Copyright Risks of Posting a “Non-Selfie”

by Scott M. Hervey
The IP Law Blog

With the proliferation of social media and the ready access to images on the Internet and on any number of platforms, it’s just so easy to copy an image or video that moves you and post it on your social media accounts.  Easy to imagine how this can happen.  However, it’s important to remember that just because an image is posted on the internet or on a social platform doesn’t mean one can copy it and post it as your own.  Over the past two years, Justin Bieber, Emily Ratajkowski, Katy Perry, Gigi Hadid, Khloe Kardashian, LeBron James, Deshaun Watson and others have found themselves being named in lawsuits for copyright infringement arising out of just that; posting a photo of themselves on their social media accounts where the photo was taken by someone else.  While the majority of these cases settle, a few celebrities have decided to fight back.

In 2019 model and actress Emily Ratajkowski was sued over one of her Instagram stories featuring a photo of her that was taken by a paparazzi.  The photo showed her holding a vase of flowers covering her face while she was walking in NYC.  In October 2019, she filed a motion for summary judgement, attacking the plaintiff and his counsel, Richard Liebowitz, claiming that they “have brought this case in bad faith, attempting to turn a critical internet post that was available for only 24 hours into an unsubstantiated payday”, and raising a potentially viable defense – fair use.

The factors a court considers when determining whether a work is fair use are:

  1. the purpose and character of the use, including whether such use is transformative, 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;
  4. and the effect of the use upon the potential market for or value of the copyrighted work.

The purpose of this factor is to test whether the allegedly infringing work is “transformative”. A work is transformative when it adds something new to the work allegedly infringed, with a further purpose or different character, altering the original work with new expression, meaning, or message. A work is transformative if it does something more than repackage or republish the original copyrighted work. A transformative work is one that serves a new and different function from the original work and is not a substitute for it. As the Supreme Court noted in Campbell v. Acuff-Rose Music, Inc., “the more transformative the new work, the less will be the significance of other factors, … that may weigh against a finding of fair use.”

Ms. Ratajkowski contended that the modification she made to the image – adding the caption “mood forever” superimposed over the photo caused her Instagram post to be transformative.  She claimed that it created a new meaning and purpose by adding the caption which commented on Ms. Ratajkowski’s experience with constant paparazzi attention.  She further contended that her use was non-commercial, as Ms. Ratajkowski did not profit from the post in any way,

This is not the first time fair use has been used in these circumstances.  Artist Richard Prince (who is referred to as an “appropriation artist”) regularly relies on fair use to support his use of images created by others as a base element in his works.  Mr. Prince received a favorable ruling by the Second Circuit in Cariou v. Prince, 714 F. 3d 694 (2d Cir. 2013) which involved his “Canal Zone” art installation in which he used images from Cariou’s photography book on Rastafarians in creating collages and superimposing items like guitars over Cariou’s images.   Prince is presently relying on fair use as a defense to a number of lawsuits stemming out of his “New Portraits” art installation in which he printed various Instagram photos on large canvases and merely added his own Instagram style comments below them.

And then there is LeBron James who was sued by photographer Steven Mitchell over LeBron’s posting on Facebook an image taken by Mitchell showing James dunking against his former team, the Miami Heat.  James recently filed a counterclaim alleging that the photographer violated his right of publicity in using the image on the photographer’s website to advertise his services.  In his suit, LeBron claims that he never licensed or otherwise permitted the use of his image or likeness to Mitchell, and that the Mitchell exploited James’ image and likeness to promote his photography services.

James’ claim highlights the tension that sometimes occurs between an individual’s right of publicity – a right under state law – and First Amendment protected speech.  In California, the test used to evaluate a First Amendment affirmative defense to a right of publicity claim is to evaluate the “transformative use” of the new work. This test was formulated by the California Supreme Court in Comedy III Productions, Inc. v. Gary Saderup, Inc. which involved a charcoal sketch-work of The Three Stooges reproduced on lithographs and T-shirts. The “transformative use” test is a balancing of the defendant’s First Amendment rights and the plaintiff’s right of publicity. The Supreme Court explained that where a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity.

In analyzing Comedy III, the 9th Circuit in Keller v. Electronic Arts explained that the test is comprised of “at least five factors to consider in determining whether a work is significantly transformative to obtain First Amendment protection.” These factors are as follows:

(i) is the celebrity likeness one of the “raw materials” from which an original work is synthesized, or is the depiction of the celebrity the very sum and substance of the work;

(ii) is the work primarily the defendant’s own expression or merely an expression of the likeness of the celebrity. This factor is determined by looking at whether a purchaser of the work is motivated to buy a reproduction of the celebrity or buy the expressive work of the defendant;

(iii) which elements predominate in the work? The literal and imitative reflection of the celebrity or the defendant’s creative elements;

(iv) in close cases, is the economic value of the work derived primarily from the fame of the celebrity depicted; and

(v) is the defendant’s skill and talent “manifestly subordinated” to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame.

While the first of these factors tends to favor LeBron’s counterclaim – the depiction of LeBron is the very sum and substance of the work – the other factors are not so clearly in his favor. As to the second and third factors, Mitchell’s creativity in capturing a moment in time that is particularly noteworthy – a massive dunk on LeBron’s former teammates – is seemingly the dominant focus and key element of the photograph.   As for the fourth and fifth factor, this image is not just a conventional portrait of Lebron; its economic value is derived from what it captures and not just the fame of Lebron.

Notwithstanding the above, it is still no slam dunk for Mitchell.  The California Court of Appeals decision in No Doubt v. Activision Publishing, Inc., which was followed by the Ninth Circuit in Keller v. Electronic Arts, may very well help LeBron close out Mitchell.  This case addressed a claim by the members of No Doubt that the use of certain look-alike avatars in the Band Hero video game that simulate performing in a rock band violated their right of publicity.   The court held that No Doubt’s right of publicity claim prevailed over Activision’s First Amendment defense; the court concluded that the video game was not “transformative” under the holding of Comedy III. Specifically, the court reasoned that the video game characters were “literal recreations of the band members” doing “the same activity by which the band members achieved and maintain fame.” The fact that the avatars “appear in the context of a video game that contains many other creative elements…does not transform the avatars into anything other than exact depictions of No Doubt’s members doing exactly what they do as celebrities.”  Taking the court’s analysis in No Doubt into consideration, LeBron’s counterclaim against Mitchell may very well be a jump ball.