(This is the second in a series of posts on Fairey v. Associated Press, a copyright infringement case filed in New York on Monday involving the Obama “Hope” poster at right. See the first post.)
There’s one big mystery that AP needs to clear up right away in this case: who owns the copyright in the photograph at left, taken by Mannie Garcia at the National Press Club on April 27, 2006? If the AP doesn’t own any portion of the copyright, but is merely a nonexclusive licensee, then it can’t sue for infringement. Intriguingly, Garcia himself says that he believes he owns the copyright, not AP:
The ownership of the copyright is in dispute, as per the AP. It is my understanding that since I was not a staffer, and was not a freelancer, and did not sign any contract, that I am the owner of the copyright, but I am in discussions with the AP over this issue.
So what are the odds that the AP doesn’t own the copyright in the photo at issue? And if it doesn’t, what does that do to Fairey’s suit for a declaratory judgement?
Does AP actually own the copyright in the Garcia photo?
If the AP doesn’t own at least some portion of the copyright in the photo, then it couldn’t have sued for infringement of it. The general rule here is that the copyright in a work vests in the author upon creation and stays with that author unless there is a signed agreement in writing. 17 U.S.C. § 204(a). However, when a work is created by an employee within the scope of his or her employment, then the employer is considered to be the author unless there’s a signed agreement otherwise. If Garcia is correct, there aren’t any signed agreements one way or the other here, so it all comes down to whether he was an “employee” at the time he took the photo.
For the answer to that, the courts look to traditional agency law. (Do any law schools still teach agency as a separate course?) A series of factors are relevant to the determination of whether a person is an “employee”:
- the hiring party’s right to control the manner and means by which the product is accomplished;
- the skill required;
- the source of the instrumentalities and tools;
- the location of the work;
- the duration of the relationship between the parties;
- whether the hiring party has the right to assign additional projects to the hired party;
- the extent of the hired party’s discretion over when and how long to work;
- the method of payment;
- the hired party’s role in hiring and paying assistants;
- whether the work is part of the regular business of the hiring party;
- whether the hiring party is in business;
- the provision of employee benefits; and
- the tax treatment of the hired party.
Without knowing more about the arrangement between the AP and Garcia, it’s hard to do more than guess here. Garcia, in the interview linked to above, gives a little bit more detail:
2) Were you either an employee, or a freelance photographer, as defined by their contract, for the AP when you took this image?
I was a temporary hire, filling in for a staffer at the AP. It is my understanding that I was neither a freelancer nor a staffer, but rather a temporary hire. I have never been an AP staff employee, and no, I have never signed an AP contract.
If Garcia’s working conditions were anything like the photographers I found in the cases I was able to quickly dig up, then it looks like he was not an “employee” for purposes of the “work for hire” doctrine under the Copyright Act. That would mean that he, not AP, owns the copyright in his photos (although presumably AP has an implied nonexclusive license to redistribute them). For example, in Natkin v. Winfrey, 111 F. Supp. 2d 1003 (N.D. Ill. 2000), two photographers who took photos during the Oprah Winfrey show were held not to be employees:
Both men were highly skilled professionals specializing in live-action photography; both used (and insured) their own equipment; and both exercised discretion in hiring substitute photographers when they themselves were unavailable and paid those substitutes. Most importantly, neither photographer was ever treated like an employee in terms of compensation, benefits, and taxes….
Id. at 1008-09; see also Marco v. Accent Pub’g Co., 969 F.2d 1547 (3d Cir. 1992); Blair v. World Tropics Productions, Inc., 502 F. Supp. 2d 828 (W.D. Ark. 2007). If Garcia’s situation was at all similar—and as someone just “filling in,” that seems plausible—then he’s the author and owner of the copyright, not AP.
Aside: How in the world could this happen? How could an organization like AP not ensure that they have the copyright over the material that they publish? One possibility is that it didn’t happen—that Garcia has forgotten about some piece of paper he signed. But if it did happen, it strikes me as a bizarre lapse on AP’s part.
Let’s assume Garcia owns the copyright to the photo, not AP. This raises a couple of further questions: Should Garcia be substituted for AP as the proper defendant? If not, what happens to Fairey’s suit for a declaratory judgement?
Garcia can’t be added or substituted as a defendant in this case, because he has not threatened litigation against Fairey and thus there is no live case or controversy for the court to resolve against him. Indeed, Garcia, unlike AP, seems perfectly happy with Fairey’s use of his photo: “If you put all the legal stuff away, I’m so proud of the photograph and that Fairey did what he did artistically with it, and the effect it’s had.” (NY Times) At most, he’s expressed some concern about “the usage of the photograph in a number of commercial ways that I’ve seen it on the street here in Washington DC.” That’s not enough to add him as a declaratory judgement defendant.
But it doesn’t matter; if Garcia owns the photo, then Fairey wins. The requested relief in the complaint is for a declaration that the poster “do[es] not infringe any copyrights owned by the AP.” In other words, it appears that Fairey’s lawyers have read the same blog posts I have and have left room in the complaint for the possibility that AP does not even own the photo.
What if they go buy the copyright from Garcia right now? If Garcia’s willing to sell, that might fix things, although it’s a bit weird to have a defendant struggling to remain in the case. Once they own the copyright, AP could then assert copyright infringement as a counterclaim—assuming the copyright in the photo’s already been registered, which is the subject of my next post.
Other posts in this series:
- Why did Fairey file in the Southern District of New York?
- Does AP actually own the copyright in the Garcia photo? —This post
- Is Fairey’s suit doomed to fail before it even gets off the ground?
- What’s the “original” photo?
- What does the complaint say about the poster creation process?
- What if anything is copyrightable about the photo? Does the poster infringe on that?
- Is the poster subject to a fair use defense?