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The issue as to whether photographs of copyrighted works is a derivative work/infringement has raised its head again, and Mike Hipple probably thinks that it’s ugly. Specifically, as explained by my November 17, 2009, blog, courts have disagreed as to whether photographs of copyrighted works are derivative works.   And for Hipple, the question is complicated by a possible fair use issue.

Hipple explains what has happened on his blog and has asked for financial support. The copyrighted work at issue is called “Dance Steps on Broadway.”  The sculptor, Jack Mackie, has alleged in his Complaint that  ”Hipple unilaterally used the image of [a part of the sculpture] in a piece of graphic art . . . [and] obliterated Mackie’s copyright notice, but used other parts of the rest of the [sculpture].  Hipple had offered the image for licensing through stock agencies that now have settled Mackie’s claims against them.

Hipple’s image at issue can be seen in Exhibit A to his Motion to Dismiss.  There, Hipple claims that Mackie has failed to plead the elements of copyright infringement in that the image is not substantially similar to the sculpture. Hipple also asserts that sculpture is not copyrightable and that it is a derivative work not entitled to copyright protection. It’s difficult, however, to win these types of motions at this stage of the litigation.

The U.S. Court of Federal Claims considered similar facts and legal issues in the  Gaylord v. The United States case.  The facts are convoluted, but, in sum, the artist of “The Column,” (a sculpture depicting 19 Korean War soldiers that is part of the Korean War Veterans Memorial KWVM in Washington, D.C.) sued the USPS for its stamp that contained a photo of the work.  The court found the stamp to be a fair use because it was a transformative work, having a new and different character and expression from that of the sculpture. The court explained:

Mr. Alli [the photographer], through his photographic talents, transformed this expression and message, creating a surrealistic environment with snow and subdued lighting where the viewer is left unsure whether he is viewing a photograph of statues or actual human beings. Alli, Tr. at 377-78. The viewer experiences a feeling of stepping into the photograph, being in Korea with the soldiers, under the freezing conditions that many veterans experienced. Id. Mr. Alli took hundreds of pictures of “The Column” before he achieved this expression, experimenting with angles, exposures, focal lengths, lighting conditions, as well as the time of year and day. Id. at 373, 377. Mr. Alli also achieved his vision using various photographic effects and equipment. Id. at 375 (using a portrait lens and a tripod), 378 (using slide film), and 379 (choosing glossy prints). Mr. Alli’s efforts resulted in a work that has a new and different character than “The Column” and is thus a transformative work. Campbell, 510 U.S. at 579; Blanch, 467 F.3d at 251-52. The Postal Service further altered the expression of Mr. Gaylord’s statues by making the color in the “Real Life” photo even grayer, creating a nearly monochromatic image. McCaffrey, Tr. at 583. This adjustment enhanced the surrealistic expression ultimately seen in the Stamp by making it colder. Id.; see also PX 26. Thus, the Postal Service further transformed the character and expression of “The Column” when creating the Stamp.

The court also noted that “the statues were not copied verbatim in the Stamp. Rather, Mr. Alli and the Postal Service used variables to lessen the quality and importance of ‘The Column’ and to alter the expression of the Stamp.”  Further, the stamp has not affected Gaylord’s attempts to market derivative works. Thus, Gaylord could not recover on his infringement claim.

Similar fair use arguments could be presented in the Hipple case.  But the ultimate answer will only come when the Washington court addresses these complicated issues.

Thanks to Jim Poor for submitting this topic.

The Digital Millennium Copyright Act provides immunity to Internet service providers (”ISP”) that store infringing information on their servers.  This protection, however, is strictly based on the service provider meeting specific requirements established by the statute:

A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider -

(A)       (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

17 U.S.C. § 512(c).  Of particular note in § 512 is the “and” at the end of section B, which establishes a requirement for all three of the elements before the ISP will be able to claim protection from liability (also known as the “safe harbor”).  The federal courts have agreed with this all-or-none approach.  For example, the D.C. Circuit court explained that:

Information residing on systems or networks at the direction of users creates a safe harbor from liability for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider as long as the ISP meets certain conditions regarding its lack of knowledge concerning, financial benefit from, and expeditious efforts to remove or deny access to, material that is infringing or that is claimed to be the subject of infringing activity. See 17 U.S.C. §§ 512(c)(1)(A)-(C).

Recording Industry of America v. Verizon Internet, 351 F.3d 1229, 1234 (D.C. Cir., 2003) (citations omitted).

The Middle District of North Carolina also provided a thorough examination of the nature of the safe harbor for service providers and the balance of interests between the copyright holders and the ISPs whose services may be used to infringe copyrights.  At the end of the analysis, the court noted that :

The DMCA safe harbors do not render a service provider immune from copyright infringement. They do, however, protect eligible service providers from all monetary and most equitable relief that may arise from copyright liability.  Thus, even if a plaintiff can show that a safe harbor-eligible service provider has violated her copyright, the plaintiff will only be entitled to the limited injunctive relief set forth in 17 U.S.C. §§ 512(j) . . . Upon compliance with various requirements set out in their respective portions of the statute, all four types of [statutorily defined service providers] may gain immunity from liability for copyright infringing information that passes through or is stored on their networks or systems by users.

In re Subpoena to Univ. of NC at Chapel Hill, 367 F.Supp.2d 945, 948-49 (M.D.N.C., 2005) (citations omitted).  These cases show that the ISP are immune to copyright infringement liability only when all three conditions listed in the statute have been met.  Thus, a failure to comply with any of the statutory requirements renders the safe harbor unusable and the ISP may be liable for infringing your copyright.

The Chapel Hill court also examined the background and requirements for a service provider to be designated “innocent.”

[t]he compromise, as enacted in the DMCA, both preserves copyright enforcement on the internet and provides immunity to service providers from copyright infringement liability for “passive,” “automatic” actions in which a service provider’s system engages through a technological process initiated by another without the knowledge of the service provider.  This immunity, however, is not presumptive, but granted only to “innocent” service providers who can prove they do not have actual or constructive knowledge of the infringement, as defined under any of the three prongs of 17 U.S.C. §§ 512(c)(1). The DMCA’s protection of an innocent service provider disappears at the moment the service provider loses its innocence, i.e., at the moment it becomes aware that a third party is using its system to infringe. At that point, the Act shifts responsibility to the service provider to disable the infringing matter, reserving the strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital networked environment.

This balancing effort resulted in a statute that creates strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital network environment.  For instance, a copyright owner who suspects that her copyright is being infringed must follow the notice and take down provisions set forth in §§ 512(c)(3) of the DMCA.  Once properly notified, a service provider must respond expeditiously to remove, or disable access to, the material that is claimed to be infringing.  If a service provider fails to take down the potentially infringing material, it exposes itself to copyright liability.

Id. at 947-49. (citations omitted).

Accordingly, when you find an Internet service provider has posted one of your images without permission, don’t accept the provider’s claim of protection under the DMCA until you make sure that the ISP has met all of the statutory requirements.

As explained in my May 27, 2005 blog entry, you have the limited time of three years to make your claim when someone infringes your copyright.  But sometimes you don’t find out about the infringement until after it has occurred.  So when does the three years start?

Some courts follow the “injury rule” for starting the clock for statute of limitations.  This means that the three years begins at the time from the last act of infringement, regardless of whether you know about it.  Therefore, if you don’t learn about the infringement until three years and a day after it occurred, then you can’t make a claim against the infringer.

Most courts, however, follow the “discovery rule” for the statute of limitations for copyright infringement.  In other words, the time starts when you discover (or should have discovered if you had been diligent), the infringement.  Because some infringers will assert that you should have discovered the infringement earlier, they will  argue that your claim is barred by the statute of limitations.  This adds an extra hurdle when making a copyright infringement claim.

Currently, the First, Second, Third, Fourth, Fifth,  Sixth, Seventh, Eighth and Ninth Circuits have held that the discovery rule applies to claims under the U.S. Copyright Act.  That leaves only the Tenth and Eleventh Circuit courts with the injury rule.

But you should never sit on your claim even if you have some time left on the statute of limitations.  Instead, be diligent about pursuing your infringement claim when you find it.  Check my article about your options from there.

Canon USA Hawaii and its co-sponsors: LavaNet, KRATER 96, and Nikkan San are sponsoring its “Annual Canon Amateur Photo Contest.”  Three winners will receive either a Canon EOS Rebel XS Kit, a Canon Powershot G11 Camera, or Canon Powershot SD1200IS Camera.  Unfortunately, the rules provide that:

“[you] agree that the copyright to [your] photograph will be assigned to Canon U.S.A., Inc. in the event it is selected as a winner in this contest.”

Competico.com is a website designed to let you “enjoy the excitement of multitude themed photo contests from the comfort of your own home.”  But the terms of using the website mean that you agree:

[to] grant Competico a perpetual, irrevocable, royalty free, worldwide license to use, publicly display, distribute, sublicense, modify and otherwise fully exploit any Multimedia file that you submit to Competico. Competico may do any or all of the foregoing for . . . services, products or advertising. . . . You understand that by using these services your Content will be publicly available to others and that Competico.com has no obligation to prevent the unauthorized copying, dissemination, alternation or other use of your Content by others.

Similar things happen when you submit content to NowPublic.com.  Specifically, the Terms of Use provide:

By submitting Your Content to NowPublic, You automatically grant . . . NowPublic and its licensees an irrevocable, perpetual, non-exclusive, royalty-free, transferable, sublicensable and worldwide licence to reproduce, copy, publicly perform, publicly display, publish, reformat, translate, excerpt (in whole or in part), distribute, prepare derivative works (including collections) of, incorporate into other works and otherwise use and exploit Your Content in connection with the Site and NowPublic’s (and its successors’ and affiliates’) business, including, without limitation, for promoting, advertising and redistributing part or all of the Site and derivative works thereof in any media formats and through any media channels, and to grant and authorize sublicenses of the foregoing.

The Government of Canada and its Canadian Tourism Commission (CTC), a Crown Corporation, which operates the Locals Know website.  When you submit a photo to the website, you agree to the following:

By submitting any contribution to the Sites, including without limitation text, photos, graphics or video (“Content”), you agree to grant the Canadian Tourism Commission a worldwide, irrevocable, sub-licensable, non-exclusive license, to exploit your Content as the Canadian Tourism Commission sees fit, including without limitation, modifying it or adapting it. Without limiting the foregoing, you grant the Canadian Tourism Commission the right to publish, broadcast, display or distribute your Content by any means and in any media. You expressly waive, to the fullest extent permitted by law, any moral rights you have in respect of the Content and agree that no rights of attribution shall be enforced by you. You grant these rights free of charge.

Looks as though we’re off to another bad year of rights grabs!

Thanks to Joseph Holmes, Frank Fennema, John Goldsmith, and Damien Franco for submitting these topics.

The Photographer’s Legal Guide, in an updated version as of this month, is now available for Kindle.  In addition to the previous reviews, check what others have recently said about this book:

This book should be required reading before picking up a camera. . . . Her book is short, concise and easily read. (I like easy.) 118 pages of information in language that even I can understand. This book is small enough to fit in your main camera bag and you should keep it that close. . . .   W. T. Sandlin

The place I turn to when I have questions is the Photographer’s Legal Guide by Carolyn Wright.  The book covers most of the legal issues one might encounter when dealing with photo business and photography issues such as copyrights, model releases, insurance and paperwork.  I think most photographers will find it very valuable . . . . Ron Niebrugge

The Guide also is available as an E-book and paperback.  It has been slightly updated with new links and information current for 2010.  It’s a good way to start the year!

For the new year, I’ll be using Twitter for quick updates and notes on the law for photographers. Follow me there!

Start the year off right!  Attend these great conferences to learn the most you can about your photography!

PMA 2010 – February 19-23, 2010, Anaheim, CA

ProPhotogs – March 10-14, 2010, Phoenix, AZ

Be sure to check out my sessions.  Hope to see you there!

Q. I work for a Conservation Commission. Occasionally, we receive and would like to use photos with our feature stories or news releases. Is obtaining a photographer’s permission to use a photo via e-mail correspondence sufficient or do we need a more defined written permission? If the photographer is a minor, do we also need a responsible adult’s consent?

A. A copyright owner may grant a non-exclusive license orally, but getting the license in writing, including email correspondence, is better. Putting agreements in writing prevents misunderstandings by spelling out the terms of a deal, forces parties to clarify their thinking, consider problems that could potentially arise, and encourages them to take their promises seriously because it’s harder to backtrack on a written contract than on an oral one. Try to include the who, what, why, when, and where info about the use, such as: ”Jane Doe, photographer and copyright owner, grants to the Conservation Commission the one-time usage rights of the photo of the grizzly bear sleeping on the beach for the cover of the January 2010 issue of “Wildlife” magazine for $2,000 with the photo credit of ‘Copyright 2010 Jane Doe’ included in the magazine’s masthead.” If the photographer is a minor, then be sure to get the photographer’s parent or guardian to authorize the license since minors may later void the license or contract.

As the uses of your photography get more complicated and/or you desire more protection for your work, you may need more extensive licensing with specific terms and conditions. For further information on licensing, check my June 2, 2005, blog entry, ASMP’s Licensing Guide & Paperwork Share and Terms and Conditions Tutorial, Richard Weisgrau and Victor Perlman, Esq.’s book, “Licensing Photography,” Tad Crawford’s book, Business and Legal Forms for Photographers,” or John Harrington’s book, “Best Business Practices for Photographers.”

Licenses to use copyrighted works are just a modern twist on the the old game of “Mother, May I?”  So be sure to ask “Photographer, may I” or to provide a written “Yes, you may” when getting or giving permission to use a copyrighted work.

In response to recent events between the U.K. police and photographers, Andy Trotter of the Association of Chief Police Officers sent an advisory to police forces in England and Wales via email:

Officers and PCSOs are reminded that we should not be stopping and searching people for taking photos.

There are very clear rules around how stop-and-search powers can be used. However, there are no powers prohibiting the taking of photographs, film or digital images in a public place. Therefore members of the public and press should not be prevented from doing so.

We need to co-operate with the media and amateur photographers. They play a vital role as their images help us identify criminals.

We must acknowledge that citizen journalism is a feature of modern life and police officers are now photographed and filmed more than ever.

However, unnecessarily restricting photography, whether from the casual tourist or professional is unacceptable and worse still, it undermines public confidence in the police service.

Read more about the  warning on The Independent, the background on the harassment on a BBC blog, and a statement by the Metropolitan Police (AKA “Scotland Yard”) regarding legal public photography, which includes the following:

Officers have the power to stop and search a person who they reasonably suspect to be a terrorist. The purpose of the stop and search is to discover whether that person has in their possession anything which may constitute evidence that they are a terrorist.

Officers have the power to view digital images contained in mobile telephones or cameras carried by a person searched under S43 of the Terrorism Act 2000 to discover whether the images constitute evidence that the person is involved in terrorism. Officers also have the power to seize and retain any article found during the search which the officer reasonably suspects may constitute evidence that the person is a terrorist. This includes any mobile telephone or camera containing such evidence.

Officers do not have the power to delete digital images or destroy film at any point during a search.

Photographers working in the UK should review and carry a copy of this statement with them.

Congrats to the U.K. police on making steps to improve how they deal with photographers.  Unfortunately, incidents still occur.  Check this recent story on boingboing.net.  The key may have been for the photographer to explain what he was doing earlier in the process.

Thanks to Michael Beasley for this blog entry.