Here is the scene. You are walking in Central Park. A group of tourists comes up to you and asks you to take their picture. They hand you their iPhone 14. Having just emerged from the pandemic, you hesitate … after all, you know that the typical phone is ten times dirtier than a toilet. What is the proper etiquette for handling the situation? Since your parents brought you up right, you accept the proffered phone and snap several shots of the tourists standing in front of the Bethesda Fountain. You hand back the phone, and they thank you and scamper off, oblivious that you (ever so discretely) are dousing yourself in Purell as soon they are out of sight.
The ubiquity of cellphones and an unquenchable thirst to document every aspect of life leads to frequent invitations to collaborate with others – even strangers – in the creation of copyrightable assets. What is the proper etiquette to handle the complex copyright issues that these scenarios present? As the photographer in the tourist example, you almost certainly own the copyright in the photos you just took (but see our discussion below about the protectability of iPhone snapshots). This means that the tourists’ use of the photos – including sending them to one another or posting them on social media – might infringe upon your exclusive rights under federal copyright law. Should you tell the tourists that you are happy to grant them an oral, non-exclusive royalty free license (or is that unnecessary because one arises by operation of law)? Should you impose on the tourists usage restrictions on what they can do with the photos (and, if you are so inclined, how do you accomplish that)? Should you send them a text or email granting them full ownership of the copyright (and would doing so satisfy the Copyright Act’s requirement that transfers of copyrights be in writing)? Or, do you do what may come most naturally: say “You’re welcome” and hope that they come away with a slightly better impression of New Yorkers?
The not-so-simple issue of who owns (or, as a matter of policy, who should own) the copyright in a photo taken under these circumstances – something that happens at least a zillion times each year - was front and center in a recent case brought in the Northern District of Illinois.
The Case: Vivek v. NYP Holdings, Inc.
Vivek Shah was an aspiring actor. Like many in that profession, he attended parties in Hollywood where he encountered, and managed to get his photo taken with, celebrities like Tom Cruise, Angelina Jolie and Mila Jovovich. (See some of the photos here.) Between 2008 and 2012, Shah uploaded many of these photos to Facebook and his IMDB page.
Acting is a brutal business, and the bit parts Shah managed to get weren’t enough to satisfy the hunger that burned inside him. So Shah turned to a life of crime, specifically extortion. Shah sent letters (each captioned as an “Extortion Notice”) to various bigwigs (including Groupon co-founder Eric Lefkofsky, NHL Buffalo Sabres’ owner Terry Pegula, and even Harvey Weinstein), demanding millions and threatening that that the recipient could “expect at least one person dead in the next year” if they didn’t pay him. In the end, however, Shaw was no more successful at crime than he was at acting. He was apprehended by the FBI, pleaded guilty to attempted extortion, and was sentenced to over seven years in prison.
Shah’s arrest and plea received a fair amount of press, and photos showing Shah aside various celebrities illustrated many of the articles, including those published by the defendant media companies. The defendants, apparently, scraped these photos from Facebook and IMDB and did not obtain permission from Shah (or anyone else) to publish them. After he was released from prison, Shah sued the defendants, alleging that they had infringed his copyrights by publishing these photographs without his consent. The defendants moved to dismiss the copyright claim.
Earlier this month, District Judge Sharon Johnson Coleman ruled in favor of the defendants and dismissed Shah’s copyright claim, finding that Shah had not properly alleged that he was the owner of the copyrights in the photos.
First, the court concluded that Shah had not alleged facts to support that he was the sole author of the photographs. Pursuant to § 201(a), initial ownership of a work vests in the “author or authors of the work.” Subject to certain exceptions (such as works created for hire), the “author” of a work is the person who fixes the work in a tangible medium of expression; for photographs, that would typically be the photographer who actually captures the image. Since Shah admitted in his complaint that he did not take the photograph – which is obvious since he appears in the photos and the photos are not “selfies” – the court concluded he could not be their sole author.
Second, the court found that Shah had not properly alleged facts to support that the photographs were joint works co-authored by Shah and the photographers. A “joint work” is defined in the Copyright Act as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” The authors of a joint work are co-owners of copyright in the work (17 U.S.C. § 201(a)), and each owner is free to exploit it on a non-exclusive basis, subject to a duty to account to the other owner(s) with respect to any revenue received. Here is how the court summarized Shah’s description (from his pro se complaint) of how the photos were captured:
“Shah maintains that he brought a phone or a camera to these events, having pre-selected many of the camera’s settings, such as shutter speed, white balance, ISO, metering type, and exposure value. Shah asserts that he would pose himself and a celebrity and hand his phone to a friend or bystander to take the photograph. He maintains that he was the sole owner of the camera, never gave creative control to the photographer, and immediately took the camera back into his possession after the photograph was taken. Shortly after the Hollywood events, he posted the photographs to his Facebook account and later uploaded some of the photos to his IMDb-Internet Movie Database (“IMDb”) page.”
The court acknowledged that “Shah’s allegations certainly demonstrate his intent to be an author,” including because he alleged that he “retained, and intended to retain, at all times, sole decision-making authority as to what went into the photos,” and that he “did not relinquish creative control to his friend or bystander.” However, the court found that Shah had failed to allege facts to support “any intent for both himself and the photographer to be joint authors” (emphasis added). In a tantalizing footnote, the court acknowledges that the current law may not have caught up to the reality of how cellphone cameras are used to document people’s lives:
“Shah’s claim raises an interesting question: who should hold copyright in a photograph when the photographer only takes the photo upon being asked? The law, with strict requirements for joint authorship, does not reflect the current circumstances surrounding cellphone photo etiquette. Nonetheless, Shah has not alleged authorship under current Seventh Circuit law and the Court dismisses his copyright infringement claim.”
Third, the court rejected Shah’s alternative argument that ownership of the copyright in the photographs was transferred to him by “operation of law” when the photographers handed him back his camera. While copyright ownership can be transferred “in whole or in part by any means of conveyance or by operation of law” (17 U.S.C. § 201(d)), the court was not convinced that “simply taking the camera back into his possession constitutes a transfer by operation of law.”
So, since Shah was not the sole author of the photos, a co-author of the photos, or a transferee of the copyright in the photos, the court dismissed the copyright claim.
Collaborative Photo Taking, Authorship and Ownership in the Real World
The scenario presented by this case, and in our tourist hypothetical, leads to a number of interesting legal issues that are worthy of further discussion. Here are a few:
1. Could the Photographs Be Joint Works? Judge Coleman concluded that, under current precedent in the Seventh Circuit, Shah failed to allege facts to support that he and the photographers had the requisite intent to create joint works. In the typical “do you mind taking our picture” scenario, that often may be the case. However, it is possible to imagine scenarios in which the photographer and subject collaborate in a much more meaningful way to create the photos, and where you will be able to discern a mutual intent that their “contributions be merged into inseparable or interdependent parts of a unitary whole.” And just maybe the law should be different (as Judge Coleman hinted in the footnote quoted above) and will evolve as standards of etiquette for cellphone picture taking emerge.
2. Should We Revisit the Copyrightability of Casual Cellphone Snapshots? It has long been accepted that photographs are entitled to full copyright protection. The Supreme Court reached this conclusion in 1884 in Burrow-Giles Lithographic Company v. Sarony, and subsequent cases have noted the creative decisions made by photographers in creating their art, including posing the subject, lighting and shade, angle of subject, selection of camera and film, use of filters and developing techniques, and evoking the detailed expressions of the subjects. (An excellent discussion of these factors is included in Judge Louis Kaplan’s 2005 decision in Mannion v. Coors Brewing Co.) Obviously, many or most of these factors are present when a professional photographer creates an image, especially if they use a sophisticated camera and/or developing tools. And, of course, there are truly beautiful, artistic photos taken with an iPhone. But in many “do you mind taking our photo” scenarios, the “photographers” do little more than click the button, without adjusting the phone’s settings, and without making material contributions to any creative choices. Maybe the picture takers will tell the subject to “smile” or “squeeze in closer so I can get you all into the frame,” but should that be enough to vest copyright ownership in them? (Isn’t that sort of like a music producer claiming copyright protection because he shouted “play louder” during the recording process?) In any event, it is worth keeping in mind that copyright protection for many of these photos will be on the thin side (see this post).
3. Could the Use of these Photographs Qualify as a Fair Use? If one of the tourists in our example were to post the photo on her Instagram page, would that qualify as a fair use? If you run through the statutory factors, the tourist would certainly have a colorable argument, since the use is non-commercial (factor 1), the photographs arguably are more factual than creative (factor 2), and there is no discernable market for the use of a personal photo of a non-famous person on social media (factor 4). The issue gets trickier if the tourist were to license the photo, without the consent of the photographer (and copyright owner), to a news organization to illustrate an article. Courts have struggled with the fair use analysis when media companies use photos to illustrate news stories, generally finding that the use was not fair unless the article commented on the photo itself (such as where the existence of the photo is itself the subject of the story). Regular readers of this blog know that we have written extensively about fair use (see this post, this post, and this post) and may feel (as we do) that it is not always easy to reconcile the outcomes of the courts’ decisions.
4. Is there an Implied License to Use the Photographs? There are strong arguments that a photographer who, as a courtesy, takes a subject’s photo on the subject’s phone grants an implied license to the subject to use the photo broadly. The type of conduct that gives rise to an implied license will vary based on circumstances (see this post and this one), but the question really boils down to whether the creator (photographer) and the recipient (subject and owner of the phone) intended that the subject would have free reign to copy and distribute the photos. If we are being honest, it is likely that neither party was thinking about the issue when the photo was taken. Had they given it any thought, surely the photographer would have understood that once she turned over the phone to a stranger whom she likely would never see again, the stranger would be free to exploit the photo broadly.
But that is the problem with implied licenses: the scope of the license (term, territory, media) is uncertain. It is not hard to imagine circumstances where the photographer and subject might have had different understandings about the scope of the implied license. Maybe a friend who uses your phone to photograph you and other friends engaged in debauchery at a private party would be fine if you emailed the photo to other attendees; she might not be happy, however, if you shared them with people outside the group or posted them on LinkedIn for the attendees’ employers to see. If you ask a friend who is a professional photographer to take a photo of your dog on your phone, she may have understood that you would post it on Instagram, but she may be less than thrilled if you were to license the photo to a pet food company to use in print ads. As these examples show, the parties’ mutual understanding (or lack of mutual understanding) could vary based on multiple factors, including the subject matter of the photo, the circumstances under which the photo was taken, and whether the photographer and subject are friends, family, business associates, acquaintances, or strangers.
None of this is intended to suggest that if you are approached by tourists in the park, you should discuss ownership of the photo, engage in negotiations over a possible license, or attempt to restrict their use of the memory you have helped them create of their time visiting New York City. It is clear, however, that cellphone camera technology and cellphone etiquette have the potential to create some thorny copyright issues.
Shah v. NYP Holdings, Inc., No. 21-cv-06148, 2023 WL 266511 (S.D.N.Y. Jan. 18, 2023)