IP Law Daily Photographer captures infringement judgment over cornhole tournament sponsor’s misuse of casino pic
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Thursday, December 3, 2020

Photographer captures infringement judgment over cornhole tournament sponsor’s misuse of casino pic

By Robert B. Barnett Jr. J.D.

However, factual issues prevented summary adjudication of the sponsor’s fair use and unclean hands defenses.

A professional photographer was entitled to summary judgment on his direct copyright infringement claim that the sponsor of a cornhole tournament used his photograph of the casino where the event was to be played, the federal district court in Charlotte has ruled. The evidence clearly established that the sponsoring company copied the photograph on its website without his permission, and the tangential involvement of the Cherokee Tribe did not invoke the state doctrine. Summary judgment for direct copyright infringement was also granted against the sponsor’s sole owner individually because, regardless whether he was acting on behalf of his company, he committed direct infringement by personally copying the photograph to the website. The court, however, denied the photographer’s summary judgment motion on the company’s affirmative defenses of fair use and unclean hands because factual questions remained about whether the company’s use of the photograph had minimal impact on the market for the photograph and whether the photographer derives his income from licensing or from suing for infringement (Oppenheimer v. The ACL LLC, December 2, 2020, Mullen, G.).

David Oppenheimer is a professional photographer who owns the copyright in a photograph of the lobby of Harrah’s Cherokee Casino Resort in Cherokee, North Carolina. He discovered that the website iplaycornhole.com was using the photograph without his permission to promote an upcoming event at Harrah’s called the 2016 Championship of Bags. He sued The ACL LLC, the owner of the website and the sponsor of the event, as well as William Stacey Moore, The ACL’s sole owner, individually. After discovery, the photographer filed a motion for partial summary judgment on (1) liability for direct copyright infringement and (2) five of the sponsor’s affirmative defenses.

Direct infringement. The photographer’s ownership of the copyright was uncontested. In fact, the sponsor’s copying of the photograph was also uncontested. The sponsor’s only real opposition to the summary judgment motion was to argue that the photographer’s claims were barred by the state doctrine. The sponsor contended that it had received the photograph from the Eastern Band of the Cherokee Indians, which made the publishing of the photograph an official act of a sovereign nation. The sponsor contended that an issue of material fact existed about whether the tribe’s act of giving the photograph to the sponsor constituted an official act of a sovereign nation. The court, however, was having none of it. The sponsor, not the Tribe, published the photograph on the website. The sponsor was not part of the tribe. The copyright infringement claim did not imperil amicable relationships between the federal government and the Tribe, which was the reason why the state doctrine exists. Rejecting the state doctrine argument because it was simply too attenuated, the court granted summary judgment to the photographer and against the sponsor on direct copyright infringement.

Individual liability. The sponsor’s individual owner argued that he could not be held personally liable because the photographer failed to pierce the corporate veil. Citing the Copyright Act, the court ruled that liability for direct copyright infringement lies with "anyone" who infringes the copyright. If an individual commits copyright infringement, he cannot hide behind a limited liability company to avoid liability. Thus, regardless of his role with the sponsor, an individual who personally violates the copyright is personally liable for that infringement. In his deposition, he admitted that he operated the website and that he personally published the photograph. As a result, summary judgment for direct infringement was granted against him personally.

Affirmative defenses. The photographer sought summary judgment on five affirmative defenses: fair use, unclean hands, de minimis use, implied license, and failure to mitigate damages. In opposing the motion, however, the sponsor only argued for fair use and unclean hands. As a result, the photographer was granted summary judgment by default on the affirmative defenses of de minimis use, implied license, and failure to mitigate damages.

Fair use. In examining whether the use of a copyrighted work is "fair," four factors are used, the last of which is the effect of the use upon the potential market for, or value of, the copyrighted work. According to the court, the photographer failed to establish facts enough to justify summary judgment on the impact of publication of the photograph on the potential market for the photograph. While the photographer alleged that his income was derived from licensing his photographs, the sponsor contended that his income was derived primarily from copyright infringement lawsuits. Given the factual dispute, the court could not say as a matter of law that the photographer was entitled to summary judgment on the fair use affirmative defense.

Unclean hands. The unclean hands affirmative defense was based on a misuse of copyright argument arising out of an allegation that the photographer is a copyright troll. The sponsor alleged that the photographer has retained a service that looks for infringing uses and that he has filed hundreds of infringement lawsuits. Although that allegation is far from settled, including its impact on the photographer’s remaining claims, the dispute was enough to raise genuine issues of fact sufficient to defeat the summary judgment motion.

Conclusion. The court, therefore, (1) granted summary judgment on direct copyright infringement against both the sponsor and the individual, (2) granted summary judgment on the affirmative defenses of de minimis use, implied license, and failure to mitigate, and (3) denied summary judgment on the affirmative defenses of fair use and unclean hands. The case will continue on all remaining claims.

This case is No. 3:19-CV-00024-GCM.

Attorneys: Dana A. Lejune (LeJune Law Firm) for David Oppenheimer. Larry S. McDevitt (The Van Winkle Law Firm) for William Stacey Moore, The ACL LLC.

Companies: The ACL LLC

MainStory: TopStory Copyright NorthCarolinaNews GCNNews

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