Next Step Copyright Infringement Presentation to the American Photographers Association Washington DC

1. An Exclusive Presentation for APA | DC by

2. Exceptionally innovative copyright lawyers who
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 Helped copyright holders pursue more than 100,000 infringers
www.DunlapWeaver.com

3. Your Presenters
Tom Dunlap (JD/MBA/MS) - IP & Commercial Litigation/Aviation
“100 Most Powerful Lawyers in Entertainment Law” by Hollywood
Reporter (2010)  Co-Chaired ABAs Copyright Lit. Subcommittee 
Washington SuperLawyers  Virginia Legal & Business Elite
David Ludwig (JD/MA) - IP Litigation & Prosecution
 Law Professor at GWU  Past Editor of American Intellectual Property
Law Association Journal  AVVO ® “Superb” Rated
Jeffrey W. Weaver (JD/MBA) – Corporate Law & IP Prosecution
AV® Preeminent™ Rated  AVVO ® “Superb” Rated  Virginia
SuperLawyers  Widely despised by copyright infringers in FL

4. First Take-Away
This presentation and its contents are protected by copyright and
may not be copied, reproduced, displayed or posted in any form
or by any means without the prior written consent of
DunlapWeaver, PLLC.
• This presentation is NOT legal advice or legal representation.
• This presentation sets out general concepts and some of the
basics of copyright law as it relates to business.
• Anyone determining that they need legal advice or
representation should seek counsel and advice from an
attorney or law firm.

5. Presentation Overview
1. What is a Copyright? (Tom)
2. Filing a Copyright Registration (David)
3. The Value of Copyrighting your Work (Tom)
4. Unique Issues in the Digital Realm (David)
5. Combating Image Theft (Tom)
6. Copyright and Government Works (David)
7. Copyright Infringement Case Studies-Examples &
Results (Jeff)
8. Q&A (All)

6. 1. What is a Copyright?
 Basis for copyright
 What can be copyrighted
 Differences from trademark & patent
 Duration of copyright and the benefits of registration
 Common misconceptions about copyright and fair use

7. The Basis for Copyright - The Laws …
 Constitution of the United States
 The Copyright Act of 1976
 Sonny Bono Copyright Term Extension Act of 1998
 Digital Millennium Copyright Act (DMCA)
 Federal Trademark Dilution Act of 1995

8. What and How.
 What is copyright?
 Original works of authorship that are fixed in any
tangible medium of expression. (Title 17, § 102 &
103)
 NOT brand or ideas
 How to secure copyrights?
 Automatic on creation (Berne Convention) or
registration with U.S.C.O. (more on this later)

9. Understanding IP Assets
Patent
® TM SM
Trade Secrets
©
systems, processes, discoveries,
etc. - Stronger protection - 14 to
20 years - Must research history
- New, obvious and useful -
Requires registration - Patent
attorneys (Patent Bar) -
Generally Expensive
words, slogans, phrases, logos, symbols, etc. that identify products in
the marketplace - Unlimited time - Established through actual use or
registration - “Likelihood of confusion” - Cyber squatting, Dilution
May be registered with State and/or Federal

10. Exclusive Rights & Term
 Exclusive Rights of Owner
 Reproduce or make copies of the original work.
 Prepare derivative works.
 Sell or distribute the work.
 Perform or display the work.
 Term
 Life of author + 70 years
 Work-for-hire = publication + 95 years or creation
+ 120.

11. Limitations
 Fair use for criticism, comment, news
reporting, teaching, scholarship, or research (Title 17, §106):
 purpose and character
 nature
 amount used
 effect of the use
 Parody (excluding satire)
 De minimis use
 U.S. government works
 Computer software backup

12. Fair Use
 Fair use = permitted infringement NOTE
– attribution has nothing to do with Fair
Use of copyright!
Three step basic fair use analysis:
1. Why is the image being used? Has the image
been transformed?
2. How much of the image is used?
3. What is the effect of the use upon the potential
market for or value of the copyrighted work?

13. 2. Filing a Copyright Registration
 Mechanics
 Cost
 Processing Times
 Compilation Copyrights: A Photographer’s Shortcut

14. The Copyright Application
 Form VA for photos ($65)
 Or, save time and $$ with eCO! ($35)
 Deposit Copy:
 Why?
 How? 2 Copies of “Best Edition”
 Processing Times:
 9-18 Months
 Expedite if pending pro probable litigation or other good cause ($795)

15. Registering Compilations of Photos
 Form GR/PPh/CON or eCO
 Rules:
 Must separate published from unpublished photos
 All the photos published in the same calendar year (if published)
 All photos by same photographer
 All the photographs have the same copyright claimant (if by employee)
 750 photos max
 Deposit Copies:
 File formats: .bmp, .gif, .jpg, .psd, .tif, etc. (but no .raw)
 Upload or burn & mail
 Pros and Cons of Compilation Registrations

16. 3. The Value of Copyrighting your Work
 What constitutes infringement-sliding scale
 Statutory Damages
 Attorneys’ Fees & costs

17. Infringement = Theft
 A valid copyright is
 an original work independently created
with a modicum of creativity fixed in a
tangible means of expression.
 It is infringed when
 work is
reproduced, distributed, performed, public
ly displayed, or made into a derivative
work without the permission of the
copyright owner within the US
©

18. Infringement Breakdown
 Jurisdiction
 Federal courts ONLY
 Venue
 Where defendant is found or where infringing acts occur
 Infringement—show:
1. Ownership of valid copyright.
2. Copying of protected elements

19. Special Notes
 No mens rea required
 Three year statute of limitations
 Indirect liability via
 contributory infringement
 vicarious infringement
 If no registration then
 injunctive relief and actual damages only

20. Infringement Defenses
 Invalidity
 Independent creation
 Equitable defenses
 Misuse
 Abandonment
 Equitable estoppel
 Innocent intent
 Unclean hands

21. Remedies
 Preliminary and permanent injunctions
 Irreparable harm is NOT presumed.
 Impoundment and destruction
 Actual damages
 Infringer’s profits
 Statutory (benefit of registration in advance)
 $750 to $30,000 per infringement;
 up to $150,000 for willful
 Attorney’s fees
 Customs seizures

22. 4. Unique Issues in the Digital Realm
 Strategic Use of Copyright Management Information
 Prevent Infringement Before It Happens: Anti-
Circumvention Protections
 Stopping Online Infringement with a DMCA Takedown
Notice
 Unmasking Online Infringers with a Subpoena

23. CMI: Copyright Management Information
 What Is It?
 © Copyright notice
 Author/owner name and/or contact information
 Terms and conditions for use of work
 How to Add It?
 Metadata or Watermark
 Why Do We Care?
 Liability at the point of distribution
 Extra penalties for altering/removing CMI or distributing works with
removed/altered CMI

24. DMCA Anti-Circumvention Protections
 Illegal to circumvent “access control technologies”
 What? Password protection, copy
protection, encryption, etc.
 Why Do We Care?
 Liability at the point of distribution
 Potential identity tracking
 Extra penalties for circumvention
 Practical Example

25. DMCA Takedown Notices
 Quick/cheap removal of infringing content from third party
sites
 i.e., Facebook, Flickr, Pintrest, Tumblr, Wordpress, etc.
 Not a prerequisite to an infringement claim
 Benefits:
 Limits damages to avoid a lawsuit before it starts
 Limits potential re-dissemination
 Potential risk if used too aggressively

26. DMCA Subpoena to Identify Infringer
 Allows access to contact information of infringer without a full
lawsuit
 Enables copyright owner to serve a
settlement demand on an anonymous infringer
 Commonly served on ISPs, domain registrars, and third party
website owners
 Not completely extra-judicial, but much simpler than a lawsuit

27. 5. Combating Image Theft
 Discovering online infringement
 How to fight image theft
 Contingency Representation

28. Online Searching for Infringement
 Upload copyrighted images for comparison matching:
 Google “Search by Image”
 Firefox “Image Finder” Add-in
 Tineye.com
 Go to content relevant sites and conduct manual review of
images.

29. Fighting Back (Preventative Medicine)
 Notice on work
 Watermarking
 JavaScript code to prevent copy and paste
 Transparent graphics
 Flash website
 Hidden Seal/ Stamp
 Low res image use
 REGISTRATION & PURSUIT! See e.g. Getty Images. . .

30. Contingency Representation
 It is your art. Get the best and brightest to protect it.
 Be wary of online vendors of copyright solutions - Only lawyers can file
lawsuits for other people. Most of the other solutions are scams.
 Be careful when choosing a copyright lawyer. Your business lawyer may
know what copyright means, but the law is complex . . .
 Want to know more about how we work?
Stick around after and ask us – or email partners@dunlapweaver.com

31. 6. Copyright and Government Works
 Created by government employee in scope of employment:
No ©
 Created by government contractor: Yes ©, but government has
a license
 But, any copyrights can be assigned or licensed to
government, in which case the government does own the
copyright or a license to use it
 Copyright status not always clear or easy to discern

32. 7. Copyright Infringement Case Studies-Examples
& Results
PLEASE WELCOME SPECIAL GUEST PANELIST:
Former Chair of APA|DC Randy Santos is a photographer whose artistic vision and unique personal perspective on
the world around him has established him as one of the Washington DC area’s preeminent photographers.
A native Washingtonian with over 30 years of photographic experience, Randy’s work reflects his passion and drive
for creative self-expression, a mastery of the medium of photography, and his love for the architectural beauty and
history found in his hometown.
Randy’s distinctive work is regularly featured in art installations, corporate and hospitality
environments, government facilities, and innumerable print and electronic media worldwide.
In addition to being an artist, Randy is also a husband and father. Randy has established a business model that
enables him to make family life a priority while enjoying the aesthetic and personal fulfillment that his work brings.

33. CASE STUDY # 1
Alleged Culprit: Critical Messaging Association (CMA)
Alleged Infringement: 4 photos taken from www.dcstockphotos.com and used
on CMA Website

34. CASE STUDY # 1
So……How did Randy discover this?

35. CASE STUDY # 1
What else did he find? Metadata makes great evidence!

36. CASE STUDY # 1
Case Analysis:
Valid Copyright Registrations?
 4 photos taken from 4 images under 2 Copyright Registrations
 Counts as two separate infringements – NOT 4
 Need to confirm that compilation copyright registration valid
Evidence?
 Screen shots to preserve evidence & metadata to support
NEXT STEPS . . . ?
(Hint: Try to make them pay for what they use)

37. CASE STUDY # 2
Alleged Culprit: Associated Press (AP)
Victim: Freelance Photographer in NYC (“Joe”)
Facts: 37 prized photos taken of the WTC on 9/11
 Joe attempted to license 7 of them to AP for $250
 Unsigned contract from AP; Invoice for $250 Joe Provided
 None of the photos were copyrighted initially
 AP Published other 30 photos of Joe in 2011
 After discovering, Joe copyrighted other 30 as “unpublished” works

38. CASE STUDY # 2
Alleged Infringement: AP keeps using all 37 photos, recently publishing the 30
Joe never meant to license or sell
Case Analysis:
First 7 AP bought?
X Joe meant to license them but there was no copyright and his invoice
demonstrates an outright purchase of the 7 most valuable pics
 Should have had a better contract for the license of these images
Other 30 pics AP used?
Possibly. We are sure going to try!

39. Questions & Answers
DunlapWeaver PLLC Randy Santos
mail@dunlapweaver.com www.dcstockphotos.com
www.dunlapweaver.com