Copyright Infringement: Photographer Sues News Corp, Fox News Over Assata Shakur Photograph

In Buford v. News Corp, complaint here the plaintiff photographer has sued Fox News and Dow Jones over the use of an allegedly rare photograph of the fugitive Assata Shakur (aka Joanne Chesimard).

According to the complaint, there is a one million dollar reward out for Shakur by the FBI because she killed a NJ State Trooper in 1973.   She was granted asylum by Cuba.   The photographer travelled to Cuba and took Shakur's photographer.   Because of the difficulty of accessing Shakur, the photograph is alleged to be very valuable.

The O'Reilly Factor on Fox and the Jon Stewart show allegedly used the photograph with a caption mentioning the murder of the state trooper.

Fox News criticized the Obama Administration for inviting rapper Common who had glorified Shakur's murder of the state trooper in a song, story here.   More from assata.org, in which Assata discusses a "Nazi subculture" in the New Jersey police here.

The complaint claiming copyright infringement is here.

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Third Circuit: Copyright Infringement - Removing Photographer's Name from Image Violates DMCA

In Murphy v. Millenium Radio, 2011 WL 2315128 (3d Cir. June 14, 2011), the Third Circuit is the first court of appeals to reach the question of whether removing an author's name from a photograph constitutes a violation of section 1202 of the Digital Millenium Copyright Act 17 U.S.C. 1202.  The Third Circuit noted a disagreement among district courts on the question.

The case involves a photographer who took photographs of WKXW radio personalities Craig Carton and Ray Rossi for a magazine (picture above).  The shock jocks posed naked behind signs covering their privates.  A WKXW employee scanned the photographic image, uploaded it, and the radio station invited listeners to digitally modify the image for a competition.

When the image was uploaded, a "gutter credit" (inner margin) from the magazine containing the photographer's name was removed.

The Third Circuit reversed the trial court's grant of summary judgment, permitting the DMCA 1202 claim to proceed.   The Third Circuit also permitted a defamation claim to proceed, Rossi and Carton allegedly called the photographer a homosexual and destroyed transcripts of the show.

The Third Circuit's decision and 17 U.S.C. 1202 and 17 U.S.C. 1203 below:


 § 1202. Integrity of copyright management information3


(a) False Copyright Management Information. — No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement —
(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management information that is false.
(b) Removal or Alteration of Copyright Management Information. — No person shall, without the authority of the copyright owner or the law —
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.
(c) Definition. — As used in this section, the term “copyright management information” means any of the following information conveyed in connection with copies or phonorecords of a work or performances or displays of a work, including in digital form, except that such term does not include any personally identifying information about a user of a work or of a copy, phonorecord, performance, or display of a work:
(1) The title and other information identifying the work, including the information set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author of a work.
(3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.
(4) With the exception of public performances of works by radio and television broadcast stations, the name of, and other identifying information about, a performer whose performance is fixed in a work other than an audiovisual work.
(5) With the exception of public performances of works by radio and television broadcast stations, in the case of an audiovisual work, the name of, and other identifying information about, a writer, performer, or director who is credited in the audiovisual work.
(6) Terms and conditions for use of the work.
(7) Identifying numbers or symbols referring to such information or links to such information.
(8) Such other information as the Register of Copyrights may prescribe by regulation, except that the Register of Copyrights may not require the provision of any information concerning the user of a copyrighted work.
(d) Law Enforcement, Intelligence, and Other Government Activities. — This section does not prohibit any lawfully authorized investigative, protective, information security, or intelligence activity of an officer, agent, or employee of the United States, a State, or a political subdivision of a State, or a person acting pursuant to a contract with the United States, a State, or a political subdivision of a State. For purposes of this subsection, the term “information security” means activities carried out in order to identify and address the vulnerabilities of a government computer, computer system, or computer network.
(e) Limitations on Liability. —
(1) Analog transmissions. — In the case of an analog transmission, a person who is making transmissions in its capacity as a broadcast station, or as a cable system, or someone who provides programming to such station or system, shall not be liable for a violation of subsection (b) if —
(A) avoiding the activity that constitutes such violation is not technically feasible or would create an undue financial hardship on such person; and
(B) such person did not intend, by engaging in such activity, to induce, enable, facilitate, or conceal infringement of a right under this title.
(2) Digital transmissions. —
(A) If a digital transmission standard for the placement of copyright management information for a category of works is set in a voluntary, consensus standard-setting process involving a representative cross-section of broadcast stations or cable systems and copyright owners of a category of works that are intended for public performance by such stations or systems, a person identified in paragraph (1) shall not be liable for a violation of subsection (b) with respect to the particular copyright management information addressed by such standard if —
(i) the placement of such information by someone other than such person is not in accordance with such standard; and
(ii) the activity that constitutes such violation is not intended to induce, enable, facilitate, or conceal infringement of a right under this title.
(B) Until a digital transmission standard has been set pursuant to subparagraph (A) with respect to the placement of copyright management information for a category of works, a person identified in paragraph (1) shall not be liable for a violation of subsection (b) with respect to such copyright management information, if the activity that constitutes such violation is not intended to induce, enable, facilitate, or conceal infringement of a right under this title, and if —
(i) the transmission of such information by such person would result in a perceptible visual or aural degradation of the digital signal; or
(ii) the transmission of such information by such person would conflict with —
(I) an applicable government regulation relating to transmission of information in a digital signal;
(II) an applicable industry-wide standard relating to the transmission of information in a digital signal that was adopted by a voluntary consensus standards body prior to the effective date of this chapter; or
(III) an applicable industry-wide standard relating to the transmission of information in a digital signal that was adopted in a voluntary, consensus standards-setting process open to participation by a representative cross-section of broadcast stations or cable systems and copyright owners of a category of works that are intended for public performance by such stations or systems.
(3) Definitions. — As used in this subsection —
(A) the term “broadcast station” has the meaning given that term in section 3 of the Communications Act of 1934 (47 U.S.C. 153); and
(B) the term “cable system” has the meaning given that term in section 602 of the Communications Act of 1934 (47 U.S.C. 522).

§ 1203. Civil remedies4

(a) Civil Actions. — Any person injured by a violation of section 1201 or 1202 may bring a civil action in an appropriate United States district court for such violation.
(b) Powers of the Court. — In an action brought under subsection (a), the court —
(1) may grant temporary and permanent injunctions on such terms as it deems reasonable to prevent or restrain a violation, but in no event shall impose a prior restraint on free speech or the press protected under the 1st amendment to the Constitution;
(2) at any time while an action is pending, may order the impounding, on such terms as it deems reasonable, of any device or product that is in the custody or control of the alleged violator and that the court has reasonable cause to believe was involved in a violation;
(3) may award damages under subsection (c);
(4) in its discretion may allow the recovery of costs by or against any party other than the United States or an officer thereof;
(5) in its discretion may award reasonable attorney's fees to the prevailing party; and
(6) may, as part of a final judgment or decree finding a violation, order the remedial modification or the destruction of any device or product involved in the violation that is in the custody or control of the violator or has been impounded under paragraph (2).
(c) Award of Damages. —
(1) In general. — Except as otherwise provided in this title, a person committing a violation of section 1201 or 1202 is liable for either —
(A) the actual damages and any additional profits of the violator, as provided in paragraph (2), or
(B) statutory damages, as provided in paragraph (3).
(2) Actual damages. — The court shall award to the complaining party the actual damages suffered by the party as a result of the violation, and any profits of the violator that are attributable to the violation and are not taken into account in computing the actual damages, if the complaining party elects such damages at any time before final judgment is entered.
(3) Statutory damages. — (A) At any time before final judgment is entered, a complaining party may elect to recover an award of statutory damages for each violation of section 1201 in the sum of not less than $200 or more than $2,500 per act of circumvention, device, product, component, offer, or performance of service, as the court considers just.
(B) At any time before final judgment is entered, a complaining party may elect to recover an award of statutory damages for each violation of section 1202 in the sum of not less than $2,500 or more than $25,000.
(4) Repeated violations. — In any case in which the injured party sustains the burden of proving, and the court finds, that a person has violated section 1201 or 1202 within three years after a final judgment was entered against the person for another such violation, the court may increase the award of damages up to triple the amount that would otherwise be awarded, as the court considers just.
(5) Innocent violations. —
(A) In general. — The court in its discretion may reduce or remit the total award of damages in any case in which the violator sustains the burden of proving, and the court finds, that the violator was not aware and had no reason to believe that its acts constituted a violation.
(B) Nonprofit library, archives, educational institutions, or public broadcasting entities. —
(i) Definition. — In this subparagraph, the term “public broadcasting entity” has the meaning given such term under section 118(g).
(ii) In general. — In the case of a nonprofit library, archives, educational institution, or public broadcasting entity, the court shall remit damages in any case in which the library, archives, educational institution, or public broadcasting entity sustains the burden of proving, and the court finds, that the library, archives, educational institution, or public broadcasting entity was not aware and had no reason to believe that its acts constituted a violation.

§ 1204. Criminal offenses and penalties5

(a) In General. — Any person who violates section 1201 or 1202 willfully and for purposes of commercial advantage or private financial gain —
(1) shall be fined not more than $500,000 or imprisoned for not more than 5 years, or both, for the first offense; and
(2) shall be fined not more than $1,000,000 or imprisoned for not more than 10 years, or both, for any subsequent offense.
(b) Limitation for Nonprofit Library, Archives, Educational Institution, or Public Broadcasting Entity. — Subsection (a) shall not apply to a nonprofit library, archives, educational institution, or public broadcasting entity (as defined under section 118(g)).
(c) Statute of Limitations. — No criminal proceeding shall be brought under this section unless such proceeding is commenced within five years after the cause of action arose.









Murphy v Millenium Radio

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June 15, 2011 - Copyright and Fine Art Presentation Tomorrow at National Arts Club

I hope that you will join me tomorrow night at this event, there is no charge for attendance.


National Arts Club
The Photography Committee Presents

Copyright and Fine Art
Wednesday, June 15, 8 PM

15 Gramercy Park South (east of Park Avenue South @ 20th Street
Fine art and the copyright laws have always had an uneasy relationship. Artists should be free to use their surroundings as raw material for free expression. But shouldn’t artists get paid for their creativity? And what happens when we live in a media world and our surroundings are locked down by copyright? Should an artist have the power to use the courts to seize and destroy another artist’s work? Join us as attorney Ray Dowd takes us on a visually-driven exploration of creativity at the cutting edge and the fate of “appropriation artist” Richard Prince in the ongoing lawsuit with French photographer Patrick Cariou.

Raymond J. Dowd is the author of Copyright Litigation Handbook (West 5th Ed. 2010). He is Co-Chair of the Art Litigation and Dispute Resolution Institute at the New York County Lawyers’ Association. He is an attorney in private practice with Dunnington, Bartholow & Miller LLP a firm with practices in trusts & estates, litigation, copyright, trademark and art law.



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Photobucket Not Required To Actively Police Site For Infringements

Photobucket - 8 billion photos online

In Wolk v. Kodak Imaging Network Inc., 10 Civ. 4135 (RWS) (SDNY March 17, 2011), Judge Robert Sweet found that Photobucket, an internet service provider, was protected by the "safe harbor" provisions of the Digital Millenium Copyright Act ("DMCA"). 17 USC 512(c).

Essentially, the DMCA requires an internet service provider ("ISP") to set up policies to respond to complaints from copyright owners when a third party stores infringing materials on their site.   The complaints, or takedown notices, must specifically inform the ISP where the infringing material is.

Photographer Sheila Wolk sent numerous takedown notices to Photobucket.  Her images, excerpted above from her website, are unusual and distinctive.  All infringing materials that she specifically identified were removed.   But the infringements kept popping up and Wolk got fed up and sought an injunction.

Judge Sweet's decision denied Wolk's application and her attempt to force Photobucket to install an electronic fingerprinting system to catch infringers.

Professor Eric Goldman warns copyright owners against being lazy in sending out takedown notices here, Marty Schwimmer's Trademark Blog is skeptical about Photobucket's alleged inability to screen its content here.

Wolk v Photobucket

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Copyright and Rights of Publicity in the Stolen Scream

The Stolen Scream: A Story About Noam Galai from FStoppers on Vimeo.


Thanks to Patrick Hall @phfactorblog for pointing the Copyright Litigation Blog to this interesting meditation of a man whose copyrighted image of himself was stolen by thousands around the world and his mixed feelings as an artist.   Great video.

A photographer owns the copyright in the image he creates.

In some jurisdictions and to some degrees, a person may own their "right of publicity" - that is the right to use their name or image in commerce.

You will enjoy Noam Galai's story and be astonished at the extraordinary revolutionary power of one man's photograph....and the power of the internet.

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Jimi Hendrix - Dead Celebrity Rights of Publicity Not Resurrected By Washington State Law

In Experience Hendrix, LLC v. Hendrixlicensing.com, (W.D.Wa. Feb. 8, 2011 (Zilly, J.), a federal judge in the Western District of Washington struck down as unconstitutional a Washington State law that attempted to grant dead celebrities, including Jimi Hendrix, a posthumous right of publicity.

I have previously discussed rights of publicity (also known as rights of privacy) here and here and here.
Jimi Hendrix died in New York. New York does not grant a posthumous right of publicity. That has created major litigation in the past over, for example, Marilyn Monroe's image and name. Hendrix was not a Washington State domiciliary, so granting his estate a right of publicity would effectively have created a right that conflicted with New York law.

The court engaged in a careful choice of law (conflicts of law) analyis. It used the principle of "depecage" (I don't have a circonflexe on this blog).  "Depecage" means parsing out the law of each juridisction that may govern an issue in a case.  Courts rarely go this deeply and thoughtfully into choice of law analyses, so the opinion is noteworthy in that aspect.

The decision is also noteworthy in that it carefully unbundles the various rights that may be caught up in licensing someone else's name and image including trademark and copyright.

For example, if you have a photograph of Jimi Hendrix, it may be "nominative fair use" to use Hendrix's name to identify the photograph, even if someone else owns the Hendrix trademark.

The estate of Elvis, who died in Tennessee, has the right to exploit his name and image under Tennessee law.

Be careful before paying a lot of money for a license to ensure that the rights really exist.   Similarly, when accused of infringement, take a careful look at the underlying intellectual property claims.
Jim Hendrix and Rights of Publicity for Dead Celebrities: Experience Hendrix v Hendrixlicensing.com


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Copyright Law: Removing Copyright Management Information from Photographs May Violate DMCA and Lanham Act

 Selfmadephoto.com

In Cable v. Agence France Presse, 2010 WL 2902074 (N.D. Ill. July 20, 2010), a photographer sued Agence France Presse for violations of the Digital Millenium Copyright Act 17 USC 1202 and the Lanham Act.  The violation alleged was that AFP removed the photographer's name, copyright notice and a "hotlink" to his website that were embedded in the photographs, then resold or reused the photographs.

AFP moved to dismiss, claiming that the photographer's name, copyright notice and hotlink were not "copyright management information" as intended by the DMCA.  AFP argued that "copyright management information" referred to copyright management performed by technological systems.

The court rejected AFP's argument and declined to dismiss the claim based on a DMCA violation.   The court also upheld a Lanham Act claim based on the same facts, finding that a claim for "reverse passing off" had been alleged, relying on the Supreme Court's Dastar case.

The DMCA - 17 USC 1202 - provides in relevant part:

§ 1202. Integrity of copyright management information3



(a) False Copyright Management Information. — No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement —

(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management information that is false.


(b) Removal or Alteration of Copyright Management Information. — No person shall, without the authority of the copyright owner or the law —
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

(c) Definition. — As used in this section, the term “copyright management information” means any of the following information conveyed in connection with copies or phonorecords of a work or performances or displays of a work, including in digital form, except that such term does not include any personally identifying information about a user of a work or of a copy, phonorecord, performance, or display of a work:
(1) The title and other information identifying the work, including the information set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author of a work.
(3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.
(4) With the exception of public performances of works by radio and television broadcast stations, the name of, and other identifying information about, a performer whose performance is fixed in a work other than an audiovisual work.
(5) With the exception of public performances of works by radio and television broadcast stations, in the case of an audiovisual work, the name of, and other identifying information about, a writer, performer, or director who is credited in the audiovisual work.
(6) Terms and conditions for use of the work.
(7) Identifying numbers or symbols referring to such information or links to such information.
(8) Such other information as the Register of Copyrights may prescribe by regulation, except that the Register of Copyrights may not require the provision of any information concerning the user of a copyrighted work.
More on the DMCA here and here.

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Fair Use Fridays: Hula Photo Infringement?

Is making a stained glass window substantially similar to a copyrighted photograph fair use?  Does it matter that the pose and costume is part of an ancient hula tradition?   Copyright meets cultural heritage.  Compare, decide and read what the court said.  Last December I attended the first annual Federal Bar Association Hawaii Chapter Conference and got a chance to discuss the case with the judge who decided it.  I hope to go to Hawaii again this December, it is probably the best place in the world to get CLE credit and talk to federal judges bedecked in leis...

Reece v. Island Treasures Art Gallery, Inc., 2006 WL 3804685 (D. Haw. 2006).

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Fair Use Fridays: Statue of Liberty in Public Domain

Fair use Friday photo of yours truly by NY real estate guru Paolo Zampolli.  Good example of photographing a public domain sculpture (the copyright expired) and a U.S. government work - the U.S. flag (not subject to copyright).   Despite Paolo's best efforts and the tour of New York Harbor on his luxury speedboat, I did not purchase the Statue of Liberty, despite the excellent price Paolo offered. :-)

Italicized text and images below from http://www.loc.gov/wiseguide/oct04/statue.html

Designed and executed by French sculptor Frederic Auguste Bartholdi, the Statue of Liberty was presented by the people of France to the people of America to honor the friendship between the two nations. The statue's significance has broadened over the years, and it is now recognized throughout the world as a symbol of liberty and freedom. Erected on Bedloe's Island in New York Harbor and dedicated on Oct. 28, 1886, the statue has stirred the emotions of millions.

On Aug. 31, 1876, the Copyright Office issued copyright registration number 9939-G for the "Statue of American Independence" as the Statue of Liberty was first named. The copyright claim was filed in America's centennial year, a decade before the statue was erected in New York Harbor. Deposited with the application in the Copyright Office were two rare images. The first is a photograph of the artist's final study model, believed to be executed in terra cotta. The second image is an artistic rendering of how the statue would appear against the New York skyline after it was finally erected on the pedestal designed by architect Richard M. Hunt. This second image has great significance because it shows a very early version of the statue that most people would not recognize. In the original design, the Statue of Liberty is shown holding in her left hand a broken chain and shackle, which represent freedom newly achieved. Bartholdi later made a major change to his design by placing the chain and shackle, symbolically broken by Liberty, at her feet. He then positioned the familiar tablet, inscribed "July IV, MDCCLXXVI" (July 4, 1776), in her left hand.

In 1984, curators working on the Copyright Office exhibition "By Securing to Authors: Copyright, Commerce and Creativity in America" came across this copyright with rare attached documentation. The historic images described above are on permanent display in the exhibit on the fourth floor of the Madison Building (Monday - Friday, 8:30 a.m. to 5 p.m.), along with documentation for the copyright on the pedestal.


Many images and renderings of the Statue of Liberty, including some that reveal interesting details of this symbol of American freedom, are in the Prints and Photographs Online Catalog. Just type "Statue of Liberty" in the search box. The Historic American Buildings Survey has also documented this work extensively. These images are in the American Memory collection "Built in America." Type "Statue of Liberty Liberty Island" in the search box. The 230 black-and-white photos are older images; the 51 color transparencies offer extraordinary views of the statue during its most recent restoration.


Since the copyright registration and deposit system was centralized in the Library of Congress in 1870, more than 30 million creative works have been registered for copyright protection.



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Copyright Litigation Blog on Google - Number One "Copyright Litigation" Search

Search results from Google put Copyright Litigation Blog and Copyright Litigation Handbook at number one in search engine results for the search "copyright litigation".

Thanks, Google, and thanks to everyone who enjoys the content, your readership, comments and feedback are all appreciated.

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Advice for Photographers Using Creative Commons Licenses

If you can get past the dazzling photographs to get to her legal advice, Photo Attorney has some good thoughts for photographers using Creative Commons licenses - "non-commercial use" - might be in the eye of the beholder, unless clearly defined. Photo Attorney gives a good example of the type of precision in quantity and type of reproductions and language about attribution that will avoid misunderstandings.

Defining Non-Commercial Use Photo Attorney

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SDCA: Perfect 10 v Rapidshare: Preliminary Injunction Denied Against Filesharer Despite Specfic Knowledge of Infringements

In Perfect 10 v. Rapidshare (SDCA 09 CV 2596) May 18, 2010, the District Court denied a preliminary injunction against filesharing service provider.

I visited the company's website and watched the video here.   It looks like a service that would be helpful in our law practice - we are dealing with transmittal of larger and larger files and always interested in bringing down the cost and making it faster.

I couldn't tell from watching the video on the Rapidshare homepage with the nice German accents or reading the decision exactly how the peer-to-peer filesharing (ie accessing someone else's copyrighted works) might work.

But the judge found facts radically different from those in the Limewire case, an example of a a filesharing service that appears to be a pretty good citizen and a plaintiff who seeks to put the burden of policing its content onto a neutral third party.


Perfect 10 v Rapid Share: Denial of Preliminary Injunction of Filesharer Despite Specific Knowledge of Infr...

Crisis in Copyright Registration for Photographers: New SDNY Case Points Out Need For Reform

In Muench Photography, Inc. v. Houghton Mifflin, 2010 WL 1838874 (SDNY May 4, 2010) Chief Judge Loretta Preska made an unusual foray into the world of copyright registration.  The decision, although correct, points out a glaring problem in our current copyright registration system.  It is simply too expensive for photographers and freelancers to register their copyrights.  When they try to game the system to save fees, it blows up in their faces.

It is all well and good that post-Berne we all own our copyrights, but unless we register them, we don't get statutory damages and attorneys fees.  The practical underlying issue in the Reed Elsevier v. Muchnick case recently decided by the Supreme Court was that hundreds or thousands of freelancers whose works were infringed by the NY Times and other publishers by including them on electronic databases without permission hadn't registered copyrights to their individual articles.  Most journalists still think that their publisher's registrations cover them, and it is not necessarily the case.  If a commenter has the stats at hand (there are blogs devoted to that case), I'd appreciate them.  Something like over 80 or 90% of the freelance journalist would have been shut out of the settlement if the Supreme Court hadn't reversed.

Muench Photography deals with the photographic analogue.  Most photographers don't register their copyrights.  There is a group registration process for compilations of unpublished works, so for $35 photographers may register a group.

Corbis, the image database, thought it had found a workaround.  It put the photographs of numerous photographers into what it called an "automated database" then paid only one fee.  Corbis had an agreement with the photographers that it would reconvey the rights to the photographs once they were registered.  So Corbis could register 1,000 photos and pay only one filing fee.

But the problem is that Corbis registered under a provision that provided for the collective registration by a single author only.  Since group registration is limited to unpublished collections this was probably seen as a workaround that would save photographers a fortune and put a minimal burden on Corbis.

There are not so many cases out there discussing the degree of deference that must be given to the Copyright Office (the attorney for Corbis got a letter from the Copyright Office ok'ing the procedure), so Judge Preska's opinion is worth reading, here is a small sample.

Although both serials and automated databases are considered collective works,FN7 each is governed by separate registration requirements. Serials are governed by 37 C.F.R. § 202.3(b)(6) as well as Circular 62.FN8 Automated databases, on the other hand, are governed by 37 C.F.R. § 202.3(b)(5) and Circular 65. Neither Circular 65 nor § 202.3(b)(5) contains language similar to that found in Circular 62, i.e., that the copyright registration filed by the claimant extends to the independently contributed works if all of the rights in the work have been transferred to the claimant. Moreover, any argument that the registration of the automated databases, considered compilations, covers the individual works of the compilation pursuant to § 103 is belied by the text of § 103 which states that “copyright in a compilation or derivative work extends only to the material contributed by the author.” 17 U.S.C. § 103(b) (emphasis added). The cases MPI cites to support its reading of the statute only underscore the fact that the registration of a collective work reaches the individual works only when the author of the collective work authored each of the individual works. E.g., Szabo v. Errisson, 68 F.3d 940 (5th Cir.1995) (musician's registration of his collection covered each of his individual songs which comprised the collection); Educ. Testing Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir.1986) (“[T]he fact that the registration was for compilations does not preclude protection for the material therein contributed by the author.”); Carell v. Shubert Org., Inc., 104 F.Supp.2d 236 (S .D.N.Y.2000) (group registration of makeup designs covered individual works, but copyright owner was designer of individual designs within the group); Woods v. Universal City Studios, Inc., 920 F.Supp. 62, 64 (S.D.N.Y.1996) (author who filed registration for collective work was the same author of the individual works that were the subject of the infringement). Accordingly, the Court rejects MPI's interpretation of the Copyright Act.

Judge Preska was constrained by the statute and regulations to make the decision she did and noted that it might not have been the wisest policy choice on Congress' part.

Photographers and freelance journalists need legislative relief to make registration affordable and sensible.  Paying $35,000 and filling out the paperwork to register 1,000 images is prohibitive and is not justifiable in today's digital economy.

Free Copyright Society Event on Licensing in the Digital Age - May 18 2010

The Copyright Society of the U.S.A. is pleased to invite you to a program on


Tuesday, May 18, 2010, entitled:

LICENSING IN THE DIGITAL AGE:
DEALS, RISKS, AND CHALLENGES IN PHYSICAL AND VIRTUAL MEDIA

Licensing is a powerful tool generating billions in revenue. However, the risks and complexities of licensing have multiplied in recent years as new technologies have created new marketing platforms in the physical and virtual worlds. To help you understand, navigate and succeed in this new marketplace, the Copyright
Society of the U.S.A. has assembled a distinguished panel of licensing
practitioners that will provide you the practical guidance you need.

Location and Date of the Program:
May 18, 2010 at Anchin, Block & Anchin LLP
1375 Broadway, New York City, 23rd Floor (located at 37th and Broadway).

Time:

6:00 p.m. -- 6:30 p.m. Registration, networking and light refreshments
6:30 p.m. -- 8:00 p.m. Program

There is no charge to attend this program.
To Register, Please use the attached form.

Registration deadline is Wednesday May 12, 2010.

Panelists:

Mary Beth Roberts will discuss the dramatic changes in music licensing and how music publishers are attempting to capitalize on them. She will talk about how copyright owners, faced with a decline in traditional royalties caused partially by music piracy, have gained new sources of revenue from third parties who increasingly use music to enhance and exploit their brands.

Mary Beth Roberts founded High Standards Unlimited, a consulting business for
international and domestic music licensing. She was formerly VP of Catalogue Development at Sony/ATV and Famous Music Publishing. For over 20 years, she led concept development, copyright placement, marketing, negotiations and licensing of music used in synchronization, consumer products, new media, wireless entertainment and internet marketing.

Joseph Salvo will talk about licensing in the consumer products/entertainment area from a business and legal perspective. He will discuss the negotiating techniques licensors and licensees use to maximize their leverage. Joe will also discuss the legal strategies licensors may wish to use to protect and enhance their company’s intellectual property rights.

Joseph Salvo is Senior Vice President and Global General Counsel at HIT Entertainment, an international entertainment company that owns such preeminent pre-school brands as Barney, Thomas the Tank, Bob the Builder and Angelina Ballerina. He is involved in all forms of production and licensing, including television, film, audio, home video and consumer products.

Jonathan Wells will talk about the licensing of photographs and videos in the rapidly evolving physical, digital and virtual markets. Jonathan will also focus on the special concerns that arise when clients license internationally.

Jonathan Wells is the bureau chief of the New York office of Paris-based SIPA Press and oversees its licensing activities and production activities here. SIPA Press covers world news with a staff of photographers, a network of correspondents and distribution agreements with the Associated Press and other agencies around the globe.

Commentator:

Marc Federbush, CPA, is partner-in-charge of Anchin’s Apparel, Textile, Diamond and Jewelry Services Group. He will comment on the strategies that owners and licensees may use to protect themselves from unwanted disputes and costly litigation.

Andrew Berger will moderate the program. He is a copyright/trademark lawyer at the New York firm of Tannenbaum Helpern Syracuse & Hirschtritt. He is also a frequent speaker on intellectual property topics and writes a blog on IP issues at www.ipinbrief.com.

The Copyright Society of the U.S.A. is a center of the U.S. copyright community for business people, lawyers in private practice and in-house, law professors and law students who share a common interest in copyright and related intellectual property rights. A not-for-profit corporation founded
in 1953, the Society works to advance the study and understanding of
copyright law and related rights, the scope of rights in literature, music,
art, theater, motion picture, television, computer software, architecture,
and other works of authorship, and their distribution via both traditional
and new media.

The Copyright Society of the USA
352 Seventh Avenue Suite 739
New York NY 10001
P: 212 354-6401
F: 212-354-2847
W: www.csusa.org
E: amy@csusa.org

11th Cir: Copyright Owners Deliver Artworks At Their Peril - Implied License Doctrine Swallows Copyright Act

The Copyright Act provides:

Detail from Todd Latimer's Midnight Rider - Full image here.

§ 202. Ownership of copyright as distinct from ownership of material object


Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied. Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

(emphasis supplied).

§ 204. Execution of transfers of copyright ownership


(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.


The 11th Circuit basically tossed out the bolded language in a recent decision captioned Latimer v. Roaring Toyz, Inc., 2010 WL 1253090 (11th Cir. April 2, 2010) and radically expanded the doctrines of implied license and constructive delivery.

Here's the scenario, wildly oversimplified: 

Artist paints artwork onto motorcycle.  Knows it will be used in photography, stream of commerce.  Motorcycle company gets no release.  Artist is not plaintiff, has nothing to do with the case, but 11th Circuit spends a lot of time on him.

Plaintiff is motorcyle photographer.  Takes photos at motorcycle company's request.  Orally grants certain publication rights and thinks he owns/reserves the rest.  Photographer has granted first publication rights to Two Wheel Tuner mag.   Instead of distributing his high quality digital files per his instructions, company distributes them to press who unwittingly publish them, including defendant Hachette's Cycle World.

Motorcycle company who uses photos claims that they were unauthorized derivative works because the photographer didn't have a release from the guy who made the paintings on the motorcycle.

11th Circuit finds that the fact that motorcyle photographer delivered photographs without clear reservation of rights grants an implied license to motorcycle company to do whatever it likes.   FURTHER finds that anyone downstream has "constructive delivery" from the photographer and can do whatever they like without getting written permission.

Here is the 11th Circuit's new rule:

"Thus, an implied license will be limited to a specific use only if that limitation is expressly conveyed when the work is delivered"

In other words, if you deliver your photograph to someone and YOU don't write down that they can't do whatever the heck they want with it, you lose your copyright to that person and to anyone they give it to.

This case is really a breathtaking blow to photographers who often deliver their works hoping that a potential client will fall in love and license them.   Since the photographer said he knew that Kawasaki "might" use them, the 11th Circuit threw out his affidavit as a "sham".

In other Circuits, one must generally obtain written permission to use a photograph, the implied license doctrine is narrowly construed.

In addition, the 11th Circuit held that the photographer must prove that he gave the motorcycle company a course in copyright law to prevail:

Kawasaki asserts that Latimer did not expressly communicate to Kawasaki any restrictions on the use of the photographs. However, Latimer contends that all of his communications with Kawasaki went through Roaring Toyz and that he granted Kawasaki permission to use the photographs for a specific purpose-a media display at Bike Week. Thus, the question here is whether Latimer delivered a warning adequate to put Kawasaki on notice that certain uses of Latimer's photos would constitute copyright infringement.


Latimer v. Roaring Toyz, Inc., 2010 WL 1253090, 11 (11th Cir. April 2, 2010).

It should be noted that the 11th Circuit purported to give a victory to the photographer, but the burdens of proof that have been spelled out are highly problematic and appear to be inconsistent with the plain language of the Copyright Act and a body of case law that generally puts photographers in the driver's seat when there is an unauthorized publication of their works.

The Photoattorney blog found some good news in the decision, read here.

For a wildly different view from Kevin Smith at Duke, look here.

A totally different angle at Exclusive Rights blog here.

Read on below:

LatimerVRoaringToyz

4th Circuit: Fine Art Paintings from Photographs and Actual Damages For Copyright Infringement

In Hofmann v. O'Brien, 2010 WL 675006 (4th Cir. Feb 26, 2010), the Court of Appeals for the Fourth Circuit considered the following fact scenario following a jury trial:

1. Plaintiff Douglas Hofmann is a fine art painter who works from photographs.  Hofman staged numerous photographs involving ballet dancers.   He intended to paint fine art works from the photographs.   A low res example of Hofman's work from his website.

Douglas Hofmann Master Class

2.   John O'Brien is a deceased fine art painter.  During his lifetime he took one of Hofmann's photographs without Hofmann's permission and created a painting from the photograph that was essentially a copy.   His widow, Mary O'Brien posted an image of O'Brien's painting on his website and offered prints for sale.  An example of O'Brien's work:

John O'Brien Her First Ballet

3.   A trial was held.  The jury awarded $201,550 in actual damages based on claims of conversion and copyright infringement.   Hofmann's out of pocket costs to create the photograph were $1,550.

The main issue before the court was whether the jury instructions on damages were correct and whether the jury's damage award was supported by the evidence.   Since the photograph was presumably not registred timely, Hofmann was forced to prove "actual damages" under Section 504(b) of the Copyright Act.  Section 504(b) states:

(b) Actual Damages and Profits. — The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages. In establishing the infringer's profits, the copyright owner is required to present proof only of the infringer's gross revenue, and the infringer is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.

The Fourth Circuit found that the artist had not proved actual damages sufficient to support the jury's award and reversed for remittitur or trial.   

Cases throwing out testimony relating to actual damages of a copyright are legion and proof of actual damages is notoriously difficult.    As the Fourth Circuit cautions "General claims of 'hurt feelings' or an owner's 'personal objections to the manipulation of his artwork' must not enter into the calculus'

[quoting Mackie v. Reiser, 296 F.3d 909, 917 (9th Cir. 2002)].

The decision doesn't tell us whether the widow knew that the work was infringing - a widow is not generally the best defendant, no matter what the merits of your case are.

This case reinforces the importance for artists of promptly registering copyrights with the Copyright Office so that they may be entitled to statutory damages and attorneys fees.    I discuss these issues further in Copyright Litigation Handbook - Chapter 15 - Evidence and Experts); Chapter 16 - Jury Instructions; Chapter 17 - Damages and Profits; and Chapter 18 - Costs and Attorneys Fees.

Sculpture, History, Copyright Infringement and Fair Use of the Korean War Veteran's Memorial

In Gaylord v. United States, February 25, 2010, the U.S. Court of Appeals for the Federal Circuit upheld a sculptor's right to sue the U.S. government for copyright infringement for unauthorized use of the sculptures on a postage stamp.  The Federal Circuit reversed a decision of the Federal Court of Claims that found that the U.S. government use of Gaylord's sculptures that were made for the Korean War Veteran's Memorial were "fair use".   You can visit the decision here and I recommend that you do so even if just to view the images appearing in the court's opinion.   The Court inserted the images in the body of the text of the opinion in color.  Despite the low image quality, inclusion of the images really gives the reader an opportunity to compare the images and really see what the court is talking about, which is a terrific development in technology and an outgrowth of federal courts going digital.  It is annoying to read a 20-page decision comparing images that one can't see, and we can hope that those days will soon be past.

The Gaylord case involves the United States licensing a photograph of a sculpture to use the photograph on a postage stamp.   Although the photograph was properly registered as a derivative work of Gaylord's sculpture, the U.S.P.S. neglected to license the right to use the underlying sculpture itself.

So the photographer got paid $1,500 for the photograph of the Memorial (snowy scene, great camera angle).

The Federal Circuit conducted a fair use analysis that I found problematic, and concluded that the U.S. government's use of the underlying sculptural work was not fair.

While I support a sculptor's right to commercialize his images, stopping the U.S.P.S. from issuing a stamp featuring the Korean War Veteran's Memorial without paying the sculptor again - or each time - gives the sculptor a monopoly on a work that he has made an icon of a tragic historical moment at taxpayer expense. U.S. government works of this type should be in the public domain, and the government contracting process should be fixed to ensure that taxpayers don't get soaked every time the government wishes to publish or sell images of a property like a monument symbolizing the war dead.  The sculptor dotted his copyright ps and qs, but as a matter of public policy, any of us should be able to go to any public park, take photographs and sell images of what we see, at least permanent installations.   I would thin the copyright out further to subtract all non-copyrightable elements:  government-issue ponchos, helmets, etc., apply the scenes-a-fair doctrine (there are only so many ways to depict the Korean War Veteran's Memorial).

It was not smart to commission a monument that is not a work-for-hire, or at least that permitted the government a non-exclusive license.  But the Federal Circuit didn't get the "purpose" of the work right.  If a Korean Vet's group wanted to print t-shirts with an image of the Memorial for their friends, loved ones, fundraising purposes, etc., I'd say those are all fair uses, too.  The image is of the Memorial, not the sculptures.

I have a problem, too, with giving an AP photographer a monopoly over a Presidential candidate's image -- it is too uncomfortably close to handing out a monopoly on historical facts.

Derivative Works: Photographs of Sculptural Works

In Schrock v. Learning Curve, 2009 WL 3644331, --- F.3d --- (7th Cir. Nov. 5 2009), the Seventh Circuit took up the question of whether a very simple straightforward photograph of Thomas the Train (above) is a derivative work, and if so, whether the product photographer could register his copyrights after his client's two-year license to use the photographs expired and the client continued to use the photographs.

The court found that the photographer had a narrow copyright in the photograph, that the photograph was a derivative work, and that once the copyright owner in Thomas the Train had given consent to have the work photographed, the photographer didn't require the permission of the toy company to register his copyrights.

If a court found originality in the photograph above, it sets the bar very low for photography for works of visual art because it is hard to think of a less original photograph of a toy train.

The Seventh Circuit noted that parties may limit by contract the rights of third parties to create and register derivative works and further found that the toy company, its distributor and the photographer's ultimate rights may be governed by license agreements that were not part of the record.   A clear warning to those drafting license agreements to pay attention to how products are promoted and distributed.

ICANN Copyright Registration? Yes We Can!

Professional photographer Dan Heller has written a very thoughtful and constructive piece about how the Copyright Office might incorporate ICANN-type concepts into the copyright registration process found here. I am a big fan of the Copyright Office in many ways. Unlike many, I usually see attempts to "privatize" government functions as a way to steal from taxpayers and undermine the professional civil service. For example, I think HMO's are simply criminal in structure, and I think that private prisons should be abolished immediately.

Heller makes powerful arguments that today's copyright system prices most photographers and certain content producers out of the market and is inefficient. At $35 or $45 a pop, and high recording fees for transfers, certain content creators simply opt out of the system. Photographers may register multiple images for one fee, but there are restrictions. With the phenomenon of user-generated content exploding, Heller points out another copyright constituency that is priced out, is opting out, and that the system was not built for.

As a litigator it has pained me to inform clients over and over that they can't get statutory damages. It is clear to me that approaches embracing new technology, recognizing the new scope of copyright itself, and harnessing the power of the internet need to be adopted to the commercial and consumer reality of the online experience. Heller is right about there being no reasonably effective remedies for the little guy out there.

If you could protect all of your creative output for, say, a reasonable monthly fee and make it easy to digitally track and monitor, wouldn't that be a great option?

Heller has sketched, in a provocative and powerful essay the outline of a new type of automated copyright registration system that certainly bears study. His selected model is the ICANN system, which I am not sure satisfies my desire to have one, central entity to be searched and act as a reputable register (if you have ever chased domain name hijackers who have taken your client's domain offshore you will understand my reluctance to endorse domain name registration as a flawless model).

There is also something attractive in the deposit system: you can deposit works and still have them unpublished and secret for practical purposes, but you have a secure government record that it is what you've claimed as yours, even if unpublished. I am not sure that an ICANN-type system could provide the type of physical custody and certainty that the US government provides.

I think that the Copyright Office would do well to give Heller's proposal some serious consideration and launch a pilot program, particular for groups like photographers. By providing careful oversight of an outsourced operation like the one Heller envisions, I think that the Copyright Office might find that more people could receive fair legal protections at a reduced cost and that more creators and users would be encouraged to be good copyright citizens.