IP Law Daily Nonprofit organization’s use of Indianapolis skyline photo in conference brochure was ‘fair’
Monday, October 15, 2018

Nonprofit organization’s use of Indianapolis skyline photo in conference brochure was ‘fair’

By Joseph Arshawsky, J.D.

The Midwest Regional Network for Intervention with Sex Offenders (MRNISO) was entitled to summary judgment of trademark infringement claims based on its fair use defense because its use of Richard N. Bell’s nighttime photograph of the Indianapolis skyline in MRNISO’s brochure for its annual conference was for purposes of illustrating the location of the conference, the federal district court in Indianapolis has ruled. The court also determined that state employee defendant David N. Powell—executive director of the Indiana Prosecuting Attorneys Council—was entitled to summary judgment on Eleventh Amendment immunity grounds (Bell v. Powell, October 11, 2018, Pratt, T.).

Bell is an attorney and photographer. This litigation centers on a photograph taken by Bell in March 2000 of the Indianapolis, Indiana, skyline at nighttime ("Indianapolis Nighttime Photo"). After taking the Indianapolis Nighttime Photo, Bell published it on the Internet for the first time in 2000, and on his own photography website in 2011, at which time he registered the copyright. He has sold licenses for publication, has retained sole ownership of the copyright, and has used the photograph to promote his photography business. Bell sells a digital download version of the Indianapolis Nighttime Photo for $200.00 on his website.

MRNISO is a non-profit professional network that provides professional networking and education to reduce incidents of sexual assault, and provides support for victims, survivors, and families of sexual assault. MRNISO accepts membership dues from professionals representing various disciplines involved in sex offender intervention. The annual membership fee in 2015 was $25.00. In 2015, MRNISO’s total membership numbered 76. In 2015, MRNISO’s website published its annual conference brochure with the Indianapolis Nighttime Photo without obtaining a license or necessary authorization from Bell to use the photograph. MRNISO failed to disclose the source of the Indianapolis Nighttime Photo or confer credit to Bell.

Powell is the executive director of the Indiana Prosecuting Attorneys Council (IPAC). IPAC is a state judicial branch agency established by Indiana statute, consisting of Indiana’s prosecutors. MRNISO asked IPAC to advertise its 2015 spring conference on IPAC’s website. A link was created on IPAC’s website to MRNISO’s 2015 Spring Conference brochure. All parties moved for summary judgment. The court granted MRNISO’s and Powell’s motions and denied Bell’s motion.

Eleventh Amendment immunity. A review of Bell’s allegations, and more importantly at the summary judgment stage the designated evidence, reveals that Bell’s claim against Powell stems from Powell’s official role as the executive director of IPAC, a state agency. Bell’s summary judgment evidence and arguments all point to Powell’s alleged actions as IPAC’s director. Bell’s claim against Powell relies entirely on Powell’s responsibilities as the director of IPAC. As Powell correctly and succinctly explained, he would not be facing Bell’s allegations if he were not the Executive Director of the IPAC. "The sole reason that Powell is a party to this action, as made clear via both Bell and Powell’s evidence, is only because he is responsible for ‘all facets’ of IPAC’s operation," said the court. It was clear from the pleadings, the designated evidence, and the parties’ summary judgment arguments that Bell’s claim against Powell is a claim against him as the director of a state agency. As such, the claim is barred by Eleventh Amendment immunity. Therefore, Powell’s Motion for Summary Judgment was granted, and he was dismissed from the case.

Fair use defense. MRNISO relied on the statutory fair use doctrine as a defense to the copyright infringement claim. The court analyzed the four statutory factors, and the parties’ positions. "The designated evidence in this case points to one conclusion," according to the court. "The fair use doctrine applies to MRNISO’s use of the Indianapolis Nighttime Photo." Any Internet user who clicked the link on IPAC’s website would download the MRNISO 2015 Spring Conference brochure, not the Indianapolis Nighttime Photo. "The sexual assault conference brochure is not in the same market as the city skyline photography market," the court noted. The brochure—which included the photograph with superimposed letters in the upper right-hand corner alongside two other photographs—could not be found by any reasonable trier of fact to be a market substitute for the Indianapolis Nighttime Photo.

Bell’s Indianapolis Nighttime Photo was a depiction of a city skyline used to sell copies of a photograph of the Indianapolis skyline. By contrast, "the nature of the photograph on MRNISO’s brochure was to provide a factual depiction of Indianapolis to inform the public about where an educational, professional conference on sexual assault would be held," the court said. While the Indianapolis Nighttime Photo appears to have been copied in its entirety, the photograph was included as only a small portion of the brochure in comparison to the entire brochure.

While MRNISO charged a registration fee of $25.00 or $35.00 to attend the 2015 Spring Conference, the designated evidence indicates that the registration fees were used to further MRNISO’s mission of educating professionals on how to reduce sexual assault. No profit was gleaned from the fees for the benefit of MRNISO or its board of directors and other interest holders. The brochure was not sold, and MRNISO did not sell the Indianapolis Nighttime Photo. There was no commercial use.

"Each of the factors to be considered under the fair use doctrine point in favor of applying the defense in this case," the court stated. Therefore, MRNISO was entitled to summary judgment on the basis of the fair use doctrine.

The case is No. 1:16-cv-02491-TWP-DLP.

Attorneys: Maura K. Kennedy (The Law Office of Maura K. Kennedy, LLC) for Richard N. Bell. Bryan Findley, Indiana attorney General, for David N. Powell. Clifford M. Robinson (Densborn Blachly LLP) for Midwest Regional Network for Intervention with Sex Offenders.

Companies: Midwest Regional Network for Intervention with Sex Offenders

MainStory: TopStory Copyright IndianaNews

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