Solid Oak Sketches, LLC v. Visual Concepts, LLC et al

Filing 164

MEMORANDUM OPINION AND ORDER: re: 127 MOTION for Summary Judgment filed by 2K Games, Inc., Take-Two Interactive Software Inc. For the foregoing reasons, the Defendants' motion for summary judgment is granted in its entirety and Plaintiff' s cross motion to exclude Defendants' expert testimony is denied. Plaintiff's Second Amended Complaint is dismissed in its entirety. Defendants are granted summary judgment on their First and Second Counterclaims, and the Court hereby decla res that Defendants' use of the Tattoos in the challenged versions of their video game is de minimis and fair use and therefore does not infringe Plaintiff's copyrights. This Memorandum Opinion and Order resolves Docket Entry Nos. 127 and 1 47. Defendants' Third Counterclaim remains unresolved. The parties are directed to meet and confer and file a joint report as to what, if any, steps remain to be taken to settle or otherwise resolve the Third Counterclaim. The joint report must be filed by May 15, 2020, and shall be directed to Magistrate Judge Aaron, to whom this case remains referred for general pretrial management. SO ORDERED. (Signed by Judge Laura Taylor Swain on 3/26/2020) (ama)

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 1 of 30

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------------------------x
SOLID OAK SKETCHES, LLC,
PlaintiffCounterdefendant,
-v-

No. 16-CV-724-LTS-SDA

2K GAMES, INC. and TAKE-TWO
INTERACTIVE SOFTWARE, INC.,
DefendantsCounterclaimants.
-------------------------------------------------------x
MEMORANDUM OPINION AND ORDER
Solid Oak Sketches, LLC (“Solid Oak” or “Plaintiff”), brings this action against
Defendants 2K Games, Inc., and Take-Two Interactive Software, Inc. (collectively, “Take Two”
or “Defendants”), asserting a claim of copyright infringement pursuant to the Copyright Act of
1976, 17 U.S.C. § 101 et seq. (the “Copyright Act”). Following this Court’s granting of
Defendants’ motion to dismiss Plaintiff’s claims for statutory damages and attorneys’ fees on
August 2, 2016, Plaintiff filed a Second Amended Complaint (“SAC”) on October 24, 2016.
(Docket Entry No. 55.) On August 16, 2016, Defendants filed counterclaims for declaratory
judgment pursuant to the Copyright Act and the Declaratory Judgment Act, 28 U.S.C. §§ 22012202 (“Def. Countercl.”). (Docket Entry No. 47.) The Court denied Plaintiff’s motion to
dismiss the counterclaims on May 16, 2017 (docket entry no. 64) and, on March 30, 2018,
denied Defendants’ motion for judgment on the pleadings (“March Op.,” docket entry no. 117).
The Court has jurisdiction of this action pursuant to 28 U.S.C. §§ 1331 and 1338.

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

1

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 2 of 30

Defendants now move for summary judgment pursuant to Federal Rule of Civil
Procedure 56, requesting (i) an order dismissing Plaintiff’s copyright infringement claim and (ii)
entry of declaratory judgment in Defendants’ favor on their de minimis use and fair use
counterclaims. 1 (Docket Entry No. 127.) Plaintiff has cross moved to exclude the four expert
declarations filed in support of Defendants’ summary judgment motion. (Docket Entry No. 147.)
The Court has considered carefully the parties’ submissions in connection with the motions. For
the following reasons, Defendants’ motion for summary judgment is granted and Plaintiff’s cross
motion to exclude is denied.
BACKGROUND
Familiarity with the facts underlying this case, which have been detailed in prior
decisions of the Court, including the August 2, 2016, Memorandum Opinion and Order, the May
16, 2017, Memorandum Order, and the March 30, 2018, Memorandum Opinion and Order, is
presumed. (See Docket Entry Nos. 44, 64, and 117.) The following summary focuses on facts
that are pertinent to the question of whether Defendants are entitled to summary judgment.
Except as otherwise noted, the following material facts are undisputed. 2

1

Defendants have moved for summary judgment as to their first and second counterclaims
only. Defendants’ third counterclaim for “declaratory judgment of fraud on the
Copyright Office” remains pending. (Def. Countercl. ¶¶ 228-35.)

2

The facts presented or recited as undisputed are drawn from the parties’ statements
pursuant to S.D.N.Y. Local Civil Rule 56.1, or from evidence as to which there is no nonconclusory factual proffer. Citations to Defendants’ Local Civil Rule 56.1 Statement
(Defendants-Counterclaimants 2K Games, Inc. and Take-Two Interactive Software,
Inc.’s Rule 56.1 Statement of Undisputed Facts in Support of Their Motion for Summary
Judgment (“Def. 56.1”), Docket Entry No. 129) and Plaintiff’s Counterstatement
(Response to Defendants’ Rule 56.1 Statement of Purportedly Undisputed Facts (“Pl.
56.1”), Docket Entry No. 146) incorporate by reference citations to the underlying
evidentiary submissions. Plaintiff proffered no citations to record evidence to the extent
it purported to dispute Defendants’ documented proffers of undisputed facts in
Defendants’ 56.1 statement. Where Plaintiff purported to deny or dispute particular

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

2

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 3 of 30

Take-Two is a major developer, publisher, and marketer of interactive
entertainment and video games that develops and publishes products through its wholly-owned
subsidiaries, 2K and Rockstar Games. (SAC ¶¶ 17-18.) Defendants annually release an updated
basketball simulation video game that depicts basketball with realistic renderings of different
National Basketball Association (“NBA”) teams, including lifelike depictions of NBA players
and their tattoos. (Def. Countercl. ¶¶ 8, 141.) Plaintiff alleges that Defendants have infringed its
copyrights by publicly displaying works for which Plaintiff owns copyrights—five tattoos (the
“Tattoos”) that are depicted on NBA players Eric Bledsoe, LeBron James, and Kenyon Martin
(the “Players”)—in versions 2K14, 2K15, and 2K16 (released in 2013, 2014, and 2015,
respectively) of Defendants’ basketball simulation video game. (SAC ¶¶ 9-11.)
Tattoos
According to Defendants’ expert, Nina Jablonski, “[t]attoos have been a part of
human expression for thousands of years.” (Def. 56.1 ¶ 1.) In modern day, tattoos like the
Tattoos at issue in this litigation “reflect the personal expression of the person bearing the tattoo
and are created for that purpose.” (Def. 56.1 ¶¶ 2-3.) The Tattoos reflect the Players’ personal
expression. (Def. 56.1 ¶ 3.)
Solid Oak holds an exclusive license to each of the Tattoos. (See Declaration in
Opposition to Defendants’ Motion and in Support of Cross-Motion (“Haberman Decl.”), Docket
Entry No. 149.) However, Solid Oak is not licensed to apply the tattoos to a person’s skin, and
Solid Oak does not hold any publicity or trademark rights to the Players’ likenesses. (Def. 56.1
¶¶ 101-02.) The Players “have given the NBA the right to license [their] likeness to thirdparties,” and the NBA has granted such a license to Take-Two. (Def. 56.1 ¶¶ 103-04.) The
statements, Plaintiff made arguments regarding relevance or other legal issues or, as
addressed infra, challenged the relevance or basis of proffered expert testimony.
SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

3

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 4 of 30

Players also granted Take-Two permission to use their likenesses. (Declaration of LeBron James
(“James Decl.”), Docket Entry No. 134, ¶ 13; Declaration of Kenyon Martin (“Martin Decl.”),
Docket Entry No. 135, ¶ 15.)
Child Portrait Tattoo
LeBron James’s “Child Portrait” tattoo was inked by tattooist Justin Wright, and
was copied from a baby picture provided by Mr. James. (Def. 56.1 ¶¶ 5-10.) Mr. Wright “knew
and intended that when [Mr. James] appeared in public, on television, in commercials, or in other
forms of media, he would display the Child Portrait Tattoo.” (Def. 56.1 ¶ 11.) It was Mr.
Wright’s intention that the “Child Portrait” Tattoo “become a part of Mr. James’s likeness,”
which, according to Mr. Wright, “Mr. James was and is free to use . . . as he desire[d], including
allowing others to depict it, such as in advertisements and video games.” (Def. 56.1 ¶¶ 11-13.)
330 and Flames Tattoo
LeBron James’s “330 and Flames” tattoo was inked by tattooist Deshawn Morris,
also known as Shawn Rome (“Mr. Rome”). (Def. 56.1 ¶¶ 14-15.) At Mr. James’s request, Mr.
Rome created the tattoo by shading in the outline of, and adding flames to, the number “330,”
which had already been inked on Mr. James’s arm. (Def. 56.1 ¶¶ 16-19.) The number “330”
represents the area code of Akron, Ohio. (Def. 56.1 ¶ 16.) According to Defendants’ expert, Dr.
Nina Jablonski, flames are a common motif used for tattoos. (Def. 56.1 ¶ 20.)
Mr. Rome stated that, “[a]t the time that [he] inked [the ‘330 and Flames’ tattoo]
on Mr. James, [he] knew that Mr. James was a professional basketball player with the [NBA],”
and that “it was likely that Mr. James was going to appear in public, on television, in
commercials, or in other forms of media, like video games.” (Declaration of Deshawn Morris
(“Morris Decl.”), Docket Entry No. 132, ¶ 9.) Mr. Rome also stated that, “[w]hen [he] inked [the

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

4

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 5 of 30

‘330 and Flames’ tattoo] on Mr. James according to his requests, [he] knew and intended that
[Mr. James] would display [the ‘330 and Flames’ tattoo] whenever he appeared in public,” and
that he “intended that [the ‘330 and Flames’ tattoo] become a part of Mr. James’s likeness and
part of his image.” (Morris Decl. ¶ 10.)
Script with a Scroll, Clouds and Doves Tattoo
Shawn Rome also inked LeBron James’s “Script with a Scroll, Clouds and
Doves” tattoo. (Def. 56.1 ¶ 21.) The “Script” tattoo was copied from a design in Mr. Rome’s
sketchbook. (Def. 56.1 ¶ 22.) Solid Oak did not license the drawing used to create the “Script”
tattoo. (Def. 56.1 ¶ 23.) According to Dr. Jablonski, birds, such as doves, “have been a popular
subject of tattoos since ancient times.” (Def. 56.1 ¶ 24.)
As with the “330 and Flames” tattoo, Mr. Rome “intended that [the ‘Script’
tattoo] become a part of Mr. James’s likeness and part of his image,” knowing that (i) Mr. James
was a professional basketball player with the NBA and that (ii) it was “likely that Mr. James was
going to appear in public, on television, in commercials, or in other forms of media, like video
games.” (Morris Decl. ¶¶ 9-10.)
Wizard Tattoo
Kenyon Martin’s “Wizard” tattoo was inked by Thomas Ray Cornett, and was
“copied . . . directly from the pre-existing design” that Mr. Martin chose from designs featured
on the walls and in books at Mr. Cornett’s parlor. (Def. 56.1 ¶¶ 25, 27-28.) Mr. Cornett did not
design the tattoo. (Declaration of Thomas Ray Cornett (“Cornett Decl.”), Docket Entry No. 131,
¶ 13.) The “Wizard” tattoo appears as a grim reaper holding a basketball. (Def. 56.1 ¶ 26.)
Both basketballs and “depictions of death or the grim reaper” are common tattoo motifs. (Def.
56.1 ¶¶ 30-31.)

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

5

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 6 of 30

When he inked the “Wizard” tattoo, Mr. Cornett “knew and intended” that the
tattoo “would be displayed if Mr. Martin appeared in media, such as on television or in
commercials.” (Cornett Decl. ¶ 15.) Mr. Cornett “also intended that the tattoo become a part of
Mr. Martin’s likeness and part of his image.” (Id.) Further, Mr. Cornett “knew and intended that
the tattoo would need to be included if anyone were to create a rendition of Mr. Martin’s
likeness, such as in art or video games.” (Id.)
Basketball with Stars and Script
Mr. Cornett also inked Eric Bledsoe’s “Basketball with Stars and Script” tattoo.
(Cornett Decl. ¶ 20.) This tattoo was designed by Mr. Cornett with Mr. Bledsoe’s direction and
input. (Id.) When Mr. Cornett inked the “Basketball with Stars and Script” tattoo on Mr.
Bledsoe, he “knew and intended that [Mr. Bledsoe] would display the tattoo whenever he
appeared in public,” such as “on television or in commercials.” (Id. ¶ 21.) As with Mr.
Kenyon’s “Wizard” tattoo, Mr. Cornett “intended that the [‘Basketball with Stars and Script’]
tattoo [would] become a part of Mr. Bledsoe’s likeness and part of his image,” and he “knew and
intended that the tattoo would need to be included if anyone were to create a rendition of Mr.
Bledsoe’s likeness, such as in art or video games.” (Id.)
NBA 2K Video Game
The NBA 2K game, which is much shorter in duration than an actual NBA game,
has “many components, including graphics, characters, a fictitious plot, gameplay, [and] music.”
(Def. 56.1 ¶¶ 70, 72.) These components, which include auditory elements such as “the sound of
shoes against the court’s surface; the noise of the crowd, the horns and other audible warnings
signaling elapsing shot clocks, ending timeouts, . . . television announcers performing play-byplay,” and visual elements such as “the basketball; the hoop, . . . the court, . . . the players,

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

6

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 7 of 30

including multiple individuals on the court and on the sidelines, each of whom wears jerseys
with different accessories and other features (such as tattoos); coaches; referees; cheerleaders;
spectators; the stadium; and the game clock and scoring system,” are designed to most accurately
simulate the look and feel of an actual NBA game. (Def. 56.1 ¶¶ 74, 93; see also Declaration of
Jeffrey Thomas in Support of Defendants-Counterclaimants’ Motion for Summary Judgment
(“Thomas Decl.”), Docket Entry No. 130, ¶ 2.)
To further the goal of simulating an actual NBA game, Take-Two included the
Tattoos in NBA 2K “to accurately depict the physical likenesses of the real-world basketball
players as realistically as possible.” (Def. 56.1 ¶ 79.) However, for a number of reasons, NBA
2K users do not see the Tattoos clearly, if at all, during gameplay. (Def. 56.1 ¶¶ 91-99.) NBA
2K does not depict the Tattoos separately from the Players. (Def. 56.1 ¶ 85.) Therefore, the
Tattoos only appear when a user selects Mr. James, Mr. Martin, or Mr. Bledsoe from over 400
available players. (Def. 56.1 ¶¶ 85-86.) The Tattoos comprise only a miniscule proportion of
the video game data: only 0.000286% to 0.000431% of the NBA 2K game data is devoted to the
Tattoos. (Def. 56.1 ¶¶ 75-78.)
When a Tattooed player is selected, the Tattoos are depicted on a computer or
television screen at about 4.4% to 10.96% of the size that they appear in real life “due to the
great distance from the camera that the players usually are depicted” and the resulting relatively
small size of the player figures. (Def. 56.1 ¶¶ 91-92; Expert Report and Declaration of Ian
Bogost, Ph.D. (“Bogost Decl.”), Docket Entry No. 136, ¶¶ 71-77.) The Tattoos appear merely as
“visual noise,” “no more noticeable than a simulated player’s nose shape or hairstyle.” (Def.
56.1 ¶¶ 94-95 (internal quotation marks omitted).) The Tattoos “are subordinated to the display
of the court and the players in competition.” (Def. 56.1 ¶ 96 (internal quotation marks omitted).)

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

7

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 8 of 30

The Tattoos also cannot be observed clearly because they are often “blocked from view by other
players,” are “obstruct[ed] by other game elements,” “often appear out-of-focus,” and “players
on whom the Tattoos appear move quickly in the game.” (Def. 56.1 ¶ 97 (internal quotation
marks omitted).)
Defendants provided video clips showing how each of the Players appears during
NBA 2K gameplay. (Thomas Decl., Exs. B, C, and D.) At no point during the video clips are
the Tattoos discernible to the viewer. These videos demonstrate that the Players’ tattoos,
including the Tattoos at issue, appear entirely out-of-focus. The Tattoos are further obscured by
the Players’ quick and erratic movements up and down the basketball court. (Thomas Decl.,
Exs. B, C, and D.)
The Tattoos did not play a significant role in marketing NBA 2K. The NBA 2K
game covers do not depict the Players or their tattoos, and the advertising materials neither
depicted nor discussed the Tattoos. (See Def. Countercl. ¶¶ 161-67; Plaintiff’s Answer to
Defendants’ Counterclaims (“Pl. Ans.”), Docket Entry No. 65, ¶¶ 161-67.) According to
Defendants’ expert, Dr. Jay, while “consumers buy NBA 2K video games for numerous reasons
. . . consumers do not buy NBA 2K video games for the tattoos on LeBron James, Eric Bledsoe
or Kenyon Martin.” (Def. 56.1 ¶ 90.)
Market for Licensing Tattoos
Solid Oak has not profited from licensing the Tattoos. (Declaration of Dale M.
Cendali, Esq. in Support of Defendants-Counterclaimants’ Motion for Summary Judgment
(“Cendali Decl.”), Docket Entry No. 140, Ex. E at 370.) Solid Oak has never created a video
game that depicts the Tattoos, nor has Solid Oak licensed the Tattoos for use in a video game.
(Def. 56.1 ¶¶ 105-06, 110.) Defendants’ expert, Dr. Bogost, stated that he is “not familiar with

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

8

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 9 of 30

any video game developer licensing the rights to tattoos for inclusion in a video game.” (Def.
56.1 ¶ 111.) Solid Oak has not identified an instance in which a tattoo image has been licensed
for use in a video game. (Def. 56.1 ¶ 112.) Defendants’ expert, James Malackowski, opined that
a market for licensing basketball players’ tattoos for use in video games is “unlikely to develop.”
(Def. 56.1 ¶ 115.) As noted above, Defendants’ expert, Dr. Jay, relied on consumer survey data
to conclude that “consumers do not buy NBA 2K video games for the tattoos on LeBron James,
Eric Bledsoe or Kenyon Martin.” (Def 56.1 ¶ 90.) Thus, there is no demand for licensing the
Tattoos for use in a video game.
Solid Oak has neither licensed the Tattoo designs nor sold merchandise depicting
the Tattoos. (Def. 56.1 ¶¶ 107-08.) Solid Oak’s owner, Matthew Siegler, testified that he would
“need permission from the players . . . to not infringe on their right of publicity,” in order to
move forward with a business selling “dry wick apparel” bearing the Players’ tattoos. (Cendali
Decl., Ex. A at 389.) Solid Oak does not have a license to use the Players’ publicity or
trademark rights. (Def 56.1 ¶ 102.) Solid Oak has not proffered any evidence indicating that it
has a prospect of obtaining such rights.
DISCUSSION
Rule 56 Summary Judgment Standard
Rule 56(a) of the Federal Rules of Civil Procedure provides that summary
judgment is to be granted in favor of a moving party where that party can demonstrate “that there
is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” Fed R. Civ. P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986).
For the purposes of summary judgment motion practice, a fact is considered material “if it might
affect the outcome of the suit under the governing law,” and an issue of fact is “genuine” where

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

9

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 10 of 30

“the evidence is such that a reasonable jury could return a verdict for the nonmoving party.”
Holtz v. Rockefeller & Co. Inc., 258 F.3d 62, 69 (2d Cir. 2001) (internal quotation marks and
citations omitted). The moving party bears the burden of demonstrating the absence of a
material fact, and the court must be able to find that, “‘after drawing all reasonable inferences in
favor of a non-movant, no reasonable trier of fact could find in favor of that party.’” Marvel
Entertainment, Inc. v. Kellytoy (USA), Inc., 769 F. Supp. 2d 520, 523 (S.D.N.Y. 2011) (quoting
Heublein v. U.S., 996 F.2d 1455, 1461 (2d Cir. 1993)).
A party that is unable to “make a showing sufficient to establish the existence of
an element essential to that party’s case, and on which that party will bear the burden of proof at
trial,” will not survive a Rule 56 motion. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
Specifically, the party who bears the burden of proof at trial “must do more than simply show
that there is some metaphysical doubt as to the material facts and they may not rely on
conclusory allegations or unsubstantiated speculation.” Jeffreys v. N.Y.C., 426 F.3d 549, 554
(2d Cir. 2005) (citations omitted). “[M]ere conclusory allegations or denials . . . cannot by
themselves create a genuine issue of material fact where none would otherwise exist.” Hicks v.
Baines, 593 F.3d 159, 166 (2d Cir. 2010) (internal quotation marks and citation omitted).
Plaintiff’s Copyright Infringement Claim
Defendants move to dismiss Plaintiff’s complaint for copyright infringement,
arguing that Plaintiff cannot prove its claim because Defendants’ use of the Tattoos is de
minimis and Plaintiff is thus unable to prove the key substantial similarity element of its cause of
action. Defendants further argue that the copyright claim must fail because their use of the
images was pursuant to implied authorization granted prior to Plaintiff’s acquisition of any rights
in the Tattoos.

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

10

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 11 of 30

De Minimis Use
“In order to establish a claim of copyright infringement, a plaintiff with a valid
copyright must demonstrate that: (1) the defendant has actually copied the plaintiff’s work; and
(2) the copying is illegal because a substantial similarity exists between the defendant’s work and
the protectible elements of plaintiff’s.” Peter F. Gaito Architecture, LLC v. Simone Dev. Corp.,
602 F.3d 57, 63 (2d Cir. 2010) (internal quotation marks omitted). To be substantially similar,
the amount copied must be more than de minimis. Castle Rock Entm’t, Inc. v. Carol Publ’g Grp,
Inc., 150 F.3d 132, 138 (2d Cir. 1998) (citing Ringgold v. Black Entertainment Television, Inc.,
126 F.3d 70, 75 (2d Cir. 1997)). “To establish that the infringement of a copyright is de
minimis, and therefore not actionable, the alleged infringer must demonstrate that the copying of
the protected material is so trivial ‘as to fall below the quantitative threshold of substantial
similarity, which is always a required element of actionable copying.’” Sandoval v. New Line
Cinema Corp., 147 F.3d 215, 217 (2d Cir. 1998) (quoting Ringgold, 126 F.3d at 74).
The quantitative component of a de minimis analysis concerns (i) “the amount of
the copyrighted work that is copied,” (ii) “the observability of the copied work – the length of
time the copied work is observable in the allegedly infringing work,” and (iii) factors such as
“focus, lighting, camera angles, and prominence.” Ringgold, 126 F.3d at 75 (citing 4 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright §§ 13.03[A][2] (1997)). “[O]bservability of
the copyrighted work in the allegedly infringing work” is fundamental to a determination of
whether the “quantitative threshold” of substantial similarity has been crossed. Sandoval, 147
F.3d at 217.
Substantial similarity must be determined through application of the “ordinary
observer test,” which considers “whether an average lay observer would recognize the alleged

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

11

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 12 of 30

copy as having been appropriated from the copyrighted work.” Rogers v. Koons, 960 F.2d 301,
307 (2d Cir. 1992) (internal quotation marks omitted). In other words, the Court considers
“whether the ordinary observer, unless he set out to detect the disparities, would be disposed to
overlook them, and regard their aesthetic appeal as the same.” Id. at 307-08 (internal quotation
marks omitted). Summary judgment may be granted on a de minimis use claim when “no
reasonable trier of fact could find the works substantially similar.” Estate of Smith v. Cash
Money Records, Inc., 253 F. Supp. 3d 737, 746 (S.D.N.Y. 2017) (internal quotation marks
omitted).
As noted above, Defendants assert that Plaintiff cannot establish substantial
similarity because their use of the Tattoos is de minimis. (See Memorandum of Law in Support
of Defendants-Counterclaimants 2K Games, Inc. and Take-Two Interactive Software, Inc.’s
Motion for Summary Judgment (“Def. Opening Br.”), Docket Entry No. 128, at 9-11.) Plaintiff
protests that “Defendants have provided no material extrinsic evidence that answers the material
questions surrounding de minimis use.” (Memorandum of Law in Opposition to Defendants’
Motion for Summary Judgment and in Support of Plaintiff’s Cross-Motion (“Pl. Opp. Br.”),
Docket Entry No. 148, at 3-7.)
In resisting Defendants’ earlier motion for judgment on the pleadings, Plaintiff
had argued that, “if an NBA2K player selects Messrs. James, Martin and Bledsoe in a given
game or series of games, or ‘employs the broad range of the video game’s features to focus,
angle the camera on, or make the subject tattoos more prominent,’ ‘the overall observability of
the subject tattoos can be fairly significant.’” (March Op. at 7-8.) The Court denied the motion,
holding, inter alia, that, at the pleading stage,
there [was] no objective perspective as to how the Defendants’
video game is generally played, or to what extent certain game

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

12

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 13 of 30

features can be or are actually utilized, that would allow this Court
to make determinations about the choices and subsequent
observations of the ‘average lay observer,’ or about the
observability and prominence of the Tattoos. The Court [was] thus
unable to conclude without the aid of extrinsic evidence that ‘no
reasonable jury, properly instructed, could find that the two works
are substantially similar.’
(March Op. at 8.)
Here, Defendants are entitled as a matter of law to summary judgment dismissing
Plaintiff’s copyright infringement claim because no reasonable trier of fact could find the Tattoos
as they appear in NBA 2K to be substantially similar to the Tattoo designs licensed to Solid
Oak. 3 The Tattoos only appear on the players upon whom they are inked, which is just three out
of over 400 available players. The undisputed factual record shows that average game play is
unlikely to include the players with the Tattoos and that, even when such players are included,
the display of the Tattoos is small and indistinct, appearing as rapidly moving visual features of
rapidly moving figures in groups of player figures. Furthermore, the Tattoos are not featured on
any of the game’s marketing materials.
When the Tattoos do appear during gameplay (because one of the Players has
been selected), the Tattoos cannot be identified or observed. (Thomas Decl., Exs. B, C, and D.)
The Tattoos are significantly reduced in size: they are a mere 4.4% to 10.96% of the size that
they appear in real life. The video clips proffered by Defendants show that the Tattoos “are not
displayed [in NBA 2K] with sufficient detail for the average lay observer to identify even the
subject matter of the [Tattoos], much less the style used in creating them.” Sandoval, 147 F.3d at
218. The videos demonstrate that the Tattoos appear out of focus and are observable only as
3

The Court notes that Solid Oak has not proffered images of the Tattoo designs. For
purposes of its substantial similarity analysis, the Court has used the Tattoo images
included in James Malackowski’s Declaration. (Declaration of James Malackowski in
Support of Defendants-Counterclaimants’ Motion for Summary Judgment, Docket Entry
No. 139, Ex. A at 7-9.)

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

13

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 14 of 30

undefined dark shading on the Players’ arms. Further, the Players’ quick and erratic movements
up and down the basketball court make it difficult to discern even the undefined dark shading.
The uncontroverted evidence proffered by Defendants demonstrates that the Tattoos often do not
appear during the NBA 2K video game and, when they do, they are so small and distorted by the
camera angles and other game elements that they are indiscernible to the average game users.
While Plaintiff previously asserted that NBA 2K “employs the broad range of the video game’s
features to focus, angle the camera on, or make the subject tattoos more prominent” (March Ord.
at 7-8), Plaintiff has not proffered any evidence to support that proposition. The undisputed
evidence of record shows that Defendants’ use of the Tattoos in NBA 2K falls below the
quantitative threshold of substantial similarity. No reasonable fact finder could conclude that
Plaintiff has carried its burden of proving that Defendants’ use of the copyrighted material was
substantially similar to Plaintiff’s copyrighted work. Thus, Defendants are entitled as a matter of
law to judgment dismissing Plaintiff’s SAC, which asserts only a copyright infringement claim,
and a declaration that Defendants’ use of the Tattoos is de minimis.
Implied License
Defendants also argue persuasively that Plaintiff’s copyright infringement claim
must fail because they were authorized to use the Tattoos in NBA 2K; Defendants assert that
they had an implied license to feature the Tattoos as part of the Players’ likenesses. (Def.
Opening Br. at 23-25.) Plaintiff disputes this proposition, arguing that the tattooist’s
expectations about whether a tattoo would become a part of his or her client’s likeness “play[] no
role in copyright law.” (Pl. Opp. Br. at 16.) Plaintiff also asserts that “any restriction on
Plaintiff’s ability to commercially exploit the underlying artwork should have been included in
the [Tattoo] licensing agreements.” (Pl. Opp. Br. at 17.)

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

14

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 15 of 30

“A copyright owner who grants a nonexclusive license to use his copyrighted
material waives his right to sue the licensee for copyright infringement.” Graham v. James, 144
F.3d 229, 236 (2d Cir. 1998). “Although the Second Circuit has not yet ruled on the precise
circumstances under which an implied non-exclusive license will be found,” courts in this Circuit
have found an implied non-exclusive license “where one party created a work at the other’s
request and handed it over, intending that the other copy and distribute it.” Weinstein Co. v.
Smokewood Entm’t Grp., LLC, 664 F. Supp. 2d 332, 344 (S.D.N.Y. 2009) (internal quotation
marks omitted).
Here, the undisputed factual record clearly supports the reasonable inference that
the tattooists necessarily granted the Players nonexclusive licenses to use the Tattoos as part of
their likenesses, and did so prior to any grant of rights in the Tattoos to Plaintiff. According to
the declarations of Messrs. Thomas, Cornett, and Morris, (i) the Players each requested the
creation of the Tattoos, (ii) the tattooists created the Tattoos and delivered them to the Players by
inking the designs onto their skin, and (iii) the tattooists intended the Players to copy and
distribute the Tattoos as elements of their likenesses, each knowing that the Players were likely
to appear “in public, on television, in commercials, or in other forms of media.” (Declaration of
Justin Wright (“Wright Decl.”), Docket Entry No. 133, ¶ 10.) Thus, the Players, who were
neither requested nor agreed to limit the display or depiction of the images tattooed onto their
bodies, had implied licenses to use the Tattoos as elements of their likenesses. Defendants’ right
to use the Tattoos in depicting the Players derives from these implied licenses, which predate the
licenses that Plaintiff obtained from the tattooists.
The Players “have given the NBA the right to license their likeness to thirdparties,” and the NBA has granted such license to Take-Two. (Def. 56.1 ¶¶ 103-04 (internal

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

15

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 16 of 30

quotation marks omitted).) The Players also granted Take-Two permission to use their likeness.
(James Decl. ¶ 13; Martin Decl. ¶ 15.) Therefore, Defendants had permission to include the
Tattoos on the Players’ bodies in NBA 2K because the Players had an implied license to use the
Tattoos as part of their likeness, and the Players either directly or indirectly granted Defendants a
license to use their likenesses. Defendants are therefore entitled as a matter of law to summary
judgment dismissing Plaintiff’s copyright infringement claim for this reason as well.
Fair Use Counterclaim
Defendants also seek a declaration that their use of the Tattoos in NBA 2K is fair
use. (Def. Opening Br. at 11-22.) Plaintiff argues that Defendants have failed to proffer any
relevant, material evidence to “prove fair use.” (Pl. Opp. Br. at 7.) Plaintiff’s assertion is belied
by the undisputed evidence of record.
The Copyright Act provides that
the fair use of a copyrighted work . . . for purposes such as criticism, comment,
news reporting, teaching . . ., 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.
17 U.S.C. §107.
“The determination of fair use is a mixed question of fact and law,” Swatch Grp.
Mgmt. Serv. Ltd. v. Bloomberg L.P., 756 F.3d 73, 81 (2d Cir. 2014), and is an “open-ended and
context-sensitive inquiry.” Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006). “Although the
issue of fair use is a mixed question of law and fact, the court may resolve issues of fair use at

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

16

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 17 of 30

the summary judgment stage where there are no genuine issues of material fact as to such
issues.” Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 608 (2d Cir. 2006).
Purpose and Character of the Use
In evaluating the purpose and character of an allegedly infringing use, courts
consider “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.” Bill Graham Archives, 448 F.3d at 608 (internal quotation
marks omitted). To that end, courts consider whether the allegedly infringing use is
“transformative,” that is, (i) whether the two works have different purposes, (ii) the size of the
reproductions, (iii) whether the expressive value of the reproduced material is minimized, and
(iv) the proportion of copied material. Id. at 609-11. Courts also consider whether the allegedly
infringing use is commercial in nature. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578
(1994).
Here, the undisputed evidence demonstrates that Defendants’ use of the Tattoos is
transformative. First, while NBA 2K features exact copies of the Tattoo designs, its purpose in
displaying the Tattoos is entirely different from the purpose for which the Tattoos were
originally created. The Tattoos were originally created as a means for the Players to express
themselves through body art. Defendants reproduced the Tattoos in the video game in order to
most accurately depict the Players, and the particulars of the Tattoos are not observable. The
uncontroverted evidence thus shows that the Tattoos were included in NBA 2K for a purpose—
general recognizability of game figures as depictions of the Players—different than that for
which they were originally created.

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

17

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 18 of 30

Second, Defendants “significantly reduced the size of the [Tattoos]” in the video
game. Bill Graham Archives, 448 F.3d at 611. It is undisputed that, when comparing the size of
the Tattoos as they appear in NBA 2K to the size they appear on the Players’ skin in real life, the
Tattoos appear at 4.4% to 10.96% of their actual size because the player figures are themselves
proportionately smaller than in real life. This reduction in size, along with the other game
elements discussed above, makes the Tattoos more difficult to observe. Thus, NBA 2K does not
“offer more than a glimpse of [the Tattoos’] expressive value[,]” as the Tattoos are too small and
distorted for game users to even recognize them in NBA 2K. See id. (finding second
transformative use factor satisfied when thumbnail-sized images were “sufficient to permit
readers to recognize the historical significance of the [works],” but were too small to see more
than “a glimpse of [the works’] expressive value”).
Third, the Tattoos’ expressive value is minimized in NBA 2K. The Tattoo images
are infrequently and only imprecisely observable and are combined with myriad other auditory
and visual elements, like the other players, referees, the sound of shoes against the court’s
surface, the noise of the crowd, the horns and other audible warnings signaling elapsing shot
clocks, ending timeouts, television announcers performing play-by-play—elements all included
to simulate an actual NBA game. As discussed above, the uncontroverted factual record shows
that the Tattoos were not included for their expressive value, but rather to most accurately
recreate certain NBA players’ likenesses.
Fourth, the Tattoos constitute an inconsequential portion of NBA 2K. As noted
above, it is undisputed that they only appear on three out of 400 available players, they comprise
only 0.000286% to 0.000431% of the total game data, and they cannot be seen clearly during

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

18

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 19 of 30

gameplay. Game users can see that the Players have tattoos, but cannot identify the specific
Tattoos at issue.
Lastly, NBA 2K’s purpose is commercial and, as a result, the Tattoos’ inclusion
in the game is also commercial. However, as discussed above, the Tattoos are indistinguishable
during gameplay and they do not feature in any of the game’s marketing materials. Further, the
Tattoo images are merely “incidental to the commercial . . . value of the [game],” because
“consumers do not buy NBA 2K video games for the tattoos on LeBron James, Eric Bledsoe or
Kenyon Martin.” (Def 56.1 ¶ 90.)
Nature of the Copyrighted Work
The Court must next consider the nature of the copyrighted work. This factor
“calls for recognition that some works are closer to the core of intended copyright protection
than others, with the consequence that fair use is more difficult to establish when the former
works are copied.” Blanch, 467 F.3d at 256 (internal quotation marks omitted). Courts consider
two factors in evaluating whether the copyrighted work is of the nature that is conducive to fair
use: “(1) whether the work is expressive or creative . . . or more factual, 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, with the scope for fair use involving unpublished works
being considerably narrower.” Id.
The nature of the copyrighted works at issue here weighs in favor of finding fair
use. First, Plaintiff concedes that the Tattoos were previously published. (Pl. Opp. Br. at 12.)
Second, the Tattoo designs are more factual than expressive because they are each based on
another factual work or comprise representational renderings of common objects and motifs that
are frequently found in tattoos. The “Child Portrait” tattoo is factual—it is a reproduction of a

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

19

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 20 of 30

photograph of Mr. James’s son, which was copied “as closely as possible” from the picture Mr.
James provided. (Wright Decl. ¶ 9.) The “330 and Flames” tattoo was created by adding
flames—a common tattoo motif—to a number tattoo that Mr. James already had on his skin.
The “Script with a Scroll” tattoo was based on a design Mr. James selected from one of Mr.
Rome’s sketchbooks. The “Wizard” tattoo was “copied . . . directly from the pre-existing
design” that Mr. Martin chose from a selection of tattoo designs featured on the walls and in
books in Mr. Cornett’s parlor. (Def. 56.1 ¶¶ 25, 27-28.) Similarly, the “Basketball with Stars
and Script” tattoo is based on common tattoo motifs such as basketballs and stars.
None of the tattooists stated in his declaration that the Tattoos were based on
unique or expressive features. To the contrary, the tattooists each stated that the Tattoos copied
common tattoo motifs or were copied from designs and pictures they themselves did not create.
The one artist who referred to his sketchbook as a source of one design does not claim that the
scroll-words-doves image had particular creative or expressive features. Therefore, there is no
evidence from which a reasonable fact finder could conclude that the Tattoos were sufficiently
“expressive” or “creative” to make this factor weigh against a finding of fair use.
Amount and Substantiality of the Use
Next, the Court considers “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.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87,
96 (2d Cir. 2014). Copying the entire work does not necessarily weigh against fair use “because
copying the entirety of a work is sometimes necessary to make a fair use of the image.” Bill
Graham Archives, 448 F.3d at 613 (finding fair use despite entire copying where (i) whole

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

20

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 21 of 30

images were necessary to portray historical artifacts and (ii) copied images were reduced in size,
such that “the visual impact of their artistic expression [was] significantly limited”).
Here, the undisputed evidence shows that, while the Tattoos were copied in their
entirety, Defendants did so in order to effectuate the transformative purpose of creating a
realistic game experience. Considering this purpose, it would have made little sense for
Defendants to copy just half or some smaller portion of the Tattoos, as it would not have served
to depict realistically the Players’ likenesses. Furthermore, much like the copied images at issue
in Bill Graham, the Tattoos were reduced in size, such that “the visual impact of their artistic
expression [was] significantly limited.” Id. Unlike the images at issue in Bill Graham, the
Tattoos depicted in Defendants’ game are not recognizable, reducing further the impact of their
artistic expression. Accordingly, the third factor does not weigh against fair use.
Effect on the Market
The fourth fair use factor considers the effect of the allegedly infringing work on
any existing or potential market for, or value of, the copyrighted work. This inquiry focuses 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.” Authors Guild v.
Google, Inc., 804 F.3d 202, 223 (2d Cir. 2015). “[T]he Factor Four analysis is concerned with
only one type of economic injury to a copyright holder: the harm that results because the
secondary use serves as a substitute for the original work.” Authors Guild, Inc. v. HathiTrust,
755 F.3d at 99. Transformative uses do not cause actionable economic harm because “by
definition, [such uses] do not serve as substitutes for the original work.” Id.; see also Authors
Guild v. Google, Inc., 804 F.3d at 223 (“the more the copying is done to achieve a purpose that

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

21

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 22 of 30

differs from the purpose of the original, the less likely it is that the copy will serve as a
satisfactory substitute for the original”).
Plaintiff asserts that “Defendants diminished the commercial value
of the tattoo artwork in the marketplace for licensing its use in other works including, but not
limited to, video games, apparel, and memorabilia.” (Pl. Opp. Br. at 15.) However, Defendants’
use of the Tattoos in NBA 2K is transformative: the Tattoos as featured in the video game cannot
serve as substitutes for use of the Tattoo designs in any other medium. Indeed, Plaintiff has
conceded that “NBA 2K is not a substitute for the TATTOOS.” (Def. 56.1 ¶ 67.) Therefore, use
of the Tattoos in NBA 2K could not “deprive the rights holder of significant revenues” because
potential purchasers of the Tattoo designs are unlikely to “opt to acquire the copy in preference
to the original.” Authors Guild v. Google, Inc., 804 F.3d at 223. For this reason alone, the
fourth factor does not weigh against fair use.
Further, there is no evidence from which a reasonable fact finder could conclude
that a market for licensing tattoos for use in video games or other media is likely to develop. The
Court may consider only the “impact on potential licensing revenues for traditional, reasonable,
or likely to be developed markets.” Swatch Grp. Mgmt. Servs. Ltd., 756 F.3d at 91 (internal
quotation marks omitted). Plaintiff’s hypothetical market for licensing tattoos in video games or
other, unspecified media does not satisfy this standard. Defendants have proffered
uncontroverted evidence that such a market is unlikely to develop and that, if it did, Plaintiff
could not capitalize on such a market because the Tattoos are imprinted on the bodies of the
Players and Plaintiff is not licensed to use the Players’ publicity rights. Plaintiff has failed to
proffer any evidence from which a reasonable fact finder could conclude that a market for

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

22

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 23 of 30

licensing tattoos for use in video games or other media is a “traditional, reasonable or likely to be
developed market[].” Id. Thus, the fourth fair use factor weighs in Defendants’ favor.
Because the uncontroverted evidence demonstrates that all four factors weigh in
Defendants’ favor, the Court concludes that no reasonable fact finder could determine that
Defendants’ use of the Tattoos in NBA 2K was not fair use. Therefore, Defendants are entitled
to judgment as a matter of law on their second counterclaim and to a declaration that their use of
the Tattoos in the challenged video game versions constitutes fair use.
Plaintiff’s Motion to Exclude Expert Declarations and Opinions
Plaintiff moves to exclude the opinions of Defendants’ four experts—Dr. E.
Deborah Jay, Dr. Nina Jablonski, Dr. Ian Bogost, and Mr. James E. Malackowski—offered in
connection with Defendants’ motion for summary judgment. Plaintiff asserts broadly that the
opinions “do not rest on reliable foundations, are irrelevant to the case, and are nothing more
than a distraction from the material.” (Pl. Opp. Br. at 19-27.)
“It is a well-accepted principle that Rule 702 embodies a liberal standard of
admissibility for expert opinions.” Nimely v. City of New York, 414 F.3d 381, 395 (2d Cir.
2005). Pursuant to Federal Rule of Evidence 702, expert testimony should be admitted if the
expert is “qualified as an expert by knowledge, skill, experience, training, or education” and “the
expert’s scientific, technical, or other specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702. In assessing the
expert’s qualifications, “the only matter the court should be concerned with is whether the
expert’s knowledge of the subject is such that his opinion will likely assist the trier of fact in
arriving at the truth.” Johnson & Johnson Vision Care, Inc. v. CIBA Vision Corp., No. 04 Civ.

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

23

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 24 of 30

7369 (LTS), 2006 WL 2128785, at *5 (S.D.N.Y. July 28, 2006) (internal quotation marks
omitted).
If the requirements of Rule 702 are met, “the district court must also analyze the
testimony under Rule 403 and may exclude the testimony ‘if its probative value is substantially
outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury.’”
Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 457, 458 (S.D.N.Y. 2007) (quoting Fed. R. Evid.
403). Under these principles, “expert evidence must be both relevant and reliable.” Id. (internal
quotation marks omitted). “In assessing the relevance of proffered expert testimony, the Court
looks to whether the testimony has any tendency to make the existence of any fact that is of
consequence to the determination of the action more probable or less probable than it would be
without the evidence.” Id. at 459.
Plaintiff’s motion to exclude raises general, conclusory challenges to the
qualifications of Defendants’ experts as well as challenges to their opinions under Federal Rules
of Evidence 401 (relevance) and 403 (prejudice). As explained below, Plaintiff’s objections are
unavailing. Defendants’ expert reports are sufficient to satisfy Defendants’ burden of
demonstrating that the experts’ testimony is the product of reliable principles and methods, that
their opinions and data are relevant to the issues raised in Defendants’ motion for summary
judgment, and their probative value is not substantially outweighed by any danger of unfair
prejudice. The Court will address each expert report in turn.
Report of Dr. E. Deborah Jay
Dr. Jay’s report analyzes survey data to examine why consumers purchased NBA
2K, and considers whether, and to what extent, the Tattoos drove consumer demand for the
game. Dr. Jay has more than 40 years of experience conducting large-scale surveys and has been

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

24

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 25 of 30

qualified as an expert in “survey methodology” by at least a dozen courts. Plaintiff asserts that
Dr. Jay’s report is “an irrelevant distraction from the actual material issues in this lawsuit” and
that Dr. Jay’s reference to the survey as an “official report,” is likely to cause the jury to afford it
undue significance. (Pl. Opp. Br. at 21-22.) Plaintiff does not challenge Dr. Jay’s qualifications
or her survey methodology.
By examining whether Defendants profited (and, consequently, Plaintiff lost
potential revenue) from the Tattoos’ inclusion in NBA 2K, Dr. Jay’s report addresses questions
relevant both to the “commercial use” factor of Defendants’ fair use claim and to Plaintiff’s
potential damages. Indeed, the Court’s reliance on Dr. Jay’s findings in deciding Defendants’
motion for summary judgment demonstrates that her report is material to the issues involved in
this case. Further, Plaintiff has failed to demonstrate how Dr. Jay’s report would be unfairly
prejudicial. Plaintiff’s disagreement with Defendants’ legal positions does not render competent
expert testimony consistent with those positions unfairly prejudicial. Accordingly, Plaintiff’s
motion to exclude Dr. Jay’s report and testimony pursuant to Federal Rules of Evidence 403 and
702 is denied.
Report of Dr. Nina Jablonski
In her declaration and report, Dr. Jablonski, a professor of anthropology who has
been researching the evolution and cultural meaning of human skin for 30 years and is the author
of Skin: A Natural History, a book addressing the history and meaning of tattooing in humans, as
well as numerous other works relating to skin and human interactions, offered her opinion on the
use of tattoos as a means of personal expression, about customs and norms within the tattoo
industry (including between tattooist and client), and the unlikelihood that a market for licensing
tattoos will develop. Plaintiff challenges Dr. Jablonski’s report on three principal grounds,

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

25

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 26 of 30

arguing that: (i) Dr. Jablonski is not qualified to give an opinion on the market for licensing
tattoos because she is “simply an anthropologist;” (ii) her report is more prejudicial than
probative; and (iii) her “expert” opinions should be stricken because they address topics easily
evaluated by the common sense of laymen. (Pl. Opp. Br. at 22-23.)
Plaintiff has proffered nothing more than ipse dixit to support its claim that Dr.
Jablonski is unqualified to offer her opinions concerning the tattoo industry. The record, by
contrast, amply demonstrates Dr. Jabolonski’s relevant body of knowledge. Dr. Jablonski has
spent years studying skin and tattoos, she has published over 100 peer-reviewed “scholarly
contributions” on skin, and she currently works as an anthropology professor. Dr. Jablonski’s
knowledge of the tattoo industry is sufficiently specialized to permit the Court to conclude that
her opinions will likely assist the trier of fact in arriving at the truth. Thus, her qualifications are
sufficient to meet the threshold requirements of Rule 702 of the Federal Rules of Evidence.
Nor can Dr. Jablonski’s opinion be excluded on relevance grounds. Dr.
Jablonski’s report is relevant to questions of fair use (namely, the Tattoo’s expressive value) and
whether norms in the tattoo industry support Defendants’ claim that they had an implied license
to use the Tattoos in NBA 2K. Further, Dr. Jablonski’s opinions are not merely based on
“common sense,” but rather are based on her years of study of the tattoo industry. Expert
testimony is admissible where it is grounded in the expert’s “academic and practical experience.”
McCullock v. H.B. Fuller Co., 61 F.3d 1038, 1043 (2d Cir. 1995). Finally, Plaintiff’s protest of
“prejudice” appears to be grounded solely in Plaintiff’s recognition that Dr. Jablonski’s
testimony supports Defendant’s case and undermines Plaintiff’s conclusory and speculative
arguments. Plaintiff has identified no unfair prejudice that could outweigh the substantial
probative value of Dr. Jablonski’s testimony.

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

26

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 27 of 30

Therefore, Plaintiff’s motion pursuant to Federal Rules of Evidence 403 and 702
to exclude Dr. Jablonski’s expert report is denied.
Report of Dr. Ian Bogost
Dr. Ian Bogost, professor of interactive computing and business, has proffered a
declaration and report detailing information and opinions concerning video game features
generally and certain aspects of NBA 2K, including Defendants’ use of the Tattoos. Dr. Bogost
concluded that, by any measure, the Tattoos are an insignificant part of the video game and, thus,
it would not be reasonable to license such a fleeting use of a copyrighted image. Plaintiff
challenges Dr. Bogost’s report as more prejudicial than probative. Plaintiff also asserts that Dr.
Bogost is not qualified to give an opinion on the market for licensing tattoos because he is not an
economist.
Dr. Bogost’s qualifications are well demonstrated. He has been recognized as a
key figure in the field of video game studies and he has authored over 200 journal publications,
articles, book chapters, and conference papers on video games and digital culture. His studies
have also been included in course books. Dr. Bogost’s field of study qualifies him to opine on
matters concerning video games and the market for video games. Dr. Bogost need not be a
trained economist to offer his opinions on factors affecting the market for video games; “[t]he
law does not require such a narrow specialty as [Plaintiff] suggest[s].” Tiffany (NJ) Inc., 576 F.
Supp. 2d at 459. Studies concerning the market for licensing certain copyrights for use in video
games are well within Dr. Bogost’s expertise. His report and conclusions are probative of
material elements of Plaintiff’s claims and, as with its objection to Dr. Jablonski’s report,
Plaintiff has identified no unfair prejudice.

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

27

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 28 of 30

Therefore, Plaintiff’s motion pursuant to Federal Rules of Evidence 403 and 702
to exclude Dr. Bogost’s expert report is denied.
Report of Mr. James E. Malackowski
Mr. Malackowski is chairman and chief executive officer of a company that
provides financial services related to intellectual property, including valuations and strategy
consulting. His declaration and report explain that he reviewed Dr. Jay’s survey data and
concluded that (i) none of the profits associated with NBA 2K are attributable to the Tattoos and,
as a result, Plaintiff has not been damaged by Defendants’ alleged infringement, (ii) there is
currently no market for licensing tattoo artwork, and (iii) such market is unlikely to develop.
Plaintiff challenges Mr. Malackowski’s report as (i) providing a legal conclusion, (ii) “wholly
irrelevant to Defendants’ acts of infringement and to the material issues in this lawsuit,” and
(iii) based on hearsay. Plaintiff also asserts that Mr. Malackowski is not qualified to give an
opinion on the market for licensing tattoos.
Plaintiff alleges that “Defendants caused direct and proximate harm to the
Plaintiff,” and, as a result, “Plaintiff is entitled to damages in an amount to be determined at
trial.” (SAC ¶ 42.) Therefore, the issue of damages is squarely raised in this litigation and
Defendants are entitled to offer opinions from experts, like Mr. Malackowski, on the issue of
damages. See Semerdijian v. McDougal Littell, 641 F. Supp. 2d 233, 242-43 (S.D.N.Y. 2009)
(permitting expert to testify regarding damages calculation in copyright infringement suit).
Plaintiff does not challenge Mr. Malackowski’s methodology or his qualifications as a damages
expert. Furthermore, Mr. Malackowski’s reliance in part on Dr. Jay’s survey results, which, as
discussed above, have not been excluded, is not improper. U.S. Bank Nat. Ass’n v. PHL
Variable Life Ins. Co., 112 F. Supp. 3d 122, 131 (S.D.N.Y. 2015) (holding that an expert “is

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

28

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 29 of 30

permitted to rely on facts, opinions, and data not of the expert’s own making—including
analyses performed or findings made by another expert in the case—even if those facts, opinions,
and data are otherwise inadmissible”). Mr. Malackowski’s opinions concerning the market for
licensing tattoos are directly relevant to the fourth fair use factor, which concerns the effect upon
the potential market for or value of the copyrighted work. Plaintiff’s motion to exclude Mr.
Malackowski’s declaration and testimony is denied.
CONCLUSION
For the foregoing reasons, the Defendants’ motion for summary judgment is
granted in its entirety and Plaintiff’s cross motion to exclude Defendants’ expert testimony is
denied.
Plaintiff’s Second Amended Complaint is dismissed in its entirety. Defendants
are granted summary judgment on their First and Second Counterclaims, and the Court hereby
declares that Defendants’ use of the Tattoos in the challenged versions of their video game is de
minimis and fair use and therefore does not infringe Plaintiff’s copyrights.
This Memorandum Opinion and Order resolves Docket Entry Nos. 127 and 147.
Defendants’ Third Counterclaim remains unresolved. The parties are directed to
meet and confer and file a joint report as to what, if any, steps remain to be taken to settle or

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

29

Case 1:16-cv-00724-LTS-SDA Document 164 Filed 03/26/20 Page 30 of 30

otherwise resolve the Third Counterclaim. The joint report must be filed by May 15, 2020, and
shall be directed to Magistrate Judge Aaron, to whom this case remains referred for general
pretrial management.
SO ORDERED.
Dated: New York, New York
March 26, 2020
/s/ Laura Taylor Swain .
LAURA TAYLOR SWAIN
United States District Judge

SOLID OAK - MSJ.DOCX

VERSION MARCH 26, 2020

30