PDN's 25th Anniversary: 25 Years Of Court Cases And Legal Developments

In honor of PDN's 25th anniversary, we have summarized the most important legal developments of the past 25 years. These include precedent-setting cases and legislative developments, and cover a range of issues including privacy, parody and the copying and distribution of works in the digital age. Many of the most important legal cases concern artists' rights: Almost 30 years after the passage of the copyright law gave the presumption of ownership of a photograph to its creator, the courts continue to graplle with the legal definitions of copying, fair use, revisions and what kinds of creative expressions deserve copyright protection.

CCNV v. Reid: Defining and limiting "work for hire"

According to the copyright act, works made by hired employees belong to the employer who commissioned the work, and not the employee who creates it. The 1989 Supreme Court ruling in CCNV v. Reid made an important distinction regarding independent contractors who are hired to create works for clients, saying the copyright to a commissioned work vests with the independent contractor who created it, and not the client. Because the status of some creators is not always clear, the court spell out several factors courts must consider when determining employment status. Currently, most freelance photographers own the copyright in their work unless they transfer rights in the images to the hiring party in writing.

Curtis v. General Dynamics: Comping is copying

In 1987, Wyse Advertising copied a photo by Mel Curtis that appeared in Communications Arts, used it to make a comp, then hired a second photographer to shoot a national ad for General Dynamics following Curtis's photo as a model. Curtis sued. A US District Court judge ruled that the use of Curtis's photo was willful infringement and ordered General Dynamics to pay Curtis $60,108 in damages and about $80,000 in legal fees.


Tasini v. NY Times: On the electronic repurposing of copyrighted content

A vicarious victory for photographers, this landmark 2001 Supreme Court case established that publishers must get permission from freelancers in order to include their copyrighted works on certain types of searchable digital databases. The case began in 1993 when National Writers Union president Jonathan Tasini and five other freelancers sued the New York Times, Newsday, and Time Inc for unauthorized use of their articles in online and CD-ROM databases. Lower courts disagreed about whether the databases constituted permissible revisions of the original publications under US copyright law. But the high court concluded the databases at issue weren't revisions because they displayed separate articles "standing alone and not in context." The decision is widely assumed to apply to freelance photography. Unfortunately for freelancers, though, many publishers have reacted by demanding permission to reproduce freelance articles and photos in databases for no additional fees as a condition for giving freelance assignments.


Greenberg v. NGS: Electronic reuse -- a victory for creators

Several months before the 2001 Supreme Court ruling in Tasini v. New York Times, the 11th Circuit Court of Appeals in Atlanta ruled for freelance photographer Jerry Greenberg in his infringement claim against National Geographic Society. Greenberg's images had appeared without his permission on The Complete National Geographic on CD-ROM, which reproduced the entire archive of National Geographic magazines page by page. NGS argued that the CD was a revision of an existing product, so it didn't need Greenberg's permission to reproduce his images. But the 11th Circuit court ruled that the CD was not a revision but a "new product, in a new medium, for a new market" since it contained a search engine and other features the magazine did not have. A jury subsequently awarded Greenberg $400,000 in damages. The publisher appealed, but a federal court judge upheld the jury award in October 2005.


Faulkner v. NGS: Electronic reuse -- a defeat for creators

Douglas Faulkner and other photographers also sued the National Geographic Society for unauthorized use of their images on The Complete National Geographic CD, but the 2nd Circuit Court of Appeals ruled in favor of the publisher in early 2005. The court concluded that the CD was a revision rather than a new product, because the NGS CD, like microfilm (and unlike the digital media at issue in Tasini), reproduced contributors' works in their original context. It was the exact opposite conclusion reached by the 11th Circuit four years earlier (and pre-Tasini) in Greenberg v. NGS.


Kelly v. Arriba Soft: Search engines and fair use

Photographer Leslie Kelly sued Arriba Soft for infringement in 1999 after his images appeared in the company's internet search engine without Kelly's permission. In 2003, the 9th Circuit Court of Appeals ruled that Arriba Soft's collection, storage and display of thumbnail versions of Kelly's images was fair use. Still pending in the case is whether the search engine violated Kelly's copyrights by creating so-called "in-line links" to the original images--that is, links that connected search engine users to the full-sized images on Kelly's own web site, while making it appear as if the images were actually on Arriba Soft's web site.


Bridgeman Art Library v. Corel: Photographic copies not copyrightable

This 1998 ruling, which was re-affirmed in 1999, established that photographic copies of flat art -- paintings, in this particular case -- are not in themselves copyrightable. The claim arose when Corel Corporation began selling without permission photographs of various public domain artworks as royalty-free stock photographs. Bridgeman Art Library, which made the photographs, sued for infringement. But a federal court in New York issued a summary ruling in Corel's favor on the grounds that photographic copies of public domain works of art are not original, and are therefore not copyrightable. The court explained that Bridgeman, "by its own admission has labored to create 'slavish copies' of public domain works of art. While it may be assumed that this required both skill and effort, there was no spark of originality -- indeed, the point of the exercise was to reproduce the underlying works with absolute fidelity. Copyright is not available in these circumstances." The case never went to a higher court, but prior Supreme Court decisions rejecting "sweat of the brow" efforts as a basis for copyright claims give additional weight to the Bridgeman decision.


The Digital Millenium Copyright Act: Placing responsibility for internet infringement

In 1998, President Clinton signed into law the Digital Millenium Copyright Act (DMCA) an amendment of the 1976 Copyright Act that helps curb internet copyright infringement. The DMCA allows a photographer, who becomes aware that his or her work is being displayed or sold over the Web without his consent, to contract the ISP and demand that the images be removed until a resolution is met. Additionally, the DMCA allows for an infringement action to be brought against an ISP if copyright management information (eg watermarks) is removed from a work without the copyright holder's permission.


Sonny Bono Term Extension Act: Extending the term of copyright

This amendment to the US Copyright Act, which went into effect in January 1995, extended protection of creative works from the life of the author plus 50 years to the life of the author plus 70 years. The extension came at the urging of some (including Disney, which was facing expiration of its lucrative copyright on Mickey Mouse) who though life plus 50 years wasn't enough.


Berne Convention: Copyright protection without copyright notice

The burdensome requirements of proper copyright notices are finally eliminated in March 1989 when the United States adhered to the protocols of the Berne Convention. Works created on or after that date no longer require copyright notices for protection, and elimination of a notice (either intentional or accidental) will not result in the work being cast into the public domain. But copyright notices are still a good idea: they help identify the source of a work and make it difficult for infringers to claim that an unauthorized us of a work was innocent.

Rogers v. Koons: The limits of parody

This 1992 Appeals Court ruling helped define the limits of parody as a fair use defense in infringement cases. Photographer Art Rogers sued sculptor Jeffrey Koons in 1989 for unauthorized copying of Rogers' so-called "String of Puppies" photo. Showing a couple on a bench holding eight German shepherd puppies, the image appeared on a greeting card that Koons purchased, then copied faithfully as a 3-dimensional sculpture. He ended up selling 3 copies of the sculpture to collectors for $376,000. Koons admitted copying Rogers' photograph, but argued that Rogers' image lacked sufficient originality to be protected by copyright, and that in any case the sculpture was a fair use because it was a parody of materialistic society. The Second Circuit Court of Appeals rejected both defenses. The Rogers photo met criteria for originality by the way he posed the subjects and other factors, and Koons blatantly copied the elements of original creative expression the photo, the court found. Regarding fair use, the court said that the copied work, and not just society at large, had to be the object of a parody. The sculpture wasn't a parody of the photo, the court said, because audiences wouldn't be aware that underlying the sculpture was an original, separate expression attributable to a different artist. Koons had copied Rogers' photo "in bad faith, primarily for profit making motives," the court concluded, and ordered him to turn over to Rogers his artist's copy of the sculpture.


Annie Leibovitz v. Paramount Pictures: Defining "transformative" use

Annie Leibovitz, who shot the famous August 1991 Vanity Fair cover photo of then pregnant Demi Moore, sued Paramount Pictures for copyright infringement after the movie studio created a parody of her photo to promote a movie called Naked Gun 33-1/3: the final insult. The 2nd Circuit Court of Appeals rejected her claim in 1998 on the grounds that it qualified as a fair use. The court based its decision on the landmark Supreme Court decision in Campbell v. Acuff-Rose Music, which abandoned the notion that any unauthorized commercial use of a copyrighted work is presumptively unfair, and gave more weight to the "transformative" nature of a work in determining whether a disputed work was fair or not. (The transformative nature of the work is one of four factors courts consider in determining fair use). The 2nd circuit viewed the movie poster as transformative because it ridiculed the original image. "On balance, the strong parodic nature of the [movie poster] tips the first factor significantly toward fair use, even after making some discount for the fact that it promotes a commercial product," the 2nd Circuit said.


Arrington v. New York Times: Newsworthiness trumps privacy

This 1982 decision gave publishers a wide berth to publish images of individuals without permission under the "newsworthiness exception" to New York State privacy laws. Clarence W. Arrington sued the New York Times in 1980 after a photograph of him, shot without his knowledge or consent while he was crossing a New York street, appeared as the lead photo of a New York Times Magazine article titled "The Black Middle Class: Making It." Arrington, who disagreed with the viewpoint of the article, called it "insulting, degrading, distorting and disparaging." New York state privacy statutes bar use of a person's name or image for trade or advertising purposes without written consent. But the Court of Appeals of New York ruled in the newspaper's favor on the grounds that an unauthorized picture illustrating an article about a matter of public interest is not an illegal commercial use unless the picture bears "no real relationship to the article." The court found that the picture of Arrington was related to the article, even though he disagreed with the author's views.


Finger v. Omni Publications: Editorial use of a likeness

This 1990 ruling re-affirmed the victory publishers won eight years earlier in the Arrington case. Joseph and Ida Finger sued Omni for privacy invasion after publication of a 1988 article about fertility and in vitro fertilization that was illustrated by a photo of the Fingers and their six children. They argued that the photo had "no real relationship" to the article since none of their children were conceived in vitro; therefore Omni's use of the photo amounted to unauthorized commercial use of their likeness in violation of state privacy statutes. The Court of Appeals of New York disagreed. "It cannot be said as a matter of law that there is no 'real relationship' between the content of the article and the photograph," the court said, since the newsworthy theme--fertility--was reflected by both the article and the photograph.


Kaplan v. The Stock Market: Ideas cannot be copyrighted

This 2001 copyright infringement case addressed the issue of unauthorized copying of an idea, which is legal, versus copying the expression of an idea, which is illegal. In 1999, Photographer Peter B. Kaplan sued The Stock Market photo agency for copyright infringement after it began licensing an image similar to Kaplan's "Wingtips over the edge" photograph. Both images conveyed the idea of a distraught businessman on the edge of a building, looking down past his feet to the street below, as if on the verge of committing suicide. A federal district court in New York dismissed the claim on the grounds that the similarities between the photos were in the non-copyrightable elements flowing from the underlying subject matter. At the same time, the court found that the protectible elements of photographs-- background, perspective, lighting, shading, and color--were not similar between the two photographs at issue.


Ets-Hokin v. Skyy Spirits: The "thin" copyright of a product shot

This 2003 ruling addressed the limits of copyright protection for certain product shots. Photographer Joshua Ets-Hokin photographed the iconic blue bottle of Skyy Vodka for promotional purposes. In 1996, after Skyy Spirits began using similar images by another photographer, Ets-Hokin sued for copyright infringement. But the 9th Circuit Court of Appeals rejected his claim on the grounds that the similarity between the images was inevitable because there are so few ways to express the concept of the Skyy bottle. "Subtracting the unoriginal elements [of the Ets-Hokin photograph], Ets-Hokin is left with only a 'thin' copyright, which protects against only virtually identical copying," the court said. It went on to say, "The lighting differs; the angles differ; the shadows and highlighting differ, as do the reflections and background. The only constant is the bottle itself. The photographs are therefore not infringing."


Rattner v. Geo: Setting standards for the valuation of lost chromes

Images captured on film and distributed to clients via courier are occasionally lost or damaged, and trade associations for years advocated to establish a standard loss/damage valuation of $1,500 per original image. In 1987, the New York State Supreme Court outlined criteria for establishing the value of lost or damaged slides in the case of Rattner v. Geo. Photographer Steven Rattner sued after the magazine lost 39 of his images. He sought $2,000 per slide, as specified by a loss clause in his delivery memo, which Geo had signed. The judge rejected that amount as unreasonable, and wrote that "the value of a photo transparency is an abstract concept embracing numerous factors." Among them, he wrote, are "technical excellence," the "selective eye" of the photographer, uniqueness of subject matter, established sales prices, and the frequency of acceptance by buyers. Rattner was ultimately awarded $1,000 per lost image. In subsequent cases, courts have applied the same criteria and arrived at awards ranging from a few hundred dollars to $1,500 per image. Fortunately, though, digital capture and transmission have substantially reduced the risk and incidence of lost originals.