This is the first Insight in a series addressing how photographers can exploit and protect their rights. Read the second post here, the third post here, the fourth post here, the fifth post here and the sixth post here.

The 2021 Google v. Oracle decision was viewed by many as blurring the line between transformative use of a copyrighted work and the author’s right to make a derivative work. This conflation was highlighted by the dissent, which argued that if the work “serves the same purpose in a new context,” it would be derivative, not transformative. The case primed to distinguish these concepts is most likely Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, et al., in which photographer Goldsmith’s photographs of celebrity Prince were used to inspire prints made by renowned artist Andy Warhol. The Second Circuit found in favor of Goldsmith. But, as we have previously discussed, the Supreme Court granted the Warhol Foundation’s petition for certiorari on March 28, 2022. The Court is expected to revisit the question of transformative fair use and determine what a court should consider when assessing the purpose and character of the work, especially in the case of alterations of pre-existing images. The outcome of this case could have a significant impact on other ongoing disputes involving the unauthorized use of photography, including in other art media such as tattoos, and reposts and republications on social media.

Tattoos and Transformative Works

The Central District of California could be poised to answer the question of when tattoos of photographs taken by other individuals might be transformative. In Jeffrey B. Sedlik v. Katherine Von Drachenberg, et al., photographer Sedlik took a picture of jazz artist Miles Davis and owns the copyright in that image. Von Drachenberg, widely known as Kat Von D, is a celebrity tattoo artist who posted to social media a tattoo she had created that was based on Sedlik’s photo of Davis. Sedlik sued, claiming that this was an unauthorized derivative work, while Von D argues that her version is transformative. Although the standard industry practice for tattoos inspired by the photography of others does not seem to rely on or necessarily incorporate licensing, the judge agreed that it was still a triable issue, and that just because a current practice is accepted does not mean that the copyright interest of the photographers is not being harmed. The timing and nature of the Supreme Court’s Warhol decision would likely impact this case, especially if the distinction between transformative and derivative works based on photographs is better defined.

How Transformative are Reposts and Republications?

Reposts and republications occur when one user shares or links to a different user’s content on social media, which happens frequently with photographs, sometimes without the copyright owner’s permission. When celebrity and model Emily Ratajkowski reposted a paparazzi photo of herself taken by photographer Robert O’Neil to her Instagram story, it sparked a lawsuit, which raised many questions about the fair use implications of reposting photographs on social media. Although the dispute settled in April 2022, the judge found that a reasonable jury could disagree as to the transformative nature of such a post, especially given that Ratajkowski added a short caption and the Instagram story disappeared after 24 hours. The Warhol decision could cast some light on the question of how significant a caption or altered reposting of an image is needed to be considered transformative.

Embedding and the Future of the Server Test

As we have previously discussed, embedding is linking an image on social media to appear directly on another website through use of an HTML embed code, which retrieves the image from a third-party server. Platforms like Instagram, Twitter and YouTube make this process easy, which has troubled users who upload works to social media only to find them linked without their permission on other websites, particularly where the linkage results in a loss of licensing revenue. The Ninth Circuit’s server test, as outlined in Perfect 10 v. Google, holds that the party whose servers actually store the copyrighted images is responsible for the display.

The Second Circuit, which along with the Ninth Circuit sees the highest volume of copyright cases, has rejected the server test. In McGucken v. Newsweek, LLC et al., the Second Circuit Court of Appeals rejected Newsweek’s argument that it was not liable for an embedded image taken by photographer McGucken because it had merely copied Instagram’s embed code from that post, which was not the same as displaying it. Although the case settled in April 2022, the judge noted that the Ninth Circuit’s server test has not been widely adopted outside of that circuit and other courts have argued persuasively that the test is contrary to the Copyright Act. Other cases in which the court has declined to adopt the server test include Goldman v. Breitbart News Network, LLC, in which a photograph of Tom Brady was uploaded to Twitter, with other news and media outlets embedding the tweet onto their websites, and Hunley et al v. Buzzfeed, in which six Black photographers who took photos of the protests following George Floyd’s death had those photos used without their permission in a Buzzfeed article. In both cases the court rejected the argument that embedded images were necessarily transformative and instead found that this type of embedding could constitute a violation of the copyright owner’s exclusive right to display, a win for photographers.

The Ninth Circuit could be poised to re-examine its controversial server test. The photographer plaintiffs in Hunley v. Instagram have asked the Ninth Circuit to overturn the dismissal of their lawsuit, which alleges that Instagram is liable for secondary infringement when the platform’s embedding tool is used by third-party sites to display copyrighted photos and videos. The California District Judge who dismissed the case did so on the grounds of being bound by the server test. If the Ninth Circuit does take a closer look at or rejects the server test, this would be welcome news to many photographers and copyright holders. The photographers are supported by the National Press Photographers Association, Getty Images and other photography and licensing groups, who claim that Instagram allows the embedding of photos too easily and that the server test should be abandoned.

What Does This Mean for Photographers?

Lutzker & Lutzker will be closely monitoring all of these cases to provide up-to-date guidance for photographers and those who wish to lawfully use and license photographs. It should be an interesting few months.