Demand Letters from Copyright Trolls

Not all may be as it first appears

Demand Letters from Copyright Trolls

client comes to you with a demand letter that alleges infringement of copyright. Your client has reproduced an image, in print or online, and the copyright owner is threatening legal action if your client does not pay a large fee within 14 days. Your client is likely the recipient of an infringement allegation from a “copyright troll.” The phrase describes the practice of some stock agencies (or image libraries) of scouring the Internet for any unauthorized use of “their” images and then using the threat of litigation to generate revenue. 

The claim that copyright has been infringed may be valid. Your client may have overlooked copyright or be unaware of the consequences of “helping themselves” to an online image that is not free for use. Many images available online are free for any use, and these are sometimes labelled “public domain” or “royalty free.” However, some stock agency websites are downright confusing, labelling images as “royalty free” when that turns out not to mean “free” at all. It seems that stock agencies take advantage of the uncertainty as to whether a downloadable image is free or not.

Some stock agencies seek out public domain images (which are free), and lay claim to these by posting the images on their own websites, “watermarked” with their brand. They then charge the public for access and use, and pursue for infringement hapless individuals and organizations who use their images without paying a “licence” fee. 

In one US case, Getty Images pursued American photographer Carol Highsmith for copyright infringement when she used one of her own photos on her website. She had donated the image to the Library of Congress and placed it in the public domain. That’s where Getty found it before they added it to their own website, watermarked “Getty Images,” and despatched their web crawlers to troll for infringers. Getty backed down on the infringement against Ms. Highsmith, but maintain their right to sell public domain images to the public. The case illustrates that they were willing to claim fees for public domain images that they had not even indirectly supplied to the user.

A copyright troll is not above contriving a basis for standing. To sue for infringement in Canada, the stock agency must either own the Canadian copyright in the work or hold an exclusive licence to use it from the creator of the image (section 13 of the Copyright Act). In Masterfile Corp. v. World Internett Corp., 2001 FCT 1416, the Toronto-based stock agency, Masterfile, sought summary judgment over copyright in agency photographs misused by a professional website designer. Masterfile argued that it benefited from “deemed” copyright assignments by the agency’s photographers. However, the court found that Masterfile was only an exclusive agent of the photographer, not the exclusive licensee of his copyright, and that the deemed assignments routinely used by Masterfile were not valid under Canadian law. This setback has not deterred Masterfile from initiating more than 50 copyright and trademark actions, but this case remains the only action to have proceeded.

A careful lawyer will treat a demand letter with healthy skepticism; faced with such a letter, the stock agency should always be asked to demonstrate title to copyright in the image complained of. This may be enough to end the matter. If a payment must be made, be aware that stock agencies charge an inflated retroactive licence fee for alleged infringement, and the fee initially demanded should always be negotiated.