****** UPDATE  5/22/13

A federal trial court judge limited Mr. Morel’s damage claims against AFP & Getty finding that they are jointly but not individually liable because Getty’s alleged infringement stemmed from that of AFP.  Therefore they should not be held liable to pay separate penalties. This is a clear rejection by Morel that Getty should be held separately liable because it continued to use the photos after AFP’s”kill notice” to take them taken down.

The decision reduces Morel’s damage claims to eight — with a possible award for each one of those claims rather than the multiplier factor Morel had proposed.

“As with individually liable infringers, the statute authorizes a single statutory award per work for all infringements in an action against jointly and severally liable infringers, regardless of temporal or casual breaks in the course of those parties’ infringement of a given work,” said U.S. District (SDNY) Judge Alison Nathan.

Morel’s attorney, Joe Baio, said that while he was disappointed in the ruling, he was please that the court ”reaffirmed” the liability of the defendants and that Getty’s continued use of his clients photos despite the kill order may also support willful infringement finding.

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The defendants in the copyright lawsuit brought by photojournalist Daniel Morel are seeking a ruling from the federal trial court judge limiting their damages in the case. Attorneys for Agence France-Presse AFP) and Getty Images Inc. were in court on May 7, 2013, arguing that it is unfair that they should have to pay separate penalties for infringing upon Morel’s copyright by using the photos he had posted from his Twitter account.

Morel alleges that AFP used eight (8) of his aftermath photos from the 2010 Haiti earthquake without permission and then licensed them to Getty.  In response to a declaratory action brought by the defendants, U.S. District (SDNY) Judge Alison Nathan previously found that the terms of service set forth on the social media website did not grant the defendants the rights to such use.

Lawyers for AFP and Getty claim that since they are accused of participating in the infringement together – they should only have to pay a single penalty for each infringed work - where Getty’s alleged infringement came as a result of AFP’s improper use of the photos.

“If AFP and Getty are jointly and severally liable, there can only be one damages award against them under the plain language of the statute,” said James Rosenfeld, one of Getty’s lawyers. Morel’s attorneys countered that because Getty continued to use the photos even after AFP issued a ”kill notice” to take them down, that Getty should be liable to pay separate damages. “What did Getty do? They persisted,” said Joseph Baio, adding ”the jury should be able to determine if that was a separate act.”

The judge reserved her decision for a later date. The trial is scheduled to begin on Sept. 16,  2103 and will resolve the question of damages and other claims and defenses not already decided.

The National Press Photographer’s Association (NPPA) has, in response to a Notice of Inquiry (NOI) by the Copyright Office, submitted comments on the issue of orphan works and mass digitalization. The Copyright Office has solicited comments for use in advising Congress on how to address current issues involving copyright and orphan works.

These official comments, written by NPPA attorneys Mickey Osterreicher and Alicia Calzada, with contributions from board member Greg Smith and NPPA intern Joan Blazich, discuss the issues currently facing visual journalists regarding copyright and propose solutions for creating a system which would treat copyright holders and users of orphaned works fairly and efficiently.

The comments state that “NPPA is gravely concerned that in seeking to address the frustration of ‘good faith users’ of Orphan Works in order to cure their potential liability and ‘gridlock in the digital marketplace,’ the Copyright Office may create a far more serious problem for authors/owners of visual works.” The comments also note that “As visual journalists, our members are squeezed from every side by onerous contracts seeking all rights for little compensation, the proliferation of user generated content by publishers and the widespread infringement of visual works by individuals and organizations. While we understand and appreciate the concerns of those in the copyright community who need to use Orphan Works, we believe it is crucial to protect the copyright of recently created visual works that, for whatever reason, appear to be orphaned when, in fact, they are not.”

NPPA attorneys Osterreicher and Calzada plan to attend the Copyright Office’s public hearings on orphan works once dates and times for those hearings are announced. As more visual journalists face situations in which their images are misappropriated under an ”orphan works” claim, the NPPA proposes that if any legislation is enacted, it must include language that protects authors from predatory practices by those who would infringe upon our members’ work with impunity under the protection of a new law.

“Photographers are lucky to have advocates like Mickey, Alicia, Greg and Joan, who spend a great deal of time examining these issues and and how they will affect our members and all those who create content,” said NPPA President Mike Borland.  “The orphan works issue won’t be resolved soon and it certainly won’t be resolved properly without our voice being heard,” he added.

In accordance with that goal, the comments recommend significant limitations on what works qualify as orphans and which users would be entitled to such  protection. In addition, the NPPA advocated for registration of any uses of orphan works, along with a bond or insurance requirement to protect rights holders’ financial interests in the event they come forward to make a claim.

To read the NPPA’s comments, click here. To read the Copyright Office’s current NOI, click here. To read about previous Copyright Office inquiries on the subject of orphan works click here.

A federal judge in the Northern District of Georgia has denied a motion to dismiss  in a copyright infringtement lawsuit by an ad agency against former Republican presidential candidate Herman Cain and publisher Simon & Schuster Inc. The amended complaint, filed in June 2012, claims that a photo, shot on behalf of Friends of Herman Cain, Inc. for use in his political campaign was published on the cover of Mr. Cain’s autobiography without permission.

The book “This is Herman Cain!: My Journey to the White House,” was published in October 2011, during Cain’s presidential campaign for the Republican nomination. Adventure Advertising, LLC filed suit in January, 2012.

As in many copyright infringement lawsuits the parties disagree over whether the user of the photo had asked for and received permission to publish it and whether such use was licensed by the rights holder.

The judge’s ruling will allow discovery to move forward.

New York District Judge Alison J. Nathan has ruled (AFP-Morel Decision 01-14-13) that news service Agence France Presse (AFP) and The Washington Post Co (the Post) infringed upon photojournalist Daniel Morel’s copyright by their unauthorized use of his photos of the 2010 Haiti earthquake aftermath.

Mr. Morel had uploaded the photos in question to TwitPic.com by linking them to his Twitter account because the country-wide devastation to electricity and Internet connections forced him to use this more public method. Further complicating the matter, shortly after Morel posted his pictures online they were reposted to the Twitter account of Lisandro Suero, who tweeted that he had exclusive photographs of the earthquakes. A number of agencies including AFP then credited Suero for the photos.

In the original Complaint, filed in 2010 AFP sought a declaratory judgment that it had not infringed upon Morel’s copyrights and included defamation claims against him as well. Morel then counter-claimed that AFP, the Post, Getty and other news organizations had distributed his images without his permission.

In its answer AFP argued that it was a third-party beneficiary of the license agreement between Morel and Twitter, by claiming that Twitter’s Terms of Service (TOS) granted it a license as one of Twitter’s “other users.”

“Based on the evidence presented to the Court the Twitter TOS do not provide AFP with an excuse for its conduct in this case,” the Court noted in finding that “The Twitter [terms of service] provide that users retain their rights to the content they post — with the exception of the license granted to Twitter and its partners — rebutting AFP’s claim that Twitter intended to confer a license on it to sell Morel’s photographs.”

In making its ruling the court observed that “the dispute between the parties with regard to liability for direct infringement turns on Counterclaim Defendants’ affirmative defenses, namely their claims that (1) by posting the Photos-at-Issue on TwitPic/Twitter, Morel granted them a license, (2) Getty is entitled to the benefit of a DMCA safe-harbor, and (3) Getty has not engaged in volitional conduct sufficient to impose liability.”

In an ironic twist this recent decision comes two years to the date after District Judge William H. Pauley III issued his Decision denying AFP’s motion to dismiss Morel’s counter-claim suit. In that earlier proceeding Judge Pauley also concluded that the express language of the Twitter and TwitPic TOS did not provide an express license that protected AFP.

In her well-reasoned 58 page decision Judge Nathan granted Morel partial summary judgment ruling that “AFP and the Post are liable for copyright infringement as to the Photos-at-Issue.” But the court rejected his “arguments regarding the scope of statutory damages available under the Copyright Act and DMCA.” The judge also denied motions for summary judgment with regard to whether the infringements were willful; as well as the “claims for contributory and vicarious copyright liability.”

Because there remain genuine issues of fact the Court denied Mr. Morel’s claim for summary judgment regarding DMCA violations and also limited his recovery under that Act should he prevail at trial. After careful analysis the Court also concluded “that any awards of statutory damages against AFP or Getty may not be multiplied based on the number of infringers with whom AFP or Getty is jointly and severally liable. Rather, AFP and Getty are, at most, each liable for a single statutory damages award per work infringed.”

Judge Nathan further rebuked AFP by stating “in making its arguments on summary judgment AFP wholly ignores those portions of the Twitter TOS that are directly contrary to its position, particularly those portions stating that ‘you retain your rights to any Content you submit, post or display’ and ‘what’s yours is yours – you own your content.’”

This case serves as a cautionary tale about just how important it is to read and understand any TOS before clicking “agree.” These were the Twitpic TOS at the time that Morel uploaded his images: “by submitting Content to Twitpic, you hereby grant Twitpic a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the Content in connection with the Service and Twitpic’s (and its successors’ and affiliates’) business, including without limitation for promoting and redistributing part or all of the Service (and derivative works thereof) in any media formats and through any media channels.” You should also read the current TOS which have been substantially modified, due in large part to this case.

Morel settled with counter-claim defendants ABC, CNN and CBS in 2011. A conference is set for February 1, 2013, at 4:00 pm to discuss further scheduling of this matter.

Update: Morel’s attorneys have released a press release, stating in part that “Although Judge Nathan rejected Morel’s legal theory entitling him to as much as one hundred twenty million dollars in statutory damages, Morel still hopes to win millions in damages following trial.”

Photographer David Strick, who sued the Los Angeles Times last year claiming infringement of his photographs, has been ordered by an arbitrator to pay the L.A. Times more than $266,000.
Strick had entered into a contract with the L.A. Times in 2007 to provide photographs to the newspaper. The L.A. Times declined to renew Strick’s contract in 2010, but continued to use some of Strick’s photographs. Strick alleged in his complaint that his agreement with the L.A. Times contained a “specifically negotiated” acknowledgement that “For the avoidance of doubt, LATIMES.COM acknowledges that the copyrights to the Photographs are owned by Strick.” To read Strick’s complaint, click here: http://www.scribd.com/doc/62136598/Strick-Suit-Part-1.

After the L.A. Times continued to use Strick’s photographers after declining to renew their contract with him, Strick challenged the newspaper’s use of the photographs, alleging that the use of these images was infringement. Despite a clause in the original Service Agreement calling for “quick and efficient” resolution to any disputes between the parties, Strick refused to engage in arbitration with the L.A. Times and instead filed in U.S. District Court. To read about Strick’s initial lawsuit, click here: http://www.thewrap.com/media/column-post/la-times-tries-force-arbitration-david-strick-copyright-suit-30043?page=0,0.

The arbitrator held in his decision that Strick’s refusal to abide by the Service Agreement, coupled with Strick’s “poor behavior” throughout the arbitration process, justified the dismissal of Strick’s case and the awarding of attorneys’ fees and court costs to the L.A. Times. The arbitrator, retired Judge Lichtman, noted in his opinion that “For reasons which remain inexplicable, claimant (Strick) chose to abandon and distance himself from the controlling licensing agreement as well as the agreed upon dispute resolution mechanisms contained therein.” The result is that while Strick arguably had valid infringement claims against the L.A. Times for violating the copyright provisions of their contract, Strick lost his case simply because he failed to abide by arbitration provisions that he had agreed to in signing the contract with the L.A. Times. To read more of Arbitrator Lichtman’s comments, click here: http://www.thewrap.com/media/column-post/la-times-wins-266k-photographer-david-strick-64816?page=0,0.

According to Photo District News, Strick issued a statement in wake of the arbitrator’s decision, stating that he was “devasted by today’s ruling,” Strick went on to say that this decision was “a technical ruling that allows a willful infringement to take place but bars me from redressing that infringement.” Strick has since announced that he will appeal the arbitrator’s decision. To read more on Strick’s reaction to this decision, click here: http://www.pdnonline.com/news/Photog-Claiming-LA-T-6067.shtml.

In copyright infringement claims, the terms of a contract between the involved parties can quickly determine whether a claim for infringement will be deemed meritless or not. A photographer must be careful to not only review what the terms of copyright for his or her works may be, but also to note any provisions in the contract requiring arbitration. As a contract, once signed, is a binding agreement upon both parties, a photographer who signs a contract and then refuses to follow its provisions could easily end up with problems.

For claims which arise from a party not following a binding provision of a contract, both copyright law and contract provisions can allow a court or arbitrator to award attorneys’ fees and court costs to the prevailing party. This awarding of fees and costs is granted to compensate the prevailing party for the expenses it occurred in defending itself against the claim. As copyright infringement claims can be quite costly to file and pursue, the awarding of fees and costs can be very high.

Photographers should be aware of the terms in their contracts with other parties, and proceed cautiously when entering into such agreements. Choosing to not follow the provisions of a contract regarding how disputes will be handled can result in a significant award of attorneys’ fees and court costs against the losing party. Even if a photographer feels he or she has a strong claim for infringement despite the contract, provisions in that contract for arbitration may remain binding. In general, photographers should always read contractual agreements carefully, making sure to have any ambiguous language clarified. In the event that a photographer does wish to pursue an infringement claim and such a claim seems to be permitted under the contract, the photographer should be prepared to follow any provisions the contract may set out regarding arbitration or litigation. Although Strick’s situation is regrettable, it serves as a cautionary tale. To read more about Strick’s case, click here: http://www.thewrap.com/media/column-post/la-times-wins-266k-photographer-david-strick-64816?page=0,0.

The National Press Photographer’s Association (NPPA) has, at the request of the Copyright Office, submitted comments concerning the creation of a copyright small claims court system. These comments constitute the second round of commentary requested by the Copyright Office over the possibility of instituting a small claims copyright court system.

These official comments, written by NPPA attorneys Mickey Osterreicher and Alicia Calzada, with a significant contribution by board member Greg Smith and NPPA intern Joan Blazich, discusses the issues currently facing photojournalists regarding copyright and presents potential solutions for creating a court system that would permit an efficient and cost-effective method of addressing copyright small claims.

“While much of the advocacy by NPPA deals with access issues and the right to photograph and record in public; it cannot be understated that without the ability to affordably protect one’s copyright visual journalists will soon be out of business,” Osterreicher said. “That is why it is so important that the Copyright Office support a new initiative that will address this critical issue,” he added.

The Copyright Office will hold public hearings on these issues in New York City on November 15-16, 2012 and in Los Angeles on November 26-27, 2012. It is holding these discussions to learn more about the topics listed in its August 23, 2012 Notice of Inquiry and the comments submitted in response to that Notice, as well as the comments in response to the initial October 27, 2012 Notice of Inquiry.

The New York City hearings will be held at the Jerome Greene Annex of Columbia Law School, 410 West 117th Street, New York, New York 10027. The November 15 hearing will take place from 9:30 a.m. to 5:30 p.m. and the November 16 hearing will take place from 9:30 a.m. to 3:30 p.m.

The Los Angeles hearings will be held in Room 1314 of the UCLA School of Law, 405 Hilgard Avenue, Los Angeles, California 90095. The November 26 hearing will take place from 9:30 a.m. to 5:30 p.m. and the November 27 hearing will take place from 9:30 a.m. to 3:30 p.m.

NPPA attorneys Osterreicher and Calzada plan to participate in those meetings to advocate for NPPA’s proposals. As many photojournalists face situations involving copyright claims that amount to a limited amount of damages, the NPPA strongly supports the creation of a copyright small claims court system by the Copyright Office that would permit photojournalists to resolve such claims in an expedited and cost effective manner.

Read NPPA’s comments here:

The National Press Photographers Association (NPPA) has submitted comments to the Intellectual Property Enforcement Commission (IPEC) detailing recommendations that would improve copyright protection for visual images.

The 16-page document, which was submitted following an open request for comments from IPEC, highlighted numerous measures specifically aimed at giving photographers recourse when their images where pirated.

“Most photojournalists view our profession as a calling,” the comment states.  “None really expect to become wealthy in this line of work, but most do expect to earn a fair living, support themselves and their family and contribute to society. Copyright infringement reduces that economic incentive dramatically.”

One recommendation put forth in the comments was to track takedown notices for websites hosting pirated images in order to hold search engines liable when they continue to list those infringing websites in search results.  In a move indicating that this recommendation may soon become reality, Google announced on the same day that the comment was submitted, that it would drop the search rankings of sites with multiple takedown notices.

“Starting next week, we will begin taking into account a new signal in our rankings: the number of valid copyright removal notices we receive for any given site,” the Google Search blog said.  “Sites with high numbers of removal notices may appear lower in our results. This ranking change should help users find legitimate, quality sources of content more easily.”

The NPPA comments proposed increased accountability for Internet Service Providers (ISPs) in addition to search engines.  The comments also proposed enacting statutes targeting news aggregators and their use of hyper linking, encouraging metadata schemas that would enable easier identification of image ownership, and creating a small claims solution for copyright infringement.

The comments stressed that the loss of staff positions at newspapers nationwide and the increasing copyright infringement of images by the public have undermined the value of photojournalism and made it more important than ever that photojournalists have their images protected.

“The end result of the continued devaluation of journalism, and photojournalism, is that communities suffer,” the comment states.  “Important stories on public spending, public welfare, health and safety will not be told with the vigor and thoroughness of years past.”

NPPA’s comments can be viewed at this link.

Advocacy Chair note: NPPA Intern Justice Warren contributed significantly to this effort.