555 COURT DISMISSES GENTIEU CASE AGAINST GETTY
May 2, 2003
By: Nancy E. Wolff
Editor's Note: The following story, written by Attorney Nancy E. Wolff, was
first published in the PACA Update. Ms. Wolff is counsel for the Picture Archive
Counsel of America (PACA). She may be contacted at firstname.lastname@example.org.
A federal district court in Chicago recently dismissed on a motion for summary
judgment, an action brought in January 2000 by a photographer, Penny Gentieu against
her licensing agent, Tony Stone Images/Chicago. (Summary judgment is a method of
promptly disposing of a case before trial where there is no issue as to any material
fact). Gentieu charged that the actions of Tony Stony Images (TSI) violated her
copyright, breached its fiduciary duty, and breached her agency agreement. After
carefully reviewing all the evidence submitted, the court granted TSI's motion to
dismiss the case in its entirety. (For ease I will refer to the defendant as TSI in
most instances, as it was her original agent, although Getty Images subsequently
acquired TSI and was the party at the time of the motion.)
Briefly, (the decision is 68 pages), Gentieu is a photographer, specializing in images
of babies, and typically shoots them against a white lit background, eliminating any
shadow so they appear to be floating. In 1993 Gentieu signed an exclusive agency
agreement with TSI, granting TSI the right to be her exclusive stock photography
agent. She was assigned an editor who would send what TSI called "shoot briefs,"
essentially a list of potential subjects that clients were interested in licensing.
One particular shoot brief suggested that the photographer submit baby photographs
such as a "baby shot straight on silhouetteable clean white background." Without
reference to any Gentieu images, the art directors at TSI sent a similar shoot brief
to other photographers. As a result, other contributors submitted baby pictures to TSI
that were shot against a white background. Almost two years later, a subsequent shoot
brief indicated that baby pictures against a white background were no longer needed,
but provided other subject suggestions.
Apparently over 200 of Gentieu's shots were accepted by TSI and she generated over
$850,000 from approximately 7,000 transactions. However, her sales peaked in 1997, and
she blamed the decline on the way TSI handled her sales. In part, Gentieu refused to
sign a new contract that was introduced by Getty Images in August 1998 after it
acquired TSI. The 1998 contract was intended to standardize agreements among
photographers of many acquired companies, as well as change the commission due
photographer's from 50% to 40% for online sales. Photographers who did not agree to
sign the 1998 agreement did not have their images marketed on the TSI and Getty Images
websites. In 2001, Getty Images exercised its right under its 1993 Agreement with
Gentieu to terminate the agency relationship and removed her images from its licensing
The Copyright Claim
Gentieu claimed that TSI violated her copyrights by reproducing and making derivatives
of her baby pictures and by commissioning others to do so. Second, she alleged that
TSI exceeded the scope of its licensing agreement in the manner it conducted the
licensing of her images.
With respect to the allegations of unauthorized copying and the creation of
derivatives, the court was required to determine whether the alleged "infringing" baby
pictures submitted by other TSI contributors were substantially similar. This required
the court to compare the images and conduct an "ordinary observer test" to determine
if an ordinary observer would find any taking of protectible expression that was
material. Since copyright does not protect an idea (such as photographing babies), the
protectible expression is the elements of a photographer's composition such as
lighting, shading, camera angle, background and perspective. Ordinary poses that
follow from the choice of the subject matter are not protectible, whereas contrived
positions might be.
Consequently the court concluded that Gentieu could not claim copyright in the idea of
photographing naked or diapered babies or in the poses that are the natural movement
and facial expressions of babies.
In carefully comparing 15 sets of photographs that Gentieu asserted were infringed by
other contributors, the court concluded that in each case there was no copying of
protectible elements. The court described the copyright in her baby pictures as a
"thin" copyright. Since she limited the photographs in some cases to just a head shot
against a white background, and added nothing else that was protectible in terms of
copyright, near exact copying was required to find infringement or the court would
risk granting a monopoly on all naked babies against a white background to one
photographer. While Gentieu argued that her technique of creating a "high white"
background was unique, the other photographers employed other techniques to create a
white background and the court noted that a white background is common for
photographic portraiture and well suited for stock photography.
In sum, all similarities between Gentieu's photographs and the allegedly infringing
works were in the idea of photographing babies, but were expressed in different ways.
In this action, the accused infringing photographers were located in London. These
photographers provided testimony to rebut her allegations of infringement stating that
they did not use Gentieu's images as the basis for their photographs, but had
independently created the images, and simply selected the subject matter based on the
shoot briefs received from their art directors, suggesting needed shots. The court
found that these shoot briefs were not suspect and were not evidence of copying.
The second part of Gentieu's copyright claim was to hold TSI responsible for misuse of
her images by customers of TSI, such as use outside of a license or in the creation of
derivative images. TSI's contract with Gentieu protected it from this portion of the
claim. The contract granted TSI "in the event of loss, damage or misuse to any of the
Images" the sole right to bring claims on her behalf and all settlements and
litigation decisions were at TSI's sole discretion. Further, the contract contained
language limiting TSI's liability for loss, damage or misuse of any images and
prevented TSI from being held liable for infringing acts of third parties.
Finally, the court found that the myriad acts by TSI that Gentieu complained of, such
as permitting licenses after the termination of the agreement, allowing cancellations,
various reporting issues, etc., did not exceed the broad scope of the license created
when Gentieu appointed TSI as her sole and exclusive agent and representative
throughout the world. These acts were also considered "de minimis" by the court.
Breach of Fiduciary Duty
The complaint stated that TSI breached its fiduciary duty by commissioning and
accepting baby pictures by other contributors and by telling Gentieu not to submit
similar images. As a principal-agent relationship was created under the 1993
Agreement, TSI had a fiduciary duty to treat Gentieu with the utmost candor,
rectitude, care, loyalty and good faith. Gentieu argued that in inducing others to
create "Gentieu style photographs," TSI violated its duty. The court noted that under
agency law, an agent can act on behalf of competing principals without violating its
fiduciary duty as long as the representation of competitors is disclosed. Gentieu did
not dispute the fact that she was aware that TSI would represent other photographers
whose subject matter was "babies." Significantly, the court stated that "the very
nature of the stock photography business requires that the stock agency solicit images
on the same subject so that it can offer clients a menu of images to choose from."
The shoot briefs were not evidence of any misconduct on the part of TSI (particularly
given the Court's observation that Gentieu herself had received art direction and
shoot briefs) nor the letter to Gentieu thereafter stating that TSI no longer needed
more pictures of babies, as TSI had provided three pages of ideas for photographs that
were needed. Consequently, the court dismissed Gentieu's claim for breach of fiduciary
Breach of Contract
Gentieu asserted that 1) TSI's same misconduct in licensing her images that formed the
basis of her copyright claim, breached the 1993 agreement, 2) that other conduct
breached the contract's "best efforts clause" and 3) all of TSI's acts breached an
implied covenant of good faith and fair dealing. (A claim for delayed royalty payments
had previously been resolved and was no longer part of the claim). Based on the same
contract language relied upon in the copyright violation claim, granting TSI broad
rights and unfettered discretion in licensing and instituting actions, the court found
that the first part of the breach of contract claim failed as a matter of law.
In part, Gentieu based the breach of the "best efforts" clause on TSI's failure to
market her images on the web. In some jurisdictions, best efforts clauses are
unenforceable as too vague. Here the court interpreted the clause to require an
obligation to use good faith, reasonable efforts to promote Gentieu's images. The
court found that her claim failed in several respects. In particular, the failure to
market the images on the website was not a breach of the best efforts clause. In 1993
there was no website and TSI was not obligated to develop one. Even after the website
was created, the 1993 contract gave TSI the right and sole discretion with respect to
marketing and promoting images in any and all mediums throughout the world. Finally,
the court concluded that the unambiguous terms of the 1993 agreement could not be
nullified by an implied covenant of good faith and fair dealing.
In sum, the court found that none of the conduct complained of constituted a breach of
the 1993 agreement.
This decision is significant as never before have common practices of the stock
industry, such as sending "wish lists," art direction, representing contributors who
may shoot similar subjects, litigation and marketing decisions, and liability for
third party misconduct had such judicial scrutiny. The court grasped the nature of the
stock industry and the need to present clients with relevant choices of images that
meet their needs, requiring various photographers to shoot similar subject matter. It
would be crippling if stock libraries could not send multiple contributors similar
wish lists, or could not accept images from contributors who shoot the same subject
matter. In particular, a niche agency could not compete if it could only represent one
photographer that photographed, for example, wild animals. However, with respect to
providing art direction and requesting photographs of particular subjects, I would
recommend using verbal descriptions of requested shots and would not provide another
contributor's image as an example of a "well-selling" image.
From a copyright standpoint, the decision is favorable to both photographers and their
representatives. The court correctly understood the distinction between the idea and
the expression of an idea, as the copyright act was not intended to grant any one
creator a monopoly over one idea. It is important when representing many contributors
that similarity in "subject matter" in general does not expose stock libraries or
individual photographers to liability. Companies and photographers need to be
competitive with each other and provide clients with images of subject matter that is
in demand and to keep current with industry trends.
Finally, the decision was significant as the court upheld the standard language used
in most contributor agreements, including the PACA forms, limiting agent's liability
for third party acts of loss or misuse. In addition, upholding the language granting
the agency or library discretion in pursuing claims and settlements against third
parties is important in that business discretion and good judgment is needed in
determining whether it makes sense from a business perspective to pursue all claims,
and to make a settlement.
Finally the ambiguous term "best efforts" was defined in a way that makes business
sense as it implies reasonable efforts. Each library must make decisions on how to
market and promote images, and must have the discretion to use reasonable judgment in
(c) Nancy E. Wolff, Esq., the PACA Legal Committee