BY ALICIA CALZADA
Haynes and Boone, LLP
Q: We live and work in a super-competitive environment and that’s why I do my darndest to hire and keep such a talented staff. Their work jumps out and grabs readers and advertisers in every issue. But now and then, we find (or are told about) content produced by our staff in other newspapers, free sheets and in social media. We didn’t put it there, and we didn’t give permission. Any suggestions?
A: A company owns the copyright to photographs, graphics, articles and any other works of authorship that are created by its employees in the course of their employment. Just as you cannot use the copyrighted works of others without permission, your competitors (or anyone) cannot use your copyrighted work without permission. If they have done so, this is a violation of copyright law. In addition, if they have removed information about the source of the works, even just a byline, with the intent to enable or conceal the infringement, they may have violated the Digital Millennium Copyright Act (DMCA). Both violations have statutory damages available under the law.
There are several ways to proceed. Regardless of what you do, it is worth the time and money to consult with an attorney to ensure that you are taking the path that best fits your needs and goals. I typically advise victims of infringement that the approach you take should depend on the outcome you desire. If you merely want the infringing use to stop, sometimes asking is all it takes. Unfortunately a lot of people in the publishing business, especially lower level employees, have little or no understanding of copyright law. Smart publishers, and upper management of publishing companies, should know that if all they are getting is a request to stop infringing, unaccompanied by a demand for payment, or worse a lawsuit, they are dodging a bullet. All communications should be in writing, and you should keep a good record of them. Your request can be informal- simply letting the publisher or editor know that the use is an infringement and that you won’t tolerate it. It can be also be a more formal cease and desist letter, either from you or your attorney. The National Press Photographers Association (NPPA) has a sample cease and desist letter for copyright infringement on its website. Many times a cease and desist letter will come with a demand for payment.
Another option is to file what’s called a DMCA takedown notice. If the infringing use is online, there is a law that enables you to contact the internet service provider and have them remove the content. All ISPs, and social media companies such as YouTube and Facebook have contact information for filing such a notice. Again, the NPPA has a step-by-step guide to filing a DMCA takedown notice.
Sometimes filing a lawsuit is the best option for stopping or otherwise dealing with infringing activity. If you are not getting the results you are looking for from a demand letter, you should consider filing a lawsuit. Copyright infringement lawsuits must be brought in federal court and can be expensive, but if your work has been registered with the U.S. Copyright Office prior to the infringement, you will be eligible for an award of attorney’s fees and you will be eligible for statutory damages ranging from $200 to $150,000, depending on the nature of the infringement and other factors. If you have not registered the work prior to the infringement, you will not typically be eligible for attorney’s fees and you will only be eligible for actual damages, which can be very low, especially when compared with the cost of hiring an attorney to bring the suit.
There are a few important points to remember about copyright. First, regular and systematic copyright registration is essential for ongoing enforcement. Registering your copyright with the U.S. Copyright Office is not required to gain the copyright, which is automatic. However, registration prior to infringement confers certain benefits, including the availability of statutory damages and attorney’s fees in the event you need to take an infringer to court. For this reason, consistent registration is the best way to ensure that your work will be protected. The copyright office has great resources to assist with registration, which can be done online.
Second, some uses without permission may fall under “fair use”. Fair use is a nebulous concept, but a good example is a review, or critique. So if an article is being critiqued, or a photograph has itself become newsworthy, there may be a fair use defense to using the work, or a portion of the work, without permission in the context of discussion about the work. However, there are many misunderstandings about fair use.
Finally, it is important to realize that if the work is created by a freelancer, as opposed to a staffer, that freelancer owns the copyright, unless there is a written agreement to the contrary. The work is still protected by copyright—the difference is that because the freelancer owns the copyright, the freelancer must enforce and protect those rights. I’ve never met a freelancer who is happy about a copyright violation, and so they will appreciate it if you let them know about the possible infringement.
Some useful links:
Copyright office circular on Group Registration of Periodicals: http://www.copyright.gov/circs/circ62b.pdf
Copyright Office Circular on Group Registration of Daily Newspapers: http://www.copyright.gov/circs/circ62a.pdf
NPPA Sample Cease and Desist/ Demand letter: https://nppa.org/sites/default/files/cease_and_desist_sample.pdf
“Two Easy Steps for Using the DMCA Takedown Notices to Battle Copyright Infringement” by Carolyn E. Wright, Esq.