Copyright Infringement and Right of Publicity

[quincy]

What is the name of your state (only U.S. law)? Michigan

There is a copyright infringement suit that was filed on January 18 of this year in Michigan's Eastern District Court and it could be an interesting one to follow (if you are a dork like I am ).

The suit, Brian Masck v Sports Illustrated, Nissan North America, Getty Images, Inc., Champions Press, L.L.C., Photo File, Inc., Fathead, L.L.C., Wal-Mart Stores, Inc., Wal-Mart.com USA, L.L.C., Amazon.com, Inc., and Desmond Howard, Case No. 2:13-cv-10226-GAD-DRG, has several elements that make it unique.

The case involves a photograph of Desmond Howard striking a "Heisman Trophy" pose during a University of Michigan v Ohio State football game. The photograph was taken by photographer Brian Masck in 1991 and he is the plaintiff in this action.

Brian Masck had provided a limited license for use of the photo to Sports Illustrated in 1991. Later, Desmond Howard had approached Masck about purchasing all rights in the photo but could not afford the cost being asked by Masck ($300,000).

In the intervening years, the photo has been reproduced several times in many ways by assorted entities (including SI) and assorted people (including Howard), all without attributing the source of the photo to Masck and all without permission from Masck. Finally, in 2011, Masck registered his copyright in the photo (registration is a prerequisite for filing a copyright infringement suit) and he has sued all unauthorized users of his photo from the time of his copyright registration. The list of unauthorized users is extensive.

Desmond Howard intends to fight the lawsuit over the use by him of his own image. Howard said: "I'm sympathetic to the rights of artists, but I'm also sympathetic to the rights of college athletes and their likeness."

 

[FlyingRon]

I hope he doesn't get far. Desmond might have a right to a counter claim on the infringement of his publicity rights, but he's not going to win on the "it's a picture of me so I can use it" argument.

 

[quincy]

I will be curious to see if the statute of limitations is used as a defense by any of the defendants.

Masck has known for years that his 1991 photo was being infringed, and the statute of limitations for copyright infringement is three years from first discovery of the infringement. But he is suing only those who have infringed since the date of his registration of the photo in 2011, 19 years after the photo's first publication.

I agree that Howard could have publicity rights claims against all, including Masck, who have used his image for profit.

 

[FlyingRon]

I will be curious to see if the statute of limitations is used as a defense by any of the defendants.

Masck has known for years that his 1991 photo was being infringed, and the statute of limitations for copyright infringement is three years from first discovery of the infringement. But he is suing only those who have infringed since the date of his registration of the photo in 2011, 19 years after the photo's first publication.

I agree that Howard could have publicity rights claims against all, including Masck, who have used his image for profit.

You don't LOSE copyright for failure to register or otherwise defend your copyright. 1991 is still after the adoption of Berne. He wasn't required to do ANYTHING. He seems to have a business making his own posters/photos/lifesize stand ups. He's most likely trying to shut down the illicit competition.

 

[quincy]

You don't LOSE copyright for failure to register or otherwise defend your copyright. 1991 is still after the adoption of Berne. He wasn't required to do ANYTHING. He seems to have a business making his own posters/photos/lifesize stand ups. He's most likely trying to shut down the illicit competition.

I agree that Masck wasn't required to do anything. And there is no doubt that he holds the copyright in the photograph.

However, individuals are also not allowed to "sit on their rights," which is the whole reason for having statutes of limitations.

It could be argued (I am thinking, at any rate) that, after first discovering infringers years ago, Masck waited (to accumulate damages enough, and for others to accumulate profits enough?) to file suit, instead of trying to mitigate his damages early on. But I don't know.

Masck is saying that the lawsuit is not about money but rather about him getting credit for having taken the photograph (and, again there is no doubt, the photo should have been attributed to him), but I have a sneaking suspicion that money is the major motivator.

 

[You Are Guilty]

Interesting case. Surprising how many people still used the photo after 2011.

I will be curious to see if the statute of limitations is used as a defense by any of the defendants.

Masck has known for years that his 1991 photo was being infringed, and the statute of limitations for copyright infringement is three years from first discovery of the infringement. But he is suing only those who have infringed since the date of his registration of the photo in 2011, 19 years after the photo's first publication.

That's really more of a laches argument than SoL.

 

[quincy]

Interesting case. Surprising how many people still used the photo after 2011.


That's really more of a laches argument than SoL.

Right. Thanks for the correction.

Masck filed his suit within the three year limitations period, for the specific claims he is making against each of the defendants named.

 

[quincy]

A US Supreme Court decision last year relates in some ways to the case mentioned in this thread, so I thought I would revive this older thread instead of starting a new one. The Court's decision was an interesting one in that many (me ) thought the Court would decide laches would bar claims of copyright holders who were aware of an infringement but waited longer than three years to sue, which could result in an increase in damages.

In Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct 1962 (2014), the Court held that a copyright holder can wait to file an infringement suit (up to 18 years in this case) and that: "Laches cannot be invoked as a bar to Petrella's pursuit of a claim for damages brought within §507(b)'s three year window." It can, however, limit the amount of damages awarded.

A link to Petrella from the Legal Information Institute: http://www.law.cornell.edu/supremecourt/text/12-1315