Blogger Loses Copyright Ruling Over Photo…But No Mention of the CC-BY-SA License!–Von Der Au v. Imber

March 26, 2021 · by · in Copyright, Evidence/Discovery

Von Der Au is a professional photographer. The photographer took a photo of the Semperoper opera house in Dresden, Germany. The defendant blogs at MichaelGImberBlog.com and republished the photo in a post. The court claims the “value of a license to use the Photograph is approximately $900.”

The photographer obtained a copyright registration 6 years after first publication–so statutory damages and attorneys’ fees should be off the table. Because the registration was more than 5 years after publication,  the photographer also does not obtain a presumption of validity from the registration. Nevertheless, the court says “summary judgment may be proper where the plaintiff proffers a certificate of registration of copyright in the disputed works and at least one other piece of evidence supporting the validity of the copyright.” The photographer’s other piece of evidence is a declaration of authorship. To me, that sounds duplicative of the registration, but the court says it’s good enough because the defendant presented no rebutting evidence.

As for infringement, the court says:

I agree, but after doing a Google reverse Image Search, I quickly discovered that Wikimedia Commons has the exact same photo available under a CC-BY-SA license:

[Attribution: Avda, CC BY-SA 3.0 <https://creativecommons.org/licenses/by-sa/3.0>, via Wikimedia Commons]

User:Avda says “Many of my images are available under the creative commons license. They can be used for free, if the license conditions are implemented. (Publication of my user name and the license conditions close to the image.).”

The opinion says that Imber did not provide attribution. So the court should be discussing what happens when a defendant uses a CC-licensed photo without fulfilling a predicate condition. That’s still an unlicensed use because the defendant didn’t qualify for the CC license’s benefits, but it also is a qualitatively different violation. The quoted license fee of $900 presumably provides use without attribution, because we know the “market price” for a verbatim reproduction with attribution is ZERO. I think this doctrinal dichotomy–that the real issue is the missing CC attribution, not republication without paying–is germane to every aspect of the court’s analysis, from infringement to fair use to damages. The court’s opinion doesn’t mention it at all.

(Defense counsel is an IP boutique in San Antonio, perhaps focused on patent work. Their website uses a headline of “A Smarter Approach to IP Litigation,” but it’s displayed over a photo featuring 8 male attorneys. I could see how greater gender diversity might turbocharge their practice to achieve the smartest approaches. A woman at the firm, Julie Polansky Bell, is listed as co-defense counsel, but she hasn’t gotten acknowledged on the firm website (yet?)).

I’ll also note that the photo in question is otherwise a relatively generic shot of the Semperoper. I got the following reverse image search results in Google, some of which appear to be essentially the same angle:

The widespread availability of virtually identical substitutes also should be germane to the discussion, especially with respect to fair use and damages. The photo is clearly a commodity, recreated independently hundreds of times by different photographers.

The court rejects the fair use defense on summary judgment:

  • Nature of use. “Even though the Defendant did not produce the Photograph for individual sale or profit, it surely stood to profit indirectly from the publicity gained by publication of a blog that used the Photograph. That is, increased patronage of the blog is likely good for Defendant’s for-profit business, and the use of the Photograph is likely intended to increase web traffic to the blog. Such use is commercial in character.”
  • Nature of work. “Courts have held that ‘photographic images of actual people, places and events may be as creative and deserving of protection as purely fanciful creations.'” While I agree, the Google image search suggests that line of thinking doesn’t apply to this photo.
  • Amount taken. 100%.
  • Market effect. “Defendant proffers no evidence that the market for or value of the work would not be affected by the use.” This kind of burden-shift is appropriate for an affirmative defense on summary judgment. The defendant has to provide some evidence to make its affirmative defense. Still, it’s jarring to see this line now knowing that the photo is in Wikimedia Commons. The photographer apparently was happy if everyone used the photo without cash payment. Thus, when the court says “the market for the Photograph would be all but destroyed if publications were permitted to publish the Photograph without paying a licensing fee,” I have no idea what the court is talking about.

The court grants summary judgment to the photographer but doesn’t resolve damages. I can’t see how damages could top $10k. Without any attorneys’ fees (due to the untimely registration), I don’t see how this ruling can be a financial win for the plaintiff.

A case like this seems like an ideal case for the forthcoming Copyright Claims Board (CCB). The financial stakes here are so low that no one–the plaintiff, the defendant, or the judge–wants to incur the costs of litigating in federal court. Having said that, I remain worried the CCB will not ensure that relevant facts–such as the Wikimedia Commons status of the photo–get introduced to the proceedings, especially given that an industrial-grade federal court proceeding didn’t elicit that fact either. If the CCB were to crank out a case like this, without considering the CC angles and the implications of the CC-BY-SA license, it will reach dubious results. And worse, copyright trolls will weaponize the defense costs–even if the CCB’s defense costs are reduced–to extract financial settlements in cases like this, instead of resolving the problem by getting the blogger to add the attribution so everyone can redirect their energies to more productive endeavors.

Case citation: Von Der Au v. Imber, 2021 WL 1131719 (W.D. Tex. March 24, 2021). Note: this is a Liebowitz case with Sanders’ intervention.

Some Blog Posts on Creative Commons Issues