DALLAS – The January 2020 issue of the Dallas Bar Association’s Headnotes newspaper included an article by litigation attorneys Kevin Barnett and Ryan Marrone from Ferguson Braswell Fraser Kubasta PC entitled “Fair Use & Photos: Spreading Cheer to Grinchy Copyright Owners.” While rhythmically exploring the Seussian-inspired world of “Photo-Ville,” Kevin and Ryan discussed the practical implications of copyright infringement in the photography industry with respect to the inclusion of copyrighted works created by third parties. The article is printed on page 10 of the issue (View Here), and its text is presented below:

 

Fair Use & Photos: Spreading Cheer to Grinchy Copyright Owners
By Kevin Barnett and Ryan Marrone

Headnotes – January 2020

Last fall, a photographer’s Grinch-themed photo shoots went viral with coverage in People, TODAY, Pop Sugar, and other media outlets. Before long, Dr. Seuss Enterprises, L.P. caught wind and sent the photographer a cease and desist email, noting its ownership of How the Grinch Stole Christmas!, The Grinch Face, GRINCH, and other related trade and service marks. Though copyright law establishes that a photographer owns a copyright as soon as the shutter is pressed, inclusion of a protected character, icon, or symbol in a photograph can expose a photographer to grinchy—er, legal— consequences.

Essential to determining whether a photographer’s work constitutes copyright infringement is the fair use doctrine, codified at Section 107 of the Copyright Act. Section 107 establishes four nonexclusive factors to be considered in determining fair use: 1) the purpose and nature of the use in question; 2) the nature of the source work; 3) the amount and substantiality of the source work used; and 4) the effect on the potential market for or value of the source work. The first and fourth factors are typically the most determinative.

Further, the use is more likely to constitute copyright infringement where: 1) it is for commercial as opposed to educational or non-profit purposes; 2) the source work is unpublished and “creative” rather than being published and “factual”; 3) a large proportion of the source work or the “heart of the work” is utilized as opposed to only a small proportion or just peripheral elements; and 4) there is a marketplace for the source work and the market or value of the source work is harmed.

Turning to the photo shoot, it was clearly marketed as Grinch-themed and utilized the exact Grinch character. Applying the fair use test: 1) the shoot was commercial in nature; 2) the source material was published but is a creative work of fiction; 3) the “heart of the work” was utilized as the Grinch is the title character; and 4) the use undermined Dr. Seuss Enterprises, L.P.’s ability to license and profit from the use of its character. Notably, the use was not for the purpose of criticism, comment, news reporting, teaching, scholarship, or research, which are non-infringing uses under the Copyright Act. In short, the photographer’s use very likely constituted copyright infringement and Dr. Seuss Enterprises, L.P. was entitled to be grinchy about it. But could the photographer have avoided the cease and desist surprise? Perhaps…

A Photographer
Down in Photo-ville Liked Grinch shoots a lot . . .

But Dr. Seuss
Enterprises
Most certainly did NOT!

As the copyright owner,
It disliked when its Works,
Were taken from it
Without receiving due perks.

Then Dr. Seuss Enterprises got an
idea!
A lovely idea!
DR. SEUSS ENTERPRISES GOT
A WONDERFUL, LOVELY, IDEA!

“I know just what we’ll do!” The
Seuss Board exclaimed!
Contacting their counsel, most
unashamed,
“Write us a letter to make sure that
they know,”
“Our works have been copyrighted,
since long ago.”

“A Cease and Desist!” They shouted
with glee!
“Should put a quick stop to the
Photographer’s spree!”
And the outside counsel did just
the same,
Sending the letter and placing the
blame.

And comply with the letter the
Photographer did,
Because the use of the works the
Code did forbid.
Sadly, in Photo-ville, the
Photographer sat,
“I wish I had never gotten into this
spat.”

Then the Photographer smiled and
had a great thought,
“Buying a license, that’s worth a
shot!”
In response to the letter, promising
cuts,
Of the profits for each photo shoot,
no ifs, ands, or buts.

And what happened next . . . ?
Well . . . in Photo-ville they say
That Seuss banks and wallets
Grew three sizes that day!

And the minute Seuss Enterprises
agreed to the ask,
Granting a license for the Photog-
rapher’s task.
Offering a solution, an end to the
fight!
And it . . .

. . . IT ITSELF . . . !
Guarded its Grinch copyright.

Admittedly, obtaining a license is not always an option as copyright owners have no obligation to license works. Although Dr. Seuss Enterprises, L.P. has a director of global licensing, Dr. Seuss himself once said he never wanted to license his characters to anyone who would “round out the edges.” The moral of the story: using a copyrighted character for a commercial purpose without permission is risky and may result in facing off with an entity having the means and appetite to rigorously enforce its intellectual property. It appears our intrepid photographer was simply put on notice that the copyright was being policed—but it is best to avoid the situation entirely, especially if the Grinch has yet to fill up on the roast beast. HN

 

Kevin E. Barnett and Ryan D. Marrone are attorneys at Ferguson Braswell Fraser Kubasta PC. They can be reached at kbarnett@fbfk.law and rmarrone@fbfk.law, respectively.

Dallas Bar Association Headnotes: https://www.dallasbar.org/index.cfm?pg=Headnotes

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