Recent Copyright Claims Filed in SDNY Should Be Considered Fair Use

Article

New York Law Journal

September 10, 2019

Recent cases filed in the Southern District of New York (SDNY) challenge as copyright infringement the reprinting of previously published newsworthy photos of public figures, either by journalists or the public figures themselves.

This article argues that when a copyright owner has already been compensated for the first publication, republication by another to report news or by the public figure photographed should qualify for the fair use exception to copyright infringement.

Recent Cases Filed. Section 107 of the Copyright Act states that “the fair use of a copyrighted work, including such use by reproduction in copies … for purposes such as … news reporting … is not an infringement of copyright.” Id. (emphasis added). Nevertheless, at least two cases filed in July 2019 in the SDNY characterize the publication of photos used to report news as copyright infringements. In Levine v. TSG Industries, Civ. No. 1:19-cv-7033, the plaintiff challenges publication of a photo of former NYPD Commissioner Bernard Kerik and former New York City Mayor Rudy Giuliani by a news reporting website. The plaintiff alleges that publishing the photo in an article titled “Bernard Kerik Indicted” amounted to copyright infringement and brings a separate claim under 17 U.S.C. §1202(b) challenging the defendant’s alleged removal of information identifying him as the photographer of the photo (“gutter credit”).

Likewise, in Hirsch v. ENTtech Media Group, Civ. No. 1:19-cv-7031 (D.I. 1), the plaintiff asserts claims for copyright infringement and removal of copyright information in connection with a photo of the alleged Soho House killer Nicholas Brooks in court. The photo, initially published in The New York Post in September 2013, was later allegedly published by the defendant without plaintiff’s consent and without the gutter credit in “The 10 Biggest Scandals That Rocked Downtown Since The ’70s.” Id. at ¶¶ 11, 19.

In addition to these cases, a third case filed the day after Hirsch challenges a company’s posting of a picture of its own CEO on social media. This action, captioned Bachner v. Golden Krust Caribbean Baker, Civ. No. 1:19-cv-7032, asserts claims for copyright infringement and removal of copyright information in connection with a photo of the defendant’s CEO. The photo—initially published in The Daily News in connection with a story entitled “Memoir tells rags-to-riches story of Caribbean grill”—was later allegedly published by Golden Krust on its Twitter page.

As explained more fully below, all three alleged infringements should qualify for the fair use exception to copyright infringement based on the four factors listed in the Copyright Act, including: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use on the potential market for or value of the copyrighted work. See 17 U.S.C. §107.

Reprinting Newsworthy Photos Should Be Considered Fair Use, Particularly Where the Purpose Is To Report News and the Copyright Owner Was Already Compensated. Courts have held that simply using copyrighted photographs for news purposes does not alone merit a finding of fair use. See, e.g., Nunez v. Caribbean Int’l News, 235 F.3d 18, 22 (1st Cir. 2000) (“[w]ere a ‘newsworthy’ use per se fair, journalists and news photographers would be left with little assurance of being rewarded for their work.”) Nevertheless, in determining whether a particular use amounts to fair use, courts have examined the difficulty of reporting news without using a photo at issue. See, e.g., id. (finding fair use in a case where “the pictures were the story”). Courts further examine whether the photo was previously published and whether the photographer was previously compensated—and if so, for how much—when conducting a fair use analysis.

Applying factor 1 to the cases above—the purpose and character of the use—this factor favors fair use in at least Levine and Hirsch because the purpose of the challenged uses was to report news and convey factual information. While “[t]he fact that an article arguably is ‘news’ and therefore a productive use is simply one factor in a fair use analysis[,]” Nunez, 235 F.3d at 22 (citations omitted), courts consider whether one purpose of the use is to inform. In fact, the Second Circuit applies a presumption that this factor favors the defendant when the alleged infringement fits one of the categories in section 107, see NXIVM Corp. v. Ross Inst., 364 F.3d 471, 477 (2d Cir. 2004), as it does in Levine and Hirsch (news reporting). The Second Circuit’s presumption should therefore apply in at least Levine and Hirsch.

Applying factor 2—the nature of the copyrighted work—“[w]here the disputed use can be characterized as news-reporting, this factor weighs heavily in favor of a finding of fair use.” Righthaven v. Jama, Civ. No. 2:10-cv-1322(JCM)(LRL), 2011 U.S. Dist. LEXIS 43952, at *8 (D. Nev. April 22, 2011) (informational work “deserves less protection than a creative work”). Here again, because the challenged uses in Levine and Hirsch can be characterized as news-reporting, this factor weighs in favor of favor use. See id. Moreover, “[p]ublished works are more likely to qualify as fair use because the first appearance of the artist’s expression has already occurred.” Kelly v. Arriba Soft, 336 F.3d 811, 820 (9th Cir. 2003); see also Peterman v. Republican Nat’l Comm., 369 F. Supp. 3d 1053, 1063 (D. Mont. Feb. 22, 2019) (fact that the photograph at issue “was published prior to [the challenged] use … strengthen[ed] the RNC’s claim to fair use”). Thus, because the plaintiffs in at least Hirsch and Bachner controlled the first appearances of their expressions, this too favors fair use.

As to factor 3—the amount and substantiality of the portion used in relation to the copyrighted work as a whole—a court should find this factor neutral in all three cases, given the purpose of the challenged uses. For example, in Kelly v. Arriba Soft, the court found this factor neutral because, “although [defendant] did copy each of [plaintiff’s] images as a whole, it was reasonable to do so in light of [defendant’s] use of the images.” Kelly, 336 F.3d at 821. So too in Righthaven did the court find factor 3 neutral because, “although the defendants posted the work in its entirety, the amount used was reasonable in light of the purpose of the use, which was to educate the public about immigration issues.”

Righthaven, 2011 U.S. Dist. LEXIS 43952, at *9. Because the challenged use in Levine sought to educate the public about the indictment of a law enforcement official, and the purpose in Hirsch was to educate others about a scandal in New York, courts should deem factor 3 neutral in these cases.

Finally, applying factor 4—the effect of the use on the potential market for or value of the copyrighted work—courts have examined “whether the secondary use usurps the market of the original work.” Blanch v. Koons, 467 F.3d 244, 258 (2d Cir. 2006). However, “[a] challenge to a noncommercial use of a copyrighted work requires proof either that the particular use is harmful, or that if it should become widespread, it would adversely affect the potential market for the copyrighted work … .” Righthaven, 2011 U.S. Dist. LEXIS 43952, at *11. This standard is likely not met for the challenged non-commercial uses in Bachner and Hirsch; nor does the Levine complaint allege facts supporting the existence of a market for the photo at issue in that case.

Photographed Individuals Should Be Able To Post Their Own Photos. Finally, the challenged publication in Bachner should not be deemed an infringement also because the defendant’s CEO has the right to control his own likeness. See, e.g., Bruce Lee Enters. v. A.V.E.L.A., Civ. No. 10-cv-2333(KMW), 2013 U.S. Dist. LEXIS 31155, at *44 (SDNY March 6, 2013); N.Y. Civ. Rts. Law §51. Section 51 provides a cause of action for individuals whose pictures are used within New York for purposes of trade without their consent. See Passelaigue v. Getty Images (US), Civ. No. 16-1362(VSB), 2018 U.S. Dist. LEXIS 34004, at *15-*19 (SDNY March 1, 2018) (§51 claim not preempted by copyright law).

Conclusion

While there is no per se newsworthy use exception, Congress did state in the Copyright Act that the fair use of a copyrighted work for purposes of news-reporting is not an infringement. It appears that courts have lost sight of this clear statement and should accord it greater significance when evaluating fair use. Uses of photos previously licensed for news articles, or by individuals appearing in such photos (or their employers), should qualify for fair use under §107 of the Copyright Act.


Reprinted with permission from the September 10, 2019 issue of the New York Law Journal. © 2019 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved. For information, contact 877-257-3382 or reprints@alm.com or visit www.almreprints.com.