SDNY Clothes-Minded Against Elie Tahari’s Copyright Infringement Defenses

Iantosca v. Elie Tahari Ltd., No. 1:19-cv-04527 (S.D.N.Y. Sept. 18, 2020). Plaintiff Mark Iantosca, a professional photographer, took a photo of digital content creator, Lin Niller Huynh, wearing Tahari clothing, and thirteen days later Iantosca uploaded the image to his Facebook and Twitter accounts. Tahari then posted the image to its social media account with the caption “@linhniller caught us in our footsteps wearing head to toe #ElieTahari. We love how she styled the whole look” and attributed credit to “Mark Alan Iantosca for @BoF.” Tahari did not seek permission from Iantosca or otherwise obtain a license to post the image. On April 28, 2019 Iantosca applied for a copyright registration, which was subsequently granted, and the image was registered as Copyright Registration Number VA 2-150-161.

On May 16, 2019, Iantosca filed a lawsuit against Tahari for copyright infringement. In response, Tahari argued that Iantosa was not the owner of a valid copyright because he failed to obtain a registration for the image prior to filing the lawsuit[1] as a screenshot of the United States Copyright Office database showed that Iantosca applied for the copyright on April 28, 2019, but the screenshot did not specify when Iantosca received the certificate of registration or registration number. The Court rejected this argument and found that Iantosca’s proof of registration was the inclusion of a copyright registration number in his complaint.

Tahari also raised three affirmative defenses, none of which the court found persuasive:

• First, Tahari argued that reposting of the image constituted permissible fair use. The Court found the four fair use factors in Section 107[2] weighed against Tahari as Tahari failed to show its use was anything other than commercial; Iantosca’s photograph was a typical “creative” work; Tahari reposted the image without modification; and Tahari’s reposting invaded Iantosca’s statutory right to license his copyrighted work to others for reproduction.

• Second, Tahari argued that its use of the image was de minimis as reposting is commonplace on social media – an argument the Court quickly dispensed of, stating “there is nothing trivial about a business utilizing a professional photographer’s work to promote its products.”

• Third, Tahari argued it did not infringe because it credited Iantosca in the caption and hired the model to wear its clothing. The Court rejected this argument because attribution is not a defense to copyright infringement, nor did the model’s wearing of Tahari clothes have any bearing on copyright infringement liability.

Tahari joins other fashion designers, such as Marc Jacobs International[3], who have been sued for copyright infringement over postings to their social media accounts. This opinion serves as an important reminder for companies to obtain permission or a license prior to posting a copyrighted image, including an image that displays their good(s) or service(s). Companies cannot escape copyright infringement liability by merely tagging or crediting the person who owns the copyright.

The same lesson applies to celebrities, who, despite being the subject of a photo, do not own rights to photos taken by the paparazzi. Photo agencies and photographers continue to aggressively pursue copyright infringement lawsuits against celebrities, such as Jennifer Lopez[4] LeBron James[5], Jessica Simpson[6], Ariana Grande[7], Khloé Kardashian[8], Justin Bieber[9], and, most recently, Houston Texans quarterback Deshaun Watson[10].

[1] A related argument was successfully raised by model Gigi Hadid in a copyright infringement lawsuit over her posting of an image of herself to her Instagram account. In Xclusive-Lee Inc. v. Hadid, No. 1:19-cv-00520 (E.D.N.Y. July 18, 2019), the court granted Hadid’s motion to dismiss the copyright infringement lawsuit because the plaintiff didn’t allege it had been formally granted registration of a copyright at the time it filed its complaint; rather, the complaint alleged that at the time it filed the lawsuit it had only applied for a copyright.

[2] The four factors are: (1) the purpose and character of the use, including whether such use is of a commercial nature of or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

[3] Christopher Peterson v. Marc Jacobs Int’l, No. 1:19-cv-06121 (S.D.N.Y.).

[4] Splash News and Picture Agency, LLC v. Lopez, No. 2:2019-cv-08598 (C.D. Cal.).

[5] Mitchell v. James, et al., No. 1:20-cv-02374 (S.D.N.Y.).

[6] Splash News and Picture Agency, LLC v. Simpson, et al, No. 2:17-cv-591 (C.D. Cal.).

[7] Robert Barbera v. Grandari, Inc., et al., No. 1:2019-cv-04340 (S.D.N.Y.).

[8] Xposure Photos (UK) Ltd. v. Kardashian, et al., No. 2:17-cv-03088 (C.D. Cal.).

[9] Barbera v. Justin Bieber Brands LLC, et al., No. 1:19-cv-09532 (S.D.N.Y.).

[10] Sprecher v. Watson, No. 4:20-cv-03196 (S.D. Tex.).