Last week, the U.S. Court of Appeals for the Ninth Circuit issued an opinion in Bell v. Wilmott Storage Services, LLC, Nos. 19-55882, -56181 (Sept. 9, 2021), reversing a district court’s grant of summary judgment.
Bell took a photograph of the Indianapolis skyline in 2000, and published it on certain websites, including one from which he commercially licensed the use of his photographs. Bell obtained a copyright registration for the photograph in 2011. In 2018, Bell sued Wilmott for copyright infringement after finding a copy of his Indianapolis skyline photograph on a website (VisitUSA.com) owned by Wilmott through a reverse image search. The parties filed cross motions for summary judgment. The district court granted summary judgment to Wilmott on its assertion of a de minimus use defense, concluding “Wilmott’s use of the Indianapolis photo was so insubstantial as to constitute a mere ‘technical’ or de minimus violation that was not actionable as a matter of law.” Bell appealed.
The Ninth Circuit reversed. The Court first addressed the question of whether making a copyrighted work accessible only to members of the public who either possess the specific pinpoint address or who perform a reverse image search, as Wilmott did, constitutes “publicly” displaying the work under the Copyright Act. Applying the “server test” adopted in Perfect 10, Inc. v. Amazon, Inc., the Court concluded that such conduct does constitute publicly displaying the work. The Court next noted that the “degree of copying” in the case was total because the infringing work was an identical copy of the Indianapolis photograph. As such, the Court explained, there is “no place for an inquiry as to whether there was de minimus copying.” The Court confirmed that, in the Ninth Circuit, the de minimus doctrine is not a defense to copyright infringement, but instead is an answer to the question of whether the infringing work and the copyrighted work are substantially similar such that the copying is actionable. In other words, “the de minimus concept applies to the amount or substantiality of the copying—and not the extent of the defendant’s use of the infringing work.” The Court noted that the First, Third, Fourth, and Eleventh Circuits have reached the same conclusion. The Court remanded the case to the district court for consideration of the remaining issues