District court dismisses photographer’s copyright infringement claim against HuffPost, finding media site’s altered reproduction of photographer’s viral “crotch shot” of Jon Hamm constituted fair use.
Plaintiff Lawrence Schwartzwald, a New York-based photographer whose works are licensed to various media outlets, sued defendant Oath Inc., the owner and operator of HuffPost, for posting an altered and cropped photograph of Jon Hamm in a tongue-and-cheek article featuring 25 events or trends of 2013 that the public could have gone without knowing. In 2013, Schwartzwald photographed the Mad Men star walking down the street, apparently not wearing any underwear, holding the hand of his then-girlfriend, actress Jennifer Westfield. Schwartzwald licensed the photo to various media and news outlets, and it went viral.
HuffPost published the article, titled “25 Things You Wish You Hadn’t Learned in 2013 and Must Forget in 2014” on Dec. 27, 2013. Each featured event or trend of 2013 was accompanied by comical commentary, and 12 of the forgettable events were also accompanied by photographs. The item on Hamm was titled “Some ad men don’t do underwear.” Featured below this text was an edited version of Schwartzwald’s photograph with an “Image Loading” box superimposed over Hamm’s crotch. Huffpost did not license the photograph from Schwartzwald or otherwise obtain permission to post the photograph.
On May 18, 2017, more than three years after publication of Oath’s article, Schwartzwald registered the photograph with the U.S. Copyright Office. He claimed that he discovered the alleged infringing use in April 2018. He filed suit on Oct. 28, 2019, almost six years after the publication of Oath’s article including the allegedly infringing photograph.
Oath moved to dismiss Schwartzwald’s copyright infringement claim, arguing that its publication constituted fair use as a matter of law. The district court agreed after consideration of the four statutory fair-use factors.
As to the first factor, the court analyzed three subfactors — whether Oath’s use of the photograph was transformative, was for commercial purposes or was in bad faith — and held that the first factor weighed in Oath’s favor. Oath argued that its use of the photograph was transformative as it “fundamentally transformed the character and purpose of the use” with the “Image Loading” text box, photo caption, title and context of the article. Contrary to Schwartzwald’s asserted purpose of the photograph — to illustrate what Hamm looked like “ostensibly without any underwear” — the court found that Oath’s use was entirely different. In fact, Oath’s use of the photograph “served the dual purpose of mocking both Hamm and those who found the [p]hotograph newsworthy in the first instance.” This finding, the court held, was reinforced by the article’s headline, which poked fun at events, trends or topics that went viral in 2013 as well as the text preceding the photograph, which declared that “Hamm says he wants people to stop talking about his loins, but it might help if he’d put on some underwear.” Furthermore, the court found that Oath modified the “very portion” of the photograph that caused it to go viral by its “comedic placement of the text box.”
Although Oath’s use was transformative, the court held that Schwartzwald plausibly alleged that the second subfactor — that the use was commercial — weighed against fair use but that this finding was not entitled to significant weight. As to the third subfactor — bad faith — the court reasoned that Oath’s use of reproducing the photograph without Schwartzwald’s permission did not constitute bad faith.
Similarly, the court concluded that the second factor, the nature of plaintiff’s work, weighed in favor of fair use because the photograph is more factual (as opposed to expressive or creative) and published (as opposed to unpublished). While Schwartzwald contended the photograph resulted from his “personal and creative choice in the selection of camera equipment,” the court agreed with Oath that the photograph was more a factual “point-and-shoot” paparazzi image. In this sense, Schwartzwald captured Hamm and his girlfriend “as they naturally appeared.” With respect to the photograph’s publication, since it was first published in 2012, this element also weighed toward a finding of fair use.
The court likewise held that evaluating the third fair use factor, which requires comparing the amount and substantiality of the portion of the work used in relation to the work as a whole, weighed in favor of Oath’s fair-use defense. Although Schwartzwald claimed Oath reproduced the photograph “with only minor cropping,” Oath published only half the original photograph. In fact, Oath entirely cropped Hamm’s then-girlfriend from its post. Again, the court found it “important” that the text box superimposed over Hamm’s “privates” covered the very portion of the original photograph that Schwartzwald claimed made it noteworthy. Schwartzwald also argued that Oath could have hired its own photographer to snap a picture of Hamm, could have published its article without any photograph at all or could have obtained a license from him before publication. The court opined that neither of the first two options would have made use of an already viral photograph of Hamm’s privates and would not have aligned with the purpose of Oath’s article. The court characterized the last option as “circular” and concluded that Oath’s failure to seek a license in the first instance did not defeat its fair-use defense.
As for the fourth and final factor, the effect of the use on the potential market for the work, the court concluded that it is unlikely that potential purchasers of the photograph would opt for Oath’s version over the original, thus weighing in favor of a finding of fair use. According to the court, Oath’s use of the text box would make it impossible to determine “what Jon Hamm looks like . . . ostensibly without any underwear.” Therefore, Oath’s secondary use could not compete as a substitute for Schwartzwald’s original photograph and would not deprive him of significant revenue. Considering the totality of the fair-use factors, the court held Oath’s use of the photograph constituted fair use and granted Oath’s motion to dismiss.