The De Minimis Concept in Copyright Cases – The Ninth Circuit Says What it is and What it Isn’t

Weintraub Tobin
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In a recent case, Bell v. Wilmott Storage Services, LLC, decided September 9, 2021, the Ninth Circuit clarified the role that the de minimis concept plays in copyright infringement cases.  In essence, the Ninth Circuit explained that de minimis goes to the amount of copying of a copyrighted work as opposed to any de minimis use or display of any such a work.

In the Bell case, a former attorney, Richard Bell, took a picture of the Indianapolis skyline in 2000.  Mr. Bell worked at an Indianapolis law firm, and his photo was posted on the firm’s website.  He later published the photo on “webshots.com;” however, he did not register it with the U.S. Copyright Office until 2011.

Over time, Mr. Bell has filed more than 200 copyright infringement lawsuits arising out of use of the photo at issue in the Bell case as well as a different photo of the Indianapolis skyline that he took.  He usually files the copyright infringement lawsuits after running a reverse image search to find where his photos may be found on the internet. In the instance case, Mr. Bell found his Indianapolis skyline photo on a server database associated with a website visitUSA.com.  Notably, an average internet user would not be able to find or access the photograph.  Rather, it could only be found if a user was running a reverse image search (like Mr. Bell) or who knew the precise pinpoint address for the image.

The Bell case raises concerning implications for entities that host content on their servers that is available to the public.  In 2012, Wilmott Storage purchased the visitUSA.com website and two years later hired another company to update the website.  The Indianapolis skyline photo was likely present on the server when Wilmott acquired the website.

In April 2018, Mr. Bell notified Wilmott that it was displaying his Indianapolis photo and Wilmott removed the image from the pinpoint address identified in Mr. Bell’s request.  Mr. Bell, however, sued Wilmott for copyright infringement claiming that it continued to display a copy of the image on its server at a different pinpoint address than before. It appears a webmaster tasked by Wilmott to remove the photo had apparently changed its file name which moved it to a new pinpoint address.  Wilmott removed this copy of the Indianapolis photo as well after receiving a request to do so from Mr. Bell.

Mr. Bell and Wilmott filed cross-motions for summary judgment.  Wilmott argued that it was entitled to summary judgment for, among other things, the defense of de minimis use.  The federal district court granted Wilmott’s summary judgment as to this defense finding that “Wilmott’s use of the Indianapolis photo was so insubstantial as to constitute a mere `technical’ or de minimis violation that was not actionable as a matter of law.”  Mr. Bell appealed this finding to the Ninth Circuit.

The Ninth Circuit began by recognizing that the burden was on Mr. Bell to show “that he owns the copyright and that Wilmott violated one of the exclusive rights in copyright set forth in 17 U.S.C. §106.”  While the Ninth Circuit main opinion mentions but does not directly address the issue of whether Mr. Bell did, in fact, own a copyright as to the subject photo (apparently there was other litigation that raised an issue in this regard), the Ninth Circuit concluded that it would not weigh in on this issue since it had not been reached by the district court below.  (Both concurring opinions strongly recommended that upon remand the district court address this issue first.)

Mr. Bell contended that as the copyright owner he had the exclusive right to display his work and that Wilmott infringed on this right “by `displaying’ the photo on its server.”  The Ninth Circuit noted that it had previously addressed a similar issue concerning websites by holding that one “’publicly displays a photographic image’ by using a computer to fill a computer screen with a copy of the photographic image fixed in the computer’s memory.” Citing, Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017).  The Ninth Circuit adopted what it called the “server test.”    In applying the reasoning of the Perfect 10 case, the Ninth Circuit in Bell concluded that Wilmott had publicly displayed the Indianapolis skyline photo even though a member could not access the photo simply by visiting its website.  Rather, the Ninth Circuit found that because Wilmott’s server transmitted copies of the image in response to a reverse image search or if the user had the specific pinpoint address, this qualified as a public display for purposes of infringement.

Wilmott argued that this should not be sufficient since not even Google indexed the Indianapolis skyline photo which would allow it to come up in the results for images related to Indianapolis.  The Ninth Circuit cautioned that the Copyright Act “does not require proof that the protected work was actually viewed by anyone.  Rather, the Act defines `publicly’ to merely require that the display be at `a place open to the public’.”

Having addressed this issue, the Ninth Circuit then turned to the crux of the matter, whether this limited “use” of the image by Wilmott was excused by the concept of the de minimis doctrine. The Ninth Circuit noted that both it and several sister Circuits (the First, Third, Fourth and Eleventh) have held that the de minimis doctrine is not a defense to infringement “but rather as an answer to the question of whether the infringing work and the copyrighted work are substantially similar so as to make the copying actionable.”  The Ninth Circuit explained that the de minimis concept “applies to the amount or substantiality of the copying – and not the extent of the defendant’s use of the infringing work …” and this is where the Ninth Circuit found that the lower court had erred.   Focusing on how Wilmott may have “used” the image, i.e., making it publicly available to searches or not, the proper inquiry was whether the image that appeared on Wilmott’s server substantially copied the copyrighted image or used only minor or de minimis portions of it.  Thus, the Ninth Circuit concluded that it was error to grant summary judgment to Wilmott under a concept of a de minimis defense.

Wilmott also argued based on a 1982 Second Circuit decision that the de minimis concept could be used to protect against what would just be a “technical violation” that would be “so trivial that the law will not impose legal consequences.”  The Ninth Circuit concluded that this was a misreading of that decision.  The Ninth Circuit concluded that it was bound by the statutory language of the Copyright Act and there was nothing in the Act that excused “technical violations.”

Finally, Wilmott argued that its alleged use of the Indianapolis skyline photo was not volitional because it did not intentionally cause the subject photo to be publicly displayed.  The Ninth Circuit again rejected this argument and found that Wilmott’s conduct was “volitional” because it “posted the Indianapolis photo on its servers in a manner that was accessible to the public.”  Therefore, the Ninth Circuit remanded the matter back to the district court to continue proceedings as to Mr. Bell’s copyright infringement claim.

All three judges of the Ninth Circuit joined the majority opinion and then, curiously, either authored or joined in concurring opinions.  Both concurring opinions addressed the issue as to whether the alleged infringement was of a nature that justified the expense of the resources that Plaintiff was pursuing and at least one judge noted a concurring opinion that Mr. Bell “is solidifying his identification as a `copyright troll’ – one `more focused on the business of litigation than on selling a product or service or licensing their [copyrights] to third parties to sell a product or service.’”  Both concurring opinions strongly recommended the district court to review Mr. Bell’s claims and determine whether in fact he owned a copyright in the image based upon other pending litigation.

The Bell case is a reminder to copyright defendants seeking to assert a defense of the de minimis doctrine that, at least in in the Ninth Circuit, it applies only to the amount of copying and not to how the defendant uses or “displays” the alleged infringing work.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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