IP Law Daily Website’s unlicensed use of professional’s celebrity photograph was fair use
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Friday, September 11, 2020

Website’s unlicensed use of professional’s celebrity photograph was fair use

By John W. Scanlan, J.D.

The website’s use of the photograph was transformative because the changes to the photo and the caption, title, and broader context accompanying it fundamentally transformed the character and purpose of the use.

A website’s unlicensed use of a photographer’s photograph of a celebrity constituted fair use because the use was transformative and it was implausible that the transformed version would replace the market for or hurt the value of the original, the U.S. District Court for the Southern District of New York ruled in granting the website’s motion to dismiss the photographer’s copyright infringement claims with prejudice. Furthermore, the original photograph was more factual than creative in nature, and the portion of the original photograph used in the transformed version was reasonable (Schwartzwald v. Oath Inc., September 10, 2020, Abrams, R.).

Lawrence Schwartzwald is a professional photographer who took a photo of actor Jon Hamm. In the photo, Hamm was walking down a street holding the hand of his then-girlfriend. According to the photographer, who stated that he took the photo for the purpose of commercial news reporting, the photo "illustrates what Jon Hamm looks like wearing trousers in public while he walks down the street, ostensibly without any underwear." The photographer licensed it to a stock photo agency that sub-licenses photos to media outlets. He also licensed it to a New York newspaper and other media organizations. In December 2013, the Huffington Post reproduced the photo as part of an article called "25 Things You Wish You Hadn’t Learned in 2013 and Must Forget in 2014," under the heading "Some ad men don’t do underwear." The photo was cropped to exclude the half of the image that included his girlfriend and superimposed a block box with the words "Image Loading" over his groin area. Oath, Inc., the owner of the Huffington Post, had not licensed the photo or obtained the photographer’s consent to publish it.

Stating that he did not discover the article until 2018, the photographer brought copyright infringement claims against Oath in 2019. Oath moved to dismiss on the grounds that its publication of the photo was fair use under Sec. 107 of the Copyright Act. This section provides a four factor test for fair use: the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used in relation to the whole copyrighted work, and the effect of the use on the value or potential marked of the copyrighted work. Weighing the totality of these factors, the court found that Oath’s use constituted fair use.

Purpose and character of use. The court first found that Oath’s use of the photograph was transformative, one of three sub-factors for this prong of the Sec. 107 test. The photographer had described the original photo as having the purpose of illustrating Jon Hamm wearing trousers in public walking down the street ostensibly without underwear. However, Oath had cropped out about half the photo, placed a humorous text box over the most significant portion of the photo, attached a humorous caption, and placed the photo in an article about viral moments in 2013. The court found that Oath’s use had the purposes of mocking both Hamm and those who found the original photo newsworthy, as part of a broader article that had the purpose of mocking viral topics; these purposes were different from the purposes of the original photo. Because Oath had placed a text box over the portion of the photo purportedly showing that Hamm was not wearing underwear, Oath’s photograph was not illustrative of what Hamm looked like wearing trousers walking down the street while not wearing underwear. There was no dispute that a secondary work can be transformative even though it contained a modified reproduction of the original, the court said.

Because it found the use of the photo was transformative, the court found that it was unnecessary to address Oath’s alternative argument that the Oath photo was a parody of the original, noting that this was a closer question.

The court found that the photographer plausibly alleged that Oath had used the photo for commercial purposes but did not give significant weight to this sub-factor because the fact that the use was transformative was more significant. Finally, the fact that Oath had used the photo without prior permission did not by itself constitute bad faith.

Nature of the copyrighted work. The court agreed with Oath that the photograph was factual rather than creative in nature and, therefore, was "further from the core of copyright protections." The photographer argued that it was creative because he was a professional photographer who had creatively chosen the camera equipment, perspective, angle, and other aspects of the photo. However, the court found that the photo was a standard type of photograph taken by paparazzi and apparently had captured the image of Hamm and his girlfriend as they appeared; the photographer had not staged their poses or the environment. Furthermore, the photograph already had been published, and courts have found that the scope of fair use for published works is broader than that for unpublished works.

Amount/substantiality used. The factor related to the portion used in relation to the copyrighted work as a whole weighed in favor of fair use. Oath had edited the photograph by cropping out about half of the original, including the portion with his girlfriend, and superimposed a text box over the portion of the photo that the photographer had asserted made the original photo noteworthy. This was a reasonable use of the photograph to achieve Oath’s purposes of mocking Hamm and those who found the original photo newsworthy. The photographer argued that Oath could have either taken its own photo of Hamm or published its story without a photo, but these alternatives would not have achieved Oath’s purposes because it would have lacked a photo that went viral. He also argued that Oath could have licensed the photo, but the court said that this was unnecessary if its use constituted fair use; thus, Oath’s failure to license it did not make its use not fair use.

Effect on market for or value of original. Stating that the effect on the use of the potential market for or value of the copyrighted work was the most significant factor, the court determined that this factor also weighed in favor of fair use because Oath’s version blocked the central feature of the original. The court observed that media outlets seeking to report on what Hamm looked like walking down the street wearing trousers but ostensibly without wearing underwear likely would not use the Oath version because the text box blocked the portion of the photograph that would illustrate that point. Because it was unlikely that potential purchasers of the original would purchase the Oath version instead, the secondary use was not a competing substitute for the original.

This case is No. 1:19-cv-09938-RA.

Attorneys: James H. Freeman (Liebowitz Law Firm, PLLC) for Lawrence Schwartzwald. Jennifer Lynn Bloom (Hunton Andrews Kurth LLP) for Oath Inc.

Companies: Oath Inc.

MainStory: TopStory Copyright GCNNews NewYorkNews

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