Licensing Like a Champion (Can it be an Afterthought?)

Fall is back, and, in the United States, that means pumpkin-flavored products and (American) football galore. If you have not yet eaten pumpkin-flavored pop-corn, drunk pumpkin-flavored coffee and watched at least one game of football, well, your neighbors probably consider you to be weird. 

So grab a pumpkin-flavored cookie and read this blog about a recent Second Circuit decision, Spinelli v. National Football League, No 17-0673 (HT Court House News for the link to the document). The case is about copyright licensing, retroactive and royalty-free licensing and a touch (down) of football.

Plaintiffs are seven sports photographers. Defendants are the Associated Press (AP), the National Football League (NFL) and the 32 NFL teams. If you do not know the names of the NFL teams, you can read their complete list in the document (The Falcons! The Steelers! The Forty Niners!)

The photographers filed a copyright infringement suit in 2013 against the NFL and AP in the Southern District of New York (SDNY), claiming that AP had granted the NFL a royalty-free license without permission from the authors of the photographs.

Plaintiffs also argued that the NFL and AP had conspired to restrain trade in the market for commercial licenses of NFL event photographs thus breaching antitrust laws (I will not write about this issue).

Defendants moved to dismiss and the SDNY granted their motion in 2015. Plaintiffs appealed. On September 11, 2018, the Second Circuit remanded the case which is now likely to go to trial.

In order to take and use photographs from an NFL event, one needs to secure a license from the NFL, as such photographs almost always contain NFL trademarks. Getty had the exclusive worldwide right to license NFL’s pictures from 2004 to 2009, and then AP became the NFL’s exclusive licensor.

Plaintiffs had entered into “contributor agreements” with AP which allowed them to access NFL events, and to obtain licenses for the intellectual property contained in the photographs they took at these events. Plaintiffs took thousands of NFL photographs, during games or practices. Some of these pictures feature NFL trademarks, but others did not.

The 2009-2012 NFL-AP agreement

The original agreement between the NFL and AP, which lasted from 2009 to 2012, had granted the NFL a royalty-free license to use “AP-owned” images, but had not extended this license to images taken by non-AP contributors. However a new agreement, entered into in 2012, extended the royalty-free license granted to the NFL to photographs taken by non-AP contributing photographers.

Plaintiffs had indeed provided AP a “perpetual, irrevocable transferable worldwide right and license to reproduce, edit, translate the caption of, prepare derivative works of, publicly perform, publicly display, load into computer memory, cache, store and otherwise use“ their works along with the right to "transfer or sublicense these rights to other entities." This agreement was lucrative for the Plaintiffs, as AP payed royalties when it licensed one of the works. At issue in this case was whether Plaintiffs had thus allowed AP to grant royalty-free licenses to the NFL.

For the SDNY, copyright law gives copyright owners and their exclusive licensees the right to freely grant a license "after the fact" as they see fit, quoting Wu v. Pearson, 2013 WL 145666, at 4: "[T]here is no legal prohibition to obtaining a retroactive license if it is authorized by the rights holder." Plaintiffs had argued instead that, citing the 2007 Davis v. Blige Second Circuit decision, that AP could not grant a retroactive license. In Davis, the Second Circuit had rejected retroactive copyright licensing as a way to cure past infringement.

In our case, the Second Circuit found that even though facts in our case were slightly different than the ones in Davis, the court had to come to the same conclusion. The Second Circuit reasoned that Plaintiffs had the right, before the execution of the 2012 AP-NFL agreement, to sue the NFL for copyright infringement. Therefore, if AP could grant a license to the NFL retroactively in 2012, that right would have thus been extinguished, and “[d]oing so was impermissible, irrespective of whether AP had the authority to issue a prospective license to the NFL starting in 2009.”

The case was kicked back to the lower court

The SDNY had dismissed their claim because the license Plaintiffs had provided AP was as broad as their own copyright in their photos, and “[n]othing in the license require[d] AP to issue only royalty-bearing sublicense.” For the SDNY, the language of the agreement made clear that the rights granted by Plaintiffs to AP, including the right to sublicense, were “broad and unlimited.”

However, the Second Circuit found the 2012 contract to be “ambiguous” and recognized that it could be interpreted as limiting the ways AP can sublicense Plaintiffs’ photographs to third parties. The court remanded the case to the lower court. Litigation is not a contact sport. But you must win the last game.

Photographic Copyright Infringement

Apparently it is a tough time to be a professional photographer. Last week brought news of two cases wherein multinational corporations allegedly exceeded licensing terms and consequentially engaged in large scale photographic copyright infringement.  

On October 21, a group of seven high profile sports photographers filed a federal lawsuit accusing the National Football League (NFL) of "rampant, willful and continued" copyright violations. The plaintiffs also accuse Getty Images and the Associated Press of "illegal and unethical misconduct which permitted, encouraged and contributed" to the copyright infringement. At issue were photographs shot at NFL games. These were typically licensed to the NFL through the licensing agencies, Getty Images and the Associated Press. In the complaint the plaintiffs argue that the NFL went beyond the terms of the agreement by using the photographs in connection with advertising, news reporting, promotional materials and products. Due to its market power, the NFL was able to cut deals with the licensing agencies which allowed them to use the content on a royalty free basis. The complaint, however, did not include any antitrust or unfair competition claims.

In addition, a New Jersey judge refused to dismiss a case against Pearson Education. Pearson, who claims to be the largest producer of college textbooks in the world, allegedly has infringed the copyright in four thousand photographs. The claimants, Minden Pictures (a stock-photo corporation based in California) and twelve photographers, had previously licensed Pearson to use their works within the US. They now claim that Pearson went beyond the terms of the license by distributing the photographs internationally. 

Internet openness and copyright: Google and EU Commission agree

Sergey Brin

So far, this week has been very interesting as regards internet openness, also because of converging views from industry and politics.

Last Sunday, Google co-founder Sergey Brin had an interview with The Guardian, in which he talked about the challenges facing the principles of openness and universal access. These have been considered as cornerstones of the internet for three decades. Brin explained that there are "very powerful forces that have lined up against the open internet on all sides and around the world". Because of this, he is "more worried than [he has] been in the past ... It's scary." Threats to internet openness come from a combination of factors, these being (1) attempts by governments to control access and communication; (2) efforts by the entertainment industry to crack down on piracy; and (3) the rise of restrictive walled garden such as Facebook and Apple, which are busy controlling what software can be released on their platforms.

Neelie Kroes

Very similar concerns have been expressed today by Neelie Kroes, Vice-President of the European Commission responsible for the Digital Agenda, at the World Wide Web Conference in Lyon. Indeed, her opening remarks echoed those of Sergey Brin:

“The best thing about the Internet is that it is open. Indeed it's built on the idea that every device can talk to every other, using a common, open language. That's what explains its seemingly endless growth."

Commission's Vice-President further elaborated on this:

Does getting these in the mail
qualify as harassment?

"Only the other day, the Free Software Foundation wrote to me about open standards. With their letter they enclosed something I don't normally get in the mail, a pair of handcuffs. Because they're worried about 'digital handcuffs', and wanted to know if I am with them on openness. And the answer is yes. Let me show you, these handcuffs are not closed, not locked. I can open them if and when I want. That's what I mean by being open online, what it means to me to get rid of 'digital handcuffs' ... The benefits of openness are clear. And when it’s as simple as an oppressive government trying to turn off the Internet, it's clear that we need to do what we can to prevent that."

Cutting-edge techniques to change one's own mindset

In Kroes’s speech there was room for copyright, too. Perhaps a bit cryptically, but there was a reference to the need for new rules in the digital environment.

"Sometimes the problem is ancient, pre-digital rules that we need to cut back or make more flexible. Other times, openness actually flows from strengthening regulation. And sometimes it's not about changing the rules at all, but about changing a mindset. People need to realise: they don't have to look backwards to the constraints and habits of the past; they can look forward to the open opportunities of the future. But that can take time."

Speaking specifically of copyright, Ms Kroes confirmed what the Head of Unit - Copyright, DG Internal Market & Services, Maria Martin-Prat, mentioned last week at the Fordham IP Conference (see earlier 1709 Blog post here). In particular, the complicating licensing systems for copyrighted material in Europe is deemed to prevent Europeans from enjoying great content and discourage business innovation, thus failing to serve the creative people in whose name they were established.

"Indeed, whether you're talking about audiovisual works or scientific information, current systems don't respond nearly well enough to online realities. And these are both areas we are looking at, including through updating EU copyright rules. And through new recommendations on access to publicly funded scientific research results and data."

Having said this, Ms Kroes, in line with Mr Brin, added that openness does not come at the expense of privacy or safety, as fundamental rights, liberty and security are guaranteed together. Being born very suspicious, this blogger spotted here a reference to legislative initiatives which are now discussed in Europe and the US. In particular, it is not difficult to think of ACTA and all the bustle it has been creating worldwide. The reference can also include other ongoing initiatives, at the level of EU Member States and the US alike. As to the former, one may think of the debate in the UK over email and web use monitoring (here). As to the latter, it may not be difficult to spot a reference to new US proposed legislation (now that SOPA and PIPA are in disgrace) known as Cyber Intelligence Sharing and Protection Act, or CISPA.    

Stay tuned for the next moves.

How do you solve a problem like Orphan Works?

Yesterday evening, a milestone in the ongoing discussions about copyright and (more importantly) orphan works was reached. A Memorandum of Understanding (PDF) to approve the digitisation and making available of out-of-print books and journals was signed by representatives of European rights holder societies, creators, authors and libraries. It has taken nearly a year, but all stakeholders in the process were finally able to agree on three main principles whichwould allow cultural organisations to make a greater portion of their collections available online:

1. Agreements must be negotiated on a voluntary basis by all relevant parties to determine what is to be digitised and to ensure that the items in question are no longer in "commerce" (works which were once published and which neither publisher nor author intends to re-print and sell again). Moral rights are key to this process and authorship(where known) must be acknowledged;


2. Collective licences may be granted by collection management organisations where a substantial number of authors and publishers are represented. Digital library projects must be widely publicised and rights holders given the option to opt out of any collective licensing scheme;


3. Collection management organisations may limit licences to those of represented rights owners only (rather than on behalf of all rights owners) if agreements include trans-border and/or commercial uses of works.

However, whilst an agreement of this kind is clearly satisfactory to rights holders, it remains to be seen whether libraries and other cultural institutions will truly benefit. The optimism of Olav Stokkmo (CEO of the International Federation of Reproduction Rights Organisations) that this MoU will solve the problem of orphan works is misplaced; large numbers of orphan works that reside in libraries and archives were never 'in commerce' (they are often unpublished, such as letters, diaries and manuscripts) and as such one wonders whether the scope of the MoU would extend to them. In addition, the issue of orphan works covers all types of work; the MoU deals only with text-based works where rights clearances are easier because there is traditionally one author and one publisher, whereas for audiovisual works there are often many independent rights holders to trace.

EU Member States are not required to implement the terms of the MoU,as it has little or no legislative weight. There remains an expectation that legislation from the EU on orphan works is imminent,with the issue currently being discussed at length in the UK as aresult of the Hargreaves' Review of Intellectual Property.

Photo: 'More old books...' by guldfisken (Flickr), reproduced under CC-BY-2.0

Reclaiming the Rights that are Left - Corrected

Note on Corrections: Yesterday, I posted about jazz musician Frank Foster’s reclaiming of his copyright in the song “Shiny Stockings”.  But, I cited and applied the wrong law, Section 203 of the US Copyright Act instead of Section 304.  Section 203 applies to rights transferred after 1977, not before 1978 as I had stated.  A very nice gentleman at the US Copyright Office was kind enough to bring this to my attention.  The corrected post is below.

-----------------------------

There’s a great story over at Jazz Corner about an artist protecting his rights under the US Copyright Act.  Often, criticisms of serving big companies and leaving the artists out in the cold are leveled at the Copyright Act, so it’s nice to see an occasion where the Act is working positively for the artist.

The Artist

Jazz Corner’s report does a nice job of covering the humanitarian side of the story.  I’ll offer a short summary here, but suggest you read the piece there for more information.  Saxophonist Frank Foster wrote a very popular jazz tune called “Shiny Stockings.”   And like many other musicians, he signed away the rights to the song without really knowing what he was giving up. (NPR story on that issue here.)  But now, he is going to get his royalties with the help of the Community Law Clinic at Rutgers Law School.  [A demo of the film documenting Foster’s story can be found here.]

The Work

When “Shiny Stockings” was penned in the mid-1950s, it was covered under the 1909 US Copyright Act.  This Act provided copyright protection for a term of 28 years, with an option to renew for another 28 years.  Before the first term could expire on “Shiny Stockings”, a new copyright act came into effect.  The US Copyright Act of 1976.

The Law

The 1976 US Copyright Act made a number of substantial changes to the US copyright law. As such, the new act needed to provide for a variety of different situations, including protection of existing non-published works, works that had already been renewed once and works that were in their first copyright period under the 1909 Act.  Section 304(c) provides a special protection for artists whose works fall under the second two categories. 

Since the 1909 Act provided for two 28 year terms (with renewal), authors could transfer or license their rights for up to 56 years, the entire possible term of the copyright.  The 1976 Act added extra years to the copyright term, years the authors didn’t know they would have when they transferred away their rights.  So, the 1976 Act provided a way for authors to reclaim the extra years. 

Under Section 304(c), authors who transferred their rights in a work prior to 1978 have an opportunity to take back their rights after the end of the term they thought they were giving away.  The window for this opportunity opens at 56 years after the original copyright date and stays open for five years.  Sort of.  The author has five years within which to terminate the original grant, but the author has to give the grantee two-years written notice.  (Notice must also be given to the Copyright Office before the termination occurs.)  Then, of course there’s another catch that makes the math more complicated.  The notice can be sent out as early as ten years before the termination date picked by the author.  So what the author actually winds up with is something like this: (click to view full scale)

“Shiny Shoes,” which was first copyrighted in 1956, so Foster could have requested transfer anywhere from 2012 to 2017.  Once the transfer is effective, Foster will have all the rights which the original transfer had given away, until the end of the work’s copyright term.  For “Shiny Shoes” that full term is 95 years, until 2051.*  Foster and his heirs will get roughly forty years of copyright royalties that the otherwise wouldn’t have received.  Not bad.

 

*The nice gentleman that send the correction also provided information that “Shiny Shoes” was renewed for its second copyright term in 1984, making it eligible for the 95 year full term under the Sony Bono Copyright Term Extension Act.  See Section 304(b).

Again, my sincere thanks to the gentleman for his note, and my apologies to The 1709 Blog readers for the incorrect information in the previous post.

Reclaiming the Rights that are Left

The author has temporarily removed this post to fix some critical errors. Thank you to Mr. David Carson for kindly pointing these out.

Flickr Teaming with Getty – Good for Copyright Holders?

Yesterday, Flickr announced a new program available to its users – licensing through Getty Images.  Through the program, users can add a “Request to License” link next to their photos.  Viewers who click this link are put in contact with Getty Images.  Getty licenses the photo to the viewer on behalf of the Flickr user and transfers payment from the viewer to the Flickr user.

At first glance, this program may seem like a really good opportunity for photographers.  But Flickr users interested in the Getty program need to think carefully before jumping on board. 

Getty Images is a large, professional, photo clearing house that has been in business for a long, long time.  Although working with Flickr is a foray into the future, Getty is still an institution based on old business models.  This means a lot a lot of legal gymnastics for anyone wishing to participate, as a photographer or a licensee.

You can check out the FAQ section for more information on model license requirements, the 2-year exclusive contract required for the program and other program details.

Beneficial?

As one Getty program user and supporter comments,

“The effort is not minimal. Gathering model releases, unloading full size images, doing any post processing required, filling in photo details, having to book the shot date in about three different places, uploading model releases seperately [sic] for every photo even if you have the same release for 5 photos from one shoot.”

With all this work required to submit photos, plus the restrictions of a two-year long exclusive contract that prohibits anyone other than Getty Images from licensing your submitted photos and photos similar to your submitted photos – yes that includes even you – is there really any benefit to participating?

After all, there really isn’t a need for a third-party intermediary for licensing photos on Flickr.  Every photographer can easily be contacted via Flickr Mail.  Why should it be necessary to ask a third-party for permission when you can already ask the copyright holder directly?  Additionally, many photographers have already granted licenses to use their photos, without the need to contact anyone.

The most apparent benefit, currently, appears to be the vetting.  Photos admitted to the Getty program are thoroughly reviewed by Getty Images and approved for admission to the program.  Knowing that the vetting is already done might make some photo users feel better about the search process for the right image.  However, Flickr has a strong community that can also serve as a vetting process based on how many views, uses and comments a photo receives.

In the end, the program seems to be more of a way for Getty to increase the number of photographers in its pool than to really help copyright owners with licensing.  But perhaps this judgment is coming too early.