Matthew B. Harrison
Senior Partner
Harrison Strategies

It is important to know more about intellectual property law than just enough to avoid litigation. Disputes involving intellectual property aren’t always played out civilly within the established legal system. Brawls are erupting in the Wild West of social networking, where threats of litigation don’t have much standing and unconventional is the nature of attacks.

As described in a previous article (A Lesson from the NJ101.5 Case.), a radio station got hit with a copyright infringement lawsuit because it used copyright protected images, stripped the identifying information of the photographer from the image, and posted them on its website inviting listeners to download and alter the images.

The station argued that its usage of the image was in the capacity of “news reporting” — a term which appears in the Copyright Act’s non-exhaustive list of potential purposes of fair use (thereby excusing their behavior from infringement liability). While “news reporting” is in fact a justification for copyright infringement – most cases in which news reporting is argued as a fair use defense fail because it is often misapplied – such as in this instance. The Court disagreed with the assertion that the radio station’s usage was news, ruling that news organizations are not free to use any and all copyrighted works without the permission of the creator simply because they wish to report on the same events a work depicts.

This was a major blow to the faulty assumption relied upon by most news outlets – that any use of material not owned by the station is automatically considered to be fair use and therefore excusable. The court padded the effects of this decision by relying on the fact that the station’s usage was alleged to be commercial in nature and the station did not refute this allegation; meaning that if the usage is commercial (by proof or omission of opposition) fair use will not be an accepted defense to infringement.

What does this mean to radio station owners and licensees? It subjects them to potential liability for copyright infringement, regardless of their knowledge or intent, should they use material that is not owned or licensed to them for such use. Or in other words – the fair use exception is not universally applied to radio stations just because they claim the usage is news. However, unlike in the previous scenario, it isn’t always litigation about which a station, host, or network should be concerned. Sometimes negative publicity can be worse.

In a recent case, a Denver country music station allegedly took 21 concert photos from a competing radio station’s Facebook page and used it on its own page without permission from the competing station or the photographer. Despite alleging all of the necessary elements to copyright infringement, the photographer is not in a position to initiate a copyright infringement lawsuit. So instead, he’s taken his fight to the “streets” of social networking and it seems to be working.

Scott D. Smith, a professional Colorado photographer, took photographs at a Jason Aldean concert. As per an ongoing seven-year arrangement, Smith got credentials to the concert from the radio station, and in exchange gave these photos to KYGO-FM to put on its website and Facebook pages, while personally maintaining ownership of the copyright to the images. This is not an uncommon arrangement for radio stations to make such trades with professional photographers for credentials, advertising, and semi-exclusive usage rights while the photographer maintains the copyright for the images. Most radio stations strapped for cash these days do not have it within their budgets to spend actual money on photography.

Although copyright attaches to a particular work upon its fixation in a tangible media (a tape, a CD, a file, etc.), one cannot actually sue another party for copyright infringement unless the owner registers the work with the Copyright Office. One can always register the copyright just prior to suing, however there is a major advantage to registering the copyright within three months from the date of first publication, or at least prior to the date of infringement: The ability to collect statutory damages.

Statutory damages are prescribed amounts that a judge can determine the value of each infringement to be without the owner having to prove any actual damages.

If a copyright is not registered within three months of initial publication, or before the date of the infringement, in this case a photographer would only be eligible for actual damages –– which are difficult to prove and may only be nominal in amount.

Under the theory of statutory damages, assuming that the owner of the work has registered the copyright with the copyright office prior to infringement, if the court finds that as long as the infringement was not committed willfully, the penalty per instance of infringement will be between $750 and $30,000. However, if the court determines that the infringement was committed willfully, the court may increase the award of statutory damages to a sum of not more than $150,000 per instance of infringement. This is the source of the big money from copyright infringement litigation. Additionally, the infringing party also pays for attorney fees and court costs when infringement is willful. This is to inspire attorneys to represent starving artists as clients when their rights have been trampled – even though their client cannot pay for services in advance of settlement or verdict.

Ultimately, this Denver photographer did not register the images for copyright protection before the infringement occurred. This means that he is not eligible for statutory damages per instance of infringement, and all attorneys’ fees in the collection of these damages. This has made his finding an attorney who will take this particular matter on contingency nearly impossible — as the actual damages wouldn’t be enough to warrant an attorney taking a matter unless he was retained on an hourly basis — as opposed to a contingency basis.

This is another example of the importance of registering one’s creative works for copyright protection. Whether it’s one show or a catalogue of shows, the owner of the work should register it for copyright protection. All of the necessary forms and submission of file information are available at www.copyright.org.

While Smith, the photographer in the case cited above, has a legal recourse, for whatever reason, he hasn’t proceeded as such at this time. Instead, he took matters into his own hands and contacted the station manager on the phone to voice his complaint. However, Smith says it did not rectify the situation.

According to Smith, the station manager apologized, told him the image would be taken down, and offered him free advertising as compensation. This was a good move on the part of the station manager to rectify this obvious problem.

Smith rejected this offer based upon the premise that he didn’t want the other station, KYGO-FM, with which he had a seven-year working relationship to think that he was supporting their competition by advertising with them. Instead, he requested what he considered fair value for the use of the images — between $200 and $1,000 per image totaling around $10,500 in damages. Why he wasn’t offered the ability to resell the advertising is outside my scope of knowledge, however this could have been a probable solution.

In copyright infringement litigation that doesn’t involve registration prior to the infringing behavior, it is necessary that the injured party prove the amount of actual damages (and any profits) suffered by means of the infringement. This is a very difficult task, in almost all cases.

For Mr. Smith, his arrangement with the original station was not monetary in nature. It certainly had monetary value, but did not literally involve actual dollars exchanging hands. So even though, Mr. Smith has been published by national magazines and often licenses these types of images to various clients for these prices, it would be difficult – if not impossible – to prove a realistic amount of actual damages that would inspire an attorney to take this case on contingency (for a percentage of the proceeds).

Of course, if the copyright is registered prior to infringement, the copyright statute presumes a larger amount of damages, and also includes that the infringing party will cover attorneys fees.

For whatever reason, the radio station determined that it had no responsibility to compensate him and they rejected his offer of $10,500.

While I can speculate as to what their motivation for arguing this would be, Jeff Wilks, CEO of Wilks Broadcasting, the company that owns the radio station accused of allegedly infringing the photographer’s copyright, said in a previously published article that they did not know the images were protected by copyright, and that once they were informed of the infringement, the images were removed. Unless a photographer proves otherwise, there is not an assumption of actual damage unless it can be proved that there was malicious intent.

Smith alleges that his copyright was stripped from the allegedly infringed upon photos, however it isn’t that clear. Upon my own investigation, it became apparent that the copyright notice was never attached directly to the photographs, but instead were placed as captions next to each photograph as they appeared on Facebook. The act of saving the photos separated the photos from the copyrighted images thereby only strengthening the station’s argument that they did not intend on separating the copyright images directly or maliciously.

Section 1202 of the Copyright Act makes it illegal for someone to remove “copyright management information” from a photo to disguise the infringement when used. It originally was only applicable to digital images with the copyright management information either embedded within the file or written upon the image displayed in the file. However, it has recently been interpreted as applying to print photos. The fines start at $2,500 and go to $25,000 in addition to attorneys’ fees and any damages for the infringement.

A claim under this section of the Copyright Act, while seeming appropriate, will probably not be successful because the photographer would have to prove that the radio station willfully stripped the copyright information from the photo, and considering that it is stripped automatically during the saving process – willful stripping is a difficult argument to make.

Under the old paradigm, the fact that Smith has rights but doesn’t want to pursue them on his own dime, the radio station would be free from litigation, thereby furthering the belief that any usage is fair usage. However, Smith doesn’t seem to be going away.

Instead of hiring an attorney and pursing the station legally on his own dime, Smith has started to generate negative publicity for the station in an attempt to shame them into apologizing for allegedly stealing his property and paying him for what he alleges to be rightfully his. Photography blogs and the twittersphere are buzzing with this story and it’s gaining momentum. Smith has become a figurehead for photographers who had their rights regularly infringed upon yet were unable to continue with legal remedies because they did not register the copyright prior to the infringement.

Smith explained that he took his claim to the listeners and advertisers of the station, sharing the details of his story, and further alleged that some of them had withdrawn financial support of the station. Smith further claimed that the station had acknowledged that his contacting advertisers was interfering with their contracts and that such behavior potentially opens him to liability of his own.

A request for comment from Wilks Broadcasting went unanswered.

I have written in previous articles that if artists don’t give value to work they put online, either by charging for access or making licenses available for purchase, they cannot argue that there were actual damages (lost income) when the content is used without permission.

This situation could sound a bit like extortion, fueled by the hostility of others who also don’t have much of a legal leg to stand on due to lack of merit or financial resources. However, Smith’s argument claims that he suffered actual damages. He licenses his images for the amount of money that he is seeking from the station in damages. While the radio station probably wouldn’t have purchased the right to use the images (and therefore would not be the direct cause of lost sales), if Smith could prove that his revenue is derived mostly from photo licenses, and that their actions injured his agreement with the original radio station; an agreement that has value, he may have a stronger case than the station realizes. Ultimately, it would be up to a judge to determine with broad discretion.

Regardless of how this particular situation resolves itself, there are two takeaway lessons to be learned from this scenario:

First, creative professionals need to register their intellectual property for copyright protection. It doesn’t matter the form of the media – audio, video or text. If registered property is protected prior to infringement occurring, they will be able to obtain legal assistance on contingency, as the damages will be prescribed by statute as will the payment of all attorneys’ fees by the infringing party.

Second, should someone claim that a radio station’s or broadcaster’s actions infringed upon their copyright, they should remove all of the alleged infringing content until they can clarify the details of the scenario. Litigation shouldn’t be the only concern as negative publicity is just as real and easily spread by the internet.

Matthew B. Harrison, an entertainment and media attorney, is a senior partner with Harrison Strategies, LLC based in Springfield, Massachusetts. He can be phoned at 413-565-5413 or e-mailed at matthew@matthewharrison.com.

by Matthew B. Harrison, Esq.
PhotosAndTheLaw.com

In my legal practice, I focus on the unique legal issues facing photographers and artists. Lesley Arak of FNS Studios in Springfield asked me recently an interesting copyright related question that I felt would provide interesting fodder for an article. The question was “If I wanted to recreate a famous photograph, and I hired a model, a stylist, acquired the right outfit, and created an image that looked a lot like the original – would I be in violation of the original photographer’s copyright?”

In thinking about the answer, even more questions arose in my mind. Would it make any difference if the original image were not a photograph at all – but perhaps a drawing or painting? What if the original photograph was not of a person – but rather was of a location or an object – would it matter if a photographer took a similar picture of the same subject matter?

While these questions may not directly affect you in your business – the implications of the answers most certainly do. What if you are trying to create an image for your company that relies on an established theme or image? How can you protect yourself when you are borrowing a concept, the goodwill, or actual pieces from a previous work?

In order to prevail in a copyright infringement claim, a plaintiff would have to prove the following two things: ownership of a valid copyright and that copying of original elements of the work occurred. In order to prove both elements, we need to examine the elements of a work that has valid copyright protection, in addition to the details surrounding the copying of those protected elements.

What is Copyrightable?

Originality

According to section 102(a) of the Copyright Act, protection can be afforded to “original works of authorship fixed in any tangible medium of expression.” According to the Supreme Court in Feist publications, Inc v. Rural Telephone Services Company (1991), a work is considered original if it was created by the author – rather than copied from other works, and it possesses at least some minimal degree of creativity.

Originality is satisfied so long as it possesses some creative spark “no matter how crude, humble, or obvious. Feist. This concept was first applied to photography back in an 1884 Supreme Court case of Burrow-Giles Lithographic Co v. Sarony, where the question of whether a photographic process was merely mechanical and therefore not original was decided. The Court decided that posing a subject, selecting and arranging the clothing, draperies, and other accessories so as to present graceful outlines and promote an artistic expression constituted originality and therefore such work was copyrightable.

The Court however specifically left open the question whether an ordinary photograph of a real life scene could be a proper subject of copyright. There certainly could be an argument made that when a photograph is documentary in style and is almost identical to the original subject matter that the originality requirement has not been met.

The federal district court in Bridgeman Art Library, Ltd. v. Corel Corp. (1999), bought into that argument, and held that a group of skillfully rendered photographic depictions of public domain art works was not “original” for copyright purposes. Looking to the facts of the case, Corel sold a CD-ROM containing images that were faithful reproductions of public domain works taken and maintained by the Bridgeman Art Library. While the court recognized that the photographic reproductions of the original works required skill and effort to not provide any addition, alteration or transformation to the work, it held that the art library did not own the copyright in the resulting images. In the words of the court – “Slavish copying” of another work, even where it reproduces the work into a different medium, does not have sufficient “originality” to be copyrightable.

At what point does a work become original enough to no longer be considered slavish copying? The same court that decided Bridgeman provided some guidance a year later in Eastern America Trio Products v. Tang Electronic Corp (2000). The Court found the originality requirement met by the choices made by the plaintiff in the layout, angles and lighting of the common industrial items. The Court noted that “originality” might be founded upon other factors such as choice of subject matter, timing, and selection of camera, film or lens.

Keep in mind that originality is not a judgment of artistic merit or worth. Many things are protected by copyright that may not have much artistic merit such as taxonomies, the actual code written in programming language (as opposed to the execution of the code – which is the purpose of the program), tabloid newspapers featuring stories about alien abductions and the largest hot dog ever eaten. Most likely any sort of picture, drawing, or photograph that one would use as a reference for reproduction would meet the originality requirements for copyright ability.

Fixability

For purposes of these questions, fixability is probably not going to be a problem. According to section 101 of the copyright act, a work is “fixed” for copyright purposes if it is in a tangible medium that is “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. Section 102 provides that perception, reproduction, or communication may occur directly by a person or with the aid of a machine, such as a computer.

Just as an aside, while this may seem straightforward – a basketball game is not copyrightable, but the recording of the basketball game would be – things can get murky in today’s digital world. The Ninth Circuit court of appeals decided in MAI Systems Corp v. Peak Computer, Inc. (1993) that software copied temporarily into a computers RAM (chip memory) is sufficiently fixed to meet the “fixation” requirements of copyright protection. Taking that ruling to an extreme could mean that almost anyone using a computer – or the Internet – would be infringing upon copyright. Because copies of information are made at a multitude of points – both on a person’s computer, computers on the Internet, and many places in between. This becomes important because whenever a situation arises where there is no alternative to copyright infringement – enforceability of the provisions becomes weaker, if enforced at all. An example would be for those of you who are reading this online. The article was hosted on a server. It traveled across the Internet – probably stopping through a number of computers (perhaps for a cup of coffee and a donut) before getting to your screen. Every place that a copy of the article was – even for an instant – could be considered eligible for infringement under the Peak Computer standard. The Digital Millennium Copyright Act (DMCA) limits the seemingly unlimited applicability of this decision by means of excluding certain processes and providing safe harbors in other situations. This strengthens actual claims for infringement.

Content

We know that a work needs to be original and fixated in some sort of tangible medium that can be perceived again with or without the assistance of a machine. However, just because something fits within those two requirements does not mean that it is protectable – in whole or in part. Copyright protection is only available for the expression of ideas and not the ideas themselves. This is known as the idea/expression dichotomy. An example of this dichotomy would be that copyright would not protect a discussion with my partner about how we could set up a particular photo – but the notes we wrote on the back of a cocktail napkin would be protected.

The purpose for this distinction is to balance the First Amendment goals of free expression with the Copyright goals of advancing the useful arts and sciences and affording protection to the creators of such work.

This idea/expression dichotomy is ultimately the crux of the analysis regarding potential copyright infringement in regards to the concerns raised by my associate, Ms. Arak.

If we were to create an image that resembled the Mona Lisa (an example that I use only because it is so widely known. However, if this were really the initial work, copyright wouldn’t have been an issue as the time of protection has expired.) I find a woman who is of similar appearance and I dress her in a similar manner, placing her in front of a similarly situated background and take a photo. All I have copied is the idea of the original. No actual part of the original was used in my re-creation and therefore this would copy would not violate the initial creators expression, but rather just the idea.

However, if I took a high resolution image of the Mona Lisa and through the powers of Photoshop put my face into her head – I would have been using the actual original expression in my work – and assuming that copyright protection still existed in the original work – I would have violated it.

Before continuing in this analysis, it is important to note that copyright infringement is not an absolute ban on being able to use the material. It means that you will need to seek a license, or right to use, the material from the copyright holder. In a fairly recent movie, I am Sam, the soundtrack consisted of Beatles tunes. The producers of the movie sought permission from the applicable rights holders to use the original songs in the soundtrack. However, the cost to obtain the rights for all of the original performances was more than the cost to make the entire film. So the producers opted to acquire the rights in the words and music, and re-record the songs using mainstream artists as performers. This proved to be within budget, and in my own humble opinion, the movie has an amazing soundtrack consisting entirely of Beatles covers.

How does a plaintiff show copying?

Generally, to establish that copying occurred, a plaintiff must show that the alleged infringer had access to the plaintiff’s original work, that the work contained copyrightable elements, and that the infringing material is “substantially similar” to those copyrightable elements in the original work. If the works were genuinely independently created and just happen to be similar – then there is no case for a copyright infringement suit.

There are two ways of establishing that the infringer had access to the original work. The first is more circumstantial – that the work had been widely disseminated. The second way is more direct by establishing a particular chain of events by which the alleged infringer might have gained actual access to the original work. Now, in the example question – this prong is clearly met. Of course we would have had access to the original work as we are using it as a guide from which to work. However, in some circumstances it may not be as clear-cut.

In the matter of Lloyd-Webber v. Repp, the court concluded that just because a song (“Close every door” from the musical Joseph and the Amazing Technicolor Deamcoat) had been widely disseminated as an LP, a hit single, in sheet music, in theater performances, and on the radio, is not evidence to support that the alleged infringer had access to the particular song. Contrast this New York district court case with a case in Florida determined a year earlier. The court in Playboy Enterprises, Inc v. Starware Publications Corporation concluded that the alleged infringer of images from Playboy magazine had access stating, “virtually every adult in this country has had ‘access’ to the copyrighted photographs published in Playboy® Magazines.” Ultimately, the court in Lloyd-Webber determined that access is not truly an essential element and that it may be presumed if the works are “strikingly similar” – a higher standard than “substantially similar.” The example the court gave in the Starware case was the “virtually exact copies” of photographs scanned in from Playboy magazine and sold on CD-ROM.

In regards to the direct manner in which an alleged infringer might have gained actual access to the original work, the court in Santrayll v. Burrell (1998) concluded that a reasonable juror could find that the alleged infringer could have acquired access to the plaintiff’s song by means of their mutual acquaintances, regardless of the fact that the connections were attenuated. In the event that one was not directly referring to a particular photo, just having connections to the artist or the work is probably enough to satisfy this requirement.

So where does the buck stop?

I have heard it proclaimed by numerous people that there are only five photographic ideas that have ever been taken in the world. Every other photograph has been some sort of derivative of those initial ideas. While this is certainly questionable, it does wrap up this column in a concise manner. Just because someone had an idea before you – does not mean that you will be unable to use that same idea for your own work – so long as you express it in your own original way.

Matthew B. Harrison is an entertainment and media attorney with Harrison Strategies, LLC. The New York based talent management group has offices in Massachusetts, New York and Washington D.C. When not practicing law, Harrison also is a fine art photographer with FNS Studios located in Springfield, MA and Silver Jack Photo located in Brooklyn, NY. Visit him on the web at www.photosandthelaw.com or email him at matthew@matthewharrison.com