By Barbara I. Berschler, Esquire
A recently decided case by the 11th Circuit offers professional photographers a primer on what to do and what not to do in order to protect their copyright interests in their photographs. While the case involved some well-known players—Kawasaki Motors and Roaring Toyz—and the unveiling of the ZX-14 sports motorcycle at the Daytona Bike Week in 2006, it took four years until the 11th Circuit ruled on the copyright claims of a photographer, and yet not all of the issues have been resolved.
The basic facts were that Kawaskai wanted to focus on the customization potential of its new motorcycle. It hired Toyz to customize some ZX-14 motorcycles to display at Daytona. As part of its customization efforts, Toyz hired an independent contractor, Ryan Hathaway, to apply custom paint and graphics to the vehicles. Toyz also hired Todd Latimer, a motorcycle photographer known for his unique and artistic style, to photograph the two customized ZX-14s.
The dispute arose over whether Kawasaki and Toyz used Latimer’s photographs in ways beyond those he claimed to have authorized. In response to Latimer’s claim of copyright infringement, he was met with significant arguments that he had to rebut. By examining some of these defensive arguments, you can learn from Latimer’s miscues.
Latimer’s first mistake was not having a written agreement that clearly stated what uses of his works he was permitting. Even in the flush of deadlines, not taking some time to consider and memorialize, even if it is in an e-mail, what uses are okay, subjects the photographer to the onerous task of proving a negative, namely, he did not authorize the complained about use.
The most ironic argument Latimer had to overcome was that his photographs were shot without Hathaway’s permission and thus could be said to infringe Hathaway’s copyright in the graphic art appearing on the motorcycles. By not having taken into account that what he was photographing contained separate copyright-protected material, Latimer committed a second mistake and opened himself up to the claim that his photographs were not protected by copyright because they infringed Hathaway’s work. Only by the court concluding that Hathaway had granted an implied license to have his work on the customized ZX-14s photographed was Latimer able to stay in the game. However, since what is good for the goose is also good for the gander, Kawasaki and Toyz argued that their uses of the photographs came within an implied license from Latimer.
At this point it will be useful to discuss how a court will determine the existence of an implied license. Basically, an implied license can be inferred from the conduct of the parties. The objective facts of a photographer creating a work at the request of another, delivering that work, and intending that the person will copy and distribute the work, meaning that the photographer knows how the client intends to use the work, show the existence of an implied license. Once an implied license is found, it will be interpreted to be a broad license unless there is proof that at the time of the work’s delivery, the photographer placed limitations on its use.
Latimer’s third mistake was not recognizing that through his actions he could be seen to have granted an implied license to use his photographs. The court concluded that Latimer’s conduct resulted in an implied license. The unanswered question was whether any of Kawasaki’s uses exceeded the scope of the license. Latimer’s fourth mistake was not having any clear proof that at the time of delivering the work product, he intended to limit the scope of their use. That being the case, the matter has been returned to the trial court to look into the facts on that issue.
Just because Mr. Latimer has gone through, and it appears continues to go through, a costly and non-conclusive lawsuit, other professional photographers can avoid his problems by being aware that in their artistic endeavor, copyright issues can be raised by both sides of the litigation.
© Barbara Berschler 2010. Barbara has launched her blog where she will comment about current intellectual property issues.www.allrightsreservedblog.com