Tag Archives: transformative use

Fourth Circuit Rules in Favor of Stock Photographer, Overturning Questionable Fair Use Decision (Brammer v. Violent Hues Productions, LLC(4th Cir. 2019))

By Sara Gates and Nancy Wolff CDAS

The rights of a stock photographer were recently vindicated when the U.S. Court of Appeals for the Fourth Circuit overturned a questionable Virginia district court decision, which held that a production company’s use of a stock photo of a Washington, D.C. neighborhood on a website promoting a film festival was fair use.  In the decision released on April 26, 2019, the Fourth Circuit determined that Violent Hues Productions, LLC’s use of a cropped version of photographer Russell Brammer’s photo of Adams Morgan in a list of tourist attractions on a website promoting the Northern Virginia International Film and Music Festival did not qualify as a fair use.

The case focuses on the photograph “Adams Morgan at Night,” which Brammer shot from the rooftop of a building in the Washington D.C. neighborhood in 2011.  Experimenting with various shutter speeds and aperture combinations, Brammer photographed a busy street full of passing cars that appear as trails of red and white lights.  He published a digital copy of the photo on his website and on Flickr with a “© All rights reserved” notice, and later licensed the photo for online use.

Years later, in 2016, Violent Hues downloaded the photo—presumably from Flickr, while overlooking the rights notice—and proceeded to crop out the negative space before posting it on http://novafilmfest.com, necessitating the litigation.  After the district court absolved Violent Hues of liability under the fair use doctrine, Brammer appealed the decision, asking the Fourth Circuit to set the record straight.

The Fourth Circuit did just that when it engaged in a thoughtful analysis of the fair use factors and considered the arguments raised by each side.  Its decision is instructive as it adds to the wealth of case law on how to interpret the complex and nuanced doctrine of fair use.

Purpose and Character of the Use

For the first factor, the Court considered whether Violent Hues did anything to transform the work.  The Court rejected Violent Hues’ suggestion that the analysis should focus on the subjective intent of the parties and instead compared Brammer’s photo and Violent Hues’ use, as it appeared on the website, side-by-side.  The only obvious change, the Court noted, was the cropping, which generally is non-transformative.

The Court also rejected Violent Hues’ contextual argument, in which they claimed that they transformed the photo by putting it on a list of tourist attractions.  While courts have found minor contextual changes to be sufficient in two specific instances—raw material for technological functions and documentary uses—the Court found that Violent Hues’ copying did not fall within either category.

As Violent Hues’ use of the photo was also for a for-profit film festival, and Violent Hues’ did not have to pay the customary fee for its use of stock image, the Court found this factor ultimately weighed against fair use.

Nature of the Copyrighted Work

The Court’s consideration of the second factor focused on the thickness versus the thinness of the author’s rights, noting that some works are closer to the core of intended copyright protection that others, which should be entitled to only thin copyright protection.  Here, the Court found the photo was entitled to “thick” protection, considering Brammer’s many creative choices, such as the location, shutter speed and aperture combinations, uses of vivid colors, and birds-eye-view angle.  The Court noted that photos are generally viewed as creative, even if they capture images of reality, and have long received thick protection.

Additionally, the Court noted that publication status of the photo was not relevant fair use analysis.  Unlike in the case of literary works, where the right of first publication is paramount, photos are often intended for repetitive viewing, so the publication consideration is different in the area of photography. The Court summed it its point as follows: context matters.  Accordingly, the Court found that this factor also weighed against fair use.

Amount and Substantiality of the Portion Used

The Court’s analysis of this factor was straightforward, as it was clear that Violent Hues used roughly half the photo by cropping out the negative space, but kept the most expressive features, i.e., the heart of the work.  While a substantial taking can still constitute fair use, if it is justified (requiring the Court to look back to the first factor), here, the taking was not justified.  This factor also weighed against fair use.

Effect on the Market

For the fourth factor, the Court consider both the extent of the market harm and whether Violent Hues’ conduct, if widespread, would result in a substantially adverse impact to the photos’ potential market.  Here, the Court found a presumption of market harm, which exists when commercial use is not transformative, but amounts to a mere duplication.  Though Brammer was not required to present any evidence to show the negative effect on the licensing market for the photo, given that the Court found the presumption applies, he did so, showing that he received a $1,250 fee in one instance.  The Court noted that Brammer would have missed out on this fee if the company that decided to license his photo had instead opted to act like Violent Hues. Thus, this factor weighed against fair use as well.

As all four factors weighed against fair use, the Court’s balancing test was fairly easy: no fair use.  The Court signed off with this reminder the there is no difference between copying photos for print use versus online use: “What Violent Hues did was publish a tourism guide for a commercial event and include the Photo to make the end product more visually interesting. Such a use would not constitute fair use when done in print, and it does not constitute fair use on the Internet.”

DMLA’s Interest

DMLA filed an amicus brief in favor of the photographer, specifically addressing the fourth factor – extent of the market harm -and the impact the lower court’s decision would have on the licensing industry if this type of fair use of an image became widespread. Other visual artists associations as well as the Copyright Alliance, submitted amicus briefs on behalf of the photographer addressing other factors. This is great example of the industry coming together to correct a decision that if left to stand, could adversely affect the rights of content owners and members of DMLA if other courts followed the lower courts fair use analysis.

 

Fox News Network, LLC v. TVEyes, Inc.: Second Circuit Rejects Fair Use Defense

By: Scott J. Sholder

A panel of the U.S. Court of Appeals for the Second Circuit today issued its much-anticipated opinion in the TVEyes appeal, reversing the decision of the U.S. District Court for the Southern District of New York, and holding that TVEyes’ copying, storage, and re-distribution for viewing, downloading, and sharing, of massive amounts of copyrighted TV content was not fair use.

TVEyes is a for-profit media company offering a service that allows its clients to “sort through vast quantities of television content in order to find clips that discuss items of interest to them.” TVEyes records 1,400 channels’ worth of TV broadcasts, 24 hours a day, and makes the copied content searchable by also copying the closed-captioned text that accompanies the videos. Clients can search for videos based on keywords and play unlimited video clips, each up to ten minutes in duration, and may archive, download, and share clips by e-mail. Clients pay $500 per month for these services.

The District Court held that the searching, archiving, and watching functions offered by TVEyes constituted fair use, but that the downloading and e-mailing functions did not. Fox only challenged the “watch” function (and its ancillary functions like downloading, archiving, and sharing), but not the search function.

At the outset of its opinion, the Court of Appeals noted the similarities between this case and Authors Guild v. Google, Inc., in which the court held that mass copying of books for purposes of limited text searching was fair use, but it explained that Authors Guild “test[ed] the boundaries of fair use,” and that TVEyes “has exceeded those bounds.” In sum, the court held that TVEyes’ re-distribution of copyrighted content was only modestly transformative under the first fair use factor, but that other fair use factors outweighed any transformative purpose. Despite myriad recent case law holding that transformative use is the most important fair use factor, the TVEyes court seemed to hearken back to a slightly earlier era of fair use and reiterated that the fourth factor – market harm – is “the single most important element.”

The court held that TVEyes’ copying could be considered transformative in that “it enables TVEyes’s clients to isolate from the vast corpus of Fox’s content the material that is responsive to their interests, and to access that material in a convenient manner.” Similar to the Sony “Betamax” case, the court noted that TVEyes’ watch function was also akin to time- and place-shifting, and “certainly qualifies as technology that achieves the transformative purpose of enhancing efficiency,” and so was “at least somewhat transformative.” However, the transformative character of the use was not enough to outweigh the commercial nature of the services offered because TVEyes “essentially republishes that content unaltered from its original form, with no ‘new expression, meaning or message.’”

The court found the second factor – the nature of the copyrighted works – inconsequential, but placed significant weight on the third factor, which analyses the amount of the copyrighted works made available to the public. This factor weighed in favor of Fox because, unlike in Authors Guild where Google Books made available only snippets, “TVEyes makes available virtually the entirety of the Fox programming that TVEyes users want to see and hear,” and given the brevity of most news reports, at very least copied and distributed “the entirety of the message conveyed by Fox to authorized viewers of the original” content.

Turning to the fourth factor, the Second Circuit agreed with Fox that “TVEyes undercuts Fox’s ability to profit from licensing searchable access to its copyrighted content to third parties.” Consumers were clearly willing to pay for such a service, and TVEyes therefore “deprives Fox of revenue that properly belongs to the copyright holder,” effectively usurping the market for Fox to offer similar aggregation, searching, and licensing services for its own content. This usurpation, combined with the amount of content offered and the modest transformativeness overshadowed by TVEyes’ commercial use of Fox’s content, defeated TVEyes’ fair use defense. The court remanded with instruction to the District Court to amend its permanent injunction accordingly.

Judge Kaplan of the Southern District of New York, sitting by designation, filed a separate concurring opinion to express his disagreement with the majority’s finding that TVEyes’ uses were at all transformative. He opined that the “somewhat transformative” designation was irrelevant given that the other fair use factors outweighed the transformative use, and that issuing such dicta would serve only to confuse the already complicated question of what constitutes transformative purpose. Nonetheless, Judge Kaplan expressed his own views on why TVEyes’ use of Fox’s content was not transformative, including that the mere “enhancing the efficiency with which copies of copyrighted material are delivered to secondary issuers” was not transformative because TVEyes simply repackaged and delivered the original content with no news aesthetics, insights, or understandings.

The Second Circuit’s decision is significant in that it further defines the outer boundaries of fair use by providing a concrete example of what falls outside the doctrine, which is helpful given the arguably expansive implications of the Authors Guild decision, and by distinguishing a facially similar service from the Google Books project it deemed fair use in that case. It also signals a potential shift in focus back to the “market harm” factor of fair use, and away from a strict focus on transformative purpose, but at the same time adds to the growing sense of confusion about what may be considered transformative, or in this case, “somewhat transformative.”

Cowan, DeBaets, Abrahams & Sheppard LLP drafted an amicus brief in this case on behalf of American Photographic Artists, American Society of Media Photographers, Digital Media Licensing Association, National Press Photographers Association, and Professional Photographers of America, in support of Fox News Network.

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”   See the entire article here

Stylized Derivative of Wisconsin Major Photo on T-Shirt Deemed Fair Use

by Nancy Wolff, PACA Counsel  

Michael Kienitz v. Sconnie Nation LLC and Underground Printing-Wisconsin LLC, No. 13-3004 (7th Cir., September 15, 2014)

Michael Kienitz photographed the Wisconsin major, Paul Klogin, at his 2011 inauguration.  With Kienitz’s permission (but no fee), the major posted the portrait on the official city’s website.  An artist operating under Sconnie Nation LLC modified the photo and made t-shirts to be sold and worn at the 2012 Mifflin Street Block Party – an event that is designed to poke fun at authority.  The modified photo was colorized, posturized, and included multi colored type “Sorry For Partying.”    Apparently Soglin attended the very first annual block party as a student at the University of Wisconsin in 1969, but tried to stop the event when he took office.  The t-shirts were not a commercial success, only 54 t-shirts were sold. The photo and the t-shirt art are compared below.

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Kienitz, offended by the t-shirt design, brought a copyright infringement claim against Sconnie Nation and its distributor based on the derivative use of his image on the t-shirt. The court dismissed the action on a summary judgment motion, finding the use to be a fair use and not infringing. On appeal, the photographer did not fare any better as the 7th Circuit also found the use to be a fair use.

While the 7th Circuit analyzed fair use under the requisite four factor test proscribed in Section 107 of the Copyright Act, it took this opportunity to criticize the reasoning of the district court for relying on the Second Circuit’s approach in Cariou v. Prince, which focuses primarily on whether the’ use of the visual image is “transformative” in determining fair use. A work is considered transformative if it alters the original with new expression, meaning or message.  While the appellate court agreed that the modification of the photograph as depicted in the T-shirt was a fair use, it advocated for sticking to the factors identified in the statute rather than relying on a term that does not appear anywhere in the Copyright Act . The four the factors are (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit education 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.

This court focused more heavily on the fourth factor, and found that there was little to no effect of the use of the photograph on the market – the t-shirts were not a substitute for the original photograph, and Kienitz did not raise the possibility of licensing the photograph for apparel or any other use.  The third factor – the amount and substantiality of the use – was the only other fair use factor that had any “bite” in this case.  The court found that the only elements of the original photograph that remained after the modification was Soglin’s smile and the outline of his face, which cannot be copyrighted.  Turning to the two remaining statutory factors, the court acknowledged defendants’ small profits from the sales but stated that the design was political commentary.  Finally, in looking at the nature of the copyrighted work, the court stressed the absence of any argument that Sconnie Nation’s use reduced the value or demand of the original photograph.

The Court of Appeals noted that Sconnie Nation’s use of Kienitz’s photograph was not necessary in order to make the t-shirt and that Kienitz’s photography business may suffer in the long run – people may not want to hire Kienitz for fear the photos may be used against them, but these issues were not nearly enough to overcome the other fair use factors.

This case is most notable for its criticism of Cariou v. Prince.  In Cariou v. Prince, the Second Circuit expanded the meaning and importance of transformative use, holding that there is no requirement that a new work comment on or critically refer back to the original work or its author.  The court was explicitly “skeptical” of this approach, concerned that it may replace the list of factors and override protection of derivative works.