Copyright in Photographs – Perils of Online Copying

Copyright in Photographs – Perils of online copying – October 2014

By Katarina Klaric, Principal, Stephens Lawyers & Consultants

There is a common misconception by internet users that photographic images found on the internet, websites and social media sites such as Facebook, Twitter and Instagram can be freely copied and used for commercial purposes without the licence of the copyright owner.

The recent decision of the Federal Court of Australia, in Tylor v Sevin [2004] FCA 445 is a warning to all users of the internet that the courts will award substantial damages for unauthorised copying of photographs found on the internet. The court awarded damages and costs in excess of $20,000.00 for copyright infringement in respect of one photograph which had been copied by a travel agent from the internet and used in the marketing and advertising of the travel agent’s business without obtaining a licence from the copyright owner, Mr Taylor, a professional American photographer.

The Federal Court decision in Corby v Allen & Unwin Pty Ltd [2013] FCA 370 provides a warning to individuals, publishers, producers, businesses and organisations that the court will award significant damages where parties do not obtain copyright clearances before using photographs.

This update provides an overview of the copyright law as it relates to ownership and use of photographs and includes risk minimisation strategies to avoid copyright infringement.

Copyright in Photographs 

Photographs, whether taken in Australia or another country which is a party to the Berne Convention (an international treaty), are protected by copyright. The copyright owner in the photographs has the exclusive rights to reproduce or copy the photographs in any material form, publish the photographs, adapt the photographs by creating a version, and communicate to the public the photographs via the internet, websites, mobile and other electronic devices. From a commercial perspective this means that you cannot use a photograph, including those found on the internet, for promoting and advertising your business or other commercial purposes, without first obtaining the permission or licence of the copyright owner. The copyright owner will generally require you to pay a licence fee for the use of the photograph for the purpose specified by you.

Online photographic libraries such as Getty Images can be used by businesses and individuals to purchase licences to use stock photographs which are copyright protected.

Copyright in a photograph generally subsists for the life of the photographer plus 70 years. Because the copyright laws have conferred different levels of protection over the years, ascertaining whether copyright has expired or the identity of the copyright owner can be a complex and time consuming process, particularly if you are dealing with photographs which may have been taken in different countries over a period of time. Expert copyright law advice should be obtained to minimise the risk of copyright infringement and hefty penalties.

Ownership of Copyright in Photographs

As a general rule, the photographer is the first owner of copyright in a photograph unless there is an agreement to the contrary or the exceptions specified in the Copyright Act 1968 (as amended) apply (1).  The fact that you own the camera, iPhone or other electronic device that was used to take the photo does not mean that you own copyright in the photographs taken using that device if you were not the photographer.

Where photographs are commissioned for commercial purposes such as advertising and marketing campaigns or use in books or other publications, the photographer or the agency that employs the photographer will own the copyright in the photographs, unless there is a written agreement to the contrary (2).  If the photographer or agency retains ownership of copyright, then the commissioning party can only use the photographs for the limited purpose agreed to by the parties. If the commissioning party wants to use the photographs for any other purpose, a licence or permission has to be obtained from the copyright owner of the photographs.  Failure to obtain such licence or permission could result in the copyright owner taking court action for copyright infringement.

In the case of photographs commissioned for “private and domestic use” and taken on or after 30 July 1998, the client owns the copyright in the photographs unless there is a written agreement to the contrary (3). Although you may own copyright in personal photographs, the photographer still retains rights to restrain you from using the personal photographs for commercial uses and may require you to make additional payments for such uses (4).  As an example, wedding and family photographs are generally taken to be a “private and domestic use”.  However if the photographs are going to be published in a magazine or a book, then the commissioning photographer should be informed of this purpose at the time of commissioning, so that his commission and fees include such additional use. This should be dealt with by a written agreement between the parties.

Copyright Infringement

The area of law dealing with copyright infringement of photographs can be complex, as is illustrated by recent court decisions. As a general rule copyright in a photograph is infringed when the photograph is copied, reproduced, adapted or published without the licence or permission of the copyright owner.  The court can grant injunctions or restraining orders to stop copyright infringement and also award an account of profits or compensatory damages and exemplary or additional damages (5).

Corby v Allen & Unwin Pty Ltd [2013] FCA 370

The Federal Court case of Corby v Allen & Unwin Pty Ltd (“Corby case”) illustrates the risks associated with not taking adequate steps to ascertain the copyright ownership in photographs and not obtaining permission or licences from the copyright owner.

The Corby case involved a copyright infringement claim by the sister (Mercedes Corby), brother (Michael Corby) and mother (Roseleigh Rose) of Schapelle Corby, in respect of 5 photographs published by Allen & Unwin in  the book titled “Sins of the Father”  (“the book”). The book was about Schapelle Corby’s arrest and imprisonment in Bali, and was authored by Eamonn Duff (“Duff”), a senior journalist under commission by Allen & Unwin.   Duff was not a party to the court proceeding. His contractual arrangement with Allen & Unwin required him to gather photographs for the book, but it was the publisher’s responsibility to decide what photographs would be reproduced in the book (6).  There were a total of 37 photographs in the book, 5 of which were the subject of the copyright infringement claim. The book was published in November 2011 and by 27 March 2013, over 44,000 copies of the book had been sold at a price of $35.00 a copy (7).

The publisher argued that it had an express or implied licence or permission to reproduce the photographs  because at some earlier point in time the copyright owners had given permission to a third party to use the photographs for a purpose unrelated to the publication of the book (8).  The court rejected this argument and found that no licence existed and copyright had been infringed (9).

The Court was critical of Duff’s and the publisher’s conduct, in that they did not make any enquiries about permission to reproduce the photographs from the relevant person or attempt to identify the person from whom permission would be needed.  The court was of the view that the publisher had made a deliberate decision to publish the photographs in the book, despite the lack of copyright clearance and despite the lack of any attempt to obtain clearance. One photograph was marked with a copyright warning. Three photographs were obtained informally from the Fairfax archive with a disclaimer. The photographs were not part of the Fairfax photo library from which a licence could be purchased. One of the photographs was provided to Duff from a person who Duff knew was not the author and copyright owner (10).

The Court made a declaration in respect of copyright infringement in respect of the 5 photographs and granted an injunction prohibiting further reproduction of the book with the 5 photographs. The court also ordered a destruction of all copies of the book in the possession of the publishers (11).<

In assessing compensatory damages for copyright infringement (12) , the court did not take the “licence fee” approach but considered that damages were “at large”- that is, to be assessed by the court having regard to the nature of each photograph and its utility or commercial significance for the book. The damages awarded for copyright infringement in respect of each of the 5 photographs varied significantly: photograph 1 -$500, photograph 2 – $5,000 (back cover of book), photograph 3 -$1,000, photograph 4 – $2,000 and photograph 5 – $750 (13).

The Court also ordered the publisher to pay $45,000 in additional damages for copyright infringement (14) because the publisher had acted with flagrant disregard for the rights of the copyright owners in the photographs. The publisher had taken a calculated risk to publish the photographs without regard to the copyright law and the publisher’s obligations to obtain copyright clearances from the copyright owners in the photographs (15).

Minimising risks of copyright infringement