Copyright Infringement Suit Against Supermodel Gigi Hadid Dismisssed

July 30, 2019 · by ·

Judge Pamela K. Chen from the Eastern District Court of New York dismissed on July 18 a copyright infringement suit filed by XClusive-Lee, Inc. against supermodel Gigi Hadid, claiming that a picture she posted on her Instagram account was infringing.

Hadid’s Instagram account currently has almost 49 million followers, interested in viewing family pictures, fashion magazines cover featuring Hadid, fashion shoots and fashion photographs. Hadid posted in October 2018 a cropped version of a photograph of her taken the day before by a paparazzi outside Vogue’s Force of Fashion conference, where Hadid was part of a panel.

The original version of the photograph showed Defendant wearing a denim jacket and shorts, a small handbag, high heels, jewelry and make up, smiling at the camera in an outdoor urban setting, probably outside the New York City studio where the conference took place.

The photo posted by Hadid on social media was cropped mid-thigh. She added as comment:”all smiles post #ForceOfFashionpanel @voguemagazine.wearing #messikabygigihadid mini-cuffs and mono earing”, referring to a line of jewelry bearing her name which is sold by a French jeweler.  The “mono earrings”referred to in the post retail at $5,710.

Xclusive-Lee, Inc., the company which owns the copyright to this photograph, filed a copyright infringement suit against Hadid in January 2019, claiming Hadid “copied and posted Copyrighted Photograph to Hadid’s Instagram account without license or permission from Xclusive-Lee.” It claimed that it was entitled to statutory damages, including any profits realized by Hadid attributable to the infringement, pursuant to 17 U.S.C. § 504.

As a reminder, a work is protected by copyright, if it is fixed in a tangible medium and if it is original enough, even if it is not registered. However, a registration is required if filing a copyright infringement suit, and the Supreme Court recently held in Fourth Estate Public Benefit Corp. v. Wall-Street. Com LLC  that § 411(a) of the Copyright Act requires that copyright registration occurs “only when the Copyright Office grants registration” (at 888).

At the time of filing the suit, Plaintiff had applied for a copyright in the photograph, but had not been granted registration. Plaintiff argued that it had filed the copyright infringement suit before the Fourth Estate decision, but the EDNY rejected the argument as the Court cannot decline applying a Supreme Court decision “merely because the Supreme Court decision was issued after the filing of the compliant at issue in this case.”

The case was dismissed because the photograph was not registered with the Copyright Office.

That said, posting a photograph protected by copyright on Instragram without permission is copyright infringement. The Complaint noted that Hadid’s Instagram account featured several examples of “uncredited photographs of Hadid in public, at press events, or on the runway” and that “[m]ost if not all of these photographs were posted by Hadid without license or permission from the copyright holder.”

Could it be fair use? Hadid may have used this photograph in order to contribute to the promotion of her jewelry line. Therefore, the character of the use, one of the four fair use factors, may have been for commercial gain, not for the sake of commenting or news reporting for the Vogue conference.

The second factor, the nature of the work, would probably be in Hadid’s favor, as it is not very creative. Hadid did not use all of the work, but cropped it, but she nevertheless substantially used the work, and so the third factor could have been in Plaintiff’s favor as well. The fourth factor, the economic effect on the value of the work, measures the effect of the use on the market. The picture could be licensed to be used on her Instagram account in order to promote a commercial line, and so it is possible that the fourth factor would have been in Plaintiff’s favor.

However, it could it be argued that this particular photograph was not protected by copyright, as a work must be original enough to be protected. The photo was taken in the streets of New York, and must have been taken quickly, thus leaving little time for the photographer to make choices. Hadid deftly takes the pose, and it can be argued that it is her professional experience which contributed to the picture being original, unless the pose was directed by the photographer.

If a copyright registration had been granted before filing the case, the suit would likely not have been dismissed, as fair use is fact-based and thus is unlikely to be decided when granting a motion to dismiss.

However, if a copyright registration is mandatory for filing a copyright infringement suit, the Copyright Office may start to examine more closely whether a particular work is indeed original enough to be protected by copyright…

Take-away: Plaintiff must have a valid copyright registration before filing a copyright infringement suit.

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Did you RT a © today? Photographer Sues Infringers and Retweeters

July 14, 2015 · by ·

A photographer is suing a beverage company which allegedly used without permission one of his photographs on social media. The case is interesting, as the photographer chose to sue not only the company and its employees and contractors, but also the social media users who republished the photograph on social media, by a retweet, or a pin. The case is Dennis Flaherty v. Big Red, 1:15-cv-00566.Dennis Flaherty (Plaintiff) is a professional photographer, living in California. He claims that beverage company Big Red (Defendant) used without permission one of his photographs representing Fort Alamo at night, or a “near perfect copy” of it, to create social media postings marking the 179th anniversary of the Battle of the Alamo, which ended on March 6, 1836. Big Red is located in Texas and thus the photograph “conveys a meaning and a direct relationship” with its place of business. Plaintiff owns the copyright of the photograph and registered it with the Copyright Office.16358615653_6305c3e39a_z

Defendant allegedly added a watermark or logo of BIG RED on the photograph before posting it online and Plaintiff claims that, as such, Defendant placed its registered trademark on the photograph. Plaintiff provided screenshots of alleged social media use of this photograph by Defendant (see here for screen shot of use on Twitter and on Facebook). They show images of Fort Alamo at night, identical or very similar to Plaintiff’s own photograph, with some slight modifications such as deleting a flag pole. Plaintiff is seeking  statutory damages for copyright infringement.

Posting on Social Media as Vicarious Infringement

Plaintiff is also suing John Does, employees or contactors of Big Red who were in charge of creating, monitoring, controlling and editing these social accounts, for vicarious copyright infringement, which “occurred because Defendants have or had a right and ability to supervise the infringing act, and received a benefit or a direct financial interest therefrom.” The complaint alleges that Defendants “received a direct financial benefit” from the infringing use of the photograph, as at was used to “draw…. customers, third parties, internet users, followers… to Defendants business activities.” Plaintiff is seeking actual, or, alternatively, statutory damages for vicarious infringement.

Retweeting as Contributory Infringement

Plaintiff also claims that Defendants induced copyright infringement by distributing the photograph to third parties, that is, social media users who retweeted, pinned or liked the original social media post containing the infringing photograph. Plaintiff claims that, as such, they “stood in the shoes of the Plaintiff and licensed the image to Twitter,” citing Twitter’s Terms of Service which provide that by submitting content, users provide Twitter with a royalty-free license, thus allowing the social media site to make one’s tweets “available to the rest of the world and let others do the same.” Plaintiff is seeking actual, or, alternatively, statutory damages, for contributory infringement as well.

It is very unlikely that Plaintiff will be awarded any damages from any social media user. Plaintiff claims that the contributory infringement was intentional, but proving that it is would be impossible. As noted by Plaintiff himself, the photograph bore the Big Red trademark. As such, social media users were likely to believe that the use was legal, even if they knew that the copyright of the photograph was owned by Plaintiff, as he could very well have licensed it.

But this case got me thinking about copyright small claims courts. If such courts are ever established in the United States, would copyright owners sue social media users who had republished infringing material? Let’s say that social media users would ‘only’ face, for instance, a $50 fee awarded in a small claim court for having retweeted or pinned infringing material. Granted, only people posting under their real name could effectively be sued. But Facebook has a “use only your own name” policy, which is enforced, and many Pinterest or Twitter users post under their real name as a way to promote themselves and to build relationships and contacts. Fearing that retweeting a particular tweet may or may not lead to a fee would certainly have a chilling effect on speech, especially if the fees start to add up. Retweeting an ad may not necessarily contribute much to the marketplace of ideas, but the ad in our case meant to commemorate an historical event, and showcased one of the most famous U.S. monuments.

However, some may argue that having a way to make social users pay a fee for unauthorized use of protected work may eventually lead to people thinking twice before using images found online. The debate is likely to heat up if the issue of copyright small claims courts takes central stage in Congress (not likely for now).

Image is courtesy of Flickr user Jerry Huddleston under a CC BY 2.0 license.

 

This blog post was originally published on The 1709 Blog.

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Paris Court Denies Copyright Protection to Jimi Hendrix Photograph

July 2, 2015 · by ·

Gered Mankowitz is a British photographer who photographed many famous musicians such as Mick Jagger and Annie Lennox. He took several photographs of Jimi Hendrix in 1967. One of these photographs represents the musician, wearing a military jacket, holding a cigarette and puffing a cloud of smoke while looking at the photographer. An original print recently sold at auction for £2,750.

This photograph was used without authorization in 2013 for an advertising campaign by Egotrade, a French electronic cigarette company. The ad showed Jimi Hendrix holding an electronic cigarette and the “Egotabaco” brand was printed on the ad.

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Gered Mankowitz and Bowstir Ltd, the company to which Mr. Mankowitz has assigned his patrimonial rights to the photography, filed suit in France. Bowstir claimed copyright infringement and Mr. Mankowitz claimed droit moral infringement. On May 21, the Paris Tribunal de Grande Instance (TGI), a court of first instance, ruled that the Jimi Hendrix photograph could not be protected by French intellectual property law, as it was not original.

French intellectual property law does not provide a definition of “originality.” Article L. 111-1 of the French Intellectual Property Code provides that “[t]he author of a work of the mind shall enjoy in that work, by the mere fact of its creation, an exclusive intangible property right enforceable against all. This right shall include attributes of intellectual and moral attributes as well as patrimonial attributes.” Article L. 112-1 specifies that the law “protects the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.”

The TGI cited the European Court of Justice (ECJ) Eva Maria Painer. v. Standard Verlags case, where the Court had discussed the originality of a picture taken by a school photographer. For the ECJ, which the TGI cited verbatim,

“[a]s stated in recital 17 in the preamble to Directive 93/98, an intellectual creation is an author’s own if it reflects the author’s personality. That is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices. … As regards a portrait photograph, the photographer can make free and creative choices in several ways and at various points in its production. In the preparation phase, the photographer can choose the background, the subject’s pose and the lightening. When taking a portrait phoograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the ones he wishes to adopt or, where appropriate, use computer software. By making those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’” (ECJ 88-92).

Indeed, Recital 17 of Directive 93/98/EEC states that a photograph is original “if it is the author’s own intellectual creation reflecting his personality, no other criteria such as merit or purpose being taken into account.” Article 6 of the same Directive states that photographs are original if “they are the author’s own intellectual creation.” This directive was repealed by Directive 2006/116/EC, of which Recital 16 reprises the same words than Recital 17.

The TGI then examined the Jimi Hendrix photograph. Gered Mankowitz had explained to the court that

“this photograph of Jimi Hendrix, as extraordinary as it is rare, succeeds in capturing a fleeting moment of time, the striking contrast between the lightness of the artist’s smile and the curl of smoke and the darkness and geometric rigor of the rest of the image, created particularly by the lines and angles of the torso and arms. The capture of this unique moment and its enhancement by light, contrasts and the narrow framing of the photograph on the torso and head of Jimi Hendrix reveal the ambivalence and contradictions of this music legend and make the photograph a fascinating work of great beauty which bears the stamp and talent of its author.”

This argument did not convince the TGI as Mr. Mankowitz,

“as doing so, satisfied himself by highlighting the aesthetic characteristics of the photography which are distinct from its originality which is indifferent to the merit of the work, and does not explain who the author of the choices made regarding the pose of the subject, his costume and his general attitude. Also, nothing [in this argument] allows the judge and the defendants to understand if these elements, which are essential criteria in assessing the original features claimed, that is, the framing, the use of black and white, the light decor meant to highlight the subject, and the lighting being themselves typical fora portrait photography showing the subject facing, with his waist forward, are the fruit of the reflection of the author of the photograph or the subject, and if the work bears the imprint of the personality of Mr. Mankowitz or of Jimi Hendrix.”

Since the judges are therefore not able to appreciate whether this photograph is indeed original, the TGI ruled hat the photography lacked the originality necessary for its protection by French law, and that “the failure of the description of the characteristic elements of the alleged originality also constitutes a violation of the principle of defense rights.” The TGI thus concluded that Mr. Mankowitz had no intellectual property rights over the photograph.

By doing so, the TGI did not deny that this particular photography of Jimi Hendrix is not original. Rather, the court was not convinced that originality of the work was the result of choices made by Mr. Mankowitz. This case is less about what is an original work than how to prove that a work is indeed original.

As such, this ruling should give pause to French IP practitioners defending the rights of a photographer, as they must now prove why the author chose the different elements of a photograph and how these choices reflect his personality in such a way that the work is original. However, the case will be appealed, and so the debate on what is an original work, and how to prove, it is still ongoing in France.

 

Image is courtesy of Flickr user SarahElizabethC under a CC BY-ND 2.0 license.

This post was originally  published on The 1709 Blog.

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