Vondran Legal Photo Infringement Insights - Tales from the legal trenches!!  Dealing with a photo, image, art, video or illustration infringement matter?  Call us at (877) 276-5084.  This is what we do!

Introduction

Receiving a copyright infringement demand letter from a company like PicRights or an intellectual property (IP) law firm can be a jarring experience for any business. These letters often come with a stern tone, legal jargon, and demands for payment, leaving recipients feeling overwhelmed and unsure of their next steps. But before you panic or ignore the situation, it's crucial to understand the stakes—and why seeking experienced copyright legal counsel should be your first move.

Copyright law is no small matter, particularly when it comes to photo infringement. Photographers, agencies, and their legal representatives, such as PicRights, have the right to protect their intellectual property and are often vigilant in pursuing alleged infringements. Failing to address these claims properly can escalate the situation, potentially resulting in litigation. Federal court case law demonstrates that the consequences of willful copyright infringement can be severe. Statutory damages for willful infringement can start at $25,000 and may climb to a staggering $150,000 depending on the facts of the case. These figures are no idle threat; they reflect the courts' intent to deter infringement and uphold the rights of copyright owners.

Many businesses are unaware that even unintentional copyright infringement—such as using a photo without proper licensing or mistakenly believing it was free to use—does not absolve them of liability. The legal nuances in these cases are complex, and without the guidance of an attorney who specializes in copyright law, businesses risk mishandling their response and exacerbating the issue.

Hiring a copyright attorney ensures you have a knowledgeable advocate who can evaluate the legitimacy of the claim, negotiate on your behalf, and minimize potential damages. Your attorney can scrutinize the alleged infringement, assess whether the demand aligns with the actual harm caused, and even challenge excessive or unfounded claims. Moreover, a legal professional's involvement sends a clear message that you are taking the matter seriously and are prepared to protect your rights.

This blog explores why it's essential to act swiftly and strategically when facing a photo infringement demand letter. From understanding the legal implications to crafting a strong defense, we'll walk you through how copyright legal counsel can be your most valuable asset in navigating this challenging situation. The stakes are high, but with the right guidance, you can protect your business and resolve the matter effectively.

The Corson case from New York: 2nd Circuit

This is a case from New York Federal Court and may be looked to in cases in the 2nd Circuit as persuasive legal authority that posting even ONE image, illustration, photo, or graphic on your business website can lead to a final award of $25,000 (not to mention possible attorney fees).  However, there are some good guidelines as to what qualifies as "willful infringement" in this case.

Corson v. Brown Harris Stevens of the Hamptons, LLC, 2018 U.S. Dist. LEXIS 248214, at *8–9 (S.D.N.Y. Jan. 24, 2018):

Case Facts:

Plaintiff, Lisa Corson, filed this claim for direct copyright infringement under 17 U.S.C. Section 512, alleging that Brown Harris Ste7phens of the Hamptons, LLC infringed on her copyrighted photograph. Brown Harris has conceded that it infringed. The only issue at trial was whether the infringement was willful, and on that basis, whatever and to what extent statutory damages should be ordered.

I find that the infringement was willful, and I find that the conduct of indifference to the rights of others was egregious and that the statutory damages should be $25,000. There were no actual damages.

More specifically, the action was filed in this court January 25, 2016, and service was timely.

Plaintiff is a professional freelance photographer who lives and works in Ojai, California.

Defendant is a New York limited liability company and a licensed real estate brokerage firm, whose main office is located at 27 Main Street, East Hampton, New York, 11937. The defendant, with its affiliated companies, is a leading real estate brokerage firm in New York City and other areas. This particular defendant is confined, however, to the Hamptons.

Plaintiff worked as a photo editor for the Wall Street Journal between July 2010 and March 2013. She then developed an independent photography business but took assignments from the Wall Street Journal on a freelance basis.

She entered a freelance agreement, which is Exhibit 3, dated March 27, 2013, with the parent of the Wall Street Journal. Under this agreement, Corson was commissioned from time to time to shoot original photographs for use in print and online editions of the Wall Street Journal. Among its provisions was a clause that said that specific rights would be set out from time to time for her work plus reimbursement of expenses and other incidental matters.

On or about March 13, 2015, at the request of the Wall Street Journal, Corson was engaged to take a photo shoot of a house at 9945 Beverly Grove, Beverly Hills, California. The house [*3]  was a particularly luxurious house, with a swimming pool in the background, and was being built on speculation. The article intended to use this house as an example of luxury speculative homes.

Plaintiff took her photo shoot in or about March of 2015, spending a day in Beverly Hills and substantial time thereafter in editing the photographs selected for review by the Wall Street Journal. She was paid $600 for the photo shoot, plus another hundred dollars for video footage, taking a $700 fee in all. She was also reimbursed for mileage and food.

On March 18, 2015, plaintiff applied for and obtained a copyright registration, including these photographs.

A photograph, a relevant photograph, was published in the March 20, 2015 edition of the Wall Street Journal. The article was entitled "The race to $100 million spec house." The article appeared in its print and online editions. The article was accompanied by the photograph at issue, along with three other photographs taken by plaintiff, plus photographs taken by other photographers. The particular photograph that's in issue is a photograph of the swimming pool in the back of the house showing a rather luxurious-looking swimming pool and deck. [*4]  The online version of the Wall Street Journal article displayed the photograph at issue -- that is, of the swimming pool -- as part of a slide show, along with a number of other photographs and a video. Plaintiff's photograph was the 14th in a series of 19 photographs, all being a slide show that could be accessed from the media edition of the Wall Street Journal. Those who wanted to see the slide show would have to scroll through it one after the other. As I said, four of the photographs in the slide show were taken by plaintiff; the others were taken by other photographers.

Pursuant to a license agreement, plaintiff licensed the Wall Street Journal to use her photographs but retained ownership of the copyrights in her photographs. Plaintiff published the copyrighted photograph on her website, along with a copyright registration notice. It was to sell photographs to other users, but there was no evidence that a sale took place of the photograph in question.

Plaintiff testified that typical license fees could range between a hundred dollars and $8,000. Somewhat inconsistently, the testimony was that for a cover page, a typical license fee might be a thousand dollars to $3,000, and a [*5]  full page, not a cover page, could be anywhere from $350 to a thousand dollars. I find this testimony and these ranges too wide to really have any particular relevant value, and I find from this that plaintiff's damage was not proved, that there was no actual damage involved.

At the time the Wall Street Journal article was published, defendant maintained a blog within its website entitled Talk of the Town. The blog was not used to sell particular homes. It was created generally as a goodwill venture, intended to be of interest to potential buyers of luxury homes and to enhance the defendant's stature in the industry. It is part of a larger marketing set of activities.

Erik Davidowicz, who testified here, was the director of advertising for defendant. His habit was to search the internet for articles written and published by other entities. He then copied the entire text of an article from a third party and, through various software owned by defendant, pasted it into his blog entries, along with a hyperlink back to the original source.

On or about March 20, 2015, Davidowicz found the Wall Street Journal article and copied it to the Talk of the Town blog. He copied the entire Wall Street [*6]  Journal article, pasted it into a Talk of the Town blog post, and made reference to the Wall Street Journal, specific reference in the form of a hyperlink to the original article. However, he did not obtain permission from the Wall Street Journal article to reprint the article, nor did he obtain clearances from any other of the sources that were depicted in the article.

He chose, along with the article, plaintiff's photograph with the swimming pool. In order to do it, he had to scroll through and disregard at least 13 other photographs. Presumably, he viewed and discarded all 18 of the photographs not taken. His repeat of the photograph showed no attribution. He claimed that it was not possible in the software that was used by the defendant to copy the attribution, but it's clear that with a minimum of effort, a reference could have been given. There was no reference given.

Defendant is a sophisticated company. It's sophisticated in all aspects of the business, and it should have known, to the extent it didn't know, that just as it seeks protection for its original activities, so others who create photographs and other creative matters have and should be expected to have interests to [*7]  preserve their property interests in their creations. Davidowicz and the Wall Street Journal were oblivious to these other interests, although they clearly knew there were such a thing. I find this indifference of the rights of others to be egregious.

The record produced by the defendant shows that the particular blog post depicting the plaintiff's photograph was viewed approximately 84 times, 13 of which were viewed by Image Rights, an entity that plaintiff and others hired to protect copyrights by finding and identifying illegal uses of others'. Although defendant did not obtain any material gain specifically from the use of this photograph, or the reprint of the article, it cannot be said to have enjoyed any specific profit from its infringing use, nevertheless, these kinds of depictions enhanced its goodwill, the main purpose of the blog post Talk of the Town.

Defendant conceded infringement from the beginning of the case. It made various offers of judgment that the plaintiff thought were inadequate and were rejected. Thus, there was substantial discovery and a one-day trial of the issues.

It's clear to me that plaintiff is entitled to vindicate rights not, in plaintiff's opinion, adequately compensated, and it is defendant's right to vigorously reject efforts they considered windfall damages. Thus, I blame neither party for these proceedings. Whether and to what extent the fees that were generated by prevailing party in this litigation was appropriate will be the subject of the next proceeding.

The Court's findings as to "willful copyright infringement"

So first the main issue was whether defendant's infringement was willful. I find here willfulness entitles plaintiff to the enhanced statutory damages provided by 17 U.S.C. Section 504(c)(2).The standard for willful infringement is not only knowledge on the defendant's part that what it did was infringement but also reckless disregard of the practice of protecting creativity, the very purpose of copyright. When the plaintiff can demonstrate, either directly or through circumstantial evidence, that defendant had knowledge that its actions constituted infringement, or recklessly disregarded that possibility, enhanced statutory damages for willful copyright infringement under 17 U.S.C. Section 504(c)(2) are appropriate. I cite Twin Peaks Productions, Inc. v. Publications International Ltd., 996 F.2d 1366, 1381-1382 (2d Cir. 1993), in a district court decision and decisions of other circuits. Another case is Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 112 (2d Cir. 2001). And many cases have held reckless disregard of the copyright holder's rights suffices to warrant award of enhanced damages regarded by the copyright laws. One district court decision so holding is Bryant v. Europadisk Ltd. I only have a reference to the U.S. Patent Quarterly, 91 USPQ2d 1825 (S.D.N.Y. April 15, 2009). The case was affirmed by the Second Circuit 2010, 603 F.3d 135, and certiorari was denied.

Plaintiff successfully proved that her photograph was copyright protected. It's clear that defendant, as a sophisticated business, knew there was copyright involved and did nothing to check those rights or to clear permission to reprint from the photographer.

The next question is what amount of statutory damages should be awarded. The Supreme Court instructs that the statutory rule formulated after long experience not merely compels restitution of profit and reparation from injury but also a desire to discourage wrongful conduct. F.W. Woolworth Co. v. Contemporary Arts, Inc., 344 U.S. 228, 233, 73 S. Ct. 222, 97 L. Ed. 276 (1952).

Court of Appeals, in its usual way, has listed criteria that a district judge can use in assessing what amount of statutory damages would be appropriate. There are a number of cases, but one case is Psihoyos v. John Wiley & Sons, 748 F.3d 120, 126 (2d Cir. 2014). There are essentially five other cases. I spelled out the sixth. None of these factors are essential in and of themselves but are guides a district court can use. The infringer's state of mind, the expenses saved and profits earned by the infringer, the revenue lost by the [*10]  copyright holder, the deterrent effect on the infringer and third parties, the infringer's cooperation in providing evidence concerning the value of the infringing material, and the conduct and attitude of the parties. Bryant v. Media Right Productions, Inc., 603 F.3d 135, 144 (2d Cir. 2010).

Taking these factors one at a time, the first one is the infringer's state of mind. There may not have been an intent to infringe, but there was a disdain and indifference to the rights of others, which I find to be egregious, particularly by a sophisticated company. By and large, unless the photographer has national or international fame, photographers don't make much money and they don't have much wherewithal to vindicate their rights. I don't know the plaintiff's status, but the fact that she takes an entire day plus part of another day for editing to take a photo shoot for $700 indicates the lack of power on the part of the plaintiff. Whether there was a secondary market, as the photographer hopes, for photographs is a speculative concern. It's a difficult business.

Defendant, a sophisticated company, like all other real estate companies, takes a great deal of pride in its listings and its creative work and working with clients and the like. I take judicial notice [*11]  of that, and there are so many cases in this court and other courts where parties in this business seek protective orders and protection for these rights. A company involved with these rights ought to know that others are equally entitled to the enjoyment of their creative work. The way that defendant acted shows a disdain for the creative work of others, and I find that to be egregious. That's the infringer's state of mind.

The expenses saved and profits earned by the infringer. There were no profits earned by the infringer. The expenses saved were minimal. The cost of a license in relationship to everything else the defendant did was not a substantial expense, and so this was not something that was done to save a lot of money. There was a goodwill concern, but the main factor is other of these criteria, specifically the infringer's state of mind and the fourth criterion, the deterrent effect on the infringer and third parties.

Before I go on to that, I talk about the revenue lost by the copyright holder. This is speculative. Plaintiff did not sell that work to others and didn't seem to have the kind of specific knowledge of how much could be obtained for a photograph to indicate that [*12]  there was any substantial profits that she obtained in the secondary market, so I can't say that plaintiff lost any appreciable amount of money. However, there's always that potential.

The main point put forth in the criteria is the deterrent effect on infringer and third parties. I find this the most important criterion, and on reflecting on this, I came to my award of $25,000 of statutory damages, the least amount that I think appropriate to deter the defendant and other similarly situated third parties.

The fifth criterion is the infringer's cooperation in providing evidence concerning the value of the infringing material. I can't say that there was any lack of cooperation, and I can't say that anybody was forthcoming as to the issues that proved to be of main interest at the trial, so I consider that a neutral factor.

And sixth, the conduct and attitude of the parties. It's clear that the defendant wanted to settle from the beginning and made that clear in preliminary conferences. But that's not enough. There were two offers of judgment in the case that are public because they were filed. Is that right, Mr. Saulitis?

There was an early offer of $3,000 and a later offer, after discovery had begun, of $5,000. Plaintiff rejected both. I can't say that the amounts offered were sufficiently attractive that the plaintiff was unreasonable in rejecting them. It clearly was inadequate in terms of deterrent effect. The offer did not reflect any substantial interest on the defendant's part to settle the case, nor its realization that what it had done was wrong, and therefore I can't say that the conduct and attitude of the plaintiff in litigating this case was unreasonable.

I think I've completed the issues with regard to statutory damages.

Plaintiff also asks for a permanent injunction under 17 U.S.C. 106, and the Supreme Court has, again, several criteria: evidence of irreparable injury; whether damages that are available at law, such as monetary damages, are inadequate to compensate for the injury; whether, considering the balance of hardships, a remedy in equity is warranted; [*14]  and whether the public interest would not be disserved by a permanent injunction.

I don't think there is evidence of irreparable injury because there's compensation by statutory damages, and these are remedies available at law. Statutory damages, in my judgment, are adequate to compensate for any injuries suffered by the plaintiff and to provide deterrent effect to the defendant. The testimony was clear that defendant took down the infringing photograph when demand was made to take it down, and soon after that took down the entire blog which reflected its indifference to creative rights. There seems to be no need for an injunction because no need will be served. And therefore, in the balance of hardships, since there's nothing really to be gained by the plaintiff and a loss potentially sufferable by the defendant, I think that the balance favors the defendant.

And the public interest does not need a permanent injunction in this case. I'm convinced that defendant has learned its lesson and will not repeat its disdain for others' creative rights.

Attorney Steve® Tip:  The court found there were no actual damages as the Plaintiff was paid for her image (only one image was infringed) by the Wall Street Journal, and there was no indication was seeking to license the photos to others for profits.  However, the Court found the Defendant acted "willfully" creating Plaintiff's rights to seek "enhanced damages" (statutory damages under the Copyright law).  The willful determination was supported by a variety of reasons:

• Defendant was a sophisticated real estate company (doing business in the Hamptons)
• They had their own marketing director and they value their own content
• The image at issue had a coypright notice (should have put the sophisticated real estate company on notice that copyright was involved)
• Plaintiff posted multiple images in a slideshow presentation.  Defendants had to scroll through and pick one (obviously, they one they wanted to use to build their brand)
• No permissions or clearances were sought despite being on notice of the copyright symbol
• Defendants apparently would cut and paste entire articles, and usually provide attribution to the photographer (however there was no such attribution in this case
• The court found the defendant infringers state of mind eggregious and oblivious to the rights of the photographer
• The court felt a strong need to "deter" this from happening in the future and based its $25,000 award on this
• Although the Defendant appeared to have cooperated, and made two Rule 68 offers of judgment (3k and 5k respectively) this did not change the result
• The court also awarded attorney fees

Based on this, the court found Defendants infringement was willful and in reckless disregard of the rights of the photographer.  The court looked at damage items such as (a) profits made by defendant in infringing (b) costs saved in not having to license the image (c) goodwill earned via use of the image to drive traffic (although the traffic to the page where the image was hosted was minimal), (d) revenue lost by the photgrapher in not licensing the image to Defendant (although there was no indication that Plaintiff ever sought to license the image since she was already paid for it and (e) the need to deter future infringement, which in this case appeared to be the motivating factor in finding willfulness and making the large award.

More cases from the 2nd Circuit

Courts in the Second Circuit (which covers New York, Connecticut, and Vermont) have

not hesitated (where appropriate) to impose substantial statutory damages against copyright

infringers. See, e.g. Lucerne Textiles, Inc. v. H.C.T. Textiles Co., No. 12 Civ. 5456, 2013 U.S.

Dist. LEXIS 7820, 2013 WL 174226, at *3 (S.D.N.Y. Jan. 17, 2013), report and recommendation

adopted, 2013 U.S. Dist. LEXIS 42555, 2013 WL 1234911 (S.D.N.Y. Mar. 26, 2013) (awarding

$30,000.00 for infringement of design); Buttnugget Publ'g v. Radio Lake Placid, Inc., 807 F. Supp.

2d 100, 110-11 (N.D.N.Y. 2011) (“[T]o put infringers on notice that it costs less to obey the

copyright laws than to violate them, a statutory damage award should significantly exceed the

amount of unpaid license fees.”).

Motion for Attorney fees

Just to give you an idea of what attorney fees can look like in cases of copyright infringment, here is what the prevailing party Plaintiff sought (which is in ADDITION to the 25k statutory damage award).  As you can see, these cases can become quite costly if you lose.  The judge has the disrection to award or not award attorney fees, usually by applying various legal factors.

A court may award reasonable fees and costs to a prevailing party in a copyright infringement action. 17 U.S.C. § 505; see Fogerty v. Fantasy, Inc., 510 U.S. 517, 534, 114 S. Ct. 1023, 127 L. Ed. 2d 455 (1994). "The touchstone of the decision to award attorneys' fees is whether the success of the prevailing party], and the circumstances surrounding it, further the Copyright Act's 'essential goals.'" Tresóna Multimedia, LLC v. Burbank High Sch. Vocal Music Ass'n, 953 F.3d 638, 653 (9th Cir. 2020) (quoting Kirtsaeng v. John Wiley & Sons., Inc., 579 U.S. 197, 209, 136 S. Ct. 1979, 195 L. Ed. 2d 368 (2016)); see also Greg Young Publishing, Inc. v. Zazzle, Inc. No. 2:16-cv-04587-SVW-KS, 2018 U.S. Dist. LEXIS 47557, 2018 WL 1626053, at * 2 (C.D. Cal. March 21, 2018) ("[A] court may not treat prevailing plaintiffs and prevailing defendants any differently."). 

Courts may consider the degree of success obtained, frivolousness, motivation, the objective unreasonableness of the losing party's factual and legal contentions, and considerations of compensation and deterrence. Id. These considerations are not exclusive, and exceptional circumstances are not a prerequisite to an award. Fantasy, Inc. v. Fogerty, 94 F.3d 553, 559 (9th Cir. 1996).  Hargis v. Pacifica Senior Living Mgmt., LLC (C.D.Cal. May 7, 2024, No. 2:22-cv-06989-MCS-PD) 2024 U.S.Dist.LEXIS 83362, at *15-16.).