REBECCA FAY WALSH, Plаintiff, against - TOWNSQUARE MEDIA, INC., Defendant.
19-CV-4958 (VSB)
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK
June 1, 2020
VERNON S. BRODERICK, United States District Judge
USDC SDNY DOCUMENT ELECTRONICALLY FILED DATE FILED: 6/1/2020
Appearances:
Liebowitz Law Firm, PLLC
Valley Stream, New York
Counsel for Plaintiff
Rachel F. Strom
James E. Doherty
Davis Wright Tremaine LLP
New York, New York
Counsel for Defendant
VERNON S. BRODERICK, United States District Judge:
Plaintiff Rebecca Fay Walsh brings this action against Townsquare Media, Inc., asserting a claim of copyright infringement in connection with Defendant‘s unlicensed publication in an online article (the “Article“) of a copyrighted photograph (the “Photograph“) taken by Plaintiff. Before me is Defendant‘s motion for judgment on the pleadings. Because Defendant‘s publication of the Photograph constituted fair use, Defendant‘s motion for judgment on the pleadings is GRANTED.
Plaintiff is a Brooklyn-based professional photographer who licenses her photographs to online and print media for a fee. (Am. Compl. ¶ 5.)2 Defendant is a Delaware-incorpоrated business that owns and operates an online website called XXL Mag (“XXL“), located at the URL www.XXLMag.com. (Id. ¶¶ 6–7.)
On September 5, 2018, Plaintiff photographed rapper and celebrity Cardi B at a Tom Ford Fashion show in New York City. (Id. ¶ 10.) At around the time of the fashion show, she captured numerous photographs of Cardi B, and then made them available for license through Getty Images, a stock photography agency. (Id. ¶ 15; id. Ex. C). Among those photographs is the one at issue in this action, reproduced below in resized but uncropped form:
On September 10, 2018, Townsquare ran an article on XXL Mag entitled CardiB Partners with Tom Ford for New Lipstick Shade, available at the URL https://www.xxlmag.com/news/2018/09/cardi-b-tom-ford-lipstick-shade-named-after-her/. (Id. ¶ 13.) The text of the Article read as follows:
Cardi B is having a busy 2018 New York Fashion Week. After allegedly getting into a fight with Nicki Minaj, the Invasion of Privacy rapper is now getting her own shade of lipstick from Tom Ford.
The Tom Ford Beauty brand broke the news on Sunday (Sept. 9), posting an image of the bold blue shade and Cardi‘s name on Instagram. “Meet Cardi. #TFBOYSANDGIRLS #TFLIP #TOMFORDBEAUTY,” the caption of the post reads.
Cardi also celebrated the news on IG3, re-posting the Tom Ford post and adding, “Thank you so much @tomford and @tomfordbeatuy!!! So excited for this and what‘s to come.”
Just the latest shade in Tom Ford‘s Lips & Boys collection, the new Cardi shade follows the brand‘s trend of naming lipsticks after other celebrities such as Julianne [Moore], Dakota [Johnson] and Naomi [Campbell]. There‘s no word yet when the lipstick inspired by Cardi will be released.
As expected, the decision to name a lipstick after Cardi following the New York Fashion Week incident has led to a heated debate on the original Instagram post. While some fans were excited about the upcoming product, other‘s felt that Cardi doesn‘t deserve to have a lipstick named after her.
But Cardi doesn‘t seemed to bothered by that. In another Instagram post, the rapper claimed the upcoming lipstick has already sold out, adding, “Sorry :/.....”
In footage from the fight, the “Be Careful” rapper can be seen throwing a shoe in the direction of someone, although it‘s hard to make out if it‘s actually Minaj. Cardi can also be heard yelling at someone for talking about her daughter, Kulture. “Write some shit about my daughter again,” Cardi says. While it was reported that Bardi‘s fight was with the Queen artist, Cardi reportedly ended up fighting former Love & Hip Hop: New York star Rah Ali.
Check out the Tom Ford Instagram post below.
(Ans. Ex. C (alterations and errors in original).) Beneath the last sentence of the article, XXL Mag embedded the three Instagram posts that were described in the Article.4 (Id. ¶ 13; Ans. ¶ 13.) Plaintiff does not allege that the Post was embedded, alleging only that Defendant “expropriated” the Photograph and “displayed” it in the Article. (Am. Compl. ¶¶ 13, 15.) However, Defendant asserts that the Post was “embedded” (Ans. ¶ 13), and Plaintiff does not dispute this allegation. Moreover, in the current version of the Article, the two Instagrаm posts that remain displayed link directly to Instagram when clicked on, indicating they have been embedded. See Article, https://www.xxlmag.com/news/2018/09/cardi-b-tom-ford-lipstick-shade-named-after-her/ (last visited April 2, 2020). The first post, by account “tomfordbeauty,” announced the lipstick collaboration. (Strom Decl. Ex. C, at 3.)5 The second post, from Cardi
B‘s account, reproduced the post by tomfordbeauty in a screenshot, and thanked Tom Ford and tomfordbeauty. (Id. at 4.) The third post (the “Post“), from Cardi B, was a composite image that consisted of an image of the Tom Ford lipstick on the left, the Photograph on the right, and a header reading “Cardi B‘s Tom Ford Lipstick has already SOLD OUT!!!” (Id. at 5.) Above the composite image was Cardi B‘s username, her follower count, and a link entitled “View Profile.” (Id.) Below the composite image was a link entitled “View More on Instagram,” the number of “likes,” and Cardi B‘s caption for the post: “Sorry :/ ...” (Id. at 5.) Below the caption was a link entitled “view all [] comments” and below that, a link entitled “Add a comment . . . .” (Id.)
The Post appeared as follows:
II. Procedural History
Plaintiff commenced this action by filing a complaint on May 28, 2019. (Doc. 1.) The complaint was administratively rejected by the Clerk‘s Office, and Plaintiff refiled the complaint on May 29, 2019. (Doc. 4.) Defendant filed its answer on June 26, 2019. (Doc. 10.) Plaintiff filed an Amended Complaint on July 17, 2019. (Doc. 11.) Defendant filed its Answer to the Amended Complaint on July 31, 2019. (Doc. 12.)
On August 9, 2019, Defendant filed a motion for judgment on the pleadings, (Doc. 14), with a memorandum of law, declaration, and exhibits in support, (Docs. 15–16). Plaintiff filed her memorandum of law in opposition on September 6, 2019. (Doc. 19.) Defendant filed its reply on September 24, 2019. (Doc. 21.)
III. Legal Standard
v. M.C. Floor Crafters, Inc., 842 F.2d 639, 642 (2d Cir. 1988) (noting that judgment on the pleadings “is appropriate where material facts are undisputed and where a judgment on the merits is possible merely by considering the contents of the pleadings“).
On a
IV. Discussion
A. Applicable Law
The Copyright Act grants a copyright owner the exclusive rights to authorize the reproduction, distribution, and preparation of derivatives of the owner‘s work.
the purpose and character of the use, (2) the nature of the work, (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use upon the potential market for or value of copyrighted work. Id. (quoting Blanch, 467 F.3d at 250). The Copyright Act also provides examples of purposes for copying that would constitute fair use: criticism, comment, news reporting, teaching, scholarship, and research.
Fair use is an affirmative defense, and so a defendant accused of copyright infringement bears the burden of showing that its use of a work was fair. Authors Guild v. Google, Inc., 804 F.3d 202, 213 (2d Cir. 2015). The determination of fair use is typically a “mixed question of fact and law.” Swatch, 756 F.3d at 81. However, it may be adjudicated on a
B. Application
Plaintiff asserts that Defendant infringed on her copyright by reproducing the Photograph on its website without licensing it. (Am. Compl. ¶¶ 19–24.) Defendant does not dispute, for purposes of this motion, that it reproduced the Photograph,6 but contends that its use of the Photograph was fair. (Def.‘s Mem. 8.)7 To assess whether Defendant‘s reproduction of the Photograph was a fair use, I consider each of the four factors in turn.
1. The Purpose and Character of the Use
The first statutory factor—“[t]he heart of the fair use inquiry” in this Circuit—calls on the court to examine “the purpose and character of the use,” including whether the use “is of a commercial nature or is for nonprofit educational purposes.” On Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d Cir. 2001), as amended (May 15, 2001); see also Blanch, 467 F.3d at 251. The focus of this factor is whether the use “merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is transformative.” Campbell, 510 U.S. at 579 (citation and internal quotation marks omitted). “[A] transformative use is one that communicates something new and different from the original or expands its utility, thus serving copyright‘s overall objective of contributing to public knowledge.” Authors Guild, 804 F.3d at 214. “[T]he critical inquiry is whether the new work uses the copyrighted material itself for a purpose, or imbues it with a character, different
from that for which it was created.” TCA Television Corp. v. McCollum, 839 F.3d 168, 180 (2d Cir. 2016).
While the Copyright Act suggests that use of a copyrighted work for news reporting purposes is likely to constitute fair use, “a news reporting purpose by no means guarantees a finding of fair use.” Swatch, 756 F.3d at 85. “After all, ‘[t]he promise of copyright would be an empty one if it could be avoided merely by dubbing the infringement a fair use “news report.“‘” Id. (quoting Harper & Row, 471 U.S. at 557). Thus, courts have held that it is not fair to “use [] an image solely to
21, 2017). Similarly, a depiction of a controversial photograph might fairly accompany a work of commentary or criticism about the artistic merit or appropriateness of the photograph. See, e.g., Nunez v. Caribbean Int‘l News Corp., 235 F.3d 18, 25 (1st Cir. 2000).9 Id. Courts have also found fair use in cases in which a website published a screenshot of an article from another publication that contained a copyrighted photograph, alongside criticism of the article. Yang, 405 F. Supp. 3d at 544 (deciding a motion to dismiss); Clark, 2019 WL 1448448, at *4 (same).
Applying these principles and drawing all inferences in Plaintiff‘s favor, this factor favors Defendant because the Article uses the Photograph for an entirely different purpose than originally intended. The Photograph was taken to “depict Cardi B at Tom Ford‘s fashion show.” (Pl.‘s Opp. 13.)10 See also Barcroft, 297 F. Supp. 3d 339, 352 (S.D.N.Y. 2017) (“Paparazzi photographs . . . are designed to document the comings and goings of celebrities, illustrate their fashion and lifestyle choices, and accompany gossip and news articles about their lives.“). However, as is apparent on the face of the Article, Defendant did not publish the Photograph simply to present its content. It did not use the Photograph as a generic imаge of Cardi B
(S.D.N.Y. 2018).11 Rather, Defendant published the Post, which incidentally contained the Photograph, because the Post—or, put differently, the fact that Cardi B had disseminated the Post—was the very thing the Article was reporting on.12
The Article begins by juxtaposing the news of the lipstick collaboration with rumors that Cardi B had recently gotten into a fight with Nicki Minaj, another rapper. It goes on to describe the social media posts by Tom Ford and Cardi B introducing the collaboration, and the ensuing “heated debate” among fans about that announcement, in light of the rumors about the fight. Then the Article presents Cardi B‘s reaction to that “heated debate“: her Instagram post reporting that the lipstick has sold out, with the caption: “Sorry:/ ...” Finally, the Article reports additional facts about the rumored fight, then embeds the relevant Instagram posts, one of which happens to include the Photograph because the original poster—Cardi B—included it. The Article does not mention the Photograph, nor does the Photograph in and of itself pertain to anything reported on in the Article. Thus, Defendant‘s inclusion of the Photograph as part of the Post was not simply to “present the content of that image“—Cardi B, or perhaps Cardi B at the
Tom Ford fashion show, i.e. the purpose the Photograph was created for13—Gossip Cop Media, Inc., 196 F. Supp. 3d at 407. Rather, Cardi B‘s making and dissеmination of the Post, not the image that was posted, was “itself the subject of the story.” Barcroft, 297 F. Supp. 3d at 352. In other words, Defendant published the Post in order to provide readers with the original social media interactions reported on by the Article,14 and
Judge Paul G. Gardephe‘s analysis in Ferdman v. CBS Interactive Inc., 342 F. Supp. 3d 515, 534 (S.D.N.Y. 2018) is instructive, although the facts did not mirror the facts here, making the decision distinguishable. In Ferdman, the defendant published an article that stated that “images and videos from the set [of Spider-Man: Homecoming] have steadily emerged. The newest shot comes from [the Instagram of] Spider-Man actor Tom Holland himself.” Id. at 523. The article then described that image, which had been posted to Holland‘s Instagram, repeated Holland‘s accompanying caption, and inserted the photograph—not the Instagram post itself—below the article. See id. Judge Gardephe observed that, as in Nunez, the photograph “was the story,” but ultimаtely denied defendant‘s motion for summary judgment because (1) there were no visual differences between the copyrighted photograph and the photograph included in the article, and (2) the statement at the beginning of the article that “images and videos have steadily emerged” suggested that the photograph might merely have been used to “announce its existence,” which would not be transformative. Id. at 534–37. Judge Gardephe held that these issues might cause reasonable jurors to disagree about whether the use was transformative and so the issue could not be resolved as a matter of law. Id. at 537.
Here, as in Ferdman, the Post “was the story.” Id. at 534. But unlike in Ferdman, Defendant embedded the entire Instagram Post, still bearing the rest of thе elements of the image that Cardi B had posted—the
standalone image, but as part of the Screenshot‘s composite image that showed the manner in which the Post Article‘s headline, author byline, and the Photogrаph were arranged on the Post‘s website.“) In addition, unlike the article in Ferdman, Defendant‘s Article does not even mention the Photograph itself, much less report on it specifically; its focus is on the launch of the Tom Ford lipstick, the ensuing social media controversy, and Cardi B‘s Post. These distinctions foreclose a reasonable juror from finding Defendant‘s use not transformative.
The fact that the Article did not include any commentary or criticism about the Post, unlike the uses in Yang and Clark, does not undermine this conclusion. While “[c]ourts often find [news reporting] uses transformative by emphasizing the altered purpose or context of the work, as evidenced by surrounding commentary or criticism,” cоmmentary or criticism is not required to render a use transformative where “the two works ha[ve] different messages and purposes.” Swatch, 756 F.3d at 84 (finding that news service‘s publication of audio recording of plaintiff‘s earnings call was fair use even though news service “provided no additional commentary or analysis,” because the sound recording provided additional data not available in the transcript, and defendant‘s “purpose . . . was to publish this factual information to an audience from which [plaintiff‘s] purpose was to withhold it.“)
Nor does the perhaps trivial nature of the Article weigh against Defendant. (See Def.‘s Opp. 11.) While “[t]he ultimate test of fair use . . . is whether the copyright law‘s goal of ‘promoting the Progress of Science and useful Arts,’ [
admittedly on the tawdry side of the news ledger does not make it any less of a fair use.“); Ferdman, 342 F. Supp. 3d at 535 (declining to evaluate the newsworthiness of the copyrighted photograph).
Finally, Plaintiff argues that Defendant is “a for-profit publisher” that “disseminates commercial news content on its website” including advertisements, “evincing Defendant‘s intent to exploit Plaintiff‘s work.” (Pl.‘s Opp. 14.) The commercial nature of a use may indeed counsel against a finding of fair use. See Swatch, 756 F.3d at 83; Harper & Row, 471 U.S. at 562 (“The fact that a publication was commercial as opposed to nonprofit is a separate factor that tends to weigh against a finding of fair use.“) However, the Second Circuit has recognized that “almost all newspapers, books and magazines are published by commercial enterprises that seek a profit.” Swatch, 756 F.3d at 83. The Supreme Court has acknowledged that tension and “stated that ‘[t]he crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user
Accordingly, I find that the first factor strongly favors fair use.
2. The Nature of the Work
The second statutory factor looks at the nature of the copyrighted work and its expressive content. See
Here, the Photograph contains “both informational and creative elements“: it was taken to “document [its] subject,” a celebrity, but also displays some “technical skill and aesthetic judgment.” BWP Media USA, 196 F. Supp. 3d at 408; see also Barcroft, 297 F. Supp. 3d at 354 (“Although photography, including photography of a celebrity walking around in public, certainly involves skill and is not devoid of expressive merit, the [paparazzi] Images are further from the core of copyright protections than creative or fictional works would be.“) This “render[s] the degree of creativity a relatively neutral consideration.” BWP Media USA, 196 F. Supp. 3d at 408. However, the Photograph was previously published by Cardi B on her Instagram; thus, pairing the neutrality of the images “with the fact of previous publication, the nature of the images tips slightly in Defendant‘s favor.” Id.
Therefore, the second factor weighs in favor of fair use.
3. The Portion of the Work Used
The third statutory factor is “the amount and substantiality of the portion used in relation to the copyrighted work as a whole.”
As a quantitative matter, the Post included an uncropped, though resized, version of the Photograph. As a qualitative matter, however, although Plaintiff complains
Therefore, the third factor weighs in favor of fair use.
4. The Potential Market for or Value of the Work
The fourth factor evaluates the effect of the use on the market for or the value of the original work. See
Thus, the fourth factor also weighs in favor of fair use.
5. Overall Assessment
The four non-exclusive statutory factors discussed above are tо be weighed together, along with any other relevant considerations, in light of the goals of copyright laws. See Authors
Guild, 804 F.3d at 225. Drawing all reasonable inferences in Plaintiff‘s favor, I have found that on the face of the Amended Complaint, the four factors weigh in favor of Defendant:
“Defendant‘s use was transformative, its use was reasonable in light of that end, the work was already published, and there is no plausible risk to any market for licensing of the original work.” Yang, 405 F. Supp. 3d at 548. This is sufficient to establish an affirmative defense of fair use on a motion for judgment on the pleadings, and I conclude that Defendant‘s use of the Photograph was fair as a matter of law. See id.
V. Conclusion
For the foregoing reasons, Defеndant‘s motion is GRANTED and this action is dismissed with prejudice. The Clerk of Court is directed to terminate the motion
SO ORDERED.
Dated: June 1, 2020
New York, New York
Vernon S. Broderick
United States District Judge