Looks like I missed an update to the Richard Reinsdorf’s $250 million dollar lawsuit against Skechers from February of this year (thx for the tip Josh). To recap from my previous post “Skechers Sketchy Defense For Ignoring License Terms“:
The suit started when Reinsdorf discovered that images he took for Skechers from 2006-2009 and licensed to them for very specific terms–six months use in North America for point of sale, magazines and certain outdoor advertisements–were being used for several years and included in ads overseas and on packaging and other unauthorized media. The suit states that Skechers “completely and utterly ignored the terms of the license.” (source)
First reported by TMZ back in September of 2009 it took an unusual turn in 2010 when Skechers filed a motion to dismiss claiming ownership of copyright because of “alterations they performed on the images from slight modifications in models’ skin tone to the substitution of models’ body parts and the addition of substantial graphic effects.” They asked the judge to dismiss because they couldn’t possibly have infringed on their own copyright.
If you want to read the motion to dismiss you can download it (here). It certainly would set a disturbing precedent in the photography world if something like this were to be allowed. In the discussion the judge states that “Skechers is correct that a co-author in a joint work cannot be liable to another co-owner for infringement of the copyright” but that’s not what’s at issue here because “Contrary to Skechers’ assertions, the evidence in the record does not indisputably establish that Reinsdorf intended that his photographsbe incorporated into a joint work.” He simply gave them a limited license to their use. The motion to dismiss was denied.
A ruling on Skechers Motion for Summary Judgment dated February 6, 2013 (download it here) states:
Skechers has not demonstrated that the parties intended to be co-authors of the finished marketing images, which are, therefore, not joint works. Nor has Skechers demonstrated, as a matter of law, the lack of a copyright license agreement or breach of such argument. Accordingly, Skechers’ Motion for Summary Judgment is DENIED in these respects.
The expert opinions of Frank Luntz and Jamie Turner do not satisfy the requirements of Federal Rule of Evidence 702. Accordingly, Skechers’ Motions in Limine to exclude those opinions are GRANTED. Skechers’ objection to the Supplemental Report of David Connelly is SUSTAINED.
Given Plaintiff’s failure to adequately demonstrate a causal link between Skechers’ profits and its allegedly infringing conduct, Skechers’ motion for summary judgment on Plaintiff’s indirect profits claim is GRANTED. Skechers’ unopposed motion for summary judgment with respect to statutory damages and attorney’s fees is also GRANTED.
I found what District Judge Dean D. Pregerson has to say about joint authorship in this case interesting. While both parties intended that their separate contributions be merged into a unified whole this is different than an intent to be co-authors. The parties behaved in ways uncharacteristic of joint authors:
- Reinsdorf charged for his time and effort plus usage of the photographs.
- He attempted to limit Skechers’ use of its ads.
- Skechers sought to prevent Reinsdorf from making use of the finished images on his personal website
Finally, you can see that Richard was unable to demonstrate a relationship between the images he took and the profits Skechers received from shoe sales. And… the kicker… “he failed to register his photographic works within the period contemplated by the Copyright Act”, so he’s NOT eligible for statutory damages and attorney’s fees.
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Failure to register means that Richard is NOT entitled to statutory damages and attorney’s fees. With the denial of indirect damages too, I don’t know what’s left for him in the way of damages. Will be interesting to find out.
oh, right. got that wrong. corrected.
So what this means is that, if we don’t register our copyright we really don’t have a copyright? Sounds like we need some reform.
With no registration, I think you can get other type of damages, you just can’t get statutory and attorney’s fees. But as this case shows, proving other types of damages can be difficult. You do have some flexibility about when you have to register though, like after learning about an infringement. Things used to be a lot worse, and you really could loose your copyright for not registering, so what we have now is the “reform”–such as it is. All very complicated still though, and I’m not an expert.
My interpretation is that as a whole The photography community has won. If you are charging for time and usage that is a sign that you are not entering into a joint creator relationship. Unfortunately Richards looking at less of a win. This is a long, and presumably expensive, case and without statutory damages or legal fees on the table he probably isn’t going to walk away with a ton. I expect he will eventually win whatever a fair market rate for their actual usage is, which is still going to be substantial, but legal fees will probably eat a large portion of that.
What I don’t understand is; A) when the discovery was made why not register the images in a batch? B) your shooting for sketchers, why would you trust (sketchy=sketchers) to adhere to licensing and not register the images the instant they were provided for use as licensed in the contract.
There were some major mistakes made on Reinsdorf and his attorney. Second how is not possible to know how sales were impacted. Subpoena the records and have an accounting analyst sort it out.
Part of what this shows is you REGISTER IMAGES WHICH LICENSED TO A CLIENT Hope what he should have gotten is substantial. Skechers has had some issues in the past over a variety of problems related to advertising. One was related to model releases if I remember accurately.
With the present digital work process being so reliant on retouching this joint / derivative works argument is going to become more common. I know of at least one other case. With the loss of the copyright registration of the “final” images and the non registration of the source images it becomes next to impossible to fight the financial giants.
The important lesson is in what we as an industry can learn from this. It is very common to shoot specifically for construction in post and many may have in the past failed to register every image captured as part of the project. If Richard, or myself had done that the situation could be very different.
Perhaps Rob could put together some experts to discuss how photographers can work to protect their rights in the future. Would the registering of every captured image be a solution? What adjustments could be made to terms & conditions to reflect this new development? Would keeping full control over the post work and delivering only final images to the client help? Is it possible to register the photographers contributed portion of the joint / derivative work?
Yes, you register every image in a shoot, as soon as you can. I do it all the time, simply make a set of low-res (600px & 600px), put in a folder with some other shoots, zip it all up, give it a title and upload to the copyright.gov website for $35.00. I do it before I show anything to the client if possible (but if not, I sure do it before publication). I can’t believe Reinsdorf didn’t do this, with all the money he makes he could hire an assistant to do nothing but register copyrights. Yes there is probably a necessity to re-register derivatives, but that’s not something I ever get into so I don’t know the logistics of it. Find Jeff Sedlick, he knows.
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[…] of registering your copyright regularly. In that vein, A Photo Editor recently updated us on the Richard Reinsdorf v. Skechers case, which illustrates the complexity of copyright violation cases and re-emphasizes the necessity of […]
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