Plaintiff is North Jersey Media Group, the publisher of New
Jersey newspaper The Record. It holds
the copyright of the widely published photograph of three New York firefighters
raising the American flag near the ruins of the World Trade Center. This photograph was taken on 9/11 by photojournalist
Thomas E. Franklin while on assignment from The
Record. It has since geneated more than $1 million in licensing revenue.
On September 11, 2013, a Fox News employee posted this
photograph on the Facebook page of one of Fox’s television shows, Justice with Judge Jeanine, and chose to
associate it with another iconic photograph, taken by Joe Rosenthal, which
shows four U.S. Marines raising the American flag on Iwo Jima, during World War
II. The two images were not otherwise
altered, but the employee juxtaposed #neverforget on the images before posting
them on Facebook.
Plaintiff contacted Fox News on September 13, 2013, asking
the photograph to be taken down. The posting was deleted a few days later. In
October 2013, Plaintiff filed a copyright infringement suit against Jeanine
Pirro, aka Judge Jeanine, and against the network. Defendants moved for summary
judgment, claiming fair use. The SDNY denied the motion, after having examined
the four fair use factors set forth by
Section 107 of the
Copyright Act.
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| The Purpose of this Truck is to Gather News |
First Fair Use
Factor: Purpose and Character of the Use
The Supreme Court explained in 1994 in its
Campbell v. Acuff-Rose case that,
under this first factor, courts must
assess whether the new work merely supersedes the original work or if it “
instead adds something new, with a further
purpose or different character [and] alter[s] the first [work] with new
expression, meaning, or message, … in other words, whether and to what extent
the new work is "transformative.”
Defendants argued that their use was transformative as it
drew a parallel between 9/11 and Iwo Jima and, as such, had to be categorized
as comment under Section 107, which lists comments as one of the categories of
use which may be protected by fair use. Defendants also argued that adding the
hashtag #neverforget “signaled FoxNews’
participation in an ongoing, global discussion” about 9/11, and that they
had altered the original work by using a cropped lower-resolution version of
it.
Judge Ramos was not convinced by these arguments, as these
changes were “barely discernable”
(sic) and because Second Circuit case law requires more changes for the use to
be transformative. Judge Ramos gave as examples the works created by Richard
Prince from Patrick Cariou’s photographs of Rastafarians used by Richard Prince
to create his “Canal Zone” series, noting that Prince had varied the portions
of the original works used, and had also changed the scale and medium of the
original works.
One remembers that the Second Circuit had found twenty-five out
of thirty of Prince’s works to be transformative in
Cariou v. Prince. Judge Ramos concluded
that the 9/11 photograph was even less transformed by Defendants than the five
Prince works which the Second Circuit did not find to be transformative. It is
interesting to see how the thirty works at stake in
Cariou were used by Judge Ramos as visual fair use “benchmarks” to
assess whether a particular use is transformative enough to be protected by
fair use.
Judge Ramos also noted that “#neverforget was a ubiquitous presence on social media that day [and
that] [t]hus Fox News ‘commentary, if such it was, merely amounted to
exclaiming “Me too.” The first factor was found to favor Plaintiff.
Second Fair Use
Factor: Commercial Use and Nature and of the Work
Fox News operates for profit and Judge Jeanine’s Facebook
page “is intended to capture revenues for
the network.” Therefore, the use of the protected work was commercial.
However, Second Circuit courts, when assessing fair use, discount the fact that
almost all newspapers are published for profit. Doing otherwise would mean that
commercial uses are presumptively not protected by fair use. That was not the
intent of the Congress, according to the Supreme Court (Campbell, at 584).
Instead, courts consider that “the more transformative the work, the less important the commercial
purpose.” As Judge Ramos did not find Defendants’use to be transformative,
the second factor had thus to be carefully weighed. He concluded that there was
“at least a question of material fact as
to whether Fox News posted [the combined photographs] for the purely expressive
purpose of commenting on the events of September 11, 2001, or whether it did so
for the commercial purpose of promoting
the [Judge Jeanine] program.” Therefore, this point would have to be
debated in court.
Courts distinguish expressive works from factual works in
their analysis of the nature of a work, and that leads to a discussion on the
nature and even the scope of copyright protection of photographs depicting
current events. Defendants claimed that the copyright in the photograph taken
by Thomas Franklin had to be limited “to
Franklin’s decisions in taking the photograph” and that “Plaintiff cannot claim ownership in the firefighters’
actions, the expressions on their faces, their ashen uniforms, or the American
flag.” Plaintiff instead claimed that the work “involved many creative decisions,” such as the lens chosen and the
orientation of the photograph.
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| How do I love the th(r)ee (+ 1) factors? Let me count the ways. |
Judge Ramos found that the second factor favored a finding
of fair use, noting that Franklin “did
not create the scene or stage his subjects.” Judge Ramos cited the Southern
District of Florida Katz v. Chevaldina case,
where the plaintiff had registered the copyright in a photograph representing
him in an unflattering way and then filed a copyright infringement suit against
a blogger who had used it to illustrate blog posts criticizing the plaintiff. The
Southern District of Florida had found “no
evidence that the photographer influenced, at all, the Plaintiff’s activity,
pose, expression or clothing” and that, therefore, the second fair use
factor weighted in favor of defendant.
The Katz v. Chevaldina
case in on appeal in the Eleventh Circuit, and our case is likely to go to
trial. Therefore, the issue of copyright protection afforded by works of
photojournalists may be further debated this year in US courts.
Third Fair Use
Factor: Amount and Substantiality of the Portion Used
Judge Ramos quoted the recent Second Circuit
Authors Guild v. Hathi Trust case, where the court quoted the
Supreme Court in
Campbell: “[
t]he
crux of the inquiry is whether ‘no more was taken than necessary.’ Judge
Ramous concluded that this factor was neutral, as it was not clear whether
Defendants could have used less of the protected work and still make sure that
the public would recognize the iconic 9/11 photograph.
Fourth Fair Use
Factor: Effect on the Market
Judge Ramos quoted the Second Circuit Cariou case, where the court noted that what matters when assessing
this factor is “not whether the secondary
use suppresses or even destroys the market for the original work or its
potential derivatives, but whether the secondary use usurps the market of the original work” (emphasis in original).
For the Second Circuit, a defendant in a copyright infringement cases has
usurped the market if her target audience and the nature of the infringing
content are the same as the original work. Courts must also consider whether
the use is transformative.
This illustrates that the four factors are not compartmentalized:
whether a use is transformative (first factor) may determine the nature of the
work (second factor), which may in turn determine the effect on the market
(fourth factor). In our case, Judge Ramos weighted against a finding of fair
use, as Fox News did not substantially transform the original work, and also
because Plaintiff still derives significant licensing revenue from the
protected work.
Judge Ramos denied Defendants’ motion for summary judgment. The
issue of fair use will have to be decided in court, unless the parties decide
to settle.
Christie’s France, the French subsidiary of the multinational firm Christie’s, regularly organises auctions of works of art. A resale royalty is payable in respect of some of those sales. Christie’s France has provided in its general sales conditions that, for certain lots marked in its catalogue, it will collect from the buyer, for and on behalf of the seller, the amount representing the resale royalty.
