Last month, Google, Inc. responded to the Third Amended Complaint of Jim Marshall Photography, LLC against Thierry Guetta, Guetta’s affiliated company It’s a Wonderful World, Inc., Google, Inc. and John Doe defendants in the United States District Court for the Central District of California.  Google denied the claims of copyright infringement and contributory and vicarious copyright infringement against it.  Among other defenses, Google claims that it is protected by fair use, freedom of speech and the Digital Millenium Copyright Act safe harbors under 17 U.S.C. § 512.  The complaint, originally filed in April 2012 but amended most recently on October 1st, alleges that graphic artist Thierry Guetta—a/k/a “Mr. Brainwash” and subject of the Banksy-directed documentary “Exit Through the Gift Shop”—created copies of iconic photographs of Jimi Hendrix, John Coltrane, Dizzy Gillespie and others without the permission of Jim Marshall Photography LLC, the successor-in-interest to the deceased photographer Jim Marshall.  It identifies six images owned by the Plaintiff for which it alleges that Mr. Guetta and others created derivative works by adding elements of color and design which it then distributed and offered for sale.  The pictures below are one example from the complaint. 

The newly amended complaint alleges further that these defendants authorized Google to use Guetta’s Coltrane and Hendrix photos as a backdrop to promote its product “Google Music” at its launch party and that Guetta and Google entered into an agreement with regard to the same.  It states that the event was live-streamed over YouTube and that Guetta’s photographs were published, displayed and offered for sale over the Internet. The allegations of contributory and vicarious liability are against Google for allegedly having knowledge of the infringing nature of the works and contributing to the infringement by allowing guests to view and photograph the backdrop at the event and for streaming the event on Google-owned YouTube.  Among other responses, including that there was no copyright infringement and/or fair use, Google denies the allegations that it had knowledge of infringement or control over those at the event.

The renewed complaint came after a motion to dismiss was denied in part and granted in part by Judge James Otero without oral argument on September 11, 2012 ( see court minutes).  Google had argued that in the earlier complaint, the Plaintiffs did not properly allege that Google had knowledge of infringing activity, as they alleged only that Google “should have known.”  Google argued that, to be liable for contributory infringement, a party must have knowledge of infringing activity and knowledge that the activity infringes.  The District Court noted that the standard for “knowledge” articulated by the Ninth Circuit in Napster, that a secondary infringer must “know or have reason to know” of direct infringement qualified by the fact that the secondary infringer must have “specific information which identifies infringing activity,” has not been directly overturned by the Supreme Court in the 2005 Grokster decision or the Ninth Circuit’s 2007 decision in Perfect 10, Inc. v., Inc.  The court ultimately held that it is clear that “specific information on infringing activity is required  . . . if not actual knowledge.”  The Court found the allegations of “knew or should have known” were insufficient, and that the Plaintiff could replead to allege that Google “knew,” as reflected in the new complaint. 

On vicarious liability, Google argued that to be liable for vicarious liability, a party must have “the right and ability to supervise the infringing conduct” as well as “a direct financial interest in the infringing activity.”  The court found that liability based on Google’s event photographers’ photography of the event was possible if the Plaintiffs can successfully show the elements, but that Google could not have had control over resale of pictures online by other photographers on the facts alleged.  It also found that the promotion of the event could constitute a financial benefit.  In the renewed complaint, the plaintiff specifically alleges that “[d]efendants had the right and ability to prohibit the photographers infringing activities, including both photography at the event, and any subsequent use, including the subsequent sale of pictures online.”