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Legal Updates 1999
1. RIGHTS CLEARANCE ALERT: BUZZ ALDRIN
It has been brought to my attention that several PACA members have had
clients contacted by an attorney representing the astronaut Dr. Buzz Aldrin
as the result of a use of a NASA originated photograph of an astronaut
standing on the moon. The allegation is that the use of the image for
any commercial purpose violates Dr. Aldrin's right of publicity. Although
no identifying features of Dr. Aldrin are recognizable since he is encased
in a space suit, his attorney asserts that the photograph itself is so
famous, including the composition and pose, that Dr. Aldrin is recognizable
as the astronaut. This is a novel theory of liability and has not been
tested in the courts. His attorney is persistent in seeking compensation
from the ultimate user. The particular image is of an astronaut standing
on the moon with the reflection of Neil Armstrong in the visor.>
2. DIGITAL MILLENIUM COPYRIGHT
ACT OF 1998
The Digital Millennium Copyright Act ("DMCA") was signed
into law on October 28, 1998. It serves to implement two World Intellectual
Property Organization (WIPO) treaties as well as a number of copyright
related issues. The DMCA is divided into five separate titles. The
Copyright Office recently published an 18-page summary of the various
titles. This summary can be found at the Copyright's Office home
page www.loc.gov/copyright/.
The DMCA is a complicated piece of legislation. Already technical
corrections are planned, as there are two new sections 512 to the
Copyright Act. Over the next few weeks I will try to highlight some
of the provisions that may be of interest to the members. This update
will focus on the new Section 1202 of the Copyright Act, which protects
the integrity of copyright management information (CMI). An example
of CMI would be a Digimarc style system that imbeds copyright information
into the digital image. This section acknowledges that although
the Copyright Act currently prohibits unauthorized copying of work,
technology has enabled copying to be done with ease, and often in
the privacy of ones home. Since policing of such copying is unrealistic,
technological "self-help" is necessary to encourage digital
commerce. This section recognizes the need for CMI to function as
self-help and prohibits the tampering with CMI.
Section 1202 addresses both false CMI and the removal or alteration
of CMI. In order to be liable, the falsification or removal of the
CMI must be done with knowledge, (for criminal penalties) or with
reasonable grounds to know that it will induce, enable, facilitate
or conceal an infringement. CMI is defined as identifying material
about the work, the author, the copyright owner, and in certain
cases the writer, director or performer of the work, the terms and
conditions for use of the work, and such other information the Register
of Copyrights may prescribe by regulation. Law enforcement, intelligence
and governmental activities are exempt.
A person may bring a civil action in federal court against anyone
who violates this section. The court can reduce or remit damages
if the violator proves that it was not aware and had no reason to
believe that the acts constituted a violation. Non-profit libraries,
archives and educational institutions are entitled to a complete
remission of damages in these circumstances. [A notice on a web
site that contains CMI should advise users that tampering with CMI
is a violation of the Copyright Act to avoid a claim that the violator
was unaware.] Criminal penalties apply to wilful violation for purposes
of commercial advantage or private financial gain. Penalties can
range up to a $500,000 fine or up to 5 years imprisonment for a
first offence, and up to $1,000,000 fine or 10 years imprisonment
for a subsequent offence. [Non-profit libraries, archives and educational
institutions are exempt from criminal liability.]
3. CAN LANDMARKS BE TRADEMARKED?
Can you imagine a picture of New York without any landmarks in the
skyline? No Chrysler Building, no Public Library, no Flatiron Building,
no Rockefeller Center? Would designers, illustrators, and photographers
then be forced to create generic skyscraper buildings, using Photoshop
to disguise the actual buildings when depicting, say, a scene of
Fifth Avenue at Christmas? Sounds far-fetched? Not if you share
the opinion of the owners of the New York Stock Exchange, the Chrysler
Building, Rockefeller Center, the Public Library, Radio City Music
Hall, and the Flatiron Building, among others.
Some owners of Manhattan buildings are trying to prevent use of
illustrations or photographs of their buildings on everything from
advertising to note cards and textbooks. The problem is now trickling
down to the illustrator and graphic artist who works either on assignment
for a client or selling stock. Clients are becoming gun-shy in the
face of demand letters by large corporate building owners requiring
that creators of images supply property releases or clear the usage
rights. In many cases this simply results in another type of work
being chosen for the job. No own wants to risk legal action or having
to pull an advertisement after it's been created. Few creators can
afford to be caught in a lawsuit over usage rights.
THE LIABILITY BANDWAGON
Licensing is a grant of a limited right to use a trademark, copyright,
or, with publicity rights, one's name, likeness, or portrait. Licensing
has grown into a multibillion-dollar industry in this country. Trademarks
and logos are splashed on everything - bags, hats, jackets, jeans,
shoes, sunglasses and T-shirts, so that many Americans look like
walking advertisements. The right of celebrities to control the
exploitation of their name, likeness, and even voice extends well
beyond their death. Now the owners of buildings have jumped on the
licensing bandwagon. The owner of the Chrysler Building, for example,
has demanded that Fishs Eddy, a Manhattan tableware store, cease
selling a line of "212" dishes, claiming that the illustration
on the tableware violates its trademark of the Chrysler Building.
(The dishes contain illustrations of iconic buildings from the jazz
age, including the renowned Chrysler spire). The New York Stock
Exchange, alleging trademark violation has sued a casino in Las
Vegas for building a model of its facade on their gambling floor.
This craze to control the "exploitation" of property is
not limited to New York. The artist Karen Nangle, known for her
drawings of historic buildings in Savannah, Georgia, has received
demands from the current owner of the city's Mercer/Williams House
to cease distributing her cards of the house based on an alleged
trademark violation. What is next? Will all recognizable property
be off limits? What about your ordinary seaside cottage, barn, or
suburban home?
How did we get to this point? Legally, there is very little, if
any, basis for preventing artists, illustrators, photographers,
or even souvenir makers from creating, reproducing, and distributing
their interpretation of a building. Posters, postcards, and replicas
of the Chrysler Building have been created for years without anyone raising so much as an eyebrow. While copyright
protection was extended to buildings a few years ago when the United
States became a member of the international Berne Convention, this
protection is essentially limited to constructing look-alike versions
of a building or nearly identical building. The act specifically
provides that the owner of the copyright to a building which is
located in, or visible from, a public place, cannot prevent third
parties from taking or distributing photographs of the building.
The copyright laws are not the answer to building owners' efforts
to control any photographic or illustrative reproduction of their
property. If copyright is not the answer, what about rights of publicity
and privacy? These are the laws, by either state statute or case
law, that prohibit the use of a person's name or likeness for commercial
use. But these laws only protect people, not property. They were
originally based on an area of tort law, which evolved to prevent
injury to one's feelings or reputation, such as preventing the disclosure
of private facts about an individual. But a building has no feelings
or reputation that can be injured. Therefore, publicity rights are
of no assistance to building owners in their effort to control exploitation
of their property. >
This leaves only the law of trademark for building owners to rely
on. But the law of trademark is not a perfect fit. Trademarks are
indicators, through design, words, or symbols, of the source of
goods or services. If your baseball cap has a swoosh, you assume
that Nike manufactured the hat and you can rely on its reputation
for craftsmanship. Trademarks do not have to be registered in the
United States, but there are some legal advantages. And if you continue
to use a trademark, the rights can last forever, unlike copyright
and patents that offer a limited period of protection. However,
if you purchase "212" china from Fishs Eddy, with illustrations
of the Brooklyn Bridge, Grand Central Station, the Empire State
Building as well as the Chrysler Building, would you assume that
the Chrysler Building was the source of the plate? Not likely. But
this is exactly the argument the lawyers for the owners of the Chrysler
Building are making.
Some buildings have distinctive structures or markings that you
associate with a particular business. McDonald's is known for its
golden arches. Howard Johnson's roofs are always orange. These are
proper trademark designations. But the Chrysler Company does not
own the Chrysler Building. A real estate company does. Surely people
don't gaze up at the stainless steel spire and immediately think
of Tishman Speyer Properties. Different businesses work on the many
floors. The building as a structure does not represent any particular
good or service. It simply represents what it is: a landmark skyscraper
representative of the art deco period of architecture. The law in
the area of building protection is very sparse. The only case I
am aware of that prevented the commercial exploitation of a photograph
of a structure is a unique case involving the 1964 New York's World
Fair. This case, decided the same year, has never been followed
by other courts. The case involved the still-standing Unisphere
on the World's Fair grounds in Queens, New York. The facts are unusual,
making this an example of the legal expression "bad facts make
bad law." The defendant's request for an exclusive license
to publish postcards, albums, and other items using the World's
Fair buildings was denied. Despite that, the defendant went ahead
anyway, and the World's Fair sued and won, despite strong dissent.
No legal grounds were given, except that the court took "judicial
notice that the New York World's Fair is universally acclaimed as
one on the world's greatest shows in 1964-1965. In our opinion a
photograph of a unique building, structure or object situated within
the World's Fair grounds, to which an admission fee is charged,
is a photograph of a show in which the plaintiff has a property
right." This narrow ruling would not apply to buildings that
are freely visible to the public.
In a more recent case the owners of the Rock and Roll Hall of Fame
Museum brought a case against a photographer, Charles Gentile, who
had created a poster of the museum against a vibrant sunset. Under
the poster the words "Rock and Roll Hall of Fame, Cleveland"
appeared. The museum alleged trademark and unfair competition violations
in its complaint, asserting that the building was a symbol of the
rock and roll movement and likened the building to the protected
shape of a coke bottle. The museum initially won a preliminary injunction,
but the decision was ultimately overturned. The appeals court stated
that the museum was unlikely to succeed at trial on its claims and
returned the case to the trial court. The appeals court found that
the museum did not use the building as a symbol or indicator of
goods, a requirement of trademark protection. The use of the name
"Rock and Roll Hall of Fame" as a mere description was
likely judged to be fair use. This ruling makes logical sense. To
register a trademark, you must provide the Trademark Office with
specimens of the mark. What is the mark in a building? What is actually
deposited? A drawing of the building from a certain angle? Almost
any illustrator or photographer can depict a building in a unique
way. There are multiple viewpoints and angles from which to view
any three-dimensional property. And what goods or service does the
building represent? It is not like the golden arches where you can
rightly assume hamburgers and french fries are sold.
As yet there is no follow-up decision on the Rock and Roll Hall
of Fame case that provides further guidance. It is clear that owners
of landmark buildings are going to continue to use trademark and
any other laws to attempt to restrict the reproduction of their
buildings. No one wants to be left out of the licensing bandwagon.
How the courts will apply the law of trademarks to building is still
in the offing. How this affects creators and publishers of images
in the future is significant. Already publishers are avoiding the
skylines of Dallas, Disneyland, and Las Vegas. The Graphic Artists
Guild is currently working on an action plan to address this issue.
Hopefully, the skylines of our cities and other landmarks will continue
to be the subject of art and design.
Editor's Note: As PACA members know, Nancy Wolff was recently named
PACA Counsel. Her firm has also begun a counsel relationship with
The Weinberg Legal Group, a national law group based in Phoenix,
Ariz., which is engaged exclusively in the practice of laws relating
to intellectual property, digital technology, and new media, including
the Internet.
4. QUESTIONS AND ANSWERS REGARDING
TRADEMARKS AND LANDMARKS
I received several follow-up questions to my article on trademarks
and landmark buildings.
I thought I would respond to the questions in this week's newsletter
and share the answers with everyone.
QUESTION: Is there a distinction to be made between representing
a property in a descriptive way (i.e. editorial) and representing
a property in a commercial way?
ANSWER: Yes. Trademark law recognizes the right to use a
trademark in a descriptive manner. The term, as with copyright law,
is the defense of "Fair Use". For example, in the "Rock
and Roll Hall Of Fame Case", the court, which reversed the
earlier ruling that the photographer's sale of a poster of the building
infringed the museum's trademark, found that the title under the
poster "Rock & Roll Hall of Fame, Cleveland" to be
descriptive and permissible. An article describing the historic
buildings in the Wall Street area of New York City could publish
photographs of the landmark buildings, including the New York or
American stock exchange. The magazine would not be in violation
of any alleged trademark rights in the buildings. However, if a
financial services company wanted to use a photograph of the American
or New York Stock Exchange in an advertisement, it would be advisable
to seek permission of the exchange. In the commercial use, there
is risk of confusion in showing a recognizable image of the stock
exchange. The viewer could interpret the use of the image as the
stock exchange endorsing the financial service company, when in
fact it had not. Again, the underlying question is "Does the
building represent a trademark? " Is it so connected to a particular
business or service that if it is used in an advertisement an assumption
of support or endorsement is made? Most buildings do not represent
a particular business or industry, but some do. Ask yourself, is
this more like McDonald's arches or a generic office building?
QUESTION: Is there a distinction between the use of a photograph
of the exterior of a home as opposed to the use of a recognized
landmark?
ANSWER: YES: In most instances, no laws prevent the reproduction
of an image of a person's home. The laws that protect an individual's
right of privacy, relate to the use of the person's name or likeness
for commercial purposes. Even though an owner might recognize his
or her own home, the home itself does not conjure up the image of
the owner to the viewing public. Some homes may be so identified
to the owner, that an association would be obvious. Most farm houses,
suburban homes and common buildings would not have any association
with a particular owner and no additional permissions would be necessary
to use them commercially.
QUESTION: Why have we been recommending that photographers
obtain property releases?
ANSWER: To prevent clients from being hassled by annoying
homeowners that think that you need permission to use a photograph
of their home. The problem is, everyone has the idea that you need
permission for everything these days. Including a photograph of
their home, stray cat and pet frog. And if they have a lawyer send
your client a letter, it becomes your problem, even if they are
wrong. A property release prevents the question from being raised,
and allows for smooth transactions. It is more for preventative
measures than a legal necessity.
5. BRIDGEMAN ART LIBRARY VS.
COREL CORPORATION
The Bridgeman Art Library case against Corel Corporation is still
waiting for a decision from Judge Kaplan after Bridgeman filed a
motion requesting the court to reconsider its decision dismissing
the action on a summary judgement motion by Corel Corporation.
As a background, the Bridgeman Art Library, a British company, brought
a copyright infringement action against Corel Corporation based
on the inclusion of approximately 120 images of fine art in a series
of Corel CD-ROM titles of well known paintings of European Masters.
Bridgeman has exclusive rights in many well-known works of public
domain art from museums located around the world. It maintains a
library of large format transparencies created by professional photographers
of such works as well as a digital library. Bridgeman licenses these
transparencies to clients for a fee. Since Bridgeman has exclusive
access to many of the works and the only authorized transparencies,
it was inferred that the reproductions included in the Corel CD-ROMS
were unauthorized copies. Corel claimed that it obtained the images
as 35-mm slides from a California Company, Off the Wall, Inc. The
trial court dismissed the action upon a motion by Corel for summary
judgement. (This means that the court found that as a matter of
law Corel was entitled to judgement without the need for a trial
to determine the facts.)
The court concluded that it must look to UK law to determine whether
copyright exists in the transparencies. Under the UK version of
the copyright act, the Copyright, Designs and Patent Act 1998, copyright
protection is granted to "original literary, dramatic, musical
or artistic works. The court held that the large format transparencies,
taken by professional photographers were not protected by the act
since they were not original. Because the transparencies strove
to accurately reproduce the underlying works of art without any
modification, they could not in the court's eye, be original. The
court analogized the photographs taken by professionals to that
of a photocopier and distinguished between photographs of people,
places and events that were creative and deserving of copyright.
The court determined that a photograph that was merely a copy of
someone else's work could not be original despite the change of
medium or talent used in taking the image. Although the law of the
UK was relied upon, the court concluded that it would reach the
same result under US law and found US law to be persuasive in analysing
the UK law.
Bridgeman requested that the court reconsider its decision and provided
the court with Amicus briefs from leading UK copyright lawyers,
which suggested that the court misinterpreted UK law. Under UK law,
they argued, the photographs of public domain works would be protected.
Further, the court did not recognize that the US Copyright Office
had accepted one of the transparencies for registration, indicating
that it was sufficiently original to meet their requirements. Since
courts rarely reverse themselves, it is likely that Corel will appeal
the decision to the next higher court, the Second Circuit Court
of Appeals. This decision has caught the attention of the photography
community both in the US and abroad. Many museums and photo agencies,
as well as PACA, have offered support in the form of Amicus briefs
(friend of the court) in the event an appeal is undertaken.
This decision would appear to have far reaching affects, undermining
the accepted notion that a professionally taken photograph is protected
by copyright. Several recent cases have failed to recognize that
photographs are original works of art, which suggests that the medium
of photography as a creative medium is not understood. Taken to
an extreme, any photograph of an existing object, for example, a
sculpture, a work of architecture, or even Mount Rushmore, might
not be considered original, since another author created the underlying
work. If the experience and skills of a photographer are equated
to a photocopy machine that merely records natural objects, the
art of photography is lost. The selective eye of the photographer,
the choice in camera, film, angle, lighting, composition etc. is
then nothing more than a technical skill, unprotected by copyright.
If the skills of a professional photographer are reduced to such
mechanical definitions, the digitization of photographs for use
in an electronic medium is surely suspect as well. The Register
of Copyrights has granted separate copyright protection to digital
works, based on the enhancements made to the digital images after
scanning. However, following the court's reasoning in the Bridgeman
case, if the enhancements only serve to make the digital image more
accurately reflect the underlying transparency, the transparency
has not been adapted or transformed, and is therefore not original,
and is denied copyright protection. Ironically, a poorly taken photograph
of a work of art, or a poor scan, that differs from the original,
whether it is out of focus or the color correction is off, would
be entitled to protection, while the professional image would not.
This anomaly flies in the face of years of industry practice and
understanding and threatens many works found in archives worldwide.
I have been asked by the Bridgeman Art Library to review the case
in conjunction with an experienced appellate attorney and will keep
you informed of any new developments.
6. BRIDGEMAN ART LIBRARY VS.
COREL CORPORATION II
As I was writing to members about the Bridgeman Art Library V. Corel
Corporation
decision last week, Judge Kaplan signed a 20-page memorandum decision
addressing the post judgment request for re-argument and reconsideration.
After the decision, the court received several Amicus briefs from
UK counsel asserting that UK law was not correctly applied. In addition,
Professor Patry, a copyright expert, wrote the court on his own
initiative, asserting the court misapplied the choice of law question.
Having a second opportunity to review the case, the court reaffirmed
its prior decision. Previously, the court looked at UK law to determine
copyrightability. In this current decision, the court concluded
that US law should apply.
The court elaborated on the issue of whether a transparency of a
public domain work of art was subject to copyright under US law.
Starting at the beginning, the court examined the history of photography
as an art form protected by copyright. As early as 1884 in the case
of Burrows-Giles Lithographic Co. v. Sarony, the Supreme Court of
the Unites States held that a photograph was a "writing"
under the Copyright Clause of the then existing Copyright Act. Citing
the best known treatise on copyright law Nimmer, the court quoted
a passage in which Nimmer reflects on two situations in which a
photograph should be denied copyright for lack of originality. The
situation that the court found persuasive in this case was "where
a photograph of a photograph or other printed matter is made that
amounts to nothing more than slavish copying".
Judge Kaplan noted that in order for a photograph of other printed
work to be protected by copyright, the case law requires a "distinguishable
variation, something beyond technical skill to render the reproduction
as original". Further, the court concluded that a change in
medium (such as from a painting to a photograph) is insufficient
to find the requisite "distinguishable variation".
While the court concluded that the overwhelming majority of photographs
would have at least a modest amount of originality required for
copyright protection, "slavish copying" that only required
technical skill would have no spark of originality and would not
be protectible.
The court then reviewed UK law and determined that even under UK
law, his prior decision was correct. At issue, seems to be the art
of "realistic" copyright. Apparently the court did not
recognize any create input in the professional photographic skills
employed in creating the art reproduction transparencies. The photographer
and the camera, was merely a skilled technician, akin to someone
pressing a button on the photocopy machine. What has been understood
as being part of the photographers creative process, the selection
of lighting, angle, choice of film and camera, were equated with
"sweat of the brow" and technical skills, that were not
"original". The term "original" appears to be
misunderstood as requiring originality in the subject matter. I
believe, the originality is in the creative eye of the photographer,
and the choices involving lighting, angle composition, mood, camera
and film are all part of what is creative. And although in photography
involving art reproduction, the photograph will never look like
the painting itself. There would in fact be many differences in
the way different photographers would light and approach the subject.
And surely someone entering a museum and simply pushing a button
on the camera would not achieve the same result as a professional
photographer.
The case raises difficult nuances in copyright law. Since a "better"
art reproduction photograph will more closely reflect the colors
of a painting, the argument that this style of photography is only
a "slavish copy", was easy for the court to accept given
some of the prior court decisions in the US and the emphasis on
the purpose of the transparencies to be exact copies without examining
the differences. Since the decision was based on a motion before
trial, there was no opportunity for the court to see a painting,
a professional transparency and a non-professional photograph. The
differences between the painting and the photographs would have
been more apparent, instead of the similarities. Since the artistic
aspects of this style of photography were not well developed in
the case, if appealed, the role of Amicus (friend of the court)
will be critical to help explain the artistic and aesthetic aspect
of photo- realism. The notion that the choices a photographer uses
in creating an image can be described as merely a technical skill,
no more than a photocopy machine, could have repercussions if expanded
to other areas of photo-realism. If the term "original"
begins to stand for original in subject rather than original eye
of the photographer, many types of photography can start to be called
into question.
If anyone would like to read the full decision, I can make it available.
7. FEES FOR FILING COPYRIGHT
REGISTRATION
The current fee schedule for filing copyright registration applications
with the Library of Congress is effective through June 30, 1999.
Fees are definitely going to increase after that time. The Library
of Congress held hearings last October regarding the proposed fee
increases. This February the Copyright Office sent a new proposal
to Congress. The new proposed fee for a registration of a work in
the visual arts (Form VA) is $30 per application. This represents
a $10 increase over the current fee of $20. Although this proposed
fee increase is less than what had been previously proposed, for
a photographer with a large body of work, the increase could be
significant. I would encourage everyone to register outstanding
works before July 1, 1999, when the fee increase takes affect. There
is still no word on any new regulations that will allow for group
registration of photographs without regard to whether they are published
or not. Currently a group of photographs can be registered as a
collection for one fee is all the materials are owned by the same
person and are "unpublished." Published photographs must
be registered individually in most instances. I will keep you informed
if any new regulations are forthcoming.
8. COPYRIGHT OFFICE PROPOSES
TO INCREASE CERTAIN FEES JULY 1, 1999
The Copyright Office proposes to increase certain fees effective
July 1, 1999. These include the fees for basic registration, document
recordation, supplementary registration, search services, certificates,
and additional certificates. The final status of the fee increase
will be known on June 1. If, as anticipated, the fee increase goes
into effect, any request received in the Copyright Office on or
after July 1, 1999, for a service whose fee is scheduled to increase
on that date must be accompanied by the new fee. Check the Copyright
Office Website at http://www.loc.gov/copyright for additional information.
9. MORE ON THE DIGITAL MILLENIUM
COPYRIGHT ACT
Section 512 of the Digital Millennium Copyright Act limits the liability
of online service providers for copyright infringement. If an infringing
work is posted on the Internet, section 512 may limit you from holding
a service provider liable for the copyright infringement. However,
these limitations are closely defined and a service provider may
shield itself from monetary damages and injunctive relief only if
it falls within one of the four enumerated categories.
These categories are limited to situations where:
1) The provider merely acts as a data conduit, transmitting digital
information from one point on a network to another at someone else's
request. Section 512(a).
2) The provider regularly retains copies, for a limited time, of
material that has been made available online by a person other than
the provider, and then subsequently transmits them to a subscriber
at his or her direction. Section 512(b).
3) The provider has infringing materials on websites hosted on their
systems. Section 512(c).
4) The provider refers or links users to a site that contains infringing
material. Section 512(d).
For purposes of this weeks' update I will focus on Section 512(c)
since it may carry the most direct consequences for PACA members.
Not all service providers may be shielded from liability. Section
512(c) defines an eligibility standard whereby if a service provider
fulfils certain conditions it may consequently enjoy protection
from a copyright infringement claim. Three conditions are listed:
1) The provider must not have the actual or circumstantial evidence
of the infringing activity. 2) The provider must not receive a financial
benefit directly attributable to the infringing activity, in a case
in which the service provider has the right and ability to control
such activity; and 3) Upon notification of claimed infringement,
the provider must respond expeditiously to remove, or disable access
to the infringing material. If the provider does not violate any
of these conditions and has in addition filed with the Copyright
Office a designation of an agent to receive notifications of claimed
infringement, then no monetary damages or injunctive relief may
be ordered against the service provider. (To find a list of designated
agents, go to the Copyright Office Homepage.)
A service provider is defined as "an entity offering the transmission,
routing, or providing of connections for digital online communications,
between or among points specified by a user, of material of the
user's choosing, without modification to the content of the material
as sent or received."
It is important, however, for the copyright owner to provide proper
notification of the infringement. If you find an infringing work
on the Internet, specific procedures must be followed in order for
the notification to be considered proper. It must be in written
form, provided to the designated agent and must include a specified
amount of information including an identification of the copyrighted
work, the infringing work and information sufficient to locate the
complaining party as well as the site of the infringing work. If
the service provider promptly removes the infringing work then the
provider is exempt from monetary damages. In addition, in order
to prevent fraudulent notification, the subscriber may file a counter-notification.
However, if the counter-notification states that the infringing
work was removed because of mistake or misidentification, the provider
can put up the work again within 10- 14 business days, unless you,
as the copyright owner, file an action seeking a court order against
the subscriber.
Although it may sound tedious, the Act is meant to protect service
providers that merely post websites without any knowledge or control
of the contents. In order to protect your rights to the full extent,
you may bring a copyright infringement claim against the subscriber
as well as the service provider for any works which may infringe
upon your exclusive rights under Copyright law. However, if the
service provider complies with the statutory requirements of section
512, you may find that you will not be able to prevail in your claim
against the provider.
BRIDGEMAN ART LIBRARY
The Bridgeman Art Library has informed me of their decision not
to proceed with an appeal of the federal court's dismissal of its
claim against Corel Corporation for copyright infringement of its
transparencies of public domain paintings.
10. CHANGE TO RECOMMENDED DELIVERY
MEMO
Jane Kinne, Chair of PACA's Legal Committee, in conjunction with
PACA Counsel urges that the following sentence be added to the recommended
"Terms of Use" at the end of point #8:
In the event of unauthorized use, it is agreed that a retroactive
license can be made available at a fee of ten (10) times the normal
reproduction charge.
INSURANCE
Following interest from last year's PACA annual meeting, Taylor
& Taylor has finalized an error and omissions insurance policy
for PACA members. The blanket policy covers still images. An additional
endorsement can be obtained for film and video clips and illustrations.
The policy covers claims for: invasion of rights of privacy or publicity,
libel, slander and defamation, copyright, trademarks and related
claims.
If you wish to review the policy, contact Scott Taylor at Taylor
& Taylor Associates, Inc. at either 212-490-8511 or 310-826-7200.
COPYRIGHT/UPDATE FOR COPYRIGHT
COMMANDMENTS
Reminder, last October the Copyright Act was amended to extend the
duration of copyright from life plus fifty years to life plus 70
years. Please update the Second Commandment of PACA's Copyright
Commandments if you have it on your website or in printed material.
11. SMILEY FACE
A member recently asked about the use of the "Smiley Face"
and thought there might have been a problem in using an image that
contained a "Smiley Face." Well, thanks to the Internet,
I was able to get to the bottom of this. In 1998 a Frenchman, Frank
Loufrani did try to claim that he was the originator of the famous
yellow smiley face that was on buttons, T-shirts, posters and about
everything else since the 1960's. However, the "true"
originator, Harvey Ball, now has his own website at www.worldsmile.com.
He asserts that he originated the smiley face in 1963, well before
the year Mr. Frank Loufrani claimed that he created the yellow face.
Frank Loufrani has filed for US Trademark protection. When I checked
the status on the USPTO website, the trademark application was still
pending.
The smiley face would not be protected by copyright. It was freely
distributed -- (it was the 60's)- without a copyright notice and
therefore entered the public domain. Since copyright does not protect
symbols, it might not have even been subject to protection had the
proper procedures been followed. However, Harvey Ball has since
attempted to register his "official" smiley face as a
trademark of his newly formed World Smile Corporation to market
Signature Smiley products. (The Smiley Face with Harvey Ball's signature.)
Since we all now know that a trademark needs to identify goods and
services, whether this mark truly serves as a trademark for his
corporation after being freely distributed in the market for at
least 35 years is questionable. He does use a TM instead of the
(r) that might indicate that he has not been granted a trademark
from the Patent and Trademark office and the application is yet
pending. A press release posted on his sight infers that he does
not intend to be the sole source of Smiley products but will compete
in the marketplace with all others and donate his after-tax profits
to charitable cause! If you have any other questions he left his
attorneys e-mail address, Charles Ball! Since it does not appear
that the smiley face has ever acted as the sole source of anyone's
goods or services, a trademark claim would be weak by any party.
REGISTRATION OF CD-ROMS
In the days of our "paper" newsletters, I published an
article on registering stock photo catalogs. This was after PACA's
representatives visited the Copyright Office and met with Mary Beth
Peters, the Register of Copyrights and other members of the Visual
Arts Division to see if we could get some relief to the regulations
that made catalog registration so difficult. As a result of their
advice, we changed our PACA sample agreement with photographers
to permit agencies to register the images as well as the catalogs
in situations where the photographers transferred title to the photographs
for registration purposes solely. The Copyright Office has regulations
that require the copyright claimant to be the same for all the elements
covered in an application. This solution got around that regulation.
The registration of CD-ROM catalogs is essentially the same. The
form would be filled out the same way. You would use a form VA.
In Space 2 "Name of Authors," you would list the name
of the agency, and name three contributing photographs and then
the actual number of other contributors. (i.e., Jane Smith, Joe
Jones, Bob Green and 54 others). Space 4 "Claimant" would
be the agency. Where it asks for transfer information in this section,
you would state "By Written Agreement."
In Space 6(a) you would state "Some previously published images,"
and Space 6b would state "new images" or whatever the
artwork is on the disk. The only difference with filing a CD-ROM
catalog is the deposit requirement. You must provide the CD-ROM,
as well a representative samples of the images (in color if they
are in color). I have had no problem with providing thumbnail prints
of the images. To satisfy the "representative" requirement,
50 images are usually enough. In your cover letter you should state
what viewing software is used with the disk. A caveat with either
the print or CD-ROM catalogs, if any of the images have been previously
published, the registration will not cover the published images.
The Copyright Office requires that published images be registered
separately, with two copies of the image as first published.
If you have other questions concerning registration, you may contact
me or check the Copyright Office Home Page at http://loc.gov/copyright.
Circular 65 covers registration of multimedia works.
12. RECENT TRADEMARK CASE --
ELVIS PRESLEY
An interesting case has been decided that might have implications
for those that are claiming that photographs of certain buildings
and landmarks violate trademark rights of the owner, regardless
of the angle, distance or view. The Unites States Patent and Trademark
Office Trial and Appeal Board affirmed the final rejection for trademark
registration, the likeness and image of Elvis Presley as a trademark
for cotton fabric. The applicant tried to register the likeness
of Elvis in all possible manners or presentation without regard
to age, manner of dress or pose.
As each application for a trademark must only contain one drawing
of the mark, the applicant failed to comply with the requirement
that the applicant submit an acceptable drawing of its mark. The
Trademark Act does not permit the registration of a concept or idea.
The Trademark Appeals Board noted that if every likeness of Elvis
from birth to death were covered by the application, the applicant
would be in the position to prevent others from using or registering
the specific images of other individuals (real or fictional) that
resemble one of the thousands, if not millions, of vastly different
photographs, film frames or video frames depicting Elvis Presley.
The court cited a New York case involving photographs of Babe Ruth
(Pirone v. MacMillan) as published in a baseball trivia calendar.
Here, Pirone asserted that the trademark rights in the word Babe
Ruth included every photograph of Babe Ruth. The court noted that
an individual's likeness is not consistently represented in a fixed
image. In order to serve as a trademark, a particular photograph
must consistently be used on specific goods. In this situation,
no one pose of Babe Ruth had been used as a source to identify goods.
Further, since the use of the name Babe Ruth was intended only to
identify a great baseball player, it was not a trademark use.
These cases illustrate the problem in attempting to control the
use of photographs under the law of trademarks. While owners of
buildings, such as the Chrysler building, assert that the building
itself is a trademark, the mark must identify a source of goods,
which in most instances the building itself does not do. The image
must be a consistent depiction of the trademark. A building, like
a person, can be photographed in many ways. It can be in the morning
or evening, a close up or as part of a skyline. Being three dimensional,
there are many views and angles in which to depict the building.
Under the law of trademarks, it seems unlikely that most building
will qualify as a true trademark.
13. THE EUROPEAN UNION'S PRIVACY
DIRECTIVE
Privacy issues on the Internet have been of recent concern in the
United States, particularly in the area of children and the FTC
has taken an active role in patrolling the Internet for sites that
collect data concerning children. But the United States has essentially
taken a position that businesses should regulate themselves in the
area of data collection. Not so in Europe where the difference between
the United States approach and the European Union is often referred
to as the "Privacy Wars."
The European Union's Directive on Data Protection known as the Privacy
Directive became effective on October 25, 1998. It requires that
transfers of personal data take place only to non-EU countries that
provide an "adequate" level of privacy protection. European
countries have traditionally been more sensitive to the collection
of personal data revealing information about their citizens. Most
countries in the EU have had comprehensive privacy statutes in their
countries for many years and have taken the requirement in the EU
Data Directive as an opportunity to update and extend their privacy
laws to protect the interests of their citizens. These privacy protection
laws place severe restrictions on the collection and transfer of
sensitive personal information, such as data revealing the individual's
racial or ethnic background, political affiliation or union membership.
These laws date back to the Second World War where personal data
was seized to track down those considered undesirable. Europe developed
a comprehensive statutory approach to privacy regulation to prevent
future abuse.
Many US organizations have expressed uncertainty about the impact
of the EU-required "adequacy" standard on personal data
transfers from the European Community to the United States. The
fear was that the EU would block data flows to the US due to the
ineffectualness of our laws. A major concern is that the privacy
directives require member EU states to provide judicial remedies
and the payment of damages for the misuse of personal data. In fact,
a report by the FTC in June of 1998 revealed that industry in the
US was sorely lacking in its self regulation, noting that 85% of
commercial websites collect personal information and only 14% provided
consumers with any personal notice and only 2% had adopted the comprehensive
privacy policies encouraged by industry leaders.
To head off devastating trade barriers that would result if the
EU blocked the transfer of data to the US and to diminish the uncertainty
over what was "adequate" protection, the Department of
Commerce in consultation with industry with a stake in e-commerce
issued draft "safe harbor" principles.
The following draft was dated April 19, 1999, and the Department
of Commerce is currently collecting public comments regarding this
draft. If companies voluntarily complied with the seven privacy
principles they would presumably meet the minimal requirements necessary
to continue to do business in Europe. These safe harbors are set
forth at the Commerce Department Website at: www.ita.doc.gov/ecom/menu.htm.
Safe Harbor Principles
1. NOTICE: An organization must inform individuals about the purposes
for which it collects information about them, how to contact the
organization with any inquiries or complaints, the types of third
parties to which it discloses the information, and the choices and
means the organization offers individuals for limiting its use and
disclosure. This notice must be provided in clear and conspicuous
language when individuals are first asked to provide personal information
to the organization or as soon thereafter as is practicable, but
in any event before the organization uses such information for a
purpose other than that for which it was originally collected or
discloses it to a third party.
2. CHOICE: An organization must offer individuals the opportunity
to choose (opt out) whether and how personal information they provide
is used or disclosed to third parties (where such use is incompatible
with the purpose for which it was originally collected or with any
other purpose disclosed to the individual in a notice). They must
be provided with clear and conspicuous, readily available, and affordable
mechanisms to exercise this option. For sensitive information, such
as medical and health information, information revealing racial
or ethnic origin, political opinions, religious or philosophical
beliefs, trade union membership or information concerning the sex
life of the individual they must be given affirmative or explicit
(opt-in) choice.
3. ONWARD TRANSFER: An organization may only disclose personal information
to third parties consistent with the principles of notice and choice.
Where an organization has not provided choice because a use is compatible
with the purpose for which the data was originally collected or
which was disclosed in a notice and the organization wishes to transfer
the data to a third party, it may do so if it first either ascertains
that the third party subscribes to the safe harbor principles or
enters into a written agreement with such third party requiring
that the third party provide at least the same level of privacy
protection as is required by the relevant safe harbor principles.
4. SECURITY: Organizations creating, maintaining, using or disseminating
personal information must take reasonable measures to assure its
reliability for its intended use and reasonable precautions to protect
it from loss, misuse and unauthorized access, disclosure, alteration
and destruction.
5. DATA INTEGRITY: Consistent with these principles, an organization
may only process personal information relevant to the purposes for
which it has been gathered. To the extent necessary for those purposes,
an organization should take reasonable steps to ensure that data
is accurate, complete, and current.
6. ACCESS: Individuals must have [reasonable] access to personal
information about them that an organization holds and be able to
correct or amend that information where it is inaccurate. Reasonableness
of access depends on the nature and sensitivity of the information
collected, its intended uses, and the expense and difficulty of
providing the individual with access to the information.]
7. ENFORCEMENT: Effective privacy protection must include mechanisms
for assuring compliance with the safe harbor principles, recourse
for individuals to whom the data relate affected by non-compliance
with the principles, and consequences for the organization when
the principles are not followed. At a minimum, such mechanisms must
include (a) readily available and affordable independent recourse
mechanisms by which an individual's complaints and disputes can
be investigated and resolved and damages awarded where the applicable
law or private sector initiatives so provide; (b) follow-up procedures
for verifying that the attestations and assertions businesses make
about their privacy practices are true and that privacy practices
have been implemented as presented; and (c) obligations to remedy
problems arising out of failure to comply with these principles
by organizations announcing their adherence to them and consequences
for such organizations. Sanctions must be sufficiently rigorous
to ensure compliance by organizations.
The success of the US self-regulatory approach is uncertain. The
European Commission working group that represents the privacy interests
of European citizens has expressed great concerns about the Safe
Harbor proposal. The voluntary nature of the scheme without independent
investigative mechanisms and sanctions for failure to comply is
still an issue. In addition, leading consumer groups in both the
United States and Europe have also rejected the safe harbor approach
as lacking an effective means of enforcement and redress for privacy
violations. They issued a statement complaining that it places unreasonable
burdens on consumers and unfairly requires European citizens to
sacrifice their legal right to pursue privacy complaints through
their national authorities. It also stated that the proposal fails
to ensure that individual consumers will be able to access personal
information obtained by businesses. On the other hand, industries
active in e-commerce express difficulty in implementing these provisions,
particularly in the area of enforcement. Certain aspects of the
safe harbor, such as the onward transfer principle poses a duty
and burden that the transferring party to provide the same level
of privacy protection. Others complain that some of the language
in the proposal is too vague and do not provide sufficient guidance.
It is uncertain whether these safe harbor principles will be adopted
as written given the continued concerns. It is clear that the US
and the EU must find some common ground with the increasing importance
of e-commerce to harmonize their laws. In reviewing your own policy
even for strictly US use, it is important to examine the following.
Is it conspicuous? It should be available on your site where the
clients enters into a transaction that includes any transfer if
personal data (i.e. name address credit card, etc.) I would recommend
having clients agree to the policy and click that they agree to
the terms. It should be written clearly and in plain English (not
lawyer-speak)! It should accurately reflect what your company is
doing with the information. Do not say that you are not collecting
certain information nor transferring the information to third parties
if in fact you are. Your marketing department might have certain
ideas for the use of the data that differs from other departments.
Be very careful if you collect any sensitive data or are collecting
information from children. Most simple transactions, involving name
address and credit cards are not too risky if they are used for
the purpose intended and kept secure. The collection and mining
of individual preferences is what needs to be examined more carefully.
I will continue to update members as the area develops.
WEBSITE ALERT:
A site "Masters-of-photography.com" represents itself
as a "gallery" although it has banner advertisements.
It is displaying many works that may be represented by members under
the guise of fair use and permits use on personal websites.
14. US COPYRIGHT OFFICE FEE INCREASE
Fees for basic registration (including forms VA and TX), document
recordation, supplementary registration, search services, certificates
and additional certificates increase on July 1, 1999. Any requests
received on or after July for the above services must be accompanied
by the new fee. All basic registrations are now $30 instead of $20,
renewals are $45, supplemental registrations are $65. The search
fee is now $65 per hour and certifications are also $65. A complete
listing can be found at the Copyright Office Website www.loc.gov/copyright.
THE COPYRIGHT SOCIETY OF THE USA launched its new website
www.FA(c)E-copyright.org,
a copyright education initiative. FA(c)E stands for "Friends
of Active Copyright Education." It is designed to explain copyright
to young Internet users in plain English, and is divided into the
basic forms of expression-images, words, music, film, and Internet.
I have been involved with the steering committee and overseeing
the still and moving images section. It is still a work in progress
but is a good place to send people with copyright questions. It
includes the basics of copyright, FAQ's and top myths. Any suggestions
would also be appreciated.
UPDATE:
Last year I wrote about a copyright case in the SDNY involving a
company, Richard Feiner that owned videos of Laurel & Hardy
movies who was asserting ownership in publicity stills as a result.
(Richard Feiner & Co. v. H.R.I. Inc., Co.) It had brought and
action against a publication that had published one of the old publicity
stills. Both sides had moved for summary judgment early on, which
means that there are no facts in dispute to necessitate a trial,
so the court simply needs to apply the law. The court had found
in favor of the video owner, on the basis that the publication had
conceded that Feiner owned the copyright in the photograph in question.
HRI denied that it ever conceded that Feiner owned the copyright
for purposes of Feiner's motion and appealed.
The publisher alleged in the appeal that the district court had
erred in the decision because, although HRI had in fact conceded
to the copyright, it was done only for purposes of their own simultaneously
pending motion to dismiss, and not in respect to Feiner's motion
for summary judgment. After the summary motion was granted, HRI
had moved for reargument or reconsideration to assert its claim
that the concession had been taken out of context, and that it did
not believe Feiner held the copyright the photograph in question.
HRI's request for reconsideration was granted, but the district
court adhered to its original decision. Upon appeal, the US Court
of Appeals found no support in the record for the district court's
finding and reversed. The Court of Appeals based their decision
on one major point. HRI had submitted a memo in opposition of Feiner's
request for summary judgment. In this motion, they explicitly stated,
"...Defendant in no way concedes that plaintiff is either the
copyright owner or an exclusive licensee of Liberty..." Because
this was expressly stated in the memo, the Court of Appeals felt
that the district court ruling was premature, prior to discovery,
holding that HRI was entitled to litigate the validity of Feiner's
claim to the copyright.
In speaking with the attorney for the publisher, he felt confident
that Feiner would not be able to establish copyright ownership in
the photograph, since it was a publicity still and not a film grab
from the video. In other words, the photograph itself was not in
the film. I will continue to update you on this case since Feiner's
attorney has contacted many client of PACA members, relying on the
lower court's decision in attempting to force payment of thousands
of dollars for the use of Laurel and Hardy publicity stills that
have long been considered public domain.
THANK YOU, THANK YOU, THANK YOU FOR PHOTOPLUS EXPO
WEST
Thanks to everyone who participated in the PACA-sponsored seminars
and a very special thank you to all the people at FoodPix for a
lovely evening at their wonderful studio. We are especially grateful
to owners Jeff Burke and Lorraine Triolo and to M. Cheryl Anderson
who coordinated everything for the event. It was a wonderful evening!!!!
Thanks to our speakers Cathy Aron/Photo Network, JoAnn Calfee, Roberta
Groves/H. Armstrong Roberts, Peter Howe/Corbis, Jeff Schultz/Alaska
Stock, Roger Ressmeyer/Visions of Tomorrow, Cheryl Pickerell/Stock
Connection, Dana Wallach/Corbis Digital, Leo Gradinger and Tom Mantoani/Zephyr
Images, Mary Virginia Swanstock and Robert Dawson/Swanstock-The
Image Bank, Bill Gluth and Shawn and Sally Weimer/Index Stock Imagery,
Sonia Wasco/Grant Heilman Photography, Ron Scherl/StageImage, Mike
Fisher/Custom Medical, and Jeff Burke/FoodPix. Thanks again to PhotoCraft
and PDN, too.>
GEOGRAPHIC GUILTY OF COPYRIGHT INFRINGEMENT
Reprinted with permission from Selling Stock
Online, June 16, 1999.
Judge Joan A. Lenard has found that National Geographic Society
infringed the copyright of underwater publishers Jerry and Idaz
Greenberg when they used Jerry's copyrighted images as reference
materials for two projects without permission or compensation. The
case was heard in Federal Court in the Southern District of Florida
in Miami. The case has been referred to Magistrate Judge William
C. Turnoff for the purposes of holding a settlement conference to
determine the amount National Geographic will be required to pay
to the Greenbergs.
This is the first time National Geographic has been found guilty
of copyright infringement of a photographer's work. The case may
open the door for legal action by other photographers against the
Society. In a review of the facts of the case it was shown that
Walter Cutler, the work-for-hire illustrator hired by the Society
to produce illustrations for an educational GeoPack project, improperly
used books produced by the Greenbergs as reference for his illustrations.
On his working drawings Cutler noted the page references referring
to the photographs he had copied so the Society editors could verify
that the illustrations were accurate. This clearly laid the responsibility
on the Society editors because they were fully aware of what had
been done and were responsible to obtain proper permissions and
deal with compensation issues. Cutler's illustrations also met the
test of "substantial similarity" according to Judge Lenard.
The Greenbergs had produced overlays from their books that clearly
showed the illustrations were almost exact matches of the Greenberg's
photos.
In challenging the Greenbergs' motion for Summary Judgement on Liability,
lawyers for National Geographic Society argued that the newly created
illustration did not violate the Greenbergs' copyright, and "that
even if these images reflect copyrighted material, this use constitutes
"fair use". Judge Lenard found that the illustrations
"improperly infringed the photographs at issue, and that the
doctrine of fair use is not applicable to these facts." The
court took into consideration the four nonexclusive factors to be
considered when determining whether the fair use doctrine applies
and concluded, "that neither the GeoPack product nor the Jason
Project poster qualify as fair use."
The four factors are:
1 - the purpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educational purposes;
2 - the nature of the copyrighted work;
3 - the amount and substantiality of the portion used in relation
to the copyrighted work as a whole; and
4 - the effect of the use upon the potential market for or value
of the copyrighted work.
The courts detailed presentation of the facts related to each of
these points should be useful to others faced with a "fair
use" claim by any organization, and particularly National Geographic.
Counts three and four in the Greenberg's case are not a part of
this decision and dealt with the use of the Greenbergs copyrighted
images in the "108 Years of National Geographic on CD-ROM".
Earlier in the proceedings lawyers for National Geographic argued
that the "Tasini" decision in the Southern District of
New York confirmed their right to make uses in the "108 Years"
project without compensating photographers in any way. The Greenberg's
argued that "Tasini" should have no bearing on their case
because that decision was being appealed. On this point the judge
agreed with National Geographic and issued a partial summary judgment
on the two counts. Thus, the arguments relating to the use of the
Greenberg's images in the "108 Years" project were never
heard. The Greenbergs have the option to appeal that decision of
the judge.
Oral arguments for the appeal of the "Tasini" decision
have been heard in the New York Appeals court and all parties are
presently waiting for the judge's ruling in that case. The results
of that case could affect the Greenberg's ultimate decision.
15. COMPULSORY LICENSES FOR PBS
BROADCASTS
Ambreen Qureshi of Magnum raised a question regarding the usage
of images by Public Broadcast systems. Magnum received a check for
the use of two images in the amount of $129.56. It may sound too
crazy to be true but it is.
This fee is in accordance with the royalty rate schedule published
in CFR 253.8 "Terms and rates of royalty payments for the use
of published pictorial, graphic, and sculptural works." Title
37 of the CFR is a series of regulations promulgated by the Copyright
Office to enforce the provisions of the Copyright Act. Section II
8 of the Copyright Act, limits the exclusive rights granted copyright
owners under the Copyright Act. These exclusive rights include the
right to make reproductions and to display the work. Cost of living
adjustments were made to these rates last December 1998.
Owners of pictorial works are not the only creators with limitations.
Anyone who has recorded a song cannot prevent someone else from
covering it or recording it as long as they pay the established
compulsory license. That is why you can enjoy the songs of the Beatles
waiting in an elevator!
I have provided the pertinent language in the CFR that lists the
rates and definitions for your information:
(a) Scope. This section establishes rates and terms for the use
of published pictorial, graphic, and sculptural works by public
broadcasting entities for the activities described in 17 U. S.C.
I 1 8. The rates and terms established in this schedule include
the making of the reproductions described in 17 U. S. C. I I 8(d)(3).
(b) Royalty rate. (1) The following schedule of rates shall apply
to the use of works within the scope of this section:
(i) For such uses in a PBS-distributed program:
(A) For a featured display of a work.
1998-2002 $64.78
(B) For background and montage display.
1998-2002 $31.59
(C) For use of a work for program identification or for thematic
use.
1998-2002 $127.71
(D) For the display of an art reproduction copyrighted separately
from the work of fine art from which the work was reproduced, irrespective
of whether the reproduced work of fine art is copyrighted so as
to be subject also to payment of a display fee under the terms of
the schedule.
1998-2002 $41.95
(ii) For such uses in other than PBS-distributed programs:
(A) For featured display of a work.
1998-2002 $41.95
(B) For background and montage display.
1998-2002 $21.51
(C) For use of a work for program identification or for thematic
use.
1998-2002 $85.76
(D) For the display of an art reproduction copyrighted separately
from the work of fine art from which the work was reproduced, irrespective
of whether the reproduced work of fine art is copyrighted so as
to be subject also to payment of a display fee under the terms of
this schedule.
1998-2002 $21.51
For the purposes of this schedule the rate for the thematic use
of a work in an entire series shall be double the single program
theme rate. In the event the work is first used other than in a
PBS-distributed program, and such program is subsequently distributed
by PBS, an additional royalty payment shall be made equal to the
difference between the rate specified in this section for other
than a PBS-distributed program and the rate specified in this section
for a PBS-distributed program.
(2) "Featureddisplay"forpurposesofthisschedulemeansafull-screenorsubstantially
00 full-screen display appearing on the screen for more than three
seconds. Any display less than full-screen or substantially full-screen,
or full-screen for three seconds or less, is deemed to be a "background
or montage display".
(3) "Thematic use" is the utilization of the works of
one or more artists where the works constitute the central theme
of the program or convey a story line.
(4) "Display of an art reproduction copyrighted separately
from the work of fine art from which the work was reproduced"
means a transparency or other reproduction of an underlying work
of fine art.
(c) Payment of royalty rate. PBS or other public broadcasting entity
shall pay the required royalty fees to each copyright owner not
later than July 3 1 of each calendar year for uses during the first
six months of that calendar year, and not later than January 31
for uses during the last six months of the preceding calendar year.
(f) Terms of use. (1) The rates of this schedule are for unlimited
broadcast use for a period of three years from the date of the first
broadcast use of the work under this schedule. Succeeding broadcast
use periods will require the following additional payment: Second
three-year period--50 percent; each three-year period thereafter--25
percent; provided that a 100 percent additional payment prior to
the expiration of the first three-year period will cover broadcast
use during all subsequent broadcast use periods without limitation.
Such succeeding uses that are subsequent to December 31, 2002, shall
be subject to the rates established in this schedule.
(2) Pursuant to the provisions of 17 U. S. C - I 1 8 (f), nothing
in this schedule shall be construed to permit, beyond the limits
of fair use as provided in 17 U.S. C. 107, the production of a transmission
program drawn to any substantial extent from a published compilation
of pictorial, graphic, or sculptural works.
§ 253. 1 1 Notice of restrictions on use of reproductions of
transmission programs.
Any public broadcasting entity that, pursuant to 17 U. S.C. I 1
8, supplies a reproduction of a transmission program to governmental
bodies or non-profit institutions shall include with each copy of
the reproduction a warning notice stating in substance that the
reproductions may be used for a period of not more than seven days
from the specified date of transmission, that the reproductions
must be destroyed by the user before or at the end of such period,
and that a failure to fully comply with these terms shall subject
the body or institution to the remedies for infringement of copyright.
16. ADDITIONAL INFORMATION REGARDING
LICENSING TO PBS.
Last week's legal update raised an additional question regarding
licensing to PBS stations from a PACA member.
QUESTION: The royalty rate schedule referred to was entitled
"Terms and rates of royalty payments for the use of published
pictorial, graphic and sculptural works." Does this apply to
moving images as well? If not, is there a similar provision that
does apply? We have been approached by an independent producer working
on a program that he hopes to distribute via PBS, who is interested
in licensing some of our footage, so I need to know what rules apply.
ANSWER: Section 118 of the Copyright Act which limits the
exclusive rights of certain copyright owners in connection with
non-commercial broadcasting only applies to owners of copyright
in published non-dramatic musical works and published pictorial,
graphic, and sculptural works. The definition of "Pictorial,
graphic, and sculptural works" include two-dimensional and
three-dimensional works of fine, graphic, and applied art, photographs,
prints and art reproductions, maps, globes, charts, diagrams, models,
and technical drawings, including architectural plans. Motion picture
and audiovisual works are defined separately in the Copyright Act.
Therefore the rates for royalty payments under CFR 253.8 do not
apply to moving images. No compulsory rates apply to the use of
motion pictures.
COPYRIGHT OFFICE NEWS
The Copyright Office web site now offers "fill-in" forms
that you can download with Adobe Acrobat and fill in before printing.
You still need to mail in the completed form to the Copyright Office
with the fee and deposit requirement. One less reason to keep the
old typewriter. On-line application filing is not available yet.
For information, go to www.loc.gov/copyright.
17. DIGITAL MILLENIUM COPYRIGHT
ACT
The Digital Millennium Copyright Act (DMCA) is proving to be a powerful
tool to curb Internet copyright infringement. Internet service providers
lobbied hard for a limitation of liability from copyright infringement
actions, arguing that it was impossible to monitor the web. A compromise
was struck, giving ISP's a safe harbor from certain liability if
they followed certain procedures and guidelines. The result is Title
II, Section 512 of the DMCA. By following specified "notice
and take down procedures" ISP's can limit their liability for
certain activity by removing any alleging infringing material. The
DMCA is complicated and I have had several questions regarding its
use to prevent the unauthorized use of photographs lately. I have
broken down relevant portions of the Act into a series of questions.
Q. Who is a "service provider" under the law?
A. Anyone who
(1) provides online service;
(2) provides network access;
(3) operates a facility that provides network access; or
(4) transmits, routes or provides connections for digital online
communications between or among specified users, of unmodified materials
of the users choosing.
This definition is fairly broad and includes any site that offers
a "chat" room.
Q. How is a Service Provider eligible for protection?
A. A provider must not have knowledge of the infringing activity.
If provider has right and ability to control the infringing activity,
it must not receive financial benefit directly attributable to the
infringing activity. Upon receiving proper notification of claimed
infringement, the provider must expeditiously take down or block
access to the material. File with the Copyright Office a designation
of an agent to receive notification of claimed infringement. The
Copyright Office provides a suggested form and maintains a lists
of designated agents on the Copyright Office website http://www.loc.gov/copyright/onlinesp/list/).
Post a copy of the notice of designated agent on its website.
Q. What constitutes proper notification of infringement to
a service provider?
A. Written communication to the designated agent. Includes
a physical or electronic signature of a person authorized to act
on behalf of the owner of the exclusive right that is allegedly
infringed. Identify the copyrighted work that is claimed to be infringed,
or a representative list if multiple copyrighted works on a single
online site are covered by the notification. Identification of the
material that is claimed to be infringing or the subject of the
infringing activity that is to be removed or access is to be disabled.
The information must be clear enough to permit the service provider
to locate the material. (Information to permit the service provider
to locate the complaining party (address, telephone number, e-mail
address).
Statement by complaining party that it has a good faith belief that
the use of the material is not authorized by the copyright owner,
its agent, or the law.
Statement that the information provided in the notification is accurate,
and under penalty of perjury, that the complaining party is authorized
to act on behalf of the owner of the exclusive right that is allegedly
infringed.
Q. What must the Service Provider do to limits its liability?
A. The Service Provider will not be liable for taking down
the allegedly infringing material if it:
Takes reasonable steps to notify the subscriber that it has removed
or disabled access to the material.
Upon receipt of counter notification, promptly provide the person
who provided the notification with a copy of the counter notification
and inform the person that it will replace the removed material
or cease disabling the material in ten (10) days.
Replaces the removed material and ceases disabling access to the
material not less than ten (10), no more than (14) business days
following receipt of the of the counter notice unless its designated
agent receives notice from the first person who sent a notice of
infringement that such person has filed a court order to restrain
the subscriber from engaging in infringing activity relating to
the material on the service providers system.
Q. What must the counter notice contain?
A. A physical or electronic signature of the subscriber.
Identification of the material that has been moved, or access denied
and the location of where the information appeared before it was
removed or disabled.
A statement under the penalty of perjury that the subscriber has
a good faith belief that the material was removed or disabled as
a result of a mistake or a misidentification of the material to
be removed.
The subscriber's name, address and telephone number and a statement
that the subscriber consents to jurisdiction of the Federal District
Court for the judicial district in which the address is located,
or if the subscriber is outside the United States, for any judicial
district in which the service provider may be found, and that the
subscriber will accept service of process from the person or its
agent who provided the initial notification.
Q. Can you obtain the identification of the infringer?
A. Yes, a copyright owner can request the clerk of any US
district court to issue a subpoena to a service provider for an
identification of an alleged infringer.
Q. What must a Service Provider do to become eligible?
A. Adopt and implement a policy of that provides for termination
of subscribers that are repeat infringers.
Inform its subscribers of its policy.
Accommodate and not interfere with standard technical measures.
Q. Can you collect money damages against a service provider
if they have fully complied with the requirements?
A. No, the service provider is protected from monetary relief
for posting infringing material that includes damages, costs, attorneys
fees and any other form of monetary payment.
Q. How can this help prevent the infringement of material
from a stock library?
A. If a web site contains unlicensed photographs that you
believe in good faith are yours, or are an infringing copy, you
can notify the hosting service provider of the alleged infringement,
identifying that you are the authorized agent of the copyright owner
and identify the copyrighted work. If the notice complies with the
requirements, the service provider must remove the offending material.
Unless the service provider receives a counter notification, this
notice will probably insure the removal of the material without
further activity. However if a counter notification is filed, you
must commence a legal proceeding or the material will be reinstated.
If you do not have a copyright registration for the material, you
will have to seek expedited registration from the Copyright Office
that costs $500 plus the $30 application fee in addition to any
court costs. Although the DMCA is very recent, it seems unlikely
that an unauthorized user will send a counter notification submitting
to federal jurisdiction.
One organization that has effectively been using the DMCA to shut
down critics is the Church of Scientology. The online community
of Scientology critics has long copied, distributed and annotated
hundreds of "top secret" and copyrighted documents from
the Church of Scientology invoking fair use laws, (which allow publishers
to excerpt copyrighted material for the purpose of comment or criticism),
to defend their actions. The Church of Scientology has aggressively
sought to shut down web sites that have republished its material
all across the Internet and is now using the DMCA to demand that
Internet service providers disable their Web sites or reveal their
identities as anonymous Usenet posters because of alleged copyright
infringements. The ease in which the DMCA can be invoked is that
you allege that an infringement has occurred (under penalty of perjury),
but you do not have to first prove an infringement in a court of
law. The ISP, wishing to preserve its safe harbor and limit its
liability, has no choice but to remove or block the material. Unless
the contributor agrees to file a counter notification and subject
themselves to a court action, the material will in most cases remain
blocked. Putting aside issues of fair use and one's first amendment
right of fair comment, the DMCA can prove to be a valuable tool
if the goal is to remove the offending material quickly and not
seek monetary damages.
If you have any further questions, please feel free to contact me.
18. THE HORSE-WHISPERER CASE
When digital technology first became readily accessible making it
easier to manipulate and combine images to create a new and derivative
work, a question arose regarding the ownership of the resulting
work. While it was created from individual copyrighted images, they
were often combined using the skills of a computer technician. Since
case law in the area of copyright usually lags years after a new
technology, the best guess was that the computer technician should
not be able to own the copyright in the derivative work you commissioned,
but it would be advisable to have a written agreement that the copyright
to the derivative work remains with the owner of the original material.
A California federal court has finally had an opportunity to review
this question, and fortunately has agreed that the copyright should
remain with the original creator. To avoid litigation, it would
still be advisable to carefully review any terms of any invoice
or purchase order when working with a computer technician in digitally
altering images, and add clear language that the resulting derivative
work belongs to the copyright owner, and not the computer operator.
The world-renowned equine photographer, Robert Vavra, learned this
lesson the hard way. He sought the assistance of a graphic designer,
Patrick Sagouspe, to combine three of his images previously reproduced
in his book "Equus: The Creation of a Horse". In 1997
Vavra was involved in photographing promotional material for the
Robert Redford movie "The Horse Whisperer" and decided
to create a digital photographic montage to coincide with the opening.
He had first worked with a computer artist to create a montage with
three of his copyrighted images. When he was not satisfied with
the resolution of the montage, he turned to Patrick Sagouspe to
who had assisted him in the past in digitizing images for prior
books and had higher quality equipment at his disposal. The montage
was entitled "The Whisperer's Horse." You can view the
image at www.robertvavra.com. Sagouspe apparently registered the
composite image as a derivative work under his own name and demanded
that Vavra stop selling prints of the Whisperer's Horse on the Internet.
When Vavra refused, Sagouspe sued Vavra for copyright infringement.
In the alternative he claimed that he was a co-author of the Whisperer's
Horse and was entitled to 50% of all the profits.
A Federal Court of the Southern District of California dismissed
both copyright related claims on a motion for summary judgment.
The court found that the derivative work registered by Sagouspe
did not satisfy the test of minimal original contribution necessary
to create a copyrightable derivative work. The court found that
he only modified the original composite image previously created
by the first computer artist. Secondly, the court found that his
copyright must fail because it threatened to affect Vavra's underlying
copyright to his images. Although Vavra could use the individual
images, he could not use the combined images without fear of infringement.
Sagouspe's alternative claim that he was a co-author of the work
was also dismissed. Sagouspe failed to establish that there was
the requisite intent to create a joint work.
While this decision answers the question of copyright ownership
in this instance, it is always better not to have to prove that
you are right in court. Clear agreements are still the best protection
so that you remain the copyright owner when having digitally enhanced
or altered works created.
19. INFRINGEMENT REGARDING MOVING
IMAGES DERIVED FROM STILL IMAGES
This week a member raised a question asking whether it is an infringement
to create a moving image that is derived from a still image without
the permission of the copyright holder of the photograph.
Section 103(a) of the Copyright Act states:
"A work based upon one or more pre-existing works, such as
a translation, fictionalization, motion picture version, sound recording,
art reproduction, abridgment, condensation, or any other form in
which a work may be recast, transformed, or adapted. A work consisting
of editorial revisions, annotations, elaborations, or other modifications,
which, as a whole, represent an original work of authorship, is
a "derivative work."
However, a work can only be a derivative if it has substantially
copied a prior work, otherwise it will simply be viewed as an original.
I have been involved with a similar situation before. In a previous
case, a commercial was produced which included a moving image that
had a striking resemblance to a photograph whose copyright was owned
by the photographer. The photograph was of a man in a business suit
doing a complete backbend against a white background while holding
a briefcase. This photograph was one of the photographer's most
well known works and was quite unique. The moving version was of
a man similarly dressed and holding a briefcase in the act of bending
over backwards against a white background. The photographer was
quite upset over the similarities, and the ad agency responsible
for the commercial was contacted. A lawsuit was brought and the
case eventually was settled in favor of the photographer. Unfortunately,
there are no published decisions that I know of on this issue.
Case law mandates that changing the medium of expression is not
enough in itself to create a derivative work. For example, a motion
picture cannot be created from an existing script without the permission
of writer, just like a drawing cannot be created from a picture
without the permission of the photographer. Following this logic,
it could be argued that the permission of the copyright holder of
the original still image must also be obtained, if the still is
indeed the basis for the moving image. However, if there are several
differences in the two images it could be very difficult to prevail
on an infringement claim. It is important to remember that concepts
and ideas are not protected, but certain elements of expression
are. For this reason, as with all instances of alleged copyright
infringement, the individual facts of each case must be examined.
It is difficult to make a blanket decision without comparing the
works themselves.
20. GRANTING OF PERPETUAL RIGHTS
It has been brought to my attention that at least two magazines
(U.S. News & World Report and Life) have recently asked photographers
to grant perpetual rights to use any image that has appeared on
the cover for any purpose. Life has presented a letter to photographers
stating its "policy" and U.S. News and World Report has
a new contract for each cover. The photographers would still own
the copyright to the cover photograph.
This recognition that something should be in writing concerning
the use of cover shots appears to be a reaction after a decision
in the Southern District of New York in which the court was asked
to look into the question of whether the reuse of a magazine's cover,
several years after the issue was out, required further permission from the photographer. The magazine
argued that there was a fair trade use that permitted them to use
past covers in any manner, explaining that cover shots earn higher
fees for this purpose. The judge agreed that there was a fair trade
use of the cover image but limited the fair trade use to the time
period in which the magazine was still available to the public,
presumably a two to four week period. The extra cover fee was not
deemed to give the magazines a perpetual right to use the cover
image. We have always cautioned against perpetual licenses or licenses
without any time period mentioned. It would seem reasonable that
a magazine might want the rights to use a cover within a year, to
accommodate year-end reviews. However, with the millennium approaching,
many publishers are reaching back over many years, publishing books
and other compilations. Whether additional permissions and fees
are required is the outstanding issue.
21. TIFFANY DESIGN INC. VS.
RENO-TAHOE SPECIALTY INC.
On July 12, in Tiffany Design Inc. v. Reno-Tahoe Specialty Inc.,
the U.S. District Court for the District of Nevada held that the
scanning of a copyrighted photo into a computer for graphic manipulation
and insertion into a new work constitutes copyright infringement.
The court ruled that digitizing any copyrighted material may support
a finding of infringement, even if it only has the briefest existence
in a computer's memory.
Tiffany, the plaintiff, hired a photographer to take aerial photos
of the Las Vegas Strip, and then hired a graphic artist to create
an artistic depiction of the Strip using the photographs. The final
depiction ("the 1998 Image") was completed by means of
photographic enhancement, which contained many changes including,
the addition of illumination and size modifications. Reno-Tahoe,
the defendant, was working on its own digitally altered photographic
image of the Las Vegas Strip, and scanned the 1998 Image to create
a precursor image while the computer was in a "pre-view"
mode. Reno-Tahoe's graphic artist then cut and manipulated six architectural
works from that precursor image and inserted them into Reno-Tahoe
products.
Tiffany sued Reno-Tahoe under the contention that the mere creation
of the computerized precursor image was an infringement on their
copyright in the 1998 Image. Reno-Tahoe disputed this assertion
claiming that the mere scanning of an image as a precursor image
does not constitute an actionable instance of copying. The court
disagreed with Reno-Tahoe's defense stating, "the digitization
or input of any copyrighted material, may support a finding of infringement
notwithstanding only the briefest existence in a computer's RAM."
The court concluded that Reno-Tahoe's scanning of the 1998 Image
and input of this precursor image into its computer, in preparation
for further graphic manipulation and insertion into its own work,
constituted an act of copyright infringement as a matter of law.
Again, the courts are just beginning to examine copyright issues
that have been in the forefront of the photography and design community,
since the popularity of computers, scanning equipment and manipulation
software has increased.
22. UPDATE TO GENTILE VS. ROCK
AND ROLL HALL OF FAME
Cleveland based photographer Chuck Gentile received a favorable
ruling from the Federal District Court for the Northern District
of Ohio and against the Rock & Roll Hall of Fame, denying the
museum's request to enjoin the sale of a night photograph taken
of the Rock & Roll Hall of Fame and sold as a poster by Gentile.
As a background, the Rock & Roll 'Hall of Fame initially was
granted a preliminary injunction from the District Court preventing
Gentile from selling the poster, claiming that the sale of the poster
violated the museum's trademark rights in the building and its name.
On appeal, the decision was reversed by the Sixth Circuit, which
threw out the injunction. The court's decision was strongly worded
suggesting that the Rock & Roll Hall of Fame was unlikely to
prevail after a trial on its claim that its building was used as
a trademark and that the poster violated any trademarks rights.
Since a preliminary injunction is a request for a court to take
action prior to a trial on the theory that the complaining party
will be irreparably harmed by the other party's conduct during the
course of a trial, the Rock & Roll Hall of Fame was entitled
to go back to the lower court and attempt to prove that Gentile's
poster did in fact violate its trademark rights in the building.
Despite the favorable decision from the appeals court, the Rock
& Roll Hall of Fame proceeded with its action against Gentile
in the district court. This recent ruling in favor of Gentile relies
on the reasoning of the appeals court and states:
1. That the Rock & Roll Hall of Fame's building design was not
used as a trademark, so the poster could not infringe its trademark
rights.
2. Gentile did not use the poster as a trademark, so he would not
have infringed any alleged trademark rights.
3. The use of the identifying words "Rock & Roll Hall of
Fame" under the photographer did not infringe any trademark
rights and being descriptive, the use was fair use.
While this decision does not mean that no photograph of a building
could ever violate a trademark, it would seem very difficult after
this decision for the owner of a building to convince a court that
a photograph of a building infringed any trademark rights. This
decision supports the position that in most situations, a photograph
of a building does not violate the building owner's trademark, and
additional permission is not required by law. Since trademark infringement
turns on issues of confusion as to the origin of goods and services,
it is still advisable to analyze each use on a case-by-case basis.
ASMP supported Gentile in his long battle with the museum.
REMINDER: The filing fee to register a work of visual art (i.e.,
photographs) with the Register of Copyrights was increased from
$20 to $30 last June 30, 1999. The Copyright Office does have forms
on line that will allow you to fill out the information on your
computer and print the completed form. You still must mail Form
VA, the deposit (two copies of the work) and the $30 to the copyright
office. No online filing yet, but you can throw away the typewriter
if the copyright forms were the only document you were still using
it for! You do need adobe acrobat writer to download the forms.
The copyright office home page is http://Icweb.loc.gov/copyright/forms.
23. NEW COPYRIGHT INFRINGEMENT
ACT PASSED BY CONGRESS
Congress has passed The Digital Theft Deterrence and Copyright Damages
Improvement Act of 1999. If signed by the President, this legislation
will bring stiffer penalties for both wilful and non-wilful copyright
infringement, provided that the work infringed upon is registered
promptly. In order to fall within the new Act's protection, the
photographer will have to have registered the work before the infringement
occurred or within three months of the first publication.
The new Act would increase minimum statutory penalties for non-wilful
infringement from $500 to $750 per infringement and increase the
maximum allowed recovery from $20,000 to $30,000. In the case of
wilful infringement, the maximum penalties allowed for each infringement
will be increased from $100,000 to $150,000. In the event a pattern
of wilful activity is shown, a party can seek increased damages
of up to $250,000. As before, the amount of statutory damages awarded
is discretionary with the court. Although the Act has yet to be
signed by the President, it is believed that it is likely to be
passed.
This revision to the Copyright Act, if passed, only further emphasis
the need to educate photographers about the importance if copyright
registration. Agents should stress to their photographers the value
of registering groups of unpublished images prior to submission
to the agencies. Unpublished images can be registered as a group
for $30 per application. Without a registration prior to an infringement,
the photographer retains a copyright in the image but is not entitled
to file an action until the registration is obtained, and cannot
collect statutory damages or attorney's fees. Even if the increase
in damages is not passed, it is easier to seek the existing statutory
damages under the Act than it is to prove actual damages in the
event of an infringement.
24. COURT HOLDS THAT SCANNING
OF A MAZE IS AN INFRINGEMENT
David Phillips, an artist who specializes in designing mazes and
maze theme books, brought a copyright infringement action against
Kidsoft L.L.C., an Internet corporation that specializes in material
for children. The 30 mazes involved in the suit were contained in
five books for which Phillips held valid copyright registrations.
Phillips was the sole creator of the contents contained in all five
books, and his mazes were often used on book covers, in magazines,
and on billboards. Phillips brought the action after he became aware
that Kidsoft had pulled the 30 images from his books, made alterations,
and then scanned the "altered" mazes onto their website
with America Online and inserted them into their "Club Kidsoft"
magazine, all without his knowledge or consent.
Kidsoft admitted to scanning Phillip's mazes onto their database
without first obtaining his permission for reproduction. However,
Kidsoft claimed that their actions did not constitute infringement
under the Act, because it had devoted significant artistic efforts
to the project and the ultimate results of these efforts were "notably
different" than the plaintiff's works. The court did not agree
holding that, whatever the changes were that Kidsoft had made, the
essential fact that the designs of the mazes Kidsoft published,
as well as the directions for solving the mazes, were for all original
purposes identical to Mr. Phillips originals. The court held that,
at best, Kidsoft's mazes were unauthorized derivative works rather
than unauthorized copies. Consequentially, the court found that
no reasonable jury could find that Kidsoft did not infringe Mr.
Phillip's rights under the Copyright Act, and thus granted his motion
for summary judgment.
The most interesting aspect of this case is not the holding but
rather the manner in which the court calculated the remedy that
Mr. Phillips received. Mr. Phillips requested statutory damages
in the amount of $100,000 per maze infringed, at a total of 30 infringements.
Kidsoft countered this by contending that regardless of the number
of individual mazes it copied from each book, that under the Copyright
Act, it was, at most, only liable for five infringements. Kidsoft
argued that the five-maze theme books from which it copied the mazes
qualify as compilations or collective works under the Act and that,
according to the express terms of the Act, Mr. Phillips was thus
only entitled to five awards of statutory damages. The court agreed,
stating that because the copyright registration certificates issued
to Mr. Phillips were issued for the five maze theme books, and not
for the individual mazes themselves, there were only five infringements.
In order for each of the mazes to have qualified as separate works
under the Act, each individual maze would have to have been separately
copyrighted and be determined to have had an "independent economic
value". The consequences of this holding can be far reaching
to artists who copyright their works in groups, rather than obtaining
individual registrations. This may be a particular problem for photographers,
where it is often financially prohibitive to register each individual
photograph created. Here, the consequences of group registration
may limit the amount of damages that can be recovered, when many
works from one collection have been infringed by one infringer.
25. VISUAL WEB CRAWLERS
The first "visual web-crawler" copyright infringement
case has been decided in favor of the Internet search engine and
against the photographer. A federal court in the Southern District
of California found that the creation of an index of "thumbnail"
size images from various web sites fell within the fair use defense
under the Copyright Act.
Photographer Leslie A. Kelly ("Kelly") brought an action
against Arriba Vista (now known as Ditto). Arriba operated a visual
web crawler that would search web sites for images rather than words.
It would produce an index of thumbnail size images that the user
could click on to see a full size version and an indication of the
website from which it originated. The user could then click on the
web site for the image. Kelly had two websites that featured his
images of California gold rush country and promoted his books on
the subject. Thirty-five of his images were indexed by the web crawler
and placed on Arriba's database in thumbnail form.
Kelly sent Arriba a notice of copyright infringement in January
1999 and filed a copyright infringement action in April that included
an allegation that Arriba violated the new Digital Millennium Copyright
Act (DMCA) by removing the copyright management information associated
with Kelly's images. Although Arriba removed most of the images
belonging to Kelly after the notice, a few remained available until
August. Since Arriba did not contest that it reproduced and displayed
Kelly's images in thumbnail size, its only defense to a successful
copyright infringement claim was fair use.
Fair use requires the court to analyze four factors. The first being
the purpose and character of the use (is it commercial use or non-profit);
second, the nature of the work; third, the amount and substantiality
of the portion used in relationship to the whole and fourth, the
effect of the use upon the potential market or value of the work.
Looking at the first factor, the court found that the use by Arriba
was commercial but more 'incidental' than if it had been used to
advertise its website since it indiscriminately searches for images
to offer a large database.
The court found that the use was "transformative" because
the images were reduced in size. The thumbnail could not be enlarged
without being blurred because the resolution could not be enhanced.
Further, the court found that the use of the thumbnails to be quite
different from the images on the actual web site, since they were
to be used for reference purposes and were not "artistic."
This factor weighed in favor of Arriba.
Regarding the second factor, the nature of the work, the court found
in favor of the photographer since photographs are in the class
of works that are intended to be protected under the Copyright Act.
Although the third factor looks at the amount of the work taken,
the court found that this factor favored the visual search engine,
even though the entire photograph was taken, because of the reduction
in size and the low resolution. This amount of copying was found
reasonable.
Looking at the direct impact of the market, the court looked at
the broad impact on the value of the website and not just the market
for the individual photographs. Even looking at this broader market,
the court felt ambivalent. While the possibility existed that the
Arriba's conduct might increase the chance of improper use, the
majority of users, the court concluded, might never have found Kelly's
site if it were not for the search engine. Without evidence on this
issue, the court gave this factor very little weight. In balancing
the factors, the court found in favor of fair use, largely based
on the importance of search engines and the usefulness of the reduced
versions of images for organization and access.
Further, in reviewing the new DMCA claim, the court found that it
did not apply to this case. The DMCA requires that no one may intentionally
remove or alter copyright management information. Since the copyright
information was only in the TEXT surrounding the photographs, and
not in the images themselves, there was no violation. To find a
violation, the court concluded that the information must be imbedded
in the work and the user must intentionally separate the information
from the work and know that this would lead to possible infringements.
At the time of the action, a full size version of the thumbnail
image could be found by clicking on the image, and a website name
was made available where copyright information could be obtained.
The search engines home page also contained a warning that use restrictions
and copyright limitations may apply to images retrieved by the search.
Based on the above, the court did not find that Arriba has "reasonable
grounds to know" that its conduct would cause infringement.
Further, the home page of the web site warned the users about copyright,
so it did not look on the face of it that the search engine was
intentionally trying to encourage copyright infringement. The court
dismissed the photographer's claim on summary judgment. (The new
version of the search engine ditto.com operates differently. When
a user clicks on a thumbnail, two windows open, one containing the
full size image and the other opens the originating web site.)
This is the first fair use case that looks at the size and resolution
of the unauthorized use. Hopefully, it will not be misunderstood
to indicate that any thumbnail use is considered "fair use".
What seems evident is that the court does not want to stand in the
way of the 'technology" revolution. Like the former industrial
revolution, courts are reluctant to tread where they do not see
or understand the harm in the use and see a rational purpose. The
ambivalence of the court is understandable. These visual web crawlers
can be used to find those who are infringing your images by leading
you to the infringer's web site. In terms of the DMCA, it is an
important lesson that to learn that the copyright management system
must be imbedded in the copyrighted work. Although copyright information
in the text surrounding the image is helpful for those who go directly
to the web site, the search engines will not find the text along
with the images. For those who do not want their material to be
indexed, the Ditto site now contains information on how you can
block its crawler from your web site.
26. DURATION OF COPYRIGHT
Since the duration of copyright protection was extended on October
1998, I have received many questions regarding the duration of copyright,
under both the pre-1978 and post 1978 Revised Copyright Act. When
images fall into the public domain is also a recurring issue.
QUESTION: If an image was published before 1924, it is no
longer protected by US copyright?
ANSWER: Works published BEFORE January 1, 1923, have fallen
into the public domain, but works published after that date could
still be protected by copyright if the copyright was renewed by
registration or afforded automatic renewal by law.
Under the 1909 Copyright Act, once a work was PUBLISHED, it was
required to be registered. The copyright was valid for 28 years.
In the 28th year, a renewal of copyright registration was required
to be filed to extend the copyright for another 28 years. However,
the copyright act has been revised many times to extend copyright
duration.
QUESTION: If prior to 1978, the creator of the image was
not necessarily the copyright holder, how do you find out who is,
and if it's still protected?
ANSWER: Again you can request that the Copyright Office provide
you with the registration certificate or the renewal certificate.
If the registration listed the creator's name as an author, you
would be able to find the name of the creator. The renewal may or
may not list the current copyright owner if the original creator
has since died.
If your heads are all spinning, do not despair, the Copyright office
has published an in depth review of the duration of copyright. See
Copyright Office Circulars 15, 15 (a) and 15(t).
Note: If a work was published without proper copyright notice
prior to March 1989, the work fell into the public domain and could
not be restored (unless it was a foreign work governed by GATT).
The issue of what is "published" has been interpreted
by the various courts and will be the subject of a follow-up copyright
update. The Copyright Office does not interpret the copyright Act.
The duration of copyright in various years becomes complicated.
The Copyright Revision of 1976, effective 1978, changed the duration
of copyright from a 28 year renewal scheme to life of the copyright
holder plus 50 years, unless it was a work for hire, in which case
the duration of copyright was for 75 years. The Sonny Bono Copyright
Term Extension Act of 1998 extended US copyright protection to life
of the author plus 70 years and it affects works retroactively.
Works for hire are now protected for 95 years. In addition, several
amendments to the copyright act over the years have extended the
duration of copyrights for works created under the 1909 Act, making
our system of copyright extremely complex.
The following is a summary of the duration of copyright:
1. A work published since January 1, 1923 and before 1964, and originally
copyrighted within the past 75 years, may still be protected by
copyright if a valid renewal registration was made during the 28th
year of the first term of copyright. If renewed, protection is now
for the full 95 years. Example, A work published on January 2, 1923
and renewed between January 2, 1950 and January 2, 1951 will not
fall into the public domain until the end of 2018.
2. Copyrights originally secured between 1950 and December 31, 1963,
still require renewal under strict time limits. If renewal was made
at the proper time, the renewal was for 67 years. If renewal was
not made, the works fell into the public domain at the end of the
first term (28 years).
3. Copyrights secured between January 1, 1964, and December 31,
1977, have an optional renewal, which automatically vests on December
31st of the 28th year. Certain benefits accrue with renewal but
are not required. It is still a two-term copyright but the second
term is 67 years creating a 95 year copyright. Works created on
January 1, 1964 will fall into the public domain at the end of 2059.
4. Copyrights in their second term on January 1, 1978, have been
automatically extended to a maximum of 95 years without he need
for further renewal.
5. Works created since 1978 are now protected for the life of the
author plus 70 years, and in the case of work for hire, 95 years.
6. Works in existence but UNPUBLISHED AND UNREGISTERED on January
1, 1978, were automatically given federal copyright protection.
All works are guaranteed at least 25 years of protection, or until
December 31, 2002, and if published before that date, the term will
extend another 45 years or through the end of 2047.
This means that works of art that have never been published (i.e.,
only exhibited in a gallery but never reproduced), even if created
in a year that if published would place it in the public domain,
are still protected by federal copyright protection. All terms of
copyright now run through the end of the calendar year in which
they would expire.
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