On August 1, 2016 a New York federal court dismissed all statutory damages and attorney’s fees claims against Solid Oak, a tattoo company, in their copyright infringement suit against Take-Two Interactive. Previously, Solid Oak had sued the makers of the NBA 2K video game over the use of their tattoos on NBA players in the video game. In the video game, Ink on players including LeBron James, Kenyon Martin, and Eric Bledsoe are realistically depicted, even though Solid Oak are technically the copyright holders of that art.
“In order to obtain statutory damages and attorney’s fees, a plaintiff must have registered its copyright prior to the alleged infringement,” the New York federal judge said in her order. Thus, because Solid Oak Sketches LLC registered the tattoo designs approximately two years after the first game with their tattoos depicted (2014), statutory damages and attorney fees are unavailable. In their brief, Solid Oak claimed that the newest version of the game, NBA 2K17, was released in September of 2016 which was after the tattoo copyright registration and would make available statutory damages and attorney’s fees. However, the New York federal court agreed with Take-Two Interactive Software Inc.’s brief that if infringement exists it began in the 2014 and 2015 versions of the game. As a result, the judge took nearly $150,000 per infringement off the table holding that the registration clock starts upon initial infringement. The Second Circuit has long had precedent that statutory damages and attorney’s fees are barred when the works were infringed before registration.
Solid Oak can still pursue actual damages over Take-Two’s alleged infringement of eight tattoo designs that are depicted in the game which a number of their artists had registered as copyright protected.