In dispute over Playboy photos of rapper Azealia Banks, district court denies motion to dismiss copyright infringement and Digital Millennium Copyright Act claims stemming from website’s unauthorized addition of its own watermark to, and publication of, photos.

Playboy Magazine publisher Playboy Enterprises International Inc. held the exclusive license to three photographs, two registered and one unregistered, of rapper Azealia Banks. In March 2015, Playboy discovered that Mediatakeout.com LLC (MTO) had published the images on its website without Playboy’s authorization. MTO had removed Playboy’s watermark from the photos, applied its own and posted the photos, identifying them as “Playboy Pics.” The photos accompanied an article criticizing Banks’ appearance in the magazine. Playboy sued MTO in September 2015, asserting a claim for direct copyright infringement and a claim under the Digital Millennium Copyright Act based on MTO’s use of its own watermark on the images. The district court denied MTO’s motion to dismiss.

MTO argued that it had a license from Playboy to use the images and that its display of the images constituted fair use. MTO submitted with its motion an email exchange purportedly between representatives of Playboy and MTO giving rise to the alleged license. MTO also submitted the article accompanying the images on MTO’s website, which MTO argued rendered its use of the images transformative because the purpose was “not simply to display the photos or show the rapper’s nakedness . . . but to inform the public about her appearance in the magazine.” The district court rejected both arguments, pointing out that neither document was referenced in the complaint and therefore neither was appropriate for consideration at the pleading stage. Alternatively, the district court said the email exchange did not come close to establishing the existence of a license because the exchange occurred five months before the events at issue between individuals with unknown authority and roles, and related to different images of a different entertainer.

MTO also argued that Playboy failed to state a DMCA claim because MTO made every effort to inform readers in its article that the photos belonged to Playboy, and therefore did not distribute false “copyright management information” or intentionally alter this information with knowledge that it would conceal infringement. The district court again refused to consider the MTO article, observing that MTO’s suggestion of a good faith defense or other basis for excusing the application of its own watermark “must await factual development.” MTO further argued that Playboy could not state a DMCA claim as to the unregistered photo, citing Thron v. HarperCollins Publishers, which held that information related to an invalid copyright registration did not constitute copyright management information under the DMCA. The district court agreed with Playboy, however, that Thron was inapplicable because it did not address circumstances where a defendant purposefully attaches false copyright management information to unregistered copyright material in order to mask misappropriation.

Finally, the court rejected MTO’s argument that Playboy could not seek relief for infringement of its unregistered copyright in one of the Banks photos, noting that, as Playboy pointed out, it was not seeking damages in connection with that image, only the other two.