By Matthew Hersh, J.D.
The lawsuit against the Sinclair Broadcasting Group survived motions for summary judgment on a wide range of grounds.
A lawsuit alleging that a nationwide syndicate of television stations unlawfully posted images of a specialty breed of cats to its network of websites can be tried before a jury, the federal district court in Baltimore has held. The court’s decision, in a case pitting the Sinclair Broadcasting Group against the breeders of a cat with a strikingly wolf-like appearance, was notable for the wide range of copyright issues it addressed—nearly a dozen in all—in its lengthy opinion. The decision was also noteworthy because it joined a growing number of rulings from courts around the country that have rejected the so-called “making available” argument in copyright distribution cases (Brittney Gobble Photography, LLC v. Sinclair Broadcast Group, Inc., November 17, 2021, Gallagher, S.).
The lawsuit involves images of a relatively new breed of cat known as the Lykoi. Because it has a distinctive, werewolf-like appearance, the Lykoi is also commonly referred to as a “wolf cat.” Johnny Gobble, a veterinarian, and his wife Brittney Gobble, a photographer, were among the first people to successfully breed a Lykoi cat. As the Gobbles began selling their Lykoi cats, Ms. Gobble would photograph them in order to advertise and promote the breed. The two breeders licensed images of the cats to several news agencies, among them the Sinclair Broadcasting Group—a television network with affiliated channels around the country—and a news syndication service known as World Entertainment News Network.
Eventually, the two breeders became dissatisfied with the way their images were being presented by the two licensees (among other things, they contended that the images were presented without proper attribution and at a resolution that was too high). They brought a lawsuit against the syndicator in a Tennessee court—eventually winning a default judgment—and a separate lawsuit against a wide range of Sinclair entities in the Maryland court. The Sinclair entities moved for summary judgment in the Maryland court on a wide range of grounds, leading to this opinion.
Volition. The court dismissed 22 individual Sinclair stations from the lawsuit because they had not engaged in volitional conduct. Precedents teach that a defendant must engage in conduct that is “volitional”—that is, the defendant must have caused “in some meaningful way” the infringement—in order to be held liable. In the website context, this traditionally means that a website owner may not be liable for simply maintaining a website to which others post; rather, the owner must have taken deliberate steps to select and post the infringing material. That ruled out the case against the individual Sinclair stations. Although those stations maintained their own websites, the court found, they allowed Sinclair to directly post these websites instead of selecting the material on their own. The stations therefore lacked volition and could not be infringers.
Licenses. The court found that a jury would have to resolve whether any of the infringing activity was licensed. Sinclair clearly had a license of some sort, but the breeders claimed that they improperly used high-resolution images and failed to properly credit the photographer. But were these indeed requirements of the license? And if so, were they conditions or covenants? The correspondence was by email and informal at best. A jury would have to sort it out. Similar questions revolved around the agreement with the syndicator. It too had a license, but did it have the right to distribute the images to subscribers such as Sinclair? The breeders insisted that the images must not be “distributed”—but could this limitation apply when distribution was the syndicators’ entire business model? A jury would have to decide. So too with the question of consideration. The syndicator did not pay for the license, but it did promise something, namely that it would not use the images in an article that was “derogatory” toward the breed. Did that promise amount to sufficient consideration? A jury, again, would have to decide.
Willful infringement. The court also left to the jury the question of whether Sinclair acted willfully, thus entitling the copyright owners to higher statutory damages in case of a win. Sinclair must have acted willfully, the copyright owners argued, because it kept using the images even after the syndicator sent them a “kill notice”—at the copyright owners’ behest—instructing them to take the photos down. But there was no evidence in the record that Sinclair received this notice—so this could not go to the jury. Other arguments of willfulness, by contrast, raised a sufficient factual question. Sinclair was served with a subpoena in related litigation against another party over the same issues—but did that mean Sinclair had to know its own use was infringing? Did Sinclair remove the photos quickly enough once it did know of the unauthorized use? Was the failure to properly attribute the photos an innocent mistake or something more? A jury would have to decide.
Distribution. Although many of the claims against Sinclair survived, the claim based on distribution of the images did not. To infringe a copyrighted work by distribution, one must distribute copies of the work “to the public.” To be sure, Sinclair posted the photos on its websites in such a way that users could easily click on and download them. But was this enough—or did the copyright owners also have to prove that users actually did download them? The question involved a Fourth Circuit precedent that has long proved troublesome, Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199 (4th Cir. 1997). Hotaling held that a library’s merely “making available” a book in its collection could violate the distribution right even if there was no evidence anyone actually borrowed it. But the library in that case did not keep lending records, so it was impossible to know whether the book had been taken out or not. While jurists “have struggled to define the scope of the holding in Hotaling,” the court noted, the growing trend is to limit that case to its facts. Here, the copyright owners did not even try to prove that users actually downloaded the photos. Nor was there was any evidence that records of such downloads—if there were downloads at all—would not exist. The “making available” argument of Hotaling would not save the distribution claim here.
Fair use. As with the licensing defenses, Sinclair’s defense of fair use would also have to be determined by a jury. Some of the fair use factors weighed plainly in one direction or another. On the one hand, Sinclair’s use of the photos was transformative because it was done to accompany a news story about the new breed of cat—and this was a story that could not be accurately told without the actual image. This cut in favor of fair use. On the other hand, the photographs were highly creative and thus entitled to the highest level of protection, and Sinclair took them in their entirety—high-resolution and all—without any changes. These factors cut in favor of the breeders. The tiebreaker would have to be the fourth factor, the impact on the market—but here there the evidence was just too equivocal. To be sure, the breeders had often licensed the photos for free or for trivial amounts in the past. The breeders’ claim that the photos were worth up to $30 million could not therefore be credited. But the breeders’ experts plausibly discussed scenarios in which the market for the photos could grow in the future. Ultimately this would have to be decided by a jury.
Contributory infringement. The court issued a mixed decision as to whether Sinclair could be liable for its stations’ infringement. Sinclair could not be vicariously liable because it simply lacked the required financial interest—it had an interest in the station’s wellbeing as a whole, but it had no special financial interest in the infringement as opposed to any other activity. The vicarious liability claim would therefore fail. As to contributory infringement, though, this presented a harder case. To contribute to the stations’ infringement, Sinclair would have to know that the stations were infringing. But Sinclair’s knowledge was already a matter for the jury in the willfulness context, and it would be so here as well. This claim would go to the jury.
Other issues. The court addressed several other issues in its length opinion. One was the question of the DMCA—if Sinclair indeed stripped the breeders’ credits from the photos, as they alleged, would thus constitute a DMCA violation? The problem for the breeders here was the double scienter requirement of the DMCA, which essentially requires proof that the information was removed intentionally and with knowledge that it would facilitate infringement. Neither standard was met here, the court held—so this claim would fail. Nor could the breeders show any basis for recovering Sinclair’s profits if they won—the breeders were required to show “non-speculative evidence” linking the infringement to Sinclair’s profits, and they did not come close. Finally, Sinclair argued that the breeders committed “fraud on the copyright office” by wrongly stating that the photos were published as a single unit on the same date. But the law on such fraud claims is currently in flux—the Supreme Court has just heard oral argument in a case precisely on point—so the matter would be held in abeyance until the Court issues its decision.
The case is No. 1:18-cv-03403-SAG.
Attorneys: C. Justin Brown (Brown Law LLP) for Brittney Gobble Photography, LLC. Francis R. Laws (Thomas and Libowitz PA) for Sinclair Broadcast Group, Inc.
Companies: Brittney Gobble Photography, LLC; Sinclair Broadcast Group, Inc.
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