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IP Law Daily, COPYRIGHT—9th Cir.: Republication of a photo of an ephemeral lake does not qualify as fair use, (Aug 4, 2022)

Law Firms Mentioned:Doniger / Burroughs
Organizations Mentioned:Doniger Burroughs, APC | National Parks Conservation Association | Pub Ocean Ltd.

By Matthew Hersh, J.D.

Because the later use was for the same purpose as the original, there was nothing transformative about it.

A digital publisher that posted on its web page a series of photos of a lake that briefly formed on a desert floor could not successfully evoke ...

By Matthew Hersh, J.D.

Because the later use was for the same purpose as the original, there was nothing transformative about it.

A digital publisher that posted on its web page a series of photos of a lake that briefly formed on a desert floor could not successfully evoke the fair use defense to excuse its actions, the U.S. Court of the Appeals for the Ninth Circuit had held. The court, reversing the district court’s decision in favor of the online publication, found that the fair use defense did not apply because the photos were reproduced for the same purpose, to colorfully illustrate a natural phenomenon, as the original use (McGlucken v. Pub Ocean Ltd., August 3, 2022, Nguyen, J.).

The case arose when photographer Elliot McGucken captured a series of photographs of “an otherworldly sight—an ephemeral lake that had formed on the desert floor in Death Valley after heavy rains in March 2019.” The photographer, upon discovering the lake, then took a series of photographs of the lake from different vantage points. “With a little luck, a little sweat, and plenty of skill,” the court of appeals described, “McGucken produced a series of photos of stunning beauty.” The photographer posted the photos on his Instagram page and licensed them to several publications, including the Daily Mail, the National Parks Conservation Association, Smithsonian Magazine, AccuWeather, and Live Science.

The apparent beauty of the photos soon attracted other publishers as well—but this time claiming that they were entitled to use the work without a license. Newsweek Magazine, for example, ran a story featuring the photos in its online edition. The photographer sued the venerable publication, in the Manhattan federal court, for copyright infringement. After the district court refused to grant summary judgment to Newsweek on its fair use claim, the parties reportedly settled.

But a federal court in Pasadena, California, reached a different opinion from its New York counterpart. In the case before that court, a U.K.-based digital publisher named Pub Ocean posted an article on its websites that used twelve of the photographer’s photos. The article was entitled, “A Massive Lake Has Just Materialized In The Middle Of One Of The Driest Places On Earth.” After the photographer sued, the Pasadena court granted the publication’s motion for summary judgment on the question of fair use. The photographer appealed, leading to this opinion.

Transformative use. The court reversed and remanded for entry of summary judgment in favor of the photographer on fair use. At the heart of the court’s analysis was its discussion of the first fair use factor, or transformative use.

The court found that the digital publisher had not made a transformative use of the photographs. As the title of the article indicated, the court noted, the focus of the article was the ephemeral lake. “The article begins and ends,” the court observed, “by discussing the lake, and each of the topics it touches on—from Death Valley to superblooms—bears some relationship to it.” Nor did the article present the photos in any new or different light. Instead, the court noted, it used them “for exactly the purpose for which they were taken: to depict the lake.”

Similarly, the court noted, the fact that the publication added narrative context to the photographs did not change the outcome. “Practically speaking,” the court noted, “it is hard to imagine what would not be a fair use, or what could not be readily turned into a fair use,” under the publication’s theory. Quoting Justice Story’s classic opinion on fair use, Folsom v. Marsh, 9 F. Cas. 342, 345 (C.C.D. Mass. 1841), the court noted: Transformation requires more than “the facile use of scissors.” The digital publication’s article would not pass that test.

Other fair use factors. With transformative use off the table, the rest of the factors—as is almost inevitably the case in fair use cases—pointed to the same outcome. The publication was for a commercial purpose and the nature of the underlying works, the photographs, was highly expressive. Moreover, the court noted, the publication took the photos essentially in their entirety (it did not matter, the court noted, that the publication also used many other photos in its article). As to the effect on the market, the court noted, there was no question that a market already existed for the photos—and if republication like this were to be carried out in a widespread and unrestricted fashion, the court noted, “Pub Ocean’s conduct would destroy McGucken’s licensing market.” Thus, fair use was ruled out as a matter of law.

The appellate court reversed the district court’s summary judgment ruling, directed the court to enter partial summary judgment for McGucken on Pub Ocean’s fair use defense, and remanded the case for further proceedings.

The Case is No. 21-55854.

Attorneys: Scott Alan Burroughs, Trevor W. Barrett, and Frank R. Trechsel (Doniger / Burroughs) for Elliott McGucken. Shane W. Tseng and Albert T. Liou (Prospera Law LLP, Los Angeles, California, for Pub Ocean Ltd.

Companies: Pub Ocean Ltd.

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