Agence France Presse v. Morel

Citation
Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y. Jan. 14, 2011).

Factual Background
Defendant and counterclaimant Daniel Morel (“Morel”) is a professional photojournalist who was working in Haiti during the January 2010 earthquake and who documented the disaster and resulting destruction. Following the quake, Morel created accounts on Twitter and Twitpic to upload his pictures and share them with others. On Twitter, Morel tweeted that he had “exclusive earthquake photos” that he wanted to license for compensation while retaining his copyrights and credit. Only minutes after Morel posted his photographs, Lisandro Suero (“Suero”), a resident of the Dominican Republic, copied the pictures and posted them to his own Twitpic account while tweeting that he had “exclusive photographs of the catastrophe for credit and copyright.” Several news agencies contacted both Morel and Suero regarding Morel’s photographs Plaintiff Agence France Presse (“AFP”) placed Morel’s photographs on its Image Forum and transmitted them to Getty Images, an image licensing company. Morel’s photographs were labeled with the credit line “AFP/Getty/Lisandro Suero,” designating AFP and Getty as licensing agents and Suero as photographer. Getty Images then licensed the photographs to numerous third-arty news agencies, including CBS and CNN.

Trial Court Proceedings
Plaintiff AFP brought his action seeking a declaratory judgment that it did not infringe on Defendant Morel’s copyrights in certain photographs. Morel brought a counterclaim against AFP alleging violations of the Copyright Act, Digital Millennium Copyright Act, and the Lanham Act as well as similar third-party claims against Getty Images, CBS Broadcasting, ABC, Turner Broadcasting System, and unnamed AFP and Getty Images licensees. AFP and the Third-Party Defendants brought a motion to dismiss Morel’s counterclaims and third-party claims for failure to state a claim and this Court granted that motion with respect to Morel’s vicarious infringement claims against CBS and his Lanham Act claims against AFP and Getty Images, and denied the motion with respect to Morel’s claims for direct copyright infringement against AFP and TBS, his claims for contributory infringement against AFP, and his claims for DMCA violations against AFP, Getty Images, TBS, and CBS.

Twitpic’s terms of services provide that “[b]y uploading your photos to Twitpic, you give Twitpic permission to use or distribute your photos on Twitpic.com or affiliated sites. All images uploaded are copyright © their respective owners.” Similarly, Twitter’s terms of service state “[n]otwithstanding the TOS state inter alia, ‘you retain your rights to any content you. . . post on or through the services.’” While there were no copyright notices on the images themselves, Morel’s Twitpic page did include the attributions “Morel” and “by photomorel” next to the images, as well as the copyright notice “©2010 Twitpic, Inc. All Rights Reserved.”

Morel alleges that AFP and Getty Images “willfully or recklessly failed to follow standard journalistic practices or use due diligence to verify Suero’s authorship and the photographs’ authenticity. Morel’s images were used frequently during CNN’s 24-hour broadcast of the disaster and Morel alleges that several pictures were taken directly from his Twitpic page while others were licensed from Getty Images. A few days after the disaster, an employee from AFP contacted Morel recognizing that the images belonged to Morel and commending him for his work. Subsequently, AFP issued a wire instruction to change the photographer credit for Suero to Morel. However, Getty Images continued to sell licenses to various organizations that credited AFP, Suero, or Morel as the photographer.

Morel is represented by Corbis, Inc. (“Corbis”), a competitor of Getty Images, who emailed Getty Images to assert its exclusive rights to Morel’s photographs. After receiving this email, Getty Images removed the photos in its database that listed Morel as the photographer but not the identical images that credited Suero. Morel finally submitted his photographs for expedited copyright registration and he and his counsel sent a number of cease and desist letters to parties known to be storing or using the images.

Direct copyright infringement
To prevail on a claim of direct infringement, a plaintiff must demonstrate both (1) ownership of a valid copyright and (2) infringement of the copyright by the defendant. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 108-109 (2d Cir. 2001). However, even where both elements are met, the existence of a license is a valid defense to an infringement claim. Tasini v. N.Y. Times Co., Inc., 206 F.3d 161, 170-71 (2d Cir. 2000).

AFP and TBS assert that they had an express license to use Morel’s images or that, alternatively, they were third-party beneficiaries of a license agreement between Morel and Twitter. In general, a licensor may not sue its licensees for copyright infringement (See Jasper v. Sony Music Entm’t, Inc., 378 F. Supp. 2d 334, 339 (S.D.N.Y. 2005)), therefore, where a dispute turns on whether a license is held by the accused infringer, the defendant bears the burden to “com[e] forward with evidence of a license.” Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir. 1995).

The Twitpic login page warns user that “[b]y clicking ‘Allow,’ you continue to operate under Twitter’s Terms of Service.” These terms provide:

"By submitting, posting, or displaying Content on or through the Services, you grant us a worldwide, non-excluisive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such content in any and all media or distribution methods . ..

Tip[:] This license is you authorizing us to make your Tweets available to the rest of the world and to let others do the same. But what’s yours is yours – you own your content."

While the express language of Twitter’s Terms allow a permissive grant to Twitter and its partners (with Twitpic retaining similar rights with respect to Twitpic and its affiliated sites), AFP and TBS did not claim to be partners or affiliates of Twitter or Twitpic. As such, the court determined that the relevant Terms did not clearly confer a right on other users to re-use copyrighted postings.

Under California law, a contract made expressly for the benefit of a third party may be enforced by that party at any time before the parties thereto rescind it. To qualify as a contract beneficiary, “the contracting parties must have intended to benefit that individual, an intent which must appear in the terms of the agreement.” Principal Mut. Life Ins. Co. v. Vars, Pave, McCord & Freedman, 77 Cal. Rptr. 2d 479, 488 (Cal. Ct. App. 1998). The language of Twitters Terms clearly confer a benefit on Twitter’s partners and sublicensees, however as neither partner nor sublicensee, AFP and TBS are not entitled to any third party beneficiary rights. The mere status of “users” is not sufficient to avail themselves of the relevant portion of Twitter’s Terms.

Contributory and vicarious copyright infringement
Where “there is a class of primary infringers,” a party “may be held liable as a contributory infringer” when, “with knowledge of the infringing activity, [it] induces, causes, or materially contributes to the infringing conduct of another.” Matthew Bender & Co., Inc. v. West Publ’g Co., 158 F.3d 693, 706 (2d Cir. 1998). While AFP alleges that there cannot be contributory infringement claims due to the lack of a primary infringer, the Court rejected this argument due to the determination that AFP and TBS could not establish that a valid license existed. However, the Court did hold that Morel failed to allege facts supporting his claim that CBS had a direct financial interest in their affiliates’ exploitation of his images. Vicarious infringement claims are “fatally flawed” where a plaintiff “fail[s] to allege any facts showing” a “direct financial interest.” Broadvision Inc. v. Gen. Elec. Co., No. 08 Civ. 1478 (WHP), 2009 WL 1392059, at *4 (S.D.N.Y. May 5, 2009). A plaintiff “must show more than just a legal relationship between the parent and the subsidiary “ to “state a claim for vicarious liability against [the] parent for the actions of its subsidiary.”

DMCA claims
The DMCA prohibits knowingly providing or distributing false copyright management information with “the intent to induce, enable, facilitate, or conceal infringement.” 17 U.S.C. § 1202(a). According to Morel’s allegations, AFP labeling his photos with the credit lines “AFP/Getty/Daniel Morel” and “AFP/Getty/Lisandro Suero” is sufficient to plead falsification of copyright management information. The Court found these actions to be sufficient to support Morel’s claim when viewed in the context of AFP contacting both Morel and Suero and seemingly conducting no inquiry into the true source of identical images. Similarly, Getty Images issued a wire to change the photographer credit for the images but then continued to license photos that credited Suero.

The DMCA also prohibits intentionally removing or altering copyright management information, or distributing such information knowing that it has been removed or altered. It is undisputed that there were no copyright notices on Morel’s images, however Morel alleged that the attributions that were removed were found on the Twitpic page containing the images. The Court rejected the movants’ argument that copyright management information must be removed from the images themselves as no such requirement is found in the language of the DMCA. Lanham Act Claims

The Lanham Act imposes liability for “any false designation of origin, false or misleading description of fact, or false or misleading representation of fact” that is likely to cause confusion as to the origin of goods or services. The Supreme Court in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 32 (2003) admonished that this section 43(a) of the Lanham Act cannot be invoked as an end run around the copyright laws or to add another layer of protection to copyright holders. Where the good in question is “a communicative product. . . such as a book or. . . a video,” the term “origin” refers to “the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.”

The Dastar decision effectively forecloses Morel’s Lanham Act claims against AFP and Getty Images for false representation and false advertising because photographs are “communicative products” that are protected by copyright. Morel holds copyrights for his photographs and therefore his recourse for unauthorized copying lies in copyright law, not in trademark.