Federal Judge Rules in Favor of XXL Magazine Over Use of Cardi B Image

Attribution @SeanDavis

In what looks like another win for news reporters, a federal judge has issued a decisive opinion in the continuing series of copyright lawsuits concerning social media / news reports containing embedded photos. Rebecca Fay Walsh, a Brooklyn-based professional photographer, sued Townsquare Media, Inc., for copyright infringement over an embedded photo that was used in an article by XXL Magazine. Townsquare is a Delaware-incorporated business, and is the parent company of XXL Mag.

The story behind this lawsuit is that Walsh took several photos of rapper Cardi B at a Tom Ford fashion show back in September 2018. Walsh made the photos available for licensing through Getty Images, and has registered copyrights in the images. A few days after the fashion show, XXL published an article about the new lipstick collaboration between Tom Ford and Cardi B. In this article, XXL showed an Instagram post, made by Cardi B, talking about the new lipstick collaboration with Tom Ford. The Instagram post used in the article featured one of Walsh’s photos from the Tom Ford fashion show, and was linked in XXL’s article. Walsh then sued XXL (specifically, its parent company) in May 2019 for copyright infringement for an “unlicensed publication” of her photograph, specifically stating that XXL “expropriated” the photograph and “displayed” it in their article (without licensing it first). Townsquare, whose position was that the photo was embedded, filed a motion for “judgment on the pleadings” under a fair use argument, and the judge recently issued a ruling in Townsquare’s favor.

[NOTE: A motion for judgment on the pleadings is a type of motion filed in court when a party believes that it is clear from the pleadings made, that there is not enough factual evidence (or just no available remedy) to support the accusations asserted in the lawsuit. It’s basically stating to the court that there are no material issues of fact to be resolved, so no evidence needs to be submitted, and therefore, the party making the motion is entitled to judgment as a matter of law.]

To grossly oversimplify the fair use doctrine contained within the U.S. Copyright Act, an entity who would have otherwise violated a copyright holder’s rights can avoid liability for copyright infringement if they can establish that they made a ‘fair use’ of the copyrighted material. In evaluating whether any particular use qualifies as ‘fair use,’ a court conducts an inquiry that focuses on four (non-exclusive) factors that are set forth in the Copyright Act. Those factors are: (1) the purpose and character of the use; (2) the nature of the work; (3) the amount / substantiality of the portion of material used in relation to the copyrighted work as a whole, and; (4) the effect of the use upon the potential market for copyrighted works. The Copyright Act even gives some examples of reasons for using copyrighted material that would constitute fair use, and that lists includes commentary, criticism, news reporting, research, teaching, and scholarship. In evaluating the four factors, Judge Vernon S. Broderick made his main points, which were:

  • POINT ONE: XXL’s article used the photo for an entirely different purpose than originally intended. Walsh took the photo to “depict Cardi B at Tom Ford’s fashion show.” XXL did not publish the photo simply to present the photo, nor did it use the photo as a generic image of Cardi B to accompany an article about Cardi B (or inversely, as an image of her at Tom Ford’s fashion in an article about the fashion show). XXL published the Instagram post, which incidentally contained the photograph, because the post was the very thing that the XXL article was reporting on; Cardi B’s making and dissemination of the post was “itself the subject of the story.” XXL published the Instagram post in order to provide readers with the original social media interactions reported on in its article, and included the photo as a necessary part of the post.

Judge Broderick noted that XXL embedded the entire Instagram post, which still bore the rest of the elements of the image (which Cardi B had posted), including the Instagram header and the photo of the Tom Ford lipstick, along with Cardi B’s caption and various Instagram standard links, which makes it clear that the subject of the image was the Instagram post itself, and not the photo contained within it.

  • POINT TWO: While photography, including celebrity / paparazzi photography, may certainly involve skill and is not devoid of expressive merit, in comparison to creative or fictional works, paparazzi images are further from the core of the type of copyright protections intended by the Copyright Act. This renders the degree of a photo’s creativity a relatively neutral consideration. Furthermore, since Cardi B herself previously published the photo on her own Instagram, this pairs the ‘neutrality’ of the image with the fact that it was already previously published.
  • POINT THREE: XXL’s article included a resized, but uncropped version of the photo. The Instagram post is the only image that could have accomplished XXL’s journalistic objective (of reporting on said Instagram post). Additionally, XXL used only as much of the photo as was already included in Cardi B’s Post. In other words, “no more was taken than necessary.”
  • POINT FOUR: Since the photo did not appear on its own, but rather as part of the post, (alongside text and another image), it is implausible that XXL’s use of the photo would compete with Walsh’s business, or affect the market or value of her work. There is little risk that someone looking to license or purchase a Cardi B image would instead select XXL’s article instead of the photo, thereby diverting any potential revenue from Walsh to XXL.

Judge Broderick ruled that all four factors of the fair use analysis weighed in favor of XXL and therefore, granted Townsquare’s motion and dismissed Walsh’s case “with prejudice”. Dismissing a case “with prejudice” means that the court is saying that it has made a final determination on the merits of the case, and that the plaintiff (in this case, Walsh) is permanently forbidden from filing another lawsuit based on the same grounds.

This story was originally reported by The Fashion Law.

The case name is Walsh v. Townsquare Media, Inc., and was filed in the U.S. District Court for the Southern District of New York. The case number is 1:19-cv-04958-VSB. You can read Judge Broderick’s opinion and order right here if you want the full details.

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