O'Neil v. Ratajkowski

Background

Robert O’Neil, a paparazzi photographer, photographed Emily Ratajkowski outside a flower shop in Manhattan on September 13, 2019. He uploaded the photograph to Splash News, his agency, which offered photographs to subscribers for licensing. Ratajkowski later posted the photograph to the Instagram Stories feature of her account. She added the words “mood forever,” and the post disappeared after 24 hours.

O’Neil sued Ratajkowski and Emrata Holdings, LLC, alleging copyright infringement. The parties filed cross-motions for summary judgment, asking the court to resolve issues without a trial. Defendants argued that the photograph was not properly registered or original, that the Instagram post was fair use, that O’Neil could not recover damages, and that Emrata was not involved. Defendants also sought attorney’s fees, costs, and sanctions.

Copyright ownership and infringement

The court held that O’Neil established that the photograph was registered with the Copyright Office after the court allowed him to submit and authenticated a certified deposit copy. The court also held that the photograph satisfied the low originality standard for copyright protection because O’Neil made creative choices about the location, lighting, equipment, and settings. Defendants’ motion for summary judgment on copyright validity was therefore denied.

The court further held that O’Neil owned a valid copyright and that Ratajkowski copied the photograph. O’Neil’s motion for summary judgment on Ratajkowski’s infringement was granted.

The court granted Defendants’ motion for summary judgment as to Emrata. The court found that Ratajkowski posted on the Instagram account in her personal capacity and that O’Neil had shown no facts connecting Emrata to the copying. The conclusion states that the claims against Emrata were dismissed.

Damages

O’Neil was no longer seeking actual damages, so the court considered whether statutory damages remained available. The court held that Splash’s offering of the photograph to subscribers for licensing constituted publication. Because the copyright registration became effective within three months after publication, statutory damages were legally available for Ratajkowski’s infringement.

The court also held that O’Neil’s minimal actual damages and negligible profits did not prevent him from seeking statutory damages. The court did not decide how much statutory damages O’Neil might receive if he prevailed at trial. Defendants’ motion for summary judgment based on the absence of damages was denied.

Fair use

Fair use is a defense that can permit certain uses of copyrighted works without permission. The court considered the four statutory factors: the purpose and character of the use, the nature of the copyrighted work, the amount used, and the effect on the potential market.

The court found a genuine factual dispute about whether adding “mood forever” transformed the photograph into commentary about paparazzi or merely displayed Ratajkowski’s clothing, location, and pose. The use was at least slightly commercial because Ratajkowski’s Instagram account was connected to a for-profit clothing business, but she was not paid for this particular post and the court gave that point little weight. The court found that the photograph was essentially factual and that the use of most or all of it weighed slightly in O’Neil’s favor, although the 24-hour duration of the Instagram Stories post reduced the weight of that factor.

The court also found insufficient information about the relevant market for licensing paparazzi photographs to individuals for social-media posts. Because material factual disputes remained regarding the first and fourth factors, the court could not decide fair use on summary judgment. Both parties’ motions on fair use were denied.

Other defenses

O’Neil moved for judgment against several of Defendants’ affirmative defenses. The court rejected Defendants’ arguments based on failure to state a claim, copyright ownership, estoppel, waiver, copyright misuse, unclean hands, license, non-infringement, and constitutional defenses to the extent specified in the ruling. The court concluded that the record did not show that taking Ratajkowski’s photograph gave her permission to use it, that O’Neil had granted a license, or that O’Neil had misused his copyright or acted with the misconduct required for an unclean-hands defense.

The court’s conclusion states that O’Neil’s motion was granted as to Defendants’ first, third, fifth, sixth, seventh, eleventh, twelfth, and thirteenth affirmative defenses, and denied as to the second, fourth (fair use), and tenth defenses. The fourth defense remained unresolved because it depended on the factual disputes about fair use.

Fees and sanctions

The court denied sanctions against O’Neil and his counsel, finding no clear and convincing evidence of misrepresentations or unduly vexatious litigation in this case. The court treated Emrata as a prevailing party because the claims against it were dismissed and awarded Emrata attorney’s fees and costs. The requests for attorney’s fees, costs, and sanctions were granted in part and denied in part. Emrata was allowed to submit billing records and documented expenses by October 28, 2021.

Disposition

The court stated that both summary-judgment motions were granted in part and denied in part. O’Neil obtained summary judgment on Ratajkowski’s infringement. The claims against Emrata were dismissed, Emrata’s motion for attorney’s fees and costs was granted, and the balance of Defendants’ motion was denied.