Court to Media: Don't Take Off That Photo Credit

Two New Jersey radio disc jockeys stripped down for a magazine photo.  Their radio station posted the photo, shown here, on its website.  And now they could all lose their shirts – in court.

By narrowly reading the words of a federal statute, the influential U.S. Court of Appeals for the 3rd Circuit last week created a new kind of legal claim that can be brought against online and print publications. The ruling will affect publishers, editors, art directors, and bloggers whenever they republish a photograph that originally appeared elsewhere. 

As everyone should know by now, before online and print media – or anyone, for that matter – can publish a photo taken by someone else, they normally need to get permission from the copyright holder.  Permission is not required only if the photo is in the public domain, or if the republication of the photo is deemed a "fair use" under copyright law. Whether a particular use is considered a "fair use" requires a multi-factor analysis, probably best done with the assistance of a lawyer. That much of the law has been settled for quite some time now.

Last week's federal appeals court ruling adds an additional, independent issue to be considered under those circumstances:  Even if a republisher’s use of the photo is deemed to be a "fair use," the republisher will still be liable if it fails to also republish the photo credit information that appeared in the earlier publication. 

Since the ruling came from the 3^rd Circuit, it is binding law only in Pennsylvania, New Jersey, Delaware, and the Virgin Islands. Still, the ruling is likely to be followed by other federal courts - meaning that, to avoid liability, anyone who publishes photos obtained from others ought to take heed.

The Legal Basis
The liability arises under the Digital Millennium Copyright Act (DMCA), a federal statute that has received attention primarily for its provisions that bar circumvention of computer encryption software.  Online media and bloggers also know the statute as a limited protection against the risk that a website visitor were to upload to their site a story or photo that infringed copyright. In such an event, the DMCA provides for a takedown procedure which, under certain circumstances and if followed rigorously, would leave the website free from liability for the user's infringing post.

Last week's case involves a different provision of the DMCA, one which prohibits intentionally removing or altering "any copyright management information" or publishing or disseminating a work despite knowledge, or reasonable grounds to believe, that the copyright management information has been removed.  "Copyright management information" is defined as "information conveyed in connection with copies ... of a work ..., including in digital form, … [t]he name of, and other identifying information about, the author of a work." Clearly, a photo credit would qualify.

The Facts
The case underlying the ruling arose out of a photograph published in New Jersey Monthly's "Best of New Jersey" issue.  The magazine had hired photographer Peter Murphy to photograph Craig Carton and Ray Rossi, who at the time were co-hosts of a show on WKXW Radio. NJM called them the "best shock jocks" in the state. Murphy, and not the magazine, retained copyright in the image. 

Somebody at the radio station (without Murphy's knowledge or permission) scanned the image from the magazine and posted it to the WKXW website.  As scanned and posted, the photo of the two barely clad shock jocks did not include the magazine's caption referring to the "Best of New Jersey" award, nor did it include the gutter credit identifying Murphy as the photographer. The station then invited visitors to the site to digitally edit the image, and 26 Photoshopped* renditions of Murphy’s photo were ultimately submitted and posted.

Murphy sued the station for copyright infringement and violation of the DMCA. The federal district court in New Jersey dismissed his claims on summary judgment, saying that the use of the photo was a fair use, and that the DMCA only applied to "automated copyright protection or management systems."  But the Third Circuit reversed that ruling on both grounds.

The Third Circuit’s Ruling
The Court of Appeals said, first, that by its plain terms the DMCA provision bars removal of "copyright management information," period, and does not require that the information be part of an automated system.  The decision makes clear that the radio station would be liable on that grounds whether or not the posting and alterations of the photo were a fair use. To translate that to a newspaper or magazine setting: Even if the publication's use of a photo falls under fair use, the publication will still be liable (under the DMCA) if it does not include the photo credit that accompanied the photo in its original setting.

As if that weren’t enough bad news for WKXW, the Court of Appeals also revisited the district court’s fair use finding. Applying the four-factor test for fair use, the Court of Appeals held that the postings of the photo, both as shot and as Photoshopped by users, were not a fair use. So it sent the case back to district court for further proceedings, and ultimately trial, on both the DMCA and copyright claims.

The Kicker
But wait, there’s more!  There is also a defamation claim that survives, because the two DJs had (allegedly) responded to the photographer's objections with the level of prudence and discretion one might expect of two “shock jocks”: by implying that the photographer was gay and so litigious he would sue his own business partners. The photographer apparently took umbrage, and the court said not enough discovery had occurred to merit dismissal of that claim.

One can imagine that the radio station will seek further review of the case before the Court of Appeals before the case returns to the federal district court.  And even then there may be more motion practice before the case goes to trial. 

Impact and Ramifications
Some final thoughts from Rob Bertsche, the author of this alert, about the decision and its impact:

• If the violation of the DMCA is intentional and made for commercial gain, criminal charges can result (in addition to a civil suit). There are legal and practical reasons why it is extremely difficult to imagine this kind of case putting a publisher in jail – but I raise the possibility just in case you weren't already paying attention.
  
• Editors, beware: I'm wondering whether this case sets a precedent for a writer or magazine to be sued for "plagiarism." As you know, plagiarism – using someone else's work without attribution – may be a journalistic sin, but there's currently no law against it. Could the reasoning of this case also be applied to impose liability for a magazine article that contains plagiarism, on the grounds that the omission of the original author's byline constitutes removal of "copyright management information"?
• My colleague, Peter J. Caruso II (an intellectual property maven), wonders whether the Third Circuit's decision might leave the door open to a claim that excluding photo credit information is also actionable under the federal Lanham Act as “reverse passing off” – misrepresenting a third party's goods or services as one's own. Conversely, it could strike the death knell to such claims, because courts will find that copyright law alone provides sufficient relief. (These are the kinds of things that lawyers like to debate.)
• Oh, and one more thing:  The photo above is © Peter Murphy, as it appeared on the cover of New Jersey Monthly, which is © New Jersey Monthly Magazine.  As for this article, we’re going the Creative Commons route (see below).
  

*And yes, the irony of our using the verb "Photoshopped" instead of saying "modified using Adobe® Photoshop® software," is not lost on us. But you already know that "Adobe" and "Photoshop" are registered trademarks of Adobe Systems Incorporated in the United States and/or other countries.

Click here for a copy of the decision, Murphy v. Millennium Radio Group LLC, Craig Carton, and Ray Rossi, No. 10-2163 (3d Cir. June 14, 2011).

If you would like more information about any of the information presented here, or have questions about any media law or intellectual property issue, please contact Robert A. Bertsche, a partner in the firm’s Media Law and Intellectual Property and Internet Law Groups. He can be reached at 617 456 8018 or at rbertsche@princelobel.com.

"Court to Media: Don't Take Off That Photo Credit" by Robert A. Bertsche, Esq., Prince Lobel Tye LLP is licensed under a Creative Commons Attribution-NoDerivs 3.0 Unported License.
Based on a work at www.ca3.uscourts.gov.