Zuma Press, Inc. v. Getty Images (US), Inc.

Z
19-3029 (L)
Zuma Press, Inc. v. Getty Images (US), Inc.

                            UNITED STATES COURT OF APPEALS
                                FOR THE SECOND CIRCUIT

                                          SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY
FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT=S LOCAL RULE 32.1.1.
WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST
CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION
“SUMMARY ORDER”). A PARTY CITING TO A SUMMARY ORDER MUST SERVE A COPY OF IT
ON ANY PARTY NOT REPRESENTED BY COUNSEL.

        At a stated term of the United States Court of Appeals for the Second Circuit, held at the
Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the
3rd day of March, two thousand twenty-one.

Present:
            DEBRA ANN LIVINGSTON,
                  Chief Judge,
            DENNY CHIN,
            MICHAEL H. PARK,
                  Circuit Judges.
_____________________________________

ZUMA PRESS, INC., ANTHONY BARHAM, JOHN
MIDDLEBROOK, ACTION SPORTS PHOTOGRAPHY,
INC., ANDREW DIEB, ROBERT BACKMAN, DUNCAN
WILLIAMS, CHRISTOPHER SZAGOLA, TIYU (BEIJING)
CULTURE MEDIA CO. LTD., CHARLES BAUS, MANNY
FLORES, LOUIS LOPEZ,

                 Plaintiffs-Appellants-Cross-Appellees,

                 v.                                                19-3029
                                                                   19-3177

GETTY IMAGES (US), INC.,

                 Defendant-Appellee-Cross-Appellant.

_____________________________________

For Plaintiffs-Appellants-Cross-              JAMES H. FREEMAN, Liebowitz Law Firm, PLLC,
Appellees:                                    Valley Stream, NY

                                                 1
For Defendant-Appellee-Cross-                  BENJAMIN E. MARKS (Jonathan Bloom, on the
Appellant:                                     brief), Weil, Gotshal & Manges LLP, New York,
                                               NY


       Appeals from a judgment and order of the United States District Court for the Southern

District of New York (Hellerstein, J.).

       UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND

DECREED that the judgment and order of the district court are AFFIRMED.

       Plaintiffs-Appellants-Cross-Appellees Zuma Press, Inc. (“Zuma”), Anthony Barham, John

Middlebrook, Action Sports Photography, Inc., Andrew Dieb, Robert Backman, Duncan Williams,

Christopher Szagola, Tiyu (Beijing) Culture Media Co. Ltd., Charles Baus, Manny Flores, and

Louis Lopez (collectively, “Plaintiffs”) appeal from a judgment of the United States District Court

for the Southern District of New York (Hellerstein, J.) granting summary judgment in favor of

Defendant-Appellee-Cross-Appellant Getty Images (US), Inc. (“Getty”).             Getty cross-appeals

from an order of the district court denying its motion for attorney’s fees.       Broadly, this action

concerns Plaintiffs’ allegations that Getty posted more than 47,000 images associated with

Plaintiffs on its website without authorization. On appeal, Plaintiffs contend that the district court

erred in granting summary judgment in favor of Getty as to their claim for copyright infringement

under Section 501 of the Copyright Act, 17 U.S.C. § 501, and their claim for altering their

copyright management information (“CMI”) without authority under Section 1202(b)(3) of the

Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1202(b)(3). On cross-appeal, Getty

contends that the district court abused its discretion in denying its motion for attorney’s fees.   We

assume the parties’ familiarity with the underlying facts, the procedural history of the case, and

the issues on appeal.



                                                  2
      I.      Summary Judgment

        We review grants of summary judgment de novo, “construing the facts in the light most

favorable to the non-moving party and drawing all reasonable inferences in that party’s favor.”

Burns v. Martuscello, 

890 F.3d 77

, 83 (2d Cir. 2018) (internal quotation marks omitted).

Summary judgment is proper only when “there is no genuine dispute as to any material fact and

the movant is entitled to judgment as a matter of law.”     FED. R. CIV. P. 56(a).   “An issue of fact

is ‘genuine’ if ‘the evidence is such that a reasonable jury could return a verdict for the nonmoving

party.’”     Holtz v. Rockefeller & Co., 

258 F.3d 62

, 69 (2d Cir. 2001) (quoting Anderson v. Liberty

Lobby, Inc., 

477 U.S. 242

, 248 (1986)).

                  A. Copyright Infringement

           Plaintiffs argue that the district court erred in granting summary judgment to Getty as to

their copyright infringement claim because issues of fact remain as to whether Getty held a valid

license to use their images.     We disagree.

           “To establish a claim of copyright infringement, ‘two elements must be proven:

(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are

original.’” Abdin v. CBS Broad. Inc., 

971 F.3d 57

, 66 (2d Cir. 2020) (quoting Feist Publ’ns, Inc.

v. Rural Tel. Serv. Co., 

499 U.S. 340

, 361 (1991)).     “The existence of a license is an affirmative

defense, placing upon the party claiming a license ‘the burden of coming forward with evidence’

of one.”      Spinelli v. Nat’l Football League, 

903 F.3d 185

, 197 (2d Cir. 2018) (quoting Bourne v.

Walt Disney Co., 

68 F.3d 621

, 631 (2d Cir. 1995)).        We generally construe copyright licenses

“according to principles of contract law.”      Great Minds v. Fedex Off. & Print Servs., Inc., 

886 F.3d 91

, 94 (2d Cir. 2018).




                                                   3
          Here, a reasonable juror could find only that Getty established the existence of a valid

license.    As the district court concluded, the undisputed facts in the record and the plain language

of each of the agreements at issue establish an unbroken chain of authorization from Zuma to

Getty.     At the start, Zuma and NewSport Photography, Inc. (“NewSport”) separately reached

agreements with Corbis Corporation (“Corbis”), a large photograph-licensing agency, to license

and distribute their respective images. Whereas Zuma’s agreement with Corbis yielded Zuma a

40% royalty rate, NewSport’s agreement with Corbis yielded NewSport a 50% royalty rate.

Zuma learned of NewSport’s favorable royalty rate, and it devised an arrangement with NewSport

whereby it would submit its images to Corbis under NewSport’s contract with Corbis, using

NewSport’s credentials and NewSport’s file transmission protocol (“FTP”).         In turn, NewSport’s

royalty payments were redirected to Zuma.           On November 3, 2011, Zuma and NewSport

memorialized their agreement in a document titled “Request for Redirection of Royalty Payments”

(the “Redirection Agreement”).       J. App’x at 341.     This agreement specifically affirmed that

NewSport was authorized to submit all images it sent to Corbis under its contract with Corbis and

that Zuma was authorized to receive royalty payments due to NewSport under its contract with

Corbis.

          Plaintiffs concede that Zuma delivered all the images at issue in this action to Corbis for

distribution under NewSport’s contract with Corbis, using NewSport’s FTP channel and

credentials.    NewSport’s governing contract with Corbis vested in Corbis “the right to use,

reproduce, publish, exhibit, perform, publicly display, distribute, broadcast and transmit” the

images.     J. App’x at 297.   It also authorized Corbis to “assign its rights and obligations . . . to

any surviving party as part of a corporate reorganization, consolidation, merger, or sale.”          J.

App’x at 301.      Corbis exercised that right in January 2016 when it sold its image portfolio to


                                                   4
Unity Glory International Ltd. (“Unity Glory”). And Unity Glory soon thereafter entered into an

agreement authorizing Getty to distribute and market outside of China all the images it acquired

from Corbis. Getty ultimately obtained the images at issue in this action as part of its agreement

with Unity Glory. Given the plain language of each of these agreements, there can be no dispute

that Getty obtained a valid license to use the images when it entered into its agreement with Unity

Glory.

         To the extent Plaintiffs argue that issues of fact remain as to whether Getty held a valid

license because they can adduce evidence indicating that Zuma and NewSport terminated the

Redirection Agreement, they miss the mark.             By the express terms of NewSport’s renewed

agreement with Corbis in 2012, Corbis was entitled to use the licenses for at least a period of six

years, including a three-year initial term and a three-year survival term. 1   Getty posted the images

at issue to its website and took them down from its website by June 2016—well within that

timeframe.     We therefore conclude that the district court did not err in granting summary

judgment to Getty as to Plaintiffs’ copyright infringement claim.

                B. DMCA Section 1202(b)(3)

         Plaintiffs argue that the district court erred in granting summary judgment to Getty as to

their claim for altering their CMI without authority under Section 1202(b)(3) of the DMCA

because there is a genuine dispute of material fact as to whether Getty: (1) knowingly altered their

CMI without authority; and (2) knew or had reason to know that distributing their images would

induce, enable, facilitate, or conceal an infringement.     We disagree.




         1
          Notably, the 2012 agreement between NewSport and Corbis provided that any images submitted
to Corbis under prior agreements were to be governed by the new terms and conditions.


                                                   5
         We recently explained that to establish a violation of Section 1202(b)(3), a plaintiff must

prove:

         (1) the existence of CMI in connection with a copyrighted work; and (2) that a
         defendant “distribute[d] . . . works [or] copies of works”; (3) while “knowing that
         [CMI] has been removed or altered without authority of the copyright owner or the
         law”; and (4) while “knowing or . . . having reasonable grounds to know” that such
         distribution “will induce, enable, facilitate, or conceal an infringement.”

Mango v. BuzzFeed, Inc., 

970 F.3d 167

, 171 (2d Cir. 2020) (alterations in original) (quoting 17

U.S.C. § 1202(b)).      The last two of these elements comprise a “so-called ‘double-scienter

requirement.’”

Id. “[T]he defendant who

distributed improperly attributed copyright material

must have actual knowledge that CMI ‘has been removed or altered without authority of the

copyright owner or the law,’ as well as actual or constructive knowledge that such distribution

‘will induce, enable, facilitate, or conceal an infringement.’”

Id. (quoting 17 U.S.C.

§ 1202(b)).

The statutory definition of CMI encompasses, inter alia, “[t]he name of, and other identifying

information about, the copyright owner of the work, including the information set forth in a notice

of copyright.”    17 U.S.C. § 1202(c)(3).

         Here, no reasonable juror could conclude that Getty knowingly removed or altered

Plaintiffs’ CMI without authority. As the district court concluded, there is no evidence in the

record on which Plaintiffs can rely to establish that Getty had actual knowledge that the images at

issue were comingled with the NewSport collection. On the contrary, a reasonable juror could

conclude only that Getty did not know about Plaintiffs’ purported rights in the images until Zuma

contacted Getty on May 4, 2016, to complain that Getty did not have authorization to use the

images—i.e., until after Getty had completed the migration process and posted the images to its

website. Getty promptly thereafter removed whatever images it could identify as associated with

Zuma from its public-facing website and launched a full investigation into what had happened.


                                                  6
       A reasonable juror could find only that the purported changes to Plaintiffs’ CMI resulted

not from some intentional act of which Getty was aware but from aberrations and mistakes in the

automatic migration process itself, during which Getty processed approximately 7,000,000

images.    For example, the appearance of a double byline in the metadata of the images resulted

from the original inclusion of Zuma’s attribution information in Corbis’s free-text caption field as

opposed to Corbis’s photographer name or agency fields.           The engineers who developed the

migration process did not account for the possibility that CMI would appear in the free-text caption

of any image.

       Contrary to Plaintiffs’ contentions, Getty’s post-migration communications fail to create a

dispute of material fact as to whether Getty had actual knowledge that it altered Plaintiffs’ CMI

when it undertook the migration process, let alone that it did so without authority. Although the

June 27, 2016 email chain that Plaintiffs reference vaguely suggests that Les Walker may have

had a “Zuma conversation” with Getty “at some point previously during the migration to Getty

talks,” J. App’x at 784, Walker flatly testified at his deposition that he was unaware that the images

were even in the NewSport collection prior to the migration and that he did not discuss the images

with Getty until after the migration.      Likewise, the May 5, 2016 conversation that Plaintiffs

reference—in which employees investigating Zuma’s complaint suggested that Getty may have

been aware of “the Zuma thing”—is insufficient, without more, to impute actual knowledge of

Zuma’s supposed ownership of the CMI to Getty, particularly given that one of the Getty

employees noted in the same conversation that “other than the caption, there is no indication in the

Corbis data that [the images] belong to Zuma.” J. App’x at 780.           We therefore conclude that

the district court did not err in granting summary judgment to Getty as to Plaintiffs’ DMCA claim. 2


       2
           Because we conclude that Plaintiffs cannot establish that Getty knowingly removed or altered


                                                   7
     II.      Attorney’s Fees

        We review a “district court’s denial of an application for attorney’s fees . . . for abuse of

discretion.” Scarangella v. Grp. Health, Inc., 

731 F.3d 146

, 151 (2d Cir. 2013).           Getty contends

that the district court abused its discretion in denying Getty’s motion for attorney’s fees because

(1) it failed adequately to explain its denial of Getty’s motion; and (2) the totality of the

circumstances warrant a fee award as a matter of law.         We disagree on both counts.

           Section 505 of the Copyright Act and Section 1203 of the DMCA endow district courts

with broad discretion to award reasonable attorney’s fees to a prevailing party.        17 U.S.C. §§ 505,

1203(b)(5).      Of course, that discretion is not without limit: The Supreme Court has set forth

several principles to guide a district court’s discretion in considering a motion for attorney’s fees

under Section 505.      See Kirtsaeng v. John Wiley & Sons, 

136 S. Ct. 1979

, 1985 (2016).           “First,

a district court may not ‘award[] attorney’s fees as a matter of course’; rather, a court must make

a more particularized, case-by-case assessment.”

Id. (alteration in original)

(quoting Fogerty v.

Fantasy, Inc., 

510 U.S. 517

, 533 (1994)).      “Second, a court may not treat prevailing plaintiffs and

prevailing defendants any differently . . . .”

Id. Third, “several nonexclusive

factors” may

inform the district court’s analysis, including “frivolousness, motivation, objective

unreasonableness . . . [,] and the need in particular circumstances to advance considerations of

compensation and deterrence.”       

Fogerty, 510 U.S. at 534

n.19 (internal quotation marks omitted).

A district court “should give substantial weight to the objective reasonableness of the losing party’s




their CMI without authority, we need not consider Plaintiffs’ additional contention that there is a genuine
dispute of material fact as to whether Getty knew or had reason to know that distributing Plaintiffs’ images
would induce, enable, facilitate, or conceal an infringement.


                                                     8
position,” all the while giving “due consideration to all other circumstances relevant to granting

fees.”   

Kirtsaeng, 136 S. Ct. at 1983

.

         As an initial matter, we reject Getty’s contention that remand is warranted on the

procedural ground that the district court failed adequately to explain its decision. To be sure, as

Getty notes, the district court’s analysis was limited to a recitation of the factors it considered in

arriving at its determination.     And “[a] recitation of the applicable factors or legal standard,

standing alone, is normally not sufficient to permit appropriate appellate review” of a district

court’s fees decision. Orchano v. Advanced Recovery, Inc., 

107 F.3d 94

, 99 (2d Cir. 1997).            But

we need not remand for further explanation where the reasons for a district court’s decision are

clear.   See

id. (“If the court

fails to make findings and to give an explanation, and the reason for

the court’s ruling is not clear to us, we will remand for findings and an explanation.”).           Here,

although we would have preferred that the district court provide a more detailed account of how it

applied the facts of this case to the factors it considered, the basis of its decision is clear to us, and

we are satisfied that it undertook the “particularized, case-by-case assessment” that Section 505

demands. See 

Kirtsaeng, 136 S. Ct. at 1985

.

         As to the merits of Getty’s motion, the district court acted within its discretion in

concluding that Plaintiffs’ claims were objectively reasonable, non-frivolous, and properly

motivated.    Plaintiffs’ copyright infringement claim concerned a complex set of facts, which

Plaintiffs reasonably argued resolved in their favor.     See Chivalry Film Prods. v. NBC Universal,

Inc., No. 05-CV-5627, 

2007 WL 4190793

, at *2 (S.D.N.Y. Nov. 27, 2007) (Lynch, J.) (noting that

a copyright claim may be objectively unreasonable where it “is clearly without merit or otherwise

patently devoid of legal or factual basis” (internal quotation marks omitted)).       Plaintiffs’ DMCA

claim turned on the DMCA’s double-scienter requirement, which this Court had not construed in


                                                    9
a precedential opinion until well after the district court decided Plaintiffs’ motion for summary

judgment. 

Mango, 970 F.3d at 174

(rejecting the appellee’s request for attorney’s fees incurred

in defending the appeal “because the interpretation of Section 1202(b)(3) [was] a relatively novel

issue and a question of first impression for this Court” (internal quotation marks and citation

omitted)).   Moreover, outside of its assertion that Plaintiffs’ claims were motivated by the

prospect of unjustified statutory damages, Getty points to little in the record to undermine the

district court’s finding that Plaintiffs brought this action for proper motives.       We therefore

conclude that the district court did not abuse its discretion in denying Getty’s motion for attorney’s

fees.

                                          *       *       *

        We have considered the parties’ remaining arguments and find them to be without merit.

Accordingly, we AFFIRM the judgment and order of the district court.

                                                      FOR THE COURT:
                                                      Catherine O’Hagan Wolfe, Clerk




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