When Will a Court Grant a Motion to Dismiss a Copyright Case Based on Fair Use?

When is a copyright infringement case ripe for dismissal at the outset because the secondary work clearly made fair use of the first-in-time work?  And, if a court grants the defendant’s motion to dismiss, should the judge then award the defendant its attorneys’ fees in defending the case?  These issues were explored in a recent Second Circuit Court of Appeals decision – Yang. v. Mic Network Inc.  Here’s what you need to know.

Background

In April 2017, plaintiff Stephen Yang took a photograph of Dan Rochkind (the “Photograph”) and licensed it to the New York Post, which published the photograph in an article about Rochkind and his dating life entitled Why I Don’t Date Hot Women Anymore.  Soon thereafter, defendant Mic Network, Inc. (“Mic”) published an article entitled Twitter is skewering the ‘New York Post’ for a piece on why a man “won’t date hot women.”  The Mic article did not include the full Photograph – it included a screenshot of the Post article, including the headline, the author’s name and the date, and approximately half of the Photograph.  Mic did not license the Photograph. 

In August 2018, Yang (through the Liebowitz Law Firm) sued Mic for copyright infringement, and Mic moved to dismiss the lawsuit on the ground that its use of the Photograph was protected under the fair use doctrine.

In September 2019, the district court granted Mic’s motion to dismiss.  The court found that it could make a fair use ruling in defendant’s favor solely on a comparison of the two works at issue.  Yang subsequently moved for reconsideration of the court’s decision, and Mic moved for attorney’s fees and sanctions.  In November 2020, the district court denied both motions.

Yang appealed the district court’s dismissal of the case, and Mic cross-appealed the order denying fees and sanctions. 

The Second Circuit Decision

On March 29, 2022, the Second Circuit issued a Summary Order affirming the trial court’s orders, ruling that Mic made fair use of the Photograph and denying an award of attorneys’ fees or sanctions against Yang. 

As to fair use, the Second Circuit focused on the first and fourth statutory fair use factors.  As to the first factor, the purpose and character of the use and whether the new work is “transformative,” the Second Circuit agreed with the district court that the case should be dismissed at this early stage based only on a comparison of the two works in question.  The Second Circuit rejected Yang’s argument that the screenshot was used only as an illustrative aid to describe Rochkind – rather, it was part of Mic’s coverage of “the public’s lampooning of the Post article” and Mic’s own commentary on the article.  As to the fourth statutory factor, the effect of the use upon the potential market for or value of the first-in-time work, the Second Circuit found it implausible that the licensing market for Yang’s photograph would be supplanted by Mic’s use.  As noted by the court, Mic’s usage was just a screenshot of part of the article, which significantly crops the Photograph.  As such, the audience for the screenshot and the original image are “very different.” 

As to the request for attorneys’ fees, the Second Circuit found that the district court did not abuse its discretion in holding that Yang’s claims were objectively reasonable and found that the case was neither frivolous nor improperly motivated. As to sanctions, the Second Circuit affirmed the district court’s denial of a sanctions award because the district court’s finding that there was no evidence that Mic or its counsel acted in bad faith was not clearly erroneous.  Therefore, the district court acted within its discretion in declining to impose sanctions.  (The denial of fees has received some criticism in the blogosphere already.)  

Take-Away Point

While many fair use cases do not lend themselves to resolution solely based on a side-by-side comparison of the works, the Second Circuit held that this case was ripe for dismissal at the outset, without the need for the parties to have to engage in expensive and time-consuming document and deposition discovery on factual matters.  For a deeper dive into this issue, read our article analyzing motions to dismiss in fair use cases and providing practice pointers.