Ninth Circuit Report

• Jurisdiction: United States,Federal
• Author: Anne-Marie Dao
• Publication year: 2021
• Citation: Vol. 46 No. 4

NINTH CIRCUIT REPORT

Anne-Marie Dao
Sheppard Mullin

Happy Winter, Ninth Circuit report readers! This issue covers the Ninth Circuit's clarification of the de minimis use defense.

DE MINIMIS USE DEFENSE

The concept of de minimis use of a Copyright is "properly used to analyze whether so little of a copyrighted work has been copied that the allegedly infringing work is not substantially similar to the copyrighted work and is thus non-infringing."¹

The Ninth Circuit Court of Appeals addressed the concept of de minimis use in Richard N. Bell v. Wilmott Storage Services, LLC.² Mr. Bell worked as an attorney at the time he snapped a photograph of the Indianapolis skyline. The photo was used on his firm's official website, and published on "Webshots.com." Mr. Bell registered the photo 11 years later, in 2011.³ In 2018, Mr. Bell ran a reverse image search to monitor infringing uses of his photo. As a result, Mr. Bell initiated over 100 copyright infringement litigations.⁴ In his search, Mr. Bell discovered his photograph on VisitUSA.com. The photograph was only accessible to users conducting a reverse image search or who knew the precise address of the image database archiving the photograph.⁵ VisitUSA.com was then purchased by Wilmott Storage Services, LLC, the defendant in this case. Mr. Bell notified Wilmott that it was displaying his photo without permission. Mr. Bell waited six months before bringing suit. One year after being notified the photo was being displayed without permission, Wilmott continued to display the photo on its server (though at a different pinpoint address).⁶

Mr. Bell and Wilmott both moved for summary judgment, and the district court granted summary judgment to Wilmott based on the affirmative defense of de minimis use, fair use, and statute of limitations.⁷ The district court concluded "that Wilmott's use of the Indianapolis photo was so insubstantial as to constitute a mere 'technical' or de minimis violation that was not actionable as a matter of law."⁸

The Ninth Circuit began its discussion with clarifying what publicly displaying one's work means: "we have yet to address the issue of whether one 'publicly displays' a work where it is accessible only to members of the public who either possess the specific pinpoint address or who perform a particular type of online search—here a reverse image search."⁹ In a previous case, Perfect 10, Inc. v. Amazon, Inc., the Ninth Circuit concluded that "based on the plain language of the

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