Cruz v. Cox Media Group, LLC

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

ALEX CRUZ,

Plaintiff, MEMORANDUM & ORDER

. 18-CV-1041 (NGG) (AKT)

-against-

COX MEDIA GROUP, LLC,

Defendant.

NICHOLAS G. GARAUFIS, United States District Judge.

Plaintiff Alex Cruz brings this action against Defendant Cox Me-

dia Group, LLC (“Cox”) alleging infringement of Plaintiffs

copyright in a photograph he took of the arrest of terror suspect

Sayfullo Saipov. (Compl. (Dkt. 1).) Before the court are cross mo-

tions for partial summary judgment. Plaintiff seeks judgment on

Cox’s liability for infringement and dismissal of Cox’s affirmative

defenses. (See Pl.’s Mem. in Supp. of Mot. for Part. Summ. J.

(Dkt. 29) (“PL.’s Mem.”); Pl.’s Mem. in Opp. to Def.’s Cross Mot.

for Part. Summ. J. (Dkt. 40) (“PI.’s Opp.”).) Cox opposes Plain-

tifPs motion and seeks either a judgment of no infringement or,

in the alternative, fair use. (See Def.’s Cross Mem. in Supp. of

Mot. for Part. Summ. J. (Dkt. 34) (“Def. Mem.”); Defs Reply in

Supp. of Cross Mot. for Summ. J. (Dkt. 42) (“Def. Reply”).) For

the following reasons, Plaintiffs motion is GRANTED and De-

fendant’s motion is DENIED.

I. BACKGROUND

The court constructs the following statement of facts from the

parties’ Local Rule 56.1 Statements and the admissible evidence

they submitted. Except where otherwise noted, the following

facts are undisputed. All evidence is construed in the light most

favorable to the non-moving party with all “reasonable infer-

ences” drawn in its favor. ING Bank N.V. v. M/V Temara, IMO No.

9333929, 892 F.3d 511, 518 (2d Cir. 2018).

Plaintiff is Alex Cruz, a New York City native who works at Jen-

nifer Convertibles, a furniture company in downtown Brooklyn.

(Oct. 18, 2018 Tr. of Cruz Dep. (“Cruz Dep.”) (Dkt. 37-1) 9:17-

25.) Cruz is not and has never been a professional photographer.

(Def.’s R. 56.1 Stmt. (“Def. 56.1”) (Dkt. 39) 4 37.) On October

31, 2017, Cruz was walking on Chambers Street in the Tribeca

neighborhood of New York City, on the way to visit the apart-

ment of his girlfriend, Trish McFarlane. (id. § 42.) Crux noticed

a “big commotion” near the intersection of Chambers and West

Streets, and saw a man acting erratically as law enforcement of-

ficers approached him. (Id.) As Cruz saw the scene unfolding, he

reached for his iPhone and took a photograph of a criminal sus-

pect named Sayfullo Saipov, lying on the ground, being

apprehended by New York City police after Saipov had commit-

ted a terrorist attack (the “Photograph”). (See Ex. A hereto.)

After taking the Photograph, Cruz continued on to McFarlane’s

apartment and sent the Photograph to a friend, Lenny Bautista.

(Def. 56.1 46.) Until Bautista informed him otherwise, Cruz

believed he had taken a “simple picture” of somebody who ap-

peared to be “acting crazy.” (id. { 47.) Bautista posted the

Photograph to his Instagram account @illmaticNYC and, ini-

tially, took credit for the Photograph. (Pl.’s R. 56.1 Stmt. (“Pl.

56.1”) (Dkt. 33) 910.) However, McFarlane posted her own mes-

sage on Instagram, clarifying that it was Cruz, and not Bautista,

who had taken the Photograph. Ud.) Media organizations then

began contacting McFarlane, asking her to seek permission from

Cruz to republish the Photograph. Shortly thereafter, Cruz en-

tered into two separate licensing agreements (with Cable News

Network, Inc. (“CNN”), and NBC News (“NBC”), respectively), in

which Cruz granted the outlets permission to publish the Photo-

graph in exchange for licensing fees and credit. (Id. 4 11.) The

parties dispute the exact time Cruz entered into these agreements

with CNN and NBC: Cruz states that he entered into the agree-

ments “on or around October 31, 2017,” (See Pl. 56.1 49 12, 13),

while Cox maintains that CNN and NBC did not send proposed

licensing agreements to Cruz until November 1, 2017, and that

the October 31, 2017 licensing agreements Cruz produced in dis-

covery are not final executed documents. (See Def. 56.1 94 12,

13.) Regardless, it is undisputed that media outlets expressed in-

terest in publishing the Photograph and sought to enter into

licensing agreements with Cruz to do so.

One media company that did not seek to enter into a licensing

agreement with Cruz was Cox, a national media company with

13 television stations, 61 radio stations, four newspapers, and 72

websites. (Def. 56.1 4 36.) Cox’s media portfolio includes the

WSB-TV television station in Atlanta, Georgia, as well as its asso-

ciated wsbtv.com website. (fd.) On October 31, 2017, Cox

published a news story on its WSB-TV website, eventually bear-

ing the title “8 dead in ‘cowardly act of terror’ in New York City”

(the “Article”). (id. 4 55.) Later that same day, the Photograph

was added to the gallery of video and photographic content for

the Article. id.) The Photograph appeared, in full, as the second

item in a gallery of video and photographic content positioned

below both the headline and the date and time that the Article

was last updated on the WSB-TV website, as well as on Cox’s

Twitter and Facebook pages. (Decl. of James Trigg (“Trigg

Decl.”) (Dkt. 37) 4 5; see also Oct. 31, 2017 WSB-TV Tweet

(“WSB Tweet”) (Dkt. 30-5) at ECF 2; Oct. 31, 2017 WSB-TV Fa-

cebook Post (“WSB Facebook Post”) at ECF 2).) Cox did not

credit Cruz as the author of the Photograph on the face of the

Article or on the WSB Tweet and Facebook Post, nor did Cox seek

Cruz’s permission to publish the Photograph or license the Pho-

tograph directly from Cruz. (Pl. 56.1 94 21-24.)

On November 1, 2017, Cruz, acting without counsel, filed a cop-

ytight application with the U.S. Copyright Office seeking to

register the Photograph (as well as another photograph Cruz

took of the same scene). (Nov. 1, 2017 Copyright Application

(Dkt. 37-1) at ECF 91.) A few days later, on November 7, 2017,

. Cruz, now through counsel, filed a new registration of the Pho-

tograph with the Copyright Office (Pl. 56.1 4 31; Cruz Dep. at

51:21-54:12.) The application was approved and Cruz currently

possesses a registration certificate for the Photograph, numbered

VA 2-074-488 and dated November 7, 2017. (PL 56.1 { 32; see

also Certificate of Registration (Dkt. 31-2) at 1.)

I. LEGAL STANDARD

A court must grant summary judgment when “the movant shows

that there is no genuine dispute as to any material fact and the

movant is entitled to judgment as a matter of law.” Fed. R. Civ.

Pro. 56(a). “A ‘material’ fact is one capable of influencing the

case’s outcome under governing substantive law, and a ‘genuine’

dispute is one as to which the evidence would permit a reasona-

ble juror to find for the party opposing the motion.” Figueroa v.

Mazza, 825 F.3d 89, 98 (2d Cir. 2016) (citing Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 248 (1986)). The movant may dis-

charge its initial burden by demonstrating that the non-movant

“has ‘failed to make a showing sufficient to establish the existence

of an element essential to that party’s case, and on which that

party will bear the burden of proof at trial.” Lantheus Med. Imag-

ing, Inc. v. Zurich Am. Ins. Co., 255 F. Supp. 3d 443, 451 (S.D.N.Y.

2015) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 322-323

(1986) (alteration adopted)).

“To determine whether an issue is genuine, ‘[t]he inferences to

be drawn from the underlying affidavits, exhibits, interrogatory

answers, and depositions must be viewed in the light most favor-

able to the party opposing the motion.” Mikhaylov v. Y & B Trans.

Co., No. 15-CV-7109 (DLI), 2019 WL 1492907, at *3 (E.D.N.Y.

4:

Mar. 31, 2019) (quoting Cronin v. Aetna Life Ins. Co., 46 F.3d

196, 202 (2d Cir. 1995)). While the court must draw all infer-

ences in favor of the non-movant, the non-movant “may not ‘rely

on mere speculation or conjecture as to the true nature of the

facts to overcome a motion for summary judgment.” Fletcher v.

Atex, Inc., 68 F.3d 1451, 1456 (2d Cir. 1995) (quoting Knight v.

U.S. Fire Ins. Co., 804 F.2d 9, 12 (2d Cir. 1986)).

The same standards apply to cross-motions for summary judg-

ment. “[E]ach party's motion must be examined on its own

merits, and in each case all reasonable inferences must be drawn

against the party whose motion is under consideration.” Morales

v. Quintel Entm’t, Inc., 249 F.3d 115, 121 (2d Cir. 2001) (citing

Schwabenbauer v. Bd. Of Educ., 667 F.2d 305, 324 (2d Cir.

1981)). “[W]hen both parties move for summary judgment, as-

serting the absence of any genuine issues of material fact, a court

need not enter judgment for either party. Rather, each party’s

motion must be examined on its own merits, and in each case all

reasonable inferences must be drawn against the party whose

motions is under consideration.” Id. at 121 (citations omitted).

Ill. DISCUSSION

. A. Copyright Infringement

Cruz moves for summary judgment on the issue of copyright in-

fringement, arguing that Cox infringed his copyright by

unlawfully publishing the Photograph for its own use. (P1.’s Mem.

at 6; Pl’s. Opp. at 1.) The court finds that the undisputed facts

demonstrate Cox’s liability for copyright infringement and grants

Cruz’s motion.

“To establish [copyright] infringement two elements must be

proven: (1) ownership of a valid copyright, and (2) copying of

constituent elements of the work that are original.” Feist Publ’ns,

Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).

1. Ownership

“A certificate of copyright registration is prima facie evidence of

ownership of a valid copyright, but the alleged infringer may re-

but that presumption.” Scholz Design, Inc. v. Sard Custom Homes,

LLC, 691 F.3d 182, 186 (2d Cir. 2012) (citing MyWebGrocer, LLC

v. Hometown Info, Inc., 375 F.3d 190, 192 (2d Cir. 2004)). Here,

Cruz has provided a copy of his Certificate of Registration for the

Photograph. (See Certificate of Registration.) He has therefore

established a prima facie case that he owns the copyright in the

Photograph.

2. Originality

Cox does not dispute either that Cruz has a valid Certificate of

Registration or that Cox “actually copied” the Photograph. In-

stead, Cox argues that Cruz has failed to establish that the

Photograph was sufficiently original to qualify for copyright pro-

tection. (Def. Mem. at 6.)

Copyright protection only extends to “original works of author-

ship.” 17 U.S.C. § 102 (emphasis added); see Feist, 499 U.S. at

345 (“[t]he sine qua non of copyright is originality.”). “Original,

as the term is used in copyright, means only that the work was

independently created by the author (as opposed to copied from

other works), and that it possesses at least some minimal degree

of creativity.” Feist, 499 U.S. at 345 (citation omitted). “A photo-

graph may be original in three respects: . . . rendition . . . timing

... Land] creation of the subject.” Mannion v. Coors Brewing Co.,

377 F. Supp. 2d 444, 452-54 (S.D.N.Y. 2005); see also Roger v.

Koons, 960 F.2d 301, 307 (2d Cir. 1992) (explaining that the

protectible, original elements of a photograph include “posing

the subjects, lighting, angle, selection of film and camera, evok-

ing the desired express, and almost any other variant involved.”).

1 See infra at 8.

As such, “almost any photograph may claim the necessary origi-

nality to support a copyright.” Mannion, 377 F. Supp. 2d at 450

(citation and internal quotation marks omitted). However, a pho-

tograph may lack originality in rare cases, such as “where a

photograph of a photograph or other printed matter is made that

amounts to nothing more than slavish copying.” Bridgeman Art

Library, Ltd. v. Corel Corp., 36 F. Supp. 2d 191, 196 (S.D.N.Y.

1999) (citation and internal quotation marks omitted).

Cox argues that Cruz “did not make a single creative choice” in

taking the Photograph (Def. Mem. at 9), such that the Photo-

graph does not possess the “modicum of creativity” required to

receive copyright protection. (See id. at 8 (quoting Feist, 499 U.S.

at 346 ).) This argument misses the mark. As with almost any

photograph, the Photograph reflects creative choices, including

Cruz’s timirig for when he took the Photograph. See Mannion,

377 F. Supp. 2d at 452 (“[A] person may create a worthwhile

. photograph by being at the right place at the right time.”) (cita-

tion omitted). Indeed, Cruz’s recognition of what he considered

a “big commotion” (Def. 56.1 4 42), and his decision to take the

Photograph when he did (ie. as law enforcement closed in on

Saipov after he had been shot and was lying on the ground) were

sufficient creative choices to meet the low threshold required for

copyright protection. In addition, the Photograph is not an exam-

ple of a “slavish copy” not entitled to copyright protection. Cf.

Bridgeman Art Library, 36 F. Supp. 2d at 197 (finding no copy-

right in photographic transparencies that sought to reproduce

precisely paintings in the public domain). ,

Cox points to Oriental Art Printing v. Goldstar Printing Co. (see,

e.g., Def. Mem. at 11-12) to support its argument, but that case

is readily distinguishable. There, the court found that plaintiffs’

photographs of commonly served Chinese food dishes lacked the

“requisite originality” to receive copyright protection because

they served “a purely utilitarian purpose” of giving customers a

“better understanding of what a particular dish contains” 175 F.

Supp. 2d 542, 546-47 (S.D.N.Y. 2001). In addition, the court

noted that the aim of the Copyright Act would not be furthered

by finding the photographs in question eligible for copyright pro-

tection because such a holding would “effectively. . . permit

[plaintiffs] to monopolize the market for printing menus that de-

pict certain commonly served Chinese dishes.” Id. at 548. Here,

by contrast, Cruz’s Photograph does not raise those same con-

cerns. Unlike the photographs in Oriental Art Printing that only

served to inform consumers of Chinese cuisine about their food

options, the Photograph at issue here recorded a (manifestly)

newsworthy event at a unique time and from a unique angle.

A holding extending Oriental Art Printing as Cox urges would im-

properly limit the scope of originality under the Copyright Act. A

recent case in the Southern District of New York, Sands v. CBS

Interactive, makes plain why. No. 18-CV-7345 (JSR), 2019 WL

1447014, at *1 (S.D.N.Y. Mar. 13, 2019). In that case, a papa-

razzo photographed actors on the set of an upcoming Netflix

series The Punisher. Id. The photos were subsequently published

alongside an article entitled “New Punisher Images Reveal Re-

turn of Key Daredevil Character.” Id. While the Sands court had

no trouble in finding that the photographs in question met the

low creativity threshold necessary to assert copyright protection,

see id. at *3, the result would have been different had it extended

Oriental Art Printing as Cox urges this court to do now. This is

because the Sands photos (under Cox’s reading of Oriental Art

Printing) would be deemed to only serve the purpose of inform-

ing the public of narrative developments in a popular television

series, and therefore would lack originality. Yet, such a result

would not comport either with the intent of the Copyright Act or

the fact that “almost any photograph may claim the necessary

originality to support a copyright.” Mannion, 377 F. Supp. 2d at

450 (internal quotation marks omitted).

Finally, this case is distinguishable from Oriental Art Printing in

another important way. In Oriental Art Printing, the court held

that finding the photographs in question copyrightable would

give plaintiffs an “unwarranted monopoly” because it “effectively

would permit them to monopolize the market for printing menus

that depict certain commonly served Chinese dishes.” Oriental

Art Printing, 175 F. Supp. 2d at 548 (citation omitted). “Such a

result,” the court explained “was not in Congress’ intent in enact-

ing the Copyright Act.” Id. Here, by contrast, there is no such

concern of an “unwarranted monopoly” because of the unique-

ness of the Photograph and the one-time-only nature of its

subject matter.

3. Actual Copying

Once a valid copyright registration is established, “a plaintiff

must show that his work was actually copied and then must show

that the copying amounts to an improper or unlawful appropria-

tion.” Otto v. Hearst Comms., Inc., 345 F. Supp. 3d 412, 415

(S.D.N.Y. 2018) (citation omitted) (alterations adopted). Here,

the parties do not dispute that Cox actually copied the Photo-

graph for use on its website and social media accounts. As such,

Cruz has established this element of his copyright infringement

claim.

Accordingly, the court finds that Cox infringed on Cruz’s copy-

right when it published the Photograph. The court therefore

grants Cruz’s motion for summary judgment on this issue.

B. Affirmative Defenses

Both Cruz and Cox seek summary judgment on Cox’s fair use de-

fense. (See, e.g., Pl.’s Mem. at 9; Def Mem. at 15.) Cruz further

seeks summary judgment on Cox’s remaining defenses. The court

addresses each in turn.

1. Fair Use

The purpose of copyright law is “[t]o promote the Progress of

Science and useful Arts,” U.S. Const., Art. I, § 8, cl. 8, and “ex-

pand public knowledge and understanding...by giving

potential creators exclusive control over copying of their works,

thus giving them a financial incentive to create informative, in-

tellectually enriching works for public consumption.” Authors

Guild v. Google, Inc., 804 F.3d 202, 212 (2d Cir. 2015). There are

limits, however, on creators’ control over their own works, in-

cluding the doctrine of fair use. See Swatch Grp. Mgmt. Servs. Ltd.

v. Bloomberg L.P., 756 F.3d 73, 81 (2d Cir. 2014) (“Because cop-

yright law recognizes the need for breathing space, however, a

defendant who otherwise would have violated one or more of

these exclusive rights may avoid liability if he can establish that

he made fair use of the copyrighted material.” (citation and in-

ternal quotation marks omitted)).

“[T]he fair use determination is an open-ended and context sen-

sitive inquiry,” in which the court weighs four non-exclusive

statutorily provided factors in light of the purposes of copyright.

Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013) (citation omit-

ted). These factors are: (1) the purpose and character of the use,

(2) the nature of the copyrighted work, (3) the amount and sub-

stantiality of the portion used in relation to the copyrighted work

as a whole, and (4) the effect of the use upon the potential mar-

ket or value of copyrighted work. 17 U.S.C. § 107. The Second

Circuit has held that the party seeking a judgment of fair use need

not demonstrate that every factor weighs in its favor. See Cariou,

714 F.3d at 705. Rather, “all factors are to be explored, and the

results weighed together, in light of the purposes of copyright.”

Swatch, 756 F.3d at 81 (quoting Campbell v. Acuff-Rose Music,

Inc., 510 U.S. 569, 578 (1994) (alterations adopted)). Finally,

the determination of “fair use is a mixed question of law and

fact,” Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S.

10

539, 560 (1985), and the Second Circuit has repeatedly “re-

solved fair use determinations at the summary judgment stage

. Where there are no genuine issues of material fact,” Blanch v.

Koons, 467 F.3d 244, 250 (2d Cir. 2006) (quoting Castle Rock,

150 F.3d at 137 (alterations adopted)).

a. Purpose and Character of the Work

The first statutory fair use factor is “the purpose and character of

the use, including whether such use is of a commercial nature or

is for nonprofit educational purposes.” 17 U.S.C. § 107(1). This

first factor, which has been described as “[t]he heart of the fair

use inquiry,” On Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d

Cir. 2011), seeks to determine “whether and to what extent the

work is transformative,” Campbell, 510 U.S. at 579 (internal quo-

tation marks omitted). Whether a work is transformative

depends on the extent to which it “merely ‘supersedes the objects’

of the original creation, or instead adds something new, with a

further purpose or different character, altering the first with new

expression, meaning, or message.” Id. at 579 (quoting Folsom v.

Marsh, 9 F.Cas. 342, 348 (C.C.D. Mass. 1841) (Story, J.) (cita-

tions omitted) (alterations adopted)); see also Pierre N. Leval,

Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111

(1990). With regard to photographs, “[u]sing a photo for the pre-

cise reason it was created does not support a finding that the

nature and purpose of the use was fair.” BWP Media USA, Inc. v.

Gossip Cop Media, Inc., 196 F. Supp. 3d 395, 407 (S.D.N.Y. 2016)

(citation omitted).

While news reporting is specifically named in 17 U.S.C. § 107 as

a potential method of fair use, “a news reporting purpose by no

means guarantees” such a finding. Swatch, 756 F.3d at 85 (citing

Harper & Row, 471 U.S. at 557). The Second Circuit has recog-

nized that “[iJn the context of news reporting and analogous

activities, .. . the need to convey information to the public accu-

rately may in some instances make it desirable and consonant

11

with copyright law for a defendant to faithfully reproduce an

original work without alteration.” Id. at 84. At the same time,

“[t]he promise of copyright would be an empty one if it could be

avoided merely by dubbing the infringement a fair use ‘news re-

port.” Harper & Row, 471 U.S. at 557; see also Swatch, 756 F.3d

at 85 (“A news organization thus may not freely copy creative

expression solely because the expression itself is newsworthy.”).

Applying those standards here, the first factor cuts strongly

against Cox. Cox’s use of the Photograph was not transformative,

and the court disagrees with Cox that it “addf[ed] context” to the

Photograph (Def. Mem. at 19) such that its use of the Photograph

was fair.

To the extent that Cox argues that its use of the Photograph was

fair because “news reporting is a favored use” (Def. Mem. at 16),

the court is not persuaded. Cox is correct that 17 U.S.C. § 107

specifically lists news reporting as a potential method for fair use.

Yet Cox forgets that “[d]isplay of a copyrighted image or video

may be transformative where the use serves to illustrate criticism,

commentary, or a news story about that work.” Barcroft Media,

Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339, 352 (S.D.N.Y.

2017) (citing 17 U.S.C. § 107); see also Otto, 345 F. Supp. 3d at

428 (“[T]he use of an image solely to illustrate the content of

that image, in a commercial capacity, has yet to be found as fair

use.”).

Here, Cox’s Article accompanying the Photograph did not

“serv[e] to illustrate criticism, commentary, or a news story”

about the Photograph. Barcroft, 297 F. Supp. 3d at 352. To the

contrary, Cox used the Photograph as a “illustrative aid because

[it] depicted the subjects described in [the] [A]rticl[e],” namely

the arrest of Saipov. Id. “Nothing in [Cox’s] [A]rticle imbues the

[Photograph] with new meaning, or places it in a [new] context.”

Gossip Cop, 196 F. Supp. 3d at 406. Indeed, all Cox’s Article says

that could conceivably be about the Photograph is that “[Saipov]

12

was taken into custody’”—the vast majority of the Article, by con-

trast, concerns Saipov’s alleged terrorist acts leading up to his

arrest. (See Pl. 56.1 4 19.) To nonetheless find that Cox’s use of

the Photograph was fair would “eliminate copyright protection

any time a copyrighted photograph was used in conjunction with

a news story about the subject of that photograph. That is plainly

not the law.” Barcroft, 297 F. Supp. 3d at 352.

Cox relies heavily on Swatch to argue to the contrary, but that

case is distinguishable. In Swatch, Bloomberg News published a

recording of Swatch’s earnings call, which Swatch had registered

with the Copyright Office. 756 F.3d at 79. The Second Circuit

held that the first fair use factor favored Bloomberg, noting that

“whether one describes Bloomberg’s activities as ‘news report-

ing,’ ‘data delivery,’ or any other turn of phrase, there can be no

doubt that Bloomberg’s purpose in obtaining and disseminating

the recording at issue was to make important financial infor-

mation .. . available to investors and analysts.” Id. at 82. Yet,

while publishing Swatch’s financial information served “the im-

portant public purpose of disseminating important financial

information,” id. at 92, Cox’s publication of the Photograph

serves no such purpose and conveys no such information. To the

contrary, Cox’s Article solely uses the Photograph “for illustrative

purposes without adding new information, new aesthetics, new

insights and new understandings.” Otto, 345 F. Supp. 3d at 428

(citation and internal quotation marks omitted). Indeed, as ex-

plained above, it is illustrating just one sentence from the

Article—that “[Saipov] was taken into custody.” (Pl. 56.1 4 19.)

The court agrees with Judge Woods’ explanation of the danger

of adopting Cox’s argument in such a situation:

It would be antithetical to the purposes of copy-

right protection to allow media companies to steal

personal images and benefit from the fair use de-

fense by simply inserting the photo in an article

13

which only recites factual information—much of

which can be gleaned from the photograph itself.

If so, amateur photographers would be discour-

aged from creating works and there would be no

incentive for publishers to create their own con-

tent to illustrate articles: why pay to create or

license photographs if all personal images posted

on social media are free grist for use by media

companies, as [Cox] argues here? Indeed, it seems

that this interpretation of the law would hinder the

“Progress of Science and useful Arts,” and the cre-

ation of “informative, intellectually enriching

works for public consumption.”

Otto, 345 F. Supp. 3d at 428 (citations omitted).

Therefore, because Cox’s use of the Photograph was not trans-

formative, the first factor? weighs against a finding of fair use.

b. ‘Nature of the Copyrighted Work

The second factor, which looks to the nature of the copyrighted

work, weighs in favor of Cox and a finding of fair use. The second

factor acknowledges that “some works are closer to the core of

intended copyright protection than others, with the consequence

that fair use is more difficult to establish when the former works

are copied.” Campbell, 510 U.S. at 586. In reviewing this factor,

courts will determine whether a work is creative versus factual,

2 Under the first fair use factor, courts also consider the commercial nature

of the secondary use of the copyrighted material. However, courts “do not

place much significance” on the commercial nature of the secondary use if

the use is not transformative. Cariou, 714 F.3d at 708. Here, there is no

doubt that Cox is a commercial enterprise (see, e.g., Pl. 56.1 4 20; Def.

Mem. at 19), but, because Cox’s use was not transformative, its commercial

nature is of much less importance to the analysis under the first fair use

factor.

14

and unpublished versus published, with the scope of fair use ap-

plying more narrowly to creative and unpublished works. Harper

& Row, 471 U.S. at 563-64. “The law generally recognizes a

greater need to disseminate factual works than works of fiction

or fantasy.” Id.; see also Authors Guild, Inc. v. HathiTrust, 755 F.3d

87, 96 (‘The second factor considers whether the copyrighted

work is of the creative or instructive type that the copyright laws

value and seek to foster.” (citation and internal quotation marks

omitted)). In addition, publicly released works qualify for less

protection from use by others than unpublished materials. See

Harper & Row, 471 U.S. at 564. “This is because a plaintiffs right

to control the first public appearance of the photo is not impli-

cated in such scenarios, nor does there exist any race to publish,

which lends itself to a finding of fair use.” Otto, 345 F. Supp. 3d

at 430 (citations and internal quotation marks omitted) (altera-

tions adopted).

Here, Cruz acknowledges that the Photograph is “factual in na-

ture” and was “published prior to Cox’s use” of it. (Pl.’s Mem. at

16.) The court agrees and finds that the second fair use factor

favors Cox. The court also notes, however, that the second factor

is “rarely found to be determinative” in the fair use analysis. On

Davis, 246 F.3d at 175.

c. Amount and Substantiality of the Portion Used

The third fair use factor considers whether “the amount and sub-

stantiality of the portion used in relation to the copyrighted work

as a whole...are reasonable in relation to the purpose of the

copying.” Campbell, 510 U.S. at 586 (citation and internal quota-

tion marks omitted). Generally speaking, “the more of a

copyrighted work that is taken, the less likely the use is to be

fair.” Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 109 (2d

Cir. 1998).

Here, Cox does not dispute it copied the Photograph in its en-

tirety (Def. Mem. at 21) meaning that, at the very least, this

15

factor does not favor fair use. See Bill Graham Archives v. Dorling

Kindersley Ltd., 448 F.3d 605, 613 (2d Cir. 2006) (“Neither our

court nor any of our sister circuits has ever ruled that copying of

an entire work favors fair use.”). Cox argues, however, that there

was an “editorial need” to use the Photograph in its entirety so

as to accurately convey the “important factual information” in the

Photograph such that the factor should not weigh against fair use

either. (See Def. Mem. at 21-22.)

It is true that using a protected work in its entirety may constitute

fair use when the purpose of the use requires it. See Bill Graham

Archives, 448 F.3d at 613; see also Leval, 103 Harv. L. Rev. at

1123 (“[A]n important inquiry [under the third fair use factor] is

whether the selection and quantity of the material taken are rea-

sonable in relation to the purported justification.”). Yet, as

explained above, Cox’s use of the Photograph was not transform-

ative—Cox simply thought (apparently like its competitors CNN

and NBC) that the Photograph had certain qualities that would

make it a good complement to the Article. See Harper & Row, 471

U.S. at 565 (“[T]he fact that a substantial portion of the infring-

ing work was copied verbatim is evidence of the qualitative value

of the copied material.”). In other words, Cox “made no effort to

circumscribe its use such that it reproduced only enough of [the

Photograph] to satisfy any reporting needs.” Gossip Cop, 196 F.

Supp. 3d at 409. Accordingly, the third factor weighs against fair

use.

d. Effect of the Use on the Potential Market

The final fair use factor considers “the effect of the use upon the

potential market for or value of the copyrighted work.” 17 U.S.C.

§ 107(4). This factor requires the court to investigate whether in-

fringement will affect “traditional, reasonable, or likely to be

developed market.” Bill Graham Archives, 448 F.3d at 614 (cita-

tion omitted). This factor is therefore “concerned with secondary

uses that, by offering a substitute for the original, usurp a market

16

that properly belongs to the copyright-holder.” Infinity Broad.

Corp., 150 F.3d at 110; see also Harper & Row, 471 U.S. at 566-

67 (“Fair use, when properly applied, is limited to copying by

others which does not materially impair the marketability of the

work which is copied.” (citation and internal quotation marks

omitted)). Finally, there is a “close linkage between the first and

fourth factors, in that the more the copying is done to achieve a

purpose that differs from the purpose of the original, the less

likely it is that the copy will serve as a satisfactory substitute for

the original.” Authors Guild, 804 F.3d at 223 (citing Campbell,

510 U.S. at 591).

This factor weighs against a finding of fair use. The record makes □

clear that Cruz demonstrated an interest in entering into the mar-

ket for the Photograph when he entered into licensing

agreements with both CNN and NBC. (See Pl. 56.1 1 11-13.) As

the owner of the Photograph, Cruz had the right to sell the Pho-

tograph to media outlets if he so desired; Cox’s publication of the

Photograph without Cruz’s permission, therefore, “usurp[ed]”

his market. Infinity Broad. Corp., 150 F.3d at 110. Cox’s reliance

on Swatch is again inapposite. In Swatch, the court agreed with

the district court’s observation that “nothing in the record sug-

gest[ed] any possible market effect stemming from Bloomberg’s

use” of the earnings call recording, and further noted that

“Swatch had no interest in the exploitation of the copyright-pro-

tected aspects of the call.” Swatch, 756 F.3d at 91. Here, by

contrast, both those factors—market effect and interest in exploi-

tation on the part of the copyright holder—are present.

Cox urges that the “public interest in receiving accurate infor-

mation regarding [Saipov’s] arrest ... outweigh[ed] the personal

gain to Plaintiff of licensing a photo he did not even know was

newsworthy until news organizations told him so.” (Def. Mem.

at 22). First, the fact that a media company would appreciate the

17

importance or newsworthiness of a work before the work’s au-

thor is neither relevant to the analysis nor particularly

uncommon. See Otto, 345 F. Supp. 3d at 419 (explaining that

plaintiff did not seek compensation for work until media outlet

published work without plaintiffs permission). Second, while

Cox is right that there is a direct relationship between the first

fair use factor—the purpose and character of the work—and this

factor, that nexus dooms Cox’s argument in this case; here, Cox

has not demonstrated that its use of the Photograph was trans-

formative or necessary to convey vital factual information (as

opposed to serving as an illustrative aid). If Cox could simply “use

such images for free, there would be little or no reason to pay for

works.” Barcroft, 297 F. Supp. 3d at 355. Accordingly, the fourth

factor weights against a finding of fair use.

e. The Factors Considered Together

Considering all four factors together, the court finds that Cox’s

use of the Photograph was not fair. The non-transformative pur-

pose and manner of Cox’s use, the fact that Cox used the

Photograph in its entirety, and the harm to Cruz’s potential mar-

ket for the Photograph outweigh any factual information

conveyed by Cox’s use. Accordingly, no reasonable trier of fact

could find in favor of Cox on the issue of fair use and Cruz’s mo-

tion for summary judgment on Cox's fair use defense is granted.

Cc. Other Defenses to Liability □

Cruz has also moved for summary judgment on Cox’s remaining

affirmative defenses: (1) failure to state a claim and (2) First

Amendment protection.? Cox did not respond to Cruz’s argu-

ments on either of these defenses. The court finds that Cruz has

3 By joint stipulation, Cox agreed to dismiss the following affirmative de-

fenses: personal jurisdiction, license, safe harbor under the Digital

18

met his burden of demonstrating that no material issue of fact

exists on either of these defenses and grants Cruz’s motion as to

both.

As to the First Amendment defense, the Second Circuit has held

that “the fair use doctrine encompasses all claims of first amend-

ment in the copyright field.” New Era Pubs. Int’, ApS v. Henry Holt

& Co., 873 F.2d 576, 584 (2d Cir. 1989); see also Nihon Keizai

Shimbun v. Comline Bus. Data, Inc., 166 F.3d 65, 74 (2d Cir.

1999) (“First Amendment concerns are protected by and coex-

tensive with the fair use doctrine.”). Therefore, because the court

has granted Cruz’s summary judgment motion on Cox’s fair use

defense, the court also grants judgment in favor of Cruz on Cox’s

First Amendment defense.

As to Cox’s defense that Cruz fails to state a claim, that is clearly

not the case here. A complaint must plead “enough facts to state

a Claim to relief that is plausible on its face.” Bell Atl. Corp. v.

Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausi-

. bility when the plaintiff pleads factual content that allows the

court to draw the reasonable inference that the defendant is lia-

ble for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662,

678 (2009). Here, Cruz has provided sufficient information in his

complaint such that the court can draw the “reasonable infer-

ence” that Cox is liable for copyright infringement. Therefore, the

court grants judgment in favor of Cruz as to Cox’s defense of fail-

ure to state a claim.

IV. CONCLUSION

For the foregoing reasons, Cruz’s motion for partial summary

judgment (Dkt. 28) is GRANTED as to Cox’s liability for copyright

Millennium Copyright Act (17 U.S.C. §512), acquiescence, equitable es-

toppel, and waiver. (See Jan. 15, 2019 Joint Stip. & Order re: Dismissal of

Certain Affirmative Defenses.)

19

infringement and Cox’s assertion of its affirmative defenses, in-

cluding fair use. Cox’s cross motion for partial summary

judgment (Dkt. 34) is DENIED as to the issue of copyright in-

fringement and fair use.

The parties are DIRECTED to contact Magistrate Judge Tomlin-

son regarding next steps in this case.

SO ORDERED.

Dated: Brooklyn, New York

March )3, 2020

s/Nicholas G. Garaufis

CHOLAS G. GARAUFI

United States District Jud

20

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