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(photo courtesy of Witthaya Phonsawat and freedigitalphotos.net)

We love idioms. While usually of few words (and often including farm animals), they can be quite thought provoking. For example, here in the U.S., we say that “you don’t bring a knife to a gun fight.”  Contrary to what many non-Americans might believe, this idiom isn’t literally about knives and guns. Rather, it’s a metaphor admonishing us that being prepared is relative- it all depends upon the nature of your adversary’s strengths.

So, it was a bit of a shock to some that plaintiff, Metropolitan Regional Information Systems (“Metro”)- armed only with its click through terms-of-use (“TOU”) agreement to show copyright ownership- won a big copyright fight it picked with competitor American Home Realty Network (Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591 (4th Cir. 2013).  As plaintiff, Metro was required to show that it owned the copyrights at issue, or its case would be dismissed. And that’s where the website’s click-through TOU agreement comes into play. And it’s why the case has so many photographers, content providers and legal commentators so concerned (see e.g. comments here and article here). So much so, that the case continues to come up in panic-stricken articles, comments and photographer forums, even though it was decided a year ago.

As we’ll see, though, no one needs to panic- not just yet anyway. While the Metropolitan case should make us all take click-through TOU agreements more seriously, the case is limited in that it addressed a particular set of facts. To understand the decision’s limits, let’s first take a look at some background.

The Metropolitan Regional Information Systems Case

Metro and American are competitors in the real estate listing business. While their respective business models differ somewhat, each provides a website with real estate listings directed to home buyers, real estate agents and brokers.  Metro’s business model includes a subscription service for real estate agents. Subscribers upload their own real estate listings to Metro’s online database and agree to assign to Metro the copyrights in each photograph in those listings. In exchange, subscribers get access to all of the real estate listings in Metro’s database. The copyright assignment is included in Metro’s click-through TOU agreement that subscribers need to click on before signing up and creating their accounts.

Unlike Metro, American’s website is not a subscription service. American’s website, NeighborCity.com, just lists other real estate company’s listings. In fact, copying was not an issue in the case. American did not contest Metro’s allegation that it had copied the photographs at issue. Rather, American contested Metro’s alleged ownership of those photographs, alleging that the TOU agreement wasn’t sufficient to transfer ownership to Metro.

To untangle the ownership issue, the Court first looked to provisions of the Copyright Act that address assignments. Those provisions (e.g. Section 204) dictate that copyright assignments must: 1) be in writing and 2) signed by the owner (or his agent) of the right conveyed. After noting that Metro’s TOU satisfied the “in writing” requirement, the Court went on to address American’s contention that Metro’s subscribers had not actually “signed” the TOU.

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(photo courtesy of Patrisyu and freedigitalphotos.net)

The Court rejected American’s argument based on the “Electronic Signature in Global and National Commerce Act, also know as the “E-sign Act” (15 U.S.C. 7001). The 2000 E-sign Act allows digital signatures, in most contexts, to have the same legal effect as pen and ink signatures. The Court thus held that the copyright assignments embedded in Metro’s TOU complied with the Copyright Act and that, until proven otherwise, had transferred ownership to Metro. As such, Metro won the case because it presented proof that it owned the copyrights at issue and because American did not dispute that it had copied the subject of those copyrights.

Why Photographers and Content Providers Shouldn’t Panic-                          Not Just Yet, Anyway.

The Court’s reasoning on the signature issue, while certainly a wake-up call, should not be taken out of context. Importantly, the Court’s reasoning was more of an aside after noting that Metro’s subscribers were not disputing the copyright assignments to Metro. In other words, the Court based its decision on the fact that American, as a third party, wasn’t entitled to dispute the copyright assignments, because only Metro’s subscribers had that right. Moreover, the Court hadn’t actually addressed the validity of Metro’s alleged agreement with its subscribers. It only addressed whether the assignment complied with the requirements of the Copyright Act, i.e. whether it was in writing and signed.

Legal commentator’s and the photography community’s concerns about the decision are justified, though, to some extent. For example, the decision did not clearly distinguish between analyzing the validity of the subscriber agreement and analyzing the assignment for compliance with the Copyright Act. This was compounded by the Court insisting that a “transfer” had in fact occurred when it had not actually addressed whether the subscribers and Metro had reached a valid agreement under principles of contract law.

While we’ll be following the fallout from Metropolitan, you might be asking what you can do now to protect yourself, your photographs and your content. While it’s a very unpopular suggestion, actually reading what you are signing is key. Remember, if anything, the Metropolitan case tells us that courts are likely to construe your “click-through” as a signature having the same effect as if you’d signed with a pen on paper.

So, print out those terms-of-use and pull out that highlighter (or electronically save a copy to your computer) and read the agreement before clicking. If the job looks too daunting, read one page at a time and take a break before moving on. Having an attorney read the agreement for you, or to help clarify provisions that you don’t understand, is ideal, particularly if you’re a photographer and you’re making money from your photos.

If you’re a photographer or content provider, it’s also a good idea to specifically search for any red-flag worthy keywords in the terms-of-use. These could be any words that indicate or suggest that your “click” on the terms-of-use signifies assent to license or assign your content or photographs to the website. For example, in the Metropolitan case, the terms-of-use included the following (emphasis ours):

By submitting an image, you hereby irrevocably assign (and agree to assign) to MRIS, free and clear of any restrictions or encumbrances, all of your rights, title and interest in and to the image submitted.  This assignment includes, without limitation all world-wide copyrights in and to the image…

And if there’s something in the agreement that concerns you, speak up!  Back in 2012, Instagram® users were not happy with Instagram’s proposed changes to its terms-of-service. Those changes would have allowed Instagram® to display its users’ likenesses and photos in advertisements without compensating the users. Instagram users protested the changes and, ultimately, Instagram® dropped the troublesome provisions. Along these lines, it’s a good idea to keep in touch with user groups and forums for the particular website, platform or service provider that you’re using, where you’re likely to get a heads-up on any problematic changes.

Are you concerned about your likeness, photographs or other  online content? Worse yet, were you one of the unlucky people who discovered that their photo was used in an online advertisement? (Hopefully it wasn’t for one of those “embarrassing” advertisements…) Write us and tell us about your experience and what action, if any, you took to get your identity and/or your content back.

This post is intended to convey general information only and should not be construed as a legal opinion or legal advice.  We disclaim liability for any errors or omissions and readers should not take any action that relies upon the information contained herein. Readers should consult their own attorney concerning their own situation and  any specific legal questions. The writing herein does not establish any form of attorney-client relationship with us.

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