Agence France Presse v. Morel, 10 Civ. 2730 (S.D.N.Y. May 27, 2012) (Morel's SJ Motion)

Case 1:10-cv-02730-AJN-MHD Document 126
Filed 04/27/12 Page 1 of 60
Barbara Hoffman (BH 8931) THE HOFFMAN LAW FIRM 330 West 72nd Street New York, New York 10023 Telephone: (212) 873-6200 Facsimile: (212) 974-7245 Attorney for Defendant and Counterclaim Plaintiff Daniel Morel UNITED STATES DISTRICT COURT SOUTHERN DISTRICT NEW YORK ------------------------------------------------------------------x AGENCE FRANCE PRESSE, Plaintiff, ECF Case v. 10 Civ. 2730 (AJN) (MHD) DANIEL MOREL Defendant and Counterclaim Plaintiff, v. AGENCE FRANCE PRESSE Counterclaim Defendant, And GETTY IMAGES (US), INC., CBS BROADCASTING, INC., ABC, INC., TURNER BROADCASTING SYSTEMS, INC., THE WASHINGTON POST COMPANY and (AFP and Getty Licensees does 1 - et. al). Third Party Counterclaim Defendants ------------------------------------------------------------------x MEMORANDUM OF LAW IN SUPPORT OF DEFENDANT-COUNTERCLAIM PLAINTIFFS MOTION FOR SUMMARY JUDGMENT ON LIABILITY AGAINST AGENCE FRANCE PRESSE FOR COPYRIGHT INFRINGEMENT, SECONDARY LIABILITY AND VIOLATION OF THE DMCA; AGAINST GETTY IMAGES FOR COPYRIGHT INFRINGEMENT SECONDARY LIABILITY AND VIOLATION OF THE DMCA; AGAINST THE WASHINGTON POST FOR COPYRIGHT INFRINGEMENT AND VIOLATION OF THE DMCA.
TABLE OF CONTENTS Page PRELIMINARY STATEMENT .................................................................................................... 1 STATEMENT OF FACTS ............................................................................................................. 8 1. 2. 3. 4. 5. AFP Steals Haiti Earthquake Images. ......................................................... 8 The Caption Correction............................................................................... 9 Morel and Corbis Compete With Getty Images ....................................... 10 The Kill Notice ......................................................................................... 13 Getty Images Failure To Implement The Kill Notice and Willful Failure To Send Its Own Kill Notice Or Take Down The Iconic Infringing Images ................................................................................................................... 14
PRIOR PROCEEDINGS .............................................................................................................. 16 SUMMARY JUDGMENT STANDARD .................................................................................... 16 ARGUMENT ................................................................................................................................ 17 I. COUNTERCLAIM PLAINTIFFS MOTION FOR SUMMARY JUDGMENT ON DIRECT COPYRIGHT INFRINGEMENTAGAINST THE COUNTERCLAIM DEFENDANTS SHOULD BE GRANTED ..................................................................... 17 A. B. Morel Owns Copyright In The Haiti Earthquake Images ..................................... 18 The Undisputed Evidence Establishes That Counterclaim-Defendants Infringed Morels 17 U.S.C. 106 Rights ............................................................................ 19 1. 2. 3. 4. 5. 6. AFP and Getty Images Have Infringed 17 U.S.C. 106(1) ..................... 19 AFP and Getty Images Have Infringed 17 U.S.C. 106(5) ..................... 20 17 U.S.C. 106(2) gives the copyright owner the exclusive right to create derivative works ........................................................................................ 21 AFP and Getty Have Infringed 17 U.S.C. 106(4) .................................. 22 Direct Infringement of Morels ' 106(3) Right by Getty Images and Direct Infringement by Getty Clients Does 1 - et al. ........................................... 22 The Washington Post is Liable for Direct Copyright Infringement ......... 29 i
II. III.
THERE IS NO GENUINE ISSUE OF FACT THAT AFPS ACTIONS AND GETTY IMAGESS ACTIONS ARE WILLFUL UNDER 17 U.S.C. 504(C)(2)................... 30 SUMMARY JUDGMENT SHOULD BE GRANTED TO MOREL ON AFP AND GETTY IMAGES SECONDARY LIABILITY ............................................................... 36 A. B. C. Contributory Infringement .................................................................................... 36 Vicarious Infringement ......................................................................................... 37 Under 17 U.S.C. ' 504(C)(1) Morel is Entitled to Recover from a Secondarily Liable Defendant, Multiple Awards Per Work Based on the Number of Direct Infringements ........................................................................................................ 38
IV.
COUNTERCLAIM PLAINTIFF IS ENTITLED TO SUMMARY JUDGMENT ON HIS DMCA CLAIMS UNDER 17 U.S.C. ' 1202(A) AND 17 U.S.C. ' 1202(B).................. 39 A. B. C. Falsification of Copyright Management Information ........................................... 39 Removal of Copyright Management Information................................................. 41 17 U.S.C. ' 1203 Entitles Morel to an Award of Statutory Damages of up to $25,000.00 for each Violation of ' 1202 .............................................................. 42
V. VI. VII.
MOREL IS ENTITLED TO SUMMARY JUDGMENT DISMISSING AFPS DEFENSE OF STANDING ................................................................................................................ 42 MOREL IS ENTITLED TO SUMMARY JUDGMENT DISMISSING AFPS DEFENSE OF LICENSE .................................................................................................................... 47 SUMMARY JUDGMENT SHOULD BE AWARDED TO MOREL ON GETTY IMAGESS SECTION 512(C) SAFE HARBOR DEFENSE .......................................... 48 A. B. Protection is only Available to Entities that Meet the Definition of Service Provider See U.S.C. 512(K)(1) .......................................................................... 49 The Undisputed Evidence Shows that Getty Images Meets None of the Requirements for the Protection of the Safe Harbor ............................................. 49 1. 2. Willful Blindness ...................................................................................... 50 Second a Service provider is only Immune from Liability when it Does Not Receive a Financial Benefit Directly Attributable to the Infringing Activity .................................................................................................... 50 Reason by Storage..................................................................................... 50
3.
CONCLUSION ............................................................................................................................. 52 ii
TABLE OF AUTHORITIES Page(s) Cases:

F.M.A.S., Inc. v. Mimi So, 619 F. Supp. 2d 39, 51 (S.D.N.Y. 2009) ............................... ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619, 625 (4th Cir. 2001) .......... Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (S. Ct. 2505), 91 L. Ed. 2d 202 (1986) . Arista Records LLC v. Lime Group LLC et al., No. 06-cv-5936 (KMW (S.D.N.Y. March 10, 2011) ........................................................................................................... Arista Records LLC v. Usenet.com, Inc., 633 F. Supp 2d 124, 148 (S.D.N.Y. 2009) ..... Barclay Capital et al. v. Theflyonthewall.com (10-1372-cv) ................................................................................................................ Barry Z. Levine v. Elliot Landy and Landyvision, 1:11-cv-1038 (2011 U.S. Dist. LEXIS 149712 N.D.N.Y.) ........................................................................................... Blizzard Entertainment, Inc. v. Alyson Reeves d/b/a Scapegaming, No. 09-7621, slip op. (C.D. Cal. Aug, 10, 2010) ...................................................................................... Boisson v. Banian, Ltd., 273 F.3d at 268 (2d Cir. 2001) ................................................. Bryant v. Media Right Productions, Inc., 603 F.3d 135, 143 (2d Cir. 2010, cert. denied, 131 S. Ct. 656 (2010) ...................................................................................... 18 49, 51 16 38 27 7 22 42 19 31
Cartoon Network LP v. CSC Holdings, Inc. (Cablevision), 536 F.3d 121, 131 (2d Cir. 2008) ..................................................................................................................... 24, 25, 27 Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) ........................................................ Columbia Pictures Television v. Krypton Broad of Birmingham, Inc., 106 F.3d 284 (9th Cir. 1997)............................................................................................................... Corbis Corp. v. Amazon,com, Inc. et al., 351 F. Supp. 2d 1090 (W.D. Wash. 2004) ..... DiCola v. SwissRe Holding (North America), Inc., 996 F.2d 30(2d Cir. 1993) .............. Eden Toys, Inc. v. Florelee Undergarment Co. Inc., 697 F.2d 27(2d Cir. 1982) ............ Encyclopedia Brown Production Ltd. v. HBO, Inc., 25 F. Supp 2d 395(S.D.N.Y. 1998) ............................................................................................................................ , 1617 38 12n.9 17 18 34
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F.D.I.C. v. Giammettei, 34 F.3d 51(2d Cir. 1994) ........................................................... Faulkner v. Natl Geographic Socy, 211 F. Supp. 2d 450 (S.D.N.Y. 2002) .................. Gershwin Pub. Corp. v. Columbia Artist Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971) ............................................................................................................................ Getty Images v. Advernet, 797 F. Supp 2d 399 (S.D.N.Y. 2011) ........................................................................................................... Gladstone Realtors v. Village of Bellwood, 442 U.S. 91 (1979) ..................................... GMA Accessories, Inc. v. Olivia Miller, Inc., 139 Fed. Appx. 301 (2d Cir. 2005) ......... In re Aimster Copyright Litigation, 334 F.3d 643, 650 (7th Cir. 2003) ........................... Island Software & Computer Services, Inc. v. Microsoft Corp., 413 F.3d 257, (2d Cir. 2005) ............................................................................................................................ Island Software and Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir. 2005) ............................................................................................................... Island Software v. Microsoft, 413 F.3d 257 (2d Cir. 2005) 2005 U.S. App. LEXIS 12766 ........................................................................................................................... Knitwares, Inc. v. Lollytogo Ltd., 71 F.3d 996, 1010 (2d Cir. 1995)............................... Lipton v. Nature Co., [**27] 71 F.3d 464, 472 (2d Cir. 1995) ........................................ Madeira v. Affordable Hous. Found., Inc., 469 F.3d 219, 251 (2d Cir. 2006) ................ MAI Systems Corp v. Peah Computer, Inc., 991 F.2d 551 (9th Cir. 1993) ..................... Matthew Bender & Co., Inc. v. West Pub. Co., 15 F.3d 693, 706 (2d Cir. 1998) ........... Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 L. Ed. 2d 781 (2005) ........................................................................................................................... Microsoft Corporation v. Logical Choice Computers, Inc., No. 99 C. 1300 WL 58950 (N.D. Ill. Jan. 22, 2001) ............................................................................................... N.A.S. Import Corp. v. Chenson Enter., Inc., 968 F.2d 250 (2d Cir. 1992)..................... N.Y. Times Co. v. Tasini, 533 U.S. 483, 498 (2001) ........................................................ Perfect 0, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002) ........ Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1173 (9th Cir. 2007) ....................
17 36 36 27 19 31 31 27 21 18 33 34 47 20n.11 36 36, 37 23 34 23 51 37
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Perfect 10, Inc. v. Google, Inc., 416 F. Supp 2d 828, 857 (C.D. Cal. 2006) ................... Perfect 10N Google, 508 F.3d 1146 (9th Cir. 2000) ........................................................ Procter & Gamble Co. v. Colgate Palmolive Co., 199 F.3d 74 (2d Cir. 1999)............... PSI Hoyos v. Pearson, 2012 U.S. Dist. LEXIS S.D.N.Y (2012) ..................................... Psihoyos v. Pearson, 10 Civ. 59 12 (JPO 2010 U.S. Dist. LEXIS 27265 (S.D.N.Y. 2012) ............................................................................................................................ Random House, Inc. v. Rosetta Books LLC, 150 F. Supp. 2d 613 (S.D.N.Y. 2001) ....... Religious Technology Center v. Netcom On-Line Communication Services, 907 F. Supp. 1361 (N.D. Cal. 1995) ....................................................................................... Richard Feiner v. The New York Times Company, 2008 U.S. Dist. LEXIS 58454 (S.D.N.Y.2008) ............................................................................................................ Righthaven LLC v. Ganner Alley, 2012 U.S. Dist. LEXIS 26917 at 2 ............................ Salton, Inc. v. Philips Domestic Appliances and Personal Care, 391 F.3d 871 (7th Cir.) .............................................................................................................................. SEC v. Meltzer, 440 F. Supp. 2d 179 (E.D.N.Y. 2006) ...................................................
37, 38 28 23 17 45 45 25 18 43 27 16
Silvers v. Sony Pictures Entmt, Inc., 402 F.3d 881, 884 (9th Cir. 2005)......................... 42-43, 43 Softel, Inc. v. Dragon Med. Sci. Commens, Inc., 118 F.3d 955, 971 (2d Cir. 1997) ... Software Freedom Conservancy, Inc. v. Best Buy Co., Inc., 2010 WL 2985320, at *3 (S.D.N.Y. July 27, 2010) ............................................................................................. Sony Corp. v. Universal City Studios, 464 U.S. 417, 435, 104 S. Ct. 774, 78 L. Ed. 2d 574 (1984) .................................................................................................................... Tracfone Wireless, Inc. v. ANADISK, LLC, 685 F. Supp. 2d 1304 (S.D. Florida, 2010) United States v. Macpherson, 424 F.3d 183 (2d Cir. 2005) ............................................ Update Art, Inc. v. Modiin Publg, Ltd., 843 F.2d 67, 73 (2d Cir. 1988) ........................ Viacom Intl et al. v. YouTube, Inc. et al., No. 103270, slip op. (2d Cir. Apr. 5, 2012).. Viacom Intl, Inc. v. YouTube Inc., No. 10-3270 cr (Ed Cir. Apr. 5, 2012) .................... Ward v. Natl Geographic Soc., 208 F. Supp. 2d 429 (S.D.N.Y. 2002) .......................... WB Music Corp. v. RTVO Commcn Grp., Inc., 445 F.3d 558, 540 (2d Cir. 2006) ........ v 37 31 37 42 34 22 31 50 39-40 24
Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001) ...................................... Yurman Designs Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001) ..................................... Statutes: 17 U.S. C. 101 ............................................................................................................... 17 U.S.C 1202(b) .......................................................................................................... 17 U.S.C. ' 1203 ............................................................................................................... 17 U.S.C. ' 504(C)(1) ....................................................................................................... 17 U.S.C. ' 512 (C)(1)(A) ................................................................................................ 17 U.S.C. ' 106(1) ............................................................................................................
19, 31 18
19, 20 1 42 38 49 19, 29
17 U.S.C. ' 106(3) ............................................................................................................ 19, 22, 28 17 U.S.C. ' 106(5) ...................................................................................................... 19, 20, 27, 28 17 U.S.C. 106(2) ........................................................................................................... 17 U.S.C. 106(4) ........................................................................................................... 17 U.S.C. 1202(a) ......................................................................................................... 17 U.S.C. 1202(b) ......................................................................................................... 17 U.S.C. 1202(c) ......................................................................................................... 17 U.S.C. 504(c) ........................................................................................................... 19, 22 22 1 41 39, 42 30
17 U.S.C. 504(c)(1) ....................................................................................................... 30, 30n.12 17 U.S.C. 504(c)(2) ....................................................................................................... 17 U.S.C. 101, ............................................................................................................. 17 U.S.C. 1202 ............................................................................................................... 17 U.S.C. 106 ................................................................................................................... 17 U.S.C. 504(c)(2) .......................................................................................................... 17 U.S.C. 1202(a) ......................................................................................................... DMCA 1202(a) ............................................................................................................. vi 30 1 39, 42 1, 19, 43 35 39 16
DMCA 1202(b) ............................................................................................................. Local Rule 56.1 ................................................................................................................ Section 512(c) of the DMCA ........................................................................................... U.S.C. 512(K)(1)........................................................................................................... Other Authority: 3 Nimmer On Copyright................................................................................................... 4 Nimmer on Copyright. 14.04 ..................................................................................... Francis Reynolds, Fair Game: Intellectual Property in the Digital Age........................ H.R. REP. No. 105-551 (II), at 50 ................................................................................... H.R. Rep. No. 105-551(II), at 49-50 (1998)..................................................................... H.R. Rep. No. 94-1476, at 64-65 (1976), reprinted in 1976 U.S.C.C.A.N. 5659 ...........
16 8 , 48,49 49
22 38 1n.1, 18 51 49 21
MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT ................................ 37, 41, 49
vii
PRELIMINARY STATEMENT The means to plunder grow more prevalent every day, so much so that some writers feel the need to ask, is copyright relevant . . . while society may seem to be moving in that direction, no matter how much this plundering may seem to chip away at our intellectual hierarchies, the politics of allusion and borrowing continues to be shaped by the existing power dynamics of ownership. Thats why advocates of a world of free and therefore free-flowing content sometimes risk shortchanging those who have historically been wronged by cultural and intellectual appropriation or outright theft. when ideas, sounds, images are taken without consent,, in todays world, someone ends up losing in terms of getting the credit and in terms of getting the money that sometimes accompanies that credit. 1 Defendant-Counterclaim Plaintiff Daniel Morel (Morel or Counterclaim Plaintiff) submits this Memorandum of Law in Support of his motion for an order granting Morel summary judgment against Agence France Presse (AFP), Getty Images (US) (Getty Images) and The Washington Post Company (the Washington Post) (collectively, the Counterclaim Defendants) under the Copyright Act of 1976 (17 U.S.C. 101, 106, et seq) (the Act) for direct copyright infringement and for summary judgment for vicarious and contributory infringement against AFP and Getty Images. Morel claims that notwithstanding that the Counterclaim Defendants are liable jointly and severally for acts of infringement, the record shows that there is no genuine factual dispute that each of the Counterclaim Defendants is liable individually for acts of willful infringement. Additionally, Morel seeks summary judgment on liability under the Digital Millennium Copyright Act (DMCA) (17 U.S.C. 1202(a) for falsifying his copyright management information (CMI) 2 with intent to induce infringement and a claim for removal of CMI also with intent to induce infringements. (17 U.S.C 1202(b))
1 2
Francis Reynolds, Fair Game: Intellectual Property in the Digital Age Dckt 52 Order, Judge Pauley noted that AFP did not contest that its credit line constitutes CMI.
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Morel also moves for summary judgment on the inapplicability of the affirmative defenses raised by AFP of standing and non-exclusive license and, inter alia, the DMCA Safe Harbor Defense and contribution raised by Getty Images. 3 Content sharing and social networking sites such as Twitter, Facebook and YouTube are important tools for reporters and editors, they may provide first tip-off to breaking news events and statements or be the source of otherwise unobtainable photographs and videos. ... The use of this material carries significant risks to the agencys reputation for reliability and accuracy, however, notwithstanding any legal or ethical issues. For whatever reasons, people may post content that is invented or distorted. They may reproduce someone elses images. And they may retain or have abused copyright or expectations of privacy. See AFPs English Service Stylebook section Rules for using content from online networks such as Twitter, Flickr and Facebook. On January 12, 2010, 4:53pm EST, the worst earthquake in 200 years 7.0 magnitude struck Haiti. Daniel Morel, a well-known and highly regarded Haitian-born veteran professional photojournalist, was in Port-au-Princes central street, Grande Rue, when the quake struck. Narrowly escaping injury, he hit the streets to photograph the death and destruction around him. Returning at dark to his hotel, the landmark Oloffson, he found his computer intact and began editing his photographs. Few journalists and professional photographers were on the ground at the time of the earthquake, and even fewer were able to transmit photos on the Internet. Morel, a former Associated Press (AP) staffer, realized the importance of distributing his photographs as quickly as possible. He did that, and during an earthquake still in progress with aftershocks of a 5.0 magnitude every 15 or 20 minutes.
Counterclaim Plaintiff refutes many of the Counterclaim Defendants affirmative defenses in the context of his arguments in support of his own arguments in support of his motion to the extent any of the myriad other affirmative defenses are not waived but will be addressed in Counterclaim Plaintiffs Answer and damage phase of this litigation.
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Like many professional photojournalists, Morel had dreams of being in the right place at the right time the moment to capture and document a major breaking news event before any of your colleagues arrive on the scene. At approximately 6:10 PM, Isabel Morse, daughter of the hotel proprietor Richard Morse, helped Morel to connect to the Internet. There was no power but Morel had been allocated a half-hour on the hotels battery. Using his Twitter account @photomorel and password, Morel logged onto Twitpic, a third-party application of Twitter. Twitpics ToS provides, inter alia, all images uploaded are copyright their respective owners. He uploaded his first image at 6:13 PM and advertised photos/videos from photomorel. He continued to upload 17 images until 7:28 PM. At 6:26 PM, Morel uploaded XVALY with a link to his Twitter. Morel added on his Twitpic page the attributions Morel, DanielMorel@photomorel, photomorel. From 6:53 PM to 7:57 PM, Lisandro Suero (Suero), of the Dominican Republic who was not in Haiti at the time, copied Morels photographs, posted them on his Twitpic page, and tweeted at 7:01 PM, that he had exclusive photographs of the catastrophe for credit and copyright. Suero is not a photographer and was not in Haiti during the earthquake. Suero did not attribute the photographs to Morel. In such a decentralized news environment, with little power and electricity, no telephone service, the international news media tapped into Haitis online community to be its eyes and ears on the ground. The Internet and social media sites were proving vital. Haiti, # Haiti and Earthquake became trending topics on Twitter. 4 Morels photos were among the first transmitted from Haiti. Morse @ RAM Haiti, wellknown to the international journalist community, tweeted that Photomorel@yahoo.com had photos at 7:59 PM. There was a media frenzy to acquire images. That evening, numerous
4
Channel 4 News Twitter List
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American and foreign news outlets emailed Morel and posted on Twitpic asking to purchase his photos for publication. Four CBS News representatives contacted Morel seeking to purchase his photographs and offering to credit him as author. In addition, five CNN representatives contacted Morel, complimenting him on his photographs, as did countless others. For example, at 8:22:31PM, Katy Byron e-mailed Morel at photomorel@yahoo.com Hello from CNN I saw on Twitter that you have some photos of the earthquake damage . . . At 8:27 PM, Morel replied Ok, thanks you pay a lot of money for these photo. I have evething. Vincent Amalvy, Photo Chief for Agence France Presse (Amalvy), was desperate to acquire photographs. At 7:12 PM, 5 Amalvy forwarded an email to wapix@afp.com http//picfog.com/search/Haiti. He tweeted to Suero to acquire images at 7:15 PM and at 9:42 PM he emailed Morel at photomorel@yahoo.com. Amalvy received no response from either Suero or Morel. At 7:26 PM, Amalvy forwarded a 7:22 PM email to wapix@afp.com http://radioteleginen.ning.com/profiles/blogs/pictures-of-haiti. At 7:36 PM, Amalvy sent an email to wapix@afp.com with the image attachment haiti 1, a cell phone image by Carel Pedre, Haitian journalist, obtained by Amalvy from Radio Tele Ginen. At or about 11:23 PM, Amalvy downloaded Morels images to his computer and from 11:23 PM 11:36 PM, transmits at least eight of Morels images (the Iconic Images) on the AFP wire feed and to its photo database called ImageForum, where the Iconic Images were watermarked with AFPs logo, falsely credited to Lisandro Suero stringer and sold worldwide to subscribers, customers, clients, and partners of AFP, including Getty Images. Getty Images is an image licensing company that, pursuant to a mutually beneficial content partnership agreement, holds exclusive rights to market AFPs images in North America and the U.K.
5
Facts in this paragraph are Amalvy Dep. Ex. 7-B and Morel 56.1.
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Amalvy was subsequently to relate to AFPs Global News Director in August 2010. At the time of the earthquake and in the hours that followed, I was the only one in direct contact with this bizarre situation with no contact with AFP Haiti and the appearance on a social networking site of photos of quality . . . After several hours, there was no hope to receive an AFP product or have a photo or text contact. The results - AFP was a success and on the front pages for the three days following the catastrophe. we are not on a classic situation, so that, I mean guideline doesnt care about this kind of situation. (Amalvy Dep. Ex. 26) Jean Francois Leroy, Director of Visa Pour lImage told Peggy Porquet, Corbis, Senior Editor, News, EMEA, when she discussed including Morel in Visa for 2010, on February 2, 2010. that he will plan to do an exhibition, but he is interested in this story of Daniel Morel in this sense of how agencies can invent the name of the photographer and recoup pictures without any check. (COR 2118) AFPs actions, Amalvys deposition testimony to the contrary, are unique among the wire services. AP contacted Morel, but could not make a deal and did not use the images. See http://www.bjp-online.com/british-journal-of-photography/report/1645545/-buymypic. See also http://www.theatlantic.com/technology/archive/2011/04/photojournalism-in-the-age-ofnew-media/73083/. This case is in many respects a traditional case of internet piracy in which the counterclaim defendants are liable for direct and secondary liability for copyright infringement. This Court should not be taken in by AFPs and Getty Imagess efforts to wrap themselves in sham defenses to avoid liability by arguing that Morels posting of the images on Twitpic meant they were available for distribution free to AFP or Getty Images defense that copyright law doesnt apply to us based on the DMCA Safe Harbor. Getty Images operations and aspiration to
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be the number one in the licensing of digital images owned by it or its partners such as AFP, represents a business model far from the kind of passive innocent service provider conduct that was before Congress when it enacted the DMCA. Both AFP and Getty Images knew that they had no right to distribute Morels images. At 7:04 PM Andreas Gebhard, New York Picture Desk Manager, Getty Images (Gebhard), e-mailed Sandy Ciric and Pierce Wright with a cc to Francisco (Pancho) Bernasconi Senior Director of Photography News and Sports at Getty Images, (Bernasconi), not sure if its worth contacting twitter.com/photomorel. Name is Daniel Morel. Dont know anything else. Pix on twitter look very decent. At 7:07 PM, Bernasconi replied Former AP staff shooterI dont want to contact directly now. He normally works for Corbis now (Bernasconi Dep. Exs. 1 (G002765) and 2 (G002766), Cameron Dep. Ex. 17 (G002967)) Gettys Director of Photography knew that the photos being distributed by Getty had been taken by Morel, and Morel was represented by Corbis, a competitor. Both AFP and Getty knew they had infringed Morels copyright and attempted to conceal it for financial gain. Jeremy Nicholl, The Russian Blog observed, Since 2007 Getty Images has been pursuing business in the UK for multiple cases of copyright infringement. Ironically, the infringers being chased by Getty complain that the agency is being unreasonable and heavyhanded: terms like bullying and threatening echo AFPs complaint of Morels antagonistic assertion of rights and inevitably the defense the infringers present against Getty Images is in many cases exactly what AFP/Getty present against Morel: the pictures are on the internet so we thought they were free. Morels 56.1 Statement confirms that Getty Images, notwithstanding its AFP made me do it defense was an active not a passive participant in the infringing activity. When AFP
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issued a caption change, Getty Images inserted AFP as the name of the photographer in certain assets that were sent with that entry left blank. When AFP issued a kill notice, Getty Images did not find it necessary to do so. Not for us to send as it is not our photo. The kill would have to be sent by AFP. AFP and Getty, in a stunning reversal of their traditional roles as aggressive protectors of content, now claim free rider status. That is a term coined by AFP in joining an Amici Curiae Brief filed in the Second Circuit in Barclay Capital et al. v. Theflyonthewall.com (10-1372-cv). The brief pointed out that the vulnerability of news originators has grown exponentially in the internet eraWith a simply computer program and a few keystrokes, a free rider can immediately copy the valuable news content from the internetThe consequences of unchecked, widespread free riding on a news organization would be devastating to publishers and costly to society.
Morel claims the same entitlement to copyright protection for professional photojournalists as AFP and Getty claim for themselves. Licensing is an important source of revenue for content creators, and it is a fact as true for photographers and photojournalists as it is for Getty Images. The arguments advanced by both AFP and Getty Images essentially a business model gone wild would essentially permit the media or any other entity to take a photographers livelihood, embodied in the intellectual property in his photographs, and commercialize it through unauthorized transmission, distribution and licensing, without attribution or reasonable compensation to the photographer for their uses. Taken to its extreme, any media company who links a twitter page to its website, including Getty Images and AFPs ImageForum would expose the content of such site to free riders. It is indeed ironic that AFP and Getty Images, who claim to consider the subject of copyright protection of the utmost importance now accept the arguments of their former rivals such as Google and YouTube.
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STATEMENT OF FACTS The counterclaim plaintiff respectfully refers the Court to Morels Local Rule 56.1 Statement (Morel 56.1), which is incorporated herein by reference. The brief statement below is intended to highlight significant evidence as well as provide additional facts obtained since the filing of the Third Amended Answer, all of which are in Morel 56.1. The pleadings, the discovery and disclosure materials on file and the Declarations provide that there are no genuine issues of fact with respect to the material allegations of the Third Amended Answer. However, a review of internet archives, documents produced by Twitter and Twitpic, AFP, Getty and CNN, have permitted a more accurate timeline and confirm beyond peradventure the willfulness of the Counterclaim Defendants, the theft of Morels Haiti earthquake images and the reckless disregard of Morels rights in those images by their subsequent acts of infringement. 1. AFP Steals Haiti Earthquake Images.
At 7:48 PM, 6 Amalvy sent an email to wapix@afp.com with the image attachment haiti 2. At 9:03 PM, Amalvy sent an email to wapix@afp.com with an image attachment haiti 3. At 9:03 PM, Amalvy sent an email to wapix@afp.com with the image attachment haiti 4. As set forth in Morel 56.1, there is no genuine dispute that the above images were taken from the Radio Tele Ginen website. At 9:07 PM, Amalvy sent an email to wapix@afp.com with an image attachment haiti 5. The image by Tequila Minsky was sent via e-mail at 7:00 PM to The New York Times in exclusive. The image was never posted to Twitpic or social media site. At 9:38 PM, Amalvy sent an email to wapix@afp.com with an image attachment haiti 7. At 9:42 PM, Amalvy emailed Morel at photomorel@yahoo.com, Hello I am the AFP Photo Editor I am searching to contact you Do you have images of the
6
The chronology continues from the Preliminary Statement.
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earthquake You can send them to me at this address vincent.amalvy@afp.com Thank you. At 9:44 PM, Amalvy sent an email to wapix@afp.com with an image attachment haiti 7. This image is Minskys and was stolen by AFP from The New York Times website. CNN had obtained several of Morels images from Twitpic. At 10:59 PM, David Clinch, former Senior International Editor at CNN International, sent the email, We can use these photos with credit to Photographer Daniel Morel: to Haiti (TBS list-serve with a cc to the CNNI Supervisors (TBS) list-serve: http://twitter.com/photomorel. ( 63) At 11:01 PM, Lisa Mirando sent an e-mail forward Bryan Bell including Clinchs 10:59 PM These are incredible images. At 11:04 PM Bell replied Can we get these stills put to tape with a courtesy burned in them? Thanks! At 11:05 PM Erica Fick replied to Bell This one is on the nyt homepage right now courtesied to AFP/Getty - http://twitpic.com/xvj75 how are we sourcing these? XVJ75 is Morels TwitPic image ID number for Iconic Image # 6. (62) Amalvy downloaded at least eight Morel Haiti earthquake images. 7 ( 67) Then Amalvy began transmitting the images to WAPIX beginning with Iconic Image # 6 at 11:23 PM and concluding with Iconic Image # 5 at 11:36 AM. 2. The Caption Correction ( 68)
The record conclusively demonstrates that AFP had actual or constructive knowledge of Morels Twitpic page and knew the images were his whether the source of this knowledge was CNN, The New York Times Lede Blog, PicFog, Twitter search, Twicsy, Twitter trending topic #Haiti, or Twitter @photomorel. Thus, AFP had knowledge that Morel was the author of the
There is a dispute about the number of images Amalvy downloaded and stored in his computer as the computer files have not been produced. Amalvy transmitted only seven of Morels Iconic Images to WAPIX, but eight are in ImageForum.
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Iconic Images when it uploaded them without his permission and transmitted them to WAPIX, Getty Images and ImageForum through the feed. 8 86) January 13, 2010 at 2:06 AM, Benjamin Fathers, @34Benjie, (Fathers), used Twicsy a search engine for images linked to Twitter or Twitter #Haiti to link to Morel and tweeted, Hi Daniel, great pictures from such a difficult environment. I work for AFP, please e-mail ben.fathers@afp.com. Fathers explained that #Haiti and #Haiti earthquake were trending topics on Twitter and easily found Morels images and information about him. Samantha Dubois his Deputy in Paris, via simple internet search established that Morel worked for AP in Haiti in 2003 and in 2005 for Reuters. ( 88) At 4:36 AM, Fathers e-mailed Amalvy Vincent Im not certain Lisandro Sueros photos are his but they belong to Daniel Morel Look http://twitpic.com/xve5d. ( 119) At 4:45 AM, Samantha Dubois, Deputy to the Chief of Desk, AFP, Paris, (Dubois), e-mailed Amalvy with a cc to Fathers, Orye and Antonov I found some pictures made by Daniel Morel in Haiti in 2003 with AP and in 2005 with Reuters. ( 120) AFP had not obtained Morels approval for the use of his Haiti earthquake images. The caption states Credit: AFP; Source: AFP; Photographer: Daniel Morel (stringer). 3. Morel and Corbis Compete With Getty Images
January 13, 2010 at 5:45 AM, Phyllis Galembo, a friend of Morels (Galembo), tweeted Danielplease contact Rita at Corbisshe is trying to contact you!!! you are not getting credit. ( 138) January 13, 2010 at 8:52 AM, Meredith Kamuda, Senior News Editor Americas at Corbis, (Kamuda), e-mailed Anil Ramchand, Director, News Sports, Entertainment & Media, Media Partnerships at Corbis, (Ramchand), Peggy Porquet, Senior Editor, News, EMEA at
It is disputed whether in view of the foregoing, Amalvy downloaded Morels Iconic Images from Morels TwitPic page or Sueros TwitPic page or Radio Tele Ginen. It is a distinction without significance.
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Corbis (Porquet), and Rita Rivera, Morels photo editor at Corbis, (Rivera). Hey all Just saw while going through pics from news sources, looks like Daniel Morel was taken up by AFPGetty. Weve missed the immediate News window. Hopefully Olivier can get us some search and rescue, clean up and Aid coverage! ( 147) January 13, 2010 at 9:09 AM Rita e-mailed Galembo with a cc to Morel Now I see the images are with a Chinese agency he is not getting any credit Xinhua/Radioteleginenhaiti.com. Daniel if you can unpost all the Twitter you are getting ripped off, and someone is telling me they see your name with Getty! I hope not. ( 149) At 9:31 AM Rivera e-mailed Daniel Morel photo, he is twittering and I see that Xinhua has taken them without his credit, can we remove Xinhua off of his photos And just give him the credit? At 9:40 AM Porquet replied Also as I mentioned, Xinhua credited them Radioteleginenhaiti.com. Hes already with Getty and AFP. Xinhua transmitted us only a similar picture. He hasnt filed us. he may has also conclude a deal with Xinhua to have a different credit as it happens often. So dont remove them please! At 9:41 AM Rivera replied I wont remove them. I am pissed!!!!!!!!!! At 9:42 AM, Porquet replied Its a matter of money I think. In that case, the photographers are replying to the first one to call and to offer money. I had the case with the 2005 London Bombing. 154) January, 13, 2010 at 12:54:05 PM, Rivera replied to Morel really the photos on NY Times says afp/getty adn your name. At 12:58 P.M., Morel responded to Rita I only send one photo to nbc news. At 12:58:34 P.M. Rita e-mails ok so you are saying that Xinhua probably stole them from Twitter, please try and remove images from Twitter! At 1:00 P.M., Morel replied to Rivera I just did. ( 154)
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Getty Images received the equivalent of a takedown notice for the Iconic Images on January 13, 2010 from Corbis Senior Corporate Counsel. Heather, We have a serious problem that I am hoping you can help me resolve. Today, one of Corbis editorial photographers uploaded some of his pictures from the earthquake in Haiti and put them on his Twitter page. It appears that they were then illegally copied and distributed to third parties, including Getty. One such example is on the home page of the New York Times website Daniels picture is the 14th one and it is credited as Daniel Morel/AFP-Getty Images. Daniel is exclusive to Corbis and is terribly dismayed by third parties distributing his work. Assuming you arent the right person to help me, can you please put me in touch with the right person at Getty to see what we can do to halt this distribution? We will be issuing DMCA notices today but I thought that this approach might bear more fruit. Thanks in advance! 9 ( 177) January 13, 2010 at 10:13 PM, Walker e-mailed Amalvy Hi Vincent, I am with the Corbis IP Enforcement team. I am working on an infringement issues in which a twitter user by the name of Lisandro Suero posted images that copyright protected by one of our exclusive photographers, Daniel Morel. The images were subsequently found on the NY Times, CNN, BBC and Washington Post websites. They seem to be credited (Lisandro Suero - AFP/Getty), for example, http://www.washingtonp ost.com/wp-dyn/content/linkset/2010/01/13/LI2010011301351.html. I am hoping you can assist us with removing these images from the AFP site as well correcting the matter with the above mentioned sites . . . ( 186) January 13, 2010 at 7:42 PM, Heather Cameron, Getty Images Paralegal, e-mailed to Eva Hambach with a cc to Pancho Bernasconi Eva, FYI below. We pulled 24 AFP assets from our site this afternoon credited to Daniel Morel/AFP. Here is a list of Getty Images image numbers if that helps youHambach responseat 10:36 AM January 14, 2010, we are looking into this matter. Thanks and best regards, Eva. (Hambach Dep. Ex. 6).
It is not clear why Keeley did not follow up with a formal take down notice. (See Corbis Corp. v. Amazon,com, Inc. et al., 351 F. Supp. 2d 1090 (W.D. Wash. 2004)
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January 14, 2010 at 9:57 AM Allen Stephens, Senior Editor at Getty Images, e-mailed Bernasconi: Hi Pancho, This AFP image from Haiti, 95738474, was pulled from the site. Is this one of the Twitter/Facebook/ Flickr pix about which you were talking, or is there another reason I should tell the client? Here is the info as it appears on Image Forum. HAITI, Port-au-Prince : ----EDITORS NOTE -----CORRECTING NAME OF PHOTOGRAPHER----A Haitian woman is helped after being trapped in rubble on January 12, 2010 in Port-au-Prince following a huge earthquake measuring 7.0 rocked the impoverished Caribbean nation of Haiti, toppling buildings and causing widespread damage and panic, officials and AFP witnesses said. A tsunami alert was immediately issued for the Caribbean region after the earthquake struck at 2153 GMT. AFP PHOTO /DANIEL MOREL == RESTRICTED TO EDITORIAL USE/ NO SALES == At 9:59 AM, Bernasconi replied AFP moved it as Daniel did put it on Twitter but CORBIS has the rights to license Daniels photosand we got a take down notice from Corbis yesterday . (Bernasconi Dep. Ex. 4). 4. The Kill Notice
January 14, 2010 at 2:16 PM Hambach e-mailed Fathers and Amalvy US copyright law requires that the image be pulled and removed. Besides, the legal dpt in Paris has given us directives on how to proceed. ( 214) January 14, 2010 at 2:58:56 PM, a form MANDATORY KILL notice was sent, which consists of sending via satellite a request to kill the images and an email to all third parties including Getty to delete the images from their archives. ( 216) January 14, 2010 AFP at 3:14 PM, AFP issued a mandatory kill via e-mail to Getty Images and a select number of other clients: ==MANDATORY KILL== MANDATORY KILL== MANDATORY KILL== Due to a recent copyright issue, we kindly ask you to kill and remove from all your systems Daniel Morel
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pictures from Haiti. We are sorry for any inconvenience; thank you for your cooperation. ==MANDATORY KILL== MANDATORY KILL== MANDATORY KILL== ( 217) AFP only issued a mandatory kill for Daniel Morel pictures, which did not reference the Suero images. ( 219) January 14, 2010 at 3:24 PM, Bernasconi sent an e-mail forward including the mandatory kill to Cameron FYI, thought youd enjoy this especially the excuse. ( 226) Bernasconi explained at his deposition that the copyright notice sent out with the kill was insufficient to assist clients and customers in determining whether to pull the image or not and that more detail should have been provided. Bernasconi was later to say in an e-mail to Eisenberg on March 9, 2010 at 10:56 AM Not for us to send as its not our photo. The Kill would have to have been sent by AFP. ( 227) January 14, 2010 at 3:59:25 PM, Gebhard replied to Hambachs 3:24 PM e-mail You guys had re-sent them yesterday, to correct the photogs name, too At 4:23:08 PM Hambach replies No comment. :-/ ( 228) January 14, 2010 at 4:31 PM, Porquet e-mailed Ramchand saying that shes advised the sales in Paris since many newspapers reproduced Daniels pictures. A few minutes later Porquet e-mailed that she obtained the first newspapers with Morel pictures: La Liberation, Le Monde and Le Figaro. Rivera who was copied responded Merci!!!! Too bad Daniel and Corbis are not there. ( 229) 5. Getty Images Failure To Implement The Kill Notice and Willful Failure To Send Its Own Kill Notice Or Take Down The Iconic Infringing Images
February 17, 2010 at 4:11 PM PST, Walker e-mailed Cameron: . . . As a result of the images remaining on our site for so long, we believe there may have been an incredible amount of licensing of these images by Getty/AFP. We have found dozens of websites displaying Mr. Morels images with the Getty/AFP credit, both naming Lisandro Suero and Daniel morel as the photographer. This is quite concerning 14
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for our photographer as well as Corbis . . . Also, what steps, if any, have been taken by Getty to remedy this situation? If Getty has licensed the images, have your clients been notified that the images are being used without proper authorization . . . At 7:21:28 PM PST, Cameron replied Jennifer, the best contact for you at AFP is Eva Hambach, ccd here . . . At 10:36 PM EST, Hambach replied Will check into this in the ayem. February 18, 2010 at 6:28 PM, Hambach replied . . .The exchange of e-mails has been forwarded to our legal department at AFP headquarters in Paris. Our counsel will get back to you early next week and address all concerns regarding Daniel Morels images . . . ( 250) March 1, 2010, Morels counsel sent a letter requesting that AFP cease and desist from using Morels photographs and instruct its subscribers to do the same. Morels counsel also sent cease and desist letters to other news outlets and charities as well as Getty Images. Despite these requests, many AFP/Getty Images licensees persisted in publishing and, in some cases, continue to publish Morels photos, many of which credit Suero as the photographer. Getty Images although it had actual knowledge of the misattribution of the Iconic Images to Suero, Corbis claim to exclusive representation of the Haiti earthquake images and the kill notice, continued to license the Iconic Images for both editorial use and commercial use; notwithstanding, the No Sales Editorial Use Only which appeared on the caption. Not until April 8, 2010 did Getty Images reach out to its customers. Because it failed to send out thumbnails and the images had for the most part been removed from the customerfacing website, not until June 22, 2010 did any effective campaign begin. Getty Images, Catherine Calhoun, Senior Director Media Sales, did not know of the licensing by Getty Images of Morels Iconic Images until March 17, 2010 and then only because Morels lawyer was sending cease and desist letters to Getty Imagess clients. Bernasconi, at his
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deposition, was of the erroneous belief that Getty Images service representatives had contacted Getty clients on or about March 9, 2010, to discuss Morels Iconic Images with them. PRIOR PROCEEDINGS Judge William Pauley III in the Memorandum and Order dated January 14, 2011 (Memorandum orDckt 52) set out the applicable legal principles with respect to direct and secondary liability for copyright infringement, the DMCA 1202(a) and 1202(b), and AFPs defense of license. SUMMARY JUDGMENT STANDARD Summary judgment is appropriate when the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). The burden is on the moving party to establish the lack of any factual issues. (See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). The very language of this standard reveals that an otherwise properly supported motion for summary judgment will not be defeated because of the mere existence of some alleged factual dispute between the parties. (See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 (S. Ct. 2505), 91 L. Ed. 2d 202 (1986)). Under Rule 56(e), the party opposing the motion may not rest upon the mere allegations or denials of his pleadings, but . . . must set forth specific facts showing there is a genuine issue for trial. Anderson, 477 U.S. at 248. The district court must also be mindful of the underlying standards and burdens of proof . . . because the evidentiary burdens that the respective parties will bear at trial guide district courts in their determination of summary judgment motions. SEC v. Meltzer, 440 F. Supp. 2d 179, 187 (E.D.N.Y. 2006). It is well settled that when a party moves for summary judgment, there is no express or implied requirement in Rule 56 that the moving party support its motion with affidavits or other 16
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similar materials negating the opponents claim Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where a plaintiff uses a summary judgment motion, in part, to challenge the legal sufficiency of an affirmative defense--on which the defendant bears the burden of proof at trial-a plaintiff may satisfy its Rule 56 burden by showing that there is an absence of evidence to support an essential element of the non-moving partys case. F.D.I.C. v. Giammettei, 34 F.3d 51, 54 (2d Cir. 1994) (quoting DiCola v. SwissRe Holding (North America), Inc., 996 F.2d 30, 32 (2d Cir. 1993)) .. PSI Hoyos v. Pearson, 2012 U.S. Dist. LEXIS S.D.N.Y (2012). ARGUMENT I. COUNTERCLAIM PLAINTIFFS MOTION FOR SUMMARY JUDGMENT ON DIRECT COPYRIGHT INFRINGEMENTAGAINST THE COUNTERCLAIM DEFENDANTS SHOULD BE GRANTED Getty Imagess website posts Copyright 101: Copyright and Content Licensing. The document states in pertinent part: Who owns copyrights? Any freelance artist who creates a copyrighted work . . . Whats copyright infringement? Infringement is any violation of the exclusive rights of the creator. Examples of imagery infringement include: Use of whole or of any image without permission Use beyond the scope of a license or permission What are common misconceptions about copyright? If an image is on the Internet, its in the public domain and I dont need permission to use it. If theres no copyright notice, I dont need permission to use it. If I dont make profit from the use, I dont need permission. (Bernasconi Ex. 17) Ironically, AFP and Getty Images affirmative defenses resemble the anecdotal misperception of a lay internet user. Such sophisticated content providers as AFP and Getty Images, known for their aggressive protection of content, should be held to a higher standard of
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care, particularly in view of the reliance of major media companies on their competence to provide accurate imagery and information. AFP failed Copyright 101 ( __). To prevail on a claim of copyright infringement, the plaintiff must demonstrate both (1) ownership of a valid copyright and (2) infringement of the copyright by the defendant. Yurman Designs Inc. v. PAJ, Inc., 262 F.3d 101, 108-109 (2d Cir. 2001); R.F.M.A.S., Inc. v. Mimi So, 619 F. Supp. 2d 39, 51 (S.D.N.Y. 2009) (requiring ownership of a valid copyright and unauthorized copying of the copyrighted work); Island Software v. Microsoft, 413 F.3d 257 (2d Cir. 2005) 2005 U.S. App. LEXIS 12766 (requiring valid copyright in work infringed and that defendant infringed the copyright by violating one or more) 17 U.S.C. 106 rights, at p. 7). A. Morel Owns Copyright In The Haiti Earthquake Images
The Copyright Act authorizes two types of claimants to sue for copyright infringement: (1) owners of copyrights; and (2) persons who have been granted exclusive licenses by owners of copyrights. Eden Toys, Inc. v. Florelee Undergarment Co. Inc., 697 F.2d 27, 32 (2d Cir. 1982) (citing 3 NIMMER ON COPYRIGHT 12.02 at 12-25 (1982)). There is no genuine issue of material fact that Morel is the sole owner of the rights in the Haiti Earthquake Images and was at the time of the theft of the Haiti Earthquake Images by AFP/Getty Images. 10 Morel owns the copyright in the Haiti Earthquake Images, including Iconic Images 1-13, as set forth in the Third Amended Answer. Morel holds a valid copyright registration in the Haiti Earthquake Images VA-701-374. See Richard Feiner v. The New York Times Company, 2008 U.S. Dist. LEXIS 58454 (S.D.N.Y.2008) ([C]omplaints for copyright infringement . . . alleging present ownership by
10
AFPs argument that Morel lacks standing and thus that this Court lacks subject matter jurisdiction is ill conceived. AFP is in fact arguing that Morel is in breach of his contract with Corbis. This meritless argument is addressed in _____________.
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plaintiff, registration in compliance with applicable statute, and infringement by defendant, have been held to be sufficient to create statutory standing.) Morel has Article III standing as well as statutory standing. There is no doubt that he has suffered a distinct and palpable injury to himself that is likely to be redressed if the requested relief is granted. See Gladstone Realtors v. Village of Bellwood, 442 U.S. 91, 100 (1979). On February 23, 2010, Morel timely submitted his photographs for expedited copyright registration, Iconic Images 1-13, with the United States Copyright Office, and obtained certificate VA-701-374. Morels copyright registration certificate is prima facie evidence of both the validity of the copyright and the originality of the work. Boisson v. Banian, Ltd., 273 F.3d at 268 (2d Cir. 2001). Because registration occurred within three months of the alleged infringement, Morel is entitled to statutory damages and attorneys fees. 17 U.S.C. 412. Morel has not assigned any of his exclusive rights in the Iconic Images to a third party (see Article __ Standing), Article __ (License). B. The Undisputed Evidence Establishes That Counterclaim-Defendants Infringed Morels 17 U.S.C. 106 Rights
Section 106 of the Copyright Act (the Act) grants copyright holders a bundle of exclusive rights. This case implicates inter alia four of those rights: the right to reproduce the copyrighted work in copies, the right to create derivative works based on the work, the right to distribute copies of the copyrighted work, and the right to display the copyrighted work. 17U.S.C. 106(1)(2)(3)(5). 1. AFP and Getty Images Have Infringed 17 U.S.C. 106(1)
AFP and Getty Images reproduced exact copies of Morels Iconic Images in high resolution without his permission. Copies as defined in the Act are material objects . . . in which a work is fixed by any method and from which the work can be . . . reproduced. Id. 19
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101 Definitions. A work is fixed in a tangible medium of expression where its embodiment . . . is sufficiently permanent or stable to permit it to be reproduced. For example, in the computer/internet context uploading files, storing files in a database and downloading the files and saving to RAM all constitute the making of copies and violate the reproduction rights. 11 2. AFP and Getty Images Have Infringed 17 U.S.C. 106(5)
In order for Morel to prevail, AFP and Getty Images must have displayed Morels photographs without his permission and made that display available to the public. The Act defines display as showing a copy of a work. 17 U.S. C. 101. Definitions. The Act defines a copy to include the material object in which the work is first fixed. Id. The legislative history of the Act makes clear that since copies are defined as including the material object in which the work is first fixed, the right of public display applies to original works of art, such as digital photographs, as well as to reproductions of them. The legislative history goes on to state that display would include the projection of an image on a screen or other surface by any method, the transmission of an image by electronic or other means, and the showing of an image on a cathode ray tube, or similar viewing apparatus connected with any sort of information storage and retrieval system. Id. This language indicates that showing Morels images on a computer screen would constitute a display. The Acts definition of the term publicly encompasses a transmission of a display of a work to the public by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times. 17 U.S.C. 101. A display is public even if there is no proof that any of the potential recipients was operating his or her receiving apparatus at the
MAI Systems Corp v. Peah Computer, Inc., 991 F.2d 551 (9th Cir. 1993), holding that loading a program into a computer results in copying if it is of more than transitory duration.
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time of the transmission. H.R. Rep. No. 94-1476, at 64-65 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5678. For example, by making Morels images available on their websites, AFP and Getty Images are allowing public access to those images. The ability to view those images is effectively unrestricted to anyone with a computer and internet access. The legislative history emphasizes the broad nature of the display right, stating that each and every method by which the images or sounds comprising a performance or display are picked up and conveyed is a transmission, and if the transmission reaches the public in [any] form, the case comes within the scope of [the public performance and display rights] of section 106. Id. at 64. The evidence is irrefutable that AFP and Getty Images infringed upon Morels public display right and induced and substantially assisted their clients, customers and subscribers to do so. (See Article III) Similarly, there is no dispute the display of Morels Haiti Earthquake Images on the Washington Post website and in its photo gallery infringes Morels exclusive right to display the work. 3. 17 U.S.C. 106(2) gives the copyright owner the exclusive right to create derivative works
A derivative work is defined as one based upon one or more pre-existing works . . . or any other modification which as a whole represent an original work of authorship. (Id.) There is no dispute that licensees of AFP and Getty Images used Morels Iconic Images in TV programming, in newspapers, on posters, inter alia, Soles4Souls, (See Foglesong Decl. &), and the Clinton Foundation, on websites, as banners and as logos. Such uses by Getty and AFP subscribers, customers, and clients are direct infringements of Morels right of reproduction, his right to create derivative works, his right of display and his right of distribution.
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4.
AFP and Getty Have Infringed 17 U.S.C. 106(4)
The distribution right grants to the copyright holder the exclusive right to make a work available to the public by sale, rental, lease or lending. This right enables Morel to prevent the distribution of unauthorized copies of the Iconic Images. There is no genuine dispute AFP engaged in direct copyright infringement, inter alia, copying, distribution, transmission and display of at least eight of Morels Iconic Images. AFP downloaded Morels images, stored and displayed them in ImageForum and distributed and licensed them to customers and subscribers worldwide without Morels authorization. It is well established that copyright laws generally do not have extraterritorial application. Update Art, Inc. v. Modiin Publg, Ltd., 843 F.2d 67, 73 (2d Cir. 1988). The Second Circuit has recognized an exception to this rule where there is a qualifying predicated infringing act in the United States. For the exception to apply, a plaintiff must show the conduct (1): took place in the United States and (2) was in violation of the Copyright Act. While inducement and causation by defendants are not alone enough to qualify as predicate infringing acts in the United States, AFP engaged in direct infringement and violations under ' 106, including copying, distributing and publishing the Iconic Images. See Barry Z. Levine v. Elliot Landy and Landyvision, 1:11-cv-1038 (2011 U.S. Dist. LEXIS 149712 N.D.N.Y.). AFP does not argue, nor could it, that if it fails on its affirmative defenses, it is liable for direct copyright infringement. 5. Direct Infringement of Morels ' 106(3) Right by Getty Images and Direct Infringement by Getty Clients Does 1 - et al.
AFP and/or Getty from January 12, 2010 distributed, licensed and sold the Iconic Images inter alia to National Public Radio (NPR), National Geographic, Vanity Fair, Newsweek, 22
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MTV and Time Inc. and other journals and magazines, who infringed Mr. Morels copyright by incorporating said images in news broadcasts, online photo-galleries, magazines and other media outlets. Similarly, Getty Images made the Iconic Images available to subscribers, customers and la carte purchasers from (Getty Clients) January 12, 2010, including the Washington Post, The New York Times, The Boston Globe, The St. Louis Post-Dispatch, The Denver Post, The Vancouver Sun, the New York Post, The Huffington Post, Newsweek, Vanity Fair, National Geographic, CBS.com, the United Nations, the Clinton Foundation, the Jehovahs Witnesses and other media. Clients and continued to license and make Morels Iconic Images available for license through at least June 22, 2010. The Getty Clients copied, displayed, created derivative works and redistributed Morels Iconic Images without his permission. That Morels right to distribute copies of the copyrighted work to the public by sale or other transfer of ownership was infringed by distributing the copies of the Iconic Images electronically is of no significance with respect to the copy. See N.Y. Times Co. v. Tasini, 533 U.S. 483, 498 (2001). Copyright is a strict liability statute. Because it is a strict liability tort, AFPs and Getty Imagess, their partners, clients, subscribers, licensees and la carte purchasers lack of actual knowledge of their respective infringements of Morels rights is irrelevant to the issue of their direct liability for infringement. See Procter & Gamble Co. v. Colgate Palmolive Co., 199 F.3d 74 (2d Cir. 1999) (innocent copying is still copying under copyright law; Microsoft Corporation v. Logical Choice Computers, Inc., No. 99 C. 1300, 2001 WL 58950 (N.D. Ill. Jan. 22, 2001) (individuals who distributed counterfeit copies of Microsoft software are liable for copyright infringement even if they did not know the software was counterfeit).
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As Getty Images states on its website: Responsible parties include (i) the company that directly infringed, even if unintentionally (ii) employees or individuals who participated in the infringement (iii) anyone who published the infringing imaged, whether they had knowledge or not (iv) anyone who authorized or encouraged infringement. See Copyright 101 Getty Imagess website, Bernasconi Dep., Ex. 18. Getty Images claims that Morels arguments are based on the false premise of conflating Getty Images conduct with that of AFP. Discovery has indeed confirmed that AFP and Getty Images played very different roles in distributing the Iconic Images. The only inference possible from the undisputed material facts is that the volitional acts of Getty Images both before and after receipt of the caption change and kill notice establish Getty Imagess individual liability for copyright infringement. See WB Music Corp. v. RTVO Commcn Grp., Inc., 445 F.3d 558, 540 (2d Cir. 2006). (Getty Images is individually liable for its transmission to the New York Times, of Iconic Image # 6 at approximately 11:00 PM makes Getty Images liable for the unauthorized copying, distribution and display of Iconic Image # 6.) Contrary to Getty Images assertion, Morel 56.1 establishes beyond any genuine issue of material fact that Getty Images did not play only an automated and passive role in distributing Morels Iconic Images: its passive role was in failing to remove the Suero images after the take down notice and inter alia in notifying customers and subscribers after the kill notice use of Morels Haiti earthquake images. These actions constituted willful infringement as well as secondary liability for copyright infringement. Getty Images claims that the holding of Cartoon Network LP v. CSC Holdings, Inc. (Cablevision), 536 F.3d 121, 131 (2d Cir. 2008) protects it from direct liability for copyright infringement. In Cablevision, the Second Circuit held that unauthorized reproductions of data, such as digital movie files, in computer buffers are not infringing copies because they are not fixed for a period of more than transitory duration. 24
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Plaintiffs alleged that reproducing their entire works in the buffers created infringing copies, that Cablevision was directly liable for the complete copies made on its hard drives, and that Cablevision violated the copyright holders exclusive right to publicly perform their works when Cablevision retransmitted their works to more than one customer. Plaintiffs alleged theories only of direct infringement, not secondary liability. On cross-motions for summary judgment, the district courts ruling granted Cablevisions motion for summary judgments. On appeal, the Second Circuit considered a line of cases beginning with Religious Technology Center v. Netcom On-Line Communication Services, 907 F. Supp. 1361 (N.D. Cal. 1995), holding that absent some volitional act by the owner of the system, a party cannot be held directly liable for copyright infringement based on its passive ownership of an electronic facility which, responding automatically to users input, creates infringing copies. The Second Circuit declined to limit the requirement of a volitional act only to internet cases. The Court compared the RS-DVR with a traditional VCR and found, for the purpose of the volition analysis, that the two technologies are not sufficiently distinguishable: whether the consumer is pushing the record button on an RS-DVR or a VCR, that person is directing an otherwise automatic copying process. The parties in Cablevision did not contest that a company that merely makes photocopiers available to the public on the premises, without more is not subject to liabilities for direct reproductions made by customers using those copiers. The dispute between the parties was whether Cablevision fit within that example. The Court stated that because volitional conduct is an important element of direct liability . . ., a significant difference exists between making a request to a human employee who then volitionally operates the copying system to make a copy and issuing a command to the system.
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The Second Circuit opined that we are not inclined to say that Cablevision rather than the user does the copying produced by the RS-DVR. As a result, we find that the district court erred in concluding that Cablevision rather than its RS-DVR customers makes the copies carried out by the RS-DVR system. P. 26. Getty Images qualifies as neither the equivalent of a VCR, TIVO or RS-DVR. 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 marketing force to distribute and promote its web content. The undisputed evidence shows that Getty Images utilized volitional conduct in infringing Morels exclusive rights, inter alia, reproduction, display, copying. As Chris Eisenberg, Director of Content Management, testified, the AFP images were directed through the feed to Gettys equipment to TEAMS. ( 97) Getty Images reformats, organizes, indexes, displays, reproduces, and licenses any infringing material provided by its partners (not users) as part of its image-licensing business and human intervention was possible at each step. The Images which are marked publish are published to the Getty Images website for download by Getty Images subscribers, Easy Access clients, premium clients and la carte customers. ( 97) Getty Images employees set pricing and licensing terms for the images provided to it by AFP. Getty Images in TEAMS resided in TEAMS unless pulled and then resided in the archive of TEAMS. ( s 107-108) Its software guided viewers to images including the Haiti Earthquake Images that may interest them and licenses, distributes and transmits the images provided by its partners to its customers and subscribers.
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There is no evidence to create a genuine dispute that Getty Images infringing activity meets the level of volition required under the Second Circuit case of Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121, 130-31 (2d Cir. 2008). Getty Images activities in the marketing, sale, distribution, syndication and licensing of Morels Iconic Images changed its status from being a passive provider of a space in which infringing activities happen to occur to active participants in the process of copyright infringement. Arista Records LLC v. Usenet.com, Inc., 633 F. Supp 2d 124, 148 (S.D.N.Y. 2009). Getty Imagess volitional conduct infringed Morels 17 U.S.C. 106(3) right by the unauthorized distribution, license and sale of the Iconic Images. See Island Software & Computer Services, Inc. v. Microsoft Corp., 413 F.3d 257, (2d Cir. 2005). See, e.g., Salton, Inc. v. Philips Domestic Appliances and Personal Care, 391 F.3d 871, 878 (7th Cir.). Getty employee David Wojtozak, a supervisor on the Getty copyright compliance team in the case of Getty Images v. Advernet, 797 F. Supp 2d 399, 408 (S.D.N.Y. 2011), testifying at a Rule 52 hearing, stated that the shopping cart on Getty Images website is the web interface where our clients go to transact to search for our content, to license our content and to complete the actual license transaction. After the buyer pays for its shopping cart, the majority of the time the buyer is led to a download page and [can] download a digital file and the buyer is also granted rights per the terms of the transaction . . . typically, the shopping cart is created on some level either manually or via automation. Angela Foglesong, Marketing Director for the charity Soles4Souls, provides in her Declaration unrebutted evidence of two examples of Getty Imagess volitional conduct. First, a customer service representative assisted Fogelson in pricing and determining whether the use was editorial or commercial. It was commercial. Second, the Preview Order and Final Order
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show the name of the photographer as AFP. In an email, June 17, 2010, Catherine Calhoun, Senior Sales Director, Getty Images, instructs the sales team that certain images were not identified in their CRM because the field for photographer was left blank by AFP. Getty Images to publish to TEAMS manually filled in the field for the photographer as AFP. (Foglesong Decl.). It is undisputed that Getty Images distributed to subscribers, la carte customers, easy access customers, subscribers and premium customers for a fee, approximately 820 copies of Morels eight (8) Iconic Images, to charities, newspapers, media companies, websites, TV, magazines and governmental bodies, many of whom further sublicensed the Iconic Images. Morels Iconic Images were licensed for both editorial and commercial use; notwithstanding the limitation Editorial use, no sales in the caption provided by AFP. (See also s 232-233) Getty Imagess volitional display of the Iconic Images on its website for licensing infringed not only Morels 17 U.S.C. ' 106(3) right, it also infringed his right to display the Iconic Images publicly under 17 U.S.C. ' 106(5). The Court in Perfect 10N Google, 508 F.3d 1146 (9th Cir. 2000), provided the background information: Computer owners can provide information stored on their computers to other users connected to the Internet through a medium called a webpage. A web page consists of text interspersed with instructions written in Hypertext Markup Language (HTML) that is stored on a computer. No images are stored on a web page; rather the HTML instructions on the web page provide an address for where the images are stored, whether in the webpage publishers computer or some other computer. In general, web pages such as Getty Images are publicly available and can be accessed by computers connected to the Internet through the use of a web browser. A telephone number (800 462-4397) is provided to assist customers.
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6.
The Washington Post is Liable for Direct Copyright Infringement
The Washington Post is similarly liable both jointly and severally with Getty Images for direct copyright infringement, and individually liable for copyright infringement. Exhibit 2 introduced at the deposition of Catherine Calhoun, Senior Director Media Sales, Getty Images, shows that on January 12, 2010 the washingtonpost.com downloaded nine assets of Morels Iconic Images and one asset for the Washington Post Express. The downloading of these Iconic Images was volitional (the names of the individuals downloading the Iconic Images have been redacted by Getty Images), and constitutes the making of an unauthorized copy in violation of Morels 17 U.S.C. ' 106(1) right. The Washington Posts use of the Iconic Images consisted, inter alia, of posting them in an online gallery. In March 2010, when Morels screen shots were made, the Iconic Images (3) appeared near the end of the photo gallery. However, the images of the Haiti Earthquake appear chronologically with the last images first. It is a reasonable inference from the record that on January 13th, 2010, the Iconic Images were some of only a handful of images available to the Washington Post through its various wire services and appeared prominently in its photo gallery. It is a reasonable inference that all eight (one was a duplicate), images were prominently displayed in the photo gallery on January 13, 2010 or January 14, 2010, when the Washington Post photojournalists were not yet in Haiti. The Washington Post also made available Iconic Image 7 to other organizations in late January. An Iconic Image also appeared on the front page of the Washington Post free metro handout on January 14, 2010. As early as January 13, 2010, Corbis had informed AFP of the Washington Posts infringement of the Haiti Earthquake Images licensed from their partner Getty Images, and that Corbis had exclusive rights to Morels images.
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In June 2010, as part of the CRM, if not in April, Getty Images contacted the Washington Post. The Washington Post confirmed to Getty Images that the three Iconic Images had been removed from its website. That was not true. Despite again being notified in September or October 2010, the images remained on its website. Not until the Washington Post was informed by Morels lawyer that it would be added as a party in June, 2011, did the Washington Post remove the three images from its website. II. THERE IS NO GENUINE ISSUE OF FACT THAT AFPS ACTIONS AND GETTY IMAGESS ACTIONS ARE WILLFUL UNDER 17 U.S.C. 504(c)(2) Once an act of infringement under the Copyright Act has been proven, a plaintiff may, in lieu of an award of actual damages and profits, request that statutory damages under 17 U.S.C. 504(c) be awarded. If a plaintiff so elects, the district court will grant anywhere between $750 and $30,000 for each copyright infringed. See 17 U.S.C. 504(c)(1). If the defendants infringement was willful, however, the district court may also, in its discretion, enhance the statutory damages award to as much as $150,000 per infringed work. 17 U.S.C. 504(c)(2). 12 While knowledge as opposed to volition is not an element to establish direct liability for copyright infringement, knowledge is required to establish willful infringement. Even viewed in the light most favorable to the non-moving party, the record permits no other conclusion than that the actions of AFP and Getty Images were willful. It is beyond peradventure that a reasonable jury could find based on the undisputed facts that AFPs and Getty Imagess actions were other than willful. To prove willfulness under the Copyright Act, the plaintiff must show (1) that the defendant was actually aware of the infringing activity, or (2) that the defendants actions were
12
Morel has not elected statutory damages and can make such election until entry of judgment. (17 U.S.C. ' 504 (c)(1))
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the result of reckless disregard for, or willful blindness to, the copyright holders rights. See In re Aimster Copyright Litigation, 334 F.3d 643, 650 (7th Cir. 2003). The Second Circuit has adopted a test for willfulness based on the actual or constructive knowledge of the defendant infringer, which includes reckless disregard for the possibility that the conduct is infringing. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 112 (2d Cir. 2001); GMA Accessories, Inc. v. Olivia Miller, Inc., 139 Fed. Appx. 301 (2d Cir. 2005); Island Software and Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir. 2005); Bryant v. Media Right Productions, Inc., 603 F.3d 135, 143 (2d Cir. 2010, cert. denied, 131 S. Ct. 656 (2010); Software Freedom Conservancy, Inc. v. Best Buy Co., Inc., 2010 WL 2985320, at *3 (S.D.N.Y. July 27, 2010). As the Second Circuit recently opined in Viacom Intl et al. v. YouTube, Inc. et al., No. 103270, slip op. (2d Cir. Apr. 5, 2012): The principle that willful blindness is tantamount to knowledge is hardly novel. Tiffany (NJ) Inc. v. Bay Inc., 600 F.3d 93, 100 (2d Cir. 2010) (collecting cases); see In re Aimster Copyright Litig., 334 F.3d 643, 650 (7th Cir. 2003) (Willful blindness is knowledge, in copyright law . . . as it is in the law generally. A person is willfully blind or engages in deliberate avoidance amounting to knowledge where the person was aware of a high probability of the fact in dispute and consciously avoided confirming that fact. United States v. AinaMarshall, 336 F.3d 167, 170 (2d Cir. 2003) (quoting United States v. Rodriguez, 983 F.2d 455, 458 (2d Cir. 1993)); cf. Global-Tech Appliances, Inc. v. SEB S.A., __ U.S. __, 131 S. CT. 2060, 2070-71 (2011) (applying the willful blindness doctrine in a patent infringement case). Based on this test, as documented in Morel 56.1, the uncontroverted conduct of AFP and Getty from the outset of AFPs theft of the images and in the days, weeks and even months following their initial wrongful use of Morels images demonstrates conclusively that they acted willfully and in complete disregard of Morels right to control and benefit from his own work. As Morel poignantly observed at his deposition, They stole my moment. Eva Hambach, AFPs deputy photo editor for North America, got it right, when in an email on January 14, 2010 31
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at 2:16 PM, she tells the AFP Photo Desk Editor Paris, US copyright law requires that the image be pulled and remove, a sentiment she confirms in an email on March 16, 2010, to AFPs Photo Desk Editor in Washington, when she observed, AFP got caught with a hand in the cookie jar and will have to pay. If AFP claims it did not know Morel was the author and copyright owner of the Iconic Images, a reasonable juror could not conclude based on the evidence that AFP did not know that the Haiti earthquake images were Morels. AFP then stored and displayed the Iconic Images in ImageForum with the ImageForum logo, transmitted them over its feeds, and distributed and licensed them to customers knowing that they did not have Morels authorization. There is no dispute that at the time AFP issued a caption change on January 13, 2010 at 5:24 AM, AFP knew that Morel was the author of the Iconic Images and that Morel had not given his approval to license, syndicate and distribute the Iconic Images as required by AFP guidelines for the use of photographs from social media sites. Notwithstanding, AFP did not issue a kill notice. Instead, AFP issued a caption change. The old asset numbers for Lisandro Suero remained in ImageForum, on TEAMS and in the Getty Image website database. Although AFP claims there were only eight Iconic Images, a June 22, 2010 chart indicates that AFP provided a total number of 39 asset numbers for the eight images with different photographer credits in the caption. This activity is a factor to be considered in determining willfulness, as is the blank field for the name of the photographer. On January 14, 2010, Eva Hambach, Deputy to the Photo Director for North America at AFP, recognized that US copyright law requires that the image[s] be pulled and removed. When AFP issued the mandatory kill notice, however, it did so only for images credited to Daniel Morel, knowing that separately-numbered identical images credited to Lisandro Suero
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were still extant in the system and fully available to AFP subscribers and customers, and that other Iconic Images would be credited to AFP. The Second Circuit has recognized that a plaintiff can also prove willfulness by proffering circumstantial evidence that gives rise to an inference of willful conduct. See, e.g., Knitwares, Inc. v. Lollytogo Ltd., 71 F.3d 996, 1010 (2d Cir. 1995). AFPs failure to follow its own written guidelines to verify Morels authorship and legal propriety of the use of the Iconic Images, to obtain Morels permission for their use of the Iconic Images, its failure to adhere to the customary ethical principles which govern the journalism community are probative on the issue of willfulness. Getty is similarly culpable for willful copyright infringement. Although Getty Images was aware that the images had been illegally copied, Getty Images was willfully blind to the fact that the identical images in TEAMS, might be credited to the thief. There were less than a handful of photographers distributing images of the earthquake, January 12, 2010, and the following morning: moreover, Getty Images was aware that AFP had issued a caption correction, changing the name of the photographer to Daniel Morel. Getty Images was willfully blind in not checking to see whom the image had been credited originally, given that Getty Images knew that it had been illegally copied. Getty Images had the technological capacity to respond effectively to the take down by searching for Haiti earthquake images from January 12 and 13, 2010 with its search functionality. As Chris Eisenberg, Getty Images, Director of Editorial Content stated, Getty Images had the capacity to do a search via geographic region, subject matter, and date. This fact was also confirmed by Bernasconi. Thus, on January 13, 2010 Getty Images could have deleted images credited to Lisandro Suero, as well as the Morel Haiti Earthquake Images. Getty Images
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could also have telephoned Amalvy to inquire about the name of the previous photographer wrongfully credited as the author of the Iconic Images. That it took no action and continued to distribute, syndicate and license the Iconic Images leaves no reasonable doubt that their actions were willful and in derogation of Morels copyright. that Morel was the author of the Haiti Earthquake Images on January 12, 2010. ( ) Notwithstanding the take down, Getty continued to display, license and sell Haiti Earthquake Images in reckless disregard of Morels rights. 13 Further, there is no genuine dispute that Getty had actual knowledge that its users, clients and customers had downloaded Iconic Images, and continued to use, display, store and transmit infringing copies of Morels images after receiving the AFP caption change on January 13th and Corbis take down on January 13th, informing Getty Images that Corbis had the exclusive rights to Morel images. Knowledge can often be proved through circumstantial evidence and the reasonable inferences drawn therefrom. United States v. Macpherson, 424 F.3d 183, 189 (2d Cir. 2005). Getty Imagess lack of concern, with the implementation of the AFP credit change and AFPs kill notice, whether due to AFPs duty to indemnify Getty Images or otherwise, is another factor that is probative in assessing whether Getty Images is individually liable to Morel for willful copyright infringement. See Encyclopedia Brown Production Ltd. v. HBO, Inc., 25 F. Supp 2d 395, 404 (S.D.N.Y. 1998); Lipton v. Nature Co., [**27] 71 F.3d 464, 472 (2d Cir. 1995); N.A.S. Import Corp. v. Chenson Enter., Inc., 968 F.2d 250, 252 (2d Cir. 1992). Willful infringement is further confirmed by both AFPs and Getty Imagess failure to use the search tools available to them to search out the Iconic Images on the notice from Corbis and the failure to use search tools to clear the unauthorized images from the web are further
13
Calhoun Ex. 1 and Ex. 2 is a Getty spreadsheet indicating invoice date, licensee, image description and usages for more than 800 licensees.
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factors from which one can draw an inference of willfulness. Gilles Tarot, AFPs director of marketing, indicated that he contacted no more than seven customers of AFP/Getty to inform them of their unauthorized uses of Morels images and then only in November 2010. As for the Washington Posts willfulness, the undisputed documentary evidence indicates that the Washington Post received analog and e-mail communication from the Hoffman Law Firm in the form of three cease and desist letters with attachments of images from March to June 2010 (Decl. Hilary Gish). Further, at conferences in September 2010 before Judge W. H. Pauley III and in October 2010 before the Magistrate Judge M. Dolinger, Getty Images received actual notice of the continued infringements from Morels lawyer. Catherine Calhoun testified that the Washington Post is an important Getty Imagess client, and its photo editors talk frequently with Getty Images sales team members. The award of the Pulitzer prize, by a Committee chaired by Bernasconi, to three Washington Post photographers for breaking news, one of whom is married to Michel du Cille, who allegedly supervised the take down, does create a genuine issue of fact as to the Washington Posts motive in leaving images falsely credited to Lisandro Suero or David Morel on its website, if the evidence is not sufficient for the Court to grant Morel summary judgment on his motion with respect to the Washington Posts willfulness. Morel Decl. There is no genuine dispute based on admissible evidence that the actions of AFP, Getty Images and the Washington Post were willful for purposes of 17 U.S.C. 504(c)(2). Thus, Morel is entitled to summary judgment.
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III.
SUMMARY JUDGMENT SHOULD BE GRANTED TO MOREL ON AFP AND GETTY IMAGES SECONDARY LIABILITY A. Contributory Infringement
A defendant may be held liable for contributory copyright infringement if, with knowledge of the infringing activity, it materially contributes to the infringing conduct of another. Matthew Bender & Co., Inc. v. West Pub. Co., 15 F.3d 693, 706 (2d Cir. 1998) (quoting Gershwin Pub. Corp. v. Columbia Artist Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)). Unlike an inducement claim, a claim for contributory infringement does not require a showing that the defendant intended to foster infringement. See Grokster, 545 U.S. at 942 (Ginsburg, J., concurring) (noting that an inducement claim and a contributory infringement claim capture different culpable behavior). Rather, to establish a material contribution claim, a plaintiff must show that the defendant (1) had actual or constructive knowledge of the infringing activity, and (2) encouraged or assisted others infringement, or provided machinery or goods that facilitated infringement. See Faulkner v. Natl Geographic Socy, 211 F. Supp. 2d 450, 473-74 (S.D.N.Y. 2002), affd at 409 F.3d 26 (2d Cir. 2005). The undisputed evidence shows that AFP was aware that Getty Images and its customers, subscribers and licensees were infringing Morels 17 U.S.C. ' 106 rights and materially contributed to that infringing activity by failing to notify subscribers, clients, and customers of the infringing uses, failing to issue take down notices to their clients, customers and subscribers and by permitting their clients subscribers and customers to display and distribute derivative works which included the infringing images. (Withheld doc #13)
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B.
Vicarious Infringement
A party is liable for vicarious infringement if it had a right and ability to supervise that coalesced with an obvious and direct financial interest in the exploitation of copyrighted materials. Softel, Inc. v. Dragon Med. Sci. Commens, Inc., 118 F.3d 955, 971 (2d Cir. 1997). A defendant can be vicariously liable for copyright infringement. See Sony Corp. v. Universal City Studios, 464 U.S. 417, 435, 104 S. Ct. 774, 78 L. Ed. 2d 574 (1984) (finding vicarious liability to apply to copyright law because it is imposed in virtually all areas of the law, despite the Copyright Acts failure to explicitly authorize it). To establish vicarious liability for copyright infringement, plaintiff must prove that AFP and Getty Images received a financial benefit from the direct infringement and had the right and ability to stop or limit the infringement but failed to do so. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930, 125 S. Ct. 2764, 162 L. Ed. 2d 781 (2005); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1173 (9th Cir. 2007); Nimmer, supra, 12.04[2] (2009) (defendant must have the right an ability to supervise the infringing conduct and secondly, the defendant must have an obvious and direct financial interest in the exploitation of copyrighted materials.) AFP and Getty Images derived financial gain from the unauthorized uses of Morels images from subscribers licensing and syndication to subscribers, customers and clients. AFP and Getty also benefitted from front page coverage for three days, crediting AFP or AFP/Getty Images as the source and licensing agent for the Morels breaking news images. The use of copyrighted images to help draw customers can constitute a financial benefit. See Perfect 10, Inc. v. Google, Inc., 416 F. Supp 2d 828, 857 (C.D. Cal. 2006) (holding that even absent revenue, future hope of financial benefit constitutes a direct financial interest ) revd on other ground,
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Perfect 10, Inc., supra, 508 F.3d at 1175 n. 15 (Having so concluded, we need not reach Perfect 10s argument that Google received a direct financial benefit.). AFP and Getty Images each had the right and ability to stop or limit the copyright infringement and failed to do so. Getty Images EULA paragraph 11 provides in pertinent part for termination of the license on threat of copyright infringement claims. The record permits no other inference than that AFP and Getty Images have substantially participated in the infringement of their customers, subscribers and clients by failing to provide clear notice of the infringing activity, acting with efficiency to stop it and acting in reckless disregard of Morels rights. Even when Getty Images was informed of the theft of Morels images and Corbis exclusive representation, it failed to act. That AFP and Getty Images have a financial interest activity based on their financial relationship with each other and from licensing fees received from clients, is also not subject to genuine dispute. The undisputed evidence indicates that Getty Images and AFP are secondarily liable. C. Under 17 U.S.C. ' 504(C)(1) Morel is Entitled to Recover from a Secondarily Liable Defendant, Multiple Awards Per Work Based on the Number of Direct Infringements
Morel moves that he should be able to recover from a secondarily liable defendant multiple awards per work based on the number of direct infringers. While Judge K. Woods addressed this issue in the context of thousands of downstream users, and potential damage awards in the billions against LimeWire, in Arista Records LLC v. Lime Group LLC et al., No. 06-cv-5936 (KMW (S.D.N.Y. March 10, 2011), the Second Circuit has not ruled on the issue (but see Columbia Pictures Television v. Krypton Broad of Birmingham, Inc., 106 F.3d 284 (9th Cir. 1997) and 4 Nimmer on Copyright . 14.04[E][2][d] (2002)).
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IV.
COUNTERCLAIM PLAINTIFF IS ENTITLED TO SUMMARY JUDGMENT ON HIS DMCA CLAIMS UNDER 17 U.S.C. ' 1202(a) AND 17 U.S.C. ' 1202(b) Morel does business as Photomorel and uses this designation as a means of source
identification of his photography. Certain of his Haiti Earthquake Images were licensed to Corbis on January 13, 2010. There is no genuine dispute that AFP and Getty Images removed Mr. Morels name, Photomorel and Twitpic when they reproduced, distributed and displayed the Iconic Images or distributed the Iconic Images knowing that the CMI had been removed, in violation of the DMCA 17 U.S.C. 1202 and distributed false copyright management information by designating Lisandro Suero or AFP as the photographer and AFP/Getty as the authorized distributor and licensing agent. A. Falsification of Copyright Management Information
The DMCA prohibits knowingly providing or distributing false copyright management information (CMI) with the intent to induce, enable, facilitate or conceal infringement. 17 U.S.C. 1202(a). The DMCA defines CMI as any of the following information conveyed in connection with copies or phonorecords of a work or performances or displays of a work, including in digital form: (1) The title and other information identifying the work, including the information set forth on a notice of copyright. (2) The name of, and other identifying information about, the author of a work. (3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright 17 U.S.C. 1202(c). AFP labeled Morels photos with the credit lines AFP/Getty/Daniel Morel and AFP/Getty/Lisandro Suero and AFP/AFP/Getty. AFP and Getty Images did not and cannot contest that those credit lines constitute CMI. Moreover, the undisputed evidence in the record is that AFP knew the CMI was false and intended to facilitate infringement. See Ward v. Natl 39
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Geographic Soc., 208 F. Supp. 2d 429, 449 (S.D.N.Y. 2002) (the two prerequisites for a 1202(a) violation are know[ledge] [that] the copyright management information is false and intent to induce, enable, facilitate or conceal an infringement of any right under title 17). It is undisputed that AFPs photo editor viewed Morels photos either before or after asking about identical photos on Sueros Twitpic page, and that when Morel failed to respond to the editors email, AFP downloaded the images either from Morels Twitpic page or Sueros. AFP has failed to provide the download information. AFP had no reason to believe Suero, in the Dominican Republic with a Dominican cell phone number was the author of the Iconic Images and failed to use due diligence or follow its own guidelines for using images from social networks by AFPs own admission. Even after AFP issued a wire to change the photographer credit from Suero to Morel and the kill notice and even though Getty Images was aware that Corbis was the exclusive licensing representative for Morel. Getty Images continued to license photos crediting Suero or AFP as the photographer and indicate AFP as the copyright owner. Getty sought to obtain credit for the photographs even Getty Images was aware of Morels reputation, was aware that Suero had posted images in Twitter, that Morel was not an AFP stringer and had received notice from Corbis that it was the exclusive licensing agent for the Iconic Images. AFPs designation of Morel as an AFP stringer under the terms of its License Agreement with Getty Images, was a false representation to its partner Getty Images that the Iconic Images were wholly owned by AFP. Finally, as to intent and knowledge of infringement, the undisputed evidence that AFP representatives contacted him at least four times about his photos, copied them without his permission, and distributed them with altered CMI. The undisputed evidence also shows that in
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disregard of the credit change instruction, Getty continued to display and distribute photos crediting Suero or AFP as photographer or Daniel Morel as stringer for AFP whose photographs were authorized for license by Getty. This false or altered CMI was intended to inform AFPs and Getty Imagess clients and subscribers that they had the exclusive right to represent and license Morels Iconic Images. Getty Images had actual knowledge that Corbis was the exclusive agent for the Morels Iconic Images, yet continued to induce others to believe that they had the right to license these images and provide legitimacy to the unauthorized use of the Iconic Images by media companies like ABC, CBS and CNN who had taken the images from Twitpic. As the CNN example illustrates, Getty Imagess false CMI lead CNN to license only three of the Iconic Images from Corbis on the afternoon of January 13, 1020, since they had obtained the best ones from Getty Images. B. Removal of Copyright Management Information
The DMCA prohibits intentionally removing or altering CMI, or distributing CMI knowing it has been removed or altered, knowing, or having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title. 17 U.S.C. 1202(b). It is undisputed that there were no copyright notices or other information on the images posted on Morels Twitpic page and pirated to Sueros Twitpic page. Rather, Morels Twitpic page included the attributions Morel and by photomorel next to the images. Further, his Twitter page featuring a link to his Twitpic account contained the names Daniel Morel and photomorel. (See Fathers Dep. Ex. 2; Winecoff Dep. Ex. 3.). Judge William Pauley in the Decision rejected the idea that CMI must be removed from the photograph itself to state a claim for removal or alternation of CMI as information conveyed in connection with copies of a work it does not require the CMI to appear on the work itself. 41
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17 U.S.C. 1202(c). It is implausible that a viewer of Morels photos would not understand the designations Morel and by photomorel appearing next to the images or on the Twitpic page, refer to authorship. The undisputed evidence indicates that the placement of CMI referred to the photograph in close enough proximity to the image to show Morels intent to direct the media to his Twitpic page and advertise he had photographs to sell or license. In his Decision, Judge William H. Pauley finds that the notations Morel, Daniel Morel, and photomorel fall within the scope of CMI under the plain language of the statute as do such terms as AFP/Getty or AFP C. 17 U.S.C. ' 1203 Entitles Morel to an Award of Statutory Damages of up to $25,000.00 for each Violation of ' 1202
Unlike the election of statutory damages under ' 504 which limits an award of statutory damages to the number of works infringed rather than the number of infringements, ' 1202 authorizes an award of up to $25,000.00 for each violation of ' 1202. ' 1203 applies to both ' 1201 and ' 1202 . For example in Blizzard Entertainment, Inc. v. Alyson Reeves d/b/a Scapegaming, No. 09-7621, slip op. (C.D. Cal. Aug, 10, 2010), the United States District Court awarded nearly 89 million dollars in damages. As Judge Wilson explained in Blizzard v. Scapegaming, this was precisely Congress intent in passing the DMCA. To the extent that this figure appears unreasonably large, Congress has mandated this approach and the Court is unable to deviate from it. See also Tracfone Wireless, Inc. v. ANADISK, LLC, 685 F. Supp. 2d 1304, (S.D. Florida, 2010). V. MOREL IS ENTITLED TO SUMMARY JUDGMENT DISMISSING AFPS DEFENSE OF STANDING Section 501(b) of the 1976 Copyright Act establishes that only the owner or beneficial owner of an exclusive right under a copyright law is entitled, or has standing, to sue for infringement. Silvers v. Sony Pictures Entmt, Inc., 402 F.3d 881, 884 (9th Cir. 2005); 17 U.S.C. 42
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501(b). Although exclusive rights may be transferred and owned separately, 106 of the Act defines and limits those exclusive rights under copyright law. Silvers, 402 F.3d at 884-85; 17 U.S.C. 106. Accordingly, the assignment of a bare right to sue is ineffectual because it is not one of the exclusive rights. Silvers, 402 F.3d at 884-85. Moreover, transfer solely of the right to sue does not confer standing on the assignee because the right to sue is not one of the exclusive rights. Id. at 890. One can only obtain a right to sue on a copyright if the party also obtains one of the exclusive rights in the copyright. See Righthaven LLC v. Ganner Alley, 2012 U.S. Dist. LEXIS 26917 at 2. AFP has asserted, at the 11th hour, an affirmative defense based on Morels lack of standing. AFPs claim is based on an interpretation of the Image Representation Agreement (Corbis Agreement). Morels Third Amended Answer accurately alleged that he was proceeding with Corbis consent. See also COR 2184 (let him and Babs handle this themselves 2/24/2010). Morel was a contributor to Corbis. Corbis is a photography agency in the business of licensing art images and news photographs and direct competitor of Getty Images. Pursuant to the Image Representation Agreement entered into between Morel and Corbis in 2004, Corbis acted as Morels worldwide exclusive licensing agent for images he submitted to Corbis, and in exchange, was paid a royalty of 50% based on the fees charged for licensing the photos. On January 13, Morel sent photos, taken on January 13th, to Corbis, which posted them for licensing that afternoon. Emails indicate that Corbis, without Morels approval, had downloaded the Iconic Images from Twitpic before he deleted them and put them up on its website for sale. The Image Representation Agreement provides in pertinent part: You shall retain ownership of the copyright in your Accepted Images in all forms, including digital and analog. Nothing in this Agreement or our Copyright 43
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Registration program shall grant Corbis ownership in the copyright for your image or permit Corbis to exploit any rights in your Accepted Image that are not permitted in this Agreement. (Bates Nos. 000206-7) 7. Protection of accepted Images. Corbis, in its sole discretion and without obligation to do so, shall have full and complete authority to make and settle claims or to institute proceedings in Corbis or your name but at Corbis expense to recover damages . . . and for the unauthorized use of Accepted Images. You shall provide reasonable assistance in Corbis efforts in connection with such claims or proceedings and notify Corbis of any infringements you become aware of during the term of this Agreement. . . . Following your notification, if Corbis declines to bring such a claim within sixty (60) days, we shall notify you, and you may bring actions in your own name at your own expense and retain all recoveries. (Bates Nos. 000208-9) A separate sheet on assignment provides you assign your copyright to Corbis only for the purpose of registering your image, you lose no rights in your images. Corbis will assign back to you the entire copyright in your image within a reasonable period of time following completion of the registration process and receipt of the copyright certificate. Corbis will also provide you with copies of all copyright certificates covering your images. This process will insure that you, the photographer, and Corbis acting as agent, have the full remedies for copyright infringement that the law allows. This process in no way jeopardizes your authorship in the copyrighted works and serves only to help process the copyright registration. The documents produced by Corbis indicate that following Corbiss corporate counsel Claire Keeleys initial Take Down Notice on January 13, 2010 to Getty Images, the legal department never gave the green light to editorial to aggressively proceed notwithstanding staff in Paris and New York who monitored and documented unauthorized uses resulting from AFPs stealing of Morels images. (COR 1726) Because of Corbiss lack of aggressive prosecution of this matter, Morel, with Corbis blessing, hired his own counsel. Morel was sued by AFP and Corbis entered no appearance or undertook any defense or even contacted Morels lawyer. It would be disingenuous to argue that
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Morels relationship with Corbis was positive. In fact, Morel terminated the Exclusive Image Representation Agreement in June, 2010, for cause. Whether Corbis can be considered an assignee of Morels exclusive rights to permit it to prosecute this action on Morels behalf is not an issue. A Court which considered the Agreement with understatement, noted it was not a model of legal drafting. While a copyright owner can assign its copyright, if the accrued causes of action are not expressly included in the assignment, the assignee will not be able to prosecute them. (See MELVILLE B. NIMMER DAVID NIMMER, NIMMER ON COPYRIGHT 10.03.) Corbis claimed that an assignment was required an requested the asset numbers; however, Corbis could not and did not produce any documentation acknowledging Morels assignment of any assets to Corbis, and e-mails indicated Corbis was aware of the Iconic Images stolen by AFP and Corbis Editorial was aware of the asset numbers and Morels counsel had provided the Iconic Images. Morels counsel wrote to Claire Keeley in February 2010, and expressed her belief that an assignment by Corbis of the right to sue was not necessary since Morel had never assigned the right to sue for these images. Interpretation of an agreement purporting to grant a copyright license is a matter of state contract law (Random House, Inc. v. Rosetta Books LLC, 150 F. Supp. 2d 613, 617-18 (S.D.N.Y. 2001)). AFP has failed to introduce any evidence that Morel granted an assignment in the exclusive rights in the eight Iconic Images including the right to bring a copyright action in connection with it. Psihoyos v. Pearson, 10 Civ. 59 12 (JPO 2010 U.S. Dist. LEXIS 27265 (S.D.N.Y. 2012) analyzes a contract with language similar to the Corbiss Image Representation Agreement.
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Plaintiffs also agreed to grant to Science Faction the exclusive right, at its expense, to determine in its sole and reasonable discretion, without obligation, if, and when, any legal action shall be pursued with regard to the [images]. (Id. 3.6.) The agreement further provided that if Science Faction declines to bring a claim within sixty (60) days, then the Plaintiff retains the right to bring an action in its own name, at its own expense. (Id.) The Court stated: Defendants argue that these provisions divested Plaintiffs of standing to bring infringement suits with regard to the images covered by this agreement. The Copyright Act permits only the legal or beneficial owner of an exclusive right under a copyright to bring suit for infringement of that copyright., 17 U.S.C. 501(b). Defendants argue that by granting Science Faction the exclusive right to bring an infringement action, Plaintiffs no longer have standing to bring this infringement action as either legal or beneficial owner. A court in this District recently addressed a similar issue in a case related to the instant action. In Wu v. Pearson Education, Inc., a class action alleging claims similar to those brought by Plaintiffs here, against some of the same defendants, the court noted that contract provisions purporting to give a third party the exclusive right to bring a copyright infringement action are likely unenforceable. No. 09 Civ. 6557, 2011 WL 4526078, at *7 (S.D.N.Y. Sept. 30, 2011). The court based this conclusion on the fact that [c]opyright holders may not grant third parties standing to sue under the Copyright Act, and further, may not grant exclusive right recognized by the Copyright Act in 17 U.S.C. 106. Id. (citing Silvers v. Sony Pictures Entmt, Inc., 402 F.3d 881, 884-85 (9th Cir. 2005)). Morels Image Representation Agreement is not to the contrary. It is also abundantly clear on the record that Corbis has been aware of this litigation, for well over sixty days. Thus, even if AFP could prove it is a third-party beneficiary and has standing to argue that the provisions of the license agreement could be enforced to grant the exclusive right to bring an infringement action to Corbis, that period of exclusivity has long since lapsed. In sum, there is no genuine dispute of material fact that Morel has standing to sue AFP and Getty Images for the alleged infringements at issue, and thus summary judgment should be granted to Morel as to this issue. 46
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AFP cannot prove that Morels Exclusive Image Representation Agreement was intended for AFPs benefit. Madeira v. Affordable Hous. Found., Inc., 469 F.3d 219, 251 (2d Cir. 2006). VI. MOREL IS ENTITLED TO SUMMARY JUDGMENT DISMISSING AFPS DEFENSE OF LICENSE Notwithstanding that Morel benefited from the legal standard on a motion to dismiss, AFP still bears the burden to prove its affirmative defense of license and to the extent it relies on its alleged status as a third-party beneficiary, Morels interpretation of the contract must be construed in his favor, against the drafters, Twitter. No new facts have been adduced during discovery to warrant a different conclusion than set forth in Judge Pauleys Dkt. # 52. Judge Pauley held that both the Twitter terms of service and Twitpic terms of service applied: Judge Pauley focused on the paragraph stating: You agree that this license includes the right for Twitter to make such content available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such Content on other media and services. Judge Pauley held this term required Twitter users to sublicense only to Twitter and its partners. In other words, although Twitter users were free to share and display Morels photos on that site, once a user attempted to distribute those photos via a sublicense, the sublicensee had to be a Twitter partner. Similarly, the Court noted that Twitpics terms of service grant a license to use photographs only to Twitpic.com or its affiliated sites. Judge Pauley concluded that AFP and the third-party defendants did not qualify as permitted sublicensees because they were neither Twitter partners nor affiliates of Twitpic. Thus they were not authorized to re-use [Morels] copyrighted postings. Judge Pauleys exchange with Mr. Kaufman, AFPs counsel in the argument on AFPs motion to dismiss is relevant, and should determine as it did on the motion to dismiss, that AFP had neither an express license from Morel nor was a third-party beneficiary of Morels 47
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Twitter/Twitpic agreement so as to provide it an affirmative defense to its unauthorized use of Morels images: THE COURT: Isnt your best argument that it is ambiguous? What do the Twitpics terms say? MR. KAUFMAN: They dont discuss this at all. They are not contradictory. They have -- they talk about language, but they dont talk about third-party uses. It is silent as to that. They just dont refer to it. There is no contradictory language. They talk about you own your copyrights and other kinds of things like that, but they dont discuss the reuse aspect of it. And, again, as we pointed out in our footnotes, your Honor, this is not a unique interpretation of AFP for the purposes of this motion. Again, the court is allowed to take judicial notice of whats out there. People are re-twitting and re-Twitpicing pictures by the hundreds of thousands a day. This isnt just something that, all of a sudden, out of the blue, we are coming up with. This is a regular, constant occurrence that tens of thousands of people, hundreds of thousands of times a day are also interpreting it the same way, for better or for worse, but they are. THE COURT: Is that somebody else on Twitter like Suero? MR. KAUFMAN: Suero, yeah. THE COURT: Right? Suero, a thief, right? MR. KAUFMAN: Suero took -THE COURT: Thats your argument? MR. KAUFMAN: No, other people are allowed to -THE COURT: So the multitude is doing it; therefore, it is okay. MR. KAUFMAN: No, no. THE COURT: It was Bertrand Russell who said you shouldnt follow the multitude into evil. Remember that? MR. KAUFMAN: Unfortunately, I dont read enough of Bertrand Russell. THE COURT: He was one of the greatest philosophers of the 20th century. MR. KAUFMAN: I know who was, but -- I certainly know who Bertrand Russell was. THE COURT: It is worth the read. MR. KAUFMAN: Yes, your Honor. VII. SUMMARY JUDGMENT SHOULD BE AWARDED TO MOREL ON GETTY IMAGESS SECTION 512(C) SAFE HARBOR DEFENSE Congress sought to strike a balance among these competing concerns in Section 512(c) of the DMCA by providing Internet service providers with greater certainty . . . concerning their legal exposure for infringements that may occur in the course of their activities while at the same time preserving strong incentives for service providers and copyright owners to cooperate 48
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to detect and deal with copyright infringements. H.R. Rep. No. 105-551(II), at 49-50 (1998). Congress accomplished this objective by crafting a safe harbor for innocent service providers that disappears at the moment the service provider loses its innocence. ALS Scan, Inc. v.. RemarQ Communities, Inc., 239 F.3d 619, 625 (4th Cir. 2001). Section 512(c) excludes a provider of storage services from the safe harbor if it obtains either actual knowledge that the material or an activity using the material on the system or network is infringing or in the absence of such actual knowledge . . . aware[ness] of facts or circumstances from which infringing activity is apparent and then, in either case, fails to act[ ] expeditiously to remove, or disable access to, the material. 17 U.S.C. ' 512(c)(1)(A). A. Protection is only Available to Entities that Meet the Definition of Service Provider See U.S.C. 512(K)(1)
Although eBay has been considered within the DMCA protections, the notion is that it protects website operators that allow users to post content to their site. AFP is not a user, but a financial and content partner of Getty Images. B. The Undisputed Evidence Shows that Getty Images Meets None of the Requirements for the Protection of the Safe Harbor
In order to claim the protection of the safe harbor of Section 512(c) of the DMCA, a service provider must meet, as relevant here, each of three requirements: (1) the service provider must promptly remove or disable access to infringing material upon obtaining actual knowledge of infringement or awareness of facts or circumstances making such infringement apparent; (2) the service provider must not receive a financial benefit directly attributable to the infringing activity, if the service provider has the right and ability to control such activity; and (3) the service providers involvement in the infringement must be limited to storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service
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provider. The record creates no disputed facts that Getty Images fails to satisfy any of these requirements, much less all of them. The Second Circuits opinion in Viacom Intl, Inc. v. YouTube Inc., No. 10-3270 cr (Ed Cir. Apr. 5, 2012) has clarified the contours of the DMCA for website operators that do allow users to post content on their site. Based on the Viacom, Morel is entitled to summary judgment on the DMCA claim. The Second Circuit focused on these areas: (1) willful blindness (2) right and ability to control and (3) the scope of reason by storage. 1. Willful Blindness
The Second Circuit ruled that the common law doctrine of willful blindness applied to the DMCA. The undisputed facts and the inferences thereupon would not permit a reasonable jury to conclude that Getty Images lacked specific knowledge of the eight Iconic Images licensed for sale on its website. 2. Second a Service provider is only Immune from Liability when it Does Not Receive a Financial Benefit Directly Attributable to the Infringing Activity
The Court held that knowledge of infringing items on its site was sufficient to constitute the right and ability to control such activity. That is true for Getty Images. There is no genuine issue that Getty Images received a direct financial benefit from the license and sale of Morels Haiti earthquake images. 3. Reason by Storage
The Court then considered whether four of YouTubes software functions occur by reason of the storage at the direction of a user of copyrighted material, within the meaning of 512(c)(1). The Court found that three of those functions were clearly covered: converting (or transcoding) videos into a standard display format, playback of videos on watch pages, and the related videos function, which identifies and displays thumbnails images of clips that are 50
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related to the user-selected video.
A fourth software function was a closer case, the Court said.
Beginning in 2007, YouTube licensed videos to wireless companies like Verizon Wireless for streaming on mobile devices. The Court suggested that this activity could fall outside the 512(c) safe harbor. Getty Images licensing activities clearly do subject to the Copyright Law. The DMCA did not eliminate the liability of service providers. See e.g., Perfect 0, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146, 1174 (C.D. Cal. 2002) (clarifying that safe harbors do not affect the question of ultimate liability under the various doctrines of direct, vicarious and contributory liability.) (citing H.R. REP. No. 105-551 (II), at 50). Although Congress intended to protect service providers when they engaged in certain core conduct that Congress viewed as crucial to the functioning of the internet, but that could give rise to unpredicatable liability the DMCA was neither adopted nor intended to encourage service providers to exploit the existence of the safe harbors by designing businesses based on an ability to avoid liability. See, e.g., ALS Scan, Inc. v. RemarQ Cmty., Inc. 239 F.3d 619, 625 (4th Cir. 2001).
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CONCLUSION Morels motion for summary judgment on liability, questions of law and dismissal of Counterclaim Defendants Affirmative Defenses should be granted. Dated: April 27, 2012 New York, New York Respectfully submitted, THE HOFFMAN LAW FIRM
By:
/s/ Barbara T. Hoffman (BH 8931) 330 West 72nd Street New York, New York 10023 Tel. (212) 873-6200 Fax (212) 974-7245 Attorney for Defendant-Counterclaim Plaintiff Daniel Morel
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Agence France Presse v. Morel, 10 Civ. 2730 (S.D.N.Y. May 27, 2012) (Morel's SJ Motion)

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Agence France Presse v. Morel, 10 Civ. 2730 (S.D.N.Y. May 27, 2012) (Morel's SJ Motion)

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