Negotiate photograph rights in advance to avoid costly copyright violations later

Companies may assume that when they pay for a professional photograph, the photo may be used for any purpose — marketing, websites and annual reports. However, without carefully negotiating a license or an assignment, they may find that their rights are limited.

“Even sophisticated companies may run into trouble because they either overlook or don’t fully understand the legal implications of using photographs in connection with their businesses,” says Aaron Moss, partner and copyright expert who chairs Greenberg Glusker’s Litigation Department.
“Just because a company hires a photographer or owns a particular copy of a photo does not automatically mean that the company has the right to reproduce or distribute copies of that photograph.”

Smart Business spoke with Moss about the proper uses of copyrighted images.

When a company hires a photographer for marketing materials or other purposes, who owns the photos?

In the absence of any written agreement, the photographer usually owns the copyright in the photos. If the company wants to obtain the right to use or reuse those photos in whatever ways it wants, it should get an assignment or license at the outset of the engagement that spells that out.

The photographer may ask for contractual limitations as to how the images can be used. But to have the most flexibility, the business will want to negotiate an assignment.

If this is not spelled out, what problems could arise?

Companies that hire photographers don’t always know how the resulting photos might be useful in the future. Unless the company acquires the copyright or gets a broad license in advance, it might need to go back to the photographer later on to seek permission and pay compensation for another use.

For example, a photographer may take some pictures based on the understanding that they will be used for the company’s website. The parties may never discuss what happens if the business wants to use them in marketing brochures. If this happens later, the photographer may feel that his or her rights have been violated and may assert an infringement claim against the company.

What else is beneficial to negotiate when first hiring a photographer?

If a company can’t negotiate an outright assignment, the parties should at least come to an agreement as to the type, extent and duration of the use in advance. Rights acquired at the outset of the engagement, before any disputes arise, are going to be less expensive than if they are obtained after an infringement claim is asserted. In negotiating a retroactive license, the photographer will have more leverage and will usually be able to extract a higher price.

What are some misconceptions about using photographs and other images on a company’s website?

Companies often obtain these photos from stock photo agencies. There are usually restrictions in those licenses, either as to the extent or duration of the use, or as to whether the license to use the photos includes the right to use the likenesses of any models appearing in the photos. Using photos for commercial purposes without permission could implicate the models’ right of publicity, even if the company has a copyright license.

I just handled a matter in which the photo agency only had the right to license an image for editorial uses, but the licensing company thought it was getting commercial rights. If the photo agency hasn’t actually obtained the ability to license the model’s likeness, both the agency and the company using the photos may be held liable.

Another common misconception is that a company engaging a photographer owns the copyright in a photograph as a ‘work made for hire.’ Unless the photographer is the company’s employee, the company will need a written assignment, signed by the photographer, in order to acquire rights in the photo.

Copyright is a much more complicated subject than some companies realize. If a business does not have experience in this area, it should consult with legal counsel before beginning a new campaign or hiring a photographer to ensure there aren’t any unpleasant surprises later. ●

Insights Legal Affairs is brought to you by Greenberg Glusker