|August 13, 2012|
Previously published on Summer 2012
To determine whether a photograph published before 1978 is still protected by copyright law today, it is necessary to establish, in effect, a copyright chain of title, beginning with first publication, and then examine the sufficiency of copyright compliance each time the photograph was re-published with the authority of the photographer. This article describes how iconic photographs were commonly first published without any copyright notice affixed prior to 1978, and sets forth the arguments that can be made to preserve their copyright protection despite such lack of notice.
Before it became industrialized, commercialized, and digitized, rock ‘n’ roll was a rebellion. Like all cultural rebellions, the rock ‘n’ roll rebellion was led by artists such as poets and musicians, and for the first time a new brand of artist was created as well, the rock ‘n’ roll photographer. Photographers like Jim Marshall, Baron Wolman, Ethan Russell, and Barry Feinstein traveled with, lived with, and even partied with their subjects, creating a chronicle of iconic images that still resonate today.
Like all rebels as well, these photographers did not consider themselves subject to the prevailing social and legal norms. They were simply living in their time, earning what money they could by shooting photos and selling them to whomever was willing to pay enough to get them through that day, that week, or that month. Little thought was given to ensuring that they could earn a living from their art in the next year, let alone the next decade. Thus, although the copyright laws are intended to promote the arts and sciences by granting authors the exclusive rights to their works, this generation of authors paid little attention to legal niceties, thereby allowing others to profit from their works or, in some cases, losing their legal rights altogether, as their iconic works slipped through the cracks of copyright protection and fell into the public domain.
Because the iconic photographs of rock ‘n’ roll from these early photographers have been copied so many times, these images now appear almost everywhere without a copyright notice affixed. While lack of a copyright notice does not present great difficulty under the current version of the Copyright Act, the creation and publication of some of the most iconic images of rock ‘n’ roll did not occur during today’s more lenient copyright regime. Rather, these images were created and published in the late 1960’s and early 1970’s, before passage of the Copyright Act of 1976, which did not become effective until January 1, 1978. Thus, any legal questions concerning the copyrights to these iconic photos are governed by the Copyright Act of 1909, which was not nearly so forgiving to authors who failed to comply with its dictates for securing copyright protection.
The Copyright Act of 1909 - Protects Publication with a Copyright Notice Affixed
The Copyright Act of 1909 was the first significant amendment to the original Copyright Act and, like the Copyright Act of 1976, it was intended to provide greater protections to authors by allowing them to more easily secure copyright protection. Although state common law provided some copyright protection, federal statutory protection for published works was only available through compliance with the 1909 Act.
The two critical steps required to achieve statutory copyright protection under the 1909 Act were: (1) the publication of the work; and (2) with a copyright notice affixed. The 1909 Act further required that the notice be in the name of the proprietor or author claiming ownership of the copyright and affixed to the work. The 1909 Act required strict compliance with its copyright notice provisions. Publication without proper notice “automatically sent a work into the public domain.” Once a work fell into the public domain, it was not subject to copyright protection. Therefore, compliance with the 1909 Copyright Act was critical because photographers would forfeit their copyright to published works if they failed to comply with the notice provisions.
Publication of Photographs in Periodicals - Individual Copyright Protection for the Artist?
Many of the iconic rock ‘n’ roll photographs of the 50’s, 60’s and 70’s were first published in magazines or newspapers such as the Village Voice, Rolling Stone, and even Time or Life magazine. Although some of these photos were taken by the photographers while on assignment as works for hire, most were just either sold, licensed, or assigned by the photographer to the magazine for publication. Many times, records of these transactions are no longer available, or consist of merely an invoice, showing payment for use. Moreover, when the photographs were published, the magazine would not affix a copyright notice to each photograph in the name of the photographer as was required by the 1909 Act. Instead, the magazine would have one general copyright notice that covered the magazine and all of its contents, which the publisher then registered as a collective or composite work.
Under the 1909 Act, composite copyrights protected the component parts of a periodical. Section 3 of the 1909 Act provided:
The copyright provided by this act shall protect all the copyrightable component parts of the work copyrighted, and all matter therein in which copyright is already subsisting, but without extending the duration or scope of such copyright. The copyright upon composite works or periodicals shall give to the proprietor thereof all the rights in respect thereto which he would have if each part were individually copyrighted under this act.
As is evident from the text of Section 3, however, the copyright protection provided was to the “proprietor”, i.e., the publisher of the periodical, and not to the photographer whose work was published. Therefore, a critical legal issue that arose under the 1909 Act was whether the copyright protection afforded the proprietor of a composite work provided copyright protection to the authors who contributed their individual works as well. If so, then the individual work was still subject to copyright protection. If not, then the individual work had been published without proper copyright notice and was now in the public domain.
Early case law began to establish the contours of the issue. In Mail & Express Co. v. Life Pub. Co., the court determined that some transfer of rights from the author to the publisher must have taken place in order for copyright protection to subsist in the publisher. And, at the other end of the extreme, in McDaniel v. Friedman, the court held that the author of works that were contributed to a collective work could not sue for copyright infringement, although the publisher presumably could. Finally, in Kaplan v. Fox Film Corp., the court held that, if the publisher had a copyright over the component part of a composite work, then the publisher may make a “valid transfer of copyright on one picture in the periodical, keeping for himself the copyright on all the other contents of the periodical.” Thus, the good news was that the 1909 Act did allow for the transfer of one work from a collective work without the loss of copyright protection. The bad news was that it was still unclear whether the copyright of the collective work protected the individual contributions at all.
Doctrine of Indivisibility - Negative Effect on Contributing Photographers
The issue of whether a general copyright notice for a periodical was sufficient to protect an individual author’s copyright interest in a contributed work was further complicated by the doctrine of indivisibility. This judicially created doctrine established the proposition that a copyright interest could not be divided into sub-interests. Whatever interest in the individual work the proprietor held was the only interest that could be enforced or assigned back to the author or a third party; if the proprietor did not hold the entire copyright interest, then its registration was not valid as to the individual work because a mere licensee was not entitled to copyright protection under the 1909 Act. This meant that if a photographer merely licensed his work to the publisher of a collective work, then the publisher’s general copyright notice was not valid as to the individual work because the publisher did not own the entire copyright interest for purposes of registration.
The doctrine of indivisibility wreaked havoc for photographers who licensed their photos to periodicals for first publication under the 1909 Act. Unless it could be shown that all rights to the photo were either sold or assigned to the publisher, then the publisher’s general copyright registration for the periodical did not cover the contributed photograph. However, if the photographer sold or assigned all of his interest, then he was not entitled to enforce the copyright, or to license it to any other party for use. In either case, photographers lost all their rights in the work when it was first published in a periodical.
Second Circuit Rescues the Individual Contributor’s Copyright Interest
Recognizing the inherent unfairness and absurd complexities created by the doctrine of indivisibility when applied to individual works contributed to a collective work, especially periodicals, the Second Circuit completely rewrote the indivisibility doctrine in Goodis v. United Artists Television, Inc. In Goodis, an author had written a book and arranged for its first publication as a serial in The Saturday Evening Post, to be followed later in hardcover. The author also sold the movie rights. After publication the book was turned into the highly successful television series, The Fugitive. The author sued the television producer contending that he had not licensed the television rights to the producer. The producer defended by asserting that the author’s work was in the public domain because it had been first published in The Saturday Evening Post under the Post’s general copyright notice and not under the name of the author, and that the general copyright registration of the Post could not protect the author because he had only licensed his story to the Post for serialization.
The Goodis court rejected the producer’s public domain defense and sounded a death knell to the doctrine of indivisibility as applied to contributions to collective works. Recognizing that the doctrine had been created by the judiciary to protect defendants from a multiplicity of infringement actions by plaintiffs claiming to own different interests in a single copyright, the court reasoned that the doctrine served no purpose when applied to the situation in which individual works are licensed to a periodical for publication. Therefore, the court determined that in such cases “where a magazine has purchased the right of first publication under circumstances which show that the author has no intention to donate his work to the public, copyright notice in the magazine’s name is sufficient to obtain a valid copyright on behalf of the beneficial owner, the author or proprietor.”
Photographer’s Intent - Donation to Public, or Only Right to Publish?
The Goodis decision is as good as it gets for rock ‘n’ roll photographers who first published their work in magazines or other periodicals before 1978. Under Goodis, the fact that the copyright notice was not in the name of the author or affixed to the photograph itself no longer meant an automatic forfeiture of copyright protection. Instead, the court will focus on the intention of the photographer at the time the right to publication was given. If the court finds that the photographer intended to donate his work to the public through publication, then the photograph is no longer subject to copyright protection. If, however, the court determines that the photographer did not intend to donate his work to the public, but merely transfer the right to publication, then the general copyright notice of the periodical suffices to protect the photographer’s own copyright interest, which may still be enforced.
Therefore, the critical first step that must be taken in seeking to protect the copyright of an iconic photograph published before 1978 is to determine when it was first published and the circumstances of publication. If the photograph was first published in a periodical, then the general copyright notice of the periodical serves to protect the photographer’s copyright interest, so long as it can be shown that the photographer did not intend to donate the photo to the public. If the photographer licensed the photo to other periodicals after first publication, then the same analysis applies. Such subsequent licensing also constitutes concrete evidence that the photographer did not mean to donate his photograph to the public in the first instance. Finally, to assure that the photographer can enforce his copyright interest against others, an assignment of rights from the first publisher should also be made if possible. Most periodicals are more than willing to give such an assignment in order to assist the photographer in protecting his rights.
Release of Publicity Stills - Limited Publication, or Divestiture of Copyright Interest?
In addition to licensing their photographs to magazines for publication, rock ‘n’ roll photographers were also often hired by studios to take photographs of musicians for publicity stills. These photographs were then sent to radio stations and promoters for promotional purposes. When they were sent, they generally did not include any copyright notice on the photo in the name of the photographer as required by the 1909 Act. Thus, even if the photographer had an agreement with the studio that was designed to preserve the photographer’s copyright interest, publication of the photographs by the studio without copyright notice would arguably cause a forfeiture of any copyright interest. Many of these publicity stills have now found their way onto internet photograph archives, which offer them for sale without compensation to the photographer under the assumption that the photographs are in the public domain.
However, whether these photographs are in the public domain by virtue of their release by a recording company without copyright notice for publicity purposes is debatable. The answer depends on whether the release of the photograph constituted a “publication” under the 1909 Act. Although publication was the critical first step in obtaining statutory copyright protection under the 1909 Act, the Act itself did not define the term “publication.” Thus, it was left to the courts to determine what qualified as publication under the 1909 Act, such that copyright protection would be forfeited for lack of compliance.
Not all publications were deemed to constitute a divesting publication within the meaning of the 1909 Act. Indeed, some publications, called “limited publications,” were determined not to be a publication under the 1909 Act at all. Thus, if the release of the publicity stills were a limited publication, then the photographer’s copyright interest was not forfeited.
To determine whether a publication was “limited,” courts assess whether the publication was made to a “definitely selected group” for a limited purpose and without the right of further reproduction, distribution or sale. The question of whether the publication was made without the right of further reproduction, distribution or sale need not be express, but can be implied.
Although there are no reported cases that directly address the question of the release of publicity stills by record companies for promotional purposes, some published decisions do support a finding that such a publication could be a limited publication so that the photographs are still not in the public domain.
Most recently, however, in Warner Bros. Entm’t. Inc. v. X One X Prods., the court found the release of publicity stills for the movie Wizard of Oz did constitute a forfeiture of copyright protection because the evidence demonstrated that the photographs were released with an intent to reach as wide a distribution as possible. Following Warner Bros., the viability of the limited release doctrine as applied to rock ‘n’ roll publicity stills may be more limited. Unlike the publicity shots for Wizard of Oz at issue in Warner Brothers, publicity stills for rock ‘n’ roll stars were not distributed nearly as widely and were not intended to be used in newspapers. Thus, the degree of the release and the intent of the record company will be critical factors. It is well settled that “it takes more in the way of publication to invalidate the copyright, whether statutory or common law, than to validate it.”
Given that one purpose of the copyright law is to promote the arts by protecting the economic interest of artists, leniency in favor of preserving the copyright interests of true artists, such as rock ‘n’ roll photographers, is certainly called for.
 Copyright protection for iconic photographs published before 1978 also depends on factors such as whether the registration was properly renewed or the work was made as work for hire, which need to be considered as well but are beyond the scope of this paper
 17 USC, Section 101 et. seq.
 Copyright Act of 1909, Pub. L. 60-349, 35 Stat. 1075 (Mar. 4, 1909; repealed Jan. 1, 1978.)
 Copyright Act of 1790, Ch. 15, 1 Stat. 124 (1790)
 Sanga Music, Inc. v. EMI Blackwood Inc., 55 F.3d 756, 759 (2d Cir. 1995).
 Stewart v. Abend, 495 U.S. 207, 233 (1990).
 Coventry Ware Inc. v. Reliance Picture Frame Co., 288 F.2d 193, 194 (2d Cir. 1961) (explaining notice requirements).
 Stewart, supra note 6, at 233; see, e.g., The Letter Edged in Black Press, Inc. v. Public Bldg. Comm’n of Chicago, 320 F. Supp. 1303, 1309 (N.D. Ill. 1970) (publication of maquette of Picasso’s work without copyright notice means that Picasso’s work was “forever lost to the public domain”).
 17 U.S.C. § 8 (“No copyright shall subsist in the original text of any work which is in the public domain”).
 Mail & Express Co. v. Life Pub. Co., 192 F. 899, 900 (2d Cir 1912).
 McDaniel v. Friedman, 98 F.2d 745, 748 (7th Cir. 1938).
 Kaplan v. Fox Film Corp., 19 F. Supp. 780 (S.D.N.Y. 1937).
 id., 19 F. Supp. at 781.
 See e.g., New Fiction Pub. Co. v. Star Co., 220 F. 994 (S.D.N.Y. 1915). (Dismissing infringement claim because plaintiff at most licensee of copyrighted work).
 Goodis v. United Artists Television, Inc., 425 F.2d 397 (2d Cir. 1970).
 id., 425 F.2d at 399.
 See e.g., Sanga Music, supra note 5, at 756 (no copyright protection for folksong published in collective work because evidence showed author intended to dedicate song to public).
 See e.g., Dauman v. Andy Warhol Found. for the Visual Arts, 43 U.S.P.Q. 2d (BNA) 1221, 1226 (S.D.N.Y. 1997).
 See, e.g., Brown v. Tabb, 714 F.2d 1088 (11th Cir. 1983). (Jingle used by three customers without restriction constituted general publication)
 Data Cash Systems, Inc. v. JS&A Group, Inc., 628 F.2d 1038, 1043 (7th Cir. 1980).
 See e.g. Burnett v. Lambino, 204 F. Supp. 327 (S.D.N.Y. 1962) (release of copies of play to potential promoters and producers did not cause forfeiture of copyright).
 White v. Kimmel, 193 F.2d 744, 746 (9th Cir. 1952), cert. denied, 343 U.S. 957 (1952).
 See, e.g., Burnett, supra note 22, at 327; see also Hirshon v. United Artists Corp., 243 F.2d 640 (D.C. Cir. 1957) (release of 2,000 copies of sheet music to radio stations and musicians for “plugging purposes” deemed limited publication); King v. Mister Maestro Inc., 224 F. Supp 101 (S.D.N.Y. 1963) (release of advance copy of speech to press constituted limited release); Estate of Martin Luther King Jr., Inc. v. CBS, 194 F.3d 1211 (11th Cir. 1999).
 Warner Bros. Entm’t. Inc. v. X One X Prods., 644 F.3d 584 (8th Cir 2011).
 Hirshon, supra note 24, at 645.
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