Gossip Magazine's Publication of Secret Wedding Photographs Is Not Fair Use: Ninth Circuit

Practical Law Legal Update 4-520-9672 (Approx. 5 pages)

Gossip Magazine's Publication of Secret Wedding Photographs Is Not Fair Use: Ninth Circuit

by PLC Intellectual Property & Technology

Key Litigated Issue

The key issue before the US Court of Appeals for the Ninth Circuit in Monge v. Maya Magazines, Inc. was whether a magazine's publication of previously unpublished photographs of a secret wedding was fair use.

Background

Noelia Lorenzo Monge and Jorge Reynoso (Monge), Latin American celebrities, secretly married in January 2007. Monge took several pictures commemorating the wedding. Monge successfully kept the marriage a secret until a former employee obtained a memory disk containing, among other things, the wedding photographs, and sold the contents of the disk to Maya Magazines, Inc., a gossip magazine publisher. Maya then published six photographs, three memorializing the ceremony and three depicting the Monges in their wedding attire, in a February 2009 issue of one of its magazines, exposing the Monges' secret marriage.

After publication of the photographs, Monge registered copyrights in five of the six pictures, and then filed a complaint against Maya asserting claims for copyright infringement, statutory misappropriation of likeness and common law misappropriation of likeness. The US District Court for the Central District of California dismissed all of Monge's claims except copyright infringement.

Both parties moved for summary judgment on Maya's assertion of the fair use defense. The district court granted summary judgment in favor of Maya. Monge appealed.

Outcome

A divided Ninth Circuit reversed and remanded, finding that the district court:

Erred in granting Maya's motion for summary judgment based on the fair use defense
Instead should have granted summary judgment for Monge on this issue.

In applying traditional analysis of the four fair use factors, the Ninth Circuit found the unpublished nature of the works relevant to several of the factors.

Purpose and Character of the Use

The court found that the purpose and character of Maya's use of the photographs did not support its claim of fair use. At the outset, the court noted that although news reporting may support a fair use determination, it is not a per se exception to copyright infringement. Therefore, the Ninth Circuit's analysis of this factor focused substantially on:

Transformation.
Commercial use.

Transformation

The court found that Maya's use of the photographs was not sufficiently transformative to weigh in favor of fair use. Specifically, the court found that arranging the photographs in a montage, with cropping and resizing and including commentary, was only marginally transformative.

The court rejected Maya's argument that publishing the photos as an exposé of the secret wedding was a transformation because the publication transformed the photographs from their original purpose of memorializing a wedding into newsworthy evidence of a secret marriage. Maya cited in support of its argument the US Court of Appeals for the First Circuit's decision in Núñez v. Caribbean Int'l News Corp. Núñez, which involved the publication of risque photographs of a Miss Universe Puerto Rico with articles discussing whether the photos made her unfit to retain the title. The Ninth Circuit distinguished Núñez because the photographs in that case were:

Themselves the story.
Not unpublished.

Commercial Use

The Ninth Circuit also noted that Maya's use of the photographs was undisputedly commercial and that every commercial use of copyrighted material is presumptively unfair.

Nature of the Copyrighted Work

For this factor, the court considered:

Whether the works were unpublished.
The extent to which the works are creative.

The unpublished nature of the photographs weighed heavily in the Ninth Circuit's decision. Noting that this is a key factor that tends to negate finding fair use, the court cited the Supreme Court's Harper & Row, Publishers, Inc. v. Nation Enterprises ruling that under ordinary circumstances an author's right to control the first public appearance of a work outweighs a fair use claim. The court did not find anything extraordinary in Monge and agreed with the district court that Maya's publication supplanted Monge's right to control the first publication of the photos.

Maya argued that since the photographs documented an event, they are factual in nature. The court rejected this argument, noting that:

A photograph does not turn a pictorial representation into a factual recitation just because it documents an event.
The Ninth Circuit has recognized that individual photographs merit copyright protection.

Amount and Substantiality of the Portion Used

Since Maya published the copyrighted photographs in their entirety, the court determined that this factor also weighed in Monge's favor and against fair use. The district court minimized Maya's use of the copyrighted works because it used only five of 400 photographs of the wedding. The Ninth circuit disagreed with this reasoning and considered each individual photograph as a separate work with an independent economic value.

Effect on the Potential Market

The Ninth Circuit also placed great weight on how Maya's use affected the potential market for or value of Monge's copyrighted work.

Maya argued that no potential market for the pictures existed because Monge never intended to sell the photographs' publication rights. Although the district court agreed with Maya, the Ninth Circuit did not. Instead, it noted that an actual market exists for the photographs as evidenced by:

The fact that the couple is in the business of selling images of themselves.
Maya paid for prior photographs and the photographs themselves.
Maya features pictures of other celebrity weddings.

The Ninth Circuit then concluded that Maya's unauthorized publication of the photographs:

Substantially harmed this potential market because after the initial publication nobody was likely to purchase the pictures from Monge.
Functioned as a market replacement for the photographs.

Dissent

Circuit Judge Smith dissented from the majority opinion about the three wedding images. Regarding photographs that did not directly prove the wedding, he noted that these may have been unnecessary to the story and would remand to the district court.

Specifically, Judge Smith found that:

Monge's use of the photographs was transformative because:
- the editing, arrangement and commentary Maya included in the photo montage added to the original character of the images; and
- Maya's use of the photographs was for a fundamentally different purpose than the purpose for which Monge originally took the pictures.
The photographs were factual and documentary, so the nature of the copyrighted work factor was neutral or weighed in favor of fair use.
Treating the memory disk with 400 photos and a video as a compilation, the amount and substantiality of the use was minimal because Maya carefully selected and used only five copyrighted images.
On the market harm factor, Monge's intention never to publish the photographs weighs in favor of fair use.

Practical Implications

The court's decision is noteworthy for its determination that the newsworthiness alone was not sufficient to support a finding of fair use in a case involving publication of unpublished photographs since the defendant:

Did not sufficiently transform the photographs.
Published the photographs for a commercial purpose.
Adversely impacted the potential market for the photographs.

The fact-specific nature of the fair use analysis is also highlighted in particular by:

The split decision.
The nuanced analysis distinguishing Núñez.

The Ninth Circuit's focus on Monge's intentionally secret wedding may suggest that privacy concerns factored into the court's analysis.

Gossip Magazine's Publication of Secret Wedding Photographs Is Not Fair Use: Ninth Circuit | Practical Law