Court: District Court, S.D. New York; July 20, 2016; Federal District Court
BWP Media USA Inc. initiated legal proceedings against Gossip Cop Media, LLC for copyright infringement concerning three specific photographs. Following a partial dismissal of claims, only the allegations related to the photographs remained. After a non-jury trial on June 6, 2016, the court found Gossip Cop liable for infringing BWP's copyright on all three images.
BWP Media, which operates under various names including Pacific Coast News and National Photo Group, owns a collection of celebrity photographs and videos that it licenses. Gossip Cop, a for-profit website, presents celebrity gossip and evaluates the credibility of news stories from third-party sources. Although Gossip Cop subscribes to Getty Images for licensed photos, it has been found to copy images directly from other gossip websites without securing proper licenses.
The images in question depict:
1. Mila Kunis and Ashton Kutcher walking (Kunis/Kutcher Image),
2. Robert Pattinson in a car (Pattinson Image),
3. Liberty Ross without her wedding ring (Ross Image).
Each photograph required significant technical skill to capture. Gossip Cop obtained these images from third-party sites that had originally licensed them from BWP, then posted them on its own platform while assessing the accompanying stories on a "real-to-rumor scale." The Kunis/Kutcher Image was taken from The Sun, the Pattinson Image from Hollywood Life, and the Ross Image from TMZ. Gossip Cop did not seek permission from BWP or the original licensors before using the images.
PCN regularly receives celebrity photographs from freelance photographers under exclusive assignment agreements, granting them licensing rights to the images. Specifically, the Kunis/Kutcher Image was taken by Edward Opinaldo and assigned to PCN, with former employee John Calabrese submitting the copyright application. NPG employs a similar process, with employee Ben Evenstad overseeing assignment agreements and Wendy Weiss handling copyright applications. Despite not filing applications himself, Evenstad’s name was used in the certification field, which he understood to be appropriate. Registration applications for the relevant photographs were filed by the plaintiffs, confirming that the Kunis/Kutcher Image application was submitted on January 5, 2013, with PCN as the copyright claimant. The Pattinson Image was submitted on June 27, 2013, with NPG as the copyright claimant, and the Ross Image was submitted on August 7, 2012, also claimed by NPG. Photographers uploaded their images to a system that notified both Evenstad and Weiss, who organized applications monthly by photographer. Exclusive images were often registered in batches, while larger sets were registered individually, as seen with the Ross Image, which followed a specific naming convention based on the capture date and editor code. The Ross Image was taken on August 6, 2012, and was included in the third set worked on by editor C for that day.
Prior to the defendant's use of the photographs, the plaintiff received licensing fees for three images: $1,000 from US Magazine for the Kunis/Kutcher Image, $4,000 from E! Online for a 24-hour exclusive license for the Pattinson Image, and £375 (approximately $589) from Grazia UK for the Ross Image. The plaintiff has established ownership and infringement of the copyrights. Under 17 U.S.C. § 411(a), copyright registration is necessary for infringement suits. To prove infringement, the plaintiff must show that the defendant copied their work and that the copying is illegal due to substantial similarity.
A registration certificate from the U.S. Copyright Office serves as prima facie evidence of copyright ownership. Although the defendant claims that the presumption of validity for the Pattinson and Ross Images is undermined by the plaintiff's alleged fraud on the Copyright Office, the court finds no substantial evidence of willful misrepresentation. The defendant argued that Evenstad, listed as the certifying individual for the applications, did not prepare or review them, constituting a material misrepresentation. However, the court noted that misrepresentation must be willful or deliberate to amount to fraud, and the misrepresentation here appeared to be made in good faith based on legal counsel.
The defendant also contended that the plaintiff failed to produce valid assignment agreements for two images, which could affect the plaintiff's burden of proof regarding copyright ownership. Under 17 U.S.C. § 204(a), a copyright transfer must be in writing and signed by the rights owner or authorized agent to be valid, but the writing requirement aims to clarify ownership disputes.
A third-party infringer cannot use Section 204(a) to evade liability for copyright infringement when there is no dispute regarding the validity of a copyright transfer between the transferor and transferee. In the cited cases, courts established that an alleged infringer cannot claim a lack of written transfer agreements to avoid liability if the transfer's validity is undisputed. In this case, the creators of the images do not contest their assignments to the Plaintiff, nor does the Defendant claim to have received any rights transfers. The Defendant's argument hinges on the Plaintiff's failure to produce written assignment agreements for two of the three photos, which is insufficient to defend against the infringement claim.
The Plaintiff has demonstrated ownership of the images through valid registration certificates, which create a presumption of ownership. The unauthorized copying element of copyright infringement requires proof of either substantial similarity or copying of more than a trivial part of the work. Here, the Defendant is found to have directly copied the images, which were identical to those licensed to third-party sites.
The key issue is whether the Plaintiff has proven that the images copied by the Defendant are the exact images for which it holds copyright. The Defendant argues that the scope of copyright is defined by the images submitted with the copyright applications, claiming the Plaintiff has not provided those deposits or testimony from individuals with direct knowledge of them. Despite this, the Plaintiff has presented sufficient evidence to demonstrate, on a preponderance standard, that the copied images were indeed registered. The Court accepts the testimony of Calabrese regarding the Kunis/Kutcher Image as credible, while for the Pattinson and Ross Images, Evenstad's lack of direct involvement in the registration process does not preclude the admission of evidence supporting the Plaintiff's routine practices under Federal Rule of Evidence 406, allowing the inference that the images copied by the Defendant were registered with the Copyright Office.
Evenstad's testimony established that NPG consistently handled copyright applications, confirming that the images in question matched those for which the Plaintiff received copyright registration certificates. NPG employed specific naming conventions, allowing for easy identification of the photographs submitted alongside applications. Evenstad identified the Pattinson and Ross Images as associated with the applications titled “Zavar Manokian May 2013 EXC Images” and “Liberty Ross leaves Office Building. 080612C3 20 images.” The Court can assume, under Fed. R. Evid. 406, that Weiss adhered to NPG’s standard procedures when filing these applications, indicating the images were included with the respective titles and covered by the issued registrations. The Defendant admitted to unauthorized copying of the three disputed images from third-party sites. Calabrese and Evenstad's evidence supports the conclusion that the copied images were indeed those submitted with the copyright registration applications.
Plaintiff has met the burden of proving infringement. The Defendant, however, did not demonstrate fair use as an affirmative defense for the three images. The Copyright Act grants authors a limited monopoly over their works to promote progress in science and the arts, while also imposing limits through the fair use doctrine, which allows certain unpermitted uses. Fair use is evaluated considering four nonexclusive factors: 1) the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect of the use on the market for the original work.
The first fair use factor, which focuses on whether the new work adds something transformative, was not met by the Defendant's use of the Kunis/Kutcher and Pattinson Images. The Second Circuit has noted that in news reporting, faithfully reproducing an original work may sometimes align with copyright law, but the Defendant’s use did not demonstrate this transformative quality.
Courts identify transformative uses by focusing on the changed purpose or context of a work, often through commentary or criticism. In this case, the Defendant asserts that its use of the Kunis/Kutcher and Pattinson Images was transformative, claiming the photographs were employed to critique the stories originally associated with them. While the Court acknowledges the potential application of fair use in theory, it finds a disconnect between the Defendant's claimed purpose and its actual usage of the images. The Defendant failed to comment on or critique the images themselves in its accompanying articles, focusing only on the inaccuracies of the original stories. The Court notes that for a use to be considered transformative, it must convey a "new expression, meaning, or message." Here, the Defendant's usage did not implicate the images as part of its debunking narrative, leaving a viewer unaware of any misrepresentation related to the images. Specifically, the Kunis/Kutcher Image was not presented in the original source as proof of a relocation, undermining the relevance of the Defendant's use in reporting on that claim. For the Pattinson Image, the absence of the original story further complicates any assessment of transformative use, as no comparison can be made between the original context and the Defendant's application. Thus, the Defendant's argument lacks sufficient evidence to support a finding of transformative use.
Defendant's republication of the Kunis/Kutcher and Pattinson Images lacks transformative meaning and does not enhance the reporting function, as it merely illustrates stories similarly to the original sources. This lack of transformation renders the use non-compliant with the principles of transformative news reporting. Similarly, the use of the Ross Image is not transformative, as the accompanying article fails to reference or acknowledge the TMZ story from which the image originated. The Ross Image is presented solely to support the assertion of Ross's marital issues, mirroring its original use by TMZ. Defendant's claim that the image itself constitutes the story is undermined by the absence of new context or meaning in its presentation.
The court highlights that using an image solely for its inherent content, particularly in a commercial context, does not satisfy transformative use criteria. Citing previous cases, it emphasizes that using an image for its intended purpose does not qualify as fair use. Furthermore, the commercial nature of Defendant's use plays a significant role; higher economic gain for the secondary user diminishes the likelihood of fair use being recognized, thus favoring the copyright holder.
The commercial nature of a publication weighs against a finding of fair use, as established in Swatch and supported by case law, which notes that while commercial purposes can be relevant, transformative uses diminish their significance. The Supreme Court clarifies that the key issue is whether a user profits from the exploitation of copyrighted material without paying customary fees. In cases where the use is non-transformative and directly replaces the original work's market, as seen with Gossip Cop's use of celebrity images, the commercial aspect becomes more pertinent against fair use.
The second fair use factor, concerning the nature of the copyrighted work, indicates that fair use is harder to prove for creative and unpublished works. The images in question were published before use, and their creativity has been broadly interpreted by courts, recognizing that even photographs with informational purposes can be deemed creative. Despite the factual nature of some images, the artistic choices involved in photography contribute to a finding that often favors the photographer's copyright. However, specific cases, such as that of a photojournalist's factual image, may weigh against fair use despite artistic effort, highlighting the nuanced application of the second factor in fair use evaluations.
In Strauss v. Hearst Corp., the court examined various factors related to fair use concerning the use of photographs. The photographs were primarily taken for documentary purposes, with their value stemming from their content rather than artistic composition. Plaintiff's testimony indicated that photographers employed technical skill and aesthetic judgment, suggesting a blend of informational and creative elements. However, this creativity was deemed a neutral factor, especially considering the images had been previously published, which slightly favored the Defendant.
The second fair use factor, concerning the nature of the copyrighted work, was noted to have less significance in the fair use analysis, particularly for published works available to the public. The third factor evaluates the quantity of the copyrighted material used; here, the Defendant copied the entirety of three images, which weighed against fair use. The court highlighted that the Defendant's purpose aligned with that of third-party licensees, making the extensive use unreasonable for the intended purpose.
The fourth fair use factor assesses the impact on the potential market for the copyrighted work. The court noted that Plaintiff's business model relies on licensing photographs to celebrity news outlets. The Defendant's use of the images mirrored that of typical celebrity news sites, suggesting a potential market usurpation, which could harm the Plaintiff's ability to profit from the images.
The Kunis/Kutcher and Pattinson Images, used in Gossip Cop articles, are primarily intended to attract interest rather than provide explicit illustration of the stories. This use aligns with how Plaintiff typically licenses its photos. Consequently, the fourth fair use factor is not met, as three out of four factors weigh against fair use. The Defendant's use was non-transformative, involved the entire images, and could harm Plaintiff’s business model, overshadowing any informational content or prior publication of the images. Therefore, the Defendant has not proven fair use.
Plaintiff is entitled to statutory damages under the Copyright Act, which allows for the recovery of statutory damages instead of actual damages. If infringement is found to be willful, the court may increase the award up to $150,000, whereas if the infringer proves they were unaware of the infringement, the award could be reduced to a minimum of $200. The Second Circuit outlines factors for calculating statutory damages, including the infringer's profits, the plaintiff's lost revenues, the copyright's value, deterrent effects, and the nature of the infringement. Statutory damages do not need to match actual harm but should relate to it. Courts often use multiples of licensing fees for calculations, typically awarding between three to five times the licensing fee for non-innocent infringements. Willful infringement is determined by the defendant's knowledge or reckless disregard of copyright laws, not necessarily by malicious intent.
Reckless disregard for copyright may be interpreted as willfulness in infringement cases, as established in N.A.S. Imp. Corp. v. Chenson Enters. and Island Software v. Microsoft. The court acknowledges that a plaintiff might not prove a defendant’s willfulness while the defendant cannot demonstrate innocent intent, resulting in infringer intent not affecting statutory damages. The plaintiff seeks statutory damages, requesting five times the applicable licensing fees for three images, supported by evidence of fees from other celebrity news outlets: $1,000 for the Kunis/Kutcher image, $4,000 for the Pattinson image, and $589 for the Ross image. The defendant failed to provide evidence of profits from the images, presenting only general viewership data which is inadequate for damage assessment.
The defendant claims its use constituted fair use, arguing that its purpose was to comment on third-party reporting rather than to break news. However, the court finds this defense lacking for the Ross image, where the accompanying text mirrored that of a celebrity news outlet without confirming prior reports. For the Kunis/Kutcher and Pattinson images, the defendant’s fair use claim is slightly more credible due to the inclusion of source headlines, yet the absence of references to the images in the articles undermines the reasonableness of its belief in fair use.
Ultimately, the court deems the infringement of the Ross image willful and the infringement of the other two images not clearly willful but not innocent. The need to deter unauthorized copying is emphasized, as allowing such behavior would undermine the licensing system. Considering the harm to the plaintiff, the defendant's level of willfulness, and the necessity to deter future infringements, the court awards statutory damages: $2,945 for the Ross image, and $3,000 and $12,000 for the Kunis/Kutcher and Pattinson images, respectively.
Defendant is found liable for copyright infringement regarding three specific images, resulting in a damages award of $17,945. The Court acknowledges potential fair use of images from other articles but determines that the specific uses in this case do not qualify as fair use. Defendant is prohibited from further unauthorized use of the identified images, which include those of Kunis/Kutcher, Pattinson, and Ross. Plaintiff may seek attorney’s fees and costs under 17 U.S.C. § 505, with deadlines for submissions outlined: Plaintiff's motion due August 5, 2016; Defendant's opposition due August 19, 2016; and Plaintiff's reply due August 26, 2016. The Court’s findings are based on affidavits and trial testimony from witnesses for both parties, with citations for trial exhibits and briefs noted. Although the Defendant's for-profit status was not explicitly evidenced, it was consistently presented by the Plaintiff without contest. The Court expresses concern over Defendant's failure to submit evidence of the source article for the Kunis/Kutcher Image and its objection to the Plaintiff's submission of a related article, suggesting Defendant's lack of support for its fair use argument. The Court takes judicial notice of a publicly accessible article from The Sun. Plaintiff claims $15,000 for the Ross Image based on an unsubstantiated multiple of the licensing fee; the Court instead uses a documented licensing fee of $589. The Court dismisses the argument that Defendant's use was transformative, noting that the Kunis/Kutcher Image was not relevant to the underlying story.
Multiple outlets have licensed and utilized the Kunis/Kutcher Image, making it less likely to identify the specific story it relates to. The Defendant's website aims to correct false reports and deliberately avoided linking to the original Sun article, indicating a lack of intention to assist readers in locating the source material. This contrasts with cases where fair use was found because the copied material helped identify specific sources, such as in *Authors Guild v. Google, Inc.*, where text excerpts aided in locating full articles.
The Defendant's argument that their copying is fair use because "the picture is the story" is misapplied; unlike in *Nunez v. Caribbean Int’l News Corp.*, where the photographs were central to the controversy, here the content of the photographs, rather than their existence, is newsworthy. The unlicensed reproduction of newsworthy content does not justify the use of images, as it undermines the licensing model for photojournalists.
Although the Defendant claims their use was to facilitate identification of underlying articles, the Court finds that the images were used in large formats, exceeding what is necessary for identification. For example, the Ross Image occupies nearly the same space as the article's text, and the Kunis/Kutcher and Pattinson Images significantly dominate their respective articles. The licensing invoice for the Pattinson Image indicates it was purchased as a "web exclusive" for 24 hours, suggesting a premium price reflecting exclusivity. The Defendant has not contested the $4,000 licensing fee for the Pattinson Image, which the Court recognizes as the relevant fee for assessing the situation.
