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Why the Lawsuit Against Getty Images Is Unique

Copyright and trademark lawyer Robert Penchina explains Carol Highsmith’s lawsuit against Getty Images.
Main Reading Room. Interior of dome. Library of Congress Thomas Jefferson Building, Washington, D.C. All images by and courtesy of Carol Highsmith via the Library of Congress.

When celebrated photographer Carol Highsmith, a chronicler of American life in the 21st century, began making her archives available to the Library of Congress, she did so with the intent of making the work royalty-free. Ultimately, the Library of Congress expects the Carol M. Highsmith Archive to grow to 100,000 images, which will give the country a veritable treasure trove of Americana, from landmark buildings to lonely stretches of rural roads, across the country’s 50 states.

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So, of course, Highsmith was a bit shocked to see a letter from License Compliance Services, Inc. (LCS), on behalf of Alamy (a photo licensing service associated with Getty Images) ordering her to pay $120 for using one of the photographer’s images on her This Is America! Foundation website. After discovering that Alamy had been charging licensing fees to people and organizations, and “holding themselves out” as exclusive copyright owners, Highsmith filed a lawsuit, seeking $1 billion in damages.

White House. President Ronald Reagan, in the Oval Office, shaking hands with republican senator Alfonse D'Amato of New York. Washington, D.C., 1987

Getty’s Sarah Lochting tells The Creators Project that they are currently reviewing Highsmith’s legal complaint. “We believe it is based on a number of misconceptions, which we hope to rectify with the plaintiff as soon as possible,” she says. “If that is not possible, we will defend ourselves vigorously.”

“The content in question has been part of the public domain for many years,” Lochting adds. “It is standard practice for image libraries to distribute and provide access to public domain content, and it is important to note that distributing and providing access to public domain content is different to asserting copyright ownership of it.”

To get a better handle on the case, we talked to attorney Robert Penchina, partner in the law firm of Levine Sullivan Koch & Schulz. According to Penchina, Highsmith’s complaint against Getty and other defendants is a particularly unique copyright case.

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Big Blue Whale, Route 66, Catoosa, Oklahoma

The Creators Project: What do you know about the case itself and the various legal issues within it?

Robert Penchina: The lawsuit has been filed and that is how we all learned about it. I’m not sure what stage it is at, meaning I don’t believe that a formal answer has been filed yet. I think the complaint is filed somewhere around the end of July, so there would be some time for Getty and the other defendants to respond to it. I’ve taken a quick look at complaint in the last couple of days, and maybe one or two of the reports about it, and it is sort of an odd case.

It’s a copyright case of sorts, but it’s not an infringement case. The claims in here don’t relate to someone reproducing or doing something that would violate a particular copyright right, which in the usage situation is what you usually see, where somebody has a photo, somebody else uses it without authorization and then they get sued for infringement. This contains claims under a different portion of the copyright act from infringement—it relates to what is called the Digital Millennium Copyright Act. There is a provision of that that relates to what is called copyright management information.

What is copyright management information?

It’s information that would be contained as part of a work or in metadata or otherwise associated with the work that would identify who the copyright owner is. It was originally intended as something people would be fastening or fixing to their work to aid them in policing infringement. The DMCA makes it unlawful to distribute a work with false copyright management information, or to remove copyright management information.

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So this suit is saying that Getty took all of this photographer’s work, thousands of them, and put its own name, or Alamy and the other defendants’ names, so that they were now offering up these photos to the public and doing so with false or removed managment information. That is the claim being made here.

Berwyn car spindle, Berwyn, Illinois

From a legal perspective, is this going to be easy to argue from Highsmith’s perspective and difficult for Getty, LCS and Alamy to defend?

Here it’s fascinating. It raises a lot of issues and there are a lot of questions. In terms of factually what she would need to show is that there was copyright management information on the photos when they got to whomever is distributing them. If there wasn’t copyright information for them to remove then they can’t be liable for having removed it. That’s part of the issue. Another part of the issue is, did they affix anything that was false? And her argument is, I suppose, as it is laid out in the complaint, they put their own watermark on it, they put it on their own websites, and said it was available through Getty Images, and all of that is somehow a false indication of copyright ownership.

The thing that makes it, to me, not cut and dry, is that with the DMCA it’s not that you merely distributed something with removed copyright management information, but that you have done so with an intent to hide or facilitate infringement, and they knew that by using this digital tool they would be removing her information. She will have to prove that they did that specifically with the purpose of facilitating infringement.

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Will it be difficult for Highsmith to prove this legal claim?

The reason this will be difficult here is because it comes up in the context of Highsmith has given the public rights to reproduce all of this stuff. There is no claim that anyone has committed infringement here, so is Getty or anyone else actually intending to facilitate infringement when, irrespective of whose credit is on it, she is not saying people weren’t allowed to use it?

She is not saying people weren’t allowed to reproduce it. So they’re not facilitating infringement, they’re facilitating access, and they may be doing other things she is not happy with, but I’m not sure if she could ultimately establish the intent element.

Mardi Gras Parade, 2006, New Orleans, Louisiana

Is it common for photo licensing companies like Getty to provide photos that are in the public domain through their paid service?

Starting with the public domain, agencies and others routinely offer and make available for a fee public domain works. If you as a reporter want to illustrate one of your stories let’s say with a copy of some ancient master’s painting that has long been in the public domain, but you can’t readily put your hands on a good copy that is suitable for your usage or what have you, you would go to a stock photo agency and they would charge you a fee and make it available to you. The mere fact that a photo agency offers up for licensing something that’s in the public domain is not in and of itself problematic—they are in essence giving a service of access.

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What is more troubling, and again this is part of the crux of her complaint and what started this whole thing, it wasn’t that these folks were licensing these works to the public that they couldn’t have gotten for free, but that they turned around and acted as if they were the copyright owner and now are threatening people and collecting money from people without her permission. And that is much more problematic.

Barn, rural Montana

When a photographer, whether a celebrated one like Highsmith or an amateur, makes a photograph public and royalty-free, do they remain the copyright holder?

It’s not clear to me that [Highsmith’s photos] are in the public domain. We’ve been using that phrase because that would be one extreme. She claims it’s not in the public domain. What she claims is that she kept the copyright, but instead said that the world is free to use it under certain circumstances, whatever that might be, and that she isn’t going to charge for it.

In order for something to be in the public domain the copyright has to expire or the copyright owner has to do something to actually dedicate it to the public domain. Something that manifests an intent. What she says is that she merely gave it to the Library of Congress to allow the Library of Congress to make it available to people to use. Whether or not that constitutes thrusting it into the public domain, I don’t know, but she’s taking the position that she’s still the copyright owner. But, as we said, the thing that is kind of odd about this whole copyright dispute is that she isn’t claiming anyone infringed her copyright.

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Click here to read Carol Highsmith’s complaint and here to browse the Carol Highsmith Archive.

Learn more about Robert Penchina's law firm, Levine Sullivan Koch & Schulz, on their website.

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