Southern District of New York Judge Gerard E. Lynch has declined to grant summary judgment to two French fashion designers who claim a U.S. news magazine violated fair use of their copyright by showing photographs of their full collections on the Internet.
The judge found there were several issues of fact to be decided on the issue of whether the publication of the photos was protected by the fair use doctrine.
In Sarl Louis Feraud International v. Viewfinder, and S.A. Pierre Balmain v. Viewfinder, Judge Lynch said he was not satisfied by the French corporations' arguments on infringement and fair use.
The case began when the plaintiffs sought to enforce default judgments totaling 1 million francs obtained in a French court against Viewfinder, a Delaware company that posts images of fashion shows on its online fashion magazine, firstView.
The photos are taken by firstView's professional fashion photographers Donald Ashby and Marcio Madeira. The two French companies claimed unauthorized use of intellectual property and unfair competition in the posting of the photos on the Internet.
Lynch initially dismissed the action in 2005, saying enforcement of the French judgment would violate New York public policy because Viewfinder was protected by the First Amendment.
But the 2nd U.S. Circuit Court of Appeals reversed. It instructed Lynch to consider whether the fair use doctrine would protect the defendants under U.S. law and, if so, "whether French intellectual property law provides protection comparable to that afforded by the fair use doctrine."
Lynch said he wanted a hearing on the two issues, but after discovery, the plaintiffs moved for summary judgment. They argued that, as a matter of law, the fair use defense must fail.
This obligated the judge to apply the four factors for the fair use exception to infringement in 17 U.S.C. §107: studying (1) "the purpose and character of the use," including whether it is commercial in nature; (2) "the nature of the copyrighted work"; (3) "the amount and substantiality of the portion used in relation to the copyrighted work as a whole"; and (4) the effect of the use upon the potential market for or value of the copyrighted work." Under the first factor, one question is whether a work is "transformative," that is, whether it adds something new to the original. The judge appeared to think the defendant's argument was strong. "FirstView converts plaintiffs' designs from things to buy into indicia of larger industry patterns and social trends -- in other words, into news," Lynch said. "Thus, despite Viewfinder's leaving the 'character of the original garments unchanged,' a reasonable factfinder could find its secondary use highly transformative."
The judge noted that Viewfinder was clearly engaged in commercial use, particularly in that their business had a "wholesale" aspect, which would tend to weigh against a finding of fair use.
But two things mitigated against assigning a negative value to the commercial use: the fact that the photographs were taken by the defendants themselves and are protected by copyright; and the fact that courts tend to tolerate works that, even though made for profit, try to "serve broader public purposes."
"FirstView arguably qualifies as such a work in its capacity as an online magazine," he said. "It documents events that are of public interest and is regularly used as a reference tool by students and professionals alike."
The judge went on to find that these issues and others, including whether the defendants acted in bad faith, had to be balanced by a factfinder to determine if the use was transformative.
On the second factor, the nature of the copyrighted work, the plaintiffs complained the defendants were taking and publishing photos of their work before the work had its public debut. The defendants, for their part, argued the fashions shows, all closed to the public, could hardly be considered private showings.
The fact that "plaintiffs' work is creative undoubtedly pushes the second fair use factor in the plaintiffs' direction," Lynch said. "But once again, the factor is complex and turns on factual judgments."
On the third factor, the judge said the use by firstView was clearly extensive, but "the ultimate weight of this factor in the fair use balance would again depend on factual findings with respect to whether this use in fact amounted to the 'comprehensive,' or 'total' use alleged by plaintiffs, balanced against the transformative and distinct purposes of defendant's use."
The judge said the fourth factor, the effect of the use on markets, also required a determination by a factfinder.
The judge asked the parties to report back by Jan. 16 on whether the next step should be a trial on the merits or whether to submit legal arguments on the extent to which French law provides protections analogous to fair use.
James P. Duffy III of Berg & Duffy in Manhasset represented the French companies.
"Our concern is that the Second Circuit we believe is prepared to give much greater deference to the actions of the French court than Judge Lynch appears willing to give," Duffy said. "For example, the Second Circuit said the French court found that Viewfinder's actions infringed the designs and yet there seems to be some question in Judge Lynch's mind as to whether a reasonable trier of fact would conclude that. And the French court found that there were damages because of the infringement and Judge Lynch appears to be saying that a reasonable trier of fact might conclude differently."
Steven J. Hyman and Paul Levinson of McLaughlin & Stern represented Viewfinder.
"We are pleased with this decision," said Hyman. "The judge, we believe rightly, recognized that publication on the Internet falls within the parameters of fair use."