Get it in Writing!

Intellectual property litigation is an extremely tough nut to crack.  If ever you consult an attorney for a copyright infringement suit and he tells you that he’ll definitely win the case for you, kindly thank him, pack your bags, walk out, rip his business card up and run far far away.  IP infringement suits are, at best, a coin flip in federal court.  There are a staggering amount of procedural and factual hurdles involved with successfully litigating an IP claim, often coming down to who has the better paper trail.  Florida photographer Todd Latimer is presently learning this the hard way, as his suit against motorcycle manufacturer Kawasaki and magazine publisher Hachette works its way from the U.S. District Court for the Middle District of Florida to the U.S. Court of Appeals for the Eleventh Circuit and back again.

As Photo District News’s PDNPulse blog expains, the case stems from a handshake agreement between Latimer and a Florida motorcycle shop named Roaring Toyz.  The  shop was tasked with customizing two pre-release Kawasaki motorcycles for debut at an upcoming trade show.  Kawasaki requested photos of the bikes for a pre-show press conference.  When Kawasaki expressed its discontent with digicam snaps taken by shop employees, the shop called Latimer for a last minute gig shooting the bikes.  Latimer got the shoot done overnight. The photos were shipped to Vegas and distributed in the press release’s press packet and subsequently ended up in an issue of Hachette’s Cycle World magazine.  Latimer sued, claiming that the shop had commissioned him for a poster that Kawasaki would display at the trade show, and not for magazine or press pack use.  Roaring Toyz, of course, says otherwise.

Here’s where the fun begins.  Since no written contract existed and the few emails that exist were vague at best, the District Court threw out Latimer’s claims on the grounds that he had given an implied license to Kawasaki and that Hachette’s images, in light of the license, were fair use.

What?  Seriously?  Really?

Latimer never dealt with Kawasaki directly, so to award Kawasaki a blanket license for use and further licensing of Latimer’s photos based on a handshake with a third party is kind of absurd.  The Eleventh Circuit agreed, holding that while a license was granted to Kawasaki, a jury trial is required to discern just what scope that license entailed.  As for fair use, the District Court awarded summary judgment without Hachette even raising a fair use defense.  Fair use is an extremely complicated affirmative defense on which the burden of proof rests with the party claiming the defense.  Generally, if the defense isn’t raised, it’s considered waived.  Apparently not in Florida though.  The Eleventh Circuit remanded, however.

The bottom line is, get your agreements in writing.  While it’s most prudent to go through the motions and see your attorney and get a proper contract written up, a simple email confirming the terms of your freelance gig can save you from a world of trouble down the line.  Misunderstandings are more common than any of us want to admit, and it doesn’t take a ton of work to cover your rear end in the grand scheme.