Copyright Office to hold Online Public Roundtables for State Sovereign Immunity Study

The U.S. Copyright Office has published a Federal Register notice announcing that it will hold public roundtables for its study on state sovereign immunity on December 11, 2020, via Zoom. The Office initiated this study in response to a congressional request that the Office examine whether there is a sufficient basis for legislation abrogating state sovereign immunity when states infringe copyrights.

Members of the public who seek to participate in a roundtable should complete and submit the form available on the Office’s website no later than November 16, 2020. The Office will notify participants of their selection and panel assignments shortly thereafter.

Note: Use the online form only to indicate that you wish to participate in a public roundtable. For those who wish to observe the roundtable without participating as a panelist, the Office will provide sign-up information on this page approximately one week prior to the event.

For additional information, please visit the Office website.

Q&A: Statute of Limitations for Copyright Infringement Claims

Q.  I recently found a photo of mine on the blog of a small business.  The blog post that included my photo was published in 2014.  Is there any “statute of limitations” on copyright violators, or can I pursue this issue whenever I come across one of my photos?

A.  When someone infringes your copyright, the time that you have to make your claim is limited.  This is based on a legal principle called “the 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 them 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.

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, you have three years from the date that the newspaper was distributed to file your claim in court.  If the infringement continues, such as when someone is using your image on the web without your consent, the clock would begin to run only when your photo is removed from the website.

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 actually discover the infringement or should have discovered it, if you had been diligent (this later situation also is known as “constructive notice.  An example of this “constructive notice” is when your photo is published in a nationally-distributed magazine but you didn’t see a copy of it).  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.  Check this chart to determine what circuit your court is in http://www.uscourts.gov/court_locator.aspx

After you file your lawsuit within the statute of limitations, some courts limit your damages for the infringement to the last three years.  But others, such as those in the Ninth Circuit, allow a copyright owner to recover all damages accrued, even if they occurred outside of the three-year window for the statute of limitations. 

If someone uses your photo without your permission, you may seek legal remedy from that person within three years of the last act of infringement. So do not sit on your claim once you have it.  Check with an attorney to discuss your options when you are infringed.

2nd Circuit Clarifies Important Copyright Law

Copyright law is found in more than in the copyright code. Courts interpret the code, along with rulings by other courts, and apply it to the circumstances. But courts can disagree with each other, making it difficult to predict the outcome of a copyright infringement case. Fortunately, the 2nd Circuit Court of Appeals recently issued an order clarifying some frequent copyright infringement issues.

Joseph Sohm had entered into agreements with several agencies, including Continuum Productions Corp. (now Corbis Corp.), to issue licenses to third parties on his behalf. In 2004, Corbis entered into a preferred vendor agreement (“PVA”) with Scholastic Inc. that established fees for certain print-run ranges of Sohm’s photos.

In 2016, Sohm sued Scholastic for copyright infringement in the US District Court for the Southern District of New York (Case No. 16-cv-7098), alleging that Scholastic infringed his copyrights by using his photos in various publications in numbers exceeding the print runs contemplated in the invoices. After the District Court ruled on Sohm’s claims, both parties appealed to the Second Circuit Court of Appeals (Sohm v. Scholastic Inc., No. 18-2110 (2d Cir. 2020). The issues presented there are important to photographers.

Issue #1 – who has the burden to prove infringement when the infringement claimed is exceeding the scope of a license? In a copyright infringement case, the plaintiff must show: (i) ownership of a valid copyright; and (ii) unauthorized copying of the copyrighted work. A license to copy the work is “an affirmative defense to a claim of copyright infringement . . . that the alleged infringer must plead and prove.” Yamashita v. Scholastic Inc., 936 F.3d 98, 104 (2d Cir. 2019). Nevertheless, the 2nd Circuit here held that “when the contested issue is the scope of a license, rather than the existence of one, the copyright owner bears the burden of proving that the defendant’s copying was unauthorized under the license and the license need not be pleaded as an affirmative defense.”

Issue #2 – When the infringer exceeds the terms a license, is the copyright owner’s claim for infringement or breach of contract? The issue of whether license terms are “conditions” or “covenants” is discussed more fully at https://www.photoattorney.com/the-importance-of-conditions-in-your-free-license/. In the Sohm case, the 2nd Circuit explained that “generally, ‘if the licensee’s improper conduct constitutes a breach of a covenant undertaken by the licensee and if such covenant constitutes an enforceable contractual obligation, then the licensor will have a cause of action for breach of contract,’ not copyright infringement. . . . [But] ‘if the nature of a licensee’s violation consists of a failure to satisfy a condition to the license, it follows that the rights dependent upon satisfaction of such condition have not been effectively licensed, and therefore, any use by the licensee is without authority from the licensor and may therefore, constitute an infringement of copyright.’” quoting 3 Nimmer on Copyright § 10.15[A]).  The court found that Sohm properly plead that Scholastic had violated restrictions in the PVAs upon which the licenses were conditioned. Therefore, a claim for copyright infringement was appropriate.

Issue #3 – Does the “discovery” or “injury” rule apply to start the three year statute of limitations for copyright infringement? Check this blog entry to learn more about this issue: https://www.photoattorney.com/when-does-the-time-start-for-your-copyright-infringment-claim/. The 2nd Circuit applied for Sohm’s claims the “discovery rule for copyright claims under 17 U.S.C. § 507(b). Under that rule, an infringement claim does not 25 ‘accrue’ until the copyright holder discovers, or with due diligence should have discovered, the infringement.” Compare this case: https://www.photoattorney.com/10th-circuit-dismisses-copyright-infringement-claim-filed-late-claim-continuing-infringement/.

Issue #4 – How many years of damages can a copyright owner recover for infringement? The 2nd Circuit limited Sohm’s damages: “[t]he Supreme Court was crystal clear . . . that, independent of whether the injury or discovery rule applies, ‘[u]nder the [Copyright] Act’s three-year provision, an infringement is actionable within three years, and only three years, of its occurrence,’ and that ‘the infringer is insulated from liability for earlier infringements of the same work’” (quoting Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 673, 671 (2014)).

Issue #5 – Are Corbis’ group copyright registrations valid because they did not include Sohm’s name as author? Important past cases on this issue have been discussed more fully at https://www.photoattorney.com/new-york-court-invalidates-copyright-registrations/ and https://www.photoattorney.com/ninth-circuit-court-finds-copyright-registrations-valid/. The 2nd Circuit found a different way to side with Sohm:

Citing to Muench, Scholastic asserts that Sohm’s name was required to be included in the group registrations for them to be valid under the Copyright Act, 712 F. Supp. 2d at 85, thereby rejecting the district court’s contrary conclusion here and the Ninth Circuit’s contrary conclusion in Alaska Stock. We, however, agree with the district court and the Ninth Circuit. The “author” that must be identified in a group registration under 17 U.S.C. § 409(2) is the author of the compilation, rather than the author of each underlying work, and a valid group registration works to register each individual work included in the compilation.

We agree with the district court below and the Ninth Circuit. The plain language of § 409(2) does not require a group registrant like Corbis to include each individual author of each individual work in the compilation to effectively register those individual works. The key word in § 409(2) is “work” instead of “author.” As the Ninth Circuit explained, “[t]his subsection says that the name of the author or authors of ‘the work’ must be provided, the statute defines a ‘collective work’ as being a type of ‘work,’ and here, the author of the collective work was” Corbis. Alaska Stock, 747 F.3d 681 (footnote omitted). Consequently, to obtain a valid group registration under § 409(2), “[t]he ‘author or authors’ that must be listed . . . are the author or authors of the collective work itself.”3 Id. The Corbis group registrations all satisfied this requirement by listing Corbis as the author of the collective work. Accordingly, the district court properly determined that Corbis validly registered each of the photographs in the relevant group registrations.

In sum, the NY District Court in Sohm found that the operative word in Section 409(2) is “work” rather than “author” and that Muench improperly relied upon 17 U.S.C. § 103 in its interpretation of Section 409(2). Now, the 2nd Circuit confirmed that registration of a compilation of photographs under 17 U.S.C. 409 by an applicant who holds the rights to the component works is valid and effectively registers the underlying individual photos, even if the compilation does not list the individual authors of the individual photos.

Check the court’s full opinion for more information: https://www.photoattorney.com/wp-content/uploads/2020/09/Sohm-v-Scholastic-2nd-Circuit.pdf

All of this is helpful to photographers to understand their rights when fighting against copyright infringement.

One Bad Apple (or Attorney)

Petapixel and others have warned about Richard Liebowitz, “one of the most prolific copyright infringement lawyers in the state of New York,” who has been fined and disparaged by several federal courts.

But when you look closely at the complaints against him, they have nothing to do with his being a copyright attorney except for the number of infringement cases he has filed. Instead, the violations have been for not showing up in court, not following court orders, and lying to judges. All of these infractions would get any attorney in trouble, especially if they are repeated and rampant.

Attorneys must abide by ethical rules. While they differ slightly by court, they are encompassed in the ABA’s Model Rules of Professional Conduct. Some of the Rules are imperatives, cast in the terms “shall” or “shall not.” These define proper conduct for purposes of professional discipline. Others, generally cast in the term “may,” are permissive and define areas under the Rules in which the lawyer has discretion to exercise professional judgment.   

For example, at the state level, the California Rules of Professional Conduct regulate professional conduct of attorneys licensed by the California State Bar through discipline. Unethical conduct is investigated by the California State Bar’s Office of Chief Trial Counsel. Complaints against attorneys come from many sources, including clients, court officers, insurance companies and other attorneys.   

The rules are similar at the federal level, such as these Guidelines for the Northern District Court of California. Every time an attorney is admitted to appear before a court, the attorney must agree to abide by these kinds of rules.

In sum, it doesn’t matter what area of law Liebowitz practices in, his conduct in court would get him into trouble. So don’t cast aspersions on all copyright infringement attorneys because of one bad apple.

DMCA doesn’t require knowledge of 3rd party future infringement

Emerald Bay, Tahoe – Copyright Carolyn E. Wright

Photographer Gregory Mango sued BuzzFeed, Inc., for infringing one of his photographs and for removing or altering his copyright management information (CMI) in violation of the Digital Millennium Copyright Act (DMCA). Mango had licensed the photo at issue to the New York Post for an article, which included a gutter credit for Mango. A writer for BuzzFeed later used the photo for different article without permission and without Mango’s photo credit.

The U.S. District Court for the Southern District of New York awarded Mango statutory damages. The Court found that Mango’s gutter credit constituted CMI and that BuzzFeed distributed the photo with altered and missing CMI. The court then held that BuzzFeed knew that the CMI had been removed and altered without permission and that “BuzzFeed had reasonable grounds to know that such removal and distribution concealed a[n] . . . infringement.” The district court awarded $3,750 in statutory damages for copyright infringement and $5,000 in statutory damages for violation of the DMCA. It also ruled that Mango was entitled to reasonable attorneys’ fees and costs, awarding $65,132.50 in fees and $1,810.03 in costs under 17 U.S.C. § 505. See Mango v. BuzzFeed, Inc., 397 F. Supp. 3d 368 (S.D.N.Y. 2019).

BuzzFeed appealed to the United States Court of Appeals for the Second Circuit on the DMCA claim, arguing that it did not know that its conduct would lead to future, third-party copyright infringement. The applicable section of the DMCA states:

No person shall, without the authority of the copyright owner or the law . . .

(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

17 USC Section 1202(b).

The 2nd Circuit held that the plain language of the DMCA did not require Mango to prove that BuzzFeed knew that its actions would lead to future, third-party infringement. The court explained:

First, “an infringement” is not limited to the infringing acts of third parties. The plain meaning of the statutory language also encompasses an infringement committed by the defendant himself. This includes the knowing, unauthorized infringement that serves as the basis for establishing the first scienter element of Section 1202(b). In other words, a defendant’s awareness that distributing copyrighted material without proper attribution of CMI will conceal his own infringing conduct satisfies the DMCA’s second scienter requirement.

Second, “an infringement” is not limited to future infringing conduct. Although the word “will” indicates future action, in the context of Section 1202(b), it is used in conjunction with the words “induce, enable, facilitate, or conceal,” not “an infringement.” Id. So the statutory language requires constructive knowledge of future concealment, not future infringement.

[Emphasis added].

The Court of Appeals thus found that the district court had properly awarded damages. Click to see the full opinion below:

This case is good news with respect to the knowledge requirement of the DMCA, which has been difficult for photographers to prove. This court’s explanation of the knowledge requirement paves the way for more successful claims.

Get Professional Help!

In the early years of this blog, I would end each entry with the words: “Take my advice; get professional help.” That’s because there’s a lot of misinformation on the Internet about the law for photographers, including copyright law. With lots of great resources available for free from attorneys who practice in this area, you don’t have to rely on non-attorneys to get guidance. Here are a few:

Unfortunately, a recent article, written by someone who admits he’s not an attorney, makes incorrect or incomplete assertions. I haven’t identified the article or author here as the point is to correct the information. Here are some examples:

Assertion: If you are employed by someone to take images, then the employer owns the copyright. 

Clarification: In the United States, if photos are taken by an employee (a w2 employee) within the scope of employment, then the photos are a “Work Made For Hire” (WMFH”) and the employer is both the “author” and owner of the copyrights. If the photographer is an independent contractor (who has provided w9 and receives a 1099), the photographer owns the copyrights unless the photographer first agreed in writing and the work falls into one of 9 statutory categories. Learn more from Circular 9 from the U. S. Copyright Office. See also 17 USC 101.

Assertion: Whether you register or not, you can still legally go after someone who steals your work. But your settlement will be limited to actual damages.

Clarification: You don’t have to register your copyright with the U.S. Copyright Office to demand damages for an infringement, but you first must register your copyright (hopefully before but at least after the infringement) with the U.S. Copyright Office to be able to file a lawsuit. (If you created the photo in another country that is a signatory to the Berne Convention, you do not have to register to file an infringement lawsuit in the U.S.).

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)), not statutory damages. Courts usually calculate actual damages based on your normal license fees and/or industry standard licensing fees. You also may recover the profits the infringer made from the infringement if they aren’t too speculative. For example, if someone uses your photo on a t-shirt, then you likely would be able to get the profits made from t-shirt sales.

Assertion: If you do register your image, you can go after statutory damages, which could be considerable.

Clarification: You photo must be timely registered for an infringement 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. Timely registration is that which is done prior to the infringement or within three months of the first publication of the photo (not 90 days). See 17 USC Section 412.

Because the statute does not allow for statutory damages when “any infringement of copyright in an unpublished work commenced before the effective date of its registration,” then you don’t have the 3 month window to register your photograph after an infringement if your work was unpublished at the time of the infringement.

Assertion: Unless you are a famous photographer and your stolen image ends up on the cover of a magazine, it’s not going to be worth the trouble to sue.

Clarification: My law firm helped photographers for 15 years with their infringement claims on a contingency fee basis, making non-suit demands and filing many lawsuits when necessary. I am now retired but some of my colleagues are continuing the good work.

Even if you haven’t registered your infringed photo, sometimes the actual damages are significant and/or you may be entitled to DMCA damages in addition to the infringement claims. DMCA claims arise when the infringer removes your copyright management information (“CMI”), such as a watermark, or provides false CMI to hide the infringement. More information is available in my blog entry here.

Check here for a list potential damages that you can recover. Check here for what you can do when infringed.

And take my advice; get professional help.