Exclusive Versus Sole

Earlier this year I wrote about exclusive licenses and how they can make a big difference in your legal rights, when it comes to infringements. Today, I was reminded of a related issue: how to grant a client the rights to use a work only for that client’s materials, and not get caught in an exclusive license trap.

Here’s what I suggest: only use the word “exclusive” (or non-) for actual, legal rights–specifically the ones covered by the statute (17 USC §106) and stick with “sole” for other limiting factors in a license, like media or geography.

For example, let’s say IlloBob wants to license an illustration of a squid to SurferSam for use on his surfboards and newsletters. He wants to make sure SurferSam doesn’t use the illustration on t-shirts or to be able to re- or sub-license to third parties for their use. He also wants to be able to license the same illustration to others including for their use in their newsletters. His license might read like this:

Conditioned upon full and timely payment received, IlloBob grants to SurferSam the non-exclusive right to reproduce the Squid Illustration solely on SurferSam surfboards and in SurferSam newsletters for one year, starting January 1, 2019. SurferSam may not license these rights or any other rights to any third party, except as required to produce the surfboards and newsletters permitted by this license.

By using the word exclusive (or non-exclusive) only with the rights (as opposed to the media), a licensor is protected from accidentally granting exclusive rights. To see the difference, look at this variation of the license above:

IlloBob grants to SurferSam the right to reproduce the Squid Illustration exclusively on SurferSam surfboards and in SurferSam newsletters for one year, starting January 1, 2019.

Is that an exclusive license? Can IlloBob license the work to anyone else to use in a newsletter? Can SurferSam use the work on t-shirts but without exclusivity? Maybe yes to all of the above. Well informed lawyers could debate all that and more, just because of how the word “exclusively” is used.

If you don’t fully grasp the differences here, that is what I (like other lawyers) am here for. I can help you draft licenses that will provide your client what it needs while making sure you aren’t accidentally giving away more, and it won’t cost you an arm and a leg. A little professional hand-holding now can save you lots of money and frustration in the future.

Google Images Does a Right Thing (Finally)

I’m no fan of Google. Like the other big internet companies (and many small ones) they have played dumb about the harm they have caused to creators all over the world. One of their big falsehoods has been that they have acted like it was virtually impossible for them to help prevent infringements by making copyright notices and other ownership data more evident.

So, this morning, I was thrilled to see that they are finally doing something about that. According to that article, Google will now be displaying authorship more clearly and, importantly, some of the metadata in the photos in a Google Image search. Huzzah!

This does mean that you, as photographers and other creators, need to be better about managing your metadata. Take the time to add not only your name and contact info into the metadata in your work, but also a proper copyright notice.

I think this may make a significant difference in future infringement claims and may even result in fewer infringements, but the trick is to make sure your work is clearly attributed to you. Ask your clients to maintain the metadata and clean up your own files, too.

Now if we can only get companies like Facebook/Instagram, Twitter, etc., to do the same.

I Bake Bread…Really Good Bread

The photo is of the sourdough boules I made last week. They are from scratch, from a starter I started months ago, and comprising nothing more than flour, water, and salt, including the starter.

I bake almost every week, never less than every-other week, and it has been a couple of months since we’ve purchased bread of any kind, except for hamburger buns once when we had a last-minute guest to dinner and I didn’t have time. It takes me all day to make the dough and shape the boules, which then have a final proof overnight and get baked the following day. It is a discipline and, for me, an exercise in mindfulness, presence, and perseverance.

I grew up cooking. I literally cannot remember a time when I didn’t cook. My mother was a gender traditionalist and, being the only daughter, it didn’t matter that I was substantially younger than my brothers–I had to cook for them, first with her then on my own, later. From my very beginning of my own consciousness, I remember being in the kitchen or the grocery. I actually have (and often use) the cast-iron flat small oval pan I remember trying to make pancakes on, by myself for the first time, when I could not have been more than five [1].

Mom was a very good cook and so am I, and I (like her) cook intuitively rather than by following recipes (see “there is fat in the batter” thinking in FN1… ha!). When my brother took cooking lessons as an adult he asked for my recipes and I could not give him more than a rough “some of this, a bit of that” kind of litany. Honestly, I don’t know how I make a lot of what I make–I just make it.

I’m one of those people who can look in a fridge and cupboards and, no matter how bare, will be able to come up with a couple of tasty “peasant food” meals. I learned this ability from Mom, and our poverty. It was a great tool for surviving college, grad school, and law school.

Anyway, Mom, for all her cooking, didn’t bake much and so neither did I. Basic cakes, yes, and the occasional cookie, but those are pretty forgiving if you stray from the recipes. Breads, though, require a certain scientific discipline she never could (or, perhaps, would choose to) grasp. I think some of it was because her mother was such a good baker that, just to be difficult, Mom chose not to follow Grandma’s baking tradition. My very Polish grandmother would rarely appear from the east (Wheeling, WV–we lived in Columbus, OH) but, when she did, it was always with paper grocery bags filled with enriched, yeasty, often raisin-filled, tasty baked goods. I can still remember the smell of her and it’s the smell of the goods in those bags. Sadly, we never baked together and thus bread making was fairly foreign to me. I wanted to learn so I did, later in life.

Cooking is like shooting photography–you can play a lot with and stray a lot from the recipe and still get good (sometimes great) results. Baking however, especially bread, is like traditional photo printing in the darkroom–you have to mix hard science with the art and if you stray too far from the science, you get crap results. In other words, you need to understand and respect the science of bread-making (yeast, heat, gluten formation, proteins, etc.) in order to make decent bread and to learn the science to the point of mastery to make really good bread.

For me, baking bread well is also like being a good lawyer: the more you learn about your particular field of law, the better you create. You have to respect the traditions, statutes, rules, and the processes, but you’ll make better lawyering when you have internalized how the law works so, for example, you can know the feel of that right spot in any of your drafting. Just as a Tartine sourdough loaf is to Wonderbread, so is a beautifully crafted document to a boilerplate one. When you know the specific law in real depth, you can find the hidden issues in a case and the winning legal points. It’s like learning how bread dough feels when it’s been worked enough or proofed right.

So why am I sharing all this? Because I think there is a lot of Wonderbread in my profession, especially in copyright law these days. I want you to know that is not what you’ll get with me. There are large firms who have a gazillion associates and paralegals who will take your case and treat it like it’s debt collection. They don’t know any more than the minimum about the law; they are competent, not obsessed. I’ve read the complaints and other papers they file and I don’t know how some of them can look at themselves in the mirror and call themselves “good lawyers.” I can tell you there has been more than one where I feared the client would get stuck with paying the other side’s attorney’s fees because the case should never have been filed.

Moreover, these massive firms won’t care why this particular image means more to you than another or look at the case in any depth, they’ll just do the minimum to get something and often not even remember your name. Worse, there are companies not owned or run by lawyers and so they care first and foremost about making their own bank, not you or your case.  But they’ll be happy to take about half, if not more, of your settlement for their efforts.

That ain’t me. I know and care deeply about the law and how it works. I’m a dweeb, a nerd; I read case law and journals not because I have to but because I love it. I’m a passionate lawyer and obsessively so about copyright law. I agonize over my drafting, the rules, and making sure the law I cite is the best for the issue. I file only a few cases at any one time because litigation is time-intensive and I refuse to take on more and maybe do any less well.

Also, I build relationships with my clients and I take pride in that. I know about their families and they know about me and those close to me. I know the history of the works they ask me to protect, whether that is a work made for a client or personal work, and why it matters. While I get paid (usually much less than the infringement mill companies, by the way), I also sometimes get gifts from my clients–usually their own art–and that is something that has brought me to tears more than once.

If you want Wonderbread, I suppose you may be satisfied with the big firms or infringement “enforcement” companies. You wouldn’t be a good client for me, then. But if you want a relationship with a lawyer–something more than just a form and a rotating list of associates for your cases–shoot me an email and let’s get to know each other.

You might even a bread recipe out of it.
Really good bread.

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[1] Sadly, they were a bit of a fail as couldn’t remember if you needed to grease the pan and I errantly decided that, since there was fat in the batter, I didn’t need to. Mom came in as I was trying to scrape off the first batch.

Reminders

I’ve had a couple of cases (or, I should say, cases I had to say “no” to) recently that make me think creatives could use a few reminders.

First, on the bad idea of trying to make your infringement matter into a breach of contract; second, some Don’ts to remember.

 

In other news and speaking of reminders, yes, I’ve been terrible about posting lately. Mea culpa. I have had some cases in litigation that are time-sucks on top of my usual case load, plus I just experienced my first summer as a parental-ish figure (to my BF’s lovely home-from-college-for-the-summer daughter), but, really, I owe you all a better frequency of posts. I’ll try to do better. 🙂

Finally, my office partner Ruth Bader Catzburg just celebrated her second birthday. She is as small and feisty as her namesake.

New Tool! (For infringement searching)

I’ve been hearing from clients how they are frustrated that they can’t find a decent service that actively monitors multiple images for possible infringements. That is, one that doesn’t then require them to use the monitoring company’s services to pursue claims, like ImageRights or Pixsy (etc.) do.

Lots of photographers don’t want to have to pay 50% or more of their settlements, often on top of subscription fees, and I don’t think they (or you) should. It’s your money and fees like that, in my opinion, are outrageous. It’s like when stock agencies went from the photographer getting most of the licensing fees to the photographer getting practically nothing–it’s your work and you deserve to keep most of the money collected!

Anyway, like I said, clients were asking for options and I didn’t have a good one to present. So, I started digging.

The usual suspects of Google Image or Bing Image are strong tools but aren’t for monitoring. You can’t upload a bunch of images then get a report about them–you can only do one-off searches. There is a Russian site called Yandex that a client recommended, but I honestly do not trust any Russian site not to then take your images and re-sell them behind your back[1].TinEye has been around for some time, but they’re way pricey, especially for a solo artist.

Finally, after some Reddit hunting, I think I have found the answer: a UK company called Infringement.report.

Infringement.report’s service is a subscription, web-based tool at a ridiculously fair price point. Seriously. How does $25 a month grab you? That level will cover many of you but even if you are the busiest and want to track a ton of images, the most expensive monitoring plan is $150 a month.

They have no contracts, no limitations on who you can work with, and they specifically do not pursue claims. In their own words, “We don’t pursue infringements, leaving you free to choose your own lawyers and keep 100% of settlements.”

Huzzah!

And, most importantly, it works[2]. I did a small test (you can test drive for free with up to 3 images) and was stunned at the results. One of the images I tested is a client-friend’s that I knew had been ripped off before. In an hour it found at least 19 uses of that photo, most of which were unauthorized.

You can get reports emailed to you. You can download the data as a .csv file to put in Excel or your own database. It’s got an API (maybe you have software it can talk to directly?). The results are dead easy to read and understand. And you don’t have to be a geek to figure out how to use the tool. Payment is made via PayPal and the terms of service are not sneaky.

Honestly, I keep looking for a big negative but, so far, I can’t find one.

So go forth and monitor your work[3]. When you find infringements, hire your own, personal copyright attorney (like me) with whom you can build a relationship. And keep most of your own money.

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[1]Go ahead and call me “racist” if you want–I know what I’ve seen in my practice and Russian sites are some of the worst infringers.

[2]Okay, I have to admit (1) there was a little bug that gave me a warning about having uploaded too many images for the free trial, when I hadn’t, but it worked anyway; and, (2) I having been testing it long, yet.

[3]Register the copyrights first, m’kay?

What To Do, part 2

So you’ve found a probable infringement and you’ve gathered all the evidence you can (see previous post), now what? You have choices[1]: do nothing, contact the infringer yourself and send an invoice, contact the infringer yourself and send a cease and desist/demand letter, send a DMCA takedown notice to the infringer’s ISP[2], or contact a lawyer.

Of course, I’m going to say “contact a lawyer” is your best option (um, duh!), but I’d like to discuss the other options a bit here, too.

First, I think that doing nothing is not a good option, with one exception: if you are so utterly risk-averse that you can’t bear the slightest chance that you may end up in court over the illegal use of your work, then sit on your hands and seethe, but do nothing. That is, if you do anything else like the options described below, you do run a small (and usually is a very, very small) risk that the other side will file suit against you for declaratory judgment that it did not infringe. This is really rare because copyright infringement is strict liability and so, unless you missed something like a license granted to the infringer, it’s a loser case for the infringer. I had this happen once–the infringer tried to use it to scare off my client. Didn’t work and, not too much later, we negotiated a settlement that my client was quite happy with (plus, my client saved the cost of filing the suit). Still, if you don’t want to face the generally tiny possibility of going to federal court, do nothing.  Otherwise, read on.

Some people suggest sending an invoice to infringers, but I don’t encourage that. It’s likely you will undervalue the infringement and maybe even miss additional claims that will add value to the overall matter, so you sell yourself short. Worse yet, an invoice sent will virtually neverresult in you getting a check for your invoice’s full amount. At best, the invoice will be a start to a negotiation; but, if you’ve already undervalued the matter and then you end up at, say, 50% of that, you’re bleeding money. You also set your price without knowing all the facts and that could bite you if you end up in court later. Nope, invoicing is not a wise idea in most cases[3].

Similarly, I generally don’t encourage creatives to send cease and desist (aka demand) letters of their own drafting because they usually (of course, accidentally) screw them up because of language errors as well as under-valuation. If you don’t know the law, you may  (as mentioned above) miss legitimate claims that add to the value of the matter and you could end up offering to release a $25,000 claim for $5000.

As for language, there are two main areas of concern: misusing legalese and slipping from legitimate demand into extortion. The latter, first: “Pay me $10,000 or I’m going to go public with what a thief you are!” is going to get you in trouble but a demand for $10,000 to settle the claims is not inappropriate if the facts support it.  The line isn’t so obvious sometimes and, since anti-copyright folk scream Extortion! at any demand, you want to be sure you don’t actually cross that line.

Using legal language incorrectly happens often and often it is by people who are very smart but, not being attorneys, they have no clue that using certain words means something different in a legal context (like published in copyright law, for one example). To paraphrase Inego Montoya, “I do not think those words mean what you think…” and that can get you in trouble when the other side lawyers up.

Another error in artist-drafted letters is you can be a doormat: “I’m sorry, I’m sure you didn’t mean to, but you used my work. Would you be willing to pay me $100?” is differently but arguably just as bad as accidentally extorting the infringer. You’re undervaluing the infringement and groveling…ick! Overall, unless you have a form letter drafted by an attorney and you are very confident in evaluating your cases for all the potential claims and their damages, I encourage you to refrain from drafting and sending letters yourself.

Moving on… sending a DMCA takedown notice to the ISP is a tool you can wield, and it will probably get the infringement stopped, but it does nothing about getting you the money you deserve for the illegal exploitation of your work. Usually, I think it is better to notify the actual infringer first (as a part of a demand letter) and then, if it doesn’t remove the work, send the takedown notice. This can be a strategic choice that is worth evaluating with an attorney too as, for example, continued use after notice can be a factor for willfulness. Also, you do want to be sure to send a technically proper notice, if you choose to send one at all.

That brings us to the final option: contacting an attorney. A competent copyright attorney will avoid the issues described above, will evaluate your claim(s) and your opposition’s potential defenses, and will advise you on your best course of action. We have to–there are rules (actually, laws[4]) that demand it of us. So, as opposed to companies[5] that claim to help you with your registrations or infringements, attorneys, once hired, must put your best interests first, including above our own. It’s part of why we have to be licensed–to provide competent counsel to our clients.

While we attorneys can’t take every case that is brought to us, we are required to hold your information confidential even if we don’t take the case so it is worth talking with one of us before you do anything.

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[1]As long as it is still less than three years since you discovered the infringement (in most cases/places), you have options. The statute of limitations is 3 years for infringement and usually that clock starts ticking when you discover the infringement. Don’t wait until the last minute.

[2]DMCA takedown notices do not go to infringers but rather to the ISPs that host the infringement. For example, if I were an infringer of the post office photo I showed in my last post, the author of the photo would send the notice to my host, not me. It gets the work removed and gives the host/ISP a legal protection (safe harbor) against being sued for infringement, but the author could (and arguably should) still go after me as the actual infringer.

[3]An exception may be with an existing client who has used work beyond the scope of a license; then, for a continuing-business-relationship reason, an invoice may be wise.

[4]See, e.g., Cal. Bus. & Prof. Code §6068, including sub-section (g) that says an attorney must not “encourage either the commencement or the continuance of an action or proceeding from any corrupt motive of passion or interest.”

[5]Companies are required to make as much money as they can for their shareholders, first and foremost.

What to Do (Collecting Evidence)

When one finds one’s work being used by someone without permission, much less payment, there are some things to be done besides just swearing about it. Before doing anything regarding the infringer, especially before contacting it, do the most important thing: collect all the evidence.

If your work is appearing in print someplace, or in 3 dimensions (depending on your art), take copious photographs of it. Try to get close-ups and photos of the context (in a bank, on a billboard, etc.).

If, say, the work appears on a product, note the store where it is being sold and ask the manager for the name and contact information of the supplier, if it’s not a company you recognize. You can also buy example products (or publications) bearing your work, if that is an option.

Online? Make screenshots. Get the whole page if possible (try an app like Paparazzi) and also try to get a screenshot showing as much of the URL as possible while also capturing the infringing use. When you do that, however, make sure to hide your favorites and close all other tabs–you want a clean example of the infringement[1].

Got the shots of the work on the public-facing pages of the site? Great, now find it on their servers. In Safari, go under Develop>Show Web Inspector and you’ll see a folder called Images. Here, I have a screenshot looking at this site that way where I’ve ID’ed a photo of the La Jolla post office I made (selected in the screenshot below):

Double-click that highlighted icon and it will open the link to the work as it appears on the infringer’s server (here, on my server). Get screenshots of that as well and note the URL(s).

Okay, now do you use metadata in your images? Please say you do. If so, then check the metadata on the infringing photograph–see what has/has not been deleted or altered. Preserve that evidence as well (make pdfs of the results, for example).

Finally, for web-related infringements, preserve the infringement on the Wayback Machine at archive.org. You do that by checking to see if the page is there already (and do this for the front-facing pages and the server pages); if it’s not, then you’ll see that you can add it. Here is what I got when I put in the URL for the server page holding my post office photo, for example:

Once you’ve done all that you need to find, in your own records, your copyright registration for the work and copies of your deposit copies. If it’s not registered and it is still within three calendar months of your first publication of the work[2], register it immediately[3]! Also note where you have licensed the work to be used and where you have published the work yourself (exact URLs for everything–not just “on my site”). Basically, think of every place that your opposition may have found the work and note the URLs.

Put all of the above into a folder for that infringement, before you do anything like contacting the infringer.

Yes, this all is some work, but evidence is so important that it is totally worth it. I can’t begin to tell you how many times someone has contacted me with what sounds like a great case but, because s/he hasn’t preserved evidence of the infringement, there is noting that I can do for her/him. I may know it is an infringement, but if I can’t prove it, there is nothing I can do for you.

So, once you have all the evidence, then you can decide what to do about the infringement itself. In my next post, I’ll talk about your choices.

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[1] No reason to give anyone any personal data accidentally, like that you also were looking at porn or something (yes, this happens).

[2] Remember that “publication” has a different meaning under copyright law here so if you offered it to a client for its use, even if it wasn’t used, then it is published. Also, posting the work on a site where you say, basically, “you can license this work” is publishing. However, just because you posted it on your portfolio site (no offer to license) does not make it published. If you aren’t sure, ask a copyright lawyer, not your creative buddies, for advice.

[3] If it is too late, then your options are limited for how you approach the infringement, since your remedies are limited, but it still may be worth pursuing.

Blockchain is for Blockheads

Remember what I wrote recently? Seems a respected investment hedge fund agrees:

The use of blockchain in operating an image copyright platform accomplishes nothing. KODAKOne intends to utilize smart contracts and a crypto-asset to solve the problem of copyright infringement, but the business idea is flat-out silly. Cryptographically hashing an image into a blockchain doesn’t prove the provenance of intellectual property, a blockchain does not reduce the resources necessary for copyright enforcement […]

It’s definitely worth reading the whole original post on this, from the UK’s Mr. David Gerard, as he shares more on what a total scam blockchain is for photographers overall.

Look, if you want to protect your copyrights, REGISTER your work with the USCO and hire an attorney to go after infringers (it costs much less than you may think).

Exclusive Licenses and Your Business

Have you ever granted exclusive rights to your work? If so, I sure hope you got paid enough for it because you may not be able to sue for infringement of that work. Maybe. It depends. Language matters and this is (likely, surprisingly) technical stuff.

A new case doesn’t help; actually, it kind of muddies the water and I’m sure it will be debated by lawyers in filings and cases to come. In Fathers & Daughters Nevada, LLC v. Lingfu Zhang, Case No. 3:16-cv-1443-SI (D. Or January 17, 2018) (“Zhang“) the court split a fine hair about standing and exclusive licensing and it has some copyright owners and licensors[1] worried.

Get popcorn, this is going to take some explaining.

Courts require something called standing in order to sue (for any suit). Standing roughly means that the plaintiff is the person who was harmed/affected by the defendant’s illegal actions. If you get punched by a jerk in a bar, you have standing to sue the jerk for assault and battery because you were put in fear and physically harmed. Your friend who, from across the room, saw the jerk hit you? She does not have standing to sue the jerk for assault and battery for that punch, because she wasn’t actually harmed by it[2]. Got it? Good.

Now, a bit about copyright… it is often described as a bundle of sticks where each stick represents an exclusive right. That bundle actually consists of six big sticks: one for each of the rights listed in the statute[3]: to reproduce the work, to prepare derivative works based upon the work, to distribute copies of the work, to perform the work publicly, to display the work publicly, and to record and perform the work by means of an audio transmission. Each of those big sticks is made up of its own sub-sticks, and they can be very specific sub-sticks. For example, the right to reproduce can be made up of the sub-sticks “the right to reproduce the work in print,” or “the right to reproduce the work in the USA,” or “the right to reproduce the work for 6 months,” or those sub-sticks can be combined into the stick “the right to reproduce the work in print in the USA for 6 months.”

It’s an imperfect metaphor, but it’s about as good as we can get and it’ll be helpful here.

Anyway, an original owner of a copyright owns all these sticks[4] and can share any of them by non-exclusive licensing. After granting a non-exclusive license, the copyright owner still holds the stick. The licensee doesn’t get the stick but the license means s/he/it can’t be hit with that stick now, so to speak[5].

However, (and here’s the thing I bet you didn’t know) when an owner grants an exclusive license for any of these rights, these (sub-)sticks, s/he is handing that stick over to the licensee–and (often) letting go of it. The statutes and case law say that an exclusive license is tantamount to ownership of the right conveyed in the license[6]. For example, if you grant the exclusive reproduction right in print in the USA for 6 months, you no longer own any right to reproduce the work in print in the USA for that 6 months.

Now to bring the pieces together… to bring a suit for copyright infringement, to have standing to sue, a plaintiff has to be the person who owned the rights actually infringed at the time of the infringement. In other words, the plaintiff had to have that particular stick when the infringement happened. Let’s look at some examples to make that clearer.

Example 1
Betty makes an illustration and grants a non-exclusive license to Forbes for display use on its website for 6 months only. Sometime during those 6 months, BloggerBob copies the article and the illustration and displays them on his own website. Forbes cannot sue for infringement of the illustration[7] because it only has a non-exclusive license and Betty still owns the exclusive right. Betty still has the stick for website display during that time and so she has standing and can sue BloggerBob for the infringement.

Example 2
Betty makes an illustration and grants an exclusive license to Forbes for display use on its website for 6 months only. Sometime during those 6 months, BloggerBob copies the article and the illustration and displays them on his own website. Forbes can sue for infringement of the illustration because it has an exclusive license for website display for those 6 months! Here, Betty does not own the exclusive right any more–she has handed that stick to Forbes for the 6 months–and so Betty cannot sue BloggerBob for that infringement.

Example 2a
Now, just because Betty has handed a stick to Forbes doesn’t mean she didn’t keep all the other sticks. During this same 6 month Forbes license window, Tony Tshirt illicitly prints Betty’s illustration on clothing and sells the items. Betty (not Forbes) has standing to sue Tony for that infringement because he infringed on a different exclusive right that she still owns.

 

Okay, now here is where it gets uncomfortable and confusing. In a previous case[8] in the 9th Circuit (Minden, as well as other cases and in other places), the court said that a copyright owner can grant an exclusive license to a licensee and (wait for it) still keep that same stick–essentially saying both the licensor and the licensee have the stick, while excluding all others from having it. The terms of the exclusive licenses in Minden and these other cases included the owner retaining some the right explicitly or the licensor had something called “beneficial ownership” of the right (for example, was paid royalties based on the exploitation of the right granted[9]).

However, in the Zhang case I mentioned at the start of this post, the court said the copyright owner, when it granted an exclusive license for the right later infringed, gave that stick to someone else entirely and so didn’t have standing to sue. That is, they didn’t keep any of the stick for themselves (nor get any beneficial ownership), and since it was that stick’s rights that were infringed, the copyright owner could not sue. Ouch.

Yeah, I know, it sounds a lot like the same as Minden, but with a different outcome, but it isn’t, quite. The difference is very much in the wording of the licenses– technical stuff. Honestly, these issues are sometimes difficult even for attorneys to understand, and we are highly trained to understand them! Don’t feel bad if you don’t totally grok this stuff.

So why am I bothering to tell you about this? What does this mean for you as someone who licenses your work to others? Basically, you need to be very careful of your license language and, if you are going to grant an exclusive license especially, make sure you do it in a way that works for you AND that you get paid enough for it.

Too many artists just throw around words like “exclusive” without understanding that they could seriously impact rights and the artist’s livelihood. Don’t be one of them. Also, don’t sign contracts unless you fully understand all the terms and their effects.

Best practices would be to hire an attorney to draft your licenses and to read contracts offered to you by your clients. Yes, this will cost you some money but (a) you can write it off and (b) it may save you much more in the long run. Ignorance is no excuse, especially in court. Worse yet, when you throw around legal-sounding words without understanding their effects, you are still bound by their effects.

Remember: you are an artist who is running an arts-based business–you need to run it like the real business it is.

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[1] A licensor is someone who grants licenses to another party (that party is the licensee).

[2] I know someone reading this is going to say she could sue for something else, and maybe she could, but I’m not going there. Just roll with the example being limited to civil assault and battery.

[3] 17 USC §106

[4] A later owner, someone to whom the copyright was assigned (transferred) may very well own all of these rights, but it’s possible s/he/it may not. To use the favorite phrase of attorneys everywhere: it depends. It can get very complicated and I don’t want to go into all that here.

[5] I mean, a licensor can’t sue the licensee for a use covered by the license granted to the licensee.

[6] 17 U.S.C. § 501(b); Minden Pictures, Inc. v. John Wiley & Sons, Inc., 795 F. 3d 997 (9th Cir. 2015); Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 890 (9th Cir. 2005); etc.

[7] Forbes’ rights in the article may be an entirely different story–I’m only discussing the illustration here.

[8] Minden, 795 F. 3d.

[9] Broad. Music, Inc. v. Hirsch, 104 F.3d 1163, 1166 (9th Cir. 1997).

 

New Rules! (for photo © registrations) UPDATED

Back in December of 2016, the US Copyright Office (USCO) proposed new rules for group photo registrations, including significant changes to registering a pile of unpublished photos. I wrote about the proposed rules then. Now, the final rules are out and they mostly match up with the proposed ones, but not completely.

The new rules make two categories of group photo registrations (leaving out databases, which are a different kettle of fish and most individual artists will not have to address those, so I’m skipping them here). The two categories are GRPPH for Group (of) Published Photographs and GRUPH for Group (of) Unpublished Photographs. Now, most of the rules are the same for both, making life a little easier as you will have to learn, essentially, one system.

First, though, you’ll notice that you still have to keep published and unpublished separated. The USCO looked at the issue and they simply can’t change that as it is not a “rule” but rather part of the law itself. The USCO has the authority to create and modify rules, but it can’t change the underlying law or create rules that conflict with those laws. It does sound like they think the split should be dropped, though, so maybe that will come sometime in the not terribly distant future?

Oh, and about the unpublished photographs… you will no longer be able to do the unlimited number of photos as a collection option. It is GRUPH only from here out.

Anyway, the new rules… first, the commonalities. These are the rules for both groups:

  • must have a title for the whole group
  • must have titles for each photograph in the group (can be just the file names, but with character restrictions)
  • limit of 750 photographs per registration
  • all photos must have the same author[1]
  • must register online–no paper registrations will be accepted
  • must pay the $55 fee
  • must submit digital deposit copies (jpeg, gif, tiff only), preferably in an uploaded .zip file containing all the photographs (that must be <500 megabytes total[2]);[3]
  • must submit a separate document that lists the photos in a very specific manner (more on that below) that should be included in the .zip file.

For published photographs, the pilot program is ending with these new rules. If you’ve been a part of the pilot program, the USCO should be contacting you about the changes. As for the registration differences, published photos have these additional rules: they all must be first published within the same calendar year (i.e., 2015 or 2018, etc.), same as the current rule; but, and this is new, they do not have to have been first published in the same country. Also, you will need the date of first publication for each photograph.

Now, about that list document… this is going to be a bit of extra work, but it really will be helpful in the case of an infringement as all the information about the deposit copies will be easily accessible. For this document, which the USCO says should be either xls (an Excel file) or a pdf, there are nitpicky rules. I suggest making a template and sticking to it.

First, the document itself must be named in a very specific manner: the title of the group plus the case number assigned to the application by the electronic registration system. Yes, that means you can’t name the document until after you have created the application online and get a case number, but you can still prep the document (that will be uploaded with the deposit copies) and have it ready, just add the case number to the title. An example for a group registration of unpublished photos that Photo Betty is making from her trip to Hawaii might be Group Unpublished Hawaii Photographs Case Number 123456789.xls. Or, for published photographs from the same trip, Group Published Hawaii Photographs Case Number 987654321.xls.[4]

The contents of the document need to be, in order:

  • sequential numbering (i.e., 1, 2, 3…)
  • title of the photograph (this may be the same as the file name)
  • file name of the photograph (no characters other than letters, numbers, and spaces).

So, for example, the contents of the document for unpublished photos might look something like[5]:

  1. title: Maui at Dusk 1 file: Maui1.jpg
  2. title: Maui at Dusk 2 file: Maui2.jpg
  3. (etc.)

If the photos are published, then you add the date of first publication. So, the example above, if Betty published them on her stock photo site on January 15, 2018, would be:

  1. title: Maui at Dusk 1 file: Maui1.jpg pub. date: 1/15/2018
  2. title: Maui at Dusk 2 file: Maui2.jpg pub. date: 1/15/2018
  3. (etc.)

That’s it and, really, it’s not that terrible.

More importantly, the rules specifically state that photographs registered as a part of one of these groups will each be individually covered by the registration. That is a very big deal. That eliminates one of the biggest arguments defendants make–that is that any one photograph is only a tiny part of the whole registration and so the damages must be less or, even, that fair use applies. Nope, now it will be clear that each photograph in the group gets the full measure of damages and is fully protected as its own self (not a part of a greater whole). Huge benefit there, especially for unpublished photos where this has been a particular problem.

These new rules go into effect on February 20, 2018. For the detailed information, go here (pdf).

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UPDATE: The USCO has come out with help pages that include links to templates (Excel) for making the lists. Go here for unpublished and here for published.

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[1] “Author” does not necessarily mean “photographer” although it can. If you are an individual photographer then you are the author of your photos. Easy-peasy. However, for studios with multiple photographers and other employers of photographers, the employer is the author of all the work, even if created by multiple photographers.

[2] The photos may be compressed to fit the file size requirement.

[3] You can send flash drives or DVDs or similar instead, but it’s really easier (and much faster to get your certificate) to upload the files.

[4] While the rules do not specifically say you must say “group” in the title, it has been preferred that one do that and I suspect that preference will continue. It won’t hurt to use that format so I suggest sticking to it, at least for now.

[5] The new rules state that the information I note must be included, as I have it here, but it doesn’t say what the preferred format is. This is a best guess for how they want it from the description in the rule. I expect the USCO will clarify in the instructions on their website soon. For example, maybe the Excel sheet can have the words “title” and “file name” (and “pub date”) in the column headers rather than in the text.