Zuma Press, Inc. v. Getty Images (US), Inc.

Filing 189

ORDER AND OPINION GRANTING IN PART AND DENYING IN PART PLAINTIFFS' MOTION FOR RECONSIDERATION re: (175 in 1:16-cv-06110-AKH) MOTION for Attorney Fees and Costs filed by Getty Images (US), Inc., (180 in 1:16-cv-06110-AKH, 180 in 1: 16-cv-06110-AKH, 180 in 1:16-cv-06110-AKH) MOTION for Reconsideration re; (172) Memorandum & Opinion(173) Clerk's Judgment MOTION for Reargument re: (172) Memorandum & Opinion (173) Clerk's Judgment . MOTI ON to Vacate (173) Clerk's 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 Photo graphy, Inc., Robert Backman, Andrew Dieb, Louis Lopez. For the reasons stated above, Plaintiffs' motion for reconsideration (ECF No. 180) is granted in part and denied in part. As to Plaintiffs' copyright infringement claim, the motion for reconsideration is granted, and the Second Amended Complaint is reinstated as to that claim. As to Plaintiffs' DMCA claim, the motion for reconsideration is denied. Getty's motion for attorney's fees (ECF No. 175) is denied as p remature. The parties shall appear for a status conference on February 22, 2019 at 10:00 A.M. The Clerk shall mark ECF Nos. 175 and 180 terminated. SO ORDERED. (Status Conference set for 2/22/2019 at 10:00 AM before Judge Alvin K. Hellerstein.) (Signed by Judge Alvin K. Hellerstein on 1/24/2019) Filed In Associated Cases: 1:16-cv-06110-AKH, 1:17-cv-05832-AKH(ne)

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·•)CUMENT
UNITED STATES DISTRI CT COURT
SOU'THERN DISTRI CT OF NEW YORK

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ZUMA PRESS, INC., ACTIO N SPORTS
PHOTO GRAPH Y, INC., TIYU (BEIJING)
CULTU RE MEDIA CO. LTD., MANN Y
FLORE S, ANDRE W DIEB, CHRIST OPHER
SZAGOLA, LOUIS LOPEZ, CHARLES BAUS,
DUNCA N WILLIAMS, ROBER T BACKM AN,
JOHN MIDDL EBROO K, and ANTHO NY
BARHA M,
Plaintiffs,
-against-

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JOC #:
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·.lTE FILED:

ORDER AND OPINION
GRANTING IN PART AND
DENYING IN PART
PLAINTIFFS' MOTIO N FOR
RECONSIDERATION
16 Civ. 6110 (AKH)
17 Civ. 5832 (AKH)

GETTY IMAGES (US), INC.,
Defendant.

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AL VINK. HELLE RSTEIN , U.S.D.J.:
Plaintiffs move for reconsideration of the Court's October 4, 2018 Order and
Opinion Granting Summa ry Judgme nt to Defenda nt Getty Images (US), Inc. ("Getty"),
ECF No.
172 ("Summ ary Judgme nt Order"). They argue that the Court overlooked key facts relating
to:
the removal of images owned by, or exclusively licensed to, plaintiffs (the "Accuse d Images"
)
from the public-facing website of Corbis Corporation ("Corbis"); the belief of Plaintif f
Zuma
Press, Inc. ("Zuma ") as to whether the images had been removed; and Getty's knowled
ge of, and
reliance on, Zuma's conduct. For the reasons discussed below, Plaintiffs' motion is granted
as to
its copyright infringement claim under the Copyright Act, 17 U.S.C. § 501, and denied
as to its
claim under the Digital Millenn ium Copyright Act ("DMCA "), 17 U.S.C. § 1202.

DISCUSSION
In this district, "[m]otio ns for reconsideration are governed by Federal Rule of
Civil Procedure 59(e) and Local Rule 6.3." Sullivan v. City ofNew York, No. 14-CV-1
334 JMF,

2015 WL 5025296, at *3 (S.D.N.Y. Aug. 25, 2015), ajf'd, 690 F. App'x 63 (2d Cir. 2017). "A
motion for reconsideration is 'an extraordinary remedy to be employed sparingly in the interests
of finality and conservation of scarce judicial resources .... "' Drapkin v. Mafco Consol. Grp.,

Inc., 818 F.Supp.2d 678, 695 (S.D.N.Y. 2011) (quoting In re Initial Pub. Offering Sec. Litig.,
399 F.Supp.2d 298, 300 (S.D.N.Y. 2005)). "[M]otions for reconsideration are not granted unless
'the moving party can point to controlling decisions or data that the court overlook ed-matte rs,
in other words, that might reasonably be expected to alter the conclusion reached by the court.'"

In re BDC 56 LLC, 330 F.3d 111, 123 (2d Cir. 2003) (quoting Shrader v. CSXTransp., Inc., 70
F.3d 255, 257 (2d Cir. 1995)).
The Court assumes the parties' familiarity with the facts set out in the Summary
Judgment Order.

a. Getty's Equitable Estoppel Defense
The Court granted summary judgmen t to Getty on Plaintiffs' copyright
infringement claim under 17 U.S.C. § 501 on the ground that Zuma was equitably estopped from
asserting the claim. The defense of equitable estoppel requires proof that:
(1) plaintiff had knowledge of defendant's conduct; (2) plaintiff either (a)
intended that defendant rely on plaintiff s 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 plaintiff s conduct; (3) defendant was ignorant of the true facts; and
(4) defendant relied on plaintiff s conduct to its detriment.

Summary Judgment Order at 10-11 (quoting 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)). The Court held that each
of these elements was satisfied, finding that "undisputed evidence" showed the following:
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
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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.
Id. at 11; see also id. at 7 ("No written consent was ever provided by [NewSport's CEO Les]

Walker to Corbis [to remove the Accused Images]. The Accused Images therefore remained as
part of the NewSport collection. Aside from two emails from [Zuma's CEO Scott] McKieman
to [Corbis's Seth] Greenberg [in June 2013] ... , there is no evidence that Zuma spoke further
with Walker or Corbis about this issue, or pursued any legal action against Corbis or Walker.").
In my analysis, I did not see an e-mail sent by McKieman to Greenberg on April
15, 2014. In the e-mail, McKieman writes:
Have a few ZUMA represented image stranglers [sic] 1 that are on Corbis portal
under Newsport. Please take down asap! And confirm. SCOTT DAVIS 7
pictures and ZAK NOYLE I picture[.] Any sales on these? They need to be
reported to ZUMA. Anyway you can search and confirm no others floating
around?
2d Liebowitz Deel., Ex. H, ECF No. 152-8, Bates No. ZUM00371. The e-mail suggests that, as
of April 2014, Corbis had substantially, but not entirely, complied with Zuma's request to take
down the thousands of Accused Images in the NewSport collection.
The e-mail raises an issue of fact whether Zuma reasonably believed that Corbis
had taken down the images, and would soon take down the "stragglers" still remaining. This
fact, if proven, would be sufficient to negate the second element of Getty's equitable estoppel
defense.
Getty argues that Plaintiffs waived this argument by failing to raise it in their
summary judgment papers. Plaintiffs' papers, although not a model of clarity, did refer to the

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I read "stranglers" as "stragglers."
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April 15, 2014 e-mail. See Plaintiffs' Memorandum of Law in Opposition to Defendant's
Motion for Summary Judgment ("Pls.' Opp. Mem."), ECF No. 151, at 31. This reference,
together with Plaintiffs' assertion that they did not "act[] or fail[] to act in such a manner that
Getty had a right to believe it was intended to rely on Plaintiffs' conduct," Pls.' Opp. Mem. at
36, is sufficient. In sum, an issue of fact exists whether or not Plaintiffs are equitably estopped
from asserting their copyright infringement claim. Summary judgment should not have been
granted on that claim.

b. Plaintiffs' Section 1202 Claims
Plaintiffs also argue that the Court overlooked evidence of Getty's intent to
induce or facilitate infringement, which is required to find a violation of Section 1202 of the
DMCA. Plaintiffs, however, fail to identify to any information or controlling law on this point
that the Court overlooked. Plaintiffs' motion to reconsider the Court's grant of summary
judgment on its DMCA claim therefore is denied.

c. Damages
Plaintiffs objects to the Court's statement that the Accused Images "earned in
total less than $100 in revenue for Getty." Summary Judgment Order at 3. The revenue Getty
earned from the Accused Images remains a disputed issue of fact and the Court's statement is not
a ruling on damages.

CONCLUSION
For the reasons stated above, Plaintiffs' motion for reconsideration (ECF No. 180)
is granted in part and denied in part. As to Plaintiffs' copyright infringement claim, the motion
for reconsideration is granted, and the Second Amended Complaint is reinstated as to that claim.
As to Plaintiffs' DMCA claim, the motion for reconsideration is denied. Getty's motion for
attorney's fees (ECF No. 175) is denied as premature. The parties shall appear for a status

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conference on February 22, 2019 at 10:00 A.M. The Clerk shall
mark ECF Nos. 175 and 180
terminated.
SO ORDERED.
Dated:

January 24, 2019
New York, New York
United States District Judge

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