Tag Archives: copyright infringement

Copyright Action Against Cafepress Permitted To Proceed Based On Merchandise Created From User Generated Content

by Nancy Wolff, DMLA Counsel

Photographer Steven Gardner was not pleased to find that four of his copyrighted images – “Alaska Wildlife,” “Polar Bears 10 Hidden Bears,” “Find 12 Tigers,” and “Harmony of Wolves” – were being printed and sold on merchandise by CafePress Inc., the company behind www.cafepress.com, without his permission. Gardner filed a copyright action against CafePress alleging that CafePress directly infringed his four images. No complaint was filed against the users that uploaded his images.

See entire article here

Copyright Action Against Cafepress Permitted To Proceed Based On Merchandise Created From User Generated Content

by Nancy Wolff, DMLA Counsel

Steven Gardner was not pleased to find that four of his copyrighted images – “Alaska Wildlife,” “Polar Bears 10 Hidden Bears,” “Find 12 Tigers,” and “Harmony of Wolves” – were being printed and sold on merchandise by CafePress Inc., the company behind www.cafepress.com, without his permission. Gardner filed a copyright action against CafePress alleging that CafePress directly infringed his four images.

CafePress allows users to upload images to its site, select from its menu of novelty items, including t-shirts and mugs, and CafePress handles the everything else, including printing the image on the merchandise and shipping. Users can also make their images available for third parties to purchase via various online marketplaces including CafePress’s own website, Amazon, and eBay.

In Gardner’s case, several CafePress users uploaded his images onto CafePress’s website and sold merchandise bearing images images through CafePress’s platform and other websites, generating approximately $6,000 in revenue. CafePress also ran advertisements featuring Gardner’s images.

CafePress moved for summary judgment, asking the court to find that there is no basis for a claim of direct copyright infringement, asserting that the Copyright Act requires some volitional conduct in order to find liability.

Generally, a party bringing a claim for copyright infringement must establish the following elements in order to succeed in a claim for direct copyright infringement: (1) ownership of the allegedly infringed material, (2) violation of at least one exclusive right granted to copyright holders, and (3) volitional conduct by the defendant. Here, the first two elements, ownership of the copyright and violation of at least one exclusive right were undisputed. Only this third element – volitional conduct by the defendant – was disputed.

CafePress argued that it did not act with the requisite volition because, just like cases involving satellite and cable television providers, it is the individual CafePress users – the ones who uploaded the images and offered the items bearing the images available for sale – who are directly liable for infringement, not CafePress. CafePress also attempted to rely on the immunities afforded to online service providers with respect to user-generated content under the Digital Millennium Copyright Act (DMCA). On the other hand, Gardner argued that CafePress is akin to the copy shops that courts have held directly liable for the conduct of its customers in copying course packs and the like.

In this instance, Gardner’s case was allowed to proceed past summary judgment because the court found that there were questions of fact as to whether CafePress’s conduct was sufficient to find liability. The Court’s decision was influenced by the fact that CafePress’s service is not completely automated and a significant portion of the alleged infringing acts was done by CafePress employees. In line with Gardner’s argument, the Court highlighted that, like the copy shop, “CafePress’s employees, not its customers, are the ones operating the machinery used by CafePress to create the allegedly infringing items.” While CafePress may act at the direction of its users initially, CafePress is the one actually making the merchandise.

In denying CafePress’s motion for summary judgment on the direct copyright infringement claim, the court kept alive the question of CafePress’s direct liability for another day. Notably, this decision also hints at the court’s willingness to chip away at protections afforded online service providers under the DMCA when the provider creates physical goods from user-generated content. This qualified immunity from monetary damages under the DMCA may be lost depending on the level of activity and involvement an online provider has in creating products with user generated content.

GRANT HEILMAN AND PANORAMIC IMAGES• AWARDED DAMAGES FOR COPYRIGHT INFRINGEMENT CLAIMS AGAINST TEXTBOOK PUBLISHERS

In two recent jury trials, both Grant Heilman Photography Inc. (Grant Heilman) and Panoramic Images were awarded copyright damages against textbook publishers resulting from the publication of images outside of the scope of the license terms.

Grant Heilman brought a copyright infringement action in Federal Court, Eastern District of Pennsylvania against the McGraw-Hill Companies. This trial was a bellwether trial, meaning that the trial was limited to a representative sample of the many images that were alleged to be used outside the scope of the license, to give the parties a feel of how a jury would decide the issues on the other images. The jury was asked to determine a number of issues and all were answered in Grant Heilman’s favor. One issued involved the validity of Grant Heilman’s copyright registrations in some of the images that were being contested by the publisher. The jury did not agree that the publisher had presented evidence that the copyright registrations were invalid, upholding Grant Heilman’s registration practices.

In this sample infringement case, the copyright registrations were not filed before the infringing use, consequently Grant Heilman was limited to seeking actual damages, including profits and could not elect statutory damages. Nonetheless Grant Heilman was awarded a total of $127, 087, which included profits and actual damages.

Importantly, the jury rejected the publisher’s theory that Grant Heilman should have known about “storm warnings” (general knowledge of excessive use of images by textbook publishers) or should have been on notice that the publisher was not complying with its license agreements prior to 2009. This is significant because if the publisher was successful in claiming that Graham Heilman should’ve known of “storm warnings”, then the statute of limitations may have reduced the number of years that damages could be awarded. Because the jury found in Grant Heilman’s favor, it was not precluded from bringing claims for infringements prior to April 18, 2009. Presumably, the parties will either have a trial or settle the remaining claims that were not tried in this bellwether trial.

Panoramic Images brought a similar action against John Wiley & Sons, Inc. in Federal District Court of the Northern District of Illinois. This trial involved damages for six images in excessive of license terms. As in the Grant Heilman case, there was an issue as to whether Panoramic should have known that the publisher was not complying with its license agreements before it filed its claim, which would have limited the amount of years Panoramic could recover damages. The jury did not find that Panoramic should have known that its licenses were not complied with and did not cut off damages before December 17, 2009. In this instance, 5 of the 6 pictures were registered before the infringement, permitting the jury to award statutory damages.

The jury found that Wiley’s infringement of the 5 photographs was willful and for 4 of the images the jury awarded damages of $62,500 each, for a total of $250,000.

For one cover image, the excess use was substantial, and the jury awarded the maximum statutory damages of $150,000. For another individual image that Panoramic Images had not registere3d before the use, the jury awarded actual damages of $500 and profits of $3000. In total the jury award for all six images was $403,500.

Both Grant Heilman and Panoramic Images were represented by the firm of Harmon & Seidman.

REMOVAL OF BING WIDGET SAVES MICROSOFT FROM PRELIMINARY INJUNCTION

by Nancy Wolff, DMLA Counsel  

Getty Images (US), Inc. v. Microsoft Corp., No. 14CV7114 DLC, 2014 WL 5285697 (S.D.N.Y. Oct. 16, 2014)

In late August Microsoft launched a test version of a new service called Bing Image Widget which allows website publishers to embed a panel on their website that displays images supplied by Microsoft’s Bing Image Search that would enhance the user’s website experience.  The Bing Image Widget search prompted an automatic tool that “crawled” the Internet for any content that Microsoft could find, whether the crawled site had permission to use the images. The images were displayed in collage mode comprised of small, thumbnail-sized images or slideshow mode displaying full-sized images that rotated every few seconds. The thumbnail images were copied and indexed and then stored in a Thumbnail Library on Microsoft’s servers including code that displayed the full-sized images by an in-line link to an originating website’s server.

As mentioned n a prior post, http://blog.pacaoffice.org/?p=2242, many PACA members, as well as other associations (Specifically ASMP and CEPIC) were concerned that this widget could be used to replace legitimate licensing and contacted Microsoft to discuss the widget and industry concerns. Prior to any response  to the Associations from  Microsoft, Getty Images, who had earlier this year released an embed tool to promote “responsible image sharing”   http://infocus.gettyimages.com/post/new-embed-lets-you-share-tens-of-millions-of-images#.VFfluTTF8YZ]  filed a motion seeking preliminary injunction against Microsoft. A motion for preliminary injunction seeks to compel the allegedly infringing party to immediately cease use, and is granted where a party faces “irreparable harm” by the continued use. That same day, Microsoft immediately disabled the Widget and a few days later communicated to Getty Images that Microsoft was willing to “commit to not re-launching the Widget during the pendency of the lawsuit except as redesigned to display public domain or licensed images.” [Although, it wasn’t until almost two weeks later that Microsoft disabled the Widget for those that were still able to use the code generated prior to Microsoft’s disabling of the Widget.]

Due to Microsoft’s “prompt disabling” of the Widget and their assurances that it will not re-launch the service until the pending copyright infringement action is decided, the Southern District of New York denied Getty’s motion seeking preliminary injunction against Microsoft. It is important to note that this decision does not mean that Getty Images’ copyright infringement action against Microsoft is dismissed. Rather, the Court held that Getty Images did not meet the requirements for obtaining a preliminary injunction because Microsoft had already discontinued use of the Widget on its own.

PACA/Digital Media Licensing and ASMP did eventually have a conversation with Microsoft where it stated that due to ongoing litigation, it could not discuss the case, but that the Bing widget was disabled and there was no intention of launching the current Bing Widget in the future.  We offered to be available to discuss image embedding and search and in particular anything that would not encourage licensing of images from the original source. We discussed the  industry’s effort to increase image information through the PLUS registry and encouraged Microsoft to learn more about the PLUS coalition.

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”   See the entire article here

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”    Apparently Soglin attended the very first annual block party as a student at the University of Wisconsin in 1969, but tried to stop the event when he took office.  The t-shirts were not a commercial success, only 54 t-shirts were sold. The photo and the t-shirt art are compared below.

Untitled

 

 

 

 

 

 

Kienitz, offended by the t-shirt design, brought a copyright infringement claim against Sconnie Nation and its distributor based on the derivative use of his image on the t-shirt. The court dismissed the action on a summary judgment motion, finding the use to be a fair use and not infringing. On appeal, the photographer did not fare any better as the 7th Circuit also found the use to be a fair use.

While the 7th Circuit analyzed fair use under the requisite four factor test proscribed in Section 107 of the Copyright Act, it took this opportunity to criticize the reasoning of the district court for relying on the Second Circuit’s approach in Cariou v. Prince, which focuses primarily on whether the’ use of the visual image is “transformative” in determining fair use. A work is considered transformative if it alters the original with new expression, meaning or message.  While the appellate court agreed that the modification of the photograph as depicted in the T-shirt was a fair use, it advocated for sticking to the factors identified in the statute rather than relying on a term that does not appear anywhere in the Copyright Act . The four the factors are (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

This court focused more heavily on the fourth factor, and found that there was little to no effect of the use of the photograph on the market – the t-shirts were not a substitute for the original photograph, and Kienitz did not raise the possibility of licensing the photograph for apparel or any other use.  The third factor – the amount and substantiality of the use – was the only other fair use factor that had any “bite” in this case.  The court found that the only elements of the original photograph that remained after the modification was Soglin’s smile and the outline of his face, which cannot be copyrighted.  Turning to the two remaining statutory factors, the court acknowledged defendants’ small profits from the sales but stated that the design was political commentary.  Finally, in looking at the nature of the copyrighted work, the court stressed the absence of any argument that Sconnie Nation’s use reduced the value or demand of the original photograph.

The Court of Appeals noted that Sconnie Nation’s use of Kienitz’s photograph was not necessary in order to make the t-shirt and that Kienitz’s photography business may suffer in the long run – people may not want to hire Kienitz for fear the photos may be used against them, but these issues were not nearly enough to overcome the other fair use factors.

This case is most notable for its criticism of Cariou v. Prince.  In Cariou v. Prince, the Second Circuit expanded the meaning and importance of transformative use, holding that there is no requirement that a new work comment on or critically refer back to the original work or its author.  The court was explicitly “skeptical” of this approach, concerned that it may replace the list of factors and override protection of derivative works.

 

GOOGLE, PHOTOGRAPHERS SETTLE LITIGATION OVER BOOKS

Agreement ends four years of litigation over the inclusion of visual works in Google Books 
 

NEW YORK, NY – September 5, 2014 – A group of photographers, visual artists and affiliated associations have reached a settlement with Google in a lawsuit over copyrighted material in Google Books. The parties are pleased to have reached a settlement that benefits everyone and includes funding for the PLUS Coalition, a non-profit organization dedicated to helping rightsholders and users communicate clearly and efficiently about rights in works.  Further terms of the agreement are confidential.

 

The agreement resolves a copyright infringement lawsuit filed against Google in April, 2010, bringing to an end more than four years of litigation. It does not involve any admission of liability by Google. As the settlement is between the parties to the litigation, the court is not required to approve its terms.  This settlement does not affect Google’s current litigation with the Authors Guild or otherwise address the underlying questions in that suit.

 

The plaintiffs in the case are rightsholder associations and individual visual artists. The associational plaintiffs are The American Society of Media Photographers, Inc., Graphic Artists Guild, PACA (Digital Media Licensing Association)., North American Nature Photography Association, Professional Photographers of America, National Press Photographers Association, and American Photographic Artists. The individual plaintiffs are Leif Skoogfors, Al Satterwhite, Morton Beebe, Ed Kashi, John Schmelzer, Simms Taback and Gail Kuenstler Taback Living Trust, Leland Bobbé, John Francis Ficara, and David W. Moser.

 

The case is American Society of Media Photographers, Inc. et al. v. Google Inc., Case No. 10-CV-02977 (DC) pending in the United States District Court for the Southern District of New York.

 

About Google Inc. and Associational Parties

 

Google is a global technology leader focused on improving the ways people connect with information. Google’s innovations in web search and advertising have made its website a top Internet property and its brand one of the most recognized in the world.

 

Founded in 1944, The American Society of Media Photographers (ASMP) is the premier trade association for the world’s most respected photographers.

 

The Graphic Artists Guild (GAG) is a national union of graphic artists dedicated to promoting and protecting the social, economic and professional interests of its members and for all graphic artists including, animators, cartoonists, designers, illustrators, and digital artists.

 

PACA (Digital Media Licensing Association) is a trade association established in 1951 whose members include more than 80 companies representing the world of digital content licensing.

 

NANPA, the North American Nature Photography Association, is the first and premiere association in North America committed solely to serving the field of nature photography.

 

Professional Photographers of America (PPA) represents more than 17,000 photographers and photographic artists from dozens of specialty areas including portrait, wedding, commercial, advertising and art.

 

Founded in 1946 the National Press Photographers Association (NPPA) is the “voice of visual journalists” promoting and defending the rights of photographers and journalists, including freedom of the press in all its forms.

 

The American Photographic Artists (APA) is a leading national organization run by and for professional photographers.

 

Google is a trademark of Google Inc. All other company and product names may be trademarks of the respective companies with which they are associated.

BING’S NEW WIDGET

Many of our members are as concerned as we are about the recent Bing Image Widget that launched August 22, 2014. This tool is marketed to internet users and encourages website publishers to enhance their websites and embed a panel of images on their website that are selected from using the Bing Image Search.  There is no indication from Bing that these images may need to be licensed for use.

As a preliminary step, PACA , together with ASMP and CEPIC reached out to our contact at Microsoft to express our fear that the Bing Image Widget will have an serious impact on the image licensing industry and lead potential image users to believe that the use of images are available for free. We requested a meeting during the PACA conference October 19-21.

As Associations, without ownership of copyrights, we can advocate on behalf of the industry but based on recent court decisions, would have jurisdictional challenges in bringing a copyright claim.

We learned today that Getty Images, US Inc. brought a copyright infringement action against Microsoft in the Southern District of New York seeking to enjoin Microsoft from the use of its Bing Image Widget Service and for statutory damages based on its alleged massive copyright infringement of Getty Images many registered works. A copy of the Complaint is here.

There have been several articles written about the Bing Image Widget, you can see one here.

We will keep you apprised of any new developments  and will continue to support all efforts to encourage the licensing of images and the education of users as to copyright.

Hawaii-based Tiki Shark Art Settles Copyright Infringement Case with Cafe Press

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.

 

 

 

 

Grant Heilman Copyright Claims against MCGraw Hill May Proceed Subject to Further Evidence

 by Nancy Wolff, PACA Counsel

Grant Heilman Photography, Inc. v. McGraw-Hill Company

Prior to a trial over 2395 alleged instances of copyright infringement against text book publisher McGraw Hill Company, Grant Heilman Photography (GHP) brought a motion for partial summary judgment for copyright infringement on 57 of the images and to seek dismissal of a number of the publisher’s affirmative defenses. On June 26th the federal Court for the Easter District Court of Pennsylvania denied the motion for partial summary judgment without prejudice and allowed GHP copyright claims on those images to proceed based on issues of fact that could be resolved with additional evidence.  Read the whole story here.