District court holds model and actress Emily Ratajkowski committed copyright infringement by posting plaintiff’s photo of her in Instagram Stories (which automatically deletes content after 24 hours) but denies plaintiff’s summary judgment motion because court finds material issue of fact as to whether Ratajkowski sufficiently “transformed” picture by adding caption to establish fair use.

Plaintiff Robert O’Neil, a paparazzi photographer, photographed model and actress Emily Ratajkowski aka “Emrata” outside the Adore Flower Shop in downtown Manhattan. According to O’Neil, the photograph, which depicts Ratajkowski covering her face with a bouquet of flowers, was subsequently uploaded to his agency, Splash News, and registered (alongside 747 other photographs) with the U.S. Copyright Office. A few days later, Ratajkowski posted the photo with the caption “mood forever” to the Instagram Stories section of her Instagram account, which—unlike uploading a photo to Instagram—automatically deletes content after 24 hours.

On cross-motions for summary judgment, the district court determined that O’Neil holds a valid copyright registration in the photo and the photo meets the “extremely low bar” for originality; that Ratajkowski copied and, absent a valid fair use defense, infringed the copyright in the photo; and that O’Neil is entitled to statutory damages. The court, however, found a genuine issue of material fact exists as to whether Ratajkowski’s use of the photo was “transformative” under the fair use doctrine and, therefore, denied summary judgment on liability.

In light of the fact that 747 other photographs were contained in the same copyright registration, the court found it “impossible” to tell from the face of the registration that it included the photo in question. Ultimately, however, the court took judicial notice of a certified deposit copy (over Ratajkowski’s objection) of the photo and held that O’Neil sufficiently established that his photo is registered with the U.S. Copyright Office. The burden then shifted to Ratajkowski to challenge the validity of the photo’s copyright, which she did by arguing that the photo was not sufficiently original to warrant copyright protection. However, noting that paparazzi photographs have been found original based on their “myriad creative choices, including, for example, their lighting, angle, and focus,” the court held that the photo met the “extremely low” standard for originality. Having established ownership to a valid copyright in the photo and having also established that Ratajkowski copied the photo, the court granted summary judgment in O’Neil’s favor on those issues.

Next, the court considered whether O’Neil may recover statutory damages, which under the Copyright Act may amount to between $750 and $30,000 per infringement, and up to $150,000 if such infringement is “willful.” The court noted that statutory damages for infringement are not available for “an unpublished work commenced before the effective date of its registration” or “commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” Ratajkowski advanced two arguments in an attempt to persuade the court that the photo was not, in fact, “published”—because the photo was only posted to Splash (O’Neil’s agency) and, separately, because Splash’s thumbnail posts were merely “samples” that had not been sold or delivered to customers. The court disagreed on both counts. Because Splash offered the photo to its subscribers for licensing purposes, the court found that posting to Splash constituted publication. Furthermore, by posting to Splash, O’Neil was in a position to, and did, earn income on the photo between Sept. 13 and 19. Because the photo was published to Splash on Sept. 13 and the photo was registered with the U.S. Copyright Office on Oct. 3, 2019—within three months of the photo’s publication—the court concluded that O’Neil is entitled to statutory damages if he ultimately prevails on liability.

Finally, the court considered the parties’ cross-motions as to whether Ratajkowski’s posting of the photo to her Instagram Stories constituted a “fair use.” After consideration of the four statutory fair use factors—(1) the purpose and character of the use, including whether the use was transformative, for commercial purposes, or in bad faith in the specific context used; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion of the work used; and (4) the effect of the use on the potential market for the work—the court held that material issues of fact existed as to whether Ratajkowski’s use was “transformative” (first factor) and whether the copied photo competed as a substitute for the original (fourth factor).

As to the first factor, Ratajkowski argued that adding the text “mood forever” on the photo before posting it to her Instagram Stories commented from Ratajkowski’s perspective on the “abusive, aggressive, and harassing” paparazzi constantly following her around. The court noted that a reasonable observer could view Ratajkowski’s posting of the photo as merely having the same effect as the copyrighted photo, i.e., showing her clothes, location and pose. On the other hand, a reasonable observer could conclude that the words were added to convey Ratajkowski’s “mood forever” toward paparazzi and her attempting to hide from them, i.e., adding commentary on the photo. As for the other considerations in the first factor, the court awarded “little weight” to the commerciality of Ratajkowski’s post, finding that although Ratajkowski generates profits from her posts, and even has a link to her online store on her account page, she was not paid to post this particular story using the photo in question. Furthermore, in weighing Ratajkowski’s “good or bad faith” in posting the photo, the court found that there was no evidence that she knew the photo was copyrighted or by whom it was copyrighted.

The court held that the second factor, the nature of plaintiff’s work, weighed “only marginally” in O’Neil’s favor on the grounds that the photo was “factual in nature” as opposed to “expressive or creative.” Indeed, O’Neil essentially captured Ratajkowski as she naturally appeared, and he did not do much of anything to “impose creative force” on the photo or “infuse” the photo with his “own artistic vision.”

Turning to the third factor, the amount and substantiality of the portion of the copyrighted work used, the court agreed with plaintiff that “Ratajkowski took the vast majority, if not the entirety, of the Photograph.” At the same time, the court gave consideration to Ratajkowski’s argument that because the photo was posted to her Instagram Stories, not on her main account, the use was less substantial, especially because the photo only appeared for 24 hours, making it less likely that someone would take the photo from Instagram rather than licensing it from O’Neil. Accordingly, Ratajkowski used a greater portion of the photo than was necessary but posting it to her Instagram Stories lessened the weight.

With regard to the fourth factor, which considers the secondary usage’s effect on the original work’s market, the district court could not make a ruling. The court found that there was no information in the record regarding the relevant market: individuals licensing photographs from paparazzi to post the photos on their individual social media accounts. Ratajkowski argued that there was no market for the photo because her face was covered and O’Neil failed to make money from licensing it in any event. But these arguments were insufficient to rebut the presumption of market harm.

Based on the existence of the fair use defense, as to which it found there were genuine issues of material fact, the court denied summary judgment on liability on the copyright claim, although it stated that it granted summary judgment on the infringement. In addition to fair use, Ratajkowski asserted 13 other affirmative defenses; failure to state a claim; invalidity or unenforceability of copyright; scenes a faire and merger doctrines; estoppel; waiver; copyright misuse; unclean hands; authorized use, license, consent or acquiescence; noninfringement; and constitutional defenses. After analysis, the court dismissed all but three of the affirmative defenses, concluding that it could not dismiss the affirmative defenses of constitutional defenses, noninfringement and fair use because there are issues of material fact regarding fair use.