342 F.Supp.3d 515
S.D.N.Y.2018Background
- Steven Ferdman, a professional photographer, took 307 on‑set photographs of Spider‑Man: Homecoming in Sept. 2016 and uploaded them to Rex by Shutterstock for licensing.
- GameSpot (CBS Interactive) published: (1) a "Holland Article" reproducing a photo Tom Holland posted to Instagram (one of Ferdman’s photos); and (2) a "Gallery Article" with multiple set images, seven of which were later identified as Ferdman’s.
- Ferdman obtained a group copyright registration (VA 2‑022‑430) covering 307 published photographs; however, during discovery he did not produce the exact files submitted to the Copyright Office, and the image identifiers in his productions did not match those on the registration certificate.
- Court excluded Ferdman’s belated submission of registration deposit copies as discovery‑preclusion (sanction), leaving a genuine dispute whether the specific images used by GameSpot are covered by the registration.
- Cross‑motions for partial summary judgment addressed infringement, willfulness, fair use (Gallery and Holland photos), and defendant’s affirmative defenses (failure to state a claim; license). Trial was set for November 5, 2018.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Ferdman established ownership via the registration for the specific photos (infringement) | Registration certificate is prima facie evidence of valid copyright covering the works | Registration does not prove those particular photos were deposited; plaintiff failed to produce deposit copies in discovery | Denied for Ferdman: preclusion of belated deposit evidence creates a genuine issue whether the photos are included in the registration |
| Fair use for Gallery Article photos | Use was non‑transformative republishing; no fair use | Use was news reporting of released images (commercial) and thus fair use | Court: Gallery uses not transformative; fair use denied as a matter of law for gallery photos |
| Fair use for Holland Article photo (Tom Holland Instagram image) | Non‑transformative wholesale copy; commercial use weighs against fair use | Use is arguably transformative because the article reported Holland’s Instagram post and comment; news context supports fair use | Denied cross‑motions: material factual dispute remains whether Holland use was sufficiently transformative; fair use unresolved for jury |
| Willfulness (enhanced statutory damages) | Ferdman: willfulness should go to jury | GameSpot: no evidence of actual knowledge, reckless disregard, or willful blindness | Grant for defendant: no evidence of willfulness; summary judgment for GameSpot on willfulness (no enhanced damages) |
| Defendant’s affirmative defenses: failure to state claim and license | Ferdman moved to dismiss these defenses | GameSpot did not respond or produce evidence of license | Granted for Ferdman: defenses abandoned by GameSpot |
Key Cases Cited
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (copyright infringement requires valid copyright and copying)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (transformative use central to first fair use factor)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (commercial nature and newsworthiness in fair use analysis)
- Fox News Network, LLC v. Tveyes, Inc., 883 F.3d 169 (2d Cir.) (analysis of transformation and the fair use factors)
- BWP Media USA, Inc. v. Gossip Cop Media, Inc., 196 F. Supp. 3d 395 (S.D.N.Y.) (commercial republishing of images to illustrate stories not fair use)
- Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339 (S.D.N.Y.) (displaying paparazzi/celebrity images in same manner as original is not transformative)