I found out about this case reading this
tweet from Nashville
attorney Rick Sanders. Thank you Rick!
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.
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| 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.
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| 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.
And more ....... Marty Bandier, head of the world's biggest music publisher Sony/ATV, used his reciept of President's Merit Award at the Recording Academy's annual Pre-Grammy Gala in LA this weekend to argue that songwriters and publishers have been given an unpalatably small portion of the digital music pie. Pointing out that "songwriters have never received the credit they deserve. This is particularly the case today when something like 95% of the songs on the Billboard Hot 100 chart are written in whole or part by someone other than the performer. A songwriter doesn't share lucrative touring revenue and they don't do brand deals. Their entire livelihood is reliant on the income from the song and that proposition is now under threat in a way that it has never been before" he added "The music industry is changing in ways that I could never have imagined even just a decade ago; it is exciting for us that this has resulted in music lovers having new ways to listen to music as they move from CDs and digital downloads to streaming services. But it is also the case that songwriters are not being adequately compensated for their creations in today's digital world. Their songs are the very reason these services exist; their songs are why we are all here tonight. As the saying goes, it all starts with the song" (a view shared by BASCA).
