It is an all too common scenario that we’ve seen and experienced over and over and over. Adjust to fit your own mileage. Photographer takes photos of minor or major celebrity. Sometimes the shoot is done for a magazine that hired the photographer and paid a licensing fee for usage. On other occasions the images are shot on spec (speculation), for portfolio use or because photographer and celebrity are friends, relatives or acquaintances.
A print of the photo is given to the singer/celeb by the photographer as a courtesy or “gift”. That image makes its way on to the celeb’s album, poster, website, tour posters or products, produced using celeb’s name. You can assume for the purposes of this piece that the singer/celeb showed or gave a copy in some format to one of his/her “people”, agent or manager. And we’re sure you can guess, there’s no invoices or agreements of any kind and the photographer is unaware of the celeb’s activities.
Photographer has never licensed the images for any of these uses except where a magazine or a publication paid in full and was otherwise saintly in all respects. Photographer, after seeing money sprout wings as it flies away, screams “copyright infringement” and wisely gathers up proof of usage and a copy of his/her registration.
Attorney for photographer writes “death letter” to infringer enumerating the infringements, attaching the registration, directing the infringing activities cease and requesting a list of any/all other infringements. Defendant’s attorney writes back and says, “There is no case in copyright infringement. My client had implied consent to use the image in connection with his/her concerts, CDs, etc”.
And that dear reader is the crux of this column, implied consent.
“You kill by consent, every time you let something… pervert the balance when you have the power to stop it.”
Quote by Thomm Quackenbush in Danse Macabre (Night’s Dream #2)
So, in the real world, just what is this defense of implied consent that defense attorneys love to toss out, just to see if it sticks and chases you away?
The 2nd Circuit Court of Appeals – a major court just a step under the Supremes – has ruled that “an implied non-exclusive license should be found to exist” and “only in narrow circumstances where one party ‘created the work’ at the other’s request and handed it over (or delivered it) intending that the other party copy and distribute it.” There must be unambiguous evidence to demonstrate the above and that there was a meeting of the minds between the parties that the image would be reproduced and distributed. An exclusive license or transfer of copyright requires a specific, signed, writing.
The defense is therefore only applicable in extremely narrow situations and believe it or not, those situations rarely lead to disputes as they generally involve on-going business relationships that neither party is looking to destroy.
Example of a valid implied defense: On the first of every month photographer and client meet at which time client requests that photographer photograph a specific employee for the “company’s use” which is never itemized nor is any paperwork exchanged. Photographer shoots employee and receives $500. This practice goes on for months or years. No paperwork ever. Photos with photographer’s knowledge get used in corporate reports, PR releases, Xmas parties, local newspapers and retirement parties. One such employee photo makes the cover of Time Magazine which is doing a cover story on the company – at which point photographer claims “copyright infringement!” Implied consent would very likely defeat that claim. Photographer loses.
The more typical scenario is that 3 or more parties are involved.
Ed represents the photographer in one such case pending in the US District Court for the Southern District of New York (Manhattan & White Plains) involving an actor/celeb.
Case Name: Shipstad v. One Way or Another Productions, LLC et al
Case Number: 1:16-cv-05145-LAK
In this case, photographer Patrick Shipstad photographed actor Taylor Negron over several years during which they had been friends. Mr. Negron has a very respectable reputation as a working actor and long IMDB page to his credit. Unfortunately, he was ill while filming what would be his final role and died before the final editing of the film. His physical appearance had deteriorated somewhat over the months leading to his death. He finished filming the new movie entitled “Alienated”.
The Complaint alleges that after Negron’s death the producers of the film employed one of Mr. Shipstad’s images of Mr. Negron without obtaining Patrick’s license or consent for advertising and promotional purposes. The image was then retouched (again without consent) and employed in the advertising of the film, in attempt to secure distribution of the finished product. The complaint alleges that the defendant’s production company had an experienced copyright lawyer working on the legal aspects of the film.
The defendants made a motion to dismiss the complaint alleging among other things that the “Photoshopping*” of Mr. Negron’s face was “transformative” (another term that will be the subject of another article) and thus a “fair use” and more importantly for this article, that the defendants had implied consent to use the registered image without the author’s consent. This argument was made even though Patrick had never met, spoke with or heard of any of the defendants in this case nor did they allege any contact with Patrick or attempt to obtain a license from him.
Judge Kaplan ruled (among other things) that there was as yet, no basis for any claim of implied consent and for that and other reasons the case will go forward. His decision can be viewed as follows:
The complaint link is above and the exhibits can be viewed below as follows:
The defendant’s motion papers seeking to dismiss the case can be as follows:
Our papers opposing their request which spell out the elements needed by defendants are as follows:
There are even more papers filed, but this gives you an inside view of what goes on in an infringement case.
In plain English, merely giving someone a photo and/or mere possession of a photo, does not of itself serve to give or grant the right to violate the copyright in that image by reproducing and using the image without the author’s license or consent – especially in connection with the advertising, promotion of a commercial product or service. The unauthorized Photoshopping* it is alleged, is yet another transgression of copyright law by creating unauthorized derivatives (once again yet another subject for a future article) and so doing may also be violate Sections 1201 -1205 of the Copyright Act. Those sections result in consequences to those who alter or eliminate copyright management software, ie watermarks or metadata. We cover this in our previous article titled See our previous article “The Value of Watermarks” which you can read here. Well worth reviewing in our opinion.
We hope all these papers filed and linked to in this article give you an idea on how these issues are argued and litigated in real life. These are a classic fact patterns and serve as additional reasons to timely register all of your work- – a lesson long ago learned by Mr. Shipstad.
*Photoshop is an Adobe Trademark