Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Rosario Law P.C.; Michael N. Spink, Brinks, Hofer, Gilson & Lione; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. ...
• Pages: 57-61

Published in Landslide® magazine, Volume 12, Number 1, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

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Decisions in Brief

COPYRIGHTS By John C. Gatz

Accused Infringers Get Favorable Ruling

in Planning Calendar Case

Craft Smith, LLC v. EC Design, LLC, No. 2:16-cv-01235,

2019 U.S.P.Q.2d 181509, 2019 WL 2161560 (D. Utah May

17, 2019). EC Design is a California designer and retailer of

personal planners founded by Erin Condren. EC Design’s pri-

mary product is the LifePlanner, which was rst designed

by Condren in 2007 and has evolved every year since. Craft

Smith is a competitor of EC Design that also designs and

manufactures planners, selling them since 2014 through

Michaels, a large retailer of arts and crafts supplies. EC

Design discussed a potential collaboration with Craft Smith

beginning in early 2015. The discussions centered around the

idea of creating a new planner for sale through Michaels, but

the discussions ended with no agreement on how to proceed

with such a plan. Following these discussions, Craft Smith

and Michaels planned to create spiral planners for sale at

Michaels, with the goal of having the design and manufacture

characteristics of the new planners being similar to those of

the LifePlanner. These new planners were released in October

2016 and saw good customer acceptance.

Counsel for EC Design sent a letter to Craft Smith in

November 2016 alleging copyright and trade dress infringe-

ment. Craft Smith sued for declaratory judgment of no

copyright or trade dress infringement. The district court

found there to be no protectable expression in EC Design’s

asserted compilation, and stated that while the LifePlan-

ner could feasibly be conceptualized as a creative process

for organizing one’s life, these processes are also outside the

scope of § 102 and thus unprotectable. Applying a detailed

comparison of the works, the district court found Craft Smith

and Michaels to be entitled to summary judgment of no copy-

right infringement. The district court found similarly on the

trade dress claim.

Cropping Photo Not Transformative Fair Use

Brammer v. Violent Hues Productions, LLC, 922 F.3d 255,

2019 U.S.P.Q.2d 149755 (4th Cir. 2019). Brammer is a pho-

tographer who took a photograph of the Adams Morgan

neighborhood of Washington, D.C., at night. Brammer pub-

lished a version of this photo on his website and on Flickr.

Violent Hues is a lm production company that organized a

lm and music festival in Virginia and created a website to

provide information to potential attendees. The Violent Hues

website included a cropped version of Brammer’s photo to

show various tourist attractions in Virginia and Washington,

D.C. Brammer sued Violent Hues for copyright infringement.

The district court granted summary judgment in favor of Vio-

lent Hues, nding that the use of the photo constituted fair

use. Brammer appealed.

The Fourth Circuit reversed. The court evaluated the four

fair use factors found in 17 U.S.C. § 107. It found that Violent

Hues had not altered the purpose and character of the work.

Violent Hues simply cropped the photo so that it matched the

size of other photos used on the website, and captioned the

photo. Violent Hues argued that the change in context trans-

formed the work, but the Fourth Circuit disagreed. The court

concluded that the use was commercial, and that any good

faith use of the photo by Violent Hues was not relevant to a

fair use analysis. The court further found that Brammer was

entitled to “thick” copyright protection based on the artistic

content of the photo. It determined that Violent Hues used the

heart of the work, and therefore this factor weighed against

fair use. Finally, the court ruled that the effect of the use by

Violent Hues would harm the market for the photo. Finding

that none of the factors weighed in favor of Violent Hues, the

Fourth Circuit reversed the judgment.

Home Photo Usage by Zillow Claried

VHT, Inc. v. Zillow Group, Inc., 918 F.3d 723, 2019

U.S.P.Q.2d 88604 (9th Cir. 2019). Defendant Zillow allows

a user to see photographs of a wide range of properties for

sale or rent. Thousands of those copyrighted photos come

from plaintiff VHT, the largest professional real estate pho-

tography studio in the country. Zillow uses the photos on two

parts of its website: the “Listing Platform” (the core of the

website) and the “Digs” (select artfully designed rooms). In

2015, VHT sued Zillow for copyright infringement, alleging

that Zillow’s use of photos on the Listing Platform and Digs

exceeded the scope of VHT’s licenses to brokers, agents, and

listing services who provided those photos to Zillow. The

district court granted partial summary judgment in favor of

Zillow on direct infringement for lack of volitional conduct

because it used moderators to employ a copyright protective

rubric, but later a jury found in favor of VHT on most remain-

ing claims.

On appeal, the Ninth Circuit afrmed the district court’s

summary judgment in favor of Zillow on direct infringement

of the Listing Platform photos, noting that VHT failed to pro-

vide evidence showing Zillow exercised control (other than

by general operation of its website); selected any material

for upload, download, transmission, or storage; or instigated

any copying, storage, or distribution of these photos. With

respect to direct liability on the Digs photos, the Ninth Circuit

afrmed the district court’s grant of judgment notwithstand-

ing the verdict on 22,109 nondisplayed photos and 2,093

displayed but not searchable photos. However, the Ninth Cir-

cuit upheld summary judgment in favor of VHT on 3,921

displayed, searchable photos, and rejected Zillow’s fair use

defense. The court noted that making the photos searchable

did not change their primary purpose or sufciently transform

them, and that the works were highly creative and Zillow’s

use volitionally exceeded the license rights. The ruling on

willfulness was vacated and remanded to the district court.