Using Content Found Online: Caution Required

Written by Louis J. Levy*

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A recent court decision underscores the importance of exercising caution when using content found online (particularly on social media websites), and of training staff at all levels to direct communications alleging copyright infringement or other claims to counsel.  Agence France Presse v. Morel, No. 10 Civ. 02730 (AJN) (S.D.N.Y. Jan. 14, 2013).

In this case, the court ruled that two news organizations, Agence France Presse (“AFP”) and the Washington Post (the “Post”), committed copyright infringement by using images posted on Twitter of the aftermath of the January 2010 earthquake in Haiti.  The decision derives from a complaint filed by AFP seeking a declaratory judgment against Daniel Morel, a well-known photojournalist, stating that AFP’s use of Morel’s image was not infringing.  Morel filed counterclaims against AFP and Getty Images, among others, for copyright infringement and related claims, subsequently adding the Post, a Getty subscriber, to the complaint.

I. FACTS

Daniel Morel was in Haiti at the time of the January 2010 earthquake and posted photos of the quake’s immediate aftermath through his TwitPic account to Twitter.¹  The photos were later reposted to the Twitter account of a third party named Suero,² and subsequently discovered and downloaded by an AFP photography director, who sent them to the AFP photo desk for processing.³  Under the terms of a reciprocal license agreement, AFP shared the photographs with Getty Images for licensing to third-party subscribers via the Getty website.⁴  AFP originally transmitted the photos to Getty with incorrect attribution—crediting the photos to Suero rather than Morel.⁵  Realizing its error, AFP sent a caption correction to Getty, which Getty then sent to its subscribers.⁶  AFP did not, however, remove the images with incorrect attribution from Getty’s system.⁷  After being notified that Morel was represented exclusively by Corbis Images, a competing licensing agent, Getty removed photos credited to Morel from its system, but failed to remove those incorrectly credited to Suero until weeks later.⁸   In the interim, the Post, a Getty subscriber, published four of the Morel images on its website, three of which were incorrectly credited to Suero, and, as discussed below, the Post failed to remove the photos despite several requests to do so.⁹

II. KEY HOLDINGS

Ruling on cross-summary judgment motions, the United States District Court for the Southern District of New York found that AFP and the Post were directly liable for copyright infringement.¹⁰  Significantly, the court rejected AFP’s affirmative defense that, by posting his photos on Twitter, Morel had granted AFP a license to reproduce and distribute the photos.¹¹  AFP had argued that Twitter’s Terms of Service (“TOS”) made AFP a third-party beneficiary of that license, free to post, license, or otherwise use the photos in a virtually unlimited way.¹²  The court firmly rejected this argument, observing that the Twitter TOS applies only to Twitter partners and sublicensees (which AFP was not).¹³  Further, the court noted that, although Twitter’s Guidelines for Third Party Use of Tweets in Broadcast or Other Offline Media encourage the use of Twitter in broadcasts, those standards specifically require that a username be included with the full text of any Tweet used, and with respect to images, that the image only be displayed with the associated Tweet and include a reference to Twitter.¹⁴  In conclusion, nothing in the TOS granted AFP the right to remove and subsequently license images from Twitter.¹⁵  Such an interpretation would be a “gross expansion” of the terms of the Twitter TOS.¹⁶

Notwithstanding this holding against AFP and the Post, the court denied Morel’s motion for summary judgment that Getty was also directly liable for copyright infringement.¹⁷  Instead, the court ruled that there were unresolved issues of fact regarding Getty’s eligibility for the safe harbor under the Digital Millennium Copyright Act, 17 U.S.C. § 512, which Getty had asserted as an affirmative defense.¹⁸  AFP and the Post did not raise this defense.

III. OBSERVATIONS & RECOMMENDATIONS

In addition to these rulings, this case is also noteworthy because of the underlying facts, particularly with respect to the failure of the Post to adequately respond to initial communications from Morel’s counsel.  Morel’s counsel had sent a letter to an officer of the Post’s parent company via a general corporate email address in March 2010 offering to allow the newspaper to keep the images on its website provided they were accompanied by a correct credit.¹⁹  This email, if received in the general corporate inbox, was never forwarded to the addressee.²⁰   The Post also failed to respond to subsequent correspondence, including a letter sent by Fedex with copies to two general newsroom email boxes.²¹  (It is worth noting that the name of the addressee on this letter was misspelled).²²  Only in June 2010, after a Getty representative contacted the Post, did the newspaper attempt to delete the images from its website.²³  For unknown reasons, however, the images remained in the website’s gallery until April 2011.²⁴

These facts underscore the importance of training all staff to understand that communications containing copyright infringement or other claims need to be forwarded to legal or other appropriate staff without delay.  Also, safeguards should be in place to confirm that remedial actions are taken promptly and efficiently.  In the case of the Post, had the initial letter from Morel’s counsel been forwarded to the appropriate individuals in the company, an easy, cost-free solution would have been available.

The decision also points to vulnerabilities that may exist even when images are properly licensed from stock photo services such as Getty.  Here, the Post subscribed to Getty’s services, and believed it was fully entitled to use those photos.  It did not know that the photos it downloaded contained incorrect credits.  Nor did it know that Getty did not have the right to distribute Morel’s photos.  As noted above, those rights belonged to Corbis Images.  This fact pattern suggests that, when using images from stock image services, if there is any doubt about their provenance, it would be prudent to confirm, to the extent practicable, that the service in fact has the right to distribute the image to be used.

This case also illustrates the risks involved with using images found on social media such as Twitter or Facebook.  The terms of use for these and other social media websites generally confirm that ownership of images posted on these websites belong to the image owner, not the service, and otherwise state the limited conditions under which images and other content may be used.  If those conditions are not met, and assuming fair use exceptions do not apply, third parties do not have the right to broadcast, distribute or otherwise commercially exploit such content without the permission of the owner.  Businesses, and the attorneys advising them, should bear this in mind when considering whether to use content found online.

*Louis J. Levy is an attorney with the law firm of Lerman Senter PLLC, specializing in the fields of trademark, copyright, e-commerce, and data privacy and protection.  He can be reached at llevy@lermansenter.com.