Kevin Goldberg is a lawyer for Fletcher, Heald & Hildreth and is the legal counsel to ASNE. You can address your legal questions to him at Goldberg@fhhlaw.com and he will answer them in a later issue.

Selling police-provided mug shots raises risky legal issues involving copyright and misappropriation of another's likeness

Q: OUR NEWSPAPER OFTEN OBTAINS MUG SHOTS from local law enforcement for use in stories. Recently, we were approached by a documentary filmmaker who expressed an interest in using reprints of stories, some containing mug shots, in a television program about a local crime. Is there any foreseeable problem that arises from our selling reprints of stories for commercial purposes?

A: There very well could be problems. It all depends on the nature of the original mug shot, the extent of the permission you received to use these photos and, perhaps, the subject.

A police mug shot, like any other photograph, is entitled to copyright protection by virtue of the fact that it is an original work fixed in a tangible medium. It doesn't matter whether the photograph is stored in digital or print format. Works of the federal government are not entitled to copyright protection, so if you had obtained the mug shot from the FBI or Secret Service, you likely would not need permission to reprint the mug shot. However, the same is not true of all state and local governments, some of which may be allowed to hold copyrights. The first thing you need to do is determine whether the law enforcement agency from which you received the photo is eligible to hold copyrights under state or local laws. In order to find an answer, you'll likely have to look at your state constitution and the statute that created the agency, as well as aspects of the commercial code relating to intellectual property.

If a law enforcement agency in your state or city can own a copyright, the next question is whether this mug shot is a government record. Because government records are considered public property, a government agency, while perhaps able to hold copyrights generally, may not be able to hold copyright to a specific public record. Even if the law enforcement agency simply volunteered the photo to you, you should check your state or local Freedom of Information or Right to Know laws to see what they say about police mug shots or other records.

If the law enforcement agency does own the copyright to mug shots and they aren't public records, then you need permission to use the photo in any context. In the legal world, that permission is a license, and the extent of that license negotiable by the parties (though, at the end of the day, the grantor of the license often decides the parameters).

The police clearly granted you a license to use the photo when they presented the mug shot to you for original publication. But does that allow you to now engage in any use of the photo? The answer is clearly “no.” Permission to run the mug shot in the newspaper is one thing; permission to make money from further use of that same photo is an entirely different matter. You cannot assume that you have the right to do as you please with the photograph even if the police begged you to run it. Their motivation was most likely limited to obtaining assistance in apprehending a fugitive; they never envisioned further reprints — and certainly did not expect that they would hand you a financial windfall (at least not without their cut).

It is always preferable to have at least some basic written agreement stating the extent of your permitted use of any copyrighted work. This agreement can vary in format and formality but should at least cover the following terms:

• Whether you can engage in commercial use or only noncommercial use;
• Whether your right to use the work is exclusive or must be shared with others;
• The media in which you can reproduce the work;
• The license term.

Without a written agreement, you must assume that you are limited to publication of the mug shot in your paper for news purposes only.

Even if you have successfully cleared all of these copyright hurdles, other legal issues remain. The photo subject's right to control his or her image is also known as a “right of publicity.” Generally, this is more applicable to public figures that possess certain marketability, but it can apply to private persons as well. Virtually every state in the nation has a law that protects against the misappropriation of another's likeness for commercial purposes. Just because the photograph is an unflattering mug shot does not mean others are suddenly allowed to enrich themselves by selling that photo.

One further wrinkle exists in the form of state “Son of Sam” laws that exist to prevent criminals from profiting from their crimes. While they generally prohibit convicted criminals from publishing memoirs, they could be applied to mug shots as well. If your state has a Son of Sam Law, you are more likely to be able to make commercial use of a mug shot since the subject could not profit from his or her likeness in such an instance anyway.

Of course, clearing all of these rights to a legal certainty is difficult, and the lure of needed income may be too hard to resist. In these trying financial times, you simply may be willing to roll the dice and hope that you don't get hit with a copyright infringement lawsuit.

This might work, but you can and should take further steps to protect yourself. Because you've presumably read, understood and implemented my earlier advice about a written agreement outlining the extent to which any copyrighted work is licensed, you are likely employing such an agreement with the company to which you are selling the reprint of your story.

This written agreement should clearly state, if applicable, that you have not fully cleared the rights in certain copyrighted works contained within the article or publication and are not liable for any copyright infringement lawsuit that may be brought against the buyer by third parties. It should further state that the third party will indemnify you if sued for copyright infringement, including any attorney's fees you may incur. In essence, you are saying to the buyer: “We cannot guarantee that we have the right to this photo. You are acknowledging that you either do not want us to obtain that right for you or that we could not obtain the right but you wish to run the photo anyway. You understand the risks involved and accept those risks for yourself and for the newspaper.”

If the buyer is not willing to sign a very strongly worded indemnification or clear the rights itself, it probably is not worth the risk of subjecting yourself to potential damages that can equal or exceed the money you made from the sale of the photos, or any number of legal problems that might also arise.

Ultimately, while the potential for a new revenue stream clearly exists, that stream bed is rocky and must be navigated with extreme caution, lest you find yourself swept into a legal flood of biblical proportions. *