How many issues can you spot in this copyright infringement case? ONKEN v. HEARST

United States copyright law uses the phrase, original works of authorship, to describe what is protected by copyright law. This phrase is given an expansive meaning which covers creative works other than books. Music, movies, photographs and computer software are all considered works of authorship. When one of these works is created, the creator is granted a copyright to their work. A copyright is a set of exclusive rights granted to the creator of a new expressive work. A copyright gives its owner the exclusive right to reproduce, distribute, perform, display, transmit and make derivative works based on the original. If someone other than the copyright owner attempts to exercise one of these exclusive rights that can be considered copyright infringement. A copyright owner can combat copyright infringement by filing a lawsuit. In that lawsuit a plaintiff may request an injunction to prevent infringing activity from continuing and monetary damages for copyright infringement which has occurred.

Copyright law grants a copyright owner a significant amount of control over their work. However, there are some limits to the rights granted by copyright law. When a copyrighted work is copied for a limited and “transformative” purpose, such as to comment upon, criticize, or parody a copyrighted work, that copying is considered a fair use. Fair use is an affirmative defense to copyright infringement. Technically copyright infringement is committed, but that infringement is excused because a fair use promotes the greater purpose of advancing the arts and sciences.

Frequently in a lawsuit there are many issues at work. When a copyright Plaintiff discovers that their work is being infringed upon it is human nature to want to stop that infringement as quickly as possible. However, because of the complexity of copyright law, seemingly simple issues can have hidden complexities.

NICK ONKEN, v. HEARST COMMUNICATIONS, INC., 1:21-cv-4892 (S.D.NY 2021) is an example of a copyright infringement case that seems open and shut, however below the surface it has many different issues.

Plaintiff in this case is an accomplished and critically acclaimed photographer, podcast host, and creative entrepreneur. He has photographed individuals such as Justin Bieber, Tom Hanks, and Jessica Alba, and has been featured in Fast Company, Huffington Post and MTV. Plaintiff created and exclusively owns the photography depicted in Exhibit A which is displayed above.

Defendant created Exhibit B which is displayed above. Defendant published Exhibit B in the Italian version of the magazine Cosmopolitan. Cosmopolitan is a trend and fashion magazine. Plaintiff sued Defendant for copyright infringement claiming that Defendant’s use of Plaintiff’s photograph constitutes a copyright infringement.

At first glance this may seem like an open and shut case. The Plaintiff’s photograph was used in another work. However digging deeper there are a number of different issues.

Statue of limitations – The URL indicates that the article was published in 2016, the statute of limitations for copyright infringement is 3 years.

Fair use defense – Defendant did not merely reproduce Plaintiff’s image, it added two other characters. While mashing up images does not excuse copyright infringement, what is the purpose of the image? On the left of Exhibit B you have a three eyed dragon ballz character and on the right you have a cool dude cartoon character. The caption above Exhibit B reads “Eddie Rude ti svela le tendenze p fatto di occhiali da sole.” Which roughly translates to “Eddie Rude reveals the trends made of sunglasses.” If you google “Eddie Rude”, he is a fictional character that appears in Cosmopolitan Italia along side critiques of fashion trends. Once the image is put into context, it seems much more likely that Exhibit B could be considered a transformative commentary or criticism on fashion trends.

The Defendant has not answered the complaint yet, so we will have to wait and see what defenses are offered.

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