The Volokh Conspiracy
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Use of Still from "Girls Do Porn" Video to Criticize Later Employer of Alleged Participant Is Fair Use, not Copyright Infringement
From Judge George Daniels' opinion Tuesday in MCM Group 22 LLC v. Perry (S.D.N.Y.), which strikes me as quite correct, given the fair use doctrine:
Plaintiff is a limited liability company and the owner by assignment of a registered copyright for the Video. Plaintiff's predecessor-in-interest is a non-party to this suit and is referred throughout the Complaint as "Jane Doe." In 2015, Jane Doe appeared in the Video, which was filmed by the founders and operators of Girlsdoporn.com and Girlsdotoys.com (collectively, "GDP"). As revealed by a series of criminal cases [which led to guilty pleas], GDP was a criminal sex trafficking enterprise, in which the website's operators recruited victims to appear in its videos by fraudulently representing that the videos would never be posted online or released in the United States.
On December 14, 2021, Judge Janis L. Sammartino of the Southern District of California … issued a restitution order in Garcia's case … that provided, inter alia, that the victims specified in the order "hold[ ] superior right, title, and interest in the images, likenesses, and videos depicting that [victim] produced by GDP" and "shall have and recover all property that GDP … took from them, including images, likenesses, videos, and copyrights." Jane Doe was one of the specified victims, so the Restitution Order awarded her "superior right, title, and interest" in the Video. She subsequently assigned her rights in the Video to Plaintiff "for the purpose of prosecuting the use of copies, still images, and derivatives of the [Video] through DMCA takedown notifications and, when necessary, civil actions."
On June 13, 2022, Defendant Lyndon Perry published a post (the "Tweet") on the social media platform Twitter (currently known as X). The Tweet included a composite of two images: a still frame from the Video superimposed onto a screenshot of an online article from Forbes. The still frame from the Video depicts a fully clothed woman—who is identified as "Jessica" in the Video's title—sitting alone on a bed. The still frame includes text of an apparent conversation between the woman and an off-screen interviewer in which the woman states that she is studying business and marketing.
The screenshot from the Forbes article shows a profile of an individual, who is identified as the head of institutional lending at Celsius Network, in the publication's 30 Under 30 list for 2020. The Tweet juxtaposes these two images, suggesting that they are the same woman.
The Tweet was Perry's second post in a larger thread. The first post in the thread shows an advertisement for Celsius Network next to a screenshot of a Reuter's article entitled, "Crypto Firm Celsius Pauses All Transfers, Withdrawals, as Markets Tumble." Defendant then replied to this post with the Tweet, which included the composite image and the message "Same company btw."
MCM Group (the assignee of the copyright in the videos) sued for copyright infringement, but the court rejected the claim:
"In 1976, Congress enacted § 107 of the Copyright Act, giving statutory recognition to the long existing common law doctrine of fair use." Section 107 provides that:
[T]he fair use of a copyrighted work, … for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
- the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use upon the potential market for or value of the copyrighted work.
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors….
"A use that has a further purpose or different character is said to be 'transformative.'" This includes uses that "transmit a message that differs from the message communicated by the original." But as the Supreme Court recently clarified, accepting "any further purpose, or any different character, would narrow the copyright owner's exclusive right to create derivative works." Thus, in addition to a further purpose or character, "there must be justification for copying." Examples of further justifications include instances in which the copying critiqued or commented on the original, "provided information to the public about the copied work, [ ] enabled the furnishing of valuable information on any subject of public interest, or rendered a valuable service to the public." Notably, "the more transformative the [ ] work, the less will be the significance of the other factors, like commercialism, that may weigh against a finding of fair use."
Defendant argues that his use was transformative because Defendant posted the Tweet squarely for the purposes of commenting on Celsius' business struggles and its message differed from the original pornographic film. Plaintiff counters that the Tweet was "commercial" in nature and that additional facts must be developed through discovery to determine exactly what message the Tweet conveyed.
It is clear from the face of the Complaint that the Tweet utilized the still frame for a transformative purpose. The Video is a pornographic film with the express purpose of displaying explicit sexual content. Conversely, the Tweet does not contain any nudity or sexually explicit imagery and is framed as a commentary on Celsius. Defendant posted the Tweet as a direct reply to his previous tweet, which juxtaposed Celsius' marketing with critical reporting on the company. The Tweet's text—"Same company btw"—is a clear reference to Celsius when viewed in the context of the entire thread.
The Defendant's reproduction of the still frame in the composite image is in service of this commentary. The reproduction of a copyrighted image in a larger collage is transformative where "the copyrighted work is used as 'raw material,' in furtherance of distinct creative or communicative objectives." Here, Defendant superimposed the still frame from the Video over a Forbes profile of Celsius' former head of international trading. By arranging the images of two women, both identified as being named Jessica, side by side, the composite image vaguely implies that a Celsius executive appeared in a pornographic film. The still frame's accompanying text stating that Jane Doe was studying business and marketing further supports this implication.
In short, a reasonable observer would understand the Tweet as a commentary on Celsius with a markedly different purpose from the original pornographic video. Further, as a commentary on a "subject of public interest" (i.e., Celsius' decision to pause its customer's transfers and withdrawals), the Tweet's transformative use of the still frame justifies its copying.
{This Court makes no finding as to what Defendant subjectively intended to communicate through the Tweet, as the Defendant's intentions are not alleged within the complaint or obvious from the Tweet itself. That said, one could likely surmise that Defendant intended to cast aspersions on Jane Doe's character and the judgment of Celsius for perhaps employing someone who had appeared in a pornographic film. This opinion in no way approves or endorses that view. For the purposes of deciding this motion, it is enough for this Court to note that whatever Defendant subjectively intended to communicate, it is clearly not sexually explicit or pornographic in nature.}
Plaintiff argues that the alleged "commercial" nature of the Tweet weighs against fair use. But even assuming that the Tweet was posted "for the purpose of achieving additional donations or pledges," "that is not dispositive of the first factor, particularly in light of the inherently transformative role" of the Tweet. Thus, this Court's determination that the Tweet was "substantially transformative" allows it to discount the alleged "secondary commercial nature of the use." …
[The amount-and-substantiality factor also] weighs in favor of the fair use defense. It is undisputed that the Tweet reproduced a single frame of a forty-six-minute video. Plaintiff contends that this objectively small amount of copying is not a fair use because "the 'heart of the work' is any portion [of the Video] that identifies [Jane Doe], specifically images of her face, given that she is the victim of criminal sex trafficking and the [Video] is the evidence thereof." But the central inquiry under this factor is not whether the portion copied is the most important part of the work to the copyright holder, but rather whether the portion copied contains the central creative expression of the original such that "the secondary work might serve as an effectively competing substitute for the original."
The Tweet does not capture the central expression of the Video and is not a substitute for the original. The heart, or core, of the Video is its sexually explicit imagery. The Tweet is not pornographically explicit and shows a fully clothed woman describing her career interests. Accordingly, because the Defendant copied an insubstantial amount of the Video in furtherance of a transformative purpose, the third factor weighs in favor of fair use….
The … "the effect of the use upon the potential market for or value of the copyrighted work" … factor focuses on "whether the copy brings to the marketplace a competing substitute for the original, or its derivative, so as to deprive the rights holder of significant revenues because of the likelihood that the potential purchasers may opt to acquire the copy in preference to the original." Like the other factors, a court's analysis of the market effect is often influenced by whether the secondary use is transformative. "[T]he more transformative the secondary use, the less likelihood that the secondary use substitutes for the original." … "[W]hen a lethal parody, like a scathing theater review, kills demand for the original, it does not produce a harm cognizable under the Copyright Act." ….
[This] factor weighs in favor of fair use. As detailed above, Defendant's use of a single still frame from the Video was a transformative secondary use intended as a form of commentary on Celsius. Further, the Defendant's use of a single frame from the video did not include any sexually explicit imagery. In short, a person in the market for a sexually explicit, pornographic film would not turn to the Tweet. Because Defendant's use of the still frame would not, and could not, usurp the market for the Video, the fourth factor weighs in favor of fair use….
Note that the lawsuit alleged only copyright infringement, not defamation, false light invasion of privacy, or any other tort.
Jay Wolman and Marc Randazza (Randazza Legal Group PLLC) represent defendant Perry.
