Motorsport email demand

[nilla]

My problem
Received an email from Motorsport about an "alleged copyright infringement" of their image on my website. As I was totally unaware of this infringement, I apologised and immediately removed the image from my site.

A couple of emails back and forth since, and Motorsport is now charging me a "retrospective license fee" of $1500 - not sure if this is USD or AUD as not specified yet and email details are from the UK - I'm Australian. The Commercial Manager advised that "the fee is usually $1800 but having taken into consideration that this was an error made in good faith, as a goodwill gesture we are willing to charge a lower fee of $1500."

Background
I built a photographic site for my portfolio of work, for which I also have a pricing page. This pricing page lists photo sizes and products (paper, canvases, etc.) offered for an image on my travel site. However, I've used the print lab's images that it uses for their product samples and reflected these exact images on my pricing page. I originally asked the print lab whether I could use any product sample images from its site for my site to which the print lab gave me a few samples but not everything - I then advised I would download images from their site and nothing more was said.

The image I downloaded from the product sample page did not have any Motorsport logo or copyright logo, and as I'd already emailed the print lab, took this as OK to use.

My photography site doesn't get many views and it's not as if I was trying to sell the Motorsport image, which I wasn't - it was a reflection of the print lab's product sample only. In addition, when building my site, I disabled the right-click download function so that no one can download any images or text.

Print lab
I've contacted the print lab to see if it has a licence for the image and explained my situation. I'm advised that its licence fee does not cover individual customers and also:

"I've checked internally and the artwork on the sample packs is only to provide private sample papers to our customers. Because the image was then uploaded and effectively used as commercial marketing material, it falls outside of anything that we're able to help at all with I'm afraid, and I'm unable to offer any advice regarding the licence requests from Motorsport. Where customers look to offer examples of product quality to their audience we can provide specific images for the product range."

Since this, I note that the print lab removed the image from its site and is nowhere to be seen. When I questioned its removal, the reply was: "we're taking new photographs for our products for a Shopify Ap".

Questions
1. Do I have to pay Motorsport this exorbitant licence fee when it really is an honest mistake?
2. If I do have to pay, do you think I can negotiate down this fee due to the fact I removed the image immediately and I was not selling the actual image?

I know that if someone used one of my images, I would of course email the person and request for it to be taken down. However, I wouldn't be demanding a fee but if the person refused to remove the image, then I'd take it to the next level. This exorbitant fee seems like a money grab from Motorsport and the worse part is, I won't even be using the image again.

Sorry for the verbose email but need to get all the details right and any advice is much appreciated!
Many thanks

[AndyJ]

Hi nilla,

I'm not entirely clear who the 'Motorsport' you refer to is (this one, maybe?). Not that it matters that much, as assuming that it owns the copyright in the disputed image, they do have a right to pursue any unlicensed use of thier images. However, like you, I would say that the retrospective licence fee of $1500 is disproportionate given your use. This sounds a lot like an activity which is referred to a copyright trolling.

Given the amount of money involved (whether that's US or Aus dollars) you might be better off getting a solicitor to sort this out. Sure, you can make a counter-offer to settle the matter but there is no guarantee that Motorsport will be prepared to haggle.

[nilla]

Hi Andy

Many thanks for such a quick response. This is the Motorsport company www.motorsportnetwork.com
Having never been through such a situation and never hearing of the term "copyright trolling", I find this all distressing, especially as it was an honest mistake and I've done everything to rectify this mistake.

Before employing a solicitor, I was going to email Motorsport once more with grounds of why it shouldn't charge me - about 9 reasons in the hope that it will reconsider.

[AndyJ]

Hi nilla,

Thanks for the additional information. It appears from Wikipedia that

Motorsport Images is a racing and automotive photo and technical drawing archives with over 23M assets under management.

The group is made up of a portfolio of leading motorsport and automotive photo agencies, including the live photo agency LAT Images, which has contributed 14m racing and automotive photos to the group that date back to 1895 and today has the largest trackside presence of staff photographers at international motor racing events.

The group's assets also contain the archives of Sutton Images and the associated Phipps archive, the fabled Rainer Schlegelmilch archive and the world's foremost collection of race car technical drawings illustrated by Giorgio Piola.

On that basis I think we can assume that they do have the rights in the image you have referred to. Nonethless l really doubt that the fee you were quoted is what they would actually charge for a licence to use of one of their images on a relatively low-volume website. It may be worth you trawling through their image site to see if you can find the image you used, and note the fee they quote. Even if you can't find the exact same image, there may be one which is similar that you can use as a yardstick for the typical cost of a licence. Assuming you find a fee quoted, that should form the basis of your counter-offer, possibly with a 10% admin fee added on. Realistically if the matter ever went to court, it is unlikely that they would be able to claim a figure which was significantly higher than their normal licensing rate.

[nilla]

Andy, you're fantastic and thank you for all the wonderful help - it's much appreciated!
I've been trying to find the image on their site but no luck yet, so will keep searching then get back to Motorsport with some groundwork.

Just to add to the above, on searching, I can't find this image for sale in their gallery but did find it when I searched on the ID in another area.

The image displays: "World Copyright: Steven Tee / LAT Photographic" and also a reference number. The image was taken back in 1994. Not sure whether the photographer owns the copyright or Motorsport - it's such a grey area for me!

Thanks again for your help!

[AndyJ]

Hi nilla,

A lot will depend on whether the photographer is a freelance or a staff photographer. Chances are if he (or she) is a freelance they will have retained the copyright and just licensed Motorsport to use it themsleves, or to act as agents on behalf of the photographer. The copyright in the work of a staff photographer would automatically belong to their employer (see section 11(2) of the Copyright Designs and Patents Act 1988).

[nilla]

Hi Andy,

Sorry for the late response but I've been doing more research and waiting on more emails. Thanks again for the information.

I have no idea whether the photographer works for Motorsport and as the image dates back to 1994, wouldn't know how to find out, but don't believe this will help me with Motorsport.

Today, I emailed Motorsport with 9 points on why the retrospective fee is unjust and too high, including that the 22KB downloaded file is unsuitable for reproduction, which was not my intent anyway. Within hours, this is what I received:

"Thanks for the feedback.
We still maintain that our image was used on your website without the necessary permissions.
A retrospective licence fee will still be applicable.
If you would like to make us an offer and then we can close the matter."

Perhaps it is Copyright trolling as you stated in one of your threads and a way for a big company to make extra money from a little guy. Either way, the fee is too high for a low-volume website. Also considering MS advertises fully framed Limited Edition 18 x 12 prints at $496.00 (couldn't find image in question though), which is almost one-third of the retrospective fee its charging.

I'd prefer not to pay but this won't be the case so have no idea what to counter-offer either.

[nilla]

I haven't gone back to MS yet as I have no idea what to counter offer - I'm not used to this type of "bartering" and today, I receive this email:

"We did not receive a response to the below email dated 14.8 re. retrospective licence fee.
I would like to resolve this with you before there is any need to pass the case on to our legal department."

It does seem as if MS wants to wrap this up for a quick buck! Do you have any more advice?
Many thanks

[AndyJ]

Hi nilla,

Before answering your last question, I want to jump to something you added to an earlier posting (Fri Aug 02, 2019 8:43 am). I had missed the bit about identfying the photographer. From what you put there it looks like the copyright belongs to the photographer, and Motorsport are just acting as agents for him.

As for what to counter-offer, find an image on their site which is comparable to the image in question (quality, subject, age etc) then check what the rate would have been for the period the image was on your website, do the sums and add about 10% for admin purposes, and try that. Explain to them how you arrived at your figure. If they did take you to court they would only be able to claim damages for the amount they would have received if the image had been licensed correctly in the first place. This means doing pretty much the process as I have outlined. Obviously, they may claim that the disputed image was 'worth' more for some reason, but since you can't know that in advance my suggested approach is the best I can come up with on the facts that I have.

I hope that helps you resolve this.

[nilla]

Hey Andy,

Thanks once again for your quick response.
I think both the photographer and MS owns the image? https://www.motorsportimages.com/photos ... 1014285126 "World Copyright: Steven Tee / LAT Photographic. Ref: 94GER08a." Even so, I don't think this helps my case at all in their eyes.

My friend emailed MS weeks ago asking what is the cost of a subscription for an image but hasn't heard back, so the initial $1800 quoted then reduced to $1500 could be a figure pulled out of the air. Also, as it's a "retrospective licence fee" I understand this to mean that I'm not allowed to use the image ever again (not that I want to)? I'm very green when it comes to all of this Copyright laws but learning!

[AndyJ]

Hi nilla,

The way most picture agencies work is that they enter into a contract with photographers to market the photos for which the agency takes a fee - usually a percentage of what the agency can get in fees from their clients, the licensees. Obviously the agency needs the permission of the photographer to do this, hence the contract. The contract will usually specify that the photographer assigns his copyright to the agency for a period of time, although this isn't always the case; sometimes the agency just becomes a licensee with rights to sub-license to other clients. It is fairly rare for a self-employed photographer to completely renounce his copyright in favour of an agency, although they may agree to an exclusive licence which effectively means that the photographers themselves cannot exploit the images at the same time as the agency, while the licence is in force. Much depends on the market for the images. If they are general stock images, the business model is geared towards low licence fees and a large volume of sales, whereas an scoop can earn a very large single fee for exclusive first rights, ie the right fror the publisher (say and magazine or newspaper) to be able to publish the photograph knowing that none of their competitors can use the photograph for some time after the story is first run. That scenario might apply where a photographer is in the right place to be the only person to capture a FI crash, whereas his colleagues may have loads of stock images of the cars at the same event going round the circuit normally. The Sun gets the scoop with a picture of the crash, while the Express can only publish a less dramatic image of the same car 4 minutes before the crash. Often there can be an auction for the first rights if a picture is particularly newsworthy.

Anyway, none of that is very helpful to your case. It doesn't really matter who owns the copyright provided that Motorsport has legal standing to bring a claim. If they don't, everything so far is bluff, but I suspect they will have the necessary paperwork in order to show that copyright has either been assigned to them or that they are an exclusive licensee of the photographer.

[nilla]

Hi Andy,

Thank you for such an in-depth lesson, which just sounds so much more complicated than I first suspected and since researched.

My gut tells me that it's not a bluff and MS wants something out of this exercise. I suspect that the guy emailing me is probably on some sort of commission. It's annoying that I can't find anything on the MS site or LAT Images to state the cost of an image's license fee regardless one similar to this one, so I don't even have a benchmark to start. All I can find is what they sell Limited Edition framed hardcopies for however, not this image.

I'll see what is returned as I emailed requesting the fee to be withdrawn but also reiterating my case and requesting more information of the charge. As mine is an Australian website, I'm not even sure whether the fee quoted is in AUD or USD.

Many thanks one again for all of your support and information - fingers crossed!