[by Nancy Wolff]
What should you do when you have discovered your photograph has been infringed? Before you immediately run to a lawyer, or start spending your recovery money, here are some tips to make sure that your time, as well as any attorney’s time is spent effectively.
1. Make sure that the photograph is really yours (sometimes images of common subjects can look very similar).
2. If you’ve authorized any stock distributors to license the image, make sure they have not made an agreement that covers the use. Even if your stock agency has not licensed this specific use, some contracts require you to let the agency attempt to resolve any infringements first.
4. How was the image used? Is it a small image posted on someone’s blog, or the hero shot in an advertisement for a major brand? If it’s a small use, the value of the claim may not be worth any attorney’s time. A recent survey conducted by the Copyright IP section of the American Bar Association found that most attorneys won’t take a claim unless it’s worth at least $30,000.
5. Instead of immediately contacting a lawyer to collect for a small claim, you may want to first contact the user directly. You could educate them about the need to obtain a license and send an invoice for a license fee that is appropriate for the use. More users will comply if you request a reasonable license than if you seek a large fee as a penalty.
6. Was the image registered with the US Copyright Office before the infringement or within 3 months of first publication? As a US copyright owner, you cannot go to court until you have a registration. You may register after an infringement but your damages are then limited to actual damages, for example a license fee or the infringer’s profits. (Profits may be difficult to determine, particularly with some online uses where there may be no direct profits.) If the work was registered before the infringement or within 3 months of first publication, you can elect statutory damages, which allows the court to use its discretion in awarding fees between $750 and $30,000. If you can establish willfulness the Court may increase damages up to a maximum of $150,000, but maximum statutory damages are not typically awarded unless you have an exceptional case. In addition, you cannot seek attorney’s fees, unless the work was registered before the infringement or within 3 months of first publication, and even then, attorney’s fees are not guaranteed but awarded only at the discretion of the court.
7. Who is the infringer? Is it an individual, a small local business or a large entity? You may have a great case but you might not be able to collect if the infringer is an individual or a small company without much money or relevant insurance.
8. Where is the infringer located? The internet has no boundaries but copyright laws do and each country may have its own laws. International treaties between countries allow the country where the infringement took place to protect your work if you are from a treaty country. However, you may not have jurisdiction over the foreign infringer in your home territory. For example, if the image is used on a restaurant’s web page in Berlin, the infringing activity is in Germany and you could only bring a claim in Germany.
9. If based on the above, you believe you have a good claim, and follow these steps before meeting with an attorney:
a. Find out how the attorney charges. Some attorneys will only work on an hourly basis, while others may take a case on a success fee, or contingency.
b. Have all the facts outlined in chronological order before your meeting.
c. Have any necessary documents ready for the attorney to review before the meeting.
d. Be realistic about what you can achieve by bringing a federal claim for copyright infringement. Any lawsuit requires a commitment by you to be responsive to an attorney, be available to review documents and cooperate in providing responsive questions during the discovery process. The other side is entitled to ask for documents, information and to depose you, which means you are asked questions by an attorney under oath with your responses recorded either in by video or by a court reporter.
10. Don’t think of settling as losing. You can go to trial and spend more on attorney’s fees then you might ever be awarded. A settlement often makes sense and you should seek the advice of your attorney before rejecting any reasonable offers.
11. If you just want the infringing work taken down, you can take advantage of the Digital Millennium Copyright Act, and send a proper to the ISP hosting the infringing work without retaining an attorney. After receiving a proper takedown notice, the ISP is required to remove the infringing material to avoid monetary damages. Most websites have an email address where you can report an infringement.
Nancy Wolff is a partner in the Intellectual Property Media and Entertainment Firm, Cowan Debaets, Abrahams & Shappard. She represents a wide variety of creative individuals and companies and has experience in copyright trademarks and privacy law. She serves as counsel for the DMLA and advocates on behalf of members on copyright and rights of publicity issues. She is also counsel for the PLUS coalition, a non-profit organization developing standards in image licensing and an image registry. She has testified on behalf of artists for copyright remedies before the Congressional subcommittee on Courts, Intellectual Property, and the Internet for the U.S. House of Representatives. She is the president elect of the Copyright Society of the USA and chair of the ABA Intellectual Property Section Committee on Visual Arts.
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