Guide Through the Legal Jungle

Understanding Why the Korean Memorial Sculptor, Frank Gaylord, Is Getting $685,000 from U.S.P.S. Some Facts Missed by Media Coverage.

There has been much media coverage about the U.S. Postal Service being ordered to pay $685,000 to Frank Gaylord after using a picture of Gaylord’s Washington, D.C. Korean Memorial sculpture on a commemorative stamp. In 2010, I did a three-part blog posting about the Gaylord case  so I wanted to highlight a few facts that most of the current media coverage hasn’t emphasized:

Gaylord’s Win Came in 2010. Gaylord didn’t win the copyright infringement case just last week. He actually “won” on February 25, 2010, when the U.S. Court of Appeals for the Federal Circuit ruled that the United States was liable for infringing Gaylord’s copyright in the sculptor. Gaylord v. U.S., 595 F.3d 1364 (2010). It has taken until September 2013 for the court system to arrive at the $685,000 damage award.

Lawsuit Caused by an Avoidable U.S. Contract Mistake. The United States hired Cooper-Lecky Architects, P.C. (Cooper-Lecky) as the primary contractor for the Korean Memorial. Cooper-Lecky then hired Gaylord as the sculptor. Cooper-Lecky did not properly acquire all of Gaylord’s rights in the sculpture. So even though Cooper-Lecky granted the government all the rights Cooper-Lecky held in the Memorial, those transferred rights did not include Gaylord’s work on the column sculpture. You cannot grant rights you don’t have. That’s why the U.S. found itself in this copyright infringement lawsuit with Gaylord.

Stamp Yielded $17 Million for the U.S.P.S. Before retiring the stamp in March, 2005, the U.S. Postal Service received over $17 million from the sale of nearly 48 million of the Korean War Veterans Memorial stamps. The $5.4 million figure reported in much of the media is from the sales of stamps to collectors who did not use the stamps to send mail.

Why Sculpture on Stamp Was Not Fair Use. The U.S. Postal Service’s issuance of a Korean War Veterans Memorial stamp was not a fair use because, according to the Court of Appeals, the Postal Service’s use was a commercial, non-transformative depiction of  the sculpture, which is an expressive and creative work entitled to a high level of copyright protection.

U.S. Lost Sculpture Co-Authorship Claim. During the lawsuit, the U.S. government claimed to be a co-author of Gaylord’s sculpture. The Court of Appeals said “No!”. Instead, Gaylord is the sole author and the U.S. government only provided Gaylord with some direction and ideas which do not qualify as independent copyrightable contributions eligible for co-authorship status.

How Not to Use Stock Images. Lessons from Getty Image - HIV Ad Lawsuit.

Stock Images Are Great! – Usually

I often recommend to my clients that they use stock images and stock footage as a means to reduce the licensing headaches, legal risks, and costs associated with using someone else’s material. But there are definitely right ways and wrong ways to handle stock materials. This situation with Getty Image illustrates many of the wrong ways.

HIV Ad Results in Lawsuit against Getty Images

In April 2013, an ad featuring a picture of Avril Nolan and advocating rights for people who are HIV-positive appeared in a New York newspaper. The quarter-page color ad, with the words “I am positive (+),” and, “I have rights” printed next to Nolan’s picture, implied that Nolan is HIV positive. She is not. You can see the ad in the New York Post article.

The New York Division of Human Rights, which placed the ad, obtained Nolan’s picture from Getty Images. Getty Images obtained the picture from photographer Jena Cumbo, described as an acquaintance of Nolan, who took the picture.

Avril Nolan has filed a lawsuit against stock image company, Getty Images. The New York Post article suggests that a lawsuit against the New York Division of Human Rights may also be forthcoming.

Stock Image Mistakes Made by Photographer, Licensee, and Stock Image Company

Let's assume, just for the purpose of this blog posting. that all the facts alleged in Nolan’s complaint are true. That means all the parties in the distribution chain resulting in the appearance of Nolan’s image in this ad made mistakes:

The Photographer. Nolan claimed she never signed a release for the picture taken by Cumbo and Cumbo’s interview with the New York Post doesn’t contradict that assertion. When selling images of recognizable people to a stock image house, make sure you have a release.

New York Division of Human Rights. Even if Nolan did sign a release for her picture, the release she signed probably doesn’t cover use in this particular ad. Releases signed by people whose images wind up in stock image libraries often do not cover a use dealing with sensitive issues – such as the HIV virus and AIDS. Before using anyone’s image in this particular ad, the NY Division of Human Rights should have determined the existence of a release and then either obtained additional permissions from the person and/or used a disclaimer with the image.

Getty Images. The license granted by the stock house frequently includes only rights related to the copyright of the image and leaves the licensee on its own to clear any additional rights triggered by use of the image (e.g., privacy, publicity, defamation). Nevertheless, when licensing images of recognizable people for use in commercial advertisements, it’s definitely in the direct interest of the stock house to verify the existence of a personal release or to make sure the licensee understands the need to obtain those rights on its own.