In a case that is sure to have wide ranging ramifications, a Federal District Judge has ruled that the unauthorized copying of a personal photo from a social media website, and republishing it on a news website, was copyright infringement and not fair use.
The Plaintiff, Jonathan Otto, a self-described “guy with an iPhone” has successfully argued that Defendant Hearst Corporation infringed his photo of Donald Trump’s surprise appearance at a New Jersey wedding when it posted the photo on its Esquire Magazine website. 1
When he took the photo, Otto had no intention of exploiting it. He changed his mind instantly when he found out the next day that his photo was all over the internet, including CNN, TMZ, the Washington Post, the Daily Mail, and Esquire, which is owned and operated by the Defendant Hearst. Otto had sent the photo to only one friend who had requested it. The friend apparently sent it on further. These various outlets apparently pilfered the photograph from the Instagram account of a relative of the bride. 2
The day after the wedding, Esquire used the photo to illustrate a story titled “President Trump is the Ultimate Wedding Crasher.” 3 Otto quickly realized that there was great value in the photo, and not only had he not been paid for the use, but the various web sites had credited someone else with being the author of the photo. 4 The very next day, he hired legal counsel, who filed a copyright registration for the photograph. The law firm also drafted and filed five copyright infringement lawsuits against the websites that had copied his photo. Four of those cases settled, one of which agreed to a retroactive license. 5
Defendant Hearst chose to duke it out in court instead. This turned out to be a big mistake. For the Court makes short work of their arguments in granting summary judgement on the issue of copyright infringement.
“Here, the parties do not contest the fact that Hearst actually copied Otto’s photograph for its use in the Esquire Article, nor that the works are substantially similar because they are the same photograph. The parties do not dispute Hearst did not have Otto’s permission to use the Photograph, making the appropriation unlawful. As such, the remaining elements of Plaintiff’s copyright infringement claim have been met.
Accordingly, because Otto has established that he owns a valid copyright in the image, and because the actual copying and substantial similarity elements have been met, the Court finds that Hearst infringed upon Otto’s exclusive right to control the reproduction and distribution of his photograph.” 6
So, Hearst is on the hook for damages unless it can come up with an affirmative defense. It asserts, waiver, consent, release and all together now, “fair use.” 7
At the outset, Hearst contends that the use was “transformative” because Otto created it for personal use and Hearst used it for news reporting. 8 This harkens back to the defense raised in the truly awful decision of Brammer v. Violent Hues. 9
But this Court is not buying it.
“[T]he Esquire Article solely uses the Photograph for illustrative purposes without adding ‘new information, new aesthetics, new insights and understandings” to the image…’” 10
Further, Hearst argued that since the photo was voluntarily placed on social media it was free for the taking by anyone. This is a truly astonishing assertion for a major media company of long standing to make.
But the Court was not buying that argument either.
“It would be antithetical to the purposes of copyright protection to allow media companies to steal personal images and benefit from the fair use defense by simply inserting the photo in an article which only recites factual information—much of which can be gleaned from the photograph itself. If so, amateur photographers would be discouraged from creating works and there would be no incentive for publishers to create their own content to illustrate articles: why pay to create or license photographs if all personal images posted on social media are free grist for use by media companies, as Hearst argues here? Indeed, it seems that this interpretation of the law would hinder “the Progress of Science and useful Arts,”[citation omitted] and the creation of “informative, intellectually enriching works for public consumption.” 11 (emphasis added).
So, factor one goes to the Plaintiff.
Yet the Court puts factor two, the “nature of the work used” in favor of the Defendant. The Court, and indeed all the parties, treat Otto’s photo as being published.
Indeed, the Court states:
“Here, the parties do not dispute that the Photograph was widely disseminated and previously published prior to Defendant’s use. As such, Hearst’s article did not threaten Otto’s right of first publication.” 12
This seems to me to be incorrect. Under 17 USC 101 “Publication” is defined as:
“the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.”
It does not seem to me that one electronic transmittal of a single copy of an image to Otto’s friend constitutes a distribution “to the public.” This is a right that is reserved to the author under 17 USC 106. All further distributions were unauthorized by Otto and should be considered illegal.
Even further, though copies of the image were widely “displayed” to the public over the internet, the Copyright Act clearly states that this does not conclusively establish publication of the work.
But no matter, working onward, the “amount of the portion used” comes down firmly on the side of the Plaintiff.
“In this matter, where Hearst used the entirety of the image in an article that neither discussed the photograph itself nor transformed its use, no reasonable factfinder could find that the third factor weighs in favor of Defendant.” 13
The Court does waver a bit on the fourth factor, wondering that if the Plaintiff does not initially contemplate licensing the work, does the “loss of licensing income” factor into the consideration? 14 Ultimately, the Court finds that the copyright owner is entitled to change his mind.
“It is clear from Otto’s communications with TMZ and Burke the morning after the wedding that he did have an interest in entering the market upon realizing the value of his work. The creator of a work should not be precluded from future profits should they lack the marketing prowess to capitalize on their work at the time of creation.” 15
“Otto’s status as an amateur photographer with an iPhone does not limit his right to engage in sales of his work. Publishing the Photograph without permission essentially destroys the primary market for its use.” 16
“If the practice of using photographs without licensing were to become widespread, “the market for such images would diminish correspondingly: [i]f media outlets could use such images for free, there would be little or no reason to pay for works. [citation omitted]” 17
As to the waiver and implied license defense, the Court rules:
“[I] in reviewing the evidence in the record, namely, Otto’s interactions with Burke and TMZ after the Photograph was published, and the absence of any prior communication between Otto and Burke that could be construed as such a license, no reasonable jury could find that Otto intended to waive his rights in the Photograph by texting it to Burke nor that Otto intended for Burke to disseminate the Photograph.” 18
Which takes us back to the publication argument. If Otto did not intend for his friend Burke to further disseminate the photograph, how is the further distribution by him and ultimately Hearst an act of “publication” under the copyright act which somehow waives his rights?
At the final bell, Otto moves for a judgement that Hearst acted “willfully” which would enable Otto to ask for enhanced statutory damages. 19 Otto bases this mainly on the fact that Hearst is a media outlet of very long standing, and one that had been sued numerous times for copyright infringement. 20 In essence, Otto argues that Hearst “should have known better.”
The Court denies this motion on rather curious grounds that
“[i]t is clear here that Hearst did not have actual notice of its infringement. [citation omitted] There is no evidence that Hearst knew of Otto’s ownership of the Photograph before this suit was filed.” 21
But Hearst, as a very experienced media outlet, should have known that the copyright belonged to somebody. Did they actually try to get a license from the woman whom they pilfered the photo from her Instagram account? Or did they really think that all social media accounts were simply free sources of photos for them to use?
Apparently, they did.
That notion, at least for now, has been rejected.