Direct Mail - Copyright Infringement

[Metolius81]

Last fall I sold a license to a local real estate company for a photo that I had taken from their property. Originally, they wanted to use it as their main photo piece for their new adverstising campaign, but after talking costs with them they decided to only purchase a license for their website use only. As a side note, the reason why they decided not to purchase a multi-use license is because I am currently a grad student and they felt that since I am not a "professional photographer" that I "didn't deserve more than a couple hundred dollars to do whatever the hell they wanted with it," as they stated. Since I rejected their statement and refused to be low-balled, we only agreed on a web use only license.

It took them three months to finally pay, but within a week after I recieved payment a friend of mine brought me a direct mail ad that had my image on the entire front side... and with no copyright notification on it. Since this is blatant copyright infringment, especially since I have documented proof through the license stating no printed revisions, additional usage, reproduction, etc and I have emails of communication with them that they were fully aware of this, I am going to send a letter of copyright infringement notification and an invoice before firing away with an attorney's letter (and yes I have been advised by an ip attorney about this already).

My QUESTION... is there any way to find out how many direct mail ads were printed? There's no mark on the ad for who actually printed the ad for them. Can the Post Office track how many were mailed? I am asking because I want to begin with a number that is close to fair market value (before multiplying it, of course) so that I have a good basis to stand on when they confront the invoice. I am also wanting to try and find this out without just calling the real estate company since they don't know that I am aware of the ad yet and would rather send a more professional letter first then get into it over the phone when trying to find out.

Any help is much appreciated!!

Tyler

[Sonic Infidel]

First things first, my friend. Talk to a lawyer!

You should not talk to the company AT ALL until you've consulted a legal professional. If you accidentally say the wrong thing on the phone, your case could be shot or your damages limited.

Now onto your question: It's unlikely that the postal service will have any available estimate of the ad numbers, but it wouldn't hurt to ask. Most likely, you'll have to get your lawyer to get the numbers from the printer once you've forced the real estate company to confess their transgressions.

Honestly, though....the issue here has absolutely nothing to do with the number of cards printed. The issue is that they printed them at all. The number will simply be useful to determine how much you are able to recoup from them.

Good luck in your endeavors, and please please please talk to a lawyer.

BTW, great photo!

[Croasdail]

Tyler... I usually avoid the legal route at all cost as it is usually a business limiting action. But in this case, I would have the law office drop a cease and desist letter to the firm. It will cost you a couple of hours billable to them unfortunately, but you have tried the let's be friends route already. I am sure these guys will want to settle rather then litigate this matter, but they obviously are not taking you seriously. They need to know you are willing to go to the next step. Once they get the message, be willing to ratchet it back down really fast and work out a mutually financial agreement that make you both happy. They just need a shot over the bow. Again, not my normal advice, but in this case, I think needed.

[tcphoto1]

It should be very easy to find an IP Attorney in this case. They will probably offer to take it on for a percentage of the settlement. I would assemble the emails, paperwork and the mailer so you are ready to go when you've signed the Letter of Agreement from the Attorney. By the way, register the images asap and the settlement can be much higher

[tomd]

Was the image submitted to the copyright office?
Not 100% necessary here, but it all helps.
Tom

[Metolius81]

Thanks for all of your help so far! Here's the other unfortunate part of the situation... because I was new to all of this when I started this process last fall, I took the advice of my professor at the time and didn't bother registering it. I know this sounds stupid, but I didn't know any better at the time (live and learn). But when I found out about the direct mail ad, it was already past the 90-day period. So I still went ahead and sent it in to the registration office a couple of weeks ago anyways. I did already talk to an attorney... since it wasn't registered in time, and you all know what limitations that means, I was told to just try the "easy" route first and send them an invoice with an explanation about copyright infringement before paying a lawyer. If they don't respond, then he said he would wright a letter for a couple hundred bucks. Here's the thing... I'm a student that would like to begin doing this as a business soon, but the reality is that I am not in the business now! I want to push this issue only because it was wrong what they did, but I don't have the finances to cover attorney fees and court costs. If I was losing part of my main income, that would be a different story.

I thought that finding out how many were printed ahead of time would help with the initial invoice.

Thanks again.

[sfaust]

You are doing the right thing in this case by trying to avoid the legal route if possible, but keeping that as a backup. Since the images aren't registered, the best you can hope for would be actual damages. No legal fees covered, no punitive damages. If they printed say 1,000 direct mail pieces for a local campaign, the licensed fee would be in the neighborhood of $300-$600. So thats what you would be fighting over in court. $1000 in legal fees isn't worth it.

So if you can work this out with the company and avoid the legal fees, you will be ahead of the game. If not, I'd still go the legal route and add legal fees to your demands from the agency in hopes they will decide to settle before things get too expensive for both of you.

Let them know the images are registered, chances are they won't figure out you missed the deadline, and will be intimidated with the fact they could face up to $150,000 in punitive damages, paying all the legal fees (yours and theirs), and then the actual damages.

The screwed up, and they know it. Let them go consult an attorney and start paying $250 plus per hour. I personally would also go ahead and have an attorney send a cease and desist order, and require them to disclose ALL uses of the images, who printed them, how many were made, and so on.

Somehow, getting a legal letter in them mail makes people stop and think about the situation they are in. Its real easy to try to bully a student, much harder when they go lawyer to lawyer at $250 per hour.

[ssim]

Many companies will try and do this whether you are a student or not. The one question I have is about your original contract. Is it iron clad and does it specify only web use or use by the company.

I wish you luck and I too am happy that you are avoiding the legal route. The problem in dealing with larger companies is they have more staying power when it comes to dealing with lawyers. They can keep you spending money on legal fees even though they may know they were in the wrong.

[Croasdail]

Since the images aren't registered, the best you can hope for would be actual damages. No legal fees covered, no punitive damages.

Not necessarily true here since the user knew who the owner of the image was as acknowledged by the first contract. There is no way they can claim they didn't know who the image belong to. They can get out of punitive damages if they can show reasonable efforts were made to find the rightful owner, but that doesn't come close to applying here. They are additionally likely in breach of the first contract, another nice piece of the pie.

But yes, I agree, my general mantre is avoid the lawyer line. But here I think a letter is worth while.

[Metolius81]

Many companies will try and do this whether you are a student or not. The one question I have is about your original contract. Is it iron clad and does it specify only web use or use by the company.

Here's an excerpt from the original contract:
The following license is granted to (omitted), upon full payment of invoice: Non-Exclusive usage by (omitted) to use the photograph described on this document, with an image not to exceed 1280 x 450 pixels, for 100 Park Avenue website, www.onehundredparkave.com (http://www.onehundredparkave.com), for an unlimited duration from time of payment. No printed revisions are granted with this license. Any additional usage, including said revisions must be negotiated with the copyright owner, Tyler Jones. Proper copyright notification is required in or directly adjacent to each use of the image “© 2006 Tyler Jones.” Third party use or reproduction not permitted without written authorization from the copyright owner, Tyler Jones. All images are © 2006 Tyler Jones and registered with the United States Copyright Office. All rights reserved.

So, they broke it within a few areas. 1) larger than allowed size 2) used the web-use version before time of payment 3) a printed revision / additional usage 4) no proper copyright notification on the ad.

I guess it sounds like there is no way of finding out how many ads were printed without going through a lawyer first. My thought was to send the invoice for a price that will generously cover 25K+ prints, even if they did only make 5k prints or whatever. Do you all suggest a 3x or 5x multiplier to cover myself in case I do need to pay some lawyer's billable hours??

[tcphoto1]

There is no way that I would use the 3x or 5x multiplier. You have all the power and I am curious why you wouldn't use an Attorney. If that is the contract that they received and paid then I see no reason why they won't settle before it reaches a Court. As I suggested before, register the image and let your Attorney deal with them. After that point, patience is key since you have most, if not all the cards. Who cares how many they printed since your paperwork appears to be in order. Why would you let it go and settle for less when they violated the contract?

[Metolius81]

There is no way that I would use the 3x or 5x multiplier. You have all the power and I am curious why you wouldn't use an Attorney. If that is the contract that they received and paid then I see no reason why they won't settle before it reaches a Court. As I suggested before, register the image and let your Attorney deal with them. After that point, patience is key since you have most, if not all the cards. Who cares how many they printed since your paperwork appears to be in order. Why would you let it go and settle for less when they violated the contract?

I actually do have it registered now, but I didn't do it within the 90-days (see my post above). The reason I am not going to a lawyer first thing is because I am a grad student and can't really afford to just begin giving money to one right now. I will if I have to, but for right now I would like to try and get as much as I can without stepping into the legal system. If they ignore my invoice and letter, then yes, I do have all the cards as you say and will go that direction.

Why wouldn't you use a multiplier?

[tcphoto1]

An IP Attorney will not ask you for a cent, they will take the case on for a percentage of the settlement. You are about to make a big mistake in my opinion. Use this multiplier theory and you will lose money. Stop asking for Professional Photographers advice, you seem to be rejecting it. Talk to an Attorney and then let us know what happens.

[PhotosGuy]

But when I found out about the direct mail ad, it was already past the 90-day period. So I still went ahead and sent it in to the registration office a couple of weeks ago anyways. Check to see if there's a clause about registering within a certain date after you discover the violation. I think I read that somewhere. If they don't respond, then he said he would wright a letter for a couple hundred bucks. Add those costs to your new invoice. I thought that finding out how many were printed ahead of time would help with the initial invoice.
&
Use this multiplier theory and you will lose money. What's the population of the city? I'd assume that they sent one to everyone & bill accordingly. That should get their attention? Let them prove otherwise, & remember, you'll also be suing for damages, no?

Keep us up to date.

[sfaust]

Not necessarily true here since the user knew who the owner of the image was as acknowledged by the first contract. There is no way they can claim they didn't know who the image belong to. They can get out of punitive damages if they can show reasonable efforts were made to find the rightful owner, but that doesn't come close to applying here.

But the issue isn't whether they can prove it was willful or uintentional infringement, that they knew the original copyright holder or not, it comes down to what the law allows to be recovered for registered vs non-registered images.

If the images are not registered, the photographer (in this case) would generally be sueing for actual damages only. I do not believe would be able to sue for punitive damages, or his legal fees, under the copyright law as it is written, and how it was explained to me various times by people far more knowledgable than I in copyright law. This typically amounts to the amount of money the photographer would have collected if he licensed the image in the first place.

This is like being caught shoplifting, and the only punishment that can be levied is that you have to pay for the items you tired to steal. Sweet deal for the infringer, and why many companies, magazines, and agencies decide to take the risk. They know most photogrphers don't register their images, and if they get cught it's no big deal.

If the images are properly registered, my understanding is that not only can he sue for actual damages, but he can sue for all his legal costs to be covered by the infringer, and the court is allowed to levy up to $150K per infringement (not per image) in punitive damages.

Being registered is a huge legal hammer that can be used to help settle an action outside of court. The infringer knowing that if they loose, they would be responsible for all the legal costs of the action, as well as the punitive damages usually makes most people eager to settle up. Especially if they know they are in the wrong. And typicaly, a settlement far larger than the damages alone is the result, since the risk is so much higher that they could pay hundreds of thousands of dollars if it goes to trial.

An IP Attorney will not ask you for a cent, they will take the case on for a percentage of the settlement. You are about to make a big mistake in my opinion. Use this multiplier theory and you will lose money. Stop asking for Professional Photographers advice, you seem to be rejecting it. Talk to an Attorney and then let us know what happens.

Some will, some won't. It all depends on the monetary size of the case, whether the attorney feels he will recoup his fees, that they can settle or win the case, and so on. The bigger the fish, the larger the prize, the higher the likelyhood of winning, the more excited the attorney will be to take it on a percentage. And the reverse is true. I really doubt he will find a lawyer willing to take on this case for a percentage, seeing how its unregistered and the infringement is less than a thousand dollars. If it was registered, the attorney would see damages, plus up to $150K punitive, plus his fees.

Here are some good pointers to copyright law from ASMP, EP, and APA. Lots of interesting reading for anyone interested in copyright law.

http://www.law.cornell.edu/wex/index.php/Copyright
http://www.editorialphoto.com/copyright/primer.asp
http://fairuse.stanford.edu/primary_materials/cases/index.html
http://fairuse.stanford.edu/
http://www.utsystem.edu/OGC/IntellectualProperty/cprtindx.htm#top
http://www.templetons.com/brad/copymyths.html
http://www.copyrightcontracts.com/copyright101.htm

[chakalakasp]

But the issue isn't whether they can prove it was willful or uintentional infringement, that they knew the original copyright holder or not, it comes down to what the law allows to be recovered for registered vs non-registered images.

Actually, it kinda is. You don't HAVE to sue for copyright infringement, you can just as easily sue for violation of contract, which may make more sense in this case. This is the kind of thing an attorney can sort out, which, hopefully, the OP has consulted by now.

[sfaust]

Actually, it kinda is. You don't HAVE to sue for copyright infringement, you can just as easily sue for violation of contract, which may make more sense in this case. This is the kind of thing an attorney can sort out, which, hopefully, the OP has consulted by now.

I agree that you can sue for anything else that is appropraite. I was only referring to the fact that under copyright law you are limited to actual damages only if you were not properly registered, since registered vs non-registered was under discussion when I responded. They can sue for other damages, but not under copyright law.

[coreypolis]

register it IMMEDITLY. within 90 days of infringement

[stathunter]

I typically suggest to people to see if they can work things out with the company that owes them. This company in my mind has already burnt their bridge. When you negotiates because they feels you are only a certain age, strike one. Then when the company is difficult to collect from it is strike number two.
I would suggest contacting an attorney and negotiate nothing more than a percentage when they collect. I would find the meanest, nastiest and most greedy attorney I could find.

[Metolius81]

register it IMMEDITLY. within 90 days of infringement

I sent in my registration the same day that I was shown the ad. Unfortunately, it had already been 90 days past publication... but does it make any difference if it is within 90 days of the infringement?

I typically suggest to people to see if they can work things out with the company that owes them. This company in my mind has already burnt their bridge. When you negotiates because they feels you are only a certain age, strike one. Then when the company is difficult to collect from it is strike number two.
I would suggest contacting an attorney and negotiate nothing more than a percentage when they collect. I would find the meanest, nastiest and most greedy attorney I could find.

Good points. I'm in the process now of trying to find an attorney here in Denver that will work with me a little more upfront. The one I was working with before wasn't really all that interested since it wasn't registered in time.

Thank you all for your advice so far!

[coreypolis]

I sent in my registration the same day that I was shown the ad. Unfortunately, it had already been 90 days past publication... but does it make any difference if it is within 90 days of the infringement?



Good points. I'm in the process now of trying to find an attorney here in Denver that will work with me a little more upfront. The one I was working with before wasn't really all that interested since it wasn't registered in time.

Thank you all for your advice so far!
I can't remember for sure. I took a class from an IP lawyer, but it may vary by state I'm not sure, but my gut said that it was within 90 days of when you noticed, but don't quote me.

This is why its advised to register all your images once a quarter, which is every 90 days ;) That way you are covered no matter what.

[sfaust]

but my gut said that it was within 90 days of when you noticed, but don't quote me.

I think you are right as well, my gut says the same thing. But don't quote me either :)

[chakalakasp]

I sent in my registration the same day that I was shown the ad. Unfortunately, it had already been 90 days past publication... but does it make any difference if it is within 90 days of the infringement?



Good points. I'm in the process now of trying to find an attorney here in Denver that will work with me a little more upfront. The one I was working with before wasn't really all that interested since it wasn't registered in time.

Thank you all for your advice so far!

Another thing you should consider is that it's possible that they've infringed with some other publication/ad in the past 90 days. This is something an attorney can find out by requiring them to disclose all usages of the infringed image. You might get lucky and find that they've used it or reprinted it in the past 90 days. It's not 90 days from the first infringement, it's 90 days from ANY infringement. :)

[S.Horton]

I hope you filed for a copyright.

In any event, just get a lawyer.

They owe you $.

[S.Horton]

Oh, and nice pic!

[LBaldwin]

OK first as you have been told get the image registered ASAP, then contact Carolyn Wright the photo attorny here
http://photoattorney.com/
She is a very bright attorney, I just met her last month during her presentation. All of you should have her book on your shelf. She is no nonsense when it comes to preserving our rights and taking care of those who rip us off.

Les

[EnronRocks]

First question I will ask, is did you have a legal binding contact signed by a Notary. If not, I would say you have ground for a lawsuit, but it would be money @ waste. Just because you could sue due to copyright laws, only if you hold a copyright with the US copyright office. Not one on just this photo, but a bulk one on all photos.

To be honest, you could have a ROCK solid case, and get a bad judge. Get a lawyer, then I would contact the company WITH, I can not stress this ENOUGH! WITH A LAWYER!!! Do some talking, see what they say. If they misunderstood the "agreement" ask for reimbursement. If they say plain out "No", keep talking to them and try to come to a agreement. If that does not work, explore legal options. If you decide not to sue, screw it. Post on your website what they did. Tell all your friends in conversation. Just slander the **** out of them for what they did. Although not the best way to do, you still get some kind of "revenge".

[S.Horton]

OK first as you have been told get the image registered ASAP, then contact Carolyn Wright the photo attorny here
http://photoattorney.com/
She is a very bright attorney, I just met her last month during her presentation. All of you should have her book on your shelf. She is no nonsense when it comes to preserving our rights and taking care of those who rip us off.

Les

Second that - I'm one of her clients.

[vwpilot]

One note on your registration.

When was the FIRST publication of your image? You have 90 days from the FIRST publication of the image to get it registered and still have the ability to recover lawyer fees and punitive damages.

Its NOT 90 days from when you took the photo, its 90 days from when you first published it.

However, it also means that you must have registered the work as a published work, not a normal work. Registration requirements are different and you need to do it right.

Otherwise, if its non-published, you can register it at any time (no 90 day limit) as long as it was before the infringement. Which obviously does not help you here since you did it after you saw it.

So, check into your registration. If you registered it as a published image and it was within 90 days of you first publishing it (not when you took it), you may be in good shape.

If not, use the registration to try to convince them they want to settle without getting lawyers involved.

Good luck.

[remixity]

Student or not, your time, talent, and cost of equipment are all valuable. If you create a saleable image, you should be fairly compensated for its use.

[Pinto]

This is why its advised to register all your images once a quarter, which is every 90 days ;) That way you are covered no matter what.

This confuses me.
If you register your images prior to publication, you'd be covered forever right? Why register them again?

[vwpilot]

He is talking about registering all your NEW images from the last 90 days.

If you get into the habit of registering all your work from the last 90 days, then you will always be within the regulations to be protected.

However, that isnt that simple.

There are separate registrations that have to be made for published and unpublished works. So you simply cannot register everything as one type or the other and be safe. You MUST separate your published and unpublished during that time and register them properly or you may not be covered.

Unpublished can be registered ANY TIME as long as its BEFORE an infringement. So that means that if you have never published a photo anywhere and you shot it ten years ago and its never been infringed, you can still register it and be covered.

Published works, must be registered within 90 days of FIRST PUBLICATION. So that means that same 10 year old image could be published tomorrow for the first time and you can still register it within 90 days and be covered.

The reason for the 90 day limit on published work is to allow photographers that might be working a job and need to send images to a publication immediately dont have time to register before they are published. This gives them time to still get the image registered within a reasonable amount of time.

The reason unpublished images can be done anytime BEFORE an infringement is that the likelyhood they can be stolen and used is next to nil unless you give them to someone who can use them. And since you are giving them out, you should know to register them BEFORE handing them out to someone. If you dont and they use them, you are sol for not being careful.

If a previously registered UNpublished image is then published, you are still covered by your original registration, you do not have to re-register as a published image.

And btw, posting an image ANYWHERE in public, even your little homepage that has had 10 viewers in 10 years still counts as publication, so register accordingly. Basically, anything that could have been seen by the general public, the copyright office considers a published image. So only those images that have lived on your hdd and never seen the light of day can be registered as unpublished images.

That isnt clear in the info on the copyright page, but that is what I was told on the phone by their office.

[Pinto]

He is talking about registering all your NEW images from the last 90 days.

If you get into the habit of registering all your work from the last 90 days, then you will always be within the regulations to be protected.

However, that isnt that simple.

There are separate registrations that have to be made for published and unpublished works. So you simply cannot register everything as one type or the other and be safe. You MUST separate your published and unpublished during that time and register them properly or you may not be covered.

Unpublished can be registered ANY TIME as long as its BEFORE an infringement. So that means that if you have never published a photo anywhere and you shot it ten years ago and its never been infringed, you can still register it and be covered.

Published works, must be registered within 90 days of FIRST PUBLICATION. So that means that same 10 year old image could be published tomorrow for the first time and you can still register it within 90 days and be covered.

The reason for the 90 day limit on published work is to allow photographers that might be working a job and need to send images to a publication immediately dont have time to register before they are published. This gives them time to still get the image registered within a reasonable amount of time.

The reason unpublished images can be done anytime BEFORE an infringement is that the likelyhood they can be stolen and used is next to nil unless you give them to someone who can use them. And since you are giving them out, you should know to register them BEFORE handing them out to someone. If you dont and they use them, you are sol for not being careful.

If a previously registered UNpublished image is then published, you are still covered by your original registration, you do not have to re-register as a published image.

And btw, posting an image ANYWHERE in public, even your little homepage that has had 10 viewers in 10 years still counts as publication, so register accordingly. Basically, anything that could have been seen by the general public, the copyright office considers a published image. So only those images that have lived on your hdd and never seen the light of day can be registered as unpublished images.

That isnt clear in the info on the copyright page, but that is what I was told on the phone by their office.

Thank you for the detailed explanation. That helps a lot.

[sfaust]

And btw, posting an image ANYWHERE in public, even your little homepage that has had 10 viewers in 10 years still counts as publication, so register accordingly. Basically, anything that could have been seen by the general public, the copyright office considers a published image. So only those images that have lived on your hdd and never seen the light of day can be registered as unpublished images.

That isnt clear in the info on the copyright page, but that is what I was told on the phone by their office.

Unfortunately, this isn't the case. If it was, life would be so simple. You'd just take all your images shot, create a web gallery, upload it to your web site, and register all your images as published. If only life were that simple :)

From the legal advise I've been given, they say that whats considered published or unpublished in regard to web use hasn't been defined in court, and is very vague as written. One group of lawyers will tell you it constitutes publication, while another group will say it doesn't. And when you have lawyers arguing over a point of law, it will only cost you in the end if they are arguing over your issues. If the lawyers can't agree on a point, its best to look for other alternatives that they all agree on.

There isn't any case law or precedents on the books yet regarding publication on your web site for example, so assuming uploading to the web counts as a publication is dicey at best. If a precedent is set later on which shows publishing to the web does not constitute a publication, all your previous registered copyrights could be argued to be registered incorrectly, and thus void. And that would suck.

There is one iron clad rule that can be used to assure your work is properly copyrighted. Register them as unpublished before you show the work to anyone. After the shoot create a CD with thumbnails from all the images from the shoot, and Fed Ex the cd with the registration form for overnight delivery. The copyright office accepts the FedEx date shipped as the date received, so you're covered the next morning on. Since no one has seen them, there is no way they can be considered published.

A pain, but worth it if you want to be sure you are protected. But its a lot easier and less complicated than trying to track what images are published, which aren't, and what constitutes a publication in the legal sense.