"Who Owns the IP Rights to High School Sports ... - Jenner & Block

July 2008, vol. 48, no. 1
There has been a growing trend
in the last few years to exploit
the Internet as a secondary
marketplace. For example, if you miss
an episode of your favorite television
show, you can probably download
it for a fee a few days later on the
Internet. Or if you are looking for a
discontinued Halloween costume for
your child, someone is likely selling it
on the Internet. The secondary market
has grown such that revenue from it
was a major sticking point between
Hollywood writers and producers that
resulted in a recent work stoppage
The newsletter of the ISBA’s Section on Intellectual Property Law
Intellectual ProPerty
Who owns the IP rights to high
school sports?
By Joseph A. Saltiel, jsaltiel@jenner.com; Jenner & Block LLP, Chicago; Copyright © Joseph A. Saltiel 2008. All Rights Reserved. 1
In thIs Issue
• Who owns the IP rights to
high school sports?
• sports Figures Reclaim and
Protect their names (but
Larry Bird really did sleep
here!)
• the application of the
Communications Decency
Act’s IP exception to state
law claims
• “Guitar hero” – Do the claims
catch more than just air?
the patent license fights
surrounding a popular video
game
......
......
......
......
1
4
5
8
forcing television stations to run only
re-runs and reality shows. Now that the
writers and producers are in agreement,
the battleground has moved from Los
Angeles to Peoria. So when you missed
your son scoring a touchdown in his
state championship game this past
November, the question is not whether
you can relive the moment by purchasing
photographs of it on the Internet, it
is who is going to sell you those photographs.
The Legal Dispute:
The Illinois High School Association
(“IHSA”) is an unincorporated association
of over 750 public and private high
schools in Illinois. 2 Starting in 2001,
the IHSA, after soliciting bids, entered
into an agreement with Visual Image
Photography (“VIP”) to provide photography
services at various IHSA events, 3
including images featuring player
action, crowd features, sportsmanship,
tournament officials, IHSA personnel,
sponsors, award presentations, etc. 4 In
exchange for awarding photographic
exclusivity to VIP, which included
prohibiting other photographers who
intend to sell their photographs from
photographing IHSA State Finals, the
IHSA was allowed to use the photographs
captured by VIP in various publications
for promoting the activities of
the IHSA, its member schools, and stu-
Reprinted with permission of the Illinois State Bar Association
dent participants. 5 The IHSA estimates
that this agreement saved the IHSA over
$50,000 a year in photography-related
services. 6
Although the IHSA has had an
agreement with VIP for several years,
the IHSA did not proactively prohibit
the media from selling its photographs
of IHSA events. 7 In 2007, however,
the IHSA distributed to the media its
2007-08 Football State Final Media
Arrangements, which expressly prohibited
any secondary use of photographs,
such as sales on the Internet, without
the prior written approval of the IHSA.8
In August of 2007, representatives of
the Illinois Press Association (“IPA”)
met with the IHSA to discuss the “new”
media arrangement. After being unable
to reach any agreement regarding the
secondary uses of photographs by the
media, the IPA filed a lawsuit in the
Circuit Court of the Seventh Judicial
Circuit of Illinois on November 1, 2007.
Illinois Press Association v. Illinois High
School Association, Case No. 07-CH-
885.
The IPA was seeking an injunction
prohibiting the IHSA from enforcing
its policies on secondary use and from
allowing VIP to have greater access
than other photographers at IHSA
events. After filing its complaint, the IPA
immediately filed a motion for a temporary
restraining order against the IHSA,

which Judge Patrick Kelley denied on
November 5, 2007. The IHSA responded
to IPA’s complaint by filing counterclaims
and a motion for a preliminary
injunction enjoining the IPA and its
members from selling photographs of
IHSA events in violation of the IHSA’s
policies that are listed on media credentials
and event tickets. Before Judge
Kelley made any substantive rulings,
the parties filed a stipulation to dismiss,
which the court signed on April 9, 2008
ending the dispute.
The Public Dispute:
While the attorneys battled in
the courtroom, the parties battled in
the court of public opinion. In late
November of 2007, the IHSA denied
several media photographers entry to
the IHSA Football State Finals because
they refused to adhere to the IHSA’s
secondary use prohibition. 9
The newspapers quickly shot back.
Some newspapers had their photographers
purchase tickets to events so they
could take pictures from the stands. 10
The newspapers also published articles
and commentary highlighting the issue
for the public, including “apologies” to
its readers for not being able to publish
photographs from certain IHSA State
Finals because of the IHSA’s policies.
Given the media spotlight, there was
a substantial public backlash against
the IHSA, or at least enough of a backlash
to peak the interest of lawmakers.
The Illinois State Legislature drafted proposed
legislation prohibiting the IHSA
from imposing its secondary use policy.
In response, the IHSA first tried to soften
its policy saying that it would allow the
media to distribute photographs on the
Internet and to the community as long
as the photographs were not being sold.
That policy did not work for the IHSA
Girls Gymnastics and Wrestling State
Finals in mid-February because the
media pressure and public outcry only
intensified after the media, to gain entry
into those events, was still required to
sign waivers promising to adhere to the
IHSA’s prohibition on secondary uses
of photographs taken at those events.
Thus, the legislature continued to move
forward with its proposed legislation.
By the end of February 2008, the IHSA
relented and temporarily lifted any
restrictions on the media for the IHSA
Girls Basketball Finals.
Regardless of the IHSA’s relaxed
policies, the Senate passed legisla-
Intellectual Property
tion banning the IHSA’s secondary use
policies. While the media’s secondary
use of photographs was problematic
for the HSA, the proposed legislature
was even worse. The IHSA feared that
the proposed legislation would have a
broad impact on the IHSA and its member
schools, affecting everything from
yearbooks to television rights. 11 Hence,
before the House could approve the
Senate’s legislation, the IHSA relented.
In early April 2008, the IHSA settled its
dispute with the IPA allowing the media
unrestricted access to IHSA championship
events, mooting the pending legislation.
12
The Legal Issues:
The IHSA’s legal argument was
two-fold. First, the IHSA argued that it
had the unrestricted right to enter into
contracts. For this proposition, the IHSA
relied primarily on Coyne-Delany Co.
v. Capital Dev. Bd., where the Seventh
Circuit conveyed its belief that a state
government, just as the federal government,
has broad freedom to deal with
whom it chooses on the terms it chooses.
13 616 F.2d 341, 342 (7th Cir. 1980).
Second, the IHSA argued that it
could restrict or limit access to people
for the purposes of performing under
those contracts. Although the IHSA did
not cite a case directly on point, it did
rely heavily on Foto USA, Inc. v. Bd.
Of Regents of the Univ. Sys. Of Florida,
141 F.3d 1032 (11th Cir. 1998). In Foto,
certain state universities solicited bids
from photographers to enter into contracts
to be the exclusive photographer
at their graduations. Id. at 1034. After
entering into a contract, the universities
prohibited any other photographer from
taking photographs of their graduation
ceremonies for commercial purposes. A
photographer who was prohibited from
taking photographs for commercial purposes
at a graduation brought suit seeking
an injunction against the universities
from violating his First Amendment
rights. The Eleventh Circuit, affirming
summary judgment for the universities,
held that the First Amendment was not
implicated by a photographer seeking
commercial access to memorialize a
public event especially because, in that
case, the photographer had an opportunity
to bid and become the official
photographer.
Foto, however, is easily distinguishable.
First, a graduation ceremony,
where rarely anyone other than family
Reprinted with permission of the Illinois State Bar Association
and friends are interested and often
times is not open to the public, is
quite different from playoffs or a state
championship game, which is open
to the public and where the public is
interested. Second, although the media
is selling photographs for commercial
gain, the media also has a legitimate
non-commercial interest in gathering
and reporting the news. Third, the
media was not, and could not, be part
of the bid selection process used by the
IHSA to select its photographers.
The IPA also took a two-fold
approach, but framed the issue differently.
First, relying on previous Illinois
court cases holding the IHSA to be a
state actor because of its membership’s
overwhelming public nature, the IPA
argued that the actions of the IHSA
were bound by constitutional guarantees.
Thus, the IHSA’s prohibition on
secondary use was a violation of article
1, section 4 of the Illinois Constitution
(which the IPA concedes is traditionally
afforded the same protection as the First
Amendment), i.e., a violation of the
IPA’s freedom of speech and freedom
of press, and subject to a strict scrutiny
analysis. The IPA argued that the IHSA’s
rule failed this analysis because there
was no compelling governmental interest
served by the prohibition. The IPA
also argued the prohibition was not
narrowly tailored because “secondary
use” was not clearly defined. (In
the alternative, the IPA argued that if
the lesser intermediate standard was
applied it would also prevail for the
same reasons).
Second, the IPA argued that the
IHSA’s prohibition on secondary use
was a violation of the equal protection
clause. For this argument, the
IPA relied on Chicago Tribune Co.
v. Village of Downers Grove, 125
Ill.2d 468, 532 N.E.2d 821, 126 Ill.
Dec. 950 (1988). There, the village of
Downers Grove passed an ordinance
that imposed greater restrictions on
commercial door-to-door solicitations
than non-commercial solicitations. The
Illinois Supreme Court struck down the
ordinance on free speech and equal
protection grounds because it hindered
the ability of Chicago Tribune to advertise
its newspaper while allowing, for
example, not-for-profit organizations to
advertise unfettered.
Like the IHSA, the IPA’s position was
not without its weaknesses. Chicago
Tribune is distinguishable because VIP
Vol. 48, No. 1, July 008

is not a media organization. All media
at IHSA events were treated equally.
The IPA’s first amendment position was
also suspect. The IHSA did not prohibit
the media from attending events and
disseminating the news. Nor did the
IHSA prohibit the media from using
photographs as part of that dissemination
of news. The IHSA’s policies only
targeted the media’s secondary use of
photographs, which was a use for pure
commercial gain.
The Solution:
Both the IPA and IHSA approached
this issue from different areas of
the law. Unfortunately, neither side
addressed the real issue: Who owns
the intellectual property rights to high
school athletics? The most likely reason
neither side addressed the issue was
because there is no statute or case law
on point. In other words, this exact
issue does not appear to have been litigated
or legislated.
The answer may have profound
effects on how far the government can
control otherwise public events. Either
parties’ position taken to its logical
conclusion would result in the absurd:
a city owning all the intellectual property
rights to any public function within
its city limits or the converse, the media
being allowed to use any public activity
for commercial gain. The answer
should lie somewhere in between.
Although secondary use issues have
been known for some time, the secondary
use market on the Internet, which
is a relatively new phenomenon, has
made this issue much more prevalent
than in years past. Many other state
athletic associations have the same
problem as the IHSA, but the associations
in other states have not reached
the point of the parties in Illinois. Thus,
the suit between the IPA and IHSA
appeared to be the first of its kind; as
was the legislation pending before the
Illinois legislator. Unfortunately, both
the suit and the legislation died before
providing a solution or any guidance.
The real issue here is an intellectual
property issue, which is largely
the domain of federal laws, shaped by
public policy. A state statute addressing
secondary use, such as the proposed
Illinois statute, might not end the controversy
because such a state statute
has the potential of being preempted
by federal law. See, e.g., 17 U.S.C. §
301 of the Copyright Act. A real solu-
Vol. 48, No. 1, July 008
Intellectual Property
tion will have to carefully balance
several different types of constitutional
rights. In a perfect world, Congress
would step in and legislate a clear and
wise answer, but since that is unlikely
to happen anytime soon, we may have
to wait for the courts to provide an
answer, or at the very least, some guidance.
__________
1. Joseph A. Saltiel and Amy L. Signaigo
are attorneys in the intellectual property
department at Jenner & Block LLP. Amy
Signaigo assisted with the research for this
article. The views and opinion expressed
here are those of the author and not Jenner
& Block LLP.
2. Defendant/Counterclaim-Plaintiff and
Third-Party Plaintiff IHSA’s Verified Mot. for
Preliminary Injunction at 2.
3. Most high schools are members of
the IHSA. The IHSA regulates competitions
between its member schools, including
season ending tournaments and playoffs.
The season ending tournaments and playoffs
are widely publicized and, hence, more
commercial then most “regular” season
competitions.
4. Id. at 3.
5. Id. at 2-3.
6. Id. at 3.
7. Amended Complaint, ¶ 9.
8. Id., ¶ 10.
9. 11/23/07 IHSA Announcement.
10. Defendant/Counterclaim-Plaintiff
and Third-Party Plaintiff IHSA’s Verified Mot.
for Preliminary Injunction at 5.
11. 2/12/08 IHSA Announcement.
12. Sutton, Allen, “IHSA, press association
reach deal,” Chicago Tribune, April 9,
2008, Sec. 4, pg. 9.
13. The IHSA is not a government entity.
Interestingly, however, the IHSA did not
rebut the IPA’s allegation that the IHSA is an
arm of the state for Fourteenth Amendment
purposes.
Reprinted with permission of the Illinois State Bar Association
Intellectual
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