524 F.Supp.3d 52
E.D.N.Y.2021Background
- Plaintiff Lee Golden III posted a July 2015 blog article about a possible Xena reboot and included Michael Grecco's 1998 promotional portrait of Lucy Lawless (the "Xena Photograph") found on Tumblr.
- Grecco holds a valid copyright (registered in 2010) and licenses his photos through Getty; discovery showed minimal licensing revenue for this photo (disputed figure ~$3.94).
- Grecco's counsel notified Golden in Feb. 2019; Golden promptly apologized and removed the post; Grecco later threatened litigation and offered a settlement, prompting Golden to sue for a declaratory judgment of noninfringement and assert fair use.
- Grecco counterclaimed for copyright infringement; Golden raised multiple affirmative defenses (15 total, many later abandoned).
- Court granted Grecco summary judgment on the infringement counterclaim, rejected Golden's fair use and other defenses, found Golden not an "innocent infringer," awarded $750 statutory damages (minimum non-innocent amount), and declined to award attorney's fees or costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Copyright infringement elements | Golden disputed liability via fair use and other defenses | Grecco: owns valid copyright and photo was copied in full | Court: ownership and copying established; liability unless affirmative defenses succeed |
| Fair use (purpose/transformative) | Golden: used photo to comment on reboot news — transformative/news reporting | Grecco: image used merely as illustrative/promotional photo, not transformed | Court: use not transformative; first factor favors Grecco |
| Fair use (other statutory factors) | Golden: little or no market harm because photo rarely licensed recently | Grecco: allowing unlicensed use would harm licensing market generally | Court: photo is core-protected portrait; whole image used; market-harm concerns favor Grecco — overall fair use fails |
| Innocent infringer / statutory damages | Golden: believed Tumblr post was free/promotional; requests $200 statutory minimum for innocent infringement | Grecco: Golden cannot show objectively reasonable belief; requests $750 | Court: Golden not objectively reasonable; awards $750 statutory damages |
| Attorney's fees | Golden: removal and small damages argue against awarding fees | Grecco: seeks fees as prevailing party | Court: discretionary denial of fees — fees and costs denied (statutory damages sufficient) |
Key Cases Cited
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (sets elements for copyright infringement: ownership and originality)
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (transformative-use central to fair use analysis)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (scope of fair use and market-harm inquiry)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (fair use for historical/biographical works may be transformative)
- Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (photographs protected as original pictorial works)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (context-sensitive fair use inquiry and transformative analysis)
- Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) (resolving fair use at summary judgment when no material factual disputes)
- On Davis v. The Gap, Inc., 246 F.3d 152 (2d Cir. 2001) (de minimis doctrine and fair use principles)
- Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104 (2d Cir. 1998) (amount taken and market substitution concerns in fair use)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (attorney's fees in copyright cases are discretionary and guided by nonexclusive factors)