Can an Infringer Purchase a Retroactive License?

Many infringers attempt to purchase a license after the infringing act began. Does the “retroactive license” absolve the infringement?

No, said the court in Palmer/Kane, LLC v. Rosen Books Works, LLC, Case No. 15-cv-7406 (SD NY Aug. 31, 2016). There, Rosen, a book publisher, had regularly licensed photos, including Palmer/Kane’s, from the stock photography agency, Corbis, for use in its books. As a “matter of practice,” Rosen frequently would use images prior to obtaining licenses for them. Palmer/Kane therefore sued Rosen for infringing its copyrights for 19 images, which Rosen allegedly had used in 21 publications either without a valid license or beyond the scope of the license it had been granted.

For one of Palmer/Kane’s images at issue in the case (Image No. 2), Rosen had used the photo in a book, printing 3,000 copies in 2006 and 2,000 in 2007, without first obtaining a license. In February 2008, Rosen secured a license from Corbis for distributing 10,000 copies of Image No. 2 in the book. Rosen later printed another 2,100 copies of the book with Image No. 2.

Course of Dealing Defense

Rosen claimed that its “pre-license” use was consistent with industry custom and the parties’ course of dealing. Even Corbis agreed that it is customary practice in the book publishing industry for publishers to reproduce copyrighted stock photography before obtaining licenses for such use. However, the court held that “custom” and “course of dealing” cannot displace rights conferred by the copyright laws. See Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 211 (3d Cir. 2002) (“A defense of industry custom and practice in the face of the protective provisions of the Copyright Act could undermine the purposes and objectives of the statute and reduce it to rubble.”); Weinstein Co. v. Smokewood Entm’t Grp., LLC, 664 F. Supp. 2d 332, 348 (S.D.N.Y. 2009) (“[N]otwithstanding plaintiff’s claims about ‘custom and practice’ in the entertainment industry, federal copyright law dictates the terms by which an exclusive license can be granted.”).

Significantly, the court stated:

Infringement is infringement, regardless of what Corbis and Rosen may have chosen to call it.

Retroactive License Defense

Rosen also asserted that even if the use constituted an infringement, the February 2008 license retroactively cured the infringement. But the court rejected this defense, as well, noting that “a license or assignment in copyright can only act prospectively.” See Davis v. Blige, 505 F.3d 90, 104 (2d Cir. 2007).

While some other courts have recognized retroactive licenses, it really is a resolution for claims of infringement. Here, Rosen was not entering into a “negotiated settlement” with the February 2008 license. Neither Rosen or Corbis had acknowledged that infringement had occurred. The court warned against conflating settlements and retroactive licenses:

Licenses and assignments function differently from settlements and releases, and the use of the term “retroactive license” for “settlement” or “release” by the parties causes unnecessary confusion and potentially creates legal mischief.

In addition, the February 2008 license had a “License Start Date” of February 20, 2008, so the license could not have covered the 2006 and 2007 uses. The court then found as a matter of law that Rosen had infringed Palmer/Kane’s Image No. 2.

So don’t let infringers try to exonerate their infringements with a “retroactive license.” Stand up for your rights, regardless of their excuses.

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Copyright Alliance Seeking Pro Bono Copyright Program Applicants

The Copyright Alliance has announced a new pro bono program “to provide free legal representation to individual creators and small businesses in lawsuits involving cutting edge copyright issues.” The program will use Columbia Law School students under the supervision of the New York-based law firm of Cravath, Swaine and Moore LLP attorneys David Marriott and David Kappos. Interested persons should sign up online.

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The Best (and Free!) Resource on Copyright Law

Tricolor Heron on Stump

Register of Copyrights Maria A. Pallante released late last year the official version of the Compendium of U.S. Copyright Office Practices, Third Edition, available on the Office’s website at http://copyright.gov/comp3/.

The Compendium serves as a technical manual for the Office’s staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public. More than three times the size of the previous edition, the Third Edition represents a comprehensive overhaul and makes the Office’s practices and standards more accessible and transparent to the public.

As in the past, it addresses fundamental principles of copyright law, such as creation, publication, registration, and renewal. It addresses routine questions such as who may file an application and who may request copies of the Office’s records. It describes recent changes to the Office’s recordation practices, such as the new option for submitting titles and registration numbers in electronic form. It also contains a new Table of Authorities that lists the cases, statutory provisions, and other legal authorities cited in the Third Edition and the relevant section where each citation may be found.

Check some of these nuggets found in the Compendium:

  • Although registration may be made at any time before a copyright expires or any time before bringing an infringement action in federal court, the U.S. Copyright Office strongly encourages copyright owners to submit their works for registration in a timely manner. As discussed in Section 202, a registration is a prerequisite for seeking statutory damages and attorney’s fees in an infringement action. To pursue these remedies, an unpublished work must be registered before the infringement occurs, while a published work must be registered within three months after publication or before the infringement occurs. See 17 U.S.C. § 412.
  • The U.S. Copyright Office has established an administrative procedure that allows an applicant to register a number of unpublished works with one application, one filing fee, and one set of deposit copies. This is known as the “unpublished collection” option. A registration issued under this option covers each work that is submitted for registration. It may also cover the compilation authorship (if any) involved in selecting the works and assembling them into a collective whole, provided that the applicant expressly claims that authorship in the application. See 37 C.F.R. § 202.3(b)(4)(i)(B). When no selection, coordination, or arrangement is claimed, the Office considers each work to be individually registered for purposes of statutory damages.
  • Many websites are frequently updated and may change significantly over time. A website may add content every hour, day, week, month, or year. To register a claim with the U.S. Copyright Office it is important to identify the specific version of the work(s) that will be included in the claim. As a general rule, each version of a work may be registered as a separate work if the version contains a sufficient amount of new, copyrightable authorship. See 17 U.S.C. § 101 (stating that “where the work has been prepared in different versions, each version constitutes a separate work”). A registration for a specific version of a work covers the new material that the author contributed to that version, including any copyrightable changes, revisions, additions, or other modifications that the author contributed to that version. But as discussed in Section 1008.2, the registration does not cover any unclaimable material that appears in that version, including any material that has been previously published or previously registered with the Office. Therefore, if the version contains an appreciable amount of content that has been previously published and/or previously registered, the applicant should exclude that material from the claim.

Example: • Sam Bavard operates a duck hunting website called “Animal Quackers.” Every three months Sam revises the website by adding new text and photographs. When Sam submits an application to register the latest version of the site he limits the claim to the “new text and photographs” that he added to the site, and he excludes the photographs and text that were previously registered with the Copyright Office.

There is much more helpful information in the Compendium.  Check it out and refer to it often.

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Can You Afford An Attorney to Help You With Your Copyright Infringement Claim?

Snow Goose Color - Copyright Carolyn E. Wright

You’ve discovered that you have been infringed, gathered the evidence, and are now deciding what to do next. As our blog post, “Help! I’ve Been Infringed” explains, you have options, one of which is to retain an attorney to help you recover damages for the infringement. But can you afford one?

Lawyers usually charge either by the hour or a contingency fee where the lawyer is paid a portion of the recovery via a settlement or court award. Other less common fee structures include a flat fee or pro bono (for free), or a combination of any of these choices.

The average 2013 hourly billing rate for lawyers was about $604 for law firm partners and $370 for associates. So your attorney fees can escalate quickly. Few photographers can afford to pay these fees, and they especially are costly if you are unable to recover any damages.

So a contingency fee arrangement may be your only option to get a lawyer’s help. Finding an attorney who works on contingency for copyright infringement claims can be difficult enough, but a recent survey conducted by the Copyright IP section of the American Bar Association found that most attorneys won’t take a copyright infringement claim unless it’s worth at least $30,000.  Many infringement claims don’t rise to that value.

Enter Photo Attorney®. We started our law firm 12 years ago specifically to help photographers, knowing that most can’t afford the traditional law firm arrangement. By having lower overhead, we are available to help more photographers with their infringement claims on a contingency fee basis even when the potential damage recovery doesn’t meet other firm’s threshold. Also with our firm, you get an experienced attorney to immediately and directly handle your infringement claim — not a layperson. Your case will get personal attention, as will you. And, even better, your share usually will be 2/3 of the total recovery!

Our attorneys have the experience and will take the time to advise you on all your potential claims and options, including negotiating a claim pre-suit to filing a lawsuit on your behalf in federal court. We currently are representing clients in court cases from Florida, to New York, to Texas, to California, and places between. We understand the parameters of the DMCA, as well. Your options to battle infringement often include more than a take-down notice.

Want to find out whether we can help you with your infringement claim?  It’s easy and free.

First, make copies of the infringing uses as soon as possible (get tips on gathering the infringement evidence at https://www.photoattorney.com/?p=3902 and https://www.photoattorney.com/?p=3934). Read Help! I’ve Been Infringed! and What’s An Infringement Worth? Then download and complete our Copyright Infringement Evaluation Form (or request one by email). Finally, send the completed Evaluation Form and requested documents by email.

We’ll review your submission asap and let you know how we can help you to get the money you deserve.

NOTICE:  Past results do not guarantee, warrant, or predict future cases.

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Copyright Alliance Requests Input on Copyright Enforcement Survey

 

Big Sur View - Copyright Carolyn E. Wright

Announcement from the Copyright Alliance:

The White House is currently developing a strategic plan relating to copyright enforcement. To assist the White House with this plan, the Copyright Alliance will be sending its comments and recommendations to the White House and we need your help. 

As individual artists and creators, your voice is a vital part of this conversation, and we’d like to hear from you. If you’ve encountered problems with copyright enforcement, send us your story. Please explain in detail:

  • the type of problem(s) (e.g., type of work pirated, website it was/is being pirated on);
  • any actions you took to stop the problem;
  • whether your actions had any effect; and
  • whether and how these problems may have affected your ability to create new works and/or your business or career more generally. 

We’d like to include your story in our letter to the White House, so that the Administration understands clearly the challenges faced by individual creators like you.

To submit your story, please go HERE.

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Why Are We Surprised When Infringers Lie?

Snowy Owl on Rock - Copyright Carolyn E. Wright

Putting salt in the wound, photographers and other creatives often are even more frustrated when infringers don’t make things right when accused. Such was the case for a Alison Green at www.askamanager.org when she discovered someone copied her reader’s resume cover letter from Alison’s website. Alison explains what happened next, including receiving a barrage of excuses and accusations.

When someone infringes your copyright, the infringer usually offers some excuse to try to avoid liability. Many of these excuses appear compelling on the surface, but they don’t stand up to the law. Check this article on Excuses, Excuses that identifies some of the more popular excuses and what copyright law provides to counter them.

Some of the infringer’s excuses are completely fabricated, causing even more frustration for the copyright owner. But why are we surprised when infringers lie? They stole your work in the first place. Why would they do something right after being caught?

But sometimes infringers do the right thing, as reported by Alan Wexelblat at www.copyfight.corante.com. Even though John Green (no known relation to Alison, but be sure to watch his great video) didn’t mean to steal the quote, he determined how much he owed and made things right in awesome ways, including paying the originator for it.

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