Last Updated on February 23, 2015, 2:50 pm ET
*This week is Fair Use Week, an annual celebration of the important doctrines of fair use and fair dealing. It is designed to highlight and promote the opportunities presented by fair use and fair dealing, celebrate successful stories, and explain these doctrines.
Today’s blog post is brought to you by guest blogger, Jonathan Band. Cross-posted to fairuseweek.org *
Large copyright owners oppose expansive applications of fair use except, of course, when they are sued for copyright infringement. In recent years, the National Football League, Reed Elsevier, and Sony Pictures have all vigorously raised fair use in infringement cases in which they were defendants. As a proponent of strong fair use rights, I naturally want fair use to prevail whenever it is asserted. Nonetheless, as a long time soldier in the trenches of the copyright wars, I must confess that I derive a certain satisfaction from courts rejecting fair use defenses raised by large media companies. But putting aside these petty personal feelings, the mere assertion of fair use by large copyright owners is helpful in the advocacy battles surrounding fair use; it underscores how essential fair use is to the proper functioning of the copyright system. Even more important, the rejection of fair use claims in appropriate cases demonstrates that fair use has not run amok and that the courts are not out of control. (In this vein see my post How Fair Use Prevailed in the Harry Potter Case.)
Which brings us to the recent decision of a federal district court in New York denying a motion for summary judgment filed by Fox News in a copyright infringement suit brought against it by the New Jersey Media Group (NJMG). Thomas Franklin, a photojournalist employed by NJMG, captured an image of three firemen raising an American flag at the site of World Trade Center just hours after the attack on September 11, 2001. NJMG published the image the next day on the front page of one of its newspapers, and in short order the image was licensed by many other publications for over $1 million and became one of the more recognizable images relating to 9/11. At some point, an unknown person posted on the Internet the 9/11 firefighter photograph juxtaposed with the iconic World War II photograph of Marines raising the American flag at Iwo Jima. A production assistant on the Fox News program Justice with Judge Jeanine found this combined 9/11-World War II image and posted it on the program’s Facebook page on the twelfth anniversary of 9/11 (September 11, 2013) with phrase #neverforget. After NJMG sued for copyright infringement, Fox News moved for summary judgment, arguing that its posting of the 9/11 photograph was permitted under the fair use doctrine.
On February 10, 2015, Federal District Court Judge Ramos of the Southern District of New York denied Fox News’ motion. Much of the decision centered on whether the use was transformative under the first fair use factor (purpose and character of the use). Fox News argued that its use was transformative because the connection it drew between 9/11 and World War II was commentary. Further, the addition of the phrase #neverforget signaled Fox News’ participation in the ongoing global discussion of 9/11. While Franklin’s purpose in photographing the image was to report the news of the day, Fox News’ use was designed to commemorate 9/11 and link the heroic acts of the first responders that day to those of the Marines in World War II.
The court rejected Fox News’ contentions. First, it found that the various physical transformations Fox made, such as adding the #neverforget phrase or cropping the image, were not sufficient to merit protection as fair use, particularly when compared to the more extensive physical transformations in the appropriation art cases Cariou v. Prince or Blanch v. Koons.
Additionally, while the court acknowledged that the combined image of the 9/11 photograph and the Iwo Jima photograph altered the content and message of the original 9/11 photograph, it did so “only minimally.” It certainly didn’t present “an entirely different aesthetic” from the 9/11 photograph. Further, the court doubted “whether the commentary Fox News wished to convey created anything new at all, much less anything transformative.”
At this point, the court went on a bit of a detour. The court noted that this was a secondary use of a secondary use. The combined image was not original to Fox: “some other person first thought to combine the two photographs.” Moreover, the phrase “#neverforget” was ubiquitous on social media that day. “Thus Fox News’ commentary, if such it was, merely amounted to exclaiming ‘Me too.’” Professor Rebecca Tushnet of the Georgetown University Law Center has criticized this aspect of the decision, noting that “if something has been transformed enough to create a new meaning or message such that the initial speaker is making a fair use, then the transformativeness factor must weigh in exactly the same way for a publisher or republisher.” In other words, if the creation of the combined work was a transformative use because of the commentary it made, then Fox’s republication was also fair use because it was making the same commentary. Notwithstanding the court’s questionable reasoning on this point, the court’s underlying skepticism about whether the combined image was sufficiently transformative in the first place was well founded.
The court next considered whether Fox News sought to profit from its use of the work. Fox argued that its use was not commercial because it did not capture any revenue as a direct consequence of its use. NJMG, on the other hand, asserted that Fox used the image mainly for the purpose of promoting the Justice with Judge Jeanine show. The court concluded that because there was a question of material fact as to whether Fox posted the image for the expressive purpose of commenting on 9/11 or for the commercial purpose of promoting the program, it could not decide this issue as a matter of law on summary judgment.
The court had little difficulty concluding that the fourth fair use factor, the effect of the use on the market for the work, weighed against fair use. The court reiterated that the use was not transformative, but “instead relies upon the Work’s original subjects and setting to retain the Work’s historical meaning.” This historical meaning has allowed NJMG to receive more than $1 million in licensing revenue. The court stressed that NJMG maintains a program for licensing the photograph to media entities for precisely the sort of editorial purpose Fox claims it intended to make here. The court observed that “the continued demand for the Work for editorial use suggests that the purported use for commentary here was…paradigmatic of a primary market for the photograph.”
In its defense, Fox argued that there was no evidence that NJMG actually lost any licensing revenue as a result of the use, or that Fox was trying to usurp the market for the work. The court responded that because the editorial use Fox claims it intended to make was a primary market for the work, Fox’s use “poses a very real danger that other such media organizations will forgo licensing fees for the Work and instead opt to use the Combined Image at no cost.” Thus, the danger of Fox’s use went far beyond the one-time loss of revenue.
Aside from the “secondary use of a secondary use” issue, there is nothing particularly controversial or harmful about the court’s analysis of the first and fourth factors. Indeed, Fox’s contention that its use was transformative and didn’t affect the market for the work was a bit of a stretch.
Meanwhile, the court’s analysis of the second factor, the nature of the work, could prove helpful in future fair use cases. Fox argued that the second factor tilted toward fair use because the work was factual in nature. Fox claimed that NJMG “cannot claim ownership in the firefighter’s actions, the expressions on their faces, their ashen uniforms, or the American flag.” NJMG responded that the photograph was a “stunning example of photojournalism” that involved many creative choices, including the orientation of the photograph and the selection of a specific lens.” The court agreed with Fox that this factor weighed in favor 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.’” Although Franklin exhibited great artistry, at the end of the day the image was photojournalism, which the court found categorically favored fair use.
The case will now proceed to trial. Fox will have the opportunity to present additional evidence on the purpose of its use, and this may be sufficient to change the overall fair use calculus in its favor.
Nevertheless, Fox has been having a rough time in fair use cases in the Southern District of New York. Last year, it sued TVEyes, a company that created a search engine for news broadcasts. A different judge, Judge Hellerstein, found that fair use permitted TVEyes to copy Fox News’ broadcasts into its search database. Perhaps Judge Ramos found Fox’s vigorous assertion of fair use in the NJMG case to be inconsistent with its vigorous opposition to fair use in the TVEyes case. Regardless, the courts reached the right result in both cases.