Copyright, Fair Use & Orphan Works: Legal Conundrums in the Use & Misappropriation of Photographs and Visual Images

Posted by Mickey H. Osterreicher — 24 Jun 2013

The following article written by Mickey H. Osterreicher published in the May 2013 MediaLawLetter is used with permission of the Media Law Resource Center (MLRC).  
© 2013 Media Law Resource Center, Inc. All rights reserved.

Copyright is, at its most basic, a property right, that must be assertively protected in order to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (1)

There has always been tension between the exclusive rights granted by copyright law(2) to an author of a creative work and those who believe they have a concomitant right to use such work under the "fair use" doctrine.(3) There is also much disagreement over whether fair use is a right, a limitation or exception to copyright law, or a defense that may be asserted by a defendant in a copyright infringement lawsuit. Compounding this historically vexing issue is a concern over the use of copyrighted works where the author cannot be determined or found, otherwise known as "orphan works." Nowhere are these conundrums more profound than in the use and misappropriation of photographs.

The exponential proliferation of visual images on the Internet has only exacerbated this confusing situation. According to reports, 20 million photographs are viewed on the Internet every minute.(4) Compounding that mind boggling number is the very prevalent belief that the Web is the "public domain."(5) As others know the public domain is not a place but rather a legal term pertaining to a work that is no longer under copyright protection. While works in the public domain may be used freely without the permission of the former copyright owner(6) far too many users believe that if a photograph is posted on the Internet it is there for their use without permission, credit or compensation and any such use is "fair." 

As stated by the U.S. Copyright Office (the Office), "the distinction between what is fair use and what is infringement in a particular case will not always be clear or easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission."(7) What makes photographs so unique is that rarely are they used except in their entirety. 

Orphan Works
The Office has also articulated the concerns of some in the copyright community regarding "the uncertainty surrounding the ownership status of orphan works"(8) by stating such ambiguity "does not serve the objectives of the copyright system."(9) But there is a countervailing concern that in seeking to address the frustration of "good faith users" of Orphan Works in order to cure their potential liability and "gridlock in the digital marketplace," a far more serious problem comes into play for recently created visual works that, for whatever reason, appear to be orphaned when, in fact, they are not. 

That is because within seconds of its creation an image may be downloaded and re-posted becoming "viral" in short order.(10) Many applications and websites strip identifying information, known as metadata from digital images when they are uploaded, preventing good-faith users (one who had made a "reasonably diligent effort to find the owner") from identifying the rights holder or being able to legally license the work. Under increased competition some users publish photos without permission under the business model: "use first, beg for forgiveness later." As part of that cost/benefit analysis, publications weigh the probability of discovery and resulting litigation against the time and cost involved in obtaining prior permission and licensing.

Such legislation, limiting existing recovery rights may create unintended harm to photographers that would far exceed any social benefit derived, particularly without any definitions or other requirements for satisfying a "reasonably diligent search." This problem is illustrated best in the resulting furor(11) by photographers over the recently passed Enterprise and Regulatory Reform Act 2013(12)

For authors, copyright is not just about receiving compensation for use. Copyright also protects them from having their work used in ways they do not approve and in ways that they never intended. This is particularly true for photographers. Subjects depicted in a photograph may have only consented to being photographed for certain purposes. Unauthorized use of photographs, therefore, effects more than just photographers.(13)

Another important consideration under copyright law and the First Amendment is the right to not publish or speak. There are many situations in which a visual work was created solely for private use and was never intended for public consumption. Due to the insidious nature of the Internet, many images so created have found their way there without any identifying information.

Fair Use
In a number of postings many organizations including libraries and documentary film makers who advocated vociferously for the Sean Bentley Orphan Works Act of 2008(14) now take the position that Orphan Works legislation is no longer necessary. Instead, they assert "fair use" offers the protection they seek. They also state that any legislative remedies should be a minimal, "one sentence amendment to 17 U.S.C. § 504(c)(2) that grants courts the discretion to reduce or remit statutory damages if the user conducted a reasonably diligent search prior to the use."(15) They justify these proposals by explaining that "these uses would significantly benefit the public without harming the copyright owner"(16)

One online publication asserts that "transformativeness"(17) should be used rather than rely on the four factors traditionally used by the courts in making a fair use determination (those factors being: the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of the use upon the potential market for, or value of, the copyrighted work. But no single factor is determinative. "All are to be explored, and the results weighed together, in light of the purpose of copyright."(18)  The American University School of Communications Center for Social Media defines that term in this way: 

• Did the unlicensed use "transform" the material taken from the copyrighted work by using it for a different purpose than that of the original, or did it just repeat the work for the same intent and value as the original?(19)
• Was the material taken appropriate in kind and amount, considering the nature of the copyrighted work and of the use?(20)
They also go on to state that one way to mitigate a copyright claim under fair use is by a good faith showing in providing "credit or attribution, where possible, to the owners of the material being used."(221) Unfortunately such advise runs diametrically opposite of the statement by the Office that "acknowledging the source of the copyrighted material does not substitute for obtaining permission."(22)

Court rulings in some recent cases may support the transformative argument but once again it is crucial to remember that even slight changes in fact patterns may result in different outcomes. In Associated Press v Meltwater,(23) the defendant asserted the affirmative defense of transformative fair use in their appropriation of copyright-protected material from the plaintiff for a new purpose. Despite the court's assumption for purposes of its opinion that Internet search engines are a transformative use of copyrighted work, it still held that Meltwater engaged in copyright infringement and that its copying was "not protected by the fair use doctrine."(24) In rendering its opinion the court found that the purpose and character of the use was not transformative (no commentary or transformation of work in any meaningful way) and distinguished Meltwater News service from Google News as not so much a search engine, but an expensive subscription service marketed as a news clipping service. The court also found that Meltwater copied too much of the AP articles both quantitatively and qualitatively. Finally, the court found that Meltwater's use of the works detrimentally affected the potential market and value of AP's articles. 

In another recent case the U.S. District Court of Appeals for the 2nd Circuit reversed and vacated a lower court decision(25) in part finding that the appropriation artist Richard Prince infringed on the copyright of Patrick Cariou's photographs when they were used in Prince's work. Once again the question of the "transformative nature" of the new work came into play in deciding the fair use question. 

The lower court had initially granted Cariou's motion for summary judgment, finding that the artwork had infringed upon his copyrighted photographs. The lower court had also entered an injunction compelling "the defendants to deliver to Cariou all infringing works that had not yet been sold, for him to destroy, sell, or otherwise dispose of."(26)

But the court of Appeals disagreed with the lower court analysis of the fair use factors and found that whereas "the district court imposed a requirement that, to qualify for a fair use defense, a secondary use must 'comment on, relate to the historical context of, or critically refer back to the original works,'"(27) they believed the proper determination is "if 'the secondary use adds value to the original - if [the original work] is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings"(28) (Internal citation omitted). They also found that "for a use to be fair, it 'must be productive and must employ the quoted matter in a different manner or for a different purpose from the original'"(29)(Internal citation omitted). With regard to the transformative nature of the work, the court thought it also critical to determine how the work in question may be reasonably perceived by the reasonable observer as compared with the original work.(30)


To illustrate how difficult these types of decisions are, the case involved 30 pieces of artwork, but the appeals court was only able to make a determination on 25 of them, remanding the remaining 5 pieces back to the lower court for application of "the proper standard"(31) so as to "determine in the first instance whether any of them infringes on Cariou's copyrights or whether Prince is entitled to a fair use defense with regard to those artworks as well."(32)

In a 5 page dissent Judge John Clifford Wallace agreed that the lower court's finding was flawed, but believed that all of the works in question should be remanded for further reconsideration and factual determination under the legal standard just articulated by majority.(33) He also opined that "perhaps new evidence or expert opinions will be deemed necessary by the fact finder--after which a new decision can be made under the corrected legal analysis."(34)

Judge Wallace also took the majority to task for employing its own "artistic judgment" when comparing the transformative nature between the two works.(35) He cautions against departing from aesthetic neutrality in that he would feel "extremely uncomfortable" for him do so in his "appellate capacity," let alone his "limited art experience."(36)

Noting the court had appeared to move away from that foundational imperative in determining fair use he cited the admonition by Justice Oliver Wendell Holmes that "it would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits."(37)

In another case involving fair use the courts have found that the scanning of books for the purposes of indexing meets the transformative requirement even when copying entire written works because it adds value and transforms the work from its original intent by providing full-text searching and access for print disabled individuals.(38)

Another court has also held that at universities the use of copies from unlicensed electronic course reserves in place of traditional printed course packs was permissible under fair use.(39) The 350 page decision also weighed the four fair use factors, with the court finding that the unpaid use of small excerpts of the works in question to be acceptable given it would not discourage academic creativity in new works.(40)

These cases can all be distinguished from the daily misappropriation of photographs and visual images in their entirety for no other purpose than that they are readily accessible, help illustrate a story or fill a space and serve to monetize page views or sell publications. Such unauthorized and uncompensated misuse of the work of others should not be considered fair use. Rather they are exemplars of precisely the type of creative work that copyright laws were enacted to protect. 

Recent Legislative Initiatives
In May 2013, the Subcommittee on Courts, Intellectual Property and the Internet of the House Committee on the Judiciary held a hearing entitled "A Case Study for Consensus Building: The Copyright Principles Project"(41) In a statement, Chairman Bob Goodlatte spoke of the invited speakers "as an example of how people with divergent views on copyright law can productively debate a range of copyright issues . . . speaking with a recognition that the person next to them at the witness table has just as much right to advocate their position on copyright law as they do."(42)

As noted in a statement by the Copyright Alliance, "the Project was a self-convened effort of 'law professors, lawyers from private practice, and lawyers for copyright industry firms'"(43) and unfortunately no creators (e.g. photographers) were involved.(44)

As the legal system tries vainly to catch-up with technology and social policy as it relates to copyright protections for photographs and other visual images a few things are hopefully apparent. Those who assert "Fair Use" as a prior rationale for the misappropriation of photographs and visual images, do so at their peril. As the U.S. Supreme Court noted, fair use is an "affirmative defense"(45) that must be successfully proved by the named defendants once a copyright infringement lawsuit has been commenced. "Defendants bear the burden of proving that each use was a fair use under the statute. The analysis of the fair use defense must be done on a case-by-case basis, and 'all [four factors] are to be explored, and the results weighed together, in light of the purposes of copyright.'"(46)

There is a strong argument that an examination of the 4 fair use factors mitigates in favor of the photographer when the use is commercial or for-profit educational purposes. The qualitative and quantitative nature of a photograph is normally self-evident. Given that almost all copyright infringements of photographs involve their entire use rather than just a small portion of the picture, the third factor in considering fair use should favor the photographer in cases where the photographs are used without any transformative changes being made to them. Finally, the effect of the use upon the potential market for, or value of, the photograph may also be summed by Justice Holmes, when he wrote, "that these pictures had their worth and their success is sufficiently shown by the desire to reproduce them without regard to the plaintiffs' rights."(47)

The fair use doctrine is meant to protect those wishing to stand on the shoulders of others when creating new works, not on the backs of others, such as photographers, whose works are infringed upon with impunity hundreds, if not thousands of, times a day both intentionally and inadvertently.

To paraphrase U.S. District Judge Denise L. Cote's ruling in Meltwater - A defendant misappropriates a photograph in its entirety in order to make money directly from the undiluted use of the copyrighted material; where this use is a central feature of its business model and not an incidental consequence of the use to which it puts the copyrighted material.

Photographing newsworthy events occurring around the globe is an expensive undertaking and enforcement of copyright laws permits the photographer to earn the revenue that underwrites that work. Permitting a defendant to take the fruit of the photographer's labor for its own profit, without compensating the photographer, injures the photographer's ability to perform this essential function of democracy.

Rather than advising users about a potential fair use safe harbor, many suggest following the golden rule of "do unto others" by first seeking permission, offering to credit and expecting to pay when using photographs and visual images on the web. It might make a rather complicated legal issue much simpler and less costly in the long run.

Mickey H. Osterreicher is of Counsel to the law firm of Hiscock & Barclay and serves as general counsel to the National Press Photographers Association (NPPA). He regularly deals with copyright infringement issues of members' photographs.
1.    United States Constitution, Article I, Section 8.
2.    17 USC §106 
3.    17 USC§107 
4.    See: 
5.    See: 
6.    Id.
7.    See:  
8.    See: 
9.    Id.
10.    See, e.g., Agence France Presse v. Morel, 10 CIV. 02730 AJN, 2013 WL 146035 (S.D.N.Y. Jan. 14, 2013) (describing how news photos of the Haitian earthquake of 2010, posted online and widely distributed within minutes of being uploaded).
11.    See: 
12.    See: 
13.    See: Alicia Calzada, A strong example of why copyright matters, NATIONAL PRESS PHOTOGRAPHERS ASSOCIATION, July 13, 2012, available at
14.    See: 
15.    Comments of the Library Copyright Alliance 
16.    Id.
17.    See: 
18.    Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1994)
19.    Id.
20.    Id.
21.    Id.
22.    See:  
23.    12-cv-01087-DLC (SDNY) 
24.    Id. at 3.
25.    Cariou v Prince, et al, 11-1197-cv (2nd Cir. 2013)  
26.    Id. at 3
27.    Id. at 11-12
28.    Id.
29.    Id.
30.    Id. at 14
31.    Id. at 23
32.    Id.
33.    Id. at 24
34.    Id.
35.    Id. at 25
36.    Id. at 27
37.    Id. at 27 quoting Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903)
38.    See: Authors Guild, Inc. v Hathitrust, et al, 11 CV 6351-HB (SDNY 2012) 
39.    Cambridge University Press et. al. v. Mark Becker et al, 08-CV-142S-0DE (ND of Georgia, Atlanta Div. 2012) 
40.    Id. at 89
41.    See: 
42.    See: 
43.    Statement From Copyright Alliance Executive Director Sandra Aistars 
44.    David Lowery, Getting Copyrights Right    
45.    Campbell at 590
46.    Cambridge at 48
47.    Bleistein at 252

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