Media Outlet Use of Photo Not a Slam Dunk Fair Use

North Jersey Media Group (NJMG) owes the copyright to the seminal photograph of three firefighters raising the American flag in the rubble of the World Trade Center site on September 11, 2001 (the Work).  On September 11, 2013, Fox News posted a combined image of the Work next to the famous World War II photo of four U.S. Marines raising the American flag of Iwo Jima on the Justice with Judge Jeanine television show Facebook page.  Fox did not seek permission from NJMG before posting the combined image.  NJMG sued Jeanine Pirro and Fox News Network, LLC (collectively “Fox”) for copyright infringement.  Fox argued that their use was a fair use and brought a motion for summary judgment.  The district court denied Fox’s motion for summary judgment.

The Copyright Act of 1976 codifies fair use.

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(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.

The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.

17 U.S.C. §107.

The district court discussed each of the four fair use factors.

Factor One: The Purpose and Character of the Use

The first factor addresses the manner in which the copied work is used and is the heart of the fair use inquiry.  Is the new work transformative?  “A use is transformative if it does something more than repackage or republish the original copyrighted work.  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.”  (Opinion pdf pages 10, 11).

Defendants did not simply copy the Work wholesale. The image used by Defendants was different from the Work in five distinct ways. Fox News used a (1) cropped, (2) lower-resolution version of the Work, (3) which was juxtaposed with Raising the Flag on Iwo Jima and (4) in a smaller scale than the Work, and (5) added the phrase “#neverforget.”

Despite Defendants’ claims regarding their use of the Work, however, the Court cannot conclude as a matter of law that the Combined Image transformed the Work sufficiently to merit protection as fair use.  As Plaintiff asserts—accurately in the Court’s view—the alterations to the Work are “barely discernable” unless the viewer is specifically prompted to look for them.  The Work is the clearly predominant feature of the Combined Image. Thus, a casual observer may believe that he is simply viewing the Work with only the hashtag added.

(Opinion pdf page 12).

The district court indicated that the alterations to the Work do not begin to approach the alterations found to be transformative as a matter of law in some other Second Circuit cases.

Commercial use is examined under the first fair use factor.  The court examines commercial exploitation and not simply use by a for profit enterprise.

The relative importance of this factor is determined on a sliding scale: the more transformative the work, the less important the commercial purpose. Because, as discussed in the previous section, neither the image nor the message conveyed by the Combined Image was substantially transformative, the question whether the new use is commercial thus acquires an importance it would not otherwise have.

(Opinion pdf page 17).

The district court determined that there was a question of material fact regarding whether Fox posted the combined image solely to comment on September 11, 2001 events or whether Fox posted the combined image to promote the Justice with Judge Jeanine program. 

The district court was unable to conclude that the first fair use factor weighed in either party’s favor as a matter of law.

Factor Two: The Nature of the Work

Fair use is more difficult to establish for creative works, such as works of fiction, than for factual or informational works.  Fair use is also more difficult to establish for unpublished works than for published works.

The Court finds that the second factor favors a finding of fair use. There can be no dispute that the Work is a non-fictional rendering of an event of utmost historical importance, which Franklin created during the course of his duties as a news photographer. Franklin did not create the scene or stage his subjects—to the contrary, he plainly acknowledged that the photograph “just happened.” While there can be no dispute that Franklin exhibited great artistry in carrying out his task—for which he has been rightfully recognized and rewarded—there can also be no dispute that the Work is a quintessential example of photojournalism. Also weighing in Defendants’ favor is the fact that the Work has been published since September 12, 2001.

(Opinion pdf page 20).

The district court also indicated that the second fair use factor is rarely determinative.

Factor Three: The Amount and Substantiality of the Portion Used

Factor three involves that analysis of the amount and substantiality of the portion used in relation to the copyrighted work as a whole.  Were the quantity and value of the materials used reasonable in relation to the purpose of the copying? 

For some purposes, it may be necessary to copy the entire copyrighted work, and the third factor would not weigh against a finding of fair use in such circumstances.  The crux of the inquiry is whether no more was taken than necessary. Moreover, this factor weighs less when considering a photograph—where all or most of the work often must be used in order to preserve any meaning at all—than a work such as a text or musical composition, where bits and pieces can be excerpted without losing all value.

(Opinion pdf page 21).

The district court determined that this factor was neutral and did not favor either party.

Factor Four: The Effect of the Use Upon the Market for or Value of the Original

Factor four examines the effect of the use upon the potential market for or value of the copyrighted work. 

The Second Circuit has made clear that the court’s concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps the market of the original work.  The market for potential derivative uses includes only those that creators of original works would in general develop or license others to develop.  The Second Circuit has concluded that an alleged infringer has usurped the market for copyrighted works, including the derivative market, where the infringer’s target audience and the nature of the infringing content is the same as the original. In conducting this analysis, courts are mindful that the more transformative the secondary use, the less likelihood that the secondary use substitutes for the original, even though the fair use, being transformative, might well harm, or even destroy, the market for the original.

(Opinion pdf page 23).

The district court ruled that the fourth factor weighed against a finding of fair use.

As discussed above, the Combined Image is not substantially transformative. It does not present an entirely different aesthetic but instead relies upon the Work’s original subjects and setting to retain the Work’s historical meaning. And it is this historical meaning that has allowed the Work to remain popular to this day, as evidenced by the fact that NJMG has raised more than $1 million in licensing revenue from the Work to date. Indeed, there is no dispute that NJMG, which was inundated with licensing requests at the time of the Work’s original publication, still maintains an active licensing program for the photograph, including by licensing the Work to media entities for editorial use, precisely the type of use Defendants urge they intended here. Fox News’ interest in the Combined Image therefore poses a very real danger that other such media organizations will forego paying licensing fees for the Work and instead opt to use the Combined Image at no cost. Accordingly, given the predominance of the Work in the Combined Image, the posting on the Pirro Facebook Page poses a much greater danger to NJMG than simply the loss of licensing revenues from this one-time use.

(Opinion pdf page 24).

The district court ruled that it could not conclude that Fox’s use of the Work was a fair use as a matter of law.  The district court therefore denied Fox’s motion for summary judgment.

This case is North Jersey Media Group Inc. v. Pirro, No. 13 Civ. 7153 (ER), U.S. District Court, Southern District of New York.

Leave a Reply

Your email address will not be published. Required fields are marked *