Fashion attorneys are watching cases and enforcement affecting trademark law, privacy and sustainability.

Brands using celebrity photographs, even in single social media posts, should know where the photographs come from — and who might later come forward to stake their claim. 

Photographers and photo agencies are targeting perceived appropriation or unlicensed use of photographs that they claim they hold the copyrights to, and taking brands to court if it comes down to it. 

Backgrid USA Inc. on Friday sued iHeartMedia Inc. in California federal court, claiming that the media company, which runs iHeartRadio, used some 65 photographs — which Backgrid says it owns the copyrights to — on iHeart’s web sites and Instagram account. 

Federal copyright laws make such suits an attractive form of recourse, as they allow copyright holders to sue for statutory damages at the rate of up to $150,000 per infringement, if it is intentional, attorneys said. Suing for statutory damages means plaintiffs don’t have to show detailed evidence of the losses caused by the alleged infringement, or how much the alleged infringer benefited from it. Backgrid, which points to a similar prior dispute with iHeart over another set of photos, said in the latest suit that it is entitled to up to $9.75 million in statutory damages, as well as attorneys’ fees. 

“A number of companies have repeatedly benefited from Backgrid’s popular content by distributing, displaying and creating unauthorized copies of our photographs without compensating Backgrid for its original content, and without consent or license,” Joanna Ardalan, an attorney for Backgrid, said Monday.   

 “While we strongly prefer to resolve cases outside of court, Backgrid is sometimes forced to pursue legal action against companies that continue to violate federal copyright law in order to secure justice and just compensation,” she said. 

A representative for iHeartMedia could not be reached for comment Monday.

Backgrid has filed some two dozen other federal suits over the past two years against media companies and brands including Fashion Nova Inc. and Citizens of Humanity LLC, according to PACER records.  

These types of claims, which fashion brands may also be targeted with, are proliferating at a time when celebrity photos are ubiquitous on social media, and sharing them without permission is all too easy, attorneys said. 

“Back in the day, you would license the use of a photo for a magazine [for example], and that was it,” said Nicole McLaughlin, who chairs Duane Morris LLP’s trademark, copyright, entertainment and advertising practice group. 

“On a social media platform, where it’s easy to click share, retweet, etc., it’s so simple now and I think that’s what the real problem is,” said McLaughlin. “Now once it’s out there, for the most part, it’s very difficult to control. Now these copyright owners have lost a lot of control over how their images are being used.”  

Meanwhile, the pressure is on for celebrity photographers to document their ownership of their photographs by applying for a copyright registration as soon as possible, attorneys said. In a case that had implications for photographers, the U.S. Supreme Court ruled in Fourth Estate Public Benefit Corp. vs. LLC  et al. in March that a copyright registration goes into effect when the Copyright Office grants the registration. 

In July, a federal judge in New York relied on the Fourth Estate decision to grant Gigi Hadid’s motion to dismiss a suit by Xclusive-Lee Inc., a New York-based company that claimed it held the copyright to a paparazzi photo of her. Under the Fourth Estate ruling, plaintiffs suing have to have an approved copyright registration and not just a pending application when they file their suit. 

Nonetheless, brands have to be careful to seek the necessary approvals when using celebrity photos for promotional purposes. 

“If you’re a brand using someone’s name, their photo, their likeness, or even the sound of their voice, you should first contact the person or the person’s agent, and get permission and a license to use it for the purposes you want to use it — and preferably written permission,” said Sherri Blount, partner at Fitch Even Tabin & Flannery LLP. 

“If the brand is trying to use it for a commercial purpose, they may need to get the permission of both: the celebrity and the photographer,” she said. 

Photographers’ agents and representatives are increasingly having to deal with the problem. Anne du Boucheron, owner of Anne du Boucheron Inc., which represents Alexi Lubomirski, Alique, Sharif Hamza and other photographers, has dealt with more than 20 incidents in the last few months related to copyright infringement. Each brand that infringes is requested the images be taken down and in some instances, cease-and-desist letters have been sent. To date, none have resulted in lawsuits, du Boucheron said. Settlements have been reached for some of 20-plus incidents and some are ongoing, du Boucheron said. She was inhibited from providing a price range for those settlements, due to confidentiality agreements.

In general, once notified, most violators will realize they have been delinquent, she said Monday. When celebrities are involved, contracts mandate that you pursue and resolve any unauthorized use of their images, which could lead to legal action, she said. In certain instances, a celebrity whose image has been used without his or her consent may request a donation to the charity of their choice in addition to the settlement.

Du Boucheron said, “There are multiple issues. There are people using images that they lift from magazines’ web sites. What we have been focusing on are brands that take Instagram images and use them on the brand’s [social media] feed. I’m not sure if they are uploading them themselves or they’re taking them, or finding them on Instagram.”

The point of contention is that the brands will use those unauthorized images for commercial or branding purposes, she noted. “That’s when the problem arises. It is advertising or the commercial use of an image.”

Chris Boals, who also owns her own New York-based agency, said while all photographers are susceptible to the problem, those with a strong editorial presence are more vulnerable. “The more editorial they shoot, and the higher the profile the magazine has, the more views the imagery gets. It is very tempting for clients to lift beautiful imagery and use it as their own, when they have absolutely no right to,” Boals said, noting how these days photographers cover at least a portion of editorial shoot expenses, if not all of them — “thousands and thousands of dollars” worth.

Boals added, “They retain the copyright of the images, and hope that any reuse or syndication fees will help recoup those expenses, and ideally make them a bit of money back. The fact that there are clients willing to thwart this process, either knowingly or not, is troublesome. Copyright is legally inherent to the photographer/director, and permission and fees for any use need to be approved and paid for.”

Boals said confronting the user is really the only way of dealing with it. She said, “Often we know the client, and in my experience, they’re willing to immediately take the post down. But they are not willing to offer remuneration for copyright infringement, or pay for the usage, past or present. Our job is to defend the rights of our artists, and a decision has to be made together about how hard to push, especially when it’s an existing or regular client.”

From her standpoint, the issue is more prevalent because temptation is strong. “Why produce imagery when we can just use this one? We could never afford to produce this ourselves, so let’s just borrow it,” she said. Ignorance is another factor since people hired to do social media posts at some of these brands “have no idea what’s legal and what’s not, and the production and marketing teams aren’t controlling them,” she said. “Or, the client knows full well that it’s wrong, but it’s just too easy, and they’ve gotten away with it thus far, so there have been little to no consequences.”

Stacy Fischer, who has owned Exposure NY, an agency that represents photographers, set designers, casting directors, editors, hairstylists and other fashion professionals for 23 years, said the issue has built over time. “When Instagram first started, many agents looked at it as an exciting place to share imagery and for photographers to get their work out to a broader group of people. Now that it’s being used for commerce, it’s a very slippery slope. When photographers shoot editorials, a lot of the times they put their own money and resources into it. When brands are using their Instagrams as a brand platform, it’s really become the new advertising for brands,” she said. “What we see keep happening is just because a brand’s shirt is used in an editorial shoot, the brands feel that they have the right to repost that image. But the photographers own the copyrights.”

Fischer added, “What brands don’t realize is that we sign contracts with the magazines. Essentially, by a brand reposting during the embargo or the exclusivity period, they’re putting us in breach of contract. And the publisher could come after us for that breach,” Fischer said. “It’s a very, very tricky situation.”

Her approach is to try to resolve issues as amicably as possible, and nothing has gone to court thus far. There are conversations about breaches, though. “As agents, we’re not really looking for this to be a difficult situation with the brands. We’re just trying to help everybody understand that a photographer owns the copyrights and you can’t just take an image because a product, piece of clothing or jewelry that is in the editorial is from a brand.”