The advantage of registering an image...

A Small Oversight, A Large Loss

In last month's column I wrote that registration is required to recover attorney's fees and statutory damages. Without registration, actual damages or profit must be proven. Actual damages are often the fair market value of a license of the image; and profits, especially if the work was used in advertising, are difficult to prove.

A case that illustrates this is Jack Mackie v. Connie Rieser and Seattle Symphony Orchestra Public Benefit Corporation, 296 F.3d 909 (9th Circuit, 2002). Mackie created a figurative work entitled "The Tango." The Seattle Symphony used an unauthorized scanned image of "The Tango" in a photomontage as part of a 24-page promotional brochure for its 1996-1997 season, that was mailed to 150,000 individuals. Mackie sued for infringement. The work had not been registered, so Mackie sought actual damages, including a hypothetical royalty payment. The Court ruled that Mackie was only entitled to $1,000 in damages – representing "what a willing buyer would have been reasonably required to pay a willing seller for [the] work" -- and disregarded Mackie's allegation that he would have licensed the work pre-infringement for $85,000.

The Court also rejected Mackie's claim for the "indirect profits" that the Symphony generated from subscription sales arising from its use of "The Tango" in the brochure. If "The Tango" has been used "directly" in a product sold by the Symphony -- a t-shirt, say -- Mackie could have recovered damages by establishing the Symphony's "direct profits" from gross sales of the product. The defendants then could show what portion of the gross was not attributable to the infringing work. However, since "The Tango" was used in a promotional brochure to sell subscriptions, Mackie was required to establish a sufficient causal link between the use of "The Tango," and the Symphony's "indirect profits" in its subscription sales. Here, there were so many reasons that an individual might subscribe having nothing to do with the infringing work-- the Symphony’s reputation, the conductor, the musicians, the concert dates, other components of the brochure -- that the Court found that there was no sufficient causal link between the use of the image and the Symphony's sales.

This case is an excellent example of the importance of registration. Even though there was a clear copyright infringement, Mackie received only a $1,000 award, which made a small dent in the tens of thousands of dollars in legal fees that were likely expended in the litigation.

Copyright 2003. Stephen Filler is an attorney in New York City (www.nylawline.com) whose practice focuses on intellectual property, copyright, trademark, technology, media, contracts, corporate and photography law. His office is located at 400 Madison Avenue, Suite 14D, New York, NY 10017, 212-204-3508, sfiller@nylawline.com. This column is to be used for informational purposes only; it is not to be considered legal advice. For legal advice, please consult an attorney.

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