Statutory Copyright Damages Not Available in Lebron James Tattoo Lawsuit

San Diego – Tattoo artists seeking damages over the use of NBA player tattoos in a video game, were dealt a blow recently when a federal judge dismissed the claim for statutory damages. The tattoo artist company Solid Oak Sketches designed tattoos for several NBA stars and registered the copyright for eight of them in 2015. These tattoos were implemented into player design in video games created by 2K Games and Take-Two Interactive Software, beginning in 2013 with its game NBA 2K14.

Solid Oak Sketches filed a copyright lawsuit in February 2016, claiming unauthorized use of the tattoos in the game’s design and advertising. The lawsuit sought actual damages, attorney’s fees and statutory damages (which could be as high as $150,000 per infringement).

The New York federal judge, however, ruled against the claim of statutory damages and attorney’s fees because the plaintiff failed to register the copyright before the date of the first alleged infringement.

Solid Oaks argued that since the game 2K16 released after the copyright filing, it merits a separate case of infringement. However, the judge ruled the cases of infringement occurred by the same defendant on the same work in the same manner, with the only differences between the games being a title change and improved graphics. As a result, the infringement occurring post-registration would be seen as “a continuation of a series of ongoing infringements” rather than a separate infringement case.

The ruling places the burden on Solid Oaks to prove the occurrence and extent of the damages to the company by the use of tattoos in the games. Solid Oaks’ attorney said, “We are more than happy to proceed with requesting relief in the form of actual damages and look forward to moving this case along.”

According to a spokesperson, Take-Two does not comment on legal matters. The company did file counterclaims making several arguments in rebuttal of Solid Oaks’ claims. First, Take-Two claims that the use of the tattoos in the video games qualifies as fair use and de minimis use, negating Solid Oaks’ claim to copyright infringement.

Second, copyright law does not extend as far as Solid Oaks is claiming, saying “indeed, if Solid Oaks were correct, it would mean that anyone appearing in public, on a television program, or in an advertisement would need to license the display of their tattoos. This is not the law and, if it were, it would be an encroachment on basic human rights.”

Third, Take-Two claims that Solid Oaks committed fraud in copyrighting LeBron James’ tattoo. His right bicep tattoo was created by a Solid Oaks artist when James was 16 years old, but other tattoo artists changed and added to the tattoo. The most recent version of the tattoo is what Solid Oaks copyrighted, a version Take-Two is arguing Solid Oaks did not create.