IP Law Daily Getty Images did not infringe sports photos obtained via license agreement
Wednesday, March 3, 2021

Getty Images did not infringe sports photos obtained via license agreement

By Thomas Long, J.D.

Getty had valid rights to use the images, and there was no evidence that it intentionally or knowingly removed the copyright management information of competing agency Zuma Press.

Stock photo agency Getty Images (US), Inc., did not infringe the copyright of 47,048 sports photographs to which photography agency Zuma Press Inc. and several other photographers and agencies (together, "Zuma") held the rights, the U.S. Court of Appeals in New York City has held, affirming a district court’s grant of summary judgment in favor of Getty. There was no genuine dispute that Getty held valid licenses to use the photos. Getty did not exceed the terms of the licenses covering the images. The district court also correctly granted summary judgment to Getty as to Zuma’s claim that Getty altered copyright management information (CMI) in violation of the Digital Millennium Copyright Act (DMCA) because there was no evidence giving rise to a reasonable conclusion that Getty had actual knowledge that mistakes in an automated migration process had removed or altered CMI in the digital image files. Finally, the Second Circuit affirmed the district court’s denial of attorney fees to Getty, holding that the district court acted within its discretion in deeming Zuma’s claims to be objectively reasonable, non-frivolous, and properly motivated (Zuma Press, Inc. v. Getty Images (US), Inc., March 3, 2021, per curiam).

Zuma offered licenses to the public in connection with more than 20 million photographs, including more than 200,000 sports photographs. Zuma alleged that Getty, one of the world's largest stock photo agencies, improperly copied at least 47,048 of their sports photographs, displayed them on its website, and sold and licensed them to the public. The plaintiffs also alleged that Getty removed their CMI from each photograph and replaced it with a "Getty Images" watermark. Zuma sued Getty for direct and contributory copyright infringement and removal and alteration of the CMI in violation of DMCA Section 1202, among other claims. The district court denied Getty’s motion to dismiss the lawsuit, and determined that Zuma was not estopped from asserting copyright claims regarding photos "commingled" with another agency’s collection, but it later granted summary judgment in Getty’s favor. Zuma appealed; Getty also appealed the district court’s denial of its motion for attorney fees under Section 505 of the Copyright Act.

Infringement—license defense. The appellate court held that "a reasonable juror could find only that Getty established the existence of a valid license." The undisputed facts in the record established an unbroken chain of authorization from Zuma to Getty. Zuma and NewSport Photography, Inc., had separately reached agreements with Corbis Corporation, another large photograph-licensing agency, to license and distribute their respective images. Zuma’s agreement with Corbis yielded Zuma a 40% royalty rate; NewSport’s agreement with Corbis yielded NewSport a 50% royalty rate. When Zuma learned of NewSport’s favorable royalty, it came up with an arrangement with NewSport to submit its images to Corbis under NewSport’s contract with Corbis, using NewSport’s credentials and NewSport’s file transmission protocol (FTP). In turn, NewSport’s royalty payments were redirected to Zuma. The arrangement was memorialized in writing, and the written agreement affirmed that NewSport was authorized to submit all images it sent to Corbis under its contract with Corbis and that Zuma was authorized to receive royalty payments due to NewSport under its contract with Corbis. Zuma conceded that delivered all the images at issue Corbis for distribution under NewSport’s contract with Corbis, using NewSport’s FTP channel and credentials.

The contract gave Corbis "the right to use, reproduce, publish, exhibit, perform, publicly display, distribute, broadcast and transmit" the images, as well as to assign its rights as part of a corporate reorganization, consolidation, merger, or sale. In January 2016, Corbis sold its image portfolio to Unity Glory International Ltd. Unity Glory then entered into an agreement authorizing Getty to distribute and market outside of China all the images it acquired from Corbis. Getty ultimately obtained the images at issue in this action as part of its agreement with Unity Glory. According to the Second Circuit, under the plain language of these agreements there was no dispute that Getty obtained a valid license. Getty only posted the images on its website during the effective period of NewSport’s agreement with Corbis and took them down before the rights transfer expired. Therefore, Getty was entitled to summary judgment in its favor on the copyright infringement claim.

DMCA claim. Zuma argued that there was a genuine dispute of material fact as to whether Getty: (1) knowingly altered Zuma’s CMI without authority; and (2) knew or had reason to know that distributing their images would induce, enable, facilitate, or conceal an infringement. The court disagreed. To establish a violation of Section 1202(b)(3) of the DMCA, a plaintiff must establish actual knowledge that CMI was removed or altered without the copyright owner’s authority, as well as actual or constructive knowledge that distribution would lead to infringement.

"Here, no reasonable juror could conclude that Getty knowingly removed or altered Plaintiffs’ CMI without authority," the Second Circuit said. There was no evidence that Getty had actual knowledge that the images at issue were commingled with the NewSport collection. In fact, a reasonable juror could only conclude that Getty did not know about Zuma’s purported rights in the images until Zuma contacted Getty to complain that Getty lacked permission to use them. This happened after Getty had completed the migration process and posted the images to its website. Getty promptly removed images it was able to identify as associated with Zuma. Any changes to Zuma’s CMI resulted not from an intentional act of which Getty was aware, but from errors and mistakes in the automatic migration process itself, which involved about 7 million images. Therefore, summary judgment was properly granted to Getty on the DMCA claim.

Attorney fees. Finally, the Second Circuit affirmed the denial of fees to Getty as the prevailing party. The district court acted within its discretion in concluding that Zuma’ claims were objectively reasonable, non-frivolous, and properly motivated. "Plaintiffs’ copyright infringement claim concerned a complex set of facts, which Plaintiffs reasonably argued resolved in their favor," the court said, adding that "Plaintiffs’ DMCA claim turned on the DMCA’s double-scienter requirement, which this Court had not construed in a precedential opinion until well after the district court decided Plaintiffs’ motion for summary judgment." There was nothing in the record to indicate that Zuma brought the action for improper motives.

This case is Nos. 19-3029 and 19-3177.

Attorneys: James H. Freeman (Liebowitz Law Firm, PLLC) for Zuma Press, Inc. Benjamin E. Marks (Weil, Gotshal & Manges LLP) for Getty Images [US], Inc.

Companies: Zuma Press, Inc.; Getty Images (US), Inc.

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