The Professional Photographer's Legal Handbook

Nancy E. Wolff

• Publisher: Allworth
• Year: 2010
• ISBN:
  9781581158076
• Topic: Media & Performing Arts
• Subtopic: Performing Arts & Business

In this accessible and entertaining book, expert Nancy E. Wolff explains copyright, trademark, contracts, and privacy. Real-world examples of cases, laws, and news items torn from today's headlines illustrate the most urgent legal situations faced by photographers: requirements, limits, and enforcement of copyright and trademark; fair use and public domain; first amendment considerations; the law of privacy and publicity; and many more issues. Detailed information on drafting contracts and licensing agreements is included. The imprimatur of the Picture Archive Council of America assures readers that the information is comprehensive and up to the minute. The Professional Photographer's Legal Handbook is an essential tool for everyone who works in photography—and everyone who wants to.

PART I

Copyright Law

1 COPYRIGHT LAW FOR THE

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PHOTO PROFESSIONAL

As the cases and discussion below illustrate, copyright law (more than any other legal area save, perhaps, contracts) has a significant impact on the field of photography. No one would dispute the assertion that photo professionals, be they photographers or stock photo libraries, are best armed with a sound understanding of their craft and commercial environment as part of their professional bag of tricks. It just so happens that copyright is the legal groundwork that ensures the basic economic return for these industry players as much as any technical skill and business savvy. With this important (arguably primary) consideration in mind, copyright law is entwined with and ultimately becomes part of the photographer’s livelihood.

WHAT IS COPYRIGHT LAW?

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A common misconception of this subject envisions copyright as a legal basis for “they took my idea!” or “I thought of that first!” claims. In fact, this really misses the mark of the theoretical and constitutional motivation behind copyright law as it exists today in the United States. Historically, copyright law did once exist as a way of controlling who could disseminate what information by granting only specific individuals the literal right to copy that information. However, these early days when kings exerted control over knowledge were on their way out when the American Framers drafted the constitutional roots of today’s Copyright Act. At Philadelphia’s Constitutional Convention of 1787, encouraging the creation and dissemination of information, as opposed to stifling it, was a primary goal of the new, enlightened Republic. A product of that convention, Article I, Section 8, Clause 8 of our Constitution grants Congress the power:

to promote the Progress of Science and the useful Arts, by securing for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.

Indeed, as with most constitutional language, this sentence raises more than a few questions. How does this language encourage sharing and creating information? And why does this call for a copyright law regime?

While the answers to these questions might not be wholly satisfactory for everyone, we can say there are widely accepted explanations. Here, the primary idea is to urge Americans to action, which plainly promotes the common good—to wit, sharing information. Our forefathers imagined, in step with their capitalist leanings, that the best incentive for individual participation in the common good was an economic one. By granting “exclusive rights,” such as the right to copy and distribute the work, authors gain a sort of limited monopoly in their works. As such, their economic incentive is protected against the freeloading copycat who hopes to profit without putting anything at risk, a result that at least increases the likelihood of compensation. Compensation justifies production, which in turn benefits the public in the form of music, art, and literature.

It’s an interesting and complicated theory (and this is the simple version), resulting in a congressional act which is doubly so. For starters, once we’ve recognized that copyright law operates as a monopoly, we’re faced with a cosmos of subtle qualifications and limitations on that monopoly. This raises more complications, but ultimately appropriate ones. Since the primary justification behind the monopoly is to encourage creativity, there has to be a give and take. Copyright’s monopoly cannot go so far as to stifle other works, which may promote the general welfare themselves. As a result, we’ll find that copyright law only protects works falling into certain categories, and among these protected works, certain elements of them remain unprotected.

Accordingly, we will begin with a short explanation of why photographs fit within one of copyright law’s protected categories. We’ll then examine the more complicated issues, which comprise the bulk of the copyright discussion—namely, understanding the legal limits of copyright protection. Afterwards, the reader will understand copyright as both a sword and a shield that indeed is a necessary tool of the profession.

COPYRIGHT AND PHOTOGRAPHS

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The Copyright Act (which is Title 17 of the United States Code) protects “original works of authorship” that are “fixed in a tangible medium.” We get these basic requirements from statutory language of Title 17 of the United States Code Section 102, which acts as “square one” for our progression through copyright law:

Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

As the book’s title suggests, we’ll mostly be concerned with how copyright and photography interact. Photographs and other forms of visual images are protected under Section 102(5) of the Act, which refers to “pictorial, graphic, and sculptural works.” As such, the copyright holder in a photograph is afforded a package of rights divided into several classes commonly known as: reproduction rights, adaptation rights, distribution rights, and performance and display rights. Yet in order to enjoy these rights, the would-be copyright holder has to first satisfy the “original work of authorship” and “fixed in a tangible medium” requirements.

Fixation in a tangible medium requires the author to simply create something permanent and dispensable. Recall that the original Constitutional provision mentions “writings.” Our fixation requirement recognizes that a work could only enhance public welfare if the public can share in hearing, reading, or seeing it. “Writings” has been given a very broad definition that has come to include negatives, photographic prints, and CD-ROM disks and DVDs. Fixation doesn’t usually pose many questions in the photography industry.

ORIGINALITY REQUIREMENT

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Our originality requirement is a bit more slippery, even though courts have reiterated that it only calls for independent creation and a minimal degree of originality. Described by courts as the “sine qua non” and “cornerstone of copyright protection,” the originality analysis determines not only what works are protected but also the extent of protection. While the invention of photography was still young, there were serious doubts as to whether the products of a technique that allowed “nature to create her image” and was widely promoted as an incontestable illustration of truth were truly original works of the photographer at all. Indeed, some photography was lovingly referred to as “mere mechanical reproduction of some object” with “no originality of thought or any novelty in the intellectual operation connected with its visible reproduction in shape of a picture” by the very same court that first upheld the applicability of copyright to photography in the landmark case Burrow-Giles Lithographic Co. v. Sarony.

In 1884, the Supreme Court decision Burrow-Giles Lithographic Co. v. Sarony held that photographs fit within the scope of copyright as writings that could exhibit the requisite originality to be entitled to protection. Burrow-Giles v. Sarony involved Sarony’s photo Oscar Wilde No. 18. Ultimately, and without much explanation or guidance, the Burrow-Giles court found this photo capable of protection as a “useful, new, harmonious, characteristic, and graceful picture” as exhibited by “posing, selecting, arranging, lighting, and shading.” Following this decision, it has been generally presumed that any photograph exhibits originality due to the author’s choices regarding composition. But that’s an issue still being sorted out in the courts. The following case demonstrates the lingering thought of courts that some photographs may not exhibit originality.

The Bridgeman Art Library, a British company, brought a copyright infringement action against Corel Corporation based on the inclusion of approximately 120 images of fine art in a series of Corel CD-ROM titles of well-known paintings of European Masters. Bridgeman has exclusive rights in many well-known works of public domain art from museums located around the world. It maintains a library of large format transparencies created by professional photographers of such works as well as a digital library. Bridgeman licenses these transparencies to clients for a fee. Since Bridgeman has exclusive access to many of the works and the only authorized transparencies, it was inferred that the reproductions included in the Corel CD-ROMs were unauthorized copies. Corel claimed that it obtained the images as 35-mm slides from a California company, Off the Wall, Inc. The trial court dismissed the action upon a motion by Corel for summary judgment, meaning that the court found that, as a matter of law, Corel was entitled to judgment without the need for a trial to determine the facts.

The district court held that the large-format transparencies, taken by professional photographers, were not protected by the act since they were not original. Because the transparencies strove to accurately reproduce the underlying works of art without any modification, they could not, in the court’s eye, be original. The court analogized the photographs taken by professionals to that of a photocopy and distinguished from photographs of people, places, and events that were creative and deserving of copyright. The court determined that a photograph that was merely a copy of someone else’s work could not be original despite the change of medium or talent used in taking the image. Although the court relied on UK law, Judge Kaplan of the Southern District of New York concluded that it would reach the same result under U.S. law.

Bridgeman requested that the district court reconsider its decision and provided the court with briefs from leading UK copyright lawyers, which suggested that the court misinterpreted UK law. Under UK law, they argued, the photographs of public domain works would be protected. Further, the court did not recognize that the U.S. Copyright Office had accepted one of the transparencies for registration, indicating that it was sufficiently original to meet their requirements. Having a second opportunity to review the case, the court reaffirmed its prior decision.

The court elaborated on the issue of whether a transparency of a public domain work of art was subject to copyright under U.S. law. The court examined the history of photography as an art form protected by copyright dating back to the 1884 case of Burrows-Giles Lithographic Co. v. Sarony finding photographs fitting into “writings” under U.S. copyright law. Citing Nimmer’s work (a body of treatises that have become the leading authority on copyright law), the court noted two situations in which a photograph should be denied copyright for lack of originality. The situation that the court found persuasive in this case was “where a photograph of a photograph or other printed matter is made that amounts to nothing more than slavish copying.”

Judge Kaplan noted that in order for a photograph of other printed work to be protected by copyright, the case law requires a “distinguishable variation, something beyond technical skill to render the reproduction as original.” Further, the court concluded that a change in medium (such as from a painting to a photograph) is insufficient to find the requisite “distinguishable variation.”

While the court concluded that the overwhelming majority of photographs would have at least a modest amount of originality required for copyright protection, “slavish copying” that only required technical skill would have no spark of originality and would not be protected. Apparently the court did not recognize any creative input regarding the art reproduction transparencies. Holdings like these are mired in the outdated idea of the photographer as merely a technician, akin to someone pressing a button on the photocopy machine. What has been understood as being part of a photographer’s creative process, the selection of lighting, angle, choice of film and camera, were equated with “sweat of the brow”; mere technical skills not amounting to “original.”

Here, the term “original” appears to be misunderstood as requiring originality in the subject matter. This conception is distinguished from one that envisions originality as the “creative eye” of the photographer including choices involving lighting, angle composition, mood, camera, and film as part of the creative endeavor. Even in photography involving art reproduction, the photograph will never look like the painting itself. We could imagine many differences in the way different photographers would light and approach the subject in order to depict it—surely enough difference to distinguish each photographer from someone who simply pushes a button.

While some could argue that the Bridgeman court was way off the mark, decisions like this do raise difficult nuances in copyright law. Since a “better” art reproduction photograph will more closely reflect the colors of a painting, the argument that this style of photography is only a “slavish copy” was clearly easy for the court to accept. Characterizing a photographer’s creative choices behind an image as mere technical skill, no more than a photocopy machine, doesn’t bode well for the art form. If the term “original” had begun to stand for original as to subject rather than original choices of the photographer, many types of photography would have fallen under scrutiny. Taken to an extreme, any photograph of an existing object—an old sneaker, the Sears Tower, the Grand Canyon, or your Aunt Tilly might not be considered original, since another “author” created the underlying work. Equating the experience and skills of a photographer to a photocopy machine that merely records natural objects poses an obvious threat to photography as a protected subject matter. Fortunately, while the Bridgeman holding is often cited to illustrate the need for originality, most courts have implicitly beat a slight retreat from its extreme implications. The trend of courts to regard photography as outside of copyright protection hasn’t taken serious root, and it appears the holding would be very isolated to the facts in Bridgeman.

The Bridgeman case gives us an opportunity to also discuss how the federal court system works. Bridgeman as it exists today, is a “lower court” decision by one federal judge in the Southern District of New York. Federal Courts in the United States are divided into geographic divisions throughout the country. Cases tried at the lowest level, the district court, can be appealed to the Circuit Court. At the Circuit Court level, a three-judge panel will review the lower court decision, ultimately agreeing or disagreeing in a written opinion. The higher court decision is then binding if the same issue is raised again in a district court (the trial level) within that circuit. Only a decision of the Supreme Court of the United States is controlling (or a “precedent”) within all the Federal Circuits. The courts that hear the most copyright cases are the Second Circuit (which includes New York) and the Ninth Circuit (which includes California and Washington State). As such, a decision like Bridgeman isn’t controlling in California, and a Ninth Circuit decision isn’t binding in the Second Circuit. Even in New York, a lower court decision like Bridgeman is not considered precedent and is not required to be followed by another district court. As we look at a decision like this, it’s important (and comforting) to know that its legacy and its attendant shortcomings won’t follow us throughout the country.

Returning to originality, in Ets-Hokin v. Skyy Vodka a Ninth Circuit Court in San Francisco ruled that a photographer’s product shots of stylized vodka bottles merit copyright protection as original works, contrary to a lower court dec...