Solid Oak Sketches LLC, a company that owns the rights to tattoos on various NBA players, sued 2K Games Inc. and Take-Two Interactive Software Inc., makers of the popular basketball simulation video game series “NBA 2K,” in February 2016. Solid Oak alleged that defendants depicted eight tattoo designs on different NBA players in the video game “NBA 2K16” without authorization. In the alternative to actual damages, Solid Oak sought statutory damages and attorneys’ fees. The defendants moved to dismiss Solid Oak’s claim for statutory damages and attorneys’ fees.
The district court granted the motion and held that Solid Oak was precluded from recovering statutory damages and attorneys’ fees because the allegedly infringed tattoo designs were not registered with the U.S. Copyright Office until 2015, two years after the first allegedly infringing game, “NBA 2K14,” was released. Pursuant to Section 412 of the U.S. Copyright Act, in order to obtain statutory damages and attorneys’ fees, a plaintiff must have registered its copyright prior to the alleged infringement. The court rejected Solid Oak’s argument that it was nonetheless entitled to statutory damages and attorneys’ fees because the “2K16” version of the game was released after the copyright registration, holding that statutory damages and attorneys’ fees are precluded where “the first act of infringement in a series of ongoing infringements occurred prior to the work’s copyright registration.”
The court distinguished the Second Circuit’s 2007 decision in Troll Co. v. Uneeda Doll Co., which held that a post-registration act of infringement is not “deemed to have commenced before registration if the infringing activity ceased for an appreciable period of time.” The district court explained that in that case, the infringing activity had ceased for nearly a decade, whereas here, there was only a one-year gap between the prior iteration of the game, “2K15,” and the “2K16” version that was the subject of the suit. The court held that this one-year gap did not constitute “an appreciable period of time.” The district court further rejected Solid Oak’s argument that updates to “2K16” rendered it a separate infringing work, explaining that “when the same defendant infringes on the same protected work in the same manner as it did prior to the work’s registration, the post-registration infringement constitutes the continuation of a series of ongoing infringements.”