Author: Leslie Burns

Every platform, content scraper, blog publisher, and even legitimate (formerly?) respectable publishers (I’m looking at you, National Geographic) out there sells creatives on the idea that if you share (I so loathe that word as it is used by those businesses) your work, the exposure will be great for your business.

The reality is, probably not. Here is one photographer’s story about a viral photo that got a ton of views and likes and shares and even press but, so far, no appreciable new business (note: he did book a couple of weddings, but that isn’t clearly because of the viral photo–maybe he would have booked ’em anyway at the show he mentions).

Now, maybe he could have used the viral exposure better (for example, connected it immediately to a sales promotion), but really, I’m not sure that would have made a major difference. People don’t impulse-buy photography. No one is likely to see the viral photo and say “I need to hire that photographer!” unless, maybe, s/he was already looking for a wedding photographer. Assignment/commissioned photography is still not a commodity, not a product on the shelf, so exposure like that may never pay off.

So, the photographer gets a brief hit of online fame, when his name is included (and it often isn’t), but no real financial benefit. He’s not suddenly booked up and the interest has already faded. In exchange, he has lost the ability to control the work (i.e., license it) and thus generate revenue from it.

However, I’ll bet dollars to doughnuts that the viral photo has generated buckets of cash for the sites that have used it (eyeballs = advertising moolah) and will for as long as people will look.

Moral of the story: don’t give your work away; don’t share it and don’t let your clients share it, unless they pay for the privilege.

One of the most popular questions we copyright attorneys get asked is “What does the Copyright Office consider publication?” While each situation is fact-specific, there are a bunch of hypotheticals answered here on the Copyright Alliance website by the USCO’s Director of Registration Policy and Practices, no less!

There are a bunch of other copyright registration-related questions on that page, too. It’s a great resource.

I am a Prince fan. I’ve enjoyed his music since its first releases and his death last week hit me with the same kind of force I’m sure previous generations felt when, say, Elvis Presley died. But whether you are a fan or not, his death matters to you. Why? Copyrights.

Prince’s death should be a big reminder to all of you who create that your copyrights will outlive you and they are descendable. “Descendable” is legalese for it will pass to your heirs when you die and you can name who gets it. While no one likes to think about death, you should be thinking about who will get your copyrights when you die.

Just today, the New York Times and other media are reporting that Prince may have died without a will. The implication is that no one knows what will happen with his music. Now, the reality is not quite so dire. There are mechanisms in the law for when someone dies without a will (intestate, is the legalese) so it’s not like the work will suddenly go into the public domain or anything. The short answer is that, assuming there is no will, Prince’s estate will be split according to Minnesota law equally amongst his surviving full-sibling and half-siblings (they are treated equally in Minnesota), that is, his heirs. His copyrights are a part of his estate. Very likely, each copyright will now be jointly owned in equal measure by all the surviving heirs.

Will there be infighting amongst the heirs? Sadly, that is likely. People act like crazy folk when it comes to estates, whether they be small or, as in Prince’s case, very large. When there is no will, courts are left to impose the law without any guidance from the dead person as to what (s)he wanted, but heirs and potential heirs try to convince the court otherwise (“Grandfather promised me the classic car in his garage!”). Hopefully a will will be produced and it will be clear and well drafted, expressing the actual wishes of Prince and meting out all his property, both tangible and not, and thus making litigation down the line a little less likely (or at least less onerous for the court to sort out).

Each state has its own laws about who gets what when someone dies intestate. Generally speaking, usually property (including intellectual property like copyrights) will go to kids (usually called, in the law, issue, which makes the 12-year-old in me crack up), if there are any, or to parents or siblings if not. If you live in a community property state, then your spouse may automatically get your property, or at least the property created while you were spouses. It can get pretty complex (especially here in California where, for any copyrights you create while married, your spouse already owns a half interest and has since the moment of the work’s creation!). But you have control of what you own–just get a proper will.

I read an article recently that said Robert Mapplethorpe gave his brother his cameras in his will. That is called a specific gift (anything you leave to someone in a will is called a gift)and you can do that with things (like your equipment) or any/all of your copyrights. You can get into meticulous detail about who gets what, if you choose, or you can make it much more general like “Bob Smith gets my entire estate.”

But you have to do it. That is, you have to have a will. You have to take the time to name who gets what.

This is important. Your copyrights have value and you should seriously consider who will get them (or parts of them) when you die. Maybe you shoot fetish work but your family are mostly highly religious–do you want them to own and control your art when you are gone?! They could, completely legally, destroy it all. Or your bother with the gambling problem could sell his share to Jimmy the Loanshark. Or your spouse, from whom you have been separated but just haven’t bothered to actually divorce, gets it all. If you don’t take the time to draft a will now, your wishes for your art will die with you.

That may have happened with Prince. Don’t let it happen to you.

Do you sell your work? When you talk about your work, do you say, “I sold this photo for $2500 to Client X, for use on its website” or similar? Even more importantly, does your paperwork clearly state, for every transaction, that specific rights to use the work are licensed to your client or do you just say “Creative Fee = $2500” and list “usage” someplace? Or, worse of all, do you ever say an invoice is for a “buyout” of the work?

Well, stop that. I mean, stop selling your work.

If you aren’t making it clear that you are licensing your rights rather than selling your photography, I think a smart copyright defense lawyer could argue that an affirmative defense called the first sale doctrine applies if your client later resells or otherwise distributes your work beyond the scope of the license you thought you granted. That defense could gut your case.

This morning, I was reading up on recent cases in copyright when I came across this article. On first glance, it doesn’t seem like it really has anything to do with how you run your business and copyright law, but I think it may. The short version of the case discussed in the article is that Adobe sued someone who bought copies of Photoshop which it later resold (against Adobe’s usual terms); that would have been a clear case of infringement, except that Adobe hadn’t clearly stated that the defendant originally licensed the software from Adobe (even though Adobe always licenses rather than sells its software) so the purported infringer was protected by the first sale defense when he resold the software.

In the case itself (yes, I read the opinion), the court notes, “In digital copyright cases, the distinction between a “sale” and a “license” has become central.” (p. 11) and later explains:

To determine whether there is a legitimate license, we examine whether “the copyright owner (1) specifies that the user is granted a license; (2) significantly restricts the user’s ability to transfer the software; and (3) imposes notable use restrictions.”

(p. 13, internal citation omitted). Finally, the court emphasizes that “the precise terms of any agreement matter as to whether it is an agreement to license or to sell; the title of the agreement is not dispositive.” (p. 18, italics added).

This isn’t a slam-dunk defense against copyright infringement of a visual art like photography. There are differences in the cases (software isn’t photography, for example), but the analogy is worrisome. If you just substitute the word “photograph” where it reads “software,” you can see that the rest fits.

I think this case should, for your business, serve to remind you of the importance of making it clear that you are licensing rights, not selling photography (or any visual art). In other words, in your paperwork to your clients, make sure to avoid words like selling, sold, buying, or buyout and make sure to use terms like licensing the rights to reproduce, non-exclusive license to display, or non-transferrable unlimited license to copy and display. I’d make it clear on all documents, especially your estimates and invoices, that the usage rights granted under this license are limited to (fill in the usage here).

Drafting a license isn’t hard, but you do need to make it clear that you are only selling the limited license, and not your work. Later on, a clear license can help prevent an infringer from even trying to raise the first sale defense, saving you and your attorney (and the court) headaches, time, and money.

 

I vet many of the cases that come to our firm (photoattorney.com); that means I get to see what people think are lucrative infringements. That also means I have to tell them, sometimes, that we can’t take the case.

This is not the favorite part of my job, as you can imagine.

I don’t like having to tell an artist we can’t help, but we can’t take every case just because we really want to help. We have rents to pay, too. So, we have to do a cost-benefit kind of analysis to try to hedge our own “bets” on any case we’re considering for a contingency fee representation. Sometimes, the numbers just don’t work. Sometimes we have to say “no.”

More often than not, we can’t take a case because of something registration-related. There are three main categories for that: either a work isn’t registered at all (and the artist has no proof of licensing value); or it isn’t timely registered (i.e., before the infringement); or there is a serious error with the registration, usually relating to the publication status at the time of registration (i.e., registering as unpublished when it was published).

For contracts or release matters, too often there is no signed doc in the photographers files. Often any doc that may have existed has been lost as digital media that is now lurking on some dead Zip Drive rather than printed out and kept with a job folder.

All of those errors are related to details and, well, artists generally hate dealing with details except in their art. The Law (cap-L), however, is all about details. And there lies the devil for our clients and potential clients.

One example may help illustrate how details are everything in the Law: any filing in Federal Court. Besides doing all the legal research and the drafting, we have strict procedures we have to follow. We have the Federal Rules of Civil Procedure (FRCP), which are the procedure rules for all civil matters in all federal courts all over the USA. Each district within the federal court system has it own Local Rules that supplement the FRCP. Each district judge has her/his own Chamber Rules and each judge magistrate (who is usually in charge of the discovery part of a case) has her/his own Chamber Rules. So, before filing any document, a lawyer needs to check the FRCP, the Local Rules, and the Chamber Rules for whichever judge is in charge of that part of the case, and sometimes both the judge and judge magistrate. That is just for the procedure, not the law about the issues. Screw up something in the procedure and your whole filing can get bounced. Not good.

Anyway, this is a long way of saying that when it comes to the legal part of your business, you have to keep in mind that the Law is nit-picky as hell. You can’t play fast-and-loose with your registrations or your record keeping or your contracts (etc.) and expect the court to understand what you meant rather than what you did and, most of all, what you can prove.

This is why you’ll hear your attorney sigh and reach for the nearest martini when you say that you didn’t get a release signed because she was your girlfriend when she said it was okay that you make that image of her in a naughty nurse uniform, carrying a ginormous bong and flipping the bird to the camera whilst dancing on a burning US flag, and you don’t understand why she’s suing you now for licensing it to that punk record label, even though she now works for a conservative think tank and is engaged to a Mormon political candidate. You may know (and her too) that there was a verbal release, but can you prove it?

Really, attorneys hate to say no to clients. Help us to be able to say yes to you when you need legal help, by paying attention to all the devilish details. Getting it right could end up making you lots of money, in the end.

Since long before I became a lawyer, I advocated for two things when it came to photographers’ fees: raise them (particularly the license fee) and separate the creative fee from the license fee. Since becoming a lawyer, I’ve found that was good advice on both fronts.

I bring this up because I’ve seen it repeatedly in my practice and have been hit with it a bunch lately. That is, where a photographer comes to us with a possible infringement and, not having timely registered the copyright in the work (grrr!), leaves us no option but to see if there are sufficient actual damages in the form of lost licensing fees to make the case worth our efforts. When asked what her/his usual and customary license rate is for a use the photographer will respond with something like, “I would have asked $2000.” When we ask the necessary follow-up question, “Do you have invoices to back up this rate” the response is either, (1) “No, but that is what I would have charged,” or (2) I am presented with an invoice for the creation of the work that also included a license and the combined fee cited is $2000, or, (3) worse of all, I get the invoice for the creation and licensing of the work where the photographer only charged $500 on some sort of mega-discount.

None of these are good answers.

In the first case, no history of licenses, I can at least argue for the “fair market value” of a license and then, using common metrics like Fotoquote and online calculators for stock license rates, get a number. Sadly, as we all know, those numbers are likely to be low, particularly since there are more and more cheap stock sites out there. But still, at least I’ve got nothing against me.

In the last case, you’ve just set the price for all time. You are never going to get anyone to believe that a license similar to the original one is worth anything more than a few dollars because you have told the word that you’ll make and license it for so little. If you are going to offer a super-mega-discount, make sure that you spell it out on the invoice like:

Creative fee: $2500
One-time Discount: -$2300
License Fee: $4500
One-time Discount: -$4200
Total Fees: $500

That way you are saying “my usual price for this license is $4500” and that can be used as evidence later of your actual fees. That is great! But if you just list the discounted price, you’ve only got your word that you normally would have charged more. That won’t hold up.

In case #2 above, all bets are off. The other side can argue that $500 was the license fee and $1500 was the creative fee, or worse. It is almost impossible to argue successfully that the majority of a combined fee is for the license not the creation of the work unless it is spelled out in the paperwork. I’m good, but I can’t make butter with a toothpick and there are plenty of good attorneys on the other side who can present evidence that the Fair Market Value of the license is only $200. If you’ve got nothing in your records to show otherwise, then it is quite possible that all you can get for actual damages will be that $200. At the very least, in court, it would cost a hell of a lot more in expert testimony to try and prove up your damages, and the other side knows it, so they can stonewall in pre-suit negotiations. You got no bat, as they say.

The best business practice now and to protect your values in the future is to separate out your fees on your paperwork and to make your license fee the higher portion of those fees. Later on, you can use those numbers to support getting higher actual damages. Also, if you do timely register your work, the courts will often look to the actual damages in setting statutory ones (like doing a multiple of actual damages). If you can prove up substantial actual damages, you are more likely to get higher statutory ones. Proof of higher numbers will make it easier for your attorney to argue for higher pre-suit settlements as well.

As for the argument that your clients want combined fees, you have to run your business your way, not how they want it. Besides, as in the example above, you can give a final number that is combined, just make sure that the line items are separate. If they argue for a higher creative fee and lower licensing one, know they are thinking of the future when they want to re-license; so should you (higher license fee now means higher re-license fee later). Run your business like a business–think about future value and long term effects.

It’s not hard, it just takes some guts. You can do this.

Mr. Frank’s work is amazing and his advice is perfect. Every time you get wrapped up in gadgets and technology, just go back to what he has demonstrated with this show and his words to the students.

My colleague Carolyn has written a good blog post about the cost of hiring an attorney and how our firm works. Many sources make it sound like an attorney won’t touch a case that isn’t worth something well into the 5 figures or more, but that simply isn’t our way.

Don’t get me wrong: we’re happy to take cases that are worth more. Um, duh! But a big part of the reason Carolyn created the firm in the first place was to serve the underserved photographers out there who don’t have huge cases but do have legitimate claims. As a virtual firm, our overhead is significantly lower than many more traditional firms so we don’t have to say “no” to many of the smaller claims.

We can’t take all cases–some just are never going to be cost-effective (this is too often the situation if you have not registered your copyrights in advance, see my last post)–but it doesn’t hurt to ask and you may be pleasantly surprised.