Paulo v. France-Presse

1

LEONG FRANCISCO PAULO, Plaintiff, v. AGENCE FRANCE-PRESSE, et al., Defendants.

No. 1:21-cv-11209 (JLR) (SLC)

United States District Court, S.D. New York

March 30, 2023

OPINION AND ORDER

JENNIFER L. ROCHON UNITED STATES DISTRICT JUDGE

Plaintiff Leong Francisco Paulo (“Plaintiff” or “Leong”), a Portuguese photojournalist, asserts two counts alleging that Agence France-Presse (“AFP”), along with Getty Images (US), Inc (“Getty US”) and Getty Images, Inc. (the “Getty Defendants” and, together with AFP “Defendants”), have used thousands of his photographs constituting copyright infringement and violation of copyright management information (“CMI”) under the Copyright Act, 17 U.S.C §§ 501, 1202, et seq. (the “Act”). ECF No. 52 (the “FAC”) ¶¶ 1, 6-8, 232-260. Before the Court is the Report and Recommendation issued by Magistrate Judge Sarah L. Cave (the “Magistrate Judge”) dated January 19, 2023. ECF No. 90 (“R&R”). The Magistrate Judge recommends that Defendants' motion to dismiss be granted and the action be conditionally dismissed pursuant to the doctrine of forum non conveniens and, in the alternative, that the claims against AFP be dismissed for lack of personal jurisdiction. Id. For the reasons set forth below, the Court adopts the R&R in full and GRANTS Defendants' motion to dismiss.

BACKGROUND

The R&R sets forth in detail the factual background and procedural history of this case. See R&R at 1-22. The Court incorporates that portion of the R&R herein, refers the reader to the R&R for a more comprehensive background, and provides a shorter statement of the case below.

As a snapshot, and as the Magistrate Judge aptly stated “[t]his case has little to do with New York and a lot to do with Portugal. At the core of this case are the ownership rights of a Portuguese photographer, under Portuguese law, with respect to photographs he took in Portugal and around the world - but not in the United States.” R&R at 46.^[1]

I. The Parties

Plaintiff Leong^[2] is a “Portuguese citizen and resident of Lisbon, Portugal.” FAC ¶ 6. He “is an accomplished and skilled Portuguese photojournalist with over 20 years of experience covering global news” on an array of subjects. Id. ¶ 6; see id. ¶ 26. Leong has been “registered with Portugal's Carteira Profissional de Jornalista (Journalists' Professional License Committee)” since 2005. Id. ¶ 27. He has taken photographs of disputes in Ukraine, Syria, and Libya, among other places, id. ¶ 30, but does not allege that he has taken photographs in the United States, R&R at 3.

Defendant AFP “is a French state-owned corporation, with its main North America location” in Washington, D.C. and a secondary office in New York. FAC ¶ 7. As a “French global news agency headquartered in Paris, France,” AFP has a “worldwide audience” and over 2,400 staff and news bureaus in 160 countries and 201 locations. Id. ¶¶ 7, 32. AFP “develops its editorial content through ‘stringers' (freelancers or independent contractors) and ‘staffers' (editorial employees) that produce the written and audiovisual content made available through the AFP Wire Service, a subscription service that allows subscribers (primarily news outlets) to access content that is often critical to the reporting of global news.” Id. ¶ 34. It also makes editorial content available through other means, including by licensing photographs through AFP Forum, where it then distributes photographs to subscribers. Id. ¶¶ 35-36.

The FAC alleges that the Getty Defendants “are Delaware corporations, each having their principal place of business” in Seattle, Washington and satellite offices in New York. Id. ¶ 8. In connection with the instant motion, Getty U.S. states that it is a New York corporation and Leong now adopts that fact as his own, despite the FAC's contrary allegation. See R&R at 4. AFP and the Getty Defendants have “an ongoing partnership” through which AFP “licenses content through [the] Getty Defendants' internet platform.” FAC ¶ 38.

II. Leong's Relationship with AFP in Portugal

Under his professional title registered in Portugal, Leong “captured, curated, and licensed a total of 34,716 photographs to AFP” between February 20, 2005 and November 30, 2018 (the “Leong Photographs”). Id. ¶ 42. After receiving a photograph from Leong, AFP would distribute the photograph through the AFP Wire Service, add it to the AFP Forum database, and share it with the Getty Defendants. Id. ¶ 45. The FAC further alleges that AFP removed Leong's metadata from the photographs and added the “AFP” icon. Id.

The Leong Photographs were created during two periods: (i) from February 20, 2005 through October 31, 2010, when Leong was an AFP freelance photojournalist (the “Stringer Period”); and (ii) from November 1, 2010 through November 30, 2018, when Leong was an AFP employee (the “Staffer Period”). Id. ¶ 46. During both periods, Leong believed that he owned the Leong Photographs, and he “authorized and approved of AFP's commercialization of the Leong Photographs, as well as the attribution of AFP and [the] Getty Defendants . . . on such photographs, across all of AFP's various avenues of commercial exploitation ....” Id. ¶¶ 47-48.

Leong has since obtained 21 U.S. Copyright Registrations for 8,657 photographs. Id. ¶ 47; see ECF No. 52-29 at 2.

During the Stringer Period, Leong “captured, curated, and licensed over 10,000 photographs to AFP” without a written contract. FAC ¶ 49. The FAC asserts that, under the Portuguese Code of Copyright (the “Portuguese Code of Copyright”), “the copyrights in the [photographs] captured by Leong during the Stringer Period were owned by Leong.” Id. ¶ 55.

The Staffer Period began in 2010 when Leong entered a written Portuguese-language contract with AFP (the “2010 Agreement”). Id. ¶¶ 56, 59. The 2010 Agreement is governed by Portuguese law. Id. ¶¶ 65-66. Clause 14 of the agreement is a choice-of-law provision that expressly selects Portuguese law “as the law applicable to the 2010 Agreement.” Id. ¶ 66. The applicable law includes the Portuguese Code of Copyright and the “Journalist Statute” in Portugal (the “Portuguese Statute”). Id. ¶ 67. As an AFP staffer, Leong also “became eligible under Portuguese law” for certain employee benefits at this time. Id. ¶ 57 & n.2.

During the Staffer Period, Leong created and licensed over 23,000 photographs to AFP for use and commercial exploitation “under the express terms of Clause 7 of the 2010 Agreement.” Id. ¶ 58; see also id. ¶ 59 (noting that Clause 7 “govern[ed] AFP's rights to use and exploit Leong's photographs”). Clause 7, translated in the FAC from Portuguese to English, provided that “[t]he present encumbrance is valid for the entire time of the literary and artistic protection and for the whole world.” Id. ¶ 59.^[3] The FAC asserts that Clause 7 did not assign or completely transfer ownership of Leong's copyrights in the Leong Photographs because it failed to satisfy Portuguese legal requirements, including under Article 7B(1) of the Portuguese Statute, Article 7-B(2) of the Portuguese Statute, Article 44 of the Portuguese Code of Copyright, as well as under Article 11 of the Portuguese Code of Copyright because “terminology used in Portuguese law to describe ownership (i.e., “titularidade”) is absent.” FAC ¶¶ 60-61. The FAC further asserts that a transfer of copyright in the 2010 Agreement was inconsistent with industry practice. Id. ¶ 62. The FAC concludes that, under “the Portuguese copyright law provisions applicable to the 2010 Agreement,” “the only plausible and reasonable reading of Clause 7 of the 2010 Agreement is that such clause granted AFP an exclusive license to commercialize and exploit the Leong Photographs . . . and to include attribution of AFP and [the] Getty Defendants . . . on and in connection with such photographs.” Id. ¶ 70.

In sum, according to Leong, the Portuguese Code of Copyright and Portuguese Statute “govern copyright issues arising under the 2010 Agreement.” Id. ¶ 68. Additionally, under the forum selection clause (“Clause 15”) in the 2010 Agreement, “[a]ny litigation arising from” the 2010 Agreement “will fall under the jurisdiction of the Lisbon District Court, with expressed resignation of any other.” ECF No. 1-2 at 7 ¶ 15.

Leong's employment relationship with AFP terminated on March 29, 2019, when AFP “wrongfully terminated” his employment. FAC ¶ 88. The FAC asserts that the termination “constituted a willful and material breach of the 2010 Agreement” under Portuguese law, so “as to strongly tend to defeat the object of the parties . . . and giv[e] rise to a right of recission” that “created a legal basis for Leong to terminate AFP's license under Clause 7 of the 2010 Agreement.” Id. ¶¶ 102, 103, 105.

III. The First Portuguese Proceeding

On April 8, 2019, Leong filed a case alleging wrongful termination by AFP in “Portuguese labor court.” FAC ¶ 89 (the “First Portuguese Proceeding”). On April 17, 2019, Leong sent an email to AFP requesting that AFP cease and desist “from disclosing and/or publishing and/or economically exploit[ing]” the Leong Photographs. Id. ¶ 90; see id. ¶ 106 (the “April 17 Email”). After considering testimony from fact witnesses and documentary evidence, the Portuguese court enjoined Leong's termination because it found the termination “likely wrongful.” Id. ¶ 91.

On July 4, 2019, Leong and AFP entered into a settlement agreement in which AFP agreed to pay Leong to settle his labor claims in exchange for dismissal of the First Portuguese Proceeding. Id. ¶ 131. The settlement agreement “carved out Leong's copyright claims against AFP” under Clause 7 of the 2010 Agreement. Id.; see ECF No. 1-3 (translated version of settlement agreement). The FAC alleges that, around this time, AFP circulated a “kill...