Plaintiff Proactively Shuts Down Defendant’s Fair Use Defense

In a typical fair use case, the defendant brings a motion for summary judgment that her actions in copying the plaintiff’s work are protected by the fair use defense.  In this case, plaintiffs Erickson Productions and Jim Erickson brought a motion for summary judgment asking the district court to rule that the defendant Kraig Kast is not protected by the fair use defense.  The district court agreed with Erickson and granted his motion for summary judgment.

Erickson is a professional photographer who licensed some of his photos to Wells Fargo.  Kast’s website designer copied some of Erickson’s photos from the Wells Fargo website and used them in Kast’s own website, Atherton Trust.  Kast admitted to the copying, but claimed fair use.  Kast argued that the commercial character of the use was minimal because he did not like the photos, that the photos weren’t meaningful to him and that he never intended for the photos to be used in the final Atherton Trust website.  Aside from Kast’s novel argument that his dislike of the photos is somehow relevant to fair use, the district court addressed Kast’s arguments that Erickson didn’t lose that much money and that the website designer dude done it.

First Fair Use Factor – Nature of the Use

The Supreme Court has stated that every commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright.  Commercial use is a factor that tends to weigh 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 4).

Kast argued that he was not interested in Erickson’s photos and that his use was of minimal significance, even though it was a commercial use.  Kast did not present evidence showing that his use was transformative or that it furthered creative expression.

Thus, the court finds no basis to conclude that the admittedly commercial use was of minimal significance. Indeed, it is undisputed that the entire photos were copied and used exactly as they appeared on Wells Fargo’s site. While Kast may not have liked the photos, this was a purely commercial use, and this factor weighs in plaintiffs’ favor.

(Opinion pdf page 5).

Second Fair Use Factor – Nature of the Copyrighted Work

Kast argues that the photos were not particularly valuable or meaningful to him. That misses the point. The second statutory factor, the nature of the copyrighted work, turns on whether the work is informational or creative.  That is because the law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.  Moreover, photos are generally viewed as creative, aesthetic expressions of a scene or image and have long been the subject of copyright. This factor weighs in plaintiffs’ favor.

(Opinion pdf page 6).

Third Fair Use Factor – The Amount Used

Kast copied and used the photos in their entirety.  Use of the entire work does not necessarily preclude a finding of fair use, but that is not the case here.  This factor weighs against a finding of fair use.

Fourth Fair Use Factor – Effect upon the Potential Market for or Value of the Photos

The proper application of fair use is limited to copying by others which does not materially impair the marketability of the work copied.

Kast contends that, at most, plaintiffs lost $300 in licensing fees for use of the three photos, which he emphasizes were only used as placeholders for the photos that appeared in the final version of the Atherton Trust website. But, to negate fair use one need only show that if the challenged use should become widespread, it would adversely affect the potential market for the copyrighted work.  As discussed above, it is undisputed that Erickson makes his living by licensing his photos, including the ones at issue here. Additionally, Jesse Hughes, the Director of Sales and Marketing for Erickson Productions, Inc., avers that plaintiffs require customers to pay at least a $100 licensing fee, even for internal layout or placeholder use of plaintiffs’ photos.  Thus, if the use challenged here should become widespread, it is not difficult to conceive that it would adversely affect the potential market for plaintiffs’ photos. Kast has presented no evidence to the contrary. This factor weighs in plaintiffs’ favor.

(Opinion pdf pages 6 – 7).

Additionally, Kast argued that his use was a fair use because his website designer inserted the photos and he had nothing to do with it.  The district court ruled that “that is not a fair use issue.” (Opinion pdf page 7).  Website owners be forewarned that you are ultimately responsible for unauthorized copying that appears on your website.

This case is Erickson Productions, Inc. v. Kraig R. Kast, No. 5:13-cv-05472 HRL, U.S. District Court for the Northern District of California.

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