4:11pm PT by Ashley Cullins
Failure to Register LeBron James' Tattoo as Copyright Proves Costly
In an age where video games are increasingly indistinguishable from the real-life HD sporting events they recreate, attention to detail is vital — and a lapse of it may have cost a tattoo designer millions.
Animators behind the NBA 2K video game series did such a good job bringing to life basketball stars like LeBron James that they were sued for copyright infringement for recreating his tattoos.
Solid Oak Sketches sued 2K Games and Take-Two Interactive Software in February, claiming it owns the copyrights to tattoos emblazoned on several NBA stars including James, Kobe Bryant and Eric Bledsoe.
The tattoo designers were seeking actual damages in an amount to be determined at trial, or statutory damages and attorneys' fees — but a New York federal judge on Tuesday ruled out the latter.
"[I]n order to obtain statutory damages and attorneys' fees, a plaintiff must have registered its copyright prior to the alleged infringement," U.S. District Judge Laura Taylor Swain writes.
In this case, Swain finds, defendants' alleged infringement began with NBA 2K14 in 2013 and the tattoo designs weren't registered with the U.S. Copyright Office until 2015.
Solid Oak argued that 2K16 was released after the registration and constitutes a separate instance of infringement, but Swain disagrees.
"[W]hen the same defendant infringes on the same protected work in the same manner as it did prior to the work's registration, the post-registration infringement constitutes the continuation of a series of ongoing infringements," she writes. "The pre- and post-registration versions of the 2K series are the same basketball simulation video game; the only material differences are updates to the title and visual and graphical improvements."
The tattoo artists also argued that the 2K16 infringement was willful because it happened after defendants were put on notice of the copyright and therefore should be considered separate infringement.
This argument fails, Swain says, because willfulness is not relevant to analysis of Section 412 of the Copyright Act, which imposes a bright-line rule barring statutory damages and fees if the first act of infringement happened before the work was registered.
Statutory damages for the eight tattoos at issue could have totaled $1.2 million. In granting Take-Two's motion, Swain has given Solid Oak's legal team a novel challenge of proving how, and at what costs, the tattoo artists were damaged by the depiction of their work in NBA 2K16.
So far it seems Solid Oak intends to use a 2012 lawsuit as a benchmark for tattoo value. In that case, a tattoo artist sued over his "Lion Tattoo" on MMA fighter Carlos Condit being shown in the game UFC Undisputed. That artist was awarded $22,500.
In a demand letter to Take-Two sent before this lawsuit was filed, Solid Oak multiplied that figure by the eight tattoos at issue here and determined a value of $572,000 — but then quadrupled the value of James' tattoos because they were on the cover of the game, bringing their estimate to $819,500.
Solid Oak’s attorney Darren Heitner sent The Hollywood Reporter a statement following the decision: “We are more than happy to proceed with requesting relief in the form of actual damages and look forward to moving this case along.”
A pretrial conference is currently set for Nov. 4. Read Swain's full order below.