As you know, the Copyright Act is a Federal statute which preempts state law claims that fall under its provisions. In other words, one cannot sue for a claim under a different theory if it in fact constitutes simply a claim for copyright infringement.
A recent case had an occasion to revisit this principle. The case, Coles v. Wu-Tang Productions, Inc., brought in the Supreme Court of the State of New York, New York County, involved a songwriter who sued for a share of revenue generated by distribution of his music.
The complaint alleged causes of action for breach of contract, unjust enrichment (defendant obtaining a benefit without proper compensation being made to plaintiff), breach of fiduciary duty, and failure to provide an accounting. The defenses raised included that the claims were preempted by the Copyright Act.
The Court, on a motion to dismiss, permitted all the claims to proceed except for unjust enrichment, which was found to be preempted. The Court explained that since unjust enrichment claims are not qualitatively different from a copyright infringement claim, unjust enrichment cannot stand separate and apart from infringement.
UNJUST ENRICHMENT CLAIMS
The Court further explained that a state law claim is allowable if it includes any extra elements that make it quantitatively different from a copyright infringement action. Unjust enrichment claims have consistently been held not to have any of these extra elements. Accordingly, those claims were dismissed by the Court.
USE WITHOUT PAYMENT
Although this case involved music and not photography, the principle of law is the same and affects photographers in the same way. Breach of contract claims can be brought along with copyright infringement claims arising out of the same facts and circumstances, where there are additional elements. One example would be where a fee for an assignment was not paid, but the infringement claim was for uses beyond the scope of the license granted. This is permitted since the initial fee would not be part of the infringement claim and would therefore constitute a separate and distinct element. On the other hand, the contract claim would be preempted if the infringement was for use of the image without payment.
AttorneyJoel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com.
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Court Dismisses Copyright Infringement Claim for Lack of Registration
The Copyright Act expressly states that a copyright owner may not commence a lawsuit for copyright infringement until the underlying work is registered with the Copyright Office or such registration is refused. A recent decision in the U.S. District Court for the Southern District of New York recently expounded on this subject.
The case, Greene v. Columbia Records/Sony Music Entertainment, Inc., involved allegations of infringement in the music industry, but the rulings apply equally as well to photography.
The plaintiff, James Anthony Greene, who represented himself and did not have an attorney, brought an action for copyright infringement, alleging that the defendant used his original music composition in an album without his authorization and without payment.
After resolution of various procedural issues, Columbia Records moved to dismiss the complaint because the plaintiff had failed to register, or even allege that he had registered, his copyright with the Copyright Office. The Court granted the plaintiff time to amend his complaint to allege the necessary elements of registration, without which the Court does not have jurisdiction to hear the case.
Plaintiff did file an amended complaint but only alleged that he had initiated the process - that he had filed the application and paid the fee. He failed to allege that the Copyright Office had acted on his application. By the time the Court heard the motion to dismiss, more months had passed and plaintiff still had not indicated whether the Copyright Office had taken any action.
The Court did acknowledge that there are other cases which hold that the mere filing of an application is sufficient for the Court to obtain jurisdiction because the Court eventually has such jurisdiction whether the Copyright Office accepts or rejects the application. The Court, however, declined to follow that approach. In discussing the law, it held that since the statutory language requires the Copyright Office to act on an application and not just receive it, the better reading of the statute was to require registration or a refusal to register in order for the Court to maintain jurisdiction to hear the case.
The Court, therefore, dismissed the complaint without prejudice. This means that the plaintiff can sue again once he has gotten, or been refused, a certificate of registration.
What are the lessons of the case? First, carefully check all statutory requirements before suing, and make sure you comply. Second, if the Judge (or anyone else) gives you a roadmap (i.e. he tells you why the original complaint was deficient), make sure you follow it!
Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com .
Business
Notepad
MEETING PLACE
-- Interactive Flickr Now for everyone. Yahoo has finished a redesign of its Flickr home page that emphasizes the photo-sharing site's social aspects. The new home page shows off more of a user's own photos and more from the user's contacts, and it surfaces social activity such as comments on the user's photos, replies to comments the user made on others' photos, and new photos posted to the user's ... Full
Story
Program maintains it's easy to earn extra
funds by establishing a photo business out of your home and
photographing local businesses, corporations, churches, schools,
sports teams, and families in your community.
Does this symbol need to be displayed on all your photos for you to be protected? In other words, if someone uses a photo without the permission of the photographer, but the photo does not contain a copyright notice, is that person still guilty of infringing?
The answer is yes. Someone who uses a photo they see in a publication, without getting the photographer's permission (let alone paying him or her), is violating copyright, whether or not there's a copyright notice on the photo. Under current law, photos are protected by copyright whether or not the photographer puts a copyright notice on them. However, the fact that a photo does not have a copyright notice on it may result in a lower damages award, under copyright law's "innocent infringer" defense.
CUSTOM AND USAGE RULED NOT A DEFENSE TO COPYRIGHT INFRINGEMENT
by Joel Hecker, Esq.
Advance Notes: For photobuyers: Publication of photographs in magazines or elsewhere without the prior consent of the copyright owner, which use is then followed by a "proposed" contract or license containing terms unacceptable to the photographer, will not, under most guidelines, be a successful defense to copyright infringement.
It is surely not a good sign for a defendant accused of copyright infringement when the Federal District Court, in evaluating a defense that "everybody does it" and that use without consent is the prevailing custom and usage of the trade, makes a factual finding that the defendant "deliberately sailed in harm's way."
That is the predicament Similar Entertainment, Inc. found itself in after Judge Kaplan in the Southern District Court in New York issued an injunction back in March of 1999 against them for copyright infringement, and in favor of Cherry River Music Co.
The case involved the creation and distribution of a Compact Disc of musical themes of popular WWF wrestlers, called Slammin' Wrestling Hits, without obtaining the appropriate copyright permissions.
The impact of the decision is applicable to photography as well.
The defendant apparently believed they had completed the necessary requirements to obtain a compulsory license which permits use of musical compositions through payment of a license fee.
However, after the defendant knew, or reasonably should have known, that such a license had actually not been obtained, the defendant still failed to apply for it. Then, after the copyright owner commenced the copyright infringement action, the defendant delayed a hearing on the injunction application while continuing to manufacture and distribute the goods in an obvious attempt to circumvent any prohibition on such distribution.
The defendant argued that music companies [read publishers of photographs!] routinely, as part of custom and usage in the industry, publish music before obtaining such licenses. The Court ruled otherwise, holding there were no prior dealings between the parties which might establish such a practice, and that the defendant failed to meet the test of establishing such a custom which includes "numerous purchases over a period of time."
The Court issued an injunction and ordered a modified recall of the CD's shipped, at considerable expense to the defendant.
Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600.
Of
Interest
Re-publication Permits Privacy Suit to Proceed
Although the language of each state statute may vary, the use of a
person’s name, portrait or picture in a photograph cannot be used for
advertising, commercial or trade purposes, without the person’s written
consent.
This is called the Right to Privacy. The time to bring a lawsuit for
invasion of the Right to Privacy is one year from the first publication
in New York and most other states, but is subject to what is called the
single publication rule. Under this rule, the statute of limitations
begins to run on the date the material at issue is first published or
used. Accordingly, subsequent distributions or uses of the images does
not constitute a separate publication or continuing wrong which would
extend to the date the initial claim accrued.
The purpose of this rule is to avoid an endless tolling of the
limitations statute. For example, a distribution of a work to a library
would be the initial date for statute of limitations purposes, and that
initial date would not be extended each time the ... Full
Story
COST OF TRAVEL OVERSEAS is always prohibitive for the stock photographer
just starting out. One way to skirt around this problem is to become a
Travel Agent.
HOW DO THEY DO IT? Yuri Arcurs - Microstock Entrepreneur - Not content with an
annual microstock income of US$1.3 million and being the top selling microstock photographer, Yuri Arcurs is creating a microstock empire. Here's a summary of his new entrepreneurial activities.
http://www.microstockdiaries.com/meet-the-new-yuri-arcurs-microstock-entrepreneur.html
WHO SAID PHOTOGRAPHERS CAN’T WRITE? History in the Buffer - David Burnett, photojournalist, wrote this piece about his experience "in the buffer" covering the election night in Chicago. A remarkable diary of his election night experience.
http://werejustsayin.blogspot.com/2008/11/history-in-buffer.html
TAKEAWAY: When TIME Magazine made “the computer” the Man of the Year, they sent David Burnett to Pine Lake Farm to photograph me and my new Radio Shack TRS-80 Model II. You can see the picture TIME used at:
http://www.photosource.com/rohntime
