Gaffney v. Muhammad Ali Enterprises LLC
- George Daniels
- 1:18-cv-08770
- U.S. District Court · Southern District of New York
- 16
In Gaffney v. Muhammad Ali Enterprises, Judge Daniels granted and denied specified portions of cross-motions for summary judgment over photograph copyrights.
The ruling affected photographer Michael Gaffney and the defendants’ potential liability for copying his Muhammad Ali photographs, including which claims and photographs could proceed, whether statutory damages and actual damages remained available, and whether the alleged infringement could be treated as willful.
What happened
In Gaffney v. Muhammad Ali Enterprises LLC, photographer Michael Gaffney accused the defendants of copying photographs he took of Muhammad Ali without permission and violating copyright law and the Digital Millennium Copyright Act. The parties had an agreement allowing certain uses of the photographs, but they disagreed about whether the defendants could continue using them after the agreement ended.
The court ruled that Gaffney’s copyright registrations were valid. It granted the defendants’ motion for some claims and photographs, including claims involving fan websites, direct Digital Millennium Copyright Act violations, one vicarious Digital Millennium Copyright Act claim, and some statutory damages. It denied the defendants’ motion concerning registration validity and actual damages, and it denied Gaffney’s request for judgment that the defendants had willfully infringed. The court also granted Gaffney’s request for some statutory damages.
Judge George B. Daniels left unresolved whether the defendants’ social-media uses and certain sublicensed uses infringed Gaffney’s copyrights because the agreement was ambiguous and important facts were disputed.
The detailed version
- Gaffney v. Muhammad Ali Enterprises LLC · No. 1:18-cv-08770
- George Daniels
- Sept. 7, 2022
Background
Michael Gaffney brought two consolidated actions against Muhammad Ali Enterprises LLC, Authentic Brands Group LLC, Roots Of, Inc., doing business as Roots of Fight, and Does 1-10. He alleged that the defendants copied photographs he took of Muhammad Ali without authorization, violating the Copyright Act and the Digital Millennium Copyright Act. The opinion refers to the photographs as Photographs 101-132.
Gaffney had entered into an agreement with the defendants in 2011. The agreement gave Muhammad Ali Enterprises an exclusive license for specified product, advertising, promotional, marketing, and editorial uses. It expired in 2015, but it also addressed continued rights concerning licenses and agreements made before termination. The defendants continued using photographs on social-media accounts and allowed sublicensees to continue copying some photographs. The parties disputed whether those uses remained authorized after the agreement expired.
The parties filed cross-motions for partial summary judgment. Summary judgment is a ruling entered without a trial when the evidence shows no genuine dispute over an important fact and the law entitles one side to judgment.
Copyright registrations
The defendants argued that two of Gaffney’s registrations were invalid because they inaccurately described when certain photographs were first published. The court applied the rule that a registration is invalid when the copyright owner knowingly included an inaccuracy that would have caused the Copyright Office to refuse registration.
The court held that Gaffney had sufficiently shown that he lacked actual knowledge of any legal inaccuracies when he obtained the registrations. It therefore held that the registrations at issue were valid. The court also stated that the other registrations were undisputedly valid, so all of Gaffney’s registrations constituted initial evidence of valid copyright ownership.
Disputed infringement and license scope
The court denied Gaffney’s request for summary judgment on his direct-infringement claims in both actions. Although the defendants did not dispute using the photographs on social media or that sublicenses continued to use some photographs, the parties disputed whether those uses were authorized by the agreement.
The court found the agreement ambiguous regarding continued social-media use after expiration. One reasonable reading would allow continued promotional and marketing use; another would not. The court also found that the record did not establish when the challenged sublicenses and customer agreements were made. If they were made before the agreement expired, the continued uses might have been authorized; if they were made afterward, they might have exceeded the license. These disputes prevented summary judgment for Gaffney.
Disposition
The court denied the defendants’ motion to the extent it sought dismissal of Claim I in the First Action based on an invalid copyright registration or Gaffney’s alleged inability to recover actual damages. The court granted the defendants’ motion to the extent it sought dismissal of Claim I as to nine photographs in the First Action and one photograph in the Second Action; Claims II and III in both actions concerning vicarious or contributory infringement involving Muhammad Ali fan sites; Claim IV in both actions concerning direct Digital Millennium Copyright Act violations; Claim V in the Second Action concerning vicarious Digital Millennium Copyright Act violations; and partial denial of statutory damages.
The court denied Gaffney’s motion to the extent it sought judgment on Claim I in both actions that the defendants willfully committed direct copyright infringement. It granted Gaffney’s motion to the extent it sought partial statutory damages. The court also stated that, if the defendants were found liable, the ambiguity in the contract meant they could not have infringed willfully.
Read the full 16-page opinion on CourtListener, the free public archive maintained by the Free Law Project.