Category: Non-AI Copyright

Copyrights: Copyright law news and commentary from Cokato, Minnesota attorney Thomas James (Thomas B James) of the Law Office of Tom James | This category includes general legal issues such as the requirements for a valid copyright, ownership rights, registration, infringement, enforcement procedures, and damages.

The Copyright Discovery Rule Stands

The Copyright Act imposes a 3-year limitations period for copyright infringement claims. But when does a claim accrue? That is the (potentially) million-dollar question.

Last year, the United States Supreme Court held that as long as a claim is timely filed, damages may be recovered for any loss or injury, including losses incurred more than three years before the claim is filed (Warner Chappell Music. v. Nealy). The Court expressed no opinion about whether the Copyright Act’s three-year limitation period begins to run when the infringing act occurs or when the victim discovers it, leaving that question for another day. “Another day” arrived, but the Court still declined to address it. What, if anything, can be made of that?

Statute of Limitations for Copyright Infringement

The Copyright Act imposes a 3-year limitations period for copyright infringement claims. Specifically:

No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.

17 U.S.C. 507(b).

But when does a claim accrue? That is the (potentially) million-dollar question.

According to the “incident of injury” rule, an infringement claim accrues when an infringing act occurs. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. 663, 670 (2014). Under this rule, an infringement victim who did not learn about an infringing act until three years after it occurred would be out luck.

Courts in many circuits, however, apply an alternative rule. Known as the “discovery rule,” it holds that a copyright infringement claim accrues when “the plaintiff discovers, or with due diligence should have discovered, the injury that forms the basis for the claim.” William A. Graham Co. v. Haughey, 568 F. 3d 425, 433 (CA3 2009) (internal quotation marks omitted). According to Patry on Copyright, this is the majority rule.

If a court applies the discovery rule, then the infringement complaint must be filed within three years after the victim learns or should reasonably have learned of the infringing act, even if that act occurred more than three years earlier.


The Look-Back Period for Damages

As I explained in a previous blog post, the United States Supreme Court did not have the question about the validity of either accrual theory before it in Warner Chappell Music. Accordingly, it did not address the issue. Instead, the Court limited itself to deciding only the specific question before it, namely, whether damages can be claimed for all injuries that occurred before the victim learned (or reasonably should have learned) of an infringing act. The Court held that they can be. And this is true even for losses occurring more than three years before the infringement was discovered. Statutes of limitations only determine when a claim may be filed; they do not limit the look-back period for recovering damages for injury. “The Copyright Act contains no separate time-based limit on monetary recovery.” Warner Chappell Music, supra.

It must be kept in mind that the discovery rule has an important proviso. The clock starts clicking on a claim from the first date a victim actually knew or should have known of an infringement. In many cases, it may become more difficult to convince a judge that the victim’s unawareness of the infringing act was reasonable if a lot of time has gone by since the infringement occurred. Reasonableness, however, depends on all the facts and circumstances, so it has to be decided on a case-by-case basis.

RADesign, Inc. v. Ruthie Davis et al.

Michael Grecco Productions, Inc. sued RADesign, Inc. and others for copyright infringement. The complaint alleged that the defendant’s infringing use of a copyright-protected photograph began on August 16, 2017, and that the plaintiff discovered it on February 8, 2021. The complaint was filed in October, 2021. As a result, the claim would be barred under the “incident of injury” rule because it was filed more than three years after the alleged infringement occurred. The complaint, however, was filed in the Second Circuit, a jurisdiction that recognizes the discovery rule. Therefore, the question became whether the failure to discover the infringement within three years was reasonable. The district court held that it was not. The court described the copyright owner in this case as “sophisticated” in detecting and litigating infringements and therefore not entitled to the benefit of the discovery rule.

The Second Circuit Court of Appeals reversed, declaring, “This ‘sophisticated plaintiff’ rationale has no mooring to our cases.”

The U.S. Supreme Court’s Denial of Certiorari

RADesign, Inc. filed a petition for certiorari to the United States Supreme Court. The sole question presented was “Whether a claim ‘accrue[s]’ under the Copyright Act’s statute of limitations for civil actions, 17 U.S.C. 507(b), when the infringement occurs (the ‘injury rule’) or when a plaintiff discovers or reasonably should have discovered the infringement (the ‘discovery rule’).” The petition argued that the Copyright Act does not explicitly provide for a discovery rule and asserted that the courts of appeal should not have adopted one.

Unlike in Warner Chappell Music, the Court now had the validity of the discovery rule in copyright infringement cases squarely before it. The Court, however, declined the invitation to review that question. On June 16, 2025, it denied certiorari.

What a Denial of Certiorari Means

Really, the only legal effect of a denial of certiorari is that the lower court’s decision stands. In this case, that would mean that the Second Circuit Court of Appeals’ decision remains in effect for that specific case. For the time being, anyway, attorneys can cite the reasoning and holding of the Second Circuit Court of Appeals decision as legal precedent in other cases.

What a Denial of Certiorari Does Not Mean

A denial of certiorari does not mean that the Supreme Court agreed with the Court of Appeals. The Court of Appeal’s decision sets a precedent in the Second Circuit, but the denial of certiorari does not have that effect. It simply means the Supreme Court has decided not to trouble itself with the question at this time.

Caveats

Copyright owners and practitioners should not read too much into this decision. Even if the discovery rule forecloses a finding of untimeliness on the face of a complaint, a defendant may still be able to assert untimeliness as an affirmative defense. Again, the reasonableness of delayed acquisition of knowledge of infringement must be decided on a case-by-case basis. Copyright owners and their attorneys should be vigilant in detecting infringement of protected works and diligent in timely filing claims.

 

 

When Your Car Is a Character

This post isn’t about cars with character. It’s about cars as characters. Specifically, the question whether it is possible to claim copyright protection in a car that appears in a book, movie, song, or other work.

Carroll Shelby Licensing v. Halicki et al.

If you’re like me, you’ve probably owned a car with character, or even several cars with character, at some time in your life. A used Volkswagen Jetta with a replacement alternator that was held in place with washers. An old Plymouth Duster with a floor and doors that rusted clean through before the slant-6 ever had a problem. A Honda Fit that . . . well, this is probably a good place to stop dredging up memories. This post isn’t about cars with character. It’s about cars as characters. Specifically, the question whether it is possible to claim copyright protection in a car that appears in a book, movie, song, or other work.

The Ninth Circuit Court of Appeals had occasion to address this very question in Carroll Shelby Licensing et al. v. Halicki et al, No. 23-3731 (9th Cir., May 27, 2025).

Gone in 60 Seconds and Sequela

In the 1974 movie, Gone in 60 Seconds, the protagonist is tasked with stealing forty-eight types of cars. He and his colleagues assign them names. They call the Ford Mustang with black stripes “Eleanor.” Action ensues.

Three movies incorporating elements of this one were made and released thereafter — The Junkman, Deadline Auto Theft, and a year 2000 remake of Gone in 60 Seconds. A car that was made to look like the Mustang in the original Gone in 60 Seconds appeared in these movies, as well. The message, “‘Eleanor’ from the movie Gone in 60 Seconds” was painted on its side.

Shelby contracted with Classic Recreations to produce “GT-500CR” Mustangs. Without going into all of the contractual and procedural details, the owner of the copyright in the first three movies eventually asserted a claim of copyright infringement, raising the question whether copyright can be claimed in “Eleanor,” the Ford Mustang car that appeared in the movies.

Character Copyrights

Fictional works generally are eligible for copyright protection. Sometimes copyright protection will extend to fictional characters within one as well. Mickey Mouse and Godzilla are examples.

NOTE: This blog post was not produced, sponsored or endorsed by Disney, and is not affiliated with Disney or any person, company or organization affiliated or associated with Disney.

The test for independent character copyright protection is set out in DC Comics v. Towle. In sum, the character must:

  1. have both physical and conceptual qualities;
  2. be “sufficiently delineated” to be recognizable as the same character whenever it appears; and
  3. be “especially distinctive” with “some unique elements of expression.”

The 9th Circuit Court of Appeals held that “Eleanor” failed to meet any of these criteria.

1. Physical and conceptual qualities

Eleanor had physical qualities, but the Court held that it lacked conceptual qualities. Conceptual qualities include “anthropomorphic qualities, acting with agency and volition, displaying sentience and emotion, expressing personality, speaking, thinking, or interacting with other characters or objects.” Shelby, supra. The character does not have to be human. It can be almost anything, so long as it has some of the above traits. Thus, the Batmobile could qualify.

The Court determined, however, that Eleanor the car lacked any of these conceptual qualities, likening her to prop rather than a character.

2. Sufficient delineation

Here, the Court determined that Eleanor lacked consistent traits. In some iterations, Eleanor appeared as a yellow and black Fastback Mustang; in others, as a gray and black Shelby GT-500 Mustang, or a rusty, paintless Mustang. The Court concluded that Eleanor was too lightly sketched to satisfy the “sufficient delineation” test.

3. Unique elements of expression

Having no regard at all for Eleanor’s feelings, the Court declared, “Nothing distinguishes Eleanor from any number of sports cars appearing in car-centric action films.” According to the Court, she was just a run-of-the-mill automobile. Accordingly, she failed the distinctiveness test.

Quiz

Just for fun, try your hand at applying the Towle test to determine which of these might qualify for copyright protection and which ones don’t:

  1. Chuck Berry’s Maybeline
  2. My Mother the Car
  3. Prince’s Little Red Corvette
  4. Chitty Chitty Bang Bang
  5. Christine
  6. KITT in Knight Rider
  7. The Magic School Bus
  8. Thomas the Tank Engine
  9. Gumdrop
  10. Dick Turpin
  11. Truckster in National Lampoon’s Vacation
  12. The Bluesmobile in The Blues Brothers
  13. The Hearse
  14. Herbie in The Love Bug
  15. The DeLorean in Back to the Future
  16. The Gnome-Mobile
  17. Ecto-1 in Ghostbusters
  18. Bessie in Doctor Who
  19. General Lee in The Dukes of Hazzard
  20. The Munster Coach in The Munsters
  21. Shellraiser in Teenage Mutant Ninja Turtles
  22. Benny the Cab in Who Framed Roger Rabbit?
  23. Lightning McQueen in Cars
  24. The Mystery Machine in Scooby-Doo
  25. The Gadgetmobile in Inspector Gadget
  26. Mustang Sally
  27. Killdozer
  28. Ivor the Engine
  29. Tootle
  30. Roary the Racing Car.

Give yourself 3,500 extra points if you are familiar with all of these references.

Points are not redeemable for value.

Concluding Thought

Even if a fictional character does not qualify for copyright protection, it might be protected as a trademark in some cases. The requirements for trademark protection are a subject for another day.

 

Photographers’ Rights

The Second Circuit Court of Appeals reversed a trial judge’s dismissal of a photographer’s copyright infringement complaint, holding that because “fair use” was not clearly established on the face of the complaint, the district court should not have dismissed the complaint sua sponte. Romanova v. Amilus, Inc.

Romanova v. Amilus, Inc., No. 23-828 (2nd Cir., May 23, 2025)

The Second Circuit Court of Appeals reversed a trial judge’s dismissal of a photographer’s copyright infringement complaint, holding that because “fair use” was not clearly established on the face of the complaint, the district court should not have dismissed the complaint sua sponte.

European grass snake photograph illustrating copyright infringement article by Cokato Minnesota attorney Thomas James

Photographer Jana Romanova created a photograph of a woman with a snake wrapped around her left hand and another snake crawling up her torso. (Not the one pictured here.) She licensed it to National Geographic Magazine for a single use. According to the complaint, Amilus, Inc. allegedly made a copy of the photograph and published it to its website. Romanova allegedly sent notifications demanding the removal of the photograph from the website. The defendant allegedly did not respond. This lawsuit followed.

The defendant allegedly did not appear or respond to the complaint, so Romanova moved for the entry of default judgment. Rather than grant a default judgment, however, the district court judge sua sponte ordered Romanova to show cause why the court should not dismiss the case on the grounds that the defendant’s use of the photograph was fair use. Although fair use is an affirmative defense, which defendants have the burden of asserting and proving, the judge opined that the fair use defense did not need to be pleaded because the judge believed the fair use defense was “clearly established on the fact of the complaint.“

Romanova appealed. The Second Circuit Court of Appeals reversed, effectively allowing the infringement claim to go forward.

Fair Use

In its decision, the Second Circuit Court of Appeals clarified how courts are to interpret and apply the four-factor “fair use” test outlined in the Copyright Act, 17 U.S.C. § 107 (purpose and character of the use; nature of the work; amount and substantiality of the portion copied; and the effect on the market for the work.)

The district court concluded that the defendant’s publication of the photograph communicated a different message than what the photographer intended. According to the district court, the purpose of the publication in the National Geographic was “to showcase persons in [her] home country of Russia that kept snakes as pets, specifically to capture pet snakes in common environments that are more associated with mainstream domesticated animals.” The district court found that the purpose of the defendant’s publication was to communicate a message about “the ever-increasing amount of pet photography circulating online.“

Apparently the district court was under the impression that the use of a copyright-protected work for any different purpose, or to communicate any different message, is “transformative” and therefore “fair use.” The Court of Appeals clarified that is not the case. In addition to alleging and proving the use was for a different purpose or conveyed a different meaning, a defendant seeking to establish a fair use defense must also allege and prove a justification for the copying.

Examples of purposes that may justify copying a work include commentary or criticism of the copied work, or providing information to the public about the copied work, in circumstances where the copy does not become a substitute for the work. (See, e.g., Authors Guild v. Google, Inc., 804 F.3d 202, 212 (2d Cir. 2015).) Copying for evidentiary purposes (such as to support a claim that the creator of the work published a defamatory statement) can also be a valid justification to support a fair use defense. Creating small, low-resolution copies of images (“thumbnails”) may be justified when the purpose is to facilitate Internet searching. (Perfect 10 v. Amazon.com, 508 F.3d 1146, 1165 (9th Cir. 2007). Facilitating blind people’s access to a work may provide a justification for converting it into a format that blind people can read. (Authors Guild v. HathiTrust, 755 F.3d 87, 97 (2d Cir. 2014).

The Court cited other examples of potential justifications for copying. The Court admonished, however, that the question whether justification exists is a fact-specific determination that must be made on a case-by-case basis.

[J]ustification is often found when the copying serves to critique, or otherwise comment on, the original, or its author, but can also be found in other circumstances, such as when the copying provides useful information about the original, or on other subjects, usually in circumstances where the copying does not make the expressive content of the original available to the public.

Romanova, supra.

The only “justification” the district court cited for the copying was that it believed the defendant merely wanted to illustrate its perception of a growing trend to publish photographs of people with pets. “Little could remain of an author’s copyright protection if others could secure the right to copy and distribute a work simply by asserting some fact about the copied work,” the Court observed. The defendant’s publication of the copy did not communicate criticism or commentary on the original photograph or its author, or any other subject, the Court held.

The Court held that the remaining three fair use factors also militated against a finding of fair use.

Sua Sponte Dismissal for “Fair Use”

Justice Sullivan filed a concurring opinion. He would have reversed on procedural grounds without reaching the substantive issue. Specifically, Justice Sullivan objected to the trial judge’s raising of the fair use defense sua sponte on behalf of a non-appearing defendant. Normally, if a complaint establishes a prima case for relief, the court does not consider affirmative defenses (such as fair use) unless the defendant asserts them. That is to say, fair use is an affirmative defense; the defendant, not the plaintiff, bears the burden of proof.

Conclusion

Appeals courts continue to rein in overly expansive applications of “transformative” fair use by the lower courts. Here, the Court of Appeals soundly reasoned that merely being able to articulate an additional purpose served by publishing an author’s entire work, unchanged, will not, by itself, suffice to establish either transformative use or fair use.

 

The New Copyright Circumvention Rules

the DMCA made it unlawful to “circumvent a technological measure that effectively controls access to” copyrighted material.

In 1998, Congress enacted the Digital Millenium Copyright Act (“DMCA”). In addition to establishing the notice-and-take-down regimen with which website and blog owners are (or should be) familiar, the DMCA made it unlawful to “circumvent a technological measure that effectively controls access to” copyrighted material. (17 U.S.C. § 1201(a)(1)(A)). The Act set out some permanent exemptions, i.e., situations where circumvention is allowed. In addition, it gave the Librarian of Congress power to periodically establish new ones. These additional exemptions are temporary, lasting for three years, but the Librarian of Congress can and does renew them. On October 18, 2024, the Librarian of Congress issued a Final Rule renewing some exemptions and creating some new ones.

What is “circumvention of a technological measure”?

Circumventing a technological measure means “to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner.” (17 U.S.C. § 1201(a)(3)(A)).

So, no decrypting or unscrambling to get access to a copyrighted work. What else? Well, anything that involves avoiding or bypassing a technological measure without the copyright owner’s permission. You can’t do that, either.

A technological measure that “controls access to a work” can be anything that “requires the application of information, or a process or a treatment, with the authority of the copyright owner,” to gain access to the work.” (17 U.S.C. § 1201(a)(3)(B)). Entering a password-protected website without a password the copyright owner has authorized you to use is an example.

The permanent exemptions

Section 1201 of Title 17 lists permanent exemptions for:

  • Nonprofit libraries, archives, and educational institutions that circumvent copyright protection measures solely for the purpose of determining whether to acquire a copy of the work for a permitted purpose
  • Law enforcement, intelligence, and government activities
  • Reverse engineering
  • Encryption research
  • Prevention of access of minors to material on the Internet
  • Prevention of the collection or dissemination of personally identifying information
  • Security testing

Detailed conditions apply to each of these exemptions. If you are thinking of invoking one of them, read the entire statutory provision carefully and seek professional legal advice.

Renewed temporary exemptions

The following temporary exemptions have been renewed for another 3-year term:

  • Fair use of short portions of motion pictures for certain educational and derivative uses

This includes use in a parody or in a documentary film about the work’s biographical or historically significant nature; use in a noncommercial video; use in nonfiction multimedia e-books; use for educational purposes by educational institution faculty and students; educational uses in Massive Open Online Courses; and educational uses in nonprofit digital and media literacy programs offered by libraries, museum, and other organizations.

  • Closed captioning and other disability access services by disability service offices or similar units at educational institutions for students, faculty or staff with disabilities
  • Preservation of copies of motion pictures by an eligible library, archives, or museum
  • Scholarly research and teaching involving text and data mining of motion pictures or electronic literary works by researchers affiliated with a nonprofit educational institution
  • Literary work or previously published sheet music that is distributed electronically and include access controls that interfere with assistive technologies
  • Access to patient data on medical devices or monitoring systems
  • Computer programs that unlock wireless devices to allow connection of a device to an alternative wireless network
  • “Jailbreaking” computer programs (computer programs that enable electronic devices to interoperate with or to remove software applications), for the purpose of jailbreaking smartphones and other portable all-purpose computing devices, smart televisions, voice assistant devices, and routers and dedicated networking devices
  • Computer programs that control motorized land vehicles, marine vessels, and mechanized agricultural vehicles for the purposes of diagnosis, repair, or modification of a vehicle or vessel function
  • Diagnosis, maintenance or repair of devices designed primarily for use by consumers
  • Access to computer programs that are contained in and control the functioning of medical devices or systems, and related data files, for purposes of diagnosis, maintenance, or repair
  • Security research
  • Individual play by video gamers and preservation of video games by a library, archives or museum for which outside server support has been discontinued, and preservation by a library, archives, or museum of discontinued video games that never required server support
  • Preservation of computer programs by libraries, archives, and museums
  • Computer programs that operate 3D printers to allow use of alternative material
  • Investigation of potential infringment of free and open-source computer programs

Again, detailed conditions apply to each of these exemptions. If you are thinking of invoking one of them, read the entire provision carefully and seek professional legal advice.

New Exemptions

New 3-year exemptions the Librarian of Congress just announced in October, 2024 include:

  • Sharing of copies of corpora by academic researchers with researchers affiliated with other nonprofit institutions of higher education for purposes of conducting independent text or data mining research and teaching, where those researchers are in compliance with the exemption
  • Diagnosis, maintenance and repair of retail-level commercial food preparation equipment
  • Access, storage and sharing of vehicle operational and telematics data generated by motorized land vehicles and marine vessels

And once again, detailed conditions apply to each of these exemptions. If you are thinking of invoking one of them, read the entire provision carefully and seek professional legal advice.

Confused by copyright, trademark and other IP issues? Read my book, IP Law for Non-IP Attorneys, available on Amazon.com

 

Copyright Infringement Damages

Are damages for copyright infringement always limited to the three-year period before suit is filed? The Supreme Court says no.

Library of Congress building - illustration for Thomas B James blog post

Warner Chappell Music v. Nealy

Are damages for copyright infringement always limited to the three-year period before suit is filed? The Supreme Court says no.

The Limitations Period for Copyright Infringement

The Copyright Act imposes a three-year statute of limitations for copyright infringement claims: “No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” 17 U.S.C. 507(b). It turns out the rule was easier for legislators to write than for courts to apply.

Sherman Nealy’s Infringement Claims

In the 1980s, Sherman Nealy and Tony Butler formed Music Specialist, Inc. The company released several recordings before the venture was dissolved. Nealy subsequently served two terms in prison, one from 1989 to 2008, and the other from 2012 to 2015.

Meanwhile, Butler licensed songs from the Music Specialist catalog to Warner Chappell Music, without Nealy’s knowledge. Warner Chappell, in turn, licensed them to popular recording artists and television shows.

In 2018, Nealy sued Warner Chappell for copyright infringement. He sought damages and profits for infringement occurring between 2008 and 2018. A significant portion of this claim would have been time-barred if “accrual,” as used in Section 107(b), referred only to the date on which an infringing act occurred. Some courts have held, however, that the rule does not apply if the copyright owner neither knew nor should have known that infringement was occurring. In that situation, a claim accrues when a “plaintiff discovers, or with due diligence should have discovered,” the infringing act. Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. 663, 670 (2014). Once a copyright claimant learns that infringement has occurred, he or she then has three years from that time to file suit. Nealy alleged that he did not learn of the infringement until 2016, which was within the three-year limitations under the discovery rule.

The district court ruled that although his claims were timely filed, he could recover damages only for infringement occurring during the three-year period preceding his commencement of the lawsuit.

The Circuit Split

The district court’s ruling was consistent with the Second Circuit’s decision in Sohn v. Scholastic, Inc. 959 F.3d 39, 51-52 (2nd. Cir. 2020). The Ninth Circuit, however, allows recovery for all infringing acts, even beyond the three-year period, when a claim is timely filed under the discovery rule. Starz Entertainment v. MGM, 39 F. 4th 1236, 1244 (CA9 2022)). The Eleventh Circuit Court of Appeals adopted the Ninth Circuit’s view. It therefore reversed the district court.

The United States Supreme Court granted certiorari to resolve the circuit split.

The Supreme Court Decision

The Court has never ruled on the validity of the discovery rule. That question, however, was not before it in this case. Warner Chappell had not challenged the rule in the lower court, so the Court limited its review to the scope of recovery under the discovery rule.

Its ruling on that question was simple. The Act prescribes a three-year limitation for filing suit. It imposes no limit on the time for recovering damages. The Act says only that an infringer is liable for damages and profits made from the infringing act. “The Copyright Act contains no separate time-based limit on monetary recovery.” Id.

Justices Gorsuch, Thomas and Alito dissented. In their view, the discovery rule is not valid. Accordingly, they would have dismissed the petition as improvidently granted. They would have preferred for the Court to wait for a case that squarely raises the validity of the discovery rule instead of deciding an issue that requires them to assume, arguendo, that it is.

The Take-Away

The decision obviously is a victory for copyright owners and claimants. As long as they file an infringement claim within three years of learning they have one, it does not matter how long ago the infringement occurred. Recovery is not limited to the three years prior to the commencement of the action. It is important, however, to be aware of two limitations on the Court’s decision.

Known infringement

First, the three-year limitation period still exists.

Example: Chuck learns in 2019 that Robert has been infringing his copyright for years. The infringement is ongoing. He waits until 2023, however, to file a claim. Because he did not file a claim within three years of learning of the pre-2019 infringing acts, he will not be able to recover damages or profits for them. In this situation, his recovery will be limited to the three-year period prior to commencing an action.
The validity of the discovery rule

As the dissenters observed, the Court has never directly ruled on the validity of the discovery rule. It is possible that if a litigant were to raise that issue, the question could make its way to the Supreme Court. It is also possible that the Court could decide against its validity at that time.

It does seem to be a just and fair rule. After all, why should infringers be permitted to benefit from their victims’ lack of knowledge? The Court, however, could decide against adopting a per se rule of validity, instead leaving it to trial courts to balance the equities in each individual case. We simply have no way of knowing, at this point, what approach the Court would take if the validity of the discovery rule were to come squarely before it.

Subject to these caveats, the decision is cause for celebration in the creative community.

Continuing education

Interested in learning how to do a trademark search? On June 10, 11 and 12, I will be presenting a series of 1-hour webinars covering: basic trademark law and “likelihood of confusion” analysis; searching the USPTO database; and advanced searching with RegEx. For more information, visit the Echion CLE course page.

Nontransformative Nuge

A reversal in the 4th Circuit Court demonstrates the impact the Supreme Court’s decision in Andy Warhol Foundation for the Arts v. Goldsmith is already having on the application of copyright fair use doctrine in federal courts. Philpot v. Independent Journal Review,

A reversal in the 4th Circuit Court demonstrates the impact the Supreme Court’s decision in Andy Warhol Foundation for the Arts v. Goldsmith is already having on the application of copyright fair use doctrine in federal courts.

Philpot v. Independent Journal Review, No. 21-2021 (4th Circ., Feb. 6, 2024)

Philpot, a concert photographer, registered his photograph of Ted Nugent as part of a group of unpublished works. Prior to registration, he entered into a license agreement giving AXS TV the right to inspect his photographs for the purpose of selecting ones to curate. The agreement provided that the license would become effective upon delivery of photographs for inspection. After registration, Philpot delivered a set of photographs, including the Nugent photograph, to AXS TV. He also published the Nugent photograph to Wikimedia Commons under a Creative Commons (“CC”) license. The CC license allows free use on the condition that attribution is given. LJR published an article called “15 Signs Your Daddy Was a Conservative.” Sign #5 was He hearts the Nuge. LJR used Philpot’s photograph of Ted Nugent as an illustration for the article, without providing an attribution of credit to Philpot.

Philpot sued IJR for copyright infringement.  IJR asserted two defenses: (1) invalid copyright registration; and (2) fair use. The trial court did not decide whether the registration was valid or not, but it granted summary judgment for IJR based on its opinion that the news service’s publication of the photograph was fair use. The Fourth Circuit Court of Appeals reversed, ruling in Philpot’s favor on both issues. The Court held that the copyright registration was valid and that publication of the photograph without permission was not fair use.

The copyright registration

Published and unpublished works cannot be registered together. Including a published work in an application for registration of a group of unpublished works is an inaccuracy that might invalidate the registration, if the applicant was aware of the inaccuracy at the time of applying. Cf. Unicolors v. H&M Hennes & Mauritz, 595 U.S. 178 (2022). LJR argued that Philpot’s pre-registration agreement to send photographs to AJX TV to inspect for possible curation constituted “publication” of them so characterizing them as “unpublished” in the registration application was an inaccuracy known to Philpot.

17 U.S.C. § 101 defines publication as “the distribution of copies . . . to the public” or “offering to distribute copies . . . to a group of persons for purposes of further distribution . . . or public display.” The Court of Appeals held that merely entering into an agreement to furnish copies to a distributor for possible curation does not come within that definition. Sending copies to a limited class of people without concomitantly granting an unrestricted right to further distribute them to the public does not amount to “publication.”

Philpot’s arrangement with AXS TV is analogous to an author submitting a manuscript to a publisher for review for possible future distribution to the public. The U.S. Copyright Office has addressed this. “Sending copies of a manuscript to prospective publishers in an effort to secure a book contract does not [constitute publication].” U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 1905.1 (3d ed. 2021). Philpot had provided copies of his work for the limited purpose of examination, without a present grant of a right of further distribution. Therefore, the photographs were, in fact, unpublished at the time of the application for registration. Since no inaccuracy existed, the registration was valid.

Fair use

The Court applied the four-factor test for fair use set out in 17 U.S.C. § 107.

(1) Purpose and character of the use. Citing Andy Warhol Found. For the Visual Arts v. Goldsmith, 598 U.S. 508 , 527–33 (2023), the Court held that when, as here, a use is neither transformative nor noncommercial, this factor weighs against a fair use determination. LJR used the photograph for the same purpose as Philpot intended to use it (as a depiction of Mr. Nugent), and it was a commercial purpose.

(2) Nature of the work. Photographs taken by humans are acts of creative expression that receive what courts have described as “thick” copyright protection.” Therefore, this factor weighed against a fair use determination.

(3) Amount and substantiality of the portion used. Since all of the expressive features of the work were used, this factor also weighed against a fair use determination.

(4) Effect on the market for the work. Finally, the Court determined that allowing free use of a copyrighted work for commercial purposes without the copyright owner’s permission could potentially have a negative impact on the author’s market for the work. Therefore, this factor, too, weighed against a fair use determination.

Since all four factors weighed against a fair use determination, the Court reversed the trial court’s grant of summary judgment to IJR and remanded the case for further proceedings.

Conclusion

This decision demonstrates the impact the Warhol decision is having on copyright fair use analysis in the courts. Previously, courts had been interpreting transformativeness very broadly. In many cases, they were ending fair use inquiry as soon as some sort of transformative use could be articulated. As the Court of Appeals decision in this case illustrates, trial courts now need to alter their approach in two ways: (1) They need to return to considering all four fair use factors rather than ending the inquiry upon a defendant’s articulation of some “transformative use;” and (2) They need to apply a much narrower definition of transformativeness than they have been. If both the original work and an unauthorized reproduction of it are used for the purpose of depicting a particular person or scene (as distinguished from parodying or commenting on a work, for example), for commercial gain, then it would no longer appear to be prudent to count on the first of the four fair use factors supporting a fair use determination.

Photo: Photograph published in a July, 1848 edition of L’Illustration. Believed to be the first instance of photojournalism, it is now in the public domain.

What Is In the Public Domain?

How to determine what is in the public domain in the United States, explained by attorney Thomas B. James

Mickaey Mouse in "Steamboat Willie" illustration for Thomas B James article on "Public Domain"

Creative expressions generally are protected by copyright law. Sometimes, however, they are not. When that is the case, a work is said to be in “the public domain.”

The rules specifying the conditions for copyright protection vary from country to country. In the United States, they are set out in the Copyright Act, which is codified in Title 17 of the United States Code. The fact that a work is or is not in the public domain in the United States, however, is not determinative of its public domain status in another country. A work that is in the public domain in the United States might still be protected by copyright in another country.

This blog post focuses on the public domain rules set out in U.S. copyright law.

The 3 ways a work enters the public domain

There are three reasons a work may be in the public domain:

  • It was never protected by copyright. Some kinds of expression do not receive copyright protection. Federal government publications created by federal employees, for example, are not protected by copyright.
  • Failure to comply with a formal requirement. At one time, it was possible to lose copyright protection by failing to comply with a legal requirement, such as the requirement to display a copyright notice on a published work.
  • Expiration of the copyright term. Unlike trademarks, copyrights are time-limited. That is to say, the duration of a copyright is limited to a specified term. Congress has altered the durations of copyrights several times.

It is important to keep in mind that once a work enters the public domain, the copyright is gone. This is true even if copyright was lost only because of failure to comply with a formal requirement that has since been abolished. For example, if a work was published in 1976 without a copyright notice, it entered the public domain. The elimination of the copyright notice requirement in 1989 did not have the effect of reviving it. A few very limited exceptions exist, but in general, the elimination of a formal requirement does not have the effect of reviving copyrights in works that have already entered the public domain.

Guidelines for determining the copyright term

The following rules may be used for determining whether a work of a kind that is protected by copyright is in the public domain or not.

Different sets of rules apply to sound recordings, architectural works, and works first published outside the United States by a foreign national or a U.S. citizen living abroad. They are not covered in this blog post.

Note that the term of a copyright runs through the end of the calendar year in which it would otherwise expire. That is to say, a work enters the public domain on the first day of the year following the expiration of its term.

Unpublished and unregistered works

General rule: Life of the author + 70 years. If the author’s date of death is not known, then the term is 120 years from the date of creation.

Anonymous or pseudonymous works: 120 years from the date of creation.

Works made for hire: 120 years from the date of creation.

Works registered or first published in the US

Before 1929

All works registered or first published in the United States before 1929 are in the public domain now.

1929 to 1963

  • Published without a copyright notice: In the public domain.
  • Published with a copyright notice, but not renewed: In the public domain.
  • Published with a copyright notice, and renewed: 95 years after the first publication date.

1964 to 1977

  • Published without a copyright notice: In the public domain.
  • Published with a copyright notice: 95 years after the first publication date.

1978 to March 1, 1989

  • Created before 1978 and first published, with a copyright notice, between 1978 and March 1, 1989: Either 70 years after the death of the author or December 31, 2047, whichever occurs later. (For works made for hire, it is (a) 95 years after the date of first publication or 120 years after creation, whichever occurs first, or (b) December 31, 2047, whichever occurs later.
  • Created after 1977 and published with a copyright notice: 70 years after the death of the author (For works made for hire, it is 95 years after the date of first publication or 120 years after creation, whichever occurs first.)
  • Published without a copyright notice, and without subsequent registration within 5 years: In the public domain.
  • Published without a copyright notice but with subsequent registration within 5 years: Life of the author + 70 years (For works made for hire, it is 95 years after first publication or 120 years after creation, whichever occurs first.)

March 1, 1989 to 2002

  • Created before 1978 and first published between March 1, 1989 and 2002: The greater of (a) The life of the author + 70 years (For works made for hire, it is 95 years after first publication or 120 years after creation, whichever occurs first); or (b) December 1, 2047.
  • Created after 1977: Life of the author + 70 years (For works made for hire, it is 95 years after first publication or 120 years after creation, whichever occurs first.)

after 2002

  • Life of the author + 70 years
  • Works made for hire: 95 years after the date of publication or 120 years after the date of creation, whichever occurs first.

Sound recordings, architecture, and foreign works

The foregoing rules do NOT apply to sound recordings, architectural works, and works that were first published outside the United States by a foreign national or a U.S. citizen living abroad. Special sets of rules apply when determining the public domain status of those kinds of works.

Contact attorney Tom James for copyright help

Contact Tom James (“The Cokato Copyright Attorney) for copyright help.