Copyright and Photography
Saper Law Offices, LLC
Presented by Daliah Saper
Introduction

About Saper Law:

Saper Law is an intellectual property and business law
firm with significant transactional and both federal and
state litigation experience. We primarily specialize in
the following areas of law:
Trademarks
Defamation
Copyrights
IP
Trade
Secrets
Corporate
Internet and Cyber Space
Entertainment
Licensing
Advertising
Media
Sponsorship and Advertising Agreements
Tonight’s Topics of Discussion

What is a Copyright?
 History
 Co-authorship
issues
 Work For Hires
 Implied Licenses

Illinois Right of Publicity Act
 Model


Releases
Property Releases
Q&A
What is copyright?


A copyright is a set of exclusive rights given
to an original author to regulate the use of a
particular expression of ideas.
Copyright is available for original works of
authorship fixed in any tangible medium of
expression.
Copyright owners have the exclusive right to:





Make copies of their work
Prepare derivative works
Distribute copies of the work to the public
Perform the work publicly
Display the work publicly
The History of Photography and Copyrights




The Constitution authorizes Congress to: “Promote the progress
of science and useful arts, by securing for limited times to
authors and inventors, the exclusive right to their respective
writings and discoveries.”
In the famous case of Burrow-Giles Lithographic Co. v. Sarony
(1884) the constitutional question of whether a photograph
merited copyright protection arose.
Was a photographer an “author”?
Did a photograph constitute a “writing”?
Burrow-Giles Lithographic Co. v. Sarony
(1884)



Photographer Napolean Sarony filed
a copyright infringement suit against
Burrow-Giles Lithographic company
for marketing unauthorized
lithographs of Sarony’s photograph of
Oscar Wilde.
Burrow-Giles argued that even if
other visual works could be
copyrighted, photography was merely
a mechanical process rather than an
art and did not embody an author’s
idea.
Outcome . . .
Burrow-Giles Lithographic Co. v. Sarony
(1884)



Photographer wins!
It was found that Sarony had posed Wilde,
suggested his expression, selected his costume, the
background and accessories to create a particular
composition of light and line.
This control that Sarony exercised over the subject
matter showed that he was an “author” of an
original work of art
Burrow-Giles Takeaways


Photograph is definitely copyrightable!
Even a photograph of something in the public
domain is copyrightable!
 Example:
pictures of Art Institute paintings….
Registration - Is it necessary?



Registration of claims to copyright is optional.
However, the advantages of copyright registration
are extremely significant and therefore registration
is advised.
Registration is generally a prerequisite to an action
for infringement and provides advantages in
proving a case and in securing remedies.
Copyright Registration Benefits



Can’t sue without registration.
Registration within 3 months of the original
publication date, or prior to infringement, needed
to claim statutory damages or attorney’s fees.
Registration within 5 years of publication creates
presumption of valid copyright.
The Statute—for your reading
pleasure
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






17 USC § 410. Registration of claim and issuance of certificate
(c) In any judicial proceedings the certificate of a registration made before or within five years after first
publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts
stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made
thereafter shall be within the discretion of the court.
§ 411. Registration and infringement actions10
(a) Except for an action brought for a violation of the rights of the author under section 106A(a), and
subject to the provisions of subsection (b), no action for infringement of the copyright in any United States
work shall be instituted until preregistration or registration of the copyright claim has been made in
accordance with this title.
§ 412. Registration as prerequisite to certain remedies for infringement11
In any action under this title, other than an action brought for a violation of the rights of the author under
section 106A(a), an action for infringement of the copyright of a work that has been preregistered under
section 408(f) before the commencement of the infringement and that has an effective date of registration
not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright
owner has learned of the infringement, or an action instituted under section 411(b), no award of statutory
damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for —
(1) any infringement of copyright in an unpublished work commenced before the effective date of its
registration; or
(2) any infringement of copyright commenced after first publication of the work and before the effective
date of its registration, unless such registration is made within three months after the first publication of the
work.
Small Exception: Visual Rights Act
§ 106A. Rights of certain authors to attribution and integrity

(a) Rights of Attribution and Integrity. — Subject to section 107 and independent of the
exclusive rights provided in section 106, the author of a work of visual art —

(1) shall have the right —

(A) to claim authorship of that work, and

(B) to prevent the use of his or her name as the author of any work of visual art which he
or she did not create;

(2) shall have the right to prevent the use of his or her name as the author of the work of
visual art in the event of a distortion, mutilation, or other modification of the work which
would be prejudicial to his or her honor or reputation; and

(3) subject to the limitations set forth in section 113(d), shall have the right —

(A) to prevent any intentional distortion, mutilation, or other modification of that work
which would be prejudicial to his or her honor or reputation, and any intentional
distortion, mutilation, or modification of that work is a violation of that right, and

(B) to prevent any destruction of a work of recognized stature, and any intentional or
grossly negligent destruction of that work is a violation of that right.
Small Exception: Visual Rights Act

The 106a “VRA” exception in 412 allows for
statutory damages and attorney's fees in an action
for violation of author's rights (not straight up
infringement) even if you didn’t register within three
months of publication or after infringement, if:
the photograph is "(2) a still photographic image
produced for exhibition purposes only,
 existing in a single copy that is signed by the author, or
in a limited edition of 200 copies or fewer that are
signed and consecutively numbered by the author."

How do I register?



Easy.
You can register your copyright by filing a simple form and
depositing one or two sample of the work with the U.S. Copyright
Office.
The forms vary with the different types of work




TX - Literary work
VA - Visual art work
Forms and instructions may be obtained from the U.S.
Copyright Office by telephone, 202-707-9100, or online at
www.copyright.gov
Registration currently costs $45 per work
But…
What if there are two “authors”?!
 Or what if the artist works for a corporation?!
 Who owns the copyright then?????

Sharing copyright - Joint Work

Joint Work
A joint work is a work prepared by two or more authors
with the intention that their contributions be merged into
inseparable or interdependent parts of a whole. (17 U.S.C.
§ 101)
 Joint authorship entitles the co-authors to equal undivided
interests in the whole work - Co-ownership.
 Each joint author has the right to use or to license the work
as he or she wishes, subject only to the obligation to account
to the other joint owner for for any profits that are made.

Sharing Copyright - Joint Work

The prevailing test for whether a contribution rises to the
level of joint-authorship is set out in Erickson v. Trinity
Theatre, Inc., 13 F.3d 1061, 1069 (7th Cir. 1994).
According to Erickson defendants must prove that:
 1) They made an independently copyrightable
contribution to the work and
 2) The parties fully intended to be co-authors at the
time that the photograph was taken
Examples:

Co-Authorship Status Denied:

Tang v. Putruss, 521 F. Supp. 2d 600 (E.D. Mich. 2007).

Plaintiff photographer was hired by Defendant to photograph Defendant’s new line
of designer dresses.

Defendant claimed co-authorship status, saying that he dressed the models, chose
their accessories and directed hair and makeup stylists.

The court, using the Erickson test, denied co-authorship status

1) Independently copyrightable contributions? - No.


“Mere selection of subject matter does not create joint authorship.”
2) Intended to be co-authors? - No.

There was no “objective indicia” of an intent to be co-authors
Examples:

Co-Authorship Status Granted:

Brod v. General Publishing Group, Inc., 32 Fed.Appx. 231 (9th Cir. 2002)


Plaintiff photographer was asked by the Defendant to take photographs of vintage
televisions for a book Defendant intended to publish.
The court, using the Erickson test, found that Defendant was entitled to co-authorship status:
 1)Independently Copyrightable Contributions? - Yes.
 Defendant came up with the idea, procured the televisions, arranged the
composition for each shot, directed the plaintiff to make changes to the camera
angles, and enhanced the images.
 Additionally, the Defendant gave final approval of both positioning of the
subject matter and the camera angle before the plaintiff triggered the shutter in
each photograph.
 2) Objective Manifestations of an Intent to be co-authors? - Yes.
 Plaintiff deferred to the defendant.
 Plaintiff indicated that the pictures were for a “t.v. book”.
 Copyright registration listed the completion date as the date that the book was
completed rater than the date that the photographs were taken.
Giving Up Copyright - WMFH

A work made for hire is:


1) A work prepared by an employee within the scope of his or her
employment; or
2) A work specially ordered or commissioned for use as a contribution
to a collective work, as a part of a motion picture or other audiovisual
work, as a translation, as a supplementary work, as a compilation, as an
instructional text, as a test, as answer material for a test, or as an atlas,
if the parties expressly agree in a written instrument signed by them
that the work shall be considered a work made for hire.
Giving Up Copyright - WMFH

Ownership of copyright and works made for hire:
In the case of a work made for hire, the employer or other
person for whom the work was prepared is considered the
author.
 Unless the parties have expressly agreed otherwise in a
written instrument signed by both of them, that employer
owns all of the rights comprised in the copyright.

Scenario




Freddy’s Fruit Stand would like to have pictures
taken for a corporate history
Freddy’s engages a third party photographer (not
an employee of the stand) to take the pictures
The relationship between Freddy’s and the
photographer breaks down.
Who holds copyright to the photograph?
Answer

The photographer will own the copyright!
 The
photographer is not an “employee” of Freddy’s
Fruit Stand
New Scenario




Freddy’s Fruit Stand would like to have some
pictures taken for an advertising campaign .
Al is in charge of all marketing for Freddy’s Fruit
Stand. He takes the pictures for the campaign.
The relationship between Al and Freddy’s breaks
down and Al is fired.
Who holds copyright to the photograph?
Answer


Freddy’s does!
Because the photograph was taken by Al, an
employee, within the scope of his employment, it fits
under one of our Work Made for Hire situations.
Not an employee? Still might be a work
for Hire…

If an independent photographer is hired by a company, a
Work For Hire situation could occur if the company plans to
use the photograph in a “collective work” or in a
“compilation” and says so in a written, signed contract
If the photographer is the copyright
holder…

The hiring party’s ability to use the work would
depend either on
1) The specific terms of the agreement, or
 2) Upon the concept of an implied license to use the
work.

Specific Agreement/ Photo Contract
KNOW YOUR TERMINOLOGY:

License


A written license granted by the holder of a copyright
[photographer] may give the licensee a limited right to
reproduce, sell, or distribute the work.
Assignment

A complete transfer of property rights from one person [in this
case the copyright holder] to another.
Implied License

Implied License



License created by law in the absence of an actual agreement
between the parties.
Conduct may create an implied license - For example, if a
photographer creates a work at an entity’s request and hands it
over, intending that the entity copy and distribute it, an implied
license is created.
The extent of what was “implied” often becomes the basis for
lengthy and costly litigation
Implied Licenses, continued.

Avoiding the Headaches of Implied Licenses
 Agreements
should be put in writing and contain:
A
statement identifying who owns the copyright, or if it’s a
license, what the license will allow
 The
full scope of work to be performed
Newer Scenario
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
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Let’s say that Joe, a photographer, takes some
pictures of Freddy’s Fruit Stand. In it he captures
Mary shopping for apples.
He thinks this picture is particularly nice and decides
that he should sell it to Freddy’s.
Freddy’s jumps at the chance and uses the picture
for a nationwide campaign.
Do we have any problems here?
Answer
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

Yes.
While we might not have any copyright issues here,
we might run into …
RIGHT TO PUBLICITY issues
Illinois Right to Publicity Act


Recognizes an individual’s right to control the use of
his or her identity for commercial purposes.
Commercial purposes include:
 Using
an image in connection with the sale of a good or
service
 Using an image for advertising purposes
 Using an image for the purposes of fundraising
So…
How might Joe protect himself against a
potential suit brought by Mary?
 Model Release!

Model Release - Protecting Yourself


A model release is an agreement that permits the use of a person’s
name or image.
There are two classes of model releases:
 Blanket Release:



Permits any use of the photographic image of the person signing the
release
It is suitable if the company or photographer needs an unlimited right to
use the image. Stock photographers who sell their photos for unlimited
purposes commonly use blanket releases.
Limited Release


A limited release specifies the particular ways that an image may be
used. If a use exceeds what is permitted under the limited release the
person can sue for breach of the agreement.
Celebrities and professional models usually sign limited releases.
Model Release - When do you need one?

As a general rule you will not need a model
release for the use of a person’s image if:
 Your use is not defamatory;
 Does not invade privacy; and
 Is not for a commercial purpose
Model Release - Informational Use


If you are taking pictures for a purely informational
use, you do not need a model release.
An informational (or editorial) use is anything that
informs, educates, or expresses opinions protected
under the First Amendment of the U.S. Constitution.
Examples of Informational Use



A photographer takes a picture of a politician
giving a speech and it is printed on the front page
of the New York Times.
A photographer takes a picture of Paris Hilton
driving in her convertible and sells it to US Weekly.
(Yes. This is considered “news” and thus an
informational use.)
A photographer takes a picture of a crowd at
Grant Park for use in a nonfiction book.
Model Release - Commercial Use

A model release is needed if the photographer
intends to use a person’s name or image
commercially.
A
commercial use, again, occurs when a photograph is
used to sell or endorse a product or service.

A release is not required if the person cannot be
recognized in the photo.
Examples of Commercial Uses

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A photographer takes a picture of a politician
giving a speech and uses it on a poster for an
upcoming fundraiser.
A photographer takes a picture of Paris Hilton in
her convertible, notices she is drinking a Starbucks
latte and sells it to Starbucks for use in a national
advertising campaign.
A photographer takes a picture of a woman in
Grant Park and sells it to Nabisco, who uses the
picture on their new packaging.
Alison Chang and Virgin Mobile

Facts





Photo is taken of 16 year old Chang by her counselor at camp.
The counselor posts the photo on Flickr.com
The counselor is a frequent Flickr.com poster and has indicated
that his photos carry with them a license from Creative Commons
that allow them to be used by anyone in any way.
Virgin Mobile USA saw the photo of Chang on Flickr and used it
for a advertising campaign, with the slogans:
 “Dump Your Pen Friend”
 “Free texts Virgin to Virgin.”
What are our problems here?
Alison Chang and Virgin Mobile

Copyright Issues?



No.
The counselor had given away his rights as a photographer when
he selected the particular license that he did.
Right of Publicity Issues?



Yes.
It appears that neither the photographer or Virgin Mobile
acquired Chang’s consent before Virgin Mobile began its
advertising campaign.
The Creative Commons license could not have have granted
Virgin Mobile Chang’s consent to use her image for commercial
purposes.
Artistic Use


Questions surrounding artistic photography are a bit
trickier.
For example:
 Can
a photographer show and publish prints of street
photographs in cases where he did not get a release
from the people in the image?
 Yes!
 And he can sell the prints too!
Nussenzweig v. DiCorcia
Supreme Court, New York County, 2006




In 1999 Philip-Lorca di Corcia took a series of
intimate close-ups of strangers in Times Square.
He exhibited his work in 2001, selling 10 prints of
Nussenzweig’s photo for $10,000 to $30,000 each
Nussenzweig filed a suit against DiCorcia for 1.5
million
The judge ruled in favor of the photographer, citing
the First Amendment protection of art.
Model Release - (Blanket -Detailed)

MODEL’S PERMISSION AND RIGHTS GRANTED:

For good and valuable Consideration herein acknowledged as received, and by signing this
release I hereby give the Photographer/Filmmaker and Assigns my permission to license the
Images and to use the Images in any Media for any purpose (except pornographic or defamatory)
which may include, among others, advertising, promotion, marketing and packaging for any
product or service. I agree that the Images may be combined with other images, text and
graphics, and cropped, altered or modified. I acknowledge and agree that I have consented to
publication of my ethnicity(ies) as indicated below, but understand that other ethnicities may be
associated with Images of me by the Photographer/Filmmaker and/or Assigns for descriptive
purposes.

I agree that I have no rights to the Images, and all rights to the Images belong to the
Photographer/Filmmaker and Assigns. I acknowledge and agree that I have no further right to
additional Consideration or accounting, and that I will make no further claim for any reason to
Photographer/Filmmaker and/or Assigns. I acknowledge and agree that this release is binding
upon my heirs and assigns. I agree that this release is irrevocable, worldwide and perpetual, and
will be governed by the laws of the state of New York, excluding the law of conflicts.

I represent and warrant that I am at least 18 years of age and have the full legal capacity to
execute this release.
Model Release - (Blanket-Simple)
MODEL RELEASE
In exchange for consideration received, I hereby give
permission to [your name here] to use my name and
photographic likeness in all forms and media for
advertising, trade, and any other lawful purposes.
 Print Name:
 Signature:
 Date:
 If Model is under 18: I,______, am the parent/legal
guardian of the individual named above, I have read
this release and approve of its terms.
Model Release - (Limited)

Excerpt:

For valuable consideration, Photographer and Model agree
as follows:
1. Photographer hereby grants Model the limited right to use and
reproduce any and all photographs (the “Photos”)taken on the
above shoot date for non-commercial purposes as set forth
below. Model hereby grants Photographer the right to use
Model’s name, image and likeness in connection with the
Photos as set forth below and hereby releases and discharges
Photographer from any and all liability for any claims
associated therewith.
Photography in Public Places: First Amendment
Issues


Though not unlimited, we enjoy a broad right under the 1st Amendment to
take photographs while in public places such as streets, sidewalks, and
parks.
The State’s right to restrict your ability to do so is very limited; the most
common “excuses” are:

To preserve public safety;

To ensure the flow of traffic; and

To maintain the orderly movement of pedestrians.

The burden is on the State to justify these restrictions.

Some buildings, however, are special…
Property Releases

Over the last few decades, some buildings have
earned protection under both trademark and
copyright law
Protection Under trademark is very limited  would
apply to buildings that function as source identifiers i.e.
Transamerica Building, Sears Tower
 Thus, to use images of them for commercial purposes, you
need the building’s permission  otherwise you may
cause consumer confusion
 You can use them for informational or educational
purposes freely.

Property Releases

Particular Architectural works may qualify for
Copyright protection
The building or architectural work must have been
created after March 1, 1989
 You don’t need a release if you take a photo of it from a
public place. 17 U.S.C. § § 101, 120.


Thus, to take a commercial photo of a trademark
protectable building, or a photo of a copyrightprotectable building from a private location, you
need a Property Release Agreement.
Sample Property Release
Property Release Agreement
The Property: ___________________________________________________________________________
Grant
For consideration which I acknowledge, I irrevocably grant to _______________________________________ ("Company")
and Company's assigns, licensees and successors the right to enter onto the property listed above and to photograph, copy,
publish, display and use images of the property in all forms and media including composite or modified representations
throughout the world and in perpetuity for the following purposes: ____________________________________
I waive the right to inspect or approve the manner in which the images of the property are used and waive the right to inspect
any text that is used in connection with the images of the property.
Dates of Use
Company shall enter onto the property on the following dates and times: ______________________________
In consideration for the rights granted under this Agreement, Company shall pay me $____________________ upon execution
of this Agreement.
Company is not obligated to utilize any of the rights granted in this Agreement.
Warranty, Indemnity & Release I warrant that I am the owner of the property and have the authority to grant the rights under
this agreement and agree to indemnify Company from any claims regarding my ownership of the property. I release Company
and Company's assigns, licensees and successors from any claims that may arise regarding the use of the images of the
property.
I have read and understood this agreement. This Agreement expresses the complete understanding of the parties.
Owner's Signature: ______________________________________________________________________
Owner's Name: _________________________________________________________________________
Owner's Address: _______________________________________________________________________
Date: _________________________________________________________________________
© NOLO, available at
http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview/chapter12/12-d.html
As a Photographer, you should…





Be aware of whether your particular photo arrangement
necessitates a Property Release Agreement, and get one if it does!
When photographing in a public place, ensure you are “on”
something that closely resembles a typical sidewalk or street
Before filming, contact the venue and inform them of your intentions
 you want to prevent/mitigate any confrontation.
Local authorities may have published guidelines they would like
photographers to follow
If you are denied access or removed, do not resist! Get as much
information from security / police / property attendants as possible,
and afterwards seek relief through either their superiors or, if
necessary, a court order.
Questions?

Contact Info (www.saperlaw.com) :