Take-Two Interactive Software, Inc. v. Sims

Background

Take-Two Interactive Software, Inc. and 2K Games, Inc. released NBA 2K19, a basketball simulation game that includes customizable celebratory dances. Brandon Sims, also known as “Lil Playboii,” owned a copyright in a dance routine called “Crank That Dance.” Sims claimed that the “Soul Jah Boi” dance in NBA 2K19 infringed that copyright.

Sims sent cease-and-desist letters to the plaintiffs asserting infringement, demanding a license and payment for past use, and stating that he would take available legal and equitable steps if the dispute could not be resolved. The plaintiffs denied infringement and then filed this action seeking a declaratory judgment that the “Soul Jah Boi” dance did not infringe Sims’s copyright.

Sims moved to dismiss on three grounds: lack of personal jurisdiction, improper venue, and lack of a justiciable controversy under the Declaratory Judgment Act. Plaintiffs also sought jurisdictional discovery if the court were inclined to grant the motion; the court denied that request based on the record presented.

Justiciability

The court held that the case presented an actual controversy suitable for a declaratory judgment. Although Sims’s letters did not expressly threaten a lawsuit, they asserted copyright ownership, claimed infringement, referred to his enforcement of unauthorized uses, demanded a license and payment, and reserved his right to take legal action. These facts gave the plaintiffs a reasonable apprehension that Sims might sue over their use of the dance. The court therefore denied the motion to dismiss for lack of a justiciable controversy.

Personal Jurisdiction and Venue

The court analyzed whether Sims had sufficient contacts with California for the court to exercise specific personal jurisdiction. For the copyright-related claim, the relevant test asked whether Sims intentionally acted, expressly aimed his conduct at California, and caused harm he knew was likely to occur there.

The court found that Sims’s two cease-and-desist letters did not, standing alone, establish the required minimum contacts. The first letter went to 2K Games’s headquarters in California, while the second went to the plaintiffs’ counsel in New York. The court characterized the letters as ordinary cease-and-desist communications and noted that the plaintiffs did not argue that they were abusive, wrongful, or connected to other enforcement proceedings.

The court also rejected the plaintiffs’ argument that Sims’s performances in California supplied the necessary contacts. Sims performed the dance during a 2009 concert tour and stated that he had not been in California since 2010, while NBA 2K19 was released in 2018. The court found nothing showing that Sims knew in 2009 that the plaintiffs existed or that 2K Games was located in California. It concluded that the plaintiffs had not shown the minimum contacts needed for personal jurisdiction.

Because venue in a copyright case depends on whether the defendant would be subject to personal jurisdiction in the district, the court also concluded that venue in the Northern District of California was improper.

Disposition

Judge Jeffrey White denied the motion to dismiss for lack of a justiciable controversy, granted in part Sims’s motion to dismiss for lack of personal jurisdiction and improper venue, and transferred the case to the United States District Court for the Northern District of Georgia under 28 U.S.C. § 1406(a). The clerk was directed to close the file upon transfer. The order did not decide whether the “Soul Jah Boi” dance infringed Sims’s copyright.