IP Law Daily Copyright infringement claims over InfoWars’ use of photographer’s photos survive dismissal
Wednesday, June 19, 2019

Copyright infringement claims over InfoWars’ use of photographer’s photos survive dismissal

By John W. Scanlan, J.D.

The Ninth Circuit’s Perfect 10 precedent regarding the "display" of images did not protect the owner of the InfoWars website from direct copyright infringement claims because that precedent has not been applied outside the context of search engines like Google.

A photographer’s direct copyright infringement counterclaim against the operator of a website that published the photographer’s images without authorization will go to trial, as will various affirmative defenses raised by the photographer in response to the operator’s request for declaratory judgment, the federal district court in San Francisco has ruled. The court found that he had not adequately pleaded his claims for contributory infringement and violation of the DMCA, but allowed him leave to amend (Free Speech Systems, LLC v. Menzel, June 18, 2019, Orrick, W.).

Free Speech Systems, LLC (FSS) owns and operates the website "InfoWars." Peter Menzel is a photographer who shot a series of photographs showing the weekly food purchases of families around the world that was published on his website and in his book "Hungry Planet: What the World Eats." Each photo was accompanied by a textual credit or metadata noting his ownership and authorship. In April 2012, after he published the photographs, InfoWars published a post entitled "Amazing Photos Show What the World Really Eats," which reproduced nine of the photographs without authorization and attributed them to his book rather than to him personally. In December 2018, the photographer sent FSS a cease-and-desist letter alleging that it had violated the Copyright Act; FSS removed the post and photographs from its website in January 2019. After he authorized a settlement demand, FSS filed for declaratory relief. It asked the court for a declaration that its use of the photographs did not infringe his copyrights, a declaration that the three-year statute of limitations barred him from bringing copyright infringement claims, and an award of costs and expenses. The photographer raised various affirmative defenses, asserted claims for copyright infringement and DMCA violations by FSS and unnamed counterdefendants. FSS moved to dismiss the counterclaims and affirmative defenses and asserted that its use of the photographs constituted fair use.

Statute of limitations. The motion to dismiss based upon the statute of limitations was denied because it could not be established as a matter of law that the photographer’s delay in filing suit was unreasonable. FSS argued that the InfoWars post was published in 2012 and that the photographer reasonably could have discovered it by investigating the unauthorized use of his photographs. He asserted that he did not discover the post until 2018 because he did not frequent that website and that he had in the prior three years filed eight infringement lawsuits to enforce his copyrights, including three involving the same photographs at issue in the present case. The court observed that neither party cited any authority supporting their positions regarding whether the delay in discovering the post was reasonable as a matter of law.

Copyright infringement. The court declined to dismiss the photographer’s direct infringement claim. The only element at issue in the parties’ briefings was whether FSS violated Menzel’s copyright by its unauthorized display of the images. FSS’ analysis relied upon the Ninth Circuit’s 2007 decision in Perfect 10, Inc. v. Amazon.com, Inc., in which the court determined that Google had not infringed upon Perfect 10’s copyright in a number of images by displaying full-size images that it accessed from third-party servers because Google did not store these images on its own servers but merely gave the addresses of the images which had been stored elsewhere to the user’s browser. This action did not constitute a "display" of the images that would violate the Copyright Act, the Ninth Circuit reasoned. FSS argued that its was protected by the Perfect 10 precedent because it also did not store the full-size images on its server but merely linked to the Natural Society’s servers for naturalsociety.com on which the images were stored. However, the company cited no cases in which this precedent was applied outside the context of search engines, and the court stated that at this point it lacked facts to take judicial notice that the photographs were never stored on InfoWars’ servers.

However, the photographer’s contributory infringement claim was dismissed with leave to amend. It was not enough for the photographer to allege that InfoWars provided the means to accomplish the contributory infringement. The photographer had not alleged, as required, the identity of the third-party direct infringer. The photographer conceded that he could identify Natural Society as the third-party direct infringer and could amend his complaint to include direct infringement allegations against it and allege further facts regarding InfoWars’ contributions to Natural Society’s infringement.

DMCA violation. The photographer’s claim for violation of the Digital Millennium Copyright Act was dismissed with leave to amend. He had alleged that FSS (or an unidentified counterdefendant) intentionally removed the copyright management information (CMI), consisting of metadata or visible text attribution, from at least one of his photographs. However, he did not identify which photographs had CMI removed or what the altered or removed CMI was, nor did he identify what CMI allegedly had been distributed or how the defendants had distributed the CMI.

Other claims. Because there were material issues of fact at issue regarding fair use, including the purpose and character of the InfoWars post compared to those of the photographer, the extent to which the post was used for commercial purposes, and the effect the publication of the post had on the market for the photographer’s book and licensed photos, the question of fair use could not be resolved as a matter of law. Finally, the court declined FSS’ request to strike 10 of the photographer’s 12 affirmative defenses; some were sufficiently alleged, others might be duplicative but would not require FSS to incur additional time or expense to defend the action, and others might be relevant in opposing FSS’ demand for attorney fees.

This case is No. 3:19-cv-00711-WHO.

Attorneys: Robert Edward Barnes (Barnes Law LLP) for Free Speech Systems LLC. Justin Michael Gomes (Doniger Burroughs) for Peter Menzel.

Companies: Free Speech Systems LLC

MainStory: TopStory Copyright TechnologyInternet CaliforniaNews

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