IP Law Daily, COPYRIGHT—N.D. Ohio: Maker of ‘NBA 2K’ video game prevails on four of six claims brought by tattoo artist, (Jan 29, 2024)

By Donielle Tigay Stutland, J.D.

Four of six claims related to tattoo copyrights depicted on NBA players were dismissed because the designs included an “appreciable amount” of public domain material or material owned by a third party.

A federal court in Ohio has granted partial summary judgment of noninfringement in favor of a video game manufacturer and distributor accused of infringing copyrighted works a tattoo artist created on NBA players who were depicted in the “NBA 2K” video game. After receiving an opinion from the Copyright Register, the court dismissed claims related to four tattoos on players featured the video game, concluding that copyright registrations for these tattoos were invalid and unenforceable because the designs included an “appreciable amount” of public domain material or material owned by a third party. The claims related to the remaining two tattoos used in the video games will proceed to trial (Hayden v. 2K Games, Inc., January 24, 2024, Boyko, C.).

Background. The plaintiff, James Hayden, is a successful tattoo artist who has tattooed many former and current National Basketball Association (NBA) stars including LeBron James, Shaquille O’Neal, and Kyrie Irving. Take-Two is a worldwide developer, publisher and marketer of interactive entertainment and video games. Take-Two’s video games include the basketball simulation series NBA 2K. The NBA 2K series is released annually and depicts players from the NBA, some of whom are Hayden’s clients, in its interactive simulations. Hayden’s claims arose from the fact that he was the tattoo artist who inked tattoos on various individuals depicted in the NBA 2K series bearing those tattoos. Hayden alleged that he obtained copyright registrations for six tattoos inked on Danny Green, LeBron James, and Tristan Thompson. Hayden also alleged that he inked a variety of other tattoos on NBA players that were featured in the NBA 2K series for which he had not obtained registrations.

The tattoo artist filed a copyright infringement lawsuit against the game maker as well as its distributor in 2017. The video game maker and distributor moved to dismiss the unjust enrichment and declaratory judgment claims as well as the request for statutory damages or attorney fees on the copyright claims.

In September 2022, the court granted summary judgment in favor of the tattoo artist; however his motion was granted “only to the extent that he owns presumptively valid, protectable copyrights in the tattoos pursuant to 17 U.S.C. § 410.” The game maker and distributor now asserted the affirmative defense of fraud on the Copyright Office in their Answer to the Fourth Amended Complaint and alleged that there were inaccuracies in four of the tattoo artist’s asserted tattoo registrations.

Referral to Register of Copyrights. In analyzing the validity of the copyrights for the tattoos, the court noted that the court was duty-bound to refer questions to the Register of Copyrights pursuant to 17 U.S.C. § 411(b)(2). Specifically, the questions were:

1. Would the Register of Copyrights have refused to register the tattoo entitled “Lion” (Reg. No. VAu 1-271-044) if the Register of Copyrights had known that the application was based upon or incorporated preexisting material from the trademarked logo of the Venetian Resort (U.S. Trademark Reg. No. 3,429,884)?

2. Would the Register of Copyrights have refused to register the tattoo entitled “Brother’s Keeper T.T.” (Reg. No. VAu 1-292-453) if the Register of Copyrights had known that the work was based upon or incorporated pre-existing materials from the Sistine Chapel and the Bible?

3. Would the Register of Copyrights have refused to register the tattoo entitled “Fire D.G.” (Reg. No. VAu 1-287-552) if the Register of Copyrights had known that the work was derivative of, or incorporated pre-existing material from another author who was not identified and which depicted a basketball player?

4. Would the Register of Copyrights have refused to register the tattoo entitled “Scroll D.G.” (Reg. No. 1-287-545) if the Register of Copyrights had known that the work was derivative of, or incorporated pre-existing material from another author who was not identified and which depicted a scroll?

The Register provided the court the following response, “the Office would not have registered the tattoo designs if it had known that the designs included an ‘appreciable amount’ of public domain material or material owned by a third party that the applicant did not exclude in his application for registration.”

Invalid Registrations. The court noted that, the parties did not dispute that “the original Scroll and Fire registrations both incorporated another’s work, which was not disclosed in the application.” The court also indicated that testimony evidenced the tattoo artist’s understanding of includable versus excludable material. The court concluded that he Scroll and Fire registrations, with the effective date of August 11, 2017, contained inaccuracies that the plaintiff knew were inaccurate; and which the Register of Copyrights would have refused as containing appreciable, excludable, uncopyrightable material.

Looking at the Lion and Brother’s Keeper tattoos, the court also concluded that their registrations were flawed. Testimony reflected that the tattoo artist knew that the playing card copied for Lion tattoo and the hand design in the Brother’s Keeper tattoo were not his own original creations. The court rejected assertions of lack of factual and/or legal knowledge of the inaccuracies in his copyright registrations by the tattoo artist, based on the tattoo’s artists own testimony and representations.

The court concluded the registrations for all four challenged tattoos (Scroll D.G., Fire D.G., Lion, and Brothers Keeper T.T.) were invalid and unenforceable and granted partial summary judgment in favor of the video game maker and distributor. The case is set for trial with respect to the final two tattoos.

The Case is No. 1:17-cv-02635-CAB.

Attorneys: Brandon Earl Brown (Calfee, Halter, & Griswold) for James Hayden. Christopher T. Ilardi (Kirkland & Ellis LLP) and Matthew J. Cavanagh (McDonald Hopkins LLC) for 2K Games, Inc. and Take-Two Interactive Software, Inc.

Companies: 2K Games, Inc.; Take-Two Interactive Software, Inc.

Cases: Copyright TechnologyInternet NewYorkNews