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`gtzatL
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`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 1 of 20
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`
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`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF NEW YORK
`
`
`
`
`
`PAUL NICKLEN and CHRISTINA
`
`MITTERMEIER,
`
`V
`
` Defendants.
`
`
`?laintiffs,
`
`—agai1st—
`
`
`SINCLAIR BROADCAST GROUP,
`
`INC., et al.,
`
`
`
`ZO—Cv—lO3OO (JSR)
`
`OPINION AND ORDER
`
`
`
`
`JED S. RAKOFF, U.S.D.J.
`
`
`Plaintiff Paul Nicklen captured footage of a starving polar
`
`
`and posted the video to his :nstagram.and Facebook accounts. Dozens
`
`of
`
`news outlets
`
`and
`
`online publishers,
`
`including Sinclair
`
`Broadcast Group,
`
`Inc.
`
`and
`
`its affiliates
`
`(collectively,
`
`the
`
`
`“Sinclair‘ Defendants”),
`
`embedded.
`
`the video in online articles
`
`without first obtaining a license. Nicklen then sued the Sinclair
`
`Defendants for copyright infringement. The Sinclair Defendants now
`
`
`
`move
`
`to dismiss
`
`the Second Amended Complaint,
`
`arguing that
`
`embedding a video does not “display” the video within the meaning
`
` of the Copyright Act and that the video’s inclusion in an article
`
`about
`
`the video’s popularity was fair use. For
`
`the reasons that
`
`follow,
`
`the Court denies the motion to dismiss.
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 2 of 20
`
`
`
`
`FACTUAL AN) PROCEJURAL BACKGROUND
`
`
`
`
`Factual Allegations
`
`
`
`The following allegations are presumed true for purposes 0;
`
`the motion
`
`to dismiss.
`
`Paul Nicklen
`
`is
`
`a Canadian nature
`
`photographer,
`
`
`filmmaker,
`
`and
`
`founder
`
`of
`
`the
`
`nonprofit
`
`conservationist organization SeaLegacy. Second Am. Compl.
`
`(“SAC”),
`
`ECF No.
`
`9. Nicklen is the author and registered
`
`72, at ll 2,
`h
`copyright owner or
`
`a video of an emaciated polar bear wandering
`
`
`
`the Canadian Arctic (“the Video”). See SAC ii 159, 169;
`
`see also
`
`
`SAC, Exs. 4, 4A. On December 5, 2017, Nicklen posted the Video to
`
`
`his :nstagram and Facebook accounts. SAC l 5; see also SAC, Ex. 7.
`
`In a caption, Nicklen urged his social media followers to consider
`
`the “haunt[ing]” and “soul—crushing scene” and to take steps to
`
`mitigate the harms of climate change.
`
`
`SAC, EX. 7. Nicklen added
`
`
`that “[w]e must reduce our carbon footprint, eat
`
`the right
`
`food,
`
`
`stop cutting dowr our forests, and begin putting the Earth —— our
`
`
`
`
`
`home —— first.” Id. He then invited his followers to “join us at
`
`@sea_legacy as we search for and implement solutions for the oceans
`
`and the animals that rely on them —— including us hunans.” Id.
`
`Finally,
`
`the caption noted that the Video “is exclusively managed
`
`by Caters News” and directed those seeking “[t]o licerse or use
`
`[the Video]
`
`in a commercial player” to contact Caters News. 1d,;
`
`see also SAC fl 5.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 3 of 20
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`Sinclair
`
`
`I3roadcast Group,
`
`Inc.
`
`is a Maryland—based. media
`
`conglomerate that owns “over 200” local
`
`television stations and
`
`118 wholly owned subsidiaries nationwide (“Sinclair Affiliates”).
`
`
`
`
`SAC Ti 11—12; SAC, 3x. 2.; see also Def. Mot., ECF No. 78, at l.
`
`
`
`On or around December ll, 2017, Sinclair Broadcast Group published
`
`an article titled “Starving polar bear goes viral in heartbreaking
`
`
`
`video.” SAC, EX. 5. Sinclair Broadcast Group included the Video in
`
`this
`
`article
`
`using
`
`the
`
`
`:nstagram or
`
`
`application
`
`programing interface (“APT”)
`
`embed tool.
`
`
`Id. at T 158. Sinclair
`
`Broadcast Group “embedded” the Video by including in its website
`
`
`an HTML code provided by Instagram or Facebook that directed web
`
`browsers
`
`to retrieve the Video from the lnstagrwn or Facebook
`
`server for viewing on Sinclair’s website. See SAC Tl 158—60. The
`
`
`Video appeared within the body 0:
`
`the Sinclair article even when
`
`a reader took no action to retrieve the Video or to navigate to
`
`
`Nicklen’s Facebook or Instagram account,
`
`and even when a reader
`
`
`did not have a Facebook or Instagram account.
`
`Id. at ll 160—61.
`
`
`The Sinclair Broadcast Group article opens by stating that
`
`“[a] photograph of a polar bear is grabbing attention as it shows
`
`the animal
`
`slowly succumbing‘
`
`to starvation.” SAC,
`
`EX.
`
`6. The
`
`article goes
`
`on
`
`to repeat quotes
`
`[Nicklen
`
`gave
`
`to National
`
`Geographic and to explain.that Nicklen “advocated for the reduction
`
`
`0:
`
`the
`
`carbon
`
`footprint,” quoting the portion of Nicklen’s
`
`
`Instagram. caption that described the polar bear population's
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 4 of 20
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`battle against extinction.
`
`
`id. The article closes by noting that
`
`“[t]he video has already reached over 1 million views on Facebook.”
`
`
`
` :d. Nicklen alleges upon information and belief that this Sinclair
`
`Broadcast Group article was
`
`reposted —— and the Video was
`
`re—
`
`embedded —— on all
`
`television station websites operated by the
`
`
`Sinclair Defendants.
`
`SAC i 170.
`
`
`Though Nicklen provided licensing information in the text of
`
`his
`
`
`Instagrani post,
`
`
`the Sinclair Defendants did. not obtain.
`
`a
`
`
`license or Nicklen’s consent before embedding the Video.
`
`SAC
`
`ii 162,
`
`285. On or about December
`
`8,
`
`2020, Nicklen sent
`
`the
`
`
`
`Sinc‘air Affiliates a
`
`takedown notice, but
`
`the Video remains
`
`
`
`displayed on
`
`television station websites
`
`owned
`
`by Sinclair
`
`
`
`Broadcast Group,
`
`
`
`
`
`
`Procedural Background
`
`Inc. and Sinclair Affiliates. SAC ii 170, 178.
`
`Nicklen
`
`and Christina Mittermeierl
`
`sued
`
`the Sinclair
`
`Defendants,
`
`among others,
`
`for copyright
`
`infringement. ECF No. 7.
`
` Vicklen filed a First Amended Complaint adding class allegations.
`
`See ECF No.
`
`ll. Nicklen then filed a Second Amended Complaint,
`
`
`identifying each Sinclair affiliate and the URL 0: each infringing
`
`article. See ECF No. 72.
`
`
`
`a photographer who took a
`1 Co—plaintiff Christina Mittermeier,
`
`still photograph of
`the same polar bear
`that was also widely
`embedded on online news sites, does not allege that the Sinclair
`
`Defendants embedded her photo. See SAC ii 277—78. As
`such,
`the
`Court does not discuss factual allegations and claims relevant
`
`
`
`only to Mittermeier.
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 5 of 20
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` in the operative complaint, Nicklen alleges that by embedding
`
`Nicklen’s
`
`copyrighted video
`
`on Sinclair websites
`
`using the
`
`
`Instagram or Facebook APZ,
`
`the Sinclair Defendants infringed his
`
`exclusive
`
`reproduction, distribution,
`
`and display rights
`
`in
`
` vio‘ation of 17 U.S.C. §§ 106(1),
`
`
`
`
`(3), and (5). See SAC ii 284—
`
`85. Nicklen alleges in the alternative that Sinclair Broadcast
`
`Group is liable for
`
`inducing the copyright
`
`
`infringement of
`
`its
`
`affiliates.
`
`
`Id. at
`
`
`if 291*95. The Sinclair Defendants move
`
`to
`
`
`
`dismiss the Second Amended Complaint. ECF No. 85;
`
`LEGAL STANDARD
`
`
`
`On a motion to dismiss pursuant
`
`to Rule 12(b)(6),
`
`the Court
`
`“accept[s] all factual allegations in the complaint as true, and
`
`
`
`
`draw[s] all reasonable inferences in the plaintiffs’ favor.” Peter
`
`
`F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57,
`
`61
`
`
`(quoting dolmes v. Grubman, 568 F.3d 329, 335 (2d
`
`(2d Cir. 2010)
`
`
`Cir. 2009)). “Threadbare recitals of the elements of a cause of
`
`action” and conclusory allegations are not presumed true. Ashcroft
`
`
`v. Iqbal, 556 U.S. 662, 678 (2009). Disregarding legal conclusions
`
`couched. as
`
`fact,
`
`
`“a complaint must contain. sufficient
`
`factual
`
`matter, accepted as true,
`
`to ‘state a claim for relief that
`
`is
`
`
`plausible on its face.’” Dane v. UnitedHealthcare Ins. Co.,
`
`974
`
`F.3d 183, 188
`
`(2d Cir. 2020)
`
`(quoting Iqbal, 556 U.S. at 678). A
`
`
`claim for relief is facially plausible when the plaintiff “pleads
`
`
`
`
`factual content
`
`that allows
`
`the court
`
`to draw the reasonable
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 6 of 20
`
`inference that the defendant is liable for the misconduct alleged.”
`
`
`Iqbal, 556 U.S. at 678.
`
`DISCUSSION
`
`1.
`
`
`
`Copyright Infringement
`
`
`To state a claim for copyright infringement, a plaintif: must
`
`plead ownership of a valid copyright and that
`
`the defendant has
`
`violated at
`
`least one of
`
`the owner’s exclusive rights under 17
`
`U.S.C.
`
`§ 106:
`
`reproduction, public performance, public display,
`
`
`creation of derivative works, and distribution. See, e.g., Arista
`
`Records, LLC v. Doe 3, 604 F.3d 110, 117 (2d Cir. 2010).
`
`Nicklen has pleaded ownership of a valid copyright. See SAC
`
`11 159, 169;
`
`see also SAC, Ex.
`
`4A. Nicklen also asserts that by
`
`embedding
`
`the Video,
`
`
`the Sinclair Defendants violated his
`
`exclusive right to display the Video publicly. See SAC l 284. The
`
`fundamental question at
`
`issue here is whether embedding a video
`
`“displays” the video within the meaning of the Copyright Act of
`
`
`
`1976. This Court concludes that it does.
`
`Under the Copyright Act, “[t]o ‘display’ a work means to show
`
`
`a copy of
`
`it, either directly or
`
`‘by
`
`Ineans of
`
`a
`
`film,
`
`slide,
`
`television image, or any other device or process or,
`
`in the case
`
`of a motion picture or other audiovisual work,
`
`to show individual
`
`images nonsequentially.” 17 U.S.C.
`
`§ 101. A device or process is
`
` defined as “one now known or later developed,” id.,
`//
`
`and to show
`
`means “to cause or permit
`
`to be seen.
`
`
`See Show, Merriam—Webster
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 7 of 20
`
`
`
`Online Dictionary,
`
`https://www.merriam—webster.com/dictionary/
`
`show (last visited July 27, 2021); accord Show, v., Oxford English
`
`Dictionary,
`
`
`https://www.oed.com/view/Entry/178737
`
`(defining to
`
`“show” as “[t]o present or display (an object)
`
`in order that it
`
`may be looked at;
`
`to expose or exhibit to View”). Thus, under the
`
`plain meaning of
`
`the Copyright Act,
`
`a defendant violates
`
`an
`
`author’s exclusive right to display an audiovisual work publicly
`
`when tte defendant without authorization causes a copy of the work,
`
`or individual
`
`images of the work,
`
`to be seen —— whether directly
`
`or by means of any device or process known in 1976 or developed
`
`
`
`thereafter.
`
`In 1976, Congress crafted a broad display right, conscious
`
`
`
`
`
`the "‘rst explicit statutory
`
`that section 106(5) “represent[ed]
`
`recognition in American copyright
`
`law of an exclusive right
`
`to
`
`show a copyrighted work, or an image of it,
`
`to the public.” H.R.
`
`Rep. No.
`
`94—1476, at
`
`63
`
`(1976). The display right as initially
`
`
`
`drafted was “analogous to the traditional common—law right 0: first
`
`publication in a
`
`literary work,
`
`or
`
`to the moral
`
`right
`
`of
`
`divulgation in continental law, but that right would cease as soon
`
`as
`
`
`a copy 0:
`
`the work was
`
`transferred.” R. Anthony Reese, The
`
`
`Public Display Right: The Copyright Act’s Neglected Solution to
`
`the Controversy Over RAM “Copies”, 2001 U. of Ill. L. Rev. 83, 95
`
`(2001). But
`
`this approach was ultimately set aside. The display
`
`
`right in its final form encompasses “not only the initial rendition
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv—10300-JSR Document 102 Filed 07/30/21 Page 8 of 20
`
`
`or showing, but also any further act by which that rendition or
`
`showing is transmitted or communicated to the public.” H.R. Rep.
`
`94—1476, at 63. As such, an infringer displays a work by showing
`
`“a copy” of the work ~— not
`
`the first copy, or the only copy, but
`
`any copy of
`
`,he work. See 17 U.S.C. § 101.
`
`Further,
`
`the
`
`exclusive display right
`
`set
`
`forth in the
`
`Copyright Act
`
`is
`
`technology—neutral,
`
`covering displays made
`
`directly or by means of any device or process “now known or later
`
`
`developed.” The concept of “display” thus includes “the projection
`
` of'
`
`an image
`
`on.
`
`a
`
`
`screen. or other surface by' any Inethod,
`
`the
`
`
`transmission of an image by electronic or other means,
`
`and the
`
`showing of an image on a cathode ray tube, or similar viewing
`
`apparatus
`
`connected. with any sort of
`
`
`information storage and
`
`retrieval system.” H.R. Rep. No. 94—1476, at 64
`
`(1976). The right
`
`is concerned not with how a work is shown, but
`
`
`that
`
`a work is
`
`shown.
`
`The Copyright Act's text and history establish that embedding
`
`a video on a website “displays” that video, because to embed a
`
`video is to show the video or
`
`individual
`
`images of
`
`the video
`
`nonsequentially by means of a device or process. Nicklen alleges
`
`
`that the Sinclair Defendants included in their web pages an HTML
`\\
`
`
`
`code that caused the Video to “appear[]” within the web page
`
`1'10
`
`
`differently than other content within the Post,” although “the
`
`actual Video .
`
`.
`
`. was stored on Instagram's server.” SAC TT 160—
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 9 of 20
`
`
`61. The embed code on the Sinclair Defendants’ webpages is simply
`
`an information “retrieval
`
`system” that permits the Video or an
`
`individual image of the Video to be seen. The Sinclair Defendants’
`
`act of embedding tterefore falls squarely within the display right.
`
`
`
`The Sinclair Defendants nevertheless insist that embedding is
`
`not display and ask the Court to adopt the Ninth Circuit's “server
`
`rule.” Under that rule,
`
`a website publisher displays an image by
`
`“using a computer
`
`
`to fill a computer screen with a copy of
`
`the
`
`photographic image fixed in the computer’s memory.” Perfect 10,
`
`
`
`:no. v. Amazon.com, Inc., 508 F.3d 1146, 1160 (9th Cir. 2007).
`
`In
`
`contrast, when a website publisher
`
`embeds
`
`an image,
`
`HTML code
`
`“gives the address of
`
`the image to the user’s browser” and the
`
`browser “interacts with the [third—party] computer that stores the
`
`
`
`
`infringing image.” Id. Because the image remains on a third—party’s
`
`
`server and is not fixed in the memory 0: the infringer’s computer,
`
`
`therefore, under the “server rule,” embedding is not display.
`
`Id.
`
`
`
`The
`
`server
`
`rule is contrary to the text
`
`and legislative
`
`history of
`
`
`the Copyright Act. The Act defines to display as “to
`
`show a copy of” a work,
`
`17 U.S.C.
`
`§ 101, not “to make and then
`
`
`show a copy of the copyrighted work.” The Ninth Circuit’s approach,
`
`under which no display is possible unless the alleged infringer
`
`
`has also stored a copy of the work on the infringer’s computer,
`
`
`makes the display right merely a subset of the reproduction right.
`
`See Jane C. Ginsburg & Luke Ali Budiardjo, Embedding Content or
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 10 of 20
`
`Interring Copyright: Does the Internet Need the “Server Rule”?, 32
`
`Colum. J. L.
`
` rule “convert[s]
`
`& Arts 417,
`
`430
`
`(2019)
`
`(explaining that the server
`
`the display right into an atrophied appendage of
`
`the reproduction right” and thereby “ignores Congress’s endeavor
`
`
`to ensure that the full
`
`
`‘bundle’ of exclusive rights will address
`
`evolving modes of exploitation of works”). Further,
`
`the server
`
`rule distinguishes
`
`between showing
`
`a
`
`the
`copy possessed by
`
`
`infringer and showing a copy possessed by someone else. Sec Perfect
`
` 10,
`
`508 F.3d at 1161
`
`(concluding that “Google does not
`
`display a copy of
`
`
`full—size infringing photographic images
`
`for
`
`purposes of
`
`the Copyright Act” because “Google does not have a
`
`
`copy 0:
`
`the images
`
`
`
`for purposes or
`
`the Copyright Ac:”). As
`
`discussed above, when a copy of a work is shown,
`
`the Copyright Act
`
`
`
`makes no such distinction. See,
`
`
`
`e g., An. Rroad. Companies,
`
`Inc.
`
`v. Aereo, Inc., 573 U.S. 431, 441—48
`
`(2014)
`
`(holding that, despite
`
`technological
`
`complexity
`
`concerning
`
`the
`
`“behind—the—scenes”
`
`delivery of images,
`
`“show [an audiovisual work's]
`
`images
`
`the defendant violated the exclusive right to
`I
`in any sequence,’ because
`
`
`“whether Aereo transmits from.the same or separate copies, it
`
`shows the same images and makes audible the same sound”). Rather,
`
`to “show a copy” is to display it. 17 U.S.C.
`
`§ 101.
`
`
`
`
`
`Further,
`
`the Ninth Circuit’s reasoning in Perfect 10 should
`
`be cabined by two facts specific to that case:
`
`(1)
`
`the defendant
`
`operated‘
`
`a
`
`search engine and
`
`(2)
`
`the copyrighted.
`
`images were
`
`10
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 11 of 20
`
`displayed. only if a user clicked. on a
`
`link.
`
`See Goldman. v.
`
`
`
`
`
`
`
` 595302 F. Supp. 3d 585,Breitbart News Network, LLC, (S.D.N.Y.
`
`
`
`2018)
`
`(distinguishing Perfect 10 on these grounds). When a user
`
`
`“open[s] up a favorite blog or website to find a full color image
`
`awaiting the user, whether he or she asked for it,
`
`
`looked for it,
`
`
`
`clicked on it, or not,” the Ninth Circuit’s approach is inapt. gee
`
`id;
`
`This case does not
`
`involve a search engine,
`
`and Nicklen
`
`alleges that no user
`
`intervention was
`
`required to display the
`
`Video’s
`
`individual
`
`images nonsequentially. An
`
`individual still
`
`
`image from the Video awaits Sinclair readers whether they click
`
`the image to play the video or not. Thus, Perfect
`
`lO’s test is a
`
`
`poor fit for this case, and the Court declines to adopt it.
`
`Proponents of
`
`the server rule suggest
`
`that a contrary rule
`
`would
`
`impose
`
`far—reaching
`
`and
`
`ruinous
`
`liability,
`
`supposedly
`
`grinding the
`
`internet
`
`to
`
`a halt.
`
`These
`
`speculations
`
`seem
`
`farfetched, but are,
`
`in any case,
`
`just speculations. Moreover,
`
`the
`
`alternative provided by the server rule is no more palatable. Under
`
`the server rule, a photographer who promotes his work on lnstagram
`
`or
`
`a
`
`filmmaker who posts her short
`
`
`film on YouTube surrenders
`
`control over how, when,
`
`and by whom their work is subsequently
`
`shown —— reducing the display right, effectively,
`
`
`
`
`”first publication that the Copyright Act of 1976 rejects.
`
`right 0
`
`
`
`to the limited
`
`The Sinclair Defendants argue that an author wishing to maintain
`
`control over how a work is shown could abstain from sharing the
`
`ll
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 12 of 20
`
`work on social media, pointing out
`
`that if Nicklen removed his
`
`work from Instagram,
`
`
`the Video would disappear from the Sinclair
`
`
`Defendants’ websites as well. But it cannot be that the Copyright
`
`Act grants authors
`
`an exclusive right
`
`to display their work
`
`publicly only if that public is not online.
`
`
`For the foregoing reasons, Nicklen has plausibly alleged that
`
`by
`
`embedding
`
`the Video without
`
`authorization,
`
`the Sinclair
`
`Defendants violated the display right.
`
`
`
`Fair Use
`
`“Fair
`
`use
`
`II
`
`
`of
`
`a
`
`copyrighted work
`
`is
`
`not
`
`copyright
`
`infringement, 17 U.S.C.
`
`§ 107, but the defendant bears the burden
`
`of showing that a use is fair. Authors Guild v. Google, Inc., 804
`
`
`F.3d 202, 213 (2d Cir. 2015).
`
`
`in determining whether a defendant’s
`I]
`
`
`use is a fair one, courts weigh (1)
`
`
`the purpose and character 0;
`
`the use,
`
`(2)
`
`the nature of the copyrighted work,
`
`(3)
`
`the amount
`
`
`and substantiality of the portion used, and (4)
`
`
`the effect of the
`
`
`
`use upon the market
`
`for or value of
`
`the work in light of
`
`the
`
`purposes of the Copyright Act. Campbell v. Acuff~Rose Music, Inc.,
`
`510 U.S. 569, 578 (2004).
`
`A.
`
`The Purpose and Character of the Use
`
`
`To evaluate the purpose and character of the use,
`
`the Court
`
`considers whether
`
`the use
`
`is
`
`commercial, whether
`
`the use
`
`is
`
`
`
`transformative, and whether there is evidence of bad faith.
`
`Id.
`
`12
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 13 of 20
`
`On the one hand,
`
`the use here is commercial. The “crux” of
`
`the distinction between commercial
`
`and noncommercial use
`
`is
`
`whether “the user
`
`stands
`
`to profit
`
`from. exploitation of
`
`the
`
`copyrighted material without paying the customary price.” Harper
`
`
`& Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 562 (1985).
`
`The more commercial
`
`the use,
`
`the more likely the first
`
`factor
`
`weighs
`
`against
`
`fair use. However,
`
`a
`
`challenged use
`
`is
`
`not
`
`.1:
`“presumptively unfair” because it is pro_it driven. Campbell, 510
`
`U.S. at 594. For
`
`instance, “[a]lmost all newspapers, books and
`
`
`
`magazines are published by commercial enterprises that
`
`seek a
`
`
`profit,” yet news reporting is specifically enumerated under § 107
`
`
`as an example of a fair use of a copyrighted work. Consumers Union
`
`of United States,
`
`
`Inc. v. Gen. Signal Corp., 724 F.2d 1044, 1049
`
`
`
`
`
`
`
`
`
`(2d Cir. 1983); see also Harper & Row, 471 U.S. at 561.
`
`
`The Sinclair Defendants operate for~profit news stations and
`
`
`
`websites that stood to profit from the web traffic the polar bear
`
`video attracted. News outlets often license photos and videos to
`
`illustrate and add visual interest to their articles —— but here,
`
`
`
`the Sinclair Defendants have not paid the licensing fee. The use
`
`On the other hand,
`
`the use here may well be transformative.
`
`
`A transformative use alters the purpose
`
`and context of
`
`the
`
`co
`
`y
`
`ri hted work with “new ex ression, meanin
`9
`
`r
`
`or messa e. See
`
`
`Google LLC v. Oracle Am., ch.,
`
`141 S. Ct.
`
`1183
`
`(2021)(quoting
`
`13
`
`is therefore commercial.
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 14 of 20
`
`
`Campbell, 510 U.S. at 579). “In the context of news reporting
`
`the need to convey information to the public accurately may in
`
`some instances make it desirable and consonant with copyright
`
`law
`
`
`for a defendant
`
`to faithfully reproduce an original work without
`
`alteration.” Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756
`
`F.3d 73,
`
`84
`
`(2d Cir. 2014). For example, “a news report about a
`
`
`
`video that has gone viral on the internet might fairly display a
`
`
`screenshot or clip from that video to illustrate what all the fuss
`
`is about,” thereby “transforming the function of the work in the
`
`
`new context.” Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F.
`
`
`
`Supp. 3d 339, 352 (S.D.N.Y. 2017).
`
`The original purpose and meaning of the work was
`
`likely to
`
`
`
`highlight
`
`the cruel effects of climate change on the polar bear
`
`population and to inspire the audience to donate to or work with
`
`SeaLegacy,
`
`a corservation group founded by Nicklen. See SAC l 2.
`
`The Sinclair Defendants’ use focused on the Video’s popularity.
`
`
` The article stresses that
`
`the Video went “viral” and that
`
`the
`
`accompanying photograph was
`
`“grabbing attention,” relies
`
`on
`
`
`National Geographic reporting to describe the circumstances under
`
`which the Video was made, and then adds that the “video has already
`
`
`
`reached over 1 million views.” SAC, Ex. 8. The Sinclair Defendants
`
`did not use the Video to illustrate an independent story about
`
`polar bears or environmentalism;
`
`instead,
`
`
`the Sinclair Defendants
`
`“report[ed] news about
`
`
`the Images
`
`themselves.” See Barcroft, F.
`
`14
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 15 of 20
`
`Supp.
`
`3d at 352
`
`(emphasis in original);
`
`
`
`
`lnc. v.
`BWP Media USA,
`
`
`
`
`
` 3d 395,196 F. Supp.Inc.,Gossip Cop Media, 406 n.6 (S.D.N.Y.
`
`
`
`
`
`2016)
`
`
`(distinguishing fair use cases in which “the fact of
`
`the
`
`photograph” is the story from unfair uses in which the contents of
`
`
`the photograph are used as illustration). Because “the use of a
`
`copyrighted photograph in a news article can properly be deemed
`
`
`
`transformative where the photograph itself is the subject of the
`
`
`
`story,” the first factor weighs in favor of fair use. See McGucken
`
`V. Newsweek LLC,
`
`464
`
`F.
`
`Supp.
`
`3d 594,
`
`606
`
`
`(S.D.N.Y.
`
`2020),
`
`reconsideration denied, 2020 WL 6135733 (S.D.N.Y. Oct. 19, 2020).
`
`Finally,
`
`there is no indication of bad faith. Though the
`
`
`
`
`
`Sinclair Defendants
`
`did not
`
`request
`
`a
`
`license despite
`
`the
`
`
`
`availability of licensing information in Nicklen’s lnstagram post,
`
`the Second Circuit
`
`
`is “aware of no controlling authority to the
`
`
`effect that the failure to seek permission for copying,
`
`in itself,
`
`
`
`constitutes bad faith.” Blanch, 467 F.3d at 256.
`
`B.
`
`
`r‘he Nature of the Copyrighted Work
`
`
`
`The nature of
`
`
`determinative,” and this case is no exception. Davis, 246 F.3d at
`
`the copyrighted work is “rarely found to be
`
`
`
`175. Copyright
`
`law recognizes that creative or expressive works
`
`are closer to the “core” of intended copyright protection, while
`
`factual or previously published works are entitled to thinner
`
`copyright protection. Campbell,
`
`510 0.3. at 586; Blanch at 256.
`
`
`Nicklen’s videography reflects his artistic choices of camera
`
`15
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 16 of 20
`
`angle, exposure settings,
`
`and video length,
`
`among other things.
`
`Simultaneously,
`
`the work purports to depict reality and was made
`
`publicly available before the challenged. use.
`
`It
`
`is arguable
`
`whether the Video was created for “news—gathering or non—artistic
`
`purposes” or whether it was
`
`intended to express a point of view.
`
`See N. Jersey Media Grp.
`
`
`Inc. v. Pirro,
`
`74 F. Supp.
`
`3d 605,
`
`620
`
`
`
`(S.D.N.Y. 2015). This factor does not weigh strongly for or against
`
`fair use.
`
`C.
`
`The Amount and Substantiality of the Portion Used
`
`
`By analyzing “the amount and substantiality of the original
`
`work used by the secondary user, we gain insight into the purpose
`
`and character of the use as we consider whether the quantity of
`
`the material used was
`
`‘reasonable in relation to the purpose of
`
`
`the copying.’” Am. Geophysical Union v. Texaco Inc.,
`
`60 F.3d 913,
`
`926 (2d Cir. 1994).
`
`
`
`This factor weighs against a finding of fair use because the
`
`Sinclair Defendants embedded the entire Video on their websites.
`
`Though the Sinclair Defendants respond that it was necessary to
`
`show the entire video to fulfill their news purpose,
`
`the Sinclair
`
`Defendants could have conveyed the Video’s virality by providing
`
`a screenshot of the number of likes or views the Video received.
`
`
`
`In the alternative,
`
`
`a single image of the emaciated bear rather
`
`
`than an embedded copy or
`
`the full work could have conveyed that
`
`the Video was
`
`shocking' or heart—wrenching‘ enough to grab the
`
`16
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 17 of 20
`
`
`Internet’s attention. Because the Sinclair Defendants reproduced
`
`the heart of the work,
`
`
`this factor weighs against fair use.
`
`D.
`
`
`The Effect of the Use on the Market
`
`When
`
`
`a defendant “offer[s]
`
`a market
`
`
`original,” its use is not fair. NXIVM Corp. v. Ross Inst.,
`
`subs:itute for
`
`
`
`F.3d 471,
`
`481
`
`(2d Cir. 2004). “[T]he more the copying is done to
`
`
`
`achieve a purpose that differs from the purpose 0:
`
`the original,
`
`the less likely it is that the copy will serve as a satisfactory
`
`substitute for the original.” Authors Guild, 804 F.3d at 223. When
`
`
`analyzing the effect of
`
`
`the infringing use on the market for a
`
`copyrighted. work,
`
`courts
`
`ask “whether,
`
`if the challenged use
`
`
`becomes widespread, it will adversely affect the potential market
`
`
`for” the work. Bill Graham Archives v. Dorling Kindersley Ltd.,
`
`448 F.3d 605,
`
`613
`
`(2d Cir.
`
`2006).
`
`The market
`
`for
`
`licensing
`
`photographs
`
`and videos
`
`to media outlets
`
`is
`
`a “traditional,
`
`reasonable” market of the sort courts consider in this analysis.
`
`
`See, e.g., Ferdman v. CBS Interactive Inc., 342 F. Supp. 3d 515,
`
`541 (S.D.N.Y. 2018).
`
`A news article about a viral video is unlikely to threaten to
`
`
`“deprive the rights holder of significant revenues because of the
`
`likelihood that potential purchasers may opt
`
`to acquire the copy
`
`
`in preference to the original.” See Authors Guild,
`
`804 F.3d at
`
`223;
`
`see also Walsh v. Townsquare Media,
`
`
`Inc.,
`
`464 F. Supp.
`
`3d
`
`570, 586 (S.D.N.Y. 2020)
`
`(finding no harm to the licensing market
`
`17
`
`the
`
`364
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 18 of 20
`
`where a photograph appeared as part of a post alongside text and
`
`other images). Because a news article recontextualizes a work and
`
`
`
`
`serves a di ”erent purpose, it is unlikely that someone who wanted
`
`
`to purchase the work would find reviewing the news article an
`
`adequate substitute.
`
`However,
`
`the Sinclair Defendants’ use of
`
`the copyrighted
`
`Video, if widespread, would harm the licensing market for Nicklen’s
`
`video. There would be no need for news outlets to license the video
`
`at all if each outlet could, without Nicklen’s prior authorization,
`
`
`embed the video from Instagram or Facebook. Unlike a parodic use,
`
`
`widespread adoption 0: the Sinclair Defendants’ use could overtake
`
`the market
`
`for Nicklen’s video. Accepting as
`
`true Nicklen’s
`
`allegations
`
`that
`
`he
`
`licensed.
`
`the Video to “almost
`
`two dozen
`
`entities both in the United States and throughout the world,” SAC
`
`T 152,
`
`
`this factor weighs against fair use.
`
`E. Conclusion
`
`
`
`The Sinclair Defendants’ fair use affirmative defense cannot
`
`
`
`be resolved at this stage. The fair use inquiry is a “fact—driven,”
`
`
`“context—sensitive" consideration of the nature and purpose of the
`
`challenged use,
`
`the nature of
`
`the copyrighted work,
`
`the amount
`
`used,
`
`and the potential harm to the market
`
`for the copyrighted
`
`work. Cariou v. Prince, 714 F.3d 694, 704-05 (2d Cir. 2013). Thus,
`
`granting a motion to dismiss on fair use grounds is rare. See id;;
`
`
`Graham. v. Prince,
`
`265
`
`F.
`
`Supp.
`
`3d 366,
`
`377
`
`(S.D.N.Y.
`
`2017)
`
`18
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 19 of 20
`
`(pointing out that courts “generally do not address the fair use
`
`defense until the summary judgment stage” and even then are wary
`
`
`of granting summary judgment); BWP Media USA,
`Inc. v. Gossip Cop
`
`Media, LLC, 87 F. Supp. 3d 499, 505 (S.D.N.Y. 2015)
`
`(observing the
`
`“dearth of
`
`cases granting such
`
`a motion”); Hirsch v.
`
`
`C38
`
`
`Broadcasting, Inc., 2017 WL 3393845, at *6 (S.D.N.Y. Aug. 4, 2017)
`
`(noting that
`
`
`resolving fair use
`
`on
`
`a motion to dismiss
`
`is
`
`“uncommon”). To be sure,
`
`the pleadings alone could establish fair
`
`use in an appropriate case. See TCA Television Corp. v. McCollum,
`
`839 F.3d 168, 178
`
`(2d Cir. 2016)
`
`(“[T]his court has acknowledged
`
`the possibility of fair use being so clearly established by a
`h
`o_
`
`complaint as
`
`t1)
`
`support dismissal
`
`a. copyright
`
`infringement
`
`
`claim.”); Cariou, 714 F.3d at 707. But this is not
`
`the rare case
`
`
`
`in which the Court can make a fair use determination simply by
`
`
`
`
`
`comparing the two works,
`
`such that “discovery would not provide
`
`additional relevant
`
`
`information.” See Arrow ProduCtions, Ltd. v.
`
`Weinstein Co., 44 F. Supp. 3d. 359, 368 (S.D.N.Y. 2014).
`
`Where
`
`“the
`
`fair
`
`use
`
`inquiry does
`
`not
`
`turn on visual
`
`
`differences,” but
`
`artistic,
`
`whether
`
`rather
`
`
`
`the
`
`on whether
`
`the work
`
`is
`
`factual or
`
`challenged
`
`use
`
`is
`
`classified
`
`as
`
`transformative “news reporting,” or whether the use affected the
`
`
`licensing market for the work,
`
`the copies of the work attached to
`
`the Complaint “do not contain enough factual content
`
`to enable a
`
`solid assessment.” Hirsch,
`
`2017 WL 3393845, at *7. Such is the
`
`19
`
`
`
`
`
`
`
`
`
`
`
`Case 1:20-cv-10300-JSR Document 102 Filed 07/30/21 Page 20 of 20
`
`
`
`case here. Because the Court’s fair use analysis would benefit
`
`from_a better—developed factual record,
`
`the Court denies the motion
`
`to dismiss.
`
`CONCLUSION
`
`The Court hereby denies the motion to dismiss, because Nicklen
`
`has
`
`stated.
`
`
`
`a prima facie case for copyright
`
`
`infringement
`
`and
`
`
`
`because the Sinclair Defendants have not met their difficult burden
`
`
`
`
`of proving a fair use defense on the sheer basis 0; the pleadings.
`
`
`so ORDERED.
`
`Dated:
`
`New York, NY
`
`,
`
`
`
`7
`
`0, 2021
`
`
`J:~
`
`RAKOFF, U.S.D.J.
`
`
`
`
`
`
`
`
`
`
`
`
`
`20
`
`
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