Otto v. Hearst Commc'ns, Inc.
345 F. Supp. 3d 412
S.D. Ill.2018Background
- Plaintiff Jonathan Otto (an amateur who took the photo on his iPhone) photographed President Trump at a private wedding and texted the photograph to a guest; the image was later posted to Instagram and widely republished by media outlets, including Hearst's Esquire.com.
- Otto registered the photograph with the U.S. Copyright Office the day after it went viral and then sued multiple publishers, including Hearst, for copyright infringement; several other suits settled.
- Hearst published an Esquire article using Otto’s photograph (credited to the Instagram account from which Hearst sourced the image), without licensing the photo from Otto or contacting him, and displayed ads on the page.
- Otto moved for partial summary judgment on liability and affirmative defenses; Hearst cross-moved asserting fair use and seeking a ruling that infringement was not willful.
- The court found no genuine dispute that Otto owned a valid copyright and that Hearst copied and published the identical photograph without permission; the court granted Otto summary judgment on liability and on Hearst’s affirmative defenses (including fair use, waiver, consent, release, non-infringement, failure to state a claim).
- The court denied Hearst summary judgment on willfulness, finding disputed facts could support a jury finding of willful infringement.
Issues
| Issue | Plaintiff's Argument (Otto) | Defendant's Argument (Hearst) | Held |
|---|---|---|---|
| Liability for copyright infringement | Otto: he owns a valid copyright; Hearst copied and published the identical photo without permission | Hearst: disputes only ownership/certification earlier but not that it copied the image | Court: Otto owns valid copyright and Hearst infringed — summary judgment for Otto |
| Fair use defense | Otto: Esquire’s use was not transformative, was commercial, used the whole image, and harmed licensing market | Hearst: used photo for news reporting/illustration of a newsworthy event and provided commentary about Trump’s behavior, so use is fair | Court: Use was not transformative; factors weigh against fair use — summary judgment for Otto (fair use rejected) |
| Waiver / Implied license / Consent | Otto: texting a friend did not waive rights or grant an implied license to publishers; no meeting of the minds with Hearst | Hearst: Otto’s sharing to a guest and the photo’s public circulation implied consent or license | Court: No evidence of waiver or an implied license to Hearst — summary judgment for Otto |
| Willfulness (statutory damages enhancement) | Otto: Hearst’s publishing practices and prior suits support willfulness / willful blindness | Hearst: lacked actual knowledge of Otto’s ownership; sourced image from Instagram and credited that account; no prior notice from Otto | Held: Genuine dispute of material fact exists as to willfulness — summary judgment denied for both sides |
Key Cases Cited
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1978) (news reporting does not automatically make copying fair use)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (1994) (transformativeness is central to fair use inquiry)
- Castle Rock Entm't, Inc. v. Carol Pub. Grp., Inc., 150 F.3d 132 (2d Cir. 1998) (analysis of actual copying and substantial similarity; transformative use and market effect considerations)
- Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir. 2006) (full use of images can be fair when necessary for transformative purpose)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (transformative use test for visual art)
- Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (fair use serves public interest and marketplace considerations)
- Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014) (news organizations may reproduce originals where necessary, but newsworthiness alone is not dispositive)
- Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366 (2d Cir. 1993) (First Amendment concerns are coextensive with fair use but do not categorically shield infringement)