From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 29 June 2015

Jumpin' through hoops? A copyright claim that never got off the ground

Here's a note from Katfriend and occasional contributor Kevin Winters, who takes a look at a recent US copyright dispute that has generated more columns in the popular press than it's ever going to do in the legal literature. One might say that, despite its soaring subject-matter, this is one copyright claim that quite literally never got off the ground.  Writes Kevin:

Did Nike Inc. infringe US copyright law by creating its iconic ‘”Jumpman” logo?  
This question was recently answered by the District Court of Oregon in Jacobus Rentmeester v Nike Inc., (No.3 : 15-cv-00113-MO). In his decision, District Judge Mosman granted Nike Inc.’s motion to dismiss Rentmeester’s claims of (i) copyright infringement; (ii) vicarious copyright infringement; (iii) contributory copyright infringement; and (iv) a breach of the Digital Millennium Copyright Act (DMCA). 
The background 
Rentmeester, as part of a series of photographs for a 1984 issue of LIFE Magazine, organised a photoshoot with Michael Jordan.  The future basketball star was then just a student in North Carolina.  Rentmeester had planned to create a distinctive picture of Jordan outside the traditional gymnasium setting.  Accordingly he took a photograph of Jordan on a grassy hill with no apparent distractions other than a basketball hoop that he had installed purposely for the shoot, and the setting sun.  Jordan was instructed to jump straight up into the air and perform a grand jeté, a ballet leap, while holding a basketball. Rentmeester claimed that he was the first person to ever capture Jordan, or indeed any basketball player, in such a photograph 
"with Mr Jordan extending his non-shooting left arm straight and forward, triumphantly holding a basketball (as the tip of a crown holds a jewel), and framing the shot with Mr Jordan appearing to glide away from the earth and toward a basketball hoop . . . would be powerful, compelling, and unique."
LIFE Magazine published this photograph in a special Olympic preview issue at around the same time that Nike was planning to launch its endorsement relationship with Jordan.  On the pictures’ publication, Nike contacted Rentmeester, requesting colour transparencies of the photograph.  Rentmeester agreed to lend Nike the transparencies in exchange for $150, with the following strict limitation: "for slide presentation only, no layout or any other duplication." Within seven months of receiving Rentmeester's colour transparencies, Nike created a similar photograph and displayed it on billboards and posters. 
Upon learning of Nike’s activities, Rentmeester contacted Nike to discuss its copying of his photograph in breach of the terms of use in the 1984 Jordan Photo Invoice.  At this point the parties negotiated a limited and temporary use of the photo: Nike paid Rentmeester  $15,000 for a limited licence to use the Nike Photo for two years. After the licence expired, however, Nike continued to use the photograph on a wide variety of billboards, advertisements, and merchandise. Beginning in 1987, Nike began using the “Jumpman” Logo on all of its Jordan Brand merchandise. It was on this basis that Rentmeester claimed infringement of his copyright.  Nike Inc., filed a motion to dismiss Rentmeester’s claims on 16 March 2015.
The decision 
Judge Mosman agreed to grant the motion to dismiss the case.  In making his decision, his first step was to ascertain the appropriate legal standard to be met in claims for copyright infringement.  He acknowledged that, in order to state a claim for infringement, Rentmeester would have to allege (i) ownership of a valid copyright; and (ii) unauthorized copying of protected material.  Unauthorized copying could only be proven on evidence that Nike had access to Rentmeester’s work, and that the photograph in question was substantially similar to his.  Judge Mosman then pointed out that the most difficult part of the case was in determining how similar a photograph must be before it will be substantially similar.  He noted that based on the ruling of the Ninth Circuit in Mattel, Inc., v MGA Entertainment (No. 2:04-cv-09049-SGL-RNB), 
Rentmeester’s claim for infringement depended on two things: 
1.       Whether his photograph deserved ‘broad’ or ‘thin’ copyright protection 
The court acknowledged that there were an “…infinite number of perspectives” from which the photograph of Mr Jordan could be taken, and that the same could be said of the lighting. However Judge Mosman noted that, in Mattel, the Ninth Circuit had given direction as to how much copyright protection should be enjoyed in a particular instance:
“If there’s a wide range of expression(for example, there are gazillions of ways to make an aliens-attack movie), then copyright protection is “broad” and a work will infringe if it is “substantially similar” to the copyrighted work…If there’s only a narrow range of expression (for example, a red bouncy ball on blank canvas), then copyright protection is “thin” and a work must be “virtually identical” to infringe…”
In respect of Rentmeester’s photograph of Jordan, Judge Mosman found that there were only a handful of possible perspectives from which the photograph could be taken – 10 to 15 – that could be from materially different perspectives.  Given this, and the criterion of ‘gazillion’ in Mattel, he found that the photograph only enjoyed ‘thin’ copyright protection. 
2.       Whether the works in question were substantially similar 
Before he attempted to answer this question, Judge Mosman filtered out the unprotected elements of the photograph.  Rentmeester conceded that the basketball hoop, the basketball, a man jumping, Jordan's skin colour, and his clothing were all unprotected elements in his photograph.  
Judge Mosman then identified a number of differences between Rentmeester’s and Nike’s photographs of Jordan: the Nike photograph featured the Chicago skyline with a red and purple sky, while Rentmeester’s photograph featured a blue sky, grassy hill and a setting sun.  He also pointed out a number of differences in Jordan’s pose in each photograph: the positioning Mr Jordan’s left arm is different in each photograph (backward versus fully extended); Jordan’s legs are different in each photograph (scissor split versus a straddle position).  Further, Judge Mosman found Jordan’s scale and placement to be different in both photographs (relatively small, left of frame and farther from the basket in one, and relatively large, centre of frame and closer to the basket in the other).  The treatment of the ground was also different: in Rentmeester’s photograph Jordan is seen to be jumping from a hill, while in Nike’s photograph it is not clear where he jumped from, and he appears to be flying over the Chicago skyline.  
Based on these differences, Judge Mosman could not deem the pictures to be virtually identical.  As a result, Rentmeester’s claims were dismissed with prejudice.   
The only similarity that Judge Mosman could find between Rentmeester’s photograph and Nike’s “Jumpman” logo was Jordan’s pose.  However, based on his analysis of the photographs, he found that the poses were not substantially similar and dismissed Rentmeester’s claims against the “Jumpman” logo with prejudice.    
Kats leap too ...
Judge Mosman also found that Rentmeester could not rely on the DCMA.  The Act prohibits the provision of copyright management information that is false.  Given that the Nike’s photograph and “Jumpman” logo were deemed to be non-infringing works, Rentmeester’s claim was also dismissed with prejudice.  
Takeaway message

This case serves as a reminder that what will be deemed to be ‘substantially similar’ in cases concerning alleged copyright infringement will vary, depending on the facts of a dispute.  It also highlights the level of scrutiny that infringement claims will be subjected to, in determining whether the requisite level of similarity between two works is satisfied. Most importantly, it serves as a reminder that the use of an earlier idea is not, in and of itself, an infringement of copyright.
How to pronounce Nike here, here and (on YouTube) here
How to pronounce Rentmeester here

1 comment:

Andy said...

I wonder how Judge Mosman would have decided the Red Bus case!

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