RageOn Inc. infringed photographs of Madonna and Keanu Reeves through t-shirts offered for sale on its website, a New York federal court ruled.
Photographer Deborah Feingold showed that the registration on her book “Bright Moments Photographs + Philosophies” covered the Madonna photo because it wasn’t previously published as defined by the Copyright Act, the U.S. District Court for the Southern District of New York said Wednesday. The court also rejected RageOn’s safe harbor defense, and its argument that Feingold couldn’t establish that her Reeves photo registration was for the photo in question.
The ruling illustrates the limits of the safe harbor provision of the Digital Millennium Copyright Act, which protects platforms from users’ actions. RageOn didn’t qualify because it didn’t quickly remove the infringing merchandise when notified of it and directly profited from the infringing activity.
Users design and sell merchandise on the platform, but the company processes payments, submits orders to manufacturers and collects a commission on sales, the court said.
The decision also highlights that when a collective work includes a previously published work, that aspect isn’t protected by a registration of the collective work. But in Feingold’s case, the court ruled that RageOn failed to prove the photo appeared in a magazine “sometime in 1982,” and that display in a fan blog didn’t qualify it as published.
The court declined to rule on damages or whether RageOn owed Feingold attorney fees or costs and requested suplemental briefing. Feingold elected statutory damages, which range from $750 to $30,000 per work infringed, and up to $150,000 if the infringement was willful.
Feingold sued RageOn in 2018 for selling three shirts with the photo of Madonna holding a red lollipop against her tongue and one with a Reeves photo that appeared in Rolling Stone magazine in 1989.
RageOn didn’t dispute the offering of the shirts with the photos for sale, but argued neither claimed registration covered the photos in question. Copyright claims require the work to be registered, the court said.
The Madonna photo appeared in a magazine called Star Hits and a fan blog called Madonna Tribe, meaning it could not be covered by the book registration. But the court called the Star Hits allegation conclusory, not backed by any evidence and denied by Feingold.
The court also said that “publication entails more than mere display” and must involve “commercial exploitation.” The blog posting a picture Feingold sent to accompany an interview she conducted for it didn’t qualify, the court said.
Feingold “presented overwhelming evidence” that her 2003 registration for the Reeves photo covered the one RageOn allegedly infringed, the court said. That included a certified deposit from the Copyright Office and evidence she’d licensed the photo in the past, the court said.
District Judge Kimba M. Wood wrote the opinion.
Garson Segal Steinmetz Fladgate LLP represented Feingold. Intellectulaw, The Law Offices of P.B. Tufariello PC represented RageOn.
The case is Feingold v. RageOn, Inc., 2020 BL 262766, S.D.N.Y., No. 18-2055, Opinion 7/15/20