Direct Mail - Copyright Infringement

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

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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!

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.

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

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

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.

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.

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.

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.

ssim wrote in post #2961587
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, 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??

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?

tcphoto1 wrote in post #2962112
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?

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.

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.

Add those costs to your new invoice.

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.

Croasdail wrote in post #2961910
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.

tcphoto1 wrote in post #2962379
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/Cop​yright
http://www.editorialph​oto.com/copyright/prim​er.asp
http://fairuse.stanfor​d.edu …aterials/cases/​index.html
http://fairuse.stanfor​d.edu/
http://www.utsystem.ed​u …Property/cprtin​dx.htm#top
http://www.templetons.​com/brad/copymyths.htm​l
http://www.copyrightco​ntracts.com/copyright1​01.htm