Collecting on Tattoos — Time is Not Your Friend

Jan 20, 2017

By Kelly S. Ryan, of Katten Muchin Rosenman LLP
A New York federal district court granted video game developers’ motion to dismiss claims for statutory damages and attorneys’ fees filed by a small agency that represents tattoo artists. The agency argued the tattoos as depicted on the athletes in a basketball video game were misappropriated over various versions and a number of years. The most significant takeaway is to know that time is not your friend: if you want to protect your work, the earlier copyright registration is obtained, the better.
In 2012, the agency known as Solid Oak Sketches, LLC (“Plaintiff”), entered into Copyright License Agreements (“Agreements”) with the artists who designed the tattoos as used in the NBA 2K video game series (“NBA 2K Series”), as developed by 2K Games, Inc. and Take-Two Interactive Software, Inc. (“Defendants”). These Agreements granted the Plaintiff all rights and permissions to reproduce the designs of the tattoo artists. It was not for another three (3) years before the tattoo designs obtained copyright protection from the U.S. Copyright Office.
In 2013, Defendants released NBA 2K14, where the tattoos first appeared on the various athletes. In 2014, Defendants subsequently released NBA 2K15, an improved version of the same video game with enhanced graphics, clearly depicting the tattoo designs. In 2015, following Plaintiff receiving copyright protection, Defendants released NBA 2K16, which again visually enhanced the graphics improving the details and features of each athlete. Shortly after issued the Certificates of Registration for the tattoos, Plaintiff contacted Defendants to discuss the alleged infringing use in the NBA 2K Series. Defendants continued to use the now-copyrighted tattoos despite having knowledge of the purported disagreement. In 2016, Plaintiffs filed an infringement claim for Defendants continued commercial sales of the video game containing protected designs.
Based on the timeline, the series of events, and the law, Plaintiff cannot collect damages. Under the Copyright Act (17 U.S.C. §412), a plaintiff can only obtain statutory damages and attorneys’ fees if the copyright was registered before the alleged infringement. This unambiguous, clear-cut rule attempts to eliminate the possibility of Plaintiff arguing the infringement halted and commenced once again. For a collection of work where multiple versions are released over time, infringement commences when the first act of infringement occurs. The Certificates of Registration for the tattoo artists’ work were issued in 2015, whereas the alleged infringement first appeared in the NBA 2K Series in 2013.
Plaintiff attempted to argue the infringement was not ongoing and they should receive damages based on Defendants’ release of the NBA 2K Series in 2015. The variations in the versions were minor upgrades to the graphics and not substantial enough to constitute a separate act of infringement. Given the similarities in the collection of work, the infringement began during the first release of the NBA 2K Series.
If Plaintiff were to succeed in this situation, the policy implications would be disastrous. If the bright-line rule were altered to effectively allow individuals to collect later from law-abiding persons, developers would have no motivation to improve their work, hindering creativity. The Defendants released the video game versions, legally using the likeness of various public figures at the time of the initial release. One of the main purposes of the Copyright Act is incentive through creation. Defendants should not be stifled from improving upon legally created work.
The United States District Court for the Southern District of New York granted the Defendants’ motion to dismiss Plaintiff’s claims for damages.


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