IP Law Daily, COPYRIGHT—4th Cir.: Scratch that: Court of appeals reverses ruling finding fair use of Ted Nugent photo, (Feb 8, 2024)

By Matthew Hersh, J.D.

The Warhol decision continues to leave its mark.

An online publication did not make a fair use of a concert photograph of a rock and roll legend and conservative activist merely because it used the photo in a tongue-in-cheek public policy article, the U.S. Court of Appeals for the Fourth Circuit has held. The court of appeals, in one of the first circuit court decisions to grapple with fair use doctrine since a prominent Supreme Court case was handed down last summer, found that the publication’s use was not “transformational” under that landmark decision—although it apparently would have reached the same decision under its pre-existing doctrine anyway (Philpot v. Independent Journal Review, February 6, 2024, Wynn, J.).

The lawsuit was brought by Larry Philpot, a photographer who specializes in concert photos. He took a photo of Ted Nugent, the author of songs such as Stranglehold and Cat Scratch Fever, while the rock icon was performing live in Indianapolis in 2013. The photographer offered the image for distribution through Wikipedia under a Creative Commons license—a standardized form of license that allows anyone to make use of the work as long they give proper attribution to the photographer.

The photographer came to believe that the Independent Journal Review, a conservative publication, had used his work without the proper attribution. He sued for copyright infringement in the Eastern District of Virginia, seeking statutory damages of up to $150,000. The district court granted summary judgment to the publication, leading to this appeal.

Fair use. The court of appeals reversed and remanded for entry of judgment in favor of the photographer. The central question, as in all fair use cases, was whether the publication made a transformative use of the publication. In this case, the publication used the photograph as part of an article entitled “15 Signs Your Daddy Was a Conservative.” The publication posted the photo along with Sign 5, entitled “He Hearts The Nuge.” The district court, relying on its reading of fair use doctrine under Supreme Court and Fourth Circuit doctrine, found that the publication made a transformative use of the work. The court of appeals disagreed.

The district court’s error, the court found, was to find that the publication placed the photograph in a “new context to serve a different purpose” because it was used as a commentary on issues of public concern. That reading of fair use failed under Warhol v. Goldsmith, 598 U.S. 508 (2023)—the Supreme Court’s latest pronouncement on fair use doctrine. In that case, the Court found that where Andy Warhol borrowed a photograph of Prince and made a silkscreened version of it for a magazine’s tribute issue after the pop legend’s death, Warhol could not claim fair use—even though his version added a new expressive quality to the underlying photo. “The purpose of both works was to illustrate stories about Prince,” the High Court observed. So too with the Nugent photo. “Philpot took the photo to identify Nugent,” the court of appeals noted. “IJR used the photo for precisely the same reason: to depict “‘The Nuge.””

The district court’s rationale even failed under pre-Warhol precedent, the court of appeals noted. In Brammer v. Violent Hues Prods., LLC, 922 F.3d 255 (4th Cir. 2019), a film company used a photo of the Washington, D.C., neighborhood Adams Morgan in an online advertisement for a Virginia film and music festival. The Fourth Circuit sided with the photographer. “The work was placed in a new context to serve a different purpose than the original work—there, the different purpose of listing tourist attractions for an advertisement,” the court noted. But “in order to be transformative,” the court emphasized, “the secondary use still must generate a societal benefit by imbuing the original with new function or meaning.” Here, the art festival “used the photo expressly for its content—that is, to depict Adams Morgan.” Fair use would not apply.

With transformative use out of the way, the court made short work of the other factors. The publication was a commercial venture, the court noted, tilting the entire first factor heavily in favor the photographer. The photograph was entitled to strong protection as a “creative, esthetic expression” and the publication took all of it—thus disposing of the second and third factors. And the publication’s use also harmed the market for the original. To be sure, the article at issue only generated token revenues for the publication. But if its behavior in copying photography to depict musicians for a commercial purpose without payment or attribution “became widespread,” the court noted, the potential market for those works would decrease. That was enough to tilt the fourth factor, too, against fair use.

Publication of the work. Though unnecessary to reach its opinion, the court also sided with the photographer on another issue—the timing of the work’s publication. The photographer registered his work, as Copyright Office practice allows, along with a group of other works he claimed to be unpublished. But that registration was potentially invalid, the district court found, because the work in question might well have been published at the time it was registered. The district court got its analysis wrong, the court of appeals found. At issue here was a deal the photographer made prior to his registration that gave a rock and roll outlet, AXS TV, access to 1,000 of his photos, including the one at issue. But the deal didn’t allow the news outlet to use the photos outright, the court noted. It only allowed the outlet to select those photos that it wanted to use at a later date—and only then would the photographer send high-resolution version for publication. The deal was therefore only a “limited” publication to a select group of people, the court emphasized. It did not constitute publication under copyright law precedent.

Comment: Copyright law advocates will likely applaud this decision, but it will probably not change their opinion of the photographer who started the whole thing. “Philpot and his counsel are, in essence, copyright ‘trolls,’” one federal court has noted. Philpot v. Emmis Operating Co., 1:18-CV-00816-RP, 2019 WL 2928774, at *2 (W.D. Tex. July 8, 2019). “His tactic is to place his photos on the internet, protected only with a ‘Creative Commons’ license. This means that anyone may use the images for free, so long as they provide proper attribution to Philpot, along with proper identification of the image. When users re-publish one of Philpot's images without attribution, he sues them for damages.” One law professor, according a prominent tech blog, counted more than 150 such lawsuits as of December 2021.

The case is No. 21-2021.

Attorneys: Stacy Ann Cole (Keating, Meuthing & Klekamp, PLL) for Larry G. Philpot. Manuel Antonio Cordovez (Creativity IP PLLC) for Independent Journal Review.

Companies: Independent Journal Review

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