Elliot McGucken v. Pub Ocean Limited ( 2022 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
ELLIOT MCGUCKEN, an individual, No. 21-55854
Plaintiff-Appellant,
D.C. No.
v. 2:20-cv-01923-
RGK-AS
PUB OCEAN LIMITED, DBA
AbsoluteHistory.com, DBA
MagellanTimes.com, DBA OPINION
MaternityWeek.com, DBA
NewRavel.com, DBA Scribol
Publishing, DBA Scribol.com,
Defendant-Appellee,
and
DOES, 1–10, inclusive,
Defendant.
Appeal from the United States District Court
for the Central District of California
R. Gary Klausner, District Judge, Presiding
Argued and Submitted May 13, 2022
Pasadena, California
Filed August 3, 2022
2 MCGUCKEN V. PUB OCEAN LTD.
Before: Sandra S. Ikuta, Jacqueline H. Nguyen, and
John B. Owens, Circuit Judges.
Opinion by Judge Nguyen
SUMMARY *
Copyright
The panel reversed the district court’s summary
judgment in favor of the defendant, based on a fair use
defense in an action under the Copyright Act, and remanded
for further proceedings.
Elliott McGucken alleged copyright infringement in the
posting by Pub Ocean Ltd. of an article about an ephemeral
lake that formed on the desert floor in Death Valley, using
twelve of McGucken’s photos of the lake without seeking or
receiving a license.
The panel held that Pub Ocean could not invoke a fair
use defense to McGucken’s copyright infringement claim.
Under 17 U.S.C. § 107, in determining whether fair use
applies, a court must analyze the purpose and character of
the use, 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 court must analyze and weigh these non-exhaustive
*
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
MCGUCKEN V. PUB OCEAN LTD. 3
factors in light of the purposes of copyright. The panel held
that the four statutory factors help illuminate what kind of
creativity merits protection from the ordinary strictures of
copyright law. In defining and identifying that creativity, a
court considers whether the copying use is transformative,
meaning that it adds something new and important.
The panel determined that the first statutory factor
weighed against fair use. The panel concluded that Pub
Ocean’s work made a commercial use of McGucken’s
photos, and this use was not transformative because the
article used the photos for exactly the purpose for which they
were taken: to depict the lake. Further, Pub Ocean did not
meaningfully transform the photos by embedding them
within the text of the article, but rather used them as a clear,
visual recording of the article’s subject matter.
The panel determined that the second statutory factor,
the nature of the copyrighted work, weighed against fair use
because the photos were the creative product of many
technical and artistic decisions.
The third factor, the amount and substantiality of the
portion used, weighed against fair use because Pub Ocean
used McGucken’s photos with only negligible cropping, and
it copied extensively without justification.
The fourth factor, market effect, weighed against fair use
because, if carried out in a widespread and unrestricted
fashion, Pub Ocean’s conduct would destroy McGucken’s
licensing market.
Because all four statutory factors pointed
unambiguously in the same direction, the panel held that the
4 MCGUCKEN V. PUB OCEAN LTD.
district court erred in failing to grant partial summary
judgment in favor of McGuckin on the fair use issue.
COUNSEL
Scott Alan Burroughs (argued), Trevor W. Barrett, and
Frank R. Trechsel, Doniger / Burroughs, Venice, California,
for Plaintiff-Appellant.
Shane W. Tseng (argued) and Albert T. Liou, Prospera Law
LLP, Los Angeles, California, for Defendant-Appellee.
MCGUCKEN V. PUB OCEAN LTD. 5
OPINION
NGUYEN, Circuit Judge:
As the saying goes, a picture is worth a thousand words.
One powerful image can drive interest in a story that would
otherwise go unnoticed. Copyright protection allows an
artist to reap the rewards of her creative endeavors, but it
cannot stifle all downstream expression that a work might
inspire. As Justice Story explained, because “there are, and
can be, few, if any, things, which in an abstract sense, are
strictly new and original throughout,” the fair use doctrine
allows other creators to “borrow, and use much which was
well known and used before.” Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 575 (1994) (quoting Emerson v.
Davies, 8 F. Cas. 615, 619 (C.C.D. Mass. 1845)). The fair
use doctrine does not, however, allow infringers “to avoid
the drudgery in working up something fresh” by exploiting
the value of an image they did not create. Id. at 580.
Photographer Elliot McGucken captured a series of
photographs of an otherworldly sight—an ephemeral lake
that had formed on the desert floor in Death Valley after
heavy rains in March 2019. McGucken licensed his photos
to several websites which ran articles about the lake. Pub
Ocean Ltd., a digital publisher, also posted an article about
the lake using twelve of McGucken’s photos, but it neither
sought nor received a license.
We hold that Pub Ocean cannot invoke a fair use defense
to McGucken’s copyright infringement claim. Pub Ocean’s
use was in no way transformative—the article used
McGucken’s photos to depict the ephemeral lake, which was
exactly the purpose for which they were taken and exactly
the function for which the photos had been licensed to other
websites. Because all of the fair use factors favor
6 MCGUCKEN V. PUB OCEAN LTD.
McGucken, we reverse the district court’s summary
judgment in favor of Pub Ocean and remand for further
proceedings.
I. Factual Background and Procedural History
A. McGucken’s Photos
In early March 2019, Death Valley received about one-
third of its annual precipitation over the course of a single
day. The storm left a shallow lake on the desert floor
stretching ten miles. When the skies cleared and the winds
calmed, the lake was perfectly still, and its surface reflected
back the surrounding mountains and sky. Without a
photographer to, in McGucken’s words, “render rare,
fleeting beauty eternal,” this scene may well have been lost
to time.
At his own expense, McGucken had traveled to the area
with his camera, ready to capture a scene just like this. He
first saw what appeared as a “small and close” pool of water
from the road, but he knew that distances in Death Valley
can be deceptive. After a few hours of hiking, the true scale
of the lake came into view, and it was “breathtaking.”
Shortly after he reached the water’s edge, the wind briefly
died down and “the water turned to glass.”
During those “lucky, magically strange, and even eerie
minutes,” McGucken got to work. He employed “a classical
technique in art,” “composing . . . using the golden ratio,” a
subject about which he had “penned a couple books.” He
took and then edited a series of photographs from different
vantage points. With a little luck, a little sweat, and plenty
of skill, McGucken produced a series of photos of stunning
beauty.
MCGUCKEN V. PUB OCEAN LTD. 7
8 MCGUCKEN V. PUB OCEAN LTD.
McGucken posted the photos to Instagram, where they
were shared widely. In the following weeks, McGucken was
contacted by several websites hoping to publish his photos
in articles about the lake. With his permission, McGucken’s
photos appeared in SF Gate, the Daily Mail, the National
Parks Conservation Association, PetaPixel, Smithsonian
Magazine, AccuWeather, Atlas Obscura, and Live Science.
B. Pub Ocean’s Infringing Article
Pub Ocean is a U.K.-based digital publisher. It operates
a network of websites catering to interests in travel, history,
parenting, pop culture, and current events. On April 15,
2019, Pub Ocean published an article on its websites that
used twelve of McGucken’s photos. Pub Ocean neither
MCGUCKEN V. PUB OCEAN LTD. 9
sought nor received McGucken’s permission. Through
advertising, the article earned Pub Ocean $6,815.66 in the
span of a year.
Pub Ocean’s article was titled, “A Massive Lake Has Just
Materialized In The Middle Of One Of The Driest Places On
Earth.” As this title indicates, the focus of the article was the
ephemeral lake. The article begins and ends with a
discussion of the lake. And much of the article describes
how the ephemeral lake formed and how McGucken came
to photograph the phenomenon. McGucken’s photos are
used in those portions of the article that specifically discuss
the lake.
The article also contains a handful of digressions on
loosely related topics. For example, apropos of the lake’s
setting, the article riffs on the topic of deserts, informing
readers that “deserts make up around a third of the landmass
on planet earth” and that “the driest place on Earth is the
Atacama Desert in South America.” The article also spends
a few paragraphs on facts about Death Valley.
Some of the digressions take readers further afield. The
article discusses other ephemeral lakes around the world,
such as those that appear in Australia and Argentina. And it
analogizes ephemeral lakes to other ephemeral phenomena
in nature, such as desert superblooms, and a “vanishing
island” in the South Pacific.
Like the article’s discussion of the ephemeral lake, these
other topics are also illustrated. The article includes twenty-
eight photos from sources other than McGucken that loosely
track the text. For example, when the article discusses
deserts, photos of unspecified deserts appear. Fields of
wildflowers appear above a discussion of superblooms. And
10 MCGUCKEN V. PUB OCEAN LTD.
photos of small islands appear when vanishing islands are
discussed.
The photos appear prominently in the article’s visual
layout. In size, the photos dwarf the text. In a web browser,
the article appears not primarily as a piece of writing.
Rather, it appears as a series of photos with the text broken
up into tiny captions underneath. A few examples appear
below.
C. This Lawsuit
McGucken filed this copyright infringement suit against
Pub Ocean in the Central District of California. McGucken
filed a motion for summary adjudication focused on Pub
Ocean’s fair use defense. The district court sua sponte
MCGUCKEN V. PUB OCEAN LTD. 11
granted summary judgment for Pub Ocean, concluding that
it was entitled to a fair use defense as a matter of law. 1
II. Jurisdiction and Standard of Review
We have jurisdiction under 28 U.S.C. § 1291. We
review de novo a district court’s summary judgment on a fair
use defense. See Seltzer v. Green Day, Inc., 725 F.3d 1170,
1175 (9th Cir. 2013).
III. Analysis
A. Fair Use Principles
“[T]he ‘fair use’ doctrine . . . [is] an ‘equitable rule of
reason’ that ‘permits courts to avoid rigid application of the
copyright statute when, on occasion, it would stifle the very
creativity which that law is designed to foster.’” Google
LLC v. Oracle Am., Inc., 141 S. Ct. 1183, 1196 (2021)
(citation omitted). The fair use doctrine is a “guarantee of
breathing space within the confines of copyright,” Campbell,
510 U.S. at 579, and a “backstop” that “counterbalance[s]
the exclusive rights of a copyright,” Dr. Seuss Enters., L.P.
v. ComicMix LLC, 983 F.3d 443, 450 (9th Cir. 2020), cert.
denied, 141 S. Ct. 2803 (2021). “[T]he fair use of a
copyrighted work . . . is not an infringement of copyright.”
17 U.S.C. § 107.
1
McGucken also filed suit against Newsweek in the Southern
District of New York concerning its use of embedded links to
McGucken’s Instagram posts. See McGucken v. Newsweek LLC, 464 F.
Supp. 3d 594 (S.D.N.Y. 2020). The district court denied Newsweek’s
motion to dismiss on the basis of fair use. Id. at 604–09. That case has
settled. See No. 1:19-cv-09617 (S.D.N.Y.), Dkt. 85 (Apr. 13, 2022).
12 MCGUCKEN V. PUB OCEAN LTD.
As codified in the Copyright Act of 1976, courts must
analyze the following non-exhaustive factors in determining
whether fair use applies:
(1) the purpose and character of the use,
including whether such use is of a
commercial nature or is for nonprofit
educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the
portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential
market for or value of the copyrighted work.
17 U.S.C. § 107.
These factors are analyzed and weighed “in light of the
purposes of copyright.” Dr. Seuss, 983 F.3d at 451 (quoting
Campbell, 510 U.S. at 578). That analysis is “flexible” and
“may well vary depending upon context.” Google, 141 S.
Ct. at 1197. The four statutory factors simply help illuminate
what kind of creativity merits protection from the ordinary
strictures of copyright law.
For decades, courts have used the concept of
“transformation” to define and identify that creativity in fair
use cases. See Campbell, 510 U.S. at 578–79. Although
judicially created, this concept “permeates” fair use analysis.
Dr. Seuss, 983 F.3d at 452. “[D]etermining whether and to
what extent the new work is transformative” is the “central
purpose of the first-factor inquiry,” and it “influences the
lens through which we consider” the third and fourth factors.
MCGUCKEN V. PUB OCEAN LTD. 13
Id. at 451–52 (citations and internal quotation marks
omitted).
Simply put, “the word ‘transformative’ . . . describe[s] a
copying use that adds something new and important.”
Google, 141 S. Ct. at 1203. The “benchmarks” of
transformative use are “(1) further purpose or different
character in the defendant’s work, i.e., the creation of new
information, new aesthetic, new insights and understanding;
(2) new expression, meaning, or message in the original
work, i.e., the addition of value to the original; and (3) the
use of quoted matter as raw material, instead of repackaging
it and merely superseding the objects of the original
creation.” Dr. Seuss, 983 F.3d at 453 (citations and internal
quotation marks omitted).
Fair use is a mixed question of law and fact. See Google,
141 S. Ct. at 1199. Each of the statutory factors
encompasses legal and factual questions. For instance, “how
much of the copyrighted work was copied” is a factual
question, id. at 1200, but which way in the fair use analysis
that points in a particular case, and by how much, is a legal
question.
Although factual questions can arise, the parties in fair
use cases often dispute only the legal significance to be
drawn from facts. Fair use is thus often resolved at summary
judgment, and “we may reweigh on appeal the inferences to
be drawn from [the] record.” Mattel, Inc. v. Walking
Mountain Prods., 353 F.3d 792, 800 (9th Cir. 2003) (citation
omitted); see, e.g., Dr. Seuss, 983 F.3d at 461. “Where no
material, historical facts are at issue and the parties dispute
only the ultimate conclusions to be drawn from those facts,
we may draw those conclusions without usurping the
function of the jury.” Seltzer, 725 F.3d at 1175.
14 MCGUCKEN V. PUB OCEAN LTD.
B. First Factor – Purpose and Character of the Use
The first fair use factor examines “the purpose and
character of the use.” 17 U.S.C. § 107(1). Under this factor,
we consider whether the infringing work is transformative
and whether it is commercial. See Dr. Seuss, 983 F.3d at
451–52. For-profit news articles are generally considered
commercial uses, see, e.g., Monge v. Maya Mags., 688 F.3d
1164, 1176 (9th Cir. 2012), and Pub Ocean does not dispute
that its article was commercial. The focus of the first factor,
however, is on transformation because “the more
transformative the new work, the less will be the significance
of other factors, like commercialism.” Campbell, 510 U.S.
at 579.
Under our case law, a work that conveys factual
information does not transform a copyrighted work by using
it as a “clear, visual recording” of the infringing work’s
subject. Monge, 688 F.3d at 1174 (quoting L.A. News Serv.
v. KCAL-TV Channel 9, 108 F.3d 1119, 1122 (9th Cir.
1997)). When a copyrighted work is used simply to illustrate
what that work already depicts, the infringer adds no “further
purpose or different character.” Campbell, 510 U.S. at 579.
In that case, copyright law justly treats the infringer as
freeriding on the inherent value of the original work. See
Elvis Presley Enters. v. Passport Video, 349 F.3d 622, 629
(9th Cir. 2003) (using video clips of musical performances
for their “intrinsic entertainment value” was not
transformative), overruled on other grounds as stated in
Flexible LifeLine Sys., Inc. v. Precision Lift, Inc., 654 F.3d
989, 995 (9th Cir. 2011) (per curiam).
There is no genuine dispute that Pub Ocean’s article used
McGucken’s photos as a “clear, visual recording” of the
lake. Monge, 688 F.3d at 1174 (quoting KCAL-TV, 108 F.3d
at 1122). McGucken’s photos present a realistic depiction
MCGUCKEN V. PUB OCEAN LTD. 15
of the ephemeral lake. And the lake, which the article’s title
hails as the “Massive Lake” that “Materialized” in Death
Valley, was undoubtedly the article’s subject. The article
begins and ends by discussing the lake, and each of the topics
it touches on—from Death Valley to superblooms—bears
some relationship to it. The article does not present
McGucken’s photos in a new or different light. It uses them
for exactly the purpose for which they were taken: to depict
the lake.
The article likewise does not meaningfully transform the
photos by embedding them within the text of the article. We
have repeatedly held that “[a]dding informative captions
does not necessarily transform copyrighted works.” Sicre de
Fontbrune v. Wofsy, _ F. 4th _, 2022 WL 2711466, at *9 (9th
Cir. 2022). 2 And Pub Ocean’s article does even less. Photos
are inserted every three to four sentences in an article
structured as a continuous narrative. There is at most a loose
topical connection between each portion of the article and
the photos that appear alongside it. Photos of the ephemeral
lake appear in roughly the place in the article where it is
explicitly discussed. The article does not contain captions
that directly describe or engage with the photos. Rather, it
essentially uses the photos as visual “filler.” Elvis Presley
Enters., 349 F.3d at 625. Exploiting the beauty and intrigue
of McGucken’s photos in this way without adding anything
new is not transformative. See id. at 629.
2
See also Monge, 688 F.3d at 1176 (describing “wholesale copying
sprinkled with written commentary” as “at best minimally
transformative”); Elvis Presley Enters., 349 F.3d at 628 (“[V]oice-overs
do not necessarily transform a work.”); KCAL-TV, 108 F.3d at 1122(“Although KCAL apparently ran its own voice-over, it does not appear
to have added anything new or transformative.”).
16 MCGUCKEN V. PUB OCEAN LTD.
Our prior cases reinforce this conclusion. In Monge, we
held that a gossip magazine did not transform a celebrity’s
private photos of her secret wedding when it used the photos
in an exposé about the wedding. 688 F.3d at 1175–76.
Similarly, in KCAL-TV, we held that a network did not
transform helicopter footage of the violence at Florence and
Normandie during the 1992 Los Angeles riots simply by
using that footage as part of the network’s coverage of the
riots. 108 F.3d at 1122. Just as in Monge and KCAL-TV,
Pub Ocean’s article uses McGucken’s photos as a “clear,
visual recording” of its subject matter, and it is therefore no
more transformative. Id.To be transformative, the infringing use must bring about
a much starker change in expression. For example, using a
thumbnail image of a photo in a search engine “transforms
the image into a pointer directing a user to a source of
information.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d
1146, 1165 (9th Cir. 2007). And a musical about a rock band
transforms a video clip of the band’s performance by using
it “to mark an important moment in the band’s career” rather
than “for its own entertainment value.” SOFA Entm’t, Inc.
v. Dodger Prods., 709 F.3d 1273, 1278 (9th Cir. 2013).
When used in Pub Ocean’s article, McGucken’s photos
undergo no remotely comparable transformation.
Pub Ocean analogizes this case to Los Angeles News
Service v. CBS Broadcasting, Inc., 305 F.3d 924 (9th Cir.
2002), but the analogy is strained and unpersuasive. CBS
involved the same helicopter footage of the violence at
Florence and Normandie at issue in KCAL-TV. 305 F.3d
at 929. We held in CBS that a television network did
transform that footage by using it as part of a show’s
recurring introductory montage. Id. at 939. The introduction
featured “a stylized orange clock design superimposed over
MCGUCKEN V. PUB OCEAN LTD. 17
a grainy, tinted, monochromatic video background.” Id.
at 929. As the hands of the clock turned, the background
video changed. Id. at 930. One of the video backgrounds
was a few seconds taken from the plaintiff’s helicopter
footage. Id. at 929–30. As “the program’s regular
introduction, it was used to promote the program even when
the program did not cover” the riots or related events. Id.at 939–40. We regarded that use as transformative because,
“beyond mere republication,” using the clip in the recurring
introduction “serve[d] some purpose beyond
newsworthiness.” Id. at 939. By contrast, McGucken’s
photos were used “as part of [Pub Ocean’s] coverage” of the
lake. KCAL-TV, 108 F.3d at 1122.
Contrary to Pub Ocean’s argument, CBS does not show
that the mere arrangement of McGucken’s photos into a
“montage” rendered Pub Ocean’s use transformative. While
CBS recognized that, as we put it in Monge, the
“[a]rrangement of a work in a photo montage . . . , can be
transformative,” 688 F.3d at 1174 (emphasis added), we
have never held that merely arranging other works into a
compilation is automatically transformative. The critical
fact in CBS was not that the plaintiff’s footage was placed in
a collection of other video clips but that the footage served a
different function when used as part of an introductory
montage. And we concluded in Monge that, despite the
article’s arrangement of the plaintiff’s wedding photos, there
was “no real transformation of the photos themselves.” Id.
at 1175. We must evaluate each arrangement for itself to
determine whether it gives new purpose or different
character to the material it takes.
Pub Ocean’s primary argument is that its article is
transformative because it places McGucken’s photos in the
“wider context” supplied by the article’s factual
18 MCGUCKEN V. PUB OCEAN LTD.
presentation. On Pub Ocean’s view, the article is
transformative because its various tangents “provided
context,” with information about related topics that was
“much more expansive” than the photographs themselves.
That argument has little support in fair use doctrine.
Practically speaking, it is hard to imagine what would
not be a fair use, or what could not be readily turned into a
fair use, under Pub Ocean’s theory. Any copyrighted work,
when placed in a compilation that expands its context, would
be a fair use. Any song would become a fair use when part
of a playlist. Any book a fair use if published in a collection
of an author’s complete works. It would make little sense to
treat this kind of “recontextualizing” or “repackaging” of
one work into another as transformative. Dr. Seuss, 983 F.3d
at 453–54. That is not the kind of creativity that “further[s]
. . . the goal of copyright, to promote science and the arts.”
Campbell, 510 U.S. at 579. Transformation requires more
than “the facile use of scissors.” Elvis Presley Enters.,
349 F.3d at 628 (quoting Folsom v. Marsh, 9 F. Cas. 342,
345 (C.C.D. Mass. 1841)).
If Pub Ocean’s theory were correct, our cases involving
factual works would have turned out differently. For
example, Elvis Presley Enterprises involved an
“exhaustive,” 16-hour documentary covering “virtually all
aspects of Elvis’ life.” 349 F.3d at 625. The documentary
used clips from a series of videos of Elvis performances. Id.Each clip became part of the “wider context” of Elvis’s
career that the entire documentary set forth. But even though
the documentary presented countless details about Elvis
beyond what the clips conveyed, we still concluded that
many clips were not used in a transformative way. Id. at 629.
Crucially, that determination was not based on a blanket
conclusion about the documentary as a whole, as Pub Ocean
MCGUCKEN V. PUB OCEAN LTD. 19
would have it. Rather, we made a fine-grained analysis of
each use and concluded that some of the clips “serve[d] the
same intrinsic entertainment value that is protected by
Plaintiffs’ copyrights,” and were thus not transformative. Id.That the clips were presented alongside 16 hours of further
facts about Elvis played no role in our analysis.
As in Elvis Presley, the topics in Pub Ocean’s article
beyond the ephemeral lake have little bearing on
transformation. The article’s tangents about topics like
Death Valley and superblooms come before and after
McGucken’s photos, and they are illustrated by photos of
their own from third-party sources. That these other topics
are discussed in other portions of the article does not alter
our conclusion that McGucken’s photos are used simply to
illustrate the ephemeral lake and therefore lack any
transformative character.
Pub Ocean also argues that its fair use defense is
strengthened by its purpose of reporting the news. “[N]ews
reporting” is an example of fair use listed in the preamble to
17 U.S.C. § 107.3 “[T]he analysis of the first fair use factor
‘may be guided by the examples given in the preamble to
§ 107.’” Dr. Seuss, 983 F.3d at 452 (quoting Campbell,
510 U.S. at 578–79). But “[w]hether a use referred to in the
first sentence of section 107 is a fair use in a particular case
will depend upon the application of the determinative
factors.” Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539, 561 (1985) (citation omitted). We have
recognized that “where the content of the [copyrighted] work
is the story . . . , news reporters would have a better claim
3
The preamble gives the following examples of fair use: “criticism,
comment, news reporting, teaching (including multiple copies for
classroom use), scholarship, or research.” 17 U.S.C. § 107.
20 MCGUCKEN V. PUB OCEAN LTD.
of transformation.” Monge, 688 F.3d at 1175 n.8; see also
KCAL-TV, 108 F.3d at 1121 (“To the extent that KCAL ran
the tape as a news story, this would weigh in its favor.”). But
the mere category of “news reporting,” which is all that Pub
Ocean points to 4, is “not sufficient itself to sustain a per se
finding of fair use.” Monge, 688 F.3d at 1173. Therefore,
although we do not withhold the label of “news reporting”
from Pub Ocean’s article, see Harper & Row, 471 U.S. at
561 (“[C]ourts should be chary of deciding what is and what
is not news.” (citation omitted)), that label alone does not get
Pub Ocean very far.
For the reasons explained above, Pub Ocean’s article did
not make transformative use of McGucken’s photos.
Moreover, the article was commercial, which “further cuts
against the fair use defense.” Dr. Seuss, 983 F.3d at 451–52
(citation and internal quotation marks omitted).
Accordingly, the first factor weighs against fair use. 5
4
Some of Pub Ocean’s article was about McGucken’s discovery of
the lake and his photography. But Pub Ocean did not argue in its brief
that these portions of the article treated McGucken’s photos themselves
as the news story. Given that the article only briefly referenced
McGucken’s photos themselves and it was otherwise focused on the
ephemeral lake, we are skeptical that this theory would help Pub Ocean
establish fair use. However, because Pub Ocean failed to raise the issue,
we need not reach it. See Clem v. Lomeli, 566 F.3d 1177, 1182 (9th Cir.
2009) (holding that an appellee waived an issue by failing to address it
in his answering brief).
5
We said in Monge that “wholesale copying sprinkled with written
commentary . . . was at best minimally transformative” and we
concluded that the first factor was “at best neutral.” 688 F.3d at 1176–
77. Here, even if Pub Ocean’s minor cropping and arrangement of
photos in the text of the article constitutes marginal transformation, id.
at 1174–75, we would still conclude that the showing of transformation
is so weak that the first factor weighs against fair use.
MCGUCKEN V. PUB OCEAN LTD. 21
C. Second Factor – Nature of the Copyrighted Work
The second fair use factor concerns “the nature of the
copyrighted work.” 17 U.S.C. § 107(2). Because this factor
“typically has not been terribly significant in the overall fair
use balancing,” it merits only brief discussion. Dr. Seuss,
983 F.3d at 456 (citation omitted). In assessing the
copyrighted work’s nature, we consider “the extent to which
it is creative and whether it is unpublished.” Monge,
688 F.3d at 1177.
Although they document a real event, McGucken’s
photos are creative because they were the product of many
technical and artistic decisions. See VHT, Inc. v. Zillow
Grp., Inc., 918 F.3d 723, 744 (9th Cir. 2019) (holding that
photos of residences were creative when they were
“aesthetically and creatively shot and edited by professional
photographers”). While McGucken’s photos had been
published on Instagram and in online articles, that does not
weigh in favor of fair use. See Dr. Seuss, 983 F.3d at 456
(explaining that, while a work’s unpublished status would
weigh against fair use, “the converse is not necessarily
true”). Therefore, the second factor weighs against fair use.
D. Third Factor – Amount and Substantiality of the
Portion Used
The third factor considers “the amount and substantiality
of the portion used in relation to the copyrighted work as a
whole.” 17 U.S.C. § 107(3). This inquiry is concerned with
“the quantitative amount and qualitative value of the original
work used in relation to the justification for that use.”
Dr. Seuss, 983 F.3d at 456 (quoting Seltzer, 725 F.3d
at 1178). This factor weighs against fair use if the infringer
publishes “the heart” of an “individual copyrighted picture”
without justification. Monge, 688 F.3d at 1178.
22 MCGUCKEN V. PUB OCEAN LTD.
Pub Ocean argues that this factor favors fair use because
the article used twenty-eight photos from other sources,
making McGucken’s photos only a small part of the article
as a whole. While “[t]he inquiry under this factor is . . .
flexible,” Id. at 1179, this approach runs contrary to the text
of the statute, which plainly calls for a comparison of “the
portion used” to “the copyrighted work as a whole” and not
the infringing work, 17 U.S.C. § 107(3) (emphasis added).
As the Supreme Court has recognized, “a taking may not be
excused merely because it is insubstantial with respect to the
infringing work.” Harper & Row, 471 U.S. at 565.
Here, Pub Ocean’s taking of McGucken’s photos was
“total.” Monge, 688 F.3d at 1180. Quantitatively, twelve of
McGucken’s photos are used with only negligible cropping.
Qualitatively, given how much was taken, it is clear that the
article took “the heart” of each of the twelve photos. Id.
at 1178. The extent of Pub Ocean’s taking could hardly be
greater. 6
Pub Ocean’s sweeping use of McGucken’s photos
lacked any valid justification. “This factor circles back to
the first factor because ‘the extent of permissible copying
varies with the purpose and character of the use.’” Dr. Seuss,
983 F.3d at 456 (quoting Campbell, 510 U.S. at 586–87). As
explained above, the first factor weighs against fair use
because Pub Ocean used McGucken’s photos for exactly the
purpose for which they were taken. Pub Ocean has failed to
While the proper comparison is between the amount used and the
6
copyrighted work, “the fact that a substantial portion of the infringing
work was copied verbatim is evidence of the qualitative value of the
copied material.” Harper & Row, 471 U.S. at 565; see also KCAL-TV,
108 F.3d at 1122 (same). That twelve of the article’s forty photos came
from McGucken therefore demonstrates the qualitative value of the
photos that were taken.
MCGUCKEN V. PUB OCEAN LTD. 23
point to a transformative purpose that would justify
reproducing any of McGucken’s photos—much less the
entirety of twelve of them.
Even assuming Pub Ocean was justified in using some
portion of the photos, copying the entirety of twelve of them
would be “far more than was necessary.” Monge, 688 F.3d
at 1179. Moreover, Pub Ocean failed to put forward any
evidence that other photographs or visual aids were
unavailable or an inadequate substitute for McGucken’s
photos. See KCAL-TV, 108 F.3d at 1123 (explaining that
infringement was not justified where “there [was] no
evidence that alternatives were not available (albeit from a
less desirable vantage point)”).
Because Pub Ocean copied extensively without
justification, the third factor weighs against fair use.
E. Fourth Factor – Market Effect
The fourth factor considers “the effect of the use upon
the potential market for or value of the copyrighted work.”
17 U.S.C. § 107(4). This factor encompasses both (1) “the
extent of market harm caused by the particular actions of the
alleged infringer,” and (2) “‘whether unrestricted and
widespread conduct of the sort engaged in by the defendant
would result in a substantially adverse impact on the
potential market’ for the original” and “the market for
derivative works.” 7 Dr. Seuss, 983 F.3d at 458 (quoting
Campbell, 510 U.S. at 590).
7
McGucken urges us to apply a presumption of market harm, which
some of our cases have applied to commercial, non-transformative uses.
See, e.g., Disney Enters. v. VidAngel, Inc., 869 F.3d 848, 861 (9th Cir.
2017). But see Dr. Seuss, 983 F.3d at 458 (“Mindful of the Court’s
24 MCGUCKEN V. PUB OCEAN LTD.
It is true that, as Pub Ocean emphasizes, the record
reflects little direct evidence of actual market harm caused
by Pub Ocean’s article. McGucken was able to license his
photos as early as one month after Pub Ocean’s article was
published. But Pub Ocean, “as the proponent of the
affirmative defense of fair use, ‘must bring forward
favorable evidence about relevant markets.’” Dr. Seuss,
983 F.3d at 459. And “to negate fair use,” McGucken “need
only show that if the challenged use should become
widespread, it would adversely affect the potential market
for the copyrighted work.” Monge, 688 F.3d at 1182
(quoting Harper & Row, 471 U.S. at 568); see, e.g., Sicre de
Fontbrune, 2022 WL 2711466, at *10 (weighing fourth
factor against fair use even though the defendant showed that
the price for the original work had increased because there
was no evidence “about the effect on the market for licensing
the disputed photographs”).
The harm to the market for licensing McGucken’s photos
would be immense. There is no dispute that a market exists
to republish McGucken’s photos. See VHT, 918 F.3d at 744
(licensing “a handful of photos” showed “that [a] market was
more than ‘hypothetical’”). If carried out in a widespread
and unrestricted fashion, Pub Ocean’s conduct would
destroy McGucken’s licensing market. Pub Ocean made the
same use of McGucken’s photos as the publications that
obtained licenses—copying them in an online article about
the ephemeral lake. As we have recognized, an infringing
use would destroy a derivative market when the infringing
directive to ‘eschew[] presumptions under this factor, we refrain from
presuming harm in the potential market’ for commercial uses and
‘determine it in the first instance.’” (citation omitted)). Because
applying this presumption would make no difference to the outcome, we
decline to do so here.
MCGUCKEN V. PUB OCEAN LTD. 25
work is of the same type as existing works by licensed users.
See Dr. Seuss, 983 F.3d at 460 (Because “Seuss has already
vetted and authorized multiple derivatives” of the book the
defendant had used, “[t]his is not a case where the copyist’s
work fills a market that the copyright owner will likely
avoid.”). 8
Pub Ocean’s argument on harm to the potential market
turns on its argument that its use was transformative. These
issues are linked because “[w]here the allegedly infringing
use does not substitute for the original and serves a ‘different
market function,’ such factor weighs in favor of fair use.”
Seltzer, 725 F.3d at 1179 (quoting Campbell, 510 U.S.
at 591). Since the article was not transformative, we reject
this argument. However, it is worth elaborating on this point
because the potential market effect “underscores the limited
extent to which [Pub Ocean] transformed [McGucken’s]
works.” Monge, 688 F.3d at 1182.
Pub Ocean’s article is a ready market substitute for
McGucken’s photos and the articles that would license them.
Any consumer interested in McGucken’s photos would
enjoy Pub Ocean’s article. The article contains good-quality
reproductions of McGucken’s photos, with very little text
crowding the view. Cf. Kelly v. Arriba Soft Corp., 336 F.3d
811, 821–22 (9th Cir. 2003) (explaining that a low-
8
See also Elvis Presley, 349 F.3d at 631 (Because “The Definitive
Elvis contains the television appearances for which Plaintiffs normally
charge a licensing fee . . . , [i]f this type of use became widespread, it
would likely undermine the market for selling Plaintiffs’ copyrighted
material.”); KCAL-TV, 108 F.3d at 1122–23 (Because “KCAL’s stated
purpose was to use the tape as ‘news’ and it was a potential . . . licensee
or consumer of LANS’s product . . . , given what LANS and KCAL do,
KCAL’s use of LANS’s work for free, without a license, would destroy
LANS’s original, and primary market.”).
26 MCGUCKEN V. PUB OCEAN LTD.
resolution thumbnail in a search engine is not a substitute for
a clear, full-sized image). And for some consumers, the
article would be even better than a standalone collection of
McGucken’s photos or a shorter article with no other
content. Pub Ocean’s article also includes twenty-eight
other photos, many of which similarly depict beautiful
natural phenomena that a viewer who appreciates
McGucken’s photos may also enjoy. Pub Ocean’s “mere
duplication of the photos ‘serves as a market replacement for
[the originals], making it likely that cognizable market harm
to the original[s] will occur.’” Monge, 688 F.3d at 1182–83
(quoting Campbell, 510 U.S. at 591). That Pub Ocean’s
article is an effective market substitute for McGucken’s
photos and derivative content underscores the non-
transformative nature of Pub Ocean’s use.
Therefore, because Pub Ocean’s use, if widespread,
would destroy the market to license McGucken’s works, the
fourth factor weighs against fair use.
F. Balancing
All four statutory factors point unambiguously in the
same direction—that Pub Ocean is not entitled to a fair use
defense. See Dr. Seuss, 939 F.3d at 461. The district court
thus erred in granting summary judgment for Pub Ocean
based on a fair use defense. Because “no material, historical
facts are at issue and the parties dispute only the ultimate
conclusions to be drawn from those facts,” Seltzer, 725 F.3d
at 1175, the district court should have granted partial
summary judgment for McGucken on the fair use issue.
IV. Conclusion
We reverse the district court’s grant of summary
judgment, direct the district court to enter partial summary
MCGUCKEN V. PUB OCEAN LTD. 27
judgment for McGucken on the fair use issue, and remand
for further proceedings.
REVERSED AND REMANDED.