Copyright Infringement: risks and avoidance
26 January 2022
TDWG recently paid more than $2,000 to settle a case of alleged copyright infringement out of court. How did this happen? How can we prevent it from happening again?
This case began in 2014 when a colleague (hereafter "Presenter") needed an image to represent the concept of biodiversity. He found a nice image on the web -- a composite showing various plants and animals -- and copied that image into his presentation for that year’s TDWG conference. After the conference he uploaded his slides to the TDWG website. Seven years later a copyright holder’s agent searched the TDWG website and found two images that allegedly infringed the copyrights of their clients. The images were both elements in the composite the Presenter had used in his Powerpoint file. And note, the images in question appeared on only one of his nineteen slides, and each was only the size of a thumbnail; less than one half of one percent (0.5%) of the area on screen.
The rights-holder’s agent demanded that TDWG take down the images and pay more than $900 to settle the alleged infringements out of court. They threatened that a court case could cost TDWG many times the amount they demanded in settlement. TDWG took down the presentation file immediately, but consulted the Presenter as well as a legal expert to learn more about the potential infringement. The Presenter asserted that the use was academic and non-commercial (non-profit), and therefore permitted under “fair use.” The presentation had been given in Sweden and TDWG's web server is in Denmark, so the European copyright expert agreed that both uses were permitted under the corresponding jurisdictions. He advised that TDWG should simply communicate these facts to the complaining agent and ignore any subsequent correspondence. We received a few more demand letters, but did not respond, having asserted earlier that we considered the matter closed. After a gap of at least six months, we received another demand letter, but this time from a law firm based in the US, informing us that the demand was now almost $3,000 and they would take us to court if we did not pay this now larger “settlement offer.”
We informed this new adversary (attorney) that the uses were permitted in the jurisdictions where they occurred. He rejected that these facts made TDWG faultless; the images were copyrighted, used without license on our website, TDWG is incorporated in the US, and therefore we were liable for the infringement and would be found so in a US court. We then asked for help from a US attorney who was both a personal friend to one of us (Blum) and an expert in intellectual property law. We made a fairly thorough investigation of particulars in this case and the US law. We made another series of arguments as to why the infringement was negligible if not actually absent, but the opposing attorney again rejected our arguments, either without really addressing their substance or by having a different interpretation of how the law applied to the facts. This exchange finally made it apparent why copyright trolling is an effective money making enterprise.
In this situation, TDWG's best case scenario would be to emerge with zero expenses; TDWG has nothing to gain, only the prospect of losing between zero and tens of thousands of dollars. In court TDWG might well have won the basic question of infringement versus fair use, or been assessed only a nominal penalty having shown that the damage to the plaintiff was negligible. But simply getting the question before a judge or jury would have required an attorney to represent us, and that could have cost many times the amount to settle. The only way for TDWG to emerge without paying an attorney would be for the case to be ruled frivolous and the plaintiff ordered to pay TDWG’s attorney’s fees. That outcome was far from certain. The wiser choice was to settle out of court. While agreeing to settle rewards what we view as an abuse of the legal system (the cost or harm to TDWG exceeds any harm done to the copyright holders), settling closes the case without risking even greater loss. It also enables us to put the matter behind us and return to the work of TDWG.
Avoiding future exposure to charges of copyright infringement
TDWG can avoid additional cases of copyright infringement by complying with provisions in the Digital Millennium Copyright Act (DMCA), as described here. The DMCA creates a “safe harbor” for platform providers by sheltering them from liability when a user commits an infringement. To use the safe harbor, however, the platform provider must:
- designate and publish a contact to receive “take-down” notices when a copyright holder discovers that their property is being used without license;
- register that agent with the US Copyright Office (and renew that registration every three years); and
- publish a policy that bans repeat offenders from posting to the platform.
We intend to take these steps, but until they are done TDWG has taken down existing presentations and listed them only as available upon request from our archive.
A caution against general statements
In the case discussed above, the Presenter copied the image from a column published on “The Guardian” website. The photo credit on the image simply stated “Photograph: Guardian,” which was actually misleading. The composite image may have been created by the Guardian’s graphics department, but The Guardian did not own the rights to the individual images it contained; they were licensed only for the Guardian’s use and not purchased outright. The actual rights pertaining to the composite image were too complicated to list fully and could only be known through an inquiry.
Further paving the way for the Presenter’s misstep, The Guardian’s “Terms of Service” state:
"You may download and print extracts from the Guardian Content for your own personal and non-commercial use only, provided you maintain and abide by any author attribution, copyright or trademark notice or restriction in any material that you download or print."
The Presenter may have interpreted this to mean that using the image at an academic conference was “personal and non-commercial,” but when we actually inquired about the rights and TDWG’s use, The Guardian replied (in part):
"In any case, the composite in question appears to be largely comprised of stock imagery provided by our image agency partners whereby even if you had attempted to seek permission to use, GNM [Guardian News & Media] would likely not have had the right to authorise this use which could only have been permitted by those holding the rights to syndicate."
"Our open licence terms are listed here and permit some limited usage(s) free of charge as detailed. However, it appears from what you've described, TDWG's usage would fall outwith the permitted criteria."
Their assessment was that TDWG’s use (i.e., making that presentation accessible on the TDWG website) would fall outside their open licensing provisions.
So the lesson for TDWG, or any academic community, is that one should not permissively interpret the information found on a website about the images found therein and their reuse. While using an image in a presentation at an in-person conference might or might not be permitted, uploading that presentation to a website is a different use and requires a more specific and more conservative interpretation.
A general recommendation to presenters
To lead by example, the people who write and edit TDWG’s web pages are careful to ensure that any image on our website has been published under a permissive and royalty free license. We don't have the budget to license images and we can't expose TDWG to the risk of infringement. (Most of the images on our web pages have been taken from the “Unsplash” stock photo site, which is dedicated to freely usable images.)