Jul 29 2015

Nike “Jumpman” Case Shows Difficulty With Copy-Cat Infringement Cases

A Federal Court in Oregon dismissed photographer Jacobus Rentmeester’s claim that Nike’s famous “Jumpman” infringed on his original photograph which inspired the logo. The case doesn’t really break new ground nor is it very controversial; the judge correctly applied the proper legal parameters in my opinion. I’m writing about it though because it’s the kind of case that seems so strong to a layperson or even to a lawyer who does not engage in intellectual property litigation. But the decision shows the limits to copyright’s reach and the importance of understanding the difference between an idea and a particular expression of an idea. In summary, the first one is not copyrightable, the second one can be.

At issue in the case were the iconic Jordan Brand “Jumpman” logo, which is a silhouette of basketball star Michael Jordan leaping dramatically with a basketball; and a photograph of Jordan in a similar pose, which Nike produced in the mid 1980s for use on billboards, merchandise, and in advertising.
Both images were inspired by a photograph Rentmeester shot of Jordan for LIFE magazine, and then loaned to Nike in 1984 “for slide presentation only” for a cost of $150. Here is the original image:

Photog's original image

Photog’s original image

Nike liked the image so much they decided seven months later to create their own photo based on the image and splashed it everywhere. When the photographer complained, Nike ended up paying Rentmeester $15,000 for a two-year license to use the photograph it produced on the basis of Rentmeester’s image.
But the company continued to use its photograph after the license expired. In fact, Nike created the Jordan Jumpman logo in 1987 based on their picture, and has used it ever since. Here are Nike’s images:

Nike's Jumpman Logo

Nike’s Jumpman Logo

Nike's Jordan Photo

Nike’s Jordan Photo

So you can see the general similarities and Nike never denied its logo and the image it used to create the logo were inspired by Rentmeester’s shot. Rentmeester decided to sue Nike for its continued use of the Nike images based on his image. He claimed that the original image was his unique creative expression and that Nike had made two derivative copies of the image. Rentmeester set out to explain to the court how he created the image, which is pretty interesting (at least to me) but is also important for the understanding of the case because all of the creativity he expressed and all the skill required to get the shot just right did not get him any protection for the work he produced:

As part of a series of photographs for a 1984 issue of LIFE Magazine,Rentmeester planned and executed a photo shoot with then North Carolina student Michael Jordan. Mr. Rentmeester decided to shoot Jordan outdoors in an non-traditional pose. He took the photo on a relatively isolated grassy hill with no visual distractions other than the setting sun and a basketball hoop he had temporarily installed on the hill. For the pose, Mr. Rentmeester instructed Mr. Jordan to jump straight up and perform a grand jeté, a ballet leap, while holding a basketball. Mr. Rentmeester claims he was the first person ever to photograph Mr. Jordan, or any other basketball player, in this specific pose. Mr. Rentmeester believed that a photograph “with Mr. Jordan extending his non-shooting left arm straight and forward, triumphantly holding a basketball (as the tip of a crown holds a jewel), and framing the shot with Mr. Jordan appearing to glide away from the earth and toward a basketball hoop . . . would be powerful, compelling, and unique.” Mr. Rentmeester argued that the creative genius of the pose, and the overall construction of the image, is to trick the viewer into thinking that Mr. Jordan is actually performing a dunk when in fact he is not. In order to accomplish his creative goals, Mr. Rentmeester positioned his camera at an approximate 90-degree angle to the apparent trajectory of Mr. Jordan’s leap and slightly below Mr. Jordan, creating a perspective for the viewer of looking up at Mr. Jordan’s fully extended body. Mr. Rentmeester captured the precise detail of Mr. Jordan’s jump with a combination of a very rapid shutter speed and powerful synchronized strobe lights. So this was clearly, a highly skilled photographer who had thought out a very creative and interesting way to photograph a basketball player.

LIFE Magazine published the Rentmeester Photo in a special Olympic preview issue at approximately the same time that Nike was preparing to launch its endorsement relationship with Mr. Jordan. Nike contacted Mr. Rentmeester and the rest is history – or misery if you’re Rentmeester.

The court had to first determine what was the core “idea” expressed by the image and then had to determine whether the Nike pictures were “substantially similar.” The court agreed with Nike’s position at oral argument that the complaint makes clear that the idea expressed in the photograph was that of, “Michael Jordan in a gravity-defying dunk, in a pose inspired by ballet’s grand-jeté.” OK , specific enough for you?

The court said that since there are really only a few ways to express this idea, a single version of the idea is only entitled to “thin protection.” For example, think if you wanted to express a hula dancer doing a typical hula dance – there are only a few ways to express that so any expression of that would look like a copy, so its not very protectable. Here, the specificity of the idea came back to haunt Rentmeester in a way. It doesn’t matter how creative the “idea” was – a very creative idea is no more protected than an uncreative idea- its still just an idea. So now its merely a question of whether the images are substantially similar expression of that idea. And they are clearly not – Here they are side-by-side:

jumpmancompared

You can see that the lighting is different, one is almost a silhouette, the other is lit; the poses are different, the arms are bent differently as are the legs; one is on a hill, they other shows an urban landscape in the background; one is at a distance, the other is closer up. Remember that since the court decided the idea is entitled to only “thin protection” that the image would have to be “virtually identical” to be infringing. The Court went further to say that in reality there was nothing very original in the work saying that most of it was based on traditional elements that go together (in law these are called scenes a faire and are not protectable (In our hula girl example, think a grass skirt, a floral lei, and long black hair). Of the image the court stated:

I find that very little of the selection and arrangement is original. The idea in the Rentmeester Photo is, “Michael Jordan in a gravity-defying dunk, in a pose inspired by ballet’s grand-jeté.” Given this idea, there is nothing original about the selection and arrangement of having a Michael Jordan jump with a basketball in the vicinity of a basketball hoop—that is all scenes a faire for the idea at issue. The only arguably original part of Mr. Rentmeester’s selection and arrangement is that the photograph was taken outside as opposed to inside a gym. However, given that a lot of basketball is played every day by would-bes, has-beens, and never-weres in driveways and outdoor courts at neighborhood parks, even this element of selection and arrangement is not all that original. Therefore, to the extent Mr. Rentmeester seeks protection for his selection and arrangement of the various unprotected elements, I find that he is either entitled to no protection or such little protection that it has no material impact on the substantial similarity analysis.

The court gave even shorter shrift to any comparison between the Jumpman logo and Rentmeester’s image dismissing the claim in basically one sentence: The only similarity between the Rentmeester Photo and the Jumpman Logo is the pose—the Jumpman Logo is nothing more than an expression of the pose No substantial similarity, no claim.

It’s ironic that the Jumpman logo is of course very protecetable as a trademark – it is so associated with Nike that any other logo that comes close to the Jumpman would likely be infringing on Nike’s trademark. But trademark and copyright are very different animals.

So the case is a cautionary tale for all those who think they have a great case because some big company “stole their idea” – a call we get at my law firm about twice a week. I even had a few sophisticated design clients who were showing at Men’s Fashion Week here in NYC this month and I had to advise them that unless their designs are ultimately their “trademarks,” it doesn’t matter how creative your design idea is – it’s just an idea. That means most people who want to create their own version of your idea can “Just Do It.”

Read the case HERE

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Jul 23 2015

Big Blow to Big Law: “Doc Review” Is Not “Practice of Law” Making Overtime Rules Applicable

One of the dark secrets of Big Law (firms with more than 1,000 lawyers) is that they have a whole contingent of lawyers all across the country who are not part of the firm per se and do lots of the grungiest of the grunge work of the legal world: Document Review. The glut of law students and lawyers has allowed these firms to park hundreds of lawyers in Oklahoma, South Dakota, the Carolinas,etc. whose sole task is to pore through thousands and thousands of pages of emails, medical records, correspondence and other written material that is part of litigation. While first-year hires from top law schools get about $160,000 per year these lawyers are lucky to get $25 per hour. But hey – its a start and at least they are practicing law right? Not so fast.

FLSAThe Second Circuit – the federal appeals court that covers New York – has ruled yesterday that pure document review is not “the practice of law” since it does not require the exercise of legal judgment. The decision could have large ramifications for Big Law, their clients and the lawyers who work for them or the companies that they outsource this work to. The case, Lola v. Skadden, Arps, Meagher &Flom pitted David Lola, a young lawyer admitted to practice in California but who was assigned to work in North Carolina, against Skadden Arps, one of the largest law firms in the world where senior partners bill their Fortune 500 clients over $1,000 per hour. Lola was assigned to work on a case that arose out of the federal court in Ohio. The case was brought in New York where Skadden is headquartered. Lola was paid $25 per hour for fifteen months during which he worked about 55 hours per week. NY law requires that employers pay overtime at a rate of one and a half times the regular rate for any hours over 40 per week. So David sued this legal Goliath for his overtime and for overtime for all others similarly situated.

Skadden’s response was that the Fair Labor Standards Act exempts from overtime employees who are “engaged in the practice of law.” Professionals such as lawyers don’t get overtime – excessive hours is just part of the gig. The lower court agreed and dismissed the case. But the Second Circuit reversed and held that what Lola did was not “the practice of law” as that is defined in North Carolina (that’s where he was working so that’s the definition that applied). North Carolina defines the practice of law as:

“performing any legal service for any other person, firm or corporation, with or without compensation, specifically including . . . the preparation and filing of petitions for use in any court, including administrative tribunals and other judicial or quasi‐judicial bodies, or assisting by advice, counsel, or otherwise in any legal work; and to advise or give opinion upon the legal rights of any person, firm or
corporation.”

The court also noted that North Carolina courts have interpreted the phrase “practice of law” (in cases revolving around the unlicensed practice of law) as requiring “the exercise of some legal judgment.” Lola said he did nothing of the kind.Lola alleges that his work was closely supervised by Skadden and his “entire responsibility . . . consisted of (a) looking at documents to see what search terms, if any, appeared in the documents, (b) marking those documents into the categories predetermined by Defendant, and (c) at times drawing black boxes to redact portions of certain documents based on specific protocols the Defendants provided. The court summarized it this way:

A fair reading of the complaint in the light most favorable to Lola is that he provided services that a machine could have provided.

Finding that these mundane tasks did not amount to “the practice of law” in North Carolina. the Second Circuit reversed the lower court and reinstated Lola’s complaint. The plaintiff was represented by a small, six-lawyer NY firm, Joseph & Kirschenbaum, who specialize in taking on big-name restaurants for wage and hour violations of their servers, dishwashers and busboys. The decision is likely to bring an onslaught of litigation against many Big Law firms which engage in the same practice. We know that these big firms would not entrust the exercise of legal judgment to lawyers earning $25 per hour, so very have to pay them overtime from here on out.

But for me the case also raises several other questions: (1) How much was Skadden billing its clients for Lola’ services? All law firms have very different rates for paralegal work and for legal services. (2)Will their clients be allowed to sue Skadden for back bills in which they were charged for “legal services rendered” now that a very influential court has ruled it was not legal services being performed? (3) How were they allowed to bill it as legal services or even claim it as legal services when Lola was not admitted to practice law in either North Carolina (where he worked) or Ohio (where the case was pending). Seems to me had he lost Lola could have been brought before the North Carolina Bar for the unlicensed practice of law ad Skadden for permitting the unlicensed practice of law. (4) In describing his experience in resumes, interviews and job applications would Lola be lying if he stated that he had been practicing law in North Carolina for the fifteen months involved?

The case will now proceed through discovery and onto trial where perhaps some of the questions may be answered.

The decision can be found HERE

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Jul 22 2015

What I Learned About Lawyering When NY Lost My Bar Exam

Thirty years ago next week, the NY State Board of Law Examiners lost all 542 answer sheets for the Multi-State portion of the 1985 NY Bar Exam, representing the sheets from students who took the exam in the Pier 90 building. I was one of the unfortunate souls who had been assigned to take the test in that room. Every time Bar Exam season is in full swing -as it is now with the exam looming on July 28 and 29 – I am brought back to that horrible event in my life when for the first time ever I actually thought about killing a large group of people.

I mean after four years of college, three years of law school, seven weeks of Bar Prep classes and and two weeks of daily 15 hour cramming days to hear that just those four boxes from my test room were somehow missing from the Board’s offices at 270 Broadway can you blame me for having homicidal ideations? But in fact the experience of the following weeks and months were very influential on my career as a lawyer and left me with life lessons that still mean something to me today.

For those of you who are reading this that are not lawyers, a quick explanation of the Multi-State portion of the Bar. The Multi-State Bar Examination (MBE), which is given in 49 states (Louisiana being the lone exception)along with Guam, the District of Columbia and the Virgin Islands, is generally offered only twice a year: on the last Wednesdays in July and February. It’s a six hour exam consisting of 200 multiple choice questions in six areas of law: Constitutional Law, Contracts, Torts, Real Property, Evidence and Criminal Law & Procedure. The day before the MBE, NY test takers face another grueling six hour exam comprised mostly of six long essays on NY law. Asking which day is worse is like asking whether you want to get poked in the right eye or the left eye with a knitting needle.

So after the smoke and anger cleared – a little- it was time to figure out what was going to happen next. Frustrated law students were calling the Board daily and getting no answers. The Bar had been administered by the Board of Law Examiners since 1894 and something like this had never happened before. (It has also not happened again since by the way – I’m lucky like that). All we knew was this singular quote in the NY Times from John E. Holt-Harris Jr., one of the members of the Board of Law Examiners: ”There is no way to express how wretched we all feel about this thing.” Thanks Johnny boy, that helps a lot. They had no idea what to do with us. Many of us who were in NYC got together and selected a committee of three to deal with the Board and represent a large body of test takers. I was one of the three selected. I had some legal experience taking depositions and arguing motions as a law student working for the NYC Law Department, so I was almost a litigator in my eyes and my fellow victims’ eyes. So the first thing I had to do was gauge what the client wanted. Most of the group wanted a free pass – their position was that the Board should grade our essays and if we did sufficiently well on the essays, then they should pass us on the MBE automatically. That sounded good to me but I quickly realized it was not realistic for two reasons: (1) The MBE accounted for 40 percent of an applicant’s overall score. Because the passing grade was 660 on a scale of 1,000, it is effectively impossible to be admitted into practice in the state without taking that part. They would have to change the whole grading methodology. Not gonna happen; (2) If they did that for us, they would have to post armed guards next to every test room and use military personnel to guard the boxes at 270 Broadway because the test would be stolen every year otherwise. I learned from this how to (1) Give a client bad news – just write it out and tell it to them straight. Its easier to say if you just write it out in the best way possible and then just read it. Don’t ad lib it, don’t improvise, just write out the most thorough but least harsh way to say it and then just read it. (2) Manage client expectations. Clients often come to lawyers with problems for which they have already devised solutions – “He has to pay me back” “I want him to be forced to give me the business” but which often are not allowed by law. A lawyer’s job is to zealously represent his client’s interests -yes – but its also the lawyer’s job to explain to clients the limits of the law. I did however present the demand to the Board to appease the group and to be able to say that I at least tried to get what the consensus wanted.

logoHH
After getting a swift “No Way” from the Board, we had to regroup. We decided we were not going to bid against ourselves and demanded that the Board tell us their proposal asap. They got back to us that they would allow us to take the test when it was administered again in February. They explained that a new test would be costly to draft quicker than that and they couldn’t just give us the one we had already taken. That proposal was unacceptable because cost should not be an issue and it would also delay our admission to practice and we would be behind the 6,000 other test takers whose exams were not stolen. But at least we had our two settlement positions put forth so we could present the case to a mediator if need be. We pressed on and the Board decided to essentially split the difference – they would give us a new MBE in September and get the grades back to us in November at the same time as everyone else. This was unpalatable to lots of people but an old saying goes “A good settlement is when neither side is perfectly happy.” We had to recognize when we had as good a deal as we were ever gonna get. Many were sure they had forgotten all that had learned over the spring and summer. I had to assure many that we had prepared so well for so long, all that information was still there somewhere in the recesses of our brains. Joseph Pieper who ran a successful Bar Prep class (and still does)then came along and offered a free one day crash session on the MBE for all those who had to re-take the test even if you had not taken his course previously. It was a lifesaver because it reinforced that we indeed still recalled all that law. At the session, he handed out pencils and told us all to bring them down to the bar at the Roosevelt Hotel (where the re-take would be administered) where he would be waiting with a free drink for all. So I learned about being a stand-up guy and a little about marketing as well.

But the true learning experience was that sometimes things don’t go your way through no fault of your own. As a litigator it happens often. A witness gets funky on the stand and doesn’t say what you had expected them and prepped them to say. Documents you need and which have been under subpoena for months arrive incompletely or not at all. Judges don’t know the law or know your adversary too well to rule against them. When these things happen, you have to be resilient and not let them see you sweat. Crying into your legal pad and yelling “It’s not fair!” will not work. Save your complaining for the appeal and your spouse. You have to find an avenue around the obstacles. And the best way to do that is to rely on your preparation and knowledge. There is no such thing as over-preparing for trial or the Bar Exam. There is no such thing as a perfect trial. But knowing your stuff inside out makes you confident – it allows you to employ the best strategy possible under the circumstances.

So to all the Bar takers this year – including my son Steven and his girlfriend Rachel who are studying furiously for the exam as I write this, I wish you all good luck. Remember that you will never know as much law on so many subjects as you do right now. Remember that pass or fail you will have a long legal career ahead of you because you will dust yourselves off, get back on your feet, and forge ahead.

Jul 20 2015

Email Address Does Not Constitute “Place of Employment” For Stalking Law

A NY Judge has decided in a case of first impression that a section of the NY Stalking Law requiring that the stalking conduct occurs at the complainant’s “place of business or employment” is not satisfied by the sending of repeated emails at the complainant’s business email address. The defendant sent over 200 different forms of communication including many emails to her former girlfriend’s work email address. She was then arrested and charged with three stalking misdemeanors.

One count was based on Penal 120.45(3) which reads:

A person is guilty of stalking in the fourth degree when he or she intentionally, and for no legitimate purpose, engages in a course of conduct directed at a specific person, and knows or reasonably should know that such conduct . . .(3) is likely to cause such person to reasonably fear that his or her employment, business or career is threatened, where such conduct consists of appearing, telephoning or initiating communication or contact at such person’s place of employment or business, and the actor was previously clearly informed to cease that conduct.

lady justiceThe court held that in interpreting other laws with the same phrase, NY courts have held that “place of employment” means the physical location where a person works. “Thus, given New York courts’ consistent view that the phrases ‘place of employment’ and ‘place of business’ refer only to a physical location, this court will apply that same definition here,” Judge Steven Statsinger said.

I guess it came down to the distinction that telephoning a person at work requires them to be at the physical location when they pick up their work phone but email technically does not end up in the physical workplace. The statute is also meant to broaden stalking so that fear of physical injury is not necessary – you just need to be scared that someone’s behavior may cause you to lose your employment or business. It would be unusual for repetitive emails to threaten your career in the same way that showing up at the office or constantly calling the office could.

Furthermore, repetitive or harassing emails are covered under Penal Law 120.45(1), a more general statute that defines conduct “likely to cause reasonable fear of material harm to the physical health, safety or property” of a victim as stalking. In addition, the defendant was also charged under 120.45(2) which hinges on a defendant exhibiting a course of conduct by contacting a complainant repeatedly after being asked to stop — behavior that is not dependent on contacts with the victim at the physical workplace. The defendant here will still have to face those charges.

The distinction could be important to prosecutors and defense counsel in cases where there was no fear of imminent physical injury and the work emails had some stated legitimate purpose as that behavior would not meet the language of any other part of the stalking law. The case also serves as an example of how law is shaped and made by litigators fighting over the definition and application of terms and phrases in the statutes. I am sure that this was not the first time anyone was charged for similar conduct under the same statute it was just the first time anyone challenged it.

Read the judge’s decision here

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Jul 15 2015

Proposed Ban on Swastika Not Enforceable

Town of Hempstead Supervisor Kate Murray held a press conference yesterday to propose a ban on use of the swastika in any location including the air. Joined by Jewish leaders, she made her comments at Point Lookout Town Park, where a plane trailing a swastika banner flew along the beach Saturday. Was that act offensive? Of course. Was it hate speech? Very likely. Was it legal? – Yes.

NY State law already forbids the etching, painting, drawing and placing of swastikas on public or private property without the permission of the property owner. Murray described this as the “loophole that they have been flying their planes through.” That’s true. But the State law is really just lip service as well. You can’t “etch, paint, draw or place any symbol” including the American flag on public or private property without the permission of the property owner. While the current law seems to target one form of symbol, it does no more to regulate it than the laws against criminal mischief and graffiti. I suspect had it allowed other symbols to be used on property without permission but banned swastikas, it would be struck down as a content-based ban on speech. The same could be said for a ban of aerial display of a swastika – it cannot be the only symbol blocked by a law or that would be a prior restraint restriction on speech based on its content.

Murray, in proposing the law over airspace in which she has no jurisdiction, was quoted in Newsday saying the following:

“Not all speech is free. We know you can’t yell ‘fire’ in a movie theater. . . . We feel that the swastika, which has been so identified with the killing of 6 million Jews and many others, that you cannot separate the swastika from the most terrible time in our history.”

murray nazi banThe second sentence is 100% accurate – you cannot separate the swastika from the Nazi Holocaust. The first sentence is an incorrect application of First Amendment law. Hate speech is protected speech I get so tired of hearing TV pundits including professors saying “But this is hate speech.” So? Who needs a Constitutional amendment to protect “loving speech” The point of the First Amendment is to protect speech we hate to listen to – to acknowledge that our country is strong enough to allow others – even those who hate us – to speak freely about their hate. The old canard about yelling “Fire” in a theater is also misused by Murray. You can’t yell “Fire” in a theater because it present imminent threat of harm, a clear and present danger to public safety. Furthermore movie theaters are private property so owners can restrict speech inside much more than a governmental entity can. March on the sidewalk in front of Murray’s office with a picket sign reading “FIRE” and see if anyone stops you.

The International Raelian Movement, a group that says its goal is to “rehabilitate” the swastika so that it’s seen as a sign of peace (Why? who knows) is apparently behind the flyover. The group performed a swastika flyover in July last year along some South Shore beaches. Newsday quoted Thomas Kaenzig, 42, of Las Vegas, the leader of the group as saying “Banning something is never the answer. Education is the answer.”

I agree. So while the swastika remains a disgusting symbol of hate and genocide, ignoring those who seek to promote is far better than proposing legal recourse and holding press conferences that only serve to highlight the group and that will not pass Constitutional muster.

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