Two Appeals Court Find No Fair Use In Publication Of Copyrighted Photos In Magazines

Two Appeals Court Find No Fair Use In Publication Of Copyrighted Photos In Magazines

by Jerry Glover
August 21, 2012

Two federal appellate courts recently ruled, just days apart, that two magazines had infringed the copyright in “celebrity” photos by publishing them even though in both cases the photos were used in stories about the people appearing in the photographs.  Both courts rejected a fair use defense asserted by each magazine.

Monge v. Maya Magazines, Inc.,  2012 WL 3290014 (9th Cir. August 14, 2012)

A Spanish-language celebrity gossip magazine, TVNotas, is published by the defendant, Maya Magazines.  An issue of TVNotas published previously unpublished photographs of the wedding of plaintiffs pop singer Moelia Lorenzo Monge and fashion model Jorge Reynoso.  Both plaintiffs had reason to be familiar with Maya publications.  Monge had been paid to pose for pictures published in another Maya magazine while Reynoso had been paid for photos of his wedding to a previous wife as well as for photos of their Paris vacation.  The Monge/Reynoso wedding took place in 2007 in a Las Vegas wedding chapel.  Neither Monge nor Reynoso publicized the wedding even to family members.

Chapel employees took three photos of the wedding ceremony using Monge’s camera.  At least three other photos were taken later than same night.  The plaintiffs claimed these photos were strictly for private use.

In 2008 the plaintiffs borrowed a car from a paparazzo photographer.  The photographer claimed the plaintiffs returned the car but left a memory chip in the ashtray.  On this chip were the plaintiffs’ wedding photos along with approximately 400 other photos and videos.  Without the knowledge of consent of the plaintiffs, the photographer sold the electronic files to Maya for $1,500.  The magazine published six of the photos from the wedding.  The headline on that issue of the magazine touted the “secret wedding.”  A sub-headline stated that the magazine had photos of the wedding.  Three of the wedding photos were on the magazine cover.  An inside two-page spread reprinted these and the other three photos.  Headlines about the wedding and the fact that the magazine had the exclusive story accompanied the spread as well as copy about the secrecy of the wedding.  The photos were not changed by the magazine except from some minor cropping.  In the past, the magazine had paid for photographs of celebrity weddings.

The plaintiff’s filed suit against Maya claiming copyright infringement (they had registered the photos in questions shortly after Maya’s publication).  The trial court granted summary judgment to Maya based on its defense of fair use.

The issue on appeal before the Ninth Circuit centered on that defense.  In order for individuals to build on previously existing copyrighted works, the U.S. Copyright Act permits use of those works without the consent of the owner if that use is fair.  In order to determine fairness, the Act calls for courts to evaluate the following factors:

(I) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(ii) The nature of the copyrighted work;

(iii) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(iv) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. Sec. 107.

In 1992, the Act was amended to prohibit the unpublished nature of a copyrightable work is not, by itself, sufficient to defeat a fair use finding.  Fair use can still be found in unpublished works if a court considers all of the above factors.

In analyzing the fair use elements for this case, the Court noted that the most recent U.S. Supreme Court fair use cases held that the two most important fair use factors were the purpose and character of the use and the effect of the use upon the potential market.  See Harper & Row, Publishers, Inc. v. NationEnterprises, 471 U.S. 539 (1985) and Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).  The Court also noted that news organizations do not get a “free pass” simply because stories that include copyrighted photographs are reporting on public figures.

With regard to the first factor, purpose and character of defendant’s use, the court noted that a fair use finding requires the defendant to transform copyrighted material from its original purpose so that the defendant’s work does not merely supercede the object of the original work and the more transformative the defendant’s use of that copyrighted material the less important the other fair use factors will be.  Here Maya did nothing to the plaintiff’s wedding photos except to crop one or two them and add a few headlines.

Maya claimed that it did transform the photos by publishing them as part of an expose on plaintiff’s clandestine wedding.  But the expose was about the wedding, not the photos.  The court noted that the magazine could have reprinted the plaintiff’s public wedding certificate to expose the wedding. Despite the magazine’s alleged motivation for publication, it did not alter the photos with any new expression, meaning or message.

There was no question that Maya’s use of the photos was for commercial purposes:  the photos on the cover and inside the magazine helped lure people into buying the magazines.  This commercial use weighs against a finding of fair use since, in the court’s opinion, the magazine was able to avoid paying the customary price that might be charged by the plaintiffs for licensing use of the photos.

As to the second factor (the nature of the copyrighted work), the court noted that photographs are creative, copyrightable material even if the photos simply documents an event.  The realistic aspect of the photos and the limited copyright protection the lack of creativity may afford them combined with the fact that the photographs were unpublished led the court to conclude that this factor weighed against a finding of fair use.

The court then examined the amount and substantiality of the magazine’s use of the photos.  Except for minimal cropping, the magazine used the entirety of each wedding photo.  In addition, the court determined that the magazine used far more photographs than necessary to prove that the plaintiff’s had married noting that the use of one photo or, again, the marriage certificate would have gotten the idea across.

In analyzing this third fact, the lower court had compared the number of wedding photos used (6) with the number of photos/video on the electronic file (over 400) concluding that the magazine had used only a small portion of what the trial court called a “compilation.”  The Copyright Act defines a “compilation” as a work “in which a number of contributions, constituting separate and independent works in themselves are assembled into a collective whole.”  17 U.S.C. Sec. 101.  The appellate court held that there was no proof that the 400 photos/videos had been selected by plaintiff’s to from an original work.  They were simply separate works that happened to end up in some random order in the same electronic file.  Thus, each photo was a separate, copyrightable work with an independent economic value of its own.

The final factor—the effect of the use upon the potential market for the work—again focuses on whether the defendant transformed the plaintiff’s work.  If the photos had been used in the magazine in a way that transformed their original purpose, then that transformation would not have been a mere duplication of the original photos and would not have affected the market for the original photos.  The court noted, however, that Maya did nothing to transform the wedding photo’s original purpose.  The court added that it did not matter that the plaintiff’s had no current plans to make money off of the wedding photos.  The plaintiff’s have a right to change their mind at a future date.  But the magazine’s publication of the photos destroyed any monetary value that the unpublished photos may have had; consequently, the economic value of the photos was greatly diminished.

Since none of the fair use factors tipped in the magazine’s favor, the appellate court concluded the defendant’s had no defense to the copyright infringement charge.

Balsley v. LFP, Inc., 2012 WL 351751 (6th Cir. August 16, 2012)

In this case, the plaintiff, a TV news reporter had entered a bar’s wet t-shirt contest in 2003.  Without plaintiff’s knowledge, someone in the crowd at the contest took photographs of her and published them on an Internet website.  The reporter lost her job as a result.  The plaintiff and the photographer later negotiated a deal that transferred to the plaintiff all rights including the copyright in and to the photos.  She later got another news reporter job.

In 2006 LFP’s magazine, Hustler, published one of plaintiff’s photographs in its “Hot News Babe” column which featured photos of women in the news industry selected by the column’s editor.  Usually, those photos showed the newswomen in various states of undress. Plaintiff’s t-shirt photograph had been submitted to the magazine by a reader as part of the magazine’s regular call for newswomen photos in exchange for a prize for the reader who submitted the selected photo.

The magazine claimed it attempted to find the copyright owner of the photos submitted but a researcher for the magazine said no such attempt had been made.  The magazine also asked its outside counsel whether the magazine could publish the photo; outside counsel determined that publication would be a fair use.

As part of the publication, the plaintiff’s photo was accompanied by a brief paragraph about the plaintiff, her former job and the t-shirt contest.  Each copy of the magazine was sold in a shrink wrap so that potential buyers could not flip through it before deciding whether to purchase.  There was nothing on the cover of this particular issue that mentioned the “Hot News Babe” feature.  It was estimated that the magazine earned approximately $1 million in profits from the sale of this issue of the magazine.

The defendant appealed a jury verdict which found against its fair use defense.

The court went through the traditional fair use analysis described in the Monge decision above.  The court determined that the defendant magazine was published purely for commercial purposes and that, except for minor cropping, the magazine had not transformed the photograph to give it a new meaning or purpose.  The column’s one-paragraph description was not a social commentary but merely a way to entice readers.

The court followed the same path as Monge to determine that the photo was a creative, expressive work and therefore copyrightable noting that the photographer had made decisions about shutter speed and flash settings as well as editing decisions about the finished product.  The appellate court also found that Hustlerhad used the entire photograph which militates against a finding of fair use even though that finding is not necessarily required simply because an entire work is used.

With regard to the effect of the use on the potential market, the defendant argued that the plaintiff had no intention of using the photo so plaintiff will suffer no harm as a result of the magazine’s publication.  The court noted, however, that the plaintiff need only show potential, not actual, harm to the market for the photograph.  The court agreed with plaintiff that her intent not to use the photo was immaterial and that the publication nevertheless competed for a share of the market the photo represented.

The court determined that no new trial was required since the jury’s rejection of the defendant’s fair use argument was appropriate.

This case also included an issue not raised in Monge:  how the parties were to apportion the burden of proof in determining whether damages awarded by the jury were appropriate.  The Copyright Act provides that the copyright owner “is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.  In establishing the infringer’s profits, the copyright owner is required to present proof only of the infringer’s gross revenue, and the infringe is required to prove his or her deductible expenses and the elements of profit attributable to factors other than the copyrighted work.”  17 U.S.C. Sec. 504(b).

So the plaintiff and the defendant in a copyright infringement action have defined burdens of proof in the damages phase of the case.  But the language of Sec. 504(b) is ambiguous.  Does the plaintiff have to show some type of relationship between the infringement and the gross revenue.  The Sixth Circuit noted that other courts had used different labels to explain this relationship “requirement” including “reasonable relationship,” “nexus,” “connection,” and “causal link.”  Whether plaintiff was required to show this connection between infringement and revenue was an issue of first impression for this appellate court.

The court held that the plaintiff has only one requirement:  to prove gross revenues earned by the defendant and those revenues need only have a reasonable relationship to the infringing activity.  In this case, the plaintiff’s demonstrated that her photograph was published by defendant and that was all that was required to show the relationship between gross revenues and the infringement.

The defendant, however, must prove that the amount of  revenues left after deduction of expenses were not generated as a result of the magazine’s use of the photographs or that only a portion of those remaining revenues could be attributed to publication of the photographs.  Defendant argued that the magazine was shrink wrapped so that people could not flip through it and there nothing on the cover than mentioned the “Hot News Babe” column.  Therefore 99% of the issue’s gross revenues, defendant argued, were attributable to something other than the column.

The court noted that the trial jury had a right to reject this defense theory especially since the defendant had found no authority for the proposition that profits are attributable to a copyrighted work only if a consumer purchased the magazine “because of” the copyrighted work.

NOTE:  We have represented television news departments, documentary film makers and print publications.  Editors often believe that since they are reporting on events the fair use defense is always a shield for them to use against claims of copyright infringement.  Even though these two cases did not involve publications that are held in the highest of journalistic regard, they should be a warning that fair use is not always automatically available to journalists of any stripe.

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