A win for artists in the Fourth Circuit
The Fourth Circuit applied the Supreme Court's Warhol decision from last term in favor of concert photographer Larry Philpot
2/20/20247 min read
Earlier this month, the Fourth Circuit applied the Supreme Court’s recent decision in Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508 (2023) to the use of a photograph of Ted Nugent. Philpot v. Independent Journal Review, No. 21-2021 (4th Cir. February 6, 2024).
The Fourth Circuit panel answered two questions in the case holding that the Independent Journal Review’s use of Philpot’s photo was not “fair use” and that the photo had not been published by Philpot such that the copyright registration was invalid. The Court reversed the District Court’s grant of summary judgement in favor of the Journal on the fair use defense and its denial of Philpot’s motion for summary judgment on the publication issue. Philpot, at 2. The case was a great win for artists.
Brief primer on copyright law
The law of copyright has a long and rich history in the United States. Both James Madison and Charles C. Pinckney proposed that copyright protection be included in the Constitution. Based on their proposals, the U.S. Constitution explicitly grants Congress the power to regulate copyrights and explains that the purpose of copyright law is to “promote the progress of science and the useful arts.” U.S. Const. art. I, § 8, cl. 8. The first copyright statue was passed by the First Congress and signed into law by President George Washington in 1790.
Today, copyright law is primarily governed by the Copyright Act of 1976 which can be found in Title 17 of the United States Code. The Act provides that copyright law protects all “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. §102 (a). However, copyright law does not protect “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102 (b).
The six basic rights that are protected under the Act are: the right to reproduce; prepare derivatives; distribute copies; publicly perform; publicly display; and digitally transmit the protected work. 17 U.S.C. § 106. Although copyright protection technically attaches the moment a work is created, this is largely meaningless since an author of a work cannot sue for copyright infringement unless she properly registers, or at least attempts to register, her work. 17 U.S.C. § 411(a); see also Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 595 U.S. 178, 181 (2022) (noting that a valid copyright registration is a prerequisite for bringing a copyright infringement action).
One of the primary defenses to a copyright infringement action is the doctrine of “fair use” which is codified by the Act. 17 U.S.C. § 107. Fair use of copyrighted work includes uses such as “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” Id. In determining whether the defense of fair use is met, courts must consider four statutory factors: purpose and character of the use; nature of the protected work; amount of the work used; and the effect of the use on the market value of the work. Id.
Warhol Case
Last year, The Supreme Court decided a hotly contested copyright case involving an Andy Warhol print that was made from a photograph of Prince taken by the iconic rock photographer, Lynn Goldsmith. Warhol, 598 U.S. 508.
In 1984, Vanity fair paid Goldsmith $400 for a one time only use of a photograph she had taken of Prince to use in a magazine article about him. Id. at 515. Specifically, Vanity Fair wanted Andy Warhol to make a separate work based on Goldsmith’s photo. Warhol ultimately made a total of sixteen derivative works from Goldsmith’s photo. In 2016, after Prince’s death, one of those derivative works was licensed to Condé Nast by the Andy Warhol Foundation for the Visual Arts for use in a story about Prince. The Warhol Foundation was paid $10,000 for the license and Goldsmith was paid nothing. Id.
The issue decided by the Supreme Court in Warhol was only whether the first factor in the fair use defense – the purpose and character of the use - favored Goldsmith. The Court held that it did favor Goldsmith because, even though Warhol’s derivative works added new expression to Goldsmith’s photo of Prince, the original and Warhol’s derivative work were used for substantially the same purpose – to portray the artist Prince along side a story about him. Id. at 525-26.
Philpot Case
With this backdrop, the Fourth Circuit analyzed whether the Journal’s use of Philpot’s photo was fair use. Philpot took a photograph of Ted Nugent at a concert in 2013 and submitted the photo to the U.S. Copyright Office for registration pursuant to 17 U.S.C. § 408. The Copyright Office promptly issued Philpot a certificate of registration. Philpot at 2. However, prior to registering the photo, Philpot entered into a licensing agreement with a third party, AXS TV, to view approximately one thousand of Philpot’s photographs and to select twelve for publication. The photo of Nugent was included in this group of photographs, but it was not sent to AXS TV for viewing until after it was registered. The timeline then went like this: (1) Philpot entered into an agreement with AXS TV; (2) Philpot registered the photo of Nugent; (3) Philpot sent the photo to AXS TV for it to view.
Fair Use
In 2016, the Journal used a copy of Philpot’s photograph of Nugent along with an article titled “15 Signs Your Daddy Was a Conservative.” The Fourth Circuit found that the Journal’s use of Philpot’s photo served substantially the same purpose as Philpot’s use of the photo, which was to depict the musician, Ted Nugent. Furthermore, the Journal’s use was not transformative at all because it was an identical copy save for some minor cropping and did not add any new expression to the work. Id. at 8. Finally, the Journal’s use of the photo was commercial since the article was published for monetary gain. These factors led the Fourth Circuit to conclude that the first fair use factor weighed in favor of Philpot. Id. at 10-11.
The Fourth Circuit went on to find the other three statutory factors regarding the defense of fair use weighed in favor of Philpot. The photograph was creative, the Journal used an exact copy of nearly the entire photo, and the Journal’s infringing use could have an adverse impact on the potential market for the photo if their use became unrestricted and widespread. Id. at 11-14.
Publication
The Fourth Circuit also addressed the Journal’s contention that Philpot’s copyright registration was invalid because it was inaccurate.
The Journal argued that the photo had been published prior to Philpot registering the copyright. And because Philpot registered the photo as unpublished, the registration was inaccurate and therefore invalid. Id. at 14. The Court cited two Ninth Circuit opinions in support of the proposition that published and unpublished works may not be registered together and if they are, it constitutes an inaccuracy which might jeopardize the validity of the registration. Id. at 16 (citing United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255 (9th Cir. 2011), and Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140 (9th Cir. 2019)).
This issue ultimately turned on whether Philpot’s agreement with AXS TV to view a catalogue of approximately one thousand of Philpot’s photos, which included the photo of Nugent, constituted publication. The Fourth Circuit ultimately held that Philpot’s agreement with AXS TV did not constitute publication of the photo. Philpot at 16.
The Copyright Act defines publication as “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. § 101. The Act further specifics that “[t]he offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.” Id.
According to the Journal, Philpot offered to distribute the photo to AXS TV when it entered the agreement with them which occurred prior to registration. So even though the photo was not actually sent to AXS TV until after Philpot registered it, the Journal argued that the offer of distribution constituted publication. However, “publication” does not include distribution to a selected group of individuals for a limited purpose and without the right to further distribution. Philpot at 16-17 (quoting Warner Bros. Ent. v. X One X Prods., 644 F.3d 584, 593 (8th Cir. 2011)).
This is precisely the type of agreement Philpot had with AXS TV. Philpot’s agreement with AXS TV was only for them to view approximately one thousand of his photos from which they could choose twelve to license from him. AXS TV had no right of further distribution of any of the photos viewed. Only if they selected twelve photos could AXS TV then seek to obtain a license to distribute the photos. The Fourth Circuit concluded that the photo of Nugent was not published as a matter of law prior to Philpot registering the copyright and therefore the copyright registration was accurate and valid. Philpot at 22-23.
Conclusion
While copyright law has a long and rich history in the United States, it continues to evolve along with the ever-growing number of creative artists in our society. There has been significant debate in the arts community as to whether the Supreme Court’s decision in Warhol will be helpful or harmful to artists and creative expression in our society. It is good to see the Fourth Circuit apply the Warhol case favor of protecting artists.
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