I found out about this case reading this tweet from Nashville attorney Rick Sanders. Thank you Rick!
On January 26, 2015, the Southern District Court of New York (SDNY) denied summary judgment to Defendant, a web site which had used Plaintiff’s protected photographs without authorization. The case is BWP Media USA, Inc. v. Gossip Cop Media, LLC,13-civ-7574 (KPF) (SDNY 2015).
Plaintiff BWP Media is a media company specializing in celebrity pictures, which can either be described as “entertainment-related photojournalism,” as did the complaint, or, less demurely, as employing paparazzi to follow celebrities around and take their pictures. Plaintiff licenses its works to various media outlets, including TMZ. Defendant Gossip Cop is a website commenting celebrity gossip news and sometimes rating their accuracy on a scale from zero to ten.
|Destroying Valuable IP|
In order to illustrate some of its articles, Defendant reproduced without authorization three photographs and one video in which Plaintiff claimed copyright ownership. Defendant moved to dismiss, claiming fair use, but its arguments did not convince the court.
The Second Circuit Requires Plaintiff to Have Already Registered its Copyright
As copyright registration for the video, featuring actress Gwyneth Paltrow on a scooter, was pending at the time the copyright infringement was filed, the SDNY granted the motion to dismiss with respect to the video. Indeed, a majority of Second Circuit courts, of which the SDNY belongs, have held that a pending copyright application is not a copyright registration, which is a necessary prerequisite to file a copyright infringement suit under 17 USC §411(a).
Fair Use Claim Survives Motion to Dismiss
The three remaining works were photographs of celebrities, taken by paparazzi, which had been published online by various news organizations. For instance, a picture of Mila Kunis and Ashton Kutcher had been published by The Sun to illustrate an article claiming that the couple was moving to the UK. Defendant reproduced the photograph in an article rating this information to be false. Another image showed Robert Pattinson leaving the Chateau Marmont hotel. This image was used by Defendant to deny a report that the actor had partied hard that night. A third image showed Liberty Ross sans wedding ring, but Defendant did not comment on the original story about her alleged marital troubles.
The SDNY denied Defendant’s motion to dismiss the copyright infringement claim for these three pictures. Defendant had claimed fair use. The fair use defense is provided by 17 USC § 107, which enumerates fours nonexclusive factors, the purpose and character of the use, the nature of the copyrighted work, the amount taken by Defendant and the effect of the use on the potential market. Even though this defense is a mixed question of fact and law, the Second Circuit allows resolution of fair use inquiry at the motion to dismiss stage, if the facts necessary to establish the defense are evident on the face of the complaint.
First Factor: Transformative Use
The first factor asks whether the infringing work merely supersedes the original work or if, instead, it adds something new and is thus transformative.
The SDNY noted that the Second Circuit in Cariou v. Prince found that “[t]he law imposes no requirement that a work comment on the original or its author in order to be considered transformative” (at 706). The Cariou court had also noted that the commercial use of an infringing work may still be considered fair use, if it is transformative. Also, the Second Circuit recognized last year in Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P. that “[a]lmost all newspapers, books and magazines are published by commercial enterprises that seek a profit.”
The SDNY reasoned that Defendant is indeed a for-profit entity, but that it used the infringing pictures “to illustrate or bolster the stories run by The Sun [and other media outlets], and proceeds to attack the factual bases of these stories.” The SDNY added that “while [Defendant] Cop may [be] a far cry from Woodward and Bernstein” [that is called an “ironic understatement”] the fact that the news thus analyzed was “on the tawdry side of the news ledger” does not prevent a finding of fair use. The SDNY found the first factor to weigh in Defendant’s favor for the Kunis/Kutcher and the Patterson photographs, but not for the Ross’ photograph, as Defendant had not commented on the original report that the actress may have marital troubles.
Second Factor: Nature of the Work- Paparazzi Pictures may be Creative Works
IP attorneys feeling guilty if reading gossip magazines while waiting for their nails to dry may welcome the news that they are thus assessing whether such images should be protected by copyright. In the Second Circuit, it seems that the answer is yes.
The SDNY quoted a 2012 Sixth Circuit case, Balsey v. LFP, Inc., which held that, while a paparazzi photographer does “not direct [the subject] or create the background for the images,” he, however, does “ha[ve] control over the exposure of the film…[and] use[s] his artistic skills to edit the pictures for size, color, clarity, and [chooses] which images to publish based on the allurement of the subject” (Balsey at 760). Therefore, Plaintiff’s images may be considered creative works, even though they were taken by paparazzi. The SDNY nevertheless declined to give weight to the second favor in favor of either party.
|No Need For Magazines to Engage in Gossiping|
Third Factor: The Amount Taken
To assess the third fair use factor, Second Circuit courts examined the portion of the original work which was used without authorization, which must be “reasonable in relation to the purpose of the copying” (Blanch v. Koons at 257). Also, the Supreme Court noted in Campbell v. Acuff-Rose that courts must look at the quantity of the materials used, but also their quality and importance (Campbell at 587).
Here, Defendant copied Plaintiff’s works in their entirety, which, according to the SDNY, “suggests that they were used to convey the ‘fact’ of the photograph to viewers” and that purpose is indeed reasonable for the SDNY. However, the SDNY once again differentiates the Liberty Ross ‘photograph from the other ones, as Defendant did not use it to comment about the veracity of breaking up rumors. As such, it “was used to convey precisely the same information as in its original publication.” The SDNY found the third factor to weigh in Plaintiff’s favor.
Fourth Factor: Effect on the Market
If the unauthorized copy usurps the market by offering a substitute product, there is no fair use. Defendant argued that it operates a “unique, transformative news reporting market” as it evaluates gossip, not merely republished them from other sources. However, the SDNY found that Defendant’s articles may be found to be adequate substitutes for the original articles. Therefore, they could deprive the media outlets buying pictures from Plaintiff, and, by extension, Plaintiff itself, of a portion of their market. The SDNY found therefore that the fourth factor weighed in Plaintiff’s favor.
The case will now proceed further.