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Legal Updates 2000
1. ASTAIRE CELEBRITY IMAGE PROTECTION
ACT
California's statute regarding deceased celebrities rights
of publicity has always had an exception to permit the use of images
for what we consider "editorial purposes". This exception
has come under recent attack by celebrities wishing to obtain greater
control over the use of their images in magazines and other publications.
Fortunately California's exceptions regarding the commercial exploitation
of dead celebrities remain intact, notwithstanding efforts by Robyn
Astaire, the widow of actor Fred Astaire.
Under California law, the name, voice, or likeness of dead celebrities
may not be used to advertise or sell products without the permission
of the heirs. However, there have always been exceptions for political,
newsworthy and artistic works. Ms. Astaire contended that the exceptions
should be applicable only for serious artistic and literary works.
Opponents protested that removing the exceptions would grant heirs
the right to block almost any use and placing the burden on an author
to establish that their work was protected by the First Amendment.
The opponents of the bill prevailed. In addition, sponsors of the
bill initially sought to prohibit the use of digital technology
to alter the names or images of deceased celebrities. Such an amendment
would have prevented the use of historical characters with live
actors in films like Forrest Gump. They had also proposed language
that would have given heirs of a dead celebrity the right to sue
newspapers, magazines and film studios for falsely depicting the
celebrity. Both efforts were abandoned before the bill was finalized.
The final version of the bill states:
For purposes of this subdivision, a play, book, magazine, newspaper,
musical composition, audiovisual work, radio or television program,
single and original work of art, work of political or newsworthy
value, or an advertisement or commercial announcement for any of
these works shall not be considered a product, article or merchandise,
good or service if it is fictional or non-fictional entertainment,
or a dramatic, literary, or musical work.
At this time, the sale of photographs depicting deceased celebrities
to magazines and other publications does not run afoul of California
Law.
2.USE OF PUBLIC DOMAIN FILM
CLIP DOESN'T VIOLATE TRADEMARK
The Ninth Circuit U.S. Court of Appeals, which hears appeals over
federal district court cases in California, unanimously ruled that
a 30 second film clip of the Three Stooges' "Disorder in the
Court" played in the background of a scene in a 1996 movie
The Long Kiss Goodnight does not violate trademark laws. New Line
Cinema did not have to seek permission from Comedy III Productions,
holders of the rights to use the clip.
"Disorder in the Court" was no longer protected by copyright
and in the public domain. Without the armament of copyright law,
Comedy III Productions filed a trademark claim, known as a Lanham
Act claim, in order to protect their rights in the Three Stooges
image. Comedy III Productions has a history of aggressively going
after parties who use The Three Stooges' image. Their case against
a sketch artist who sold T-shirts bearing the likeness of Larry,
Curly and Moe is currently pending before the Supreme Court of the
State of California. The court rejected the Lanham Act argument,
finding that the short clip was not an "enforceable trademark".
To succeed under a Lanham Act claim, the plaintiff needs to demonstrate
likelihood of confusion over ownership of a trademark. The purpose
of a trademark is to identify the source and origin of goods. The
court made reference to the pending state court case and asserted
that if The Three Stooges likeness was on T-shirts, the heirs might
have an arguable claim. Also mentioned was the fact that just because
other film producers chose to pay Comedy III Productions a fee that
they did not have to, New Line Cinema was not legally obligated
to follow suit.
This case demonstrates the difficulty in relying on trademark law
rather than copyright law when trying to control the use of film
or still images that have fallen into the public domain. It is not
surprising that rights holders will try to use trademark law when
copyright law is unavailable to continue to control rights. Disney
has been trademarking illustrations of Mickey Mouse, knowing that
early films will soon enter the public domain. This decision supports
the long-standing practice of film and still archive houses of renting
images of public domain publicity stills and movie clips that are
not protected by copyright. Of course, some uses may still fall
under a Lanham Act claim, such as the T-shirt action, and each situation
should be analyzed as to whether the image or clip is serving as
an enforceable trademark. I will keep you updated on the status
of the pending state court claim involving the use of the illustration
on T-shirts.
SIGNATURES
An international affiliate had a question as to whether signatures
were protected by copyright or trademark in this country. Copyright
does not protect signatures since the Copyright Act expressly excludes
the protection of short words and phrases. Trademark law in the
United States is complicated by the fact that trademark owners have
rights based on use, while many countries require that any mark
must be filed in order to have protection. Marks are filed in the
United States as well, but a search of the filed marks will not
reveal those who claim rights simply by use. However, as the Three
Stooges' case demonstrates, the mark or signature must actually
be an enforceable trademark. It must be used to identify the source
of goods and services. And the alleged infringing use must actually
cause confusion over ownership of the mark. The answer to the question
will depend on the use of the signature.
3. DOMAIN NAMES NEWS
The conflict between trademark law and domain name reservation continues
to be a major issue, as many traditional businesses have adopted
web sites and entered in to the world of e-commerce. Trademark law
has always permitted unrelated businesses to share the same name.
You could be Ford, the car manufacturer, or Ford, the modelling
agency. But there is only one web address, or URL that can reside
at www.ford.com. Guess who has it!
When Network Solutions was the company that reserved domain names,
they reluctantly handled disputes, if one company had a trademark
that was identical to the domain name in dispute. Essentially, they
had hands off policy. If you had a dispute, they would put the name
on hold for a period of time and you needed to bring a court action
to resolve the dispute. Since Network Solution has turned the reins
over to ICANN, it is no longer placing names on hold. Now, ICANN
is the organization responsible for domain name reservation. In
the last days of 1999, ICANN officially adopted a new dispute resolution
policy. Under the policy, agreement, court action, or arbitration
must resolve most types of trademark-based domain-name disputes
before a registrar will cancel, suspend, or transfer a domain name.
Disputes alleged to arise from abusive registrations of domain names
(for example, cybersquatting) may be addressed by expedited administrative
proceedings that the holder of trademark rights initiates by filing
a complaint with an approved dispute-resolution service provider.
Persons who believe that a domain name has been registered in bad
faith now can force the domain name registrant into a mandatory
administrative dispute resolution process with one of three approved
dispute resolution "providers." Seven proceedings have
been initiated so far. Information regarding the Uniform Policy
and Rules, as well as Providers, current proceedings, and background
are available at ICANN's Dispute Resolution website: http://www.icann.org/udrp/udrp.htm
The administrative action is fairly inexpensive (as compared to
a court action) and quick. The relief is the cancellation of the
bad faith registration. Congress was active in legislating against
cybersquatters as well. Again in the last days of 1999, Congress
enacted the Anticybersquatting Consumer Protection Act, which was
passed as part of the Intellectual Property and Communications Omnibus
Reform Act of 1999. The legislation, which went into effect in December,
provides for both civil and criminal remedies against "cyberpiracy"
in the domain name/trademark context, and amends Titles 15 and 28
of the US Code. (The Trademark Laws) While the civil remedies are
retroactive, the criminal penalties are not.
Abusive registrations are those that register a name in bad faith
with an intent to profit. It applies to marks that are distinctive,
famous or protected by statute. Trademark owners can seek an injunction,
actual damages or statutory damages ranging from $1000 to $100,000,
costs and attorney's fees. The action, being part of the federal
Lanham Act, requires the complaint or proceeding to be filed in
federal court. Trademark owners have wasted no time in using this
new tool in the war against cybersquatting. A copy of the Act can
be found at: http://thomas.loc.gov. S 1948. Now those that are the
victim of cybersquatters, have a few more armaments against the
stagecoach robbers of the digital era.
4. THE USE OF PRINCESS DIANA'S
NAME AND LIKENESS ON MEMORABILIA IS HELD NOT TO BE AN INFRINGMENT
OF HER ESTATE'S MEMORIAL FUND
In a recent unpublished opinion, the Court of Appeals for the 9th
Circuit ruled in favor of the Franklin Mint Co., in an action brought
by The Diana Princess of Wales Memorial Fund, for alleged violations
of publicity, false association, false advertisement, and trademark
rights.
Franklin Mint was selling memorabilia which bore Diana's name and
likeness, and advertised that the profits from the sale of these
products would be donated to a charity that Diana supported. The
Memorial Fund claimed that prospective purchasers of these products
were likely to believe the profits mentioned were going to be donated
to their organization, when in fact there was no association between
the two parties. The Memorial Fund additionally requested that the
court force Franklin Mint to cease selling the merchandise because
of this likelihood of confusion. The Court of Appeals upheld the
lower court's dismissal of all claims and denied the Memorial Fund's
injunction request.
The Court refused to even address the Memorial Fund's right of publicity
claim, holding this right is a personal property right and therefore
must be governed by the law of the State/Country where the right
actually exists. Applied here, any postmortem right of publicity
that exists would be governed by England, Diana's domicile at the
time of her death. Furthermore, because England does not recognize
the right of publicity, no such right could pass to her estate upon
her death. For this reason, the right of publicity claim was dismissed.
The court also dismissed the Memorial Fund's false association and
false advertisement claims, holding that they failed to show that
Franklin Mint's conduct created a likelihood of confusion as to
whether the Fund was endorsing Franklin Mint's product. The court
found that just because Franklin Mint was using the name and image
of Princess Diana, the meaning of the mark was different that the
Fund's mark because of the context in which it was marketed. The
Fund used a purple crest to signify that a product is authorized
by their organization, and no such crest was on Franklin Mint's
product. The court also felt that the high cost of Franklin's product
would reduce any likelihood of confusion noting that, "most
purchasers exercise greater care when buying expensive items."
Finally, the court dismissed the Memorial Fund's trademark claim.
The court ruled that the name "Diana, Princess of Wales"
has not acquired a secondary meaning such that it has become synonymous
in the public mind with charitable activities. They stated that,
"while Princess Diana received a great deal of media attention
for her charitable acts, she received equal if not greater attention
for her status as a member of England's royal family." For
this reason, that was no reason to believe that the Fund was likely
to succeed with any trademark dilution claim in conjunction with
their organization.
This case is yet another example of how aggressively owners may
attempt to protect what they believe to be their rights. When no
copyright remedy is available, claimants will often try to fit their
attack into types of actions, such as right of privacy claims and
trademark infringement suits. It is important to note that, regardless
of the law asserted, each case must be determined on a case by case
basis and there is no across the board rule to turn to. Even if
you win, these cases can be extremely time consuming and expensive.
5. MESSENGER VS. GRUNER AND JAHR
Recent Ruling in New York on Use of Photographs in Newsworthy Articles.
This Friday, the New York Law Journal published an important decision,
Messenger v Gruner + Jahr Printing and Publishing by the New York
State Court of Appeals (New York's highest court- the Supreme Court
is the lowest court) interpreting New York's Right of Privacy Law,
Section 50 and 51 of the New York Civil Rights Law.
The plaintiff, a teenage girl and minor, consented to be photographed
for the magazine Young and Modern (YM) published by Gruner + Jahr.
No legal consent was obtained from her parent or legal guardian.
The photographs were published as an illustration for a column entitled
"Love Crisis" which began with a letter to the editor-in-chief
from a 14 year old girl identified as "Mortified". A pull
out quote in bold type above the column states "I got trashed
and had sex with three guys". The letter details a teenager
who got drunk at a party and had sex with her 18-year-old boyfriend
and two of his friends. The editor-in-chief, wisely responds and
tells Mortified that she should avoid that situation in the future
and should see a doctor for a pregnancy test and to be tested for
sexually transmitted diseases. Three full color photographs of the
plaintiff illustrate the article.
The plaintiff brought an action in the United States District Court
for the Southern District of New York, alleging that the magazine
violated Section 50 and 51 of New York Civil Rights law that prohibits
the use of ones picture for purposes of advertisement or trade without
written consent. The magazine moved to have the case summarily dismissed,
arguing that it could not be liable as a matter of law because the
photographs were used to illustrate a newsworthy column, and that
the photographs had a real relationship to the article and it was
not an advertisement in disguise. The teenager argued that the newsworthy
exception should not apply because the column and the photographs
gave the false impression that the teenager in the photograph was
the author of the letter. The district court agreed and the jury
awarded $100,000.
Upon appeal the Second Circuit certified the New Court of Appeals
to answer a question involving New York State Civil Rights Law "May
a plaintiff recover under Section 50-51 where the defendant used
the plaintiff's likeness in a substantially fictionalized way without
the plaintiff's consent, even if the use is in conjunction with
a newsworthy column?" Fortunately for the stock photography
industry, where the editorial use of images has relied on the newsworthy
exception under New York Law, the answer was in the negative. It
should be noted that laws involving the rights of privacy and publicity
vary from state to state. There are no federal statutes for uniform
guidance. New York does not recognize any common-law right of privacy.
If you cannot make a claim under Section 50/51, you are out of luck.
The New York Statute has always been recognized as a limited right
of privacy and has been very narrowly construed. In contrast, the
newsworthy exception is broadly construed and includes actual events,
political happenings, social trends and any matter of public interest.
The courts do not hold the public to a high standard when considering
what is of interest to the public! If the picture is used to illustrate
an article of public interest, there are only two conditions in
which the publisher can be liable. One is if the picture bears no
relationship to the article. The second is if the article is really
an advertisement in disguise. For example, a prior New York case
permitted the publication of photograph of a large family to illustrate
and article about the effects of caffeine and in vitro fertilization
even though none of the children were conceived through in vitro
fertilization.
The plaintiff in the Messenger case argued that an action for violation
of the right of privacy statute should still be permitted if the
photograph and the article creates a substantially fictionalized
impression. The court rejected this argument and limited the analysis
of whether the newsworthy exception applied to the two factors described
above, specifically: 1) whether the photograph bears a real relationship
to the a newsworthy article and 2) whether the article is an advertisement
in disguise.
This case was followed closely by New York's large publishing community.
Claims for violation of rights of privacy is an area of great vulnerability
for stock agencies as well, even if they are careful and have "sensitive
subject policies". The client may not always give enough information
about the contents of the article that the photograph is intended
to illustrate. The photograph may be appropriate but a caption such
as "I got trashed and had sex with three guys" could make
the use offensive to the person depicted.
PACA's recommended language in its form of invoice provides that
the user must hold the agency harmless for any claim arising out
of the use of a photograph and that the client may not use a photograph
in any manner that is defamatory. But everyone knows if a model
brings a lawsuit in this area, the lawyers try to bring everyone
one into the case: the publisher, stock agency and photographer.
However, this decision greatly limits the ability of a model or
person depicted a photograph to bring a successful claim for the
use of a photograph that accompanies any article that is of public
interest, no matter how offensive the use. Of course, this decision
does not apply to the use of a photograph for purposes of advertising
or trade. The importance of valid model releases when licensing
photographs for commercial use is not changed by this decision.
WOLFF AND GODIN
Nancy E. Wolff is pleased to announce that Helene Godin has joined
the firm as a partner. The firm's name has been changed to Wolff
& Godin, LLP. Helene Godin is an intellectual property and entertainment
lawyer with a subspecialty in media law.
6. BACKGROUND TO $1500 IMAGE
VALUE
QUESTION: We would appreciate any information you can provide
concerning the value of $1,500 being used per image.
Background:
The business of licensing images, or stock photography, operates
under the United States Copyright Law wherein the photographer or
his or her heirs, controls all rights to and usage of the image
for the duration of the copyright (presently the life of the creator
plus 70 years). In licensing the right to use photographs, the fee
paid is determined not only by the photograph itself but more importantly
by the intended use. Thus a photo may be used one month as a magazine
illustration for a fee of a few hundred dollars and several months
later the same photograph may be licensed for a national advertisement
for many thousands of dollars. This repeated licensing continues
for the life of the photographer and eventually as part of the photographer's
estate.
The photographic industry, back in the late 70's, under the auspices
of the American Society of Magazine Photographers (ASMP) undertook
to establish a fair and equitable value for stock photographs. This
was done through surveying photographers, agents, advertising agencies
and publishers as to the number of times images sold and the fees
paid for the various types of uses. The survey revealed that on
average, a professionally taken and professionally edited image
would sell 3 to 8 times over the life of the copyright for fees
ranging from $150 to $10,000. It was thus determined that $1500
per image was a reasonable and conservative value to place on professionally
taken and professionally edited photos. This figure first appeared
in print in the Guide to Business Practice published in its first
edition by ASMP in 1973. It has continued to appear in 3 subsequent
editions plus two editions of the ASMP Stock Photography Handbook.
In the intervening years, this figure has been accepted by the professional
trade organizations such as the American Society of Picture Professionals
and as well as the Picture Agency Council of America. PACA's legal
forms recommend that the agency state a value for each photograph
in its stipulated damage clause. It is imperative that a sum certain
is used to value each original image and not a minimum figure, which
has been disallowed by the courts as an invalid liquidated damage
clause. Many agencies value each original transparency at $1500,
while other choose an increased figure, given the number of years
since 1973 when the figure was first used. The courts have for some
years used this same $1500 figure as a benchmark in assessing damages
while determining that some images may be worth more and some worth
less. Both the courts and the industry consider a number of criteria
in determining valuation.
1. technical excellence
2. the selective eye of the photographer.
3. The prestige and earning level of the photographer.
4. The uniqueness of the subject matter.
5. Established sales or use prices.
6. Group value of individual images.
7. Frequency of acceptance by users.
CASES:
These factors were first enumerated in a New York case entitled
Rattner v. Geo Magazine, Supreme Court, New York County, Index No.
15762/84 (Shorter, J.) N.Y.L.J. page 39, col. 2, 3/16/87). The figure
of $1500 was used by the New York Court in Hoffman v. Portogallo,
Supreme Court, New York County, Index No. 19102/85 (Gabel, J.) 6/26/87.
The Appellate Division in New York upheld the value of $1500 for
a photographers best work over a period of years in Girard Studio
Group v. Young & Rubicam, 147 A.D. 2d 357 (1st Dept. 1989) and
in Lowit v. Consolidated Edison Company of New York 24 A.D. 2d 2;
650 N.Y.S. 2d 152. (1st. Dept 1996).
This figure was not intended to cover every image taken by a professional
photographer, only those that met rigid standards of editing for
professional quality and marketability.
Recent cases have emphasized the "uniqueness" of the photographs,
looking at subject matter and replacement costs, and earnings potential.
In Gasperini v. Center of Humanities, Inc. 972 F. Supp. 765 (SDNY
1997), vacated on other grounds, 149 F 3rd 137, 1998 U.S. App. LEXIS
16177, 1998 WL 374953 (2nd Cir. 1998), the court determined that
a number of photographs lost by the defendant were unique and valued
at $1500, while other more generic images were given a lesser value.
In addition, when agencies have brought arbitration demands against
clients to recover damages based on the terms contained in their
delivery contracts for the loss or original transparencies, the
stipulated damage clause in the agencies' invoice and delivery contract
are usually upheld by the arbitrator where the paperwork is proper.
The importance of correct documentation cannot be stressed enough.
At some time, when all delivery is digital, these concerns may no
longer be relevant. However, there are still millions of valuable
photographs in the files of the various agencies. Unfortunately,
some do get lost. Some insurance companies may request an expert
report to substantiate the loss. PACA through Jane Kinne and Nancy
Wolff had begun an expert witness program to train various members
in preparing such reports. You may wish to contact the PACA's legal
committee to get a list of the members who were involved in the
program. Jane Kinne (203-966-4900) is currently the head of this
committee.
(Nancy Wolff would like to thank Jane Kinne for providing her with
certain information on the background of the $1500 valuation.)
7. THE DIGITAL THEFT DETERRENCE
AND COPYRIGHT DAMAGES IMPROVEMENT ACT
A new bill, The Digital Theft Deterrence and Copyright Damages Improvement
Act of 1999, has been passed by both the Senate and House and signed
by the President. This amendment to the 1976 Copyright Act imposes
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 copyright owner
must have registered the work before the infringement occurred or
within three months of its first publication. The new Bill increases
minimum statutory penalties for non-will infringement from $500
to $750 per infringement and increases the total allowed recovery
from $20,000 to $30,000. In the case of wilful infringement, the
total penalties allowed for each infringement were also increased,
rising from $100,000 to $250,000. The new Bill applies to any infringement
that is brought on or after December 9, 1999, regardless of the
date on which the alleged activity that is the basis of the action
occurred.
8. REQUEST FOR SUPPORT FROM THE
GRAPHIC ARTISTS' GUILD
The Graphic Artists Guild has requested that PACA help them
support an Amicus curiae brief in support of the photographer Leslie
A. Kelly in his appeal of the decision Kelly v. Arriba Vista Soft.
Corp., the first "visual web-crawler" copyright infringement
case that was decided in favor of the Internet search engine and
against the photographer. As noted in a previous update, a federal
court in the Southern District of California found that the creation
of an index of over two million "thumbnail" size images
from various web sites fell within the fair use defense under the
Copyright Act. The court principally based its decision on the importance
of search engines in the functioning of the web, and found that
the copying of entire images to be transformative fair use. By reducing
the images and organizing them for others access to them, the search
engine had "transformed" the use from the initial illustrative
purpose. The court described the capturing and reproduction of the
images as functional, rather than artistic, thus the use by the
web crawler was considered to be very different from the illustrative
use the photographs were used for on the photographer's website.
Even assuming visual search engines are essential to the functional
of the web, the court's fair use reasoning was weak and may have
impact to the visual licensing community beyond this case. The lenient
fair use approach to web usage has never been applied before this
case. First, analyzing the functional verses artistic purpose of
a visual work has been rejected by other courts in the past and
can be a dangerous slippery slope. Where does one draw the line
between function and aesthetics in the use of illustration? In addition,
in analyzing the likelihood of harm to the market for the creator's
work, the court found no harm or adverse affect, even though the
engine permitted access to images through "deep linking"
which avoids the home page and potential advertiser supported sites.
The Graphic Artists Guild has hired a pre-eminent copyright firm
in New York to prepare an Amicus curiae brief supporting an appeal
of the decision. The American Society of Media Photographers has
already retained another attorney to file a separate Amicus curiae
brief. The Graphic Artist Guild is looking for support from the
image licensing community, since it believes that the lenient approach
to fair use on the web could result in furthering the already "wild
west" view that copyright does not exist for uses on the Internet.
While PACA does not have any legal fund earmarked for litigation,
the reasoning of this case could impact the ability to license on
the web and police infringements on the web. We would like to show
our support to the Graphic Artists Guild in this effort and have
set a goal of raising $2000. Any member interested in donating a
sum to the effort is requested to send a check to Lonnie Schroeder
payable to PACA Legal Fund.
9. WHEN IS A BOOK NOT JUST A
BOOK?
Question: When is a Book Not Just a Book?
Answer: When it is merchandising.
Most agencies are comfortable with the distinction between editorial
and commercial use when licensing images. One area that can wear
two hats is a book. In general, photographs that illustrate truthful
books on a subject of public interest are considered "editorial"
and non-commercial. But what if the subject of the book is a protected
property, such as a fictitious television show, or a commercial
property, such as Beanie babies?
Recently, publishers that have distributed books based on popular
television shows, such as a Seinfeld quiz book, or lessons on how
to talk to a "Trekky" have been subject to copyright infringement
lawsuits for treading on territory that has been considered the
exclusive domain of the copyright owner, the right to license merchandise.
Companion books to popular television shows have become a property
that the owner can license to a publisher. They do not like it when
a publisher distributes unauthorized books and cuts them out of
their licensing fee.
A recent case has extended this concept to books on popular fads.
The district court for the Northern District of Illinois rejected
a publisher's claim that the first amendment precluded the issuance
of a preliminary injunction against a publisher's alleged copyright
and trademark infringement. The books in question were "For
the Love of Beanie Babies" and "Beanie Babies Collector
Guides." The books featured photographs of the plush toys,
including the heart hangtag, a historical essay on the subject,
estimated values and the author's ratings. Ty, Inc. the creator
of the plush animal toys is known for aggressively protecting its
property and has sued many companies for selling "knock-off"
toys.
The books contained the disclaimer "This publication is not
authorized or licensed by Ty Inc. Publications International, Ltd.
is not affiliated with Ty Inc.". Ty, however, had licensed
another publisher to distribute the "Beanie Babies Official
Club" and that licensee complained about the competition. The
court rejected the argument that copyright injunctions are an unconstitutional
prior restraint on speech under the First Amendment. The court stated
that the fair use doctrine is adequate to protect a person's constitutional
right to comment and criticize the Beanie Babies. Fair use, however
was not a defense in this case relying on a prior decision in which
a Seinfeld trivia book was not fair use. Essentially, it was a commercial
work that affected the licensing of the copyright owner's property.
The books were also found to violate Ty's trademark, finding a likelihood
of confusion between the official and unauthorized books, despite
the disclaimer. So, when a client tells you that they need images
to illustrate a book, you should find out more about the type of
book, particularly the subject matter.
AND A REMINDER...from last week's article:
The Graphic Artists Guild has hired a pre-eminent copyright firm
in New York to prepare an Amicus curiae brief supporting an appeal
of the decision. The American Society of Media Photographers has
already retained another attorney to file a separate Amicus curiae
brief. The Graphic Artist Guild is looking for support from the
image licensing community, since it believes that the lenient approach
to fair use on the web could result in furthering the already "wild
west" view that copyright does not exist for uses on the Internet.
While PACA does not have any legal fund earmarked for litigation,
the reasoning of this case could impact the ability to license on
the web and police infringements on the web. We would like to show
our support to the Graphic Artists Guild in this effort and have
set a goal of raising $2000. Any member interested in donating a
sum to the effort is requested to send a check to Lonnie Schroeder
payable to PACA Legal Fund.
10. THE CASE OF "DEEP LINKING"
In a ruling that confirms that courts are hesitant to interrupt
the free openness of the Internet community, a federal judge in
Los Angeles has ruled that online companies can legally offer links
to rival websites. Many new Internet firms will link to competitors'
websites to attract visitors in a practice that is know as "deep
linking" because it bypasses the front page. The front page
typically contains more of the banner advertising for the website.
Most web companies rely on advertising revenues as their main source
of income.
The ruling was in favor of startup Tickets.com, which was the defendant
in a lawsuit filed by Ticketmaster Online-CitySearch. Ticketmasters
sued a rival startup and alleged that so-called hyperlinking should
be banned. Both companies offer tickets to numerous events and allow
consumers to purchase the tickets online. Ticket Masters was hoping
that the lawsuit would end the intrusion to their website by unauthorized
linking. However, U.S. District Judge Harry Hupp dismissed four
counts of Ticketmaster's claim, writing that "deep linking
by itself...does not necessarily involve unfair competition."
Hupp said hyperlinking is not illegal as long as consumers understand
whose site they are on and that one company has not simply duplicated
another's page. Ticketmaster plans to file an amended complaint
attempting to reinstate the dismissed claims.
The courts have never squarely addressed the legality of deep linking.
Several cases have been filed in the past that involved unauthorized
linking to some degree, but most settled, leaving little guidance.
It is the view of many that linking is no more than a footnote in
an article, referencing another company or work. The proponents
believe that linking is an integral part of the information highway
and should not be discouraged. Companies that invest large amounts
of capital in expensive web sites would prefer some control over
who and how the linking occurs. So there are yet few known rules
on this information highway.
11. MORRIS VS. BUSINESS CONCEPTS
INC.
A federal district judge in New York dismissed a copyright action
brought by an individual author of a monthly magazine column on
the grounds that the author did not have a valid registration. The
defendant had copied and republished 24 previously published articles
without her authorization or credit. The author had granted Allure
magazine first right to publish the articles for 90 days in the
United States, and the nonexclusive right to republish the articles
through the life of the copyright. Condé Nast, the owner
of the publication, applied for and received Certificates of Registration
from the Copyright Office on each publication.
The defendants, Business Concepts Inc. publish a newsletter that
republished her articles, without obtaining permission. There was
no issue that the author was the owner of the copyright to the articles,
or that the defendants had infringed her copyright. The issue was
whether the author had the keys to the Federal Court house, a valid
copyright registration. The court determined that the magazine's
copyright registrations in the compilation (the magazine), did not
afford protection in the author's individual articles. The author,
like many authors and editorial photographers, do not individually
register each work, but rely on the fact that the magazine's registration
is for the benefit of the individual contributors. This understanding
has a long history and was part case law that developed under the
1909 Copyright. Until this case, there was no decision to the contrary.
In fact, other federal district courts have specifically held otherwise.
In the case of Curtis v. General Dynamics involving the photograph
of a wheelchair that was first published in Communications Art,
a district court in Washington State, found that the magazine's
assignment of copyright to the photographer, in the collective copyright
in the magazine satisfied the requirements of the Copyright Act.
While the photographer also filed for his own registration after
the infringement, the magazine's prior registration was sufficient
to afford him the benefit of statutory damages. It does not make
sense that in the Curtis Case, the author could rely on the prior
registration of the publication for statutory damages, and that
in the Morris case, the same collective registration could not grant
the author the right to commence an action for copyright infringement.
The formalities of the US Copyright Act, including the need for
registration, has long been criticized. The financial burdens of
registering a large body of work often make registration prohibitive.
The consequences of this decision are great if it is followed by
other courts. Imagine the number of separately owned works in a
large textbook or encyclopedia. Once the work was published, each
contributor, which could be hundreds or more, would be obligated
to send in an application, $30 dollars, and two copies of the textbook
to the Copyright Office. The capacity of their already full warehouses
will have to be increased many times. Further, it seems contrary
to the intent of the Revised Copyright Act of 1976, that authors
have less rights than they did under the 1909 Act, where it was
clear that the individual contributors were beneficial owners of
the publisher's copyright. I understand an appeal has been filed.
This case may be an appropriate one for PACA to lend support in
an Amicus brief since it affects the ability to enforce copyright
protection in all editorial works. The need to separately register
each image published editorially is unreasonable and may be impossible,
since tear sheets are often not provided once a work has been published.
I will keep you posted on any developments.
12. WEBSHOTS.COM
It has come to my attention, via many PACA members, that the website
"Webshots.com" is possibly infringing upon the rights
of many members and/or their clients. For those members who are
unfamiliar with the site, Webshots.com is affiliated with Excite@home.
Webshots.com provides all users a free membership, where they are
then given access to a database of hundreds of thousands of photographs,
and are provided with free software that allows them to upload their
own photos to be included in this database. The photographs are
then available for downloading as screen savers, wallpaper, and
e-cards. In addition to providing its members individual access
to these images, Webshots.com also sells the images in its database.
Upon request, the photos are "printed" by Webshots.com
in their own photo lab (framing is optional) for a fee and shipping
charge. All of this activity is done without any regard to the photos'
origin or inquiry into the photos' copyright.
Because of the vast amount of photos in Webshots.com's database
(over 400,000 and growing daily), and because of the site's lack
of inquiry into the copyrights of these photos, many PACA members
are being affected by this commercial activity.
I have been requested by the President of PACA, to contact Excite@home's
counsel, on behalf of all PACA members, and try to put an end to
this activity as soon as possible. If any members have further information
that would be helpful please contact me at 212-787-1640.
13. WEBSHOTS.COM UPDATE
This letter was sent to Excite.com on our behalf by Ms. Wolff:
John Sullivan, Esq.
Excite@home
450 Broadway Street
Redwood City, CA 94063
Re: Webshots.com
Dear Mr. Sullivan:
I am the counsel for the trade association, Picture Agency Council
of America, whose members include most of the stock photo libraries
in North America with many international affiliates. I was asked
to contact you on behalf of PACA in order to resolve an issue that
affects many of the members, in the hopes that we can more efficiently
as an organization address the problem and arrive at a workable
solution.
It has come to many members attention, that a website affiliated
with your company, "Webshots.com" contains thousands of
photographs that users may download as screensavers, wallpaper,
e-cards, etc. With the aid of free software, Webshots.com members
can utilize images that are already on your site, or upload images
that are in their own possession for others to users. It has also
come to many users attention, that many of the photographs are copyrighted
and license have not been obtained for Webshots.com for their use
on the site.
As you know, most stock agencies operate under the same industry
practices and norms. Photographs are licensed for a particular usage.
All other rights are reserved to the owner. If additional usage
or rights are necessary, further permission must be sought and granted.
Neither Excite@home, Webshots.com, nor the members of your "community"
have requested permission for the duplication or distribution. While
we understand that it is usually not your company, but rather a
member, that is providing the image, Webshots.com is providing the
software ("tools") for which this activity can be accomplished.
These tools are critical to the infringements that are occurring
and your awareness of this fact is even evidenced by the reply-email
you send to new members upon registration, which states, "Our
goal is to provide you with all the services you need to enjoy and
share photo online." At a minimum, this activity is contributory
infringement.
Additionally, Webshots.com offers to print any image in their database
from their own photo lab, frame it, and then sell it to any members.
This unauthorized commercial distribution of copyrighted photographs,
is an infringement under the 1976 Copyright Act, plain and simple.
Webshots.com is denying the lawful copyright hold their exclusive
rights of reproduction and distribution. I understand that Webshots.com
has asserted protection for these activities based on the Digital
Millennium Copyright Act. As a specialist in the area of copyright
law, with a focus in the photography industry, I can confidently
assure you that this "protection" does not exist. I am
extremely familiar with the DMCA and, 1) Webshots.com is not an
"ISP" under the definition provided in the Act, 2) Even
if Webshots.com did qualify as an "ISP" it is still guilty
of contributory infringement if it does not remove infringements
upon notification, and 3) Webshots.com's own commercial activity
of selling photographs it does not own the copyright to is completely
outside the scope of the DMCA's protection provisions.
Webshots.com's activity is not unlike that which is currently being
litigated in Northern District of California between the members
of the RIAA and Napster, Inc. As I am sure you are aware, Napster.com
also provides it users with the software to download and upload
copyrighted music onto its database. While this case is still being
reviewed, the court has ruled that Napster is not merely a conduit
for it member's activities and has thrown out the company's defense
that it was entitled to "safe harbor" protection under
the DMCA.
I am also aware that the Webshots.com site contains a link providing
information on what steps to take if an infringement is found on
the database. However, as I am sure you will agree, pinpointing
every infringement that exists on your vast database is virtually
impossible. We are already aware of hundreds to thousands of infringements
that currently exist, and this number is growing as we speak. It
would take a full-time employer at a stock photo agency over a month
to scan all the images in your database, and by the time they were
finished there would be hundreds of new images added by your community
that would have to be searched. This is an extremely unreasonable
burden to place on companies and individuals, who are simply interested
in protecting what is legally theirs - the exclusive copyright in
their image.
We thought that we would give you the courtesy of bringing this
problem to your attention quickly so you could look into it and
get back to me. I am sure that Excite.com would not purposely wish
to place itself in a position in which it has infringed the rights
of so many copyright holders. Our intent is to quickly stop this
unauthorized activity and come to an amicable solution.
If you should need any further information, please do not hesitate
to contact me. I look forward to talking with you shortly.
Sincerely, Nancy E. Wolff, Esq.
Editor's Note: We will keep you posted on this situation.
14. IMPORTANT NOTICE REGARDING
"GROUP REGISTRATION OF PHOTOGRAPHS" WITH THE US COPYRIGHT
OFFICE
- TIME IS OF THE ESSENCE -
The United States Copyright Office is seeking public comment the
following proposals regarding 'group registration' of photographs.
Please note that all comments are due by June 19, 2000. After reviewing
the comments, the Copyright Office will finalize its proposal and
adopt new regulations on this matter. The following is a summary
of the issues that the Office is requesting comment on. Please keep
in mind that these proposals are only to change to registration
of published photographs (regulations for unpublished images remains
the same).
1. Under the proposed regulations, a claimant must identify the
date of publication of each image published within the same calendar
year and submitted for registration. As deposited copies, the Office
will accept in digital form on CD-ROM or DVD-ROM; single images;
contact sheets; slides with single images; slides containing up
to 36 images; or multiple images on video tape. The Office will
also accept copies of the photographs in the formats in which they
were originally published (e.g. clipping from magazines or newspapers).
The final regulation will specify how dates must be provided for
each photograph in the group in such a way that for each photograph,
one can ascertain its date of publication. Recommendations about
the best methods for providing this information are invited. In
the proposed regulations, applications will have the option of identifying
each photograph and its date of publications separately on a continuation
sheet or of indicating the date of publication on each photograph
itself. For example, if separate photographic prints were deposited,
the date of publication of each photograph could be written on the
back of the print. However, for other formats (i.e. CD-ROM) other
ways of indicating the date of publication for each image will be
necessary.
a. Comments are invited on how the date of publication
of each photograph can be indicated on the deposit itself for
deposits made in such formats, and how each date can be connected
to the pertinent photograph.
b. Comments are also invited on how the date
of publication can be indicated on a continuation sheet, and how
each date of publication entry on the continuation sheet can be
related to a particular photograph or photographs. For example,
if the continuation sheet is used, should each photograph be numbered
consecutively; and for each photograph, should that number be
written or other wise indicated on the corresponding copy of the
photographs that is deposited?
c. Comments are also invited on whether the
Office's general continuation sheet, Form CON, should be used
for this purpose or whether the Office should provide an optional
specialized continuation sheet, similar to Form GR/CP (the adjunct
application form for group registration of contributions to periodicals),
which could provide specific information (e.g., title or other
description, date of publication) about each photograph included
in the group.
2. Comments are invited on whether claimants should
be required to number the photographs in a group consecutively (e.g.
from 1 to 500), and to indicate the number of each photograph on
or affixed to the individual image of the photograph that is deposited.
Would such a numbering requirement assist in identifying dates of
publication of each photograph when a continuation sheet is used,
as suggested in the question above? Would such a requirement assist
in creating a clearer public record? How burdensome would such a
requirement be?
3.Should the Office accept deposits in formats other than those
mentioned in item 1? If so, what other formats should be accepted?
Each format must be capable of providing a complete image of each
photograph in the group.
4. For photographs submitted on CD-ROMs or in other electronic formats,
what file formats (e.g. JPEG, GIF, etc.) should be accepted, and
why?
5. As an alternative to requiring a claimant to provide the date
of publication of each photograph in the group, should the Office
consider offering the alternative of providing a range of dates
over a three-month period (e.g. January 1- March 31, 2001)? What
would be the advantages and disadvantages - to claimants and to
the public record - of such an approach?
The previous information was taken directly from the Proposed Rules
section of the United States Copyright Office homepage. For additional
or more detailed discussion of the issue, you may find more such
information at www.loc.gov/copyright or www.access.gpo.gov/su_docs/aces/aces140.html.
15. WELL EXPLAINED TERMS IN LICENSING
AGREEMENTS ARE MONUMENTAL
In a recent ruling, a federal court issued a decision reinforcing
the importance of inserting specific terms and conditions in license
agreements. This Pennsylvania case, Perry v. Sonic Graphic Systems
Inc., involved a professional photographer who issued a license
agreement to the defendant's company for use of his photographs
in conjunction with an advertising brochure to be distributed within
a specific local area. The agreement contained very specific terms
as to the type, area, and time frame of use of the images. The agreement
also contained a clause stating that "no alterations may be
made in these provisions without the express written consent of
the photographer."
Approximately one month after the agreement was signed, the plaintiff
photographer discovered that the terms of the agreement had been
violated and the images were being used in a much broader area and
type of use than was agreed upon. Immediately upon making this discovery,
the photographer initiated discussions with the defendant about
the unauthorized activity. The defendant's reply to the photographer's
concerns was that he did not think that clauses in the agreement
were serious and he based this assumption on previous 'more casual'
transactions that the parties had entered into.
The photographer brought suit in federal court against the defendant
for copyright infringement and breach of contract. In an effort
to prove the validity of his assumptions, the defendant requested
that the court look further than the actual words of the contract,
towards evidence explaining the past transactions between the two
parties. The defendant hoped that if the court did look to the extrinsic
evidence, it would see that the contract wasn't "serious".
The court refused the defendant's request, stating that evidence
as to disputed terms in a contract is only admissible when the contract
is ambiguous. The court held that the contract here was not ambiguous,
but was instead very clear as to its terms and conditions. Based
the defendant's infringing behavior and the clear and concise wording
in the licensing agreement, the court issued a ruling in favor of
the photographer.
Because there are countless numbers of licensing agreements that
change hands in the stock photo industry, it is very important that
the terms of the contract always be clearly and completely worded
in the actual agreement. While separate written instruments and
oral conversations may sometimes be allowed into evidence, as this
case shows that is not always the case. The possible exclusion of
evidence can harm stock photo agencies as easily as it can help
them in these types of disputes.
16. UPDATE ON CATALOG REGISTRATION
Background:
In general, a freelance photographer obtains copyright protection
in a photograph at the moment the photograph is created. However,
the United States Copyright Act rewards registration of works and
limits the damages any creator can receive in the event of an infringement,
if the work was not registered before an infringement occurs or
within three months of publication. Unless a photographer has obtained
a prior registration of a photograph, the court will only award
actual damages in the event of an infringement. No statutory damages,
or increased damages for wilful infringement can be awarded. Statutory
damages are the amount of damages a court can award in its discretion
against an infringer, without the owner of a work having to prove
that he or she was damaged. Statutory damages can be awarded up
to $30,000 per infringement and increased up to $150,000, in the
event of wilful infringement. In addition, unless the work was registered
prior to infringement, no award of attorneys' fees can be made.
The reality is that in most situations in which a photograph has
been infringed, the amount of damages that can be proven, will not
justify the cost of an expensive federal copyright litigation.
The registration of photographs is burdensome and expensive. At
present, the fee for each copyright registration is $30. While unpublished
photographs can be filed in "collections" of work, published
photographs must be individually registered (or if published in
the same work, those images may be registered together). The deposit
requirement is also burdensome, a copy of each work filed must accompany
the registration application. The Copyright Office is aware that
the Copyright Act places a burden on photographers, who create large
bodies of work annually, that is not shared by many other creators,
such as a writer who might only have a few works to register each
year. It is also obvious that published works are the ones that
are scanned, copied and now downloaded. While it would be ideal
if every photographer submitted to stock agencies, only registered
photographs, most photographers, daunted by the task and expense
of copyright registration, do not register their photographs.
PACA members were particularly concerned with protecting the images
published in their catalogs. The ability to register a stock photography
catalog in such a way that the photographs, as well as the catalog,
are all protected under one copyright application has always been
a challenge. There are essentially two types of copyrights involved
in the publication of a catalog. The agency owns the copyright to
the publication as a whole, known as a collective work or compilation,
and includes the selection and arrangement of the photographs and
any parts of the catalog owned by the agency. In addition, each
contributing photographer or illustrator owns the copyright to his
or her individual photograph or illustration contained in the catalog.
Copyright Office regulations only permit one claimant per application.
Under these regulations, each contributor and the agency would have
to file a deposit of two copies of the catalog and a separate application
per image (or group of images by one claimant) for $30 per application,
amounting to hundreds of applications and fees per catalog.
PACA'S MEETING WITH THE COPYRIGHT OFFICE:
The burden and expense of this procedure resulted in a meeting five
years ago among PACA (the then President and the Legal Committee)
and the Register of Copyrights, the Chief Examiner and the Head
of the Visual Arts Department at the Copyright Office. At this meeting
and through follow-up conversations, a recommended simplified registration
of catalogs was established. The only way to file ONE application,
is for the individual contributors to grant the agency legal title
in the photographs for copyright registration purposes. This protects
the collection of images (selection and arrangement) and any previously
unpublished images published in the catalog. Previously published
images must still be registered separately. The copyright can be
reassigned to the photographer after registration. A sample application
was published in the PACA newsletter at the time. A copy can be
faxed to any member upon request.
DIGITAL DATABASE REGISTRATIONS:
Over the past five years, with the increased use of the Internet
to promote and sell images, the same difficulty arose in registering
large collections of photographs by various photographers published
within an agency's digital databases. Again, the Copyright Office
worked with me in carrying forward the same recommendations made
for print catalogs with digital databases. The Copyright Office
has a database registration that permits the submission of a database
of works on a CD-ROM and then allows the registration of quarterly
updates every three months. Thumbnails of 50 images must accompany
the application.
The unpublished underlying images can be protected as well as the
database as a collection, if the same grant of rights from the contributors
is obtained by the agency that was obtained with the print catalogs.
The Photographer Agency Agreement, or another writing, must provide
that the photographer is granting legal title to the photographs
for registration purposes solely. The agency agrees to reassign
the copyright after registration. It is not the intent that the
agency would own the photographer's copyright, other than for the
limited purpose of economically and efficiently registering the
work for the photographers' benefit, and then reassigning the copyright
back.
A sample database registration and quarterly update application
can be faxed to any member upon request. Exclusion of evidence can
harm stock photo agencies as easily as it can help them in these
types of disputes.
17. Morris vs. Business Concepts
Inc.
A federal district judge in New York dismissed a copyright action
brought by an individual author of a monthly magazine column on
the grounds that the author did not have a valid registration. The
defendant had copied and republished 24 previously published articles
without her authorization or credit. The author had granted Allure
magazine first right to publish the articles for 90 days in the
United States, and the nonexclusive right to republish the articles
through the life of the copyright. Cond6 Nast, the owner of the
publication, applied for and received Certificates of Registration
from the Copyright Office on each publication.
The defendants, Business Concepts Inc. publish a newsletter that
republished her articles, without obtaining permission. There was
no issue that the author was the owner of the copyright to the articles,
or that the defendants had infringed her copyright. The issue was
whether the author had the keys to the Federal Court house, a valid
copyright registration. The court determined that the magazine's
copyright registrations in the compilation (the magazine), did not
afford protection in the author's individual articles. The author,
like many authors and editorial photographers, do not individually
register each work, but rely on the fact that the magazine's registration
is for the benefit of the individual contributors. This understanding
has a long history and was part case law that developed under the
1909 Copyright. Until this case, there was no decision to the contrary.
In fact, other federal district courts have specifically held otherwise.
In the case of Curtis v. General Dynamics involving the photograph
of a wheelchair that was first published in Communications Art,
a district court in Washin_gton State, found that the magazine's
assignment of copyright to the photographer, in the collective copyright
in the magazine satisfied the requirements of the Copyright Act.
The photographer also filed for his own registration after the infringement,
the magazine's prior registration was sufficient to afford him the
benefit of statutory damages.
It does not make sense that in the Curtis Case, the author could
rely on the prior registration of the publication for statutory
damages, and that in the Morris case, the same collective registration
could not grant the author the right to commence an action for copyright
infringement. The formalities of the US Copyright Act, including
the need for registration, has long been criticized. The financial
burdens of registering a large body of work often make registration
prohibitive.
The consequences on this decision are great if it is followed by
other courts. Imagine the number of separately owned works in a
large textbook or encyclopedia. Once the work was published, each
contributor, which could be hundreds or more, would be obligated
to send in an application, $30 dollars, and two copies of the textbook
to the Copyright Office. The capacity of their already full warehouses
will have to be increased many times. Further, it seems contrary
to the intent of the Revised Copyright Act of 1976, that authors
have less rights than they did under the 1909 Act, where it was
clear that the individual contributors were beneficial owners of
the publisher's copyright.
I understand an appeal has been filed. This case may be an appropriate
one for PACA to lend support in an Amicus brief since it affects
the ability to enforce copyright protection in all editorial works.
The need to separately register each image published editorially
is unreasonable and may be impossible, since tear sheets are often
not provided once a work has been published. I will keep you posted
on any developments.
18. SPORTS ARTIST PREVAILS IN
SUIT BY TIGER WOODS
A federal judge in Ohio recently issued a decision if favor of a
painter sued by ETW, the licensing agent for golf star Tiger Woods.
(ETW Corp. v. Jireh Publishing Inc.) The work in question was limited
edition poster reproduction of the work "Masters of Augusta."
It depicted Woods in three different positions, surrounded by images
of past Masters champions. Woods' name and the title of the painting
are printed on the lower edge of the poster. ETW claimed that the
poster violated Woods' rights under the Lanham Act and state trademark
law, as well as Woods' rights under the Ohio right of publicity
statute.
The judge dismissed both the federal and state trademark claims,
finding that use of Woods' image could not create a likelihood of
consumer confusion as required by those acts. ETW submitted licensed
posters bearing pictures of Woods, but each of them used a different
image or images. Quoting from her decision in Rock & Roll Hall
of Faine & Museum v. Gentile Productions, the judge stated,
"Consistent and repetitive use of a designation as an indicator
of source is the hallmark of a trademark. " An individual's
image is inconsistent, and a photograph of a person can only constitute
a trademark if a particular one were used repeatedly on specific
goods.
The licensing agent also claimed a trademark violation based on
the use of Woods' name in the poster's caption. However, the court
held that the use of the name to describe the artwork was "fair
use." The court stated, "The federal trademark statute,
provides a defense to an infringement charge on the ground that
the use of the term 'which is descriptive of and used fairly and
in good faith only to describe the goods ... of such party."
The court also rejected the agent's claim based on the right of
publicity. ETW argued that the posters were sports merchandise,
or alternatively, commercial speech entitled to less First Amendment
protection. Finding for the artist, the court distinguished the
limited edition reproductions from "posters that merely reproduce
an existing-photograph." In so doing the court was making an
apparent distinction between a work by a graphic artist and an image
created by a photographer. The court relied upon Factors v. Etc.,
inc. v. Pro-A-rts Inc., among others, in making this distinction.
In that case, the owner of the copyright in a photograph of Elvis
Presley was enjoined from selling a poster of the image with the
words "In Memoriam" printed on the bottom. The court rejected
the defendant's argument that the poster was newsworthy, and therefore
entitled to First Amendment protection.
Reading the case regarding the Woods poster closely, it seems that
the court focused on the artistic merit of the poster. Indeed, the
court embraced the argument that the posters conveyed the artistic
message of "the majesty of a newsworthy event." In addition,
the court made note of the fact that the Woods poster was a limited
edition, and that each poster comes with a "certificate of
authenticity," confirming that "only 5000 prints are available
world-wide".
While the court concluded that it was untenable that all poster
are the equivalent of merchandising, I not think it was the intent
that a print of a painting is artistic, and a limited edition -print
of a photograph is not artistic expression. Photographers of note
having been selling limited editions and reprints of celebrities
for years without objection. In light of this decision, photographers
who release limited runs of reprints of their photographs, and who
stress the artistic merit of those works, are likely to overcome
the language of ETW v. Jireh and avoid having their work considered
-pure "merchandising" as in the Elvis Presley poster situation.
TASINI UPDATE
The Second Circuit recently denied the defendant news organizations'
motion for reconsideration of its ruling in Tasini v. New York Times
in which it ruled that the news organizations did not have the right
under their collective copyright to republish the individual articles
of journalists online databases and CD ROMS.
19. NBA SUES NY TIMES FOR PHOTO
SALES
The National Basketball Association has brought a breach of contract
suit against the national publication New York Times for offering
for sale, through its Online Store and newspaper advertisements,
its collection of "Basketball" photographs. The Times
is selling a collection of five poster-size photographs for $900,
or for $195.00 each. The suit brought by the NBA alleges that the
Times' sale of NBA game action photographs violates the terms governing
the publication's access to NBA games. The Time's press credentials
restrict their use of the games' photos "for the sole purpose
of news coverage of a particular NBA game." The NBA is seeking
an injunction to stop the Times from selling the photographs, in
addition to any other photographs it has taken at NBA games. In
addition, the league is also seeking money damages, including all
profits that have been gained from the sale of the photos thus far.
Photographers and agents have been complaining over the past few
years about the restrictive conditions the NBA has been placing
on photographers. While this action has only recently begun, the
photo industry will be watching.
20. WEBSITES
I had a conference call on Friday, July 21, 2000, with PACA member
Larry Minden of Minden Pictures and Richard Schmelzer, who is creating
a "fingerprinting" technology for images and other intellectual
property, that he hopes will prevent the uploading of copyrighted
images on community web sites. As you recall, I have been in communication
with the attorneys for Webshots on behalf of PACA and individual
PACA members, raising concerns that its web site provides the tools
that permit individuals to upload copyrighted images as their own
and share them with other community members.
This technology would be at no costs to PACA members. Essentially,
members would submit images in digital format. Schmelzer's company
would "fingerprint" the images and maintain a database
of fingerprinted images. The service would be marketed to web community
sites such as Webshots. These communities would screen all existing
images, as well as any new images that members upload. Any image
that matched a fingerprinted image would be bounced and a message
would be delivered to the community member stating that the image
is copyrighted. Mr. Schmelzer is currently beta testing the technology
and anticipates that the testing will take up to two months. The
project is currently called "IParchive.com". Minden Pictures
has volunteered to participate as a photo agency for this trial
period. Excite, as a community website, has agreed to participate
in the beta project as well. If any other members are interested
in participating in the testing phase, please let me know.
21. IP ARCHIVE (INTELLECTUAL
PROPERTY ARCHIVE)
Several members have had questions regarding PACA's role with the
company IP Archive. This company is testing a system that will detect
and prevent the uploading of copyrighted digital images in web based
photo communities. This company plans to beta test the system over
an eight week period during September and October. Although IP Archive
is interested in having PACA members participate in the test, it
is understood that PACA itself does not have a role in the testing,
other than as an "onlooker." The owners of IP Archive
will keep me informed of results, that I can share with members.
It has also been made clear that PACA's a trade organization does
not "endorse" or "Support" any products.
IP Archive is now set up to receive email directly. If any members
wish to contact the company for more information, the president
of the company, Frank Hightower, can be reached at fhightower@Fastideas.com.
The last information I received was that responses for participation
should be received by 5 PM PST on August 16, 2000.
22. COURT REVERSES DECISION ON
JACK LEIGH'S BIRD GIRL PHOTOGRAPH
In 1998, the Southern District Court of Georgia granted summary
judgment against photographer Jack Leigh, in his effort to protect
the unauthorized coping of his "Bird Girl" photograph.
Leigh was hired to photograph an image for the novel "Midnight
in the Garden of Good and Evil." When Leigh came across a statue
in a Savannah Georgia cemetery his decided it conveyed the perfect
"eerie" and "spiritual" mood of the novel's
plot and the photograph was licensed for use on the novel's cover.
When it was decided in 1997 that a film version of the novel would
be made, Warner Brothers made a replica of the Bird Girl. The film
company then took photographs of the replica statue that were then
used in the film's promotional materials and the actual movie. While
the film company did request permission for this activity from the
estate of the sculptor, no permission was ever requested of Leigh.
Leigh brought suit against Warner Brothers for this activity, alleging
that images taken infringed this copyright and trademark rights
in the Bird Girl photograph. In a surprising decision, the lower
court judge ruled against Leigh, stating that because the photograph
was not original, it was not entitled to protection.
Leigh appealed this decision and the 11th Circuit has just overturned
the previous holding for Leigh's copyright claim. The Court has
now stated that the use of the image in the two-dimensional promotional
materials may in fact be an infringement of Leigh's copyrighted
photograph and has remanded the case back to the lower court for
further litigation. PACA wishes Jack Leigh much luck in his pursuit
to protect the copyright in his beautiful image of the "Bird
Girl".
23. NEW FRENCH LAW
For those agencies with new bureaus in France, PDN just reported
on a new French law that was just enacted that restricts the photographing
of certain news events. The law is obviously in reaction to death
of Princess Diana. The act seems very vague and contrary to American
notion of free speech. The law as reported prohibits the publication
or broadcast of any image or photo that a court decides would hurt
the dignity of the subject. This restriction was passed by the French
Senate in May as part of the "Presumption of Innocence and
Rights of Victims" law. The law would prohibit the taking of
photos of victims of crimes and disasters, as well as pictures of
people in handcuffs who have been arrested but not proved guilty.
The fine for violating the law can be up to FF 100,000 (approximately
$15,000).
ANOTHER DECISION REVERSED
ETS-Hokin v. Skyy Vodka case reversed on appeal.
The trend of certain courts to consider certain types of photography
as outside of copyright protection, may be reversing. A Ninth Circuit
Court in San Francisco has ruled that a photographer's product shots
of stylized vodka bottles merit copyright protection, reversing
the lower courts decision. The photographer was hired to photograph
the Skyy Vodka bottle, a blue bottle with a rectangular label. The
photographer retained all rights to the photographs and granted
a limited license to Skyy. A dispute arose and the photographer
sued for copyright infringement. The lower court dismissed the photographer's
case, finding that the photographer did not have a valid copyright
in the photographs because the photographs were "derivative
works" based on the vodka bottle. The lower court concluded
that the photographs were insufficiently original to warrant copyright.
The appeals court disagreed finding that the photographs met the
minimal standard of originality under the Copyright Act. This case
reaffirms the artistic nature of the art of photography. The ASMP
supported the photographer in an Amicus brief.
24. THE NATIONAL FOOTBALL LEAGUE
PLAYERS ASSOCIATION ("NFLPA") SUES DOT.COM COMPANY AND
WINS!
NFLPA, the NFL player's union, was just awarded an injunction against
Gridiron.com after a Florida judge held that Gridiron.com's depiction
and description of NFL players was a violation of the union's exclusive
rights in its members. The NFLPA brought the action, after 150 of
its members agreed to allow Gridiron.com to set up web pages devoted
to the individual players and their achievement. The NFLPA claimed
that this activity violated their exclusive group licensing rights
in their members.
Gridiron defended their operation, claiming that the site's was
as an online publication (analogized the site to print publications),
and thus the site was entitled to protection under the First Amendment.
Under the First Amendment, it is not a violation of the right of
privacy to use a sports figure's identity without notification or
consent, so long as the use is merely "editorial" (such
as newspaper articles or books) and not commercial. The court disagreed,
and rejected this assertion holding that the site's use of the player's
identities was not editorial, but was instead a commercial "product".
The elements the court looked to when making this determination
were the fact that Gridiron.com:
1)contained banner advertisements,
2)"hoped" to sell football merchandise in the future,
and
3)allowed its visitors to participate in fantasy football leagues.
As a result of the injunction against it, Gridiron.com has closed
its doors and is no longer operating. This judgement is yet another
of the many recent "right of privacy" attacks on the First
Amendment's protections. It will be interesting to see how other
web sites that participate in similar activity (such as ESPN.com,
and NYTimes.com) will operate in the wake of this ruling.
LAW PROFESSORS JOIN IN SUPPORTING SPORTS ARTIST
RICK RUSH
Ms. Dane Zimmerman, a professor of law at NYU, is submitting an
Amicus brief (friend of the court brief), on behalf of herself and
a group of over seventy intellectual property and constitutional
law professors, in support of the Jireh Publishing, the publisher
involved in the ETW v. Rick Rush dispute. Jireh is the publisher
of a poster version of a painting depicting golf champion, Tiger
Woods. The artist of the painting, Rick Rush, recently prevailed
when Wood's licensing company sued him for violating the golfer's
right of publicity. The court rejected ETW's claim that the poster
was commercial speech and not entitled to full constitutional protection,
relying heavily on two issues:
1) that the poster was a reproduction of a painting,
and
2) that the poster was issued as a limited edition.
Wood's is now appealing the lower court's decision
and is backed by the Screen Actors Guild and all of the major sports
organizations including, the NFL and MLB. PACA and other members
of the artistic community have submitted a brief in support of Rush.
Now Professor Zimmerman and her colleagues' have joined in support
the publisher of the work. Professor Zimmerman's brief will argue
that the First Amendment severely limits the application of the
right of publicity where it is being used to restrict expressive
work, regardless of the medium.
As previously noted, I will continue to keep you updated on the
progress of this very important case.
25. PACA HAS JOINED IN AS A "FRIEND
OF THE COURT" IN SUPPORT IN THREE IMPORTANT PHOTOGRAPHY CASES
We are happy to announce that PACA has joined as "friends of
the court" in three important cases, supporting photographers
in the expression of their work.
The first case involves photographer Leslie Kelly in his suit against
Arriba Soft Corporation. Mr. Robert Clarida of Cowan Leibowitz &
Latman has written an Amicus brief, also known as a "friend
of the court" brief, for the circuit court's review. In addition
to PACA, Mr. Clarida wrote the brief on behalf of the Graphic Artist's
Guild, the American Institute of Graphic Arts, the American Society
of Journalists and Authors, the Visual Artists and Galleries Association,
Inc., the National Writers Union, The Association of Medical Illustrators,
and The Society of Illustrators.
This case is important because it involves the unauthorized electronic
reproduction and transmission of millions of images over the Internet.
The lower court ruled in favor of the defendant, Aniba Soft Corp.,
finding that their "webcrawler," which combs the Internet
in search of photographs and then delivers them on demand to the
requesting user, is not a violation of the rights of the copyright
owner of the captured image. Mr. Clarida's brief lays out all of
the disputed issues from the creator's point of view and has submitted
it in conjunction with Mr. Kelly's appeal to a higher court.
The second case involves sport's artist Rick Rush in his fight to
protect the distribution of a limited edition poster version of
his painting of Tiger Woods and other Master's champions. Woods
claimed that Rush's distribution of his painting in poster format
was a violation of his trademark and right of publicity rights.
The lower court disagreed, holding in favor of the artist and dismissing
all of Woods' claims. This case is important because the court permitted
the distribution of posters in a limited edition of up to 5000 copies.
Mr. Woods has now filed an appeal in a higher court, and has gathered
the support of all the major sports organizations in furtherance
of his view. PACA has joined the American Society of Media Photographers,
Inc. (ASNP) and Mr. Rush in support of Mr. Rush's view on this situation.
The Amicus brief will be submitted by Mr. Michael J. Murray, a First
Amendment attorney at Berkman, Gordon, Murray & DeVan in Cleveland,
Ohio. Mr. Murray is the same attorney who successfully defeated
the claims of The Rock and Roll Hall of Fame in another recent case
where the Hall tried to prevent an artist from publishing pictures
of their infamous building.
The third case is an appeal in the Second Circuit from a lower court's
decision in, Morris v. Business Concepts. The lower court ruled
that the copyright registration of a magazine as a 'collective work'
did not serve as registration for the individual articles published
in the magazine. This case is important because it means that, even
if the creators of works in the magazine register their work before
filing a suit for copyright infringement, they are likely to be
deprived of the right to ask for statutory damages, (up to $150,00
per infringement) and attorney's fees from infringers. If this case
is not challenged, it can have a dramatic effect on the amount of
damages media photographers and authors can have if their work is
infringed. PACA is joining ASNP in this "friend of the court"
brief, which will be submitted by David Wolf at Cowan, Debates,
Abrahams & Sheppard in New York And Chuck Ossola at Arnold &
Porter in Washington, DC.
26. COPYRIGHT PROTECTION FOR
SKYY VODKA "PRODUCT SHOTS"
The Ninth Circuit has ruled in favor of professional photographer
Joshua Ets-Hokin in his effort to persuade the court that his commercial
photographs of the SKYY Spirits Vodka bottle merit copyright protection.
In making this ruling, the Court of Appeals reversed the lower court's
decision, which held that the images were not entitled to any copyright
protection because they were derivative works.
Three photographs were involved in the dispute: two images were
of the actual SKYY vodka bottle standing alone, and the third pictured
the vodka bottle and a martini glass. The lower court held that,
because a vodka bottle is a utilitarian object that cannot be copyrighted,
and Ets-Hotkin's images were derivative works of uncopyrightable
bottle, his photographs were also undeserving of copyright protection.
The Ninth Circuit disregarded the lower court's line of reasoning
because it held that, while the images at issue were in some colloquial
sense "derived" from their subject matter, it does not
necessarily follow that they are derivative works under copyright
law. The Court went on to explain that the essence of copyrightability
is originality of artistic, creative expression. The Ninth Circuit
then referred to the Copyright Act's low originality threshold and
the Supreme Court's interpretation of the minimal standard of originality
required for copyrightability. The Ninth Circuit explained that
because Ets-Hotkin's product shots are sufficiently creative under
the Act's requirements, they are sufficiently original to merit
copyright protection. In looking at creativity and originally, the
Court took into consideration the photographer's decisions regarding
lighting, shading, angling, background, etc. This case is important
for all photographer's and agencies who deal with commercial and
stock photographs. If you have any questions, or would like more
detailed information on this ruling, please call Wolff & Godin
LLP at 212-787-1640.
27. RIGHT OF PUBLICITY IN NY
-- YANKEES FAN SUED AND LOST
In a recent decision, a New York State trial court ruled against
a New York Yankee fan in his right of publicity action. The fan
brought the action after discovering that his photograph was used
on the cover of book about the Yankees, titled Those Damn Yankees:
The Secret Life of America's Greatest Franchise. The fan's image
was first captured by a New York Times photographer just before
game one of the 1998 World Series. In the picture, the fan was protruding
through the sunroof of a Rolls Royce decorated with pinstripes,
dressed in a tuxedo, wearing sunglasses, and an "Uncle Sam"
hat. The image originally appear in the Times in conjunction with
an article about the "World Series Yanks," and was subsequently
incorporated into the book and chosen as the perfect image for its
cover.
The fan argued the "use" of his image on the book was
a violation of his right of publicity under N.Y. Civil Rights Law
§50 and §51, which states one cannot use an individual's
likeness in an advertisement or for commercial purposes without
his permission. The defendants in the action (the author of the
book, The New York Times, the photographer, and the graphic artist
who designed the cover for the book) all immediately moved to dismiss
the action.
The court granted defendants' motion to dismiss the complaint on
two grounds: 1) the book was neither an advertisement, nor an advertisement
in disguise; and 2) when a picture is used to illustrate a matter
of public interest, unless that picture has absolutely no relation
to the report, no right of publicity violation has occurred. The
court went on to specify that while the plaintiff argued otherwise,
his presentation of himself in the image was one of a Yankee fan,
the Yankees were undoubtedly newsworthy, and the book was very much
about the Yankees and their fans.
In addition, the court dismissed plaintiff's claim against the graphic
artist, finding that artist simply designed the cover of the book,
and did not "use" the photograph as required by §50
and §51. Thus, his activity did not meet the requirements for
a right of publicity action under New York law. I would just like
to stress that this was a claim brought in a New York court, and
right of publicity laws vary from state to state.
28. TASINI IS ON ITS WAY TO THE
SUPREME COURT
The Supreme Court of the United States has decided to review the
monumental 2nd Circuit decision in Tasani v. New York Times. The
case was brought by six freelance writers who claimed that the right
to publish a printed version of an article does not automatically
include the right to publish it electronically. The writers originally
brought the case after several newspapers and magazines began to
publish articles in databases such as Lexis/Nexis, without obtaining
the additional consent of the writers. The publications claimed
that this activity was not a violation of the writers' copyrights
because the new format was simply a revision of the print publication,
and since they owned the copyright in the printed version they had
the right to also publish revisions electronically.
The 2nd Circuit Federal Court disagreed and ruled in favor of the
writers, determining that the publication's activity constituted
a violation of the writer's copyrights. More specifically, the Court
held that electronic databases do not qualify as revisions of an
original newspaper or magazine, and if the publications wanted these
additional rights they would have to contract for them. The Supreme
Court's ruling on this case will have a significant impact on the
artistic world, and arguments are expected to be heard early next
year. It is likely that PACA will be asked to join in filing an
Amicus Brief (friend of the court brief) on behalf of the writers.
We will keep you updated on the status of this case.
29. THE COLOR OF PILLS
A PACA member recently raised a questions as to whether pills, and
more specifically the color of pills, is protected by trademark
or copyright law, thus precluding or limiting their use in photographs.
Below is a brief summary of the state of the law on this issue.
Copyright law:
In general, copyright law does not protect the color of pills. This
is because copyright law requires that a "work" be original
and independently created to qualify for protection. It is possible
that an original creation contains a certain color or colors that
may be protected, but color, when viewed alone, is not enough to
be considered a protectible element. Courts rely on the functionality
argument when denying copyright protection to pills. Basically,
this means that the Copyright Office will not register for protection
any item or element that serves a functional purpose in individuals
everyday lives. Doing so preclude other from making variations of
the item, and would stifle creativity.
Trademark law:
If a color has become so associated with a certain product or brand
it is sometimes protected by trademark law. An example of this would
be Tiffany & Co.'s famous "blue," which is exhibited
on the company's packaging. This same line of reasoning also allows
the color of pills to be trademarked. In the past when drug companies
have applied for trademark registration for the color of their pill
products, competitors have argued against the application using
the functionality argument described above. So far, this argument
has been rejected by the courts on the ground that color has nothing
to do with the utilitarian performance of the drug. Thus both federal
and a state trademark law protect the color of some pills.
Law of Unfair Competition:
Another reason that the color of pills is protectible by trademarked
lies in the area of unfair competition. Often pharmaceutical companies
will register their pills' color, so that the public will not be
confused over the origin of the drug.
Although the color of a pill may be protected, whether a "photograph"
that includes various pills violates a drug company's protected
trademark is a more difficult question. There are no cases that
address this issue. The purpose of trademark law is to prevent consumer
confusion by identifying the source of the goods and services. A
photograph of a product is not the product itself. In other words,
in creating a photograph, no one is creating a competing drug. Just
like the photograph of the Rock & Roll Hall of Fame in Cleveland
was not considered violation of the trademark of the building itself,
most photographs that contain pills as an element will not violate
anyone's trademark. The use of the image would have to infer that
a particular company was either endorsing or affiliated with the
company using the photograph. It is possible that some photographs
will contain pills that are clearly identified with a pharmaceutical
company and should not be used to advertise competitors' products
or used to illustrate an article that disparages the product. The
user should be advised to seek additional permissions from the manufacturer
of the drug.
It would be helpful in seeking this permission if the caption information
on the photograph stated (1) the type of pill and the manufacturer,
or (2) that the pill is a generic brand medicine. There is little
risk in photographing generic drugs since the idea of "generic"
is that the period of protection of the drug has expired and anyone
can manufacture the drug. In addition, the use of a disclaimer may
be used with the publication of the photograph to decrease any likelihood
of consumer confusion as to the type or source of the medicine.
MORE ON TASINI:
Last week the status of the Tasini case was reported in this Update.
This week, PACA Counsel, Nancy Wolff, received the following letter
from Victor Perlman at ASMP. PACA has agreed to participate in the
Amicus brief.
Dear Colleague:
On November 6, 2000 the US Supreme Court made the announcement that
it had agreed to review the September 24th, 1999 decision of the
Court of Appeals for the Second Circuit in Tasini v. The New York
Times. ASMP will be filing an Amicus (hopefully Amici) Curiae brief
in the Supreme Court. Based on your past participation in the Amici
Curiae Brief in the Tasini Appeal before the Second Circuit, we
invite you to participate in the brief for the US Supreme Court.
Your participation would be on the same basis as in the last brief;
i.e. ASMP will be responsible for all costs and we would ask only
that you lend your name in support of the authors. Please notify
me of your intentions at the ASMP national office either by fax
to 215-451-0880 or reply email. If you will be joining us on the
brief, please confirm that the corporate name and contact information,
as well as the description of your interest as an Amicus curiae,
have not changed since the brief for the Second Circuit was filed;
or please provide us with revised information. If you have any questions
or comments, please do not hesitate to get in touch with me. We
look forward to your support in this most important endeavor.
Very truly yours,
Victor S. Perlman, Managing Director and General Counsel ASMP, Inc.
30. NEW YORK COURT REFUSES TO
ASSERT JURISDICTION OVER GERMAN PUBLISHER
In a recent decision brought by performance artist Jennifer Stewart,
a federal New York Court refused to allow a right of publicity claim
against two German publishers. Ms. Stewart makes her living by "posing"
as the Statute of Liberty in various public location throughout
New York City. After noticing Ms. Stewart while working, the German
Publishers sent a photographer to capture her images, and then used
the photograph as the cover image of their German-language travel
guidebook of New York. Ms. Stewart claimed this unauthorized was
a violation of US Copyright law and of her right of publicity. She
claimed further that, because the book was sold over the Internet
and could be accessed by New York residents, the action could be
properly bought in New York State. The court disagreed and dismissed
her claim. The court held that it did not have jurisdiction over
the matter. The most important factors used by the court in making
its determination were: (1) the fact hat the book was marketed and
sold primarily to German consumers; and (2) while the book was sold
on the World Wide Web, the only book that had ever been purchased
by a New York resident was purchased by the plaintiff herself for
purposes of the litigation.
ILLINOIS COURT FINDS IN FAVOR OF FREELANCE PHOTOGRAPHERS
IN THEIR COPYRIGHT OWNERSHIP CLAIM AGAINST OPRAH WINFREY
In a complex case brought in an Illinois federal court, two "live-event"
photographers brought an action against Oprah Winfrey and her production
company, Harpo Productions, for using their images in a book about
the television host. The images were originally created while the
photographers worked as staff photographers on the show. Oprah and
Harpo Productions claimed that the photographers were employees
of the show, thus making the images works for hire and copyright
ownership theirs. The photographers, on the other hand, claimed
that they were not employees, but independent contractors, and that
the images they created were only to be used for publicity purposes
with copyright ownership always belonging to them.
The court applied the factors set forth in v. Reid, the United States
Supreme Court Case discussing work make for hire. The landmark copyright
case distinguishes between employees and independent contractors
by using several factors:
the hiring party's right to control the work
the skill required to create the work
the source of the materials used
the duration of the relationship between the parties
whether the hiring party had the right to assign additional projects
to the hired party
the hired party's discretion over how and when to work
the method of payment
the provision of employee benefits
the tax treatment of the hired party
Under the Reid analysis, the court determined
that the photographers were professionals who used their own equipment
and hired others to take their place when they were unavailable.
Also, the photographers received payment for their work by issuing
bills, and were not paid a salary by Harpo Productions. The most
important considerations were that the photographers did not receive
any regular employee benefits for their work on the show, nor were
there ever any payroll taxes withheld by Harpo Productions from
the photographers.
The court stated that Oprah and Harpo could not be allowed to obtain
the benefits associated with hiring an independent contractor, and,
at the same time, enjoy the advantages of treating that person as
an employee. Now that copyright ownership in the images has been
determined, the case will continue further so that other issues
may be determined by a jury, such as the scope of the license that
was given by the photographers to Harpo Productions.
The above two cases are important in that they reconfirm two very
important issues that all freelance artists should be aware of.
First, artists must be sure to bring any actions in the appropriate
jurisdiction. This will save time and money in the event that the
court dismisses the claim. Second, artists must expressly establish
the type of relationship that exists between them and their clients.
Unless otherwise agreed to, the contract should clearly state that
the work being performed is not a work for hire and that copyright
ownership belongs to and will remain with the photographer.
AND ABOUT THAT TAX QUESTION...
Photonica contacted the PACA legal Committee and suggested that
we alert all PACA members to a change in the federal withholding
tax laws that take effect this January 1, 2001. The new law applies
to all non-resident contributors to whom you send commissions. Each
non-resident must obtain Individual Tax Identification Number (ITIN)
and file taxes with the IRS. Effectively, all members are now agents
of the IRS. You are now obligated under certain instances to withhold
the appropriate taxes due on earnings paid to the non-resident and
file necessary forms with the IRS. If you fail to do so, you (your
agency) could be charged the taxes that were not withheld. Many
countries have treaties regarding the payment of taxes that exempt
or minimize the payment of taxes if you can show that equivalent
types of taxes are paid in the country of residence. However, if
the appropriate paperwork is not filed, the non-resident cannot
take advantage of the tax treaty rate.
The burdensome task for each agent is to assist the non-resident
in the application for the ITIN. All the paperwork is in English.
Proof of residency is also required. If the ITIN is obtained and
all associated paperwork is filed, the non-resident will be subject
to the treaty rate of tax, rather than the full withholding amount.
In some instances, there will be no tax owed.
Each member is urged to seek advice concerning compliance with the
new tax laws. It is recommended that you escrow on behalf of the
non-resident the maximum amount of withholding that would be required
to pay to avoid liability. This may vary depending on whether the
payment to the artist is considered a "commission" or
a "royalty." The full commission should not however be
sent until you receive proof of compliance.
Photonica has been working with the accounting firm of Price Waterhouse
Coopers in determining what practices must be in place to comply
with the change in the law and avoid liability. For more information
visit the IRS website at "http://www.irs.gov/" and in
particular check out the regulations attached to the following forms:
W7, W9, W-8BEN, 1042 and 1042-S.
31. COPYRIGHT PROTECTION FOR
PHOTOGRAPH OF PICTURE FRAMES
(SHL Imaging Inc. v. Artisan House, Inc.)
The United District Court for the Southern District of New York
recently ruled in favor of a photographer in a copyright infringement
action, where the photographs were used beyond the scope of the
parties' agreement. A manufacture of mirrored picture frames hired
the photographer to create colored slides for his sales force. Thereafter,
the manufacturer used the photographs in a catalogue, reproduced
them in 5,000 brochures, and offered them as magazine 'comps' or
publicity releases. The photographs were further provided to Photo-2-Art,
Ltd., for scanning to be displayed to customers.
The manufacturer alleged that the photographer did not have a valid
copyright in the photographs of the frames claiming they are not
original, or alternatively, that the manufacturer was either a joint
author or the sole work-for-hire author. On the issue of originality,
the manufacturer argued that such photographs were simply not original
and that in any case they were derivative works based on the frames
and must satisfy a higher standard of substantial originality'.
The court disagreed and concluded that the photographs were not
derivative works as they merely depicted the frames and did not
"recast, adapt or transform" any authorship in the frames.
The court further concluded that the photographs were sufficiently
original to warrant copyright protection. The photographer explained
to the court the considerable creativity in his choice of lighting,
artistic judgment in determining the amount of shadowing and use
of lighting to minimize any reflection in the mirrors, among other
choices. The copyright protection was limited to verbatim reproduction
of the frames. Nevertheless, as that was exactly what defendants
did, the extent of the protection was sufficient to warrant a copyright
infringement claim.
In addressing the claim that the parties were joint authors, the
court examined whether both authors contributed expression in creating
the photographs and whether the parties had intended that their
contributions be merged. If the parties were joint authors, the
infringement claim would fail, as one joint author may not sue another
joint author for copyright infringement. The court found that even
though the frames were the subjects of the photographs, the copyrighted
works at issue were the photographs and not the frames, and consequently
the fact that the frames were included within the photographs was
irrelevant. In addition, the court found no evidence of intent on
the part of defendants to share the copyright in the resulting photographs.
Consequently, no joint authorship subsisted in the photographs.
Similarly, the court dismissed the manufacturer's claim of work
made for hire. The court examined several factors in determining
whether the manufacturer was an employer, the most significant being:
1) the hiring party's right to control the manner and means of creation;
2) the skill required; 3) the provision of employee benefits; 4)
the tax treatment of the hired party; and 5) whether the hiring
party has the right to assign additional projects to the hired party.
In examining these factors, the court found that the photographer
was not an employee and therefore his photographs failed to constitute
work for hire. As is the case with most freelance photographers,
the hiring party exhibited little control over the creative process,
the photographer had extensive skills in photography, there was
no provision of employee benefits, no withholding of any taxes and
no tax payments were made on behalf of the photographer. The manufacturer's
instructions were so general as to how it wanted the frames photographed
to fall within the realm of unprotectible ideas.
Finally, the court dismissed the manufacturers' claim that it had
a license (whether written, oral, or implied) covering its infringing
activities as they failed to present any evidence of an express
license and the photographer did not express intent to permit further
reproduction. This case supports the view that photographs, even
of products, are sufficiently original to demand protection. It
is interesting that this case is from the same federal district
that found photographs of art reproductions to be derivative works
and not sufficiently original (The Bridgman Art Library v. Corel).
The lesson may be when registering photographs of this nature, not
to describe them as derivative works on a copyright form. It is
also helpful to a freelance photographer that every argument a manufacturer
might make to justify the continued use of photographs without a
license was addressed by the court and defeated. Finally, the importance
of clear licenses that define the scope of use can never be overemphasized.
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