If you are a member of the art community, you have probably heard about famed photographer Carol M. Highsmith suing Getty Images for $1 billion dollars. The internet exploded with comments and reactions from Getty supporters (“$1 billion? . . . this woman must be out of her mind!”) to the growing number of those angry with Getty aggressive copyright infringement tactics (“It’s about time Getty gets what’s coming to them.”). In either case, both camps agree on one thing; $1 billion is an astounding number for a copyright claim. But, is it really crazy? Does Highsmith have a real claim worth that kind of money? Does Highsmith have a case? To answer these question, let’s analyze the case step-by-step, starting with a review of the events that prompted the lawsuit.
Highsmith v. Getty: The Backstory
For over 30 years, Carol Highsmith has been driving around the Unites States photographing the country’s architectural monuments. She has been called “America’s Photographer” publishing more than 50 nationally distributed coffee table books about U.S. cities as well as providing marquee imagery for many others. In 2002, Highsmith brokered a deal with the Library of Congress (LOC) to donate her past works as well as her future works to the public. At 69 years old, Highsmith continues to shoot throughout the United States, cataloging 21st Century America, all of which are added to her collection at the LOC, which is considered one of the top six collections (out of 15 million images) in the Library’s Prints & Photographs archive. With over 18,000 images donated so far, the Highsmith Collection is expected to grow to one-hundred thousand images by the time the project is completed; all free for the public to use. At least that was what Highsmith thought until she received an email accusing her of copyright infringement for using her own image.
We have written several articles at the Art Law Journal about Getty Images’ questionable demand letter practices. To fully understand what prompted Highsmith lawsuit, we need to first review Getty’s demand letter process. Getty Images operates a series of stock photo websites containing images from photographers and other types of artists for licensing. Getty provides the sites, handles the transactions, and pays the creators for each license. When a customer licenses an image from a Getty site, a record of the license terms, payments, licensee, location and other pertinent information are added to Getty’s database.
As part of its agreement with creators, Getty has the right to enforce the copyrights of any images on its sites. To support its enforcement endeavors, Getty acquired PicScout, a technology company that builds tools to allow images to be easily tracked, analyzed and monetized across the Web. Picscout “bots” scour the web looking for images in the Getty library. When Picscout finds a match, it checks the image URL against the licensing information in the Getty database. If there is no match, the image is marked as a potentially infringing use. When a potentially infringing image is discovered, a third-party contractor, often License Compliance Services (LCS) sends out a demand letter to the supposed infringer. While this may sound reasonable, in practice, the process has flaws, which is eloquently explained in the following comment provided by ErikD at the Stranger.com:
“Getty is well known for operating a ‘shake-down’ scheme (aka copyright troll), in which web crawlers identify cases of (supposed) copyright infringement, followed by an automated email demand letter to the owner of the site demanding outrageously inflated licensing fees (e.g., $600 for a photo you could buy for $5). Legal action is threatened if payment is not made within 14 days. The law firm they work with gets a cut.”
So, it is no surprise that Highsmith was surprised when her own foundation, This is America!, received a demand letter from LCS (on behalf of Getty), demanding that the foundation remove one of her images from its website, and pay $120 (which is a very low demand for a typical LCS letter). Highsmith later discovered that Getty had added 18,755 of her photos from the LOC Collection to their stock photo sites and selling them for profit. Highsmith decided to stop Getty, filing a lawsuit that included Getty, their distributor Alamy, and LCS.
With the backstory out of the way, we can start delving into the issues.
Can Getty Sell Public Domain Images?
Believe it or not, selling public domain images is not illegal. Generally, anyone can sell pretty much anything that they get for free. In fact, it happens all the time with government images, since works of the federal government are not protected by copyright (the law says so). There are many sites that sell NASA images, some by the image, others as a subscription service for unlimited images or up to a certain number of images per month. How can they do this? Well, sometimes there are legitimate interests, such as managing servers for storing the images, cleaning up old photos so they are more useful, or even providing an interface that makes it easy to find the images in the first place. There is nothing wrong with charging people for those services. As far as the price is concerned, it is up to the buyer to decide whether the price is worth what they are receiving. The problem arises when the purchases are made based on false information. Let’s say that a site (we’ll call it SpaceStuff.com) downloads photos from NASA to sell online. SpaceStuff.com goes a step further claiming that they took the images from their own satellite telescope and so they hold the exclusive rights. When a purchaser licenses the photo for $300, they are doing so based on the seller’s representation that the photo is not available anywhere else and can only be licensed from SpaceStuff since they hold the copyright. In that case, the buyer might have grounds to sue on some sort of consumer protection theory, but it wouldn’t be a copyright claim. The problem with that scenario, though, is that the purchaser would likely be entitled only to actual damages, which is the money they lost ($300), or in some states, triple damages ($900) and possibly reimbursement for their attorney’s fees. That’s hardly enough money to sue over.
Highsmith received a letter asking for only $120. So she hasn’t been harmed financially, especially since she didn’t even pay the $120. So how did she arrive at $1 billion?
It’s Not a Copyright Claim, It’s a DMCA Claim
If you are a regular reader of Art Law Journal, you have probably heard of the Digital Millenium Copyright Act (DMCA) but we usually refer to the Act in relation to a DMCA takedown notice of copyrighted material. The statute protects online intermediaries and platforms from liability where users upload infringing content. If copyright owners could sue sites for every infringing content users upload, then sites like Instagram and YouTube couldn’t realistically operate. The statute gives them a “safe harbor” from infringement liability provided they comply with certain practices and procedures.
However, the safe harbor provision is only one of many within the DMCA. The Act also makes it illegal to remove or falsify copyright management information (CMI), such as removing a copyright notice or those who hold themselves out falsely as the copyright holder. In this case, Getty isn’t being sued for the sale of public domain photos, which, as we mentioned, is not itself unlawful. Instead, Highsmith alleges that Getty added a “watermark” of the company logo over each publicly displayed image, which made it appear as though Getty owns the copyright. Unless Getty was paid its licensing fee, users could not receive a non-watermarked version.
The DMCA provides for statutory penalties ranging from $2,500 to $25,000 per incident. Where along that monetary line a case falls depends on the specific facts of the case and is determined by the court within the context of a particular case. However, when filing a complaint to initiate a lawsuit, it’s customary to ask for the maximum amount that can be legally justified, regardless of whether getting that amount is likely or not. According to Highsmith’s complaint:
Getty has committed at least 18,755 separate violations of 17 U.S.C. § 1202, one count for each of the 18,755 Highsmith Photos appearing on Getty’s website. Thus, Ms. Highsmith is entitled to recover, among other things, and if she so elects, aggregate statutory damages against Getty of not less than forty-six million, eight hundred eighty-seven thousand five hundred dollars ($46,887,500) and not more than four hundred sixty-eight million, eight hundred seventy-five thousand dollars ($468,875,000).
So, it’s 18,755 x $2500 = $46,887,500 for the lower amount and 18,755 x $25,000 = $468,875,000 for the larger amount. Still, that is not quite $1 billion. The extra is due to a penalty provision in the DMCA against an entity that has a judgment against it for a DMCA violation in the past three years. Again, according to the complaint:
Because Getty has already had a final judgment entered against it by this Court under 17 U.S.C. § 1202 in the past three years, this Court may treble the statutory damages in this case against Getty. Getty must therefore account for well over one billion dollars ($1B) in statutory copyright damages in this case.
Now, you should see a flaw in the math here. Tripling $468,875,000 is closer to $1.5 billion. Why the price reduction? I can’t say for sure, but my guess would be that it looks better in the media to use a round number. Realistically, there is very little chance that Highsmith will receive $1 billion let alone the $1.5 billion that the arithmetic dictates. In fact, assuming she could win the case, the court would probably lean toward the lower number and the treble damages are at the discretion of the court. So $1 billion is a nice round number for the newspapers and blogosphere to add to an article title (see ours above) and based on the number of articles coming out on this topic, it probably worked.
Highsmith has Significant Hurdles to Overcome
On its face, this case seems easy. Getty violated the DMCA and Highsmith, as the supposed copyright holder, is entitled to damages. The next question would normally be how much can she get? However, falsifying copyright information is only the first prong of the analysis. The second prong requires that the plaintiff, (Highsmith) establish that the defendant (Getty) had knowledge or intent to falsify the CMI in order to “induce, enable, facilitate, or conceal” copyright infringement. In practice, proving intent is very difficult.
Did Getty put the watermark on the image for the express purpose of claiming ownership? Maybe Getty added it because they didn’t want anyone to download the images from their site without paying and as I mentioned, there is nothing fundamentally wrong with Getty marketing public domain images. On the other hand, the demand letter is an indication that Getty was acting as an owner. However, given the problems with the automated demand letter process, such as the false positives described earlier, it is quite possible that the Highsmith library was not intended to be part of the demand letter process at all, but was added inadvertently.
That excuse may sound far-fetched but it is up to Highsmith to prove that it was intentional. Circumstantial evidence won’t cut it. Highsmith needs hard evidence such as emails between Getty, LCS or Alamy that show intent or knowledge that the companies knew what was going on and did it anyway. Sending a demand letter to the photographer may show incompetence on Getty or LCS’s part but incompetence is not the same as knowledge or intent.
Can Highsmith be the Copyright Holder for Public Domain Images?
Finally, there is a more fundamental question over whether Highsmith even holds a copyright in the images. By definition, images in the “public domain” have no owner. If the works are truly in the public domain, then Highsmith is not the copyright holder and has no standing to sue Getty. Highsmith, on the other hand, claims that she donated the images for everyone to use but did not relinquish her copyright. In essence, she asserts that she gave the public a broad license to use the images in whatever manner they would like, but maintained ownership. A copy of the agreement between Highsmith and the LOC attached to her complaint, however, expressly states:
“I hereby dedicate to the public all rights, including copyrights throughout the world, that I possess in this collection.”
So it would appear that Highsmith’s own evidence defeats her claim. That said, the agreement – the only one attached to her court filing – purports to pertain only to about 500 physical slides and prints. It’s unclear whether Highsmith believes her subsequent contributions were subject to the same terms, or whether other agreements, not attached to the court papers, are involved. In any event, a source familiar with the relationship between Highsmith and the LOC suggests that Highsmith intended to dedicate the works to the public domain. If that is true, she may not have a case at all.
The Probable Outcome
While it is too early to tell how aggressively Highsmith wants to take this suit, Getty has already issued a statement that suggests that they did nothing wrong but the tone also suggests a willingness to settle if Highsmith is reasonable. In its statement, Getty Images said:
The content in question has been part of the public domain for many years. It is standard practice for image libraries to distribute and provide access to public domain content, and it is important to note that distributing and providing access to public domain content is different to asserting copyright ownership of it.
LCS works on behalf of content creators and distributors to protect them against the unauthorized use of their work. In this instance, LCS pursued an infringement on behalf of its customer, Alamy. Any enquiries regarding that matter should be directed to Alamy; however, as soon as the plaintiff contacted LCS, LCS acted swiftly to cease its pursuit with respect to the image provided by Alamy and notified Alamy it would not pursue this content.
Ultimately, Getty will push for a settlement not because they have any fear that they will have to pay $1 billion, but because they would not want this case to establish precedents that may harm their demand letter business. The Getty demand letter business is very profitable despite the bad PR they receive. If Getty were to lose, other copyright holders may try to sue based on the outcome of the case. However, even if Getty wins, the court could admonish them and write something in the judgment that might pave the way for other cases to win, which could make the demand letter business too risky. My guess is that given that this case is not a slam-dunk for Highsmith, she will settle for a small, undisclosed amount but require the removal of all her images from Getty sites. After all, having the images freely available was her goal. If money were her driving force, Highsmith wouldn’t have donated the images in the first place. We will have to wait and see if I am correct or whether this turns into a seminal case that has a profound impact on copyright law.