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'NBA 2K' Makers Say In-Game Tattoos Predate IP Registration

The makers of professional basketball video game series "NBA 2K" asked a New York federal court Tuesday to dismiss the damages claims from a tattoo licensing company's suit over depictions of NBA stars' tattoos in the games, saying the alleged infringement predates the registration of the designs.

Claiming the tattoos of players LeBron James, Kenyon Martin and Eric Bledsoe were depicted in the games years before Solid Oak Sketches LLC entered into licensing agreements with the designs’ respective artists, 2K Games Inc. and Take-Two Interactive Software Inc. say the tattoos have been in continuous use since an edition of the game published in 2013, beating the clock that began ticking three months before Solid Oak registered the designs last June.

"It is clear that only acts of infringement involving a different work or a different kind of use may give rise to statutory damages and attorneys' fees, because the Second Circuit has held that statutory damages and attorneys' fees are unavailable for 'all of the defendant's infringements of a work if one of those infringements commenced prior to registration,'" the game makers said.

Solid Oak filed suit against 2K and Take-Two in February over their realistic depiction of players' tattoos in recent iterations of the "NBA 2K" series. Solid Oak, which licensed the designs inked on James, Martin and Bledsoe in June 2015, claims the game makers owe $150,000 for each instance of infringement dating back to 2013, when the tattoos were first reproduced in-game.

But the game makers say they owe no such thing, arguing this case is similar to a 2006 spat in the Southern District of New York over the unauthorized use of an orchestral composition in a television program. In that case. In that case, the court ruled a copyright holder could not pursue damages, saying a version of the program that aired before the composition was registered and another "newly configured" version that aired after were one continuous infringement and therefore did not trigger statutory damages.

"The court held that statutory damages and attorneys' fees were unavailable even though the post-registration infringement was a different, 'new program,' because it was part of 'a series of ongoing discrete infringements,'" the game makers said.

The memorandum filed Tuesday does not touch on Solid Oak's push for an injunction barring 2K and Take-Two from using the designs in future versions of the game. The artists who inked the tattoos on James, Martin and Bledsoe are not parties to the suit.

Solid Oak also names Take-Two subsidiary Visual Concepts Inc. A previous version of the complaint names Visual Concepts LLC, which was not the correct company, according to court documents.

Shortly after the case was first filed in February, IP watchers lauded the novel legal concept behind the case but said it's likely to fail, telling Law360 a win for Solid Oak would allow a tattoo artist to control the portrayal of a person on whom they ink their work.

Attorneys for Solid Oak, 2K and Take-Two declined comment Tuesday.

Take-Two and 2K are represented by Dale M. Cendali, Joshua L. Simmons and Emma Raviv of Kirkland & Ellis LLP.

Solid Oak is represented by Darren A. Heitner of Heitner Legal PLLC and Matthew M. Spritz.

The case is Solid Oak Sketches LLC v. Visual Concepts Inc. et al., case number 1:16-cv-00724, in the U.S. District Court for the Southern District of New York.