Part 1 of 3: These Colors Run (Maybe Too Fast) to the Courthouse

You may have heard the one about the quasi-charitable fun run and how it stole photographs from a freelance photograph and then sued him.

Or maybe you’ve heard the one about the photographer who let a quasi-charitable fun run use his photographs to help promote his business but got unreasonably aggressive when things didn’t work out as planned.

What we have here is a kind of reverse Mexican standoff. You know, where two guys are pointing their guns at each other, neither daring to lower their aim but afraid to squeeze the trigger? Except, in this case, the guns are really old and are more likely to explode or backfire as to shoot straight. In this case, the only rational thing to do is lower your aim—which, interestingly, is what recently happened in the dispute between The Color Run and freelance photographer Maxwell Jackson.*

* According to Jackson’s Facebook page.

Everybody Loves a Good Photograph

The Color Run is kind of cross between a long-distance run, the Hindu festival of Holi, and a rock concert. It’s a 5K run during which the runners are doused with bright colors, among other things. According to its website, it “was founded in January of 2012 as an event to promote healthiness and happiness by bringing the community together to participate in the ‘Happiest 5k on the Planet’.” The run travels around the country, kind of like a rock tour.* It also donates some (but not all) proceeds to charity.

* Sound like fun? They’ll be in Nashville March 29, 2014, at LP Field. And, no, it doesn’t sound like my thing. Everyone knows that fun interferes with the burning of calories.

Photographing The Color Run used to be a lot harder.

Photographing The Color Run used to be a lot harder.

In 2012, while the event was making a stop in Miami, Jackson—then a local university student—went to the event with the purpose (as I understand it) of taking photographs of the event (rather than participating). In doing so, he inevitably took pictures of (1) several unknown participants in the race, and (2) The Color Run’s trademarks. In particular, he took the photograph at the top of this article, showing a young woman finishing the race, with a beaming smile and a diagonal blue smear on her face, wearing a “The Color Run” T-shirt (with another “The Color Run” T-shirt in the background).

He posted the photographs online, where they attracted the (positive) attention of The Color Run’s “photo director,” Scott Winn. He asked: “Would you be interested in letting us use some of your photos in an album on our Facebook page?” He added, “Our other photographers have gotten some good exposure from this.” (Mr. Mr. Winn’s request, see this article.) Jackson responded something to the effect of, “Sure!”

A year later, Jackson was (for some reason) in Pennsylvania, where he was handed a flyer for (what I assume was) an upcoming nearby Color Run event. The flyer featured that one photograph of the young woman, the “The Color Run” T-Shirt, the beaming smile and the blue smear. It is, I think all would agree, a pretty good photograph. You can see why The Color Run would use it to promote its races. Indeed, Jackson soon learned that The Color Run is using this photograph quite a lot, actually.

At the time, Jackson didn’t think in terms of how he was being ripped off, but in terms of why his name wasn’t prominently displayed with the photograph. He was in the process of starting up his own freelance business and had been counting on the “exposure” that Mr. Winn seemed to promise. Understandably, Jackson felt taken advantage of.

The Average of Two Good Pieces of Advice Is Sometimes a Bad Piece of Advice

So, Jackson wrote a The Color Run a letter. Oh, boy, did he write a letter. In the letter, he expressed his understandable annoyance that his picture was being exploited a lot more than he was led to believe. He also revealed that he got one piece of advice from his father and from his step-father. His father suggested that Jackson solve this “man to man.” His step-father suggested that he just sue for copyright infringement.

Those are actually both good pieces of advice, but Jackson took neither. Instead, he kind of combined them, so that he wrote a letter he thought a lawyer would write. He demanded $100,000 in compensation, to be a made a sponsor (for free) of The Color Run*, and to have the photographs prominently attribute him. He threatened to “be forced to take further action”—i.e., sue, I guess**—if The Color Run didn’t get back to him.

* And even told The Color Run where they should place his advertisement: “next to Chevy at the bottom of your web pages.”

** At least he didn’t add, “Govern yourself accordingly.”

This is, perhaps, not the way to win friends and influence people. Or negotiate effectively. The Color Run is a pretty big deal, but it probably doesn’t have $100,000 just lying around. Even if it did, how does Jackson justify $100,000? Why $100,000 and not, say, $10,000?

The Color Runs to the Courthouse

There may, or may not have, been further discussions, but if there were, they went nowhere. The Color Run’s next move was to file its own lawsuit against Jackson. You can read the well-written complaint here. In the lawsuit, The Color Run brought two claims. This is crucial to understanding why this story spun out of control.

  1. A declaration that The Color Run had a right to use the photographs based on the permission Jackson gave Scott Winn.
  2. A claim for trademark infringement because (a) the girl in the photograph is wearing a T-Shirt that says “THE COLOR RUN” and (b) Jackson listed The Color Run among his work experience on his Facebook page.

It’s safe to say that if the lawsuit had consisted only of the first claim, the general public would have understood. In the face of an unreasonable demand for $100,000, what choice did The Color Run have? So long as The Color Run had a—ahem—colorable claim (more on that in next time), it was probably worth it to take the fight to Jackson.

Dick Move as Legal Strategy?

But the second claim struck everyone as a bit of a dick move. Both legally and intuitively, it is a weak claim (more on that next time, too), and that leads both lawyers and non-lawyers to the conclusion that The Color Run is trying to bully “the little guy” into giving up the fruits of his artistic labor. Thus, when the story hit last week, Jackson was (legitimately) able to paint himself as the victim in the press. There are always two sides to every story, true, but The Color Run wound up helping Jackson write his side.*

* Oh, do you think The Color Run had no choice but to “police its marks”? First of all, while the duty is a real thing, it is very much exaggerated by (1) lawyers, and (2) self-justifying trademark bullies. The truth is that infringing use of a mark tends to weaken the mark, in theory to the point where it ceases to function as a mark. Thus, at most, it’s not so much a duty to police the marks but a duty to stop infringement of the marks, so it doesn’t arise when there’s no infringement or the infringement is negligible.

The Moral in the Middle

By now, you can see how this all went terribly wrong. Neither Mr. Winn nor Mr. Jackson gave the least thought to what exactly it was that Mr. Jackson was giving permission for. Or, in legal terms, they didn’t think through the scope of the license Jackson was giving The Color Run for use of his photographs. If Winn thought he was giving The Color Run the right to use the photographs for any promotional purpose, he kind of blew it. And if Jackson thought he was obligating The Color Run to give attribute its use of his photographs to him, well, he kind of blew it, too.

Still, the situation was salvageable at this point, if only the parties could sit down and talk to each other like civilized beings. But, no. Jackson fumbled a half-way decent copyright claim, and The Color Run got offended enough to overreach and make itself the bad guy.

That’s all for now. In the next couple of posts, I’ll explain why Jackson’s and The Color Run’s “guns” were so unreliable: i.e., why Jackson was in an OK legal position, but could have been a great position; and why The Color Run’s dick move was totally unnecessary.

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.