Foster v. Lee
2015 U.S. Dist. LEXIS 22590, 93 F.Supp.3d 223, 2015 WL 786990 (2015)
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Rule of Law:
For a work to qualify as a 'joint work' under copyright law, there must be mutual intent for joint authorship and each contribution must be independently copyrightable; for a 'work for hire,' the creator must be an employee or an independent contractor with a written agreement. Affirmative defenses, such as 'license,' must be affirmatively pleaded in the answer or risk forfeiture, especially if their late introduction prejudices the opposing party by limiting discovery.
Facts:
- Lelanie Foster, a freelance photographer, was hired by Lashpia Corporation, doing business as JJ Eyelashes, to produce a photograph of a model wearing JJ Eyelashes for an advertising campaign.
- Foster conducted photo shoots on November 27 and December 4, 2012, initially understanding the resulting prints would be used in physical salons, a promotional calendar, or on Lashpia's website.
- Foster verbally agreed to allow Lashpia to use a single retouched version of one of her photographs in Allure magazine, with her understanding that the advertisement would be small in scale.
- May Lee (President and CEO) and Ericka Rodriguez (an employee) of Lashpia were present at the photo shoot and provided input, while Lashpia supplied the space and the model.
- The photograph appeared in the March 2013 Manhattan subscriber edition of Allure magazine and on the PR Newswire digital billboard in Times Square, which was broader in scale and scope than Foster anticipated.
- Foster became concerned about the expanded use and reached out to Rodriguez to express her concern.
- After a series of phone conversations, Lashpia made clear it would not pay Foster any additional fees for its use of the photograph.
- Foster registered a copyright in the photograph on May 9, 2013.
Procedural Posture:
- Plaintiff Lelanie Foster filed an action against May Lee, Ericka Rodriguez, and Lashpia Corporation, alleging copyright infringement in federal district court.
- Defendants filed an Answer to the Amended Complaint, pleading affirmative defenses of 'work for hire' and 'joint work.'
- Foster moved for partial summary judgment on the issue of Defendants' liability for infringement, specifically challenging their pleaded affirmative defenses.
- Defendants moved for partial summary judgment on Foster's entitlement to statutory damages and attorney's fees, and on the issue of May Lee's and Ericka Rodriguez's personal liability for infringement.
- In their reply memorandum of law responding to Foster's motion for partial summary judgment, Defendants raised, for the first time, the affirmative defense that they had an implied license for their use of Foster’s photograph.
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Issue:
Does a defendant in a copyright infringement suit fail to establish the affirmative defenses of 'joint work' or 'work for hire' if there is no evidence of mutual intent for joint authorship, independently copyrightable contributions, or an employment relationship, and is an unpleaded 'license' defense forfeited when first raised late in litigation, causing prejudice to the plaintiff?
Opinions:
Majority - J. Paul Oetken
No, a defendant fails to establish the affirmative defenses of 'joint work' or 'work for hire' under such circumstances, and an unpleaded 'license' defense is forfeited when raised late and prejudicing the plaintiff. The court granted Foster's motion for summary judgment on Lashpia Corporation's liability for infringement, finding that Defendants failed to establish their affirmative defenses. For 'joint work,' the court found no evidence that the parties mutually intended to be joint authors, which requires authors to 'entertain in their minds the concept of joint authorship,' nor that Lee’s and Rodriguez’s contributions (e.g., mere selection of subject matter) were independently copyrightable. The fact that Rodriguez sought Foster's permission for the Allure use further suggested Foster was the sole author. For 'work for hire,' the court determined Foster was an independent contractor, not an employee, and because the work was a photograph and there was no written agreement, the work-for-hire doctrine did not apply. Applying the Aymes v. Bonelli factors (hiring party's control, skill required, benefits, tax treatment, right to assign projects), Defendants offered no evidence to contest Foster's independent contractor status. The court denied Defendants' attempt to raise the affirmative defense of 'license' (oral permission) because it was not pleaded in their Answer and was only introduced in their reply memorandum, causing significant prejudice to Foster who had focused discovery on the pleaded defenses. The court noted that an affirmative defense, once forfeited, is excluded from the case. The court also denied Defendants' motion for summary judgment regarding Foster's entitlement to statutory damages and attorney's fees, finding a genuine dispute of material fact as to the date of first publication, which is critical under 17 U.S.C. § 412(2). Finally, the court denied Foster's motion for summary judgment on the personal liability of May Lee and Ericka Rodriguez, finding that while a reasonable juror could conclude Lee was personally liable (due to her CEO role, 'right and ability to supervise,' and 'direct financial interest'), such a finding was not required, and there was insufficient evidence in the record to establish Rodriguez's personal liability.
Analysis:
This case strongly reinforces the high bar for successfully asserting 'joint work' or 'work for hire' defenses in copyright infringement suits, particularly emphasizing the strict requirements for mutual intent and independently copyrightable contributions, and the necessity of written agreements for independent contractor works. Procedurally, it serves as a critical reminder of the importance of pleading all affirmative defenses diligently and early in litigation, as courts are disinclined to excuse forfeiture where late introduction causes prejudice to the opposing party by disrupting discovery and case preparation. The ruling also clarifies the standard for individual liability within a corporate context, requiring evidence of both supervisory capacity and direct financial interest.
