“Heisman Pose” Photographer’s Lawsuit Whittled Down–Masck v. Sports Illustrated

By Jake McGowan

Masck v. Sports Illustrated, et al., 2:13-cv-10226-GAD-DRG (E.D. Mich. June 11, 2013)

Back in February, we blogged about photographer Brian Masck’s Shakespearean complaint, asserting copyright infringement claims (and others) against numerous defendants for using his famous “Heisman Pose” photo.

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Together, the defendants moved to dismiss all non-copyright claims. Defendants Desmond Howard and Amazon also filed motions to dismiss on separate bases. On June 11, a district court in Michigan ruled on the various motions. For each, the court granted in part and denied in part.

Court Hesitant to Strike Down Lanham Act Claims

Masck brought unfair competition claims under the Lanham Act, alleging that the defendants caused confusion as to the origin of the Heisman Pose photo (in this case, the “goods”). But the Supreme Court in Dastar v. Twentieth Century Fox held that “origin” of “goods” refers only to tangible goods, not communicative products. If the Lanham Act were held to cover such intangible works, it would effectively stretch the language of the act to emulate copyright protection. However, the court was not ready to decide if Masck’s Heisman pose photo was an intangible item:

Through his website, Plaintiff sells physical copies of his photograph, making him a producer of tangible goods. Many of the alleged infringing activities were production of tangible goods incorrectly attributed to other Defendants . . . While there is a communicative aspect to Plaintiff’s photo, it is not as easily reduced to simply an “idea, concept, or communication” as other photos. Consumers do not purchase the photo simply for its communicative properties, they purchase it as a token of their fandom for the University of Michigan, or Desmond Howard.

For this reason, the court denied defendants’ motion to dismiss the Lanham Act claims without prejudice.

State Law Claims Preempted

Masck also brought claims under Michigan state law for (1) Tortious Interference, (2) Unfair Competition, and (3) Unjust Enrichment. The focus with the state law claims was whether they were preempted by the Copyright Act. Under the Sixth Circuit rule, Masck’s various state claims would have had to be “qualitatively different” from the copyright action to constitute a separate cause of action.

With regard to the tortious interference claim, the court did not buy any such argument:

The “interference” committed by Champions Press was the unauthorized copying of the photo, the exact conduct complained of in Plaintiff’s copyright claims. When the essence of a state law claim is the same as that in a copyright action it is not qualitatively different.

The court quickly dismissed the unfair competition claim for similar reasons, noting that “the underlying conduct complained of is the unauthorized copy of Plaintiff’s photo.” The unjust enrichment claim shared a similar fate:

. . . only an implied in fact contract requires alleging an extra element of a promise to pay. Since Plaintiff does not allege Defendants made any promise to pay, there is no extra element to prove. As such, their unjust enrichment claim is preempted.

Masck May Not Pursue Statutory Damages or Attorney Fees

One issue we highlighted since the suit’s inception was that Masck had most likely missed his shot at statutory damages by dragging his feet registering the photograph. Under Section 412(2) of the Copyright Act, there is no award for statutory damages or attorney fees if the infringement in question commenced after publication of the work but before the effective date of its registration, unless the author registered the work within three months after the first publication. In this case, defendant Howard used the photograph in 2010 and Masck did not register the photograph until 2011, well after first publication.

Instead, Masck tried to argue that Howard engaged in separate acts of infringement because he used an indiscernibly-altered version of the photograph on his website after registration. The court did not agree:

As Howard stated, this is effectively the same photo, placed on the same website, by the same defendant. What little difference there is between the two photos is not enough to demonstrate that there are two separate acts of copyright infringement.

The court ruled that Masck may not pursue statutory damages or attorney fees, and that the ruling applied to all defendants who were alleged to have infringed before the effective registration date.

Amazon’s Motion to Dismiss

Amazon filed a separate motion to dismiss on the basis that Masck had not stated a proper claim for vicarious copyright infringement. Emphasizing its vulnerable position as an “e-commerce platform provider,” Amazon argued that it did not have the requisite ability to supervise the infringing conduct. The court sided with Amazon, agreeing that the company could not be expected to examine every third party product:

Plaintiff must put forth factual allegations that demonstrate Amazon could plausibly verify the copyright status of each and every piece of merchandise it lists from third-party sellers. Failure to do so requires dismissal of this claim.

Unfortunately for Amazon, the court did not let them off the hook for the contributory infringement claim. While the company may not have a duty to inspect every item a third party sells,  Masck did ask them to take down the infringing photographs and yet they continued to sell them. In response, Amazon tried to argue that the holding of the Sony Betamax case provided a defense in that the site is “capable of substantial non-infringing uses.”

The court, however, did not agree with the analogy:

. . . the holding of Sony is not even applicable to this case. “Sony’s rule limits imputing culpable intent as a matter of law from the characteristics or uses of a distributed product.” [MGM v. Grokster]. There is no need to impute culpable intent since the products sold by Amazon already possessed their infringing characteristics.

Since the court reasoned that selling such merchandise was a material contribution, it held that Masck had a proper claim and denied Amazon’s motion.

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I was somewhat surprised that the Lanham Act claims survived, despite the low bar for motions to dismiss. Eric pointed me to the Dastar decision early on, and after reading it I thought all those claims would be struck down.

I still would not be surprised if this settled, especially with the court acknowledging that the door for statutory damages is shut. As for now, we can only speculate what kind of numbers are being thrown around behind closed door settlement discussions.

[Photo Credit: Debby Wong / Shutterstock.com]

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