Copyright infringement?

[jhogan]

A question for those of you with IP legal experience or opinions on such matters...

In the late 90's I worked in the art department of a busy NYC television commercial production company. During my tenure there, one of the young directors made what is known as a "spec spot" featuring a BMW motorcycle. (For those unfamiliar with the biz, a spec spot is basically a demonstration of the director's talent made for potential clients, and is usually paid for by a management or production company who represents the director professionally.)

In this particular commercial, a fancy BMW motorcycle weaves through the streets of downtown NY while its rider is engulfed in FLAMES. In a testament to the attractiveness of the motorcycle, when the burning rider dismounts, a crowd gathers, not to enquire about the rider's health, but to salivate over the sculpted lines of the bike. Intellectual stuff, I know.

During the three 16 hr days we worked on that spot, I snapped a few frames with a little Nikon P&S I had at the time. I made an enlargment of one of the more dramatic shots and gave it as a gift to the director. A nice guy, he expressed his deep gratitude and promised to hang it in his office. Not long afterward I left New York to attend to family matters and lost touch with most of my former co-employees, including the director.

Recently, however, I was perusing the website of a certain large American film manufacturer, and it turns out they liked my photograph, too. In fact, they're using it, uncredited, in the director's bio:

http://www.kodak.com/US/en/motion/newsletters/inCamera/july2002/directingP.shtml#p

Judging by the url, it appears to have been up since 2002. The irony here is, of course, that the image was made using a certain 50ASA film made by their main competitor... obviously not the appropriate stock, but all I had at the time. I still have the original in my archives.

Occasionally I work on commission or license pictures I have made for specific uses, and think I have somewhat of a handle on the legalities regarding such, but I'm a little unsure how to proceed on this one.

I was never engaged to shoot stills by any party involved, and no rights were expressed or implied. By giving the enlargement to the director as a gift, I wasn't allowing rights for re-use, was I? If not, any suggestions for what I should do?

Thanks in advance for all replies.

[Will Strain]

It's a dicey one to be sure... I think the first thing I would do in this case would be to send a nice letter talking about the shoot, and saying how nice a surprise it was to see your photo used. Perhaps they'll step up and do the right thing.

[Ralph Barker]

A couple of issues come to mind here. First is the question of your employment arrangement at the production company, and whether you actually hold the copyright. Although it sounds like these were shots taken casually, and not part of your actual job assignment, your employment contract might play a role here.

It also sounds like either the director or the Kodak page author might have over-stepped their bounds with the caption, "ad for BMW Motorcycles". As this was not a clip from the spec spot, the caption is not accurate - particularly with respect to the inference that the ad was paid for by BMW. Something like "still from a production shot on spec with a BMW motorcycle" would have been better. That, however, is more of a trademark and representational ethics matter not directly related to your copyright issue.

From your perspective (once you've determined that the production company doesn't own the image through some clause in your employment contract), I'd agree with Will's suggestion of playing "nice guy" with Kodak to start, though, and see how they respond. Once they know all of the background, they may well decide to pull at least the image, if not the whole bio. Advertizers and their ad agencies often get rather touchy about what might be considered misrepresentation.

[jhogan]

Thanks for your reply, Ralph. Perhaps I can provide a bit more background:

Like most (non-union) film production employees, I worked completely freelance, with no employment agreement other than to show up and do what I'm told by the Production Coordinator or Assistant Director on the morning of the shoot. In this type of arrangement, the employee is working as a sort of "day laborer," ie: you show up, you work until you're cut, we send you a check for a previously agreed upon amount. On spec spot shoots, it's always the minimum production assistant's rate ($150/day at the time, regardless of hours worked), unless you are in a position to demand more. Even the union grips/camera ops/etc work for less, 'cuz these type of shoots are always on "off days..." The idea is that you'll work miserable hours for peanuts just to stay in touch with the production company and its managers so they'll hire you for "real" shoots. It's a dreadfully effective scheme.

Anyway, in this particular case, there were never any written or verbal agreements made between me and the production company other than where and when to show up... So, unless there were some way that by working I was conceding ownership of images I made during the shoot, I feel that I'm the rightful copyright holder. Is this line of logic sound?

Thanks again-

[paul stimac]

My two cents,
Unless you signed away your rights to the image - you still own it. HOWEVER, if you don't have it officially copyrighted then you'll have a tougher time collecting from them. Do you still have the original? Since the company in question is big and the fine for such misuse is also big ($150,000), I'd seek a qualified attorney.
Good luck,
Paul

[Alan Davenport]

IMO, the answer is actually quite simple. You were working for the production company, and as their employee you were paid for your time and for what you produced while on their clock. Unless your terms of employment specifically said that YOU retained copyright to your work, then anything you produced on company time belongs to the company, including the copyright.

So, if you can present a convincing case that you took the photos on your coffee breaks, you might have a claim to the copyright. If not, then probably not.

[Mike Davis]

Have you lost anything from this admittedly impromptu shot being published on the web? Did the director have any way to get in touch with you. Did you sign the back of the photo? Did he know you well enough to know you by name? Was anyone trying to violate your copyright?

You did a nice thing a number of years ago and gave "a nice guy" a print of one of his interesting spots. I think that that's very cool. Now, years later, you find it being used in a somewhat commercial though certainly not mainstream way (note that its not on the directors personal site). It's been at that location for 3 years.

My suggestion is that you forget about it. Or maybe call the director and have a laugh over it. Maybe he'll offer you a gig to shoot some production stills. If you harass kodak, they remove it claining that they had no knowledge of copyright issues and that it came from the directors private collection. It does you know good, kodak no good, and the director no good. As it is you had the enjoyment of showing it to all of us and we thought it was cool.

[Randy Becker]

Just a few points of clarification:

At the moment of creation, which in the case of photography means when the film is exposed (you push the button) the image is now in tangible form and is copyrighted. That is, you control how it is copied and/or used.

Only after registration of the image with the Library of Congress does any infringement and/or statutory damage issues become part of the legal situation.

Ownership of a print does not transfer copyright to the owner of the print so the director had no legal basis to give them permission to give it for this usage. The law specifically spells out this point.

In the absence of paperwork to the contrary, the shooter is the owner of the copyright. The exceptions to this are when, as an employee, it is in the regular scope of your duties to produce photographs or you have signed a "work for hire" agreement. In these cases, your employer owns the copyright to any photographs you create in the course of your employment duties or in the case of the WFH, you signed them away forever.

In your case, I would contact the "offending" party, explain you are the copyright owner of the image and explain that would like them to compensate you for the usage. Be prepared with an amount beforehand, be polite and business-like and you will get a lot more cooperation from them. This is probably a case of unintended infringment. Be professional in your dealings with them and I am sure they will be as well. It does them no good to make this more than what it is.

Best regards,
Randy Becker

[tim atherton]

Also, Register the image right away regardless

And at least contact a copyright attorney (if you are in NY etc try Ed Greenburg ecglaw@aol.com at Greenberg & Reicher, LLP who is an expert )

[tim atherton]

Oh - and make and save screenshots of the infringement

[Donald Brewster]

At the very least get the picture credited to you on the website.

[Ralph Barker]

jb asked, "Is this line of logic sound?"

Although others have essentially answered that question, I'd say yes, that is consistent with my understanding of the law. Unless you signed away your rights in a written (not verbal) agreement, you still have them. However, I'm not a copyright attorney, nor do I play one on TV or the Internet. Heck, I didn't even sleep in one of those (whatever it is) hotels last night. ;-)

[Dave Schneider]

I am not a professional photographer or a lawyer but I do have a question. Did you have any legal right to take this picture in the first place? Even if your employment agreement did not specify anything I wonder. If I were on the street while they were filming a commercial for and paid for by BMW for example, could I sell photographs that I took from my apartment window or the street corner?

[Will Strain]

Question: "If I were on the street while they were filming a commercial for and paid for by BMW for example, could I sell photographs that I took from my apartment window or the street corner?"

Answer: "Well.... it depends."

[mark anderson]

this is how they will argue thier point. "you were hired for the day, you took the picture while you were employed by them"

[Kirk Keyes]

You should at least see if you can get credit for taking the photo on Kodaks web site.

[Will Strain]

Mark - as a freelancer, the standard response is: My contract did not specify work for hire. And as a contractor, I am not an employee which has a particular set of requirements it must meet.

[paulr]

The advice here that makes the most sense ot me is to
1) register the image
2) prepare whatever evidence you might need (screenshots, picture of the neg, copy of any contract, etc.)
2) research a fair price for this use of the picture and to
3) approach kodak in a polite, businesslike manner and ask for for compensation and a byline.

If you go to them screaming lawsuit, they'll likely just take the image down, and you'll have a very hard time accomplishing anything.

[jhogan]

Thanks to all of you for the opinions, both here and offline.

My initial instinct was to pursue what many of you recommended, which was well summarized by PaulR. I never considered a lawsuit- My experience has been that a photo used for this sort of purpose usually goes for somewhere in the neighborhood of $200-500, (good for about 20-60 minutes with my lawyer). Part of the reason for my posting was to hopefully add some more perspective concerning photo ownership issues.

For Alan: If you've ever worked on a film set, you know it's nothing but one long coffee break, with periodic interruptions characterized by crew members yelling, bumping into one other, and dropping things...

Thanks again -

[ctg]

Just a few points of clarification:

At the moment of creation, which in the case of photography means when the film is exposed (you push the button) the image is now in tangible form and is copyrighted. That is, you control how it is copied and/or used.

Only after registration of the image with the Library of Congress does any infringement and/or statutory damage issues become part of the legal situation.

Ownership of a print does not transfer copyright to the owner of the print so the director had no legal basis to give them permission to give it for this usage. The law specifically spells out this point.

In the absence of paperwork to the contrary, the shooter is the owner of the copyright. The exceptions to this are when, as an employee, it is in the regular scope of your duties to produce photographs or you have signed a "work for hire" agreement. In these cases, your employer owns the copyright to any photographs you create in the course of your employment duties or in the case of the WFH, you signed them away forever.

In your case, I would contact the "offending" party, explain you are the copyright owner of the image and explain that would like them to compensate you for the usage. Be prepared with an amount beforehand, be polite and business-like and you will get a lot more cooperation from them. This is probably a case of unintended infringment. Be professional in your dealings with them and I am sure they will be as well. It does them no good to make this more than what it is.

Best regards,
Randy Becker

Yes, I recently had someone having had access to my digital files make some rather criptic remarks about the ease of pirating other"s work & altering them slightly with photoshop and usingthem as her own. At the time I was pretty upset about other things but later the statement did start to bother me.
On one hand if they simply use your work upon which they significantly with P.S. or simply use your work, recroping (etc)? One thing that did come to me was "I am glad that I shoot film therefore I can reproduce the negative but as she shoots digital . . .

[William McEwen]

The link didn't go to the picture, so I haven't seen it. Too bad, it sounds like a winner.

I think your questions have been answered, but I can't resist summing up my own thoughts:

Seems to me hiring a lawyer is just going to stir up an expensive hornet's nest. The company hired your a**, and they can say they own that picture. They can also say it was an unathorized photo. (Even though a spectator could have taken it, the photo in question wasn't taken by a spectator.)

I suspect the director doesn't know who took it and would probably like to give credit where credit is due.

[bdkphoto]

The link didn't go to the picture, so I haven't seen it. Too bad, it sounds like a winner.

I think your questions have been answered, but I can't resist summing up my own thoughts:

Seems to me hiring a lawyer is just going to stir up an expensive hornet's nest. The company hired your a**, and they can say they own that picture. They can also say it was an unathorized photo. (Even though a spectator could have taken it, the photo in question wasn't taken by a spectator.)

I suspect the director doesn't know who took it and would probably like to give credit where credit is due.

FWIW --It's a five year old thread.

[William McEwen]

FWIW --It's a five year old thread.

:p

[mdd99]

The advice here that makes the most sense ot me is to
1) register the image
2) prepare whatever evidence you might need (screenshots, picture of the neg, copy of any contract, etc.)
2) research a fair price for this use of the picture and to
3) approach kodak in a polite, businesslike manner and ask for for compensation and a byline.

If you go to them screaming lawsuit, they'll likely just take the image down, and you'll have a very hard time accomplishing anything.

I agree 100%. Try to find an accommodation (partnership) with Kodak, get credit, and add it to your resume. Who know what positive things will come out of this.

[Tom Monego]

It can't hurt to talk to a copyright lawyer. But if you were employed by the station while you took the pictures you may not have much to stand on. Happened to me with a company I worked for. Wanted to keep some images I did for them for my portfolio, when I left they asked for any images I had back. I used mostly my own cameras 4x5 to Leica 35s. Luckily I complained to one MD and he was fine with me taking images I did for him, he was a partner, others weren't. But I did a ton of laser images that had to stay.

Tom

[rdenney]

Realizing that the thread is utterly stale, I would offer only this for posterity:

We have to make a distinction between enforcing our rights (whatever we think they are) and achieving our goals. If I had a photo posted by Kodak, having them cease and desist posting it would absolutely not be my goal. And a letter from a lawyer would be just that: A demand to cease and desist or pay a license fee. ("Okay, we'll cease and desist.")

If the infringement resulted in significant losses, such as Kodak selling that print with the result that your attempts to sell it were undermined, then your goal might be to recoup those losses. In that case, the legal route might be the only sensible course.

Buf if the goal is for the image to stay right where it is, but with your name at the bottom, so that you can brag to the world that Kodak posted an image of yours, then it seems to me that the polite letter complimenting them on their good taste might be the preferred course. You won't need to remind them that if you own the image, they are infringing unless they have a written assignment of copyright in hand. Companies like Kodak know that already.

The "work-for-hire" issue is a little stickier. Unless a PA is charged with making still photographs, then they weren't hired to make still photographs, and their still photographs are not covered under work-for-hire rules, it seems to me. If, as an engineer, I photograph something unrelated to my assignment while I happened to be on the clock, I would still own the image. Of course, my employeer my dock me for wasting their time, heh. Given the director a print absolutely does not convey any copyright.

Having the copyright registered only affects the burden of proof and the application of punitive damages. If it is not registered, then the infringer has greater claim to the BS that it was an accident. In the case of my photos, however, they would have to trim off the copyright notice, which would undermine that case, it seems to me. But not registering the work (or even including the copyright notice) in no way undermines the copyright, at least since 1978 when the law changed.

Rick "realizing that the combatants are no longer engaged" Denney