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Topics - Oscar Michelen

Pages: [1] 2
1
Getty Images Letter Forum / Looking for Highsmith Letter Recipients
« on: August 22, 2016, 06:02:59 PM »
To my beloved ELI Forum members: Yes its been awhile since I have posted but the forum has a life of its own and it continues to address the important issues of the day in the copyright arena so I want to get back into it with the recent filing of the Highsmith v. Getty Images complaint and amended complaint.  Matt Chan already posted my article about the case from my CourtroomStrategy.com blog I do not want to get into great detail but I would like to hear from anyone who received a letter from Getty related to a Highsmith picture. If anyone knows of a letter recipient who was contacted by Getty or NCIS or LCS or any other entity please have them email me at [email protected]  Thanks

2
Having been involved in this litigation for some time now on behalf of two clients, my opinion of this VT situation has changed. Below is a blog post I posted about the subject on my CourtroomStrategy.com blog site:

Hawaii has some of the most beautiful beaches in the world. Capturing a breath-taking view of one really requires being in the right place at the right time.  And no one has been in the right place at the right time more than Vincent Tylor (Note: Vincent Khoury Tylor is the father of Vincent Scott Tylor- both are Hawaiian Photographers) (We’ll call them collectively "VT"). VT has made a career of taking and selling his scenic photographs of Hawaiian beaches through his own websites like HawaiianPhotos.net and HawaiianPictures.com. But the Internet has produced a secondary career for VT who - copyright infringement litigator. The ability to search for and locate digital imagery through the Internet has opened up a cottage industry for VT where he sends out cease and desist letters with large demands against alleged infringers and on occasion he then files suit against them in his home state of Hawaii.  I have recently become involved in two such lawsuits filed in Hawaii against folks who allegedly used VT's images on their websites. I will not discuss their individual cases here of course, but I will share what I have learned from my involvement in them.

What VT Does Right
Let me start by saying what I feel VT does right.
(1) He registers the images with the Copyright Office. He also does so in an organized fashion that makes it relatively easy to find the registration for the particular image. Copyright in an image attaches the minute the photographer snaps the picture and there is no legal requirement that you register the image in order to obtain the copyright in the image. Generally speaking, you took it, you got it. But registering the images allows VT to easily prove that he is the owner of the image and allows him to seek statutory damages and legal fees should he win a lawsuit over the use of the image.
(2) On his sites, he watermarks the images so that it is further easy to prove ownership and if someone removes the watermark (or content management information as it is legally known) that creates a second claim or cause of action against that person.
(3) He hired an experienced well-known lawyer in Hawaii - J. Stephen Street - to process his claims. His lawyer knows his way around a courthouse and knows copyright law. Too often, folks on both sides of an infringement suit don't hire someone well-versed in copyright law or in litigation. They call the lawyer who set up their company or helped them incorporate or did their business lease. You need a lawyer who knows intellectual property law litigation in general and copyright law specifically. I have spoken and dealt with Street and he is professional and knowledgeable. While I don't see eye-to-eye with him on a lot of things, our conversations have been courteous and productive. I can't always say that about the lawyers that handle these digital image copyright infringement matters.
(4) VT takes beautiful and professional pictures of Hawaii. 

What VT Does Wrong
(a) Asking too much.
VT's demands both in his letters and through his litigation ask for damage amounts that I believe exceed what he would recover in a court of law. I have discussed this with Mr. Street and we have agreed to disagree on this issue. I recently represented a photographer whose business is similar to VT except his island of choice is Granada.  He found a travel agency that was using his images without license. He hired me to send a cease and desist letter. Luckily, the target company hired qualified IP counsel and we settled the case quickly for a fair amount. We didn't try to scare anyone into overpaying for the images. Asking for a rational amount based upon the use made of the image and the guilt of the party (was it intentional, where did they get the image from, did they re-sell the image etc) is the best way to a quick resolution
(b) Suing in Hawaii. Without getting into too much legalese, before you can file suit in a certain State, you have to show that the defendant has sufficient "minimum contacts" with the State so as to allow them to be hauled into court in that State. In the two cases I am handling, I feel the connection to Hawaii is thin. Of course, Mr. Street would disagree with me. But to even argue that, they then have to get Hawaiian counsel and fight the case until they can convince a court that they are right. The time zone difference also adds to the difficulty in dealing with the case. This added expense and pressure is unfair if the party really has no ties to Hawaii. We’ll see if the court agrees with me or Street.

Added Note of Caution about “Free Wallpaper and Free Images” Sites:
If you do a reverse image search on Google for just about any VT image, you will find it on dozens and dozens of websites propounding to provide "free images" or "free wallpaper shots." This is where many VT's targets get their images from. People believe that when a site says something is "Free" its "Free." But the site does not own the images and has no legal right to sell them. Incidentally, using an image from a free wallpaper site as a banner for your website which advertise  your business is not “wallpaper.” For a time, on ELI and in other places, there was speculation that VT was "seeding" his images onto these sites in order to entrap or ensnare folks into using them and to then make them targets of later suits.  Having been involved in this issue for some years now, I can state that no proof of any such seeding has ever been found. Street also demonstrated to me the many attempts VT has made over the years in trying to get “Free Wallpaper” and “Free Images” sites to take down VT’s work. It’s like playing “Whack-A-Mole” – you knock one down another pops up instantly.     

What's All This Mean?
It means that if you intend to use an image of a Hawaiian beach, chances are its VTs unless you go old school. It means that you cannot assume that just because an image is labeled as "free" that you can use it without a problem.  It means that chances are if you want to use a picture of a Hawaiian beach you will have to pay for it now or later. Or else you could find yourself saying "Aloha" to a judge in the Federal Court for the District of Hawaii.
 

3
Getty Images Letter Forum / Putting My Money Where My Mouth Is
« on: July 27, 2014, 05:33:20 PM »
I wanted to share with ELI that this year, I have been retained in two matters that show that infringement claims can be properly addressed without resorting to extortionate or heavy-handed methods.  The names of clients will not be used and some of the details will be altered slightly so no one could determine who the actual parties were. One involves some photos of well-known hip hop artists that appeared on my clients website when a user uploaded a link to them into comments he made about the various artists.  The other involves eight landscape images of a Caribbean island that were used by a hotel company. These matters were handled very differently by my office. Case #1 involved a company and firm that have been minimally discussed on the site but are known to ELI users. They filed suit in Federal Court over the 10 images or so and I was glad to see that the federal judge could see that this was a low level case that needed to go away. The other side's lawyers had demanded about $5,000 per image originally.They freely provided the registrations to me as well as the artists licensing agreement so that there was no doubt they were entitled to bring the claim.  I showed them that the images were actually "hot-linked" and cited them the Perfect 10 v. Amazon case. We discussed the case back and forth over a few phone calls. I provided proof of financial hardship form the company and the low web traffic to the site. In the end the claim settled amicably and quickly for just under the statutory minimum for  each image with a lengthy payout term that allowed for the site to survive and the plaintiff to be compensated.     

Case #2 - The client had already provided copyright registrations to me and screenshots of the infringing use along with the mails he sent to the hotel web developer's address with a link where he could look for images that he was interested in licensing. While no specific fees were discussed, a range was provided and the photographer told the developer that the fees would be higher if the photographer was asked to  provide exclusivity so that no one else could use the images during the licensing period. The developer said he would get back to him. Instead the images were used on a national hotel chain website.  When I sent a letter to the hotel website AND the developer, I did not let them know that copyright was actually a criminal offense or a civil claim exposing them to up to $150,000 per image. I sent them the screenshots and the VA numbers for the copyright registrations. I told them to refer the letter to their lawyer or insurance company and get back to me to discuss our damages claim. When the developer called me and said he would be handling it for the hotel website and him he asked "Do I need a lawyer?" I said technically no but it would be a good idea to get an IP Lawyer. The next day an IP lawyer from the developer's home state called and we discussed the claim for about half an hour. He offered $200 per image and I advised him that it was a willful infringement of copyrighted images so that was not going to cut it. I said, let's make it easy - $750 per image which is the statutory minimum. He called me back the next day and the case was settled for just below that amount. The client was very happy with the quick turnaround and the agreement to cease and desist.

Getty and their infringement team will not deal with the developer, will not submit proof of ownership or copyright registration and do not encourage folks to get qualified counsel. They won't even discuss in detail why they think their images are worth the value they seek. Yet all of these steps are the best way to get a fair and fast resolution. No one on this site is saying that infringement of digital images is proper, of course not. But it is the methodology with which these claims are prosecuted that we all have issue with. Infringement claims can be handled and resolved without resorting to the overbearing and heavy-handed tactics employed by the majority of the digital image industry. 

Here endeth the lesson.                 

4
Legal Controversies Forum / Speech Spoken Here
« on: March 26, 2013, 10:09:55 PM »
 There recently has been a lot of positive interaction with the internet community about the ELI site including a recent EFF post about the Georgia Court decision in the Linda Ellis case.  As the issue of copyright trolling gets more and more attention, folks have been coming to ELI and reading and viewing the huge amount of content on here. But what makes ELI unique are the FORUMS. ELI is the only site I have heard of that allows folks to come and comment anonymously or in the open about their experiences with trolls. Yes most blogs allow comments, but the ELI message board is not limited to what Matt and I want to talk about - many community members bring their own topics for discussion and the discussions often expand well beyond the initial post subject. It's a website whose predominant purpose is speech. Yes Matt and I (separately) do get hired for assistance by some who come to the site. But if money were the primary motivator of the site, we would hide all the valuable content behind a pay wall or sell ad space. Instead, the thousands of folks who come to ELI for the first time each month are able to read past conversations, join existing ones or start new ones.  It allows for a vibrant, free-wheeling exchange of ideas which is precisely why it is popular and has created a loyal group of supporters and followers. Yes sometimes posts focus on humor, parody and harsh opinion against copyright trollers and their henchmen. As EFF put it so well tonight "As many copyright trolls have found, their tactics are often reviled and frequently criticized."   But since 2008, ELI has become the leading resource on the net for information about Getty Images and other copycat copyright trollers in the digital image industry and beyond. It is the content and conversation on the site that irritates those who troll. It is the content and conversation  that keeps me and many others coming back several times each week to read new posts or let everyone know about a new trolling issue or a great new article on fightcopyrighttrolls.com or just to put our two cents in on a topic that interest us. That's what ELI is about at its core. Information. Expression of Ideas. Communal Conversation. Speech.   

5
 There recently has been a lot of positive interaction with the internet community about the ELI site including a recent EFF post about the Georgia Court decision in the Linda Ellis case.  As the issue of copyright trolling gets more and more attention, folks have been coming to ELI and reading and viewing the huge amount of content on here. But what makes ELI unique are the FORUMS. ELI is the only site I have heard of that allows folks to come and comment anonymously or in the open about their experiences with trolls. Yes most blogs allow comments, but the ELI message board is not limited to what Matt and I want to talk about - many community members bring their own topics for discussion and the discussions often expand well beyond the initial post subject. It's a website whose predominant purpose is speech. Yes Matt and I (separately) do get hired for assistance by some who come to the site. But if money were the primary motivator of the site, we would hide all the valuable content behind a pay wall or sell ad space. Instead, the thousands of folks who come to ELI for the first time each month are able to read past conversations, join existing ones or start new ones.  It allows for a vibrant, free-wheeling exchange of ideas which is precisely why it is popular and has created a loyal group of supporters and followers. Yes sometimes posts focus on humor, parody and harsh opinion against copyright trollers and their henchmen. As EFF put it so well tonight "As many copyright trolls have found, their tactics are often reviled and frequently criticized."   But since 2008, ELI has become the leading resource on the net for information about Getty Images and other copycat copyright trollers in the digital image industry and beyond. It is the content and conversation on the site that irritates those who troll. It is the content and conversation  that keeps me and many others coming back several times each week to read new posts or let everyone know about a new trolling issue or a great new article on fightcopyrighttrolls.com or just to put our two cents in on a topic that interest us. That's what ELI is about at its core. Information. Expression of Ideas. Communal Conversation. Speech.   

6
Getty Images Letter Forum / Speech Spoken Here
« on: March 26, 2013, 10:08:56 PM »
 There recently has been a lot of positive interaction with the internet community about the ELI site including a recent EFF post about the Georgia Court decision in the Linda Ellis case.  As the issue of copyright trolling gets more and more attention, folks have been coming to ELI and reading and viewing the huge amount of content on here. But what makes ELI unique are the FORUMS. ELI is the only site I have heard of that allows folks to come and comment anonymously or in the open about their experiences with trolls. Yes most blogs allow comments, but the ELI message board is not limited to what Matt and I want to talk about - many community members bring their own topics for discussion and the discussions often expand well beyond the initial post subject. It's a website whose predominant purpose is speech. Yes Matt and I (separately) do get hired for assistance by some who come to the site. But if money were the primary motivator of the site, we would hide all the valuable content behind a pay wall or sell ad space. Instead, the thousands of folks who come to ELI for the first time each month are able to read past conversations, join existing ones or start new ones.  It allows for a vibrant, free-wheeling exchange of ideas which is precisely why it is popular and has created a loyal group of supporters and followers. Yes sometimes posts focus on humor, parody and harsh opinion against copyright trollers and their henchmen. As EFF put it so well tonight "As many copyright trolls have found, their tactics are often reviled and frequently criticized."   But since 2008, ELI has become the leading resource on the net for information about Getty Images and other copycat copyright trollers in the digital image industry and beyond. It is the content and conversation on the site that irritates those who troll. It is the content and conversation  that keeps me and many others coming back several times each week to read new posts or let everyone know about a new trolling issue or a great new article on fightcopyrighttrolls.com or just to put our two cents in on a topic that interest us. That's what ELI is about at its core. Information. Expression of Ideas. Communal Conversation. Speech.     

8
Legal Controversies Forum / Interesting Article On Copyright Reform
« on: November 20, 2012, 09:18:47 AM »
So this morning I read an interesting article on copyright reform that talked about how a GOP staffer had issued a policy memo calling for several copyright reforms including shortening the length of time of protection only to have it quickly pulled when the GOP realized the reforms would be bad for the multinational corporations they hold dear. But the article reminds everyone that the Constitution calls for rights to be held for "a limited time" in order to promote science and art. We have gotten away from that concept and have moved from providing rights for  28 years (14 plus another 14) to providing rights for 70 years after an author's death which could easily be well more than a century.  In some cases, Congress has continually extended copyright protection on behalf of specific corporate entities. Otherwise a certain mouse would have long fallen into public domain. Here's the story:
http://www.slate.com/articles/business/moneybox/2012/11/rsc_copyright_reform_memo_derek_khanna_tries_to_get_republican_study_committee.html   

9
OK, so every so often I get contacted by folks from Canada who want assistance with these trolling claims. There is some confusion as to when I can and cannot get involved, so I thought I would try and clear that up. If the claim is made to a Canadian entity or national from either Masterfile (which is based in Canada) or Getty's Canadian Office or which asserts claims under Canada's Copyright Law, then I CANNOT get involved.

A Canadian lawyer must be the one handling those exclusively Canadian claims.  But if a Canadian entity or national receives a claim from a US based company asserting infringement of US Copyright Law, then I can help them with their demand letter as US Copyright is Federal. So it doesn't matter where the recipient IS, it matters which law the letter asserts.

Obviously, if a lawsuit is filed in Canada, then a Canadian lawyer is needed. Similarly, if  lawsuit is filed outside where I am admitted to practice I would have to retain a local lawyer to move my admission into that state as has happened a number of times around the country.  Hope that clears up this jurisdictional issue.     

10
In response to the Muench case, the Copyright Office (by way of Marybeth Peters) has put forth an official regulation regarding group registration of photographs. Part of the reason why courts did not give great deference to Marybeth's letters to Nancy Wolff was that they were not official regulations promulgated by the Copyright Office. To correct that, the Office issued 76 CFR 4072 an interim rule establishing a pilot program regarding the registration of copyrights for photo collections.  Here the link to view the reg.: http://www.copyright.gov/fedreg/2011/76fr4072.pdf 

The copyright office will allow registration of photo compilations to provide individual protection to the images contained in the compilation but only if each photograph is identified separately and have a common author. For automated databases, the regulation requires that the entire image be uploaded and not just a description of the image. The reg is silent as to whether the author's name must be listed as well. While this type of regulation is entitled to more deference than the informal letter PACA previously acquired from their wholly owned subsidiary, the Copyright Office, to the extent it allows for  something other than what is required by the Copyright Act, I still think it is not enough to give individual protection to the works included in a compilation registration. 

11
As many of you know, I have been representing Chaga International in a case brought by Masterfile ("MF") in the California District Court. MF sued them for a whopping $6,000,000.00.  Well a few weeks ago, Judge Manuel Real of the court GRANTED our motion for summary judgment and threw out MF's complaint! We are in the process of entering the final judgment now.  I will send Matt Chan the transcript so you can read what Judge Real said, but will summarize it here. 

Basically, MF relies on compilation registrations whereby they send the Copyright office a CD containing thousands of images by various authors and list three random authors' names and then add "and other authors"  under the section where the authors' names are supposed to go. They also use one date of publication for all the images, even though they may have been published at different times. They also do not list where the images were first published.  They used this method because they relied on correspondence between Nancy Wolff, a photographer's lobbyist, and the Copyright Office, whose registrar at that time was Marybeth Peters. 

Well for years, when we first started this program, I would argue with MF and their lawyers that the Copyright Office was dead wrong! This method of registration was invalid in my opinion as it did not comply with the specific language of the Act.  I would get snide snickers and comments like "So you  think you know better than the Copyright Office?"  And I would reply "Not about everything, but about this - Yeah! It's Plain English. Read the statute.  It must list the author's name and the date and place of publication. Furthermore, the Act states that compilation registration does not provide protection for the individual images contained in the compilation."

My arguments did not get very far until I was vindicated by Judge Loretta Preska's decision in Muench v. Houghton Mifflin which basically stated word for word what I had been saying.  Muench (which was argued by my friend Russell Jackson at Skadden, Arp, Meagher & Flom) has been discussed at length on this site.  Other courts soon followed suit, most famously the Alaska District Court in the case of Alaska Stock Photography v. Houghton Mifflin (also argued successfully by Russell). Only one lone judge in Utah held that he did not agree with Muench and awarded MF a judgment against a real estate company that used an MF image (that case was called Masterfile v. Gale).  The lawyers in Utah for the Gale defendants did not argue the same argument as the lawyers in Muench for some reason, so the Utah court never really had to decide the specific issue. Instead, the court just added that it disagreed with Muench (If you want all the esoteric legal details, all of this is laid out in detail in my Memo of Law which Matt Chan uploaded or will upload soon).

Anyway, I basically stated that the same arguments as in Muench and Alaska Stock applied in this case and that the same result should apply. Motion papers and arguments were submitted back and forth and on June 18, a court date was set for submission of the motion. My local counsel advised me that there was no need to make a personal appearance as Judge Real relies almost exclusively on the papers and just wants to make sure no one has anything to add before he renders his decision on the record. MF's lawyer did attend and tried to briefly argue about an appellate case he felt was applicable.

True to his procedure, Judge Real read his decision on the record and dismissed the case stating in part:
 
Quote
Here, the registration fails to comply with section 409. The registrations have multiple deficiencies, including failure to name the authors or their nationalities or domiciles in certain instances. Further, they failed to name the titles of the individual works, the years in which the works were completed or the dates and nations of each work's first publication.

With respect to MF's argument that the Copyright Office told them it was OK to file this way, Judge Real stated:

Quote
An agency's interpretation is entitled to no deference if it conflicts with the clear intent of Congress. Here, Congress has clearly identified the registration requirements of Section 409, and thus the individual office's decision to develop procedures in conflict with those requirements is entitled to no [deference].

That courts in NY and California have now held that compilation registration is invalid shoots a poisoned arrow straight into the heart of MF's claims that it has copyrighted works and is therefore entitled to statutory penalties and attorney's fees.  They will probably continue to argue that they feel the Utah decision is right,but that is a weak argument. Looking at the Alaska Stock, Muench and Chaga decisions, it is clear the courts in those three case thoroughly analyzed the registration method and the arguments raised by counsel. The Gale decision does not have the same depth of analysis and the court was not asked to rule if the registrations complied with Section 409 of the Copyright Act, so I believe that decision is of little or no value. Unfortunately, the Alaska Stock appeal is on hold as the plaintiff has field for bankruptcy so we will not have an appellate decision on this vital issue anytime soon. I was confident that the Ninth Circuit was going to uphold the decision in Alaska Stock which would have made for an even stronger position for our side. 

Needless to say, its always nice to win. But to have this legal position upheld is even more important (at least to everyone but the folks at Chaga!). Let's wait and see what MF will do now in light of this decision.         

I want to thank Russell Jackson and his team at Skadden, Arps for paving the way on this issue.
         

12
Getty Images Letter Forum / Tape Recording Conversations
« on: June 17, 2012, 03:19:48 PM »
Dear Forum Members:

On Friday, June 15, 2012, I received a letter from Tim McCormack, one of Getty Image's regular attorneys, informing me that folks on the forums have been suggesting tape recording conversations with him and his staff. I have not seen those suggestions on here, but in an exercise of caution I want to make clear that you cannot tape record a conversation in Washington State (and that means if EITHER party is in Washington State during the conversation) without the consent of BOTH parties to the conversation. While most states are one-party consent states, Washington is one of a handful of states that is a two-party consent state. Recording a conversation in a two-party consent state without one party's consent is a crime, normally called eavesdropping. 

So please, please, be careful about recording conversations unless you KNOW where the other person is and what the law is in that State (and the State where the call is coming from) say about whether you need one or two party's consent. Here is a link to a chart showing the law for each of the 50 states:

http://www.aapsonline.org/judicial/telephone.htm


13
On occasion -especially when I am on trial- I can be a little difficult to reach, there is no doubt about that. Please keep in mind that I drastically reduce my normal IP rates for this situation to try and help people out. On Masterfile cases I cut the rate over 60% and in Getty matters, 66%. But also recall, that I have spent years working on this issue with Matt Chan and know the intricacies of this claim better than anyone else in the country. Most  lawyers could care less about "the little guy" and these types of claims. Never mind the countless people I talk to DAILY on the phone and through emails who never retain my firm yet I answer their questions and try to steer them in the right direction. Search the web right now and you will see that no one else is doing a thing about this growing problem because no one else besides Matt and I are willing to put their names, pictures and reputations on the line like this. While it is not like me to tout my skills as a lawyer, I have spoken about this issue at law schools, at business groups,and in national media. I have been retained as an expert witness in cases in the IP field; I have been an adjunct professor at New York Law School, and a highly successful practicing litigator in NY for over 25 years. So please understand that on rare occasions it can take two or three phone calls or emails  to reach me on this issue, but it is very important to me and I am dedicated to helping people get through this claim and get educated about copyright on the internet.  So please be patient and I am sure we will be able to get together and address this issue for you.  Thanks.

14
Getty Images Letter Forum / Muench Case Under Attack!
« on: September 25, 2010, 02:22:31 PM »
Last July, Judge Preska of the Eastern District of New York issued a decision in a case called Muench v. Houghton Mifflin that rocked the warehouses that sell digital images. In a nutshell, she basically stated that the way these companies register images, by compilation and as  automated and updated databases does not provide registration over the individual images.  She also held that an opinion letter sent by the Copyright Office to a digital image trade association that authorized this mechanism of registration was wrong and in violation of the Copyright Act.
Both of these positions, by the way, have been expiunded, defended and explained, on this site and forum long before Judge Preska's decision.  So the decision was a huge vindication and a massive blow to Getty, Corbis and Masterfile.  

Well several of those companies and others have now filed amicus curiae (friend of the court) briefs supporting the Muench plaintiff's motion to re-argue and reverse Judge Preska's decision. The motion is under reconsideration as we speak and we should have a decision by the end of the year.  Let's hope Judge Preska sticks to her guns and keeps the decision intact.  Either way both sides would likely appeal so this issue will be on its way to the Second Circuit Court of Appeals shortly and who knows, maybe even the US Supreme Court eventually.

15
A new case from the Southern District will have a huge impact on this whole digital image program from companies that register their images in compilations as Corbis and Masterfiile do.  The case  Muench Photography Inc. v. Houghton Mifflin is available in full on my blog Courtroom Strategy.com:   Muench Decision

Here is the text of the blog post:

In a decision that could have far-reaching implications for the licensors of digital images, Federal Judge Loretta Preska, the Chief Judge for the Southern District of New York, declared as improper and unenforceable the standard method for registering images by digital image warehouses like Corbis and Masterfile (the biggest of them Getty Images, does not register its images with the Copyright Office).

Let me briefly explain the situation:  digital photography has allowed photographers to upload whole catalogues of images into a database and then “assign” their copyright in the images to these large digital image warehouses that then license them for use to media companies, web developers and the like. So if you’re building a website and need the perfect picture of a woman talking on the phone for your cell phone company client, you need only go to Corbis, Masterfile or Getty’s websites, type in “woman on cellphone” and get dozens of shots to choose from. Pick the resolution and use you want, pay the licensing fee and you get to download the image.  The photog and the “warehouse” split the license fee under a written agreement.

Normally, under the statute, a copyright registration must include the name of the work and the name of the author of the work.  What the warehouses have been doing is registering dozens of catalogues together under one “compilation registration” and when it comes to listing the authors, its lists the name of one photographer and then adds “and numerous others” afterwards. They have been doing that since they received an opinion letter from Nanette Petruzzeli, Chief of the Copyright Office’s Examining Division saying that this would provide copyright registration for ALL of the images included in the compilation even if the actual authors of most of the images were not named in the registration.

For nearly two years now, I have been locked in many disputes with the three major image warehouses over the value of infringement of digital images.  I have a whole website devoted to the issue., which is spreading like wildfire across the internet (the issue, not the website): www.extortionletterinfo.com.  I currently represent a total of about 500 companies in such claims against, Getty , Masterfile, and Corbis. For those that do register the images, I have been arguing that the Petruzelli letter is WRONG and conflicts with the plain reading of the Copyright Act which says to be valid, the registration must contain the name of the  actual author and that if you register it as a compilation, then you don’t get to seek damages for each individual photograph, so that if someone takes 30 images from one compilation, then it is only one infringement.  (I know this is hyper-technical for most people, but it really is important in the arena of digital imagery).

Well in the case of Muench Photography, Inc. v. Houghton Mifflin, decided May 27, 2010, Judge Preska agreed with me on this issue.  The Court outlined the issue this way:

The Court is faced with the novel question of whether the registration of an automated database–here, a compilation of photographs by different photographers–by a third-party copyright claimant that has been assigned the rights to the individual works for the purposes of copyright registration registers the individual works thereby permitting the individual photographers to sue for copyright infringement . . . A plain reading of § 409 of the Copyright Act mandates that the copyright registrations at issue here contain the names of all the authors of the work..”

The court went on to explain that while it felt bad that the fault for the mis-registering the images was that Corbis and the photographers relied on the  Petruzelli letter,  it said it had no choice because the statue was clear. It held therefore that the compilation was properly registered because Corbis was listed as the author of the compilation but that  “the individual works themselves are not registered.”

This means that there are no statutory damages for each and every infringement of the automated database, but at most just a single infringement of a part of the compilation.  This opens up the question of whether taking one  or five or ten images from a thousand image compilation is de minimus infringement and may not be enforceable or subject to significant damages.  What it does not leave open is the question of whether the Petruzelli letter was right or wrong – it clearly was wrong and is not to be relied upon.

All of the individual images in a compilation are not validly registered if the individual authors are not named on the registration. This case will undoubtedly be appealed and we will keep track of its progress.  Also, there are many pending actions filed by Corbis and Masterfile in which this case will be cited and we will wait to see how this is analyzed in cases where the author of the compilation itself its bringing the case and not the author of the individual photographs.  While the plain reading of the case states that no different outcome should result, rest assured that the image warehouses will see it differently and try to bend and twist this case to suit their purposes or limit its applicability.

Stay tuned as this new area of intellectual property law continues to get defined and clarified.

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