The Complexity Of Fair Use

Contributing Authors: Daniel Rozansky and Jeremy Beutler

The United States Court of Appeals for the Ninth Circuit reversed a 2019 federal district court’s ruling that a French court’s judgment pertaining to a lawsuit involving copyrighted photos of Pablo Picasso’s art was unenforceable under U.S. law. The case is notable for the very different conclusions two U.S. courts—the United States District Court for the Northern District of California and Ninth Circuit Court of Appeals—reached regarding the copyright fair use defense, and it exemplifies the often-complex task of evaluating each of the fair use factors.

According to the Court of Appeals’ decision in De Fontbrune v. Wofsy, the defendants published a series of books in 1991 about the works of Pablo Picasso. The defendants’ books featured a number of plaintiffs’ copyrighted photographs that plaintiffs had previously published in a book that catalogued the complete works of Picasso. The parties commenced a protracted and complex legal battle in France that resulted in a decision from a French court that held the defendants liable for copyright infringement. The French court ultimately awarded the plaintiffs damages of €2 million.

While an appeal of the case was pending in French courts, the plaintiffs brought suit in the United States seeking assistance from U.S. courts to recover the €2 million award from the defendants who were residing in California.

In the U.S. proceedings, defendants challenged the French court’s decision on numerous grounds, the most notable of which was that the French judgment was repugnant to the United State’s public policy protecting free expression. The defendants argued that the fair use doctrine under copyright law—a feature that does not exist in France’s copyright scheme—would have protected the defendants’ use of the photographs. Because the French court’s judgment ran counter to U.S. law, the defendants argued, the judgment should not be enforced in the U.S.

The district court agreed with the defendants and held that the defendants’ use of the plaintiffs’ photographs qualified as fair use under copyright law. As such, the district court declined to recognize and enforce the French court’s judgment. The Ninth Circuit, however, reversed, concluding that the defendants’ use of the photographs did not qualify for fair use and remanded the case to the district court to resolve factual disputes concerning the defendants’ other defenses.

The copyright fair use doctrine is intended to balance copyright laws’ prohibition on copying with the First Amendment’s interest in free expression. Application of the fair use doctrine involves weighing four factors: (i) the purpose and character of use; (ii) the nature of the copyrighted work; (iii) the amount and substantiality of the portion used; and (iv) the effect on potential market or value.

Here is more information on the four factors and what the district court and Court of Appeals had to say about each of them:

Purpose and Character of Use

The first factor is often considered the most important and often colors courts’ analysis of the other three factors. Under this factor, courts consider the way in which the party claiming fair use used the copyrighted work and whether the use is “transformative.” A use is considered “transformative” when the copyrighted work is used for a new purpose or has a different meaning or message from the original work. For example, when a work is used for educational or news reporting purposes, a court is more likely to consider the use fair. Commercial uses, however, typically weigh against fair use.

In this case, the district court found the fact that the defendants’ books were intended for libraries, academic institutions, art collectors, and auction houses was evidence that the purpose of the books was closely aligned with criticism, teaching, scholarship, and research purposes—purposes that are explicitly identified under copyright law as fair use.

The Court of Appeals, however, strongly disagreed and characterized the defendants’ use of the photographs as mere “reproductions of copyrighted photographs in a book offered for sale.” Because the defendants’ use of the photographs was commercial, this weighed against fair use. Moreover, the Court of Appeals observed, the use was not transformative because the photographs were published by the defendants for the same reason that the plaintiffs originally published the photographs: both were used in books about the works of Picasso. As such, the Court of Appeals concluded that the first factor weighed against fair use.

Nature of the Copyrighted Work

Because copyright law is intended to protect, at its core, creative expression, the second factor takes into consideration the extent to which a work is creative as opposed to factual in nature. The use of works that go to the core of copyright protection (such as poems, novels, and musical works) is less likely to be considered fair, whereas the use of factual works (such as news reporting or scientific works) is more likely to be considered fair.

The district court and Court of Appeals both acknowledged that the photographs were somewhat documentary in nature. The photographs were intended to show Picasso’s underlying works and were somewhat factual. Yet, both courts also relied on the French court’s observation that the photographs contained at least some creative elements. The photographer made deliberate choices with respect to the lighting, lens, filters and framing of each photograph. The district court and Court of Appeals reached similar, though not identical, conclusions based on this reasoning. The district court found that this factor weighed “slightly away from finding fair use,” while the Court of Appeals concluded that the photographs’ creative qualities prevented this factor from “weighing heavily, if at all, in favor of fair use.”

Amount and Substantiality of the Portion Used

With this factor, less is more. The smaller amount of allegedly infringing material that is used, the more likely the use will be considered fair. Think of this factor as a division equation: the smaller the numerator as compared to the denominator, the more likely the use will be considered fair.

In this case, the district court and Court of Appeals diverged with respect to the universe of works that should be in the denominator of this equation. The district court noted that plaintiffs’ book featured about 16,000 photographs, and the defendants copied only 1,492 photographs—less than ten percent of plaintiffs’ works. The Court of Appeals, however, considered each photograph by itself and found that defendant copied the 1,492 photographs each in its entirety—in other words, 100% of each photograph was copied. Although the Court of Appeals acknowledged that copying of an entire work can qualify for fair use if the copying is transformative, the copying of an entire work for commercial purposes—and without using the work in a transformative way—weighed against fair use.

Effect on Potential Market or Value

This factor relates to whether the alleged infringement will negatively affect the market for the original work. Notably, the first factor impacts the analysis under this factor: if an allegedly infringing use is both commercial and non-transformative, courts presume that there has been market harm.

In determining that this factor weighed in favor of fair use, the district court relied, in part, on the fact that plaintiffs’ book had increased in value during the time defendants’ series of books were on the market. This, according to the district court, indicated that defendants’ books had no impact on the market for plaintiffs’ book.

The Court of Appeals rejected this analysis, finding that the market for the parties’ books was not the relevant market to consider; rather, because the individual photographs were at issue (not the parties’ complete books), the relevant market was the licensing mark for the disputed photographs. Without evidence of how the photograph licensing market was impacted, the Court of Appeals was left to rely on the presumption of market harm because the defendants’ use was commercial and non-transformative. As such, this factor weighed against fair use.

The merits of a fair use defense can often be difficult to predict, partly because of the divergent way courts can approach each of the four fair use factors. This makes relying on the fair use defense an uncertain exercise for authors, filmmakers, and other creatives who may seek to use or build upon the works of others in creating their own creative works.

It will be interesting to watch the De Fontbrune case as the parties either seek to appeal the case to the Supreme Court or litigate the matter further on remand at the district court.

When reached for comment, Neil Popović, a representative for Wofsy and Alan Wofsy & Associates, stated the following:

We are continuing to review the Ninth Circuit’s opinion to determine whether there are grounds to seek rehearing, rehearing en banc or certiorari. Among other things, the Court’s fair use analysis gives short shrift to some important facts, including the nature of the photographs, that the Succession Picasso had authorized Wofsy to use them, and the public interest in reference works such as The Picasso Project.

Notably, the opinion recognizes that the underlying French astreinte proceeding was not properly served on Wofsy, and the Court of Appeals provided a roadmap to pursue the lack of notice defense if the case ends up back in the district court.

The Court of Appeals also left room for Wofsy to pursue a defense based on fraud, recognizing that de Fontbrune misrepresented to the French court that he owned the relevant intellectual property rights at the time he initiated the astreinte case in France.

Legal Entertainment has reached out to representation for comment and will update this story as necessary.

Daniel Rozansky is a Partner at Stubbs Alderton & Markiles LLP in Los Angeles. He practices in the areas of entertainment, intellectual property and business litigation, and represents clients across multiple platforms including film, television, music, concerts and touring, and digital media. He regularly reviews television pilots, screenplays and other material in development to assist those clients in identifying and avoiding potential liabilities.

Jeremy Beutler is an Associate at Stubbs Alderton & Markiles LLP. He advises clients on trademark and brand management issues and represents clients in trademark matters in federal court and before the Trademark Trial and Appeal Board. His practice also focuses on cybersecurity and data privacy issues.