Presentation for CAPIC (June 17, 2014)
© 2014 Dan Pollack Law

Overview of U.S. Copyright Law
 National Treatment: U.S. a party to the Berne Convention – works originating in a signatory country (such as Canada) get the same treatment as U.S. works.
 Copyright Registration:
 Registration with the U.S. Copyright Office – registration required for a “U.S. work” to bring infringement claim. U.S. work = first published in the U.S. or published simultaneously in U.S. and Berne Convention signatory country.
 Publication via the Internet = simultaneous publication?

Overview of U.S. Copyright Law
 Statutory Damages: U.S. copyright registration required to obtain statutory damages and attorneys’ fees and costs – even for non-U.S. works.
 Statutory damages range from $750 to $30,000 per infringement and up to
$150,000 if the infringement is willful.
 Can be reduced to $200 per infringement if Defendant satisfies burden that infringement is “innocent” – objective standard.
 Need to register before infringement or within 3 months of publication to obtain statutory damages. If not timely registered, only entitled to actual damages.

Overview of U.S. Copyright Law
 Notice and Takedown: service provider required to remove infringing work. List of service providers and contact info at Copyright Office website: http://www.copyright.gov/onlinesp/
 Removal of CMI Claims: can also bring claim for removing or falsifying copyright management information (CMI) under the DMCA.
 CMI includes copyright notice, title and information identifying the work (metadata), author / copyright owner’s name.
 Up to $25,000 per violation.
 Doesn’t require registration, but requires intentional removal.

Overview of U.S. Copyright Law
 Term: Life of author + 70 years; 95 years from publication or 120 years from creation for “work-for-hire”.
 Moral Rights: no moral rights in photographs unless they are only produced for exhibition and exist in single copies or limited signed and numbered editions (VARA –
Visual Artists Rights Act). VARA doesn’t refer to “moral rights”, but includes rights of attribution and integrity of the work.

Important Cases for Photographers
 Facts: Morel (photographer) took pictures of Haiti earthquake and posted on Twitter. Twitter user
(Suero) reposted photos on his account and took credit. AFP republished and licensed to Getty. Morel sued AFP and Getty for copyright infringement.
 Law: AFP claimed they were granted broad rights through Twitter TOS. Court disagreed – Twitter
TOS may provide rights to Twitter and users to “re-tweet”, but does not create a broad license for 3 parties to license or monetize content posted to Twitter. Author still retains copyright ownership. rd
 Getty not shielded by DMCA because not a “service provider” in this context – licensed images.
 Damages: $1.2 million for 8 images – maximum statutory damages based on willful infringement.
 Key Point: social media not a free-for-all! Maximum damages award despite removal of images after discovering mistake (but not immediate); blame photographer strategy backfired.

Important Cases for Photographers
Morel v. Agence France Presse and Getty Images
Montage of newspapers that used Morel photograph of Haiti earthquake without permission, courtesy of PetaPixel.

Important Cases for Photographers
Cariou v. Prince (2013)
 Facts: Cariou (photographer) published book of photos of Rastafarians. Prince
(“appropriation artist”) used 30 Cariou photos in a series of paintings – added elements, but photos still appeared in his works. Sold 8 of the works for $10MM+ at art show. Cariou sued for copyright infringement and Prince claimed fair use.
 Trial court agreed with Cariou – not fair use because Prince’s works did not
“comment” on Cariou’s works. Prince testimony harmful re: “I wasn’t trying to create anything new.” Prince appealed.

Important Cases for Photographers
Cariou v. Prince (2013)
 Appeal: Prince wins most of case on appeal. Court finds that most of his works (25 of 30) were “transformative” and trial court over-emphasized “comment” aspect – sent back to trial court for 5 of the works (case now settled).
 Concluded that Prince’s work “manifests an entirely different aesthetic”; Prince’s testimony irrelevant; commercial, but transformative trumps.
 Key Takeaways: broad interpretation of fair use and transformative aspect trumps other criteria; trial court was wrong, but unusual to not send the whole case back to trial court – aggressive approach for appellate court to analyze the works and make conclusions about which works are sufficiently transformative.

Important Cases for Photographers
Left, a photo from Patrick Cariou's "Yes, Rasta" series and, right,
“Graduation” from Prince's "Canal Zone" series (image via The
Art Newspaper) (this work remanded to trial court re: fair use)

Important Cases for Photographers
“Back to the Garden” by Richard Prince (qualifies for fair use)

Important Cases for Photographers
 Facts: Sculptor (Gaylord) created Korean War Veteran Memorial sculpture. USPS purchased rights to photo of sculpture and used it in a stamp. Gaylord sued USPS for copyright infringement. USPS claimed fair use.
 Law: Trial court found it was fair use because photo was transformative – new and different character and expression than the sculpture.
 Appellate court reversed and held it was not fair use – sculpture covered in snow and muting colour not enough to make it transformative; also commercial because
USPS grossed $17MM from sale of stamp.
 Takeaways: Get a release! Emphasized in the Court of Appeal decision.

Important Cases for Photographers

Important Cases for Photographers
Alaska Stock v. Houghton Mifflin Harcourt (2014)
 Background: stock photo agencies register images as automated database compilations – include thousands of images by different photographers without listing names and titles. Based on recommendation from Copyright Office to PACA. Example: “Alaska Stock CD Catalog 4” by John Doe,
Jane Doe & 100 others”.
 Facts: HMH exceeded scope of licenses and AS sued for infringement. HMH moved to dismiss based on inadequate registrations – failed to comply with Copyright Act requirements re: listing author names, image titles, dates of publication, etc.
 Law: trial court agreed with HMH based on other trial court decisions – dismissed the case and Alaska
Stock appealed.
 Court of Appeal reversed decision and found that registrations protected rights in individual works – should defer to Copyright Office – authority to allow group registration for related works and the single registration complied with the Copyright Act requirements.

Important Cases for Photographers
 Key quote: “We are not performing a mere verbal, abstract act when we construe the Copyright Act. We are affecting the fortunes of people, many of whose fortunes are small … The livelihoods of photographers and stock agencies have long been founded on their compliance with the Register’s reasonable interpretation of the statute. Their reliance upon a reasonable and longstanding administrative interpretation should be honored. Denying the fruits of reliance by citizens on a longstanding administrative practice reasonably construing a statute is unjust.”
 Key takeaways: important case if you use stock agencies to register images; defer to
Copyright Office – will not invalidate registrations based on “technicality”.

Important Cases for Photographers
 Seltzer v. Green Day (2013) (fair use) – use of Seltzer’s “scream” poster in live tour video is fair use – similar to Cariou re: transformative analysis.
 Leonard v. Stemtech (2013) (damages) – jury awarded $1.6MM in actual damages for use of two SEM images. Defendant provided images to distributors and used in variety of media. Plaintiff didn’t register the images until after infringement so only entitled to actual damages, but huge verdict.
 Kernel Records Oy v. Mosley (2012) (jurisdiction and registration) – NZ record company sued Timbaland for using music made available on Australian music website.
Court found that record company had to register because failed to show that it was not simultaneously published in US. When in doubt, register in the US!

 Photographers can register a collection of multiple images on the same registration.
 Online registration process – go to http://www.copyright.gov/fls/fl107.html
 Lot of helpful resources at Copyright Office website.
 Inexpensive - $35 to register online (including multiple image registrations).

 Enforcement: options include cease and desist; DMCA; requesting compensation.
Recommend speaking with a lawyer if unfamiliar with U.S. copyright law and sending cease & desist letter, but definitely speak with a lawyer if you are seeking compensation and you want to keep litigation options open.

dan@danpollacklaw.com
www.danpollacklaw.com
© 2014 Dan Pollack Law