Do you need permission to sell licenses for photos of people?

In general, you may photograph people in public. The use of those photographs can be restricted due to state privacy laws, often called the “right of publicity” or “misappropriation.” While the specifics of these laws vary by state, they prevent the unauthorized use of a person’s likeness for commercial purposes (such as on merchandise or for advertising or trade). The laws do not apply if the image is used editorially, which includes newsworthy items and fine art. See my September 14, 2005, blog entry for a summary of the different privacy rights.

In the recent case of Maloney v. T3 Media, Inc., former student-athletes Patrick Maloney and Tim Judge alleged that T3Media had unlawfully exploited their likenesses commercially by selling licenses for photographs for “non-commercial art” purposes.

On appeal, the U.S. Court of Appeals for the Ninth Circuit noted that the Copyright Act affords copyright owners the “exclusive rights” to display, perform, reproduce, or distribute copies of a copyrighted work, to authorize others to do those things, and to prepare derivative works based upon the copyrighted work. 17 U.S.C. § 106. In other words, the copyright in a photo gives the owner “the right to control the work,” including the power to to make the work available to the public.

Section 301 of the Copyright Act works “to preempt and abolish any rights under the common law or statutes of a State that are equivalent to copyright and that extend to works,” so long as the rights fall “within the scope of the Federal copyright law.” H.R. Rep. No. 94-1476, at 130 (1976). That is, copyright law (which is federal law) will preempt or override a conflicting state law.

After an extensive two-part analysis, the Court held that the Copyright Act preempted the plaintiff’s state-based right-of-privacy claims “when a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use.” That means that T3 did not violate the athletes’ rights of privacy when selling licenses for photos of the players for editorial use, even if T3 made money from the licenses. The criterion is the end-user’s use of the licensed photos.

On the other hand, the Court noted that a right of publicity claim is not preempted when someone’s name or likeness is used without consent on merchandise or in advertising. That would be a “commercial” use requiring the person’s permission, such as through a model release. Since Maloney and Judge never alleged that their names or likenesses were in connection with the sale of merchandise or in advertising, it wasn’t an issue.

For a more detail analysis of the case, check Rebecca Tushnet’s blog entry.

What does this mean for photographers? Make sure that you have a model release before using a person’s photograph commercially. In this case, though, consent wasn’t needed because the photos were being licensed only for non-commercial/editorial use.

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Another Reason to Post Watermarks on your Photos

The copyright world is abuzz about the recent U.S. Court of Appeals for the Ninth Circuit opinion in Mavrix Photographs, LLC v. LiveJournal, Inc. The primary interest is that the court held that LiveJournal may not be eligible for the DMCA 17 U.S.C. § 512(c) safe harbor for users’ posting of copyrighted photographs on its “ohnotheydidnt” website when LiveJournal’s moderators first reviewed those submissions.

Even if LiveJournal proves that the photographs were posted at the direction of the user (thus meeting one of the requirements for the § 512(c) safe harbor), LiveJournal must also show that it lacked both actual and red flag knowledge of the infringements. See 17 U.S.C. § 512(c)(1)(A). Actual knowledge is when the service provider had subjective knowledge. For example, actual knowledge can come from a DMCA takedown notice. So it’s usually good to send a takedown notice to the internet service provider when you find an infringement.

Red flag knowledge is whether a reasonable person would objectively know of the infringements. In the Mavrix case, many of the photos at issue had watermarks on them, such as those identifying Mavrix’s website, “Mavrixonline.com.” The court held that LiveJournal may therefore be liable for copyright infringement for having red flag knowledge from the watermarks that its use of the photographs was unauthorized.

This is another one of the many reasons to post watermarks on your photos!

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Jury Awards Photographer $200K for Infringements

New York awarded photographer, Lyle Owerko, $200K in less than an hour of deliberation for infringing two photographs that the defendants copied from the Internet, not realizing that they were protected by copyright. The jury found the infringements to be willful, according to the jury’s verdict form.

More background on the case here:  http://biedermanblog.com/music/boom-artist-boxes-record-label-for-infringment/

Congrats, Lyle!

 

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Photographer’s Patents for Event Photos Declared Invalid

Hockey Play - Copyright Carolyn E. Wright

While another form of intellectual property, patents are different than copyrights. In the United States, a patent is an intellectual property right granted by the government “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time in exchange for public disclosure of the invention when the patent is granted.

There are three types of patents. Utility patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. Patents are important to protect the ideas of inventors, including such patent holders as Nikon and Canon.

Peter Wolf is the president of PhotoCrazy, a business engaged in the business of taking and providing event photographs for inspection, selection, and distribution via a computer network. In 2006 and 2011, Wolf obtained two patents for a “Process for Providing Event Photographs for Inspection, Solution and Distribution via a Computer Network” and one for “Advertising and Distribution Method for Event Photographs.” Wolf made claims against other photographers for infringing these patents, some of whom reportedly entered into licensing with Wolf. Wolf defended his right to do so on FredMiranda.com.

In December 2013, Wolf filed a lawsuit against Capstone Photography for being “engaged in the business of providing event photographs for inspection, selection and distribution via the Internet.” Wolf also contended that Capstone was “offering to provide selected digital photographs with visual advertiser indicia within the photograph field to race participants.” Wolf asserted that these activities constituted willful
infringement of his three patents. A report of the case is available on wfsb.com.

Capstone decided to fight the claims rather than to obtain a license. Mike Skelps of Capstone launched a website, EndPatentAbuse.com, to explain his position and to seek donations.

In the lawsuit, Capstone filed a Motion for Judgment on the Pleadings, which, to the relief of many event photographers, the Court granted in its Order. In sum, the Court found that the patents were based on patent ineligible abstract ideas and lack an inventive concept that would make them patent eligible.

HT: Ken Shelton

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How Long is Too Long? Boffoli Sues Google for Delay in Take Down

Use of one of Boffoli's Photographs on http://ediideas.blogspot.com as shown in his Complaint

Use of one of Boffoli’s Photographs on http://ediideas.blogspot.com as shown in his Complaint

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Christopher Boffoli is a fine art, editorial, and commercial photographer who created “Big Appetites,” a series of photographs featuring tiny figures next to life-sized food. He has a history of protecting his photographs, as reported here and here. As part of his prosecutions, he sued Twitter in September 2012 for not removing his photographs after sending a DMCA takedown notice. While some doubted the strength of his claims, we will never know how the court would have ruled as Boffoli dismissed his case in October 2012 before Twitter filed an answer.

Boffoli now has filed suit (Amended Complaint shown here) against Google for similar claims, alleging that Google failed to take down infringing uses of his photographs on a website (as shown in Exhibit A) hosted on one of Google’s servers more than 100 days after he sent Google a DMCA Notice (as shown in Boffoli’s First Amended Complaint-Exhibit C). Google denies many things in its Answer to the Complaint, but “admits only that it did not disable access to any webpage or content on the website http://ediideas.blogspot.com prior to April 9, 2014 in response to Plaintiff’s notice.”

The issue is whether Google is liable for contributory copyright infringement in this case. “One contributorily infringes when he (1) has knowledge of another’s infringement and (2) either (a) materially contributes to or (b) induces that infringement.” Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 795 (9th Cir. 2007). A “knowing failure to prevent infringing actions” can be the basis for imposing contributory liability. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007). Google is seeking protection under Safe Harbor provisions of the DMCA found at 17 USC 512, among other things. 

Boffoli’s case is important for photographers as they continue to battle widespread infringements, often relying on DMCA takedown notices as the only viable way to stop infringing uses of their photographs.

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Diary of a Copyright Infringement Lawsuit – 5 Updated (The Defendant’s Answer)

Jumping Bear Cub-Copyright Carolyn E. Wright

When someone infringes your copyright, the time that you have to make your claim is limited. This is based on the legal principle called “statute of limitations.”

Statutes of limitation, in general, are laws that prescribe the time limits during which you can file lawsuits. The deadlines vary with the type of claim and — at times — they depend on the state where you live.

The purpose of such statutes is to reduce the unfairness of defending actions after a substantial period of time has elapsed. They allow people to go on with their lives, regardless of guilt, after a certain time.

The “Last Act” of Infringement

Because copyrights are governed by federal law, there is only one statute of limitations for copyright-related claims. Copyright infringement claims have a three-year statute of limitations from the date of the “last act” of the infringement.

What constitutes the last act can vary. If your image is published in a newspaper without your permission, for example, you have at least three years from the date that the newspaper was distributed to file your claim in court.

However, if the infringement continues, such as when the photograph remains on the newspaper’s website, the “last act” has not occurred until your photo is removed from the site.

Can Laches Shorten the Time to Sue for Copyright Infringement?

As a follow to the prior post on the Defendant’s Answer, one of the Affirmative Defenses that a Defendant may plead is laches. Laches are “a doctrine in equity that those who delay too long in asserting an equitable right will not be entitled to bring an action.” Some courts have considered whether laches could shorten the time within which a Plaintiff could sue for copyright infringement. But we now have an answer.

Today, the U.S. Supreme Court held in the case of Petrella vMetroGoldwynMayerInc., that: “Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window.”  The Court explained:

The Copyright Act provides that “[n]o civil action shall be maintained under the [Act] unless it is commenced within three years after the claim accrued.” 17 U. S. C. §507(b). This case presents the question whether the equitable defense of laches (unreasonable, prejudicial delay in commencing suit) may bar relief on a copyright infringement claim brought within §507(b)’s three-year limitations period. Section 507(b), it is undisputed, bars relief of any kind for conduct occurring prior to the three year limitations period. To the extent that an infringement suit seeks relief solely for conduct occurring within the limitations period, however, courts are not at liberty to jettison Congress’ judgment on the timeliness of suit. Laches, we hold, cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window. As to equitable relief, in extraordinary circumstances, laches may bar at the very threshold the particular relief requested by the plaintiff. And a plaintiff ’s delay can always be brought to bear at the remedial stage, indetermining appropriate injunctive relief, and in assessing the “profits of the infringer . . . attributable to the infringement.” §504(b).1

Petitioner Paula Petrella, in her suit for copyright infringement, sought no relief for conduct occurring outside §507(b)’s three-year limitations period. Nevertheless, the courts below held that laches barred her suit in its entirety, without regard to the currency of the conduct of which Petrella complains. That position, we hold, is contrary to §507(b) and this Court’s precedent on the province of laches.

Complete Your Copyright Registration Prior to Filing Suit

The Supreme Court also clarified that “[a]lthough registration is ‘permissive,’ both the certificate and the original work must be on file with the Copyright Office before a copyright owner can sue for infringement.” §§408(b), 411(a). So get your registrations filed before filing suit against your infringers!

HT: Leslie Burns

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Court Awards Maximum Statutory Damages for Copyright Infringement

Black Cats - Copyright Carolyn E. Wright

Courts are not letting infringers run or hide these days. Such was the case in Washington last week.

Getty sued a Florida couple for using 12 of Getty’s photographs of cats and dogs for their home-based website design company. The defendants design websites for veterinarians and veterinary clinics, doing business as “Vet Web Designers.”

Because the defendants failed to defend the case after a point, the court entered a default judgment. As liability was now established, the court moved to the damages stage. The court awarded $21,433.00 in actual damages for defendants’ infringing ten images that were not timely registered. After an evidentiary hearing, the court also awarded Getty $300,000.00 for the defendants’ willful infringement of two images. The court found:

The [defendants] infringed Getty’s copyrights with the knowledge that they were doing so, and saved expenses and generated profit through their infringing use. The [defendants’] actions also cost Getty revenue it otherwise would have received had the two rights-managed images been properly licensed to maintain their exclusivity. Further, an award of maximum statutory damages in this case will serve to protect the copyright system from flagrant violation of the law.

The court looked at four factors to determine the appropriate amount of statutory damages: (1) the infringer’s profits and expenses saved because of the infringement; (2) the plaintiff’s lost revenues; (3) the strong public interest in ensuring the integrity of copyright laws; and (4) whether the infringer acted willfully. While the first two factors did not support an award for maximum damages, the last two did. Specifically, the court explained:

The [defendants] similarly gained commercial advantage by using Getty’s copyrighted works on their websites, engaged in deception by using fictitious names, and failed to participate beyond limited discovery early in the case.

[In addition], the defendants failed to end their infringement despite repeated notifications of their infringing use and opportunities to settle the matter swiftly with Getty. . . . Getty first informed the defendants of their infringing activity in 2007, but they continued to infringe images licensed exclusively to Getty, even after the lawsuit was instituted in 2013. 

The court also issued a permanent injunction to prevent the defendants from infringing Getty’s copyrights.

The Court’s Order is full of reasons why people shouldn’t infringe and should take copyrights seriously. With a few more of these cases, maybe infringers will learn that a license is the easy way.

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Ninth Circuit Court Finds Copyright Registrations Valid

Boats and Fireworks

In a nice turn of events for photographers, the Ninth Circuit Court of Appeals ruled today that Alaska Stock’s copyright registrations are valid, in stark contrast to what happened in Muench Photography, Inc. v. Houghton Mifflin Harcourt Publishing Co., et al. There, the U.S. District Court for the Southern District of NY ruled that the copyright registrations that Corbis made for its photographers’ images were invalid.  In sum, the court held that because Corbis’ registrations did not identify the “authors” of the photographs as required by 17 USC 409 (2), “the registrations at issue . . . cover only the database as a whole (the compilation) but do not cover [Muench Photography’s] individual contributions.”  Order at 22. But the S.D.N.Y. court’s ruling is not binding on other district court’s rulings.

A different case on the other side of the United States. . .

Alaska Stock, a stock photography agency, registered large numbers of photographs at a time, listing only some of
the authors and not listing titles for each photograph, similar to how Corbis registered its photographs. Alaska Stock then licensed some of the photographs it had registered to Houghton Mifflin Harcourt Publishing Company, for fees based on the number of publications. Houghton Mifflin and its printer, R.R. Donnelly & Sons, greatly exceeded the number of publications Houghton Mifflin had paid for, so Alaska Stock sued for injunctive relief, actual and statutory damages, attorneys’ fees, and costs.

Alaska Stock owned the copyrights to all the photographs at issue, pursuant to assignment by the individual photographers. It registered the copyrights by registering CD catalogs and databases of the stock photos, entitled “Alaska Stock CD catalog 4” and so forth, which contained images of each of the photographs. For “name of author” on its application, it listed only three of many, in the form “1) Jeff Schultz 2) Chris Arend 3) Johnny Johnson & 103 others.”

This form of registration was prescribed by the Register of Copyrights and was consistent with Copyright Office
procedure for thirty years. The District Court  for the District of Alaska nevertheless dismissed Alaska Stock’s infringement claims on the ground that the registrations were defective, because Alaska Stock had not provided the names of each of the photographers and the titles of each of the photographs in its registrations. The theory of the dismissal was that the registrations succeeded only in registering the catalogs themselves, not the individual photographs within them, because Alaska Stock failed to list authors and titles. The district court held that the statute unambiguously required titles and authors, so the administrative practice to the contrary and a statutory savings clause for immaterially inaccurate information could not save the claims.

But then came the Ninth Circuit . . .

So Alaska Stock appealed the Alaska District Court’s Order to the Ninth Circuit Court of Appeals.  You can listen to the recording of the argument before the Ninth Circuit. And, today, the Ninth Circuit reversed the lower court’s decision and found that Alaska Stock’s registrations are valid! In sum, the court stated:

Thus, we conclude that Alaska Stock successfully registered the copyright both to its collections and to the individual images contained therein.

Of note, the Fourth Circuit recently confronted the same issue in Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., and ruled as the Ninth Circuit did here.

And the final words of the Ninth Circuit are especially comforting for photographers:

We are affecting the fortunes of people, many of whose fortunes are small. The stock agencies through their trade association worked out what they should do to register images with the Register of Copyrights, the Copyright Office established a clear procedure and the stock agencies followed it. The Copyright Office has maintained its procedure for three decades, spanning multiple
administrations. The livelihoods of photographers and stock agencies have long been founded on their compliance with the Register’s reasonable interpretation of the statute. Their reliance upon a reasonable and longstanding administrative interpretation should be honored. Denying the fruits of
reliance by citizens on a longstanding administrative practice reasonably construing a statute is unjust. 

It’s wonderful for photographers to get this justice!

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Why Photogs Should Watch the Lil’ Kim Case

Why Photogs Should Watch the Lil’ Kim Case (via Plagiarism Today)

Back in October, Canadian artist Samantha Ravndahl produced a step-by-step tutorial on how to create a “glam zombie” look using makeup and posted it to her Instagram and other social media outlets. About a month later, Lil’ Kim announced cover…

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