342 F. Supp. 3d 515
S.D. Ill.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; he later obtained a group copyright registration covering published photographs.
- GameSpot (CBS Interactive) published two articles in Sept. 2016: a Holland Article reproducing a photograph Tom Holland had posted on Instagram (one of Ferdman’s photos), and a Gallery Article that displayed numerous on-set images (seven of which were Ferdman’s) sourced from a Twitter feed believed to circulate studio publicity shots.
- Ferdman sued for copyright infringement and willful infringement; the parties filed cross-motions for partial summary judgment on infringement, willfulness, fair use, and affirmative defenses (failure to state a claim, license).
- During discovery Ferdman did not produce the actual image files submitted to the Copyright Office; late at summary judgment he submitted copies purporting to be the deposited images, but the Court excluded those as discovery-supplementation and found a genuine dispute whether the asserted works were included in the registration.
- The Court denied Ferdman’s summary judgment motion on infringement (because he failed to establish the registered works linkage), granted plaintiff summary judgment rejecting GameSpot’s fair-use defense as to the Gallery Photographs, denied summary judgment on fair use for the Holland Photograph, granted GameSpot summary judgment that infringement was not willful, and found GameSpot had abandoned license and failure-to-state defenses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Ferdman proved infringement via valid registration covering the photos | Ferdman relied on the group registration certificate as prima facie proof of ownership and submitted images at summary judgment | GameSpot argued Ferdman never produced the actual deposit copies during discovery and the file identifiers don’t match the registration, creating a factual dispute | Denied for Ferdman: Court excluded late-submitted deposit images and found a triable issue whether the particular photos were included in the registration, so summary judgment on infringement was denied |
| Whether GameSpot’s uses are fair use (Gallery Photographs) | Use was news reporting and minimal; contended fair use applies broadly to news contexts | GameSpot argued the gallery republished the photos for the same purpose as the originals and was transformative/newsworthy | Granted to Plaintiff: Court held Gallery Photographs use was not transformative and commercial republishing that simply presents the images is not fair use as a matter of law |
| Whether GameSpot’s use of the Holland Photograph is fair use | Ferdman: not transformative, commercial, omitted credit, weighs against fair use | GameSpot: Holland Photograph was transformative because the actor posted it on Instagram and the article reported/commented on that posting | Denied (cross-motions): first factor neutral — arguably transformative but disputed; material facts remain, so fair use cannot be decided as a matter of law for the Holland Photograph |
| Whether Ferdman proved willful infringement (enhanced statutory damages) | Ferdman pointed to allegedly unauthorized reproductions and lack of credit to argue bad faith/willfulness | GameSpot showed it sourced images from Instagram and a Twitter feed believed to contain studio publicity shots and that it lacked notice of Ferdman's rights | Granted to Defendant: no evidence of actual knowledge, reckless disregard, or willful blindness; summary judgment for GameSpot that infringement was not willful |
| Whether GameSpot’s affirmative defenses (failure to state, license) stand | Ferdman moved to dismiss those defenses | GameSpot did not meaningfully oppose on summary judgment | Granted to Ferdman: Court treated defenses as abandoned and granted plaintiff summary judgment rejecting them |
Key Cases Cited
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (elements of copyright infringement: ownership of valid copyright and copying of original elements)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (1994) (fair use factors and importance of transformative use)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (newsworthiness alone does not automatically permit fair use; market/publication considerations)
- Fox News Network, LLC v. Tveyes, Inc., 883 F.3d 169 (2d Cir. 2018) (discussing transformative use and fair use analysis)
- Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (fair use factor treatment and transformativeness)
- NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir. 2004) (commerciality and analysis of fair use in news contexts)
- Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) (discussion of transformativeness and market effect)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (market harm and relevant markets for copyrighted images)
- Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (presumption of market harm for commercial uses and potential harm analysis)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (focus on whether secondary use usurps the market for the original)
- Design Strategy, Inc. v. Davis, 469 F.3d 284 (2d Cir. 2006) (factors for discovery sanctions/preclusion)
- Patterson v. Balsamico, 440 F.3d 104 (2d Cir. 2006) (application of preclusion factors at trial)