USDC S.D. New York, December 19, 2008

Click here for a copy of the full decision.

After an interesting and lengthy fair use analysis, the court denied plaintiffs’ motion for summary judgment because the court determined that there were unresolved factual issues relating to all four fair use factors.

Defendant operates the website firstView.com that makes available, for free and by paid subscription, photographs of fashion shows, including plaintiffs’ fashion shows. A French court issued a default judgment against defendant and plaintiffs asked the SDNY to enforce the judgment. Before the U.S. court could enforce the judgment, it had to determine whether defendant’s use was a fair use protected under U.S. law and, if so, whether French law embodied comparable fair use protections for defendant. (Although U.S. copyright law does not provide protection for fashion designs, French law does protect fashion designs, but the court said this discrepancy did not affect its analysis of the fair use factors.)

Plaintiffs moved for summary judgment (despite the court’s apparently rather pointed suggestion that a hearing be held and no motion made), claiming there was no issue of material fact that defendant’s conduct was not fair use, and therefore the question of French law need not be reached. The court disagreed and found there to be unresolved issues of fact.

The first factor – the purpose and character of the infringing use – includes the questions of whether the use is transformative or commercial, and whether the defendant acted in bad faith. The court noted that determining that defendant’s use is transformative is not essential to finding fair use, but it does weigh heavily in favor of fair use. Whether a use is transformative depends on whether it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” In this case, plaintiffs argued that defendant’s photographs were verbatim copies of their fashion designs and therefore were not transformative, but the court disagreed by saying that defendant “has not copied plaintiffs’ dresses; it has displayed a particular depiction of them” and that by presenting photographs of many fashion shows it provides news coverage of the clothes as well as trends in the fashion industry.

Regarding the nature of the copyrighted work and whether plaintiffs’ works are “unpublished” (weighing against a finding of fair use), the court questioned plaintiffs’ argument that displaying their fashion designs at highly publicized fashion shows to hundreds of invited guests and members of the media does not constitute a public debut of their designs. “Even though admittance to the shows is by invitation only, it is difficult to classify as ‘private’ highly-publicized commercial exhibitions to which the international media has been invited, and for which public attention is not only expected but courted.” The court concluded by saying there are too many unresolved facts to make a determination regarding this factor.

Regarding the fourth factor and the impact of defendant’s photographs on the market for plaintiffs’ clothes, the court noted that defendant does not sell clothes and plaintiffs do not sell photographs, which might suggest that defendant has not negatively impacted the market for plaintiffs’ clothes. On the issue of whether defendant’s photographs lead to inexpensive knock-offs of plaintiffs’ clothes, the court said plaintiffs failed to provide evidence supporting this argument. In sum, the court found that on all factors, there were issues of fact that could not be decided on summary judgment.

In a footnote, the court noted that courts are split on whether photographs are derivative works of the subject of the photo, but said for purposes of this motion it did decide that photographs of a creative work intended as news reportage are derivative works.