November 4, 2022

Daniel Long

Why do some photography copyright cases win, while others fail?

Photo by Tingey Injury Law Firm

Have you ever wondered why some copyright lawsuits are successful, while others are not? The answer depends on the nature of the individual lawsuit(s). The evidence you will need to be able to produce will depend on the circumstances surrounding your individual claim, as will the fact-finder’s analysis of the evidence provided by both parties.
In this article, we have outlined a few recent cases where a photographer (copyright owner) failed to persuade a court to enforce their copyright claim, and the key takeaways for other copyright owners based on the results of those cases.

What do you need to show to win a copyright case in the U.S.?

So, you’ve decided you want to file a lawsuit to enforce your copyright, and you are working with your legal representation to compile and organize your supporting evidence. As you work through this process, there are a few standards you want to keep in mind.

  • First, we should clarify that in the U.S., the burden of proof in a copyright lawsuit rests with the party asserting the claim. It is incumbent upon you, the copyright owner, to demonstrate the truthfulness of your claim.
  • Next, it is important to understand the standard of proof courts use to determine the truthfulness of a claim. For civil litigation claims, like those asserted in copyright lawsuits, the standard of proof the party asserting the claim must meet is a “preponderance of the evidence.” This means that the party bearing the burden of proof must convince the fact finder (usually a judge or jury), that there is a larger than 50% chance their claim is true.

On the surface level, there are three elements your copyright claim must have to satisfy this US standard:

  1.     You own a valid copyright in the work;
  2.     The person or entity you are suing copied that copyrighted work; and
  3.     That unauthorized copying constituted copyright infringement.

That third element may give some readers pause—if someone copies your original, copyright-protected work without your permission, isn’t that automatically considered copyright infringement? Not necessarily. The U.S. Supreme Court has held that copyright in an original work does not protect every single element of that work, but only those elements that constitute original expression. Things like titles, names, familiar symbols, listings of ingredients, or statements of fact would not be protected by copyright because they do not constitute original expression.

As a result, the third element of a successful copyright infringement claim has two sub-elements that must also be satisfied:

  1.     You must establish that the portion of the work that was copied without permission was original expression; and
  2.     That there is a substantial similarity between the original expression and the copy.

Every case where a copyright owner failed to persuade a court to enforce their copyright in a work can be boiled down to a failure to satisfy one or more of these elements. In the next section, we will walk through a few of these cases, identifying what went wrong for the copyright owner, and how other copyright owners can avoid the same pitfalls. This is by no means an exhaustive list, but is intended to give authors an awareness of some pitfalls that have been around for a while, and other considerations that are relatively new in the age of social media.

Want to learn more about the copyright litigation process?
Copyright litigation is often an expensive and time consuming process. Because the law is not black and white (especially when presented before the courts), the legal interpretation of copyright will always have an impact on the merits of a case.
Our article on copyright litigation has everything you need to know.

Photo by Tingey Injury Law Firm

These three copyright cases can help photographers and image creators understand the law better:

The cases outlined above are in no way representative of all the reasons a copyright lawsuit may fail, but they are solid examples of a few common pitfalls, especially for copyright owners of photographs in the age of social media.  

Copyright case 1: Cariou v. Prince and the fair use defense

What happened

This is a particularly well-known case, especially amongst professional photographers. Patrick Cariou published a book of classical portraits and landscape photographs he had taken while living with Rastafarians in Jamaica called “Yes Rasta.” Appropriation artist Richard Prince altered several of Cariou’s photographs and incorporated them into a series of paintings and collages he arranged. Cariou sued, alleging that Prince’s use of the photographs infringed on Cariou’s copyright in them. Prince argued that his use of the photographs was sufficiently transformative to allow him to assert the “fair use” defense.

What’s the rule?

Black’s Law Dictionary defines “fair use” as “A reasonable and limited use of a copyrighted work without the author’s permission, such as quoting from a book in a book review or using parts of it in a parody.” The Copyright Act of 1976 outlines four factors that courts must consider when evaluating whether an authorized use of a copyrighted work constitutes fair use:

  1.     The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit  educational purposes;
  2.     The nature of the 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 the value of the copyrighted work.

Why was Prince’s work considered fair use?

Prince argued that painting over the faces of the portrait subjects, using only portions of some of the images, and enlarging and/or tinting the photographs, coupled with the fact that his approach to his work, the intent behind it, and the aesthetic of his work differed significantly from Cariou, collectively, should allow him to assert the fair use defense.

The Second Circuit Court of Appeals agreed with Prince. Finding that the audiences for Prince’s work and Cariou’s work were markedly different, and that Prince had used key elements of Cariou’s work but had transformed it to the degree that Prince’s work could be considered new and different on its own, the court held that Prince’s art constituted fair use of Cariou’s photographs.

While the decision in this case was heavily criticized by commentators and other courts, it remains law in the Second Circuit, and photographers seeking to enforce their copyright(s) should always anticipate a fair use defense. Below are a few of the Carious photographs next to Prince’s use of them.

Want to know more about how fair use works?
You might be surprised to learn that the interpretation of ‘fair use’ can change from one country to another. For more information on understanding this better, have a look at our in-depth article on fair use that covers everything you need to know from one jurisdiction to another.
Can you claim fair use as a legal defence?
It depends. Our article on copyright myths also has some very practical tips when it comes to claiming ‘fair use’ as a legal defense and debunks some of the persistent myths around the topic of fair use.

Copyright case 2: Davis v. Pinterest & safe harbor protection

What happened

This is a relatively recent case, and delves into the specifics of the Digital Millennium Copyright Act (“DMCA”), and its implications for copyright holders. Harold Davis is a professional photographer who sued Pinterest for alleged copyright infringement. Davis argued that, while he has no objection to individual Pinterest users adding his photographs to their Boards for inspiration or simply because they admire them, he does object to Pinterest allowing his work to appear in close proximity or in the same feed as promoted Pins, as well as in emails and notifications to users.

Davis argued the placement of his photographs in such close proximity to promoted Pins and in such emails and notifications is an “unauthorized commercial use,” constituting direct copyright infringement.

What’s the rule?

Pinterest argues the type of use Mr. Davis is objecting to falls under the safe harbor provision of the Digital Millennium Copyright Act. Section 512(c) of the DMCA requires that, in order for a service provider like Pinterest to qualify for protection from copyright infringement claims under the safe harbor provision, it must be true that:

  1.     The service provider did not have knowledge of the infringements; and
  2.     “Must not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity…”

Why did Pinterest qualify for safe harbor protection?

The court here found that Davis failed to show Pinterest had the right and ability to control the alleged infringements, nor did he show that Pinterest received a financial benefit directly attributable to the alleged infringements. Individual users, not Pinterest, decide what images get uploaded to the website.

Further, Pinterest’s algorithms that govern how those user-uploaded images are displayed on the website are working only with the user-uploaded content that is already on the website. The fact that Pinterest receives a financial benefit from its promoted Pins that sometimes appear next to Davis’ photographs was not enough for the court to conclude that Pinterest received a direct financial benefit from the alleged infringing use of Davis’ photographs.

This case highlights the need for copyright owners to have a general understanding of the DMCA prior to initiating lawsuits concerning the presence of their work online. In light of the fact that so much of the content on websites like Pinterest is user-uploaded, most websites have created forms copyright owners can complete to alert the company to the unauthorized presence of their work and request that it be taken down. These forms are generally available at no cost, and can be an excellent tool for copyright owners to protect their work while avoiding costly litigation.

What is safe harbor protection?
The Digital Millennium Copyright Act carves out limitations on liability, or “safe harbors,” for four types of online service providers. As long as these providers cooperate with copyright owners in the event the provider is informed that there is infringing content on their service, the providers are generally not held liable for copyright infringement based on the actions of their users.
Photo by Tingey Injury Law Firm

Copyright case 3:  Hunley v. Instagram and embedding content

What happened?

Alexis Hunley and Matthew Scott Brauer are Instagram users arguing that Instagram’s “embedding” tool, in some cases, should allow them and other users to hold Instagram secondarily liable for copyright infringement. The embedding tool at issue essentially allows third parties to copy the code of an Instagram post and paste it into another third party’s website, resulting in the picture or video from the original Instagram post to be displayed on the third party website. Hunley argues:

  1.     Third parties who copy the code of an Instagram post and paste it into a third party website are committing copyright infringement; and
  2.     Instagram is secondarily liable for that copyright infringement because they allow this embedding feature which enables such infringement in the first place.

What’s the rule?

The court ultimately holds that third parties copying code from Instagram posts and pasting it into third party websites does not constitute copyright infringement. In it’s reasoning, the court points to earlier cases where it has been clarified that displaying a copy of a protected image is only a violation of the owner’s copyright if the image is “embodied (i.e. stored) in a computer’s server (or hard disk, or other storage device).”

When Instagram users post copied code into third-party websites, the copy is not being stored on their own servers or other storage devices, thus, it is not actually a “copy” of the protected work as far as the Copyright Act is concerned.

Related: What can you do when a brand takes your images on Instagram?

How to use images on social media
First, you should be aware of the copyright rules and terms of use by different social media platforms. Not every platform will be the same. The next thing to remember on social media is that you always own the copyright to your work.
Want to know more? Learn how to protect and promote your images on social media with our in-depth guide.

Why couldn’t Instagram be held secondarily liable?

Because copying the code from an Instagram post and pasting it into a third-party website does not constitute a “copy” for the purposes of the Copyright Act, there is no initial copyright infringement at issue here. The court holds that because there is no initial infringement in the first place, Instagram cannot be held secondarily liable.

The astronomical rise in pictures and videos being shared on the internet unfortunately demands constant vigilance from the authors of such content. While this ruling or any of the earlier rulings the court relied upon may ultimately be challenged and overturned, for now, unless it can be shown that code copied from an Instagram post was stored on a server or other storage device, the creator is unlikely to prevail on a copyright infringement allegation.

1. Loren, L , 'Proving Infringement: Burdens of Proof in Copyright Infringement Litigation' , 23 ( ): Lewis & Clark Law Review2019 ; 621 - 680
Fair Use, Black’s Law Dictionary (5th pocket ed. 2016)

Daniel Long

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