Written by Managing Partner Clayton Glenister and Lawyer Ben Waldeck
When you advertise products online for a living, the photos you use are crucial to distinguish yourself from the competition. What do you do when someone steals your photos and uses them on another website or social media account? Please read on to learn about what business owners can do if someone copies those photos and uses them online without authorisation.
Do You Own The Photos?: Ownership Or License?
Firstly, business owners will need to determine whether they own the photos. The general rule is that the person who took the photo owns the copyright in them. However, if a full-time employee took the photos, then the employer will likely own them.
If a business owner booked a photographer, who is not an employee of the business, to take the photos they will need to review the agreement that was entered with the photographer to determine whether copyright in the photos was assigned to their business, or whether it provides a mere license to use those photos.
Your Rights Under A License
If you do not have a written agreement with your photographer, then you will not own the photos. Under the Copyright Act 1968 (Cth) all assignments in copyright must be in writing. If you don’t have ownership, it is likely that you have some form of license to use the photos. If you are unsure, again, you will need to refer to the agreement with the photographer. An experienced intellectual property lawyer can help you understand your rights when dealing with photographers.
The good news is that even with an exclusive rights license, you have the same rights to take action as the owner of the photographs under the Copyright Act.
Importantly, however, if you purchase rights to photographs from a stock photography website that sells the same photos to many, then you do not have the exclusive, nor ownership rights to take action for others using them illegally.
Obtaining Ownership Rights From A Photographer
If you want total ownership of the photos and the photographer has not provided an assignment, you may talk to the photographer to see if they are open to assigning their rights in copyright to you. If the photographer is agreeable, they may require further payment for the assignment. In which case you will need a written assignment in the form of a contract.
If, on the other hand, the photographer agrees to assign ownership at no charge, then you will require a deed of assignment. Unlike contracts, deeds are used where there is no money changing hands.
Defences To Copyright – When You Cannot Take Action
Once you have determined your rights in relation to the photographs, whether that be through exclusive license or ownership, you must determine whether any defences to copyright are available to the user, which could prevent you from taking action against them.
Defences to Copyright
The following defences are known as ‘fair dealing’ defences, which mean that use of another’s copyright will not be breached if the person using the photos is using them for:
- Parody or satire
- Criticism or review
- News reporting
- Provisional advice and judicial proceeding
- Access by a person with a disability
Taking Action – The First Step
Once business owners are satisfied that they either have an exclusive license or ownership of the photos, and the unauthorised publisher does not have a defence under the Copyright Act to use them, the next step is to demand that the unauthorised publisher cease to use the photographs.
Such demands should be sent by way of a cease-and-desist letter, which puts the other side on notice that they are breaching copyright. The letter should specify how they are breaching your copyright and must contain a demand to remove the images by a specific time and date. It should also indicate what will occur if they fail to comply with the demand.
A well-written letter from a lawyer is usually sufficient to deter the offending party from using photographs to which the infringing party has no right to use. However, a cease and desist letter may also serve as an important step before taking legal action in the courts.
The Federal Court Rules require that plaintiffs, prior to taking legal action, show that they have taken genuine steps to resolve the dispute. Such steps must be described and filed in a Genuine Steps statement. The cease and desist letter may be a genuine attempt to resolve the dispute.
What Happens When The Other Person Ignores Your Cease and Desist Letter
If the infringing party has not complied with the demands in the cease and desist letter, then the next step is to commence legal proceedings. A lawyer experienced in intellectual property will help you understand the legal proceedings for a copyright matter and how to secure your best chance at getting the result you need.
Here at MBA Lawyers, we are experienced in all facets of legal issues with respect to copyright. Talk to our team today by calling 07 5539 9688 or please leave an enquiry.