Latin American celebrities Noelia Monge and Jorge Reynoso secretly wed at the Little White Wedding Chapel in Las Vegas, Nevada on January 3, 2007. Three pictures were taken at the wedding ceremony and three more were taken that evening. Monge and Reynoso kept their marriage a secret, in part to promote Monge’s image as a young, single singer. Not even Monge’s and Reynoso’s family members and friends knew of their marriage. In the summer of 2008, Reynoso used Oscar Viqueira’s car. Viqueira later found a memory chip in the ashtray. Viqueira discovered that the memory chip contained 3 videos and over 400 photos, including the photos taken at Monge’s and Reynoso’s wedding ceremony and on the wedding night. Viqueira sold the images to Maya, which publishes a number of magazines. Maya published the images in “TVNotas,” a Spanish-language gossip magazine. The publication of the photos disclosed the marriage of Monge and Reynoso to the world.
Mongo and Reynoso registered copyrights in five of the six photos. They then sued Maya for copyright infringement. Maya claimed fair use and the district court agreed. On appeal, the Ninth Circuit Court of Appeals reversed the district court, ruling that the district court did not properly analyze the fair use factors.
The court’s recitation of the facts does not disclose how Monge and/or Reynoso came to own the copyrights in the photos. Typically, the copyright owner of a photo is the photographer, the person who actually takes the photo. Some of the photos were taken by the chapel employees, using Monge’s camera. Did the person who actually took the photos assign the copyrights to Monge and Reynoso? Since fair use was the only issue on appeal, the Ninth Circuit assumed that Monge and Reynoso owned the copyrights they claimed to own.
Whether a use is a fair use is governed by 17 U.S.C. §107.
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.
The court discussed the fair use factors one by one. Preliminarily, the court noted that factors one and four are the dominant factors, that there is no public figure exception to copyright and that the confidentiality of unpublished works is central to a fair use analysis.
1. Purpose and Character of the Use
Three complementary, yet contending principles are included in this first factor: news reporting, transformation and commercial use.
Although news reporting is expressly listed in the statute as a basis for fair use, news reporting, by itself, does not automatically indicate a fair use. In particular, public interest in the publication of a work does not amount to fair use.
Maya cannot simply take fair use refuge under the umbrella of news reporting.
(Opinion pdf page 13).
“Transformation” is a word that does not appear in the statute and is a concept that was created by the judiciary. Transformation occurs when the new work adds something new, such as a further purpose or different character, and alters the expression, meaning or message of the copied work. In this case, each photo was reproduced in its entirety, with minimal cropping. Although adding text to the photos and writing an article based on the photos can convey a further purpose, that did not happen in this case. There was no transformation of the photos themselves and no creation of a new work based on the photos. The couple’s secret wedding could have been documented with a copy of the marriage certificate. It was not necessary to publish the photos.
Maya’s use was a commercial use. Maya is a commercial publication and profited by publishing the pictures. Commercial use weighs against a finding of fair use because “the user stands to profit from exploitation of the copyrighted material without paying the customary price.” (Opinion pdf page 19).
The court determined that the first factor was neutral at best and did not support Maya’s fair use claim.
2. Nature of the Copyrighted Work
The court examined two aspects of the copyrighted work: the extent to which it is creative and whether it is unpublished. Photos are creative and are not considered factual even when they document a historic event.
The unpublished nature of a work is a key, though not necessarily determinative, factor tending to negate a defense of fair use.…Under ordinary circumstances, the author’s right to control the first public appearance of his undisseminated expression will outweigh a claim of fair use.
(Opinion pdf page 21).
The court concluded that there was nothing extraordinary about the circumstances of this case and that Monge’s and Reynoso’s right to control the first public appearance of the photos was displaced by Maya’s publication. The court found that the photos were only marginally creative and weighed that against the recognition courts have given to unpublished works to conclude that Maya’s claim of fair use was outweighed on this factor.
3. Amount and Substantiality of the Portion Used
The court examined both the quantitative and the qualitative aspects of the copyrighted material used.
Quantitatively, Maya used every singled photo of the wedding and most of the wedding night photos. Qualitatively, Maya did minimal cropping and used the “heart” of the works. Maya needed only one photo to verify its story and used far more of the works than it needed to. The court ruled that this factor weighs against fair use. The district court mistakenly considered the number of photos on the memory chip, over 400, in ruling in Maya’s favor on this factor. The majority criticized the dissent for arguing that the contents of the memory chip were a “compilation.” A compilation requires selection, coordination or arrangement and there was no evidence of that in this case.
4. Effect Upon the Potential Market
The Supreme Court considers this factor to be the most important fair use factor. Maya argued that because Monge and Reynoso did not intend to sell publication rights to the photos, there was no potential market for the photos. The relevant markets are immediate markets, delayed markets, future markets and markets for derivative works. The copyright owners of unpublished works should control the first publication, even if they do not intend to publish, as they may change their minds in the future. The author has the right to decide where, when and in what form to publish. This is a factor that is not present in fair use analyses for works that are already published. Publishing an unpublished work tends to weigh against a fair use finding.
The potential market for the photos exists independent of the couple’s present intent, and the district court’s decision to the contrary was error.
(Opinion pdf page 27).
The party asserting fair use has the burden of presenting evidence about relevant markets. Maya did not present such evidence. The court noted that both the actual market demand and the potential market demand for the photos decreased significantly after Maya’s first publication. The court did not indicate how it came to that conclusion.
Maya’s use of the photos functioned as a market replacement for Monge’s and Reynoso’s use. This factor weighed against fair use.
Maya did not have a single factor weigh in its favor and did not meet its burden under the statute.
The majority opinion was written by Judge M. Margaret McKeown and was joined by Judge Rudi M. Brewster.
Judge Milan D. Smith, Jr. dissented from the majority opinion. He thought the majority opinion gave newsworthy public figures too much control over their images in the press.
Although newsworthiness alone is insufficient to invoke fair use, public figures should not be able to hide behind the cloak of copyright to prevent the news media from exposing their fallacies.
(Opinion pdf page 33.)
The dissent would affirm the district court’s ruling of fair use regarding the wedding photos, as those photos prove Monge and Reynoso’s marriage. The dissent would remand on the use of the wedding night photos. The wedding night photos may not have been necessary to the story and their use raises a genuine issue of material fact, which means that there can be no summary judgment on the use of those photos.
The dissent also discussed fair use factor by factor.
1. Purpose and Character of Use
The dissent thought Maya’s use was transformative. The dissent also thought the use was fair because it was newsworthy and that the reasoning in the majority’s opinion would have precluded the public disclosure of the contents of Tiger Woods’ sext messages and Congressman Anthony Weiners tweets and Facebook postings.
Maya’s article constituted much more than a haphazard republication of the Couple’s photos. Framed around the Couple’s refusals to confirm their marriage and to continue to represent Noelia as an “unwed sex symbol,” Maya used the images as documentary evidence. We, as well as our sister circuits, have held that a photo montage, with accompanying commentary, may constitute a transformative use.
(Opinion pdf page 36).
2. Nature of Copyrighted Works
Fictional, creative and unpublished works receive greater copyright protection and factual, informative and published works receive less protection. The documentary nature of the photos is more significant than the unpublished nature of the photos. The factual nature of the photos, combined with the transformative use, weighs neutrally or slightly in favor of fair use.
3. Substantiality of Use
The dissent argued that the memory chip of photos Maya purchased from Viquiera comprised a compilation and that out of those 400 plus photos, Maya selectively chose the photos that it published. Maya’s use of the three wedding photos out of the hundreds available weighed either neutrally or slightly in favor of fair use.
4. Harm to Potential and Future Markets
Monde’s and Reynoso’s intention to keep the photos secret was not for a goal related to copyright principles and therefore constituted a “market failure.” Market failure is an exception to the principle that unauthorized publication of a work can still harm potential and future markets for the work. The market failure exception should be applied to this case, as Monde and Reynoso intended to keep their marriage secret for their own interest in maintaining Monde’s image as a sex symbol. This fair use factor weighs in favor of a finding of fair use.
This case is Monge v. Maya Magazines, Inc., No. 10-56710, Ninth Circuit Court of Appeals.