Previous
discussion, in which I got exercised about the court’s misapplication of Dastar, herein corrected. Masck took an “iconic” photo of defendant
Desmond Howard, running for a touchdown during a Wolverine game, wherein he
made the “Heisman” pose. Masck alleged
that he was the only photographer who got a good shot of that. Sports
Illustrated ran the photo in 1991, with a proper credit and payment, but
didn’t return the negative. Masck didn’t
register until August 31, 2011. At some
point between 1992 and 1998, the slide ended up with Allsport, a photo agency
to which Masck was a contributor, but Masck alleged he never gave it the
photo. Getty, which acquired Allsport in
1998, says that given the passage of time all the documents explaining how
Allsport got the photo have been lost.
Getty informed Masck of its takeover and returned about 2500
photos. Getty also asked Masck to tell
it as soon as possible if he believed Allsport had any more of his images. Masck never responded, but argued that the collection
never should have included a copy of the photo at issue. In 2005, Getty uploaded the Heisman photo to
its digital asset management system without
crediting Masck, and then sold licenses of the photo to
customers until September 2011.
Masck discovered several infringing uses of the photo,
including a photo for sale in June 2010, and a full-page Nissan ad using the
photo in Sports Illustrated in 2010,
2011, and 2012. Champions Press used the
photo in a book about Howard, and Howard’s website also had a copy of the
photo. Defendant Fathead produced a
life-size adhesive photo, and several reproductions were for sale on
Amazon. Marck asked Amazon to stop
selling unauthorized reproductions in September 2012, but Amazon continued to
permit photo sales, and Walmart offered copies in stores and online.
Masck sued everyone.
This opinion finally kicked out the Lanham Act claims. Dastar
says “origin of goods” means tangible goods, not communicative products.
Before, the court was unready to conclude that the photo was an intangible
item. But on summary judgment, the court
found that Masck was not arguing that the defendants misled the public as to
the origin of tangible goods; instead he argued that they failed to credit
him. This time, the court recognized
that even wholesale copying wasn’t actionable under the Lanham Act, following Dastar.
Belated whew.
This opinion also addressed laches. Defendants argued that Masck should’ve been
aware of Getty’s public posting of the photo on its website in 2005, since he
knew about Getty and had received Getty’s letter, as well as royalties from
Getty. Defendants argued that this was
unreasonable and that they were prejudiced by the delay, since relevant
documents about Allsport’s possession of the photo have been lost. Though they argued that he should have
registered earlier, he relied on his lawyer’s (bad) advice that he didn’t need
to. Masck also alleged that he notified
all infringers he discovered, but that most of the infringements occurred in
2010 or later. He also argued that
willfulness precluded laches. The court found that the issue was not
appropriate for summary judgment.
Walmart’s vicarious/contributory liability: Masck didn’t
claim direct infringement, but rather than Walmart allowed third parties to
sell identical or substantially similar copies.
Defendants argued that a third party nondefendant, Pro Team, used
Walmart’s retailer program to sell goods on Walmart’s website, and that Walmart
didn’t deliver goods or take responsibility for fulfilling orders. Previously, the court dismissed vicarious
liability claims against Amazon because Masck didn’t allege that Amazon could
verify the copyright status of every third-party piece of merchandise; Walmart
argued that it was the same, and also that it was protected by the DMCA.
But the court found a “crucial difference”: Walmart also
operates physical stores and controlled what was sold there. (Shouldn’t the claims relating to online
sales still be dismissed?) Plus, Masck
maintained that he sent notices to Walmart.
Thus, summary judgment was inappropriate. (Unfortunately, the court
doesn’t discuss whether the notices were DMCA-compliant.)
Statutory damages: defendants noted that Masck needed to
register before the infringement began to get statutory damages, and contended
that their infringements began before he registered. Also, they challenged
Masck’s evidence supporting an award of actual damages or profits, arguing that
he never propounded timely discovery requests.
Masck also argued that Getty was responsible for all the damages because
it provided the photo to all the other defendants.
Masck sought a share of profits on Nissan’s vehicle sales,
an argument that one would not expect to go well, but here too the court proves
very willing to give him the benefit of the doubt. Because Nissan was a “rational economic
actor,” and paid $3 million to run the ads, plus $1 million to sponsor the
“Heisman house tour,” with the infringing photo at the “heart” of the campaign,
the court seemed to endorse (or at least leave open for later) Masck’s argument
that the photo was worth over $5 million.
Also, Masck submitted the “average breakdown of Nissan car sales from
the year the ads ran.” Masck apparently suggested that he’d elect statutory damages
for “each violation” by several of the defendants. Willful violations were “likely only in the
case of Amazon and Champions Press” (not entirely clear whether this was the
court’s conclusion). The court found a
question of material fact existed as to what constituted the dates of
infringement and whether or not the evidence Masck provided was enough to
support awarding damages.
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