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Photographer making copyright claim for 'unauthorised' use of an image

Posted: Thu Nov 05, 2020 6:47 pm
by Sandow
Hi. I'm a graphic designer, engaged mostly in book design. A couple of days ago I received an email from a legal agency specialising in copyright and permissions, acting on behalf of a photographer, claiming that an image they found on my portfolio website is using an unlicensed photograph. The image they refer to is in fact an image of a book spread, where the original photograph is printed across a double page spread. It is obvious that it's a book spread as the gutter in the centre distorts the image, and you can see the other pages of the book along the edges. It is shown alongside many other spreads from the same book.

The book was designed for a publisher, where I was formerly a full-time employee, who gave me permission to use any book design work for my own freelance portfolio. The original source photo was licensed by the publisher for use in the book – I wasn't directly responsible for licensing, but I was involved in the discussions and know for sure that it was taken care of correctly.

The email from the permissions agency included an invoice for a fairly considerable amount. What is my position here? I would assume that showing a designed page, which happens to include a licensed image, in the context of a portfolio is fair use. I am not directly displaying the source image (which I in any case do not have any access to), and I am not profiting from the work in any way. I have also found the same book spread, photographed in other various ways, on other websites, such as bookshops. Surely they would not be subject to a similar claim? Otherwise how would any book page or spread consisting of copyright material ever be able to be published by bookshops, etc?

My instinct is to reply and clarify what the image actually is (i.e. a designed book spread), in case the photographer has simply forgotten, explain that I was the designer of the book (which is easily proven), point them to the other examples of the same spread found online, and to direct any further enquiries to the publisher.

Any advice is appreciated.

Re: Photographer making copyright claim for 'unauthorised' use of an image

Posted: Fri Nov 06, 2020 9:05 am
by AndyJ
H Sandow,

I suspect that the issue will revolve around the exact terms of the licence that the publishers negotiated to use the image in the first place. It is likely that, at the very least, the licence allowed them to manipulate the original photograph (say by cropping or varying the colours due to the printing process) and this in turn would have allowed you to do such things legally, if they were necessary. You say you were a full-time employee of the publishers when you worked on this specific book, so the publisher would have been vicariously liable for any copyright or moral rights infringement which might have arisen at that stage in the production process. However, assuming that you set up your portfolio page after leaving the publishers, they would not be vicariously liable for any subsequent alleged infringement.

However that is not the issue here. It is whether the publishers had the authority to, in effect, sub-licence you to make a copy of the book page version of the photograph for your portfolio. My instinct says they would, because as you say, they would need to be able authorise book shops etc to use the image for display purposes, but again it will depend on the terms of that original licence.

You don't mention in which country you are based, but assuming it's the UK I don't think the fair dealing exceptions* are likely to be of much use in removing liability for making an unauthorised copy (assuming the publishers did not have the right to authorise you to use the image in your portfolio). But if you are in the USA, then the fair use doctrine is much more likely to cover this as most of the four factors used to assess if fair use applies would be in your favour.

I think the key to resolving this is to involve the publisher. Even if you decide to deal directly with the agency which contacted you, you will need to refer them to the publisher in order to verify that you were the designer who worked on the book layout. Furthermore, the publishers are likely to have a lawyer on a retainer who can shut this down fairly quickly on your behalf, if the publishers want that to happen (and why wouldn't they?). The weak point in your case is the fact that any publisher's permission for you to use images of your work in your portfolio will have been verbal and so it will need the publisher to confirm this was the case.

Incidentally, as you are probably a freelance, you should really get some professional indemnity insurance which protects you in situations like this. Such a policy need not be expensive but will cover instances where a client fails to ensure that they have full authority to use images or text which you are commissioned to work on. If you are based in the UK, contact a reputable broker (eg Hiscox**) for more details of this kind of policy.

* Section 29 Fair dealing for the purpose of private study comes close, but I suspect, not close enough to say it would definitely get you off the hook in this instance.

** This is not an endorsement of Hiscox's services or their insurance policies, merely an example.

Re: Photographer making copyright claim for 'unauthorised' use of an image

Posted: Fri Nov 06, 2020 12:35 pm
by Sandow
Hi Andy

Thanks for your reply, very helpful. I should've said that I'm UK-based.

I'm almost sure I have written permission from the publisher (in the form of an email) to use images of book spreads that I designed, though I haven't been able to find it as yet. What do you think my initial response to the agency should be here? I'm obviously reluctant to admit any kind of wrongdoing, as I assume that would open me to further action. Is it worth sending them a brief overview of what the image is, and a reminder that the photographer licensed the image to the publisher? It's possible he may have simply forgotten?

My concern is that their email mentions that if I challenge their settlement offer, 'By doing so, you refuse to accept our settlement offer, and we reserve the right to initiate legal proceedings for copyright infringement.' Is this enforceable?

Is it also advisable to remove the image immediately, or does that look like a panic move from their perspective?

Many thanks.

Re: Photographer making copyright claim for 'unauthorised' use of an image

Posted: Fri Nov 06, 2020 10:28 pm
by AndyJ
Hi Sandow,

Taking your last point first, I would recommend temporarily removing the image from your website as this removes the possibility of being accused of flagrancy at a later stage. It is not an admission of liability.

Then turning to the demand which has been sent to you. This will almost certainly not represent the market value of the image in question, should you have wanted to obtain a licence to use it. The agency will probably be taking around 40-50% commission on anything they can recover and so will have inflated the amount demanded to maximise their profit. As a consequence their offer to settle the matter at that disproportionate level is not a fair one and no reasonable person (or court) would hold it against you for not agreeing to their demand. If they were to carry out their threat of legal proceedings which ultimately ended in a court hearing, the court would be seeking to put the copyright owner (photographer) back into the position he/she would have been in had a licence based on the real market value of the work been acquired in the first place. This would not include enriching the claims management agency who sent you the demand. Only if you completely refuse to deal with the claim at all would a court take this as evidence of bad faith and this might result in an award of additional damages.

However all of that is probably academic in this case as I think you have a fairly strong case for refuting this claim. If I am right about this then you have nothing to admit liability to; your action is not infringement.

As I mentioned last time, the crux of the issue is the exact wording of the licence the publisher negotiated and the rights it gave them to effectively sub-licence you to make a copy of the illustration in the book. If they didn't have that particular right, then they can't authorise you to make the copy. There is strong and separate argument to be made that, in authorising you to make a copy (per the email you mention) when they did not have that right assigned to them, they would be liable and you would not (see section 16(2) of the Copyright Designs and Patents Act 1988). However since you will not be corresponding in the first instance with a solicitor or someone with sufficient legal training, I suggest it would not be worth raising this in any detail initially as it simply won't be understood. I say this because these claims management companies are not interested in taking on big organisations like publishers who have the resources to see off their claims fairly quickly; their business model relies on picking on someone who possibly has no knowledge of copyright law and is intimidated by their threats and so just pays up to make the problem go away. As you obviously have a better grasp of how copyright works, due to your profession, they should have foreseen this was not going to be like that this time.

I can't advise you on how to conduct litigation, but I can say what I would do in the circumstances. I would be fairly brief and relatively punchy in outlining the facts, much as you have presented them here. I would start by refuting any claim of infringement. I would then say that I was the graphic designer who did the layout while working for the publisher and that the rights to use the image were properly held by my employer the publishers. As a consequence of my contract of employment I was authorised by the publisher to reproduce examples of my work in my portfolio, as is standard practice within the creative industries. Finally I would say that if they need to confirm any of these details they should take up the matter with the publisher who is the authorised licensee. There is no need to append any documentary evidence (such as the email). This sort of approach provides them with all the information they need to assess the likelihood of pursuing this claim to a successful conclusion.

I think it is safe to say that the claims management agency will have absolutely no knowledge of what was in the agreement between the photographer and the publisher, and are unlikely to be in a position to challenge any of what you say. With luck that should kill the thing dead.

Re: Photographer making copyright claim for 'unauthorised' use of an image

Posted: Sat Nov 07, 2020 11:22 am
by Sandow
Hi Andy – thanks for taking the time to elaborate on this, the advice is massively appreciated. I'll respond to the agency and see what they say.