Dealing with a Day Ruiner: Image Infringement Claims

Over the last few years, I have seen a noticeable uptick in the number of demand letters from photographers or organizations representing photographers’ interests. Usually, the allegation is that someone at the institution – a student intern, a faculty member, an administrator – posted an image somewhere in the vast reaches of the institution’s website without obtaining or complying with a license. I am sure this happens from time to time in most organizations with websites that are not tightly controlled, though my sense is that intentional infringement in these cases is rare. Lots of people think that images on the internet are free to use, that detection in their small corner of the web is unlikely, and that they aren’t causing any harm by reposting an image. They generally are not correct about at least the first two points; the third is arguable.

 Some demand letters come from photographers genuinely and understandably interested in protecting their copyrightable material; others come from people or organizations who have set a lucrative trap: They post an image on a hosting service, one among dozens of other, seemingly freely usable pictures. An unsophisticated user isn’t likely to notice that, though there is no charge for use of the image, it is subject to a license that requires they give credit to the photographer in connection with each separate use. The license may even be tough to find unless one knows where to go looking for it.

Below is a list of questions I work through when I receive this kind of demand, but the list comes with a big asterisk: although these demands can inspire indignation and digging in of heels, it might not be worth counsel’s time to spend a great deal of time on them. The amounts demanded will usually be far more than your clients would have agreed to pay if the fee had been presented upfront, but they are generally not large amounts in the grand scheme of things. That is by design, of course. You may need to have a direct conversation with your clients about whether the amount demanded is worth taking you away from other, higher impact work.

1)     Is it your website?

Find out whether the website is registered to your institution. If it is registered instead to an employee, a student group, or another organization, the institution is probably not legally responsible for use of the image. For the sake of politeness, you may want to provide the responsible party with a heads up and a couple of pointers before redirecting the photographer. But if the institution is not responsible for the site, at least that removes a deep pocket, and the responsible party may have an easier time negotiating a lower settlement amount.

2)     Does your website link to the image or has the image been embedded on your website?

When a website only links to an image on another site, it does not make a copy of the image – it is more like a mirror than a photocopier. If the linked site did not have a license or did not comply with its license, the photographer will need to take it up with that site’s owner.

3)     Do you have a license?

Check with the unit responsible for posting the image, as well as any central departments that may have purchased licenses to image libraries (e.g., marketing or procurement). If there is a license, whether one the unit intentionally entered into or one that was posted with the image, check the terms to see whether the use was actually permitted. Did you comply, even if accidentally (e.g., if it required attribution, did you attribute the image to the photographer)?

4)     Who put the image up on the website?

Paraphrasing slightly, section 512(e) of the Copyright Act says that when a university is acting as an online service provider[1] and it is a faculty member or graduate student employed by the university and performing a research or teaching function that posts infringing material, the infringement won’t be attributed to the university if (A) the infringing act did not involve providing online access to instructional material, (B) the university hasn’t received notice of the faculty member or graduate student infringing more than two times in the preceding three years, and (C) the university has a policy promoting compliance with the Copyright Act.

If the above is your situation, then, you may be able to treat the demand letter like a take-down notice under DMCA: simply carry out the university’s DMCA takedown process and the university has carried out its obligations to the copyright holder. Because this safe harbor disappears if the same faculty member or graduate student repeatedly posts infringing material, training is advisable.

5)     Did the person who posted the image know that the use was infringing? What about fair use?

The matter isn’t put to rest because the person who posted the image did not believe the use was infringing, but it is helpful. Knowing infringement carries higher potential damages in a lawsuit. However, if the person had a reasonable basis for believing their use was a fair use and/or did not have reason to believe that use of the image constituted infringement (perhaps because of the context in which they found the image), zero or nominal statutory damages would be available to the photographer in a suit.[2] The more compelling evidence you have of the innocence of the infringement, the better your chance at negotiating a lower settlement.  

6)     Does the photographer hold the copyright in the photograph? Was it registered with the U.S. Copyright Office?

You can and should request proof of copyright ownership before settling a demand. Insist. If they provide proof the image has been registered with the U.S. Copyright Office, take a look at the date on which it was registered. I have seen copyright trolls register a copyright just before sending a demand letter, but years or months after publication of the subject image. Section 412 of the Copyright Act takes statutory damages and attorney’s fees off of the table if the infringement took place before registration and the copyright holder failed to register the image within three months of first publication. The copyright holder may still have an infringement claim, but without statutory damages and attorney’s fees, the upside of filing suit is much smaller.

Whether you go through one or all of the questions above, you may want to take the image down while you do so. This helps you if it turns out to be resolvable as a DMCA take-down and shows good faith in other cases. Also, no matter how you address the demand letter, it is a great jumping off point for training. Consider meeting with departments that provide content for the website regularly, like your public relations department. Your dean of students office may also be grateful for help developing training for both student-facing staff and student organization leaders.

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[1] Per Section 512(k)(1)(B) of the Copyright Act, a service provider in this context is a “provider of online services or network access, or the operator of facilities therefor”

[2] Under Section 504(c) of the Copyright Act, where an infringer had no reason to believe that their acts constituted infringement, statutory damages may be reduced to $200. Further, in the case of nonprofit educational institutions, a court would remit statutory damages altogether where there was a reasonable basis for fair use (though this may only refer to reproduction).