IP Law Daily, COPYRIGHT—S.D.N.Y.: Infringement claim against law firm that reproduced photo on its website can proceed, (May 19, 2023)

By Anne H. Gibson, J.D., LL.M.

Law firm’s reproduction of entire news article with photograph on its blog, leaving off attribution line of photograph, was not fair use as a matter of law.

A professional photographer’s copyright infringement and Digital Millennium Copyright Act (DMCA) claims against a law firm that allegedly reproduced his photograph on the firm’s website without permission and without the attribution line can proceed, the federal district court in White Plains, New York has held. The law firm moved to dismiss, arguing the photographer had not plausibly alleged his claims, and that its use of the photograph was fair use. The court disagreed, finding that the photographer had stated a claim for copyright infringement and that the fair use defense did not apply. Regarding the DMCA claims, the court found that a valid claim was stated that the image had been reproduced without credit, but the claim that the law firm provided false credit information was dismissed for lack of supporting allegations (Smith v. Law Office of Richard St. Paul Esq, PLLC, May 18, 2023, Briccetti, V.).

Byron Smith is a professional photographer. In February 2019, he took a photograph for the Wall Street Journal, which he registered with the U.S. Copyright Office. The photograph, and its accompanying article, were published on February 19, 2019, with the credit line, “Photo: Byron Smith for the Wall Street Journal.” The Law Office of Richard St. Paul, Esq., PLLC, has a website that includes a news blog. The Wall Street Journal article with Smith’s photograph were reproduced on the law firm’s website, without any attribution to Smith, and, according to Smith, without permission. Smith learned of this on May 28, 2020, and brought claims of copyright infringement and two claims under the DMCA, providing false copyright management information (CMI) and distributing a work with missing CMI. The law firm moved to dismiss.

Copyright infringement. The court first addressed the law firm’s assertion that the photographer had failed to state a prima facie case of copyright infringement. To state a claim for copyright infringement, the photographer needed to plausibly allege (1) ownership of a valid copyright, and (2) that the law firm had copied constituent elements of the work that were original. The court found that the photographer had done so. He alleged that he held a valid copyright registration to the photograph, and provided a registration record from the Copyright Office, meeting the first element. As to the second element, the law firm admitted to reproducing the relevant photograph on its website and the court found, citing precedent, that “an ordinary observer would ‘recognize the alleged copy as having been appropriated from the copyrighted work.’” Thus, the photographer had stated a prima facie case for copyright infringement.

Fair use. The law firm alleged that its use of the photograph was fair use and so it did not infringe on the photographer’s copyright as a matter of law. The court again disagreed. It found that, based on the complaint and exhibits taken in the light most favorable to the photographer, the law firm did not make any alterations or additions to the photograph, but simply reproduced the photo and its accompanying article in their entirety. Thus, the character of the use was not “transformative.” In fact, citing precedent, the court stated it could “discern no meaningful difference between defendant’s professed purpose and the photojournalistic purpose ‘for which [the Photograph] was created.’” Thus, the court found the law firm’s claim of fair use did not warrant dismissal of the copyright infringement claim.

DMCA claims. The law firm argued that the photographer had not plausibly alleged claims under the DMCA. The court disagreed in part and agreed in part. The photographer brought two claims: (1) knowingly providing false copyright information under Section 1202(a), and (2) distributing copyrighted material with missing copyright information under Section 1202(b)(3). The court found that the photographer had not alleged that there was any false copyright information included when the law firm distributed the photo. Accordingly, that claim was dismissed. However, the court found that Smith had adequately alleged that the original credit line for the photo from the Wall Street Journal article was removed when it was reproduced on the law firm’s website, and that it had no permission to do so. Consequently, this claim survived.

The law firm’s motion to dismiss was thus denied in part and granted in part, and the surviving claims will proceed.

The Case is No. 22 CV 5648 (VB).

Attorneys: Taryn Rose Murray (Law Firm of Higbee & Associates) for Byron Smith. Richard St. Paul (Law Office of Richard St. Paul, Esq. PLLC) for Richard St. Paul, Esq., PLLC.

Companies: Richard St. Paul, Esq., PLLC

Cases: Copyright TechnologyInternet NewYorkNews