Attorney Steve® Fair Use Essentials - Using copyright protected images on your website for thumbnails without permission. Infringement or fair use?
Introduction
Here is the topic of this Vondran Legal® copyright legal memo:
Issue
Does the use of cropped and slightly modified copyrighted images for video thumbnails constitute fair use or copyright infringement?
Research Description
A video production company makes videos for their YouTube channel. They use copyrighted images for their thumbnails without having permission to do so. The photos are cropped and slightly modified. Does this constitute fair use of the copyrighted photographs or is it copyright infringement?
Conclusion
The fair use defense permits the use of copyrighted works without the copyright owner's consent under certain situations. Congress codified the common law of fair use in 17 U.S.C. § 107, which provides that in determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole;
and,
(4) the effect of the use upon the potential market for or value of the copyrighted work.
Courts must be flexible in applying a fair use analysis; it is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis. Nor may the four statutory factors be treated in isolation, one from another. All are to be explored, and the results weighed together, in light of the purposes of copyright. The purpose of copyright law is to promote the progress of science and useful arts and to serve the welfare of the public. (Perfect 10, Inc. v. Amazon.Com, Inc., 508 F.3d 1146 (9th Cir. 2007))
Transformative Use of Images is Helpful for Fair Use
The first factor of the fair use analysis requires a court to consider the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. The central purpose of this inquiry is to determine whether and to what extent the new work is "transformative." A work is "transformative" when the new work does not merely supersede the objects of the original creation but rather adds something new, with a further purpose or different character, altering the first with a new expression, meaning, or message. Conversely, if the new work supersedes the use of the original, the use is likely not a fair use. A use is considered transformative only where a defendant changes a plaintiff's copyrighted work or uses the plaintiff's copyrighted work in a different context such that the plaintiff's work is transformed into a new creation. (Perfect 10, Inc. v. Amazon.Com, Inc., 508 F.3d 1146 (9th Cir. 2007))
The "benchmarks" of transformative use are:
(1) further purpose or different character in the defendant's work, i.e., the creation of new information, new aesthetic, new insights and understanding;
(2) new expression, meaning, or message in the original work, i.e., the addition of value to the original;
and,
(3) the use of quoted matter as raw material, instead of repackaging it and merely superseding the objects of the original creation. (McGucken v. Pub Ocean Ltd., 42 F.4th 1149 (9th Cir. 2022))
Even making an exact copy of a work may be transformative so long as the copy serves a different function than the original work. (Perfect 10, Inc. v. Amazon.Com, Inc., 508 F.3d 1146 (9th Cir. 2007))
Miscellaneous Fair Use Points
While wholesale copying does not preclude fair use per se, copying an entire work militates against a finding of fair use. However, the extent of permissible copying varies with the purpose and character of the use. If the secondary user only copies as much as is necessary for their intended use, then this factor will not weigh against them. (Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003))
A work that conveys factual information does not transform a copyrighted work by using it as a "clear, visual recording" of the infringing work's subject. When a copyrighted work is used simply to illustrate what that work already depicts, the infringer adds no further purpose or different character. Further, adding informative captions does not necessarily transform copyrighted works. (McGucken v. Pub Ocean Ltd., 42 F.4th 1149 (9th Cir. 2022))
The Supreme Court has rejected the proposition that a commercial use of copyrighted material ends the inquiry under the purpose and character of the use factor. Instead, the central purpose of this investigation is to see whether and to what extent the new work is transformative. The more transformative the new work, the less important the other factors, including commercialism, become. (Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003))
Noncommercial or nonprofit use of a copyrighted work is presumptively fair. Challenging a noncommercial use of a copyrighted work requires proof that the use causes harm to the monopoly privilege that belongs to the owner of the copyright or that if the use were widespread it would adversely affect the potential market for the copyrighted work. (Hannley v. Mann, 2:21-cv-02043-JLS (C.D. Cal. 2023))
Works that are creative in nature are closer to the core of intended copyright protection than are more fact-based works. The fact that a work is published or unpublished also is a critical element of its nature. Published works are more likely to qualify as fair use because the first appearance of the artist's expression has already occurred. (Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003))
The third factor asks whether the amount and substantiality of the portion used in relation to the copyrighted work as a whole are reasonable in relation to the purpose of the copying. (Perfect 10, Inc. v. Amazon.Com, Inc., 508 F.3d 1146 (9th Cir. 2007))
While the likelihood of market harm may be presumed if the intended use of an image is for commercial gain, this presumption does not arise when a work is transformative because market substitution is less certain and market harm may not be so readily inferred. (Perfect 10, Inc. v. Amazon.Com, Inc., 508 F.3d 1146 (9th Cir. 2007))
The last factor of the fair use analysis requires courts to consider not only the extent of market harm caused by the particular actions of the alleged infringer, but also whether unrestricted and widespread conduct of the sort engaged in by the defendant would result in a substantially adverse impact on the potential market for the original. A transformative work is less likely to have an adverse impact on the market of the original than a work that merely supersedes the copyrighted work. (Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003))
In the unreported decision of Hannley v. Mann, 2:21-cv-02043-JLS (C.D. Cal. 2023), the plaintiffs alleged that the defendants took images from the website and social media of the plaintiff, Paul Edalat, and posted them on the website pauledalatisgay.com, a Twitter page, and a Youtube page. After the defendants posted the images, the plaintiff registered those images with the U.S. Copyright Office. The plaintiff then brought a copyright infringement claim against all defendants. In the plaintiff's declaration, he provided a thumbnail of a 34-second Youtube video that showed the copyrighted shirtless image of the plaintiff with his arms crossed in front of him, with "pauledalatisgay.com" superimposed over the image. The title of the video was "Paul Edalat Loves Ripping Old Men Off." The defendants argued fair use.
The United States District Court for the Central District of California found that there was no evidence that the Twitter, website, or Youtube pages generated any profits. There was also no evidence that there was any market whatsoever for the photos. The Court found that the plaintiff's purpose in posting the photos was building up his online identity, while the photos' purpose in the Twitter, website, and Youtube videos was to facilitate criticism of the plaintiff, particularly his appearance, his bankruptcy cases, and his purported corruption.
The Court concluded that the uses of the copyrighted photos of the plaintiff were transformative because they were used for negative criticism, and not identification and positive development of the plaintiff's internet presence. At oral argument, the plaintiff's counsel pointed to the derogatory and salacious nature of some of the claims as an argument against a finding of fair use. However, the Court explained that the fair use inquiry does not ask whether the criticism or parody of the copyrighted work is just or accurate, or mean-spirited, but simply whether the use is of the kind that copyright is designed to protect.
The Court concluded that because the uses of the photos at issue were both non-commercial and transformative, the first factor weighed in favor of a finding of fair use. Next, the Court found that given that the plaintiff's purpose in posting the photos on social media and his website was to build a public platform, this use seemed to be intended as informational rather than creative. Further, there was no dispute that the images had already been published for four years before the alleged infringement.
Accordingly, the second factor weighed only very slightly against a fair use finding. Next, the Court found that the third factor did not weigh for or against either party, as the use of the entire image was reasonable in light of the purpose of the website and Twitter page. Lastly, the Court found that the fourth factor weighed in favor of fair use because the plaintiff made no argument that the value of the photos was diminished by the alleged infringement, and no evidence in the record supported such a finding. Having weighed all the factors, and keeping in mind the purposes of copyright, the Court found that the use of these photos was fair use.
In Perfect 10, Inc. v. Amazon.Com, Inc., 508 F.3d 1146 (9th Cir. 2007), the plaintiff argued that the search engine of the defendant, Google, directly infringed its display rights and its distribution rights. The plaintiff marketed and sold copyrighted images of nude models. Among other enterprises, it operated a subscription website on the internet. Some website publishers republished the plaintiff's images on the internet without authorization. Once this occurred, Google's search engine could automatically index the web pages containing these images and provide thumbnail versions of images in response to user inquiries. Google asserted a fair use defense.
The Ninth Circuit Court of Appeals found that Google's use of thumbnails was highly transformative. Although an image may have been created originally to serve an entertainment, aesthetic, or informative function, a search engine transforms the image into a pointer directing a user to a source of information. The Court concluded that the transformative nature of Google's use was more significant than any incidental superseding use or the minor commercial aspects of Google's search engine and website. Therefore, this factor weighed heavily in favor of Google. With respect to the second factor, the nature of the copyrighted work, the district court found that the plaintiff's images were creative but also previously published. Accordingly, the Court found that the district court did not err in holding that this factor weighed only slightly in favor of the plaintiff.
Next, the Court found that the district court did not err in finding that the third factor favored neither party. As to the fourth factor, the Court noted that in Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003), the court reasoned that because thumbnails were not a substitute for the full-sized images, they did not harm the photographer's ability to sell or license his full-sized images. In this case, the district court followed this reasoning, holding that Google's use of thumbnails did not hurt the plaintiff's market for full-size images. The Court agreed. The district court held that Google's use of thumbnails likely did harm the potential market for the downloading of the plaintiff's reduced-size images onto cell phones; however, the district court did not make a finding that Google users had downloaded thumbnail images for cell phone use. Thus, this potential harm to the plaintiff's market remained hypothetical. The Court concluded that this factor favored neither party. Weighing the significant transformative use against the unproven use of Google's thumbnails for cell phone downloads, and considering the other fair use factors, all in light of the purpose of copyright, the Court concluded that Google's use of the plaintiff's thumbnails was a fair use.
More Law
In applying the fair use analysis in this case, we are guided by Kelly v. Arriba Soft Corp., which considered substantially the same use of copyrighted photographic images as is at issue here. See 336 F.3d 811. In Kelly, a photographer brought a direct infringement claim against Arriba, the operator of an Internet search engine. The search engine provided thumbnail versions of the photographer's images in response to search queries. Id. at 815-16. We held that Arriba's use of thumbnail images was a fair use primarily based on the transformative nature of a search engine and its benefit to the public. Id. at 818-22. We also concluded that Arriba's use of the thumbnail images did not harm the photographer's market for his image. Id. at 821-22.
In McGucken v. Pub Ocean Ltd., 42 F.4th 1149 (9th Cir. 2022), the Ninth Circuit Court of Appeals explained that the "benchmarks" of transformative use are:
(1) further purpose or different character in the defendant's work, i.e., the creation of new information, new aesthetic, new insights and understanding;
(2) new expression, meaning, or message in the original work, i.e., the addition of value to the original;
and,
(3) the use of quoted matter as raw material, instead of repackaging it and merely superseding the objects of the original creation (at 1157):
Simply put, "the word ‘transformative' ... describe[s] a copying use that adds something new and important." Google, 141 S. Ct. at 1203.
Under our case law, a work that conveys factual information does not transform a copyrighted work by using it as a "clear, visual recording" of the infringing work's subject. Monge, 688 F.3d at 1174 (quoting L.A. News Serv. v. KCAL-TV Channel 9, 108 F.3d 1119, 1122 (9th Cir. 1997)). When a copyrighted work is used simply to illustrate what that work already depicts, the infringer adds no "further purpose or different character." Campbell, 510 U.S. at 579, 114 S.Ct. 1164. In that case, copyright law justly treats the infringer as free-riding on the inherent value of the original work. See Elvis Presley Enters. v. Passport Video, 349 F.3d 622, 629 (9th Cir. 2003) (using video clips of musical performances for their "intrinsic entertainment value" was not transformative), overruled on other grounds as stated in Flexible LifeLine Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 995 (9th Cir. 2011) (per curiam).
There is no genuine dispute that Pub Ocean's article used McGucken's photos as a "clear, visual recording" of the lake. Monge, 688 F.3d at 1174 (quoting KCAL-TV , 108 F.3d at 1122). McGucken's photos present a realistic depiction of the ephemeral lake. And the lake, which the article's title hails as the "Massive Lake" that "Materialized" in Death Valley, was undoubtedly the article's subject. The article begins and ends by discussing the lake, and each of the topics it touches on—from Death Valley to superblooms—bears some relationship to it. The article does not present McGucken's photos in a new or different light. It uses them for exactly the purpose for which they were taken: to depict the lake.
The article likewise does not meaningfully transform the photos by embedding them within the text of the article. We have repeatedly held that "[a]dding informative captions does not necessarily transform copyrighted works." [42 F.4th 1159]
Sicre de Fontbrune v. Wofsy, 39 F.4th 1214, 1225 (9th Cir. 2022). And Pub Ocean's article does even less. Photos are inserted every three to four sentences in an article structured as a continuous narrative. There is at most a loose topical connection between each portion of the article and the photos that appear alongside it. Photos of the ephemeral lake appear in roughly the place in the article where it is explicitly discussed. The article does not contain captions that directly describe or engage with the photos. Rather, it essentially uses the photos as visual "filler." Elvis Presley Enters., 349 F.3d at 625. Exploiting the beauty and intrigue of McGucken's photos in this way without adding anything new is not transformative. See id. at 629.
Our prior cases reinforce this conclusion. In Monge, we held that a gossip magazine did not transform a celebrity's private photos of her secret wedding when it used the photos in an exposé about the wedding. 688 F.3d at 1175–76. Similarly, in KCAL-TV, we held that a network did not transform helicopter footage of the violence at Florence and Normandie during the 1992 Los Angeles riots simply by using that footage as part of the network's coverage of the riots. 108 F.3d at 1122. Just as in Monge and KCAL-TV , Pub Ocean's article uses McGucken's photos as a "clear, visual recording" of its subject matter, and it is therefore no more transformative. Id.
To be transformative, the infringing use must bring about a much starker change in expression. For example, using a thumbnail image of a photo in a search engine "transforms the image into a pointer directing a user to a source of information." Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007). And a musical about a rock band transforms a video clip of the band's performance by using it "to mark an important moment in the band's career" rather than "for its own entertainment value." SOFA Entm't, Inc. v. Dodger Prods., 709 F.3d 1273, 1278 (9th Cir. 2013).
"Even making an exact copy of a protected work may be transformative, provided `the copy serves a different function than the original work.'" Dhillon v. Does 1-10, No. 13-01465, 2014 WL 722592, at *4 (N.D. Cal. Feb. 25, 2014) (quoting Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007)).
"While wholesale copying does not preclude fair use per se, copying an entire work militates against a finding of fair use." Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d 1110, 1118 (9th Cir. 2000). However, "[i]f the secondary user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her." Kelly, 336 F.3d at 820-21. Accordingly, this factor does not weigh for or against either party, as the use of the entire image was reasonable in light of the purpose of the website and Twitter page.
The Court found that the fourth factor weighed in favor of fair use because the plaintiff made no argument that the value of the photos was diminished by the alleged infringement, and no evidence in the record supported such a finding. Having weighed all the factors, and keeping in mind the purposes of copyright, the Court found that the use of these photos was fair use. Where, as here, the use is transformative and there has been no showing, nor even any argument, that the copyrighted works have any value, or that the infringement diminished their value, a finding of fair use is appropriate:
Conclusion
Using another parties copyrighted images for your thumbnails can be a bit risky. It is always best to either create your own image, seek permission, or purchase a stock photo to serve your purpose, if the use is "transformative" (provides something new, helpful and different from that of the original (ex the picture is shrunk, and perhaps slightly modified to make it easier for users to locate the video, this might qualify for fair use. Especially where it can be shown that this does not diminish the market for the original artist or creator. This is where providing proper attribution may help. If you are not sure, it is always best to seek the opinion of a qualified fair use counsel.
Authorities
Perfect 10, Inc. v. Amazon.Com, Inc., 508 F.3d 1146 (9th Cir. 2007)
Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003)
McGucken v. Pub Ocean Ltd., 42 F.4th 1149 (9th Cir. 2022)
Hannley v. Mann, 2:21-cv-02043-JLS (C.D. Cal. 2023)
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