Ninth Circuit holds that de minimis defense does not apply where defendant copied and publicly displayed plaintiff’s entire photograph, even where no one other than plaintiff observed photograph on defendant’s website, reversing district court’s grant of summary judgment.

Plaintiff Richard Bell, who took a photo of the Indianapolis skyline in 2000 and later registered it with the U.S. Copyright Office in 2011, sued defendant Wilmott Storage Services LLC and other defendants in 2018, asserting that Wilmott infringed his copyright by displaying the Indianapolis photo on its website’s server database. Since 2018, plaintiff has frequently used reverse image searches to identify potential infringers and has filed more than 100 lawsuits relating to the Indianapolis photo. Through one of these reverse image searches, plaintiff found the Indianapolis photo on the server database of defendant’s website VisitUSA.com. The photo was not accessible to the average internet user unless the user conducted a reverse image search or knew the pinpoint address of the image database. After making this discovery, plaintiff notified defendant that it was displaying the Indianapolis photo without his permission, and defendant—which was unaware that the photo was on its server—agreed to remove the photo. Nonetheless, plaintiff brought a copyright suit.

In the district court, the parties cross-moved for summary judgment. Defendant conceded that its website server hosted an identical copy of plaintiff’s photo but argued for summary judgment based on the affirmative defenses of de minimis use, fair use and the statute of limitations. The district court granted defendant’s motion on the basis that no infringement had occurred because defendant’s use of the photo was so insubstantial that it constituted a mere technical or de minimis violation. The Ninth Circuit reversed and remanded, stating that the district court had misread controlling precedent in reaching its decision.

The court held that a public display occurs within the meaning of the Copyright Act even when a work is only accessible to members of the public who either conduct a reverse image search or possess the exact pinpoint address for the image. In reaching its conclusion, the Ninth Circuit followed the “server test” articulated in the 2007 case Perfect 10, Inc. v. Amazon Inc., which provides that a computer owner who stores an image and transmits it to another user is in violation of the copyright holder’s exclusive right to display that image. Because defendant’s server was continuously transmitting the Indianapolis photo to users who either conducted reverse image searches or knew the pinpoint address, defendant was in violation of plaintiff’s exclusive right to publicly display the photo. The court noted that the Copyright Act does not require proof that the protected work was actually viewed by anyone. Because it was undisputed that defendant’s website server displayed an identical copy of plaintiff’s photo, the court did not need to assess whether the works were substantially similar. The de minimis copyright defense applies only where the degree of copying is so meager that the average observer would not recognize the appropriation of the protected work. The key question for this defense is whether the quantity and quality of the copying are trivial or substantial. It does not turn on the extent of defendant’s use of the infringing work, as Wilmott argued.

Because defendant’s actions constituted a wholesale unauthorized reproduction of the Indianapolis photo, it could not be considered de minimis. While the court acknowledged that defendant’s actions were unintentional, innocent intent is not a defense to liability under the Copyright Act, though it would be relevant to the issue of damages. Under the Copyright Act, where an infringer is not aware and has no reason to believe that he is violating another’s copyright, the court has the authority to reduce statutory damages to as little as $200.

In a concurring opinion, one judge agreed with the principles of law articulated by the court but reprimanded plaintiff for filing hundreds of lawsuits relating to the Indianapolis photo, characterizing him as a “copyright troll”—a term that describes a party that engages in unduly aggressive enforcement of its copyright for the purpose of extracting nuisance settlements. One of the concurring judges also urged the district court to consider the threshold question of whether plaintiff is the owner of a valid copyright, as a jury in another case had decided that plaintiff did not own the photo.