Martin v. Walt Disney Internet Group

Court holds that it has the authority to decide, on a motion to dismiss, whether plaintiff has stated a claim for the remedies of statutory damages and attorney's fees and grants defendant media companies’ motion to dismiss plaintiff's request for statutory damages and attorney’s fees because the alleged infringement occurred prior to plaintiff’s registration of her copyright.

Plaintiff Sherry Martin is a professional freelance photographer who owns the copyright to certain photographs she took of the Solana Beach Triathalon in San Diego County, California. One of the photographs plaintiff took depicted Dr. David Martin (no relation to plaintiff), who was later killed by sharks while training for another triathlon.

Defendant Opix Photography and its principal retained plaintiff to photograph the event. In May 2008, defendant Competitor Group contacted Opix to obtain a license to publish plaintiff’s photograph of Dr. Martin in Competitor Magazine. Plaintiff advised Competitor and Opix that she did not consent to the proposed licensing terms. Notwithstanding, Competitor published plaintiff’s photograph in June 2008, attributing credit to “Opix/Sherry Martina,” and providing no compensation to plaintiff.

Similarly, in August 2008, Defendants ESPN and Walt Disney Internet Group (WDIG) sought to use plaintiff’s photograph on their websites. Opix provided ESPN’s agent with a low resolution version of plaintiff’s photograph and advised ESPN to contact plaintiff. Although neither ESPN nor WDIG obtained permission, each included plaintiff’s photograph on their respective websites in October 2008 without compensating or crediting plaintiff.

In December 2008, after discovering the unauthorized use of her photograph, plaintiff registered her copyright. In July 2009, plaintiff sued defendants for copyright infringement, violation of the Visual Artists Rights Act (“VARA”), unjust enrichment, violation of the Lanham Act, and tortious interference with prospective economic relations. With the exception of plaintiff’s copyright infringement claims, defendants moved to dismiss each of plaintiff’s causes of action. Defendants only moved to dismiss the remedies plaintiff sought on her copyright infringement claims, to wit, statutory damages and attorney’s fees under Sections 504 and 505 of the Copyright Act.

The district court held that plaintiff’s request for attorney’s fees and statutory damages on the copyright infringement claims were properly dismissed, although plaintiff’s infringement claims survived and actual damages were still recoverable. Section 412 of the Copyright Act bars recovery of statutory damages or attorney’s fees where “(1) any infringement of the copyright in an unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after the first publication of the work and before the effective date of the registration, unless such registration is made within three months after the first publication of the work.” Here, Competitor first allegedly infringed in June 2008, six months prior to plaintiff’s registration, which rendered statutory damages and attorney’s fees non-recoverable under Section 412.

The district court also dismissed plaintiff’s remaining causes of action. Although plaintiff’s photograph is considered a “work of visual art” under the VARA, under Section 106A(c)(3) of VARA, defendants did not violate plaintiff’s attribution or integrity rights by reproducing the art in a magazine. Plaintiff’s unjust enrichment claim was preempted by the Copyright Act because the elements were identical to a copyright claim. The court dismissed plaintiff’s Lanham Act claim, based on Competitor’s misspelling of her name, because the error did not misrepresent the origin of the photograph and because plaintiff may not redress what is essentially a copyright claim under the trademark statutes. Finally, defendant’s tortious interference claim was dismissed because plaintiff failed to allege that she any lost any specific economic opportunity.