Month: March 2016

Do you sell your work? When you talk about your work, do you say, “I sold this photo for $2500 to Client X, for use on its website” or similar? Even more importantly, does your paperwork clearly state, for every transaction, that specific rights to use the work are licensed to your client or do you just say “Creative Fee = $2500” and list “usage” someplace? Or, worse of all, do you ever say an invoice is for a “buyout” of the work?

Well, stop that. I mean, stop selling your work.

If you aren’t making it clear that you are licensing your rights rather than selling your photography, I think a smart copyright defense lawyer could argue that an affirmative defense called the first sale doctrine applies if your client later resells or otherwise distributes your work beyond the scope of the license you thought you granted. That defense could gut your case.

This morning, I was reading up on recent cases in copyright when I came across this article. On first glance, it doesn’t seem like it really has anything to do with how you run your business and copyright law, but I think it may. The short version of the case discussed in the article is that Adobe sued someone who bought copies of Photoshop which it later resold (against Adobe’s usual terms); that would have been a clear case of infringement, except that Adobe hadn’t clearly stated that the defendant originally licensed the software from Adobe (even though Adobe always licenses rather than sells its software) so the purported infringer was protected by the first sale defense when he resold the software.

In the case itself (yes, I read the opinion), the court notes, “In digital copyright cases, the distinction between a “sale” and a “license” has become central.” (p. 11) and later explains:

To determine whether there is a legitimate license, we examine whether “the copyright owner (1) specifies that the user is granted a license; (2) significantly restricts the user’s ability to transfer the software; and (3) imposes notable use restrictions.”

(p. 13, internal citation omitted). Finally, the court emphasizes that “the precise terms of any agreement matter as to whether it is an agreement to license or to sell; the title of the agreement is not dispositive.” (p. 18, italics added).

This isn’t a slam-dunk defense against copyright infringement of a visual art like photography. There are differences in the cases (software isn’t photography, for example), but the analogy is worrisome. If you just substitute the word “photograph” where it reads “software,” you can see that the rest fits.

I think this case should, for your business, serve to remind you of the importance of making it clear that you are licensing rights, not selling photography (or any visual art). In other words, in your paperwork to your clients, make sure to avoid words like selling, sold, buying, or buyout and make sure to use terms like licensing the rights to reproduce, non-exclusive license to display, or non-transferrable unlimited license to copy and display. I’d make it clear on all documents, especially your estimates and invoices, that the usage rights granted under this license are limited to (fill in the usage here).

Drafting a license isn’t hard, but you do need to make it clear that you are only selling the limited license, and not your work. Later on, a clear license can help prevent an infringer from even trying to raise the first sale defense, saving you and your attorney (and the court) headaches, time, and money.

 

I vet many of the cases that come to our firm (photoattorney.com); that means I get to see what people think are lucrative infringements. That also means I have to tell them, sometimes, that we can’t take the case.

This is not the favorite part of my job, as you can imagine.

I don’t like having to tell an artist we can’t help, but we can’t take every case just because we really want to help. We have rents to pay, too. So, we have to do a cost-benefit kind of analysis to try to hedge our own “bets” on any case we’re considering for a contingency fee representation. Sometimes, the numbers just don’t work. Sometimes we have to say “no.”

More often than not, we can’t take a case because of something registration-related. There are three main categories for that: either a work isn’t registered at all (and the artist has no proof of licensing value); or it isn’t timely registered (i.e., before the infringement); or there is a serious error with the registration, usually relating to the publication status at the time of registration (i.e., registering as unpublished when it was published).

For contracts or release matters, too often there is no signed doc in the photographers files. Often any doc that may have existed has been lost as digital media that is now lurking on some dead Zip Drive rather than printed out and kept with a job folder.

All of those errors are related to details and, well, artists generally hate dealing with details except in their art. The Law (cap-L), however, is all about details. And there lies the devil for our clients and potential clients.

One example may help illustrate how details are everything in the Law: any filing in Federal Court. Besides doing all the legal research and the drafting, we have strict procedures we have to follow. We have the Federal Rules of Civil Procedure (FRCP), which are the procedure rules for all civil matters in all federal courts all over the USA. Each district within the federal court system has it own Local Rules that supplement the FRCP. Each district judge has her/his own Chamber Rules and each judge magistrate (who is usually in charge of the discovery part of a case) has her/his own Chamber Rules. So, before filing any document, a lawyer needs to check the FRCP, the Local Rules, and the Chamber Rules for whichever judge is in charge of that part of the case, and sometimes both the judge and judge magistrate. That is just for the procedure, not the law about the issues. Screw up something in the procedure and your whole filing can get bounced. Not good.

Anyway, this is a long way of saying that when it comes to the legal part of your business, you have to keep in mind that the Law is nit-picky as hell. You can’t play fast-and-loose with your registrations or your record keeping or your contracts (etc.) and expect the court to understand what you meant rather than what you did and, most of all, what you can prove.

This is why you’ll hear your attorney sigh and reach for the nearest martini when you say that you didn’t get a release signed because she was your girlfriend when she said it was okay that you make that image of her in a naughty nurse uniform, carrying a ginormous bong and flipping the bird to the camera whilst dancing on a burning US flag, and you don’t understand why she’s suing you now for licensing it to that punk record label, even though she now works for a conservative think tank and is engaged to a Mormon political candidate. You may know (and her too) that there was a verbal release, but can you prove it?

Really, attorneys hate to say no to clients. Help us to be able to say yes to you when you need legal help, by paying attention to all the devilish details. Getting it right could end up making you lots of money, in the end.