Though the Eleventh Circuit has never ruled on this issue, virtually every other Court of Appeals "has required some nexus between the infringing activity and the gross revenue figure proffered by a plaintiff." Ordonez-Dawes v. Turnkey Props, Inc., 2008 WL 828124 (S.D. Fla. Mar. 26, 2008)A low initial burden is placed on the copyright holder to make a showing of some causal connection between the infringement and the profits claimed. "[A] plaintiff may not seek gross revenues based entirely on a speculative connection to the plaintiff's claim." Thornton v. J Jargon Co., 580 F. Supp. 2d 1261, 1280 (M.D. Fla. 2008)
Thursday, October 14, 2010
Fair use to use motorcycle pictures in a magazine? Let the jury decide. But no profits from sales of the motorcycle or magazine for copyright holder
Kawasaki was introducing a new motorcycle, so it hired Roaring Toyz to customize two motorcycles. These custom motorcycles were to be displayed alongside the standard model during Daytona Bike Week. Latimer, a professional photographer, was engaged to take pictures following Roaring Toyz' progress. Latimer emailed some of his pictures to Roaring Toyz (each picture included a notice that it was protected by copyright). Roaring Toyz emailed the pictures to Kawasaki. Kawasaki distributed a press kit which included five of these pictures. Cycle World magazine (which is published by defendant Hachette Filipacchi Media US, Inc.) published an article about the new motorcycle and included one of the pictures. Latimer sued for copyright infringement.
Hachette sought summary judgment that its use was a fair use. The Court weighed the law:
1) Purpose and character of the use
The use of the pictures in a magazine was a commercial use, but Latimer's photographs weren't selected to generate a profit or increase the sales of the magazine. Commercial nature doesn't weigh heavily against finding fair use. But magazine's use of the photographs without significant alteration was not significantly transformative. Thus, balance of this sub-factor weighted slightly against finding fair use.
2) Nature of the copyrighted work
"Original, creative works merit more protection than more factual or derivative works." No dispute that Latimer's photographs are creative, and thus entitled to greater protection.
3) Amount and substantiality of the portion used
The magazine only did minimal cropping of the photographs. But the magazine couldn't really crop them, as doing so would have cut out portions of the motorcycle (and what would have been the point of that?). Thus, this factor was neutral.
4) Effect of the use on the potential market
This factor is where the Court couldn't decide the issue at summary judgment. The magazine argued that Latimer was able to sell other photos to another magazine. But that had nothing to do with the market for the pictures at issue in the lawsuit. "[T]he question is not whether other similar photos could be sold in the future. Rather, it is whether Cycle World's publication impaired the market for the specific photos it used." Record didn't answer that question, so the jury will.
The Court also addressed defendants' request for summary judgment that there was no nexus between their profits and the copyrighted work. A copyright plaintiff is entitled to a defendant's profits attributable to the infringement. Per the statute (17 USC 504(b)), the plaintiff must put forth proof of the defendant's gross revenue, and it is the defendant's burden to prove his or her deductible expenses and those elements of profits attributable to factors other than the infringement.
Latimer's claim here was too speculative. From Kawasaki, Latimer sought profits from the sales of the motorcycles. And from the magazine publisher, he wanted profits from sales of the magazine. The Court was not convined by Latimer's evidence and argument, and so it granted summary judgment on this issue to defendants.
Latimer v. Roaring Toyz, Inc., Slip. Op., Case No. 06-1921 (M.D. Fla. Sept. 21, 2010) (J. Moody)