Tequila company owned by NBA players confronted with copyright infringement claims. GANOUNA v. CINCORO

Copyright law grants the creator of a new work of expression certain exclusive rights. Literature, photography, sculpture, and music are all types of artistic expression protected by copyright law. A copyright grants its owner the exclusive right to reproduce, distribute, display, perform, transmit and create derivative works based on the original. If someone other than the copyright owner exercises one of these exclusive rights that can be considered copyright infringement. A copyright owner can stop copyright infringement by filing a lawsuit which requests an injunction and get monetary damages for copyright infringement which has occurred.

A copyright owner is granted broad rights however, there are some limits to the control a copyright owner can exert over their works. Copyright is intended to give artists the ability to make a living off their hard work, but many artists are inspired by the work of their predecessors. To balance the rights of a copyright holder with the rights of other artists that might be inspired by a copyrighted work, copyright law allows a certain amount of borrowing. The general name for this allowed borrowing is called fair use. A fair use is any copying of copyrighted material done for a limited and “transformative” purpose, such as to comment upon, criticize, or parody a copyrighted work. Fair use is a defense to copyright infringement, which means that the use of the copyrighted work does not actually constitute copyright infringement.

A key point to a copyright fair use defense is whether or not a use is transformative. United States courts have held that merely cropping or making minor adjustments to an image are not transformative enough to qualify as a fair use. However, there is no bright line rule to determine whether a use is transformative or a fair use. When a court is presented with a fair use defense to copyright infringement, four factors are considered in making a fair use determination. Those factors are: (1) the purpose and character of the use, (2) the nature of the copyrighted work, (3) the amount and substantiality of the portion taken, and (4) the effect of the use upon the potential market. Fair use factors are open to interpretation, however there are limits to how far a legal concept can be stretched.

ANAIS GANOUNA, v. CINCORO SPIRITS GROUP, LLC, 2:20-cv-04070 (C.D.CA 2020) is a case which likely will not be saved by fair use.

Plaintiff, Ms. Ganouna, is a professional photographer who offers photography services. Defendant is a Tequila manufacturer owned by several former NBA stars, including Michael Jordan.

Plaintiff was commissioned to do a photo shoot for Defendants in Mexico of agave fields and plants, the tequila production process, and tequila bottles and barrels, to used for Cincoro’s tequila. During the photo shoot, the relationship between the parties was good. After the photo shoot the two parties could not agree on a licensing fee for Plaintiff’s photographs. Defendant told Plaintiff that the photographs would not be used by Defendant.

Around September 2019, Cincoro officially offered its product for sale. The launch of Defendant’s products was highly publicized, promoted by its high-profile ownership group and a widespread marketing campaign over the Internet, including through digital media, social media, and advertising. Plaintiff discovered that cropped versions of the photographs she took were used in Defendant’s marketing material. Plaintiff promptly filed a lawsuit for copyright infringement.

Defendant has not answered the complaint yet, but one of the common defenses a copyright Defendant will allege is fair use. It does not seem likely that defense will apply in this case. Defendant used cropped versions of Plaintiff’s photographs for commercial purposes. Typically photographs which are merely cropped with no other modifications are not considered transformative enough to qualify as a fair use. Using artistic photographs, without transforming them, for commercial purposes, weighs each of the four fair use factors against the a finding of fair use. The court in Brammer v. Violent Hues Productions, LLC came to this very conclusion, and it is likely the court in this case will come to the same conclusion.

Even though fair use probably does not apply, Defendant still has other defenses available, such as the Plaintiff’s photographs were a work for for hire. In that case the photographs would become the property of the Defendant. We will have to wait and see what Defendant’s answer contains.

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