McGucken v. Newsweek LLC
- Katherine Failla
- 1:19-cv-09617
- U.S. District Court · Southern District of New York
- 25
In McGucken v. Newsweek, Judge Failla largely kept a photographer’s copyright case alive, rejecting Newsweek’s defenses but dismissing secondary-infringement claims.
Elliot McGucken’s direct copyright-infringement claim and request for enhanced damages remained pending, while his contributory- and vicarious-infringement claims were dismissed and he could not amend them.
What happened
McGucken v. Newsweek concerned Newsweek’s use of Elliot McGucken’s photograph of a temporary lake in Death Valley in an online article. McGucken alleged that Newsweek embedded his publicly posted Instagram photograph without permission or payment.
Newsweek argued that Instagram’s terms gave it permission to use the photograph and that its use was fair. The court also considered McGucken’s requests for enhanced damages and his claims that Newsweek was responsible for other parties’ infringement.
Judge Failla denied dismissal of the direct copyright-infringement claim and the request for enhanced damages, but granted dismissal of the contributory- and vicarious-infringement claims and denied leave to amend. Overall, the motion to dismiss was granted in part and denied in part.
The detailed version
- McGucken v. Newsweek LLC · No. 1:19-cv-09617
- Katherine Failla
- June 1, 2020
Background
Elliot McGucken, a landscape and seascape photographer, posted a photograph of a temporary lake in Death Valley on his public Instagram account on March 13, 2019. The next day, Newsweek published an online article about the lake and embedded McGucken’s Instagram post in the article. McGucken alleged that Newsweek used the photograph without his consent and did not compensate him. He registered the photograph with the United States Copyright Office and later sent Newsweek a letter demanding that it remove the photograph.
McGucken asserted direct, contributory, and vicarious copyright-infringement claims and sought enhanced statutory damages. Newsweek moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint alleges enough facts to support a legally plausible claim. Newsweek argued that Instagram’s terms gave it a sublicense to use the publicly posted photograph and that its use qualified as fair use.
Newsweek’s Licensing Defense
The court agreed that Instagram’s Terms of Use gave Instagram a license that included the right to sublicense publicly posted content. Instagram’s Privacy Policy also stated that other users could search for, see, use, or share publicly available content. But the court found no evidence at this stage of an actual sublicense between Instagram and Newsweek. It also could not find an implied sublicense on the pleadings. Because the court had to draw reasonable inferences in McGucken’s favor on a motion to dismiss, it denied dismissal based on the licensing theory.
Fair Use
The court also denied dismissal based on fair use, an exception that can permit certain unauthorized uses of copyrighted works. It evaluated the four statutory factors:
- Purpose and character of the use: This factor favored McGucken. The court found that Newsweek used the photograph mainly as an illustration of the lake, rather than giving it a new meaning or purpose. The article’s use was also commercial. The pleadings did not establish whether Newsweek acted in good or bad faith.
- Nature of the copyrighted work: This factor favored neither party. The photograph involved creative choices in framing and color, which favored McGucken, but the photograph had previously been published, which favored Newsweek.
- Amount used: This factor was neutral. Newsweek used the entire photograph, but the court found that using less than the whole photograph would have been difficult for its illustrative purpose.
- Market effect: This factor favored McGucken. The court applied a presumption of market harm because Newsweek made a commercial, nontransformative duplication of the entire photograph.
Because the first and fourth factors favored McGucken and the other two were neutral, the court could not determine as a matter of law that Newsweek’s use was fair.
Enhanced Damages
The court denied Newsweek’s request to dismiss McGucken’s request for enhanced statutory damages. McGucken alleged that he sent Newsweek a cease-and-desist letter and that Newsweek continued using the photograph afterward. The court found that these allegations, although limited, plausibly suggested that the alleged infringement may have been willful. The court did not decide whether the infringement was willful; it decided only that the request could proceed past the pleading stage.
Secondary-Infringement Claims
The court granted Newsweek’s motion to dismiss McGucken’s contributory- and vicarious-infringement claims. Contributory infringement requires facts showing knowing and material assistance to infringement by another party. Vicarious infringement requires facts showing the ability to supervise or control another party’s infringement and a direct financial benefit from it. The court found that McGucken’s amended complaint alleged no facts establishing the existence of third parties or supporting either theory. The allegations were therefore insufficient under the applicable pleading standards.
Leave to Amend and Disposition
The court denied McGucken’s request for leave to amend. It had already allowed him to amend once, and he did not explain how he would correct the deficiencies in the contributory- and vicarious-infringement claims.
Judge Katherine Polk Failla concluded that Newsweek’s motion to dismiss was granted in part and denied in part. Dismissal of the direct copyright-infringement claim and the request for enhanced damages was denied. Dismissal of the contributory- and vicarious-infringement claims was granted. McGucken’s request for leave to amend was denied. Newsweek was ordered to file a responsive pleading by June 22, 2020.
Read the full 25-page opinion on CourtListener, the free public archive maintained by the Free Law Project.