Michael Grecco Productions, Inc. v. Time USA, LLC
| Decision Date | 27 July 2021 |
| Docket Number | 20 Civ. 4875 (NRB) |
| Parties | MICHAEL GRECCO PRODUCTIONS, INC., Plaintiff, v. TIME USA, LLC and PIXELS.COM, LLC, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Plaintiff Michael Grecco Productions, Inc. (“MGP” or “plaintiff”) brings this action against defendants Time USA, LLC (“Time”) and Pixels.com LLC (“Pixels”) (together “defendants”) alleging copyright infringement and falsification of copyright management information (“CMI”). Plaintiff alleges that Time, on its own and through third parties, including Pixels, infringed its copyrights by exceeding the scope of certain license agreements when it reproduced Time covers that featured MGP's photographs on print-on-demand products. Plaintiff also alleges that defendants falsified CMI by publishing the Time covers online with CMI and watermarks that do not attribute the photographs to plaintiff. Defendants jointly move to dismiss plaintiff's amended complaint, ECF No. 20 (“Compl.”), or in the alternative, for summary judgment.
Michael Grecco is a commercial photographer, whose works are owned by plaintiff MGP. Defendant Time is the current owner of the trademark for the American weekly news magazine and website, “Time.”[2] Defendant Pixels owns and operates a number of “print-on-demand” websites, including www.fineartamerica.com. Print-on-demand websites allow consumers to select images for printing on a variety of products, including on canvas, metal, and wood, which are made-to-order upon purchase.
In 2000 and 2005, MGP signed two substantially similar agreements with Time Magazine (the “Agreements”), [3] which granted to Time Magazine licenses to use three of Grecco's photographs (the “Photographs”) on its covers. Each of the Photographs is registered with the Register of Copyrights, and MGP owns each of the Photographs. The Agreements provided that Time Magazine had the right to do “customary editorial work to incorporate the photograph into the cover, including cropping the image and overlaying text and the TIME logo.” ECF No. 20-4 (2000 and 2005 Agreements). The Agreements also contained this description of the licenses:
In the amended complaint, plaintiff included copies of the covers (the “Covers”) that integrated the Photographs. As is clear from the images of the Covers, the Time Magazine Covers included the Photographs with an overlay of the TIME logo and identifiable red frame (both of which are trademarked with the United States Patent and Trademark Office).[4] The Covers also feature text, including the date and previews of articles included in the magazine issue.
Recently, Time began working with Pixels to facilitate the sale of print-on-demand products from Time's “Cover Store, ” which features decades of Time covers, including the Covers at issue in this case. On Pixel's website, a shopper can view the Covers via a “full resolution preview, ” which displays the Covers with a watermark that superimposes the name of the website, “fineartamerica.com” (the name of one of Pixel's websites). Alongside the Covers, the artist is listed as “Time.”
MGP initiated this case shortly after Time announced its partnership with Pixels, alleging a claim for copyright infringement in violation of 17 U.S.C. § 501 and a claim for falsification of CMI pursuant to the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1202(a). On October 27, 2020, defendants moved to dismiss the amended complaint, or in the alternative, for summary judgment. Plaintiff opposed the motion on November 24, 2020, and defendants submitted a reply in further support of their motion on December 1, 2020.
To withstand a Rule 12(b)(6) motion, the non-movant's pleading “must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.'” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility when the [pleaded] fact[s] . . . allow[] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. While the Court accepts the truth of the pleaded facts, it is “not bound to accept as true a legal conclusion couched as a factual allegation.” Id. “Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Brown v. Daikin Am., Inc., 756 F.3d 219, 225 (2d Cir. 2014) (quoting Iqbal, 556 U.S. at 678).
Count I of the amended complaint alleges that defendants committed copyright infringement when they reproduced the Covers on print-on-demand products. According to plaintiff, this type of reproduction exceeds the scope of the licenses set forth in the Agreements. “To establish an infringement of a copyright, a plaintiff must show both ownership of a copyright and that defendant copied the protected material without authorization.” John Wiley & Sons, Inc. v. DRK Photo, 998 F.Supp.2d 262, 287 (S.D.N.Y. 2014) (citing Rogers v. Koons, 960 F.2d 301, 306 (2d Cir. 1992)). Copyright infringement actions such as this one, “involving only the scope of the alleged infringer's license[, ] present the court with a question that essentially is one of contract: whether the parties' license agreement encompasses the [relevant] activities.” Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir. 1995). “[I]n cases where only the scope of the licenses is at issue, the copyright owner bears the burden of proving that the defendant's copying was unauthorized.” Yamashita v. Scholastic Inc., 936 F.3d 98, 104-05 (2d Cir. 2019) (citing Bourne, 68 F.3d at 631).
Pursuant to New York law, whether a contractual provision is ambiguous, and the interpretation of an unambiguous contract, are questions of law for the Court to resolve. HarperCollins Publishers LLC v. Open Rd. Integrated Media, LLP, 7 F.Supp.3d 363, 370 (S.D.N.Y. 2014) (citations omitted). A contract is ambiguous only if “the provisions in controversy are reasonably or fairly susceptible of different interpretations or may have two or more different meanings.” Goldman Sachs Grp., Inc. v. Almah LLC, 924 N.Y.S.2d 87, 90 (1st Dep't 2011) (internal citation and quotation marks omitted). In determining the meaning of a contract, this Court will “look to all corners of the document rather than view sentences or clauses in isolation.” Int'l Klafter Co. v. Cont'l Cas. Co., Inc., 869 F.2d 96, 99 (2d Cir. 1989) (internal quotation marks omitted). “[W]hen parties set down their agreement in a clear, complete document, their writing should as a rule be enforced according to its terms.” W.W.W. Assocs., Inc. v. Giancontieri, 77 N.Y.2d 157, 162 (N.Y. 1990)).
This dispute turns on the meaning of the provision in the Agreements:
TIME Magazine retains the right to reproduce the cover of the Magazine as it appears, in any media, for any purpose, in perpetuity without additional payment.
(emphasis added). Proffering that the provision is ambiguous, plaintiff asserts that his understanding was that “all media” - a term that does not actually appear in the provision[6] - referred exclusively to “means of mass communication.”[7] Therefore, argues plaintiff, defendants' reproduction rights with respect to the Covers are limited to modes of communication, and print-on-demand products fall outside of this category.
As an initial matter, the actual term “any media” admits of no such ambiguity. Therefore, plaintiff's understanding of the term has no effect on our interpretation. Instead, as “a trial court's primary objective is to give effect to the intent of the parties as revealed by the language they chose to use, ” Seiden Assocs., Inc. v. ANC Holdings, Inc., 959 F.2d 425, 428 (2d Cir. 1992), we look to the dictionary definition of “media.”
“Media” is the plural version of “medium, ” and so we begin there. There are, of course, multiple definitions of “medium” - some of which even reflect plaintiff's narrow communications-related definition. However, the comprehensive scope of the licensing provision, which imparts Time's right to use the Covers “in any media, for any purpose, ” without time restriction, directs us to refer to a similarly comprehensive definition of “medium.” Thus, according to the Merriam-Webster Dictionary, “medium” is “a means of effecting or conveying something, ” including the “material or technical means of artistic expression (such as paint and canvas, sculptural stone, or literary or musical form).” Likewise, the Oxford English Dictionary defines “medium” as These definitions of “medium” unequivocally encompass the print-on-demand products, including prints on canvas, wood, and metal, that are the subject of this case. As “the licensee may properly pursue any uses which may reasonably be said to fall within the medium as described in the license, ” Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150, 155 (2d Cir. 1968), we conclude that defendants are not violating the provision.
Beyond the definition of “media” itself, the remainder of the provision provides additional support for defendants' interpretation, with which the Court agrees. First, the Agreements provide that Time can reproduce the Covers for “any purpose” - not, as plaint...
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