Feingold v. RageOn, Inc.

Background

Deborah Feingold, doing business as Deborah Feingold Photography, sued RageOn, Inc. for copyright infringement. The dispute concerned two photographs: a photograph of Madonna holding a red lollipop and a photograph of Keanu Reeves that appeared in the March 9, 1989 issue of Rolling Stone. RageOn operated an online marketplace where vendors designed merchandise and sold it to consumers. RageOn processed purchases, collected payments, sent orders to manufacturers, coordinated shipping, and received commissions when items sold.

RageOn offered three types of shirts displaying the Madonna photograph and one type displaying the Reeves photograph. The parties filed cross-motions for summary judgment, which asks whether the evidence requires judgment as a matter of law without a trial. Feingold sought judgment on her copyright-infringement, contributory-infringement, and vicarious-infringement claims. The court noted that Feingold’s briefing did not address the contributory- and vicarious-infringement claims and deemed those claims abandoned.

Madonna Photograph

The court held that Feingold’s registration for her unpublished book, Bright Moments Photographs + Philosophies, protected the Madonna photograph. RageOn argued that the photograph had been published earlier in Star Hits magazine in 1982 or on a Madonna fanblog in 2006. The court found no evidence that Star Hits published the photograph. It also explained that displaying a work online does not by itself constitute publication under the Copyright Act and found no evidence that the fanblog posting involved commercial exploitation.

RageOn did not dispute actual copying or improper appropriation of the Madonna photograph. The court found that Feingold supplied ample proof that RageOn accessed the photograph and offered substantially similar merchandise for sale. It therefore held that Feingold was entitled to judgment as a matter of law on infringement of the Madonna photograph.

Reeves Photograph

RageOn argued that Feingold could not prove that copyright-registration number VA0001233837 covered the Reeves photograph because she did not possess the registration certificate. The court rejected that argument. It found overwhelming evidence linking the registration to the photograph, including the Library of Congress Public Records Catalog, the relevant page of Rolling Stone, a certified deposit copy, Feingold’s statements, and royalty statements.

RageOn did not seriously dispute that it offered an item bearing a reproduction of the Reeves photograph. Although the RageOn image was a mirror image showing Reeves facing the opposite direction, the court found that this minor alteration did not eliminate the highly probative similarities. A typical viewer would recognize that the RageOn image had been taken from the Reeves photograph. The court held that Feingold was entitled to judgment as a matter of law on infringement of that photograph.

Digital Millennium Copyright Act Safe Harbor

RageOn argued that the Digital Millennium Copyright Act protected it from liability under a safe-harbor provision for certain online service providers. The court held that RageOn did not qualify for the protection for at least two reasons.

First, RageOn received a financial benefit directly connected to the infringing activity through sales of shirts bearing the photographs, and it had the right and ability to control what it sold. Second, RageOn did not remove the merchandise quickly after receiving Feingold’s takedown notice. RageOn initially said it would remove the material within 24 hours, but the court found that the removal took at least 18 days for the Reeves item and 18 to 23 days for the Madonna items. The court also noted that some items remained available after RageOn said they had been removed.

Damages, Fees, and Costs

Feingold elected statutory damages rather than actual damages and profits. The court explained that statutory damages generally range from $750 to $30,000 for infringement of a particular work, may be increased to as much as $150,000 per work for willful infringement, and may be reduced to no less than $200 when the infringer lacked knowledge or reason to believe its conduct infringed copyright.

Feingold also requested attorney’s fees and costs. The court reserved ruling on damages, fees, and costs because RageOn had not addressed those issues. It ordered Feingold to submit a supplemental request by September 8, 2020; RageOn to respond by October 6, 2020; and Feingold to reply by October 20, 2020.

Disposition

The court denied RageOn’s motion for summary judgment and granted Feingold’s motion for summary judgment. The parties were ordered to make supplemental submissions concerning damages, attorney’s fees, and costs.