Peter Murphy v. Millennium Radio Grp , 650 F.3d 295 ( 2011 )

  •                                         PRECEDENTIAL
                       No. 10-2163
                     PETER MURPHY,
                   RAY ROSSI,
       On Appeal from the United States District Court
                for the District of New Jersey
                       (No. 08-cv-1743)
          District Judge: Honorable Joel A. Pisano
                  Argued January 25, 2011
        Before: FUENTES and CHAGARES, Circuit Judges; POLLAK,
                             District Judge*
                 (Opinion Filed: June 14, 2011)
    Maurice Harmon (argued)
    Harmon & Seidman, LLC
    The Pennsville School
    533 Walnut Drive
    Northampton, PA 18067
           Attorney for Appellant
    David S. Korzenik (argued)
    Miller Korzenik Sommers LLP
    488 Madison Ave.
    New York, NY 10022
    Thomas J. Cafferty (argued)
    Gibbons P.C.
    One Gateway Center
    Newark, NJ 07102-5310
           Attorneys for Appellee
      The Honorable Louis H. Pollak, Senior District Judge for
    the United States District Court for the Eastern District of
    Pennsylvania, sitting by designation.
                    OPINION OF THE COURT
    Fuentes, Circuit Judge:
           Peter Murphy (“Murphy”) has filed an appeal from the
    decision of the District Court granting summary judgment to
    Millennium Radio Group, Craig Carton, and Ray Rossi (the
    “Station Defendants”) on Murphy‟s claims for violation of
    the Digital Millennium Copyright Act (“DMCA”), copyright
    infringement, and defamation under state law. For the
    reasons given below, we reverse on all counts.
            In 2006, Murphy was hired by the magazine New
    Jersey Monthly (“NJM”) to take a photo of Craig Carton and
    Ray Rossi, who at the time were the hosts of a show on the
    New Jersey radio station WKXW, which is owned by
    Millennium Radio Group. NJM used the photo to illustrate an
    article in its “Best of New Jersey” issue naming Carton and
    Rossi “best shock jocks” in the state. The photo (“the
    Image”) depicted Carton and Rossi standing, apparently nude,
    behind a WKXW sign. Murphy retained the copyright to the
          An unknown employee of WKXW then scanned in the
    Image from NJM and posted the resulting electronic copy to
    the WKXW website and to another website,
    The resulting image, as scanned and posted to the Internet,
    cut off part of the original NJM caption referring to the “Best
    of New Jersey” award. It also eliminated NJM‟s gutter credit
    (that is, a credit placed in the inner margin, or “gutter,” of a
    magazine page, ordinarily printed in a smaller type and
    running perpendicular to the relevant image on the page)
    identifying Murphy as the author of the Image. The WKXW
    website invited visitors to alter the Image using photo-
    manipulation software and submit the resulting versions to
    WKXW. A number of visitors eventually submitted their
    versions of the photo to WKXW, and it posted 26 of those
    submissions to its site. The Station Defendants never
    received Murphy‟s permission to make use of the Image.
            When Murphy discovered the Image on the WKXW
    website, he communicated, via his attorney, with WKXW,
    demanding that the alleged infringement cease. Shortly
    thereafter, Carton and Rossi made Murphy the subject of one
    of their shows, allegedly stating that one should not do
    business with him because he would sue his business
    partners. They also allegedly implied that Murphy, who
    identifies himself as a married heterosexual and the natural
    father of children, was a homosexual.
           In April 2008, Murphy sued the Station Defendants for
    violations of § 1202 of the Digital Millennium Copyright Act
    of 1998 (“DMCA”), copyright infringement under the
    Copyright Act, 17 U.S.C. § 101 et seq., and defamation under
    New Jersey law. Murphy then served various discovery
    requests upon the Station Defendants, including deposition
    requests for Carton and Rossi and a corporate representative
    of Millennium Radio Group. At the behest of both Murphy
    and the Station Defendants, a number of delays in the
    discovery process followed. The magistrate judge held a
    conference with the parties after the end of the discovery
    period designated in the original case-management schedule,
    at which point only limited discovery had actually taken
    place. At that conference, the judge set a June 2009 deadline
    for the Station Defendants to file a motion to dismiss for
    failure to state a claim with respect to both the defamation
    and               the             DMCA                claims.
           In May 2009, Murphy served additional discovery
    requests on the Station Defendants, who, in response,
    requested a stay of discovery while the motion to dismiss was
    pending. The magistrate judge granted this stay.
           The Station Defendants then filed a motion for
    summary judgment on all claims. In response, Murphy filed
    a motion pursuant to Fed. R. Civ. P. 56(f) (now Fed. R. Civ.
    P. 56(d)), with accompanying affidavit, requesting additional
    discovery before the resolution of any summary judgment
           In March 2010, the District Court denied Murphy‟s
    motion pursuant to Fed. R. Civ. P. 56(f) and granted the
    Station Defendants‟ motion for summary judgment on all
      Murphy describes this in the current briefing as a motion to
    dismiss. Some of the papers suggest that it was scheduled as
    a motion for summary judgment.             The difference is
    inconsequential for our purposes.
    counts. Murphy now appeals the grant of summary judgment
    on all counts.2
          A. DMCA claim
           Murphy argues that, by reproducing the Image on the
    two websites without the NJM credit identifying him as the
    author, the Station Defendants violated the Digital
    Millennium Copyright Act. The DMCA was passed in 1998
    to address the perceived need of copyright owners for “legal
    sanctions” to enforce various technological measures they had
    adopted to prevent the unauthorized reproduction of their
    works. See Microsoft Corp. v. AT&T Corp., 
    550 U.S. 437
    458 (2007). It also served “to conform United States
    copyright law to its obligations under two World Intellectual
    Property Organization („WIPO‟) treaties, which require
    contracting parties to provide effective legal remedies against
    the circumvention of protective technological measures used
    by copyright owners.” MDY Indus. v. Blizzard Entm’t, Inc.,
    629 F.3d 928
    , 942 (9th Cir. 2010).
      The District Court had jurisdiction pursuant to 28 U.S.C. §§
    1331 and 1367. We have jurisdiction under 28 U.S.C. §
    1291. Our review of the District Court‟s grant of summary
    judgment is plenary, which means that we will affirm only if
    there are no genuine issues of material fact and the moving
    party is entitled to judgment as a matter of law. Noel v.
    Boeing Co., 
    622 F.3d 266
    , 270 n.4 (3d Cir. 2010).
           The most well-known provision of the DMCA, § 1201,
    grants a cause of action to copyright owners for the
    “circumvent[ion of] a technological measure that effectively
    controls access to a work.” 17 U.S.C. § 1201(a)(1)(A).3
    Thus, for example, if a movie studio encrypts a DVD so that
    it cannot be copied without special software or hardware, and
    an individual uses his own software to “crack” the encryption
    and make copies without permission, the studio may pursue
    the copier both for simple infringement under the Copyright
        Section 1201 provides:
             (a) Violations regarding circumvention of
             technological measures.—
             (1)(A) No person shall circumvent a
             technological measure that effectively controls
             access to a work protected under this title...
             (3)    As used in this subsection--
             (A) to „circumvent a technological measure‟
             means to descramble a scrambled work, to
             decrypt an encrypted work, or otherwise to
             avoid, bypass, remove, deactivate, or impair a
             technological measure, without the authority of
             the copyright owner; and
             (B) a technological measure „effectively
             controls access to a work‟ if the measure, in the
             ordinary course of its operation, requires the
             application of information, or a process or a
             treatment, with the authority of the copyright
             owner, to gain access to the work.
    Act and, separately, for his circumvention of the encryption,
    which is a “technological measure” designed to “control . . .
    access to” the DVD, under the DMCA. See Universal City
    Studios, Inc. v. Corley, 
    273 F.3d 429
    , 444 (2d Cir. 2001).
    Before the passage of the DMCA, the studio would have had
    only a cause of action under the Copyright Act. The DMCA
    has been criticized in some circles for its “potentially
    overbroad scope . . . and its ability to chill legitimate and, in
    some cases, constitutionally protected speech.”               G.
    Parchomovsky & P. Weiser, Beyond Fair Use, 96 Cornell
    Law Review 91, 104 (2010).4
           Murphy‟s claim against the Station defendants
    involves § 1202 of the DMCA, which deals with “copyright
    management information” (“CMI”).       Section 1202(b)
    provides in part:
           No person shall, without the authority of the
           copyright owner or the law—
           (1) intentionally remove or alter any copyright
           management information, [or]
       Some courts have held, for instance, that the DMCA
    substantially narrows the protection offered by the “fair use”
    affirmative defense to copyright infringement by permitting
    plaintiffs to bring causes of action for circumvention even
    when they cannot bring causes of action for infringement.
    See MDY Indus. v. Blizzard Entm’t, Inc. 
    629 F.3d 928
    , 950-52
    (9th Cir. 2010); contra Chamberlain Group, Inc. v. Skylink
    Techs. Inc., 
    381 F.3d 1178
    , 1203 (Fed. Cir. 2004).
           (3) distribute, import for distribution, or
           publicly perform works, copies of works, or
           phonorecords,       knowing     that   copyright
           management information has been removed or
           altered without authority of the copyright owner
           or the law, knowing or, with respect to civil
           remedies under section 1203, having reasonable
           grounds to know, that it will induce, enable,
           facilitate, or conceal an infringement of any
           right under this title.
    Section 1202(c) then defines “copyright management
    information” as certain types of “information conveyed in
    connection with copies . . . of a work . . ., including in digital
    form, . . . : (2) [t]he name of, and other identifying
    information about, the author of a work . . . .”5
            Murphy‟s argument is straightforward. He contends
    that the NJM gutter credit identifying him as the author of the
    Image is CMI because it is “the name of . . . the author of [the
    Image]” and was “conveyed in connection with copies of [the
    Image].” By posting the Image on the two websites without
    the credit, therefore, the Station Defendants “remove[d] or
    alter[ed]” CMI and “distribute[d]” a work knowing that its
    CMI had been “removed or altered” in violation of § 1202.6
      Only the type of information identified in subsection (2) is
    at issue in this case.
      Because the District Court rejected Murphy‟s argument on
    this point, it did not consider whether summary judgment was
    appropriate on the other elements of a § 1202 claim, such as
    whether the Station Defendants acted knowing that the
    removal would induce or enable infringement.           Thus,
            The Station Defendants, on the other hand, insist that
    one cannot read § 1202 in isolation, but must interpret it in
    conjunction with § 1201 and in light of the legislative history
    of the DMCA to impose an additional limitation on the
    definition of CMI. They argue that the chapter as a whole
    protects various kinds of automated systems which protect
    and manage copyrights. Specifically, § 1201 covers the
    systems (the “technological measures” discussed above) that
    protect copyrighted materials and § 1202 covers the systems
    that manage copyrighted materials (such as the name of the
    author of a work). Therefore, they conclude, despite the
    apparently plain language of § 1202, information like the
    name of the author of a work is not CMI unless it also
    functions as part of an “automated copyright protection or
    management system.” In other words, to remove, as the
    Station Defendants did, a printed credit from a magazine
    photograph which was then posted to a website does not
    violate § 1202, because the credit, although apparently
    meeting the definition of § 1202(c)(2), was not part of an
    “automated copyright protection or management system.”
    They claim that both the legislative history of the DMCA and
    the language of the World Intellectual Property Organization
    treaties which the DMCA implemented support such a
    reading. Viewed thus, the Station Defendants argue, § 1202
    will be seen not to apply to Murphy‟s name as it appeared in
    the gutter credit near the Image.
          We are not aware of any other federal appellate courts
    which have considered whether the definition of “copyright
    although the Station Defendants attempt to raise that issue
    now, we take no position on it at this time.
    management information” should be restricted to the context
    of “automated copyright protection or management
    systems.”7 We begin, as we must, with the text of § 1202.
    “Because it is presumed that Congress expresses its intent
    through the ordinary meaning of its language, every exercise
    of statutory interpretation begins with an examination of the
    plain language of the statute . . . . When the statute‟s language
    is plain, the sole function of the courts—at least where the
    disposition required by the test is not absurd—is to enforce it
    according to its terms.” Alston v. Countrywide Fin. Corp.,
    585 F.3d 753
    , 759 (3d Cir. 2009) (citations, quotations marks,
    and parentheticals omitted). The exception to this rule is
    narrowly cast. “Generally, where the text of a statute is
    unambiguous, the statute should be enforced as written and
    only the most extraordinary showing of contrary intentions in
    the legislative history will justify a departure from that
    language.” In re Philadelphia Newspapers, LLC, 
    599 F.3d 298
    , 314 (3d Cir. 2010) (internal quotation marks and citation
           There is nothing particularly difficult about the text of
    § 1202. Even the Station Defendants, and the courts whose
    decisions they cite, do not contend that § 1202 is, in itself,
      The district courts which have considered the question to
    date have reached different conclusions. Some have indeed
    adopted the Station Defendants‟ reading of § 1202. See, e.g.,
    IQ Group v. Wiesner Pub., LLC, 
    409 F. Supp. 2d 587
    2006); Textile Secrets Int’l, Inc. v. Ya-Ya Brand, Inc., 524 F.
    Supp. 2d. 1184, 1198 (C.D. Cal. 2007). A number of others,
    however, have rejected it. See, e.g., Agence France Presse v.
    Morel, --- F. Supp. 2d ---, 
    2011 WL 147718
    , at *9 (S.D.N.Y.
    Jan. 14, 2011).
    ambiguous or unclear. Read in isolation, § 1202 simply
    establishes a cause of action for the removal of (among other
    things) the name of the author of a work when it has been
    “conveyed in connection with copies of” the work. The
    statute imposes no explicit requirement that such information
    be part of an “automated copyright protection or management
    system,” as the Station Defendants claim. In fact, it appears
    to be extremely broad, with no restrictions on the context in
    which such information must be used in order to qualify as
    CMI. If there is a difficulty here, it is a problem of policy,
    not of logic. Such an interpretation might well provide an
    additional cause of action under the DMCA in many
    circumstances in which only an action for copyright
    infringement could have been brought previously. Whether
    or not this result is desirable, it is not absurd, as might
    compel us to make a more restrictive reading of § 1202‟s
      The Station Defendants argue that this interpretation would
    cause the DMCA to “swallow up” the Copyright Act,
    effectively making the latter redundant. In fact, if an
    infringer merely copies an entire work whole—as in the
    example above of a pirated film on DVD—Section 1202 will
    probably not be implicated, as the infringer will not have
    removed or altered any CMI. The Station Defendants point
    out that most fair uses will involve the removal of CMI.
    However, unlike § 1201, § 1202 applies only when a
    defendant knows or has reasonable grounds to know that the
    removal will “induce, enable, facilitate, or conceal” an
    infringement. Thus, those intending to make fair use of a
    copyrighted work are unlikely to be liable under § 1202.
            The Station Defendants argue that to read § 1202 by
    itself is to take too narrow a view of the “plain language” of
    the statutory text. When interpreting statutory language, we
    must examine the statute as a whole, rather than considering
    provisions in isolation. Samantar v. Yousuf, --- U.S. ---, 
    130 S. Ct. 2278
    , 2289 (2010). However, nothing in § 1201, the
    provision regarding circumvention of “technological
    measures” discussed above to which the Station Defendants
    point most insistently, restricts the meaning of CMI in § 1202
    to information contained in “automated copyright protection
    or management systems.” Section 1201 does not mention
    “copyright management information”; in fact, it does not refer
    to § 1202 at all. Neither does it contain the phrase
    “automated copyright protection or management systems.”9
    Similarly, § 1202 does not refer to § 1201, and the definition
    of CMI is located squarely in § 1202.
            If, in fact, § 1201 and § 1202 were meant to have such
    interrelated interpretations, it is peculiar that there is no
    explicit indication of this in the text of either provision.
    Instead, to all appearances, § 1201 and § 1202 establish
    independent causes of action which arise from different
    conduct on the part of defendants, albeit with similar civil
    remedies and criminal penalties. It may strike some as more
    intellectually harmonious to interpret the prohibition of
    removal of CMI in § 1202 as restricted to the context of §
    1201, but nothing in the text of § 1201 actually dictates that it
      The Station Defendants do not argue that “technological
    measures,” as defined in § 1201, are the same as “automated
    copyright protection or management systems.”
    should be taken to limit the meaning of “copyright
    management information.”10
           As for the purpose of the statute as a whole, it is
    undisputed that the DMCA was intended to expand—in some
    cases, as discussed above, significantly—the rights of
    copyright owners. The parties here differ only as to their
    conclusions regarding the extent to which the DMCA
    expanded those rights. Murphy‟s definition of CMI provides
    for a significantly broader cause of action than the Station
    Defendants‟ does. However, the Station Defendants can
    point to nothing in the statute as a whole which compels the
    adoption of their reading instead of Murphy‟s. In short,
    considering the purpose of the statute does not provide us
    with meaningful guidance in this case.
           As discussed above, therefore, in accordance with In
    re Philadelphia Newspapers, we must look to the legislative
    history of the DMCA only for that “extraordinary showing of
    contrary intentions” which would justify rejecting a
    straightforward reading of § 1202. 599 F.3d at 314 (holding
    that a narrow exception to the plain meaning rule applies in
    the “rare cases [where] the literal application of a statute will
    produce a result demonstrably at odds with the intentions of
       The Station Defendants point out that the title of the
    chapter to which § 1201 and § 1202 belong is “Copyright
    Protection and Management Systems.” However, “[i]t is a
    well-settled rule of statutory interpretation that titles and
    section headings cannot limit the plain meaning of statutory
    text where that text is clear.” M.A. ex rel. E.S. v. State-
    Operated Sch. Dist. of the City of Newark, 
    344 F.3d 335
    , 348
    (3d Cir. 2003).
    its drafters” (citing United States v. Ron Pair Enters. Inc., 
    489 U.S. 235
    , 242 (1989))). The Station Defendants rely on the
    survey of the legislative history undertaken by the courts in
    IQ Group v. Wiesner Pub., LLC, 
    409 F. Supp. 2d 587
    2006) and Textile Secrets Int’l, Inc. v. Ya-Ya Brand, Inc., 
    524 F. Supp. 2d
    . 1184, 1198 (C.D. Cal. 2007). The IQ Group
    decision placed most emphasis on a “white paper” of the
    working group of the Information Infrastructure Task Force
    (IITF), the organization that produced the first draft of §§
    1201 and 1202. This white paper reported that
           A combination of file- and system-based access
           controls using encryption technologies, digital
           signatures and steganography are . . . employed
           by owners of works to address copyright
           management concerns. . . . To implement these
           rights management functions, information will
           likely be included in digital versions of a work
           (i.e., copyright management information) to
           inform the user about the authorship and
           ownership of a work . . . .
    409 F. Supp. 2d at 594 (emphasis added). Thus, the IQ
    Group court concluded, the paper “understood „copyright
    management information‟ to be information . . . that is
    included in digital versions of the work so as to implement
    „rights management functions‟ of „rights management
    systems.‟” Id. at 595. And, as the text of § 1202 was not
    altered before its adoption by Congress, the court found that
    this gave a clear indication of Congressional intent. Id. at
    594-95. Additionally, the Senate Committee Report to §
    1202 describes CMI as including “such items as the title of
    the work, the author . . . CMI need not be in digital form, but
    CMI in digital form is expressly included.” Id. at 596.
            The Textile Secrets court also looked to the World
    Intellectual Property Organization treaties that the DMCA
    was intended to implement. The WIPO treaties use a term
    “rights management information” and define it as
    “information which identifies the work, the author of the
    work . . . when any of these items of information is attached
    to a copy of a work or appears in connection with the
    communication of a work to the public.” See, e.g., WIPO
    Copyright Treaty Art. 12 (adopted Dec. 20, 1996), available
    89_12682. They require that parties to the treaties provide
    adequate remedies against the “remov[al] or alter[ation of]
    any electronic rights management information without
    authority.” Id. (emphasis added) The Textile Secrets court
    concluded that “electronic rights management information” as
    used in the WIPO treaties and “copyright management
    information” as used in § 1202 must be coterminous in
    524 F. Supp. 2d
     at 1198. Therefore, it found,
    “copyright management information” must be electronic. Id.
           While this analysis has some force, in the end, the
    strongest case which the Station Defendants can make is that
    the legislative history of the DMCA is consistent with its
    interpretation, not that it actually contradicts the reading
    advocated by Murphy. The IITF white paper describes CMI
    as “information [that] will likely be included in digital
    versions of a work . . . to inform the user about the authorship
    and ownership of a work.” IQ Group, 409 F. Supp. 2d at 594.
    This description leaves the question of just how that
    information will be included—that is, whether it must be used
    in some form of “an automated copyright protection or
    management system” or whether it can be conveyed by other
    means—entirely open.
           Similarly, the WIPO treaties‟ definition of “electronic
    rights management information” is “information [that] will
    likely be included in digital versions of a work . . . to inform
    the user about the authorship and ownership of a work.”11
    Although this definition occurs in the context of a broader
    discussion of systems that control access to copyrighted
    works, it does not require that “electronic rights management
    information” be embedded in such systems.12 In addition,
    neither the WIPO treaties nor the DMCA indicate the precise
    relationship between the concepts of CMI and “electronic
    rights management information” as discussed in the treaties.
    The Station Defendants argue that their meanings must be
    identical, but Congress was certainly free, in implementing
    the WIPO treaties, to define “copyright management
    information” more broadly than “electronic rights
    management information.”13
       The Station Defendants agree with Murphy that, whatever
    CMI is, it is not necessary for it to be “digital.” For example,
    they concede that a bar code printed in ink on a paper label
    might be CMI.
      Again, the Station Defendants do not argue that CMI must
    be presented in “electronic” form, only that it function in
    connection with an electronic (or automated; the Station
    Defendants treat the terms as interchangeable, though they are
    not) copyright protection or management system.
      There is even a textual argument that Congress did so. The
    DMCA‟s definition of “copyright management information”
    uses language very similar to that of the WIPO treaties‟
    definition of “rights management information” (without a
    reference to a medium or format). Compare
          information conveyed in connection with copies
          . . . of a work . . ., including in digital form, . . .
          : (2) [t]he name of, and other identifying
          information about, the author of a work . . .
    17 U.S.C. § 1202(c) (the DMCA‟s definition of “copyright
    management information” with respect to author-identifying
    information) with
          information which identifies the . . . author of
          the work . . . when [this] information is attached
          to a copy of a work or appears in connection
          with the communication of a work . . .
    WIPO Copyright Treaty Art. 12(2) (the WIPO treaties‟
    definition of “rights management information” for the same).
    The WIPO treaties then go on (as the DMCA does not) to
    impose certain requirements concerning only electronic rights
    management information, which implies that “rights
    management information” might well exist in other forms. It
    might therefore be argued that the DMCA‟s definition of
    “copyright management information” tracks the more
    expansive WIPO definition of “rights management
    information,” rather than WIPO‟s narrower (if still not clearly
    defined) “electronic rights management information.” If so,
    then arguments about whether the WIPO treaties intended to
    require electronic rights management information to function
    as part of “an automated copyright protection or management
    system” are irrelevant.
            Thus, while it is possible to read the legislative history
    to support the Station Defendants‟ interpretation of CMI, that
    history does not provide the “extraordinary showing of
    contrary intentions” which would compel us to disregard the
    plain language of the statute. This is especially so because
    the Station Defendants are essentially asking us to rewrite §
    1202 to insert a term—that is, “automated copyright
    protection or management system”—which appears nowhere
    in the text of the DMCA and which lacks a clear definition.
    We would need compelling justification indeed to adopt such
    a statutorily-unmoored interpretation.
           Therefore, we find that CMI, as defined in § 1202(c),
    is not restricted to the context of “automated copyright
    protection or management systems.” Rather, a cause of
    action under § 1202 of the DMCA potentially lies whenever
    the types of information listed in § 1202(c)(1)-(8) and
    “conveyed in connection with copies . . . of a work . . .
    including in digital form” is falsified or removed, regardless
    of the form in which that information is conveyed. In this
    case, the mere fact that Murphy‟s name appeared in a printed
    gutter credit near the Image rather than as data in an
    “automated copyright protection or management system”
    does not prevent it from qualifying as CMI or remove it from
    the protection of § 1202.14
           B.     Copyright infringement claim
       The Station Defendants also raise the issue of whether they
    “removed” the CMI. The District Court did not address this
    issue, and we need not do so at this stage of the litigation.
          Murphy also argues that the reproduction of the Image
    on the two websites without his consent infringed his
    copyright in the Image.15 The Station Defendants, in
    response, assert the affirmative defense of fair use.
            The doctrine of fair use places important limitations on
    a copyright owner‟s right to control the use of its work, so
    that the statute does not “stifle the very creativity which that
    law is designed to foster” by preventing further uses of the
    work which enrich our culture and do not significantly
    diminish the value of the original. See Video Pipeline, Inc. v.
    Buena Vista Home Entm’t, Inc., 
    342 F.3d 191
    , 197 (3d Cir.
    2003) (quoting Campbell v. Acuff-Rose Music, Inc., 
    510 U.S. 569
    , 577 (1994)). As codified in 17 U.S.C. § 107, the factors
    governing whether a particular use of copyrighted material is
    “fair” are:
           (1) the purpose and character of the use,
           including whether such use is of a commercial
           nature or is for nonprofit educational purposes;
           (2) the nature of the copyrighted work;
           (3) the amount and substantiality of the portion
           used in relation to the copyrighted work as a
           whole; and
       Although Murphy challenged the use of both the original
    Image and the photomanipulated images submitted by
    WKXW fans on the website in the District Court, he has
    appealed the finding of fair use with respect to the use of the
    original Image only.
           (4) the effect of the use upon the potential
           market for or value of the copyrighted work.
            These four factors may not “be treated in isolation, one
    from another. All are to be explored, and the results weighed
    together, in light of the purposes of copyright.” Campbell,
    510 U.S. at 578. However, the analysis of the District Court
    in this case relied most heavily on the first and fourth factors.
                  1.     Purpose and character of the use
           The District Court found that the first factor favored
    the Station Defendants, because their use of the Image was
    “transformative.” When courts evaluate the first factor,
           [t]he central purpose of th[e] investigation is to
           see . . . whether the new work merely
           supersedes the objects of the original creation . .
           . or instead adds something new, with a further
           purpose or different character, altering the first
           with new expression, meaning, or message; it
           asks . . . whether and to what extent the new
           work is transformative.
    Campbell, 510 U.S. at 578-79 (internal quotation marks,
    alterations, and citations omitted). The Station Defendants
    assert, and the District Court found, that the Station
    Defendants‟ use of the unaltered Image was transformative in
    this sense. This conclusion is not persuasive. The Image was
    originally created to illustrate a NJM article informing the
    public about Carton and Rossi‟s “best of” award; the Station
    Defendants themselves state they “used [the Image] . . . to
    report to their viewers the newsworthy fact of [Carton and
    Rossi‟s] receipt of the magazine‟s award.” (App‟t Br. 40)
    Although they claim that the difference is significant, there is,
    in fact, no meaningful distinction between the purpose and
    character of NJM‟s use of the Image and the Station
    Defendants‟ use on the WKXW website.
           The Station Defendants argue further that because the
    purpose of their use was “news reporting,” and news
    reporting appears in the Copyright Act‟s nonexhaustive list of
    potential purposes of fair use, Murphy‟s claim must
    necessarily fail. Under many circumstances, reporters will
    indeed be able to claim a fair use defense against claims of
    infringement. For instance, had the Image itself become
    controversial due to its “salacious” content, it would likely
    have been fair use for a newspaper to reproduce it to
    accompany an article about the controversy. However, news
    reporting does not enjoy a blanket exemption from copyright.
    News organizations are not free to use any and all
    copyrighted works without the permission of the creator
    simply because they wish to report on the same events a work
    depicts. “The promise of copyright would be an empty one if
    it could be avoided merely by dubbing the infringement a fair
    use „news report‟ of the [work].” Harper & Row Publishers,
    Inc. v. Nation Enters., 
    471 U.S. 539
    , 557 (1985) (finding
    verbatim republication of key portions of Gerald Ford‟s
    memoirs not to be fair use).
           Instead, news reporting must satisfy the same test as
    other supposedly transformative works.              The Station
    Defendants‟ use of the Image does not do so. Campbell has
    made it clear that the “heart” of a claim for transformative use
    is “the use of some elements of a prior author‟s composition
    to create a new one that, at least in part, comments on that
    author‟s works.” 510 U.S. at 580. However, if “the
    commentary has no critical bearing on the substance or style
    of the original . . . which the alleged infringer merely uses to
    get attention or to avoid the drudgery in working up
    something fresh, the claim to fairness . . . diminishes
    accordingly (if it does not vanish) . . . .” Id. The First
    Circuit‟s decision in Nunez v. Caribbean Int’l News Corp.,
    235 F.3d 18
     (1st Cir. 2000), provides an excellent example of
    when the use of a photograph for news purposes qualifies as a
    fair use. In Nunez, a professional photographer took several
    risqué photographs of Joyce Giraud for use in Giraud‟s
    modeling portfolio. Id. at 21. After the photographs were
    taken, Giraud won the Miss Puerto Rico Universe
    competition, and a controversy arose over whether the
    photographs were inappropriate for a Miss Puerto Rico
    Universe. Id. A newspaper then published three of the
    photographs, along with several articles about the
    controversy, prompting the photographer to sue for copyright
    infringement and the newspaper to assert the fair use defense.
    Id. In analyzing whether the newspaper‟s publication of the
    photographs was transformative, the First Circuit noted that
    the photographs serve an “informative function . . . confirmed
    by the newspaper‟s presentation of various news articles and
    interviews in conjunction with the reproduction.” Id. at 22.
    By “using the photographs in conjunction with editorial
    commentary, [the newspaper] did not merely „supersede[ ] the
    objects of the original creation[s],‟ but instead used the works
    for „a further purpose,‟ giving them a new „meaning, or
    message.‟” Id. at 23 (quoting Campbell, 510 U.S. at 579).
           By contrast, no similar broader news coverage or
    editorial commentary existed in this case, as the Station
    Defendants simply posted Murphy‟s photograph on their
    website. The absence of any broader commentary—whether
    explicit or implicit—significantly undercuts the Station
    Defendants‟ argument that their use gave any new meaning to
    the Image. Instead, it appears that the Station Defendants did
    not want to go to the trouble of creating their own eye-
    catching photo of Carton and Rossi to illustrate their
    announcement of the NJM award, but simply appropriated the
    Image for the same purpose. This is far from transformative.
    And, in the absence of transformativity, other considerations,
    “like the extent of [the use‟s] commerciality,” become more
    important in determining which party the first factor favors.
           In general, “commercialism . . .weigh[s] against a
    finding of fair use.” Id. at 579. The Station Defendants have
    not contested that their use is commercial. Therefore, as the
    use of the image was not transformative and was commercial,
    the first factor, the purpose and character of the use of the
    image, weighs against the Station Defendants.
                 2.     Impact on the market for the original
            The District Court‟s finding that the fourth factor—the
    impact on the market for the original—also favors the Station
    Defendants was also erroneous. The District Court held that
    Murphy had not established that he had experienced any
    market harm simply by asserting that he would have been
    willing to license the Image if WKXW had approached him.
    It is true that a copyright owner cannot claim market harm
    simply because he would have liked to charge for the use in
    question. If that were the case, then it would be difficult
    indeed for any fair use defense to succeed.
           “The fourth fair use factor . . . requires courts to
    consider not only the extent of market harm caused by the
    particular actions of the alleged infringer, but also whether
    unrestricted and widespread conduct of the sort engaged in by
    the defendant . . . would result in a substantially adverse
    impact on the potential market for the original.” Campbell,
    510 U.S. at 590 (internal quotation marks and citations
    omitted). When a copyright owner “clearly does have an
    interest in exploiting a licensing market—and especially
    where the copyright holder has actually succeeded in doing
    so—„it is appropriate that potential licensing revenues . . . be
    considered in a fair use analysis.‟” Princeton Univ. Press v.
    Mich. Document Servs., 
    99 F.3d 1381
    , 1387 (6th Cir. 1996)
    (quoting Am. Geophysical Union v. Texaco Inc., 
    60 F.3d 913
    930 (2d Cir. 1994)). In determining whether such a licensing
    market exists, we look to “the impact on potential licensing
    revenues for traditional, reasonable, or likely to be developed
    markets.” Bill Graham Archives v. Dorling Kindersley Ltd.,
    448 F.3d 605
    , 614 (2d Cir. 2006).
            Murphy is a professional photographer who engages in
    licensing of his work. If it were possible to reproduce his
    unaltered work, as a whole, without compensation under the
    guise of news reportage—a “traditional, reasonable, or likely
    to be developed market[]” for professional photographers—it
    would surely have a “substantially adverse impact” on his
    ability to license his photographs. As the Supreme Court has
    noted, “when a commercial use amounts to mere duplication
    of the entirety of an original, it clearly supersedes [the
    original] . . . and serves as a market replacement for it,
    making it likely that cognizable market harm to the original
    will occur.” Id. at 591 (internal quotation marks and citations
    omitted). Such is the case here.
           Finally, the Station Defendants suggest that there is no
    market for the Image because Carton and Rossi no longer
    work as a team and because the importance of the NJM award
    was fleeting in any event. However, they cite no precedent
    for the proposition that a copyright owner must prove
    substantial demand for the work in question in order to
    establish infringement.16 Clearly, at the time the Image was
    posted on the WKXW website, there was at least one party
    who thought the use of the Image had some value—the
    Millennium Radio Group. That there may not have been
    much other demand for it hardly means that the Station
    Defendants were entitled to use it for free. Further, without
    discovery into the relevant markets, such statements are pure
    speculation on the part of the Station Defendants.17
                  3.     Nature of the work and amount copied
           Although the court spent little time on the second and
    third factors of the fair use analysis, it should be noted that
    they favor Murphy as well. The second factor is the “nature
    of the work,” with more “creative expression” entitled to
    more protection than “factual works.” See Campbell, 510
      Obviously, however, the extent of demand for the work
    may affect the calculation of damages.
       As “fair use is an affirmative defense, its proponent would
    have difficulty carrying the burden of demonstrating fair use
    without favorable evidence about relevant markets.”
    Campbell, 510 U.S. at 590. The Station Defendants fault
    Murphy for not providing more evidence about the market for
    his work, but this misplaces the evidentiary burden.
    U.S. at 586-87. The Image is more creative expression than
    factual work. See, e.g., Southco., Inc. v. Kanebridge Corp.,
    390 F.3d 276
    , 284 (3d Cir. 2004). The third factor is the
    amount of the work copied. Campbell, 510 U.S. at 586. The
    Station Defendants copied the Image in its entirety. Thus,
    both factors weigh in favor of Murphy.
            In finding in favor of the Station Defendants, the
    District Court relied heavily on Campbell‟s relative
    discounting of the weight of the second and third factors in
    the context of parody. However, Campbell explicitly treated
    parody as “a difficult case,” because “[w]hen parody takes
    aim at a particular original work, the parody must be able to
    „conjure up‟ . . . the original . . . .” 510 U.S. at 588. Thus,
    copying is not only helpful, but often necessary, in creating a
    parody, and even extensive copying of creative expression
    may be fair use in genres which rely for their artistic effect, at
    least in part, on the evocation of the original. The Station
    Defendants do not assert that their use of the unaltered Image
    was a parody. At the very least, the court has not explained
    how the use by the Station Defendants is of such a nature as
    to require analysis similar to that of parody.
           Thus, all four factors here favor Murphy and the
    District Court erred in finding that the Station Defendants‟
    reproduction of the unaltered Image on the WKXW website
    was a fair use.18
      Murphy complains that the District Court did not engage in
    an independent analysis of the posting of the unaltered
    photograph on         It does not appear,
    however—at least from the present record—that the analysis
          C.     Discovery and the defamation claim
           As mentioned above, when the Station Defendants
    sought summary judgment on Murphy‟s defamation claim, he
    filed a motion pursuant to Fed. R. Civ. P. 56(f) (now 56(d)).
    Such a motion is, of course, the proper recourse of a party
    faced with a motion for summary judgment who believes that
    additional discovery is necessary before he can adequately
    respond to that motion. Doe v. Abington Friends School, 
    480 F.3d 252
    , 257 (3d Cir. 2007). “District courts usually grant
    properly filed Rule 56(f) motions as a matter of course. This
    is particularly so when there are discovery requests
    outstanding or relevant facts are under the control of the
    moving party.” Id. (internal quotation marks and citations
    omitted). The standard of appellate review is abuse of
    discretion. Renchenski v. Williams, 
    622 F.3d 315
    , 339 (3d
    Cir. 2010).
            A claim of defamation under New Jersey law generally
    requires an analysis closely grounded in the facts of the
    individual case. “As a general rule, a statement is defamatory
    if it is false, communicated to a third person, and tends to
    lower the subject‟s reputation in the estimation of the
    community or to deter third persons from associating with
    him.” Lynch v. N.J. Educ. Ass’n, 
    161 N.J. 152
    , 164-65
    (1999).      “In determining whether the statements are
    defamatory, we must consider the content, verifiability, and
    context of the challenged statements.” Ward v. Zelikovsky,
    136 N.J. 516
    , 529 (1994).
    should be any different from the analysis for the posting on
    the WKXW website.
            In this case, Murphy has been able to obtain only
    limited information about the fundamental basis of his claim,
    that is, the actual statements Carton and Rossi made on air
    about him. The Station Defendants destroyed their recording
    of the show shortly after airing, and no transcript has been
    produced. In such circumstances, in order for Murphy to
    make out his claim, it would obviously be essential for him to
    depose the people who made the statements in the first place,
    that is, Carton and Rossi. Yet, despite his timely attempts to
    schedule them for depositions, he was unable to do so before
    the District Court granted summary judgment against him.
            The Station Defendants have spent little time rebutting
    the specific arguments offered by Murphy as to why the
    information he sought was relevant to the resolution of their
    summary judgment motion. Instead, they argue that Murphy
    could not have been harmed in any way by the foreclosure of
    discovery because, for the purposes of resolving that motion,
    the District Court accepted as true all allegations made in the
    complaint. This argument is peculiar, as it implies that, in
    effect, Murphy was obligated to plead in his complaint not
    merely sufficient facts to state his claim for the purposes of
    Fed. R. Civ. P. 12(b), but also to survive summary judgment.
    The Station Defendants cite no precedent for this approach,
    and we are aware of none.
            Unfortunately, the District Court offered essentially no
    analysis in its order denying Murphy‟s 56(f) motion, leaving
    it unclear what, if any, additional analytic basis its denial may
    have had. Under these circumstances, and given that
    Murphy‟s arguments respecting the importance of the
    information he sought are plausible, it would not be
    appropriate to defer to the District Court‟s determination on
    this point. Therefore, with respect to the defamation claims,
    the District Court‟s decision is vacated and remanded to
    permit Murphy to conduct adequate discovery.19
           For the foregoing reasons, we will vacate the District
    Court=s grant of summary judgment in the Station
    Defendants‟ favor on all counts.
      We therefore do not reach the other issues raised on appeal,
    such as whether an allegation of homosexuality is susceptible
    of a defamatory meaning under New Jersey law.

Document Info

DocketNumber: 10-2163

Citation Numbers: 650 F.3d 295

Filed Date: 6/14/2011

Precedential Status: Precedential

Modified Date: 12/21/2014

Authorities (22)

In Re Philadelphia Newspapers, LLC , 599 F.3d 298 ( 2010 )

Harper & Row, Publishers, Inc. v. Nation Enterprises , 471 U.S. 539 ( 1985 )

United States v. Ron Pair Enterprises, Inc. , 489 U.S. 235 ( 1989 )

Campbell v. Acuff-Rose Music, Inc. , 510 U.S. 569 ( 1994 )

Microsoft Corp. v. AT & T CORP. , 550 U.S. 437 ( 2007 )

Samantar v. Yousuf , 560 U.S. 305 ( 2010 )

Noel v. the Boeing Co. , 622 F.3d 266 ( 2010 )

Renchenski v. Williams , 622 F.3d 315 ( 2010 )

MDY INDUSTRIES, LLC v. Blizzard Entertainment , 629 F.3d 928 ( 2010 )

Princeton University Press, MacMillan Inc., and St. Martin'... , 99 F.3d 1381 ( 1996 )

Sixto Nunez v. Caribbean International News Corp. (El ... , 235 F.3d 18 ( 2000 )

Universal City Studios, Inc. v. Corley , 273 F.3d 429 ( 2001 )

video-pipeline-inc-v-buena-vista-home-entertainment-inc-buena-vista , 342 F.3d 191 ( 2003 )

ma-on-behalf-of-es-ma-at-on-behalf-of-gt-at-gl-on-behalf , 344 F.3d 335 ( 2003 )

The Chamberlain Group, Inc. v. Skylink Technologies, Inc. , 381 F.3d 1178 ( 2004 )

Southco, Inc. v. Kanebridge Corporation , 390 F.3d 276 ( 2004 )

Bill Graham Archives v. Dorling Kindersley Limited, Dorling ... , 448 F.3d 605 ( 2006 )

benjamin-doe-a-minor-by-his-parents-joseph-and-julie-doe-joseph-doe , 480 F.3d 252 ( 2007 )

Alston v. Countrywide Financial Corp. , 585 F.3d 753 ( 2009 )

Lynch v. New Jersey Educ. Ass'n , 161 N.J. 152 ( 1999 )

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