United States District Court, S.D. New York
OPINION AND ORDER GRANTING IN PART AND DENYING IN
PART DEFENDANT'S MOTION TO DISMISS THE FIRST AMENDED
K. HELLERSTEIN, UNITED STATES DISTRICT JUDGE.
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.
FIRST AMENDED COMPLAINT
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.
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.
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.
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.
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.
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.
Count I: Plaintiffs Have Adequately Stated a Claim for Direct
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.
The FAC Adequately Identifies the Specific Works that are the
Subject of Plaintiffs' Claim
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 ...