Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 1 of 30
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`SOLID OAK SKETCHES, LLC,
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`Plaintiff-
`Counterdefendant,
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`-v-
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`No. 16-CV-724-LTS-SDA
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`2K GAMES, INC. and TAKE-TWO
`INTERACTIVE SOFTWARE, INC.,
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`Defendants-
`Counterclaimants.
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`-------------------------------------------------------x
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`MEMORANDUM OPINION AND ORDER
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`Solid Oak Sketches, LLC (“Solid Oak” or “Plaintiff”), brings this action against
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`Defendants 2K Games, Inc., and Take-Two Interactive Software, Inc. (collectively, “Take Two”
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`or “Defendants”), asserting a claim of copyright infringement pursuant to the Copyright Act of
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`1976, 17 U.S.C. § 101 et seq. (the “Copyright Act”). Following this Court’s granting of
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`Defendants’ motion to dismiss Plaintiff’s claims for statutory damages and attorneys’ fees on
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`August 2, 2016, Plaintiff filed a Second Amended Complaint (“SAC”) on October 24, 2016.
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`(Docket Entry No. 55.) On August 16, 2016, Defendants filed counterclaims for declaratory
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`judgment pursuant to the Copyright Act and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-
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`2202 (“Def. Countercl.”). (Docket Entry No. 47.) The Court denied Plaintiff’s motion to
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`dismiss the counterclaims on May 16, 2017 (docket entry no. 64) and, on March 30, 2018,
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`denied Defendants’ motion for judgment on the pleadings (“March Op.,” docket entry no. 117).
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`The Court has jurisdiction of this action pursuant to 28 U.S.C. §§ 1331 and 1338.
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`Defendants now move for summary judgment pursuant to Federal Rule of Civil
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`Procedure 56, requesting (i) an order dismissing Plaintiff’s copyright infringement claim and (ii)
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`entry of declaratory judgment in Defendants’ favor on their de minimis use and fair use
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`counterclaims.1 (Docket Entry No. 127.) Plaintiff has cross moved to exclude the four expert
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`declarations filed in support of Defendants’ summary judgment motion. (Docket Entry No. 147.)
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`The Court has considered carefully the parties’ submissions in connection with the motions. For
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`the following reasons, Defendants’ motion for summary judgment is granted and Plaintiff’s cross
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`motion to exclude is denied.
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`BACKGROUND
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`Familiarity with the facts underlying this case, which have been detailed in prior
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`decisions of the Court, including the August 2, 2016, Memorandum Opinion and Order, the May
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`16, 2017, Memorandum Order, and the March 30, 2018, Memorandum Opinion and Order, is
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`presumed. (See Docket Entry Nos. 44, 64, and 117.) The following summary focuses on facts
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`that are pertinent to the question of whether Defendants are entitled to summary judgment.
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`Except as otherwise noted, the following material facts are undisputed.2
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`1
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`2
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`Defendants have moved for summary judgment as to their first and second counterclaims
`only. Defendants’ third counterclaim for “declaratory judgment of fraud on the
`Copyright Office” remains pending. (Def. Countercl. ¶¶ 228-35.)
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`The facts presented or recited as undisputed are drawn from the parties’ statements
`pursuant to S.D.N.Y. Local Civil Rule 56.1, or from evidence as to which there is no non-
`conclusory factual proffer. Citations to Defendants’ Local Civil Rule 56.1 Statement
`(Defendants-Counterclaimants 2K Games, Inc. and Take-Two Interactive Software,
`Inc.’s Rule 56.1 Statement of Undisputed Facts in Support of Their Motion for Summary
`Judgment (“Def. 56.1”), Docket Entry No. 129) and Plaintiff’s Counterstatement
`(Response to Defendants’ Rule 56.1 Statement of Purportedly Undisputed Facts (“Pl.
`56.1”), Docket Entry No. 146) incorporate by reference citations to the underlying
`evidentiary submissions. Plaintiff proffered no citations to record evidence to the extent
`it purported to dispute Defendants’ documented proffers of undisputed facts in
`Defendants’ 56.1 statement. Where Plaintiff purported to deny or dispute particular
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`Take-Two is a major developer, publisher, and marketer of interactive
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`entertainment and video games that develops and publishes products through its wholly-owned
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`subsidiaries, 2K and Rockstar Games. (SAC ¶¶ 17-18.) Defendants annually release an updated
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`basketball simulation video game that depicts basketball with realistic renderings of different
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`National Basketball Association (“NBA”) teams, including lifelike depictions of NBA players
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`and their tattoos. (Def. Countercl. ¶¶ 8, 141.) Plaintiff alleges that Defendants have infringed its
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`copyrights by publicly displaying works for which Plaintiff owns copyrights—five tattoos (the
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`“Tattoos”) that are depicted on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin
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`(the “Players”)—in versions 2K14, 2K15, and 2K16 (released in 2013, 2014, and 2015,
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`respectively) of Defendants’ basketball simulation video game. (SAC ¶¶ 9-11.)
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`Tattoos
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`According to Defendants’ expert, Nina Jablonski, “[t]attoos have been a part of
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`human expression for thousands of years.” (Def. 56.1 ¶ 1.) In modern day, tattoos like the
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`Tattoos at issue in this litigation “reflect the personal expression of the person bearing the tattoo
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`and are created for that purpose.” (Def. 56.1 ¶¶ 2-3.) The Tattoos reflect the Players’ personal
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`expression. (Def. 56.1 ¶ 3.)
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`Solid Oak holds an exclusive license to each of the Tattoos. (See Declaration in
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`Opposition to Defendants’ Motion and in Support of Cross-Motion (“Haberman Decl.”), Docket
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`Entry No. 149.) However, Solid Oak is not licensed to apply the tattoos to a person’s skin, and
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`Solid Oak does not hold any publicity or trademark rights to the Players’ likenesses. (Def. 56.1
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`¶¶ 101-02.) The Players “have given the NBA the right to license [their] likeness to third-
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`parties,” and the NBA has granted such a license to Take-Two. (Def. 56.1 ¶¶ 103-04.) The
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`statements, Plaintiff made arguments regarding relevance or other legal issues or, as
`addressed infra, challenged the relevance or basis of proffered expert testimony.
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`Players also granted Take-Two permission to use their likenesses. (Declaration of LeBron James
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`(“James Decl.”), Docket Entry No. 134, ¶ 13; Declaration of Kenyon Martin (“Martin Decl.”),
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`Docket Entry No. 135, ¶ 15.)
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`Child Portrait Tattoo
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`LeBron James’s “Child Portrait” tattoo was inked by tattooist Justin Wright, and
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`was copied from a baby picture provided by Mr. James. (Def. 56.1 ¶¶ 5-10.) Mr. Wright “knew
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`and intended that when [Mr. James] appeared in public, on television, in commercials, or in other
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`forms of media, he would display the Child Portrait Tattoo.” (Def. 56.1 ¶ 11.) It was Mr.
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`Wright’s intention that the “Child Portrait” Tattoo “become a part of Mr. James’s likeness,”
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`which, according to Mr. Wright, “Mr. James was and is free to use . . . as he desire[d], including
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`allowing others to depict it, such as in advertisements and video games.” (Def. 56.1 ¶¶ 11-13.)
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`330 and Flames Tattoo
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`LeBron James’s “330 and Flames” tattoo was inked by tattooist Deshawn Morris,
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`also known as Shawn Rome (“Mr. Rome”). (Def. 56.1 ¶¶ 14-15.) At Mr. James’s request, Mr.
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`Rome created the tattoo by shading in the outline of, and adding flames to, the number “330,”
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`which had already been inked on Mr. James’s arm. (Def. 56.1 ¶¶ 16-19.) The number “330”
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`represents the area code of Akron, Ohio. (Def. 56.1 ¶ 16.) According to Defendants’ expert, Dr.
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`Nina Jablonski, flames are a common motif used for tattoos. (Def. 56.1 ¶ 20.)
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`Mr. Rome stated that, “[a]t the time that [he] inked [the ‘330 and Flames’ tattoo]
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`on Mr. James, [he] knew that Mr. James was a professional basketball player with the [NBA],”
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`and that “it was likely that Mr. James was going to appear in public, on television, in
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`commercials, or in other forms of media, like video games.” (Declaration of Deshawn Morris
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`(“Morris Decl.”), Docket Entry No. 132, ¶ 9.) Mr. Rome also stated that, “[w]hen [he] inked [the
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`‘330 and Flames’ tattoo] on Mr. James according to his requests, [he] knew and intended that
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`[Mr. James] would display [the ‘330 and Flames’ tattoo] whenever he appeared in public,” and
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`that he “intended that [the ‘330 and Flames’ tattoo] become a part of Mr. James’s likeness and
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`part of his image.” (Morris Decl. ¶ 10.)
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`Script with a Scroll, Clouds and Doves Tattoo
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`Shawn Rome also inked LeBron James’s “Script with a Scroll, Clouds and
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`Doves” tattoo. (Def. 56.1 ¶ 21.) The “Script” tattoo was copied from a design in Mr. Rome’s
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`sketchbook. (Def. 56.1 ¶ 22.) Solid Oak did not license the drawing used to create the “Script”
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`tattoo. (Def. 56.1 ¶ 23.) According to Dr. Jablonski, birds, such as doves, “have been a popular
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`subject of tattoos since ancient times.” (Def. 56.1 ¶ 24.)
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`As with the “330 and Flames” tattoo, Mr. Rome “intended that [the ‘Script’
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`tattoo] become a part of Mr. James’s likeness and part of his image,” knowing that (i) Mr. James
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`was a professional basketball player with the NBA and that (ii) it was “likely that Mr. James was
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`going to appear in public, on television, in commercials, or in other forms of media, like video
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`games.” (Morris Decl. ¶¶ 9-10.)
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`Wizard Tattoo
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`Kenyon Martin’s “Wizard” tattoo was inked by Thomas Ray Cornett, and was
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`“copied . . . directly from the pre-existing design” that Mr. Martin chose from designs featured
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`on the walls and in books at Mr. Cornett’s parlor. (Def. 56.1 ¶¶ 25, 27-28.) Mr. Cornett did not
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`design the tattoo. (Declaration of Thomas Ray Cornett (“Cornett Decl.”), Docket Entry No. 131,
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`¶ 13.) The “Wizard” tattoo appears as a grim reaper holding a basketball. (Def. 56.1 ¶ 26.)
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`Both basketballs and “depictions of death or the grim reaper” are common tattoo motifs. (Def.
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`56.1 ¶¶ 30-31.)
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`When he inked the “Wizard” tattoo, Mr. Cornett “knew and intended” that the
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`tattoo “would be displayed if Mr. Martin appeared in media, such as on television or in
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`commercials.” (Cornett Decl. ¶ 15.) Mr. Cornett “also intended that the tattoo become a part of
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`Mr. Martin’s likeness and part of his image.” (Id.) Further, Mr. Cornett “knew and intended that
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`the tattoo would need to be included if anyone were to create a rendition of Mr. Martin’s
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`likeness, such as in art or video games.” (Id.)
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`Basketball with Stars and Script
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`Mr. Cornett also inked Eric Bledsoe’s “Basketball with Stars and Script” tattoo.
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`(Cornett Decl. ¶ 20.) This tattoo was designed by Mr. Cornett with Mr. Bledsoe’s direction and
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`input. (Id.) When Mr. Cornett inked the “Basketball with Stars and Script” tattoo on Mr.
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`Bledsoe, he “knew and intended that [Mr. Bledsoe] would display the tattoo whenever he
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`appeared in public,” such as “on television or in commercials.” (Id. ¶ 21.) As with Mr.
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`Kenyon’s “Wizard” tattoo, Mr. Cornett “intended that the [‘Basketball with Stars and Script’]
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`tattoo [would] become a part of Mr. Bledsoe’s likeness and part of his image,” and he “knew and
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`intended that the tattoo would need to be included if anyone were to create a rendition of Mr.
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`Bledsoe’s likeness, such as in art or video games.” (Id.)
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`NBA 2K Video Game
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`The NBA 2K game, which is much shorter in duration than an actual NBA game,
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`has “many components, including graphics, characters, a fictitious plot, gameplay, [and] music.”
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`(Def. 56.1 ¶¶ 70, 72.) These components, which include auditory elements such as “the sound of
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`shoes against the court’s surface; the noise of the crowd, the horns and other audible warnings
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`signaling elapsing shot clocks, ending timeouts, . . . television announcers performing play-by-
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`play,” and visual elements such as “the basketball; the hoop, . . . the court, . . . the players,
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`including multiple individuals on the court and on the sidelines, each of whom wears jerseys
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`with different accessories and other features (such as tattoos); coaches; referees; cheerleaders;
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`spectators; the stadium; and the game clock and scoring system,” are designed to most accurately
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`simulate the look and feel of an actual NBA game. (Def. 56.1 ¶¶ 74, 93; see also Declaration of
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`Jeffrey Thomas in Support of Defendants-Counterclaimants’ Motion for Summary Judgment
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`(“Thomas Decl.”), Docket Entry No. 130, ¶ 2.)
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`To further the goal of simulating an actual NBA game, Take-Two included the
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`Tattoos in NBA 2K “to accurately depict the physical likenesses of the real-world basketball
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`players as realistically as possible.” (Def. 56.1 ¶ 79.) However, for a number of reasons, NBA
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`2K users do not see the Tattoos clearly, if at all, during gameplay. (Def. 56.1 ¶¶ 91-99.) NBA
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`2K does not depict the Tattoos separately from the Players. (Def. 56.1 ¶ 85.) Therefore, the
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`Tattoos only appear when a user selects Mr. James, Mr. Martin, or Mr. Bledsoe from over 400
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`available players. (Def. 56.1 ¶¶ 85-86.) The Tattoos comprise only a miniscule proportion of
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`the video game data: only 0.000286% to 0.000431% of the NBA 2K game data is devoted to the
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`Tattoos. (Def. 56.1 ¶¶ 75-78.)
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`When a Tattooed player is selected, the Tattoos are depicted on a computer or
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`television screen at about 4.4% to 10.96% of the size that they appear in real life “due to the
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`great distance from the camera that the players usually are depicted” and the resulting relatively
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`small size of the player figures. (Def. 56.1 ¶¶ 91-92; Expert Report and Declaration of Ian
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`Bogost, Ph.D. (“Bogost Decl.”), Docket Entry No. 136, ¶¶ 71-77.) The Tattoos appear merely as
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`“visual noise,” “no more noticeable than a simulated player’s nose shape or hairstyle.” (Def.
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`56.1 ¶¶ 94-95 (internal quotation marks omitted).) The Tattoos “are subordinated to the display
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`of the court and the players in competition.” (Def. 56.1 ¶ 96 (internal quotation marks omitted).)
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`The Tattoos also cannot be observed clearly because they are often “blocked from view by other
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`players,” are “obstruct[ed] by other game elements,” “often appear out-of-focus,” and “players
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`on whom the Tattoos appear move quickly in the game.” (Def. 56.1 ¶ 97 (internal quotation
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`marks omitted).)
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`Defendants provided video clips showing how each of the Players appears during
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`NBA 2K gameplay. (Thomas Decl., Exs. B, C, and D.) At no point during the video clips are
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`the Tattoos discernible to the viewer. These videos demonstrate that the Players’ tattoos,
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`including the Tattoos at issue, appear entirely out-of-focus. The Tattoos are further obscured by
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`the Players’ quick and erratic movements up and down the basketball court. (Thomas Decl.,
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`Exs. B, C, and D.)
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`The Tattoos did not play a significant role in marketing NBA 2K. The NBA 2K
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`game covers do not depict the Players or their tattoos, and the advertising materials neither
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`depicted nor discussed the Tattoos. (See Def. Countercl. ¶¶ 161-67; Plaintiff’s Answer to
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`Defendants’ Counterclaims (“Pl. Ans.”), Docket Entry No. 65, ¶¶ 161-67.) According to
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`Defendants’ expert, Dr. Jay, while “consumers buy NBA 2K video games for numerous reasons
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`. . . consumers do not buy NBA 2K video games for the tattoos on LeBron James, Eric Bledsoe
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`or Kenyon Martin.” (Def. 56.1 ¶ 90.)
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`Market for Licensing Tattoos
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`Solid Oak has not profited from licensing the Tattoos. (Declaration of Dale M.
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`Cendali, Esq. in Support of Defendants-Counterclaimants’ Motion for Summary Judgment
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`(“Cendali Decl.”), Docket Entry No. 140, Ex. E at 370.) Solid Oak has never created a video
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`game that depicts the Tattoos, nor has Solid Oak licensed the Tattoos for use in a video game.
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`(Def. 56.1 ¶¶ 105-06, 110.) Defendants’ expert, Dr. Bogost, stated that he is “not familiar with
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`any video game developer licensing the rights to tattoos for inclusion in a video game.” (Def.
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`56.1 ¶ 111.) Solid Oak has not identified an instance in which a tattoo image has been licensed
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`for use in a video game. (Def. 56.1 ¶ 112.) Defendants’ expert, James Malackowski, opined that
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`a market for licensing basketball players’ tattoos for use in video games is “unlikely to develop.”
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`(Def. 56.1 ¶ 115.) As noted above, Defendants’ expert, Dr. Jay, relied on consumer survey data
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`to conclude that “consumers do not buy NBA 2K video games for the tattoos on LeBron James,
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`Eric Bledsoe or Kenyon Martin.” (Def 56.1 ¶ 90.) Thus, there is no demand for licensing the
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`Tattoos for use in a video game.
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`Solid Oak has neither licensed the Tattoo designs nor sold merchandise depicting
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`the Tattoos. (Def. 56.1 ¶¶ 107-08.) Solid Oak’s owner, Matthew Siegler, testified that he would
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`“need permission from the players . . . to not infringe on their right of publicity,” in order to
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`move forward with a business selling “dry wick apparel” bearing the Players’ tattoos. (Cendali
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`Decl., Ex. A at 389.) Solid Oak does not have a license to use the Players’ publicity or
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`trademark rights. (Def 56.1 ¶ 102.) Solid Oak has not proffered any evidence indicating that it
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`has a prospect of obtaining such rights.
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`Rule 56 Summary Judgment Standard
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`DISCUSSION
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`Rule 56(a) of the Federal Rules of Civil Procedure provides that summary
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`judgment is to be granted in favor of a moving party where that party can demonstrate “that there
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`is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
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`law.” Fed R. Civ. P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986).
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`For the purposes of summary judgment motion practice, a fact is considered material “if it might
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`affect the outcome of the suit under the governing law,” and an issue of fact is “genuine” where
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`“the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
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`Holtz v. Rockefeller & Co. Inc., 258 F.3d 62, 69 (2d Cir. 2001) (internal quotation marks and
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`citations omitted). The moving party bears the burden of demonstrating the absence of a
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`material fact, and the court must be able to find that, “‘after drawing all reasonable inferences in
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`favor of a non-movant, no reasonable trier of fact could find in favor of that party.’” Marvel
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`Entertainment, Inc. v. Kellytoy (USA), Inc., 769 F. Supp. 2d 520, 523 (S.D.N.Y. 2011) (quoting
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`Heublein v. U.S., 996 F.2d 1455, 1461 (2d Cir. 1993)).
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`A party that is unable to “make a showing sufficient to establish the existence of
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`an element essential to that party’s case, and on which that party will bear the burden of proof at
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`trial,” will not survive a Rule 56 motion. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
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`Specifically, the party who bears the burden of proof at trial “must do more than simply show
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`that there is some metaphysical doubt as to the material facts and they may not rely on
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`conclusory allegations or unsubstantiated speculation.” Jeffreys v. N.Y.C., 426 F.3d 549, 554
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`(2d Cir. 2005) (citations omitted). “[M]ere conclusory allegations or denials . . . cannot by
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`themselves create a genuine issue of material fact where none would otherwise exist.” Hicks v.
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`Baines, 593 F.3d 159, 166 (2d Cir. 2010) (internal quotation marks and citation omitted).
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`Plaintiff’s Copyright Infringement Claim
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`Defendants move to dismiss Plaintiff’s complaint for copyright infringement,
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`arguing that Plaintiff cannot prove its claim because Defendants’ use of the Tattoos is de
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`minimis and Plaintiff is thus unable to prove the key substantial similarity element of its cause of
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`action. Defendants further argue that the copyright claim must fail because their use of the
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`images was pursuant to implied authorization granted prior to Plaintiff’s acquisition of any rights
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`in the Tattoos.
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`De Minimis Use
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`“In order to establish a claim of copyright infringement, a plaintiff with a valid
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`copyright must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and
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`(2) the copying is illegal because a substantial similarity exists between the defendant’s work and
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`the protectible elements of plaintiff’s.” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp.,
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`602 F.3d 57, 63 (2d Cir. 2010) (internal quotation marks omitted). To be substantially similar,
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`the amount copied must be more than de minimis. Castle Rock Entm’t, Inc. v. Carol Publ’g Grp,
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`Inc., 150 F.3d 132, 138 (2d Cir. 1998) (citing Ringgold v. Black Entertainment Television, Inc.,
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`126 F.3d 70, 75 (2d Cir. 1997)). “To establish that the infringement of a copyright is de
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`minimis, and therefore not actionable, the alleged infringer must demonstrate that the copying of
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`the protected material is so trivial ‘as to fall below the quantitative threshold of substantial
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`similarity, which is always a required element of actionable copying.’” Sandoval v. New Line
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`Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998) (quoting Ringgold, 126 F.3d at 74).
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`The quantitative component of a de minimis analysis concerns (i) “the amount of
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`the copyrighted work that is copied,” (ii) “the observability of the copied work – the length of
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`time the copied work is observable in the allegedly infringing work,” and (iii) factors such as
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`“focus, lighting, camera angles, and prominence.” Ringgold, 126 F.3d at 75 (citing 4 Melville B.
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`Nimmer & David Nimmer, Nimmer on Copyright §§ 13.03[A][2] (1997)). “[O]bservability of
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`the copyrighted work in the allegedly infringing work” is fundamental to a determination of
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`whether the “quantitative threshold” of substantial similarity has been crossed. Sandoval, 147
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`F.3d at 217.
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`Substantial similarity must be determined through application of the “ordinary
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`observer test,” which considers “whether an average lay observer would recognize the alleged
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`copy as having been appropriated from the copyrighted work.” Rogers v. Koons, 960 F.2d 301,
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`307 (2d Cir. 1992) (internal quotation marks omitted). In other words, the Court considers
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`“whether the ordinary observer, unless he set out to detect the disparities, would be disposed to
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`overlook them, and regard their aesthetic appeal as the same.” Id. at 307-08 (internal quotation
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`marks omitted). Summary judgment may be granted on a de minimis use claim when “no
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`reasonable trier of fact could find the works substantially similar.” Estate of Smith v. Cash
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`Money Records, Inc., 253 F. Supp. 3d 737, 746 (S.D.N.Y. 2017) (internal quotation marks
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`omitted).
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`As noted above, Defendants assert that Plaintiff cannot establish substantial
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`similarity because their use of the Tattoos is de minimis. (See Memorandum of Law in Support
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`of Defendants-Counterclaimants 2K Games, Inc. and Take-Two Interactive Software, Inc.’s
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`Motion for Summary Judgment (“Def. Opening Br.”), Docket Entry No. 128, at 9-11.) Plaintiff
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`protests that “Defendants have provided no material extrinsic evidence that answers the material
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`questions surrounding de minimis use.” (Memorandum of Law in Opposition to Defendants’
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`Motion for Summary Judgment and in Support of Plaintiff’s Cross-Motion (“Pl. Opp. Br.”),
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`Docket Entry No. 148, at 3-7.)
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`In resisting Defendants’ earlier motion for judgment on the pleadings, Plaintiff
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`had argued that, “if an NBA2K player selects Messrs. James, Martin and Bledsoe in a given
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`game or series of games, or ‘employs the broad range of the video game’s features to focus,
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`angle the camera on, or make the subject tattoos more prominent,’ ‘the overall observability of
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`the subject tattoos can be fairly significant.’” (March Op. at 7-8.) The Court denied the motion,
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`holding, inter alia, that, at the pleading stage,
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`there [was] no objective perspective as to how the Defendants’
`video game is generally played, or to what extent certain game
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`features can be or are actually utilized, that would allow this Court
`to make determinations about
`the choices and subsequent
`observations of
`the ‘average
`lay observer,’ or about
`the
`observability and prominence of the Tattoos. The Court [was] thus
`unable to conclude without the aid of extrinsic evidence that ‘no
`reasonable jury, properly instructed, could find that the two works
`are substantially similar.’
`
`(March Op. at 8.)
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`Here, Defendants are entitled as a matter of law to summary judgment dismissing
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`Plaintiff’s copyright infringement claim because no reasonable trier of fact could find the Tattoos
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`as they appear in NBA 2K to be substantially similar to the Tattoo designs licensed to Solid
`
`Oak.3 The Tattoos only appear on the players upon whom they are inked, which is just three out
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`of over 400 available players. The undisputed factual record shows that average game play is
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`unlikely to include the players with the Tattoos and that, even when such players are included,
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`the display of the Tattoos is small and indistinct, appearing as rapidly moving visual features of
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`rapidly moving figures in groups of player figures. Furthermore, the Tattoos are not featured on
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`any of the game’s marketing materials.
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`When the Tattoos do appear during gameplay (because one of the Players has
`
`been selected), the Tattoos cannot be identified or observed. (Thomas Decl., Exs. B, C, and D.)
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`The Tattoos are significantly reduced in size: they are a mere 4.4% to 10.96% of the size that
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`they appear in real life. The video clips proffered by Defendants show that the Tattoos “are not
`
`displayed [in NBA 2K] with sufficient detail for the average lay observer to identify even the
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`subject matter of the [Tattoos], much less the style used in creating them.” Sandoval, 147 F.3d at
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`3
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`218. The videos demonstrate that the Tattoos appear out of focus and are observable only as
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`The Court notes that Solid Oak has not proffered images of the Tattoo designs. For
`purposes of its substantial similarity analysis, the Court has used the Tattoo images
`included in James Malackowski’s Declaration. (Declaration of James Malackowski in
`Support of Defendants-Counterclaimants’ Motion for Summary Judgment, Docket Entry
`No. 139, Ex. A at 7-9.)
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`undefined dark shading on the Players’ arms. Further, the Players’ quick and erratic movements
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`up and down the basketball court make it difficult to discern even the undefined dark shading.
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`The uncontroverted evidence proffered by Defendants demonstrates that the Tattoos often do not
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`appear during the NBA 2K video game and, when they do, they are so small and distorted by the
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`camera angles and other game elements that they are indiscernible to the average game users.
`
`While Plaintiff previously asserted that NBA 2K “employs the broad range of the video game’s
`
`features to focus, angle the camera on, or make the subject tattoos more prominent” (March Ord.
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`at 7-8), Plaintiff has not proffered any evidence to support that proposition. The undisputed
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`evidence of record shows that Defendants’ use of the Tattoos in NBA 2K falls below the
`
`quantitative threshold of substantial similarity. No reasonable fact finder could conclude that
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`Plaintiff has carried its burden of proving that Defendants’ use of the copyrighted material was
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`substantially similar to Plaintiff’s copyrighted work. Thus, Defendants are entitled as a matter of
`
`law to judgment dismissing Plaintiff’s SAC, which asserts only a copyright infringement claim,
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`and a declaration that Defendants’ use of the Tattoos is de minimis.
`
`Implied License
`
`Defendants also argue persuasively that Plaintiff’s copyright infringement claim
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`must fail because they were authorized to use the Tattoos in NBA 2K; Defendants assert that
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`they had an implied license to feature the Tattoos as part of the Players’ likenesses. (Def.
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`Opening Br. at 23-25.) Plaintiff disputes this proposition, arguing that the tattooist’s
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`expectations about whether a tattoo would become a part of his or her client’s likeness “play[] no
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`role in copyright law.” (Pl. Opp. Br. at 16.) Plaintiff also asserts that “any restriction on
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`Plaintiff’s ability to commercially exploit the underlying artwork should have been included in
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`the [Tattoo] licensing agreements.” (Pl. Opp. Br. at 17.)
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` “A copyright owner who grants a nonexclusive license to use his copyrighted
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`material waives his right to sue the licensee for copyright infringement.” Graham v. James, 144
`
`F.3d 229, 236 (2d Cir. 1998). “Although the Second Circuit has not yet ruled on the precise
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`circumstances under which an implied non-exclusive license will be found,” courts in this Circuit
`
`have found an implied non-exclusive license “where one party created a work at the other’s
`
`request and handed it over, intending that the other copy and distribute it.” Weinstein Co. v.
`
`Smokewood Entm’t Grp., LLC, 664 F. Supp. 2d 332, 344 (S.D.N.Y. 2009) (internal quotation
`
`marks omitted).
`
`Here, the undisputed factual record clearly supports the reasonable inference that
`
`the tattooists necessarily granted the Players nonexclusive licenses to use the Tattoos as part of
`
`their likenesses, and did so prior to any grant of rights in the Tattoos to Plaintiff. According to
`
`the declarations of Messrs. Thomas, Cornett, and Morris, (i) the Players each requested the
`
`creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the Players by
`
`inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and
`
`distribute the Tattoos as elements of their likenesses, each knowing that the Players were likely
`
`to appear “in public, on television, in commercials, or in other forms of media.” (Declaration of
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`Justin Wright (“Wright Decl.”), Docket Entry No. 133, ¶ 10.) Thus, the Players, who were
`
`neither requested nor agreed to limit the display or depiction of the images tattooed onto their
`
`bodies, had implied licenses to use the Tattoos as elements of their likenesses. Defendants’ right
`
`to use the Tattoos in depicting the Players derives from these implied licenses, which predate the
`
`licenses that Plaintiff obtained from the tattooists.
`
`The Players “have given the NBA the right to license their likeness to third-
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`parties,” and the NBA has granted such license to Take-Two. (Def. 56.1 ¶¶ 103-04 (internal
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`quotation marks omitted).) The Players also granted Take-Two permission to use their likeness.
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`(James Decl. ¶ 13; Martin Decl. ¶ 15.) Therefore, Defendants had permission to include the
`
`Tattoos on the Players’ bodies in NBA 2K because the Players had an implied license to use the
`
`Tattoos as part of their likeness, and the Players either directly or indirectly granted Defendants a
`
`license to use their likenesses.