Court Decision Emphasizes Importance of Copyright Registration
BY JERRY GLOVER
AUGUST 22, 2016
The U.S. Copyright Act does not require registration in the U.S. Copyright Office of copyrightable material in order to receive copyright protection. But a recent federal district court ruling in New York illustrates why registration should be a routine practice for copyright owners. Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-cv-724 (S.D.N.. August 2, 2016).
In this case, 2K games had created several versions of a basketball simulation video game entitled NBA 2K. The first version was released in 2013 (NBA 2K14) and the second in 2014 (NBA 2K15). In September, 2015 2K released NBA 2K16. In all of these video games simulations of real life basketball players were used. Those simulations included reproductions and displays of eight actual tattoo designs inked on five different NBA players. In the 2016 version, 2K used improved graphics and smoother looking basketball player characters. In addition, the tattoo designs on the game’s simulated players were more individualized than in previous editions.
In 2012, the plaintiff in this case entered into copyright license agreement with the artists who designed the tattoos used in the video games. Those licenses granted all rights in and to the designs to Solid Oak including the right to sue for infringement. In June and July, 2015 Solid Oak received certificates of registration for each tattoo design from the U.S. Copyright Office.
Solid Oak tried to discuss the alleged tattoo infringements but 2K walked away from the discussions and continued to produce the video games. Plaintiff sued for infringement of the tattoo designs.
The Copyright Act requires a copyright owner to register the owner’s copyrightable material in the U.S. Copyright Office prior to filing an infringement suit. But registration provides several benefits to the owner. The Act allows a plaintiff to select the type of damages he/she seeks from the defendant. Section 504(a) of the Act states that a copyright owner can seek either actual damages and profits of the infringer or statutory damages. Since it is often difficult to provide damages caused by copyright infringement, many copyright owners elect to receive statutory damages. Statutory damages set out minimum and maximum monetary awards if the plaintiff proves to be successful at trial. Section 505 of the Act also allows for the prevailing party to receive an award of reasonable attorneys’ fees.
But in order to receive statutory damages and attorneys’ fees, the copyright owner must have registered the material in question before the infringement occurs. In most instances, statutory damages and attorneys’ fees will be denied if the infringement begins before registration and continues after registration. This is the rules courts in the Southern District of New York have adopted. In this case, Solid Oak did not register the tattoo designs until 2015. Two versions of the video game had already been released prior to that registration. The plaintiff argued that the 2016 version of the game had been released after Solid Oak registered the designs so that statutory damages/attorneys’ fees were available.
But the court ruled against the plaintiff. It noted that previous decisions had allowed statutory damages/attorneys’ fees to be sought if the time between infringements was significant or appreciable. One case cited by the court involved a period of 10 years between infringements. See Troll Co. v. Uneeda Doll Co., 483 F.3d 150 (2d Cir. 2007). Here there was only a one year between the registration of the designs in June and July of 2015 and the release of the 2016 version of the game in September of 2015. The court held this period of several months was not an appreciable period of time.
Solid Oak also argued that the 2016 version of the game was different in its look from the 2014 and 2015 versions. Therefore, the 2016 version was a separate infringement of the tattoo designs and not a continuing series of infringements that started with the 2014 version. But, again, the court disagreed. It noted that the only differences in the 2016 version included updates to the title and visual and graphic improvements.
TAKE AWAY: Even though registration is not required to obtain copyright protection, do not fail to register your copyrightable material in the U.S. Copyright Office. It can be done online at www.copyright.gov for very little money. Failure to register can lead to your inability to file a lawsuit. Failure to register as soon as possible can lead to you not being able to elect statutory damages or, if you are the prevailing party in an infringement action, your reasonable attorneys’ fees.