August 1, 2021
Milton Springut is a partner at Springut Law PC
Posting copyrighted photos on Web sites and social media has led to a flood of copyright suits seeking financial redress for infringement.
In 2021 it seems that social media is as commonplace as $5 coffee and face masks. And as sites such as Instagram and Twitter have grown in popularity so too has the number of spawned disputes from posts on these platforms, often generating legal problems for those involved.
One particularly insidious issue that has entrapped numerous social media users is the posting of photos of themselves or their products to which they do not own the rights to, resulting in legal actions for copyright infringement.
Most of these cases involve celebrities, such as the recent lawsuit against the pop star Dua Lipa for posting a copyrighted photo of herself that was taken by a paparazzi. And it is not only celebrities who are getting sued for posting content, but also luxury brands have been facing copyright infringement actions for posting photos to which — while containing their products — they do not own the rights.
A recent exemplary decision of this genre of litigation is Elatab v. Hesperios brought in the federal court in New York, where the brand Hesperios was sued for just this.
The brand claimed fair use as a defense. The district court did not find Hesperios’ arguments persuasive and denied its motion to dismiss.
As the Hesperios case heads towards a full trial it serves as a vital reminder to other luxury goods and fashion companies as to the importance of obtaining permission or a license before posting third-party content on social media.
The post
The Hesperios controversy started with a simple Instagram post of a photo of model Bella Hadid wearing the brand's clothing along with the caption “@Bellahadid in our Lou tank and Lou Bel skirt knit set in fawn brown. Coming soon for Fall, although available now in summer colours.”
Apparently this was done without obtaining permission or a license to publish the photo from the photographer, Jawad Elatab, and Mr. Elatab filed suit alleging infringement under § 501 of the Copyright Act.
In response, Hesperios moved to dismiss the lawsuit — claiming that its instagram post constituted fair use, and thus its use of the photograph was within the bounds of copyright law.
The Fair Use Doctrine
Copyright protection has long been limited by the fair use doctrine, which allows unlicensed use of others’ content for certain “fair” purposes.
The Copyright Act sets out four factors for courts to consider: the purpose and character of the use, the nature of the copyrighted work, the amount of the copyrighted work taken, and the effect on the market.
The realities of determining whether a particular use is “fair” often results in murky and hard-to-predict outcomes.
Some types of use are clearly fair — the Copyright Act explicitly mentions criticism, comment, news reporting, teaching, scholarship and research.
On the other hand, copying a work to distribute copies in direct competition with the copyright owner — or in another manner that would hurt their profits — is rarely a fair use.
Many recent decisions have focused on whether a use is “transformative” to determine whether it is fair – meaning it creates something new and different.
Hesperios’ defenses
Focusing on the first fair use factor, Hesperios argued that its use of Mr. Elatab’s photograph was transformative as it created the clothing that Ms. Hadid was wearing in the shot, and its purpose in posting the image “was to invite its Instagram followers to provide commentary on the photograph.”
The court found this argument unpersuasive, faulting Hesperios for posting the copyrighted image without modifications of any kind, as well as a caption describing what Ms. Hadid was wearing and when the products would be available to purchase.
The court found that the post did not invite Hesperios’ Instagram followers to provide commentary nor did the caption provide any critique of the photograph.
Thus, it stated that “while commentary and critique have been considered fair use, the Court cannot credit [Hesperios’] assertion that its posting of the photo alters the original message of the photograph.”
In addition to finding that the post was not transformative, the court also held that Hesperios failed to prove that it had any other purpose in posting the photograph aside from commercial use to advertise its clothing. The first factor was, therefore, found to count against a finding of fair use.
Hesperios did not fare much better with the other factors.
In regard to the fourth factor, for example, the court found that Hesperios’ posting of the photo for the purpose of promoting its own clothing had the potential to usurp Mr. Elatab’s market for licensing the photo.
It was further noted that past case law has held that the unauthorized posting of a photograph will, on its face, invade a copyright owner’s statutory right to license his or her photo to others for reproduction.
Such a conclusion is only logical given that licensing is a critical component in the economic exploitation of intellectual property — allowing the IP owner to leverage a licensee’s resources to exploit the IP for mutual benefit.
Thus, by posting the photo without first obtaining a license Hesperios undermined the potential commercial value of Mr. Elatab’s work. Accordingly, this factor was also found to be held against Hesperios.
All four fair sue factors were decided against Hesperios, thus sinking its defense of fair use.
Hesperios also argued that it had not committed copyright infringement because a singular posting of a photograph for a negligible amount of time was de minimis. That is to say that its copying was only minimal as the piece of the copyrighted work used was not significant enough in relation to the whole to constitute infringement, and is thus legally allowed.
This contention did not fare much better for Hesperios. The court found that in this case, Hesperios “has copied the entirety of the photograph and posted the photograph without modification on its Instagram,” and thus it cannot be said that the use was de minimis.
Cautionary tale for luxury goods companies
Visual images are central to online marketing — especially when it comes to social media outlets such as Instagram and TikTok.
While luxury goods companies create a great deal of digital content, including visual images which they use both in social media and on their own Web sites to promote their product lines, this is not always the case with images posted on social media. And when the intellectual property to a photo is owned by a third party — rather than the brand — copyright law can pose pitfalls if the images are used improperly.
The Hesperios saga serves as a continuing cautionary tale to brands and others to be mindful of the content they are posting on social media, and that fair use may not protect them against copyright infringement for posting unauthorized photos.
Even if the brand believes the post to be transformative and de minimis, courts may not be so willing to accept such arguments.
When posting an image created and owned by third-parties, brands considering use of others’ content would be well advised to consider the ramifications of the Hesperios decision.
Milton Springut is a partner at Springut Law PC, New York. Reach him at ms@springutlaw.com. Mr. Springut's opinions are solely his.
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