Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 1 of 21
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`
`
`LAWRENCE SCHWARTZWALD,
`
`
`Plaintiff,
`
`Defendant.
`
`USDC-SDNY
`DOCUMENT
`ELECTRONICALLY FILED
`DOC#:
`DATE FILED: 9/10/2020
`
`No. 19-CV-9938 (RA)
`
`OPINION & ORDER
`
`
`
`
`OATH INC.,
`
`
`v.
`
`
`
`
`RONNIE ABRAMS, United States District Judge:
`
`Plaintiff Lawrence Schwartzwald brings this action against Defendant Oath Inc., which
`
`owns and operates www.HuffPost.com, alleging copyright infringement in violation of Section
`
`501 of the Copyright Act, 17 U.S.C. § 101 et seq. Schwartzwald asserts that Oath unlawfully
`
`reproduced a photograph he took of the actor Jon Hamm (the “Photograph”) without seeking his
`
`authorization or paying him a licensing fee. The Photograph, which Schwartzwald alleges
`
`“illustrates what Jon Hamm looks like wearing trousers in public while he walks down the street,
`
`ostensibly without any underwear,” Dkt. 15 ¶ 16, was subsequently included in altered form in a
`
`Huffington Post article entitled, 25 Things You Wish Your Hadn’t Learned In 2013 And Must
`
`Forget in 2014, id. ¶ 19 & Ex. B. Now before the Court is Oath’s motion to dismiss
`
`Schwartzwald’s First Amended Complaint (“FAC”) pursuant to Federal Rule of Civil Procedure
`
`12(b)(6). For the reasons that follow, the Court agrees with Oath that its use of the Photograph is
`
`protected by the fair use doctrine. Oath’s motion is therefore granted.
`
`FACTUAL BACKGROUND
`
`Except where otherwise noted, the following facts are drawn from Schwartzwald’s FAC
`
`
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 2 of 21
`
`
`
`and the exhibits attached thereto, and are assumed to be true for purposes of this motion. See
`
`Myun–Uk Choi v. Tower Research Capital LLC, 890 F.3d 60, 65 (2d Cir. 2018).
`
`
`
`Schwartzwald is a New York-based professional photographer who licenses his
`
`photographs to online and print media for a fee. FAC ¶¶ 1, 5. Oath is a for-profit media
`
`company that owns and operates the website www.HuffPost.com. Id. ¶¶ 6-10.
`
`
`
`Schwartzwald took the Photograph of the actor Jon Hamm walking down the street while
`
`carrying a shopping bag and holding the hand of his then-girlfriend, the actress Jennifer
`
`Westfeld. Id. ¶ 11 & Ex. A; Dkt. 17 (“MTD”) at 6. Schwartzwald alleges that the Photograph
`
`“illustrates what Jon Hamm looks like wearing trousers in public while he walks down the street,
`
`ostensibly without any underwear.” Id. ¶ 16. He further contends that he “took the Photograph
`
`for the purpose of commercial news reporting.” Id. ¶ 14.
`
`
`
`2
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 3 of 21
`
`
`
`Schwartzwald licensed the Photograph to Splash News & Picture Agency, a New York-
`
`based stock photography agency that sub-licenses Schwartzwald’s photographs to third-party
`
`media outlets. Id. ¶ 12. He also licensed it to the New York Daily News and other third-party
`
`media outlets “for the purpose of commercial news reporting.” Id. ¶¶ 13, 15.
`
`
`
`On December 27, 2013, Oath ran an article on www.HuffPost.com entitled, 25 Things
`
`You Wish You Hadn’t Learned in 2013 and Must Forget in 2014. Id. ¶ 19 & Ex. B. The article
`
`begins:
`
`2013 will be noted for a number of positive, enlightening and informative moments
`that took place across the cultural spectrum. People discovered, spoke truth to
`power and risked their lives to get information to the public. But there was also a
`poop cruise, outrage over butt-shaking and E-list celebrities clinging to fame by
`doing porn. You were alright, 2013, but we could have gone without learning …
`
`Id. at Ex B. The article proceeds to list 25 events or trends of 2013 that the authors “could have
`
`gone without learning.” Id. Each event or trend is accompanied by a short paragraph of
`
`commentary; twelve are also accompanied by photographs. Id. Some of the items in the list—
`
`such as former New York congressman Anthony Weiner’s explicit text messages—are salacious.
`
`Id. Others—such as the discovery that “[d]inosaur erotica is a thing that exists”—border on the
`
`absurd. Id. A few—such as the contention that “[p]eople freak out way more over TV deaths
`
`than they do over ones in the world we actually live in”—are darker. Id. A number of the items
`
`focus on viral moments involving celebrities, such as the assertion that “the nation flipped a
`
`collective shit” when pop star Miley Cyrus “twerked” at the MTV Video Music Awards. Id.
`
`
`
`At issue in this case is an item in the list entitled, “Some ad men don’t do underwear.”
`
`Id. The text below the heading reads:
`
`This year has been a busy one for “Mad Men” star Jon Hamm’s privates.
`Apparently he’s very blessed south of the border, and he, or those who examine
`photographs of him, really want you to know that. Hamm says he wants people to
`3
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 4 of 21
`
`
`
`stop talking about his loins, but it might help if he’d put on some underwear.
`
`Id. Following the text is a cropped version of the Photograph that excludes approximately half
`
`of the image, including the girlfriend with whom Hamm is walking (the “Oath Photograph”). Id.
`
`Superimposed over Hamm’s groin area—the portion of the Photograph that allegedly “illustrates
`
`what Jon Hamm looks like wearing trousers . . . without any underwear”—is a black box
`
`containing the words “Image Loading” in white text. Id. ¶ 16 & Ex B.
`
`
`
`Oath did not license the Photograph from Schwartzwald, nor did it obtain his permission
`
`or consent to publish the Photograph. Id. ¶ 24. Schwartzwald registered the Photograph with the
`
`United States Copyright Office on May 18, 2017—more than three years after Oath published
`
`the article.1 Id. ¶ 18. The Photograph was given the registration number VA 2-053-227. Id.
`
`
`1 The FAC states that a copy of the registration is attached as Exhibit B and that Oath’s article is attached as Exhibit
`4
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 5 of 21
`
`
`
`The registration states that the Photograph was first published on July 9, 2012. Schwartzwald
`
`alleges that he discovered Oath’s article in April 2018. Id. ¶ 25.
`
`PROCEDURAL HISTORY
`
`Schwartzwald filed this action on October 28, 2019. Dkt. 1. After Oath filed a motion to
`
`dismiss on December 20, 2019, Dkt. 9, Schwartzwald filed the FAC on January 10, 2020, Dkt.
`
`15. Oath filed the motion to dismiss the FAC now before the Court on January 24, 2020, arguing
`
`that it did not infringe Schwartzwald’s copyright because its use of the Photograph constitutes
`
`fair use under copyright law. Dkts. 16-17. Schwartzwald filed a memorandum in opposition to
`
`Oath’s motion on February 7, 2020, Dkt. 18, to which Oath replied on February 14, 2020, Dkt.
`
`19. The Court held oral argument on July 7, 2020.
`
`LEGAL STANDARD
`
`To survive a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), a
`
`complaint must plead “enough facts to state a claim to relief that is plausible on its face.” Bell
`
`Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the
`
`plaintiff pleads factual content that allows the court to draw the reasonable inference that the
`
`defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). On
`
`a Rule 12(b)(6) motion, the question is “not whether [the plaintiff] will ultimately prevail,” but
`
`“whether his complaint [is] sufficient to cross the federal court’s threshold.” Skinner v. Switzer,
`
`562 U.S. 521, 529–30 (2011) (citation omitted). In answering this question, the Court must
`
`“accept[ ] all factual allegations as true, but ‘giv[e] no effect to legal conclusions couched as
`
`
`C. Id. Exhibit B to the FAC, however, is Oath’s article, not the copyright registration, and there is no Exhibit C.
`The Court nonetheless deems the copyright registration, which is publicly available at https://cocatalog.loc.gov,
`incorporated into the FAC by reference. See BankUnited, N.A. v. Merritt Envtl. Consulting Corp., 360 F. Supp. 3d
`172, 183 (S.D.N.Y. 2018) (“To be incorporated by reference, the complaint must make a clear, definite and
`substantial reference to the documents.”) (internal quotation marks and citations omitted).
`5
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 6 of 21
`
`
`
`factual allegations.’” Stadnick v. Vivint Solar, Inc., 861 F.3d 31, 35 (2d Cir. 2017) (quoting Starr
`
`v. Sony BMG Music Entm’t, 592 F.3d 314, 321 (2d Cir. 2010)).
`
`DISCUSSION
`
`Section 106 of the Copyright Act grants copyright holders “exclusive rights . . . to
`
`reproduce the copyrighted work in copies” and “to prepare derivative works based upon the
`
`copyrighted work.” 17 U.S.C. § 106. Yet “[f]rom the infancy of copyright protection, some
`
`opportunity for fair use of copyrighted materials has been thought necessary to fulfill copyright’s
`
`very purpose, ‘[t]o promote the Progress of Science and useful Arts.’” Campbell v. Acuff-Rose
`
`Music, Inc., 510 U.S. 569, 575 (1994) (quoting U.S. Const., Art. I, § 8, cl. 8). While the origins
`
`of the fair use doctrine lie in the common law, it is now codified in Section 107 of the Copyright
`
`Act. See id. at 576 (1994) (“Congress meant § 107 to restate the present judicial doctrine of fair
`
`use, not to change, narrow, or enlarge it in any way and intended that courts continue the
`
`common-law tradition of fair use adjudication.”) (internal quotation marks and citations
`
`omitted). Section 107 permits the unauthorized use or reproduction of a copyrighted work if it is
`
`“for purposes such as criticism, comment, news reporting, teaching . . . , scholarship, or
`
`research.” 17 U.S.C. § 107. The statute lists four factors for “determining whether the use made
`
`of a work in any particular case is a fair use”:
`
`(1) the purpose and character of the use, including whether such use is of a
`commercial nature or is for nonprofit educational purposes;
`
`(2) the nature of the copyrighted work;
`
`(3) the amount and substantiality of the portion used in relation to the copyrighted
`work as a whole; and
`
`(4) the effect of the use upon the potential market for or value of the copyrighted
`work.
`
`Id. “The task [of analyzing fair use] is not to be simplified with bright-line rules, for the statute,
`6
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 7 of 21
`
`
`
`like the doctrine it recognizes, calls for case-by-case analysis.” Campbell, 510 U.S. at 577
`
`(citations omitted); see also Blanch v. Koons, 467 F.3d 244, 251 (2d Cir. 2006) (“[T]he
`
`determination of fair use is an open-ended and context-sensitive inquiry.”). “The ultimate test of
`
`fair use . . . is whether the copyright law’s goal of promoting the Progress of Science and useful
`
`Arts would be better served by allowing the use than by preventing it.” Castle Rock Entm’t, Inc.
`
`v. Carol Publ’g Group, 150 F.3d 132, 141 (2d Cir.1998) (internal quotation marks and citations
`
`omitted).
`
`
`
`“Fair use is an affirmative defense, and therefore Defendant bears the burden of showing
`
`that a given use is fair.” Yang v. Mic Network, Inc., 405 F. Supp. 3d 537, 542 (S.D.N.Y. 2019)
`
`(citing Authors Guild v. Google, Inc., 804 F.3d 202, 213 (2d Cir. 2015)). An affirmative defense
`
`“may be adjudicated” on a motion to dismiss “where the facts necessary to establish the defense
`
`are evident on the face of the complaint.” Kelly-Brown v. Winfrey, 717 F.3d 295, 308 (2d Cir.
`
`2013) (citing McKenna v. Wright, 386 F.3d 432, 436 (2d Cir. 2004)). Accordingly, when “the
`
`only two pieces of evidence needed to decide the question of fair use” are “the original version”
`
`and the allegedly infringing version, it is proper to decide the issue on a motion to dismiss.
`
`Cariou v. Prince, 714 F.3d 694, 707 (2d Cir. 2013).
`
`
`
`Having considered each of the four fair use factors and weighed them together, the Court
`
`finds that Oath’s use of the Photograph constitutes a fair use.
`
`I.
`
`Purpose and Character of the Use
`
`“The first factor, ‘purpose and character of use,’ involves three sub-factors, which
`
`involve determining whether the use is: (1) transformative; (2) for commercial purposes; or (3) in
`
`bad faith.” Yang, 405 F. Supp. 3d at 542 (citing NXIVM Corp. v. Ross Inst., 364 F.3d 471, 477-
`
`78 (2d Cir. 2004)). The inquiry “may be guided by the examples given in the preamble to § 107,
`7
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 8 of 21
`
`
`
`looking to whether the use is for criticism, or comment, or news reporting, and the like.”
`
`Campbell, 510 U.S. at 578-79. “The central purpose of this investigation is to see . . . whether
`
`the new work merely supersedes the objects of the original creation, or instead adds something
`
`new, with a further purpose or different character, altering the first with new expression,
`
`meaning, or message.” Id. at 579 (internal quotation marks, citations, and brackets omitted).
`
`Transformative works “lie at the heart of the fair use doctrine’s guarantee of breathing space
`
`within the confines of copyright, and the more transformative the new work, the less will be the
`
`significance of other factors, like commercialism, that may weigh against a finding of fair use.”
`
`Id. (citations omitted); see also Blanch, 467 F.3d at 254.
`
`A. Oath’s Use of the Photograph Was Transformative
`
`“[C]opying from an original for the purpose of criticism or commentary on the original or
`
`provision of information about it, tends most clearly to satisfy Campbell’s notion of the
`
`‘transformative’ purpose involved in the analysis of Factor One.” Authors Guild, 804 F.3d at
`
`215–16 (footnotes omitted); see also Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d
`
`73, 84 (2d Cir. 2014) (“Courts often find such uses transformative by emphasizing the altered
`
`purpose or context of the work, as evidenced by surrounding commentary or criticism.”)
`
`(citations omitted). Thus, “[d]isplay of a copyrighted image or video may be transformative
`
`where the use serves to illustrate criticism, commentary, or a news story about that work.”
`
`Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339, 352 (S.D.N.Y. 2017). For
`
`example, a “news report about a video that has gone viral on the Internet might fairly display a
`
`screenshot or clip from that video to illustrate what all the fuss is about.” Id. (citing Konangataa
`
`v. Am. Broadcasting Companies, Inc., No. 16-CV-7382 (LAK), 2017 WL 2684067, at *1
`
`(S.D.N.Y. June 21, 2017)). “Similarly, ‘depiction of a controversial photograph’ could be fair
`8
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 9 of 21
`
`
`
`use as accompaniment to commentary about the controversy or criticism of the photograph.”
`
`Yang, 405 F. Supp. 3d at 543 (quoting Barcroft Media, 297 F. Supp. 3d at 352). “On the other
`
`hand, if a photograph is merely used as an ‘illustrative aid’ that ‘depict[s] the subjects described
`
`in [an] article[ ],’ it does not constitute transformative use.” Id. (quoting Barcroft Media, 297 F.
`
`Supp. 3d at 352) (brackets in original). That said, the copyright law “imposes no requirement
`
`that a work comment on the original or its author in order to be considered transformative, and a
`
`secondary work may constitute a fair use even if it serves some purpose other than those
`
`(criticism, comment, news reporting, teaching, scholarship, and research) identified in the
`
`preamble to the statute.” Cariou, 714 F.3d at 706.
`
`Oath contends that its use of the Photograph was transformative because the
`
`superimposed text box, photo caption, title, and broader context of the article fundamentally
`
`transformed the character and purpose of the use. See MTD at 10-14. The Court agrees. Unlike
`
`the original Photograph, which Plaintiff claims had the objective purpose of “illustrat[ing] what
`
`Jon Hamm looks like wearing trousers in public while he walks down the street, ostensibly
`
`without any underwear,” Oath’s use of the Photograph served the dual purpose of mocking both
`
`Hamm and those who found the Photograph newsworthy in the first instance. The text box with
`
`the words “IMAGE LOADING” in all caps—a play on words that alludes to both the nature of
`
`digital technology and the body part at issue—suggests that Oath is making fun of Hamm, not
`
`merely “illustrating” his appearance. Moreover, as described above, the headline of Oath’s
`
`article—25 Things You Wish You Hadn’t Learned in 2013 and Must Forget in 2014—makes
`
`clear that the broader purpose of the article is to poke fun at events, trends, or topics that went
`
`“viral” in 2013. FAC at Ex. B. The text immediately preceding the Photograph reinforces the
`
`Court’s conclusion that the article aims to mock the public fixation on Hamm’s “privates” in
`9
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 10 of 21
`
`
`
`addition to mocking Hamm himself. It states:
`
`This year has been a busy one for “Mad Men” star Jon Hamm’s privates.
`Apparently he’s very blessed south of the border, and he, or those who examine
`photographs of him, really want you to know that. Hamm says he wants people to
`stop talking about his loins, but it might help if he’d put on some underwear.
`
`Id. The caption thus twice references the public’s focus on revealing photos of Hamm—first, by
`
`describing “those who examine photographs of” Hamm, and second, by declaring that “Hamm
`
`says he wants people to stop talking about his loins.” Id. This caption, when viewed in the
`
`context of the article’s larger focus on viral moments, demonstrates that Oath used the
`
`Photograph in part to mock the fact that the Photograph went viral to begin with. The Court thus
`
`concludes that the derivative use of the Photograph in Oath’s article served two purposes that are
`
`distinct from that served by the original Photograph.
`
`Oath’s use of the Photograph was also transformative because Oath modified the very
`
`portion of the Photograph that made it most valuable or unique in the first instance. As noted
`
`above, Schwartzwald alleges that the Photograph “illustrates what Jon Hamm looks like wearing
`
`trousers in public while he walks down the street, ostensibly without any underwear.” FAC ¶ 16.
`
`By superimposing a text box over Hamm’s groin area, Oath obscured the specific part of the
`
`Photograph that allegedly reveals this fact. A reader of Oath’s article would thus not be able to
`
`see the very thing the Photograph purportedly illustrates beneath the strategically-placed text
`
`box—and what sets the Photograph apart from most other photographs of Hamm. Accordingly,
`
`unlike Schwartzwald’s photograph, Oath’s photograph is not “illustrat[ive]” of “what Jon Hamm
`
`looks like wearing trousers in public while he walks down the street, ostensibly without any
`
`underwear.” Id. Rather, it seeks to conjure up this image in the reader’s mind through the
`
`comedic placement of the text box.
`
`
`
`10
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 11 of 21
`
`
`
`These distinctive features of Oath’s use of the Photograph set this case apart from several
`
`others from this district in which courts have found that derivative uses of photographs were not
`
`transformed by modest alterations to the originals. In Graham v. Prince, 265 F.Supp.3d 366
`
`(S.D.N.Y. 2017), for example, the court held that a photograph was not transformed by the
`
`defendant’s addition of an Instagram box. Similarly, in North Jersey Media Group, Inc. v.
`
`Jeanine Pirro & Fox News Network, LLC, 74 F. Supp. 3d 605 (S.D.N.Y. 2015), the court held
`
`that a photograph was not transformed when the defendants superimposed the text
`
`“#neverforget” over an image of the twin towers from September 11th. In contrast to the
`
`derivative uses of the photographs in Graham and North Jersey Media Group, however, Oath did
`
`not simply add a border, hashtag, or make another minor alteration to the Photograph. Instead,
`
`as described above, it cropped approximately half of the image, superimposed a comedic text
`
`box over the key portion of the Photograph (Hamm’s groin area), placed a witty caption above
`
`the Photograph, and placed it within the context of a larger article about “viral” moments or
`
`trends.
`
`Oath’s use of the Photograph is also distinct from the defendant media company’s use of
`
`celebrity photographs in Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339
`
`(S.D.N.Y. 2017). There, the defendant used the plaintiffs’ copyrighted photographs of
`
`celebrities in articles on the defendant’s celebrity gossip websites. For example, it used one
`
`photograph of the singer Selena Gomez “in a gallery of twenty-five images showcasing a
`
`‘risqué’ fashion trend described by [the defendant] as ‘Underbutt Fever.’” Id. at 347. It used
`
`another photograph of the actress Amanda Bynes in an article entitled, “‘Amanda Bynes is Alive
`
`and Well in Mexico (and in a bikini) [Photos],’ which commented on the actress’s appearance
`
`and sought ‘to demonstrate her improved health after a stint in rehab and turbulent behavior on
`11
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 12 of 21
`
`
`
`social media.’” Id. The court held:
`
`[The defendant’s] use of the Images had no transformative effect because it
`displayed the Images in the same manner and for the same purpose as they were
`originally intended to be used. Paparazzi photographs . . . are designed to document
`the comings and goings of celebrities, illustrate their fashion and lifestyle choices,
`and accompany gossip and news articles about their lives . . . The purposes for
`which [the defendant] used the Images—to serve as banner images and thumbnails
`for “Daily Dumps” of celebrity news . . . ; to accompany articles about celebrity
`gossip and human interest stories . . . ; and to be included in roundups of celebrity
`fashion trends . . . are all consistent with the original intent behind taking and
`copyrighting the Images.
`
`Id. at 351-52 (internal citations omitted). The court found that the defendant did not use the
`
`copyrighted photographs “to illustrate criticism, commentary, or a news story about” the
`
`photographs, in the way that a “news report about a video that has gone viral on the Internet
`
`might fairly display a screenshot or clip from that video to illustrate what all the fuss is about.”
`
`Id. at 352 (citations omitted) (emphasis in original). Instead, the court held, the defendant “used
`
`the Images as illustrative aids because they depicted the subjects described in its articles.” Id. If
`
`Oath had used the Photograph simply as an illustrative aid in a celebrity gossip story—for
`
`example, by publishing an article focused on the relationship between Hamm and his then-
`
`girlfriend—it would likely not be entitled to a fair use defense. Yet, as described above, Oath’s
`
`article was not a typical celebrity gossip story, but instead was intended to be a comedic
`
`compilation of and commentary about viral moments or trends from 2013, including the viral
`
`Photograph of Hamm.
`
`The use of the Photograph here is more akin to the defendant media company’s use of a
`
`photograph of the financier Dan Rochkind and his girlfriend in Yang v. Mic Network, 405 F.
`
`Supp. 3d 537. The photograph in Yang initially appeared in a New York Post article entitled
`
`Why I Don’t Date Hot Women Anymore. The defendant media organization published an article
`
`
`
`12
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 13 of 21
`
`
`
`entitled, Twitter is skewering the ‘New York Post’ for a piece on why a man “won’t date hot
`
`women” that featured a screenshot of the New York Post article—including a portion of the
`
`photograph of Rochkind—as well as a series of embedded tweets that mocked both the Post
`
`article and Rochkind himself. The court noted that the tweets embedded in defendant’s article
`
`“not only poke[] fun at Rochkind as he is depicted in the Photograph, but also the idea that his
`
`opinions on ‘hot women’ would be reported seriously in the way that the Post has done.” Id. at
`
`543-44. The court thus found that the defendant’s use of the article constituted fair use, as the
`
`article was “used ‘to illustrate what all the fuss is about,’ namely the Post Article and its
`
`depiction of Rochkind,” which was “a different use of the Photograph than the Post’s.” Id. at
`
`544 (quoting Barcroft Media, 297 F. Supp. 3d at 352). Here, too, the Photograph was “used to
`
`illustrate what all the fuss is about,” namely Hamm’s “privates” and the public’s fixation with
`
`them, which is a different use of the Photograph than that intended by Schwartzwald. Id.
`
`Although the Oath Photograph arguably constitutes a parody of the original Photograph
`
`as well, this presents a closer question because “[p]arody needs to mimic [the] original to make
`
`its point.” Campbell, 510 U.S. at 580-81. In light of the Court’s holding that Oath’s use of the
`
`Photograph was transformative for the reasons identified above, it need not reach Oath’s
`
`alternative argument that the Oath Photograph is a parody of the original Photograph, see MTD
`
`at 15, nor Schwartzwald’s response that the Oath Photograph cannot constitute a parody because
`
`it involves a “reproduction” of the original Photograph as opposed to a “recreation or imitation”
`
`thereof, see July 7, 2020 Tr. at 10:13-14. In any event, in spite of his attempts to draw a
`
`distinction between reproductions of original works and recreations or imitations thereof in the
`
`context of parody, Schwartzwald appeared to concede at oral argument that courts can “find
`
`transformativeness out of an alteration of an image” outside of the context of parody. See id. at
`13
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 14 of 21
`
`
`
`13:18-22. Rightly so, as numerous Second Circuit cases have found secondary works
`
`transformative notwithstanding the fact that they contained modified reproductions of
`
`photographs. See e.g. Cariou, 714 F.3d at 708 (holding that artworks of an “appropriation
`
`artist” who incorporated the plaintiff’s copyrighted photographs into his work were
`
`transformative because they “have a different character, give [the plaintiff’s] photographs a new
`
`expression, and employ new aesthetics with creative and communicative results distinct from
`
`[the plaintiff’s]”); Blanch, 467 F.3d at 253 (holding that a Jeff Koons painting that was created,
`
`in part, through scanning the plaintiff’s photograph into a computer and incorporating the
`
`scanned image into the painting was transformative because the “copyrighted work [was] used as
`
`raw material in the furtherance of distinct creative or communicative objectives”) (internal
`
`quotation marks and citations omitted). In short, while the Court need not opine on whether the
`
`Oath Photograph constitutes a parody, there should be no dispute that the fact that Oath
`
`reproduced the Photograph in modified form does not itself defeat a finding of fair use.
`
`In sum, the Court finds Oath’s use of the Photograph was transformative because it used
`
`the Photograph in service of its dual goals of mocking both Hamm and those who fixate over
`
`such suggestive photos of him—a use distinct from that which Schwartzwald intended—and
`
`because Oath obscured the very portion of the Photograph that made it most valuable or unique
`
`in the first instance.
`
`B. Oath Used the Photo for Commercial Purposes
`
`Schwartzwald alleges that Oath is a “for-profit entity” that “re-published the Photograph
`
`on its Website for the purpose of commercial news reporting.” FAC ¶¶ 10, 20. While the Court
`
`expresses no view on whether Oath’s article could fairly be characterized as “news reporting,” it
`
`finds that Schwartzwald has plausibly alleged that Oath used the Photograph for commercial
`14
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 15 of 21
`
`
`
`purposes. Oath does not appear to dispute that it is a for-profit entity, but rather contends that
`
`“this sub-factor should not weigh heavily on the Court’s fair use determination.” MTD at 15.
`
`Indeed, as described above, “if the new work is ‘substantially transformative,’ the ‘other factors,
`
`including commercialism, are of less significance.’” Yang, 405 F. Supp. 3d at 542-43 (quoting
`
`Blanch v, 467 F.3d at 254); see also Cariou, 714 F.3d at 708 (“This factor must be applied with
`
`caution because, as the Supreme Court has recognized, Congress ‘could not have intended’ a rule
`
`that commercial uses are presumptively unfair.”) (quoting Campbell, 510 U.S. at 584).
`
`Accordingly, the Court finds that this sub-factor counsels against a finding of fair use, but is not
`
`entitled to significant weight given that Oath’s use of the Photograph was transformative.
`
`C. Oath Did Not Engage in Bad Faith
`
`As to the third sub-factor, the Court finds no plausible allegations of bad faith here. The
`
`mere fact that Oath reproduced the Photograph without seeking Schwartzwald’s authorization
`
`does not lead to a finding of bad faith, as the Second Circuit has noted that it is “aware of no
`
`controlling authority to the effect that the failure to seek permission for copying, in itself,
`
`constitutes bad faith.” Blanch, 467 F.3d at 256. In any event, bad faith is not “itself conclusive
`
`of the fair use question, or even of the first factor.” NXIVM Corp., 364 F.3d at 479.
`
`In sum, the Court finds that two of the three sub-factors regarding the purpose and
`
`character of the use weigh in favor of a finding that Oath’s use was fair, and that the only sub-
`
`factor that counsels against fair use is not entitled to significant weight.
`
`II. The Nature of the Copyrighted Work
`
`The second factor, the nature of the copyrighted work, “calls for recognition that some
`
`works are closer to the core of intended copyright protection than others, with the consequence
`
`that fair use is more difficult to establish when the former works are copied.” Campbell, 510
`15
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 16 of 21
`
`
`
`U.S. at 586. The Second Circuit has identified two relevant sub-factors to be considered in this
`
`analysis: “(1) whether the work is expressive or creative, such as a work of fiction, or more
`
`factual, with a greater leeway being allowed to a claim of fair use where the work is factual or
`
`informational, and (2) whether the work is published or unpublished, with the scope for fair use
`
`involving unpublished works being considerably narrower.” Blanch, 467 F.3d at 256 (citation
`
`omitted).
`
`As to the first sub-factor, the parties dispute whether the Photograph is a creative work or
`
`factual work. Schwartzwald contends that “the Photograph is creative in nature as it is the
`
`product of a professional photographer. Moreover, according to Plaintiff, in creating the
`
`Photograph, he exercised a personal and creative choice in the selection of camera equipment,
`
`wide angle lens, perspective, angle, lighting and exposure.” Opp. to MTD at 14. Oath, by
`
`contrast, argues that the “Photograph is a more candid and factual ‘point-and-shoot’ image than
`
`posed or creative one,” particularly because it was taken for the purportedly objective purpose of
`
`“reporting”—specifically, to “illustrate[] what Jon Hamm looks like wearing trousers in public
`
`while he walks down the street, ostensibly without any underwear.” MTD at 16-17 (quoting
`
`FAC ¶¶ 14, 16).
`
`The Court agrees with Oath that the Photograph is more factual in nature than creative.
`
`The Photograph is a standard paparazzi-style photograph of a celebrity walking in public, and is
`
`thus similar to the photographs at issue in Barcroft Media. As the Barcroft Media court noted:
`
`The photographers predominantly captured their subjects in public, as they
`naturally appeared, and were not tasked with directing the subjects, altering the
`backdrops, or otherwise doing much to impose creative force on the Images or
`infuse the Images with their own artistic vision. Although photography, including
`photography of a celebrity walking around in public, certainly involves skill and is
`not devoid of expressive merit, the Images are further from the core of copyright
`protections than creative or fictional works would be.
`16
`
`
`
`

`

`Case 1:19-cv-09938-RA Document 27 Filed 09/10/20 Page 17 of 21
`
`
`
`Barcroft Media, 297 F. Supp. 3d at 354 (S.D.N.Y. 2017). Here, too, Schwartzwald appears to
`
`have captured Hamm and his female companion “a