Do I have a case for infringement...

M38A1

...or am I wasting my time?

Short story is I have shot for a non-profit for several years providing me and my teams finished processed images to both the participants and the non-profit. The agreed use for the participants was personal/non-commercial use and the non-profits use was limited to promotional activities of the entity. I worked directly with the Race Director (RD) to hammer out the expectations for this National non-profit. No formal contract was signed (yet i'm thinking there's an 'expectations' document floating around we signed) as this was gratis work with these expectations from both sides. (they expected a 'quality' product which was delivered by all accounts) All images were marked in some variation of "Copyright (non-profit name) / (photographer name)" or "Image photographer credit required for use. No commercial use without written permission" or "COPYRIGHT (photographer name) ALL RIGHTS RESERVED" in the EXIF.

I have recently learned the non-profit has entered into a partnership with a third party for-profit vendor of highly popular sports apparel. There is a slick marketing partnership video out now which uses multiple images of mine and my other shooters. There is a public Press Release with my images as well as that of my teams images. Both the non-profit and the third party vendor have this 'partnership' posted on their public web pages as well as their Facebook page.

The gallery link was shared with the participants and the non-profit when the job was complete about four days post-event. There is a download button on that page. In order to download the images, both the participant and non-profit would have to have read the gallery main front page to know how that download process works. Just above the instructions contains language of "Each of the images is available for your free personal download and use. Should you wish to use these images in a commercial application, please contact me first as that will require conversations with the Race Director/(non-profit)National"

My day rate is $600 to shoot this type of activity as are my other shooters. The event was four days of shooting and about the same number of days in cull/post/host/notifications.

I keep coming back to the expectation from the beginning as agreed was:
1) personal/non-commercial use for participants
2) internal and promotional use by the non-profit
3) all images were provided with the above in mind as well as being marked COPYRIGHT/written permission required or some variation in EXIF
4) no commercial use allowed without prior written permission after discussions between me and the RD

And subsequently,
1) The non-profit has entered into a partnership with a for-profit third party entity using our images without written permission
2) A marketing video regarding the new partnership has been created and is being distributed on YouTube using our images without written permission
3) A Press Release has been issued by both entities and is public on their websites using our images without written permission
4) On the main page of the image galleries is clear language indicating if the images are to be used in a commercial setting, permission must first be secured.

There are no photo credits provided anywhere by the non-profit or the third party vendor in the videos, press releases, websites or Facebook.

The images contain only the Copyright/use text within the EXIF information - we did not watermark the high-res images pushed to the site for download

I believe this commercial use to be in violation of everything we've tried to accomplish regarding use of the images. As such, I'd like to be compensated my day rate as well as my teams day rate putting this job in the $7200 range for commercial use.

Do I have a leg to stand on, and if so what would be the steps? I'm not a member of PPA.

I sure would appreciate any input......

Thanks-
~m

mercphoto

Good luck. I'm going to be watching this. I'm going to bet it going to hinge on what exactly a partnership means and whether what is going on is considered promotional and still non-commercial.

M38A1

Bill,
Yes, this will be interesting at best. I've contacted a photography attorney and that process has begun. I'm also trying to gather all my email correspondence as to expectations from both sides.

I look at it like this.... I shoot for a non-profit and they can use the images for promotional activities. Yet they have entered into a partnership with a for-profit company who sells athletic apparel at what I can only presume is a profit. Even if funds are coming back to the non-profit, I'd bet heavy money it's not 100% of the true profit from the sales. That means the for-profit third party entity is using the images without permission or payment for use.

The non-profit uses the images for their own promotion? Sure. No problem.

A third party for-profit business uses them is where I have heartburn. Well and the fact that there wasn't any photocredits either but that won't even buy me a cup of coffee.

I suppose I could notify YouTube for a copyright violation on the third party posting of my content as I have no agreement with them for use of the images. Hmmmmm

mercphoto

If it helps any, I once shot for a kart racing track that had an in-house pro shop that was a completely independant business. But they had co-marketing agreements. I had an email from the kart track where we agreed the images were for the track only. When the pro-shop tried to use my images for their website I balked. The track owner was pissed and tore me a new one until I forked over the email from his marketing director explicitly agreeing that images are for the track only, not the pro-shop. He then proceeded to rip a new one in the marketing director...

I don't miss those days and those problems.

Ferguson

I think all this hinges on whether there was a written agreement you can find, otherwise it's going to boil down to different people's interpretation of intent. It is not like someone stole the images from an unrelated entity, the chain of use looks "normal" in a way, so it will depend on whether that use conforms to what was agreed. I am not a lawyer, but in the US my GUESS is that this is a contract dispute not a copyright one, one of interpretation of your agreement as opposed to copyright infringement absent any agreement to use the photos.

Incidentally, if US, I think you'll find EXIF (actually IPTC I think) copyright info is not considered a copyright notice under copyright law, though it is copyright management information under DMCA. But use contrary to embedded metadata, I do not think, is itself relevant to an infringement case (removal of it may be under DMCA but I think that's a tough case for damages). And even if you could push it to copyright infringement, if you did not register them, it limits your damages substantially. Stopping their use yes, getting real money because of it -- tough.

The bigger question is whether the upside of a legal battle (a) is worth annoying the original group as I think any suit is against them, and (b) could possibly recoup enough money to pay the lawyers. Have you considered approaching them with your concerns business to business, as opposed to getting the lawyers involved? Of course, if the goal is to get retribution even if it costs you...

I am not a lawyer, not intending this as legal advice, just suggestions.

M38A1

This whole use thing just flies in the face of what the Race Director for the non-profit and I agreed on as to how the images would be used. The RD believes the use by the non-profit is not in the spirit of what our agreement was as well, and certainly does not extend to the third party for-profit entity. I'm going the 'nice' route first for payment of our fees and if that goes nowhere I'll start the take-down orders next. I have no alliance to this non-profit for future image capture.

Ferguson

@M38A1 said:
This whole use thing just flies in the face of what the Race Director for the non-profit and I agreed on as to how the images would be used. The RD believes the use by the non-profit is not in the spirit of what our agreement was as well, and certainly does not extend to the third party for-profit entity. I'm going the 'nice' route first for payment of our fees and if that goes nowhere I'll start the take-down orders next. I have no alliance to this non-profit for future image capture.

I don't know who all the parties are but if the Race Director is the one who struck the deal with the for-profit company then this is easy.

At any rate I wish you good luck on it. Sadly it sounds like the kind of thing that can turn into a muddy mess.

M38A1

A little update to this story.....

The RD didn't strike any deal with the for-profit. In fact, it was the contrary in that he said 'go after [third party name] as that wasn't the agreement for use'.

So about 10 days ago I sent a nice email to [third party name] requesting them to take down the images on their site, and all other social media accounts as the agreement between me/my team was not for commercial third party use. I received somewhat of a form response that said they were looking into this and if I had any questions to make contact with "X", the president. I let it ride for a week without hearing anything back. A week goes by and I send the president an email basically reiterating my original complaint and indicated he had five days to reply or a DMCA take down request would be filed if I didn't hear from him. The next morning I received an email from the president who indicated the content was removed. A quick scan showed the content was in fact removed. Then today I received an email from the non-profit apologizing for the third party use of the images. So I think we're all good.

Am mulling the idea of sending the third party company an invoice for using the images without permission along with a contract for an ala-carte use agreement. Or just letting this drop. I most probably won't be shooting for the non-profit ever again anyway.

Thoughts would be appreciated.

OffTopic

Since I'm not a lawyer I won't give advice about sending an invoice after requesting that the content be removed. Depending on who the infringing company is, sometimes I give an either/or - "my licensing fee for use of these images is $XXXX, pay immediately or remove the images". Once they've complied with removal it is difficult to demand and collect payment. I have read that in order to pursue payment you should not give an option to remove the content, only pursue payment of the licensing fee (I only give option to remove when I strongly doubt that company will pay the licensing fee and are not worth pursuing legally). Legally you can do both (demand removal and payment for the time they were used) but it has to be done the right way to be successful. Always best to discuss with an attorney. In your case I would be tempted to discuss an arrangement with the third-party for future use, not as a contract for ala-carte usage but quote a licensing fee per image and make it clear that they would deal directly with you, they can't get the images from the non-profit because the non-profit has no legal right to do so. If they want to use an image, they would contact you, pay you, and you send them the licensing agreement giving them permission to use the image.

But as far as never shooting for the non-profit again, if you believe in the cause I wouldn't necessarily let one misunderstanding ruin the relationship. It sounds like the non-profit understands the limitations of usage now and is sorry for violating the terms of your understanding. Sometimes we need to educate clients about copyright and usage issues, especially smaller companies. I shot for a small non-profit for several years under an arrangement similar to yours. Every time I delivered images I included a licensing agreement that spelled out how they were allowed to use the images. My licensing agreement contained the sentence "use of these images constitutes acceptance of this licensing agreement". That gave me the written proof in case I ever needed it (which thankfully I never did) and served as a reminder to the non-profit. I also gave them smaller, low-res (and watermarked) images for social media usage and required that only the low-res images could be used on social media.