Legal News

155

July 8, 1998

There are two recent legal developments that should be of interest to
photographers. The first is the case of Bill Swersey vs. The Boston
Herald which was settled out of court for $3500 which is 23.33 times
the fee of $150 that Swersey said he would have charged if the Herald
had negotiated the use upfront.

It is important to recognize that even though this was an out-of-court
settlement, a stock photography expert witness can use introduce this
information in testimony in a court case, and thus use the information
to help establish industry practices in related cases.

The facts of this case appeared in Editor & Publisher in a copyrighted
article by David Noack. Mr. Noack is associate editor of MediaINFO.com.

In a separate story Nancy Wolff of Cavallo, Wolff & Wolf, reports on
the case of Richard Feiner & Co. vs HRI Industries, Inc in the Southern
District of New York. This case is of primary interest to stock agencies
that license rights to public relations images, or publicity stills.

However, in this case the decision of District Judge Owen relative to
fair use may be useful in battling other "fair use" claims, if the
decision is not overturned on appeal. This article was originally
written for the PACA newsletter. Nancy Wolff of Cavallo, Wolff & Wolf
is counsel for PACA and an expert in the field of stock photography law.

June 12, 1998

By David Noack

The Boston Herald has paid $3,500 in an out-of-court settlement for
grabbing a freelance photographer's work off the Discovery Online Web
site and publishing it in the newspaper without the photographer's
permission.

The agreement with the Herald, which was reached in late March, was
sparked by a copyright infringement lawsuit filed in December 1997 in
U.S. District Court in Boston by Bill Swersey, a New York-based
photographer. He claimed the newspaper used the photograph he took for
Discovery Online without his permission.

The legal arguments centered on whether the Herald had committed
copyright infringement or was using the picture according to "fair use"
standards. While the Herald settled the case, it did not admit to any
wrongdoing or liability.

A Web Turnabout

In the area of online copyright and fair use legal controversies, it's
usually newspapers that go after Web site developers for posting pictures
and text taken, linked or framed from the virtual publication. But in
this case, the print newspaper was the culprit.

Swersey is a freelancer who has shot for the New York Times, Time,
Newsweek and other print publications.

The subject of the photograph was Dave Kerpen, an entertaining concession
worker who was selling soft drinks last year at Boston Red Sox games at
Fenway Park. Swersey was on assignment for Discovery Online
(http://www.discovery.com), the Web version of the Discovery cable
channel. Last July, he was retained to shoot "slice of life" pictures
from around New England for an online "Picture of the Day" feature. He
was paid less than $2,000 by Discovery Online for the work.

Photo Appears in Herald Weeks Later

The picture of the vendor balancing soft drinks on his head was published
on the Discovery site on July 18. The photograph was licensed for
publication with Swersey's permission. The Discovery Online Web site
includes a copyright disclaimer link at the bottom of the page. A few
weeks later, on Aug. 6, the same photograph appeared in the Herald,
accompanied by some other photos and a story about Kerpen being fired
from his job.

"I decided to pursue it in large part to make an example," said Swersey.
"Because I thought it was a very important time to make a case like this."

He first contacted the Herald to find out why the picture was used, but
said he was given the runaround.

Would Have Wanted $150

Swersey, who also registered the photograph with the U.S. Copyright
Office, said if the newspaper had called after the photo first appeared
online and asked to use it, he would have charged only $150.

"Once it was used without my permission, I was going to take a lot more
than $150, but maybe we would have settled for $500 to $1,000. I think
they should get a slap on the wrist so they don't do that to anyone
else," said Swersey, who is now in Russia organizing the InterFoto
Photojournalism Festival, an annual event.

Robert Dushman, the newspaper's attorney, said they decided to settle the
case, since going through a court trial would have been more costly in
the long run.

"Although I thought we had a reasonably defensible claim it was going to
cost us more to defend it than he was willing to settle for. I actually
looked at this as a kind of a nuisance settlement," said Dushman, who
noted that part of the deal also included the rights to use the
photograph in the future.

While the settlement does not establish any legal precedent, Dushman said
that maybe the newspaper should have pursued the case in court in light
of all the publicity the issue has received.

Andrew D. Epstein, Swersey's attorney, said the Herald's "fair use"
argument in using the photo was unfounded.

"It wasn't fair use. They closely cropped the photograph. They could have
had somebody looking at the computer screen and there was the picture.
They could have taken a picture of this vendor looking at the computer
screen with his picture (at the ballpark) up on the screen. That might
have been fair use. That would have been newsworthy. A picture of the kid
looking at himself on the monitor," said Epstein.

He said the Herald cropped the photograph out of the Web page, making it
appear like it was their picture.

"If the Herald has used the photograph with all of the surrounding
Website information that is shown on the computer monitor, then the use
may have been fair use. My contention is that the Herald overstepped the
bounds of fair use and infringed Bill Swersey's copyright," said Epstein.

June 23, 1998

by Nancy Wolff

A recent decision in the Southern District of New York by District Judge
Owen is a cause for some concern to members who have archives of older
publicity stills, presumed to be in the public domain.

The court examined whether a photograph of Laurel & Hardy derived from a
copyrighted photoplay entitled "Liberty" could lawfully be placed in the
interior cover of a daily publication. The photograph was purchased from an
employee of an archival company, but the purchaser did not seek license or
consent from the conceded owner of the copyright in the photograph before
reproducing and publishing the photograph. The court found that neither the
employee of the archival agency nor the agency itself are licensees of the
copyright owner.

The photograph in question as purchased by the original owner contained a
1965 copyright notice and several legends. One notice in particular
extended permission for newspaper and magazine reproduction.
The principle argument of the copyright owner was that he possessed a valid
copyright and that his rights in the protected work were unlawfully
infringed. On the copyright owner's motion for summary judgment the court
shifted the burden onto the purchaser of the photograph to demonstrate that
its use of the photograph was a privileged use.

The court rejected the purchaser's claim that the use of the photograph in
the newspaper was protected by the original owner's grant of permission for
newspaper and magazine reproduction because the original owner's copyright
had lapsed and thus the permission for newspapers and magazines had also
lapsed.

Ironically, the court next rejected the purchaser's claim that the original
copyright owner abandoned its copyright in relation to the photograph and
thus the photograph had entered into the public domain. The court stated
that to find for the purchaser of the photograph, the original owner of the
copyright would have had to clearly manifest an intent to abandon its 1965
copyright through some affirmative action. The court found that the image
was not in the public domain because the purchaser failed to demonstrate the
original owner's intent to abandon its 1965 copyright.

The court also found that the purchaser's claim that the photograph's use
was privileged news reporting frivolous. Finally, the court rejected both
the purchaser's claim of fair use and de
minimus defenses.

In fair use determinations, the court must examine four factors.

• With regard
  to the first of the four factors, the purpose and character of the use,
  the court found that the
  purchaser's use of the photograph impacted upon the market the copyright
  owner lawfully sought to exploit. The court also found that the first
  factor weighed in favor of the copyright owner because the purchaser's use
  of the photograph served no scholarly or critical purpose.
  

  
  

• The court found
  the second factor, the nature of the copyrighted work, also weighed in favor
  of the copyright owner because the purchaser failed to affirmatively
  demonstrate the existence of prior, unlicensed publications.
  

  
  

• In regard to
  the third factor, the amount and substantiality of the portion used in
  relation to the copyrighted work as a whole, the court found that the
  purchaser's use of the photograph was not de minimus in comparison to the
  entire photoplay for three reasons. First, the photograph comes from a
  "high" point in the movie. Second, the photograph is "key" because of the
  stature of the entertainers portrayed. Third, the photograph is
  identifiable to the photoplay. Furthermore, the court rejected the
  purchaser's de minimus use argument because the "photograph provides a
  static image which impacts the copyright owners copyright on a fixed basis
  that cannot be mitigated after its publication release."
  

  
  

• Finally, the court
  also found that the fourth factor, the effect of the use upon the potential
  market or value of the copyrighted work weighed against the purchaser. The
  court agreed with the copyright owner that the lack of copyright
  acknowledgment falsely represented that the work was in the public domain
  which would potentially impair the copyright owner's future revenue.

In summary, the court's opinion is primarily driven by the purchaser's
concession of the plaintiff's copyright ownership and the purchaser's
failure to affirmatively demonstrate the degree of the photographs
dissemination prior to the purchase of the copyright necessary to
demonstrate that the photograph had entered the public domain.

In dealing with publicity stills in the future, I would review whether the
still was a "grab" from the photoplay or a distinct still image, taken on
the set of the movie by a still photographer. The plaintiff in this action
had rights to the photoplay. There was no assertion that the plaintiff
owned any copyright to unique publicity stills from the movies that were not
taken from the photoplay. Any legends on the reverse of the prints should be
examined. It is easier to make a fair use argument if there is no copyright
legend on the print.

In addition, I would include language in any paperwork dealing with archival
photographs the agency does not purport to own copyright to the images, and
that the user is responsible for obtaining any necessary permissions.
This case appears to have some legal inconsistencies. In speaking to the
defendant's counsel, the defendant is planning to move to reargue the
motion. Contrary to the language in the court's decision, the defendant did
not concede that the plaintiff had a valid copyright in the still image.
The attorney may be interested in an expert witness from the industry who
can testify as to the practices of the movie studies in distributing
publicity images in order to establish that these publicity stills were
intended to be in the public domain. I will keep you informed as this case
proceeds.