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Copyright Protection for iPhone Photo Trumps Fair Use

By Mickey H. Osterreicher

As millions of images are uploaded to the Internet by professional photographers, visual journalists and everyday citizens, the misappropriation of those images and the concomitant copyright infringement of those works has risen to epic proportions. For the most part those infringements go unnoticed but when they are, the reaction of the infringer upon being informed of the infringement by the copyright holder ranges from one of entitlement to use anything found on the Web as it being in the "public domain" to claims of "fair use." Those varying excuses for not seeking the permission of the copyright holder before using the image are made by the unsophisticated and those who should know better.

When some of those seeking to enforce their copyright do so, they or their lawyers are pejoratively labeled as "trolls," a term that has come to mean a person or company that enforces copyright for economic gain through litigation, in a manner considered unduly aggressive or opportunistic, when in fact there are exponentially more infringements than there are enforcements.

Another area of inherent tension between infringers and creators is found in Section 106[1] of the Copyright Act dealing with the exclusive rights in copyrighted works and Section 107[2], setting forth limitations of those exclusive rights under Fair Use.

Which leads to a few recent cases and decisions the first of which is Otto v. Hearst Communications Inc.[3] where the court granted the plaintiff's motion for partial summary judgment "on the issues of Hearst's Liability for copyright infringement"[4] and denied Hearst's motion for partial summary judgment "on both the issues of fair use and willfulness."[5] This all came about as a result of Esquire.com (operated by Hearst) using an iPhone photo that had been taken by Jonathan Otto of President Trump appearing as an "unexpected guest" at a wedding held at the Trump National Golf Club in New Jersey in 2017.

According to the factual background of the case, Otto is a Vice President at Deutsche Bank and "is not and never has been a professional photographer,"[6] whose "intention was to document an important memory and newsworthy event . . .seiz[ed] that opportunity."[7] Accordingly, he "planned to use the Photograph for personal, rather than commercial, purposes, and did not intend to share the photograph with friends and family or share it on social media."[8] After editing the image on his iPhone he did share it by text with one friend, who then shared it with others including a relative of the bride who posted it on Instagram. From there it went viral and was "published in several media outlets, including TMZ, CNN, the Washington Post, and the Daily Mail"[9] as well as on Esquire's website.

The next day when Mr. Otto realized that his photos were being used without permission, credit or compensation, he "hired counsel [the Liebowitz Law Firm] and registered the photograph with the Copyright Office."[10] Ten days after the photo was taken lawsuits were filed against those making unauthorized use of the photos. Four of those suits were settled "at least one of which resulted into a retroactive licensing agreement for the Photograph's use."[11] While Hearst, which took down the photo after being served, chose to defend against the lawsuit.

In his 12/10/18 Opinion and Order, Southern District of New York, Judge Gregory Woods found that Otto established that he had a valid copyright in the image, that the "actual copying" and "substantial similarity" elements had been met, that Hearst infringed upon Otto's exclusive right to control the reproduction and distribution of his photograph and therefore, granted Plaintiff's motion for summary judgment on those issues.

The Court then explained "'the fair use determination is an open-ended and context sensitive inquiry,' weighing four non-exclusive statutorily provided factors in light of the purposes of copyright."[12] In balancing those equities the Court also took note that while "while authors are undoubtedly important intended beneficiaries of copyright, the ultimate, primary intended beneficiary is the public, whose access to knowledge copyright seeks to advance by providing rewards for authorship."[13]

Finding that "an entity's status as a news publication may be highly probative on certain relevant inquiries, such as whether that entity has a fair use defense to copyright infringement, it does not render that entity immune from liability under intellectual property laws."[14]

The Court also noted "[i]t 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."[15] The Court went on to say that allowing such behavior would discourage photographers from creating works and be a disincentive for publishers and other users to create images to illustrate their articles, and then asking "why pay to create or license photographs if all personal images posted on social media are free grist for use by media companies?"[16]

The Court also stated that "[s]tealing a copyrighted photograph to illustrate a news article, without adding new understanding or meaning to the work, does not transform its purpose — regardless of whether that photograph was created for commercial or personal use,"[17] leading to the finding that because Hearst's used the entire image, was commercial in nature, did not add new meaning; was not transformative and harmed Otto's licensing ability, the four factor analysis weighed against a finding of fair use.

"Allowing a news publisher to poach an image from an individual's social media account for an article that does little more than describe the setting of the image does not promote 'the progress of science and useful arts,'"[18] the Court concluded.

The Court also granted summary judgment to Otto on Hearst's remaining affirmative defenses of: failure to state a claim; non-infringement; waiver; consent; and release finding that Otto "met his burden of demonstrating that no material issue of fact exists."[19]

Finally the Court denied Hearst's motion for partial summary judgment on "both the issues of fair use and willfulness,"[20] finding there "exist issues of material fact that could result in a reasonable jury finding for Otto"[21] and that the allegedly recurring pattern of infringement by Hearst may also support a verdict of "willful blindness."[22]

As the First Circuit noted in a seminal case regarding the right to photograph and record police, "[t]he proliferation of electronic devices with video-recording capability means that many of our images of current events come from bystanders with a ready cell phone or digital camera rather than a traditional film crew, and news stories are now just as likely to be broken by a blogger at her computer as a reporter at a major newspaper. Such developments make clear why the news-gathering protections of the First Amendment cannot turn on professional credentials or status."[23]

As recognized by Judge Woods, for both citizens and journalists who capture newsworthy events with their cameras or iPhones the protections of copyright law should not turn on professional credentials or status either.

Mickey H. Osterreicher is of counsel to Barclay Damon, LLP and serves as general counsel to the National Press Photographers Association (NPPA). He is co-chair of the ABA Copyright Law Subcommittee on Fair Use and has participated in several amicus briefs supporting copyright infringement claims involving photographs.


[1] http://www.copyright.gov/title17/92chap1.html#106

[2] https://www.copyright.gov/title17/92chap1.html#107

[3] Case Number 1:17-cv-04712 at https://cases.justia.com/federal/district-courts/new-york/nysdce/1:2017cv04712/476398/85/0.pdf?ts=1544611571

[4] Id. at 31

[5] Id.

[6] Id. at 3

[7] Id.

[8] Id.

[9] Id. at 4

[10] Id. at 6

[11] Id.

[12] Id at 12 citing Cariou v. Prince, 714 F.3d 694, 705 (2d Cir. 2013).

[13] Id. citing Authors Guild v. Google, Inc., 804 F.3d 202, 212 (2d Cir. 2015) (emphasis added).

[14] Id. at 13 citing Sarl Louis Feraud Int'l v. Viewfinder, Inc., 489 F.3d 474, 480 (2d Cir. 2007).

[15] Id. at 15

[16] Id.

[17] Id. at 5

[18] Id. at 12 citing U.S. Const., art. I, § 8, cl. 8

[19] Id. at 24

[20] Id. at 31

[21] Id.

[22] Id.

[23] Glik v. Cunniffe, 655 F.3d 78, 84 (1st Cir. 2011)

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