A puzzling situation

[PuzzleGuy]

I received my Getty letter last month demanding over $10,000. A quick search on "Getty extortion" led me to ELI where a couple days of reading convinced me that I don't have the personality or patience to effectively deal with these people. So it was an easy decision to pay for the ELI Defense Letter Program. No regrets.

But now, after lots of reading here and elsewhere, I find that I'm still not convinced there was any copyright infringement in my case. I'm hoping some discussion here will help me decide whether I can continue to run the website or shut it down.


Here's the situation. My website sells jigsaw puzzles. The manufacturers license the images for use on their puzzles and I receive the images from them or scan the puzzle boxes and display those images so potential customers can see what the puzzles look like when assembled.

The manufacturers I've talked with tell me I'm doing nothing wrong. In fact, the manufacturer of the puzzles with images referenced in my extortion letter says he talked to Getty and was told there was not a problem as long as I show the entire box - which I did in most of the images that they complained about.

I keep reading about the first sale doctrine which convinces me that I have a legal right to sell these puzzles, but then I have to ask if that also gives me the right to display the images on my website.

I have no problem letting the Defense Letter Program take care of the current issue, but I need to understand how to go forward. If Getty is right then most every puzzle would be an infringement. If they're wrong then I need to start working on a response to future extortion letters.

Any thoughts would be most appreciated.

[Robert Krausankas (BuddhaPi)]

Puzzling Indeed! I think this question would best be answered by Oscar if he happens to pop in..I have a feeling we may be seeing him in the forums in the next day or so..

[lucia]

In your case, because it is a business, I would have paid for the letter! Definitely. Even if there is no infringement, it will be much better for Getty to be dealing with Oscar.

[Oscar Michelen]

Chances are your manufacturer did not speak to Getty as that makes no sense that they would be OK with it as long as you published the entire image. Why would that make it OK? Getty would more likely have told them that reproducing an image on a puzzle and a puzzle box without license is definitely copyright infringement. The first sale doctrine merely means that if I buy a piece of art (a photo, a painting, a book, whatever) from the person with the right to sell it, I can re-sell that EXACT same one piece of art as the copyright holder is only entitled to the money from "the first sale" of the piece of art. It can be re-sold and re-sold and re-sold and the original copyright holder only gets the first sale. But if I buy a piece of art and then REPRODUCE it and sell the reproductions, then I am infringing on the IP rights of the original copyright holder because only he has the "right" to "copy" it.  That's why its called "copyright." To protect yourself you need to make sure that the image used for the puzzle is properly licensed. That's the only way you can be sure you have the right to make copies of it for your puzzles.

[Jerry Witt (mcfilms)]

Hey Oscar, this doesn't make sense to me. If I pay to license a picture of Bugs Bunny (or a photo of a waterfall). And I license it to produce T-shits (or jigsaw puzzles). And I have sales representatives like Target or K-mart that wants to sell this product, are you saying the retailer needs to license the image to advertise this product?

[PuzzleGuy]

I think my explanation confused the issue, so let me try again.

I'm not creating jigsaw puzzles, I'm just a retailer. I buy puzzles from the manufacturers and sell them on my website. The products are already licensed with Getty (or whoever). The manufacturers include the licensed image on the front of the box as a guide to assemble the puzzle. I show an image of that box so customers can see what they're buying. The fact that I received Getty's extortion letter suggests that I need to license the images for an already licensed product.  Can that possibly be true?

[aimiyo]

So your showing a product picture on your web site and the image of that picture? The picture is licensed by the manufacturer of of the puzzle.
Sounds like "extortions trolls  gone wild" to me.
 

[Moe Hacken]

I don't see how the liability could extend to you. Did the manufacturer get a cease-and-desist letter or an extortion letter? If they infringed on a Getty image and that got you in trouble because you published the image, you have the recourse of making a claim against the manufacturer.

This would be an ugly precedent. Is Amazon or any such outlet liable for a third party infringement? I found a HAN/VKT picture on a puzzle on the Italian version of eBay. The image is definitely one of the images they are attempting to extort people for. Maybe the difference is scale? So far they haven't shown the stones to go after a company like eBay, but they seem to love clubbing small businesses like baby seals.

This is the Italian eBay puzzle I'm referring to:

http://www.ebay.it/itm/PUZZLE-1500-PZ-CLEMENTONI-73193-31937-84X59-HAWAIAN-PARADISE-CASAFASHIONITALIA-/330726338079?pt=Giochi_da_Tavolo_e_Puzzle&hash=item4d00d36e1f

It's been up there for some time and they haven't sold even one. I guess VKT's cheesy Hawaii imagery isn't worth 13.50 Euros in the middle of a serious financial crisis. That much isn't puzzling at all.

[Couch_Potato]

Question:

If what PuzzleGuy says is true in that he has licensed these to sell and the manufacturer has confirmed they have a valid license to print these and Getty still insists he infringed does that mean if Getty was caught with a copyrighted image on their website, uploaded by somebody who didn't actually own the copyright, their agreement with the photographer would also then not remove their liability to damages or have I made a connection that isn't there?

[Moe Hacken]

Question:

If what PuzzleGuy says is true in that he has licensed these to sell and the manufacturer has confirmed they have a valid license to print these and Getty still insists he infringed does that mean if Getty was caught with a copyrighted image on their website, uploaded by somebody who didn't actually own the copyright, their agreement with the photographer would also then not remove their liability to damages or have I made a connection that isn't there?

I think your question is valid. Since copyright law is a form of strict law, maybe PuzzleGuy (or Getty, in the hypothetical case you presented) would still be liable. When I wrote that I don't know how you can be liable, I forgot to clarify that I understand that current law DOES make one liable, what I actually meant is that I think the law is wrong and needs to be reformed to avoid these abuses.

I like Oscar's explanation comparing copyright law to trespassing. Regardless of what led you to trespass into someone's private property, you would still be technically trespassing. This is why it's moot to argue that someone convinced you that the image in question was in the public domain or free as wallpaper. You still infringed and that's the end of that.

However, there are defenses that would help mitigate the damages, including the innocent infringement defense. I also think the rules could be different if there was fraud involved, as is suspected with the HAN/VKT images. Even if it can't be proven that they seeded the images, one could argue that there is bad faith in their lack of diligence when it comes to protecting VKT's copyright.

Carner claims they've sent scores of letters to the free wallpaper sites, but has yet to name even one. I offered him the address of one single ISP, SoftLayer.com, which could take down a dozen free wallpaper sites with one single DMCA takedown request. To the best of my knowledge, every single one of those websites is still up and running. Maybe Carner is too busy trolling APS in a ridiculous and frivolous lawsuit. I use the word "ridiculous" with full intent, as that the word Carner himself used to describe the seeding theory.

If and when it is determined how those VKT images reached epic and epidemic levels of distribution through thousands of free wallpaper sites, it may be Carner and VKT who will be ridiculed as they print "Aloha State" license plates in their matching orange jumpsuits.

It must be noted that if indeed Carner and VKT or any of their minions seeded those images, they did an amazingly good job. I think it would be hard to do even if you didn't have to be sneaky about it, especially in such astounding numbers.

[SoylentGreen]

uhhh... yeah... don't be a sucker and pay Getty any money for this.
McFilms nailed it.

S.G.

[Greg Troy (KeepFighting)]

Getty is wanting proof the image was licensed, can the company you are getting the puzzles from provide you with a copy of the license you can forward to Getty to show the image(s) are licensed? Shouldn’t that solve the issue or am I missing something more?  If the image is licensed it for use on a puzzle it should not matter whether it is displayed to the public for sale in a retail store, online store, eBay or wherever. IMO

But ditto with S.G and mcfilms, don’t pay them a penny.

[PuzzleGuy]

In my initial panic I signed up for Oscar's defense letter program, so I don't think I should be contacting Getty. I'm ok letting that play out in whatever way Oscar thinks is appropriate. I started this discussion only to help me decide if I had actually done anything wrong so I could determine if I should continue operating the website. If I have to license all the puzzle images or fight trolls very often I could never sell enough to make it profitable.

[Lettered]

so if I understand correctly:  You sell puzzles.  You posted pictures of puzzle boxes.  The puzzle boxes had Getty pictures on the box.  The puzzle manufacturer licensed these images for their puzzles.

This demand from Getty sounds monumentally stupid to me.

To me, that's like saying I cant post pictures of my car I have for sale.  Or that I can't take family pictures if one of these puzzle boxes happen to be in the background.

[Greg Troy (KeepFighting)]

Correct, if you have Oscar he will handle it from this point and you are in very good hands.

In my initial panic I signed up for Oscar's defense letter program, so I don't think I should be contacting Getty. I'm ok letting that play out in whatever way Oscar thinks is appropriate. I started this discussion only to help me decide if I had actually done anything wrong so I could determine if I should continue operating the website. If I have to license all the puzzle images or fight trolls very often I could never sell enough to make it profitable.