Imagine you are the client in advertising, mainly real estate advertising, who called me the other day. She said, “I have photographs of apartment complexes around town that I used in creating apartment rental advertising for a print publication I previously did work for. The images have a “© 2001 Print Publisher” notice on them. The print publisher is out of business, but I still have the photos. My current client is also in real estate advertising, but it does advertising on the Internet, not in a printed publication. Can I use the photographs, writing new copy of course, for the ads that I’m creating for the Internet publisher or do I have to hire a photographer to take pictures of the same apartment complexes?”

To answer that simple question–Can you use the photographs?–requires answers to numerous questions. Who was the photographer? When were the photographs taken? Was the photographer an employee of the publisher? Was the photographer an independent contractor who had a contract with the publisher? If he had a contract, what did the contract provide about future use? Were the photos to be used one time, for one publication? Did the photographer retain copyright ownership or did he assign it to the publisher? When the publisher went out of business, what happened to its assets? Did it sell the business along with the goodwill and any intellectual property rights it owned? Did the publisher go bankrupt and were its assets sold in the Bankruptcy Court? How did you come into possession of the photographs? Since you were an independent contractor when you did work for the print publisher, were you given permission to use the photographs for purposes other than the printed publisher’s business?

Your seemingly simple question spawns a host of related questions, the answers to which determine whether you can use the photographs. Why? Because of copyright laws–modern law based on ancient law–that has been written, rewritten and modernized over the years in an attempt to keep up with technology.

What is copyright? Merriam-Webster’s Online Dictionary defines it as a noun (the exclusive legal right to reproduce, publish, and sell the matter and form (as of a literary, musical, or artistic work)), a transitive verb (to secure a copyright on) and an adjective (secured by copyright).

If you go to a popular Web search site titled “Ask Jeeves,” you’ll get the following quick definitions: Noun: a document granting exclusive right to publish and sell literary or musical or artistic work. Verb: secure a copyright on a written work.

While these definitions are not wrong, neither are they complete. A brief history of the law of copyright provides some insight.

A Brief History of Copyright Law

Copyright can be traced back to Fourth Century Ireland when a renegade priest copied a wealthy man’s book of Psalms by hand, and then gave copies out for free to local churches. The wealthy man took the priest to court, which in Fourth Century Ireland meant King Diarmit’s Royal Court. The King is said to have decreed “to every cow its calf, to every book its copy,” and fined the priest 40 head of cattle for making an unauthorized copy. However, the wealthy man did not write the book of Psalms; he just owned it. The issue that was decided was not so much about the rights of authors and publishers as it was about the control of the flow of information.

Jumping ahead a thousand years, in the 15th Century, the printing press was introduced in England. Printers had a monopoly and what was published was controlled by the Crown. In 1710, a new statute was passed by Parliament which formed the basis of modern copyright. The Statute of Anne was revolutionary because it gave rights to the author in the intangible work, rather than the physical books produced by the printers. The Statute established the principles of authors’ ownership of copyright and a fixed term of protection of copyrighted works (14 years, renewable for 14 more if the author was alive upon expiration). The Statute prevented a monopoly on the part of the book sellers and created a “public domain” for literature by limiting terms of copyright and by ensuring that, once a work was purchased, the copyright owner no longer had control over its use. Although the Statute did provide for an author’s copyright, the benefit was minimal because in order to be paid for a work, an author had to assign the copyright to a bookseller or publisher.¹

In the United States, copyright law was written into the U.S. Constitution in 1787 by providing in Article I, Section 8, Clause 8, “The Congress shall have power…to promote the progress of science and useful arts, by securing for limited times to authors…the exclusive right to their respective writings….” The First Congress implemented the copyright provision of the Constitution in 1790. The Copyright Act of 1790, entitled “An Act for the Encouragement of Learning, by Securing the Copies of Maps, Charts, Books to the Authors and Proprietors of Such Copies,” was modeled after the Statute of Anne. It granted American authors the right to print, reprint or publish their work for a period of 14 years and renew for another 14 years. The law was meant to provide an incentive to authors and artists to create original works by providing creators with a monopoly. At the same time, the monopoly was limited in order to stimulate creativity through wide public access to works in the “public domain.” Major revisions to the Act were implemented in 1831, 1870, 1909 and 1976.

Section 106 of the 1976 Copyright Act generally gives the owner of a copyright the exclusive right to do and to authorize others to do the following:

• To reproduce the work in copies;
• To prepare derivative works based upon the work (e.g., a book made into a movie);
• To distribute copies of the work to the public by sale or other transfer of ownership, or by rental, lease or lending;
• To perform the work publicly, in the case of literary, musical, dramatic or choreographic works, pantomimes and motion pictures and other audio visual works;
• To display the copyrighted work publicly, in the case of literary, musical, dramatic and choreographic works; pantomimes; and pictorial graphics or sculptural works, including the individual images of a motion picture or other audio visual works; and
• In the case of sound recordings, to perform the work publicly by means of a digital audio transmission.²

Violation of any one of these rights is called “copyright infringement.”

At the same time copyright law was developing in the United States, international law was developing. The Berne Convention, adopted in Switzerland in 1886, first established the recognition of copyrights between sovereign nations. The United States long refused to become a party to the Convention since it would have required major changes in its own copyright law. However, the United States later made the necessary changes and became a party to the Berne Convention in 1988.

Copyright under the Berne Convention is automatic–no registration is required–nor is the inclusion of a copyright notice, the familiar © followed by the date of first publication, followed by the copyright owner’s name. The Berne Convention provides for a minimum term of copyright protection for the life of the author plus 50 years, but parties are free to provide longer terms of copyright protection, as the United States did with the Sonny Bono Copyright Term Extension Act of 1998. That law extended protection from life of the author plus 50 years, to life of the author plus 70 years (keeping Mickey Mouse from entering the public domain).

In 1998, President Clinton signed the Digital Millennium Copyright Act (DMCA). The law’s five titles implemented the World Intellectual Property Organization Internet treaties; established safe harbors for online service providers; permitted temporary copies of programs during computer maintenance; and made miscellaneous amendments to the Copyright Act, including amendments which facilitated Internet broadcasting. One of the most controversial provisions of the DMCA is Section 1201, which prohibits unauthorized access to a work by circumventing a technology protection measure put in place by the copyright owner to control access and copying of the copyrighted work.

In 1999, Congress approved a significant hike in the minimum statutory damages for copyright infringement in the Digital Theft Deterrence and Copyright Damages Improvement Act of 1999. The law increased the minimum statutory damages for infringement from $500 to $750 and increased the maximum from $20,000 to $30,000. The maximum for willful infringement increased from $100,000 to $150,000.³

“Thanks for the History Lesson, But Can I Use the Photos?”

I was just coming to that. Let’s look at it historically.

Applying the law of the Irish king’s court of the Fourth Century, if you own the photographs, you control the right to make copies. You have told me that you do not own the photographs, you just have possession of them. Therefore, you have no more right to copy the photographs than the renegade priest did. So, the answer is “no.” By the way, do you have 40 head of cattle to pay the fine?

Under the Statute of Anne of 1710 in England, the author–in this case the photographer–would own the copyright. However, the author had to assign his copyright to a bookseller or publisher to be paid for his work; therefore, the answer is still “no.” The print publisher owns the copyright and you cannot copy the photos without violating the print publisher’s copyright.

Under the Copyright Act of 1790 in the United States, photographs would not be copyrightable. The Act only applied to books, maps and charts. It was not until the revisions that took place during years 1802 to 1870 that the statute was revised to include prints, musical compositions, dramatic compositions, including public performance rights, photographs, paintings, drawings and sculptures. So the age of the photographs is relevant to whether you can use them.

Under the 1909 revision of the U.S. Copyright Act, if a photograph was published without a copyright notice (the familiar ©), the copyright owner lost copyright and the photograph would be “dedicated to the public domain,” another way of saying free for all to use and copy. But even under the 1909 Act, which controlled until 1976, the “dedicated to the public domain” analysis wouldn’t work because you’ve told me that the photographs bear a copyright notice claiming the print publisher is the owner. So, the answer is still “no.”

But what if the photograph didn’t bear any copyright notice? Well, under the 1976 revision of the U.S. Copyright Act, in anticipation of the U.S. joining the Berne Convention, amendments were made to bring U.S. law into accord with international copyright law, practices and policies. The 1976 Act preempted all previous copyright law. Under this revision, if a photograph was published without a copyright notice, the photo would not automatically be dedicated to the public domain. Rather, if the owner of the copyright could prove that the omission of the notice was inadvertent and that efforts had been made to obtain and mark the copies that had been distributed, the copyright would be saved.

Today, the omission of a copyright notice is no longer relevant at all. In 1988, the U.S. joined the Berne Convention which, among other things, eliminated the requirement of copyright notice for copyright protection. So, even if the photo, the text, the record, tape, video or CD does not have a copyright notice, you have to assume that the work is copyrighted and that it may not be copied, reproduced or reprinted.

Who Owns the Copyright?

Initially, the copyright vests in the creator, that is, the author, musician, architect, etc. But the copyright is a property right, and just as a piece of land can be bought, sold, leased and transferred, by will or by operation of law, so can a copyright. Only the author, or those deriving rights through the author, can rightfully claim copyright. Rights can be assigned or just licensed by the copyright owner.

What is a Work Made for Hire?

The copyright law defines a “work made for hire” as a work prepared by an employee within the scope of his or her employment or a work specially ordered or commissioned for use as:

• A contribution to a collective work
• A part of a motion picture or other audio visual work
• A translation
• A supplementary work
• A compilation
• An instructional text
• A test
• Answer material for a test
• An atlas

However, in the case of a work specially ordered or commissioned for use as one of the above-mentioned purposes, the parties must still expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. A common misconception is that anything created by an independent contractor can be a work made for hire if the independent contractor has agreed it will be treated as a work made for hire. This is not necessarily the case. If the work does not fall into one of the nine above-mentioned categories, it cannot, by definition, be a work made for hire. In the case of works falling outside the nine categories, an assignment is required for copyright ownership to transfer from the author.

What if the Copyright Owner Didn’t Register the Copyright?

Registration is not a requirement for copyright protection. However, registration affords several benefits to the copyright owner:

• Registration establishes a public record of the copyright claim.
• For U.S. works, registration is necessary before an infringement suit may be filed in court (not so with respect to foreign works of authors where the work was first published in a country of a Berne Convention member).
• If made within five years of publication, registration establishes prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
• Probably most importantly, if registration is made within three months after first publication of the work or prior to an infringement of the work, statutory damages and attorneys’ fees may be awarded to the copyright owner in court actions. Otherwise, only an award of actual damages and the infringer’s profits can be awarded to the copyright owner.
• Registration allows the owner of the copyright to record the registration with the U.S. Customs Service for protection against the importation of infringing copies.⁴

What is “Fair Use”?

“Fair Use” is a defense to an allegation of copyright infringement. The defense of fair use can be asserted when a copy of a protected work is made “for purposes of criticism, comment, news reporting, teaching, scholarship or research.” In determining whether a use is a fair use, the court will look at the purpose and character of the use, including the purpose for which it is used (i.e., commercial or nonprofit, educational purposes), the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the copyrighted work as a whole and the effect of the use upon the potential market for or value of the copyrighted work. As a very simplified rule of thumb, if you will be using the work for a commercial purpose (for example, using the photos in an advertisement), or your copying is done to save money (for example, not paying a photographer to take another photograph), your use is most likely not a fair use.

What If You Don’t Get an Assignment or a License and Use the Photographs Anyway?

Although there are some criminal provisions for copyright infringement, the vast majority of cases involve civil liability. Once infringement is proven, the copyright owner may elect between “statutory damages” or the copyright owner’s actual damages and the defendant’s profits attributable to the infringement. Statutory damages are damages in an amount between $750 and $30,000, “as the court considers just,” and are only available if the infringement occurred after the copyright was registered, in the case of U.S. works, or within three months of the date of first publication.

Actual damages are the actual damages suffered by the plaintiff copyright owner as a result of the infringement. In the case of photographs, actual damages could be based upon a benchmark (for example, what the photographer could have sold rights to the photograph for, based on past experience), or “going rate” benchmarks such as those available from PhotoQuote. In addition, the copyright owner can also be awarded the defendant’s profits attributable to the infringement. In proving a defendant’s profits, the copyright owner need only present evidence of the defendant’s gross receipts from all activities related to the infringement. So, for example, if a photograph is used on a coffee mug, the copyright owner could claim all profits from sales of the coffee mug. There is a statutory presumption that an infringer’s revenues are attributable to the infringement. The copyright owner need only prove all of the defendant’s gross revenues; the defendant must then prove all deductible expenses (e.g., the cost of the mug itself) and elements of profit attributable to noninfringing factors (e.g., extensive advertising of the coffee mug). Any doubt as to the computation of costs, expenses or profits must be resolved in favor of the copyright owner. Also, damages for the infringement can be enhanced if the infringement was willful.

In addition to damages, one who infringes works of another ought to be particularly concerned about being sued for infringement because of the threat that attorneys’ fees will be awarded. The copyright law allows the prevailing party to be awarded its attorneys’ fees. Thus, even if the monetary value of the infringement is small in terms of statutory or actual damages, the attorneys’ fees awarded to the prevailing party for having to enforce its rights in court can amount to many times the amount of damages awarded.

The Bottom Line

So, the answer to the question “Can I use the photographs?” is “no.” The risk of being sued for copyright infringement and the attendant risks of being enjoined, paying monetary damages, which can be doubled or tripled if infringement is found to be willful, and paying legal fees–your own and the copyright owner’s–far outweigh the costs of getting a license or hiring a photographer to have new photographs taken.

Endnotes:

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1. Timeline: A History of Copyright in the United States, http://arl.cni.org/info/frn/copy/timeline.html.
2. http://copyright.gov./circs/circ1.html.
3. http://arl.cni.org./info/frn/copy/timeline.html.
4. See the U.S. Customs Service Web site at www.customs.gov.