IP Law Daily Photographer’s copyright infringement suit against Time Magazine for reproduction of covers dismissed
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Wednesday, July 28, 2021

Photographer’s copyright infringement suit against Time Magazine for reproduction of covers dismissed

By Brian Craig, J.D.

The parties’ licensing agreements explicitly permitted the reproduction of the magazine covers in any media and for any purpose.

In a photographer’s suit against the owner of Time Magazine alleging copyright infringement over the reproduction of magazine covers, the federal district court in New York City has dismissed the case. In granting the motion to dismiss filed by defendants Time USA, LLC and print-on-demand website Pixels.com, LLC, the court concluded that the photographer’s licensing agreements with Time Magazine explicitly permitted the reproduction of the magazine covers in any media and for any purpose. Because the licensing agreements stated that the photographer retained ownership of the photographs and Time Magazine retained the right to reproduce the covers, the court dismissed the copyright infringement and falsification of copyright management information claims (Michael Grecco Productions, Inc. v. Time USA, LLC, July 27, 2021, Buchwald, N.).

Michael Grecco is a commercial photographer who entered into two agreements with Time Magazine in 2000 and 2005. In the agreements, Time Magazine licensed to use three photographs on its covers. Recently, Time began working with Pixels to facilitate the sale of print-on-demand products of Time Magazine covers. On Pixel’s website, a shopper can view the magazine covers via a "full resolution preview," which displays the covers with a watermark that superimposes the name of the website, "fineartamerica.com" (the name of one of Pixel’s websites). Print-on-demand websites allow consumers to select images for printing on a variety of products, including on canvas, metal, and wood, which are made-to-order upon purchase. The photographer brought an action against Time USA, LLC ("Time") and Pixels (together, "defendants") alleging copyright infringement and falsification of copyright management information ("CMI"). The defendants filed a motion to dismiss.

Copyright infringement. The court first concluded that the photographer failed to state a claim for copyright infringement because Time Magazine did not exceed the scope of the licenses. Copyright infringement actions involving only the scope of the alleged infringer’s license present the court with a question that essentially is one of contract: whether the parties’ license agreement encompasses the relevant activities. In cases where only the scope of the licenses is at issue, the copyright owner bears the burden of proving that the defendant’s copying was unauthorized.

Here, the licensing agreements state that Time Magazine retains the right to reproduce the cover of the Magazine as it appears "in any media, for any purpose, in perpetuity without additional payment." The court rejected the photographer’s argument that reproduction rights with respect to the magazine covers are limited to modes of communication, and print-on-demand products fall outside of this category. The court concluded that the definitions of "medium" unequivocally encompassed the print-on-demand products, including prints on canvas, wood, and metal, that were the subject of this case.

Furthermore, Pixels did not infringe the copyright interests in the photographs. Where a licensor has granted a non-exclusive license to a licensee, the licensee may rely on agents in carrying out permitted uses without converting those agents into independent licensees. Because the defendants did not exceed the scope of the licenses set forth in the agreements, the court granted the motion to dismiss the copyright infringement claim.

Falsification of CMI. The court also concluded that the claim for falsification of copyright management information claim ("CMI") failed. Time Magazine created unique covers using the photographs, on which Time overlayed the Time logo, the trademarked Time red border, and text. At no time did the defendants claim ownership of the photographs. Instead, the watermark and attribution represent defendants’ reproduction rights with respect to the covers. The licensing agreements stated that ownership of the photograph and the copyright in it remain with the photographer, but Time Magazine retained the right to reproduce the cover. Additionally, a party that puts its own CMI on work distinct from work owned by a copyright holder is not liable for falsification of CMI, even if the party’s work incorporates the copyright holder’s works. The photographer failed to allege that the defendants falsified CMI on the magazine covers or that defendants possessed the requisite scienter. Therefore, the court dismissed the claim for falsification of CMI.

The case is No. 1:20-cv-04875-NRB.

Attorneys: Joseph Anthony Dunne (SRIPLAW, PLLC) for Michael Grecco Productions, Inc. Robert Alden Bertsche (Prince Lobel Tye LLP) for Time USA, LLC.

Companies: Michael Grecco Productions, Inc.; Time USA, LLC

MainStory: TopStory Copyright TechnologyInternet GCNNews NewYorkNews

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