A recent decision from the US considers whether Nike infringed US copyright law with its "Jumpman" logo.
In Jacobus Rentmeester v Nike Inc., District Judge Michael Mosman granted Nike'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").
Rentmeester organised a photoshoot with Michael Jordan as part of a series of photographs for a 1984 issue of LIFE Magazine. Rentmeester planned to create a distinctive picture of Jordan and took a photograph of Jordan on a grassy hill with no apparent distractions other than a basketball hoop and the setting sun. Jordan was instructed to jump straight up into the air and perform a grand jete a ballet leap, while holding a basketball. Rentmeester claimed he was the first person to ever capture any basketball player in such a pose in a photograph.
The photograph was published in Life Magazine around the same time Nike was planning to launch its endorsement relationship with Jordan. After publication of the photograph Nike contacted Rentmeester, requesting colour transparencies of the photograph and 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." However, within 7 months of receiving Rentmeester's colour transparencies, Nike created a similar photograph and displayed it on billboards and posters.
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 Judge agreed with Nike and dismissed the case. In making his decision, the Judge acknowledged that, in order to state a claim for infringement, Rentmeester would have to allege ownership of a valid copyright and unauthorised copying of protected material. Unauthorised 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. The Judge pointed out that the most difficult part of the case was assessing how similar a photograph must be before it will be substantially similar.
According the the Judge, Rentmeester's claim for infringement depended on two things:
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, the Judge held that there were only a small number of possible perspectives from which the photograph could be taken 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.
Whether the works in question were substantially similar
Before he attempted to answer this question, the Judge 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.
The Judge then identified a number of differences between the photographs of Jordan. Nike's 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. There were also a number of differences in Jordan's pose in each photograph. Further, the scale and placement of Jordan was different in both photographs. Finally the ground was also different. In Rentmeester's photograph Jordan is jumping from a hill, while in Nike's photograph it is not clear where he jumped from.
Based on these differences, the Judge was unable to deem the pictures to be virtually identical and therefore Rentmeester's claims were dismissed with prejudice.
With regard to claims under the DCMA which prohibits the provision of copyright management information that is false, the Judge held that Rentmeester could not rely on this either.in: Case Law, Copyright, News, Passing Off