Mercury News Loses Attempt To Dismiss "Fair Use" Suit

By Donald R. Winslow

The San Jose Mercury News lost a motion requesting that the Federal District Court for the Northern District of California dismiss a copyright infringement case brought against it by freelance photographer Christopher R. Harris for publishing his photograph of Southern author Walker Percy along with a Mercury News review of the book The Life You Save May Be Your Own: An American Pilgrimage by author Paul Elie. The book contained the photograph of Percy that was taken by Harris, and the newspaper ran the photograph from the book along with the book review.

Harris, an NPPA member who is now a professor at the College of Mass Communications at Middle Tennessee State University in Murfreesboro, TN, shot the photograph while on assignment for Esquire magazine. Harris claims that he was never contacted by the newspaper for rights to use the image, and that he was never paid for its use. He also claims in his suit that the newspaper removed his copyright notice from the photo credit when it published the picture, possibly violating a legal requirement under Federal Copyright statues. Harris worked on assignment for The New York Times, Time, and Newsweek prior to his current teaching position, and he was one of the original photographers associated with the GAMMA/Liaison agency.

On January 3, 2006 the Federal District Court for the Northern District of California ruled against the Mercury News, denying its motion for summary judgment. "[T]he Court cannot say as a matter of law that use of a copyrighted photograph in a book review, in which the book clearly states that the photograph is copyrighted, constitutes fair use," wrote District Court Judge Charles R. Breyer (brother of U.S. Supreme Court Justice Stephen Breyer).

In the motion the Mercury News introduced evidence that its practice of accompanying book reviews with copyrighted photographs taken from the book under review is common to other metropolitan newspapers throughout the country (the Los Angeles Times, The Philadelphia Inquirer, and others), and that the practice is legal under the “fair use” defense.

Denying the motion, Judge Breyer wrote that the "Defendant argues that use of the photo was the equivalent of a pictorial quotation from the book and similarly falls under the fair use exception. Yet the photograph was obviously marked as a copyrighted photograph in the book, both on the page the photograph appeared and then again in the credits in the back of the book. In other words, the photograph was a copyrighted work within a copyrighted work. … As a result, the Court cannot say as a matter of law that use of a copyrighted photograph in a book review, in which the book clearly states that the photograph is copyrighted, constitutes fair use. Accordingly, defendant’s motion for summary judgment is denied."

New York Attorney Mickey H. Osterreicher, an NPPA member since 1972 who was a photojournalist for both television and newspapers for three decades before entering law, said, "The 1961 Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law cites examples of activities that courts have regarded as fair use. The one most pertinent to this case would be 'quotation of excerpts in a review or criticism for purposes of illustration or comment; or for clarification of the author’s observations.'"

Osterreicher said that a December 2005 advisory from the U.S. Copyright Office states that “the safest course is always to get permission from the copyright owner before using copyrighted material. ... When it is impracticable to obtain permission, use of copyrighted material should be avoided unless the doctrine of ‘fair use’ would clearly apply to the situation.”

"All that seems clear in this case is that the Mercury News did not attempt to contact Harris prior to publication, nor did it obtain his permission to republish his copyrighted photograph," Osterreicher said. "This most recent decision by the court holds that whether the doctrine of 'fair use' applies in this situation is a question of material fact to be determined in a hearing later this month."

Harris is represented by attorney Robert A. Spanner, of Trial & Technology Law Group, a Silicon Valley law firm. Spanner wrote to News Photographer magazine, "A photographer’s right to limit distribution and reproduction of his or her copyrighted photographs is a fundamental tenet of copyright law, and the notion that a newspaper can override that right and freely reproduce and distribute – without a license and for free – photographs which the photographer had licensed to a book publisher for a fee, would obviously be a matter of grave concern to the photographer's profession. Mr. Harris stood up for the rights of his fellow photographers because he believed it was the right thing to do, and we are are gratified that his efforts have been vindicated.”

At a hearing on the case last summer, Judge Breyer hinted that the suit brought by Harris against the Mercury News could be an important case in author and photographer rights. Breyer stated for the record that: "On the one hand, this case looks like a very small case. I don’t know whether the copyright fee would have been fifty bucks or a hundred bucks, or whatever it is. I don’t know, but it’s not a large amount. So I must believe that what is at stake here is the principle of whether a newspaper writer can take a photograph from a book and publish it without permission of the copyright holder, and I guess there’s sort of a further – there’s some further arguments as to in publishing the photograph, the copyright notice was eliminated, cropped.”

The case has been scheduled for a hearing before Judge Breyer on January 20, 2006, to set a trial date.

The December 2005 advisory from the U.S. Copyright Office that Osterreicher cites also has this to say about "fair use":

One of the more important limitations on copyrighted material is the doctrine of "fair use." This doctrine has been codified in Section 107 of the copyright act. Section 107 contains a list of the various purposes for which the reproduction of a particular work may be considered "fair," such as criticism, comment, news reporting, teaching, scholarship, and research. Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair:

the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;

the nature of the copyrighted work;

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 advisory also states that “the distinction between ‘fair use’ and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted material does not substitute for obtaining permission.”

NPPA member and attorney Mickey H. Osterreicher, Esq., contributed to the research and reporting of this story. He is the chair of the NPPA Media Government Relations Committee and is also a member of the New York State Bar Association Media Law Committee.