Ninth Circuit revives photographers claims of willful copyright infringement against Live Nation Merchandise over Run DMC photograph it used without permission, concluding lower court incorrectly dismissed willful copyright infringement claims, and also reversed summary judgment for Live Nation on removal of copyright management information. The court also held that separate statutory damage awards for the infringement of each work “for which any two or more infringers are liable jointly and severally” applies only to parties who have been determined jointly and severally liable in the present action.

In the 1980s, Glen Friedman, a well-known photographer, took a series of photographs of the hip-hop group Run DMC. He published them in a book collecting his work, and later granted Sony Music a license to reproduce some of his Run DMC photographs (accompanied by information indicating that he owned the copyrights) on a website that would allow fans to download the images and use them as computer wallpapers. The license permitted Sony to alter the images in some respects — and was the only license in which Friedman authorized such alterations.

Live Nation Merchandise, Inc., is a music merchandising company. Live Nation claims that it typically enters into agreements with artists and that the artists retain final approval on the design and sale of the merchandise. It submits “Product Approval Forms” to the artists, who then sign off on the specific images. Despite Live Nation’s assertion that the artists are not supposed to provide approval if they do not have rights to the specific images, the Product Approval Forms do not make any reference to copyrights or other usage restrictions.

Live Nation produced a Style Guide — a collection of available images of a particular artist — for Run DMC, and designed a wall calendar and three T-shirts. The Style Guide and products included several of Friedman’s Run DMC photographs. Live Nation received approval from Run DMC for the products, but did not seek or obtain permission to use the images from Friedman.

Upon discovery of Live Nation’s infringement, Friedman filed a complaint alleging copyright infringement and removal of copyright management information (CMI). Friedman moved for partial summary judgment on his copyright infringement claim. The district court granted Friedman’s motion after Live Nation stipulated to liability for infringement.

Live Nation then moved for summary judgment on the CMI claim and to the extent Friedman alleged that Live Nation willfully committed the copyright infringement. The district court granted Live Nation’s motion for partial summary judgment, finding that Friedman offered no evidence suggesting that Live Nation removed CMI from his photographs or that Live Nation willfully infringed upon his copyright works. The district court also held, after Friedman filed a revised statement of damages, that Friedman was entitled to only one statutory damages award per infringed work.

On appeal, a Ninth Circuit panel reversed the district court’s grant of summary judgment to Live Nation, holding that the record gave rise to triable issues of fact as to Live Nation’s willfulness and Friedman’s CMI claim. Citing a Live Nation employee’s email discussing the use of Friedman’s photographs and the lack of references to copyrights in its approval procedure forms, the panel found a jury could reasonably conclude that Live Nation’s conduct amounted to “recklessness or willful blindness.”

Next, the panel clarified that a CMI claim does not just prohibit the intentional removal of CMI, but also prohibits distributing works where the party knows that CMI has been removed. Friedman presented evidence showing striking similarities between the images on Live Nation’s merchandise and the images in his book and on Sony’s website. A “striking similarity” between works may give rise to a permissible inference of copying, the panel noted, citing the Ninth Circuit’s 1987 decision in Baxter v. CMA Inc. Further, since the only material difference between Friedman’s photographs and the photographs on the Live Nation products was the removal of CMI, the panel concluded a reasonable jury could decide that Live Nation knew the CMI had been removed.

Lastly, the panel affirmed the district court’s ruling on statutory damages, albeit on different grounds. The Copyright Act permits a copyright owner to recover an award of statutory damages instead of actual damages “for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally.”

Under the Ninth Circuit decision in Columbia Pictures Television v. Krypton Broadcasting of Birmingham, Inc., the number of statutory awards depends on (i) the number of works infringed and (ii) the number of separate infringers. Friedman presented evidence that Live Nation sold infringing merchandise to 104 retailers, and contended that he was therefore entitled to 104 separate awards. The district court disagreed, holding that the case law permitting statutory awards did not consider a mass marketing operation and was therefore inapplicable to the case at hand.

While the panel disavowed the “mass-marketing” exception, it did find the application of Columbia Pictures inappropriate. In Columbia Pictures, the downstream infringers were defendants in the action and found to be jointly and severally liable with the direct infringer. Here, Friedman asserted there were 104 downstream infringers after Live Nation stipulated to liability but did not name any of the downstream infringers as defendants in the action. According to the panel, the provision of the Copyright Act that authorizes separate statutory damage awards for the infringement of each work “for which any two or more infringers are liable jointly and severally” applies only to parties who have been determined jointly and severally liable in the present action.