First Circuit Hears Arguments in Suit over A&E Photo Use

After Clark kidnapped Reigh during a custodial visit in July 2008, the FBI distributed a “wanted” poster using Harney's image of the pair. In May 2011, Judge Rya Zobel of the District of Massachusetts issued a summary judgment ruling in Harney in favor of the defendants. Judge Zobel wrote: “When the Harney Photograph and the Sony Images are compared, they share the factual content but not Harney's expressive elements. The clothing and pose are similar, but the Sony Image does not include the palm leaf held aloft by Reigh. The backdrop and lighting are different; in particular, the Sony Image eliminates the church. The only shared element for which Harney can claim responsibility is the position of the individuals relative to the boundaries of the photo, although in the original Clark Rockefeller's face is closer to the camera and less of his body is visible. This limited sharing is not enough to establish substantial similarity and copyright infringement.”

Harney appealed the ruling. In June 2011, Sony and A&E filed a motion for $86,321 in attorney fees and $5,577.42 in costs, but the district court reserved ruling on this motion until after resolution of the pending appeal.

Plaintiff Says District Ct. Overly Dissected Photos

Harney asked the First Circuit to weigh whether the district court's judgment was erroneous in several respects, including its application of the ordinary observer test for copyright infringement; the conclusion that the “limited sharing” between Harney's photograph and the defendants' photographs was “not enough to establish substantial similarity and copyright infringement”; and the conclusion that the defendants' image was not substantially similar to Harney's photograph.

The defendants in their brief argued that under First Circuit law, “no infringement claim can be based on the similarities between unprotectable elements of copyrighted works.” When the case involves photographs, the district court is “required to filter out non-protectable elements for which the photographer can take no credit,” states the defendants' brief. Those elements include the subject of the photograph and common poses. The defendants also claim that the lower court correctly concluded that any similarity between the images was limited and largely based on a non-copyrightable pose, that of a young girl sitting on top of her father's shoulders.

Although the district court did not reach the fair use issue, the companies argued in their brief that their use of the image meets that test, too. Not only was the movie image significantly different from Harney's photo, the defendants used it “for the sole purpose of retelling the true story of the manhunt and the way the Photo was used by law enforcement and the media, for only a few seconds during the 90-minute Movie,” stated the brief. The defendants also noted in their brief that only one of the 22 commercials for the movie showed the image, and that was “for less than a second.”

Judges Jeffrey Howard and Juan Torruella sit on the First Circuit panel, along with Senior Judge Kermit Lipez. During oral argument, Judge Torruella asked Harney's lawyer, Andrew Epstein, a partner at Boston's Barker Epstein & Loscocco, to address the fact that the district court concluded that the images were not substantially similar.

Epstein said the lower court “reached the conclusion by overly dissecting the photographs.” Epstein also took issue with a part of Zobel's ruling that stated that the Rockefeller's clothes, pose and decision to hold a church program and a palm leaf are “actual realities that exist independently of any photo” and not copyrightable as Harney's original expression: “To filter out the factual realities really turns photojournalism and photography on its head '. Photographs are entitled to full copyright protection.”

During further discussion, Judge Torruella noted that the differences between the images include the lighting, what the girl was holding and the shade of pink of the girl's coat.

Epstein argued that the “church all but disappears” in the background of the cropped version of the photograph disseminated by the FBI, but not the image used in the movie. “The core of the photograph is there. That's what they took is the heart of the photograph,” Epstein said.

So much of the interest in the photograph stemmed from unexpected events that happened later, Senior Judge Lipez said: “You seem to suggest that ' those subsequent [national] events enhanced in some way the copyright protection that your client has in this photograph.”

“I don't think it enhanced the copyright protection,” Epstein responded. “The copyright protection was always there the moment Donald Harney took his photograph.”

After Judge Lipez pressed the point, Epstein said the later events enhance the potential value of the photograph. “A year-and-a-half later [Clark Rockefeller] was the impostor Rockefeller. He was the criminal. He was the abductor. He is now awaiting trial for murder in California. He was none of those wonderful things that this photograph ' evokes. ' Just because the FBI used this picture on a Wanted poster, just because it appeared on television that doesn't take it out of the realm of copyrightable expression,” Epstein argued.

The television companies' lawyer, Bruce Keller, who leads the intellectual property litigation practice at Debevoise & Plimpton, said the defendants “used no more than necessary to conjure up in the public's mind” the widely seen photograph.

“Why were you being so careful as to take what you deem only as necessary? Were you concerned about copyright infringement?” Judge Lipez asked.

The defendants had no need or desire to take Harney's photograph because they have different actors and actresses in the movie, Keller said. The question was: “What do we change in the photo so we don't end up being sued?” Keller said. Keller argued that the scope of protection for Harney's copyright is thin and narrow: “If you don't contribute very much, the scope of protection isn't very much. There's some [protection], but largely against exact copying.” Keller also said that Harney was clear about his creative contribution: He chose the subjects and the angle and made some post-photograph adjustments to the image.

During rebuttal, Epstein said there was “no evidence that the Harney photograph was so burned into the public consciousness” that it had to be recreated by Sony. Even so, Harney “would have been very happy to negotiate with Sony for the sale of his photograph and then for Sony to make a derivative copy,” Epstein said.

In May 2012, the U.S. Court of Appeals for the First Circuit considered a photographer's case against television companies over alleged infringement of his image of a notorious imposter who called himself Clark Rockefeller. Donald Harney filed his lawsuit, Harney v. Sony Pictures Television Inc., 11-1760, in July 2010, alleging that Sony Pictures Television and A&E Television Networks infringed on his photo of Rockefeller and his daughter in the made-for-television movie Who Is Clark Rockefeller? Harney's photo depicted the father and daughter leaving a church in Boston's Beacon Hill neighborhood on Palm Sunday, March 31, 2007. The Beacon Hill Times published the photo in April 2007.

Rockefeller, a German man whose real name is Christian Karl Gerhartsreiter, was convicted in June 2009 in Massachusetts Superior Court of parental kidnapping of his daughter, Reigh, and assault and battery with a dangerous weapon. He was sentenced to a maximum of five years in state prison for both charges. In January 2012, a judge in Alhambra Superior Court in California ruled that Gerhartsreiter must stand trial for the murder of Jonathan Sohus. Sohus disappeared in 1985, at a time when Gerhartsreiter was renting a guesthouse at Sohus' mother's San Marino, CA, home under the name Christopher Chichester.

District Court Says Pics Different

After Clark kidnapped Reigh during a custodial visit in July 2008, the FBI distributed a “wanted” poster using Harney's image of the pair. In May 2011, Judge Rya Zobel of the District of Massachusetts issued a summary judgment ruling in Harney in favor of the defendants. Judge Zobel wrote: “When the Harney Photograph and the Sony Images are compared, they share the factual content but not Harney's expressive elements. The clothing and pose are similar, but the Sony Image does not include the palm leaf held aloft by Reigh. The backdrop and lighting are different; in particular, the Sony Image eliminates the church. The only shared element for which Harney can claim responsibility is the position of the individuals relative to the boundaries of the photo, although in the original Clark Rockefeller's face is closer to the camera and less of his body is visible. This limited sharing is not enough to establish substantial similarity and copyright infringement.”

Harney appealed the ruling. In June 2011, Sony and A&E filed a motion for $86,321 in attorney fees and $5,577.42 in costs, but the district court reserved ruling on this motion until after resolution of the pending appeal.

Plaintiff Says District Ct. Overly Dissected Photos

Harney asked the First Circuit to weigh whether the district court's judgment was erroneous in several respects, including its application of the ordinary observer test for copyright infringement; the conclusion that the “limited sharing” between Harney's photograph and the defendants' photographs was “not enough to establish substantial similarity and copyright infringement”; and the conclusion that the defendants' image was not substantially similar to Harney's photograph.

The defendants in their brief argued that under First Circuit law, “no infringement claim can be based on the similarities between unprotectable elements of copyrighted works.” When the case involves photographs, the district court is “required to filter out non-protectable elements for which the photographer can take no credit,” states the defendants' brief. Those elements include the subject of the photograph and common poses. The defendants also claim that the lower court correctly concluded that any similarity between the images was limited and largely based on a non-copyrightable pose, that of a young girl sitting on top of her father's shoulders.

Although the district court did not reach the fair use issue, the companies argued in their brief that their use of the image meets that test, too. Not only was the movie image significantly different from Harney's photo, the defendants used it “for the sole purpose of retelling the true story of the manhunt and the way the Photo was used by law enforcement and the media, for only a few seconds during the 90-minute Movie,” stated the brief. The defendants also noted in their brief that only one of the 22 commercials for the movie showed the image, and that was “for less than a second.”

Judges Jeffrey Howard and Juan Torruella sit on the First Circuit panel, along with Senior Judge Kermit Lipez. During oral argument, Judge Torruella asked Harney's lawyer, Andrew Epstein, a partner at Boston's Barker Epstein & Loscocco, to address the fact that the district court concluded that the images were not substantially similar.

Epstein said the lower court “reached the conclusion by overly dissecting the photographs.” Epstein also took issue with a part of Zobel's ruling that stated that the Rockefeller's clothes, pose and decision to hold a church program and a palm leaf are “actual realities that exist independently of any photo” and not copyrightable as Harney's original expression: “To filter out the factual realities really turns photojournalism and photography on its head '. Photographs are entitled to full copyright protection.”

During further discussion, Judge Torruella noted that the differences between the images include the lighting, what the girl was holding and the shade of pink of the girl's coat.

Epstein argued that the “church all but disappears” in the background of the cropped version of the photograph disseminated by the FBI, but not the image used in the movie. “The core of the photograph is there. That's what they took is the heart of the photograph,” Epstein said.

So much of the interest in the photograph stemmed from unexpected events that happened later, Senior Judge Lipez said: “You seem to suggest that ' those subsequent [national] events enhanced in some way the copyright protection that your client has in this photograph.”

“I don't think it enhanced the copyright protection,” Epstein responded. “The copyright protection was always there the moment Donald Harney took his photograph.”

After Judge Lipez pressed the point, Epstein said the later events enhance the potential value of the photograph. “A year-and-a-half later [Clark Rockefeller] was the impostor Rockefeller. He was the criminal. He was the abductor. He is now awaiting trial for murder in California. He was none of those wonderful things that this photograph ' evokes. ' Just because the FBI used this picture on a Wanted poster, just because it appeared on television that doesn't take it out of the realm of copyrightable expression,” Epstein argued.

The television companies' lawyer, Bruce Keller, who leads the intellectual property litigation practice at Debevoise & Plimpton, said the defendants “used no more than necessary to conjure up in the public's mind” the widely seen photograph.

“Why were you being so careful as to take what you deem only as necessary? Were you concerned about copyright infringement?” Judge Lipez asked.

The defendants had no need or desire to take Harney's photograph because they have different actors and actresses in the movie, Keller said. The question was: “What do we change in the photo so we don't end up being sued?” Keller said. Keller argued that the scope of protection for Harney's copyright is thin and narrow: “If you don't contribute very much, the scope of protection isn't very much. There's some [protection], but largely against exact copying.” Keller also said that Harney was clear about his creative contribution: He chose the subjects and the angle and made some post-photograph adjustments to the image.

During rebuttal, Epstein said there was “no evidence that the Harney photograph was so burned into the public consciousness” that it had to be recreated by Sony. Even so, Harney “would have been very happy to negotiate with Sony for the sale of his photograph and then for Sony to make a derivative copy,” Epstein said.