Intellectual Property Law
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Are you using the image owned by another?
If yes, how are you using the image?
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Here is a copy/paste of recent letter:
J. STEPHEN STREET Attorney at Law
134 Maono Place Fax: (XXX) XXX-XXXX
Honolulu, Hawaii 96821 Email:XXX@XXXXXX.XXX __________________________________________________________________________________________________________________________________________________________________________________________
July 18, 2013
Jeff Swanson, Founder Luxury Living Maui Whalers Realty, Inc. 2435 Kaanapali Parkway, Suite A-3 Lahaina, Maui, HI 96761
Phone: XXX-XXX-XXXX Via emails:XXX@XXXXXX.XXX
Robert J. Cartwright Principal Broker Whalers Realty, Inc. 2435 Kaanapali Parkway, Suite A-3 Lahaina, Maui, HI 96761
Re: http://www.mauiluxuryliving.com/ https://www.facebook.com/LuxuryLivingMaui http://www.whalersrealty.com
Cease and Desist Demand and Offer to Settle Copyright Infringement Claims and Digital Millennium Copyright Act Claims, Subject to Rule 408, Federal Rules of Evidence
Dear Mr. Swanson and Mr. Cartwright:
Thank you, XXXXX XXXXX for your letter of June 16, 2013.
Further review of your Luxury Living Maui commercial Facebook page and a review of the related Whalers Realty, Inc. commercial website have revealed the following additional infringing uses of Mr. Tylor’s images:
Image “M-03 Iao Needle Sunset” is used on Whalers Realty, Inc. commercial website at: Page URL: http://www.whalersrealty.com/maui_listings/350056 (Half Page Image in slideshow) Image URL: http://www.ramidx.com/MLSImages/350000/maui350056-5.jpg
(640 x 431 pixels)
Phone: (XXX) XXX-XXXX
Image “M-18 Turquoise lagoon” is used on your commercial Facebook page at: Page URL: https://www.facebook.com/LuxuryLivingMaui
(Thumb Image link to your commercial website) Image URL: https://fbexternal- a.akamaihd.net/safe_image.php?d=AQAduL_VoNyC2YRk&w=155&h=114&url=http%3A%2F %2Fwww.luxurylivingmaui.com%2Fwp-content%2Fuploads%2F2011%2F12%2FEastMaui.jpg
(155 x 103 pixels)
Image “M-22-B Honolua Bay” is used on your commercial Facebook page at: Page URL: https://www.facebook.com/LuxuryLivingMaui
(Thumb Image link to your commercial website) Image URL: https://fbexternal- a.akamaihd.net/safe_image.php?d=AQARNl55dK1d3K2g&w=155&h=114&url=http%3A%2F% 2Fwww.luxurylivingmaui.com%2Fwp- content%2Fuploads%2F2011%2F09%2FKapaluaplantation-honolua.jpg (155 x 103 pixels)
Evidence of these additional unauthorized uses is enclosed. These are copyright infringements in violation of 17 U.S.C. § 501. The copyrights to these images are owned by my client Vincent K. Tylor and are registered with the United States Copyright Office as VA 1-696- 555 as supplemented by VA 1-789-671,
The previously identified infringements as well as the newly identified infringements all relate to the commercial real estate business of Whalers Realty, Inc. Removal of Mr. Tylor’s images from your commercial websites and commercial Facebook page does not compensate Mr. Tylor, or relieve you from liability, for damages arising from the past infringing uses of the images for your own purposes. I would note also that removal of the images from the Luxury Living Maui Facebook page does not remove the images that have been “shared” with other websites that took the images at your invitation to download them.
Two of the previously identified images appeared on the Luxury Living Maui commercial website as Full-length Photos in a Rotating Photoshow, Header-Banner. By posting those images plus a third Image on the Facebook Page with Luxury Living Maui name, logo and link, they can automatically appear as an Ad for Luxury Living Maui on the FB members’ Pages who have “liked” your FB Page (1,765 as of my May 1, 2013 letter), as well as potentially thousands of their shared “friends”.
Although in your July 16, 2013 letter you have identified some websites where the images are currently available without attribution to Mr. Tylor, you have not identified the source of the images that Luxury Living Maui claims to have used at the time it put the images up on its Facebook page or website. Please provide any evidence that you would offer in defense of the DMCA claim as to the specific source, so that we can take that into consideration in reaching a resolution of this matter. There should be electronic evidence of the source and date of the up- loads to Luxury Living Maui's website and Facebook page, which I specifically asked you to preserve in my letter of May 1, 2013. The electronic evidence of the source of the newly discovered infringement at the Whalers Realty website should also be preserved. Luxury Living
Maui's website and Facebook page designer, as well as the designer of the Whalers Realty website, should know better than to assume that anything that can be copied for free from the internet can be used for commercial purposes, without permission of the copyright owner.
My client has been actively engaged in sending take-down notices and enforcing the copyrights as he has discovered unlicensed uses of these images and others. In any event, illegitimate uses of an image by others does not insulate Whalers Realty and Luxury Living Maui from liability for their own infringing commercial use of the images on their websites and commercial Facebook pages. Copyright law provides for substantially greater maximum statutory damages against a willful infringer, but it also provides for statutory damages and the award of attorneys fees and costs, or actual damages and the infringer’s profits even against the innocent infringer. Your infringing use of the images without attribution has contributed to the wrongful use of the images by inviting others to download (“share”) the image, thereby creating additional actual damages. Some of the images you found without attribution may have resulted from someone else downloading images from Luxury Living Maui’s Facebook pages.
The Copyright law makes it clear that any reproduction, distribution, or display of a copyrighted work without authorization from the copyright holder constitutes infringement. Whalers Realty Inc. and Luxury Living Maui are responsible for any infringing use of images regardless of intent.
You should be aware that if you did not create the images yourself, the copyright belongs to someone else. You certainly cannot assume that an image created in the last 20 years is in the public domain, and that you have the right to use the image commercially without obtaining the copyright owner’s permission.
From your Internet search for examples of uses of the images without attribution to Mr. Tylor, I assume you also know that a Google Image search will locate legitimate sources of the images, with attribution to Mr. Tylor, such as: www.hawaiipictures.com. Had Whalers Realty and Luxury Living Maui made any effort to determine who owned the images, they could have found the author and a legitimate source for licensing.
We would have expected Whalers Realty and Luxury Living Maui to take at least minimum precautions to avoid copyright liability. Instead they have selected purportedly “free” images (i.e. any images they could just copy from the Internet, without regard to copyright ownership) for these commercial purposes. Even a minimal search for the images with attribution to the photographer would have located the copyright owner.
Widespread use of an image, licensed or unlicensed, does not reduce actual damages from each infringing use. In fact, pervasive theft of intellectual property is a good argument to increase awards of statutory damages by some multiple of actual damages to deter further willful ignorance of, or casual indifference to, copyright law. Arguments that Whalers Realty’s and Luxury Living Maui’s infringements are excusable only emphasizes the need for awards of statutory damages in excess of actual damages to deter such infringement.
The use of all of the images, including the Iao Needle Sunset image at the Whalers Realty website, appear to be in violation of Section 1202 of the Digital Millennium Copyright Act (“DMCA”) by removing copyright management information from the images and/or by placing false copyright management information on the images. Section 1202 of the DMCA provides:
§ 1202. Integrity of copyright management information
(a) FALSE COPYRIGHT MANAGEMENT INFORMATION. — No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement —
(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management
information that is false.
(b) REMOVAL OR ALTERATION OF COPYRIGHT MANAGEMENT INFORMATION. — No person shall without the authority of the copyright owner or the law —
(1) intentionally remove or alter any copyright management information,
**** (3) distribute ...copies of works, or phonorecords, knowing that
copyright management information has been removed or altered without authority of the copyright owner or the law,
The DMCA provides for minimum statutory damages in the sum of not less than $2,500 or more than $25,000 as to each violation. Copyright management information includes the name of the author of the work. The photographer’s copyright management information is included with his images where those images legitimately appear, but it has been edited or omitted from three of the images used on your webpages. False copyright management information has been inserted on one of the images. Publishing the images without copyright management information, when Whalers Realty and Luxury Living Maui could have easily located a legitimate source with copyright management information, also violates the 17 USC § 1202(b)(3) proscription against distributing copies of a work knowing that copyright management information has been removed.
This could subject you to minimum statutory damages of $10,000 for the DMCA violations concerning the multiple images, in addition to attorneys’ fees and costs, as well as additional damages for the copyright infringements. The number of image uses at these webpages and Facebook pages would result in substantial actual damages. An award of statutory damages for the copyright infringements would likely be multiples of actual damages and would also include the attorneys’ fees and costs of bringing suit.
For settlement purposes and in order to avoid the delay of litigation, my client will settle his DMCA claims and copyright infringement claims for the known infringements identified here and in my previous letters by issuing a release for the infringing past uses at the websites and Facebook pages identified, for a payment of $17,500, paid in full before close of business on August 1, 2013, without my clients being caused to incur further attorneys’ fees and costs. Any further attorneys’ fees and costs that my client must incur in order to resolve this matter will be added to the settlement demand. This settlement amount anticipates removal of all uses of the images from the websites and Facebook pages by August 1, 2013 with no further uses. Any other uses of the images, or any other image must be negotiated separately.
Accordingly, we hereby demand that you:
(1) Immediately cease and desist from all unlicensed uses of the above images, and remove the images from the websites and Facebook pages. Please preserve the electronic evidence of your source of the images and the date that they were uploaded to your webpages.
(2) Remit the full $17,500.00 to my office by August 1, 2013.
(Payable to: XXXXX XXXXX Street AAL, Client Trust Account)
J. Stephen Street, Attorney at Law 134 Maono Place Honolulu, HI 96821
A copy of the transmittal for your payment with a copy of the check should also be mailed directly to: Vincent K. Tylor, P. O. Box 510164, Kealia, Hawaii 96751.
Should you choose not to cooperate with these demands, we reserve the right to seek all available remedies, as well as attorneys’ fees and costs. You should consult with counsel experienced in copyright litigation concerning this matter.
Please confirm that a litigation hold was instituted as to all evidence related to the use of these images by Whalers Realty, Inc. and Luxury Living Maui in all media, print, website, etc, including electronic evidence of the source of the images used by Whalers Realty, Inc. and Luxury Living Maui.
I hope we can now resolve this matter without further delay.
The settlement discussion and offer contained herein is made subject to Rule 408 Federal Rules of Evidence, and is not an admission of the value of any claim. Nothing contained in, or omitted from, this communication waives any of Mr. Tylor’s rights, claims, remedies, and contentions, whether factual or legal.
Enclosures: (1) Images (2) Proofs of Copyright Infringements
Sorry for the slow response. I took a few hours and did some research and considered what little I know about the specific facts for your situation.
First, a disclaimer: please note that the information provided on this website is general information, not individualized legal advice. Your use of this website is not intended to create, and does not create, an attorney-client relationship. My answering questions on this website is not an offer to represent you. I are admitted to practice in various jurisdictions and before the U.S. Patent and Trademark Office. This website is not an offer to practice in a jurisdiction, in which we are not admitted.
Now I can make general comments for your consideration.
Link to Relevant Statute: http://www.law.cornell.edu/uscode/text/17/504
Also, as you know, this is a public website so please be careful as to what you post on here. Anyone with internet access can access this answer.
First, I have verified that a person by the name of Vincent Khoury Tylor has registered copyrights to photographs under VA 1-696-555 and VA 1-789-671
Link to COPYRIGHT OFFICE Search Page:
For VA1-696-555 . . . . “Search For:” VA0001696555 “search by” Registration Number
Type of Work: Visual Material
Registration Number / Date: VA0001696555 / 2009-12-17
Application Title: Hawaii 2000.
Title: Hawaii 2000.
Description: Electronic file (eService)
Copyright Claimant: Vincent Khoury Tylor. Address: P.O. Box 510164, Kealia, HI, 96751, United States.
Date of Creation: 2000
Date of Publication: 2000-01-01
Click on his name "Tylor, Vincent Khourby, 1962" at the bottom of the page for a list of his registered photographs.
Under 17 U.S.C. § 412, statutory damages are only available in the United States for works that were registered with the Copyright Office prior to infringement, or within three months of publication.
While the images were published between 2000 and 2003, their copyrights were not registered until 2009-2012.
It seems statutory damages (under 17 U.S.C. § 504) may apply in your case (simply a point that needs to be verified) should they be able to prove infringement.
The basic level of damages is between $750 and $30,000 per work, at the discretion of the court.
STATUTE: 17 USC §504
Innocent Infringer 17 USC §504(c)(2)
Consider this quote from the statue:
“In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.”
Such is the “innocent infringer defense” and there are in fact innocent infringers and "innocent infringement" does happen.
The problem is that the first response of EVERY copyright infringer is a version of the “innocent Infringer defense” and the courts have heard every excuse under the sun which means if one claims this defense one has an uphill battle proving same.
First, the courts have held that “specific intent” to violate a copyright is not required to be liable for copyright infringement. Coogan v. Avnet, Inc., 2005 WL(NNN) NNN-NNNN(D. Ariz. 2005).
A defendant seeking to establish the innocence of an infringement must not only establish its good faith belief in the innocence of its conduct, it must also show that it was reasonable in holding such a belief. Peer Intern. Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1335-1336 (9th Cir. 1990).
That said, the point is that this issue is not the Slam Dunk that Mr. Tylor’s attorney would have you believe.
What I recommend you do is:
Monty, thank you very much.
This gives me a better perspective.
I truly did not know.
Because I do not write any content for the site, I have 2 ghost writers who put together content and post for me.
On top of that the writers were recommended by Bump Networks, the web developer who referred me to them initially as being good choices.
This is all verifiable.
Does this add stronger posturing to my case?
The paragraph below presents the issues you need to address to prove the “innocence of an infringement”.
(1) Good faith belief in the innocence of one’s conduct; and
(2) That such belief is reasonable.
Now consider this case:
Schiffer Pub., Inc. v. Chronicle Books, LLC (ED Pa 1/11/05)
1) the large scale of the copying;
2) Chronicle's act of taking the book off hold and accepting orders again after it was aware of the potential infringement; and
3) the copyright notices on the books should have caused Chronicle to investigate further.
11. Other factors militated in favor of an award less than the statutory maximum, including Chronicle's quick decision to place the book on hold and its attempts to resolve the matter amicably.
I believe such facts may help in your case.
1. You did not write any content for the site . . . You had 2 ghost writers who put together content of your website; and
2. On top of that the writers were recommended by Bump Networks, the web developer who referred me to them initially as being good choices.
So basically you are saying:
“Hey, I personally do not develop websites nor do I wish to develop websites. So I hired professionals to create my websites. One reason I hired professionals is to avoid mistakes such copyright infringement. I assumed professional website designers would know better than to commit copyright infringement.”
Seems like a good argument IF you took down the infringing photographs when you learned of the copyright issue. Any continued use of the photos only hurts your position and makes it more likely such infringement will be considered willful infringement and treble damages (3x damages) awarded.
Consult an IP Firm for a more thorough evaluation.Good luck. You have an uphill battle ahead of you but it is far from hopeless.
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