Joint authorship of a copyright can be a challenging issue for courts to grapple with. If you ask a bystander to take a picture of you using your camera, and that person hands you back the camera before going on their merry way, does that make you and the bystander joint authors of the photograph for purposes of copyright ownership? In the recent case of Shah v. NYP Holdings, Inc., the Northern District of Illinois determined that the plaintiff (whose picture had been taken) and the bystander-photographer could not be considered joint authors without evidence of their mutual intent to enter such a relationship. Moreover, the court held that because the plaintiff had not in fact taken the photographs himself, he was not the sole author of the copyrights either. Accordingly, the court held that the plaintiff could not satisfy one of the prima facie elements of a copyright infringement claim—ownership of a valid copyright—and it granted defendants' motion to dismiss for failure to state a claim.
The plaintiff in this case, Vivek Shah, is a former aspiring actor who was convicted for attempted extortion and served over five years in prison after sending letters to millionaires in which he threatened their families if they failed to pay him millions of dollars. Prior to his arrest by the FBI, Shah had attended several parties in Hollywood where he posed in photographs with various celebrities. Each time, Shah asked a friend or bystander to take the photo. Following the Hollywood events, he posted the photographs to Facebook and IMDb. After his release from prison, Shah learned that the defendants in this action (including The New York Post, E! Entertainment, ABC News) had used the photographs of Shah in news stories about him without giving him attribution and giving only credit to Facebook and IMDb. By November of 2021, Shah had registered copyright ownership in twenty photographs. Shortly thereafter, Shah filed this lawsuit pro se against the media outlets alleging copyright infringement of his twenty photographs, violations of the Digital Millennium Copyright Act (DMCA), violations of the Lanham Act, and state law claims for deceptive business practices. The defendants filed a motion to dismiss arguing that Shah failed to state a claim for copyright infringement because he did not adequately allege copyright ownership. Shah maintained that his copyright registrations were prima facie evidence of ownership.
Initial ownership of a copyright vests in the author of a work. Usually the author is the person who creates the work, or in the words of the court, "the person who translates an idea into a fixed, tangible expression entitled to copyright protection." For photographs, the author is the person who handles the camera and clicks on the shutter button. Here, because Shah alleged that he gave the camera to another individual to take each of the twenty photos, the court held that he failed to allege that he is the sole author of the works. The court then considered whether Shah had a claim for joint authorship of the works with the various individuals who took the photos. Although Shah's allegations demonstrated an intent to be the sole owner of the cameras, the court found that Shah failed to allege any intent for both himself and the photographer to be joint authors. Without such intent, Shah failed to allege that he is either the sole or the joint author of the photos. Therefore, without allegations of authorship or transfer of ownership, Shah could not prove that he in fact owns the copyrights at issue and his claim for copyright infringement necessarily failed. Lacking ownership of a valid copyright, Shah also lacked standing to bring the DMCA claim and the court dismissed it on the same basis. The court then dismissed Shah's Lanham Act claim because Shah did not allege ownership of a trademark, and his allegations of improper reproduction of the photographs sounded in copyright and not in trademark law. Finally, any state law claims Shah might have had for reproduction of the photographs were preempted by the Copyright Act and also dismissed. Shah has appealed the judgment to the Seventh Circuit.
This case reminds us that absent a statutory exception or appropriate agreement to the contrary, the ownership of a copyright vests at fixation and remains with the creator of the work. If that happens to be a bystander taking your photo, you may be out of luck.
This case is Shah v. NYP Holdings, Inc., No. 21-cv-06148, 2023 WL 266511 (N.D. Ill. Jan. 18, 2023).
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