Legal


What Lawyers See When They Look at Editorial Photography Contracts

June 20, 2016

PHOTO BY THERESA RAFFETTO FOR PDN

Excessive embargo periods and murky language regarding licensees and "publisher products" are a few of the terms that lawyers found problematic.

When TIME Inc. sent a new agreement to all of its photography contributors in November 2015 and warned that they had to sign it by January 1, 2016, there was collective outrage at many of its new terms. Many photographers refused to sign and tried to negotiate individually, through agents and through lawyers, for better terms. In speaking with photographers, licensing agents and reps about the TIME Inc. agreement, PDN editors were reminded that photographers feel many other editorial agreements are also unfavorable to them. For instance, Condé Nast, photographers and agents told us, will send a “work-for-hire” agreement to new contributors. Only if a photographer refuses to sign a “work-for-hire” deal will the company send a different agreement that lets photographers retain the copyright to their assignment images. The message seems clear: the massive media company will get away with what it can, and it’s up to photographers to push back and ask for what they believe are fair terms.

To help photographers understand more about contract terms and conditions, we asked three attorneys who represent photographers to review and comment on five editorial agreements photographers provided to PDN. Mickey H. Osterreicher, Esq., is General Counsel for the National Press Photographer’s Association; Nancy E. Wolff is a partner in Cowan, DeBaets, Abrahams & Sheppard LLP; and Carolyn E. Wright, Esq. works with photographers and writes about photography and law at photoattorney.com. Wolff and Wright reviewed contracts from Hearst, Rodale and Prometheus Global Media, while Osterreicher reviewed agreements from Condé Nast and The New York Times Company. They critiqued certain clauses that they felt limited the rights of freelance photographers, or required them to agree to unreasonable warranties and indemnifications.

Here’s what they had to say:

FROM A 2015 AGREEMENT WITH HEARST FOR AN ASSIGNMENT FOR O, THE OPRAH MAGAZINE:

3. (a) Rights Included in Fee: For the Fee, Hearst shall have the following rights: 

(i) Initial Publishing Rights: First worldwide magazine and periodical rights to publish the Work in the Magazine and ancillary promotion thereof. Unless Hearst agrees otherwise in writing, you agree not to resell or republish the Work for an embargo period of exclusivity of ninety (90) days in North America and one (1) year throughout the rest of the world, in each case measured from the on-stand date of its initial publication in the U.S. edition of the Magazine. 

Really the embargo is one year because it’s very hard to restrict [images to specific regions]. Maybe some editorial libraries can put a North American restriction on an image and then worldwide after one year, but you’re going to have to be careful if you want to reuse these pictures. It’s hard not to license things on a worldwide basis because most articles are published in both the print an online version.
—NANCY E. WOLFF

(ii) Other Rights: Hearst and its licensees shall also have the perpetual, worldwide rights, for no additional consideration, to publish, re-publish, use, re-use, distribute, disseminate, display and otherwise include the Work in all print and non-print media and formats and by all means and technologies now known or hereafter developed, including ancillary promotion of all the foregoing. Such rights will be exclusive during the embargo period, and non-exclusive thereafter. Hearst will have the right to retain the published images and outtakes on file for such additional use and any other uses permitted hereunder.

This term is too broad, as Hearst is not limited by whom it may designate as a licensee. Hearst could allow any entity to use the photographer’s work with the broad license granted above. Further, the photographer must determine whether the fee is sufficient to give Hearst such a broad license to the work.
—CAROLYN E. WRIGHT

They get to keep all your outtakes, which really means you can never grant any other user an exclusive on images you’ve done on an assignment because you never know if they [Hearst] are going to use an outtake, and this grant of rights does not seem to be limited to anything in particular. There are no reuse fees for the additional uses which photographers counted on at one time. Unfortunately I think it’s becoming more common, but what you’re really doing is you’re getting paid one time for Oprah, but then it becomes a part of their image library and available for use in other publications. Unless the publication has set fees for other uses, it is a bad trend for photographers because they are losing secondary income.
—N.E.W.

(b) Publication by You: During the embargo period of exclusivity, Hearst will not unreasonably withhold its consent (which must be granted in writing) to your request to resell the Work in countries where Hearst is not interested in republishing the Work. In the event that you republish the Work after the embargo period (or during such period as permitted by Hearst), you will be solely responsible for obtaining any clearances or permissions that may be necessary for any subjects depicted in the Work (including but not limited to persons or property). You also agree to notify Hearst of any resale of the Work. You agree to require any stock house or agency representing your Work to abide by these restrictions. You agree that the Magazine will receive suitable credit upon your exercise of the foregoing rights; however, failure of a subsequent publication to provide such credit will not be deemed a breach of this Agreement, provided that you can demonstrate that you required credit at the time you granted the rights.   

It does give you an option to contact them [to license the images] during the embargo period in parts of the world where they’re not interested in republishing the work, but it just means you need to be a lot more hands-on and make sure that you get permission, which is difficult if you are distributing through another image library. It means if [your licensing agency] wants to make a sale they have to come back to you, you have to go back to Hearst. It makes more hurdles for you to be able to relicense this material. They’re also asking to receive suitable credit. You can’t count on you getting credit, or the magazine getting credit; while it is not a breach of contract, many other publications will not want to credit the original Magazine which makes the request unreasonable.
—N.E.W.

(c) Option to Kill or Re-Assign: If the Work is not accepted for publication in the U.S. edition of the Magazine, Hearst shall have the exclusive option to reassign the Work for publication by Hearst or by any of its affiliates or licensees in any media, now known or hereafter invented. In such case, you will receive payment equal to the Fee and the assignee will have all the rights set forth herein. In the event the Work is not accepted for publication or reassignment, Hearst will pay you your expenses and a “kill fee” equal to twenty-five percent (25%) of the project fee or one hundred percent (100%) of the day rate, as applicable to the assignment. However, nothing in this agreement will obligate Hearst to actually publish the Work, even if it has been accepted for publication.   

If it’s not used, how do you deal with the embargo? It’s not exactly clear that if they don’t use it you can immediately reuse the images.
—N.E.W.


Limiting photographers’ rights to license their work after an embargo period compromises important sources of income, lawyers say.  Photo by Theresa Raffetto for PDN. 

FROM A CONTRACT GOVERNING ANY ASSIGNMENTS A PHOTOGRAPHER DOES FOR RODALE’S MEN’S HEALTH MAGAZINE:

1. Publication Rights Photographer hereby grants to Publisher first publication rights and ongoing rights as described below throughout the world. For a period of one (1) year from publication of the Photograph(s), publication rights are exclusive to Publisher and irrevocable. 

A one-year embargo is fairly lengthy for magazines. Typically the exclusivity would be more like three months and sometimes even less. It really depends on how timely the information is, so if for example you were doing an assignment for a news magazine, you would want a shorter period because there would be less value to these images afterwards…. I don’t know what happens if they choose not to publish them. If any image in an assignment is published, then the embargo period starts ticking, but if no images are published then the embargo period never ticks and essentially the pictures would never come out of embargo.
—N.E.W.

Publisher’s rights include: 

(a) The exclusive right to publish the Photograph(s) prior to any other party in any form throughout the world in the above-named magazine.

(b) The ongoing right to publish and use the Photograph(s) in the magazine and in advertisements and promotions for the Publisher and/or the Publisher’s products without additional payment. 

(c) The ongoing right to publish and use the Photograph(s) in foreign editions of the magazine, branded special interest publications, and/or any magazine-related digital publications and products, without additional payment.

“Publisher products” are not defined. So what kind of products does this publisher make? Are they print products? If you’re a photographer that has a business where you sell fine-art prints, and the publication sells prints, that could interfere with your fine-art print market, so you want to know what those products are and how they’re defined, and maybe negotiate to cut that out.
—N.E.W.

(e) The ongoing right to publish and use the Photograph(s) at any time in any other publication or Brand of the Publisher in consideration of a one (1) time additional fee equal to fifteen (15%) percent of the original compensation on a pro-rated, by image basis. [In the agreement, “Brand” means “any of Publisher’s trademarks/publications or properties either singularly or sequentially published or disseminated, appearing in whole or in part, in any media and in any format, in connection with a common identity or logo, is governed by specific editorial guidelines, and exhibits a unique set of highly recognizable, defining characteristics. —Ed.]

Rodale publishes a lot of books. I’ve done book publications with Rodale, so for 15 percent of the original compensation they can put your image in a book? I would want to ask about that because 15 percent seems pretty small for an additional fee.
—N.E.W.

(g) In the event that any Photograph is used as a cover Photograph for any issue of the above-named magazine, the ongoing right to reproduce, display and otherwise use the Photograph for any purpose (including, without limitation, advertisements and promotions) without additional payment. This right includes the right to modify headlines, bylines, sell lines and captions in such uses. Photographer agrees that Photographer may not, and will not, authorize the reproduction, re-use, or other exploitation of a cover photograph or any outtakes taken during the cover photo shoot without the prior written consent of the Publisher. 

The original phrase allows Rodale to use the Photograph too broadly. It would be fair for Rodale to use the cover Photograph to advertise and promote the magazine, not for “any purpose.”
—C.E.W.

[Wright would rephrase it thusly: (g). In the event that any Photograph is used as a cover Photograph for any issue of the above-named magazine, the ongoing right to reproduce, display and otherwise use the Photograph for advertisements and promotions of the magazine without additional payment.]

The photographer can’t use the cover photo with the brand but often the cover photo can be an important photo for the the photographer. You may want to relicense it or use it [for] prints, and also you would want to be able to use it in your portfolio. A restriction on the cover and outtakes without the prior written consent of the publisher is too restrictive and broad.
—N.E.W.

FROM A 2015 AGREEMENT WITH PROMETHEUS GLOBAL MEDIA THAT WOULD GOVERN ALL ASSIGNMENTS A PHOTOGRAPHER DID FOR THE HOLLYWOOD REPORTER AND BILLBOARD:

1. Artist grants to PGM a non-exclusive license to publish the Work in and on The Hollywood Reporter and Billboard (including without limitation digital version of the print magazines, branded websites and social media pages/channels) and in any promotional materials in connection therewith (the “Publications”) for the fee agreed to by PGM and set forth on the Submission Form concerned (the “Fee”). The Publications or any part thereof may be produced, manufactured and distributed at any time in perpetuity throughout the world in any format now or hereafter known by any method now or hereafter known, including without limitation, print, worldwide web, Internet or other digital media. Additionally, Artist grants PGM the right to license the Work to database content aggregators and entities creating editorial versions of the published content.

It says the publications may be produced, manufactured or distributed at any time in perpetuity, so it seems to me that once you do an assignment for them, they can use the image forever for the same fee in one of those two publications. I also highlighted the line that says “Artist grants PGM the right to license the work to database content aggregators and entities creating editorial versions of the published content.” What I think PGM is asking for is the ability to license the work in the context of the editorial version to content aggregators, but it’s drafted in a way that it could be [licensing] the work itself. It should be limited to the work within the editorial context, not individually.
—N.E.W.

2. Artist shall retain copyright ownership in the Work, including the right to license others to reprint or republish the Work in any and all media, provided that Artist shall not republish or authorize the Work to be republished earlier than 3 months following the date of first publication by PGM of the issue concerned or first digital publication, as applicable, in each country, on a country by country basis. Work used on the cover of an issue may not be used for 1 year following date of first publication by PGM of the issue concerned in each country, on a country by country basis. PGM shall own all rights, including without limitation, all copyright in the Publications and Artist shall acquire no rights in the Publications by virtue of inclusion of the Work in the Publication or otherwise. If the Work is not submitted in a timely manner, PGM will be under no obligation to pay the Fee concerned to Artist. 

If work is not submitted in a timely manner, then there is no obligation to pay the fee? Then they can’t use it. You can’t not pay someone and then use their work. I have a problem with that statement.
—N.E.W.

[2. cont.] Payment will be issued no later than 45 days following the date of publication stated on the Submission Form concerned. Documentation of any reimbursable expenses that PGM has agreed to in writing must be submitted within 30 days after the article deadline and will be payable no later than 45 days following PGM’s receipt thereof.   

3. PGM shall have the right to acquire the copyright in the Work, subject to an additional fee to be paid to Artist, which fee shall be mutually agreed by Artist and PGM.

The language is a little odd. Does that mean that you have to mutually agree with the publisher, or do you have the right to reject the amount and not sell the copyright? Because it says they have the right to acquire. I would prefer to say they have the option. A right sounds like you can’t say no.
—N.E.W.

4. Artist warrants and represents that: . . . (c) the Work does not infringe the rights of any person or entity (including, without limitation, any copyright, right of publicity or other intellectual property right); and (d) Artist has obtained any third party permissions or clearances necessary for PGM’s publication of the Work. . . . Artist shall indemnify and hold PGM harmless from any and all costs, expenses, claims and damages which arise in connection with any allegation which, if true, would constitute a breach of Artist’s representations and warranties herein.

Sections (c) and (d) should be eliminated from the warrants required of the artist. They call for a legal opinion as to whether PGM’s publication of the Work will violate any intellectual property right.  Since the artist doesn’t know and can’t control how PGM will use the work, PGM, not the artist, should assume the risk, including paying for the costs, expenses, claims and damages, that come from PGMs publication of the work.

Further, when a photographer agrees to “indemnify” a company, the photographer must pay for the financial loss the company incurs, such as a settlement or a court award, either directly or through reimbursement. “Hold harmless” means that the photographer will not make a claim against a company if claims are made against the photographer for PGM’s use of the work. Agreeing to these contract provisions can be costly but a company rarely will seek defense costs or indemnification from the photographer unless the photographer has done something wrong and has significant assets worth seizing. Nevertheless, photographers should accept these terms only when willing to accept the consequences.
—C.E.W.

FROM A 2014 AGREEMENT FROM THE NEW YORK TIMES COMPANY GOVERNING ANY ASSIGNMENTS A PHOTOGRAPHER MAY DO FOR THE NEWSPAPER:

3. You acknowledge that the Work has been commissioned by The Times as a contribution to a collective work and that The Times’s interest therein arises as a “work for hire” under the Copyright Act. 

I believe this is a very dangerous precedent and unless the compensation is considerably more than one in which the creator retains the copyright should be strongly considered.
—MICKEY H. OSTERREICHER

[3. cont.] The Times hereby assigns to you a joint copyright interest in and to the Work such that the worldwide copyright in all Works created pursuant to this agreement shall be deemed joint works owned by The Times and you. In the event the Work is deemed not to be a “work for hire,” you hereby assign to The Times a joint copyright interest in and to the Work to effect joint copyright ownership.

“Joint copyright ownership” severely limits the use of the work by the creator and should be compensated accordingly.
—M.H.O.

6. Notwithstanding that The Times and you own a joint copyright in the Work, neither party shall have any obligation to share revenues generated from its exercise of the foregoing rights, except that The Times will pay you fifty percent (50%) of the gross receipts received by The Times from the syndication of the Work. The Work is “syndicated” when it is sold individually, and not as part of the Newspaper or along with other works published in the Newspaper, to a third party, for republication in any form. Thus, for example, the inclusion of the Work in The New York Times News Service is not a syndication for which compensation would be owed under this paragraph.

Nice that The Times is willing to pay 50% of “gross” and not “net” (after deductions) receipts. Of course if [The New York Times News Service] is the only way in which The Times syndicates its work, then the willingness to pay 50% of gross receipts is totally negated.
—M.H.O.

FROM A 2013 AGREEMENT WITH CONDE NAST THAT GOVERNS ANY ASSIGNMENT A PHOTOGRAPHER WOULD SHOOT FOR ANY OF THE COMPANY’S PUBLICATIONS:

2. Exclusive Rights: Freelancer owns the copyright in the Works and hereby grants to Company the exclusive first worldwide right to publish each Work, which exclusivity lasts until ninety (90) days after the on-sale date of the print issue of the publication in which the Work is first published, and for cover photographs (and any photograph from the same shoot as any cover photograph or cover try) until one (1) year from such on-sale date. In instances where a Work is first disseminated on a Company affiliated Web site or service prior to appearing in a print issue of a publication, Company’s exclusivity period shall continue through the above-specified applicable time period after the on-sale date of the print issue of the publication. Freelancer will not publish or use or allow anyone else to publish or use any of the Works for any purpose until the applicable exclusivity period has expired. Company’s exclusivity extends to each and every Work taken at the shoot or as a result of the assignment until the applicable exclusivity period has expired. Freelancer will not allow any cover photograph (or any photograph similar to a cover photograph) to appear on the cover of any other publication, at any time, without Company’s prior written permission.

While the freelancer may own the copyright, the broad rights granted to the company herein may severely reduce and limit the freelancer’s ability to market and use his or her own work under that copyright. [The limitation of requiring “prior written permission”] directly impacts on the “retained copyright” of the freelancer beyond the embargo period.
—M.H.O.

4. Miscellaneous Rights: Company has the sole discretion to decide whether, when, and how to publish any Work and the right to crop, retouch and otherwise modify the Works. Upon Company’s request, Freelancer will be available for and will cooperate with Company’s fact checking and will supply Freelancer’s research material relating to the Works. In the event Company returns any original material to Freelancer, Freelancer shall promptly loan them to Company upon Company’s request. 

This too directly impacts on the freelancer’s rights under copyright. Also, for no additional fee the freelancer agrees to store and resupply the company with the work.
—M.H.O.

6. Foreign Rights: Company may allow any of Company’s or its affiliates’ owned or licensed publications outside of the United States, and/or foreign language publications in the United States (in each case “foreign publication”) to acquire the exclusive first publication rights to each Work in that publication’s country and/or language of publication, such exclusivity to last for ninety (90) days beyond the on-sale date of the issue of the foreign publication in which the applicable Work is published. The foreign publication may acquire the rights by giving notice thereof within one (1) month of the U.S. on-sale date and by agreeing to pay a fee to Freelancer upon publication as follows: for United Kingdom, Germany, France, Italy and Japan: $200 for more than one-half page and $100 for one-half page or less; for all other countries: $100 for more than one-half page and $50 for one-half page or less. Notwithstanding the foregoing, in cases where more than one of Freelancer’s Works appears on a page, the total fee will be capped at the applicable rate for one full page. The other Rights (not including exclusivity), Warranty and Miscellaneous provisions of this agreement shall apply to such use by the foreign publication.

Very favorable rates to the company for foreign republication. [The fee for “Works being first Published by a Foreign Publication in other than print media”] amounts to either $40 or $20.
—M.H.O.

8. Releases/Restrictions:

a. Releases: Freelancer will obtain releases, on a form to be obtained from Company, from all persons and owners of property pictured in any of the Works. Freelancer may not agree to any restrictions, limitations, or right to review requested or imposed by any persons, including models, owners of property pictured in the Works, or others. Freelancer will immediately advise Company of any such request or attempted imposition.

Releases are not normally required for editorial work and [this] once again places additional restrictions and liabilities on the Freelancer.
—M.H.O.

c. Commercial/Advertising Use: For two years from the date of first publication of the Works, Free lancer will not allow any of the Works to be used at any time for any commercial or advertising purpose, whether or not Company’s period of exclusivity has passed, unless Freelancer first obtains Company’s express written consent, which Company may withhold in its sole discretion.

Retention of copyright by the freelancer notwithstanding—[requiring consent at the sole discretion of Condé Nast to use the images for any commercial or advertising purpose] is another severe limitation on that right.
—M.H.O.

d. Subsequent Use: If Freelancer makes any subsequent or other use of any Work, Freelancer is solely responsible for obtaining any necessary releases from any models, persons, or owners of property pictured in the Work. Freelancer will hold Company harmless from and against any claims by any person arising from any subsequent or other use.

Always be wary of these clauses—it means that if the company gets sued the freelancer [is responsible].
—M.H.O.

NOTE: The information in this article is provided for informational purposes only. It is not intended, and should not be taken, as legal advice. Contact an attorney for advice on specific legal problems.

Are there editorial contracts you feel are unfair to photographers? Let us know. Send an email to PDN@emeraldexpo.com with “Editorial Contracts” in the subject line.

 

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