APA Biz Talk - Why Register Copyright? Recap

Mon 07th Dec, 2020

By Admin in Insight

APA BIZ TALK: Why Register Copyright? Recap

Does registering your images with the Copyright Office really matter? 

You can watch the full webinar here: https://www.youtube.com/watch?v=iOHIcZlalis&t=20s

Moderator: 

Juliette Wolf-Robin, APA Executive Director, Los Angeles, CA

Panelists:

Stephen M. Doniger, Esquire - Doniger/Burroughs Law Firm, California and New York

Jeff Sedlik – Photographer, California

Why does Registering images with the Copyright Office matter? 

SD: The goal of Library of Congress is to assemble all creative works made in the country in one place. If you register your work, you get certain additional protections. If you register within the first five years of publishing, you get presumptions of a valid copyright in addition to the rights to seek statutory damages and attorney fees for infringement that otherwise come with timely registration.

JS: Copyright registration enhances your ability to enforce your rights. A timely registration not only provides you with the right to seek statutory damages but also allows you to seek an award of attorney’s fees and costs, which can be critical when seeking to engage an attorney on a contingency fee basis.

SD: Copyright and registration are different. The moment work is created the author has a copyright (the right to copy the work). The registration doesn’t give you the copyright, registration gives you the right to pursue remedies for infringement of the copyright.

When should a photographer Register their work? 

JS: Where possible, register your work before you deliver it, post it, or even show it to anyone. In general, you are only eligible for the enhanced remedies of statutory damages, attorneys fees, and costs of litigation if your registration date is earlier than the date on which an infringement starts. For published works only, there is a “safe harbor” period of three months from the date of first publication. If an infringement occurs during the safe harbor period, and if you register during the safe harbor period, you are then eligible to seek enhanced remedies whether the infringement started before or after your registration date. Importantly, there is no safe harbor period for unpublished images. If your work is unpublished at the time that an infringement starts, you will not be eligible for enhanced remedies, even if you later register the work within 3 months of the first publication. For example, if you deliver a group of images to a client or potential client for review, and if the client then uses your work while it is unpublished (unauthorized publication is not “Publication” under the legal definition), you may find yourself ineligible for enhanced remedies. Photographers who register every 3 months will eventually find out the hard way that this registration schedule fails to protect unpublished images that are infringed by clients or others before registration.  While you can register at any time (even decades after creation), the best practice is to include registration in your post-production workflow, and register as early and as often as you can afford. 

Can I just wait until someone infringes and go back and Register?

SD: If you have registration that predates the infringement you get to choose whether to go after actual damages (profits someone made off your work and/or lost licensing fee) or you can choose statutory damages up to $150,000 per work infringed depending on willfulness.

If you don’t have a timely registration then you can only seek actual damages unless you registered within the three-month safe harbor. Most attorneys won’t initiate litigation over unregistered images that have a licensing fee of $2,000 or less. You can wait until someone infringes to register but then it may not make sense to pursue the case. You may think you can’t afford to register the work, but you can’t afford not to.

JS: Your licensing history has a great deal to do with what damages are available to you, and whether you can convince an attorney to take your case. If you have a history of accepting low fees, licensing unlimited rights, assigning your copyright to clients, or signing work for hire agreements, your business practices will limit your actual damages will work against you in court, where you will be required to produce copies of your past estimates, invoices, contracts, royalty statements, and tax returns for examination by the infringer.

What if you have never registered images before?  Can you go back?

SD: Yes. Focus on registering the images that have been put out there to the public. Even the ones you’ve sent to clients for consideration. 

JS: Even if you don’t typically register your images, you can force an infringer to stop using your images, and you can seek actual damages and profits attributable to the infringement, but in order to file suit, you will need to register and receive a certificate of registration from the copyright office. 

When did the Copyright Office start to limit the number of images on a registration?

JS: In February 2018, they limited group registrations to   750 photographs. The Copyright Office has published photography registration instructions, tutorials, and FAQs here.

Can someone else Register my images for me?

SD: Yes. Other services can assist you, but I recommend photographers do it themselves. It’s not a complicated procedure. 

How much is it to register 750 images?

JS: $55. You can no longer upload multiple images as proof/contact sheets. The Copyright Office requires a separate file for each image, and prefers  JPEGs, TIFFs or  GIFs.  JPEGs are recommended. Ideally 2000 pixels on the longest side, with slight compression. The Copyright Office prefers that you upload a single ZIP file (up to 500 MB) containing up to 750 image files.

The Copyright Office tutorial on preparing and submitting image files is here.

If I Register images that are not supposed to be seen by the public (such as a Celebrity private event), is there risk that someone can get access? 

JS: It’s a good practice to register private images too. The public cannot access your registered images online. If you are in litigation, an infringer can file a “litigation statement” with the Copyright Office and will then be allowed to order copies of your images. Anyone visiting the copyright office in person can view your images on special, dedicated computer terminals, under supervision, and without access to any device capable of making a copy of your images.

Is bulk registration considered the 750 images?

JS: Yes. It’s best to register yourself. If you haven’t submitted a registration, check out the great tutorial videos on the Copyright Office website. If you have a particularly valuable image and are uncertain, have an attorney register for you. There are commercial copyright registration services, but they require that you submit all of the registration information to them, and may make errors in your registration.

If I create a derivative work using several of my own, registered images, should I also register the new piece?

JS: The Copyright office discourages registering images twice. If you create a new version of your image (such as adding elements not in the original image, or changing out the background), you can register your new “derivative” image, but in doing so, you should exclude the previously registered portions of the image by specifying the original registration number in the “Limitation of Claim” page of the registration application. This allows you to maintain the earlier, original registration date. In this instance, you are required to use the “Standard Application,” form and cannot use the Group Registration form. Similarly, if you publish a book after you have registered your images as published or unpublished, and if you wish to register copyright for the book, you should use the “limitation of claim” to exclude the previously registered photographs, so that your book registration applies to the design, text and graphics, but does not affect your earlier registration date for the photographs. 

Can I register the same image published and unpublished?

JS: If you register an image as unpublished, you should not re-register the image after it is published. Where possible, register your photographs using the form for Group Registration of Photographs, or if registering a single photograph, use the Standard Application and select “photographs.” If you instead register only a book, website, calendar, brochure or other type of “Collective Work,” containing your photographs, you may later find that a court will limit your damages to a single statutory award for all photographs infringed, rather than a separate statutory award for every photograph infringed. Many photographers have learned this the hard way. For the same reason, also take care not to use words like “website,” “book,” or any other type of collective work in the title of your registration or in any of the titles of the photographs.

What if I don’t know if it was “published” or I don’t know when?

SD: Use your best estimate. 

JS: Do not mix published and unpublished images on the same registration. The Copyright Office may approve it, but if you ever have infringement, your registration may be invalidated, unless the Copyright Office permits you to correct it. When registering you will need to provide the “Year of Completion” which is the year in which the most recent photograph in the group was created. You will also be asked to provide the month and year of first publication. Great information on copyright basics here and in the “Photography” section of the Copyright Office Registration Portal.

Can the file names of my photographs ever change?

JS: Yes, in copying, distributing, and using your images, you can use any file name and any title for your work. You do not need to use the files names or titles appearing on your registration. However, you should use a file naming system that allows you to easily determine the registration certificate for each image, even if an image is infringed decades later

Does it matter if it’s the photographer’s name or company name on the registration?

JS: If you own copyright as an individual, or if your company is a sole proprietorship, use your name as the “claimant” on your copyright registration. If your company is a corporation, if you create photographs as an employee of that corporation, and if your corporation has not assigned copyright ownership back to you, then use your corporation name as the “claimant” on your registration application.

What should photographers know about posting their images on social media or on their website? Should a website include certain words or agreement of usage?

SD: Depends on if you want your work to be published or unpublished. Posting on social media is not publication. Stating that images are not authorized for distribution without permission is a good idea.

JS: Agreed. It is important to consider that if you have terms on your website that prohibit reproduction or distribution, the posting of images to your website may not be considered “publication” by the Copyright Office or the courts.

Should images have a watermark? What about a Copyright notice?

SD: Yes, it’s a good idea. If you put a digital signature, watermark or gutter credits and someone crops it out, it’s a separate form of infringement that doesn’t require timely registrations. Statutory damages can be from $2,500 to $25,000 per CMI (copyright management information) violation plus attorney fees.

JS: Watermarks, copyright notices, photo credits, and embedded metadata can all be classified as  “Copyright Management Information.” (“CMI”) The Copyright Act defines CMI   as information that can be used to identify you, your photograph, or the rights associated with your photograph. Since March 1 of 1989, a copyright notice is not required to protect your work. However, a valid copyright notice legally prevents an infringer from claiming “innocent infringement,” is a valuable tool to prove that an infringement was willful.

What is the correct format for a copyright notice?

JS: The format and elements of a valid copyright notice are defined in the Copyright Act, in the Federal Regulations, and in international treaties. A valid copyright notice includes three required elements: The name of the copyright owner, a copyright symbol (or the word “Copyright” or abbreviation “Copyr”), and the year in which the photograph was published.  Photographers should be careful to use the actual year of first publication, and not the year of creation or any other year. The Copyright Office has posted helpful explanation of valid copyright notices here

If someone posts your work on social media is that an infringement if they are just showing it without commercial value? 

SD: Copying or displaying the work of another without permission is generally infringement, unless usage falls under Fair Use. It’s ideal to have your copyright ownership information on each image. One general statement on social media may not cover all your images. 

What can be done if someone copies your photograph, but the copy is a painting?

SD: If you paint a verbatim reproduction of a photo, it is almost always an infringement, but the more it is altered the better the argument that it is transformative/fair use.

JS: About “transformative use” - In addition to considering the visual differences between your work and the infringement, a court may consider any substantive difference in the purpose or intent of the infringing use. For example, if you created your photograph for commercial use, and if the infringer made a work of fine art based on your photograph, a court may consider your history of offering your work in the fine art space, as one of the factors in determining fair use. In reality, we photographers create our works for licensing and sale in all media and for all purposes, throughout the copyright life of our photographs, and the courts should understand and accept this simple fact. 

If a photographer sees they have been infringed what should they do first?

SD: Actual damages will be based on a reasonable licensing fee, so it is critical to know the full scope of use. Statutory damages are also designed to be punitive and deterrent, but should also bear some relationship to actual damages.

JS: Do not send an invoice to an infringer. Don’t quote a fee or mention dollar amount. Assume that the infringement that you have discovered is the tip of an iceberg of infringements. Your best option is to contact an attorney for assistance. If you prefer to handle it yourself, then as a first step, fully investigate the infringement and search for other instances of unauthorized use by the same infringer. In your investigation,  fully document any infringements in screenshots or PDFs. If a product is involved – such as a shirt, poster, or book -  purchase one for later use as evidence. After your investigation is complete, then approach the infringer with respect. Without making threats or accusations, ask politely if they have a license for the use of the image/s. When the infringer replies and admits that the infringer has no license, the infringer may make an offer. Explain that you will need more information in order to determine an appropriate settlement amount. Ask questions that will allow you to determine the extent and circumstances of the infringement. Request a list of the media in which the image was used, the number of copies, the date on which the usage started, the regions in which the usage occurred, how the image was obtained, etc. Once you have received whatever information you can obtain from the infringer, then consider that information and propose a fair settlement amount that anticipates further negotiation. If the infringer sends you a settlement agreement, use caution, as the agreement may include harmful terms, and it is best to seek review by an attorney.

What should they do before seeing an attorney?

SD: Find out if there is a timely registration and if you are within the three-month safe harbor. Make sure it’s a legitimate infringement, collect evidence (screengrabs, dates). Finally, consider Fair Use.

When hiring an attorney what should they know?

SD: Know that you’re not guaranteed to win, and that while you can’t seek attorney fees without timely registration, a prevailing defendant can seek attorney’s fees. So without timely registration your upside may be a reasonable licensing fee while your downside may be the defendant’s attorney's fees which can far exceed your upside. Attorneys should explain the risks, have relevant trial experience, and have a good reputation. Don’t trust someone just because they claim to be an expert as their real expertise may be in patent or trademark law. Not many attorneys will take a case based on contingency, particularly a small case.

JS: Do your research. Look into the attorney’s background and experience. Make sure that the attorney is a litigator with specific expertise in photography copyright litigation, and has taken a significant quantity of matters to trial and prevailed. Check with the state bar and verify that there have been no disciplinary actions against that attorney. Search for records of sanctions against the attorney. Get a copy of the attorney’s engagement letter and review every word, especially the terms related to retainers, costs, and responsibility for sanctions and judgments against you. Interview the attorney and ask questions about the attorney’s experience in copyright matters, and the attorney’s approach to resolving infringements. 

Do you have any closing remarks?

SD: The registration gives you the hammer but always be reasonable.

JS: If your photographs are online, either they have been infringed, or they will be infringed. Treat registration like the cost of doing business. It’s well worth the registration fee.

We encourage photographers to Register their Copyright - https://www.copyright.gov/registration/   You can also find tutorials on their site.

APA members feel free to reach out to us if you have questions.

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