Photographer Claims Harley Davidson Used Photograph without Authorization

Lisa Michael, a North Carolina professional photographer, filed a complaint on July 21 against Harley-Davidson and three of its dealers, alleging that their use of one of her photographs in an advertising brochure had not been authorized and thus infringed her copyright. The case is Michael v. Harley-Davidson, Inc. et al, 5:2015cv00346.

In September 2014, Plaintiff took a picture of a man sitting on a Harley-Davidson motorcycle and licensed it to a local Harley Davidson dealer, for limited use only in online advertising. The photographer included a digital watermark on the photograph to indicate that the picture came from her personal website.

Plaintiff later discovered that this photograph had been used as part of an “Iron Elite” advertising campaign, celebrating African-American Harley-Davidson riders. Plaintiff applied to register the copyright with the Copyright Office on July 6 before filing her suit in the Eastern District of North Carolina. The original licensee of the photograph has not been named as defendant to the suit.

Plaintiff claims that Harley-Davidson and several Harley-Davidson dealers are jointly and severally liable for damages, and she is demanding a jury trial.

The complaint alleges that Harley-Davidson created the “Iron Elite” campaign and offered a fabric patch featuring the silhouette of the rider in the original photograph. The silhouette was drawn in black and white over a black background surrounded by orange, using thus the colors of the Harley-Davidson trademark. The”Iron Elite” site explained that the patch had been created as a “special, limited edition” to pay tribute to famous African-American Harley-Davison users, and informed the public that it could be obtained at several Harley Davidson locations, which are the other Defendants to this suit.

Neither the online campaign site, nor the patch, indicated that Plaintiff was the author of the original work used to create the patch. This article states that Plaintiff had posted to her followers on Twitter that “My image chosen to represent HARLEY DAVIDSON USA IRONELITE 2015! © lisamichael.com", but that the tweet was later deleted. I could not verify this information, as Plaintiff’s Twitter account is now private.

The photographer filed a copyright infringement suit, and also claimed that the unauthorized use of her photograph amounts to false designation of origin and unfair and deceptive trade practices. The Complaint states that Plaintiff’s “label,” that is, the digital watermark on the photograph, “identified Plaintiff as the source of that work” and that removing it constitutes unfair and deceptive trade practice and false designation of origin.

This is an attempt to use trademark law to palliate the absence of moral rights in U.S. law. However, the court is likely to consider the patch to be reverse passing off, which is the misrepresentation of someone else’s goods or service as one’s own. In 2003, the U.S. Supreme Court held in Dastar that the phrase “origin of goods” in Section 43(a) of the Lanham Act “refers to the producer of the tangible goods that are offered for sale, and not the author of any idea, concept, or communication embodied in those goods” and thus closed the door to litigants wishing to use the Lanham Act as a way to protect their right to attribution.

The complaint alleges that the campaign featuring the infringing photograph has been reproduced and distributed on social media by third parties, but, unlike this recent case, Plaintiff did not attempt to sue these social media users for contributory infringement.

[Here is a video of Brigitte Bardot singing Je ne reconnais plus personne en Harley-Davidson, a song written by Serge Gainsbourg.

Image is courtesy of Flickr user lePhotography user under a CC BY-NC-ND 2.0 licence.

No summary judgment where copyright claim is mixed up in more knotty issues

Sorry about the delay in posting this note: Devonshire Pine Ltd v Day has been at the back of my mind for a while, but I keep getting distracted. Devonshire Pine Ltd v Day is a Chancery Division, England and Wales, decision from 19 July, handed down by Stuart Isaacs QC, sitting as a Deputy Judge. It hasn't found its way on to BAILII and is in probability not going to do so.

In short, this was an application by Devonshire Pine for summary judgment in its claims against Day for copyright infringement and breach of statutory duty. According to Devonshire Pine, Day had taken copyright-protected photographs from its website and then published them, without authorisation, on the latter's own website, and was then indulging in "reverse passing off" by creating the impression that the items portrayed in the photos of Devonshire Pine were those of Day.  Day however denied any liability, asserting that the images in question had been provided by a company in China, where similar images were commonplace. Devonshire Pine made a further allegation that Day had, as a person providing an information society service on a website, failed to make available its name, address and other details as were required under the Electronic Commerce (EC Directive) Regulations 2002 (here), reg. 6. Again, Day denied liability, maintaining that the requirements of the Regulations had been fulfilled and that, in any case, Devonshire Pine had failed to show that it had suffered loss.

As to the application for summary judgment, Day submitted that there was a compelling reason for the infringement claim to go to trial because a grant of summary judgment on the copyright infringement claim would determine an issue in the related reverse passing off claim, which was too complex to be dealt with summarily. Also, Devonshire Pine actually had to establish a case in respect of the breach of statutory duty; the mere absence of a detailed defence was not a sufficient basis for a summary judgment application.

Stuart Isaacs QC refused the application for summary judgment.

A factual connection between the copyright infringement claim and the reverse passing off claim did exist. Although there were grave doubts about the prospects of Day's defence to the infringement claim, there was still a compelling reason for the matter to go to trial since there would in any event still be a trial of other issues and even Devonshire Pine accepted that there was a factual overlap between these two claims. It was therefore appropriate to determine all of the issues together -- even though Day's prospect of success in defending the copyright claim was so poor.

Regarding damages for breach of statutory duty in failure to comply with the 2002 Regulations, the court was not satisfied that this breach was enforceable by Devonshire Pine as a recipient of an information society service suffering damages. It was uncertain whether Day was a supplier  of an information society service within the meaning of the Regulations, since there was an arguable distinction between Day as a company and Day's director in relation to the provision of the service. It was also unclear whether Devonshire Pine was to be treated as a recipient for the purposes of the regulations.

The moral of the story seems clear: if the claim had been based on copyright infringement alone, Devonshire Pine would have had judgment on a plate -- and surely, since the IP Enforcement Directive, the court could order the same damages in respect of copyright alone as it would order for copyright infringement plus reverse passing off (this is a controversial point: readers, please discuss!).