An allegation of copyright infringement

TDWG gets an expensive lesson in copyright infringement.

TDWG recently paid more than $2,000 USD to settle a case of alleged copyright infringement out of court. How did this happen? How can we prevent it from happening again?

This case began in 2014 when a colleague (hereafter “Presenter”) needed an image to represent the concept of biodiversity in a talk he was preparing for our annual conference. He found a nice image on the web – a composite showing various plants and animals – and copied that image into his presentation. After the conference he uploaded his slides to the TDWG website. Seven years later a copyright holder’s agent searched the TDWG website and found two images that allegedly infringed the copyrights of their clients. The images were both contained in the composite the Presenter had used in his Powerpoint file. The images in question appeared in only one of his nineteen slides, and each was only the size of a thumbnail; less than one half of one percent (0.5%) of the area on screen.

The rights-holder’s agent demanded that TDWG take down the images and pay more than $900 to settle the alleged infringements out of court. They warned us that a court case could cost TDWG many times that amount. TDWG took down the presentation file immediately, but consulted the Presenter as well as an expert in European copyright law to learn more about the potential infringement. The Presenter asserted that the use was academic and non-commercial (non-profit), and therefore permitted under “fair use.” The copyright expert also noted that the presentation had been given in Sweden and TDWG’s web server is in Denmark, so both uses were permitted under the corresponding jurisdictions. He advised that TDWG should simply communicate these facts to the complaining agent and ignore any subsequent correspondence. We thought that analysis was correct and followed his advice. We communicated these facts to the complaining agent and said we considered the matter closed. We received a few more demand letters, but did not respond.

Escalation from agent to attorney

After a gap of at least six months, we received another demand letter, but this time from a law firm based in the US, informing us that the demand was now almost $3,000 and they would take us to court if we did not pay this now larger “settlement offer.” We informed this new adversary (attorney) that the uses were permitted in the jurisdictions where they occurred. He rejected our assertion that these facts made TDWG faultless; the images were copyrighted and used without license on our website. Moreover, TDWG is incorporated in the US, we were therefore liable for the infringement under US law and would be found so in a US court. We then asked for help from a US attorney who was both a personal friend to one of us (Blum) and an expert in intellectual property law. We made a fairly thorough investigation of particulars in this case and the US law. We made another series of arguments as to why the infringement was negligible if not actually absent, but the opposing attorney again rejected our arguments, either without really addressing their substance or by having a different interpretation of how the law applied to the facts. This exchange finally made it apparent why copyright trolling is an effective money making enterprise.

TDWG’s options

In this situation, TDWG’s choice was either to pay to the demand (i.e., settle) or to refuse to pay. If we refused, the decision to take the case to court was not in our hands. We could argue further, but the opposing attorney held the decision. If he chose to pursue the case, the possible outcomes for TDWG could be as little as nothing, but could be as high as several tens of thousands of dollars. To emerge with zero expenses, we would have to win not only the infringement case, but also a judgement that the suit was frivolous and the plaintiff would have to pay our attorney’s fees. If we were to win the basic question of infringement versus fair use, or been assessed only a nominal penalty having shown that the damage to the plaintiff was negligible, we would still incur something between ten and twenty thousand dollars in expenses for our own attorney’s fees. If we lost the case, we could be liable for our own attorney’s fees, as well as damages and the opposing attorney’s fees. Even in the best of these scenario, TDWG had nothing to gain. We faced only the prospect of losing somwhere between zero and tens of thousands of dollars. The wiser choice was to settle out of court. While paying the claim rewarded what we view as an abuse of the legal system (the cost or harm to TDWG exceeded any harm done to the copyright holders), settling out of court closed the case without risking far greater loss. It also enabled us to put the matter behind us and return to the work of TDWG.

TDWG’s first line of defense, of course, is to ensure that contributors to TDWG conferences do not include and upload copyrighted and unlicensed content. Unfortunately, TDWG doesn’t have the human or technical resources to go through every presentation to ensure that it is free of unlicensed content. We can only impress upon our contributors the seriousness of this risk and implore them to remove any unlicensed content before uploading their slides.

We found a second layer of defense in the Digital Millennium Copyright Act (DMCA). TDWG can avoid liability for the actions of contributors (i.e., users of our platforms) by complying with provisions in the DMCA, as described here. The DMCA creates a “safe harbor” for platform providers and shelters them from liability when a user commits an infringement. To use the safe harbor, however, the platform provider must:

  1. designate and publish the contact information for an agent to receive “take-down” notices; i.e., so that a copyright holder can easily find and inform the platform provider that a copyrighted work is being used without license;
  2. register that agent with the US Copyright Office (and renew that registration every three years); and
  3. publish a policy that bans repeat offenders from posting to the platform.

We intend to take these steps, but until they are done TDWG has taken down existing presentations and listed them only as available upon request from our archive.

In the case discussed above, the Presenter copied the image from a column published on “The Guardian” website. The photo credit on the image simply stated “Photograph: Guardian,” which was actually misleading. The composite image was probably created by the Guardian’s graphics department, but The Guardian did not own the rights to the individual images it contained; they were only licensed for The Guardian’s use and not purchased outright. The actual rights pertaining to the composite image were too complicated to list fully and could only be known through an inquiry.

Further paving the way for the Presenter’s misstep, The Guardian’s “Terms of Service” state:

“You may download and print extracts from the Guardian Content for your own personal and non-commercial use only, provided you maintain and abide by any author attribution, copyright or trademark notice or restriction in any material that you download or print.”

The Presenter may have interpreted this to mean that using the image at an academic conference was “personal and non-commercial,” but when we actually inquired about the rights and TDWG’s use, The Guardian replied (in part):

“In any case, the composite in question appears to be largely comprised of stock imagery provided by our image agency partners whereby even if you had attempted to seek permission to use, GNM [Guardian News & Media] would likely not have had the right to authorise this use which could only have been permitted by those holding the rights to syndicate.”

“Our open licence terms are listed here and permit some limited usage(s) free of charge as detailed. However, it appears from what you’ve described, TDWG’s usage would fall outwith the permitted criteria.”

Their assessment was that TDWG’s use (i.e., making that presentation accessible on the TDWG website) would fall outside their open licensing provisions.

So the lesson for TDWG, or any academic community, is that one should not permissively interpret the information found on a website about the images found therein and their reuse. While using an image in a presentation at an in-person conference might or might not be permitted, uploading that presentation to a website is a different use and requires a more specific and more conservative interpretation.

A general recommendation to presenters

We recommend that presenters at TDWG conferences never use an image without knowing with certainty what rights pertain to it and that both the use at the conference as well as downstream uses are permitted. Downstream uses can include not just publishing your slide deck (i.e., attaching it to your published abstract), but also displaying all the images in your slides in a video of your presentation. The financial consequences of copyright infringement clearly outweigh the benefit of using an encumbered image. Use another image! Image search technology now makes it easy to discover any unlicensed use of a copyrighted image. And finally, if you support open science, facilitate re-use by listing the rights holder and terms of use for every image in your presentation. You should even explicitly state those facts when the image is your own. The absence of these critical metadata impedes reuse at best, and at worst can cause your unsuspecting colleagues to incur financial penalties.

To lead by example, the people who write and edit TDWG’s web pages are careful to ensure that any image on our website has been published under a permissive and royalty free license. We don’t have the budget to license images and we can’t expose TDWG to the risk of infringement. (Most of the images on our web pages have been taken from the “Unsplash” stock photo site, which is dedicated to freely usable images.) We also credit the photogapher/creator and provide a link to source where we obtained it.