Los Angeles, California (The Hollywood Times) 10/08/2020 – What do Justin Bieber, Lebron James, Katy Perry, and Khloe Kardashian have in common? Aside from wealth and fame, they’ve all been sued over posting images of themselves to their social media pages.
The celebrities listed above, along with others like Emily Ratajkowski and, most recently, Deshaun Watson, have all been sued by paparazzi for posting photos of themselves without purchasing the copyright from the photographer.
Marsha Gentner, Intellectual Property Attorney for Dykema shares her perspective.
THT: Celebrities like Justin Bieber, Lebron James, Katy Perry, and Khloe Kardashian, have all found themselves in legal trouble for using images of themselves without copyright permission from the photographer. What protections/arguments are reasonable for each side to make under IP/copyright law?
The US Copyright Act expressly identifies photographs as a category of “original works” subject to copyright protection and registration. [17 U.S.C. §101 defines “Pictorial, graphic and sculptural works” as that term is used in the statute, to include “photographs”; §102(a)(5), in turn, lists pictorial, graphic and sculptural works as copyright protected subject matter.] Therefore, if the photographer (or whoever claims copyright ownership of the photo) obtains a US copyright registration – and such a registration is a requirement to file an infringement lawsuit – for a photo, and the celebrity copies or reproduces the photo (for e.g. on Instagram), the photographer/copyright owner has a case for infringement.
Below (question 3), I’ll discuss the most common celebrity defense under the Copyright Act, fair use. But defendants in photo copyright infringement cases (and this is something now impacting a broad swath of defendants, not just celebrities) also may argue that a particular photograph is not worth of copyright protection or only is entitled to very “thin” protection confined merely to the selection, if any, of lighting, shading, timing, angle, and film (and perhaps, “mood” or setting). There doesn’t seem to be any consistency among the various federal courts (who have exclusive jurisdiction over copyright claims) as to the level of protection to be accorded photographs as a category of work, per se. Some courts view the scope of protection narrowly, particularly in a sort of “factual” scenario, like taking a photo of a building, or cityscape – or celebrity on the street. In other contexts, photographs are viewed in the same light as other works of art, for example, what a photo by Annie Leibovitz might garner.
Emily Ratajkowski currently is a defendant in one of these celebrity photo cases, and she has argued to the court (in a motion not yet ruled on), that the photo of her she is accused of infringing is not copyrightable because the photographer simply photographed her on the street, as did many other photographers at the time, without any setting of the scene or editing after, or creative input.
THT: Where does legal precedent stand on this issue? And generally, have courts sided with the celebrity or paparazzi in these cases?
To my knowledge, none of these celebrity cases has gotten to that stage yet. In the case against Katy Perry, she filed a motion to dismiss which was denied by the court, but the court simply said it was too early in the case to decide the issues Perry had raised (the case was settled after that). Emily Ratajkowski recently filed a motion for summary judgment in the case against her, which has not yet even been fully briefed by the parties. This may present one of the first opportunities to see how a court reacts to some of these arguments. But generally speaking, in terms of cases involving copyright infringement of a photo that has been re-posted by another party on the internet or social media, the photographers have enjoyed a fair amount of success.
THT: How does the issue of using one’s own likeness factor in here? And in copyright law more generally?
It factors into the fair use defense, which is a commonly invoked statutory defense under the Copyright Act [§107]. Under this defense, there is no infringement if the use/reproduction/copies of the copyrighted work is undertaken “for purposes such as criticism, comment, news reporting, teaching . . ., scholarship, or research” but the defense has been applied more broadly than those contexts; for example, home recording of television programs for personal use (time shifting) long ago was held by the Supreme Court to be a fair use. Under the Copyright Act, in determining whether there is fair use, factors to be considered “include” but are not limited to: (1) the purpose and character of the accused use, including whether for commercial purposes; (2) the nature of the copyrighted work (here is where the “thin” protection issue comes in); (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.
I would expect a celebrity to argue something like: “Look, you took a picture of me, without my permission; once you publish it, why shouldn’t I be able to post it on my social media so long as I’m not making any money off of it? My copying of a picture of me doesn’t give anyone else the right to do that, so how does that affect the potential market for your photo?” I do think the issues might be a bit more complex than what appears at first blush, though. Celebrities do rely on this form of unsolicited publicity to further their careers. It’s almost a symbiotic relationship.
And any kind of blanket, “it’s a picture of me” rule could cover what seems clearly not to be a fair use. For example, Emily Ratajkowski is a model. It wouldn’t seem fair for her to use/copy/distribute photos of her from a professional shoot that someone else has paid for (including paying her), for her own use, even if she’s not making any money (other than modeling) off of the copy she posts.
Aside from the copyright law defenses, LeBron James has taken what could prove to be a very interesting approach. He has countersued the photographer for infringing his rights of publicity (under California statute and common law). Most states, including California and New York, have statutory laws and common law protecting the right of an individual to prevent the unauthorized commercialization or exploitation of their own image or persona. There’s decades of litigation on this in all sorts of situations. As I understand it, Mr. James has turned around the photographer’s copyright claim, in which the photographer asserts that the market for his photo – i.e. the money he receives – is adversely affected by Mr. James posting of the photo of him. This, Mr. James claims, shows that the photographer is profiting off of his image without his consent, in violation of his rights of publicity. Although not implicated in Mr. James’ case (since the photo was from a game), other celebrities might be able to assert a claim of rights to privacy, as well.
There certainly are first amendment issues with rights of privacy and publicity of celebrities, and this is a subject for an article or articles in and of itself. But I anticipate this will be used more and more to defend or discourage the celebrity photograph copyright infringement suits.
THT: What suggestions can you offer celebrities for navigating this paparazzi copyright issue? And, more generally, for “normal” people about using their own likeness?
I hate to sound flip about it, but don’t repost it if you don’t have the rights or a license. The fact of the matter is that a license fee may be quite inexpensive. And if your argument as a celebrity is that it’s too time-consuming or expensive or whatever to get your own photos or a license, then doesn’t that argue that the use is not a fair use? Or if you do use the photo, try to use less of it, and/or to “transform” it by commentary, or adding to it to recast it as a separate work standing on its own merits and which would not be expected to depress the photographer’s market for their photos. In this respect, I will say that, based on her brief, Emily Ratajkowski’s situation might present a different case. She alleges that the whole purpose of her reposting, with the comment “mood forever”, was social commentary as an objection to being accosted on the street by photographers and taking her picture without permission to make money; this argument could be particularly compelling for her, because she normally gets paid a lot of money to have her picture taken, and she gets to choose (by deciding which jobs she will or will not take) who takes it and for what purpose.
As for “normal” people, I really caution against it. Literally hundreds, if not thousands, of copyright infringement lawsuits are being filed for internet and social media reproduction of photographs. The Copyright Act provides for statutory damages of between $750 – $30,000 (or up to $150,000, if found to be willful), as well as attorneys’ fees. So lawyers (one rather notorious lawyer in particular) are taking these relatively simple cases on contingency. Services literally scour the internet for photographers to find infringing uses. In other words, you very well may get caught and held liable for a significant amount of money, to say nothing of attorneys’ fees. Is it worth it?
THT: What repercussions are reasonable for celebrity use of these images without permission/Purchase?
Honestly, it’s not for me to say what is “reasonable”. The Copyright Act sets out the repercussions – money damages, attorneys’ fees, and an injunction against the use. A jury, or in the case of statutory damages, a Judge will decide, based on the facts of a particular case, what relief is, or is not, warranted.
THT: Can you share a few cases involving copyright issues where this was an issue?
Other than the ones you have mentioned, all of which, except for LeBron James, have settled, and the pending Emily Ratajkowski case, I am aware of two others: Xclusive-Lee Inc. v. [Gigi] Hadid, No. 1:19-cv-00520 EDNY), which was settled, and a recently filed case against NFL quarterback Deshaun Watson in the US District Court for the Southern District of Texas.
But there are sure to be more, at least until some court rules definitively on the merits of the defenses the celebrities are asserting.
THT: Tell us about your experience in copyright law.
I have actively practiced intellectual property law for more than three decades, principally covering all aspects of copyright and trademark—ranging from worldwide portfolio management, to registration, litigation, due diligence, and of course, providing guidance and advice.
THT: What are the key areas that clients have asked for your help and successes due to your guidance?
In terms of copyright, much of the guidance I have offered in today’s atmosphere concerns the exact type of issues presented here—How do I protect my work on the internet and social media? What tools are available to me to take action against unauthorized use of my IP? What can I or can’t I use or do? What is a fair use?”
THT: Do you have any additional thoughts?
I do think some thought should be given to the flip side of the coin, so to speak. As I said, celebrities knowingly take advantage of the “paparazzi” to stay in the public eye. There are lots of professional services that photographers provide to celebrities, and for which celebrities are expected, and do, pay. In these situations, they are getting this “service” for free; maybe the least they can do is not re-post without permission or license.
About Marsha Gentner
Marsha Gentner is a Senior Counsel in Dykema’s Intellectual Property Group. Ms. Gentner focuses her practice on the management of global trademark portfolios. In addition to filing and maintaining an extensive docket of registrations throughout the world, Ms. Gentner supervises enforcement actions, including proceedings before local trademark authorities, customs and court seizures, and civil and criminal counterfeit actions around the globe. She handles transactional and licensing negotiations and disputes with manufacturers, suppliers, and international distribution networks, as well as due diligence.
Ms. Gentner has more than 30 years of experience prosecuting and litigating trademark and other intellectual property matters before the U.S. Patent and Trademark Office, U.S. district courts and courts of appeal. Cited as one of the “top” filers of inter partes proceedings (oppositions and cancellations) with the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, Ms. Gentner’s long experience and trademark expertise enables her to navigate complex registration issues, as well as the rules, practices and procedures of the PTO and TTAB. Ms. Gentner also is a mediator serving on the International Trademark Association’s select Trademark Mediators Network.
In addition to her trademark practice, Ms. Gentner handles all manner of Internet and domain name controversies and proceedings, including UDRP proceedings, copyright “take down” notices, domain name transfers, social media and internet registrar complaint procedures. Her practice includes copyright registration and enforcement, with particular emphasis on software and online content.
Prior to joining Dykema, Ms. Gentner was a member of a boutique Intellectual Property firm in Washington, D.C.