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

David Newhoff
David is an author, communications professional, and copyright advocate. After more than 20 years providing creative services and consulting in corporate communications, he shifted his attention to law and policy, beginning with advocacy of copyright and the value of creative professionals to America’s economy, core principles, and culture.

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