Andrew Paul Leonard is a photographer and one of Ed’s clients. Mr. Leonard is also an electron micrographer. Shooting through an electron microscope he is one of the precious few professional photographers in the world who can both use scanning electron microscope and then create color images of stem cells. The black and white image shot by Mr. Leonard is digitally “colorized” by him to make the best possible representation of that cell’s appearance in nature. His scientific training enables him to perform this rather unusual task.
Below is Mr. Leonard’s most famous image appeared on the cover of Time Magazine.
His images were used by Stemtech Intermational, Inc.. (a Delaware company) which published the images on various websites and affixed a copyright notice indicating that the registration was held by Stemtech.
Rather than just bemoan his fate, Mr. Leonard commenced an action in the United States District Court For The District of Delaware (08-067-LPS-CJB). His trial attorneys (James S. Green and Jan I. Berlage) sought money damages under the Copyright Law for direct, contributory and vicarious infringement. The Time Image along with another photo were the subject matter of this litigation.
After very extensive motion practice and a vigorous defense posed by the defendant’s lawyers, the matter was finally tried before a jury by Messrs. Green and Berlage. That trial concluded on October 11th at which time the jury rendered its verdict after just 1 hour of deliberation. The jury found that the defendant had (among other things) intentionally violated Mr. Leonard’s registered copyright. It awarded Andrew 1.6 million dollars.
The above is the unvarnished truth which we (uncharacteristically) present to you in a clinical fashion. This is a sample of a real life case and of what a jury can do in an infringement matter when presented with the facts. For those of you who still elect not to register all of your works, all of the time, without exception our only remaining suggestion is that you not let your spouse or children ever see this article.
Mr. Leonard registers his work and pursues those who elect to infringe upon his rights. By so doing he has been justly rewarded for defending his rights.
#1 by Richard Green on October 19, 2013 - 12:12 pm
I’ve been following this matter with interest for several years. Assuming that you have access to Pacer or to other resources readily available to you as an attorney, you know very well that Plaintiff lacked a timely registration and that as a result, Plaintiff’s registration had no bearing on the ACTUAL damages awarded Plaintiff in this matter. Surely you must also know that even if Plaintiff had a timely registration, the maximum statutory damages in this matter would have been $300k, assuming that Plaintiff could prove willfulness (Plaintiff failed to do so). Plaintiff’s ACTUAL damages award WITHOUT A TIMELY REGISTRATION exceed statutory damages by more than 5 times. Your attempt to position Plaintiff as a poster boy for timely registration is both ignorant and misleading, to the extreme. A first year law student mistake. You must also know that as Plaintiff failed to timely register his work, he will be responsible for his attorneys fees and costs, which in a matter such as this, are likely to consume the majority of his award. Get your facts straight.
#2 by Jack and Ed on October 19, 2013 - 2:26 pm
Nobody made any “mistakes” and we fear your post both misses the point and is unintentionally very misleading. At no point in our article on the case did we state when the registrations were made. A creator or author can not seek relief via the courts until/unless a registration has been obtained. Upon so doing the matter can be filed in the appropriate United States District court as was done here. Our brief article is about a very hotly contested litigation that has gone on for quite some time. Had we written 5 -10,000 words we could have addressed the issues in greater detail.
Answering your comments directly:
The case is noteworthy in that the damages awarded are “actual” not statutory damages. Mr. Leonard’s jury verdict after trial – this is not a default judgment – was computed by a jury as compensation for direct, vicarious and contributory copyright infringement. All three forms of infringement were found by the jury to be “intentional”. Had Mr. Leonard registered prior to the initial infringements we would as you know, have the option to seek either statutory or compensatory damages. That election can be made sixty seconds after the jury has heard both sides of the case and prior to their deliberations.
Your statement that the jury “did not find willfulness” is misleading at best. You can look at the jury verdict sheet where in answers to Yes/No questions the jury decided that “YES” the defendant intentionally “directly infringed”, “intentionally induced (others) to infringe”, “knew that its distributors were directly infringing”, “had the ability to stop the infringements and failed to do so”, “copied the image” and so on.
Because actual damages were at issue and awarded after a full trial, the legal term “willful” which applies to statutory damages was not before the jury. Any attorney who actually tries any type of cases to juries, will tell you that if a jury finds the acts of the defendant “intentional” the amount of money it can award is typically “affected favorably to the plaintiff”. In this case the written jury verdict eliminates any doubt as to what the jury believed the motivations of the defendant were.
In this case the compensatory or actual damage award should incentivize those who did not register before publication (or within the 3 month window) to register anyway. It also serves to point out that just because the author failed to register before the unauthorized publication, there are still remedies that are often worth pursuing. You must register to sue period. It there is an infringement the fact the image(s) has not as yet been registered does not necessarily mean the author is without a big time remedy.
Infringers and their attorneys often will “dare” the author who did not timely register to “sue us”. In some situations especially with photographers who charge big fees, registering the work “late” still allows for a big recovery. As you know however, attorneys fees can not be awarded nor can one choose to seek statutory damages. Since 99.99% of all authors in 99.99% of all situations would benefit from timely registration we suggest doing so.
So we suggest you re-read our piece and by all means read the court file including all of the motions made by the defense. The bottom line is that a jury awarded a creator a very substantial sum because he registered the work, retained counsel and sued. The “mistake” of not registering earlier was therefore, not fatal.
There are dozens of other lessons that we teach and which played out in this real life case. Getting to all of them will take more than just one article.
#3 by Howard Kier on October 21, 2013 - 2:28 pm
This might be a dumb question, but, here goes. While the photo’s copyright is owned by the photographer who gave you permission to use it on your blog, what about the composite work, that is, the Time magazine cover and the other photo on that cover? Is there an infringement? Why or why not?
#4 by Matt Timmons on October 21, 2013 - 5:55 pm
Hi guys, I’m glad to read this article and am pleased with the verdict. I have a question that I think many photographers share. Can you explain the reason why photographers should register all their images as soon as possible rather than register an image after it’s been infringed? For instance, if a busy photographer shoots say, weekly; such frequent registration fees seem redundant and costs can ad up to hundreds or more dollars a year. However, registering after an infringement for one $35 fee and then filing suit seems more practical. Thanks-
#5 by Jack and Ed on October 22, 2013 - 2:25 pm
A. Mr. Leonard is the copyright holder in the image with the authority to consent to its use; and
B. This is a classic “real” fair use exception. The litigation discussed in our article is of and concerning the very image employed on the magazine’s cover (a copy which was an exhibit at that trial).
Another excellent example can be found in PDN’s reportage of the case Richard Noble v. Nike at this link. No permission was sought nor needed by PDN from Mr. Noble to employ the use of his iconic Bo Jackson image in that article which concerned a litigation about that very image.
Ed Greenberg
#6 by Matt Timmons on October 23, 2013 - 5:01 pm
Is there any answer to my question? (#4)
#7 by Jack and Ed on October 24, 2013 - 8:10 am
PhotoExpo in NY this week, so I’m tied up. Will get an answer by the weekend, so stay tuned.
Jack
#8 by Megan Duncanson on October 24, 2013 - 9:29 pm
I too am interested in the answer to Matt Timmons question. I am a fine artist and have created close to two thousand different paintings/designs. If I have to register each one separately I am looking at $70,000 in registration fees. Some of them I can register as a collection of maybe 4-8 images, but most are stand alone paintings. I registered some as a group of published images from an entire year and they went through the registration process with no problem, but when I went to do the same for published images in 2012, the copyright office told me I was not allowed to do that in any way, shape or form. Very frustrating and confusing when sometimes it’s allowed and sometimes it’s not, I don’t feel I have any protection for those images registered as a group and can’t afford to single register them. What to do?
#9 by Jack and Ed on October 26, 2013 - 8:43 pm
Megan, Sorry for the delay in responding. Matt’s question is answered in a blog post linked here. It was a long enough answer to warrant it’s own answer.
Your question may also need a longer answer, but let me try here. Registering published works can be tricky. You really need to contact the Copyright Office directly and ask to get on their pilot program for group registration of published images. Basically they will assign a registrar to you to help you through it. You are limited to a calendar year and limited to 250 images for the first few registrations. Labeling the files is critical with subject and date of first publication. Consistency in labeling throughout the registration form and filing schema is also critically important as to not having your registration kicked out. From what I’ve been told by teh Office, after a few registrations, to make sure you have the process, you can increase to more than 250 files.
Hope that clarifies, but basically you need to call the Copyright Office and get into their pilot program for group registration of published images. Group registration for unpublished images is still a lot easier and not as restrictive.
#10 by Megan Duncanson on October 30, 2013 - 1:28 pm
Thank you so much for the information! This is the first time I have heard of the pilot program, and I’ve done a lot of research on the issue and even in discussion with the copyright office they never mentioned this option. This is very helpful, thank you very much for your generosity in sharing your knowledge, so appreciated!!
#11 by Jack and Ed on October 30, 2013 - 1:41 pm
Glad to help. Was working with a photographer, just today, who’s group registration will be our example in our updated new version of our book. It’ll be out at the end of 2014.
#12 by John Whitaker on November 12, 2013 - 6:50 pm
I think what you are talking about is electronic registration versus paper registration. The Copyright Office still says you can paper-file a group registration of published images as long as they were all first published in the same year and have the same author/claimant.
Here’s the Copyright Office guidance http://www.copyright.gov/fls/fl124.html
Paper filing sounds easier to me than trying to e-file hundreds of images, although admittedly I have never tried to e-file hundreds of images.
#13 by Jack and Ed on November 12, 2013 - 7:02 pm
The Copyright Office really discourages filing a paper VA form. They can’t eliminate it, so they make it very hard as opposed to the simplicity of the electronic filing. You need to send a letter to the Copyright Office to request the paper VA form, as they no longer make it available online to download. Then there is a big issue with paper registration in that it will take up to a year or more to get the registration back, verses the approximately 3 month it takes when you register electronically. Group registration of published images is also a “pilot” program right now, with as I stated, a limit of 250 images until they are sure you know how to properly register.
I’ve register a lot in the old paper VA days and I regularly register thousands of files at a time with the current electronic eCO system. Trust me, uploading them is a lot easier and much faster in getting your registration form back.
From experience, I highly recommend you use the electronic registration method.
#14 by Edward C. Greenberg on August 16, 2015 - 3:02 pm
On August 13, 2015, Judge Stark, USDC Delaware upheld the jury’s verdict of 1.6 million $ and denied the defendant’s motion for a new trial based largely on the alleged unreasonableness of the jury’s award for actual damages only. More on the court’s decision in a separate article from us coming soon.
#15 by Edward Greenberg on August 16, 2016 - 2:49 pm
Update: Defendant’s appeal was just argued before the Circuit Court of Appeals. Audio of the 40 minute session is available by requesting it from me at [email protected]. Warning, this is not for casual listeners. While you need not be a lawyer to follow most of the arguments, it helps. A decision on the appeal will likely not be rendered for at least another 30 – 60 days. Listening in on how judges think and talk is enlightening for those of you who have never been to an appeal hearing.
#16 by Vivian on August 25, 2016 - 4:19 pm
I definitely want to hear that 40 minute session, Ed! Email to follow and thank you for making it available.
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