Photographs As Protectible Forms of Expression

Written by: Karl Braun, Esq.

Photographs represent a unique and plentiful form of personal and professional expression. Photographs also constitute intellectual property. The pervasive proliferation of photographs on the internet via social media, advertising, news stories, branding, etc. blurs our understanding of associated intellectual property rights. We have clients often inquiring about the unauthorized use or sharing of their photographs. We also receive inquiries from recipients of notices alleging infringement related to the use or sharing of photographs. Who can bring an action for infringement of a photograph? How can we protect our own photographs? What damages are available for infringement of a photograph?

Copyright protection begins at the time that an “original work of authorship” is “fixed in any tangible medium.” In other words, if you compose a song by playing the guitar and singing, you enjoy copyright protection as soon as you “fix” your new song in any “tangible medium of expression.” One tangible medium of expression is a transcription of your song on paper.[1] Since, Section 102 of the Copyright Act includes “mediums of expression” which can be “perceived with the aid of a machine or device,” your song will enjoy copyright protection if you make a recording of yourself playing and singing the song.

The same principle applies to other tangible mediums of expression such as works of visual art, sound recordings, architectural works, movies, dramatic works (including accompanying music) and photographs. Reduce your original work of authorship to a tangible medium of expression and you enjoy copyright protection in that original work. Accordingly, you can display the appropriate notice of copyright[2] on your original work to inform the public of your copyright ownership immediately.[3] You can display the notice of copyright ownership on your original work regardless of whether you have registered the work with the U.S. Copyright Office. However, you cannot institute a copyright infringement lawsuit for infringement of your original work unless and until you have registered the work appropriately.

Additionally, federal copyright infringement actions are extremely expensive both to prosecute and to defend.[4] As such, remedies for infringement have been more theoretical than attainable for most potential plaintiffs. Another important benefit of registration, therefore, is the potential to receive statutory damages and attorney’s fees. However, the Copyright Act limits the availability of statutory damages and attorneys’ fees to only those plaintiffs who have registered their copyright prior to the commencement of the infringement.[5] Statutory damages can be very important for photographers since statutory damages do not require proof of actual damages caused by the alleged infringement. If the infringement is found to be willful, statutory damages can be as high as $150,000 per infringement. For innocent infringement, however, statutory damages can be as low as $200 per infringement. Alternatively, actual damages are available as well as the profits of an infringer. Actual damages can be proven in various ways including through evidence of industry standard licensing fees. Proving an infringer’s profits only requires proof of the infringer’s gross revenue. The burden then shifts to the infringer to prove any deductible expenses or revenue attributable to factors other than the alleged infringement.

Last year, Ruth Bader Ginsburg (writing for a unanimous Supreme Court) resolved a relatively long-standing circuit court split regarding the registration requirement of the U.S. Copyright Act (17 U.S.C. §411(a)). In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC,139 S. Ct. 881 (March 4, 2019), the Supreme Court held that “…registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright.”

Prior to Fourth Estate, copyright owners in certain judicial circuits could institute copyright infringement suits after merely submitting a proper application for registration to the U.S. Copyright Office with the accompanying fee. Previously, registrants in the Ninth Circuit, for example, could institute an infringement lawsuit without awaiting action by the Register of Copyrights on their pending application. Sometimes it can take as long as 6-8 months after registration and before the Copyright Office issues a certificate of registration. Fourth Estate has made clear that prompt registration is essential for the protection of original works such as photographs.

So, what is the most efficient and effective manner of registering photographs with the copyright office? Obviously, photographers can amass large numbers of photographs in a short period of time. Copyright registration fees currently range from $35 to $55 per registration. The standard filing fee for electronic registration is $55 for basic claims. However, the filing fee is $35 if you register one work, not made for hire, and you are the only author and claimant.[6]  Registering one photograph at a time, therefore, would be prohibitive both financially and based upon the time required for each application. Importantly, although most photographs are protected by copyright as “visual art works,” the U.S Copyright Office will not register photographs that lack a sufficient amount of creative expression.[7]

Determining if and/or when to publish a photograph is an important decision that should be made deliberately. “For copyright purposes, a photograph is published on the specific month, day, and year that a copy or multiple copies of that work are distributed to the public for the first time. A photograph is also published when copies of that work are offered to a group of persons for the first time for purposes of further distribution or public display. The public display of a photograph, in and of itself, does not constitute publication.”[8]

While groups of published photographs have been accepted by the Copyright Office for many years, on December 1, 2016 the Copyright Office proposed new procedures and posted them for public comment. Effective February 20, 2018, the Copyright Office officially instituted new procedures thus “…modernizing its practices to increase the efficiency of the group registration option for photographs.”[9] Both published and unpublished photographs may now be registered with the Copyright Office in groups not exceeding 750 photographs.[10] However, each group must consist only of published or unpublished photographs. The Copyright Office will not accept groups consisting of both published and unpublished photographs. Circular 42 published by the U.S. Copyright Office provides detailed instructions regarding group registrations of photographs and can be accessed at: https://www.copyright.gov/circs/circ42.pdf.

In conclusion, both amateur and professional photographers may now more easily protect their original photographs through registration with the U.S. Copyright Office. We should always be vigilant in respecting the intellectual property of others, including in original photographs. However, as the internet (through social media interaction and otherwise) has exponentially increased the continuous posting, publishing and sharing of photographs, it has become exceedingly more difficult to navigate without inadvertently infringing, or failing to adequately protect, intellectual property rights. As such, consulting an attorney experienced in matters of intellectual property is always advisable.

[1] 17 U.S.C. §102(a) of the Copyright Act sets forth that “…copyright protection subsists in…original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device…”

[2] A notice consists of three elements that generally appear as a single continuous statement: • The copyright symbol © (or for phonorecords, the symbol ℗ ); the word “copyright”; or the abbreviation “copr.”; • The year of first publication of the work; and • The name of the copyright owner. Example: © 2017 John Doe. (U.S. Copyright Office Circular No. 3).

[3] Copyright notice is optional for works published on or after March 1, 1989, unpublished works, and foreign works; however, there are legal benefits for including notice on your work. (U.S. Copyright Office Circular No. 3).

[4] Daniel Morel is a photojournalist who posted certain original photographs to his Twitter account in 2010 after the catastrophic earthquake in Haiti of the same year. Several news agencies including Getty Images re-printed the photographs without Morel’s permission. Eventually a federal jury awarded Morel over a million dollars in statutory damages but only after years of litigation and legal fees and costs reported to be well in excess of 2 million dollars.

[5] Levine v. Landy, 832 F.Supp.2d 176, 184 (N.D.N.Y.  2011). “Specifically, §412 of the Copyright Act provides that no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for … any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work. 17 U.S.C. §412(2).” [emphasis added] Id.

[6] Copyright Office Circular No, 4.

[7] See, U.S. Copyright Office Compendium: Chapter 900 (https://www.copyright.gov/comp3/chap900/ch900-visual-art.pdf). The U.S. Copyright Office will register a visual art work that includes uncopyrightable material if the work as a whole is sufficiently creative and original.

[8] Copyright Office Circular No. 42.

[9] https://www.federalregister.gov/documents/2018/01/18/2018-00687/group-registration-of-photographs

[10] Copyright Office Circular No. 42 offers assistance and information: https://www.copyright.gov/circs/circ42.pdf