Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 1 of 20
`
`
`
`
`
`
`
`19-CV-4958 (VSB)
`
`OPINION & ORDER
`
`
`
`- against -
`
`
`
`TOWNSQUARE MEDIA, INC.,
`
`
`
`Plaintiff,
`
`Defendant.
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`---------------------------------------------------------
`X
`
`:
`REBECCA FAY WALSH,
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`:
`---------------------------------------------------------
`X
`
`Appearances:
`
`Richard Liebowitz
`Liebowitz Law Firm, PLLC
`Valley Stream, New York
`Counsel for Plaintiff
`
`Rachel F. Strom
`James E. Doherty
`Davis Wright Tremaine LLP
`New York, New York
`Counsel for Defendant
`
`
`VERNON S. BRODERICK, United States District Judge:
`
`
`
`Plaintiff Rebecca Fay Walsh brings this action against Townsquare Media, Inc., asserting
`
`a claim of copyright infringement in connection with Defendant’s unlicensed publication in an
`
`online article (the “Article”) of a copyrighted photograph (the “Photograph”) taken by Plaintiff.
`
`Before me is Defendant’s motion for judgment on the pleadings. Because Defendant’s
`
`publication of the Photograph constituted fair use, Defendant’s motion for judgment on the
`
`pleadings is GRANTED.
`
`
`
`
`
`6/1/2020
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 2 of 20
`
`
`
`Factual Background1
`
`Plaintiff is a Brooklyn-based professional photographer who licenses her photographs to
`
`online and print media for a fee. (Am. Compl. ¶ 5.)2 Defendant is a Delaware-incorporated
`
`business that owns and operates an online website called XXL Mag (“XXL”), located at the URL
`
`www.XXLMag.com. (Id. ¶¶ 6–7.)
`
`On September 5, 2018, Plaintiff photographed rapper and celebrity Cardi B at a Tom
`
`Ford Fashion show in New York City. (Id. ¶ 10.) At around the time of the fashion show, she
`
`captured numerous photographs of Cardi B, and then made them available for license through
`
`Getty Images, a stock photography agency. (Id. ¶ 15; id. Ex. C). Among those photographs is
`
`the one at issue in this action, reproduced below in resized but uncropped form:
`
`
`1 The following facts are taken from the Amended Complaint and its accompanying exhibits, as well as the PDF of
`the full Article that has been submitted by Defendant. I assume the factual allegations set forth in those submissions
`to be true for purposes of this motion. See Kassner v. 2nd Ave. Delicatessen Inc., 496 F.3d 229, 237 (2d Cir. 2007);
`see also Chambers v. Time Warner, Inc., 282 F.3d 147, 152 (2d Cir. 2002) (A complaint is “deemed to include any
`written instrument attached to it as an exhibit or any statements or documents incorporated in it by reference. . . .
`Even where a document is not incorporated by reference, the court may nevertheless consider it where the complaint
`relies heavily upon its terms and effect, which renders the document integral to the complaint.” (internal quotations
`and citations omitted)); see Fed. R. Civ. P. 10(c) (“A copy of any written instrument which is an exhibit to a
`pleading is a part thereof for all purposes.”). As discussed in further detail in this section, Defendant contends, and
`Plaintiff does not dispute, that the original Article had three embedded images, the third of which contained a
`portion of the Photograph. (Ans. Ex. C.) Plaintiff attached to the Amended Complaint a partial screenshot of the
`Article as it appeared online, with the headline, article text, and the first embedded image. (See Am. Compl. Ex. D.)
`Plaintiff separately includes a screenshot of the third embedded image—the one that contained the Photograph—as
`Exhibit C. (See id. Ex. C.) Defendant submitted, as Exhibit C to the Declaration of Rachel F. Strom, a screenshot of
`the entire Article, featuring the same text as Plaintiff’s version but including all three embedded images. (See Doc.
`16-3.) Plaintiff does not contest the authenticity or accuracy of these screenshots or suggest that I should not
`consider them. In light of these facts, and in light of the fact that Plaintiff relies extensively on the Article—as the
`source of the publication of the Photograph that gave rise to its claims—I consider Defendant’s more complete
`version of the Article. I also find it appropriate to consider the current version of the Article as it appears online,
`given that Plaintiff herself provided the URL and makes an allegation about the Article in its current form, making it
`“integral” to her Complaint, Chambers, 282 F.3d 147. (See Am. Compl. ¶¶ 13, 17; Cardi B Partners with Tom Ford
`for New Lipstick Shade, XXL Mag, https://www.xxlmag.com/news/2018/09/cardi-b-tom-ford-lipstick-shade-named-
`after-her/ (last visited April 2, 2020).) Moreover, “[i]t is generally proper to take judicial notice of articles and
`[websites] published on the [i]nternet.” Harty v. Nyack Motor Hotel Inc., No. 19-CV-1322 (KMK), 2020 WL
`1140783, at *3 (S.D.N.Y. Mar. 9, 2020) (quoting Magnoni v. Smith & Laquercia, LLP, 701 F. Supp. 2d 497, 501
`(S.D.N.Y. 2010), aff’d, 483 F. App’x 613 (2d Cir. 2012), and collecting cases). My references to Plaintiff’s
`allegations should not be construed as a finding as to their veracity, and I make no such findings.
`Ans.” refers to Defendant’s Answer to the Amended Complaint, filed on July 31, 2019. (Doc. 12.)
`2 “Am. Compl.” refers to the Amended Complaint, filed on July 17, 2019. (Doc. 11.)
`
`2
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 3 of 20
`
`
`
`(Id. Ex. A.) Plaintiff has a copyright to the Photograph, which is registered with the United
`
`States Copyright Office. (Id. ¶ 11.)
`
`
`
`On September 10, 2018, Townsquare ran an article on XXL Mag entitled CardiB
`
`Partners with Tom Ford for New Lipstick Shade, available at the URL
`
`https://www.xxlmag.com/news/2018/09/cardi-b-tom-ford-lipstick-shade-named-after-her/. (Id.
`
`¶ 13.) The text of the Article read as follows:
`
`Cardi B is having a busy 2018 New York Fashion Week. After allegedly getting into a
`fight with Nicki Minaj, the Invasion of Privacy rapper is now getting her own shade of
`lipstick from Tom Ford.
`
`The Tom Ford Beauty brand broke the news on Sunday (Sept. 9), posting an image of the
`bold blue shade and Cardi’s name on Instagram. “Meet Cardi. #TFBOYSANDGIRLS
`#TFLIP #TOMFORDBEAUTY,” the caption of the post reads.
`
`Cardi also celebrated the news on IG3, re-posting the Tom Ford post and adding, “Thank
`you so much @tomford and @tomfordbeatuy!!! So excited for this and what’s to come.”
`
`Just the latest shade in Tom Ford’s Lips & Boys collection, the new Cardi shade follows
`the brand’s trend of naming lipsticks after other celebrities such as Julianne [Moore],
`Dakota [Johnson] and Naomi [Campbell]. There’s no word yet when the lipstick inspired
`by Cardi will be released.
`
`
`3 “IG” is apparently a shorthand for “Instagram,” a social media platform on which users post photographs and
`captions.
`
`3
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 4 of 20
`
`As expected, the decision to name a lipstick after Cardi following the New York Fashion
`Week incident has led to a heated debate on the original Instagram post. While some
`fans were excited about the upcoming product, other’s felt that Cardi doesn't deserve to
`have a lipstick named after her.
`
`But Cardi doesn’t seemed to bothered by that. In another Instagram post, the rapper
`claimed the upcoming lipstick has already sold out, adding, “Sorry :/.....”
`
`In footage from the fight, the “Be Careful” rapper can be seen throwing a shoe in the
`direction of someone, although it’s hard to make out if it’s actually Minaj. Cardi can also
`be heard yelling at someone for talking about her daughter, Kulture. “Write some shit
`about my daughter again,” Cardi says.
`
`While it was reported that Bardi’s fight was with the Queen artist, Cardi reportedly ended
`up fighting former Love & Hip Hop: New York star Rah Ali.
`
`Check out the Tom Ford Instagram post below.
`
`(Ans. Ex. C (alterations and errors in original).) Beneath the last sentence of the article, XXL
`
`Mag embedded the three Instagram posts that were described in the Article.4 (Id. ¶ 13; Ans.
`
`¶ 13.) Plaintiff does not allege that the Post was embedded, alleging only that Defendant
`
`“expropriated” the Photograph and “displayed” it in the Article. (Am. Compl. ¶¶ 13, 15.)
`
`However, Defendant asserts that the Post was “embedded” (Ans. ¶ 13), and Plaintiff does not
`
`dispute this allegation. Moreover, in the current version of the Article, the two Instagram posts
`
`that remain displayed link directly to Instagram when clicked on, indicating they have been
`
`embedded. See Article, https://www.xxlmag.com/news/2018/09/cardi-b-tom-ford-lipstick-
`
`shade-named-after-her/ (last visited April 2, 2020). The first post, by account “tomfordbeauty,”
`
`announced the lipstick collaboration. (Strom Decl. Ex. C, at 3.)5 The second post, from Cardi
`
`
`4 An “embedded” image is one that “hyperlink[s] . . . to [a] third-party website.” Goldman v. Breitbart News
`Network, LLC, 302 F. Supp. 3d 585, 587 (S.D.N.Y. 2018). “To embed an image, [a] coder or web designer . . .
`add[s] an ‘embed code’ to the HTML instructions; this code directs the browser to the third-party server to retrieve
`the image.” Id. Thus, the image appears on the new page, but links to and remains hosted on the third-party server
`or website. See id.
`5 “Strom Decl.” refers to the Declaration of Rachel F. Strom in support of Defendant’s motion for judgment on the
`pleadings, filed on August 9, 2019. (Doc. 16.)
`
`4
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 5 of 20
`
`B’s account, reproduced the post by tomfordbeauty in a screenshot, and thanked Tom Ford and
`
`tomfordbeauty. (Id. at 4.) The third post (the “Post”), from Cardi B, was a composite image that
`
`consisted of an image of the Tom Ford lipstick on the left, the Photograph on the right, and a
`
`header reading “Cardi B’s Tom Ford Lipstick has already SOLD OUT!!!” (Id. at 5.) Above the
`
`composite image was Cardi B’s username, her follower count, and a link entitled “View Profile.”
`
`(Id.) Below the composite image was a link entitled “View More on Instagram,” the number of
`
`“likes,” and Cardi B’s caption for the post: “Sorry :/ …” (Id. at 5.) Below the caption was a
`
`link entitled “view all [] comments” and below that, a link entitled “Add a comment . . . .” (Id.)
`
`The Post appeared as follows:
`
`(Id. Ex. C; Strom Decl. Ex. C.) After Plaintiff filed this lawsuit, Defendant removed the Post
`
`from the Article. (Am. Compl. ¶ 17.)
`
`
`
`5
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 6 of 20
`
`
`
`Procedural History
`
`Plaintiff commenced this action by filing a complaint on May 28, 2019. (Doc. 1.) The
`
`complaint was administratively rejected by the Clerk’s Office, and Plaintiff refiled the complaint
`
`on May 29, 2019. (Doc. 4.) Defendant filed its answer on June 26, 2019. (Doc. 10.) Plaintiff
`
`filed an Amended Complaint on July 17, 2019. (Doc. 11.) Defendant filed its Answer to the
`
`Amended Complaint on July 31, 2019. (Doc. 12.)
`
`On August 9, 2019, Defendant filed a motion for judgment on the pleadings, (Doc. 14),
`
`with a memorandum of law, declaration, and exhibits in support, (Docs. 15–16). Plaintiff filed
`
`her memorandum of law in opposition on September 6, 2019. (Doc. 19.) Defendant filed its
`
`reply on September 24, 2019. (Doc. 21.)
`
` Legal Standard
`
`Rule 12(c) provides that “[a]fter the pleadings are closed—but early enough not to delay
`
`trial—a party may move for judgment on the pleadings.” Fed. R. Civ. P. 12(c). In deciding a
`
`motion for judgment on the pleadings, a district court must “employ the same standard
`
`applicable to Rule 12(b)(6) motions to dismiss, accepting all factual allegations in the [non-
`
`moving party’s pleading] as true and drawing all reasonable inferences in the nonmoving party’s
`
`favor.” Vega v. Hempstead Union Free Sch. Dist., 801 F.3d 72, 78 (2d Cir. 2015) (internal
`
`quotation marks omitted). Therefore, to survive a motion pursuant to Rule 12(c), a complaint
`
`must “contain sufficient factual matter, accepted as true, to state a claim to relief that is plausible
`
`on its face.” Hayden v. Paterson, 594 F.3d 150, 160 (2d Cir. 2010). Under Rule 12(c), a party is
`
`entitled to judgment on the pleadings “only if it has established that no material issue of fact
`
`remains to be resolved and that it is entitled to judgment as a matter of law.” Juster Assocs. v.
`
`City of Rutland, 901 F.2d 266, 269 (2d Cir. 1990) (internal quotation marks omitted); see Sellers
`
`6
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 7 of 20
`
`v. M.C. Floor Crafters, Inc., 842 F.2d 639, 642 (2d Cir. 1988) (noting that judgment on the
`
`pleadings “is appropriate where material facts are undisputed and where a judgment on the
`
`merits is possible merely by considering the contents of the pleadings”).
`
`On a Rule 12(c) motion, “the court considers the complaint, the answer, any written
`
`documents attached to them, and any matter of which the court can take judicial notice for the
`
`factual background of the case.” L-7 Designs, 647 F.3d at 422 (internal quotation marks
`
`omitted). The complaint is “deemed to include any written instrument attached to it as an
`
`exhibit, materials incorporated in it by reference, and documents that, although not incorporated
`
`by reference, are integral to the complaint.” Id. (internal quotation marks omitted).
`
` Discussion
`
`A.
`
`Applicable Law
`
`The Copyright Act grants a copyright owner the exclusive rights to authorize the
`
`reproduction, distribution, and preparation of derivatives of the owner’s work. 17 U.S.C. § 106.
`
`These rights, however, are in “inevitable tension” with “the ability of authors, artists, and the
`
`rest of us to express them- or ourselves by reference to the works of others.” Blanch v.
`
`Koons, 467 F.3d 244, 250 (2d Cir. 2006). The doctrine of fair use mediates between these two
`
`sets of interests and infuses copyright law with the necessary “breathing space.” Id. (quoting
`
`Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 579 (1994). Under this doctrine, “a
`
`defendant who otherwise would have violated one or more of these exclusive rights may avoid
`
`liability if [it] can establish that [it] made ‘fair use’ of the copyrighted material.” Swatch Grp.
`
`Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 81 (2d Cir. 2014). “To evaluate whether a
`
`particular use qualifies as ‘fair use,’ [a court] must engage in ‘an open-ended and context-
`
`sensitive inquiry’” that focuses on four non-exclusive factors set forth in the Copyright Act: (1)
`
`7
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 8 of 20
`
`the purpose and character of the use, (2) the nature of the work, (3) the amount and substantiality
`
`of the portion used in relation to the copyrighted work as a whole, and (4) the effect of the use
`
`upon the potential market for or value of copyrighted work. Id. (quoting Blanch, 467 F.3d at
`
`250). The Copyright Act also provides examples of purposes for copying that would constitute
`
`fair use: criticism, comment, news reporting, teaching, scholarship, and research. 17 U.S.C. §
`
`107. These examples, however, are “illustrative and not limitative,” Campbell, 510 U.S. at 577,
`
`and the court’s “task is not to be simplified with bright-line rules,” Swatch, 756 F.3d at 81
`
`(quoting id.).
`
`Fair use is an affirmative defense, and so a defendant accused of copyright infringement
`
`bears the burden of showing that its use of a work was fair. Authors Guild v. Google, Inc., 804
`
`F.3d 202, 213 (2d Cir. 2015). The determination of fair use is typically a “mixed question of fact
`
`and law.” Swatch, 756 F.3d at 81. However, it may be adjudicated on a Rule 12(c) motion
`
`“where the facts necessary to establish the defense are evident on the face of the complaint.”
`
`Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir. 2013); see also In re Lehr Constr. Corp.,
`
`666 F. App’x 66, 68 (2d Cir. 2016) (summary order). Accordingly, numerous courts in this
`
`district have “resolved the issue of fair use on a motion for judgment on the pleadings by
`
`conducting a side-by-side comparison of the works at issue.” Lombardo v. Dr. Seuss
`
`Enterprises, L.P., 279 F. Supp. 3d 497, 504 (S.D.N.Y. 2017), aff’d, 729 F. App’x 131 (2d Cir.
`
`2018).
`
`
`
`
`
`8
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 9 of 20
`
`B.
`
`Application
`
`Plaintiff asserts that Defendant infringed on her copyright by reproducing the Photograph
`
`on its website without licensing it. (Am. Compl. ¶¶ 19–24.) Defendant does not dispute, for
`
`purposes of this motion, that it reproduced the Photograph,6 but contends that its use of the
`
`Photograph was fair. (Def.’s Mem. ¶ 8.)7 To assess whether Defendant’s reproduction of the
`
`Photograph was a fair use, I consider each of the four factors in turn.
`
`1. The Purpose and Character of the Use
`
`The first statutory factor—“[t]he heart of the fair use inquiry” in this Circuit—calls on the
`
`court to examine “the purpose and character of the use,” including whether the use “is of a
`
`commercial nature or is for nonprofit educational purposes.” On Davis v. The Gap, Inc., 246
`
`F.3d 152, 174 (2d Cir. 2001), as amended (May 15, 2001); see also Bloch, 467 F.3d at 251. The
`
`focus of this factor is whether the use “merely supersedes the objects of the original creation, or
`
`instead adds something new, with a further purpose or different character, altering the first with
`
`new expression, meaning, or message; it asks, in other words, whether and to what extent the
`
`new work is transformative.” Campbell, 510 U.S. at 579 (citation and internal quotation marks
`
`omitted). “[A] transformative use is one that communicates something new and different from
`
`the original or expands its utility, thus serving copyright’s overall objective of contributing to
`
`public knowledge.” Authors Guild, 804 F.3d at 214. “[T]he critical inquiry is whether the new
`
`work uses the copyrighted material itself for a purpose, or imbues it with a character, different
`
`
`6 I note that the Second Circuit has not addressed whether and when embedding an image that is hosted elsewhere
`constitutes “display” within the meaning of the Copyright Act, and only a handful of district courts across the
`country have discussed the question. See Goldman v. Breitbart News Network, LLC, 302 F. Supp. 3d 585, 591
`(S.D.N.Y. 2018) (discussing cases and concluding that on the facts at bar, “when defendants caused the embedded
`Tweets to appear on their websites, their actions violated plaintiff’s exclusive display right.”) However, Defendant
`has not raised this issue, and I do not address it.
`7 “Def.’s Mem.” refers to the Memorandum of Law in Support of Defendant Townsquare Media, Inc.’s Motion for
`Judgment on the Pleadings, filed on August 9, 2019. (Doc. 15.)
`
`9
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 10 of 20
`
`from that for which it was created.” TCA Television Corp. v. McCollum, 839 F.3d 168, 180 (2d
`
`Cir. 2016).
`
`While the Copyright Act suggests that use of a copyrighted work for news reporting
`
`purposes is likely to constitute fair use, “a news reporting purpose by no means guarantees a
`
`finding of fair use.” Swatch, 756 F.3d at 85. “After all, “[t]he promise of copyright would be an
`
`empty one if it could be avoided merely by dubbing the infringement a fair use ‘news
`
`report.’” Id. (quoting Harper & Row, 471 U.S. at 557.) Thus, courts have held that it is not fair
`
`to “use [] an image solely to present the content of that image, in a commercial capacity,” or to
`
`otherwise use it “for the precise reason it was created.” BWP Media USA, Inc. v. Gossip Cop
`
`Media, Inc., 196 F. Supp. 3d 395, 407 (S.D.N.Y. 2016). For example, it is not fair use to
`
`republish a photograph of a celebrity or public figure intended to generically accompany an
`
`article about that person or to describe the event depicted in the photograph. See Barcroft, 297 F.
`
`Supp. 3d at 352; BWP Media USA, Inc., 196 F. Supp. 3d at 407; Otto v. Hearst Commc’ns, Inc.,
`
`345 F. Supp. 3d 412, 429 (S.D.N.Y. 2018).8 Such uses “merely supersede[] the objects of the
`
`original creation.” See Bloch, 467 F.3d at 251. However, use of a copyrighted photograph may
`
`be appropriate where “the copyrighted work is itself the subject of the story, transforming the
`
`function of the work in the new context.” Barcroft, 297 F. Supp. 3d at 352. “For instance, 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. See, e.g., Konangataa v. Am.
`
`Broadcastingcompanies, Inc., No. 16-CV-7382 (LAK), 2017 WL 2684067, at *1 (S.D.N.Y. June
`
`
`8 These three cases were decided upon a fuller record than the instant case, but the courts’ decisions on the first fair
`use factor ultimately rested on a comparison of the work and the publication that used the work. Barcroft, 297 F.
`Supp. 3d 339 (after bench trial); BWP Media USA, Inc., 196 F. Supp. 3d at 407 (after bench trial); Otto, 345 F. Supp.
`3d at 427–30 (on summary judgment).
`
`10
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 11 of 20
`
`21, 2017). Similarly, a depiction of a controversial photograph might fairly accompany a work
`
`of commentary or criticism about the artistic merit or appropriateness of the photograph. See,
`
`e.g., Nunez v. Caribbean Int’l News Corp., 235 F.3d 18, 25 (1st Cir. 2000).”9 Id. Courts have
`
`also found fair use in cases in which a website published a screenshot of an article from another
`
`publication that contained a copyrighted photograph, alongside criticism of the article. Yang,
`
`405 F. Supp. 3d at 544 (deciding a motion to dismiss); Clark, 2019 WL 1448448, at *4 (same).
`
`Applying these principles and drawing all inferences in Plaintiff’s favor, this factor
`
`favors Defendant because the Article uses the Photograph for an entirely different purpose than
`
`originally intended. The Photograph was taken to “depict Cardi B at Tom Ford’s fashion show.”
`
`(Pl.’s Opp. 13.)10 See also Barcroft, 297 F. Supp. 3d 339, 352 (S.D.N.Y. 2017) (“Paparazzi
`
`photographs . . . are designed to document the comings and goings of celebrities, illustrate their
`
`fashion and lifestyle choices, and accompany gossip and news articles about their lives.”).
`
`However, as is apparent on the face of the Article, Defendant did not publish the Photograph
`
`simply to present its content. It did not use the Photograph as a generic image of Cardi B to
`
`accompany an article about Cardi B, see BWP Media USA, 196 F. Supp. 3d at 407, or as an
`
`image of her at Tom Ford’s fashion show alongside an article about the fashion show, see
`
`Barcroft, 297 F. Supp. 3d at 352; Otto v. Hearst Commc’ns, Inc., 345 F. Supp. 3d 412, 429
`
`
`9 In Nunez, the plaintiff took photographs of the 1997 Miss Puerto Rico Universe, which generated public
`controversy about whether they were “pornographic” and whether the pageant winner should be permitted to retain
`her crown. 235 F.3d at 21. The defendant published three of the photographs alongside articles about the
`controversy. Id. The First Circuit held that the first prong weighed in favor of fair use because while the
`photographs were initially created to appear in modeling portfolios, defendant published them “to place its news
`articles in context; as the district court pointed out, ‘the pictures were the story.’ It would have been much more
`difficult to explain the controversy without reproducing the photographs.” Id. at 23–24.
`10 “Pl.’s Opp.” refers to Plaintiff’s Memorandum of Law in Opposition to Defendant’s Motion for Judgment on the
`Pleadings, filed on September 6, 2019. (Doc. 19.)
`
`11
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 12 of 20
`
`(S.D.N.Y. 2018).11 Rather, Defendant published the Post, which incidentally contained the
`
`Photograph, because the Post—or, put differently, the fact that Cardi B had disseminated the
`
`Post—was the very thing the Article was reporting on.12
`
`The Article begins by juxtaposing the news of the lipstick collaboration with rumors that
`
`Cardi B had recently gotten into a fight with Nicki Minaj, another rapper. It goes on to describe
`
`the social media posts by Tom Ford and Cardi B introducing the collaboration, and the ensuing
`
`“heated debate” among fans about that announcement, in light of the rumors about the fight.
`
`Then the Article presents Cardi B’s reaction to that “heated debate”: her Instagram post
`
`reporting that the lipstick has sold out, with the caption: “Sorry:/ …” Finally, the Article reports
`
`additional facts about the rumored fight, then embeds the relevant Instagram posts, one of which
`
`happens to include the Photograph because the original poster—Cardi B—included it. The
`
`Article does not mention the Photograph, nor does the Photograph in and of itself pertain to
`
`anything reported on in the Article. Thus, Defendant’s inclusion of the Photograph as part of the
`
`Post was not simply to “present the content of that image”—Cardi B, or perhaps Cardi B at the
`
`
`11 The other cases cited by Plaintiff are also inapposite for similar reasons. (See Pl.’s Opp. 10.) In Ferdman v. CBS
`Interactive, Inc., 17-cv-1317 (PGG), 2018 WL 4572241, at *12 (S.D.N.Y. Sept. 21, 2018), the court granted
`summary judgment dismissing fair use defense as to one of two allegedly infringing uses where defendant “merely
`reported that “[t]he upcoming Marvel Movie Spider-Man: Homecoming is currently filming in New York, and the
`steady stream of on-set images and videos continues,” then included a gallery of these images at the end of the
`article. “In other words, the Gallery Article involves ‘the use of an image solely to present the content of that
`image.’ BWP Media, 196 F.Supp.3d at 407. Such a use is not transformative.” Id. Similarly, in Psihoyos v.
`National Examiner, 97-cv-7625 (JSM), 1998 WL 336655, *3 (S.D.N.Y. June 22, 1998), defendant, a tabloid,
`published a copyrighted photograph of plaintiff in front of his modified “art car” alongside an article about art cars
`in America and a caption reading “Larry Fuente’s fintastic Mad Cad is inlaid with beads, rhinestones, shoe soles and
`toy soldiers—and highlighted with fabulous flamingo-adorned tail fins.” The court denied defendant’s motion to
`dismiss, which it treated as a motion for summary judgment, because “[t]he Examiner’s use [was] not transformative
`. . . its piece uses the photo to show what it depicts.” Id. These cases are distinguishable for the same reasons BWP
`Media, Barcroft, and Otto are distinguishable.
`12 Plaintiff contends at one point that Defendant used the Photograph merely to illustrate “a news report about Cardi
`B at Tom Ford’s fashion show.” (Def.’s Opp. 13.) This is manifestly untrue; although the Article generally
`mentions “Fashion Week” being “busy” for Cardi B, it does not mention the Tom Ford fashion show in particular.
`
`12
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 13 of 20
`
`Tom Ford fashion show, i.e. the purpose the Photograph was created for13—Gossip Cop Media,
`
`Inc., 196 F. Supp. 3d at 407. Rather, Cardi B’s making and dissemination of the Post, not the
`
`image that was posted, was “itself the subject of the story.” Barcroft, 297 F. Supp. 3d at 352. In
`
`other words, Defendant published the Post in order to provide readers with the original social
`
`media interactions reported on by the Article,14 and included the Photograph as a necessary part
`
`of the Post.15 Indeed, no other image—not even “the Photograph [itself] as a standalone
`
`image”—would have fulfilled the same purpose as the Post itself, see Clark, 2019 WL
`
`1448448.16 Merely displaying the Post without the Photograph would have been nonsensical in
`
`appearance as well as potentially impossible, given that the Post is embedded and hyperlinked,
`
`rather than inserted as an image. The Photograph’s function was wholly “transform[ed] . . . in
`
`[its] new context,” Barcroft, 297 F. Supp. 3d at 352, and as a result the Article’s publication of
`
`the Post in no way “merely supersedes” the original work. See Campbell, 510 U.S. at 579.
`
`
`13 Although Cardi B may have used the Photograph in this illustrative manner, the purpose her underlying use,
`whether licensed or unlicensed, has no bearing on whether Defendant’s use of the Photograph for an entirely
`different function and purpose was fair.
`14 A further logical inference of Defendant’s purpose is that Defendant sought to link readers to the relevant posts;
`however, Defendant does not explicitly make this argument.
`
`15 Plaintiff argues that Defendant’s use was not transformative because it “did not report on any political or social
`controversy that arose because of the very existence of the Photograph itself.” (Def.’s Mem. 7.) “As the United
`States Court of Appeals for the Second Circuit has instructed, ‘[t]he law imposes no requirement that a work
`comment on the original or its author in order to be considered transformative.’” Clark, 2019 WL 1448448, at *3
`(quoting Cariou, 714 F.3d at 706).
`16 Plaintiff alleges in her Amended Complaint that after she filed the initial Complaint, Defendant “replaced the Post
`with another image of Cardi B that it licensed through Getty Images, demonstrating that Defendant’s unauthorized
`use of the Photograph in the first instance was not integral to the message it sought to convey.” (Am. Compl. ¶ 17.)
`In support of this statement, Plaintiff cites to Exhibit D, but Exhibit D is simply a screenshot of the Article that
`includes a portion of the Instagram post from Tom Ford, but is cut off below that and includes no other images or
`Posts. Thus, Exhibit D does not support Plaintiff’s allegation. Indeed, the Article in its current form contradicts it:
`it includes only the Tom Ford Instagram post and Cardi B’s post thanking Tom Ford, but does not contain any other
`images. This suggests that Defendant simply deleted the Post and did not insert any alternative image—or if it did
`insert an alternative image, ultimately deleted it—lending further support for the idea that the Post was the only
`image that made sense in context.
`
`13
`
`

`

`Case 1:19-cv-04958-VSB Document 22 Filed 06/01/20 Page 14 of 20
`
`Judge Paul G. Gardephe’s analysis in Ferdman v. CBS Interactive Inc., 342 F. Supp. 3d
`
`515, 534 (S.D.N.Y. 2018) is instructive, although the facts did not mirror the facts here, making
`
`the decision distinguishable. In Ferdman, the defendant published an article that stated that
`
`“images and videos from the set [of Spider-Man: Homecoming] have steadily emerged. The
`
`newest shot comes from [the Instagram of] Spider-Man actor Tom Holland himself.” Id. at 523.
`
`The article then described that image, which had been posted to Holland’s Instagram, repeated
`
`Holland’s accompanying caption, and inserted the photograph—not the Instagram post itself—
`
`below the article. See id. Judge Gardephe observed that, as in Nunez, the photograph “was the
`
`story,” but ultimately denied defendant’s motion for summary judgment because (1) there were
`
`no visual differences between the copyrighted photograph and the photograph included in the
`
`article, and (2) the statement at the beginning of the article that “images and videos have steadily
`
`emerged” suggested that the photograph might merely have been used to “announce its
`
`existence,” which would not be transformative. Id. at 534–37. Judge Gardephe held that these
`
`issues might cause reasonable jurors to disagree about whether the use was transformative and so
`
`the issue could not be resolved as a matter of law. Id. at 537.
`
`Here, as in Ferdman, the Post “was the story.” Id. at 534. But unlike in Ferdman,
`
`Defendant embedded the entire Instagram Post, still bearing the rest of the elements of the image
`
`that Cardi B had posted—the header and the photo of the Tom Ford lipstick—along with Cardi
`
`B’s caption and various Instagram standard links, making clear that the subject of the image was
`
`the Post