Works Posted on Public Instagram Accounts Can be Used by Third Parties Without Infringing Copyright

April 24, 2020 · by ·

A recent decision from the Southern District of New York (SDNY) should give pause to artists promoting their works by posting them on their public social media accounts.

Mashable had offered professional photographer Stephanie Sinclair 50 dollars for licensing rights for one of her photographs, to illustrate an article on female photojournalists featuring her and several others.

Ms. Sinclair did not accept the offer, and Mashable then embedded the photo that Plaintiff had previously published on her public Instagram account to illustrate the article. Ms. Sinclair asked Mashable to take down the picture. It refused and Ms. Sinclair then filed a copyright infringement suit.

Mashable moved to dismiss, claiming that, by posting the photograph on her public Instagram account, Plaintiff had granted Instagram the right to license the photograph, and that, it turn, Instagram had granted Mashable a valid sublicense.

United States District Judge Kimba M. Wood from the Southern District of New York (SDNY) granted the motion to dismiss, finding that Mashable had used the photograph pursuant to a valid sublicense from Instagram, which Terms of Use state that users grant Instagram “a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the [c]ontent [posted] on or through [Instagram],” if the content is posted on a public, not a private account.

An image published on a website can be “embedded” in another page if a specific “embed” code has been added to the HTML instructions incorporating the image, which directs the browser to the third-party server to retrieve the image. The embedded image then is hyperlinked to the third-party website.

In our case, Plaintiff’s photograph appeared embedded on the Mashable website page, but was not hosted on Mashable’s website server. It was hosted on Instagram’s server, after Plaintiff had posted it on her public account.

In a similar case, Goldman v. Breitbart, the SDNY had rejected in 2018 the “server’s test“ laid out by the Ninth Circuit in Perfect 10, Inc. v. Amazon. com, Inc., which was a hyperlinking case, not an image embedded case. Under this test, images appearing on a site using frames and in-line links are not a display of the full-size images stored on and served by another website.

While noting that in-line linking works, like embedding, is based on HTML code instructions, United States District Judge Katherine B. Forrest had not applied the server test in Goldman, finding it inappropriate to the specific facts of this case and also “[not] adequately grounded in the text of the Copyright Act.” She found that using an embedded tweet reproducing a photograph protected by copyright to illustrate an article was infringing.

In Goldman, the author had not originally published the photograph on Twitter. Instead, he had uploaded it in his Snapchat Story. It became viral and was published on Twitter by a third party. Judge Wood explained in a footnote that, as Instagram had granted Mashable a valid license to display the work, the court did not need to address the issue of whether embedding an image is an infringing display of the work.

Take away: by posting a work protected by copyright on a public Instagram account an author automatically transfers rights to the social media site, including the right to sub-license a worldwide license to use it. The author not wishing to transfer these rights is only left with the option of making his or her account private.

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Filed Under: Copyright, Southern District of New York · Tagged: , ,

A Study in Trademarked Characters

February 22, 2019 · by ·

The characters created by Disney, Marvel, and LucasFilms are valuable intellectual property and are protected both by copyright and by trademark. However, a recently decided case in the Southern District of New York (SDNY), Disney Inc. v. Sarelli, 322 F.Supp.3d 413 (2018), demonstrates that preventing the unauthorized use of such characters may not be as easy as expected.

In this case, Plaintiffs are Disney Enterprises, Marvel Characters and LucasFilm, all of which own copyrights and trademarks in many of the most famous characters in the world, such as Mickey Mouse, Hulk, and Chewbacca. These characters were first featured in movies like Frozen, The Avengers or Star Wars, and are now licensed or featured in derivative products such as comic books, video games, or theme parks. Their exploitation is highly lucrative.

When visiting Plaintiffs’ theme parks, one has a chance to meet the characters “in person.” This experience is also offered by Characters for Hire, a New York company offering, as the name implies, character hiring services. The company’s principal owner is Nick Sarelli (Defendant). Characters for Hire offers a service wherein actors dressed in costumes entertain guests during birthday parties or corporate events. For example, actors have allegedly dressed as Mickey, Elsa and Anna from Frozen, Captain America and Hulk from The Avengers, and Luke Skywalker and Darth Vader from Star Wars.

The contracts Defendants provided to their clients contained disclaimer language, stating, for example, that Defendants do not use trademarked and licensed characters. The contracts also warned clients that the costumes may differ from those seen in movies “for copyright reasons,” adding that “[a]ny resemblance to nationally known copyright character is strictly coincidental.”

These disclaimers did not appease Plaintiffs, who sent several cease and desist letters to Defendants before filing a federal copyright and trademark infringement suit and a New York trademark dilution suit.

While Judge Daniels from the SDNY granted Defendants’ motion for summary judgment and dismissed Plaintiffs’ claim for trademark infringement on August 9, 2018, he denied the motion to dismiss the copyright infringement claim and the trademark dilution claim.

The descriptive fair use defense failed

Plaintiffs claimed that the use of their trademarked characters to advertise and promote Defendants’ business, along with their portrayal by costumed actors, was likely to confuse consumers as to the origin of the services.
Defendants argued that their use of Plaintiffs’ characters was descriptive and nominative fair use, and that there was no likelihood of confusion.

Descriptive fair use is an affirmative defense to a trademark infringement suit, as Section 33(b)(4) of the Trademark Act allows “use… of a term or device which is descriptive of and used fairly and in good faith [but] only to describe the goods or services of such party, or their geographic origin.” In other words, a defendant can use plaintiffs’ trademarks in a descriptive sense, or to describe an aspect of his own good or service.

For such a defense to succeed in the Second Circuit, a defendant must prove that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith (Kelly-Brown v. Winfrey at 308). This defense failed in the present case, as Defendants had not made a descriptive use of Plaintiffs’ marks. Instead, Judge Daniels found that their ads “were specifically designed to evoke [Plaintiff’s marks] in consumers’ minds…”

The nominative fair use defense also failed

Defendants also claimed that they used Plaintiffs’ marks to describe their own products. Such nominative fair use is a defense to a trademark infringement suit if such use “does not imply a false affiliation or endorsement by the plaintiff of the defendant” (Tiffany v. eBay at 102-103). But this nominative fair use defense also failed, as Defendants used Plaintiffs’ marks to identify their own service, which is hiring out characters for parties, rather than Plaintiffs’ trademarked characters.

Defendants’ use of characters was not trademark infringement
Judge Daniels used the eight-factor Polaroid test used by the Second Circuit in trademark infringement cases to determine whether Defendants’ use of Plaintiffs’ marks were likely to confuse consumers.

While Plaintiffs’ marks are undoubtedly strong (first factor), the similarity of the marks (second factor), weighed only slightly in Plaintiffs’ favor because Defendants used different names for their characters than Plaintiffs’ trademarked character names, e.g., “Big Green Guy,” “Indian Princess,” and “The Dark Lord” instead of Hulk, Pocahontas and Darth Vader.

The third and fourth Polaroid factors, the proximity of the goods and services, and the possibility that the senior user will enter the market of the junior user, were found to weigh in Defendants’ favor. There was no evidence that Plaintiff has plans to expand into the private entertainment service industry.

The fifth Polaroid factor, evidence of actual confusion, also weighed in Defendants’ favor, as there was no evidence that Defendants’ customers used the names of Plaintiffs’ trademarked characters when referring to Defendants’ services in online reviews or otherwise. Plaintiffs could not provide a survey proving customers’ confusion either.

Judge Daniels found the sixth factor, Defendants’ intent and evidence of bad faith, to also be in Defendants’ favor, since Defendants had put customers on notice that their services were not sponsored by or affiliated with Plaintiffs by using altered versions of Plaintiffs’ characters’ names and by removing Plaintiffs’ characters’ names in their online reviews.

The seventh Polaroid factor, the quality of Defendants’ products, was also in Defendants’ favor, as Defendants’ services, being of a lesser quality than Plaintiffs’, makes it likely that consumers will not be confused as to the source of the services.

The eighth Polaroid factor, consumer sophistication, also was in favor of Defendants, as Plaintiffs did not prove the sophistication level of Defendants’ relevant consumers.

Balancing these eight factors, the SDNY found no likelihood of consumer confusion and denied Plaintiffs’ motion for summary judgment on their trademark infringement claim.

Trademark dilution
Plaintiffs chose to claim trademark dilution under New York trademark dilution law, Section 360-1 of New York Business Law, and not under the Federal Trademark Dilution Act. This choice may have been made because the New York law does not require a mark to be famous to be protected, and a plaintiff only needs to prove the mark’s distinctiveness or secondary meaning.

Judge Daniels found that there was a genuine issue of fact as to whether Defendants’ use of Plaintiffs’ marks is likely to dilute Plaintiffs’ marks by tarnishment. A court will have to determine if Defendants provide services of poor quality.

Copyright

Plaintiffs argued that Defendants had “copied and used the images, likenesses, personas, and names of Plaintiffs’ characters…to promote and advertise its services online.” Defendants argued in response that the characters in which Plaintiffs own copyrights are based on prior works that are part of the public domain.

Both parties will have more chances to pursue their arguments as Judge Daniels denied the motion for summary judgment on copyright infringement. He found that Plaintiffs had presented as evidence screenshots from Defendants’ website and videos allegedly published by Defendants which had not been properly authenticated. More specifically, they had not been authenticated by someone “with personal knowledge of reliability of the archive service from which the screenshots were retrieved,” citing Specht v. Google, a 2014 Seventh Circuit case.

This post has been first published on the TTLF Newsletter on Transatlantic Antitrust and IPR Developments published by the Stanford-Vienna Transatlantic Technology Law Forum.

Image id courtesy of Flickr User Alan Levine, Public Domain.

 

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Filed Under: Trademark, TTLF Newsletter · Tagged: , , , , ,

Dentist Claiming to Own Copyright in Patient’s Negative Comments about Her Misused Copyright Law

March 24, 2015 · by ·

Going to the dentist is not particularly pleasant, but, at least, one does not usually expect to have to consult a copyright attorney before sitting in the chair.

However, patients of a Manhattan dentist had to sign, before being able to receive any treatment, including emergency treatment, a confidentiality agreement which assigned to the dentist and her dental practice a copyright over any comments made about her or her practice.

One of these patients was not satisfied by Defendant’s dental services and wrote about his dissatisfaction on Yelp and other sites allowing users to comment about services. According to the complaint, Defendant unsuccessfully asked these sites to remove Plaintiff’s comments, sent Plaintiff invoices purporting to charge $100 per day for the posting of these comments, and threatened to file a copyright infringement, breach of contract, and defamation suit if the comments were not removed from the sites.dentist

Several of the dentist’s patients filed a class action suit in November 2011 in the Southern District of New York (SDNY), claiming that, even if Defendant does indeed own the copyright in these comments, they were not infringing under the fair use defense of Section 107 of the Copyright Act. Defendant moved to dismiss but the motion was denied on March 27, 2013, by Judge Paul A. Crotty from the SDNY.

On February 27, 2015, Judge Crotty rendered a default judgment in favor of Plaintiff. The case is Lee v. Makhenevich, 1:11-cv-08665 (SDNY).

For Judge Crotty, the comments posted by Plaintiff were not infringing as they were fair use. Also, for the SDNY,

“[o[btaining the promise by plaintiff… in the [m]utual [a]greement to [m]aintain [p]rivacy… not to publish criticism of defendants, the [a]greement’s purported assignment of copyrights, and the assertion of copyright claims by defendants for the express purpose of preventing the dissemination of [plaintiff]’s [c]ommentary, constitute breaches of fiduciary duty and violations of dental ethics and are subject to the equitable defenses of unclean hands, and, as to such assignment and assertion, constitute copyright misuse.”

Judge Crotty also ruled that

“[Plaintiff]’s  assignment and promise in the [a]greement not to publish criticisms of defendant… are null and void for lack of consideration… [that Plaintiff]’s assignment and promise in the [a]greement not to publish criticisms of defendants are null and void for unconscionability… [that] [t]he [a]greement is a deceptive act or practice in violation of Section 349(a) of the New York General Business Law… and [that] [Plaintiff’]’s [c]ommentary is not actionable defamation under New York common law. “

I will only write about the copyright issues in this case.

Using Copyright to Suppress Speech

This case is interesting because it is a textbook example of a case where a party is using copyright to attempt to suppress speech.

The agreement signed by Plaintiff read, in part, that in consideration for the dentist to agree not to provide any lists of patients or personal information to any marketing companies, the patient would “assign… all Intellectual Property rights, including copyrights, to Dentist for any written, pictorial, and/or electronic commentary.” The agreement claimed that dentists are able to provide such information to third parties because of a “loophole” in HIPAA, the federal medical data privacy law, and added further that “Dentist feels strongly about Patient’s privacy as well as the Practice’s right to control its public image and privacy.” The agreement would last five years from the date of the dentist’s last service to the patient, or three years after the termination of the dentist-patient relationship.

HIPAA, however, forbids covered entities, such as MDs and dentists, from disseminating patient information for marketing purpose, so there is no need for such agreement to protect patient’s privacy.  The complaint argued that, since there are no “loopholes” in HIPAA, the assignment was null and void for lack of consideration. Judge Crotty agreed.

In his March 2013 order, Judge Crotty referred to all these actions as “aggressive and threatening conduct.” Indeed they were.

After Plaintiff had published negative comments on both Yelp and DoctorBase, he first received a letter from “North East PC/Attn Urgent/Legal” [catchy title, eh?] threatening him with a $100 000 lawsuit because he had violated the agreement. The letter, signed “Corporate Practice”, informed Plaintiff that the letter “shall serve [him] as the only notice prior to litigation” and contained a draft of a complaint which appeared ready to be filed, if the Plaintiff did not comply with the letter’s demands. The office of the dentist also sent Yelp and DoctorBase DMCA takedown notices, telling them that the dentist owned the copyright in the comments and asking them to take the comments down.

On October 17, 2011, Plaintiff received a letter from Defendant’s attorney, which stated that his comments posted online included damaging inferences which denigrate, defame, and cast aspersions upon the dentist and the dental office” and that “according to The Ethics of Medical Justice / Dental Justice Agreements, under the Code of Internet Ethics, your comments are not considered constructive commentaries but rather as personal attacks to the office’s well-being and reputation.” Medical Justice is the company which had written the agreement used by Defendant. The Center for Technology and Democracy filed a complaint in November 2011 with the Federal Trade Commission asking it to investigate Medical Justice, and the company has since stopped proposing such agreements to dentists and MDs.

Copyright Registration

But after having claimed that the comments infringed her copyright, and after having threatened to sue Plaintiff for copyright infringement, Defendant argued that there could not be a copyright infringement suit at all. In her memorandum of law to support her motion to dismiss, Defendant had claimed that the suit had to be dismissed because a copyright registration is a pre-requisite to any copyright infringement suit, but that Defendant had not registered her copyright in the comments.

Judge Crotty noted though,  in his March 2013 order,  that Plaintiff does not claim that his own copyright has been infringed, but, rather, that his comments “about Defendants’ hardly defensible practices are subject to copyright protection. Defendant’s argument that the copyright must be registered before relief turns the law upside down.”

Fair Use

Instead, Plaintiff claimed that “non-commercial use of copyrighted materials for criticism and comment is a paradigmatic fair use that is not infringing” and that “[t]he posting of [his comments]… can have no effect on their potential market or value because no such value exists.” On February 27, Judge Crotty agreed on that point.

Misuse 

Plaintiff also sought a declaration that the agreement’s promise not to publish criticisms, the purported acquisition of copyrights in the comments, and the assertion of copyright claims, constituted breaches of fiduciary duty, violations of dental ethics, and were subject to the equitable defenses of unclean hands and copyright misuse.

Judge Crotty agreed with Plaintiff on these points as well, and awarded him $4,766 in damages.

 

This post was originally published on The 1709 Blog.

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Filed Under: Copyright, Fair Use · Tagged: , ,

Paparazzi’s Photographs Protectable by US Copyright

February 18, 2015 · by ·

This blog post was first published on The 1709 Blog.

On January 26, 2015, the Southern District Court of New York (SDNY) denied summary judgment to Defendant, a web site which had used Plaintiff’s protected photographs without authorization. The case is BWP Media USA, Inc. v. Gossip Cop Media, LLC,13-civ-7574 (KPF) (SDNY 2015).

Plaintiff BWP Media is a media company specializing in celebrity pictures, which can either be described as “entertainment-related photojournalism,” as did the complaint, or, less demurely, as employing paparazzi to follow celebrities around and take their pictures. Plaintiff licenses its works to various media outlets, including TMZ. Defendant Gossip Cop is a website commenting celebrity gossip news and sometimes rating their accuracy on a scale from zero to ten.

gossipingladiesSecond Circuit Requires Plaintiff to Have Already Registered its Copyright

In order to illustrate some of its articles, Defendant reproduced without authorization three photographs and one video in which Plaintiff claimed copyright ownership. Defendant moved to dismiss, claiming fair use, but its arguments did not convince the court.

As copyright registration for the video, featuring actress Gwyneth Paltrow on a scooter, was pending at the time the copyright infringement was filed, the SDNY granted the motion to dismiss with respect to the video. Indeed, a majority of Second Circuit courts, of which the SDNY belongs, have held that a pending copyright application is not a copyright registration, which is a necessary prerequisite to file a copyright infringement suit under 17 USC §411(a).

Fair Use Claim Survives Motion to Dismiss

The three remaining works were photographs of celebrities, taken by paparazzi, which had been published online by various news organizations. For instance, a picture of Mila Kunis and Ashton Kutcher had been published by The Sun to illustrate an article claiming that the couple was moving to the UK. Defendant reproduced the photograph in an article rating this information to be false. Another image showed Robert Pattinson leaving the Chateau Marmont hotel. This image was used by Defendant to deny a report that the actor had partied hard that night. A third image showed Liberty Ross sans wedding ring, but Defendant did not comment on the original story about her alleged marital troubles.

The SDNY denied Defendant’s motion to dismiss the copyright infringement claim for these three pictures. Defendant had claimed fair use. The fair use defense is provided by 17 USC § 107, which  enumerates fours nonexclusive factors, the purpose and character of the use, the nature of the copyrighted work, the amount taken by Defendant and the effect of the use on the potential market. Even though this defense is a mixed  question of fact and law, the Second Circuit allows resolution of fair use inquiry at the motion to dismiss stage, if the facts necessary to establish the defense are evident on the face of the complaint.

First Factor: Transformative Use

The first factor asks whether the infringing work merely supersedes the original work or if, instead, it adds something new and is thus transformative.

The SDNY noted that the Second Circuit in Cariou v. Prince found that “[t]he law imposes no requirement that a work comment on the original or its author in order to be considered transformative” (at 706). The Cariou court had also noted that the commercial use of an infringing work may still be considered fair use, if it is transformative. Also, the Second Circuit recognized last year in Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P. that “[a]lmost all newspapers, books and magazines are published by commercial enterprises that seek a profit.”

The SDNY reasoned that Defendant is indeed a for-profit entity, but that it used the infringing pictures “to illustrate or bolster the stories run by The Sun [and other media outlets], and proceeds to attack the factual bases of these stories.” The SDNY added that “while [Defendant] Cop may [be] a far cry from Woodward and Bernstein” [that is called an “ironic understatement”] the fact that the news thus analyzed was “on the tawdry side of the news ledger” does not prevent a finding of fair use. The SDNY found the first factor to weigh in Defendant’s favor for the Kunis/Kutcher and the Patterson photographs, but not for the Ross’ photograph, as Defendant had not commented on the original report that the actress may have marital troubles.

Second Factor: Nature of the Work- Paparazzi Pictures may be Creative Works

IP attorneys feeling guilty if reading gossip magazines while waiting for their nails to dry may welcome the news that they are thus assessing whether such images should be protected by copyright. In the Second Circuit, it seems that the answer is yes.

The SDNY quoted a 2012 Sixth Circuit case, Balsey v. LFP, Inc., which held that, while a paparazzi photographer does “not direct [the subject] or create the background for the images,” he, however, does “ha[ve] control over the exposure of the film…[and] use[s] his artistic skills to edit the pictures for size, color, clarity, and [chooses] which images to publish based on the allurement of the subject” (Balsey at 760). Therefore, Plaintiff’s images may be considered creative works, even though they were taken by paparazzi. The SDNY nevertheless declined to give weight to the second favor in favor of either party.

Third Factor: The Amount Taken

To assess the third fair use factor, Second Circuit courts examined the portion of the original work which was used without authorization, which must be “reasonable in relation to the purpose of the copying” (Blanch v. Koons at 257). Also, the Supreme Court noted in Campbell v. Acuff-Rose that courts must look at the quantity of the materials used, but also their quality and importance (Campbell at 587).

Here, Defendant copied Plaintiff’s works in their entirety, which, according to the SDNY, “suggests that they were used to convey the ‘fact’ of the photograph to viewers” and that purpose is indeed reasonable for the SDNY. However, the SDNY once again differentiates the Liberty Ross ‘photograph from the other ones, as Defendant did not use it to comment about the veracity of breaking up rumors. As such, it “was used to convey precisely the same information as in its original publication.” The SDNY found the third factor to weigh in Plaintiff’s favor.

Fourth Factor: Effect on the Market

If the unauthorized copy usurps the market by offering a substitute product, there is no fair use. Defendant argued that it operates a “unique, transformative news reporting market” as it evaluates gossip, not merely republished them from other sources. However, the SDNY found that Defendant’s articles may be found to be adequate substitutes for the original articles. Therefore, they could deprive the media outlets buying pictures from Plaintiff, and, by extension, Plaintiff itself, of a portion of their market. The SDNY found therefore that the fourth factor weighed in Plaintiff’s favor.

The case will now proceed further.

Image of the ladies gossiping courtesy of the Boston Public Library, under a CC BY 2.0 license, 

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Plaintiffs Appeal in Manhattan Privacy Case

September 16, 2013 · by ·

2890653367_3beb209a81Plaintiffs who lost last month their privacy case against a photographer who had taken pictures of them and their children without permission filed a notice of appeal to the Appellate Division of the New York Supreme Court on September 5.

This is an interesting case about balancing two competing interests, the right to privacy and the right to freedom of expression.

Using a telephoto lens, defendant Arne Svenson took several photographs of people living in the building across from his own apartment in Manhattan, taking advantage of the fact that the building is a glass tower with floor-to-ceiling windows for each apartment. People are shown going on with their daily activities, having their breakfast, cleaning or sleeping.

Svenson did not ask for permission to take these pictures and later used these images for an exhibition, “The Neighbors” presented this year at a Chelsea art gallery.

Some of the people photographed were minors, and their parents, Martha and Matthew Foster, filed suit individually and on behalf of their children against Svenson. Judge Eileen Rakower from the Supreme Court of New York granted on August 1 defendant’s motion to dismiss.

New York Privacy Law

The state of New York does not recognize a common law right of privacy. It only recognizes a right not to have one’s likeness used for commercial purposes, New York Civil Rights Law §§ 50 and 51. Under § 50,“[a] person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.” § 51 provides plaintiff for injunctive relief and damages.

Therefore, it is not illegal under New York law to use someone’s likeness without permission for a purpose which is not commercial. Plaintiff must prove to succeed in his claim the (1) use of his name, portrait, picture or voice (2) “for advertising purposes or for the purposes of trade” (3) without consent and (4) within the state of New York.

Svenson certainly used the likeness of plaintiffs. The faces of his subjects are not seen, but some of them are shown in “lost profile” which certainly would allow people knowing them to recognize them. The preliminary injunction sought to immediately end “the dissemination of two photographs showing the ‘[plaintiffs’] children faces and partially-clad bodies. “

So Svenson used the likeness of the plaintiffs, without their consent, within the state of New York. Was this use “for advertising purposes or for the purposes of trade”?

Trade/Advertising Purposes or Free Speech?

Plaintiffs alleged defendant’s photos constituted advertising and trade under §§ 50 and 51, as Svenson sold his photographs through the gallery which organized “The Neighbors” exhibition.

But their arguments did not convince Judge Rakower from the New York Supreme Court who found this was not a commercial use of the likeness of plaintiffs and their children. That is consistent with New York case law. For instance, in Simeonov v. Tiegs, the New York City Civil Court held in 1993 that” [a]n artist may make a work of art that includes a recognizable likeness of a person without her or his written consent and sell at least a limited number of copies thereof without violating Civil Rights Law §§ 50 and 51.”

Judge Rakower also noted that New York law protects freedom of expression, citing a 1982 New York Court of Appeals case, Arrington v. N.Y. Times. In Arrington, the photograph of plaintiff, taken without his permission in the streets of New York City, was later used to illustrate an article on “The Black Middle Class” in the New York Times magazine. The Court of Appeals ruled that the use was not commercial, even” though the dissemination of news and views is carried on for a profit or that illustrations are added for the very purpose of encouraging sales of the publications.”

Judge Rakower cited the Southern District of New York Hoepker v. Kruger case, where the SDNY ruled in 2002 that artist Barbara Kruger could use plaintiff Charlotte Dabney’s likeness in her “It’s a small world, but not if you have to clean it” work . The SDNY noted then that “[t]he advertising and trade limitation in New York’s privacy statutes was crafted with the First Amendment in mind. Through Sections 50 and 51, the New York legislature sought to protect a person’s right to be free from unwarranted intrusions into his or her privacy, while at the same time protecting the quintessential American right to freedom of expression.”

In our case, Judge Rakower reasoned that Svenson was “communicating his thoughts and ideas to the public” and that his photographs “serve more than just an advertising or trade purpose because they promote the enjoyment of art in a form of a displayed exhibition.” Even if the exhibition had been advertised, that was “beyond the limits of the statute because it related to the protected exhibition itself.”

As plaintiffs could not establish a likelihood of success on the merits, the NY Supreme Court granted defendant’s motion to dismiss. Judge Rakower noted that “[w]hile it makes Plaintiffs cringe to think their private lives and images of their small children can find their way into the public forum of an art exhibition, there is no redress under the current laws of the State of New York.” It is doubtful that the Appellate Division will have a different view of the case, but we’ll see.

Image is Goat on a Ledge in Aruba,, courtesy of Flickr user Serge Melki pursuant to a CC BY 2.0 license.

 

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