Zuma Press, Inc. v. Getty Images (US), Inc.
Filing
172
ORDER AND OPINION GRANTING SUMMARY JUDGMENT TO DEFENDANT re: (72 in 1:16-cv-06110-AKH) MOTION for Summary Judgment filed by Manny Flores, Christopher Szagola, Anthony Barham, Duncan Williams, Tiyu (Beijing) Culture Media Co. Ltd., John Middlebrook, Zuma Press, Inc., Charles Baus, Action Sports Photography, Inc., Robert Backman, Andrew Dieb, Louis Lopez, (78 in 1:16-cv-06110-AKH) MOTION for Summary Judgment filed by Getty Images (US), Inc. For the reason s stated above, I deny plaintiffs' motion and grant defendant's motion for summary judgment, dismissing the Second Amended Complaint in 16 Civ. 6110, Dkt. No. 36, and the Complaint in 17 Civ. 5832, Dkt. No. 1. The Clerk shall enter judgme nt for defendant, dismissing the two actions against it, with costs to be taxed by the Clerk. The Clerk shall terminate the motions (Dkt. Nos. 72, 78), and mark the case closed. SO ORDERED. (Signed by Judge Alvin K. Hellerstein on 10/4/2018) Filed In Associated Cases: 1:16-cv-06110-AKH, 1:17-cv-05832-AKH(ne) Transmission to Orders and Judgments Clerk for processing.
Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 1 of 12
UNITED STATES DIST RICT COUR T
SOUT HERN DIST RICT OF NEW YORK
-------------------------------------------------------------- X
ZUM A PRESS, INC., ACTI ON SPORTS
PHOTOGRAPHY, INC., TIYU (BEIJING)
CULT URE MED IA CO. LTD., MAN NY
FLORES, AND REW DIEB, CHRI STOP HER
SZAGOLA, LOUIS LOPEZ, CHARLES BAUS,
DUN CAN WILLIAMS, ROBE RT BACKMAN,
JOHN MIDDLEBROOK, and ANTH ONY
BARHAM,
ORD ER AND OPINION
GRANTING SUM MAR Y
JUDGMENT TO DEFENDANT
16 Civ. 6110
17 Civ. 5832
Plaintiffs,
-against-
..,,
I USDC SDNY
GETT Y IMAGES (US), INC.,
Defendant.
-------------------------------------------------------------- X
11
DOCUMENT
ELECTRONICA!.i, Y FILED
DOC #:
DATE
FTTB,-[ 0TU-'-+-._____
ALVI N K. HELLERSTEIN, U.S.D.J.:
This is an action by Zuma Press, Inc. ("Zuma"), nine individual
photographers, and two
photograph licensing agencies against defendant Getty Image
s (US), Inc. ("Getty") for copyright
infringement under the Copyright Act, 17 U.S.C. § 501, and for
violation of integrity of
copyright management information under Section 1202 of the
Digital Millennium Copyright Act
("DMCA"), 17 U.S.C. § 1202, alleging that Getty offered for
licensing on its website 47,048
images owned by, or exclusively licensed to, plaintiffs (the "Accu
sed Images"), and intentionally
altered the copyright attribution information embedded in these
images. The parties cross-move
for summary judgm ent, and defendant raises a defense of equita
ble estoppel, arguing that
plaintiffs are equitably estopped from asserting their claims since
they induced Getty 's alleged
unlawful actions. The undisputed facts show that Zuma, on behal
f of itself and the other
plaintiffs, caused Getty to confuse Zuma ' s images with image
s that Getty had been autho
use. I grant summary judgment, and dismiss the complaint with
prejudice.
rized to
Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 2 of 12
BACKGROUND
Proce dural History
Zuma, a press agency representing photographers on exclusive
and non-exclusive bases,
initiated this action on August 1, 2016, filing a First Amended
Complaint ("FAC") on December
16, 2016, alleging copyright infringement and other causes of
action against Getty for
copying
the Accused Images and placing them on Getty 's website. Follow
ing Getty 's motion to dismiss
the FAC, the Court on June 29, 2017 dismissed the contributory
copyright infrin
gement claims;
the claims under § 43(a) (l)(B) of the Lanham Act, 15 U.S.C.
§ 1125; the false advertising claims
under Section 349 of New York' s General Business Law; and
the New York common law claims
for unfair competition. The Court maintained the copyright infrin
gement claims as to images
registered before August 1, 2016, the date the action was filed,
see 17 U.S.C. § 41 l(a), and
maintained also the claims under DMCA, 17 U.S.C. § 1202, for
violation of the integrity of
copyright information. Standing was premised on the allegations
that Zuma had exclusive
license agreements as to all of the Accused Images. None of the
Accused Images had been
registered before August 1, 2016.
On July 28, 2017, plaintiffs filed a Second Amended Complaint
("SAC") with a single
cause of action under 17 U.S.C. § 1202 for violating the integr
ity of copyright information.
Three days later, on August 1, 2017, plaintiffs filed a complaint
in a new action, Docket Number
17 Civ. 5832, with the same parties and allegations, except addin
g a claim for copyright
infringement as to images registered as of August 1, 2017 (inste
ad of August 1, 2016). The
Court consolidated the two cases under the original Docket Numb
er 16 Civ. 6110, and
subsequently administratively closed Dkt. No. 17 Civ. 5832. All
images at issue in this litigation
have been registered by August 1, 2017, the date of the Comp
laint in Dkt. 17 Civ. 5832.
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 3 of 12
Facts
There is no dispute that, in the weeks between April and May of 2016, Getty
displayed
and offered for commercial use thousands of images that Zuma once owned or
had license to,
crediting these images to "Les Walker," not to Zuma or the photographers Zuma
represented.
Upon Zuma' s request to Getty on May 4, 2016, Getty removed the images and
initiated an
investigation as to the source of these questionable images, which earned in total
less than $100
in revenue for Getty. Zuma has nobody to blame but itself for how Getty came
to possess these
images, though. Zuma comingled its images with the collection of Les Walker
in 2011, and
Getty later purchased the rights to Walke r's collection. Getty did not know, and
could not
reasonably have been expected to know, that, in displaying Walke r's collection,
it was also
displaying images originating from photographs Zuma represented.
The path of the Accused Images from Zuma to Getty is circuitous but identifi
able,
summarized by the following illustration.
Zuma
,i,,
NewSport/
Les Walker
/I
Corbis
I i I
UGI
.
~
Getty
....
~
The story begins in 2010, when Zuma entered into a "Representation Agreem
ent" with an imagelicensing company called Corbis, which granted Corbis the right to distribute
Zuma's images in
exchange for partial remittal of royalties received. Zuma submitted images to
Corbis through its
file transmission protocol ("FTP"), linking the images to Zuma' s contract and
rates, and Corbis
remitted to Zuma at the negotiated rate of 40%. Corbis also entered into an agreem
ent with
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 4 of 12
NewSport, a company like Zuma that possessed a portfolio of images. NewSport had a remittal
rate of 50% under contract #9995.
At some point, and in order to receive higher royalty payments, Zuma decided to submit
images through NewSpor t's FTP. Zuma hired Les Walker, the president ofNewSp ort, as an
independent contractor on September 26, 2011 and, to take advantage ofNewSp ort's higher
remittal rate, Zuma began feeding images through NewSport's FTP. To accomplish the
partnership between Zuma and NewSport, Zuma and NewSport entered into a "Redirection
Agreement" with Corbis, signed by Zuma and by NewSport (via Walker) on November 3--4,
2011, which provided that Corbis would remit royalty payments to Zuma for the images
submitted via the NewSport FTP. The Agreement required that "NewSport reaffirms to Corbis
that all images produced under the Contract shall be personally created by NewSport, or that
NewSport has the authority to grant all rights and licenses under the Contract." Bloom Deel.
Ex. Y. The "Contract" referred to here is the agreement between NewSport and Corbis, which
also provided that NewSport represented that it was the owner or had appropriate rights in the
images submitted under its contract, that Corbis was now the exclusive licensor of the images,
and that Corbis could assign its rights in the images. Bloom Deel. Ex. F. 1 By this scheme and
Redirection Agreement, Zuma thus mixed its images into a collection otherwise associated with
Walker and NewSport.
Corbis kept records on each image submitted to it, or "metadata" about the source and
rights associated with images, and this metadata identified the relevant photographer and agency.
By comingling its images with NewSport, Zuma caused "NewSport" to now be labeled in the
"Credit" line of the metadata that Corbis kept on its images. For example, in the following
1 NewSport,
a Florida Corporation, was administratively dissolved on September 23, 2011, before Walker began
working for Zuma. Such a dissolution, however, does not invalidate the corporation's contracts. Fla. Sta.
§§ 607.1405(2)(a), (g).
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 5 of 12
screenshot from Corbis' website, "NewSport " is found in the "Credit" line of an image submitted
by Zuma to Corbis (specifically, "Zak Noyle/NewSport/Corbis"):
See Dkt. No. 111 Ex. ZZ.
Zuma is, however, referenced in the caption of the image. The "caption" refers to the
free-text portion of the image (meaning, any text can be written in it), which typically includes a
description of the image. Before submitting its images via NewSport' s FTP, Zuma modified the
free-text captions of its images to include the following representative parenthetical: "Credit
Image"© [Photographer]/[Additional Agencies]/ ZUMAPRE SS.com." Thus, as seen in the
example above, there is an added parenthetical in the caption following the description of the
image stating: "Credit Image:© Zak Noyle/[]/Z UMAPRES S.COM."
Zuma ultimately stopped utilizing NewSport' s FTP in April 2012, and Walker resigned
from Zuma on January 9, 2013. Knowing that many of its images were still associated with the
NewSport contract, Zuma requested that Walker speak with Corbis's Seth Greenberg to switch
the images back to the Zuma account. See, e.g., Dkt. No 111, Bloom Deel. Ex. EE (January 30,
2013 email request from Zuma's Ruaridh Stewart to Walker); Dkt. No. 146, Walker Deel., at
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 6 of 12
~
33 ("As part of the discussions concerning unwinding our prior arraignment, Stewart asked me
several times to call Seth Greenberg ("Greenberg") at Corbis to instruct Corbis to switch the
images fed by Zuma Press to Corbis under the NewSport contract out of the NewSport collection
to the Zuma Press Account."). Walker, however, appears to have rebuffed Zuma's request,
emailing Stewart back on January 31, 2013: "As for the images feed (sic) through my contract
with Corbis, we will have to come to some agreement, as there was never one in place. If we can
not (sic) come to an agreement Newsport will pay those photographers directly for sales through
that contract (sic)." Ex. EE.
Apparently frustrated by Zuma's inability to gain Walker's consent, Zuma's CEO Scott
McKieman messaged Stewart on February 11, 2013, "[t]his has gone on too long! Need a copy
of [Walker's] email to [S]eth by Wednesday." See Ex. EE. Later that day, Stewart again
requested from Walker that Zuma "be cc'ed on an email to Seth Greenberg to have the Images
switched back to the ZUMA account by Wednesday Feb 13th, this week," to which Walker
responded with his refusal: "As for those images feed (sic) through NewSports account,
NewSport will represent those images and payment will be made as any Newsport does with any
of it[s] other associate agencies feeding that account." See Ex. DD. According to Walker,
"Stewart and I also had some discussions about whether to transfer photographs that Zuma Press
had transmitted to Corbis under the NewSport contract out of the NewSport collection. I did not
think the terms Zuma Press was offering were reasonable, and we did not come to an
agreement." Dkt. No. 146, at~ 29.
In a final attempt at retrieving images Zuma claims to have owned, McKieman emailed
Greenberg directly on February 14, 2013, "We no longer want [Walker's] personal sales going to
ZUMA and I believe the account is no longer pointing to ZUMA's bank account. By same
token, no ZUMA images should be under his personal account or payments for ZUMA sales
should be going to his account as of Jan. 9, 2013." See Bloom Deel. Ex. GG. Greenberg,
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 7 of 12
however, maintained his inability to act until Walker approves: "While I understand that Les no
longer works for ZUMA I cannot move any images that carry the NewSport contract number,
which were submitted through the NewSport FTP, without written consent from NewSport.
NewSport must request this change in writing for me to move the images." Id. See also Bloom
Deel. Ex. A, Greenberg Depo., at pp. 65-76 (same).
No written consent was ever provided by Walker to Corbis. The Accused Images
therefore remained as part of the NewSport collection. Aside from two emails from McKiernan
to Greenberg on June 3 and June 11 of 2013, again requesting that its "50k+ worth of our images
under Newsport" be taken "down asap," see Ex. HH; Ex. H, there is no evidence that Zuma
spoke further with Walker or Corbis about this issue, or pursued any legal action against Corbis
or Walker. There is conflicting evidence in the record as to whether Walker thought that the
images had been removed from the NewSport collection. Compare Dkt. No. 146, at ,r,r 34-35
(Walker declaring that he "discussed" removing the images with Greenberg, but that he did "not
know if Corbis actually took steps to remove Zuma Press images from the NewSport archive"),
with Dkt. No. 152-3 (Walker testifying that he thought the images were removed).
Notwithstanding Walker's understanding, it is clear that Zuma's McKiernan knew that
Greenberg required written consent and that no written consent was in fact provided.
Little seems to have happened with respect to the Accused Images from 2013 until 2016,
when the Accused Images and the library that housed them were acquired by United Glory
International Limited. In January of 2016, Corbis sold its image portfolio to Unity Glory, which
in turn, through an affiliate, entered into an agreement with Getty, permitting Getty to distribute
the portfolio in the United States.
While Getty had the right to succeed all of Corbis' contracts, Getty preferred to enter into
agreements directly with the photographers and agencies who had contributed their photos to
Corbis. Getty reviewed the Corbis database, and reached out directly to contributors to sign
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 8 of 12
agreements with them. After signing such an agreement, Getty would "migrate" the images, or
transfer the images from the Corbis' database to Getty's database. The migration process
included over 7 million images associated with Corbis contracts, and was largely automated,
carried out by computer code scripts written by Corbis and Getty data engineers. The computer
scripts categorized photos according to the relevant metadata associated with each photo. The
data engineers at Getty who wrote the script testified that their script relied on the reasonable
assumption that copyright management information did not appear in the free-text caption of the
images.
After acquiring the rights to Corbis' database, Getty reached out to Les Walker, as the
authorized representative ofNewSport, and, on April 4, 2016, entered into a licensing agreement
with Walker. See Bloom Deel. T (contributor agreement between Walker and Getty). "Les
Walker," not "NewSport," is the stated party and signatory to the agreement, but the evidence
shows, contrary to plaintiffs' insistence otherwise, that NewSport was the intended counterparty
of the Walker-Getty agreement, and that Walker signed the agreement in his capacity as
president ofNewSport. In preparation for signing the agreement, emails between Getty and
Walker consistently refer to the "NewSport" account, see Bloom Deel. Ex. LL, JJ, KK, and
Walker testified that his intention was to act in his capacity as president ofNewSport. See e.g.,
Dkt. No. 146, Walker Declaration, at ,r 38; Bloom Deel. Ex. E (Walker stating his intention to
license the NewSport archive to Getty). Thus, following the Walker-Getty agreement, Getty
believed that it had the right to distribute NewSport's collection.
Following the signing of this agreement, Getty proceeded to migrate the entire NewSport
collection to Getty's database. Since the Accused Images claimed by Zuma were part of the
NewSport collection, and since the metadata associated with the Accused Images indicated that
NewSport was the licensing agency, Getty migrated the entire NewSport collection, including
the Accused Images. The computer script did not look at the free-text portion of the Accused
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 9 of 12
Images (where Zuma was referenced), but to the metadata which identified "NewSport" as the
source of the images. All parties agree that the Accused Images were migrated to Getty as part of
the NewSport collection. See e.g., Dkt. 151, Memo. in Opposition to Def.'s Motion for Summary
Judgment, at 6; Dkt. No. 87, Eisenberg Deel., at ,r 12. McKieman also acknowledged that Zuma
did not need permission from its contributors to submit their photographs to Corbis via the
NewSport contract. Bloom Opp. Deel. A, at 76.
As part of this migration process, Getty also appended its own copyright management
information to its images. Since "Les Walker" was the signatory of the contributor agreement,
his name was identified in a parenthetical in the caption as the source of right-"Photo by Les
Walker/Corbis via Getty Images." The following screenshot from Getty's website illustrates the
point:
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See Dkt. No. 152 Ex. N. The images, however, contained an anomaly. As evident in the above
example, the caption had contradictory parentheticals one after the other-one an addition by
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 10 of 12
Getty, as described, and a second an artifact from Corbis' caption which included Zuma's added
parenthetical. In some cases (as in the above example) the character" ©" in Zuma's
parenthetical was displayed as"??" as placeholder for a character not recognized by the
computer script. Rather than hiding or removing references to Zuma, Getty in fact mistakenly
included contradictory credits, not realizing that Zuma had previously inserted its name into the
caption. Getty also appended watermarks and other copyright information appearing on the
image when users viewed the images on Getty's website.
On May 4, 2016, shortly after the Walker-Getty agreement was signed and after the
NewSport collection began to go live, Zuma discovered and notified Getty that many of Zuma's
images were on Getty's website and were being offered for commercial license and use. The
next day, Getty removed 26,000 images that had references to Zuma in the free-script captions,
and initiated an investigation. Getty confirmed with Zuma on May 19 that all images referencing
Zuma had been removed. The migration of Corbis photos was on a rolling basis, and on May 24,
Getty discovered additional photos with references to Zuma associated with Corbis Contract
#9995. Getty promptly removed them as well.
DISCUSSION
I.
Zuma is Estopped from Arguing that Getty Engaged in Unauthorized Use or
Modification of the Accused Images
The defense of equitable estoppel bars Zuma from suing Getty for unauthorized display
or modification of the Accused Images on its website. "Whether applied to contract actions
under New York law or copyright infringement actions under federal law, equitable estoppel
requires proof that (1) plaintiff had knowledge of defendant's conduct; (2) plaintiff either (a)
intended that defendant rely on plaintiffs acts or omissions or (b) acted or failed to act in such a
manner that defendant had a right to believe it was intended to rely on plaintiffs conduct; (3)
defendant was ignorant of the true facts; and (4) defendant relied on plaintiffs conduct to its
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 11 of 12
detriment." DeCarlo v. Archie Comic Publications, Inc., 127 F. Supp. 2d 497, 509 (S.D.N.Y.),
aff'd, 11 F. App'x 26 (2d Cir. 2001).
Here, the undisputed evidence shows that Zuma comingled its photographs with the
NewSport collection, knowing that "NewSport" would be labeled by Corbis as the "source" and
licensor of the images. The documentary evidence shows that Zuma attempted to retrieve these
images, but did not succeed because NewSport did not give its written consent. Unsuccessful at
switching the images to its account, and knowing that its images were now inextricably mixed
with the NewSport collection, Zuma made no further efforts to retrieve its images. Getty
reasonably believed, because of Zuma's actions, that it had the rights to use and license all the
photographs acquired from NewSport, including the photographs that Zuma had comingled with
the NewSport photographs.
II.
Getty Lacked the Requisite Intent to Violate § 1202
The claims under§ 1202 are barred by the defense of estoppel. See supra. The claims
also fail since Getty lacked the requisite intent required to state a claim under § 1202. Section
1202(a) makes it unlawful "with the intent to induce, enable, facilitate, or conceal infringement"
to provide false "copyright management information" or "distribute or import for distribution
copyright management information that is false." See 17 U.S.C. § 1202(a). Section 1202(b)
provides that no person shall "intentionally remove or alter any copyright information" knowing
that "it will induce, enable, facilitate, or conceal an infringement of any right under this title."
See 17 U.S.C. § 1202(b). The undisputed facts show that Getty had no knowledge that Zuma's
images were comingled with the NewSport collection. Getty utilized an automated process to
migrate the NewSport collection and, by that process, appended copyright management
information referring to NewSport and Getty under the reasonable assumption that the images
were owned by NewSport and licensed to Getty. There is no evidence that Getty intended to
induce or facilitate infringement.
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Case 1:16-cv-06110-AKH Document 172 Filed 10/04/18 Page 12 of 12
III.
Images at Issue in This Case
Of the 47,048 Accused Images, plaintiffs submitted evidence that 31,733 are the subject
of valid copyright registrations. The 31,733 images comprise 19,556 owned by the nine
individual plaintiffs; 4,045 represented by and subject to Zuma's exclusive relationship; 782
owned by plaintiff OSports; and 7,350 owned by Action Sports. See Dkt. No. 160, at 1
(summary by counsel for plaintiffs).
With respect to a portion of these images (8,259 out of 31,733), defendant challenges
plaintiffs' standing to bring their claims. These challenges are moot in light of my granting
summary judgment to defendant on the basis of the equitable estoppel defense.
CONCLUSION
For the reasons stated above, I deny plaintiffs' motion and grant defendant's motion for
summary judgment, dismissing the Second Amended Complaint in 16 Civ. 6110, Dkt. No. 36,
and the Complaint in 17 Civ. 5832, Dkt. No. 1. The Clerk shall enter judgment for defendant,
dismissing the two actions against it, with costs to be taxed by the Clerk. The Clerk shall
terminate the motions (Dkt. Nos. 72, 78), and mark the case closed.
SO ORDERED.
Dated:
October ~O 18
New Yof'~ew York
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