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LIVING WITH TASINI!
November 16, 1997
How Do We Live With Tasini?
The federal court decision in Tasini vs. New York Times is a major threat to the stock
photography industry. Let me briefly outline where Judge Sotomayor's unusually long
and detailed summary judgement puts us.
In normal circumstances a decision by the lowest federal court might not have much
precedent value. But, at present, there are no other contrary federal decisions that
deal with electronic re-use, or for that matter any re-use, of text produced by
freelancers. There are no decisions at all on the re-use of photographs, so this case
becomes the closest precedent that lawyers and judges can go to when trying to decide
future re-use cases.
It also doesn't hurt that this opinion is from a court in the Southern District of New
York, a major publishing center. Thus, it may carry more weight in the minds of judges
in other parts of the country because of the location where the case was tried.
In future cases, counsel for publishers will undoubtedly cite Tasini as justification
for their client taking similar actions. Lawyers representing photographers or writers
will have no counter precedent to offer.
Consequently, the lawyers representing the interests of photographers will have to try
to convince another lower court judge with the same standing as Judge Sotomayor that
her decision was one of the following:
- wrong, or
- that such re-use was not the intention of the parties at the time of signing the
contract, or
- that this interpretation of the "collective works copyright" statutes is patently
unfair to creators.
It will be an uphill battle for any of these arguments to prevail.
In addition, Judge Sotomayor has expanded the concept of "revision" and taken it way
past what has commonly been considered a revision in this industry.
The ball game is not lost yet, but we're several runs behind in late innings and we
need some heavy hitting to pull this game out of the fire. An appeals court could
reverse Judge Sotomayor's decision. A new case on slightly different issues might
supply an important counter precedent. But none of these things are likely to happen
unless all sellers in the industry join together to make it happen.
Three Copyrights
Photographers need to understand that there are three copyrights. The first is their
unregistered copyright that occurs at the time they create the image, and which they
can and should register with the copyright office. The second is a registered
copyright that provides them with much greater protection. In addition there is a
"collective works" copyright that belongs to the publisher who publishes the image. If
you take a news picture and it is published in dozens of magazines and newspapers, each
one of those publications has a oecollective works copyrightoe to your picture.
Tasini raises a big question as to what kind of other uses the publisher can make of
this picture, given the publisher's "collective works copyright" and what restriction
the photographer can place on the publisheroes additional use of the work.
Traditionally, in our industry, we have licensed specific use rights, or one-time use
rights with "all other rights reserved." Now we are being told that those words donoet
mean what we thought they meant.
Judge Sotomayor said in a summary judgement, without a jury trial, that according to
section 201C of the copyright act publishers have broad rights of "revision" of
anything they first published. It is unnecessary to further compensate the creator of
the copyrighted work for such "revisions".
She outlined a number of changes that qualify as "revisions." In summary they
include:
- Any change in a small or large part of the whole. There is no formula for
keeping a certain percentage of the work intact as it was originally shown.
- The right to use a small or large part of the original as part of a new work.
- The putting of part of a oecollective workoe (magazine or newspaper) on the
Internet or on a CD-ROM disc. There is no necessity to maintain any of the look or
feel of the original product.
- It is permitted to include the work in a new product, produced by another
company, using any part of the original product, so long as the publisher has some
control over this revision. (It is presumed that the publisher will be compensated
financially for this use.).
- Such "revisions" are permitted without additional compensation regardless of any
contractual agreements between the creator and the publisher that would appear to
require the publisher to pay for additional uses.
Some have said that many of the above apply only if there is no contract or formal
written agreement, but keep in mind that David Whitford had a written contract with
Sports Illustrated. Judge Sotomayor cited the details of the contract in her decision
and then ruled that the publisher still didn't have to pay Whitford.
Issues To Consider
Put this all together, and it takes away a huge number of rights that for the last 20
years photographers have believed to be theirs. This decision, if it is not overturned
on appeal, requires a complete re-thinking as to how photographers and stock agencies
will operate their businesses in the future. Consider the following:
- You must very carefully analyze what this loss of re-use rights will do to your
business. I have had estimates from stock agencies that re-use represents between 5%
and 30% of their business. As we see more and more consolidation of publishing
companies under one "publishing" name, we must also carefully considered that according
to Judge Sotomayoroes ruling a oerevisionoe can have a totally new title and a totally new
structure.
The text of the New York Times Sunday Magazine and the Book Review appear on a disc
titled "General Periodicals OnDisc." The full text of those issues of the newspaper
does not appear on this disc. Sotomayor says this is OK. So the ruling allows
publications to put part of their publications on discs with a new title. Does this
then cover a situation where a picture first used in Time is later re-used in Sports
Illustrated, or on CNN, or on the Internet? Are these qualified "revisions" because
the overall publisher is Time Inc? Or is it a qualified "revision" if a picture first
used in National Geographic later appears in National Geographic World magazine?
- Encyclopaedia publishers have been negotiating rights and paying additional fees
to put their publications on CD-ROM and on-line. Do they have to continue to pay for
these additional uses, or do they now get them for free oe forever?
The fact that the publishers have paid re-use fees in the past may be an argument for
the selleroes side. But, I would think the publishers might argue that just because
they didnoet fully understand their rights in the past, they are not required to go on
compounding that mistake forever.
- A magazine on dog breeding, with a circulation of a few thousand copies, wants to
use a stock picture and pay $50, or so, or they want to hire a photographer to take
several pictures for a fee of a couple hundred dollars. The photographer might be
willing to do it for one-time use because of the small circulation, if he believes
there are potential re-sales for the pictures. However, look what the publisher of
this magazine is allowed to do.
The publisher can make the images available on-line. The publisher can put the images
on a CD-ROM as a "revision" of his magazine. If the "108 Years of National Geographic
on CD-ROM" qualifies under Tasini (which the magazine is arguing to its photographers
that it does) then the publisher can also sell new advertising for his CD-ROM project
and this still qualifies as a revision.
The publisher can decide to produce a book on dogs, or an encyclopaedia of dogs which
is simply a oerevisionoe of his magazine.
The publisher of this magazine can join with several other publishers of dog related
material and put out an encyclopaedia in much the same way that the New York Times
joined with other publishers to put their information on the Nexis online database.
Are you getting the message here that the only person not making money as a result of
all these "revisions" of the original use is the creator of the image? Can you trust
that somewhere down the line the publisher wonoet get into all these lines of business
even though he may honestly say now that it is not his intent?
In 1968 when I was shooting for National Geographic no one told me that there was a
potential of a CD-ROM use 30 years later. What will be the potential oerevisionoe
possibilities in 2005? 2010?
- A magazine can re-publish all its back issues on a CD-ROM, or in an on-line
archive. If the publisher decides to give the material away, thatoes fine. The
oecollective works copyrightoe is the publishers property to do with pretty much as he
pleases. If the publisher of the magazine wants to charge for this new distribution of
its "collective work" it gets to keep 100% of any monies collected, and does not have
to share anything with the creators of the separate elements within the collective
work.
Once on-line, or on CD-ROM, the product could generate revenue for the publisher for 20
years or more. As just one example National Geographic is expecting to see revenue for
at least 20 years from its "108 Years of National Geographic on CD-ROM." The creators
of the content have been offered zero share of this revenue.
- What about a publication owned by a corporation that produces and markets
consumer products? Could the "publisher" first use pictures in its magazine that is
circulated internally to its employees, and then "re-use" those pictures in a large
distribution give-away calendar that is designed to promote sales of its products?
Could it re-use the pictures in a promotional handout? Tasini does not deal
specifically with this issue. But it is not difficult to see how another court, faced
with such a question, and using Judge Sotomayeroes judgement for precedent, could find
for the publisher.
- It is unclear what could happen with advertising within a "collective works
copyright." Does the publisher have the right to change the copy in the revised
edition? More important does the publisher have the right to separate the visuals from
the text and use the visuals in a new way in the revision?
Certainly, according to Judge Sotomayoroes decision the publisher has the right to
separate pictures from text and use the text elements in a completely different way.
If you can do this with the text elements it would logically follow that you can do it
with the picture elements. According to Judge Sotomayor there is no specific
percentage of the original that must be maintained in order for it to qualify as a
"revision" under the rules. Therefore, it could be a very small portion of the total
"collective work," and still qualify.
- Once an image has been published it will be impossible to license a "restricted
usage" to another client because there is no telling what the first client may do with
the work. To a certain degree this has happened with some National Geographic
photographers. The photographers believed they had given National Geographic certain
rights, and that they retained certain rights. On the basis of the rights retained,
they contracted with Corbis to place some of their images in a database. One of the
proposed uses of the database is to supply images for children to use in their school
reports. The children pay a small fee for each use and Corbis has agreed to pay each
photographer a percentage of sales. Now, children can get all the images they need off
the Geographic CD-ROM disc in their school library for free. Photographers get
nothing.
Sure the publishers can pay for these extra uses if they want to, but the law doesnoet
require them to pay.
The publisher can also tell you, in writing, at the time of the original sale, that
they will pay you for future uses, and then change their mind down the road.
This is so bizarre it sounds like science fiction, but it is actually the legal
environment under which freelance photographers must try to operate their businesses,
RIGHT NOW.
Futue Photographer Strategies
So how should you structure your business and pricing in the future?
1 - You might try to charge more for the first use, as a way of covering the lost
revenue for secondary uses. This might work with major publishers who have a clear
understanding of all the future uses they are going to make of the image. They can
justify the increased cost based on the return they expect to realize as a result of
the image being part of a variety of products they will be producing.
However, for a huge number of small publishers this figure would be astronomically
high. To provide any reasonable protection to the photographer the figure would have
to be many times what the small publisher is used to paying for pictures. On the other
hand, the small publisher has as much potential to participate in on-line, CD-ROM,
encyclopaedia, etc. publishing as any big publisher. The reuses could easily dwarf the
original use.
The current system has worked well because users were charged a fee based on the type
of product and the number of copies distributed. Two people can use the same image,
and the one who makes a relatively small distribution will be charged much less than
the one with a major circulation. If one publisher wants to make another use sometime
in the future he is charged an additional fee for that use. This has enabled both
small publishers and giants to have access to quality imagery at reasonable prices for
the specific uses they require. In most cases the true cost of producing the image is
much higher than what either party has been asked to pay for their original use.
Photographers are able to offer these lower prices because they are able to license the
additional rights.
Now, the effectiveness of this entire system has been destroyed, and so far there is no
new system in place that meets the needs of the producers.
2 - Try to get a royalty. That would be fair, and there are a number of publishers
currently offering writers royalties for CD-ROM and on-line use of their material.
However, it remains to be seen whether publishers will stick with this strategy once
they recognize what a gift has been handed them by Judge Sotomayor. Even those who
might like to be fair are probably going to find it difficult because they still have
to compete with other publishers on the price of their product.
3 - Try to explain to your clients why it is only fair that they pay for the extra
uses. Already agencies are reporting that clients are calling and saying, oeWeoere going
to use this image again. Explain to me why I should pay extra in light of Tasini.oe
You can point out that what they paid for the first use was only a fraction of what it
cost to produce the image, and the first use was priced low in anticipation that their
might be re-uses of the image. If re-use is eliminated as a strategy then all oefirst
useoe prices will have to be quite a bit higher in the future. If you are an agent you
can point out that only 50% or 30% of the fee is going to the photographer, and the
photographer certainly canoet afford to produce new material at those rates. You may
even get the sympathy of the editor you are dealing with, but I doubt these arguments
will convince the money people in the accounting department.
4 - You can pray a lot, and hope your clients will treat you fairly, even if they are
not required to by law.
5 - Try to get a staff job. Someone, is going to have to produce pictures for these
publishers and since the publishers are trying to make it impossible for photographers
to make a living as freelancers, presumably they are prepared to hire more staffers to
do the work that needs to be done. Maybe they are going to give all their writers
cameras, or maybe they are going to be satisfied using handout pictures.
The big problem here is that the publishers can probably go on for a long time re-using
the images that have already been published, or which are available in the various
files. Only after several years of no new production will these images get so stale
that some publishers will feel that they have to liven up their publications with
something new. Meanwhile, many photographers will have moved on to find other ways to
earn a living. We'll have to wait an see how this one plays out.
If you take the staff approach you must recognize that most publishers from National
Geographic right on down could care less about quality. They are only interested in
price. In staff work, once they have locked in the annual salary, they will push and
push and squeeze and squeeze to try to get more quality and productivity out of their
worker for the already fixed price. However, they are unlikely to pay more to keep
their current crop of workers. Instead they bring in new people at even lower prices
and push them for increased productivity.
6 - Look into changing professions.
This is not said in jest. Many photographers are moving on to other careers.
Options
There are a number of things you might do to help return our working environment to the
previous situation that we know and understand.
1 - Support an appeal of Tasini. At this point it is not even clear that the National
Writers Union is going ahead with an appeal. They are still looking for a lawyer to
represent them. If at all possible, Judge Sotomayoroes decision needs to be reversed.
2 - Support a revision of the copyright law. While this would be nice, it is probably
not very practical. If we start working today the legislation would have to move
through the Congress before November 1998, or they would have to re-introduce the bill
and begin from scratch in 1999. Realistically, the best chance of any copyright
revision becoming law couldnoet happen before the fall of the year 2000.
Certainly the publishers will oppose any bill that might make photographers and writers
happy, so the chances of getting a revision, even in 2000, seem very slim.
3 - Support a test case, on slightly different issues, that might at least establish a
better precedent to cover some of the points that are import to photographers. We
believe that the "108 Years of National Geographic on CD-ROM" may be a good candidate
for such a test case. It deals with lots of photos in addition to text. Most of the
claimants have contracts that clearly specify the rights that were transferred to
National Geographic and under what conditions. Most plaintiffs in Tasini had no
contracts. There are hundreds, if not thousands of contracts in the National
Geographic situation, all drafted by National Geographic Society. Because they were
the drafter, the courts will strictly construe any ambiguity against National
Geographic and in favor of the photographers. There are claimants worldwide and there
are thousands of people who should be compensated. Geographic says they mailed letters
to 2,500 photographers telling them they werenoet entitled to compensation. We believe
all those photographers and many more are entitled to compensation.
4 - Write careful contracts and agreements. At first glance that would seem to be a
good idea, and it certainly canoet hurt. But, judge Sotomayor in her decision failed to
provide any compensation for writer David Whitford who had a contract with Sports
Illustrated. Most reasonable people believe Whitfordoes contract is straight forward
and clear. If that contract didnoet provide protection for the writer, it is hard to
figure what contract will.