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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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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