405 F.Supp.3d 537
S.D.N.Y.2019Background
- Plaintiff (photographer) licensed a portrait of Dan Rochkind to the New York Post; the Post published an article using the Photograph.
- Defendant (Mic) republished a screenshot of the Post Article (headline, byline, date, and roughly the top half of the Photograph) without licensing or permission.
- Plaintiff sued for copyright infringement; Defendant moved to dismiss under Rule 12(b)(6), asserting fair use as an affirmative defense.
- The court considered the two works (original Photograph and Mic's Screenshot) on the pleadings and analyzed the four fair-use factors.
- The court found Mic's use transformative (identifying and criticizing the Post Article), concluded fair use as a matter of law, granted the motion to dismiss, and entered judgment with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Mic's use is transformative under Factor 1 | Mic merely reproduced the Photograph; use is not a new expressive purpose | Screenshot was used to identify and criticize the Post Article; adds new meaning/context | Transformative: use identified and criticized the Post Article; favors fair use |
| Effect of Mic's commercial nature on Factor 1 | Mic is for-profit; commercial purpose weighs against fair use | Even if commercial, transformative use reduces weight of commerciality | Commerciality weighed against Mic but was of limited significance given transformation |
| Whether cropping and removal of credit shows bad faith | Removing credit and cropping suggests bad faith, weighing against fair use | Transformation still predominates; bad faith not dispositive | Bad faith plausible on pleadings and weighs somewhat for Plaintiff but does not defeat fair use |
| Amount/substantiality (Factor 3) | Using part of the Photograph and alternatives existed; copying too much | Cropped Screenshot was reasonable to identify and satirize the Post Article | Amount was reasonable and necessary for transformative purpose; favors fair use |
| Market effect (Factor 4) | Mic's use diverted licensing market and harmed value | Screenshot is composite and cropped; unlikely to substitute for licensing the Photograph | No plausible market substitution; favors fair use |
Key Cases Cited
- McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184 (2d Cir. 2007) (limits review to complaint and incorporated documents on a motion to dismiss)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must be plausible)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (constrains conclusory allegations on pleadings)
- Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015) (burden on defendant to prove fair use affirmative defense)
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (test for transformative use under Factor One)
- Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013) (allowing side-by-side comparison and transformative-use analysis)
- Castle Rock Entm't, Inc. v. Carol Publ'g Grp., Inc., 150 F.3d 132 (2d Cir. 1998) (fair use promotes creation of secondary works)
- Blanch v. Koons, 467 F.3d 244 (2d Cir. 2006) (transformation can outweigh commercial nature)
- NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir. 2004) (discusses bad faith and Factor One analysis)
- Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013) (when affirmative defenses are adjudicable on a motion to dismiss)
- Barcroft Media, Ltd. v. Coed Media Grp., LLC, 297 F. Supp. 3d 339 (S.D.N.Y. 2018) (display of an image as illustration of commentary/news can be transformative)
- Nunez v. Caribbean Int'l News Corp., 235 F.3d 18 (1st Cir. 2000) (copying amount permissible when necessary to illustrate controversy)
- Rogers v. Koons, 960 F.2d 301 (2d Cir. 1992) (removal of credit may suggest bad faith)
- Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d Cir. 2014) (contextual reframing can render use transformative)
- Katz v. Google Inc., 802 F.3d 1178 (11th Cir. 2015) (using a photo to ridicule can be transformative)
- Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018) (market effect is the single most important fair-use element)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (market harm central to fair use inquiry)