Since the bill Copyright Small Claims Bill, H.R. 3945, entitled, the “Copyright Alternative in Small-Claims Enforcement Act of 2017” (the “CASE Act”) was introduced by Representative Hakeem Jeffries (D-NY), there have been many articles published in support of this important legislation. Here is a great article to help you understand why this bill is so important to our industry and to all creators.
Maloney v. T3Media
By Brianna Dahlberg of Cowan DeBaets Abrahams & Sheppard LLP
On April 5, 2017, in a victory for visual content creators and licensors, the Ninth Circuit affirmed the dismissal of a lawsuit brought by former college athletes alleging that T3Media had misappropriated their names and likenesses by selling licenses to photographs from the NCAA Photo Library. The Ninth Circuit held that the athletes’ claims for right of publicity and unfair competition under California law were preempted by the federal Copyright Act.
In their putative class action lawsuit, the athletes had sought to hold T3Media liable for displaying the photographs online and for offering non-exclusive licenses to consumers permitting them to download a single copy of a chosen image for non-commercial art use. The athletes did not own copyright to the photographs at issue—the copyrights were owned by the NCAA, who had contracted with T3Media to store, host, and license the images. T3Media responded to the athletes’ lawsuit by filing a special motion to strike under California law, which was granted by the district court. The Ninth Circuit affirmed the district court’s decision throwing out the athletes’ lawsuit and awarded attorneys’ fees to T3Media.
In its opinion, the Court clarified the test for determining whether a right of publicity claim is preempted by the Copyright Act. Section 301 of the Copyright Act provides a two-part test for determining whether a state law claim is preempted: first, the court asks whether the subject matter of the state law claim fell within the subject matter of copyright; and second, the court asks whether the state law rights asserted were equivalent to rights within the scope of copyright. Applying this test to the athlete’s right of publicity claims, the Court drew a distinction between claims based on the unauthorized use of a person’s likeness in advertising, and claims based on the mere display or distribution of an artistic work:
[A] publicity-right claim may proceed when a likeness is used non-consensually on merchandise or in advertising; but where a likeness has been captured in a copyrighted artistic visual work and the work itself is being distributed for personal use, a publicity-right claim is little more than a thinly-disguised copyright claim because it seeks to hold a copyright holder liable for exercising his exclusive rights under the Copyright Act.
The Ninth Circuit’s opinion in T3Media’s favor is consistent with longstanding practices in the visual content industry. It affirms that visual content creators and providers, by merely displaying and offering for license images that depict people, do not make any use that implicates the right of publicity. The decision provides clear guidance that will allow visual content creators and licensors to continue to offer creative, newsworthy, and culturally important images to the public.
Cowan, DeBaets, Abrahams & Sheppard LLP submitted an amicus brief in support of T3Media on behalf of the Associated Press, the Digital Media Licensing Association, Getty Images (US), Inc., the Graphic Artists Guild, the National Press Photographers Association, Inc., PhotoShelter, Inc., the Professional Photographers of America, Shutterstock, Inc., and ZUMA Press, Inc. [A copy of the amicus brief is here). We thank everyone who participated and joined the brief. The attorneys representing T3 Media were extremely grateful for our industry support to counter all the amicus briefs submitted by the various sports’ leagues.
It’s not always easy to go up against the big guys, but when your copyrighted image is being infringed you have to try. Brad Parker, owner of Kailua-Kona-based Tiki Shark Art, claimed his art was used on beachwear on CafePress.com without his permission. You can read the entire article here.
Two Cowan, DeBaets, Abrahams & Sheppard Attorneys, associate Scott J. Sholder and staff attorney Marissa Lewis, released a new blog today discussing Copyright Authorship and the Ownership of Photographs in response to the recent facts regarding a British photographer and a photo that was taken during an expedition of his. Much press has already been given about this now famous photograph. Read what these two attorneys have to say here.
By Scott J. Sholder and Marissa Lewis, Attorneys at CDAS
“It’s been theorized that if you give a million monkeys a million typewriters, they will eventually produce the entire collected works of William Shakespeare. It’s been proven, however, that if a troupe of monkeys steals a camera, one will eventually take a really good selfie. By now you’ve probably heard this story, but just in case, the facts are as follows.
In 2011, British wildlife photographer David Slater traveled to the forests of Indonesia, equipment in tow, to follow and photograph the endangered crested black macaque species of monkey. According to news reports, during his trip, Slater set up his camera and tripod and briefly stepped away, and when he came back, a group of macaques had, in the words ofThe Telegraph, “hijacked” his camera, ultimately taking hundreds of shots. Many of the shots were, as expected, blurry or otherwise unusable, but several actually came out quite well, including a crystal-clear selfie of a female macaque showing off her large amber eyes and huge toothy grin. Slater sold the image to several publications, and soon the story – and the selfie – caught fire in the media, filling inches in the Guardian, the Telegraph, and the Washington Post, among other media outlets. The selfie soon ended up on Wikimedia Commons (owned by the parent company of Wikipedia), which is advertised as a repository of over 22.3 million free public domain images.
In early 2012, Slater asked Wikimedia to remove the selfie from its online archive, claiming that he owned the copyright rights in the image. Wikimedia complied, but when the image reappeared again later, Wikimedia had a change of heart, noting that works originating from non-human sources are not protected by copyright, and rejected Slater’s demands. In other words, Wikimedia took the position that because the selfie was taken by a monkey, Slater could not claim that he owned the copyright in the image. Slater claimed, and continues to claim, among other things, that his failure to press the shutter himself should not deprive him of copyright in the image, that the photographic equipment was his, that he spent considerable money on the equipment and on his trip to Indonesia, and that he not only “set up the shot,” but edited, processed, and published the selfie after it was taken. Slater is now considering taking legal action against Wikimedia in the United States, and this has given the story new life.
This scenario raises fascinating questions concerning copyright ownership of photographs. Under U.S. copyright law, ownership is determined, in the first instance, by authorship. Unless the work is a work made for hire, the author of a work is the original owner of that work, and remains the owner of that work unless another person or entity acquires ownership by a written and signed agreement. Here, the work-made-for-hire doctrine is easily ruled out: to say that Slater and the monkey were in an employer-employee relationship would be a stretch of the imagination. We can also confidently conclude that no combination of Slater, Wikimedia, and the monkey put pen to paper to effectuate a transfer of ownership. The owner of the monkey selfie must be the one who authored it.
The Supreme Court long ago defined an author as “he to whom anything owes its origin; originator; maker.” Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884). In other words, the author is the one who had the “creative spark,” or made the “intellectual effort,” and caused the work to be created. So who is the author of the monkey selfie – Slater, the monkey, both, or neither? The question is not at all black and white, and leads to a number of other questions. For example: Can a monkey qualify as an “author” in the first place? Did Slater contribute sufficient copyrightable expression to be the “author”? How much significance should be ascribed to who pushes the shutter, who owns the equipment, and who expended the money and effort to travel and prepare for the shoot?
First, authorship traditionally includes a human element – some sort of intellectual effort or creative expression that only a human being is capable of. Although this notion has been challenged – most commonly in the context of computer-generated works – membership in the human race remains a prerequisite to copyright “authorship,” even if a non-human happened to “create” the work. In fact, both the current U.S. Copyright Office Compendium of Copyright Practices (Compendium II) as well as a draft of the Compendium III released August 19, 2014, state: “The U.S. Copyright Office will register an original work of authorship, provided that the work was created by a human being . . . [but] will not register works produced by nature, animals, or plants.” The drafters of the Compendium presumably had this very case in mind when they listed “[a] photograph taken by a monkey” as the first example of a work not eligible to register. SeeCompendium III § 306. It follows then that not only is the monkey not the author of the infamous selfie, but she cannot be an author either. In other words, the selfie cannot be a “joint work” because a joint work must be “prepared by two or more authors.” 17 U.S.C. § 101.
Because works that originate solely from non-human sources are not copyrightable and immediately fall into the public domain, if the monkey was the only “creator” of the work, then the selfie is in the public domain, and therefore free for anyone, including Wikimedia, to use. But this of course begs the question whether the monkey was, indeed the sole creator. Regardless of the monkey’s authorship status, Slater may be able to lay claim to be the sole owner of the selfie by virtue of his own role in the creation of the photograph before the camera was taken by the monkey.
That the monkey, and not Slater, snapped the photograph is not determinative. Fixation is a requirement for copyrightability, but the author does not necessarily have to be the one who does the fixing. Rather, what is crucial is that the author contributes creative and original expression to the work. In interviews, Slater has emphasized that he incurred considerable personal expense by purchasing photographic equipment and traveling to Indonesia, but U.S. courts no longer equate this “sweat of the brow” with copyrightable expression. See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). Likewise, that the camera equipment belonged to Slater is irrelevant; indeed, photographers often rent equipment, yet the ultimate owner of the equipment is not the owner of the photographs captured by the equipment during a shoot.
However, Slater may have a colorable argument that the monkey selfie was a product of his creative decisions. If Slater can prove that he made creative choices in setting up the shot, and that the monkey merely acted as a substitute for Slater’s hands when she stole the camera and clicked the shutter, then the question of copyright ownership may resolve in his favor. In fact, a professional photographer often acts as a kind of director – setting up a shot from a creative standpoint – and then has an assistant press the shutter. Lastly, like all professional photographers, Slater only published the “perfect” photographs, in which everything was in focus and the composition was pleasing.
This creative decision-making is the key aspect photographers should focus on when embroiled in a dispute over the ownership of a photograph with another potential author (human, ape, or otherwise). Rather than dwelling on ownership of equipment or expenditures of money or effort, photographers who are putative authors should readily be able to articulate how, for example, they chose the lens, focus, and filters, set up the camera, picked the location, determined the proper distance, angle, and time of day, framed the subject, adjusted the lighting and shading, set the mood, or timed the shot. Even after the shoot is over, photographers may alter the selected images for publication by making creative choices through cropping, rotating, editing, and otherwise enhancing or touching up the resulting shots using common image software, and should weave these potentially creative decisions into the story of their authorship in order to demonstrate maximum creative direction. Notably, the completed selfie could potentially be a derivative work, with Slater owning all the enhancements made in the final production, and Slater could copyright and register the newly added creative material.
Given all of the publicity the monkey selfie case has already garnered, it will certainly continue to be one to watch. Besides, one can never really predict what circumstances ultimately lead to interesting substantive rulings in copyright law, and it could be that one arises from the most unlikely of sources – a primate in the jungles of a Southeast Asian archipelago”
About Cowan DeBaets Abrahams & Sheppard LLP
For over 25 years, Cowan DeBaets Abrahams & Sheppard has provided legal counsel to leading media and entertainment clients. A boutique firm, it provides transactional services to the media and entertainment industry, handles all forms of copyright, trademark and media disputes and has a rapidly growing digital media and venture law practice.www.cdas.com
Maria A. Pallante has released a public draft of the Compendium of U.S. Copyright Office Practices, Third Edition (the “Third Edition”). The first major revision in more than two decades, the draft presents more than 1200 pages of administrative practices and sets the stage for a number of long-term improvements in registration and recordation policy. It will remain in draft form for 120 days pending final review and implementation, taking effect on or around December 15, 2014. You can read it here.
In Rob Henson’s latest post in TallFirsMedia.com he points out problems that some of the new photo startups may face where business models are targeted largely on accelerated aggregation of imagery. The commonality among them is a move away from verifying rights of an image and providing assurances to end users, to shifting risk back onto participating parities on either side of their platform. See the entire article here
by Robert Henson, Reprinted by permission from Talls Fir Media
The recent explosion of startups devoted to monetizing photography have revealed certain diversity of approach within the photo tech ecosystem, where business models are targeted largely on accelerated aggregation of imagery and either monetization of the audience (data, app charge, etc.) or of the images themselves (advertising, print on demand, licensing/use). Many, like Chute, provide tools for the aggregation of UGC to supplement their campaigns, while others, like 500px, focus on fine art enthusiasts and provide enhanced portfolio tools in a community setting. The variance unfurls like Instagram’s API subscribers: everything from consumer apps to B2B web solutions.
Most all share the view that online images are an untapped resource. In-image advertisers, like Znaptag, seek to push through ads on publisher sites (a similar tagging experience recently departed Stipple helped pioneer). The in-image ad market is heavily populated by incumbents from the ad industry – not photo tech – so often, like other photo tech startups, less emphasis is placed on image inventory and provenance thereof. It’s a volume game, and when the pipes are open wide – and where little regulation occurs – you can expect some trade-off around quality.
By quality, we don’t imply artistic integrity, technical attributes or commercial viability, but the rights associated with an image – the verification of source and the rights granted to an end user. There are many inferior images that reside with image licensing incumbents, just as there are many superior images being aggregated by photo tech startups. It’s how images are sourced, the process, that the industry needs to be vigilant over.
Platform does not equal inventory
The incumbents in photo licensing have the edge in inventory. Existing licensors like Shutterstock, Getty, and others have long placed barriers to entry that reduced-to-eliminated risk for their clients. It was a baked-in process that translated to client attraction and retention, and is still a critical cornerstone of their ability to productize their inventory. While photo tech platforms obsess (and stakeholders watch just as obsessively) over what rights are transferred by each user to them, very few actively qualify each image that is submitted to them.
For many, it’s an impossible task. They exist within the DMCA’s safe harbor provision, and cannot actively be aware of the types of images being submitted to them. With the foundation set, they’re reliant upon opt-in measures (500px, EyeEm, and now Flickr) to build inventory. While this might achieve some success, it is still a decentralized program apart from the main proposition of the platform. Few can create the foundation that a Shutterstock has, which focuses solely on aggregation and distribution for specific audiences. The initial proposition is key – once deviated from, noise level rises and mixed messages ensue.
Infringement claims are rising
Getty’s infringement business is big, and viewed by many pundits as “free” money. Sure, it doesn’t scale proportionately to inventory nor does it scale nicely against admin costs, but it’s growing and others are noticing and coming to the table. Claims aren’t only drawing solutions-minded intermediaries who promise to do the dirty work – this is also a photographer-driven incentive, and those who’ve been infringed upon demand retribution.
Adding to this trend is attention by the government to help copyright claims, which have long been out of reach by individuals due to court allocation and claim processes. Once the doors open up and help facilitate the claims process for infringing use, you can bet even more growth within the infringement industry will occur.
UGC is still perceived as the ‘unwashed masses’ by publishers…and it is
Photo tech startups view the world’s mobile captures as potential untapped inventory rife for exploitation, and in many cases it is, but major publishers are still quite wary of directly sourcing from UGC-based startups due to the inherent risks.
Publishers (and advertisers) will still require confirmation of source, or at least an end use license that provides warranties in instance of a claim. Even the incumbents slip up now and then (Morel), but such anomalies aren’t enough to produce a mass exodus of clients. Risk-aversion is still weighted heavily against startups, whose selection process is non-existent, and any automated or crowd-curated aspects to the platform don’t reflect the rigor expected by potential clientele.
Of course, photo tech isn’t aligned with rights on an image level. Notorious terms of services, of which Instagram’s was made famous, was created to be a rights grab. Most startups have adopted similar terms of service, as is common within the culture, but many are quite friendly and transparent. The commonality among them all is a decided pivot away from verifying rights of an image and providing assurances to end users, to shifting risk back onto participating parities on either side of their platform. Despite the volumes of images being added online every moment, copyright law still gives recourse to those who seek it.
by Nancy Wolff, PACA Counsel
Wolk v. Photobucket.com, No. 12–420–cv., 2014 WL 2723035, (2d. Cir. June 17, 2014)
On June 17th, the U.S. Court of Appeals for the Second Circuit affirmed a 2012 decision from the Southern District of New York absolving Photobucket.com, an internet photo-sharing service from violating Sheila Wolk’s copyright in her fantasy images paintings. Many of Wolk’s works were copied, stored, and printed by Photobucket users without Wolk’s authorization. Photobucket permits users to house and display images and video on the site for free, and the site generates revenue through web advertising and photo printing. Each item hosted on the site is given a unique internet addresses (URLs) through which users can access that particular content. At the time of the 2012 decision Photobucket already hosted more than 9 billion images. Lacking the staff to sift through each photo, Photobucket’s policy is to rely on the safe harbor provisions of Digital Millennium Copyright Act (“DMCA”) and leave the responsibility of policing for infringement up to the copyright owner. Then, if and when an individual finds an infringement on the site, he or she can request that Photobucket remove the work in accordance with the take down provisions of the DMCA which provides notice to ISP’s of infringing content on the site, including location so the ISP may remove the material.
Between 2008 and 2010 Wolk found numerous infringements of her work on Photobucket, and requested that the site remove each unauthorized use. The site removed each of the infringements for which Wolk supplied a completed copyright takedown request. Although most of the infringing works had been removed, Wolk sued Photobucket for copyright infringement, purporting that the site did not do enough to prevent these infringements from appearing on the site. The Southern District court found that Photobucket’s policies and the methodology the site used to protect against infringement allowed the site to qualify for protection under the “safe harbor” exclusion of the DMCA, insulating it from liability resulting from the infringement of Wolk’s art.
The court found that the “safe harbor” provision of the DMCA, codified as a part of the federal Copyright Act, was enacted to protect internet service providers and websites from this very type of liability issue. With the growth of the internet, sites are often unable to police ever corner of the web looking for copyrighted material. To qualify for the “safe harbor” protection, a service provider (1) must have no actual knowledge of an infringement, (2) must not be aware of circumstances which would make infringement apparent on the site, and (3) upon gaining actual knowledge of the infringement must work expeditiously in order to remove the infringement. Additionally, to qualify for these “safe harbor” protections a service provider must have must have adopted, and effectively established a termination policy for repeat infringers. The service provider must also not interfere with the ability of a copyright owner to find, identify, and protect their works. The district court found that Photobucket had satisfied each necessary requirement. Consistent with their corporate policy, Photobucket was not required to search out and remove all infringing works, but rather the site was only required to remove infringements of which they were made aware.
Unhappy with the district court’s verdict, Wolk’s appeal focused on the contention that the lower court had erred in finding the “safe harbor” protections were available to Photobucket. However, there is no evidence from the opinion that Wolk brought forward any additional evidence to support that claim upon appeal. As such, the court of appeals agreed with the prior ruling, and held that Photobucket is protected under the “safe harbor” defense. The court placed the yolk of responsibility for protecting copyright squarely on the shoulders of the copyright owner, and not the service provider.
This decision is consistent with most cases reviewing the responsibility of services providers to assist content owners in limiting infringing content on their sites. The notice and takedown requirements of the DMCA have led many content owners to liken it to a game of “Whack-A-Mole”. No sooner after you send a takedown notice, the same material is reposted by another user. In recent Congressional hearings in which various provisions of the Copyright Act are being reviewed, some are calling for a revision of the DMCA in which the work would stay removed after notice, even if another user reposted the same content, without requiring an additional notice, referred to as “notice and stay down”. This will require ISPs to maintain records or filter for infringing content. Testimony from large ISPs assert that the system works fine now and ISPs are resistant to any further obligations, particularly since case law has supported the hands-off approach. For now, it’s clear that the copyright owner has the burden to continually monitor the Internet for infringing material.
On May 19th, the Supreme Court issued its decision in Petrella v. Metro-Goldwyn-Mayer, Inc. et al., 2014 WL 2011574 (U.S. May 19, 2014), ruling that laches, an equitable doctrine barring suits after unreasonable delay, cannot be used to preclude copyright infringement claims brought within the Copyright Act’s three year statute of limitations.
View the entire article here
**Please note that PACA joined with several other associations in an Amicus Brief to the Supreme Court in support of Paula Petrella.