv-966-SMY, 2022 U.S. Dist. LEXIS 171979 (S.D. Ill. Sep. 22, 2022). 12 Solid Oak Sketches, LLC, 449 F. Supp. 3d at 353.; Hayden, 375 F. Supp. 3d at 830-31. 13 Id. at 344 (stating that “To establish that the infringement of a copyright is de minimis, and therefore not actionable, the alleged infringer must demonstrate that the copying of the protected material is so trivial ‘as to fall below the quantitative threshold of substantial similarity, which is always a required element of actionable copying.’”) (citing Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998) (quoting Ringgold v. Black Ent. Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997)).  14  17 U.S.C. § 107(1)-(4) (The Copyright Act provides that “[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include – (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.”).  [25.1:1 2025]        Game On: The Continuing Challenges for Enforcement of Tattoo Copyrights 3 subject to implied license. 15   Intellectual property scholars have observed that a contrary outcome in Alexander makes the case an outlier.16  In Alexander, the jury awarded actual damages of only $3,750 to the tattoo artist and rejected defendants’ fair use defense.17  While the court later granted defendants’ motion for judgment as a matter of law on Alexander’s damages award because she failed to present evidence of the tattoo’s value, the court still denied judgment as a matter of law on the fair use defense.18    The use of copyrighted tattoos in Alexander is distinguishable from the uses in Solid Oak Sketches and Hayden.  In Solid Oak Sketches and Hayden, the copyrighted tattoos at issue were only used in connection with the avatars’ bodies that depicted the real-life tattoo bearers—professional basketball players featured in the NBA 2K video game series.  In contrast to those uses, which may be reasonably objectionable by tattoo artists, the WWE 2K video game’s “Create-a-Star” feature allowed a player to take the tattoos at issue and apply them to a custom wrestler avatar.19  This feature, which permitted use of the tattoos disconnected from Orton and his avatar’s body, influenced the court’s analysis of the first fair use factor, the purpose of the use (“this usage had nothing to do with reproducing the tattoos in the video game to depict Orton most accurately”), and the third fair use factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole (defendants’ assertion “that it was necessary to copy each tattoo in its entirety to depict real life accurately . . . belied by the ‘Create-a-Star’ feature”), in favor of Alexander.20  Therefore, the court concluded that these factors in combination with fair use factor number two, the creative and expressive nature of Alexander’s five copyrighted tattoos, outweighed factor four, the effect of the use upon the potential market for or value of the copyrighted work (in light of Alexander’s testimony that “she had never licensed her tattoos for video games or any other medium” and the defense expert “provided unrebutted testimony that a market for licensing tattoos in videogames does not exist and was unlikely to be developed”), in favor of defendants.21 The court correctly determined that the disconnected use of the copyrighted tattoos favored Alexander in its fair use defense analysis.22  Tattoo artists disfavor uses  15 Solid Oak Sketches, LLC, 449 F. Supp. 3d at 346 (“Although the Second Circuit has not yet ruled on the precise circumstances under which an implied non-exclusive license will be found,” courts in this Circuit have found an implied non-exclusive license “where one party created a work at the other’s request and handed it over, intending that the other copy and distribute it.”)(citing Weinstein Co. v. Smokewood Ent. Grp., LLC, 664 F. Supp. 2d 332, 344 (S.D.N.Y. 2009) (internal quotation marks omitted)). 16  See Eric Goldman, Jury Awards Damages to Tattoo Artist for Video-Game Depiction – Alexander v. WWE 2K, TECHNOLOGY & MARKETING LAW BLOG, (Oct. 6, 2022), https://blog.ericgoldman.org/archives/2022/10/jury-awards-damages-to-tattoo-artist-for-video-game-depiction-alexander-v-wwe-2k-guest-blog-post.htm; see also Aaron Moss, Tattoo Artist’s Trial Win is a Loss for Bodily Autonomy, Free Speech, COPYRIGHT LATELY, (Oct. 2, 2022), https://copyrightlately.com/tattoo-artist-trial-victory-copyright-lawsuit/. 17 See Alexander, No. 3:18-cv-00966-SMY, 2022 U.S. Dist. LEXIS 171979 (S.D. Ill. Sep. 30, 2022).  18 Id. at *7-9.  19 Id. 20 Id. 21 Id. 22 Transcript of Preliminary Injunction Hearing at 56, Whitmill, No. 4:11-CV-752 CDP (E.D. Mo. June 21, 2011) (this use is reminiscent of the defendant’s disconnected use of the facial tattoo inked    4 [25.1:1 2025]                      UIC Review of Intellectual Property Law                         of their tattoos that are disconnected from the body of the tattoo bearer. 23   This longstanding industry norm also informs the court’s consideration of whether an implied license would be likely although this defense was not presented to the jury in Alexander.   The Enforcement Challenges article encouraged tattoo artists to enforce their rights against the use of tattoos disconnected from the client’s body.24  Despite the outcomes of Solid Oak Estates and Hayden, tattoo artists should remain vigilant in the enforcement of their rights, particularly in instances where the copyrighted tattoos are used apart from the tattoo bearer’s body or the depiction of the tattoo bearer’s body in a video game or other medium.  Alexander illustrates that a tattoo artist can show infringement of their work in a video game, which signals that a tattoo artist’s work can be protected in this context.   on Mike Tyson in The Hangover Part II motion picture.  In Whitmill, No. 4:11-CV-752 CDP (E.D. Mo. June 22, 2011), the court observed that unlike in the first Hangover movie, the use of the tattoo was disconnected from Tyson’s face in the sequel, and though it was prominently displayed on the face of another actor throughout the movie, the display of the tattoo was insignificant to the plot of the movie.).   23 Aaron Perzanowski, Tattoos and IP Norms, 98 MINN.  L. REV. 511, 537 (2013) (“In addition to public displays of their tattoos, [tattoo artists] acknowledge clients’ rights to reproduce images of their tattooed bodies, whether by uploading images to their Facebook profiles, submitting photos for publication in tattoo magazines, or even reproducing a picture of the tattoo for commercial purposes….But under prevailing industry norms, not all client uses are acceptable.  Tattooers distinguish between uses of the tattoo as applied to the body, which are universally accepted, and uses of the tattoo design as a work disconnected from the body, which are subject to greater skepticism.”). 24 King, supra note 7, at 69. (“This Article not only concurs with Perzanowski's conclusion that tattoo artists may break from the industry norm against litigation when such third party uses take place but also encourages tattoo artists to enforce their rights against these uses.”).  

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