Resolution of Getty v. Advernet (A blow to Getty & Stock photo companies)

[Matthew Chan]

Oscar Michelen emailed me a very important document that he wanted posted for everyone to study and learn from.  From my point of view, I want more eyes and minds dissecting what happened. It is a bit wordy and lengthy but there is some very important pieces of information buried within the document. Most notably, testimony from a Getty employee of how they gather information on alleged infringements. However, it is also interesting to note that despite the fact the defendant defaulted, the judge was not so quick to give complete victory to Getty either. Essentially, the judge was NOT simply going to accept what Getty presented as facts without extensive scrutiny and questioning. As I have frequently said, most judges try to be fair and the stock photo companies do NOT have slam-dunk cases no matter what they claim. In their extortion letters, stock photo companies can try to be cute, coy, and threatening.  But once it gets to court, the judge insists on fully understanding what is going on.

Read the Memorandum and Order by Judge Kevin Nathaniel Fox on the Getty v. Advernet case.

http://www.scribd.com/doc/75525341/Getty-v-Advernet-Decision-Southern-District-of-NY

Oscar Michelen promises a more extensive commentary but he authorized me to post his preliminary comments to me until that time is better able to expand upon it:

Major news on a Getty case.  Attached is a federal decision in a case called Getty v. Advernet.  I was involved in the case for awhile representing the defendant in court.  Like you, he was bit of a renegade and wanted to battle it out and see what happens.  He was sued for thirty seven images. After the case did not settle at a settlement conference, he decided that he would just default on it as the corporation had no assets and he would have to spend a lot of money on the litigation. So we moved to be relieved and it was granted. Of course, when the company did not show up with a new attorney at a scheduled conference, Getty moved for a default judgment.  
 
Well, while the judge found that the lack of appearance was grounds for a default he REFUSED to enter a default judgment because he said Getty could not establish it rights to the images properly and could not establish when the infringement allegedly occurred! The decision has lots of interesting info on how Getty operates and how PicScout works, etc. Better yet, when Getty got the decision, they tried to move for re-argument saying the judge misunderstood the evidence and the law.  On Nov 22, 2011, the judge denied THAT motion as well!  Both decisions are attached. The reargument decision follows the first one.  This is great news and a big loss for Getty. Even when the other side had no lawyer, a judge had problems with their claims. They will likely re-tool after this and figure out how to correct the issues raised by the court.

[SoylentGreen]

Just quick note to express thanks for this valuable information.
It confirms what many of us (including myself) have been stressing for a long period of time:

1) that Getty doesn't register all of its images.
2) that Getty registers many of its images improperly.
3) that Getty's claims of "exclusivity" in its contracts with its contributors are sometimes false.
4) that Helpi/Photographer on this forum can lick my balls.

This shouldn't be too much of a surprise, given how reluctant Getty is to provide proof of its claims to alleged infringers.

The above list also applies to many others in the media business as well.

It is quite fortunate that the judges dealing with this case looked carefully at the evidence and made a correct decision.
My impression is that some judges don't spend enough time looking at the evidence in "default" cases like this.
So, people should use caution before making a decision to not show up for court.  It's still risky.

But, this is truly "so much win"!

S.G.

[Matthew Chan]

It was a corporation that had no assets and so the risk is minimal.  But yes, if an individual did not show up, it would be risky.

>>So, people should use caution before making a decision to not show up for court.  It's still risky.

[Peeved]

This is wonderful however personally, I will not take this statement lightly:

"They will likely re-tool after this and figure out how to correct the issues raised by the court"

I also believe they will continue to register more and more images.

[Jerry Witt (mcfilms)]

SoylentGreen I know I have been stressing 1 to 3 on your list. But I don't recall stressing #4.

[Robert Krausankas (BuddhaPi)]

I will make my comments and observations AFTER I clean up the coffee from my monitor, keyboard and desk!, SG I hope you never leave us, you insights are truly enlightening and always spot on!

 

[lucia]

Seems to me the judge is revealing why he took such great pains to sift through things even though the defendant defaulted:

Whether Material Issues of Fact or Issues of Substantial Public Importance Are at
Issue
In light of the foregoing analysis of the plaintiff's claim that the images at issue are licensed
exclusively to it, the Court finds that material issues of fact exist with respect to the plaintiff's
copyright ownership interest in twenty-seven of the images at issue, as discussed above.
Moreover, with respect to the remaining eight images at issue, no specific time of infringement
was asserted or established by the plaintiff. Additionally, whether the plaintiff, who is alleged to
be “one of the world's leading content providers,” licensing “imagery via the Internet” and
serving “an average of 3.2 million thumbnails, 6.5 million visits and 3.5 million unique users in
addition to an average of 167 million page views each month,” has an exclusive right(s) in any
particular image has the potential to be an issue of substantial public importance, given the size
and scope of the plaintiff's alleged image collections

[scraggy]

“The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law...
17 U.S.C. § 101. “A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly unauthorized agent"

In light of the above requirements of the law, it is interesting that the judge stopped to ask the following pertinent questions, but did not use the lack of a signature as a reason to nullify the transfer of any exclusive licenses.


"Wojtczak testified that the Getty Images Contributor Agreement did “not have signatures. It is a digitally accepted agreement. The contributor signed via our online contributor contract portal.” The following ensued:

THE COURT: And where, if anywhere, does a representative form Getty execute, sign the document, digitally or otherwise?

THE WITNESS: You know, I'm not entirely familiar with where in the process that happens"

[scraggy]

I have a question.
In the above case, Getty presented its own contributor agreement (http://contributors.gettyimages.com/img/articles/downloads/2011%20contributor%20agreement%20v.4.0%20%28d%29%20sample-english.pdf  )  as proof of the transfer of the exclusive right from the photographer to Getty. The agreement was completed online, and therefore the photographer’s signature was digital. In a printed version, it would just appear as a printed name.

In addition, the details of any specific images are not included in the “transfer”. The transfer of the exclusive right does not therefore contain any details such as the name or registration number of any image. Quite the opposite, the agreement states

 “This Agreement applies to all Content (as the term is defined in Section 1.2) that you have previously submitted and, in the future, will submit”

So we have a document with no signatures, mentioning no specific images, yet this is Getty’s proof of the transfer of the exclusive license.

The judge in the above case mentioned the fact that the document wasn’t signed, but did not choose this reason not to accept Getty’s exclusive licences. The judge didn’t refer to the fact that the above agreements mentioned no specific images.

What am I missing?

I expected the transfer of an exclusive license to contain some basic information about the image transferred.

Please can anyone enlighten me here?

Thanks!

[lucia]

scraggy,
I'm not a lawyer, but my impression was that the judge found other fatal flaws in the documents relating to each image.  Once that happens, judges will quite often decide it's not worth the time to look into a thorny question about the legality of getty's method of obtaining exclusive licenses since the answer to that question would have made no difference to his final decision.

[scraggy]

Thanks for the reply.

I would now like to ask, and try to answer the question:

What information should be included in the legal transfer of an exclusive right?

In my ( non lawyer )  opinion, it wouldn’t be far different from the information required in an initial copyright registration.

Here is a form I found at the United States Copyright Office, for registering copyright in the visual arts (including photography).

http://www.copyright.gov/forms/formvas.pdf

The minimum information required would therefore be:

1.   Title of the work
2.   Name and address of the copyright holder
3.   Year of creation
4.   Signature of the photographer
5.   Signature of the recipient of the exclusive license

The Getty Contributor agreement contains only the name of the photographer and his address.  Would that be enough in any court of law anywhere?

How absurd is it that Getty already owns the exclusive license in photographs that have not yet been taken!!

 “This Agreement applies to all Content (as the term is defined in Section 1.2) that you have previously submitted and, in the future, will submit”

[lucia]

scraggy--
It may be that there are no legal rulings on online copyright contract granting exclusive rights to license.  Oscar might know. Oddly, if he doesn't chime in, I might ask my sister. She's a legal librarian at Kirkland and Ellis.  That means she's the one lawyers ask to do the searches for precedents and other stuff.  She does copyright often enough that she sometimes actually remembers and if she doesn't know, she can tell me how to do the search through public records.

[Jerry Witt (mcfilms)]

First, sorry Oscar got left holding the bag for his billable hours on this. If I read the document right, it sounds like the defendant stiffed him.

Now I'll share my favorite part (and there are many examples like this):

"The July 9, 1997 agreement, by which “Jon Arnold” granted “non-exclusive” rights to Visual Communications Group of Visual House, contradicts the plaintiff's (Getty Image's) affirmative answer to ... “Accepted Content is Exclusive?” and undermines Wojtczak's testimony that “I have reviewed each contract to ensure that ... content is exclusive to Getty Images.”  A person holding a non-exclusive right lacks standing to sue for copyright infringement."

First -- BUSTED! (Oh Getty you are so busted.)

Second -- Let's say it again: "A person holding a non-exclusive right lacks standing to sue for copyright infringement." This is why I say it is so important to insist that the stock photo company provide you with the chain of title that flows from the original artist to Getty Images granting them an exclusive right to the image or to represent the image.

Third -- This may not even be enough. It almost sounds to me that future lawsuits will have to name both the stock agency AND the copyright holder as claimants. Sure photographers want to get paid for their work. But how are they going to feel about being plaintiffs in a lawsuit in federal court, especially considering that should the defendant win, they can be made to pay the defendant's legal costs?

And finally -- Did I understand this correctly? Getty Images "won" based on the default judgment, but they were not awarded the $24,275.00 for 35 images. They were not awarded one penny. Is that correct?

[scraggy]

Quoting from the above Getty contract:

1.11 Right to Control Claims. Getty Images shall have the right to determine, using its best commercial judgment, whether and to what extent to proceed against any third party for any unauthorized use of Accepted Content. You authorize Getty Images and Distributors at their expense the exclusive right to make, control, settle and defend any claims related to infringement of copyright in the Accepted Content and any associated intellectual property rights (“Claims”). You agree to provide reasonable cooperation to Getty Images and Distributors and not to unreasonably withhold or delay your cooperation in these Claims"

So, the lawsuit would be at Getty’s expense, but it may not be pleasant for the photographer.

How would one define – “reasonable cooperation”?

[Jerry Witt (mcfilms)]

Okay, I went back and re-read Oscar's initial note. Getty wasn't even granted the default judgment!?! Well this is a total win. (For everybody except Oscar, who didn't get paid for his initial time.)

Say, that gives me an idea. Presuming the defendant is no longer able to pay Oscar, I think they closed the corporation. But the defense of copyright infringement is one of the few areas in which legal fees can be awarded to the defendant. Has there ever been a precedent set where the defendant's lawyer was able to go after the plaintiff for his legal fees?

At the very least I think Oscar should send Getty Images a "Demand Letter" of his own.