Photographs, tag-backs and bad facts

Frankly, it’s been done before, and in the Second Circuit, you could do it, and even LIKELIHOOD OF CONFUSION has done it: File a copyright infringement lawsuit while your copyright registration was pending. Because sometimes your client doesn’t need a registration, or doesn’t get one all that timely, or other things. And then it does need one.

And unfortunately, as ministerial a process the copyright registration is — taking about three months these days — your client sometimes can’t wait to sue. “Can’t” being a relative term, of course.

Anyway, then along came Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, which held that when it comes to copyright registration, there are no “tag backs”: filing for a registration was not good enough to file an infringement lawsuit. You need the registration.

What to do if you filed your lawsuit under the old rule and along came the new one? Plead for mercy. The Fashion Law explains:

Xclusive-Lee had previously argued that it should not be barred from pursuing its copyright infringement claim due to the Supreme Court’s decision in Fourth Estate – because it filed its suit against 23-year old Hadid nearly 3 months before the nation’s highest court issued its decision, “and because prior to Fourth Estate, the Second Circuit had left ‘the application/registration rule . . . issue to the discretion of individual District Court judges.” However, the court here disagreed. 

“There is no doctrinal basis on which this Court can decline to apply a Supreme Court decision that would otherwise apply merely because that Supreme Court decision was issued after the filing of the complaint at issue in this case,” Judge Chen states in her decision, and notes that Xclusive-Lee “cites no case law supporting its position.”

While the filing of this case does, in fact, predate the decision in the Fourth Estate case, the Supreme Court’s decision is “nevertheless binding on all lower federal courts unless and until the Supreme Court decides to revisit it,” Judge Chen asserts, and with that, dismissed the case. 

Sounds right. But what a chance we had! Because this is what was dismissed:

Gigi Hadid [a model] has been handed a win in the lawsuit filed against her early this year for posting a photo of herself on her Instagram account. According to the complaint, which was filed in federal court in Brooklyn, New York in January, Hadid “copied and posted” to her Instagram account a photo belonging to Xclsuive-Lee, Inc. “without license or permission from Xclusive,” prompting the photo agency to file – and ultimately, lose – a copyright infringement suit.  

Following a heated back-and-forth between counsel for the supermodel – who claimed that her use of the photo was not infringement but fair use (and that it was Hadid, not the photographer, that contributed the creative and copyrightable elements in the photo – and the paparazzi photo agency – which took issue with the allegedly “uncommercial” nature of Hadid’s use of the photo and the “preposterousness” of her co-authorship claim, among other things, a federal court in Brooklyn, New York handed Hadid a win on Thursday. 

Whoa. Wait. Here, as the often annoying but frequently right Mike Masnick explains, is the thing:

One of the things about copyright that copyright supporters really hate to discuss is just how problematic the whole idea of getting copyrights on photographs can be. They basically have to twist themselves into all sorts of logical knots just to justify it in the first place. . . . [This is even] more questionable when you’re talking about “nature” photographs or just general snapshots walking around.

This case involves model Gigi Hadid, who is frequently photographed by the paparazzi. One day last fall, she was approached by a photographer and played along, “posing” for the photographer. The next day she found the photo online, cropped about 50% of the photo (so it was even more focused on her) and posted it to her Instagram feed. In January, an organization called Xclusive-Lee sued her for infringement.

In opposing the propriety of this, as Mike explains, “Hadid’s lawyers strip away decades of everyone pretending that photographs deserve copyright and point out that it’s simply capturing facts”:

The published photograph here depicts Ms. Hadid smiling while standing in front of a non-descript building. It is not a studio composition but rather a quick “shot in a public setting,” and there is no allegation that the photographer “attempted to convey ideas, emotions, or in any way influence [the subject’s] pose, expression, or clothing.” . . . In such circumstances, the photograph is considered a factual work, not a creative one, thus favoring a determination of fair use. . . .

To bolster that point, they argue that because Hadid “posed” for the photograph, she’s actually partially responsible for some of the copyright-covered elements of the photograph (remember, earlier cases have held copyright on photographs can apply to the arrangement in the photograph, if done by the photographer). But what if that “arrangement” is done by the subject of the photograph?

Maybe not so crazy. Julie Zerbo has been noodling with this for a while, as evidenced by this post called, “Lawsuits Over Paparazzi Images on Instagram Raise Celebrity Questions Over Right of Publicity,” in which she first reported on the Gigi whoever with 40 million something Instagram followers kerfuffle. Excerpt:

Putting copyright law aside, there is a larger question at issue: at what point does a celebrity’s right to control how others’ profit from his/her likeness extend to paparazzi photos? In other words, is there a right of publicity case to be made against photo agencies/paparazzi more generally?

The right of publicity is a state-specific legal doctrine developed to give individuals the ability to prevent others from commercially exploiting their names and/or likenesses without permission. In accordance with this doctrine, celebrities have grounds to take action when their names, images, likenesses, etc. are used for commercial purposes. This is precisely what actress Katherine Heigl did in 2014 when New York-based drug store chain Duane Reade used an image of her leaving one of its stores in an advertisement.

In theory, right of publicity statutes also gives celebrities the right to take on paparazzi photographers and photo agencies. Should Gigi Hadid or any of the Kardashians initiate such a suit, it would not be the first of its kind. In February 2018, for instance, football star Odell Beckham Jr., filed suit against photographer Miles Diggs and California-based Splash News & Picture Agency for allegedly attempting to “extort” him into paying $40,000 after he posted a photo of himself on his Instagram account. “The audacity of Splash News to demand payment from Beckham – the very person who provided value to the Photos – is shocking, reeks of bad faith, and emphasizes the utterly troll-ish behavior of Diggs and Splash,” the complaint asserts. 

These are important questions. The value is created here by the subject of the photograph, not the photographer. Certainly, when that person has been kind enough to cooperate and pose for a picture, it really takes a lot of nerve to hold that person up for payment in return for his or her use of that picture.

It certainly is a screwed up legal regime that would permit this. At the very least, the subject of the photograph should probably be presumed to possess a non-exclusive perpetual license of her own likeness.

It is also kind of interesting to juxtapose this copyright rent-seeking phenomenon with a very different one, whereby in return for recording a songwriter’s song, pop stars demand to share credit as the songwriter. On the one hand, in many cases songs are not so special, and it is who sings them that makes them hits. On the other hand, some songs are so special, and even if they’re not, if someone who doesn’t write songs, there would be nothing to sing.

Anyway, as Mike notes, in the Gigi lady case the plaintiff’s lawyers naturally responded that such an approach “would more or less destroy copyright in lots of photographs”:

The Photograph in this case is undoubtedly a highly creative and expressive, not factual, work. It is not just a mere snapshot of an individual on a street corner taken on a cellphone; the Photograph in this case is a highly creative work, involving a number of creative choices including timing, lighting, angle, composition, and others. Taken to its logical conclusion, the Hadid’s position would deem any photograph of a real-world location or individual to be a factual, thinly protected work.

Mike continues:

Well, yeah. As noted up top, this is the whole myth about copyrights in photographs that lawyers and courts have sought to avoid discussing for years, so it’s actually kinda cool that the issue is being raised here — though I doubt the court will end up dealing with it.

Which of course it did not, and did not have to. But there is something to think about here, for sure, especially if we are going to start talking about “small claims” adjucication for copyright infringement. I have represented commercial photographers, including a travel photographer whose entitlement to copyright protection for his work seemed quite obvious, and a food photographer who was at pains to explain to me just how hard it is to take pictures of food right.

And I have also represented lots of defendants, or would-be defendants, preyed on by copyright trolls, some of whom are representing creators of photographic works of somewhat dubious originality, to say the least. Their lawyers frequently think the Copyright’ Act’s statutory damages provisions are meant as a windfall entitling a photographer who has never sold a picture, or who perhaps sold it for $45, to tens of thousands of dollars in statutory damages. Which they are not. And, guess what? Back to Michael:

For what it’s worth, one of the lawyers for Xclusive-Lee is David Deal who has also been associated with Pixsy in the past. Pixsy is one of those scrape the internet and threaten to sue trolling operations out there.

Reform of copyright — not the Sonny Bono kind, but the common sense kind — is due, and the question of exactly when a copyright registration was obtained is a the smallest part of this mess.

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