In late November 2013, a jury awarded Daniel Morel $1.2M against Agence France Presse (AFP) and Getty Images for willfully infringing photos Morel took in Haiti on January 12, 2010, immediately after the earthquake that demolished the country. Morel, a noted photographer, swiftly contacted AFP and Getty regarding removing his photos from their websites after he found them posted there.
Morel, a professional photojournalist, took pictures of the immediate aftermath of the earthquake that ravaged Port au Prince, Haiti, on January 12, 2010. He posted tweets regarding his photos of the earthquake destruction on Twitter and uploaded the pictures on Twitpic, a third-party Twitter application, that afternoon. Morel linked his Twitter page to his Twitpic page. The photos did not include copyright notices, but Morel included the attributions “Morel” and “by photomorel” next to the photos on his Twitpic page. In addition, the Twitpic page included a copyright notice. Morel intended to break the earthquake news, preserve his copyrights and receive credit and compensation for licensing his photos.
Lisandro Suero, from the Dominican Republic, reposted Morel’s photos on Twitpic, offering to license the photos, without attributing the photos to Morel. Suero was not even in Haiti during the earthquake. A number of media outlets contacted Morel to license the photos. Agence France Presse (AFP) also contacted Morel asking about the photos, but then downloaded some of Morel’s photos from Suero’s Twitpic page.
AFP transmitted the photo images to Getty, an image licensing company. Getty owns the exclusive rights for marketing AFP’s images to North America and the United Kingdom. The images transmitted through AFP and Getty designated AFP and Getty as the licensing agents and Suero as the photographer, with no mention of Morel. Getty licensed Morel’s photos to a number of third-party news agencies, including some of the news agencies that previously contacted Morel about licensing the photos.
AFP issued a wire instruction changing the photographer to credit Morel from Suero on January 13, 2010. However, Getty continued to license the images without correcting the attribution, alternating photo credits among AFP, Suero and Morel. All of the images licensed by Getty identified AFP/Getty as the authorized source. Although Corbis, Inc., Morel’s exclusive licensing agent, sent cease and desist communications to both AFP and Getty, AFP and Getty continued to both license the photos to third parties and to incorrectly attribute authorship to Suero.
After AFP filed the declaratory judgment suit against Morel, Morel filed counterclaims against AFP for Copyright Act, Digital Millennium Copyright Act (DMCA), and Lanham Act (trademark) violations. Morel also filed similar third-party claims against Getty Images and others.
A. Morel’s direct copyright infringement, contributory infringement and DMCA violation claims survive Rule 12(b)(6) motions to dismiss for failure to state a claim upon which relief can be granted.
1. Not a license
AFP and Getty claimed they had a license to Morel’s photos through Twitter’s Terms of Service.
By their express language, Twitter’s terms grant a license to use content only to Twitter and its partners. Similarly, Twitpic’s terms grant a license to use photographs only to Twitpic.com or affiliated sites. AFP and TBS do not claim they are partners of Twitter or affiliates of Twitpic licensed under the terms of service. Moreover, the provision that Twitter encourages and permits broad re-use of Content does not clearly confer a right on other users to re-use copyrighted postings. Rather, that permissive language stands in contrast to the express, mandatory terms conferring a license and rights on Twitter. Although courts may find a license on a motion to dismiss where the terms of the governing contracts are clear, Twitter’s terms of service do not meet that standard. Accordingly, AFP and TBS do not meet their burden to establish that they had a license to use Morel’s photographs.
(Opinion 1 pdf pages 10 – 11).
The district court also ruled that AFP did not establish that it was a third-party beneficiary of the contract between Morel and Twitter.
2. Contributory infringement
AFP’s sole reason for moving to dismiss Morel’s contributory infringement claim is that there was no direct infringement. There can be no contributory infringement when there is no direct infringement. But the district court refused to dismiss the direct infringement claim, so therefore refused to dismiss the contributory infringement claim.
3. DMCA violations
One portion of the DMCA prohibits knowingly providing or distributing false copyright management information (CMI) with the intent to induce, enable, facilitate, or conceal infringement. 17 U.S.C. §1202(a).
Morel pled and provided facts indicating that both AFP and Getty continued to license the photos without correctly attributing Morel. That is sufficient to survive a motion to dismiss.
The district court refused to adopt AFP’s and Getty’s argument that CMI is limited to automated copyright protection mechanisms. The district court ruled that CMI measures attached by people and not by an automated process are still copyright management measures.
4. Morel’s Lanham Act claims dismissed on Rule 12(b)(6) motions for failure to state a claim.
The district court noted that the Lanham Act was not designed to protect originality or creativity.
Morel claimed false representation under 15 U.S.C. §1125(a)(1)(A).
Morel holds copyrights for his photographs, and his recourse for unauthorized copying, whether through a false claim of authorship or a false assertion of license, lies in copyright law, not in trademark.
(Opinion 1 pdf page 19).
Misrepresentations in commercial advertising or promotion about the nature, characteristics, qualities, or geographic origin of the goods, aka false advertising, is prohibited under §1125(a)(1)(B). A failure to attribute authorship to Morel did not amount to misrepresentation of the nature, characteristics, qualities, or geographic origin of the photographs licensed by AFP and Getty.
B. Morel’s motion for summary judgment that AFP and the Post are liable for copyright infringement regarding the photos is granted.
1. Direct Infringement
Did Morel grant AFP and Getty a license by posting to his Twitter account?
AFP argued that it was a third party beneficiary to the terms of service contract between Twitter and Morel. Under California law, which governs the Twitter Terms of Service, a clear intent to benefit a third party must appear in the contract terms.
It suffices to say that based on the evidence presented to the Court the Twitter TOS do not provide AFP with an excuse for its conduct in this case. Put differently, the evidence does not reflect a clear intent to grant AFP a license to remove the Photos-at-Issue from Twitter and license them to third parties, nor does it ‘necessarily require’ such a license. Indeed, this is the fatal flaw in AFP’s argument: it fails to recognize that even if some re-uses of content posted on Twitter may be permissible, this does not necessarily require a general license to use this content as AFP has.
(Opinion 2 pdf pages 19-20).
The district court ruled in Morel’s favor on this issue, holding AFP and the Post liable for direct copyright infringement.
Was Getty protected by the DMCA safe-harbor?
The DMCA provides a safe-harbor against copyright infringement claims arising “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider,” if certain conditions are met. 17 U.S.C. § 512(c)(1). A party seeking this DMCA safe harbor protection must qualify as a “service provider.”
The ordinary meanings of the word “service” do not include selling a product or licensing copyrighted work. The district court ruled that Getty is not a service provider under its definition.
Consistent with the ordinary meaning of ‘service provider’ discussed above, each of these safe harbors is generally directed toward protecting entities that ‘do something useful’ for others with respect to providing or facilitating access to materials online or the activities of internet users, such as providing search engines or connectivity to a website. In contrast, licensing copyrighted material online more closely resembles the mere sale of goods (albeit, in this case, intellectual property) than facilitating users’ activities online.
(Opinion 2 pdf page 28).
The evidence before the district court indicated that Getty did more than act as a file-hosting service to AFP and that it acted as a licensor for Morel’s photos. The district court ruled that there was an issue of fact as to whether Getty was a service provider under the DMCA.
The district court also ruled that factual issues remained regarding Getty’s intent and whether it received financial benefit from licensing Morel’s photos.
Did Getty’s lack of volitional conduct relieve it from liability?
Getty argued that it did not perform enough volitional, i.e., purposeful, acts to subject it to copyright liability. For example, the customer who bought the photos was the one who made the copy, not Getty. The district court did not accept Getty’s argument.
There is evidence in the record from which a jury could infer that Getty took affirmative acts to distribute the Photos-at-Issue, including entering a license agreement with AFP, actively licensing the Photos-at-Issue to charitable organizations, and setting a price for the Photos-at-Issue. Likewise, the record also contains evidence that Getty maintains the customer-facing website on which the Photos-at-Issue were displayed, had control over whether the Photos-at-Issue were displayed, and may have taken actions to allow the Photos-at-Issue to appear on its website. Although the scope of the actions Getty has taken is disputed, there is certainly sufficient evidence to create a genuine dispute as to whether, and to what extent, Getty took volitional acts that resulted in violations of Morel’s rights.
(Opinion 2 pdf page 33).
2. Willful Infringement
The statutory penalty for willfully infringing the owner’s copyright is up to $150,000 per work infringed.
To prove that infringement was “willful” under the Copyright Act, the plaintiff must show (1) that the defendant knew its conduct was infringing or (2) that the defendant’s actions were the result of reckless disregard or willful blindness to the prospect that its conduct was infringing.
(Opinion 2 pdf page 34).
Whether the defendant knew that she was infringing can be inferred from her conduct.
In evaluating the infringer’s state of mind, courts have looked to factors including whether the infringer was on notice that the copyrighted work was protected; whether the infringer had received warnings of the infringements; and whether the infringer had experience with previous copyright ownership, prior lawsuits regarding similar practices, or work in an industry where copyright is prevalent. Infringement is generally not willful if a party reasonably and in good faith believes that its conduct is innocent, despite warnings to the contrary. The burden of proving willfulness is on the copyright holder.
(Opinion 2 page 35).
The district court held that there were disputed issues of fact regarding whether AFP and/or Getty willfully infringed Morel’s works. The district court declined to grant any party summary judgment on this issue.
3. Contributory Infringement
Contributory infringement occurs when the actor has knowledge of the infringing activity and induces, causes or materially contributes to another’s the infringing conduct.
There is evidence from which a jury could conclude that AFP and Getty actively provided the Photos-at-Issue to downstream users who directly infringed Morel’s rights. Moreover, to the extent that downstream infringers used Getty’s server’s to accomplish the reproduction of the Photos-at-Issue, this also suggests participation.
(Opinion 2 pdf page 40).
The district court ruled that there were genuine issues of material fact regarding contributory infringement.
4. Vicarious Infringement
Vicarious infringement requires that the defendant profit from direct infringement by others, while failing to exercise a right to stop or limit the infringement. A right and ability to control the infringing activity and a direct financial interest arising out of the infringing activity are required. The plaintiff is not required to prove that the defendant knew a copyright was being infringed.
The district court determined that a jury could find that Getty vicariously infringed, but not that a jury would be compelled to so find. Morel’s motion for summary judgment on this issue was denied.
5. DMCA Copyright Management Information Claims
There remain issues of fact as to whether AFP knew that the CMI was false or altered, and whether it intended, knew, or had reasonable grounds to know that its actions would induce, enable, facilitate, or conceal an infringement. In particular, the same issues of fact discussed above with regard to whether AFP can be liable for willful infringement also preclude summary judgment here. AFP has presented evidence that it believed its conduct was licensed, and therefore the distribution of the photographs was noninfringing; Morel has provided evidence from which a jury could infer that AFP knew its conduct was infringing and, as relevant here, that adding ‘AFP’ to the caption would induce, enable, facilitate, or conceal its infringement and the infringements of its subscribers. Similarly, issues of fact remain as to whether Getty can be liable for violations of these provisions of the DMCA.
(Opinion 2 page 48).
The district court denied the cross-motions for summary judgment.
Statutory damages under the Copyright Act
The Court concludes that any awards of statutory damages against AFP or Getty may not be multiplied based on the number of infringers with whom AFP or Getty is jointly and severally liable. Rather, AFP and Getty are, at most, each liable for a single statutory damages award per work infringed.
(Opinion 2 pdf page 56).
The district court later concluded that Morel was entitled to receive one award of statutory damages per work infringed.
No reasonable fact-finder could determine that any infringement for which Getty is liable could be wholly independent from AFP’s infringement. Rather, as Counterclaim Defendants note, Getty’s course of conduct involves the distribution of the same photos, obtained from the same source, through the same medium. In addition, the Court has already determined that Morel’s contention that Getty received the photos from an alternate source was factually unsupported, and it will not revisit that discussion here. Although Getty’s post-kill notice actions may, indeed, speak to willfulness, there is nothing on the record from which a reasonable jury could conclude that the kill notice causally severed the course of infringement such that it could be characterized as two separate infringements, rather than merely a series of ongoing discrete infringements.
(Opinion 3 pdf pages 14-15).
Statutory damages under the DMCA
Under §1203(c)(3)(B), statutory damages for §1202 copyright management information violations “should be assessed per violation—i.e., based on AFP and Getty’s actions in uploading or distributing the Photos-at-Issue, regardless of the number of recipients of these images.” (Opinion 2 pdf page 57).
This case is Agence France Presse v. Morel, 10 Civ. 2730, U.S. District Court, Southern District of New York. Opinion 1, Amended Memorandum & Order on Rule 12(b)(6) motions. Opinion 2, Opinion granting summary judgment. Opinion 3, Memorandum and Order re entitlement to damages.