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Morel's attorney, Joe Baio tells EPUK why a case that simply upholds the law is so important for photographers

31 January 2014 - David Hoffman

Fresh from his successful prosecution of Getty Images and AFP in New York, Daniel Morel’s attorney Joseph Baio talked to EPUK’s David Hoffman about the implications of the trial which ended with his client being awarded $1.2m in damages, the maximum possible for the breach of his copyright.

Read how Getty Images and AFP’s defence fell apart in November 2013 in EPUK’s DAILY REPORTS.

David Hoffman began the EPUK interview by asking Joe Baio about the overall importance of the case.

“The Morel case has been referred to as a landmark ruling in one of the industry’s most important legal cases,” said David Hoffman. “But the verdict simply upholds the existing law. Why is this particular case so important?”

Joseph Baio replied “The landmark was established earlier in the year by the Court – if you post images onto a social network that has a term of service that recognises your exclusive right to license and to profit from those images, then the Courts will honour and protect those rights. You won’t be stripped of them. That was the first decision to actually hold that.”

But what got much more attention, Baio pointed out, was the fact that an individual photographer stood up to Getty Images, a multi billion dollar enterprise, and to AFP, the oldest photo agency in the world.  And he was able to prove to the satisfaction of a unanimous jury that these two companies wilfully violated Daniel’s copyrights in his own works – even though they were posted by him on TwitPic – and should pay the maximum statutory damages for their infringements.

Sinking fish © EPUK Art Department.

“They fought every step of the way,” said Baio. “But an individual managed to advance copyright claims against two giants which claim to be the guardians of copyright.”

Hoffman replied: “Do you think this has international implications, in the way these companies will work with people in the future, in the UK and Europe?”

“Well, you know, it’s not clear that other countries will follow the same precedent,” said Baio. “But given the fact that so much of this activity is on the internet, which is international, and so long as there is jurisdiction in the United States, the Court’s ruling and the jury’s verdict might keep them more honest I think. But I really don’t know what the EU will do.”

“There’s a great deal of contradiction in what’s going on, for example, in the UK and in Europe,” said Hoffman. “AFP is a French company, not an American company, so is the reason it ended up in a US Federal Court because AFP tried to sue Morel originally in a US court? Why didn’t it go to France?”

“In all likelihood, they would not have had jurisdiction over him in France” said Baio. “Remember, AFP were seeking a ruling as to what the TwitPic terms of service meant here in the United States. Also, Daniel was only in two places: New York or Haiti. I can understand for a bunch of reasons why they selected New York over Haiti, which we are very thankful for, because that gave us the jurisdiction to be able to countersue.”

Did AFP sue Morel to establish a precedent?

Did the fact that they tried to sue Morel give you the lever that brought them to court in New York? Asked Hoffman. “Was that a mistake on their part?”

Joe Baio replied that he wouldn’t evaluate whether the other side made a mistake or not.

“It was, however, a decision that was highly criticised,” said Baio.

“Why would you take on a guy who doesn’t have a lot of money and sue him to strip him of his right to license his own works and to get punitive damages against him for claiming AFP didn’t have the right to do what it did with his pictures? Strategically, that might have made some sense, because they probably wanted to establish the law in this area, and what better way to do that than to sue someone who might not have the wherewithal to defend themselves. That’s just me speculating.”

“That may have been their thinking, that it would be a way to get a ruling that would be favorable to the agencies for all purposes. Then they would be able to use that precedent in whatever way they could. It didn’t turn out that way,” said Baio.

Hoffman asked, “Had they not made that decision, had they not sued Morel in the US courts, would Morel, in fact, have been in a worse position?”

“He might have,” said Baio. “Back then, I was not his lawyer.”

“I think there are ways [that Morel may have been able to take action]. Remember, AFP had a Washington D.C. office. So it had a US presence, and it was doing most of the things out of that office.”

“Getty, of course, had a New York office, but also is based in California. So there were a lot of US connections. Whether the case would have been brought by Daniel, whether it would have been brought in New York, I’m not sure. I think he would have had jurisdiction, but, you know, I didn’t have to cross that bridge because everything was already here,” said Baio.

Hoffman replied, “What I’m thinking about is that there are newspapers here in the UK – The Daily Mail is a good example – that have a major US presence.”

“They constantly rip off photographers’ copyright. And I’m wondering if this has opened up a path whereby we might be able to take action. A UK photographer might be able to take action in the US against a UK firm, the The Daily Mail perhaps, on the basis of their US presence,” said Hoffman.

“Well, I think there could be barriers to suing in the US,” said Baio.

“Particularly if UK law does apply. So there’s a level of complication, which I think would not have been the case here, because so much of it was emanating out of the United States. That’s where Amalvy [Vincent Amalvy, the editor who acquired and uploaded the images to the AFP system] was, that’s where Bernasconi [Francisco “Pancho” Bernasconi, then Senior Director of Photography News and Sports at Getty Images] was, that’s where their assistants were. So, for the most part, there was a very strong connection to the United States.”

“So we might lose that on venue, the ability to sue The Daily Mail in the States, because most of the actions would have taken place in the UK?” asked Hoffman.

“You could, right,” said Baio. “Venue then sometimes becomes a matter of judgment on the part of the judge. The judge could say, well, at least in the United States, the jurisdiction that’s selected by the plaintiff is given due recognition. It’s accepted that plaintiffs, here in the US, can sue where and when they want so long as there’s jurisdiction. At the same time, if it’s so much outweighed – it’s UK law, it’s UK witnesses, it’s a UK person who took the pictures, their major distribution is in the UK – then you might run into trouble keeping the case in the United States. But it’s certainly worth a try if the law is better.”

“It would certainly fire a shot across their bows,” said Hoffman.

“That’s right. It might get them to come to the table,” Baio replied. “Although it’s very hard to get them to come to the table.”

TwitPic’s terms protected the photographer

David Hoffman then asked Joe Baio about Flickr and Tumblr: “Sites like Flickr and Tumblr are constantly infringing copyright. Their whole business model is one of infringing copyright. Does this case have any effect on them?”

Baio replied, “It should have an effect on anyone who recognises the rights of original content providers and includes similar protections in their terms of service. By that I mean, the main challenge here was whether the TwitPic terms of service preserved the right of the copyright owner to continue to take advantage of, and capitalise on, the economic value of what he did, even though the photographs were made widely available.”

“And, you know, there were some entities, some social networks, that tried to change their terms of service so that the service provider had the full right to distribute, sell, and capitalise on stuff. And there was a big outcry.”

“Yeah, Instagram,” said Hoffman, adding “Getty and AFP, among others, constantly pick up pictures from private citizens, from other magazines, and they infringe the copyright in those. Having lost this case, will that now become impossible for them?”

“No. The technical possibility remains,” said Baio. “The negative thing that they will have to live with, the precedential value of this case, is that in subsequent copyright cases whoever is suing them can bring to the attention of the jury the fact that they have already been adjudicated to be wilful copyright infringers.”

“The jury is then, in assessing the size of statutory damages, entitled to include that information in evaluating whether they are serial violators. Whether they need the maximum punishment in order to try to deter them,” said Baio. “Now, of course, we got the maximum statutory damage, which was $150,000 per image.”

“If you don’t get statutory damages under the Copyright Act then you have to prove actual damages,” said Baio. “And the problem with actual damages is the burden would be on the plaintiff to show how much the plaintiff would have gotten, had the work not been infringed.  But that’s typically just the actual or potential licensing amount which would not deter anyone from taking and using whatever they wanted without fear of a big monetary exposure.”

“Even with statutory damages, the Gettys and the AFPs can do an economic evaluation, right? Is it worth it to them to try to take something, even though at the end of the day they may be found liable, because their maximum exposure is $150,000 for a given work? Now, companies don’t like to be called or to be found to be wilful violators of the law, but there is a limit to the economic impact. And, in fact, in this case, AFP – when Amalvy had to explain what he did after the fact, he said, ‘We weren’t coming up with any images, and I had to decide whether to take the plunge.’ That’s the way he described it.”

“So AFP took the plunge, understanding that there were risks, but they still managed to be on the front page of a hundred newspapers. So for all I know, they think that risk was worth taking.”

“It cost them very heavily,” said Hoffman. “There’s a case in the UK, known as the Banier Judgement, which is similar in principle. The newspaper lost, and then the judge laid out that this was an illegal way of conducting a business, and it was their decision as to whether or not that’s how they wanted to do it.”

“If [social media] have terms of service that are very similar to TwitPic, then you have the protection,” said Baio. “In the absence of the terms of service, it will be interesting to see what the courts will do. If you’re not using a social network or a service provider, but somehow you’re putting it on your own website, making it fully available to the world, putting no protection whatsoever on it, it might very well be a different case.”

“I’ll have a look at the Pinterest and Tumblr terms again in the light of this case,” said Hoffman. “You’ve highlighted the parts of those terms that really matter.”

Timely USCO registration made “full panoply of remedies” available to Morel

Moving on Hoffman asked, “Do you know why Getty and AFP chose a jury, and why for that matter you did?”

“They had no choice in the matter,” said Baio. “If one side decides they want a jury, under the Copyright Act and the DMCA and the other claims that were brought – so long as they’re not equitable in nature, and these are not viewed as equitable claims – either side can demand a jury early on in the litigation.”

“Daniel’s prior lawyer sought a jury trial. At that point, it will be a jury trial, unless both parties agree that it won’t be.”

Joe Baio thought that AFP and Getty might have preferred a judge trial. “But they had no say in the matter,” he told Hoffman.

Hoffman then asked, “If this had involved older photographs, ones that had not been registered with the US Copyright Office, but had suddenly become of high news value, would it have been possible to take legal action? Is copyright registration an absolute foundation for this?”

“Well,” said Baio, “The registration becomes important in determining whether you’re going to get statutory damages or not.”

“The fact that they were registered within the statutory period was important. The fact that under US law, the minute you create something, it is protected. The question of the extent of the protections, and which claims you can advance, has to do with things like registration – timely registration. And in this case there was timely registration, so we have a full panoply of remedies available to Daniel.”

“If I understand this correctly,” said Hoffman. “Had a similar case involved non-registered images, the financial practicalities would probably have been a block to taking action.”

“If you’re asking what would have happened if there had been no registration here, we could have still gone after actual damages. But as we know, the jury awarded Daniel $275,000 in actual damages, so it would have been a substantially lower amount,” said Baio.

Moving on to the damages for the failure to credit Morel, Hoffman said, “The DMCA damages could have been another $400,000, but in fact they were $20,000.”

“Yes. I think, from some of my conversations with the jurors afterward, there was one juror – I don’t know which one – who believed that there was no additional damage, economic damage, as a result of the change of the credit. That juror thought that it would be too much to pile on the $400,000, and thought that since Daniel was getting the maximum on the first, that he should get significantly less on the second, which was a smaller amount.”

The appeal process

“What’s the time limit for an appeal?” asked Hoffman.

“Well first, before there are appeals, there are motions that can be made before the trial judge to seek either a new trial, or motions following a verdict, saying that there was either insufficient evidence to support a finding, or the law precludes what the jury did,” said Baio.

“AFP and Getty have now made those motions.  They claim that the jury did not have any evidence from which it could conclude that either defendant acted wilfully, that the damages awarded were either too speculative or that they “shock the conscience,” that the DMCA awards were not valid under the law and merely duplicated the injury Daniel suffered as a result of their Copyright infringements, and there should be a whole new trial.”

“Just last week,” Baio noted, “we filed our RESPONSIVE BRIEF . As you will see, we disagree once again with AFP and Getty.”

In that brief, Morel’s lawyers note that AFP and Getty Images don’t get to have a do over just because they didn’t like the jury’s unanimous verdicts.  The brief then lays out in detail the evidence that the jury support those verdicts.  Here’s an excerpt from the overview:

“There was ample evidence for the jury to conclude that each Defendant knew or was wilfully blind to the fact that it was infringing Mr. Morel’s copyright during their extensive and unauthorised licensing campaign of his works. Defendants’ principal strategy is to ignore any and all evidence that does not comport with the unconvincing stories that they offered up to the jury, electing instead to regurgitate the self-serving denials of wrongdoing that their representatives uttered from the witness stand. Defendants also fail to address the documentary evidence that supports the jury’s verdict on Mr. Morel’s actual damages, including the invoices and sales charts that show the extent of Defendants’ licensing of the Photos-at-Issue and the specific prices at which Defendants sold that work to its customers.
 
“Defendants argue that the jury’s award of $1.2 million as statutory damages under the Copyright Act “shocks the conscience.” The argument is specious. The jury had extensive evidence to conclude that an award at the maximum level of the permissible range was warranted against both Defendants, including: Defendants’ self-proclaimed status as champions of copyright protections; their wilful violations of Mr. Morel’s rights in his own work; their failure over many months to even attempt to meliorate the effect of their infringements; their refusal to accept responsibility for their own acts; their continued efforts to blame Mr. Morel or each other for the various infringements; and the need to set the awards at a level necessary to deter similar conduct in the future by these industry-leading giants and other would-be internet thieves.”

 
Although AFP’s own Guidelines required its people to verify works that were made available on social networks, here’s the type of investigation AFP’s Amalvy undertook to verify who Lisandro Suero – the person whose name they attached to Morel’s pictures -  was:
 
Q. First, I want to ask what did you do to confirm Mr. Suero’s identity and what did you do to confirm the fact that he took the pictures?
 
A. I tried to write Mr. Suero.
 
Q. What else did you do to verify his identity and whether he took the photographs?
 
A. Nothing else.

 *****

Q. Did you ask the person on the desk, please find out what or who Lisandro Suero is?
 
A. I think as part of our general conversation, I might have asked about it, but we didn’t undertake any specific research.
 
Q. Did you take any general research to find out anything about the person using the name Lisandro Suero?
 
A. No.


“So what happens next,” Hoffman asked.

“The Judge will decide these motions after AFP and Getty file their reply brief on February 3rd,” Baio said.  “After the Judge rules, we will file Daniel’s application for attorneys’ fees and expenses to be paid by AFP and Getty.  And AFP and Getty will then have to decide whether to appeal”

“Do I have any sense as to whether they will appeal? I don’t. They have fought us every step of the way. I hope, for Daniel’s sake, that after they make their trial motions and however they turn out, they’ll be prepared to move on, and I will encourage that.”

Hoffman then asked about Getty’s trial lawyer Marsha Paul’s opening address in which she stated, ‘He’s asking you to make him the best paid news photographer on the planet, ever.’ “Do you think that backfired?” asked Hoffman.

“She’s a very experienced, able lawyer, and you know, every time you open your mouth in court, you run the risk that it’s something that haunts you later,” Baio replied.

“Will Getty try to recover their losses from AFP?” was Hoffman’s next question.

“Yes Probably,” said Baio. Both Getty and AFP have insurance to cover their costs. “Except, I believe, their policy limits are seven million dollars, and they may very well have spent all of that on their defence, or on their prosecution, whatever you want to call it.”

Hoffman’s next question was: “Getty Images counsel, John Lapham, said, ‘It’s fair to say we’re disappointed,’ but he also said, ‘I think it’s disappointing it took three years to get to this point, but Morel had committed himself to achieving a certain degree of notoriety.’ Do you have any comment on that?”

“No,” said Baio. “Other than to notice that they haven’t said anything since.”

Infringers don’t report infringement cases

“There’s been very little coverage in the US. Do you know why?” asked David Hoffman.
 
“I don’t,” Baio replied. “There’s been speculation that it’s because the very people who would be covering it are people who may have miss-acquired Daniel’s work, and perhaps they are not as enthusiastic about photographers’ rights as others.”

“A lot of the US press, or networks, were defendants in this case,” said Baio. So whether that chills the reporting, I don’t know. But it is a fact that The Washington Post, CNN, ABC, CBS, they were all defendants, and that a number of other major publications got takedown notices. So whether that impacted them, I don’t know.”

“Interesting,” said Hoffman.

“Yeah,” said Baio.

“One final question,” said Hoffman. “Is there a message for photographers outside of the US? Are there are any international implications that you can think of that we should be looking out for?”

“Nope, that’s above my pay grade, sadly.” [Laughter]

Bad losers

On January 13th, 2014 came the unsurprising news that Getty Images and Agence France-Presse had asked a federal district court to undo the $1.2 million jury verdict against them for wilfully stealing eight of Daniel Morel’s images of the earthquake that devastated his country in 2010.

The two agencies, famed for their vigorous and sometimes vindictive protection of the copyright in their own work, describe the jury’s considered verdict as “a miscarriage of justice” and claim the infringement was “accidental”.

“They have fought us every step of the way”

Although the agencies published Daniel Morel’s photos without his permission, having taken them illegally from TwitPic, having knowingly misattributed them and having failed to remove them when asked, they still managed to keep a straight face while claiming that no reasonable jury could conclude either AFP or Getty had willfully breached copyright.

Despite having lost the case that Morel brought against them and having been forced into a series of embarrassing admissions over their lack of professionalism they are now asking the court to either declare the jury wrong to have found their infringement willful or to give the agencies a second bite of the apple with a different jury – or just, for no particular reason, to trim a cool million off the $1.2 million award. And then call it a day.


PDF Download: Daniel Morel’s Statement of Opposition to Motion filed by AFP and Getty Images, 24 January 2014


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