IP Law Daily Copyright infringement case brought by owner of ‘Speeding Fall’ photo may proceed to trial
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Monday, July 22, 2019

Copyright infringement case brought by owner of ‘Speeding Fall’ photo may proceed to trial

By Nicholas Kaster, J.D.

The court found that the "fair use" doctrine was inapplicable.

An action for copyright infringement brought by the owner of a photograph titled "Speeding Fall" may proceed to trial. In denying a motion for summary judgment, the federal district court in Roanoke, Virginia, ruled that the infringement could not be excused by the "fair use" doctrine. In considering whether to apply the fair use doctrine, a court must consider not only the defendant’s specific use of the photo, but whether unrestricted and widespread conduct of the sort engaged in by the defendant would result in a substantially adverse impact on the potential market for the original, the court held (Cancian v. Hannabass and Rowe, Ltd., July 19, 2019, Urbanski, M.).

The plaintiff took the photo that would come to be titled "Speeding Fall." While the original photo was taken during the summer, the plaintiff altered the colors of the leaves on the trees on either side of the road so that the photo appeared to depict a roadway in the fall, as the leaves were changing. In 2012, the photo was posted on a website that provides exposure and licensing opportunities to photographers. It was registered with the U.S. Copyright Office in 2017.

One of the defendants is the sole owner of a communications company that provides marketing and website development to its customers. The company owns the licensing rights to numerous stock photos through a variety of stock photograph companies. A corporation in the business of auto body repair contracted with the communications company to develop and maintain a website. In creating a website page, the communications company selected the "Speeding Fall" photo from these stock photos because it appeared to depict a roadway in autumn. In 2017, the company was informed by counsel that the plaintiff owned the "Speeding Fall" photo and that use of that photo was prohibited. The photo was then removed. The plaintiff then filed suit pursuing damages for copyright infringement against both companies. The defendants moved for summary judgment.

The defendants made four arguments in favor of summary judgment. First, the individual owner of the communications company contended that she could not be held individually liable for copyright infringement committed by the company. Second, the auto body repair company contended that it could not be held vicariously liable for copyright infringement committed by the communications company. Third, the defendants argued that the infringement was excused by the "fair use" doctrine. Fourth, the defendants argued that damages were not shown.

On the first point, the court refused to shield the owner of the company from liability. It found that the individual was the owner, principal, and sole shareholder of the company and personally selected the photo for use on the website of the auto parts company. This on its own, said the court, is enough to create a question of material fact as to whether the individual was the dominant influence at the company and whether she determined the policies that resulted in the alleged infringement.

On the second point, the court denied the motion to dismiss the auto body repair company as a defendant. The relationship between the companies created a question of fact as to the ability of the auto body repair company to supervise the creation of its own website. Further, because the photo was posted on its website, sufficient evidence of an obvious and direct financial interest was produced such that summary judgment was inappropriate.

The court spent the largest amount of time considering the third argument, on fair use. In determining whether the use made of a work in any particular case is a fair use, the factors that courts consider include: (1) the purpose and character of the use; (2) the nature of the work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The court found that the use the "Speeding Fall" photo was not transformative, but only somewhat commercial, thus finding that the first factor weighed against the conclusion that the defendants’ use of the photo was fair use. The second factor was found to weigh in favor of fair use because the photo was chosen purely to depict a season. The court found the third factor weighed against fair use because it was reproduced in its entirety and was used as a banner photo.

On the fourth fair use factor, the defendants argued that there was no evidence that the appearance of the photo on the auto body repair company’s website had an adverse effect on the market for the photograph. However, the court stated that it must consider not only the defendant’s specific use of the photo but whether unrestricted and widespread conduct of the sort engaged in by the defendant would result in a substantially adverse impact on the potential market for the original. Here, the plaintiff is a commercial photographer who engages in the licensing of photographs for profit. Were website operators permitted to use copyrighted photographs without obtaining licenses on a grand scale, sites like shutterstock would no longer be able to charge even $2.90 per month for their myriad fall foliage photographs, the court explained.

Thus, having weighed the four factors, the court found the fair use doctrine inapplicable.

Finally, the court noted that the plaintiff had previously licensed the photo on four occasions for $1,625, and had entered into settlement agreements including retroactive licenses in the amount of $5,250. This evidence, concluded the court, constituted proof of damages, however small those damages might be.

Accordingly, the court denied the defendants’ motion for summary judgment.

This case is No. 7:18-cv-00283.

Attorneys: David Christopher Deal (Law Office of David C. Deal, P.L.C.) for Alessandro Cancian. John Michael Loeschen (Loeschen Law Firm, PLLC) for Hannabass and Rowe, Inc.

Companies: Hannabass and Rowe, Inc.

MainStory: TopStory Copyright WestVirginiaNews

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