Who Owns The Copyright In The Photograph That Launched A Thousand Pleadings?

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
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Over a decade ago, a lawyer snapped a photograph of the Indianapolis skyline, thus opening the gates to perhaps the most prolific flood of copyright litigation in the history of Indiana. Over the last five years or so, this image has been the basis for dozens of copyright infringement lawsuits against scads of defendants. However, on July 18, 2017, Southern District of Indiana Judge Richard Young cast doubt on whether the plaintiff in all those copyright cases actually ever owned the copyright in the first place.

A “Digital Extortionist”?

In early 2000, Indiana attorney Richard Bell was working with designers to create a website for the law firm at which he was a partner, Cohen & Malad. In February 2000, the website designer suggested some stock photos of the Indianapolis skyline for use on the website. Bell, himself a photographer as well as a lawyer, didn’t want the firm to spend money on generic stock photos. In March 2000, Bell went out to the St. Clair Avenue canal bridge and took a photo of the skyline with his own camera. The firm ultimately used Bell’s photo on the website.

In 2011, after his retirement from the full-time practice of law and after the firm was done using the photograph, Bell registered it (and at least one other image he took of the same subject matter) with the Copyright Office. Bell is no Ansel Adams, but his photos are pretty good. Bell uploaded them to an internet photo stream, and they ended up rising to the top of many Google searches for pictures of the city. Consequently, lots of people came across these images and downloaded them for use on a range of websites and promotional materials.

Problem is, the aforementioned users of these photos didn’t have Bell’s permission, and Bell has not been shy about asserting his rights in court. Since 2011, Bell has brought dozens of lawsuits over the alleged unauthorized use of these images. Lest you think that all of the targets of these lawsuits are unsophisticated individuals and unwitting small businesses, they have also included large corporations, major universities and even another law firm.

Bell has been labeled by some as a copyright troll and by others as a “digital extortionist.” In 2015, Judge Tanya Pratt chastised Bell, and granted attorneys’ fees against him, after an apparently completely innocent person was erroneously caught up in Bell’s litigation dragnet. Judge Pratt wrote:

[T]he Court finds that Mr. Bell’s motivation is questionable. Mr. Bell has filed a multiplicity of suits in this Court, each involving the same or similar infringement allegations. In many of these copyright infringement suits, Mr. Bell has improperly joined several defendants, thereby saving him extensive filing fees. In this case alone, Mr. Bell sued forty-seven defendants and then quickly offered settlements to defendants who were unwilling to pay for a legal defense … Further, in this case, Mr. Bell lacked any evidentiary support for his claims against [the defendant]. The Court is persuaded … that the motivation of Mr. Bell in filing this action appears to be an attempt to extract quick, small settlements from many defendants instead of using the judicial process to protect his copyright against legitimate infringing actors.

But even after this, the lawsuits kept coming. Indiana lawyer and blogger Kenan Farrell wrote:

Somehow there are still people out there using Richard Bell’s Indianapolis skyline photos on their website, despite years of reporting about it here on this blog … People, don’t use Richard Bell’s Indianapolis skyline photos! He WILL sue you.

To no avail. Dozens more suits were filed even after Farrell’s warning.

Were the Photographs a Work for Hire?

In May 2016, Bell filed one of his cookie-cutter complaints in the Southern District of Indiana against Michael Maloney, a crime scene forensics consultant who allegedly used one of Bell’s photos to promote a seminar he was conducting in Indianapolis. Maloney decided to contest the allegations and, after some discovery, the parties filed cross motions for summary judgment.

The basis for Maloney’s motion was the “work for hire” doctrine. In order to prove copyright infringement, the plaintiff has to show that he is the owner of the copyright. As a general rule, the owner of the copyright in a photographic work is the person that takes the photograph. However, according to the Copyright Act, the “work for hire” doctrine creates an exception for any “work prepared by an employee within the scope of his or her employment.” If the exception applies, the work is owned by the employer and not the employee (unless they agree otherwise by contract). Whether a work is prepared within the scope of employment is determined through a three-part test, including consideration of:

  • Whether the creation of the work was the kind of task the person was employed to perform;
  • Whether the creation of the work occurred substantially within the authorized time and space limits of the job; and
  • Whether the creation of the work was actuated, at least in part, by a purpose to serve the employer.

As to the first factor, Judge Richard Young acknowledged that Bell was not hired by his law firm specifically to take photographs, but on the other hand there was evidence he took those photographs as part of his role as a partner in the firm: part of being a partner is creating business through marketing, which is the whole point of a firm website. The Court indicated that the second factor was not terribly persuasive either way. As to the third factor, Judge Young found that it was plausible that Bell (who ostensibly took many photographs for pleasure) authored this particular image for his own purposes. However, the timeline and chain of events also permitted the reasonable inference that the creation of this particular photograph was motivated by Bell’s desire to serve his employer (an inference bolstered by the fact that Bell never charged the firm for using the image).

Ultimately, because the undisputed facts gave rise to “competing inferences,” Judge Young was unable to conclude as a matter of law that Bell owns the copyright in the photograph, and denied both motions for summary judgment. The parties presumably will now either settle or move towards trial. The outcome of this matter will no doubt be eagerly anticipated by the Indianapolis legal community, and also by the defendants in about a dozen other similar actions still pending in the same court.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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