SCREEN SHOT LIABILITY OF COMPUTER BOOK AUTHORS 

IVAN HOFFMAN, B.A., J.D. 


Don't get caught in a screen capture trap.

Authors of computer books who use screen shots of third party web sites without obtaining permission to do so run the risk of substantial liability. Not only may they be infringing upon the copyrights, trademarks and rights of privacy and publicity of the owners of the protected material on those sites, but they may also be exposing their publishers to the same liability.

THE CONTRACT BETWEEN AUTHOR AND PUBLISHER

The way this generally runs is that the author makes representations and warranties to the publisher that all of the material, including the screen captures, is free and clear for the publisher to use, in all languages, in all media, etc., all as part of the author's grant of rights to the publisher. In the event that there is a controversy, the author's contract generally provides that the publisher may withhold from the author not only future royalties but future advances as well, and often not only as to the book in issue but "under all other agreements between the author and publisher," the latter clause being referred to as "cross-collateralization." (Read "Cross Collateralization in Publishing Contracts".)

And this often applies whether or not a litigation is actually commenced and whether or not the third party wins or loses. Meaning that even if it turns out not to have been an infringement, the author will generally be held accountable for all costs of litigation including attorneys fees, the latter not cheap under any circumstances--fortunately.

The end result is that *even if vindicated,* the author generally absorbs all costs and expenses including damages, if awarded, and all to a rather large extent. It could cost the author a significant chunk of the author's income for many years.

Thus, if the author loses, the author loses but even if the author wins, the author loses. Under these circumstances, the failure to seek a license for the material seems at best a poor choice. And given the incredibly simple way of avoiding that risk through appropriate licensing, I am totally at a loss to understand the reluctance of many authors to do so.

It should be standard operating procedure for the author to obtain such permission and for the author's publisher to insist upon it. In the end, getting a license is far less of a hassle than trying to deal with adverse claims after they arise.

I have been at both the litigation table and the negotiation table and, trust me on this, it is infinitely less expensive for the client at the latter. Help me is far cheaper than fix me.

THE BASIS FOR POTENTIAL LIABILITY

Screen shots may involve the use of text, graphics, photographs, names including the site name itself, likenesses, colors, characters, and potentially other forms of copyrightable material. As used in this article, "infringing" refers to taking an unauthorized screen shot of some or all of this material.

Copyright Liability

The owner of copyrighted material has a right to protect against the unauthorized display, duplication and distribution of her or his material. By taking a screen shot of such protected material on a web site and using the shot in a book you have written and the publisher has published, you may have infringed upon several rights of copyright. You may have made an unauthorized copy of the material. You may have then distributed the same without authorization. You may have made an unauthorized derivative work, which is a work that you created but that contains copyrighted material owned by another.

But there are additional copyright infringement issues that may not always be apparent to the author. The site may contain material that is owned by third parties, which third party material may or may not have been appropriately licensed by the site owner. This third party may be a party that is not related to the site owner or it may be the web site designer who may have retained substantial copyright ownership in the products of his or her creation for the site owner.

Let me explore your liability in these instances. If the site owner has no license to use the material of third parties, then by your act of republishing the unauthorized material you may have infringed not only on the site owner's rights but upon the rights of the third party owner of that material. Thus you may have created liability to two or more parties. The copyright law does not require you to know that you are infringing. Liability under the copyright law is called "strict liability," meaning that you can be liable even if you did not know you were doing something unauthorized. And in many instances, everyone who publishes an infringement is also an infringer.

Additionally, if you are lucky enough to have your book reviewed, either in a magazine or better still on a television program and they use the screen shot for which you do not have permission, the reviewer could also be liable. And while under certain circumstances a broadcaster may have some immunity, there may be claims made against the broadcaster anyway. And if the broadcaster is liable, just exactly who do you believe that broadcaster is going to turn to in order to hold it harmless?

On the other hand, if the web site from which you are capturing material has a license to use some third party material, that license may restrict the site owner's rights to further license that material. This means that if you take a screen shot, you may have caused the site owner to be in breach of her or his license agreement with the third party licensor, meaning that it is likely that you will again perhaps be liable to both such parties.

Absence of a copyright notice is no defense. Such a notice is no longer required under United States copyright law. And while this may assist you in claiming innocent infringement thereby potentially reducing your damages, it is not a complete defense to the underlying liability. So the mere fact that the site bears no such notice is not an excuse to snap a screen.

And if the site has been formally copyrighted, the owner of that site may be in a position to obtain statutory damages as well as attorneys fees from you. This means that the site owner does not have to prove any damages but can be awarded damages from $500.00 to $20,000.00 or even more for each infringement. Given this sizable risk, what can possibly be the benefit of not negotiating a license?

The Fair Use Defense

Some claim that taking screen shots is protected by the "fair use" defense since the site is being reviewed in a book and therefor falls within the scope of "criticism." (Read "Fair Use".)

You must be aware that "fair use" does not prevent a lawsuit. The doctrine, which is at best murky and unclear in its application, is only a potential defense to a claim of infringement. The standards for what is or is not fair use under a given circumstance will vary considerably and are often quite subjective in their application. It is not a firm standard and is not self evident. The third party is not likely going to wither simply because the author screams "fair use," no matter how loudly or frequently.

And that a given instance has not been litigated to any point in time is no assurance that the next case won't change a particular court's mind. There was the case where "The Nation" magazine was held to have infringed upon an autobiography of President Gerald Ford by the use of a passage of between 300-400 words and where the use of cited material was specifically held not to be fair use. There was also the case involving the photocopying of class notes for sale in which the retail store, doing the same thing that a student might do under the fair use standard, was held to have infringed upon the copyright of the professors.

In short, the "fair use" standard is not clear and the sort of unquestioned reliance upon the same, apparently out of nothing more than a sense of bravado, I find to be quite misplaced and highly inadvisable.

Trademark Liability

Many of the issues involving copyright are also relevant to potential trademark infringement as well. Nearly every site is going to have some sort of logo, title, mark or something that is potentially a protectable mark.

As with copyright, the absence of a notice, such as an R or TM or SM is not an indication that the mark is not protectable or even protected. Registration of the mark, either federally or on a state level, is not necessary to obtain protection.

And while names and short phrases may not be copyrightable, they may be protectable under trademark law. Therefore, your screen shot may be an infringement of the trademark in the name of the site itself. And if your screen shot includes the domain name, as it certainly will, you may have a trademark issue presented. While domain names and trade names may be different commodities, they are subject to many of the same legal doctrines. "Yahoo" is the perfect example. Originally a domain name, it has now become a valuable trade mark and name, used on all sorts of related materials.

There may be less of an issue, however, with regard to trademark infringement claims only because the essence of the trademark is to prevent confusion in the mind of the consuming public. Thus, if your text surrounding the screen shot is clear that no claim is made by you to any ownership or otherwise of the mark and you are merely using it for illustration purposes only, there may be no substance to the infringement claim. Using a trademark for what is known as "nominative" purposes is generally considered as not an infringement of the mark. But you are running the risk of stepping into murky waters.

On the other hand, trademark issues may turn out to be more of an issue than even copyright ones. In order to protect a mark, the owner must be aggressive in his or her pursuit of potential infringer in order to keep the mark from becoming "diluted." This means that, given a marginal case, the owner of the mark may be forced into some sort of legal action simply to keep the mark valid for all other purposes.

Rights of privacy, publicity, and libel

Taking an unauthorized screen shot and using it in a book or CD or otherwise may involve invasion of privacy and the rights of publicity.

This is what the federal Lanham Act says:

"(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."
And this is an example of how California treats the issue:
"3344. (a) Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person's prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian, shall be liable for any damages sustained by the person or persons injured as a result thereof. In addition, in any action brought under this section, the person who violated the section shall be liable to the injured party or parties in an amount equal to the greater of seven hundred fifty dollars ($750) or the actual damages suffered by him or her as a result of the unauthorized use, and any profits from the unauthorized use that are attributable to the use and are not taken into account in computing the actual damages. In establishing such profits, the injured party or parties are required to present proof only of the gross revenue attributable to such use, and the person who violated this section is required to prove his or her deductible expenses. Punitive damages may also be awarded to the injured party or parties. The prevailing party in any action under this section shall also be entitled to attorney's fees and costs."
Both these statutes deal with the commercial use of the name, likeness etc. of someone, whether or not a celebrity. So if your screen shot shows the personage of another and it comes out in a book, CD or otherwise for commercial purposes, you may be liable.

And, under California law the minimum damages for a violation of this statute are $750.00 and possibly much more depending upon the value of the right of publicity and/or the monies the violator may have received from such use.

Additionally, if the site contains libelous material, one who repeats a libel is equally liable with the originator. So if you take a screen shot of libelous material, you may be liable as well for repeating the libel. And it does not have to be a libel of a person. It can be a libel of a company and/or its products under certain circumstances.

THE ADVANTAGES OF A LICENSE

Given the significant potential liability, there are correspondingly significant advantages in seeking and obtaining a license.

The first such advantage of course is that you flesh out potential problems before they become problems. In the philosophy of Taoism and Buddhism, you make a problem not a problem. If you have difficulty with some licensor now, imagine what sort of problems you might have encountered had you used his or her material without a license.

Additionally, you may be able to obtain permission to use the material not only in your book, but perhaps in other media as well. Do not forget your contractual liabilities to your publisher. In your contract you have undoubtedly granted all sorts of rights to your "work" which, as therein defined usually includes all rights and permissions to use "additional materials." This clearly involves screen shots. If you have not obtained those permissions, you and your publisher may be liable not only when the book is published, but if any of those screen shots are used on a CD or in other formats.

And if you have obtained a license, it then also tells you in what media and formats you may use the screen shot so you know what you can and cannot do by way of marketing.

Moreover, the licensor will, at least if you have drafted your license effectively, represent and warrant that it owns the material it is licensing or has the right to license it. In the event there is any problem later on, at least you have the licensor to turn to to hold you harmless. Additionally, this license may be of great assistance in reducing any damages that may be awarded against you since you may then claim to be an "innocent infringer."

CONCLUSION

Let me again be clear so that no one confuses the message with the messenger. It is the role of an attorney to inform the client, the author in this example, of all aspects of the issue and the consequences as a result of choices the author may make. This means that the lawyer must explain both the need to license the material and the possibilities of a given use being held "fair use" or some other theory. It is then up to the client, the author, to make a *business* decision as to how to proceed. Free market capitalism and personal responsibility do not prevent any entrepreneur, including authors, from making bad decisions. Happens all the time.

Perhaps some might consider this to be overly cautious. With all due respect, I've been practicing law for coming upon nearly a quarter of a century pretty soon and my approach has been rather successful for my clients and in turn for me. "Cautious" and "lawyer" are two words that should be inextricably linked.

There are potentially many other issues connected to screen shots, not the least of which is that if you post the screen shot to your web site, say as part of the promotion of your book or otherwise, even your on-line service or Internet service provider could be liable. These and the other issues that may arise are beyond the scope of this article, which is not intended to be exhaustive of all the issues but illustrative of only some.

Taking someone's creativity over the Net is easy. Our mice have made infringement but a click away. And just as you may have taken someone's rights, even without intending to, someone may just as easily do the same to your rights.

It is only by protecting the rights of the other that your rights can be protected.

© 1996, 1997 Ivan Hoffman

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This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.


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