IP Law Daily, COPYRIGHT—S.D.N.Y.: Muhammad Ali photographer proceeds with infringement claims against owners of the boxer’s marketing rights, (Sep 9, 2022)

By Robert Margolis, J.D.

Court refuses to hold photographer’s registrations invalid for inaccuracies, finding that photographer justifiably did not know that certain actions years prior to registration constituted legal publication.

Finding disputed fact questions as to whether a license granted by photographer Michael Gaffney to Muhammad Ali Enterprises and Authentic Brands Group (“defendants”) authorized defendants’ use of several photographs after the license expired, the federal district court in New York City has denied cross-motions for summary judgment on Gaffney’s copyright infringement and other claims. Among other holdings, the court rejected the defendants’ argument that Gaffney prematurely published certain of the photographs in contravention of the information included in the registrations, so as to render those registrations invalid (Gaffney v. Muhammad Ali Enterprises LLC, September 7, 2022, Daniels, G.).

The Defendants are a brand development and licensing company, and its subsidiary, which own the intellectual property rights and rights of publicity of Muhammad Ali, the famous boxer. Ali hired Gaffney from 1977 t0 1978 to take photographs of him as he traveled to boxing matches and to make public appearances. During that time, Gaffney took 32 photographs of Ali. He holds copyright registrations for all of them, which fall into three categories: (1) registration VAu 964-300 (the '300 Registration) issued February 22, 2008, for a collection of 15 photographs purportedly unpublished prior to registration, 11 of which are at issue in the case; (2) registration TX 8-550-740 (the '740 Registration) issued June 12, 2018, for a book he first published on June 12, 2012, covering 25 of the photographs at issue, which purportedly were first published in his book; and (3) three sets of registrations covering three photographs.

In February 2011, Gaffney and the defendants entered into a licensing agreement covering the 32 photographs, which granted defendants “an exclusive license” for three different uses: (1) products and/or advertisements endorsed by Ali; (2) promotional and marketing purposes, including social media: and (3) editorial purposes. The first of these uses required Gaffney’s prior approval, but defendants could freely use the photographs for the other purposes. Defendants agreed to pay royalties to Gaffney when using photographs for any of these purposes. When the license agreement expired in 2015, defendants maintained the right to exercise the license rights granted to them as to the first category above (products and advertising, subject to Gaffney’s prior approval).

There was no dispute that defendants continued to use the photographs after the agreement expired on social media accounts for promotional and marketing purposes. They also allowed certain sublicensees to continue copying the photographs after the agreement expired. They used the photographs until April 30, 2019, and paid Gaffney royalties for these extended uses up until 2018, in accordance with the provisions of the agreement.

In March 2015, Gaffney sent a letter to defendants seeking to forbit any further use of the photographs. He claims that infringing uses began with unauthorized non-social media uses on February 1, 2015, when defendants distributed a copy of one of the photographs to one of their customers. In September 2018, Gaffney sued for infringement under the Copyright Act and violation of the Digital Millennium Copyright Act (“DMCA”). The parties cross-moved for partial summary judgment.

Registration validity. The parties’ primary dispute was over the validity of the ’300 and ’740 registrations. Defendants argued that the registrations are invalid under 17 U.S.C. § 411(b)(1), because they include an inaccuracy known by Gaffney, which would have caused the registration to be refused. In particular, defendants claimed that Gaffney prematurely published 25 of the photographs in direct contravention of the information he included in those registrations. Gaffney opposed the motion, contending that none of the actions the defendants cited amounted to publication under the Copyright Act. The court concluded that it did not need to resolve whether publication had occurred, as the evidence showed that Gaffney lacked knowledge of any inaccuracy. Therefore, both of the registrations that defendants challenged are valid.

The '300 registration purported to register a group of previously unpublished photographs. Defendants argued that Gaffney years earlier published four of the photographs when he entered into an agreement with a third party that authorized the third party to copy and sell those photographs. Gaffney contended that he believed the licensing agreement with the third party was fraudulent, leading him to void the agreement and rescind any authorizations, and therefore never amounted to a legal publication. In addition to voiding and rescinding the agreement, Gaffney promptly retrieved the photographs and set forth in his summary judgment papers that he thought the agreement “didn’t amount to anything.” Defendants had no evidence to rebut Gaffney’s evidence supporting his belief that no publication had occurred. Therefore, the court found the registration to be valid.

The '740 registration related to Gaffney’s book, and includes 25 photographs that the registration claims were first published with the book in 2012. Defendants argued that Gaffney first published one of the photographs in 1977 when he provided it to a newspaper, several others when he displayed them and sold them at exhibitions, and several others when he entered into the licensing agreement with defendants. Gaffney contended that he did not know any of those actions constituted publication. Citing a recent Supreme Court decision, Unicolors, Inc. v. H&M Hennes & Mauritz, L. P., 142 S. Ct. 941 (2022), the court agreed that his ignorance was excusable. Defendants cited deposition testimony Gaffney gave about what it means to publish a work, but Gaffney also testified that at the time of these alleged prior publications, he did not know what it meant to publish a work, and that he only learned about what constitutes legal publication during the litigation of this case. His testimony showed that he believed there is a legal distinction between offering photographs for sale and actually selling a photograph. In addition, law establishing that granting an exclusive license can amount to publication is relatively new, having been established by a district court in 2018. Gaffney, as a result, had a legitimate excuse for whatever inaccuracies are found in the ’740 registration, so it too is valid, the court held.

Social media uses. The court next examined whether there was evidence of unauthorized copying to support Gaffney’s infringement claims. Since there was no dispute that after the parties’ license agreement expired, defendants posted the photographs on social media accounts and distributed certain photographs to sublicensees and customers, the issue before the court was whether the expiration rights provided by the agreement gave defendants authorization to use the photographs as they did.

There was no question that the non-social media uses Gaffney complained of were authorized by the license, and that Gaffney received and accepted royalty payments from these uses up until 2018. The court, however, noted that neither party provided evidence demonstrating when defendants entered into the sublicenses and customer agreements that Gaffney complained of. If those agreements were made prior to the termination of the license agreement between Gaffney and defendants, then they were covered by the license Gaffney granted them. If they were new licenses entered into after expiration, then they were beyond the agreement’s scope. The absence of evidence on this question precluded summary judgment for Gaffney, the court held.

As to social media uses, the court found the license agreement to be ambiguous. The provision of the license agreement that extended the license past the termination date concerned “all licenses and/or agreements made prior to the date of termination.” While the promotional and marketing uses on social media were not related to any licenses or agreements, a reasonable interpretation of the agreement allowed for such continued uses. As the court pointed out, Gaffney received royalties on revenues gained from defendants entering into sublicenses and agreements to sell licensed products, and continued to receive those royalties after the agreement expired. It was in Gaffney’s best interests to continue to allow for promotional uses to help generate royalties for him. Because the agreement was ambiguous, summary judgment on defendants’ social media uses of photographs was denied.

The Case is No. 1:18-cv-08770-GBD-OTW.

Attorneys: Jack Thomas Spinella (Spinella Law Group, LLC) for Michael Gaffney. Jessica Strom Rutherford (Ferdinand IP, LLC) for Muhammad Ali Enterprises LLC and Authentic Brands Group LLC.

Companies: Muhammad Ali Enterprises LLC; Authentic Brands Group LLC; Roots of, Inc.

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