agence france presse v. morel, 10 civ. 2730 (s.d.n.y.; may 29, 2012)

7/31/2019 Agence France Presse v. Morel, 10 Civ. 2730 (S.D.N.Y.; May 29, 2012)

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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT NEW YORK- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - XAGENCE FRANCE PRESSE, :

Plaintiff, :- against - : 10 Civ. 2730 (AJN)(MHD)

:DANIEL MOREL, :

Defendant and :Counterclaim-Plaintiff. :

:- against - :

:AGENCE FRANCE PRESSE, :

Counterclaim-Defendant, ::

- and - ::

GETTY IMAGES (US), INC.; THE :WASHINGTON POST COMPANY and AFP :and GETTY Licensees Does 1-et al., :

Third-Party Defendants. :- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - X

COUNTERCLAIM DEFENDANTS MEMORANDUM IN OPPOSITION TO

MORELS MOTION FOR SUMMARY JUDGMENT

Joshua J. KaufmanMeaghan H. KentElissa B. ReeseVENABLE LLP575 7th Street, N.W.Washington, DC 20004-1601Telephone: (202) 344-4000Fax: (202) 344-8300

Counsel for Plaintiff-Counterclaim

Defendant Agence France Presse

James RosenfeldDeborah AdlerSamuel M. BayardDAVIS WRIGHT TREMAINE LLP1633 Broadway 27th floorNew York, New York 10019Telephone: (212) 489-8230

Attorneys for Counterclaim Defendants Getty

Images (US), Inc. and the Washington Post

Company

May 29, 2012

Case 1:10-cv-02730-AJN-MHD Document 162 Filed 05/29/12 Page 1 of 53


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TABLE OF CONTENTS

PRELIMINARY STATEMENT ...................................................................................................... 1ARGUMENT .................................................................................................................................... 6

I. Defendants Are Not Liable for Direct Copyright Infringement ..................................... 6A. AFP Is Not Liable for Direct Infringement ......................................................... 7

1. AFP Submits that the Twitter Terms of Service Provide aCopyright License ................................................................................... 7

2. AFP Does Not Dispute Morels Current Standing ............................... 10B. Getty Images Is Not Liable for Direct Infringement ........................................ 11

1.

The Record Establishes Getty Images Narrow and Passive Rolein the Distribution of AFP Content ....................................................... 112. The DMCA 512(c) Safe Harbor Applies, Precluding Summary

Judgment for Morel as to His Copyright Infringement ClaimsAgainst Getty Images ............................................................................ 20a. Getty Images is a Service Provider and AFP is a User of

its Service .................................................................................. 20b. Getty Images Fits Squarely Within the Safe Harbor as

Recently Clarified by the Second Circuit in Viacom v.

YouTube .................................................................................... 223. Getty Images Did Not Act With Sufficient Volition to be Held

Liable for Direct Infringement .............................................................. 25C. The Plaintiffs Allegations That the Post Did More Than Display Certain

Photos Are Erroneous ....................................................................................... 25II. The Defendants Did Not Act Willfully ......................................................................... 27

A. AFP Did Not Act Willfully ............................................................................... 28B. Getty Images Acted Innocently ........................................................................ 30C. The Post Acted Innocently ................................................................................ 32

III. Mr. Morels Claim for Indirect Liability Must Fail ...................................................... 34A. Morels Claim of Contributory Copyright Infringement Must Fail.................. 34



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B. Morels Claim of Vicarious Copyright Infringement Must Fail ....................... 35IV. Morel Is Entitled to Only a Single Statutory Damages Award Per Work .................... 37V. Mr. Morels Copyright Management Information Claims Must Fail ........................... 39

A. Defendants Did Not Provide False CMI Pursuant to 1202(a) .......................... 391. AFP Did Not Provide False CMI With Any Mal-Intent ....................... 392. Getty Images Did Not Provide False CMI With The Requisite

Intent ..................................................................................................... 42B. There Was No Removal of CMI Pursuant to 1202(b) ................................... 43C. DMCA Statutory Damages Are Limited to Each Violation and Not

Each Download ................................................................................................. 44CONCLUSION ............................................................................................................................... 45



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TABLE OF AUTHORITIES

Page(s)

CASES

Adobe Systems Inc. v. Canus Prods., Inc.,173 F. Supp. 2d 1044 (C.D. Cal. 2001) ...................................................................................37

Arista Records LLC v. Lime Group LLC,784 F. Supp. 2d 313 (S.D.N.Y. 2011)......................................................................................39

Bouchat v. Champion Prods., Inc.,327 F. Supp. 2d 537 (D. Md. 2003),affd sub nom. Bouchat v. Bon-Ton Dept Stores, Inc., 506 F.3d 315 (4th Cir. 2007) ............39

Bourne v. Walt Disney Co.,68 F.3d 621 (2d Cir. 1995).....................................................................................................7, 9

Bryant v. Media Right Productions, Inc.,603 F.3d 135 (2d Cir. 2010), cert. denied, 131 S. Ct. 656 (2010) ...........................................29

Capitol Records, Inc. v. MP3tunes, LLC,821 F. Supp. 2d 627 (S.D.N.Y. 2011)......................................................................................22

Cartoon Network LP, LLLP v. CSC Holdings, Inc.,536 F.3d 121 (2d Cir. 2008)...............................................................................................25, 26

Castle Rock Entmt v. Carol Publg Grp., Inc.,955 F. Supp. 260 (S.D.N.Y. 1997), affd, 150 F.3d 132 (2d Cir. 1998) ..................................29

Ellison v. Robertson,357 F.3d 1072 (9th Cir. 2004) ..................................................................................................38

Encyclopedia Brown Prods. Ltd. v. Home Box Office, Inc.,25 F. Supp. 2d 395 (S.D.N.Y. 1998)........................................................................................32

Evans-Gadsden v. Bernstein Litowitz Berger & Grossman, LLP,491 F. Supp. 2d 386 (S.D.N.Y. 2007)......................................................................................37

Fallaci v. New Gazette Literary Corp.,

568 F. Supp. 1172 (S.D.N.Y. 1983).........................................................................................28

Faulkner v. Natl Geographic Socy,211 F. Supp. 2d 450 (S.D.N.Y. 2002), affd, 409 F.3d 26 (2d Cir. 2005) ...............................35

Fitzgerald Publg Co. v. Baylor Publg Co.,807 F.2d 1110 (2d Cir. 1986)...................................................................................................28



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Gershwin Publg Corp. v. Columbia Artists Mgmt., Inc.,443 F.2d 1159 (2d Cir. 1971)...................................................................................................35

Hamil American Inc. v. GFI,193 F.3d 92 (2d Cir. 1999).......................................................................................................28

Io Group, Inc. v. Veoh Networks, Inc.,586 F. Supp. 2d 1132 (N.D. Cal. 2008) ...................................................................................22

Island Software and Computer Service, Inc. v. Microsoft Corp.,413 F.3d 257 (2d Cir. 2005).....................................................................................................28

Lipton v. Nature Co.,71 F.3d 464 (2d Cir. 1995).......................................................................................................32

Livnat v. Lavi,No. 96 Civ 4967, 1998 WL 43221 (S.D.N.Y. Feb. 2, 1998) ...................................................35

Marinelli v. Chao,222 F. Supp. 2d 402 (S.D.N.Y. 2002)......................................................................................27

Marvullo v. Gruner & Jahr,105 F. Supp. 2d 225 (S.D.N.Y. 2000)......................................................................................36

Matthew Bender & Co. v. West Publg Co.,158 F.3d 693 (2d Cir. 1998).....................................................................................................35

McClatchey v. Associated Press,No. 3:05-cv-145, 2007 WL 1630261 (W.D. Pa. June 4, 2007) ...................................39, 45, 46

Metro-Goldwyn-Mayer Studios Inc. v. Grokster,Ltd.,545 U.S. 913 (2005) .................................................................................................................35

N.A.S. Import Corp. v. Chenson Enters., Inc.,968 F.2d 250 (2d Cir. 1992).....................................................................................................32

People v. Harris,No. 2011-N.Y.-080152, -- N.Y.S.2d --, 2012 WL 1381238(Crim. Ct. N.Y. County Apr. 20, 2012) .....................................................................................9

Perfect 10, Inc. v. CCBill LLC,488 F.3d 1102 (9th Cir. 2007) ..................................................................................................22

Rojo v. Deutsche Bank,No. 10-2999-cv, 2012 WL 1813670 (2d Cir. May 21, 2012) ..................................................36

Rosen v. Hosting Services, Inc.,771 F. Supp. 2d 1219 (C.D. Cal. 2010) ...................................................................................22



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Stockwire Research Group, Inc. v. Lebed,577 F. Supp. 2d 1262 (S.D. Fla. 2008) ....................................................................................46

Syracuse Broad. Corp. v. Newhouse,236 F.2d 522 (2d Cir.1956)......................................................................................................37

UMG Recordings, Inc. v. Veoh Networks Inc.,620 F. Supp. 2d 1081 (C.D. Cal. 2008) ...................................................................................22

Viacom Intl, Inc. v. YouTube, Inc. (Viacom I),718 F. Supp. 2d 514, affd, 676 F.3d 19 (2d Cir. 2012)...........................................................22

Viacom Intl v. YouTube Inc. (Viacom II),676 F.3d 19 (2d Cir. 2012)...............................................................................................passim

Wolk v. Kodak Imaging Network, Inc.,No. 10 Civ. 4135, -- F.Supp.2d --, 2012 WL 11270 (S.D.N.Y. Jan. 3, 2012) .........................25

STATUTES

17 U.S.C. 106(5) .........................................................................................................................11

17 U.S.C. 107 ..............................................................................................................................27

17 U.S.C. 504(c)(1) .....................................................................................................................38

17 U.S.C. 512 ......................................................................................................................passim

17 U.S.C. 1202 ......................................................................................................................12, 45

17 U.S.C. 1202(a) .............................................................................................................5, 40, 44

17 U.S.C. 1202(b) ...........................................................................................................40, 43, 44

17 U.S.C. 1203 ............................................................................................................................45

OTHER AUTHORITIES

Fed. R. Civ. P. 8 .............................................................................................................................36

Fed. R. Civ. P. 56 .......................................................................................................................2, 36

Fed. R. Civ. P. 56(c) ....................................................................................................................1, 2

Local Rule 56.1 ......................................................................................................................1, 2, 34

Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure (3d ed. 2004) ............37



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Melville B. Nimmer & David Nimmer,Nimmer on Copyright(2012) ...................................28, 35



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Counterclaim Defendants Agence France Presse (AFP), Getty Images (US), Inc. (Getty

Images) and The Washington Post Company (the Post) (collectively Defendants) submit this

memorandum of law in opposition to Counterclaim Plaintiff Daniel Morels (Morel) Motion for

Summary Judgment (the Motion). Defendants oppose Morels Motion on the grounds

articulated below, and further submit that summary judgment should in fact be granted in their

favor for the reasons set forth in their own summary judgment papers.1

PRELIMINARY STATEMENT

In his Motion and supporting papers, Morel seeks to paint Defendants as internet

pira[tes] who stole images of the 2010 Haiti earthquake he had posted on Twitter and distributed

them in willful disregard of his intellectual property rights. (Morel Brief, p. 5). To support this

characterization, Morel offers a voluminous, 177-page Rule 56.1 Statement (Morel 56.1) of

supposedly undisputed material facts. However, even a casual review of the Morel 56.1

Statement reveals it as a procedurally improper and substantively flawed document that is rife

with inaccuracies, unsupported factual statements and improper legal argument.2 Prior to the

2010 Amendments to Rule 56(c)(2), Defendants would have filed a motion to strike these

paragraphs. In accordance with the advisory committee notes, Defendants note their objections to

1 Cognizant of the voluminous nature of the parties cross-motions for summary judgment, Defendants make an effortin this Opposition to refer back to the memorandum of law in support of their Joint Motion for Summary Judgment(Joint Brief) (Dkt. #144) and Rule 56.1 Statement (Joint 56.1) (Dkt. #129) rather than repeating those materialsherein.

2 Morels 56.1 violates Local Rule 56.1(a) and (d)s basic requirements, including Local Rule 56.1(d)s requirementthat each statement must be followed by citation to evidence which would be admissible, set forth as required by

Fed. R. Civ. P. 56(c). As Defendants Joint 56.1 Counter-Statement (Joint 56.1 Counter-Statement) details,Morels 56.1 repeatedly fails to cite evidence that supports the claim, fails to cite admissible evidence, fails to cite thecorrect evidence, cites to evidence that has not been made of record, cites evidence that is immaterial to MorelsMotion and/or includes improper legal argument or conclusions. Defendants have identified the followingparagraphs that fail to comply with Local Rule 56.1: 4, 7, 9, 11-16, 18, 20, 21(vii), 21(xii), 25, 32, 33, 35, 45, 59, 61,62, 64-66, 77, 80, 82, 83, 85-92, 94-96, 109, 111, 113-116, 118, 121, 125-129, 132, 133, 135, 140-142, 144, 147-152,154-158, 163, 165-171, 173-175, 179, 182, 183, 185, 186, 188, 190, 201-204, 206, 207, 209, 212-215, 219-224, 229,230, 234-236, 238-240, 242-244, 247-250, 252, 260, 263-267, 271, 275-277, 282, 285, 286, 288, 294, 295, 298, 303-306, 308-316, 319, 320, 322, 323, 326, 327, 330, 331, 334, 336, 340-342, and 345.



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Mr. Morels proffered evidence in their response to Mr. Morels Rule 56.1 Statement, rather than

filing a separate motion. Pursuant to the Advisory Committee Notes to the 2010 Amendments to

Federal Rule 56(c)(2), Defendants objections to these portions of the Morel 56.1 place the

burden on Morel to establish the admissibility of his supposed supporting evidence. (See Fed. R.

Civ. P. 56 Advisory Committee Note to 2010 Amendments).

After weeding out Morels inaccurate and unsupported factual statements, the evidence

in this case tells a very different story. Indeed, there is no genuine dispute that:

Haiti suffered a catastrophic 7.0 earthquake on the afternoon of January 12, 2010.

In the immediate aftermath of the earthquake, Morel took photographs of the

devastation in Port-au-Prince and posted them to Twitter via TwitPic on the evening of

January 12.

Shortly after Morels posting of his photos to Twitter, non-party Lisandro Suero(Suero) copied several of those photos and reposted them on his own TwitPic page.

Later that evening, AFP downloaded the Photos at Issue3 from Sueros TwitPic page not Morels TwitPic page believing Suero to be a citizen journalist photographer

who posted the photos to alert the world to the tragedy unfolding in Haiti with the

intent that they be shared, and understanding the Twitter Terms of Service to have

granted it a license to re-broadcast the photos.

Starting late in the evening of January 12 and continuing into January 13, AFPdistributed the Photos at Issue with a credit to Suero, who it believed to be the

3 The term Photos at Issue is defined in paragraph of 130 of Defendants Joint 56.1 Statement and refers to theeight photographs over which Mr. Morel claims copyright ownership that Vincent Amalvy of AFP downloaded fromMr. Sueros TwitPic account on January 12, 2010.



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photographer on its image database and through its wire to its subscribers and

distribution partners, including to the back-end systems of its distributor Getty Images.

Upon receiving the Photos at Issue, Getty Images back-end systems automaticallyprocessed the Photos at Issue and pushed them out over Getty Images FTP feed to its

editorial feed subscribers. Getty Images also posted the Photos at Issue on its website

after byline information was formatted without altering the photographer credit so

that the Photos at Issue could publish to the website.

On January 13, 2010, upon learning that Morel, not Suero, was the photographer, AFPimmediately corrected the credit to Morel on its own system and sent new Morel-

credited versions of the Photos at Issue over its wire to its subscribers and distribution

partners, including to the back-end systems of Getty Images, which automatically

processed and distributed those image over its FTP feed and onto its website in the

same manner as the original set of Photos at Issue.

Upon learning, on January 13, that Morel claimed that Defendants did not havepermission to distribute the Images at Issue, AFP and Getty Images each took prompt,

good faith and reasonable steps to remove the photos from their systems and notified

their customers that the photos had to be removed. Getty Images, upon learning of

additional Suero-credited images that remained on its system on February 2, again

took prompt, good faith and reasonable steps to remove the photos from their systems

and subsequently notified their customers that the photos had to be removed.



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The Post is a Getty Images subscriber, obtained the Photos at Issue through GettyImages FTP feed, and used certain of those photos in good faith, believing it was

authorized to do so, and without knowledge of any copyright issue.4

When the Post was alerted in June 2010 to potential copyright issues regarding certainof the Photos at Issue, it promptly attempted to remove them, and it did so again in

April 2011 when it was advised that the photos remained on its website.

These undisputed facts not only preclude the Court from granting Morels motion for summary

judgment on any of his claims or Defendants affirmative defenses, they also entitle Defendants to

dismissal of Morels claims.

Morels Motion and supporting papers also fail to provide sufficient legal authority

supporting his request for summary judgment on his claims and Defendants defenses. His

motion papers repeatedly ignore or misunderstand the governing legal standards, and even where

he identifies the correct governing law, he misapplies it to the factual record in this case.

For these reasons, and the reasons set forth in Defendants Joint Brief, the Court should

deny Morels Motion (and grant the corresponding portions of Defendants own summary

judgment motion) on a number of issues at this stage:

First,as to Morels claims for direct copyright infringement, (a)AFP submits that it is

not liable because Morel granted a license to third parties to rebroadcast the Photos at issue, based

on the Twitter Terms of Service; (b) Getty Images submits that the safe harbor set forth in Digital

Millennium Copyright Act (DMCA) 512(c) shields it from copyright liability and that it

lacked the requisite volition to be held liable for direct infringement, based on its minor and

4 Morel erroneously sued The Washington Post Company, the parent company of WP Company LLC d/b/a/ TheWashington Post. WP Company LLC is the publisher of The Washington Post newspaper and thewww.washingtonpost.com website. The Washington Post Company has no role in the publishing decisions oroperations of the Post. (Joint 56.1 63-64).



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passive role in the distribution of the Photos at Issue; and (c) while the Postconcedes that it

publicly displayed certain of the photos, having licensed them from Getty Images and therefore

fully believing that its use was authorized, it submits that it did not download any of the other

photos as Plaintiff belatedly suggests.

Second, the Court should also reject Morels claims for secondary copyright

infringement. The record before the Court contains no evidence sufficient to create a genuine

issue of material fact suggesting that AFP or Getty Images (a) induced, caused or contributed to

infringing conduct by their customers with sufficient knowledge of that conduct to be held

contributorily liable; or (b) directly profited from others infringing activity in circumstances

where they had the ability to control such activity, so as to be held vicariously liable. Morel

asserts for thefirst time in his Motion that AFP is vicariously liable; as discussed below, having

failed to make this claim in his counterclaim, he cannot now move for judgment as to this

unasserted claim.

Third, to the extent any of the three Defendants were held liable for direct or indirect

copyright infringement, there are strict limitations on the damages Morel is entitled to recover.

The record demonstrates conclusively that any infringement was not willful, and indeed that

Getty Images and the Post acted innocently. Furthermore, Morel is entitled to only one statutory

damages awardper infringing work, not multiple awards as he seeks.

Finally, Morels claim forDMCA liability fails in the face of clear evidence in the record

establishing beyond any genuine issue that Defendants did not provide false copyright

management information or remove copyright management information with the knowledge or

intent required to be held liable under DMCA 1202(a) or (b). And even if the Court were to

find Defendants liable under the DMCA, Morels damages are limited to one award per violative



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act (i.e. the distribution of a photo, no matter how many times), not once per license as Morel

suggests. There is no legal basis for the windfall he seeks.

ARGUMENT

I. Defendants Are Not Liable for Direct Copyright InfringementFor purposes of this motion, the Defendants do not dispute that Morel owns a copyright in

the eight Photos at Issue and do not dispute that he has registered the copyright in the Photos at

Issue. Nor do the Defendants dispute for purposes of this motion that they copied, distributed and

displayed certain of the Photos at Issue. Specifically, as articulated in their Joint Brief, AFP and

Getty Images copied, distributed and displayed the eight Photos at Issue (Joint 56.1 129-130,

153) and the Post displayed a subset of those photos (Joint 56.1 234). However, Morel has not

established and cannot show that any of the Defendants are liable for direct copyright

infringement. Indeed, the record in this case shows that all of the Defendants have complete

defenses to Morels direct copyright infringement claims:

AFP asserts that it, Getty Images, and its customers have a complete defense of license by

virtue of the Twitter terms of service.

Getty Images asserts that it is protected by the safe harbor of the Digital Millennium

Copyright Act and that it did not act volitionally.

If Morel is able to overcome the license defense asserted by AFP, the Postdoes not

dispute direct-infringement liability for its display of four of the photographs, although it

expressly preserves all other defenses. However, Morels untimely assertion that the Post also

downloaded other Photos at Issue without displaying them (the Third Amended Counterclaim

contains no such allegation), is wrong as a factual matter because the downloading was done by a

separate company not sued here. It is also wrong as a legal matter because a news organizations



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downloading of images from a licensor, for the mere purpose of reviewing them to consider

whether or not to display them to the public, is self-evidently a protected fair use.

A. AFP Is Not Liable for Direct Infringement1. AFP Submits that the Twitter Terms of Service Provide a Copyright

License

As articulated in detail in Defendants Motion, AFP moves for summary judgment against

Morels claims of Copyright Infringement based on the complete defense of license. By

registering for a Twitter account and posting his photos via TwitPic, Morel became subject to the

Twitter Terms of Service that granted a license to third parties, including the Defendants and their

subscribers, to rebroadcast his photos. (Joint 56.1 84, 85). This license is a complete defense

to a claim of copyright infringement. Bourne v. Walt Disney Co., 68 F.3d 621, 63132 (2d Cir.

1995).

AFP contends that though Morel maintained ownership of his copyright, he granted a

license pursuant to the Twitter Terms of Service. AFP is well versed in copyright and agrees that

one does not inherently lose copyright by posting copyrighted material online. AFP takes no such

position and does not argue that Morel has surrendered his copyright. As Morel points out, that is

axiomatic to Defendants business. Though AFP agrees that posting online itself does not put a

work in the public domain or grant a license, when one posts to a third party service or website,

the terms of service for that site control and may well do those things. Every third party site has a

different set of terms of service and by using that proprietary service, the user agrees to be bound

by those terms, just as Morel did here. (See Joint 56.1 81-83). Some terms of service provide

creative commons licenses, some provide license with attribution, some provide for no license.

Morel cannot post online to a site that provides a license to third parties to use and re-broadcast

posted content and at the same time claim that the Defendants willfully infringed his copyright.



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Morel had the option of sending his photos to Corbis but instead chose to post them to

Twitter. Morel states that he thought he could do better licensing the photos himself rather than

sending them to his agent, Corbis, and admits this was nave. (Morel 56.1 24). This was nave

not only because Corbis has the means and the wherewithal to properly market and license the

photos, but also because Morel was in a location of devastation where he admits that he had very

limited internet access and quite simply was unavailable to negotiate to license his photos. (See

Joint 56.1 at 73-74). This is evidenced by the numerous news outlets who attempted to contact

Morel, and to whom he never responded. (Seeinter alia Morel 56.1 33, 41-44, 46-50).

Morel chose Twitter and he is bound by that choice. Even if Morel wanted to go it alone

without Corbis, he, and everyone else, has a choice when posting online; Morel could have posted

his photos to a variety of places, including a private website or any other site that does not have

the same terms of service as Twitter. Twitter was an excellent venue for spreading news and

images about the tragic earthquake, and is regularly used successfully to share information on a

wide scale. But it is not the venue for licensing proprietary materials, which is clear from its use,

is explained in its terms of service, and is well understood by users. (Seeinter alia Joint 56.1

85-94). Morel did not have to post to Twitter/TwitPic but he chose to and he accepted and is

bound by Twitters Terms of Service that grant a license to third parties. (See Joint 56.1 75-

91).

Morels Motion acknowledges that the Twitter Terms of Service apply to him. However,

he argues that the Twitter license is limited to Twitter and its partners and that Twitter users can

only share and display Morels photos on Twitter. (Morel Brief, p. 47). In doing so, he ignores

the portions of the license that do not support his position, Twitters guidelines on the matter, and

the widespread public understanding of Twitter and its terms. Since Morel has acknowledged the



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existence of a license and only disputes the scope of the license, it is his burden to prove that the

defendants copying was unauthorized. Bourne, 68 F.3d at 631. Morel cannot meet his burden

of establishing that the Twitter Terms of Service are so limited.

Pursuant to the Twitter Terms of Service, Morel granted a worldwide, non-exclusive,

royalty-free license, to use, copy, publish, display, and distribute posted materials to three

categories of users: Twitter, Twitters partners, and Twitters other users. (Joint 56.1 84,

85). Specifically, the Twitter Terms of Service state in part: This license is you authorizing us to

make your tweets available to the rest of the world and to let others do the same . (Joint 56.1

85) (emphasis added).

Looking now beyond the pleadings, as the Court may do at this juncture, the evidence

shows that Twitters understood intent is to grant a license to other users. Morel relies on the

Courts Order on Defendants Motion to Dismiss as holding that AFP did not qualify as permitted

licensees pursuant to Twitters Terms of Service. However, the Court explained it could not find

on the pleadingsthat Twitter conferred a license to other users. (Dkt. 52, p. 12, emphasis

added). As explained in detail in the Joint Brief, Twitters intent to license to other users

beyond just itself and its third party partners is evidenced by its Terms of Service (Joint 56.1

85, 86, 87) and its Guidelines for Third Party Use of Tweets in Broadcast or Other Off line

Media (Guidelines) (Joint 56.1 91; Hendon Decl. 7, Ex. 5). Further, as explained in detail

in AFPs Motion, this is the widespread understanding of Twitters intent, as evidenced by the

innumerable rebroadcasts of content posted on Twitter. (Joint 56.1 93, 94; see examples and

articles at Hendon Decl., Exs. 6, 7); see alsoPeople v. Harris, No. 2011-N.Y.-080152, --

N.Y.S.2d --, 2012 WL 1381238, at *1 (Crim. Ct. N.Y. County Apr. 20, 2012) (slip opinion is

attached to Joint Brief as Exhibit 2). Furthermore, Morel has admitted he was aware of Twitters



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purpose in his statement that he posted his photos on Twitter/TwitPic in the hopes that his

images would span the globe to inform the world of the disaster. (Joint 56.1 92). Had

Morel truly wanted to engage in the proprietary distribution of his photos, he could have and

should have sent his photos to his licensing agent Corbis, as he eventually did, or posted them to a

different site that did not have Twitters broad license language in its terms. (See Joint 56.1

166).

If Morels position were correct that the Twitter Terms of Service provide no license to

rebroadcast materials posted to Twitter/TwitPic, this would mean that the uncountable number of

daily re-tweets on Twitter and in the media where Twitter/TwitPic posts are copied, reprinted,

quoted, and rebroadcast by third parties, all could constitute copyright infringements. (Joint 56.1

93, 94; see examples and articles at Hendon Decl., Exs. 6, 7). Hundreds of thousands of

Twitters other users rebroadcast Twitter/TwitPic posts every day with no other permission than

Twitters Terms of Service who, under Morels interpretation, are engaging in copyright

infringement. (Joint 56.1 93; Hendon Decl., Ex. 7). If adopted, that position would contradict

Twitters currently accepted, understood and promoted use and purpose of sharing postings.

As a matter of law, AFP and its licensees are third-party beneficiaries of the Twitter

Terms of Service, as agreed to by Morel, are covered by the license therein, and Morel cannot

succeed on his claims for copyright infringement. AFP thus asserts that Morels motion for

summary judgment must fail and that Defendants are entitled to summary judgment as to

Counterclaims 1 and 11.

2. AFP Does Not Dispute Morels Current StandingAFP indicated to the Court that it intended to move for summary judgment that Mr. Morel

lacked standing as to his copyright claims because pursuant to the terms of his contract with his



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licensing agent, Corbis, he had upon submitting the photos at issue in this case, transferred the

exclusive right to enforce his copyrights to Corbis. After AFP raised this issue, Mr. Morel

apparently in recognition of the fact he did not have the rights to pursue this cause of action,

approached Corbis in regard to the assignment of his enforcement rights. As a result, on April 6,

2012, Corbis transferred the right to enforce the copyrights at issue in this case to Mr. Morel ( see

letter of April 9, 2012 attached to Joint Brief as Exhibit 1). AFP notified Morels counsel well

before the deadline for summary judgment that AFP did not intend to raise this issue in its

Summary Judgment pleadings given Corbis April 2012 letter and assignment, and thus has

withdrawn this defense. It is unclear why Morels counsel has briefed this issue in Morels

motion (Morel Brief, pp. 42-47) and wasted the parties and the Courts time on this issue given

that AFP already conceded that it had withdrawn this defense.

B. Getty Images Is Not Liable for Direct InfringementMorel cannot hold Getty Images liable for direct copyright infringement because (i) the

DMCA 512(c) safe harbor protects Getty Images from liability, and (ii) Morel cannot establish

that Getty Images engaged in sufficient volitional conduct in creating a copy of the infringing

works.5

1. The Record Establishes Getty Images Narrow and Passive Role in theDistribution of AFP Content

The record before the Court establishes that Getty Images had a narrow and passive role in

distributing AFPs content, including the Photos at Issue, and that once it became aware of

Morels claims, Getty Images acted diligently and in good faith to address them. Indeed, even

5 While Getty Images does not, for purposes of this motion, dispute either Morels assertion of rights in or GettyImages distribution of the Photos at Issue, Getty Images is not aware of any basis for, and does dispute, any claimthat the display of images on its website, uploaded directly by a content partner like AFP and published automaticallythrough Getty Images system, constitutes a volitional display for purposes of 17 U.S.C. 106(5). See Joint Briefat 28-29. To the extent Morel asserts that Getty Images created derivative works, Getty Images disputes that too;there is simply no allegation, let alone evidence, that would support such a claim.



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Morel concedes AFP and Getty Images played very different roles in distributing the images

(Morel Brief, p. 24). The facts related to this limited role are essential to both of Getty Images

defenses (DMCA 512(c) safe harbor and volition, discussed in this section) and other arguments

(lack of willfulness (see Part II infra), lack of liability under DMCA 1202 (see Part V infra)) on

these cross-motions, and therefore warrant discussion at the outset. These facts are as follows:

Getty Images is vigilant about protecting the rights of the copyright owners ofimages on its system. Getty Images requires content providers to represent and

warrant that they are not contributing infringing content (Joint 56.1 36, 37); it

does not promote or intentionally sell infringing content (Joint 56.1 35, 38, 39);

it posts and maintains a copyright policy on its website (Joint 56.1 41, 42); it

accommodates technical measures on its system which permit copyright owners to

identify and protect their works (Joint 56.1 45); it aggressively investigates

copyright claims (Joint 56.1 44); and it actively educates consumers on the need

for proper licenses (Joint 56.1 40).

Because AFP transmits a massive amount of images to Getty Images back-end systems which are constantly and automatically made available to Getty

Images customers, Getty Images must rely and does rely on AFP to provide

non-infringing content. Getty Images and AFP have a longstanding licensing

relationship under which AFP transmits approximately 1500-2000 images to Getty

Images back-end systems every day, and Getty Images is the exclusive distributor

of this content in North America (Joint 56.1 46-48). Because Getty Images

could not possibly investigate the ownership of such a vast and constant feed of

images, it necessarily and appropriately relies on AFPs direct involvement and



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contractual obligations (Joint 56.1 61). AFP alone chooses the images and

transmits them directly to Getty Images system, without any review, alteration or

involvement by Getty Images (Joint 56.1 49-50). Thus, the processing of

images through Getty Images back-end system, the display of the images on

Getty Images front-end system (its website) and the distribution of the images to

Getty Images customers are generally fully automated processes (Joint 56.1 51-

54, 59); the only applicable exceptions to this are discussed below. This

arrangement has led to virtually no copyright claims, and no unaddressed instances

of known infringement, arising from the more than 5.3 million images AFP has

provided to Getty Images over the course of their relationship (Joint 56.1 62).

Getty Images had a narrow and passive role in the distribution of the Photosat Issue. As with all AFP images, once AFP transmitted the images directly to

Getty Images, Getty Images back-end systems automatically processed the Photos

at Issue, assigning unique asset numbers to each image, and appending a

standardized photo credit phrase to the very end of the caption information

provided by AFP. (Joint 56.1 51, 52). AFP transmitted the eight images a total

of 44 times, and each transmission resulted in a uniquely numbered asset on the

Getty Images system (Joint 56.1 153, 154, 161, 162). The transmission of these

images resulted in the Photos at Issue being automatically pushed through Getty

Images FTP feed to its customers (Joint 56.1 155) with no changes to the

information supplied by AFP. In this case, there was a non-automated step in the

process, further discussed below, when the Photos at Issue then published to Getty

Images website: as happens every time AFP transmits images with a new



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photographer name, an employee of AFP or Getty Images had to manually alter

the format of the byline but not the caption in order for the images to publish;

however, this did notremove or alter the photographers name (whether Morel or

Suero) which remained in the caption provided by AFP every time each image was

displayed and distributed (Joint 56.1 156, 163, 164). Getty Images had no

reason to inquire about or investigate the copyright ownership of the Photos at

Issue at any point in this process (Joint 56.1 156, 159, 160).6

Getty Images was not aware and had no reason to be aware that the Photos atIssue were infringing. Given that it received the Photos at Issue over its feed

from AFP, a trusted partner, and the almost entirely automated manner in which its

back-end systems received and distributed the Photos at Issue, Getty Images had

no knowledge or reason to believe that those images were infringing any

copyright. (Joint 56.1 58, 61, 156, 159-60). During the night after the

earthquake a chaotic period during which Mr. Bernasconi stayed up throughout

the night, frantically trying to arrange for the transport of his photographers to

Haiti (Rosenfeld Supp. Decl., Ex. 2, Bernasconi Dep., pp. 17:5-20, 24:12-15,

26:15-27:19, 94:2-4), two people emailed Bernasconi, over 12 hours apart among

many different emails and the rapidly unfolding events, one with a link to Morels

Twitter feed and one with a link to Sueros. (Morel 56.1 63, 162). He does not

6 Neither AFPs caption correction nor its kill notice provided Getty Images with any reason to make thisinvestigation. When AFP issued the caption correction, the correction was automatically transmitted to all GettyImages feed customers that received the AFP content in the first place (Joint 56.1 176). AFP updated the photocredits from Suero to Morel and transmitted the re-credited assets to the Getty Images system. (Joint 56.1 182-187). The kill notice was also automatically transmitted to all Getty Images feed customers who received thecontent (Joint 56.1 202). Getty Images had already removed the images attributed to Daniel Morel from its ownsite by then, and when it determined that AFP had not been able to resolve the matter with Morel, it engaged inworldwide efforts to notify other customers of the alleged infringement. (Joint 56.1 227-30).



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remember opening either link and is certain that he never made any connection

between the two. (Rosenfeld Supp. Decl., Ex. 2, Bernasconi Dep., pp. 21:15-19,

31:5-7, 93:10-94:16). It is pure revisionist history to pluck these two emails out of

context and argue that Mr. Bernasconi should have clicked on the links, compared

the images and made the connection between Morel and Suero at that point.

Getty Images removed all infringing Morel content promptly after becomingaware of it. As soon as Getty Images was advised that Mr. Morel claimed the

Photos at Issue were being used without his authorization, it expeditiously

removed all images on its system credited to Daniel Morel some as quickly as

within 37 minutes and alerted AFP (Joint 56.1 188-90, 192). It was not aware

and had no reason to be aware that the same images remained on its system,

credited to David Morel or Lisandro Suero (Joint 56.1 191, 207-208). As soon

as Getty Images became aware of this, about two weeks later, it expeditiously

removed all of those images as well (Joint 56.1 212-217).

Getty Images referred Mr. Morels claim to AFP and, when AFP was not ableto resolve the claim with Morel, promptly contacted its licensees. Pursuant to

the Getty Images/AFP Agreement, when Mr. Morel contacted Getty Images in late

February 2010, Getty Images referred (and later formally tendered) the claim to

AFP, who it understood was dealing with this situation (Joint 56.1 218-225).

Upon receiving further inquiries throughout March without any resolution between

AFP and Morel, Getty Images planned and rapidly carried out a global effort to

alert all of its non-feed customers in the first week of April (Joint 56.1 226-

228). (Its feed customers had received the kill notice directly from AFP) (Joint



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56.1 202). Thereafter, Getty Images continued efforts to alert its customers

every time it became aware that, despite its efforts, licensees continued to display

Photos at Issue, and it engaged in a second round of customer communications

when a new set of assets (differently numbered versions of the same photographs)

came to light in June 2010 (Joint 56.1 229-230).7

In sum, Getty Images has a narrow and passive role in the distribution of AFP images, but acted

rapidly and properly to respond to Mr. Morels claims in this instance.

Mr. Morel seeks to controvert this record in his summary judgment papers, portraying

Getty Images role as far larger and more active than it actually was. For instance, he cherry-

picks excerpts from the deposition of Chris Eisenberg, Getty Images Director of Editorial

Content Management, regarding various functions that Getty Images performs as an image moves

from the AFP feed to Getty Images system to its licensees to suggest Getty Images exercised

sufficient volition: Getty Images reformats, organizes, indexes, displays, reproduces, and

licenses any infringing material provided by its partners (Morel Brief, p. 26); sets pricing and

licensing terms for images provided by AFP (id.); and guides viewers to images that may interest

them (id.). Yet Ms. Eisenbergs deposition transcript actually describes a system in which AFP

sends Getty Images a feed of images which automatically goes through a series of data

transformation channels, and then automatically pushes the images to Getty Images internal

system (TEAMS), where unless there is a data problem or missing data they publish

directly to the website. (Hoffman Decl., Ex. S, Eisenberg Dep., p. 36:7-16.) (Moreover, the

7 Morels assertions that Getty continued to distribute the images after the kill notice are misleading. Getty Imagesremoved all Photos at Issue credited to Daniel Morel promptly after it was notified of Morels claims on January 13,2010. It was nevernotified of, and therefore was not aware of (and inadvertently continued to offer for license) thePhotos at Issue misattributed to Suero and David Morel for about two more weeks. (Joint Brief, pp. 20-22; Joint 56.1 188-91). Yet, contrary to the characterizations of Mr. Morel, when it was notified about the Suero-credited Photosat Issue on February 2, Getty Images immediately removed them, as well as David Morel-credited photographsdiscovered in the process. (Joint Brief, pp. 20-22; Joint 56.1 212-16).



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excerpts incorporated into Morels 56.1 Statement only describe the transfer of content from the

feed to Getty Images website, rather than the automatic distribution of this content to Getty

Images feed customers). In other words, as described at pp. 12-14 supra, in the ordinary course

of business Getty Images has noactive involvementand its role is automated from the moment

the AFP images are transmitted to the point at which either feed customers receive them or when

website customers license them. (Joint 56.1 50-54). Although human intervention is

possible at various stages in the process (Morel Brief, p. 26), the record shows that this is the

exception rather than the rule and is extraordinarily rare in the context of content sent through

the feed. Each of Getty Images alleged interventions here provides no basis for liability and/or

flatly contradicts the record:

Morel incorrectly alleges that Getty Images substituted AFP for thephotographers name in the caption information accompanying the Photos at

Issue (Morel Brief, p. 7; Morel 56.1 127, 160, 187, 188, 200, 225, 302, 323,

325). Although at one point, Katie Calhoun, then-Sales Director, North American

Media for Getty Images, incorrectly believed that photographers names had been

replaced in this manner, this phase of the process is not within Ms. Calhouns

purview and the record amply demonstrates that, in fact, every single Photo at

Issue resided in Getty Images back-end system, appeared on its website and was

transmitted to and published by customers with the same photographers name in

the caption as provided by AFP. (Joint 56.1 163-64; Joint 56.1 Counter-

Statement 127, 131, 160, 187, 188, 200, 225, 297, 302, 322-23, 325; Cameron



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Supp. Decl. 2-16, Exs. B-D; Calhoun Supp. Decl. 3-7).8 While that

photographers name was transmitted to Getty Images incorrectly in some

instances (listing David Morel or Lisandro Suero) and therefore was displayed and

distributed incorrectly by Getty Images in those instances, the display and

distribution of those captions was not the result of any volitional act by Getty

Images. Instead, as discussed above, Getty Images merely transmitted content as

provided by AFP consistently with its agreement, industry standards and prior

course of conduct. It properly relied on AFP to provide it with the correct caption

information, and when it became aware that AFP-provided information was

inaccurate, it addressed the errors promptly and appropriately.

Out of the 826 purchases and downloads Morel alleges, he identifies twoisolated instances in which charitable organizations located Photos at Issue on

the Getty Images website, contacted customer service representatives at Getty

Images to ask about pricing and were permitted to go through with the

transactions (Morel Brief, p. 27, Morel 56.1 at 159, 232-33). In both instances

though the parties agree the images were clearly marked as Editorial use

(Morel Brief, p. 28) the Getty Images representatives, acting in the midst of a

global crisis (Joint 56.1 70), permitted the uses for charitable solicitations.

Although these licenses may constitute an immaterial violation of Getty Images

8 As explained in Defendants motion papers, Getty Images back-end systems would not have recognized thephotographers name when AFP transmitted the Photos at Issue to it, and therefore the systems would not haveautomatically validated those images and published them on Getty Images website. Instead, a Getty Images or AFPemployee would have had to manually alter the format of the byline without altering the name of the photographerwhich appeared in the AFP-created caption so that the images could be published to the website. However, thisroutine fix would not have given Getty Images any reason whatsoever to inquire about or investigate copyrightownership. (Joint 56.1 56-58, 156). Moreover, Getty Images feed customers would have received exactly thesame byline field that AFP had populated when it transmitted the Photos at Issue via the feed, as well as the photocredit. (Eisenberg Decl. 13).



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obligations to AFP, they do notestablish that Getty Images knew or had reason to

know yet that Morel contested AFPs or Getty Images rights to license the

specific assets in question. The Soles4Souls license transaction took place before

Corbis first notified Getty Images of Morels claim (compare Morel 56.1 159,

with Cameron Decl., Ex. C (G003825)), and while the Tzu Chi USA Journal

license took place after the initial Corbis notification about Daniel Morel images,

the photograph licensed to Tzu Chi USA Journal was credited to Lisandro Suero

(Joint Counter-Statement 232). Corbis had not yet notified Getty Images that

Suero-credited images belonging to Mr. Morel remained on its website. (Joint

56.1 213-17).

Morel claims Getty Images failed to correct and/or kill the Photos at Issue, orto exercise appropriate diligence in identifying the misattributed images on its

own system and requiring customers to remove them from their sites. (Morel

Brief, pp. 7, 24; Morel 56.1 130, 225, 256, 285-86, 304, 332, 343). As

described above, the record tells a completely different story. Getty Images is

vigilant about protecting users copyrights and responded promptly and

appropriately each time it learned of infringing material in this case, on its own site

or on third-party sites. Getty Images did not issue a caption correction because

AFP issued the corrections through the feed. (Joint 56.1 174). Those corrections

came through the feed as new assets and as such received unique asset

identification numbers. Getty Images feed customers received directly the

correction as sent by AFP and the new assets with correct information were posted

to Getty Images website. Because the images were pulled so quickly, Getty



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Images reasonably thought that there was no need for a further kill notice given the

feed kills and corrected assets. As noted supra pp. 14-15, because this is an

automated process, it was not until Corbis notified Getty Images of the Suero-

credited images that it knew additional assets needed to be removed. As to

customers who had downloaded or purchased the Photos at Issue from Getty

Images website, Getty Images both removed the images promptly from its own

site, and mounted global efforts to notify those customers that they should pull the

images once it discovered that AFP had not been able to resolve the matter with

Mr. Morel. (Joint 56.1 188-90, 212-17, 227-30).

Not a single one of these alleged holes in Getty Images defenses is consequential. Morel

has failed to establish that he is entitled to summary judgment on direct liability, nor even to

identify any genuine issues of material fact sufficient to preclude summary judgment for Getty

Images on its defenses, which are further discussed in the next two sections.

2. The DMCA 512(c) Safe Harbor Applies, Precluding SummaryJudgment for Morel as to His Copyright Infringement Claims Against

Getty Images

Based on the facts discussed above, and as set forth in Defendants Joint Brief, the DMCA

safe harbor protecting internet service providers from copyright liability by reason of the storage

at the direction of a user of material that resides on a system or network controlled or operated

by or for the service provider, 17 U.S.C. 512(c)(1), applies squarely to Getty Images in this

case. Morel fails to offer any valid reason why this safe harbor does not apply to Getty Images.

a. Getty Images is a Service Provider and AFP is a User of itsService

Morel makes a half-hearted attempt to argue in a two-sentence section of his Brief that

the DMCA safe harbor does not apply to Getty Image because Getty Images is not a service



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provider and AFP is not a user within the meaning of Section 512 (Morel Brief, p. 49). Morel

offers no legal or factual support for this argument other than a conclusory statement that AFP is a

financial and content partner of Getty Images and therefore cannot be a user under the

DMCA. But governing law and the facts of this case comprehensively refute Morels position.

First, as Getty Images explained in the Joint Brief, there can be no question that it fits

comfortably within Section 512(k)(1)(B)s definition of service provider: a provider of online

services or network access, which is so broad that courts have found it difficult to image

providers of online services that would not fall within it. (Joint Brief, p. 13-14 (citing Wolk v.

Kodak Imaging Network, Inc., No. 10 Civ. 4135, 2011 WL 940056, at *2 (S.D.N.Y. Mar. 17,

2011);In re Aimster Copyright Litigation, 252 F. Supp. 2d 634, 658 (N.D. Ill. 2002)).

Second, it is equally clear that AFP is a user of Getty Images system. Although user

is not defined in Section 512, the text of the statute suggests that it means any entity that stores or

transmits content on a service providers network or system, a category which is necessarily very

expansive given the wide variety of service providers that the statute contemplates. The case

law establishes that users include both content creators that store content on (or distribute

content through) a providers system or network andend-users who seek to obtain such content.

(See Joint Brief, p. 14).

Morels attempt to exclude AFP from the statutory definition of user by characterizing it

as a financial and content partner of Getty Images (by virtue of its License Agreement with

Getty Images) finds no support in either the statute or the case law. Indeed, it is difficult to point

to a case applying the Section 512(c) safe harbor which does not involve either a website

operators alleged liability arising out of its contractual relationship with a website user (as users

of such sites must generally enter into agreements when registering in order to post user-



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generated content) or a web hosting services alleged liability arising out of its contractual

relationship with the hosted site (for infringing activity on a website the ISP hosts). See, e.g.,

Capitol Records, Inc. v. MP3tunes, LLC, 821 F. Supp. 2d 627 (S.D.N.Y. 2011) (safe harbor

protected website operator from liability arising from user-generated content);Rosen v. Hosting

Services, Inc., 771 F. Supp. 2d 1219 (C.D. Cal. 2010) (safe harbor protected ISP from liability

arising out of website it hosted); Viacom Intl, Inc. v. YouTube, Inc. (Viacom I), 718 F. Supp. 2d

514 (website operator), affd, 676 F.3d 19 (2d Cir. 2012); UMG Recordings, Inc. v. Veoh

Networks Inc., 620 F. Supp. 2d 1081 (C.D. Cal. 2008) (website operator);Io Group, Inc. v. Veoh

Networks, Inc., 586 F. Supp. 2d 1132 (N.D. Cal. 2008) (website operator); Perfect 10, Inc. v.

CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) (ISP).

b. Getty Images Fits Squarely Within the Safe Harbor as RecentlyClarified by the Second Circuit in Viacom v. YouTube

Morel also suggests the Second Circuits recent decision in Viacom Intl v. YouTube Inc.

(Viacom II), 676 F.3d 19 (2d Cir. 2012) precludes its application to Getty Images distribution of

the Photos at Issue. However, Morels cursory discussion misinterprets and misapplies the

Second Circuits ruling in that case, which actually confirms Getty Images entitlement to the safe

harbor here.

Most significantly, the Viacom IICourt affirmed that the knowledge requirements in

Section 512(c) that a service provider have actual knowledge that the materialis infringing

or facts and circumstances from which infringing activity is apparent, 17 U.S.C. 512(c)(1)(A)

refer to knowledge ofspecific and identifiable infringements, rather than a general

knowledge that infringements exist. 676 F.3d at 30 (emphasis added) (quotingViacom I, 718 F.

Supp. 2d at 523). Here, Getty Images had no actual knowledge and no reason to know about the

allegedly infringing images until it received notice from Corbis on January 13 and February 2,



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that two separate categories of infringing content (the photos attributed to Daniel Morel and the

misattributed photos) had been posted, and in each case it promptly removed them all. (Joint

Brief, pp. 16-22).

Morels reliance on three of the Second Circuits holdings in Viacom IIis also inapposite.

First, the Second Circuit ruled that the willful blindness doctrine may be applied, in appropriate

circumstances, to demonstrate knowledge or awareness of specific instances of infringement

under the DMCA. 676 F.3d at 35. At the same time, however, the Court made clear that willful

blindness cannot be defined as an affirmative duty to monitor. Id. (citing Section 512(m) safe

harbor shall not be conditioned on a service provider monitoring its service or affirmatively

seeking facts indicating infringing activity) (emphasis added). In other words, willful blindness

must involve a deliberate effort to avoid guilty knowledge rather than a failure to monitor. Id.

(emphasis added). With no analysis or citation, Morels conclusory statement that the

undisputed facts and inferences establish willful blindness (Morel Brief, p. 50) fail to meet his

burden. Indeed, the undisputed facts show that Getty Images lacked the requisite knowledge or

awareness to trigger application of the willful blindness doctrine (see Joint Brief, pp. 16-21).

Second, Morel misconstrues the Second Circuits discussion regarding the statutory

requirement that an ISP not receive a financial benefit directly attributable to the infringing

activity, in a case in which the service provider has the right and ability to control such activity,

512(c)(1)(B), to suggest without analysis or citation that Getty Images fails to meet this

requirement, because it received a direct financial benefit from the license and sale of the Photos

at Issue. (Morel Brief, p. 50). However, as set forth in Getty Images moving brief, Congress and

the courts have made clear that in this context (i) direct financial benefit requires promotion or

mark-up of infringing content, rather than merely profiting from the inadvertent appearance of



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such content on an otherwise legitimate system (see Joint Brief, pp. 22-23); and (ii) right and

ability to control means something more than the ability to remove or block access to

infringing materials, a right and ability which the statute presumes of all providers, id. at 23-24;

Viacom II, 676 F.3d at 37-38. Morel has not raised any genuine issue of material fact suggesting

that either of these factors is satisfied here. Indeed, the undisputed facts show that Getty Images

did not receive a direct financial benefit from its distribution and licensing of the Photos at Issue,

and did not have sufficient right and ability to control the Photos at Issue to take it out of the safe

harbors protection. (See Joint Brief, pp. 22-24).

Third, Viacom IIalso reaffirmed that the safe harbors application to alleged infringement

by reason of the storage of materials at the direction of a user encompasses not only storage of

material but other functions that a website executes to facilitat[e] access to user-stored material.

676 F.3d at 38-39. While Morel seeks to analogize Getty Images conduct in connection with the

Photos at Issue to the single YouTube software function the Viacom IIcourt suggested might fall

outside of the safe harbor, the comparison is inapposite (Morel Brief, p. 50-51). Here, Getty

Images stored AFP content and engaged in certain functions to facilitate access to that content.

(See Joint Brief, p. 15 & n.5). Its operations (storing, displaying and offering to users the AFP

content) are for more analogous to the functions held protected in Viacom II(transcoding or

making copies of a video in a different code; playback or delivering copies to a users browser;

and the related videos function, or recommending videos similar to the one chosen by the user)

and not at all like the one function on which the Court remanded (syndication or licensing the

videos to other providers that could themselves offer them for sublicense on mobile platforms).

Thus, Viacom IIactually provides further support for application of the safe harbor to Getty

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3. Getty Images Did Not Act With Sufficient Volition to be Held Liablefor Direct Infringement

As set forth above, the record in this case establishes Getty Images limited and passive

role in the alleged infringement. Like Cablevision in Cartoon Network LP, LLLP v. CSC

Holdings, Inc., 536 F.3d 121, 131 (2d Cir. 2008) and Kodak in Wolk v. Kodak Imaging Network,

Inc., No. 10 Civ. 4135, -- F.Supp.2d --, 2012 WL 11270 (S.D.N.Y. Jan. 3, 2012), Getty Images

designed, houses and maintains a system which engages in the copying at the direction of users,

rather than engaging in actual infringing conduct with a nexus sufficiently close and causal to the

illegal copying. (Joint Brief, p. 27; Cartoon Network, 536 F.3d at 130). Morel argues that Getty

Images is a UK and North American-based imagery company in the business of procuring and

distributing images and related products and services via the internet and retains an active sales

and market force to distribute and promote its web content (Morel Brief, p. 26). Yet none of

these facts distinguishes Getty Images from companies like Cablevision, also a large corporation

which procures, distributes and promotes its content. Morel also catalogs the various functions

that Getty Images performs with respect to the images (claiming it reformats, organizes,

indexes; id.) and claims that human intervention is possible at each step; as discussed above,

he has not shown that such intervention actually happened at each step, and the little human

involvement that did occur is not sufficiently close and causal to the illegal copying, to warrant

the imposition of liability. Morel fails to establish that he is entitled to summary judgment on this

issue. Getty Images is, for the reasons set forth in its moving brief.

C. The Plaintiffs Allegations That the Post Did More Than Display CertainPhotos Are Erroneous

The Post concedes that it publicly displayed a subset of the Photos at Issue, based on a

license from its trusted licensor Getty Images and with no reason to believe that the use was



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unauthorized. (Joint 56.1 235, 237). If Morel is able to overcome the license defense asserted

by AFP, the Post will concede liability to Morel for direct infringement with regard to the public

display of these photographs, while expressly preserving all other defenses. The record is

undisputed that when the Post received notice in June 2010 that there was a potential copyright

issue with the display of three of those photographs on the washingtonpost.com Haiti earthquake

gallery, the Post acted immediately to disable public access to the photographs and believed that it

had done so successfully. (Joint 56.1 247-54).9

Morels untimely allegation that the Post on January 13, 2010 downloaded other Photos at

Issue (Morel Brief, p. 29; Morel 56.1 190) is a different story. Morels motion on this point

should be denied for three separate and independently sufficient reasons. First, Morels Third

Amended Counterclaim contains no such factual allegation. To entertain it now would unfairly

deprive the Post of the opportunity to defend itself against a new claim of copyright infringement.

See Marinelli v. Chao, 222 F. Supp. 2d 402, 406-07 (S.D.N.Y. 2002) ([A] party may not assert

or develop allegations not contained in the complaint.). Second, the Post, a customer of Getty

Images feed service, did not download the photographs, a step not required of feed customers.

(Joint 56.1 233). The photographs were downloaded instead by employees of the publications

Slate and The Root, which are owned and operated by a different company (The Slate Group

LLC), not sued here, which had access to the Getty Images downloads pursuant to its own

licensing agreement entirely separate from the Posts. (Joint 56.1 Counter-Statement 190;

McLaughlin Supp. Decl. 5; Joint 56.1 67-68). Third, the conduct that Morel alleges a news

organization downloading single copies of images for the purpose of considering whether or not

9 Although AFP sent the January 14, 2010 kill notice to all feed customers, including the Post, the undisputed recordevidence is that no one in the Posts Photo Department saw the kill notice regarding the Photos at Issue. (Joint 56.1 239).



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to later engage in what it believed would be the licensed public display of one or more of the

images is self-evidently a fair use protected by 17 U.S.C. 107. In this context, a single

download of a single image is de minimis copying used to determine whether or not a licensed

public display will be made. The business of licensing photographs could not function if such

copying were held to be copyright infringement.

Morel also erroneously asserts that the Post made available one of the Photos at Issue to

other news organizations. (Morel Brief, p. 29). This is incorrect. The hearsay evidence that

Morel cites for this proposition (Morel 56.1 260), shows the opposite that a Yahoo!

contributors January 2010 article merely linked to a photograph that appeared on the Posts own

website, and was not provided to any other website. (Joint 56.1 Counter-Statement 260).

II. The Defendants Did Not Act WillfullyDefendants oppose Morels motion for summary judgment on willfulness. Far from being

entitled to summary judgment on this issue; the record evidence establishes beyond dispute that

they did not act willfully.

In order for an infringer to be found willful, [t]he standard is simply whether the

defendant had knowledge that its conduct represented infringement or perhaps recklessly

disregarded that possibility. Hamil American Inc. v. GFI, 193 F.3d 92, 97 (2d Cir. 1999)

(internal quotation marks and citation omitted). Importantly, plaintiff must be able to demonstrate

that the defendant knew that this alleged copying represented copyright infringement. 4 Melville

B. Nimmer & David Nimmer,Nimmer on Copyright 14.04[B][3][a] (2012) (Nimmer)

(adopted by Fitzgerald Publg Co. v. Baylor Publg Co., 807 F.2d 1110, 1115 (2d Cir. 1986);

Fallaci v. New Gazette Literary Corp., 568 F. Supp. 1172, 1173 (S.D.N.Y. 1983)). And while

Morel cites several cases indicating that reckless disregard is sufficient for willful infringement,



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those cases do not support a finding of willful infringement here. (Morel Brief, p. 31, citing

Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 113 (2d Cir. 2001) (failure to investigate

infringement after specifically being put on notice of similarity);Island Software and Computer

Service, Inc. v. Microsoft Corp., 413 F.3d 257, 264 (2d Cir. 2005) (refusing to find reckless

disregard on a motion for summary judgment);Bryant v. Media Right Productions, Inc., 603 F.3d

135, 143 (2d Cir. 2010) (found no reckless disregard), cert. denied, 131 S. Ct. 656 (2010)).

Morels claims of willful infringement must fail because he cannot show that Defendants

intended to engage in copyright infringement. As discussed in Defendants Motion, AFP believed

at the time that it downloaded and distributed the Photos at Issue that it was permitted to do so

(even if it is later found to have been incorrect). (Joint 56.1 134). Morels suggestion of willful

infringement by Getty Images and the Post is even weaker, as each received the Photos at Issue

from a trusted partner and had no knowledge of the source of the photos. (Joint 56.1 48-50, 58,

60-61, 153-54, 156, 159-60; 233, 237). While Morel would like the Court to believe that

Defendants acted in some nefarious willful manner, the factual record does not bear him out.

Morel has not provided any evidence whatsoever to show that Defendants acted with knowledge

that their actions constituted copyright infringement, or reckless disregard for that possibility. His

unsupported feelings or beliefs cannot save his claim from being dismissed on summary

judgment.

A. AFP Did Not Act WillfullyWillful infringement typically involves continuing to act after actual notice from the

copyright holder to cease the infringing activities or when it is patently clear that the defendant

proceeded in violation of the copyright holders rights. See, e.g., Castle Rock Entmt v. Carol

Publg Grp., Inc., 955 F. Supp. 260 (S.D.N.Y. 1997), affd, 150 F.3d 132 (2d Cir. 1998)



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(defendant continued to publish book after receiving cease and desist letter). No such egregious

action occurred here.

Morel claims that when AFP issued its caption correction in the early morning hours of

January 13, 2010, AFP knew that Morel was the author of the Photos at Issue. (Morel Brief, p.

32). There is a difference between learning the name of a photographer and knowing that alleged

infringing conduct was taking place. While AFP was at that time put on notice that Morel, rather

than Suero, was the photographer, that made no difference to AFPs understanding of its right to

distribute the photos. The photos were still available from Twitter through Morels TwitPic page,

where they were posted in high resolution, and were thus subject to the license in the Twitter

Terms of Service. (Joint 56.1 82-84, 95, 171). Amalvy explained that he understood that

Morel was someone in Haiti who wanted to show the situation in Haiti and provide testimony

through his photos of the situation in Haiti. (Amalvy Dep., pp. 179-180, as attached as Exhibit C

to Rosenfeld Declaration, Dkt. 139-3). At that moment, for Amalvy, thats Lisandro [Suero] or

Daniel [Morel], for me is no difference. (Id. at 180:13-15). Nor were there any notices on

Morels TwitPic page that would have put AFP on notice that Morel did not intend to be bound

by the Twitter Terms of Service or was restricting usage in any other way. (Joint 56.1 96).

It was not until Corbis contacted AFP late on January 13, 2010, that AFP was first put on

notice that Morel was asserting he was not offering the Photos at Issue pursuant to the Twitter

Terms of Service license. (Joint 56.1 192-193). AFP investigated Corbis claim, attempted to

contact Morel, and when it received no response, took action to expeditiously remove the images

from Image Forum, its archive, and sent a Mandatory Kill notice to all of its subscribers, as

discussed above. (Joint 56.1 195-206, 210).



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Morel also implies that AFPs Kill Notice was only for photos credited to Daniel Morel

and that this somehow shows willfulness. However, AFPs employees have testified that they

had previously issued a Caption Correction changing all the Suero-credited photos to be Morel-

credited. (Joint 56.1 173-176). AFPs employees testified that they believed, in good faith,

that the Caption Correction in combination with the Kill Notice was sufficient to kill all of the

Photos at Issue. (Joint 56.1 204-205). Once again, Mr. Morel offers no admissible evidence to

contradict AFPs position.

Morel also attempts to argue that an inference of willfulness can be drawn because of

AFPs failure to follow its own written guidelines or the customary ethical principles which

govern the journalism community. Morel, however, again has not provided any record evidence

to support these claims. On the contrary, the record evidence supports that AFPs employees

acted in good faith. (Joint 56.1 172-175, 179-182, 192-206).

B. Getty Images Acted InnocentlyNone of the factors that Morel cites as evidence of Getty Images willfulness establish his

entitlement to judgment as a matter of law. For the reasons set forth in Defendants moving

papers, Getty Images conduct was innocent, not willful. (Joint Brief, pp. 41-44).

Morel claims that because Getty Images knew AFP had issued a caption correction

changing the name of the photographer of the Photos at Issue to Daniel Morel, Getty Images was

willfully blind in not checking to see [to] whom the image had been credited originally. (Morel

Brief, p. 33). Yet the caption correction plainly did not apprise Getty Images of the alleged

infringement; it did not identify Sueros name, provide thumbnail images of the Photos at Issue or



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identify the previously submitted images in a way that was evident to Getty Images. 10 (Amalvy

Decl., Ex. C) The corrected versions of each of the Photos at Issue, listing Morels name, did not

mention the name of the photographer (Suero) to whom they had originally been attributed.

(Amalvy Decl., Ex. D). Nor does the Getty Images system automatically remove or update assets

that have been corrected. (Joint 56.1 182-86). Morel argues that Getty Images should have

manually searched all photos of the Haiti earthquake in its system to find the misattributed

images. Yet, as Viacom IIexpressly held, a service provider is no obligated to monitor or

investigate its site and any alleged failure to do so does not rise to the level of willful blindness.

676 F.3d at 35.

11

Morel also argues that [n]otwithstanding the take down, Getty continued to display,

license and sell Haiti Earthquake Images. (Morel Brief, p. 34). This is misleading. As

Defendants have established in detail, Getty Images received notice of the images credited to

Daniel Morel on January 13, 2010, and notice of the misattributed images on February 2, 2010,

10 Morel also argues that Getty Images supposed lack of concern with the implementation of AFPs kill noticeprovides evidence of willfulness. (Morel Brief, p. 34). But there is no evidence of any lack of concern; in keepingwith the parties course of dealing, AFP notified Getty Images feed customers who received AFP content, so it wasnot necessary for Getty Images to do so; Getty Images both removed the images promptly from its own site andcarried out global efforts to notify customers that they should remove the images, once it discovered that AFP had notbeen able to resolve the matter with Mr. Morel. (Joint 56.1 227-30). Moreover, the AFP Kill Notice did notidentify specific Getty Images asset numbers, provide thumbnails of the images in question, or provide notice thatany of the Photos at Issue were credited to Lisandro Suero or David Morel, so it could not have given Getty Imagesnotice that misattributed images remained on its site. (Joint 56.1 208). The cases cited in Morels own brief (at p.34) only underscore the point that such a speculative showing of willfulness does not warrant summary judgment forplaintiff on the issue. CompareEncyclopedia Brown Prods. Ltd. v. Home Box Office, Inc., 25 F. Supp. 2d 395, 404(S.D.N.Y. 1998) (granting defendant cable operators motion for summary judgment as to willfulness, where operatorhad no control over HBOs content) and Lipton v. Nature Co., 71 F.3d 464, 472 (2d Cir. 1995) (factual issuesprecluded plaintiffs motion for summary judgment as to willfulness, where defendant argued that he innocentlycopied what he believed to be unprotectable compilation) with N.A.S. Import Corp. v. Chenson Enters., Inc., 968 F.2d

250, 253 (2d Cir. 1992) (finding willfulness after full trial, where defendant had store one block away from plaintiffsstore, created buckle identical to plaintiffs and continued selling infringing work after several demand letters).

11 Morel overreaches to make this point, arguing without any apparent basis that there were less than a handful ofphotographers distributing images of the earthquake and probably no more than 13 or 14 images on January 12-13, 2010. (Morel Brief, p. 33; Morel 56.1 304). In fact, even aside from Morels images there were more than 200images relating to the Haiti earthquake on Getty Images website at that time. (Cameron Supp. Decl. 28). As setforth above, Getty Images did not have an obligation to investigate its site, let alone search through hundreds o

agence france presse v. morel, 10 civ. 2730 (s.d.n.y.; may 29, 2012)

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