According to the Greek philosopher Plato, “No law or ordinance is mightier than understanding.” Unfortunately, gaining a working understanding of copyright law is far from being a trivial task, in part because copyright law—like any other area of law—is subject to interpretation and reinterpretation by the courts. Even today, there are areas of copyright law that are in flux as the courts and scholars come to grips with changes in technology. However, once armed with a knowledge of some of the basics, photographers may be able to avoid the related pitfalls.
What Copyright Does And Doesn’t Protect
Under current U.S. copyright law, original works of authorship are protected from the moment that the works have been fixed in a tangible medium of expression. When applied to photographers, this means that copyright protection extends to photographs from the moment they have been stored on a memory card or tethered hard drive.
While copyright law will protect the images themselves, that protection doesn’t extend to any of the ideas conveyed in the photographs (and in certain instances, protection won’t extend to the subject matter depicted in the photographs). At first blush, this may seem contrary to the basic notion of protecting an image, and may even leave you wondering why you should concern yourself with copyright law. However, when you consider that copyright law gives the owner of a copyrighted work—for purposes of this discussion, a photograph—certain exclusive rights, the rationale may become clear. If the exclusive rights under copyright law extended to the very ideas conveyed in the image, a photographer could obtain exclusive rights not just to an image, but also to the subject matter depicted in the photograph.
One of the unique aspects of copyright law is that it recognizes and confers upon copyright owners not just one exclusive right, but a series of exclusive rights. U.S. copyright law currently enumerates six different rights, four of which are directly relevant to photographers. These include:
• the right to make copies of the image;
• the right to distribute copies of the image publicly by various means (generally, through sales or licensing);
• the right to publicly display the image;
• the right to create derivative works based upon the image.
Not only does copyright law confer these rights, but it also allows a copyright owner to deal with these rights separately. A copyright owner can sell or license these rights individually, even if the result is that four different people end up owning a certain right to the image.
For example, a copyright owner could decide to grant a local gallery the right to publicly display the image, but retain all other rights. As a result, the gallery would not have the right to make copies of the image or distribute copies publicly.
The one right that often can be the most difficult to understand, at least from the point of view of a photographer or visual artist, is the right to create derivative works. U.S. copyright law defines a derivative work as one that may be based upon one or more preexisting works, and includes in-stances where the existing work has been “recast, transformed, or adapted.” Even editorial revisions or other modifications to an existing image may qualify as a derivative work. Derivative works are further complicated by the fact that the owner of a derivative work only owns what was added to the original.
For certain types of photographers, the issue of derivative works can be particularly troublesome. Chicago, Ill., product photographer Daniel Schrock discovered this some time after he was hired to photograph the “Thomas” brand of children’s toys. Under the arrangement, Schrock’s clients were permitted to use the photographs for two years. When Schrock discovered that his clients were continuing to use his photographs after two years, he registered the copyright for the images and sued for infringement. The trial court determined that Schrock’s photographs were derivative works of the products, which were also copyrighted. The court also determined that while Schrock’s clients had consented to his creation of the derivative works—the photographs of the products—they didn’t consent to Schrock registering the copyright for the photographs. Judgment was entered in favor of the clients and Schrock appealed (as of the writing of this article, the appeal was fully briefed and awaiting a decision from the U.S. Seventh Circuit Court of Appeals).
The issue of unauthorized derivative works has ap-peared in a lawsuit pending in New York, brought by photographer Patrick Cariou against artist Richard Prince. Some may remember Prince as the artist The New York Times dubbed a pioneer of “appropriation art,” who photographed other photographers’ images and then exhibited “his” work in galleries, including an exhibit at the Guggenheim in late 2007. At the heart of the case is Cariou’s claim that Prince made unauthorized derivative works—a series of paintings incorporating copies of the photographs—of Cariou’s photographs appearing in the book Yes Rasta.
The issue of unauthorized derivative works also is involved in the lawsuit between Shepard Fairey and The Associated Press regarding Fairey’s Barack Obama HOPE poster. According to the allegations in the AP’s counterclaim, Fairey, who specializes in “‘referencing’ preexisting works,” created an unauthorized derivative work when he created the HOPE poster.
The flip side of many of these cases involves a doctrine called “fair use,” which is now part of the Copyright Act. Fair use is perhaps the most widely known and controversial limitation on copyrights (and was discussed in the January/February issue of DPP).
Once these cases have worked their way through the legal system, we may have a better idea of precisely how courts will view the concept of derivative works and, more importantly, whether a photograph of an existing object is a transformation or an entirely new work. In the meantime, photographers need to be aware that there’s something of a regional split, with courts in California and Illinois treating derivative works in the form of photographs differently than do courts in New York and Florida.
In addition to these rights, there’s a relatively recent addition to the U.S. Copyright Act, the Visual Artists Rights Act of 1990, which adds the rights of attribution and integrity. This permits a photographer who creates an image—even in instances where the photographer may not own the copyright to the image—to be identified as the person who created the image. The Act also allows a photographer to prevent the use of his or her name in connection with the image in the event the image has been modified or distorted in such a way that the photographer believes would negatively impact his or her reputation.
Finally, these rights have tremendous longevity. The current term of copyright protection under the U.S. copyright law is 70 years after the author’s death. For works made for hire, the current term is the shorter of 120 years from the date of creation or 95 years from first publication. Given the length of time that copyrights exist—well beyond our lifetime—it’s easy to und
erstand why it’s so important to register and perfect those rights so that we, and our heirs, can enjoy the benefits of those rights.
Registration Is Essential
One of the few concepts that many photographers in the U.S. understand about copyright law is the importance of registration, in part because of yeoman efforts by various photographic organizations to educate their membership as to the importance and value of copyrights. However, there’s still some confusion about precisely why registration is important.
For starters, registration is a prerequisite if you want to enforce your copyrights. Under the Copyright Act, a copyright owner must obtain a registration before an infringement action may be maintained in the courts. Some federal courts—which are the only place where copyright infringement actions may be maintained—have even explained this as a jurisdictional prerequisite. Even some lawyers have ignored this requirement, only to find their clients’ infringement actions dismissed.
In an effort to encourage artists and authors to timely register their copyrights, Congress included something of an incentive in the Copyright Act: Owners whose works are timely registered will be entitled to recover statu-tory damages and attorney’s fees. In many cases, it can be difficult, if not impossible, to determine the actual damages associated with infringement of a photograph. The difficulty associated with ascertaining actual damages may even result in courts awarding what amounts to a reasonable royalty for infringement. Recognizing the difficulty associated with proving actual damages for copyright infringement, the Copyright Act authorizes courts to award statutory damages ranging from $750 to $30,000 per work infringed, and where the owner proves that infringement was willful, the award of statutory damages may be increased up to a maximum of $150,000 per work. The award of attorney’s fees may also help defray the costs associated with the enforcement action.
However, given the way in which Congress drafted the relevant portion of the Copyright Act, the incentive appears as a disincentive. In other words, owners whose works aren’t registered before infringement won’t be able to recover statutory damages or attorney’s fees.
The source of the confusion, beyond the negative language used in this particular aspect of the Copyright Act, is the existence of a grace period for instances of infringement after first publication, provided that registration is made within three months of first publication. The problem, however, is that more than a few photographers have misinterpreted the grace period to mean that statutory damages and attorney’s fees will be available, provided registration is made within three months of infringement, rather than first publication. Both the language of the statute and the meaning of the term “publication” (which, according to some courts, means publication with the owner’s consent) tend to negate the possibility that infringement could qualify as the first publication.
While some photographers will, as a matter of habit, burn images to disc and register those images every three months, the better approach is to register as soon as possible after completing an assignment or project. Doing so will help ensure that any infringement takes place after registration.
Deciphering The Online “Publication” Enigma
As long as we’re talking about publication, we also should take a moment to consider what publication means under the Copyright Act, at least in the context of the online world. As shown here, whether an image is considered published or unpublished has a tremendous impact on what a photographer stands to recover when enforcing his or her copyrights.
The Copyright Act defines “publication” as the distribution of copies of a work to the public “by sale or other transfer of ownership, or by rental, lease or lending.” However, the same definition also contains a caveat that the public display of a work does not itself constitute publication. The Copyright Office’s fact sheet for photographs provides little assistance. According to the Copyright Office, “The definition of publication in the U.S. copyright law does not specifically address online transmission. The Copyright Office therefore asks applicants, who know the facts surrounding distribution of their works, to determine whether works are published.”
Some scholars have attempted to reconcile the notion of “transfer of ownership” of a copy with the caveat about public display, suggesting that the distinction is whether commercial exploitation is involved. However, this distinction may not be applicable in infringement cases, where there may be no commercial exploitation, but where copyrights are being violated nonetheless.
Other scholars have suggested that the key to determining whether a photograph is published is whether members of the public are capable of obtaining a possessory interest in copies of the photograph (stated in simple terms, this means being able to lawfully acquire a copy). The elegance of this approach rests in its simplicity. Indeed, using such an approach, it makes perfect sense that a photograph hanging on display in a gallery—where the public can’t take away a copy—isn’t published, while copies of posters displaying the same photograph, when sold to the public, would be deemed published. However, for all of its elegance, this approach falls apart when one considers how images are displayed in a web browser.
As for the copyright notice, while there’s no harm in using it improperly, there are some benefits associated with using it properly.
Considering that a copy is made merely be loading a web page into a browser, it’s no surprise that some courts have considered a work published once it’s placed on a website. Still, others have determined that since copyrightable material appearing on a website is capable of being downloaded through “right-clicking,” the material on the web page is deemed published. One court even went as far as to suggest that a website is deemed published the moment it goes live on the Internet (even before anyone had visited the website).
The unfortunate reality is that the disagreement among scholars and courts as to what constitutes “publication” when dealing with online mater-ial is unlikely to be resolved anytime soon, and Congress seems far more interested in “orphan works” (in June 2009, Sen. Orrin Hatch announced during a keynote address that he was actively working toward the passage of orphan works legislation this session) than they do clarifying whether online use of a photograph constitutes “publication” or “display.” As a result, photographers who allow their work to be used online before registering the copyright will need to be cautious when filing a copyright infringement action, and determine prior to filing whether the law of the particular district or circuit views the online use as “public
ation” or “display”; the determination may even justify the inconvenience of filing in a different jurisdiction.
There is, however, an alternative for photographers whose images may be used for advertising or promotional uses: preregistration. While the cost of preregistration alone is $100, preregistration can, under certain circumstances, preserve the photographer’s right to recover statutory damages and attorney’s fees. The other option is to take advantage of the Copyright Office’s e-filing system and work registration of the images into your workflow in such a way that the images are registered before a client has the opportunity to use the images online.
Marking And Metadata
| Another aspect of copyright law that seems to cause some confusion for photographers is the use of a copyright notice. At some point, generally without learning the reasons why, photographers start using the copyright symbol. Unfortunately, in many instances, the copyright notice is used improperly. Likewise, photographers also inevitably start using the phrase “all rights reserved” as if it were some magic incantation that, when properly intoned, would provide some additional means of protection.
At the risk of dispelling the myth regarding the phrase “all rights reserved,” the reality is that this is archaic language that really serves no useful purpose under the current law. Required originally under an international copyright treaty dating back to 1910, the phrase once was used to serve as written notice that the copyright owner intended to retain copyrights not expressly granted. The phrase “all rights reserved” became obsolete in 2000 when all of the nations that had adopted the 1910 treaty adopted a more recent treaty called the Berne Convention.
As for the copyright notice, while there’s no harm in using it improperly, there are some benefits associated with using it properly. Once upon a time, U.S. copyright law required the use of a proper copyright notice on published works. As part of the changes that were made to the Copyright Act to bring it in line with certain international copyright laws—notably, the same Berne Convention—the use of the copyright notice was made optional, which it still is for images published after 1989. However, before you decide to stop using the copyright notice, it’s important to realize that there’s a benefit to using a proper copyright notice: Where an infringer has access to a published copy with a proper copyright notice, no weight is to be given to the infringer’s assertion of a defense based on innocent infringement (except in very limited circumstances, applicable only to nonprofit educational institutions, libraries, archives and public broadcasting).
Since there’s a good reason to use a proper notice, the next step is understanding what constitutes a proper copyright notice. Under the Copyright Act, there are three key requirements, in sequence:
|The idea of placing a copyright notice where it gives “reasonable notice” can be problematic when dealing with certain types of metadata, such as the International Press Telecommunications Council Photo Metadata (IPTC) data and exchangeable image file format (EXIF) data. Although each of these types of metadata permits a photographer to embed a copyright notice in the metadata attached to a digital image, it’s unclear whether attaching a copyright notice in the metadata constitutes “reasonable notice.”
The following illustrates the problem. After covering a football game with a surprise ending last season, a friend and writer for the local newspaper approached me. It happened that the newspaper didn’t assign a photographer to shoot the game and now desperately wanted a few images. Since I had already finished editing, adding IPTC captions and transmitting images from the game, I agreed to e-mail the newspaper a few images. Almost immediately after e-mailing the images to the paper’s editor, I received an e-mail from her indicating that the paper also needed cutline information with the images; the editor, who didn’t know how to access IPTC caption information—or even that such information was in the image files—was apparently accustomed to receiving caption information in the body of an e-mail, rather than in the image file itself. Fortunately, the editor was able to track down a photo editor who knew how to access the IPTC caption information.
I’d like to say that this was an isolated experience, but that would be far from the truth. While photographers may know about the metadata associated with digital images, and can easily access that information, a drastically different situation exists when dealing with nonphotographers.
Although it’s currently unclear whether putting a copyright notice into metadata constitutes “reasonable notice” today, prudence still suggests that photographers should include a copyright notice in the metadata in anticipation of the day when it will constitute “reasonable notice.” In the meantime, there are some alternatives. One possible alternative is to use a watermark. For obvious reasons, however, that may not be desirable, or even possible, depending upon how the image will be used. Another is to include the copyright notice in the file name. Juergen Specht, founder of the Nikon-centric D1scussion Internet mailing list, admitted using this approach when the topic of how to mark digital images with a copyright notice came up on the list. As a result, the file names may appear as “Copyright_2002_Juergen_Specht_20020610072-p1.jpg.” It’s difficult to argue that Specht’s approach doesn’t provide “reasonable notice” since even less technically inclined people are likely to recognize the copyright statement in the file name.
|On November 5, 2009, the U.S. Court of Appeals for the Seventh Circuit released its opinion in Daniel Schrock’s appeal. Reversing the lower court’s decision, the Seventh Circuit breathed new life into Schrock’s case by holding that “as long as he was authorized to make photos…he owned the copyright in the photos to the extent of their incremental expression.” Stated more simply, since Schrock had permission to create derivative works—photographs of the copy-righted toys—then, by default, he was the owner of the copyright in the photographs.
On the key issue in the appeal, specifically whether Schrock had to obtain permission from the owner of the copyright in the “Thomas” brand of children’s toys that he had been hired to photograph in order to be able to register the copyright for the photographs, the appeals court sided with Schrock with a caveat. “The copyright in a derivative work arises by operation of law—not through authority from the owner of the copyright in the underlying work—although the parties may alter this default rule by agreement.” Whether Schrock altered the default rule by agreement was an issue that the appeals court could not decide based on the evidence before it, and is an issue the trial court still will need to resolve.
“Knowledge Is Only Potential Power”
As a variation on Francis Bacon’s famous quotation, American author Napoleon Hill suggested, “Knowledge is only potential power.” Gaining the knowledge of the fundamental aspects and pitfalls associated with copyright law is the potential. The real power waits to be discovered by those who wisely apply the knowledge in their businesses.
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 a quarter century. He can be reached at [email protected] or [email protected].