Tattoo Infringement Case Against NBA 2K Game Publisher Shows Misunderstanding of Applicability of Statutory Damages

This isn’t just another tattoo-copyright infringement case.  This case raises an important lesson for all copyright claimants.

The backstory: Solid Oak is a licensing firm that represents the go to tattoo artists for NBA royalty, including LeBron James.  Solid Oak filed a lawsuit against Take-Two Interactive Software, the game publisher behind the popular “NBA 2K” basketball video game.  The lawsuit alleges that Take-Two  infringes the copyrights in six tattoos appearing on LeBron and other NBA players by depicting those players – tattoos and all – in the video game.   Early commentators on the case questioned the validity of Solid Oak’s case and commented on the applicability of fair use and other defenses.  Interestingly, Take-Two’s motion to dismiss does not focus on the merits of Solid Oak’s case, but rather focuses on Solid Oak’s damages claim; the motion attacks Solid Oak’s claim that it is entitled to statutory damages and attorney fees.

Section 412 of the Copyright Act addresses how and where an award of statutory damages and attorney fees are applicable. The section provides as follows:

In any action under this title…. no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for….any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

This means that where a work has been published, a copyright owner must have filed an application to register the work prior to an act of infringement or, if infringement occurs after publication,   within three months of its first publication in order to avail itself of statutory damages and attorney fees.   Where a work is infringed, if registration occurs later than three months after publication , the plaintiff may not collect statutory damages or attorney fees.

In the instant case, in its motion to dismiss Solid Oak’s damages and attorney fee claims, Take-Two claims that the alleged infringement occurred before the June/July 2015 registration dates. Take-Two notes that it depicted the NBA players and their tattoos in its NBA video games since at least 2013.   In opposing the motion, Solid Oak argues that its claims for statutory damages and attorney fees are properly pleaded since it filed its infringement claim within the three-year limitation period.  Solid Oak also contends that the infringement which occurred in Take-Two’s NBA 2K16 is a separate and discrete infringement.  Solid Oak alleges “Because Plaintiff is only suing for the wrong of the Defendants through their creation and release of the NBA 2K16 video game, well within the time afforded under the Copyright Act, and not for any earlier infringing acts, it is thus entirely proper for Plaintiff to seek statutory damages and/or attorneys’ fees based on Defendants’ infringement of properly registered copyrights”.

What Take-Two didn’t raise in its motion is that Solid Oak would still not be entitled to statutory damages or attorney fees because the infringement occurred after publication and registration was not made within 3 months of first publication.   The Copyright registration certificates attached to Solid Oak’s Complaint lists the date of first publication for each work.  These dates are years prior to the June/July 2015 registration dates.  Because registration was not made before infringement or within three months after the dates of first publication of each tattoo (as required by Section 412 of the Copyright Act), Solid Oak is clearly not entitled to either statutory damages or attorney fees.

The lesson to be learned here is that statutory damages and attorney fees are not available just because they are asked for; they must be earned by the timely filing of a registration certificate.  The failure to timely file (before infringement or if infringed, within three months of first publication) prevents a claimant from seeking statutory damages and attorney fees which may (as is likely the case here) strip a case of the majority of its value.