Kodakone asking payment for copyright infrigement

[scout1654]

I received a letter form this company


Dear Sir or Madam,

We are writing to you with regards to an unlicensed use of our client’s work on your website. Alex Segre holds the exclusive rights to an image published on londonapartmentreservations.com for which they are unable to verify a license.

KODAKOne helps image users and rightsholders resolve the unauthorized use of copyrighted works by offering retroactive licensing as an alternative to legal dispute.

Ordinarily, copyright disputes are resolved between copyright lawyers and image users who find themselves in drawn-out discussions and settlement negotiations. Lacking the necessary legal expertise, this often leaves publishers subject to inflated settlements much higher than a standard license fee.

We understand that many image users online are not copyright experts. Our aim is to help rightsholders receive fair compensation and ensure image users are not over-burdened by large legal settlements. In this way, KODAKOne represents the interests of both parties to reach a swift, inexpensive, and fair resolution to copyright disputes.

Our innovative Post-Licensing service provides both parties with the tools and expertise to resolve such cases whilst minimizing the costs and time associated with copyright dispute. Rather than negotiating large settlements, we offer cost-effective retroactive licenses as the simplest solution.

Removal of the image(s) will not close this case. By purchasing a Post-License, you can immediately resolve the unlicensed use and bring this matter to a close. Please confirm so that we may prepare a final invoice for you which contains all the necessary details to make payment including a link to our online payment portal.

By acquiring a license, you are also helping to ensure photographers can receive fair pay for their work and keeping the creative economy alive.

The KODAKOne Post-licensing Team

I asked if they have the copyright for the photo - they replied
We have already provided the Authorization Letter, signed by our client, which sanctions us to detect unlicensed use of their work online and offer retroactive licensing on their behalf. Please see it attached again here for your convenience. Alex Segre's images are not copyright registered but this is not a requirement for their copyright to subsist in the work or for them to receive compensation as per UK law.

Same photo is for sale in shutterstock for 9.80 euros so I offered 15 euros
their reply - This image is not available for purchase on Shutterstock so the license rates you quote are not relevant with regards to this case. ( which is not correct)

they also say - To clarify, we are not offering a standard image license that can be purchased from Shutterstock, but offering a retroactive license which legalizes an infringement which has already occurred.

to summarise
- I have replied to their letters in a timely manner
- I have removed the photo in questions so there is no flagrancy
- This company is acting on behalf of the photographer - like a lawyer
- the fee demanded is exorbitant. ( 615,00 euros) How they arrived to this figure they ignored the question
- the photo is also for sale in shutterstock - first they said no it is not - I wrote with a page print and now they replied - we are not offering a standard image license that can be purchased from Shutterstock, but offering a retroactive license which legalizes an infringement which has already occurred.
Normally When a photographer signs up with a stock agency he or she will be required to assign
his rights to the agency and thus the agency can then take action against any alleged infringement. but in this case this company got involved

By the way, the photo in questions is the photo of Exterior of The Selfridges Store in London so it is a landmark and not a person
I hope somebody can help me on this
regards
Hakan

[AndyJ]

Hi Hakan,

You have handled this well. You have done everything we would recommend, and based on what you have told us, you are in a strong position to fight this claim. The one thing you didn't mention was how long the image had been on your website. I assume that in making your counter offer you took the length of time into account.

This Post Licensing stuff is just smoke and mirrors. Under civil law the photographer would only be entitled to claim the actual fees he would have been entitled to had the image been correctly licensed in the first place, ie 9.80 euros times the length of time the image was in use. I can see no reason why any additional damages could be claimed. Clearly no-one in their right mind would try to go to court to recover such a small amount. 62 times the Shutterstock fee is clearly disproportionate and Mr Segre would have a hard time convincing a court that it was justified.

I am interested in why the "Post Licensing" fee is given in euros. Is your website based in another EU state (ie not the UK)? Alex Segre is based in London and as far as I am aware KODAKOne have a UK office, so I would have expected the fee to be calculated in pounds. It doesn't make any difference as far as dealing with the claim is concerned, but it just seems odd.

And just to deal with the matter of where KODAKOne fits into this legally speaking, anyone may use a claims management company in this way, in fact it is reminiscent of how various personal accident and PPI claims companies operated. For this they do not need to have been assigned the copyright. However it does mean that KODAKOne has no standing to act for the photographer in any court proceedings should that ever become necessary - as I have indicated, I think that is unlikely.

[scout1654]

Thanks for your reply
Their claim is 619.00 euros - because the letter came from Germany rather than their London office. The photo as part of a holiday property in London just to show visitors, the famous landmarks in the vicinity and The Selfridges is one of them. It has been in the website about a year. I have seen somewhere , different copyright laws apply to a photo have a landmark in London as opposed to EU. Is this why, I wonder, the letter came from Germany?
Nevertheless, the offence has been made in UK and the photographer is also based in UK.
they have a signed letter from Alex Segre in English and German - to it looked like a scam first

ERMÄCHTIGUNG
Ich, ALEX SEGRE, erkläre hiermit Folgendes:
Ich besitze die exklusiven Rechte an den im Case Report
beschriebenen Medieninhalten.
Ich habe RYDE für diese Dienstleistungen ermächtigt
rückwirkende Lizenzen zu vergeben und
Rechtsdienstleister (Inkassounternehmen, Anwälte usw.)
mit der Durchsetzung von Verletzungsansprüchen und
der Einleitung von Verfahren/Rechtsverfahren im Falle
einer unlizensierten Nutzung der Medieninhalte zu
beauftragen.
Wenn ich in einer Gerichtsverhandlung als Zeuge
benannt werde, werde ich die oben genannten
Informationen bestätigen und werde auch alle
notwendigen Unterlagen einreichen, die die Entstehung
und Übertragung der Nutzungsrechte belegen und
beweisen.
LONDON, 08/06/20

AUTHORIZATION
I, ALEX SEGRE , hereby declare the following:
I am the exclusive Copyright Holder to the Media
Content described in the Case Report.
I have engaged in RYDE's services and authorize RYDE
to issue retroactive licenses and engage legal service
providers (debt collection companies, lawyers, etc.) to
enforce infringement claims and initiate
proceedings/legal action in the event of unlicensed use
of the Media Content.
If I am named as a witness in a court hearing, I am able
to confirm the above information and will also submit all
necessary documents that demonstrate and prove the
creation and any transfer of the exploitation rights.
LONDON, 08/06/20

Ryde Services is in partnership with Kodakone
https://www.kodakone.com/ryde-holding-a ... nt-claims/

It is a legit set up therefore shall I make a counter offer lets say 120 euros in roder to save the whole hassle of going to court and pay higher sumes to legal representatives?
What would be your advise please?
regards
Hakan

Note: I think the issue is here not the landmark maybe copyrighted ( freedom panorama), it is the photographer holding the rights of the photo of the landmark...
Note 2: If the building IS copyrighted (whole facade) , then I am curious if the photographer has the right to photograph the building and if he is holding the permission to photo the building.

[AndyJ]

Hi Hakan,

Thanks for the explanation about the euro issue. You are right that in Germany the law can provide additional protection for buildings (these are the architect's rights, not a photographer's) but that won't apply in your case since you, the photographer and the scene in question are all in the UK, therefore UK law applies, and there is no special protection available here for buildings or statues which are situated in public places (see section 62 of the Copyright Designs and Patents Act 1988.)

If you are sure that the Shutterstock rate of 9.80 euros is correct for the type of use which applied to your website, then I don't think you need to up your counter-offer. There is clearly an element of bare-faced money-making involved in their claim for 619 euros (although I'm not sure I would go so far as to call it a scam as it doesn't actually involve any illegality). You can of course increase the offer if you choose, but it may only indicate a weakening on your part and encourage them to come back with a further claim, say, one halfway between your 120 and their original claim for 619. You are on strong ground and if you stick to your position I don't think this will go anywhere near court since the damages which would be awarded would be close to the 9.80 euro figure, rather than their 619 euros. At most you might then need to pay the court costs (£35 for the issue of the claim form plus £25 for the court hearing) on top. The photographer on the other hand will have to split his damages with the claims management company, and also have to absorb any legal costs for his side, meaning that he will be making a loss if he takes you to court. The IPEC small claims track does not award legal costs against a defendant and you would not need to be legally represented. Your only costs would be taking a day off work and the cost of travelling to Central London for the day.

I hope this reassures you.

[scout1654]

Thank you. Your relies have been a tremendous help.In my reply, I intend to use term " without prejudice" as the letter will contain
" full and final settlement" figure. This will be offered on the basis that, although I do appreciate the effort Mr Segre put into his work, this is what we can afford to pay during the covid-19 crisis which affected the hospitality business tremendously. W"hat do you think, Please let me know.
regards
Harry

[AndyJ]

Hi Harry,

I don't think you need to appeal to their good nature by mentioning what you can afford. You are in a strong position legally to counter their ridiculous claim with something based on reality. And I think it will be when they realise the reality of their own poor position that they will back off, rather than out of any sympathy for your financial plight.

[Nataliecsy]

Help.. im facing the same issue from Singapore..

They demanded euro 1k from me for using the photo for 6 years. i have asked for proof of ownership rights, collection licence and basis of fees. Unfrotunately, all these documents are unverifiable.. they have been sending me chaser emails but I am holding my response for now.

1. Should i close the website entirely so that they cannot contact me?
2. Should i tell them the documents they provided are unverifiable and therefore please provide something more legit and offer a meetup in Singapore if they have a Singapore office in order to resolve this asap?

Thanks for your advice.

[AndyJ]

Hi Nataliecsy,

Unfortunately although you say the documents they provided are unverifiable, you don't tell us anything about the image or these documents, so it's hard to assess your situation and from there recommend a course of action.
Closing your website won't make you untraceable as there will be details about you held by the registrar through which your obtained your url. If KodakOne have provided some documentary evidence of their client's claim to copyright, have you tried contacting the client or visiting his/her website to see if a copy of the image is posted there? Alternatively you can do a reverse image search using Google or Tineye to see if the image appears on a picture agency website, from where you can usually confirm the photographer's details are the same as the ones KodakOne have sent you.
As you haven't provided an explanation of how the image came to be on your website, is it fair to assume that you found it somewhere on the internet and just copied it without thinking about the copyright implications? If this is the case then you ought to consider reaching a settlement with the photographer, although not on the terms that KodakOne are suggesting. Until you know the true market value of the image it's hard to suggest what may be a fair and reasonable counter-offer to settle the matter.

[Nataliecsy]

Hi AndyJ, I really appreciate your advice and prompt response.

1. I have received the same emails and documents like just1654 described and after asking further, a mere declaration of statement of ownership and owner's webiste was provided- does this prove anything and how can I verify even if I am wiilling to nego for a better price? The owner's website doesn't tell me anything about owing the photo as the photo was not uploaded on it.

2. The photo was downloaded from Corbis 6 years ago and at that time it was offered as a royalty free image (without needing me to pay a single cent). Unfortunately i did not take photo of the 'evidence' which shows that I am allowed to use the photo and now Corbis has become Getty Images.

3. You mentioned that they can obtain my details through registrar but wouldn't the registar have to keep my details private due to PDPA? and Also what kind of details can they obtain about me? Personal address?

4. You mentioned that I can reach out to the owner. Is that ok to bypass KodakOne?

5. I have asked them to justify the basis of the licence fee but they did not address this. How can I find out the market price as different websites will be showing different prices?

6. Do you think its advisable to engage a lawyer for this? So far, lawyers have advised to either ignore or keep asking for the proof of ownership.

Thank you so much Andy J

[AndyJ]

Hi Natalie,

Thank you for the extra details.

We need to clear up one matter straight away. Royalty free does not mean 'free'. It is a type of licence where you pay a fixed one-off fee for a particular purpose for a fixed period of time. A royalty based licence would be calculated on a particular metric of usage, for instance the number of copies in a print run or the number of page-views on a website, etc - a sort of pay as you go. So if you obtained a licence from Corbis, you should have paid something under the Royalty free scheme, and the licence is likely to have had a fixed duration. It is possible that you have now exceeded that period and hence the letter from KodakOne.

It's a shame you don't have any documentation to support your case as the fact that you had a licence which has run out would have put you in a strong position to refute this claim, on the basis that normal business practice would have resulted in you being sent a reminder to renew your licence if you still needed it.

As for whether your registrar would be required to provide your details depends on where the registration service is based. One in the UK or Singapore could be ordered by a court to provide them using what is termed a Norwich Pharmacal procedure. Similar procedures exist in other jurisdictions if a complainant can convince a court that such an order is necessary in the interests of justice.

You could certainly try negotiating with the photographer directly, but it may be that the agreement he has signed with KodakOne prevents this.

Don't get too hung up on establishing the genuine copyright owner. Obviously if you have evidence that someone else is also claiming to own the copyright, then that would certainly throw doubt on the KodakOne claim, but in the mean time I think your best chance of success lies in the fact that they are not providing sufficient details about the basis for the figure of €1,000. A Singapoean court, like its counter-part in the UK, would not accept a claim for damages as high as that as being justified unless there was something exceptional about the photograph which meant it was genuinely only available for such an inflated fee. The fact that a few years ago it was being offered by Corbis for a more modest fee or none at all, tends to undermine this as an argument.

If you can't find the same image being made available for licencing, try and find one which is similar in content, and resolution and use the fee being asked for the image as a guide to making your counter-offer, in the hope that that will represent a fair market rate. If you find several which are similar in all respects, take an average of the fees being demanded, as this certainly will represent a fair market rate.

As for whether you need to seek your own legal advice, you have to weigh up the potential cost of this, as it could end up costing more than the KodakOne claim, if things become protracted. On the other hand, a well-argued solicitor's letter could stop this in its tracks, but I have no idea of the rates lawyers in Singapore charge, so it's hard to say whether this would be good value for money. If you contact a lawyer, they should provide you with a breakdown of their fees, and the likely overall cost, before you actually engage them to take on your case. Make sure a lawyer you choose has experience in intellectual property law matters.

[Nataliecsy]

Dear AndyJ, I sincerely appreciate your prompt reply.

1. it's really confusing.. the link below seem to suggest that royalty free images can be free and not free at the same time so I supposed at that time I thought the image I downloaded was a free royalty free photo.

https://www.stockphotoguides.com/use/ro ... tly%20free

2. Yes, it's a pity I did not keep the 'evidence' from Corbis website to prove that it's a free royalty-free photo and from my memory I do remember that I have checked before I used it unless my memory failed me

3. Noted on the point where the registar can release my personal details to the claimant but am I right to say it will only be released if this case gets to court which means that they wil not be able to obtain my details via online sources? Plus I (and the lawyers that I've briefly consulted) am quite sure that this is a small amount for them to escalate to court though there may be a small possibility of that happening?

4. Noted on teh point that i Shouldn't be too concerned about who the rightful owner is because it is likely that this person coming after me is the right one. I've managed to get the same owner after doing a google reverse search.. but teh fact is that I feel like Im being extorted/scammed based on the way they operate (if you google and you see many negative comments about them and similar practices) and the documents they have provided me seem to be easily digitally engineered by anyone therefore I've decided to engage a pro bono lawyer who specialises in IP whom i will be meeting two weeks from now but in the meantime can i seek your advice on how to respond to them in my holding email so that they don't take any legal action in the absence of response? i just need to buy more time to handle this sensibly. i intend to consult the lawyer whether i shld reach out to the owner directly. their last chaser to me was on 19/10 fyi so i probably have to respond to them soemtime this week.

option A: tell them nicely i need to discuss it further with the decision maker who is not available now so i can only respond by xxxxx?
opton B: tell them directly that i will be engaging a lawyer as i would like to handle this sensibly so i can only respond by xxxx? (not sure if this option will back them off if it is really a scam or this will piss them off more?)
option c: continue to ask them for proof of ownership which can be verifiable as what they have provided me so far cannot be proof of anything? (they have provided me a statement of ownership and owners website url but without the photo uploaded on it)
option d: tell them im searching for the 'evidence' with the website i have originally obatined it from so i will need more time (i'm not sure if this is admitting liability on my side which i think will be detrimental to me....)

THANK YOU ONCE AGAIN. I SINCERELY APPRECIATE IT.

[AndyJ]

Hi Natalie,

I can see why anybody would be confused by the description given in that link. The saying, 'there's no such thing as a free lunch' comes to mind.

As for you substantive question, I suggest you send KodakOne a short email saying that you believe that their demand is entirely disproportionate to the alleged infringement, for which they have provided no breakdown of how it was arrived at. Tell them you are arranging to get proper legal advice and will reply more fully after you have received this. No need to set a time limit by which you intend to get back to them. You are now taking the initiative and it is good to have them slightly off balance. I don't there is much chance they will want to take this to court at all unless they are 99% sure they will win, and they certainly won't act while you are seeking legal advice. A court would be very annoyed by that sort of behaviour, which would not be a good way to start a case.

As for the wider issue of so-called claims management companies like KodakOne, while words scam and extortion may feel like the right ones, these companies are doing nothing illegal: distasteful yes, illegal no. That said, it is a business model which seeks to prey on people's ignorance of the law in the hope that they pay up quickly to make the problem go away. The minute these companies see a fight-back emerging which will cause them to spend more time and money on a claim, they tend to drop the claim, or at least reduce it to something realistic. However since they take around 50% of anything they recover, that does not make good business sense either for them or the photographer they represent.

[Nataliecsy]

Hi Andy,

Yes you are right to remind me that there is no free lunch on earth. I'll be extra careful in future especially obtaining pictures from websites who claim that these photos are free for use. Accidental mistake but has indeed caused me alot of distress and harassment and it is indeed unfortunate that such companies are capitalising on our ignorance of the law and the covid situation now though i can empahtise that they are doing this for survival.

Noted and i'll wait for the next chaser before i inform them that i'm seeking legal advice after much thought discussing with our management internally.

1. final question - is it a good idea to propose a meet up with someone from their office located in my jurisdiction to settle this? (this would seem sincere in wanting to settle the claim)
2. also, they mentioned that they found the photo on my website since 2014 but tineye shows that the picture has been on my website since 2017 and not 2014. should i even tell them this?
3. they told me this when i asked about basis of fees - does this even answer my question on the basis of fees? and i totally cannot understand what capacity they are to be able to legalise the past infringement when they are not 'the law' or even a legal firm even though they have an internal legal department.

xxxxx's Post-Licensing fees are set in-line with their regular licensing practice and Fair Market Value as set by independent institutions. In addition, please note that we are not offering a standard image license that can be purchased from Getty/Shutterstock/Alamy etc. but a retroactive license which not only licenses the use but also legalizes the past infringement. This has the added benefit of allowing image users to avoid excessive costs associated with copyright litigation. The Post-License fee, therefore, represents what would have been paid to the rightsholder had the image been purchased prior to publication, for the period of use that has already occurred.

once again thank you so much. it has been nice speaking to you over this forum and if you would like to keep in touch via linkedin etc, pls pm me.

[AndyJ]

Hi Natalie,

I very much doubt that they would have a representative in Singapore if they are writing to you from elsewhere. They would need to engage a local person or fly in someone which would cost money and is totally counter to their business model, namely to run a cheap, lean admin and maximise the number of times they can get someone to pay up without hassle.

Yes, you should tell them that the image has only been on your website for the shorter period as this will reduce whatever fee is finally agreed. I imagine that if they say that the image was in use from 2014 they have used the Wayback Machine to look at earlier versions of your site. You should do the same just to confirm that they are not correct. If you can supply screenshots from the wayback machine for 2014 -2016 which shows the image wasn't on the site over that period, this once again undermines their position and allows you to be more robust in your negotiating position.

Their talk about legalising past use is just a way of dressing up the claim. It is no different to the situation where you use a car park and you pay as you leave: you pay for the time you used the car park retrospectively. Or in this case, the time the licence needs to cover. The same thing would happen if the claim went to court. The claimant can only ask for damages for the actual loss they have incurred, ie the amount of fees a licence for X years would have cost if it had been paid upfront.

[Nataliecsy]

Hi Andy, thanks for all the input. They have just dropped another email to me to 'threaten' to send this to their legal partner without warning if i do not respond within the next 7 days. sometimes i wonder how true is this...

i will seek your advice to inform them that i will be engaging a lawyer for advice in order to settle this sensibly as we are unable to verify info provided by them before i be in touch with them again (without saying anything much)? i hope this does not make me sound vulnerable

meanwhile, i'll try to check the market price (so far the cheapest price i've saw on a website was less than $100 for this picture but some other websites charges $500) and the duration that the picture has been on my website and discuss this with my lawyer.

ps. they seem to have a presence here https://www.businesswire.com/news/home/ ... -Singapore

thank you.