Author: Leslie Burns

For some reason, my father abbreviated Robert as Rob’t in his signature, but he never omitted the H. I never asked why.
Now I can’t.

Dad died yesterday. Quietly. After what obituary writers might call “a short illness” but really, I’m not sure what to call it. He was at home and fine (relatively speaking–the man was almost 93) less than three weeks before his demise. Then he fell and gashed his hand, ended up in the ER for stitches, got admitted for rehydration as well as IV antibiotics for some old infected wounds, got better, moved to rehab to learn to use his walker better, and two days later was readmitted to hospital, then hospice, then gone.

I’m glad for the speed of it, for his sake. He would not have liked to linger and would have hated living in any sort of facility for anything more than a brief stay. He was fiercely independent. Dad lived on his own, alone, in his townhouse condo (with its stairs!) up until the end. My brothers generally hated that, but I respected his choice. He knew it increased his risks of accidental death at his age, but he was willing to take those risks for his independence. He drove, too, for which I feel a bit compelled to apologize to the people of Atlanta.

I got my love of driving, including stick shifts and cheap(ish) sports cars, from my dad. I got a lot from him, actually. A short list would include:

• brown eyes that are getting lighter/more hazel-green as I get older
• a love of the law
• an ability to see both sides of issues and look for rational solutions
• honesty, which (unfortunately) can be a bit too harsh for some folks
• a loathing of yelling, particularly in fights
• a love of, but not the guts for, acting
• a strong whistle
• athleticism
• respectful competitiveness (I don’t like to lose, but I’ll respect whoever beats me at whatever)
• enjoying watching football and baseball, but without rabid fanaticism
• religiously doing the NYTimes Sunday crossword, in ink
• quiet rationalism that can be perceived as coldness (aka Midwestern stoicism)
• liking gin martinis, steaks on the grill (although I prefer mine rare), and ice cream.

As a kid, Dad taught me to swim, to ski, to play Hearts, Spades, and Blackjack, to ride a bike, to drive, and that one didn’t actually have to stop for a pee half as much as you’d think on long car trips across the country (while arguably a bit tortuous as a kid, this was great training for college bars). On his post-divorce weekends with me, sometimes we’d go horseback riding or ice skating. We’d go to Snowshoe, WV mid-week for a ski break or to Boyne, MI or take a half-day and go to a local hill. Spring breaks were often long car trips to Vail or Park City or Ft. Lauderdale, with stops in New Orleans or Mt. Rushmore or Joker Joe’s in Benton, TN to buy fireworks. Thanks mostly to Dad, I’ve been in each of the 48 contiguous states.

In recent years, we usually spoke weekly, on the phone. FaceTime or whatever was really beyond him–I mean, he’d still call me to say he’d received an email or, on the rare occasion, to tell me he’d sent me one. Each call, he would ask me about my practice and my cases, even though he didn’t understand copyright law (he had been a general practitioner, doing mostly real estate, divorces, and probate). He’d also ask about the weather, whether I had been swimming in the ocean lately, and how the animals were. He referred to my live-in boyfriend as my “friend,” almost never by his name, although more recently he did say he was really glad I was happy with him. That was unusual–Dad just wasn’t the warm-fuzzy type. For example, I’d always end the calls with “I love you” and he never said it back. It just wasn’t his way. I knew he did, though, of course.

He sucked at expressing his emotions directly. Yes, there is a great irony that he had been an actor before law school, but he couldn’t say “I love you” to his daughter. I blame his mother, who was apparently a piece of work (she died shortly before my birth). Everything made sense to me when, some years ago, he said that they never had black pepper in his house growing up, because she did not approve of it. And she dressed up her cats as a child. Yikes. It’s a small wonder he wasn’t a serial killer or something, after that childhood. Anyway, his inability to be direct about his feelings meant he, for example, would tell one of my brothers how he was proud of me, and me how he was impressed with my brothers. We all eventually heard it, just never straight from him.

Oddly, the last time I spoke to him I said, “I love you and I miss you” instead of my usual closing. I had no idea that would be the last time we spoke, but for some reason I added that second clause.

It’s too true, now.
I love you, Dad, and I miss you. Thank you for everything.

A very recent opinion in the Eastern District of Pennsylvania (Kashi v McGraw Hill Global Education, pdf here) looks at first like the photographer plaintiff lost because the court did not grant him summary judgment. However, really, the opinion has lots of good stuff for photographers/licensors in general, and maybe even the plaintiff. I’m going to discuss the highpoints below (out of order from the opinion, by the way).

First, there is the part about registration where the court followed the reasoning in Alaska Stock (etc.) that roughly says that when a person registers a collection of works and follows the steps prescribed by the US Copyright Office, then the registration conveys to the individual works in the collection. Yay!

Then, there is the part about how there can’t be an implied license if there is an express one. Implied licenses are sneaky–sort of accidental licenses that exist because of conduct–and can bite photographers (and other licensors) in the butt. However,  if you have a written license for the same work for the same client, then that client can’t later go beyond the license and try to say that there was an implied license at work. Yay!

Relatedly, the court reminded all that a defendant can’t rely on “industry custom” to excuse its bad behavior when it comes to copyright matters. However, a defendant could point to previously agreed to behavior by the actual parties as an out, but that is different. So, yay again.

Next, the court said that there may be an issue about the statute of limitations in this particular case, even though the discovery rule applies. This is important: you’ll hear people say “you have three years from the date you discovered an infringement to bring a suit” but generally attorneys will add the important “or the date you should have discovered it” into that sentence. As the court here pointed out, you can’t turn a blind eye to possible infringement then, later, say you didn’t find the infringement until much later. If you have reason to think there might be infringement happening–that is, a specific act of infringement (not just “I bet someone somewhere is knocking off my work”)–then you need to investigate. The clock essentially starts when you have good reason to suspect there is an actual infringement happening in that situation. No yay–more of a heads-up.

And finally, the big issue here was whether a use beyond the scope of a license meant there was a condition precedent or a covenant breached, which is legalese for “is this a copyright infringement matter or a contract matter?” Here, the court said payment for the specific rights was a condition precedent  to the grant of those rights so this was an infringement case.

So what’s the big deal? A contract can only get contract damages, which are usually very limited. An infringement with a timely registered work gets statutory damages and maybe attorneys’ fees–much more. But the two things are very close cousins, language-wise.

A covenant is a promise and an exchange of promises is a contract; so if Party 1 promises to do X and Party 2 promises to do Z in consideration of X, then you have a contract; if one or the other isn’t done, you can only sue on the contract. For example, “PhotoBob agrees to license the works to Client for $1000, which Client agrees to pay within 30 days” is a contract. If Client doesn’t pay on time, PhotoBob can only sue for the amount of the contract–to get paid what he is owed. Usually, you can’t get attorneys’ fees paid for if you sue for breach of contract (there are exceptions, depending on state law, but generally require that the contract specifically includes language about getting attorneys’ fees if you sue and win on the contract).

A condition precedent, on the other hand, is a condition that must be fulfilled before a duty to perform a promise in an agreement even comes into being. For example, “rights will be granted only on condition of receipt of full and timely payment” means no rights are granted unless the other side pays up in full and in time. That payment must happen first, like a trigger, that then makes the photographer grant the rights agreed to. Late payment means no rights granted means if the client has used the work, it has infringed.

So, in this one opinion, we get a bunch of reminders that photographers (and anyone making creative work and licensing it to others) need to do specific things to make sure they’re covered for all these situations, but if they do things properly, then the law is on their side:

• Use written licenses.
• Have language in your contracts and invoices that make it clear that payment is a condition precedent (ask a lawyer!).
• Register your works properly (and in a timely manner).
• Don’t be willfully blind to potential infringements then try too late to go after them.

I have railed against companies that are not run by attorneys but that offer “infringement enforcement”; but I haven’t really done anything about it. I mean, I continue to do the legal work I do, including going after infringers for my clients, but the process of searching for the infringements, flagging those for possible pursuit, etc., is not something I’ve been able to offer.

That may be changing.

I’m not making any promises, but it may be possible that I could have a service where you would upload your photos/visual works, get regular reports on the uses online, and then be able to tag those result for legal follow-up by me. This would hopefully reduce your time/efforts in finding potential infringements and keep everything in one place, so to speak.

I’m working with a developer now to see if this can be done, at a reasonable price-point (I’m certainly not made of money nor do I want to hit y’all up for big fees).

This is where you come in: how would you like this service to work? I have developed a little Typeform survey asking some specifics about this. I’d really appreciate it if you’d fill it out and let me know what would work for you.