Corbis is probably doing more than any other stock photo seller to track infringements,
and collect from those who infringe. As Dave Green, Corbis Senior Corporate Counsel
pointed out in a recent PACA presentation, the goal of any program should be to convince
all photo users that "it is cheaper to do the right thing rather than the wrong thing."
Chasing infringements should not be an exercise that produces only expenses; for Corbis,
the program has not only produced revenue, it has become a way to educate clients on
legitimate practices and sources for images.
Corbis has developed a dedicated program for locating and identifying many unauthorized
uses. While somewhat complex to initially set up for those without technical skills or
access to legal resources, the process is relatively simple and straightforward
thereafter.
There are four main elements to the process.
1 - Copyright Registration of all images.
2 - Digital watermarking of all comp images delivered.
3 - Search the Internet for images with the watermark.
4 - Once infringers are located charge them a compliance fee which is higher than a
license fee, and follow through with legal action if the client does not choose to do the
right thing and pay for their usage.
It is interesting that being diligent about any one or two of the steps above is not
likely to produce much in the way of satisfactory results. Only when all four are pursued
aggressively are the results likely to be worthwhile.
Copyright Registration
Their first step is to register all images on the Corbis site with the Copyright Office.
This is done through a bulk registration once a month. A disc containing thumbnails of
all images that were added to the database during the month is generated, and a sample
printout of a few of the images is provided. This meets the registration requirements of
the U.S. Copyright Office. In 2003 Corbis registered the copyright for more than 100,000
images.
This enables them to comply with the U.S. copyright requirement that all images be
registered prior to use, or within 90 days of first use, in order to be eligible for
statutory damages and attorney's fees. The copyright law allows for statutory damages of
up to $30,000 for innocent infringement and up to $150,000 if you can prove willful
infringement. Each image that is uploaded to their database has a date-of-acquisition and
it is a relatively simple process to download all thumbnails that have been added after a
certain date.
This is fine for all new images, but most companies are overwhelmed with the challenge of
registering all those images that were in the system prior to a decision to start
registering copyright, or images that they have no idea when they were first published
without significant research. Green believes there may be a simple solution to this
problem, based on the amended rules recently adopted by the Copyright Office.
He says, "One of the things you might do if you don't know the exact first publication
dates is put thumbnails of a decade's worth of material on a CD. Make 40 copies of that
CD. Register one copy of the CD for each quarter in the decade. (Each registration costs
$30 regardless of how many images are included in the registration.) Be careful to
articulate in the registration that you are only claiming copyright for the images that
were published during the quarter you are registering, and that you disclaim copyright
protection for any images that were not published during that period. You will still bear
the burden of proving which registration applies to which image. However, your preliminary
purpose is that there exists a registration for the image that is appropriate for the
quarter in which it was created." (A note: Green did caution that this approach has yet
to be tested, and recommended that copyright owners consult with experienced counsel and
be absolutely thorough and open when filing registrations with the copyright office, so as
not to jeopardize registrations.)
Having a copyright registration gives you tremendous leverage in resolving an
infringement. You can let the infringing party know quickly that delay and avoidance will
only increase their cost. Point out, "If we go to litigation and I prove willful damages
the judgment will be Z. I am willing to accept Y, which is far less than Z. Which do you
want me to do?"
ting to register until you find and infringement is not advised; if you have that
registration for any case that occurs after tomorrow you insure attorneys fee which is a
powerful tool," Green continued.
This also works for public domain work and compilations. While you may not have copyright
to the underlying public domain work if you have created a digital work from the first
work and you have made modifications to that original in the process of digitizing and
photoshopping it, you can copyright your compilation. For the purposes of protecting your
rights to be compensated, the copyright of a compilation is as good as having copyright to
the original provided you can demonstrate that the image they used was your compilation.
Any digital file of an image is a compilation of a number of distinct elements. It is
very difficult to remove the unprotected items from a digital image file.
The compilation copyright has been useful in a lot of Corbis' cases involving previously
published images, such as news and portraiture. In many cases the underlying image used
may not have been separately registered until the infringement is found, but Corbis has
registered the digital compilation, preserving its rights and enhaned penalties if the
infringer obtained the image from Corbis.
Tracking Uses
Corbis has used Digimarc since 1996, and was responsible for some of the earliest patents
for Digimarc, which they assigned to Digimarc. They automatically place a unique
identifier including the image number on each comp image that is downloaded. The
advantage of using different identifiers for comp images is that they should not be used
in any way unless an invoice has been generated for a specific usage.
Then Digimarc contracts with web crawlers (spider) to search the internet for images with
the Corbis comp identifier. Searching the entire internet is difficult but by focusing on
certain top sites they have managed to generate some very satisfactory results. Digimarc
provides Corbis with a report that identifies the domain and the specific URL where any of
these comp images are found. "By clicking on the URL we get a picture of where it is at,
when Digimarc found it, what the file name is and by hyperlinking we get the specific
image that was utilized," Green said.
Digital watermaking is invisible and it is possible to embed such data information as:
unique transaction ID, copyright data, and whether usage is restricted. The digital
watermark is put into place in the normal workflow. If you find the image again you can
prove it is yours.
It is important to recognize that the Digimarc web crawler doesn't necessarily find all
your images. In theory, as the image is altered, changed, re-sized the data stays with the
image. But the crawler does not have a perfect record of locating all this data. In
addition it just crawls images that are available in straight HTML. It does not go through
PDF's or locked sites, and it does not go deep into databases. Thus, according to Green,
it may only find 1/3 of the images that have been used. But, he says, "there is a good
chance that another 1/3 are on the same sites near the images being used. As you gain
experience you can start to identify hot spots where you have issues and request searches
of specific web sites."
Even given these limitations Corbis' results from using Digimarc are impressive. There
are other technology vendors such as VIMA and PicScout that offer different strategies for
finding image uses. Green says, "At the end of the day there is no single technology that
will completely protect your images, but each is getting better." He recommends layering
technologies rather than trying to find the best one.
Once Digimarc provides Corbis with a list of images found, they do a database search to
compare this list of image numbers with images licensed. If the image has never been
licensed, then clearly the use is unauthorized. For those images that might have been
licensed a sales associate will go to the URL, see the image, determine the actual user of
the image, and determine if that particular user licensed rights for this usage. This
procedure doesn't solve the problem for images that are used only in print, but more and
more frequently print users are also publishing their materials online. Thus, finding an
image online often makes it possible to track the image back to a print use.
Green says, "For a company trying to catch real image pirates, this is a bit like shooting
fish in a barrel. Even if you are just finding businesses who took the image but forgot to
license for whatever reason, this is an easy and proactive way to form a customer
relationship. The phone call goes like this. 'Congratulation, you've just licensed a
Corbis image. Let's talk about your license fee for this use, and how else Corbis can
assist you with your image needs.'"
"The goal here is not to sue everyone. The goal is to make it cheaper for customers to do
the right thing rather than the wrong thing. We charge a compliance fee a bit higher than
the licensing fee because there has to be an incentive for them to do the right thing.
For those who refuse to take responsibility for what occurred, and work to insure that
future uses are done with a license, higher multiples of the licensing fee may be
necessary."
"These are easy conversations because we have a simple rule. We give customers the
choice of doing the right thing and we follow through with legal action if they choose not
to. If a customer will not pay a licensing fee and some kind of compliance penalty
associated with it for a use that has already occurred, and we can't resolve it quickly
with a phone call from the sales associate then the legal department gets involved. If
the legal department touches it an additional multiple is applied because legal time is
expensive and the lawyers have to recover more. Potential customers are given the option
and most of them tend to do the right thing before it goes to the legal department, "
Green continued.
Results
So what kind of results does this effort generate? In 2003 Corbis opened more than 100
infringement investigations (where someone from the legal team actually made an inquiry,
as opposed to the sales team). Keep in mind that the majority of infringements were
settled by the sales team without any involvement from legal. The legal team filed
numerous law suits and settled more than 40 cases after giving users the chance to resolve
the claims quickly and less expensively. They recovered more than $1.5 million not
counting the fees for unauthorized uses negotiated by the sales team. Many of the cases
started in 2003 are ongoing.
In some cases Corbis required defendants to adopt compliance software as part of a
settlement agreement to stave off litigation. For example Ophoto and Webshots installed
Digimarc technology to compare the images uploads to their site with the Digimarc images
Corbis has. When they find one they are required to take it down. "If these folks are
making a profit on permitting the use of someone else's images, then they have to invest
in technologies designed to reduce infringement," Green said.
Green gave an example of how negotiations work in practice. They located a number of
their RF images on a web site and the images had been used for about six months. The
sales associates offered the infringer a $4,000 licensing fee. They felt this was a good
fee that reflected not just the license fee, but a small amount to recover for the efforts
needed to track the use and contact the customer. And it was warranted because they had
registered the copyright. The company obfuscated, delayed and took their time, finally
refusing to pay anything, and telling Corbis to get lost.. The collection was turned over
to the legal department. Three months after it hit Green's desk he had a $40,000 check.
He said, "I can't stop these people from paying more money. I can only give them every
opportunity to act reasonably, and hold them responsible when they don't."
He said that a typical recovery starts at a high multiple of the normal usage rate. "The
highest I've ever gotten in a RF case was 50 times the licensing fee for 9 images. The
company was clearly a willful infringer, had cropped the visible watermark off, had lied
about their use and refused to pay the fee," Green explained.
Assuming you have a copyright registration in place and the infringement occurs after the
registration there are two types of damages - actual damages plus profits, or statutory
damages. Prior to the end of trial you must pick one or the other which permits you to
bring proof on both types and decide which one is higher. The actual damages that courts
award are typically a multiple of the licensing fee. Case law supports a multiple of five
times, and most stock agency contracts specify a ten times multiple. Profits are also
awarded, and in extreme cases can be significant. Green points to a recent case involving
an automobile maker and its ad agency, who were held liable and forced to pay nearly one
million dollars in profits and actual damages. Their offense? They borrowed the following
ten words that originally appeared on a work of graphic art and paraphrased the words in
an ad campaign: "don't get too comfortable, fall asleep, and miss out on your life..."
With digimarc you can prove that they got it from your web site. If they have cropped off
a small watermark logo they have removed copyright management information and that is a
separate violation. In cases of removal of copyright management information, the law
provides for attorney's fees regardless of whether the images is registered and your
damages range from $250 to $25,000.
This past year, Corbis had one case where a judge initially awarded Corbis nearly
$250,000, which included attorney's fees, for violation of a single image. Cases are rare
where the value of the imagery is so high, but cases involving awards of $50,000 to
$150,000 for a single image are not uncommon.
Amazon Case
In June of 2003, Corbis made national news by filing suit against Amazon.com and 25
poster and picture stores for allegedly selling unauthorized copies of hundred's of
images. (See story 574). While this case is challenging, Corbis feels the issue of
"allocation of responsibility" is extremely important.
The images involved are almost exclusively high-end celebrity portraiture from the Corbis'
Outline collection. These images are shot by well known photographers and normally
licensed on a very limited exclusive basis. Their high value depends not only on the
reputation of the personality, but the quality of the artistry of the photographer. In
addition, for these photographer to gain the cooperation of the celebrities in the future
they must be able to control access to the images created.
These images were being sold as retail posters and prints for significantly less than the
fees they should have commanded had the photographers and celebrities been compensated.
Corbis could have filed 25 different cases against different vendors. After looking at the
activities of Amazon they made a difficult decision and determined that Amazon had
responsibility and failed to act, and received profits attributable to the infringing
uses.
Corbis didn't provide notice to Amazon, and that was controversial, but they believed that
filing the suit was the only way to get Amazon's to respond. It was not enough for Amazon
to just remove the material; Corbis wants Amazon to avoid selling celebrity images unless
Amazon has confirmed that these images have been lawfully obtained. Corbis' goal in this
suit is to change behavior and for companies like Amazon to adopt tighter restrictions on
their suppliers. As an industry Corbis believes that we must sometimes take tough stands.
Green points out that agencies of Corbis size and revenues has certain privileges and
responsibilities. Among the privileges are being large enough to have in-house legal
expertise to devote to this problem of infringement. And among the responsibilities are to
not shy away from difficult cases, but provide leadership and guidance to everyone in the
image industry.
An important aspect in changing behavior is in publicizing activities. Green mentioned
that Corbis received a number of positive calls from clients, photographers, and other
agencies following recent publicity. "Clients totally understand why we are doing this;
one large publishing client mentioned that it was about time that the photography industry
started doing the things that other media industries had been doing for some time with
regard to piracy." Green also mentioned that clients expect that agencies will undertake
some kind of policing of rights; otherwise, how can an agency guarantee its clients that
the rights they are paying for are worth what agencies charge, especially in the case of
exclusive licenses." Green believes that the industry is just scratching the surface in
what needs to be done, and has mentioned a number of times the need for the industry,
perhaps via PACA, to take a coordinated and cooperative approach to fight piracy and adopt
solutions and standards. "Educating clients on the sources and practices for obtaining
legitimately licensed photography IS customer service, " exhorts Green. "Clients don't
want to deal with infringing images any more than photo agencies. So efforts like digimarc
give customers assurances that images they license are in fact legitimate."
Finally, Green points out that as individual companies we can compete at many levels such
as with search capability and quality of imagery. "The one thing we can not afford to
compete on is being effective at fighting piracy. If we are competing with each other on
that we have lost the battle on piracy." Towards that end, Green says Corbis will continue
to share information and work with photographers, photo agencies, and clients to ensure
that copyrights are understood, respected, and enforced.