You’ve done some research and you’ve found out that in the United States you own your copyright in your creative work when you memorialize it in a “tangible medium of expression.” Therefore, you don’t need to register your copyright with the Copyright Office in order to say you own the copyright. True. But, one of the benefits of copyright registration is the availability of Statutory Damages if someone infringes your copyright. Unfortunate for some, this benefit does not apply in all circumstances.

Because federal copyright registration is a requirement for bringing a copyright infringement lawsuit in federal court, oftentimes plaintiffs will wait until they become aware of infringement before registering their copyright. Such was the case for plaintiff in the recent NBA 2K Video Game Case; Solid Oak Sketches, LLC v. 2K Games, Inc., et al., No. 16-CV-724 (U.S.D.C S. Dist. N.Y.). In that case, the plaintiff claims that the tattoo art shown on the NBA players’ avatars in the game constitute infringement of the tattoo artist’s copyrights in the original art on the players. After becoming aware of the perceived infringement, the plaintiff registered its tattoo art with the Copyright Office and then filed suit.

The plaintiff sought, among other things, statutory damages and attorneys’ fees for this alleged infringement. However, defendants – apparently realizing that sometimes the best defense is a good offense – filed a motion to dismiss that particular claim due to the requirements of a statutory provision in the Copyright Law; 17 U.S.C. §412. Under that provision, the plaintiff must have registered its copyright prior to the alleged infringement. District courts in the Second Circuit have found “even where the alleged infringement begins before registration and continues after registration, statutory damages and attorney fees are still unavailable.” Argentto Sys., Inc. v. Subin Assocs., LLP., No. 10-CV-8174, 2011 WL 2534896, at *2.

The plaintiff raised several creative arguments to avoid dismissal of its statutory damages claim. One argument was that because there was a lapse in time between the release of the first version of the video game and the one at issue, the newer version constituted a separate and distinct act of infringement which began after the art was registered. The Court rejected this argument. The District Court stated “Section 412’s bright-line rule precludes statutory damages and attorney’s fees where there is any infringement before registration.” The court went on to shoot down another related argument by making clear “when the same defendant infringes on the same protected work in the same manner as it did prior to the work’s registration, the post-registration infringement constitutes the continuation of a series of ongoing infringements.”

On August 2, 2016, the Court granted the motion to dismiss the statutory damages claim. Now, as the lawsuit proceeds, plaintiff must prove up actual damages rather than the often more comfortable position of relying on those provided by the Copyright Law. Keep this in mind as you create and seek to protect your work.

©2016 Albert F. Davis, Esq.


This law update is intended for general information purposes only. One should not consider the update legal advice or legal opinions relating to any specific facts or circumstances. An attorney-client relationship is not created by reading this update. Please feel free to contact A.F. DAVIS LAW for further information.