Retired attorney's skyline photo copyright claims revived by 9th Circuit

REUTERS/Noah Berger
  • Website's post found not to be minimal copyright use
  • "De minimis" refers to amount of work used, not substantiality of use
  • Judges warn ex-attorney against becoming "copyright troll"

(Reuters) - The 9th U.S. Circuit Court of Appeals on Thursday revived a retired attorney's claims that a storage company infringed his copyright in a picture of the Indianapolis skyline.

Wilmott Storage Services LLC's use of Richard Bell's photo on its website wasn't "de minimis" because it posted an identical copy of the entire picture, U.S. Circuit Judge Kim McLane Wardlaw wrote for a unanimous three-judge panel.

The appeals court also rejected Wilmott's argument that it didn't publicly display the photo because it couldn't be accessed through the website's front end.

Wilmott's attorney Paul Supnik said that the "practicalities" of the case, which "had little value to begin with," made it unlikely to go further.

Bell's attorneys Gregory Keenan of the Digital Justice Foundation and Ryan Hamilton of Hamilton Law didn't immediately respond to a request for comment.

Bell, a former business litigator with the Indianapolis law firm Cohen & Malad, took a picture of the city's skyline and published it on the internet in 2000. The court said Bell uses reverse image searches to identify potential copyright infringers, and has filed more than 200 lawsuits based on it and another skyline photo.

Bell sued Arizona-based Wilmott in 2018 for hosting a copy of the photo on the website VisitUSA.com, even though it wasn't indexed by Google and only accessible to users who had conducted a reverse image search or knew the precise web address where it was stored.

U.S. District Judge Consuelo Marshall in Los Angeles ruled for Wilmott in 2019, finding its use of the photo was de minimis – so "meager and fragmentary that the average audience would not recognize the appropriation," in her words – because it was simply "residing" on Wilmott's server without being "otherwise reproduced, distributed, or displayed."

Wardlaw, joined by Circuit Judge Richard Clifton and Judge Jennifer Choe-Groves of the U.S. Court of International Trade, sitting by designation, reversed Marshall's decision on Thursday.

Wardlaw said the "de minimis" analysis is meant to determine "whether so little of a copyrighted work has been copied that the allegedly infringing work is not substantially similar."

The question isn't "how extensively a defendant uses an indisputably infringing work," but "the quality or quantity of the protected work that was used by the defendant," Wardlaw said.

In this case, the panel found Wilmott's use wasn't de minimis because it copied the photo "wholesale."

Wardlaw also said the decision puts the circuit in line with the 1st, 3rd, 4th, and 11th Circuits.

Wardlaw rejected Wilmott's argument that it couldn't have infringed because it didn't display the picture publicly.

"Although a member of the public could not access the photo by simply visiting Wilmott's website, applying the server test, Wilmott's server was continuously transmitting the image," Wardlaw said.

In a concurring opinion, Clifton, joined by Wardlaw, discouraged Bell from continuing to pursue his claims.

"With each successive suit, Plaintiff, a retired attorney, is solidifying his identification as a 'copyright troll,'" Clifton said, noting this case might be "particularly egregious" because an Indiana jury previously found that he didn't own the photo's copyright.

The case is Bell v. Wilmott Storage Services LLC, 9th U.S. Circuit Court of Appeals, No. 19-55882.

For Bell: Gregory Keenan of the Digital Justice Foundation and Ryan Hamilton of Hamilton Law

For Wilmott: Paul Supnik

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com