A decision in a recent copyright infringement case in the Northern District of California shows that cries of fair use may fall on deaf ears if there is no discernable transformative use to point to, and demonstrates the importance of a well-written web developer agreement containing a warranties and indemnification clause.
In the 8-page summary judgment opinion in Erickson Productions, Inc. v Kast the court was unpersuaded by the defendant’s statements that he did not like the photos and never intended for them to be used in the final version of his website. No evidence was presented suggesting that the use was transformative or for the purpose of fostering creative expression, and thus the use was determined to be largely commercial in nature. In ruling for the plaintiff the court also found the other fair use factors decidedly against the defendant, particularly in the use’s effect on the market for the photograph.
Left out of the opinion was any talk of the damages being sought. Presumably, the photo had a registered copyright because the plaintiff brought suit, but it is unknown from the opinion whether the registration met the requirements for statutory damages. The license fee charged by the plaintiff for the photo was discussed, but given that it was under $300, it is highly unlikely the case would have been brought if only $300 was at stake.
The case is instructive for a few reasons. First, if defendants have any hope of being successful in asserting fair use, it is advisable to present evidence of some transformative use. Second, photographers need to protect their works, because without a copyright registration (preferably filed within three months after first publication) they cannot enforce their copyright in court.
Finally, website owners need to have airtight warranties and indemnification clauses in their agreements with web developers. In the Erickson case, the developer used an unlicensed photo, but the website owner was left holding the bag. Hopefully the owner had such an agreement and will be indemnified by the developer for the infringement. This can be extremely important where the owner, like the defendant in the Erickson case, is a sole proprietor and thus exposed to personal liability in a civil suit.