Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 1 of 24
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`SARL LOUIS FERAUD INTERNATIONAL,
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`: 04 Civ. 9760 (GEL)
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`Plaintiff,
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`-against-
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`VIEWFINDER INC. d/b/a FIRSTVIEW,
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`Defendant.
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`S.A. PIERRE BALMAIN,
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`Plaintiff,
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`VIEWFINDER INC. d/b/a FIRSTVIEW,
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`Defendant.
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`OPINION AND ORDER
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` 04 Civ. 9761 (GEL)
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`James P. Duffy, III, Berg and Duffy, LLP,
`Manhasset, New York, for Plaintiffs Sarl
`Louis Feraud International and S.A. Pierre Balmain.
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`Steven J. Hyman and Paul H. Levinson,
`McLaughlin & Stern, LLP, New York, New York,
`for Defendant Viewfinder Inc.
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`GERARD E. LYNCH, District Judge:
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`Plaintiffs brought these actions to enforce default judgments they had obtained against
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`defendant in a French court. This Court dismissed the action, finding that enforcing the
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`judgment would violate New York’s public policy because defendant’s actions were protected
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`by the First Amendment, Sarl Louis Feraud Int’l v. Viewfinder Inc., 406 F. Supp. 2d 274
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 2 of 24
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`(S.D.N.Y. 2005) (“Feraud I”). The Court of Appeals vacated and remanded, instructing this
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`Court to consider first, whether the defendant’s actions would be protected by the fair use
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`doctrine under American law, and second, if they were so protected, whether French intellectual
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`property law provides protection comparable to that afforded by the fair use doctrine. Sarl Louis
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`Feraud Int’l v. Viewfinder Inc., 489 F.3d 474 (2d Cir. 2007) (“Feraud II”).
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`The Court of Appeals having declined to resolve the issue of fair use itself, finding that
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`“the record before us is insufficient to determine fair use as a matter of law,” 489 F.3d at 483,
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`this Court permitted additional discovery on that issue. Following discovery, rather than proceed
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`to a hearing to determine the matter, plaintiffs moved for summary judgment, contending that, on
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`the basis of the facts now in evidence, a court applying American law would be required to rule
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`against defendant’s fair use claim as a matter of law. Because resolution of the fair use issue
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`will require detailed findings of fact regarding matters about which there are genuine disputes,
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`the motion will be denied.
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`BACKGROUND
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`Because the procedural and factual background to this dispute is set forth in some detail
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`in Feraud I and Feraud II, only those facts bearing directly on this motion will be presented here.
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`The plaintiffs, Sarl Louis Feraud International (“Feraud”) and S.A. Pierre Balmain (“Balmain”),
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`are French corporations that design and market high-fashion clothing. From 1996-2001, the
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`period relevant to the underlying French Judgment, plaintiffs were members of the Fédération
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` Feraud is no longer an operating business entity, but still exists as a shell corporation
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`for purposes of, inter alia, pursuing this action. (Ashby Dep. 38.) Although this motion for
`summary judgment primarily addresses Balmain’s case, Feraud is listed as a plaintiff on all
`filings, and the parties have treated the motion as filed on behalf of both plaintiffs.
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 3 of 24
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`Française de la Couture, du Prêt-à-Porter des Couturiers et des Créateurs de Mode (French
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`Federation of Fashion and of Ready-to-Wear of Couturiers and Fashion Designers) (the
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`“Federation”). The Federation controlled the press accreditation process for the fashion shows
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`organized by the plaintiffs that are the subject of the French Judgment.
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`Defendant Viewfinder Inc. is a Delaware corporation with its principal place of business
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`in New York. Viewfinder operates an internet fashion magazine called firstView,
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`www.firstview.com, on which it posts photographs of fashion shows, including plaintiffs’. The
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`photographs are taken by Donald Ashby and Marcio Madeira, respectively the president and
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`vice-president of Viewfinder, who are professional fashion photographers. The firstView
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`website contains both photographs of the current season’s fashions, which may be viewed only
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`by purchasing a subscription, and photographs of past collections, which are available for free.
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`FirstView also sells its photographs of runway shows to various other publications, including
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`Vogue and The New York Times. See http://www.firstview.com/page.php?i=7 (last visited Oct.
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`4, 2008). Viewfinder does not sell clothing or designs.
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` In the French action, the plaintiffs contended – and the court, after Viewfinder defaulted,
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`found – that Viewfinder made unauthorized use of plaintiffs’ intellectual property and engaged
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`in unfair competition by posting photographs of plaintiffs’ clothing designs. The Court then
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`entered judgment in favor of plaintiffs, awarding 1,000,000 francs in compensatory damages.
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`On September 29, 2005, this Court held that the French Judgment’s compensatory remedies were
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` The exchange rate of the French franc is locked to the euro at 6.55957 francs. See
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`http://coinmill.com/FRF_calculator.html (last visited Dec. 17, 2008). On December 17, 2008,
`the exchange rate of euros to dollars was 1.00-1.44160. http://www.xe.com/ucc/convert.cgi.
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`3
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` For a detailed description of the French action, see Feraud II, 489 F.3d at 477-79.
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 4 of 24
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`inconsistent with the First Amendment and therefore repugnant to public policy; accordingly, it
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`granted defendant’s motions to dismiss and for summary judgment. See Feraud I, 406 F. Supp.
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`2d at 274.
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`On June 5, 2007, the Second Circuit vacated this Court’s Order. The Court of Appeals
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`agreed with this Court that a foreign judgment that conflicted with First Amendment protections
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`of free expression could be repugnant to public policy. Feraud II, 489 F.3d at 480. It
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`concluded, however, that “[b]ecause the fair use doctrine balances the competing interests of the
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`copyright laws and the First Amendment, some analysis of that doctrine is generally needed
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`before a court can conclude that a foreign copyright judgment is repugnant to public policy.” Id.
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`at 482. Moreover, the Court noted that even if Viewfinder’s actions would be protected as fair
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`use under American law, enforcing the judgment would not violate public policy if French law
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`provided comparable protections. Id. at 481-82. Viewfinder could not default the French
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`actions, declining to take advantage of such protection, and then litigate the fair use issue in the
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`United States instead. Accordingly, the Second Circuit remanded the action to this Court to
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`determine first “the level of First Amendment protection required by New York public policy
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`when a news entity engages in the unauthorized use of intellectual property at issue here” and
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`second “whether the French intellectual property regime provides comparable protections.”
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`Feraud II, 489 F.3d at 480.
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` Where, as in the instant case, federal jurisdiction rests on diversity of citizenship,
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`federal courts look to the law of the forum state in determining the enforceability of foreign
`judgments. Feraud I, 406 F. Supp. 2d at 279 (citing S.C. Chimexim S.A. v. Velco Enters., Ltd.,
`36 F. Supp. 2d 206, 211 (S.D.N.Y. 1999)).
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 5 of 24
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`Thus, this Court was asked to determine (1) whether Viewfinder’s actions would
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`constitute fair use under American intellectual property law, and therefore would be protected by
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`the First Amendment, and (2) whether French intellectual property law provided comparable
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`protection to American fair use doctrine. Rejecting this Court’s suggestion that the parties
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`proceed to a hearing to determine both issues, or alternatively deal first with the essentially legal
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`determination of the extent to which French intellectual property law permitted defenses
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`analogous to our fair use doctrine, plaintiffs elected to move for summary judgment, arguing that
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`the Court need not reach any issue of French law because defendant’s conduct as a matter of law
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`would not be considered fair use under American copyright and First Amendment principles.
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`The evidence relating specifically to the fair use issue will be discussed below.
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`I.
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`Summary Judgment Standard
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`DISCUSSION
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`Summary judgment is appropriate where “the pleadings, depositions, answers to
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`interrogatories, and admissions on file, together with affidavits, if any, show that there is no
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`genuine issue as to any material fact and that the moving party is entitled to a judgment as a
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`matter of law.” Fed. R. Civ. P. 56(c). The Court’s responsibility is to determine whether there is
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`a genuine issue to be tried, and not to resolve disputed issues of fact. See Anderson v. Liberty
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`Lobby, Inc., 477 U.S. 242, 249 (1986). The Court must draw all reasonable inferences and
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`resolve all ambiguities in the nonmoving party’s favor, and construe the facts in the light most
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`favorable to the nonmoving party. Id. at 254-55. However, “[i]f the evidence is merely
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`colorable, or is not significantly probative, summary judgment may be granted.” Id. at 249-50
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`(citations omitted).
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 6 of 24
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`The party seeking summary judgment bears the burden of showing that no genuine
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`factual dispute exists. See Cronin v. Aetna Life Ins. Co., 46 F.3d 196, 202 (2d Cir. 1995). Once
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`the moving party has made a showing that there are no genuine issues of material fact, the
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`burden shifts to the nonmoving party to raise triable issues of fact. Anderson, 477 U.S. at 250.
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`A genuine issue for trial exists if, based on the record as a whole, a reasonable jury could find in
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`favor of the nonmoving party. Id. at 248.
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`II.
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`Fair Use
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`“With regard to the protections provided by the First Amendment for the unauthorized
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`use of copyrighted material, [the Second Circuit] has held that absent extraordinary
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`circumstances, ‘the fair use doctrine encompasses all claims of first amendment in the copyright
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`field.’” Feraud II, 489 F.3d at 482, quoting Twin Peaks Prods., Inc. v. Publ’ns Int’l, Ltd., 996
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`F.2d 1366, 1378 (2d Cir. 1993).
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`The fair use doctrine is a statutory exception to copyright infringement. Section 107 of
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`the Copyright Act permits the unauthorized use or reproduction of copyrighted work “for
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`purposes such as criticism, comment, news reporting, teaching (including multiple copies for
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`classroom use), scholarship, or research.” 17 U.S.C. § 107. Factors to be considered in
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`determining whether a use of copyrighted material falls within the exception include: (1) “the
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`purpose and character of the use,” including whether the use is of a commercial nature; (2) “the
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` Although U.S. copyright law does not provide protection for fashion designs, see, e.g.,
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`Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995), French law does provide
`such protection. Code de la propriété intellectuelle art. L 112-2 (Fr.), available at
`http://www.legifrance.gouv.fr. As both this Court and the Second Circuit recognized, Feraud I,
`406 F. Supp.2d at 281; Feraud II, 489 F.3d at 480, 483, the difference in scope of copyright
`protection does not affect the enforceability of the French judgment. Accordingly, the Court’s
`analysis treats the clothes depicted in Viewfinder’s photographs as copyrighted subject matter.
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 7 of 24
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`nature of the copyrighted work;” (3) “the amount and substantiality of the portion used in
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`relation to the copyrighted work as a whole;” and (4) “the effect of the use upon the potential
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`market for or value of the copyrighted work.” 17 U.S.C. § 107. See Feraud II, 489 F.3d at 482.
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`There is no bright line rule for weighing these four statutory factors against each other, and no
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`single factor is dispositive. See Campbell v. Acuff-Rose Music, 510 U.S. 569, 578 (1994). “The
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`ultimate test of fair use . . . is whether the copyright law’s goal of promoting the Progress of
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`Science and useful Arts would be better served by allowing the use than by preventing it.”
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`Castle Rock Entm’t, Inc. v. Carol Publ’g Group, 150 F.3d 132, 141 (2d Cir. 1998) (internal
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`citations and quotation marks omitted).
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`The Court of Appeals directed this Court to make findings with respect to the fair use
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`factors, including in particular “what proportion of plaintiffs’ designs were revealed by
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`[defendants’] photographs.” 489 F.3d at 483. In the context of summary judgment, these facts
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`must be assessed in the light most favorable to defendant, as the non-moving party.
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`A.
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`Purpose and Character of the Use
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`1.
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`Transformative Use
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`A primary inquiry into any allegedly infringing use is whether the new work “merely
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`supersedes the objects of the original creation,” Campbell, 510 U.S. at 579 (internal citations
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`omitted), or instead “adds something new, with a further purpose or different character, altering
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`the first with new expression, meaning, or message; it asks, in other words, whether and to what
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`extent the new work is ‘transformative.’” Id. (quoting Pierre N. Leval, Toward a Fair Use
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`Standard, 103 Harv. L. Rev. 1105, 1111 (1990)). Transformative use is not a requirement for a
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`finding of fair use, see Sony Corp. of America v. Universal City Studios Inc., 464 U.S. 417, 455
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 8 of 24
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`n.40 (1984), but “the more transformative the new work, the less will be the significance of other
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`factors, like commercialism, that may weigh against a finding of fair use.” Campbell, 510 U.S.
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`at 579.
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`Plaintiffs contend that Viewfinder’s use is not transformative because its photographs
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`“leave the character of the original garments unchanged” and are no more than a “photocopy” of
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`plaintiffs’ copyrighted creations. (Pl. Mem. 16.) Plaintiffs’ argument mischaracterizes the
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`relevant caselaw.
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`While courts have declined to find a transformative use when the defendant has “done no
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`more than find a new way to exploit the creative virtues of the original work,” Blanch v. Koons,
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`467 F.3d 244, 252 (2d Cir. 2006) (citing Davis v. Gap, Inc., 246 F.3d 152, 173 (2d Cir. 2001))
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`(use of plaintiff’s eyewear in a clothing advertisement not transformative because it was “worn
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`as eye jewelry in the manner it was made to be worn”), courts have found a secondary use to be
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`transformative when it is “plainly different from the original purpose for which [the copyrighted
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`work was] created” – even where a secondary user has made an exact replication of a
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`copyrighted image. Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605, 609 (2d
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`Cir. 2006); see also Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007);
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`Kelly v. Arriba Soft Corp., 336 F.3d 811, 818-19 (9th Cir. 2003); Nunez v. Caribbean Int’l News
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`Corp., 235 F.3d 18, 22-23 (1st Cir. 2000). Viewfinder’s argument for transformative use is
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`stronger than those of the defendants in the cited cases, because it did not make an exact
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`replication of plaintiffs’ copyrighted works. In those cases, the copyrighted works were
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`themselves images and not, as in the instant case, three-dimensional, life-sized garments. As this
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`Court previously explained,
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 9 of 24
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`[t]he notion that photographs merely reproduce reality, and do not
`apply a creative, or even distorting, eye to the events is long
`discredited. The photographer selects the image to be reproduced,
`capturing a particular angle of view, and that image conveys, in the
`case of plaintiffs’ creations, at best a partial, two-dimensional
`impression of the actual work . . . Viewfinder has not copied
`plaintiffs’ dresses; it has displayed a particular depiction of them.
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`Feraud I, 406 F. Supp. 2d at 283.
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`Furthermore, plaintiffs’ purpose is to design and market fashion while firstView’s
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`purpose – or at least one of its primary purposes – is to provide the public with news dispatches
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`from the front lines of the fashion world. (Ashby Dep. 53, 58.) Since firstView reports from all
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`the fashion shows of a given season, its photographs capture not only the latest trends in clothing
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`design but also the overall aesthetics of the fashion shows and the ideals of beauty they represent
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`– including the models’ makeup, hairstyles, body types, and ethnicities, and the stage design of
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`the presentations. FirstView converts plaintiffs’ designs from things to buy into indicia of larger
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`industry patterns and social trends – in other words, into news. Thus, despite Viewfinder’s
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`leaving the “character of the original garments unchanged,” a reasonable factfinder could find its
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`secondary use highly transformative.
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`2. Commercial Use
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`Another inquiry under the first factor is whether the allegedly infringing use is of a
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`commercial nature or is instead for nonprofit educational purposes. 17 U.S.C. § 107(1).
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`Although a secondary use’s commercial character tends to weigh against a finding of fair use,
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`“[t]he mere fact that a use is educational and not for profit does not insulate it from a finding of
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` Deposition page cites refer to the deposition transcript’s pagination, not that of the
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`exhibit in which the transcript can be found.
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 10 of 24
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`infringement, any more than the commercial character of a use bars a finding of fairness.”
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`Campbell, 510 U.S. at 584 (noting that if commerciality were to carry “presumptive force against
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`a finding of fairness, the presumption would swallow nearly all of the illustrative uses listed in
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`the preamble paragraph of § 107, including news reporting, comment, criticism, teaching,
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`scholarship, and research, since these activities are generally conducted for profit”) (internal
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`citations omitted). Accordingly, the Second Circuit has been careful “not [to] give much weight
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`to the fact that [a] secondary use was for commercial gain.” Castle Rock Entm’t, 150 F.3d at
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`141.
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`Viewfinder’s use of its photographs of plaintiffs’ designs is undisputedly commercial.
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`FirstView has generated both subscription and advertising revenue, as well as profits from the
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`sale of individual photographs to other publications. (Ashby Dep. 51, 165-66, 195-98, 203-09.)
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`The images on the firstView website thus serve as both the content of its newsmagazine and also
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`as a catalog of products available for purchase.
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`Courts have looked disapprovingly at the “commercial exploitation” that occurs when an
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`allegedly infringing user “directly and exclusively acquires conspicuous financial rewards from
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`its use of the copyrighted material.” American Geophysical Union v. Texaco Inc., 60 F.3d 913,
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`922 (2d Cir. 1994). In the instant case, Viewfinder is not merely profiting by using images of
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`plaintiffs’ copyrighted work in the content of its magazine; it is also profiting by selling images
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` The record contains evidence that firstView no longer runs advertisements and did so
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`only for part of the time period relevant to the underlying litigation. (Ashby Dep. 210-12.)
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` The Second Circuit has, however, also questioned “[w]hether ‘exploitation’ is an
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`analytically useful term or only a label attached to works deemed not protected by the fair use
`defense.” Twin Peaks, 996 F.2d at 1375.
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 11 of 24
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`of plaintiffs’ copyrighted work directly. This wholesale aspect of Viewfinder’s business would
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`weigh strongly in plaintiffs’ favor but for a few mitigating considerations.
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`First, the instant action can be distinguished from cases where courts have found
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`commercial exploitation in that Viewfinder is not trying to profit by selling plaintiffs’ images;9
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`rather it is selling its own images – that is, the photographs which Ashby and Madeira took and
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`of which firstView owns the copyright – which in turn depict plaintiffs’ copyrighted designs.
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`Courts have long recognized that photographs are a form of artistic expression, see, e.g.,
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`Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884), and not merely a “photocopy”
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`of the subjects depicted therein.
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`Second, courts tend to be solicitous of works which, “though intended to be profitable,
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`aspire[] to serve broader public purposes.” Twin Peaks, 996 F.2d at 1375. FirstView arguably
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`qualifies as such a work in its capacity as an online newsmagazine. It documents events which
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`are of public interest and is regularly used as a reference tool by students and professionals alike.
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`(Declaration of Donald Ashby, dated March 21, 2008 ¶¶ 15-18.) Finally, Viewfinder’s position
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`is buttressed by the fact that “[t]he crux of the profit/nonprofit distinction is not whether the sole
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`motive of the use is monetary gain but whether the user stands to profit from exploitation of the
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`copyrighted material without paying the customary price.” Harper & Row, Publrs. v. Nation
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`Enters., 471 U.S. 539, 562 (1985). In Harper & Row, the defendant “knowingly exploited a
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`purloined manuscript” rather than pay the customary price – the $25,000 paid by the winning
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` See, e.g., Iowa State Univ. Research Found., Inc. v. American Broad. Cos., Inc., 621
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`F.2d 57, 61 (2d Cir. 1980) (ABC telecasts containing portions of film on wrestler were
`“commercial exploitation”); Meeropol v. Nizer, 560 F.2d 1061, 1069 (2d Cir. 1977) (book
`containing someone else’s copyrighted letters could constitute “commercial exploitation”).
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`bidder – for first serial rights. Id. In the instant case, there is no “customary price” which
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`plaintiffs usually charge to allow newspapers and magazines to publish photographs of their
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`designs; on the contrary, they invite the media to their fashion shows with the expectation that
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`they will publish such photographs.
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`For these reasons, while the commercial nature of Viewfinder’s actions may well count
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`against a finding of fair use, a factfinder would have to carefully weigh these other concerns
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`before determining whether and to what extent this factor supports plaintiffs’ position.
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`3. Propriety of Defendant’s Conduct
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`As a final consideration under the first factor of the fair use analysis, plaintiffs assert that
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`Viewfinder acted in bad faith and that this bad faith should weigh in plaintiffs’ favor. This
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`consideration too presents disputed issues of fact.
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` The evidence would support a finding that Ashby and Madeira acted in violation of the
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`terms of their press accreditation, which stated that “[p]hotographs can only be used by
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`newspapers or magazines duly represented at the collections, are limited to seven garments, and
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`may not be sold or even given to anybody.” (Ashby Dep. 172.) It is undisputed that Ashby
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`and Madeira have never sought accreditation for firstView but have instead received their press
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`credentials through The New York Times Magazine (Ashby), and L’Officiel, Elle, and Elle
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`International (Madeira). (Ashby Dep. 150-52.) It is also undisputed that Ashby and Madeira
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`used their photographs for firstView, a magazine which was not “duly represented at the
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` This was the accreditation language during the time period of the underlying litigation.
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`(Ashby Dep. 170-71.) The Federation’s current accreditation policy states that “photographers
`are prohibited from supplying their photos . . . to any media other than those for which they are
`accredited and/or from making use of them in any other way without the express written consent
`of the rights owners.” (Declaration of James P. Duffy, III, dated Feb. 15, 2008, Ex. 1 at 10.)
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`collections,” and also that, through firstView, they sold the photographs they took at the shows.
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`That Ashby and Madeira acted in violation of the terms of their licenses may give the
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`Federation reason to revoke those licenses,
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` but that violation is not necessarily tantamount to a
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`showing of bad faith within the meaning of that term for purposes of the fair use doctrine. In
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`Harper & Row, the Court found bad faith on the part of the defendant where the secondary use
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`“had not merely the incidental effect but the intended purpose of supplanting the copyright
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`holder’s commercially valuable right of first publication” and where defendant had “knowingly
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`exploited a purloined manuscript.” 471 U.S. at 562-63 (emphasis added). In this case, Ashby
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`testified that he and Madeira were unaware of the abovementioned restrictions on accreditation
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`since the paperwork was filled out by the publications for which the photographers were
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`accredited and not by the photographers themselves. (Ashby Dep. 176.) Ashby also testified
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`that he did not think it was necessary to apply for separate accreditation for firstView when he
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`and Madeira were already accredited for other publications. (Ashby Dep. 160.) Whether these
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`explanations are credible is not to be decided at this stage of the litigation; on summary
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`judgment, a court must construe the facts in the light most favorable to the nonmoving party.
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`Thus, whether defendant acted in bad faith presents issues of fact for resolution at trial.
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`4. Conclusions as to the First Factor
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` The inquiry into the “character and purpose” of the alleged infringer’s use is fact-
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`intensive, and requires a subtle balancing of several sub-factors, each of which in turn involves
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` The litigation against Viewfinder began in 2001 in France. The fact that Ashby and
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`Madeira still receive press accreditation from the Federation and that firstView is still alive and
`well – and has as clients some of the biggest names in the fashion media – would suggest at least
`a tacit condonation of firstView by the Federation and by the publications for which Ashby and
`Madeira are actually accredited.
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 14 of 24
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`the resolution of disputed facts. Depending on how those disputes were resolved, a reasonable
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`fact-finder could find that Viewfinder’s use of plaintiffs’ designs is transformative, that its use
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`did not amount to commercial exploitation, and that Viewfinder did not act in bad faith.
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`Moreover, even if not all of these considerations were found to favor the defendant, the
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`appropriate balance of the considerations is itself a factual question that is not, on this record,
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`appropriately made on summary judgment.
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`B. The Nature of the Copyrighted Work
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`The second statutory factor, “the nature of the copyrighted work,” 17 U.S.C. § 107(2),
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`“calls for recognition that some works are closer to the core of intended copyright protection
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`than others, with the consequence that fair use is more difficult to establish when the former
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`works are copied.” Castle Rock Entm’t, 150 F.3d at 144 (quoting Campbell, 510 U.S. at 586).
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`Creative works, such as plaintiffs’, are typically given broader protection than factual works.
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`See Stewart v. Abend, 495 U.S. 207, 237 (1990). This broad protection is qualified, however,
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`where – as here – the “creative work of art is being used for a transformative purpose.” Bill
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`Graham Archives, 448 F.3d at 612.
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`The second important aspect of a copyrighted work’s “nature” is whether it is published
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`or unpublished. See, e.g., Blanch, 467 F.3d at 256. The scope of fair use is narrower with
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`respect to unpublished works because “the author’s right to control the first public appearance of
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`his undisseminated expression” usually trumps any use of the work before its release. Harper &
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`Row, Publrs., 471 U.S. at 555. Thus, “[u]npublished works are the favorite sons of factor two.”
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`Wright v. Warner Books, Inc., 953 F.2d 731, 737 (2d Cir. 1991).
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 15 of 24
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`In most cases, there is little or no dispute about whether the copyrighted work has had its
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`“first public appearance.” In Harper & Row, for example, no one disputed that Gerald Ford’s
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`memoirs were unpublished and that The Nation had interfered with the publisher’s valuable right
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`to license prepublication excerpts to another news magazine. 471 U.S. at 542. In Campbell,
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`meanwhile, no one disputed that Roy Orbison’s “Oh Pretty Woman” had been released to the
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`public for than twenty-five years before 2 Live Crew came out with its rap parody of the song.
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`510 U.S. at 572.
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`Here, though, whether plaintiffs’ works have had their public debut is a matter of
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`contention. Plaintiffs assert that, because the fashion shows were not open to the general public,
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`their designs had not yet had their first public appearance when firstView published its
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`photographs.
`12
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` This argument is hardly conclusive. Viewfinder points out that approximately
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` While plaintiffs contend that the fashion shows were not the first public appearance of
`12
`their designs, it is not apparent from their briefing papers what exactly they do consider the
`designs’ first public appearance to be. If by “publication,” they mean the literal appearance of
`their copyrighted work in the printed media, plaintiffs did not control that anyway. First, it was
`the Federation and not plaintiffs themselves who controlled the press accreditation process.
`(Diemoz Dep. 77.) Second, plaintiffs do not – and cannot – control media coverage of their
`brands. They are of course free to choose the publications to which they grant interviews or in
`which they advertise. But just as plaintiffs have no guarantee that Vogue or L’Officiel or other
`“desirable” media will run photographs of their new designs, let alone review them favorably, so
`they cannot prevent the “common media” from covering their latest designs. (Diemoz Dep. 83.)
`The Copyright Act defines publication as “[t]he distribution of copies or phonorecords of
`a work to the public by sale or other transfer of ownership, or by rental, lease, or lending,” and
`specifies that “offering to distribute copies or phonorecords to a group of persons for purposes of
`further distribution, public performance, or public display, constitutes publication.” 17 U.S.C. §
`101. To the extent that plaintiffs are relying on the Act’s definition of “publication,” plaintiffs’
`designs would have their first appearance when they are first offered for sale. It is unclear from
`the record whether plaintiffs’ new designs are offered for sale at or simultaneously with their
`runway shows. If they are, plaintiffs’ works were already published before firstView posted its
`images of the runway shows, and firstView could not have interfered with plaintiffs’ publication
`rights. Even if the clothes were not yet on sale to the public at the time of the shows, plaintiffs
`are still unable to demonstrate that the publication of firstView’s photographs – which occurred
`in tandem with the publication of similar photographs in newspapers and magazines around the
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`Case 1:04-cv-09760-GEL Document 42 Filed 12/19/08 Page 16 of 24
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`800 buyers, 2000 journalists, 400 photographers, and other fashion professionals attend the Paris
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`fashion shows each season. (Pl. Mem. 7.) Even though admittance to the shows is by invitation
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`only, it is difficult to classify as “private” highly-publicized commercial exhibitions to which the
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`international media has been invited, and for which public attention is not only expected but
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`courted. As this Court noted in Feraud I, the “First Amendment simply does not permit plaintiffs
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`to stage public events in which the general public has a considerable interest, and then control
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`the way in which information about those events is disseminated in the mass media.” 406 F.
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`Supp. 2d at 285.
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`Plaintiffs concede that a great deal of thought and money goes into conceiving and
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`executing its runway shows and that these funds come from their marketing budget. (Diemoz
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`Dep. 153.) Ashby and Madeira did not sneak into plaintiffs’ ateliers and circulate photographs
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`of new designs before plaintiffs had unveiled them. Instead, firstView posted photographs of
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`plaintiffs’ clothing designs as plaintiffs had chosen to display them – in the location, and with
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`the decor, lighting, models, hairstyles, and makeup of plaintiffs’ choosing –