NFL player uses an image of himself to make a trademark, gets sued for copyright infringement. BARNES v. JACKSON

NFL player uses an image of himself to make a trademark, gets sued for copyright infringement. BARNES v. JACKSON

When a creator fixes a work in a tangible medium they are automatically granted a copyright to the work.  The creator can strengthen the rights associated with the copyright in the United States by registering the work with the United States Copyright Office, but registration is not required for a copyright to be granted.  The owner of a copyright is granted the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original, if someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement.  When a copyright owner feels that their copyright is being infringed on they can file a lawsuit.  An accusation of copyright infringement is just the beginning of the process.

To prove copyright infringement, a plaintiff must establish (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.  This kind of copying can be proven either with direct evidence that the defendant actually copied the work, or by showing that the defendant (i) had access to the work and (ii) that the works are substantially similar.  This is all based on the assumption that the defendant’s copying was done without permission.  If it turns out that the defendant had a license to copy the work, either explicit or implied, then copyright infringement has not occurred.

“The internet changed everything” is a popular phrase repeated with enthusiasm or lament depending on who is speaking.  Professional photographers make their income licensing or selling their photographs and protect that income using copyright law.  In the past it would take a business with a handful of staff and expensive specialized equipment to reproduce an image.  Transferring art work to a product would take several weeks. Today a desktop printer can reproduce artwork onto a t-shirt or mug in a matter of hours with little human input.  Technology today makes it so easy to find and reproduce an image that users can commit copyright infringement without realizing it.  But, ignorance is not a defense to copyright infringement.

RICHARD H. BARNES, JR., v. LAMAR D. JACKSON, 9:21-cv-80722 (S.D.FL 2021) is an example of a case where a sports figure took a photo featuring them, made a trademark based on the photo and found themselves a defendant in a copyright infringement lawsuit.

Plaintiff  is a professional photographer that specializes in sports photography.  Plaintiff’s photographs have been prominently featured by numerous print and digital media outlets.  The focus of Plaintiff’s career is to attend sports events, take professional photographs with permission of the venue and license those photographs.  One of the events that Plaintiff took photographs at was a September 9, 2016 game between the University of Louisville and Syracuse University.  Plaintiff has registered his photographs with the United States Copyright Office.  Plaintiff posts a good amount of his photographs, with a water mark, to a news outlet searchable archive so that potential customers can browse and license the photographs.

Defendant, Lamar Jackson, is a professional athlete who is employed by the Baltimore Ravens, a franchise of the NFL. Defendant was one of the players in the September 9, 2016 game at which Plaintiff took photographs.  One of the photographs Plaintiff  took at the game was of Defendant leaping over a member of the opposing team.  At some point Defendant or someone that worked for Defendant made a silhouette of Defendant in Plaintiff’s image.  That silhouette was then used as a trademark on merchandise and an application to register the trademark with the USPTO was filed.  Various images and videos of Defendant wearing the trademarked merchandise was posted to Defendant’s social media accounts.

In 2021 Plaintiff filed suit for copyright infringement claiming that the trademark was a derivative work of his photograph.   In the complaint the Plaintiff also alleges other photographs owned by Plaintiff were posted on Defendant’s social media with the watermark removed.  Defendant has yet to answer the complaint.

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