Navigating Your Options in an Infringement Claim

Navigating Your Options in an Infringement Claim

Business

There are two categories of photographers in the world—those whose work has been infringed, and those whose work will be infringed. Sooner or later, it’s almost certain that it will happen to you. You’ll be casually scrolling through your social media feeds, or maybe researching a potential client’s website, when suddenly, you pause in disbelief as the reality sets in: your work has been used without your prior knowledge or permission.

DISCLAIMER: I am not an attorney and nothing in this article should be construed as legal advice. The topics and content outlined in this article are meant to provide talking points for a conversation between you and your attorney. Some or all of the topics discussed here may not pertain to your individual circumstances, and the information is provided without warranty or guarantee of any kind.

Why does this happen so often? I believe the massive proliferation of online infringement in recent years is attributable to several factors. The ease of access to high-resolution image files online (necessary for today’s higher-resolution displays) means that someone can just right-click and save (or screen-shot) an image without special software. Given how many people were willing to sit at their computer for hours on Napster—on a dial-up connection, no less—just to snag a gritty MP3 of the latest Eminem single, it’s no surprise this non-existent barrier to entry makes our images seem like low-hanging fruit, ripe for acquisition and use. Social media, a now-vital component in marketing and advertising, encourages a culture of “sharing” which leads to the expectation that our work becomes some sort of community property once it’s online (as well as sneaky hashtag rights-grabs and infringements within Instagram and other platforms). There’s also the perceived anonymity in using images online and/or relatively low probability of being caught, which may be the most significant factor of all.

Until the last few years, photographers had very limited tools to locate uses of our work online. Thankfully, advances in blockchain and AI-driven technology have empowered photographers with efficient ways to crawl the web for instances of any image within our entire body of work, even if it’s been modified. To illustrate the vast extent of ways our images are routinely used without our permission, here’s only a sampling of the infringement claims I’ve recently dealt with, none of which I would have known about if not for my discovery service:

  • The interior designer of a listing I had photographed reached out to me to ask about obtaining copies of the listing photos. I responded with licensing rates and a preview link, to which they responded that they would get back to me. The images appeared on their website a couple months later.
  • A cleaning company used interior images of mine as examples of “their work,” even though they were located over 1,000 miles away from the subject property.
  • The manufacturer of a kitchen cleaning spray used one of my photos to promote their product on their website.
  • A web designer used one of my images in their own website design that they sold to at least three different real estate agents.
  • Various real estate agents have used past listing photos of mine to sell or lease either the same property or, in the case of a condo, another unit in the same building.

This article is not meant to cover all the virtues of enforcing your copyrights, nor will I go through many specifics of copyright litigation. However, Mike Boatman recently penned a rather comprehensive article on the subject entitled “Real-World Copyright Litigation: A Photographer’s Viewpoint” on the PFRE blog, which I recommend for further reading.

Returning to the earth-shattering moment where you first realize your work has been infringed, and a wave of indignation and seething rage begins to wash over you, the obvious question arises—how should you handle this?

Step #1: Take a Deep Breath

Your first infringement is always the hardest, and the initial response is usually more emotional than logical. You likely have a number of thoughts and feelings swirling and colliding to produce a state of confusion and irrationality. You might feel victimized, angry, disappointed, panicked, or any combination. Just as seeing your own name in print can be gratifying, the lack of consent to publish your intellectual property (and usually lack of a photo credit) can leave you feeling cheated, unappreciated, and used. Most photographers earn a living based on the value of our work to others in the form of usage licensing, so spotting an unauthorized use of your work often invokes the same sickly feeling of learning that someone has stolen money from your bank account because, in a way, that’s exactly what happened.

However heinous the misappropriation of your imagery, it is critical that you set aside your fiery emotions and prevent those feelings from clouding your judgment. The infringing party does not care that the images were forged in the crucible of an all-night editing session or that you spent three days waiting for the right weather conditions—in fact, they may not realize they’ve done anything wrong. Because you do not yet have all the facts, it’s best to keep your emotional ammunition to yourself for the moment. Take a few deep breaths, go get a glass of water, and come back to this process when you have calmed down.

Step #2: Capture Evidence

I recommend capturing visual evidence of the unauthorized use right away, before even mentioning the infringement to anyone. It takes very little time, there’s no harm in doing it even if you choose not to pursue it, and it may well end up determining the fate of your claim. Many infringers will remove images immediately upon notification of an infringement claim, usually to comply with our express or implied demand that the images be removed. However, if they remove the images or webpage and you haven’t already documented the unauthorized use, this leaves you with no proof of the claimed infringement.

Capturing evidence is a fairly straightforward process and can be performed using screenshots or video recordings of your computer screen (this is particularly helpful for websites requiring a lot of scrolling). Out of an abundance of caution, I usually also save a PDF of the webpage, which usually shows the exact URL where the images are displayed. To capture screenshots:

Mac:

  • Capture full screen: Command + Shift + 3
  • Capture partial screen: Command + Shift + 4 (then click and drag)

Files will be saved directly to the desktop.

Windows:

Windows Key + Shift + S activates the Snip & Sketch tool that assists with capturing screenshots.

Step #3: Assess Eligibility for Damages

Even with the disclaimer prominently featured at the outset of this article, I feel compelled to remind you that I am not an attorney and that the actual assessment of the potential value of a copyright claim should be a conversation between you and your attorney. Intellectual property law is incredibly complex, and your individual circumstances (such as where you are located or where the alleged infringement took place) may render some or all of these general rules inapplicable to your own situation. My personal expertise on this topic is limited to the United States, so your mileage (or kilometers) may vary. Please consult with a qualified attorney in your local jurisdiction.

There are two types of infringement damages you can seek under U.S. Copyright Law: statutory damages, and actual damages. The Digital Millennium Copyright Act (DMCA) also provides avenues for recovery in the event Copyright Management Information (CMI) is removed, altered, or falsely applied. Statutory damages consist of a range of awards codified into law for various degrees of infringement, along with the option to sue for attorney fees—this is often just as important as the amount of the award itself. Actual damages are just that—your losses as the copyright holder, and the infringer’s profits derived from the infringement. Because actual damages can be difficult and costly to prove, the statutory option is typically preferred. Generally speaking, in order to qualify for statutory damages (and the all-important attorney fees), the images must be registered within 90 days of original publication or prior to the occurrence of the infringement.

If your infringement doesn’t qualify for statutory damages, don’t lose all hope. Depending on the nature of the image use, actual damages can still be significant and worthwhile to pursue, even after attorney fees. Carolyn Wright, author of photoattorney.com, has published a helpful flowchart that provides a general idea of the potential statutory, actual, and DMCA-related damages in an infringement claim.

Before taking any action, I recommend reaching out to a qualified attorney in your area. Most attorneys will provide you with a brief, confidential intake and assessment of your case at no charge. Be respectful of their time: be prepared, have relevant dates and facts at the ready, listen more than you speak, and have any captured evidence ready to send at their request.

If the attorney determines that your claimed infringement does not qualify for statutory relief (which also means you cannot recover attorney fees), they will likely be unwilling to represent you on contingency, meaning you will have to engage them on an hourly basis. It is not uncommon for attorney fees and expenses to exceed $70,000 in the first six months of litigation, which you should take into consideration when deciding how to proceed. However, if the potential actual damages are significant, it may be worth it. Do not underestimate the potential for recovery even if you do not have the statutory option. One photographer received a judgment of $1.6 million in actual damages when a company misappropriated his work for commercial purposes. Each infringement case should be treated uniquely, and if your attorney gives sweeping generalizations or imperially decides on a singular dollar amount prior to knowing all the facts, be wary and do not hesitate to get a second opinion. 

Step #4: Determine Your Course of Action

Once you are prepared to make an informed decision, you basically have three options, some of which could be utilized in combination:

Option 1: Reach out to the infringer directly

The typical goal in pursuing this method seems to be to de-escalate the situation as much as possible and possibly even obtain a future client from it. There is definitely an argument for building bridges wherever possible, but I have found that people who use others’ paid work in order to avoid paying to commission or license their own photography typically do so because they either do not have the budget or do not understand the value of photography—in either case, this eliminates them as a target client for me.

I have found this method to be a good choice if I am willing to forego monetary recovery in favor of voluntary removal of the images (particularly if the infringing party is related to my own client and complies with my request). However, while most infringing parties have been willing to remove the images from their website, in my experience, exactly none have been willing to voluntarily settle with me for the infringing use, nor would they pay to license the images for future use. As a working professional, I am unable to sustain the loss of time and money spent on pursuing the mere removal of infringing uses of my work, so monetary recovery is typically a necessary component for me to offset the harm caused by the infringing use.

Should you decide to contact the infringer on your own, with or without the expectation of financial recovery, be aware that they will likely respond with one or more common excuses, which can be time-consuming to refute. Additionally, tread carefully: this process is fraught with opportunities to shoot yourself in the proverbial foot. I learned this the hard way years ago when reaching out to a media company that had infringed some of my real estate images. After cobbling together the best information I could obtain from Google searches and a few posts in online forums (hint: this turned out to be objectively bad advice), I sent a demand letter via Certified Mail, citing a specific license fee and what was essentially an additional “fee” for the infringement. Unfortunately, negotiations quickly went south as the infringer’s corporate counsel decided to test my veracity to pursue the matter, and by the time I engaged my own attorney, they were in a weakened negotiation position because I had essentially placed a maximum value on the infringement at the outset. This is why I do not recommend sending an invoice in an infringement situation. Ed Greenberg and Jack Reznicki, authors of thecopyrightzone.com, further discuss the pitfalls of sending an “invoice” or similar communication in an infringement situation, along with other bad advice photographers typically receive from our peers, in “Big Mistakes Into Small Opportunities.”

An example of why you shouldn’t ignore a DMCA takedown

Option 2: Issue a DMCA takedown notice

The Digital Millennium Copyright Act provides a legal avenue to request removal of infringing content by sending a takedown notice to the provider of the server on which the images are hosted. Upon proper notice, the ISP is required by law to act on this notice or face liability for continuing to host the infringing content. You can find more information on this process in this article on the NPPA website.

I will typically utilize a DMCA takedown by itself if the infringement is unlikely to merit the pursuit of financial recovery, and the infringer is a third party unrelated to one of my clients. The good news is that most ISPs take such notices quite seriously, and if the infringer fails to remove the images of their own accord, the ISP may take the entire website offline until the issue is resolved. This usually gets the infringer’s attention, and in cases where they refused to even acknowledge the situation, I’ll admit to relishing in the schadenfreude of imagining the infringer’s head explode when they realize their site has been taken offline.

However, DMCA takedowns can involve an investment of time researching and compiling documentation, and there are procedures in place for the infringer to respond in the event they believe their use is authorized or otherwise does not infringe your copyright. Nevertheless, once you have a proper template in place and understand how to locate the ISP, the process is fairly straightforward.

If you plan to pursue the infringement via an attorney, check with them before deciding whether to issue a DMCA takedown in conjunction with their recovery efforts.

Option 3: Pursue the matter with an attorney

As a commercial photographer, this is the method I have found to be most appropriate to deal with any infringements where a financial resolution is sought, for several reasons. First, I simply do not have time to track down and individually pursue infringers (which is often fruitless anyway, for reasons previously stated). Second, it’s common for photographers to undervalue our own work, and an attorney will be able to more accurately assess the potential value of an infringement claim. Finally, while a pre-litigation settlement is most desirable for both parties, some cases do require litigation, and the extensive rules and procedures of the federal district court (where copyright cases must be filed) make it nearly impossible to be an effective pro se litigant. I have found that hiring a skilled attorney pays for itself, both in the form of increased proceeds and, hopefully, the ability to strike a deal without the need for litigation.

Attorneys’ fee structures will vary widely based on their skill, experience, and commitment to the case. If your infringement is eligible for statutory damages, most attorneys will represent you on contingency, meaning you pay little or nothing upfront, and they are paid a percentage of the proceeds from the settlement or judgment. This percentage often varies based on whether or not a lawsuit is filed, and how far the case progresses from there. If you don’t have an established relationship with an attorney, I recommend researching several in your area with a specialty in intellectual property/copyright. Make sure to research their online reviews as well as any possible sanctions by the court. Do not feel compelled to make a decision until you are comfortable doing so.

Step #5: Brace for a Potentially Lengthy, Intense Process

I remember the overwhelming feelings of vindication and relief upon receiving the check from my first infringement claim. I also remember the nearly twelve months it took to get to that point, involving many sleepless nights, juggling my schedule around numerous and lengthy telephone conferences with my attorney, nail-biting back-and-forth negotiations, and the uncertainty of whether it would all end up being worth it.

While enforcement of my copyrights has been both necessary and worth the effort, it’s not without sacrifice. Particularly with your first infringement, it will take an emotional toll, as well as consume valuable time you could otherwise spend building your business and further improving your photographic skill. Do not expect that merely sending a demand letter, no matter how eloquent, will cause the other side to cower in fear, issue an apology, and cut you a check on the spot. Often, infringers without an attorney on retainer will ignore your demand letter, take the images down but refuse payment, or even accuse you of “extortion” and other forms of ill will. Some will go so far as to use their Google-based expertise and respond with all sorts of nonsensical statutes and case citations. Those with legal representation are often more reasonable, but there is still the usual exchange of bravado throughout the theatrical negotiation process. This can be very stressful and time-consuming, and may seem nearly impossible to handle when you are not represented by counsel (hence why I advocate working with an attorney). I am not saying this to dissuade you from standing up for your rights; I only want to prepare you for the challenges inherent to the process.

Prepare for the Inevitable

Given the rampant nature of online infringements, it’s easy to believe we live in a digital version of the Wild West. Well, if we are, there’s one ace you always want up your sleeve: register your work—all of it. Without timely registration, you’re ineligible for statutory damages, and the all-important attorney fees. In many cases, you’ll be, as the saying goes, “all hat and no cattle.” Okay, enough clichés—my point is that timely registration is the single most important factor to give your work the best possible protection.

By the way, the only legally recognized copyright registration in the United States is through the United States Copyright Office. Some photographers believe that mailing themselves sealed copies of their work by Certified Mail will provide them some sort of protection. This process is known as the “poor man’s copyright,” which I can only imagine is called that because if you ever have to rely on it, it will leave you poor. This process potentially proves ownership, but proof of ownership does not amount to registration under the law. Similarly, avoid online services that claim to “register” your work for free as an alternative to registration with the USCO. Again, uploading your work may help prove ownership, but that’s about it. Some discovery services do assist with USCO registrations, but there is always a cost levied by the copyright office.

Particularly if your service offerings include real estate photography or other higher-volume forms of work, it may seem like a daunting task to register all your work, which leads many photographers to filter out certain properties from copyright registration. Do not underestimate the value and desirability of even your least favorite works. Eligibility for statutory damages and attorney fees places you in a much stronger negotiation position, and even a single infringement action will generally pay for your registration fees for the year, at least. You can register up to 750 images at once, as a group of published images, subject to USCO’s additional terms. Registering every three months or 750 images, whichever comes first, is generally sufficient, but as always, check with your attorney on what will work best for your situation.

It’s Not Easy, but It’s Worth It

The ongoing commitment to defending your intellectual property rights can be stressful and time-consuming, but I have found it to be well worth the effort; not just in protecting my financial interests in the value of my work, but in the sense of justice I get from knowing I stood up for myself. In my experience, until infringing parties face consequences, the behavior will not change. Even companies who know better, already employ a motto of “ask forgiveness rather than permission,” because most photographers do not take them to task for it. If people know they can get away with using your work, they have little motivation to pay you for it. Consistent copyright enforcement improves the landscape for all photographers, helping to preserve the value and therefore the sustainability of our work.