MCCLATCHEY v. ASSOCIATED PRESS Doc.

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Case 3:05-cv-00145-TFM Document 26 Filed 06/19/2006 Page 1 of 39

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF PENNSYLVANIA

VALENCIA M. MCCLATCHEY, )
)
Plaintiff, )
) Civil Action No. 05-145J
v. )
)
THE ASSOCIATED PRESS, ) JURY TRIAL DEMANDED
)
Defendant. )
____________________________________)

PLAINTIFF’S RESPONSE TO DEFENDANT’S MOTION FOR SUMMARY

JUDGMENT

Douglas M. Hall
Kara L. Szpondowski
Niro, Scavone, Haller & Niro
181 West Madison, Suite 4600
Chicago, Illinois 60602-4515
Phone: 312-236-0733
Fax: 312-236-3137
Attorneys for Valencia M. McClatchey

John E. Hall
Eckert Seamans Cherin & Mellott, LLC
USX Tower
600 Grant Street, 44th Floor
Pittsburgh, Pennsylvania 15219
Phone: (412) 566-6000
Fax: (412) 566-6099

Dockets.Justia.com
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TABLE OF CONTENTS

STATEMENT OF THE CASE........................................................................................................1

INTRODUCTION ...........................................................................................................................1

STATEMENT OF MATERIAL FACTS.........................................................................................3

ARGUMENT...................................................................................................................................7

I. THE LAW OF SUMMARY JUDGMENT .........................................................................7

II. THE AP DIRECTLY INFRINGED THE END OF SERENITY PHOTOGRAPH ............8

III. AP IS NOT ENTITLED TO SUMMARY JUDGMENT ON FAIR USE AS A

DEFENSE TO PLAINTIFF'S COUNT I DIRECT INFRINGEMENT CLAIM ................9

A. The AP’s Use Was Commercial And Non-Transformative .................................10

i. The AP’s Use Was A Commercial Use .....................................................11

ii. The AP’s Use Was Not Transformative ....................................................12

B. The End Of Serenity Is Sufficiently Creative ........................................................14

C. The AP Copied The Entire Photograph, Or At Least The “Heart” Of The

Photograph .............................................................................................................15

D. The AP’s Actions Usurped Ms. McClatchey’s Primary Market ...........................17

IV. AP IS NOT ENTITLED TO SUMMARY JUDGMENT FOR SECONDARY

COPYRIGHT LIABILITY................................................................................................20

A. Material Issues of Fact Prevent Summary Judgment on Contributory Copyright

Infringement...........................................................................................................20

B. Material Issues of Fact Prevent Summary Judgment on Vicarious Copyright

Infringement...........................................................................................................22

V. AP IS NOT ENTITLED TO SUMMARY JUDGMENT DISMISSING THE

DMCA CLAIMS ...............................................................................................................24

A. The AP Distributed False CMI in violation of 17 U.S.C. § 1202(a) .....................24

i. The AP Falsified the CMI, Knowing it was False .....................................24

ii. The AP Distributed the False CMI With the Intent to Aid
Infringement...............................................................................................25

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B. AP Removed CMI in Violation of 17 U.S.C. § 1202(b)........................................25

i. The AP Intentionally Cropped Off And Removed Ms.

McClatchey's Copyright Information And Title ........................................26

ii. The Information on the Photograph Constitutes CMI ...............................27

iii. The AP Intended to Aid Infringement .......................................................29

VI. STATUTORY DAMAGES ISSUE...................................................................................30

VII. CONCLUSION..................................................................................................................31

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TABLE OF AUTHORITIES

FEDERAL CASES

Baraban v. Time Warner, Inc.,

2000 U.S. Dist. LEXIS 4447 (S.D.N.Y. 2000) .......................................................................14, 16

Strauss v. Hearst Corp., 8 U.S.P.Q. 2d

1832 (S.D.N.Y. 1988) ....................................................................................................................14

Batesville Services, Inc. v. Funeral Depot, Inc.,

2004 U.S. Dist. LEXIS 24336 (S.D. Ind. 2004) ............................................................................16

Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569 (1994).............................................................................................................9, 16, 17

Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc.,

150 F.3d 132 (2nd Cir. 1998)...................................................................................................14, 17

Folsom v. Marsh,
9 F. Cas. 342 (C.C.D. Mass 1841) ...........................................................................................13, 19

Gershwin Publ'g. Corp. v. Columbia Artists Mgmt, Inc.,

443 F.2d 1159 (2d Cir. 1971).........................................................................................................23

Gordon v. Nextel Communications and Mullen Advert.,

345 F.3d 922 (6th Cir. 2003) .........................................................................................................29

Greenberg v. National Geographic Society,

1999 U.S. Dist. LEXIS 13874 (S.D. Fla. 1999).......................................................................15, 16

Haberman v. Hustler Magazine, Inc.,

626 F. Supp. 201 (D. Mass 1986) ..................................................................................................17

Harper & Row Publishers, Inc. v. Nation Enterprises,

471 U.S. 539 (1985).................................................................................................9, 10, 16, 18, 19

Hustler Magazine, Inc. v. Moral Majority, Inc.,

796 F.2d 1148 (9th Cir. 1986) .................................................................................................16, 17

IQ Group, Ltd. v. Weisner Pub., LLC,

409 F. Supp. 2d 587 (D.N.J. 2006) ...............................................................................................28

Inifinity Broadcase Corp. v. Kirkwood,

150 F.3d 104 (2nd Cir. 1998).........................................................................................................16

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Iowa State University Research Foundation, Inc. v. American Broadcasting Cos., Inc.,
621 F.2d 57 (2nd Cir. 1980)...........................................................................................................10

Kelly v. Arriba Soft Corp.,

336 F.3d 811 (9th Cir. 2003) ...................................................................................................15, 16

L.A. News Serv.,

108 F.3d at 1122-1123 .............................................................................................................15, 19

Lish v. Harper's Magazine Found.,

807 F. Supp. 1090 (S.D.N.Y. 1992).........................................................................................10, 11

Livnat v. Lavi,
1998 U.S. Dist. LEXIS 917 (S.D.N.Y. 1998)................................................................................21

Los Angeles News Service v. CBS Broadcasting, Inc.,

305 F.3d 924 (9th Cir. 2002) .........................................................................................................13

Mathieson v. Associated Press,

23 U.S.P.Q. 2d 1685 (S.D.N.Y. 1992)...........................................................................................15

Maxtone-Graham v. Burtchaell,
803 F.2d 1253 (2nd Cir. 1986).........................................................................................................9

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,

125 S. Ct. 2764 (2005)...................................................................................................................21

Metro-Goldwyn-Mayer Studios v. Grokster Ltd.,

380 F.3d 1154 (9th Cir. 2004) .......................................................................................................22

Narell v. Freeman,
872 F.2d 907 (9th Cir. 1989) ...........................................................................................................9

Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc.,

166 F.3d 65 (2nd Cir. 1999)...........................................................................................................17

Nunez v. Caribbean International News Corp.,

235 F.3d 18 (1st Cir. 2000)......................................................................................................13, 16

Playboy Enters. v. Webbworld, Inc.,

968 F. Supp. 1171 (D. Tex. 1997) ...........................................................................................22, 23

Psihoyos v. Fuente,
1998 U.S. Dist. LEXIS 9192 (S.D.N.Y. 1998)..............................................................................15

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Realsongs v. Gulf Broadcasting Corp.,

824 F. Supp. 89 (M.D.La. 1993)....................................................................................................22

Ringgold v. Black Entertainment Television, Inc.,

126 F.3d 70 (2nd Cir. 1997).....................................................................................................12, 19

Robinson v. Random House, Inc.,

877 F. Supp. 830 (S.D.N.Y. 1995).................................................................................................14

Schiffer Publishing, Ltd. v. Chronicle Books, LLC,

2004 U.S. Dist. LEXIS 23052 (E.D. Pa. 2004) .............................................................................25

Sega Enters. Ltd. v. Maphia,

857 F. Supp. 679 (N.D. Cal. 1994) ................................................................................................16

United States Media Corp. v. Edde Entertainment Corp.,

1998 U.S. Dist. LEXIS 10985 (S.D.N.Y. 1998)............................................................................30

Video Pipeline, Inc. v. Buena Vista Home Entm't, Inc.,

342 F.3d 191 (3d Cir. 2004).............................................................................................................9

Ward v. Nat'l Geographic Soc'y,

208 F. Supp. 2d 429 (S.D.N.Y. 2002)............................................................................................24

World Wrestling Federation Entertainment, Inc. v. Big Dog Holdings, Inc.,

280 F. Supp. 2d 413 (W.D. Pa. 2003)..............................................................................................8

FEDERAL STATUTES

17 U.S.C. ' 107......................................................................................................................2, 9, 10

17 U.S.C. ' 107(1) .........................................................................................................................10

17 U.S.C. 107(2) ............................................................................................................................14

17 U.S.C. 107(3) ............................................................................................................................15

17 U.S.C. 107(4) ............................................................................................................................17

17 U.S.C. ' 1202(a) ...............................................................................................................1, 2, 24

17 U.S.C. ' 1202(b) .................................................................................................1, 24, 25, 26, 30

Section 1202(b)(2) .........................................................................................................................29

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17 U.S.C. 1202(c) ..........................................................................................................................28

17 U.S.C. 1202(c)(1)......................................................................................................................28

17 U.S.C. 1202(c)(2)......................................................................................................................28

17 U.S.C. 1202(c)(3)......................................................................................................................28

S. Rep. No. 105-190, at 34-35 (1998)............................................................................................24

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STATEMENT OF THE CASE

On February 24, 2005, Valencia McClatchey sued the Associated Press ("AP") on five

counts stemming from the AP's unauthorized use of her copyrighted End of Serenity photograph.

Count I asserts a claim for direct copyright infringement, Count II asserts a claim for

contributory copyright infringement, Count III asserts a claim for vicarious copyright

infringement, Count IV asserts a claim for distributing false copyright information in violation of

the Digital Millennium Copyright Act ("DMCA"), 17 U.S.C. § 1202(a), and Count V asserts a

claim for removing copyright management information in violation of the DMCA, 17 U.S.C. §

1202(b). AP has moved for summary judgment dismissal of all five counts of Plaintiff's

Complaint.

Plaintiff Valencia M. McClatchey, by and through her attorneys, hereby submits the

following response to AP’s motion for summary judgment.

INTRODUCTION

This is a case about the largest news-gathering organization in the world (the AP) taking,

under false pretenses, without permission, and without compensation, the one-of-a-kind

September 11, 2001 copyrighted photograph of an individual photographer (Valencia

McClatchey), knowingly cropping off the copyright information, and transmitting the

photograph electronically to its roughly 2000 member and subscriber news organizations. It is

undisputed that Ms. McClatchey never gave the Associated Press oral or written permission to

use her copyrighted photograph in any capacity. The AP took a photograph of her photograph,

while she was holding it, under the guise of taking a photograph of her holding the photograph to

accompany a story AP ran about her life during the one year period after September 11, 2001.

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The photograph Ms. McClatchey was holding had her copyright information in the bottom right

of the photograph, and the title of the photograph, "End of Serenity", in the top left of the

photograph. Both the title and the copyright information were removed by the AP prior to the

AP's use and distribution of the photograph. Simply put, the AP stole a unique, historical,

valuable photograph, without permission, and made widespread use of the photograph for the

benefit of its cooperative, for-profit, member and subscriber news organizations.

The AP does not contest that Ms. McClatchey owned and had a valid federal copyright in

her End of Serenity photograph when it took her photograph. Although the AP admits taking a

photograph of Ms. McClatchey’s photograph without oral or written permission, cropping off the

perimeter, uploading the copy to its image database, and distributing it to all of its members and

subscribers, it argues that such use is protected under the fair use doctrine, as codified by 17

U.S.C. § 107. It is not. The article written by Charles Sheehan about Ms. McClatchey does

contain a reference to her "End of Serenity" photograph. However, the AP's use of the

photograph far exceeded the Sheehan article, and instead, included the separate and unrestricted

distribution of the photograph to the AP's roughly 2000 members and subscribers without any

link or reference to the Sheehan article. AP's use, therefore, was in no way protected by the fair

use doctrine as it now claims.

Despite overwhelming evidence to the contrary, the AP further disputes Ms.

McClatchey’s contention that her copyright interest in her End of Serenity photograph has been

directly and indirectly infringed. It has. Ms. McClatchey had a valid federal copyright in the

End of Serenity photograph which was taken and then used by the AP without her permission.

Finally, despite evidence that the AP cropped off the copyright notice on her End of Serenity

photograph prior to use and distribution, the AP argues that it has not violated Section 1202 of

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the Digital Millennium Copyright Act, which prohibits exactly what took place here, i.e.,

knowingly removing copyright management information from a photograph and transmitting the

photograph to aid infringement.

AP cannot satisfy its burden and meet all of the elements necessary to grant summary

judgment. Moreover, there are numerous questions of fact sufficient to deny the AP's motion for

summary judgment. Therefore, Plaintiff asks that the Court deny the AP's motion for summary

judgment.

STATEMENT OF MATERIAL FACTS

On the morning of September 11, 2001, Valencia McClatchey looked out her front

window in Shanksville, Pennsylvania and saw United Flight 93 crashing into a field near her

house. (Pla’s SMF ¶ 1). She stepped outside her house as a white mushroom cloud was rising

from the crash and took a compelling photograph of the mushroom cloud against a blue sky with

a red barn and the rolling hills of Pennsylvania in the foreground. (Pla’s SMF ¶ 2; Hall Decl.,

Exh. 7).

On January 29, 2002, she received federal copyright registration for the photograph,

which she titled “End of Serenity.” (Pla’s SMF ¶ 3). Ms. McClatchey's End of Serenity

photograph has garnered widespread national acclaim and has been shown at exhibits and

memorials throughout the world, including the Flight 93 Memorial, the Library of Congress, and

the Smithsonian Institution. (Pla’s SMF ¶ 4).

After taking the photograph, Ms. McClatchey was approached by various news

organizations and magazines, including ABC News, Fox News, U.S. News and World Report,

the Pittsburgh Post-Gazette, Newsweek, and the Washington Post, all of which asked to license

the use of her photograph. (Pla’s SMF ¶ 5). Ms. McClatchey generally agreed to license her

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photo for a one time use, charging a fee of approximately $250 to $350. (Pla’s SMF ¶ 6). Ms.

McClatchey was not a professional photographer and did not know how much freelance

photographers generally charged for such use. (Pla’s SMF ¶ 7). Ms. McClatchey also sold non-

commercial, personal use hard copies locally and through the mail for $20, $18 of which she

donated to the Todd Beamer Foundation. (Def’s SMF ¶ 37; Pla’s SMF ¶ 8). The other $2 she

used for paper and printing costs. (Pla’s SMF ¶ 9).

Ms. McClatchey followed two general rules with respect to distribution of her

photograph. First, any hard copy of the End of Serenity photograph that she sold or gave out

included her name, the word “copyright,” along with the year in the lower right hand corner, and

the words “End of Serenity” and “September 11, 2001” in the top left of the photo across the

blue sky. (Pla’s SMF ¶ 10). Second, she e-mailed a digital file of the photograph to any news

entity that she agreed to license the work to, so that it would be the best possible depiction.

(Pla’s SMF ¶ 11). While the digital copy Ms. McClatchey sent via this fashion did not bear a

copyright notice (Pla’s SMF ¶ 11), the only entities which received a digital copy (with no

copyright notice) were those entities which paid for and/or had written permission from Ms.

McClatchey for their limited use. (Pla’s SMF ¶ 12). Ms. McClatchey retains one framed copy

of the End of Serenity in her home office. (Pla’s SMF ¶ 13). All hard copies of the End of

Serenity bear her copyright information. (Pla’s SMF ¶ 14).

At a ceremony memorializing the one year anniversary of the crash of Flight 93, Ms.

McClatchey approached and introduced herself to Charles Sheehan, a reporter for the Associated

Press, which is the largest news organization in the world. (Def’s SMF ¶¶ 45, 46; Hall Decl.,

Exh. 3, Def’s Rsp to Pla’s RFA ¶ 7). Mr. Sheehan decided to write a story about Ms.

McClatchey for the Associated Press. (Def’s SMF ¶ 47). Sheehan interviewed her and his

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resulting story was “a feature story about this lady who took this picture a year before. (Pla’s

SMF ¶ 15). Later that day, Gene Puskar, an employee and photographer for the Associated

Press, went to Ms. McClatchey’s home and informed her that he was there “to photograph her

for the Charles Sheehan story[.]” (Pla’s SMF ¶ 16)(emphasis added). Puskar's assignment was

to “take pictures of a woman with a picture.” (Pla’s SMF ¶ 16). (emphasis added). Ms.

McClatchey stood on the side of her with a hard copy of the End of Serenity photograph which

bore her copyright information, but instead of taking a picture of Ms. McClatchey with her

photograph, Puskar only took a picture of her End of Serenity photograph. (Pla’s SMF ¶ 18).

Ms. McClatchey did not give either Puskar or the AP consent to take a photograph of her

photograph. (Pla’s SMF ¶ 19). Puskar did not ask her permission to use the photograph of her

photograph to accompany the Sheehan article, nor did Puskar tell her the AP was also going to

transmit her photo to all its members and subscribers. (Pla’s SMF ¶ 20). In fact, Puskar admits

“there [was] no rights talk at all.” (Pla’s SMF ¶ 21). Instead of asking Ms. McClatchey for a

digital copy of the photograph, Puskar elected to take a photograph of her photograph. (Pla’s

SMF ¶ 22). Ms. McClatchey did not realize Puskar was doing this – she thought he was taking

a picture of her for the Sheehan article, not capturing a photo of her photograph. (Pla’s SMF ¶

22). Ms. McClatchey never gave anyone at the AP either written or oral permission to use the

End of Serenity photograph. (Pla’s SMF ¶ 19).

Mr. Puskar then cropped the edges off Ms. McClatchey's End of Serenity photograph,

omitting the included title and copyright information, and submitted it to the AP. (Pla’s SMF ¶

24). The AP’s procedures for such transmission required the editor who received the

photograph, i.e., Puskar, to clear all copyright issues. (Pla’s SMF ¶ 25). As that editor, and an

agent of the AP, it was Mr. Puskar’s responsibility to clear any copyright issues, but he failed to

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do so. (Pla’s SMF ¶ 26). Compounding his "oversight", no one at the AP double checked him.

(Pla’s SMF ¶ 26). In fact, Mr. Puskar admits that he “[didn’t] know” what rights the AP had in

the photograph. (Pla’s SMF ¶ 27).

Mr. Sheehan’s article, and Mr. Puskar’s copy of the End of Serenity photograph were

then distributed as separate items, at different times, to the AP’s roughly 2000 PhotoStream

members, including AOL, the Chicago Tribune, and the Washington Post. (Pla’s SMF ¶ 28).

Although the Sheehan article references Ms. McClatchey's photograph, the AP included no

requirement or restriction that the photograph be used solely with the article. (Pla’s SMF ¶ 29).

Worse, the caption on the infringing and cropped photograph itself, that Mr. Puskar co-wrote,

makes no reference to Mr. Sheehan’s article. (Def’s SMF ¶ 58). In other words, the roughly

2000 news organizations received the photograph free of charge, with no restriction or guidance

that the photograph was only to be used in connection with the news article. Put another way,

AP's actions, or lack thereof, gave unfettered and unlimited access to Ms. McClatchey's

photograph without any recompense or acknowledgement to her.

Additionally, the “meta data” attached to the photograph falsely indicated that Ms.

McClatchey was a “stringer,” which is another word for a freelancer. (Pla’s SMF ¶ 30).

Freelance photographers for the AP have contracts with the AP which provides that the AP owns

the copyright for any photographs taken for the AP. (Pla’s SMF ¶ 31). Therefore, the AP’s

members and subscribers received the photograph thinking the AP owned the copyright. The AP

admits that this was “incorrect.” (Pla’s SMF ¶ 32).

All of the AP’s roughly 2000 PhotoStream members and subscribers received a cropped

digital copy of Ms. McClatchey’s End of Serenity photograph via the AP’s distribution on

approximately September 11, 2002. (Pla’s SMF ¶ 33) After the initial distribution, and once

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the photograph was made available to all members and subscribers with access to the

PhotoArchive, at least three entities downloaded the photograph again. (Pla’s SMF ¶ 34). In

approximately August 2003, Ms. McClatchey was informed that her photograph being used on

AOL’s home page, in connection with a conspiracy story on Flight 93. (Pla’s SMF ¶ 35).

AOL never sought and Ms. McClatchey has never given AOL permission to use her photograph.

(Pla’s SMF ¶ 36). Shortly thereafter, Ms. McClatchey contacted AOL, learned AOL received

access to the image from the AP, and requested that the AP remove her photograph from their

database. (Pla’s SMF ¶ 37). She later found additional unauthorized and infringing uses of her

photograph in newspapers, such as the Washington Post and Philadelphia Daily News,

magazines, and in connection with several Flight 93 conspiracy web sites. (Pla’s SMF ¶ 38).

Ms. McClatchey initially licensed the Washington Post for a limited use of her photograph.

After receiving a copy from the AP, the Washington Post again used her photograph, but failed

to pay a license fee. (Pla’s SMF ¶ 39).

After Ms. McClatchey notified the AP of its unauthorized use, the AP did not inform its

members and subscribers that it had no rights to the photograph or that they should destroy any

copies of it. (Pla’s SMF ¶ 40). Indeed, to this day the AP has not done this. (Pla’s SMF ¶ 41).

In fact, the only thing the AP did was to restrict access to Ms. McClatchey's photograph in its

PhotoArchive on approximately November 3, 2004. (Pla’s SMF ¶ 42).

ARGUMENT

I. THE LAW OF SUMMARY JUDGMENT

Plaintiff need only show that there are sufficient disputed facts to permit a reasonable

jury to find infringement of its patent. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248

(1986). Plaintiff is entitled to have all doubts and evidentiary conflicts resolved in its favor.

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Palumbo v. Don-Joy Co., 762 F.2d 969, 973 (Fed. Cir. 1985)(overruled on other grounds). The

Court must draw all inferences in a light most favorable to the non-movant Plaintiff. Martin v.

Barber, 755 F.2d 1564, 1566 (Fed. Cir. 1985). All of Plaintiff=s evidence must be accepted as

true. Anderson, 477 U.S. at 255. Even doubts about the presence or absence of a factual issue

must be resolved in favor of Plaintiff. Howes v. Medical Components, Inc., 814 F.2d 638, 643

(Fed. Cir. 1987); Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1320 (Fed. Cir.

2003).

II. THE AP DIRECTLY INFRINGED

THE END OF SERENITY PHOTOGRAPH

Copyright infringement requires (1) ownership of a copyright and (2) copying of the

copyrighted material by the defendant. World Wrestling Federation Entertainment, Inc. v. Big

Dog Holdings, Inc., 280 F.Supp.2d 413, 424 (W.D. Pa. 2003). The AP has never alleged that

Ms. McClatchey does not own the copyright to her End of Serenity photograph. Furthermore,

the AP has admitted that it took a photograph of Ms. McClatchey’s End of Serenity photograph

and transmitted it to its PhotoStream members and subscribers. (Hall Decl., Exh. 3, Def’s Rsp to

Pla’s RFA ¶¶ 4, 6, 16, 17). And, the AP did so without consent from McClatchey. In fact, the

AP's entire brief, including the declarations of Ake and Gerberich, are devoid of any direct

evidence that McClatchey gave the AP her consent to use her End of Serenity photograph.

Merely concluding that the AP had consent (as Ake does) is insufficient. (See Ake Decl., at ¶

22). Copyright infringement in this case is undisputed. The AP’s only defense to Plaintiff's

Count I direct infringement claim is that its unjustified use was a fair use under the Copyright

Act. It was not.

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III. AP IS NOT ENTITLED TO SUMMARY JUDGMENT ON FAIR USE AS A

DEFENSE TO PLAINTIFF'S COUNT I DIRECT INFRINGEMENT
CLAIM

Fair use as a defense to copyright infringement allows someone to “use the copyrighted

material in a reasonable manner without [the copyright owner’s] consent.” Maxtone-Graham v.

Burtchaell, 803 F.2d 1253, 1254 (2nd Cir. 1986) (emphasis added). It serves as an affirmative

defense upon which the alleged infringer, the AP, has the burden of proof. Video Pipeline, Inc. v.

Buena Vista Home Entm't, Inc., 342 F.3d 191, 197 (3d Cir. 2004); see also, Campbell v. Acuff-

Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 1177 (1994). Fair use is a mixed question of

law and fact, Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 560 (1985),

which means that it "may be resolved on summary judgment if a reasonable trier of fact could

reach only one conclusion"--but not otherwise. Narell v. Freeman, 872 F.2d 907, 910 (9th Cir.

1989). Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 114 S.Ct. 1164, 1177 (1994). The

AP has not met its burden.

The Copyright Act specifies four non-exhaustive factors that may be taken into account

to determine whether the fair use defense is applicable: (1) the purpose and character of the use;

(2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used; and

(4) the effect of the use upon the potential market for or value of the copyrighted work. 17

U.S.C. § 107. Meeting one factor alone (or even two or three) is not dispositive; all four factors

“are to be explored, and the results weighed together, in light of the purposes of copyright.”

Campbell, 510 U.S. at 578.

The facts show that the AP did not use Ms. McClatchey’s End of Serenity photograph in

a reasonable manner and, therefore, cannot meet its burden of proof. Specifically, the AP used

Ms. McClatchey's photograph (1) in connection with the Sheehan article about Val McClatchey,

and (2) as a stand-alone photograph by transmitting the photograph to its roughly 2000 members

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and subscribers without any reference or connection to any particular article. In light of these

facts, the AP’s fair use defense must fail. What follows is a specific analysis of the four fair use

factors.

A. The AP’s Use Was Commercial

And Non-Transformative

The first fair use factor is “the purpose and character of the use, including whether such

use is of a commercial nature or is for nonprofit educational purposes.” 17 U.S.C. § 107(1). The

AP claims its use of Ms. McClatchey's End of Serenity photograph was news reporting, and,

presumably, non-commercial. While the preamble to Section 107 enumerates certain purposes

that are more appropriate for a finding of fair use, including news reporting, it does so only to

provide examples and not to create a presumption that all news articles are fair use. See Harper,

471 U.S. at 561 (“The issue is not what constitutes ‘news,’ but whether a claim of news reporting

is a valid fair use defense to an infringement of copyrightable expression.”). Providing

unrestricted access to Ms. McClatchey's photograph is not news reporting.

The AP argues that the photograph was of “legitimate public interest,” and that, therefore,

it falls within the bounds of responsible news reporting. However, “[t]he fair use doctrine is not

a license for corporate theft, empowering a court to ignore a copyright whenever it determines

the underlying work contains material of possible public importance.” Iowa State University

Research Foundation, Inc. v. American Broadcasting Cos., Inc., 621 F.2d 57, 61 (2nd Cir. 1980);

see Harper, 471 U.S. at 558 (“In our haste to disseminate news, it should not be forgotten that the

Framers intended copyright itself to be the engine of free expression.”) Furthermore, any

commercial use, such as is evident here, tends to cut against a fair use defense. Lish v. Harper’s

Magazine Found., 807 F.Supp. 1090, 1101 (S.D.N.Y. 1992).

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i. The AP’s Use Was A Commercial Use

The AP’s non-profit status should not be an indicator that its use is not commercial.

“[T]he mere fact that [Defendant] is a non-profit organization that operates at a loss does not

preclude a finding of ‘commercial use’; non-profit organizations enjoy no special immunity from

determinations of copyright violation.” Lish, 807 F.Supp. at 1101. The AP’s objective is to

gather and distribute news articles and photographs to its member and subscriber news

organizations around the world for a fee. (Def’s SMF ¶¶ 1, 18). Its members and subscribers are

for-profit entities that certainly have commercial interests, and these entities pay the AP for

access to its photographs and news articles. (Def’s SMF ¶¶ 2, 18). Indeed, the AP is actually

owned by its United States members:

Question: So the United States members [are] news publications

that own the Associated Press are responsible for the debts and
liabilities of the Associated Press; is that correct?

Answer: I believe so. Yes.

(Hall Decl., Exh. 16, Galt Dep., p. 10). The AP stands to gain a commercial benefit by

distributing the End of Serenity photograph to its for-profit members and subscribers:

Question: Is it fair to say that The Associated Press allows the

news organizations around the world to pool their resources and
reduce costs that they would otherwise have to bear alone?

Answer: I mean, I think, yes. That's one way to look at it. It's cost
reduction, you know, aggregation of resources. You can have one
Associated Press reporter in Afghanistan instead of The New York
Times, The Washington Post, The L.A. Times, et cetera, each
having a reporter.

(Hall Decl., Exh. 16, Galt Dep., pp. 11-12). In this case, the AP unlawfully took the End of

Serenity photograph for no fee and distributed it to all of its members and subscribers, thereby

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ensuring that each of those news organizations did not have to pay a separate fee for use of the

photograph.

ii. The AP’s Use Was Not Transformative

The most important inquiry to the first fair use factor is whether the new work is

transformative, i.e. “whether the new work merely ‘supercede[s] the objects’ of the original

creation…or instead adds something new, with a further purpose or different character, altering

the first with new expression, meaning, or message.” Ringgold v. Black Entertainment

Television, Inc., 126 F.3d 70, 79 (2nd Cir. 1997). The AP incorrectly argues that its use of the

End of Serenity photograph was transformative, because it “was the focus of AP’s report.” This

is incorrect; the Sheehan article was about Ms. McClatchey and the events that had transpired in

her life since she took the photograph, not about the photograph itself or the crash of Flight 93.

(Pla's SMF ¶ 15). Specifically, the Sheehan article talks about Ms. McClatchey's personal

struggles, her bankruptcy, her licensing of the photo to news outlets for a fee, her sale of the

photo and the resulting donations to the Todd Beamer Foundation, as well as the effect all these

things had on her life in the year after September 11, 2001. (Hall Decl., Exh. 14). The article is

not about the crash of Flight 93, which is what is depicted in the End of Serenity photograph.

The testimony of Gene Puskar, the photographer sent to Ms. McClatchey's house by the

AP confirms this. Puskar admitted that he was sent to her house to take pictures of her and not

the End of Serenity photograph:

Question: What was your assignment when you went to Ms.

McClatchey's house around the one year anniversary of September
11th?

Answer: To take pictures of a woman with a picture that showed

the crash a year before.

(Hall Decl., Exh. 4, Puskar Dep. at pp. 29-30).

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The AP's citation of Nunez v. Caribbean International News Corp., 235 F.3d 18 (1st Cir.

2000) is distinguishable. Nunez dealt with allegedly pornographic photographs taken of Miss

Puerto Rico Universe. Id. at 21. Those photographs appeared in a newspaper, along with

articles related to the controversy. Id. In that case, the story was what was depicted in the

photograph, i.e., "the pictures were the story." Id. at 22.

In the instant case, the Sheehan story was about Ms. McClatchey, not about the crash of

Flight 93 which was depicted in her End of Serenity photograph. The AP's argument that the

report would be “an incomplete story without a depiction of the photograph" is wrong. (Def’s

Mem p. 11). It would be an "incomplete story" to publish the report without a picture of the

individual who took the photograph, and upon whom the article is focused; this is exactly what

the AP did1. Gene Puskar was sent to McClatchey's house to take pictures of her and not the

photograph. (Pla’s SMF ¶¶ 16-17). Just as importantly, the AP distributed the Sheehan article

and the McClatchey photograph separately to its members and subscribers with no restriction

that they use her photograph only in connection with the Sheehan article. (Pla’s SMF ¶¶ 28-29).

In other words, the AP's use of the End of Serenity photograph far exceeded any tenuous

connection the photo might have had to the story about Ms. McClatchey.

In order for a use to be considered transformative, “there must be real, substantial

condensation of the materials, and intellectual labor and judgment bestowed thereon; and not

merely the facile use of the scissors; or extracts of the essential parts, constituting the chief value

of the original work.” Los Angeles News Service v. CBS Broadcasting, Inc., 305 F.3d 924, 939

(9th Cir. 2002) quoting Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D. Mass 1841); see also,

1
In fact, at least one newspaper did send its own photographer to McClatchey's house to take a picture of her
holding the photograph (the same type of picture that Gene Puskar was there to take). This picture of Ms.
McClatchey holding the photograph - and not the End of Serenity photograph - accompanied the Sheehan story in
that newspaper. (Hall Decl., Exh. 14).

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 Case 3:05-cv-00145-TFM Document 26 Filed 06/19/2006 Page 21 of 39

Castle Rock Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132, 142 (2nd Cir.

1998) (work is transformative when copyrighted material is "transformed in the creation of new

information, new aesthetics, new insights and understandings."). “When the secondary use

involves such an untransformed duplication of the original, it has little or no value that does not

exist in the original work.” Robinson v. Random House, Inc. 877 F.Supp 830, 841 (S.D.N.Y.

1995).

This is what occurred here. Ms. McClatchey’s photograph was simply cropped to

remove the copyright and duplicated by the AP. (Pla's SMF ¶ 24). The AP added nothing to the

photograph nor created anything new. It simply copied the photograph, omitting the copyright

information and then used it for the same purpose as Ms. McClatchey's past practice – to

distribute to news and broadcast organizations for a fee. The AP’s use merely supersedes the

original work. Therefore, the AP’s use of the photograph was commercial and non-

transformative; the first fair use factor weighs in favor of Ms. McClatchey.

B. The End Of Serenity Is Sufficiently Creative

The second fair use factor to consider is “the nature of the copyrighted work.” 17 U.S.C.

107(2). The AP argues that because End of Serenity was previously published and informational

in nature, that this factor weighs in their favor. Ms. McClatchey does not dispute that her

photograph has been published before - by entities that had received her permission or paid for a

limited use license.

Legal authority demonstrates that for photographs such as Ms. McClatchey's, the second

factor generally weighs in favor of the photographer. “Although photographs are often ‘factual

or informational in nature,’ the art of photography has generally been deemed sufficiently

creative to make the second fair use factor weigh in favor of photographer-plaintiffs.” Baraban

v. Time Warner, Inc., 2000 U.S. Dist. LEXIS 4447, *11 (S.D.N.Y. 2000) quoting Strauss v.

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 Case 3:05-cv-00145-TFM Document 26 Filed 06/19/2006 Page 22 of 39

Hearst Corp., 8 U.S.P.Q.2d 1832, 1836 (S.D.N.Y. 1988); Kelly v. Arriba Soft Corp., 336 F.3d

811, 820 (9th Cir. 2003) (weighing second factor in favor of photographer); Greenberg v.

National Geographic Society, 1999 U.S. Dist. LEXIS 13874, *27-28 (S.D. Fla. 1999) (weighing

second factor in favor of photographer); Psihoyos v. Fuente, 1998 U.S. Dist. LEXIS 9192, *

(S.D.N.Y. 1998) (weighing second factor in favor of photographer); Mathieson v. Associated

Press, 23 U.S.P.Q.2d 1685, 1691 (S.D.N.Y. 1992) (weighing second factor in favor of

photographer).

In sharp contrast, L.A. News Serv. v. CBS Broadcasting, Inc., 305 F.3d 924 (9th Cir.

1997), the main case cited by the AP, dealt with a videotape of an event shortly after the event

happened, and the allegedly infringing use involved a story directly about the information

contained in the video. That is not the case here. The AP's use and distribution of the

photograph far exceeded any connection to the event depicted in the photograph - the crash of

Flight 93.

Moreover, Ms. McClatchey’s photograph has been honored through awards and exhibits,

and is on permanent display at the Smithsonian, which further indicates that it is “sufficiently

creative.” (Pla's SMF ¶ 4). The second fair use factor also weighs in favor of Ms. McClatchey.

C. The AP Copied The Entire Photograph,

Or At Least The “Heart” Of The Photograph

The third fair use factor considers “the amount and substantiality of the portion used in

relation to the copyrighted work as a whole.” 17 U.S.C. 107(3). Here, the AP argues that

because it cropped the sides, top, and bottom of Ms. McClatchey’s photograph, that it only used

an excerpt of the photograph. (Def’s Mem p. 13). Plaintiff agrees that the photograph was

cropped - to remove the copyright management information and title of the photograph.

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 Case 3:05-cv-00145-TFM Document 26 Filed 06/19/2006 Page 23 of 39

However, the resulting photo was not merely an excerpt as the AP used the entire relevant

portion of the photograph, including the mushroom cloud and the barn. (Hall Decl., Exh. 6).

In analyzing this factor, both the quantity and the quality and importance of the material

used must be considered. Campbell, 510 U.S. at 587; see Harper, 471 U.S. at 564-565 (taking

approximately 300 words out of a memoir weighed against fair use because what was taken “was

essentially the heart of the book.”). While "wholesale copying does not preclude fair use per se,"

copying an entire work "militates against a finding of fair use." Hustler, 796 F.2d at 1155. In

general, an infringing use does not constitute fair use if the entire work is reproduced. Inifinity

Broadcase Corp. v. Kirkwood, 150 F.3d 104, 109 (2nd Cir. 1998); Sega Enters. Ltd. v. Maphia,

857 F.Supp. 679, 687 (N.D. Cal. 1994). Here, the AP copied the entire work, and distributed the

entire relevant portion of the End of Serenity photograph--the mushroom cloud and barn--while

only cropping off Ms. McClatchey's copyright management information. This was clearly not a

fair use.

“[T]he mere fact that the photo depicts a newsworthy item does not justify copying it

entirely without permission.” Psihoyo, 1998 U.S. Dist. LEXIS 9192 at *13; see also Greenberg,

1999 U.S. Dist. LEXIS 13874 at *31 (finding against fair use on the third factor, where “[t]he

reprint…though cropped, is a substantial portion of Plaintiffs’ copyrighted photograph.”);

Batesville Services, Inc. v. Funeral Depot, Inc., 2004 U.S. Dist. LEXIS 24336, *25 (S.D. Ind.

2004) (copying photographs as a whole weighs against fair use.) Furthermore, in cases where

courts have found copying an entire photograph to be reasonable, the facts have vastly differed

compared with those in the instant case. See Baraban, 2000 U.S. Dist. LEXIS 4447 at *13

(photograph shrunk to less than one quarter of its original size and in black and white); Kelly v.

Arriba Soft Corp., 336 F.3d 811, (9th Cir. 2003) (copying thumbnails of photographs); Nunez,

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235 F.3d at 22 (“the [pornographic] pictures were the story”); Mathieson, 1992 WL 164447, at

*8 (the two photographs at issue were “components of a larger compilation of photos which

constitue[d] a ‘single’ work”).

Despite its arguments to the contrary, the AP used the entire photograph, or at least the

“heart” of the photograph. The third fair use factor weighs in favor of Ms. McClatchey.

D. The AP’s Actions Usurped Ms.

McClatchey’s Primary Market

The final factor to consider is “the effect of the use upon the potential market for or value

of the copyrighted work.” 17 U.S.C. 107(4). Key to the fourth factor is “whether unrestricted

and widespread conduct of the sort engaged in by the defendant…would result in a substantially

adverse impact on the potential market for the original.” Campbell, 510 U.S. at 590. The

concern is “whether the secondary use usurps or substitutes for the market of the original work.”

Castle Rock, 150 F.3d at 145 ; see Nihon Keizai Shimbun, Inc. v. Comline Business Data, Inc.,

166 F.3d 65, 73 (2nd Cir. 1999); compare with Haberman v. Hustler Magazine, Inc., 626 F.Supp.

201 (D. Mass 1986) (art postcards versus their depiction in an adult magazine are not the same

market).

To determine “whether the use has harmed the work’s value or market, courts have

focused on whether the infringing use: (1) tends to diminish or prejudice the potential sale of the

work; or (2) tends to interfere with the marketability of the work; or (3) fulfills the demand for

the original work.” Hustler, 796 F.2d at 1155-1156 (internal citations omitted).

The AP’s distribution of the End of Serenity photograph fulfills all three Hustler tests.

While the AP argues that it never sold copies of Ms. McClatchey’s photograph, (Def’s SMF

¶82), Ms. McClatchey never accused the AP of doing so. Instead, the AP fails to acknowledge

that it distributed Ms. McClatchey’s photograph to roughly 2000 of its members and subscribers,

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including AOL, the Washington Post, and the Chicago Tribune, the very news entities which

may have an interest in publishing Ms. McClatchey’s photograph pursuant to a license fee.

This is evidenced by the fact that at least AOL and the Washington Post used the

photograph without paying Ms. McClatchey a fee. The Washington Post use is illustrative of the

effect of the AP's use and distribution on the market for Ms. McClatchey's photo. The

Washington Post initially paid Ms. McClatchey for a first, one-time use of her photograph (prior

to receiving the photograph from the AP). (Pla's SMF ¶ 39). Then, after receiving it from the

AP, the Washington Post made a second published use of the photograph, this time without

paying a fee or taking a license from Ms. McClatchey. (Pla's SMF ¶ 39). This is direct evidence

of a causal connection between the AP's infringement and a loss of revenue. The AP has not met

its burden - because it cannot - of showing that this damage would have occurred had there been

no taking. The Supreme Court stated in Harper,

Once a copyright holder establishes with reasonable probability the

existence of a causal connection between the infringement and a
loss of revenue, the burden properly shifts to the infringer to
show that this damage would have occurred had there been no
taking.

Harper, 471 U.S. at 567 (emphasis added).

Because of AP’s actions, its members and subscribers no longer have to go through Ms.

McClatchey to license the photograph; they already have the photograph from the AP. To this

day, the AP has taken no steps to remove the digital copy of the End of Serenity photograph

from the roughly 2000 news organizations world-wide that it was transmitted to. (Pla's SMF ¶

41). Thus, the AP's unauthorized usage has impacted Ms. McClatchey’s entire primary market.

The AP admits that it transmitted the photograph to virtually every large media outlet in the

United States, and many others abroad:

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Question: Within the news outlet market, is it fair to say that the
members and subscribers of The Associated Press make up the
majority of the news outlet market?

Answer: A good portion. Yes.

(Hall Decl., Exh. 9, Gerberich Dep., p. 122). Furthermore, the AP, a potential licensee itself,

used the photograph for free. (See L.A. News Serv., 108 F.3d at 1122-1123 (Defendant’s

position as a potential licensee of plaintiff’s product indicated that defendant’s use of plaintiff’s

works for free would destroy plaintiff’s original and primary market).

Ms. McClatchey has previously established that such a market for her photograph

exists, given the number of news organizations, individuals, and magazines she has licensed or

sold the photograph to, including ABC News, Fox News, U.S. News and World Report, the

Pittsburgh Post-Gazette, Newsweek, and the Washington Post2. (Pla’s SMF ¶ 5). Moreover,

Ms. McClatchey doesn’t need to show a decline in the number of licensing requests for her photo

to establish harm. Psihoyo at *14; Ringgold, 126 F.3d at 81.

The fair use doctrine has always precluded a use that “supersedes the use of the original.”

Harper, 471 U.S. at 5509, citing Folsom, 9 F. Cas. at 344-345. That is precisely what the AP did.

Furthermore, if the AP’s actions were permitted by others, it would continue to destroy the

potential market for Ms. McClatchey’s photograph. Therefore, the final fair use factor weighs in

favor of Ms. McClatchey.

2
The AP's own Internet Website provides further evidence of the market for the McClatchey photograph.
On its Website, the AP sells historical photographs for personal use. Two examples are (1) a photograph of the
Marines raising the US Flag on Iwo Jima during WWII, which sells for over $3,000 per copy, and (2) a photograph
of a plane hitting the World Trade Center in New York City on 09-11-01, which sells for over $1,000 per copy.
(Hall Decl., Exh. 17). McClatchey's End of Serenity photo is in a comparable market as the World Trade Center
photo, and Gene Puskar in his deposition made a direct comparison between McClatchey's photo and the Iwo Jima
photo. (Hall Decl., Exh. 4, Puskar Dep. at pp. 58-59).

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Because all four fair use factors weigh in favor of Ms. McClatchey, she respectfully

requests the Court to deny the AP’s motion for summary judgment for dismissal of Count I direct

copyright infringement.

IV. AP IS NOT ENTITLED TO SUMMARY JUDGMENT

FOR SECONDARY COPYRIGHT LIABILITY

Inexplicably, the AP insists that the record is “devoid of evidence of direct infringements

committed by persons to whom the AP provided its copy of Ms. McClatchey’s photograph.”

This is simply not true. AOL used the photograph in approximately early August 2003. (Hall

Decl., Exh. 12). A letter written by AOL’s attorney to Ms. McClatchey’s attorney states “[t]he

only manner in which AOL could have had access to the photo described in your letter was

through an agreement between AOL and the Associated Press (“AP”)". (Hall Decl., Exh. 12).

Furthermore, another document produced by the AP shows users who downloaded the image

after the initial transmission, including AOL. (Hall Decl., Exh. 11). Both the Washington Post

and The Philadelphia Daily News (both PhotoStream subscribers) also used the photograph

without Ms. McClatchey’s permission. (Pla’s SMF ¶ 38).

Therefore, AP’s assertion that there is no evidence of direct infringement by a third

party is baseless. There is sufficient evidence in the record to show that at least AOL and the

Washington Post directly infringed Ms. McClatchey’s copyright. The fact that the AP

conveniently chooses not to track the uses of the photograph after distribution is not a valid

defense.

A. Material Issues of Fact Prevent Summary

Judgment on Contributory Copyright Infringement

Liability for contributory copyright infringement requires (1) direct infringement by a

primary party; and (2) inducement or materially contributes to the infringing contact; and (3)

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defendant knows or has reason to know of the direct infringement. Metro-Goldwyn-Mayer

Studios Inc. v. Grokster, Ltd., 125 S. Ct. 2764, 2776 (2005).

The AP’s actions support that (1) there was intent by it to induce its members to infringe

and (2) that it had the requisite knowledge. Gene Puskar’s deposition testimony alone makes

clear that he never asked Ms. McClatchey if the AP had permission to use her photograph.

(Pla’s SMF ¶¶ 20-21). Mr. Puskar was the AP representative responsible for getting her

permission, and no one else at the AP ever spoke with Ms. McClatchey regarding use of her

photograph. (Pla’s SMF ¶¶ 20-21). Ms. McClatchey never gave the AP permission to use the

photograph. (Pla’s SMF ¶ 19). The AP simply used her photograph and transmitted it to its

PhotoStream members and subscribers, and then put it in its PhotoArchive. No evidence

supports the AP's contention that it believed it had Ms. McClatchey’s permission, especially

when no one from the AP even inquired about such permission.

The AP’s actions allowed additional direct infringers (i.e. AOL, Washington Post, The

Philadelphia Daily News, and untold others) to infringe Ms. McClatchey’s copyright. The AP is

in the business of collecting and distributing information to its members and subscribers, for the

precise purpose that the members and subscribers are to use the information. These same

members make up the AP. “The authorization or assistance must bear a direct relationship to the

infringing acts, and the contributory infringer must have acted in concert with the direct

infringer.” Livnat v. Lavi, 1998 U.S. Dist. LEXIS 917, *9 (S.D.N.Y. 1998). By providing its

members and subscribers with the infringing photograph and encouraging them to use the

photographs it provides, the AP provided the direct assistance necessary for its members and

subscribers to infringe. Furthermore, the AP did not insist that its members use the photograph

only in connection with the article about Ms. McClatchey. (Pla's SMF ¶ 29).

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As to the AP’s knowledge, the AP's claim that it did not know or have reason to know

that its members or subscribers may download and/or use the End of Serenity photograph after it

was distributed by the AP is simply untenable. Whether the AP knew its members’ and

subscribers’ use would “infringe” Ms. McClatchey’s copyright by doing so rests entirely on the

AP’s mistaken, and unsupported, "belief" that it had Ms. McClatchey’s permission to distribute

the photograph. Therefore, the AP is not entitled to summary judgment on Count II contributory

infringement.

B. Material Issues of Fact Prevent Summary

Judgment on Vicarious Copyright Infringement

Three elements are required to prove a defendant is vicariously liable for copyright

infringement: (1) direct infringement by a primary party, (2) a direct financial benefit to the

defendant, and (3) the right and ability to supervise the infringers. Metro-Goldwyn-Mayer

Studios v. Grokster Ltd., 380 F.3d 1154, 1164 (9th Cir. 2004).

The AP enjoys a direct financial benefit from its use and distribution of Ms.

McClatchey's photograph. Regardless, the “direct financial interest" need only be tied to the

operation as a whole, not exclusively to the infringement. See Playboy Enters. v. Webbworld,

Inc., 968 F. Supp. 1171, 1177 (D. Tex. 1997); Realsongs v. Gulf Broadcasting Corp., 824 F.

Supp. 89 (M.D.La. 1993). Although the fees the AP charges to its members and subscribers, all

of which are for-profit entities with commercial interests, are not based on the content that

member or subscriber uses, those fees provide a direct financial benefit to the AP. Members and

subscribers pay these fees to have access to the AP’s articles and photographs. Further, the AP is

actually owned by those same United States members.

The AP has the right and ability to supervise its members and subscribers based on the

Agreements and Terms of Use it forces them to accept. For example, the AP PhotoStream

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Agreement provides that “All such photos are solely for publication in the Member’s news

columns”; “AP will install and maintain an AP Server at Member”; “All PhotoStream news

photos remain the property of AP”; “Member will promptly furnish to AP news pictures

originating in its normal news protection area.” (Hall Decl., Exh. 18). This Agreement indicates

that the AP has at least some control over its members and subscribers. Furthermore, access to

the PhotoArchive leads to more terms: “Only U.S. members and World Services subscribers of

The Associated Press in good standing…”; “A member or subscriber’s license to use images

from the Photo Archive expires immediately upon termination or suspension of the AP contract.”

(Hall Decl., Exh. 19). If a member must be in “good standing” or if a member’s license may be

“terminated” or “suspended,” there is at least some control and supervision occurring by the AP.

(Hall Decl., Exh. 19).

“The only relevant question regarding the element of control is whether defendants had

the right and ability to control what occurred on the…website.” Playboy, 968 F. Supp. at 1177.

A party with the ability to supervise or control infringing activity cannot avoid liability by failing

to exercise such supervision or control. See Gershwin Publ'g. Corp. v. Columbia Artists Mgmt,

Inc., 443 F.2d 1159, 1161 (2d Cir. 1971) (The "failure to police the conduct of the primary

infringer" is sufficient for the imposition of vicarious liability.) If, indeed, the AP believed it had

Ms. McClatchey’s permission to use the photograph only in connection with the article, it had

the responsibility (and indeed, the capability) to inform its members and subscribers about this

limitation. No such message or restriction was ever relayed, and no message exists on the meta-

data of the photograph in the AP’s database which makes this restriction clear. (Pla's SMF ¶ 29).

Therefore, the AP is not entitled to summary judgment on Count III vicarious infringement.

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V. AP IS NOT ENTITLED TO SUMMARY

JUDGMENT DISMISSING THE DMCA CLAIMS

A. The AP Distributed False CMI in violation of 17 U.S.C. § 1202(a)

Section 1202(a) of the Digital Millennium Copyright Act ("DMCA") prohibits knowing

falsification of copyright management information ("CMI") with the intent to aid copyright

infringement. To recover for a violation of § 1202(a), a plaintiff must prove that the defendant

who falsifies CMI knows that the CMI is false, and that the defendant provides, distributes, or

imports the false CMI with the intent to aid infringement. 17 U.S.C. § 1202(a); see also S. Rep.

No. 105-190, at 34-35 (1998); Ward v. Nat'l Geographic Soc'y, 208 F. Supp. 2d 429, 449

(S.D.N.Y. 2002). There is overwhelming evidence supporting all the elements of a section

1202(a) violation by the AP.

i. The AP Falsified the CMI, Knowing it was False

The AP has confused giving photo credit with distributing false copyright information.

Although the AP caption states that the photograph was taken by Ms. McClatchey, AP’s

PhotoStream Agreement (to which all members/subscribers who received the Photograph are

parties) states the following: “All PhotoStream newsphotos remain the property of AP and when

reproduced must carry a credit: ‘Associated Press Photo’ or ‘AP Photo.’” (Hall Decl., Exh. 18).

There is no requirement that Ms. McClatchey be listed as the copyright owner, nor that she be

given any credit. The Agreement indicates that the Photograph was the “property” of the AP –

not the “property” of Ms. McClatchey. Furthermore, the meta-data attached to the Photograph

identified Ms. McClatchey as a “stringer,” or freelance photographer. (Pla's SMF ¶ 30).

Freelancers have contracts with the AP, and the AP owns the copyright to those photographs.

(Pla’s SMF ¶ 31). Nothing in the meta-data shows that anyone other than the AP owned the

copyright to the photograph. The “cropped” photograph submitted by Mr. Puskar falsely

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indicated that the AP owned the copyright to the End of Serenity photograph. Worse, the

cropped photo intentionally omitted Ms. McClatchey's copyright management information.

ii. The AP Distributed the False CMI

With the Intent to Aid Infringement

The AP also argues that it did not intend to aid infringement when it distributed the

photograph to its members and subscribers. However, the nature of the AP’s business to

distribute photographs for reproduction and use by its members and subscribers belies such a

claim. Similar to the AP’s other arguments, it relies on its belief that it had Ms. McClatchey’s

consent to use the Photograph, even though Gene Puskar, the photographer who spoke with Ms.

McClatchey testified that the use of the photograph was never even discussed. (Pla’s SMF ¶¶

20-21). Puskar, acting as an agent and editor for the AP, never even asked Ms. McClatchey

whether or not the AP could distribute the Photograph to all of its members and subscribers.

(Pla’s SMF ¶¶ 20, 21, and 27). Regardless, if the AP knew, or should have known, it was using

the photograph without Ms. McClatchey’s permission, it is impossible that by distributing the

photograph it did not intend to aid infringement.

B. AP Removed CMI in Violation of 17 U.S.C. § 1202(b)

Section 1202(b) of the DMCA prohibits the intentional removal or alteration of CMI with

reasonable grounds to know the removal or alteration will aid infringement. To recover for a

violation of § 1202(b), a plaintiff must demonstrate that the defendant intentionally removed or

altered CMI knowing, or having reasonable grounds to know, that the removal will aid

infringement. 17 U.S.C. § 1202(b). The defendant must remove copyright management

information from the "body" of, or area around, plaintiff's work itself. Schiffer Publishing, Ltd.

v. Chronicle Books, LLC, 2004 U.S. Dist. LEXIS 23052 (E.D. Pa. 2004).

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i. The AP Intentionally Cropped Off And Removed

Ms. McClatchey's Copyright Information And Title

Section 1202(b) specifically prohibits exactly what the AP did here - removing CMI from

the body of an image and transfer it digitally. The AP admits that it cropped off portions of the

top, bottom, left, and right of the McClatchey End of Serenity photograph. (Hall Decl., Exh. 3,

Def’s Rsp to Pla’s RFA ¶¶19-22). At his deposition, Mr. Puskar repeatedly stated that he “did

not recall” whether the picture he photographed had a copyright notice on it. (Pla's SMF ¶ 43).

Ms. McClatchey remembers specifically that she had the photograph with the CMI on it when

Mr. Puskar was taking pictures outside her home. (Hall Decl., Exh. 5, McClatchey Dec. at ¶¶

1,2, and 4). Therefore, Ms. McClatchey's testimony is unrefuted in this case3. Every photograph

printed by Ms. McClatchey, other than her personal copy which remains in her office, has the

title of the photograph in the upper left, and Ms. McClatchey’s name and the date on the bottom

right. (Pla’s SMF ¶ 10).

After taking the photograph of Ms. McClatchey’s End of Serenity photograph, which

bore her copyright information and title, it is undisputed that Mr. Puskar cropped the top, bottom,

and sides off the photograph, which resulted in the removal of Ms. McClatchey’s CMI. (Hall

Decl., Exh. 3, Def’s Rsp to Pla’s RFA ¶¶19-22). It is undisputed that Mr. Puskar provided the

AP with a cropped photograph that did not include McClatchey's CMI. (Id.). The following

depicts the manner in which the End of Serenity photograph was altered to remove CMI:

3
It must be noted that despite having ample opportunity at her deposition, AP's counsel avoided asking even
one single question of Ms. McClatchey regarding Gene Puskar taking a picture of her photograph outside her house.

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The top photograph is the End of Serenity photograph that Mr. Puskar photographed,

including the CMI (Valencia McClatchey, copyright 2002; "End of Serenity" September 11,

2001). (Hall Decl., Exh. 7). The bottom left photograph shows how Gene Puskar removed the

CMI through cropping. The bottom right photograph shows what was submitted to the AP by

Gene Puskar. (For a larger representation, see Hall Decl., Exh. 22). Hall Declaration, Exhibit 6

shows the actual submitted image with the CMI removed by cropping that was submitted by

Gene Puskar to the AP.

ii. The Information on the Photograph Constitutes CMI

The AP contends that Ms. McClatchey’s notice does not qualify as copyright

management information (“CMI”) because the “AP failed to reproduce a copyright notice that

was printed on hard-copy printouts that plaintiff distributed.” (Def’s Mem p. 22). However, Ms.

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McClatchey is not arguing that the AP “failed to reproduce,” but rather that it was reproduced in

the digital photograph taken by Mr. Puskar, and was removed by Mr. Puskar.

“Copyright management information” can fall under eight separate categories, including

“(1) The title and other information identifying the work, including the information set forth on a

notice of copyright. (2) The name of, and other identifying information about, the author of a

work. (3) The name of, and other identifying information about the copyright owner of the

work, including the information set forth on the notice of copyright.” 17 U.S.C. 1202(c). Ms.

McClatchey provided her name and the date in the lower right hand corner of the photograph,

and the title of the photograph in the upper left, in the area of blue sky. Her name is sufficient

information to fall under 17 U.S.C. 1202(c)(2) or 17 U.S.C. 1202(c)(3). The title is sufficient

information to fall under 17 U.S.C. 1202(c)(1).

The DMCA protects “copyright management performed by the technological measures of

automated systems.” IQ Group, Ltd. v. Weisner Pub., LLC, 409 F.Supp.2d 587, 597 (D.N.J.

2006). “The purpose of CMI is to facilitate licensing of copyright for use on the Internet, and to

discourage piracy.” Id. at 596, quoting S.Rep. No. 105-190 (1998). “Under the bill, CMI

includes such items as the title of the work, the author, the copyright owner, and in some

instances, the writer, performer, and director. CMI need not be in digital form, but CMI in

digital form is expressly included.” Id. (Emphasis added). The AP argues that Ms.

McClatchey’s two step process was not an automated copyright protection or management

system. Nonsense. Ms. McClatchey’s process for marking her pictures is unquestionably a

copyright protection system, and indeed was instituted by her to protect her copyrighted

photograph and to discourage piracy.

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iii. The AP Intended to Aid Infringement

Section 1202(b)(2) requires that, “No person shall…distribute…copyright management

information knowing that the copyright management information has been removed or altered

without authority of the copyright owner or the law[.]” Thus, the AP must possess actual

knowledge of the unauthorized change. See Gordon v. Nextel Communications and Mullen

Advert., 345 F.3d 922, 926 (6th Cir. 2003). The AP contends that actual knowledge is absent

because it believed it had permission to use the photograph. (Def’s Mem p. 22). However,

whether the AP had Ms. McClatchey’s consent to use the photograph, which it certainly did not,

is irrelevant – it must have merely had knowledge that the copyright management information

was removed.

In Gordon, the “personnel believed that the poster had been cleared for use in television

commercials.” Id. Unlike Gordon, there is evidence in the record here to contradict that the AP

believed it had Ms. McClatchey’s permission. Gene Puskar, who was acting for and on behalf of

the AP, testified in his deposition that no discussion was had regarding permission. (Pla’s SMF

¶ 20-21). He, along with Charles Sheehan, are the only persons from the AP who spoke with

Ms. McClatchey about the photograph. (Pla’s SMF ¶ 21). It is difficult to see how the AP

believed it had permission to use the photograph when it never even asked or brought it up.

Furthermore, it is undisputed that the photograph was cropped along the bottom, top, and sides,

effectively removing the copyright information. (Pla's SMF ¶ 24). Mr. Puskar, who did the

cropping, would have had knowledge that the copyright management information was removed.

In addition, Charles Sheehan testified that Ms. McClatchey showed him her End of Serenity

photograph notebook which contained her federal copyright certificate. (Hall Decl., Exh.'s 5 and

20).

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Furthermore, the AP states that it “had no reason to know that omission of the copyright

notice would facilitate or conceal any infringement.” This is just plain wrong. The AP removed

Ms. McClatchey's CMI and then transmitted it to roughly 2000 members and subscribers. By

doing so, the AP was (falsely) representing to its members and subscribers that they had the right

to use the photograph - which a number of them did.

There can be no conclusion other than that the AP's removal of the CMI from

McClatchey's photograph directly facilitated, concealed, and aided the infringement of

McClatchey's copyright in violation of section 1202(b) of the DMCA.

VI. STATUTORY DAMAGES ISSUE

If ever there was a case for increased statutory damages it is this one; the largest news

organization in the world takes, under false pretenses, the one-of-a-kind photograph of an

individual photographer, removes the CMI, and distributes it without permission to roughly 2000

news organizations around the globe. Nonetheless, the AP argues that Ms. McClatchey’s is not

entitled to increased statutory damages based on the willfulness of its actions. Willfulness

depends upon whether the defendant had actual or constructive knowledge that its conduct was

infringing. United States Media Corp. v. Edde Entertainment Corp., 1998 U.S. Dist. LEXIS

10985, *61 (S.D.N.Y. 1998). Therefore, Ms. McClatchey need not show that the AP actually

knew that its conduct was infringing. See id. Ms. McClatchey may justify a willfulness finding

on the basis that the AP acted with “reckless disregard for the copyright holder’s rights.” Id.

The AP is an experienced news organization. Nonetheless, Mr. Puskar testified that he

never discussed rights with Ms. McClatchey. (Pla's SMF ¶ 21). And when questioned under

oath, Puskar testified that he “didn’t know” whether the AP had any rights in her photograph.

(Pla’s SMF ¶ 27). No one at the AP followed up with Ms. McClatchey to find out whether this

was true. (Pla’s SMF ¶ 26). In short, the AP deliberately operated in a manner to avoid the

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necessity of paying for a license from Ms. McClatchey, and acted with “reckless disregard for

[her] rights” by then distributing the photograph to its members and subscribers for their own use

without her permission.

VII. CONCLUSION

At a minimum, material issues of fact prevent the grant of summary judgment at this

time. AP has failed to meet its burden with respect to its motion for summary judgment. All fair

use factors weigh in favor of Ms. McClatchey. Both the secondary liability and DMCA counts

turn on whether the AP believed it had Ms. McClatchey’s permission to use the photograph. The

AP has not produced any written or oral evidence that it had permission to use Ms. McClatchey's

photograph, because it did not. The only individual who actually spoke with Ms. McClatchey

regarding use of her photograph, Mr. Puskar, never even raised the issue of permission with her.

Therefore, Ms. McClatchey respectfully requests that this Court deny the AP’s Motion for

Summary Judgment on all counts.

Respectfully submitted,

s/Douglas M. Hall_______________________
Douglas M. Hall
Kara L. Szpondowski
Niro, Scavone, Haller & Niro
181 West Madison, Suite 4600
Chicago, Illinois 60602-4515
Phone: 312-236-0733
Fax: 312-236-3137
Attorneys for Valencia M. McClatchey

John E. Hall
Eckert Seamans Cherin & Mellott, LLC
USX Tower
600 Grant Street, 44th Floor
Pittsburgh, Pennsylvania 15219
Phone: (412) 566-6000
Fax: (412) 566-6099

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CERTIFICATE OF SERVICE

The undersigned hereby certifies that a true copy of the foregoing PLAINTIFF’S
RESPONSE TO DEFENDANT’S MOTION FOR SUMMARY JUDGMENT was served
upon the below listed parties on this 19th day of June, 2006:

By ECF: Gayle C. Sproul

Levine Sullivan Koch & Schultz, LLP
2112 Walnut St., 3rd Floor
Philadelphia, PA 19013
Phone: (215) 988-9778

By ECF: Robert Penchina

Levine Sullivan Koch & Schultz, LLP
230 Park Avenue
Suite 1160
New York, NY 10169
Phone: (212) 850-6100
Fax: (212) 850-6299

s/Douglas M. Hall_____________________________

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