Copyright v. Facebook





Westercreek, Circuit Judge, writing for the court:

Marjorie Thoroughgood is the daughter and personal representative of the estate of her mother, Mildred, who sued the three defendant corporations and one individual for copyright infringement. The district court threw the case out, granting summary judgment to the defendants. Mildred has since died and her estate appeals.

Mildred was a professional photographer who made – or took1 – a famous photograph which her daughter alleges was stolen by the three defendants. Mildred was driving one afternoon on U.S. Highway 84/285 north of Espanola, New Mexico, when her eye was caught by a cemetery on the side of the road in the village of Hernandez. It was almost sunset and a full moon was rising above cemetery and mountains behind. Mildred threw on her brakes, pulled over, and grabbed for her camera. Jumping out of her car she immediately realized that the sun would be setting in moments and that the sunlight on the crosses in the cemetery would soon be gone, ending the chance to make the photo. She also recognized that she would have to expose for the full moon, otherwise it would be nothing more than a solid, boring, white circle in the resulting photograph. (the luminance of the moon – 250 c/ft2.)

Mildred was a photographic Luddite who refused to use the pervasive photo-manipulation computer program known as “Photoshop.” In her eyes it was not only pervasive, it was pernicious; a view which, as we shall see, is relevant to this appeal.

Mildred quickly set the manual controls on her digital camera for the proper exposure for the moon and snapped the picture. She planned on making more exposures but it was too late. The sunlight was off the crosses. Hers was the only car that stopped and she was the only person who photographed the scene.

Excited, Mildred hurried to her hotel room in Santa Fe and downloaded the photo to her computer. The results were more that even she had hoped for. It was the best photograph she had ever made. The moon’s exposure was perfect and all the photo needed was some “burning and dodging”, a standard photo-development technique.

Mildred wanted to share the photo with her friends, family, and professional peers so she uploaded a small digital copy to her Facebook page. (She also put a watermark copyright notice across the face of the photo, thinking she was protecting her copyright, we suppose. We would show you the photo, but we’re afraid Facebook might sue us.)

The very next day a new employee of Facebook’s marketing department was trolling around the site, looking for photographs that Facebook could use in a new advertising campaign. The employee, Hazel Smithers, stumbled on the photo which Mildred had already named, “Moonrise, Hernandez N.M.” Young Smithers immediately recognized that it was a fine photo that, because of its scenic value, religious iconography, and astronomical interest, would appeal to Facebook users and the general public. But the digital file of the photo was too small for Facebook’s advertising department and it had that troublesome watermark copyright notice splayed all over it.

Without notice to Mildred, Hazel Smithers ran the photo through the “Photoshop” program that Mildred hated and completely removed the watermark. Then she ran it through another computer program which increased the file’s size so that it could be used in digital and print advertising. Facebook then launched an advertising program prominently featuring Mildred’s photo.

Not only that. Subsequently Facebook was contacted by Google which put the image on a line of coffee mugs, tee shirts, bookmarks, and pens in one of its advertising campaigns. Google paid Facebook one million dollars plus change for a sub-license to use the photo.

Then a vice-president of defendant ExxonMobil got one of Google’s coffee mugs with Mildred’s photo on it and thought the photo would make a wonderful addition to ExxonMobil’s latest advertising campaign encouraging Americans to get out on the “Open Road” using ExxonMobil’s gasoline. ExxonMobil paid Facebook two million dollars for the use of Mildred’s photo.

Eventually Facebook sold the rights to the photo to Simon Legree, a hedge-fund manager, for ten million dollars. Legree has since sold more than 1,000 copies of the photo at an average price of $5,000 per print.

Remember that Mildred knew nothing about these corporations using her photo or Legree selling it. They told her nothing and they paid her nothing.

She found out when her daughter showed her ExxonMobil’s full-page “Open Road” advertisement in the New York Times which was consisted only of her photo, a short caption, and a corporate logo. Up until that time the only people who ever saw an actual print of the photo were patrons of the small art gallery where Mildred showed her work.

It is well-settled American law that a copyright attaches to a work of art the instant it is created. (The defendants do not dispute that Mildred’s photo is a work of art so we save for another day the vexing legal question of whether photography is art.) So Mildred’s photo was copyrighted the instant she clicked the shutter on her camera. Putting a copyright notice on the small version she uploaded to her Facebook page was quaint legal surplusage. Not surplusage was Mildred’s registration of the copyright of the photo. She sent the government $35.00 to register the photo, necessary if she ever wanted to sue for statutory damages. Frantically Mildred tried to tell the defendants and the world that the photograph was hers. She held press conferences to which no one came, she blogged about it furiously, wrote hundreds of letters to editors, posted notices on her Facebook pages, tweeted on her Twitter page, set up her own web site, and bored anyone who would listen with her tale of copyright infringement. No one cared, least of all the defendants.

So Mildred added up the money the defendants made on her photo (About eight million dollars, not including the revenues each corporation earned from the advertising campaigns, but we’ll see that the actual amount doesn’t matter.) and asked for the money, but defendants ignored her. She sued, but as we saw, the lower court threw her case out.

Broke, starving, depressed and in despair, she threw herself in the path of a speeding ExxonMobil tanker truck, was run over, and killed.

The Constitution of the United States, in Article I, Section 8, Clause 8, gives Congress the power to enact copyright law. Congress has used the power to preempt state law entirely. 17 U.S.C. § 301(a) Exclusive jurisdiction of copyright disputes in vested in the federal courts of which we are one. 28 U.S.C. § 1338. No creator has a complete natural right to prevent others from copying or exploiting her invention so copyright law steps into that void by giving a time limited protection to creators of works that are copyrightable. Promoting progress by stimulating the creation and publication of as many works of art, literature, music, architecture, copyrights afford to creators a limited property interest in their creations, although that interest is subordinate to the public good. By creating her photograph Mildred became a person protected by the copyright laws of the United States and, unless she otherwise forfeited the right, could sue anyone, including these defendants for money damages for infringing her rights. Title 17, U.S.C. Section 504. Not only could she get the money she lost, she could also force the defendants to disgorge to her all the money they made using her photograph. Title 17, U.S.C. Section 504. Not only would these defendants owe her eight million dollars, they would also owe her all the profits made as a result of their advertising campaigns.

But remember that Mildred, rest her soul, uploaded the photo to her Facebook page. That, it turns out, was a mistake. Facebook is a social networking computer site privately owned by defendant Facebook, Inc. The service is free to the more than 750,000 benighted souls who use the service. But the service, like lunch, isn’t really free. Users must agree to a contract before they can use Facebook and Mildred agreed to Facebook’s usage terms before setting up her account. She made a binding contract with Facebook. That contract included this provision:

For content that is covered by intellectual property rights, like photos and videos (IP content), you specifically give us the following permission . . . : you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License).

For a contract written by a lawyer, that one is fairly clear. In return for using Facebook’s service Mildred gave to Facebook an absolute right to use any photograph she uploaded. For free. Not only that, she also gave Facebook the right to sell her uploaded photos to anybody it wanted to. Also for free. Google, ExxonMobil, and Legree bought the rights directly from Facebook, sold to them in perfect harmony with the binding contract between Facebook and Mildred.

The contract contained another provision, adding that the license she had granted to Facebook ended when she deleted her content, “unless your content has been shared with others, and they have not deleted it.”

When Mildred discovered what she had done by uploading “Moonrise” she immediately deleted the photo and had all her friends do the same.

Too late. She bore the burden of proof that all copies had been deleted from computers all over the world and this she cannot do. Not that it matters. She shared the content with Facebook and it certainly hasn’t deleted her content. The owners of Facebook know a gold mine when they see one.

So Mildred must lose her case. Her contract with Facebook trumps the Nation’s copyright laws.

That leaves only the defendants’ requests for costs and attorney fees. Section 505 of the Copyright Act permits courts to award costs and reasonable attorney fees to the winners of copyright litigation.  The learned district judge looked over defendants’ cost bills and attorney fees and awarded them a total of three million dollars for costs and fees. Finding no abuse of discretion, we affirm the award and order Mildred’s estate to pay up.

The laity may grumble about this result in this case, thinking it unjust. They might think that defendants stole millions of dollars from Mildred and they may well be right, but it was all perfectly legal.


1“Professional” photographers like to use the verb “made” when referring to their photographs. Presumably this is an effort to distinguish themselves from the rest of us who merely “take” pictures. But everyone owns a digital camera these days and six billion photos have now been uploaded to just one photo-sharing site, so the “professionals” are swimming upstream. The semantic dispute bores this court and we take no position on it, other than to warn the “professionals” not to give up their day jobs.


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One Response to “Copyright v. Facebook”

  1. rudenoterecords Says:

    What a horror story! Why has this not been more widely publicised?

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