Monday, October 17, 2011

Stay On Track

By Samuel Lewis Published in The Business of Photography
Stay On Track
One of the inevitable realities that any business involved in image creation and/or licensing will encounter is discovering instances where the business' copyrights have been infringed. It's important to keep business goals in mind when confronted with any sort of legal issue, and infringement is no exception.

Increasingly, I find that people have difficulty keeping business goals in mind. Recently, when discussing potential courses of action for addressing an instance of infringement, I was confronted with the question: "What's the point to copyright law if I can't punish those who copy my work?" I would have been stunned by the question if not for the fact that I'm faced with more or less the same question on a regular basis. The answer does little to ameliorate the inquirer's anger, however. Invariably, those who feel violated want the law to punish the infringer; they want the infringer to be made to do more than compensate the owner for the unauthorized use, but rather, that the infringer be made to suffer. However, it's important to realize that this sort of thinking is counterproductive from a business perspective.

Upon discovering an instance of infringement, the chief goal of any business should be to end the infringing conduct and, if possible, put a mechanism in place for punishing any repeat violations in the future. If the business is able to recover any money to help compensate or offset the value of the use, or to offset the attorney's fees involved, the business should consider itself ahead of the game. Although it may be a vast oversimplification, attorney's fees incurred in the course of defending a business from adverse claims and pursuing actions to collect money for the business are generally deductible as business expenses—if nothing else, it's worth a quick call to your tax advisor to determine if you can claim the cost of pursuing infringement matters as deductible business expenses.

"This Is Not Personal. It's Strictly Business."

Earlier this year, Los Angeles-based photographer David LaChapelle filed suit against Rihanna, Black Dog Films and Island Def Jam Music Group. In the complaint filed in U.S. District Court in New York, LaChapelle contends that Rihanna's music video, S&M, was copied from his images. In addition to an injunction, LaChapelle—whose complaint alleges that he charges up to $1 million for directing/producing a music video—seeks not less than $1 million in damages for copyright infringement. In a statement that his assistant, Hugo Martinez, read for National Public Radio, LaChapelle said, "This is not personal. It's strictly business."

The case isn't without its potential problems, however, not the least being that LaChapelle's claims are predicated upon scenes in the music video that he contends were copied from eight of his images. Attorneys for Rihanna and the other defendants have already filed papers attacking the heart of LaChapelle's claims, and arguing that the eight images, "by their nature, present posed images frozen in place; the angle, lighting and subject of each image is forever static and unchanging. In contrast, the [S&M music video] is a motion picture set to music—moving at a frantic pace, with the camera and subjects constantly in motion, and the lighting, focus and angle of the shots continually changing. The only thing in common between [LaChapelle's eight images] and the [S&M music video] is that they invoke common concepts and types of props associated with S&M practices (i.e., leather- or latex-clad dominatrices, whips, people in restraints, men on leashes, and the like) but which are given dissimilar expression."

Undoubtedly, one of the recurring themes in the LaChapelle case will be the distinction between the expression of ideas and the ideas themselves, often referred to as the idea-expression dichotomy. Copyright law protects only the expression of ideas, but not the ideas underlying the expression. As a result, one generally can copy the ideas without infringing copyright.

The defendants have already presented the court with numerous examples of cases in which the ideas embodied in a photo were used to create other works without being infringing. One of the cases involves an image created by New York-based photographer Bill Diodato depicting "the bottom portion of [a bathroom] stall and a woman's feet in pink shoes decorated with green, yellow and purple leaves, with thin, pink straps crisscrossing up her legs. The woman's lime green underpants are taut just above her ankles. A light brown handbag rests on the floor next to the woman's left foot, and a white toilet is visible in the background. The woman's feet are on the floor, her heels raised at a stiff angle by the heels of her shoes. The woman's ankles are turned in, with her toes painted red." Diodato submitted the image to Kate Spade in January 2003. Within a few months, Kate Spade hired photographer Jessica Craig-Martin to create an image similar to Diodato's, with all of the same major elements except for the underwear. The image was featured in the ad campaign that Kate Spade launched in November 2003. Diodato sued for copyright infringement.

The judge in Diodato's case noted, "Although the idea of using a woman sitting on a toilet to showcase stylish shoes and other fashion accessories is a clever one, it is an idea that has been used often in popular culture." As a result, elements commonly included in other related images were found to be unprotectable under the scènes à faire doctrine, a doctrine that precludes people from claiming exclusive rights to any elements that would be considered standard or stock in the treatment of a given idea. With regard to product photography, at least one court has explained that application of the scènes à faire doctrine is warranted "because of the narrow range of artistic expression available in the context of a commercial product shot." Ultimately, Diodato's claim failed because most of the elements of his image were deemed to be unprotectable ideas under the scènes à faire doctrine.

Cases like LaChapelle's aren't without risks, and may potentially have long-term impact. If successful, LaChapelle's claim may expand the scope of protection for images; if unsuccessful, the resulting opinion may limit photographers' rights. Indeed, the defendants have presented the court with authority suggesting that "[p]rotectable elements [of photographs] include 'posing the subjects, lighting, angle and evoking certain desired expressions,' as well as the selection of the film and camera." If the court adopts this view, it may help limit photographers' rights.

Given the risk associated with cases like LaChapelle's, the business motivation behind the suit may not be readily apparent. In light of LaChapelle's "strictly business" statement, it's fair to ask how the suit hopes to advance LaChapelle's business. In this regard, marketing considerations almost certainly factor into the equation. As New York University professor Jason King has suggested, "LaChapelle may just be reminding the world that his pictures exist, and that he came up with them first." Thus, the publicity LaChapelle receives from the case may help justify the expense of the case.

No Pot Of Gold At The End Of The Rainbow

Cases like LaChapelle's are few and far between. Most copyright infringement cases don't involve million-dollar claims, deep-pocket defendants, celebrities and the concomitant attention and national media coverage. From a business standpoint, most photographers may find it difficult to justify the expense associated with the average claim of infringement, much less a high-profile case like this one.

Portland, Oregon-based photographer Michael Schmitt discovered that there was no pot of gold at the end of the rainbow when pursuing a claim of copyright infringement. One of Schmitt's clients, InSport, which had paid for and received a limited license to use his images, was acquired by a successor company. However, InSport's successor continued using Schmitt's images after expiration of the license.

Schmitt promptly notified the company that it was infringing his copyrights and sent a proposed invoice, which, if paid, would have authorized the continued use of the images. The company didn't pay the invoice, and instead, ceased using the images in late January 2009. Schmitt sued for copyright infringement.

Even though the company didn't defend itself in the action, the court found that there was no question that the company had infringed Schmitt's copyrights. With there being no question regarding infringement, the key question became the appropriate amount of damages for the four images used. Schmitt, who timely registered the copyrights for his images, requested statutory damages of $10,000 to $15,000 per image, which included enhanced damages for willful infringement. However, the court considered Schmitt's prior licensing of the images, as well as communications that Schmitt had sent when trying to be generous but nonetheless attempting to collect something for the use of his images. The court also considered the stock pricing for images and pricing information from fotoQuote. Taking each of these items into consideration, the court awarded Schmitt $490 per image for the roughly two and a half months of usage after the license expired, and multiplied the figure by five to factor in willful infringement. Ultimately, the court awarded total damages of $9,800.

Having obtained a judgment, even if for an amount far less than the $40,000 to $60,000 originally sought, Schmitt's odyssey was not yet over. He still had to demand that the company pay the judgment, and hope that it would pay. The company ultimately paid, but the experience left Schmitt soured. Says Schmitt, "I have been through this with a clear case of willful infringement (from a big company) on copyrighted images [registered] prior to infringement, and I can say it was the biggest emotional drain of my life, distraction from my business, and financially not worth it." Now, Schmitt tells others to keep their priorities straight. The priority, says Schmitt, "should be to stop the infringement, and if you can, settle for a fee out of court. Stay away from a lawsuit."

Sometimes You Have To Defend Your Business

Even if you stick to your business priorities, and succeed at keeping the emotions at bay, there are times when you may find yourself with no good alternative to litigation. Such was the case with New Jersey-based photographer Peter Murphy after his lawyer sent a letter to a radio station accusing it of copyright infringement.

Murphy photographed a pair of radio shock jocks for a feature article in New Jersey Monthly magazine. When unauthorized copies of Murphy's photograph of the shock jocks appeared on the radio station's website, Murphy's attorney sent a letter to the station. Although the radio station removed the photo from its website, shortly thereafter, the shock jocks verbally attacked Murphy on the air. According to Murphy's complaint, listeners heard the shock jocks "impugn Murphy's personal integrity and repeatedly characterize him in a factual way as 'a man not to be trusted' in a business environment; a man who 'will sue you' if you have business dealings with him and, in substance, as a man with whom 'a person should avoid doing business.'" The radio station destroyed its recording of the show shortly after it aired.

Left with no alternative but to defend his business reputation, Murphy sued the radio station and shock jocks for copyright infringement and defamation. The station and shock jocks asserted fair use as justification for their use of Murphy's photograph, and the trial court agreed. The trial court also precluded Murphy from obtaining discovery on his defamation claim. Murphy appealed the decision, and the U.S. Third Circuit Court of Appeals recently overturned the trial court's decision in its entirety, breathing new life into Murphy's claims against the radio station and shock jocks.

With regard to the fair-use issue, the Third Circuit rejected the argument that the radio station's use of Murphy's photograph was fair use because it was "news reporting." In what likely will be a significant opinion for editorial photographers, the Third Circuit held that "[i]f it were possible to reproduce [Murphy's] unaltered work, as a whole, without compensation under the guise of news reportage—a 'traditional, reasonable, or likely-to-be-developed market' for professional photographers—it would surely have a 'substantially adverse impact' on [Murphy's] ability to license his photographs." After a lengthy analysis of the fair-use factors, the Third Circuit held that all factors weighed in Murphy's favor, effectively precluding the radio station and shock jocks from asserting fair use when the trial court takes up the case again.

Invest In The Potential

Even if you make it a priority to avoid lawsuits, you should still take steps to put yourself in a position to present a credible threat to would-be infringers. The best way is to timely register your copyrights.

Sadly, when discussing instances of infringement, one of the first questions that I'll ask is whether the copyrights were timely registered. More often than not, this is when I find out that the copyright owner didn't bother to register the copyrights, and when I begin to hear the litany of excuses for failing to register.

It's easy to make excuses, and the ones I've heard more or less run the gamut. One of the more common excuses is that registration is too expensive, and that the owner couldn't justify the $35 filing fee. The same people who use this excuse are usually at a loss when asked how the excuse will sound if they tell a judge or jury that they weren't willing to invest $35 toward registration. Imagine how that same message will resonate when trying to explain that the images infringed are of significant value. From a business perspective, the registration cost should be seen as an investment, and the reality is that the $35 filing fee is a minor investment.

Even if you're not going to pursue litigation, a timely registration can prove invaluable because of the potential penalties that an infringer will face. While there's no guarantee that a judge or jury will award the maximum statutory award (either for ordinary or willful infringement)—as demonstrated by Schmitt's case—and no guarantee that attorney's fees will be awarded, the mere threat of those sorts of awards are generally enough to encourage a business to cease infringing, and more often than not, also pay a reasonable settlement. I've encountered numerous instances where a reasonable demand, accompanied by a timely registration, were sufficient to settle claims without protracted and costly litigation. Sadly, I've also seen businesses be penny-wise and pound-foolish.

Make the relatively minimal investment so that your business will be in the best possible position should it need to address an instance of infringement. But, above all, establish reasonable business priorities, and be sure to avoid emotional decisions. Doing so will permit you to stay focused on what really matters.

Samuel Lewis is a Board Certified Intellectual Property law specialist and partner at Feldman Gale, P.A. in Miami, Fla., and a professional photographer who has covered sporting events for more than a quarter century. He can be reached at This email address is being protected from spambots. You need JavaScript enabled to view it. or This email address is being protected from spambots. You need JavaScript enabled to view it..

Foreshadowing The Future Of LaChapelle's Case?

On July 20, 2011, David LaChapelle's case against Rihanna and others involved with her S&M music video suffered something of a setback when U.S. District Judge Shira Scheindlin issued a 29-page opinion dismissing two of LaChapelle's claims. The judge dismissed LaChapelle's claim for trade dress infringement in which he claimed damages between $1 million and $3 million, and his claim for unfair competition in which he claimed damages of $1 million together with punitive damages. Fortunately, for LaChapelle, the judge permitted LaChapelle to proceed on his copyright infringement claim.

Judge Scheindlin also refused to rule on the fair-use defense asserted by Rihanna and the other defendants, even going so far as to characterize the central fair-use argument as being "misguided." Having rejected the fair-use defense, the judge ruled that LaChapelle's amended complaint "alleged a plausible claim for copyright infringement," which is all that it needed to do in order to avoid dismissal at that early stage in the case.

The judge's decision may also foreshadow how some of the copyright issues may play out as the case proceeds. Recognizing limitations in what a copyright protects, such as the limitations that precluded Bill Diodato from prevailing on his copyright-infringement claim against Kate Spade, the judge went so far as to state that "[e]lements of leather- or latex-clad women, whips, ball gags, people in restraints, men on leashes, and other aggressive, sexually-charged motifs common to both [the S&M music video] and [LaChapelle's photographs] are not, as subjects, protectable elements." Nonetheless, the judge also recognized that "[a] photograph may be original in the rendition of a subject," with the originality being not "what is depicted, but rather how it is depicted. Originality in rendition may reside in the photographer's selection of lighting, shade, lens, angle, depth of field, composition, and other choices, such as manipulation of color balance, saturation, or contrast, that have an aesthetic effect on the final work." According to the decision, originality may also exist "when the photographer orchestrates the situation that is photographed, rather than simply photographing a ready-made scene or thing."

Given the potential long-term impact a case like LaChapelle's may have, it's worth keeping an eye on the case as it develops.
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