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Jan 17 2013

Getty Images Loses Major Case Brought By Photographer Daniel Morel

To say that photo warehouse giant Getty Images just got a taste of its own medicine would be an understatement. In a 58-page decision issued on Jan. 14, Southern District on New York Judge Alison Nathan ruled that Getty, Agence France Presse (AFP), and The Washington Post infringed Morel’s copyrights by disseminating photos he took of the 2010 Haitian Earthquake without his permission. More significantly, Nathan rejected the news organizations’ affirmative defense that Morel granted them a license to use the photos by posting them on Twitter.

I have been watching this case from the beginning because I represent over 850 businesses in claims brought against them by Getty Images for alleged infringement of one or two digital images from their massive stock photo library. I have an entire website devoted to the issue of digital image claims called extortionletterinfo.com. In those cases, Getty repeatedly rejects and belittles many of the exact same legal arguments they raised in this case, many of which are not applicable. First let me quickly summarize the Morel claim.

copyright logoMorel is professional photographer who was able to capture tremendous images from the Haitian Earthquake. A native of Haiti, he was there when the quake struck. But with all lines of communication destroyed in his region, all he could do was post 13 pictures via TwitPic, a service of Twitter. A Twitter user in neighboring Dominican Republic re-tweeted them and they spread over the internet, without any credit being given to Morel, though the Twitter trail could have been followed if anyone was really interested in seeing who originally posted the pictures. Getty then disseminated them to news outlets including the Washington Post without any accreditation or attempt to find the photographer responsible for the breathtaking images. Morel later got credit for his work, winning two World Press Photo awards.

When he contacted AFP about their infringement of his images, AFP filed suit seeking a declaratory judgment that they had not infringed on his copyright, presumably because he had posted them on Twitter. Morel filed a countersuit against AFP and also named Getty and the Post. Morel was represented by Barbara T. Hoffman of the The Hoffman Law Firm and was assisted by Joseph Baio of Wilkie Farr & Gallagher, a prominent NY “white-shoe” firm. A photography collector himself, Baio had followed Morel’s copyright battle and was eager to help. In today’s New York Law Journal Baio said that, while he’s not representing Morel on an entirely pro bono basis, the case is “definitely a labor of love.”

The copyright law governing this case is pretty clear. The person who takes the photo has the copyright and anyone making a commercial use, even a derivative use, of the image is liable for copyright infringement. As Getty has told many of my clients in their strongly-worded, threatening letters demanding $1,200 or more for a single image of a keyboard or cactus, lack of knowledge that an image has copyright attached to is no excuse for infringement. That a third party did the initial infringement is also of no moment in terms of being liable for infringement. We have almost always conceded liability in these “Getty letters” claims and argue on two main points not available to Getty here – that the damages sought far exceed the value of the images where similar images could have been readily acquired for between $5.00 and $20.00 or so and that courts can reduce damages to $200 if they feel that the defendant was an innocent infringers who had no idea he was infringing on copyright when he used the image. Here Getty took one-of-a-kind, iconic images that could not be replicated and as the single largest owners of digital images in the world, how could they argue they were innocent infringers?

The ruling is an important vindication of another point – that merely Tweeting your picture does not allow others to use it for commercial gain. Many folks have recently gone into a panic over the terms of service contained in Facebook and other social media sites that sign over licenses to FB to use (even for commercial gain) the images posted on FB. While that may give FB the right to do so, it does not give any FB follower the right to do so. Same with Twitter’s terms of service, which states that while Twitter may re-transmit what you Tweet “All images are copyright their respective owners.” The judge ruled that these terms of service clearly indicate that Twitter was trying only to benefit itself not any third party users.

The only issue the defendants won on is that Morel and his counsel were trying to hold them responsible for all the million re-tweets of the images after they were posted by Getty Images (Getty by the way labeled them Getty Images when re-posting them). The court held that Getty and the others were only responsible for their own infringement not the ensuing infringement by others. Ironically, in so arguing, the defendants used the famous Limewire case that held that Limewire only owed record labels a single statutory damage award per infringed song, wiping out the recording industry’s bid to seek trillions in damage for the re-use of the infringed songs. Limewire eventually settled for $105 million. One of Morel’s lawyers, Joseph Baio represented Limewire in that matter.

The court in this case set down February 1, 2013 for a court appearance to set a date for an evidentiary hearing on whether the infringement was willful and for a determination of damages. I smell a settlement here (somewhere in the millions) as the defendants will look to cut their losses. Kudos to Ms. Hoffman and Mr. Baio on an excellent and deserving win.

9 comments

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  1. Fric

    I think your obsession with Getty is interfering with your ability to read the facts:

    “Getty then disseminated them to news outlets including AFP and the Washington Post without any accreditation or attempt to find the photographer responsible for the breathtaking images. Morel later got credit for his work, winning two World Press Photo awards,”

    If we’re to rank villains, AFP is número uno. It is AFP that took the images off twitPic and sent them (per an agreement to share photos with Getty) to Getty. Getty is using this fact to keep alive a DMCA “safe-harbor” defense, though the Judge sounds skeptical amd mentions many facts with which a jury could reject Getty as a “service provider” as required by the safe-harbor rules.

    I’m no fan of Getty but I find both here (and at that extortion letter site) that your judgement is clouded when it comes to anything Getty. Yes, the license defense was laughable. Yes, Getty makes arguments at odds with what it says when it comes after your clients (stop feigning surprise). But that shouldn’t stop you from getting the facts correct. AFP took the photos. Sent them to Getty’s computer system (there are open issues as to whether and what extent there was human involvement at Getty upon receipt) and then Getty made them available to its customers and later pulled them down.

  2. Ian

    Lovely.I hope brakes Getty into a million bits.

  3. Oscar Michelen

    Fric: I am not “obsessed” with Getty. Digital image litigation (through my firm and the extortionletterinfo.com site) are a very small part of my practice. And in my blog post I mention how Getty ended up with the images. Yes, the first villain was the person in the Dominican Republic who took Mr. Morel’s pictures and claimed them as his own. Yes, the next villain was definitely AFP who passed them on to Getty without checking their accreditation. But Getty is the world’s leading provider of images and knows very well that it cannot rely on the DMCA to protect itself. It’s not just that Getty is using arguments that are “at odds” with their position against my clients, it’s that they are using arguments that they claim are irrelevant and worthless in the claims against our clients – who by the way are mostly innocent infringers under the law. It’s like the police captain in Casablanca who shuts down RIck’s Cafe by saying the he is “Shocked to find gambling here!” and then is handed his roulette winnings. Thanks for the post

  4. Fric

    Your welcome.

    Except what you wrote was inaccurate: “…Getty then disseminated them to news outlets including AFP and the Washington Post without any accreditation or attempt to find the photographer responsible for the breathtaking images.”

    If Getty supplied them to AFP (instead of the other way around) there would be no Getty DMCA argument. Getty is arguing that it got the Morel images because there is a mechanism in place whereby AFP uploads content to Getty’s servers and it’s thereafter made available to Getty subscribers. Once Getty became aware of the alleged infringment it took them down. Just like any ISP that wants the benefit of the safe-harbor does with respect to third party content uploaded to its servers and made available online.

    You say “But Getty is the world’s leading provider of images and knows very well that it cannot rely on the DMCA to protect itself. ” Google through youTube is the world’s leading provider of videos and relies on it every day. What’s the difference ? One charges for the content (Getty) and one does not (youTube) ? Do you find anything in the DMCA that suggests that is a factor in whether you are an ISP and can assert the safe-harbor ?

    You have to concede the DMCA argument is pretty good to keep Getty alive. I think whether found to be an ISP under the DMCA or not they lose on the facts which won’t satisfy the other requirements for the defense. And, yes, the audacity is amusing but I didn’t write the safe-harbor.

    On the unrelated to this case that “most of my clients are innocent infringers.” You can save it for the Jury. Has any online individual infringer ever not asserted the same ? It seems like the standard reply. Opps, sorry — silly me. I didn’t know; I rely on the kindness of stranger. They should rename it the Blanche DuBois defense.. If I recall the burden is on your client to prove it ?

    And, come on, so they use different arguments to suit their purposes in different cases.You’re as shocked as the police captain.

    I hope AFP/WaPo/Getty get rocked. They dragged their silly reading of the TOS out for over two years !

  5. Oscar Michelen

    Fric: Yes I think that there is a major difference between Getty and You Tube- beyond that Getty charges and You Tube does not. Its that YouTube’s entire model is that it is a place where anyone can post content. I can’t upload my family’s vacation photos onto Getty. They only deal with those they choose to deal with and approve of, so they are much more responsible for the content on their site. I think this critical factor differentiates Getty from the entities the DMCA is designed to protect. It is not inaccurate to state that Getty then disseminated the pictures, that’s what happened after Getty allowed AFP to upload the images onto the Getty catalog without a sufficiently diligent attempt to determine the source.

  6. Fric

    ” It is not inaccurate to state that Getty then disseminated the pictures, that’s what happened after Getty allowed AFP to upload the images onto the Getty catalog without a sufficiently diligent attempt to determine the source.”

    No it is not but you dropped words from your original sentence and what you now wrote is not the error in your description of the facts that I pointed out (twice previously). Yup, Getty was disseminating the photos (that couldn’t be clearer and was the basis of Morel’s failed damage award claim for all such downstream infringement).

    You wrote: “Getty then disseminated them to news outlets INCLUDING AFP [emphasis by me] and the Washington Post without any accreditation or attempt to find the photographer responsible for the breathtaking images” reverses the fact that Getty got the images from AFP not the other way around. An important fact. Without which Getty would have nothing to hang it’s DMCA argument on.

    As to the DMCA defense itself. As noted previously I’m not exactly loving it either because I too have a sense this isn’t really the type of entity or activity the safe-harbor was meant to protect but then I did not think early stage youTube was a slam dunk either.

    You think the critical distinction is Getty “only deal with those they choose and approve of.” So do I think most ISPs with DMCA protection — just more generally, namely, they have a TOS which a user must agree to and they generally retain the ability to terminate anyone they don’t want to deal with.

    Getty deals with a much smaller number of content providers and may go into a much more detailed arrangement with them so they are more responsible for infringement ? To be entitled to the protection anyone must be able to use the service ? Can you point to anything in the law that supports this as the critical distinction ?

    It seems odd. The entity that deals with anyone and involves a huge amount of material and presumably will make more infringing material available is not responsible but the entity that more tightly controls it’s contributors and presumably is making available less infringing material is responsible ? Doesn’t the law simply require either to comply with the take-down (and other) requirements.

    What if I want to set up a system where I get a small group of photographers uploading photos to my server and I do the licensing for them. And it’s all automated (except a photo gets kicked out if not formatted properly when uploaded and then I have to fix it myself), I can’t get DMCA protection ? That’s only for the youTube’s of the world that can handle a massive amount of users/traffic ?

  7. Oscar Michelen

    Fric: You are correct – it is in error to say that Getty disseminated the pictures to AFP, and I have corrected my post accordingly. Thank you for following up on this as I value the feedback and pride myself on being fair and accurate in these blog posts. On the DMCA issue, the point is that Getty and you (in your example) are making money by re-licensing the images. IF you have a site that allows folks to post pictures for other s to see and you do nothing else with the pictures themselves, you could rely on the DMCA. But once you are entering a business relationship with the posters for the re-use and licensing of the images, you have an independent obligation to make sure what you’re selling can be sold.

  8. fric

    Your revised description of the facts dropping AFP from the explicit list of news organizations that received them from Getty doesn’t make it a fair summary of the facts. You wrote, in part:

    “A Twitter user in neighboring Dominican Republic re-tweeted them [photographer Morel's photos] and they spread over the internet, … Getty then disseminated them to news outlets including the Washington Post …When he [Morel] contacted AFP about their infringement of his images, AFP filed suit seeking a declaratory judgment that they had not infringed on his [Morel] copyright…”

    Twitter user re-tweets. Got it. Photos spread over the internet. Got it. Getty disseminates them. Uh, where did Getty get them ? Following your description presumably from “the internet” possibly from Twitter. Next you say, and this is where heads will scratch, Morel contacts AFP to complain of infringement. Where did AFP come from ? Beats me. But you did say Getty disseminated the images to news outlets. So maybe AFP is one of those outlets. Except this is precisely the error you were trying to fix with your revision. Or maybe AFP is some random outlet that also got them from the internet. Again, who knows. Of course, it’s critical in describing the plot that the reader understand that AFP took the photos from Twitter and in turn gave them to Getty. And Getty then sent then made it available to its customers.

    It really isn’t a complicated set of facts. This is try four. My last try and I’ll go right to the opinion because even glancing at the headings gets you almost all the way.

    If all you do is take the section headings (and one sentence) directly from the Judge’s opinion:

    “A. Morel Tweets Photos of the 2010 Haiti Earthquake
    B. AFP Obtains Morel’s Photos
    C. Getty Receives Morel’s Photos
    After their receipt by AFP, AFP transmitted the Photos-at-Issue, credited to Suero, to Getty.”

    Then you can add Getty makes them available to news outlets including WaPo.

    It’s important to get these facts straight otherwise you can’t really follow what is going and, in particular, why Getty still has a live DMCA defense on liability.

    (2) The DMCA defense

    Inititally you thought the key failing for Getty in using the safe-harbor is “They only deal with those they choose to deal with and approve of, so they are much more responsible for the content on their site.”

    When I responded that all service providers (most ?) would have a TOS and retain the ability to terminate a user effectively also “choosing those they deal with and approve of” you now state the key factor to a safe-harbor defense is not (or in addition to ?) allowing anyone to use the service but instead whether the entity/person relying on it “are making money by re-licensing.”

    That may surprise both youTube and Twitter to name two prominent sites that rely on the safe-harbor and that “make money by re-licensing.” youTube takes content then allows third parties to place advertisement in and/or next to the content. Twitter says that it may make your content available to other entities that it partners with to reuse the content (had AFP and/or Getty/WaPo received the content from Twitter that would have likely been the end of Morel’s lawsuit).

    The Judge incidentally didn’t buy your analysis otherwise the Judge would have rejected Getty’s DMCA defense as a matter of law because there was no issue of fact that Getty does relicense. That’s one of Getty’s businesses, right (when not sending out “extortion letters”) ;-)

  9. SCott

    Mother of God Fric, how about you chill out, go for a walk and maybe take a picture or two.

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