Agence France Presse v. Morel, 10 Civ. 2730 (S.D.N.Y. May 29, 2012)

Case 1:10-cv-02730-AJN-MHD Document 162 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT NEW YORK - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -- - - - - X AGENCE FRANCE PRESSE,
: Plaintiff, : - against : : DANIEL MOREL, : Defendant and : Counterclaim-Plaintiff. : : - against : : AGENCE FRANCE PRESSE, : Counterclaim-Defendant, : : - and : : GETTY IMAGES (US), INC.; THE : WASHINGTON POST COMPANY and AFP : and GETTY Licensees Does 1-et al., : Third-Party Defendants. : - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -- - - - - X
Filed 05/29/12 Page 1 of 53
10 Civ. 2730 (AJN)(MHD)
COUNTERCLAIM DEFENDANTS MEMORANDUM IN OPPOSITION TO MORELS MOTION FOR SUMMARY JUDGMENT
Joshua J. Kaufman Meaghan H. Kent Elissa B. Reese VENABLE LLP 575 7th Street, N.W. Washington, DC 20004-1601 Telephone: (202) 344-4000 Fax: (202) 344-8300 Counsel for Plaintiff-Counterclaim Defendant Agence France Presse
James Rosenfeld Deborah Adler Samuel M. Bayard DAVIS WRIGHT TREMAINE LLP 1633 Broadway 27th floor New York, New York 10019 Telephone: (212) 489-8230 Attorneys for Counterclaim Defendants Getty Images (US), Inc. and the Washington Post Company
May 29, 2012
DWT 19606268v9 0053349-000076
Case 1:10-cv-02730-AJN-MHD Document 162
TABLE OF CONTENTS PRELIMINARY STATEMENT ...................................................................................................... 1 ARGUMENT .................................................................................................................................... 6 I. Defendants Are Not Liable for Direct Copyright Infringement ..................................... 6 A. AFP Is Not Liable for Direct Infringement......................................................... 7 1. 2. B. AFP Submits that the Twitter Terms of Service Provide a Copyright License ................................................................................... 7 AFP Does Not Dispute Morels Current Standing ............................... 10
Getty Images Is Not Liable for Direct Infringement ........................................ 11 1. 2. The Record Establishes Getty Images Narrow and Passive Role in the Distribution of AFP Content ....................................................... 11 The DMCA 512(c) Safe Harbor Applies, Precluding Summary Judgment for Morel as to His Copyright Infringement Claims Against Getty Images ............................................................................ 20 a. b. Getty Images is a Service Provider and AFP is a User of its Service .................................................................................. 20 Getty Images Fits Squarely Within the Safe Harbor as Recently Clarified by the Second Circuit in Viacom v. YouTube .................................................................................... 22
3. C. II.
Getty Images Did Not Act With Sufficient Volition to be Held Liable for Direct Infringement .............................................................. 25
The Plaintiffs Allegations That the Post Did More Than Display Certain Photos Are Erroneous ....................................................................................... 25
The Defendants Did Not Act Willfully ......................................................................... 27 A. B. C. AFP Did Not Act Willfully ............................................................................... 28 Getty Images Acted Innocently ........................................................................ 30 The Post Acted Innocently ................................................................................ 32
III.
Mr. Morels Claim for Indirect Liability Must Fail ...................................................... 34 A. Morels Claim of Contributory Copyright Infringement Must Fail.................. 34 i
DWT 19606268v9 0053349-000076
B. IV. V.
Morels Claim of Vicarious Copyright Infringement Must Fail ....................... 35
Morel Is Entitled to Only a Single Statutory Damages Award Per Work .................... 37 Mr. Morels Copyright Management Information Claims Must Fail ........................... 39 A. Defendants Did Not Provide False CMI Pursuant to 1202(a) .......................... 39 1. 2. B. C. AFP Did Not Provide False CMI With Any Mal-Intent ....................... 39 Getty Images Did Not Provide False CMI With The Requisite Intent ..................................................................................................... 42
There Was No Removal of CMI Pursuant to 1202(b) ................................... 43 DMCA Statutory Damages Are Limited to Each Violation and Not Each Download ................................................................................................. 44
CONCLUSION ............................................................................................................................... 45
ii
DWT 19606268v9 0053349-000076
TABLE OF AUTHORITIES Page(s) CASES Adobe Systems Inc. v. Canus Prods., Inc., 173 F. Supp. 2d 1044 (C.D. Cal. 2001) ...................................................................................37 Arista Records LLC v. Lime Group LLC, 784 F. Supp. 2d 313 (S.D.N.Y. 2011)......................................................................................39 Bouchat v. Champion Prods., Inc., 327 F. Supp. 2d 537 (D. Md. 2003), affd sub nom. Bouchat v. Bon-Ton Dept Stores, Inc., 506 F.3d 315 (4th Cir. 2007) ............39 Bourne v. Walt Disney Co., 68 F.3d 621 (2d Cir. 1995).....................................................................................................7, 9 Bryant v. Media Right Productions, Inc., 603 F.3d 135 (2d Cir. 2010), cert. denied, 131 S. Ct. 656 (2010) ...........................................29 Capitol Records, Inc. v. MP3tunes, LLC, 821 F. Supp. 2d 627 (S.D.N.Y. 2011)......................................................................................22 Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008)...............................................................................................25, 26 Castle Rock Entmt v. Carol Publg Grp., Inc., 955 F. Supp. 260 (S.D.N.Y. 1997), affd, 150 F.3d 132 (2d Cir. 1998) ..................................29 Ellison v. Robertson, 357 F.3d 1072 (9th Cir. 2004) ..................................................................................................38 Encyclopedia Brown Prods. Ltd. v. Home Box Office, Inc., 25 F. Supp. 2d 395 (S.D.N.Y. 1998)........................................................................................32 Evans-Gadsden v. Bernstein Litowitz Berger & Grossman, LLP, 491 F. Supp. 2d 386 (S.D.N.Y. 2007)......................................................................................37 Fallaci v. New Gazette Literary Corp., 568 F. Supp. 1172 (S.D.N.Y. 1983).........................................................................................28 Faulkner v. Natl Geographic Socy, 211 F. Supp. 2d 450 (S.D.N.Y. 2002), affd, 409 F.3d 26 (2d Cir. 2005) ...............................35 Fitzgerald Publg Co. v. Baylor Publg Co., 807 F.2d 1110 (2d Cir. 1986)...................................................................................................28 iii
DWT 19606268v9 0053349-000076
Gershwin Publg Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159 (2d Cir. 1971)...................................................................................................35 Hamil American Inc. v. GFI, 193 F.3d 92 (2d Cir. 1999).......................................................................................................28 Io Group, Inc. v. Veoh Networks, Inc., 586 F. Supp. 2d 1132 (N.D. Cal. 2008) ...................................................................................22 Island Software and Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257 (2d Cir. 2005).....................................................................................................28 Lipton v. Nature Co., 71 F.3d 464 (2d Cir. 1995).......................................................................................................32 Livnat v. Lavi, No. 96 Civ 4967, 1998 WL 43221 (S.D.N.Y. Feb. 2, 1998) ...................................................35 Marinelli v. Chao, 222 F. Supp. 2d 402 (S.D.N.Y. 2002)......................................................................................27 Marvullo v. Gruner & Jahr, 105 F. Supp. 2d 225 (S.D.N.Y. 2000)......................................................................................36 Matthew Bender & Co. v. West Publg Co., 158 F.3d 693 (2d Cir. 1998).....................................................................................................35 McClatchey v. Associated Press, No. 3:05-cv-145, 2007 WL 1630261 (W.D. Pa. June 4, 2007) ...................................39, 45, 46 Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) .................................................................................................................35 N.A.S. Import Corp. v. Chenson Enters., Inc., 968 F.2d 250 (2d Cir. 1992).....................................................................................................32 People v. Harris, No. 2011-N.Y.-080152, -- N.Y.S.2d --, 2012 WL 1381238 (Crim. Ct. N.Y. County Apr. 20, 2012) .....................................................................................9 Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) ..................................................................................................22 Rojo v. Deutsche Bank, No. 10-2999-cv, 2012 WL 1813670 (2d Cir. May 21, 2012) ..................................................36 Rosen v. Hosting Services, Inc., 771 F. Supp. 2d 1219 (C.D. Cal. 2010) ...................................................................................22 iv
DWT 19606268v9 0053349-000076
Stockwire Research Group, Inc. v. Lebed, 577 F. Supp. 2d 1262 (S.D. Fla. 2008) ....................................................................................46 Syracuse Broad. Corp. v. Newhouse, 236 F.2d 522 (2d Cir.1956)......................................................................................................37 UMG Recordings, Inc. v. Veoh Networks Inc., 620 F. Supp. 2d 1081 (C.D. Cal. 2008) ...................................................................................22 Viacom Intl, Inc. v. YouTube, Inc. (Viacom I), 718 F. Supp. 2d 514, affd, 676 F.3d 19 (2d Cir. 2012)...........................................................22 Viacom Intl v. YouTube Inc. (Viacom II), 676 F.3d 19 (2d Cir. 2012)............................................................................................... passim Wolk v. Kodak Imaging Network, Inc., No. 10 Civ. 4135, -- F.Supp.2d --, 2012 WL 11270 (S.D.N.Y. Jan. 3, 2012) .........................25 STATUTES 17 U.S.C. 106(5) .........................................................................................................................11 17 U.S.C. 107 ..............................................................................................................................27 17 U.S.C. 504(c)(1).....................................................................................................................38 17 U.S.C. 512 ...................................................................................................................... passim 17 U.S.C. 1202 ......................................................................................................................12, 45 17 U.S.C. 1202(a) .............................................................................................................5, 40, 44 17 U.S.C. 1202(b) ...........................................................................................................40, 43, 44 17 U.S.C. 1203 ............................................................................................................................45 OTHER AUTHORITIES Fed. R. Civ. P. 8 .............................................................................................................................36 Fed. R. Civ. P. 56 .......................................................................................................................2, 36 Fed. R. Civ. P. 56(c) ....................................................................................................................1, 2 Local Rule 56.1 ......................................................................................................................1, 2, 34 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure (3d ed. 2004) ............37 v
DWT 19606268v9 0053349-000076
Melville B. Nimmer & David Nimmer, Nimmer on Copyright (2012) ...................................28, 35
vi
DWT 19606268v9 0053349-000076
Counterclaim Defendants Agence France Presse (AFP), Getty Images (US), Inc. (Getty Images) and The Washington Post Company (the Post) (collectively Defendants) submit this memorandum of law in opposition to Counterclaim Plaintiff Daniel Morels (Morel) Motion for Summary Judgment (the Motion). Defendants oppose Morels Motion on the grounds articulated below, and further submit that summary judgment should in fact be granted in their favor for the reasons set forth in their own summary judgment papers.1 PRELIMINARY STATEMENT In his Motion and supporting papers, Morel seeks to paint Defendants as internet pira[tes] who stole images of the 2010 Haiti earthquake he had posted on Twitter and distributed them in willful disregard of his intellectual property rights. (Morel Brief, p. 5). To support this characterization, Morel offers a voluminous, 177-page Rule 56.1 Statement (Morel 56.1) of supposedly undisputed material facts. However, even a casual review of the Morel 56.1 Statement reveals it as a procedurally improper and substantively flawed document that is rife with inaccuracies, unsupported factual statements and improper legal argument.2 Prior to the 2010 Amendments to Rule 56(c)(2), Defendants would have filed a motion to strike these paragraphs. In accordance with the advisory committee notes, Defendants note their objections to
Cognizant of the voluminous nature of the parties cross-motions for summary judgment, Defendants make an effort in this Opposition to refer back to the memorandum of law in support of their Joint Motion for Summary Judgment (Joint Brief) (Dkt. #144) and Rule 56.1 Statement (Joint 56.1) (Dkt. #129) rather than repeating those materials herein. Morels 56.1 violates Local Rule 56.1(a) and (d)s basic requirements, including Local Rule 56.1(d)s requirement that each statement must be followed by citation to evidence which would be admissible, set forth as required by Fed. R. Civ. P. 56(c). As Defendants Joint 56.1 Counter-Statement (Joint 56.1 Counter-Statement) details, Morels 56.1 repeatedly fails to cite evidence that supports the claim, fails to cite admissible evidence, fails to cite the correct evidence, cites to evidence that has not been made of record, cites evidence that is immaterial to Morels Motion and/or includes improper legal argument or conclusions. Defendants have identified the following paragraphs that fail to comply with Local Rule 56.1: 4, 7, 9, 11-16, 18, 20, 21(vii), 21(xii), 25, 32, 33, 35, 45, 59, 61, 62, 64-66, 77, 80, 82, 83, 85-92, 94-96, 109, 111, 113-116, 118, 121, 125-129, 132, 133, 135, 140-142, 144, 147-152, 154-158, 163, 165-171, 173-175, 179, 182, 183, 185, 186, 188, 190, 201-204, 206, 207, 209, 212-215, 219-224, 229, 230, 234-236, 238-240, 242-244, 247-250, 252, 260, 263-267, 271, 275-277, 282, 285, 286, 288, 294, 295, 298, 303306, 308-316, 319, 320, 322, 323, 326, 327, 330, 331, 334, 336, 340-342, and 345.
2 1
1
DWT 19606268v9 0053349-000076
Mr. Morels proffered evidence in their response to Mr. Morels Rule 56.1 Statement, rather than filing a separate motion. Pursuant to the Advisory Committee Notes to the 2010 Amendments to Federal Rule 56(c)(2), Defendants objections to these portions of the Morel 56.1 place the burden on Morel to establish the admissibility of his supposed supporting evidence. (See Fed. R. Civ. P. 56 Advisory Committee Note to 2010 Amendments). After weeding out Morels inaccurate and unsupported factual statements, the evidence in this case tells a very different story. Indeed, there is no genuine dispute that: Haiti suffered a catastrophic 7.0 earthquake on the afternoon of January 12, 2010. In the immediate aftermath of the earthquake, Morel took photographs of the devastation in Port-au-Prince and posted them to Twitter via TwitPic on the evening of January 12. Shortly after Morels posting of his photos to Twitter, non-party Lisandro Suero (Suero) copied several of those photos and reposted them on his own TwitPic page. Later that evening, AFP downloaded the Photos at Issue3 from Sueros TwitPic page not Morels TwitPic page believing Suero to be a citizen journalist photographer who posted the photos to alert the world to the tragedy unfolding in Haiti with the intent that they be shared, and understanding the Twitter Terms of Service to have granted it a license to re-broadcast the photos. Starting late in the evening of January 12 and continuing into January 13, AFP distributed the Photos at Issue with a credit to Suero, who it believed to be the
The term Photos at Issue is defined in paragraph of 130 of Defendants Joint 56.1 Statement and refers to the eight photographs over which Mr. Morel claims copyright ownership that Vincent Amalvy of AFP downloaded from Mr. Sueros TwitPic account on January 12, 2010.
2
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 10 of 53
photographer on its image database and through its wire to its subscribers and distribution partners, including to the back-end systems of its distributor Getty Images. Upon receiving the Photos at Issue, Getty Images back-end systems automatically processed the Photos at Issue and pushed them out over Getty Images FTP feed to its editorial feed subscribers. Getty Images also posted the Photos at Issue on its website after byline information was formatted without altering the photographer credit so that the Photos at Issue could publish to the website. On January 13, 2010, upon learning that Morel, not Suero, was the photographer, AFP immediately corrected the credit to Morel on its own system and sent new Morelcredited versions of the Photos at Issue over its wire to its subscribers and distribution partners, including to the back-end systems of Getty Images, which automatically processed and distributed those image over its FTP feed and onto its website in the same manner as the original set of Photos at Issue. Upon learning, on January 13, that Morel claimed that Defendants did not have permission to distribute the Images at Issue, AFP and Getty Images each took prompt, good faith and reasonable steps to remove the photos from their systems and notified their customers that the photos had to be removed. Getty Images, upon learning of additional Suero-credited images that remained on its system on February 2, again took prompt, good faith and reasonable steps to remove the photos from their systems and subsequently notified their customers that the photos had to be removed.
3
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 11 of 53
The Post is a Getty Images subscriber, obtained the Photos at Issue through Getty Images FTP feed, and used certain of those photos in good faith, believing it was authorized to do so, and without knowledge of any copyright issue.4
When the Post was alerted in June 2010 to potential copyright issues regarding certain of the Photos at Issue, it promptly attempted to remove them, and it did so again in April 2011 when it was advised that the photos remained on its website.
These undisputed facts not only preclude the Court from granting Morels motion for summary judgment on any of his claims or Defendants affirmative defenses, they also entitle Defendants to dismissal of Morels claims. Morels Motion and supporting papers also fail to provide sufficient legal authority supporting his request for summary judgment on his claims and Defendants defenses. His motion papers repeatedly ignore or misunderstand the governing legal standards, and even where he identifies the correct governing law, he misapplies it to the factual record in this case. For these reasons, and the reasons set forth in Defendants Joint Brief, the Court should deny Morels Motion (and grant the corresponding portions of Defendants own summary judgment motion) on a number of issues at this stage: First, as to Morels claims for direct copyright infringement, (a) AFP submits that it is not liable because Morel granted a license to third parties to rebroadcast the Photos at issue, based on the Twitter Terms of Service; (b) Getty Images submits that the safe harbor set forth in Digital Millennium Copyright Act (DMCA) 512(c) shields it from copyright liability and that it lacked the requisite volition to be held liable for direct infringement, based on its minor and
Morel erroneously sued The Washington Post Company, the parent company of WP Company LLC d/b/a/ The Washington Post. WP Company LLC is the publisher of The Washington Post newspaper and the www.washingtonpost.com website. The Washington Post Company has no role in the publishing decisions or operations of the Post. (Joint 56.1 63-64).
4
4
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 12 of 53
passive role in the distribution of the Photos at Issue; and (c) while the Post concedes that it publicly displayed certain of the photos, having licensed them from Getty Images and therefore fully believing that its use was authorized, it submits that it did not download any of the other photos as Plaintiff belatedly suggests. Second, the Court should also reject Morels claims for secondary copyright infringement. The record before the Court contains no evidence sufficient to create a genuine issue of material fact suggesting that AFP or Getty Images (a) induced, caused or contributed to infringing conduct by their customers with sufficient knowledge of that conduct to be held contributorily liable; or (b) directly profited from others infringing activity in circumstances where they had the ability to control such activity, so as to be held vicariously liable. Morel asserts for the first time in his Motion that AFP is vicariously liable; as discussed below, having failed to make this claim in his counterclaim, he cannot now move for judgment as to this unasserted claim. Third, to the extent any of the three Defendants were held liable for direct or indirect copyright infringement, there are strict limitations on the damages Morel is entitled to recover. The record demonstrates conclusively that any infringement was not willful, and indeed that Getty Images and the Post acted innocently. Furthermore, Morel is entitled to only one statutory damages award per infringing work, not multiple awards as he seeks. Finally, Morels claim for DMCA liability fails in the face of clear evidence in the record establishing beyond any genuine issue that Defendants did not provide false copyright management information or remove copyright management information with the knowledge or intent required to be held liable under DMCA 1202(a) or (b). And even if the Court were to find Defendants liable under the DMCA, Morels damages are limited to one award per violative 5
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 13 of 53
act (i.e. the distribution of a photo, no matter how many times), not once per license as Morel suggests. There is no legal basis for the windfall he seeks. ARGUMENT I. Defendants Are Not Liable for Direct Copyright Infringement For purposes of this motion, the Defendants do not dispute that Morel owns a copyright in the eight Photos at Issue and do not dispute that he has registered the copyright in the Photos at Issue. Nor do the Defendants dispute for purposes of this motion that they copied, distributed and displayed certain of the Photos at Issue. Specifically, as articulated in their Joint Brief, AFP and Getty Images copied, distributed and displayed the eight Photos at Issue (Joint 56.1 129-130, 153) and the Post displayed a subset of those photos (Joint 56.1 234). However, Morel has not established and cannot show that any of the Defendants are liable for direct copyright infringement. Indeed, the record in this case shows that all of the Defendants have complete defenses to Morels direct copyright infringement claims: AFP asserts that it, Getty Images, and its customers have a complete defense of license by virtue of the Twitter terms of service. Getty Images asserts that it is protected by the safe harbor of the Digital Millennium Copyright Act and that it did not act volitionally. If Morel is able to overcome the license defense asserted by AFP, the Post does not dispute direct-infringement liability for its display of four of the photographs, although it expressly preserves all other defenses. However, Morels untimely assertion that the Post also downloaded other Photos at Issue without displaying them (the Third Amended Counterclaim contains no such allegation), is wrong as a factual matter because the downloading was done by a separate company not sued here. It is also wrong as a legal matter because a news organizations 6
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 14 of 53
downloading of images from a licensor, for the mere purpose of reviewing them to consider whether or not to display them to the public, is self-evidently a protected fair use. A. AFP Is Not Liable for Direct Infringement 1. AFP Submits that the Twitter Terms of Service Provide a Copyright License
As articulated in detail in Defendants Motion, AFP moves for summary judgment against Morels claims of Copyright Infringement based on the complete defense of license. By registering for a Twitter account and posting his photos via TwitPic, Morel became subject to the Twitter Terms of Service that granted a license to third parties, including the Defendants and their subscribers, to rebroadcast his photos. (Joint 56.1 84, 85). This license is a complete defense to a claim of copyright infringement. Bourne v. Walt Disney Co., 68 F.3d 621, 63132 (2d Cir. 1995). AFP contends that though Morel maintained ownership of his copyright, he granted a license pursuant to the Twitter Terms of Service. AFP is well versed in copyright and agrees that one does not inherently lose copyright by posting copyrighted material online. AFP takes no such position and does not argue that Morel has surrendered his copyright. As Morel points out, that is axiomatic to Defendants business. Though AFP agrees that posting online itself does not put a work in the public domain or grant a license, when one posts to a third party service or website, the terms of service for that site control and may well do those things. Every third party site has a different set of terms of service and by using that proprietary service, the user agrees to be bound by those terms, just as Morel did here. (See Joint 56.1 81-83). Some terms of service provide creative commons licenses, some provide license with attribution, some provide for no license. Morel cannot post online to a site that provides a license to third parties to use and re-broadcast posted content and at the same time claim that the Defendants willfully infringed his copyright. 7
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 15 of 53
Morel had the option of sending his photos to Corbis but instead chose to post them to Twitter. Morel states that he thought he could do better licensing the photos himself rather than sending them to his agent, Corbis, and admits this was nave. (Morel 56.1 24). This was nave not only because Corbis has the means and the wherewithal to properly market and license the photos, but also because Morel was in a location of devastation where he admits that he had very limited internet access and quite simply was unavailable to negotiate to license his photos. (See Joint 56.1 at 73-74). This is evidenced by the numerous news outlets who attempted to contact Morel, and to whom he never responded. (See inter alia Morel 56.1 33, 41-44, 46-50). Morel chose Twitter and he is bound by that choice. Even if Morel wanted to go it alone without Corbis, he, and everyone else, has a choice when posting online; Morel could have posted his photos to a variety of places, including a private website or any other site that does not have the same terms of service as Twitter. Twitter was an excellent venue for spreading news and images about the tragic earthquake, and is regularly used successfully to share information on a wide scale. But it is not the venue for licensing proprietary materials, which is clear from its use, is explained in its terms of service, and is well understood by users. (See inter alia Joint 56.1 85-94). Morel did not have to post to Twitter/TwitPic but he chose to and he accepted and is bound by Twitters Terms of Service that grant a license to third parties. (See Joint 56.1 7591). Morels Motion acknowledges that the Twitter Terms of Service apply to him. However, he argues that the Twitter license is limited to Twitter and its partners and that Twitter users can only share and display Morels photos on Twitter. (Morel Brief, p. 47). In doing so, he ignores the portions of the license that do not support his position, Twitters guidelines on the matter, and the widespread public understanding of Twitter and its terms. Since Morel has acknowledged the 8
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 16 of 53
existence of a license and only disputes the scope of the license, it is his burden to prove that the defendants copying was unauthorized. Bourne, 68 F.3d at 631. Morel cannot meet his burden of establishing that the Twitter Terms of Service are so limited. Pursuant to the Twitter Terms of Service, Morel granted a worldwide, non-exclusive, royalty-free license, to use, copy, publish, display, and distribute posted materials to three categories of users: Twitter, Twitters partners, and Twitters other users. (Joint 56.1 84, 85). Specifically, the Twitter Terms of Service state in part: This license is you authorizing us to make your tweets available to the rest of the world and to let others do the same. (Joint 56.1 85) (emphasis added). Looking now beyond the pleadings, as the Court may do at this juncture, the evidence shows that Twitters understood intent is to grant a license to other users. Morel relies on the Courts Order on Defendants Motion to Dismiss as holding that AFP did not qualify as permitted licensees pursuant to Twitters Terms of Service. However, the Court explained it could not find on the pleadings that Twitter conferred a license to other users. (Dkt. 52, p. 12, emphasis added). As explained in detail in the Joint Brief, Twitters intent to license to other users beyond just itself and its third party partners is evidenced by its Terms of Service (Joint 56.1 85, 86, 87) and its Guidelines for Third Party Use of Tweets in Broadcast or Other Off line Media (Guidelines) (Joint 56.1 91; Hendon Decl. 7, Ex. 5). Further, as explained in detail in AFPs Motion, this is the widespread understanding of Twitters intent, as evidenced by the innumerable rebroadcasts of content posted on Twitter. (Joint 56.1 93, 94; see examples and articles at Hendon Decl., Exs. 6, 7); see also People v. Harris, No. 2011-N.Y.-080152, -N.Y.S.2d --, 2012 WL 1381238, at *1 (Crim. Ct. N.Y. County Apr. 20, 2012) (slip opinion is attached to Joint Brief as Exhibit 2). Furthermore, Morel has admitted he was aware of Twitters 9
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 17 of 53
purpose in his statement that he posted his photos on Twitter/TwitPic in the hopes that his images would span the globe to inform the world of the disaster. (Joint 56.1 92). Had Morel truly wanted to engage in the proprietary distribution of his photos, he could have and should have sent his photos to his licensing agent Corbis, as he eventually did, or posted them to a different site that did not have Twitters broad license language in its terms. (See Joint 56.1 166). If Morels position were correct that the Twitter Terms of Service provide no license to rebroadcast materials posted to Twitter/TwitPic, this would mean that the uncountable number of daily re-tweets on Twitter and in the media where Twitter/TwitPic posts are copied, reprinted, quoted, and rebroadcast by third parties, all could constitute copyright infringements. (Joint 56.1 93, 94; see examples and articles at Hendon Decl., Exs. 6, 7). Hundreds of thousands of Twitters other users rebroadcast Twitter/TwitPic posts every day with no other permission than Twitters Terms of Service who, under Morels interpretation, are engaging in copyright infringement. (Joint 56.1 93; Hendon Decl., Ex. 7). If adopted, that position would contradict Twitters currently accepted, understood and promoted use and purpose of sharing postings. As a matter of law, AFP and its licensees are third-party beneficiaries of the Twitter Terms of Service, as agreed to by Morel, are covered by the license therein, and Morel cannot succeed on his claims for copyright infringement. AFP thus asserts that Morels motion for summary judgment must fail and that Defendants are entitled to summary judgment as to Counterclaims 1 and 11. 2. AFP Does Not Dispute Morels Current Standing
AFP indicated to the Court that it intended to move for summary judgment that Mr. Morel lacked standing as to his copyright claims because pursuant to the terms of his contract with his 10
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 18 of 53
licensing agent, Corbis, he had upon submitting the photos at issue in this case, transferred the exclusive right to enforce his copyrights to Corbis. After AFP raised this issue, Mr. Morel apparently in recognition of the fact he did not have the rights to pursue this cause of action, approached Corbis in regard to the assignment of his enforcement rights. As a result, on April 6, 2012, Corbis transferred the right to enforce the copyrights at issue in this case to Mr. Morel (see letter of April 9, 2012 attached to Joint Brief as Exhibit 1). AFP notified Morels counsel well before the deadline for summary judgment that AFP did not intend to raise this issue in its Summary Judgment pleadings given Corbis April 2012 letter and assignment, and thus has withdrawn this defense. It is unclear why Morels counsel has briefed this issue in Morels motion (Morel Brief, pp. 42-47) and wasted the parties and the Courts time on this issue given that AFP already conceded that it had withdrawn this defense. B. Getty Images Is Not Liable for Direct Infringement
Morel cannot hold Getty Images liable for direct copyright infringement because (i) the DMCA 512(c) safe harbor protects Getty Images from liability, and (ii) Morel cannot establish that Getty Images engaged in sufficient volitional conduct in creating a copy of the infringing works.5 1. The Record Establishes Getty Images Narrow and Passive Role in the Distribution of AFP Content
The record before the Court establishes that Getty Images had a narrow and passive role in distributing AFPs content, including the Photos at Issue, and that once it became aware of Morels claims, Getty Images acted diligently and in good faith to address them. Indeed, even
5
While Getty Images does not, for purposes of this motion, dispute either Morels assertion of rights in or Getty Images distribution of the Photos at Issue, Getty Images is not aware of any basis for, and does dispute, any claim that the display of images on its website, uploaded directly by a content partner like AFP and published automatically through Getty Images system, constitutes a volitional display for purposes of 17 U.S.C. 106(5). See Joint Brief at 28-29. To the extent Morel asserts that Getty Images created derivative works, Getty Images disputes that too; there is simply no allegation, let alone evidence, that would support such a claim.
11
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 19 of 53
Morel concedes AFP and Getty Images played very different roles in distributing the images (Morel Brief, p. 24). The facts related to this limited role are essential to both of Getty Images defenses (DMCA 512(c) safe harbor and volition, discussed in this section) and other arguments (lack of willfulness (see Part II infra), lack of liability under DMCA 1202 (see Part V infra)) on these cross-motions, and therefore warrant discussion at the outset. These facts are as follows: Getty Images is vigilant about protecting the rights of the copyright owners of images on its system. Getty Images requires content providers to represent and warrant that they are not contributing infringing content (Joint 56.1 36, 37); it does not promote or intentionally sell infringing content (Joint 56.1 35, 38, 39); it posts and maintains a copyright policy on its website (Joint 56.1 41, 42); it accommodates technical measures on its system which permit copyright owners to identify and protect their works (Joint 56.1 45); it aggressively investigates copyright claims (Joint 56.1 44); and it actively educates consumers on the need for proper licenses (Joint 56.1 40). Because AFP transmits a massive amount of images to Getty Images backend systems which are constantly and automatically made available to Getty Images customers, Getty Images must rely and does rely on AFP to provide non-infringing content. Getty Images and AFP have a longstanding licensing relationship under which AFP transmits approximately 1500-2000 images to Getty Images back-end systems every day, and Getty Images is the exclusive distributor of this content in North America (Joint 56.1 46-48). Because Getty Images could not possibly investigate the ownership of such a vast and constant feed of images, it necessarily and appropriately relies on AFPs direct involvement and 12
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 20 of 53
contractual obligations (Joint 56.1 61). AFP alone chooses the images and transmits them directly to Getty Images system, without any review, alteration or involvement by Getty Images (Joint 56.1 49-50). Thus, the processing of images through Getty Images back-end system, the display of the images on Getty Images front-end system (its website) and the distribution of the images to Getty Images customers are generally fully automated processes (Joint 56.1 5154, 59); the only applicable exceptions to this are discussed below. This arrangement has led to virtually no copyright claims, and no unaddressed instances of known infringement, arising from the more than 5.3 million images AFP has provided to Getty Images over the course of their relationship (Joint 56.1 62). Getty Images had a narrow and passive role in the distribution of the Photos at Issue. As with all AFP images, once AFP transmitted the images directly to Getty Images, Getty Images back-end systems automatically processed the Photos at Issue, assigning unique asset numbers to each image, and appending a standardized photo credit phrase to the very end of the caption information provided by AFP. (Joint 56.1 51, 52). AFP transmitted the eight images a total of 44 times, and each transmission resulted in a uniquely numbered asset on the Getty Images system (Joint 56.1 153, 154, 161, 162). The transmission of these images resulted in the Photos at Issue being automatically pushed through Getty Images FTP feed to its customers (Joint 56.1 155) with no changes to the information supplied by AFP. In this case, there was a non-automated step in the process, further discussed below, when the Photos at Issue then published to Getty Images website: as happens every time AFP transmits images with a new 13
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 21 of 53
photographer name, an employee of AFP or Getty Images had to manually alter the format of the byline but not the caption in order for the images to publish; however, this did not remove or alter the photographers name (whether Morel or Suero) which remained in the caption provided by AFP every time each image was displayed and distributed (Joint 56.1 156, 163, 164). Getty Images had no reason to inquire about or investigate the copyright ownership of the Photos at Issue at any point in this process (Joint 56.1 156, 159, 160).6 Getty Images was not aware and had no reason to be aware that the Photos at Issue were infringing. Given that it received the Photos at Issue over its feed from AFP, a trusted partner, and the almost entirely automated manner in which its back-end systems received and distributed the Photos at Issue, Getty Images had no knowledge or reason to believe that those images were infringing any copyright. (Joint 56.1 58, 61, 156, 159-60). During the night after the earthquake a chaotic period during which Mr. Bernasconi stayed up throughout the night, frantically trying to arrange for the transport of his photographers to Haiti (Rosenfeld Supp. Decl., Ex. 2, Bernasconi Dep., pp. 17:5-20, 24:12-15, 26:15-27:19, 94:2-4), two people emailed Bernasconi, over 12 hours apart among many different emails and the rapidly unfolding events, one with a link to Morels Twitter feed and one with a link to Sueros. (Morel 56.1 63, 162). He does not
Neither AFPs caption correction nor its kill notice provided Getty Images with any reason to make this investigation. When AFP issued the caption correction, the correction was automatically transmitted to all Getty Images feed customers that received the AFP content in the first place (Joint 56.1 176). AFP updated the photo credits from Suero to Morel and transmitted the re-credited assets to the Getty Images system. (Joint 56.1 182-187). The kill notice was also automatically transmitted to all Getty Images feed customers who received the content (Joint 56.1 202). Getty Images had already removed the images attributed to Daniel Morel from its own site by then, and when it determined that AFP had not been able to resolve the matter with Morel, it engaged in worldwide efforts to notify other customers of the alleged infringement. (Joint 56.1 227-30).
14
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 22 of 53
remember opening either link and is certain that he never made any connection between the two. (Rosenfeld Supp. Decl., Ex. 2, Bernasconi Dep., pp. 21:15-19, 31:5-7, 93:10-94:16). It is pure revisionist history to pluck these two emails out of context and argue that Mr. Bernasconi should have clicked on the links, compared the images and made the connection between Morel and Suero at that point. Getty Images removed all infringing Morel content promptly after becoming aware of it. As soon as Getty Images was advised that Mr. Morel claimed the Photos at Issue were being used without his authorization, it expeditiously removed all images on its system credited to Daniel Morel some as quickly as within 37 minutes and alerted AFP (Joint 56.1 188-90, 192). It was not aware and had no reason to be aware that the same images remained on its system, credited to David Morel or Lisandro Suero (Joint 56.1 191, 207-208). As soon as Getty Images became aware of this, about two weeks later, it expeditiously removed all of those images as well (Joint 56.1 212-217). Getty Images referred Mr. Morels claim to AFP and, when AFP was not able to resolve the claim with Morel, promptly contacted its licensees. Pursuant to the Getty Images/AFP Agreement, when Mr. Morel contacted Getty Images in late February 2010, Getty Images referred (and later formally tendered) the claim to AFP, who it understood was dealing with this situation (Joint 56.1 218-225). Upon receiving further inquiries throughout March without any resolution between AFP and Morel, Getty Images planned and rapidly carried out a global effort to alert all of its non-feed customers in the first week of April (Joint 56.1 226228). (Its feed customers had received the kill notice directly from AFP) (Joint 15
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 23 of 53
56.1 202). Thereafter, Getty Images continued efforts to alert its customers every time it became aware that, despite its efforts, licensees continued to display Photos at Issue, and it engaged in a second round of customer communications when a new set of assets (differently numbered versions of the same photographs) came to light in June 2010 (Joint 56.1 229-230).7 In sum, Getty Images has a narrow and passive role in the distribution of AFP images, but acted rapidly and properly to respond to Mr. Morels claims in this instance. Mr. Morel seeks to controvert this record in his summary judgment papers, portraying Getty Images role as far larger and more active than it actually was. For instance, he cherrypicks excerpts from the deposition of Chris Eisenberg, Getty Images Director of Editorial Content Management, regarding various functions that Getty Images performs as an image moves from the AFP feed to Getty Images system to its licensees to suggest Getty Images exercised sufficient volition: Getty Images reformats, organizes, indexes, displays, reproduces, and licenses any infringing material provided by its partners (Morel Brief, p. 26); sets pricing and licensing terms for images provided by AFP (id.); and guides viewers to images that may interest them (id.). Yet Ms. Eisenbergs deposition transcript actually describes a system in which AFP sends Getty Images a feed of images which automatically goes through a series of data transformation channels, and then automatically pushes the images to Getty Images internal system (TEAMS), where unless there is a data problem or missing data they publish directly to the website. (Hoffman Decl., Ex. S, Eisenberg Dep., p. 36:7-16.) (Moreover, the
7
Morels assertions that Getty continued to distribute the images after the kill notice are misleading. Getty Images removed all Photos at Issue credited to Daniel Morel promptly after it was notified of Morels claims on January 13, 2010. It was never notified of, and therefore was not aware of (and inadvertently continued to offer for license) the Photos at Issue misattributed to Suero and David Morel for about two more weeks. (Joint Brief, pp. 20-22; Joint 56.1 188-91). Yet, contrary to the characterizations of Mr. Morel, when it was notified about the Suero-credited Photos at Issue on February 2, Getty Images immediately removed them, as well as David Morel-credited photographs discovered in the process. (Joint Brief, pp. 20-22; Joint 56.1 212-16).
16
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 24 of 53
excerpts incorporated into Morels 56.1 Statement only describe the transfer of content from the feed to Getty Images website, rather than the automatic distribution of this content to Getty Images feed customers). In other words, as described at pp. 12-14 supra, in the ordinary course of business Getty Images has no active involvement and its role is automated from the moment the AFP images are transmitted to the point at which either feed customers receive them or when website customers license them. (Joint 56.1 50-54). Although human intervention is possible at various stages in the process (Morel Brief, p. 26), the record shows that this is the exception rather than the rule and is extraordinarily rare in the context of content sent through the feed. Each of Getty Images alleged interventions here provides no basis for liability and/or flatly contradicts the record: Morel incorrectly alleges that Getty Images substituted AFP for the photographers name in the caption information accompanying the Photos at Issue (Morel Brief, p. 7; Morel 56.1 127, 160, 187, 188, 200, 225, 302, 323, 325). Although at one point, Katie Calhoun, then-Sales Director, North American Media for Getty Images, incorrectly believed that photographers names had been replaced in this manner, this phase of the process is not within Ms. Calhouns purview and the record amply demonstrates that, in fact, every single Photo at Issue resided in Getty Images back-end system, appeared on its website and was transmitted to and published by customers with the same photographers name in the caption as provided by AFP. (Joint 56.1 163-64; Joint 56.1 CounterStatement 127, 131, 160, 187, 188, 200, 225, 297, 302, 322-23, 325; Cameron
17
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 25 of 53
Supp. Decl. 2-16, Exs. B-D; Calhoun Supp. Decl. 3-7).8 While that photographers name was transmitted to Getty Images incorrectly in some instances (listing David Morel or Lisandro Suero) and therefore was displayed and distributed incorrectly by Getty Images in those instances, the display and distribution of those captions was not the result of any volitional act by Getty Images. Instead, as discussed above, Getty Images merely transmitted content as provided by AFP consistently with its agreement, industry standards and prior course of conduct. It properly relied on AFP to provide it with the correct caption information, and when it became aware that AFP-provided information was inaccurate, it addressed the errors promptly and appropriately. Out of the 826 purchases and downloads Morel alleges, he identifies two isolated instances in which charitable organizations located Photos at Issue on the Getty Images website, contacted customer service representatives at Getty Images to ask about pricing and were permitted to go through with the transactions (Morel Brief, p. 27, Morel 56.1 at 159, 232-33). In both instances though the parties agree the images were clearly marked as Editorial use (Morel Brief, p. 28) the Getty Images representatives, acting in the midst of a global crisis (Joint 56.1 70), permitted the uses for charitable solicitations. Although these licenses may constitute an immaterial violation of Getty Images
As explained in Defendants motion papers, Getty Images back-end systems would not have recognized the photographers name when AFP transmitted the Photos at Issue to it, and therefore the systems would not have automatically validated those images and published them on Getty Images website. Instead, a Getty Images or AFP employee would have had to manually alter the format of the byline without altering the name of the photographer which appeared in the AFP-created caption so that the images could be published to the website. However, this routine fix would not have given Getty Images any reason whatsoever to inquire about or investigate copyright ownership. (Joint 56.1 56-58, 156). Moreover, Getty Images feed customers would have received exactly the same byline field that AFP had populated when it transmitted the Photos at Issue via the feed, as well as the photo credit. (Eisenberg Decl. 13).
8
18
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 26 of 53
obligations to AFP, they do not establish that Getty Images knew or had reason to know yet that Morel contested AFPs or Getty Images rights to license the specific assets in question. The Soles4Souls license transaction took place before Corbis first notified Getty Images of Morels claim (compare Morel 56.1 159, with Cameron Decl., Ex. C (G003825)), and while the Tzu Chi USA Journal license took place after the initial Corbis notification about Daniel Morel images, the photograph licensed to Tzu Chi USA Journal was credited to Lisandro Suero (Joint Counter-Statement 232). Corbis had not yet notified Getty Images that Suero-credited images belonging to Mr. Morel remained on its website. (Joint 56.1 213-17). Morel claims Getty Images failed to correct and/or kill the Photos at Issue, or to exercise appropriate diligence in identifying the misattributed images on its own system and requiring customers to remove them from their sites. (Morel Brief, pp. 7, 24; Morel 56.1 130, 225, 256, 285-86, 304, 332, 343). As described above, the record tells a completely different story. Getty Images is vigilant about protecting users copyrights and responded promptly and appropriately each time it learned of infringing material in this case, on its own site or on third-party sites. Getty Images did not issue a caption correction because AFP issued the corrections through the feed. (Joint 56.1 174). Those corrections came through the feed as new assets and as such received unique asset identification numbers. Getty Images feed customers received directly the correction as sent by AFP and the new assets with correct information were posted to Getty Images website. Because the images were pulled so quickly, Getty 19
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 27 of 53
Images reasonably thought that there was no need for a further kill notice given the feed kills and corrected assets. As noted supra pp. 14-15, because this is an automated process, it was not until Corbis notified Getty Images of the Suerocredited images that it knew additional assets needed to be removed. As to customers who had downloaded or purchased the Photos at Issue from Getty Images website, Getty Images both removed the images promptly from its own site, and mounted global efforts to notify those customers that they should pull the images once it discovered that AFP had not been able to resolve the matter with Mr. Morel. (Joint 56.1 188-90, 212-17, 227-30). Not a single one of these alleged holes in Getty Images defenses is consequential. Morel has failed to establish that he is entitled to summary judgment on direct liability, nor even to identify any genuine issues of material fact sufficient to preclude summary judgment for Getty Images on its defenses, which are further discussed in the next two sections. 2. The DMCA 512(c) Safe Harbor Applies, Precluding Summary Judgment for Morel as to His Copyright Infringement Claims Against Getty Images
Based on the facts discussed above, and as set forth in Defendants Joint Brief, the DMCA safe harbor protecting internet service providers from copyright liability by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, 17 U.S.C. 512(c)(1), applies squarely to Getty Images in this case. Morel fails to offer any valid reason why this safe harbor does not apply to Getty Images. a. Getty Images is a Service Provider and AFP is a User of its Service
Morel makes a half-hearted attempt to argue in a two-sentence section of his Brief that the DMCA safe harbor does not apply to Getty Image because Getty Images is not a service 20
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 28 of 53
provider and AFP is not a user within the meaning of Section 512 (Morel Brief, p. 49). Morel offers no legal or factual support for this argument other than a conclusory statement that AFP is a financial and content partner of Getty Images and therefore cannot be a user under the DMCA. But governing law and the facts of this case comprehensively refute Morels position. First, as Getty Images explained in the Joint Brief, there can be no question that it fits comfortably within Section 512(k)(1)(B)s definition of service provider: a provider of online services or network access, which is so broad that courts have found it difficult to image providers of online services that would not fall within it. (Joint Brief, p. 13-14 (citing Wolk v. Kodak Imaging Network, Inc., No. 10 Civ. 4135, 2011 WL 940056, at *2 (S.D.N.Y. Mar. 17, 2011); In re Aimster Copyright Litigation, 252 F. Supp. 2d 634, 658 (N.D. Ill. 2002)). Second, it is equally clear that AFP is a user of Getty Images system. Although user is not defined in Section 512, the text of the statute suggests that it means any entity that stores or transmits content on a service providers network or system, a category which is necessarily very expansive given the wide variety of service providers that the statute contemplates. The case law establishes that users include both content creators that store content on (or distribute content through) a providers system or network and end-users who seek to obtain such content. (See Joint Brief, p. 14). Morels attempt to exclude AFP from the statutory definition of user by characterizing it as a financial and content partner of Getty Images (by virtue of its License Agreement with Getty Images) finds no support in either the statute or the case law. Indeed, it is difficult to point to a case applying the Section 512(c) safe harbor which does not involve either a website operators alleged liability arising out of its contractual relationship with a website user (as users of such sites must generally enter into agreements when registering in order to post user21
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 29 of 53
generated content) or a web hosting services alleged liability arising out of its contractual relationship with the hosted site (for infringing activity on a website the ISP hosts). See, e.g., Capitol Records, Inc. v. MP3tunes, LLC, 821 F. Supp. 2d 627 (S.D.N.Y. 2011) (safe harbor protected website operator from liability arising from user-generated content); Rosen v. Hosting Services, Inc., 771 F. Supp. 2d 1219 (C.D. Cal. 2010) (safe harbor protected ISP from liability arising out of website it hosted); Viacom Intl, Inc. v. YouTube, Inc. (Viacom I), 718 F. Supp. 2d 514 (website operator), affd, 676 F.3d 19 (2d Cir. 2012); UMG Recordings, Inc. v. Veoh Networks Inc., 620 F. Supp. 2d 1081 (C.D. Cal. 2008) (website operator); Io Group, Inc. v. Veoh Networks, Inc., 586 F. Supp. 2d 1132 (N.D. Cal. 2008) (website operator); Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) (ISP). b. Getty Images Fits Squarely Within the Safe Harbor as Recently Clarified by the Second Circuit in Viacom v. YouTube
Morel also suggests the Second Circuits recent decision in Viacom Intl v. YouTube Inc. (Viacom II), 676 F.3d 19 (2d Cir. 2012) precludes its application to Getty Images distribution of the Photos at Issue. However, Morels cursory discussion misinterprets and misapplies the Second Circuits ruling in that case, which actually confirms Getty Images entitlement to the safe harbor here. Most significantly, the Viacom II Court affirmed that the knowledge requirements in Section 512(c) that a service provider have actual knowledge that the materialis infringing or facts and circumstances from which infringing activity is apparent, 17 U.S.C. 512(c)(1)(A) refer to knowledge of specific and identifiable infringements, rather than a general knowledge that infringements exist. 676 F.3d at 30 (emphasis added) (quoting Viacom I, 718 F. Supp. 2d at 523). Here, Getty Images had no actual knowledge and no reason to know about the allegedly infringing images until it received notice from Corbis on January 13 and February 2, 22
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 30 of 53
that two separate categories of infringing content (the photos attributed to Daniel Morel and the misattributed photos) had been posted, and in each case it promptly removed them all. (Joint Brief, pp. 16-22). Morels reliance on three of the Second Circuits holdings in Viacom II is also inapposite. First, the Second Circuit ruled that the willful blindness doctrine may be applied, in appropriate circumstances, to demonstrate knowledge or awareness of specific instances of infringement under the DMCA. 676 F.3d at 35. At the same time, however, the Court made clear that willful blindness cannot be defined as an affirmative duty to monitor. Id. (citing Section 512(m) safe harbor shall not be conditioned on a service provider monitoring its service or affirmatively seeking facts indicating infringing activity) (emphasis added). In other words, willful blindness must involve a deliberate effort to avoid guilty knowledge rather than a failure to monitor. Id. (emphasis added). With no analysis or citation, Morels conclusory statement that the undisputed facts and inferences establish willful blindness (Morel Brief, p. 50) fail to meet his burden. Indeed, the undisputed facts show that Getty Images lacked the requisite knowledge or awareness to trigger application of the willful blindness doctrine (see Joint Brief, pp. 16-21). Second, Morel misconstrues the Second Circuits discussion regarding the statutory requirement that an ISP not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity, 512(c)(1)(B), to suggest without analysis or citation that Getty Images fails to meet this requirement, because it received a direct financial benefit from the license and sale of the Photos at Issue. (Morel Brief, p. 50). However, as set forth in Getty Images moving brief, Congress and the courts have made clear that in this context (i) direct financial benefit requires promotion or mark-up of infringing content, rather than merely profiting from the inadvertent appearance of 23
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 31 of 53
such content on an otherwise legitimate system (see Joint Brief, pp. 22-23); and (ii) right and ability to control means something more than the ability to remove or block access to infringing materials, a right and ability which the statute presumes of all providers, id. at 23-24; Viacom II, 676 F.3d at 37-38. Morel has not raised any genuine issue of material fact suggesting that either of these factors is satisfied here. Indeed, the undisputed facts show that Getty Images did not receive a direct financial benefit from its distribution and licensing of the Photos at Issue, and did not have sufficient right and ability to control the Photos at Issue to take it out of the safe harbors protection. (See Joint Brief, pp. 22-24). Third, Viacom II also reaffirmed that the safe harbors application to alleged infringement by reason of the storage of materials at the direction of a user encompasses not only storage of material but other functions that a website executes to facilitat[e] access to user-stored material. 676 F.3d at 38-39. While Morel seeks to analogize Getty Images conduct in connection with the Photos at Issue to the single YouTube software function the Viacom II court suggested might fall outside of the safe harbor, the comparison is inapposite (Morel Brief, p. 50-51). Here, Getty Images stored AFP content and engaged in certain functions to facilitate access to that content. (See Joint Brief, p. 15 & n.5). Its operations (storing, displaying and offering to users the AFP content) are for more analogous to the functions held protected in Viacom II (transcoding or making copies of a video in a different code; playback or delivering copies to a users browser; and the related videos function, or recommending videos similar to the one chosen by the user) and not at all like the one function on which the Court remanded (syndication or licensing the videos to other providers that could themselves offer them for sublicense on mobile platforms). Thus, Viacom II actually provides further support for application of the safe harbor to Getty Images in this case. 24
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 32 of 53
3.
Getty Images Did Not Act With Sufficient Volition to be Held Liable for Direct Infringement
As set forth above, the record in this case establishes Getty Images limited and passive role in the alleged infringement. Like Cablevision in Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121, 131 (2d Cir. 2008) and Kodak in Wolk v. Kodak Imaging Network, Inc., No. 10 Civ. 4135, -- F.Supp.2d --, 2012 WL 11270 (S.D.N.Y. Jan. 3, 2012), Getty Images designed, houses and maintains a system which engages in the copying at the direction of users, rather than engaging in actual infringing conduct with a nexus sufficiently close and causal to the illegal copying. (Joint Brief, p. 27; Cartoon Network, 536 F.3d at 130). Morel argues that Getty Images is a UK and North American-based imagery company in the business of procuring and distributing images and related products and services via the internet and retains an active sales and market force to distribute and promote its web content (Morel Brief, p. 26). Yet none of these facts distinguishes Getty Images from companies like Cablevision, also a large corporation which procures, distributes and promotes its content. Morel also catalogs the various functions that Getty Images performs with respect to the images (claiming it reformats, organizes, indexes; id.) and claims that human intervention is possible at each step; as discussed above, he has not shown that such intervention actually happened at each step, and the little human involvement that did occur is not sufficiently close and causal to the illegal copying, to warrant the imposition of liability. Morel fails to establish that he is entitled to summary judgment on this issue. Getty Images is, for the reasons set forth in its moving brief. C. The Plaintiffs Allegations That the Post Did More Than Display Certain Photos Are Erroneous
The Post concedes that it publicly displayed a subset of the Photos at Issue, based on a license from its trusted licensor Getty Images and with no reason to believe that the use was 25
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 33 of 53
unauthorized. (Joint 56.1 235, 237). If Morel is able to overcome the license defense asserted by AFP, the Post will concede liability to Morel for direct infringement with regard to the public display of these photographs, while expressly preserving all other defenses. The record is undisputed that when the Post received notice in June 2010 that there was a potential copyright issue with the display of three of those photographs on the washingtonpost.com Haiti earthquake gallery, the Post acted immediately to disable public access to the photographs and believed that it had done so successfully. (Joint 56.1 247-54).9 Morels untimely allegation that the Post on January 13, 2010 downloaded other Photos at Issue (Morel Brief, p. 29; Morel 56.1 190) is a different story. Morels motion on this point should be denied for three separate and independently sufficient reasons. First, Morels Third Amended Counterclaim contains no such factual allegation. To entertain it now would unfairly deprive the Post of the opportunity to defend itself against a new claim of copyright infringement. See Marinelli v. Chao, 222 F. Supp. 2d 402, 406-07 (S.D.N.Y. 2002) ([A] party may not assert or develop allegations not contained in the complaint.). Second, the Post, a customer of Getty Images feed service, did not download the photographs, a step not required of feed customers. (Joint 56.1 233). The photographs were downloaded instead by employees of the publications Slate and The Root, which are owned and operated by a different company (The Slate Group LLC), not sued here, which had access to the Getty Images downloads pursuant to its own licensing agreement entirely separate from the Posts. (Joint 56.1 Counter-Statement 190; McLaughlin Supp. Decl. 5; Joint 56.1 67-68). Third, the conduct that Morel alleges a news organization downloading single copies of images for the purpose of considering whether or not
Although AFP sent the January 14, 2010 kill notice to all feed customers, including the Post, the undisputed record evidence is that no one in the Posts Photo Department saw the kill notice regarding the Photos at Issue. (Joint 56.1 239).
26
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 34 of 53
to later engage in what it believed would be the licensed public display of one or more of the images is self-evidently a fair use protected by 17 U.S.C. 107. In this context, a single download of a single image is de minimis copying used to determine whether or not a licensed public display will be made. The business of licensing photographs could not function if such copying were held to be copyright infringement. Morel also erroneously asserts that the Post made available one of the Photos at Issue to other news organizations. (Morel Brief, p. 29). This is incorrect. The hearsay evidence that Morel cites for this proposition (Morel 56.1 260), shows the opposite that a Yahoo! contributors January 2010 article merely linked to a photograph that appeared on the Posts own website, and was not provided to any other website. (Joint 56.1 Counter-Statement 260). II. The Defendants Did Not Act Willfully Defendants oppose Morels motion for summary judgment on willfulness. Far from being entitled to summary judgment on this issue; the record evidence establishes beyond dispute that they did not act willfully. In order for an infringer to be found willful, [t]he standard is simply whether the defendant had knowledge that its conduct represented infringement or perhaps recklessly disregarded that possibility. Hamil American Inc. v. GFI, 193 F.3d 92, 97 (2d Cir. 1999) (internal quotation marks and citation omitted). Importantly, plaintiff must be able to demonstrate that the defendant knew that this alleged copying represented copyright infringement. 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 14.04[B][3][a] (2012) (Nimmer) (adopted by Fitzgerald Publg Co. v. Baylor Publg Co., 807 F.2d 1110, 1115 (2d Cir. 1986); Fallaci v. New Gazette Literary Corp., 568 F. Supp. 1172, 1173 (S.D.N.Y. 1983)). And while Morel cites several cases indicating that reckless disregard is sufficient for willful infringement, 27
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 35 of 53
those cases do not support a finding of willful infringement here. (Morel Brief, p. 31, citing Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 113 (2d Cir. 2001) (failure to investigate infringement after specifically being put on notice of similarity); Island Software and Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir. 2005) (refusing to find reckless disregard on a motion for summary judgment); Bryant v. Media Right Productions, Inc., 603 F.3d 135, 143 (2d Cir. 2010) (found no reckless disregard), cert. denied, 131 S. Ct. 656 (2010)). Morels claims of willful infringement must fail because he cannot show that Defendants intended to engage in copyright infringement. As discussed in Defendants Motion, AFP believed at the time that it downloaded and distributed the Photos at Issue that it was permitted to do so (even if it is later found to have been incorrect). (Joint 56.1 134). Morels suggestion of willful infringement by Getty Images and the Post is even weaker, as each received the Photos at Issue from a trusted partner and had no knowledge of the source of the photos. (Joint 56.1 48-50, 58, 60-61, 153-54, 156, 159-60; 233, 237). While Morel would like the Court to believe that Defendants acted in some nefarious willful manner, the factual record does not bear him out. Morel has not provided any evidence whatsoever to show that Defendants acted with knowledge that their actions constituted copyright infringement, or reckless disregard for that possibility. His unsupported feelings or beliefs cannot save his claim from being dismissed on summary judgment. A. AFP Did Not Act Willfully
Willful infringement typically involves continuing to act after actual notice from the copyright holder to cease the infringing activities or when it is patently clear that the defendant proceeded in violation of the copyright holders rights. See, e.g., Castle Rock Entmt v. Carol Publg Grp., Inc., 955 F. Supp. 260 (S.D.N.Y. 1997), affd, 150 F.3d 132 (2d Cir. 1998) 28
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 36 of 53
(defendant continued to publish book after receiving cease and desist letter). No such egregious action occurred here. Morel claims that when AFP issued its caption correction in the early morning hours of January 13, 2010, AFP knew that Morel was the author of the Photos at Issue. (Morel Brief, p. 32). There is a difference between learning the name of a photographer and knowing that alleged infringing conduct was taking place. While AFP was at that time put on notice that Morel, rather than Suero, was the photographer, that made no difference to AFPs understanding of its right to distribute the photos. The photos were still available from Twitter through Morels TwitPic page, where they were posted in high resolution, and were thus subject to the license in the Twitter Terms of Service. (Joint 56.1 82-84, 95, 171). Amalvy explained that he understood that Morel was someone in Haiti who wanted to show the situation in Haiti and provide testimony through his photos of the situation in Haiti. (Amalvy Dep., pp. 179-180, as attached as Exhibit C to Rosenfeld Declaration, Dkt. 139-3). At that moment, for Amalvy, thats Lisandro [Suero] or Daniel [Morel], for me is no difference. (Id. at 180:13-15). Nor were there any notices on Morels TwitPic page that would have put AFP on notice that Morel did not intend to be bound by the Twitter Terms of Service or was restricting usage in any other way. (Joint 56.1 96). It was not until Corbis contacted AFP late on January 13, 2010, that AFP was first put on notice that Morel was asserting he was not offering the Photos at Issue pursuant to the Twitter Terms of Service license. (Joint 56.1 192-193). AFP investigated Corbis claim, attempted to contact Morel, and when it received no response, took action to expeditiously remove the images from Image Forum, its archive, and sent a Mandatory Kill notice to all of its subscribers, as discussed above. (Joint 56.1 195-206, 210).
29
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 37 of 53
Morel also implies that AFPs Kill Notice was only for photos credited to Daniel Morel and that this somehow shows willfulness. However, AFPs employees have testified that they had previously issued a Caption Correction changing all the Suero-credited photos to be Morelcredited. (Joint 56.1 173-176). AFPs employees testified that they believed, in good faith, that the Caption Correction in combination with the Kill Notice was sufficient to kill all of the Photos at Issue. (Joint 56.1 204-205). Once again, Mr. Morel offers no admissible evidence to contradict AFPs position. Morel also attempts to argue that an inference of willfulness can be drawn because of AFPs failure to follow its own written guidelines or the customary ethical principles which govern the journalism community. Morel, however, again has not provided any record evidence to support these claims. On the contrary, the record evidence supports that AFPs employees acted in good faith. (Joint 56.1 172-175, 179-182, 192-206). B. Getty Images Acted Innocently
None of the factors that Morel cites as evidence of Getty Images willfulness establish his entitlement to judgment as a matter of law. For the reasons set forth in Defendants moving papers, Getty Images conduct was innocent, not willful. (Joint Brief, pp. 41-44). Morel claims that because Getty Images knew AFP had issued a caption correction changing the name of the photographer of the Photos at Issue to Daniel Morel, Getty Images was willfully blind in not checking to see [to] whom the image had been credited originally. (Morel Brief, p. 33). Yet the caption correction plainly did not apprise Getty Images of the alleged infringement; it did not identify Sueros name, provide thumbnail images of the Photos at Issue or
30
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 38 of 53
identify the previously submitted images in a way that was evident to Getty Images.10 (Amalvy Decl., Ex. C) The corrected versions of each of the Photos at Issue, listing Morels name, did not mention the name of the photographer (Suero) to whom they had originally been attributed. (Amalvy Decl., Ex. D). Nor does the Getty Images system automatically remove or update assets that have been corrected. (Joint 56.1 182-86). Morel argues that Getty Images should have manually searched all photos of the Haiti earthquake in its system to find the misattributed images. Yet, as Viacom II expressly held, a service provider is no obligated to monitor or investigate its site and any alleged failure to do so does not rise to the level of willful blindness. 676 F.3d at 35.11 Morel also argues that [n]otwithstanding the take down, Getty continued to display, license and sell Haiti Earthquake Images. (Morel Brief, p. 34). This is misleading. As Defendants have established in detail, Getty Images received notice of the images credited to Daniel Morel on January 13, 2010, and notice of the misattributed images on February 2, 2010,
10
Morel also argues that Getty Images supposed lack of concern with the implementation of AFPs kill notice provides evidence of willfulness. (Morel Brief, p. 34). But there is no evidence of any lack of concern; in keeping with the parties course of dealing, AFP notified Getty Images feed customers who received AFP content, so it was not necessary for Getty Images to do so; Getty Images both removed the images promptly from its own site and carried out global efforts to notify customers that they should remove the images, once it discovered that AFP had not been able to resolve the matter with Mr. Morel. (Joint 56.1 227-30). Moreover, the AFP Kill Notice did not identify specific Getty Images asset numbers, provide thumbnails of the images in question, or provide notice that any of the Photos at Issue were credited to Lisandro Suero or David Morel, so it could not have given Getty Images notice that misattributed images remained on its site. (Joint 56.1 208). The cases cited in Morels own brief (at p. 34) only underscore the point that such a speculative showing of willfulness does not warrant summary judgment for plaintiff on the issue. Compare Encyclopedia Brown Prods. Ltd. v. Home Box Office, Inc., 25 F. Supp. 2d 395, 404 (S.D.N.Y. 1998) (granting defendant cable operators motion for summary judgment as to willfulness, where operator had no control over HBOs content) and Lipton v. Nature Co., 71 F.3d 464, 472 (2d Cir. 1995) (factual issues precluded plaintiffs motion for summary judgment as to willfulness, where defendant argued that he innocently copied what he believed to be unprotectable compilation) with N.A.S. Import Corp. v. Chenson Enters., Inc., 968 F.2d 250, 253 (2d Cir. 1992) (finding willfulness after full trial, where defendant had store one block away from plaintiffs store, created buckle identical to plaintiffs and continued selling infringing work after several demand letters). Morel overreaches to make this point, arguing without any apparent basis that there were less than a handful of photographers distributing images of the earthquake and probably no more than 13 or 14 images on January 1213, 2010. (Morel Brief, p. 33; Morel 56.1 304). In fact, even aside from Morels images there were more than 200 images relating to the Haiti earthquake on Getty Images website at that time. (Cameron Supp. Decl. 28). As set forth above, Getty Images did not have an obligation to investigate its site, let alone search through hundreds of images during a time of crisis.
11
31
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 39 of 53
and it is undisputed that it removed each of those two categories of images promptly after those respective dates. (Joint Brief, pp. 20-22; Joint 56.1 188-91, 212-16). It is hardly evidence of willfulness that Getty Images customers continued to license the misattributed images after the after the January 13 takedown, because Getty Images did not become aware of these images until February 2 (at which point it removed them and ceased licensing altogether). Finally, Morel invokes Getty Images failure to use search tools to clear the unauthorized images from the web as a basis on which the Court should find Getty Images conduct willful as a matter of law. (Morel Brief, pp. 34-35). But the Second Circuit has expressly rejected the idea that service providers like Getty Images have an obligation to take such steps, or that a failure to do so constitutes willfulness. See Viacom II, 676 F.3d at 35 (citing Section 512(m) (safe harbor shall not be conditioned on a service provider monitoring its service or affirmatively seeking facts indicating infringing activity). Here, the undisputed evidence reflects that Getty Images took diligent steps to remove the images from its own system based upon the incomplete information provided to it by Morels stated representatives and notify its customers of Mr. Morels claims, and continued to reach out to licensees thereafter, both when it discovered continuing infringement on a licensees site and when it discovered duplicate asset numbers of the Photos at Issue that necessitated additional client contacts. (Joint 56.1 229-30). Morel has not cited any authority for a finding of willfulness based on Getty Images failure to patrol the entire internet for infringing images, nor could it. C. The Post Acted Innocently
In support of its own motion on the willfulness issue, the Post has submitted undisputed evidence that it acted innocently: the only time it posted the photographs was in January 2010, when it believed their display was authorized by the Posts trusted licensor Getty Images), and the 32
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 40 of 53
only actions the Post took after that were to attempt to remove the photographs. (Joint 56.1 231-61). Morels contention that, to the contrary, he should be granted summary judgment on this issue, is at best half-hearted. In the single paragraph that his brief devotes to the Post, Morel actually asserts the existence of a genuine issue of fact as to the Washington Posts motive, which he asks the Court to consider if the evidence is not sufficient for the Court to grant Morel summary judgment on his motion with regard to the Washington Posts willfulness. (Morel Brief, p. 34). The existence of a genuine issue of fact would, of course, not support Morels motion but defeat it. The other evidence that Morel cites does not undermine the Posts undisputed testimony about its actions. Most critically, the testimony of the Post photo editor that he attempted to remove the photographs on June 10, 2010 and believed he had successfully done so is corroborated by the Posts contemporaneous publishing records (Joint 56.1 247, 248, 259), a point which Morels own Rule 56.1 Statement concedes is true. (Morel 56.1 294). Accordingly, Morels vague speculation about the editors wifes status as a possible Pulitzer Prize winner is immaterial, Morel Brief, p. 35, because the editor indisputably acted to remove the photographs and believed he had succeeded. The record is also clear that once the Posts legal department actually received a notice from Morelon June 18, 2010, after the Post had already acted to remove the photographsPost counsel immediately sent an email to Morels counsel, using the email address given on the notice itself, to which Morels counsel never responded. (Joint 56.1 250-54; McLaughin Decl. 1822). Finally, Morels speculation based on the mere fact that Getty Images considers the Post an important client, and statements he said he overheard at a settlement conference, Morel Brief, p. 33
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 41 of 53
35, cannot counter the undisputed testimony that it was not until April 2011 that Getty Images told the Post that the photographs were still available on the Haiti earthquake gallery, at which time the Post immediately took action to ensure that the photographs were permanently removed. (Joint 56.1 247-58; McLaughlin Decl. 23; duCille Decl. 22-25; Joint 56.1 CounterStatement 261). III. Mr. Morels Claim for Indirect Liability Must Fail A. Morels Claim of Contributory Copyright Infringement Must Fail
Morel has moved for contributory copyright infringement against AFP.12 AFP submits that because all uses were licensed through Twitter/TwitPic and without direct liability, there can be no indirect liability.13 Even if the Court does not find that there was a license, Morels contributory copyright infringement claim fails because AFP did not with knowledge of the infringing activity, induce, cause, or materially contribute to the infringing conduct of another. See Gershwin Publg Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971); see also Matthew Bender & Co. v. West Publg Co., 158 F.3d 693, 706 (2d Cir. 1998). Once again, the Court will find that there is no evidence in the record, or otherwise, that AFP knowingly undertook any infringing conduct; on the contrary, the record evidence is that AFP acted without knowledge of any alleged infringement.
Morel has asserted a claim for contributory infringement against AFP and Getty Images in his Third Amended Counterclaim but has only moved in his Motion for Summary Judgment against AFP. (Morel Brief, p. 36). Both AFP and Getty Images believe his claim fails for the reasons set forth in their Motion.
13
12
There can, by definition, be no contributory liability if that conduct that is aided by the putative contributory infringer is not itself infringing. 3 Nimmer 12.04[A][3][b][i] (citing inter alia, Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984)). In other words, third party liability only exists when direct liability, i.e., infringement, is present. Id. 12.04[D][1]; see also Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 940 (2005). If the Court determines that a license was granted pursuant to the Twitter Terms of Service, as argued by AFP above, there is no direct liability and there can be no indirect liability.
34
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 42 of 53
Moreover, as Morel asserts, in order to succeed on this claim, he must show that AFP encouraged or assisted others infringement, which he cannot do. Faulkner v. Natl Geographic Socy, 211 F. Supp. 2d 450, 473-74 (S.D.N.Y. 2002), affd, 409 F.3d 26 (2d Cir. 2005). Morel has not, and cannot, show AFPs participation in alleged third-parties infringement beyond merely providing the means to accomplish an infringing activity, which is simply insufficient for contributory liability. Livnat v. Lavi, No. 96 Civ 4967, 1998 WL 43221, at *3 (S.D.N.Y. Feb. 2, 1998) (citing Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 435 n.17 (1984)) (internal quotation marks omitted); see also Marvullo v. Gruner & Jahr, 105 F. Supp. 2d 225, 230 (S.D.N.Y. 2000). Here, the Photos at Issue were just eight of the thousands of photos distributed by AFP and posted to Getty Images site that day and the hundreds of thousands of photos distributed and posted in 2010. (Joint 56.1 30, 48). AFP made the Photos at Issue available to customers (at a time when it was unaware of the allegedly infringing nature of the Photos at Issue), and did nothing more. Morel has not and cannot prove that AFP somehow specifically encouraged or induced its customers to use, or otherwise participated in the display or distribution of, the Photos at Issue, particularly once it was aware of the alleged infringement. On the contrary, once aware of the alleged infringement, AFP took expeditious action to remove the Photos at Issue from Image Forum, from its archive, and to send a Mandatory Kill Notice. (Joint 56.1 192-206). B. Morels Claim of Vicarious Copyright Infringement Must Fail
Morel also seeks summary judgment against both Getty Images and AFP as to vicarious infringement. However, in his Third Amended Counterclaim, Morel has asserted vicarious infringement against Getty Images only. (See Daniel Morels Third Amended Answer, Affirmative Defense and Counterclaims (TAC) 152-157). As a preliminary matter, Morel 35
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 43 of 53
cannot seek summary judgment for vicarious copyright infringement against AFP when no such claim was ever made in the pleadings. Summary judgment can be sought as to a claim or defense that was made. (Fed.R.Civ.P. 56). The Federal Rules of Civil Procedure provide the basic pleading standard that requires a plaintiff to make at least a short and plain statement of the claim. (Fed.R.Civ.P. 8). Morel never made a claim for vicarious infringement against AFP and cannot now seek judgment for a claim that has not been made. See Rojo v. Deutsche Bank, No. 10-2999cv, 2012 WL 1813670, at *2 (2d Cir. May 21, 2012) (noting that the Second Circuit has consistently refused to address the merits of claims raised for the first time at [the summary judgment] stage of the litigation), citing Greenidge v. Allstate Ins. Co., 446 F.3d 356, 361 (2d Cir.2006); Syracuse Broad. Corp. v. Newhouse, 236 F.2d 522, 525 (2d Cir.1956) (holding that district court was justified in brush[ing] aside further argument not alleged in complaint but raised for first time in opposition to summary judgment); see also 5 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure 1183, at 23 n. 9 (3d ed. 2004) (An opposition to a summary judgment motion is not the place for a plaintiff to raise new claims.); see also Evans-Gadsden v. Bernstein Litowitz Berger & Grossman, LLP, 491 F. Supp. 2d 386, 402 (S.D.N.Y. 2007) (Plaintiff here cannot raise a new claim for the first time in a cross-motion for summary judgment. In this action, Plaintiff not only amended her complaint once, but also sought leave to file a second amended complaint that would have added several additional causes of action. It is clear, therefore, that this Plaintiff knows enough about the legal process to understand when and where new claims are properly raised. Even if she did not, this Court would not permit Plaintiff to make an end-run around the most basic pleading requirements . . . .). As for Getty Images, the Section 512(c) safe harbor is a shield not just from direct liability, but also against indirect copyright liability. See Viacom II, 676 F.3d at 41. As discussed 36
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 44 of 53
above, the safe harbor applies here. Moreover, the elements of vicarious liability mirror those of 512(c)(1)(B) (service provider must not not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity). Thus, [t]o satisfy the direct financial benefit prong of the vicarious copyright infringement testthe sale of the counterfeit products must in fact be the draw for customers to the venue. See Adobe Systems Inc. v. Canus Prods., Inc., 173 F. Supp. 2d 1044, 1050 (C.D. Cal. 2001) (denying plaintiffs summary judgment motion as to vicarious liability); see also Ellison v. Robertson, 357 F.3d 1072, 1079 (9th Cir. 2004) (the central question of the direct financial benefit inquiry [for vicarious liability purposes] is whether the infringing activity constitutes a draw for subscribers, not just an added benefit; affirming summary judgment for internet service provider as to vicarious liability). Here, the existence of a mere handful of inadvertently infringing images among the tens of millions of images that Getty Images makes available cannot plausibly have created a sufficient draw to warrant the imposition of secondary liability against it. There is no allegation or evidence that Getty Images used the images for marketing purposes, encouraged customers to use infringing content or used such content to draw customers to its website in any way. Morels conclusory claim that the undisputed evidence compels a finding of vicarious liability against Getty Images on summary judgment does not come close to meeting his burden of proof on this claim (Joint Brief, pp. 22-24, 34-35). IV. Morel Is Entitled to Only a Single Statutory Damages Award Per Work Morel has moved for summary judgment on the question whether under 17 U.S.C. 504(c)(1), he is entitled to recover from a secondarily liable defendant, multiple awards per work based on the number of direct infringements. (Morel Brief, p. 38). As the Defendants 37
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 45 of 53
have also moved for summary judgment on this same issue, all parties agree that this is a matter that may be decided on summary judgment as a matter of law. We will not repeat here the arguments made in Defendants summary judgment brief as to why Morel should be limited to a single statutory damages award per work allegedly infringed by jointly and severally liable licensors and downstream licensees. (See Joint Brief, pp. 47-49). Those arguments apply with equal force in opposition to Morels motion. In addition, we note that Morels attempt to distinguish this Courts dispositive decision in Arista Records LLC v. Lime Group LLC, 784 F. Supp. 2d 313 (S.D.N.Y. 2011), is based on an erroneous premise and is thus unsuccessful. In his motion papers, Morel offers no support for his attempt to collect multiple statutory awards for each work allegedly infringed. Indeed, recognizing that the relevant case law particularly this Courts dispositive decision in Arista Records directly contradicts his position, Morel makes a weak attempt to distinguish Arista Records on the irrelevant basis that the damages sought in that case were much larger. (Morel Brief, p. 38 (in Arista Records, this Court addressed this issue in the context of thousands of downstream users, and potential damage awards in the billions against LimeWire.)). But this is a distinction without a difference. There is no meaningful distinction between the scope of alleged infringement in this case and the Arista Records case. The Arista Records Court noted that the alleged direct infringers for each work numbered in the hundreds, if not thousands. 784 F. Supp. 2d at 315 (emphasis added). Likewise, here, Morel has alleged infringement by hundreds of downstream licensees of AFP and Getty Images (see TAC 119 (emphasis added)), which thus provides the same context in which this Court ruled that a separate award of statutory damages against secondarily liable defendants for each alleged direct infringer must be rejected to avoid reaching an absurd 38
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 46 of 53
result. Arista Records, 784 F. Supp. 2d at 317. See also Bouchat v. Champion Prods., Inc., 327 F. Supp. 2d 537, 553 (D. Md. 2003) (permitting more than 350 separate statutory damages awards would lead to absurd result), affd sub nom. Bouchat v. Bon-Ton Dept Stores, Inc., 506 F.3d 315, 32931 (4th Cir. 2007); McClatchey v. Associated Press, No. 3:05-cv-145, 2007 WL 1630261, at *4 (W.D. Pa. June 4, 2007) (applying the statutory limit to a single award where the jointly infringing downstream users were perhaps not as numerous as in Bouchat). V. Mr. Morels Copyright Management Information Claims Must Fail Morel moves for summary judgment as to his claims that AFP and Getty Images14 should be liable for allegedly providing false copyright management information (CMI) in violation of 17 U.S.C. 1202(a), and that AFP and Getty Images should be liable for removing CMI in violation of 17 U.S.C. 1202(b). Both of these claims fail as a matter of law. Morels motion should be denied, and Defendants motion should be granted. A. Defendants Did Not Provide False CMI Pursuant to 1202(a)
The statutory language states: No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement (1) provide copyright management information that is false, or (2) distribute or import for distribution copyright management information that is false. 17 U.S.C. 1202(a). Defendants did not knowingly and with the intent to induce, enable, facilitate or conceal infringement, provide, distribute or import false CMI. Id. 1. AFP Did Not Provide False CMI With Any Mal-Intent
As detailed in Defendants Motion and 56.1 Statement, the undisputed evidence is that Defendants did not include Sueros name, rather than Morels name, knowingly or with any intent
14
Mr. Morel asserted a claim in his Third Amended Counterclaim against the Post for violation of 17 U.S.C. 1202(a), but has only moved against Getty Images and AFP on this claim. (See Morel Brief, pp. 39-42). In any event, his claim against the Post fails for the reasons set forth in Defendants Joint Motion for Summary Judgment. (See Joint Brief, pp. 35-40).
39
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 47 of 53
to induce, enable, facilitate or conceal any alleged infringement. There was nothing on Sueros TwitPic page that would have indicated that any of the photos thereon were created by Morel. (Joint 56.1 111-115). Furthermore, once downloaded, there was no reason for Amalvy to have any different knowledge; the Photos at Issue did not have any identifying notations on them or in their metadata. (Joint 56.1 147-148). Thus when Amalvy and AFP listed Suero as the photographer of the Photos at Issue, they did it with the belief that he was indeed the photographer and they credited him. (Joint 56.1 131, 169-170). Once again, Morel has presented zero evidence to refute that AFP initially listed Suero, rather than Morel, as the author of the Photos at Issue because it truly believed, at the time, that Suero was the author of the photos. Further, the timeline indicates that Amalvy had already seen Sueros TwitPic page, and downloaded another photo from Sueros page, before Morel had even begun uploading photos to Twitter. (See Joint 56.1 Counter-Statement 31, 85). Morel has presented no evidence that Amalvy ever saw Morels TwitPic page prior to downloading the Photos at Issue from Sueros page, and indeed the record evidence shows that Amalvy had not viewed Morels page and did not know who Morel was at the time that he downloaded the Photos at Issue from Sueros page. (Joint 56.1 138). Morel points to Amalvys e-mail to Morel on the night of January 12, 2010 as evidence that Amalvy must have seen Morels TwitPic page. However, this e-mail proves nothing of the sort and in fact supports Amalvys undisputed testimony. The e-mail address to which the e-mail was sent was not available on Morels TwitPic page. (Joint 56.1 140, 142-143). Notably, Morels 56.1 Statement brings to light that Morels e-mail address had been posted by Morels friend, Richard Morse, on Twitter at 7:55 p.m. EST on January 12, 2010, when Morse tweeted that photos were available by e-mailing that address. (Morel 56.1 39). That was before Morel 40
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 48 of 53
posted his first photo to TwitPic at 9:13 p.m. EST. (Morel 56.1 21(i); Joint 56.1 CounterStatement 21(i)). None of Morels photos were posted or made available through Morses tweet. (Morel 56.1 39). Given that Morels TwitPic page does not list the e-mail address, that Amalvys e-mail makes no reference to TwitPic or seeing any of Morels photos, and that Morse had tweeted the e-mail address, the record evidence at most suggests that Amalvy saw Morses tweet. (Morel 56.1 39, 58; Joint 56.1 140, 142-143). There is nothing in the record to even remotely indicate that Amalvy saw Morels TwitPic page or any of his photos before he e-mailed Morel or downloaded the Photos at Issue from Sueros TwitPic page. This is just another example of the stream of claims made by Mr. Morel that are simply not supported anywhere in the record or in fact. Further, there is no evidence that the Suero credit was done with intent to induce, enable, facilitate or conceal any alleged infringement. AFP had nothing to gain by misattributing the images. As soon as AFP learned of the error, it took immediate action. An hour after being made aware of the error, AFP had made the change on Image Forum, its archive and its wire, sent a Caption Correction stating that Morel was the photographer to its and Getty Images subscribers through the AFP wire, Image Forum, and the Getty Images feed, and uploaded the recredited Images to the Getty Images website listing Morel as the photographer. (Joint 56.1 171-176, 179-183). As Amalvy explained, he did not know Morel or who he was, and when he did learn that Morel was the photographer, not Suero, thats Lisandro [Suero] or Daniel [Morel], for me is no difference. (Joint 56.1 137-138, 141; Amalvy Dep., 180:13-15, as attached as Exhibit C to Rosenfeld Declaration, Dkt. 139-3). Morel cannot blame AFP for Sueros actions. Suero took Morels photos and posted them as his own. (Joint 56.1 108-118). Morel did not contact Suero or do anything else to correct 41
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 49 of 53
the confusion at the time. (Joint 56.1 119). Rather than contact Suero to correct the situation, Morel now claims it was somehow Defendants fault that they were duped by Suero. AFP credited Suero because he took credit for the photos and as soon as AFP learned of the incorrect credit, they fixed it. Morel also claims that AFPs designation of Morel as an AFP stringer was a false representation. First, the evidence shows that the notation STR simply means that Morel was not an employee of AFP. (Joint 56.1 21-24). It does not mean that Morel was an AFP stringer and it gives no inference as to copyright ownership or rights. (Joint 56.1 21-24). Second, a claim for false representation would fall within the Lanham Act, and Morels Lanham Act claims have already been dismissed. (Dkt. 52, pp. 18-21) 2. Getty Images Did Not Provide False CMI With The Requisite Intent
Nor did Getty Images provide, distribute or import false CMI knowingly or with the intent to induce, enable, facilitate or conceal infringement. Morels claim against Getty Images rests entirely upon his allegation that Getty Images received AFPs caption correction, had knowledge from the correction of the Suero-attributed images and nevertheless continued to distribute them (Joint Brief, pp. 37-41). As set forth in Counterclaim Defendants moving brief and above, Getty Images did not distribute a single one of the images with the requisite knowledge or intent. When it learned of Morels claim on January 13, 2010, it promptly removed all images credited to Daniel Morel; as soon as it learned on February 2, 2010, that certain images credited to Suero remained on its system, Getty Images removed them, as well as David Morelcredited images discovered in the process. (See supra pp. 15, 16 n.7). The record in this case thoroughly refutes Morels post-hoc attempt to establish Getty Images supposed knowledge of
42
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 50 of 53
the inaccurate CMI when it distributed the images by playing connect-the-dots with a handful of disparate, unconnected communications. B. There Was No Removal of CMI Pursuant to 1202(b)
Morel bases the 1202(b) counterclaims on the assertion that AFP and Getty Images did not include Morels name and photomorel, which were present on his TwitPic page, on the photos that were distributed. (TAC 162-169). Yet AFP did not knowingly and with the intent to induce, enable facilitate or conceal infringement, intentionally remove or alter any copyright management information. 17 U.S.C. 1202(b). As discussed at length in Defendants Joint Brief, AFP downloaded the photos from Sueros TwitPic page with no knowledge that Morel was the photographer. (Joint 56.1 128-133, 137-138, 144). Sueros TwitPic page made no reference to Morel and AFP had no reason to know that Morel was the photographer. (Joint 56.1 110-15). As such, AFP did not engage in any removal of Morel or photomorel since those notations were not on Sueros TwitPic page at all. (Joint 56.1 149-150). Again, Morel has provided no evidence to the contrary. Further, AFP had no knowledge or intent to induce, enable, facilitate or conceal any alleged infringement, as evidenced by AFPs immediate efforts to correct the photographer credit as soon as it became aware of the error. (Joint 56.1 171-176, 179-183). Morels claim that Getty Images removed CMI is even more far-fetched. As set forth in Defendants moving papers and above, there is no evidence that Getty Images removed Daniel Morels name, Photomorel or Twitpic from the Photos at Issue. Getty Images obtained all of the images from AFP and when it distributed them, either via its feed or through the website, to its licensees, it credited each image to exactly the same photographer to whom AFP had given
43
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 51 of 53
credit; in every case this was either Morel or Suero, and never just AFP. (See Joint Brief, p. 41; pp. 12-14, 17-18 supra). Thus, as a matter of law, Morel cannot succeed on his claims for violation of the DMCA, 17 U.S.C. 1202(a) and (b), and his Motion should be denied and Defendants are entitled to summary judgment as to Counterclaims 4, 5 and 12. C. DMCA Statutory Damages Are Limited to Each Violation and Not Each Download
Morel argues that pursuant to 17 U.S.C. 1203, he is permitted to an award of $25,000 for each violation of 17 U.S.C. 1202 and implies that this entitles him to what would be a windfall of millions of dollars. (Morel Brief, p. 42). As explained in sections A and B above, Defendants do not believe that Morel can succeed on his claims pursuant to 17 U.S.C. 1202 and that they are entitled to summary judgment against Morel for these claims. Nonetheless, even if Morel were to succeed on his CMI claims, his damages would be limited to the number of alleged violations by the Defendants, and not the number of downloads of the Photos at Issue by Defendants customers, subscribers and licensees. See McClatchey, 2007 WL 1630261 at *5. McClatchey is directly on point factually and legally. There, the Associated Press (AP) was accused of taking a copyright notice off a photograph and distributing the photo without the authors permission. Id. at *2. The plaintiff photographer argued that because her picture was distributed to each of AP's 1,147 PhotoStream subscribers, any award should be multiplied that many times. Id. at *5. The court ruled in favor of AP, explaining that the DMCA damages provisions are clearly focused on the defendant's conduct. Id. at *6. In essence, the term each violation is best understood to mean each violative act performed by Defendant. Id. Therefore, the McClatchey court held that the AP would violate the DMCA each time it wrongfully distributed a photograph to its subscribers. In this case, the Court concludes that AP 44
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 52 of 53
committed only one alleged violative act by distributing the photograph to its PhotoStream subscribers, even though there were 1,147 recipients. Id. Similarly, here, Morel would not be entitled to collect a statutory award pursuant to the DMCA for each one of AFP or Getty Images subscribers; instead, any award would be limited to the number of violative acts by the Defendants. See also Stockwire Research Group, Inc. v. Lebed, 577 F. Supp. 2d 1262, 1267 (S.D. Fla. 2008) (following McClatchey and ruling that the defendant violated the DMCA on three occasions (the number of times the video was posted on the web) rather than 11,786 (the number of times the video was viewed on YouTube)). CONCLUSION For the reasons set forth above, the Defendants respectfully request that the Court deny Morels Motion for Summary Judgment in its entirety, that summary judgment be entered as to the remaining counts of the Counterclaims asserted by Mr. Morel and that a Declaratory Judgment of non-infringement be entered.
45
DWT 19606268v9 0053349-000076
Filed 05/29/12 Page 53 of 53
Dated: New York, New York May 29, 2012 Respectfully submitted, By: /s/Joshua J. Kaufman Joshua J. Kaufman Meaghan H. Kent Elissa B. Reese VENABLE LLP 575 7th Street, N.W. Washington, DC 20004-1601 Telephone: (202) 344-4000 Fax: (202) 344-8300 Counsel for Plaintiff-Counterclaim Defendant Agence France Presse By: /s/James Rosenfeld James Rosenfeld Deborah Adler Samuel M. Bayard DAVIS WRIGHT TREMAINE LLP 1633 Broadway 27th floor New York, New York 10019 Telephone: (212) 489-8230 Attorneys for Counterclaim Defendants Getty Images (US), Inc. and the Washington Post Company
46
DWT 19606268v9 0053349-000076

Agence France Presse v. Morel, 10 Civ. 2730 (S.D.N.Y. May 29, 2012)

Încărcat de

Informații document

Titlu original

Drepturi de autor

Formate disponibile

Partajați acest document

Partajați sau inserați document

Opțiuni de partajare

Vi se pare util acest document?

Este necorespunzător acest conținut?

Drepturi de autor:

Formate disponibile

Agence France Presse v. Morel, 10 Civ. 2730 (S.D.N.Y. May 29, 2012)

Încărcat de

Drepturi de autor:

Formate disponibile

Case 1:10-cv-02730-AJN-MHD Document 162 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT NEW YORK - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -- - - - - X AGENCE FRANCE PRESSE,

Filed 05/29/12 Page 1 of 53

10 Civ. 2730 (AJN)(MHD)

COUNTERCLAIM DEFENDANTS MEMORANDUM IN OPPOSITION TO MORELS MOTION FOR SUMMARY JUDGMENT

May 29, 2012

DWT 19606268v9 0053349-000076

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 2 of 53

DWT 19606268v9 0053349-000076

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 3 of 53

Morels Claim of Vicarious Copyright Infringement Must Fail ....................... 35

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 4 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 5 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 6 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 7 of 53

Melville B. Nimmer & David Nimmer, Nimmer on Copyright (2012) ...................................28, 35

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 8 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 9 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 10 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 11 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 12 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 13 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 14 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 15 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 16 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 17 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 18 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 19 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 20 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 21 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 22 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 23 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 24 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 25 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 26 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 27 of 53

Case 1:10-cv-02730-AJN-MHD Document 162

Filed 05/29/12 Page 28 of 53