An interesting lawsuit involving a paparazzi photo is currently unfolding in federal court in California. The case began like many cases initiated by paparazzi photographers that have flooded the files in New York and California in recent years, with a paparazzi filing a copyright infringement lawsuit against a fashion brand ( or a celebrity) for posting one of his photos on Instagram without permission or a license. In that case, Carlos Vila filed a lawsuit against Deadly Doll in July 2021 for posting one of his images — a photo of model Irina Shayk walking down the street in a pair of the brand’s sweatpants — on his Instagram. The infringing photograph is “an exact copy of the entire [Vila’s] original image that was directly copied and [posted] by Deadly Doll on [its Instagram] account,” Vila asserted in the 8-page complaint he filed in the U.S. District Court for the Central District of California.
Instead of quietly settling the lawsuit out of court, which has been the pattern for the majority of the paparazzi’s long list of copyright lawsuits, Deadly Doll responded to Vila’s complaint in September. 2021 with its own claims. Primarily, Deadly Doll alleged that by taking Shayk’s photo and then offering it for licensing to the media, Vila captured “a ‘pin-up’ girl image in which Deadly Doll owns the copyright which was about the clothes that Deadly Doll created without [its] permission.” In doing so, Deadly Doll claims that Vila has created an unauthorized derivative work. (Who else is not buy this argument?)
In arguing its counterclaims, Deadly Doll also challenged Vila’s “alleged” copyright “in the unauthorized derivative photograph” of Shayk, and asked the court for a declaration that its copyright in the artwork is valid, while the “purported copyright in [Vila’ photo] is invalid.” (Both Vila and Deadly Doll retain copyright registrations for their respective works: Vila’s photo and the pin-up illustration for Deadly Doll.)
On the heels of filing its answer to Deadly Doll’s counterclaims, complete with an affirmative defense of fair use, Vila filed a motion for judgment on the pleadings this spring, seeking to have Deadly Doll’s counterclaims dismissed on the grounds that her photo containing the pin of Deadly Doll -up girl art is not a “derivative work” within the meaning of the law – and therefore does not infringe the copyright of the trademark on the artwork . Beyond that, Vila argued that he was entitled to judgment on the pleadings because “Deadly Doll is not entitled to declaratory judgment, Deadly Doll’s copyright in the work of art is invalid and [his] photograph constitutes a fair use of the artwork.
(Deadly Doll — which was founded by musician Jesse Jo Stark, whose parents Richard Stark and Laurie Lynn Stark form the duo behind cult label Chrome Hearts — was pushed back in a later opposition filing. The company argued that since Vila’s photograph incorporated “virtually all” of his pin-up art, which is “conceptually separable, copyrighted, and copyrighted”, the photo is considered a derivative work which infringes the copyright of Deadly Doll, rendering it “ineligible for independent copyright protection under the law of the Ninth Circuit and other courts.”)
Fast forward to August 23 and Judge Otis Wright of the U.S. District Court for the Central District of California sided with Deadly Doll, finding that Vila is not entitled to judgment on the pleadings on all four fronts. .
Derivative work – First, the judge states that Vila argues that his photograph is “highly unlikely to be considered a derivative work under Ninth Circuit precedent, which protects photographers from their inherent vulnerabilities in copyright infringement suits.” author based on the individual copyrighted elements necessarily captured in their photographs. ” However, he “does not – and cannot – cite any precedent asserting that the photographs can never be derivative works of any artwork displayed there,” says Justice Wrights.
“As a result, the question of whether the photograph is a derivative work always requires the court to determine whether the photograph recasts, transforms or adapts the work of art” – a question of fact to be established on summary judgment or determined at court case.
Vila copyright – Vila’s second argument – in which he asserts that Deadly Doll cannot prevail over his request for declaratory judgment because his photo meets the Ninth Circuit’s “extremely low” originality threshold and is therefore original enough to warrant its own copyright protection – similarly fails. “By citing precedent that simply suggests that Deadly Doll is unlikely to prevail on its claim, instead of citing precedent that Deadly Doll’s claim is untenable in law”, the court argues that Vila “does not acquit of his obligation to show that he is entitled to judgment”.
Copyright Deadly Doll – Third, Vila argues that he is entitled to a judgment in law because Deadly Doll’s copyright in the artwork is invalid since the dates of creation, first publication and recording alleged in trademark counterclaims do not match the dates posted on the US Copyright Office web page. This particular argument fails for a number of different reasons, according to Justice Wright, but “most importantly” because Vila provides “no precedent to support a finding that inconsistencies between alleged copyright dates in a complaint and the dates represented on the copyright registration, render the copyright registration void or voidable so as to be entitled to judgment on the pleadings.
At the same time, the court notes that Deadly Doll submitted an additional copyright registration for her artwork, which displays the dates of creation, first publication and registration which are consistent with the relevant claims in the counterclaims, thereby rendering Vila’s argument moot.
Fair Use – Vila finally argues that he is entitled to a judgment on the pleadings “because in any case, [his] incorporation of the artwork into the photograph constitutes fair use and therefore does not constitute copyright infringement,” the court summarized. Quickly rejecting this argument, the court states that determining whether a work constitutes fair use requires “a case-by-case analysis and flexible balancing of relevant factors”, which it “cannot quite simply not do as part of a motion for judgment on the pleadings.” Citing Deadly Doll’s opposition motion, Judge Wright states that “Vila’s fair use arguments are not properly raised in this motion because fair use is a question of mixed law and fact that generally cannot be resolved by motions to dismiss or judgment on the pleadings”. As such, Vila “cannot show, by looking only than counterclaims”, that his photograph is fair use in law.
In light of the foregoing, Judge Wright found that Deadly Doll had made sufficient claims of copyright infringement and declaratory relief, and therefore Vila is not entitled to judgment on the pleadings. .
The case is Carlos Vila v. Deadly Doll, Inc., 2:21-cv-05837 (CD Cal.)