CUSTOM AND USAGE RULED NOT A DEFENSE TO COPYRIGHT INFRINGEMENT

It is surely not a good sign for a defendant accused of copyright infringement when the Federal District Court, in evaluating a defense that "everybody does it" and that use without consent is the prevailing custom and usage of the trade, makes a factual finding that the defendant "deliberately sailed in harm’s way."

That is the predicament Similar Entertainment, Inc. found itself in after Judge Kaplan in the Southern District Court in New York issued an injunction on March 9, 1999 against them, and in favor of Cherry River Music Co. for copyright infringement.

The case involves the creation and distribution of a Compact Disc of musical themes of popular WWF wrestlers, called Slammin’ Wrestling Hits, without obtaining the appropriate copyright permissions.

The impact of the decision is applicable to photography as well.

The defendant apparently believed it had completed the necessary requirements to obtain a compulsory license which permits use of musical compositions through payment of a license fee.

However, after the defendant knew, or reasonably should have known, that such a license had not been obtained, the defendant still failed to apply for it. Then, after the copyright owner commenced the copyright infringement action, the defendant delayed a hearing on the injunction application while continuing to manufacture and distribute the goods in an obvious attempt to circumvent any prohibition on such distribution.

The defendant argued that music companies [read publishers of photographs!] routinely, as part of a custom and usage in the industry, publish music before obtaining such licenses. The Court ruled otherwise, holding there were no prior dealings between the parties which might establish such a practice, and that the defendant failed to meet the test of establishing such a custom which includes "numerous purchases over a period of time."

The Court issued an injunction and ordered a modified recall of the CD’s shipped, at considerable expense to the defendant.

The lesson is clear for users of photographs. Publication of photographs in magazines or elsewhere without the prior consent of the copyright owner, which use is then followed by a "proposed" contract or license containing terms unacceptable to the photographer, will not, under the guidelines of this case, be a successful defense to copyright infringement!