Photographer and School Clash Over Intertwined Copyright and Trademark Issues
This legal case (Oppenheimer v. The Trustees of The Stevens Institute of Technology et al.) involves a professional photographer from New Jersey, referred to herein as David Oppenheimer or simply “Oppenheimer,” and the Stevens Institute of Technology (the “Institute”)—a nonprofit institution also situated in New Jersey. Oppenheimer boasts an impressive portfolio, having conducted business with notable clients such as National Geographic, Rolling Stone, NBC, MTV, MSNBC, Goldman Sachs, and HBO Sports.
In 2016, Oppenheimer captured an aerial photograph at the Stevens Institute of Technology in New Jersey, officially registering this image with the U.S. Copyright Office, along with several others, on March 29, 2017. Fast forward to 2022, when Oppenheimer discovered that the Institute's athletic team, along with its director, had employed his photograph without obtaining his consent. In response, Oppenheimer sought legal counsel in New York and engaged the services of attorney Michael Steger, henceforth referred to as “Oppenheimer’s attorney.” In March 2022, Oppenheimer’s attorney sent a letter to the Institute, demanding that they cease the use of his client’s photographs on their website. The letter also included a request for the Institute to preserve any relevant evidence.
A preliminary investigation conducted by Oppenheimer’s attorney revealed that the Institute had allegedly used Oppenheimer’s photographs unlawfully on at least 37 occasions, disseminating them across various digital platforms, including their website, Facebook, Instagram, Twitter, LinkedIn, and more.
In April 2022, the Institute's legal counsel responded to their counterpart by leveling accusations of trademark infringement and trespassing against David Oppenheimer. In their correspondence to Oppenheimer's attorney, the Institute alleged that Oppenheimer had exploited the very photograph in question for personal gain at the expense of the Institute's trademarks. Furthermore, they emphasized that such actions constitute trademark infringement and dilution, potentially confusing consumers and leading them to infer an unwarranted endorsement, affiliation, or agreement between the Institute and Oppenheimer.
The Institute also issued a stern warning to Oppenheimer regarding the unauthorized use of drones for taking photographs on their campus, deeming it unlawful. They cautioned that a repeat offense could result in legal action for trespassing.
Unable to reach a compromise on the matter, Oppenheimer resolved to file a Complaint against the Institute on January 1st, 2023, in Federal Court for Copyright Infringement, under Title 17 of the U.S. Code.
On March 31, 2023, in response to Oppenheimer’s Complaint, the Institute refuted all the plaintiff’s allegations and countered with accusations of trademark violation and unfair competition, citing infringement of the Lanham Act and state laws. The Institute asserted that Oppenheimer had actively 'marketed, promoted, sold, and continued to market, promote, and sell at least twenty-five items prominently featuring the University Marks via his pages on fineartamerica.com and Pixels (Answer, pg. 8). Furthermore, the Institute alleged that such practices constituted unfair competition, as they appeared to exploit the University’s name and goodwill associated with the University Marks (Answer, pg. 10).
In response to the Institute’s counterclaims, Oppenheimer filed a Motion to Dismiss the Institute's allegations. According to Oppenheimer, the allegations of trademark infringement were vague, and the Institute had failed to explain how he had violated trademark law. Furthermore, Oppenheimer argued that the Institute had not sufficiently clarified which trademarks he had allegedly infringed upon. He relied on the principle of distinctiveness as a requirement for a claim to stand (Motion to Dismiss, pg. 9).
The Federal Judge for the District of New Jersey denied Oppenheimer’s motion to dismiss the Institute's allegations. Judge Farbiarz ruled that the Institute's longstanding use of its trademarks for over 150 years justified its ability to assert trademark claims in court. This decision gave the green light for the Institute to proceed with legal action against Oppenheimer for trademark infringements. However, despite upholding the claim against Oppenheimer, the Judge also requested that the Institute specifically outline the trademarks that Oppenheimer had allegedly infringed upon. Opinion
Following the Judge's order, the Institute clarified in their brief that there were four referenced infringed trademarks: “Stevens Institute of Technology”, a stylized “S” “Stevens Ducks” and “Attila the Duck”. They also informed the court that they did not rule out the possibility that Oppenheimer may have infringed upon other trademarks owned by the Institute. They indicated that they might include these additional trademarks if they discover evidence of infringement during the discovery process.
Currently, the case is awaiting the upcoming hearings scheduled for September 14. Updates will be provided as developments in the case unfold.