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.

Take Survey on State Copyright Infringement

From the Copyright Alliance:

The Copyright Alliance recently launched a new survey to gather information on the extent to which copyright owners are experiencing infringement by states. Your response will help us inform the U.S. Copyright Office as it seeks input for its sovereign immunity study to determine how widespread this issue is. Please help us by spending a few minutes to take this survey, and share it with fellow creators. The deadline for completing the survey is Friday, August 7. Thanks in advance for your assistance!

Copyright Office Wants Feedback on State Sovereign Immunity for Copyright Infringement – UPDATE!

Update: The U.S. Copyright Office is extending the deadline for the submission of comments in its study on state sovereign immunity from copyright infringement suits. Comments are now due by 11:59 p.m. eastern time on September 2, 2020. In addition, the Office is announcing a second round of comments to allow members of the public to respond to initial comments and to submit any relevant empirical research. Written reply comments and empirical research studies must be received no later than 11:59 p.m. eastern time on October 2, 2020.

The ultimate remedy for copyright infringement is to sue infringers in federal court. But if the infringer is the government, you may be out of luck because the government (a/k/a the “sovereign), may not be sued unless it has specifically agreed to be sued. This legal concept is called “Sovereign Immunity.”

Fortunately, the federal government has specifically waived its immunity from copyright infringement lawsuits. 28 USC 1498(b) provides, in part:

[W]henever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, by a corporation owned or controlled by the United States, or by a contractor, subcontractor, or any person, firm, or corporation acting for the Government and with the authorization or consent of the Government, the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims [not a district court] for the recovery of his reasonable and entire compensation as damages for such infringement, including the minimum statutory damages as set forth in section 504 (c) of title 17, United States Code . . . .

Whether state governments have immunity from copyright infringement suits is not so clear. The Copyright Remedy Clarification Act (“CRCA”), at 17 U.S.C. 511(a) states that:

Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal Court by any person, including any governmental or nongovernmental entity, for a violation of any of the exclusive rights of a copyright owner provided by sections 106 through 122, for importing copies of phonorecords in violation of section 602, or for any other violation under this title.

However, most courts have held that Congress did not have authority to waive a state’s immunity because the statute violates the Eleventh Amendment of the U.S. Constitution:

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.

and Congress did not have the authority to exercise the power to waive that immunity under section 5 of the Fourteenth Amendment.

For example, the court prevented Richard Bell from recovering on his infringement claim against the University of Indiana because of state sovereign immunity. See more at https://www.photoattorney.com/court-confirms-sovereign-immunity-state-government-employees/.

Now, the U.S. Copyright Office has announced that it will study the extent to which copyright owners are experiencing infringement by states without adequate remedies under state law. The Senate Judiciary Committee’s Subcommittee on Intellectual Property requested the study following a Supreme Court decision earlier this year holding that states are immune from liability for copyright infringement. To assist the Office in preparing a report for Congress as it considers possible legislation in this area, the notice requests written comments from the public on a number of questions.

The requested information is listed in the Federal Register notice. For additional information, including instructions for submitting comments, please visit the Office website. Comments must be received no later than 11:59 p.m. eastern time on August 3, 2020 September 2, 2020.

Copyright Notice at Bottom of Web Page = Willful Infringement

Richard N. Bell is an attorney and photographer who regularly defends his copyrights. On April 5, 2018, Mr. Bell discovered that Joan Mattox had published his photo of the Indianapolis skyline from December 2015 (or earlier) through February 2020 on her website at http://www.readymadestaffing.com without authority. Ms. Mattox did not credit Mr. Bell for the photo on her website. Instead, she posted “Copyright 2012 – Ready Made Resources” at the bottom of her web pages.

Mr. Bell filed suit against Ms. Mattox for copyright infringement of his photo. Ms. Mattox failed to respond to the complaint, so the court entered default judgment against her. [Learn more about default and default judgment at https://www.photoattorney.com/diary-of-a-copyright-infringement-lawsuit-%e2%80%93-5a-default-and-default-judgment/.]

In its default judgment order, the court held:

By placing the statement “Copyright 2012 – Ready Made Resources” at the bottom of the website that included the Indianapolis Photo, Ms. Mattox represented that she possessed the copyright for all content found on the website,  including the Indianapolis Photo. She would have known that representation was false when she made it. This deliberate action by Ms. Mattox of placing such common copyright language on the bottom of her website plainly asserts that she possessed the rights to Mr. Bell’s copyrighted photograph. Her failure to distinguish her copyrighted material and that of the owner of the Indianapolis Photo supports a finding of willfulness in this case.

Bell vMattoxNo1:18cv01677SEBDLP, 2019 WL 590147 (S.D. Ind. Feb. 12, 2019).

Not all courts have agreed that a copyright notice at the bottom of a website’s page constitutes such an intentional act, but this court’s ruling is encouraging for photographers.

Lessons to be Learned from an Infringement Lawsuit

Want to know how successful you would be if you filed a copyright infringement lawsuit? While you can learn the copyright code and review the circulars on copyright law, it can be difficult to predict the outcome of a copyright infringement case.

One way to figure out how a court would rule in your matter is to look at other lawsuits. One case last year, Philpot v. WOS, Inc., 2019 WL 1767208 (W.D. Tex. April 22, 2019), addressed several issues that may be helpful when analyzing your claim.

Philpot, a freelance photographer, uploaded two photos at issue in his case – one of Kenny Chesney and one of Lukas Nelson, to Wikimedia Commons under a Creative Commons License (“CCL”). The alleged infringer, WOS, Inc., posted the two photos on its website, www.wideopencountry.com/. Philpot sued WOS for copyright infringement for posting the photos without the required attribution and for a DMCA violation for removing Philpot’s metadata before posting them.

Philpot and WOS both filed motions for summary judgment (“summary judgment is appropriate when there is no genuine dispute as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a)). WOS claimed that its use of the photos was a fair use, so Philpot and WOS asked the court to rule as a matter of law that the uses were or were not a fair use.

Here are some of the factors that the court considered in the fair use claim:

  • WOS’s use of Philpot’s photos is commercial. WOS is a for-profit business that earns advertising revenue based on page views.
  • Although WOS downplayed its uses as “nominally commercial” because the Chesney article brought in only $6.41, the question is whether WOS “st[ood] to profit from exploitation of the copyrighted material without paying the customary price”—here, attribution—and not whether WOS was especially successful at profiting from its exploitation.
  • While a jury could find that Philpot made creative judgments, such as angle, framing, and timing when taking the two photos, a jury instead could find that these photos were taken only to identify the people so that they only “marginally creative.”
  • Whether the uses were “transformative” should be determined by the jury rather than the judge.
  • While attribution might lead someone to purchase one of Philpot’s works, there was no evidence that WOS’s use will have any effect on the market for the Chesney or Nelson photos that he makes available for free.

In the end, the court denied summary judgement for both parties, stating that a jury would have to determine whether the uses were fair uses.

WOS also asked the court to dismiss Philpot’s DMCA claim. Here are some of the factors that the court considered there:

  • Proving a violation of Section 1202 requires proof of intent or actual (not constructive) knowledge of the removal and distribution.
  • There was no evidence that WOS knew that the photos had any metadata that was removed, even though the metadata was visible at the bottom of the Wikimedia page.

Here is how the court ruled on some other claims and defenses:

  • With his CCL license, Philpot had asked for attribution of the photos to be: “Larry Philpot of www.soundstagephotography.com” or “Larry Philpot, www.soundstagephotography.com.” WOS’s only attribution was to hyperlink to the photos’ Wikimedia pages. Unfortunately, the Creative Common organization provides that: “CC licenses have a flexible attribution requirement, so there is not necessarily one correct way to provide attribution. Additionally, you may satisfy the attribution requirement by providing a link to a place where the attribution information may be found.” The court held that the jury would decide whether WOS’s attribution was sufficient.
  • While Philpot estimated that he had filed more than 50 copyright infringement lawsuits, that doesn’t constitute copyright misuse.
  • Public performance or display of a work does not of itself constitute publication. Posting images to a Flickr account is neither a sale or transfer of ownership nor a distribution to others for further publication, so it doesn’t constitute publication.

While other courts don’t have to rule the same way as this one did, they often look to and apply a similar analysis to their cases. The more you learn from other cases will help you do what you can to protect your copyrights.

New Copyright Registration Fees Effective March 20

The Copyright Office is changing fees for copyright registration and other services. The filing fee for a registration of one work (such as a photograph), by a single author with the same claimant, that is not a work for hire, now will be $45. For photographers, the most economical way to register your copyrights is in a group of published photographs or a group of unpublished photographs. The fee remains the same at $55 for each group registration.