• Bo Knows...Copyright Infringement?
  • August 9, 2013
  • Law Firm: Proskauer Rose LLP - New York Office
  • The iconic photograph of dual-sport phenom Vincent "Bo" Jackson has been draped over everything from magazine covers to t-shirts, immortalizing the man ESPN considers to be the greatest athlete of all time. The image was central to Nike's infamous "Bo Knows" campaign and helped enshrine the company into the athletic pantheon in the early '90s. Nike hit a home run with the campaign, but that did not prevent them from getting blindsided by Richard Noble, the photographer who took the picture. In June, Noble filed a complaint against Nike in the Southern District of New York, alleging copyright infringement over recent unauthorized uses of the image.

    Noble, who holds the copyright to the image, issued limited licenses to Nike in the late 1980s and early 1990s to promote a new cross-training sneaker inspired by Jackson. The shoe has become a holy grail of sorts for collectors (or "sneakerheads"), with some pairs fetching as much as $500 online. Nike capitalized on the retro-sneaker craze by re-releasing sets of Jackson's cross-trainers between 2010-12, allegedly using Noble's image in an ad campaign without obtaining or seeking a license.

    In the complaint, Noble asserts that Nike's constant recycling of the image is indicative of its marketability: "That Nike has employed the [i]mage several decades after it was created speaks to its effectiveness as a sales and branding tool....That Nike employs the name and persona of Bo Jackson decades after his retirement speaks to...the value of associating Nike products with the Bo Jackson name."

    As of the date of the complaint, Jackson is still under contract with Nike and remains active in the media and sports circuits. Jackson was the subject in an ESPN-produced feature film entitled "Bo Knows" as well as the central figure in the popular ESPN "30 for 30" documentary "You Don't Know Bo" in 2012. According to the complaint, ESPN contacted Noble last October requesting permission to use the image for the documentary, but Noble refused. Subsequently, Nike contacted Noble and expressed a desire to purchase all of the rights to the image. As described in the complaint, the parties could not come to terms.

    By the end of 2012, Nike delivered a proposed agreement to Noble to acquire a license to use the image for the company's "North American retail" campaign. The complaint alleges that while Noble was still reviewing the terms of the agreement, Noble discovered that Nike had been using the image without authorization. In January 2013, Nike allegedly admitted to Noble in an email that the image had already been used on Nike's Facebook and Twitter pages and that Nike would pay Noble for such uses, and that the image had been used in promotional materials for the EPSN "30 for 30" documentary. Noble has since become aware of numerous companies employing the use of the image without his license, authorization, or consent.

    The complaint asserts direct and contributory infringement claims against Nike and requests statutory damages (or alternatively actual damages and the defendant's profits), as well as a permanent injunction enjoining and prohibiting Nike from further using the image.

    As of this writing, Nike has yet to answer Noble's complaint. We'll see if the parties can settle the dispute. If not, Noble will either score on his claims in court or get his case sacked.