Court Clarifies Copyright Issues of Online Photo Posting

February 19, 2013 | Professional Liability | Complex Torts & Product Liability | Intellectual Property

Various social media tools, from TwitPic and Instagram to Flickr and Pheed, enable ? indeed, encourage ? users to post their photos online.[1]  Posting a “real time” image from the Mideast, a political event, the Super Bowl, or a snowstorm can be informative and even exhilarating for both the poster and the viewer.  However, there is also a valuable commercial market for the licensing of such topical images that stands in stark contrast to the “free to all” frenzy of social media. These two competing interests were recently explored in a decision by Southern District Judge Alison J. Nathan in Agence France Presse v. Morel.[2]  The decision addresses the intersection of federal copyright law and online contractual terms as they apply to the online posting of photos as well as the continued business interest of photographers in images that they make available in social media. It is particularly interesting in the context of social media applications such as Twitter, whose core functionality depends on redistribution of materials that have been posted by others.

Background

The case concerns certain photographs taken by photojournalist Daniel Morel, who was in Haiti during the destructive earthquake there on January 12, 2010.  Using TwitPic, Mr. Morel posted the photographs he took of the devastation that occurred and its aftermath to his Twitter account.  According to Mr. Morel, his photos then were reposted to the Twitter account of Lisandro Suero, who tweeted that he had exclusive photographs of the earthquakes.  

At issue was the conduct of Getty Images, Inc. (“Getty”) and Agence France Presse (“AFP”), two large “stock photo” agencies, that together control one of the largest collections of images in the world, which they license for use by others on either an individual image or subscriber basis. AFP’s photo desk “picked up” the photos from Mr. Suero’s tweet and then forwarded them, credited to Mr. Suero, to Getty under their reciprocal license agreement. Both agencies made the photos available in their online “customer facing” photo image catalogue.  Shortly thereafter, AFP issued a “caption correction” that credited Mr. Morel for the photos and then it issued a “Kill Notice” requesting that its customers, including Getty and Getty’s customers, remove the pictures from their systems.  However, neither the “caption correction” nor the “Kill Notice” expressly related to the Suero credited photographs, nor were the Suero credited photographs removed from their customer facing webpage. Thus, while there is discrepancy in the record, it appears that the Suero credited photographs remained available for some period of time, perhaps several months. Notably, during the relevant time period, Mr. Morel had an exclusive agreement to license his photographs for all commercial purposes with a stock photo agency other than AFP or Getty.

AFP subsequently sued Mr. Morel, seeking a declaration that it had not infringed his copyrights in the photographs and alleging commercial defamation. In response, Mr. Morel filed counterclaims against AFP, Getty, and the Washington Post, which had published four of the photos, three credited to Mr. Suero and one to Mr. Morel, asserting that they had willfully infringed his copyrights, and that AFP and Getty were secondarily liable for the infringement of others and had violated the Digital Millennium Copyright Act (“DMCA”).[3] The parties filed cross-motions for summary judgment regarding liability on the copyright and DMCA claims and regarding certain damages issues, which the court decided in its Agence France Presse ruling.

License Defense

At the outset, there was no dispute that Mr. Morel held a valid copyright in the photos that he had tweeted.  The court therefore focused first on whether AFP, Getty, and the Washington Post had infringed Mr. Morel’s exclusive rights of reproduction, public display, and distribution.[4]  It was contended that by posting his photos on Twitter through TwitPic, Mr. Morel agreed to be bound by Twitter’s Terms of Service (“Twitter TOS”) governing content posted to those websites, and that, under the Twitter TOS, they received a license to redistribute the photographs.  Therefore, they asserted, they had not improperly infringed Mr. Morel’s copyright in the photos.

The court acknowledged that a license could be an affirmative defense to a copyright claim, but found that the Twitter TOS in effect when Mr. Morel posted his photos did not provide a license to AFP to strip Mr. Morel’s photos from Twitter and license them to third parties. Although some re-uses of content posted on Twitter and TwitPic were permissible (e.g., re-tweeting), the court rejected the idea that the Twitter TOS provided an “unrestrained, third-party license to remove content from Twitter and commercially license that content” as to do so would be a “gross expansion” of the terms of the TOS. Indeed, the Twitter TOS expressly stated that users retained their intellectual property rights to the content they posted ? with the exception of the license granted to Twitter and its partners ? rebutting AFP’s claim that Twitter intended to confer a license on AFP to sell Mr. Morel’s photographs, according to the court.

The court also rejected AFP’s claim that it was a third party beneficiary to the Twitter TOS, despite Twitter’s express encouragement of the use of tweets in broadcasting and other media.  To the contrary, it noted, Twitter’s Guidelines for Third Party Use of Tweets in Broadcast or Other Offline Media explained that content should not be disassociated from the Tweets in which they occurred, including attribution.  Thus, the court rejected the argument that the Twitter TOS was intended to confer a benefit on non-partner entities to remove content from Twitter and commercially distribute it.

Therefore, the court held, because the license defense failed, AFP and Getty were liable for direct infringement of Mr. Morel’s copyright in the photos.

DMCA Safe Harbor

For its part, Getty claimed that it could not be held liable because it was entitled to the benefit of “safe harbor” under Title II of the DMCA, known as the “Online Copyright Infringement Liability Limitation Act” (“OCILLA”), which limits service provider liability for transmission of potentially infringing content provided by others.[5]

In order to obtain the benefit of this safe harbor, Getty had to demonstrate that it was a “service provider,” defined in pertinent part as “a provider of online services or network access, or the operator of facilities therefor.”[6]  In the court’s view, a “service provider” under OCILLA was an entity that, in broad terms, facilitated, supported, or enabled online access or the activities of users of the Internet.

The court then found an issue of fact regarding whether Getty qualified as a service provider. Getty’s argument was that, in essence, it merely provided a file hosting service for AFP’s images ? i.e., it provided a system on which AFP’s images were posted and distributed to customers ? and thus could not be held liable for any infringement of those images that occurred because the images were obtained from its system. However, the court noted that evidence presented by Mr. Morel suggested that the agreement between AFP and Getty granted Getty rights to itself license the images that AFP provided, with a payment of royalties to AFP. In the court’s view, this suggested that Getty acted not as a passive host or online facilitator of access to AFP’s images, but rather as a licensor of its own rights. Accordingly, the court found that summary judgment was not warranted on this issue, although Getty will have the opportunity to demonstrate that it is a service provider entitled to rely on the DMCA’s safe harbor in later proceedings.

Damages

The court also examined the parties’ positions with respect to potential statutory damages under the Copyright Act[7] and the DMCA[8] ? a significant practical issue because Mr. Morel claimed that Getty and AFP were liable for not just a single statutory damages award for each work infringed, but rather a separate award of statutory damages for each distinct subscriber with whom they were jointly and severally liable ? potentially totaling tens or hundreds of millions of dollars.

With respect to the Copyright Law’s provision for statutory damages, the court decided that the statute favored the interpretation espoused by Getty and AFP rather than Mr. Morel’s interpretation, adding that Mr. Morel’s proposed interpretation would “lead to absurd results” with awards of statutory damages being massively disproportionate when compared to the actual harm caused by infringers.  Thus, it concluded, any awards of statutory damages against AFP or Getty could not be multiplied based on the number of infringers with whom AFP or Getty was jointly and severally liable but that AFP and Getty were, at most, each liable for a single statutory damages award per work infringed.

Mr. Morel also contended that, with respect to the provision of the DMCA that provided for statutory damages in the amount of “not less than $2,500 or more than $25,000” for “each violation of section 1202,” he was entitled to recover a separate award of statutory damages for each distribution of his photos. In other words, Mr. Morel sought a separate award for each entity that downloaded or received his photos from AFP or Getty with false copyright management information (“CMI”), amounting ? “at a minimum,” by Mr. Morel’s calculations ? to almost $44,500,000. The court rejected this argument, too, holding that damages should be assessed per violation ? i.e., based on AFP and Getty’s actions in uploading or distributing the photos regardless of the number of recipients of these images.

Conclusion

In summary, the court granted summary judgment in favor of Mr. Morel, ruling that AFP and the Washington Post were liable for copyright infringement as to Mr. Morel’s photos, but it rejected Mr. Morel’s arguments regarding the scope of statutory damages available to him under the Copyright Act and the DMCA.  The case is noteworthy for its practical resolution of various social media quandaries that can arise. Chief among them is the question of to what extent an individual endangers his or her right to commercial exploitation of his or her content by making it widely available on social media.  It likewise addresses the potential for exponentially increased damage awards for infringement because social media, by its very nature, is broadly available to so many users. Businesses that access or repost materials of others on their own website or for clients or others should be firmly aware of the applicable provisions of the Copyright Law and the DMCA, as well as their limitations and the differences between a permissible “re-tweet” and an impermissible copyright infringement.



[2] 10 Civ. 02730 (AJN) (S.D.N.Y. Jan. 14, 2013).

[3] 17 U.S.C. § 101 et. seq.

[4] See 17 U.S.C. § 106.

[5] 17 U.S.C. § 512(c)(1).

[6] 17 U.S.C. § 512(k)(1)(B).

[7] 17 U.S.C. § 504(c).

[8] 17 U.S.C. § 1203(c)(3)(B).

Reprinted with permission from the February 18, 2013 issue of the New York Law Journal.  All rights reserved.

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