Fair Use, First Sale and Marilyn Monroe

In Stern v. Lavender, 16 Civ. 9886 (S.D.N.Y. July 20, 2018) (ECF 106), the Judge Paul A. Engelmayer largely denied cross-motions for summary judgment in a dispute involving a number of 1962 photographs of Marilyn Monroe, taken in Los Angeles by noted photographer Bert Stern at Monroe's last photo shoot before her untimely death (the Stern photos). The defendants, long-time studio assistants of Stern, claim to have received legitimate copies of some of the Stern photos directly from Stern, and were recently sued for infringement by Stern's widow when they created and posted their own images of the Stern photos in connection with offering the Stern photos for sale through eBay, Amazon and other digital platforms.

In a comprehensive decision, the court found that it could not resolve a number of factual disputes at the summary judgment stage, but did make two important findings that will narrow the scope of any future trial. First, the court found that Bert Stern had been the owner of copyright in the Stern photos, thus rejecting defendants' argument that the Stern photos had been works made for hire. Accordingly, plaintiff had standing to bring a claim for infringement. Second, the court found that if defendants had in fact been the lawful owners of legitimate copies of the Stern photos, as they claimed, and were thus entitled to sell those copies under §109(a), they could rely on the fair use doctrine, 17 U.S.C. §107, as a defense to creating and posting their own images of the photos in connection with selling the photos.