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 |