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Agence France Presse v. Morel

United States District Court, S.D. New York

January 14, 2013

AGENCE FRANCE PRESSE, Plaintiff,
v.
DANIEL MOREL, Defendant
v.
GETTY IMAGES, INC., ET AL., Counterclaim Defendants

Page 548

[Copyrighted Material Omitted]

Page 549

For Agence France Presse, Plaintiff: Joshua J Kaufman, LEAD ATTORNEY, Venable LLP (NYC), New York, NY; Elissa Brockbank Reese, Meaghan Hemmings Kent, PRO HAC VICE, Venable LLP (DC), Washington, DC.

For Getty Images, Inc., Defendant, Counter Defendant, Counter Claimant: James Eric Rosenfeld, LEAD ATTORNEY, Davis Wright Tremaine LLP (NYC), New York, NY.

For Daniel Morel, Defendant, Counter Claimant, Counter Defendant: Barbara T. Hoffman, LEAD ATTORNEY, The Law Office of Barbara Hoffman, New York, NY; Jaime G. Touchstone, PRO HAC VICE, Futterman Dupree Dodd Croley Maier LLP, San Francisco, CA; Joseph Thompson Baio, Willkie Farr & Gallagher LLP (NY), New York, NY.

For CBS, Inc, Counter Defendant: Amin S. Kassam, LEAD ATTORNEY, DeVore & DeMarco, L.L.P., New York, NY; James Eric Rosenfeld, LEAD ATTORNEY, Davis Wright Tremaine LLP (NYC), New York, NY.

For The Washington Post Company, Counter Defendant, Counter Claimant: James Eric Rosenfeld, Davis Wright Tremaine LLP (NYC), New York, NY.

For Daniel Morel, Counter Claimant: Jaime G. Touchstone, PRO HAC VICE, Futterman Dupree Dodd Croley Maier LLP, San Francisco, CA; Joseph Thompson Baio, Willkie Farr & Gallagher LLP (NY), New York, NY; Barbara T. Hoffman, The Law Office of Barbara Hoffman, New York, NY.

For Agence France Presse, Counter Defendant: Joshua J Kaufman, LEAD ATTORNEY, Venable LLP (NYC), New York, NY.

For Agence France Presse, Counter Defendant: Joshua J Kaufman, LEAD ATTORNEY, Venable LLP (NYC), New York, NY; Meaghan Hemmings Kent, PRO HAC VICE, Venable LLP (DC), Washington, DC.

OPINION

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ALISON J. NATHAN, United States District Judge.

On March 26, 2010, Plaintiff Agence France Presse (" AFP" ) filed a Complaint against photographer Daniel Morel seeking a declaration that AFP had not infringed Morel's copyrights in certain photographs and alleging commercial defamation. (Compl. ¶ 3). In response, Morel filed counterclaims against AFP, Getty Images, Inc. (" Getty" ), and the Washington Post (the " Post" ),[1] asserting

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that AFP, Getty, and the Post (collectively, " Counterclaim Defendants" ) have willfully infringed his copyrights, and that AFP and Getty are secondarily liable for the infringement of others and have violated the Digital Millennium Copyright Act (" DMCA" ). ( See Dkt. No. 80).[2] The parties now have filed cross-motions for summary judgment regarding liability on the copyright and DMCA claims, as well as certain legal questions regarding how damages are to be assessed should liability be found.

I. BACKGROUND

The Court has undertaken a thorough review of the record, particularly the evidence cited in the parties' 56.1 statements and counterstatements. See Monahan v. New York City Dep't of Corrections, 214 F.3d 275, 292 (2d Cir. 2000); see also 24/7 Records, Inc. v. Sony Music Entm't, Inc., 429 F.3d 39, 46 (2d Cir. 2005) (noting that courts are not required to consider what the parties fail to point out in their 56.1 statements, although they may exercise their discretion to do so); Charter Oak Fire Ins. Co. v. Tri-County Fire & Safety Equip. Co., 636 F.Supp.2d 193, 197 (E.D.N.Y. 2009) ( " [I]t is only those portions of the record submitted in connection with a motion to which the court's attention is specifically directed, that the court is obligated to consider in determining whether a material issue of fact exists." ). On careful consideration of the evidence, the following facts and disputes of fact appear from the record.[3]

A. Morel Tweets Photos of the 2010 Haiti Earthquake

On January 12, 2010, a devastating earthquake struck Haiti. (Morel SMF ¶ 12; CC Def. CSMF ¶ 12; Morel Decl. ¶ 11). Morel, a photojournalist, was on scene and captured a number of images of the aftermath. (Morel SMF ¶ ¶ 1, 13; CC Def. SMF ¶ 1, 13; Morel Decl. ¶ ¶ 2, 12-14). Morel then posted his photographs to Twitter through a TwitPic account. (Morel SMF ¶ ¶ 17, 21; CC Def. CSMF ¶ ¶ 17, 21; Morel Decl. ¶ ¶ 16, 19, 22; Hoffman Decl. Ex. U at Twitpic001-002).

The parties dispute--and the evidence is contradictory--as to precisely when Morel uploaded these photos.[4] Morel contends that he uploaded them between 6:13 pm and 7:28 pm on January 12, 2010, an assertion supported by his declaration (Morel Decl. ¶ ¶ 22) and certain documentary evidence (Hoffman Decl. Ex. B, Morel Dep. Ex. 16 at 109). Counterclaim Defendants argue that he did so precisely three hours

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later, between 9:13 and 10:28 pm, and rely on other documentary evidence and deposition testimony establishing this timeline. (Hoffman Decl. Exs. U at TwitPic 18-20, Y; Winecoff Dep. at 12:17-13:3). Counterclaim Defendants' position as to the timing of these events is, however, undercut by e-mails indicating Morel's pictures were posted on the timeline he describes. (Morel SMF ¶ ¶ 41, 47; CC Def. CSMF ¶ ¶ 41, 47; Morel Decl. ¶ ¶ 22, 36-37; cf. also CC Def. CSMF ¶ ¶ 30-31). Based on the evidence before it, the Court cannot conclusively resolve the precise timing of these events. Regardless, shortly after Morel posted his pictures online-between 6:53 pm and 7:51 pm, if Morel's timeline is accepted, or between 9:53 pm and 10:51 pm per the evidence presented by Counterclaim Defendants--they were reposted to the Twitter account of Lisandro Suero, who tweeted that he had exclusive photographs of the earthquakes. (Morel SMF ¶ ¶ 28-29, 38; CC Def. CSMF ¶ ¶ 28-29, 38; Hoffman Decl. Exs. B, Morel Dep. Ex. 16 at 109; Hoffman Decl. Ex. U at Twitpic 0002-0003, 0018-020).

B. AFP Obtains Morel's Photos

Also on January 12, 2010, Vincent Amalvy, the Director of Photography for North America and South America at AFP was searching for photographs of the aftermath of the earthquake in Haiti. (CC Def. SMF ¶ ¶ 122, 124; Morel CSMF ¶ ¶ 122, 124; Amalvy Decl. at ¶ ¶ 2, 4). For example, at 7:12 pm he sent a link to the results of a PicFog search of the term " Haiti" to AFP's photo desk at wapix@afp.com; later that hour, he sent images of the earthquake in Haiti (not captured by Morel) to this same address. (Morel SMF ¶ ¶ 31, 36-37; CC Def. CSMF ¶ ¶ 31, 36-37; Amalvy Dep. at 80:9-18, 98:2-99:8, 131:16-132:6; Hoffman Decl. Ex. E at AFP000833-834). Once a photo is provided to AFP's photo desk, it is loaded to the AFP system for validation and captioning so that it can be distributed by AFP. (Morel SMF ¶ ¶ 77-78; CC Def. CSMF ¶ ¶ 77-78). AFP distributes such photographs through its international wire and a databank called ImageForum, which allows subscribers to access the photos either as part of a subscription plan or on an " a la carte" basis. (CC Def. SMF ¶ ¶ 11-12, 14-15; Morel CSMF ¶ ¶ 11-12, 14-15; Amalvy Decl. ¶ 2).

As the evening progressed, Amalvy continued to send pictures to the AFP photo desk, including at least one created by Tequila Minsky, sent shortly after 9:00 pm. (Morel SMF ¶ ¶ 53-55; CC Def. CSMF ¶ ¶ 53-55; Hoffman Decl. Ex. E; Minksy Decl. at ¶ ¶ 4, 7). As particularly relevant to this action, between 11:23 pm and 11:36 pm, Amalvy sent eight of Morel's photographs to the AFP photo desk (the " Photos-at-Issue" ). (Morel SMF ¶ ¶ 21, 69-76; CC Def. CSMF ¶ ¶ 21, 69-76; Hoffman Decl. Ex. E at AFP000813-818, 821-828).

C. Getty Receives Morel's Photos

After their receipt by AFP, AFP transmitted the Photos-at-Issue, credited to Suero, to Getty. (CC Def. SMF ¶ ¶ 153, 156, 169; Morel CSMF ¶ ¶ 153, 156, 169; CC Def SMF ¶ 170; Morel CSMF ¶ 170; Eisenberg Decl. ¶ 16; Amalvy Dep. Ex. 14-A; Amalvy Decl. ¶ 15). Getty distributes photographic images worldwide from a database of nearly 41 million images, allowing both subscribers and nonsubscribers to license these images, including on an " a la carte" basis. (CC Def. SMF ¶ ¶ 29-34; Morel CSMF ¶ ¶ 29-34; Calhoun Decl. ¶ ¶ 2-5; Eisenberg Decl. ¶ ¶ 3-4). For users with subscriptions, the terms of these subscriptions determine the types or categories of images to which they have access, the purpose for which the images may be used, and the duration of permissible use; the use of content is also governed by the terms of licenses to that

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content. (CC Def. SMF ¶ ¶ 32-34; Morel CSMF ¶ ¶ 32-34; Calhoun Decl. ¶ ¶ 4-5).

At the time AFP forwarded Morel's images to Getty, AFP and Getty had entered into a license agreement under which they granted reciprocal rights to, inter alia, display and license their images. (Hoffman Decl. Ex. AA; CC Def. SMF ¶ 46-47; Morel CSMF ¶ 46-47). As a result, AFP typically transmits roughly 1500 to 2000 images per day to the Getty system. (CC Def. SMF ¶ 48; Morel SMF ¶ 48; Bernasconi Decl. ¶ 6).

When AFP transmits an image to Getty through AFP's feed, the image is first received and processed by Getty's system, which runs certain automated checks to ensure, inter alia, that the image is properly formatted for Getty's internal TEAMS database and reflects the required data for publishing. (Morel SMF ¶ ¶ 97, 99; CC Def. CSMF ¶ ¶ 97, 99; Eisenberg Dep. at 35:18-36:16; 40:24-41:5). If all the required data is present, the image is transmitted to Getty's customer-facing website. (Morel SMF ¶ 99; CC Def. CSMF ¶ 99; Eisenberg Dep. at 35:18-36:16; 40:24-41:5). However, if the image does not have all of the data required for publishing, it will remain in Getty's internal database, but will not be automatically published to Getty's website. (Morel SMF ¶ ¶ 100-02; CC Def. CSMF ¶ ¶ 100-02; Eisenberg Dep. Tr. at 41:8-43:16). In such instances, human intervention may be required to correct the issue, allowing the image to publish to Getty's website. (Morel SMF ¶ ¶ 104-06; CC Def. CSMF ¶ ¶ 104-06; Eisenberg Tr. at 43:17-49:7). When the Photos-at-Issue were transmitted to Getty, it appears such human intervention may have been necessary to allow the Photos-at-Issue to publish, although the precise nature of this intervention is disputed-particularly as to whether Getty altered information about the byline or caption identifying the photographer. (CC Def. SMF ¶ 156; Morel CSMF ¶ 156; Morel SMF ¶ 131; CC Def CSMF ¶ 131; Eisenberg Decl. ¶ 16).

D. Efforts to Correct the Byline and Remove the Photos-at-Issue

On the morning of January 13, 2010, Benjamin Fathers at AFP questioned the attribution of the Photos-at-Issue to Lisandro Suero, e-mailing Amalvy at 4:36 am (EST) that " I'm not sure Lisandro Suero's photos are his but they belong to Daniel Morel" with a link to Morel's TwitPic page. (Morel SMF ¶ 119; CC Def. SMF ¶ 119; Fathers Tr. at 9:16-10:5, 25-29; Fathers Dep. Ex. 9 (AFP000421)). About an hour after Fathers e-mailed Amalvy, AFP issued a " caption correction" that went out to Image Forum, AFP's wire, and AFP's archive, that credited Morel for the Photos-at-Issue. (Morel SMF ¶ 123-24; CC Def. CSMF ¶ 123-24; CC Def. SMF ¶ 173-74; Morel CSMF ¶ 173-74; Hambach Dep. Tr. at 192; Hambach Dep. Ex. 11). The caption correction did not, however, expressly state that the photographs that had already been credited to Suero should have been credited to Morel--rather, it stated that it was " CORRECTING BYLINE FOR FOLLOWING IMAGES Dec050/052/053/054/055/056/057/058 showing the destruction in Haiti following an earthquake measuring 7.8 in Port-au-Prince. IMAGES SHOULD HAVE THE BYLINE OF DANIEL MOREL AFP PHOTO." (Morel CSMF ¶ 174; Amalvy Decl. Ex. C). AFP also changed the photographer credit of the Photos-at-Issue in ImageForum and on its wire to Daniel Morel. (CC Def. SMF ¶ 181-82; Morel CSMF ¶ ¶ 181-82; Amalvy Decl. ¶ ¶ 18-19 & Exs. C & D; Fathers Dep. Vol. II at 41:13-44:10). As the morning of January 13, 2010, progressed, AFP continued to internally discuss the proper attribution of the Photos-at-Issue, with Fathers noting

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that " it is very difficult to know to whom the photos belong, that's one of the risks of twitter but we are going to be vigilant so that we find the right bylines," and attempted to contact Morel. (Morel SMF ¶ ¶ 135-37; CC Def. ¶ ¶ 135-37; Fathers Dep. Tr. at 25:5-30:17; Fathers Dep. Ex. 1 (AFP000440), Ex. 12 (AFP000581); Ex. 12-B (AFP000618)).

The caption correction also was sent to Getty through AFP's feed to Getty and was distributed to Getty's customers who received AFP's content via Getty's image feed, but was not displayed on Getty's website. (CC Def. SMF ¶ ¶ 176-77; Morel. CSMF ¶ ¶ 176-77). AFP also transmitted re-credited copies of the Photos-at-Issue--most crediting Daniel Morel and a few crediting " David" Morel--to Getty, with a caption that read " EDITORS NOTE -- CORRECTING NAME OF PHOTOGRAPHER" with an updated photo credit " AFP PHOTO/DANIEL MOREL." (Hambach Decl. ¶ 6; Eisenberg Decl. ¶ 17; CC Def. SMF ¶ 183-84; Morel CSMF ¶ 183-84). AFP transmitted several corrected versions of each of the Photos-at-Issue, but did not remove the photos credited to Suero from Getty's system. (Eisenberg Decl. ¶ 17; Hambach Decl. ¶ 6). There is no mechanism in the AFP/Getty workflow that automatically locates and removes or updates photographs subject to a caption correction; rather, the photographs are simply resent to Getty's system with the corrected information. (CC Def. SMF ¶ 186; Morel CSMF ¶ 186; Eisenbeg Decl. ¶ 18).

At 4:37 p.m. on January 13, 2010, Claire Keeley, Corporate Counsel at Corbis, Inc. (" Corbis" ), e-mailed Heather Cameron, a Senior Paralegal at Getty, alerting her that Morel had uploaded his pictures to Twitter, that the photos were being distributed " credited as Daniel Morel/AFP-Getty Images," and that Morel was " exclusive to Corbis." (Morel SMF ¶ 177; CC Def. SMF ¶ 177; Cameron Dep. Ex. 1 (G003806); Cameron Decl. ¶ 13 & Ex. C). Morel and Corbis had previously entered into a representation agreement whereby Corbis was to be Morel's exclusive worldwide licensing agent for images sent to Corbis. (Morel SMF ¶ ¶ 145-46; CC Def. CSMF ¶ ¶ 145-46; Morel Decl. ¶ 68 & Ex. E). Prior to Keeley's e-mail, Morel had informed Corbis that he had not given Getty or AFP authorization to sell the Photos-at-Issue. (Morel SMF ¶ 167; CC Def. CSMF ¶ 167; Hoffman Ex. CC (COR 1693); Hoffman Reply Decl. Ex. G (COR 1020-21, 1030)). Keeley's e-mail did not provide additional information to more particularly identify the photos to which she was referring, did not reference images credited to Lisandro Suero, and did not contain copies of the images themselves. (Cameron Decl. Ex. C). It did, however, indicate that Corbis planned on issuing notices under the DMCA later that day. (Cameron Decl. Ex. C).

Getty claims that after receiving this notice from Corbis, it searched for and removed all of the earthquake-related images attributed to Daniel Morel that it found on its customer-facing website.[5]

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(CC Def. SMF ¶ 190; Cameron Decl. ¶ 15; Cameron Dep. Tr. at 16:3-21; Morel SMF ¶ ¶ 178, 180; CC Def. CSMF ¶ ¶ 178, 180). Cameron informed Keeley via an e-mail at 2:53 pm that these images had been removed and that the photos had been posted to Getty's service by AFP, suggesting that Corbis should get in touch with AFP about the issue. (Morel SMF ¶ 177; CC Def. SMF ¶ 177; Cameron Dep. Ex. 1 (G003806); Cameron Decl. ¶ 13 & Ex. C). It is undisputed that Getty did not, at this time, remove the images credited to Suero. (CC Def. SMF ¶ ¶ 215-16; Morel CSMF ¶ ¶ 215-16; Morel SMF ¶ 225, 235-36; CC Def. CSMF ¶ 225, 235-36). Getty also does not dispute that after receiving this notification from Corbis on January 13, 2010, it was aware it had no right to license Daniel Morel's photographs. (Morel SMF ¶ 240; CC Def. CSMF ¶ 240).

That evening, Cameron forwarded Corbis's e-mail to employees of AFP, noting in addition that Getty had " pulled 24 AFP assets from our site this afternoon credited to Daniel Morel/AFP." (Cameron Ex. C). That night, a Corbis employee contacted Amalvy, noting that he was " working on an infringement issue[] in which a twitter user by the name of Lisandro Suero posted images that [are] copyright protected by one of our exclusive photographers, Daniel Morel" and asking for assistance removing the images from AFP's site and sites posting the images crediting " Lisandro Suero -- AFP/Getty." (Morel SMF ¶ 186, CC Def. CSMF ¶ 186; Amalvy Dep. Ex. 16 (AFP00512)).

The next day, January 14, 2010, at 2:58 pm, AFP issued a " Kill Notice" which stated
MANDATORY KILL == MANDATORY KILL == MANDATORY KILLDue to a recent copyright issue, we kindly ask you to kill from all your systems Daniel Morel Pictures from Haiti. We are sorry for any inconvenience; thank you for your cooperation.MANDATORY KILL == MANDATORY KILL == MANDATORY KILL

(Hambach Decl. Ex. A). The Kill Notice was distributed through AFP's wire and in ImageForum, as well as being added to AFP's archive and sent via e-mail to AFP subscribers who had previously requested to receive such notices. (Hambach Decl. ¶ 7-8; CC Def. SMF ¶ 196-99, 203; Morel CSMF ¶ 196-99, 203). After the Kill Notice was issued, AFP removed from ImageForum and its archive all photos credited to Daniel Morel. (Hambach Decl. ¶ 9; CC Def. SMF ¶ 206; Morel CSMF ¶ 206).

The Kill Notice was also sent to Getty's feed, and thus to Getty's customers who receive AFP's content through that feed. (Hambach Decl. ¶ 7; CC Def. SMF ¶ 202; Morel CSMF ¶ 202). The Kill Notice did not identify specific image numbers used by Getty, provide thumbnails of the images in question, or provide notice that any of the Photos-at-Issue were credited to Suero or " David" Morel. (CC Def. SMF ¶ 208; Morel CSMF ¶ 208; Hambach Decl.

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Ex. A).[6] However, the evidence suggests that the Kill Notice was reviewed--as was AFP's earlier caption correction--by at least Getty employee Andreas Gebhard. (Morel SMF ¶ 228; CC Def. CSMF ¶ 228; Cameron Dep. Ex. 17 (G002964-2965)). Indeed, in response to an e-mail from AFP containing the Kill Notice, Gebhard replies " [h]andling" and later states " [y]ou guys [AFP] had re-sent them yesterday, to correct the photogs name, too." (Morel SMF ¶ 228; CC Def. CSMF ¶ 228; Cameron Dep. Ex. 17 (G002964-2965)). Gebhard had also earlier seen Morel's photos on Twitter in the evening of January 12, 2010. (Morel SMF ¶ 63; CC Def CSMF ¶ 63; Hoffman Decl. Ex. Q, Bernasconi Dep. Ex. 1).

On February 2, 2010, Corbis again contacted Cameron at Getty, noting that " Getty still has not removed the Daniel Morel images from its website" and directing Cameron to a link to a search for photographs credited to Suero. (Morel SMF ¶ 245; CC Def. SMF ¶ 245; Cameron Dep. Ex. 17 (G002961-62). Getty removed the images credited to Suero that night. (CC Def. SMF ¶ 216; Morel CSMF ¶ 216; Cameron Decl. ¶ 24; Eisenberg Decl. ¶ 22). None of the Photos-at-Issue remained available for licensing on Getty's website after this point. (CC Def. SMF ¶ 217; Morel CSMF ¶ 217; Cameron Decl. ¶ 25; Eisenberg Decl. ¶ 22).[7] Thereafter, and after being contacted by Morel's counsel, Getty took efforts to reach out to its customers who had purchased the Photos-at-Issue and notify them regarding Morel's copyright claim. (CC Def. SMF ¶ ¶ 219, 228-30; Morel CSMF ¶ ¶ 219, 228-30; Calhoun Decl. ¶ ¶ 17-19; Calhoun Dep. Tr. at 102:15-106:24, 187:19-192:17, 200:7-17, 212:21-213:18; Cameron Decl. ¶ ¶ 41-43; Cameron Dep. Tr. at 69:21-70:24).

E. The Post

The Post concedes that it received from Getty and published four of the Photos-at-Issue on its website, three credited to " Lisandro Suero/AFP/Getty Images" and one credited to " Daniel Morel-AFP/Getty Images." (CC Def. SMF ¶ ¶ 234-35; Morel CSMF ¶ ¶ 234-35).[8] Although the Post admits

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publishing some of the Photos-at-Issue, it denies that it did so with knowledge that they were infringing or that it should be held liable for willful infringement. Morel, however, points to a series of events that he contends demonstrates that the Post was on notice of its infringement and continued to display the Photos-at-Issue, rendering it liable for willful infringement.

Specifically, nearly two months after the earthquake, on March 9, 2010, Morel's counsel, Barbara Hoffman, sent a letter to an officer of the Post's parent company, Ann McDaniel, and via e-mail to TWPCoReply@washpost.com, that stated that Morel had determined to allow the Post to display Morel's photographs, but required them to correct the credit to read " Daniel Morel." (CC Def. SMF ¶ ¶ 240, 242; Morel CSMF ¶ ¶ 240, 242; Gish Decl. ¶ 3 & Ex. A). The Post contends it has no record of receiving this letter in March 2010, and the TWPReply@washpost.com e-mail address is a generic address administered by the Post's parent company, not affiliated with the Post's news organization or any specific person. (CC Def. ¶ ¶ 241-42; Morel CSMF ¶ ¶ 241-42; McLaughlin Decl. ¶ ¶ 12-13). On roughly May 13, 2010, Hoffman sent a letter to the Post's Executive Editor Marcus W. Brauchli via Federal Express, demanding Morel's images be removed; the Post and Brauchli deny receiving this letter, noting that the Federal Express records show it was incorrectly addressed to " Marous Brauchi." (CC Def. SMF ¶ ¶ 244; Morel CSMF ¶ ¶ 244; Gish Decl. Exs. A & B; McLaughlin Decl. ¶ 14 & Ex. A). The same letter was sent by e-mail to national@washpost.com and foreign@washpost.com, which are monitored by low-level aides. None of the above letters were sent to the Post's legal department. (CC Def. SMF ¶ ¶ 243, 246; Morel CSMF ¶ ¶ 243, 246; McLaughlin Decl. ¶ 12, 15).

On June 10, 2010, Michel duCille, a Post employee, was notified by Getty that three photographs in the Post's online gallery were the subject of a copyright dispute and should be taken down. (CC Def. SMF ¶ 247; Morel CSMF ¶ 247). DuCille and a colleague logged into the gallery and took the correct steps to delete the photographs but, for unknown reasons, the photographs continued to appear in the gallery. (CC Def. SMF ¶ ¶ 248, 259; Morel CSMF ¶ ¶ 248, 259; Morel SMF ¶ 294; CC Def. CSMF ¶ 294; Ghatti Decl. ¶ ¶ 4-9 & Ex. A; duCille Decl. ¶ ¶ 20-21 & Ex. A). On June 17, 2010, Hoffman again set a letter via Federal Express to McDaniel and Brauchli, which this time was routed to James McLaughlin in the Post's legal department. (CC Def. SMF ¶ ¶ 249-50; Morel CSMF ¶ ¶ 249-50; McLaughlin Decl. ¶ ¶ 16-17 & Ex. A). McLaughlin e-mailed Hoffman to acknowledge receipt and ask her to identify the images to be removed, since the June 17 letter did not provide this information and McLaughlin had not seen the previous letters. (CC Def. SMF ¶ 251; Morel CSMF ¶ 251; McLaughlin Decl. ¶ ¶ 18-20 & Ex. B; Gish Decl. Ex. A). Hoffman did not respond. (CC Def. SMF ¶ 252; Morel CSMF ¶ 252; McLaughlin Decl. ¶ 22). McLaughlin did, however, confer with the Post's General Counsel, and was informed that duCille had reported

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that he removed the images. (CC Def. SMF ¶ 253; Morel CSMF ¶ 253; McLaughlin Decl. ¶ 21; duCille Decl. ¶ 22).

On April 6, 2011, after Morel's counsel contacted Getty and AFP and noted that Morel's images were still on the Post's website, counsel for Getty informed McLaughlin of this fact. (CC Def. SMF ¶ 255; Morel CSMF ¶ 255; McLaughlin Decl. ¶ 23). On April 8, 2011, after McLaughlin was sent a link to the Photos-at-Issue by Getty's counsel confirming they were still visible on the Post's website, McLaughlin had the images removed from the website. (CC Def. SMF ¶ ¶ 255-58; Morel CSMF ¶ ¶ 255-58; McLaughlin Decl. ¶ 23; Ghatti Decl. ¶ 5)

II. DISCUSSION

Summary judgment is proper only if there is no genuine dispute of material fact and the movant is entitled to judgment as a matter of law. Ramos v. Baldor Specialty Foods, Inc., 687 F.3d 554, 558 (2d Cir. 2012). In reviewing the evidence on a motion for summary judgment, courts are to construe the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party's favor. Id. A fact is material if it might affect the outcome of the suit under the governing law and an issue is genuine if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Id.

Because several of the issues presented for summary judgment turn on questions of intent, a brief word is in order regarding the propriety of summary judgment if a defendant's state of mind is at issue. As a general matter, although it may be permissible to grant summary judgment when mental state is at issue if there are sufficient undisputed material facts on the record, courts are generally reluctant to do so. Lipton v. Nature Co., 71 F.3d 464, 472 (2d Cir. 1995). Issues of intent are questions of fact and, as such, the Second Circuit has explained that summary judgment should be used sparingly. Redd v. N.Y. State Div. of Parole, 678 F.3d 166, 178 (2d Cir. 2012). In short, " [c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge. The court's role in deciding a motion for summary judgment is to identify factual issues, not to resolve them." Id. at 174 (quotation marks and citations omitted); see also Koon Chun Hing Kee Soy & Sauce Factory v. Star Mark Mgmt., at *25-26, *41-42, *46 (E.D.N.Y. Jan. 8, 2007).

A. Direct Liability

Morel moves for summary judgment on his claim of direct copyright infringement. To prove direct infringement, Morel must establish (1) ownership of a valid copyright and (2) that the Counterclaim Defendants infringed any of his exclusive rights granted by 17 U.S.C. § 106. See Arista Records LLC v. Doe, 604 F.3d 110, 117 (2d Cir. 2010). Defendants do not dispute that Morel holds a valid copyright in the Photos-at-Issue. (Morel SMF ¶ 22-23; CC Def. CSMF ¶ 22-23; CC Def. Opp. at 6).

Morel asserts AFP and Getty engaged in a number of violations of his exclusive rights granted by § 106, including infringement of his exclusive right of reproduction, infringement of his exclusive right of public display, and infringement of his exclusive right to distribute the copyrighted works.[9](Morel Br. at 19-28). Counterclaim Defendants, although raising affirmative defenses that they claim preclude

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liability, do not contest that they have engaged in activities with respect to the Photos-at-Issue that& absent their affirmative defenses& would infringe these rights. (AFP Opp. at 6 (" Nor do Defendants dispute for purposes of this motion that they copied, distributed and displayed certain of the Photos at Issue. Specifically, as articulated in their Joint Brief, AFP and Getty Images copied, distributed and displayed the eight ...


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