©2013. Published in Landslide, Vol. 5, No. 5, May/June 2013, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
What if David Petraeus denied that he had an extra marital affair with Paula Broadwell? And what if a third party gained access to e-mails between them proving the existence of the affair? Could either Petraeus or Broadwell use the copyright laws to prevent their publication? A recent 2-1 decision of the U.S. Court of Appeals for the Ninth Circuit, Monge v. Maya Magazines, Inc.,1 suggests they could
The Cast, Set, and Drama
Monge involved a matter that, while of no importance to national security, was newsworthy to millions: the secret marriage of two Spanish-TV soap opera stars. In 2007, Noelia Lorenzo Monge and Jorge Reynoso (the couple) were married in Las Vegas. In order to maintain their privacy, as well as Monge’s image as a young, single pop singer, the couple went to great lengths to keep their marriage a secret—even from their own families.
In 2008, the couple’s part-time driver and bodyguard found a memory chip containing hundreds of photos of the couple. It included three taken at the wedding itself and three taken later that evening at their hotel. Without the permission of Monge and Reynoso, he sold the entire memory chip to the defendant publisher, which made the most of its investment. The cover of Issue 633 of its magazine TVNotas bore the headline “The Secret Wedding of Noelia and Jorge Reynoso in Las Vegas” over three of the six photos. A two-page spread inside the magazine reproduced all six photos.
Monge and Reynoso obtained assignments from the photographers, registered copyrights in five of the photos, and sued the publisher for copyright infringement. The district court granted summary judgment in favor of the defendant on the ground of fair use.
The sole issue addressed by the appeals court was the analysis and weighing of the four statutory fair use factors found in § 107 of the Copyright Act: (1) the purpose and character of the defendant’s use, (2) the nature of the copyrighted work, (3) the proportion of the plaintiff’s work used by the defendant, and (4) the effect of the defendant’s use upon the potential market for or value of the plaintiff’s work.2 Holding that “[w]aving the news reporting flag is not a get out of jail free card,” Judges McKeown and Brewster3 held that the fair use defense failed as a matter of law and reversed the judgment outright, finding the defendant liable for copyright infringement and remanding on the issue of damages.4
According to the majority, the plaintiffs prevailed on all four factors. While the “purpose of the use” concededly was news reporting, a classic basis for fair use, the court found that the use was nontransformational and commercial in nature, so that on balance this factor was neutral. As to the “nature of the work,” the court focused exclusively on the fact that the photos were unpublished. In the court’s view, this created a “presumption” of fair use that was not overcome by any “extraordinary circumstances.” On the “proportion of plaintiff’s work” factor, the court viewed each published photo as a separate work and held that, in each case, the entirety of the work was used. On the “effect on potential market” factor, the court held that the plaintiffs’ stated intention never to publish the photos of the secret wedding—which would suggest that no market harm had been done—was not dispositive because the defendant’s publication deprived the plaintiffs of the potential market value of the photos. “Simply because the works were yet unpublished did not give Maya a license to pull the trigger and blow the couple’s cover,” said the court,5 finding in the plaintiffs’ favor on this factor.
Judge Smith, dissenting, seemed astonished at the majority’s willingness to allow a celebrity to use the copyright law “to control his image and works in the media—even if that celebrity has publicly controverted the very subject matter of the works at issue.”6 He disagreed with the majority on virtually every element of the fair use analysis, and expressed alarm over the prospect that public figures might “hide behind the cloak of copyright to prevent the news media from exposing their fallacies.”7
Nature of the Work
The defense of fair use, acknowledged by the court to be “the most troublesome in the whole law of copyright,”8 is especially difficult where the plaintiff’s work was previously unpublished. In Harper & Row Publishers, Inc. v. Nation Enterprises, in which the defendant “scooped” the plaintiff by publishing excerpts of Gerald Ford’s autobiography prior to the publication by the plaintiff’s own licensee, the Supreme Court held that “under ordinary circumstances, the author’s right to control the first public appearance of his undisseminated expression will outweigh a claim of fair use.”9 The Second Circuit thereafter went further in cases involving biographies of J.D. Salinger10 and L. Ron Hubbard,11 which were seen to have imposed a “virtual per se rule”12 prohibiting a finding of fair use where unpublished works were involved. In response, Congress amended § 107 in 1992, expressly providing that the unpublished status of a work “shall not itself bar a finding of fair use” if all other factors are considered.
In Monge, the Ninth Circuit characterized Harper & Row as stating a “presumption against prepublication fair use” that required “extraordinary circumstances” to overcome.13 Harper & Row did not go quite that far and did not frame the issue in terms of a “presumption.” But it unquestionably put a high value on the “threshold decision by the author whether and in what form to release his work,” and sought to prevent damage to the author from “judicially enforced ‘sharing’ of the first publication right with unauthorized users.14 This is the interest that the Ninth Circuit sought to protect in Monge.
But as Justice Brennan pointed out in his Harper & Row dissent, the true copyright interest is in protecting “undisseminated expression.” He stressed that copyright protection extends “to an author’s literary form but permits free use by others of the ideas and information the author communicates.”15 The same point was made by Judge Van Graafeiland of the Second Circuit, concurring in Wright v. Warner Books, Inc., which held that the use of unpublished excerpts from Richard Wright’s diaries in a biography constituted fair use: “It is more important to determine whether the pertinent portions of an author’s work constituted facts, ideas or expression than whether they were published.”16
By focusing solely on the unpublished status of the photos, the Ninth Circuit addressed only one-half of the “nature of the work” factor. It did not address “the extent to which it is a creative work enjoying broader copyright protection as opposed to a factual work requiring broader dissemination.”17 While photography is an art form, the “nature” of the works in Monge was informational, not artistic.
Other cases involving newsworthy photographs have reached this conclusion. For example, in L.A. News Service v. CBS Broadcasting, Inc., the nature of the videotape of the Reginald Denny beating was found to be “informational and factual and news,” notwithstanding the photographer’s “skills with a camera.”18 Similarly, in Núñez v. Caribbean International News Corp., which involved risqué photos of a Miss Universe Puerto Rico, the model photographs at issue “were not artistic representations designed primarily to express Núñez’s ideas, emotions, or feelings, but instead a publicity attempt to highlight [the photo subject’s] abilities as a model.”19
The Ninth Circuit has made clear that where a copyrighted work is “informational and factual and news[,] each characteristic strongly favors [a finding of fair use].”20 Yet the majority in Monge gave no real consideration to this factor, despite its acknowledgement that the photos were “point-and-shoot” and thus “not highly artistic in nature.”21
Thus, protecting the privilege of first publication in this case served only a privacy interest—to allow the plaintiffs to continue to deny publicly what was in fact true. It is submitted that this is not a copyright interest that should influence the “nature of the work” analysis. Copyrights are granted to “promote the Progress of Science and useful Arts,” not to protect private facts.22 As Judge Smith pointed out in his dissent, this case is different from Harper & Row, in part, because President Ford “had never concealed or controverted the facts at issue in the infringing excerpts.”23
Purpose of the Use
The newsworthy nature of the photos also drives the analysis of the “purpose of the use” factor. Since the Supreme Court’s decision in Campbell v. Acuff-Rose Music, Inc.,24 determination of this factor has turned primarily on the extent to which the defendant’s use is “transformative”—that is, whether the new use “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.”25 In Monge, the majority found nothing transformative about the defendant’s use. The majority’s conclusion was based only in part on the relative lack of physical or creative transformation in the magazine’s montage of the photos. Its main thrust was rejection of the defendant’s argument that it had “transformed the photos from their original purpose—images of a wedding night—into newsworthy evidence of a clandestine marriage.”26 The majority held that the putative infringer’s new and different purpose “does not necessarily create new aesthetics or a new work that ‘alter[s] the first [work] with new expression, meaning or message.’”27
In doing so, the majority distinguished Núñez. There, said the court, the main issue was the salacious photos themselves—“the pictures were the story.”28 Here, the controversy involved a wedding, not wedding photos. While acknowledging that the defendant had the right to use any factual information revealed through the photos, the court said that it could not “bodily appropriate [the couple’s] expression of that information by utilizing portions of the actual [photos].”29 The defendant could just as easily have proven the existence of the marriage by showing a picture of the marriage certificate, said the court. In short, merely using the photos in a journalistic context is not transformation per se. There must be some transformation of the aesthetic or creative nature of the underlying work itself.
The dissent accused the majority of ignoring the larger context of the defendant’s use. The plaintiffs had admitted that the photos were kept secret for the couple’s commercial gain, and had expressly and repeatedly denied rumors and media speculation about a clandestine wedding. Thus, the exposé served a purpose entirely contrary to the couple’s initial intent to record and conceal their Las Vegas wedding. The different purpose of the use supported a finding of transformativeness, even if the work itself was not physically transformed.
Unfortunately for the defendant, there is little precedent for finding “transformation” merely due to repurposing of an entire work. The dissent cited to no case law other than Núñez, relying primarily on a single phrase from Judge Leval’s seminal article, “Toward a Fair Use Standard”: “Transformative uses may include criticizing the quoted work, exposing the character of the original author, proving a fact, or summarizing an idea argued in order to defend or rebut it.”30
The dissent stood on firmer ground when discussing the “newsworthiness” aspect of the “purpose of the use” factor. It distinguished Harper & Row on two critical points. First, the defendant’s actions there were taken for the purpose of “scooping” a competitor on soon-to-be published facts. Second, President Ford had never concealed or controverted the facts disclosed in the excerpts. In other words, while the content of the defendant’s publication in that case was newsworthy, news reporting was not the true purpose of the defendant’s use of the copyrighted material. In Monge, it was. By publishing the photographs, the defendant “proved not only [the plaintiffs’] marriage, but when, where, and how it took place, and for how long the Couple had hidden the truth.”31
This led to the policy-driven nub of the dissent’s position: attacking the majority’s view that unauthorized publication of works created for private use cannot constitute fair use. To do so, said the dissent, would have allowed Tiger Woods to block publication of his “sexting” messages and Anthony Weiner to block distribution of his infamous self-portraits. Summarizing this position, Judge Smith wrote: “The implications of this analysis undermine the free press and eviscerate the principles upon which copyright was founded. Although newsworthiness alone is insufficient to invoke fair use, public figures should not be able to hide behind the cloak of copyright to prevent the news media from exposing their fallacies.”32
The majority characterized this “doomsday prediction about the impact of our decision on investigative journalism” as “overblown,” relying on the inarguable proposition that there is no “general newsworthiness exception” to the copyright laws.33
Of course there is no license for news organizations to purloin copyrighted works and use them for the same purpose for which they were created, e.g., copying a newsreel created by a commercial service that earns revenue from selling its newsreels.34 But the newsworthiness in Monge arose not from the fact of the marriage itself but from the exposure of what the owners of the copyrighted work chose to conceal. The photos delivered proof of the secret marriage in a graphic form that a mere retelling—or even a photo of a marriage certificate, the authenticity of which could be doubted—could not. Whether or not this is deemed a “transformative” use, there should be no doubt that the “purpose and character” of this use was precisely the sort of “news reporting” that the statute identifies as a basis for fair use.35
Should Copyright Be Used in This Manner?
It is hard not to see some cultural bias in the majority’s decision.36 The exposure of the secret marriage of soap opera stars by a fan magazine is not the stuff that normally inspires ringing defenses of the importance of a free press. But it should. Imagine a case with exactly the same facts, except for two differences. First, the photos documented the secret same-sex marriage of a gay-bashing congressman. Second, the photos were published in the New York Times. Would anyone take the congressman’s copyright infringement claim seriously? Before Monge, probably not. Now, it’s not so certain—at least in the Ninth Circuit.
The constitutional policy behind copyrights is (1) the reward of authors (2) “to promote the Progress of Science and useful Arts.”37 It is fair to ask how this decision advances either part of that objective. On the first point, nothing about this case implicates the reward of authors for their creativity. Those who took the pictures did so for an entirely private purpose. Failing to reward them, or their assignees, would not create even a theoretical disincentive to the creation of photographs in the future.
On the second point, the majority gave more weight to the couple’s free exercise of their right of first publication—as if they were true authors entitled to nurture the development of their original creative work—than to their avowed purpose to conceal and continue to mislead the public about their wedding. The lawsuit was brought solely to impair the ability to expose their deception. It is difficult to see how such a claim advances any copyright interest, or indeed any public benefit at all.
Will those who manage the public images of political and entertainment celebrities now add copyright threats to their arsenal of weapons for protecting their clients’ secrets? This decision opens the door to this tactic. A spate of such lawsuits would only encourage the misguided suspicion among some that copyright is a system that suppresses rather than expands knowledge. Those who normally cheer expanded protection for copyrighted works should view this particular instance of protection with some trepidation.
1. 688 F.3d 1164 (9th Cir. 2012).
2. 17 U.S.C. § 107.
3. Rudi M. Brewster, Senior District Judge for the Southern District of California, sat by designation.
4. Monge, 688 F.3d at 1183–84.
6. Id. at 1184 (Smith, J., dissenting).
8. Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661, 662 (2d Cir. 1939).
9. 471 U.S. 539, 555 (1985).
10. Salinger v. Random House, Inc., 811 F.2d 90, 99–100 (2d Cir. 1987).
11. New Era Publ’ns Int’l v. Henry Holt & Co., 873 F.2d 576, 583 (2d Cir. 1989).
12. S. Rep. No. 102-141, at 5–6 (1991).
13. Monge, 688 F.3d at 1178.
14. Harper & Row, 471 U.S. at 553.
15. Id. at 581 (Brennan, J., dissenting).
16. 953 F.2d 731, 743 (2d Cir. 1991) (Van Graafeiland, J., concurring).
17. Núñez v. Caribbean Int’l News Corp., 235 F.3d 18, 23 (1st Cir. 2000).
18. 305 F.3d 924, 939–40 (9th Cir. 2002), amended by 313 F.3d 1093 (9th Cir. 2002).
19. Núñez, 235 F.3d at 23.
20. L.A. News, 305 F.3d at 940. To the same effect is Narell v. Freeman, 872 F.2d 907, 914 (9th Cir. 1989) (“The scope of permissible fair use is greater with an informational work than a creative work”), quoted in the dissent. See Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1189 (9th Cir. 2012) (Smith, J., dissenting).
21. Id. at 1177 (majority opinion).
22. U.S. Const. art. I, § 8, cl. 8.
23. Monge, 688 F.3d at 1187 (Smith, J., dissenting) (emphasis added).
24. 510 U.S. 569 (1994).
25. Id. at 579.
26. Monge, 688 F.3d at 1175.
27. Id. at 1176 (alterations in original) (quoting Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998)).
28. Id. at 1175 (quoting Núñez v. Caribbean Int’l News Corp., 235 F.3d 18, 22 (1st Cir. 2000)).
29. Id. (alterations in original) (quoting and paraphrasing Iowa State Univ. Research Found., Inc. v. Am. Broad. Cos., Inc., 621 F.2d 57, 61 (2d Cir. 1980)).
30. Id. at 1187 (Smith, J., dissenting) (citing Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990) (emphasis added)).
32. Id. at 1184.
33. Id. at 1176 (majority opinion).
34. See, e.g., L.A. News Serv. v. Reuters Television Int’l, Ltd., 149 F.3d 987 (9th Cir. 1998); L.A. News Serv. v. KCAL-TV Channel 9, 108 F.3d 1119 (9th Cir. 1997). Both cases involved the broadcasting, with little alteration, of the Rodney King video.
35. 17 U.S.C. § 107.
36. The majority’s opinion began by saying that the appeal “reads like a telenovela,” and bemusedly divided the recitation of the facts into “The Cast,” “The Set,” and “The Drama.” Monge, 688 F.3d at 1168–70.
37. U.S. Const. art. I, § 8, cl. 8.