Photographer Sues Desmond Howard For Infringement; Howard Counters With 'Publicity Rights'

from the desmond-howard-heisman-trophy-pose-feat.-desmond-howard's-trophy-pose dept

This has the potential to be loooooong story but I'll try to keep it short. It involves multiple counts of alleged copyright infringement by some pretty big names in the business, but the real story is someone striking after the iron has spent 20 years cooling.

Brian Masck is a photographer whose claim to fame is the iconic photo of Desmond Howard striking the "Heisman pose" after scoring a touchdown for Michigan. Twenty-two years later, Desmond Howard, along with Sports Illustrated, Getty Images, Fathead, Nissan and a host of others, are being sued for copyright infringement by Masck.

There's a pretty lengthy (and inadvertently comical) filing included. If you're tired of reading boring legal filings filled with boring legal language, you'll find plenty to enjoy in Masck's lawsuit, which spends more than 60 paragraphs recounting the story of this photo. Much of it reads like a painfully earnest biography and includes plenty of extraneous details rarely found in lawsuits, including the photographer's years as a college student and relevant darkroom experience.

Masck, who had already learned to take his camera with him everywhere, was the only photographer on site when Kelly was arrested. And that is why he was able to sell his photograph to the national media...

When Brian refused to stop taking pictures of the incident, he was arrested, along with the Daily's editor, who was protesting Brian's arrest. All charges were eventually dropped, but you could say Brian, who had just turned 20 years old, was earning his photojournalism credentials...

Little did either of them anticipate before the game that the foresight, perceptive planning and skill of one of them would facilitate the creation of a college football icon, let alone a broader cultural touchstone.

And so on.

That's just a couple of the filing's finer moments. There's plenty more where that came from, as well as some color photos to break up the wall of biographic text.

Here's a few of the details actually relevant to the case at hand.

- Masck didn't actually register the copyright on the photo until 20 years after he took it. He blames this on some bad legal advice from "his counsel at the time," who told him that SI's publishing of the photo (along with crediting the source) was as good as registering the copyright. It obviously isn't and this puts Masck in the position of proving actual damages and prevents him from collecting statutory damages.

- After registering the photo, Masck subtly altered his original in order to track its unauthorized use. (You can see a MS Painted version of the photo pointing out the changes on p. 32 of the filing.) He removed the logo from one glove and slightly extended the lettering on the football. He found this altered version posted at Desmond Howard's website and among the products being sold by Fathead.

- Masck registered "thetrophypose.com" in 2011. If you're looking for anything related to this specific "iconic shot," Masck probably has it for sale. It's a very singular website that caters exclusively to Desmond Howard fans who are looking to decorate their home with various Desmond Howard "trophy pose" merchandise. Unfortunately, this probably limits his potential audience to Desmond Howard, who has his own website dedicated to all things Desmond Howard. (There's more to this story as well, but we're getting to that.)

- Masck also drags the Lanham Act (something usually associated with trademark violations) into the lawsuit, claiming "unfair competition." Jake McGowan (writing for Eric Goldman's blog) finds these claims questionable.

Masck also brings unfair competition claims alleging that the defendants caused confusion as to the origin of the Heisman Pose photo. The problem with these claims is that they are effectively trying to emulate copyright protection by stretching the language of the Lanham Act.

In Dastar v. Twentieth Century Fox, the Supreme Court struck down such an attempt:

[The phrase “origin of goods”] refers to the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods . . . To hold otherwise would be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do.

The Court stressed that the “creative talent” embodied in the work was not left without any protection--if it had qualified, it could still have been protected by copyright. This same reasoning should also apply to Masck’s work, because his claims are based on the defendants copying his photograph, not passing off his physical copies of the photograph as their own.

Masck filed his suit in January. McGowan's coverage of the filing in February contains this prescient note:

See the photo in question, and the plaintiff's attempts to merchandise it, at his "store." (Check out the number of times the site stuffs the phrase "Desmond Howard"--I could see why this might raise some issues of its own).

That's exactly what it's done. The name "Desmond Howard" is used liberally throughout Masck's site. Desmond Howard isn't too happy with this, especially as he's been named in a lawsuit concerning a photo of himself.

It turns out that Howard is a bit upset that he's be sued over his own likeness — especially since he claims that he has never sold the photo or made any money off of it. So Howard and his lawyers have decided to file a massive countersuit against Masck, claiming that the photographer unlawfully used his image by selling merchandise featuring it online.

Howard is referring specifically to Masck’s website TheTrophyPose, which sells everything from life-sized cutouts to framed prints of the famed photograph. Howard also cites Masck’s facebook page “Desmond Howard’s ‘Trophy Pose’ 1991 Photo by Brian Masck,” which the lawsuit claims uses Howards name, likeness and photo, all without permission.

According to Masck's lawsuit, he discussed a partnership with Desmond Howard on more than one occasion. Howard apparently decided to go his own way (his personal site has a shop advertised on the front page but there's no live link yet), but he did post Masck's photo (the one with the telltale alterations) on his site, hence the copyright infringement allegations.

Howard seems amazed that Masck is attempting to run a business predicated on one photo of Desmond Howard. Masck feels Howard shafted him -- both on the business deal and with the unlicensed publication of his photo. Sports Illustrated and Nissan have both backed Howard's counterclaim and asked for the lawsuit to be dropped.

So far, no decisions have been made. The original lawsuit is still "live" and it appears Masck and the subject of his iconic photo will be squaring off in court to determine who gets to profit from this (20 years belated) enterprise. Frankly, I'm not seeing a huge upside in terms of sales, no matter which party the court decides for. It's very possible that potential profits will be outweighed by court costs. A few quick settlements would make Masck happy but Desmond Howard has kind of screwed up what seemed to be a rather straightforward (not counting the glowing biography/filing) infringement case.

Filed Under: brian masck, desmond howard, heisman pose
Companies: fathead, getty images, nissan, sports illustrated