In terms of “return on investment,” the $55 fee of the Copyright Office to register a copyright is hard to beat.  Not only is registration generally a prerequisite to enforce a copyright, but failure to promptly register a copyright can significantly impair a copyright owner’s ability to obtain monetary relief in an amount sufficient to make enforcement economically worthwhile.  A “cautionary tale” will follow, but first…

What’s He Talking About?

Let’s review the basics of copyright damages. A successful plaintiff in a copyright infringement suit may have several monetary remedies available.  First, they may be able to recover actual damages suffered as a result of the infringement, and any profits of the infringer that are attributable to the infringement.  For copyrights that have little actual economic value, however, a plaintiff’s actual damages and the defendant’s profits may be nil or insubstantial.  At its discretion, a court may also award a prevailing party its costs and reasonable attorney’s fees.

As an alternative to actual damages and profits, a plaintiff can instead seek to recover “Statutory Damages,” which can be anywhere between $750-$30,000 for any one work.  [Although not relevant to this post, a distinction should be made between “any one work”—i.e., the copyright that is claimed—and infringing copies of that work, of which there may be many.]  If a plaintiff proves that the infringement was “willful,” a court can raise the statutory damage “ceiling,” to up to $150,000 per work. (The “floor” amount can also be reduced below $750, in certain circumstances.)

But, there’s a “catch”—in order for statutory damages to be available, and subject to certain exceptions, a plaintiff must have registered its copyright before infringement began.  And so, we begin our tale…

NBA 2K on the Court [of Law]

2K Games, Inc. (“2K Games”) and Take-Two Interactive Software, Inc. (“Take-Two”) make and sell the popular basketball video game “NBA 2K.”  The game’s depiction of actual NBA players attempts to be as accurate as possible, going so far as to replicate the players’ tattoos.  Such tattoos could be seen in versions of the game released in 2013 & 2014.

Of course, the real-world players got their tattoos somewhere—in this case, from tattoo artists who, in 2012, licensed the copyrights in the tattoo designs to Solid Oak Sketches, LLC (“Solid Oak”).  (Note, the designs are protectable because they are works of visual art fixed in a tangible medium).  Shortly after Solid Oak registered the copyrights in the designs in 2015, it contacted 2K Games and Take-Two and alleged that the depictions of the players’ tattoos in the video game infringed Solid Oak’s copyrights.  2K Games and Take-Two eventually broke off ensuing negotiations with Solid Oak and subsequently released another version of the game, which also depicted each player and his tattoo(s), and in even more detail than before. Solid Oak had had enough and sued for infringement in federal court in New York.

Although the suit is ongoing, a judge has already granted 2K Games’ and Take-Two’s request to take statutory damages “off of the table.”  Why? Well, if the italics above didn’t tip you off, Solid Oak registered the copyrights in 2015, well after the acts of infringement (the 2013 & 2014 games).  In this particular court, of note, if infringement begins before registration, statutory damages are not available, even if the infringement is on-going and continues until after registration.  So, no statutory damages could be claimed in this case.  “But wait,” said Solid Oak, “What about the version of the game released after we registered?” The Court’s response—“When the same defendant infringes on the same protected work in the same manner as it did prior to the work’s registration, the post-registration infringement constitutes the continuation of a series of ongoing infringements.”  Translation: since the same copyrights were infringed in the new game as in the old games, by the same defendants, and an insignificant amount of time had passed between the releases of the three versions, the latest game was tacked on to the ongoing infringement that had begun prior to registration; thus, no statutory damages.

Moral of the Story

If you create a work, or otherwise believe that you have an ownership interest in a copyright, you should promptly register those rights.  If you’re not sure what is protected by copyright, you should consult with an attorney experienced in the field—for instance, we here at Danielson Legal have significant experience in copyright matters, including counseling, registration, licensing and enforcement of the associated rights. If Solid Oak had registered the copyrights when it licensed them in 2012 (i.e., before infringement began), statutory damages very well may have been available in this case, which could have significantly increased the damages Solid Oak would receive if victorious.

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