Nancy Wolff
PHOTOGRAPHER DENIED PROFIT AS MEASURE
OF DAMAGES FOR ADVERTISING USE
Mannion v. Coors Brewing Company, 2008 U.S. Dist. LEXIS 544 (S.D.N.Y. Jan. 4, 2008)
In July 2005, the photographer Jonathan Mannion, survived a motion to have his copyright claim dismissed by an advertising agency that created a “copycat” image for billboard use. This case was memorable as Judge Kaplan threw out the crutch most judges use to determine if too much of one work is copied from another, the idea-expression dichotomy. He argued that all visual images express an idea and instead explained how photographs can be original in three ways, rendition, timing and in the creation of the subject. The Court concluded that a jury, and not the court, should determine whether too many of the original elements that Mannion used to create the subject and take the picture were copied by the billboard art. The case proceeded to trial.
To remind you of the facts, Mannion specialized in portraits of celebrity athletes and musicians. He was hired by SLAM, a basketball magazine, to photograph Kevin Garnett in connection with an article. Mannion’s picture was a portrait of Garnett against a backdrop of clouds wearing casual street clothes and a heap of (in Judge Kaplan’s words) “bling-bling.” In early 2001 Carol H. Williams Advertising (CHWA) began developing ideas for outdoor billboards that would advertise Coors Light beer. One of CHWA’s comp boards used a manipulated version of the Garnett photograph and superimposed on it the words “Iced Out.” Long story short, Coors eventually put up billboards with art that was quite similar to that in the Garnett photograph—down to the “bling-bling”—but taken by another photographer. Mannion saw the billboard and brought an infringement action in early 2004 claiming that the photograph used in the billboard infringed his Garnett photograph. Once he successfully got past the motion to dismiss, Mannion sought both actual damages and infringers’ profits attributable to the infringement under Section 504(b) of the Copyright Act.
The case went to the jury, which returned a special verdict finding that Mannion held a valid copyright and that CHWA was liable for infringing Mannion’s copyright and Coors was liable for vicarious infringement. (Vicarious infringement is when you do not directly infringe but profit from the infringement and had the right to supervise). Mannion was awarded actual damages of $30,000 and the jury found that CHWA received net revenue in the amount of $50,000 as a result of the infringement. The District Court subsequently entered judgment against CHWA and Coors, jointly and severally, in the amount of $30,000 and against CHWA separately for an additional $20,000. Although he won, Mannion clearly was not pleased with the amount of recovery. After years of litigation, he was likely hoping for a more substantial result. Consequently he asked the court for a judgment as a matter of law (JNOV) or for a new trial on damages, arguing that he was entitled to profits based upon a percentage of Coors’ increased profits in 2002 compared to 2001 (the image was used on the billboard in 2001).
Mannion struck out. The primary difficulty was in his failure to identify the evidence upon which he relied to establish profits. The court found that the evidence presented at trial justified the jury’s finding that Coors did not receive additional gross revenue from sales using Mannion’s image after the infringing use stopped. The problem is with determining if any advertising really works. The reason sales of any product increase or decrease is complex and cannot be attributed to one factor such as a billboard. The court noted that any marginal gross profit was attributable to factors other than the use of the copyrighted work.
Finally, the court, refused to grant his request for a new trial, finding “no miscarriage of justice here.” The court labeled Mannion’s objection to the infringer’s profits verdict nothing more than “a quibble about something concerning which reasonable persons might disagree.” Further, the court stated that Mannion could have presented more compelling evidence of the profitability of CHWA’s Coors business.
The court itself remarked how actual damages may not be satisfying and that the Copyright Act also allows for statutory damages. However, the photographer was precluded from seeking statutory damages because he had not registered the image before the infringement.
This case demonstrates how difficult it is to rely on profits as an award when seeking actual damages from infringements where images are used to advertise a product and do not represent the product itself (such as a poster). If an advertising agency could really prove that one image or one ad could have a direct correlation to profits, it would have companies eating out of its hand! It also demonstrates the difficulty of litigating copyright cases when there is no opportunity to seek statutory damages and attorney’s fees. I am sure that Mannion incurred fees well in excess of his recovery. Another reminder to photographers to register photographs.
COURT DENIES MOTION TO DISMISS IN [ANOTHER] MCDOUGAL LITTELL CASE
Mannion v. Coors Brewing Company, 2008 U.S. Dist. LEXIS 544 (S.D.N.Y. Jan. 4, 2008)
Tom Bean is a professional photographer who created and owns the photograph entitled “Ruins of Anasazi Granaries at Nankoweep above the Colorado River, Grand Canyon National Park.” In 1998, Bean granted a limited license to McDougal Littell, a textbook publisher, to copy and print 45,000 copies of the photograph for use in three of McDougal’s textbooks. In 2007, Bean sued the textbook publisher and the printer, R.R. Donnelly, for copyright infringement and the publisher (but not the printer) for fraud. Bean alleges that McDougal violated the terms of the license by printing in excess of the 45,000 copies and by printing a subsequent edition of the particular textbook including the photograph without his permission. Bean claims that McDougal made intentional misrepresentations in the hopes of obtaining access to the photo at a lower cost (McDougal is no stranger to these claims; see Shuptrine v. McDougal Littell, discussed in the February PACA Legal Update.) Bean alleges that the printer infringed by printing copies of the textbook in excess of the licensed amount. The publisher and printer filed a Motion to Dismiss the Complaint on October 1, 2007, claiming that the court lacked subject matter jurisdiction and, alternatively, that the fraud claim was preempted by the Copyright Act.
As to the alleged lack of subject matter jurisdiction, the court determined that Bean claimed that he had properly and timely registered his photograph with the Copyright Office. The standard of dismissing the case for lack of subject matter jurisdiction requires that the court accept Bean’s claims as true, and, as such, the court declined to dismiss on this basis. As to the alleged fraud preemption, the court uses a two-part test to determine whether the claim should be preempted. First, the work at issue must be within the subject matter of copyright. Second, the state law rights must be equivalent to one of the exclusive rights protected by the Copyright Act. As to the first part, clearly a photograph is the subject matter of copyright. The court found that the fraud claim under Arizona law requires the extra element of “proof of misrepresentation”, and therefore was unlike one of the exclusive rights of the Copyright Act. Further, the intentional misrepresentation of one’s intent to perform a contract is not akin to a claim for copyright infringement. Therefore, the fraud claim was not preempted. As such, the defendants’ motion to dismiss Bean’s complaint was denied.
Currently, the defendants, both McDougal Littell and R.R. Donnelly, have moved to dismiss the complaint again for lack of subject matter jurisdiction. In the new motion, filed March 11, 2008, the defendants allege that the court had previously failed to consider the factual basis for dismissal, claiming that Bean did not properly and timely register his photograph. They claim that the registration was to Corbis Corporation, not to Tom Bean, and that Bean had not properly transferred all of the rights to Corbis. Rather, Bean had transferred only legal title in the image for purposes of registration to Corbis. Further, they claim that Bean never registered his own claim of copyright in the photograph. The court’s decision on the motion is pending.
This attack on the Corbis copyright is particularly disturbing as it questions the very language the Copyright Office provided to PACA in advising photo libraries how to register catalogs in the name of the company, and subsequently how to register databases of image using one registration. It was to avoid having the photographer register each image individually in a catalog or online database.
MARILYN MONROE LIVES ON?
CA Court Holds She Died in a Domicile of NY—CA Law Not Relevant
The photographers on the West Coast that have been battling Anna Strassberg and her licensing agent, CMG Worldwide, over the right to exploit photographs of Monroe won a round in the long, twisted battle taking place in the California courts and legislature. Milton H. Greene Archives and Tom Kelley Studios argued that she was legally domiciled in NY at her time of death, making NY law, that does not recognize and publicity rights after death, the controlling law. This is particularly relevant after a prior court decision stated that under either states law, she did not have any rights to pass under her will because at her time of death, California did not yet have any publicity rights statute that applied. CMG, not wishing to lose millions in licensing fees, successfully worked to have the CA publicity law changed last year to include anyone who died since 1917. In a 64-page decision, the court ultimately held that
CMG and Marilyn Monroe LLC were judicial estopped from seeking to apply CA law after the Monroe estate had already relied on the NY domicile for tax purposes. Essentially this doctrine prevents parties from changing positions when it suits their legal advantage.
The next move by CMG is obvious—change NY law to suit their legal advantage.
UPDATE ON GREENBERG v. NATIONAL GEOGRAPHIC SOCIETY
The Eleventh Circuit, en banc, heard argument on February 26, 2008, where the lawyers for National Geographic argued that the CD-ROM, which collected past issues of the magazine, does not violate the rights of freelance photographers, including Greenberg, whose work first appeared in print. Last year, the Eleventh Circuit had overruled the 2001 decision in favor of National Geographic; since Greenberg has been granted a full court review. A ruling is forthcoming.
ORPHAN WORKS HEARING
On May 13, 2008, the House Subcommittee on Courts, the Internet, and Intellectual Property held a Hearing on “Promoting the Use of Orphan Works: Balancing the Interests of Copyright Owners and Users”.
Speakers at the hearing were MaryBeth Peters, Register of the US Copyright Office, Victor Perlman, General Counsel from ASMP, Allan Adler, Counsel from the American Association of Publishers, Maya Gura of Picscout, Corinne Kevorkian, President and General Manager Schumacher, A Division of F. Schumacher & Company, and Karen C. Coe , Associate Legal Counsel,
United States Holocaust Memorial Museum.
Chairman Berman made it clear that he wants to put together a bill. All the written testimony has been posted at http://judiciary.house.gov/oversight.aspx?ID=427 (click on witness name).
The Hi-Ways and Buy-Ways of the Picture Professional Industry
April 24-27, 2008
Phoenix, Arizona
Message from Cathy Sachs, Executive Director, ASPP, to our PACA friends:
Education is the name of the game these days, as I am sure you will agree. The industry is in such flux with companies shifting, jobs disappearing and then reappearing in a different guise, and yet we all want to somehow keep our involvement in the image profession. The question is can we make a living from it?
If you want to find out what is happening in our industry, and where we think it is heading, then you MUST come to Phoenix in April for our Education Conference. We think it’s the best value around... and it is so much fun!
The easiest way is to register through the website at www.aspp.com/pages/194/183/0/. You can also download the program there, or a paper registration form, if that is easier for you. Please share this link with your colleagues, too.
Note: If you are registering through the website, please put your company name in the Comment box since it will not appear automatically with this system.
PACA members have a special rate of just $540 for the entire conference, including two receptions, breakfasts and lunches on Friday and Saturday, the Gala dinner on Saturday night, as well as eight educational sessions. PACA and ASPP will also do a joint tribute to our late departed and dearest friend, Jane Kinne, on the Saturday evening.
For more information you can call me at 703/299-0219 or cathy@aspp.com. I do hope to see many of you in Phoenix!
PACA is actively supporting this event in lieu of an annual meeting in 2008.
BAPLA has opened its doors on an opportunity previously available only to BAPLA Members. All image suppliers are now welcome as exhibitors at the annual Picture Buyers’ Fair, May 7-8, 2008. Now in its seventh year, PBF is the largest event of its kind in the world for image buyers. It offers access to over 15,000 images buyers via the BAPLA image buyers’ newsletter.
Known for its diverse selection of image supplier exhibitors, this year's PBF promises image buyers a greater selection of exhibitors than ever before. The show encompasses a wide range of collections, from worldwide agencies to unique specialist sources. Over 115 exhibitors have already confirmed for this year—19% of which have exhibited every year since PBF began.
Within one week of registration going live, over 600 companies have registered to attend; with the greatest demand coming from designers and magazine picture desks.
Attractions include a free seminar program on topical industry issues, essential favorites such as copyright law, as well as the evening awards and drinks reception. New for 2008, the CEPIC International Agent’s breakfast, creating a business platform for agencies from across the globe.
For information on registering to attend PBF as a visitor, booking a stand, or for sponsorship opportunities, visit www.bapla.org.uk.
About the Picture Buyers’ Fair:
- BAPLA’s PBF was launched in 2002 to provide a unique face-to-face platform for image buyers to meet with image suppliers.
- In 2007, 4,315 people registered, of which over half (56.18%) attended. This percentage is higher than the event and trade fair industry average (40%).
- PBF attracts new and wider audiences each year. Nearly half (47%) of last year’s image buyers were first time attendees.
For further information or images, contact:
Christina Berry
christina@bapla.org.uk
+44 (0) 20 7713 1780
Dreamstime, a multi-platinum global stock photography agency characterized primarily by its “community,” has expanded its submission regulations to open the door even wider to become more resourceful in the news and editorial fields. Dreamstime has expanded its editorial license policy to accept non-model released and non-property released images that are directly pertinent to current events, news and political stories, and social and cultural scenes. An original concept to Dreamstime, the expanded editorial license and new acceptance policy will enable the photographer the opportunity to "point and click" without hesitation to document newsworthy photo stories on the spot, as they happen (including landmarks, logos and crowds).
In addition to generating a larger library of quality photos on a daily basis, the enhanced editorial license will serve to compliment Dreamstime’s In The News section. In The News was introduced more than ten months ago and was specifically designed to not only initiate interest and participation by skilled and talented photographers, but to seek out and educate the amateur and semi-pro photographers who wish to elevate their experience and skills as photojournalists. This Dreamstime exclusive section features photos that “tell a story” or are of a newsworthy international, national or local event (past or present).
Customary editorial restraints apply to the new license. Although these high-resolution images will appear in the Dreamstime keyword search engine, non-model released and non-property released editorial images submitted cannot be used for any other purpose other than to illustrate a truthful and literal story documenting or complimenting the facts surrounding that story or article. Editorial images can be used in print, electronic or broadcast media only (newspapers, magazines, online magazines, and television). The non-model released and non-property released editorial images will not be available for commercial use (i.e. calendars, advertising, general merchandise). For editorial terms and conditions information visit www.dreamstime.com/terms#editorial.
“Expanding the policy for editorial submissions will enable Dreamstime to become more resourceful over all,” Enache, added. “This will afford citizen journalists a larger canvas to shoot as well as provide users (who are specifically seeking an ‘informational’ photo to document current events, news, political stories, and social and cultural events) a larger active library of images to enable them to find the perfect picture to compliment their story.”
Image Source, the world's leading independent producer of royalty free stock photography, is pleased to announce that it is offering direct clients a new collection, Cultura.
“This content from Cultura is high quality, exciting and contemporary, and perfectly complements the cutting-edge photography Image Source produces itself”, said Duncan Grossart, Image Source CEO. “The style, content and subjects in this collection are a great fit with our own images and offers clients a much broader range of imagery to fulfill their needs." Duncan added,“We welcome Cultura to Image Source and are still actively looking for more content producers to add.”
Cultura is a royalty free collection that is dedicated to capturing the rich, cultural diversity of Europe. Led by a former Vice President of Getty Images, Anthony Harris, it was founded by a group of award-winning photographers and leading art directors whose combined creative and professional expertise enables Cultura to produce a dynamic collection relevant to image buyers worldwide.
“We decided to create a business around a photographer community that will itself create great photography”, says Anthony. “By focusing on high quality, European images we can stand out as a niche supplier in the market.” Commenting on the European emphasis of the content, Anthony added, “It is our mission to reflect the ethnicity and cultural individuality of the real Europe and its people—the warmth and vibrancy of faces, architectural locations and the rich spectrum of work of family lifestyles.”
Cultura is based in London and is available through all leading agents at www.culturaimages.com. Cultura content will be also available to Image Source’s direct clients through its websites at www.imagesource.com and www.imagesource.de.
Marco Trecroce
Masterfile Corporation, a leading global independent stock photo agency, has hired Marco Trecroce for the new position of Chief Operating Officer with a special focus on technology initiatives.
“With his international management skills and extensive experience in online businesses, I know that Marco will be an invaluable asset to our company,” said Masterfile President, Steve Pigeon. “Marco will play an integral role in many of the initiatives we’ll be unveiling in the near future which are sure to raise the industry bar—and a lot of eyebrows. With Marco concentrating on operational matters and the rest of our executive team focused on global revenue growth, product development, content management and finance, I will be devoting more of my time to strategic stuff.”
Mr. Trecroce most recently served as Group Chief Operating Officer at pan-European online travel company Opodo Group Limited, prior to which he held the position of UK Group Business Transformation and Operations Director at Thomas Cook AG, United Kingdom.
“I’ve been a strong supporter and fan of Masterfile for a lot of years now,” said Mr. Trecroce. “As their COO I’m committed to helping take the company to new heights. We’ve got ambitious plans; so I’m looking forward to a great ride.”
Contact Masterfile
Phone: 800/387-9010 (Canada & USA)
Fax: 416/929-2104
Email: press.europe@masterfile.com
Web: www.masterfile.com
Mountain Light Pictures is proud to announce that renowned award-winning photographer Robert (Bob) Holmes has joined its growing list of contributing photographers.
Bob’s assignments have taken him searching for snow leopards in the remote valleys of western Nepal, journeying into the rain forests of Borneo, and crossing the Great Indian Desert on a camel.
He has illustrated more than 35 books and has regularly been one of the elite group of photojournalists invited to participate in the acclaimed "Day in the Life" series. He’s won many awards, including the coveted Travel Photographer of the Year Award from the Society of American Travel Writers in 1990 and 1992, making him the first photographer to receive the award twice.
Bob's remarkable career started in his native Britain in 1975, when he covered the successful British Everest Expedition. The following year, at the invitation of Ansel Adams, he visited California for the first time. In 1979, he moved to Mill Valley, California, where he resides today.
“We are very excited to have Bob on our team,” said Dean Stevens of Mountain Light. “His keen eye and ability to spot and capture the ‘decisive moment’ in a scene makes his work vibrant and alive." Stevens continued, “Bob’s photographs are a perfect compliment to our existing collection—and they fit very nicely with the work we are receiving from other contributing photographers.”
To see a selection of Bob’s pictures go to mlstock.com. A link at the top of the page leads to a selection pictures from his most recent travels in Cambodia. According to Stevens, coverage of other areas and subjects are being processed and will soon be online
Mountain Light Pictures is a division of Mountain Light Photography, Inc., a diverse business founded by Galen and Barbara Rowell in the early 1980s. The Rowells died in a plane crash in 2002, but their Mountain Light legacy lives on. Mountain Light Pictures is the home of the Galen Rowell Image Collection, stunning photographs from around the world produced by one of the most influential photographers of the latter part of the 20th Century. MLP also represents a growing list of some of the finest working outdoor and nature photographers.
“We are seeking out photographers who believe, as we do, that photography is a form of communication that must be must be honest and accessible. And we chose to work with people who share Galen’s dedication to producing stunning, vibrant, pictures of all things rooted in the natural world,” Stevens said. “Our goal is to build the finest commercial library of travel, outdoor adventure, landscape, lifestyle, and environmental photographs in the world. Photographers like Bob Holmes are helping us do that. In the very near future we will be announcing more fresh images from a number of other photographers,” he added.
Mountain Light Pictures
877/291-7700
mlpictures@mountainlight.com
PhotoShelter Inc., a provider of archiving, ecommerce solutions and sales opportunities to the world’s fastest growing community of independent photographers, has introduced an entirely new brand system to coincide with the end of the beta period for its open-but-edited image marketplace, the PhotoShelter Collection. Since the Collection launched in September 2007, the Company has made a number of improvements, based on feedback from photographers and image buyers culled during the beta period. Feature updates include more intuitive navigation, better lightbox capabilities, batch actions, easier access to advanced search features, and new user tutorials. With this official launch, PhotoShelter has also unveiled a new visual identity for its company and brands, including a redesigned logo and icon created by Cinco Design Office of Portland, OR.
At the time of this announcement, approximately 2,000 new photographers and 2,000 new image buyers are joining the PhotoShelter Collection every month, with over 100,000 new images uploaded monthly from photographers in 120 countries across the world. This rapid growth demonstrates a strong endorsement of PhotoShelter’s unique commitment to providing buyers with image freshness and diversity, while sharing 70% of every sale with photographers—the healthiest percentage in the industry.
Introducing the Shelter Icon
The development of a new brand identity marks a milestone for PhotoShelter, which was founded in 2005 by photographers and technologists who sought to empower fellow photographers to succeed independently. The new PhotoShelter icon represents the company’s established position as a trusted partner within the photography community. Cinco Design constructed the icon with photo frame-like windows to convey protection akin to PhotoShelter’s role as an advocate for photographers’ rights, royalties, and creative freedom. The design team selected a lush green as PhotoShelter’s official color to emanate life and the freshness of the company’s products and thinking.
The new brand system will be rapidly phased in throughout PhotoShelter’s site and communications beginning today. In response to requests from photographers accepted to the PhotoShelter Collection, new Shelter icon HTML badges will be available for download and posting on individual photographers websites with the ability to link directly to each photographer’s PhotoShelter microsite. In addition, PhotoShelter branded merchandise, beginning with very cool t-shirts, will be available through PhotoShelter.
Combining Efficiencies of Technology with Inspiration and Creativity
The PhotoShelter Collection opened in beta to photographers in September of 2007 and buyers in November of 2007 during which PhotoShelter actively sought feedback from members of the community to create the most inspirational and productive experience possible. Photographers now enjoy greater control during the upload and editing process and buyers will benefit from more efficient image searches, easier lightbox creation, and an expedited purchasing experience.
New features for photographers and buyers include:
- Advanced Search: Image buyers can now define search parameters immediately creating more accurate results, faster.
- User Tutorials: Teaches the basics of the PhotoShelter Collection and covers specific features such as image stacking and keywording using PhotoShelter’s controlled vocabulary, known as the Tagonomy™.
- Batch Image Handling: Buyers can add multiple images into light boxes and shopping carts and downloader tools enable batch download of comp images directly from a lightbox to their desktops.
- Image Stacking: Photographers can group together similar images for editing and comparison and now view at full screen size enabling a more efficient approval process.
- Keyword Weight and Visual Differentiators: Photographers can flag up to five keywords per image to increase their weighting in search results. Visual differentiators have been added to understand the meaning of clarifiers.
Visit www.photoshelter.com.
Barbara Brundage, president of www.printscapes.com, created a website so people could virtually shop for a piece of paradise. The site sells photography, fine art and vintage images with the click of a mouse to get a print of a photo, framed artwork or art on a canvas. People in Hawaii and other tropical locations as far away as the Cayman Islands are adorning their homes and businesses with pictures of the islands. A woman who visited Hawaii ordered a picture of a humuhumunukunukuapuaa, the state fish.
“People just want to take a piece of Hawaii with them,” Brundage says. “People who have lived in Hawaii or who have visited want our pictures, which also cover Asia and the Pacific Rim. We’ve got underwater pictures,
botanicals and so much more.”
Brundage steers the direction of the company with the help of five staffers. Krislynn Iki, creative director, built the website. Mark Bell, director of sales and marketing, pounds the pavement to share the work of the firm with others. The production staff makes the work look as good as possible in a digital format. There are 50 fine artists, and photographers who contribute images.
“Our goal is to maintain high quality and value,” says Brundage.
Originally from upstate New York, Brundage has been in Hawaii for 28 years. The Hawaii Kai resident previously owned a dive shop, where she gave lessons, and she even had a gig as a stunt diver for Hollywood productions done in Hawaii. It was while she was writing diving articles for various magazines that she needed photos to complement her stories. She read a book about stock photography and started her company, Pacific Stock Photography, in 1987. Pacific Stock provides stock photography for advertising agencies, banks, magazine publishers, insurance companies and other businesses that might need a photo for their brochure, advertisement or publication. Because of requests from customers, and a desire to cater to interior designers and architects, she started www.printscapes.com in 2007. With two businesses to manage, she’s especially appreciative of the support of her husband, Chris Colgate, the senior general manager of Duke’s Waikiki and Hula Grill.
Brundage says one of the challenges of running her www.printscapes.com business is marketing.
“We’re in the learning stage of how best to do that,” she explains. “When you’re a start-up, you have to get the word out within your budget. We’ve found the best way to do it is to talk to writers who can get the word out.”
She’s continuing to work on other ways to let people know about her company. Plans for 2008 include focusing on providing artwork for architects and interior designers for building lobbies, condos, guest rooms, spas, and hotels in Hawaii and across the nation.
Artists can enter their work for consideration at submissions@printscapes.com.