Agence France Presse v. Morel
769 F. Supp. 2d 295
S.D.N.Y.2011Background
- AFP seeks declaratory judgment that it did not infringe Morel's copyrights in Morel's Haiti earthquake photographs.
- Morel alleges copyright, DMCA, and Lanham Act violations against AFP and Getty, with third-party claims against CBS, CNN, ABC, TBS, and others.
- Morel uploaded photos to Twitpic and linked Twitter, with credit lines eventually labeled AFP/Getty/Suero; no initial copyright notices on images.
- AFP/ Getty licensed photos to various outlets; Getty credited Suero or AFP rather than Morel, despite Morel’s claim of ownership.
- AFP allegedly failed to issue a kill or correct credits after notice, and continued licenses to third parties, causing licensing disputes and damages.
- Plaintiffs seek to dismiss counterclaims and third-party claims under Rule 12(b)(6); court grants in part and denies in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| License defense viability | AFP/TBS lack a license to use Morel's photos as Twitter/Twitpic terms do not extend to AFP/TBS. | Twitter/Twitpic terms purportedly create a license permitting use by partners; AFP/TBS should be protected as licensees or beneficiaries. | Court finds no license established; Twitpic/Twitter terms do not clearly grant rights to AFP/TBS. |
| Third-party beneficiary status | Twitter terms necessarily require granting rights to Morel via third-party beneficiaries. | No clear intent in Twitter/Twitpic contracts to confer benefits on Morel as a third party. | AFP/TBS not shown to be intended third-party beneficiaries. |
| Contributory & vicarious infringement | AFP knowingly contributed by licensing and distributing infringing images. | No primary infringement due to lack of license; vicarious liability dependent on direct financial interest. | Contributory infringement adequately pled; vicarious liability lacking sufficient facts at this stage. |
| DMCA falsification of CMI | CMI lines 'AFP/Getty/Daniel Morel' and 'AFP/Getty/Lisandro Suero' are false CMI intended to facilitate infringement. | Notations may be identifying information; CMI relief requires more precise interpretation under IQ Group. | Notations fall within CMI; allegations of knowledge/intent survive dismissal. |
| DMCA removal of CMI | AFP removed/altered CMI or distributed CMI knowing it was removed, facilitating infringement. | Notions of CMI placement are ambiguous; placement/location is factual, not constitutional to resolve on 12(b)(6). | Court rejects narrow reading; removal/alteration claims survive for now; CMI defined broadly. |
| Lanham Act false designation of origin | AFP/Getty misrepresented authorship/origin to license and distribute Morel's photos. | Dastar bars authorship misrepresentation claims under Lanham Act for copyright works. | Lanham Act claims dismissed as duplicative of copyright remedies under Dastar. |
Key Cases Cited
- Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir. 2001) (ownership and infringement require both elements; license defense available)
- Tasini v. N.Y. Times Co., Inc., 206 F.3d 161 (2d Cir. 2000) (license defense as defense to infringement)
- Jasper v. Sony Music Entm't, Inc., 378 F.Supp.2d 334 (S.D.N.Y. 2005) (licenseor burden on defendant to show license exists)
- U.S. Naval Inst. v. Charter Commc'ns, Inc., 936 F.2d 692 (2d Cir. 1991) (copyright licensing relations framework)
- Spinks v. Equity Res. Briarwood Apartments, 90 Cal.Rptr.3d 468 (Cal. Ct. App. 2009) (intent necessary to confer benefits to third-party beneficiary)
- Principal Mut. Life Ins. Co. v. Vars, 65 Cal.App.4th 1469 (Cal. Ct. App. 1998) (third-party beneficiary law in contracts)
- Antidote Int'l Films, Inc. v. Bloomsbury Publ'g, PLC, 467 F. Supp. 2d 394 (S.D.N.Y. 2006) (Lanham Act false attribution and Dastar considerations)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (U.S. 2003) (Lanham Act cannot circumvent copyright; origin is the product, not author)
- BanxCorp v. Costco Wholesale Corp., 723 F. Supp. 2d 596 (S.D.N.Y. 2010) (statutory definition of CMI; interpretive guidance)
- Assoc. Press v. All Headline News Corp., 608 F. Supp. 2d 454 (S.D.N.Y. 2009) (courts reject IQ Group's narrow CMI reading; broad statutory definition)