Indianapolis is known for many things. For some, it is known as the location for the world’s largest single-day sporting event—the Indianapolis 500—or, for others, as the long-time home of arguably the greatest quarterback in NFL history.  A recent 9th Circuit copyright infringement decision has added another item to Indianapolis’ claim to fame:  the Indianapolis Skyline.

In the Spring of 2000, plaintiff Richard Bell, an attorney and photography enthusiast, captured a photograph of the Indianapolis Skyline and later published it online. (If you are interested in Bell’s work, you can see his portfolio here.) In 2018, Bell learned that his photo was being used on the website, which currently is owned by the defendant Wilmott Storage Services. Ordinary patrons to the website, however, were not able to view the photo. The photo was accessible only to members of the public who possessed the specific pinpoint address or who conducted a reverse image search online. Bell found the photo on the VisitUSA website after conducting a reverse image search. (A reverse image search takes an image file as an input query and returns results related to the image.)

Bell requested that Wilmott remove the photo, and Wilmott attempted to do so by removing the pinpoint address. Unbeknownst to Wilmott, however, the photo remained on the VisitUSA website and thus discoverable through a reverse image search.

Thereafter, Bell sued Wilmott, alleging claims of copyright infringement concerning Wilmott's use of the photo. (This suit is one of approximately 200 similar infringement suits filed by Bell.) To establish a case of direct copyright infringement, a plaintiff must show that he/she owns the copyright and that the alleged infringer violated one of the exclusive rights in copyright.  Bell asserted that Wilmott infringed on his exclusive right to display the copyrighted work publicly.

Wilmott asserted a de minimis use defense and moved for summary judgment. A de minimis use defense applies where a secondary use of a copyrighted work is so insubstantial as to constitute a mere technical violation that is not actionable as a matter of law. The district court granted summary judgment in Wilmott’s favor based on a de minimis use defense. The district court reasoned that because the photo was not widely accessible by website visitors, the de minimis use defense applied.

On September 9, 2021, the 9th Circuit reversed the district court’s ruling.  The Court reasoned that the Copyright Act does not require proof that the protected work was viewed by anyone, but rather, that a protected work is at a place open to the public. The Court stated that although a member of the public could not access the photo by simply visiting Wilmott’s website, Wilmott’s server was continuously transmitting the image to those who used the specific pinpoint address or conducted reverse image searches using the same or similar photo.

The Court further reasoned that the degree of copyright use was “total” as Wilmott used an identical copy of the photo.  Because the degree of copying was total, the Court concluded that there was no place for an inquiry concerning whether there was de minimis copying. In other words, the de minimis defense applies to the amount or substantiality of the copying, not the extent of viewership of a defendant’s use.

Wilmott unsuccessfully asserted that it lacked any “volitional act of infringement” and thereby cannot be liable for copyright infringement because it did not intentionally display the photo publicly. While the Court found it plausible that Wilmott did not know that the photo was on the VisitUSA website, the mere fact that Wilmott hosted the photo on its servers in a manner that was accessible to the public was “volitional” for purposes of copyright infringement.  

Takeaway. In the 9th Circuit, a de minimis use inquiry concerns a defendant’s use of protected work.  The term “use” does not refer to how extensively a defendant uses an indisputably infringing work. “Use” also does not refer to the number of viewers who can observe the infringing work. Under the 9th Circuit’s de minimis use principle, “use” refers to the quality or quantity of the protected work that was used by the defendant to make the allegedly infringing copy.  Where, as in the case surrounding the use of the Indianapolis skyline photo, there is total copying of a protected work, the de minimis defense will not apply. While Wilmott’s purported innocence and the limited number of viewers who saw the photo are not factors in determining its de minimis use defense, these facts will be relevant in other contexts, such as assessing damages for infringement.

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