Professional sports photographer, Allen Kee (“Kee”), is suing hall of famer Barry Sanders (“Sanders”) for his alleged wrongful use of an iconic photograph—of himself—that was captured by Kee during a 1995 Detroit Lions game. The iconic photograph shows Sanders with one arm outstretched blocking defenders and a football in the other as he rushes down the field. Kee claims that Sanders copied the photograph to create brand logos and related trademarks. Kee has also brought a separate but related action against Sanders’ former NFL team, the Detroit Lions, and various retailers related to their alleged wrongful use of the photograph, including the creation of an 8-foot-tall bronze statue of Sanders that now sits prominently outside of the Detroit Lions stadium. Both cases brought by Kee are in the early stages of litigation, but if Kee is able to overcome jurisdictional hurdles, Sanders and the Detroit Lions will be forced to prove that they have not infringed on Kee’s rights to the photograph.
The Sanders Action
Kee alleges that he exclusively owns all copyrights to the iconic photograph (the “Photograph”) and that he has registered his copyrights with the United States Copyright Office. Sanders is accused of copying the Photograph to create two brand logos used in connection with apparel, merchandise, memorabilia, and other products. Barry Sanders, Inc. (“BSI”), an entity affiliated with Sanders, also obtained trademark registration for the brand logos (the “Logos”), which depict Sanders in what appears to be the same pose as in the Photograph. A comparison of the Photograph and Logos used by Kee in his Complaint is below:
Kee claims that the Logos are merely derivative of the Photograph and were deliberately modeled after the Photograph due to its iconic nature in hopes of gaining brand recognition. Kee also claims that Sanders provided an unauthorized copy of the Photograph to the Detroit Lions for use in connection with the creation of the 8-foot-tall bronze statue sitting outside of the Detroit Lions stadium and that the Logos were advertised at the unveiling of the statue. Similarly, Kee claims that Sanders provided an unauthorized copy of the Photograph to a company called Highland Mint for use in connection with the development of a memorabilia product. The copy of the Photograph provided to Highland Mint was also allegedly stamped with one of Sanders’ Logos. According to Kee, the appearance of the logo on the Photograph misled Highland Mint and other third-parties to believe that Sanders owns the rights to the Photograph.
Kee brings claims against Sanders for: (1) Direct, Contributory and/or Vicarious Copyright Infringement, (2) Distribution of False Copyright Management Information, (3) Unfair Competition/False Designation of Origin under the Lanham Act, and (4) Unfair Competition under New York state law. The Complaint against Sanders was filed in the United States District Court for the Southern District of New York. Sanders has not yet responded to Kee’s Complaint, but given that Sanders is alleged in the Complaint to be a resident of Michigan and much of the conduct complained of in the Complaint seems to have occurred in Michigan, a jurisdictional challenge seems imminent.
The Detroit Lions Action
Prior to bringing suit against Sanders, Kee filed a separate action against the Detroit Lions and various retailers, including Dick’s Sporting Goods, similarly alleging that they infringed on Kee’s rights to the Photograph by recreating the Photograph in the form of the 8-foot-tall bronze statue of Sanders, contracting with Highland Mint to create the memorabilia product, and contracting with a toy company to create a toy figurine of Sanders.
Kee’s action against the Detroit Lions and other third-parties alleges claims for: (1) Direct, Contributory and/or Vicarious Copyright Infringement, (2) Breach of Contract; (3) Violation of the Digital Millenium Copyright Act; and (4) Declaratory Judgment. Kee also filed this action in the United States District Court for the Southern District of New York. In response, the Detroit Lions filed a Motion to Dismiss the Complaint for lack of personal jurisdiction and improper venue. The Court has not yet issued a ruling on that motion.
Derivative vs. Transformative Works Under the Copyright Act
The Copyright Act of 1976 (the “Act”) grants the author of an original work various exclusive rights, including the right to reproduce a copyrighted work, prepare derivative works based upon the copyrighted work, and to distribute copies of the copyrighted works to the public. Copyright infringement occurs when a party violates the exclusive rights of the copy right owner.
But there are limits to a copy right owner’s exclusive rights. The Act contains carve outs that allow third-parties to make “fair use” of a copyrighted work. 17 U.S.C. section 107 of the Act identifies four factors that are generally considered by courts in determining whether a third-party’s use of a copyrighted work is fair, including: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
In assessing the first factor, courts focus on whether a third-party’s use of the copyrighted work is “transformative”, i.e., whether it adds something new and important to the original work. There is no brightline rule used to determine whether a secondary work is transformative such that it is a fair use of the primary copyrighted work. That determination is made using a fact-intensive inquiry, which has created a thin, gray line between transformative and derivative works. But one thing is clear—courts have historically been cautious not to define “transformative” too broadly, as an interpretation of “transformative” that is too expansive could authorize secondary works that infringe on a copyright owner’s exclusive rights to produce derivative works.
While a motion to dismiss may not be the time for Sanders to raise substantive, factual challenges to Kee’s claims of copyright infringement, Sanders will likely be faced with demonstrating why his Logos constitute a fair use of the Photograph later on in litigation. Likewise, the Detroit Lions will be faced with demonstrating why the statue outside of their stadium is a fair use of the Photograph. In other words, the viability of Kee’s claims will likely come down to whether Sanders’ Logos and the Detroit Lions’ statue add something new and important to the Photograph, or if they instead merely present the Photograph in a new form without adding anything new.
Takeaways
Before using a photograph or other copyrightable work, it is imperative to (1) verify what party owns the exclusive rights to the work, and (2) evaluate the purpose of your use and whether it is merely “derivative” or is likely to qualify as “transformative”. Even a photograph of yourself is subject to copyright infringement laws if you do not own the rights to the photograph. The impact of the Sanders Action and Detroit Lions Action on sports photography and the protections players and the NFL should take to prevent litigation will be noteworthy.
*Not intended to constitute legal advice to be relied upon. We recommend that you consult with legal counsel to receive tailored advice suitable to your circumstances.
