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UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK
NORTH JERSEY MEDIA GROUP INC.,
Plaintiff,v.
JEANINE PIRRO and FOX NEWSNETWORK, LLC,
Defendants.
No.: 13-CV-07153 (ER)(FM)
MEMORANDUM OF LAW IN SUPPORT OF DEFENDANTS MOTIONFOR
CERTIFICATION OF FEBRUARY 10, 2015 ORDER
FOR INTERLOCUTORY APPEAL UNDER 28 U.S.C. 1292(b)AND FOR ISSUANCE
OF STAY PENDING APPEAL
HOGAN LOVELLS US LLPDori Ann Hanswirth
[email protected] S. Boyer
[email protected] A. Fleming
[email protected] C. Wilson
[email protected] Third AvenueNew York, New York
10022Tel: (212) 918-3000Fax: (212) 918-3100Attorneys for
Defendants
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TABLE OF CONTENTS
Page
PRELIMINARY STATEMENT
.....................................................................................................1
ARGUMENT...................................................................................................................................3
I. INTERLOCUTORY APPEAL IS WARRANTED TO DETERMINE THEAPPROPRIATE
LEGAL STANDARD FOR EVALUATING WHETHER USE OFA VISUAL WORK WAS
FAIR..........................................................................................3
A. There is Substantial Ground for Difference of Opinion Over
The AppropriateStandard for Transformation of Visual Works.
.......................................................9
B. Certification Would Materially Advance the Termination of
This Litigationand Promote Judicial Economy.
............................................................................11
C. The Public Interest Strongly Favors Interlocutory Appeal
....................................12
II. A STAY OF PROCEEDINGS IN THE DISTRICT COURT
PENDINGINTERLOCUTORY APPEAL WOULD FURTHER THE INTERESTS OFJUSTICE
AND PROMOTE EFFICIENCY.
.....................................................................14
CONCLUSION..............................................................................................................................16
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TABLE OF AUTHORITIES
Page(s)CASES
Allstate Ins. Co. v. Elzanaty,No. 11-cv-3862(ADS)(ARL), 2013
U.S. Dist. LEXIS 70579(E.D.N.Y. May 16, 2013)
........................................................................................................12
Am. Geophysical Union v. Texaco Inc.,60 F.3d 913 (2d Cir.
1994).........................................................................................................7
Am. Geophysical Union v. Texaco Inc.,802 F. Supp. 1 (S.D.N.Y.
1992).......................................................................................
passim
Atl. Holdings, Inc. v. Sovereign Wealth Fund Samruk-Kazyna
JSC,No. 12-cv-8852 (JMF), 2014 WL 1881075 (S.D.N.Y. May 9, 2014)
.....................................10
Authors Guild, Inc. v. Hathitrust,755 F.3d 87 (2d Cir.
2014).........................................................................................................9
Bartnicki v. Vopper,200 F.3d 109 (3d Cir.
1999).....................................................................................................13
Bartnicki v. Vopper,532 U.S. 514
(2001).................................................................................................................13
Bill Graham Archives v. Dorling Kindersley Ltd.,448 F.3d 605 (2d
Cir.
2006)...............................................................................................2,
7, 9
Blanch v. Koons,467 F.3d 244 (2d Cir.
2006).......................................................................................................9
Campbell v. Acuff-Rose Music, Inc.,510 U.S. 569
(1994)...................................................................................................................7
Capitol Records, LLC v. Vimeo, LLC,972 F. Supp. 2d 537 (S.D.N.Y.
2013)......................................................................................11
Cariou v. Prince,714 F.3d 694 (2d Cir.
2013).............................................................................................2,
9, 10
Facebook, Inc. v. Pedersen,868 F. Supp. 2d 953 (N.D. Cal. 2012)
.......................................................................................6
Flo & Eddie, Inc v. Sirius XM Radio Inc.,No. 13 CIV. 5784
CM, 2015 WL 585641 (S.D.N.Y. Feb. 10,
2015).............................. passim
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Gramercy Advisors, LLC v. Coe,No. 13-CV-9069 VEC, 2014 WL
5847442 (S.D.N.Y. Nov. 12, 2014).................................3,
4
In re Facebook, Inc., IPO Sec. & Derivative Litig.,986 F.
Supp. 2d 524 (S.D.N.Y.
2014)......................................................................................11
In re Lehman Bros. Holdings, Inc.,No. 13-CV-2211(RJS), 2014 WL
3408574 (S.D.N.Y. June 30, 2014)
.....................................3
In re Trace Intl Holdings, Inc.,No. 04-cv-1295(KMW), 2009 WL
3398515 (S.D.N.Y.
2009)............................................9, 10
Jones v. Dirty World Entmt Recordings LLC,755 F.3d 398 (6th Cir.
2014)
...................................................................................................13
Klinghoffer v. S.N.C. Achille Lauro Ed AltriGestione Motonave
Achille Lauro inAmministrazione,921 F.2d 21 (2d Cir.
1990).....................................................................................................3,
9
Nederlandse Erts-Tankersmaatschappij, N.V. v. Isbrandtsen
Co.,339 F.2d 440 (2d Cir.
1964).....................................................................................................14
Pearson Educ., Inc. v. Liu,No. 1:08-cv-06152-RJH, 2010 WL 623470
(S.D.N.Y. Feb. 22, 2010)...................................11
Sec. Investor Prot. Corp. v. Bernard L. Madoff Inv. Secs.
LLC,No. M-47, 2010 U.S. Dist. LEXIS 3037 (S.D.N.Y. Jan. 11,
2010)...........................................4
Soler v. G & U, Inc.,86 F.R.D. 524 (S.D.N.Y. 1980)
.........................................................................................14,
15
Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P.,756 F.3d 73 (2d
Cir.
2014).....................................................................................................2,
9
DOCKETED CASES
N. Jersey Media Grp. Inc. v. Fox News Network, LLC and John Doe
Nos. 1-5,No.
1:14-cv-07630-ER.....................................................................................................
passim
Noble v. Nike,No. 13-cv-04371-LGS (S.D.N.Y. June 24, 2013)
.....................................................................8
STATUTES
17 U.S.C.
107................................................................................................................................6
28 U.S.C. 1292(b)
...............................................................................................................
passim
28 U.S.C. 1400(a)
.........................................................................................................................8
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OTHER AUTHORITIES
Bethany C. Stein, A Bland Interpretation: Why a Facebook Like
Should Be ProtectedFirst Amendment Speech, 44 Seton Hall L. Rev.
1255 (2014) ............................................6, 11
Dan Fletcher, How Facebook is Redefining Privacy, Time, May 20,
2010 ....................................8
John G. Browning, Facebook, Twitter and LinkedIn Oh My! The ABA
Ethics 20/20Commission and Evolving Ethical Issues in the Use of
Social Media, 40 N. Ky. L.Rev. 255 (2013)
.....................................................................................................................5,
6
Kathryn R. Brown, The Risks of Taking Facebook at Face Value:
Why the Psychology ofSocial Networking Should Influence the
Evidentiary Relevance of FacebookPhotographs, 14 Vand. J. Ent.
& Tech. L. 357
(2012)..............................................................8
Rebecca Tushnet, Fox Hurts America Yet Again, Losing Fair Use SJ
Motion(Feb. 13,
2015).........................................................................................................................10
Robert H. Jerry II and Lyrissa Lidsky, Public Forum 2.1: Public
Higher EducationInstitutions and Social Media, 14 Fla. Coastal L.
Rev. 55 (2012-13) .......................................5
Spencer Kuvin & Chelsea Silvia, Social Media in the
Sunshine: Discovery and Ethics ofSocial Media - Florida's Right to
Privacy Should Change the Analysis,25 St. Thomas L. Rev. 335
(2013).............................................................................................8
Wright & Miller, 16 Fed. Prac. & Proc. Juris. 3930 (3d
ed.)......................................................12
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PRELIMINARY STATEMENT
Defendants Jeanine Pirro and Fox News Network, LLC submit this
memorandum of law
in support of their motion to certify the Courts February 10,
2015 opinion and order [ECF No.
71] (the Order) for immediate appeal, under 28 U.S.C. 1292(b),
and for a stay pending
appeal in this and a related action.1 In the Order, the Court
denied Defendants motion for
summary judgment on their fair-use affirmative defense,
declining to find that Fox News use of
a historical photograph in a Facebook post commemorating the
anniversary of the September 11
attacks was substantially transformative. The Order thus
presents a controlling question of
law:
For fair use purposes, whether a secondary user may transform a
visualwork by placing that work in a new context and for a new
purpose, withoutsubstantial physical alterations.
In the Order, the Court implicitly answered the question no by
limiting the scope of its
inquiry on transformation; the Court assessed only the quantum
of physical alteration to the
photograph and the quantum and perceived quality of the
Defendants accompanying written
commentary. But a contrary answer from the Court of Appeals
would upend that legal
framework. And the answer is anything but clear. Litigants and
commentators alike have
struggled to identify the proper fair-use test for visual works,
and courts have grappled with the
apparent tensions in the Second Circuits fair use jurisprudence.
A square ruling from the Court
of Appeals would bring much-needed clarity to this murky area of
law.
Certification is therefore warranted because the Order involves
a controlling question of
law as to which there is substantial ground for difference of
opinion[,] and . . . an immediate
appeal from the order may materially advance the ultimate
termination of the litigation. 28
1 See N. Jersey Media Grp. Inc. v. Fox News Network, LLC and
John Doe Nos. 1-5, No. 1:14-cv-07630-ER (Baier). Together with this
motion, Defendants will file a separate motion for astay pending
appeal in the Baier docket.
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U.S.C. 1292(b). The question is controlling because reversal of
the Order would at the very
least inform the applicable standard for fair use in this
action. The more likely scenario,
however, is that reversal would terminate this action; a finding
that Fox News use was
transformative would tip the overall fair use analysis in
Defendants favor and result in a grant of
summary judgment. The controlling nature of this question is
further highlighted by its import
for other cases, including the follow-on Baier action brought by
Plaintiff against Fox News
based on a similar alleged infringement.
There is also substantial ground for difference of opinion on
this controlling question,
seen most clearly in the divide in the Court of Appeals own fair
use jurisprudence. On one side
of the fault line lie cases such as Swatch Grp. Mgmt. Servs.
Ltd. v. Bloomberg L.P., 756 F.3d 73,
84 (2d Cir. 2014) and Bill Graham Archives v. Dorling Kindersley
Ltd., 448 F.3d 605 (2d Cir.
2006), which hold that a person need not physically alter a
copyrighted workvisually or
otherwisein order for a use to be transformative. On the other
side, cases such as Cariou v.
Prince, 714 F.3d 694 (2d Cir. 2013), seem to place commanding
weight on the degree of visual
alteration. An immediate appeal would allow the Court of Appeals
to reconcile these precedents
and provide clear guidance for the parties and the public.
That guidance is sorely needed. The type of use at issue in this
action and in the pending
Baier matterthe use of visual works on social mediais
widespread. Under the Orders legal
analysis, the unique, transformative qualities of social media
are not taken into account when
considering a fair use defense. In other words, the uses
particular context does not factor into
the equation. But that finding has massive implications for the
millions of Americans who use
social media on a regular basis. If social medias new and
different aspects are not relevant to a
fair use analysis, then users who share copyrighted content are
far more likely to be infringing
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the copyrights of others. Such a regime would effectively
proscribe a wide swath of ongoing
online speech. The public has a strong interest in having these
fundamental free-speech concerns
addressed at the earliest possible juncture. The Court should
certify the Order for immediate
appeal to allow the Court of Appeals to address these core fair
use issues.
ARGUMENT
I. INTERLOCUTORY APPEAL IS WARRANTED TO DETERMINE THEAPPROPRIATE
LEGAL STANDARD FOR EVALUATING WHETHER USE OFA VISUAL WORK WAS
FAIR.
A district judge may certify an order for interlocutory appeal
if (1) such order involves a
controlling question of law (2) as to which there is substantial
ground for difference of opinion,
and (3) an immediate appeal from the order may materially
advance the ultimate termination of
the litigation. Flo & Eddie, Inc v. Sirius XM Radio Inc.,
No. 13 CIV. 5784 CM, 2015 WL
585641, at *1 (S.D.N.Y. Feb. 10, 2015) (certifying summary
judgment decision in copyright
action for interlocutory appeal). All three factors support
certification of the Order.
A. Whether A Visual Work May Be Transformed by Uses in New
Contexts andFor New Purposes, Rather Than By Physical
Transformation, Presents aControlling Question of Law.
A question of law is controlling if reversal of the [certified]
order would terminate the
action. Klinghoffer v. S.N.C. Achille Lauro Ed AltriGestione
Motonave Achille Lauro in
Amministrazione, 921 F.2d 21, 24 (2d Cir. 1990). A legal
question is also controlling if reversal
even though not resulting in dismissal, could significantly
affect the conduct of the action[,]
or[] the certified issue has precedential value for a large
number of cases. Gramercy Advisors,
LLC v. Coe, No. 13-CV-9069 VEC, 2014 WL 5847442, at *3 (S.D.N.Y.
Nov. 12, 2014) (quoting
In re Lehman Bros. Holdings, Inc., No. 13-CV-2211(RJS), 2014 WL
3408574, at *1 (S.D.N.Y.
June 30, 2014)); accord Flo & Eddie, 2015 WL 585641, at *1
(noting that certification is
warranted where the legal issue has precedential value for a
large number of cases). Whether a
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particular use of a copyrighted work is fair can be a
controlling question of law. Am.
Geophysical Union v. Texaco Inc., 802 F. Supp. 1, 28, 30
(S.D.N.Y. 1992), amended (Oct. 26,
1992) (Texaco).
Defendants do not ask this Court to certify the broad issue of
whether the complained-of
use was fair. Rather, Defendants request certification on the
narrower question of law
identified above: for fair use purposes, whether a secondary
user may transform a visual
work by placing that work in a new context and for a new
purpose, without substantial
physical alterations. That legal question may be answered by the
Court of Appeals without
having to conduct extensive analysis and review of the
underlying record. See Sec. Investor
Prot. Corp. v. Bernard L. Madoff Inv. Secs. LLC, No. M-47, 2010
U.S. Dist. LEXIS 3037, at *3
(S.D.N.Y. Jan. 11, 2010).
Resolution of the question would, at the very least,
significantly affect the conduct of the
action. Gramercy Advisors, 2014 WL 5847442, at *3. The Court
denied Defendants summary
judgment motion because it declined to contrast Plaintiffs
original purpose in creating its
photofor breaking newswith Fox News purpose in using
ithistorical remembrance and
discussion on social media. Rather, the Court focused on Fox
News physical alterations to the
photo and found them minimal. Order at 15-16. Likewise, the
Court evaluated the perceived
quality of Fox News commentary, id. at 15, and found it marginal
in light of the many other
similar commemorative messages on social media. Id. at 15-16.
But if the Court of Appeals
held that context and purpose were key in the first-factor
analysis for visual works, then the
Courts analysis would no longer follow: neither the quality nor
the ubiquity of Fox News
message speaks to the purpose of Fox News use, nor the context
in which it was made. That
alone renders the question controlling. See Flo & Eddie,
2015 WL 585641, at *1 (finding
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question of law controlling because reversal of this Courts
ruling might well require
reconsideration of the Courts fair use analysis).
Under these circumstances, however, reversal would likely compel
a finding that Fox
News use was transformative, and therefore fair. That is not
only because Fox News used
Plaintiffs photo for a different purpose from that for which it
was created; it is because Fox
News used Plaintiffs photo in an inherently transformative
context: on social media.
Social networking platforms like Facebook, Twitter, LinkedIn,
and YouTube have
caused a paradigm shift in how people communicate and share
information. John G. Browning,
Facebook, Twitter and LinkedIn Oh My! The ABA Ethics 20/20
Commission and Evolving
Ethical Issues in the Use of Social Media, 40 N. Ky. L. Rev.
255, 255 (2013) (Browning). The
old paradigm in traditional methods of expression resembled a
one-way street: the speaker
communicated its chosen message to an audience that passively
received the message. The new
paradigm, exemplified by social media, is different. In social
media, the traditional, one-way
flow of expression gives way to an ongoing exchange of views and
information. Rather than
playing a single, static role, social media users join the fray
as both speakers and listeners, as
both authors and readers, all at once.
Facebook in particular highlights this ongoing shift to
interactive methods of
communication. From an objective standpoint Facebook pages
operate as digital spaces
where public conversations can occur; the communicative nature
of such pages is apparent
from the structure of the Facebook wall and the devices on the
pages that promote postings
and comments. Robert H. Jerry II and Lyrissa Lidsky, Public
Forum 2.1: Public Higher
Education Institutions and Social Media, 14 Fla. Coastal L. Rev.
55, 72 (2012-13). Indeed, [b]y
providing these various channels of communication, Facebook
strives to create an online
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environment that facilitates communication, social connection,
and the sharing of ideas, and in
which [u]sers can engage in debate and advocate for the
political ideas, parties, and candidates of
their choice. Bethany C. Stein, A Bland Interpretation: Why a
Facebook Like Should Be
Protected First Amendment Speech, 44 Seton Hall L. Rev. 1255,
1260 (2014) (Stein). Such a
constant sharing of ideas is compelled by the architecture of
the website; every Facebook post
is presented for public comment and debate.
Expression on social media, and on Facebook in particular, is
thus inherently intertwined
with comment and criticism, purposes that the Copyright Act sets
forth as presumptively
fair. See 17 U.S.C. 107. Of course, at the time that the 1976
Copyright Act was drafted, social
media had not yet been conceived of, much less adopted for
everyday use by a majority of
Americans. See, e.g., Browning, 40 N. Ky. L. Rev. at 256 (noting
that as of 2011, Sixty five
percent of all adult Americans have at least one social
networking profile).2 But unlike the
legacy media known to Congress at the time, social media is
transformative by design. Every
post is an invitation for others to comment and criticize; every
message and image invites
reciprocal expression. A context-sensitive test for
transformativeness, then, will necessarily
account for the fact that Facebook and other social media sites
are by design used for purposes of
comment and criticism, and such a test will inevitably favor
uses on social media.
The Court of Appeals need not address the particular features of
the Pirro Facebook page
in order to offer broad and helpful guidance as to how the
context of social media informs the
first-factor fair use analysis. But Texaco belies any suggestion
that the Court of Appeals may
never consider facts from the record below on an interlocutory
appeal. Indeed, in Texaco, Judge
2 See also Facebook, Inc. v. Pedersen, 868 F. Supp. 2d 953, 956
(N.D. Cal. 2012) (Facebookprovides online networking services to
more than 500 million monthly users; these servicesinclude allowing
users to create profiles, upload photos and videos, and connect
with others).
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Leval certified the entire fair use issuefindings of fact and
allfor interlocutory appeal. 802
F. Supp. at 30. The Court of Appeals accepted the appeal and
analyzed the merits of the fair use
question in depth, including full consideration of record
evidence peculiar to the specific parties.
See Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 914 (2d
Cir. 1994) (affirming result
below [t]hough not for precisely the same reasons stated by the
district court); see also n.6
below.
The question presented by Fox News is thus controlling for
1292(b) purposes. A
finding that Fox News use was transformative would tip the
overall fair use analysis in
Defendants favor because the more transformative the new work,
the less will be the
significance of other factors, like commercialism, that may
weigh against a finding of fair use.
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). A
finding of transformativeness
would not only flip the first statutory factor in favor of fair
use, but also the fourth because
transformative uses lessen the likelihood of cognizable market
harm. See id. at 591 (when . . .
the second use is transformative, market substitution is at
least less certain, and market harm may
not be so readily inferred.); see also Bill Graham Archives v.
Dorling Kindersley Ltd., 448 F.3d
605, 615 (2d Cir. 2006) (Since [Defendants] use of [Plaintiffs]
images falls within a
transformative market, [Plaintiff] does not suffer market harm
due to the loss of license fees.).3
Finally, the question of law is also controlling because it has
precedential value for many
cases. That includes the Baier action Plaintiff has brought
against Fox News based on a similar
3 The Courts lengthy discussion of commerciality under the first
fair use factor and its treatmentof the fourth fair use factor were
expressly tied to its finding that Fox News had not
sufficientlychanged the aesthetic of the original work to support a
finding of transformativeness. Order at17-18.
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alleged infringement.4 But it goes further. Both Pirro and Baier
are part of Plaintiffs larger
plan to bring infringement suits based on the use of its photo
on social media, see Hanswirth
Decl. Exhibits A, Q, R, ECF No. 32, and is entirely likely that
Plaintiff will bring more actions in
this district based on similar alleged infringements. Nor is
Plaintiff uniquely situated, as cases
involving the alleged infringement of photos on social media
continue to be filed in this Court.
See, e.g., Complaint & Demand for Jury Trial, Noble v. Nike,
No. 13-cv-04371-LGS (S.D.N.Y.
June 24, 2013), ECF No. 1. And the sheer volume of activity on
social media all but guarantees
that fair use questions will recur. To consider but a few
metrics:
The average Facebook user creates ninety pieces of content each
month.Kathryn R. Brown, The Risks of Taking Facebook at Face Value:
Why thePsychology of Social Networking Should Influence the
Evidentiary Relevance ofFacebook Photographs, 14 Vand. J. Ent.
& Tech. L. 357, 360 (2012).
As of five years ago, Facebook users uploaded nearly one billion
photos toFacebook per week. See Dan Fletcher, How Facebook is
Redefining Privacy,Time, May 20, 2010, available
athttp://www.time.com/time/magazine/article/0,9171,1990798,00.html
(last visitedMarch 19, 2015).
Over 700 billion minutes per month are spent on Facebook, twenty
millionapplications are installed per day, and over 250 million
people interact withFacebook from outside the official website on a
monthly basis, across two millionwebsites. In just twenty minutes
on Facebook, one million links are shared,almost two million friend
requests are accepted, and almost three millionmessages are sent.
Spencer Kuvin & Chelsea Silvia, Social Media in theSunshine:
Discovery and Ethics of Social Media Florida's Right to
PrivacyShould Change the Analysis, 25 St. Thomas L. Rev. 335, 338
(2013).
4 On March 16, 2015, Fox News submitted a pre-motion letter in
connection with a plannedmotion to dismiss the Baier action for
improper venue or transfer the action. The prospect ofsuch a motion
does not detract from the importance of a legal ruling from the
Court of Appealson the proper standard for transformativeness. Fox
News contemplated motion is based on thefact that the John Doe
defendants are not subject to personal jurisdiction in this
district, makingvenue improper under 28 U.S.C. 1400(a). Plaintiff
could file an amended pleading removingthe John Doe defendants as
parties, in which case venue would be proper in this district. Even
ifthe Baier action were ultimately transferred to another district
(or re-filed there), any precedentfrom the Court of Appeals on this
novel issue would be highly persuasive.
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There are thus numerous existing actions involving alleged
infringements on social
media, and more on the way. Receiving authoritative guidance
from the Second Circuit will
help resolve those actions quickly and consistently. Flo &
Eddie, 2015 WL 585641, at *2.
B. There is Substantial Ground for Difference of Opinion Over
TheAppropriate Standard for Transformation of Visual Works.
There is a substantial ground for difference of opinion
regarding the proper standard
for evaluating transformation of visual works because there is
conflicting authority on the
issue. In re Trace Intl Holdings, Inc., No. 04-cv-1295(KMW),
2009 WL 3398515, at *3
(S.D.N.Y. 2009) (citing Klinghoffer, 921 F.2d at 25).
In Defendants view, the Court failed to recognize the
applicability of Bill Graham,
perhaps because the Court of Appeals opinions in this area have
not yet been fully synthesized.
As noted above, the leading cases hold that a person need not
physically alter a copyrighted
workvisually or otherwisein order for a use to be
transformative. See Authors Guild, Inc. v.
Hathitrust, 755 F.3d 87, 96 (2d Cir. 2014) (Added value or
utility is not the test: a
transformative work is one that serves a new and different
function from the original work and is
not a substitute for it.); Swatch, 756 F.3d at 84 (audio work);
Bill Graham, 448 F.3d at 609
(visual work). The Court, however, relied on Cariou and other
similar precedents addressing
visual works only. See Cariou, 714 F.3d at 711 (finding minimal
[visual] alterations
insufficient despite artist mov[ing] the work in a different
direction); see also Blanch v. Koons,
467 F.3d 244, 253 (2d Cir. 2006) (finding work transformative
based on changes of its colors, .
. . the medium, the size of the objects pictured and more).
The apparent conflict between the Bill Graham and the Cariou
modes of analysis has
long been noted by commentators. As one of the Nations leading
copyright scholars has
observed, Cariou and other cases the Court cited in its
transformativeness analysis, despite
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speaking of purpose, seem[ ] to require transformation of
content, contrary to the aims of much
appropriation art. See, e.g., Rebecca Tushnet, Fox Hurts America
Yet Again, Losing Fair Use
SJ Motion, Feb. 13, 2015, available at
http://tushnet.blogspot.com/2015/02/fox-hurts-america-
yet-again-losing-fair.html (last visited Mar. 18, 2015). The
presence of this conflicting
authority means that appellate review is particularly
appropriate. Certification would allow the
Court of Appeals to reconcile its divergent lines of authority
and clarify the test for
transformativeness.
A substantial ground for difference of opinion also exists
within the meaning of
1292(b) where there is an absence of on-point authority. See In
re Trace, 2009 WL 3398515,
at *3; see also Atl. Holdings, Inc. v. Sovereign Wealth Fund
Samruk-Kazyna JSC, No. 12-cv-
8852 (JMF), 2014 WL 1881075, at *1 (S.D.N.Y. May 9, 2014)
(granting certification in part
because of the somewhat unsettled and evolving nature of the
law). Here, there is an absence
of on-point authority for one aspect of Defendants proposed
questionthe proper standard for
evaluating context in the modern media landscape. As described
above, the relevant context of
the allegedly infringing useas part of a global conversation
commemorating the anniversary of
the September 11 attacks occurring on social mediasupports a
finding that Defendants use
was transformative as a matter of law.5
While the Court did not address this particular argument in the
Order, it did note that Fox
News use involve[d] the secondary use of a secondary use, Order
at 15, and inferred that Fox
News posting on Facebook was less transformative as a result.
Id. Notably, in drawing that
inference, the Court observed that [t]he Court has not found a
case addressing similar facts.
Id. at 15 n.12. But that fact pattern is utterly commonplace on
social media, where once the
5 See also Memorandum of Law in Support of Motion for Summary
Judgment at 13-17 [ECFNo. 35].
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words and link [of a Facebook post] are posted, the users
friends can see it and can therefore
discuss it in the form of wall posts and comments, opening up a
forum for debate and an
exchange of ideas. Stein, 44 Seton Hall L. Rev at 1270. Facebook
and other social networks
are replete with discussion and debate regarding the meaning,
merits, and import of copyrighted
content, including secondary uses of secondary uses.
The Court of Appeals has never had occasion to pass upon the
question of what role, if
any, the social aspects of social media play in the fair use
analysis. The absence of on-point
authority regarding this question ensures that obtaining the
Court of Appeals guidance on the
proper role of purpose and context for visual works in the
first-factor analysis would be that
much more helpful.
C. Certification Would Materially Advance the Termination of
This Litigationand Promote Judicial Economy.
An appeal may materially advance the ultimate termination of the
litigation if that
appeal promises to advance the time for trial or to shorten the
time required for trial. In re
Facebook, Inc., IPO Sec. & Derivative Litig., 986 F. Supp.
2d 524, 531 (S.D.N.Y. 2014)
(internal citation omitted). The possibility of a reversal that
would terminate the litigation is
enough, see Capitol Records, LLC v. Vimeo, LLC, 972 F. Supp. 2d
537, 554 (S.D.N.Y. 2013),
andas discussed abovereversal of the Order would likely lead to
summary judgment for
Defendants, ending the case. See also Pearson Educ., Inc. v.
Liu, No. 1:08-cv-06152-RJH, 2010
WL 623470 (S.D.N.Y. Feb. 22, 2010) (finding third prong
satisfied because further motion
practice, discovery, or trial in this matter would likely be
rendered moot should the Circuit find
that it disagrees with this Courts answer to the [certified]
question.).
Moreover, any future phases of this litigationincluding a trial
or potential settlement
before trialwould be executed with greater speed and certainty
if the Court of Appeals
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provides direction on the key legal issue in the action. Cf. Flo
& Eddie, 2015 WL 585641, at *4
(noting that clarity from appellate ruling would necessarily
spur negotiation). Appellate
guidance of any type would also inform consideration of the
Baier matter, in which Fox News
also anticipates advancing a similar fair use defense. These
efficiencies counsel in favor of an
immediate appeal.
D. The Public Interest Strongly Favors Interlocutory Appeal
While only the three statutory factors listed in 1292(b) need be
satisfied, courts may
also consider whether an interlocutory appeal would be in the
public interest. See Texaco, 802 F.
Supp. at 30; Allstate Ins. Co. v. Elzanaty, No.
11-cv-3862(ADS)(ARL), 2013 U.S. Dist. LEXIS
70579, at *12-13 (E.D.N.Y. May 16, 2013) (granting certification
because, in part, [t]he Court
believes that it will be of significant value for the parties
here, and others similarly situated, to
have a dispositive answer to this question); Wright &
Miller, 16 Fed. Prac. & Proc. Juris.
3930 (3d ed.) (Section 1292(b) factors best understood as
directing courts to consider the
probable gains and losses of immediate appeal). At least two
strong public interests would be
furthered by an interlocutory appeal in this matter: (1)
protection of First Amendment interests;
and (2) offering clarity in the emerging area of Internet
law.
First, interlocutory review is warranted because the Order
implicates fundamental free-
speech questions. Defendants face the prospect of a lengthy and
expensive trial on their fair-use
defense, the possibility of which may chill Defendants and
others from using copyrighted content
on social media to discuss issues of public concern. The Sixth
Circuit recently held that in cases
involving the speech-chilling threat of the hecklers veto,
district courts should certify
controlling questions of law at an earl[y] stage of litigation.
Jones v. Dirty World Entmt
Recordings LLC, 755 F.3d 398, 417 (6th Cir. 2014).
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The Sixth Circuits explicit statement regarding the importance
of certifying important
speech-related issues for appeal comports with the practice of
other courts. For example, one of
the Supreme Courts most important speech-related decisions in
recent years reached the Court
after a district court certified (and the Court of Appeals for
the Third Circuit accepted) an
interlocutory appeal under 1292(b). See Bartnicki v. Vopper, 532
U.S. 514, 535 (2001)
(holding that a strangers illegal conduct does not suffice to
remove the First Amendment shield
from speech about a matter of public concern). Indeed, in that
case, the district court certified
its order denying summary judgment for the defendants, in part
because its ruling involved the
application of free speech principles to federal and
Pennsylvania wiretapping statutes. After
accepting the interlocutory appeal, the Third Circuit reversed
the district courts decision and
ordered summary judgment for the defendants. Bartnicki v.
Vopper, 200 F.3d 109, 129 (3d Cir.
1999). The Supreme Court then affirmed. Bartnicki, 532 U.S. at
535. The Court should take a
similar course and follow the sound guidance of the Sixth
Circuit.
Second, interlocutory review is appropriate because of the
strong public interest in
having prompt appellate review of the fair use issue. Texaco,
802 F. Supp. at 30. The public
interest in Texaco was strong because the allegedly infringing
usecopying and circulating of
scientific journal articles by corporate employeeswas extremely
widespread. Id. As a
result, the parties had shared interests in being able to
determine whether that widespread
practice was fair use. Id.
The logic of Texaco applies with equal force here because the
use of copyrighted images
on social media is as widespread as the copying of journal
articles by corporate employees, if not
moreso.6 As described above, this is hardly surprising; social
medias function is to encourage
6 At a hearing on February 26, 2015, counsel for Plaintiff
attempted to distinguish Judge Levalscertification of the fair use
question in Texaco on the basis that the case involved an
interlocutory
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the sharing of and discussion about the trends of the day,
including popular copyrighted content.
But the sheer volume of content shared on social media has
created an unprecedented
opportunity for potential, if unwitting, infringements. It is
thus crucially important that the
public understand how and to what extent fair use principles
apply to new media, so that the
public can govern itself accordingly. An interlocutory appeal
would provide needed clarity in
this emerging area of law.
II. A STAY OF PROCEEDINGS IN THE DISTRICT COURT
PENDINGINTERLOCUTORY APPEAL WOULD FURTHER THE INTERESTS OFJUSTICE
AND PROMOTE EFFICIENCY.
In addition to certifying the Order for interlocutory appeal,
the Court should stay
proceedings in this action and the Baier matter pending
disposition of the appeal. As Judge
McMahon recently observed in issuing a stay pending
interlocutory appeal, [t]he power to stay
proceedings is incidental to the power inherent in every court
to control the disposition of the
causes on its docket with economy of time and effort for itself,
for counsel and for litigants. Flo
& Eddie, 2015 WL 585641, at *4 (quoting Nederlandse
Erts-Tankersmaatschappij, N.V. v.
Isbrandtsen Co., 339 F.2d 440, 441-42 (2d Cir. 1964)). Indeed,
the authority to manage a docket
is an aspect of [a courts] broad and inherent power over its own
process, to prevent abuses,
oppressions and injustice, so as not to produce hardship, and to
do substantial justice. Flo &
Eddie, 2015 WL 585641, at *4 (quoting Soler v. G & U, Inc.,
86 F.R.D. 524, 526 (S.D.N.Y.
1980)). In issuing a stay, a court must weigh competing
interests and maintain an even
balance. Soler, 86 F.R.D. at 526 (citation omitted).
appeal following a bellweather trial, not a summary judgment
decision. See Feb. 26, 2015 Tr.at 11-12. But any differences in
procedural posture between this action and Texaco areirrelevant.
Texaco establishes that legal questions relating to fair use
(including the entire fairuse issue) are properly certified for
interlocutory appeal so long as the statutory factors aresatisfied
and the public interest warrants an appeal. Texaco, 802 F. Supp. at
29-30. Those sameconditions are present here.
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Here, staying proceedings in the district court pending appeal
is the most prudent and
efficient course. Absent a stay, both parties would be forced to
expend unnecessary time and
money on discovery and additional motion practice when the
dispositive issue in the casefair
usecould be resolved on appeal. That applies doubly for Baier,
where discovery has not yet
begun. Precisely to serve the goals of efficiency and judicial
economy, this Court has twice
stayed further proceedings while it considered the fair use
question. At a hearing on July 17,
2014, the Court held further motion practice and discovery in
abeyance pending resolution of
Defendants motion for summary judgment on fair use. See July 17,
2014 Tr. at 34:19-23
(holding further motion practice and discovery in abeyance due
to concern[ ] about the growing
scope of this case and because the fair use issue is potentially
dispositive). At a subsequent
hearing on October 28, 2014, the Court stayed the Baier action
in order to advance the
efficienc[ies], both for the Court and for the parties. Oct. 28,
2014 Tr. at 11:1-2.
Plaintiff would suffer no prejudice or hardship as a result of a
stay. In the recent Flo &
Eddie order, Judge McMahon noted that the plaintiff would not
suffer a substantial hardship
from a stay because [i]t loses not a dimes worth of potential
damages by holding up until the
legal issue is resolved. Flo & Eddie, 2015 WL 585641, at *
4. Judge McMahon also noted that
the plaintiffs established history of tolerating alleged
infringements belied any suggestion that
non-monetary harm would result from an appeal. See id. (noting
that plaintiff has tolerated
public performances of sound recordings in which it holds common
law copyrights, by both
digital and terrestrial broadcasters, for decades). Just so
here: Plaintiffs potential damages
remain unaffected by any delay, and Plaintiff accepted the
widespread infringement of its photo
for nearly a decade. See, e.g., Reply Memorandum of Law in
Further Support of Motion for
Summary Judgment [ECF No. 63], at 9-10. Given that lengthy
period of inaction, Plaintiff
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cannot plausibly claim that an appeal would work any harm upon
it. If anything, Plaintiff would
benefit from additional appellate guidance on the fair use
question: its campaign against
purported infringers on social media is premised on the belief
that those uses are just like uses in
any other medium. If that is not so, then Plaintiff may well
reconsider its legal strategy.
CONCLUSION
For the foregoing reasons, the Court should (1) certify the
Order for interlocutory appeal
and (2) stay proceedings in the district court in this action
and in the Baier action pending appeal.
Dated: New York, New York HOGAN LOVELLS US LLPMarch 19, 2015
By: /s/ Dori Ann HanswirthDori Ann Hanswirth
[email protected] S. Boyer
[email protected] A. Fleming
[email protected] C. Wilson
[email protected] Third AvenueNew York, New York
10022tel: (212) 918-3000fax: (212) 918-3100Attorneys for
Defendants
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CERTIFICATE OF SERVICE
I, Dori Ann Hanswirth, Esq., hereby certify that on March 19,
2015, I caused to be servedtrue and correct copies of: (1)
Defendants Motion For Certification of February 10, 2015 Orderfor
Interlocutory Appeal Under 28 U.S.C. 1292(b) and For Issuance of
Stay Pending Appeal;and (2) a memorandum of law in support of the
same, via electronic means (with Plaintiffscounsels written consent
pursuant to Rule 5(b)(2)(E) of the Federal Rules of Civil
Procedure)upon:
DUNNEGAN & SCILEPPI LLCWilliam Dunnegan
[email protected] Weiss
[email protected] Fifth AvenueNew York, New York
[email protected] for Plaintiff
I certify that all participants in the case are registered
CM/ECF users and that service willbe accomplished by the CM/ECF
system.
Dated: March 19, 2015/s/ Dori A. Hanswirth /DORI ANN
HANSWIRTH
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