IP Law Daily Esquire infringed by using wedding guest’s private photo of bride with Donald Trump
Wednesday, December 12, 2018

Esquire infringed by using wedding guest’s private photo of bride with Donald Trump

By Pamela C. Maloney, J.D.

Esquire’s use of a candid iPhone photo taken of a bride with President Trump when he "crashed" a wedding taking place at his New Jersey country club was not fair use, the federal district court in New York City has ruled, granting the photographer’s motions for summary judgment on his copyright infringement claims and on the publisher’s affirmative defenses, which also included waiver, consent, and release. However, whether the publisher’s infringement had been willful, giving rise to statutory remedies, raised a question of fact for the jury (Otto v. Hearst Communications, Inc., December 10, 2018, Woods, G.).

When President Trump dropped in on a wedding at the Trump National Golf Club in New Jersey, one of the guests used his iPhone to snap a photo of Trump with the bride. He then texted the photograph to a friend who also was a guest at the wedding. The photographer did not share the photo with anyone else, nor did he post it on his own social media platforms. The next day, the photographer discovered that the image had gone viral and had been published on the several social media platforms, including as part of an article on Esquire.com, which is owned by Hearst Communications, Inc. One day later, the photographer retained counsel and registered the photograph with the Copyright Office, which approved the application. The photographer then filed five copyright infringement actions against various media publishers, alleging that their use of his photograph infringed his copyrights. In response, Hearst moved for moved for partial summary judgment and raised several affirmative defenses including fair use, waiver, consent, and release. The photographer filed counter motions for summary judgment on the issue of Hearst’s liability for copyright infringement, and on its assertion of fair use and other affirmative defenses.

Validity of copyright. The photographer’s certificate of registration, which had been issued by the Copyright Office, constituted prima facie evidence of the validity of his ownership of a copyright in the photograph. In addition, the photographer submitted several affidavits, including his own affidavit and that of his attorney, which were sufficient for the court to find, as a matter of law, that he was the copyright owner and had the exclusive right to authorize use of the photograph.

Copyright infringement. Concluding that the photographer had met the actual copying and substantial similarity elements required to prove infringement, the court granted the photographer’s motion for summary judgment on his claim for copyright infringement. It was uncontested that the photograph had been copied for use in the Esquire article without the photographer’s permission and that the two photos were substantially similar in that they were the same photograph. Based on its summary finding in favor of the photographer on the copyright infringement claims, the court also granted his motion for summary judgment on Hearst’s affirmative defense of non-infringement.

Fair use defense. After balancing the four statutory factors to determine whether Hearst’s unauthorized use of the copyrighted photograph constituted fair use, the court determined that three of the four factors weighed in favor of finding that reproducing the photograph in the Esquire article did not qualify for the defense. First, Hearst’s commercial use of the photograph did not transform its purpose, nor did it add new meaning to the image. Although news reporting was a widely-recognized ground for finding fair use, the use of a photograph to illustrate the content of an article has never been recognized as fair use. Furthermore, use of the photo to illustrate the article did not transform the purpose of the photograph. Both the photographer and the Esquire article used the photo to depict a memorable event—the President’s presence at a private wedding.

Second, the fact that the article used the photograph in its entirety without discussing it or transforming its use weighed in favor of the photographer. Finally, the potential harm to any financial opportunities the photographer reasonably could have pursued for use of the photo outweighed the fact that the image was both factual and published. The court explained that allowing a news publisher to poach an image from a third party’s social media account for an article that does little more than describe the setting of the image did not promote the policies underlying Copyright Act.

Waiver and consent. Hearstalso raised the affirmative defenses of waiver and consent, arguing that by sending the photograph to a friend without any restrictions on the use or transmission of the photograph, the photographer indicated his intent to waive his copyrights. Hearst further argued that the conversations between the photographer and his friend after the photograph went viral demonstrated that the photographer had granted his friend an implied license to use the photograph, thereby consenting to its broad dissemination.

However, given the absence of any prior communication between the photographer and his friend, as well as the photographer’s interactions with his friend after the photograph was published, during which the photographer attempted to ascertain who had sent the photograph to the media, a reasonable jury could not find that the photographer intended to waive his rights in the photograph or that he intended for his friend to freely disseminate the photograph. Even if the photographer had allowed his friend to share the image, there was no evidence that the photographer had a similar agreement or a "meeting of the minds" with Hearst in this matter. Thus, the court granted the photographer’s motion for summary judgment on the affirmative defenses of waiver and consent.

Release defense. The court found no evidence to support Hearst’s release defense. There was no evidence that the photographer had entered into an agreement with Hearst, or any other party, to release his copyright infringement claims. In fact, both parties agreed that they had no communication prior to the filing of the lawsuit and that Hearst did not know that the photographer owned rights in the photograph until Hearst received the complaint. Therefore, the photographer’s motion for summary judgment on the affirmative defense of release was granted.

Willfulness. Although there was no evidence that Hearst had actual knowledge of its infringement, the evidence indicated that it might have had constructive knowledge of the infringement. Thus, the issue of whether Hearst was liable for willful infringement, which would allow the photographer to recover statutory damages instead of actual damages and profits raised a question of fact that could not be resolved on the publisher’s motion for summary judgment on the availability of statutory remedies, the court concluded. To support his claims of willfulness, the photographer pointed out that Hearst had been sued numerous times for copyright infringement in the recent past. A jury could infer that this allegedly recurring pattern of infringement established a willful disregard for copyright holders’ rights, which would justify statutory damages. Further, the fact that Hearst retrieved the photograph from the bride’s sister’s Instagram account and credited that account in the article did not contradict a finding of willfulness because there was no evidence that Hearst solicited a license or approval from the bride’s sister prior to using the photograph.

This case is No. 1:17-cv-04712-GHW-JLC.

Attorneys: James H. Freeman (Liebowitz Law Firm, PLLC) for Jonathan Otto. Ravi Viren Sitwala (Hearst Corp.) for Hearst Communications, Inc.

Companies: Hearst Communications, Inc.

MainStory: TopStory Copyright NewYorkNews

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