My colleague Carolyn Wright sent me this link this morning to an examination of a recent case regarding photography and the law–the Riensdorf v Sketchers case. In this case, the photographer brought an infringement claim against a client who had exceeded the usage granted in the license for the use of the photograph. The client-defendant tried a very interesting and, for photographers, dangerous defense: it claimed that the ad created was of joint authorship and so it was a co-author of the work and, by extension, they could not exceed infringe on their own work.
This is a really smart defense in one way, I have to say. You can read the details in the linked post (or even the actual court opinion linked to in that post), but basically the client-defendant said it did post-production to the photograph and used the photo to create the ad (adding its own creative contribution), so the ad was a work of joint authorship of which the photo was a part and, therefore, the client-defendant could do whatever it wanted with the ad without concern for any license.
As you can read in the article, things were not looking good for the photographer as the court did its analysis. Important factors weighed in favor of the client-defendant! So, what saved the photographer? Separate fees for creation of versus the usage of the photograph, as well as having clear license terms. The court said:
Not only did Reinsdorf charge for his time and effort, but also for “usage” of the photographs. Reinsdorf also attempted to limit Skechers’ use of its ads by including temporally and geographically restrictive language in his invoices to Skechers.
I have argued with my (formerly) fellow consultants for years about the importance of separate fees. They are wrong when they suggest that combined fees are the way to go. Here is yet another example of why it is so important to keep them separate! If this photographer had not made it clear, in his paperwork, that he was charging a Creation/Shoot Fee AND a Usage Licensing Fee, and that the Usage Licensing Fee was for the limited license he was granting, he very likely would have lost this case.
Sadly, the photographer here did not register his photograph before the infringement took place (or within three months of first publication) which meant he only got his lost license fee for this infringement (actual damages)–no statutory damages or attorneys’ fees. This is a good example of why it is also so important that you register your work when you hand it over to your clients (that is publication, by the way–providing the work for future use/distribution).
Anyway, let’s think about how the courts will figure out what those damages are… if this photographer had not explicitly stated in his paperwork just what he charges for his licenses, he would have a hard time proving how much he should get here. I mean, let’s say a photographer sends an invoice to a client for $10,000 for “Photography” and another photographer sends the same client a bill for the same sort of work and license but for $4000 for Creative Fee and $6000 Usage License Fee. Both get infringed in the same way–say, the client uses the work for 2 years instead of 1 as granted. When they go to court, the first photographer will have a very hard time proving that $6000 of that $10,000 generic “Photography” fee was for the license. The defendant will get out experts and invoices it has paid to other, lowballing photographers as proof it only pays $1000 (or whatever) for that license.
The other photographer will be able to point to the previously paid invoice and say “the original license was for 1 year and cost $6000; the defendant used it for another year, that should be another $6000.” Boom, thank you for playing.
So please, make sure you do the following to protect the value of your work:
- register your copyrights asap after creation;
- use separate line items on your estimates and invoices: Usage Licensing Fee and Creative/Shoot Fee;
- make the Usage Licensing Fee the lion’s share of any total whenever you can justify it; and
- write clear licenses that limit the usage appropriately (geography, time, scope, whatever).