In Copyright Infringement Case, A Defendant Ends Up Owning Disputed Photo

Desmond Howard's iconic Heisman Trophy pose. Shot by Brian Masck. Now owned by Desmond Howard

Desmond Howard’s iconic Heisman Trophy pose. Previously ©Brian Masck. Now ©Desmond Howard.

Former football star Desmond Howard, the subject of a well-known photograph and a defendant in a copyright claim over the use of that same image, will end up owning the copyright to the image as part of a settlement with the photographer who shot it.

That photographer, Brian Masck of Linden, Michigan, is still pursuing infringement claims against Getty Images, Sports Illustrated, Nissan, Amazon.com, Wal-Mart and others.

Masck confirms that he agreed yesterday to settle his infringement claim against Howard by transferring copyrights to the image over to Howard. In exchange, Masck got “a very generous royalty agreement on [Howard's] uses of the picture, including at [public] appearances by Howard,” according to his attorney, Tom Blaske.

“This allows [Howard] to use his favorite photo of himself and make money on it,” Masck told PDN. Blaske adds that Howard “has more resources to best use this historic photo” and thereby ensure that it “remain[s] part of the cultural currency.”

The photo in question shows Howard striking an iconic Heisman Trophy pose after scoring a touchdown against Ohio State University, when he was playing for the University of Michigan. Masck shot the image in 1991 as a freelancer, and licensed it to Sports Illustrated for publication.

SI allegedly never returned the original 35mm transparency to Masck; it ended up in the Allsport archive, and finally in digital format on Getty’s web site around 2005. From there, it “traveled through sports memorabilia channels” onto merchandise sold through retailers, Masck says, and it also appeared in Nissan ads published in Sports Illustrated.

Masck sued in January, 2013, claiming infringement against Howard for unauthorized use of the photo on Howard’s website. Masck claimed unauthorized use by other defendants for distributing the photo and using it in ads without permission.

But Howard counter-sued Masck for unauthorized commercial use of Howard’s name and likeness on a website called TheTrophyPose.com. Masck used that site to sell products featuring the image, including framed prints and life-size, cut-out stand up. He splashed Howard’s name all over the site, confusing visitors into thinking Desmond Howard was behind the site and its products, according to Howard’s counter-claim.

Masck says he’s prohibited by the settlement agreement with Howard from disclosing the financial details. But he says Howard, a TV football commentator who uses photos for publicity and marking, wanted to buy all rights to Masck’s photo several years ago. “At the right price and right terms I was ready to entertain that,” Masck says.

They couldn’t reach an agreement, however.

“What spurred the lawsuit was, after I had sent Howard a print [during their early negotiations] as an example of what the picture could look like, and he took that picture and put it up on his web site,” Masck explains. “That picture had some tells in it. I digitally altered it so I could track it.”

With a trial date approaching, they resumed negotiations and finally reached an agreement.

Meanwhile, Masck is trying to negotiate settlements with Nissan, Sports Illustrated and the other defendants before the case goes to trial. They tried unsuccessfully to have Masck’s claims thrown out on the grounds that he hasn’t done enough over the years to assert his copyrights to the image.

(Editor’s note: This story has been altered from its original version, which included two quotes from Brian Masck that he has asked PDN to remove.)

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8 Responses to “In Copyright Infringement Case, A Defendant Ends Up Owning Disputed Photo”

  1. Stephane Cardarelli Says:

    Hi, i’m Stephane Cardarelli.

  2. David Legrem Says:

    Interesting case; a battle between copyright and right of publicity. If the photographer hadn’t gone over the line by misusing the athlete’s name, he’d have been on stronger ground. Of course, the photographer is on very strong ground as to suing SI, Getty, and the other pirates-for-profit.

  3. Richard Long Says:

    Stephane – I believe you are a dipsh*t

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