Case: 1:17-cv-02635-CAB Doc #: 163 Filed: 07/22/22 1 of 26. PageID #: 13487
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`JAMES HAYDEN,
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`Plaintiff,
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`v.
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`2K GAMES, INC. and TAKE-TWO
`INTERACTIVE SOFTWARE, INC.,
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`Defendants.
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`CASE NO. 1:17-cv-02635-CAB
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`SUPPLEMENTAL REPLY IN SUPPORT OF DEFENDANTS
`2K GAMES, INC. AND TAKE-TWO INTERACTIVE SOFTWARE, INC.’S
`MOTION FOR SUMMARY JUDGMENT
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`Case: 1:17-cv-02635-CAB Doc #: 163 Filed: 07/22/22 2 of 26. PageID #: 13488
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION............................................................................................................. 1
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`ARGUMENT ..................................................................................................................... 4
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`A.
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`B.
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`C.
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`D.
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`TAKE-TWO’S USE OF THE TATTOOS IS FAIR USE ...................................... 5
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`TAKE-TWO’S USE OF THE TATTOOS WAS AUTHORIZED....................... 10
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`TAKE-TWO’S USE OF THE TATTOOS IS DE MINIMIS ................................ 18
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`PLAINTIFF’S ATTEMPTS TO DISCOUNT THE NBA PLAYERS’
`DECLARATIONS ARE MERITLESS ................................................................ 18
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`CONCLUSION ........................................................................................................................... 20
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`ii
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`Case: 1:17-cv-02635-CAB Doc #: 163 Filed: 07/22/22 3 of 26. PageID #: 13489
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`
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`Cases
`
`TABLE OF AUTHORITIES
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`
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`Page(s)
`
`Asset Mktg. Sys., Inc. v. Gagnon,
`542 F.3d 748 (9th Cir. 2008) ...................................................................................................11
`
`Authors Guild, Inc. v. HathiTrust,
`755 F.3d 87 (2d Cir. 2014).........................................................................................................5
`
`Authors Guild v. Google, Inc.,
`804 F.3d 202 (2d Cir. 2015)...................................................................................................5, 8
`
`Balsey v. LFP, Inc.,
`691 F.3d 747 (6th Cir. 2012) .....................................................................................................8
`
`Bill Graham Archives v. Dorling Kindersley Ltd.,
`448 F.3d 605 (2d Cir. 2006).......................................................................................................7
`
`Blanch v. Koons,
`467 F.3d 244 (2d Cir. 2006).......................................................................................................9
`
`Castle v. Kingsport Publ’g Corp.,
`No. 19 Civ. 92, 2020 WL 7348157 (E.D. Tenn. Dec. 14, 2020) ...............................................7
`
`Celotex Corp. v. Catrett,
`477 U.S. 317 (1986) ...................................................................................................................4
`
`Dawson v. Dorman,
`528 F. App’x 450 (6th Cir. 2013) ............................................................................................19
`
`Durham Indus., Inc. v. Tomy Corp.,
`630 F.2d 905 (2d Cir. 1980)...................................................................................................7, 8
`
`Effects Assocs., Inc. v. Cohen,
`908 F.2d 555 (9th Cir. 1990) .............................................................................................11, 17
`
`Foad Consulting Grp., Inc. v. Azzalino,
`270 F. 3d 821 (9th Cir. 2001) ..................................................................................................12
`
`Gordon v. Nextel Commc’ns & Mullen Advert., Inc.,
`345 F.3d 922 (6th Cir. 2003) ...................................................................................................18
`
`I.A.E., Inc. v. Shaver,
`74 F.3d 768 (7th Cir. 1996) ...........................................................................................3, 11, 13
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`
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`Jackson v. Warner Bros. Inc.,
`993 F. Supp. 585 (E.D. Mich. Aug. 29, 1997) ...........................................................................5
`
`Johnson v. Jones,
`149 F.3d 494 (6th Cir. 1998) .............................................................................................11, 17
`
`Lexmark Int’l, Inc. v. Static Control Components, Inc.,
`387 F.3d 522 (6th Cir. 2004) .....................................................................................................5
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`Mahavisno v. Compendia Bioscience, Inc.,
`164 F. Supp. 3d 964 (E.D. Mich. Feb. 23, 2016) .................................................................3, 11
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`Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp.,
`475 U.S. 574 (1986) ...................................................................................................................4
`
`Murphy v. Lazarev,
`589 Fed. App’x 757 (6th Cir. 2014) ........................................................................................11
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`Photographic Illustrators Corp. v. Orgill, Inc.,
`953 F.3d 56 (1st Cir. 2020) ................................................................................................13, 14
`
`Robert L. Stark Enterprises, Inc. v. Neptune Design Group, LLC,
`No. 16 Civ. 264, 2017 WL 1345195 (N.D. Ohio Apr. 12, 2017) ............................................17
`
`Solid Oak Sketches, LLC v. 2K Games, Inc.,
`449 F. Supp. 3d 333 (S.D.N.Y. 2020) .............................................................................. passim
`
`Wilchombe v. TeeVee Toons, Inc.,
`555 F.3d 949 (11th Cir. 2009) .................................................................................................14
`
`Rules
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`Fed. R. Civ. P. 56(a) ........................................................................................................................4
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`Fed R. Civ. P. 56(c)(1)(A) ...............................................................................................................4
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`Case: 1:17-cv-02635-CAB Doc #: 163 Filed: 07/22/22 5 of 26. PageID #: 13491
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`Pursuant to this Court’s Order of April 14, 2022, Dkt. 146, Defendants Take-Two Games,
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`Inc. and 2K Games, Inc. (“Take-Two”) submit this supplemental reply brief in support of their
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`Motion for Summary Judgment. Dkt. 95.
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`I.
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`INTRODUCTION
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`This Court ordered that Danny Green, LeBron James, and Tristan Thompson be deposed
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`in a “quest for the truth.” Dkt. 146. All three NBA Players have now been deposed, and their
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`testimony confirms that there are no material facts in dispute as to any of Take-Two’s defenses.1
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`Not only did the NBA Players verify that the facts in their declarations are true, they even added
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`more undisputed detail. Among other things, each NBA Player testified
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`In apparent acknowledgment that the NBA Players’ testimony supports Take-Two’s
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`summary judgment motion, Plaintiff largely ignores Take-Two’s fair use and de minimis use
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`defenses in his Supplemental Opposition. See generally Dkt. 156 (“Supp. Opp.”). It, however,
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`1 Capitalized terms not defined here were defined in Take-Two’s opening, Dkt. 95-01 (“Br.”), or reply briefs,
`Dkt. 135.
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`should not be overlooked that the NBA Players’ testimony is consistent with and supports each
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`of the fair use factors. As to Factor 1 (purpose and character of the use), the NBA Players
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`verified
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`different from Take-Two’s purpose, which was to depict the NBA Players just as they look in
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`. Plaintiff’s purpose is, thus,
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`real life in NBA 2K. As to Factor 2 (nature of the works), the testimony confirmed
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`NBA Players’ testimony confirms that,
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` As to Factor 3 (amount and substantiality), the
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`. And Mr. Thompson confirmed that
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` As to Factor
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`4 (effect of the use on the potential market), the NBA Players’ testimony is consistent with the
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`lack of a market for Take-Two’s use of the Tattoos:
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` Thus, as explained in Take-
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`Two’s prior briefs, NBA 2K makes fair use of the Tattoos.
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`Likewise, with regard to de minimis use, the NBA Players’ testimony confirmed the
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`undisputed facts that prove this dispositive defense. What the Tattoos look like in NBA 2K is not
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`in dispute—the games are in the record, Dkt. 95-17–21, so the Court can see for itself what the
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`court in Solid Oak Sketches, LLC v. 2K Games, Inc. decisively concluded: tattoos, when they
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`even appear in NBA 2K at all, are small and difficult to observe. 449 F. Supp. 3d 333, 347
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`(S.D.N.Y. 2020). Two of the Tattoos are even covered. Indeed, Mr. Thompson specifically
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` And every piece of evidence on how the tattoo industry operates is consistent with a
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`license—none of the tattooists, including Plaintiff, required their clients to get permission to
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`show their tattoos in media, and
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`These are precisely the kinds of undisputed facts that courts routinely find establish an implied
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`license. Thus, Take-Two respectfully requests that this Court find that its use of the Tattoos was
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`authorized.
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`Plaintiff had every opportunity to discover the truth, and he did. The NBA Players’
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`sworn testimony shows that summary judgment should be granted for Take-Two and this case
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`should be dismissed in its entirety.
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`II.
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`ARGUMENT
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`In Take-Two’s Motion, Take-Two identified “each claim or defense . . . on which
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`summary judgment is sought,” Fed. R. Civ. P. 56(a), and the materials that it “believes
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`demonstrate the absence of a genuine issue of material fact.” See Celotex Corp. v. Catrett, 477
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`U.S. 317, 323 (1986). The burden thus shifted to Plaintiff to establish that “that there is a
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`genuine issue of material fact,” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S.
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`574, 585–86 (1986), by “citing to particular parts of materials in the record,” Fed R. Civ. P.
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`56(c)(1)(A). The NBA Players’ deposition testimony does not help Plaintiff meet his burden.
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`Rather than creating a dispute about the material facts identified by Take-Two, the NBA Players
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`implied as every plaintiff necessarily disputes the existence of a license in bringing a claim. Rather, the key
`consideration is objective intent, which Plaintiff’s and the NBA Players’ deposition testimony makes clear.
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`provided additional testimony confirming that those facts are not in dispute and that Take-Two is
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`entitled to summary judgment on each of its defenses. We address each defense in turn
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`following the order of Take-Two’s opening brief.
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`A.
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`Take-Two’s Use of the Tattoos is Fair Use
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`With the NBA Players’ testimony in the record, no reasonable finder of fact could
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`determine that NBA 2K is not a fair use of the Tattoos. Plaintiff’s case suffers from a fatal flaw:
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`the unavoidable fact that NBA 2K is not a substitute for the Tattoos. Br. 18; Dkt. 95-42
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`(Malkiewicz Tr.) 44:14–24; Dkt. 95-41 (Lenzo Tr.) 276:14–16. The NBA Players’ testimony
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`does not change or contradict this fact, and this fact alone is case dispositive. See Authors Guild
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`v. Google, Inc., 804 F.3d 202, 214 (2d Cir. 2015) (affirming summary judgment on fair use, as
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`use does not “serve as a substitute”); Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 95 (2d Cir.
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`2014) (same); see also Jackson v. Warner Bros. Inc., 993 F. Supp. 585, 591 (E.D. Mich. Aug.
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`29, 1997) (granting summary judgment on fair use where work was not a substitute).
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`Moreover, the NBA Players’ testimony shows that each fair use factor supports a finding
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`of fair use. First¸ with regard to the “purpose and character of the use,” the works were used for
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`different purposes.4 See Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522,
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`544 (6th Cir. 2004) (first factor favored fair use where works were used for “[different]
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`purposes”). Each of the NBA Players confirmed
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` Mr. Green testified
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`Ex. A (Green Tr.) 138:14–16; 141:22–142:3. Mr. James
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` Means Decl.
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`4 Plaintiff does not address this factor in his Supplemental Opposition. Supp. Opp. 12–13.
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` Id. Ex. B (James Tr.) 23:25–24:7; 117:4–14. Mr. Thompson
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` Id. Ex. C (Thompson Tr.) 95:12–96:1.
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`This personal expressive purpose is consistent with the fact that it was the NBA Players,
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`not Plaintiff, who conceived of the tattoos they wanted and approved the designs therefor before
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`they were inked. Mr. James explained that
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` Id. Ex. B (James Tr.) 34:12–23. Mr. Thompson said that
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` Id. Ex. C (Thompson Tr.) 46:23–47:23. Mr. Green also
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` Id. Ex. A (Green Tr.) 149:15–150:4. Plaintiff
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`himself confirmed this process during his deposition. Id. Ex. D (Hayden Tr.) 29:22–32:5. And
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`Plaintiff agreed that the Tattoos as “expressive visual work[s]” communicating the ideas of the
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`NBA Players on which they were inked. Dkt. 109-49 (Hayden Decl.) ¶ 12; Br. 12.
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`In sharp contrast with the Tattoos’ original purpose of exhibiting the NBA Players’
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`personal expression, Take-Two’s purpose was to replicate the NBA Players exactly as they really
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`look, from their physical appearance (hair, blemishes, skin color, size, etc.) down to their moves
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`and skills. Br. 8; see also Means Decl. Ex. B (James Tr.) 77:7–18 (
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` Indeed, the
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`fact that, for two of the Tattoos (the Lion Tattoo and the Brother’s Keeper Tattoo), the expressive
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`content is not even discernable because the tattoos are covered by jerseys, Br. 28–29,
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`demonstrates this different purpose. See Solid Oak Sketches, 449 F. Supp. 3d at 348 (where
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`expressive content was “minimized” this supported fair use); see also Bill Graham Archives v.
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`Dorling Kindersley Ltd., 448 F.3d 605, 609–611 (2d Cir. 2006) (use of images displayed at
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`angles and surrounded by other material was fair use). This factor weighs in favor of fair use.
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`Second, with regard to the “nature of the work,” it is not disputed that the Tattoos were
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`published by Plaintiff, 4th Am. Compl. (Dkt. 33) Exs. C–H, and the NBA Players’ testimony is
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`consistent with Plaintiff’s admission. Means Decl. Ex. B (James Tr.) 31:13–20, 44:8–10, 56:8–
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`9; (
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`); Ex. C (Thompson Tr.) 63:21–23 (
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`); Ex. A (Green Tr.) 167:2–22 (
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`). The fact the Tattoos were published (as opposed to
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`unpublished works, which get more protection) supports a finding of fair use. See Castle v.
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`Kingsport Publ’g Corp., No. 19 Civ. 92, 2020 WL 7348157, at *6 (E.D. Tenn. Dec. 14, 2020).
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`Moreover, the NBA Players’ testimony confirmed
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`910 (2d Cir. 1980) (a work is not original if it is a “mere reproduction” of a prior work “in a
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` See Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905,
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`different medium”). Mr. James testified that
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`Means
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`Decl. Ex. B (James Tr.) 50:2–9. This is consistent with Plaintiff’s testimony that Mr. James
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`came into his “shop with a playing card depicting a lion” asking for something similar on his
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`chest. Dkt. 95-44 (Hayden Tr.) 82:6–8, 83:21–25. Likewise, Mr. Thompson testified during his
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`Players’ testimony confirms that the amount used was reasonable in light of Take-Two’s purpose
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`to depict the NBA Players accurately. Br. 17. Mr. James and Mr. Green testified
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`Means Decl. Ex. B (James Tr.) 123:21–
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`23
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`Ex. A (Green Tr.) 23:13–16
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`24:18–25:7 (
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`. And Mr. Thompson explained
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` Id. Ex. C (Thompson Tr.)
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`;
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` Thus, this factor weighs in favor of fair use.
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`Fourth, with regard to the “effect of the use upon the potential market,” the NBA
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`Players’ testimony is consistent with Plaintiff’s own testimony that (a) he has never “licensed a
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`tattoo for a video game,” and he is not aware of any tattooist who has licensed tattoos for
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`inclusion in a video game, Dkt. 95-22 (Hayden Tr.) 173:6–10; (b) prior to this lawsuit, he never
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`attempted to license tattoos for use in video games, id. at 177:24–178:2; and (c) no one had ever
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`approached him seeking permission to license tattoos he inked on real people for video games,
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`id. at 178:3–6.7 And because the Tattoos appear digitally on NBA Players in a video game, they
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`are no substitute for a tattoo on real human skin—which is what Plaintiff sells.
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`As the NBA Players explained,
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`7 This alone supports a finding of fair use. See Blanch v. Koons, 467 F.3d 244, 258 (2d Cir. 2006) (fair use as
`copyright owner admitted that she “never licensed any of her photographs for” the use made by defendant).
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`Decl. Ex. B (James Tr.) 109:20–110:6, 119:2–17, 125:6–22.
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`Ex. A (Green Tr.) 82:11–17 (
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`105:19–106:19 (confirming
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` Means
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`See Id.
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`); Ex. C (Thompson Tr.)
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` There is no evidence in the record of
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`the existence of such a market, and Plaintiff has not been able to raise a dispute on this point.
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`This factor weighs this factor in favor of fair use.
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`B.
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`Take-Two’s Use of the Tattoos was Authorized
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`The NBA Players’ testimony further confirms that, as a matter of law, Take-Two was
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`authorized to show the Tattoos in NBA 2K. As an initial matter, it is undisputed that Take-Two
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`had an express license from the NBA Players, by way of the NBA and NBAPA, to accurately
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`depict their bodies with the Tattoos in NBA 2K. Br. 21; Dkt. 95-31 (Thomas Tr.) 132:9–133:2;
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`Dkt. 95-45–46 (NBAPA Agreement); Dkt. 95-5 (NBAPA Agreement) ¶ 10. Mr. James testified
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`Decl. Ex. B (James Tr.) 124:15–126:22, 106:11–16 (
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`Mr. Green had
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`Id. Ex. A (Green Tr.) 173:6–24, 133:11–21, (
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` Means
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`). And Mr. Thompson
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` Id. Ex. C (Thompson Tr.) 104:16–105:17; 106:20–107:13.
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`Moreover, the undisputed facts show that Plaintiff impliedly licensed the Tattoos to the
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`NBA Players, as each of the three steps of the test for an implied license are met here. Plaintiff
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`does not contest that the NBA Players “request[ed] the creation of a work” and Plaintiff “ma[de]
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`[that] particular work and deliver[ed] it to” the players. Mahavisno, 164 F. Supp. 3d at 968–69;
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`I.A.E, 74 F.3d at 776; Br. 5–6. Consistent with Plaintiff’s own testimony, Br. 5,
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` See supra 8; Means Decl. Ex. B (James Tr.)
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`32:22–33:7, 39:1–9; 48:10–51:3; 110:7–117:2 (
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`); Ex. A (Green Tr.) 143:5–148:24, 151:11–153:15 (
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`); Ex. C (Thompson Tr.) 97:24–100:7
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`). Thus, the first two steps
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`(
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`are satisfied here. See Solid Oak, 449 F. Supp. 3d at 346.
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`As to whether “the licensor intends that the licensee-requestor copy and distribute his
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`work,” I.A.E., 74 F.3d at 776, courts look at objective intent, which is manifested “by the parties’
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`conduct” at “the time of the creation and delivery” of the work at issue. See, e.g., Asset Mktg.
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`Sys., Inc. v. Gagnon, 542 F.3d 748, 756 (9th Cir. 2008).8 Here, as the NBA Players’ testimony
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`8 Plaintiff asserts that the three-step test for determining whether there is an implied license, as set forth in I.A.E,
`74 F.3d at 776, should be given “no weight.” Supp. Opp. 8, n.4. That makes no sense. This three-step test,
`originally laid out in Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558-59 (9th Cir. 1990), is how courts in this
`Circuit routinely decide whether an implied license exists. See, e.g., Mahavisno, 164 F. Supp. 3d at 968–69.
`Even Plaintiff’s own cases apply this test. See, e.g., Murphy v. Lazarev, 589 Fed. App’x 757 (6th Cir. 2014)
`(relying on I.A.E. in concluding that use of a work is not copyright infringement when there is an implied
`license); Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998) (deciding whether an implied license exists based on
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`has shown, the parties’ conduct is not in dispute: the NBA Players requested the Tattoos, paid for
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`them, and left without expecting to need to return for any purpose. Br. 6, 22. Mr. Thompson
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`confirmed that,
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` Means Decl. Ex. C (Thompson Tr.) 98:9–99:8. He explained
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` Id. at 63:14–17 (
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`). Mr. Green
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` Id. Ex. A (Green Tr.) 143:19–
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`144:10.
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` Ex. B (James Tr.) 119:18–122:15.
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`This is consistent with Plaintiff’s testimony that getting inked is a discrete occurrence,
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`not an ongoing relationship, testifying that he never told any clients that “there are limitations on
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`what you can do with your tattoo, you need to come back to me.” Means Decl. Ex. D (Hayden
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`Tr.) 42:1–44:10, 120:19–24. His conduct with his clients showed that he viewed tattoos as a
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`one-time deal. See id. at 42:1–44:10 (Q: “You don’t tell customers that they need to come back
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`to you if they ever want to touch up or alter a tattoo you inked, right?” A: “No, I’m not forcing
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`clients to do that.” …Q: “You don’t tell clients that they need your permission to have a tattoo
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`removed, right?” A: “No.”). The fact that getting the Tattoos was a discrete transaction
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`executed at the players’ request supports a finding of the existence of an implied license as a
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`matter of law. See Foad Consulting Grp., Inc. v. Azzalino, 270 F. 3d 821 (9th Cir. 2001) (license
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`where architect hired for discrete task, not ongoing project).
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`“objective fact[s]” speaking to “intent”).
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`Fatally, Plaintiff did not enter into any written contracts with the NBA Players disclosing
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`that the Tattoos could be used only with his future permission, nor did he tell the NBA Players
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`when he inked the Tattoos that they needed his permission to show and allow others to show
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`their bodies with their new tattoos. Br. 4–7; Means Decl. Ex. D (Hayden Tr.) 155:14–156:13.
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`The NBA Players’ testimony supports this.
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`98:5.
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`Tr.) 81:17–22, 128:6–14
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` Id. Ex. A (Green Tr.) 95:18–
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`Id. Ex. B (James
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`(
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` Ex. C (Thompson Tr.) 99:9–100:7, 109:18–23
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` This is undisputed evidence of an implied license. See
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`Solid Oak, 449 F. Supp. 3d at 346 (license where tattooists did not limit use of tattoos even
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`though they knew players were likely to appear “in public, on television, in commercials, or in
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`other forms of media”); see also Photographic Illustrators Corp. v. Orgill, Inc., 953 F.3d 56, 66
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`(1st Cir. 2020) (lack of objection supported summary judgment on implied license defense);
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`I.A.E., 74 F.3d at 777 (delivery of designs “without any warning that their further use would
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`constitute copyright infringement” supported finding of license).
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`In addition to all of the foregoing undisputed evidence that an implied license exists, in
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`determining intent, courts also can look to industry practice. See Wilchombe v. TeeVee Toons,
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`Inc., 555 F.3d 949, 957 (11th Cir. 2009).9 Every piece of evidence in the record concerning how
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`the industry operates is consistent with an implied license:
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`• James Hayden - Plaintiff never sought permission to show tattoos on his own body,
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`despite displaying them in media (including videos and commercials). Means Decl. Ex.
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`D (Hayden Tr.) 39:11–40:2, 42:1–5 (Q: “Have you ever gotten the permission of any
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`tattooist before appearing in any videos or commercials showing your tattoos?” A: “No.”
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`Q: “Have you appeared in videos or commercials showing your tattoos?” A: “Yes.”).
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`Plaintiff has never had a client sign a copyright agreement before he inked them. Id. at
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`155:14–19. He never told any of his clients that there were any limitations on what they
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`could do with their tattoos, or that they needed to come back to him. Id. at 44:6–10.
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`• Bernardino Tovanche - Bernardino Tovanche, Mr. Hayden’s colleague and a tattooist
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`himself, could not think of a scenario where a client of a tattooist had sought permission
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`from the tattooist to appear in any form of media. Id. Ex. E (Tovanche Tr.) 3–19.
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`Indeed, he had never asked a client to sign a copyright agreement before he inked them
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`either. Id. He had never told a client that they needed permission to appear in a
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`photograph, a video, or a video game with a tattoo. Id. at 54:20–56:2. Nor had he told a
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`client that he or she could not let someone else reproduce their likeness without Mr.
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`Tovanche’s permission. Id.
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`• Gary Glatstein - Gary Glatstein, a tattooist who has inked famous athletes, attested to
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`9 Plaintiff asserts that because certain testimony of Dr. Jablonski has been excluded, there is no undisputed
`evidence in the record of industry practice. Supp. Opp. 11 n.10. This is false. As described in the bullets
`herein, the evidence of numerous tattooists and clients alike indicates that requiring clients to get permission
`from their tattooists before they show their tattoos on their own bodies is not the industry practice.
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`
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` Id. at 192:11–193:25.
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`• LeBron James -
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`Tr.) 79:20–25.
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`• Tristan Thompson -
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` Id. Ex. B (James
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` Id. Ex. C (Thompson Tr.) 62:12–24.
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`Plaintiff has offered no contrary evidence of industry practice. Thus, it is undisputed.
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`Instead, Plaintiff protests that he subjectively “did not intend” to license the Tattoos to
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`the NBA Players. Supp. Opp. 8. He specifically argues that he did not know and could not have
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`foreseen that the Tattoos would be shown in a video game and that, as a result, there is no intent.
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`Supp. Opp. 10–11. This is wrong for two reasons. First, it ignores the undisputed testimony of
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`what Plaintiff admittedly did know, which is that he was inking permanent tattoos on the bodies
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`of professional athletes, people who,
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` Means Decl. Ex. B (James Tr.) 119:13–17;
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`Ex. D (Hayden Tr.) 48:10–18, 50:1–18 (testifying he knew Mr. James played for the Cleveland
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`Cavaliers when he first inked him, and that Mr. James would sometimes appear on television),
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`91:1–3 (testifying he knew Mr. Green was a “professional basketball player” when he inked him,
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`and that he would be appearing in media showing his tattoos), 112:24–114:15 (testifying he
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`knew Mr. Thompson was a “professional basketball player” when he inked him and the he
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`appeared on television). These professional athletes would inevitably go about their lives with
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`their tattoos, making decisions about where to appear and show their bodies without Plaintiff’s
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`input, such as appearing in televised sporting events, commercials, photos on the Internet, and
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`more, just as they had done before they were first inked. Given the permanent nature of tattoos,
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`Plaintiff has simply not put forward any facts showing he did not understand or expect that the
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`Tattoos could and would appear anywhere the NBA Players themselves chose to appear.
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`Knowing this, it is undisputed that he did not limit their rights to show their bodies in any way.
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`Second, Plaintiff has not pointed to a single case giving credence to evidence of
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`subjective intent. Even in Johnson v. Jones, on which Plaintiff almost entirely relies, the court
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`considered objective intent, looking specifically at the existence of a contemporaneous unsigned
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`contract. See 149 F.3d at 501.11 Indeed, Johnson explicitly distinguishes its facts from the facts
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`in Effects, where the party had “delivered the footage directly to the defendant, without ever
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`mentioning the issue of ownership of the copyright.” 149 F.3d at 500. Where there was no
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`such mention, as is the case here, an implied license existed. Id. at 500. Likewise, the Solid Oak
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`court agreed that this lack of a limitation on what the professional athletes could do with their
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`tattoos showed intent. 449 F. Supp. 3d at 346 (implied license existed where players were
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`“neither requested nor agreed to limit the display or depiction of the images tattooed on their
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`bodies”). This is an Effects and Solid Oak situation, not a Johnson situation. The undisputed
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`conduct in this case shows that the use of the Tattoos in NBA 2K was authorized.
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`11 Plaintiff insists that, because the Johnson court considered the copyright holder’s “testimony,” this shows it was
`concerned with subjective intent. Supp. Opp. 8–11. He, however, ignores what the testimony was about: the
`plaintiff had claimed he had meant to object to an ownership provision drafted by another party, testimony
`which was confirmed by contracts showing lack of intent. 149 F.3d at 500. Plaintiff also cites to Robert L.
`Stark Enterprises, Inc. v. Neptune Design Group, LLC, Supp. Opp. 8, but again, the court there looked at
`objective intent, including contracts and agreements, not the post-hoc declaration of subjective intent at issue
`here. No. 16 Civ. 264, 2017 WL 1345195, at *10 (N.D. Ohio Apr. 12, 2017). There are no such contracts here,
`and the evidence of contemporaneous conduct is undisputed.
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`C.
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`Take-Two’s Use of the Tattoos is De Minimis
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`The NBA Players’ testimony also confirms that Take-Two’s use was de minimis. The
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`alleged work and the accused work are not disputed, and therefore de minimis use is a legal
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`question for the Court. See Gordon v. Nextel Commc’ns & Mullen Advert., Inc., 345 F.3d 922,
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`924 (6th Cir. 2003) (affirming grant of summary judgment). The NBA Players’ testimony does
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`not change the undisputed facts: the Tattoos (1) do not always appear in the game; (2) are
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`depicted at 1.11–10.3% the size that they appear in real life; (3) are surrounded by other visual
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`elements; (4) only comprise, at most, 0.00515% of the game data; and (5) may be obstructed
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`from view, including by uniforms, other players, and referees. Br. 25–27. Two Tattoos were
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`indisputably “obstructed by the jerseys.” Opp. 16 n.27. And indeed, Mr. Thompson
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` Means Decl. Ex.
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`C (Thompson Tr.) 24:18–25:7. Take-Two is thus entitled to summary judgment on this defense.
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`D.
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`Plaintiff’s Attempts to Discount the NBA Players’ Declarations are Meritless
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`With the facts not in dispute, Plaintiff’s Supplemental Opposition focuses on attacking
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`the declarations themselves. Plaintiff misses the forest for the trees. The three NBA Players
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`. See, e.g., Means Decl. Ex. B (James Tr.) 107:11–128:14; Ex. A (Green
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`
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`Tr.) 135:24–178:20; Ex. C (Thompson Tr.) 93:19–108:1. The players
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` Ex. B (James Tr.) 20:8. Mr. Thompson said
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`. Id. Ex. C (Thompson Tr.) 26:25–27:2. Mr.
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`Green said
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` Id. Ex. A (Green Tr.) 75:12–21.
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`Case: 1:17-cv-02635-CAB Doc #: 163 Filed: 07/22/22 25 of 26. PageID #: 13511
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`Dated: New York, NY
`July 22, 2022
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`/s/ Dale M. Cendali
`Dale M. Cendali (admitted pro hac vice)
`Joshua L. Simmons (admitted pro hac vice)
`Chris Ilardi (admitted pro hac vice)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`Telephone: (212) 446-4800
`dale.cendali@kirkland.com
`joshua.simmons@kirkland.com
`chris.ilardi@kirkland.com
`
`Miranda D. Means (admitted pro hac vice)
`KIRKLAND