Imagine a situation when you decide to use a specific photo in an advertisement. It was already licensed before and stored in your database. Once seen how it appears as a final product, you are not content and decide to modify it. Now, in such a case, who would be the owner of the final product with modification? Any doubts?

photo copyright

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The following case is a perfect example of the importance of contractual provisions. It considers the obligation that should be put on all of us unconditionally. That is – read your contract and think it through before you start the deal.

A professional photographer named Richard Reinsdorf took part in a project for Sketchers. He was taking some pictures that were supposed to be used in one of the advertisements of the aforementioned company. He delivered photographs as RAW files. They were later modified in different ways, starting from shades and colours and ending on various additional graphic effects.[1]

Now let’s go to the paperwork. The original agreement between Richard Reinsdorf and Sketchers specified that the license for the photos would expire in North America after only 6 months. There was an additional clause that they can be used only for a specific set of purposes. Nonetheless, Sketchers apparently liked living on the edge. The company decided to use the photos for the period of time between 2006-2009. Once the photographer realized the breach, he decided to file a lawsuit for copyright infringement in the US District Court of California. So, it begins.[2]

Is it all about smart tactic?

I would like to comment on the tactic of Sketchers, which in my opinion was very creative and smart. In response to the lawsuit, they claimed that they were co-authors of joint work. As such, “[c]o-authors in a joint work cannot be held liable to one another for infringement of the copyright in the joint work”, as was pointed out by the court in its summary judgement.[1]

Ok, but what is this joint work, according to US law? Correspondingly, A ’joint work‘ is a work prepared by two or more authors with the intention that their contributions are to be merged into inseparable or interdependent parts of a unitary whole.[2]

Following this logic, could a party, involved in a joint work, who intends to jointly produce a specific work with another party, require a payment from the latter and vice versa? Would the second party like to agree on paying for co-author’s contribution? And most importantly, would one party in the said joint work try to constrain the second party’s use of the collaborative work in the end? So many questions, but once you give a closure, these are the questions that shall be asked, wouldn’t you agree?

A bittersweet victory

The outcome of the trial was in favour of Reinsdorf. The court found that that there is ’a genuine dispute of material fact as to whether Skechers’ finished advertisements are the products of multiple authors.’[1] The outcome of the trial sounds good if we are looking from the photographer’s side. However, let’s spice up the end of the story so that we can learn from someone’s else mistakes.

Accordingly, Reinsdorf failed to register his photos with the US Copyright Office prior to the alleged infringement. As a result, the statutory damages, along with attorney’s fees, were denied.

It seems like registering your own work may include some fees and paperwork, but it might help you in a rough moment. If you are interested in the topic , you can read our article about artwork registration drill in the US Copyright Office.

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