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Run-DMC, the iconic hip-hop trio, clearly realized the huge cool factor in the pictures taken of them by the renowned photographer Glen E. Friedman.  So, too, did Sony Music, which secured rights from him allowing Run-DMC fans to download his hot pictures as “wallpaper” for their computer screens.

But the shooter, legally speaking, cried “Whaddup?!” when he learned that Live Nation Merchandise had found his images’ sufficiently compelling that it used five of his pictures on T-shirts and a wall calendar. The company said it had a process by which it asked Run-DMC to approve the sale of the goods.

It wasn’t clear with the artists, though, that they needed to secure copyright approvals from Friedman. The colloquy over what went wrong got set right recently by the U.S. Court of Appeals for the Ninth Circuit, which rejected some of Friedman’s claims but left Live Nation open to potentially paying even more for a “willful” whoops — possibly removing copyright markings from the photographer’s works and infringing on his rights to them.

The power of pictures

The rise of popular music in the 20th century was fueled, in part, by the distinctive still and moving imagery depicting its top artists, with some cultural historians saying the entertainment industry wasn’t dubbed “show business” for naught. Where would hip hop be without fine photographers capturing it at its best?

Friedman has played his part in the rise of hip hop. His  work, the appellate court noted, has been featured on record covers, published widely, and displayed in gallery exhibitions. He has documented  subcultures besides hip hop, including punk rock and skateboarding. His site notes that he got on film early in their careers notables like Fugazi, Black Flag, Public Enemy, Beastie Boys, Ice- T, and the Dead Kennedys, as well as skateboarders Tony Alva, Jay Adams and Stacy Peralta.

His 1980s photographs of Run-DMC appeared in a 2005 book of his work. He granted a license to Sony Music to reproduce some of his shots of the trio on a website but insisted the pictures must carry markings to show Friedman owned the copyrights.

Infringement lawsuit

After learning about Live Nation’s merchandise bearing his pictures, he sued. A district court found that the concert and merchandising giant had submitted to Run-DMC some of its routine forms. Those documents asked them to sign off on the development of the products displaying Friedman’s images but did not discuss with the performers the need to secure rights from the photographer.

The lower court agreed with parts of Live Nation’s arguments and some of Friedman’s, prompting him to appeal in a case argued in February.

The appellate opinion, published in the late August and written by U.S. Circuit Judge Marsha Berzon, exposes Live Nation to the possibility of additional damages by restoring Friedman’s claims that the company willfully infringed on his work and removed copyright management information for his photos that it used. But the appellate court limited the number of instances of damages for the photographer, rejecting his claims that he was owed more than $3 million because 104 downstream retailers sold the infringing Live Nation products.

Willful infringment?

Live Nation, on appeal, stipulated that it infringed on the photographer’s work. But the appeals court emphasized Friedman, as the copyright owner, carried the burden to prove willful infringement, as part of “an assessment of a defendant’s state of mind.” The court saw evidence of this in Live Nation’s dubious dealings with Run-DMC, failing to make clear to the artists their role in securing Friedman’s approvals for his work.

The court also cited statements by company employees, indicating Live Nation assumed that rights were secure unless the artists it contacted rejected merchandising plans because they knew they lacked permissions. And the judges also looked askance at an employee email about the disputed photos, in which a Live Nation staffer, in an unrelated matter, stressed that the company should not “use ANY Glen Friedman … Photos for RUN DMC” (emphasis original). The email said Friedman “owns all the rights to his photos and is really not interested in using them for [m]erchandise and he is really expensive to even get clearance for.”

All the evidence, the appellate court said, could persuade a jury that “Live Nation’s … procedures amounted to reckless or willful blindness with respect to Friedman’s intellectual property rights.”

The court examined photos in his book, those on the Sony web site, and those used by Live Nation, finding “striking similarities” among them all, but the, “only material difference in the Live Nation versions was that the [copyright management information] was missing.” The appeals judges said there was an issue for trial to determine if Live Nation had scrubbed this key information and might be subject to penalty.

Limits to a claim

As for Friedman, because he did not name and bring in all the other downstream parties that he claims sold infringing merchandise, he is “limited to one award per work infringed by Live Nation,” the appellate judges said, tossing out the photographer’s assertion he should recover millions. That was a potentially big break for Live Nation.

At the same time, the appellate court’s restoration of Friedman’s claims of willfulness increased Live Nation’s possible case cost: by statute, without this finding, “with respect to any one work, for which any one infringer is liable individually,” courts may award “a sum of not less than $750 or more than $30,000.” But “in a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000.”