Ryan McGinnis is a professional photographer who often is infringed. He uses the DMCA Take Down provisions as part of his fight against copyright infringement.

Earlier this year, Ryan sent several DMCA takedown notices for a specific photo of his being used on Blogger blogs.  His notice complied with all provisions, as he used Google’s own web-submission form and included a link to the work on his own website. Surprisingly, Ryan received a form response:

Hello,

Thanks for reaching out to us.

We have received your DMCA complaint regarding http://www.xxxxxxxxxxxxxx.com.html dated 2/7/12. It is unclear to us whether or not you are the authorized copyright agent for the content in question. Only the copyright owner or an authorized representative can file a DMCA Infringement Notice on his/her behalf. Please note that you will be liable for damages (including costs and attorneys’ fees) if you materially misrepresent that a product or activity is infringing your copyrights.

Under U.S. law, copyright in a photograph is generally owned by the photographer, unless the photographer took the photo as part of his responsibilities as an employee (in which case the image belongs to the employer), or the photographer entered into a written agreement to transfer the rights to the photograph to someone else. Therefore, a person who is the subject of a photograph is almost never the owner of the copyright in the image (unless the person has obtained the rights to the image in a written agreement).

If you still believe you are the copyright owner in this case, then please reply to this e-mail with  documentation that confirms you are the rights holder for this content. Otherwise we cannot process your complaint, and you should have the copyright owner file a DMCA notice with us.

Sincerely,
The Blogger Team

Ryan responded that he was unaware of any provision of the DMCA that required him to prove to Google that the image was his. Instead, he swore under penalty of perjury that he was the copyright holder (or his/her authorized representative). He included the copyright registration number for his image in his reply. Google soon replied, stating that Google would remove the content (and did so shortly thereafter).

17 USC 512 (c) requires only that Ryan:

(A) To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.

(iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

(v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

 It doesn’t require him to confirm his submission. So if Ryan had not replied to Google and Google had not taken the infringing material down, Google also may have been liable for the copyright infringement. Hopefully, Google has revised its procedures so that photographers have only one hoop to jump through when sending DMCA Takedown Notices.

After the parties have their Rule 26 meeting as described in the prior post, they may start the discovery process. The purpose of discovery is to learn about the other party’s case. Federal Rule of Civil Procedure 26(b)(1) provides that “Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense—including the existence, description, nature, custody, condition, and location of any documents or other tangible things and the identity and location of persons who know of any discoverable matter.”

The courts allow for a variety of discovery tools. First, federal courts require that the parties serve “Initial Disclosures” to get the process started, usually before or soon after the Scheduling Conference, pursuant to Fed. R. Civ. P. 26 (a):

(i) the name and, if known, the address and telephone number of each individual likely to have discoverable information—along with the subjects of that information—that the disclosing party may use to support its claims or defenses, unless the use would be solely for impeachment;

(ii) a copy—or a description by category and location—of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment;

(iii) a computation of each category of damages claimed by the disclosing party—who must also make available for inspection and copying as under Rule 34 the documents or other evidentiary material, unless privileged or protected from disclosure, on which each computation is based, including materials bearing on the nature and extent of injuries suffered; and

(iv) for inspection and copying as under Rule 34, any insurance agreement under which an insurance business may be liable to satisfy all or part of a possible judgment in the action or to indemnify or reimburse for payments made to satisfy the judgment.

The Initial Disclosures are “served” to the other party but are not filed with the court unless they become an issue in the case. From the Initial Disclosures, the parties can learn more about the case by using other discovery methods, such as:

• Rule 30. Depositions by Oral Examination
• Rule 31. Depositions by Written Questions
• Rule 33. Interrogatories to Parties
• Rule 34. Producing Documents, Electronically Stored Information, and Tangible Things, or Entering onto Land, for Inspection and Other Purposes
• Rule 36. Requests for Admission

These discovery tools will be covered in future blog entries.

From YouTube via www.AllAmericanBlogger.com and BoingBoing.com

Music: Kevin MacLeod http://incompetech.com/m/c/royalty-free/

Way to go, Duane Lester!

Q.  I have been registering my older unpublished images in groups of years. According to the application on eCO, it asks you for the year of completion, even for unpublished shots. Can I register multiple years in one registration of unpublished shots?

I have already registered all of my published shots . . . boy, was that a pain in the neck.

Thanks,
Tony Gillilan

P.S. Is there a way to search form my images on the copyright.gov site? I already found registrations, but no links to photos.

A. First, congrats on getting your published photos registered. Now comes the easy part!

Yes, you can register your unpublished shots that were taken over a period of several years in one registration. The year of completion would be the year that you last took a photo in that group. For example, if you register photos taken in 2003, 2005, and 2006, then 2006 would be the year of completion.

While you may find most registrations online, you can’t view your deposit copies of the registrations there. Instead, you have to request copies of them from the Copyright Office. Circular 6 gives the details. Note that “The Copyright Office does not retain all works deposited for copyright registration.” Therefore, keep good records of what you send for registration!

You may break your photographs into smaller, more manageable groups, from these larger ones. The important thing is to get started!

Registration of a basic claim in an original work of authorship:
Single author, same claimant, one work, not a work made for hire, filed electronically

for $45

or whether group registrations will fall under:

All other claims filed electronically

for $65

If $45, then the new fee will be only $10 more.  If the latter, the new fee will be $30 more — a huge jump!

So I contacted Maria Pallante, the Register of Copyrights, to ask for clarification. She was kind enough to quickly reply, as follows:

“Please comment on both interpretations. Your feedback is very important to the process. Maria”

So please post your comments about the proposed fees on the Copyright Office’s website by May 14. Also, please take the NPPA’s Advocacy Committee’s quick 3-minute survey to give more information about how the proposed changes will affect you.

SPREAD THE WORD ABOUT THIS IMPORTANT POTENTIAL CHANGE!

The Copyright Office is proposing new fees for registering copyright claims, recording documents, and other services. You may submit comments on the proposal until May 14, 2012, before the Office submits the fee schedule to Congress for review. Most significantly for photographers, the Office proposes that the registration fee for a single author (photographer), with the same claimant (copyright owner), of one work that is not a work made for hire and is filed electronically be raised from $35 to $45. More information is available from the Federal Register, which includes a chart at the end with the original and proposed fees.  Post your comments on the Copyright Office’s website.

The World Intellectual Property Organization (WIPO) is the United Nations agency dedicated to the use of intellectual property (patents, copyright, trademarks, designs, etc.) as a means of stimulating innovation and creativity. To increase general understanding of what IP really means, WIPO member states chose April 26 – the day on which the WIPO Convention came into force in 1970 – as World IP Day. Check the events and details about this year’s celebration on the WIPO website or its Facebook page.

. . . there are three fingers pointing back at that someone.

Many website owners/companies will claim that they are not liable for the use of infringing images on their websites because they hired a website design company that posted your image. But they can’t escape liability that easily.

Such was the case in Corbis Corp. v. Starr, N.D. Ohio, Case No. 3:07CV3741 (for which the court granted summary judgment to Corbis on  Sept. 9, 2009).  In that case,  Nick Starr, who owned a business named Master Maintenance  (“Master”), hired West Central Ohio Internet Link, Ltd. (“West Central”) to redesign and host his website. Corbis found four of its images on the Master website without a license and sued both Starr and West Central for copyright infringement. Corbis asserted that jointly and severally willfully infringed Corbis’ copyrights by placing four copyrighted pictures on Master’s website.

The two defendants disagreed as to who supplied the four Corbis images for the website. Regardless, the court held that West Central was directly liable for the infringement because it copied the images to the website. The court explained:

Corbis, furthermore, has proven that West Central copied Corbis’ images by posting them on Master’s website, which West Central redesigned and hosted on its server. See Playboy Enters., Inc. v. Webbworld, 991 F. Supp. 543, 551 (N.D. Tex. 1997) (finding the unauthorized reproduction of images on a computer server to violate plaintiff’s copyright); Nimmer, 3 Nimmer on Copyright § 8.08 [A][5][a], 8-131-32 (2008) (“[T]he input of a work into a computer results in the making of a copy, and hence, that unauthorized input infringes the copyright owner’s reproduction right.”) (Nimmer).

The court also found Starr/Master vicariously liable for the infringement. To establish vicarious liability for copyright infringement, a plaintiff must prove that the defendant received a financial benefit from the direct infringement and had the right and ability to stop or limit the infringement but failed to do so. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1173 (9th Cir. 2007); Nimmer, supra, § 12.04[2] (2009) (“defendant must have the right and ability to supervise the infringing conduct and secondly, the defendant must have an obvious and direct financial interest in the exploitation of copyrighted materials.”). Based on this law, the court stated that Starr/Master also was liable:

Master used the copyrighted images for financial gain. Master redesigned its website for marketing purposes, to highlight its industrial cleaning business and attract new customers. Three of the four misappropriated images depicted janitorial and cleaning services. The use of copyrighted images to help draw customers can constitute a financial benefit. See Perfect 10, Inc. v. Google, Inc., 416 F. Supp. 2d 828, 857 (C.D. Cal. 2006) (holding that even absent revenue, future hope of financial benefit constitutes a direct financial interest) rev’d on other ground, Perfect 10, Inc., supra, 508 F.3d at 1175 n. 15 (“Having so concluded, we need not reach Perfect 10′s argument that Google received a direct financial benefit.”).

Master had the right and ability to stop or limit the copyright infringement and failed to do so. Master employees, Riepenhoff in particular, were responsible for approving changes to the site, including the placement of images. Even if Master did not supply the images at issue, it had the authority to approve or reject their use.

In sum, a company is not off the hook just because its website designer put your photo on the company’s website. Instead, be sure to hold all responsible parties liable for the infringement.