– Draeke Weseman, Weseman Law Office, PLLC
It’s like my logo. I wasn’t even dunking on that one. People think that I was. I just stood on the floor, jumped up and spread my legs and they took the picture. I wasn’t even running. Everyone thought I did that by running and taking off. Actually, it was a ballet move where I jumped up and spread my legs. And I was holding the ball in my left hand.
— Michael Jordan, Hoop Magazine (1997)
The most difficult part of this case is determining how similar the works must be to qualify as substantially similar.
— Judge Michael Mosman
Let’s suppose you decide to start a basketball apparel company today, and get to thinking about the logo. You want something with energy, power, balance, and grace, and after tinkering around with an image or two you like, you settle on the following:
Not long, right?
And no doubt this letter from Brand Jordan would explain that, based on the high degree of similarity in the logos, a likelihood of confusion is certain to exist, resulting in your liability for trademark infringement. Any trademark-types out there interested in trying to defend that case? I think we’d all agree it’s a slam dunk for Brand Jordan.
Now consider another case.
Suppose you run an up-and-coming athletic apparel company, and you get to thinking about advertising. You’re working hard on an endorsement deal with a young basketball star, and you want to show him off. Then you see it – a photograph of the kid dunking, leaping through the air like a ballerina performing a grand jeté:
You pick up the phone, make a few calls, and work out a deal with the photographer to temporarily use the photo for a one-time fee of $150. But the more you think about it, the more you love the photo. You could go back to the original photographer, but instead you decide to get your creative team together and shoot the following:
How long do you think you’d have before you get a cease-and-desist letter from the photographer of the original photograph? Not long, right? And no doubt that letter would explain that based on the substantial similarity in the photos and your access to the original, liability for copyright infringement is certain. Any copyright lawyers out there want to defend that case? Is it also a slam dunk for the photographer?
Given the arguably obvious copying in this second example, I was surprised to learn last week that a federal judge in Oregon had dismissed that exact case – a photographer’s complaint against Nike alleging that Nike used his photograph without permission to create the famous Jumpman logo for Brand Jordan.
After the LIFE magazine piece ran, Nike’s creative director Peter Moore purchased temporary rights to rent and use two slide transparencies of the photograph for internal presentations, paying Rentmeester $150. A few months later, Nike returned the slides to Rentmeester and debuted its own version of the photograph – you guessed it, this photo:
Rentmeester cried foul. Threats of litigation followed, negotiation ensued, and, in March of 1985, Nike paid $15,000 to Rentmeester for a two-year license to use its version of the photograph on posters and billboards throughout North America. Meanwhile, Nike launched the Air Jordan shoe line, and by 1987, Air Jordan III featured the following logo:
While it’s unclear why Rentmeester didn’t pursue a copyright infringement case in 1987, he can now following the Supreme Court’s decision in Petrella v. MGM, and it’s pretty clear what Rentmeester thinks the intellectual property chain of title looks like:
For Rentmeester, these similarities arguably show copying and must suggest that he has at least a plausible claim for copyright infringement, right? After all, it’s a long-standing rule that an original arrangement of a photograph is protectable, and photos like the following have been protected by the courts:
If it wasn’t for Rentmeester’s photograph, the Jumpman logo would likely not exist. Nike should have to pay for building a global brand with an iconic logo based on a copycat version of an original photograph, right?
Not according to Judge Mosman of the U.S. District Court of Oregon. In dismissing Rentmeester’s case, Judge Mosman ruled that Rentmeester’s idea to capture “Michael Jordan in a gravity-defying dunk, in a pose inspired by ballet’s grand-jeté” can only be expressed in a limited number of ways. Such specific ideas, no matter how original, are entitled only to narrow protection: to give them broad protection would create a monopoly in the underlying idea itself. Therefore, any differences between Rentmeester’s photo and Nike’s will lead away from a possible finding of infringement. In Judge Mosman’s opinion, the differences, though easy to ignore, are many:
Although at first glance there are certainly similarities between the two expressions of the pose, a closer examination reveals several material differences. In the Rentmeester Photo, Mr. Jordan’s right arm is bent at the elbow. In the Nike Photo, Mr. Jordan’s right arm is extending straight down and away from the basket. With regards to his left arm, in the Rentmeester Photo Mr. Jordan’s arm is bent slightly backwards while in the Nike Photo it is fully extended and is depicted above the basket. The positioning of Mr. Jordan’s legs also appears differently in these photographs. In the Rentmeester Photo, Mr. Jordan’s legs are positioned in the stance of someone jumping while running forward (i.e. a traditional grand- jeté). His legs are apart like a scissor split, nearly creating a straight line. In contrast, in the Nike Photo, Mr. Jordan’s legs are positioned in the stance of someone who has jumped up vertically and spread his legs wide in a straddle position, creating a “V” as opposed to a straight line.
Rentmeester v. Nike, Inc., No. 15-CV-113, Opinion (D. Or. June 17, 2015).
Based on these differences, Judge Mosman dismissed the case: “The only similarity between the Rentmeester Photo and the Jumpman Logo is the pose . . . . Mr. Rentmeester has shot another brick and failed to meet the objective test for copyright infringement.”
Judge Mosman’s ruling is interesting because it shows the disconnect between what originality and similarity mean for copyright purposes compared to trademark purposes. Even though both trademark law and copyright law consider these issues, the way they are analyzed is different enough to lead to somewhat surprising results, like they did in Rentmeester’s case.
Trademark law magnifies the significance of originality. A high degree of originality in a mark will likely create a strong, distinct mark that will be given broad protection by the courts. In determining infringement, trademark law simply asks whether a second mark is similar enough to the first when used in marketplace conditions so as to cause confusion about the source of a product or service. The result is that minor details, like the difference between these two marks, matter much less than the impression created by the overall similarity:
In contrast, copyright law diminishes the significance of originality. A highly original idea, like Rentmeester’s idea to photograph a basketball player jumping like a ballerina to mimic an elegant dunk, results in narrower legal protection because that specific idea can only be realistically expressed in so many ways. In determining infringement, copyright law asks whether the works are substantially similar so as to show copying of one by another. Original, specific ideas must match more closely to be substantially similar for copying to be found. The result is that minor details, like those between these photographs, likely matter more than the overall similarity:
The Rentmeester case shows just how important it is for intellectual property counsel to appreciate the differences between the treatment of originality and similarity in trademark law compared to the same in copyright law. These differences are not necessarily intuitive in light of the creativity involved in developing both brands and marks on the one hand, and creative content and ads for those brands and marks on the other, but the differences matter significantly when analyzing infringement claims made by or against our clients. It’s also important for creative-types and marketing-types as clients to understand what kind of copying is likely lawful when it comes to creative content and ideas, but not when it comes to trademarks and branding.