16 May, 2014 | Posted by: bswenson

Second Circuit Applies Discovery Rule to



by Joel Hecker, Esq.

The United States Copyright Act requires that civil actions for copyright infringement must be “commenced within three years after the claim accrued”.
While this would seem to be a simple requirement, there have been much discussion and litigation over the interpretation of the word “accrued”.

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A recent court decision in the
United States Court of Appeals
for the Second Circuit addressed
this issue.

The case is Louis Psihoyos v.
John Wiley & Sons,
decided on April 4, 2014. It
involved claims by Psihoyos,
a professional photographer,
against Wiley, a
prominent book publisher,
that Wiley had used eight
photographs in its textbooks
without authorization or consent.

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Psihoyos sued Wiley for use of eight of his photographs in various Wiley textbooks from 2005-2009. In March 2011 Psihoyos filed his complaint after attempts to reach a retroactive licensing agreement failed.

Facts of Psihoyos v. Wiley

In August 2011 after discovery was complete, Wiley moved for summary judgment on various grounds, including that the Copyright Act’s three year statute of limitations barred many of Psihoyos’ infringement claims, since the infringements occurred over three years prior to the filing of the suit.

District Court Decision

There has been a split among the Circuit Court of Appeals as to the interpretation of the word “accrued”. Some courts have taken a restrictive approach, called the “injury rule”, determining that the statute of limitations should run from the date on which the liability arises. Other courts have held the more expansive “discovery rule”, that an infringement claim does not “accrue” until the copyright holder discovers, or with due diligence should have discovered, the infringement.

Various District Court judges in the Second Circuit have differed as to which rule should apply, having had no prior guidance from the Second Circuit itself on this matter. The District Court in this case held for the discovery rule and since Psihoyos did not discover the infringement until 2010, his claims were not barred by the statute of limitations. The Court then granted the motion as to claims relating to four of the photos on other grounds, and allowed the other four to go to trial.

After trial on the remaining four photographs the jury found no infringement on one photo, non-willful infringement on a second photo resulting in an award of $750 in damages, and willful infringement of the other two photos, resulting in awards of $30,000 and $100,000 in damages respectively.

As an aside, the disparity in the awards clearly emphasizes the need for copyright owners to timely register their copyrights in order to be eligible for statutory damages and attorney’s fees.

Second Circuit Decision

On appeal, the Second Circuit panel affirmed the District Court and definitively rejected the injury rule interpretation of when a copyright infringement claim accrues under the Copyright Act. As a result, the Second Circuit has now joined the other circuits who have considered this issue in the context of copyright infringement claims. Accordingly, the discovery rule now appears to have prevailed over the injury rule. This is of utmost significance to copyright holders since many claims are not actually discovered within three years of the actual infringement.

Statutory Damages

Wiley argued on appeal that the statutory damages award of $30,000 and $100,000 bears no rational relationship to the plaintiff’s actual loss and is “an epitome of a run-away award”. The Second Circuit rejected that contention since a District Court Judge, in setting the amount of statutory damages, should consider other factors as well including:

(1) the infringer’s state of mind; (2) the expenses saved, and profits earned, by the infringer; (3) the revenue lost by the copyright holder; (4) the deterrent effect on the infringer and third parties; (5) the infringer’s cooperation in providing evidence concerning the value of the infringing material; and (6) the conduct and attitude of the parties.”

The Second Circuit affirmed the District Court’s reasoning which upheld the jury’s award based upon the evidence adduced at trial. In particular, both courts found that the evidence supported a finding of willfulness, that Wiley earned substantial profits, and the jury may have considered Wiley as a repeat infringer in need of deterrents.

Joel L. Hecker, 2014

Joel L. Hecker, Esq.
Russo & Burke
600 Third Avenue
New York, NY 10016
(212) 557-9600
Fax: (212) 557-9610
Website: www.russoandburke.com

25 Feb, 2014 | Posted by: sellmyphotos

Impossibility of Performance..

Voids Management Contract

By Joel L. Hecker, Esq.

In a case of first impression, a New York appellate court was recently required to rule on whether a court ordered stipulation, agreed to by both parties, which precluded all contact between them except through their attorneys, renders impossible the performance of two prior contracts between the plaintiff artist and defendant management company.

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These facts could easily have related
to a photographer and photographer’s
representative under a representative
agreement so it should be of interest
to the photography community.

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The plaintiff known as Hilary Kole is a well-known professional jazz singer. The individual defendant, John Valenti, is the sole shareholder and president of a corporation which manages musical artists and operates the well-known jazz club, Birdland.

Plaintiff and Valenti met in 2003 while she was performing at Birdland and they quickly kindled a romantic relationship. In 2004 they became engaged and for some years held themselves out as husband and wife, although they never married.

They also developed a professional relationship resulting in plaintiff entering into a recording contract in April 2011 and a management contract in June 2011 in connection with her professional career.

By May 2011, the personal relationship had deteriorated and plaintiff moved out of their shared residence. Litigation followed in family court where plaintiff sought an order of protection against Valenti which was granted, prohibiting Valenti from contacting the plaintiff either directly or through third parties.

Plaintiff also instituted a second action in New York Supreme Court, the one at issue here, seeking rescission of the contracts and a declaration that the management company was in breach.

The parties resolved the family court issues in June 2012 by entering into a so ordered court stipulation, under which the parties agreed to have no further contact with each other. The stipulation specified that “no contact” included no third party contact except by counsel. Thereafter in the Supreme Court action, plaintiff’s motion for summary judgment on the rescission claim was granted and both contracts were terminated on the ground of impossibility. That finding was affirmed on appeal.

The concept of impossibility excuses a party’s performance only when the destruction of the subject matter of the contract or the means of the performance makes performance objectively impossible. Moreover, the impossibility must be produced by an unanticipated event that could not have been foreseen or guarded against in the contract.

In this case, since the stipulation agreed to by the parties destroyed the means of performance by precluding all means of contact between them except by counsel, performance was in fact impossible by law. This is so because the recording and management contracts are for personal services (similar to contracts between photographers and representatives or agents), and therefore require substantial and ongoing communication between the parties.

The fact that Valenti was the sole shareholder and president of the management company, found the court, meant that he had to be involved in performance under the contracts, which contacts were prohibited by the stipulation. The court found that, practically speaking, the company’s employees answered to Valenti and the company’s decisions were ultimately made by Valenti. Accordingly, it would be impossible for the company to engage in communication with the plaintiff without Valenti’s input.

Finally, the court found that it was not foreseeable at the time of entering into the contracts that plaintiff and Valenti would subsequently enter into an agreement to bar contact with each other.

Therefore, the subsequent stipulation was not something the parties could have contracted around. In this case, in undertaking to perform the recording and management contracts, the eventuality that the parties would subsequently stipulate to forbid contact with one another could not have been foreseen or guarded against.

Accordingly the appellate court upheld the Supreme Court order declaring both contracts to be terminated.

Ed. Note: It's important to repeat this:

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These facts could easily have related
to a photographer and photographer’s
representative under a representative
agreement so it should be of interest
to the photography community.

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Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com

21 Oct, 2013 | Posted by: sellmyphotos

Postal Stamp Infringement

Royalty Granted

By Joel L. Hecker, Esq.

As you will recall, Frank Gaylord created and is the copyright owner of his sculptures called the “Column”, consisting of a group of nineteen stainless steel soldiers which form the centerpiece of the Korean War Veterans’ Memorial on the National Mall in Washington, D.C.

In January 1996, an amateur photographer named John Alli visited the memorial during a snowstorm and took a photograph of the Column.

In 2002, the United States Postal Service licensed the photograph for use on the 37 cent stamp commemorating the memorial. However, the Postal Service did not get Mr. Gaylord’s consent to use the photograph of his copyrighted sculptures.

Prior Judicial History

Gaylord sued the Postal Service for copyright infringement in 2006 after having settled with Alli.

In a torturous tangle of proceedings, the United States Court of Federal Claims initially found that the Postal Service’s use of the Alli photograph of the Column was a fair use and therefore it was not liable to Gaylord for copyright infringement.

On appeal, the Federal Circuit Court of Appeals reversed that finding and found that the Postal Service had indeed infringed Gaylord’s copyright by using the derivative photograph in three categories:
1) stamps used to send mail
2) unused stamps retained by collectors
3) retail goods featuring an image of the stamp.

On remand, the Court of Federal Claims awarded Gaylord only $5,000 in damages on the grounds that this amount was the largest the Postal Service had ever paid to use an image on a stamp.
Gaylord again appealed and the Federal Circuit once again vacated the Court of Federal Claims order, remanding the case for a determination of the fair market value of the infringing use. As instructed, the Court of Federal Claims has now determined the amount of damages due to Gaylord in an Opinion and Order filed September 20, 2013.

Stamps Used to Send Mail

On the second remand, the Court of Federal Claims was required, for the first element (stamps used to send mail), to calculate the value of a license granted based upon “a hypothetical, arms-length negotiation between the parties”. In addition, the mandate instructed the court to determine whether an ongoing royalty of a one-time fee more accurately captures the fair market value of a license for stamps used to send mail. However, since Gaylord was no longer seeking damages for stamps used to send mail, the court awarded no damages for this category.

Unused Stamps Purchased by Collectors

This category differs from used stamps because unused stamps represent nearly pure profit for the Postal Service. The Federal Circuit instructed the Court of Federal Claims to consider whether the evidence supports an ongoing royalty rate or a lump sum royalty payment for the estimated $5.4 million collected from the unused stamps.

The Court found that a 10% running royalty is the appropriate approach and thereby awarded $540,000 in damages for this component of the case (this stamp is no longer being sold by the Postal Service and therefore a finite amount of damages award could be made).

Commercial Merchandise

The record reflected that Gaylord has consistently licensed images of his Column sculpture for retail and commemorative items for approximately a 10% royalty, and therefore in the hypothetical negotiation he would have likely received that 10% royalty on merchandise. Accordingly, he was awarded damages equal to 10% of the estimated $330,919 collected by the Postal Service or $33,092.

Pre-Judgment Interest

Lastly, the Federal Circuit determined that Gaylord was entitled to pre-judgment interest in order to make his compensation complete. By stipulation between the parties, that amount was calculated at $111,752.94.

Gaylord, after having the dismissal of his case reversed, as well as a reversal of the minimal $5,000 award, and with the benefit of two Federal Circuit Court decisions in his favor, has finally been awarded $684,844.94, what he considers to be just compensation for the infringement of his copyrighted work.

Perseverance indeed sometimes does pay!

Joel L. Hecker, Esq.Russo & Burke
600 Third Avenue
New York, NY 10016
(212) 557-9600
Fax: (212) 557-9610
Website: www.russoandburke.com

06 Aug, 2013 | Posted by: bswenson

Ed. Note: Here's a clever way to earn your way through college. This fellow from Taiwan who was going to college in the USA bought his required textbooks at home in Taiwan at a much reduced rate. He later set up a business where he bought scores of textbooks in Taiwan at reduced rates and then had them shipped to himself in the USA and subsequently sold them in the USA for a profit. The publisher cried "Copyright Infringement" but the court ruled it's o.k. to do this. (Free enterprise!)

The First Sale Doctrine

Also Applies to Works

Lawfully Made Abroad

Joel Hecker, Esq.

The Supreme Court of the United States,
in a six to three decision in Kirtsaeng v. John Wiley & Sons, Inc., has resolved a long outstanding issue by deciding that the First Sale Doctrine of the United States Copyright Act applies to copyrighted works lawfully made abroad and not just in the United States.

What is the First Sale Doctrine?

The Copyright Act of 1976 grants to the copyright owner the exclusive right to distribute copies of the copyrighted work to the public. This right is qualified by various exceptions, including the principle of fair use and the First Sale Doctrine.

In layman’s terms, the purchaser of a particular copy of, for example, a book or photographic print or poster, has the absolute right to resell that copy without having to account to or obtain the permission of the copyright owner. Of course, this right does not extend to the copying or reproduction or other copyright rights which are still reserved to the copyright owner. It deals only with the physical copy once it is first sold. Furthermore, it only covers copies “lawfully made,” which means copies made by, or with the approval of, the copyright owner.


The respondent, John Wiley & Sons, Inc., is a publisher which specializes in academic textbooks. It usually obtains from its authors various foreign and domestic copyright assignments. Wiley often assigns to its wholly owned foreign subsidiary rights to publish, print and sell its English language textbooks abroad. Each foreign edition contains language making it clear that the copy is to be sold only in a particular country or geographical region outside the United States. The upshot is that there are two essentially equivalent versions of a Wiley textbook; an American version manufactured and sold in the United States and a foreign version manufactured and sold abroad, although the foreign editions are usually of lesser quality, less expensive to manufacture, and sold at a cheaper price.

The petitioner is a citizen of Thailand who moved to the United States in 1997 to study. While in undergraduate and graduate programs in the United States Kirtsaeng asked his friends and family in Thailand to buy copies of foreign edition English language textbooks at Thai book shops where they were sold at low prices and to then mail them to him in the United States. He would then sell them, reimburse his family and friends, and keep the profit to help pay his tuition and expenses.

In 2008 Wiley brought this lawsuit claiming that Kirtsaeng’s unauthorized importation of its foreign made books and later resale of them in the United States constitutes copyright infringement. Kirtsaeng raised as his defense that the books he had acquired were “lawfully made” and that the First Sale Doctrine permitted him to resell or otherwise dispose of these books without Wiley’s further permission.

Lower Court Activity

The District Court in the Southern District of New York, held that the First Sale Doctrine did not apply, in its view, to foreign made goods even if made with the copyright owner’s permission. The jury, prohibited from considering the First Sale Doctrine defense, naturally found that Kirtsaeng had willfully infringed eight of Wiley’s copyrighted books and assessed statutory damages of $75,000 per work for a total of $600,000. The Court also issued an injunction to prohibit any additional transactions. On appeal, the Second Circuit Court of Appeals upheld the District Court.

Analysis of the Supreme Court Majority Decision
In sum, the Supreme Court majority concluded that the words “lawfully made under this title” imposed a non-geographical limitation and therefore applied to copies made abroad with the permission of the copyright owner.

The Court concluded that there was no intent by Congress to introduce a geographical limitation in the 1976 Act when it was clearly missing from the prior 1909 Copyright Act.

The Court went further, taking a very practical approach to the harm that might be created if it ruled otherwise. For example, a geographical limitation interpretation would mean that one who buys a copyrighted work of art, a photographic poster, or even a bumper sticker abroad would not be able to display it in America without the copyright owner’s further authorization.

The decision also emphasized the potential horror raised by libraries, used-book dealers, technology companies, consumer-goods retailers, and museums which pointed to various ways in which a geographical interpretation would fail to further the basic constitutional copyright objectives to promote the progress of science and useful arts contained in Article 1, Section 8 of the U.S. Constitution.

The Court referred to the fact that library collections in the United States contain at least 200 million books published abroad, and that a geographical interpretation would likely require the libraries to obtain permission (or at least, held the court, create significant uncertainty) before circulating or otherwise distributing these books.

In addition, used book dealers pointed to the fact that since the time when Benjamin Franklin and Thomas Jefferson built commercial and personal libraries of foreign books, American readers have bought used books published and printed abroad.

Furthermore, art museums display foreign-produced works by foreign photographers, painters, and other artists. A geographical interpretation would require the museums to obtain permission from copyright owners before they could even display the works.

All these examples would be exacerbated where the orphan works doctrine came into play (when the copyright owner was unknown or unable to be found).

The Court concluded that these practical problems were too serious, too extensive, and too likely to come about for the Court to dismiss them as insignificant – particularly in light of the ever growing importance of foreign trade to America.


It is now clear that there is no longer any distinction as to where the copyrighted work is made or created, so long as it is lawfully made and that publishers must now adjust to the new realities of the marketplace.

Joel L. Hecker, Esq.Russo & Burke
600 Third Avenue
New York, NY 10016
(212) 557-9600
Fax: (212) 557-9610
Website: www.russoandburke.com

04 Jun, 2013 | Posted by: sellmyphotos

Prince Prevails

on Appeal in Appropriation

Art Fair Use Case

By Joel L. Hecker

As you may recall, in 2011 United States District Judge Deborah Batts in the Southern District of New York, found Richard Prince (“Prince”), the well known appropriation artist, his gallery, Gagosian Gallery, Inc. (“Gallery”), and Lawrence Gagosian (“Gagosian”), the gallery’s principal, all guilty of copyright infringement arising out of Prince’s paintings based upon Patrick Cariou’s (“Cariou”) photographs of Rastafarians in Jamaica.

The Second Circuit Court of Appeals, in a long and eagerly awaited decision has now reversed Judge Batts’ decision, holding that she applied the incorrect standard to determine the Fair Use defense and that twenty-five of Prince’s thirty artworks in face constitute fair use.

Fair Use Analysis

The purpose of fair use is to address the inevitable tension between the property rights established under copyright’s purpose “to promote the Progress of Science and useful Arts” as contained in the U.S. Constitution and the ability of authors to express themselves by referencing the work of others.

The doctrine of fair use is now codified in Section 107 of the 1976 Copyright Act and consists of a non-exclusive four-factor test.

Factor One – Purpose and Character of the Use
a. Transformative Use.

Transformative use is the most important part of the fair use analysis. Its purpose is to determine “whether the new work merely supersede[s] the objects of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is ‘transformative’”.

The more transformative the new work, the less significance will be given to the other factors and therefore the greater likelihood of a finding of fair use.

Judge Batts concluded
that Prince did not intend to comment on Cariou’s photos, or on aspects of popular culture closely associated with Cariou or the photos. Furthermore the district court found that Prince’s own testimony showed that his intent was not transformative within the meaning of Section 107.

The Second Circuit rejected this approach as being an incorrect standard because it “impose[d] a requirement that the new work in some way comment on, relate to the historical context of, or critically refer back to the original work,” in order to qualify as Fair Use.

To the contrary, held the Circuit Court, “the law imposes no requirement that a work comment on the original or its author in order to be considered transformative, and a secondary work may constitute a fair use even if it serves some purpose other than those (criticism, comment, news reporting, teaching scholarship, and research) identified in the preamble to the statute”.

The Circuit Court went on to explain that the United States Supreme Court as well as other Second Circuit decisions have emphasized, “to qualify as a fair use, a new work generally must alter the original with ‘new expression, meaning, or message’”.

As a result, the Second Circuit
requires an examination to determine
“how the artworks may reasonably be
perceived in order to assess their
transformative nature”.

Based upon this standard, the Second Circuit majority concluded that twenty-five of Prince’s images did in fact have a different character, gave Cariou’s photographs a new expression, and employed new aesthetics with creative and communicative results distinct from Cariou’s (The dissenting judge would not have made this aesthetic decision, and instead would have remanded the decision to the District Court for an evidentiary hearing).

The court rejected a bright line test that any cosmetic changes to photographs would necessarily constitute fair use.

Instead, it pointed out that a secondary work may modify the original work without being transformative. One example given is where a derivative work that merely presents the same material but in a new form, such as a book of synopses of televisions shows, is not transformative.

b. Commerciality

The second prong of the first fair use factor concerns whether the otherwise infringing work serves a commercial or nonprofit education purpose.

The Second Circuit, having already held that twenty-five of Prince’s works were transformative, did not place much significance of its commercial aspect. The critical point, said the Second Circuit, is how the work appears to a reasonable observer, not simply what an artist may say about the work (left unsaid is the concept that an artist would “invent” a reason to avoid liability!). As a result, the Second Circuit weighed this factor in favor of a finding of fair use.

Factor Two – The Nature of the Copyrighted Work

This factor is usually of lesser importance than the others in the fair use analysis. The Second Circuit found Cariou’s work to be creative and published and therefore weighing against fair use. However, since the Circuit also found Prince’s work to be transformative under the first factor, it discounted this factor as being of limited usefulness.

Factor Three – The Amount and Substantiality of the Portion Used

To Read More

12 Feb, 2013 | Posted by: bswenson

Photographer Prevails in Haiti Earthquake Infringement Suit

Daniel Morel, a photo journalist, was in Haiti when the devastating January 12, 2010 earthquake occurred. Morel captured a number of photographs of the aftermath, and posted them to Twitter through a TwitPic account. Shortly thereafter, a Lisandro Suero reposted these photos and tweeted that he had taken these exclusive photographs of the earthquake.

The photos eventually landed at the photo stock agency, Agency France Press (“AFP”). AFP then transmitted these photographs, which had been credited to Suero, to Getty Images, Inc. for distribution worldwide pursuant to a license agreement whereby they granted to each other reciprocal rights to display and license their images. Morel, upon discovering that his images had been distributed by AFP and Getty without his consent, and had even been wrongfully credited to Suero, had his stock agency, Corbis, Inc. notify both AFP and Getty to cease and desist from such use. The images were eventually withdrawn but not before significant worldwide distribution had been made.

Litigation ensued in the United States District Court for the Southern District of New York. In a preemptive action, AFP acted first by seeking a declaratory judgment that it had not infringed Morel’s copyrights in these photographs. Morel filed counterclaims against AFP, Getty and the Washington Post which published many of the photographs, asserting willful copyright infringement claims.

AFP’s Social Media Defense

AFP’s principal argument in opposition to the copyright infringement claims was that it could not be held liable since Morel had, in effect, granted AFP a license for such use by posting the photos on Twitter. In short, AFP contended that as a result of such posting, Morel subjected the photos to the Terms of Service governing content posted on Twitter and TwitPic. As a result, claimed AFP, since these Terms of Service granted certain rights to the photos to Twitter, these Terms of Service by extension granted AFP a similar license.

The parties moved for summary judgment in the action. The court granted Morel summary judgment against AFP for copyright infringement finding that the attempt at a rights grab through the Twitter account was not persuasive. The relevant TwitPic Terms of Service stated, among other things, that “by uploading your photos on TwitPic you give TwitPic permission to use or distribute your photos on TwitPic.com or affiliated sites. All images uploaded are copyright © their respective owners”.

AFP attempted to extend these and other terms to make AFP a third party beneficiary of the license agreement between Morel and Twitter based upon the argument that the Terms of Service intended to confer a license to Twitter’s “other users” (i.e., AFP).

The Court’s Decision

The court rejected this argument finding that the evidence did not reflect a clear intent to grant AFP any license to remove the photos from Twitter (which AFP had done) and then to license them to third parties (which it had also done). As a result, the court found AFP guilty of copyright infringement, but found a factual dispute as to whether or not statutory damages would apply. It also found the Post guilty of copyright infringement.

The court found that numerous factual issues needed to be resolved in connection with the claims involving Getty and left those claims to be decided at trial.


This decision not only validated Morel’s copyright claims against AFP and the Post, it has broad implications for the industry at large since it determined, at least on this fact pattern, that users of Twitter and, by extension, other social networking websites retain rights to their copyrighted material and do not extend a license to potential infringers through the non-negotiable Terms of Service created by the social networks. There will obviously be additional litigation in this matter and thereafter potentially an appeal, so we have not heard the last of it.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com

20 Nov, 2012 | Posted by: bswenson

Google Book Project Matters
– Status Report

by Joel Hecker, Esq.

As you probably know by now, the Google Book Project is the subject of various lawsuits including the ongoing class action brought by the Authors Guild and the separate class action brought by the American Society of Media Photographers. Two other cases separate from those class action suits have now been resolved.

Publishers Lawsuit

The first one, the action brought by the Association of American Publishers against Google, has now been settled after seven years of litigation. The plaintiffs in that action are all publishers. They are The McGraw-Hill Companies, Inc., Pearson Education, Inc., and its subsidiary Penguin Group (USA) Inc., John Wiley & Sons, Inc., and Simon & Schuster, Inc. (part of CBS Corporation).

Since the plaintiffs in this action were all suing on their own behalf and alleging copyright infringement on titles to which they either owned the copyright or were the authorized agent of the author copyright owners, court approval was not necessary. Accordingly this private litigation has now been resolved.

The terms of the settlement are confidential but the press release announcing the settlement did say that publishers can choose to make available or choose to remove their books and journals digitized by Google. The publishers that decide not to remove their works will have the option to receive a digital copy for their use. Whatever the confidential terms may be, this settlement does not resolve the two class action suits still outstanding against Google.

Authors Guild vs. Hathitrust

In this lawsuit the Authors Guild and others sued the Hathitrust for copyright infringement based upon the trust’s planned scanning of books owned by various universities, including the University of Michigan, University of California, University of Wisconsin, Indiana University and Cornell University which were also named as defendants.
The Hathitrust is the name of the service which these universities participate in for the purpose of allowing Google to create digital copies of works in the universities’ libraries. In exchange, Google provides digital copies to the defendants. This has been referred to as the “mass-digitization project”.

In a decision dated October 10, 2012, Judge Harold Bear, Jr. of the United States District Court for the Southern District of New York found, among other things, that the book scanning and digitization project was subject to the fair use defense and therefore dismissed the case. The court was particularly influenced by the position of the National Federation of the Blind, which was permitted to intervene as an amicus or friend of the court.

Print-disable persons

In deciding the fair use argument, the court determined that the first fair use factor, the purpose and character of the use, favored the defendants since use of digital copies facilitated access for print-disabled persons. This made the use transformative. As to the second factor, the nature of the copyrighted works, because the use was transformative and intended to facilitate key-word searches for access for print-disabled individuals, this factor was of limited usefulness.

The amount of the work copied, the third fair use factor, was also not dispositive because the maintenance of an electronic copy was necessary to provide access for print-disabled individuals. The fourth factor, impact on the market for or value of the works, favored the defendants since access for print-disabled individuals does not otherwise significantly impact upon the market.

The court also emphasized the fact that equal access to copyrighted information for print-disabled individuals is mandated by the Americans with Disabilities Act (“ADA”) and the Rehabilitation Act of 1976. The ADA provides a clear and comprehensive national mandate for the elimination of discrimination against individuals with disabilities. The court found that the digitization of books under the mass-digitization project would fall squarely within the remedy provided by Congress.


Although Google has prevailed in these two cases to date, it is still unclear what the eventual outcome will be across the board, particularly in light of the two pending class actions and the fact that the Hathitrust dismissal has been appealed.

© Joel L. Hecker, 2012

Joel L. Hecker, Esq.,Russo & Burke, 600 Third Avenue
New York, NY 10016, (212) 557-9600, Fax: (212) 557-9610
Website: www.russoandburke.com

25 Sep, 2012 | Posted by: st

Updates: Book Publisher Antitrust Suit, Google Books Class Action and Shepard Fairey Sentencing

by Joel Hecker, Esq.

This article will report on the current status of three matters of continuing interest.

1. Apple and Book Publishers Antitrust Conspiracy Case
2. Google Book Project Class Action
3. Shepard Fairey Sentencing

Apple and Book Publishers Antitrust Conspiracy Case As I previously reported in April 2012, the Department of Justice commenced litigation against five of the six major book publishers in the United States, as well as Apple, Inc., and simultaneously therewith filed a Consent Decree in connection with its settlement of the action with three of the five publishers. The other two publishers and Apple refused to settle and the action continued against them.

As part of the Consent Decree
, the United States District Court for the Southern District of New York, after viewing the evidence before it as well as 868 comments from the public which were timely submitted, approved the settlement in a decision dated September 5, 2012. The court accepted the legal and factual position of the Department of Justice and rejected those of the objectors.

The most important substantive concern raised against the Consent Decree was that the proposed final judgment would actively harm third party stakeholders, such as brick-and-mortar bookstores, ebook retailers, independent publishing houses, and authors by permitting Amazon to reintroduce its policy of selling ebooks at $9.99 per copy which was alleged to be below Amazon’s cost. The court rejected these and the other arguments presented, stating that the purpose of the Federal Sherman Antitrust Act is not to protect businesses from the working of the marketplace, rather it is to protect the public from the failure of the market. In a nutshell, since the settlement was addressed to the allegations concerning collusion between the publishing houses and Apple, which was intended to and did eliminate price competition in the ebook marketplace to the detriment and harm of the consumer, and the fact that Amazon might reduce its prices as a side result was not a reason to reject the settlement.

The action continues against Apple and the other two publishers, with the trial presently scheduled for June 2013.

2. Google Book Project Class Action

As you know, Judge Denny Chin previously granted plaintiffs’ motion to certify a class action in the Author’s Guild v. Google case. This action involves the mass-digitization of books without the consent of the copyright owners as part of Google’s Book Project which plaintiffs claim constitutes a widespread systematic copyright infringement. It is anticipated that the companion case brought by the ASMP and other visual art organizational representatives would also apply for class certification in that case.

Recognizing the significance of his decision, Judge Chin granted Google leave to appeal his determination to the United States Second Circuit Court of Appeals but instructed the parties to continue the proceedings during the pendency of the appeal. The Second Circuit Court of Appeals, in response to Google’s application, has now stayed proceedings in the Southern District Court pending the appeal. As a result, the case will not proceed any further and will be held in abeyance until the appeal is decided.

3. Shepard Fairey Sentencing

As you will undoubtedly recall, Shepard Fairey created the “HOPE” poster which became a widespread symbol utilized in Barack Obama’s 2008 presidential campaign. As you will further recall, in 2009 Fairey brought a civil lawsuit against the Associated Press in connection with this image. The AP in turn counterclaimed for copyright infringement on various grounds. As it turned out, Fairey was forced to admit that he altered evidence to hide the fact that he based his iconic poster on a 2006 AP photograph. The civil action was then settled whereby Fairey paid AP $1.6 million. Of this sum, Fairey personally paid $1.15 million and his insurance company the balance of $450,000.

The matter was referred to the U.S. Attorney’s office, which brought a criminal complaint against Fairey for altering evidence, and for criminal contempt. That criminal case has now been resolved with Fairey pleading guilty to the charges. He was sentenced to do 300 hours of community service for his criminal contempt conviction, placed on two years’ probation, and ordered to pay a $25,000 fine to the U.S. government. However, he was not sentenced to any time in jail. During remarks made in open court before the sentence was announced, he called his decision to fabricate evidence and lie about it in the AP lawsuit the “worst thing I’ve done in my life”.
This most likely brings finality to the matter.

© Joel L. Hecker, September 2012

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .

21 Aug, 2012 | Posted by: bswenson

The Google legal suite...ASMP, The Author's Guild et al vs. Google (See Joel Hecker's report from last week in You and the Law.)"
On August 14, 2012, the Second Circuit Court of Appeals granted Google the right to appeal from Judge Chin's decision granting class action status in the Authors Guild case. Google is attempting to decertify the class action determination, on the basis of the 2011 United States Supreme Court decision favoring Wal-Mart Stores Inc. which makes it more difficult to sustain class actions. The appeal will probably be heard in the Fall with a decision coming down sometime thereafter."

Joel L. Hecker, Esq.
Russo & Burke
600 Third Avenue
New York, NY 10016
(212) 557-9600
Fax: (212) 557-9610
Website: www.russoandburke.com

14 Aug, 2012 | Posted by: st

Google Book Project Proceeds

The Photographers Class Action

by Joel Hecker, Esq.

As you undoubtedly know, there are two outstanding lawsuits in the continuing litigation over the Google Book Project, which concern claims that Google was liable for copyright infringement as a result of Google’s project of scanning books from university libraries without the consent of the copyright owners of the scanned books.

In early 2012,
Google moved to dismiss those parts of both actions which were brought by associational plaintiffs.

In the case brought by the Author’s Guild and others, the plaintiffs also moved for the court to grant class action certification.

On May 31, 2012 Circuit Judge Denny Chin denied Google’s attempts to dismiss the claims of the associational plaintiffs, in both the action by ASMP and other visual artists representatives, and the Author’s Guild action, and granted class action certification in the Author’s Guild case. Based upon his ruling, it certainly can be anticipated that the ASMP plaintiffs will also, at the appropriate time, successfully move for class action certification in the photographer’s case.

Associational Standing

Google’s attack was on the technical issue of associational standing.

Ordinarily, for a plaintiff to have standing to bring a lawsuit, the plaintiff must “be himself among the injured.” One exception to this general rule is “associational standing.” This means that an association, such as ASMP and other professional photography associations, would have standing to bring a lawsuit on behalf of its members when:
(a) Its members would otherwise have standing to sue in their own right;
(b) The interests it seeks to protect are germane to the organizations purpose; and
(c) Neither the claim asserted nor the relief requested requires the participation of individual members in the lawsuit.


The court pointed out that the
Author’s Guild has played an
integral part in every stage of
its litigation for almost
seven years,
and the ASMP
plaintiffs have conferred important
benefits in its litigation.

- - - - - - - - - - - - - - - - -

This test was established by a United States Supreme Court in Hunt v. Wash. State Apple Adver. Comm’n, and is known as the “Hunt Test factors.”

The parties stipulated that the first two prongs of the Hunt Test are satisfied in both of the lawsuits, and therefore only the third prong was at issue.

Judge Chin ruled in favor of the associational plaintiffs on the motions. He specifically found that the various associations claims of copyright infringement and requests for injunctive relief will not require the participation of each individual association member for the reasons stated below.

Individual Participation

The associational plaintiffs in both cases alleged, on behalf of their individual members, that Google engaged and continues to engage in the wholesale copying of books and images contained in these books without the consent of the copyright holders, many of whom are association members.

In a key holding, the court found that the associational plaintiffs have requested only injunctive relief to block Google from continued infringement of the copyrights of plaintiffs and the represented class, as well as a judgment declaring that Google’s actions are unlawful. They are not seeking individual damages.

Limited individual participation is, however necessary to establish the association’s copyright infringement claims.

To establish such infringements, as is the case in all copyright infringement claims, the plaintiff must show ownership of a valid copyright, and copying of constituent elements of the work that are original.

It was undisputed that the second element, individual participation, exists, since Google does not deny that it has copied millions of original works without permission of the copyright holders. In addition, Google has displayed snippets of text from those books as well as images contained in the books, without permission of the copyright holders.

The court concluded that those association members who own all or part of the copyright to their work will not require individual participation, since copyright ownership information is publicly available on the United States Copyright Offices Registry. For those association members who have assigned their copyrights to a third party but still retain a beneficial interest in their work (for example, by receiving royalties), some individual participation may be required through either public records, Google’s records, or copies of a document proving such interest such as a publishing agreement.

The court held that this degree of individual participation does not defeat associational standard in this factual situation.

Google’s Fair Use Defense

The crux of Google’s motion to dismiss was its fair use defense. Specifically Google claims that two of the fair use factors, “the nature of the copyrighted work” and “the effect of the use upon the potential market for or value of the copyrighted work” require an individualized inquiry.

For example, Google points out that creative works and non-creative works are often treated differently in the fair use analysis. It further argues that snippet display might affect the market for in-print books more than it affects the market for out-of-print books.

The court rejected these arguments, determining that these differences may be accommodated by creating sub-groups. For example, in the ASMP action it could separate photographs from illustrations, and in the Author’s Guild action it could create, say, sub-groups for fiction, non-fiction, poetry and cookbooks. Judge Chin concluded that he could effectively assess the merits of this fair use defense with respect to each sub-group without conducting an evaluation of each individual work. Accordingly, he found that individualized analysis would be unnecessarily burdensome and duplicative.

Finally, found the court, no individual participation would be required at the relief stage because the court could simply enjoin Google with respect to that subgroup, such as displaying snippets of association members works. Since the associational plaintiffs only seek injunctive relief, no individual damage assessment would be necessary.

Equitable Consideration

The court pointed out that the Author’s Guild has played an integral part in every stage of its litigation for almost seven years, and the ASMP plaintiffs have conferred important benefits in its litigation.

Only in 2011 when it became apparent that there would be no settlement in this action did Google first object to associational participation in both litigations.

Furthermore, Google did not conduct an inquiry into the copyright ownership of each work when it copied them, nor did it conduct an individualized evaluation as to whether posting snippets of a particular work would constitute fair use. Google simply copied and made search results available en masse. In a nutshell, since Google treated the copyright owners as a group, the court held that the copyright owners should be able to reciprocate and litigate on a group basis.

Motion for Class Certification

The Author’s Guild motion for class certification was granted. Judge Chin found that all of the prerequisites of Federal Rules of Civil Procedure Rule 23 had been met.

These rules include numerosity (the class is so numerous that joinder of all members is impractical), commonality (question of law or fact common to the class), typicality (the claims of the representative parties are typical of those in the class), and adequacy of representation (plaintiffs interests are not antagonistic to the interests of other members of the class, and its attorneys are qualified, experienced and able to conduct the litigation).

The proposed class was defined as “all persons residing in the United States who hold a United States Copyright interest in one or more Books, reproduced by Google as part of its Library Project, who are either (a) natural persons who are authors of such Books or (b) natural persons, family trusts or sole proprietorships who are successors in interest or assigns of such authors.”
What Next?

The litigations will now continue deeper into their discovery stages and head towards trial or further attempts at a proposed settlement. The ASMP associational plaintiffs will certainly now also move for class action certification, which should be granted since Judge Chin has already ruled on the relevant issues. We will most certainly hear more on these actions in the future.

8 Joel L. Hecker, 2012


Joel L. Hecker, Esq.
Russo & Burke600 Third Avenue
New York, NY 10016
(212) 557-9600
Fax: (212) 557-9610
Website: www.russoandburke.com

01 May, 2012 | Posted by: st

Apple and Book Publishers Sued for E-Book Antitrust Conspiracy

On April 11, 2012, the U.S. Department of Justice (the “DOJ”) commenced litigation against five of the six major book publishers in the United States as well as Apple, Inc.

The Alleged Conspiracy

The Complaint alleges that the publisher defendants, concerned by Amazon.com, Inc. (“Amazon”)’s pricing of newly released and bestselling e-books at $9.99 or less, agreed among themselves and with Apple to raise the retail prices of e-books by taking control of e-book pricing from retailers.

The effect of this agreement is to increase the price consumers pay for e-books, end price competition among e-book retailers, constrain innovation among e-book retailers, and entrench incumbent publishers’ favorable position in the sale and distribution of print books by slowing the migration from print books to e-books.

The Complaint seeks injunctive relief to enjoin continuance and prevent recurrence of the violation.

Simultaneously with the filing, the DOJ also filed a Consent Decree in connection with its settlement of the action with three of the five publishers, Hachette, HarperCollins, and Simon & Schuster. Apple, Macmillan and Penguin refused to settle and the action will continue against them.

In addition, fifteen State Attorney Generals also brought similar suits against the defendants seeking restitution for overcharges to consumers as a result of the alleged price fixing scheme.

All of these suits were consolidated before one judge in the United States District Court for the Southern District of New York. There is a likelihood that all of the State Attorney Generals will join these actions or commence separate actions. Some of these states have already settled portions of their suits, providing for significant restitution for consumers.

Evidence of Conspiracy as Alleged in the Complaint

Until the alleged conspiracy took effect, publishers sold e-books under the wholesale model that had prevailed for decades in the sale of print books.Under this model, publishers typically sold copies of each title to retailers at a discount off the list price. Retailers, who became the owner of these books, were free to determine at what price they would sell the books to consumers. Thus, publishers would recommend prices, but retailers could and frequently did compete for business at discounted prices, which obviously benefited consumers.

Amazon launched its Kindle e-reader service in 2007 and offered a portion of its e-book catalogue for $9.99. To compete with Amazon, other e-book retailers felt they had to match this $9.99 price. As a result, alleges the DOJ, consumers benefitted from Amazon’s low prices.

The complaint alleges that the publisher defendants feared that this $9.99 price would lead over time to the erosion of hardcover book prices and a corresponding decline in revenue, and thus significantly threaten their long term profits.

As a result, executives of the publisher defendants met among themselves, assured each other that they had this common “$9.99 problem”, and that this was a perceived threat to the publishing industry. Accordingly, the publisher defendants agreed to act collectively to raise retail e-book prices.

After Apple’s entry into the e-book business in conjunction with its new iPad device, the publisher defendants and Apple began to work together to counter the “$9.99 problem”, and entered into separate agreements (the “Apple Agency Agreements”). They adopted the “agency model” whereby the publishers would set the prices of e-books sold, Apple would take a 30% commission as the selling agent, and the retailers would be prohibited from discounting the list price for the e-books.

The Apple Agency Agreements enabled the publisher defendants to take control of pricing and raise e-book retail prices. Amazon, after initial attempts to resist the higher e-book prices, capitulated and publicly announced that it had no choice but to accept the agency model.

As a result, alleges the DOJ, retail price competition on the e-book had been eliminated and the retail price of e-books had increased, to the detriment of consumers.

Requirements for a Consent Decree

The Settling Defendants entered into a Consent Decree with the DOJ, which provides for a final judgment being entered against them once the provisions of the Antitrust Procedures and Penalties Act (the “APPA”) are complied with.

In sum, this procedure permits public response to the terms of the proposed Final Judgment and requires the DOJ and the court to consider non-party input.

Summary of Actual Consent Decree

The Consent Decree, entered into by the DOJ and Hachette, HarperCollins and Simon & Schuster, provides that the court may enter the Proposed Final Judgment after compliance with the APPA procedures.

Some of the more pertinent provisions include immediate termination of the Apple Agency Agreements, notification to the DOJ before forming or modifying any joint venture between it and another publisher in relation to e-books, prohibition from enforcing existing agreements with or entering into new agreements containing a ban on retailer discounting, or providing for a “most favored nation” clause, broadly prohibiting publisher defendants from agreeing with each other or any other e-book publishers from raising or setting e-book prices, and from directly or indirectly conveying confidential or competitively sensitive information to any other e-book publisher.


This settlement and Consent Decreewould appear to be a significant benefit to consumers, at least initially, as a result of the decrease in pricing structures.

Only time will tell whether Amazon will be able to reassert its dominant position in the e-market industry (which at one point accounted for around 90% of sales). We have therefore certainly not heard the last of this matter!

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .Copyright 2012 Joel Hecker

13 Mar, 2012 | Posted by: st

New Copyright Office Interim Database Registration

Regulations Adopted

by Joel L. Hecker Esq.

As you know, there are various ways for submitting photographs for copyright registration online.

These include the basic registration claims; claims for unpublished photographs as part of a single collection assuming the copyright claimant must be the same and all of the works must have at least one common author; and for published works as a single work where all copyrightable elements that are otherwise recognizable as self-contained works are included in a single unit of publication, and in which the copyright claimant is the same.

A further registration procedure
exists which permits registration
of a group of published photographs,
all taken by the same photographer
and published within the same
calendar year.

In addition, databases consisting predominately of photographic images, have been subject to
since 1989.

It initially permitted the single registration to cover up to three months’ worth of updates and revisions to an automated database when all of the updates or other revisions are owned by the same copyright claimant, have the same general title, and are similar in general content and organization.

This was used predominately by stock photo agencies to obtain registrations covering all the photos added to their databases within the prior three month period.

- - - - - - - - - -

The Copyright Office has now issued
new interim registration regulations
for a pilot program to evaluate
the conditions under which online
registration of automated databases
consisting predominately of photographs
can and should be made, and to
clarify existing regulations in
connection with this program.

- - - - - - - - - - -

The Visual Arts Division of the Copyright Office will permit participation in this pilot program only to applicants who can utilize the online registration system consistent with the goals of the Copyright Office.

For now, this means registration will initially be limited to photographic databases.

In order to conform to actual practice, the Copyright Office’s regulations are being amended to provide that when an online application is made for registration of an automated database consisting predominately of photographs, the deposit copy shall include all of the photographs claiming to be part of the registration.

Identifying material, such as a list, will no longer constitute a sufficient deposit.

This amendment is also in line with recent court decisions requiring deposit copies of each photograph being registered in order to validate the registration of each such photograph and permit a search for registration based upon a copy of the photograph presumably registered.

The text of the actual regulations may be found in the Federal Register, Vol. 76, No. 15, pages 4072-4075, Monday, January 25, 2011. Further information can be obtained at the Office of General Counsel of the Copyright Office, David O. Carson, or Catherine Rowland, Attorney Advisor, Copyright Office, at GC/I&R, P.O. Box 70400, Washington D.C., 20024, telephone number 202-707-8380, fax 202-707-8366.

After the Copyright Office has had a chance to evaluate the situation it is expected that these interim regulations will become final, or modified to the extent necessary based upon the practical record created between now and then.

All in all, these new regulations are aimed at making registration of automated databases of photographs easier. Any time a government agency makes things easier is, of course, greatly welcomed!

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .Copyright 2012 Joel Hecker

14 Feb, 2012 | Posted by: st

THEFT OR CONSENT? -- Mickey H. Osterreicher: “The case of AFP v Morel, in which Daniel Morel, a photographer in Haiti during the 2010 earthquake, uploaded some of the first photos of the disaster to TwitPic.com by linking them to his Twitter account. Morel claimed that AFP distributed his images without his permission, while AFP argued that in posting his photos Morel had agreed to Twitpic's terms of service, which in turn provided AFP with a license to distribute those images. In the lawsuit, Agence France Presse (AFP), sought a declaratory judgment that it had not infringed upon Morel's copyrights. http://jpgmag.com/news/2012/02/photography-the-law-reading-understanding-your-rights-1.html

17 Jan, 2012 | Posted by: bswenson

The Digitization Quagmire
Copyright Office Studies Mass Digitization Issues

By Joel Hecker, Esq.

The Copyright Office has formally recognized that the marketplace for digital versions of copyrighted books (and by extension, copyrighted photographs) is expanding rapidly. It also understands that libraries and others clearly intend to mass digitize collections for various purposes, as evidenced by the Google Book Project and other litigations.


The Copyright Office believes that issues concerning copyright law and new technologies, which were hotly debated in the Google Book cases, would benefit from further discussion among all stakeholders. To that end, the Copyright Office recently issued a 40 page analysis plus
The court ruled that the proposed class action settlement would inappropriately implement a forward-looking business arrangement which would grant Google significant rights to exploit entire books without permission from copyright owners, while at the same time releasing claims well beyond those alleged in the complaint.
The court also found that the proposed settlement encroached on Congress’s responsibility for setting copyright policy, which traditionally has been the exclusive domain of the legislative branch.

Although photographers were not specifically involved in that lawsuit, the opinion directly affected them since a companion lawsuit brought by the American Society of Media Photographers (ASMP) and others against Google alleged substantially the same wrongdoings and sought substantially the same relief.


It was the intent of the photographer plaintiffs to become a part of any resolution of the initial lawsuit so that any determination as to authors and publishers would thereby also encompass photographers. The photographers’ case is also ongoing the proposed settlement agreement in the authors’ case has been rejected.now that
The Copyright Office recognizes that these developments have sparked public debate on the risks and opportunities that mass book digitization may create. Questions raised by the Copyright Office include, as stated in the Analysis:
What mass digitization projects are currently underway in the United States?
What are the objectives and who are the intended beneficiaries?
How are the exclusive rights of copyright owners implicated?
What exceptions or limitations may apply, to whom, and in what circumstances?
To the extent there are public policy goals at issue, what could Congress do to facilitate or control the boundaries of mass digitization projects?
Would orphan works legislation help? Are efficient and cost-effective licensing options available?
Could Congress encourage or even require new licensing schemes for mass digitization?
Could it provide direction and oversight to authors, publishers, libraries, and technology companies as they explore solutions?


The Analysis concludes that there is now sufficient information to undertake an intense public discussion about the broader policy implications of mass book digitization. By necessity, this discussion must address the relationship between the emerging digital marketplace and the existing copyright framework.

A key preliminary consideration is the extent to which existing digitization projects are already underway. In addition, whether the copyright owners are (or will be) in a position to offer possible market solutions for mass digitization projects should be considered.

Another concern is how to apply the existing copyright framework to the capture, collection, and preservation of “born digital” works, such as electronic books (“ebooks”) and digital photographs and other visual artworks that might be incorporated in those books. The number of these works available in the commercial marketplace has been expanding rapidly.


All these questions apply equally to orphan works as well as to works where the copyright owner is known and locatable. In the context of copyright law, the term “orphan work” generally means a work for which the copyright owner cannot be identified or located by a good faith user for the purpose of requesting permission. The Analysis acknowledges that the orphan works problem is much more extreme in the area of photography than books because the title page of books routinely identifies the author, publisher and date of publication, while photographs often lack any copyright or ownership indicia.

In 2008 as a result of the Copyright Office’s 2006 Orphan Works Report, Congress came close to adopting a consensus bill. The Analysis notes that that proposed legislation is a good starting point for the orphan works discussion, and going forward, that Congress may want to explore orphan works in the context of large-scale digitization projects.

The Analysis also discusses benefits and detriments to various options for licensing arrangements, including direct licensing between digitizers and authors or publishers on an individual basis, mandatory or voluntary collective licensing between organizations authorized to grant rights and collect royalties, and statutory licensing. The Analysis does not take a position either way on any of these issues; instead it advances arguments for and against each potential licensing scheme.


This will clearly be a complex and ongoing dialogue amongst the various stakeholders. The implications of any final resolution may profoundly impact the photography industry as we know it today. Accordingly, I suggest each of you should keep abreast of these discussions and events, and actively participate in the dialogue. You therefore may make a difference in the decision-making process.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .Copyright 2012 Joel Hecker


23 Nov, 2011 | Posted by: st

Possible Copyright Infringement

Small Claims Alternative

The Copyright Office has been asked by Congress to study the obstacles which face small copyright claims disputes and whether there can be alternatives to provide real justice in such situations.

This is in response to the recognition that not all copyright owners have the same resources to bring a copyright infringement lawsuit in Federal Court to protect their interests given the fact that such litigation may require substantial time, money and effort.

This is particularly so where the infringement has caused a relatively small amount of economic damage to the copyright owner and where statutory damages and attorneys’ fees may not be available at all or cannot be recovered until after the copyright owner has engaged in a potentially long court battle that requires the copyright owner to advance the costs as they are incurred.

Accordingly the Copyright Office is now undertaking a study to:

1. Assess the extent to which authors and other copyright owners are effectively prevented from seeking relief in Federal Court from infringements due to the effective constraints in the current system; and

2. Furnish specific recommendations, as appropriate, for changes in administrative, regulatory, and statutory authority that will improve the adjudication of small copyright claims and thereby enable all copyright owners to more fully realize the promise of exclusive rights enshrined in our Constitution.

The initial Notice of Inquiry from the Copyright Office seeks comments from the general public and copyright owners on how copyright owners have

-- handled these small copyright claims in the past,
-- the obstacles they have encountered,
-- the benefits of using Federal District Courts to adjudicate these claims,
-- and any potential alternatives to the current legal system that could better accommodate these claims.
The Copyright Office expects, over the next two years, to seek additional comments, conduct roundtables or hearings and generally meet with those persons who have an interest.

The Notice of Inquiry is now available at www.copyright.gov/docs/smallclaims/, where you can find a submission form to submit comments.
The deadline for comments on this round is January 16, 2012.

I encourage all of you who have had experiences in copyright infringement claims of relatively small economic value to submit your comments in an attempt to try and fix the system.

This is certainly a welcome development for photographers and other copyright owners who have been faced with the inability to effectively pursue copyright infringements because of the cost of pursuing claims of relatively small amounts.

© Joel L. Hecker, 2011
Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .

26 Oct, 2011 | Posted by: st

New Test for Injunctive Relief in Copyright Infringement Cases Adopted by Ninth Circuit

The Copyright Act of 1976 authorizes courts to grant preliminary and final injunctions on such terms as the court may deem reasonable to prevent or restrain copyright infringements.

The Ninth Circuit Court of Appeals, which covers most of the western region of the United States, has now agreed with the Second Circuit Court of Appeals (covering New York, Connecticut and Vermont)that a change in the prior test for granting injunctive relief is mandated as a result of the United States Supreme Court decision in eBay, Inc. v. MercExchange, L.L.C.

As a result, this new test will undoubtedly be uniformly accepted by all the other Circuit Courts of Appeal, thereby establishing it as a new national standard for injunctive relief in copyright infringement cases. The Ninth Circuit opinion is in Perfect 10 v. Google, Inc. and the Second Circuit opinion is in Salinger v. Colting.

Prior Test for Injunctive Relief

The long-standing general test to determine whether or not an injunction should be issued in copyright infringement cases required both a finding of (a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly towards the party requesting preliminary relief.

This remains the general overall standard.

On the second prong of this test, under the prior standard once a plaintiff established a likelihood of success on the merits (that there was indeed the probability of an infringement of a registered copyright), the only additional requirement was a showing that the plaintiff would be irreparably harmed absent a preliminary injunction.

Traditionally, before these eBay, Salinger and Perfect 10 decisions, the courts presumed that once a plaintiff was found to be likely to prevail on the merits of the copyright claim, the plaintiff also was presumed likely to suffer irreparable harm unless an injunction was issued.

This part of the test has now been changed.

Courts previously applied this presumption in several ways. They either held that the allegations of irreparable injury need not be very detailed because such injury was normally presumed under the old test when a copyright was infringed, or that the presumption applied automatically and was irrefutable. Under either of these circumstances, before the eBay, Salinger and Perfect 10 decisions, the courts nearly always issued injunctions as a matter of course in copyright infringement cases once there was such a finding of likelihood of success on the merits.

This process is no longer good law.

New Test for Injunctive Relief

The Ninth Circuit Court in Perfect 10 affirmed the District Court’s holding that Perfect 10 had not shown it was likely to suffer irreparable harm in the absence of injunctive relief, as well as failing to satisfy any of the other requirements for a preliminary injunction.

In light of the eBay decision and the Second Circuit’s interpretation that eBay applies to copyright as well as patent cases, the Ninth Circuit specifically overturned its prior long-standing test which a plaintiff was presumed to suffer irreparable harm once the plaintiff made a strong showing of likely success on the merits.

Although the eBay decision only concerned a request for a permanent injunction, the Ninth Circuit, along with the Second Circuit opinion in Salinger, both extended the ruling to preliminary injunctions as well. They held that the standard for a preliminary injunction is essentially the same as for a permanent injunction with the exception that the plaintiff for a preliminary injunction must show a likelihood of success on the merits rather than actual success.

In sum, the court concluded that the Ninth Circuit’s prior long-standing rule was clearly irreconcilable with the Supreme Court’s decision in eBay and has therefore been “effectively overruled”.


With the new test presumably now accepted as the uniform rule across the nation, it will obviously be more difficult to obtain injunctive relief regardless of where in the United States a copyright infringement case is brought. This new balancing test will undoubtedly make it more difficult to enforce copyright rights since the mere threat of injunctive relief, a potent weapon indeed, is often sufficient in and of itself to compel the infringer to negotiate in good faith.

Only time will tell how this will all play out in practice.

© Joel L. Hecker, 2011

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .

03 Aug, 2011 | Posted by: st

Court Holds

Removal of Photo Credit

-- a DMCA Violation

A major problem photographers encounter is how to proceed against an infringer who removes a photo credit from the photograph since such removal is not considered one of the elements of copyright infringement.

A recent court decision has now clarified this situation in favor of the photographer.

The decision in Peter Murphy v. Millennium Radio Group LLC; Craig Carton; Ray Rossi, on appeal to the United States Third Circuit Court of Appeals, reversed the New Jersey United States District Court in interpreting the key provision of the Digital Millennium Copyright Act.
In this case, Peter Murphy was hired by the magazine New Jersey Monthly (“NJM”) to take a photo of Craig Carton and Ray Rossi who, at the time, were the hosts of a radio show on WKXW, a radio station owned by Millennium.
NJM used the photo to illustrate an article in its “Best of New Jersey” issue, naming Carton and Rossi “best shock jocks” in New Jersey. The photo depicted them standing, apparently nude, behind a WKXW sign.

An employee of WKXW then scanned Murphy’s copyrighted image and posted the resulting electronic copy to the WKXW and another website.
The resulting scanned and posted image cut off part of the caption referring to the quote “Best of New Jersey” as well as eliminating NJM’s gutter credit (a credit placed in the inner margin or “gutter” of a magazine page ordinarily printed in a smaller type and running perpendicular to the relevant image on the page), which identified Murphy as the author of the image.
The WKXW website invited visitors to alter the image using photo manipulation software and to submit the resulting versions to WKXW, which resulted in the posting of 26 of these altered submissions.
After Murphy demanded that the alleged infringement cease, Carton and Rossi made him the subject of one of their shows at which time they, claimed Murphy, defamed him in a number of ways. This defamation claim was in addition to his copyright infringement claims.

The DMCA was passed in 1998 to, among other reasons, address the perceived need of copyright owners for legal sanctions to enforce various technological measures that have been adopted to prevent unauthorized reproduction of copyrighted works. The best known provision of the DMCA grants a cause of action to copyright owners for the circumvention of a technological measure that effectively controls access to a work.

One of the best known examples of this is where a movie studio encrypts a DVD so that it cannot be copied without consent and an individual uses his own software to crack the encryption, thereby resulting in the ability to make copies without permission. In such a situation, a separate cause of action now exists for such circumvention of the encryption.

Section 1202(c) of the DMCA includes in its definition of “copyright management information” the name of and other identifying information about the author of a work. As a result, Murphy contended that the NJM photo credit identifying him as the author of the image is copyright management information under the DMCA because it is “the name of the author” and was “conveyed in connection with copies of the image”.

The Third Circuit Court of Appeals analyzed the statute as a whole, reviewed other court decisions and reviewed the legislative history of the DMCA. The court held that a cause of action under Section 1202 of the DMCA potentially lies whenever the types of information listed in the statute and conveyed in connection with copies of a work is falsified or removed, regardless of the form in which that information is conveyed. In this case, the mere fact that Murphy’s name appeared in the printed gutter credit did not prevent it from qualifying as copyright management information. Accordingly, it was within the protection of Section 1202 and therefore Murphy could maintain this cause of action for violation of the DMCA.

This clarification, that removal of photo credit may constitute a violation of the DMCA, is welcome news to all copyright owners and especially to photographers who now have another arrow in their quiver to pursue copyright infringes.

© Joel L. Hecker, 2011

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .

22 Jun, 2011 | Posted by: st

Photographer Successfully Sues

Appropriation Artist for

Copyright Infringement

By Joel L. Hecker,Esq

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Richard Prince, the well known appropriation artist, his gallery, and the gallery’s principal, have all been found to be guilty of copyright infringement in connection with Prince’s paintings which copied professional photographer Patrick Cariou’s copyrighted photographs of Rastafarians in Jamaica. This important case was brought in the Federal Court in New York. The court’s decision was rendered on March 18, 2011.
Background Facts:
Cariou spent a considerable amount of time with Rastafarians in Jamaica over the course of some six years. As a result, he gained their trust and was able to take their photographic portraits. In 2000, he published a book of his Rastafarian photographs titled, Yes, Rasta.

Cariou testified about the creative choices he made (as is customary for professional photographers), including equipment used, staging and composing individual photos and techniques and processes. He was also heavily involved in the layout, editing, and printing of the book.
Prince is a well known and highly successful “appropriation artist.” His work has been shown at numerous museums and other institutions, including a solo show at the Guggenheim Museum in New York City.

Defendant Gagosian Gallery is an art dealer and gallery, which represents Prince and markets his art. Defendant Lawrence Gagosian is the Gallery’s president, founder, and owner.

Between December 2007 through February 2008, Prince showed some of his artwork in St. Barts, including a collage entitled “Canal Zone (2007)” (“Canal Zone”) which consisted of a collage of thirty-five photographs literally torn from Cariou’s book and attached to a wooden backer board. Prince painted over some portions of thirty-five photographs, using some of them in their entirety and some partially. Portions of the collage were also reproduced in a magazine article about Prince’s show at the Gagosian Gallery.

Prince admitted using at least forty-one photos from Yes, Rasta as elements of his Canal Zone paintings.
Fair Use Analysis

The primary defense raised by the defendants was that Prince’s use of the photos was a fair use under the Copyright Act and therefore entitled to protection.
The purpose of fair use is to address the inevitable tension between the property rights established under copyright’s purpose “to promote the Progress of Science and useful Arts” as contained in the U.S. Constitution and the ability of authors to express themselves by referencing the work of others. The doctrine of fair use consists of a four-factor test.

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09 Mar, 2011 | Posted by: psnotes

Another Reason to Timely Register Photos

Ongoing Copyright


As you undoubtedly know, the United States Copyright Act provides that statutory damages and attorneys fees may be awarded to the copyright owner in the event of successful copyright infringement litigation, but only when the copyrighted work is registered with the Copyright Office prior to the infringement or within three months of first publication of the copyrighted work.

Questions have arisen as to what happens when there is a continuing ongoing infringement which commences prior to the registration. That is to say, the infringement first commences more than three months prior to the registration, and continues after the effective date of the registration of the copyrighted work.

Unfortunately, there is no simple answer to this all too common issue, since the result will depend upon where the copyright owner lives or brings the lawsuit! This is so because the various Federal Circuit Courts of Appeals are not in agreement on this very important issue.

A recent decision in the United States District Court for Arizona has confirmed that, at least for the Ninth Circuit Court of Appeals (which covers most of the western part of the United States), statutory damages and attorneys fees will probably not be available in this type of situation.

In that case the court said that the infringements which occurred after the effective date of the registration were not eligible for statutory damages or attorneys fees since, in the opinion of the court, all of the infringing acts constituted one ongoing infringement.

The court made this determination even though there were differing versions of the infringing work. The court found that these changes were not substantial enough, or in its words it could find “no legally sufficient difference” between the infringing works published prior, and subsequent, to the registration of the copyrighted work.

It is unclear what would constitute, at least to that court, a “legally sufficient difference”.

It is also unclear whether other Federal Circuit Courts of Appeals will extend this rule as far as the Ninth Circuit has under a similar fact pattern. For example, the Second Circuit Court of Appeals (which covers New York, Vermont and Connecticut) has used language to the effect that the infringement must be ongoing and without more than trivial interruption. What would constitute more than “trivial interruption” is also still an open issue.

These decisions should certainly act as another wake up call for photographers to timely register their work to avoid the potential of losing eligibility for statutory damages and attorneys fees when their works are infringed, very potent weapons indeed.

© Joel L. Hecker, 2011

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .

27 Oct, 2010 | Posted by: psnotes

Photographer Wins Lawsuit

to Allow Photography

Outside of Federal Courthouse

by Joel Hecker, Esq.

Antonio Musemeci, a software developer who works with the radio show Free Talk Live, and is a member of the Manhattan (New York) Libertarian Party, was arrested by an officer of the United States Department of Homeland Security’s Federal Protective Service on November 9, 2009 while taking photographs of another Libertarian party member who had been handing out pamphlets in front of the United States Courthouse in New York City.
 a big  little business building
The arresting officer took his camera and memory card and charged him with violating a federal statute which places restrictions upon photographing certain federal property. The criminal charge was eventually dismissed and on April 22, 2010 Musemeci filed a lawsuit seeking to enjoin government officials from restricting non-commercial photography in outdoor public areas where pedestrians have an unrestricted right of access. He was represented by the New York Civil Liberties Union.

That case has now been settled with a complete victory to Mr. Musemeci and photographers in general. In the settlement agreement filed on October 15, 2010, FPS agreed to provide a written instruction to its officers and employees engaged in law enforcement, stating that for federal courthouses under its protective jurisdiction, there are generally no security regulations prohibiting exterior photography by individuals from publicly accessible spaces, absent a written local rule, regulation or order.

The instruction will also inform FPS officers and employees that the public has a general right to photograph the exterior of federal courthouses from publicly accessible spaces.

The settlement does not preclude FPS or any other government agency from taking any legally permissible law-enforcement action, including but not limited to approaching any individual taking photographs and asking for the voluntary provision of information such as the purpose of taking the photographs or the identity of the individual, or taking lawful steps to ascertain whether unlawful activity or reconnaissance for the purpose of a terrorist, or unlawful, act is being undertaken.

FPS also agreed to release Musemeci’s memory card which it had seized for use as possible evidence in the initial criminal matter. In addition, FPS will pay Musemeci the sum of $1,500 in damages and $3,350 for his attorney’s fees and costs.

This settlement and directive would appear to clarify what photographers may do when taking photographs of certain federal courthouses, subject to the specified permissible security measures. Photographers need also be aware of local laws or regulations which might apply to taking photographs in public places.

This settlement is obviously a welcome and long-coming development for photographers as well as the public at large.
© Joel L. Hecker, 2010

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .

20 Oct, 2010 | Posted by: psnotes

Stock Agency Arbitration Agreement with Client Binding Upon Photographer

Professional photographers normally have written contracts with their stock photo agencies which spell out the terms of that relationship. The photographers obviously expect to be bound by those terms, especially if a dispute arises between the photographer and agency. On the other hand the photographers rarely give a thought to the agreements the agency submits or negotiates with their clients. In fact, the photographer almost universally does not have any say as to the content of the agency-client agreements.

A recent United States District Court decision in the Southern District of New York will therefore come as a major shock to these photographers. It held that, under certain circumstances, such an agency-client agreement is binding upon the photographer regardless of whether or not the photographer had any knowledge of, or input into, the agency-client agreement.

The case concerns a copyright dispute between a professional photographer and a textbook publisher. The publisher had obtained limited usage rights to the photographer’s copyrighted photographs through three separate stock photo agencies which represented the photographer. The complaint alleges that the textbook publisher exceeded such uses, thereby infringing on the photographer’s copyrights. Additional state law claims for breach of contract, unjust enrichment, fraud, fraudulent concealment, fraudulent inducement, and breach of the duties of good faith and fair dealing were also alleged.

The textbook publisher moved to dismiss certain of the claims on the basis that the contracts between the stock agencies and the textbook publisher contained a clause requiring arbitration of all claims arising out of such relationship with the exception of copyright. Two of the licensing agreements had a similar arbitration clause but the third contract was not, for some reason, submitted to the court.

The photographer contended that he was not bound by the arbitration clause because he was not a party to those agreements, which were only between the agencies and their clients. The court stated that the general rule as to arbitration is that federal courts strongly prefer to honor private arbitration agreements.

The court found that third parties, such as the photographer, may be bound by arbitration agreements to which they are not a signatory in five situations: incorporation by reference, assumption, agency, veil-piercing/alter-ego, and estoppel. In this case, the court found that estoppel applies, stating that a party is estopped (or prevented) from denying its obligation to arbitrate when it receives a direct benefit from a contract containing an arbitration clause. A benefit is direct where it flows directly from the agreement. The photographer conceded that after the textbook publisher signed the licensing agreements with the stock photo agencies, the photographer then received a portion of each licensing fee paid by the textbook publisher. This constitutes a direct benefit from the contract and, as a result, he is estoppel from arguing that he is not bound by the arbitration clauses. Accordingly, the court rejected the photographer’s contentions.

There were other arguments made related to the copyright exception to the arbitration provision which are not relevant here. The key point is that a photographer, where there is no such copyright exception in the stock photo agency agreements with their clients, would appear to have lost his opportunity to sue for copyright infringement in federal court when the uses of his copyrighted photography exceeded those granted in the agency-client contract. The photographer would be forced instead to arbitrate all disputes arising under such contract, and conduct such arbitration in the venue or place chosen by the agency and its client as contained in the contract.

Given the importance of retaining the ability to sue for copyright infringement, photographers clearly need to be aware of the content of the agreements between their stock photo agencies and the agencies’ clients. Otherwise, photographers are going to be bound by terms they never agreed to or were even aware of, to their significant detriment.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com .

© Joel L. Hecker 2010

27 Jul, 2010 | Posted by: photosource

Federal Court

Disallows Improper

Bulk Copyright


Joel L. Hecker, Esq.

It is a regrettable fact that, for a variety of reasons, most photographers do not register their photographic images, thus depriving the photographers and their stock agencies of the right to obtain statutory damages and attorneys fees in connection with copyright infringement claims.

In an attempt to remedy this situation, Corbis and other stock agencies began to offer their contributing photographers an option of transferring copyright to the agency for purposes of copyright registration. After the images were registered, the agency would then reassign the copyright back to the applicable photographers.

To confirm that this practice would hold up, the Picture Agency Council of America (known as PACA) had a dialogue with the Copyright Office in early 2002 in an attempt to obtain official Copyright Office approval of this practice.

On February 12, 2002, the Copyright Office’s Chief of the Examining Division confirmed in writing that the Copyright Office considered the copyright claim
“to extend to the photographs themselves because, assuming that the claimant [owner of copyright] listed at space 4 is the author of the compilation [usually the stock photo agency], an acceptable transfer statement is also provided in space 4 of the form VA. Thus, the Office interprets the claim to extend to the individual photographic authorship for which the names indicated as space 2b of the form VA are the responsible authors.”

The Copyright Office further wrote: “that the Copyright Office preferred, but did not require, the registration application to contain the names of all of the photographers on continuation sheets.”

As a result, Corbis and other agencies continued the practice of registering hundreds of images as part of a single copyright registration application without always separately listing each individual photographer.

Beginning in March 2001 and continuing through December 2006, photographers Marc and David Muench, doing business as Muench Photography, Inc. (“MPI”), licensed approximately 180 of MPI’s images to Houghton Mifflin Harcourt Publishing Company (“HMH”) through Corbis, its stock photo agency. In 2009, MPI sued HMH in the United States District Court for the Southern District of New York, alleging that HMH exceeded the scope and terms of the licenses granted, which acts constituted copyright infringement.

On January 18, 1996, David Muench filed a copyright registration certificate for a collection of unpublished photos, covering 20 of the images at issue. Muench listed himself as the author. Since the individual author of each was listed on the copyright certificate the court found these 20 to be properly registered.

On September 30, 1997, the Muench brothers transferred legal title in their other images at issue to Corbis, solely for the purposes of copyright registration.

Corbis then submitted six copyright registration applications to the Copyright Office which registered several automated databases of photographs, including these Muench images.

Each application form filed by Corbis, listed itself as one author, and listed the names of only three individual photographers “and others”, or “and (number) other photographers”. Corbis did not list MPI, Marc Muench or David Muench as an author of any of the photos contained in the automated databases.

The Court’s Decision

The defendants moved for summary judgment to dismiss the case on the grounds that the photos were not properly registered by MPI since the actual registration certificates did not list MPI as an author (it was one of the “others” listed by Corbis).

The court framed the issue as follows:
The Court is faced with the novel question of whether the registration of an automated database--here, a compilation of photographs by different photographers--by a third-party copyright claimant that has been assigned the rights to the individual works for the purposes of copyright registration registers the individual works thereby permitting the individual photographers to sue for copyright infringement.
The court determined that the copyright registration procedure required information about the copyright claimant, the particular work, and the author of the work. Specifically,” said the court, “the application must include the name and nationality or domicile of the author or authors." When the work at issue is a compilation, the copyright, "extends only to the material contributed by the author of such work."

MPI argued that the text of this section,103 of the Copyright Act, together with case law and the Copyright Office's letter, provide that the registration of a collective work covers the individual works even if the individual authors' names are omitted from the registration form.
The Court rejected this reading of the statute as “misguided”.

No Deference Given to the Copyright Office’s Interpretation

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28 Apr, 2010 | Posted by: photosource

Photographers Commence

Class Action Against

The Google Book Project

As you know, in 2005 the Authors Guild and the Association of American Publishers filed a class action lawsuit against Google in connection with Google’s scanning of books from university libraries, without the consent of the copyright owners of the books scanned. The lawsuit alleged that Google’s acts, as part of the Google Book Search Project, constituted copyright infringement.

Since then, the parties reached a proposed settlement agreement, which was met with substantial opposition. As a result, an Amended Proposed Settlement Agreement was negotiated among the parties and filed with the court. The Department of Justice (DOJ) filed a Statement of Interest concerning this Amended Proposed Settlement, which was generally supportive of the concept but opposed to specific features which the DOJ believed did not provide sufficient protection nor did it satisfy certain anti-trust issues.

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Google is committing massive copyright infringements of visual works similar to its infringements of text-based works (as alleged in the Author’s Guild lawsuit) and that the visual artists must be included in the process.

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The Amended Proposed Settlement specifically excluded almost all photography and graphic art works. As a result, a motion was filed on behalf of the American Society of Media Photographers (ASMP), the Graphic Artists Guild (GAG), the Picture Archive Council of America (PACA), the North American Nature Photography Association (NANPA) and various individual photographers to intervene in the action and thereby have such organizations and the visual artists they represent be included in any resulting settlement.

On November 4, 2009, Judge Denny Chin, who was assigned to the case, denied the motion and refused to permit the intervention, concluding that these visual artists had acted too late (the case was then four years old), and in his view, the case primarily involved textual content and not visual works. Judge Chin stated in his denial of the motion that: “Frankly, in the context of an online database that is searchable using keywords, it makes sense to prioritize the rights of word-based material.”

ASMP disagreed, releasing a statement in which it said that it “believes that the Court’s decision missed the basic truth that a settlement that excludes photographic and other visual material is neither fair nor in the public interest.”

ASMP, GAG, PACA, NANPA, Professional Photographers of America, and individual photographers and graphic artists have now regrouped and on April 7, 2010, they filed their own class action lawsuit against Google, alleging copyright infringement by Google of visual artwork arising out of Google’s Book Search Project. This new case was also assigned to Judge Chin as a case related to the ongoing Authors Guild litigation.

The Photographers’ Complaint

The 21 page complaint alleges that it is “designed to redress the most widespread, well-publicized and uncompensated infringement of exclusive rights in images in the history of book and periodical publishing.” That “evil” is, of course, the Google Book Search Project under which Google is essentially scanning entire library collections and thereby creating dig ital archives of what eventually is intended to be an online database of all of the world’s books.

The proposed class is defined as all persons and entities that own the copyright and/or the relevant exclusive rights in an original visual work published in books and/or periodicals, excluding Google and essentially any person or entity associated with Google.

The complaint also alleges that Google concedes it has scanned more than 12 million books in their entirety and has identified more than 174 million other books it may also reproduce, distribute and publicly display. Furthermore, the complaint alleges that Google uses and plans to continue to use these visual works to attract visitors and advertisers to its website.

All in all, the complaint can be summarized as alleging that Google is committing massive copyright infringements of visual works similar to its infringements of text-based works (as alleged in the Author’s Guild lawsuit) and that the visual artists must be included in the process.

The complaint seeks an injunction to prohibit Google from continuing its Book Search Project as to visual works, as well as actual and statutory damages. However, the obvious intent of this complaint is not to kill the project, but force Google to include visual works in any overall settlement with the Authors Guild.

The newest wrinkle in this ongoing saga is that Judge Chin, nominated for an opening on the U.S. Second Circuit Court of Appeals, and now confirmed by the U.S. Senate, will not preside over the ASMP lawsuit. Another Judge will be assigned to the case as well as any leftover matters pertaining to the Authors Guild suit.

We certainly have not heard the last of these matters.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com.

23 Mar, 2010 | Posted by: photosource

Postage Stamp Photo is

No Longer Fair Use

by Joel Hecker, Esq.

I previously reported on the decision in Gaylord v. United States (United States Court of Federal Claims, decision dated December 16, 2008) which held that the United States Postal Service’s issuance of a 37 cent postage stamp commemorating the 50th anniversary of the armistice of the Korean War, was a fair use and not copyright infringement (PSN January 29, 2009). This decision has now been reversed by the Federal Circuit Court of Appeals, which remanded the case to the Court of Claims for a determination of damages against the government.

The stamp features a photograph of 14 of the 19 stainless steel soldier sculptures that are part of the Korean War Veterans Memorial located on the National Mall in Washington D.C. Plaintiff Gaylord sculpted these 19 soldiers in formation, known as “The Column” and obtained registrations for it from the Copyright Office. He therefore was acknowledged as the copyright owner of the sculpture.

An amateur photographer, John Alli, created a photograph of the sculpture as a retirement gift for his father, who served in the Marine Corps in Korea. In 2002, the Postal Service licensed use of this photograph for $1,500 and incorporated it into the stamp image. The photographer did not seek Gaylord’s permission but did tell the Postal Service that it would need the permission of the owner of the copyright to the sculpture as well as his permission to use his photograph.

The Postal Service, however, also did not seek Gaylord’s permission to depict his sculptures on the stamp and produced approximately 86.8 million stamps between July 27, 2003 and March 31, 2005. Gaylord then sued the Postal Service for copyright infringement.

Both courts agreed that Gaylord owned a valid copyright in the sculpture, that the photographer had access to it when creating his photograph, and that the stamp was substantially similar to the sculpture. Both courts then addressed the fair use defense by analyzing the four fair use factors, but came to different conclusions.

First Fair Use Factor :The purpose and character of the use, including whether the use is of a commercial nature.

The appeals court rejected the lower court’s decision which held that something new had been added to the sculpture, with a further purpose or different character. It found, to the contrary, that the commercial nature of the use, the sale of stamps, was not transformative, noting that the inquiry must focus on the purpose and character of the stamp, rather than that of the underlying photograph. Since the stamp did not reflect any “further purpose” than The Column, the appeals court held the use was not transformative.

The appellate court therefore found that the first factor of the fair use analysis weighed heavily against fair use.

Second Fair Use Factor: The nature of the copyrighted work.

As to the second fair use factor, the nature of the work, the court held that this factor went against fair use since the purpose and character of the stamp and the column were identical. (The lower court had found this factor not to be significant in light of its finding of transformative use).

Third Fair Use Factor: The amount and substantiality of the portion used in relation to the copyrighted work as a whole.

The appellate court agreed with the lower court that, since the stamp depicts 14 of the 19 soldiers statues, it was a substantial taking and therefore weighed against fair use. However, it rejected the lower court’s determination that the qua lity and importance of the statues in the stamp mitigated such finding due to the heightened surrealistic effect which served to obscure the statues.

Fourth Fair Use Factor: The effect of the use upon the potential market for or value of the copyrighted work

The appellate court found no clear error in the lower court’s determination that there was no resulting market harm to the sculpture. The lower court had found that Gaylord made only limited attempts to commercialize his copyright in the sculpture and it was unlikely that the stamp would impact future attempts to commercialize Gaylord’s copyright, because the stamp is just not a substitute for the sculpture. In fact, the lower court’s opinion also suggested the use of the stamp actually increased the value of the sculpture.


Taking these factors together and especially the lack of any transformative aspect, the appeals court rejected the lower court’s finding that use of the stamp was a fair use under the Copyright Act, and reversed the decision, finding such acts constituted an infringement of the copyright in the sculpture. As is evident, the facts of the case are extremely important in determining a fair use defense. The single most important aspect is whether the use is transformative. If it is, the fair use defense will almost always succeed. If not, as found by the appellate court, it will almost always fail.

© Joel L. Hecker, 2010

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com.

09 Feb, 2010 | Posted by: photosource

Two Decisions Confirm

Copyright Protection

For Product Photos

By Joel Hecker, Esq.

On November 5, 2009, the United States Court of Appeals for the Seventh Circuit reversed an erroneous decision out of the United States District Court in Chicago, and on January 14, 2010, a United States District Judge in New York reached the same conclusion, that photographs of products taken on assignment can be protected by the photographer under copyright law.

Background Facts

The Seventh Circuit case, Daniel P. Schrock v. Learning Curve International, RC2 Brands, Inc, and HIT Entertainment, concerned the popular “Thomas & Friends” train characters. HIT licensed the right to make toy figures of its train characters to defendant Learning Curve (now owned by defendant RC2 Corporation). Learning Curve then retained Schrock to take photographs of its toys, including those based upon the Thomas & Friends properties.

Schrock granted limited rights to Learning Curve to use his resulting photos of Learning Curve’s products. This arrangement continued on a regular basis for about four years. Schrock’s invoices, eventually totaling more than $400,000, were paid in full.

Learning Curve stopped giving work to Schrock in 2003, but continued to use some of Schrock’s photos in its printed advertising, packaging and on the internet. In 2004, the photographer registered his photographs with the Copyright Office and obtained copyright registration certificates in his name. He then brought his lawsuit for copyright infringement.

On defendants’ motion for summary judgment, the primary issue was whether Schrock’s photos, as derivative works of the actual toys, were sufficiently original to obtain copyright protection, and whether defendants’ consent was required for Schrock to register the photos with the Copyright Office.

The district court, focusing on the derivative issue, granted summary judgment and threw out the case.

The Copyright Act

A derivative work is defined in the Copyright Act as a:

“…work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications, which as a whole represent an original work of authorship, is a ‘derivative work.’”

The appellate court assumed that Schrock’s photos came within the definition of derivative works since they “recast, transformed or adopted” the three dimensional toys into a different, two-dimensional medium. But that was only the beginning of the analysis.

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20 Oct, 2009 | Posted by: photosource

President Appoints

IP Czar

On the October 13, 2008 President Bush signed into law the 25 page “Priority Resources Organization for Intellectual Property Act of 2008," which is more commonly known as PROP IP.

This law, among other things, created a new bureaucracy headed by an Intellectual Property Enforcement Coordinator (IPEC) to be appointed by the President with the advice and consent of the Senate. The position has informally been referred to as the “Copyright Czar” or “IP Czar.”

The duties of the IPEC
under the Act are extensive, including the creation of a joint strategic plan to deal with worldwide counterfeiting and piracy, and chairing an Advisory Committee consisting of Senate confirmed representatives of government departments and agencies involved in intellectual property enforcement. An annual report must also be prepared by the IPEC and submitted to the Congress and disseminated to the public at large.

On September 28, 2009 President Obama appointed Victoria Espinel to the position of IPEC, subject to confirmation by the Senate.

Ms. Espinel is an expert on international copyright enforcement. She was the first Assistant United States Trade Representative for Intellectual Property and Innovation at the Office of the U.S. Trade Representative and served as the Chief U.S. Trade Negotiator on IP subjects. She has also served as an advisor on IP issues to various House of Representatives and Senate committees, taught IP Law, and is the founder and president of Bridging the Innovation Divide, a not-for-profit entity.

The Appointment has been praised by various rightsholder groups representing the photography, music, entertainment, and other affected industries.

© Joel L. Hecker, 2009

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com.

09 Sep, 2009 | Posted by: photosource

For photographers:

If you’ve been questioned by security guards, uniformed policemen, pranksters, off-duty policemen; detectives, or vigilantes, -- here’s where you can go for a review of your First Amendment Rights:


02 Sep, 2009 | Posted by: photosource



by Joel Hecker, Esq.

In my prior July column I reported on July 8, 2009 a motion by photographer Mannie Garcia to intervene in the action concerning the use of an illustration by poster artist Shepard Fairey which copied a photograph of then Presidential candidate Obama on posters, t-shirts and other material.

Garcia now claims in his court papers that in fact he was always the copyright owner of the images, that he was never an employee of AP, and that he never agreed to transfer his copyright to AP. Specifically Garcia now states that he never signed AP’s freelancer contract because he did not agree to its terms. The Court granted his motion to intervene.

AP has now responded to Garcia’s allegations in specific detail. AP claims, insofar as copyright ownership of the Obama photos, that Garcia was indeed an employee of AP. In support of its position, AP alleges in its cross-claim against Garcia that:

- In early March, 2006 Garcia became a freelance photographer for AP, at which time he signed a written agreement whereby he transferred to AP all copyrights to the assigned work.

- On March 29, 2006 Garcia submitted a written application for employment, seeking to be hired as an AP staff photographer on a full-time basis.

- In connection with this application, Garcia completed certain documentation that are only completed by employees, including that, if hired, he would be an employee-at-will.

- Garcia also completed other employee related documents.

- He also signed an agreement acknowledging that his employment as a staff photographer for AP would commence on April 3, 2006 at a stated salary which was to be based on a 40 hour work week.

- Garcia also became eligible to join the News Media Guild and became subject to the Guild’s collective bargaining agreement which covered AP employees (but not freelancers).

- Garcia was given photo assignments and listed as a staff photographer.

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29 Jul, 2009 | Posted by: photosource

Obama Hope Poster Litigation -
Photographer Intervenes

By Joel Hecker, Esq.

In my prior column, May 7th, 2009, I discussed this litigation concerning the use of an illustration by poster artist Shepard Fairey which copied a photograph of then Presidential candidate Obama on posters, t-shirts and other material. At the time the article was written, AP claimed it was the owner of the photos in question as a work made for hire by the photographer Mannie Garcia. In support, AP claims Garcia was an employee of AP when the photographs were created. At the time the lawsuit was filed, Garcia himself had not made any claims and was not part of the legal process. Garcia was previously quoted as saying to the effect that he was not going to do anything to subvert Obama’s presidency.

Apparently, he has now changed his position. As a result, on July 8, 2009, Garcia filed a motion with the court to intervene in the action. He now claims that in fact he was always the copyright owner of the images, that he was never an employee of AP, and that he never agreed to transfer his copyright to AP. He therefore now contends that, unless he is permitted to join the lawsuit as a party, he will be prejudiced whatever the outcome. He reasons that if Fairey wins Garcia will be denied his rights, while if AP wins then it will receive the copyright damages Garcia is entitled to. Specifically Garcia states that he never signed AP’s freelancer contract because he did not agree to its terms.

While it is unclear at this point whether Garcia or AP is the rightful copyright owner of the photograph in question (you will recall the parties cannot even agree which of the two underlying photographs credited by Garcia was the basis for the posters), it is clear both contend that Fairey’s actions constitute copyright infringement of such photograph.
His intervention makes it more complicated, however, since the court would need to first determine who has the right, or standing, under copyright law to pursue the case in the first place. The case is now in the discovery stage and a status conference is presently scheduled before the presiding judge in the Fall 2009.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com. © Joel L. Hecker, 2009

27 May, 2009 | Posted by: photosource

Are Your Copyrights Protected?

by Joel Hecker, Esq

A primary purpose of estate planning is to insure that assets and property are distributed as intended. Although laws vary from state to state, one general concept is universal: the more organized you are, the easier it is for your executor to marshal your assets and to make sure your wishes are honored in a timely fashion.

By the very nature of a professional photographer’s work and creative efforts, one of the most valuable assets is ownership of copyrights to his or her body of work. Although copyright is an “intellectual,” as opposed to a “physical”asset, for estate purposes, it is treated in the same way as any other asset.

Copyright is a bundle of “intellectual” property rights, which include the rights to reproduce, distribute, display, and perform the copyrighted work, and prepare derivative works based upon it. It does not include the original work which is a “physical” asset. Therefore, while you may identify your particular works as part of bequeaths in your Will, that does not necessarily include the rights under copyright to the works, which are separate assets.

Accordingly, for example, you may leave original prints, chromes or digital files to one person, and the right to make reproductions and commercially exploit the photos (copyright rights) to someone else. Moreover, the right to receive royalties on your work usually flows from copyright ownership and not from ownership of the original.

Take a moment to think about whether you know how many copyrights you own and which, if any, copyrights are registered with the Copyright Office in Washington D.C. If you cannot identify what your copyrights are, or the location of the original negatives, chromes and/or digital files from which reproductions can be made, think of the problems you will be causing your executor!


The simple answer is to get organized. This should encompass all relevant information, including a list of all your intellectual property, either by individual images, or category of work, or by job or assignment. Information about subject matter, date of creation, date of first publication, or registration information with the Copyright Office, all known uses of the images, all payments received, if it is subject to any licenses (including stock photo agreements), what royalties are due and when should be made available. The physical location of the work should also be accessible. Any appraisal or valuation that you have (or might want to obtain) would be very helpful.

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06 May, 2009 | Posted by: photosource

Obama Hope Poster

Is it Copyright Infringement?

By Joel Hecker, Esq.

A new case
in the United States District Court of New York, Shepard Fairey v. The Associated Press, may be the basis for an important “transformative” analysis of fair use. It concerns Fairey’s creation of an illustration of President Obama which was used in a series of posters, the most widely known of which is the “Hope Poster.”

Shepard Fairey is a 39-year-old artist who lives and works in Los Angeles. He copies part or all of existing photographs or artwork, a practice he calls “visual reference.” Photographers consider this “appropriation art” to be blatant copyright infringement.

AP, a not-for-profit membership cooperative corporation, is one of the largest news organizations in the world.

The Underlying Photo

One unusual aspect of the case is that the underlying photo used by Fairey is in dispute. Mannie Garcia, a professional photographer employed by AP, created a series of images at a 2006 event about Darfur held at the National Press Club. The actor George Clooney was sitting beside the then Senator Obama.
Fairey claims he used a cropped version of a photo of both Clooney and Obama. AP claims the underlying photo, also taken by Garcia, is only of Obama and, when overlayed onto Fairey’s illustration, shows the two are exactly the same.

The Posters

Fairey claims his illustration and posters were part of a series of iconic works he created to support the presidential candidacy of Obama.
The first one, Obama Progress, is identified by Fairey as an abstract graphic rendition of Obama gazing up and to the viewer’s right, colored in a palette of red, white and blue, with the word “Progress” in capital letters beneath the image of Obama. Fairey then created a second poster with his same illustration, which became known as Obama Hope since the word “Hope” replaced “Progress.” By the summer of 2008, Obama Hope had become, according to Fairey, a “ubiquitous symbol” of Obama’s candidacy and pervasive presence across America.

The third poster, entitled “Obama Hope Mural,” was created for an art exhibition held in Denver during the Democratic National Convention, in conjunction with Obama’s nomination for President. The fourth poster, Be The Change, has the Obama illustration flanked by images of the United States Capital Building and White House with a cheering crowd beneath the illustration.
Immediately following the election, Fairey created a fifth image, entitled Yes We Did with the Obama illustration in the upper center with additional visual elements. Finally, on January 17, 2009, a large-format, hand stenciled collage incorporating the Hope poster with other visual material, was unveiled at the Smithsonian Institute’s National Portrait Gallery in Washington, D.C.
Fairey’s Complaint
The lawsuit seeks a declaratory judgment that Fairey’s illustration of Obama and posters incorporating this illustration constitute fair use under the Copyright Act and do not infringe any AP copyright.
Fairey claims that he used the Garcia photo of Obama and Clooney solely as a visual reference, which transformed the literal depiction contained in the photo into a “stunning, abstracted and idealized visual image that creates powerful new meaning and conveys a radically different message that has no analogue in the original photograph.”

Fairey further claims that th e original photo previously published depicted a factual occurrence, while his image was fictional and highly creative, that only a portion of the photo was used (with Clooney cropped out), and therefore the amount of the taking was reasonable.
Finally, Fairey claims use of the photo in the illustration imposed no significant or recognizable harm to the Garcia photo, or any market for, or derivative of, it. In fact, to the contrary, Fairey claims the posters have greatly enhanced the value of the photo.

AP’s Counterclaims

On March 11, 2009 AP filed its answer to the complaint, as well as counterclaims for direct and contributory copyright infringement. The gist of the counterclaims is that Fairey was fully aware that the Garcia photo used was copyrighted, and that Fairey copied all the distinctive and unequivocally recognizable elements of the photo in their entire detail (including the heart and essence of it), as well as its patriotic theme.
AP also alleges that Fairey’s profits on his illustrations already exceed $400,000, with a great deal more expected. AP further claims that Fairey has a prior history of wilful disregard for the property rights of others and cites numerous instances of his misappropriating works from other artists. These acts and the failure to give any attribution to the original creator, says AP, constitute a consistent pattern of copyright infringement by Fairey and proves Fairey was acting in “bad faith.”
AP compares these claims to Fairey’s highly sophisticated understanding of licensing and a highly protective copyright protection program of his copyright and trademarks, as well as his work. AP alleges specific examples to support this contention.
AP also contends that Fairey’s copyright registration certificates for his various Obama works constitute a fraud upon the Copyright Office, since he did not acknowledge that the illustrations are derived from the Garcia pre-existing work. Therefore, according to AP, these registrations should be cancelled.

This case has the potential for far reaching importance in interpreting the concept of fair use in copyright as it applies to appropriation art. At the moment, it is unclear how far an artist can go when using copyrighted work in the name of art without it being considered to be copyright infringement.

Most interested photographers believe that this direct taking of Garcia’s photo constitutes copyright infringement, and that this is not even a close call. In any event the case will be watched closely by the photography and artistic community because it may determine how far someone who is, or claims to be, an artist can use an existing copyrighted photograph as reference for new art.

© Joel L. Hecker, 2009

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com.

17 Feb, 2009 | Posted by: photosource

Paris Fashion Show Photos . . .


by Joel Hecker, Esq

A recent decision on the fair use issue offers an interesting window into how a court analyzes a potential fair use defense. The plaintiffs, in SARL Louis Feraud International v. Viewfinder, Inc., are French corporations which design and market high-fashion clothing. Defendant Viewfinder and its two principals who are professional photographers, operate an internet fashion magazine called FirstView.com. Plaintiffs exhibit their new fashion clothing as part of yearly fashion shows in Paris under the auspices of the French Federation of Fashion.

Viewfinder has a website on which it posts photographs of the current season’s fashions. This may be viewed only by purchasing a subscription. However, photographs of past collections are available for free. It also sells photographs of runway shows to various other publications, but does not sell clothing or designs. Plaintiffs, on the other hand, sell clothing but not photographs.

Plaintiffs obtained a default judgment in a French court and brought an action in the United States District Court in New York to enforce it. The District Court initially dismissed the action, finding that enforcing the French judgment would violate the First Amendment protection available under the fair use doctrine.

That decision, however, was reversed on appeal and the case sent back to see if there was sufficient evidence to determine whether fair use applied, and if so, whether French law had an equivalent protection to our fair use.

Plaintiffs thereafter moved for summary judgment on the belief that fair use could not possible apply. The District Court analyzed the fair use factors, as follows:

First Fair Use Factor.
(The purpose and character of the use)

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27 Jan, 2009 | Posted by: photosource

Postage Stamp Photo

is Fair Use...

by Joel Hecker,Esq.

A new case arising
out of the United States Postal Service’s issuance of a 37 cent postage stamp commemorating the 50th anniversary of the armistice of the Korean War, has resulted in a decision upholding the claimed infringement to be a fair use. The case is Gaylord v. United States (United States Court of Federal Claims, decision dated December 16, 2008).

The stamp features a photograph of 14 of the 19 stainless steel soldier sculptures that are part of the Korean War Veterans Memorial located on the National Mall in Washington D.C.

Plaintiff Gaylord sculpted these 19 soldiers in formation, known as “The Column” and obtained registrations for it from the Copyright Office. He therefore was acknowledged as the copyright owner of the sculpture.

An amateur photographer, John Alli, created a photograph of the sculpture as a retirement gift for his father, who served in the Marine Corps in Korea.

In 2002, the Postal Service licensed use of this photograph for $1,500 and incorporated it into the stamp image. The photographer did not seek Gaylord’s permission but did tell the Postal Service that it would need the permission of the owner of the copyright to the sculpture as well as his permission to use his photograph.

The Postal Service, however, did not seek Gaylord’s permission to depict his sculptures on the stamp. The Postal Service, produced approximately 86.8 million stamps between July 27, 2003 and March 31, 2005. Gaylord then sued the Postal Service for copyright infringement.

The court, after determining that Gaylord owned a valid copyright in the sculpture and that there was no dispute that the photographer had access to it when creating his photograph, found that the stamp was substantially similar to the sculpture. The court then addressed the fair use defense by analyzing the four fair use factors.

First Fair Use Factor :The purpose and character of the use, including whether the use is of a commercial nature.

The court held that the use added something new to the sculpture, with a further purpose or different character, and thereby altered the original work with new expression, meaning or message. Therefore, it was transformative since the stamp provided a different expressive character.

The court said the sculpture was a three dimensional sculptural snapshot of a group of soldiers on an undefined mission during the Korean War, captured as a single moment in time. The photograph transformed this expression and message by creating a surrealistic environment, with snow and subdued lighting where the viewer is left unsure whether he is viewing a photograph of statues or actual human beings. The Postal Service additionally altered the expression by making the color of the photograph even grayer, creating a nearly monochromatic image. The court therefore found that the first factor of the fair use analysis weighed heavily in favor of fair use.

Second Fair Use Factor: The nature of the copyrighted work.

The second fair use factor carried little weight under the fair use analysis because the stamp was not created in an effort to exploit the virtues of the sculpture.

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14 Jan, 2009 | Posted by: photosource

NOT FOR MINORS. Who Should Sign the Model Release? - Because minors can later disaffirm (void) contracts, you need the consent of a minor's parent or guardian
before using the minor's name or likeness for commercial purposes.

23 Dec, 2008 | Posted by: photosource

When the Defendent declares Bankruptcy . . .

Wilful Copyright


By Joel Hecker, Esq.

We all know that these are uncertain economic times. Photographers may be faced with clients, or others, who fail to pay outstanding bills or who just use photographs without consent.

When the photographer pursues the matter, there is a good possibility that some of these entities will wind up in Bankruptcy Court. A recent case has clarified when the debtor will not be discharged in Bankruptcy Court when the photographer has a claim for wilful copyright infringement.

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“To prove wilful infringement, the Plaintiff must
prove by a preponderance of the evidence that the
Defendants knew that they were infringing the
Plaintiff’s copyrights or that they acted with reckless
disregard as to whether they were doing so…”
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The case, In the Matter Barboza, was decided by the United States Court of Appeals for the Ninth Circuit on appeal. The case involved the distribution of Spanish language films. After a trial, a jury found the defendants guilty of wilful copyright infringement, awarding statutory damages of $75,000 for each of ten videos, plus costs and attorney’s fees, in all totaling $893,077.

The jury returned a guilty verdict after the judge instructed the jury that the following was the test to determine liability for wilful copyright infringement:


“To prove wilful infringement, the Plaintiff must prove by a preponderance of the evidence that the Defendants knew that they were infringing the Plaintiff’s copyrights or that they acted with reckless disregard as to whether they were doing so. If you conclude that the Defendants were reasonable and in good faith believed that they were not infringing the Plaintiff’s copyrights, then you may not find that they wilfully infringed those copyrights.”

This instruction is a customary one in a copyright infringement law suit. The Plaintiff must prove either that the defendant knew that they were infringing, or that the defendant acted with reckless disregard as to whether they were doing so. The jury in this case did not indicate which of the two grounds led to its verdict since either ground was sufficient.

After judgment was entered, the defendant filed for bankruptcy. The plaintiffs requested that the bankruptcy court have the judgment declared nondischargeable in bankruptcy since they claimed it was a debt resulting from a “wilful and malicious” injury under the statute.

The Circuit Court of Appeals analyzed the difference between the tests to determine wilful copyright infringement under the Copyright Act and for nondischargeability under the Bankruptcy Code. Under the Copyright Act, the test is the one set forth above (knowing acts or wilful disregard). The Bankruptcy Code test, however, is more stringent. It prohibits discharge of a debt for “wilful and malicious injury by the debtor.” Accordingly, there must be a finding of both wilfulness and “malicious injury.”

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29 Oct, 2008 | Posted by: photosource

Orphan Works . . .

Is Your Copyright

Still Safe?

On September 29, 2008, the U.S. Senate passed its version of an Orphan Works bill, S. 2913, entitled the “Shawn Bentley Orphan Works Act of 2008.” This occurred by unanimous consent through a procedure called hotlining, which is utilized to move “non-controversial” legislation quickly through the Senate. Obviously the Senate seems to have a different definition of “non-controversial”given the extensive vocal opposition to it by a number of photography copyright owners and organizations.

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“If neither the Senate bill nor the House version or some other
bill on Orphan Work becomes law in the current Congress, it
undoubtedly will be brought up again in the spring.

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The final bill is similar to the one which had previously been debated in the Senate, with the addition of certain concessions made to favor copyright holders. The bill now contains a method to determine what would constitute a “diligent effort,” in connection with the required search to find a copyright owner. A search will now qualify when a diligent effort is made “that is reasonable under the circumstances to locate the owner of the infringed copyright prior to, and at a time reasonably proximate to, the infringement.”

This diligent effort requires, at a minimum, the following:

• A search of the Copyright Office records available to the public through the Internet, which are relevant to identifying and locating copyright owners, provided there is sufficient identifying information on which to construct a search;

• A search of reasonably available sources of copyright authorship and ownership information and, where appropriate, licensor information;

• Use of appropriate technology tools, printed publications, and where reasonable, internal or external expert assistance;

• Use of appropriate databases, including databases that are available to the public through the Internet.


The diligent efforts would also require “any actions that are reasonable and appropriate under the facts relevant to the search, including actions based on facts known at the start of the search and facts uncovered during the search, and including a review as appropriate of Copyright Office records not available to the public through the Internet that are reasonably likely to be useful in identifying and locating the copyright owner.”

The Copyright Office
will still be required to draft recommended practices for conducting these searches. The bill also encourages the creation of private searchable registries through databases to be created with the Copyright Office to certify at least two such databases. The Act will become effective, if it becomes law in its present form, 30 days after such certification, or January 1, 2013, whichever comes first.

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Obviously the Senate seems to have a different
definition of “non-controversial”given the extensive
vocal opposition to it by a number of photography
copyright owners and organizations…

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What the House of Representatives will do is uncertain at this point. As of this writing, the members of House are either campaigning for reelection or otherwise occupying themselves on other matters, including those pertaining to the financial crisis.

The pending House bill, which has yet to be acted upon, was viewed by photographers as being more favorable to copyright owners than the version passed by the Senate since the House version would require an infringer to file a notice with the Copyright Office when the infringer intended to use what would be considered to be an Orphan Work.

If neither the Senate bill nor the House version or some other bill on Orphan Work becomes law in the current Congress, it undoubtedly will be brought up again in the spring. Given the broad support for the concept of an Orphan Works bill, it will probably become law in some form.

The various photography and artist organizations, such as the Advertising Photographers of America, the American Society of Media Photographers, and the Graphic Artists Guild, have encouraged their members to contact their House Representatives to push for retention of the additional requirement of filing with the Copyright Office.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com.

08 Oct, 2008 | Posted by: photosource

Re-publication Permits

Privacy Suit to Proceed

Although the language of each state statute may vary, the use of a
person’s name, portrait or picture in a photograph cannot be used for
advertising, commercial or trade purposes, without the person’s written

This is called the Right to Privacy. The time to bring a lawsuit for
invasion of the Right to Privacy is one year from the first publication
in New York and most other states, but is subject to what is called the
single publication rule. Under this rule, the statute of limitations
begins to run on the date the material at issue is first published or
used. Accordingly, subsequent distributions or uses of the images does
not constitute a separate publication or continuing wrong which would
extend to the date the initial claim accrued.

The purpose of this rule is to avoid an endless tolling of the
limitations statute. For example, a distribution of a work to a library
would be the initial date for statute of limitations purposes, and that
initial date would not be extended each time the library loaned the work
There is an exception to this single publication rule. This occurs where
there is a republication, which happens when there is a separate
publication which is not merely a delayed circulation of the original
edition. The justification for this exception is that the subsequent
publication is extended to and actually reaches a new audience. Thus,
where the republication is in format intended to reach a new audience,
the statute of limitations will start over for purposes of the new
publication only.

A recent decision in New York Supreme Court dealt with this issue and
illustrates how this principal works n the marketplace.

The case concerned use of a photograph of the plaintiff playing football
in 1999. A copy of the photograph was first installed in defendant’s
sports clubs shortly thereafter and remains in such use today.

At some time later on, the image appeared on defendant’website.
Plaintiff then brought his lawsuit for invasion of privacy based upon the
subsequent website use. The defendant moved to dismiss the case on the
grounds that the one year statute of limitations had already expired.
The plaintiff conceded that his claim is time barred with respect to the
installation of the photo at defendant’club. However, he argued
that the website use was a republication and the court agreed.

The Court reasoned that the audience at defendant’club is
presumably intended primarily for the entertainment of the limited number
of existing members. On the other hand, the website use is presumably
directed at a far wider audience primarily comprised of non-members whom
the defendant is seeking to attract as new members.

Accordingly, unless the defendant could establish during the litigation
that the website use also dated back more than one year from the filing
of the complaint, it will be held responsible for invading the privacy of
plaintiff on the republication uses.

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com.

01 Oct, 2008 | Posted by: photosource

PHOTOS SHOW INFRACTIONS Local schools may soon view digital photos posted online as evidence of violation of student athletic codes of conduct. Certain photos online could mean trouble for school athletes. Since the explosion in popularity of Internet social networking Web sites, such as MySpace.com and Facebook.com, some students have posted photos of themselves or other students breaking the law and/or school rules, prompting the school districts in the Glove Cities to take action.
"The gist of it is we would consider using [those digital photos] posted on MySpace as well as someone seeing them or reporting them [to initiate disciplinary action]," Semione said.

23 Sep, 2008 | Posted by: photosource

PHOTOS HELP INVESTIGATIONS. There weren't any black Hummers or men in $5,000 suits with $500 sunglasses. But the scene in Trumann last week of police officers dusting for prints and taking pictures of a mock crime scene looked like something out of the TV police drama "CSI." Officers received hands on training lifting fingerprints and taking pictures of a mock crime scene using digital photography.
"When we go to a crime scene the biggest thing we are after are photographs and fingerprints," Blagg said.

27 Aug, 2008 | Posted by: photosource

Wedding Photo Contract – Shared Responsibilities?

When A Shoot
Goes Wrong

Advance Notes: It’s no fun defending a lawsuit, even if you win.
Here’s a story to tack onto your bulletin board as a reminder.

By Joel Hecker, Esq.

Contracts should obviously be as inclusive as possible to memorialize the understanding between the parties, to anticipate and resolve potential problem areas, and generally to eliminate ambiguous issues. Unfortunately, the parties often neglect to do the obvious, and face the consequences when things go wrong.

A recent case in New York, brought by an unhappy prospective bride against a wedding photographer, is illustrative of what can go wrong when key terms are not addressed and there is a lack of communication on the job.
The parties entered into a written contract for the photographer to photograph the wedding at a specific place on a specified date from 10:30 a.m. to 5:00 p.m. for an agreed price. The photographer was also to provide proofs and a CD of the proofs, three 8 x10 photos with special effects, and prepare a wedding album consisting of twenty-four 8 x 10 photo pages. In short, a standard package.
On the day of the wedding, the photographer showed up, but left after a half hour, leaving another photographer from his studio to take the remaining pictures. In all, 355 pictures were taken during the wedding and reception. The bride claimed that many of the images were unprofessional, of poor quality, amateurish in positioning and not the classic style expected. In addition, there were no individual or group photos where feet were included in the picture; no full body shots of the bride and groom, and no shots of the groom with the bridal party. The bride also claimed that the photographer’s sample wedding albums used in his sales pitch showed the type of pictures the wedding couple wanted but did not get.
The photographer claimed the contract provided that “photographers will use their own creative judgment unless otherwise told in writing by client.” Apparently no such preferences wanted by the bride were expressed, nor did the contract specify a particular individual photographer or number of photos to be taken. As a result of these gaps in the contract language, litigation ensued.
The Court, in ruling against the bride and for the photographer, emphasized that no matter how much skill and care is exercised by properly equipped photographers, certain things cannot be guaranteed. This is because no photographer will always be in the right place at the right time and the subjects will not always be where a photographer or bride wants them to be. At any wedding, he recognized, there are a multitude of choices for a photographer to make in terms of selecting the pictures to take.

Critically important to the Court’s determination was the belief that it is incumbent upon the bride to communicate clearly to the photographer what shots or types of shots to take. In this respect, said the Court, a bride or groom has responsibilities at the wedding beyond saying “I do” and enjoying themselves. These responsibilities include awareness of what the photographer is doing, pointing out important subjects and generally communicating specific needs if not already included in the written contract.

Since the contract did not contain express terms as to the photographer’s required performance (i.e. what shots to be taken) the photographer was bound to the more generic legal standard of performing in a skillful and workmanlike manner.

The Court, after reviewing the 355 photos taken, found that although some were poorly focused or framed or generally worthless, the majority were clear and professional, adequately capturing the “good time had by the guests” and “the significance of the moment.” As to the complaint concerning the selection of shots, the Court ruled for the photographer, saying that, although stylistic choices were made, such choices did not constitute a deviation from the reasonable standards expected of a professional photographer.

Accordingly, the photographer prevailed although he had legal fees to pay and unfavorable publicity. The moral of the story is to have clear, unambiguous contracts and to continuously communicate with your clients. Making clients happy is certainly a better business model than defending lawsuits!

Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq[at]aol[dot]com.