Your business may be liable for years-old website images

A recent case before the United States Court of Federal Claims serves as a good reminder to review and track the rights associated with images on your website and all of its webpages, because copyright infringement claims may be lurking.

In APL Microscopic LLC (APL) v. United States, a photographer sued the National Aeronautics and Space Administration (NASA) over a photograph NASA posted to a page of its website in 2004. NASA last updated the page in November 2007.

In December 2007, the photographer registered the copyright in the photograph (which has now become a precondition to the right to bring a suit for copyright infringement, regardless of jurisdiction). When the photographer filed suit against NASA in 2018, he was unable to seek statutory damages and attorney fees because the date of his copyright registration was well after the photograph was published.

Despite the significant lapse in time from NASA’s posting of the photograph and the commencement of the lawsuit, the court determined that the photographer had at least two viable claims of copyright infringement that survived NASA’s motion to dismiss the complaint. The complaint alleged infringement of three of the photographer’s distinct “exclusive rights” under the Copyright Act:

• The right “to reproduce the copyright works in copies,” 17 U.S.C. § 106(1);
• The right “to distribute copies…of the copyright work to the public by sale or other transfer of ownership,” 17 U.S.C. § 106(3); and
• The right “to display the copyrighted work publicly,” 17 U.S.C. § 106(5).

Because the federal government is the defendant in this case, 28 U.S.C. § 1498(b) provides that the plaintiff cannot have any recovery for copyright infringement committed more than three years prior to the filing of the complaint.

This differs from the statute of limitations for claims against non-governmental defendants, where “no civil action shall be maintained under the [Copyright Act] unless it is commenced within three years after the claim occurred.” 17 U.S.C. § 507(b).

Importantly, the Copyright Act’s “separate-accrual rule” provides for a new three-year statute of limitation each time an infringement occurs, which allows a copyright owner to bring suit years after the initial infringement occurs (though it is only entitled to damages for the latest three-year period). See Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 633, 670 (2014).

The court in APL provides a good roadmap for businesses to identify where potential liability may exist.

The court separately assessed the copyright infringement claims under the three distinct exclusive rights, ultimately concluding that while the statute of limitations can protect a defendant against a claim of infringement for the original loading of the image to its servers (“reproduction”), subsequent views of the image by website visitors (“distribution” and “display”) restart the statute of limitations clock and may lead to liability.

In assessing the “reproduction right,” the court concluded that the plaintiff’s reproduction right was allegedly infringed in 2004 when NASA uploaded the image to its server.

The court rejected the plaintiff’s argument that each time the webpage was displayed a new copy was infringed for reproduction purposes. Therefore, the court held this claim was time-barred. APL at *5-6.

In assessing the “distribution right,” the court held that infringement of the distribution right requires actual dissemination of copies of the image. The court rejected NASA’s argument that infringement of distribution rights only occurs when the work is made available for distribution (i.e., when the image was uploaded to the website).

Therefore, each time NASA transmitted the webpage and the subject image the distribution right was infringed and the court held that discovery would determine if and when copies were indeed disseminated to users within three years of the filing of the complaint. APL at *6-8.

In assessing the “display right,” the court found that each unauthorized showing of a work through a computer infringes on the copyright owner’s right of public display.

Therefore, the court allowed the claim of infringement of the display right to proceed to discovery, because each time a user viewed the NASA webpage, the copyrighted work was displayed on the user’s computer and each display constituted a separate infringement, starting a new limitations period. APL at *8-10.

In finding the plaintiff had sufficiently pled infringement of the distribution and display rights, the court allowed the litigation to proceed to discovery, where the plaintiff could investigate whether its work had been viewed by visitors to NASA’s website in the preceding three years.

Based on this decision, businesses risk liability and potential damages for infringing images on their websites, even if such images were uploaded years before, if at least one website visitor viewed the image in the past three years.

If the copyright owner is eligible for statutory damages, the copyright owner need not prove actual damages and may be entitled to attorneys’ fees.

Even if the copyright owner is not eligible for statutory damages and attorneys’ fees, like the plaintiff in APL, the threat of costly litigation including discovery incentivizes so-called “copyright trolls” to exact significant settlements for what would otherwise be small and/or difficult-to-prove claims of actual damages.

Business should understand that most of the major digital image library companies — as well as copyright trolls — employ software that combs the internet for infringing uses of their images.

Such software can find allegedly infringing uses in largely inactive or forgotten webpages just as easily as it can in regularly trafficked pages. In fact, due to such technology several of our clients have been the recipients of a “cease and desist” letter requiring the taking down of an image and demanding payment for historical uses and the purchase of a valid license.

Written policies and procedures to ensure use of only authorized images is a prudent practice, but regular review of your web presence is also advisable.

In many instances, our clients have found images that were posted in contravention of such policies or with valid licenses that have subsequently lapsed.

Removing unauthorized images from your website and servers, whether they were never authorized or a license expired, prevents further views or downloads of the image (i.e., potential infringement of “distribution” or “display” right).

While this step does not remove liability for use of the image in the past three years, it does prevent the start of a new three-year statute of limitations period. Assuming no other use of the image, the removal should result in no potential liability after the current three-year period expires.

Finally, a “cease and desist” letter involving website images and alleging copyright infringement should not be ignored as they are almost never resolved, and often snowball, without action by the alleged infringer.

We recommend the businesses facing such allegations seek out the assistance of an expert to navigate the resolution process and to avoid costly copyright infringement litigation.
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Jeremy Wolk is a partner in Nixon Peabody LLP’s Business & Finance department. He developed this article with Troy K. Lieberman, an intellectual property litigator and co-leader of the firm’s TCPA & Consumer Privacy team.

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