Copyright and Tattoos
Discussing the current legal trends in protecting the rights granted in the creation of tattoos.
Presented by: Delia Ramirez Of Counsel at Hakimi Law, PC [email protected] P: 415-255-4503
Overview
Copyright Overview Defenses How to obtain copyright De minimis Rights granted Implied License Fair Use Copyright as it relates to tattoos Initial Cases Copyrightable? Rasheed Wallace – Nike Commercial Rights for tattoos Mike Tyson – Hangover 2 Ownership vs. Authorship Carlos Condit – Video Game Types of Authorship NFL cases – Madden NFL 10 & 11 Ownership Current litigation
Copyright Infringement Solid Oaks Sketchest vs. 2K Games, et al. What is copyright infringement James Haydan v. 2K Games, et al.
Possible impact on entertainment industry How to obtain Copyright **Protects original works of authorship fixed in a tangible medium of expression. 1. Original 2. Fixed into medium 3. Expression 4. Protected Category– 8 types Ex: Literary works, musical works, pictorial and graphical works.
Protects for life of author plus 70 years unless WFH or Corporation
Registration required?
No – protection
Yes – file suit, statutory damages, attorney fees http://www.wpdlegal.com/wp-content/uploads/2017/04/Copyright-All-Rights-Reserved.jpg
BUNDLE OF RIGHTS
17 U.S. Code §106 – Exclusive rights of Author Visual Artist Rights Act (1990) §106A- (Owner) of work disclosure or divulgation, which allows Reproduce the copyright work in copies the artist to determine when a work is complete and may be displayed; Prepare derivative works based upon the copyright work paternity or attribution, which allows an Distribute copies of the copyrighted work to the artist to protect the identification of his public by sale name with his own work, and to disclaim it when applied to another's; In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion the right of withdrawal, which permits pictures and other audiovisual works, to perform the the artist to modify or withdraw a work copyrighted work in public following publication; and in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, integrity, which allows the artist to graphic, or sculptural works, including the individual prevent his work from being displayed in images of a motion picture or other audiovisual an altered, distorted, or mutilated work, to display the copyrighted work publicly; and form. In case of sound recordings, to perform the work publicly by means of digital audio transmission
Is a Tattoo Copyrightable?
tattoo is an indelible mark or figure fixed Copyright category? upon the body by insertion of pigment under the skin or by production of scars Pictorial (Webster’s Dictionary) Copyrightable? Absolutely Original, Creative Fixed
Google Image Search 1/22/18 – Water Color Tattoos Authorship vs. Ownership
Author and owner of the copyright are not always the same person/people. Author = mastermind of the work; superintended the whole work Single author –the author themselves unless otherwise agreed to OR a Work-For-Hire. Joint Authors – two people that work together and intend to have a joint work – Equal rights unless otherwise agreed to Work for Hire – the author is not the owner of the copyright. Rather it’s the person who hired the artist. (Two types) http://www.clipartpanda.com/clipart_images/famous-author-has-been-the-59701059
Work for Hire – Employee Employee within the scope of their employment. – No written agreement needed!
1. Employee – Where employer is actually “directing, or supervising the creation of the work” Factors: Control, Skill required to do the work▪︎source of tools/materials used to do work▪︎ duration of the relationship▪︎can hiring body assign other projects to worker▪︎who determines the duration of the work▪︎methods of payment▪︎who decides when assistants can be hired/who pays them▪︎ is work in ordinary line of business for hiring body▪︎ is creator in business for themselves
Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989).
2. Scope of Employment
1. Is this the type of work that employee is paid to perform?
2. Did the work occur substantially within work hours and/or at the work place?
3. Was the work served in part for the employer? Work for Hire – Commissioned Project
17 U.S.C §101 – Following criteria must be met: 1. Commissioned – Created at the request of someone; 2. Created under a written and signed agreement; and 3. Created for the use in one of the following: Motion picture or audiovisual work – Most common for musicians. Ex: musical score, title song written for films, etc.
Collective work – Collection of individual works such as an anthology, encyclopedia
Compilation – work made by compiling a bunch of things
Translation of a foreign work
Supplementary work
instructional text
a test
as answer material for a test, or https://translatorsdigest.files.wordpress.com/2015/06/contract.jpg
as an atlas
Copyright Infringement & Common Defenses
17 U.S.C. §501 Exploiting any of the exclusive rights of the copyright without the owners permission
Distribute, Copy, Create derivative work, Perform, Display, Perform through digital transmission (Ex: non-interactive Internet radio) Prove
Access
Copy/Substantial Similarity No intent needed IMPORTANT: Make sure that work is registered with the copyright office before an infringement occurs. Common Defenses in Tattoo industry: Implied License, Fair Use, and de minimis
De minimis
The principle that copyright infringement is “not actionable” where “the copying of the protected material is so trivial as to fall below the quantitative threshold of substantial similarity.”
Test: Observability of protectable elements in the allegedly infringing work from the perspective of the average lay person.
Sandoval v. New Line Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998) (Case based on movie “Seven”)
Tw o Factors:
length of time the copyrighted work appears in the allegedly infringing work; and
https://geekynerfherder.blogspot.com/2012/07/movie- its prominence in that work as revealed by the lighting and positioning of poster-art-se7en-1995.html the copyrighted work
Implied License
Orally or written 3 prong test set forth by 9th Circuit: (1) Licensor created the work at licensees request, (2) delivered the work to the licensee, and (3) intended for the licensee to distribute and copy the work. Main prong is INTENT. Industry Standard – Tattoo artists have conceded to the implied license to tattoo bearers as they live their life. http://www.thegloss.com/culture/celebrities-beat-the-paparazzi- pranks/ Celebrities – Display, distribution and copying are inevitable to an extent Fair Use
17 U.S.C. 107 - the 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—
(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 a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
Past Cases
Reed v. Nike, Inc., No. 3:05-CV-00198 (D. Or. Feb. 10, 2005), dismissed, (D. Or. Oct. 19, 2005) https://i.ytimg.com/vi/bXPhGf8Bi74/hqdefault.jpg https://www.youtube.com/watch?v=bXPhGf 8Bi74 Whitmill v. Warner Bros. Entm’t Inc., No. 4:11-CV-752 CDP (E.D. Mo. Apr. 28, 2011), dismissed (E.D. Mo. June 22, 2011) Escobedo v. THQ, Inc., No. 2:12-CV-02470- JAT (D. Ariz. Nov. 16, 2012), dismissed (D. Ariz. Dec. 11, 2013) http://latimesblogs.latimes.com/.a/6a00d8341c630a53ef01543330fe6f970c-pi Allen v. Electronic Arts, Inc., No. 5:12-CV- 3172 (W.D. La. Dec. 31, 2012), dismissed (W.D. La. Apr. 9, 2013) http://mmapayout.co m/wp- content/uploads/2013 /09/Condit-tattoo.jpg Solid Oaks Sketches, LLC v. 2K Games, Inc., et al. Case NO. 1:16-cv-724-LTS-RLE
https://media.operationsports.com/shots/1454375808-media.jpg James Hayden v. 2K Games, Inc and Take Two Interactive Software, Inc. Case No: 1:17-cv-02635
Photo from Hayden Complaint The Future Impact
https://cdn.massagemag.com/wordpress/wp-content/uploads/AFMTE-News-Slider-7-30-15.jpg Questions?
Delia Ramirez Of Counsel at Hakimi Law, PC [email protected]
Case 1:16-cv-00724-LTS-RLE Document 77 Filed 08/09/17 Page 1 of 31
Dale M. Cendali Joshua L. Simmons KIRKLAND & ELLIS LLP 601 Lexington Avenue New York, NY 10022 Telephone: (212) 446-4800 Facsimile: (212) 446-4900 [email protected] [email protected]
Attorneys for Defendants-Counterclaimants
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
SOLID OAK SKETCHES, LLC, CASE NO. 1:16-cv-724-LTS-RLE
Plaintiff- Counterdefendant,
v.
2K GAMES, INC. and TAKE-TWO INTERACTIVE SOFTWARE, INC.,
Defendants- Counterclaimants.
MEMORANDUM OF LAW IN SUPPORT OF DEFENDANTS-COUNTERCLAIMANTS 2K GAMES, INC. AND TAKE-TWO INTERACTIVE SOFTWARE, INC.’S MOTION FOR JUDGMENT ON THE PLEADINGS Case 1:16-cv-00724-LTS-RLE Document 77 Filed 08/09/17 Page 2 of 31
TABLE OF CONTENTS
PRELIMINARY STATEMENT ...... 1
FACTUAL BACKGROUND ...... 3
I. TAKE-TWO’S NBA 2K VIDEO GAME SERIES ...... 3
A. NBA 2K’s Graphical and Auditory Components ...... 3
B. NBA 2K’s Story Modes ...... 5
C. NBA 2K’s Gameplay Camera Angles ...... 6
II. THE TATTOOS AND TAKE-TWO’S USE OF THEM IN NBA 2K ...... 7
III. SOLID OAK ...... 8
ARGUMENT ...... 9
I. TAKE-TWO’S USE OF THE TATTOOS IS DE MINIMIS ...... 10
II. TAKE-TWO’S USE OF THE TATTOOS IS FAIR USE ...... 13
A. Factor One: Take-Two’s Use Is Transformative and Its Profits Are Not Attributable to the Tattoos ...... 15
B. Factor Two: Take-Two Used the Tattoos in the Interest of Accuracy and the Tattoos Were Published ...... 20
C. Factor Three: Take-Two’s Copying Was Reasonable In Light of Its Purpose ...... 21
D. Factor Four: Take-Two Has Not Harmed the Tattoos’ Markets ...... 22
E. Considerations of the Public Interest Favor Take-Two ...... 24
CONCLUSION ...... 25
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TABLE OF AUTHORITIES
Page(s)
Cases
Adjmi v. DLT Entm’t Ltd., 97 F. Supp. 3d 512 (S.D.N.Y. 2015) ...... 10
Allen v. Scholastic, Inc., 739 F. Supp. 2d 642 (S.D.N.Y. 2011) ...... 9
Arica Inst., Inc. v. Palmer, 970 F.2d 1067 (2d Cir. 1992)...... 13
Arrow Prods, Ltd. v. Weinstein Co., 44 F. Supp. 3d 359 (S.D.N.Y. 2014) ...... 10
Ashcroft v. Iqbal, 556 U.S. 662 (2009) ...... 9
Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014)...... 14, 15, 21, 22
Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015)...... 14, 15, 20, 22
Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) ...... 9
Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006)...... passim
Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006)...... 16, 23, 24
Bouchat v. Baltimore Ravens Ltd., 737 F.3d 932 (4th Cir. 2013) ...... passim
Bouchat v. Baltimore Ravens Ltd. P’ship, No. 08 Civ. 397, 2011 WL 5445947 (D. Md. Nov. 9, 2011) ...... 24
Brownmark Films, LLC v. Comedy Partners, 682 F.3d 687 (7th Cir. 2012) ...... 10
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) ...... passim
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Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013)...... 15, 20
Consumers Union of U.S. v. Gen. Signal Corp., 724 F.2d 1044 (2d Cir. 1983)...... 20
Estate of Smith v. Cash Money Records, Inc., No. 14 Civ. 2703, 2017 WL 2333770 (S.D.N.Y. May 30, 2017) ...... 23
Feist Pubs., Inc. v. Rural Telephone Serv. Co., 499 U.S. 340 (1991) ...... 13
Gibbs ex rel. Estate of Gibbs v. CIGNA Corp., 440 F.3d 571 (2d Cir. 2006)...... 9
Gordon v. Nextel Commn’cns, 345 F.3d 922 (6th Cir. 2003) ...... 11, 13
Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625 (S.D.N.Y. 2008) ...... 10, 11, 12, 13
Hofheinz v. Discovery Commn’cns, Inc., No. 00 Civ. 3802, 2001 WL 1111970 (S.D.N.Y. Sept. 20, 2001) ...... 17, 20
Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) ...... 17, 18, 21, 22
L-7 Designs, Inc. v. Old Navy, LLC, 647 F.3d 419 (2d Cir. 2011)...... 9
Monster Comm’ns, Inc. v. Turner Broad. Sys., Inc., 935 F. Supp. 490 (S.D.N.Y. 1996)...... 17
Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004) ...... 10
Newton v. Penguin/Berkley Pub. USA, No. 13 Civ. 1283, 2014 WL 505191 (S.D.N.Y. Jan. 28, 2014) ...... 11
Nunez v. Caribbean Int’l News Corp., 235 F.3d 18 (1st Cir. 2000) ...... 22
Poindexter v. EMI Record Grp. Inc., No. 11 Civ. 559, 2012 WL 1027639 (S.D.N.Y. Mar. 27, 2012) ...... 10, 11
Psihoyos v. Nat’l Geographic Soc’y, 409 F. Supp. 2d 268 (S.D.N.Y. 2005) ...... 13
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Sandoval v. New Line Cinema Corp., 147 F.3d 215 (2d Cir. 1998)...... 10, 11, 12, 13
Sarl Louis Feraud Int’l v. Viewfinder Inc., 627 F. Supp. 2d 123 (S.D.N.Y. 2008) ...... 18, 19, 23
Seltzer v. Green Day, Inc., 725 F.3d 1170 (9th Cir. 2013) ...... 21, 22
SOFA Entm’t, Inc. v. Dodger Prods, Inc., 709 F.3d 1273 (9th Cir. 2013) ...... 14, 16
Swatch Grp. Mgmt. Serv. Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014)...... 14, 23, 24
VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016) ...... 10
West Publ’g Co. v. Edward Thompson Co., 169 F. 833 (E.D.N.Y. 1909)...... 10
Statutes
17 U.S.C. § 106(5) ...... 25
17 U.S.C. § 107 ...... 14
Rules
Fed. R. Civ. P. 12(b)(6)...... 9, 10, 12
Fed. R. Civ. P. 12(c) ...... 1, 10
Regulations
37 C.F.R. § 202.1(a)...... 13
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Defendants-Counterclaimants 2K Games, Inc. and Take-Two Interactive Software, Inc.
(collectively, “Take-Two”) submit this memorandum of law in support of their motion for
judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c).
PRELIMINARY STATEMENT
Through this litigation, Plaintiff-Counterdefendant Solid Oak Sketches, LLC (“Solid
Oak”) and its founder and sole employee, Matthew Siegler, seek to hinder the ability to depict
people as they appear in real life. Solid Oak is not an aggrieved artist—it is an opportunist: Solid
Oak bought the copyrights to a handful of tattoos that were inked on NBA players Eric Bledsoe,
LeBron James, and Kenyon Martin (the “Tattoos”). Solid Oak acquired these copyrights to
assert them against Take-Two because Take-Two’s basketball simulation video game series,
NBA 2K, depicts those players (among many others) as they appear in real life—including
depicting their tattoos how they actually look.
In essence, Solid Oak argues that these public figures must seek its permission every time
they appear in public, film, or photographs and that those that create new works depicting the
players as they actually appear (with their Tattoos) should be enjoined and pay damages to Solid
Oak. Yet, no case has interpreted copyright law as providing such a right, and doing so here would inhibit copyright’s purpose of encouraging the creation of new works. This is particularly troubling at a time when tattoos are becoming increasingly popular. Solid Oak’s profit-making litigation should be halted in its tracks by dismissing Solid Oak’s copyright claim as a matter of law under the de minimis use and fair use doctrines.
First, Take-Two’s use of the Tattoos is de minimis. The Tattoos rarely appear in NBA 2K
as they only are displayed when the players on whom they are inked are selected from the over
400 other NBA players that are available. Even when the Tattoos appear, they are not prominent
as the game camera generally uses a full court shot with the players’ avatars appearing as small - 1 -
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images, and the Tattoos thus appearing even smaller than they would in real life. This makes the
Tattoos difficult (if not impossible) to see even when the players appear in the game. The lack of
observability is compounded by the fact that they are often blocked from view altogether by
other game elements and the fluid movements of the players. The Tattoos are not spot lit in any
way, but rather are deemphasized by the appearance of other game elements and even other
tattoos on Messrs. Bledsoe, James, and Martin.
Second, Solid Oak’s copyright claim fails for the independent reason that Take-Two has
engaged in fair use. Take-Two is not a rival tattooist that has replicated a creative design and
inked it on a new person. Rather, its use is completely different in a massive, highly creative
video game featuring a virtual world that only uses player tattoos to realistically capture how the
players actually look. Each of the factors that courts consider supports a finding of fair use:
• As to the first factor (“purpose and character of the use”), Take-Two uses the Tattoos for a different purpose than that for which they were originally created. While the Tattoos originally were created as the NBA players’ self-expression, Take-Two uses them merely to replicate how the players appear in real life. Moreover, the Tattoos’ size is significantly reduced in NBA 2K compared to the Tattoos’ actual size; the Tattoos appear beside numerous other game elements, diminishing their expressive value; and the Tattoos are a quantitatively small part of NBA 2K as a whole.
• As to the second factor (“nature of the copyrighted work”), any creativity the Tattoos may have must be weighed against the fact that they were published prior to Take- Two’s use and that Take-Two uses them to depict the world accurately.
• As to the third factor (“amount and substantiality of the portion used”), Take-Two’s use was reasonable given that its purpose was to depict real life accurately, and using any less of the Tattoos would defeat that purpose. Further, because NBA 2K is a video game, the Tattoos’ sizes on a television screen are smaller than their actual size, severely limiting the Tattoos’ visual impact.
• As to the fourth factor (“effect of the use upon the potential market”), Solid Oak has admitted that it is contractually prohibited from inking the Tattoos on other people, meaning that Take-Two’s use cannot harm that market. Further, there is no market for depicting real people’s tattoos in video games. Indeed, Solid Oak has admitted that it has never created, contributed to, or licensed the Tattoos for such uses.
As each fair use factor supports Take-Two, its use of the Tattoos is not copyright infringement.
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It simply is not reasonable to expect that, every time an NBA player commercializes his likeness
or appears on television or other media, he needs to seek permission from Solid Oak.
Given Solid Oak’s many admissions in its Complaint and its Answer to Take-Two’s
Counterclaims, these issues can be decided on the pleadings without discovery. For the reasons
set forth below, Take-Two respectfully requests that this Court dismiss Solid Oak’s copyright
infringement claim and enter judgment for Take-Two on Counterclaims I and II.
FACTUAL BACKGROUND
I. TAKE-TWO’S NBA 2K VIDEO GAME SERIES
Take-Two is “responsible for the development, creation and marketing of the NBA 2K
basketball simulation video game series.” Mem. Op., dated Aug. 2, 2016, (Dkt. No. 44) (“Aug.
2016 Op.”), at 2. “An updated version of the NBA 2K game is released annually” and “feature[s] animated versions of National Basketball Association (NBA) players as they appear in real life, replicating their physical features.” Id.
Solid Oak has admitted that NBA 2K16 includes “many components, including graphics, characters, a fictitious plot, gameplay, music, and graphics.” Pl.’s Answ. to Defs.’ Countercls., dated June 1, 2017, (Dkt. No. 65) (“Answer”) ¶ 198. These components are as realistic as possible to create a “virtual world.” Id. ¶ 201. Within that world, users can observe the game’s visual and auditory components, explore the game’s narrative, and play virtual basketball against a variety of opponents. Declaration of Dale M. Cendali, Esq., dated August 9, 2017, (“Cendali
Decl.”) ¶ 2 (attaching video game discs and summarizing them for the Court’s convenience). As a result of these many game elements, NBA 2K has a massive file size of over 40 gigabytes, with additional megabytes stored on a user’s game console. Id. ¶ 44.
A. NBA 2K’s Graphical and Auditory Components
Take-Two’s video games strive to depict the game of basketball as it appears in “real
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life.” Aug. 2016 Op. 2. Take-Two has done so by depicting “NBA players realistically in NBA
2K.” Answ. ¶ 141. NBA 2K16, for instance, includes depictions of over 400 current and retired
NBA players. Cendali Decl. ¶ 13. These depictions have realistic facial and physical features.
Id. ¶ 42. The players move around the court as they would in real life, running, dribbling,
walking, shooting, and passing. Id. ¶ 38. They wear jerseys and sportswear with the numbers,
colors and logos of their teams. Id. The game even depicts NBA-branded socks. Id.
Moreover, users can approximate real-world rosters of the 30 current NBA teams. Id. ¶
13. The game also highlights “classic” teams, including the Portland Trailblazers (1999–2000),
the Los Angeles Lakers (2000–2001), the Dallas Mavericks (2002-2003), the Minnesota
Timberwolves (2003–2004), and the Detroit Pistons (2003–2004). Id. NBA 2K even has
realistic arenas that look how they appear in the real world. Id. ¶ 43.
Other people related to basketball and the NBA also are realistically depicted in NBA 2K,
including cheerleaders and real-world coaches. Id. ¶ 42. Take-Two even has enlisted real-life
sports professionals for in-game commentary, including: (a) CBS sportscaster Kevin Harlan for
play-by-play commentary, (b) CBS Sports analysts Clark Kellogg and Greg Anthony as well as
(c) Golden State Warriors head coach Steve Kerr for color commentary, (d) ESPN reporter Doris
Burke for sideline reporting, (e) CBS Sports sportscaster Ernie Johnson for “studio” hosting, and
(f) former players Shaquille O’Neal and Kenny Smith for studio analysis. Id. ¶ 35.
In addition to these visual elements, NBA 2K includes auditory elements that are crucial to its realism. These include commentary by the above-referenced professional sportscasters, cheering crowds, buzzers, and a fifty-song soundtrack curated by chart-topping producers DJ
Khaled, DJ Mustard and DJ Premier. Id. ¶ 33. The game also uses realistic announcers for the court’s PA system, promotion, and outdoor announcements. Id.
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B. NBA 2K’s Story Modes
The foregoing visual and auditory elements are combined in NBA 2K with original
storylines created by award-winning writers. Within these narratives, users create and customize
their own fictional player, who competes against real-world players. Id. ¶ 14; Answ. ¶¶ 29–30.
To take NBA 2K16 as an example, its keystone story mode is called MyCAREER, which features a narrative called “Livin’ Da Dream” written by famous Hollywood director Spike Lee.
Cendali Decl. ¶ 16. In MyCAREER mode, a user creates a fictional player and follows that character’s rise from high school to college to professional basketball stardom. Id. ¶ 16. The mode progresses like a film, with gameplay interspersed with non-interactive cut scenes involving the professional and personal dramas of the fictional protagonist. Id. ¶ 18. Users play numerous short games throughout the story—three in high school, four in college, and eight in the character’s rookie season in the NBA. Id. ¶ 17. While a handful of characteristics of the user’s fictional character are fixed, such as the character’s nickname (“Freq”) and backstory, the user can customize many other aspects of the character. Id. ¶¶ 20–22. A user can even scan his or her own face into the game, so that the fictional player resembles the user. Id. ¶ 23.
NBA 2K16’s other gameplay modes have varying degrees of user customization. In
MyGM, the user simulates the decisions faced by the general manager of a professional basketball team, including monitoring the physical wear-and-tear of players, handling conversations about trading or playing time, and negotiating contracts. Id. ¶¶ 25–27. In
MyLEAGUE, users control the NBA organization as a whole. Id. ¶ 28. MyTEAM focuses on the trading aspect of professional basketball by allowing users to build their ultimate team of professional NBA players through virtual trading cards of varying rarity and power. Id. ¶ 29.
Finally, MyPARK allows online play of the customized MyPLAYER character through online communities. Id. ¶ 30. This mode also can be customized, but its teams exclusively draw from - 5 -
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custom MyPlayers; users cannot select NBA players to be on their Pro-Am team. Id. ¶ 32.
If a user only wants to play virtual basketball (without a narrative story), NBA 2K16 has a
mode called PLAY NOW, which allows users to play alone against the computer, or with
another human—against other users either in the room or online. Id. ¶¶ 10–11. To play in this
mode, users must select their team, drawing from actual NBA teams with current rosters, or from
a custom selection of individual players from different teams and eras. Id. ¶¶ 12–13.
C. NBA 2K’s Gameplay Camera Angles
Regardless of the gameplay mode, NBA 2K’s basketball games are generally shown at
camera angles optimized for visualizing the entire or large section of the court, so as to better
observe the multiple players available to a user at any given time. Id. ¶¶ 36–37. The camera shifts automatically over the course of the game to follow the active gameplay, but users can select from a variety of default options or position the cameras manually according to the users’ preference. Id. ¶ 37. As shown below, a user can choose to set the camera as if viewing the game on television, from the press section, or from a skybox in the stands. Id. The game also enables particular camera angles in each stage of its narrative mode: for example, high school games can be viewed with the “High School” angle. Id.
Camera Angle: Broadcast (Generic) Camera Angle: Skybox
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Camera Angle: Press Camera Angle: High School Cendali Decl. ¶ 37.
As with a real-life basketball game, not every element is visible at any given time. For
instance, due to the varying camera angles, players may be obstructed by other parts of the court
or other players. Id. ¶ 37. Similarly, during gameplay, elements may be shown in the
background and/or out of focus. Id. Finally, the camera generally shows the players on the
court, rather than those on the bench or in other areas of the arena. Id. ¶ 39. Thus, as players
rotate on and off the court, they may not be visible at all. Id. ¶¶ 37–39.
II. THE TATTOOS AND TAKE-TWO’S USE OF THEM IN NBA 2K
Solid Oak’s operative complaint alleges infringement based on the five Tattoos shown
below. See generally Pl.’s 2d Am. Compl., dated Oct. 24, 2016, (Dkt. No. 55) (“Compl.”).1
Each Tattoo was created as a “custom tattoo intended only for the player on which it was inked.”
Answ. ¶ 48. Thus, they are imbued with special meaning for the players. For instance, Solid
Oak admits that “Child Portrait Tattoo Artwork” depicts LeBron James’s son. Id. ¶¶ 57, 61.
Similarly, “330 and Flames Tattoo Artwork” depicts the number 330, id. ¶ 50, which is the area code for Mr. James’s hometown. Cendali Decl. ¶ 59.
1 Solid Oak originally also brought suit on “Lion’s Head Tattoo Artwork.” Pl.’s Org. Compl., dated Feb. 1, 2016, (Dkt. No. 1) (“Org. Compl.”) ¶ 34. When Take-Two filed its Counterclaims, it showed that Solid Oak had deposited with the Copyright Office an image of a later version of the work, not the one created by the tattooist with which Solid Oak has an agreement. Defs.’ Countercls., dated Aug. 16, 2016, (Dkt No. 47) (“Countercls.”) ¶¶ 69–80. As a result, Solid Oak “dropp[ed] [its] infringement claim as to ‘Lion’s Head Tattoo Artwork.” Mem. Ord., dated May 16, 2017, (Dkt. No. 64) (“May 2017 Op.”), at 2. - 7 -
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“Child Portrait “330 and Flames “Cloud and Doves “Wizard” “Basketball with Tattoo Artwork” Tattoo Artwork” Tattoo Artwork” Stars and Script” Cendali Decl. ¶¶ 54–58
By depicting the NBA players “as they appear in real life,” Take-Two “replicat[ed] their physical features, including their tattoos.” August 2016 Op. 2. These depictions are realistic.
Answ. ¶ 142. And, in NBA 2K, the Tattoos only appear on the players on which they were inked in real life, not other real-world players or fictional characters. Id. ¶ 153; Cendali Decl. ¶ 60.
The Tattoos are just one of the myriad of elements that makeup NBA 2K. See Answ. ¶¶
198–99. As discussed above, the visual, auditory, and narrative elements that compose NBA 2K are legion. See supra 3–7. The Tattoos are minor in comparison. Even focusing on Take-Two’s depiction of Messrs. Bledsoe, James, and Martin, the Tattoos are only a subset of their overall tattoos. Answ. ¶¶ 146–48. Thus, when the Tattoos are depicted as they are in real life, they appear in proportion to the player, alongside the player’s other tattoos.2 Cendali Decl. ¶ 62.
Moreover, the Tattoos are not observable in every playing of NBA 2K. They only appear on three players, and only during gameplay in which those players appear. Cendali Decl. ¶ 60.
When Messrs. Bledsoe, James, or Martin do not appear in the game, neither do the Tattoos. Id. ¶
63. Even when the Tattoos do appear, they frequently are obstructed from view by the players’
limbs, other players on the court, or other in-game elements. Id. ¶ 66. Further, as the Tattoos are
not highlighted visually or verbally, they may appear out of focus or in the background. Id. ¶ 65.
III. SOLID OAK
Solid Oak is “owned by Matthew Siegler,” and has “no [other] employees.” Answ. ¶¶
2 The Tattoos are much smaller in NBA 2K when viewed on a typical television than in real life. Id. ¶ 62. - 8 -
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174–75. Mr. Siegler is “not a tattooist,” “did not create the tattoos,” and “was not present when
the Tattoos were created.” Id. ¶¶ 177–79. Solid Oak “has never created, or contributed to the
creation of, a video game depicting the Tattoos,” and never “licensed a video game depicting
[them].” Id. ¶¶ 192–93. It “has never licensed to any other party the ability to ink the Tattoos on
other people.” Id. ¶ 183. And it “has never sold merchandise depicting the Tattoos.” Id. ¶ 186.
ARGUMENT
To decide a motion for judgment on the pleadings, courts “employ the same standard
applicable to dismissals pursuant to Rule 12(b)(6).” L-7 Designs, Inc. v. Old Navy, LLC, 647
F.3d 419, 429 (2d Cir. 2011) (alterations omitted). Thus, the Complaint “must contain sufficient
factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007)). Solid Oak must plead “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. A court need not “accord
legal conclusions, deductions or opinions couched as factual allegations a presumption of
truthfulness.” Allen v. Scholastic, Inc., 739 F. Supp. 2d 642, 653 (S.D.N.Y. 2011) (internal
quotation marks, omissions, and alterations omitted). Further, any admissions made by Solid
Oak in its Answer “are judicial admissions that bind [Solid Oak] throughout this litigation.” See
Gibbs ex rel. Estate of Gibbs v. CIGNA Corp., 440 F.3d 571, 578 (2d Cir. 2006).
This Court may consider “the complaint, the answer, any written documents attached to them, and any matter of which the court can take judicial notice for the factual background of the case.” L-7 Designs, 647 F.3d at 422. It also may consider “any written instrument attached to
[them] as an exhibit, materials incorporated in [to them] by reference, and documents that, although not incorporated by reference, are ‘integral’ to the [pleadings].” Id.
Based on Solid Oak’s many admissions in its Complaint and its Answer to Take-Two’s - 9 -
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Counterclaims, as well as the documents attached to and incorporated by reference into the
pleadings, Take-Two’s de minimis and fair use of the Tattoos is clear. It is within this Court’s power to decide those issues at the pleadings stage. See Poindexter v. EMI Record Grp. Inc., No.
11 Civ. 559, 2012 WL 1027639, at *4 (S.D.N.Y. Mar. 27, 2012) (Swain, J.) (dismissing copyright infringement claim on a 12(b)(6) motion based on de minimis use defense); see Adjmi
v. DLT Entm’t Ltd., 97 F. Supp. 3d 512, 515 (S.D.N.Y. 2015) (granting 12(c) motion for
declaratory judgment of fair use); Arrow Prods, Ltd. v. Weinstein Co., 44 F. Supp. 3d 359, 363
(S.D.N.Y. 2014) (granting 12(c) motion based on fair use defense); Gottlieb Dev. LLC v.
Paramount Pictures Corp., 590 F. Supp. 2d 625 (S.D.N.Y. 2008) (granting 12(b)(6) motion
based on de minimis use defense); see also Brownmark Films, LLC v. Comedy Partners, 682
F.3d 687, 689 (7th Cir. 2012) (affirming grant of 12(b)(6) motion based on fair use finding).
I. TAKE-TWO’S USE OF THE TATTOOS IS DE MINIMIS
“The principle that trivial copying does not constitute actionable infringement has long
been a part of copyright law.” Newton v. Diamond, 388 F.3d 1189, 1193 (9th Cir. 2004) (citing
West Publ’g Co. v. Edward Thompson Co., 169 F. 833, 861 (E.D.N.Y. 1909), in which Judge
Learned Hand observed that “Some copying is permitted.”). An alleged copyright infringement
is “de minimis, and therefore not actionable” where “the copying of the protected material is so
trivial as to fall below the quantitative threshold of substantial similarity.” Sandoval v. New Line
Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998) (internal quotation marks omitted). To make
that determination, courts consider the observability of the protectable elements in the allegedly
infringing work from the perspective of the “average lay observer.” Id. at 217–18; see also VMG
Salsoul, LLC v. Ciccone, 824 F.3d 871, 878 (9th Cir. 2016) (requiring observability to the
“average audience”). They also filter out portions of the copyrighted work that are not protected
by the plaintiff’s copyright. Diamond, 388 F.3d at 1193–94 (filtering out licensed elements); - 10 -
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Poindexter, 2012 WL 1027639, at *4 (filtering out “elements unique to the sound recording”).
With regard to observability, courts consider two factors: “[1] the length of time the copyrighted work appears in the allegedly infringing work, and [2] its prominence in that work as revealed by the lighting and positioning of the copyrighted work.” Sandoval, 147 F.3d at 217;
Newton v. Penguin/Berkley Pub. USA, No. 13 Civ. 1283, 2014 WL 505191, at *1 (S.D.N.Y. Jan.
28, 2014) (dismissing lawsuit as copying of 95 words was de minimis). For example, in
Sandoval, ten of the plaintiff’s “black and white self-portrait studies” were reproduced in the motion picture Seven. 147 F.3d at 216. While it is possible, as can be seen in the image below, to pause the film and observe the photographs, the Second Circuit focused on how the film would be observed by the “average lay observer.” Id. at 218. The court noted that the photographs appear in a scene lasting a “minute and half” from “eleven different camera shots.”
Id. at 216. Nevertheless, it held such copying to be de minimis because the photographs are displayed “at great distance,” “out of focus,” and “only briefly,” such that they have no
“cumulative effect because the images contained in the photographs are not distinguishable.” Id. at 218; see also Gordon v. Nextel Commn’cns, 345 F.3d 922, 924 (6th Cir. 2003) (use of two illustrations in commercial was de minimis due to limited display time that was in background and not in focus).
Similarly, in Gottlieb, the plaintiff’s pinball machine appeared in a three-and-a-half minute scene in the motion picture What Women Want. 590 F. Supp. 2d at 629, 633. Judge Chin determined that the film’s use was de minimis because the machine was “always in the background,” “never appear[ed] by itself or in a close-up,” was “never mentioned and plays no role in the plot,” and was “almost always partially obscured (by Gibson and pieces of furniture).”
Id. at 632–33. Thus, because “an average observer would not recognize the Designs as anything
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other than generic designs in a pinball machine,” the copyright claim was dismissed on a Rule
12(b)(6) motion. Id.
Still from Seven Still from What Women Want
Here, both factors show that Take-Two’s use of the Tattoos was de minimis. First, the
Tattoos rarely appear in NBA 2K, and when they do, it is only fleetingly. In fact, in any given playing, the Tattoos may not appear at all. Cendali Decl. ¶ 63. As Solid Oak admits, “the
Tattoos are depicted on the players on which they are inked in real life.” Answ. ¶ 153. The
Tattoos will not appear if any of those three NBA players are not selected as playable or non- playable characters in the game, which is likely to occur the majority of the time as there are over 400 NBA players available for selection in the game. Cendali Decl. ¶ 63. And even if the three NBA players are selected, unlike an NBA game, each basketball game in NBA 2K is played over a few minutes. Id. ¶ 41. Apart from the very limited instances when Messrs. Bledsoe,
James, or Martin are on the screen, the Tattoos do not appear in NBA 2K. See Sandoval, 147
F.3d at 218 (appearance in scene lasting 1.5 minutes supported finding of de minimis use);
Gottlieb, 590 F. Supp. 2d at 632 (appearance in 3.5 minute scene supported finding of de minimis
use).
Second, even when Messrs. Bledsoe, James, or Martin are selected for gameplay, the
Tattoos are not prominent. During normal gameplay, the camera is angled to provide users with
a full view of the basketball court, causing the Tattoos to appear small if they can be seen at all.
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See supra 6. Moreover, as the players twist and move on the basketball court (often quite fast), the Tattoos are hard to observe. Id. ¶ 66. They also often appear out of focus and frequently are obscured by other players and the basketball.3 Cendali Decl. ¶¶ 66–67. Furthermore, the Tattoos never appear by themselves (rather, they appear on the players on whom they are inked in real life), are not part of the plot of the video game, and are never highlighted verbally or visually.
Id. ¶ 65. As a result, it is even more difficult to perceive the Tattoos than was the case in
Sandoval or Gottlieb, where the scenes took place in small rooms where stills of the films fully displayed the works. See Sandoval, 147 F.3d at 218 (finding de minimis use where photographs were “not displayed with sufficient detail”); Gottlieb, 590 F. Supp. 2d at 632 (finding de minimis use where pinball machine was obscured by actors and furniture); see also Gordon, 345 F.3d at
924 (finding de minimis use where illustrations were out of focus and in the background).
As the Tattoos appear fleetingly and are not easily visible in NBA 2K, Solid Oak’s copyright claim should be dismissed and a judgment of de minimis use entered for Take-Two.4
II. TAKE-TWO’S USE OF THE TATTOOS IS FAIR USE
Fair use is an “important limit[] to an author’s rights to control original and derivative
3 While it is possible to manipulate the video game to try to get a better view of the Tattoos, this is not how an average lay observer would play the game and, thus, is irrelevant. See Sandoval, 147 F.3d at 217–18 (ignoring ability to pause film to focus on copyrighted works). 4 The de minimis nature of the use is even clearer when you consider that several of the Tattoos are based on pre- existing works and, thus, are entitled to, at best, thin copyright protection. In Gottlieb, then-District Court Judge Chin observed that only “unique expressive element[s]” are to be considered in determining de minimis use. 590 F. Supp. 2d at 633. This makes sense, as neither ideas nor facts are protectable by copyright. See Feist Pubs., Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 344 (1991). Thus, for example, while Solid Oak may own certain rights with regard to “Child Portrait Tattoo Artwork,” it has admitted that “the child depicted in ‘Child Portrait Tattoo Artwork’ is Mr. James’s son.” Answ. ¶ 61; see also Cendali Decl. Ex. F (deposit copy of tattoo). Any copyrights held by Solid Oak do not extend to the child’s actual features. See Psihoyos v. Nat’l Geographic Soc’y, 409 F. Supp. 2d 268, 275 (S.D.N.Y. 2005) (“To the extent a photograph captures the characteristics of an object as it occurs in nature, these characteristics are not protectible.”). Similarly, the most prominent feature of “330 and Flames Tattoo Artwork” is the pre-existing Akron area code 330. Answ. ¶ 50; see also Cendali Decl. Ex. G (deposit copy of tattoo). Words and short phrases like this are not protected by copyright. Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992) (holding that “single words or short phrases . . . do not exhibit the minimal creativity required for copyright protection”); 37 C.F.R. § 202.1(a). Solid Oak cannot rely on these elements to support its copyright infringement claim. - 13 -
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works” as it “allows the public to draw upon copyrighted materials without the permission of the
copyright holder,” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 95 (2d Cir. 2014), and
prevents an “overzealous monopolist” from using “his copyright to stamp out the very creativity
that the Act seeks to ignite.” SOFA Entm’t, Inc. v. Dodger Prods, Inc., 709 F.3d 1273, 1278 (9th
Cir. 2013). Section 107 creates this “breathing space,” Campbell v. Acuff-Rose Music, Inc., 510
U.S. 569, 579 (1994), by defining fair use as “not an infringement.” 17 U.S.C. § 107. In
determining whether a use is a fair use, “the factors to be considered” include:
(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 a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.
Id. Defendants “need not establish that each of the factors set forth in § 107 weighs in their favor.” Swatch Grp. Mgmt. Serv. Ltd. v. Bloomberg L.P., 756 F.3d 73, 81 (2d Cir. 2014).
Rather, all of the factors “are to be explored, and the results weighed together, in light of the purposes of copyright.” Campbell, 510 U.S. at 578. Those purposes being “to stimulate activity and progress in the arts for the intellectual enrichment of the public.” HathiTrust, 755 F.3d at
94–95.
As discussed below, each fair use factor favors Take-Two. Above all else, however, it cannot be overemphasized that, in assessing fair use, copyright law focuses on whether a
defendant’s work serves as a substitute for a plaintiff’s work. Authors Guild v. Google, Inc., 804
F.3d 202, 214 (2d Cir. 2015) (fair use where use does not “serve as a substitute for the original or its plausible derivatives, shrinking the protected market opportunities of the copyrighted work”);
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HathiTrust, 755 F.3d at 95 (“A fair use must not excessively damage the market for the original
by providing the public with a substitute for that original work.”). In this scenario, NBA 2K, a
video game, simply does not serve as a substitute for the Tattoos, which were custom inked on
specific individuals. A large-scale game that realistically depicts NBA players and the sport of
basketball cannot be used to ink tattoos. Moreover, Take-Two does not use the Tattoos for
merchandise (such as decals). Answ. ¶ 158.
A. Factor One: Take-Two’s Use Is Transformative and Its Profits Are Not Attributable to the Tattoos
The first fair use factor requires consideration of two subfactors: (1) transformative use,
and (2) commercial use. Campbell, 510 U.S. at 578–79.
1. Take-Two’s Use of the Tattoos Is Transformative
“Most important to the court’s analysis of the first factor is the ‘transformative’ nature of
the work.”5 Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006).
The “central purpose” of the first factor inquiry “is to see . . . whether the new work merely
supersedes the objects of the original creation . . . or instead adds something new, with a further purpose or different character.” Campbell, 510 U.S. at 579 (alterations and internal quotation marks omitted). “A use is transformative if it does something more than repackage or republish the original copyrighted work.” HathiTrust, 755 F.3d at 96.
Courts conduct this analysis by performing a side-by-side review of the works at issue and determining whether a “reasonable observer” would consider the defendant’s work transformative. Cariou v. Prince, 714 F.3d 694, 707–08 (2d Cir. 2013). In doing so, they
analyze four considerations: (1) whether the original purpose differs from the reproduction’s
5 While a “transformative use is not absolutely necessary for a finding of fair use . . . the goal of copyright . . . is generally furthered by the creation of transformative works.” Google, 804 F.3d at 214 (internal quotation marks omitted). “[S]uch works thus lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.” Id. - 15 -
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purpose; (2) the size of the reproduction; (3) the context in which the reproduction appears,
including whether other textual, graphic, or creative content minimizes its expressive value; and
(4) the proportion of the copied material in relation to the new work as a whole. Bill Graham,
448 F.3d at 609–611. Here, each of these considerations favors Take-Two.
Different Purposes. In Bill Graham, the Second Circuit highlighted the difference
between using Grateful Dead concert posters for their original “artistic expression and
promotion[al]” value, and using them in a book as “historical artifacts to document and represent
the actual occurrence of Grateful Dead concert events.” 448 F.3d at 609; see also Blanch v.
Koons, 467 F.3d 244 (2d Cir. 2006) (holding that differing objectives confirmed the transformative nature of the use). In other words, because the images served as “historical artifacts graphically representing the fact of significant Grateful Dead concert events selected by the [book’s] author for inclusion,” their use was transformative. Bill Graham, 448 F.3d at 610.
Similarly, in Bouchat v. Baltimore Ravens Ltd., the court considered whether it was transformative to show in videos a logo that appeared without authorization on the Ravens’ uniforms. 737 F.3d 932 (4th Cir. 2013). The court found that such use was transformative because, whereas the logo “initially served as the brand symbol for the team,” in the videos it was being used “as part of the historical record”; “not for its expressive content, but rather for its factual content.” Id. at 940. In the broader context of the defendant’s creative videos, the small logo “act[ed] simply as a historical guidepost—to those who even detect it—within videos that construct new narratives about the history of the Ravens and the NFL.” Id. at 940–41 (defendant
“used the historical footage to tell new stories”); see also SOFA Entm’t, 709 F.3d at 1278 (using clip from The Ed Sullivan Show “as a biographical anchor” within the fictional musical Jersey
Boys constituted transformative use).
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Take-Two’s use of the Tattoos similarly differs from the Tattoos’ original purpose. Solid
Oak admits that “each of the Tattoos is a custom tattoo intended only for the player on which it was inked.” Answ. ¶ 48. As discussed above, each of the Tattoos includes special meaning for those players, such as the image of a player’s child or his hometown area code. See supra 7.
By contrast, Take-Two uses the Tattoos to depict the players realistically in its video games—what the courts above refer to as a historical or biographical “anchor.”6 This Court already has found that Take-Two’s “games depict individual NBA players realistically, including the players’ tattoos.” May 2017 Op. 2. As a result, the players appear in NBA 2K as they do in
“real life, replicating their physical features.” Aug. 2016 Op. 2. Solid Oak has admitted that these “realistic renderings” include Messrs. Bledsoe, James, and Martin, as well as their Tattoos.
Answ. ¶¶ 10, 141–42. It also has conceded the importance of “authentic gameplay” to NBA 2K’s success. See Compl. ¶ 13. Further, it has admitted that the Tattoos do not appear on other players or characters, and Take-Two “does not sell decals of the Tattoos.” Answ. ¶¶ 153, 158.
As Take-Two’s use is “separate and distinct from the original artistic and promotional purpose for which the [Tattoos] were created,” it is transformative. Bill Graham, 448 F.3d at
610; see also Kelly v. Arriba Soft Corp., 336 F.3d 811, 818 (9th Cir. 2003) (use of images in search engine was transformative as it was “unrelated to any aesthetic purpose”). Take-Two’s transformative use is underscored by the fact that its video games depict professional basketball players who are public figures. See Monster Comm’ns, Inc. v. Turner Broad. Sys., Inc., 935 F.
Supp. 490, 494 (S.D.N.Y. 1996) (use of film footage depicting Muhammed Ali was transformative, particularly due to Ali’s status as a “figure of legitimate public concern”).
Size of the Reproductions. Transformative use also is more likely where an original
6 The transformative nature of using the Tattoos as a historical anchor is not lessened by the fact that NBA 2K is an entertainment property. See Hofheinz v. Discovery Commn’cns, Inc., No. 00 Civ. 3802, 2001 WL 1111970, at *4 (S.D.N.Y. Sept. 20, 2001) (refusing to “engage in such subjective line-drawing”). - 17 -
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work’s size is “significantly reduced” in a second work. Bill Graham, 448 F.3d at 611. In Bill
Graham, for instance, the concert posters were small enough to “permit readers to recognize the historical significant of the posters,” but “inadequate to offer more than a glimpse of their expressive value.” Id. Because the defendant “used the minimal image size necessary to accomplish its” purpose, the use was transformative. Id. Similarly, in Kelly, the court highlighted that, although the defendant “made exact replications of Kelly’s images,” the thumbnails that actually were displayed were “smaller, lower-resolution images,” making it less likely that they would substitute for the original works. 336 F.3d at 818.
Here, the Tattoos appear only fleetingly and in small size. See supra 8. They certainly are not life-size recreations, nor do they serve as an adequate replacement for the Tattoos. See id. Further, though NBA 2K’s gameplay is exceptionally realistic, the Tattoos in the game are necessarily smaller than the Tattoos in real life. Cendali Decl. ¶ 62.
Minimizing Expressive Value. When the “expressive value of the reproduced” material is “minimized” by combining it with other materials, a transformative use finding is more likely. Bill Graham, 448 F.3d at 611. For example, in Bill Graham, the book at issue included a
“prominent timeline, textual material, and original graphical artwork, to create a collage of text and images on each page of the book.” Id. Moreover, the images were “displayed at angles,” such that the overall layout “ensures that the images at issue are employed only to enrich the presentation of the cultural history of the Grateful Dead, not to exploit copyrighted artwork for commercial gain.” Id. Similarly, in Bouchat, the logo was “used only fleetingly and insignificantly . . . limiting its expressive value.” 737 F.3d at 941. And, in Sarl Louis Feraud
Int’l v. Viewfinder Inc., the court noted that the argument for “transformative use is stronger” where a “three-dimensional, life-sized” work was reduced to a smaller, 2D image imbued with
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the defendant’s own creative expression. 627 F. Supp. 2d 123, 128 (S.D.N.Y. 2008).
Here, Solid Oak has admitted that NBA 2K represents “an entire virtual world.” Answ. ¶
201. It has “many components, including graphics, characters, a fictitious plot, gameplay, music,
and graphics.” Id. ¶ 198. These elements create a fun, lush experience for game users. See
supra 3–7. While the Tattoos appear in NBA 2K, Solid Oak has admitted that they are “only one
of many components.” Answ. ¶ 199. It also concedes, as it must, that the Tattoos are only a
small number of the total tattoos in the game. Id. ¶ 200. In fact, they are only a small number of
the tattoos that appear on Messrs. Bledsoe, James, and Martin. Id. ¶¶ 146–48. Thus, any
expressive value of the Tattoos has been significantly diminished by NBA 2K’s other elements.
Proportion of Copied Material. Similar to the prior qualitative consideration of the
expressive value of the Tattoos, courts also consider the quantitative amount of the material
taken in relation to the allegedly infringing work. See Bill Graham, 448 F.3d at 611. For
instance, the book at issue in Bill Graham was 480-pages long, the images only appeared on
seven pages, and they were “less than 1/20 the size of the original.” Id. As a result, “[i]n total,
the images account[ed] for less than one-fifth of one percent of the book.” Id. Likewise, in
Bouchat, in the “vast majority of its appearances,” the logo was “present for fractions of a second, and [could] be perceived only by someone who [was] looking for it.” 737 F.3d at 940.
Here, the Tattoos are such a small component of the overall video game that it would be
difficult to even calculate. See supra 8. They only appear on three of the players, and only then
on small parts of their bodies, which aren’t visible at all times. Id. When the Tattoos are
present, they are a tiny fraction of the overall graphic display of the video games. Id. In light of the massive, over 40 gigabyte size of NBA 2K, as well as its myriad user options and enormous graphic and auditory elements, at best the Tattoos would only be a tiny fraction of a game in
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which the players on which the Tattoos were inked were selected—certainly far less than the
0.2% that was found to support transformative use in Bill Graham.
As each of these considerations favors Take-Two, its use of the Tattoos is transformative.
2. The Commercial Use Subfactor Is Of Little Weight Here
While commercial use also must be considered, “the more transformative the new work,
the less will be the significance of other factors, like commercialism.” Campbell, 510 U.S. at
579. Indeed, the Second Circuit has “repeatedly rejected the contention that commercial
motivation should outweigh a convincing transformative purpose and absence of significant
substitutive competition with the original.” Google, 804 F.3d at 219.
* * *
For the foregoing reasons, the first fair use factor weighs in favor of fair use.
B. Factor Two: Take-Two Used the Tattoos in the Interest of Accuracy and the Tattoos Were Published
The second fair use factor involves consideration of “(1) whether the work is expressive or creative, . . . with a greater leeway being allowed to a claim of fair use where the work is factual or informational, and (2) whether the work is published or unpublished.” Cariou, 714
F.3d at 710. “As a general rule, published works enjoy less fair use protection than unpublished works.” Hofheinz, 2001 WL 1111970, at *5. While the “second factor has rarely played a significant role in the determination of a fair use dispute,” it favors Take-Two here. Google, 804
F.3d at 220.
First, any creativity that the Tattoos have must be weighed against the fact that Take-
Two copied the Tattoos to depict real-world subject matter realistically. See Consumers Union of U.S. v. Gen. Signal Corp., 724 F.2d 1044, 1049 (2d Cir. 1983) (finding that copying plaintiff’s work “in the interest of accuracy” did not weigh against fair use); see also Bouchat, 737 F.3d at
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943 (“[I]f the disputed use of the copyrighted work is not related to its mode of expression but
rather to its historical facts, then the creative nature of the work matters much less than it
otherwise would.” (internal quotation marks omitted)).7
Second, as evidenced by the Certificates of Registration Solid Oak attached to the
Complaint, each of the Tattoos was published prior to its inclusion in NBA 2K. See Compl. Exs.
D, F, H, J, K (indicating that Tattoos were published); Org. Compl. Ex. E (same); see also Answ.
¶¶ 51, 58, 71, 83, 90, 96 (admitting publication). “Published works are more likely to qualify as
fair use because the first appearance of the artist’s expression has already occurred.” Seltzer v.
Green Day, Inc., 725 F.3d 1170, 1178 (9th Cir. 2013). Where a work is widely disseminated, as
is the case with the Tattoos, it favors fair use. Id. (image appeared on the Internet and streets of
Los Angeles before the defendant’s use); Kelly, 336 F.3d at 820 (factor mitigated by fact that photographs were posted on the Internet by copyright holder). This factor supports Take-Two.
C. Factor Three: Take-Two’s Copying Was Reasonable In Light of Its Purpose
“The third factor asks whether the secondary use employs more of the copyrighted work than is necessary, and whether the copying was excessive in relation to any valid purposes asserted under the first factor.” HathiTrust, 755 F.3d at 96. “[T]he extent of permissible copying varies with the purpose and character of the use.” Campbell, 510 U.S. at 586–87.
Indeed, “for some purposes, it may be necessary to copy the entire work, in which case Factor
Three does not weigh against a finding of fair use.” HathiTrust, 755 F.3d at 98.
Here, where the Tattoos are two-dimensional images used to depict real life accurately, using less than the whole would defeat Take-Two’s purpose. See supra 8. Thus, this factor does not weigh against fair use. See Bouchat, 737 F.3d at 949 (finding it was necessary to include the logo in displays showing the NFL’s history and noting, “It is hard to see frankly how the use of
7 Moreover, as noted above, any copyright in these works is thin at best. See supra 7, 13 n.4. - 21 -
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one-third or two-third of the logo is even practical or makes any sense.”); Seltzer, 725 F.3d at
1178 (finding that, unlike a television program or book, images are “not meaningfully
divisible”); Kelly, 336 F.3d at 821 (“If Arriba only copied part of the image, it would be more difficult to identify it, thereby reducing the usefulness of the visual search engine.”); Nunez v.
Caribbean Int’l News Corp., 235 F.3d 18, 24 (1st Cir. 2000) (copying less than entire photograph
“would have made the picture useless to the story,” mitigating the relevance of this factor).
Moreover, in assessing this factor, courts consider whether “the visual impact of
[reproductions’] artistic expression is significantly limited because of their reduced size.” Bill
Graham, 448 F.3d at 613. Where, as here, the copyrighted work is displayed in its entirety but at
“the minimal image size and quality necessary to ensure” that it can be recognized as a
“historical artifact,” this factor does not weigh against fair use. Id.; see supra 8. Accordingly, the third fair use factor weighs in favor of fair use.
D. Factor Four: Take-Two Has Not Harmed the Tattoos’ Markets
The fourth fair use factor considers whether the use will “result in a substantially adverse impact on the potential market for the original.” Campbell, 510 U.S. at 590 (internal quotation marks omitted). The focus is on “whether the copy brings to the marketplace a competing substitute for the original, or its derivative, so as to deprive the rights holder of significant revenues because of the likelihood that potential purchasers may opt to acquire the copy in preference to the original.” Google, 804 F.3d at 223; HathiTrust, 755 F.3d at 96 (“To defeat a claim of fair use, the copyright holder must point to market harm that results because the secondary use serves as a substitute for the original work.”). “[A]ny economic ‘harm’ caused by transformative uses does not count because such uses, by definition, do not serve as substitutes for the original work.” HathiTrust, 755 F.3d at 99.
As to the original market for the Tattoos, Solid Oak’s license agreements with the - 22 -
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tattooists expressly disclaim “the right to tattoo a permanent tattoo rendering onto a person’s
skin.” Compl. Exs. C, G, I. Moreover, Solid Oak has admitted that it has never licensed to any
party “the ability to ink the Tattoos on other people.” Answ. ¶ 183. Thus, it has no rights in or to
the original market for the Tattoos (i.e., inking them on people).
As to the market for derivative works, Solid Oak cannot claim a potential market for the
use of the Tattoos made by Take-Two. The Second Circuit has cautioned that “it is a given in
every fair use case that plaintiff suffers a loss of a potential market if that potential is defined as
the theoretical market for licensing the very use at bar.” Swatch, 756 F.3d at 91. To “guard
against this vice of circular reasoning,” the factor four inquiry is limited “to a use’s impact on
potential licensing revenues for traditional, reasonable, or likely to be developed markets.” Id.
(internal quotation marks omitted). “[W]ere a court automatically to conclude in every case that
potential licensing revenues were impermissibly impaired simply because the secondary user did
not pay a fee for the right to engage in the use, the fourth fair use factor would always favor the copyright holder.” Bill Graham, 448 F.3d at 614.
Here, Solid Oak has admitted that it “has never created, or contributed to the creation of, a video game depicting the Tattoos” and that it “has never licensed a video game depicting the
Tattoos.” Answ. ¶¶ 192–93. These admissions are fatal to Solid Oak’s case. See Blanch, 467
F.3d at 258 (admission that copyright owner had “never licensed any of her photographs for” the use made by defendant weighed in favor of fair use); Estate of Smith v. Cash Money Records,
Inc., No. 14 Civ. 2703, 2017 WL 2333770, at *10 (S.D.N.Y. May 30, 2017) (holding that fourth factor favored fair use finding where “Plaintiffs never attempted to establish a market for licensed derivative uses of the JSR composition copyright until Defendants used the recording on the Album”); Viewfinder, 627 F. Supp. 2d at 136 (market harm argument is “undermined by the
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fact that plaintiffs do not themselves sell of license photos of their designs to the media”).
Moreover, Solid Oak has admitted that it “has never sold merchandise depicting the
Tattoos.” Answ. ¶ 158. Nor could it do so as it has admitted that it has not obtained the publicity or trademark rights necessary to depict the Tattoos (part of the players on which they are inked’s likenesses) on merchandise. Id. ¶¶ 187–190. Solid Oak’s lack of licenses in these overlapping intellectual property rights prevents Solid Oak from commercializing the Tattoos.
Cf. Bouchat v. Baltimore Ravens Ltd. P’ship, No. 08 Civ. 397, 2011 WL 5445947, at *2 (D. Md.
Nov. 9, 2011) (finding lack of harm due to copyright holder being “limited (perhaps totally) in his commercial use of the [copyrighted work] by virtue of Defendants’ trademark rights”). In any case, Take-Two does “not sell decals of the Tattoos.” Answ. ¶ 186.
Finally, where a use is “transient and fleeting . . . as well as for its factual, and not expressive, content,” it is unlikely to cause market harm. Bouchat, 737 F.3d at 943. As discussed above, Take-Two’s use of the Tattoos in NBA 2K is de minimis, see supra 10, and the
Tattoos are merely used to depict the real world accurately, not for their expressive value, see supra 17. Thus, this factor supports a finding of fair use.
E. Considerations of the Public Interest Favor Take-Two
“The ultimate test of fair use . . . is whether the copyright law’s goal of promoting the
Progress of Science and useful Arts . . . would be better served by allowing the use than by preventing it.” Blanch, 467 F.3d at 251 (internal quotation marks omitted); see also Swatch, 756
F.3d at 90 (balancing “the benefit the public will derive if the use is permitted and the personal gain the copyright owner will receive if the use is denied”). Of particular import for this case, fair use protects secondary users “from the inevitable chilling effects of allowing an artist too much control over the dissemination of his or her work for historical purposes.” Bouchat, 737
F.3d at 944. Were courts to “require those wishing to produce [new works] to receive - 24 -
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permission from copyright holders for fleeting factual uses of their works, [they] would allow those copyright holders to exert enormous influence over new depictions of historical subjects and events.” Id. “This would align incentives in exactly the wrong manner, diminishing accuracy and increasing transaction costs, all the while discouraging the creation of new expressive works.” Id. at 944–45.
Here, Solid Oak admits that “NBA players appear in the telecasts of NBA games,” are
“photographed and recorded playing basketball,” and “appear in advertisements for different products.” Answ. ¶¶ 102, 104, 113. Moreover, it admits that images and videos of Messrs.
Bledsoe, James, and Martin have been shown by “[s]ports news outlets,” as well as taken by
“[s]ports photographers” and paparazzi (sometimes for inclusion in commercial publications).
Answ. ¶¶ 106, 108, 110, 112. Mr. James, in particular, has appeared in “various advertisements,” “commercials,” and the “covers of magazines.” Id. ¶¶ 114, 116, 118.
If Take-Two’s motion is denied, Solid Oak will be able to use that decision to shakedown each of the publications and television programs in which those players have appeared, as well as any other video game publisher that depicts the Tattoos. It would be illogical to allow Solid Oak to seek rents each time that a player bearing one of its tattoos commercializes his likeness, or worse, appears in public, and therefore arguably “publicly displays” the Tattoos under copyright law. See 17 U.S.C. § 106(5). We know of no case reaching such a result. Doing so here would set a bad precedent affecting all bearers of tattoos and the companies that creatively depict them.
CONCLUSION
As Take-Two’s use of the Tattoos constitutes de minimis use and fair use, Solid Oak’s copyright claim should be dismissed with prejudice and judgment granted to Take-Two on its
Counterclaims I and II.
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Dated: New York, New York August 9, 2017 /s/ Dale M. Cendali Dale M. Cendali Joshua L. Simmons KIRKLAND & ELLIS LLP 601 Lexington Avenue New York, NY 10022 Telephone: (212) 446-4800 Facsimile: (212) 446-4900 [email protected] [email protected]
Attorneys for Defendants-Counterclaimants
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Case 1:16-cv-00724-LTS-RLE Document 88 Filed 09/12/17 Page 1 of 26
Darren A. Heitner HEITNER LEGAL, P.L.L.C. 215 Hendricks Isle Fort Lauderdale, FL 33301 Telephone: (954) 558-6999 Facsimile: (954) 927-3333 [email protected] [email protected]
Paul S. Haberman Law Offices of Paul S. Haberman LLC PO Box 167 Norwood, NJ 07648 Telephone: (201) 564-0590 Facsimile: (201) 767-2087 [email protected]
Attorneys for Plaintiff
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
SOLID OAK SKETCHES, LLC, CASE NO. 1:16-cv-724(LTS)(RLE)
Plaintiff/Counter-Defendant, ECF Case
v.
VISUAL CONCEPTS, INC.; 2K GAMES, INC.; TAKE-TWO INTERACTIVE SOFTWARE, INC.,
Defendants/Counter-Plaintiffs.
MEMORANDUM OF LAW IN SUPPORT OF PLAINTIFF’S RESPONSE TO DEFENDANTS’ MOTION FOR JUDGMENT ON THE PLEADINGS
Case 1:16-cv-00724-LTS-RLE Document 88 Filed 09/12/17 Page 2 of 26
TABLE OF CONTENTS
Page(s)
I. PRELIMINARY STATEMENT…………………….…………………………...... 1
II. FACTUAL BACKGROUND…………………..…………………………………...... 3
III. STANDARD OF REVIEW……………………………………….…………………. ...4
IV. ARGUMENT…………………………………………...……………………………...... 5
A. DEFENDANTS CANNOT ESTABLISH FAIR USE AS THE CIRCUMSTANCES SURROUNDING THEIR USE OF THE SUBJECT TATTOOS SATISFY NONE OF THE FAIR USE DOCTRINE………………………………………...……………5
1. The Purpose and Character Factor Favors Plaintiff……...... ……...7
2. The Nature of the Work Factor Favors Plaintiff…….....……..…...11
3. The Amount and Substantiality Factor Favors Plaintiff…………..12
4. The Effect of the Use Upon the Potential Market Factor Favors Plaintiff….....……..…….....……..…….....…….…13
B. DEFENDANTS FAIL TO ALLEGE THAT THEIR USE OF TATTOOS IS DE MINUMUS IN NATURE, AS THEIR USE OF THE SUBJECT TATTOOS IS FAR MORE THAN TRIVIAL AND IS AN IMPORTANT COMPONENT OF ITS VIDEOS GAME….....……..…….....……..…….....……..…….....…..…15
1. Defendants Have Failed to Establish that their Offending Use of the Subject Tattoos is De Minimus in Nature as A Matter of Law….....……..…….....……..…….....……..……....17
2. Defendants Failed to Establish that the Offending Depictions of the Subject Tattoos are Not Substantially Similar to the Protected Works….....……..…….....……..…….....……..……....18
3. The Issue of Whether the Subject Tattoo’s Usage in the NBA 2K Games is De Minimus is Not Rope at this Stage…...... …18
V. CONCLUSION………………………………………………………….…………...…19
i Case 1:16-cv-00724-LTS-RLE Document 88 Filed 09/12/17 Page 3 of 26
TABLE OF AUTHORITIES
Cases Page(s)
American Geophysical Union v. Texaco Inc., 60 F.3d 913, (2d Cir 1994)…………………………………………………………………...13
Ashcroft v. Iqbal, 556 U.S. 662, (2009). ………………………………………………...…………………….....5
Authors Guild v. Google, Inc., 804 F.3d 202, (2d. Cir. 2015). …………………………….………...………………….....8, 10
Bell Atl. Corp. v. Twombly, 550 U.S. 544, (2007)…………………………….………...... …………………...... 4
Bill Graham Archives v. Dorling Kindersley, Ltd., 448 F. 3d 605, (2d Cir. 2006) ……………………….………...…….…….....6, 8, 9, 10, 12, 13
Blanch v. Koons, 467 F.3d 244, (2d Cir. 2006). ………………….………...……………………………...... 7, 11
Browne v. McCain, 612 F. Supp.2d 1125, (C.D. Cal. 2009)………………….…....………………….……...... 6
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, (1994). …………………………….………...…………..…....7, 8, 9, 11, 12, 13
Cariou v. Prince, 714 F.3d 694, (2d Cir. 2013)…………………………….………...………….……...7, 8, 9, 11
Castle Rock Entm’t Inc. v. Carol Pub Grp., Inc., 150 F.3d 132, (2d. Cir. 1998) ……………………….………...………………………...... 8, 13
Crane v. Poetic Prods., 549 F. Supp. 2d 566, (S.D.N.Y.2008) …………….……………..……………………...15, 18
DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d. Cir. 2010).………………………….……….…………………...... 5
Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 208 (3d Cir. 2002).…………………………….………...……………...... 15 eScholar, LLC v. Otis Educational Systems, Inc., No. 04 Civ. 4051 2005 WL 2977569, (S.D.N.Y. Nov. 3, 2005)….……………….…...... 16
ii Case 1:16-cv-00724-LTS-RLE Document 88 Filed 09/12/17 Page 4 of 26
Gottlieb Development LLC v. Paramount Pictures Corp., 590 F. Supp.2d 625, (S.D.N.Y. 2008) …………………….………...…………………...... 15
Graham v. Prince, 15-cv-10160, 2017 WL 3037535 (S.D.NY July 18, 2017)…….…...…………………...... 6
Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, (1985). …………………………………….………...…………………...... 13
Hirsch v CBS Broadcasting Inc. 17-Civ. 1860, 2017 WL 3393845, (S.D.NY Aug. 4, 2017) ……………...………….....6, 8, 12
Infinity Broad Corp. v. Kirkwood, 150 F.3d 104, (2d. Cir. 1998).…………………………….………...…………………...... 7
Lennon v. Premise Media Corp., 556 F. Supp.2d 310, (S.D.N.Y 2008). ………………………...……………….……...... 11
Marketing Technology Solutions, Inc. v. Medizine LLC,, 09-Civ. 8122, 2010 WL 2034404, (S.D.N.Y. May 18, 2010) ………………………...... 16
Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292, (2d Cir. 2003)………………………….………...………...……………...... 4
North Jersey Media Group Inc. v. Pirro, 74 F. Supp.3d 605,(S.D.N.Y. 2015) ………………………………………….....12, 13, 14
On Davis v. The Gap, Inc., 804 F.3d 202, (2d. Cir. 2015). ……………………….………...…………………...... 11
Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, (2d. Cir. 2001).…………………………….………...…………………...... 4
Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, (2d Cir. 2010) …………………………….………...……………………...16, 19
Ringgold v. BET, Inc. 126 F.3d 70, (2d Cir. 1997).…………………………….………...…………...... 15, 16, 17, 18
Ritani, LLC v. Aghjayan, 880 F. Supp.2d 425 (S.D.N.Y. 2012) …………………………….…………………...... 5
Sandoval v. New Line Cinema Corp., 973 F. Supp.401, (S.D.N.Y 1997). ………………….…………………….…………...... 12
iii Case 1:16-cv-00724-LTS-RLE Document 88 Filed 09/12/17 Page 5 of 26
SGC Communication Resources, LLC v. The Seminar Center, Inc., No. 98 Civ. 2724, 2001 WL 274053, (S.D.N.Y. March 20, 2001) ……………………...... 16
Sheppard v. Beerman, 18. F.3d 147, (2d Cir. 1994). …………………………….………...…………………...... 4, 5
Stewart v. Abend, 495 U.S. 207, (1990) …………………………………….………...…………………...... 5
TCA Television Corp. v. McCollum, 839 F. 3d 168, 178 (2d. Cir. 2016)……………………….………...……..…...6, 7, 8, 9, 12
Turkem v. Hasty, 789 F.3d 218, (2d. Cir. 2015) ………...………….………...……...………………...... 4
Wright v. Warner Books Inc., 953 F. 2d 731, (2d. Cir. 1991)). …………………………….…………………...... 6
Statutes
17 U.S.C. § 107…………………………….…………………………………….…...... 6, 7, 13
Rules
Fed R. Civ. P.12(b)(6)…………………………….…………………………….…...... 4, 5, 6
Fed R. Civ. P.12(c)…………………………….…………………………….…...... 4, 5, 6
iv Case 1:16-cv-00724-LTS-RLE Document 88 Filed 09/12/17 Page 6 of 26
Plaintiff/Counter-Defendant, Solid Oak Sketches, LLC (“Solid Oak” or “Plaintiff”), submits this Memorandum of Law in support of its response in opposition to the motion for judgment on the pleadings filed by Defendants/Counter-Claimants 2K Games, Inc. and Take-Two
Interactive Software, Inc. (collectively “Defendants”) pursuant to Federal Rule of Civil Procedure
12(c).
I. PRELIMINARY STATEMENT
Plaintiff’s sole motive for instituting this action is to be made whole for the infringement of the copyrights that it paid money for in exchange for the exclusive licenses that it possesses.
Plaintiff provided consideration to various tattoo artists in exchange for the exclusive licenses to the copyrights containing the tattoo art at issue that was created by the tattoo artists and inked on
NBA players Eric Bledsoe, LeBron James and Kenyon Martin (the “Tattoos”). Plaintiff paid for the binding and enforceable exclusive licenses for the purpose of exploiting those Tattoos for commercial gain and to preclude third parties from infringing on Plaintiff’s exclusive right to do same.
Defendants ask the Court to construe the creation and enforcement of the licensing agreements as Plaintiff simply being an opportunist. If Plaintiff’s decision to enter into exclusive licensing agreements with the Tattoos’ artists in attempt to create commercial opportunities is considered opportunism, then Plaintiff is guilty as charged. However, there is nothing improper or illegal surrounding a company, whose principal may have no experience as a tattoo artist, entering into valid, binding contractual agreements with tattoo artists for exclusive licenses over their intellectual property. Plaintiff received the exclusive licenses and then discovered that the
Defendants were illegally exploiting them in a manner that constitutes infringement. Plaintiff reached out to the Defendants prior to initiation of the instant action, in good faith, to explore the
1 Case 1:16-cv-00724-LTS-RLE Document 88 Filed 09/12/17 Page 7 of 26
possibility of a resolution without judicial intervention. Ultimately, Plaintiff was left with no choice but to file the instant lawsuit in order to be made whole for Defendants’ violations of intellectual property law.
Plaintiff is not arguing that NBA players must seek Plaintiff’s permission every time that they appear in public. Rather, Plaintiff is arguing that corporate entities that purposefully seek to commercially benefit from the use of the Tattoos be held accountable for their actions and pay a royalty to the rightful owner of the intellectual property. Here, Defendants have sought to create as close of a replication to the Tattoos within their highly successful video games, promote the realism of the players to the consuming public and avoid making any payment to Plaintiff for the use of the copyright registrations it possesses.
Defendants’ use of the Tattoos is neither de minimis nor protected by the fair use doctrine.
The Tattoos are a main design on the NBA players on which they are attached, and those players’
Tattoos at issue are prominently featured, with LeBron James being the highest rated player in
Defendants’ video game.1 Separately, the purpose and character of the use is clearly commercial in nature and not a matter of newsworthy or educational speech worthy of receiving an exception to laws concerning copyright infringement. Furthermore, the Tattoos are used in their entirety and
Plaintiffs ability to license the Tattoos to third parties, including other video game manufacturers, is impeded by Defendants’ refusal to pay for the intellectual property of Plaintiff that it is using.
For the reasons set forth below, Plaintiff respectfully requests that this Court deny
Defendants’ motion for judgment on the pleadings in whole.
1 See Nick Schwartz, The 26 highest-rated players in NBA 2K17, FOX Sports, Oct. 20, 2016, at http://www.foxsports.com/nba/gallery/nba-2k17-player-ratings-highest-lebron-james-stephen-curry-kevin-durant- 091816.
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II. FACTUAL BACKGROUND
Plaintiff is a Delaware limited liability company that entered into Copyright License
Agreements with various authors of the Tattoos, and secured registrations of the copyrights surrounding same. Plaintiff’s Second Amended Complaint (“Amended Compl.”) ¶¶ 6, 26, 32-36,
ECF No. 55. The Tattoos received Certificates of Registration by the United States Register of
Copyrights on various dates in the months of June and July 2015. Id. at ¶¶ 32-36. Despite the valid
Copyrights for the tattoos, the Defendants used the copyrighted materials in its games without any credit or licensing arrangement with the Plaintiff. Amended Comp. ¶¶ 20-22, 39.
Specifically, the Tattoos at issue have been reproduced by the Defendants in their video games, including, but without limitation to, NBA 2K14, NBA 2K15 and NBA 2K16. Amended
Compl. ¶¶ 9-11.)“An updated version of the NBA 2K game is released annually” and “feature[s] animated versions of National Basketball Association (NBA) players as they appear in real life, replicating their physical features.” Memo. Op., dated Aug. 2, 2016 (ECF No. 44). “Users can manipulate dozens of parameters for every aspect of gameplay.” Declaration of Dale M. Cendali,
Esq, dated August 9, 2017 (“Cendali Decl.”) (ECF No. 78). Thus, users influence many aspects of the game and control what they ultimately see when playing any of the aforementioned games.
When playing the videogames, like NBA2K16, on either the Xbox 360, PlaysStation3, PS4, Xbox
One, or PC, users can be playing the realistic games on large screens including, but not limited to projectors. Declaration of Paul S. Haberman, Esq. dated September 12, 2017, (“Haberman Decl.”)
¶ 8. Because of the Defendants’ use of the tattoos, the Plaintiff has substantiated will continue to sustain immediate, substantial, and irreparable injury, for which there is no adequate remedy at law. Amended Complaint ¶ 44. Therefore, the Plaintiff commenced this action on or about
February 1, 2016. Plaintiff’s Complaint, dated February 1, 2016 (ECF No.1).
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At the heart of the instant dispute is Defendants’ use of the tattoos, specifically whether
Defendants use of the Tattoos is considered (a) de minimis; or (b) fair use. (Defendants’
Memorandum of Law in Support of Motion for Judgment on the Pleadings (“Defendants’ Memo.”)
ECF No. 77.) In brief, Defendants contend that their use constitutes fair use on the following grounds: (1) the tattoos are significantly reduced in size;(2) users cannot see their expressive value;
(3) the tattoos appear only “fleetingly and in small size”; and (4) Defendants’ use serve as a
“historical or biographical anchor”. Defendants’ Memo at 15-20. Similarly, on the de minimus claim the Defendants proclaim that the tattoos are not prominent and appear “even smaller than they would appear in the real life.” Id. at 2. To date, Defendants has sent Plaintiff many discovery requests, yet Plaintiff has not been afforded the opportunity to conduct depositions or send similar discovery requests. Haberman Decl. ¶¶ 7-8. Plaintiff intends to conduct reasonable discovery throughout the duration of this litigation. Id.
III. STANDARD OF REVIEW
The Court of Appeals for the Second Circuit has explained that “in deciding a Rule 12(c) motion, we apply the same standard as that applicable to a motion under Rule 12(b)(6). Sheppard v. Beerman, 18. F.3d 147, 150 (2d Cir. 1994). In both postures, courts must accept all allegations in the complaint as true and draw all reasonable inferences in favor of the non-moving party.
Miller v. Wolpoff & Abramson, L.L.P., 321 F.3d 292, 300 (2d Cir. 2003)(quoting Patel v.
Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d. Cir. 2001). To survive a motion to dismiss under Rule 12(b)(6), a complaint must only contain “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007); see also
Turkem v. Hasty, 789 F.3d 218, 240 (2d. Cir. 2015) (noting that plaintiffs “need not prove their
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allegations; they must plausibly plead them”).
A claim is plausible “when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009). “Neither Twombly nor Iqbal requires a plaintiff in a copyright infringement action to plead specific evidence or extra facts beyond what is needed to make the claim plausible.” Ritani, LLC v. Aghjayan, 880 F. Supp.2d 425. 440 (S.D.N.Y. 2012) (internal quotation marks omitted). The court “may consider the facts alleged in the complaint, documents attached to the complaint as exhibits, and documents incorporated by reference in the complaint.”
DiFolco v. MSNBC Cable L.L.C., 622 F.3d 104, 111 (2d. Cir. 2010). Accordingly, courts must deny a motion for judgment on the pleadings unless it appears that it is blatantly apparent that no sets of facts can be proved that would entitle the plaintiff to relief. Beerman, 18. F.3d at 150.
Based on the complaints, answers and accompanying documents, there is no doubt that
Plaintiff has plausibly plead the allegations needed to show that it is entitled to relief; to rule otherwise would go against long-standing precedent and the traditional notions of justice and equity.
IV. ARGUMENT
A. DEFENDANTS CANNOT ESTABLISH FAIR USE AS THE CIRCUMSTANCES SURROUNDING THEIR USE OF THE SUBJECT TATTOOS SATISFY NONE OF THE ELEMENTS OF THE FAIR USE DOCTRINE
The fair use doctrine is an “equitable rule of reason which permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity that law is designed to foster.” Stewart v. Abend, 495 U.S. 207, 236 (1990) (internal citations omitted).
The applicability of the fair use doctrine is a mixed question of law and fact, and a court cannot engage in the fair use inquiry until it has been presented with facts relevant to evaluating the fair
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use factors. Bill Graham Archives v. Dorling Kindersley, Ltd., 448 F. 3d 605, 608 (2d Cir. 2006);
Graham v. Prince, 15-cv-10160, 2017 WL 3037535 (S.D.NY July 18, 2017); Hirsch v CBS
Broadcasting Inc., 17-Civ. 1860, 2017 WL 3393845, *7 (S.D.NY Aug. 4, 2017) (denying a
12(b)(6) motion on the grounds that further discovery would enable a more careful assessment on a fair use claim). Due to the fact-sensitive nature of the inquiry, courts generally do not address the fair use defense until the summary judgment phase. TCA Television Corp. v. McCollum, 839
F. 3d 168, 178 (2d. Cir. 2016); Wright v. Warner Books Inc., 953 F. 2d 731, 735 (2d. Cir. 1991)
(“the fact-driven nature of the fair use determination suggests that a district court should be cautious in granting Rule 56 motions in this area) (emphasis added). Since it is conceivable— though highly unlikely—that the fair use doctrine can be addressed on a motion to dismiss, let alone a motion for judgment on the pleadings, the Court must review Defendants’ infringing use of the tattoos by evaluating the four fair use factors. TCA Television Corp., 839 F. 3d at 178; see also Browne v. McCain, 612 F. Supp.2d 1125, 1130 (C.D. Cal. 2009) (“[I]n light of a court’s narrow inquiry [for a motion to dismiss] and limited access to all potentially relevant and material facts needed to undertake the [fair use] analysis, courts rarely analyze fair use on a 12(b)(6) motion”).
The doctrine, which was incorporated into the Copyright Act, provides four non-exclusive factors in which courts must consider in analyzing the fair use doctrine: (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 a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. 17 U.S.C. § 107. No single factor is determinative, and all of the four factors “are to be explored, and the results weighed together, in
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light of the purposes of copyright.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994).
Taking the fact that the remedy that Defendants request is extraordinary, further discovery is needed and the reasons set forth below, the Court should find in favor of Plaintiff on Defendants’ fair use defense.
1. The Purpose and Character Factor Favors Plaintiff
The first statutory factor, the purpose and character of the use, is “[t]he heart of the fair use inquiry.” Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006). It examines the purpose and character of the secondary use, including whether such use is of a commercial nature or is for nonprofit educational purposes. 17 U.S.C. § 107. The essence of this factor is whether the copier’s use is transformative; that is, whether the new work “merely ‘supersedes the objects’ of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message[.]” Cariou v. Prince, 714 F.3d 694, 705 (2d Cir.
2013) (quoting Campbell, 510 U.S. at 579); see also Infinity Broad Corp. v. Kirkwood, 150 F.3d
104, 108 (2d. Cir. 1998).
In Cariou, the defendant, an “appropriation artist,” had taken plaintiff’s copyrighted photographs and altered them to create “crude and jarring collages.” 714 F.3d at 706. Both works had underlying artistic purposes, but the Second Circuit held the work was transformative because the defendant’s use was so “heavily obscured and altered” that the original photographs were
“barely recognizable” within the new work. Id. at 710. But where lesser changes retained certain of the original work’s aesthetics, the court should not say “for sure” that their incorporation into defendant’s works had “transformed [the original] work enough to render it transformative.” TCA
Television Corp, 839 F.3d at 181(quoting Cariou, 714 F.3d at 711). Moreover, copying is transformative only if it “uses the copyrighted material itself for a purpose, or imbues it with a
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character, different from that for which it was created.” Id. at 180; see also Castle Rock Entm’t
Inc. v. Carol Pub Grp., Inc., 150 F.3d 132, 143 (2d. Cir. 1998) (holding that a work that merely transforms an original work, yielding a modified or derivative work, is not transformative for the purposes of analyzing fair use). “In other words, the would-be fair user of another’s work must have justification for the taking.” Authors Guild v. Google, Inc., 804 F.3d 202, 215 (2d. Cir. 2015).
While the Supreme Court has not clearly defined the point at which point a secondary work has altered an original work to qualify as transformative, “courts have frequently afforded fair use protection to the use of copyrighted materials in biographies, recognizing such works as forms of historic scholarship, criticism, and comment that require incorporation of original source material for optimum treatment of their subjects.” Bill Graham Archives, 448 F. 3d at 608 (internal citations omitted) (holding that a book using an original work to commemorate historic events as a
“biographical anchor,” which arranged the original work in a creative fashion, and displayed them in a reduced form, constituted fair use). Thus, commercial motivation weighs against a finding of fair use “especially . . . when a persuasive transformative purpose is lacking.” Authors Guild, 804
F.3d at 219; See also Campbell, 510 U.S. at 579 (holding that commercialism may weigh against a finding of fair use). The key question is how the secondary work appears to a “reasonable observer” when compared side-by-side with the original. Cariou, 714 F.3d at 707-08. However, cases ultimately decided on a side-by-side analysis are fairly “uncommon.” Hirsch, 2017 WL
3393845, at *6.
Defendants contend that the first factor favors fair use, but that is not the case—they have no justification for the taking. Far from altering the tattoos to the point where it is “barely recognizable” within the game, Defendants’ use appears not to have altered the copyrighted work at all. Cariou, 714 F.3d at 710. To the Defendants, the video games may replicate how the players
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appear in real life or allegedly serve as a “historical anchor,” but it does not transform the original works so that it conveys that message. To the contrary, it appears that the Defendants’ use of the tattoos is purely commercial and a ploy to enthrall consumers to the realism of the games.
Campbell, 510 U.S. at 579. Specifically, the videos games have the tattoos, without alteration, so that the users will readily recognize them in their entirety.
Despite the aforementioned, Defendants nevertheless maintain that using the tattoo emphasizes the “biographical” nature of the video games. Defendant’s Memo. at p. 16. However, this argument will not bear close scrutiny. The use of the tattoos does not reference an event or provide commentary on images. Bill Graham Archives, 448 F.3d at 608. Rather, the video games are released at or near the time of the upcoming professional basketball season. Compl. ¶¶ 9-11.
Most athletes are depicted in the same way they appear at, or near, the same time the video games are released. Merely including players and teams from the past does not constitute the Defendants’ use of the tattoos as a historical anchor. This is not proper justification for using the tattoos in their entirety. TCA Television Corp, 839 F.3d at 181(quoting Cariou, 714 F.3d at 711).
Defendants heavily rely on the Bill Graham Archives case, approximately three pages of its analysis, but its reliance is wholly misplaced. In Bill Graham Archives, the defendant published a “biographical work” documenting the 30-year history of the Grateful Dead and the book had, in miniature, posters advertising the band’s performance. 448 F. 3d at 609. The court found that the defendant’s use of the posters, which were combined with a prominent timeline, textual material to create a collage, was necessary to its transformative historical purpose and noted that the defendant used “minimal image size necessary to accomplish its transformative purpose.” Id. at
610.
Whereas the Bill Graham Archives court held that the defendant’s inclusion was fair use,
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the opposite should occur here for three reasons. Id. First, the Defendants’ use did not commemorate certain events or individuals; it used the tattoos to entertain users and capitalize on professional basketball market. As stated above, it is not a biographical anchor. Second, despite the many components of the video game, the tattoos are readily recognizable. They are not obscured and a marginal part of the game. Unlike a book in Bill Graham Archives, users manipulate the game to create a certain story line—including who is playing as well as how often they choose to use a player—and it is uncertain how many times a user will see the tattoos during the duration of a game.2 See Bill Graham Archives, 448 F. 3d at 611. Lastly, the original size is not significantly reduced. Defendants’ subjective belief that the tattoos are significantly reduced relative to the large size of the game does not take into account the fact that when users view the tattoos in the game, they are not truly significantly reduced. In reality, and as discovery may show, the tattoos are viewed on televisions, computers and projectors that all accentuate the tattoo in its original forms. In some cases, the tattoos may be significantly larger than the originals tattooed on the player’s bodies—they are relative to the size of the screen users are playing the respective games on. See Generally Haberman Decl. ¶ 8 Accordingly, the tattoos are not significantly reduced, but rather blown up to fit the proportion of the screens, and ensure that the quality, and realistic aspects, of the games are still prominent.
Additionally, it is important to emphasize that the use of the copyrighted work is purely commercial: Defendants’ use reasonably furthers its commercial interests. Authors Guild, 804 F.3d at 219. That being said, there needs to be more of a reasonable justification for using the tattoos in their entirety. Nowhere in the pleadings, exhibits, and the Defendants’ memorandum does it allude
2 Here is one circumstance in which discovery will further show that the Defendants’ use is not shielded by the fair use doctrine. The four corners of the Complaint, the exhibits and accompanying documents cannot show how often users see that tattoos and if they are always readily recognizable. Discovery is only mechanism that can show how often a reasonable user sees the tattoos.
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to such reasonable justification. Overall, the Defendants’ commercial use of the tattoos was not transformative. Rather, it conveyed a similar message, idea or purpose that is embedded in the original works. As such, the first fair use factors weighs against a finding of fair use.
2. The Nature of the Work Factor Favors Plaintiff
The second factor in the fair use inquiry, “the nature of the copyrighted work,” embodies the following idea: “works are closer to the core of intended copyright protection of others, with the consequence that fair use is more difficult to establish when the former works are copying.
Campbell, 510 U.S. at 586. Thus, works that are “expressive or creative” are entitled to a greater protection than works that are “factual or informational.” Cariou, 714 F.3d at 709-710. This factor, though, is “rarely found to be determinative.” On Davis v. The Gap, Inc., 246 F.3d 152, 175 (2d
Cir. 2001).
Courts also consider whether the original work was published or unpublished, with the scope of fair use considerable narrower for unpublished works. Blanch, 467 F.3d 244, 256 (2d.
Cir. 2006). Even where a creative work is published, publication status is afforded only “a bit” of weight. Lennon v. Premise Media Corp., 556 F. Supp.2d 310, 325 (S.D.N.Y 2008). Fundamentally, where the original work is creative and published, the nature-of-the work factors weighs against a fair use determination. Cariou, 714 F.3d at 710.
The copyrighted tattoos are expressive and creative which therefore establishes that the second factor favors Plaintiff. The tattoos have valid copyright protection and the Defendants fail to fully explain how it is imperative to fully depict the tattoos when they claim it is a minute portion of the game. Here, like in many other cases, despite the fact that the tattoos were previously published, it does not fully withdraw the original works from protection. Lennon, 556 F. Supp.2d at 325. Additionally, the tattoos clearly embody the artistic efforts of its artist, which militates
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against fair use. As discussed above, the Defendants’ use of the tattoos is not transformative; therefore, the nature-of the work factor carries weight, and ultimately weighs in favor of Plaintiff.
3. The Amount-and-Substantiality Factor Favors Plaintiff
The third statutory factor asks whether the “amount and substantiality of the portion used in relation to the copyrighted work as a whole. . . are reasonable in relation to the purpose of the copying.”3 TCA Television Corp., 839 F.3d at 185 (quoting Campbell, 510 U.S. at 586). In assessing this factor, a court considers not just the proportion of the original work used, but also
“whether the quantity and value of the materials used are reasonable in relation to the purpose of copying.” Hirsch, 2017 WL 3393845, at *6 (internal citations omitted); see also North Jersey
Media Group Inc. v. Pirro, 74 F. Supp.3d 605, 621 (S.D.N.Y. 2015) (internal citations omitted)
(“[t]he crux of the inquiry is whether no more was taken than necessary”). Courts routinely conclude that copying in the entirety weighs against fair use, but they also recognize that substantial taking, however can constitute fair use if justified. See, e.g., North Jersey Media Group
Inc., F. Supp. 3d at 621; Sandoval v. New Line Cinema Corp., 973 F. Supp.401, 414 (S.D.N.Y
1997).
Defendants offer no persuasive justification for using the tattoos in their entirety; they have not demonstrated its use is material for the alleged purpose of the game. To reiterate, neither the use of the tattoos nor the video games itself serve as a historical purpose—Defendants’ purpose is purely commercial. Thus, the Defendants’ reasoning is flawed when they assert that it was necessary for them to display the tattoos in their entirety. Additionally, if the tattoos were so minute, and had limited expressive value, then the question is begged as to why has the Defendants not modified the tattoos to ultimately avoid improper use.
3 This factor is reviewed with reference to the copyrighted work, not the infringing work. See Bill Graham Archives, 448 F. 3d at 613.
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Most importantly, the third factor presents material questions of facts which cannot be resolved on a motion for judgment on the pleadings. The current docket cannot answer many of the material questions of facts that is needed to fully give the context of the Defendants’ use.
Furthermore, discovery is necessary to resolve those questions of fact. For the foregoing reasons, the third fair use factors weighs against fair use and thus against granting the instant motion.
4. The Effect of the Use Upon the Potential Market Factor Favors Plaintiff
Under the fourth and final factor, courts evaluate “the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107(4). This factor “requires courts to consider not only the extent of the market harm by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant would result in a substantially adverse impact on the potential market for the original.” Campbell,
510 U.S. at 590 (internal quotation marks and alterations omitted).
Although the Second Circuit places little weight on the loss of the licensing fee sought from defendants, fair use is usually disfavored when there is a showing of an impact on the potential licensing revenues for “traditional, reasonable, or likely to be developed markets.” Bill
Graham Archives, 448 F. 3d at 610 (quoting American Geophysical Union v. Texaco Inc., 60 F.3d
913, 930 (2d Cir 1994); see also North Jersey Media Group Inc., 74 F. Supp. 3d at n. 20. “To negate fair use one need only show that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work.” Harper & Row Publishers, Inc. v.
Nation Enterprises, 471 U.S. 539, 568 (1985). Impact on the market can be proven even without exploiting the market for derivative works or showing that the alleged use diminished the work’s profitability. See Castle Rock Entm’t Inc., 150 F.3d at 145-146 (noting that although the plaintiff had little interest in exploiting the market for derivative works based on the copyrighted material,
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“the copyright law must respect that creative and economic choice”). When conducting the analysis on the fourth fair use factors, courts are “mindful that the more transformative the secondary use, the less likelihood that the secondary use substitutes for the original,’ even though fair use, being transformative, might well harm, even destroy, the market for the original.” North
Jersey Media Group Inc., 74 F. Supp. 3d at 622.
Based on the foregoing, the Defendants’ use cannot be rendered as transformative; thus, they have usurped multiple markets for the tattoos. By using without consent or compensation the tattoos in their entirety, in a notably successful videogame, and not even crediting the Plaintiff for such use, Defendants diminished the commercial value of the tattoos in the marketplace for licensing its use in other works including, but without limitation to, video games, apparel, and memorabilia. Notably, the Defendants’ use poses a “very real danger” that other such video game manufactures, and others similarly situated with the Defendants, will paying licensing fees for the tattoos and instead opt to use the tattoos without either consent or credit to Plaintiff. Id.
Defendants contend that the fourth factor factors a finding of fair use because it is has never sold merchandise and its use is “transient and fleeting,” but the Court must respect Plaintiff’s economic choice. Defendants Memo at 24. Furthermore, lack of involvement in one derivative market should not equate to no economic harm. The fourth factor only demands harm in potential markets. Accordingly, it is not necessary for Plaintiff to establish a market that have been determined in. Plaintiff has established in the Complaint that it has suffered harm from the
Defendants’ use and there is no need to declare more. Moreover, the fourth factors weighs against fair use and favors Plaintiff for the aforementioned reasons.
On balance, the four fair use factors favor Plaintiff, among them the most important that the use was not transformative. Plaintiff plead enough facts to state a claim to relief that is plausible
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on its face, and the Court accordingly should deny the Defendants’ wholly premature motion in its entirety.
B. DEFENDANTS FAIL TO ALLEGE THAT THEIR USE OF TATTOOS IS DE MINIMUS IN NATURE, AS THEIR USE OF THE SUBJECT TATTOOS IS FAR MORE THAN TRIVIAL AND IS AN IMPORTANT COMPONENT OF ITS VIDEO GAMES
It is recognized that copying of a copyrighted work is de minimus in nature when a defendant copies protected material “to such a trivial extent as to fall below the quantitative threshold of substantial similarity.” Ringgold v. BET, Inc., 126 F.3d 70, 74 (2d Cir. 1997). A de minimus defense is not available “where the qualitative value of the copying is material.” Dun &
Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 208 (3d Cir. 2002). In
Ringgold, the Second Circuit held that the unauthorized use of a copyrighted poster on a television show was not de minimus, as all or part of the poster was shown nine times in a five minute period, for a total of 26.75 seconds, and was thematically related to the show’s content. 126 F.3d at 72-
73. In order to make such a determination, a court must consider, inter alia, “the length of time the copyright work is observable” and its prominence. Gottlieb Development LLC v. Paramount
Pictures Corp., 590 F. Supp.2d 625, 632 (S.D.N.Y. 2008) (explaining that in cases involving visual works, courts consider “the length of time the copyrighted work is observable as well as factors such as focus, lighting camera angles, and prominence”).
To determine substantial similarity for the purposes of ruling on a de minimus defense, a court must decide “whether the average lay observer would recognize the challenged material as having been copied from the copyrighted work.” Crane v. Poetic Prods., 549 F. Supp. 2d 566,
569 (S.D.N.Y.2008) (internal quotation omitted). Moreover, in order to make a determination as to whether the quantitative threshold of substantial similarity is met in cases, such as the instant matter, involving visual works, courts consider the extent to which a protected work is copied
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within an allegedly infringing work. The overall observability of a copyrighted work is pivotal, leading courts to consider such items as the length of time that the copyrighted work was observable, as well as additional factors such as focus, lighting, camera angles, and prominence on the screen. Ringgold, 126 F.3d at 75.
The issue of a de minimus use is widely regarded as not being ripe even at the summary judgment stage, never mind on a motion to dismiss or on the pleadings. See, e.g., Marketing
Technology Solutions, Inc. v. Medizine LLC, 2010 WL 2034404, *3 (S.D.N.Y. May 18, 2010)
(holding that “[t]he qualitative value in the equation, on the present record…remains an issue of fact”); eScholar, LLC v. Otis Educational Systems, Inc., 2005 WL 2977569, *28 (S.D.N.Y. Nov.
3, 2005) (holding that “[w]e do not find that it is undisputed any copying was de minimis. Nor do we find that the similarity concerns only non-copyrightable elements of eScholar's work, or that no reasonable trier of fact could determine that the works are substantially similar. These are the only circumstances where courts have required summary judgment at the substantial similarity stage”). Further, since the question of whether an infringement is substantially similar to the original work often raises a question of fact, summary judgment has been discouraged in determining substantial similarity. See, e.g., Peter F. Gaito Architecture, LLC v. Simone Dev.
Corp., 602 F.3d 57, 63 (2d Cir. 2010) (holding that because substantial similarity “typically presents an extremely close question of fact…questions of non-infringement have traditionally been reserved for the trier of fact”); SGC Communication Resources, LLC v. The Seminar Center,
Inc., No. 98 Civ. 2724, 2001 WL 274053, *5 (S.D.N.Y. March 20, 2001) (holding that “I cannot say, as a matter of law…that defendants' alleged copying of plaintiff's catalog is de minimis and that summary judgment should, therefore, be granted”).
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1. Defendants Have Failed to Establish That Their Offending Use of the Subject Tattoos is de Minimus in Nature as a Matter of Law
The above-synthesized case law reveals that it is wholly premature for the Defendants to suggest that their offending use of the subject tattoos was de minimus in nature. To start, it is wildly disingenuous to suggest that the tattoos were only used to a “trivial extent” in the
Defendants’ video games. Ringgold, 126 F.3d at 74. Defendants, on the one hand, spent pages upon pages of both their memorandum of law and declaration touting how multi-dimensional, dynamic, and customizable that the NBA 2K line of games is, such that one can pick his or her players with ease, dictate camera angles, control how long a player is on the screen, etc., yet on the other hand blanketly and cavalierly dismiss the possibility that the same depth of features can result in the subject tattoos being readily seen on the screen game in and game out for potentially hours at a time depending on what players someone opts to use. A gamer could, hypothetically, pick exactly each player whose tattoos are at issue in this matter, use them repeatedly over a given gaming session lasting hours, use them repeatedly in a video game tournament, and thus be in a position to continuously observe the details of the subject tattoos with minimal difficulty given the
NBA 2K games’ options. Nonetheless, the Defendants would have the Court summarily believe that said tattoos “rarely,” “only fleetingly” appear on the screen in “very limited instances” and
“appear small if they can be seen at all” and are thus “not easily visible” despite their own boastings as to the games’ features and thus that the tattoos’ use are de minimus in nature as a matter of law.
Such readily undermined, empty rhetoric as the “trivial extent” of the use of tattoos should be rejected in its entirety by the Court in its consideration of this motion and the motion should accordingly be denied in its entirety. Defendants’ Memo at pp. 12-13; Ringgold, 126 F.3d at 74.
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2. Defendants Failed to Establish that the Offending Depictions of the Subject Tattoos are Not Substantially Similar to the Protected Works
At this stage of the instant matter, the only purported “lay observers” who have chimed in on whether the subject material could be recognized as “having been copied from the copyrighted work” is Defendants’ counsel and Defendants’ counsel alone. Crane, 549 F. Supp.2d at 569.
Naturally, Defendants’ in-house lay observers described purported difficulty in recognizing the subject tattoos based on them purportedly being “out of focus,” “frequently…obscured by other players and the basketball,” and as being “difficult to perceive” since when they play, the subject tattoos are “never highlighted verbally or visually.” Defendants’ Memo at p. 13. Defendants attempt to minimize the possibility that other “lay observers” may try to manipulate the NBA 2K games to get a better view of the tattoos than they had by dismissing such action as “not how an average lay observer would play the game and, thus…irrelevant.” Id. at p. 13, fn. 3. No support at all is given for how Defendants reached a decision as to what a lay observer typically would or would not do in the process. Such self-serving ipse dixit falls far short of establishing that the tattoos are not substantially similar as a matter of law. The fact is that the overall observability of the subject tattoos can be fairly significant if a gamer either simply selects all of the players with the subject tattoos in a given game or series of games, or otherwise employs the broad range of the video game’s features to focus, angle the camera on, or make the subject tattoos more prominent on screen such that they would appear regularly on the screen and appear to be substantially similar to the real tattoos for which Plaintiff has copyright protection. Ringgold, 126 F.3d at 75.
Defendants’ motion for judgment on the pleadings should accordingly be denied in its entirety.
3. The Issue of Whether the Subject Tattoo’s Usage in the NBA 2K Games is de Minimus is Not Ripe at This Stage
For all of the reasons discussed in subsections 1 and 2, above, it is respectfully requested
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that the instant motion be denied for lack of ripeness at this time such that a determination of whether Defendants’ use of the subject tattoos was de minimus in nature can be “reserved for the trier of fact.” Peter F. Gaito Architecture, LLC, 602 F.3d at 63. As is readily detailed, there are simply too many potential permutations on the usage of the NBA 2K game and its players to state with any degree of legal certainty that the offending use was, or was not, de minimus in nature.
Accordingly, the instant motion should be denied in its entirety.
V. CONCLUSION
For all of the foregoing reasons, the Defendants’ motion to for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c) should be dismissed in its entirety.
Dated: Norwood, New Jersey September 12, 2017 Respectfully submitted,
HEITNER LEGAL, P.L.L.C Attorney for Plaintiff 215 Hendricks Isle Fort Lauderdale, FL 33301 Phone: 954-558-6999 Fax: 954-927-3333
By: DARREN A. HEITNER Florida Bar No.: 85956 [email protected]
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LAW OFFICES OF PAUL S. HABERMAN LLC Attorney for Plaintiff P.O. Box 167 Norwood, New Jersey 07648 Phone: 201-564-0590 Fax: 201-767-2087
/s/ By: ______Paul S. Haberman (PH 2771) [email protected]
CERTIFICATE OF SERVICE
I HEREBY CERTIFY that on this 12th day of September, 2017, I electronically filed the foregoing document using CM/ECF. I also certify that the foregoing document is being served this day on all counsel of record identified on the attached Service List in the manner specified, either via transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to receive electronic Notices of
Electronic Filing. By:
DARREN A. HEITNER Florida Bar No.: 85956 [email protected]
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SERVICE LIST
Dale M. Cendali, Esq. Joshua L. Simmons, Esq. KIRKLAND & ELLIS LLP 601 Lexington Avenue New York, New York 10022 Telephone: (212) 446-4800 Facsimile: (212) 446-4900 [email protected] [email protected] [email protected]
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