In what appeared to be a run of the mill copyright infringement claim brought in the United States District Court for the Eastern District of Virginia, the unforeseeable occurred, when the District Judge found that the infringing acts actually constituted fair use under the Copyright Act, 17 U.S.C. § 107.
That District Court decision, in Russell Brammer v. Violent Hues Productions, LLC (1) found that all four factors of the fair use test favored the defendants’ use of Brammer’s stock photograph. It was roundly criticized by almost everyone.
The decision was appealed to the Fourth Circuit Court of Appeals. The importance of overriding the clearly erroneous analysis and conclusions of the District Court Judge was clear by the appearance on appeal of 12 prominent photography, artists’ rights, and other advocacy rights organizations in support of plaintiff. (2)
The appeal was argued on March 19, 2019. The three judge panel, taking only 38 days from argument to a fully well-reasoned decision, unanimously reversed the District Court in a decision dated April 26, 2019 (the “Circuit Court Opinion”)(3) citing to a number of Second Circuit Court of Appeals precedents.
The fact pattern was quite straightforward and largely undisputed. Plaintiff is a professional photographer who on November 19, 2011, created a photograph depicting a busy street during the evening in the Adams Morgan neighborhood of Washington D.C., with the vehicle traffic rendered as red and white trails (the “Photo”).
Brammer had previously sold physical prints of the Photo for $200 to $300 each, and licensed it for online use twice, once for $1,250 and once for $750.
In 2016 the defendants’ owner, Fernando Mico, posted the Photo on novafilmfest.com, a website owned by defendant, a film production company. It promoted the Northern Virginia International Film and Music Festival, which was a revenue generated event.
The website contained a page titled “Plan Your Visit” which highlighted various tourism attractions around the Washington metro area. Mico posted a cropped version of Brammer’s Photo above the caption “Adams Morgan, DC,” without any attribution or other commentary.
Mico testified that he found the Photo through a Google Image search which led [him] to the website Flickr, but claimed he did not see any indication on the Photo or the Flickr website that the Photo was copyrighted. He therefore said he believed it to be publicly available. After downloading, Mico cropped out the Photo’s negative space for what he considered to be “stylistic reasons” before posting it on defendant’s website.
After Brammer discovered the unauthorized use, his counsel sent a letter to defendant requesting compensation. Defendant refused, but did remove the Photo from its website. Brammer then commenced copyright infringement litigation, seeking damages and attorney’s fees. Defendant asserted a fair use defense and moved for Summary Judgment, which the District Court granted.
Issue On Appeal
The Circuit Court framed the issue on appeal as “whether Violent Hues made fair use of Brammer’s Photo. The fair use defense presents a mixed question of law and fact, requiring us to ‘review the district court’s legal conclusions de novo and its findings of fact for clear error.”(4)
Furthermore, the Circuit Court, following its precedents, opined that an appellate court need not remand for further factfinding when the district court found facts sufficient to evaluate each of the statutory fair use factors. Instead, it may conclude as a matter of law that the challenged use does not qualify as a fair use of the copyrighted work.
The panel did just that – finding that the record on appeal was sufficient for it to render a decision on the merits.
Fair Use Affirmative Defense
The panel first set forth the usual recitation of the purpose of the fair use defense which is to advance the U.S. Constitution’s stated purpose of promoting “the progress of science and useful arts”(5) by allowing others to build freely upon the ideas and information conveyed by a work. However, fair use “is not designed to protect lazy appropriations. Its goal, as set forth in a Supreme Court decision, is instead to facilitate a classes of uses that would not be possible if users always had to negotiate with copyright proprietors.”(6)
The panel looked to the Second Circuit Court of Appeals, which held that the ultimate test of fair use is whether the progress of human thought “would be better served by allowing the use then by preventing it.”(7)
The Copyright Act at 17 U.S.C. Section 107 sets forth four non-exclusive factors to weigh in considering whether a use is fair.
The First Factor – Purpose and Character of the Secondary Use
The primary inquiry on this factor is whether the use “communicates something new and different from the original or [otherwise] expands its utility.”(8) This is now referred to as a transformative use.
Part of the analysis is whether the use “is of a commercial nature or is for non-profit educational purposes, and, finally, the propriety of the defendant’s conduct may be relevant.”(8)
The panel cited another Second Circuit opinion Author’s Guild, Inc. v. HathiTrust, to the effect that, to be transformative a use must do “something more than repackage or republish the original copyrighted work.”(9)
The panel further followed the Second Circuit’s lead by citing to Cariou v. Prince which held that “what is critical is how the work in question appears to the reasonable observer, not simply what an artist might say about a particular piece or body of work.”(10)
With these legal standards in mind, the panel determined that its side-by-side examination of the original Photo and defendant’s cropped version shows only defendant’s removal of negative space, which did not alter the original with new expression, meaning or message.
The defendant contended that it transformed the Photo by placing it in a list of tourist attractions. The panel acknowledged that a transformative use may occur when the image is placed in a new context to serve a different purpose, but rejected defendant’s contention that it did so in this case.
The panel referenced, by way of example, other situations, such as technological or documentary uses which were found to be transformative.(11) The panel concluded that Violent Hues’ copying did not fall into either of these categories. Since defendant used the Photo expressly for its content to depict Adams Morgan – rather than for data organization or historical preservation, it did not create any new function or meaning.(12)
As a result, the panel concluded that the copying was not transformative, overruling the district court finding.
The first factor also requires consideration of whether the “use is of a commercial nature or is for non-profit educational purposes.”(13) The panel relied upon its own Fourth Circuit precedent(14) to determine “whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.”(15)
Defendant’s website did not generate direct revenue or run advertising, but, as a limited liability company, defendant used the Photo on its website to promote a for-profit festival. This fact, found the panel, was sufficient to demonstrate commercial use.
The defendant argued that the third prong of the first fair use factor concerns whether it acted in good faith, which of course it claimed it had. The panel rejected this argument, holding that although the Supreme Court has approved weighing bad faith against an alleged infringer(16), that does not necessarily lead to the conclusion that a showing of good faith weighs in finding a use to be fair.
Copyright infringement is a strict liability offense(17). Accordingly, there is a presumption that an alleged infringer acted in good faith. Therefore, when considering a user’s mental state, most (but not all) appellate courts just ask whether the “bad faith subfactor weighs in plaintiff’s favor”(18).
The panel determined that, in any event, defendant had not offered any evidence that it acted in good faith and reversed the District Court’s contrary finding as clearly erroneous.
Finally, based upon its determination that defendant’s reproduction of the Photo was not transformative, and was commercial in nature, the first fair use factor weighed against fair use.
The Second Factor – The Nature of the Copyrighted Work
This factor is usually considered the least important of the fair use factors. The panel looked to the concept of assessing the “thickness or thinness of the author’s exclusive copyright rights. Thicker rights apply when works are closer to the core of intended copyright protection.”(19)
The panel accepted prior caselaw which established that photographs have long received thick copyright protection because of the creative choices made by the photographer (such as lighting, camera angle, depth of field and selection of foreground and background elements).(20) It also rejected defendant’s contention that prior publication of the Photo must necessarily weigh in favor of fair use.
Applying these legal concepts to the facts in this case, the panel had no difficulty in overriding the District Court, concluding that the Photo merits thick protection, that prior publication was not relevant, and therefore that the second factor weighs against fair use.
The Third Factor – The Amount and Substantiality of the Portion Used
The key question, as stated by the Second Circuit in HathiTrust and cited by the panel, is “whether no more was taken than necessary to accomplish the alleged infringer’s purpose.” (21)
Since defendant used roughly half of the Photo and kept the most expressive features which constituted the heart of the work (merely removing the negative space), the panel determined such taking was not justified. Accordingly, the third fair use factor also weighed against fair use.
The Fourth Factor – The Effect of the Use Upon the Potential Market or Value of the Copyrighted Work
The panel spent little time in analyzing this factor, which other circuit courts have considered to be of primary importance. Instead, the panel just accepted what it called the “common sense presumption that cognizable market harm exists when a commercial use is not transformative but instead amounts to mere duplication of the entirety of an original.”(22)
Further finding that Brammer had produced evidence showing that, on two occasions, the Photo had been licensed to others as a stock image, the panel rejected defendant’s argument that Brammer did not show market harm. Accordingly, it reversed the District Court on this as well, and found factor four also weighed against fair use.
The panel’s ultimate conclusion was that defendant published a tourism guide for a commercial event and included the Photo to make the end product more visually interesting; and that this did not constitute fair use.
Noteworthy of interest was the panel’s recognition that the Internet has made copying as easy as a few clicks of a button, and that much of that copying actually serves the objectives of copyright (i.e., Twitter, Facebook, and Instagram participatory sharing or copying of content). The panel expressed no opinion as to whether that type of sharing constitutes fair use, noting only that defendant’s use was not of this kind.(23)
The panel utterly rejected the District Court’s findings that all four fair use factors favored fair use and, finding the record sufficiently well established, reversed the District Court as a matter of law without remanding for further factfinding or legal determination.
The United States Federal Justice system is built upon the ability to seek appellate review of seemingly incorrect decisions. This was one occasion where the appellate court, supported by many prominent photography and artists’ rights and other advocacy rights organizations, did just that, and permitted justice to indeed prevail.
Originally published in the Fall 2019 edition of the Entertainment, Arts and Sports Law Journal, Vol. 30, No. 2 of the Entertainment, Arts and Sports Law Section of the New York State Bar Association.
1 Eastern District of Virginia, Case No. 17-cv-01009.
2 The Amici supporting plaintiff-appellate were American Photographic Artists; American Society of Media Photographers, Inc.; Arts & Entertainment Advocacy Clinic at George Mason University Antonin Scalia Law School; Copyright Alliance; Digital Justice Foundation; PACA, Digital Media Licensing Association, Inc.; Volunteer Lawyers for the Arts, Inc.; New York Intellectual Property Law Association; National Press Photographers Association; Graphic Artists Guild, Inc.
3 U.S. Circuit Court for the Fourth Circuit Court of Appeals, Case No. 18-1763, Docket No. 68.
4 Circuit Court Opinion at page 5.
5 Circuit Court Opinion at page 5, citing to Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569, 575 (1994).
6 Circuit Court Opinion at page 5, citing to Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 350 (1991), and to Kienitz v. Sconnie Nation LLC, 766 F. 3d 756, 759 (7th Cir. 2014).
7 Circuit Court Opinion at page 6, citing to Cariou v. Prince, 714 F. 3d 694, 705 (2d Cir. 2013).
8 Circuit Court Opinion at page 6.
9 755 F. 3d 87, 96 (2nd Cir. 2014).
10 Cariou, at 714 F. 3d 707.
11 Circuit Court Opinion at page 9 and cases cited therein.
12 Circuit Court Opinion at page 10.
13 17 U.S.C. § 107 (1).
14 Bouchat v. Balt. Ravens Ltd P’ship, 619 F. 3d 301, 307 (4th Cir. 2010).
15 Circuit Court Opinion at page 11.
16 Circuit Court Opinion at page 12, citing to Harper and Row Publishers, Inc. v. Nation Enters, 471 U.S. 539, 562-63 (1985).
17 Circuit Court Opinion at page 13, citing to Harper and Row supra, 471 U.S. at 562.
18 Circuit Court Opinion at page 13 citing to NXIVM Corp. v. Ross Inst., 364 F. 3d 471, 479 (2d Cir. 2004).
19 Circuit Court Opinion at page 14, citing to Campbell, supra, 510 U.S. at 586.
20 Circuit Court Opinion at page 14, citing to Rentmeester v. Nike, Inc., 883 F. 3d 1111, 1120-21 (9th Cir. 2018).
21HathiTrust, supra at 98 (quoting Campbell, supra, 510 U.S. at 589).
22 Circuit Court Opinion at page 18, citing to Campbell, supra 510 U.S. at 591.
23 Circuit Court Opinion at pages 19-20.
I'm busy working on my blog posts. Watch this space!