Photographers should be alert for textbook publisher requests for new image licenses to extend print runs on books that have already been printed without obtaining such licenses. In many cases, image owners may be entitled to high retroactive usage fees for copies already printed and distributed, as well as a fee for the new books the publisher intends to produce.
The publisher may request to “expand the original license” so it reflects both the original usage plus future anticipated usage. The publisher’s representative will also usually request that the term of use be extended to 10 years from the date of the new signing. The total revised print runs will usually be over 1 million books. In some cases, the estimated new print run can be as high as 1.25 million books; combined with the original authorized print run of 250,000, the future print run would bring the total number of copies produced to 1.5 million.
While the original invoice granted the publisher the right to print 250,000 copies, that may not have been the case. If the original invoice goes back several years, it was common to only license rights for print runs under 40,000 copies. There have been many cases where major publishers agreed to print fewer than 40,000 books but actually produced and sold hundreds of thousands more.
Even if the original license was as high as 250,000, there is still a question as to how many books the publisher has actually printed so far. They may have already printed and distributed more than 250,000 copies; if so, the image creator is entitled to compensation for the unauthorized use of their image.
As a result of agency acquisitions and closures, photographers are often contacted directly to extend image licenses. In some cases, the photographers are even being contacted and asked to submit an invoice when their agency is still operating and more than ready to invoice for the extended usage. It appears some publishers are trying to deal directly with photographers rather than their agencies in the hopes that photographers will not be aware of what they might be justified in charging, and that photographers will ignore unauthorized uses and license the images for much less than such uses are worth.
What should you do?
First, check your records to determine the allowed print run and if you licensed rights to the publisher directly.
If the image was licensed by an agent representing you, and it is no longer possible to obtain paperwork from that agent, ask the publisher to send you a copy of the original invoice that shows the number of copies they were entitled to print. In many cases, publishers have been unable to produce copies of original invoices, which is certainly a red flag.
Regardless of what the invoice says, ask the publisher how many copies have been printed and distributed to date. They may have had the right to print 250,000 copies, but in fact have already printed and distributed 450,000. In one case, a publisher had the right to print 40,000 copies and had already printed over 750,000 copies when its representative contacted the photo agent. In the case of the 450,000 copies, you have the right to send the publisher a “retroactive license” for the extra 200,000 they have printed over and above what they were legally allowed to print by contract.
A retroactive license is typically 3 to 10 times the normal fee for a given usage. Usually, the publisher will balk at providing information about the total number of copies printed, unless you sign a non-disclosure agreement. I recommend you sign such an agreement in order to determine the number of copies they have actually distributed. The potential extra fee you will be entitled to, if it turns out that they have made an unauthorized use of your image, is well worth the trouble. However, before you sign, make sure that the agreement allows you to discuss the situation with your attorney as well as your staff, as some agreement presented have prohibited disclosing the information to an attorney.
Here is how to calculate the fee in a case where:
- the image was used at 1/2 page size on the inside;
- the publisher originally licensed rights to print 250,000 copies of the title;
- the publisher printed 450,000 to date; and
- the publisher wants the further right to print an extra 1,050,000 for a total print run of 1,500,000.
My base fee for 1/2 page is $290 for 40,000 copies. Multiply that times 2.5 for the extra 200,000 copies, arriving at $725. Five times that number for the retroactive license fee would be $3,625.
The fee for a new printing of 1,050,000 would be 5.25 times $290, or $1,522.50.
The total invoice covering both retroactive and new uses would be $5,147.50. If I had asked for 10 times the base fee, which is reasonable, the total fee would be $8,772.50. This article provides more information about how to price other sizes of use and circulations.
These are my recommendations, though I am not an attorney and you may want to seek legal advice before proceeding with such negotiations. If you registered the copyright to your image with the U.S. Copyright Office prior to the infringement, an attorney might be able to get you significantly more for the unauthorized usage. Even if the image is not registered, the publisher may have violated their contractual agreement, and it is much easier to bring an action to enforce a contract than one for copyright infringement.