Near identical photograph - no copyright infringement

A recent story in The Guardian caught my eye.  It was used by Jonathan Jones as an example of lack of the 'amateur delusion of photographic art' but the post about what level of copyright protection should be given for photographs (and whether that should vary dependent on the type of photograph) will have to wait for another day.

Sarah Scurr's photograph of an iceberg off the coast of Chile

This story concerned a photograph of a glacier which was taken by a British language student back in 2006.  Sarah Scurr was on a boat trip around the Patagonian ice fields when she took a photograph of glacier.  She was living in Chile at the time but when she returned to the UK in 2009 she decided to enter it into The Telegraph's The Big Picture photography competition.  The Big Picture competition is explicitly aimed at finding good quality holiday snaps and the prize is currently a £500 Nikon camera.

Last month the photograph came to the attention of another photographer, Marisol Ortiz Elfedt.  She was very surprised to see that the photograph had been published in The Telegraph.  It was an image she was very familiar with and looked very similar to one she had taken in 2006.  She complained to The Telegraph who investigated.  It turned out that the two photographs were taken on the same day and, given the fact they were on a moving boat, likely at more or less exactly the same time.

Marisol Ortiz Elfedt's photograph of the same glacier

Think how many identical photographs there must be of famous landmarks stored on various computers around the world.  As Scurr, when interviewed by The Telegraph commented, it is surprising that issues like this do not arise more often.  Clearly copies like this do not infringe copyright but the position is more complicated when people try to recreate a famous photograph having the photographic image (rather than the scene or object) clearly in mind.

One UK case which springs to mind is Creation Records.  A photograph of an Oasis album cover was taken by a tabloid photographer before the official photograph had been taken (and from a different angle and distance).  There was no copy of an original work - the judge easily found that there was no copying of the photograph (see below) and arguments that the arrangements of props constituted a dramatic work, collage, sculpture or work of artistic craftsmanship all failed.

The relevant paragraph [15] from the judgment is below (emphasis added):

Next, Mr Merriman contended that Mr Seeburg's photograph was itself a copy of the official photograph taken by Mr Jones, regardless of the order in which the two were taken. I do not see how that can be argued. If the subject matter is not itself copyright, in principle two different photographers can take separate photographs of the same subject without either copying the other. Of course copyright subsists in the official photograph and if it were the only source of the scene it would be an infringement to copy that, either by a direct copying process or by the scene being recreated and a fresh photograph taken of that recreation. But it is a basic proposition of copyright law that two works created from a common source do not by reason of that fact involve copying one of the other, however similar they are.

Consequently the claim of copyright infringement failed.  However, had the tabloid photographer recreated the official photograph rather than photographing the scene, he would almost certainly have infringed.

There are two morals to this story.  First, be careful before crying copyright infringement - remember that it may be a coincidental image - is it identical or just very similar?  Secondly, as we know from the red bus case, recreating a photograph can still infringe.  This is theoretically the case even if it is of a famous building or landscape - although the less creative the composition the more the similarity of technique, lighting, effects etc will be important in determining whether a substantial part has been taken.

For those worried about the outcome of the Creation Records case, whilst the copyright infringement claim may have failed, the judge found in favour of Oasis and granted an interim injunction on the basis of breach of confidence.

Is copyright in a 1980s Michael Jordan photo infringed by the Jumpman logo?

In the run up to the 1984 Olympic Games, Jacobus Rentmeester took various photographs of Michael Jordan for LIFE magazine. The iconic image which he ultimately produced involved a jump which Rentmeester asked Jordan against a plain skyline with freshly cut grass. The photograph that he took is below.

What happened? 

According to Rentmeester's complaint, following publication of his photograph in LIFE magazine, Nike paid Rentmeester $150 for temporary use of two 35mm colour transparencies. The invoice stated that this was “for slide presentation only, no layouts or any other duplication”.

Rentmeester alleges that following receipt of the transparencies, the below photograph was produced and used by Nike as part of an advertising campaign for Air Jordan shoes:

Mr Rentmeester apparently complained about Nike's use of his photograph to create the above image and in 1985 he reached a settlement with Nike whereby, in return for $15,000, he agreed that Nike could use the photograph on posters, billboards etc in North America only for two years.

Rentmeester is now complaining that Nike continued to use the photograph beyond both the term and the territorial restrictions imposed by the 1985 agreement. Significantly, Rentmeester is claiming that Nike's use includes the famous Jumpman logo.  For those unfamiliar with the logo, the complaint includes the following handy comparison of the silhouette of Michael Jordan in the Rentmeester photograph (left) with the Jumpman logo (right).

The complaint goes into a lot of detail regarding the creative decisions that Rentmeester made when creating the photograph:

"Mr. Rentmeester wanted to maximize visual attention on an isolated figure of Mr. Jordan, and so the photograph needed to be taken outside, with a background of sky rather than the interior of an auditorium. Mr. Jordan would be depicted in away to express his tremendous athletic ability: he would leap through the sky and appear to soar elegantly. Mr. Rentmeester created the pose, inspired by a ballet technique known as a “grand jeté,” a long horizontal jump during which a dancer performs splits in mid-air.  The pose, while conceived to make it appear that Mr. Jordan was in the process of a dunk, was not reflective of Mr. Jordan’s natural jump or his dunking style.

Mr. Rentmeester further planned that Mr. Jordan would leap with his left leg forward and his right leg behind, and his left hand extended while holding the basketball, so that the basketball would appear to be perched on top of his fingertips, his body open and facing the camera, his limbs extended outward, and his right hand open, showing his fingers."

Given that level of input into the creative process, following Infopaq and Painer, the photograph would be protected in the EU as Rentmeester's own intellectual creation.  Presumably the position is the same in the USA.

Why now? 

The cause of action arose in 1987 – when the licence expired (or possibly sooner if Nike used the photograph/Jumpman logo outside of North America before then). So, why has Rentmeester waited?

The cause of the delay is anyone’s guess – lack of money, time or inclination to do anything about it in the late 1980s, perhaps. However, the reason why he is pursuing the claim now is thanks to Raging Bull, or more precisely, the US Supreme Court’s decision in Petrella v MGM which was decided in May 2014.

The US Supreme Court found that because the US Copyright Act limits retrospective relief to three years before the date of claim, laches does not apply.  Laches is the equitable doctrine that states you cannot pursue a claim if you have unreasonably delayed in bringing a claim - 30 years would likely have constituted an 'unreasonable delay'.   Moreover, the court decided that ‘when a defendant commits successive violations, the statute of limitations runs separately from each violation.’ In other words, every time that Raging Bull is distributed (or Nike sells a pair of Jumpman branded goods) a new three year limitation period starts to run.

It is worth noting that it follows from this that there is no benefit to Mr Rentmeester in waiting until now. If he had pursued Nike sooner, he could have recovered losses based on past infringment and obtained a licence covering future use. As it is, the best Mr Rentmeester can expect is damages for the three years prior to issuing his claim and a licence for use going forward.

Does Rentmeester have a claim? 

At first glance, it is easy to see why many people online are dismissing this as another example of IP law gone crazy.   “It’s Michael Jordan who posed not the photographer” is typical of the general sentiment behind these posts.  However, I’m not sure it is quite so simple.  The pose in the photograph is not a natural one, it was deliberately selected by Mr Rentmeester (together with the plain background which makes the pose stand out even more).  Further, although I am no expert(!) it does not appear that Michael Jordan ever employed this balletic pose when actually playing basketball.  Further, Nike obviously thought that it required a licence when it settled with Mr Rentmeester in 1985.

Should Rentmeester's rights in the photograph extend to the logo? 

The copy of the Rentmeester photograph does appear to have been used since 1987 but it is the translation of the Nike photograph into the Jumpman logo which is where the money (and hence the battleground) lies.  Is this translation into a logo a ‘transformative use’?  Prior to Cariou and Prince, the answer would have been a definite "no".  But now the situation is less clear.  Indeed there is an argument that if Cariou lost to Prince, surely it follows that Rentmeester must lose to Nike.

Does it make a difference if the ‘fair use’ is not to create another artwork but to create a global brand?  Surely this sort of commercial use is sufficiently far from being an art work for transformative use to not apply?  We shall see...

This promises to be a very interesting case and one which I look forward to following – assuming it doesn’t settle…

Postscript: Michael Jordan and the wonderful world of IP 

Whilst researching this post, I found out that Michael Jordan is no stranger to IP litigation. He has had a long running dispute with a Chinese sportswear company, Qiaodan (the transliteration of “Jordan” in Chinese).

Jordan claimed that Qiaodan mislead customers into believing that he has authorised the use of his name (and his children’s names – which Qiaodan has applied to register as Chinese trade marks). Meanwhile Qiaodan sued Michael Jordan for $8million in retaliation claiming that his allegations had prevented the company from pursuing an IPO.

Interestingly, Qiaodan chose to use a logo which was more akin to Jordan’s traditional basketball movements (see below).

You can read Rentmeester’s complaint here.   Note: I could not find Nike’s response online - if anyone has a copy (or knows when it will be filed) please let me know.

Sources: NBA and Financial Times

Who owns art? Copyright, inheritance and Vivian Maier

Vivian Maier, self portrait New York c1950s
via Wikipedia

She has been compared to Cartier-Bresson. She captured the life on the streets of Chicago and New York for over 40 years and she died penniless and without a will. It is the lack of a will rather than her artistic legacy which has recently been hitting the headlines and threatens to prevent the dissemination of her art to the world that she spent so long photographing.

Vivian Maier appears to have two male heirs, both French and both first cousins once removed. One of these heirs, Sylvain Jaussaud, has transferred their rights to John Maloof, who was one of the first to discover Maier’s work and has since bought the majority of her negatives as well as helping to create a film which celebrates her work and its discovery. 

The second heir was identified by a photographer/lawyer, David Deal, who believed that Maier’s legacy was being misappropriated and sought to track down any additional relatives who might have a claim. He convinced a second French cousin, Francis Baille, to seek legal heirship in the US courts with Deal as his legal representative.

As all Art and Artifice readers are no doubt aware, there is a fundamental distinction between a work and the copyright in a work. One does not necessarily go with the other. That said, in the UK, at least, if you inherit a work of art, the copyright is deemed to go with it unless there is a contrary intention expressed elsewhere in the will. It is this distinction that is causing the problem, Maloof is the lawful owner of many of the physical photographs and negatives but is not necessarily the owner of the copyright.

Whether or not Maloof is the owner depends on (1) the agreement which he struck with Jaussaud which sounds from the reports like it was a full assignment of rights, and (2) whether Baille has a claim to full or partial ownership of the rights in the photographs as well.

There is now a court case in Chicago to determine who owns the rights.

Unfortunately, whilst the case is working its way through the courts, it will be very difficult to see Maier’s photographs. The Cook County Public Administrator department reportedly sent letters to put all interested parties, including galleries exhibiting Maier’s work, on notice of the rights issue. Any dealing in the photographs is likely to be a challenge until this is resolved.

In the meantime, I have some queries for my US colleagues:

1 A particular quote from the New York Times article which has been circulating around the internet states that: “Under federal copyright law, owning a photograph’s negative or a print is distinct from owning the copyright itself. The copyright owner controls whether images can be reproduced and sold.” That is quite surprising. I can see that copyright could stop a reproduction (and by extension a sale following a reproduction) but how copyright can stop the sale of the photograph or negative itself. There is a clear distinction between the object and the copyright. But if only the object is sold and the copy (i.e. print) was made by Maier (the artist) what is to stop the resale?

2 My understanding is that until the photographs are registered, it is not possible to get statutory damages or legal fees for infringement of the photographs. Is that correct? If so, what will happen if the copyright in the photographs which have been registered by Maloof is found to be owned (or partially owned) by Baille?

Any light you can shed on this and the case in general would be much appreciated.

You can read much more about the background to this story in The New York Times (which takes a more Maloof friendly approach) and in The Independent (which is a bit more suspicious of Maloof's motives).

Time Warner in copyright dispute over photographs

Legendary photographer Alfred Eisenstaedt (1898 – 1995) captured many iconic images during his long and distinguished career - a large proportion of which he spent working for Life magazine.

Eisenstaedt was also, reportedly, very generous - regularly giving copies of his prints to his friends, family and the subjects of his photographs.

Some of these photographs are now the subject of a legal dispute between Time Warner, the owners of Life magazine, and the family of Eisenstaedt's sister-in-law and friend, Lucille Kaye.

DNAinfo New York reports:

The dispute began in April 2013 when Kaye's family planned to auction off some of the work through Sotheby's.  

Time Warner interceded, claiming that under contracts it signed with Eisenstaedt before his death, it has rights to all the photographs and negatives he took between Jan. 1, 1929 and July 26, 1994. The media titan said that under the terms of the agreement, that includes the disputed photographs.  

But [John] Catterson, who represents Kaye's family, said Eisenstaedt had given the photos — which include the Hitler-Mussolini meet-up — to her.  

"The actual photographs we're talking about were photographs in Miss Kaye's apartment at the time she died in 2012," Catterson said.  

"They had been gifted to her well before [Eisenstaedt] died," he added..."

...In 2012, Kaye died at 92 without any children. She left her possessions, including the photographs worth an estimated $50,000, to her nieces and nephews in South Africa, and made Catterson the executor of her estate.  

In April 2013, Kaye's family decided to auction some of the photos through Sotheby's. They later decided to pull the items from sale, but not before Sotheby's included them in a catalog.  

Time Warner spotted the listing and contacted Sotheby's, claiming ownership.  

Subsequently, Sotheby's refused to return the photos to Kaye's family until they resolved the dispute with Time Warner.  

Catterson filed the April 9 petition in Manhattan Surrogate's Court to have a judge determine ownership and to order the return of the photographs to Kaye's family.  

[Time Warner's lawyers say that] under its agreements with Eisenstaedt, Time Warner does own the copyright to his works and pays his estate 50 percent of all revenue from the licensing of his works.  

However, Catterson [claims] that Kaye's family owns the disputed prints because Eisenstaedt gave them to her before he signed any contracts with Time Warner.  

He also notes that under one of the contracts, Time had a right to all the photographs in rooms located at the Time & Life building and in Eisenstaedt's Jackson Heights' apartment. Catterson said in the filing these photos were kept at Kaye's apartment and there is no evidence they were in Time & Life or Eisenstaedt's apartment.  

He added that Time Warner has no proof of ownership since it has not kept an inventory of Eisenstaedt's photography and cannot "articulate which, if any, of the photographs are part of the collection assigned to Time in the agreements."

Sounds like a very interesting dispute from this initial report. It would be good to get a look at Catterson's petition and any responses from Time Warner. If anyone has access, please pass them on!


Source: DNAinfo New York, 21 April 2014

Another Big Win for Photographers: Jury Awards Maximum Damages in AFP v. Morel

Following on the heels of my entry regarding Leonard v. Stemtech, another American photographer has received another major jury award for copyright infringement.  Earlier this year I wrote about AFP v. Morel, a case in which Getty and Associated French Presse (AFP) were found to have used photographer Daniel Morel's photographs of the aftermath of the Haiti earthquakes without permission.  Morel originally shared the photos on Twitter, where another photographer found them and attempted to pass them off as his own.  Eventually the photos ended up in the hands of Getty and AFP, and the agencies used and licensed the images without Morel's permission.  One of AFP's more creative defenses in this case was that Morel's sharing of the images on Twitter had resulted in a broad license allowing AFP to use the images based on Twitter's terms of service.  The court rejected that argument at the summary judgment phase.

Although Morel already prevailed on summary judgment as to direct copyright infringement, because he sought elevated statutory damages for willful infringement, a jury was left to resolve the intent of Getty and AFP in using Morel's images.

On November 22, 2013, the jury's verdict was announced.  Holding that the infringement was willful, the jury awarded Morel the maximum in statutory damages allowed for the eight infringed images, $150,000 per image, for a total damages award of $1.2 million.

Extensive coverage of the trial is available on EPUK.

$3.6m damages for copyright infringement?? Buzz off!

There is a lot of questionable content on there, but I am willing to admit it, I really like BuzzFeed. The site consists of posts on the most wide-ranging random content, usually containing videos, images and/or links - some of it very amusing. (You really need to have a look to appreciate...although maybe not on "work-time".)

It turns out that permission of the content creators is not always sought, before it is posted on the site. Now a photographer, whose photo was used in a BuzzFeed post without his consent, has taken a stand and filed a copyright infringement claim against the site.

Reports the Guardian:

The professional photographer, Kai Eiselein, filed a legal claim against Buzzfeed after finding his picture had been used without permission in a comic compilation of football mishaps. His picture of a grimacing player was removed from the article – now titled "The 29 Funniest Header Faces" – after he made an initial complaint in May 2011. 

But in a lawsuit filed in New York, Eiselein accused Buzzfeed of "direct and contributory infringement" and claims he is owed $3.6m after his work was shared widely across the web. 

He wants Buzzfeed to pay $150,000 in damages for each of the 23 sites that used his picture after the initial post, plus a further $150,000 for "contributory infringement" by another site, luuux.com. 

Eiselein confirmed he was taking legal action against the popular site and said: "It is time for creatives to stand up and say 'This is enough'. We work hard at our crafts and others should not be able to profit from our talents without compensating us." 

Asked why he is claiming such an inordinate sum in damages, he added: "In the suit I have asked for the maximum allowed by law. Ultimately it will be up to a judge and/or jury to decide the amount of damages, if any."

BuzzFeed founder Jonah Peretti has previously claimed, in a discussion with the Atlantic, that BuzzFeed’s use of photos are fair use under copyright law because they are transformative, which is the first of four factors considered by US judges in resolving fair use disputes.

If this claim makes it to court, it will open some very hot debates.

Read the claim here.

See the golden photo here.

What Peretti has said.

Source: The Guardian, 18 June 2013, The Atlantic, 30 April 2012

How much is a photograph worth? The UK courts give more guidance

A photograph which hasn't been litigated in the PCC

Photography cases have arguably occupied the revamped Patents County Court (PCC) more than any other type of case.  Recent examples include Temple Island v New English Teas (the red bus case, discussed extensively on this blog here, here and here), Hoffman v D.A.R.E (discussed here), Delves Broughton v House of Harlot (shamefully neglected by this blog…), Celebrity Pictures v B Hannah (discussed here) and now we have another example to add to this illustrious list – Sheldon v Daybrook.

This case is relatively unusual in the world of UK jurisprudence because it is a judgment on a preliminary issue – the quantum of damages. Further, it was a decision made on the papers (i.e. without oral evidence).  These were all sensible case management decisions which avoided the costs spiralling out of control in what should probably have been a small claims track case.

The facts 

Daybrook House Promotions Ltd used Jason Sheldon’s photograph of Ke$ha and LMFAO on its posters, website, facebook pages and flyers to promote a series of events at Rock City (a Nottingham music venue).  Daybrook downloaded the image from Tumblr and, because it was available online, assumed that it was free to use.  Sheldon became aware of some of the use of his photograph and wrote to Daybrook to stop using the image. He also asked for £1,351 based on the use he was aware of at the time.  Daybrook only offered £150 in compensation so Sheldon started a claim via Money Claim Online which was transferred to the PCC.

The case management conference (CMC) identified two issues in the case (1) extent of use of the image by Rock City and (2) the level of a reasonable licence for the image.

Extent of use 

There was very limited disclosure provided by Daybrook so it was difficult for Sheldon to ascertain the extent of use.  The issue of disclosure is a significant problem in the PCC (and even more so in the small claims track). The standard of reasonable or diligent search is arguably lower where the claim is lower value but, more significantly, it is difficult and expensive to show that full disclosure has not been provided.  Whilst search and seizure orders are possible in the PCC (see Suh v Ryu) they are expensive and subject to the costs cap so a large part of the legal costs are unlikely to be recoverable.

Without the benefit of any disclosure documents, Sheldon had to do quite a bit of independent research regarding what the extent of online use and had to estimate the numbers of posters produced based on information elicited in correspondence. The arguments regarding the appropriate level of licence fee can be summarised as follows.

Daybrook, the defendant, argued:

• Low quotations from other photographers they usually use based on the sort of image in dispute;
• Only local use around Nottingham; and
• It wouldn’t have paid more than £100.

Sheldon, the claimant, argued:

• Famous subjects; 
• Paid for exclusive access; and
• Based on the information available, there was extensive use by Daybrook, including online. 

HHJ Birss QC (as he then was) held:

• The fact Daybrook would not have paid more is not a critical issue.
• The famous subject matter was important in determining the appropriate licence fee. 
• The exclusive access was even more critical in increasing the value of the photograph. 
• The more detailed photography quotation (based on the actual use) was preferable to the defendant’s examples. 

In particular, he noted that it would not be worth obtaining exclusive access if only licence photo for a small amount of money.

Damages were awarded of £5,682.37 plus VAT and interest at 1%.

Sometimes, navigating the law can get a little prickly

The future of photography claims

All of the cases where quantum was decided came in at the current small claims cap (£10,000, for Hoffman v D.A.R.E) or significantly under.  All of these claims would, in theory, have been suitable for the small claims track.  This suggests that the large number of reported claims for infringement of artistic copyright in photographs in the PCC may well decrease as the PCC small claims track for becomes more established.  However, none of the photography cases has been completely straightforward and given the choice between negotiating the legal and procedural complexities of their claim without legal assistance or obtaining legal advice but not being able to recover the costs of that advice, photographers may prefer to use the regular PCC procedure.

Have any of our readers used the PCC, including the small claims track?  Would you consider using it?

Instagram's New Terms Cause Backlash and a Class Action Lawsuit

Photo sharing site Instagram found itself in hot water when it released updated terms of service on 18 December.  Users and commentators alike speculated that the shifts in the terms of service meant that Instagram intended to employ user content on the site for commercial purposes.  Essentially, the new terms give Instagram the right to use and the ability transfer its right to use, user content without compensation of any kind to users.  The new terms also simultaneously limited the rights of users to engage in class action lawsuits against Instagram, limited damages to $100, waived users' ability to obtain injunctive relief, limited the statute of limitations to one year, and required agreement to arbitration.  The announcement caused an outcry on the internet, and Instagram released a public statement on the site’s blog attempting to clarify the terms and quell the fear and fury surrounding the changes.  The terms have again been modified from the previous proposed version, however much of the terms users find most egregious remain present.  Although there is conflicting information, some reports state that as much as 25% of Instagram’s users deleted their accounts over the new terms, which are to come into force 19 January, 2013. 

However, a loss of users is not the only problem looming for the site—on 21 December, 2012, a class action lawsuit was filed against Instagram in U.S. District Court for the Northern District of California related to the new terms, Funes v. Instagram Inc., 12- CV-6482 (N.D. Cal.).  Essentially, the complaint theorizes that with its new terms Instagram is appropriating users’ property and then shielding itself from liability for doing so.  The plaintiff brings claims for breach of contract for violation of the implied covenant of good faith and fair dealing, for violation of California Civil Code §3344 (the statute protects the individual's ability control the commercial use of his or her name, image, likeness, or other aspects of one's identity), breach of bailment, and for violation of California business law.  The case also seeks declaratory relief regarding the lawfulness of Instagram’s conduct as well as injunctive relief and attorney’s fees.  The lawsuit appears to be the first of its kind.  

Even though Instagram amended its proposed terms of service, attempting to provide some clarification on 20 December, the new terms still grant Instagram “a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to use the Content that you post on or through the Service.”  It seems that many photo sharing, blogging, and cloud file storage websites have terms granting some sort of limited license related to user content to the hosting site.  However, the license Instagram proposes has much greater breadth than those included in most standard terms.   

Although it is unclear whether users will have any success in a lawsuit against Instagram, these events have important implications.  This case may signal a shift in the way user content is utilized by host sites, as well as in users’ ability to contest terms they find egregious through legal process.  As more photographers and artists rely on the internet for marketing and the ability to store images via cloud computing, the terms of service employed by hosting sites will be of critical importance to those who are concerned about how and where their images may be used in the future.

Photographs, celebrity and the PCC



Is this the face that launched a copyright case?
Answer: yes

Photography cases are becoming increasingly common in the Patents County Court of England and Wales (PCC). We have had ‘infringement’ of red routemaster buses, the damages caused by unlicensed photos of pharmaceuticals and now the subject matter has moved, somewhat inevitably, on to celebrities. Karren Brady is a very successful business woman who is, perhaps, best known for being the new Margaret in the UK version of The Apprentice. She was literally the subject of a photographic case - Celebrity Pictures & Tyson Sadlo v B Hannah Limited.

So, what happened?
Tyson Sadlo was engaged in July 2010 by company (Oxygen 10) to photograph Karren Brady for Today's Business Woman. Syndication rights were subsequently granted to Celebrity Pictures Limited which, together with Tyson Sadlo sued B Hannah Limited (a member of Oxygen 10’s corporate group) for copyright infringement. This was on the basis that B Hannah had authorised publication of the photos of Ms Brady in BUPA Health Magazine and on a celebrity website.

Why sue B Hannah and not Oxygen 10?
At the time of the shoot, Oxygen 10 was operated as a separate company from B Hannah. However, shortly afterwards the operations of Oxygen 10 and B Hannah were amalgamated and Oxygen 10 ceased trading. Oxygen 10 was dissolved earlier in 2012.

Who owned the copyright in the photos?
Unsurprisingly, the situation was far from straightforward. B Hannah claimed that either it owned all the copyright in the photographs or that it is a joint owner of the copyright. The uncertainty surrounding ownership of the rights was due to a written document ("the contract") which B Hannah claimed to have sent to Mr Sadlo before the photo-shoot. The contract explained that by accepting the assignment Mr Sadlo agreed to worldwide exclusivity in favour of Oxygen 10. As the judgment put it, ‘there is no dispute that, if this document was received by Mr Sadlo, its terms are sufficient to defeat the present claim to infringement of copyright’. However, this would most likely be by means of licence rather than assignment – the contract referred to ‘worldwide exclusivity’. Thus, regardless of whether the contract was sent to Mr Sadlo he would most likely retain ownership of the copyright.

Can you become a joint owner of copyright by setting up a photographic scene?
Maybe. Creation Records is a great case about an Oasis album cover which was snapped by the paparazzi before the official photographer took any pictures. As there was no copying of the ‘official’ photograph there were many debates about potential alternative copyright in the mise en scene. Whilst these arguments were ultimately unsuccessful the case did raise the proposition that "There may be cases where one person sets up the scene to be photographed (the position and angle of the camera and all necessary settings) and directs a second person to press the shutter at a moment chosen by the first, in which case it would be the first, not the second, who creates the photograph. There may also be cases of collaboration between the person behind the camera and one or more others in which the actual photographer has greater input, although no complete control of the creation of the photograph, in which case it may be a work of joint creation and joint authorship." Cue argument that Mr Sadlo was in fact a joint owner of copyright together with the staff from Oxygen 10 who helped set up the scene. Although Mr Sadlo was given a brief and received some assistance on the shoot, this argument the judge found that “I do not think these general instructions to the photographer as to the type of photographs, or the very general acceptance that there was a team effort involved in the photo-shoot as a whole, are sufficient to make anyone other than Mr Sadlo the author of the photographs.”

Was there a contract?
Whether or not the contract was received was the key issue in the case although B Hannah also claimed that there was an implied claim as to transfer of exclusive rights. The receipt or otherwise by Mr Sadlo of the contract is therefore the principal issue in the action. Whilst, as the judge put it, “the evidence can scarcely be described as satisfactory on either side”, he ultimately decided in favour of Mr Sadlo. One of the key determining factors was that there was quite a lot of email correspondence between the parties but no mention in any of this correspondence of the contract – which was allegedly sent by post.

Implied assignment?
B Hannah tried to claim that there should be an implied assignment. However, after examination of the relatively limited evidence, Mr Justice Floyd held that “it is not necessary to imply into the agreement any wider term than that accepted by the claimants, namely an agreement to use the results of the photo-shoot for publication in Today's Business Woman.”

Conclusion
The claimants won and the licence of the photos from B Hannah to Bupa and the celebrity website was an infringement. Although B Hannah tried to argue that Oxygen 10 and not B Hannah was responsible that argument failed (amongst other things, it had paid Mr Sadlo’s fee). The judge did not decide costs or damages. If these cannot be agreed between the parties, there will be a further hearing before Floyd J after 1 October. Whilst it is to be hoped that the parties can reach a reasonable compromise, it is always interesting to get judicial guidance in this area.

Lessons learned
• Make sure your contract is clear – are rights being assigned or licensed? If so, what rights and in what jurisdictions? Is the licence limited to a particular publication or a form of media? Is it exclusive, limited in time etc?
• Get things in writing and sent by email or fax as well as post (ie a method where you get a delivery receipt and there can be no question regarding service).
• If you are using assistants to set up your shoot, be aware that in some circumstances thy can be a joint owner of copyright in the photograph.
• Implied terms will be made to the minimum extent possible. Ie it is very unlikely that a court will find it necessary to imply an assignment.

Finally, it is not often that you see a photographic copyright case and even rarer that one merits a QC and a High Court judge (albeit sitting in the PCC). It is to be hoped that the recent judicial focus given to photography will enable greater clarity in terms of the courts likely approach and enable more matters to be settled without recourse to legal proceedings... (you never know!)

Olympic Dispute over Image Rights

Pre-Olympic diving - no athletes are identifiable

Samsung recently came up with what seemed like a genius marketing idea. It would use social media to show people how they are connected to great Olympians of the past and present via a Facebook app. The Olympic Genome Project sounded like a great idea but unfortunately, despite shelling out a small fortune to be an Olympic sponsor, Samsung didn't get permission from all the athletes involved in the project.   Some of them are decidedly unhappy at their names and images being used without their permission.

What is the legal position?  In the UK, assuming that the athletes didn't own the copyright in the photographs (which is unlikely), there wouldn't be much that the Olympians could do about this usage. Their best case would be a claim for "false endorsement" (a la Irvine v Talksport) or, less promisingly, another form of passing off. All of the images appear to have been taken of the athletes in sporting action so no privacy concerns would arise.

By contrast, the US has an established image or personality right (which varies on a state by state basis).  Guess which jurisdiction the athletes decided to sue in?

At least 18 athletes have filed a lawsuit in Los Angeles which claims (1) false endorsement (i.e. that by using their names and faces, Samsung is creating the impression that these athletes endorse their products); (2) Samsung is denying the athletes compensation for the use of their names and images; and (3) violating Section 3344 of the California civil code, which makes it a crime to use someone’s name, voice, signature, photograph or likeness for commercial purposes without the person’s explicit permission. The claimants argue that Samsung did not receive their permission. According to the claimant's lawyer “California law says you can’t use anybody’s name or image to market a product unless you have their consent.” Samsung's usage is alleged to be a problem because (a) the claimants have deals with some of Samsung's competitors and those deals are potentially put in jeapardy by Samsung's actions and (b) tying the athletes to this sort of product will make it harder for them to get endorsement deals in the future.

The number of athletes in question may actually help reduce the likelihood of success. A quick scan of the California code reveals, at subsection (e) that:

The use of a name, voice, signature, photograph, or likeness in a commercial medium shall not constitute a use for which consent is required under subdivision (a) solely because the material containing such use is commercially sponsored or contains paid advertising. Rather it shall be a question of fact whether or not the use of the person's name, voice, signature, photograph, or likeness was so directly connected with the commercial sponsorship or with the paid advertising as to constitute a use for which consent is required under subdivision (a).

The exact use of each of the images is not completely clear but it appears that they are buried within a facebook app rather than prominently on display and thus the damage, if any, may be fairly minimal.  On the other hand, the Olympics are so huge (and the sponsorship is so tightly regulated) that any form of usage in connection with a sponsorship campaign may cause a great deal of damage to the athletes.

Samsung claimed in a statement that it had worked closely with the United States Olympic Committee for more than year and followed the appropriate procedures in communicating with the athletes.

This case will, hopefully, settle but it offers an important reminder for photographers (in particular although similar issues can apply to graphics artists etc) and those intending to use identifiable images of persons in ad campaigns to make sure that the rights are cleared in all jurisdictions where the images will be used.

 Source: Wired.

Collector Sues over new Eggleston “Limited Editions” entering the market

Will Sobel's claim end up on ice?
William Eggleston, Freezer

Can you stop a photographer from making more prints in the future when you bought an original print on the basis that it was a “limited edition”? Does it matter what medium is used for the reprints (i.e. digital or dye-transfer)? Does the print size matter?

Jonathan Sobel, a photograph collector recently issued proceedings against William Eggleston, the photographer widely credited with popularising colour photography.

As the writ explains, “The gravamen of [Sobel’s] Complaint centers on the sale of eight photographic images …the reprints are identical in image to original photographs which Eggleston had earlier created and designated as individually numbered limited edition works… A principal factor in Sobel’s decision to purchase photographs ... was that these photographs were, in fact, limited editions.”

Whilst Sobel owns a number of physical prints, clearly the copyright in the prints remains with Eggleston as the “author”. Therefore, from a copyright perspective, at least, there is nothing to stop Eggleston from making further prints.

As a result, the writ is based on the following causes of action (notably, not breach of contract):

(1) Violation of New York Arts and Cultural Affairs Law Section 11.01(1) [this section defines a “limited edition” as “works of art produced from a maser, all of which are the same image and bear numbers or other markings to denote the limited production thereof to a stated maximum number…”];
(2) Fraudulent misrepresentation [Yes, really!];
(3) Negligent misrepresentation [on the basis of a “special or privity-like relationship … between Sobel and the defendants, imposing … a duty to impart to Sobel … true and correct information pertaining to the edition size of these works"];
(4) Unjust enrichment;
(5) Promissory estoppel [i.e. Sobel relied on the “clear and unambiguous promise” that the photographs were in fact limited editions when he purchased them and this promise was “false”.]

Whilst I do not pretend to be an expert in American law, it looks like a stretch for Sobel to succeed in any of these claims.

Eggleston's, untitled woman in colour 
from Los Alamos 1966-74.
She doesn't look convinced by the claims

According to the NY Times, Eggleston’s lawyer told the Wall Street Journal that the “lawsuit had no merit and that printing vintage works in new formats falls within [Eggleston’s] creative rights”. Whilst this is an unsurprising position for Eggleston’s lawyer to take, it appears unusually warranted in the circumstances.

I am unfamiliar with the laws surrounding limited editions, however, as Daniel Grant’s blog on the Huffington Post eloquently explains, “important exceptions [to various state laws on limited editions] are made for earlier limited editions that are of different sizes (a 10" x 8" photograph produced in a 5" x 4" format), different production techniques (a gelatin silver print produced as a platinum print or a photogravure) or different numbering (Arabic numbers on one edition, Roman numerals on another).” In other words, limited editions are only limited by the number of a particular type of print and the sale of a limited edition dye-transfer print does not provide the purchaser with a right to prevent the artist making further prints of his work (in a different medium) in the future.  Had further dye-transfer prints in the same size etc been made Sobel might well have a cause of action but as it stands...

Even if it is ok to make new prints from a legal perspective, is it worth potentially alienating your market by bringing out new editions on a regular basis? Clearly if an artist regularly brings out new “limited editions” he or she will ultimately erode the value in all previous works and reduce the likelihood of purchasers continuing to buy the work.

Or will they? For a business/art world insight on the case, see Felix Salmon’s Reuters blog on the case. He notes that “[i]n reality ... Sobel’s prints have probably gone up in value, not down, as a result of Eggleston’s splashy reintroduction to the contemporary art market, in the form of a Christie’s sale which raised $5.9 million and set a new record price for the artist.” So Sobel does not appear to have a cause of action and, even if he did, may not even be able prove damage. Why has he brought the claim then? Is this just the result of poor legal advice or is this the start of some groundbreaking changes to the art world? It is worth noting that Sobel has requested a jury trial. If a jury is indeed appointed (which I understand is no longer a foregone conclusion in US civil proceedings) they may well decide the case against all expectations - there is no such thing as a foregone conclusion in litigation.

Eggleston, The Red Ceiling

Would Eggleston have felt the need to make new prints if there was an artist’s resale right across all States (and one which was adequately enforced)? All the large price tags have been in relation to recent sales of old prints (none of which, as I understand it, were still in the artist’s possession although one was purchased from Willliam Eggleston III).

Originality or author's own intellectual creation? What is the legal test for copyright subsistence in photographs?

Is this the red bus that sparked
a thousand copyright debates?

One of the many insightful comments in response to the Art & Artifice debate surrounding the "Red Bus" decision came from Francis Davey.

He wrote in response to my musings regarding the current test for copyright subsistence in photographs:

Does Painer apply? Painer was considering the "own intellectual creation" standard for European Law, but common law protection is, arguably, lower (I'd say - almost indisputably).

Surely recital 16/article 6 of 2006/116/EC preserved the common law level of protection for "uncreative" photographs? The 1988 was not, and could not, be amended to raise that level of protection by a regulations made under the 1972 Act, so the law must, presumably, be the common law. Unless some new, countervailing, principle exists that has never been properly articulated.

My understanding was that there are not two systems that run in parallel for assessing whether a photograph has artistic copyright and that following Infopaq, which was confirmed in Painer, the correct test is now "author's own intellectual creation" rather than the common law approach of originality. However, lacking complete confidence in my convictions, I deferred to a higher authority, namely Dr Justine Pila of Oxford University. She, diplomatically, replied as follows:

I agree with you both.

1. Is the common law originality standard lower than the EU ("author's own intellectual creation") standard?

*If* the common law standard requires "skill and labour" only, and *if* the EU standard requires creativity (as per Floyd J and AG Mengozzi in Football Dataco) then *in principle* yes - and this certainly was the view of AG Mengozzi in that case ("copyright protection is conditional upon the database being characterised by a ‘creative’ aspect, and it is not sufficient that the creation of the database required labour and skill").

2. Does the Term Directive permit Member States to confer copyright protection on photographs which satisfy the common law originality standard but not the EU standard?

I think it does. Article 6 of the Term Directive requires that photographs satisfying the EU standard be protected as literary or artistic works within the meaning of Berne Art 2 - ie, by lit/artistic copyright - without the imposition of any other criteria. And it expressly permits [Member States] to "provide for the protection of other photographs", ie, photographs not satisfying the EU standard. So the only question is whether UK law still recognises the sufficiency of the common law originality standard with respect to photographs.

3. Does UK law recognise photographic copyright in the absence of "creativity"?

I think it does, consistent with Antiquesportfolio.com (2001 Ch).

4. Does it follow that UK copyright only subsists in photographs if they are creative, or that the UK and European tests of photographic copyright differ?

No, I don't think so, because I don't think that Painer requires creativity for photographic copyright. Rather, it requires (a) that the subject matter of a photograph leaves scope for “sufficient formative freedom”, and (b) that the photographer exploit that freedom so as to leave his “mark” on the resulting work (ie, the photograph). (And it held that in the case of a photographic portrait, there is sufficient formative freedom, and thus the possibility of copyright, as "the photographer can determine, among other things, the angle, the position and the facial expression of the person portrayed, the background, the sharpness, and the light/lighting.") In my view this is perfectly consistent with the UK approach as adopted in Antiquesportfolio.com, where the court held that UK copyright will always subsist in a photograph of a single, static non-spherical 3-d object (eg, antiques) on the basis of the judgement involved in positioning the object, determining the angle at which it is to be taken, and determining the lighting and focus.

So I agree with you, that the European and UK tests of photographic copyright are the same, and conform with that adopted in Painer. The critical question in any particular case is whether the subject matter leaves scope for “sufficient formative freedom” which the photographer exploits so as to leave his “mark” on the resulting work. This test seems better captured by the "author's own intellectual creation" formulation than the "skill and labour" one; though in fact UK courts have often expressed the common law originality standard in terms of "skill, labour and judgement", which is arguably not different from the European "author's own intellectual creation" test. And I personally doubt that the EU test requires creativity - it's almost identical to the Canadian test, which was formulated partly so as to underline that creativity is *not* required. (That at least is my memory.)

Do you agree? Where is the line in your jurisdiction? Where do you think the line for copyright subsistence should lie? Please join in the debate using the comments section below.

Note: no weblinks were included in the correspondence.  They have been included in this blog for readers' ease of reference.

Red bus suggests copyright law is not black and white

A recent case in the Patents County Court for England and Wales concerned the nature and scope of copyright protection for a computer manipulated monochrome photograph of a bright red bus going over Westminster Bridge. The photograph may be of a specific subject matter but the case has much wider implications for the worlds of photography and graphic design.

Photo 1

The court considered two main questions (1) is Photo 1 a copyright protectable work and (2) if so, has a substantial part of Photo 1 been copied to make Photo 2.

Has Photo 2 (on the right) copied a "substantial part" of photo 1 (on the left)? 

Is photo 1 a copyright work?

Although a photograph is one form of artistic work which is protected under the Copyrights Designs and Patents Act (CDPA), not every photograph is an artistic work. Following the European cases of Infopaq and Painer, for copyright to subsist in a photograph it must be the “author’s own intellectual creation”. Painer went into considerable detail as to what did and did not constitute the “author’s own intellectual creation” but it effectively means that not every snapshot that you take on e.g. your smart phone has copyright protection.

By way of example, the judgment refers to an Austrian decision (O (Peter) v F KG) which related to photos of grape varieties. This found that “what is decisive is that … the [photographer’s] personality is reflected by the arrangements (motif, visual angle, illumination etc).” It is hard to avoid an aesthetic judgment being made under this approach (even though the CDPA explicitly says that '“artistic work” means ... [a] photograph ... irrespective of artistic quality' (s. 4(1)(a)).

The judgment noted that composition is affected by the angle of the shot, the field of view, and computer manipulations which are made in post processing. It ultimately held that Photo 1 is an artistic work as either a photograph or a collage (on the basis that the sky was digitally removed and replaced with white and therefore the image could be an electronic collage).

Does photo 2 infringe the copyright in photo 1?
Answering question 2 isn’t as straightforward as it may sound. It is not a case of what are the differences between photo 1 and photo 2. As the judge notes, it is possible to “reproduce a substantial part without necessarily producing something that looks similar”.

It is a matter of “quality not quantity” i.e. have the features which give photo 1 its artistic quality been copied by photo 2. The judge analysed this quality based on composition and visual contrast.

Although the “images undoubtedly differ in their composition”, the type of bus, direction of travel, presence of people, lack of traffic and amount of sky were identified as both copied and qualitatively important. In terms of visual contrast, the red bus against the monochrome background was clearly copied but the blank white sky was also identified as significant.

Together the composition and visual contrast features were found to be a “substantial part” of photo 1 and to have been copied by photo 2.  Although the analysis is quite detailed it is very hard to see how a photo taken at a different angle, with a different foreground, exposure level and perspective could infringe. Arguably all that is really copied is that idea of a black and white photo of the Houses of Parliament with a red bus in the foreground.

The judge noted that “the whole point of this case is that [the defendant wants] lawfully to produce an image which does bear some resemblance to the claimant’s work". This is the heart of the problem. Based on the judgment, there appears to be an attempt by the tea company (defendants) to sell more tea through an association with a popular photograph of a London landscape (photo 1). However, whether that association is legitimate is not a question for copyright law which should only be concerned with considering whether a substantial part of the original photograph has been taken. It is my personal view that a substantial part has not been taken.

Whilst it is clear that not every photo of Westminster Bridge would infringe photo 1. The line as to what inspiration photographers (and other artists) can and cannot take from previous works has become (more) blurred.

Postscript

Photo 3
(a portrait version of the defendant's photo 2)

The court was, post-trial, asked to consider whether the portrait version of photo 2 (photo 3 above) could infringe photo 1. Photo 3 has been substantially cropped so that the bus is even more prominent together with Big Ben.

Again, somewhat surprisingly, the court found that “The cropping has been carried out to discard only the most insignificant parts of the original” and therefore “the cropped portrait version does reproduce a substantial part of the claimant’s work”.

What do you think? This case has aroused a fair amount of controversy in legal circles. We would love to know where would you draw the line.