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Intellectual PropertyFeaturesCopyrightsInternet LawLitigationThe Intellectual Property Strategist

Fair Use, First Sale and Marilyn Monroe

By Robert W. Clarida and Robert J. Bernstein

The Southern District of New York recently resolved a question that neither the Southern District nor the Second Circuit had ever squarely faced: Can the lawful owner of an art object create and post a photograph of that object in connection with the sale of the object through an online platform such as eBay, without the permission of the owner of copyright in the object? The sale of the object is clearly permitted under the first sale doctrine, codified at §109(a) of the Copyright Act, but by its terms §109(a) only creates an affirmative defense to the distribution of the physical object itself: “the owner of a particular copy … lawfully made under this title … is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.” The statute does not allow the making of a reproduction or a derivative work, such as a photo, or the display or distribution of such an image, and indeed courts (notably the Ninth Circuit) have sometimes found similar activities to be infringing.

In Stern v. Lavender, 16 Civ. 9886 (S.D.N.Y. July 20, 2018) (ECF 106), the Judge Paul A. Engelmayer largely denied cross-motions for summary judgment in a dispute involving a number of 1962 photographs of Marilyn Monroe, taken in Los Angeles by noted photographer Bert Stern at Monroe's last photo shoot before her untimely death (the Stern photos). The defendants, long-time studio assistants of Stern, claim to have received legitimate copies of some of the Stern photos directly from Stern, and were recently sued for infringement by Stern's widow when they created and posted their own images of the Stern photos in connection with offering the Stern photos for sale through eBay, Amazon and other digital platforms.

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