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One of the most powerful components displayed on a website are photographs, particularly “mood” photographs which portray a pleasant scene of happy consumers benefiting from the goods and services promoted on the website. Maybe the website belongs to a pediatrician and a photograph of happy children enjoying play-time on a playground conveys the message that patients of the pediatrician enjoy healthy and happy lives. Maybe the website belongs to a bank and a photograph of a happy family riding in their new car conveys the benefit of that bank’s auto-loans. Maybe the website is that of a landscape company and the photographs are “before and after” photos demonstrating the talent of the landscaper’s services. However, the source of the photographs could ultimately cost the website owner more than any financial benefit the owner ever hoped to realize from the promotional use of the photographs. Further, a larger risk in this regard of which all businesses should be aware, arises out of a hired web-designer’s carelessness and corner-cutting.
Photographs, and any image files, by their very nature, with very few exceptions, are subject to copyright protection whether registered or unregistered. The United States Copyright Act, (Section 17, United States Code), makes any unauthorized use of a photograph, drawing or graphic work, (any image file), a “copyright infringement.” The violation of “copyright infringement” is a strict-liability violation, which is to say that merely using the unauthorized photo, even for a short duration of time, is a complete infringement. Quickly taking down an unauthorized public display of a photo does not alleviate damages for the unauthorized user. At a minimum the unauthorized user is exposed to damages equal to the actual value of the use of the photograph plus any profits attributable to the infringement. At a maximum the unauthorized user could be exposed to “statutory damages” which could be assessed at $30,000 plus a reimbursement of the copyright owner’s attorney fees and court costs. If it can be demonstrated that the infringer’s unauthorized use of the photographs was “willful,” a court could award the copyright owner up to $150,000. All for the use of a random image file? Yes.
There are companies such as Getty Images, Shutterstock, Istock, Dreamstime and Alamy who are in the business of licensing the use of millions of “stock” photographs and image files. They also each have methods of scanning the internet to locate their proprietary image files and, through automation, each can detect where a photo is being used without a license. The automated services crawls the internet 24/7/365 searching for photos. When it finds an image file that matches the “mothership” database, the crawler “phones home” and alerts the owner of the infringement, automatically screen-shoots and archives evidence of the infringement and, generates a demand letter to the infringing party. This all happens while the unsuspecting and perhaps unwitting infringer goes innocently about their business.
But there is no such thing as “unwitting infringement.” As a “strict liability” violation, there is no valid excuse for infringement. Consider it akin to running a STOP sign with your car. You may have a dozen reasonable excuses why you didn’t stop, but running a STOP sign is a violation regardless of reason. Such is the same with copyright infringement.
The event becomes even more upsetting when the infringer is not even directly responsible for the infringement. We encounter many incidents where a legitimate business owner hires an independent web-design contractor to build a website and the independent contractor cuts corners and “captures” image files from the internet for re-use on the customer’s website. Then the aforementioned photo or image file detection process happens and the legitimate business owner is confronted with copyright infringement proceedings which arguably, were caused by an independent web-designer. Nevertheless, the owner of the website, the place where the unauthorized photos are displayed, is individually liable for the infringement.
When confronted with such a scenario, the worst course of action is doing nothing. Hiding ones head in the sand hoping it will all just go away is the worst decision possible. Even though there are typically no defenses, there are many ways to mitigate the damages. It is also important to recognize the situation as an opportunity for open negotiation.
The availability of “statutory damages” and award of attorney fees are available only to those copyright owners who have taken the time to obtain a federal registration prior to the commencement of the infringement. Often a copyright owner will demand over-reaching and extreme damages plus attorney fees when they are simply not entitled. Therefore the first question to ask a demanding copyright owner is to produce their registration. If they cannot produce a registration, all that remains is a negotiation of settlement which can be nominal. The infringing party can exploit the lack of registration reminding the unregistered copyright owner that the cost of litigation without a reimbursement of attorney fees is often more than the actual damages that they can expect to obtain.
On the other hand, if the copyright owner is able to produce a registration that was in effect before the commencement of the infringement, the infringer should take a more conciliatory approach because attorney fees in a copyright case could easily exceed six-figures. In this situation the infringing party should make every effort to communicate with the copyright owner and not allow the matter to escalate to litigation.
Of course it is best to simply avoid these scenarios in the first place. If commissioning an independent web-designer to create a website, make sure you have a written agreement with the web-designer that includes strict instructions to use only authorized photographs and includes an indemnification for copyright infringement. Also, be vigilant. Ask questions. Insist to be shown the source of all images and demand strict proof that written permission has been granted for each photograph or other image file displayed on your website.
If you have any questions or if you are involved in a situation such as this, our copyright team can provide you with effective counsel and assistance
By: Carl J. Spagnuolo
Intellectual Property Attorney
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