Saturday, January 9, 2010

When not to send a DMCA notice: the case of the racist Obama/Palin shoe-shine photo

In recent years, as discussion about copyright law has moved from the province of practitioners and academics to anyone with an Internet connection, numerous myths about the subject have emerged. One is that a "DMCA notice" is the universal means for addressing alleged web-based infringement. It's not. A DMCA notice is a specific type of communication, appropriate only for combating specific types of infringement. Sending such a notice in the wrong circumstances won't solve your legal problems, and will only make you look foolish.

Case in point is a purported notice recently received by blogger Patrick Frey of The notice was sent by an Australian photographer named Ted Szukalski, who took and owns the copyright in a photograph of a homeless man shining a woman's shoes. Much to Szukalski's (understandable) chagrin, someone unknown photoshopped the picture, altering it so that Barack Obama appears to be shining Sarah Palin's shoes. The altered photo circulated widely on the Internet, and was roundly criticized as racist. Frey included the photo in a post criticizing another blogger, Charles Johnson of Little Green Footballs, for referring to the photo as an example of "right-wing racism," when the incident cited by Johnson actually involved the forwarding of the photo by a Democrat.

Szukalski apparently wanted Frey to remove the altered version of the photo, so he sent what purports to be a DMCA notice. But, even assuming that Szukalski has a valid copyright claim (more on that dubious notion below), a DMCA notice is entirely inappropriate for these circumstances. Szukalski's notice cites Section 512(c)(3) of the DMCA. Section 512(c)(1) provides for a safe harbor from claims of "infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider," if the host follows certain steps, including promptly removing allegedly infringing material identified in a notice with the information listed in Section 512(c)(3). But the situation here does not involve "storage at the direction of a user"; it involves Frey himself making a copy of the photo, and posting it to his blog. If Frey infringed Szukalski copyright (again, more on that below), he is simply liable; he can't benefit from the DMCA's safe harbor. And Szukalski's procedurally correct move would either be: 1) send an old-fashioned cease-and-desist letter; or 2) sue Frey for copyright infringement. (There's no requirement to send any sort of notice before suing, though of course it's usually desirable to resolve things short of litigation.)

There's an additional reason Szukalski's purported DMCA notice was improper: such notices are effective only if sent to a site's registered DMCA agent. See 17 USC § 512(c)(2). has not registered such an agent, and thus, even if this incident did involve user-posted material, the DMCA safe harbor would not protect it from copyright claims. Sending a DMCA notice, which sets in motion a process for the site to lose the safe harbor if it doesn't remove the offending material, to a site that isn't even eligible for the safe harbor because it has no DMCA agent and so is completely ineligible for the safe harbor, is a fool's errand.

OK, enough about procedure. What about the merits of Szukalski's copyright claim against Frey? I think Frey's posting of the altered version of Szukalski's photograph is a classic non-infringing fair use. He posted it in the course of a lively political discussion about the allegedly racist nature of the photo, and other bloggers' interpretation of it. And the only way to have a truly effective discussion about such matters was to post the photo itself, so that readers could see what he was talking about, and judge for themselves. This is a paradigmatic example of the kind of "criticism, comment, [and] news reporting" at the core of fair use (and the First Amendment). It's entirely understandable that Szukalski doesn't like the fact that his photo was altered, and used in such an offensive way. But once that happened, he can't use copyright law to suppress discussion of what occurred.

But what about the people who originally altered Szukalski's photo or who (unlike Frey) copied and distributed it simply because they liked whatever message it conveyed? Were they engaged in fair use? I highly doubt it. If they wanted to communicate that Barack Obama should be shining Sarah Palin's shoes, they could license the photo(s) they needed, or create their own. But why should they have the right to take Szukalski's work, without compensation, just "to get attention or to avoid the drudgery in working up something fresh"? Campbell v. Acuff-Rose, 510 U.S. 569 (1994). People have the right to be racist. But they don't have the right to infringe others' copyrighted works to promulgate their message.

Update: Here's a thoughtful response from Szukalski himself.


  1. Sorry pal, an artist has the right to take whatever he needs, without permission. The fact the photoshopped photo exists is proof enough of that contention.

  2. @Anonymous 3:36:

    Your statement has no basis in the law. That an "artist" has the technical ability to do something doesn't give him the legal right to do so.

  3. Hello Ben,
    indeed this is an informative article. If this and Jonathan Bailey's article were available to me before I emailed Patrick Frey of I would not have done the "fools errand" as you put it. I have extensively explained rationale behind this action on and I hope majority of your audience will see it in a more complete light.

    I'd like to see an article, which would elaborate on what I should have done. Here I am, a photographer taking an image. The image get modified by unknown author and is "virally" distributed in USA via email, in many cases with my name attached to it (there are still copies of that image on the internet. Later due to a news story the image starts being published by news site and subsequently by blogosphere. No one explains or even acknowledges this image is an unauthorized derived work (plagiarism), no one shows as much as a link to original image. As a result I get called racist. There is no distinction in viewers/readers/email recipients eyes between the plagiarist and me.

    So, at first, I left comments on many of these sites pointing to this fact. I have also sent emails to various website owners. In some cases I get pointed to DMCA form. I guess since those were effective it may have put an idea in my mind that is the way to proceed about this. In a way I am glad Patrick, Ban and you commented on it. Firstly, I know now this is not the way to do it. Secondly, I have received some understanding (a reversed Streisand Effect). Yes, I have been criticized for the approach, but I have also made many people see I am not the author of what in many people's minds is a racist photograph and hopefully it shows I had no ill intend by sending these notices other than trying to clear my name of racist accusations . At no point did I try to censor people's opinion on the photograph.

  4. Ted,

    I sympathize with your position. The critics are correct when they say the DMCA takedown notice was not the correct procedure, since the altered photo was posted by the website owners themselves, not by third parties. Nevertheless, as David O'Brien has noted in a post for the Citizens Media Law Project, your letter had the function you intended: Frey treated it as a cease-and-desist demand. Properly, Frey also declined to take down the altered photo -- not because he doesn't respect your copyright, but because, as Ben Sheffner explains quite well, the "fair use" exception to copyright infringement permits Frey to reproduce the altered photo, under these circumstances, in order to comment on it.

    You ask a great question, though, when you say you'd like to know what you *should* have done to ensure that people don't associate you with the altered photo. At the risk of sounding like a lawyer (I am, I confess; I practice media and copyright law in Boston), let me try to articulate how I might have advised you, had you asked.

    One option: Keep your mouth shut, and hope that no one will connect the altered photo to your original. Sometimes loud protests boomerang by giving publicity to the very matter you are trying to avoid.

    A variant on that option: Write a disclaimer on your own site (which displays the original photo), explaining that you know a Photo-shopped version of the picture is making the rounds on the internet, and noting that the new version was not created by you, was unauthorized, constitutes a copyright infringement, and is, in your view, morally and politically repugnant. Anyone who somehow associates the Photoshopped version with your original is likely to go to your Web site to view that original -- and they'll see and read your disclaimer.

    A second option, which you apparently adopted (albeit clumsily), is to try to censor the altered photo. There are two problems with that approach: (1) it is legally unfounded, because Frey's use of the altered photo is a protected "fair use," and (2) it portrays you (perhaps unfairly) as being opposed to free speech and political satire. And then you get the Ben Shaffners and Citizen Media Law Projects of the world lining up against you.

    A variant on option two would be to try to subpoena sites in order to uncover the original creator of the Photoshopped version, then sue that creator for infringement. But that's a difficult, cumbersome, and potentially expensive road, without a high likelihood of success.

    A third option -- one which you also adopted, but only in part -- would be to send comments to the sites that displayed the altered photo, explaining that you shot the original photo, that the Photoshopped version was not made by you and was unauthorized, and that you find it offensive and would never do such a thing. You could even include a link to the original. This option not only provides your side of the story and distances you from the Photoshopped version, it also has the boon of directing people to your own Web site, where they can see (and perhaps license from you) the original photo (which is a very arresting one) and, for that matter, other examples of your work. In other words, by adding to the conversation instead of trying to censor it, you could garner some publicity for yourself and your extraordinary body of photographic work. Moreover, this third option has the advantage of responding to "objectionable speech" not with censorship, but with speech of your own, in a grand American tradition embodying the spirit of the First Amendment.

    In my view, Ted, had you stuck with option three (more speech) and not dabbled simultaneously with option two (censorship), you might have had a better chance both of achieving your goals (distancing yourself from the Photoshopped version) and simultaneously enhancing your reputation and drawing positive attention to your work.


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