Huffington Post’s Reproduction of Jon Hamm Photograph Considered Fair Use

In a lawsuit based upon on a photograph of Jon Hamm walking down the streets of New York wearing trousers without any underwear, a photographer sued the owners of www.HuffPost.com for copyright infringement. Schwartzwald v. Oath Inc., No. 1:19-cv-09938, 2020 U.S. Dist. LEXIS 165641, at *1-3 (S.D.N.Y. Sept. 10, 2020). The photographer, Lawrence Schwartzwald, filed this lawsuit against Oath, Inc., which owns and operates www.HuffPost.com, for reproducing the Hamm photograph without authorization or paying him a license. The evidence showed that Schwartzwald licensed the photograph numerous times to various media outlets, but that www.HuffPost.com posted an altered version of the Hamm photograph, as one of many photographs, in an article entitled 25 Things You Wish You Hadn’t Learned in 2013 and Must Forget in 2014. See id. at *3. As you can imagine, the apparent outline of Hamm’s “package” is what led to the popularity of the photograph. The altered Hamm photograph had been cropped and a black box with the words “Image Loading” was covering Hamm’s “package.” See id. at *4-5.  

Early in the case, defendant filed a motion to dismiss Schwartzwald’s copyright claims and argued that its use of the photograph constituted fair use under copyright law. Under the fair use defense, unauthorized use or reproduction of a copyrighted work is permissible “for purposes such as criticism, comment, news reporting, teaching…, scholarship, or research.” 17 U.S.C. § 107. The statute provides a framework of four factors to analyze to determine if the fair use defense is available:  “(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 the value of the copyrighted work.” Id. 

With respect to the first factor, courts have established three sub-factors for evaluating the “purpose and charter of the use.” See Schwartzwald, 2020 U.S. Dist. LEXIS 165641, at *8-9. These sub-factors include “determining whether the use is: (1) transformative; (2) for commercial purposes; or (3) in bad faith.” Id. In many cases where the court finds fair use, the initial factor is determinative. 

In this case, the Judge predictably relied upon this initial factor to rule that defendant’s use of the altered Hamm photograph was transformative, and therefore, fair use. The Opinion reasoned that defendant’s use of the Hamm photograph was not to illustrate Hamm’s “package,” but to mock Hamm, the public’s fixation on his “package,” and the viral nature of the photograph. See id. at *10-20. Further, the modification of the “valuable or unique” portion of the Hamm photograph with a black box and the treatment of the photograph in a comedic article were crucial to the court’s finding of transformative use. See id. at 12-15. The “Image Loading” black box over Hamm’s “package” clearly convinced the Judge that Schwartzwald’s copyright infringement claims should be dismissed, as the Judge quickly rejected the importance of and evidence supporting the remaining factors and sub-factors. 

The applicability of the fair use defense is an unpredictable area of copyright law. While the copyright owner must evaluate a potential fair use defense before asserting copyright infringement, it can be difficult to determine which unauthorized reproductions of copyrighted materials may be considered transformative by a court, and these types of cases can assist in that evaluation.

The Opinion from the U.S. District Court Southern District of New York can be found here: Opinion

Dustin Mauck focuses his practice on intellectual property and technology disputes, counseling, and licensing.

RegitzMauck PLLC is an intellectual property boutique based in Dallas, Texas. The firm focuses on providing value-based legal services to cost-conscious clients seeking high quality legal representation in intellectual property, cybersecurity, and data privacy matters and disputes.