IP Law Daily, COPYRIGHT—E.D. La.: Professional wrestler’s face mask could infringe copyrighted work, (May 19, 2023)

By Kevin M. Finson, J.D.

A jury could find the modified mask used by wrestler Luchasaurus was similar to the plaintiff’s viper mask.

The creator of a copyrighted mask called the “Viper Silicon Mask,” stated copyright infringement and state law claims against professional wrestler Austin Matelson and All Elite Wrestling for incorporating the design of the copyrighted mask in masks used by Matelson in his wrestling costume and selling merchandise incorporating the mask design, the U.S. District Court in New Orleans has held. The designs were clearly similar enough that a reasonable jury could conceivably find infringement (Composite Effects, LLC v. All Elite Wrestling, LLC, May 16, 2023, Fallon, E.).

Composite Effects, LLC (Composite) was the owner of a registered copyright in a mask described as the “Viper Silicon Mask” (the copyrighted work). Austin Matelson, a wrestler known as Luchasaurus, had purchased the mask from Composite for use in his wrestling costume. Composite subsequently created further modified versions of the copyrighted work for Matelson by adding horns and making some other changes such as changing the mask’s color and the shape of the mouth hole (the “Luchasaurus Masks”). Matelson later signed with All Elite Wrestling, LLC (All Elite) to wrestle professionally. Composite contacted Matelson and All Elite in an attempt to enter a licensing agreement for any merchandising including their copyrighted mask, but received no response, and Matelson and All Elite proceeded to sell tens of thousands of goods incorporating the design.

Composite brought suit against Matelson and All Elite for copyright infringement, violation of the Louisiana Unfair Trade Practices Act, and breach of contract. Matelson moved to dismiss all counts, and All Elite adopted Matelson’s motion.

Copyright infringement. Matelson argued that Composite failed to allege the infringing works were substantially similar to the copyrighted work. The court reviewed the photographs provided with the complaint and held that the level of copying was highly fact-sensitive. The designs shared an intricate scaling pattern which Composite argued was the focus of the design, but also differed in the addition of horns and cutting of the mouth hole. The motion to dismiss was denied because the court could not say that no reasonable jury could find infringement.

State law unfair trade practices. Matelson argued that the Louisiana unfair trade practice statute claim was preempted by the Copyright Act. The court found that the Louisiana statute involved at least one additional element, namely that the defendants had engaged in deceitful and unethical conduct, and in accordance with controlling Fifth Circuit precedent this claim was not preempted, so the court denied the motion to dismiss.

Breach of contract. Matelson argued that there was no contract between Composite and either defendant, or in the alternative that any breach of contract claim was preempted by the Copyright Act. The court found that Composite had plausibly alleged that Matelson had purchased the original mask from them, and there was no dispute on that point, so Matelson was bound by the terms and conditions included in that purchase, which included a prohibition on illicit sale and manufacture of merchandise based on Composite’s designs. The court denied the motion to dismiss.

The Case is No. 2:22-cv-05351-EEF-MBN.

Attorneys: Robert Devin Ricci (Kean Miller LLP) for Composite Effects, LLC. Brad Elliot Harrigan (Tolar Harrigan & Morris LLC) for All Elite Wrestling LLC. Brent A. Talbot (Chaffe McCall, LLP) for Austin Matelson.

Companies: Composite Effects, LLC; All Elite Wrestling LLC

Cases: Copyright LouisianaNews