Monday 9 February 2015

Is copyright in a 1980s Michael Jordan photo infringed by the Jumpman logo?

In the run up to the 1984 Olympic Games, Jacobus Rentmeester took various photographs of Michael Jordan for LIFE magazine. The iconic image which he ultimately produced involved a jump which Rentmeester asked Jordan against a plain skyline with freshly cut grass. The photograph that he took is below.

What happened? 

According to Rentmeester's complaint, following publication of his photograph in LIFE magazine, Nike paid Rentmeester $150 for temporary use of two 35mm colour transparencies. The invoice stated that this was “for slide presentation only, no layouts or any other duplication”.

Rentmeester alleges that following receipt of the transparencies, the below photograph was produced and used by Nike as part of an advertising campaign for Air Jordan shoes:

Mr Rentmeester apparently complained about Nike's use of his photograph to create the above image and in 1985 he reached a settlement with Nike whereby, in return for $15,000, he agreed that Nike could use the photograph on posters, billboards etc in North America only for two years.

Rentmeester is now complaining that Nike continued to use the photograph beyond both the term and the territorial restrictions imposed by the 1985 agreement. Significantly, Rentmeester is claiming that Nike's use includes the famous Jumpman logo.  For those unfamiliar with the logo, the complaint includes the following handy comparison of the silhouette of Michael Jordan in the Rentmeester photograph (left) with the Jumpman logo (right).

The complaint goes into a lot of detail regarding the creative decisions that Rentmeester made when creating the photograph:

"Mr. Rentmeester wanted to maximize visual attention on an isolated figure of Mr. Jordan, and so the photograph needed to be taken outside, with a background of sky rather than the interior of an auditorium. Mr. Jordan would be depicted in away to express his tremendous athletic ability: he would leap through the sky and appear to soar elegantly. Mr. Rentmeester created the pose, inspired by a ballet technique known as a “grand jeté,” a long horizontal jump during which a dancer performs splits in mid-air.  The pose, while conceived to make it appear that Mr. Jordan was in the process of a dunk, was not reflective of Mr. Jordan’s natural jump or his dunking style.

Mr. Rentmeester further planned that Mr. Jordan would leap with his left leg forward and his right leg behind, and his left hand extended while holding the basketball, so that the basketball would appear to be perched on top of his fingertips, his body open and facing the camera, his limbs extended outward, and his right hand open, showing his fingers."

Given that level of input into the creative process, following Infopaq and Painer, the photograph would be protected in the EU as Rentmeester's own intellectual creation.  Presumably the position is the same in the USA.

Why now? 

The cause of action arose in 1987 – when the licence expired (or possibly sooner if Nike used the photograph/Jumpman logo outside of North America before then). So, why has Rentmeester waited?

The cause of the delay is anyone’s guess – lack of money, time or inclination to do anything about it in the late 1980s, perhaps. However, the reason why he is pursuing the claim now is thanks to Raging Bull, or more precisely, the US Supreme Court’s decision in Petrella v MGM which was decided in May 2014.

The US Supreme Court found that because the US Copyright Act limits retrospective relief to three years before the date of claim, laches does not apply.  Laches is the equitable doctrine that states you cannot pursue a claim if you have unreasonably delayed in bringing a claim - 30 years would likely have constituted an 'unreasonable delay'.   Moreover, the court decided that ‘when a defendant commits successive violations, the statute of limitations runs separately from each violation.’ In other words, every time that Raging Bull is distributed (or Nike sells a pair of Jumpman branded goods) a new three year limitation period starts to run.

It is worth noting that it follows from this that there is no benefit to Mr Rentmeester in waiting until now. If he had pursued Nike sooner, he could have recovered losses based on past infringment and obtained a licence covering future use. As it is, the best Mr Rentmeester can expect is damages for the three years prior to issuing his claim and a licence for use going forward.

Does Rentmeester have a claim? 

At first glance, it is easy to see why many people online are dismissing this as another example of IP law gone crazy.   “It’s Michael Jordan who posed not the photographer” is typical of the general sentiment behind these posts.  However, I’m not sure it is quite so simple.  The pose in the photograph is not a natural one, it was deliberately selected by Mr Rentmeester (together with the plain background which makes the pose stand out even more).  Further, although I am no expert(!) it does not appear that Michael Jordan ever employed this balletic pose when actually playing basketball.  Further, Nike obviously thought that it required a licence when it settled with Mr Rentmeester in 1985.

Should Rentmeester's rights in the photograph extend to the logo? 

The copy of the Rentmeester photograph does appear to have been used since 1987 but it is the translation of the Nike photograph into the Jumpman logo which is where the money (and hence the battleground) lies.  Is this translation into a logo a ‘transformative use’?  Prior to Cariou and Prince, the answer would have been a definite "no".  But now the situation is less clear.  Indeed there is an argument that if Cariou lost to Prince, surely it follows that Rentmeester must lose to Nike.

Does it make a difference if the ‘fair use’ is not to create another artwork but to create a global brand?  Surely this sort of commercial use is sufficiently far from being an art work for transformative use to not apply?  We shall see...

This promises to be a very interesting case and one which I look forward to following – assuming it doesn’t settle…

Postscript: Michael Jordan and the wonderful world of IP 

Whilst researching this post, I found out that Michael Jordan is no stranger to IP litigation. He has had a long running dispute with a Chinese sportswear company, Qiaodan (the transliteration of “Jordan” in Chinese).

Jordan claimed that Qiaodan mislead customers into believing that he has authorised the use of his name (and his children’s names – which Qiaodan has applied to register as Chinese trade marks). Meanwhile Qiaodan sued Michael Jordan for $8million in retaliation claiming that his allegations had prevented the company from pursuing an IPO.

Interestingly, Qiaodan chose to use a logo which was more akin to Jordan’s traditional basketball movements (see below).

You can read Rentmeester’s complaint here.   Note: I could not find Nike’s response online - if anyone has a copy (or knows when it will be filed) please let me know.

Sources: NBA and Financial Times

1 comment:

Unknown said...

As someone who has been damaged by another who stole my copyrighted photo off of a Website, I believe that the photographer was cheated out of his rightful income from his photo. In my case, I licensed my copyrighted photo to a Website. My nameand the copyright statement were clearly stated within the edge of the photo in the form of a watermark. Yet, a natinoal publication lifted my photo from that Website, clipped off my copyright and pasted in a different copyright holder's name.