Due to an alleged use of an expired license, the future of the most recognizable sneaker line logo is now at risk.
Jacob Rentmeester says he took a photograph of Michael Jordan in his Olympic warm-ups in 1984 and that he granted Nike use of the logo for two years. During the two-year period, Nike created the famous “Jumpman” logo of Jordan’s silhouette that is used on its apparel to this day. Rentmeester is now suing Nike for copyright infringement in Oregon federal court for profits generated from the Jordan brand and for an injunction on current sales and future plans for the Jordan brand.
Rentmeester maintains in the lawsuit that he remained the owner of the copyright for the photograph rather than Life Magazine—where the photograph initially appeared— and that Nike violated a license for its version of the image for which it paid Rentmeester $15,000. According to the complaint, the license allowed continued use of the image by Nike on posters and billboards “for North America only and for 2 years” and “all other usage rights [were] reserved.” The complaint states that Nike violated the terms of the license agreement by using the image for more than just posters and billboards, using it outside of North American and doing so for more than two years.
Within copyright law there is a federal case on point that would seem to indicate Rentmeester potentially has support for his infringement case against Nike and for his right to exclusive reproduction of the image. In Mannion v. Coors Brewing Co., Jonathan Mannion, a freelance photographer, was hired by SLAM, a basketball magazine, to photograph Kevin Garnett. The picture at issue in the case was of Garnett wearing a white t-shirt, white pants, a black hat, platinum, gold and diamond jewelry, and shot from an angle that made him appear as if he was towering over his surroundings. Mannion also angled Garnett in the light so that Garnett’s right shoulder was brighter than the rest of the photograph and his hands created shadows on his pants. When an advertising company working on a campaign for Coors Light used a manipulated version of the Garnett, Mannion sued. The court held that because Mannion’s photograph was original in rendition and creation, there was a question of fact for the jury as to whether Coors’ version was substantially similar.
In the instant case with the Jordan logo, Rentmeester had Jordan jump in a unique way. In fact, Michael Jordan did not normally dunk this way in games. Rentmeester positioned Jordan to have him approach the basket from the left side with the ball in his left hand. Accordingly, since Nike’s Jordan brand has used the originality of found Rentmeester’s image, Rentmeester’s argument for substantial similarity would seem to have some validity.
To the contrary, for Rentmeester to be granted an injunction on the Jordan brand, Rentmeester has an extremely tough burden to overcome. In 2006, the Supreme Court ruled in eBay v. MercExhange, L.L.C., that a “plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.”
While it might be considered an irreparable injury if the court finds Rentmeester is entitled to damages due to the amount of money Nike has made off the Jordan line, it would be difficult for him to show there is an inadequate amount of money to compensate him for his alleged injuries. Also, the hardship it would place on Nike to shut down its most successful brand would seem to outweigh Rentmeester’s hardship if he received monetary damages. Also, it likely would not serve the public interest to grant the injunction when monetary relief is available.
In the complaint, Rentmeester also alleges Nike was vicariously and contributorially liable for the infringement because it both profited off of, and knew of, yet failed to stop independent distributors and licensees from preparing derivative works from the photos as well as not stopping the independent infringers from distributing, displaying and selling the works.
Prior to last year, Rentmeester would not have been able to bring this lawsuit because federal copyright law only allowed an individual to bring suit within three years of an infringing act. However, in May 2014, the Supreme Court held that the three-year limit did not bar bringing a copyright suit if continued distribution of the infringing product continued. The exception would presumably apply to the Jordan brand, which is still responsible for new products.