Iantosca v. Elie Tahari, Ltd.

Background

Mark Iantosca, a professional photographer, took a photograph on February 7, 2019, of a digital content creator wearing clothing designed by Elie Tahari, Ltd. On February 20, 2019, Elie Tahari posted the photograph on its Facebook and Twitter accounts. Iantosca said that Elie Tahari did so without permission or a license. Elie Tahari conceded that it posted the photograph and did not obtain permission or a license.

Iantosca sought copyright protection from the United States Copyright Office on April 28, 2019. The photograph was associated with Copyright Registration Number VA 2-150-161. Iantosca filed this lawsuit on May 16, 2019, alleging copyright infringement under Sections 106 and 501 of the Copyright Act.

Iantosca moved for partial summary judgment under Federal Rule of Civil Procedure 56, asking the court to decide liability. Elie Tahari filed a late cross-motion for summary judgment, but the court considered its arguments and found nothing warranting summary judgment in Elie Tahari’s favor.

Legal Standard

Summary judgment is appropriate when there is no genuine dispute about a fact that could affect the result and the moving party is entitled to judgment under the law. To establish copyright-infringement liability, a plaintiff generally must show ownership of a valid copyright and copying of original parts of the copyrighted work. A copyright registration is generally initial evidence of ownership and validity unless the opposing party shows fraud in obtaining it.

Elie Tahari also raised affirmative defenses. These included fair use, which can permit certain uses of copyrighted works; de minimis use, meaning copying too trivial for the law to address; and the argument that attribution or the subject matter of the photograph justified its use.

Court’s Analysis

The court found no genuine factual dispute that Elie Tahari copied the photograph. Elie Tahari admitted posting it, and the evidence showed that it reposted the photograph on its social-media pages.

The court also found that Iantosca held a validly registered copyright for the photograph. After oral argument, and with the parties’ consent, the court requested certified deposit copies from the Copyright Office. Those copies confirmed that the photograph at issue was among the works on file under Registration Number VA 2-150-161. Elie Tahari did not present evidence showing that the registration was fraudulent or that the photograph was not the one covered by the registration.

The court rejected Elie Tahari’s fair-use defense as a matter of law. It found that the use was commercial and intended to advertise and sell clothing, was not transformative, involved a creative photograph, reproduced the photograph without modification, and invaded Iantosca’s right to license it.

The court also rejected the de minimis defense. It found that a business’s use of a professional photographer’s work to promote its products was not trivial. The court further held that crediting Iantosca as the photographer was not a defense to infringement. The fact that the photograph showed a model wearing Elie Tahari’s clothing also did not give Elie Tahari the right to use the photograph, because copyright protection concerns the photographer’s original choices in creating the image, not merely what the image depicts.

Ruling

Judge Mary Kay Vyskocil granted Iantosca’s motion for partial summary judgment on liability for copyright infringement under Section 501. The ruling resolved liability, but the court ordered the parties to attend a conference to discuss the resolution of damages.