IP Industry Summary: Dispute Over Eyelash Photograph Leads Southern District Of New York To Examine Copyright Issues

Foster v. Lee, No. 13-CV-5857(JPO), 2015 WL 786990, slip op. (S.D.N.Y. Feb. 25, 2015)

Lelanie Foster, a freelance photographer, sued Lashpia Corporation doing business as JJ Eyelashes ("Lashpia"); May Lee, Lashpia's President and CEO; and Ericka Rodriguez, a former Lashpia employee, for copyright infringement. Lashpia sells eyelash extensions and operates salons at which customers can buy the lashes and have them applied. Lashpia hired Foster to photograph a model wearing its lashes.

Foster conducted two photo shoots for Lashpia, which she understood would produce photographs to be used in Lashpia's salons, on its website, and in a promotional calendar. Foster later agreed to allow Lashpia to use one of the photographs in an advertisement in Allure magazine, which she understood would be a small scale ad. Lee contended, however, that Foster "agreed that the photograph would be the property of Lashpia Corporation with the understanding that Lashpia intended to use . . . the photograph for its marketing campaign." The terms of the agreement were not written.

When the photograph appeared in Allure magazine, Foster became concerned about the large scale of the advertisement. Around this time, she also became aware of a billboard in Times Square displaying her photograph. She contacted Lashpia regarding her concerns, and Lashpia indicated that it would not pay any additional fees for the use. Following this indication from Lashpia, Foster registered a copyright in the photograph and sued Lashpia, Lee, and Rodriguez for copyright infringement. Defendants asserted the affirmative defenses that the photograph was a joint work, a work for hire, or was licensed. Foster moved for summary judgment on the issue of defendants' liability on the ground that all of these defenses must fail. Defendants conceded that "they infringed [Foster's] copyright if the photograph [was] not a joint work, a work for hire, or the subject of an unrestricted license." Defendants also moved for summary judgment on the issue of Foster's entitlement to statutory damages and attorneys' fees and on the issue of Lee and Rodriguez's personal liability. The Court's findings regarding Foster's motion are discussed in more detail below.

The Court found that the photograph was not a joint work within the meaning of the Copyright Act. For a work to be a "joint work," two requirements must be met. First, the authors must intend "that their contributions be merged into a unitary whole."...