Ninth Circuit Confirms that You Consider Fair Use Before Sending A DMCA Takedown Notice

As reported way back in August 2008, a judge ordered in the Lenz v. Universal Music case that copyright owners must consider whether an unauthorized use of a copyrighted work qualifies as fair use before sending a DMCA takedown notice (check my article how to do that).

In the case, Stephanie Lenz filed suit under 17 U.S.C. § 512(f)—part of the Digital Millennium Copyright Act (“DMCA”)— against Universal Music Corp., Universal Music Publishing, Inc., and Universal Music Publishing Group (collectively “Universal”).  She alleged that Universal misrepresented in a takedown notification that her 29-second home video constituted an infringing use of a portion of a composition by the Artist known as Prince, which Universal insists was unauthorized by the law. Although Universal Music argued that fair use is difficult to determine, the district court found that to not be an excuse.

Universal appealed the decision, but the Ninth Circuit Court of Appeals agreed with the lower court’s ruling, stating:

“We hold that the statute requires copyright holders to consider fair use before sending a takedown notification, and that failure to do so raises a triable issue as to whether the copyright holder formed a subjective good faith belief that the use was not authorized by law.”

Fortunately, the Ninth Circuit recognized that if “a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder’s belief even if we would have reached the opposite conclusion.”

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U.S. Copyright Office Publishes Index of Fair Use Decisions in Support of U.S. Intellectual Property Enforcement Coordinator

Calla Lilly - Copyright Carolyn E. Wright

Register of Copyrights Maria A. Pallante today announced the launch of the U.S. Copyright Office’s Fair Use Index, which is designed to provide the public with searchable summaries of major fair use decisions. The Index was undertaken in support of the 2013 Joint Strategic Plan on Intellectual Property Enforcement prepared by the U.S. Intellectual Property Enforcement Coordinator within the Executive Office of the President.

Although not a substitute for legal advice, the Index is searchable by court and subject matter and provides a helpful starting point for those wishing to better understand how the federal courts have applied the fair use doctrine to particular categories of works or types of use, for example, music, internet/digitization, or parody.

“The doctrine of fair use has been an essential aspect of our copyright law for nearly 175 years,” said Pallante, “but it has too often been a mystery to good-faith users who seek more detail about its application. It has been a pleasure coordinating this practical and important resource with the U.S. Intellectual Property Coordinator’s office.”

“The doctrine of fair use is a vital aspect of U.S. copyright law,” said Danny Marti, the U.S. Intellectual Property Enforcement Coordinator at the White House, “and it is applied regularly in our daily life. I commend Register Pallante and the Copyright Office for producing this important resource—a resource that not only helps to make the doctrine more accessible, but also serves to re-emphasize the significance of this right as part of our culture. Indeed, it is the combination of a strong copyright system with a right of fair use that encourages creativity, promotes innovation and respects our freedom of speech and expression.”

The goal of the Index is to make the principles and application of fair use more accessible and understandable to the public by presenting a searchable database of court opinions, including by category and type of use (e.g., music, Internet/digitization, parody).

The Fair Use Index may be accessed on the Copyright Office’s website at or via the U.S. Intellectual Property Enforcement Coordinator’s website at

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Use of Photos by News Reporters Is Not Necessarily Fair Use

Many news reporters use photos and other copyrighted materials and then claim fair use as a defense to infringement claims. Recently, the Third Circuit held in Murphy v. Millenium Radio, 2011 WL 2315128 (3d Cir. June 14, 2011) that:

“[i]f it were possible to reproduce [Murphy’s] unaltered work, as a whole, without compensation under the guise of news reportage—a ‘traditional, reasonable, or likely-to-be-developed market’ for professional photographers—it would surely have a ‘substantially adverse impact’ on [Murphy’s] ability to license his photographs.”

In the Murphy case, Murphy, the photographer, was hired by a magazine, New Jersey Monthly (“NJM ”) to take a photo of Craig Carton and Ray Rossi, who at the time were the hosts of a show on the New Jersey radio station WKXW, which is owned by Millennium Radio Group.  NJM  used the photo to illustrate an article in its “Best of New Jersey” issue naming Carton and Rossi “best shock jocks ” in the state.

The photo (“the Photo”) depicted Carton and Rossi standing, apparently nude, behind a WKXW sign.  Murphy retained the copyright to the Photo.  An unknown employee of WKXW then scanned the Photo from  NJM and posted the resulting electronic copy to the WKXW website and to another website,  The resulting image, as scanned and posted to the Internet, cut off part of the original  NJM caption referring to the “Best of New Jersey” award.  It also eliminated NJM’s gutter credit identifying Murphy as the author of the Photo. The WKXW website invited visitors to alter the Photo using photo-manipulation software and submit the resulting versions to WKXW.  A number visitors eventually submitted their versions of the photo to WKXW, and it posted 26 of those submissions to its site.  The Station Defendants never received Murphy’s permission to make use of the Photo.

When Murphy discovered the Photo on the WKXW website, he communicated, via his attorney, with WKXW, demanding that the alleged infringement stop.  Shortly thereafter, Carton and Rossi made Murphy the subject of one of their shows, allegedly stating that one should not do business with him because he would sue his business partners.  In April 2008, Murphy sued the Station Defendants for violations of § 1202 of the Digital Millennium Copyright Act of 1998 (“DMCA”), copyright infringement under the Copyright Act, 17 U.S.C. § 101 et seq., and defamation under New Jersey law.

After a thorough analysis of the fair-use defense, the Third Circuit held that all factors considered for a fair use defense weighed in Murphy’s favor.  Hopefully news reporters will learn that it’s best to obtain a license for using photos in news reports.

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Photo Attorney on TWiL (This Week in Law) #124

I had the pleasure of joining  TWiL (This Week in Law) yesterday for a second time.   Host Evan Brown, guests Wendy Seltzer, J. Matt Buchanan, and I discussed fair use, privacy issues, DMCA take down notices, and other things in Episode #124.  Check my first appearance in Episode #56.

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Court Rules for Photographer in Copyright Infringement Case

As reported by the Hollywood Reporter, a California district court has granted summary judgment to Glen E. Friedman for his copyright infringement case against Thierry Guetta for creating, reproducing, displaying, and selling products incorporating Plaintiff’sphotograph of the hip hop music group Run-DMC.  Friedman’s original photograph as shown in the Complaint is:

Friedman alleged in the Complaint that Guetta sold the following products (among others):

As the court explained in its Order, Guetta obtained a copy of the Photograph from the Internet.  The photo did not have a copyright notice on or with it. Guetta claimed that his works were not not substantially similar to the photograph, that he did not copy the copyrightable elements of the photo, and that his use of the Photograph was fair use.  The court disagreed and explained its reasoning in the Order.  Summary judgment means that the court has ruled that Guetta infringed Friedman’s photograph.  The court now will move to the damages phase, determining what amount Guetta will have to pay to Friedman.

Congrats to Mr. Friedman for protecting his work!

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Quote of the Day – Cariou v. Prince

From the Maine Antique Digest:

[Jessica] Litman claimed that she was “a little disturbed by the reasoning in the decision,” because it doesn’t “take into account the standards of the art world in which you can add something important even when you are ripping off someone else. . . . She added that “we want galleries to exhibit progressive and transgressive art, and it is not appropriate for these artists to ask permission because that takes away the whole purpose of appropriating images in the first place.”

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Is the News Media’s Use of a Portrait Photo Fair?

When tragedy strikes, new agencies often rush to find photos to accompany the story.  Such was the case during the recent horrible tragedy in Tucson.  One of the victims was a nine year old child.  So a few media organizations used a portrait of the child and her mother taken by a professional photographer when reporting about the child’s death.  As Techdirt reports, the photographer hired an attorney to pursue claims of copyright infringement against the news groups.  But some thought it wasn’t appropriate for the photographer to complain. While the ethical issues won’t be addressed here, the question of whether the media’s use of the photograph was an infringement is an important legal matter.

Some contend that the use of the photo was a fair use, which is a defense to infringement.  My article on fair use provides the background of the law.  Many cite to the four factors identified in 17 USC 107 to evaluate whether a use was fair.  But courts aren’t limited to them, because the statute states that “In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include . . .” meaning that a court can use other aspects to make its decision.  And they often do.

Prior cases are illustrative of how some courts have handled similar situations.  First is the case of Fitzgerald v. CBS Broadcasting, Inc., 491 F. Supp. 2d 177 (D. Mass. 2007).  There, the court found that use of a freelancer’s photo of a mobster being arrested in a television news report was not a protected fair use under copyright law.  Christopher Fitzgerald had taken the only public pictures of mobster’s arrest in 1995.  Fitzgerald licensed the photos to several news organizations and also collected settlements in several cases of alleged copyright infringement of the photos.

One copyright infringement settlement was with CBS, which had used the photograph in a Boston television news report and on a broadcast of “60 Minutes.”  After the settlement, CBS took several steps to ensure that the photographs were not accidentally broadcast again, including instructing the station’s librarian and other staff to get rid of any copies.

Several years later, two CBS television stations in Boston broadcasted a report about the sentencing of a member of the mobster’s gang.  Despite CBS’s earlier efforts, Fitzgerald’s photo of the mobster’s arrest again was shown without permission.  Fitzgerald sued, claiming that the broadcast violated his copyright.  CBS argued that it was protected by the fair use doctrine, which allows the use of copyrighted material without permission in certain circumstances.

The court found that while some factors favored CBS’s fair use argument, the most important ones did not.  The court concluded that CBS’s use was not fair.  Specifically, the court found that although the gang member’s sentencing was newsworthy, and the mobster’s arrest was related to it, the court determined that the overall “purpose and character” of the broadcast would not qualify the use under the “fair use” doctrine because CBS is a commercial entity and its use did not add any new creative or editorial message to the information conveyed by the original photograph.

Another similar and significant fair use case was Nunez v. Caribbean Int’l News Corp., 235 F.3d 18 (1st Cir. 2000).  In Nunez, a newspaper published without permission three of Nunez’s photographs of a beauty pageant winner.  The photos initially were taken for the beauty pageant winner’s modeling portfolio, before winning the contest.  Prints of the photos were distributed prior to the pageant.  After the model won the beauty pageant, a controversy arose about the nude and semi-nude photos.

The Nunez court found that the newspaper was a commercial enterprise and that the use of the photos impacted sales of the paper.  However, the court stated that the newspaper “transformed” the use of the photos by using them to inform the public about the controversy of the nude photographs.  The court held that the informative use, the good faith of the newspaper in obtaining the photos, and the difficulty in reporting the news without the photos constituted fair use.

While the court explained that the reproduction of the photographs did not threaten Nunez’s right of first publication because the photos had already been shown on the evening news, it noted that the newspaper’s use of the photographs had little to no impact on the market for Nunez’s photographs because a newspaper reproduction is not a market substitute for an 8” x 10” glossy.   Finally, the court emphasized that generally reproduction by newspapers of professional photographs is infringement.   However, if the photo itself is newsworthy, the photo was acquired in good faith, and the photo had already been disseminated, a fair use defense exists.

However, some courts have found fair use when a photograph has been used by news organizations. See my October 25, 2006 blog post on Chris Harris’ case for an example. However, it’s clear that the unauthorized use of a photograph is much more likely to be deemed a fair use when the photograph itself is newsworthy.

In sum, the law related to fair use is highly dependent on facts.  So it’s difficult to ascertain what a court would do with the photographer’s claim for use of the photo of the child who was killed in the Tucson case.

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Photograph of Sculpture Is Not a Fair Use

As reported in my article, the difficulty with fair use is that “it is sometimes difficult to predict how a court will rule on a fair use case.”  Well, even the courts don’t always agree with each other.

Take, for example, the  Gaylord v. The United States case.  The U.S. Court of Federal Claims (a federal “trial court”) concluded that a photograph of  “The Column” (a sculpture depicting 19 Korean War soldiers that is part of the Korean War Veterans Memorial KWVM in Washington, D.C.) that was used by the U.S. Postal Service for a stamp was a fair use because it was a transformative work, having a new and different character and expression from that of the sculpture.  But, on appeal of the trial verdict, the United States Court of Appeals for the Federal Court recently overturned that ruling, finding that the photograph/stamp was not a fair use.

Background on the Gaylord case is presented in my February 3, 2010 blog.   The Federal Court’s opinion includes photographs of the sculptures and the stamp, in addition to the basis for the ruling.  The Court began by explaining the criteria for determining fair use:

Fair use is a mixed question of law and fact. Harper & Row, Publishers, Inc. v. Nation Enter., 471 U.S. 539, 560 (1985). Because “the doctrine is an equitable rule of reason, no generally applicable definition is possible, and each case raising the question must be decided on its own facts.” Id. at 560 (citation omitted). Section 107 requires courts to consider four nonexclusive factors when evaluating fair use:


(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.


35 U.S.C. § 107. Each factor is “to be explored, and the results weighed together, in light of the purposes of copyright.” Campbell, 510 U.S. at 577.

Significantly, the Federal Court found that the stamp does not reflect any “further purpose” than The Column.  The Court compared the stamp to Koons’ use of  Blanch’s photo in  Blanch v. Koons.  There, Koons, an artist, incorporated a copyrighted photograph of a woman’s feet adorned with glittery Gucci sandals into a collage “commenting on the ‘commercial images . . . in our consumer culture.’” 467 F.3d 244, 248 (2d Cir. 2006). The court determined that Koons’ use was fair use in part because his collage was transformative. Id. at 252-53.  The Court reasoned that the collage and the photo had “sharply different” purposes and that the collage was intended to be a “commentary on the social and aesthetic consequences of mass media.” Id. Such transformation of a copyrighted work into a larger commentary or criticism fall squarely within the definition of fair use.” In Gaylord, however, although the stamp altered the appearance of The Column by adding snow and muting the color, those alterations did not impart a different character to the work.   The Federal Court also found that the USPS’ use of the stamp was commercial because it received $17 million dollars in sales from the stamp, which indicated that the use was not a fair use.

As to the amount of the work used in the photograph, the Federal Court held that the number of the soldiers in the stamp (14 of 19) weighed against fair use.  Further, the Court found that The Column constituted the focus (“essentially the entire subject matter of the stamp”), which supported its finding against fair use.  But the Court found one factor in favor of fair use, because the stamp has not and will not adversely impact the sculptor’s efforts to market derivative works of The Column. “Someone seeking to take a photograph of The Column or otherwise create a derivative work would not find the stamp to be a suitable substitute for The Column itself. ”  In total, however, the Federal Court found that the factors heavily weighed against a fair use of the sculpture.

What does this show us?  First, that courts can disagree as to whether the use of a photograph of a copyrighted work is a fair use.  Second, to be safe and to avoid protracted litigation, always get permission from the copyright owner to use the photograph of a copyrighted work.

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