finding verbatim republication of key portions of Gerald Ford‟s memoirs not to be fair use
How later courts described this case
- finding verbatim republication of key portions of Gerald Ford‟s memoirs not to be fair use
Written by the judges who cited it.
The opinion
PRECEDENTIAL
UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_____________
No. 10-2163
_____________
PETER MURPHY,
Appellant,
v.
MILLENNIUM RADIO GROUP LLC; CRAIG CARTON;
RAY ROSSI
_____________
On Appeal from the United States District Court
for the District of New Jersey
(No. 08-cv-1743)
District Judge: Honorable Joel A. Pisano
___________
Argued January 25, 2011
1
Before: FUENTES and CHAGARES, Circuit Judges; POLLAK,
District Judge*
(Opinion Filed: June 14, 2011)
Maurice Harmon (argued)
Harmon & Seidman, LLC
The Pennsville School
533 Walnut Drive
Northampton, PA 18067
Attorney for Appellant
David S. Korzenik (argued)
Miller Korzenik Sommers LLP
488 Madison Ave.
New York, NY 10022
Thomas J. Cafferty (argued)
Gibbons P.C.
One Gateway Center
Newark, NJ 07102-5310
Attorneys for Appellee
*
The Honorable Louis H. Pollak, Senior District Judge for
the United States District Court for the Eastern District of
Pennsylvania, sitting by designation.
2
OPINION OF THE COURT
Fuentes, Circuit Judge:
Peter Murphy (“Murphy”) has filed an appeal from the
decision of the District Court granting summary judgment to
Millennium Radio Group, Craig Carton, and Ray Rossi (the
“Station Defendants”) on Murphy‟s claims for violation of
the Digital Millennium Copyright Act (“DMCA”), copyright
infringement, and defamation under state law. For the
reasons given below, we reverse on all counts.
I.
Background
In 2006, Murphy was hired by the magazine New
Jersey Monthly (“NJM”) to take a photo of Craig Carton and
Ray Rossi, who at the time were the hosts of a show on the
New Jersey radio station WKXW, which is owned by
Millennium Radio Group. NJM used the photo to illustrate an
article in its “Best of New Jersey” issue naming Carton and
Rossi “best shock jocks” in the state. The photo (“the
Image”) depicted Carton and Rossi standing, apparently nude,
behind a WKXW sign. Murphy retained the copyright to the
Image.
An unknown employee of WKXW then scanned in the
Image from NJM and posted the resulting electronic copy to
the WKXW website and to another website, myspacetv.com.
3
The resulting image, as scanned and posted to the Internet,
cut off part of the original NJM caption referring to the “Best
of New Jersey” award. It also eliminated NJM‟s gutter credit
(that is, a credit placed in the inner margin, or “gutter,” of a
magazine page, ordinarily printed in a smaller type and
running perpendicular to the relevant image on the page)
identifying Murphy as the author of the Image. The WKXW
website invited visitors to alter the Image using photo-
manipulation software and submit the resulting versions to
WKXW. A number of visitors eventually submitted their
versions of the photo to WKXW, and it posted 26 of those
submissions to its site. The Station Defendants never
received Murphy‟s permission to make use of the Image.
When Murphy discovered the Image on the WKXW
website, he communicated, via his attorney, with WKXW,
demanding that the alleged infringement cease. Shortly
thereafter, Carton and Rossi made Murphy the subject of one
of their shows, allegedly stating that one should not do
business with him because he would sue his business
partners. They also allegedly implied that Murphy, who
identifies himself as a married heterosexual and the natural
father of children, was a homosexual.
In April 2008, Murphy sued the Station Defendants for
violations of § 1202 of the Digital Millennium Copyright Act
of 1998 (“DMCA”), copyright infringement under the
Copyright Act, 17 U.S.C. § 101 et seq., and defamation under
New Jersey law. Murphy then served various discovery
requests upon the Station Defendants, including deposition
requests for Carton and Rossi and a corporate representative
of Millennium Radio Group. At the behest of both Murphy
and the Station Defendants, a number of delays in the
4
discovery process followed. The magistrate judge held a
conference with the parties after the end of the discovery
period designated in the original case-management schedule,
at which point only limited discovery had actually taken
place. At that conference, the judge set a June 2009 deadline
for the Station Defendants to file a motion to dismiss for
failure to state a claim with respect to both the defamation
and the DMCA claims.
1
In May 2009, Murphy served additional discovery
requests on the Station Defendants, who, in response,
requested a stay of discovery while the motion to dismiss was
pending. The magistrate judge granted this stay.
The Station Defendants then filed a motion for
summary judgment on all claims. In response, Murphy filed
a motion pursuant to Fed. R. Civ. P. 56(f) (now Fed. R. Civ.
P. 56(d)), with accompanying affidavit, requesting additional
discovery before the resolution of any summary judgment
motions.
In March 2010, the District Court denied Murphy‟s
motion pursuant to Fed. R. Civ. P. 56(f) and granted the
Station Defendants‟ motion for summary judgment on all
1
Murphy describes this in the current briefing as a motion to
dismiss. Some of the papers suggest that it was scheduled as
a motion for summary judgment. The difference is
inconsequential for our purposes.
5
counts. Murphy now appeals the grant of summary judgment
on all counts.2
II.
Discussion
A. DMCA claim
Murphy argues that, by reproducing the Image on the
two websites without the NJM credit identifying him as the
author, the Station Defendants violated the Digital
Millennium Copyright Act. The DMCA was passed in 1998
to address the perceived need of copyright owners for “legal
sanctions” to enforce various technological measures they had
adopted to prevent the unauthorized reproduction of their
works. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437,
458 (2007). It also served “to conform United States
copyright law to its obligations under two World Intellectual
Property Organization („WIPO‟) treaties, which require
contracting parties to provide effective legal remedies against
the circumvention of protective technological measures used
by copyright owners.” MDY Indus. v. Blizzard Entm’t, Inc.,
629 F.3d 928, 942 (9th Cir. 2010).
2
The District Court had jurisdiction pursuant to 28 U.S.C. §§
1331 and 1367. We have jurisdiction under 28 U.S.C. §
1291. Our review of the District Court‟s grant of summary
judgment is plenary, which means that we will affirm only if
there are no genuine issues of material fact and the moving
party is entitled to judgment as a matter of law. Noel v.
Boeing Co., 622 F.3d 266, 270 n.4 (3d Cir. 2010).
6
The most well-known provision of the DMCA, § 1201,
grants a cause of action to copyright owners for the
“circumvent[ion of] a technological measure that effectively
controls access to a work.” 17 U.S.C. § 1201(a)(1)(A).3
Thus, for example, if a movie studio encrypts a DVD so that
it cannot be copied without special software or hardware, and
an individual uses his own software to “crack” the encryption
and make copies without permission, the studio may pursue
the copier both for simple infringement under the Copyright
3
Section 1201 provides:
(a) Violations regarding circumvention of
technological measures.—
(1)(A) No person shall circumvent a
technological measure that effectively controls
access to a work protected under this title...
(3) As used in this subsection--
(A) to „circumvent a technological measure‟
means to descramble a scrambled work, to
decrypt an encrypted work, or otherwise to
avoid, bypass, remove, deactivate, or impair a
technological measure, without the authority of
the copyright owner; and
(B) a technological measure „effectively
controls access to a work‟ if the measure, in the
ordinary course of its operation, requires the
application of information, or a process or a
treatment, with the authority of the copyright
owner, to gain access to the work.
7
Act and, separately, for his circumvention of the encryption,
which is a “technological measure” designed to “control . . .
access to” the DVD, under the DMCA. See Universal City
Studios, Inc. v. Corley, 273 F.3d 429, 444 (2d Cir. 2001).
Before the passage of the DMCA, the studio would have had
only a cause of action under the Copyright Act. The DMCA
has been criticized in some circles for its “potentially
overbroad scope . . . and its ability to chill legitimate and, in
some cases, constitutionally protected speech.” G.
Parchomovsky & P. Weiser, Beyond Fair Use, 96 Cornell
Law Review 91, 104 (2010).4
Murphy‟s claim against the Station defendants
involves § 1202 of the DMCA, which deals with “copyright
management information” (“CMI”). Section 1202(b)
provides in part:
No person shall, without the authority of the
copyright owner or the law—
(1) intentionally remove or alter any copyright
management information, [or]
[...]
4
Some courts have held, for instance, that the DMCA
substantially narrows the protection offered by the “fair use”
affirmative defense to copyright infringement by permitting
plaintiffs to bring causes of action for circumvention even
when they cannot bring causes of action for infringement.
See MDY Indus. v. Blizzard Entm’t, Inc. 629 F.3d 928, 950-52
(9th Cir. 2010); contra Chamberlain Group, Inc. v. Skylink
Techs. Inc., 381 F.3d 1178, 1203 (Fed. Cir. 2004).
8
(3) distribute, import for distribution, or
publicly perform works, copies of works, or
phonorecords, knowing that copyright
management information has been removed or
altered without authority of the copyright owner
or the law, knowing or, with respect to civil
remedies under section 1203, having reasonable
grounds to know, that it will induce, enable,
facilitate, or conceal an infringement of any
right under this title.
Section 1202(c) then defines “copyright management
information” as certain types of “information conveyed in
connection with copies . . . of a work . . ., including in digital
form, . . . : (2) [t]he name of, and other identifying
information about, the author of a work . . . .”5
Murphy‟s argument is straightforward. He contends
that the NJM gutter credit identifying him as the author of the
Image is CMI because it is “the name of . . . the author of [the
Image]” and was “conveyed in connection with copies of [the
Image].” By posting the Image on the two websites without
the credit, therefore, the Station Defendants “remove[d] or
alter[ed]” CMI and “distribute[d]” a work knowing that its
CMI had been “removed or altered” in violation of § 1202.6
5
Only the type of information identified in subsection (2) is
at issue in this case.
6
Because the District Court rejected Murphy‟s argument on
this point, it did not consider whether summary judgment was
appropriate on the other elements of a § 1202 claim, such as
whether the Station Defendants acted knowing that the
removal would induce or enable infringement. Thus,
9
The Station Defendants, on the other hand, insist that
one cannot read § 1202 in isolation, but must interpret it in
conjunction with § 1201 and in light of the legislative history
of the DMCA to impose an additional limitation on the
definition of CMI. They argue that the chapter as a whole
protects various kinds of automated systems which protect
and manage copyrights. Specifically, § 1201 covers the
systems (the “technological measures” discussed above) that
protect copyrighted materials and § 1202 covers the systems
that manage copyrighted materials (such as the name of the
author of a work). Therefore, they conclude, despite the
apparently plain language of § 1202, information like the
name of the author of a work is not CMI unless it also
functions as part of an “automated copyright protection or
management system.” In other words, to remove, as the
Station Defendants did, a printed credit from a magazine
photograph which was then posted to a website does not
violate § 1202, because the credit, although apparently
meeting the definition of § 1202(c)(2), was not part of an
“automated copyright protection or management system.”
They claim that both the legislative history of the DMCA and
the language of the World Intellectual Property Organization
treaties which the DMCA implemented support such a
reading. Viewed thus, the Station Defendants argue, § 1202
will be seen not to apply to Murphy‟s name as it appeared in
the gutter credit near the Image.
We are not aware of any other federal appellate courts
which have considered whether the definition of “copyright
although the Station Defendants attempt to raise that issue
now, we take no position on it at this time.
10
management information” should be restricted to the context
of “automated copyright protection or management
systems.”7 We begin, as we must, with the text of § 1202.
“Because it is presumed that Congress expresses its intent
through the ordinary meaning of its language, every exercise
of statutory interpretation begins with an examination of the
plain language of the statute . . . . When the statute‟s language
is plain, the sole function of the courts—at least where the
disposition required by the test is not absurd—is to enforce it
according to its terms.” Alston v. Countrywide Fin. Corp.,
585 F.3d 753, 759 (3d Cir. 2009) (citations, quotations marks,
and parentheticals omitted). The exception to this rule is
narrowly cast. “Generally, where the text of a statute is
unambiguous, the statute should be enforced as written and
only the most extraordinary showing of contrary intentions in
the legislative history will justify a departure from that
language.” In re Philadelphia Newspapers, LLC, 599 F.3d
298, 314 (3d Cir. 2010) (internal quotation marks and citation
omitted).
There is nothing particularly difficult about the text of
§ 1202. Even the Station Defendants, and the courts whose
decisions they cite, do not contend that § 1202 is, in itself,
7
The district courts which have considered the question to
date have reached different conclusions. Some have indeed
adopted the Station Defendants‟ reading of § 1202. See, e.g.,
IQ Group v. Wiesner Pub., LLC, 409 F. Supp. 2d 587 (D.N.J.
2006); Textile Secrets Int’l, Inc. v. Ya-Ya Brand, Inc., 524 F.
Supp. 2d. 1184, 1198 (C.D. Cal. 2007). A number of others,
however, have rejected it. See, e.g., Agence France Presse v.
Morel, --- F. Supp. 2d ---, 2011 WL 147718, at *9 (S.D.N.Y.
Jan. 14, 2011).
11
ambiguous or unclear. Read in isolation, § 1202 simply
establishes a cause of action for the removal of (among other
things) the name of the author of a work when it has been
“conveyed in connection with copies of” the work. The
statute imposes no explicit requirement that such information
be part of an “automated copyright protection or management
system,” as the Station Defendants claim. In fact, it appears
to be extremely broad, with no restrictions on the context in
which such information must be used in order to qualify as
CMI. If there is a difficulty here, it is a problem of policy,
not of logic. Such an interpretation might well provide an
additional cause of action under the DMCA in many
circumstances in which only an action for copyright
infringement could have been brought previously. Whether
or not this result is desirable, it is not absurd, as might
compel us to make a more restrictive reading of § 1202‟s
scope.8
8
The Station Defendants argue that this interpretation would
cause the DMCA to “swallow up” the Copyright Act,
effectively making the latter redundant. In fact, if an
infringer merely copies an entire work whole—as in the
example above of a pirated film on DVD—Section 1202 will
probably not be implicated, as the infringer will not have
removed or altered any CMI. The Station Defendants point
out that most fair uses will involve the removal of CMI.
However, unlike § 1201, § 1202 applies only when a
defendant knows or has reasonable grounds to know that the
removal will “induce, enable, facilitate, or conceal” an
infringement. Thus, those intending to make fair use of a
copyrighted work are unlikely to be liable under § 1202.
12
The Station Defendants argue that to read § 1202 by
itself is to take too narrow a view of the “plain language” of
the statutory text. When interpreting statutory language, we
must examine the statute as a whole, rather than considering
provisions in isolation. Samantar v. Yousuf, --- U.S. ---, 130
S. Ct. 2278, 2289 (2010). However, nothing in § 1201, the
provision regarding circumvention of “technological
measures” discussed above to which the Station Defendants
point most insistently, restricts the meaning of CMI in § 1202
to information contained in “automated copyright protection
or management systems.” Section 1201 does not mention
“copyright management information”; in fact, it does not refer
to § 1202 at all. Neither does it contain the phrase
“automated copyright protection or management systems.”9
Similarly, § 1202 does not refer to § 1201, and the definition
of CMI is located squarely in § 1202.
If, in fact, § 1201 and § 1202 were meant to have such
interrelated interpretations, it is peculiar that there is no
explicit indication of this in the text of either provision.
Instead, to all appearances, § 1201 and § 1202 establish
independent causes of action which arise from different
conduct on the part of defendants, albeit with similar civil
remedies and criminal penalties. It may strike some as more
intellectually harmonious to interpret the prohibition of
removal of CMI in § 1202 as restricted to the context of §
1201, but nothing in the text of § 1201 actually dictates that it
9
The Station Defendants do not argue that “technological
measures,” as defined in § 1201, are the same as “automated
copyright protection or management systems.”
13
should be taken to limit the meaning of “copyright
management information.”10
As for the purpose of the statute as a whole, it is
undisputed that the DMCA was intended to expand—in some
cases, as discussed above, significantly—the rights of
copyright owners. The parties here differ only as to their
conclusions regarding the extent to which the DMCA
expanded those rights. Murphy‟s definition of CMI provides
for a significantly broader cause of action than the Station
Defendants‟ does. However, the Station Defendants can
point to nothing in the statute as a whole which compels the
adoption of their reading instead of Murphy‟s. In short,
considering the purpose of the statute does not provide us
with meaningful guidance in this case.
As discussed above, therefore, in accordance with In
re Philadelphia Newspapers, we must look to the legislative
history of the DMCA only for that “extraordinary showing of
contrary intentions” which would justify rejecting a
straightforward reading of § 1202. 599 F.3d at 314 (holding
that a narrow exception to the plain meaning rule applies in
the “rare cases [where] the literal application of a statute will
produce a result demonstrably at odds with the intentions of
10
The Station Defendants point out that the title of the
chapter to which § 1201 and § 1202 belong is “Copyright
Protection and Management Systems.” However, “[i]t is a
well-settled rule of statutory interpretation that titles and
section headings cannot limit the plain meaning of statutory
text where that text is clear.” M.A. ex rel. E.S. v. State-
Operated Sch. Dist. of the City of Newark, 344 F.3d 335, 348
(3d Cir. 2003).
14
its drafters” (citing United States v. Ron Pair Enters. Inc., 489
U.S. 235, 242 (1989))). The Station Defendants rely on the
survey of the legislative history undertaken by the courts in
IQ Group v. Wiesner Pub., LLC, 409 F. Supp. 2d 587 (D.N.J.
2006) and Textile Secrets Int’l, Inc. v. Ya-Ya Brand, Inc., 524
F. Supp. 2d. 1184, 1198 (C.D. Cal. 2007). The IQ Group
decision placed most emphasis on a “white paper” of the
working group of the Information Infrastructure Task Force
(IITF), the organization that produced the first draft of §§
1201 and 1202. This white paper reported that
A combination of file- and system-based access
controls using encryption technologies, digital
signatures and steganography are . . . employed
by owners of works to address copyright
management concerns. . . . To implement these
rights management functions, information will
likely be included in digital versions of a work
(i.e., copyright management information) to
inform the user about the authorship and
ownership of a work . . . .
409 F. Supp. 2d at 594 (emphasis added). Thus, the IQ
Group court concluded, the paper “understood „copyright
management information‟ to be information . . . that is
included in digital versions of the work so as to implement
„rights management functions‟ of „rights management
systems.‟” Id. at 595. And, as the text of § 1202 was not
altered before its adoption by Congress, the court found that
this gave a clear indication of Congressional intent. Id. at
594-95. Additionally, the Senate Committee Report to §
1202 describes CMI as including “such items as the title of
the work, the author . . . CMI need not be in digital form, but
CMI in digital form is expressly included.” Id. at 596.
15
The Textile Secrets court also looked to the World
Intellectual Property Organization treaties that the DMCA
was intended to implement. The WIPO treaties use a term
“rights management information” and define it as
“information which identifies the work, the author of the
work . . . when any of these items of information is attached
to a copy of a work or appears in connection with the
communication of a work to the public.” See, e.g., WIPO
Copyright Treaty Art. 12 (adopted Dec. 20, 1996), available
at
http://www.wipo.int/treaties/en/ip/wct/trtdocs_wo033.html#P
89_12682. They require that parties to the treaties provide
adequate remedies against the “remov[al] or alter[ation of]
any electronic rights management information without
authority.” Id. (emphasis added) The Textile Secrets court
concluded that “electronic rights management information” as
used in the WIPO treaties and “copyright management
information” as used in § 1202 must be coterminous in
meaning. 524 F. Supp. 2d at 1198. Therefore, it found,
“copyright management information” must be electronic. Id.
While this analysis has some force, in the end, the
strongest case which the Station Defendants can make is that
the legislative history of the DMCA is consistent with its
interpretation, not that it actually contradicts the reading
advocated by Murphy. The IITF white paper describes CMI
as “information [that] will likely be included in digital
versions of a work . . . to inform the user about the authorship
and ownership of a work.” IQ Group, 409 F. Supp. 2d at 594.
This description leaves the question of just how that
information will be included—that is, whether it must be used
in some form of “an automated copyright protection or
16
management system” or whether it can be conveyed by other
means—entirely open.
Similarly, the WIPO treaties‟ definition of “electronic
rights management information” is “information [that] will
likely be included in digital versions of a work . . . to inform
the user about the authorship and ownership of a work.”11
Although this definition occurs in the context of a broader
discussion of systems that control access to copyrighted
works, it does not require that “electronic rights management
information” be embedded in such systems.12 In addition,
neither the WIPO treaties nor the DMCA indicate the precise
relationship between the concepts of CMI and “electronic
rights management information” as discussed in the treaties.
The Station Defendants argue that their meanings must be
identical, but Congress was certainly free, in implementing
the WIPO treaties, to define “copyright management
information” more broadly than “electronic rights
management information.”13
11
The Station Defendants agree with Murphy that, whatever
CMI is, it is not necessary for it to be “digital.” For example,
they concede that a bar code printed in ink on a paper label
might be CMI.
12
Again, the Station Defendants do not argue that CMI must
be presented in “electronic” form, only that it function in
connection with an electronic (or automated; the Station
Defendants treat the terms as interchangeable, though they are
not) copyright protection or management system.
13
There is even a textual argument that Congress did so. The
DMCA‟s definition of “copyright management information”
uses language very similar to that of the WIPO treaties‟
17
definition of “rights management information” (without a
reference to a medium or format). Compare
information conveyed in connection with copies
. . . of a work . . ., including in digital form, . . .
: (2) [t]he name of, and other identifying
information about, the author of a work . . .
17 U.S.C. § 1202(c) (the DMCA‟s definition of “copyright
management information” with respect to author-identifying
information) with
information which identifies the . . . author of
the work . . . when [this] information is attached
to a copy of a work or appears in connection
with the communication of a work . . .
WIPO Copyright Treaty Art. 12(2) (the WIPO treaties‟
definition of “rights management information” for the same).
The WIPO treaties then go on (as the DMCA does not) to
impose certain requirements concerning only electronic rights
management information, which implies that “rights
management information” might well exist in other forms. It
might therefore be argued that the DMCA‟s definition of
“copyright management information” tracks the more
expansive WIPO definition of “rights management
information,” rather than WIPO‟s narrower (if still not clearly
defined) “electronic rights management information.” If so,
then arguments about whether the WIPO treaties intended to
require electronic rights management information to function
as part of “an automated copyright protection or management
system” are irrelevant.
18
Thus, while it is possible to read the legislative history
to support the Station Defendants‟ interpretation of CMI, that
history does not provide the “extraordinary showing of
contrary intentions” which would compel us to disregard the
plain language of the statute. This is especially so because
the Station Defendants are essentially asking us to rewrite §
1202 to insert a term—that is, “automated copyright
protection or management system”—which appears nowhere
in the text of the DMCA and which lacks a clear definition.
We would need compelling justification indeed to adopt such
a statutorily-unmoored interpretation.
Therefore, we find that CMI, as defined in § 1202(c),
is not restricted to the context of “automated copyright
protection or management systems.” Rather, a cause of
action under § 1202 of the DMCA potentially lies whenever
the types of information listed in § 1202(c)(1)-(8) and
“conveyed in connection with copies . . . of a work . . .
including in digital form” is falsified or removed, regardless
of the form in which that information is conveyed. In this
case, the mere fact that Murphy‟s name appeared in a printed
gutter credit near the Image rather than as data in an
“automated copyright protection or management system”
does not prevent it from qualifying as CMI or remove it from
the protection of § 1202.14
B. Copyright infringement claim
14
The Station Defendants also raise the issue of whether they
“removed” the CMI. The District Court did not address this
issue, and we need not do so at this stage of the litigation.
19
Murphy also argues that the reproduction of the Image
on the two websites without his consent infringed his
copyright in the Image.15 The Station Defendants, in
response, assert the affirmative defense of fair use.
The doctrine of fair use places important limitations on
a copyright owner‟s right to control the use of its work, so
that the statute does not “stifle the very creativity which that
law is designed to foster” by preventing further uses of the
work which enrich our culture and do not significantly
diminish the value of the original. See Video Pipeline, Inc. v.
Buena Vista Home Entm’t, Inc., 342 F.3d 191, 197 (3d Cir.
2003) (quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S.
569, 577 (1994)). As codified in 17 U.S.C. § 107, the factors
governing whether a particular use of copyrighted material is
“fair” are:
(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
15
Although Murphy challenged the use of both the original
Image and the photomanipulated images submitted by
WKXW fans on the website in the District Court, he has
appealed the finding of fair use with respect to the use of the
original Image only.
20
(4) the effect of the use upon the potential
market for or value of the copyrighted work.
These four factors may not “be treated in isolation, one
from another. All are to be explored, and the results weighed
together, in light of the purposes of copyright.” Campbell,
510 U.S. at 578. However, the analysis of the District Court
in this case relied most heavily on the first and fourth factors.
1. Purpose and character of the use
The District Court found that the first factor favored
the Station Defendants, because their use of the Image was
“transformative.” When courts evaluate the first factor,
[t]he central purpose of th[e] investigation is to
see . . . whether the new work merely
supersedes the objects of the original creation . .
. or instead adds something new, with a further
purpose or different character, altering the first
with new expression, meaning, or message; it
asks . . . whether and to what extent the new
work is transformative.
Campbell, 510 U.S. at 578-79 (internal quotation marks,
alterations, and citations omitted). The Station Defendants
assert, and the District Court found, that the Station
Defendants‟ use of the unaltered Image was transformative in
this sense. This conclusion is not persuasive. The Image was
originally created to illustrate a NJM article informing the
public about Carton and Rossi‟s “best of” award; the Station
Defendants themselves state they “used [the Image] . . . to
report to their viewers the newsworthy fact of [Carton and
Rossi‟s] receipt of the magazine‟s award.” (App‟t Br. 40)
21
Although they claim that the difference is significant, there is,
in fact, no meaningful distinction between the purpose and
character of NJM‟s use of the Image and the Station
Defendants‟ use on the WKXW website.
The Station Defendants argue further that because the
purpose of their use was “news reporting,” and news
reporting appears in the Copyright Act‟s nonexhaustive list of
potential purposes of fair use, Murphy‟s claim must
necessarily fail. Under many circumstances, reporters will
indeed be able to claim a fair use defense against claims of
infringement. For instance, had the Image itself become
controversial due to its “salacious” content, it would likely
have been fair use for a newspaper to reproduce it to
accompany an article about the controversy. However, news
reporting does not enjoy a blanket exemption from copyright.
News organizations are not free to use any and all
copyrighted works without the permission of the creator
simply because they wish to report on the same events a work
depicts. “The promise of copyright would be an empty one if
it could be avoided merely by dubbing the infringement a fair
use „news report‟ of the [work].” Harper & Row Publishers,
Inc. v. Nation Enters., 471 U.S. 539, 557 (1985) (finding
verbatim republication of key portions of Gerald Ford‟s
memoirs not to be fair use).
Instead, news reporting must satisfy the same test as
other supposedly transformative works. The Station
Defendants‟ use of the Image does not do so. Campbell has
made it clear that the “heart” of a claim for transformative use
is “the use of some elements of a prior author‟s composition
to create a new one that, at least in part, comments on that
author‟s works.” 510 U.S. at 580. However, if “the
22
commentary has no critical bearing on the substance or style
of the original . . . which the alleged infringer merely uses to
get attention or to avoid the drudgery in working up
something fresh, the claim to fairness . . . diminishes
accordingly (if it does not vanish) . . . .” Id. The First
Circuit‟s decision in Nunez v. Caribbean Int’l News Corp.,
235 F.3d 18 (1st Cir. 2000), provides an excellent example of
when the use of a photograph for news purposes qualifies as a
fair use. In Nunez, a professional photographer took several
risqué photographs of Joyce Giraud for use in Giraud‟s
modeling portfolio. Id. at 21. After the photographs were
taken, Giraud won the Miss Puerto Rico Universe
competition, and a controversy arose over whether the
photographs were inappropriate for a Miss Puerto Rico
Universe. Id. A newspaper then published three of the
photographs, along with several articles about the
controversy, prompting the photographer to sue for copyright
infringement and the newspaper to assert the fair use defense.
Id. In analyzing whether the newspaper‟s publication of the
photographs was transformative, the First Circuit noted that
the photographs serve an “informative function . . . confirmed
by the newspaper‟s presentation of various news articles and
interviews in conjunction with the reproduction.” Id. at 22.
By “using the photographs in conjunction with editorial
commentary, [the newspaper] did not merely „supersede[ ] the
objects of the original creation[s],‟ but instead used the works
for „a further purpose,‟ giving them a new „meaning, or
message.‟” Id. at 23 (quoting Campbell, 510 U.S. at 579).
By contrast, no similar broader news coverage or
editorial commentary existed in this case, as the Station
Defendants simply posted Murphy‟s photograph on their
website. The absence of any broader commentary—whether
23
explicit or implicit—significantly undercuts the Station
Defendants‟ argument that their use gave any new meaning to
the Image. Instead, it appears that the Station Defendants did
not want to go to the trouble of creating their own eye-
catching photo of Carton and Rossi to illustrate their
announcement of the NJM award, but simply appropriated the
Image for the same purpose. This is far from transformative.
And, in the absence of transformativity, other considerations,
“like the extent of [the use‟s] commerciality,” become more
important in determining which party the first factor favors.
Id.
In general, “commercialism . . .weigh[s] against a
finding of fair use.” Id. at 579. The Station Defendants have
not contested that their use is commercial. Therefore, as the
use of the image was not transformative and was commercial,
the first factor, the purpose and character of the use of the
image, weighs against the Station Defendants.
2. Impact on the market for the original
The District Court‟s finding that the fourth factor—the
impact on the market for the original—also favors the Station
Defendants was also erroneous. The District Court held that
Murphy had not established that he had experienced any
market harm simply by asserting that he would have been
willing to license the Image if WKXW had approached him.
It is true that a copyright owner cannot claim market harm
simply because he would have liked to charge for the use in
question. If that were the case, then it would be difficult
indeed for any fair use defense to succeed.
24
“The fourth fair use factor . . . 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.” Campbell,
510 U.S. at 590 (internal quotation marks and citations
omitted). When a copyright owner “clearly does have an
interest in exploiting a licensing market—and especially
where the copyright holder has actually succeeded in doing
so—„it is appropriate that potential licensing revenues . . . be
considered in a fair use analysis.‟” Princeton Univ. Press v.
Mich. Document Servs., 99 F.3d 1381, 1387 (6th Cir. 1996)
(quoting Am. Geophysical Union v. Texaco Inc., 60 F.3d 913,
930 (2d Cir. 1994)). In determining whether such a licensing
market exists, we look to “the impact on potential licensing
revenues for traditional, reasonable, or likely to be developed
markets.” Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605, 614 (2d Cir. 2006).
Murphy is a professional photographer who engages in
licensing of his work. If it were possible to reproduce his
unaltered work, as a whole, without compensation under the
guise of news reportage—a “traditional, reasonable, or likely
to be developed market[]” for professional photographers—it
would surely have a “substantially adverse impact” on his
ability to license his photographs. As the Supreme Court has
noted, “when a commercial use amounts to mere duplication
of the entirety of an original, it clearly supersedes [the
original] . . . and serves as a market replacement for it,
making it likely that cognizable market harm to the original
will occur.” Id. at 591 (internal quotation marks and citations
omitted). Such is the case here.
25
Finally, the Station Defendants suggest that there is no
market for the Image because Carton and Rossi no longer
work as a team and because the importance of the NJM award
was fleeting in any event. However, they cite no precedent
for the proposition that a copyright owner must prove
substantial demand for the work in question in order to
establish infringement.16 Clearly, at the time the Image was
posted on the WKXW website, there was at least one party
who thought the use of the Image had some value—the
Millennium Radio Group. That there may not have been
much other demand for it hardly means that the Station
Defendants were entitled to use it for free. Further, without
discovery into the relevant markets, such statements are pure
speculation on the part of the Station Defendants.17
3. Nature of the work and amount copied
Although the court spent little time on the second and
third factors of the fair use analysis, it should be noted that
they favor Murphy as well. The second factor is the “nature
of the work,” with more “creative expression” entitled to
more protection than “factual works.” See Campbell, 510
16
Obviously, however, the extent of demand for the work
may affect the calculation of damages.
17
As “fair use is an affirmative defense, its proponent would
have difficulty carrying the burden of demonstrating fair use
without favorable evidence about relevant markets.”
Campbell, 510 U.S. at 590. The Station Defendants fault
Murphy for not providing more evidence about the market for
his work, but this misplaces the evidentiary burden.
26
U.S. at 586-87. The Image is more creative expression than
factual work. See, e.g., Southco., Inc. v. Kanebridge Corp.,
390 F.3d 276, 284 (3d Cir. 2004). The third factor is the
amount of the work copied. Campbell, 510 U.S. at 586. The
Station Defendants copied the Image in its entirety. Thus,
both factors weigh in favor of Murphy.
In finding in favor of the Station Defendants, the
District Court relied heavily on Campbell‟s relative
discounting of the weight of the second and third factors in
the context of parody. However, Campbell explicitly treated
parody as “a difficult case,” because “[w]hen parody takes
aim at a particular original work, the parody must be able to
„conjure up‟ . . . the original . . . .” 510 U.S. at 588. Thus,
copying is not only helpful, but often necessary, in creating a
parody, and even extensive copying of creative expression
may be fair use in genres which rely for their artistic effect, at
least in part, on the evocation of the original. The Station
Defendants do not assert that their use of the unaltered Image
was a parody. At the very least, the court has not explained
how the use by the Station Defendants is of such a nature as
to require analysis similar to that of parody.
Thus, all four factors here favor Murphy and the
District Court erred in finding that the Station Defendants‟
reproduction of the unaltered Image on the WKXW website
was a fair use.18
18
Murphy complains that the District Court did not engage in
an independent analysis of the posting of the unaltered
photograph on myspacetv.com. It does not appear,
however—at least from the present record—that the analysis
27
C. Discovery and the defamation claim
As mentioned above, when the Station Defendants
sought summary judgment on Murphy‟s defamation claim, he
filed a motion pursuant to Fed. R. Civ. P. 56(f) (now 56(d)).
Such a motion is, of course, the proper recourse of a party
faced with a motion for summary judgment who believes that
additional discovery is necessary before he can adequately
respond to that motion. Doe v. Abington Friends School, 480
F.3d 252, 257 (3d Cir. 2007). “District courts usually grant
properly filed Rule 56(f) motions as a matter of course. This
is particularly so when there are discovery requests
outstanding or relevant facts are under the control of the
moving party.” Id. (internal quotation marks and citations
omitted). The standard of appellate review is abuse of
discretion. Renchenski v. Williams, 622 F.3d 315, 339 (3d
Cir. 2010).
A claim of defamation under New Jersey law generally
requires an analysis closely grounded in the facts of the
individual case. “As a general rule, a statement is defamatory
if it is false, communicated to a third person, and tends to
lower the subject‟s reputation in the estimation of the
community or to deter third persons from associating with
him.” Lynch v. N.J. Educ. Ass’n, 161 N.J. 152, 164-65
(1999). “In determining whether the statements are
defamatory, we must consider the content, verifiability, and
context of the challenged statements.” Ward v. Zelikovsky,
136 N.J. 516, 529 (1994).
should be any different from the analysis for the posting on
the WKXW website.
28
In this case, Murphy has been able to obtain only
limited information about the fundamental basis of his claim,
that is, the actual statements Carton and Rossi made on air
about him. The Station Defendants destroyed their recording
of the show shortly after airing, and no transcript has been
produced. In such circumstances, in order for Murphy to
make out his claim, it would obviously be essential for him to
depose the people who made the statements in the first place,
that is, Carton and Rossi. Yet, despite his timely attempts to
schedule them for depositions, he was unable to do so before
the District Court granted summary judgment against him.
The Station Defendants have spent little time rebutting
the specific arguments offered by Murphy as to why the
information he sought was relevant to the resolution of their
summary judgment motion. Instead, they argue that Murphy
could not have been harmed in any way by the foreclosure of
discovery because, for the purposes of resolving that motion,
the District Court accepted as true all allegations made in the
complaint. This argument is peculiar, as it implies that, in
effect, Murphy was obligated to plead in his complaint not
merely sufficient facts to state his claim for the purposes of
Fed. R. Civ. P. 12(b), but also to survive summary judgment.
The Station Defendants cite no precedent for this approach,
and we are aware of none.
Unfortunately, the District Court offered essentially no
analysis in its order denying Murphy‟s 56(f) motion, leaving
it unclear what, if any, additional analytic basis its denial may
have had. Under these circumstances, and given that
Murphy‟s arguments respecting the importance of the
information he sought are plausible, it would not be
29
appropriate to defer to the District Court‟s determination on
this point. Therefore, with respect to the defamation claims,
the District Court‟s decision is vacated and remanded to
permit Murphy to conduct adequate discovery.19
III.
Conclusion
For the foregoing reasons, we will vacate the District
Court=s grant of summary judgment in the Station
Defendants‟ favor on all counts.
19
We therefore do not reach the other issues raised on appeal,
such as whether an allegation of homosexuality is susceptible
of a defamatory meaning under New Jersey law.
30