Solid Oak Sketches, LLC v. Visual Concepts, LLC

Background

Solid Oak Sketches, LLC held exclusive licenses to five tattoo designs appearing on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin. Solid Oak alleged that 2K Games, Inc. and Take-Two Interactive Software, Inc. infringed its copyrights by displaying those tattoos in NBA 2K14, NBA 2K15, and NBA 2K16.

The defendants moved for summary judgment under Federal Rule of Civil Procedure 56. They sought dismissal of Solid Oak’s copyright-infringement claim and judgment on their counterclaims seeking declarations that their use was de minimis—that is, too trivial to be actionable—and fair use. Solid Oak cross-moved to exclude four expert declarations. The defendants’ third counterclaim, concerning alleged fraud on the Copyright Office, was not part of the summary-judgment motion and remained pending.

The court relied on undisputed evidence that the tattoos appeared only when users selected three of more than 400 available players, represented between 0.000286% and 0.000431% of the game data, and appeared at roughly 4.4% to 10.96% of their real-life size. The court also found that the tattoos were generally out of focus, obscured by other players and game elements, and difficult to identify during gameplay. They did not appear on the game covers or in the advertising materials.

Copyright-Infringement Claim

The court held that no reasonable factfinder could conclude that the tattoos as displayed in NBA 2K were substantially similar to the tattoo designs licensed to Solid Oak. Applying the ordinary-observer test, the court found that an average game user could not identify the tattoo designs or even their subject matter from the game’s display. The use therefore fell below the quantitative threshold required for actionable copying and was de minimis.

The court also held that the defendants’ copyright-infringement argument prevailed for an additional reason. Based on the tattooists’ declarations, the court found that the tattooists created and placed the tattoos on the players while intending that the players could display them as parts of their likenesses, including in public appearances, advertisements, and video games. The court concluded that the players had implied nonexclusive licenses to use the tattoos as elements of their likenesses. Because the players had authorized the defendants to use their likenesses, the defendants also had permission to include the tattoos in NBA 2K.

Fair Use Counterclaim

The court granted summary judgment to the defendants on their fair-use counterclaim. It concluded that all four statutory fair-use factors favored the defendants.

First, the court found the use transformative. The tattoos were originally created as personal body art, while the game used them to make digital depictions of the players more realistic. The tattoos were displayed at a greatly reduced size, were difficult to observe, and were only a tiny part of the game. Although NBA 2K was commercial, the court found that the tattoos were incidental to the game’s commercial value and that consumers did not buy the game for those tattoos.

Second, the court found that the nature of the copyrighted works favored fair use because the tattoos had been published and were based on photographs, pre-existing designs, or common tattoo motifs. Third, although the defendants copied the tattoos in their entirety, the court found that copying the full designs was reasonably related to the purpose of realistically depicting the players and that the tattoos’ small, indistinct presentation limited their expressive impact. Fourth, the court found no evidence of harm to a traditional, reasonable, or likely-to-develop licensing market. The game was not a substitute for the tattoo designs, and Solid Oak had not shown that a market for licensing such tattoos for video games or other media was likely to develop.

Motion to Exclude Expert Evidence

The court denied Solid Oak’s motion to exclude the four expert declarations. It found the reports relevant and sufficiently reliable under Federal Rules of Evidence 702 and 403. The experts addressed consumer demand, tattoo history and industry practices, video-game features and markets, and potential damages and licensing markets. The court rejected Solid Oak’s general objections that the opinions were unqualified, irrelevant, prejudicial, or based on improper materials.

Disposition

Judge Laura Taylor Swain granted the defendants’ motion for summary judgment in its entirety and denied Solid Oak’s cross-motion to exclude the expert testimony. The court dismissed Solid Oak’s Second Amended Complaint, granted the defendants summary judgment on their First and Second Counterclaims, and declared that the defendants’ use of the tattoos in the challenged game versions was de minimis and fair use and therefore did not infringe Solid Oak’s copyrights. The defendants’ Third Counterclaim remained unresolved.