The following an amalgam of some of the recurring questions I get through the Legal Hotline. In other words, this is a not-so-hypothetical situation that varies according to the alternatives found in the parenthesis:
Our editorial staff posted a photo (or two or three) of a band on our website several months (or even years) ago. The copyright was owned by a professional photographer. We thought we could use the photo because (the band provided us with a copy or the person who sent us the photo assured us they could grant us the right to use it or we saw it on a local music venue’s website or we found it on a public website or we believe). Now the photographer (or his or her representative or a licensing rights company) has contacted us and demanded that we remove the photo from our website (which we are OK with) AND pay thousands in damages.
The questioner often poses one or both of the following questions:
- How should we respond?
- How can we avoid finding ourselves in this situation in the future?
I’ve actually addressed the second question at a number of AAN Conferences (including last summer in Austin) but a refresher is never a bad idea. That’s why there are plans afoot to have me do an encore presentation at the upcoming Digital Conference in Portland in January. But I’ve never really spoken on or written about the first – responding to these cease and desist/demand for payment letters – which is why the proposed Portland session is likely to touch on this topic as well and why it is worthwhile to touch on both now.
As always, a disclaimer: what I’m about to write should not be construed as legal advice. As I note below, and advise generally when answering Legal Hotline questions, you should always consult with an attorney regarding your specific situation.
Responding to a Demand Letter
Receiving a sharply worded letter from an attorney demanding that you remove a photograph from your website AND (often) seeking payment for prior use of a particular photo in print and online is no fun. It can be downright stressful, especially when the letter threatens that liability of up to $ 150,000.00 per copyrighted work in statutory damages, plus attorney’s fees or costs.
The first thing to do is relax. While it is true that the potential exists for a court to award $150,000.00 per work, the likelihood of such an award is rare and would require a demonstration of willful copyright infringement.
But you still need to take this seriously. If you have, in fact, used someone else’s copyrighted photo without permission, the end result is that you likely will have pay something to the copyright owner – even if you willingly remove the photo from your website. And if you can’t agree to a reasonable amount and the copyright owner (and his or her attorney) decide it is worth taking you to court, you could be on the hook for attorney’s fees and costs if you lose, which aren’t cheap.
With that in mind, here are a few things to consider when you receive this type of demand letter that should help to reduce (and, if you are really lucky, eliminate) the amount you might have to pay:
- Don’t avoid the situation. It won’t just go away. Failure to respond only serves to inflame the situation and may increase any payment you might make (because you aren’t going to be asked to pay for that attorney’s time in addition to paying for use of the photo).
- Ask for proof of copyright ownership and/or registration to (a) ensure that this isn’t just someone trolling you for an easy payment and (b) confirm whether or not the photo has actually been registered with the Copyright Office.
- Check to see if you may have gotten permission from the copyright owner. It’s a worthwhile practice to retain some form of documented proof of a license or other permission to use every photo you publish where you don’t already own the copyright. This is also true if you use a stock site like Flickr – capture a screen shot of the page where you accept the terms of use of that photo. If you got the photo from an advertiser, check the advertising agreement to see if you can shift the burden to them (and if you don’t have that language, add it to future agreements; it can be done via a single additional line).
- Remember that the demand letter can be considered as an offer to be countered, not accepted without question. It’s OK to respond with a reasonable counteroffer, as long as that counteroffer has some basis in reality. Perhaps it is tied to your usual fee paid to freelance photographers or publicly available data regarding the licensing fee for that particular photo.
Avoiding Similar Situations in the Future
Now that you’ve gotten yourself out of immediate danger, how do you avoid finding yourself in this situation in the future?
The easiest way to avoid liability is to be very cautious whenever it’s clear that you don’t own the copyright. As I often say to my clients: “if you didn’t create the content, justify to me why you should be allowed to use it.”
Copyright vests with the creator of an original work of authorship fixed in a tangible medium of expression. That generally means the photographer who took the picture (the most common exceptions would be photos taken by your own staff photographer in the course of his or her employment or photos taken by a freelancer when you have an agreement which says those photos will be a “work for hire” owned by your publication).
If it’s clear that you don’t own the photo, then you can probably only use it in one of three situations:
The photo is in the “public domain” – which DOES NOT mean it is publicly available and instead generally means the term of copyright has expired (which, for our purposes also means the photo was taken a long, long time ago).
You have clear permission to use it. Ideally this means you have a written agreement with the copyright owner laying out the terms and conditions of use. A couple of key concerns here are (1) getting the permission of the actual copyright owner (remember, is unlikely to be the band), (2) identifying all ways in which you are allowed to use the photo (it’s best to get permission to use in all media for as long as possible), and (3) in the case of stock image or web-based licensing sites, making sure you follow all applicable terms and conditions for use of that photo (which serve as a “take it or leave it” license for use of the photo). It is also advisable to have the person providing you the photo warrant that he or she has the right to let you use it and, further, have them agree to indemnify you if their warranty is flawed.
You are engaged in a Fair Use. This is intentionally discussed last because you should always seek to get written permission before relying on Fair Use. You should never assume that your use is a Fair Use (in fact, the concept is almost always narrower than you think it is) and should only put your faith in Fair Use after consulting with an attorney.
Finally, these problems can sometimes arise because a third party has posted infringing content directly to your website. Thanks to a federal law known as the “Digital Millennium Copyright Act”, you can rather easily protect yourself from liability in these situations – regardless of whether the third party is itself actually committing copyright infringement. It just requires some proactivity in the form of:
Designating an agent for receipt of takedown notices from copyright owners (you must both notify the Copyright Office as to the identity of the Designated Agent and post this information to your website).
Having a policy in place to deal with repeat infringers.
Following the proper procedures when you receive a takedown notice.
(That’s really just the tip of the iceberg; you can read a bit more about the DMCA in this post I recently wrote for my law firm’s blog)
Again, this is just a VERY basic overview of what to do in these situations – the tip of the iceberg. You may be able to learn more if you are attending the Digital Conference in Portland. In addition, I have actually prepared a more detailed memorandum which offers more information in this area. I’m willing to provide that to AAN members at a discount from its usual client cost. But, as I said above (and always), none of this is intended to be relied upon as legal advice or to be used as a substitute for consulting with an attorney regarding your own, unique, situation.
