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Copyright Claim Dismissed by Ninth Circuit for Lack of “Substantial Similarity” Between Works

Legal News GavelCopyright law gives authors of creative works the ability to use those works in commerce, to license their use by others, and to prevent unauthorized use. This applies to a wide range of “works of authorship” that are “fixed in any tangible medium of expression.” See 17 U.S.C. § 102(a). Copyright owners have various exclusive rights, subject to various limitations. A recent Ninth Circuit Court of Appeals decision addressed a limitation on exclusive rights to a pictorial work that may be relevant to California intellectual property cases. The court held that the allegedly infringing work, a logo used in athletic apparel, was not “substantially similar” to a photograph taken by the plaintiff over 40 years ago, and therefore it did not infringe the copyright. Rentmeester v. Nike, Inc., 883 F. 3d 1111 (9th Cir. 2018).

Copyright protection only extends to fixed forms of creative works, rather than the ideas behind the works. A work that uses similar concepts or ideas as a copyrighted work probably does not infringe that copyright unless it copies or reproduces specific, recognizable parts of the copyrighted work. The Ninth Circuit looks at whether a copyrighted work and an allegedly infringing work are “substantially similar” to each other. It outlined this standard in a decision involving the alleged infringement of Apple’s Macintosh operating system (OS) by Microsoft’s Windows OS in Apple v. Microsoft, 35 F.3d 1435 (9th Cir. 1994). The court looked at both “intrinsic” similarities “from the standpoint of the ordinary reasonable observer, with no expert assistance,” and “extrinsic…similarities in both ideas and expression.” Id. at 1442. It ruled against Apple’s infringement claims, concluding that the similar elements of the two OS’s were either licensed uses or were derived “from basic ideas and their obvious expression.” Id. at 1447. See also Mattel, Inc. v. MGA Entertainment, Inc., 616 F. 3d 904, 913-14 (9th Cir. 2010).

The work at issue in Rentmeester is the “Jumpman” logo used by Nike on basketball shoes and other products. The logo is based on a famous photograph of the basketball player Michael Jordan, which was taken by the plaintiff in 1984. The photograph depicted Jordan, who had not yet begun his professional basketball career, in a unique pose “inspired by ballet’s grand jeté.” Rentmeester, 883 F.3d at 1115. Life Magazine published the photograph that year as part of coverage of the upcoming Summer Olympic Games in Los Angeles. The plaintiff licensed the photo to Nike that year “for slide presentation only.” Id. at 1116.

Nike hired a photographer in 1985 to produce a new photograph “obviously inspired by” the plaintiff’s picture. Id. at 1116. While the new photo showed the same pose and used a very similar camera angle, it used the Chicago skyline as its background instead of the University of North Carolina campus. In 1987, the company created the “Jumpman” logo based on the outline of Jordan in Nike’s photograph. It remains “one of Nike’s most recognizable trademarks” to this day. Id.

The plaintiff sued Nike for copyright infringement in 2015. The Ninth Circuit reviewed the case de novo after the district court’s dismissal, and it ruled that the logo did not infringe the photograph’s copyright. Applying the extrinsic and intrinsic tests, it held that the similarities between the two photographs were limited to “the general idea or concept embodied in the [original] photo.” Id. at 1121.

James G. Schwartz is an intellectual property lawyer in the Bay Area who represents businesses and business owners in litigation and transactional matters. To schedule a free and confidential consultation with a member of our team, contact us today at (925) 463-1073 or online.

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