Copyright and Photography Saper Law Offices, LLC Presented by Daliah Saper

Introduction About Saper Law: Saper Law is an intellectual property and business law firm with significant transactional and both federal and state litigation experience. We primarily specialize in the following areas of law: Trademarks Copyrights Trade Secrets Corporate Internet and Cyber Space Entertainment Defamation IP Licensing Advertising Media Sponsorship and Advertising Agreements

Tonight’s Topics of Discussion What is a Copyright? History Co-authorship issues Work For Hires Implied Licenses Illinois Right of Publicity Act Model Releases Property Releases Q&A

What is copyright? A copyright is a set of exclusive rights given to an original author to regulate the use of a particular expression of ideas. Copyright is available for original works of authorship fixed in any tangible medium of expression.

Copyright owners have the exclusive right to: Make copies of their work Prepare derivative works Distribute copies of the work to the public Perform the work publicly Display the work publicly

The History of Photography and Copyrights The Constitution authorizes Congress to: “Promote the progress of science and useful arts, by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries.” In the famous case of Burrow-Giles Lithographic Co. v. Sarony (1884) the constitutional question of whether a photograph merited copyright protection arose. Was a photographer an “author”? Did a photograph constitute a “writing”?

Burrow-Giles Lithographic Co. v. Sarony (1884) Photographer Napolean Sarony filed a copyright infringement suit against Burrow-Giles Lithographic company for marketing unauthorized lithographs of Sarony’s photograph of Oscar Wilde. Burrow-Giles argued that even if other visual works could be copyrighted, photography was merely a mechanical process rather than an art and did not embody an author’s idea. Outcome . . .

Burrow-Giles Lithographic Co. v. Sarony (1884) Photographer wins! It was found that Sarony had posed Wilde, suggested his expression, selected his costume, the background and accessories to create a particular composition of light and line. This control that Sarony exercised over the subject matter showed that he was an “author” of an original work of art

Burrow-Giles Takeaways Photograph is definitely copyrightable! Even a photograph of something in the public domain is copyrightable! Example: pictures of Art Institute paintings….

Registration - Is it necessary? Registration of claims to copyright is optional. However, the advantages of copyright registration are extremely significant and therefore registration is advised. Registration is generally a prerequisite to an action for infringement and provides advantages in proving a case and in securing remedies.

Copyright Registration Benefits Can’t sue without registration. Registration within 3 months of the original publication date, or prior to infringement, needed to claim statutory damages or attorney’s fees. Registration within 5 years of publication creates presumption of valid copyright.

The Statute—for your reading pleasure 17 USC § 410. Registration of claim and issuance of certificate (c) In any judicial proceedings the certificate of a registration made before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court. § 411. Registration and infringement actions10 (a) Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. § 412. Registration as prerequisite to certain remedies for infringement11 In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(b), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for — (1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Small Exception: Visual Rights Act § 106A. Rights of certain authors to attribution and integrity (a) Rights of Attribution and Integrity. — Subject to section 107 and independent of the exclusive rights provided in section 106, the author of a work of visual art —  (1) shall have the right —  (A) to claim authorship of that work, and (B) to prevent the use of his or her name as the author of any work of visual art which he or she did not create; (2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and (3) subject to the limitations set forth in section 113(d), shall have the right —  (A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and (B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.

Small Exception: Visual Rights Act The 106a “VRA” exception in 412 allows for statutory damages and attorney's fees in an action for violation of author's rights (not straight up infringement) even if you didn’t register within three months of publication or after infringement, if: the photograph is "(2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author."   

How do I register? Easy. You can register your copyright by filing a simple form and depositing one or two sample of the work with the U.S. Copyright Office. The forms vary with the different types of work TX - Literary work VA - Visual art work Forms and instructions may be obtained from the U.S. Copyright Office by telephone, 202-707-9100, or online at www.copyright.gov Registration currently costs $45 per work

But… What if there are two “authors”?! Or what if the artist works for a corporation?! Who owns the copyright then?????

Sharing copyright - Joint Work A joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a whole. (17 U.S.C. § 101) Joint authorship entitles the co-authors to equal undivided interests in the whole work - Co-ownership. Each joint author has the right to use or to license the work as he or she wishes, subject only to the obligation to account to the other joint owner for for any profits that are made.

Sharing Copyright - Joint Work The prevailing test for whether a contribution rises to the level of joint-authorship is set out in Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1069 (7th Cir. 1994). According to Erickson defendants must prove that: 1) They made an independently copyrightable contribution to the work and 2) The parties fully intended to be co-authors at the time that the photograph was taken

Examples: Co-Authorship Status Denied: Tang v. Putruss, 521 F. Supp. 2d 600 (E.D. Mich. 2007). Plaintiff photographer was hired by Defendant to photograph Defendant’s new line of designer dresses. Defendant claimed co-authorship status, saying that he dressed the models, chose their accessories and directed hair and makeup stylists. The court, using the Erickson test, denied co-authorship status 1) Independently copyrightable contributions? - No. “Mere selection of subject matter does not create joint authorship.” 2) Intended to be co-authors? - No. There was no “objective indicia” of an intent to be co-authors

Examples: Co-Authorship Status Granted: Brod v. General Publishing Group, Inc., 32 Fed.Appx. 231 (9th Cir. 2002) Plaintiff photographer was asked by the Defendant to take photographs of vintage televisions for a book Defendant intended to publish. The court, using the Erickson test, found that Defendant was entitled to co-authorship status: 1)Independently Copyrightable Contributions? - Yes. Defendant came up with the idea, procured the televisions, arranged the composition for each shot, directed the plaintiff to make changes to the camera angles, and enhanced the images. Additionally, the Defendant gave final approval of both positioning of the subject matter and the camera angle before the plaintiff triggered the shutter in each photograph. 2) Objective Manifestations of an Intent to be co-authors? - Yes. Plaintiff deferred to the defendant. Plaintiff indicated that the pictures were for a “t.v. book”. Copyright registration listed the completion date as the date that the book was completed rater than the date that the photographs were taken.

Giving Up Copyright - WMFH A work made for hire is: 1) A work prepared by an employee within the scope of his or her employment; or 2) A work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

Giving Up Copyright - WMFH Ownership of copyright and works made for hire: In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author. Unless the parties have expressly agreed otherwise in a written instrument signed by both of them, that employer owns all of the rights comprised in the copyright.

Scenario Freddy’s Fruit Stand would like to have pictures taken for a corporate history Freddy’s engages a third party photographer (not an employee of the stand) to take the pictures The relationship between Freddy’s and the photographer breaks down. Who holds copyright to the photograph?

Answer The photographer will own the copyright! The photographer is not an “employee” of Freddy’s Fruit Stand

New Scenario Freddy’s Fruit Stand would like to have some pictures taken for an advertising campaign . Al is in charge of all marketing for Freddy’s Fruit Stand. He takes the pictures for the campaign. The relationship between Al and Freddy’s breaks down and Al is fired. Who holds copyright to the photograph?

Answer Freddy’s does! Because the photograph was taken by Al, an employee, within the scope of his employment, it fits under one of our Work Made for Hire situations.

Not an employee? Still might be a work for Hire… If an independent photographer is hired by a company, a Work For Hire situation could occur if the company plans to use the photograph in a “collective work” or in a “compilation” and says so in a written, signed contract

If the photographer is the copyright holder… The hiring party’s ability to use the work would depend either on 1) The specific terms of the agreement, or 2) Upon the concept of an implied license to use the work.

Specific Agreement/ Photo Contract KNOW YOUR TERMINOLOGY: License A written license granted by the holder of a copyright [photographer] may give the licensee a limited right to reproduce, sell, or distribute the work. Assignment A complete transfer of property rights from one person [in this case the copyright holder] to another.

Implied License Implied License License created by law in the absence of an actual agreement between the parties. Conduct may create an implied license - For example, if a photographer creates a work at an entity’s request and hands it over, intending that the entity copy and distribute it, an implied license is created. The extent of what was “implied” often becomes the basis for lengthy and costly litigation

Implied Licenses, continued. Avoiding the Headaches of Implied Licenses Agreements should be put in writing and contain: A statement identifying who owns the copyright, or if it’s a license, what the license will allow The full scope of work to be performed

Newer Scenario Let’s say that Joe, a photographer, takes some pictures of Freddy’s Fruit Stand. In it he captures Mary shopping for apples. He thinks this picture is particularly nice and decides that he should sell it to Freddy’s. Freddy’s jumps at the chance and uses the picture for a nationwide campaign. Do we have any problems here?

Answer Yes. While we might not have any copyright issues here, we might run into … RIGHT TO PUBLICITY issues

Illinois Right to Publicity Act Recognizes an individual’s right to control the use of his or her identity for commercial purposes. Commercial purposes include: Using an image in connection with the sale of a good or service Using an image for advertising purposes Using an image for the purposes of fundraising

So… How might Joe protect himself against a potential suit brought by Mary? Model Release!

Model Release - Protecting Yourself A model release is an agreement that permits the use of a person’s name or image. There are two classes of model releases: Blanket Release: Permits any use of the photographic image of the person signing the release It is suitable if the company or photographer needs an unlimited right to use the image. Stock photographers who sell their photos for unlimited purposes commonly use blanket releases. Limited Release A limited release specifies the particular ways that an image may be used. If a use exceeds what is permitted under the limited release the person can sue for breach of the agreement. Celebrities and professional models usually sign limited releases.

Model Release - When do you need one? As a general rule you will not need a model release for the use of a person’s image if: Your use is not defamatory; Does not invade privacy; and Is not for a commercial purpose

Model Release - Informational Use If you are taking pictures for a purely informational use, you do not need a model release. An informational (or editorial) use is anything that informs, educates, or expresses opinions protected under the First Amendment of the U.S. Constitution.

Examples of Informational Use A photographer takes a picture of a politician giving a speech and it is printed on the front page of the New York Times. A photographer takes a picture of Paris Hilton driving in her convertible and sells it to US Weekly. (Yes. This is considered “news” and thus an informational use.) A photographer takes a picture of a crowd at Grant Park for use in a nonfiction book.

Model Release - Commercial Use A model release is needed if the photographer intends to use a person’s name or image commercially. A commercial use, again, occurs when a photograph is used to sell or endorse a product or service. A release is not required if the person cannot be recognized in the photo.

Examples of Commercial Uses A photographer takes a picture of a politician giving a speech and uses it on a poster for an upcoming fundraiser. A photographer takes a picture of Paris Hilton in her convertible, notices she is drinking a Starbucks latte and sells it to Starbucks for use in a national advertising campaign. A photographer takes a picture of a woman in Grant Park and sells it to Nabisco, who uses the picture on their new packaging.

Alison Chang and Virgin Mobile Facts Photo is taken of 16 year old Chang by her counselor at camp. The counselor posts the photo on Flickr.com The counselor is a frequent Flickr.com poster and has indicated that his photos carry with them a license from Creative Commons that allow them to be used by anyone in any way. Virgin Mobile USA saw the photo of Chang on Flickr and used it for a advertising campaign, with the slogans: “Dump Your Pen Friend” “Free texts Virgin to Virgin.” What are our problems here?

Alison Chang and Virgin Mobile Copyright Issues? No. The counselor had given away his rights as a photographer when he selected the particular license that he did. Right of Publicity Issues? Yes. It appears that neither the photographer or Virgin Mobile acquired Chang’s consent before Virgin Mobile began its advertising campaign. The Creative Commons license could not have have granted Virgin Mobile Chang’s consent to use her image for commercial purposes.

Artistic Use Questions surrounding artistic photography are a bit trickier. For example: Can a photographer show and publish prints of street photographs in cases where he did not get a release from the people in the image? Yes! And he can sell the prints too!

Nussenzweig v. DiCorcia Supreme Court, New York County, 2006 In 1999 Philip-Lorca di Corcia took a series of intimate close-ups of strangers in Times Square. He exhibited his work in 2001, selling 10 prints of Nussenzweig’s photo for $10,000 to $30,000 each Nussenzweig filed a suit against DiCorcia for 1.5 million The judge ruled in favor of the photographer, citing the First Amendment protection of art.

Model Release - (Blanket -Detailed) MODEL’S PERMISSION AND RIGHTS GRANTED: For good and valuable Consideration herein acknowledged as received, and by signing this release I hereby give the Photographer/Filmmaker and Assigns my permission to license the Images and to use the Images in any Media for any purpose (except pornographic or defamatory) which may include, among others, advertising, promotion, marketing and packaging for any product or service. I agree that the Images may be combined with other images, text and graphics, and cropped, altered or modified. I acknowledge and agree that I have consented to publication of my ethnicity(ies) as indicated below, but understand that other ethnicities may be associated with Images of me by the Photographer/Filmmaker and/or Assigns for descriptive purposes. I agree that I have no rights to the Images, and all rights to the Images belong to the Photographer/Filmmaker and Assigns. I acknowledge and agree that I have no further right to additional Consideration or accounting, and that I will make no further claim for any reason to Photographer/Filmmaker and/or Assigns. I acknowledge and agree that this release is binding upon my heirs and assigns. I agree that this release is irrevocable, worldwide and perpetual, and will be governed by the laws of the state of New York, excluding the law of conflicts. I represent and warrant that I am at least 18 years of age and have the full legal capacity to execute this release.

Model Release - (Blanket-Simple) In exchange for consideration received, I hereby give permission to [your name here] to use my name and photographic likeness in all forms and media for advertising, trade, and any other lawful purposes. Print Name: Signature: Date: If Model is under 18:
I,______, am the parent/legal guardian of the individual named above, I have read this release and approve of its terms.

Model Release - (Limited) Excerpt: For valuable consideration, Photographer and Model agree as follows: 1. Photographer hereby grants Model the limited right to use and reproduce any and all photographs (the “Photos”)taken on the above shoot date for non-commercial purposes as set forth below. Model hereby grants Photographer the right to use Model’s name, image and likeness in connection with the Photos as set forth below and hereby releases and discharges Photographer from any and all liability for any claims associated therewith.

Photography in Public Places: First Amendment Issues Though not unlimited, we enjoy a broad right under the 1st Amendment to take photographs while in public places such as streets, sidewalks, and parks. The State’s right to restrict your ability to do so is very limited; the most common “excuses” are: To preserve public safety; To ensure the flow of traffic; and To maintain the orderly movement of pedestrians. The burden is on the State to justify these restrictions. Some buildings, however, are special…

Property Releases Over the last few decades, some buildings have earned protection under both trademark and copyright law Protection Under trademark is very limited  would apply to buildings that function as source identifiers i.e. Transamerica Building, Sears Tower Thus, to use images of them for commercial purposes, you need the building’s permission  otherwise you may cause consumer confusion You can use them for informational or educational purposes freely.

Property Releases Particular Architectural works may qualify for Copyright protection The building or architectural work must have been created after March 1, 1989 You don’t need a release if you take a photo of it from a public place. 17 U.S.C. § § 101, 120. Thus, to take a commercial photo of a trademark protectable building, or a photo of a copyright- protectable building from a private location, you need a Property Release Agreement.

Sample Property Release © NOLO, available at http://fairuse.stanford.edu/Copyright_and_Fair_Use_Overview/chapter12/12-d.html

As a Photographer, you should… Be aware of whether your particular photo arrangement necessitates a Property Release Agreement, and get one if it does! When photographing in a public place, ensure you are “on” something that closely resembles a typical sidewalk or street Before filming, contact the venue and inform them of your intentions  you want to prevent/mitigate any confrontation. Local authorities may have published guidelines they would like photographers to follow If you are denied access or removed, do not resist! Get as much information from security / police / property attendants as possible, and afterwards seek relief through either their superiors or, if necessary, a court order.

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