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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)

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 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 Romanova 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.

Top Copyright Cases of 2024

Many AI-related copyright lawsuits continued to proceed through the courts

Warner Chappell Music Inc. v. Nealy

The Copyright Act imposes a three-year period of limitations for copyright infringement claims. There has been a split in the circuits about whether this means that damages could be claimed only for infringement occurring during the three-year period or whether damages could be recovered for earlier acts of infringement so long as the claim is timely filed. The Supreme Court has now resolved the split.

The issue arises in cases where a claimant invokes the discovery rule. The general rule is that a limitations period runs from the date of the act giving rise to the cause of action. The discovery rule, by contrast, measures the limitations period from the date the infringing act is discovered. Thus, for example, if an infringing act occurred in 2012 but the copyright owner did not learn about it until 2022, then under the traditional rule, the claim would be time-barred. Under the discovery rule, it would not be.

The U.S. Supreme Court’s holding in this case is to the effect that if the discovery rule applies in the jurisdiction where suit is filed, and a claimant properly invokes it, then damages are not limited to the three years preceding suit. Rather, any damages incurred since the date of the infringing act are recoverable.

The Court did not rule on the validity of the discovery rule.

Warner Chappell Music Inc.. v. Nealy, 601 U.S. ____ (2024).

Hachette Book Group Inc. v. Internet Archive

I wrote about Hachette Book Group v. Internet Archive back in 2022, when it was at the summary judgment stage in the district court for the Southern District of New York. Astute readers with much better memory than I possess will recall that I included in my list of the top copyright cases os 2022. The complaint, filed by book publishers, alleged that the Internet Archive made digital copies of over a million print books and then freely distributed the copies to members of the public, all without the permission of the copyright owners. In 2023, the district judge ruled in favor of the publishers, holding that the enterprise was not “fair use.” It subsequently issued an injunction against further scanning and distribution of books. (See A Copyright Win in the Internet Archive Lawsuit.) This year, the Second Circuit Court of Appeals affirmed the decision.

To some, the decision might seem like a no-brainer. Copying other people’s books and giving them away for free, without the copyright owners’ permission, sounds like core copyright infringement, right? Yet, before the Warhol v. Goldsmith decision in 2023, courts had been applying such an expansive view of the “transformative use” branch of fair use that some people thought that making digital copies of a print book was categorically “transformative” and therefore fair use. This decision makes it clear that no, it isn’t.

The Internet Archive has said it will not appeal the decision to the United States Supreme Court.

Hachette Book Group Inc. et al. v. Internet Archive, No. 23-1260 (2^nd Cir. 2024)

Griner v. King

U.S. Representative Steve King’s campaign committee used a copyright-protected photograph in his campaign without permission. King’s committee had argued fair use and that it had an “implied license” to use the image because it had been widely circulated as a meme on the Internet. The Eighth Circuit Court of Appeals upheld an Iowa jury’s verdict for the copyright owner.

Griner et al. v. King et al., No. 23-2117, (8^th Cir. 2024)

The Intercept Media v. OpenAI

This isn’t really a momentous decision, in terms of precedential value, but it is the first major victory for Big AI in the plethora of AI-related lawsuits they are facing.

The Intercept Media, Inc. sued OpenAI and Microsoft Corporation for alleged Digital Millennium Copyright Act (DMCA) violations in connection with training the AI tool, ChatGPT. The defendants filed a motion to dismiss. On November 21, 2024 the New York court dismissed claims against Microsoft with prejudice. The court dismissed the 17 U.S.C. § 1202(b)(3) claim against OpenAI but allowed the claim under 17 U.S.C. §1202(b)(1) to proceed.

Section 1202(b)(1) prohibits unauthorized removal or alteration of copyright management information, including author information and the copyright notice.

The Intercept Media Inc. v. OpenAI Inc., No. 1:24-cv-01515, (S.D.N.Y. Nov. 21, 2024).

Stay tuned…

Many AI-related copyright lawsuits continued to proceed through the courts in 2024, with decisions expected in 2025 or later.

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,

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 (4^th 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.

Tag: transformative-use

Photographers’ Rights

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