Ninth Circuit corrects the record on de minimis use in photograph dispute

By Daniel McAuliffe and Nancy Wolff

The Ninth Circuit recently clarified that the de minimis use defense (meaning too minor to constitute an infringement) is not an affirmative defense in a copyright infringement case involving an identical use of a photograph, reversing a finding in favor of the defendant asserting the defense.  Instead, the court stressed that an inquiry into de minimis use must begin by asking whether the use is “substantially similar to the copyrighted work.”  If there is identical copying, as the court found, then there cannot be a de minimis defense—no matter how trivial the displaying of the content might be.

With the increased use of image recognition technology and image enforcement companies representing photographers, website operators and business owners are defending copyright claims based on images published, in some cases, decades ago.  In this instance, Richard Bell, a retired attorney and active litigant, sued Wilmott Storage Service over a twenty-year-old photo of the Indianapolis skyline.  Wilmott had displayed the photograph on its website, where it resided on its server, but could only be found using reverse image search technology or a direct link.  Based on this limited display use, the district court awarded summary judgment in favor of Wilmott, finding Wilmott’s use to be de minimis, and Bell appealed.

On appeal, the court focused on two questions: 1) whether Wilmott was truly displaying the photo if it could not be found by running a basic Google search, and 2) whether Wilmott’s use was de minimis.  While the appellate court acknowledged that the “average internet user” would not have had access to the photograph on Wilmott’s website unless it conducted a reverse image search like Bell or had a direct link, the court concluded that Wilmott had displayed the photograph under the server test.

The server test, first affirmed by the Ninth Circuit in Perfect 10, Inc. v. Amazon,508 F.3d 1146 (9th Cir. 2007), examines whether an entity is displaying a work within the meaning of the Copyright Act by looking at whether an entity is storing (or serving) content on its servers, or is just linking to another website that is storing the content.  While the photo at issue here was available only via reverse image search, or by using a specific URL, the court concluded that: “Wilmott transmitted, and therefore displayed, the Indianapolis photo without Bell’s permission.”  It did not matter that the photo would not populate via a regular Google text search, as the court held that Bell did not “need to prove there was some minimum number of users who in fact accessed the Indianapolis photo to make out a … case of infringement.”

Dealing next with the issue of de minimis use, the court emphasized that its circuit (along with other circuits) does not view de minimis use as an affirmative defense to infringement.  Instead, the de minimis doctrine acts as a threshold question to actionable copying.  Any copying, to be actionable, must be substantially similar to the registered work.  A use can only be de minimis if it is not substantially similar to the work.  In this case, because Wilmott stored a wholesale replication of the photo, its use of the photo could not be de minimis.

To help illustrate this concept, the court referenced a case, Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004), where the Ninth Circuit found de minimis use over the Beastie Boys’ unauthorized use of a six-second sample in a copyrighted jazz song.  In contrast, Wilmott used the entirety of the photograph unlike the small, unrecognizable portion of the work that the Beastie Boys used in Newton.  As a result, the appellate court rejected the district court’s theory that Wilmott’s use of the photo was only a “technical violation” because the Copyright Act details several exceptions to infringement but none of them provide for a technical violation.  Finding a technical violation as the district court did was not within the spirit of what Congress intended for the Copyright Act.

By overturning Wilmott’s lower court victory, the Ninth Circuit has clarified its position on de minimis use: the defense is available only to those who do not substantially copy a work.  When the infringing work is an identical copy, there cannot be de minimis use, even if the infringing use is difficult to find online or otherwise.  

As for Bell, two concurring opinions suggest that he may not be victorious even as the district court reconsiders his lawsuit.  One judge labeled Bell a “copyright troll” who has filed more than 100 lawsuits concerning the Indianapolis photo.  Further, he also raised a legitimate concern that Bell himself does not even own the copyright to the photograph.  The other concurring judge noted that Bell had prevailed in other lawsuits via default judgment and encouraged the lower court to address the issue of whether Bell owns the copyright before proceeding further.

While there may be many legitimate defenses in a copyright infringement suit, arguing de minimis use in instances of the full use of a photograph is no longer a tool for defendants to rely on, at least in the Ninth Circuit.

Bell v. Wilmott Storage Services, LLC, No. 19-55882, 2021 WL 4097499 (9th Cir. Sept. 9, 2021).