Larry Philpot v. Independent Journal Review

USCA4 Appeal: 21-2021 Doc: 74 Filed: 02/06/2024 Pg: 1 of 23

PUBLISHED

UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT

No. 21-2021

LARRY G. PHILPOT,

Plaintiff – Appellant,

v.

INDEPENDENT JOURNAL REVIEW,

Defendant – Appellee.

Appeal from the United States District Court for the Eastern District of Virginia, at
Alexandria. Anthony John Trenga, Senior District Judge. (1:20-cv-00590-AJT-TCB)

Argued: October 24, 2023 Decided: February 6, 2024

Before KING, WYNN, and RUSHING, Circuit Judges.

Reversed and remanded by published opinion. Judge Wynn wrote the opinion, in which
Judge King and Judge Rushing joined.

ARGUED: Stacy Ann Cole, KEATING, MEUTHING & KLEKAMP, PLL, Cincinnati,
Ohio, for Appellant. Manuel Antonio Cordovez, CREATIVITY IP PLLC, Alexandria,
Virginia, for Appellee. ON BRIEF: Kristine M. Maher, BRICKER GRAYDON LLP,
Cincinnati, Ohio, for Appellant.
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WYNN, Circuit Judge:

Photographer Larry Philpot brought a copyright-infringement claim against news

website Independent Journal Review (“IJR”) after IJR used his photograph of musician

Ted Nugent in an online article. IJR moved for summary judgment, raising the affirmative

defense that, pursuant to 17 U.S.C. § 107, its use of the photo constituted “fair use” under

the Copyright Act. It alternatively argued that Philpot’s copyright registration was invalid.

Philpot cross-moved for summary judgment, contending in relevant part that his

registration was valid and that IJR’s use was not fair use. Although the district court found

a dispute of material fact as to whether the copyright registration was valid, it granted

summary judgment to IJR on “fair use” grounds. Philpot appeals the denial of summary

judgment to him as to the copyright registration and the grant of summary judgment to IJR

as to “fair use.”

We conclude that IJR’s use of the photo was not “fair use.” And we conclude that

Philpot is entitled to summary judgment on the validity of the copyright registration.

Therefore, we reverse and remand for further proceedings consistent with this opinion.

I.

The facts, which are undisputed except as noted, are as follows. Philpot is a

professional concert photographer who took a photograph of Nugent performing in July

2013 (the “Photo”). On August 15, 2013, pursuant to the copyright-registration procedure

outlined in 17 U.S.C. § 408, Philpot submitted the Photo for registration with the United

States Copyright Office as part of a collection of unpublished works. The Copyright Office

issued Philpot a registration certificate on August 21, 2013. The next month, Philpot also

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published the Photo on Wikimedia Commons 1 under a Creative Commons license. 2 The

license specified that anyone could use the Photo for free so long as they provided the

following attribution: “Photo Credit: Larry Philpot of www.soundstagephotography.com.”

J.A. 30–31. 3

Additionally, on August 8, 2013, Philpot entered into a photograph licensing

agreement with nonparty AXS TV (“the Agreement”), under which Philpot granted AXS

TV a two-year license to inspect at least 1,000 of Philpot’s photos in order to select twelve

to curate for licensing. The Agreement provided that AXS TV’s license to the 1,000 photos

would become effective upon Philpot’s email delivery of the 1,000 photos to AXS TV. On

September 10, 2023, Philpot emailed AXS TV a batch of photos that included the Nugent

Photo.

The Agreement provided that AXS TV would pay Philpot a photo licensing fee of

$4,500. Philpot also testified in his deposition that his standard photo licensing fee is

Wikimedia Commons is a freely licensed media file repository. Any individual
1

can upload a media file—images, sounds, or videos—to the Wikimedia repository for free.
Each uploaded media file has its own webpage, akin to its own Wikipedia page. The page
contains a notice that any user can then use the media file for free, if they follow the
licensing requirements listed on its page.

As the district court described it, a Creative Commons license is “a simple,
2

standardized copyright license that anyone can use to license their work. The copyright
holder designates their work as governed by a Creative Commons license, and anyone may
use the work provided they adhere to the terms of the license.” Philpot v. Indep. J. Rev.,
No. 1:20-cv-00590-AJT-TCB, 2021 WL 3669321, at *2 (E.D. Va. Aug. 18, 2021).

Citations to the “J.A.” and “S.J.A.” refer, respectively, to the Joint Appendix and
3

Sealed Joint Appendix filed by the parties in this appeal.

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$3,500. However, in at least one instance, he permitted a magazine to use a photo for free

when it was unwilling to pay his “standard fee,” under the condition that it included his

desired attribution.

In 2016, IJR posted an article titled “15 Signs Your Daddy Was a Conservative.”

J.A. 289. Under Sign 5, “He hearts ‘The Nuge’”—referring to Ted Nugent—the article

featured the Photo. J.A. 38. The article did not include the required attribution. Instead, the

article contained only a hyperlink to Nugent’s Wikipedia page. Through that link, users

could then access the “Wiki Commons site where the Photograph was hosted with all the

required attribution information.” Philpot v. Indep. J. Rev., No. 1:20-cv-00590-AJT-TCB,

2021 WL 3669321, at *2 (E.D. Va. Aug. 18, 2021). The article generated approximately

$2 to $3 in advertising revenue for IJR based on the number of page views it received.

In May 2020, Philpot sued IJR for copyright infringement. IJR moved for summary

judgment, raising the affirmative defense of fair use under the Copyright Act pursuant to

17 U.S.C. § 107, and alternatively raising the defense that Philpot’s registration was

invalid. For his part, Philpot also moved for partial summary judgment, arguing in relevant

part that his registration was valid and that IJR’s use of the photo did not meet the

requirements for the application of the fair-use affirmative defense. The district court

determined there was a genuine dispute of material fact as to the validity of Philpot’s

copyright registration—precluding summary judgment for either party on that issue—but

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it ultimately granted IJR’s motion for summary judgment on fair-use grounds. It

accordingly denied Philpot’s motion for summary judgment. Philpot timely appealed.

II.

We review the district court’s grant or denial of summary judgment de novo. Adnet,

Inc. v. Soni, 66 F.4th 510, 514 (4th Cir. 2023). “Summary judgment is appropriate when

there is no genuine issue of material fact and the moving party is entitled to judgment as a

matter of law.” Ray Commc’ns, Inc. v. Clear Channel Commc’ns, Inc., 673 F.3d 294, 299

(4th Cir. 2012) (citing Fed. R. Civ. P. 56(a)). Where the district court disposes of cross-

motions for summary judgment, we consider each motion separately, resolving all factual

disputes in the light most favorable to the party opposing that motion. Adnet, 66 F.4th at

514; accord Wingate v. Fulford, 987 F.3d 299, 304 (4th Cir. 2021) (same).

III.

We begin with the district court’s determination that IJR was entitled to summary

judgment based on fair use. As Philpot is the nonmoving party on this issue, we “view the

facts and draw all reasonable inferences therefrom” in the light most favorable to him.

Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 150 (4th Cir. 2012) (cleaned up).

Section 106 of the Copyright Act grants “a bundle of exclusive rights to the owner

of the copyright,” including the rights “to publish, copy, and distribute the author’s work.”

Harper & Row Pubs., Inc. v. Nation Enters., 471 U.S. 539, 546–47 (1985). “These rights,

however, are ‘subject to a list of statutory exceptions, including the exception for fair use

provided in 17 U.S.C. § 107.’” Bouchat v. Balt. Ravens Ltd. P’ship (Bouchat IV), 619 F.3d

301, 307 (4th Cir. 2010) (cleaned up). Fair use is a “complete defense” to copyright

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infringement. Id. That is to say, “the fair use of a copyrighted work . . . is not an

infringement of copyright.” Id. (quoting 17 U.S.C. § 107).

To determine whether a secondary use of a copyrighted work constitutes fair use,

courts consider four statutory factors: “(1) the purpose and character of the use, including

whether such use is of a commercial nature or is for nonprofit educational purposes; (2)

the nature of the copyrighted work; (3) the amount and substantiality of the portion used in

relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential

market for or value of the copyrighted work.” Campbell v. Acuff-Rose Music Inc., 510 U.S.

569, 577 (1994) (quoting 17 U.S.C. § 107). All four factors must be “explored, and the

results weighed together, in light of the purposes of copyright.” Id. at 578. Considering

these factors in turn, we hold that IJR’s use of Philpot’s Photo did not constitute fair use.

A.

The first fair use factor, the “purpose and character of the use,” requires us to

consider whether the secondary use of the Photo was (a) transformative and (b) of a

commercial nature or for nonprofit educational purposes. See Andy Warhol Found. for the

Visual Arts, Inc. v. Goldsmith, 598 U.S. 508, 527–33 (2023). While the first fair use factor

most clearly weighs in favor of fair use if the use was transformative and noncommercial,

“the more transformative the new work, the less will be the significance of other factors,

like commercialism.” Campbell, 510 U.S. at 579. Because for the reasons stated below, we

believe that IJR’s use was non-transformative and commercial, we conclude that the first

factor weighs strongly against fair use.

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1.

We first consider whether IJR’s use was transformative. A secondary use is

transformative when it has a “further purpose or different character” than the original work.

Warhol, 598 U.S. at 525, 528–29 (quoting Campbell, 510 U.S. at 579). The preamble to

section 107 of the Copyright Act identifies criticism, comment, and news reporting as

examples of transformative uses. Campbell, 510 U.S. at 576–78. Because “[m]any

secondary works add something new,” the determination of transformative use is a matter

of degree. Warhol, 598 U.S. at 528–29. “The larger the difference, the more likely the first

factor weighs in favor of fair use. The smaller the difference, the less likely.” Id. at 529.

The Supreme Court’s recent opinion in Andy Warhol Foundation for the Visual Arts

v. Goldsmith provides helpful guidance. There, photographer Lynn Goldsmith took photos

of the entertainer Prince, and subsequently licensed them to magazines to accompany

stories about the musician. Id. at 516–17, 520. The prolific visual artist Andy Warhol

created a derivative work of one of Goldsmith’s photos, dubbed “Orange Prince.” Id. at

518–19. The Andy Warhol Foundation then licensed Orange Prince to a magazine for the

cover of its commemorative edition about Prince. Id. at 519–20. “When Goldsmith

informed [the Foundation] that she believed its use of her photograph infringed her

copyright, [the Foundation] sued her.” Id. at 515.

The Supreme Court granted certiorari to consider the “narrow issue” of “whether

the first fair use factor” weighed in favor of the Foundation. Id. at 516. It held that it did

not. In so holding, the Court noted that “[a] typical use of a celebrity photograph is to

accompany stories about the celebrity.” Id. at 534. It then held that even if Orange Prince

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added new expression to the original photo, the magazine’s use was not transformative

because the purpose of both works was to illustrate stories about Prince. Id. at 534–36,

540–41.

Like the magazine’s use of Orange Prince in Warhol, IJR’s use of the Photo was not

transformative. Here, as in Warhol, Philpot took the Photo to capture a “portrait[]” of

Nugent, and IJR used the Photo to “depict” the musician. Id. at 526. Accordingly, the two

uses “share[d] substantially the same purpose.” Id. Indeed, IJR has less of a case for

“transformative” use than the Andy Warhol Foundation did in Warhol. Unlike the orange

dubbing in that case, IJR did not alter or add new expression to the Nugent Photo beyond

cropping the negative space:

Original photo IJR’s use

See also Brammer v. Violent Hues Prods., LLC, 922 F.3d 255, 263 (4th Cir. 2019) (holding

a use was not transformative where “[t]he only obvious change [the defendant] made to the

Photo’s content was to crop it so as to remove negative space,” which “does not alter the

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original with ‘new expression, meaning or message.’” (quoting Campbell, 510 U.S. at

579)).

The district court found that IJR’s use was transformative because it placed the

Photo in a new context, a list of “Signs Your Daddy Was a Conservative.” Philpot, 2021

WL 3669321, at *6. But that reasoning resembles the argument that this Court rejected in

Brammer v. Violent Hues Productions. In that case, 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. Brammer, 922 F.3d at 261. The photo was included alongside a

list of D.C.-area tourist attractions with the caption “Adams Morgan, DC.” Id. The

photographer who shot the photo had originally created it for use as a commercial stock

image with the caption “Adams Morgan at Night.” Id. He sued the film company for

copyright infringement, and the issue on appeal was whether the fair use defense applied.

Id. at 260–61.

This Court held the fair use defense did not apply. Id. at 269. In assessing whether

the film company’s use was transformative, this Court held that even if a copyrighted work

is 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—in order to be

transformative, “the secondary use still must generate a societal benefit by imbuing the

original with new function or meaning.” Id. at 263. Because the film company in Brammer

“used the Photo expressly for its content—that is, to depict Adams Morgan”—its use did

not imbue the photo with a new function or meaning and thus was not transformative. Id.

at 264. Likewise here, Philpot took the Photo to identify Nugent. IJR used the Photo for

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precisely the same reason: to depict “The Nuge.” Accordingly, IJR’s secondary use of the

Photo did not add new meaning or function that would render its use transformative.

Because IJR’s use of the Photo did not add new purpose or meaning, and only minimal

alteration, the use was not transformative. This weighs against a finding of fair use.

2.

Having concluded that IJR’s use was non-transformative, we next consider whether

the secondary use was of a commercial nature or for nonprofit educational purposes. 17

U.S.C. § 107(1). “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.” Bouchat IV, 619 F.3d at 311

(quoting Harper & Row, 471 U.S. at 562).

According to IJR’s Financial Interest Disclosure Statement, it is a C corporation,

and therefore a for-profit corporation. Financial Interest Disclosure Statement at 1, Philpot,

No. 1:20-cv-00590-AJT-TCB (E.D. Va. Aug. 13, 2020), ECF No. 5. While IJR does not

charge readers to view its articles, it obtains revenue from advertising, and it earned some

advertising revenue—albeit only $2 to $3—based on the number of views of the article

that used the Photo. Further, IJR’s use of the Photo was exploitative: Philpot licensed the

Photo, and IJR did not pay the customary price of direct attribution to Philpot.

To be sure, the article was not especially profitable for IJR. But the salient question

is whether IJR stood to profit, not whether it was particularly successful at that venture.

See Brammer, 922 F.3d at 265 (“[Defendant’s] website did not generate direct revenue or

run advertising. But [Defendant] is a limited liability company, and it used the Photo on its

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website to promote a for-profit film festival. On their own, these facts tend to demonstrate

commercial use.”). Thus, IJR’s use of the Photo was commercial.

Because IJR’s use of the Photo was non-transformative and commercial, the first

factor of the fair use analysis counsels strongly against fair use.

B.

The district court made no mention of the second and third factors of the fair use

analysis, but both weigh against fair use.

The second fair use factor considers the “nature of the copyrighted work.” 17 U.S.C.

§ 107(2). In assessing the copyrighted work’s nature, we consider “the extent to which it

is creative.” Monge v. Maya Mags., Inc., 688 F.3d 1164, 1177 (9th Cir. 2012); accord A.V.

ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 640 (4th Cir. 2009) (similar). “As a

basic matter, photographs are ‘generally viewed as creative, aesthetic

expressions[’] . . . and have long received thick copyright protection,” even where they

“capture images of reality” and regardless of their publication status. Brammer, 922 F.3d

at 267 (quoting Monge, 688 F.3d at 1177). And here, Philpot made several creative choices

in capturing the Photo, including “selecting the subject matter, angle of photography,

exposure, composition, framing, location, and exact moment of creation.” J.A. 575. Thus,

the Photo merits “thick copyright protection,” and the second factor weighs against fair

use.

The third fair use factor considers “the amount and substantiality of the portion used

in relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). This factor weighs

against fair use where “a significant percentage of the copyrighted work was copied,” or

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where “the copied portion essentially was the ‘heart’ of the copyrighted work.” Sundeman

v. Seajay Soc’y, Inc., 142 F.3d 194, 205 (4th Cir. 1998) (quoting Wright v. Warner Books,

Inc., 953 F.2d 731, 738 (4th Cir. 1991)). Both are true here: IJR copied a significant

percentage of the Photo in its article, and it only cropped out the negative space while

keeping the Photo’s expressive features, or the “heart” of the work. Sundeman, 142 F.3d at

205; accord Brammer, 922 F.3d at 268 (holding same where the defendant “merely

removed the negative space [of the photo] and kept the most expressive features” (citing

Sundeman, 142 F.3d at 205)). Thus, the second and third factors weigh against fair use.

C.

The fourth and final factor also weighs against fair use. The fourth factor considers

“the effect of the use upon the potential market for or value of the copyrighted work.” 17

U.S.C. § 107(4). In analyzing this factor, we consider “not only the extent of market harm

caused by the particular actions of the alleged infringer, but also whether unrestricted and

widespread conduct of the sort engaged in by the defendant would result in a substantially

adverse impact on the potential market for the original.” Campbell, 510 U.S. at 590

(cleaned up); accord Bouchat IV, 619 F.3d at 312 (“[O]ne need only show that if the

challenged use should become widespread, it would adversely affect the potential market

for the copyrighted work.” (quoting Harper & Row, 471 U.S. at 568)).

IJR argues that because Philpot permits free use of the Photo, he failed to show any

financial harm to the Photo’s potential market. But that argument ignores the general rule

that we presume a “cognizable market harm exists when a commercial use is not

transformative but instead ‘amounts to mere duplication of the entirety of an original.’”

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Brammer, 922 F.3d at 268 (quoting Campbell, 510 U.S. at 591); e.g., Sony Corp. Am. v.

Universal City Studios, Inc., 464 U.S. 417, 451 (1984) (“[E]very commercial use of

copyrighted material is presumptively an unfair exploitation of the monopoly privilege that

belongs to the owner of the copyright[.]”); Murphy v. Millennium Radio Grp. LLC, 650

F.3d 295, 308 (3d Cir. 2011) (“If it were possible to reproduce [a photographer’s] unaltered

work, as a whole, without compensation . . . it would surely have a ‘substantially adverse

impact’ on his ability to license his photographs.” (quoting Campbell, 510 U.S. at 590)).

That presumption applies here: IJR made commercial use of the Photo and duplicated the

“heart of the work,” while only removing the negative space. Brammer, 922 F.3d at 268.

As a result, “[Philpot] need not demonstrate that the licensing market for his photo would

be depressed should [IJR’s] behavior become widespread.” Id.

Moreover, even though Philpot does not need to make this showing, he has done so

here. The evidence viewed in the light most favorable to him reveals that if IJR’s

challenged use becomes uninterrupted and widespread, it would adversely affect the

“potential market” for the Photo. Harper & Row, 471 U.S. at 568 (quoting Sony, 464 U.S.

at 451). Philpot is a freelance professional photographer who specializes in capturing

musicians in concert. His market is thus the universe of music and celebrity audiences. And

IJR’s use was the paradigmatic example of Philpot’s reasonable market: licensing to media

outlets. If IJR’s behavior in copying Philpot’s photography to depict musicians for a

commercial purpose without payment or attribution became widespread, Philpot’s

potential market would likely decrease. See Brammer, 922 F.3d 255 at 268–69.

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Certainly, Philpot offers the use of some photos in exchange for nothing more than

proper attribution. But “[t]he copyright law does not require a copyright owner to charge a

fee for the use of his works[;] . . . the owner of a copyright may well have economic or

noneconomic reasons for permitting certain kinds of copying to occur without receiving

direct compensation from the copier.” Sony, 464 U.S. at 447 n.28. Moreover, Philpot has

introduced evidence that his standard licensing fee is $3,500, and that AXS TV paid Philpot

$4,500 to license his photos, including the Nugent Photo. Philpot, then, relies on

attributions or payments from users of his images to sustain himself in the world of concert

photography. This factor, like the preceding factors, thus weighs against fair use.

In sum, all four factors weigh against a finding of fair use. Therefore, we hold that

IJR’s use of the Photo was not fair use and the district court erred in granting summary

judgment to IJR on that basis and in denying Philpot’s motion for summary judgment on

IJR’s fair use defense. 4

IV.

Philpot also appeals the district court’s decision to deny his motion for summary

judgment on IJR’s alternative defense that Philpot’s copyright registration for the Photo

was invalid because it was registered as unpublished despite being published. The district

4
Because we hold that IJR’s use did not constitute fair use, that necessarily results
in a grant of Philpot’s motion for summary judgment on IJR’s defense of fair use. Though
we typically “consider each [summary judgment] motion separately, resolving all factual
disputes in the light most favorable to the party opposing that motion,” Adnet, 66 F.4th at
514 (citation omitted), the parties did not dispute the facts necessary to our finding that
IJR’s use was not fair use, and the same legal analysis applies to both motions.

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court declined to grant summary judgment to both parties, finding that there was a material

dispute of fact as to the registration validity. We disagree and conclude that Philpot is

entitled to summary judgment on this defense.

As before, our review is de novo. We consider both motions, viewing the facts and

inferences drawn from them in the light most favorable to the nonmoving party, this time

IJR. Adnet, 66 F.4th at 514.

A valid copyright registration is required to bring a copyright infringement claim.

Unicolors, Inc. v. H&M Hennes & Mauritz, L. P., 595 U.S. 178, 181 (2022) (citing 17

U.S.C. § 411(a)). If a copyright registration contains inaccurate information, it is

nonetheless still valid unless (1) the applicant included the inaccurate information on the

registration application with knowledge that it was inaccurate; and (2) the inaccuracy, if

known to the Register of Copyrights, would have caused the Register to refuse registration.

Id. at 181–82 (citing 17 U.S.C. § 411(b)(1)). Philpot’s copyright registration certificate is

prima facie evidence that the copyright is valid, 17 U.S.C. § 410(c), and IJR bears the

burden of overcoming that presumption. M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421,

434 (4th Cir. 1986).

IJR argues that the Photo’s copyright registration is invalid because it contains

inaccurate information. Specifically, IJR contends that Philpot knowingly filed the Photo

for registration in a group of unpublished works on August 15, 2013, even though it was

published on August 8, 2013, pursuant to the AXS TV Agreement. See U.S. Copyright

Office, Compendium of U.S. Copyright Office Practices § 612.3 (3d ed. 2021) [hereinafter

Compendium] (specifying that the determination of whether a work is published “should

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be based on the facts that exist at the time the application is filed”). 5 Because published

and unpublished works cannot be registered together, IJR contends that this error

invalidated the registration. See 37 C.F.R. § 202.3(b)(5)(i–ii) (2022); United Fabrics Int’l,

Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1259 (9th Cir. 2011) (“When one registers a

collection of works in a single copyright, it can be registered either as a ‘published’ or an

‘unpublished’ collection.” (citing 37 C.F.R. § 202.3(b)(4))); Gold Value Int’l Textile, Inc.

v. Sanctuary Clothing, LLC, 925 F.3d 1140, 1145–46 (9th Cir. 2019) (characterizing

inclusion of published works in unpublished collection as “inaccuracy”), abrogated on

other grounds by Unicolors, 595 U.S. at 178. The issue, then, is whether Philpot published

the Photo before he filed it as an unpublished work with the Copyright Office on August

15. Philpot argues that merely entering the Agreement on August 8 did not constitute him

publishing the Photo, so his copyright registration was accurate and therefore valid. We

agree with Philpot.

A work is “published” under the Copyright Act through “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 offering to distribute copies or phonorecords to

a group of persons for purposes of further distribution . . . or public display, constitutes

publication.” Id. As several other circuits have held, however, an author does not publish

5
“[T]he Compendium is a non-binding administrative manual,” and therefore “we
must follow it only to the extent it has the ‘power to persuade.’” Georgia v.
Public.Resource.Org, Inc., 140 S. Ct. 1498, 1510 (2020) (quoting Skidmore v. Swift & Co.,
323 U.S. 134, 140 (1944)). We find it persuasive in this instance.

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their work for purposes of § 101 merely by distributing it to a “definitely selected class of

persons” for a “limited purpose,” without the right of further distribution. Warner Bros.

Ent. v. X One X Prods., 644 F.3d 584, 593 (8th Cir. 2011) (collecting cases); accord Soc’y

of Holy Transfig. Monastery, Inc. v. Gregory, 689 F.3d 29, 45 (1st Cir. 2012) (applying the

same test); Compendium § 1905.1 (noting that “publication occurs when one or more

copies or phonorecords are distributed to a member of the public who is not subject to any

express or implied restrictions concerning the disclosure of the content of that work”; for

example, “[g]iving away copies of a photograph without further restriction constitutes

publication of that work,” but “[s]ending copies of a manuscript to prospective publishers

in an effort to secure a book contract does not”); cf. Avtec Sys., Inc. v. Peiffer, 21 F.3d 568,

572 n.8 (4th Cir. 1994) (noting that “it is generally agreed that publication does not include

the distribution of copies under an obligation of confidence” (cleaned up)).

Rather, the “distribution” described in § 101 must be to “the public at large without

regard to who they are or what they propose to do with [the work].” Gregory, 689 F.3d at

45 (quotation marks and citation omitted); see also Milton H. Greene Archives, Inc. v. BPI

Commc’ns, Inc., 320 F. App’x 572, 573 (9th Cir. 2009) (general publication occurs when

photographs are distributed with “the right of diffusion, reproduction, or distribution.”

(cleaned up)). In other words, the work must be made publicly available such that it “may

be deemed ‘dedicated to the public and rendered common property.’” Gregory, 689 F.3d

at 45 (quoting Burke v. Nat’l Broad. Co., 598 F.2d 688, 691 (1st Cir. 1979)); see also

Milton, 320 F. App’x at 573 (explaining work must enter “the public domain”).

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The district court found that a genuine factual dispute precluded summary judgment

for either party on the validity of the copyright. It reasoned that while it was undisputed

that the Agreement was entered on August 8, 2013, there was evidence showing that

Philpot did not deliver the Nugent Photo to AXS TV through email until September 10,

2013, which indicated that the Photo was not published until that later date. In other words,

IJR and Philpot dispute whether publication occurred when Philpot entered the Agreement

on August 8 (before the Photo was registered with the Copyright Office as an unpublished

work) or when Philpot delivered the Photo to AXS TV on September 10 (after the Photo

was registered).

But this dispute is one of law, not of fact. The relevant question is whether the

Agreement constituted an “offer” of distribution so as to constitute publication under the

Copyright Act. To answer that question, we must first determine whether the Agreement’s

choice-of-law provision dictating that it is to be governed by California law is enforceable.

In that inquiry, we apply the choice-of-law rules of the state in which the district court sits,

in this case Virginia. See Mamadou v. Cho, No. 20-cv-146, 2020 WL 13750518, at *9

(E.D. Va. Nov. 6, 2020) (“In a federal question case that incorporates a state law issue,

such as contract formation . . . a district court applies the choice-of-law rules of the state in

which it sits unless a compelling federal interest directs otherwise.”); Iannello v. Busch

Ent. Corp., 300 F. Supp. 2d 400, 402 (E.D. Va. 2004) (“Generally, a district court applies

the conflicts of law provisions of the state in which it sits.”); c.f. W.C. & A.N. Miller Dev.

Co. v. Cont’l Cas. Co., 814 F.3d 171, 176 (4th Cir. 2016) (“The district court sat in

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Maryland and, therefore, Maryland choice of law rules apply.” (citing Wells v. Liddy, 186

F.3d 505, 521 (4th Cir. 1999) (diversity jurisdiction))).

Under Virginia law, courts enforce the choice-of-law rules that the parties expressly

contracted into. Hengle v. Treppa, 19 F.4th 324, 349 (4th Cir. 2021) (“Under Virginia law,

parties to a contract are free to specify the law that governs their agreement. Virginia courts

accordingly give [such clauses] ‘full effect except in unusual circumstances.’” (citation

omitted) (quoting Hitachi Credit Am. Corp. v. Signet Bank, 166 F.3d 614, 624 (4th Cir.

1999))), cert. dismissed sub nom. Asner v. Hengle, 142 S. Ct. 2093 (2022); accord United

States ex. Rel. McKenney’s, Inc. v. Leebcor Servs., LLC, 622 F. Supp. 3d 165, 174 (E.D.

Va. 2022) (“Where parties to a contract have expressly declared that the agreement shall

be construed as made with reference to the law of a particular jurisdiction, Virginia courts

will recognize such agreement and enforce it, applying the law of the stipulated

jurisdiction.” (cleaned up)). Moreover, neither party contests the application of California

law. Therefore, we will enforce the Agreement’s choice-of-law clause and apply California

law.

California law instructs that we interpret the license using normal contract

principles, effectuating the mutual intention of the parties as it existed at the time of

contracting. See AIU Ins. Co. v. Super. Ct., 799 P.2d 1253, 1264 (Cal. 1990) (citing Cal.

Civ. Code § 1636). If possible, such intent is ascertained from the plain language of the

contract alone. Id.

The Agreement’s plain language establishes that it did not constitute publication of

the Photo. As explained, a work is “published” for purposes of the Copyright Act when an

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individual “offer[s] to distribute copies or phonorecords [of the work] to a group of persons

for purposes of further distribution . . . or public display.” 17 U.S.C. § 101. But here, the

Agreement contains no offer to distribute or publicly display copies of the Photo to AXS

TV.

The Agreement provided that Philpot would make at least 1,000 photos from his

Library available to AXS TV, from which AXS TV could select twelve “to curate . . . for

licensing” S.J.A. 284. “Upon delivery” of the 1,000 photos, Philpot would grant AXS TV

a license only for the purpose of “review[ing] and examin[ing]” the photos. Id. If AXS TV

could not find twelve photos of its liking, then it could “make further specific requests” for

photos of “specific musical celebrities” from Philpot’s “remaining library,” which included

“an estimated 45,000 photographs” as of the date of the Agreement. S.J.A. 285. Upon that

request, if Philpot had photos available, the Agreement mandated that he would “select”

and send AXS TV “a reasonable number” of the photos, subject to the same requirement

that AXS TV would be granted a license only to “review and examine” the extra photos to

select twelve for curation. S.J.A. 284–85 (emphases added).

Further, once AXS TV selected the twelve photos for curation, the Agreement

required it to “inform[]” Philpot of its selections and of its “proposed and intended uses”

for the photos. S.J.A. 285. Then, Philpot would send higher resolution versions of the

twelve photos that were sufficient for AXS TV’s intended use. Id. Finally, upon delivery

of the twelve higher-resolution photos to AXS TV, Philpot would grant AXS TV a

“worldwide, nonexclusive” license to “use, reproduce, modify, display, perform, embed,

create derivative works based upon, and distribute” the twelve photos. S.J.A. 286.

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This plain language makes clear that by entering into the Agreement, Philpot neither

intended to distribute the Photo nor offered to do so. 17 U.S.C. § 101. To the contrary, the

Agreement’s terms plainly demonstrate that Philpot only intended to send 1,000 of his

45,000 photos to AXS TV, and that several more steps were required before twelve of those

photos ultimately entered the “public domain.” Milton, 320 F. App’x at 573. The

Agreement only granted AXS TV the limited license to internally “review and examine”

the 1,000 photos to select twelve “for further licensing” to then distribute those photos

publicly. S.J.A. 284 (emphasis added). The Agreement expressly qualified that AXS TV

had no right to “publicly release, display, or perform” the photos until it selected twelve

and obtained a second license that did allow for distribution of the selected photos. S.J.A.

284–85; cf. 17 U.S.C. § 101 (distribution occurs with offer of further “distribution” or

“display”). And before AXS TV could receive the second license for public distribution of

the twelve photos, it had to provide notice to Philpot and obtain his consent. It is hard to

imagine clearer terms reflecting Philpot’s intention that his photo library not become

“common property” through the Agreement. Gregory, 689 F.3d at 45 (quoting Burke, 598

F.2d at 691).

This is instead a classic case where Philpot offered to share his work with AXS TV,

a “definitely selected” group, for the “limited purpose” of its examination and review,

without any right to further distribution. Warner Bros., 644 F.3d at 593; cf. Milton, 320 F.

App’x at 573 (finding publication when author distributed photos along with the right of

reproduction and distribution); Gregory, 689 F.3d at 45 (stating a publication occurs when

work is available to the public regardless of “who they are or what they propose to do with

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it” (quoting Burke, 598 F.2d at 691)). Practically speaking, Philpot offered to distribute

1,000 photos to AXS TV pursuant to the Agreement as a necessary initial step in

effectuating a much smaller publication later. Implicit in this business relationship, and

explicit in the Agreement’s terms, is the understanding that the Agreement on August 8 did

not convey the right further to distribute or sell the photographs without Philpot’s

permission. To conclude otherwise would yield an unreasonable result: the Agreement

would constitute a publication and relinquishment of Philpot’s rights in 1,000 photos at

best, and every photo in his library, at worst. But the text of the Agreement does not support

such. The Agreement’s effect is plain: Philpot’s photos did not pass into the public domain.

Therefore, the Agreement did not constitute publication of the Photo. IJR does not

point to any other basis on which we could conclude that Philpot published the Photo before

August 15, 2023. Thus, IJR has not pointed to any inaccuracy in Philpot’s copyright

registration, and Philpot is entitled to summary judgment on IJR’s defense of copyright

invalidity. 6

V.

Because IJR’s use of the Photo was not fair use and Philpot’s copyright registration

was valid as a matter of law, we reverse the district court’s grant of summary judgment to

6
In his motion for Partial Summary Judgment, Philpot also moved for summary
judgment on the seventeen other affirmative defenses that IJR raised in its Answer. The
district court did not consider those defenses because it determined that IJR was entitled to
judgment based on its fair use finding. We leave it to the district court to consider any
preserved defenses in the first instance on remand.

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IJR—and its denial of summary judgment to Philpot—on those issues. We remand for

further proceedings consistent with this opinion.

REVERSED AND REMANDED

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