Many companies post photos on social media in order to promote their businesses. A recent federal court ruling demonstrates how simple it is to become subject to a copyright infringement lawsuit because of the background of the photo. (Petersen v. Diesel Power Gear LLC, No. 1:21-cv-08827 (SDA) (S.D.N.Y. Dec. 21, 2022) (2022 WL 17832314).)
This case began when Diesel Power Gear began a monthly promotion to give away custom-built trucks. It would promote the monthly give-aways with photos of the subject truck on social media. In 2017, Diesel took a photo of the truck that included a portion of a mural painted by artist Shae Petersen, known as SRIL. The artist had registered a copyright in the mural in 2016. When the artist discovered this use of his mural, he notified Diesel and the company took down the photo within hours, and notified the then-current staff not to use the mural as background. In 2020, after the company underwent significant staff turnover, a Diesel photographer took a photo of a truck again using a portion of the mural. The artist again notified Diesel, which had the photo taken down within hours, but this time the author sued in federal court. The artist claimed that Diesel willfully infringed his copyright, but also claimed that some of the company’s principal officers were vicariously and contributorily liable for the infringement, and that the defendants also violated U.S. copyright law by removing the artist’s name (“copyright management information”) from the photo of the mural. The artist moved for summary judgment.
The court denied most of the motion at this early stage in the proceedings, ruling that there were no undisputed facts for any of the claims except for Diesel’s direct infringement (which the company admitted).
A. Vicarious Liability
In order to hold the defendant officers vicariously liable for the infringement, the court set forth a two-part test:
The defendant must have
- the right and ability to supervise the infringing act and
- a direct financial interest in the infringing activity.
The court found that plaintiffs showed that the defendants met item 1, but at this point there was no evidence that there was a causal relationship between the infringing activity and any financial benefit reaped by the defendants. The issue would have to be determined at trial.
B. Contributory Infringement
In order for contributory infringement liability to attach to a company officer, the court also set forth a two-part test:
The defendant must have:
- knowledge of the underlying direct infringement and
- engaged in personal conduct that induced, caused or materially contributed to the infringing conduct.
At this early stage of the case, the court found that “material issues of fact regarding whether the Individual Defendants engaged in conduct that encouraged or assisted the infringement.” This issue would also require a trial.
Under Section 504(c) of the copyright law, statutory damages for infringement range from $750 to $30,000 per work infringed, but statutory damages for willful infringement can range up to $150,000. In order to prove willfulness, the court found that the plaintiff must show:
- that the defendant was actually aware of the infringing activity, or
- hat the defendant’s actions were the result of “reckless disregard” for, or “willful blindness” to, the copyright holder’s rights.
The court pointed out that the artist had not provided any evidence of the defendants’ knowledge of the infringement, and the defendant claimed that taking down the photo within hours showed a lack of willfulness. The court put this factual issue over for trial.
D. Removal of Copyright Management Information (“CMI”)
The U.S. does not require that a copyright holder include the familiar © copyright notice on registered works, but the copyright law does prohibit someone from intentionally removing copyright information. In this matter, the photos included only a portion of the mural and did not include the artist’s “SRIL.” that appeared in the upper right corner. In order to show a violation, the court stated that the plaintiff has to show:
- the existence of CMI on the [work at issue];
- removal and/or alteration of that information; and
- that the removal and/or alteration was done intentionally.
At this early stage, there was no evidence of intent, so that issue also would have to be resolved at trial.
This case provides some guidelines for posting photos on social media:
- If you take a photo, include only the person(s)/object(s) that you have the right to post
- Don’t include photos of logos or other images
- If someone complains that one of your photos infringes their intellectual property, take it down immediately while you investigate
- Issue periodic reminders to anyone working for you about these guidelines
- Consider registering your own photos with the Copyright Office so that you can bring an infringement action if anyone impermissibly uses your photos.