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Introduction

We are seeing some more cases and legal demand letters from photographers who are posting their images as FREE TO USE online (often under a creative commons license), and requiring a certain "attribution" to be included in the use of the image, photo, illustration or video for example.  Then, if a company decides to use that image on its website or social media channels such as TikTok, Instagram, the company website, YouTube videos or Facebook, the photographer hires a lawyer and seeks a demand to settle this case, and if not, they may threaten to take yor all the way to federal court, and a jury trial.  This can be annoying, costly, surprising, and expensive.   This blog talks about one published case where attribution requirements were front and center, and a Defendant argued innocent infringement and fair use defense.  This will hopefully provide some examples if your company is approached by this type of Plaintiff demand.

While copyright infringement is known as a "strict liability offense" (it doesn't matter if you meant to cause harm or injury or not), there may be some critical questions to ask before PAYING UP a potentially costly settlement demand to a photo infringement law firm.

Overview of the innocent infringement defense

Under Federal Law, Section 17 U.S.C. § 504(c) provides that a statutory damages award may be reduced if the infringer “was not aware and had no reason to believe that his or her acts constituted an infringement of copyright.” While the defendant has frivolously tried to evade liability by asserting its purported lack of scienter, copyright infringement is a strict liability tort.

The Copyright Act thus provides that courts may reduce the total damages award if the violator proves that it "was not aware and had no reason to believe that its acts constituted a violation." 17 U.S.C.A. § 1203(b)(5). WOS asserts this defense with respect to Philpot's CMI-removal claims. 

Additionally, the Copyright Act provides that courts may reduce the award of statutory damages to $200 when the infringer "was not aware and had no reason to believe that his or her acts constituted an infringement of copyright." 17 U.S.C. § 504(c)(2). 

Accordingly, even if the defendant's conduct amounted to innocent infringement (and it did not), such innocence would, at most, allow the court to reduce damages in its discretion.

Defense not available if you saw a copyright symbol

Defendant's “innocent infringement” defense is precluded as a matter of law. As set forth in 17 U.S.C. § 401(d):

“If a notice of copyright in the form and position specified by this section appears on the published copy or copies to which a defendant in a copyright infringement suit had access, then no weight shall be given to such a defendant's interposition of a defense based on innocent infringement in mitigation of actual or statutory damages...” See also Plan P2 Promotions, LLC v. Wright Bros., 2017 U.S. Dist. LEXIS 70101, at *24 n.3 (S.D. Cal. May 8, 2017) (noting that proper copyright notice under 17 U.S.C. § 401(d) “negates a defense of innocent infringement”).

From the Philpot Case Files:

Philpot is a freelance photographer who mostly photographs musicians at live performances. (Compl., Dkt. 1, at 4). At issue in this case are two of his photographs: one of Lukas Nelson and another of Kenny Chesney. (Philpot Decl., Dkt. 26-1, at 3-4). WOS is a media company that operates a website called Wide Open Country ("WOC"), which publishes news, entertainment, and lifestyle content related to country music. (WOS Mot. Summ. J., Dkt. 25, at 4). In 2015, WOS created and published two articles on WOC featuring Philpot's Nelson and Chesney photos. Philpot alleges that WOS published the photos without proper attribution and therefore violated the Creative Commons License under which he makes the photos available. He also alleges that WOS scrubbed the metadata from the photos before publishing them. He now sues WOS for copyright infringement in violation of 17 U.S.C. § 501 and for removing copyright management information in violation of 17 U.S.C. § 1202(b). WOS seeks summary judgment on each of Philpot's claims (Dkt. 25), and Philpot seeks partial summary judgment on each of WOS's defenses.

Plaintiff is familiar with copyright lawsuits 

A brief search returns a number of Philpot's other cases, some of which involve the works at issue in this case. See Philpot v. New Orleans Tourism Mktg. Corp., CV 18-9087, 2019 U.S. Dist. LEXIS 3953, 2019 WL 142295, at *5 (E.D. La. Jan. 9, 2019); Philpot v. Media Research Ctr. Inc., 279 F. Supp. 3d 708 (E.D. Va. 2018); Philpot v. L.M. Commc'ns II of S.C., Inc., 343 F. Supp. 3d 694, 705 (E.D. Ky. 2018); Philpot v. Dot Com Plus, LLC, 1:14-CV-01980-TWP, 2015 U.S. Dist. LEXIS 105016, 2015 WL 4742099, at *5 (S.D. Ind. Aug. 11, 2015); Philpot v. Kos Media LLC, 16CV01523ATBCM, 2017 U.S. Dist. LEXIS 68387, 2017 WL 2271540, at *1 (S.D.N.Y. May 3, 2017); Philpot v. Music Times LLC, 16CV1277 (DLC), 2017 U.S. Dist. LEXIS 70744, 2017 WL 1906902, at *2 (S.D.N.Y. May 9, 2017); Philpot v. Celebrity Cafe.com, LLC, 1:14-CV-01982-TWP, 2015 U.S. Dist. LEXIS 112011, 2015 WL 5032144, at *6 (S.D. Ind. Aug. 25, 2015); Philpot v. Toledo Radio, LLC, 3:15 CV 1401, 2015 U.S. Dist. LEXIS 183020, 2015 WL 12767968, at *2 (N.D. Ohio Oct. 14, 2015).

In one case, the federal judge noted:

In two of the cases Philpot filed in this Court, he has accepted Rule 68 offers of judgment, both of which appear to the undersigned to have been driven primarily by what the defendants in those cases anticipated having to spend on attorney's fees, and not by any potential damages that might be awarded against them. See Philpot v. WOS, Inc., 1:18-cv-339 RP, Dkt. No. 44, 2019 U.S. Dist. LEXIS 67978 (April 22, 2019); Philpot v. Equipboard, Inc., 1:18-cv-341 RP, Dkt. No. 9 (July 10, 2018). Philpot v. Emmis Operating Co. (W.D.Tex. July 8, 2019, No. 1:18-CV-00816-RP) 2019 U.S.Dist.LEXIS 112440, at *6, fn. 2.)

Attorney Steve® Tip: In these "good sumaritan" photographer types of cases where they offer their images as FREE TO USE as long as you give them the PRECISE attribution they require (and who then potentially sue you if you fail to dot your i's and cross your 't's," so to speak), make sure to take a close look at the fair use defense. This was discussed in one of his cases, and the court allowed this defense to go to the jury for consideration. See analysis below.

Factor One: The Purpose and Character of the Use

As above, there is no question that WOS's use is commercial. But viewing the evidence in the most favorable light to WOS, a reasonable jury could conclude that the parties used the works with different purposes because it could agree that WOS used the photos in support of "news commentary," while Philpot's purpose was merely "to depict the artists in concert." Upon making such a finding, the jury could conclude that WOS's use was transformative because its object did not "merely supersede" the object of Philpot's original images and added "something new" by way of a "further purpose" for the photos. Campbell, 510 U.S. at 579.

That said, the Court agrees with those courts that have held that when an infringer simply reproduces a work in a new context, the use is "at best minimally transformative." Monge, 688 F.3d at 1176. In Monge, a magazine published a celebrity couple's private wedding photos for an article exposing their secret marriage.  The court agreed that the magazine's purpose differed from the couple's, id. 1176, but noted that the article accompanying the photos was not about the photos (unlike the photos in Nunez) and that the magazine could have reported on its subject without the photos. Id. at 1175-76. Observing that "difference in purpose is not quite the same thing as transformation," the court then found that the magazine "left the inherent character of the images unchanged." Id. at 1176. Such use—"wholesale copying sprinkled with written commentary"—was held to be "at best minimally transformative." Id. So too here, where even in the best light for WOS, it fully copied Philpot's photos to draw attention to articles that had nothing to do with the photos themselves. A reasonable factfinder could conclude that this factor is either neutral or tilts slightly in either direction, depending on how much weight it gives WOS's minimally transformative use.

In a case from Florida District Court:

The "initial inquiry under the first factor asks whether [MyArea's] use is transformative, i.e., 'whether the new work merely supersede[s] the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message. "A nontransformative use, on the other hand, is one which serves the same 'overall function' as the original work." The Eleventh Circuit has advised that "even verbatim copying 'may be transformative so long as the copy serves a different function than the original work.'" (quoting Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165 (9th Cir. 2007)).  Philpot v. MyArea Network, Inc. (M.D.Fla. June 28, 2021, No. 8:20-cv-1239-VMC-TGW) 2021 U.S.Dist.LEXIS 119423, at *17.)

Display of a copyrighted image or video may be transformative where the use serves to illustrate criticism, commentary, or a news story about that work. For instance, a news report about a video that has gone viral on the Internet might fairly display a screenshot or clip from that video to illustrate what all the fuss is about. Similarly, a depiction of a controversial photograph might fairly accompany a work of commentary or criticism about the artistic merit or appropriateness of the photograph. In each such case, the copyrighted work is itself the subject of the story, transforming the function of the work in the new context." Additionally, the fact that the Nelson photograph was not altered and the Santana photograph was merely cropped with a banner added to the bottom with Santana's face still visible weigh against finding that the use was not transformative. See Violent Hues Prods., LLC, 922 F.3d at 263 ("The only obvious change Violent Hues made to the Photo's content was to crop it so as to remove negative space. This change does not alter the original with 'new expression, meaning or message.'"). Philpot v. MyArea Network, Inc. (M.D.Fla. June 28, 2021, No. 8:20-cv-1239-VMC-TGW) 2021 U.S.Dist.LEXIS 119423, at *19-20.)

Attorney Steve® Tip:  The first factor also looks at whether the use by Defendant was commercial in nature.

Next, the Court must consider whether the use of the two photographs was commercial. "The crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 562, 105 S. Ct. 2218, 85 L. Ed. 2d 588 (1985).

Taking the evidence in the light most favorable to Philpot, MyArea's use of both the Nelson and Santana photographs was commercial. MyArea admits that it earned ad revenue from the articles including the Nelson and Santana photographs. The fact that this ad revenue is small is irrelevant. See WOS, Inc., 2019 U.S. Dist. LEXIS 67978, 2019 WL 1767208, at *4 ("There is no genuine dispute that WOS's use of Philpot's photos is commercial. WOSis a for-profit business that earns advertising revenue based on pageviews. WOS used Philpot's photos to drive traffic to its articles about Chesney and Nelson; that traffic earned the company revenue.

Although WOS downplays its uses as 'nominally commercial' because the Chesney article brought in only $6.41, the question is whether WOS' stood to profit from exploitation of the copyrighted material without paying the customary price' . . . and not whether WOS was especially successful at profiting from its exploitation. This subfactor tends to weigh against a finding of fair use but is far from dispositive." Philpot v. MyArea Network, Inc. (M.D.Fla. June 28, 2021, No. 8:20-cv-1239-VMC-TGW) 2021 U.S.Dist.LEXIS 119423, at *20-21.)

Factor Two: The Nature of the Copyrighted Works

As discussed above, photographs have "varying degrees of creativity." Balsley, 691 F.3d at 760. Presented with photographs that are "not designed primarily to express [the photographer's] ideas, emotions, or feelings," courts have found the impact on the fair-use inquiry to be neutral. Nunez, 235 F.3d at 23. This is a similar situation: Philpot admits that he took the photos to "identify" Chesney and Nelson rather than to express his own viewpoint or feelings through the images. (Philpot Decl., Dkt. 26-1, at 4). Nevertheless, courts have also held that "photographs that are meant to be viewed by the public for informative and aesthetic purposes... are generally [*26]  creative in nature." Kelly, 336 F.3d at 820. Notwithstanding Philpot's emphasis on the creative decisions he made crafting these two photos (Philpot Mot. Summ. J., Dkt. 26, at 8), a reasonable jury could find that these photos—taken with an admittedly non-artistic aim (to identify)—are so factual as to be considered "marginally creative." Monge, 688 F.3d. at 1178. Upon making such a finding, a reasonable jury could agree with WOS that the factor is neutral. Balsley, 691 F.3d at 760.

Factor Three: The Amount and Substantiality of the Portions Used

Even viewed in the light most favorable to WOS, there is no evidence that it was necessary for WOS to wholesale copy Philpot's photos. (See Reply Philpot Mot. Summ. J., Dkt. 32, at 2). Accordingly, this factor "militates against a finding of fair use." Id. at 820; Balsley, 691 F.3d at 760.

Factor Four: The Effect on the Works' Potential Market or Value

Philpot responds that his photographs are not offered for free; they are offered for the price of attribution, which has economic value as advertising for his work. This position is unpersuasive here. For one thing, Philpot admits that he can only recall a single contact because of attribution to one of his works, and he made no money from that contact because the image requested was available for free on Wikipedia. Asked if he has "any reason to believe" that he would be contacted by anyone if his work were properly attributed, Philpot responded, "No."

Moreover, this factor looks at the market for the original work and derivates from that work, not at the market for the plaintiff's work in general. Campbell, 510 U.S. at 590. Although the Court accepts that attribution might lead someone to purchase one of Philpot's works, he fails to explain how any amount of advertisement might lead to being paid for two works that he makes available for free. So, while it is true that this factor contemplates not only actual but also potential market damage, id., there is no evidence that WOS's use will have any effect on the market for the Chesney or Nelson photos. Even viewing the evidence in the light most favorable to Philpot, WOS has overcome [*19]  the presumption that this factor weighs against a finding of fair use. This factor—the most important of the four—weighs in WOS's favor. Philpot v. WOS, Inc. (W.D.Tex. Apr. 22, 2019, No. 1:18-CV-339-RP) 2019 U.S.Dist.LEXIS 67978, at *17-19.)

The court, after applying all four fair use factors as required to do so, ruled:

Weighing the Factors Together. When the evidence is viewed in Philpot's favor, three of the four factors tilt his direction. Meanwhile, the most important factor tilts against Philpot. Perhaps the final factor's weight is so great that WOS's use is fair, but that is not obviously the case—not so obvious, at any rate, that the Court can conclude that no reasonable jury could find to the contrary. WOS is not entitled to summary judgment on its fair use defense.

A Court lambasted Plaintiff for suing numerous defendants under the attribution theory:

An important factor here is that Philpot and his counsel are, in essence, copyright "trolls."

Philpot has filed numerous actions nearly identical to this one not only in this Court, but throughout the country, and estimates that he has filed 50 such cases. See Philpot v. WOS, Inc., 2019 U.S. Dist. LEXIS 67978, 2019 WL 1767208 at *3 (W.D. Tex. Apr. 22, 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. 2019 U.S. Dist. LEXIS 67978.

When users re-publish one of Philpot's images without attribution, he sues them for damages. In this suit, and in the others filed in this court, Philpot claims he is "a renowned freelance photographer," with a "reputation as a premier photographer." Claiming that use of his work without attribution causes him to lose business opportunities, and weakens his reputation, he requests significant monetary damages in these cases. His "standard" damage request appears to be $150,000 per photo use.  See Philpot v. Emmis Operating Co. (W.D.Tex. July 8, 2019, No. 1:18-CV-00816-RP) 2019 U.S.Dist.LEXIS 112440, at *4-5.). In fact, however, as Judge Pitman found in the WOS case:

[Philpot] has no training in photography and has never been employed full-time as a photographer; he works as a freelancer. He is formally affiliated with "OnStage Magazine," a company he created to gain access to bigger events, but which does not actually produce magazines or generate advertising revenue. He has never been hired to photograph a concert or other event. He is compensated for his work mostly in concert tickets, food, and drinks. Pressed to identify monetary compensation for his work, Philpot testified that once he did a shoot for a hidden-camera show and that he once earned $0.88 for an image of Prince that he took at a concert he paid $2,000 to attend. He sells prints of his photos but has made "not very much" money—possibly less than $100 total—doing so. He loses money on his photography work almost every year.

Philpot v. Emmis Operating Co. (W.D.Tex. July 8, 2019, No. 1:18-CV-00816-RP) 2019 U.S.Dist.LEXIS 112440, at *5-6.).  

All things considered, he still got a judgment in the WOS case

Motion in limine

This is a motion to block certain things the jury can hear in a case.  I found this quite amusing where Plaintiff sought to prevent use of the above terms in front of the jury.

Conclusion

When confronted with the copyright attribution plaintiff, it is important to look at potential defenses such as innocent infringement (i.e., gee, I didn't know I forget to include the precise link), and fair use.  In most cases, the Plaintiff is offering up the work for FREE if you just provide attribution (which may help them promote their work).  This is especially important in cases dealing with the Plaintiff who allows digital content to be posted with attribution, then files multiple lawsuits.  If you get into litigation, ask them if people call them seeking to license their work due to the attribution.