Mr Rentmeester's photo

When are two photographs substantially similar so that the latter is deemed to infringe copyright in the former?





This is the interesting question that the US Court of Appeals for the 9th Circuit recently addressed in Rentmeester v Nike .





Background





This story first dates back to 1984, when Mr Jacobus Rentmeester took a photograph of Michael Jordan for Life magazine, for a feature on athletes who would be competing in the 1984 Summer Olympic Games.



At the time when Rentmeester’s photo was published, Nike was planning an endorsement relationship with Michael Jordan, and contacted Rentmeester to provide colour transparencies of his Jordan photo. The photographer provided Nike with two colour transparencies for $150 under a limited licence authorizing Nike to use the transparencies “for slide presentation only.”





Several months later, Nike hired a photographer to take a photograph of Jordan. The photograph chosen and subsequently used was similar to Rentmeester: in both photographs Jordan is shown leaping toward a basketball hoop with a basketball held in his left hand above his head, as though he is about to dunk the ball. There are certain differences in the photographs: unlike Rentmeester’s photograph, besides wearing Nike shoes in the Nike photograph the background is Chicago’s skyline, as at that time Jordan was playing professionally for the Chicago Bulls.





Rentmeester threated to sue Nike for copyright infringement, and the parties negotiated a limited licence, which would allow Nike to use its own photo on posters and billboards in North America for a period of two years





However, following the expiry of the licence, Nike continued to advertise its products by using the photo in various commercials. An iconic black silhouette (based on the Nike photo), depicting Michael Jordan “slam-dunking” the basketball hoop, was subsequently created and used in association with the sale and marketing of billions of dollars of Merchandise, becoming one of Nike’s most recognizable trade marks: the Jumpan logo was born.





The Nike photo The litigation





Rentmeester brought proceedings for copyright infringement in 2015. He claimed that both the Nike photo and the Jumpman logo infringed copyright in his 1984 photograph of Jordan. His complaint before the District Court of Oregon contained claims for direct, vicarious, and contributory infringement, as well as a claim for violation of the Digital Millennium Copyright Act, 17 U.S.C. § 1202.





The District Court of Oregon accepted Nike’s motion to dismiss and held that neither Nike’s photograph of Jordan nor the Jumpman logo infringed copyright in Mr Rentmeester original photograph.





The decision was appealed to the 9th Circuit, which stated at the outset (referring to the landmark decision of the US Supreme Court in Feist ), that: “ To state a claim for copyright infringement, Rentmeester must plausibly allege two things: (1) that he owns a valid copyright in his photograph of Jordan, and (2) that Nike copied protected aspects of the photo’s expression.” The latter requires consideration of two distinct components: copying (independent creation is a complete defence against a claim of copyright infringement) and unlawful appropriation (copyright protection does not repress any type of appropriation). In addition, the idea/expression dichotomy means that, to infringe, the defendant must also copy enough of the plaintiff’s protectable expression.



Having said so, the Court held that the plaintiff had likely demonstrated both ownership of a valid copyright and copying by Nike. But did Nike copy Rentmeester’s protectable expression? In other words: was there an unlawful appropriation by Nike?





The Jumpan logo Copying the protectable expression





In order to determine whether two works are substantially similar, the Court stated that a two-part analysis consisting of two “extrinsic “and “intrinsic” tests should be applied.





The extrinsic test assesses the objective similarities of the two works, and focuses only on the protectable elements of the plaintiff’s expression. The intrinsic test requires a more holistic, subjective comparison of the works to determine whether they are substantially similar in “total concept and feel.” Furthermore, the plaintiff must also show that there are substantial similarities under both tests.





Only the extrinsic test was employed in the current case, as only its application may be decided by the court as a matter of law. This is the only test relevant in reviewing the district court’s ruling on a motion to dismiss.





The extrinsic test





This test requires filtering out all non-protectable elements of a work. While this operation may be relatively straightforward for – say - novels, plays and films, the same may not be the case also for photographs. The court reminded in fact that, while photographs can be broken down into objective elements that reflect the various creative choices the photographer made in composing the image and which contribute to the work’s own originality, none of those elements is subject to copyright protection as such.





The originality of the pose as such that Mr Rentmeester depicted in his work cannot by itself be said to afford copyright protection. Instead, he would entitled to protection only for the way the pose is expressed in his photograph, a product of the camera angle, timing, and shutter speed. If a subsequent photographer persuaded Michael Jordan to strike the same pose, but took the photo from a different angle, the resulting image would bear little resemblance to that of Rentmeester’s photo.





th Circuit stated that photographs could be likened to factual comparisons. An author of a factual compilation cannot claim copyright protection for the underlying factual material, facts are always free for all to use. This being the case, what is protected by copyright is the photographer’s selection and arrangement of the otherwise unprotected elements. If sufficiently free and creative (hence, original), the combination of subject-matter, pose, camera angle, timing, and shutter speed will afford the work copyright protection, but not any of the individual elements standing alone. In this respect, the 9Circuit stated that photographs could be likened to factual comparisons. An author of a factual compilation cannot claim copyright protection for the underlying factual material, facts are always free for all to use.

However, not all photographs are only entitled to ‘thin’ protection. Certainly this would not be the case of Rentmeester’s work.





MichKat Jordan Substantial similarities?





Turning to the question whether the two images are substantially similar, the court had to assess whether the two photos’ selection and arrangement of elements are similar enough that “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them.”





According to the court, the subject-matter and the concept expressed hereto vary substantially between the two photos. The grassy knoll in the foreground of Mr Rentmeester’s photo is wholly absent from the Nike photo. The positioning of the basketball hoops is also materially different in the two photos: in Mr Rentmeester’s photo, the hoop is positioned at a height that appears beyond the ability of anyone to dunk on, while the hoop in the Nike photo is within Michael Jordan’s reach.





One conceptual similarity shared by the two photos is that they are both taken from a similar angle so that the observer looks up at Michael Jordan’s elevated figure, against a clear sky. However, also in this regard the photos differ as to their expressive details in material respects. For example, In Mr Rentmeester’s photo, the background is a cloudless blue sky: in the Nike photo, it is the Chicago skyline silhouetted against the orange and purple hues of late dusk. Furthermore, in Mr Rentmeester’s photo, parts of Michael Jordan’s figure are cast in shadow, while in the Nike photo Jordan’s figure is brightly lit.





Finally, the arrangement of the elements within the photographs is materially different in two respects. In Mr Rentmeester’s photo, Jordan is positioned slightly left of the centre and appears as a relatively small figure within the frame. In the Nike photo, he is perfectly centred and dominates the frame. In Mr Rentmeester’s photo, the basketball hoop stands on top of a tall pole that is planted in the ground, and the hoop’s position within the frame balances Jordan’s left-of-centre placement. In the Nike photo, the hoop takes up the entire right border of the frame, highlighting Jordan’s dominant, central position.





By comparing the subject-matter, conceptual similarity and arrangement of elements – the Court of Appeal held that the two photos were not substantially similar. Just as Rentmeester made a series of creative choices in the selection and arrangement of the elements in his photo, so did Nike’s photographer .





Dissent of Judge Owens



