IP Law Daily, COPYRIGHT—Copyright dispute involving Portuguese photographer tossed by U.S. court, (Mar 31, 2023)

By George Basharis, J.D.

The court dismissed the lawsuit based on the doctrine of forum non conveniens and, in the alternative, due to the lack of personal jurisdiction over the defending foreign press agency.

A Portuguese photographer’s lawsuit against Getty Images and a French news agency, filed in a federal court in New York, has been dismissed under the doctrine of forum non conveniens, base on the recommendation of a Magistrate Judge. The lawsuit accused Getty Images and Agence France-Presse (AFP) of stealing copyrighted photographs. The Magistrate Judge found that Portugal would be a more appropriate forum for the dispute, given the case involved a Portuguese citizen who had entered into a contract in Portugal, under Portuguese law and language, regarding ownership rights of photographs taken in Portugal and worldwide (but not in the U.S.). Additionally, the photographer had previously sued AFP twice in Portuguese courts. The district court further agreed with the Magistrate Judge’s alternative recommendation to dismiss AFP due to a lack of personal jurisdiction, as the exercise of personal jurisdiction would place an unreasonable burden on the French company (Paulo v. Agence France-Presse, March 30, 2023, Rochon, J.).

The photographer is an accomplished photojournalist and Portuguese citizen. AFP is a French global news agency headquartered in Paris, France, with its main North America location in Washington, D.C., and a small secondary office in New York. AFP has a “worldwide audience” and over 2,400 staff and news bureaus in 160 countries and 201 locations. AFP develops its editorial content through both freelancers and staffed editorial employees. Under his professional title registered in Portugal, the photographer captured, and according to the complaint, “licensed,” thousands of photographs to AFP between 2005 and 2018, at times as a freelancer and others an editorial employee. AFP distributed the photographs through their wire service and shared them with third parties like Getty Images. The lawsuit claims AFP removed the photographer’s metadata from the photographs and added an “AFP” icon.

The photographer did not have a written agreement with AFP as a freelancer. However, while on the editorial staff, the photographer created and licensed photographs to AFP under an agreement entered in 2010. Portuguese law governed the 2010 agreement. Consequently, when the photographer was fired by AFP in 2019, he sued the company for wrongful termination in a Portuguese labor court. He also sent AFP an email requesting that AFP stop publishing and using his photographs. The wrongful termination lawsuit was settled. A second case was filed in Portugal challenging the validity of the 2010 agreement. The issue in that case was the validity of the agreement and the photographer’s copyright claims. However, the photographer withdrew the lawsuit shortly before trial was set to begin.

In 2022, the photographer sued AFP and Getty in a U.S. court, claiming copyright infringement and removal of copyright management information under the Digital Millennial Copyright Act (DMCA). According to the complaint, the photographer’s 2019 email to AFP terminated AFP’s license to use the photographs, and AFP’s continued use of the photographs was unauthorized and infringed the photographer’s copyrights.

The Magistrate Judge assigned to the case recommended dismissal based on forum non conveniens, and in the alternative, that the claims against AFP be dismissed for lack of personal jurisdiction. The Magistrate Judge found the case had “little to do with New York and a lot to do with Portugal.” The district court agreed and adopted the Magistrate Judge’s report and recommendation in full.

Forum non conveniens. The doctrine of forum non conveniens allows a court to dismiss an action on the ground that a court abroad is the more appropriate and convenient forum for adjudicating the controversy. Courts analyze forum non conveniens by looking to the degree of deference that should be given to the plaintiff’s choice of forum, the adequacy of an alternative forum, and the private and public interests implicated by the choice of forum. The Magistrate Judge determined that the photographer’s choice of forum was entitled to limited deference for several reasons, including that the photographer was a Portuguese resident who was licensed in Portugal, and who chose to do business with AFP’s Portuguese bureau. He also chose to litigate two prior cases against AFP in a Portuguese court.

The district court agreed with the magistrate’s determination that the photographer’s choice of forums was entitled to minimal deference, and the more convenient forum was Portugal, where the underlying licensing agreement, core events, and disputed issues were centered and where two prior cases were filed. The court rejected the photographer’s claim that he had no choice but to file the case in the United States because U.S. federal courts have exclusive jurisdiction to hear U.S. copyright claims, noting that courts apply forum non conveniens to cases in which federal courts have exclusive jurisdiction. Moreover, the 2010 agreement at the center of the dispute had a valid forum selection clause naming Portuguese law and Portuguese courts as the exclusive forum to resolve disputes arising from the agreement.

The court also agreed with the Magistrate Judge that Portugal was an adequate alternative forum because AFP and Getty had consented to jurisdiction and agreed to accept service of process in Portugal. Portuguese courts also had subject matter jurisdiction over the photographer’s claims. The court rejected the photographer’s contention that the Magistrate Judge had improperly shifted the burden on him to show that an alternative forum did not exist, noting that law experts called by AFP and Getty established that nothing prevented Portuguese courts from having international jurisdiction to consider the claims in the photographer’s U.S. lawsuit. Moreover, the court determined that the photographer’s withdrawal of the earlier Portuguese lawsuit involving the 2010 agreement did not prevent him from pursuing his copyright claims in that forum.

Finally, private and public interests favored litigating the case is Portugal. The court reiterated that all relevant events took place in Portugal. The photographer lived and was based in Portugal. The 2010 agreement, which had a valid forum selection clause and designated Portuguese courts as the exclusive forum to resolve disputes, was executed in Portugal, the disputed photographs were all taken abroad, and most witnesses were in Portugal and other places in Europe. Regarding public interests, the court found the dispute should be resolved by Portuguese courts applying Portuguese law.

Personal jurisdiction. The Magistrate Judge also recommended dismissal of AFP for lack of personal jurisdiction. Adopting the Magistrate Judge’s recommendation, the district court agreed that although New York’s long-arm statute extended to AFP, exercising personal jurisdiction would be unreasonable given the burden it would impose on the French company. AFP has a news reporting office in New York, but the company manages its relationship with Getty and other third parties in France, has its servers in France, and evidence and witnesses relevant to the dispute are in France or other parts of Europe. AFP’s New York office location and prior U.S. disputes were irrelevant to the photographer’s copyright lawsuit. Moreover, New York had a minimal interest in resolving the dispute and was no more convenient to the photographer than Portugal.

The Case is No. 1:21-cv-11209-JLR-SLC.

Attorneys: Jennifer G. Altman (Pillsbury Winthrop Shaw Pittman LLP) for Leong Francisco Paulo. Benjamin Samuel Halperin (Cowen, Debaets, Abrahams & Sheppard LLP) for Agence France-Presse.

Companies: Agence France-Presse; Getty Images (US), Inc.; Getty Images, Inc.

Cases: Copyright TechnologyInternet NewYorkNews GCNNews