Getty Images has been at the center of several copyright infringement lawsuits, most recently the $1 billion lawsuit by famed photographer Carol Highsmith. Now, another photo sharing website, Zuma Press has accused the media giant of infringing on almost 50,000 of its photos. Unfortunately, copyright infringement in this situation may not generate significant damages for Zuma, however, Zuma also accuses Getty of removing its watermark and replacing it with a Getty watermark, which could be significantly more harmful to Getty should Zuma prove its case. Here’s why.
Zuma’s Copyright Infringement Claim.
Independent photo sharing site and wire service Zuma Press was created to help photojournalists license their images to potential users. Per the agreement with its photographers, Zuma has exclusive relationships with photographers specializing in sports photography due to the fact that it grants press credentials and exclusive access to events. Photographers that work with Zuma do not work with any other agencies, licensees, or entities. Put more succinctly, Zuma is the only place to get images by Zuma-affiliated photographers. On its website, Zuma adds a watermark to the images to show that Zuma hold the exclusive license to distribute these images. According to Zuma, that when Getty images acquired media giant Corbis in January 2016, it began migrating Corbis content into its platform. However, Zuma’s complaint asserts that Getty has been “carelessly and recklessly acquiring content, not doing due diligence, and not taking adequate measures to prevent infringement, as well as falsifying/removing proper copyright management information,” and, perhaps most notably, as part of the migration, Getty copied more than 47,000 photographs and placed them on their website to license and sell to the public, without permission. Zuma claims that Getty Images never owned these works or had any right to license them, and instead has engaged in fraud and copyright infringement to profit from images to which they have no rights.
To prevail on its copyright infringement claims, Zuma must establish: (1) it owns a valid copyright or has the exclusive right to exercise at least one of the rights of a copyright owner; and (2) that Getty violated one or more of the exclusive rights, that is the right to:
- reproduce (i.e., make copies of) the work;
- create derivative works based on the work (i.e., to alter, remix, or build upon the work);
- distribute copies of the work; or
- publicly display the work.
Zuma claims it has an exclusive licensing agreement with each of its photographers that allows it to sue on their behalf. If that is true, then the first prong is satisfied. By adding the photos to its website Getty reproduced and publicly displayed the works, and, if any were sold, then those works were distributed. Also, copyright is also a “no fault law” meaning that violating any of these rights, even if Getty had purchased the images from Corbis and had no right to sell them, Getty is still liable for infringement.
In any case, it seems like Zuma has an easy case here but the problem for Zuma will be establishing “actual damages.” Because the works in suit were not registered with the U.S. Copyright Office prior to the infringement (or within three months of publication), Zuma will not be able to collect statutory damages. Accordingly, if it prevails, Zuma would be only entitled to any profit Getty received from those photos, or any sales Zuma lost and that are attributable to the infringement. Since Getty just uploaded the images to its database in April, it is possible that relatively few have been sold. As well, Zuma is only entitled to the profit on those images – Getty would be allowed to remove costs, such as marketing, and maybe even the price it paid for the images, which may leave very little left for Zuma. Additionally, proving that it lost sales due to the infringement is nearly impossible.
Yet Zuma is still suing. Why? First, even without receiving significant damages, Zuma can still have the images removed from the Getty library. More importantly though, Getty may have violated a section of the Digital Millennium Copyright Act (DMCA) by removing Zuma’s watermark and replacing it with their own.
Did Getty Remove Zuma’s Watermark?
A couple weeks ago, Art Law Journal extensively discussed Highsmith’s suit against Getty. We explained that the case isn’t a copyright infringement suit, but rather an issue of whether Getty Images violated the DMCA prohibition on manipulating copyright management information (“CMI”), which is any information that identifies the owner and nature of that copyrighted work. The copyright information management integrity provision outlined in the DMCA prohibits anyone from:
- Intentionally removing or altering any CMI;
- Distributing or importing for distribution CMI, knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law; or
- Distributing, importing for distribution, or publicly performing works, copies of works, or phonorecords, knowing that CMI has been removed or altered without authority of the copyright owner or the law.
For example, removing the © line on a photo or falsely adding yourself as a copyright holder in the metadata of a digital image may be a CMI violation. In the Highsmith case, Getty added its watermark to works it copied from the Highsmith Collection, which can be seen as falsely claiming that the works were owned, or at least controlled by, Getty. According to Zuma, Getty “replaced the existing gutter credit with its own gutter credit, altering and falsifying copyright management information.” Since Zuma has the exclusive right to copy, display and distribute these images, then removal of the Zuma watermark may be a CMI violation.
Why is that more important than copyright infringement? Because of the damages provisions of the DMCA, in which Zuma would be entitled to between “$2,500 to $25,000 per image.” Given the 47,048 images at issue, at the very minimum, Zuma would be entitled to $117,620,000. In addition, Getty Images may also be liable for triple that amount, since the DMCA empowers courts to award up to three times the amount it would otherwise award in cases where the defendant has previously violated portions of the DMCA in the prior three years. However, that determination is up to the court and not guaranteed.
Since Getty recently lost a DMCA case in Morel v. AFP, the court in the Zuma matter would be able to triple the award, which means that the award at the low end of the spectrum could be nearly $353 million.
CMI Cases Are Not That Easy
Remember that we said copyright infringement is a “no fault” law? Intent does not matter? Well, that is not true for CMI. The CMI provisions of copyright law require that violations be intentional and done knowing that it will, or may, lead to infringement. Let’s assume Getty bought Corbis and reasonably believed that it had purchased the Zuma images as part of the deal. Assuming that Getty did their due diligence in reviewing what they were buying, even though Getty added its name to the images, that may not be considered an “intentional’ violation. On the other hand, Zuma claims that Getty did not do their due diligence to determine whether Corbis had the rights required to license those images to users. That fact is material as far as the DMCA is concerned.
Unfortunately for Zuma, proving that Getty (or Corbis) knew that Zuma had the exclusive rights to the images when it changed the CMI is a very difficult task. The process will take a while and can be expensive. Zuma will have to weigh that against the potential benefit. Throughout the process, both sides will be assessing the strength of their position based on the evidence, or lack of evidence, Zuma acquires. So, while Zuma may believe it has a strong case, much work remains before each side will even agree to settlement negotiations.
This Case Differs from Highsmith
In our prior article about the Highsmith suit, we discussed whether or not Highsmith had any possibility of succeeding in her CMI claim, concluding that she probably didn’t. Highsmith’s case is a bit different than this case, but it’s important to note the distinctions between the two. Highsmith’s photos were donated to the Library of Congress, where she has made available tens of thousands of images to anyone interested in using them. Documents filed in that matter suggest that she forfeited her copyright protections by donating those works to the public domain. Remember, the Copyright Act only protects works in which someone actually holds the copyright. Highsmith’s decision to donate her art meant she forfeited her rights to profit off those images.
Zuma, however, is in a different boat. The wire service established its business by building strong relationships with photographers, and by offering a tool to license and thereby profit from their images. Zuma claims that only Zuma has the right to license those images because they’ve developed exclusive relationships with the photographers, who can only work through Zuma to license the rights to their images. Zuma, in turn, has obtained a direct license from the photographer to be able to do so.
Zuma alleges that Getty surreptitiously copied the images and distributed them on their website, which would be a violation of the photographers’ copyright because they didn’t give them the permission to do so. Zuma claims they can sue Getty on a photographer’s behalf in the same way that Getty does for its artists (See responding to a Getty Demand Letter).
Also, note that Zuma’s complaint is short on facts, but long on accusations. The complaint spends quite a bit of time outlining how Getty has colluded with other media giants to make itself more and more successful, while in the process harming more and more copyright owners. For example, Zuma’s complaint cites a tweet by Getty CEO Jonathan Klein, which was made as a reference to a recent deal between Getty and Visual China Group. You see, Getty’s biggest competitor, Corbis Media, was recently sold to Visual China Group. Meanwhile, VCG signed an agreement with Getty that made the company the sole distributor of Corbis images in the U.S. In response to this tricky victory, Klein tweeted: “Almost 21 years but got it. Lovely to get the milk, the cream, cheese, yoghurt and the meat without buying the cow.”
Zuma uses this story, and several others involving other competing photo sites, to assert that Getty often engages in very dubious practices. Zuma claims that “Getty has been carelessly and recklessly acquiring content, not doing due diligence and not taking adequate measures to prevent infringement as well as falsifying/removing proper copyright management information. In fact, its aggressive acquisition schedule is possible only at the expense of others’ rights.”
From a legal perspective, Getty’s practices have no bearing on proving or not proving the allegations. However, complaints are meant to be inflammatory. They tell a story that favors the party who is writing it. In big cases like this one, Zuma chooses its language to affect how the case will be reported by the media. So always take news stories about newly filed cases with a grain of salt. They are one-sided accounts often written with the press in mind.