Desmond Howard striking the Heisman Trophy pose. Image Credit: Brian Masck

Desmond Howard striking the Heisman Trophy pose. Image Credit: Brian Masck

Let’s click on the instant replay about a lawsuit filed by a photographer against Sports Illustrated, the subject of the photograph, Desmond Howard, and other companies the shooter claimed had used his photograph without permission.

Just to jog your memory, back in 1991, photographer, Brian Masck, took a photo of Desmond Howard, then a University of Michigan star, posing as the Heisman Trophy during a Wolverine game against Ohio State University. Sports Illustrated used the photo in its publication, paid Masck $500, and credited him for the photo. Many years later, Nissan used the photo as part of an advertisement in Sports Illustrated, Fathead sold stickers of the photo, and Wal-Mart and Amazon sold posters and reproductions of the photo. The photo ended up becoming one of college football’s iconic images, yet Masck did not register it with the copyright office until 2011. Yes, we’re shaking our heads. But apparently Masck was told by his lawyer at the time that he did not need to register the photo.

Last year, the court was unwilling to dismiss Masck’s unfair competition claims under the Lanham Act because it was not ready to conclude that his photo was an intangible. The court sought more arguments on the issue — and now that the guys in stripes, er robes, have blown the whistle, this legal play’s far from over.

Instead, the court has found that Masck’s photograph is not a tangible good whose origin the defendants falsely designated. Rather, the photo was a communicative product protected by the Copyright Act and false designation of its authorship is not cognizable under the Lanham Act. Since Masck did not create the reproductions sold on Amazon and Wal-Mart, the Nissan ad, or the Fathead stickers, which are all tangible goods, Masck’s Lanham Act violation claim fails. Even the defendant’s “wholesale reliance” on Masck’s photograph without crediting him as the photographer does not give rise to a Lanham Act claim.

The defendants sought summary judgment under the laches doctrine, stating Masck waited too long to register his photograph and that they were not notified of his infringement claim.

But since Masck could show he unaware of the infringements until 2010 or later — when he did seek registration and he had relied on his lawyer’s advice back in 1991 — the court found there was an issue of material fact and denied summary judgment.

The defendants also tried to argue that Masck should not receive statutory damages because the claimed infringement occurred before he registered his photo; the court found that questions of fact exist as to the dates of infringement and whether his evidence is sufficient to support awarding him damages.

Whew! It seems Masck has burned through the defense team like Desmond Howard burned through Ohio State’s coverage but can Masck score the touchdown like Howard in that infamous college game. Let’s watch the play that started it all shall we?