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Is limited online access to copyrighted work a “public display”?

February / March 2022 IP Newsletter

If no one sees an unauthorized online copy of a photo, has it truly been “publicly displayed” as required for a copyright infringement lawsuit? The U.S. Court of Appeals for the Ninth Circuit recently answered that question in the affirmative in Bell v. Wilmott Storage Svcs., LLC, a case brought by a plaintiff who one judge characterized as a “copyright troll.”

Framing the case

The plaintiff took a photograph of the Indianapolis skyline in 2000. At the time, he was an attorney, and his firm posted the photo on its website at some point. He also published it on in 2000. But he didn’t register the photo with the Copyright Office until August 2011.

In 2018, the plaintiff ran a reverse image search for the photo on Google to identify potential infringers; he has since filed more than 100 infringement lawsuits involving the photo. He found the photo on a server database for a website owned by Wilmott Storage Services.

According to the court, the average internet user couldn’t find the photo by going to the website and navigating it. The image was accessible only to users who did a reverse image search or knew the precise URL of the database archiving the photo.

When the plaintiff notified Wilmott that it was displaying the photo without his permission, the company removed it from its original URL. Six months later, the photo was still displayed, but at a slightly different web address. The plaintiff asked that it be removed, and it was.

But despite the removal, the plaintiff had already filed a lawsuit. The trial court found no infringement because Wilmott’s use of the photo was so insubstantial as to be only a “de minimis” violation of the Copyright Act. Therefore, it wasn’t actionable. (See “De minimis defense doesn’t apply to ‘total’ copying”.)

The plaintiff appealed. He argued that Wilmott infringed his exclusive right to display the copyrighted photo publicly. He further argued that, once he established infringement of his public display right, the de minimis use defense was unavailable.

Reversing the trial court

The Ninth Circuit noted that it hadn’t previously addressed whether a work is “publicly displayed” for purposes of a Copyright Act violation if it’s accessible only to members of the public who either possess the specific web address or perform a particular type of online search. The court has, however, considered the public display issue in the context of websites.

In Perfect 10, Inc. v. Amazon, Inc., the Ninth Circuit adopted the “server test” to determine whether public displays of protected works online constituted infringement. Under the test, a computer owner that stores an image as electronic information, and serves that information directly to the user’s browser, displays the electronic information in violation of the copyright holder’s exclusive display right.

Applying the test to the Indianapolis photo, the court found Wilmott’s server was continuously transmitting the image to those who used the specific web address or conducted reverse image searches using the same or a similar photo. If any user visited the address, the server would transmit the photo to the user, where the photo would fill the computer’s screen with a copy of the photo fixed in the computer’s memory.

Moreover, the fact that the plaintiff could locate his photo using a reverse image search meant that reverse image search companies had received Wilmott’s public display before he discovered it. The photo, therefore, was already publicly displayed.

The court also pointed out that the plaintiff wasn’t required to show some minimum number of users who had accessed the photo. The Copyright Act, it said, doesn’t require proof that the protected work was actually viewed by anyone.

Take two

The Ninth Circuit ultimately sent the case back to the lower court. Interestingly, though the trial court had assumed the validity of the plaintiff’s copyright, the copyright was called into question in other cases while the appeal was pending. The appellate court emphasized that the plaintiff must establish ownership on remand.

Sidebar: De minimis defense doesn’t apply to “total” copying

The court in Bell (see main article) reversed the trial court’s ruling that a “de minimis” use defense applied. In doing so, the U.S. Court of Appeals for the Ninth Circuit clarified how most federal appellate courts view the de minimis use doctrine.

Copying is actionable only if it’s substantial; if the degree of copying is de minimis, no legal consequences can follow. The court explained that it and most of the other appellate courts don’t regard the de minimis doctrine as a defense to infringement, though. Rather, they view it as an answer to the question of whether the infringing work and the copyrighted work are substantially similar.

In other words, the de minimis concept doesn’t consider how extensively the defendant uses the infringing work but rather the amount or substantiality of the copying. In this case, the copying was total — the infringing work was an identical copy of the copyrighted photo. That left no room for a de minimis argument, as substantial similarity clearly existed.

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