Article by Clyde Shuman
A New York federal judge has ruled that a sports news publisher’s embedding of an Instagram post by well-known professional tennis player Caroline Wozniacki containing a copyrighted photo taken by another constitutes fair use under the copyright law. In Boesen v. United Sports Publications, Ltd., Case No. 20-CV-1552 (ARR) (SIL) (E.D.N.Y.), U.S. District Judge Allyne R. Ross accordingly dismissed the Complaint of plaintiff photographer Michael Barrett Boesen for failure to state a claim upon which relief could be granted, pursuant to Fed. R. Civ. P. 12(b)(6).
By way of background, Caroline Wozniacki announced her retirement from professional tennis on her Instagram page, on December 6, 2019. Her Instagram post included a cropped low-resolution version of a photograph taken plaintiff Boesen, a professional photographer based in Denmark, showing Wozniacki preparing to serve.
The same day, defendant, United Sports Publications Ltd. (“USP”), a sports news publisher, ran an article on the Long Island Tennis Magazine website covering Wozniacki’s retirement announcement. The article quoted the text of Wozniacki’s Instagram post and summarized her career, including highlighting the number of singles victories and titles by Wozniacki, as well as her having been diagnosed with rheumatoid arthritis, which limited her playing in 2019.
The article “embedded” Wozniacki’s original Instagram post featuring a cropped version of Boesen’s photograph. USP did not license the photograph from Boesen, nor did it have permission to publish the work on its website. USP subsequently registered a copyright on the photograph that became effective December 27, 2019.
Boesen filed suit against USP for copyright infringement suit on March 25, 2020. USP moved to dismiss the amended Complaint for failure to state a claim.
Judge Ross’s analysis separately addressed each of the “fair use” factors from 17 U.S.C. § 107, finding that all four factors weighed in favor of a finding of “fair use” here.
As to the purpose and character of the use (first factor), Judge Ross first noted that a court in the Southern District of New York previously had found that embedding an Instagram post by celebrity rapper Cardi B featuring a copyrighted photo, in an article reporting on the post itself, was transformative. Judge Ross agreed with that court’s reasoning created new meaning for the photograph because: (i) the defendant did not publish the photograph in question simply to present its content: (ii) the defendant did not use the photograph as a generic image of Cardi B to accompany an article about her . . . or as an image of her at a fashion show alongside an article about the show. Instead, the defendant published the Instagram post, which incidentally contained the photograph, because the fact that Cardi B had disseminated the Post was what the article was reporting on.
Applied to the present case, Judge Ross found that USP’s article reported on Wozniacki’s retirement announcement and the fact that it took place on Instagram. According to Judge Ross, the article did not use Boesen’s photograph of Wozniacki “as a generic image” of her, nor to depict her playing tennis at a young age. “Rather, it embedded the Instagram post announcing her retirement—which incidentally included the photograph—because ‘the fact that [Wozniacki] had disseminated’ that post ‘was the very thing the Article was reporting on.’” Per Judge Ross, this sufficiently transformed the work to support a defense of fair use.
Judge Ross further noted that USP’s status as a “for-profit publisher” did not diminish the transformative nature of the work, citing Second Circuit precedent “discount[ing] this consideration where the link between [the defendant]’s commercial gain and its copying is . . . attenuated such that it would be misleading to characterize the use as commercial exploitation.” Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 83 (2d Cir. 2014). In this case, Boesen did not allege that USP derived any commercial benefit from embedding the post beyond its being a for-profit entity and its publishing the article alongside advertisements. Judge Ross held, inter alia, that the presence of advertisements, alone, was insufficient to show a “link between [USP]’s commercial gain and its copying” that would lessen the weight of the article’s transformative nature.
Judge Ross also rejected Boesen’s argument that he should be allowed to develop the factual record to determine if USP’s use was transformative, saying “it is obvious from comparing the contested print article to the original photograph [ ] that the article’s purpose is to report on Wozniacki’s announcing her retirement on Instagram, not to describe Wozniacki playing tennis. No further factual development could change that determination.”
Judge Ross also noted especially that USP’s use of the photograph was precisely because Wozniacki had chosen to include it in her Instagram post announcing her retirement. Per Judge Ross, as a result, USP did not use the work “for the precise reason it was created,” but “transform[ed] the function of the work in [a] new context.”
As for the nature of the copyrighted work (second factor), Judge Ross found that , “[a]s an image of a famous athlete playing sports, the photograph has ‘both informational and creative elements’ because it ‘document[s] [a] subject’ and involves ‘technical skill and aesthetic judgment.’” However, Judge Ross noted that Boesen had published it on his own social media page and website, in addition to Wozniacki’s sharing it on her Instagram. Accordingly, she concluded that “this factor tips slightly in defendant’s favor.”
As for the proportion of the original work used (third factor), Judge Ross found that, by embedding Wozniacki’s Instagram post, USP did not control how the photograph would be presented. Rather, it was Wozniacki who chose to crop the image and use a lower resolution version of it—”choices that in themselves tip this factor slightly in defendant’s favor.” Judge Ross also noted that the embedded post “retained all the markings of Instagram—i.e., Wozniacki’s avatar, her profile name, the accompanying text—which further dilute the image.”
Judge Ross also discounted Boesen’s argument that USP could have “commissioned its own freelance photojournalist to photograph Wozniacki,” “published its news story without any photograph(s) whatsoever,” or “obtained a license directly from Plaintiff before publishing its story,” saying that such options “would defeat the purpose of the story: to inform readers about Wozniacki’s retirement announcement on social media.” Per Judge Ross, “Only reproducing that post could achieve that aim.” Accordingly, she concluded that “this factor favors defendant.”
Finally, with respect to the effect of the accused use on the market (fourth factor), Judge Ross, quoting the related Southern District opinion (supra), found that “‘because the Photograph did not appear on its own, but as part of the Post, alongside text . . . , it is implausible that Defendant’s use would compete with Plaintiff’s business or affect the market or value of h[is] work.’” Judge Ross also noted that the embedded Instagram post here used a cropped low-resolution version of the photograph that would be a poor substitute for the original. Thus, per Judge Ross, “this factor favors defendant, as well.”