Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 1 of 31
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` Plaintiff,
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`USDC SDNY
`DOCUMENT
`ELECTRONICALLY FILED
`DOC #: _________________
`DATE FILED: 12/10/2018
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` 1:17-cv-4712-GHW
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`OPINION AND ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`JONATHAN OTTO,
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`X
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`-against-
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`HEARST COMMUNICATIONS, INC.,
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` Defendant.
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`GREGORY H. WOODS, United States District Judge:
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`I.
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`INTRODUCTION
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`In June of 2017, Plaintiff Jonathan Otto attended a friend’s wedding at the Trump National
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`Golf Club in New Jersey. To the surprise of the celebrants, President Trump, the owner of the
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`venue, crashed the wedding. The guests seem to have been delighted by the appearance of this
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`unexpected guest, who lingered at the reception to take photographs with the newlyweds and sign
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`autographs. Otto took the opportunity to capture the moment and snapped a photo on his iPhone,
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`and later texted it to another guest at the wedding, Sean Burke. The next morning, Otto discovered
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`that the image had gone viral: it had been published on the social media platform Instagram and in
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`several media outlets, including Esquire.com, operated by Defendant Hearst Communications.
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`Perhaps recognizing a lucrative business opportunity, Otto retained counsel the following day and
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`quickly filed a copyright in the image. Otto brought this action, among several others against
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`various media publishers, alleging that his copyright in the photograph had been infringed.
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`Before the court are cross motions for partial summary judgment. Otto seeks judgment on
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`Hearst’s liability for copyright infringement and the affirmative defenses asserted by Defendant.
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`Pl.’s Memo iso Mot. for Part. Summ. J. (Dkt. No. 36) (“Pl.’s Memo”). Defendant seeks judgment
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`on its fair use defense and on whether Hearst’s alleged infringement was willful. Def.’s Memo iso
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 2 of 31
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`Mot. for Part. Summ. J. and Opp. to Pl.’s Mot. for Summ. J. (Dkt. No. 51) (“Def.’s Memo.”).
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`Stealing a copyrighted photograph to illustrate a news article, without adding new understanding or
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`meaning to the work, does not transform its purpose—regardless of whether that photograph was
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`created for commercial or personal use. For this reason, among others, Plaintiff’s motion is granted
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`in whole and Defendant’s motion is denied in whole.
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`II. BACKGROUND1
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`A. Facts
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`1. The Parties
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`Plaintiff in this matter is Jonathan Otto, a Vice President at Deustche Bank. This suit arose
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`from a photograph Otto took on his iPhone at a private wedding, which was subsequently published
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`by several media outlets, including Defendant. Otto, self-described as just a “guy with an iPhone,”
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`is not and has never been a professional photographer. Pl.’s Memo. at 1; Def.’s 56.1 Stmt.2 ¶¶ 7–8.
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`Defendant Hearst Communications, Inc. is a corporation organized under Delaware law.
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`Compl. (Dkt. No. 1) ¶ 6. Hearst is a well-known in the media industry; it owns newspapers,
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`television channels and stations, and publishes news in newspapers, magazines, and as relevant here,
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`on the Internet. Def.’s 56.1 Stmt. ¶¶ 12–13, 25. One of the media outlets owned by Hearst is the
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`Esquire magazine and website. Id. ¶¶ 25, 52. As a media conglomerate, Hearst sometimes licenses
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`photographs for use in its publications. Id. ¶¶ 14–18. To assist with this process, Hearst employs
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`in-house attorneys who are familiar with copyright law and licensing practices in the publishing
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`industry. Id.
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`1 The following facts are undisputed unless otherwise noted.
`2 References to “Def.’s 56.1 Stmt.” are to the Rule 56.1 statement and counterstatement submitted in connection with
`Hearst’s motion for summary judgment and in response to Otto’s motion and Rule 56.1 statement. References to “Pl.’s
`Resp. to Def.’s 56.1 Stmt.” are to the Rule 56.1 counterstatement submitted by Otto in response to Hearst’s motion and
`Rule 56.1 statement. In both cases, the Rule 56.1 counterstatements contain both the assertions of the moving party and
`the responses of the non-moving party.
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`2
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 3 of 31
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`2. The Wedding
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`On June 10, 2017, Otto attended his friend’s wedding at the Trump National Golf Club in
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`Bedminster, New Jersey. Def.’s 56.1 Stmt. ¶¶ 1, 6, 9. To the guests’ surprise, Donald Trump,
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`President of the United States and owner of the club, appeared at the wedding. Id. ¶ 3. President
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`Trump stayed to sign autographs and take photographs with the couple. Ex C to Compl. (Dkt. No.
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`1-3) (“Esquire Article”). Seizing the opportunity to capture a “remarkable” event, Otto took several
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`photographs of President Trump on his iPhone, including the one at issue in this matter (the
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`“Photograph”). Def.’s 56.1 Stmt. ¶¶ 29–30, 32; see also Compl. ¶ 7; Ex. A to Compl. (the
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`“Photograph”). The Photograph depicts President Trump with the bride, Kristen Piatowski. Def.’s
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`56.1 Stmt. ¶ 28; see the Photograph. Other wedding guests took similar photographs. Def.’s 56.1
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`Stmt. ¶ 41.
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`At the time Otto took the Photograph, his intention was to document an important memory
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`and newsworthy event. Def.’s 56.1 Stmt. ¶ 33; Ex. A to Bishop Decl. (Dkt. No. 57-1) (“Otto Tr.”)
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`at 15:22–16:3, 19:7–9. He planned to use the Photograph for personal, rather than commercial,
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`purposes, and did not intend to share the photograph with friends and family or share it on social
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`media. Def.’s 56.1 Stmt. ¶¶ 31–32; Pl.’s Resp. to Def.’s 56.1 Stmt. (Dkt. No. 72) ¶¶ 123–24. After
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`taking the photo, Otto used an iPhone editing application to modify the image. Def.’s 56.1 Stmt.
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`¶ 34. Otto’s name was entered in the copyright section of the Photograph’s data. Id. ¶ 35. One
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`other wedding guest, Sean Burke, asked Otto to share the Photograph with him, which he did by
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`text message. Id. ¶ 38. Otto did not ask how Burke planned to use the Photograph, and the two did
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`not discuss the Photograph any further that night. Pl.’s Resp. to Def.’s 56.1 Stmt. ¶¶ 125, 127; Otto
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`Tr. at 25:21-23. Otto did not share the Photograph with anyone else and did not post the
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`photograph on his own social media platforms. Def.’s 56.1 Stmt. ¶¶ 36, 39.
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`3
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 4 of 31
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`3. The Publication
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`On Saturday, June 11, the day after the wedding, Otto discovered that the Photograph he
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`sent to Burke had been published in several media outlets, including TMZ, CNN, the Washington
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`Post, and the Daily Mail. Def.’s 56.1 Stmt. ¶ 42. Otto reached out to TMZ via Twitter, notifying
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`them that they had used his photograph without permission and that he wanted to be compensated
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`and credited. Id. ¶¶ 44–45.
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`Otto texted Burke and asked “Hey, TMZ & others using my photo above without
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`credit/compensation. You send to anyone? I want my cut.” Id. ¶ 43; Otto Decl. iso Pl.’s Mot. for
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`Part. Summ. J. (Dkt. No. 38) ¶ 12, Ex. E to Otto Decl. (Dkt. No. 38-5) (“Burke Text Messages”).
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`Mr. Burke responded “Nope! They reached out to kat,” “kat” being another guest who had
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`attended the wedding. Def.’s 56.1 Stmt. ¶ 43; Otto Decl. ¶ 12; Burke Text Messages. The
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`Photograph was also posted to the social media platform Instagram by Laura Piatowski, a relative of
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`the bride (“Ms. Piatowski”). Def.’s 56.1 ¶ 46. It appeared that the news outlets had published the
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`Photograph, among others, after finding them on Ms. Piatowski’s Instagram account. Id. ¶¶ 78, 80.
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`Many other photographs depicting President Trump at the wedding were also circulated on the
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`Internet. Id. ¶¶ 79, 81.
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`That same day, Hearst ran its own article on Esquire’s website entitled “President Trump is
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`the Ultimate Wedding Crasher.” Compl. ¶ 11; Esquire Article. The article, written by Peter Wade,
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`described President Trump’s appearance at the wedding and was illustrated by three pictures,
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`including the Photograph. Def.’s 56.1 Stmt. ¶¶ 54, 67; see Esquire Article. Wade, who is no longer
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`employed with Esquire, had learned about the event from an article in The Hill. Pl.’s Resp. to Def.’s
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`56.1 Stmt. ¶¶ 144–45, 147. In a Slack conversation with Esquire supervising editor Michael
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`Sebastian, Wade stated that he was “trying to find the original source” and had come across several
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`photos on Ms. Piatowski’s Instagram. Sebastian Decl. iso Def.’s Mot. for Part. Summ. J. (Dkt. No.
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`4
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 5 of 31
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`54) (“Sebastian Decl.”) ¶¶ 3–6; Ex. A to Sebastian Decl. (“Wade and Sebastian Slack
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`Conversation”). Wade used the photographs from Ms. Piatowski’s Instagram in the article, crediting
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`her account as the source of the photos. Def.’s 56.1 Stmt. ¶¶ 49–50; Pl.’s Resp. to Def.’s 56.1 Stmt.
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`¶¶ 138–39.
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`The Esquire article reads:
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`The most recognizable guest at Kristen Piatowski and Tucker Gladhill’s
`wedding on Saturday night wasn’t even invited. President Donald Trump
`crashed the couple’s wedding taking place at Trump National Golf Club in
`Bedminster, New Jersey.
`Photos surfaced on Instagram showing the husband and wife smiling with
`President Trump, who apparently stopped by to greet the couple and shake
`hands with the guests.
`Trump has become such a fixture at nuptials at his resorts, the Bedminster
`club once advertised a Trump appearance as a potential feature of booking a
`wedding there, according to a now-discontinued brochure obtained by the
`New York Times:
`“If [Trump] is on-site for your big day, he will likely stop in & congratulate
`the happy couple. He may take some photos with you but we ask you and
`your guests to be respectful of his time and privacy.”
`This was Trump’s 24th visit to a golf course since he was elected. In addition
`to making an appearance, it looks like Trump also took the time to sign
`autographs for fans. One photo showed Trump with a Sharpie, waving a
`Make America Great Again hat.
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`Esquire Article.
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`Hearst did not know that Otto was the owner of the Photograph at the time of publication,
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`and the article did not credit Otto as the creator or the copyright holder of the work. Def.’s 56.1
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`Stmt. ¶ 59; Pl.’s Resp. to Def.’s 56.1 Stmt. ¶ 149. Hearst did not license the Photograph from Otto,
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`nor did it obtain Otto’s consent for its use. Def.’s 56.1 Stmt. ¶¶ 60–62. In fact, Hearst did not have
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`any communication with Otto before receiving the complaint in this matter. Id. ¶¶ 64–66.
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`Nonetheless, Hearst removed the Photograph from its website after this suit was filed. Def.’s 56.1
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`Stmt. ¶ 109; Sebastian Decl. ¶ 15. The photograph is stored on Hearst’s servers. Def.’s 56.1 Stmt. ¶
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`55. Hearst does not charge for access to Esquire.com, but advertisements were displayed on the
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`web page displaying the Trump article and Hearst earned revenue from those ads. Def.’s 56.1 Stmt.
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 6 of 31
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`¶¶ 56–57; Pl.’s Resp. to Def.’s 56.1 Stmt. ¶¶ 157–59.
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`4. The Suit
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`The day after the Photograph was published widely on the Internet, Otto hired counsel and
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`registered the Photograph with the Copyright Office. Def.’s 56.1 Stmt. ¶¶ 83–84. The application
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`was approved and Otto currently possesses a registration certificate, numbered VA 2-055-309 and
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`dated June 12, 2017. Id. ¶¶ 90–92; see also Ex. L to Otto Decl. (Dkt. No. 38-12) (“Certificate of
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`Registration”). Otto has not filed copyright infringement suits against either Burke or Ms. Piatowski
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`for their alleged unauthorized distribution of the Photograph. Pl.’s Resp. to Def.’s 56.1 Stmt. ¶ 133.
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`Otto has filed five copyright infringement suits in this District against various media companies for
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`the unauthorized use of the Photograph, including this case. Def.’s 56.1 Stmt. ¶¶ 102–06. The
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`other four suits have settled, at least one of which resulted into a retroactive licensing agreement for
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`the Photograph’s use. Id. ¶¶ 107, 110.
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`B. Procedural History
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`Jonathan Otto initiated this action on June 21, 2017, Dkt. No. 1, and Defendant Hearst
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`Communications, Inc. filed its answer on July 14, 2017, Dkt. No. 9.
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`On February 26, 2018 Otto filed a motion for partial summary judgement. Dkt. No. 36.
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`Hearst filed its opposition and motion for partial summary judgment on March 26, 2018. Dkt. No.
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`51. On April 23, 2018, Otto filed its reply and opposition to Hearst’s motion for partial summary
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`judgment. Dkt. No. 70. Hearst filed its reply on May 7, 2018. Dkt. No. 75.
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`III.
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`SUMMARY JUDGMENT STANDARD
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`Summary judgment is appropriate when “the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) (“[S]ummary judgment is proper ‘if the
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`pleadings, depositions, answers to interrogatories, and admissions on file, together with the
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`affidavits, if any, show that there is no genuine issue as to any material fact and that the moving
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`party is entitled to a judgment as a matter of law.’” (quoting former Fed. R. Civ. P. 56(c))). A
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`genuine dispute exists where “the evidence is such that a reasonable jury could return a verdict for
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`the nonmoving party,” while a fact is material if it “might affect the outcome of the suit under the
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`governing law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). “Factual disputes that are
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`irrelevant or unnecessary will not be counted.” Id.
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`The movant bears the initial burden of demonstrating “the absence of a genuine issue of
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`material fact,” and, if satisfied, the burden then shifts to the non-movant to present “evidence
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`sufficient to satisfy every element of the claim.” Holcomb v. Iona Coll., 521 F.3d 130, 137 (2d Cir.
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`2008) (citing Celotex, 477 U.S. at 323). To defeat a motion for summary judgment, the non-movant
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`“must come forward with ‘specific facts showing that there is a genuine issue for trial.’” Matsushita
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`Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986) (quoting former Fed. R. Civ. P. 56(e)).
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`“The mere existence of a scintilla of evidence in support of the [non-movant’s] position will be
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`insufficient; there must be evidence on which the jury could reasonably find for the [non-movant].”
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`Anderson, 477 U.S. at 252. Moreover, the non-movant “must do more than simply show that there is
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`some metaphysical doubt as to the material facts,” Matsushita, 475 U.S. at 586 (citations omitted),
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`and she “may not rely on conclusory allegations or unsubstantiated speculation.” Fujitsu Ltd. v. Fed.
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`Express Corp., 247 F.3d 423, 428 (2d Cir. 2001) (internal quotation marks and citation omitted).
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`In determining whether there exists a genuine dispute as to a material fact, the Court is
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`“required to resolve all ambiguities and draw all permissible factual inferences in favor of the party
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`against whom summary judgment is sought.” Johnson v. Killian, 680 F.3d 234, 236 (2d Cir. 2012)
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`(citing Terry v. Ashcroft, 336 F.3d 128, 137 (2d Cir. 2003)). The Court’s job is not to “weigh the
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`evidence or resolve issues of fact.” Lucente v. Int’l Bus. Machs. Corp., 310 F.3d 243, 254 (2d Cir. 2002)
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`(citation omitted). “Assessments of credibility and choices between conflicting versions of the
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 8 of 31
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`events are matters for the jury, not for the court on summary judgment.” Jeffreys v. City of New York,
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`426 F.3d 549, 553 (2d Cir. 2005) (citation omitted). “[T]he judge must ask . . . not whether . . . the
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`evidence unmistakably favors one side or the other but whether a fair-minded jury could return a
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`verdict for the [non-movant] on the evidence presented.” Id. at 553 (quoting Anderson, 477 U.S. at
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`252). “Summary judgment is improper if any evidence in the record from any source would enable a
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`reasonable inference to be drawn in favor of the nonmoving party.” Gym Door Repairs, Inc. v. Young
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`Equip. Sales, Inc., No. 15-cv-4244 (JGK), 2018 WL 4489278, at *2 (S.D.N.Y. Sept. 19, 2018) (citing
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`Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir. 1994)).
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`When resolving cross-motions for summary judgment, the same standards apply. “[E]ach
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`party’s motion must be examined on its own merits, and in each case all reasonable inferences must
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`be drawn against the party whose motion is under consideration.” Morales v. Quintel Entm’t, Inc., 249
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`F.3d 115, 121 (2d Cir. 2001) (citing Schwabenbauer v. Bd. of Educ., 667 F.2d 305, 314 (2d Cir. 1981)).
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`“[W]hen both parties move for summary judgment, asserting the absence of any genuine issues of
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`material fact, a court need not enter judgment for either party. Rather, each party’s motion must be
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`examined on its own merits, and in each case all reasonable inferences must be drawn against the
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`party whose motion is under consideration.” Id. at 121(citations omitted).
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`IV. DISCUSSION
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`In his motion for partial summary judgement, Otto seeks judgment on Hearst’s liability for
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`copyright infringement, on Hearst’s assertion of the fair use defense, and on Hearst’s remaining
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`affirmative defenses. In its cross-motion, Hearst also moves for partial summary judgment on its
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`fair use defense, in addition to whether its alleged infringement was willful—the result of which
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`determines Plaintiff’s ability to seek statutory damages under 17 U.S.C. § 504(c). For the following
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`reasons, Plaintiff’s motion is granted in whole and Defendant’s motion is denied in whole.
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 9 of 31
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`A. Copyright Infringement
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`Plaintiff moves for summary judgment on the issue of copyright infringement by Hearst,
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`alleging that Hearst has infringed on its copyright by unlawfully appropriating the Photograph for its
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`use. Pl.’s Memo. at 9. The Court finds that the undisputed facts demonstrate Hearst’s liability for
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`copyright infringement and Plaintiff’s motion is granted.
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`The Copyright Act grants the owner of the copyright the exclusive right to authorize the
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`reproduction, distribution, and preparation of derivatives of the owner’s work. 17 U.S.C. § 106; see
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`Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 546–47 (1985). To establish liability
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`for an infringement claim, a plaintiff must prove that (1) she holds a valid ownership interest in the
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`relevant copyrights, and (2) the defendant has “actually copied” her work. Castle Rock Entm’t, Inc. v.
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`Carol Pub. Grp., Inc., 150 F.3d 132, 137 (2d Cir. 1998). After establishing actual copying, the plaintiff
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`must demonstrate that the copying was unlawful by proving a “substantial similarity” exists between
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`the defendant’s work and the “protectable elements” of her copyrighted work. Id. The Defendant
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`here only argues that there is a genuine dispute of material fact as to whether Otto has a valid
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`ownership interest in the copyright of the Photograph.
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`1. Ownership of a Valid Copyright
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`A certificate of registration from the United States Register of Copyrights constitutes prima
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`facie evidence of the valid ownership of a copyright. Jorgensen v. Epic/Sony Records, 351 F.3d 46, 51
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`(2003) (citing 17 U.S.C. § 410(c)). Hearst argues that summary judgment should be denied on this
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`issue because there exists a genuine issue of material fact regarding whether the copyright certificate
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`proffered by Otto actually protects the photograph at issue. Def.’s Memo. at 37–38. This position
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`is based on the fact that the copyright certificate that Otto originally submitted with his briefing did
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`not include a copy of the photograph deposited with the United States Copyright Office. Id.
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`However, the issue was easily resolved when Otto filed on the docket a certified deposited copy of
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 10 of 31
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`the copyright registration that included the Photograph, of which he requests the Court take judicial
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`notice. See Mot. for Judicial Notice (Dkt. No. 76–78). Under Federal Rule of Evidence 201, the
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`Court can take judicial notice of a fact not subject to reasonable dispute. Fed. R. Evid. 201(b).
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`Here, Hearst has not set forth any evidence that would support a finding that the registration is
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`invalid, and examining the record before the Court, no reasonable juror could find it so. The
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`certified and deposited copy of the registration clearly shows that the photograph at issue is the one
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`protected by the certificate. See Ex. B to Freeman Decl. iso Pl.’s Mot. for Judicial Notice (Dkt. No.
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`78-2) (“Certified Copyright Registration”).
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`In addition, Otto has submitted three affidavits which support a finding that he owned a
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`valid copyright in the Photograph. See Otto Decl. ¶¶ 23–26; Halperin Decl. iso Pl.’s Mot. for Summ.
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`J. (Dkt No. 39) (“Halperin Decl.”) ¶¶ 6–8; Liebowitz Decl. iso Pl.’s Opp. to Def.’s Mot. for Summ.
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`J. (Dkt No. 71) (“Liebowitz Decl.”) ¶¶ 4–8. The day after the Photograph appeared in media
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`outlets, Otto retained the services of counsel who registered his copyright in the Photograph with
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`the United States Copyright Office. Def.’s 56.1 Stmt. ¶¶ 83–84, 90–92. The first affidavit is from
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`Otto, the second is from defense counsel Richard Liebowitz who supervised the application process,
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`and the third is from Donna Halperin, an employee of the Liebowitz Law Firm who submitted the
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`application. Defendant has moved to strike Ms. Halperin’s affidavit on the grounds that Plaintiff
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`failed to disclose her in his Rule 26 disclosures. Def.’s Mot. to Strike (Dkt. No. 55) at 3–4. The
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`Court need not address this issue as the certified and deposited copyright registration and remaining
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`two affidavits are more than sufficient to determine that Otto owned a valid copyright in the
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`Photograph. Thus, regardless of the availability of Ms. Halperin’s testimony, a reasonable jury could
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`only find that Otto has satisfied the first element of his infringement claim.
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`2. Actual Copying and Substantial Similarity
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`Once a valid copyright registration is established, “a plaintiff must []show that his work was
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 11 of 31
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`actually copied . . . [and] then must show that the copying amounts to an improper or unlawful
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`appropriation.” Castle Rock, 150 F.3d at 137 (2d Cir. 1998) (citing Laureyssens v. Idea Group, Inc., 964
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`F.2d 131, 139–40 (2d Cir. 1992). Actual copying may be shown with direct or circumstantial
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`evidence that the defendant had access to the copyrighted work and that there are probative
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`similarities between the works. Id. After actual copying is established, the plaintiff must proceed to
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`demonstrate that the copying was improper or unlawful by showing that the second work is
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`substantially similar to protected elements of the original work. Id.
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`Here, the parties do not contest the fact that Hearst actually copied Otto’s photograph for
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`its use in the Esquire Article, nor that the works are substantially similar because they are the same
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`photograph. The parties do not dispute Hearst did not have Otto’s permission to use the
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`Photograph, making the appropriation unlawful. As such, the remaining elements of Plaintiff’s
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`copyright infringement claim have been met.
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`Accordingly, because Otto has established that he owns a valid copyright in the image, and
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`because the actual copying and substantial similarity elements have been met, the Court finds that
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`Hearst infringed upon Otto’s exclusive right to control the reproduction and distribution of his
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`photograph. Plaintiff’s motion for summary judgment on this issue is granted.
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`B. Affirmative Defenses
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`Both Otto and Hearst seek summary judgment on Defendant’s fair use defense. Otto
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`additionally seeks judgment on Hearst’s remaining defenses: (1) failure to state a claim (first
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`defense); (2) non-infringement (third defense); (3) waiver (sixth defense); (4) consent (sixth defense);
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`and (5) release (eighth defense). Pl.’s Memo. at 23–24. Where, as here, “a plaintiff uses a summary
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`judgment motion . . . to challenge the legal sufficiency of an affirmative defense—on which the
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`defendant bears the burden of proof at trial—a plaintiff may satisfy its rule 56 burden by showing
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`that there is an absence of evidence to support an essential element of the non-moving party’s case.”
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 12 of 31
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`F.D.I.C. v. Giammettei, 34 F.3d 51, 54 (2d Cir. 1994) (citing Celotex, 477 U.S. at 325).
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`1. Fair Use
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`The purpose of copyright law is “[t]o promote the Progress of Science and useful Arts . . . ,”
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`U.S. Const., Art. I, § 8, cl. 8, and “expand public knowledge and understanding . . . by giving
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`potential creators exclusive control over copying of their works, thus giving them a financial
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`incentive to create informative, intellectually enriching works for public consumption.” Authors
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`Guild v. Google, Inc., 804 F.3d 202, 212 (2d Cir. 2015). “[W]hile authors are undoubtedly important
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`intended beneficiaries of copyright, the ultimate, primary intended beneficiary is the public, whose
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`access to knowledge copyright seeks to advance by providing rewards for authorship.” Id. Thus,
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`the fair use doctrine is a statutory exception to copyright infringement, permitting the unauthorized
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`use of a protected work for certain purposes such as criticism, comment, teaching, scholarship,
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`research, or, as relevant here, news reporting. 17 U.S.C. § 107.
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`“[T]he fair use determination is an open-ended and context sensitive inquiry,” weighing four
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`non-exclusive statutorily provided factors in light of the purposes of copyright. Cariou v. Prince, 714
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`F.3d 694, 705 (2d Cir. 2013). The fair use factors are (1) the purpose and character of the use; (2)
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`the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation
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`to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or
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`value of the copyrighted work. 17 U.S.C. § 107. The Second Circuit has held that these statutory
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`factors are not requirements and that the party requesting a judgment of fair use need not
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`demonstrate that every factor weighs in its favor. Cariou, 714 F.3d at 705. However, “[t]he ultimate
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`test of fair use is whether the copyright law’s goal of promoting the Progress of Science and useful
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`Arts would be better served by allowing the use than by preventing it.” Castle Rock, 150 F.3d at 141.
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`Although “[f]air use is a mixed question of law and fact,” Harper & Row, 471 U.S. at 560, the
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`Second Circuit has resolved fair use determinations at the summary judgment stage where the
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 13 of 31
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`moving party shows there are no genuine issues of material fact. Wright v. Warner Books, Inc., 953
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`F.2d 731, 735 (2d Cir. 1991) (“The fact-driven nature of the fair use determination suggests that a
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`district court should be cautious in granting Rule 56 motions in this area; however, it does not
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`protect the copyright holder from summary disposition of her claims where there are no material
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`factual disputes.”); see also Leibovitz v. Paramount Pictures Corp., 137 F.3d 109 (2d Cir. 1998) (affirming
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`summary judgment awarded to defendants on basis of fair use defense).
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`Specifically in cases pertaining to the media’s secondary use of a copyrighted work, as in this
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`matter, the Second Circuit has consistently held that that “First Amendment concerns are protected
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`by and coextensive with the fair use doctrine.” Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc.,
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`166 F.3d 65, 74–75 (2d Cir. 1999); see also Twin Peaks Prods., Inc. v. Publications Int’l, Ltd., 996 F.2d
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`1366, 1378 (2d Cir. 1993) (holding that “except perhaps in an extraordinary case, ‘the fair use
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`doctrine encompasses all claims of First Amendment in the copyright field.’”) (quoting New Era
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`Pubs. Int’l, ApS v. Henry Holt & Co., 873 F.2d 576, 584 (2d Cir. 1989)). Therefore, “[w]hile an entity’s
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`status as a news publication may be highly probative on certain relevant inquiries, such as whether
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`that entity has a fair use defense to copyright infringement, it does not render that entity immune
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`from liability under intellectual property laws.” Sarl Louis Feraud Int’l v. Viewfinder, Inc., 489 F.3d 474,
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`480 (2d Cir. 2007). Otherwise stated, while free speech concerns are clearly relevant to the fair use
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`analysis, the First Amendment does not “categorical[ly] protect[]” against claims of copyright
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`infringement. Id. (“The fact that an entity is a news publication engaging in speech activity does not,
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`standing alone, relieve such entities of their obligation to obey intellectual property laws.”).
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`i. Purpose and Character of the Work
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`The first factor, termed “the heart of the fair use inquiry,” looks to the purpose and
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`character of the secondary use and whether the use was for commercial or nonprofit educational
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`purposes. On Davis v. The Gap, Inc., 246 F.3d 152, 174 (2d Cir. 2001). The central purpose of the
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`Case 1:17-cv-04712-GHW-JLC Document 85 Filed 12/10/18 Page 14 of 31
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`first factor is to determine “whether and to what extent the work is transformative.” Campbell v.
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`Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). “If the secondary use adds value to the original—if
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`the copyrightable expression in the original work [must be] used as raw material, transformed in the
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`creation of new information, new aesthetics, new insights and understandings—this is the very type
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`of activity that the fair use doctrine intends to protect for the enrichment of society.” Castle Rock,
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`150 F.3d at 141 (internal citations omitted); see also Bill Graham Archives v. Dorling Kindersley Ltd., 448
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`F.3d 605, 608 (2d Cir. 2006) (observing that a transformative use “adds something new, with a
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`further purpose or different character, altering the first with new expression, meaning, or message.”)
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`(citing Campbell, 510 U.S. 569, 579); Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014)
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`(“A use is transformative if it does something more than repackage or republish the original
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`copyrighted work.”). “With regard to photographs, “[u]sing a photo for the precise reason it was
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`created does not support a finding that the nature and purpose of the use was fair.” See BWP Media
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`USA, Inc. v. Gossip Cop Media, Inc., 196 F. Supp. 3d 395, 407 (S.D.N.Y. 2016).
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`First, to the extent that Defendant is arguing that its use of the Photograph in the article is
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`fair because the Photograph was created for personal use and Hearst used it for news, the Court is
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`unpersuaded. Def.’s Memo. at 11–12. The Court has not found any law supporting this point, and
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`the existing precedent requires the opposite conclusion. Though news reporting is specifically
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`named in 17 U.S.C. § 107 as a potential method of fair use, “a news reporting purpose by no means
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`guarantees” such a finding. Harper & Row, 471 U.S. at 557. The Second Circuit has recognized that
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`in matters where the secondary use falls under the category of news reporting, “the need to convey
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`information to the public accurately may in some instances make it desirable and consonant with
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`copyright law for a defendant to faithfully reproduce an original work without alteration.” Swatch
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`Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014). When such uses are found to
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`be transformative, courts often “emphasiz[e] the altered purpose or context of the work, as
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`evidenced by surrounding commentary or criticism.” Id. To be clear, however, commentary is not
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`necessary to the fair use defense, only that the secondary use provide “new expression, meaning, or
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`message” to the origi