Vht, Inc. v. Zillow Group, Inc. ( 2023 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
VHT, INC., a Delaware corporation, Nos. 22-35147
22-35200
Plaintiff-Appellee/
Cross-Appellant, D.C. No.
2:15-cv-01096-
v. JLR
ZILLOW GROUP, INC., a
Washington corporation; ZILLOW, OPINION
INC., a Washington corporation,
Defendants-Appellants
Cross-Appellees.
Appeal from the United States District Court
for the Western District of Washington
James L. Robart, District Judge, Presiding
Argued and Submitted February 27, 2023
Seattle, Washington
Filed June 7, 2023
Before: M. Margaret McKeown, William A. Fletcher, and
Ronald M. Gould, Circuit Judges.
Opinion by Judge McKeown
2 VHT, INC. V. ZILLOW GROUP, INC.
SUMMARY*
Copyright
The panel affirmed the district court’s judgment on
remand in a copyright action brought by VHT, Inc.,
concerning the online display of photos by Zillow Group,
Inc., and Zillow Inc., an online real estate marketplace.
Thousands of copyrighted photos on Zillow’s site come
from VHT, a professional real estate photography studio.
Zillow used VHT’s photos on its real estate “Listing
Platform,” which is the primary display of properties, and on
a home design section of the website called “Digs.”
Following summary judgment rulings, a jury trial, and
various post-trial motions, the panel affirmed the district
court in large part in prior appeal Zillow I. Essentially, the
panel agreed with the district court that Zillow was not liable
for direct, secondary, or contributory infringement.
However, the panel determined that Zillow’s addition of
searchable functionality on the Digs home design webpages
was not fair use. The panel also reversed the jury’s finding
that Zillow had willfully infringed 2,700 searchable photos
displayed on Digs, and it remanded for consideration of
statutory damages and a determination whether VHT’s
photos used on Digs were part of a compilation or were
individual photos. Following more motions and a bench trial
on remand, the parties again appealed.
*
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
VHT, INC. V. ZILLOW GROUP, INC. 3
The panel held that, on remand, the district court
properly excused VHT’s compliance with the non-
jurisdictional registration requirement of 17 U.S.C. § 411(a),
which provides that no infringement action “shall be instated
until preregistration or registration of the copyright has been
made in accordance with this title.” Before filing suit, VHT
submitted to the Copyright Office completed registration
applications for its images, but the Copyright Office did not
issue registration certificates until after the suit was
filed. Fourth Estate Public Benefit Corp. v. Wall-
Street.com, LLC, 139 S. Ct. 881 (2019), issued 11 days
before Zillow I, overruled Ninth Circuit precedent and held
that registration is made not when an application for
registration is filed, but when the Copyright Register has
registered a copyright after examining a properly filed
application. On remand, Zillow argued for the first time that
VHT failed to satisfy § 411(a)’s registration requirement and
that its claims therefore must be dismissed. The panel held
that the district court properly excused VHT’s failure to meet
§ 411(a)’s non-jurisdictional exhaustion requirement
because copyright registration was wholly collateral to
whether Zillow infringed on VHT's copyright, dismissing
VHT’s claim after the statute of limitations had already
expired would cause irreparable harm, and excusal would
not undermine the purpose of administrative exhaustion.
The panel affirmed the district court’s ruling, on remand,
that the 2,700 VHT photos remaining at issue were not a
compilation, which would entitle VHT to only a single
award of statutory damages under 17 U.S.C. § 504(c), but
rather, each individual photo constituted an infringement.
The photos were part of VHT’s master photo database, and
VHT group-registered its images as “compilation.” But
VHT also registered the underlying individual images and
4 VHT, INC. V. ZILLOW GROUP, INC.
licensed these images on a per-image or per-property
basis. The panel held that the photos had independent
economic value separate from the database and did not
qualify as “one work.” Following Alaska Stock, LLC v.
Houghton Mifflin Harcourt Publishing Co., 747 F.3d 673(9th Cir. 2014), the Copyright Office stated that a database
is, by definition, a compilation, and in 2018 it updated
registration options to allow registration of a number of
works as a group that is not considered a compilation. The
panel clarified that Alaska Stock does not limit recovery to
one award for any infringements in a database. The panel
held that the statutory text, caselaw, and common sense
compelled one result: the infringed works were not the
database but instead were the 2,700 individual photographs,
and VHT was entitled to an award of statutory damages for
each of the 2,700 infringements.
On VHT’s cross-appeal, the panel held that, because the
panel in Zillow I had vacated the jury’s finding of
willfulness, the district court did not exceed its mandate on
remand by conducting a new bench trial to decide statutory
damages and determine whether any of the infringements
were innocent. The panel also affirmed the amount of the
statutory award.
VHT, INC. V. ZILLOW GROUP, INC. 5
COUNSEL
Ian B. Crosby (argued), Jenna G. Farleigh, and Emily A.
Parsons, Susman Godfrey LLP, Seattle, Washington, for
Defendants-Appellants.
Stephen M. Rummage (argued) and Eric M. Stahl, Davis
Wright Tremaine LLP, Seattle, Washington, for Plaintiff-
Appellee.
Stephen M. Doniger, Doniger Burroughs PC, Venice,
California; Mickey H. Osterreicher and Alicia Wanger
Calzada, National Press Photographers Association, Athens,
Georgia; for Amici Curiae The National Press
Photographer’s Association, American Photographic
Artists, The Graphic Artist Guild, Professional
Photographers of America, North American Nature
Photographers, American Society of Media Photographers,
and Digital Media Licensing Association.
6 VHT, INC. V. ZILLOW GROUP, INC.
OPINION
McKEOWN, Circuit Judge:
This is the second time we have considered copyright
claims concerning the online display of photos by Zillow
Group, Inc. and Zillow Inc. (collectively, “Zillow”), an
online real estate marketplace. In VHT Inc. v. Zillow Group
Inc. (“Zillow I”), we addressed infringement claims related
to tens of thousands of real estate property photos displayed
by Zillow on its website. 918 F.3d 723, 732, 734 (9th Cir.
2019).
VHT is the largest professional real estate photography
studio in the country, and thousands of the copyrighted
photos on Zillow’s site come from VHT. Id. at 730. VHT’s
clients, including real estate brokerages and listing services,
hire VHT to photograph properties for marketing purposes.
Id. The photos are retouched and edited by the company,
saved in VHT’s electronic photo database, and delivered to
the clients per their license agreement. Id. Zillow used
VHT’s photos in two ways: on its real estate “Listing
Platform,” which is the primary display of properties, and on
a section of the website called “Digs,” which “features
photos of artfully-designed rooms in some of those
properties and is geared toward home improvement and
remodeling.” Id.Following summary judgment rulings, a jury trial and
various post-trial motions, in Zillow I, we affirmed the
district court in large part. Essentially, we agreed with the
district court that Zillow was not liable for direct, secondary
or contributory infringement. See id. at 750. However, we
determined that Zillow’s addition of searchable functionality
on the Digs home design webpages was not fair use. See id.VHT, INC. V. ZILLOW GROUP, INC. 7
at 743–44. We also reversed the jury’s finding that Zillow
had willfully infringed 2,700 searchable photos displayed on
Digs, see id. at 748–49, and remanded for consideration of
statutory damages and a determination “whether VHT’s
photos used on Digs are part of a ‘compilation’ or if they are
individual photos,” id. at 748.
Now, following more motions and a bench trial, the case
is back before us. This time around, we affirm the district
court’s decision in full.
I. ANALYSIS
A. IMPLICATIONS OF FOURTH ESTATE V. WALL-
STREET.COM
The Copyright Act provides that no infringement action
“shall be instituted until preregistration or registration of the
copyright claim has been made in accordance with this title.”
17 U.S.C. § 411(a). More than a decade ago, the Supreme
Court made clear that registration is non-jurisdictional. See
Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 169 (2010).
The Court noted that “Section 411(a) imposes a precondition
to filing a claim that is not clearly labeled jurisdictional, is
not located in a jurisdiction-granting provision, and admits
of congressionally authorized exceptions.” Id. at 166 (citing
§§ 411(a)–(c)). “Section 411(a) thus imposes a type of
precondition to suit that supports nonjurisdictional treatment
under [the Court’s] precedents.” Id. The key question, then,
is what constitutes registration.
When VHT filed this action, Ninth Circuit precedent
held registration was “made” upon the Copyright Office’s
receipt of a completed registration application. See
Cosmetic Ideas, Inc. v. IAC/InterActiveCorp, 606 F.3d 612,
621 (9th Cir. 2010), overruled by Fourth Estate Public
8 VHT, INC. V. ZILLOW GROUP, INC.
Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881
(2019). Before filing suit, VHT submitted to the Copyright
Office completed registration applications for its images.
VHT does not dispute that the Copyright Office did not issue
registration certificates until after the suit was filed. Zillow
argues that the failure to obtain a registration decision before
filing suit was fatal under the Supreme Court’s decision in
Fourth Estate and requires dismissal with prejudice as the
statute of limitations has passed.
In Fourth Estate, the Supreme Court granted certiorari to
resolve a circuit split on the correct interpretation of 17
U.S.C. § 411(a). A unanimous Court held that “‘registration
. . . has been made’ within the meaning of 17 U.S.C. § 411(a)
not when an application for registration is filed, but when the
[Copyright] Register has registered a copyright after
examining a properly filed application.” 139 S. Ct. at 892
(alteration in original). Although Fourth Estate overruled
Ninth Circuit law in Cosmetic Ideas, the Court did not
address or implicate the Court’s earlier holding in Reed
Elsevier that registration under Section 411(a) is a non-
jurisdictional requirement. See Reed Elsevier, 559 U.S. at
169. The Supreme Court explained that “registration is akin
to an administrative exhaustion requirement that the owner
must satisfy before suing to enforce ownership rights.”
Fourth Estate, 139 S. Ct. at 887. It reasoned that “Congress
has maintained registration as prerequisite to suit, and
rejected proposals that would have eliminated registration.”
Id. at 891.
Fourth Estate was decided 11 days before the Ninth
Circuit issued its opinion in Zillow I. Before our opinion was
filed, neither party argued the impact of Fourth Estate
through a Rule 28(j) letter or otherwise, nor did Zillow file a
petition for rehearing afterward. Instead, after remand,
VHT, INC. V. ZILLOW GROUP, INC. 9
Zillow for the first time argued that VHT failed to satisfy
Section 411(a)’s requirement to obtain issued copyright
registrations before filing suit, and its claims must be
dismissed. The district court concluded that “because
§ 411(a) is a pre-filing requirement, the fact that this case
made it to trial implies a decision that VHT either complied
with § 411(a) or was excused from compliance.”
Alternatively, the district court held that it “would excuse the
[exhaustion] requirement in this narrow instance.” The
district court noted that “dismissal would result in a massive
waste of judicial resources” given the advanced stage of the
proceedings. We agree that dismissal was not required.
Our review of the district court’s excusal of exhaustion
is de novo, because the exhaustion requirement is
“predominantly a question of law.” Hoeft v. Tucson Unified
Sch. Dist., 967 F.2d 1298, 1302–03 (9th Cir. 1992). We
benchmark whether to excuse compliance with non-
jurisdictional exhaustion requirements, thus avoiding
dismissal, based on three considerations, namely whether:
(1) the claim is “wholly collateral” to the substantive claim
of entitlement; (2) there is a “colorable showing of
irreparable harm;” and (3) “exhaustion would be futile.”
Glob. Rescue Jets, LLC v. Kaiser Found. Health Plan, Inc.,
30 F.4th 905, 919 (9th Cir. 2022).
The district court did not err in excusing VHT’s failure
to exhaust under Section 411(a). To begin, copyright
registration is wholly collateral to whether Zillow infringed
on VHT’s copyright. Copyright protection runs from the
work’s creation, not from registration. See Eldred v.
Ashcroft, 537 U.S. 186, 194–95 (2003). VHT gained an
exclusive right in its photos upon creation—a right “apart
from registration” with the Copyright Office. Fourth Estate,
139 S. Ct. at 887. While “registration is akin to an
10 VHT, INC. V. ZILLOW GROUP, INC.
administrative exhaustion requirement,” id., the requirement
exists to encourage registration because Congress values “a
robust federal register of existing copyrights,” Cosmetic
Ideas, 606 F.3d at 619 (citing H.R. Rep. No. 94-1476 at 158),
abrogated on other grounds by Fourth Estate, 139 S. Ct. at
886. Here, the registration requirement is collateral to the
merits determination about whether Zillow infringed the
copyright. See McBride Cotton & Cattle Corp. v. Veneman,
290 F.3d 973, 980 (9th Cir. 2002) (holding that a claim is
collateral “if it is not bound up with the merits so closely that
the court’s decision would constitute interference with the
agency process” (cleaned up)).
No party disputes that dismissing VHT’s claim after the
statute of limitations has already expired would cause
irreparable harm. Such irreparable harm is unique to this
case because VHT complied with then-existing precedent
from our court and now, at this late stage in the proceedings,
the statute of limitations has already expired. To impose a
new registration timeline after years of discovery, reliance
on circuit precedent, a jury trial, a bench trial and two
appeals would be a judicial travesty and waste of resources.
Finally, and importantly, excusal would not undermine
the purpose of administrative exhaustion. Exhaustion is
generally required to prevent “premature interference with
agency processes,” to allow the agency to “function
efficiently and so that it may . . . correct its own errors,” to
provide courts “the benefit[s] of [the agency’s] experience
and expertise,” and “to compile a record” for judicial review.
Weinberger v. Salfi, 422 U.S. 749, 765 (1975). Excusal here
would not prematurely interfere with the agency process, nor
would it deprive the Copyright Office of providing its
experience and expertise. The Third Amended Complaint,
filed October 24, 2016, pled that the Copyright Office had
VHT, INC. V. ZILLOW GROUP, INC. 11
by then issued the registrations. Alternatively, the Copyright
Office had the opportunity to enter an appearance in the case
on the issue of registrability but did not do so. See 17 U.S.C.
§ 411(a). The Supreme Court’s concern that “an
infringement suit could be filed and resolved before the
Register acted on an application” is surely not present in this
case. See Fourth Estate, 139 S. Ct. at 889. After the
Copyright Office granted VHT’s eleventh registration in
May 2016, the infringement suit did not go to trial until
January 2017, eight months later. By the time the district
court excused the exhaustion requirement in its May 2020
decision, it had been over six years since the Copyright
Office registered VHT’s copyright. Therefore, VHT’s
failure to obtain a registration before initiating suit did not
undermine the administrative process.
The district court properly excused VHT’s compliance
with the registration requirement under Section 411(a).
B. THE COMPILATION QUESTION
1. District Court Decision
On remand, we left to the district court “further
proceedings as to whether the VHT photos remaining at
issue were a compilation.” Zillow I, 918 F.3d at 748. The
answer to that question is of deep monetary consequence to
the parties. VHT sought statutory rather than actual
damages. If the photos at issue are deemed a compilation,
VHT is entitled to a single award of statutory damages,
ranging from $750 to $30,000. 17 U.S.C. § 504(c)(1). If the
photos are not a compilation and each individual photo
constitutes an infringement, any statutory damages award
could be multiplied by the 2,700 individually infringed
photos.
12 VHT, INC. V. ZILLOW GROUP, INC.
The district court was not persuaded by Zillow’s
arguments that “VHT’s images are a ‘compilation’ because
they are part of VHT’s master photo database and because
the Copyright Office determined that VHT’s database is a
compilation.” Instead, it agreed with VHT that “the question
is not whether [VHT] stores its photos in a database, but
rather whether its photos ‘used on Digs’ are part of a
compilation.” The district court weighed the fact that VHT
group-registers its images as “compilations” against the facts
that VHT also registers the underlying individual images and
licenses these images on a per-image or per-property basis.
The court explained that, to the extent the independent
economic value of the individual photos separate from the
database remains a factor, the jury’s finding indicated that
the individual images were individual works. The court
ultimately concluded “as a matter of law that the infringed
images at issue do not constitute a ‘compilation’” under the
governing statute.
2. Statutory Definition of Compilation
As noted in Zillow I, “[t]he question of whether a work
constitutes a ‘compilation’ for the purposes of statutory
damages pursuant to Section 504(c)(1) of the Copyright Act
is a mixed question of law and fact.” 918 F.3d at 747
(quoting Bryant v. Media Right Prods., Inc., 603 F.3d 135,
140 (2d Cir. 2010)). While the independent economic value
of the photos “informs our analysis” and the form of
registration “may be considered,” neither factor is
dispositive. Zillow I, 918 F.3d at 747–48. “Ultimately, what
counts is the statutory definition.” Id. at 748. We begin
there.
VHT, INC. V. ZILLOW GROUP, INC. 13
Under Section 504(c)(1), a copyright owner may elect to
recover
an award of statutory damages for all
infringements involved in the action, with
respect to any one work, for which any one
infringer is liable individually, or for which
any two or more infringers are liable jointly
and severally, in a sum of not less than $750
or more than $30,000 as the court considers
just.
17 U.S.C. § 504(c)(1). That provision clarifies that “[f]or
the purposes of this subsection, all the parts of a compilation
or derivative work constitute one work.” Id.Section 504(c) thus requires us to determine whether the
photos at issue qualify as “one work.” The distinction is
crucial: If the “one work” subject to the defendant’s
infringements is a compilation, Section 504(c) limits the
copyright holder to a single statutory award. If the works
infringed are not a compilation, they are eligible for
individual damage awards. A “compilation” is “a work
formed by the collection and assembling of preexisting
materials or of data that are selected, coordinated, or
arranged in such a way that the resulting work as a whole
constitutes an original work of authorship.” 17 U.S.C.
§ 101.
While the Copyright Act does not provide a definition of
“work,” it extends copyright protection to “‘[p]ictorial,
graphic, and sculptural works’ includ[ing] . . . photographs.”
Id. The gravamen of VHT’s claim has always been the
infringement of 2,700 individual images—what the
Copyright Act would call the individual “preexisting
14 VHT, INC. V. ZILLOW GROUP, INC.
materials.” Id. Apart from the individual photos, VHT also
owns a copyright in its database. The Copyright Office has
recognized the dual copyright nature of registration of the
database itself as well as the works within it. See Alaska
Stock, LLC v. Houghton Mifflin Harcourt Publishing Co.,
747 F.3d 673, 682 (9th Cir. 2014). But VHT has not claimed
that Zillow infringed the aspects of its database that make it
a compilation, i.e., the selection, coordination, and
arrangement of preexisting pictorial works. See 17 U.S.C.
§ 101. The Copyright Office notes that the database
registration option “may be useful when an applicant is
registering a claim in the creative selection, coordination, or
arrangement of the photographs within a database.” United
States Copyright Office, Circular No. 42, Copyright
Registration of Photographs at 5 (2021), available at
https://www.copyright.gov/circs/circ42.pdf.
Zillow asks us to follow a simple syllogism: the photos
were housed in a database, the database was registered as a
compilation, therefore the photos were part of a compilation
and eligible for only one award. The problem with Zillow’s
theory is that it elevates the form of registration above all
else—a conclusion we and others have rejected. See Zillow
I, 918 F.3d at 748; Gamma Audio & Video, Inc. v. Ean-Chea,
11 F.3d 1106, 1117 n.8 (1st Cir. 1993) (“[T]he number of
copyright registrations is not the unit of reference for
determining the number of awards of statutory damages.”);
Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 286 n.8 (4th Cir.
2003) (“Imageline is entitled to one award of statutory
damages per work infringed because SuperBundle and
Master Gallery are compilations or derivative works in
which Imageline holds copyrights, not because they are
single registrations.” (emphasis removed)) abrogated on
other grounds by Reed Elsevier, 559 U.S. at 169; Bryant, 603
VHT, INC. V. ZILLOW GROUP, INC. 15
F.3d at 141 (“The fact that each song may have received a
separate copyright is irrelevant to this analysis.”); Yellow
Pages Photos, Inc. v. Ziplocal, LP, 795 F.3d 1255, 1277
(11th Cir. 2015) (explaining that “the manner of copyright
registration is not dispositive of the works issue”); Sullivan
v. Flora, Inc., 936 F.3d 562, 572 (7th Cir. 2019) (“The
inquiry and fact finding demanded by § 504(c)(1) is more
functional than formal, taking account of the economic
value, if any, of a protected work more than the fact that the
protection came about by an artist registering multiple works
in a single application.”).
Here, the individual photos were created at the request of
a listing agent or broker, then licensed and published to that
agent or broker for marketing an individual listing. Zillow I,
918 F.3d at 730. VHT licensed the individual photos in the
database, not the database itself. The database itself was not
published. Rather, Zillow used each photo independently to
market home designs. Zillow selected photos based on the
content of the images: it sought “photos of artfully-designed
rooms” for its Digs platform. Id. It was not selecting on the
authorship or arrangement of the photos within the database.
Instead, it obtained images from feed providers based on the
photos themselves. Zillow infringed the individual photos,
not the database. Importantly, the individual infringed
photos were not “in any way selected, coordinated, or
arranged to create an original work of authorship,” Monge v.
Maya Magazines, Inc., 688 F.3d 1164, 1180 (9th Cir. 2012)
(internal quotation marks omitted), and Zillow did not copy
any selection, coordination, or arrangement of the photos
from the database.
“Although the Copyright Act states that ‘all parts of a
compilation . . . constitute one work,’ it does not say that any
work included in a compilation cannot also exist as a
16 VHT, INC. V. ZILLOW GROUP, INC.
separate, independent work.” Arista Recs. LLC v. Lime Grp.
LLC, No. 06 CV 5936 KMW, 2011 WL 1311771, at *3
(S.D.N.Y. Apr. 4, 2011) (alteration in original) (quoting 17
U.S.C. § 504(c)(1)). Though VHT stored photos in a
database, it marketed and licensed individual photos that
existed as separate pictorial works. The photos had
independent economic value separate from the database,
further supporting VHT’s claim that they were individual
works eligible for individual awards. See Zillow I, 918 F.3d
at 747 (holding that independent economic value “informs
our analysis . . . though it is not a dispositive factor”).
The Seventh Circuit’s decision in Sullivan v. Flora, Inc.
underscores the independent economic value of the
individual photos. Although independent economic value is
just one factor to consider, the Seventh Circuit explained its
relevance by way of an analogy that resonates here:
[T]hink in the first instance of the multiple
protected works as a quilt and then ask
whether any one individual patch has
discernable, independent economic value—
whether once separated from the quilt a
particular patch lives its own copyright life
(as “one work”)—or instead whether the
value lies in the patches’ combined assembly
into the quilt as a whole (as a “compilation”).
Sullivan, 936 F.3d at 572. Because VHT licensed the photos
on a per-image or per-property basis, rather than licensing
the database itself, each “patch” was valuable on its own.
The pictorial works lived their own copyright lives, and
value came from each photo’s individual content rather than
their assembly within the database.
VHT, INC. V. ZILLOW GROUP, INC. 17
3. Evolution of the Copyright Office’s
Statements on Compilation
This case falls at an inflection point in the Copyright
Office’s evolving thinking about compilations. The
Copyright Office issues a Compendium of U.S. Copyright
Office Practices (“Compendium”), which is considered “a
non-binding administrative manual.” Georgia v.
Public.Resource.Org, Inc., 140 S. Ct. 1498, 1510 (2020)
(citing Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944)).
“[W]e must follow [the Compendium] only to the extent it
has the ‘power to persuade.’” Id. As of 2021, the Office
“encourages photographers, stock photography companies,
database providers, and other interested parties to register
their works using the group registration options for
published or unpublished photographs, rather than the group
registration for photographic databases.” Compendium
§ 1112.3. Though database registration remains an option,
the Office cautions that “registering photographs as part of a
photographic database may limit the copyright owner’s
ability to seek certain remedies in an infringement action,”
id., as “all the parts of a compilation . . . constitute one
work.” Compendium § 1112.3 (alteration in original)
(quoting 17 U.S.C. § 504(c)(1)). The genesis of that
statement first came in 2016, after the copyrights here were
registered. VHT received its first Certificates of
Registration on its database registration back in 2014, prior
to the Office’s commentary about the registration type. A
bit of history explains the Office’s evolving stance and why
its caution about compilations has no traction here.
Database registration has been an option since 1989 and
remains one today.
18 VHT, INC. V. ZILLOW GROUP, INC.
Group Registration of Photographs, 81 Fed. Reg. 86643,
86645 (proposed Dec. 1, 2016) (to be codified at 37 C.F.R.
pts. 201, 202); Compendium § 1117. In 2016, the Copyright
Office issued a Notice of Proposed Rulemaking focused on
updating its group registration options. At that time, there
were multiple options for group registration of multiple
photos within the same application:
• Group registration of published photographs,
which required photos by the same photographer
published in a single year;
• Unpublished collections, which required all the
works to have at least one common author;
• Group registration for contributions to
periodicals, such as a newspaper, magazine or
journal;
• Collective works, such as a periodical, anthology
or encyclopedia constituting separate works that
are assembled into a collection;
• Group registration for photographic databases.
81 Fed. Reg. at 86644–46. As to the last group, which is at
issue here, the Copyright Office stated that the registration
covers the authorship involved in selecting,
coordinating, and arranging the content of the
database as a whole. It also may cover the
individual photographs that are included
within the database if the photographers
transferred the exclusive rights in their
respective works to the owner of the
database, and if the selection, coordination,
VHT, INC. V. ZILLOW GROUP, INC. 19
and/or arrangement of those photographs is
sufficiently creative.
Id. at 86645.
One of the Office’s proposed changes was to do away
with the unpublished collection group, rebranding that
option as the “‘group option for unpublished photographs’
or ‘GRUPH.’” Id. at 86646. The final rule in 2018 did just
that and permitted a group registration of up to 750
unpublished photographs per group. Group Registration of
Photographs, 83 Fed. Reg. 2542 (Jan. 18, 2018) (codified at
37 C.F.R. pts. 201, 202). The problem with the unpublished
collection group, the Office explained in its 2016 proposal,
is that “when a number of photographs are registered as an
unpublished collective work, the copyright owner would be
entitled to seek only one award of statutory damages in an
infringement action, rather than a separate award for each
photograph.” 81 Fed. Reg. at 86653. The new unpublished
group registration option, in contrast, “is treated as a separate
registration for each photograph that is included within the
group.” Id. Though the Office noted in its proposed rule
that it “will continue to accept” database registration claims,
it expressed for the first time that copyright holders should
consider similar statutory damage implications for the
database registration group. Id. at 86654.
Citing to our decision in Alaska Stock, the Copyright
Office stated that “[a] database is—by definition—a
compilation.” Id. (citing Alaska Stock, 747 F.3d at 676). It
continued:
Consequently, when a group of photographs
is registered as a database, the copyright
owner may be entitled to seek only one award
20 VHT, INC. V. ZILLOW GROUP, INC.
of statutory damages for the database as a
whole—rather than a separate award for each
photograph—even if the defendant infringed
all the photographs that are covered by the
registration.
81 Fed. Reg. at 86654. The Office concluded that “the group
options for published and unpublished photographs provide
significant benefits, while avoiding the potential downside
of registering a number of works as part of a photographic
database,” as the group itself is not considered a compilation.
Id. The group registration updates went into effect in 2018.
See 83 Fed. Reg. 2542; Compendium § 1112.3.
The Copyright Office’s caution regarding the database
registration category and promotion of different group
categories was apparently a reaction to our decision in
Alaska Stock. We take the opportunity to clear up some
confusion. To begin, Alaska Stock’s reference to
photographic databases as “collective work” under the
Copyright Act was in the context of registration, without
reference to statutory damages. See Alaska Stock, 747 F.3d
at 676. We held that a stock photo agency that registered
databases had successfully registered both a copyright in the
databases and the individual images stored within them. See
id. at 685.
The Copyright Office’s reading of Alaska Stock as
potentially limiting recovery to one award for any
infringements in a database belies the rationale of that case.
Alaska Stock was a victory for photographers and stock
agencies. We espoused our support for an efficient
registration process that was financially and administratively
manageable for individual photographers trying to make a
living and one on which stock agencies had relied upon for
VHT, INC. V. ZILLOW GROUP, INC. 21
decades with the “written blessing of the federal
administrative agency.” Alaska Stock, 747 F.3d at 677. We
emphasized that “[w]e are not performing a mere verbal,
abstract task when we construe the Copyright Act. We are
affecting the fortunes of people, many of whose fortunes are
small.” Id. at 686. In holding that the collective registration
covered both the database and the individual photographs
within it, we recognized that “[t]he livelihoods of
photographers and stock agencies have long been founded
on their compliance with the Register’s reasonable
interpretation of the statute.” Id. If a copyright holder could
receive only one statutory award for thousands of
infringements housed within a database, Alaska Stock
becomes at best an empty gesture and at worst a cruel joke.
At the time of the infringements here, database
registration was the viable course for stock agencies with
thousands of photos and one that had been endorsed by the
Copyright Office for decades. See id. According to amici,
database registration remains a “critically important” course:
“Unlike creators of other copyrightable works,
photographers can create hundreds, and sometimes
thousands, of photographs per day.”1 Even the other group
registration options, which limit registration to 750
photographs, would be little help to large stock agencies like
VHT, which owns the copyright in over ten million home
photos. 83 Fed. Reg. at 2542. If database registration alone
automatically limited a holder to one infringement award,
the Copyright Office would be inundated with applications,
1
The amicus brief was filed by the American Photographic Artists,
National Press Photographer’s Association, Professional Photographers
of America, North American Nature Photography Association, Graphic
Artist Guild, Digital Media Licensing Association and American Society
of Media Photographers.
22 VHT, INC. V. ZILLOW GROUP, INC.
or, worse, copyright holders would give up on registration
and never be able to protect their creative and monetary
investments.
The district court’s careful intertwining of factual and
legal analysis supports its conclusion that, in this case, the
registration encompassed the individual photos that were
infringed. The court considered the appropriate factors and
distinguished between “VHT’s organization of its images
prior to issuance” in an automated database and “how
VHT’s images are organized or arranged when issued.”
The statutory text, caselaw, and common sense compel
one result: the infringed works were not the database but
instead were the 2,700 individual photographs, and VHT is
entitled to an award for each of the 2,700 infringements.
C. REGISTRATION VALIDITY
Zillow argued in the alternative that if VHT’s database is
not a compilation, its database registration applications are
inaccurate and subject to invalidation under 17 U.S.C.
§ 411(b)(1). This argument is neither convincing nor
applicable given our compilation holding. Zillow’s sole
authority, Gold Value Int’l Textile, Inc. v. Sanctuary
Clothing, LLC, 925 F.3d 1147 (9th Cir. 2019), is no longer
good law. See Unicolors, Inc. v. H&M Hennes & Mauritz,
L. P., 142 S. Ct. 941, 945 (2022) (“Lack of knowledge of
either fact or law can excuse an inaccuracy in a copyright
registration.”); Unicolors, Inc. v. H&M Hennes & Mauritz,
L.P., 52 F.4th 1054, 1065 n.3 (9th Cir. 2022) (“Because we
relied on the same distinction in Gold Value, to the extent
that its holding concluded that a party’s knowledge of the
law is irrelevant under § 411(b), it is ‘clearly irreconcilable’
with the Supreme Court’s analysis here and is thereby
abrogated.”). We need not consider the issue further as our
VHT, INC. V. ZILLOW GROUP, INC. 23
conclusion that the infringed photographs did not amount to
a statutory compilation does not implicate whether the
database itself was registered as a compilation.
D. DAMAGES
On cross appeal, VHT argues that the district court
exceeded its mandate by conducting a new trial to decide
statutory damages and also takes issue with the statutory
damages awarded. At the first trial, “[t]he jury found that
Zillow willfully infringed exclusive rights to 3,373
searchable VHT photos that were eligible for statutory
damages.” Zillow I, 918 F.3d at 748. We vacated that
finding as to 2,700 photos because substantial evidence did
not support either actual awareness or reckless disregard as
required to sustain willfulness. Id. at 748–49. The district
court took our vacatur of the jury’s finding of willfulness as
“necessarily vacat[ing] the award of damages for willful
infringement.” The district court did not err. A new trial
was necessary to determine the status of the photos and to
consider the appropriate statutory award.
Once we vacated the willfulness option, it was not clear
how the disputed images should be categorized. The verdict
form instructed the jury to “categorize th[e] images based on
whether Zillow infringed willfully, innocently, or neither
willfully nor innocently.” The new trial was necessary to
determine whether any of the infringements were innocent.
Before doing so, the district court harkened back to
statements in Zillow I that “substantial evidence does not
show Zillow was ‘actually aware’ of its infringing activity”
and that Zillow’s “belief that feed providers had properly
licensed its uses and that its system effectively respected
those rights was reasonable.” VHT, Inc. v. Zillow Grp., Inc.,
No. C15-1096JLR, 2021 WL 913034, at *5 (W.D. Wash.
24 VHT, INC. V. ZILLOW GROUP, INC.
Mar. 10, 2021) (quoting Zillow I, 918 F.3d at 749). The
district court appropriately considered the innocence issue
and the record supports its determination that 388 images
were innocently infringed.
VHT also challenges the amount of the statutory award.
The district court awarded statutory damages of $800 for
2,312 images and $200 per image for the 388 innocently
infringed photos. VHT repeats the argument it made to the
district court that, on remand, the court should have awarded
$1,500 per infringement, which is near the bottom of the
statutory damages range for infringements that are neither
willful nor innocent. It is also the amount the jury awarded
for the willful infringements. VHT does not cite any
authority for the proposition that the statutory damages
award should go undisturbed after a willfulness vacatur if the
jury also could have reached that same amount without
finding willfulness.
The Second Circuit rejected a similar argument where
the damage award would still have been authorized by the
statute without willfulness. See Island Software & Comput.
Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 265 (2d Cir.
2005). The Second Circuit “believe[d] it prudent to vacate
[the district court’s] damage award and remand for further
proceedings” where “in setting the statutory damages, the
district court relied, at least in part, on an erroneous
conclusion that willfulness had been established as a matter
of law.” Id. The court reasoned that it could not “be certain
that the district court’s remedial decision would have been
the same absent its conclusion that [the infringer] acted with
reckless disregard for, or willful blindness to, [the copyright
holder’s] rights.” Id. The First Circuit has reiterated this
same principle of vacatur where there is uncertainty as to the
relationship between willfulness and statutory damages. See
VHT, INC. V. ZILLOW GROUP, INC. 25
Venegas-Hernandez v. Sonolux Recs., 370 F.3d 183, 195–96
(1st Cir. 2004). Not only was a new trial warranted on
damages, we see no basis to disturb the district court’s award
of statutory damages.
AFFIRMED.