Before I Pay You for Copyright Infringement… Who Are You, Anyway?

Readers of my blog know that I’m generally in favor of enforcing copyright. If you’ve got the goods on someone and E = Who Are You? by Mark Kaufmanthose are your rights, you should be entitled to collect for it — or at least stop it. Likewise, if you’ve been called out for infringing, the right thing to do is usually to pay the pound of flesh required of you. But how does the would-be defendant know whether paying it will actually solve the matter?

A client recently received a demand letter from a licensing agency for allegedly infringing on a copyright owned by a newspaper in Europe. The notice was referring to my client’s use on a relatively private — and certainly a non-profitable — website of, let’s say, the famous image of a French boy running with a baguette. In this case the pound of flesh demanded by the agency was only a couple hundred bucks, but I was motivated by the sense that the purported agent was a greedy, undeserving troll until proven legitimate.

In my response to the demand letter, I listed several reasons why I couldn’t tell whether the purported licensing company had any rights at all.

  • Having a letter from a European newspaper, saying it has licensed rights in its images to the licensing company, doesn’t necessarily mean that includes the rights to use this photograph. That’s a license in blank, and a license in blank that does not list the works that are subject of copyright enforcement is generally not enforceable.
  • Because this photograph is from the 1950s, the 1909 Copyright Act applies. Everything prior to 1978 is covered by that earlier version of the copyright law. Under its provisions, the owner of the rights must display the familiar c in a circle (©) on the image, as well as the year and the owner, in order to prevent the copyright from falling into the public domain. On the one hand, the alleged owner of the copyright may have registered its rights in another country, and that registration might be honored under a treaty with the U.S. On the other hand, if not registered over there, it’s not likely that this European alleged copyright owner complied with U.S. copyright law and provided the required notice.
  • It’s not clear that anyone owns the copyright to this photograph, because no one has shown me a copyright registration.
  • Even if there is some kind of assignment or license from the European newspaper to this licensing agency, it’s not clear what rights they were given.

My skepticism was also supported by case law. A few years ago, a copyright troll in Nevada was found not to have the right to enforce a newspaper’s rights because he was only licensed to enforce such rights—but he did not own the copyright. In Righthaven v. Dibiase, the Ninth Circuit U.S. Court of Appeals affirmed that only the copyright owner has that right.

And the response to my letter? Another copy of the identical demand letter, this time addressed to me instead of to my client. Apparently, it was automatically generated.

The moral of the story is to have a healthy suspicion of your fellow human being. Until I see the proof, I advise my clients to hold off on complying with a demand letter, lest another person (or hairy troll) suddenly appear from under the bridge at a later date and claim infringement on the same property.

Mark Kaufman

Mark S. Kaufman
Kaufman & Kahn
kaufman@kaufmankahn.com

747 Third Avenue
32nd Floor
New York, NY 10017
Tel. (212) 293-5556
Fax. (212) 355-5009

Blogs offer an accessible way for readers to learn more about issues that are important to them, but their short format is in no way representative of the entire breadth of knowledge that an attorney possesses. The only way to ascertain your legal rights and responsibilities is to engage an attorney in an official capacity, as a client.

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