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Zuma Press, Inc. v. Getty Images (Us), Inc.

United States District Court, S.D. New York

June 29, 2017

ZUMA PRESS, INC., et al., Plaintiffs,
v.
GETTY IMAGES (US), INC., Defendant.

          OPINION AND ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION TO DISMISS THE FIRST AMENDED COMPLAINT

          ALVIN K. HELLERSTEIN, UNITED STATES DISTRICT JUDGE.

         Plaintiffs Zuma Press, Inc. ("Zuma"), Action Sports Photography, Inc. ("Action Sports"), Tiyu (Beijing) Culture Media Co. Ltd. ("OSports"), Manny Flores ("Flores"), Andrew Dieb ("Dieb"), Christopher Szagola ("Szagola"), Louis Lopez ("Lopez"), Charles Baus ("Baus"), Duncan Williams ("Williams"), Robert Backman ("Backman"), John Middlebrook ("Middlebrook"), and Anthony Barham ("Barham") bring this action against defendant Getty Images (US), Inc. ("Getty"), and assert claims for direct and contributory copyright infringement under the Copyright Act, 17U.S.C. § 501, removal and alteration of copyright management information in violation of Section 1202 of the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1202, unfair competition under Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. § 1125, and under New York common law, and false advertising under Section 349 of New York's General Business Law. For the reasons stated below, defendant's motion is granted in part and denied in part.

         THE FIRST AMENDED COMPLAINT

         Zuma, a photography agency, identifies itself as "one of the world's largest independent press agencies and wire services in the world." FAC ¶ 7. Zuma has a collection of over 20 million images that it licenses to the public on behalf of the public. FAC ¶ 20. Approximately 200, 000 of these photographs are sports photographs (the "Sports Photographs"). FAC ¶ 21. The Zuma website lists all Sports Photographs with copyright notation that reads "© the copyright owner's name" /ZUMAPRESS.com. FAC ¶ 29.

         Defendant Getty is one of the world's largest stock photo agencies. Getty displays, markets and sells millions of images through its website, www.GettyImages.com. FAC ¶ 55. Plaintiffs allege that beginning in April 2016, Getty improperly copied at least 47, 048 of the Sports Photographs, displayed them on the Getty website, and made them available for licensing and sale. FAC ¶ 56. Plaintiffs further allege that Getty removed Zuma's copyright management information ("CMI") from each of the photographs and replaced it with a watermark that read "Getty Images." FAC ¶¶ 94-119. Plaintiffs attach to the FAC an exhibit showing thumbnails of each photograph as it appeared on the Getty website, as well as an exhibit listing the Getty Images Asset Number for each of the 47, 048 images. FAC ¶ 56, 63; Exs. A1-A41, P1-P5.

         On May 4, 2016, Zuma discovered this alleged infringement by typing the phrase "ZUMA PRESS" into the search bar of the Getty website. Upon discovering the alleged infringement, Zuma immediately asked Getty to take down the photographs. Two weeks later, the photographs still appeared on Getty's website, so Zuma contacted Getty for a second time and again asked for the photographs to be taken down. On May 19, 2016, Getty informed Zuma that the photographs had been removed. After further investigation, however, Zuma determined that the number of Sports Photographs appearing on Getty's website continued to grow. FAC ¶¶ 57-61. Ultimately, Getty did remove the photographs at issue from its website. FAC ¶ 67.

         A central issue in this case is whether each of the Sports Photographs that appeared on the Getty website is the subject of a valid copyright and whether plaintiffs own that copyright or otherwise have standing to sue Getty for copyright infringement. Zuma appears to concede that it is not the copyright owner of each of the Sports Photographs, but alleges that it is the exclusive licensee of at least some of the Sports Photographs. For example, Zuma alleges that the Sports Photographs were taken by photographers "largely represented exclusively by Zuma, and that "typically, Sports Photographers do not work with any other agency, licensee, or entity." FAC ¶¶ 21, 24. Zuma alleges that because "[m]ost of the Sports Photographers have worked with Zuma exclusively for many years ... Zuma is the exclusive agent for these Sports Photographers." FAC ¶ 24. Zuma attaches to the FAC an exhibit consisting of "a sampling of exclusive agreements between the Sports Photographers and Zuma." FAC ¶ 26; Ex. B. Zuma also attaches exhibits showing four examples of photographs of which it is the exclusive licensee, the accompanying licensing agreements, and images of those photographs as they appeared on the Getty website. FAC ¶¶ 29, 68; Exs. C1-C2, Q. Only two of those photographs, however, are the subject of a valid copyright registration; the registration of the other two photographs remains pending. Id.

         The FAC alleges that the remaining plaintiffs - Action Sports, OSports, Flores, Dieb, Szagola, Lopez, Baus, Williams, Backman, Middlebrook, and Barham - are also copyright owners of at least some of the Sports Photographs. FAC ¶ 22. Plaintiffs attach to the FAC a sample of photographs owned by these plaintiffs that appeared on the Getty website. FAC ¶¶ 31-54; Exs. D-N. Of these twenty sample photographs, only eleven are the subject of a valid copyright registration; the registration of the other nine photographs remains pending. Id.

         Zuma alleges that it does not know whether the 47, 048 photographs "represent an exhaustive list of its images improperly exploited by Getty." FAC ¶ 64. Zuma alleges that "as a result of Defendant removing the Photographs from the Getty Website, the random order the Photographs are in, and Plaintiffs not having possession, access to or control of information relating to the complete list of all the Photographs involved in the infringement, there is limited information related to how many photographs involve Zuma as the exclusive licensee and how many are owned by Plaintiffs." FAC ¶ 67.

         DISCUSSION

         I. Count I: Plaintiffs Have Adequately Stated a Claim for Direct Copyright Infringement

         "A properly plead copyright infringement claim must allege 1) which specific original works are the subject of the copyright claim, 2) that plaintiff owns the copyrights in those works, 3) that the copyrights have been registered in accordance with the statute, and 4) by what acts during what time the defendant infringed the copyright." Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992); see also Jacobs v. Carnival Corp., 2009 WL 856637, at *4 (S.D.N.Y. Mar. 25, 2009) (noting that courts in the Southern District of New York "have consistently followed the four-prong standard set forth in Kelly"). Getty argues that plaintiffs have failed to satisfy the first three prongs of this test. I address each argument in turn.

         a. The FAC Adequately Identifies the Specific Works that are the Subject of Plaintiffs' Claim

         Getty argues that it is impossible to discern from the FAC which and how many photographs are actually at issue in this action because plaintiffs use the phrase "photographs that are the subjects of this litigation" (or some variation thereof) with respect to several different categories of photographs. For example, the FAC alleges detailed facts - the name of the photographer, the copyright registration number, and evidence of Zuma's exclusive license - for only twenty-four specific photographs, and identifies those photographs at various points in the FAC as the "subjects of this litigation." Elsewhere, however, the FAC alleges that Getty improperly copied 47, 048 photographs, and likewise refers to this set of 47, 048 photographs as the "subjects of this litigation." This issue boils down to whether plaintiffs should be permitted to assert claims with respect to the complete set of 47, 048 photographs that appeared on the Getty website, even though Zuma has ...


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