Photo Attorney

May 29, 2009

Help! I've Been Infringed!

You're sitting in your easy chair and surfing the web. You're not paying much attention, until you see it. It's your photo, but you did not post it there. You can't believe they used your photo without your permission. Now what do you do? The steps you take may limit your ultimate remedies so be sure to first understand what your options are.

Make Copies of the Infringement
If you think that the use is likely an infringement, make copies of it - both in electronic and print forms. Once the infringer realizes that she is caught, she will do what she can to get rid of the evidence of the infringement. You may need that evidence later.

If the infringement is in print, then take a photograph of it, scan it, photocopy it, and/or show it to another person who would be willing to testify about it. If the infringement is on the Internet and/or in electronic form, make a paper print of it and/or copy a screen capture of it; both are better! (Snagit by TechSmith is a great program to copy web pages.) Determine whether your copyright management information (CMI) is included in or has been removed from the infringing use. Read more about why and how to include your CMI in your photos in one of my blog entries here and here.

Make Sure That the Use Is an Infringement
Not all uses of your photographs are infringements. Do you use a licensing agency that may have authorized the use? Could the user be related to an entity to which you authorized the use? Is the use a fair use? While only a court can ultimately decide what fair use is, the law gives us guidelines as to what may qualify. Read more about fair use in my blog entry here.

Research the Infringer
Next, find out what you can about the infringer. Research the infringer's website to find his name and contact information. If the infringer is a corporation based in the United States, you can find information about it on the website of the Secretary of State for the state where the infringer is based. To find the Secretary of State's website using an Internet search engine such as Google, search the corporation's state's name (such as "Georgia") and the words "secretary of state." The extension of the URL will be ".gov" or ".us." Be careful - some sites attempt to appear to be the state's website so that they can charge you for the information. Once on the proper Secretary of State's website, look for "corporations search," "business search" or similar language. You then will find the company's registered or resident agent, officers, and/or official address.

You also may be able to find a contact name by searching the website's "who is" information. You first do a "whois" search on the website name. Several websites provide free "whois" services, such as http://www.whois.net/. Conduct an Internet search to find them. After you enter the website name there, you may be able to find contact information for the administrator of the website.

Option #1 - Do Nothing
Now that you've documented the infringement and have some information about the infringer, you always have the option of doing nothing. If the infringer is in a foreign country where infringements are rampant and difficult to enforce or is a small website with little traffic, you may decide that it's not worth your time and effort to fight the infringement.

Option # 2 - Request a Photo Credit
If the website would provide a marketing outlet for you, you may only want the infringer to give you proper credit. If so, write the infringer a letter officially giving her the right to use the image. Be sure to designate the parameters of that use, such as who, what, why, when and where - see my blog entry here for more information. Include the condition that the infringer post a photo credit with a copyright notice on or adjacent to the use. You may also require the infringer to add a link to your website. You may get subsequent work from the infringer or others.

Option #3 - Prepare a DMCA Take-Down Notice
Purusant to the U.S. Digital Millennium Copyright Act ("DMCA") enacted in 1998, the Internet Service Provider ("ISP") that hosts a website is not liable for transmitting information that infringes a copyright only if the ISP removes the infringing materials from a user's website after receiving proper notice of the violation. The notice must: be in writing, be signed by the copyright owner or the owner's agent, identify the copyrighted work claimed to be infringed (or list of infringements from the same site) and identify the material that is infringing the work. Additionally, the notice must include the complaining party's contact information, a statement that the complaint is made in "good faith," and a statement, under penalty of perjury, that the information contained in the notification is accurate and that the complainer has the right to proceed (because he is the copyright owner or agent). Check my article at here to learn more about how to prepare a DMCA take-down notice. Even if you don't reside in the U.S., you may use this great tool to stop an infringer whose ISP is in the U.S. from using your work.

Option #4 - Prepare a Cease and Desist/Demand Letter Yourself
When you don't want to alienate the infringer (the infringer is a potential client and/or appears to be an innocent infringer), you may want to contact the infringer to explain that the use is not authorized and either request payment of an appropriate license fee, a photo credit with a link to your website (as discussed above), or that the infringer cease use of the image. It's best to do this in writing - a letter by surface mail seems to have more clout than email correspondence.

Photographers sometimes send an infringer an invoice for three times their normal license fee in an attempt to resolve the infringement issue. While the 3x fee may be an industry standard and some courts have used it, is not a legal right given by any court of law or statute. Instead, U.S. law states that you are entitled to actual or statutory damages for infringement as provided by 17 U.S.C. Chapter 5, specifically section 504. The damages that you can receive from infringement - especially if you timely register your photographs - sometimes can amount to a lot more than three times your normal license fee. So you may want to think 2x before you send the 3x letter.

There are some risks in sending the letter yourself. First, the infringer may attempt to preempt an infringement lawsuit and file a request for declaratory judgment that the use is authorized. This may involve you in a legal action for which you may need legal counsel in a jurisdiction (court location) where you don't want to litigate. Second, your demand for payment may be admissible against you if an infringement case is filed. If you demand too little, then it may limit your ultimate recovery. To avoid this possibility, include in your demand letter that "these discussions and offer to settle are an attempt to compromise this dispute."

Option #5 - Hire a Lawyer to Send a Demand Letter
When an attorney gets involved, the matter is escalated and tensions rise. While the infringer may be more defensive, the weight of your demand letter is dramatically increased if it comes from an attorney and the infringer generally takes the matter more seriously. Some attorneys charge a flat fee to send a letter; others may charge a "contingency fee" which is based on the percentage of recovery. Or the fee may be a combination of both.

Option #6 - File a Copyright Infringement Lawsuit
Your most aggressive option is to pursue your legal remedies by filing suit. Unless you created the work outside of the United States and in a country that is a signatory to the Berne Convention for the Protection of Literary and Artistic Works, you must register your copyright with the U.S. Copyright Office, hopefully before but at least after the infringement. (If you created the photo in a country that is a signatory to the Berne Convention, you do not have to register in the U.S. to protect your copyright or to file an infringement lawsuit in the U.S. However, if you do, then you may be entitled to statutory damages and attorneys' fees, as noted here.) If your photo was not timely registered for this infringement, you may want to register the photo for future possible infringements, as well, to be eligible for statutory damages of up to $150,000 per willful infringing use for each photograph. See 17 USC Section 504(b) and (c). Legal fees and costs also may be recovered from the infringer. See 17 USC Section 505.

In most jurisdictions you need to have received your registration certificate to file a complaint. Unless you have a breach of contract or some other state claim, you must file your infringement claim in a federal district court. To file suit, it is best to hire an attorney to help you because the legal procedures are complicated. Note that you have three years from the date of infringement to sue for copyright infringement.

When a photo is not registered with the U.S. Copyright Office prior to the infringement (or within three months of the first publication of the photo), a copyright owner may recover only "actual damages" for the infringement (pursuant to 17 U.S.C. 504 (b)), instead of statutory damages. Courts usually calculate actual damages based on your normal license fees and/or industry standard licensing fees. One source for standard license fees is a software program called Fotoquote. You also may recover the profits the infringer made from the infringement if they aren't too speculative.

Additional Claims
While many photographers place "watermarks" including their name and/or their copyright notice on their images or in the metadata of the file to prevent someone from infringing them, it's fairly easy to crop or clone over the mark, or to remove metadata. Fortunately, the DMCA section of the Copyright Act provides a remedy in addition to the infringement claim when the infringer removes your CMI to hide the infringement. More information is available in my blog entry here.

Additionally, when you can prove that the infringement was done willfully, then you are entitled to enhanced statutory damages. "Willfulness" means that the infringer either had actual knowledge that it was infringing the owner's copyrights or acted in reckless disregard of those rights. Evidence that the infringed works bore prominent copyright notices supports a finding of willfulness.

What You Can Do to Best Protect Your Images
To be eligible for maximum damages for copyright infringement and violation of your DMCA rights, put your copyright notice on each page of your website and put your CMI on or at least adjacent to each photo as well as in the metadata of your files. Instructions for adding your CMI to your metadata are available in my blog entry here.

Further, register your photos with the U.S. Copyright Office ASAP! The Copyright Office recently made online registrations possible, too. Check my article to learn the details and for instructions on how to register your work.

Conclusion
Infringements are rampant these days, both because it's easier for the infringers to find and copy your images and because too many people think that they have a right to use your photos when they don't or think that they won't be caught. Fortunately, there are many tools to battle copyright infringement. It's up to you to use them.