Use of a supposedly trademarked photo

[ADP]

N.M.

I work for a newspaper that subscribes to an advertising service that provides clip art, fonts, etc., for use in ad building.

A couple of months ago, we received an email from a company claiming to be representing the owner of a photo we used a year prior on our website. The photo was taken from the stock art provided by our advertising service.

The company stated that unless we could provide proof of a license, we needed to click a link to pay them $1,400. Obviously, that sounds quite sketchy to begin with. If someone had a legitimate legal complaint, I imagine they'd communicate it by physical mail rather than sending an email that says "click this and give us $1,400". But I responded to the message, informing the person that the image had been taken from an advertising service which we pay for, so if the company was legitimate and felt it had a legitimate complaint, that complaint would be with said advertising service, not our newspaper.

The person responded a few times with "unintentional use of this copyrighted image doesn't excuse using it", etc., etc., and I responded again, informing them that as a newspaper, we're very familiar with copyright and trademark law, and that's why we subscribe to an advertising service that provides us with licensed and/or public domain clip art for ad building. Just like most other newspapers in the U.S.

After continuing to demand we pay the $1,400, I responded that I would be happy to involve our lawyers if need be. I subsequently didn't hear out of this company again for several weeks, but then yesterday, they were back, asking if we wanted to put our lawyers in touch with them or just pay the $1,400.

Again, this all just stinks of scam to me, but they're persistent, and I want to make sure we're covering all our bases. I offered right off the bat to provide them with the name of the advertising service in question so they could take their complaint to them, and they basically expressed no interest in that -- only that we pay them $1,400. I'd like to know what to say from a legal standpoint when I respond for what will (hopefully) be the final time to tell these people to either go pester the ad service or have us report them for harassment.

Has anyone experienced a similar situation or does anyone know how to best handle this?

 

[justalayman]

your title speaks of trademark issues. The body of,your message speaks of copyright issues. Since you claim to be knowledgeable of both, you will surely know they are entirely different issues

So, is this a claim of trademark infringement or copyright infringement?

 

[ADP]

Sorry, I'm at work and doing several things at once, so I apparently accidentally wrote "trademarked" instead of "copyrighted" in the subject.

 

[justalayman]

Have you contacted the provider of the photo to ensure it actually is legal to use it?

 

[quincy]

Sorry, I'm at work and doing several things at once, so I apparently accidentally wrote "trademarked" instead of "copyrighted" in the subject.

What is your position at the newspaper?

You should forward the emails to your newspaper's legal department/lawyer to handle.

 

[PayrollHRGuy]

And you sure as hell should click any link.

 

[quincy]

And you sure as hell should click any link.

I suspect you mean you should not click on the link.

And with that I agree.

 

[LdiJ]

N.M.

I work for a newspaper that subscribes to an advertising service that provides clip art, fonts, etc., for use in ad building.

A couple of months ago, we received an email from a company claiming to be representing the owner of a photo we used a year prior on our website. The photo was taken from the stock art provided by our advertising service.

The company stated that unless we could provide proof of a license, we needed to click a link to pay them $1,400. Obviously, that sounds quite sketchy to begin with. If someone had a legitimate legal complaint, I imagine they'd communicate it by physical mail rather than sending an email that says "click this and give us $1,400". But I responded to the message, informing the person that the image had been taken from an advertising service which we pay for, so if the company was legitimate and felt it had a legitimate complaint, that complaint would be with said advertising service, not our newspaper.

The person responded a few times with "unintentional use of this copyrighted image doesn't excuse using it", etc., etc., and I responded again, informing them that as a newspaper, we're very familiar with copyright and trademark law, and that's why we subscribe to an advertising service that provides us with licensed and/or public domain clip art for ad building. Just like most other newspapers in the U.S.

After continuing to demand we pay the $1,400, I responded that I would be happy to involve our lawyers if need be. I subsequently didn't hear out of this company again for several weeks, but then yesterday, they were back, asking if we wanted to put our lawyers in touch with them or just pay the $1,400.

Again, this all just stinks of scam to me, but they're persistent, and I want to make sure we're covering all our bases. I offered right off the bat to provide them with the name of the advertising service in question so they could take their complaint to them, and they basically expressed no interest in that -- only that we pay them $1,400. I'd like to know what to say from a legal standpoint when I respond for what will (hopefully) be the final time to tell these people to either go pester the ad service or have us report them for harassment.

Has anyone experienced a similar situation or does anyone know how to best handle this?

Personally, I don't think that you should have even responded to them in the first place. You are correct that an email with a link to pay money is not what any professional organization does with a possible copywrite infringement. They are being persistent because you responded. Either turn it over to legal, or simply stop responding until or unless you get something through proper legal channels.

 

[quincy]

Personally, I don't think that you should have even responded to them in the first place. You are correct that an email with a link to pay money is not what any professional organization does with a possible copywrite infringement. They are being persistent because you responded. Either turn it over to legal, or simply stop responding until or unless you get something through proper legal channels.

It is copyright not copywrite.

A first notice of copyright infringement might come by email. It is certainly not unheard of. That is generally how ISPs notify account holders of the receipt of subpoenas for release of account information, so copyright holders can proceed against (alleged) infringers by sending settlement demand letters or filing infringement suits.

 

[stealth2]

You should likely pass on all of the correspondence to your employer's legal department.

 

[quincy]

You should likely pass on all of the correspondence to your employer's legal department.

I agree that ADP needs to have the newspaper's attorney take care of the infringement notice.

ADP apparently has an erroneous belief that the unauthorized publication of a copyrighted photo is excused if the photo was acquired through (licensed from) a stock photo company. And that is not true. If the copyright holder did not permit the licensing of his work, it is infringement, even if perhaps unintentional or "innocent" infringement on the part of the newspaper.

 

[ADP]

Our newspaper is small; we don't have a legal department. The owner lives in another state and has an attorney. I just wanted a little more insight into whether this sounded like a scam to anyone else (meaning have people heard of similar scams, etc.) and whether it was something I should even bother the owner's attorney with (or should I just block the email address in question and go about my business).

I understand completely that if we, for instance, went on the internet and just grabbed a random photo (or took a photo off a stock company's website) without bothering to find out whether it was copyrighted, that would be infringement. But like most newspapers, we pay an advertising company to provide us with licensed clip art (and background images and ad templates, etc.) for ad building. If these companies are sending out unlicensed clip art, then I imagine a newspaper would be getting sued every five minutes, because we all use them. So that's what made the whole thing fishier to me: I told the person I would provide them with the name of the company we pay for licensed clip art, and they didn't express any interest in that information.

But I suppose I'll just block their email, and then if we receive a communication by physical mail, I'll forward it to the owner.

 

[quincy]

Our newspaper is small; we don't have a legal department. The owner lives in another state and has an attorney. I just wanted a little more insight into whether this sounded like a scam to anyone else (meaning have people heard of similar scams, etc.) and whether it was something I should even bother the owner's attorney with (or should I just block the email address in question and go about my business).

I understand completely that if we, for instance, went on the internet and just grabbed a random photo (or took a photo off a stock company's website) without bothering to find out whether it was copyrighted, that would be infringement. But like most newspapers, we pay an advertising company to provide us with licensed clip art (and background images and ad templates, etc.) for ad building. If these companies are sending out unlicensed clip art, then I imagine a newspaper would be getting sued every five minutes, because we all use them. So that's what made the whole thing fishier to me: I told the person I would provide them with the name of the company we pay for licensed clip art, and they didn't express any interest in that information.

But I suppose I'll just block their email, and then if we receive a communication by physical mail, I'll forward it to the owner.

I recommend you let the owner decide what to do about the copyright infringement notice. If it is a legitimate notice (and the fact that it was sent by email does not rule out its legitimacy), ignoring it could be a costly mistake for the newspaper.

Stock photo companies have mistakenly offered for licensing in the past some infringed photos. Your paper has a few potential defenses and a partial defense to infringement if it licensed a work unauthorized by the copyright holder for licensing (assuming your paper did not exceed the scope of the licensing conditions of use).

Again, unless you are charged with making legal decisions for the newspaper, I recommend you send the notice of infringement to the one at the newspaper who makes those decisions.

Good luck.

 

[Mass_Shyster]

See if the stock photo company will indemnify you. At a minimum, you should contact them and let them know that you've received a notice of infringement regarding a photo that you licensed from them.

A google search of the terms of service/license agreement for one of the better known stock photo providers includes something like "Subject to ... , [redacted] will defend, indemnify, and hold you harmless ... "

 

[quincy]

See if the stock photo company will indemnify you. At a minimum, you should contact them and let them know that you've received a notice of infringement regarding a photo that you licensed from them.

A google search of the terms of service/license agreement for one of the better known stock photo providers includes something like "Subject to ... , [redacted] will defend, indemnify, and hold you harmless ... "

I think that ADP should let the newspaper's owner and lawyer handle the copyright infringement notice and any contacts that are made.

If the notice that was received is legitimate, the stock photo company might have licensed a photo without authorization from the copyright holder but it could also be possible that the newspaper exceeded the scope of the license.