93 F. Supp. 3d 223
S.D.N.Y.2015Background
- Foster, a freelance photographer, photographed a model for Lashpia (doing business as JJ Eyelashes) in Nov–Dec 2012 under an oral agreement; parties did not sign a written contract.
- Lashpia used the photograph in marketing, including an Allure magazine ad (March 2013) and, according to Foster, on a Times Square billboard; Foster registered the copyright on May 9, 2013 and sued for infringement.
- Defendants pleaded only two affirmative defenses in their Answer: work-for-hire and joint authorship; they later raised an implied-license defense for the first time in a reply brief.
- Foster moved for summary judgment that the joint-authorship and work-for-hire defenses fail as a matter of law; defendants moved for partial summary judgment that Foster is not entitled to statutory damages/attorney’s fees based on an asserted earlier web publication date and that the individual defendants are not personally liable.
- The court found no triable issue on joint authorship or work-for-hire and granted summary judgment for Foster on liability against Lashpia, but denied summary judgment on the personal liability of Lee and Rodriguez (Lee disputed), and denied defendants’ motion on statutory damages/publication because a genuine factual dispute exists.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Joint authorship | No mutual intent and no independently copyrightable contributions by Lee/Rodriguez | Lee/Rodriguez present at shoot and participated in selection/collaboration | Rejected defendants’ defense; summary judgment for Foster — no joint authorship |
| Work-for-hire | Foster was an independent contractor; no facts support employee status | Photographer was "retained" and instructed whom to photograph | Rejected defendants’ defense; summary judgment for Foster — not a work-for-hire |
| Implied license / pleading forfeiture | License defense was not pleaded; defendants forfeited it and raising it late prejudices Foster | Defendants raised implied license in reply (late) | License defense forfeited; court declines to consider it without reopening discovery |
| First publication (statutory damages & fees) | Publication occurred Feb–Mar 2013; therefore eligible for statutory damages/fees | Photograph first published Dec 2012 on Lashpia website, barring statutory damages/fees under §412 | Genuine dispute of material fact exists (Wayback Machine evidence); summary judgment denied on this issue |
| Personal liability of individuals | Lee and Rodriguez may be liable if they had right/ability to supervise and direct financial interest | Defendants say no specific evidence tying individual acts to infringement | Court denied Foster’s summary judgment as to personal liability of both individuals; issue for jury as to Lee, record insufficient on Rodriguez |
Key Cases Cited
- Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991) (mutual intent required for joint authorship)
- Thomson v. Larson, 147 F.3d 195 (2d Cir. 1998) (joint authorship requires intent to be coauthors)
- SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301 (S.D.N.Y. 2000) (selection of subject matter alone does not create joint authorship or work-for-hire)
- Aymes v. Bonelli, 980 F.2d 857 (2d Cir. 1992) (multifactor test for employee vs. independent contractor under Reid)
- Community for Creative Non-Violence v. Reid, 490 U.S. 730 (U.S. 1989) (factors for determining employee status under the Copyright Act)
- Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304 (2d Cir. 1963) (imputing liability where right/ability to supervise combines with direct financial interest)
- Banff Ltd. v. Limited, Inc., 869 F. Supp. 1103 (S.D.N.Y. 1994) (discussing personal liability where supervision and financial interest are present)