Legalities 16: Can a Design Firm Show Comps that Use Stock Photos? Can a Photographer Publish Out-takes of Celebrities for Self-Promotion?
Q. My graphic design firm has been selected to have our work appear in two design publications. We would like to show a piece that we designed but never produced. The images are package designs for toiletries that include the client name, the brand name of the product and a photograph of a plant or flower to denote the scent. The designer is no longer with us but I believe he went through some old stock books and found the images of the plants which we then superimposed on the boxes.
There is an interesting back story re: why our designs weren't chosen. The client has pretty mundane packaging. Our designs were great - one of the most beautiful things we've ever done. Our contact said our designs were too striking and would overshadow their other premium product packaging. The client's marketing director then asked our designer to come to a meeting with the client's management and in-house design team to look at some dumbed down designs more in keeping with the rest of the line. The management people weren't too impressed. So our designer brought out our original beautiful designs. This ended up causing a ruckus. Management really liked our designs, but it started some sort of internal political battle. We think the marketing director may be carrying a grudge about this.
A. There is a legal issue re using the photos on comps. Usually it comes up when the image of one photographer's work was used on the comps, and then another photographer is hired to do the actual shots. In that situation the main claim is that the final art infringes the original photographer's work. But technically, it is also infringement to use the original photos on comps without permission. You have copied them and traded on them commercially, that is, to solicit work, so it is not a fair use. (The same holds true for comp use of illustration.) Moreover, if you show the comps in a design publication, that becomes another publication and thus a new use of the photographs. The trade publication may be fair use, however, because it is editorial commentary on developments in the field of design, rather than a direct commercial use.
Either the photographer or a stock photo company manages the rights in the photographs (we'll say the stock house for purposes of this answer). The stock house might offer them on a royalty-free, one-time fee basis, or on a royalty-based license. In any event, the stock house would be entitled to its typical fee for the use you have made of its photos. If the stock house sees your piece in the design publications, it could raise a legal claim of infringement. The damages would be measured by the license fee it would have charged for the comp use - which could be pretty minimal, and perhaps an additional fee for the publication (although, as noted above, there is an argument that publication in a trade journal is a fair use, and thus would not require a separate fee.) The stock house would not be entitled to your profits because you didn't make any, except that it could go after a portion of the fees, if any, you received for creating the comps.
So if the photographer or stock house objects, you should be able to solve it with a monetary payment. Of course, there's always the outside chance that the copyright owner will want to litigate. As a business decision, it might be worth that risk for the benefits of showing your work.
You should also think about the client - will it object to having its name and the product brand shown in the comps? Did you have an agreement with the client about who owns your work product for unutilized ideas, and whether you have portfolio rights? Even if you retained copyright, there's a possible argument that your reproduction of the comps with the client's identity and brand for self-promotion violates the client's trademark rights, because you could be suggesting an association between your firm and the client. Normally this part would be easy to solve by just asking the client for permission. However, under these circumstances, it sounds like the marketing director might be upset that your designs have been made public. If you think getting permission would be problematic, you should change the client name on the images to a made-up brand. That way there's no chance for the client to argue that you don't have the right to show them.
Q. Our client likes to show off its high-end clientele in its annual report. There was a big problem with a photographer showing an out-take shot of a star five years ago and our contact at the client was so rattled by this that she did not want to use that photographer again. Recently, we did an online search on our design firm and the sixth item was a part of our current photographer's site where he has out-takes of some of the client shots from the most recent annual report. I was surprised to see out-takes of a celebrity and his wife. The photographer is required in his contract with the client (which we brokered) to get permission to use the client-approved annual report shot for self-promotion. I find it very hard to believe he could get such permission for these out-takes.
We will likely check with our contact at the client to see if this is a problem. I'm worried about whether we could be sued by an angry client (or their reps) since the photographer bills through us. That photo contract is between the photographer and the client but could we be liable (or at least be part of a suit) for being part of the process?
A. I agree that you should talk to the client. You want to make sure your client knows that you did not know about the photographer's publication of the out-takes and you didn't authorize it.
You should also contact the photographer. The photographer needs permission from both the client and the celebrities. The first place to look for that permission is in the contracts. In this case, it sounds like there is nothing in the photographer's contract with the client that gives him permission to use the out-takes this way. I doubt that the client's agreement with the celebrities gave permission to the client, let alone the photographer, to use their images in any way beyond printing the one approved shot in the annual report.
Assuming he doesn't have the celebrities' permission, the photographer is definitely infringing the celebrities' rights of publicity by displaying the photos in violation of the contract terms. In my experience, many photographers do not understand or are unaware of publicity rights. They think that if they have retained copyright, they can use any of their photos for self-promotion.
But celebrities have the right to control the use of their image for commercial purposes, and that includes self-promotion by a photographer regardless of who owns the copyright. Many celebrities are very sensitive about this, and they have the means to litigate. I recently settled a similar case against a photographer who had printed several hundred postcards using an out take shot of a celebrity to promote her work. She had been assigned to take the photos for a magazine article, and the celebrity had consented only for that purpose. Ironically, he was on her mailing list. When he received the promotional card, he contacted the magazine and his lawyers (my firm). The photographer had to immediately stop her mailing (luckily, the celebrity had been near the beginning of her list, and most of the cards had not yet been sent) and surrender all of the cards to us for destruction. She was fortunate - we agreed to settle without monetary payment. However, she lost goodwill with the celebrity (and his community), and, like your first photographer, she lost her client. The magazine no longer works with her.
If the photographer does not have permission and he refuses to take the photographs down, at least demand that your design firm's name is not posted in association with these images. Even though your connection is indirect, there is an initial rationale for naming your firm in a lawsuit. So there is some risk to you of having to defend at least up to the point of proving that you didn't authorize this.
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