“I am gratified by last week’s ruling from the 9th Circuit Federal Court of Appeals. It is a welcome victory for the photographic community and creative artists everywhere. This sends a clear message about the importance of artists’ rights and the value of our work. While the proceedings — begun only as my last resort to gain compliance from K2 after a year of their ignoring my attempts to negotiate with them — have been costly and challenging, they are not yet complete. I’m looking forward to their eventual and final resolution.”
Since some news bearing my name about a substantial legal victory for photography has recently appeared in the photography and legal trade news, I figured that it might be appropriate to share the more complete backstory here for anyone interested. Thus,if you’re someone who cares about maintaining a copyright interest in the work you create, you might want to read on. If this stuff bores you to death, then stop reading – I don’t blame you.
For several years I have litigated an annoying, painstaking, costly, and distracting lawsuit defending my copyright and breach of contract against sporting goods giant (and now documented infringer) K2 Inc./K2 Corporation.
On April 30, 2007, the 9th Circuit Court of Appeals (one step below the Supreme Court) chalked up a sizable victory for photographers and visual artists everywhere, when it ruled in our favor that an advertiser who licenses images and attempts to re- purpose those previously licensed images, must continue to honor all license restrictions that came with the original photos. In particular, if the license specified a limited time to use the images, then the images may not be used after the expiration of the license term in a “derivative work” (eg. a collage).
Sounds like a no-brainer, right? You license an image for a specific use and a period of time and that’s what the client get to use it for, right? Well, it should be, but it’s not that easy.
To briefly summarize the layman’s history of the case, K2 was once a favorite client of mine. We enjoyed a great relationship in the late 90’s, early 2000’s until I fell victim to their apparent philosophy that went something like this: “[when it comes to using artist’s work] K2’s policy is to beg forgiveness, rather than ask permission.” (That’s an honest quote from a former Director at K2 – in the case’s record…)
Beginning in 2002, K2 began to use my images beyond their license term. Then, in 2003, after a year of pleading, letter writing, begging, and urging compliance with our signed contracts but getting no results (only a call from their VP telling me, effectively, to f*%$ off), I was forced to file suit. This was–and is–the only lawsuit I’ve ever filed in my life.
After years of costly litigation (me vs. the muscle of a publicly traded, billion and a half dollar company) and a trial in 2005, a Federal Judge ruled in our favor on 58 infringements, 396 lost slides, and numerous other contract violations. While this portion of he case could be considered a relative success (I did collect back licenses and was awarded conversion on lost slides- although at much lower values that we thought reasonable…), there were several problems.
Most notably when writing that decision, the Judge mistakenly walloped the photography industry, and unknowingly gave K2 (and any other willful infringer in the future) a loophole by which to claim “fair use” on re-purposing/republishing advertising images using a narrow sliver of Copyright Law called Section 201(c) “Collective Works.”
Behind the scenes, my lawyers, the ASMP, PACA, and numerous other artists rights groups, major players in the photography industry, and I were aghast at the potential undermining effects of this ruling on the visual arts industries. Effectively, in what amounts to a tripped-up misunderstanding of the application of a very specific point of law to the facts of the case, the Federal District Court’s decision allowed K2 or any company the ability republish an image they had previously licensed for a limited period of time in ANY different, new medium, so long as they didn’t change how the image/ad originally looked or add new visual elements. Translation: If I licensed K2 a shot of a famous snowboarder jumping off a cliff in 2001 for 1 year full page for print magazine advertisements not to exceed a distribution of one million copies, they could –if they didn’t change how the ad looked– effectively republish that entire ad, sporting a copyrighted image and all, as a billboard in Times Square or on a website, or wherever, in an unlimited fashion, forever. That’s right. Crazy, eh? I bet you’re starting to see the far reaching implications of the case…
Consequently, in 2005, despite the substantial financial costs and all the drama (amidst our early “victory”), we felt professionally and morally obliged to appeal the District Court’s decision on several points of law.
Then, just recently on April 30, 2007, much to our liking the Appellate Court reversed the District Court, cited K2 with an additional 24 copyright infringements, and sent the case back to the District Court to review whether or not K2’s infringements were willful and–because these images were all registered in advance of their infringement–to determine fair statutory damages and legal fee awards.
That brings us up to today.
Thus, while final resolution is still pending (that is now back in the hands of the District Court, set to rule sometime in the not-too-distant future), our industry is hopefully better off than it was before all this mess. Whatever happens with the remainder of my case will be what happens. What’s important is that a victory for photography and visual artists everywhere has been won.
FWIW, although important issues remain to be resolved regarding the 24 additional infringements, I do like to celebrate milestones (usually with Champagne, but here a few words will do…). I want to take a moment to thank my legal team: Kate Hendricks, Yale Lewis, Bowman Neely, Alexa Shelley, and the entire staff at Hendricks & Lewis in Seattle. If you ever need an amazing attorney, their office is the full of ‘em. They defend and protect Jimi Hendricks’ Estate, Courtney Love/Cobain’s Estate, George Clinton, and many other heavy hitters. I highly recommend them.
Additionally: Victor Perlman and Gene Mopsik at ASMP, thank you. Gentlemen, you rock. Nancy Wolff, PACA, and your associates, thank you. Ninth Circuit Court of Appeals, thank you. And for those of you I’m forgetting in this brief entry – thank you too. You know who you are…
Words of Wisdom
Now, a good question to ask is: What have I learned from all this?
And that’s what’s really the point and makes the entry relevant here. I’ve learned a million things. Too many to name, but, among them certainly are:
-Keep good records. The only reason I was even allowed to play at this legal lev
el was because I had great records.
-Keep better records. Despite what could be called ‘great’ records I kept, there is always room to improve. The same “great” records kept me away from more $ and a speedier resolution. Keep the best records you can imagine. Review your contracts with talented attorneys.
-Register your images with the Library of Congress. Because of this, you’re much better off if your images are ever infringed. Beginning back before these proceedings in around 2002, I began to register every image I shoot with the Library of Congress. You should too. It gives you the keys to the courthouse, to attorney’s fees, and statutory damages (up to $150k per infringement). Had I registered every image (way back to 1990’s, 2000, prior to any real “group registration” options) this could have been a more clear slam dunk. Learn more here.
-Always try mediating before litigating. I tried for a year (what seemed like forever) to negotiate with K2–with it on my mind every day–to get out of going to court. Do that. And do more of it. Try hard. I tried SO HARD to stay friends and good business associates with the “new” leadership at K2, but to no avail. Keep in mind the timeline for federal cases such as this– my legal battle is not yet finished and I shot some of the images in this dispute more than 6 years ago! Lawsuits are not pretty, are very expensive, and not for the weak of heart or stomach. If you can avoid the legal battle, do so. But when it’s time to fight, fight like hell.
-Become a member of trade organizations, ASMP, PACA, ASPP, APA, and others. They are your friends. Devour the material they share with you. As our industry continues to change rapidly, some of their views are slow to keep up, but they’re getting better. And to continue their evolution, they need more active members. Get involved.
-Share with others and give back. When you learn something, or need advice, consult your community. If not for my extended community, it would have been hard for me to proceed with this. Give back.
Beyond that? Ding Ding, now onto the next round… I’ll keep you all up to date on how this progresses. Until then, I’m happy to answer questions or plug in my two cents. And for now, take a minute to celebrate that your image licenses actually mean something. Thanks 9th Circuit.
For those who want more info, the full Jarvis v. K2 written decision is nicely put here.