By Thomas Long, J.D.
A professional photographer can forward with claims that the publisher of a web publication about video games and related entertainment infringed eight photos that he took at various filming locations for a "Spider-Man" movie, including one photo featuring actor Tom Holland, the federal district court in New York City has decided. The court denied the photographer’s motion for summary judgment on the issue of infringement after excluding, as a sanction for discovery violations, certain evidence indicating that the photos at issue were included in a group copyright registration obtained by the photographer. The court granted the photographer’s motion for summary judgment with respect to the publisher’s fair use defense for seven of the images, holding that the publisher had not engaged in fair use as a matter of law. However, reproduction of the Holland photo could have been sufficiently newsworthy for a jury to deem its publication fair use. The photographer failed to present any evidence of willful misconduct on the publisher’s part, so the court disposed of that assertion on summary judgment (Ferdman v. CBS Interactive Inc., September 24, 2018, Gardephe, P.).
Plaintiff Steven Ferdman was a professional photographer who licensed his photos for a fee, for use in publications, such as Vogue and Variety. In September 2016, Ferdman took 307 photos of the production of the movie Spider-Man: Homecoming in various locations in Queens, New York. Some of the photos featured actor Tom Holland. In November 2017, Ferdman registered a group of Spider-Man photos labeled as having been published between September 24 and September 30, 2016.
Defendant CBS Interactive Inc. published GameSpot, an Internet publication that provided news and commentary about video games and entertainment of interest to video gamers. On September 27, 2106, GameSpot published an article titled "New Spider-Man: Homecoming Photo Shows Tom Holland Suited Up: Filming on the 2017 movie has moved from Atlanta to New York" (the "Holland Article"). The Holland Article contained a copy of a photo of the actor that had been posted to his Instagram page and that had been taken by Ferdman. On September 29, 2016, GameSpot published an article entitled "Latest Spider-Man: Homecoming Images Showcase Action on New York's Streets" (the "Gallery Article"). At the end of the Gallery Article was a series of images that GameSpot’s editors purportedly believed had been released by the movie studio or had been made available to the public. However, seven of the photos had been taken by Ferdman.
Ferdman filed suit in February 2017, alleging that CBS Interactive willfully infringed his copyrights in the photos. Both parties moved for summary judgment. Along with asserting noninfringement, CBS Interactive raised fair use and license defenses.
Infringement—discovery sanction. CBS Interactive argued that Ferdman’s motion for summary judgment on infringement should be denied because he had not established as a matter of law that the photographs at issue were registered with the Copyright Office. According to CBS Interactive, Ferdman never provided evidence in discovery that the photos at issue were covered by the group registration. Although Ferdman submitted a declaration at summary judgment attaching copies of photographs he alleged were sent to the Copyright Office, with labels showing the relevant registration numbers, CBS Interactive argued that he was attempting to "sneak" evidence into the record that he had "withheld" previously. Ferdman’s failure to produce copies of the photos he asserted had been registered and had been infringed by CBS Interactive was a discovery violation, the court said, and preclusion of the photos was warranted as a sanction for that violation. Ferdman offered no explanation for his failure to produce copyright application-related materials during discovery. Although the evidence was crucial to the case, this factor was not sufficient to avoid preclusion. CBS Interactive would be prejudiced if the court considered the evidence at summary judgment because its opposition to Ferdman’s motion was premised on the lack of evidence linking the photos at issue to the certificate of registration. With the labeled copies of the photos excluded, there was a genuine issue of material fact as to whether the photos at issue were included in the copyright registration, the court said. Therefore, Ferdman was not entitled to summary judgment on the issue of infringement.
Fair use. Both parties moved for summary judgment on CBS Interactive’s fair use defense. The court considered the usual statutory factors and determined that the fair use defense was unavailable as a matter of law, with respect to the photos accompanying the Gallery Article. CBS Interactive’s use of the photos was not at all transformative, involving unaltered copies of Ferdman’s works. CBS Interactive’s use of those photos was a perfect substitute for the intended market use and was likely to damage Ferdman’s capacity for selling licenses to use the images.
As for the photo of Holland accompanying the Hollard Article, however, the court held that the fair use issue could not be resolved on summary judgment. "Unlike the Gallery Photographs, the Holland Photograph was arguably newsworthy because Holland himself had posted the picture and commented on it," the court said. Therefore, material questions of fact existed regarding the purpose of the use, which precluded a determination of that statutory factor at this stage of the litigation. Even if the court were to weigh the factors in CBS Interactive’s favor, the market effect factor weighed against a finding of fair use. Accordingly, neither party was entitled to summary judgment with respect to the Holland photo.
Willfulness. To prove "willfulness" under the Copyright Act—therefore becoming entitled to seek enhanced statutory damages—Ferdman was required to show (1) that CBS Interactive was actually aware of the infringing activity or (2) that CBS Interactive’s actions were the result of reckless disregard for, or willful blindness to, Ferdman’s rights as the copyright holder. In the court’s view, Ferdman failed to produce evidence of CBS Interactive’s willfulness. He submitted no evidence that CBS Interactive used the photos with knowledge of Ferdman’s copyright or with reckless disregard or willful blindness as to his rights. Ferdman did not contest that GameSpot obtained the photos in the Gallery Article from a Twitter account believed by GameSpot to be circulating studio publicity shots. As for the Holland photo, Ferdman admitted that the Holland Article included a copy of the photo that Holland posted to his Instagram page. Accordingly, the court granted CBS Interactive summary judgment on the issue of willful infringement.
License defense. The court determined that CBS Interactive had waived its license defense by failing to respond to Ferdman’s arguments regarding it. There was no evidence in the record to suggest that CBS had a license to use the photos at issue. Ferdman was therefore entitled to summary judgment in his favor on this affirmative defense.
This case is No. 1:17-cv-01317-PGG.
Attorneys: Yekaterina Tsyvkin (Liebowitz Law Firm PLLC) for Steven Ferdman. Robert Penchina (Levine, Sullivan, Koch & Schulz, LLP) for CBS Interactive Inc.
Companies: CBS Interactive Inc.
MainStory: TopStory Copyright TechnologyInternet NewYorkNews
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