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'NBA 2K' Makers Say Tattoo Co. Not Entitled To Damages

The makers of basketball video game series "NBA 2K" told a New York federal court Friday that a tattoo licensing company suing over depictions of NBA stars' tattoos in their games is not entitled to statutory damages because the works were featured in games before they were registered.

In a reply supporting their motion to dismiss claims for statutory damages and attorneys’ fees, 2K Games Inc. and Take-Two Interactive Software Inc. said that though the suit being brought by Solid Oak Sketches centers on “NBA 2K16,” the same works Solid Oak claims are being infringed were also depicted in the 2014 and 2015 versions of the game, which were released prior to those works' copyright registrations. The video game companies said Second Circuit precedent bars statutory damages for infringement if the same works were infringed by the defendant before registration.

“Where the same work has allegedly been infringed by the same defendant prior to the date of registration as after registration — which is clearly the case here, as Solid Oak admits that the tattoos appeared in ‘NBA 2K14’ and ‘NBA 2K15’ — binding Second Circuit precedent dictates that statutory damages and attorneys’ fees are unavailable,” the reply 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, claiming infringement on ink sported by players LeBron James, Kenyon Martin and Eric Bledsoe. Solid Oak, which licensed the designs in June 2015, around the time when copyright registrations for the works were secured, claims the game-makers owe $150,000 for each instance of infringement. It is also seeking injunctive relief to prevent further use of the tattoos in the games.

Solid Oak claims it is entitled to statutory damages and attorneys’ fees because the newest version of the game, released in September, constitutes a new work and because it came out after 2K and Take-Two were warned that the tattoos were now registered, making the infringement willful.

In their reply, the game-makers argued that willfulness plays no role in determining whether statutory damages are available, since the same works were allegedly infringed before the copyright registrations were issued. They also dismissed the argument that the game was a new work, claiming it is simply part of an ongoing series.

“Even if the degree of similarity between ‘NBA 2K16’ and the prior versions of ‘NBA 2K’ mattered (it does not), ‘NBA 2K16’ is just the latest version of the ‘NBA 2K’ series, depicting the NBA players and their tattoos the same way prior iterations of the video game had done,” the reply said.

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