Gaffney v. Muhammad Ali Enterprises LLC

Background

Michael Gaffney, a professional photographer, took photographs of Muhammad Ali in 1977 and 1978. He brought two related actions against Muhammad Ali Enterprises LLC, Authentic Brands Group LLC, Roots Of, Inc. d/b/a Roots of Fight, and Does 1-10, alleging copyright infringement and violations of the Digital Millennium Copyright Act involving 23 photographs.

Gaffney had entered into a licensing agreement with the defendants in 2011. The agreement expired on January 31, 2015. The court described evidence that, after expiration, the defendants and their licensees continued using the photographs, including on merchandise and social media. The evidence also showed that Gaffney notified the defendants that the photographs could no longer be used, while some uses continued afterward.

After a six-day trial, the jury found that the defendants directly, vicariously, and contributorily infringed Gaffney’s copyrights. The jury awarded Gaffney $750,000 in the defendants’ profits and $1,650,000 in statutory damages based on its finding that the infringement was willful. The parties did not challenge liability or the actual-damages award in the post-trial motions addressed by this opinion.

Defendants’ Motions

The defendants moved for judgment as a matter of law—a ruling that the evidence legally could not support the jury’s verdict—reducing the profits award to less than $5,000. They also moved for judgment as a matter of law that the infringement was not willful and that photograph Ali-12 was not eligible for statutory damages. Alternatively, they sought a new trial or a reduction of the statutory-damages award.

Profits Award

The court held that Gaffney had not shown that all of the claimed license-agreement and web-store revenues were reasonably connected to the infringement. Evidence that photographs appeared in a limited number of social-media posts or were used in advertising did not establish that the photographs caused the defendants’ broader licensing or web-store revenues. The court also noted that the photographs were not shown to be the centerpiece of an advertising campaign and that there was no evidence that their use increased sales.

The court concluded that Gaffney was entitled only to gross revenues attributable to sales of products bearing his photographs. Based on the royalty statements, those revenues totaled $3,466 from 2015 to 2019 and $1,183.60 from 2019 to 2023, or $4,649.60 in total. The court granted the defendants’ motion concerning profits and reduced the profits award to $4,649.60.

Willfulness and Statutory Damages

The court denied the defendants’ request to overturn the jury’s finding of willful infringement. It explained that the evidence could support a finding that the defendants knew of the agreement’s expiration and Gaffney’s objections but nevertheless continued posting, licensing, approving, and collecting revenue from uses of the photographs. The defendants’ evidence that they sometimes told licensees to stop using the photographs did not require the jury to reject the willfulness finding.

The court also ruled that Ali-12 was eligible for statutory damages. Although Ali-12 was identical to another photograph, Ali-102, the court concluded that Ali-12 was covered by an earlier 2008 copyright registration and that the court’s prior ruling concerning the later registration did not make Ali-12 ineligible. The court therefore denied the defendants’ request for judgment as a matter of law concerning willfulness and Ali-12.

The defendants separately argued that the jury instructions should have listed factors concerning statutory damages. The court rejected that argument, concluding that the instructions were legally complete. It also noted that the defendants had not specifically objected to the final instruction in the required manner. The court denied the request for a new trial or remittitur, meaning a reduction, of statutory damages.

Disposition

Judge George B. Daniels granted the defendants’ motion for judgment as a matter of law concerning profits and reduced the profits award to $4,649.60. He denied the defendants’ motion concerning willfulness and Ali-12 and, alternatively, for a new trial or remittitur of statutory damages. The $1,650,000 statutory-damages award remained undisturbed. The court directed the Clerk of Court to close the motions.