"It felt like ... copyright infringement"

Here's another guest post by fellow blogger and NY-based attorney Marie-Andrée Weiss (you can check out her previous guest Katpost here) on one of those tricky, sticky, United States cases in which copyright and human rights get a bit entangled.  So, here goes:

Judge Daniel, in the U.S. District Court of Colorado, recently dismissed a claim that the right of publicity of a same-sex couple had been violated when a organization used their engagement photograph on mailers supporting its anti gay-marriage agenda. The copyright infringement claim, however, survived. The case is Kristina Hill, Brian Edwards and Thomas Privitere v Public Advocate of the United States, Civil Action No. 12-cv-02550-WYD-KMT

Brian Edwards and Thomas Privitere became engaged in December 2009. They hired Kristina Hill, a professional photographer, to take their engagement pictures. They posted the pictures, with Ms Hill’s permission, on the blog they had created to share information about their upcoming wedding. One picture showed the couple facing each other, holding hands and sharing a kiss, with the New York skyline in the background.

This picture was used in 2012, with the permission of neither the couple nor the photographer, by Public Advocate, a Colorado-based organization opposing same-sex marriage, to create two mailing cards. One card, criticising Colorado Republican Senator Jean White, who had publicly supported same-sex marriage, showed a picture of the couple on the front but replacing the New York skyline with snow-covered pines trees. The caption asked “State Senator Jean White’s Idea of Family Values?” Public Advocate used the same photograph and process to create a similar card targeting another Republican Colorado Senator, Jeffrey Hare, who also supported same-sex marriage.

The couple and the photographer filed suit in April 2013 against Public Advocate and several other defendants who, they claimed, had participated in the mailing card project. The complaint asserted two counts, copyright infringement and appropriation of name or likeness. The defendants moved to dismiss the claim.

Right of Publicity and Freedom of Speech

The right of publicity is the right to prevent the commercial use of one’s identity. It is not protected by any federal law, but is protected in some U.S. states either at common law or by statute.  In order to prevail in Colorado in a claim for appropriation of name or likeness, a plaintiff must establish both that the defendant used the plaintiff’s name or likeness and that the use was for the defendant’s own purposes or benefit, commercially or otherwise. However, the plaintiff will not prevail if the defendant’s use of the plaintiff’s name and likeness is protected by the First Amendment. Here defendants claimed that their use of the photograph was protected by the First Amendment, and the judge agreed.

The Colorado Supreme Court recognizes that the First Amendment allows the likeness of someone to be used in a publication, if the matter discussed is either newsworthy or of legitimate public concern. Judge Daniel found the issue of same-sex marriage to be a matter of public concern, noting that, when the cards had been mailed, Colorado had not yet enacted its 2013 law authorizing same-sex marriage.

The purpose of the publication must be primarily non-commercial in order to be protected by the First Amendment. The court found this use to be non-commercial, reasoning that even if some of the cards’ recipients may have been thus incited to donate money, it would only be a “collateral effect.” The court thus found that the defendants’ use of the couple’s name and likeness was protected by the First Amendment, and dismissed the claim with prejudice.

No Fair Use of the Photograph

Judge Daniel however denied the defendants ‘motion to dismiss the copyright infringement claim, which will now proceed.

The defendants had argued that their use of the photograph was fair use. Section 107 of the Copyright Act allows a work protected by copyright to be used without permission for several worthy purposes, such as for comment or criticism, and cites four factors which can be used by the courts to decide, case by case, if a particular unauthorized use is fair: purpose, transformation, what is taken, and effect on the market.

The first factor directs the courts to look into the purpose and character of the use, including whether such use is for “nonprofit educational purpose.” The defendants argued that their use was fair because it was educational, as it was part of their effort to inform Colorado voters about “traditional family values.” But the court was not convinced because ‘education’ should be interpreted as referring to the type of education done in schools.

The court was not convinced either by defendant’s arguments that the use was ‘transformative.’ This is an important issue, as the Supreme Court held, in Campbell v Acuff-Rose Music, Inc. (1994, here), that “the more transformative the new work, the less will be significance of other factors, like commercialism, that may weigh against a finding of fair use.” The court noted that defendants “merely took the lifted portion and superimposed it on a mailer.” Changing the background was not sufficient to make it transformative enough to be protected by fair use.

Under the second fair use factor, the nature of the work, the more creative the work, the less likely it is that allegedly infringing use is fair. Judge Daniel found that the original work was creative and that, therefore, this factor did not play in defendants’ favour.

The third factor examines the amount and substantiality of what is taken and compares it to the copyright work as a whole. However, the qualitative nature of the taking is more important than the quantity of the taking for the courts. Here Judge Daniel found that the defendants “used the focal point, the most important portion of the photo: Edwards and Privitere holding hands and kissing,” even though that particular portion amounts for only 20% of the entire picture, so the third factor also did not play in their favour.

As for the fourth factor, the effect on the market, the judge left it for the remanding court to decide, since a decision on this issue warrants more evidence. As for the effect on the defendant’s situation, one can imagine that ‘heartbroken’ could still describe it. Sometimes it is very hard to love the First Amendment.