Category: Photography

Ephemera and Other Fair Use Defenses

I understand pursuing a fair use defense in a copyright case when the user of a work does something new and creative and believes there is a plausible argument to be made. I also understand why copyright skeptics file amicus briefs seeking opinions that would change the fair use doctrine. But what I find astonishing is the professional, who makes an archetypal use of a work, for which permission was obviously required, and then believes they can prevail on fair use through costly litigation. Because this keeps happening.

In the Spring of 2019, fine art and landscape photographer Elliott McGucken captured a transitory natural phenomenon—the sudden appearance of a lake in the middle of Death Valley, CA, known to be one of the hottest and driest places on Earth.[1] Heavy rains that March formed the 10-mile-wide ephemeral lake, of which McGucken made a series of beautiful and rare photographs, and several publications used his images by permission to accompany articles about the unusual event.[2] But when UK-based, digital publisher Pub Ocean failed to obtain permission for a similar use, McGucken sued for copyright infringement.

Using a photograph for illustrative purposes in an article or book is a paradigmatic use that requires license from the copyright owner. Newspapers, periodicals et al. have had to obtain permission for this purpose for as long as photographs have been protected by copyright law. Yet, despite this longstanding practice, even large commercial entities, perhaps lost in digital-age habits, too often use images without permission. Then, rather than settling with the photographer upon notification of the alleged infringement, these parties compound the error by litigating fair use defenses that will evaporate as surely as a lake in Death Valley.

Granted, in McGucken v. PubOcean Ltd, the fair use defense did prevail on summary judgment in the California District Court, and we have seen lower courts deliver such opinions in a handful of cases of this nature. But I cannot think of one similar instance in recent years that has not been overturned on appeal, including this case. It’s not that the fair use defenses are close calls, but rather, it seems, that certain district courts are hasty in reviewing their own circuit precedents. And in circumstances like this one, defendants are unlikely to find opinions favoring fair use any circuit.

Of the 27-page opinion delivered last week by the Ninth Circuit Court of Appeals, six of those pages cite a litany of precedent denying Pub Ocean any footing on factor one of the fair use analysis (purpose of the use, including commerciality). And here, as in other instances, losing on factor one is fatal to the rest of the fair use defense. In fact, commercial users of photographs (and their counsel for that matter) could read this opinion as a primer about typical uses of works that are not “transformative” under prong one.

As if wandering in a desert with a divining rod, Pub Ocean tried to exploit the seemingly vague semantics of the “transformativeness” doctrine, hoping to escape a sound reading of case law. It tried to argue, as others have done before, that merely placing McGucken’s photographs in the context of a news article, surrounded by text and captions, imbues the photographs with “new meaning and purpose” sufficient to find “transformativeness.” But the court writes …

Practically speaking, it is hard to imagine what would not be a fair use, or what could not be readily turned into a fair use, under Pub Ocean’s theory. Any copyrighted work, when placed in a compilation that expands its context, would be a fair use. Any song would become a fair use when part of a playlist. Any book a fair use if published in a collection of an author’s complete works. It would make little sense to treat this kind of “recontextualizing” or “repackaging” of one work into another as transformative.

More specifically, the court reaffirms what it means to make fair use of a work for the purpose of
“news reporting,” often a subject of confusion because it is one of the statutory examples cited as a purpose that may favor fair use. But here, the court clarifies, “We have recognized that ‘where the content of the [copyrighted] work is the story. . ., news reporters would have a better claim of transformation.’… ‘[C]ourts should be chary of deciding what is and what is not news,’ that label alone does not get Pub Ocean very far.” (Citations omitted).

Users of works are often puzzled by this distinction, but the courts are generally clear-eyed on the principle that the work used must be the subject of the commentary, criticism, or news reporting in order to favor a finding of fair use.[3] By contrast, when a work is used to illustrate, enhance, decorate, etc., especially by a commercial user, then use of the work requires permission of the copyright owner because it is unlikely to fall under the fair use exception.

Further, the court in McGucken adds a footnote stating that even if Pub Ocean had raised the argument that some portion of its article comments upon the photographs, this minimal commentary, in context to the rest of the article, would be unlikely to “help Pub Ocean establish fair use.” Again, this is instructive. Far too many users of visual works believe that adding a bit of text on top of an image (e.g., in a meme) or a caption below it automatically makes the use a fair use, and this belief persists despite guidance from many legal experts that fair use can be tricky and is always a case-by-case consideration.

But there is nothing complicated in McGucken. A commercial publisher used a photograph in the most common manner for which publications have long had to license photographs. The defendant has no foundation for establishing a purpose that would favor a finding of fair use, and absent such a purpose, the other factors fail almost by default. For instance, the court clearly states, under the factor four consideration (potential market harm to the original work), that McGucken’s interest in licensing his photographs would be substantially harmed if Pub Ocean’s use were allowed and became rampant among other users.

I skipped over factors two and three on purpose because a) factor two (the nature of the work) almost always goes to the plaintiff owner of a photograph and is rarely determinative of fair use outcomes; and b) I wanted to highlight the factor three consideration (amount of the work used) because it appears the defendant made another typical blunder. “Pub Ocean argues that this factor favors fair use because the article used twenty-eight photos from other sources, making McGucken’s photos only a small part of the article as a whole,” the opinion summarizes.

That is wrong as a matter of law. The third fair use factor does not consider the weight or role of the used work relative to the scope of the work in which it is used. Here, the court rejects Pub Ocean’s claim stating, “this approach runs contrary to the text of the statute, which plainly calls for a comparison of ‘the portion used’ to ‘the copyrighted work as a whole’ and not the infringing work.” Further, the court reaffirms the interaction between factors one and three, stating, “Pub Ocean failed to point to a transformative purpose that would justify reproducing any of McGucken’s photos—much less the entirety of twelve of them.”

As I say, I don’t get why certain commercial entities so flagrantly infringe photographers’ copyright rights but am even more baffled when they spend tens of thousands of dollars on a doomed fair use adventure. I imagine Mr. McGucken would have settled for a fraction of Pub Ocean’s legal fees to resolve the matter, but it seems as if something in the air whispers “fair use,” and even defendants who should know better chase that vision only to discover that it isn’t even an ephemeral lake but is just a mirage.

[1] This post was drafted while unprecedented rains were flooding Death Valley National Park, trapping tourists and staff.

[2] SF Gate, the Daily Mail, the National Parks Conservation Association, PetaPixel, Smithsonian Magazine, AccuWeather, Atlas Obscura, and Live Science.

[3] Educational use is a bit different, and different conditions apply—namely that works used must be in a traditional classroom setting.

Photo source by: Makaule

More “Transformativeness” Run Amok

Jeff Sedlik has been a fine art and commercial photographer for over 30 years and has served as an expert witness in more than 400 copyright cases. But until celebrity tattoo artist Katherine Von Drachenberg (Kat Von D) inked his famous portrait of Miles Davis in 2017, he had never been in court as a plaintiff claiming infringement of his work.

Kat Von D tattooed Sedlik’s Davis portrait onto the arm of Blake Farmer, a lighting tech, with whom she had worked on a film project. She allegedly did not charge Farmer for the tattoo, but the inking was highly publicized (millions of impressions) via Kat Von D’s social media accounts, and this included displays of Sedlik’s photograph. By any definition, the use was commercial. There are various bits and pieces to this case, including the unique nature of tattoos, which become part of a person’s body and likeness. But the most important matter to copyright law, once again, is the fair use defense presented—especially while we wait to see what SCOTUS has to say in the Andy Warhol Foundation v. Goldsmith case.

The portrait Sedlik created in 1989 is all about silence. Davis appears almost ghostlike, as though he has leaned his head from deep shadow into a pool of soft light to hush the viewer, holding the index finger over his lips with the other three fingers positioned as if playing an invisible trumpet. Or, as Sedlik explains to the district court, he intentionally had Davis pose those fingers “in a cascade visually representing aurally perceived musical notes.”

That description comes from compelled response to an interrogatory, demanding that Sedlik, “Identify and describe in detail each and every element in the PHOTOGRAPH that you contend is protected by copyright law.” The response provides a full account of Sedlik’s process, including 51 brief paragraphs describing every creative choice he made to achieve the final image, right down to Davis’s eyeline and the positioning of those fingers.

It is an impressive anecdote. Just looking at the photo, I know how challenging it is to control shades of black but had no idea that, for instance, Sedlik was required to work with Davis outside at high noon and, therefore, constructed a mini studio of sorts to retain the control necessary to execute the image he had in mind. But that’s photography fan me talking.

Copyright observer me has other questions, beginning with an objection to the court’s demand that any author describe “each and every element” he believes is protected. Not only are few complainants as experienced as Jeff Sedlik in describing such things in terms a court can evaluate, but more broadly, one attribute this case shares with Goldsmith is the folly that “transformative” defenses seem to lead courts to stray too far into the realm of art appreciation to settle questions of law.[1] From the opinion on cross motions for summary judgment, ordered May 31 …

Here, the Court finds the Portrait is entitled to broad protection because there were a great number of choices involved in creating the Portrait, such as Davis’s highly specific pose, facial expression, lighting and shadows, camera angle, and background for the image.

Part one of that opinion about “choices” goes to the aforementioned objection because the expression, as alluded to in the second part of the sentence, is observable without knowing anything about how the photographer created the image. The reason I mention this is not hypothetical but doctrinal. Copyright rights attach to a work upon fixation, regardless of how it was made, and it is settled doctrine that bars consideration of “sweat of the brow” to base copyright protection on process rather than creative choices resulting in a protectable expression.

Choice and process are often intertwined for the creator, but they must be separated as a question of law lest courts err in granting greater protection to the author who appears to have worked “harder” to achieve his vision. When a court demands the kind of defense of copyrightability as it did in this instance, there is a risk of over-emphasizing process, thereby potentially stripping another photographer of her rights because her choices are compressed into an instant, which may seem “easier.”

The question in Sedlik, as I believe it should be in Goldsmith, is whether the secondary work copies the protectable expression or the unprotectable facts of the original—not how either photographer achieved the expression, or what any of the images at issue necessarily convey. I have opined that “message” can be a fickle consideration, especially with non-verbal media. I have also written that I personally find the Warhol screens copy more fact than expression from Goldsmith’s photo, though I would say the opposite about Kat Von D’s tattoo copy of Sedlik’s photo. But regardless of outcome in either case, what is most important for copyright law is that the fair use blob called “transformativeness” be contained.

The Transformative Blob Eats Everything in Its Path

Kat Von D asserts a fair use defense, arguing that the tattoo is “transformative” under factor one, which considers the purpose and character of the use. It is typical of many alleged infringers to argue that using a work in a new medium is sufficient to find the use “transformative,” but here, the defendant cites myriad facts that are irrelevant to a fair use consideration at all. From the court’s summary:

First, Defendants contend the Tattoo presents a “new expression, meaning, or message” that is personal to Farmer because it relates to his study of jazz music in college, and because he personally identifies with Davis and “remains an avid listener of jazz and Miles Davis’s music.”

As I have argued in the past, the “new meaning or message” standard is already too broadly or too subjectively applied. But the idea that this consideration should encompass the personal, sentimental relationship the tattoo wearer has to his tattoo is capricious even for the most extreme view of fair use. Yet, the defendant doubles down on the idea …

Second, Defendants argue that tattoos inherently create a new expression, meaning, or message as a result of being permanently imprinted on a human body because tattoos have personal meanings, which may not be immediately obvious to someone unfamiliar with the significance of the tattoo to its wearer.

This is almost the same argument as the first using different words. A tattoo is no more “inherently new expression” than an oil painting or a silkscreen. And obscure meanings “not immediately obvious” to an observer is anathema to the purpose of the fair use exception. This argument is another variation of the refrain “new medium favors fair use under factor one.” Thankfully, the courts have been fairly consistent, at least on appeal, in rejecting this view. (e.g., Brammer v. Violent Hues)

In the 1884 case affirming copyrightability of photographs under U.S. law, the infringing lithograph is subtly different from the photograph it copied. This is partly because no matter how skillful the lithographer, drawing in grease on stone will produce differences between the paper print made from that medium and the paper print made from a photographic plate etched by light. Likewise, ink on human skin will result in certain distinctions between the tattoo and any photo the tattoo artist copies. I mention this to preface Kat Von D’s final rationale to assert “transformativeness.”

Third, Defendants argue that the Tattoo is transformative because while Kat Von D used the Portrait as a reference, she inked the Tattoo in the “freehand” method and added her own interpretation to it: “one that added the appearance of movement by adding and shading waves of smoke around the perimeter of Miles Davis’s hair and hand; created a sentiment of melancholy; and eliminated the stark, black background that dominates the Photograph.

This is as close as the defendant comes to presenting a foundation for “transformativeness,” and where her defense has a kindship with AWF by alleging a “different message” achieved by some alteration to the original work. But in addition to the fact that I think Kat Von D exaggerates the creative distinctions between the two images (that they are really differences in media), this is another example as to why the “message” test allows the “transformative” blob to swallow the other fair use factors and, quite often, the derivative works right.

The limitations of one medium to precisely reproduce a work in another medium cannot be the foundation of fair use without erasing the author’s right to prepare derivative works. This logic would lead to the conclusion that, for instance, a book author has no interest in the motion picture based on her novel simply because movies function differently for the audience than words meant to be read. Of course, they do. But that is not the test.

Relatedly, the allusion to Kat Von D working “freehand” is both questionable and irrelevant. The promotional images show her tracing Sedlik’s photograph, but it almost doesn’t matter. Whether an alleged infringer achieves literal copying by her unaided hand or through some intermediary medium, it is the copy that infringes, not the method by which it is made. Indeed, where the copyright owner must prove copying, identifying how the copy was made may be a relevant fact. Here, there can be no doubt that Kat Von D’s tattoo is a copy of Sedlik’s photograph, and Sedlik has no burden to prove copying.

Sedlik portrait and Kat Von D tattoo.

Again, I will argue in this case, as in Goldsmith, that the “transformativeness” blob can be contained if the Court reaffirms a rule that the secondary work must assert at least some evidence of commentary upon the original for factor one to tilt toward a finding of fair use. Like AWF, Kat Von D asserts “transformativeness” without claiming any commentary upon the original work (because no such commentary exists), but the case law being what it is, the district court held that there were triable issues of fact—namely that Defendants had met the “different purpose or meaning” test by changing the appearance of the image to “create what [Kat Von D] characterizes as ‘adding movement and a more melancholy aesthetic.’” The court further stated…

However, Sedlik disputes whether Kat Von D’s rendering of the Tattoowas transformative by virtue of the small changes she made. Sedlik opines thatall of the alleged dissimilarities between the Portrait and the Tattooresult from Kat Von D’s replication of the Portrait onto a three dimensionalsurface (Farmer’s arm). TheCourt finds Sedlik has raised a triable issue as to transformativenessthat is more appropriately left to a jury.

And so, Sedlik v. Kat Von D heads to a jury to decide, though it is concerning that the court seems to have punted core questions of law into that panel. Where juries are supposed to decide questions of fact, the question of “transformative” as argued here strikes me as a question of law. That said, juries are summoned as ordinary observers in these cases, and it is difficult to see how any reasonable person, even without any knowledge of photography or tattooing or the fair use doctrine, cannot readily see that the Kat Von D tattoo is a copy of the heart of Sedlik’s expression.

Broadly, Kat Von D argues that tattoo artists rarely, if ever, license the images they use, implying that Sedlik is an outlier for litigating this matter at all. It appears from facts presented by Sedlik that this assertion is as untrue as it is irrelevant, but I will leave the discussion that allegation provokes for another post.

[1] Of note, Sedlik served as Goldsmith’s expert witness at the district court. His testimony on factor four, asserting that the Warhol screens conflicted with Goldmith’s licensing interests was cited in the Second Circuit’s holding.

Sen. Hawley Merchandising That Photo Ain’t Fair Use

Mickey Osterreicher, general counsel for National Press Photographers Association (NPPA), wrote an open letter to Senator Josh Hawley of Missouri telling him to stop using a photograph on tee shirts and other campaign merchandise. You know the photo. The one of Hawley raising a fist of solidarity to a mob of knuckle-dragging seditionists shortly before many of them stormed the Capitol on January 6th. Captured by Politico staff photographer Francis Chung, Hawley’s merch reproduces the image with the senator cut out of the background, posterized in gray tones, and accompanied by the slogan “SHOW-ME STRONG!” (Yikes). Osterreicher’s letter begins…

Stop merchandising a widely published photo taken before the storming of the U.S. Capitol on Jan. 6, 2021, showing you clenching your fist in support of the mob. Stop being part of a long line of celebrities and politicians who think they can misappropriate images and music created or owned by others without permission, credit or compensation.

Professor of law Brian Frye disagrees. In a tweet posted early this week, Frye first assures readers that he is no fan of Hawley but then states that Osterreicher’s complaint is “ridiculously wrong.” He writes …

Yes, whoever owns the copyright in the photo is entitled to control its use, in order to generate profit. But their rights are limited by the fair use doctrine, which says that people are entitled to use the copyrighted works in order to criticize them … Josh Hawley is using a very well-known photograph of himself to criticize people who criticize him for supporting the January 6th rioters. That is precisely the kind of use the fair use doctrine was intended to protect. In fact, it is the kind of parodic use that the founding father sues to criticize loyalists in the Federalist Papers.

Most of the attorneys I know are reluctant to opine about even hypothetical cases without full knowledge of the facts, but not much more information is needed in this instance for this non-attorney to say that Frye makes at least one assumption that implies an error of fact, which serves as the basis for his multiple errors of law. The argument that Hawley’s merchandise expresses criticism of those of who scorn the senator for his conduct is razor thin in general and beside the point as a fair use consideration.

Any ordinary observer would perceive Hawley’s merch as conveying the same thing the prospective buyers of that merch see in the original photo—a man they revere for showing support for the 1/6 insurrection. That those observers see “hero” while many others see “traitor” has nothing to do with Hawley’s campaign minions adding new expression to the original work such that it would favor a finding of fair use under the first factor analysis for transformativeness. By reproducing the photograph to make and distribute derivative works (i.e., violating three exclusive rights under §106), Hawley has not imbued the image with new meaning within the context of the first prong of the fair use test.

Bizarrely, Frye’s “criticism” rationale would require that Hawley perceive the original photograph as intrinsically conveying “Hawley as traitor” and that the senator’s use of the work intentionally alters the original meaning in order to convey “Hawley as hero and mocking those who criticize him for supporting 1/6.” This is absurd on its face. These opposing perceptions of Hawley are brought by the observers to the image, and Frye is applying an eye-of-the-beholder consideration where it does not belong while inserting the word parody, where it does not apply.

Parody, if it exists at all, must target the work at issue, and not some other subject matter, in order for a use to weigh in favor of fair use. Ditto criticism, commentary, reportage, etc. It is a subtle distinction that confuses a lot of people, though I suspect Frye is expressing his opinion more than revealing any confusion on the matter. As a simple example, if a news organization produces a story about photographer Francis Chung and the moment this photo was taken, then use of the image to illustrate the story would favor a finding of fair use. On the other hand, if the news organization is strictly reporting about Sen. Hawley in general, or his conduct on 1/6, use of the photograph would ordinarily require permission.

Further, Frye misstates the commercial consideration when he uses the word profit as the exclusive interest of the copyright owner. He may wish the exclusive rights of the copyright owner were this narrow, but they are not. A more correct word would be gain. If the party making use of the work gains materially from the use—and seeking career advancement as a politician is a form of gain—any court considering the matter would correctly identify Hawley’s use as commercial, which disfavors a finding of fair use. This would be true even if Hawley’s political operation were giving the merch away for free, which of course, it is not. So, the use is commercial in every sense regardless of “profit.”

Frye compounds these errors of copyright law by implying in his statement that Politico’s enforcement in this instance is being used to stifle Hawley’s speech. He joins other copyright critics in alleging the abuse of copyright law to “shut people up.” And he obviously means it because he doesn’t like Hawley any more than I do. But this is another subtlety often missed or elided about copyright in this context:  copyright rights do not preclude a party from speaking but rather preclude a party from using the owner’s expression to speak on their behalf. Because copyright critics fundamentally reject many foundations of copyright rights, they cannot bring themselves to acknowledge that unlicensed use of works can amount to coerced speech, which is itself an infringement of the speech right.

When you believe that copyright law is inherently a form of censorship, it produces some untenable interpretations of fair use. Just because the First Amendment is an underlying rationale for the fair use doctrine, this does not mean that all protected speech favors a finding of fair use. If this were so, the multi-factor fair use analysis would hardly be necessary since protected speech is almost limitless. Frye et al. may advocate this view, but it is not doctrine and never has been.

The image of Hawley itself is blood boiling. A U.S. Senator saluting a 21st Century legacy of the mob James Madison feared—endorsing a dangerous lie to animate a riot which, if successful, would end the constitutional order of the United States. That Josh Hawley happens to be a graduate of Yale Law School—hallowed ground of the Puritan-to-Federalist origins of the country—adds an extra layer of Where the fuck are we? to his emblazoning that image of himself onto cammo pattern beer koozies. I cannot reconcile all that in this post, but at least I can argue with confidence that Hawley’s merch sure as hell ain’t fair use.