The U.S. District Court in Maryland held that the NFL and Baltimore Ravens’ use of the Ravens’ original team logo was fair use under the Copyright Act, but declined to extend the fair use protection to the Madden NFL videogame’s use of the logo. Bouchat v. NFL Properties, LLC, et al., Case No. MJG-11-2878 (Dist. Md. 2012); Bouchat v. NFL Enterprises, LLC, et al., Case No. MJG-12-1495 (Dist. Md. 2012); Bouchat v. Baltimore Ravens Limited Partnership, Case No. MJG-12-1905 (Dist. Md. 2012) (available here). In a litigious history, Frederick E. Bouchat sued over his “Shield Drawing,” for copyright infringement, alleging that the defendants had used a substantially similar design without his permission as the Baltimore Raven’s former logo (“the Flying B Logo”) from 1996 until 1998. In the prior cases, the NFL and the Ravens were found to have infringed on his copyright but the Court denied his request for an injunction finding that the use was fair use under the Copyright Act, 17 U.S.C. § 107. Bouchat filed the three current cases alleging copyright infringement of the Shield Drawing due to the NFL’s use of the Flying B Logo in documentary videos (“the Documentary Video Case”), the Ravens’ use of the Flying B Logo in pictures on stadium walls (“the Stadium Wall Pictures Case”), and the NFL and Electronic Arts Inc.’s (“EA”) use of the Flying B Logo in the Madden NFL video game (“the Madden NFL Game Case”). The defendants filed motions for summary judgment under the fair use defense.
The fair use defense allows people other than the copyright owner to use the copyrighted material in a reasonable matter without the copyright owner’s consent. The fair use defense has four factors: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. § 107.
In considering the purpose and character of the defendants’ use of the Flying B Logo, the Court applied several subfactors including “the commercial or noncommercial character of the use, the degree to which the use is transformative, the defendant’s good or bad faith, and whether the purpose of the use falls within one of the categories of purposes mentioned in the preamble of section 107.” Bouchat, Slip Op. Pp. 8-9. Protected purposes include criticism, news reporting, teaching, and research. 17 U.S.C. § 107. If the use is commercial, that tends to weigh against a finding of fair use and the test is whether the defendants can gain profit from the exploitation of the Flying B Logo. A work is transformative if it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). Finally, the propriety of conduct examines whether the defendants acted in good faith.
The nature of the copyrighted work element “calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied.” Campbell, 510 U.S. 569, 586. The amount and substantiality used looks at the amount of the copyrighted work the defendant used. The effect on the market element requires the Court to consider how the defendants’ use of the Flying B Logo will affect the potential market or value of Bouchat’s Shield Design.
The Court started with the Stadium Wall Pictures Case, where the Ravens had photographs documenting important points in the Ravens’ history. The Court found that the purpose and character of the use of the Flying B Logo by the Ravens was within the fair use defense because, even though a game ticket was required to see the photographs, the pictures are not incentives for people to purchase tickets. In addition, the use was transformative because the pictures were on display for their factual content documenting the Ravens’ history. The Court noted that the Ravens’ conduct appeared to be in good faith. Even though the nature of the use, the fact that the Ravens used the entire work, and the effect on the market for Bouchat’s Shield Design weigh against a finding of fair use, the Court held that the transformative use overcame these factors. The Court concluded that the Ravens’ use of the Flying B logo in the stadium picture displays constituted fair use.
The Court then considered the NFL’s Documentary Videos Case where the Flying B Logo was used in segments of three documentaries. The Court found that the purpose and character of the use was fair because the documentaries “use pictures and film clips that show the Flying B Logo selectively as necessary to portray ‘history’ in biographical and comparative presentations[.]” Bouchat, Slip Op P. 25. The NFL’s use of the Flying B Logo was clearly commercial, however the Court concluded that the use was substantially transformative because each documentary offered commentary, criticism, and documented historical facts. Thus, the Flying B Logo was used for its factual content. The Court also found that the NFL’s conduct was in good faith and believed that its use was fair use. The Court also found that the transformative use of the Flying B Logo outweighed the nature of the use, the amount and substantiality of the use, and the effect upon the market. As such, the Court concluded that the NFL’s use was fair use.
Finally, the Court turned to The Madden NFL Game, which is released annually. The Madden NFL Game from 2010 through 2012 have a “throwback uniform” feature, which allows players to select uniforms that teams used in the past. The Ravens original uniforms with the Flying B Logo was included in this feature. The Court found that the purpose and character of use was not within the fair use defense. “Rather, the Game uses the Flying B Logo optionally to augment sales of its product by seeking to profit from the ‘nostalgia value’ gained from use of the infringing work in the very same manner as was the original use.” Bouchat, Slip Op. P. 30. The Court found that EA’s use of the Flying B Logo was not transformative. Looking at the propriety of conduct, the Court stated that there was a question as to whether EA’s conduct was in good faith. The Court also found that EA’s use of the Flying B Logo affected the market, citing to the nostalgia value, the fact that teams often play games in throwback uniforms, and that many teams offer throwback uniforms for sale. Even though the throwback uniforms use the Flying B Logo and not the Shield Design, the Court found that because the Flying B Logo has a market that there is also a market for the Shield Design. As a result, the Court held that EA’s use of the Flying B Logo was not fair use.