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Otto v. Hearst Communications, Inc.

District court holds that online publication’s use of photograph of President Trump “crashing a wedding” pulled from Instagram to accompany article reciting factual information about event captured in that photograph did not constitute fair use.

Plaintiff Jonathan Otto asserted a claim for copyright infringement against Hearst Communications Inc., the owner of Esquire magazine and website, based upon the Esquire website’s inclusion, in an article posted online, of a photo Otto took on his phone. The photo captured a surprise appearance by President Trump at a wedding Otto attended at Trump National Golf Club in Bedminster, New Jersey. Otto photographed the president with the bride at the reception and used an editing application to slightly modify the image. Though Otto texted a copy of the photograph to a friend, another of the wedding guests, he did not share the image on social media or with any other individuals. However, the morning after the wedding, Otto found his photograph of President Trump in several media publications, including on the Esquire website. Esquire had credited a relative of the bride for Otto’s photograph because it had obtained the image from her Instagram page (though Esquire had not sought her permission to use the photograph). The Esquire posting consisted of a few photographs, including Otto’s, and a short article stating that Trump had made a surprise appearance at the event but that such an appearance by Trump was not unusual. The article noted that the Bedminster golf course at one time advertised that “If Trump is on-site for your big day, he will likely stop in & congratulate the happy couple.” Upon seeing the photograph in many news outlets the day after the wedding, Otto texted the friend with whom he had shared the photo remarking, “I want my cut.” Otto contacted an attorney and registered a copyright on the image that day and was ultimately awarded a registration. Shortly thereafter, he commenced several actions against the publications using the photograph. All those actions, with the exception of the action against Hearst, settled privately.

Otto and Hearst filed cross motions for partial summary judgment. Otto sought summary judgment with respect to Hearst’s liability for copyright infringement and Hearst’s fair use defense, among its other affirmative defenses. Hearst filed its motion on its fair use defense and related to whether the copyright infringement was willful, an element affecting the amount of statutory damages that might be awarded. Judge Gregory Woods of the Southern District of New York granted Otto’s motion in full and denied Hearst’s motion in full.  

First, the court found that Otto had a proper registration in the photograph, which when coupled with the uncontested fact that Hearst actually copied Otto’s photograph and that Hearst’s published image was substantially similar to Otto’s, established Hearst’s liability for copyright infringement.  

Second, the court determined that Hearst could not claim fair use, despite the Copyright Act’s explicit fair use carve-out for news reporting. In coming to this conclusion, the court assessed each of the four fair use factors, noting that no factor was dispositive and that “the ultimate test of fair use is whether the copyright law’s goal of promoting the 'Progress of Science and useful Arts would be better served by allowing the use than by preventing it.” In assessing the first factor — the purpose and character of the work — the court remarked that to be protected, Hearst’s use must provide “‘new expression, meaning, or message’ to the original,” and that while the addition of commentary or criticism was not required, it would make it more likely that a fair use defense would apply. The court found that Hearst had not provided any additional commentary or message, and instead used Otto’s photograph solely to illustrate the content of that image — the “memorable event” of the president appearing at a private wedding. In drawing this conclusion, the court remarked that “[i]t would be antithetical to the purposes of copyright protection to allow media companies to steal personal images and benefit from the fair use defense by simply inserting the photo in an article which only recites factual information — much of which can be gleaned from the photograph itself.” The court concluded that this fair use factor, along with (i) the amount of the work used and (ii) the adverse impact Hearst’s use had on the “primary market” for Otto’s photo, weighed in favor of Otto.

The court found an additional fair use factor — the nature of the copyrighted work — weighed in Hearst’s favor, but this was insufficient to turn the entire fair use analysis. The court found that Otto’s photograph was more factual than creative because Otto had not made an effort to stage the photograph. In addition, because the photograph had been widely disseminated by several media outlets, Hearst’s single use did not threaten Otto’s right of first publication.  Nevertheless, given the weight of the other fair use factors in Otto’s favor, the court determined that a fair use defense could not apply, remarking, “[a]llowing a news publisher to poach an image from an individual’s social media account for an article that does little more than describe the setting of the image does not promote ‘the Progress of science and useful Arts,’” as intended by the Copyright Act.

Third, the court assessed Hearst’s defenses of waiver and consent, finding again in favor of Otto.  Citing Otto’s text that he wanted his “cut” of the photo’s publication, the court found that no reasonable jury would conclude that Otto had intended to waive his rights by texting it to his friend. The court drew this conclusion even though Otto did not advise his friend not to share the photo with others or on social media. The court similarly found Otto’s text foreclosed any consent defense because it disproved that Otto intended for his friend to disseminate the photograph.

Finally, the court denied Hearst’s motion with respect to whether its infringement was willful, finding that a reasonable jury could differ as to whether Hearst had constructive knowledge of its infringement. The court pointed to other lawsuits against Hearst as potentially evidencing willful blindness to copyright holders’ rights. The court was also unpersuaded by Hearst’s crediting of the individual from whose Instagram profile the image was pulled because there was no evidence that Hearst had made any effort to seek permission to use the image. As a result, the case will proceed before a jury to resolve whether Hearst’s infringement was willful. 

Summary prepared by Jonathan Zavin and Sarah Levitan