In the News Law360

Tattoo Co. Loses Some Damages Claims Over 'NBA 2K' Games

A New York federal judge on Monday dismissed a tattoo licensing company’s bid to recover statutory damages and attorneys’ fees in a copyright infringement suit against the makers of the “NBA 2K” video games over their depictions of National Basketball Association stars' tattoos.

U.S. District Judge Laura Taylor Swain agreed with 2K Games Inc. and Take-Two Interactive Software Inc. that Solid Oak Sketches LLC’s claims were invalid because the tattoo designs in its “NBA 2K16” release were not registered until two years after the first allegedly infringing game was released, thus sparing the game makers as much as $150,000 per infringement.

“In order to obtain statutory damages and attorneys’ fees, a plaintiff must have registered its copyright prior to the alleged infringement,” Judge Swain said, citing a 2011 Southern District of New York decision in Argentto Systems v. Subin Associates. “Even where the alleged infringement begins before registration and continues after registration, statutory damages and attorney fees are still unavailable.”

Solid Oak still can pursue actual damages over Take-Two's incorporation into “NBA 2K16” of eight tattoo designs that the tattoo company had licensed from a variety of different artists. The suit’s initial pretrial conference remains scheduled for Nov. 4.

In a May 27 reply supporting their motion to dismiss claims for statutory damages and attorneys’ fees, 2K Games and Take-Two Interactive said that although 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 before their copyright registrations.

The game companies said Second Circuit precedent bars statutory damages for infringement if the same works were infringed by the defendant before registration.

Solid Oak filed the suit against 2K and Take-Two in February over their games’ realistic depiction of players' tattoos, claiming infringement on ink sported by players LeBron James, Kenyon Martin and Eric Bledsoe.

Solid Oak claimed it was 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.

Solid Oak counsel Darren A. Heitner told Law360 on Tuesday that his client now looks forward to moving the case along.

“There was a strong likelihood that we would have chosen actual damages instead of statutory damages as a method of relief,” Heitner said.

Attorneys for 2K and Take-Two didn’t respond immediately to a request for comment.

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

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

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