Tag Archives: license

CAN ANYONE USE PUBLIC DOMAIN IMAGES?

by Nancy Wolff, DMLA Counsel

Answer: YES, there are no restrictions on any use of public domain images, including making them available to users for a fee.

Since Carol Highsmith filed a claim in federal court last week against several DMLA members under Section 1202 of the Copyright Act based on images licensed by such members that she provided to the Library of Congress LOC and were displayed on the LOC website as “unrestricted”, I have received many inquiries about the meaning of “what is public domain” and whether can you license a digital file or sell a work of art that is in the public domain.

First, when any work is in the public domain, anyone can use it for any purpose. Works subject to copyright can be in the public domain because copyright expired or is forfeited; the work is a US government work under US copyright law or the work is dedicated to the public (there is now even a Creative Commons license to dedicate a work to the public).

The purpose of limits on copyright is that the public domain benefits the public and serves the public good. Once a work is in the public domain, anyone can make a productive use of it, including commercializing the work. This applies to all works that can be under copyright, such as images, books and music. You can still buy a book of Shakespeare’s plays published by numerous publishers. Or you can go to the library and painstakingly photocopy each page.  You have a choice. The same is true with images.

Many DMLA members specialize in or include archival material in their image collections and make theses images available to publishers and other users and charge a fee. There is nothing improper or illegal about that. These archives or the collectors have made substantial investments in scanning, enhancing, keywording and making their copy of the public domain work easily searchable and usable. So a publisher can find a copy of an image from another source, but it may be low quality, it may only be in print form and it may not be easy to locate and use. With tight publishing deadlines, having a source of an image that is readily available and searchable adds value and is a benefit to users.

Nor is it improper to call the fee charged to use a public domain image a “license” A license merely means permission to use “my copy”. You can have a license that applies to the access and use of a copy, or it can apply to any sort of IP license such as copyright, trademark or patent. But the term only refers to permission and it is not limited to an IP right.  So archives and image libraries that have some historical out of copyright works can license those works to a user for a specific purpose because those are the contract terms a user agrees to.

More on Section 1202 later.  Section 1202 relates to the removal or alteration to defined copyright management information with the intent to cause or facilitate an infringement. A recent case was just decided under this section of the Copyright Act and we published a blog here.

 

Sculptor granted royalties in Gaylord v. United States

by Nancy Wolff, PACA Counsel

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In the most recent ruling in Gaylord v. United States, the United States Court of Federal Claims determined the proper amount of damages due Frank Gaylord, (“Gaylord”) the sculptor who created “The Column” portion of the Korean War Memorial, from the United States Postal Service (USPS) for its unauthorized depiction of “The Column” on a commemorative stamp issued in 2003. [This case has been the subject of much litigation, as the District Court found that the stamp was a fair use of the underlying sculpture; the decision was then reversed on appeal and the stamp use found to be infringing of the Memorial; the initial amount of damages was capped at $5000, or reasonable license fee; this determination was reversed and set back to the lower court to determine the appropriate amount of actual damages under the Copyright Act. Statutory damages were not available in this case.]

Specifically, the United States Court of Appeals for the Federal Circuit vacated the award of $5,000, as it failed to adequately calculate the fair market value of a hypothetical license because it only considered what the USPS had previously paid for similar licenses. To properly calculate the fair market value, it directed that the Claims Court examine whether different license fees were appropriate for three categories of infringing goods identified in the 2010 opinion: (a) stamps used to send mail, (b) unused stamps purchased by collectors, and (c) commercial merchandise featuring an image of the stamp.

The Claims Court determined that Gaylord was entitled to total compensation of $684,844.94, concluding that a 10% running royalty rate “accurately captures the fair market value of a license to Gaylord’s copyright.” The court based its calculation according to the likely terms assuming Gaylord and the USPS had negotiated a price for a license on July 27, 2003—the date on which the stamp was released.

Turning to the three categories of infringing goods suggested by the Federal Circuit, the court first established that no damages were awarded for stamps used to send mail because of the difficulty involved in determining whether consumers purchased the commemorative stamps because it featured an image of “The Column” or simply because they needed stamps.

Next, the Court determined that Gaylord was entitled to a 10% running royalty on revenues collected by the USPS for unused stamps purchased by stamp collectors. The court arrived at this figure because Gaylord demonstrated at trial that he collected a 10% royalty for past licenses of “The Column” for various collectibles. The court further noted that calculation of Gaylord’s damage award should consider the fact that the USPS had “strong financial incentive to enter into a license with Gaylord,” noting that commemorative stamps sold to collectors “represents nearly pure profit for the USPS.” The court referred to a survey produced by the USPS that showed the Korean War Memorial stamp was in the “top 25% of its class of a 37-cent commemorative stamp with respect to projected retention value.” The court also stated that the USPS decided to print 86 million Korean War Memorial stamps, when the average print-run for commemorative stamps is 50-60 million stamps. Applying the 10% royalty rate to the USPS’s profits of $5.4 million, the court determined that Gaylord was entitled to $540,000.

The court also awarded Gaylord a 10% running royalty rate applied to the $330,919.49 the USPS received on merchandise featuring images of the Korean War Memorial stamp, determining that he was entitled to $33,092.

Finally, the court awarded Gaylord an additional prejudgment interest of $111,752.94 (based on a delay compensation interest factor of 19.5%), which was to be added to any damages assessed by the court.

In sum, Gaylord’s combined damages—which included $540,000 from USPS profits on unused stamps, $33,092 on USPS profits on merchandise, as well as a prejudgment interest of $111,752.94—totaled $684,844.94. The calculation was based on what the price of a license would have been had the USPS negotiated with Gaylord for use of “The Column,” a 10% running royalty rate, applied to unsent stamps purchased by collectors and on merchandise sold containing the image.

This case is interesting as the court rejected as a measure of damages the past licensing model used by USPS- a flat license fee- for material that was equivalent to merchandise. A royalty model is more customary when licensing artwork for products such as puzzle, posters and paper goods and was consistent with the artist’s licensing model. In other words, the court did not limit damages to the way in which the infringing party previously licensed work but looked to how the artist would have licensed the artwork if he had negotiated with USPS in 2003.

[The stamp was initially issued a decade ago, and as a side note it’s interesting to see how many millions of stamps were published. With the decrease in regular mail, it is unlikely that any artist would see royalties this high on the use of a contemporary stamp absent extreme popularity of the subject.]