SDNY Court Splits with Ninth Circuit on Copyright Act Interpretation

An opinion issued last Friday by Judge Jed S. Rakoff upheld the complaint filed by nature photographer Paul Nicklen, who captured footage of a starving polar bear and posted the video to his Instagram and Facebook accounts. The case arose from the various news outlets’ use of the video in online articles without first obtaining a license.

According to the filing, the plaintiff is a “Canadian nature photographer, filmmaker, and founder of the nonprofit conservationist organization SeaLegacy,” and the author and registered copyright owner of a video of an “emaciated polar bearing wandering the Canadian arctic.” He posted the video on his social media pages and encouraged viewers to consider what could be done to reduce humanity’s carbon footprint in light of such “‘soul-crushing’” depictions.

The video went “viral” and was picked up and reposted by online news outlets including the defendants, subject to last week’s opinion, the Sinclair Broadcast Group Inc. and its affiliates. Nicklen reportedly sent them a takedown notice in December 2020, but they failed to comply, the opinion said.

The photographer then sued the Sinclair defendants for copyright infringement. The defendants moved to dismiss his complaint, “arguing that embedding a video does not ‘display’ the video within the meaning of the Copyright Act and that the video’s inclusion in an article about the video’s popularity was fair use.”

The court’s analysis first scrutinized the law’s text, legislative history, and questioned whether a Ninth Circuit interpretation of “display” mandated dismissal of the complaint. Judge Rakoff ultimately rejected the appellate court’s “server rule,” prescribing that an image is displayed if it is fixed in the memory of the infringer’s computer, but not if it remains on a third-party server. The precedent is contrary to the Copyright Act’s language and history and fails to protect ownership rights Congress intended to, the opinion said.

In addition, the rule improperly distinguishes between “showing a copy possessed by the infringer and showing a copy possessed by someone else.” Technological complexity behind online image display, the court reasoned, renders the distinction inapposite in view of the wide protection the law affords.

Judge Rakoff also held that the fair use doctrine did not exculpate the defendants. The court opined that though the work itself was the subject of the Sinclair defendants’ news coverage, the affirmative defense could not be resolved at the pleading stage as the multi-part inquiry is fact intensive.

According to the docket, Nicklen settled with numerous defendants in April including Buzzfeed Inc., Heart Communications Inc. and its affiliates, and Quartz Media Inc. The plaintiff is represented by Duncan Firm P.A., Hoben Law, and Kaplan Fox & Kilsheimer LLP, and the Sinclair defendants by Ballard Spahr LLP.