A federal judge from the District of Maryland has ruled that an artist, who created a drawing that was ultimately used by the Baltimore Ravens, is not entitled to a permanent injunction preventing its further use. The court’s decision, however, was predicated on the Ravens paying him “reasonable compensation for such use.”
On December 5, 1995, plaintiff Frederick Bouchat created a logo, and sent in to the Ravens. Several months later, his logo was “officially chosen” and outside artists were hired to apply the finishing touches. On April 1, 1996, Bouchat faxed his drawing to Ravens management and asked for a letter of recognition and an autographed helmet.
In June of 1996, the NFL began licensing the logo for the creation of merchandise. A month later, Bouchat registered his drawing with the U.S. Copyright Office. In 1999, The Ravens began using a different logo.
In May of 2007, Bouchat filed a copyright infringement action against the Ravens and the NFL in federal court. The district court ruled, and 4th U. S Circuit Court of Appeals affirmed, that Bouchat was barred from obtaining actual damages from the licensees by the Doctrine of Claim Preclusion, and that he was ineligible to receive statutory damages because of his failure to register his copyright before the infringement began.
Bouchat then embraced a different strategy. On February 14, 2008, he sued the Ravens again, as well as the National Football League, NFL Films, Inc., and others, alleging that the defendants have and continue to sell, distribute, and publicly display the old “Shield B” logo in connection with season highlight films, promotional films shown at Ravens games, team game films, memorabilia, photographs, and websites. Among other things, Bouchat sought a permanent injunction regarding the future use of the logo.
Bouchat lost again, except to the extent the Ravens and the NFL “did not establish fair use of the Flying B logo in the highlight films sold by the NFL and the highlight film played during the Ravens home football games,” accord the 4th Circuit. “The films infringe on Bouchat’s copyrighted work, and his request for injunctive relief against this infringement is not precluded. “
In remand, the district court examined the four-factor test a copyright holder must satisfy to secure an injunction. “A plaintiff must demonstrate: (1) that they have suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and the defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. The decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion. This test for injunctive relief is applicable to cases of copyright infringement.”
Regarding irreparable harm, the court noted that Bouchat “has not established that the defendants’ infringement is, and in any meaningful way, interfere(s) with any potential commercial use by him of the Flying B Drawing. Indeed, Bouchat would appear to be limited (perhaps totally) in his commercial use of the Flying B Drawing by virtue of the defendants’ trademark rights in the name ‘Ravens.’ Even if Bouchat could make a commercial use of the Flying B Drawing that would not infringe Defendants’ trademark rights, Bouchat has produced no evidence that he has the intent or realistic possibility of doing so. Hence, provided that Bouchat can receive reasonable compensation for the defendants’ use of his copyright-protected work, he would not suffer any irreparable harm so as to satisfy the first of the eBay tests.”
As for the inadequacy of remedies at law factor, the court wrote that as long as Bouchat could receive “reasonable compensation,” then an adequate remedy was available.
Considering the balance of hardships, the court wrote that enjoining the defendants from use of the films at issue “would cause a degree of hardship on the defendants and others that exceeds the hardship that would be suffered by Bouchat, provided he receives reasonable compensation in lieu of injunctive relief.”
The public interest factor also tilts toward the defendants. “On balance,” the court wrote, “the public interest in the ‘historical’ aspect of the films at issue, albeit not great, to outweigh the public interest in granting a monopoly to Bouchat, a copyright owner of a drawing shown in the films at issue, provided that Bouchat receives reasonable compensation.”
The court went on to note that it will utilize its discretionary power “to condition the denial of an injunction against future use of the Flying B Logo in the films (with) the payment of reasonable compensation for such use.”
Frederick E. Bouchat v. Baltimore Ravens Limited Partnership, et al.; D.Md.; CIVIL ACTION NO. MJG-08-397, 2011 U.S. Dist. LEXIS 129530; 11/9/11.
Attorneys of Record: (for plaintiff) Howard J Schulman, LEAD ATTORNEY, Schulman and Kaufman LLC, Baltimore, MD. (for defendant) Mark D Gately, LEAD ATTORNEY, Andrea William Trento, Hogan Lovells US LLP, Baltimore, MD; Robert Lloyd Raskopf, PRO HAC VICE, Quinn Emanuel Urquhart Oliver and Hedges LLP, New York, NY.
