Recent Publications

Stealth Retroactive License Agreements
By Dan Nelson¹ and Amy Zelcer²

Publication Pending

The licensing of photographs for textbooks can be a lucrative source of income for professional photographers; however, this practice often leads to unforeseen complications. As seen in the recently filed copyright infringement lawsuits against Pearson Education Inc. and Houghton Mifflin Harcourt publishing companies,³ large publishing companies like the aforementioned are continuously violating the intellectual property rights of professional photographers for their own gain. What begins as an above board legal purchasing of the rights to a photographer's copyrighted images often continues with thousands or hundreds of thousands of print overruns. The abuse goes further with stealth retroactive license agreements that are intended to fortify the publishers from further suits by encouraging photographers to sign away rights to photographs that were already infringed. These retroactive license agreements masquerade as honest and straightforward contracts, inviting the photographer to grant the publishers a certain number of licenses for print runs in exchange for licensing fees. A closer review of the terms of the licenses reveals that they are often retroactive rather than prospective.

A photographer skimming through the details of a stealth retroactive licensing agreement might not notice the fact that he or she is granting the publishing companies the rights to photographs that had in fact already been infringed. By signing these agreements without closer examination, professional photographers are potentially compromising claims for willful copyright infringement of up to $150,000 in statutory damages per infringement plus attorneys fees and costs. The ill-fated victims of this scheme are the prepared, conscientious photographers who register their copyrights pre-infringement, for timely registration provides the most potential for statutory damages under the Copyright Act. A closer read of these license agreements on the part of professional photographers could yield greater monetary rewards for the photographers as well as the opportunity to more effectively curb the abuse of copyright law by large institutional infringers.

Stock photographers are faced with difficult decisions about whether to pursue claims for copyright infringement of their images. But those decisions should be made with the knowledge and understanding that their rights under the Copyright Act have already been violated, and that they may be unwittingly settling those claims.

        THE FUTURE OF COPYRIGHT ENFORCEMENT FOR PHOTO STOCK ARTISTS AND THEIR DISTRIBUTORS
    By Dan Nelson

    Reprinted From Picture Archive Counsel of America Newsletter, July 8, 2008

    The livelihood of professional photographers who rely on residual income from stock photography is in peril. Most professional photographers and their representatives understand this fact. Accountants and corporate capitalists control magazines once run by creative professionals Most photographers who agree with this apocalyptic view of the future agree that the issue is one of leverage. And most photographers and image archives agree that they have very little. Faced with the choice between very small license fees or none at all, most have chosen the small and ever-dwindling fees.

    Professional photographers and distributors all have something else in common, in my experience. I have rarely met one who doesn’t have a story of someone using one of their photographs without permission. Equally shocking to me is the number of good people who accepted a relative pittance for the unauthorized use of their images.

These stories have led me to believe that most are so accustomed to having very little leverage when it comes to pricing for their works that they don’t realize that they have significant leverage when it comes to getting paid for unauthorized use of their photographs, which is also known as copyright infringement.

    The copyright act vests in photographers the legal right to recover for the unauthorized use of their images. If a photographer or distributor, on behalf of its photographer has registered copyright prior to the infringement, then statutory damages of up to $150,000.00 per infringement, plus attorney's fees, and costs may be recovered. Or the photographer with or without his or her agent can elect to recover actual damages, which include the infringer’s profits attributable to the infringement. In the case of commercial uses, millions can and have been recovered. In the case of major commercial use, refusing to settle will often force the infringer to spend hundreds of thousands on costs and legal fees for both sides, and potentially hundreds of thousands or millions in damages.

    The shifting of fees and the potential for large damage awards level the playing field. If the infringed image is exclusively represented by a picture archive, the photographer and his or her agent can pursue the case together and share the recovery. If the image is non-exclusively represented, then the agent or agents need to step aside and allow the photographer to pursue the case independently.

    For unregistered photographs copyright enforcement remedies are more limited. The copyright act does not allow for the recovery of statutory damages or fees absent timely registration. Photographers and their distributors must balance the future work implications of pursuing such claims against a relatively modest recovery.

    Unless copyright holders utilize what leverage they have to achieve justice when their images are used without permission, infringers will continue to run roughshod over professional photographers’ rights in their own creations. This hurts image distributors just as badly as their photographers. If the tide of infringement is to be stemmed, it will only be through the courage of those photographers and their representatives who stand up to infringement and defend their rights.