Case 3:18-cv-00966-SMY Document 176 Filed 03/18/20 Page 1 of 8 Page ID #3071
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF ILLINOIS
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`Case No. 18-cv-966-SMY
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`))))))))))))))
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`CATHERINE ALEXANDER,
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`Plaintiff,
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`vs.
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`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.,
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`Defendants.
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`MEMORANDUM AND ORDER
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`YANDLE, District Judge:
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`Plaintiff Catherine Alexander filed this action against Defendants Take-Two Interactive
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`Software, Inc., 2K Games, Inc., 2K Sports Inc., World Wrestling Entertainment, Inc., Visual
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`Concepts Entertainment, Yuke’s Co., Ltd., and Yukes LA, Inc., asserting copyright infringement
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`pursuant to 17 U.S.C. § 501. The case is now before the Court for consideration of the Motion to
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`Dismiss filed by Defendants 2K Games, 2K Sports, Take-Two, Visual Concepts, Yuke's, and Yuke's
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`LA (Doc. 89) and the Motion to Dismiss filed by Defendant WWE (Doc. 92). Plaintiff filed a
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`Response (Doc. 97). For the following reasons, Defendants’ Motion (Doc. 89) is GRANTED in
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`PART and DENIED in PART and Defendant WWE’s Motion (Doc. 92) is DENIED.
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`Background
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`Plaintiff makes the following relevant allegations in the Complaint: Plaintiff, a professional
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`tattoo artist, is a resident of the State of Illinois. Defendant Take-Two is a major developer,
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`publisher and marketer of interactive entertainment and video games. Defendant WWE is an
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`entertainment company that creates and promotes various forms of entertainment media including
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`video games. Defendants 2K Games and 2K Sports are publishers of video games, and Defendants
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`Visual Concepts, Yuke’s, and Yukes LA are developers of video games.
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`Plaintiff alleges that she owns a federal copyright for tattoos she inked on the body of WWE
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`superstar Randy Orton between 2003 and 2008. She inked an upper back tribal tattoo on Orton in
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`2003, several tribal tattoos on Orton’s forearms and upper arms in 2003, and sleeve tattoos on
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`Orton’s arms in 2008, consisting of a Bible verse design, dove, a rose, and skulls.
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`In 2009, Plaintiff contacted WWE about the reproduction of Orton’s tattoos on various items
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`for sale by the WWE. In response, WWE offered Plaintiff $450 for extensive rights to use and
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`reproduce the tattoo designs on WWE products. Plaintiff declined WWE’s offer and told WWE that
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`she did not grant any permission for them to reproduce her designs. Plaintiff submitted applications
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`to register copyrights on each of the tattoos in March 2015.
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`Since October 2015, Defendants have released and promoted wrestling video games titled
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`WWE 2K16, WWE 2K17 and WWE 2K18 (the “video games”), which have been available for sale
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`throughout the United States. Orton is prominently featured in the videogames, including his tattoos.
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`Plaintiff alleges that the videogames constitute willful copyright infringement because the games
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`include clear, detailed and unauthorized reproductions of the tattoos she inked on Orton.
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`Discussion
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`Defendants Yuke’s, Yuke’s LA, and WWE Motions to Dismiss under 12(b)(2)
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`Defendants first argue that the Yuke’s Defendants and WWE must be dismissed for lack of
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`personal jurisdiction. F.R.C.P.12(b)(2). Yuke’s is a Japanese corporation and Yukes LA is a
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`California corporation with its primary place of business in California. The Yuke’s Defendants are
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`not incorporated or headquartered in Illinois, nor do they have knowledge of sales or distribution of
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`WWE 2K video games to Illinois. WWE is a Delaware corporation with its principle place of
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`business in Connecticut. WWE operates a website accessible throughout the United States that offers
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`various WWE branded products for sale, including the WWE 2K video games.
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`A Complaint need not include facts alleging personal jurisdiction. But, once the defendant
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`moves to dismiss the Complaint under this Rule 12(b)(2), the plaintiff must demonstrate that personal
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`jurisdiction exists. Purdue Research Found. v. Sanofi-Synthelabo, S.A., 338 F.3d 773, 782 (7th Cir.
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`2003). If the court rules on the motion without a hearing, the plaintiff need only establish a “prima
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`facie case of personal jurisdiction.” Id. The court should read the entire Complaint liberally and
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`draw every inference in the plaintiff’s favor. Cent. States, Se. & Sw. Areas Pension Fund v.
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`Phencorp Reins. Co., 440 F.3d 870, 878 (7th Cir. 2006). The court may also consider affidavits from
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`both parties when determining whether a plaintiff has met its burden. Felland v. Clifton, 682 F.3d
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`665, 672 (7th Cir. 2012). While affidavits trump the pleadings in this context, all facts disputed in
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`the affidavits will be resolved in the plaintiff’s favor. Purdue Research Found., 338 F.3d at 782.
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`A federal court sitting in diversity looks to the personal-jurisdiction laws of the state in which
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`the court sits to determine whether it has jurisdiction. Hyatt, 302 F.3d at 713 (citing Dehmlow v.
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`Austin Fireworks, 963 F.2d 941, 945 (7th Cir. 1992)). Under Illinois law, the state long-arm statute
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`permits personal jurisdiction over a party to the extent allowed under the due process provisions of
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`the Illinois and United States constitutions. 735 ILCS 5/2-209(c); Hyatt, 302 F.3d at 714. There is
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`no operative difference between Illinois and federal due process limits on the exercise of personal
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`jurisdiction. Hyatt at 715.
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`Federal due process permits two categories of personal jurisdiction – general and specific.
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`Specific jurisdiction arises out of a defendant’s suit-related contacts with a state and requires two
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`conditions: (1) the defendant must purposefully direct his activities at the forum state; and (2) the
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`defendant's forum-related activities must be the cause of the plaintiff’s injury. Tamburo v. Dworkin,
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`601 F.3d 693, 702 (7th Cir. 2010) (citing Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472
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`(1985)). With respect to intentional torts, the court must look to three factors: there must be “(1)
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`intentional conduct (or ‘intentional and allegedly tortious’ conduct); (2) expressly aimed at the forum
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`state; (3) with the defendant's knowledge that the effects would be felt—that is, the plaintiff would be
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`injured—in the forum state.” Id at 703; see also Felland v. Clifton, 682 F.3d 665, 674–75 (7th Cir.
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`2012) (reiterating the Tamburo standard). At the pleading stage, plaintiffs are not required to prove
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`that the defendant has actually committed the tort in order to proceed with the case – allegations in
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`the Complaint will suffice. Id. at 676.
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`In support of its Motion, WWE submitted an affidavit from Edward M. Kiang, WWE’s VP of
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`Interactive Media Licensing (Doc. 92-1). According to Kiang, WWE does not distribute or sell the
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`WWE 2K games though retail outlets. However, WWE does purchase limited quantities of the
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`games at wholesale and offers them for sale through its website and has held 38 promotional events
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`in Illinois featuring Orton between 2016 and 2018. Plaintiff asserts that personal jurisdiction as to
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`WWE is proper in Illinois primarily because she contacted WWE in 2009 about its infringing
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`activities. She argues her communications with WWE coupled with WWE holding live promotional
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`events and selling the video games in question to residents in Illinois establish that WWE expressly
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`directed its activities toward Illinois. The Court agrees.
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`Copyright infringement is an intentional tort. See Bucklew v. Hawkins, Ash, Baptie & Co.,
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`LLP, and HAB, Inc., 329 F.3d 923, 931 (7th Cir. 2003). As to whether WWE expressly aimed its
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`activities at Illinois, WWE concedes that it has promoted live shows in the state, including 38 live
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`promotional events featuring Randy Orton in the past 3 years. Additionally, it directs television
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`programming to Illinois and its website is accessible in the state. As such, the Court finds that WWE
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`expressly aimed its activities at Illinois.
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`With respect to the third factor, while Kiang denies knowledge that Plaintiff lives in Illinois,
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`Plaintiff alleges that someone at WWE knew or should have known she lives in Illinois and would
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`therefore feel the effects of the copyright infringement in Illinois. Plaintiff’s contacts with WWE
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`occurred in 2009 – five years prior to Kiang becoming VP. At that time, Plaintiff informed WWE
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`that she inked the tattoos on Orton and someone from WWE offered her $450.00 for her work.
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`Kiang’s affidavit does not dispute these allegations. Whether he was aware of these alleged facts
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`five years later is immaterial.
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`Drawing all inferences and factual disputes in Plaintiff’s favor, the Court finds that Plaintiff
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`has met her and that this Court has personal jurisdiction over WWE. Accordingly, WWE’s Motion
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`to Dismiss under FRCP 12(b)(2) (Doc. 92) is DENIED.
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`As to the Yuke’s Defendants, Plaintiff contends that Yuke’s has purposefully availed itself of
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`the United States’ market by developing, promoting, distributing, and marketing the infringing
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`games. However, Plaintiff’s allegations are insufficient to establish that these defendants have
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`minimum contacts with Illinois, that they purposefully availed themselves of the benefits and
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`protections of Illinois law, or that there is a real relationship between Illinois and the Yuke’s
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`Defendants. Nor has Plaintiff established that Yuke’s, a Japanese corporation, has the necessary
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`continuous and systematic general business contacts such that it is essentially “at home” in the
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`United States for purposes of jurisdiction under FRCP 4(k)(2). See Purdue Research Found, 338
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`F.3d at 787 (These contacts must be so extensive to be tantamount to [a defendant] being
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`constructively present in the state to such a degree that it would be fundamentally fair to require it to
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`answer in a [forum] court in any litigation arising out of any transaction or occurrence taking place
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`anywhere in the world). Accordingly, this Court does not have personal jurisdiction over the Yuke’s
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`Defendants and their Motion to Dismiss under FRCP 12(b)(2) (Doc. 89) is GRANTED.
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`Defendants’ Motion to Dismiss Under FRCP 12(b)(6)
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`Defendant also argue that Plaintiff fails to state a claim for copyright infringement under
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`because (1) she does not hold certificates of registration for the tattoos which is a prerequisite to
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`filing suit, and (2) the Amended Complaint is impermissibly vague.
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`Section 411(a) of the Copyright Act provides that “no civil action for infringement of the
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`copyright in any United States work shall be instituted until ... registration of the copyright claim has
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`been made in accordance with” Title 17 of the United States Code. 17 U.S.C. § 411. Relatedly,
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`“registration ... has been made within the meaning of 17 U.S.C. § 411(a) not when an application for
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`registration is filed, but when the Register has registered a copyright after examining a properly filed
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`application.” Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 892
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`(2019). Registration is akin to an administrative exhaustion requirement that the owner must satisfy
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`before suing to enforce ownership rights. Id. at 887.
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`Here, five of Plaintiff’s tattoos were registered on March 13, 2018, prior to Plaintiff filing
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`this lawsuit (see Docs. 112-1 to 112-5). The United States Copyright Office Register rejected
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`Plaintiff’s application for the Bible verse tattoo on the basis it lacked the authorship necessary to
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`support a copyright claim (Doc. 112-6). Accordingly, because Plaintiff does not have proper
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`registration for the Bible verse tattoo, Defendant’s Motion to Dismiss is GRANTED as to the Bible
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`tattoo and DENIED as to the remaining five tattoos.
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`Defendants also maintain that Plaintiff’s Amended Complaint is vague because it fails to
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`sufficiently state the works Defendants allegedly infringed, fails to state the allegedly infringing
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`conduct of each Defendant, and fails to plead the necessary elements for direct, contributory and
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`vicarious infringement. To survive a Rule 12(b)(6) motion, a plaintiff need only “nudge[ ] [her]
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`claims across the line from conceivable to plausible.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570,
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`(2007). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court
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`to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v.
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`Iqbal, 556 U.S. 662, 678 (2009).
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`To establish copyright infringement, a plaintiff must prove two elements: (1) ownership of a
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`valid copyright, and (2) copying of constituent elements of the work that are original.” Design
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`Basics, LLC v. Lexington Homes, Inc., 858 F.3d 1093, 1099 (7th Cir. 2017). Liability for
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`contributory infringement will be imposed when a defendant, with knowledge of the infringing
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`activity, induces, causes or materially contributes to the infringing conduct of another. Myers v.
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`Harold, 279 F. Supp. 3d 778, 796 (N.D. Ill. 2017). To prevail on a claim for vicarious copyright
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`infringement, a plaintiff must establish that “the defendant has (1) the right and ability to supervise
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`the infringing conduct and (2) a direct financial interest in the infringing activity.” GC2 Inc. v. Int'l
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`Game Tech. PLC, 255 F. Supp. 3d 812, 824 (N.D. Ill. 2017) (quoting Perfect 10, Inc. v. Giganews,
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`Inc., 847 F.3d 657, 673 (9th Cir. 2017)). A defendant can be liable for vicarious copyright
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`infringement even without knowledge of the infringement. Metro-Goldwyn-Mayer Studios, 545 U.S.
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`at 931 n.9. Nothing prevents Plaintiff from pleading alternative or even inconsistent direct and
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`vicarious copyright infringement claims. See GC2 Inc., 255 F. Supp. 3d at 826.
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`Plaintiff’s allegations are sufficient to meet FRCP 8's liberal pleading requirements. Plaintiff
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`holds certificates of registration for five tattoos and she alleges her tattoos are prominently displayed
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`on Orton in the video games. She describes the original tattoos allegedly infringed upon. She also
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`alleges that each defendant had either a developmental, marketing or promotional role in the bringing
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`the infringing video games to market.
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`(Doc. 76, ¶¶ 41-43; 16-20). Dismissal for failure to state a
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`claim is proper only if the plaintiff can prove no set of facts in support of her claims which would
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`entitle her to relief. There are sufficient factual allegations in Plaintiff’s Amended Complaint to
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`allow her claims to proceed against the defendants as to the remaining five registered tattoos.
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`Conclusion
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`For the forgoing reasons, Defendants Take-Two Interactive Software, Inc., 2K Games, Inc.,
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`2K Sports Inc., Visual Concepts Entertainment, Yuke’s Co., Ltd., and Yukes LA, Inc. Motion to
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`Dismiss pursuant to FRCP 12(b)(2) and FRCP 12(b)(6) is GRANTED in part and DENIED in
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`part. Defendants Yuke’s Co., Ltd. and Yukes LA, Inc. are DISMISSED for lack of personal
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`jurisdiction and Plaintiff’s copyright claim as to the Bible tattoo is DISMISSED with prejudice for
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`failure to obtain a certificate of registration. The remainder of the Motion is DENIED. Defendant
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`World Wrestling Entertainment, Inc.’s Motion under FRCP 12(b)(2) is DENIED.
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`IT IS SO ORDERED.
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`DATED: March 18, 2020
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`STACI M. YANDLE
`United States District Judge
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