Case: 1:17-cv-02635-CAB Doc #: 193 Filed: 09/20/22 1 of 20. PageID #: 14659
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
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`CASE NO. 1:17CV2635
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`SENIOR JUDGE
`CHRISTOPHER A. BOYKO
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`OPINION AND ORDER
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`JAMES HAYDEN,
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`Plaintiff,
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`vs.
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`2K GAMES, INC., et al.,
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`Defendants.
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`CHRISTOPHER A. BOYKO, SR. J.:
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`This matter comes before the Court upon the Motion (ECF DKT #93*SEALED &
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`#94*PUBLIC VERSION) of Plaintiff James Hayden for Partial Summary Judgment and the
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`Motion (ECF DKT #95*SEALED & #101*PUBLIC VERSION) of Defendants 2K Games,
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`Inc. and Take-Two Interactive Software, Inc. for Summary Judgment. For the following
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`reasons, Plaintiff’s Motion is granted in part and denied in part and Defendants’ Motion is
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`denied.
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` I. BACKGROUND
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`Plaintiff James Hayden filed his original Complaint on December 18, 2017. His
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`Fourth Amended Complaint was filed on August 19, 2019, alleging copyright infringement by
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`Defendants 2K Games, Inc. and Take-Two Interactive Software, Inc. (ECF DKT #33).
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`Defendant Take-Two is a worldwide developer, publisher and marketer of interactive
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`entertainment and video games. Defendant 2K Games sells and ships video games around the
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`globe, including the alleged Infringing Games. Take-Two’s video games include the popular
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`basketball simulation series NBA 2K. The NBA 2K series is released annually and depicts
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`players from the NBA in its interactive simulations. Defendants’ video games display and
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`allow players to control realistic avatars of over 400 NBA players.
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`Plaintiff does business as Focused Tattoos. Plaintiff is the artist who inked tattoos on
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`various individuals depicted with those tattoos in the NBA 2K series. Plaintiff asserts that he
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`obtained copyright registrations for six tattoos inked on Danny Green, LeBron James and
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`Tristan Thompson (the “Registered Tattoos”).
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`Plaintiff’s Registered Tattoos with the U.S. Copyright Office have the following dates
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`of registration and completion/publication (ECF DKT #93-5 through #93-10):
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`• “Gloria” (Reg. No. VAu 1-263-888), tattooed on LeBron James, completed in
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`2007 with the effective date of registration of September 6, 2016;
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`• “Lion” (Reg. No. VAu 1-271-044), tattooed on LeBron James, completed in
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`2008 with the effective date of registration of September 6, 2016;
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`• “Shoulder Stars” (Reg. No. VAu 1-270-802), tattooed on LeBron James,
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`completed in 2007 with the effective date of registration of September 6, 2016;
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`• “Fire D.G.” (Reg. No. VAu 1-287-552), tattooed on Danny Green, completed in
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`2012 with the effective date of registration of August 11, 2017; Supplementary
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`Registration including only the design, creation and placement of flames surrounding
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`and accenting character image and text and the addition of shading, accenting and
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`design aesthetics to flames and character image (effective date July 30, 2019);
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`• “Scroll D.G.” (Reg. No. VAu 1-287-545), tattooed on Danny Green, completed
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`in 2012 with the effective date of registration of August 11, 2017; Supplementary
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`Registration including only design elements around the scroll, including the cloud
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`designs, decorative spear head and character image around the edge of the scroll, and
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`the shading in and around all elements (effective date July 30, 2019);
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`• “Brother’s Keeper T.T.” (Reg. No. VAu 1-292-453), tattooed on Tristan
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`Thompson, completed in 2012 with the effective date of registration of August
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`11, 2017.
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`Plaintiff alleges unauthorized use by Defendants of his registered works in the accused
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`games: NBA 2K16, 2K17, 2K18, 2K19, 2K20 and NBA 2KMobile. Plaintiff contends that
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`his works are copied every time a game is played. It is undisputed that the realistic avatars of
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`the NBA players in the accused games bear the physical features and likeness of each player,
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`including their tattoos. In the Answer (ECF DKT #35 at ¶¶ 136, 142 & 147), Defendants
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`admit that the accused games “include realistic depictions of NBA players including the
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`tattoos that they have in real life.” Plaintiff asserts that sales of these games have generated
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`over $4.2 billion in revenue.
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`Plaintiff moves for judgment in his favor on the issues of: (1) copyright ownership
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`and (2) copying by Defendants of the works protected by his copyrights. Defendants argue
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`that Plaintiff’s Tattoos are not sufficiently original to qualify for copyright protection.
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`Defendants assert defenses of fair use, de minimis use and implied license or authorization. In
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`addition, Defendants contend that Plaintiff is not entitled to certain remedies.
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`The Court has before it the parties’ Cross Motions, Oppositions and Replies, as well as
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`a Supplemental Opposition Brief and Supplemental Reply Brief.
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` II. LAW AND ANALYSIS
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`Summary Judgment Standard of Review
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`Summary judgment shall be granted only if “the movant shows that there is no
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`genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
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`law.” See Fed.R.Civ.P. 56(a). The burden is on the moving party to conclusively show no
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`genuine issue of material fact exists. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986);
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`Lansing Dairy. Inc. v. Espy, 39 F.3d 1339, 1347 (6th Cir. 1994). The moving party must
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`either point to “particular parts of materials in the record, including depositions, documents,
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`electronically stored information, affidavits or declarations, stipulations, admissions,
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`interrogatory answers, or other materials” or show “that the materials cited do not establish
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`the absence or presence of a genuine dispute, or that an adverse party cannot produce
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`admissible evidence to support the fact.” See Fed.R.Civ.P. 56(c)(1)(A), (B). A court
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`considering a motion for summary judgment must view the facts and all inferences in the light
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`most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
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`475 U.S. 574, 587 (1986). Once the movant presents evidence to meet its burden, the
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`nonmoving party may not rest on its pleadings, but must come forward with some significant
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`probative evidence to support its claim. Celotex, 477 U.S. at 324; Lansing Dairy, 39 F.3d at
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`1347.
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`This Court does not have the responsibility to search the record sua sponte for genuine
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`issues of material fact. Betkerur v. Aultman Hospital Ass 'n., 78 F.3d 1079, 1087 (6th Cir.
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`1996); Guarino v. Brookfield Township Trustees, 980 F.2d 399, 404-06 (6th Cir. 1992). The
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`burden falls upon the nonmoving party to “designate specific facts or evidence in dispute,”
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50 (1986); and if the nonmoving party
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`fails to make the necessary showing on an element upon which it has the burden of proof, the
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`moving party is entitled to summary judgment. Celotex, 477 U.S. at 323. Whether summary
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`judgment is appropriate depends upon “whether the evidence presents a sufficient
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`disagreement to require submission to a jury or whether it is so one-sided that one party must
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`prevail as a matter of law.” Amway Distributors Benefits Ass 'n v. Northfield Ins. Co., 323
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`F.3d 386, 390 (6th Cir. 2003) (quoting Anderson, 477 U.S. at 251-52).
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`Copyright Registration and Presumption of Validity
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`To ultimately succeed on a claim of copyright infringement, a claimant must establish
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`(1) ownership of a valid copyright, and (2) “copying of constituent elements of the work that
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`are original.” Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361 (1991).
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`(Emphasis added).
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`Pursuant to 17 U.S. C.§ 410:
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`(c) In any judicial proceedings the certificate of a registration made before or
`within five years after first publication of the work shall constitute prima facie
`evidence of the validity of the copyright and of the facts stated in the
`certificate. The evidentiary weight to be accorded the certificate of a
`registration made thereafter shall be within the discretion of the court.
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`This presumption of validity is rebuttable, and once the plaintiff introduces evidence
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`of the registration within five years of publication, the burden shifts to the defendant to
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`present evidence that the copyrights are invalid. Varsity Brands, Inc. v. Star Athletica, LLC,
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`799 F.3d 468, 477 (6th Cir. 2015).
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`Plaintiff has provided uncontested registration certificates for the six Tattoos at issue
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`here. (ECF DKT #93-5 through #93-10). In order to be afforded the presumption of validity,
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`the applicable statute requires evidence of registration within five years of publication.
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`Defendants contend that the works (Tattoos) were published on the date of their completion.
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`Plaintiff does not concede that the works have been published.
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`The Copyright Act defines “publication” in relevant part as “the distribution of copies
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`or phonorecords of a work to the public by sale or other transfer of ownership, or by rental,
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`lease, or lending” or “[t]he offering to distribute copies or phonorecords to a group of persons
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`for purposes of further distribution[.]” 17 U.S.C. § 101.
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`The Copyright Office explains that “publication” occurs where “the offeror”—the
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`copyright owner or someone with their authority—“has completed all the steps necessary for
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`distribution to the public, such that the only further action required is an offeree's action in
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`obtaining a copy or phonorecord[,]” but not where distribution of copies “requires additional
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`action by the offeror.” U.S. Copyright Office, Compendium of U.S. Copyright Office
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`Practices §§ 1902, 1906.1 (3d ed. 2021).
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`Copyright protection exists for “original works of authorship fixed in any tangible
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`medium of expression,” including “pictorial, graphic, and sculptural” works. 17 U. S.C.
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`§ 102(a). A work is “fixed” in a tangible medium of expression “when its embodiment in a
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`copy . . . is sufficiently permanent or stable to permit it to be perceived, reproduced, or
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`otherwise communicated for a period of more than transitory duration.” 17 U.S.C. § 101.
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`According to the Declarations of Plaintiff and of LeBron James, Danny Green and
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`Tristan Thompson, the six Tattoos were “fixed” once the process of inking the players’ bodies
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`was completed. Plaintiff declares: “ I create body art to display on people.” (ECF DKT
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`#109-49). When James, Green and Thompson left Plaintiff’s business premises, they believed
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`the Tattoos were a permanent part of their bodies and likenesses which they could freely
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`display to the public. (ECF DKT #95-2, #95-3, #95-4).
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`The Court finds that the six Tattoos are sufficiently permanent and not transitory. No
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`additional action by the copyright owner is necessary. Therefore, the Court concludes that
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`“publication” occurred on the date of completion for each of the six works.
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`Upon review of the Registrations, “Fire D.G.”, “Scroll D.G.” and “Brother’s Keeper
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`T.T.” were registered within five years of their publication. The “Gloria”, “Lion” and
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`“Shoulder Stars” tattoos on LeBron James were registered well outside of the five-year period.
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`Nevertheless, Plaintiff has provided sufficient evidence to prove ownership of the copyrights.
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`Further, there has been no suggestion of misfeasance or fraud on the Copyright Office.
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`In the exercise of its discretion (17 U.S.C. § 410(c)), the Court accords the
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`presumption of validity to all six of Plaintiff’s Registered Tattoos.
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`Original Works
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`Copyright protection under the Copyright Act of 1976 extends only to “original works
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`of authorship.” 17 U.S.C. § 102(a). (Emphasis added).
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`Defendants argue that Plaintiffs’ Tattoos are not protected under Copyright Law. For
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`example, Plaintiff claims ownership of works belonging to others: The “Brother’s Keeper”
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`Tattoo was copied from Michelangelo’s Sistine Chapel fresco, “The Creation of Adam” and
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`the accompanying quoted phrase is from the Bible story of Cain and Abel. The “Lion” Tattoo
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`is copied from the logo on a playing card from the Venetian Resort in Las Vegas which
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`LeBron James provided to Plaintiff. Moreover, Defendants contend that Plaintiff cannot
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`claim ownership of common geometric shapes like stars or common elements like flames or
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`clouds which are added to existing tattoos inked by a different artist.
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`“Originality remains the sine qua non of copyright; accordingly, copyright protection
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`may extend only to those components of a work that are original to the author.” Feist, 499
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`U.S. at 345. Originality is both statutorily and constitutionally required for copyright
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`protection. Feist, 499 U.S. at 345–46 (quoting U.S. Const. art. 1, § 8, cl. 8). To be original, a
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`work must (1) have been “independently created by the author (as opposed to copied from
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`other works),” and (2) “possess[ ] at least some minimal degree of creativity.” Id. at 345.
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`“Some minimal degree of creativity,” or “the existence of . . . intellectual production, of
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`thought, and conception” is required for copyright protection. JCW Investments, Inc. v.
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`Novelty, Inc., 482 F.3d 910, 914-15 (7th Cir. 2007) (quoting Feist, 499 U.S. at 362).
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`In his Declaration (ECF DKT #109-49 at ¶ 9), Plaintiff states that the process from a
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`client’s idea to the end result requires “countless artistic decisions, including as to the precise
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`shape, style, expression, shading, line thickness, density, color, and orientation on the
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`shoulder, to name just a few, each carried out through countless artistic and creative acts.
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`Inking a quality tattoo on a body requires significant perception, vision, dexterity, and skill,
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`given a human body’s irregular surface.”
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`The Supreme Court has instructed that a work can be original, even if it is not “novel.”
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`The level of creativity required for originality is “extremely low” and “even a slight amount
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`will suffice.” Feist, 499 U.S. at 345. “The vast majority of works make the grade quite
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`easily, as they possess some creative spark, no matter how crude, humble or obvious it might
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`be.” Id.
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`With that guidance in mind, the Court finds that Plaintiff’s works are original and
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`entitled to protection. Therefore, Plaintiff’s Motion for Partial Summary Judgment is granted
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`only to the extent that he owns presumptively valid, protectable copyrights in the Tattoos.
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`Now, the burden shifts to Defendants — whether there is actionable copying in light of their
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`defenses.
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`Defendants’ Motion
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`Defendants do not dispute that the NBA Players’ tattoos are included on the bodies of
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`the avatars in NBA 2K in order to accurately and realistically depict their likenesses.
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`“Take-Two’s purpose was to replicate the NBA Players exactly as they really look, from their
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`physical appearance (hair, blemishes, skin color, size, etc.) down to their moves and skills.”
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`(Supplemental Reply Brief, ECF DKT #162 at 10). That constitutes factual copying; but
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`Defendants argue that Plaintiff cannot establish actionable copying.
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`In their Motion for Summary Judgment, Defendants contend that the accurate and
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`realistic depiction of the NBA players in the NBA 2K video games was fair use, implicitly
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`authorized and de minimis.
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`De Minimis
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`Defendants argue that it is unlikely that the average user will choose the three players
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`with the Copyrighted Tattoos. If these players indeed are selected, the display of the Tattoos
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`is small and difficult to discern on rapidly-moving figures in a fast-moving game.
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`“To establish that a copyright infringement is de minimis, the alleged infringer must
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`demonstrate that the copyright of the protected material is so trivial ‘as to fall below the
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`quantitative threshold of substantial similarity, which is always a required element of
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`actionable copying.” Gordon v. Nextel Commc'ns & Mullen Advert., Inc., 345 F.3d 922, 924
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`(6th Cir. 2003). Courts consider “the amount of the copyrighted work that was copied, as well
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`as the observability of the copyrighted work in the allegedly infringing work.” Id.
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`Courts also look to “whether so much has been taken as would sensibly diminish the
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`value of the original,” and “whether the labors of the party entitled to copyright are
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`substantially to an injurious extent appropriated by another author.” Mathews Conveyor Co.
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`v. Palmer-Bee Co., 135 F.2d 73, 85 (6th Cir. 1943).
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`When dealing with visual images, courts measure observability through factors like
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`“focus,” “lighting,”, “camera angles” and the “prominence” of the copied image within the
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`infringing work. See Ringgold v. Black Entertainment TV, 126 F.3d 70, 75 (2d Cir. 1997). A
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`de minimis defense will fail if substantial similarity between the copyrighted work and the
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`infringing work is apparent to the “average lay observer.” Id. at 77.
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`Defendants admit that their goals are accuracy and realism; so, the players’ images are
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`replicated to the highest degree possible. Whether the Tattoos are observable and whether the
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`Defendants’ replication diminishes the original works are questions of fact for the jury.
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`Fair Use
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`Copyrights provide an incentive for the creation of works by protecting the
`owner's use of his or her intellectual creation, allowing creators to reap the
`material rewards of their efforts. However, because not every use of a work
`undermines this underlying rationale of copyright law, and because some uses
`of copyrighted works are desirable for policy reasons, the courts have long held
`that many uses of a copyrighted work do not infringe upon the copyright.
`National Rifle Ass’n of America v. Handgun Control Federation of Ohio, 15 F.3d 559, 561
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`(6th Cir. 1994).
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`These “fair use” principles are codified in 17 U.S.C. § 107:
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`[T]he fair use of a copyrighted work, including such use by reproduction in
`copies or phonorecords or by any other means specified by that section, for
`purposes such as criticism, comment, news reporting, teaching (including
`multiple copies for classroom use), scholarship, or research, is not an
`infringement of copyright. In determining whether the use made of a work in
`any particular case is a fair use the factors to be considered shall include—
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`(1) the purpose and character of the use, including whether such use is of a
`commercial nature or is for nonprofit educational purposes;
`(2) the nature of the copyrighted work;
`(3) the amount and substantiality of the portion used in relation to the
`copyrighted work as whole; and
`(4) the effect of the use upon the potential market for or value of the
`copyrighted work.
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`“The four factors enumerated are especially relevant to the determination of whether
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`fair use occurred, but they are not meant to exhaust the possible considerations.” National
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`Rifle, id., citing Harper & Row Publishers v. Nation Enter., 471 U.S. 539, 560 (1985).
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`“Likewise, the purposes listed in the preamble are illustrations of the sorts of uses likely to
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`qualify as fair uses rather than an exclusive list.” National Rifle, 15 F.3d at 561, citing Pacific
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`and Southern Co. v. Duncan, 744 F.2d 1490, 1494–95 (11th Cir.1984), cert. denied, 471 U.S.
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`1004, 105 S.Ct. 1867, 85 L.Ed.2d 161 (1985).
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`“Fair use is a mixed question of law and fact.” Harper & Row, 471 U.S. at 560. In
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`addition, fair use is an “open-ended and context-sensitive inquiry.” Blanch v. Koons, 467
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`F.3d 244, 251 (2d Cir. 2006).
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`Purpose and Character of Use
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`For this first factor, the Court examines whether Defendants’ use is transformative and
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`whether the use has a commercial purpose.
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`The Supreme Court instructs that a work is transformative where it “adds something
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`new, with a further purpose or different character, altering the first with new expression,
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`meaning, or message.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994); Andy
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`Warhol Found. for Visual Arts, Inc. v. Goldsmith, 11 F.4th 26, 37 (2d Cir. 2021).
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`Defendants assert that player accuracy, including accurate tattoos, is central to the
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`realism of the NBA 2K video games. Defendants argue that they have created NBA 2K to be
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`a virtual world which closely mirrors the real world, utilizing graphics, characters, gameplay
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`and music. The Tattoos are just one of many visual features composing the simulated
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`basketball games. The Tattoos in the video games are displayed in a reduced size. Since the
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`players are shown at a fraction of their real-life size, the Tattoos are displayed proportionately
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`smaller than their actual dimensions. Additionally, the Tattoos only appear on three players
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`out of more than 400 players available in the games. In the instance of the “Lion” Tattoo and
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`the “Brother’s Keeper” Tattoo, they arguably do not appear in the games because they are
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`covered by the players’ jerseys. One of Defendants’ experts, Dr. Ian Bogost, is prepared to
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`testify that the Tattoos comprise only a fraction of the total file size of NBA 2K.
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` Defendants’ purpose of creating realism and accuracy is distinguishable from
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`Plaintiff’s aims. As previously noted, Plaintiff creates body art to display on people. The
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`NBA Players ask Plaintiff to ink certain images on their bodies as a form of personal
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`expression and to represent people and things that are meaningful and significant in their
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`lives.
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`The other prong of the first fair use factor requires analysis of whether or not
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`Defendants’ use is commercial. It is undisputed that Defendants’ purpose in developing and
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`marketing the NBA 2K video games is commercial; so, the use of the Tattoos in the games is
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`commercial. However, Defendants contend that the evidence will show that consumers do not
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`buy NBA 2K video games for the Tattoos.
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`Defendants insist that their use of Plaintiff’s original work is transformative, i.e., NBA
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`2K alters the original with “new expression.” Defendants’ ultimate purpose is realism;
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`whereas Plaintiff created body art and imagery which hold personal meaning for the three
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`NBA Players. Even if commercialism is conceded, “the more transformative the new work,
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`the less will be the significance of other factors, like commercialism, that may weigh against a
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`finding of fair use.” Campbell, 510 U.S. at 578.
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`Plaintiff contests Defendants’ characterization of the Tattoos’ minimal size and
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`relation to the whole video game. Plaintiff maintains that the Tattoos are accurately and
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`prominently displayed and can be clearly viewed by the users of the NBA 2K video games.
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`Plaintiff argues that the evidence will show that because consumers purchase the games for
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`the Tattoos, Defendants are commercially benefitting from their infringement.
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`In assessing the fair use defense, reasonable jurors could disagree about whether – or
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`to what extent – Defendants’ use is transformative and what weight should be accorded to
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`commercialism.
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`Nature of the Copyrighted Work
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`The second fair use factor requires the Court to consider the “nature of the copyrighted
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`work,” including whether (1) it is “expressive or creative ... or more factual, with a greater
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`leeway being allowed to a claim of fair use where the work is factual or informational,” and
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`(2) “the work is published or unpublished, with the scope of fair use involving unpublished
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`works being considerably narrower.” Andy Warhol Found., 11 F.4th at 45.
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`Plaintiff’s work is, without question, expressive and creative rather than factual and
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`informational. This aspect weighs in Plaintiff’s favor. The parties dispute whether the
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`Registered Tattoos are published; but the Court has made the determination for validity
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`purposes that they were published once the NBA Players left Plaintiff’s establishment with the
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`Tattoos affixed to their bodies. Thus, publication favors Defendants’ position.
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`Amount and Substantiality of Use
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`This factor considers not only “the quantity of the materials used” but also “their
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`quality and importance” in relation to the original work. TCA Television Corp. v. McCollum,
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`839 F.3d 168, 185 (2d Cir. 2016) (quoting Campbell, 510 U.S. at 587). Admittedly, the
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`Tattoos are a small part of a larger graphic display; they appear much smaller than in real life.
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`Defendants insist that the Tattoos are hardly discernible during gameplay, among the many
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`fast-moving images of players, their jerseys, officials, spectators, coaches and arenas. The
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`Tattoos are used in their entirety; but the degree of observability is up to the jury, as is the
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`importance of their use to the video game as a whole.
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`Effect on Potential Market
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`The analysis of the fourth factor of fair use is: “Whether the copy brings to the
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`marketplace a competing substitute for the original, or its derivative, so as to deprive the
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`rights holder of significant revenues because of the likelihood that potential purchasers may
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`opt to acquire the copy in preference to the original.” Authors Guild v. Google, Inc., 804 F.3d
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`202, 222 (2d Cir. 2015).
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`Plaintiff bears the burden of showing that there is a potential market for the use of the
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`Tattoos as they appear in Defendants’ video games. The relevant question is whether the
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`infringement impacted the market for the copyrighted work itself. See Sony Corp. of Am. v.
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`Universal City Studios, Inc., 464 U.S. 417, 450 (1984) (“[A] use that has no demonstrable
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`effect upon the potential market for, or the value of, the copyrighted work need not be
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`prohibited in order to protect the author's incentive to create.”); see also Campbell, 510 U.S.
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`at 590 (the question is “whether ‘unrestricted and widespread conduct of the sort engaged in
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`by the defendant ... would result in a substantially adverse impact on the potential market’ for
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`the original.”).
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`Defendants deny that there is a market for Plaintiff’s Tattoos as they appear in the
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`NBA 2K games and argue that their replication of the Tattoos on the player avatars in the
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`games is no substitute for the originals. “And because the Tattoos appear digitally on NBA
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`Players in a video game, they are no substitute for a tattoo on real human skin—which is what
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`Plaintiff sells.” (Supplemental Reply, ECF DKT#162 at 13).
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`Defendants’ use of the entirety of the six Registered Tattoos weighs in favor of
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`Plaintiff; but since a jury could find that the likelihood is less that someone might choose to
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`acquire tattoos from Defendants’ video games, rather than obtain tattoos from Plaintiff, that
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`evidentiary weight is reduced. The burden of proving a potential market remains with
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`Plaintiff and genuine factual disputes are within the jury’s purview.
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`Implied Use or Authorization
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`Defendants contend that their use of the Tattoos in the NBA 2K video games was
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`authorized. The Copyright Act prohibits only unauthorized use, 17 U.S.C. §§ 106, 501; so a
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`“copyright owner waives the right to sue . . . for uses of copyrighted material that are
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`authorized.” Great Minds v. FedEx Office & Print Servs., Inc., 886 F.3d 91, 94 (2d Cir.
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`2018).
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`The evidence shows that the NBA Players requested the Tattoos, paid for them and left
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`to go about their lives, without requiring further permission from Plaintiff to display his work
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`on their bodies. The NBA Players gave the NBA and NBA Players Association the right to
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`license their likenesses (including the Tattoos) to third parties, which those organizations in
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`turn licensed to Defendants. The evidence further shows that Danny Green, LeBron James
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`and Tristan Thompson have appeared in NBA 2K since well before the Tattoos were
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`registered and before this lawsuit was filed.
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`Although Plaintiff disputes any license or authorization, he acknowledges in his
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`Declaration (ECF DKT #109-49) at ¶ 29: “There are many ordinary examples in my clients’
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`lives that may involve showing the tattoos I have created and inked that I would not take issue
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`with, including appearing in public, on stage or in a game, or being photographed, or even
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`appearing on television, for example.”
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`In his Opposition Brief (ECF DKT #109 at 27) and in his Declaration (ECF DKT
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`#109-49 at ¶ 27), Plaintiff counters that he did not know that digital avatars of the Players
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`bearing copies of the Tattoos would appear in video games; the Players did not tell him that
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`their digital avatars, including tattoos, would appear in video games; and they did not tell him
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`that they intended to authorize third-parties to reproduce the Tattoos in video games.
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`Therefore, Plaintiff insists that he did not intend to grant any such license.
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`“An implied license is an unwritten license to use a work that the court infers from the
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`circumstances and from the conduct between the parties.” Melanie Howard Music, Inc. v.
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`Warner Brothers Records, Inc., No. 3:08-0979, 2009 WL 3784611, at *5 (M.D. Tenn. Nov.
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`10, 2009) (citing Bridgeport Music, Inc. v. WM Music Corp., 508 F.3d 394, 398–99 (6th Cir.
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`2007)).
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`“Not only is the parties’ conduct important, but also anything that colors that conduct,
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`including the parties’ expressions of intent, Johnson v. Jones, 149 F.3d 494, 500–01 (6th Cir.
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`1998), and the greater context that surrounds their agreement. Jeffrey A. Grusenmeyer &
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`Assoc., Inc. v. Davison, Smith & Certo Architects, Inc., 212 Fed.App'x 510, 514 (6th Cir.
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`2007) (noting that courts should examine the “totality of the circumstances”).” Navarro v.
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`Procter & Gamble Company, 515 F.Supp.3d 718, 769 (S.D. Ohio 2021).
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`“The key to finding an implied license is in the intent of the copyright holder. Like an
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`express license, the existence of an implied license to use the copyright for a particular
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`purpose precludes a finding of infringement.” Murphy v. Lazarev, 589 Fed.App’x. 757, 765
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`(6th Cir. 2014)(internal citations and quotations omitted).
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`“In other words, where the objective evidence leads to the conclusion that the
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`copyright owner intended the defendant to use the copyrighted work, the copyright owner
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`should not later be able to sue for copyright infringement for that use.” Mahavisno v.
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`Compendia Bioscience, Inc., 164 F. Supp.3d 964, 968-9 (E.D. Mich. 2016).
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`The jury will need to consider the evidence presented at trial and ascertain whether or
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`not Plaintiff intended to authorize or license third-party use of his Registered Tattoos. Intent
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`is a fact question.
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`Availability of Certain Remedies
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`In their Motion for Summary Judgment, Defendants contend that Plaintiff is not
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`entitled to claim statutory damages and attorney’s fees. Defendants point to the evidence
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`showing that the first game accused of infringement, NBA 2K16, was released on
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`approximately September 29, 2015, and that all of the Tattoos were in that game before this
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`lawsuit was filed. Moreover, Plaintiff did not apply for Copyright Registrations in the Tattoos
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`until September 2016 and August 2017.
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`The Copyright Act provides in pertinent part:
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`17 U.S.C. § 504 Remedies for Infringement; Damages and Profits
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`(a) In General.--Except as otherwise provided by this title, an infringer of copyright is
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`liable for either--
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`(1) the copyright owner's actual damages and any additional profits of the infringer, as
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`provided by subsection (b); or
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`(2) statutory damages, as provided by subsection (c).
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`* * * * * *
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`(c) Statutory Damages.--
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`(1) Except as provided by clause (2) of this subsection, the copyright owner may
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`elect, at any time before final judgment is rendered, to recover, instead of actual
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`damages and profits, an award of statutory