When Does Art Constitute Transformative Fair Use? It’s As Easy as “Red” and “White”

he U.S. District Court for the Central District of California granted in part and denied in part a photographer’s Motion for Summary Judgment in Morris v. Young, a case that explored the requirements for establishing an issue of triable fact regarding fair use (and particularly transformative use) of photographs.

Background

Dennis Morris, is a photographer and artist who published two books about the Sex Pistols, originally in the United Kingdom. Both books contain original photographs of the band on tour, taken by Morris, including a photo depicting Sid Vicious and Johnny Rotten on stage. Morris also distributed the photo through his agent camerapress.com and obtained a U.S. copyright registration for the two books in 2011.

Russell Young is an artist and former photographer. Sometime in the mid-2000s, Young created a series of works based on images of the Sex Pistols that he found online. None of the images contained copyright notices and Young believed they were in the public domain. Among the images Young found was Morris’ photo, which Young used in three works titled “Sex Pistols in Red” (Morris’ image slightly cropped and tinted in deep red), “Sex Pistols” (Morris’ photo printed using black enamel on an acrylic background) and “White Riot + Sex Pistols (two versions of the image placed side-by-side, with a Union Pacific logo, the words “White Riot” and red stars graffitied over them).

Morris recognized his work as the basis of Young’s art and filed a complaint against Young in January 2012 seeking damages for copyright infringement and an injunction enjoining Young from further infringement of Morris’ photo. He subsequently sought a motion for summary judgment as to infringement.

Valid Copyright and Undisputed Copying

Morris satisfied the court that he authored and published the photo, and obtained valid copyright registration certificates for the two books in which the photo was published. Young’s argument that he found the photo “on the internet without attribution” did not undermine Morris’ authorship and ownership of the copyrights. Copyright notice is no longer a requirement under the Act and Morris could not be responsible for all uploads of his image.

The Court also found that it was undisputed that Young both had access to Morris’ work and that the two works are substantially similar in idea and expression. It held that “the undisputed evidence” showed that Young copied Morris’ subject photograph. The Court therefore moved to the next step in its analysis: determining whether Young’s uses of Morris’ photograph fell within the “fair use” exception.

Fair Use: “Sex Pistols” and “Sex Pistols in Red”

The court followed the requisite four factor test found in Section 107 of the Copyright Act to analyze whether the copying was permissible under fair use: (1) the purpose and character of the use; (2) the nature of copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

Looking at “the purpose and character of the use” for “Sex Pistols” and “Sex Pistols in Red” first, the Court found that Young’s commercial use of those works (he made approximately $8,940 from selling them) weighed against a finding of fair use. The Court also found that Young’s use of the photograph in those two works – cropping and tinting them, and changing the subject medium – constituted “little more than reproductions of the Subject Photograph with minor alteration.” Moreover, the Court held that it did not appear that Young intended any distinct purpose or message when creating those works (and his testimony on the issue was disqualified for being contradictory). For these reasons, the Court found that Young’s use was not transformative because it lacked any significant expression, meaning, commentary or message unique vis-a-vis the works’ original purpose. This weighed against fair use.

Regarding the second factor, “the nature of the copyrighted work,” the Court found the subject photograph to be creative in nature. With regard to defendant Young’s argument that the scope of fair use is narrower with respect to unpublished works, the Court held that the plaintiff Morris’ right to copyright protection of his subject photograph was limited “only slightly” by his previous publication in book books. This weighed against a fair use finding.

For the third factor, the court considered whether the amount of Morris’ work used by Young was “reasonable in relation to the purpose of the copying.” The taking of the “heart” of the work generally weighs against a finding of use. The Court found that Young used most or all of Morris’ subject photograph to create “Sex Pistols” and “Sex Pistols in Red.” This weighed against fair use.

On the final fair use factor, “the effect of the use on the market,” the Court looked at whether conduct of the kind perpetrated by Young would result in a substantially adverse impact on the potential market for the original works. The Court held that, at a minimum, both Morris’ subject photographs and Young’s two works could appeal to overlapping audiences of Sex Pistols fans and those who appreciate punk-rock culture. Therefore, the Court found that Young’s use of Morris’ photo, if widespread, could threaten the market for the subject photo by “eroding its usefulness.”

Taking its analysis of all four factors into account, the Court found that no material dispute of fact existed such that a trier of fact could find “Sex Pistols” or “Sex Pistols in Red” constitutes a fair use of Morris’ subject photograph. Thus, the Court granted Morris’ Motion for Summary Judgment with respect to those two photos.

Fair Use: “White Riot + Sex Pistols”

Unlike the other two photographs, the Court held that “White Riot + Sex Pistols” raised a question of transformation and therefore fair use. The original subject photograph is distorted by graffitied words superimposed over it and, unlike the other two works, “White Riot + Sex Pistols” incorporates images beyond the band and arranges them “such that the composition may convey a new message, meaning, or purpose beyond that of the Subject Photograph.” Accordingly, the Court held that the work on its face raised the possibility of new expression.

Declaring that the transformative character of a work bears upon the weight and meaning of the other fair use factors because “the more transformative the new work, the less will be the significance of the other factors”), the Court held that a triable issue of fact exists as to whether “White Riot + Sex Pistols” is a fair use of plaintiff Morris’ photograph. The Court denied summary judgment as to “White Riot + Sex Pistols”, leaving the analysis to a jury to decide.

Takeaways:

The Morris decision is validation for photograph owners seeking to enforce copyrights against those who take images (even uncredited from the internet) and republish them without major modification or incorporation of a new meaning, expression or meaning. Photographer’s right to authorize derivative works is affirmed by this court.

However, the Court’s ruling regarding the “White Riot + Sex Pistols” photo demonstrates the higher bar for receiving a grant of summary judgment when a photo is transformed in a more significant way. In the age of internet memes and remix culture, where the line is drawn between an infringing derivative and a non-infringing transformative use will continue to challenge photographers who expect to be paid when others are exploiting their works for profit.

If you have any questions about this article, please contact an attorney in the CDAS Copyright Practice Group.