You’ve received a letter from a lawyer saying that a photo you found online and uploaded to your website infringes a photographer’s copyright. Maybe you do nothing and wait to see if you get another letter. Maybe you take the letter seriously and remove the image from your website. Either way, you get another letter demanding that you pay money for having used the image without permission. This is an increasingly common scenario these days, and can happen to big companies, small businesses, and even individuals. Maybe it’s already happened to you. It’s important to know what to do if it does—and to take precautions to make sure it doesn’t.
First, a couple things you should know about copyright:
(1) Copyright is not something you “get” by applying for it; it arises automatically when an original work is created and fixed in a tangible form. (Similarly, trademark rights arise not by “applying for a trademark” but by creating a trademark and using it as a brand for goods and services provided to others—as we explained here). Historically, creators of copyrightable works had to register their copyrights and display a copyright notice on every publication of their work or risk losing their exclusive rights. But in 1989, the United States joined the Berne Convention—a worldwide treaty harmonizing standards for protection of copyright in all member countries (which now comprise all but a handful of the world’s 195 countries). The U.S. had to agree not to require formal procedures like notice and registration as a prerequisite for enforcement of copyrights, because a basic principle of the Berne Convention is that copyright is a right of every creator of an original work and arises naturally from the act of creation. The result is that, since 1989, anything than can be protected by copyright is protected by copyright. It is never safe to assume that a work is “not copyrighted” even if nothing accompanying the work says that it is. Copyright registration, once a requirement of copyright ownership in the United States, is no longer a prerequisite to owning a copyright (just as registering a trademark is not required for trademark ownership).
(2) However, unlike trademarks, copyrights for works created by authors in the United States do have to be registered before their owners can sue for infringement in federal court. Merely labeling a work with © or saying in a letter that the work is subject to copyright does not mean that the owner has the right to sue for infringement in the United States.
Now that you know those two things, you know it’s likely that any photo you find on the web and copy to your website is the copyright-protected property of its photographer. That copyright owner or the owner’s authorized representative can make a demand against anyone who has copied the photo without the owner’s permission. But you also now know the copyright owner cannot take you to federal court unless the copyright is registered.
With that in mind, here’s a list of what you should or shouldn’t do to avoid getting a copyright infringement letter, and to navigate the situation if you do get one.
1. First and most important, don’t copy anything to your website unless you are sure that it is in the public domain (i.e., is no longer protected by copyright or never was), or is license-free, or is something you have permission to use (paid or not). Make sure your employees and anyone with access to your website understands and respects this.
2. Do not ignore an infringement letter. Read it carefully and respond appropriately (preferably after consulting a lawyer).
3. Does the writer of the letter accurately identify the copyright-protected work and is it in fact the work you copied to your website?
4. Does the writer of the letter identify the owner of the copyright and assert the letter is sent with the knowledge and authority of that owner?
5. Does the letter state that the copyright is registered, and provide a registration number?
6. If any of points 3-5 above are not addressed in the letter, respond to the sender and request the missing information. If the letter is not a legitimate claim, your request for this information may end the matter by discouraging the sender from approaching you further.
7. As soon as you (and your lawyer) are persuaded that the sender of the letter is legitimately representing a copyright owner whose work you have used without permission, take the work down.
8. Sometimes taking the infringing copy down will be enough to end the matter. Usually, though, the sender of the letter will also demand payment for your unauthorized use. Payment demands vary wildly, and are often based on the assumption that, if the owner sued you and won, you would be liable for damages at the high end of the Copyright Act’s statutory damages range. The statutory damage for one act of infringement is currently $750-$30,000—a very big range. Someone who copies and posts a copyright-protected image without seeking to profit from it and takes the work down as soon as it is clear that the posting was an infringement is unlikely to be found liable for damages anywhere near the high end, or even the middle range, of the statutory damages scale. A fair demand for damages in an infringement letter is the amount that the copyright owner would have charged as a license fee had you asked for and received permission to reproduce the work. Most photographers license their works regularly and have standard license fees that can and should be applied in cases of infringement. It may also be reasonable for the demand to seek a higher amount than just the license fee because the owner had to pay a lawyer to obtain takedown of the work.
9. If the copyright in the work is not registered, the owner cannot sue you in federal court, so threats of a lawsuit are hollow, and statutory damages that a court might award are not a proper measure of the damage payment requested in the infringement letter. However, copyright registration is not difficult or time-consuming, so not having a registration at the time of the letter does not mean the copyright owner will never have one. Further, a copyright owner can bring a claim against you before the Copyright Claims Board, which handles “small claims” (copyright disputes involving $30,000 or less), with only a pending application to register the copyright. In that case, though, you as “respondent” in the proceeding can “opt out,” forcing the copyright owner to sue in federal court—where registration is required.
10. Even if the copyright is registered, recourse to the law’s statutory damages provisions should be limited. The Copyright Act provides that “where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.” While ignorance of the law may mitigate damages, it’s not a “get out of jail free” card. Infringement is not “innocent” if the defendant knew its conduct represented infringement or recklessly disregarded the possibility, or if the infringed work displayed a clear copyright notice. However, a court’s power to reduce damages to a sum lower than the court-filing fees makes copyright owners less likely to litigate where infringement and harm are minor and the work was taken down when the demand was made. This affects the amount that should be negotiated in a case of accidental infringement.
11. Takedown alone is usually not enough, and even the accidental infringer should expect to negotiate reasonable payment for licensing the work and compensating the owner for additional harm and the cost of pursuing legal resolution. Your best protection is, of course, not to copy other people’s work in the first place.
Miller Nash’s intellectual property professionals can help in these situations, and can answer your questions about copyright ownership, protection, registration, infringement, enforcement, and damages. Give us a call.
This article is provided for informational purposes only—it does not constitute legal advice and does not create an attorney-client relationship between the firm and the reader. Readers should consult legal counsel before taking action relating to the subject matter of this article.