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1. ipARCHVE UPDATE
I met with Michael Dee, of ipArchive to discuss the status of the image recognition technology that ipArchive had been testing with several PACA members and one of the large photo communities - Webshots. ipArchive had given a demonstration and met with several PACA members during the International meeting last November and was interested in keeping PACA abreast of the developments.

As a recap, ipArchive is developing image recognition technology or "fingerprinting" of photographs, so that copyright owners can monitor or protect their images from being uploaded onto photo community websites, and being exploited by users without consent. Although the new Digital Millennium Copyright Act (DMCA) provides that any unauthorized reproductions of work must be removed by the Internet Service Provider (ISP), the notice requirements to the ISP's are burdensome to copyright holders. No one can possibly scan sites with hundreds of thousands of images and then identify their images to provide adequate notice to the ISPs under the DMCA, in order for the images to be removed. As a result, ipArchive has been developing technology that can identify digital photographic images without human interface or by adding anything to the photograph such as watermarking or encryption technologies. This is accomplished by taking a fingerprint; obtaining statistically relevant distributions of light and color that are unique to each photograph, even in near frames. They are also testing this technology in the music and film industry.

An ISP such as Webshots will pay to use a database of these fingerprinted images to avoid permitting the use of unauthorized images on their site. Although users are told that they must be the owners of the photographs that are uploaded on the community site for sharing with others, PACA members have found many of their catalog and CD-ROM images, among others, are uploaded for anyone's unrestricted use on these sites. Once the images are fingerprinted, the ISP (i.e., Webshots) can run the photograph through the database. If a match is found, a copyright infringement notice pops up on the screen and the user cannot use the photograph. ipArchive had been testing this image recognition technology with the cooperation of several PACA members and Webshots during the fall. Apparently testing was completed around December 15, 2000. The image recognition technology essentially worked to their satisfaction. If images were flopped, upside down or cropped, they could still be recognized.

While the image recognition technology is effective, ipArchive is continuing to work with photo communities on where to insert the technology into the existing infrastructure. ipArchive is looking for a "real-time" solution for image recognition and copyright infringement notification as an alternative to the notice and take down requirements that are described in the DMCA.

The next issue was the cost of using the technology. It was clear from the demonstration at the PACA international meeting in November that members were concerned that any per image fee could be cost prohibitive. Unfortunately, ipArchive reported that they could not afford to offer the technology for free. The business model requires that they charge both the web communities and copyright owners. The proposal is to offer PACA members $1 per photograph per year, which is a break-even fee. They expect that members will only want to protect their marquee images, an estimated 5-10% of any archive. Since the images must be in digital format, it is recommended that members start with their most popular images that are already in digital form or are published in catalogs. Down the road, ipArchive also expects that that for a nominal amount more, it can "auto populate" websites (such as oFoto) for use of images for consumer applications such as coffee mugs and T-shirts. This would be an option for PACA members. (Currently members are not making any money if images are unknowingly on a community site such as Webshots and are used by the community for such applications.) The amount of fees would be split between ipArchive and the members.

Furthermore, the amount of images being uploaded on community sites each week is staggering. Webshots estimates that it receives 300-400,000 images per week. The majority of the images end up in the public folders. ipArchive is currently identifying the implementation of its technology into existing photo communities. However, when the ipArchive image recognition technology is used, and if an image is recognized as a copyrighted image, the user will receive a copyright violation warning and will be denied use of the image. The image will then be either blocked from being uploaded/downloaded and/or marked for deletion by the ISP. ipArchive has identified 50-70 communities and digital labs that allow the uploading, consumer sharing and consumer use of images. These would also be potential sites for the consumer use of images that can be monitored by the technology in the future. ipArchive is interested in any feedback from PACA members. You can contact ipArchive directly by emailing Michael Dee at Mike@iparchive.com.

2. ARTIST'S SCULPTURAL WORK FEATURED IN AN ARCHITECTURAL WORK DOES NOT GET SEPARATE COPYRIGHT PROTECTION
In a recent federal case, Leicester v. Warner Bros., the U.S. Court of Appeals for the 9th Circuit refused to extend separate copyright protection to artwork that had become a "functional part" of a building. The case was brought by the artist Andrew Leicester, after the building on which his work was part of, was featured in the film Batman Forever without his permission or credit.

The building's owner hired Leicester for the purpose of contributing "artistic development" to its new office building. Working with the building's architect, Leicester created three separate works that told an allegorical story about the history of Los Angeles. The works consisted of a fountain in the courtyard of the building, two sets of towers in the inside perimeter of the courtyard, and five towers that formed a "streetwall" along the perimeter of the courtyard. In 1994 Warner Brothers approached the building's owner about featuring the building in Batman Forever, to which the owners agreed without consulting either the architect or Leicester. As a result of this agreement, the seven towers created by Leicester were displayed extensively in the film and in several promotional items created to advertise the film.

After the film was released, Leicester brought suit against Warner Brothers, claiming that its display of the towers in the film without his permission was a violation of his copyright in the works. Warner Brothers defended this charge by relying on §120(a) of the Architectural Works Copyright Protection Act (AWPCA) of 1990, which provides that, "the architectural work copyright does not include the right to prevent the making, distributing, or public displaying of pictures of the work if the building is "ordinarily visible from a public place." Leicester argued this section of the AWPCA did not require the taking away protection for pictorial, graphic, and sculptural works.

The court disagreed with Leicester and upheld the lower court's ruling for Warner Brothers. In their decision the court emphasized Congress' intent to allow publicly visible buildings to be freely photographed without fear of any copyright violation. The court stated that because Leicester's work was a functional part of the building, it too could be freely photographed. While this ruling limits the rights of artists whose sculptural work is often featured on buildings, it is a victory for photographers in that it eliminates any hesitation surrounding buildings and photography that may have existed with photographers. This case seems to assure that so long as the building featured in the image is publicly visible, it, and the artwork featured on it, can be freely captured and displayed without fear of violating any copyright protections.

A PACA member, Corbis, has recently been sued in California Federal Court for merely displaying on their web site photographs of buildings, which include murals by the artist Susan Kelk Cervantes. This issue of whether public art (such as murals) can be photographed is an open question that has yet to be addressed by the federal courts. Many photo agencies have "travel" files that will likely contain images of public spaces that include public artwork. Corbis' contracts with its clients are modeled in part after the PACA recommended contracts, and advise clients that they are responsible for obtaining any additional permissions that may be required before using an image. It has always been understood that photo archives only represent that the photographer who took the image is the copyright holder of the image, and do not address copyright ownership of what is depicted in the image. This action against Corbis attempts to place the burden of obtaining additional permissions on the archive rather than the user of the image, and asserts that mere archiving and displaying an image is a commercial use.

The court holding in Leicester v. Warner Bros., seems to suggest that the protection in pictorial, graphic, and sculptural works cannot be separated from architectural works as it can be in "useful articles." If this is in fact the case, then a mural on a building will be considered part of a building, thus allowing it to be freely photographed and displayed, so long as the building is publicly visible. We will be keeping up status of the action against Corbis and will notify PACA members of the progress of the litigation.

3. COPYRIGHT PROTECTION AND EURO BANKNOTES
A PACA member recently inquired about taking still photographs of the new Euro currency, and more specifically if there are any limitations or restrictions on this activity. After some research, I have discovered the following information. In 1999 the European Union adopted a unified system for copyright protection of the new Euro banknotes. Under this system, each member country in the Euro area is to follow a set of uniform reproduction rules for Euro banknotes. This means that any reproductions (i.e., photographs) of any banknotes will be governed by one standard, regardless of the country of origin. Additionally, the enforcement of the protection for Euro currency is also centralized. If an unauthorized use is committed by someone outside the EU Member State (i.e., someone from the United States) then the matter will be referred to the European Central Bank for prosecution, rather than to the Member States court system.

Generally, reproduction of Euro currency is authorized without penalty only when it meets the following conditions.

The reproduction may only be in the form of photographs, drawings, paintings, and films, and generally for images in which the basic focus of the image is not the banknotes themselves;

The banknote may only be an element of the image; and

There cannot be any close-up views of the banknotes' designs.

Any reproduction that does not fit into the above conditions must be approved and authorized by either:

The National Bank of the country whose banknote is featured; or

The European Central Bank.

Additionally, even if a reproduction is created within the confines of the above restrictions, it may still be denied authorization (or prosecuted) if the reproduction creates a conflict with the unalienable moral rights of the author or the banknote designs. Moral rights are an additional right given to artists in almost all European countries. Moral rights are the protection of the author's integrity. For example:

The right to be known as the author of his work;

The right to prevent others from being named as the author of his work;

The right to prevent others from using the work or the author's name in such a way as to reflect adversely on his professional standing.

Because the information stated above is new we have found no interpretation of the requirements. However, we will keep you update if we receive additional information. Also, while the European Union is a community of nations, each country still has a its own governing body of laws. For this reason, please contact me for each country's specific restrictions such as their views on "moral rights," as the need arises.

4. DMCA PROTECTION FOR FOREIGN WORKS

Part One:
Recently we have received several inquiries from our members and foreign affiliates concerning the registration and protection of foreign photographs and artworks ("Works') under United States copyright law. This week we will address the first part of these inquiries. Members and affiliates should note that the following information regarding foreign Works is generally applicable to any country with copyright relations with the United States even though the inquiry deals specifically with two concerns of a Taiwanese stock photo agency. The affiliate member asked (1) whether a United States branch of a Taiwanese company can register photographs and paintings created in Taiwan for United States copyright protection and (2) whether registered foreign Works will be protected under the Digital Millennium Copyright Act. The second part of the question will be addressed next week.

United States Protection of Foreign Works and the Registration Requirement
United States copyright registration is not required to receive United States copyright protection for either foreign or United States Works. All Works eligible for United States copyright protection are automatically protected under United States copyright law from the moment of their creation. Section 102 of Title 17 of the United States Code (The Copyright Act) lists examples of Works that can be copyrighted such as "pictorial, graphic and sculptural works" which include drawings, paintings and photographs.

Section 104 of the Copyright Act lists the requirements for copyright protection. A distinction is made between works defined as either "published" or "unpublished". Section 104(a) states that all unpublished Works (Works that have not been made available to the public) are eligible for copyright protection, regardless of whether they were created by United States or foreign Authors.

In other words, all unpublished Works by both United States and foreign authors are automatically protected under United States copyright law from the moment of creation - no formalities such as registration are required.

Conversely, section 104(b) states that published Works (Works that have been made available to the public) must meet one of the eligibility requirements listed in section 104(b) in order to receive United States copyright protection. If a published Work qualifies for protection under one of the eligibility requirements listed in section 104(b), like an unpublished Work, it is automatically protected under United States copyright law as well; no formalities such as registration are required. Eligibility requirements for published Works listed in section 104(b) include (1) the Author was a national or domiciliary of the United States or a country which has copyright relations with the United States on the date of first publication, or (2) the Work was first published in the United States or a country which has copyright relations with the United States.

Circular No. 38a, published by the Copyright Office, lists international copyright relations of the United States. (This circular can be obtained directly from the Copyright Office or from its website [http://www.loc.gov/copyright/circs/circ38a.pdf ]. Since there is no "international' copyright law, protection against unauthorized use depends on the law of the country. In addition most countries are party to international copyright conventions and treaties, the principal ones being the Berne Convention and the Universal Copyright Convention (UCC). If the country in which protection is sought is a party to one of the international copyright conventions, the work generally may be protected by complying with the conditions of that convention. The United States joined Berne Convention members in March 1989.

Taiwan is formally recognized by the United States as part of the People's Republic of China, which has copyright relations with the United States by virtue of the Berne Convention. Thus, like unpublished Works, Works published in Taiwan also receive automatic United States copyright protection from the moment of creation without registration (because the United States formally recognizes Taiwan as part of a country that has copyright relations with the United States. Therefore, Works published in Taiwan meet one of the eligibility requirements of section 104(b) mentioned above).

However, it is important for all Authors, United States and foreign to distinguish between United States copyright protection and United States copyright remedies. While neither United States Authors nor foreign Authors are required to register their unpublished or eligible published Works, both

United States and foreign Authors are required to register their Works in order to obtain certain remedies. Moreover, the remedies afforded to Authors who have not registered their Works differ depending on (1) whether the Author is foreign or not and (2) when the registration takes place. For example, United States Authors must register their Works before they can even sue for copyright infringement. So for United States Authors, registration is literally the keys to the courthouse and they cannot obtain any remedies until they register their Works.

Foreign Authors, on the other hand, can sue for copyright infringement without registering their Works. However, they like United States Authors will not be entitled to receive statutory damages unless their Works were registered prior to suit. Statutory damages are an amount ranging between $750 and $30,000 per infringement, awarded in the court's discretion, which can be increased up to $150,000 per infringement, in the court's discretion, if the court finds that the infringement was committed " wilfully". Foreign Authors, as well as United States Authors are also not entitled to receive attorney fees in the case of successful litigation unless their Works are registered prior to suit.

In addition to being able to receive attorney fees and being able to elect statutory instead of actual damages, there are also other advantages that accompany registration. (In the case of the infringement of a photograph, statutory damages are often elected since actual damages are typically equated to a standard license for the unauthorized use). In addition, registration affords copyright owners an evidentiary advantage in a copyright infringement suit because registration serves as proof of copyright ownership. Registration also allows copyright owners to record the registration with the United States customs office to prevent the importation of infringing copies of their Works into the United States. Therefore, just like United States Authors, it can be advantageous for foreign Authors to register their Works even though registration is not required. Moreover, any person is legally entitled to register an eligible Work as long as the person is (1) the Author (2) the copyright owner or (3) the duly authorized agent of the Author or copyright owner. Therefore, as long as the United States branch of a Taiwanese company falls into one of the above categories, it is permitted to register a foreign Work (if the company elects to register their Works).

The disadvantage to registering foreign Works is the expense, time and sometimes difficult "deposit" hurdles involved in submitting the required application, deposit of the Work and fee (currently $30 per Work). The decision to register a Work, or a selection of Works for United States copyright becomes a business decision which each individual photo agency and archive must make. One relevant, and perhaps decisive consideration in deciding whether to register foreign Works will be whether the Work is published or unpublished within the meaning of the Copyright Act because certain unpublished Works may be eligible for group registration with one application and one fee (currently $30), whereas published Works in general must each be registered individually (each Work requires a separate application and $30 fee). Additional details on how to register foreign works and catalogs will be in a following update. Therefore, the ability to register a large collection of photographs or other artwork may be prohibitive.

Works are published within the meaning of the Copyright Act if copies of the Work have been distributed "to the public by sale or other transfer of ownership or by rental, lease or lending;" or if copies of the Works are offered to be distributed to "a group of persons for further distribution or public display. "Whether a Work meets this definition will not always be clear. For example, images in a catalog would clearly be considered published. It is generally understood that Works placed on the Internet are "published". Works merely displayed to the public are generally not considered published.

Another relevant consideration in deciding whether to register a foreign Work or any Work is when publication took place and/or whether an infringement has occurred. Statutory damages and attorney fees based on an infringement are only available to Authors who (1) have registered their Works prior to infringement or (2) if the infringement occurs before the effective date of registration and the work was registered within three months of first publication.

5. DMCA PROTECTION FOR FOREIGN WORKS

Part Two.
Last week we addressed the first part of a two-part inquiry that we received from one of our international affiliate members concerning the registration and protection of foreign photographs and artworks ("Works"') under United States copyright law. This week we will address the second part of this inquiry: whether foreign Works are entitled to protection under the Digital Millennium Copyright Act. Members and international affiliates should note that the following information is generally applicable to any country regardless of whether it has copyright relations with the United States even though the inquiry deals specifically with Taiwan (which does have copyright relations with the United States).

UNITED STATES PROTECTION OF FOREIGN WORKS UNDER THE DMCA
The Digital Millennium Act ("DMCA") was signed into law in October 1998 in order to fulfil a requirement of joining two World Intellectual Property Treaties (the WIPO Copyright Treaty and the WIPO Performances and Phonogram Treaty) which both require member nations to protect digitally transmitted Works in certain ways. The DMCA is comprised of five titles, each of which amends Title 17 of the United States Code ("The Copyright Act") in various ways. This update will only cover the first title of the DMCA because it is the title most relevant to photographers and their representatives. However the Copyright Office website www.loc/gov/copyright) provides a concise I 8-page summary of each title of the DMCA if you would like further information.

The first title of the DMCA contains a new provision (§ 1202) which is an especially important piece of legislation for photographers and their representatives because it provides, among other things, new civil and criminal remedies against those who remove or falsify copyright management information from copyrighted Works on the Internet. Copyright Management Information ("CMI") includes information typically contained in a notice of copyright such as the title, the name of the copyright holder, identifying numbers, and terms and conditions for use.

Section 1202 implements two new prohibitions. The first prohibition makes it unlawful for persons to knowingly provide, distribute or import false CMI for distribution "with the intent to induce, enable, facilitate, or conceal infringement." The second prohibition makes it unlawful to intentionally remove or alter CMI, or knowingly distribute or import for distribution CMI that has been removed or altered. Remedies for violations of this provision are also quite high. For example, statutory damages (an amount awarded in the court's discretion) range from not less than $2,500 and not more than $25,000 per violation. Moreover, these damages may be tripled if the court finds that the infringer is a repeat offender (has violated section 1202 twice within three years). Criminal remedies for a violation of this section are also provided for.

The DMCA is different from the rest of the Copyright Act in several ways that are important to understand. First, the DMCA does not prohibit copyright infringement, the DMCA prohibits certain activities that could lead to copyright infringement. Second, the remedies afforded under the DMCA are different from the remedies provided for under the Copyright Act for copyright infringement. Third, the DMCA entitles "anyone injured by a violation" of section 1202 to sue for statutory damages, unlike the OD Copyright Act that only permits certain persons to sue for statutory damages. Moreover, Works (both United States and foreign) are not required to be registered in order to receive DMCA statutory damages, unlike the Copyright Act that will only grant statutory damages for infringements that take place after registration unless the Work is registered within three months of the first publication. Since the DMCA is relatively new, there is little judicial interpretation from the courts. One case in Federal Court in California refused to apply the DMCA prohibition against CMI removal in a case involving a web crawler that collected thumbprint size images because the copyright ownership information was not attached to the image file. Based on this case, it is recommended that copyright information or other CMI be attached to the image file.

6. NAPSTER
While the Napster litigation is far from over, a recent ruling by the Ninth Circuit may force Napster to either settle with record and music publishing companies ("Plaintiffs") or go out of business. Napster is an Internet site that provides, among other things, free software that allows Napster users to find and copy MP3 music files (digitally compressed songs) from each other while they are logged onto the Napster site.

Many of the MP3 music files copied by Napster users contain unauthorized copies of Plaintiffs' copyrighted sounds recordings and musical compositions ("Works"). Plaintiffs claim that Napster is liable for contributing to copyright infringement because Napster provides software and other technological support that allows its users to infringe Plaintiffs' Works. Consequently, Plaintiffs argue that Napster should be held liable for the unauthorized copies of Plaintiffs' Works made by Napster users. Moreover, Plaintiffs argue that a pre-trial injunction should be issued to restrain Napster from operating until the question of Napster's liability is resolved at trial. Plaintiffs are entitled to a pre-trial injunction if they can show both that they are likely to succeed at trial and that irreparable harm will result if a pre-trial injunction is not issued.

After hearing arguments on both sides, a district court found that Plaintiffs sufficiently demonstrated that they are likely to succeed at trial and issued a pre-trial injunction that prohibits Napster from "copying, downloading, uploading, and transmitting or distributing" Plaintiffs' copyrighted Works until trial. Napster appealed the issuance of this pre-trial injunction to the Ninth Circuit (a higher court) and persuaded the Ninth Circuit to delay enforcing the injunction (to let Napster stay in business) until the Ninth Circuit heard Napster's appeal. Napster argued that the district court (lower court) incorrectly found that Plaintiffs were likely to succeed at trial and that therefore, the pre-trial injunction issued against Napster was wrongfully issued. Napster alleged that plaintiffs are not likely to succeed at trial for a number of reasons including that Napster is exempt from copyright liability under the "Safe Harbor" provision of the Digital Millennium Copyright Act ("DMCA").

The Safe Harbor provision shields certain Internet servers from copyright liability if they meet certain requirements which include that the Internet servers establish and enforce a copyright compliance policy. The Ninth Circuit evaluated and rejected each of Napster's arguments as to why Napster believed the pre-trial injunction was wrongfully issued and held that none of Napster's arguments were persuasive enough to warrant overturning the pre-trial injunction issued by the district court.

However the Ninth Circuit did find the scope of the pre-trial injunction issued against Napster overly broad. The Ninth Circuit found, among other things, that by prohibiting Napster from "distributing" plaintiffs' copyrighted Works, the injunction improperly placed the burden on Napster to investigate whether the MP3 files copied by its users contain unauthorized copies of plaintiffs' Works. Instead, the Ninth Circuit found that Plaintiffs have the burden of identifying MP3 files that contain unauthorized copies of Plaintiffs' Works. The Circuit court found that Napster only has a duty to remove MP3 files containing authorized copies of Plaintiffs' Works after Napster is notified of such content by Plaintiffs. Therefore, since the Ninth Circuit found the pre-injunction overly broad, it sent the case back to the district court to refashion the injunction so that the burden of investigation and notice rests on plaintiffs.

Many copyright holders view this ruling as a huge victory for all copyright holders, however celebration may not yet be in order. While this ruling may foreshadow Plaintiffs' ultimate success at trial, this ruling did not decide the question of Napster's ultimate liability. This ruling only decided that it is fair to restrain Napster from operating until the question of Napster's liability is decided at trial. Nonetheless, this case is an especially important case for photographers and their representatives to follow because the outcome in this case will undoubtedly have an effect on the viability of other sites similar to Napster, that currently allow users to upload unauthorized copies of copyrighted photographs without compensation to photographers or their representatives. However, the burden is on the copyright owner to identify the infringing uses and notify these sites, a daunting task in light of the number of image files that exists on community photo sites that permit image sharing. Members have complained that community photo sites such as Webshots, have so many images uploaded each week, that to police the sites is impossible. The only way to police such sites may be with technology that identifies the infringing uses of the images. These are the challenges that all copyright will be facing with the proliferation of digital copying. We will continue to monitor this case and keep you updated.

7. MORE ON THE DMCA
The Digital Millennium Copyright Act (DMCA) was signed into law in October 1998. As previously mentioned in other updates, Title II added a new section to the Copyright Act (section 512) that created new limitations on liability for online service providers. These limitations provide a complete bar to monetary damages and restricted injunctive relief to qualifying service providers. Section 512(c) limited the liability of service providers for infringing material that is hosted on their website. To be eligible ISP had to meet three requirements:

1)No requisite level of knowledge of the infringing activity 2) If the provider has the right and ability to control the infringing activity, it must not receive a financial benefit attributable to the infringing activity, and 3) upon receiving proper notification of the claimed infringement, the provider must expeditiously take down the material. The provider must have filed with the Copyright Office a designated agent to receive notice of claimed infringement.

The requirement of notifying a provider that it is hosting infringing photographs has proven to be a major hurdle and obstacle to having copyrighted images removed from web sites that allow communities to upload images for sharing, similar to communities that permit the sharing of music. Whereas music has titles that are easily searched and recognized on a site, it is difficult to discover infringing photographs on a large site co-mingled with thousands of others. For the first time a federal court has recently looked at case involving Title II of the DMCA that deals with the notice issue. (ALS Scan, Inc. v RemarQ Communities, Inc., 4th Cir. 2001).

ALS Scan Inc. (ALS) is in the business of creating and marketing "adult" photographs. It brought an action against an Internet service provider (ISP), alleging violations of the Copyright Act and Title II of the DMCA. RemarQ, the ISP provided access to newsgroups to share information on a wide range of topics. Although it did not monitor, regulate or censor the contents of the articles posted in the newsgroup by the subscribing members, it has the ability to filter information and screen its members from logging onto certain newsgroups, such as those containing pornographic material. Two of the newsgroups contained ALS's name in the title and contained hundreds of postings that infringed its copyrights in the photographs. Upon discovering these postings, ALS Scan sent a letter to RemarQ stating that both those newsgroups were created for violating their copyrights and contained virtually all copyrighted images. They were ordered to cease carrying the newsgroups within 24 hours. RemarQ refused to comply with the demand but advised ALS Scan that they would eliminate individual infringing items from the newsgroup if ALS Scan identified them "with sufficient specificity". Thereafter an action was commenced.

ALS in its complaint alleged that RemarQ possessed actual knowledge of the infringing material but refused to block or remove access to the material. RemarQ filed a motion to dismiss stating that ALS's failure to comply with the notice requirement under the DMCA provided it with a defense to the copyright claim. The District Court (trial court) granted the motion. An appeal followed. The Fourth Circuit (the federal appellate court) in looking at whether RemarQ could be liable for DIRECT copyright infringement for passive acts engaged in through technology, concluded that Title II of the DMCA controlled and only addressed the claims under the DMCA.

ALS contended that it substantially complied with the notification requirement of the DMCA, depriving RemarQ of its safe harbor from copyright liability under the provisions that protect ISPs. RemarQ argued that it did not have knowledge of the infringing activity as a matter of law because the copyright holder had failed to identify the pictures that formed the basis of the copyright complaint. The court looked at Section 512(c) and determined that in order for an ISP to qualify for this safe harbor it must meet all three requirements that are described above. In reviewing the purpose of the DMCA the court noted that immunity is granted only to "innocent" service providers who can prove that they do not have actual or constructive knowledge of the infringements. The protection of the DMCA is lost the moment that the ISP loses its "innocence. Looking at he balance of interest between the copyright holder and the service provider, the court found that the DMCA allowed the holder to put the ISP on notice that only substantially complied with the prescribed format and did not require perfection. Significantly the court held that " in addition to substantial compliance, the notification requirements are relaxed to the extent that, with respect to multiple works, not all must be identified, just a "representative" list. And with respect to location information, the copyright holder must provide information that is reasonably sufficient to permit the service provider to "locate' the material." The court found that the notice requirement was not intended to burden the copyright holder with the responsibility of identifying every infringing work or even most of them.

In this case, the initial letter satisfied the DMCA notice requirement in that it identified two sites created for the sole purpose of publishing ALS works, virtually all the material was its copyrighted work and referred RemarQ to its web address where it could find ALS copyright information. It noted that ALS material could be identified because its name and copyright symbol was next to it. Therefore the court reversed the ruling dismissing the action and sent the case back to the district court to proceed on its copyright claims.

While most agencies and photographers will not be so fortunate to find infringing photo community sites which identify newsgroups with their name, this case is relevant in that it relaxes the burden on copyright holders of multiple works who cannot perfectly meet the DMCA notice requirements of identifying with particularity each infringing photograph on a site. It may be sufficient to satisfy the location requirement by identifying community members by name that have posted some infringing photographs and either send the ISP to a website with a database of copyrighted photographs, or send a disk or catalog to the ISP with multiple images. Under this ruling, this notice would place the burden on the website to remove any infringing images included on its site or face liability for copyright infringement. This is significant since no members have the staff to scan through what could be up to millions of images located on photographic community sites such as Webshots, where potentially thousands of images are added daily. The relaxed interpretation of the notice requirement should be helpful to copyright owners and their representatives in removing infringing photographs from Internet websites.

8. MONEY OWED TO UNITED STATES STOCK PHOTO AGENTS
Recently it has come to our attention that a Swedish reproduction rights organization (a collecting society) called BONUS is holding approximately $13,000 owed to United States stock photo agencies. These funds were collected over the past ten years on behalf stock agencies that are rights holders (own the copyright to at least a portion of their image library). There are two organizations that have proposed to collect these funds on behalf of PACA. One organization is the Copyright Clearance Center (CCC), a United States collecting society. The other is BLF, a Swedish picture association similar to PACA. Both organizations would charge a percentage for administrative costs to collect the funds (approximately 5-15%) subject to negotiation.

In order to understand why these funds are being held it is necessary to understand the function of a reproduction rights organization (RRO) such as BONUS. RROs are non-governmental organizations that collect license fees for published reproductions of copyrighted works on behalf of copyright holders. RROs were established around the world to make it easier to comply with copyright law. The theory is that by having central organizations around the world to collect reproduction license fees on behalf of all copyright holders, the public will be more likely to comply with copyright law. RROs also increase the likelihood that copyright holders will be compensated for use of their works abroad because foreign RROs generally have agreements with each other to exchange funds on behalf of each others nationals.

RROs derive their authority to collect reproduction license fees from national laws of the country in which the RRO is located. Because of differences in national laws, RROs operate differently in each country. We will use photographs to illustrate some of the differences between United States law and Swedish law. For example, under United States law, individual copyright holders and or their representatives set license fees and are the only ones who can authorize a United States RRO to collect a reproduction fee on their behalf. Under Swedish law, on the other hand, license fees to reproduce published copyrighted works are set by Swedish law based on the type of work. In other words, Swedish law determines how much a Swedish RRO should collect from the public for the right to reproduce photographs, not individual copyright holders or their representatives. Swedish law also authorizes Swedish RROs such as BONUS to collect reproduction fees on behalf of individual copyright holders.

In addition, Swedish laws do not require that Swedish RROs obtain specific identification about the work copied such as the title or author("Non-Title Specific Photographic Works"). The $13,000 collected by BONUS is for Swedish reproductions of Non-Title Specific Photographic Works over the last ten year period. As we understand it, these funds were designated by BONUS according Swedish statistics to be distributed to photo agents who are also copyright holders. Since PACA is the only trade organization in the United States for stock agents, BONUS has asked PACA whether it wants CCC or BLF to collect these funds on its members' behalf. CCC already has an agreement with BONUS to collect similar Non-Title Specific funds for individual photographers as well as other artists' organizations.

Upon reviewing these proposals suggested thus far, it has became clear that no matter which organization collects these funds, it will be impossible to determine a way to accurately distribute these funds back to rightful stock photo agency. Because the funds are Non-Title Specific and the amount is relatively insignificant, it is cost prohibitive to hire experts to devise a formula for distribution. For example, collecting societies that represent music publishing companies collect millions of dollars each year and have developed statistical formulas to determine how to most equitably divide the royalties collected among authors and music publishers. After discussing this situation with experts in this area, we have concluded that it would cost more money to determine how to distribute the money than the actual amount collected.

CCC is willing to enter into an agreement to accept this money from BONUS but has not yet told PACA how it would distribute it. CCC has told PACA it is unwilling to devise a distribution model for this amount of money. Moreover, if CCC collects this money it wants a 5% administration fee as well as a letter accepting responsibility. In either event, regardless of which organization collects this money, PACA and its members will still need to determine how this money should be distributed. When CCC cannot determine how to distribute money collected for Non-Title Specific Work, CCC usually uses the money to educate the public about copyright compliance or to cover their own administrative costs.

BLF, the Swedish picture association also has the same dilemma when they receive reproduction fees for Non-Title Specific Works. Since those fees cannot be distributed in an economical or practical way, it elects to use the money for various causes that benefit their members such as copyright education, scholarship funds or legal funds to support copyright actions. Therefore BLF recommends that PACA members similarly resolve this issue. BLF has proposed to also collect this money and give it to PACA to benefit its members for which it will also charge an administrative fee for performing the service (to be negotiated).

This option sounds the most practical but it will require PACA to amend its by-laws to accept these funds. Furthermore it will also require the approval of PACA members who are also copyright holders. If no cause of action is taken by PACA, is likely that these funds will be deemed" refused" and a collecting society will end up using these funds to cover their own administrative costs. These options are not exhaustive and are simply the only proposals that we have examined to date. Therefore we are interested in receiving feedback from our members who are rights holders.

RIGHT HOLDERS ARE PACA MEMBERS WHO EITHER OWN COPYRIGHT TO IMAGES BECAUSE THEY ARE THE PHOTOGRAPHER-OWNER OF THE AGENCY; OWN COPYRIGHT TO PHOTOGRAPHS UNDER A "WORK FOR HIRE" AGREEMENT, OR HAVE PURCHASED COPYRIGHTS IN COLLECTIONS. BECAUSE BONUS HAS REQUESTED THAT PACA RESPOND TO THEIR REQUEST FOR DISTRIBUTION, IT IS IMPERATIVE THAT THOSE AGENCIES CONTACT PACA PRESIDENT, SONIA WASCO PRIOR TO MARCH 13, 2001. SONIA CAN BE REACHED AT 717-627-2285 OR EMAIL TO SW@HEILMANPHOTO.COM.

REMINDER TO THE MEMBERSHIP
As a PACA Voting, Provisional, Pre-Provisional or Auxiliary Member, you are allowed one "free" phone call to the PACA Counsel per program/calendar year. If your needs are those which require additional research or work by Ms. Wolff, you should expect to be billed accordingly. Please make sure you understand the nature of your request and its demands during the call and clarify any additional costs with Nancy at that time. Thank you!!

9. KAPLAN'S "WING TIPS OVER THE EDGE" AND BENVENUTO'S COMPETING IMAGE ARE NOT FOUND TO BE SUBSTANTIALLY SIMILAR
A federal district judge from New York dismissed photographer Peter B. Kaplan's (Kaplan) claim for copyright infringement against the Stock Market Photo Agency, Inc. (Stock Market) and the Fox News Network, (Fox). The complaint alleged that the Stock Market licensed an "imitation" photograph created by Bruno Benvenuto to Fox for advertising purposes. Both images depicted a man in a business suit with wing tip shoes standing on the ledge of a high building, contemplating a leap. The court found that that the works were not "substantially similar" because the similarities between the two images arose from "non-copyrightable" elements and the photographer's central concept of a businessman contemplating a leap was an unprotectible idea.

When a work is not directly copied, in order to prove copyright infringement, a creator must establish access to the work and substantial similarity. The defendant's motion to dismiss the infringement claim was based on the assertion that Kaplan could not establish substantial similarity between the two works. The court is required to compare the work side by side and ask whether an ordinary observer would recognize that one work was copied from the other. The court recognized that this test is an inexact science and is case specific. A fundamental principle of copyright law is that copyright does not protect an idea, only the expression of an idea. Where the line between the idea and the expression of the idea crosses is often a difficult determination. In making the comparison, the court borrowed a doctrine known as "scenes a faire" used in analyzing infringement cases in literary and dramatic works. It means that certain choices in incidents, characters and scenes that are standard in the treatment of a given topic are not protectible under copyright law.

The court, in comparing the two photographs, determined that the topic of an exasperated businessman contemplating a leap from a tall building is standard in today's fast paced business climate, especially in New York. (NASDAQ investors?) Therefore, the subject matter of the photograph is unprotectible and the choices that necessarily flow from that standard setting are not protectible either. These choices included the pose of the man standing on a roof of a ledge of a building with shoes partially extended. The court found that it would be impossible to portray the subject matter without using that pose. The choice of wardrobe (a pinstriped business suit and wing tip shoes) was found to be characteristic of a businessman's dress and also not protectible. In addition the angle of the shot, the businessman looking down at the street, was essential to expressing the "jumper's own viewpoint" and was considered to be the most common viewpoint in this scenario. Accordingly, the choice of camera angle was also unprotectible.

The court also examined the background, perspective, lighting, shading and color, the copyrightable elements considered in a photograph and found that the photographs were not substantially similar in that respect either. Notably, Kaplan's photograph was a horizontal panoramic view emphasizing breadth. In contrast, Benvenuto's photograph was a narrow vertical photograph emphasizing depth. The court compared the activity in the street, noting one was narrow with larger vehicles, the other wider with mostly yellow cabs. The court also found the moods to be substantially different, depicted by the lighting, shading and coloring, finding that Kaplan's photograph was "somber" and "thoughtful" and Benvenuto's "sketchy" and "edgy". As a result, the court found that the only similarity between the two photographs to be based on unprotectible elements associated with the underlying subject matter. Stating that Benvenuto added his own originality in expressing the underlying idea of a businessperson contemplating a leap from a tall building to the street below, the court dismissed the infringement action.

This case demonstrates the difficulties inherent in any copyright infringement action involving similar ideas. Are the elements copied based on the idea, or are they the protectible choices made by the photographer? Where does inspiration end and copying begin? Since these are case specific determinations, there are no hard and fast rules to follow. There are many universal ideas and concepts expressed in photography. No one wants to be embroiled in a lengthy legal battle over whether one work copied another of a similar subject matter. If there is any guidance in this case, it is that even if the subject matter is similar, the photograph must still be original in the way the idea is expressed, including the choices in selecting non-essential elements within the photograph.

TASINI BRIEF:
Nancy Wolff and Lonnie Schroeder have been sent a copy of the Amicus curiea brief filed in the Supreme Court of the United States in which PACA joined with ASMP and other artist organizations in support of the freelance writer Tasini in its copyright infringement action against the New York Times and other publications. This case involves whether publications can create CD-ROMs from past publications or place articles on a database such as Lexis without compensation to the freelance writer/artist. The Supreme Court is scheduled to hear the case on March.

10. COURT DEFINES MEASURE OF ACTUAL DAMAGES IN INFRINGEMENT ACTION
by Nancy E. Wolff, PACA Counsel, Wolff & Godin LLP
The Second Circuit, (the federal appellate court in New York) recently described circumstances under which a plaintiff may recover the value of a lost license in a copyright infringement action.

In Davis v The Gap Inc., the plaintiff Davis was in the business of designing artful and original designs of eyewear. These designs were particularly striking and unusual as perforated metallic discs or plates replaced what would be otherwise be occupied by regular lenses. The plaintiff went to great lengths to market his products to "stylish and popular entertainers," as well as various fashion designers and publications. The Gap clothing company ran a series of advertisements exhibiting people of diverse lifestyle and backgrounds. One of the ads depicted a group of young individuals of Asian appearance, standing in a V formation, dressed in black, each wearing distinctive eye shades. The subject at the apex of this V formation wore plaintiff's eyewear design. Although all of the subjects were provided with Gap clothing to wear for the photo shoot, each was apparently told to wear their own accessories. The plaintiff brought a copyright infringement action seeking a declaratory judgment of infringement as well as damages for an unpaid license fee, a percentage of the Gap's gross profits resulting from the use of plaintiff's eyewear, punitive damages and attorney's fees.

In order to recover damages for the infringer's profits, a plaintiff must submit sufficient evidence of defendant's profits that bear a reasonable relationship to the act of alleged infringement. In other words, it is not enough to show the defendant's revenues from the sale of everything sold, but rather a plaintiff must specifically show how these revenues are reasonably related to the infringing act. This was precisely the problem in the Davis case. Mr. Davis submitted evidence of increased net sales in the corporate parent of the Gap stores. As this corporate parent oversees the sale of numerous items, only one of which is eyewear, the court deemed this evidence insufficient to disgorge the Gap of an appropriate percentage of profits.

Since the artwork was not registered before the infringement, statutory damages, punitive damages and attorneys' fees could not be awarded.

Actual damages, on the other hand, focus on the plaintiff's lost sales, lost opportunities to license, or diminution in the value of the copyright. In the Davis case, Mr. Davis' actual damages was a lost opportunity to license his product to the Gap. The court held that a lost opportunity to license is recoverable as compensatory damages under appropriate circumstances. Factors the court considered were 1) whether the infringement was innocent, 2) whether the owner is reasonably compensated by other elements of the award, and 3) whether such an award would impose an unreasonable burden on the infringer. Most importantly, the amount of damages may not be based on undue speculation. The copyright owner must be able to show that the thing taken had a fair market value in order to make out his claim that he has suffered actual damages because of the infringer's failure to pay the fee. Market value therefore plays a crucial role in determining the amount of the actual damages. Mr. Davis prevailed in his claim of actual damages for loss of a licensing opportunity by submitting evidence that a magazine previously compensated him with a certain amount when using one of his designs for a particular picture. This dollar amount provided the court with sufficient evidence to calculate an appropriate amount of damages.

This case has relevance to photographers and stock companies for two reasons. First, in licensing photographs, care should be taken to make sure that no unique objects are depicted in the photographs, such as copyrighted jewelry, eyeglasses, furniture or other works of art that would require a license. Second, the case confirms that an appropriate measure of actual damage when a photograph is reproduced without permission is a retroactive license fee based on market value. Since photographs are typically licensed based on use, evidence as to licenses for similar uses should enable the copyright holder to prevail in an action for damages. Of course, if the photograph is registered before the infringement occurred, actual damages need not be established, and the court can award statutory damages as well as attorneys' fees.

11. 11TH CIRCUIT HOLDS NGS LIABLE FOR COPYRIGHT INFRINGEMENT OF PHOTOGRAPHS USED IN CD-ROM "THE COMPLETE NATIONAL GEOGRAPHIC"
by Nancy Wolff, PACA Counsel, Wolff & Godin, LLP
Freelance photographer Jerry Greenberg sued the National Geographic Society and National Geographic Enterprises (collectively "NGS") in the Federal District Court of the Southern District of Florida for infringing the copyright in four of his photographs included in the thirty volume set of CD-ROMs, "The Complete National Geographic". One image was used in an introductory moving cover sequence of 10 covers while the others were within the digitally reproduced magazines. The lower court dismissed Greenberg's action on summary judgment in favor of the NGS finding that the CD-ROM was a "revision" of a prior collective work that the NGS was entitled to publish under the copyright it owned in the original magazines as a collective work. (Summary judgment means that there is no factual dispute for trial and the court can decide just based on the law). On appeal to the 11th Circuit ,(the Appellate Division for Florida), the court held that the CD-ROM's were not revisions but new works that fell outside the scope of the magazines copyright in the collective work. The individual magazines are considered "collective" works under the Copyright Act and are defined as "a work in which a number of contributions, constituting separate and independent works in themselves are assembled into a collective whole." The individual photographs are works of authorship in which the photographer owns a separate copyright. As copyright owner, Greenberg owned the exclusive right to reproduce the photographs, distribute them, create derivative works, and to publicly display and transmit the works. The creation and distribution of the CD-ROM of back magazines in digital form, and the creation of the introductory sequence clearly violated these exclusive rights. However, the NGS relied on Section 201(c) of the Copyright Act in contending that it is privileged to use the photographs. Section 201(c) is entitled "Contributions to Collective Works". It provides: Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series. Greenberg owned the copyright in the photographs. The NGS owned the copyright in the magazine edition each photograph was first published in. NGS argued that the 30 volume set was a compendium of back issues and therefore it was allowed to use the photographs because this compendium was simply a revision of the earlier works. The court disagreed and stated: "(I)n layman's terms, the instant product is in no sense a "revision". Using common sense copyright analysis, the court concluded that NGS in collaboration with Mindscape (the software company) created a new product. Looking at the opening sequence in which one of Greenberg's photographs was used to create a moving visual sequence, the court found that this use of the photograph also violated Greenberg's exclusive right to create a derivative work. It refused to find, as NGS suggested, that this use was "fair use", even though the Complete National Geographic may serve an educational purpose. The sale of the work was for profit and the inclusion in the sequence was found to diminish the photographer's opportunity to license the photograph to other potential users. Neither did the court find that the use was de minimus (too small to rise to the level of infringement). The court directed judgment on these copyright claims in favor of Greenberg. In addition, it found Greenberg the prevailing party and entitled to attorneys' fees under the Copyright Act. The court directed that the court below ascertain damages, attorneys' fees, and any injunctive relief, and urged that the court consider alternatives to an injunction such as mandatory licensing fees, in lieu of preventing the public access to this work. The case relied upon by the court below in initially dismissing these copyright claims, Tasini v. New York Times Co. is scheduled for oral argument before the Supreme Court of the United States this Wednesday. The 11th Circuit felt that the issue of the creation of a new work on a CD-ROM was more than just reproducing the work in another medium, one of the issues to be decided in Tasini, in which magazine articles were included in digital databases such as Nexis. As a consequence, it did not withhold its decision in this Greenberg case.

12. MAJOR LEAGUE SPORTS CONTROL IMAGE USE THROUGH CREDENTIALS
by Nancy E. Wolff, PACA Counsel, Wolff & Godin LLP
Various major sports leagues have been imposing contracts to restrict the type of uses that can be made of photographs taken at a sporting event. Professional sports photographers from magazines and other photo news services and agencies are required to obtain credentials to gain access to the arena, to carry photography equipment and to stand at advantageous positions to capture images. These credentials were usually in the form of small print on the back of the pass, much like a ski ticket. However, sports leagues have recently begun to require that a written agreement be signed prior to allowing the photographer access to the game. Last July, the NBA sued the New York Times after the New York Times began selling a collection of photographs from a Knick's-Pacers playoff series. The NBA alleged that this use violated the conditions that were agreed to when applying for credentials to cover the game. The restrictions limited the use of photographs to "news coverage".

The New York Time's position was that the sale of prints was a privilege of the copyright holder and protected as expression by the First Amendment. This tension between the right of an owner of a private arena to control what it believes is commercial property derived from the event and the right of copyright holder to exploit the rights in a photograph has been growing recently. On opening day of Major League Baseball, professional photographers were asked to sign a MLB contract restricting the use of photographs to news coverage and prohibiting the transmission of any images while the game was occurring. This agreement was to cover the entire season. Images taken during the course of the game are in demand for websites that use photographs to illustrate news coverage of the game. Most photographers and the AP would not sign this agreement and were permitted to photograph on a daily basis. Negotiations ensued and the number of images permitted to be transmitted during the game increased from three to seven.

What is considered the final contract by MLB permits the transmission of up to seven images during a game. It also permits the coverage of a newsworthy event, so presumably a photograph of a grand slam in overtime after the seven-image maximum has been met would be permitted. The unified refusal to agree to the initial contract among the various publishers and photo agencies helped in forcing changes to the agreement. Unfortunately there may not be decision for some time that clarifies whether photographers can exploit their copyright in images to create "fine art" prints from images taken pursuant to a contract that limits the use to news coverage. The New York Times recently settled its case with the NBA. The press release described the terms of the settlement as an agreement to provide a direct link from the publisher's online store to NBA.com. A marketing component of the agreement includes the use of the NBA logo on the New York Times web site and in print advertisements promoting the sale of the photographic prints. What is certain, is further contracts that tie access rights to control of image use will be seen when ever an event is held in a private arena.

13. CALIFORNIA LOOKS AT ART REPRODUCTIONS AND THE RIGHT OF PUBLICITY
by Nancy E. Wolff, Wolff & Godin, PACA Counsel
The Supreme Court of California for the first time formulated a balancing test to determine whether reproductions of celebrity artwork are entitled to First amendment protection, or require the consent of the celebrity's estate under the California statute granting deceased celebrities a right of publicity.

The California statute (formerly section 990 of the California Civil Code, currently Section 3344.1) grants the right of publicity to successors in interest of deceased celebrities, prohibiting any other person from using a celebrity's name, voice, signature, photograph, or likeness for commercial purposes without the consent of such successors. The statute specifically exempts a use "in connection with any news, public affairs, or sports broadcast or account, or any political campaign" Further, use in a "commercial medium" does not require consent solely because the material is commercially sponsored or contains paid advertising; "Rather it shall be a question of fact whether or not the use ... was so directly connected with" the sponsorship or advertising that it requires consent. Finally, the statute provides that "a play, book, magazine, newspaper, musical composition, film, radio or television program" work of "political or newsworthy value" "[s]ingle and original works of fine art" or "an advertisement or commercial announcement" for the above works are all exempt from the provisions of the statute.

In this case, the plaintiff Saderup was a charcoal illustrator of celebrity portraiture. His drawings are used to create multiple reproductions in the form of lithographic prints and silk-screened images on T- shirts. Among the celebrity drawings he sold were lithographs and T-shirts bearing a likeness of The Three Stooges. Comedy III Productions was the registered owner of all rights to the former comedy act known as The Three Stooges, all deceased personalities. Comedy III brought an action against the artist for violations of the California right of publicity statute, seeking damages and an injunction preventing further sales. The court trial judge found for Comedy III and entered judgment against Saderup awarding damages of $75,000 and attorney's fees of $150,000 plus costs. The court also issued a broad permanent injunction restraining Saderup from violating the statute by use of any likeness of The Three Stooges in lithographs, T-shirts, or any other medium by which the art work may be sold or marketed. The sole exception to this broad prohibition was Saderup's original charcoal drawing from which the reproductions were made.

On appeal the court modified the award by striking the injunction. There was no evidence that the activity was continuing and the injunction was over-broad because it extended to conduct protected by the first amendment. The artist appealed on two grounds, both of which were addressed by the Supreme Court. 1) The conduct did not violate the statute. 2) The conduct was protected by the constitutional guarantee of freedom of speech.

On the first ground, the court determined that the statute applied because the lithographs and t-shirts were themselves products, and the artists was using the likeness of the Three Stooges on products. The more difficult issue for the court to address was the constitutional issue. The court noted the tension between the right of publicity and the first amendment. The court concluded that depictions of celebrities amounting to little more than the appropriation of the celebrity economic value are not protected expression under the first amendment. The court observed that the right of publicity is primarily an economic right. The court formulated a balancing test between the First amendment and the right of publicity based on whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation. This test was derived directly from the fair use doctrine in copyright law that employs a balancing of four factors to determine whether copying a work without permission is permitted.

In analyzing these factors, courts have postured whether the new work is "transformative". The court theorized that a work that contained significant transformative elements was less likely to interfere with the economic interest protected by the right of publicity. The court went on to say that the celebrity still has the "right to monopolize the production of conventional, more or less fungible, images of the celebrity." The question for this court was "whether a product containing a celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness." The court clarified the term expression as " something other than the likeness of the celebrity." In close cases, the court suggested that the question to be answered is "does the marketability and economic value of the challenged work derive primarily from the fame of the celebrity depicted? When the value of the work comes principally from some source other than the fame of the celebrity from the creativity, skill, and reputation of the artist it may be presumed that sufficient transformative elements are present to warrant First amendment protection." The court postured that the right of publicity is aimed at preventing the illicit merchandising of celebrity images. Therefore, because single original works of fine art are not forms of merchandising, the first amendment rights of the artist should prevail and permit any exhibition and sale. However, the court also concluded that a reproduction of a celebrity image that contains significant creative elements is entitled to as much First amendment protection as an original work of art. It found that the trial court and the Court of Appeals erred in denying all protection to reproductions.

An example the court gave of reproductions that demonstrated significant creative elements was Andy Warhol's silkscreens of celebrities such as Marilyn Monroe, Elvis Presley and Elizabeth Taylor. The court, applying the test as to whether an artist depicting a celebrity must contribute something more than a "merely trivial" variation, but must create something recognizably "his own" in order to qualify for legal protection found that in the case of the Saderup, his skill was subordinated to the overall goal of creating literal, conventional depictions of The Three Stooges so as to exploit their fame and therefore not protected by the first amendment. Further the court determined that the marketability and economic value of Saderup's work derives primarily from the fame of the celebrities depicted. The court perceived no transformative elements in Saderup's works that would require first amendment protection.

The art addressed in this case was a charcoal drawing made into lithographs and t-shirts. A photographic depiction of a celebrity was not a medium of art before this court. (I believe the trial judge stated in his decision that photographs were outside of the scope of his decision.) However, how a subsequent court in California may handle the sale of photographs or limited edition photographic works after this case is unclear.

The balancing test evoked by this court only makes sense for artistic likeness and not photographs. Determining whether a work is transformative has no place in photography. A photograph by its nature must be a literal depiction of the celebrity. The expression of the photographer and the celebrity cannot be separated. A photograph does not necessarily add something new nor parody the subject. Unfortunately the word "transformative" is one of the more difficult terms for courts to understand in a copyright context. Now it has been adapted to publicity rights. Yet a photograph is clearly a work of art, protected by copyright and the freedom of expression under the first amendment. The California statute exempts "single and original works of art." It can be argued that each photographic print is unique and can be construed as a single and original work of art.

The courts in New York have already held that limited editions of a sculpture are a form of expression protected by the first amendment. The problem with this case is that the artist must use the first amendment as a defense. That means each case requires a fact finder (judge or jury) to determine if a limited edition photograph is worthy of first amendment protection or is a conventional image restricted by the right of publicity. A case-by-case analysis necessarily means that you must defend yourself in court, an expensive proposition. Further, determining the primary motivation of the purchaser of the art reproduction seems unreasonable. Whether a purchaser chooses a photographic print because of the reputation of the photographer, or a desire for the subject may not be readily ascertainable. Even with the Warhol example, are we interested in it only because it is a Warhol or because we are interested in Monroe, Taylor and Elvis?

This balancing test appears to favor established artist' with an established reputation over emerging artists that choose as their subjects celebrities or other personalities. How do you describe the style of a photographer as recognizably his or her own? What factors will a court use? It is likely that all artists will face more pressure from representatives of estates of deceased celebrities in the future until these questions are resolved. Assignment photographers who take portraits of personalities may want to obtain permission to use their photographs in self-promotional material, websites, books, limited edition prints or other reproductions (such as digital prints).

In selling any reproduction, I would emphasize the name of the artists and his or her reputation. Describing the prints as "limited editions" may add to the appearance that the work is protected expression and not merchandise. It is likely that a distinction could be made between photographic prints individually processed and those digitally made. What the court will consider "a conventional likeness of a celebrity" is unknown. What is certain is that issues involving rights of publicity will be an increasing area of legal concern. These rights vary state by state. California is often the leader in states that view the right of publicity as an economic right that survives death to benefit the heirs, rather than a personal right. If a case in the future involves photographic reproduction, PACA might be able to assist the court in explaining the unique qualities of the art of photography in an amicus brief (friend of the court).

14. COURT DEFINES MEASURE OF ACTUAL DAMAGES I