BWP Media USA, Inc. v. Gossip Cop Media, LLC

Citations: 87 F. Supp. 3d 499; 113 U.S.P.Q. 2d (BNA) 1585; 43 Media L. Rep. (BNA) 1209; 2015 U.S. Dist. LEXIS 8811Docket: No. 13 Civ. 7574(KPF)

Court: District Court, S.D. New York; January 25, 2015; Federal District Court

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BWP Media USA Inc., also known as Pacific Coast News, has filed a copyright infringement lawsuit against Gossip Cop Media, LLC for unauthorized use of three photographs and one video. Gossip Cop argues for dismissal based on the fair use doctrine and claims that BWP Media has not registered one of the images with the U.S. Copyright Office. The court granted the motion to dismiss regarding that unregistered image but denied it for the other three. 

BWP Media specializes in celebrity-related photojournalism, owning numerous photographs and videos that it licenses to various media outlets. The complaint asserts that Gossip Cop, which operates a celebrity gossip website, has reproduced four specific images without permission, using them alongside articles that mirror the commercial purposes of similar gossip entities.

The four images specified include:
1. A photograph of Mila Kunis and Ashton Kutcher, which is registered and used in an article about their move to London, with the headline attributing the source to The Sun.
2. A photograph of Robert Pattinson, also registered, featured in an article about his birthday celebrations, attributed to HollywoodLife.

Both images were used by Gossip Cop in a manner that BWP Media claims constitutes copyright infringement.

The Pattinson Article highlights inconsistencies in HollywoodLife’s reporting, specifically emphasizing that the Chateau Marmont is a hotel rather than a club and noting that Pop-Sugar retracted its original story. Gossip Cop rates the HollywoodLife article a “0” on the Rumor to Real scale. Additionally, the excerpt references a photograph of Liberty Ross, registered under VA0001836367, which appears on Gossip Cop’s site attributed to TMZ, alongside a close-up image showing the absence of a wedding ring. An article dated August 7, 2012, claims Ross was seen without her ring and discusses her marital issues, rating the story a “10” on the Rumor to Real scale without citing other sources. Another video features Gwyneth Paltrow on a Vespa, embedded on Gossip Cop’s site with a link to TMZ, but does not include references to other news outlets or a Rumor to Real rating. A copyright application for the Paltrow video was filed on September 10, 2013, and was still pending at the time of the litigation. Procedurally, the Plaintiff filed an initial complaint on October 25, 2013, and following a denied request for a pre-motion conference, an Amended Complaint was filed on February 3, 2014. The Defendant moved to dismiss the case on March 21, 2014, citing fair use and pending copyright status for the Paltrow Image. The Plaintiff opposed this motion, and the court is now reviewing it. The excerpt also outlines the standard for evaluating a motion to dismiss, which involves considering all allegations in the light most favorable to the Plaintiff.

To survive a motion to dismiss under Rule 12(b)(6), a complaint must present sufficient factual matter, accepted as true, to establish a claim for relief that is plausible on its face. While heightened fact pleading is not required, the allegations must nudge claims from conceivable to plausible. A complaint that only pleads facts consistent with a defendant's liability fails to meet this standard. In evaluating a motion to dismiss, courts may consider the facts in the complaint, attached documents, and those incorporated by reference. For a document to be deemed integral, the complaint must rely heavily on its terms and effects, not merely on notice or possession.

In the case at hand, the court grants the motion to dismiss concerning the Paltrow image. Although copyright registration is not mandatory for protection, it is required to initiate a federal infringement action. The court refrains from determining whether a pending application for copyright satisfies this registration requirement, noting that the Second Circuit has not definitively ruled on this issue. The federal appellate courts are split on whether a pending application meets the registration precondition. The prevailing view in the district is that a plaintiff must possess a valid copyright registration or have been denied registration before filing a claim; a pending application is insufficient.

In Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., the court emphasized that a valid copyright registration is necessary to pursue an infringement action, rejecting the notion that a pending registration application suffices. This position aligns with established precedents within the Southern District of New York, such as BWP Media USA Inc. v. Hollywood Fan Sites, LLC and Int’l Diamond Importers, Inc. v. Oriental Gemco (N.Y.) Inc., both affirming that pending applications do not equate to registration under 17 U.S.C. 411(a). Consequently, the court granted the motion to dismiss regarding the Paltrow Image due to the plaintiff's pending registration application at the time of filing. 

However, the court denied the motion to dismiss concerning other images, stating that it could not determine at this stage that the fair use defense precludes the plaintiff's claims. The court recognized that while the Copyright Act grants authors exclusive rights, the fair use doctrine allows certain uses without permission under specific conditions. It noted that fair use is evaluated through a context-sensitive analysis of four factors: the purpose of use, the nature of the copyrighted work, the amount used, and the effect on the market for the original work. The court indicated that fair use determinations often involve mixed questions of fact and law but can be assessed at the pleading stage based on the complaint and referenced documents.

The Second Circuit has noted the Seventh Circuit's approach to fair use analysis at the motion to dismiss stage, particularly in Brownmark Films, LLC v. Comedy Partners, which indicated that determining fair use could rely solely on the original work and the allegedly infringing work without necessitating a summary judgment. Although the Second Circuit typically views fair use as requiring factual consideration outside the complaint, it acknowledged that if the necessary facts for establishing an affirmative defense are evident within the complaint, such defenses can be adjudicated at this preliminary stage. The court observed a lack of cases in the Second Circuit granting motions to dismiss based on fair use but indicated it would examine the remaining images concerning fair use factors.

Regarding the purpose factor, it is critical in assessing fair use, focusing on whether the new work merely replaces the original or adds new meaning or character. Transformative use requires that the new work alters the original by adding new expression, meaning, or message. While the Second Circuit has recognized that faithful reproduction may sometimes be justified in news reporting, it has rejected the idea that commentary is necessary for a work to be deemed transformative. Ultimately, the commercial nature of the secondary use is significant; a higher economic benefit for the secondary user could weigh against a fair use finding.

The excerpt analyzes the fair use doctrine in the context of commercial use versus transformative use in copyright law. It cites various legal precedents, noting that commercial publications typically weigh against fair use, yet purposes like criticism, comment, and news reporting are favored under the Copyright Act. The court emphasizes that the transformative nature of a work is paramount in fair use assessments, regardless of its commercial intent. Gossip Cop's use of copyrighted images is acknowledged as commercial, but the defendant argues this should not significantly impact the fair use evaluation. The key inquiry is whether Gossip Cop’s use is transformative rather than purely profitable.

BWP Media claims that Gossip Cop operates like other tabloids, but the court finds that Gossip Cop's articles use images differently, providing criticism and commentary that support a transformative use argument. This context, which includes referencing original headlines and critiquing the underlying stories, favors fair use. Conversely, the use of the Ross Image lacks any transformative commentary, indicating it does not qualify for fair use. The analysis concludes that mere news reporting is insufficient for fair use unless the use of the image is transformative.

Plaintiff's reference to *Mathieson v. Associated Press* is deemed inappropriate as the context of use differs; the Associated Press utilized a photo for news illustration while Gossip Cop reproduced it in its original context. The Court finds that the first fair use factor favors the Defendant for the Kunis/Kutcher and Pattinson Images, but favors the Plaintiff for the Ross Image. 

Regarding the second fair use factor, the nature of the copyrighted work, two inquiries are emphasized: whether the work is factual or fictional, and whether it is published or unpublished. The Supreme Court suggests that factual works warrant more leeway for fair use, while unpublished works have narrower fair use protections due to the author's right of first publication. The Plaintiff claims its images are original and creative, providing little informational value, but the Court is not obligated to accept legal conclusions as facts. 

The assessment of photographs as factual or creative is complex, with courts expressing caution in categorizing them. The Court concludes that the creativity of the images is mixed; while paparazzi do not control their subjects or backgrounds, they influence exposure and editing choices. Although the Pattinson and Ross Images may imply scandal rather than aesthetic value, the Plaintiff has sufficiently suggested that these images could be considered creative works.

The second element regarding whether the copyrighted work was published favors the Defendant, as the Plaintiff admits the images were sourced from previously published outlets. However, the Court notes that placing too much emphasis on publication status could conflict with the Copyright Act's protections for derivative works. Given the case's procedural context, the Court assigns minimal weight to this factor for either party.

The third factor, concerning the amount and substantiality of the portion used, favors the Plaintiff. Courts analyze this factor based on the proportion of the original work used relative to the whole work, focusing on both quantity and quality. Gossip Cop fully reproduced the Plaintiff's images, and while it's undecided if the images were necessary for the articles, their use appears reasonable for conveying information. The Plaintiff's position is notably stronger regarding the Ross Image, which was used identically to its original form.

The fourth factor, assessing the effect of the use on the market for the copyrighted work, also favors the Plaintiff. This factor is considered the most crucial in fair use determinations. The focus is on whether the Defendant's use serves as a market substitute for the original work. The Plaintiff contends that Gossip Cop competes in the same market as entities that license its images, and that Gossip Cop's actions could undermine this market by devaluing exclusive licenses.

Defendant argues that it operates in a distinct and transformative market for celebrity journalism, prompting the Court to consider whether there exists a separate market for the evaluation of celebrity journalism apart from its primary market. The Court must accept Plaintiff's factual allegations at this stage. The Second Circuit has noted that overly detailed reporting on a copyrighted work can exceed fair use, suggesting that individuals who miss original broadcasts may find substitutes sufficient, potentially harming the original creator's market. This reasoning leads the Court to conclude that this factor favors Plaintiff.

The Court grants Defendant’s motion to dismiss regarding the claims based on the Paltrow Image due to the pending status of its registration. However, the fair use defense is stronger for the Kunis/Kutcher and Pattinson Images compared to the Ross Image. Even if the former images are deemed transformative, other factors predominantly favor Plaintiff. Consequently, the motion to dismiss is denied for the remaining images.

The Clerk of Court is instructed to terminate Docket Entry 24, and the parties must attend a status conference on February 20, 2015, at 2:00 p.m., with a joint status letter and Proposed Civil Case Management Plan due by February 12, 2015. Additionally, a claim against Abrams Research, LLC was dismissed with prejudice, allowing Abrams to seek additional remedies. Abrams' motion for attorney's fees under 17 U.S.C. 505 was denied. The facts referenced in this opinion are drawn from the Amended Complaint and are assumed true for the motion to dismiss. The parties' briefs are labeled for convenience as Def. Br., PL Opp., and Def. Reply. The Amended Complaint includes allegations about images appearing in search results, but this issue is not addressed by either party and is irrelevant to the current motion's outcome. The full content of the referenced videos remains accessible online.

A search of U.S. Copyright registration records revealed no registration for the Paltrow Image at the time of publication. This lack of registration may raise questions about the alleged infringer's good faith, which the Second Circuit suggests has been debated concerning its relevance in the fair-use test following the Campbell case. The Amended Complaint indicates more evidence of bad faith than what was noted in the Blanch case, but the court emphasizes that if bad faith is still relevant, it ultimately hinges on whether the use was fair without permission. The plaintiff contends that the images do not adequately illustrate Gossip Cop’s stories; however, this critique does not affect the assessment of whether the use of the original publishers' headlines and cover images provided necessary context for Gossip Cop's critiques of those outlets.