Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC

Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, United States Supreme Court, — U.S. –, 2019 WL 1005829 (March 4, 2019)

** This does not change the practice in many federal districts, such as NY,  that always followed the registration rule

On March 4, the Supreme Court ruled unanimously that a “‘registration … has been made’ within the meaning of 17 U. S. C. § 411(a) not when an application for registration is filed, but when the Register has registered a copyright after examining a properly filed application.”  As a result, suits for copyright infringement cannot be commenced until after the Copyright Office issues (or denies) a registration, but the Court noted that plaintiffs can seek damages for infringement that occurred before and after the registration was granted.

The Supreme Court affirmed the decision in the Eleventh Circuit which ruled in May 2017 that Fourth Estate was barred from bringing an infringement suit because it did not yet have the certificate of registration for its copyright, insisting that a litigant must wait to assert its rights until the registration was issued.  The Eleventh Circuit’s opinion explicitly recognizes the current circuit split between the “application” approach (a copyright owner may sue upon filing a complete application), followed by the Ninth and Fifth Circuits, and the “registration” approach (a copyright owner must wait until the application is processed and registration has been granted or denied), followed by the Tenth Circuit and now the Eleventh.  On June 28, 2018, the Supreme Court granted certiorari.

The Supreme Court based its ruling on its reading of §411(a), noting that the second sentence allows the Register of Copyrights to be sued upon refusal of registration, and adopting the application approach would make this provision “superfluous”.  In addition, Justice Ginsburg noted that Congress has also enacted a provision allowing for “pre-registration” for works, such as movies, which may be subject to infringement before registration is granted; these provisions would also be unnecessary if registration did not have to issue before litigation could commence.  Read in its entirety the statute contemplates that there is affirmative action required by the Copyright Office to effectuate registration, and not simply the submission by the right holder of a complete application.  The Court analogizes waiting for the registration to issue before commencing litigation as similar to having to exhaust administrative remedies.  Lastly, because damages from infringement before registration are available, the copyright holder can be made whole for any infringement that occurs from the creation of the work.

CEPIC Statement on Works of Visual Arts in the Public Domain

CEPIC expresses its extreme disappointment at the EU copyright Directive as we see that last minute compromises were reached that will directly hurt CEPIC members specialised in fine art, history and vintage photography. Some of these libraries are attached to cultural institutions and contribute to their financing – this not only by “selling postcards” as the agreed compromise text implies.

Indeed, the provisions related to works of visual arts in the public domain were agreed behind closed doors, following no impact assessment and no consultation with the various sectors that will be affected.

With no evidence as to the advantage to the larger public, the  compromise provisions will directly hurt the legitimate interests of small private businesses who support cultural heritage and in some European countries the cultural sector institutions who have invested millions in the digitization of  photography and contribute, avoiding tax-payer cost, to the preservation and distribution of cultural heritage and its promotion to the wider public. This provision is discriminatory to photographers working for cultural institutions, and in some cases it discriminates against the interests of those cultural institutions themselves who rely on income generation derived from licensing works of visual arts in their collections. In the long run the larger public will suffer from a lack of investment in digitization, indexation and proper documentation of cultural heritage material.

We regret that these provisions were introduced without proper assessment and that the private heritage sector was used as a “pawn” in a larger negotiation. As a result we see that the EU copyright directive will penalise rather than promote large parts of the visual sector.

We ask for Chapter 3 Art. 10 b) and Recital 30 a) to be removed.


Executive Director (Tel. Mobile + 49 177 2332 514) CEPIC Center of the Picture Industry, Tel. Berlin + 49 30 889 101 60, www.cepic.org/contact

The European Commission Has Reached an Agreement Over New Copyright Rules

The European Commission has reached an agreement over new copyright rules, including the controversial Article 13 that will require platforms like YouTube to tackle copyright infringements at the point of upload.

One of the objectives of the of directive is to “reinforce the position of creators and right holders,” helping them to be remunerated for the online use of their content by user-uploaded-content platforms. Read the article on Digital TV Europe.com  here .

CEPIC also reviews the agreement on their site here 

Our DMLA Counsel and Legal Committee is reviewing the agreement and will have further information on its impact on the industry.  Stay tuned.

VisualSteam Announces the Results of its 6th Annual Survey of Creative Pros on Stock

Image Licensing

“Free” (CC0) images have burst onto the market with as many creatives using free images as those using microstock.

VisualSteam announces the release of its 6th Annual Survey of Creative Pros: Stock Image Licensing. The survey is sent to more than 20,000 art buyers, art directors, art producers, creative directors, photo editors and marketing professionals around the world. Survey results provide valuable information to creators, licensors and marketing professionals and offer a glimpse into what is driving image licensing today.

This year’s report shows a progression but also a continuing change in the market. The importance of visuals to user engagement and retention continues to drive a substantial increase in demand. The volume of images used continues to grow as does social media and communications, in general. Price and budgets impact purchasing in a significant way, as does quality. Once again Getty (gettyimages.com) and Shutterstock (shutterstock.com) are battling it out for the hearts and minds of Creatives. However, 45% of those surveyed say they are using“free” image content. Free image provider Unsplash (unsplash.com) appears in the top ten of “favorite,” top-of-mind resources.

“There are many interesting pieces of data in this year’s report” says Leslie Hughes, VisualSteam’s Founder and Strategic Advisor. “Anyone creating or licensing visual content can learn about shifts in preferences, and the wants and needs of Creative Pros. We are also trying to build in more trend data, comparing results with previous years.”

VisualSteam wants to recognize and thank the sponsors of this year’s survey, Alamy (alamy.com), FootageBank (footagebank.com) and iSPY Visuals (ispyvisuals.com). Their support allows us to continue to produce the survey at an affordable price.

To request a copy of this year’s survey, please email sales@visualsteam.com. For more information about VisualSteam, please go to www.visualsteam.com, or email info(at)visualsteam(dot)com.

About Visual Steam

VisualSteam (www.visualsteam.com) is a marketing services organization that specializes in digital transformation and visual content markets. We work with producers, creators, and distributors to better understand and respond to market needs and define strategies for expansion and execution. We also work with clients/image consumers and content marketers to help them understand, acquire and manage visual content.

Photos in 2019: A Trending Forecast from Scopio


As creatives know, there have been huge shifts in the visual landscape this year, especially due to what is popular and getting the most engagement on Instagram, where 50 million photos are being shared every single day.

At this staggering rate of content growth, at Scopio we have seen these trends get pushed through to the types of photos businesses are looking to use and connect in their storytelling. Scopio wanted to recap what they are and share what we think could add value to these trends. Hopefully, this trend report can help creatives spot unique moments and share them in their storytelling. Dive into Isolation and Solitude, Drone and Aerial, Mystical interpretations, and Activism as growth content areas.

Read the full article here

We are pleased to welcome Scopio back as DMLA Members!

Copyright Office Releases “Copyright and Visual Works: The Legal Landscape of Opportunities and Challenges”

The U.S. Copyright Office has submitted a letter to Congress detailing the results of the Office’s public inquiry on how certain visual works, particularly photographs, graphic artworks, and illustrations, are registered, monetized, and enforced under the Copyright Act of 1976. The Office sought commentary on the marketplace for these visual works, as well as observations regarding the real or potential obstacles that creators and users of visual works face when navigating the digital landscape. A number of stakeholders raised specific issues they face on a regular basis regarding current copyright law and practices that fall within three general categories: (1) difficulties with the registration process; (2) challenges with licensing generally and monetizing visual works online; and (3) general enforcement obstacles.

The Copyright Office takes these concerns seriously and has already taken steps to address them where it can, most notably with the ongoing Office modernization efforts in preparation for a wholesale technological upgrade to the Office’s systems. In other areas, the Office finds that legislative action is the best solution. The Office continues to strongly support the idea of a small copyright claims tribunal, as well as a legislative solution to the orphan works conundrum. Congress’ action in these two areas would go far to alleviate several important concerns raised by visual artists.

The letter, public comments, and background material are available on the Copyright Office website here

DMLA 2019 Conference Returning to Marina del Rey

The DMLA Executive Board is pleased to announce that the 24th Annual DMLA Conference will be returning to Marina del Rey for 2019! Los Angeles was the overwhelming choice of the people surveyed from this year’s event.

We hope you make your plans early to send your representatives to this wonderful venue, The Marriott Marina del Rey. We will be building on the success of this year and will be bringing in even more exciting and inspiring sessions.

Mark your calendar for: October 27th thru October 29th, 2019.

HAPPY NEW YEAR!!

Federal Judge Rules that Esquire’s Use of Photo of Trump at Private Wedding Is Not Fair Use (Bounds Explained)

The decision in Otto v. Hearst Communications, Inc., No. 1:17-cv-04712 (S.D.N.Y. 2018) provides a helpful guide to what is does not qualify as fair use in the context of a news story. Fair use is a limitation on a copyright owners exclusive rights and permits the use of a work without consent. It is codified in the current Copyright Act, and the statute provides examples of what can be considered fair use. Because “news reporting” is an example, it is all too common that popular news websites rely on fair use rather than licensing a photo, asserting that the use is news reporting. But is it?

Read the entire article here

Federal Court Explains the Bounds of Fair Use by a News Organization, Ruling That Esquire’s Use of Photo of Trump at Private Wedding Is Not Fair

by Nancy Wolff, DMLA Counsel

The decision in Otto v. Hearst Communications, Inc., No. 1:17-cv-04712 (S.D.N.Y. 2018) provides a helpful guide to what is does not qualify as fair use in the context of a news story. Fair use is a limitation on a copyright owners exclusive rights and permits the use of a work without consent. It is codified in the current Copyright Act, and the statute provides examples of what can be considered fair use. Because “news reporting” is an example, it is all too common that popular news websites rely on fair use rather than licensing a photo, asserting that the use is news reporting. But is it?

Most likely not. In Otto v. Hearst Communications, Inc., Judge Gregory H. Woods dealt with this issue directly and found that Esquire.com’s use of a photo of Donald Trump at a private wedding in an article about him crashing the wedding was not fair use. The instructive decision, which analyzed the copyright infringement claim and individual components of the fair use defense, provides a clear example of what is not considered fair use in the context of a news story.

In June 2017, Jonathan Otto, a weddinggoer, snapped a photo of Trump, who happened to appear at a wedding held at his golf club in New Jersey. The amateur photographer texted the photo to a friend, only to discover the next morning that his photo had unexpectedly gone viral—first on Instagram, and then splashed across the pages of several online media outlets.

Seeking to protect his rights, Otto, retained counsel and filed for copyright registration. He then enforced his copyright by suing several of the media outlets, including Hearst Communications, Inc., the parent company of Esquire, who had copied and published Otto’s photo, for copyright infringement. In response, Esquire did not dispute that it had copied the photo but asserted a fair use defense arguing that it had used the photo of Trump for news purposes. However, the Court did not buy this argument.

The Court analyzed each of the four fair use factors in detail and explained why, taken together, the factors did not weigh in favor of a finding of fair use. Specifically, he wrote: “Stealing a copyrighted photograph to illustrate a news article, without adding new understanding or meaning to the work, does not transform its purpose—regardless of whether that photograph was created for commercial or personal use.”

While Esquire’s status as a news publication may be important for the fair use inquiry, that fact alone does not make Esquire, or any other media organization, immune from liability under intellectual property laws. Below is an overview of Judge Woods’ analysis and findings on each of the elements of fair use:

Purpose and Character of the Work. First, the Court discussed the purpose and character of Otto’s photo—arguably the most important fair use factor. The judge noted that Hearst’s argument that the use is fair because the photo was created for personal use, and Esquire used it for news, was unpersuasive. While “news reporting” is specifically identified as a potential method of fair use in the statute, courts analyzing this factor still look to the transformativeness of the use of the copyrighted work. For example, did Esquire’s use of the photo in a post describing Trump crashing the wedding add a new meaning or message? Esquire argued that its use did because the article “added commentary regarding the President’s availability for photos at the wedding and broader trend in the President’s behavior.” However, the Court disagreed, concluding that Esquire used the image solely for illustrative purposes—to depict the President’s presence at a private wedding—and did not add anything new to the image.

Nature of the Copyrighted Work. Second, the Court examined the nature of the copyrighted work, such as whether it is expressive or creative versus factual or informational, and whether the work is published or not. While photographs can vary widely on this spectrum, the Court agreed with Esquire’s argument that the image is more factual, because the photo was taken spontaneously to document an event, and Otto did not direct or pose the subjects. As for the publication status of the photo, the parties did not dispute that the image had already been published and disseminated widely before Esquire’s use. Although a copyright owner’s right of first publication is important, the Court found that Esquire’s article did not threaten this right. Consequently, this factor—while far from the most important in the fair use analysis—weighed in favor of fair use.

Amount and Substantiality of the Portion Used. Next, the Court evaluated just how much of Otto’s photograph Esquire used. For its article, Esquire used a slightly cropped version of Otto’s photo, but otherwise did not edit it. As one would assume, the more of a copyrighted work that is taken, the less likely the use is to be fair; however, courts also take the purpose of the use into account, looking back at the first fair use factor. Because it was clear that Esquire used the entirety of the photo and did so without adding new meaning or otherwise transforming the work, the Court found that this factor weighed against fair use.

Effect of the Use on the Potential Market. Finally, the Court considered the effect of Esquire’s use of the photo upon the potential market for or value of the photo. Where the copyright holder has no intention of entering the market, or the inability to do so, courts often find this factor weighs in favor of fair use. However, that is not the case here. Because Otto had acted quickly to protect his rights and was seeking to license the photo, such as to publications like TMZ, the Court found that it was clear that Otto was attempting to enter the market. Esquire’s unauthorized publishing of the same photo destroys the potential market and harm’s Otto’s ability to license the work. As such, the fourth factor also weighed against fair use.

Weighing the four factors together, the Court found that it was evident that Hearst’s use of the image was not fair. “The fact that Hearst’s commercial use did not transform the Photograph’s purpose or add new meaning to the image; the fact that Hearst used the work in its entirety; and the potential harm to any financial opportunities Otto might reasonably pursue for use of the photo, outweigh the fact that the image is factual and published,” Judge Woods concluded.

While any fair use analysis is an inherently fact-driven inquiry, this case is helpful to explain the point that a photo that merely illustrates a newsworthy article, without adding more, is not fair use. If the photo was the news story itself, the result might have been different. This case confirms that images to illustrate articles should be licensed and not just taken