Photographer’s Suit Against Client for Republishing Photos on Facebook Proceeds – Davis v. Tampa Bay Arena

[Post by Venkat Balasubramani with comments by Eric]

Davis v. Tampa Bay Arena, Ltd., 2012 WL 2116136 (M.D. Fla.; June 11, 2012)

This seems like a run-of-the-mill dispute between a photographer and client, but I think it contains some helpful lessons. I have a feeling we will see more of these in the future. Chalk it up to more aggressive copyright enforcement, or an impulse to put out an increasing amount of content, or a combination of the two.

Davis worked from 1998 through 2011 (under various contract arrangements) for Tampa Bay Arena as the in-house photographer photographing events. (For what it’s worth, here’s what looks like Davis’ site.) Davis (smartly) retained ownership of the photographs and licensed them to the arena for limited uses. The agreement in place between the parties allowed for use by the arena in the following ways:

newsletter, advertising, display prints, broadcast, and the venue website.

The arena terminated its relationship with Davis in 2011 but continued to use his photographs. In early 2011, the arena created a Facebook page and posted Davis’ pictures on the page. Apparently Facebook had a feature that allowed users to download photographs at the click of a button, and this feature was available on the arena’s Facebook page. Davis asked the arena to remove the photographs from its Facebook page. The arena demurred, and Davis sued, asserting claims for infringement, conversion, and breach of contract.

Breach of contract: The court declines to dismiss the infringement claim, finding that there is a factual dispute as to whether the arena’s use falls within the permitted uses of the agreement. The court does dismiss the infringement claims based on unregistered photographs (with leave to amend). However, the court declines to dismiss Davis’ claims for statutory damages finding there are factual disputes with respect to the timing of the infringements and the registrations.

Conversion and Breach of Contract: The court also declines to dismiss Davis’ conversion and breach of contract claims. The court does not mention preemption when discussing the conversion claims, but finds that the arena’s retention of the slides is sufficient to support a claim. (Some of the photographs were taken with a digital camera and others were taken in slide format.) The court mentions preemption when dealing with the breach of contract claim, but summarily says that the “extra element” required to support a breach of contract claim (when also bringing a claim for infringement) is satisfied when there is a contract in place. Nevertheless, the court says that Davis alleges breaches that are independent of infringement: (1) adding corporate sponsorships to photographs; (2) refusing to return the photographs; (3) conveying rights to Facebook; (4) failing to give appropriate credit; and (5) using photos for sponsorship purposes.

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Unfortunately for the arena, the license provisions cover the “venue website” but do not expressly reference Facebook. This isn’t surprising, given that at the time the parties negotiated the 2008 agreement, Facebook was hardly as ubiquitous as it is now. The idea of creating a Facebook page was probably not even a glimmer in the arena’s eye.

The key question will be whether the arena can argue that use of the photos on the Facebook site should fall under “advertising”. This will probably be a tough argument, particularly given that anything posted to Facebook grants Facebook broad license to re-use it (e.g., in sponsored stories) and, equally as important, allows end users (fans) to freely download it. (Recall the dispute–still ongoing–between Agence France Presse and a photographer who made photos of the Haiti earthquake. AFP took the position that photos posted to Twitpic were subject to a broad license. The parties filed cross-motions for summary judgment which are currently pending before the court.) Unless the arena has some blockbuster emails from Davis evincing an understanding that the arena’s use in “advertising” was intended to be broadly construed, this may be a tough one for the arena to win.

A few copyright issues that the case brought to mind:

– when is a breach of a license agreement actionable as infringement versus as a breach of contract (as the court noted in MDY v. Blizzard, when a breach of a condition implicates one of the copyright owner’s exclusive rights, which was probably satisfied here)

– can Davis make out a conversion claim based on retention of the photos? (retention of the slides may suffice for the non-digital photos)

– how about the arena’s argument that Davis can’t exploit the photos without its consent or without the consent of the artists or performers (how will this affect Davis’ chances for damages in the event he is limited to actual damages?)

These questions aside, I think this is a good cautionary tale when dealing with freelance photographers. One obvious point from this case is clients/licensees should spell out in advance what their acceptable uses would be, and in the era of social media, it’s worth being expansive, or as general as possible. Something like “the arena can use the photos on its websites or in third party websites or platforms for purposes of advertising or promotion” would have gone a long way here.

The trajectory of the relationship between Davis and the arena is interesting. As recounted in this news story posted to Davis’ blog, Davis had a long-standing relationship with the arena. The arena posts the photos to Facebook. Davis complains, then sends a C&D, ultimately leading to termination of the relationship. Davis seemed like he had a sweet gig as an in-house photographer at the arena. Was Davis over-reacting when he asked the arena to remove his photos from its Facebook page? Will his proceeds from the lawsuit make up for the money he loses from the arena’s business?

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Eric’s Comments

I’ve complained before about dealing with freelance photographers. During my stint at Epinions, we got sued only two times–both by freelancer photographers for photos we had obtained from third parties, and in both cases the financial demands were completely untethered from reality. As a result, when I see someone who describes themselves as a “freelance photographer,” I just assume their alter ego is “pugnacious plaintiff.” If you’re negotiating a contract with a freelance photographer, get everything you possibly could ever want into the contract before writing a check. Once the cash moves, any activities not clearly permitted by the contract will cost a boatload more or invite a lawsuit, even if financially irrational. CAVEAT EMPTOR!!!

Personally, I won’t deal with freelancer photographers who have unreasonable negotiating positions on copyright. That’s a good signal that they are likely to be tendentiously unreasonable in the future too. In fact, in my capacity as HTLI director, I just kiboshed a deal with a photography vendor whose contract was muddled on copyright terms and who didn’t back down when we made a reasonable counterproposal. Major red flags. The best news: we found a replacement vendor who was half the price and whose form contract was more reasonable about copyright from the start.

Speaking of financial irrationality, I want to amplify on Venkat’s discussion about the relationship. The opinion says that Davis was getting $350 per event, plus $130/hr for events over 4 hours (implying an hourly rate of no less than $87.50/hr for events shorter than 4 hours), and he retained the copyright to the photos and could presumably commercialize those in a variety of ways. Getting paid a decent hourly rate to produce copyrighted material that can be further commercialized without restriction sounds like a pretty sweet gig to me (and that doesn’t count the other perks, like the free entrance to cool events and the opportunity to rub shoulders with the rich and famous). Meanwhile, it’s no surprise that the arena dumped him overboard when he threatened litigation, so Davis chose to grab for the litigation cash and free up his time for other gigs rather than keep the existing economic arrangement with the arena.

Was that a good economic choice? It’s hard to tell, but the opinion does give another clue. David sued on 255 photos, 215 which weren’t registered at the time he sued, meaning that at most 40 of the photos could possibly support statutory damages and attorneys’ fees. It’s not clear from the case if all 40 actually were registered on a timely basis, so we’ll have to see if Davis is eligible for any enhanced statutory remedies at all.

I’m going to go on a limb and suggest that the maximum possible damages for the 215 photos will be de minimis. Although Davis might have a standard licensing fee for his photos, which would support a plausible claim for actual damages for these photos, the dollar value can’t be very high for the use on a Facebook page. And even if all 40 of the other photos qualify for statutory damages, my guess is that the damages will be more on the $750 side than the $30,000 side (and certainly not the $150,000 side).

So how much could this case be worth in Davis’ best-case (but still realistic) scenario? $50k? $100k? Is that maximum potential upside worth chucking a long-term relationship (13 years) with the arena? Only Davis can answer that question, and obviously he has (at least implicitly). I hope he made a wise choice.

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