The late Yogi Berra once quipped: "You've got to be very careful if you don't know where you are going, because you might not get there." Professional sports photographers know exactly where they are going when aggressively pursuing protection of their rights.
On June 23, 2015, plaintiffs Scott Boehm and David Stluka, two professional sports photographers, lodged a suit requesting several sports memorabilia suppliers and retailers to stop selling or distributing sports collectibles containing unauthorized copies of their photographs. In an instant replay, this is the second copyright infringement case that the plaintiffs have brought against sports memorabilia retailers for selling unlicensed copies of their copyrighted photographs as part of sports merchandise, having litigated similar claims in Wisconsin district court in 2013.
In the current dispute, the photographers filed for a preliminary injunction, claiming irreparable harm if the alleged unlicensed sales continue. Even though some of the retailers claimed that the injunction was not necessary, as they professed to have already stopped selling any infringing merchandise, the photographers argued that without the injunction there is no way to eliminate the defendants' incentive to sell off inventory of the merchandise before a definitive court ruling or otherwise prevent any future copyright violations. A Wisconsin district court found the defendants' practices out of bounds, ruling that the balance of harms favored the plaintiffs and the public interest favored enforcement of IP rights. In August 2015 (and later enunciated in a September 2015 Order), the court granted a preliminary injunction barring the defendants from creating, displaying, selling, or distributing any reproduction in any medium of the copyrighted photographs that are the subject of the suit. (Boehm v. Scheels All Sports, No. 15-379 (W.D. Wisc. Sept. 8, 2015)). The September Order also prohibited the defendants from destroying or otherwise disposing of any unauthorized copies in any medium of the covered photographs, and required the defendants to safely secure all memorabilia that contains the covered photos (and retain all documents relating to the sale or acquisition of the covered photographs).
Following the issuance of the original injunction in August, a visit to the store of one of the defendants, Gameday Sports LLC, allegedly revealed the presence of contested merchandise still on sale – what the plaintiffs labelled as an attempt to "hide evidence before discovery began" and a violation of the preliminary injunction. Crying foul, the plaintiffs subsequently moved the court for several types of relief: (1) injunctive relief barring the defendant from further violations of the injunction; (2) a directed verdict of willful copyright infringement ($600,000 in total for four instances of alleged infringement); (3) $25,000 in sanctions for non-compliance and attorney's fees, and an additional $10,000 per day for any continuing violations. The photographers accused Gameday Sports of continuous violation of the injunction and deceiving the court about the store's voluntary cessation of unlicensed products sales containing the plaintiffs' works. Subsequently, another online store was allegedly discovered to be selling infringing merchandise, despite the store operator having reported to the court that he had no reproductions of the covered photographs in his possession.
Upon further review, on October 26, 2015, the court made a preliminary finding of contempt and ordered the defendants to appear at a future hearing to show cause why they should not be sanctioned for contempt, including potentially for criminal contempt. Yet, on November 25, 2015, the court refused to amend the existing preliminary injunction to require all defendants to "quarantine reproductions of any photograph in which the defendant does not itself hold the copyright, pending review by an independent auditor." The court recognized the plaintiffs' legitimate concerns of non-compliance with the injunction, but declined to impose a "sweeping prohibition" involving works not at issue in the suit, instead suggesting that the court would award appropriate relief against defendants who have failed to comply with the injunction.
After obtaining a preliminary injunction and pushing for sanctions against those sellers who allegedly violated the court order, the plaintiffs have no intention of winning the battle but losing the war. The plaintiffs also requested that the court amend the preliminary injunction to require that all defendants "quarantine reproductions of any photograph in which the defendant does not itself hold the copyright, pending review by an independent auditor." The court denied the motion, however, refusing to impose such a "sweeping prohibition" on photographs not at issue in the suit, instead noting that in accordance with sanctions sought by the plaintiffs, the court would award appropriate relief against non-complying defendants. Determined to protect their rights, the photographers are still seeking monetary damages and a permanent injunction to ban the sale of the infringing articles once and for all. It ain't over till it's over, as the final decision is yet to come.