By: Kathleen Kirby, Wiley Rein LLP
A U.S. District Court judge has ruled that two news organizations infringed photojournalist Daniel Morel’s copyright when they published images Morel had uploaded to Twitter. Ownership of content on social media is certainly a hot button issue—and one of significance to journalists. It has become commonplace for news organizations to feature content found on Twitter on their broadcasts and websites. This case, which is among the first to consider how material that users make public through social media may be used by third parties, serves as a cautionary tale that some commercial news uses are out of bounds.
According to the court’s ruling, Morel was in Haiti in the aftermath of the devastating 2010 earthquake. One of the few journalists immediately on-scene, he shared photographs of the disaster through Twitter and indicated that they were available for sale. The facts about what happened subsequently are a bit convoluted, but the images ultimately were obtained by French newswire service Agence France-Presse (AFP). AFP sent several of Morel’s photos to Getty Images, Inc. Getty and AFP had a license agreement under which they granted reciprocal rights to display and license their images. Subsequently, Morel’s licensing agent contacted AFP and asked that the photos be removed because Morel had not given AFP or Getty permission to use them. The Washington Post, a Getty client, published four of the images, and asserted that it did so without knowledge that they were infringing.
Morel’s lawyers began sending out notices that his copyright had been violated. AFP filed a preemptive lawsuit seeking a declaration that AFP had not infringed Morel’s copyrights in the photographs. In response, Morel filed counterclaims against AFP, Getty, and the Washington Post asserting that the companies had, in fact, willfully infringed his copyrights.
By posting the photos on Twitter, did Morel grant AFP a license? AFP acknowledged that merely posting material on the internet does not invalidate the copyright in those materials, but claimed that Morel subjected his photos to the terms of service governing content posted to the website. The case, therefore, turned on Twitter’s terms of service (TOS). AFP argued that it was a third party beneficiary of the license agreement between Twitter and Morel, claiming that the TOS were intended to grant a license to “Twitter’s other users.” After all, AFP claimed, Twitter encourages the use of tweets by media in various forms, including broadcast and print journalism; and it warns users that their tweets may well be featured by the media.
According to the ruling, the TOS did not grant AFP a license to remove the photos from Twitter and sell them to third parties. While Twitter’s TOS state that they “encourage and permit broad reuse of content,” that was not sufficient to create a broad license covering AFP’s offline use. “Construing the Twitter TOS to provide an unrestrained, third party license to remove content from Twitter and commercially license that content would be a gross expansion of the terms of the Twitter TOS,” the court said. According to the Twitter TOS, “You retain your rights to any Content you submit, post or display” and “what’s yours is yours – you own your content (and your photos are part of that content).” While content may be retweeted, the court explained, “a license for one use does not equate to a license for all uses.”
Getty also raised as a defense to liability the benefit of a same harbor under the Digital Millennium Copyright Act (DMCA). To invoke the DMCA’s safe harbor, a party must be “a provider of online services or network access, or the operator of facilities therefor.” The Court held that Getty, as an entity that is directly licensing copyrighted material online is not a “service provider” entitled to the DMCA’s protections.
Some issues remain for a jury to decide, assuming the case doesn't settle, including whether copyright was infringed willfully or not. AFP did win a victory on the damages aspect of the case. Morel had urged the court to find that every illegal reproduction of his photograph by all of Getty's and AFP's members was an individual infringement, entitling him to statutory damages of up to $44 million. Judge Nathan, however, found that AFP could only be liable once for each alleged "violative act," not every individual copy of a photo found anywhere. That would put the damages somewhere between $20,000 and $200,000. Getty and The Washington Post may have separate liability.
The case reminds me to share with RTDNA members a couple of simple guidelines. Because something is available for free on the internet doesn’t mean you can use it. Typically, whoever takes a photo has a copyright in it. It is an original work of authorship in a fixed medium of expression. Uploading a photo to Twitter, Facebook, Instagram or any other form of social media does not necessarily mean it becomes public domain and usable for any purpose, news or otherwise. Moreover (although not an issue in this case), fair use is not always a viable defense. A use for news purposes would meet the first threshold for review under fair use guidelines, but under the four-part balancing test applied by courts in looking at fair use, the re-publisher often loses: the use is for-profit, the entire photo is used, it most likely is a significant element of the news story, and it harms the market for the original copyright owner by giving away for free what the owner could legally sell.