Case 1:13-cv-07153-ER Document 82 Filed 03/19/15 Page 1 of 22

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
NORTH JERSEY MEDIA GROUP INC.,
v.

Plaintiff,
No.: 13-CV-07153 (ER)(FM)

JEANINE PIRRO and FOX NEWS
NETWORK, LLC,
Defendants.

MEMORANDUM OF LAW IN SUPPORT OF DEFENDANTS’ MOTION
FOR CERTIFICATION OF FEBRUARY 10, 2015 ORDER
FOR INTERLOCUTORY APPEAL UNDER 28 U.S.C. § 1292(b)
AND FOR ISSUANCE OF STAY PENDING APPEAL

HOGAN LOVELLS US LLP
Dori Ann Hanswirth
dori.hanswirth@hoganlovells.com
Nathaniel S. Boyer
nathaniel.boyer@hoganlovells.com
Benjamin A. Fleming
benjamin.fleming@hoganlovells.com
Patsy C. Wilson
patsy.wilson@hoganlovells.com
875 Third Avenue
New York, New York 10022
Tel: (212) 918-3000
Fax: (212) 918-3100
Attorneys for Defendants

Case 1:13-cv-07153-ER Document 82 Filed 03/19/15 Page 2 of 22

TABLE OF CONTENTS
Page
PRELIMINARY STATEMENT .....................................................................................................1
ARGUMENT...................................................................................................................................3
I.

II.

INTERLOCUTORY APPEAL IS WARRANTED TO DETERMINE THE
APPROPRIATE LEGAL STANDARD FOR EVALUATING WHETHER USE OF
A VISUAL WORK WAS FAIR..........................................................................................3
A.

There is Substantial Ground for Difference of Opinion Over The Appropriate
Standard for Transformation of Visual Works. .......................................................9

B.

Certification Would Materially Advance the Termination of This Litigation
and Promote Judicial Economy. ............................................................................11

C.

The Public Interest Strongly Favors Interlocutory Appeal ....................................12

A STAY OF PROCEEDINGS IN THE DISTRICT COURT PENDING
INTERLOCUTORY APPEAL WOULD FURTHER THE INTERESTS OF
JUSTICE AND PROMOTE EFFICIENCY. .....................................................................14

CONCLUSION..............................................................................................................................16

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TABLE OF AUTHORITIES
Page(s)
CASES
Allstate Ins. Co. v. Elzanaty,
No. 11-cv-3862(ADS)(ARL), 2013 U.S. Dist. LEXIS 70579
(E.D.N.Y. May 16, 2013) ........................................................................................................12
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 (2d Cir. 1994).........................................................................................................7
Am. Geophysical Union v. Texaco Inc.,
802 F. Supp. 1 (S.D.N.Y. 1992)....................................................................................... passim
Atl. Holdings, Inc. v. Sovereign Wealth Fund Samruk-Kazyna JSC,
No. 12-cv-8852 (JMF), 2014 WL 1881075 (S.D.N.Y. May 9, 2014) .....................................10
Authors Guild, Inc. v. Hathitrust,
755 F.3d 87 (2d Cir. 2014).........................................................................................................9
Bartnicki v. Vopper,
200 F.3d 109 (3d Cir. 1999).....................................................................................................13
Bartnicki v. Vopper,
532 U.S. 514 (2001).................................................................................................................13
Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006)...............................................................................................2, 7, 9
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006).......................................................................................................9
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994)...................................................................................................................7
Capitol Records, LLC v. Vimeo, LLC,
972 F. Supp. 2d 537 (S.D.N.Y. 2013)......................................................................................11
Cariou v. Prince,
714 F.3d 694 (2d Cir. 2013).............................................................................................2, 9, 10
Facebook, Inc. v. Pedersen,
868 F. Supp. 2d 953 (N.D. Cal. 2012) .......................................................................................6
Flo & Eddie, Inc v. Sirius XM Radio Inc.,
No. 13 CIV. 5784 CM, 2015 WL 585641 (S.D.N.Y. Feb. 10, 2015).............................. passim

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Gramercy Advisors, LLC v. Coe,
No. 13-CV-9069 VEC, 2014 WL 5847442 (S.D.N.Y. Nov. 12, 2014).................................3, 4
In re Facebook, Inc., IPO Sec. & Derivative Litig.,
986 F. Supp. 2d 524 (S.D.N.Y. 2014)......................................................................................11
In re Lehman Bros. Holdings, Inc.,
No. 13-CV-2211(RJS), 2014 WL 3408574 (S.D.N.Y. June 30, 2014) .....................................3
In re Trace Int’l Holdings, Inc.,
No. 04-cv-1295(KMW), 2009 WL 3398515 (S.D.N.Y. 2009)............................................9, 10
Jones v. Dirty World Entm’t Recordings LLC,
755 F.3d 398 (6th Cir. 2014) ...................................................................................................13
Klinghoffer v. S.N.C. Achille Lauro Ed Altri–Gestione Motonave Achille Lauro in
Amministrazione,
921 F.2d 21 (2d Cir. 1990).....................................................................................................3, 9
Nederlandse Erts-Tankersmaatschappij, N.V. v. Isbrandtsen Co.,
339 F.2d 440 (2d Cir. 1964).....................................................................................................14
Pearson Educ., Inc. v. Liu,
No. 1:08-cv-06152-RJH, 2010 WL 623470 (S.D.N.Y. Feb. 22, 2010)...................................11
Sec. Investor Prot. Corp. v. Bernard L. Madoff Inv. Secs. LLC,
No. M-47, 2010 U.S. Dist. LEXIS 3037 (S.D.N.Y. Jan. 11, 2010)...........................................4
Soler v. G & U, Inc.,
86 F.R.D. 524 (S.D.N.Y. 1980) .........................................................................................14, 15
Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P.,
756 F.3d 73 (2d Cir. 2014).....................................................................................................2, 9
DOCKETED CASES
N. Jersey Media Grp. Inc. v. Fox News Network, LLC and John Doe Nos. 1-5,
No. 1:14-cv-07630-ER..................................................................................................... passim
Noble v. Nike,
No. 13-cv-04371-LGS (S.D.N.Y. June 24, 2013) .....................................................................8
STATUTES
17 U.S.C. § 107................................................................................................................................6
28 U.S.C. § 1292(b) ............................................................................................................... passim
28 U.S.C. § 1400(a) .........................................................................................................................8
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OTHER AUTHORITIES
Bethany C. Stein, A Bland Interpretation: Why a Facebook “Like” Should Be Protected
First Amendment Speech, 44 Seton Hall L. Rev. 1255 (2014) ............................................6, 11
Dan Fletcher, How Facebook is Redefining Privacy, Time, May 20, 2010 ....................................8
John G. Browning, Facebook, Twitter and LinkedIn – Oh My! The ABA Ethics 20/20
Commission and Evolving Ethical Issues in the Use of Social Media, 40 N. Ky. L.
Rev. 255 (2013) .....................................................................................................................5, 6
Kathryn R. Brown, The Risks of Taking Facebook at Face Value: Why the Psychology of
Social Networking Should Influence the Evidentiary Relevance of Facebook
Photographs, 14 Vand. J. Ent. & Tech. L. 357 (2012)..............................................................8
Rebecca Tushnet, Fox Hurts America Yet Again, Losing Fair Use SJ Motion
(Feb. 13, 2015).........................................................................................................................10
Robert H. Jerry II and Lyrissa Lidsky, Public Forum 2.1: Public Higher Education
Institutions and Social Media, 14 Fla. Coastal L. Rev. 55 (2012-13) .......................................5
Spencer Kuvin & Chelsea Silvia, Social Media in the Sunshine: Discovery and Ethics of
Social Media - Florida's Right to Privacy Should Change the Analysis,
25 St. Thomas L. Rev. 335 (2013).............................................................................................8
Wright & Miller, 16 Fed. Prac. & Proc. Juris. § 3930 (3d ed.)......................................................12

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PRELIMINARY STATEMENT
Defendants Jeanine Pirro and Fox News Network, LLC submit this memorandum of law
in support of their motion to certify the Court’s February 10, 2015 opinion and order [ECF No.
71] (the “Order”) for immediate appeal, under 28 U.S.C. § 1292(b), and for a stay pending
appeal in this and a related action.1 In the Order, the Court denied Defendants’ motion for
summary judgment on their fair-use affirmative defense, declining to find that Fox News’ use of
a historical photograph in a Facebook post commemorating the anniversary of the September 11
attacks was “substantially transformative.” The Order thus presents a controlling question of
law:
For fair use purposes, whether a secondary user may transform a visual
work by placing that work in a new context and for a new purpose, without
substantial physical alterations.
In the Order, the Court implicitly answered the question “no” by limiting the scope of its
inquiry on transformation; the Court assessed only the quantum of physical alteration to the
photograph and the quantum and perceived quality of the Defendants’ accompanying written
commentary.

But a contrary answer from the Court of Appeals would upend that legal

framework. And the answer is anything but clear. Litigants and commentators alike have
struggled to identify the proper fair-use test for visual works, and courts have grappled with the
apparent tensions in the Second Circuit’s fair use jurisprudence. A square ruling from the Court
of Appeals would bring much-needed clarity to this murky area of law.
Certification is therefore warranted because the Order “involves a controlling question of
law as to which there is substantial ground for difference of opinion[,] and . . . an immediate
appeal from the order may materially advance the ultimate termination of the litigation.” 28
1

See N. Jersey Media Grp. Inc. v. Fox News Network, LLC and John Doe Nos. 1-5, No. 1:14-cv07630-ER (“Baier”). Together with this motion, Defendants will file a separate motion for a
stay pending appeal in the Baier docket.
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U.S.C. § 1292(b). The question is controlling because reversal of the Order would at the very
least inform the applicable standard for fair use in this action.

The more likely scenario,

however, is that reversal would terminate this action; a finding that Fox News’ use was
transformative would tip the overall fair use analysis in Defendants’ favor and result in a grant of
summary judgment. The controlling nature of this question is further highlighted by its import
for other cases, including the follow-on Baier action brought by Plaintiff against Fox News
based on a similar alleged infringement.
There is also “substantial ground for difference of opinion” on this controlling question,
seen most clearly in the divide in the Court of Appeals’ own fair use jurisprudence. On one side
of the fault line lie cases such as Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73,
84 (2d Cir. 2014) and Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d 605 (2d Cir.
2006), which hold that a person need not physically alter a copyrighted work—visually or
otherwise—in order for a use to be transformative. On the other side, cases such as Cariou v.
Prince, 714 F.3d 694 (2d Cir. 2013), seem to place commanding weight on the degree of visual
alteration. An immediate appeal would allow the Court of Appeals to reconcile these precedents
and provide clear guidance for the parties and the public.
That guidance is sorely needed. The type of use at issue in this action and in the pending
Baier matter—the use of visual works on social media—is widespread. Under the Order’s legal
analysis, the unique, transformative qualities of social media are not taken into account when
considering a fair use defense. In other words, the use’s particular context does not factor into
the equation. But that finding has massive implications for the millions of Americans who use
social media on a regular basis. If social media’s new and different aspects are not relevant to a
fair use analysis, then users who share copyrighted content are far more likely to be infringing

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the copyrights of others. Such a regime would effectively proscribe a wide swath of ongoing
online speech. The public has a strong interest in having these fundamental free-speech concerns
addressed at the earliest possible juncture. The Court should certify the Order for immediate
appeal to allow the Court of Appeals to address these core fair use issues.
ARGUMENT
I.

INTERLOCUTORY APPEAL IS WARRANTED TO DETERMINE THE
APPROPRIATE LEGAL STANDARD FOR EVALUATING WHETHER USE OF
A VISUAL WORK WAS FAIR.
“A district judge may certify an order for interlocutory appeal if (1) such order involves a

controlling question of law (2) as to which there is substantial ground for difference of opinion,
and (3) an immediate appeal from the order may materially advance the ultimate termination of
the litigation.” Flo & Eddie, Inc v. Sirius XM Radio Inc., No. 13 CIV. 5784 CM, 2015 WL
585641, at *1 (S.D.N.Y. Feb. 10, 2015) (certifying summary judgment decision in copyright
action for interlocutory appeal). All three factors support certification of the Order.
A.

Whether A Visual Work May Be Transformed by Uses in New Contexts and
For New Purposes, Rather Than By Physical Transformation, Presents a
Controlling Question of Law.

“A question of law is ‘controlling’ if reversal of the [certified] order would terminate the
action.” Klinghoffer v. S.N.C. Achille Lauro Ed Altri–Gestione Motonave Achille Lauro in
Amministrazione, 921 F.2d 21, 24 (2d Cir. 1990). A legal question is also controlling if “reversal
… even though not resulting in dismissal, could significantly affect the conduct of the action[,]
or[] the certified issue has precedential value for a large number of cases.” Gramercy Advisors,
LLC v. Coe, No. 13-CV-9069 VEC, 2014 WL 5847442, at *3 (S.D.N.Y. Nov. 12, 2014) (quoting
In re Lehman Bros. Holdings, Inc., No. 13-CV-2211(RJS), 2014 WL 3408574, at *1 (S.D.N.Y.
June 30, 2014)); accord Flo & Eddie, 2015 WL 585641, at *1 (noting that certification is
warranted where the legal issue “has precedential value for a large number of cases”). Whether a
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particular use of a copyrighted work is “fair” can be a controlling question of law.

Am.

Geophysical Union v. Texaco Inc., 802 F. Supp. 1, 28, 30 (S.D.N.Y. 1992), amended (Oct. 26,
1992) (“Texaco”).
Defendants do not ask this Court to certify the broad issue of whether the complained-of
use was “fair.”

Rather, Defendants request certification on the narrower question of law

identified above: for fair use purposes, whether a secondary user may transform a visual
work by placing that work in a new context and for a new purpose, without substantial
physical alterations. That legal question may be answered by the Court of Appeals “without
having to conduct extensive analysis and review of the underlying record.” See Sec. Investor
Prot. Corp. v. Bernard L. Madoff Inv. Secs. LLC, No. M-47, 2010 U.S. Dist. LEXIS 3037, at *3
(S.D.N.Y. Jan. 11, 2010).
Resolution of the question would, at the very least, “significantly affect the conduct of the
action.” Gramercy Advisors, 2014 WL 5847442, at *3. The Court denied Defendants’ summary
judgment motion because it declined to contrast Plaintiff’s original purpose in creating its
photo—for breaking news—with Fox News’ purpose in using it—historical remembrance and
discussion on social media. Rather, the Court focused on Fox News’ physical alterations to the
photo and found them minimal. Order at 15-16. Likewise, the Court evaluated the perceived
quality of Fox News’ commentary, id. at 15, and found it marginal in light of the many other
similar commemorative messages on social media. Id. at 15-16. But if the Court of Appeals
held that context and purpose were key in the first-factor analysis for visual works, then the
Court’s analysis would no longer follow: neither the quality nor the ubiquity of Fox News’
message speaks to the purpose of Fox News’ use, nor the context in which it was made. That
alone renders the question controlling. See Flo & Eddie, 2015 WL 585641, at *1 (finding

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question of law controlling because “reversal of this Court’s ruling might well require
reconsideration of the Court’s fair use analysis”).
Under these circumstances, however, reversal would likely compel a finding that Fox
News’ use was transformative, and therefore fair. That is not only because Fox News used
Plaintiff’s photo for a different purpose from that for which it was created; it is because Fox
News used Plaintiff’s photo in an inherently transformative context: on social media.
“Social networking platforms like Facebook, Twitter, LinkedIn, and YouTube have
caused a paradigm shift in how people communicate and share information.” John G. Browning,
Facebook, Twitter and LinkedIn – Oh My! The ABA Ethics 20/20 Commission and Evolving
Ethical Issues in the Use of Social Media, 40 N. Ky. L. Rev. 255, 255 (2013) (“Browning”). The
old paradigm in traditional methods of expression resembled a one-way street: the speaker
communicated its chosen message to an audience that passively received the message. The new
paradigm, exemplified by social media, is different. In social media, the traditional, one-way
flow of expression gives way to an ongoing exchange of views and information. Rather than
playing a single, static role, social media users join the fray as both speakers and listeners, as
both authors and readers, all at once.
Facebook in particular highlights this ongoing shift to interactive methods of
communication. “From an objective standpoint … Facebook pages operate as digital spaces
where public conversations can occur; the ‘communicative’ nature of such pages is apparent
from the structure of the Facebook ‘wall’ and the devices on the pages that promote ‘postings’
and comments.” Robert H. Jerry II and Lyrissa Lidsky, Public Forum 2.1: Public Higher
Education Institutions and Social Media, 14 Fla. Coastal L. Rev. 55, 72 (2012-13). Indeed, “[b]y
providing these various channels of communication, Facebook strives to create an online

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environment that facilitates communication, social connection, and the sharing of ideas, and in
which [u]sers can engage in debate and advocate for the political ideas, parties, and candidates of
their choice.” Bethany C. Stein, A Bland Interpretation: Why a Facebook “Like” Should Be
Protected First Amendment Speech, 44 Seton Hall L. Rev. 1255, 1260 (2014) (“Stein”). Such a
constant “sharing of ideas” is compelled by the architecture of the website; every Facebook post
is presented for public comment and debate.
Expression on social media, and on Facebook in particular, is thus inherently intertwined
with “comment” and “criticism,” purposes that the Copyright Act sets forth as presumptively
fair. See 17 U.S.C. § 107. Of course, at the time that the 1976 Copyright Act was drafted, social
media had not yet been conceived of, much less adopted for everyday use by a majority of
Americans. See, e.g., Browning, 40 N. Ky. L. Rev. at 256 (noting that as of 2011, “Sixty five
percent of all adult Americans have at least one social networking profile”).2 But unlike the
legacy media known to Congress at the time, social media is transformative by design. Every
post is an invitation for others to comment and criticize; every message and image invites
reciprocal expression. A context-sensitive test for transformativeness, then, will necessarily
account for the fact that Facebook and other social media sites are by design used for purposes of
“comment” and “criticism,” and such a test will inevitably favor uses on social media.
The Court of Appeals need not address the particular features of the Pirro Facebook page
in order to offer broad and helpful guidance as to how the context of social media informs the
first-factor fair use analysis. But Texaco belies any suggestion that the Court of Appeals may
never consider facts from the record below on an interlocutory appeal. Indeed, in Texaco, Judge

2

See also Facebook, Inc. v. Pedersen, 868 F. Supp. 2d 953, 956 (N.D. Cal. 2012) (“Facebook
provides online networking services to more than 500 million monthly users; these services
include allowing users to create profiles, upload photos and videos, and connect with others”).
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Leval certified the entire fair use issue—findings of fact and all—for interlocutory appeal. 802
F. Supp. at 30. The Court of Appeals accepted the appeal and analyzed the merits of the fair use
question in depth, including full consideration of record evidence peculiar to the specific parties.
See Am. Geophysical Union v. Texaco Inc., 60 F.3d 913, 914 (2d Cir. 1994) (affirming result
below “[t]hough not for precisely the same reasons” stated by the district court); see also n.6
below.
The question presented by Fox News is thus controlling for § 1292(b) purposes. A
finding that Fox News’ use was transformative would tip the overall fair use analysis in
Defendants’ favor because “the more transformative the new work, the less will be the
significance of other factors, like commercialism, that may weigh against a finding of fair use.”
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994). A finding of transformativeness
would not only flip the first statutory factor in favor of fair use, but also the fourth because
transformative uses lessen the likelihood of cognizable market harm. See id. at 591 (“when . . .
the second use is transformative, market substitution is at least less certain, and market harm may
not be so readily inferred.”); see also Bill Graham Archives v. Dorling Kindersley Ltd., 448 F.3d
605, 615 (2d Cir. 2006) (“Since [Defendants’] use of [Plaintiff’s] images falls within a
transformative market, [Plaintiff] does not suffer market harm due to the loss of license fees.”).3
Finally, the question of law is also controlling because it has precedential value for many
cases. That includes the Baier action Plaintiff has brought against Fox News based on a similar

3

The Court’s lengthy discussion of commerciality under the first fair use factor and its treatment
of the fourth fair use factor were expressly tied to its finding that Fox News had not sufficiently
changed the “aesthetic” of the original work to support a finding of transformativeness. Order at
17-18.
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alleged infringement.4 But it goes further. Both Pirro and Baier are part of Plaintiff’s larger
plan to bring infringement suits based on the use of its photo on social media, see Hanswirth
Decl. Exhibits A, Q, R, ECF No. 32, and is entirely likely that Plaintiff will bring more actions in
this district based on similar alleged infringements. Nor is Plaintiff uniquely situated, as cases
involving the alleged infringement of photos on social media continue to be filed in this Court.
See, e.g., Complaint & Demand for Jury Trial, Noble v. Nike, No. 13-cv-04371-LGS (S.D.N.Y.
June 24, 2013), ECF No. 1. And the sheer volume of activity on social media all but guarantees
that fair use questions will recur. To consider but a few metrics:

The “average Facebook user creates ninety pieces of content each month.”
Kathryn R. Brown, The Risks of Taking Facebook at Face Value: Why the
Psychology of Social Networking Should Influence the Evidentiary Relevance of
Facebook Photographs, 14 Vand. J. Ent. & Tech. L. 357, 360 (2012).

As of five years ago, Facebook users uploaded nearly one billion photos to
Facebook per week. See Dan Fletcher, How Facebook is Redefining Privacy,
Time, May 20, 2010, available at
http://www.time.com/time/magazine/article/0,9171,1990798,00.html (last visited
March 19, 2015).

“Over 700 billion minutes per month are spent on Facebook, twenty million
applications are installed per day, and over 250 million people interact with
Facebook from outside the official website on a monthly basis, across two million
websites. In just twenty minutes on Facebook, one million links are shared,
almost two million friend requests are accepted, and almost three million
messages are sent.” Spencer Kuvin & Chelsea Silvia, Social Media in the
Sunshine: Discovery and Ethics of Social Media – Florida's Right to Privacy
Should Change the Analysis, 25 St. Thomas L. Rev. 335, 338 (2013).

4

On March 16, 2015, Fox News submitted a pre-motion letter in connection with a planned
motion to dismiss the Baier action for improper venue or transfer the action. The prospect of
such a motion does not detract from the importance of a legal ruling from the Court of Appeals
on the proper standard for transformativeness. Fox News’ contemplated motion is based on the
fact that the John Doe defendants are not subject to personal jurisdiction in this district, making
venue improper under 28 U.S.C. § 1400(a). Plaintiff could file an amended pleading removing
the John Doe defendants as parties, in which case venue would be proper in this district. Even if
the Baier action were ultimately transferred to another district (or re-filed there), any precedent
from the Court of Appeals on this novel issue would be highly persuasive.
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There are thus numerous existing actions involving alleged infringements on social
media, and more on the way. “Receiving authoritative guidance from the Second Circuit … will
help resolve those actions quickly and consistently.” Flo & Eddie, 2015 WL 585641, at *2.
B.

There is Substantial Ground for Difference of Opinion Over The
Appropriate Standard for Transformation of Visual Works.

There is a “substantial ground for difference of opinion” regarding the proper standard
for evaluating transformation of visual works because “there is conflicting authority on the
issue.” In re Trace Int’l Holdings, Inc., No. 04-cv-1295(KMW), 2009 WL 3398515, at *3
(S.D.N.Y. 2009) (citing Klinghoffer, 921 F.2d at 25).
In Defendants’ view, the Court failed to recognize the applicability of Bill Graham,
perhaps because the Court of Appeals’ opinions in this area have not yet been fully synthesized.
As noted above, the leading cases hold that a person need not physically alter a copyrighted
work—visually or otherwise—in order for a use to be transformative. See Authors Guild, Inc. v.
Hathitrust, 755 F.3d 87, 96 (2d Cir. 2014) (“Added value or utility is not the test: a
transformative work is one that serves a new and different function from the original work and is
not a substitute for it.”); Swatch, 756 F.3d at 84 (audio work); Bill Graham, 448 F.3d at 609
(visual work). The Court, however, relied on Cariou and other similar precedents addressing
visual works only.

See Cariou, 714 F.3d at 711 (finding “minimal [visual] alterations”

insufficient despite artist “mov[ing] the work in a different direction”); see also Blanch v. Koons,
467 F.3d 244, 253 (2d Cir. 2006) (finding work transformative based on “changes of its colors, .
. . the medium, the size of the objects pictured” and more).
The apparent conflict between the Bill Graham and the Cariou modes of analysis has
long been noted by commentators. As one of the Nation’s leading copyright scholars has
observed, Cariou and other cases the Court cited in its transformativeness analysis, “despite
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speaking of purpose, seem[ ] to require transformation of content, contrary to the aims of much
appropriation art.” See, e.g., Rebecca Tushnet, Fox Hurts America Yet Again, Losing Fair Use
SJ Motion, Feb. 13, 2015, available at http://tushnet.blogspot.com/2015/02/fox-hurts-americayet-again-losing-fair.html (last visited Mar. 18, 2015). The presence of this “conflicting
authority” means that appellate review is particularly appropriate. Certification would allow the
Court of Appeals to reconcile its divergent lines of authority and clarify the test for
transformativeness.
A “substantial ground for difference of opinion” also exists within the meaning of §
1292(b) where there is an “absence of on-point authority.” See In re Trace, 2009 WL 3398515,
at *3; see also Atl. Holdings, Inc. v. Sovereign Wealth Fund Samruk-Kazyna JSC, No. 12-cv8852 (JMF), 2014 WL 1881075, at *1 (S.D.N.Y. May 9, 2014) (granting certification in part
because of “the somewhat unsettled and evolving nature of the law”). Here, there is an absence
of on-point authority for one aspect of Defendants’ proposed question—the proper standard for
evaluating “context” in the modern media landscape. As described above, the relevant context of
the allegedly infringing use—as part of a global conversation commemorating the anniversary of
the September 11 attacks occurring on social media—supports a finding that Defendants’ use
was transformative as a matter of law.5
While the Court did not address this particular argument in the Order, it did note that Fox
News’ use “involve[d] the secondary use of a secondary use,” Order at 15, and inferred that Fox
News’ posting on Facebook was less transformative as a result. Id. Notably, in drawing that
inference, the Court observed that “[t]he Court has not found a case addressing similar facts.”
Id. at 15 n.12. But that fact pattern is utterly commonplace on social media, where “once the
5

See also Memorandum of Law in Support of Motion for Summary Judgment at 13-17 [ECF
No. 35].
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words and link [of a Facebook post] are posted, the user’s friends can see it and can therefore
discuss it in the form of wall posts and comments, opening up a forum for debate and an
exchange of ideas.” Stein, 44 Seton Hall L. Rev at 1270. Facebook and other social networks
are replete with discussion and debate regarding the meaning, merits, and import of copyrighted
content, including secondary uses of secondary uses.
The Court of Appeals has never had occasion to pass upon the question of what role, if
any, the “social” aspects of social media play in the fair use analysis. The “absence of on-point
authority” regarding this question ensures that obtaining the Court of Appeals’ guidance on the
proper role of “purpose” and “context” for visual works in the first-factor analysis would be that
much more helpful.
C.

Certification Would Materially Advance the Termination of This Litigation
and Promote Judicial Economy.

An appeal “may materially advance the ultimate termination of the litigation” if “that
appeal promises to advance the time for trial or to shorten the time required for trial.” In re
Facebook, Inc., IPO Sec. & Derivative Litig., 986 F. Supp. 2d 524, 531 (S.D.N.Y. 2014)
(internal citation omitted). The possibility of a reversal that would terminate the litigation is
enough, see Capitol Records, LLC v. Vimeo, LLC, 972 F. Supp. 2d 537, 554 (S.D.N.Y. 2013),
and—as discussed above—reversal of the Order would likely lead to summary judgment for
Defendants, ending the case. See also Pearson Educ., Inc. v. Liu, No. 1:08-cv-06152-RJH, 2010
WL 623470 (S.D.N.Y. Feb. 22, 2010) (finding third prong satisfied because “further motion
practice, discovery, or trial in this matter would likely be rendered moot should the Circuit find
that it disagrees with this Court’s answer to the [certified] question.”).
Moreover, any future phases of this litigation—including a trial or potential settlement
before trial—would be executed with greater speed and certainty if the Court of Appeals
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provides direction on the key legal issue in the action. Cf. Flo & Eddie, 2015 WL 585641, at *4
(noting that clarity from appellate ruling would necessarily spur negotiation).

Appellate

guidance of any type would also inform consideration of the Baier matter, in which Fox News
also anticipates advancing a similar fair use defense. These efficiencies counsel in favor of an
immediate appeal.
D.

The Public Interest Strongly Favors Interlocutory Appeal

While only the three statutory factors listed in § 1292(b) need be satisfied, courts may
also consider whether an interlocutory appeal would be in the public interest. See Texaco, 802 F.
Supp. at 30; Allstate Ins. Co. v. Elzanaty, No. 11-cv-3862(ADS)(ARL), 2013 U.S. Dist. LEXIS
70579, at *12-13 (E.D.N.Y. May 16, 2013) (granting certification because, in part, “[t]he Court
believes that it will be of significant value for the parties here, and others similarly situated, to
have a dispositive answer to this question”); Wright & Miller, 16 Fed. Prac. & Proc. Juris. §
3930 (3d ed.) (Section 1292(b) factors best understood as directing courts “to consider the
probable gains and losses of immediate appeal”). At least two strong public interests would be
furthered by an interlocutory appeal in this matter: (1) protection of First Amendment interests;
and (2) offering clarity in the emerging area of Internet law.
First, interlocutory review is warranted because the Order implicates fundamental freespeech questions. Defendants face the prospect of a lengthy and expensive trial on their fair-use
defense, the possibility of which may chill Defendants and others from using copyrighted content
on social media to discuss issues of public concern. The Sixth Circuit recently held that in cases
involving “the speech-chilling threat of the heckler’s veto,” district courts should certify
controlling questions of law “at an earl[y] stage of litigation.” Jones v. Dirty World Entm’t
Recordings LLC, 755 F.3d 398, 417 (6th Cir. 2014).

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The Sixth Circuit’s explicit statement regarding the importance of certifying important
speech-related issues for appeal comports with the practice of other courts. For example, one of
the Supreme Court’s most important speech-related decisions in recent years reached the Court
after a district court certified (and the Court of Appeals for the Third Circuit accepted) an
interlocutory appeal under § 1292(b). See Bartnicki v. Vopper, 532 U.S. 514, 535 (2001)
(holding that “a stranger’s illegal conduct does not suffice to remove the First Amendment shield
from speech about a matter of public concern”). Indeed, in that case, the district court certified
its order denying summary judgment for the defendants, in part because its ruling involved the
application of free speech principles to federal and Pennsylvania wiretapping statutes. After
accepting the interlocutory appeal, the Third Circuit reversed the district court’s decision and
ordered summary judgment for the defendants. Bartnicki v. Vopper, 200 F.3d 109, 129 (3d Cir.
1999). The Supreme Court then affirmed. Bartnicki, 532 U.S. at 535. The Court should take a
similar course and follow the sound guidance of the Sixth Circuit.
Second, interlocutory review is appropriate because of the “strong public interest in
having prompt appellate review of the fair use issue.” Texaco, 802 F. Supp. at 30. The public
interest in Texaco was strong because the allegedly infringing use—copying and circulating of
scientific journal articles by corporate employees—was “extremely widespread.” Id. As a
result, the parties had “shared interests” in being able to determine whether that widespread
practice was fair use. Id.
The logic of Texaco applies with equal force here because the use of copyrighted images
on social media is as widespread as the copying of journal articles by corporate employees, if not
moreso.6 As described above, this is hardly surprising; social media’s function is to encourage
6

At a hearing on February 26, 2015, counsel for Plaintiff attempted to distinguish Judge Leval’s
certification of the fair use question in Texaco on the basis that the case involved an interlocutory
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the sharing of and discussion about the trends of the day, including popular copyrighted content.
But the sheer volume of content shared on social media has created an unprecedented
opportunity for potential, if unwitting, infringements. It is thus crucially important that the
public understand how and to what extent fair use principles apply to new media, so that the
public can govern itself accordingly. An interlocutory appeal would provide needed clarity in
this emerging area of law.
II.

A STAY OF PROCEEDINGS IN THE DISTRICT COURT PENDING
INTERLOCUTORY APPEAL WOULD FURTHER THE INTERESTS OF
JUSTICE AND PROMOTE EFFICIENCY.
In addition to certifying the Order for interlocutory appeal, the Court should stay

proceedings in this action and the Baier matter pending disposition of the appeal. As Judge
McMahon recently observed in issuing a stay pending interlocutory appeal, “[t]he power to stay
proceedings is incidental to the power inherent in every court to control the disposition of the
causes on its docket with economy of time and effort for itself, for counsel and for litigants.” Flo
& Eddie, 2015 WL 585641, at *4 (quoting Nederlandse Erts-Tankersmaatschappij, N.V. v.
Isbrandtsen Co., 339 F.2d 440, 441-42 (2d Cir. 1964)). Indeed, the authority to manage a docket
“is an aspect of [a court’s] broad and inherent power over its own process, to prevent abuses,
oppressions and injustice, so as not to produce hardship, and to do substantial justice.” Flo &
Eddie, 2015 WL 585641, at *4 (quoting Soler v. G & U, Inc., 86 F.R.D. 524, 526 (S.D.N.Y.
1980)).

“In issuing a stay, a court must weigh competing interests and maintain an even

balance.” Soler, 86 F.R.D. at 526 (citation omitted).
appeal following a “bellweather” trial, not a summary judgment decision. See Feb. 26, 2015 Tr.
at 11-12. But any differences in procedural posture between this action and Texaco are
irrelevant. Texaco establishes that legal questions relating to fair use (including the entire fair
use issue) are properly certified for interlocutory appeal so long as the statutory factors are
satisfied and the public interest warrants an appeal. Texaco, 802 F. Supp. at 29-30. Those same
conditions are present here.
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Here, staying proceedings in the district court pending appeal is the most prudent and
efficient course. Absent a stay, both parties would be forced to expend unnecessary time and
money on discovery and additional motion practice when the dispositive issue in the case—fair
use—could be resolved on appeal. That applies doubly for Baier, where discovery has not yet
begun. Precisely to serve the goals of efficiency and judicial economy, this Court has twice
stayed further proceedings while it considered the fair use question. At a hearing on July 17,
2014, the Court held further motion practice and discovery in abeyance pending resolution of
Defendants’ motion for summary judgment on fair use. See July 17, 2014 Tr. at 34:19-23
(holding further motion practice and discovery in abeyance due to “concern[ ] about the growing
scope of this case” and because the “fair use issue is potentially dispositive”). At a subsequent
hearing on October 28, 2014, the Court stayed the Baier action in order “to advance the
efficienc[ies], both for the Court and for the parties.” Oct. 28, 2014 Tr. at 11:1-2.
Plaintiff would suffer no prejudice or hardship as a result of a stay. In the recent Flo &
Eddie order, Judge McMahon noted that the plaintiff would not suffer a substantial hardship
from a stay because “[i]t loses not a dime’s worth of potential damages by holding up until the
legal issue is resolved.” Flo & Eddie, 2015 WL 585641, at * 4. Judge McMahon also noted that
the plaintiff’s established history of tolerating alleged infringements belied any suggestion that
non-monetary harm would result from an appeal. See id. (noting that plaintiff “has tolerated
public performances of sound recordings in which it holds common law copyrights, by both
digital and terrestrial broadcasters, for decades”). Just so here: Plaintiff’s potential damages
remain unaffected by any delay, and Plaintiff accepted the widespread infringement of its photo
for nearly a decade. See, e.g., Reply Memorandum of Law in Further Support of Motion for
Summary Judgment [ECF No. 63], at 9-10. Given that lengthy period of inaction, Plaintiff

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cannot plausibly claim that an appeal would work any harm upon it. If anything, Plaintiff would
benefit from additional appellate guidance on the fair use question: its campaign against
purported infringers on social media is premised on the belief that those uses are just like uses in
any other medium. If that is not so, then Plaintiff may well reconsider its legal strategy.
CONCLUSION
For the foregoing reasons, the Court should (1) certify the Order for interlocutory appeal
and (2) stay proceedings in the district court in this action and in the Baier action pending appeal.
Dated: New York, New York
March 19, 2015

HOGAN LOVELLS US LLP
By:

/s/ Dori Ann Hanswirth
Dori Ann Hanswirth
dori.hanswirth@hoganlovells.com
Nathaniel S. Boyer
nathaniel.boyer@hoganlovells.com
Benjamin A. Fleming
benjamin.fleming@hoganlovells.com
Patsy C. Wilson
patsy.wilson@hoganlovells.com
875 Third Avenue
New York, New York 10022
tel: (212) 918-3000
fax: (212) 918-3100
Attorneys for Defendants

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Case 1:13-cv-07153-ER Document 82 Filed 03/19/15 Page 22 of 22

CERTIFICATE OF SERVICE
I, Dori Ann Hanswirth, Esq., hereby certify that on March 19, 2015, I caused to be served
true and correct copies of: (1) Defendants’ Motion For Certification of February 10, 2015 Order
for Interlocutory Appeal Under 28 U.S.C. § 1292(b) and For Issuance of Stay Pending Appeal;
and (2) a memorandum of law in support of the same, via electronic means (with Plaintiff’s
counsel’s written consent pursuant to Rule 5(b)(2)(E) of the Federal Rules of Civil Procedure)
upon:
DUNNEGAN & SCILEPPI LLC
William Dunnegan
wd@dunnegan.com
Richard Weiss
rw@dunnegan.com
350 Fifth Avenue
New York, New York 10118
wd@dunnegan.com
Counsel for Plaintiff
I certify that all participants in the case are registered CM/ECF users and that service will
be accomplished by the CM/ECF system.
Dated: March 19, 2015
/s/ Dori A. Hanswirth /
DORI ANN HANSWIRTH

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