Richard Bell v. Wilmott Storage Services, LLC

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
RICHARD N. BELL, No. 19-55882
Plaintiff-Appellant,
D.C. No.
v. 2:18-cv-07328-
CBM-MRW
WILMOTT STORAGE SERVICES, LLC,
Defendant-Appellee.
RICHARD N. BELL, No. 19-56181
Plaintiff-Appellee,
D.C. No.
v. 2:18-cv-07328-
CBM-MRW
WILMOTT STORAGE SERVICES, LLC,
Defendant-Appellant,
OPINION
and
ROE CORPORATIONS; IADVANTAGE,
LLC; DOES,
Defendants.
2 BELL V. WILMOT STORAGE SERVICES
Appeal from the United States District Court
for the Central District of California
Consuelo B. Marshall, District Judge, Presiding
Argued and Submitted August 13, 2020
Pasadena, California
Filed September 9, 2021
Before: Kim McLane Wardlaw and Richard R. Clifton,
Circuit Judges, and Jennifer Choe-Groves, * Judge.
Opinion by Judge Wardlaw;
Concurrence by Judge Clifton;
Concurrence by Judge Choe-Groves
*
The Honorable Jennifer Choe-Groves, Judge for the United States
Court of International Trade, sitting by designation.
BELL V. WILMOT STORAGE SERVICES 3
SUMMARY **
Copyright
The panel reversed the district court’s grant of summary
judgment in favor of the defendant based on a putative de
minimis use defense in a copyright case, and remanded for
consideration of remaining defenses and damages issues.
The panel held that the concept of de minimis copying 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. However, once infringement is established,
that is, ownership and violation of one of the exclusive rights
in copyright under 17 U.S.C. § 106, de minimis use of the
infringing work is not a defense to an infringement action.
Plaintiff Richard Bell alleged that Wilmott Storage
Services, LLC, infringed his copyright in a photograph of the
Indianapolis skyline. The panel concluded that Wilmott
publicly displayed the photo on its website, even though the
photo was accessible only to members of the public who
either possessed the specific pinpoint address or who
performed a particular type of online search, such as a
reverse image search. Applying the Perfect 10 “server test,”
the panel reasoned that Wilmott’s server was continuously
transmitting the image to those who used the specific
pinpoint address or were conducting reverse image searches
using the same or similar photo. Thus, Wilmott transmitted,
**
This summary constitutes no part of the opinion of the court. It
has been prepared by court staff for the convenience of the reader.
4 BELL V. WILMOT STORAGE SERVICES
and therefore displayed, the Indianapolis photo without
Bell’s permission. The panel further concluded that
Wilmott’s display was public by virtue of the way it operated
its servers and its website.
Having concluded that Wilmott publicly displayed the
Indianapolis photo, the panel wrote that it would ordinarily
ask whether the infringing work was substantially similar to
the copyrighted work. Here, however, the panel concluded
that the “degree of copying” was total because the infringing
work was an identical copy of the copyrighted Indianapolis
photo. Accordingly, there was no place for an inquiry as to
whether there was de minimis copying, and thus no
infringement. Agreeing with other circuits, the panel wrote
that the Ninth Circuit has consistently applied the de minimis
principle to determine whether a work is infringing by
analyzing the quantity and quality of the copying to
determine if the allegedly infringing work is a recognizable
copy of the original work, in other words, whether the works
are substantially similar. The panel wrote that the Ninth
Circuit has never recognized a de minimis defense based on
the allegedly minimal use of concededly infringing material.
The panel thus rejected Wilmott’s “technical violation”
theory of a de minimis defense adopted by the district court.
The panel reversed the district court’s grant of summary
judgment. Because the panel held that Wilmott was not
entitled to judgment on its de minimis defense, the panel also
vacated the district court’s denial of Wilmott’s motion for
attorney’s fees. Accordingly, the panel dismissed Wilmott’s
cross-appeal as moot.
Concurring, Judge Clifton, joined by Judge Wardlaw,
wrote that he joined fully in the opinion. He wrote separately
to discourage Bell’s further pursuit of his copyright claims
BELL V. WILMOT STORAGE SERVICES 5
given the circumstances, including Bell’s filing of many
other copyright suits and the fact that his claims were based
on a copyright that might not belong to him.
Concurring in part, Judge Choe-Groves wrote that she
agreed with the majority that the de minimis concept was not
a defense for Wilmott’s wholesale copying and with the
majority’s result vacating the grant of summary judgment
and remanding. Judge Choe-Groves wrote that she would
remand for the district court to first consider the threshold
question of whether Bell owns the copyright in the
Indianapolis photo, with consideration of the jury verdict in
a related case, and to address Wilmott’s alleged violation and
defenses only if the district court finds valid copyright
ownership.
COUNSEL
Gregory Keenan (argued), Digital Justice Foundation, Floral
Park, New York; Andrew Grimm, Digital Justice
Foundation, Omaha, Nebraska; Ryan A. Hamilton,
Hamilton Law LLC, Las Vegas, Nevada; for Plaintiff-
Appellant/Appellee.
Paul D. Supnik (argued), Law Office of Paul D. Supnik,
Beverly Hills, California, for Defendant-
Appellee/Appellant.
6 BELL V. WILMOT STORAGE SERVICES
OPINION
WARDLAW, Circuit Judge:
We write to clarify the role that de minimis copying
plays in statutory copyright. The de minimis concept 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. However, once infringement is established,
that is, ownership and violation of one of the exclusive rights
in copyright under 17 U.S.C. § 106, de minimis use of the
infringing work is not a defense to an infringement action.
Because the district court held to the contrary, we reverse the
judgment, and remand for consideration of the remaining
defenses and damages issues. 1
I.
This appeal comes to us on a motion for summary
judgment. We therefore review the district court’s grant of
summary judgment de novo, viewing the evidence in the
light most favorable to the non-moving party and drawing
all reasonable inferences in its favor. Range Rd. Music, Inc.
v. E. Coast Foods, Inc., 668 F.3d 1148, 1152 (9th Cir. 2012).
1
Wilmott cross-appeals the district court’s denial of its motion for
attorneys’ fees and costs, based on its status as the prevailing party.
Because we hold that Wilmott was not entitled to judgment on its de
minimis defense, we also vacate and remand the district court’s denial of
Wilmott’s motion for attorney’s fees. Wilmott’s cross-appeal, No. 19-
56181, is therefore dismissed as moot.
BELL V. WILMOT STORAGE SERVICES 7
A.
Richard Bell took the landscape photograph of the
Indianapolis skyline (the “Indianapolis photo”), reprinted
below, in March or May of 2000. 2
At the time the Indianapolis photo was taken, Bell worked
as an attorney for the Indianapolis law firm Cohen & Malad,
and the photo was posted on the firm’s official website at
some point. Bell v. Carmen Com. Real Est. Servs., No. 1:16-
cv-01174-JRS-MPB, 2020 WL 5016891, at *1 (S.D. Ind.
2
There is some doubt about the exact date of the photo’s creation.
See Bell v. Davis, 430 F. Supp. 3d 718, 720 (D. Or. 2019) (“Plaintiff Bell
testified that he took the skyline photograph in March or May of 2000.”).
And, although in this appeal the parties do not dispute that Bell took the
Indianapolis photo, his authorship and ownership of the copyright in the
photo have been questioned elsewhere.
8 BELL V. WILMOT STORAGE SERVICES
Aug. 25, 2020). 3 Bell first published the Indianapolis photo
on “Webshots.com” on August 29, 2000. But he did not
register the Indianapolis photo with the United States
Copyright Office until eleven years later, on August 4, 2011.
Bell also published the photo on his online photo gallery
“richbellphotos.com,” from which Bell commercially
licenses the use of his photographs.
In 2018, in an effort to monitor infringing uses of his
photo, Bell ran a reverse image search 4 on Google Images
using the Indianapolis photo. Bell frequently uses reverse
image searches to identify potential infringers, and he has
filed over 100 copyright infringement lawsuits concerning
the Indianapolis photo, a number that exceeds 200 when
combined with suits concerning a different photo that he
took of the Indianapolis skyline. Davis, 430 F. Supp. 3d
at 721 & n.1 (citing Bell v. Barber, No:18-cv-01491, 2019
3
We take judicial notice of this proceeding. We “may judicially
notice a fact that is not subject to reasonable dispute because it . . . can
be accurately and readily determined from sources whose accuracy
cannot reasonably be questioned.” Fed. R. Evid. 201(b)(2). The court
“may take notice of proceedings in other courts . . . if those proceedings
have a direct relation to matters at issue.” United States ex rel. Robinson
Rancheria Citizens Council v. Borneo, Inc., 971 F.2d 244, 248 (9th Cir.
1992) (quoting St. Louis Baptist Temple, Inc. v. FDIC, 605 F.2d 1169,
1172 (10th Cir. 1979)) (taking notice of the judgment and related filings).
4
A reverse image search is a search in which a user inputs a web
address or copy of an image, and the search engine returns a list of
locations on the Internet that contain a copy of the image or a similar but
slightly modified one, e.g., the identical image with a person edited into
the background. Thus, a reverse image search uses an image to find
either copies of the image, or other similar images on the Internet, in
much the same way that a search of a string of text finds webpages that
include that string of text. See Santi Thompson & Michele Reilly, A
Picture Is Worth a Thousand Words, 68 J. Ass’n for Info. Sci. & Tech.
2264, 2264–65 (2017).
BELL V. WILMOT STORAGE SERVICES 9
WL 4467955, *1 n.1 (S.D. Cal. Sept. 16, 2019)). Through
one of these Google searches, Bell found the Indianapolis
photo on a server database associated with the website
VisitUSA.com. The average Internet user would not have
been able to access the photograph by going to
VisitUSA.com and navigating the options available on the
website. Rather, the image was only accessible to those
users who conducted a reverse image search—as Bell had—
or those who knew the precise address of the image database
archiving the photograph, http://www.visitusa.com/images/
states/alabama/cities/mobile/park.jpg (hereinafter, the
“pinpoint address”), last seen on or around April 16, 2018,
when the file was purportedly removed. 5
In 2012, Wilmott Storage Services, LLC purchased the
VisitUSA.com website from a third party, and, in 2014,
hired another company to update the website to generate
more traffic and advertising revenue. The Indianapolis
photo existed on the server hosting VisitUSA.com at least as
early as December 23, 2014, when Wilmott launched the
newly updated website, and it was likely present when
Wilmott originally acquired the website.
On April 7, 2018, Bell notified Wilmott that it was
displaying the Indianapolis photo without his permission.
Before this, Wilmott was unaware that the photo was on its
server, but Wilmott removed the photo from the original
pinpoint address in response to Bell’s request.
However, in March of 2019, one year after Bell’s initial
request and six months after Bell brought this lawsuit,
5
By the web address listing, the photo was apparently incorrectly
identified as depicting the skyline of Mobile, Alabama rather than
Indianapolis, Indiana.
10 BELL V. WILMOT STORAGE SERVICES
Wilmott continued to display a copy of the Indianapolis
photo on its server, now at a slightly different pinpoint
address than before. 6 To explain this discrepancy, Wilmott
argues that it had attempted to remove the Indianapolis photo
located at the pinpoint address identified by Bell, but the
webmaster Wilmott tasked with the photo’s removal appears
to have only changed the file name (from “park.jpg” to
“park_yyy.jpg”), rather than remove it completely. Bell
requested that Wilmott remove this copy of the Indianapolis
photo as well, and Wilmott did so.
It is undisputed that Bell never licensed or otherwise
permitted Wilmott to display the Indianapolis photo.
B.
Bell sued Wilmott for copyright infringement in 2018.
Both parties subsequently filed cross-motions for summary
judgment. Assuming infringement of Bell’s copyright for
purposes of summary judgment, Wilmott argued for
judgment based on the affirmative defenses of de minimis
use, fair use, and the statute of limitations.
The district court granted summary judgment to Wilmott
on the de minimis use defense and therefore did not reach
either the fair use or the statute of limitations defenses.
Although Wilmott conceded that an identical copy of the
Indianapolis photo was hosted on its server, the district court
found no infringement, relying on Knickerbocker Toy Co. v.
Azrak-Hamway Int’l, Inc., 668 F.2d 699 (2d Cir. 1982), and
misreading the controlling Ninth Circuit cases regarding de
6
Specifically, this copy was located at
http://www.visitusa.com/images/states/alabama/cities/mobile/park_yyy.
jpg, last seen on March 10, 2019, when the file was removed.
BELL V. WILMOT STORAGE SERVICES 11
minimis copying. Like Wilmott, the district court assumed
the validity of Bell’s copyright interest for purposes of the
decision on summary judgment. 7 The district court then
concluded that Wilmott’s use of the Indianapolis photo was
7
This assumption was not error. The text of the Copyright Act does
not require the district court to consider dispositive issues in any
particular order or at all. We have routinely assumed the validity of the
copyright at issue before addressing a separate, but no less dispositive,
issue. See, e.g., Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1507
(9th Cir. 1987) (“We need not decide whether [the plaintiff’s] copyright
is valid. Even assuming its validity, we agree with the district court that
no infringement of the copyright occurred.”); Cooling Sys. & Flexibles,
Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 491 (9th Cir. 1985), overruled
on other grounds by Unicolors, Inc. v. H&M Hennes & Mauritz, L.P.,
959 F.3d 1194, 1198 (9th Cir. 2020). Of course, any claim of copyright
infringement requires the plaintiff to own a valid copyright. See Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). But we
have never precluded district courts from assuming the validity of a
copyright interest for purposes of determining another dispositive issue.
Other circuits also routinely assume a valid ownership interest in
order to address another clearly dispositive issue. See Swatch Grp.
Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 92 (2d Cir. 2014)
(affirming summary judgment “on the ground of fair use without
reaching the issue of copyrightability”); Bridgmon v. Array Sys. Corp.,
325 F.3d 572, 576 n.6 (5th Cir. 2003) (“We need not reach [the question
of validity] and will assume arguendo that his copyright was valid.”);
Korman v. HBC Fla., Inc., 182 F.3d 1291, 1293 n.1 (11th Cir. 1999)
(“The district court assumed that Korman possessed a valid copyright.
Without conceding the issue, HBC made the same assumption in its brief
to us, and we, too, will assume for present purposes that Korman has a
valid copyright in the jingle.”); Miner v. Emps. Mut. Liab. Ins. Co. of
Wis., 229 F.2d 35, 35 (D.C. Cir. 1956) (“[T]he district court did not pass,
and we find it unnecessary to pass, upon the validity of plaintiff's
copyrights. The court correctly concluded ‘that assuming that plaintiff's
copyrights are valid, there has been no infringement thereof by
defendant.’”).
12 BELL V. WILMOT STORAGE SERVICES
so insubstantial as to constitute a mere “technical” or de
minimis violation that was not actionable as a matter of law.
II.
To establish a prima facie case of direct copyright
infringement, Bell must show that he owns the copyright,
and that Wilmott violated one of the exclusive rights in
copyright set forth in 17 U.S.C. § 106. See A&M Recs., Inc.
v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001);
17 U.S.C. § 501(a) (infringement occurs when the alleged
infringer engages in activity listed in § 106). Though there
is no serious dispute as to whether Bell originally took the
Indianapolis photo, the validity of Bell’s copyright in the
photo has been called into question in other cases while this
appeal was pending. See, e.g., Davis, 430 F. Supp. 3d at 720;
Carmen Com., 2020 WL 5016891, at *1 (noting that “[t]he
jury found that Bell did not prove that he authored the
Indianapolis Skyline Photo, that he owns a copyright in it,
and that he registered it with the Copyright Office” after the
defendant argued it was a work made for hire); but see Bell
v. Maloney, 1:16-cv-01193-RLY-DLP-ECF No. 86, at *20
(S.D. Ind. May 23, 2019) (finding that the photo was not a
work made for hire and that Bell is the valid copyright
owner). Because the district court did not have an
opportunity to decide what preclusive effect (if any) should
be given to those cases, we limit our discussion to the
grounds on which the district court relied, and which the
parties adequately presented before us. 8
8
Following developments in Carmen that arose after this case was
argued and submitted, we requested supplemental briefing from the
parties regarding whether a limited remand would be appropriate for the
district court to decide in the first instance whether Bell is the valid
BELL V. WILMOT STORAGE SERVICES 13
Bell asserts that Wilmott infringed his right “to display
the copyrighted work publicly,” 17 U.S.C. § 106(5), by
making it accessible to the public on its server, where Bell
found it “displayed” after running a reverse image search.
He further contends that once he has demonstrated
infringement of his public display right, a de minimis use
defense is not available to Wilmott.
A.
“Under the Copyright Act, the owner of a copyright has
the exclusive right to display its work.” Perfect 10, Inc. v.
Giganews, Inc., 847 F.3d 657, 668 (9th Cir. 2017)
(“Giganews”). On appeal, Bell argues that Wilmott violated
his exclusive right to publicly display the Indianapolis photo
by “displaying” the photo on its server. Although we have
addressed this issue in the context of websites, Perfect 10,
Inc. v. Amazon, Inc., 508 F.3d 1146 (9th Cir. 2007) (“Perfect
owner of the copyright in the Indianapolis photo and the preclusive
effect, if any, of the jury verdict in Carmen on this case. See, e.g., Davis,
430 F. Supp. 3d at 720. In response, the parties filed a joint letter brief
opposing a limited remand and requesting that we not elide the de
minimis infringement question. After considering their response, we
declined to order a limited remand, particularly in light of: (1) the
numerous, complex questions that issue preclusion might pose, some of
which may generate an appeal of their own and after which the parties
may return to us with the same de minimis arguments; (2) Wilmott’s
likely waiver of issue preclusion arguments on appeal by both failing to
raise them in briefing and effectively disclaiming them during oral
argument; and (3) the principle of party presentation, which counsels us
to “normally decide only questions presented by the parties.” United
States v. Sineneng-Smith, 140 S. Ct. 1575, 1579 (2020). In addition, Bell
has twice appealed the Carmen decision, the second of which appeals
remains pending, Carmen Com., No. 1:16-cv-01174-JRS-MPB, appeal
dismissed, No. 20-2902 (7th Cir. Apr. 23, 2021), appeal pending, No.
21-1851 (7th Cir. May 13, 2021).
14 BELL V. WILMOT STORAGE SERVICES
10”), 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.
The Copyright Act (the “Act”) explains that:
To perform or display a work “publicly”
means—
(1) to perform or display it at a place open
to the public . . . ; or
(2) to transmit or otherwise communicate
a performance or display of the work to a
place specified by clause (1) or to the
public, by means of any device or process
....
17 U.S.C. § 101. In Perfect 10, we concluded that, “based
on the plain language of the statute, a person displays a
photographic image by using a computer to fill a computer
screen with a copy of the photographic image fixed in the
computer’s memory.” 508 F.3d at 1160. In that case, Perfect
10 sued Google, along with Amazon and other companies,
for infringing Perfect 10’s copyrighted images of nude
models through its Google Image search engine. Id. at
1155–57. In response to a user’s search, Google indexed the
webpages with responsive images, displayed an indexed list
of smaller versions of these images, i.e., “thumbnails,” and
linked those thumbnails to third-party websites displaying
the full-sized image. Id. at 1156. Google stored these
thumbnail images on its servers. Id. at 1155. At no point
BELL V. WILMOT STORAGE SERVICES 15
did Perfect 10 authorize Google to display its copyrighted
images. Id. at 1159.
Given Perfect 10’s exclusive right as the copyright
holder of its images “to display the copyrighted work
publicly,” we analyzed whether or not Google’s listing of
thumbnail images in response to a potential search violated
Perfect 10’s display rights. Id. at 1160 (quoting 17 U.S.C.
§ 106(5)). Because “[t]he Copyright Act explains that
‘display’ means ‘to show a copy of it, either directly or by
means of a film, slide, television image, or any other device
or process,’” id. at 1160 (quoting 17 U.S.C. § 101), we held
that “based on the plain language of the statute, a person
displays a photographic image by using a computer to fill a
computer screen with a copy of the photographic image
fixed in the computer’s memory,” id.; see also 17 U.S.C.
§ 101 (defining “[t]o ‘transmit’ a performance or display” as
“communicat[ing] it by any device or process whereby
images or sounds are received beyond the place from which
they are sent.”). Thus, because “Google’s computers store
thumbnail versions of Perfect 10’s copyrighted images and
communicate copies of those thumbnails to Google’s users”
and because Google and other webpages were generally
available to the public, we concluded that Google’s
generated list of thumbnails constituted a public display.
Perfect 10, 508 F.3d at 1160. In so doing, we adopted the
district court’s so-called “server test” regarding public
displays of protected works online: “a computer owner that
stores an image as electronic information and serves that
electronic information directly to the user (‘i.e., physically
sending ones and zeroes over the [I]nternet to the user’s
browser’) is displaying the electronic information in
violation of a copyright holder’s exclusive display right.” Id.
at 1159 (citation omitted); see also Giganews, 847 F.3d
at 668 (reaffirming the server test). Therefore, we held that
16 BELL V. WILMOT STORAGE SERVICES
Perfect 10 had made a prima facie case that Google infringed
Perfect 10’s exclusive right to publicly display its
copyrighted works. Perfect 10, 508 F.3d at 1160.
Applying the reasoning of Perfect 10 to this case, we
conclude that Wilmott publicly displayed the Indianapolis
photo. 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 to those who used the specific pinpoint address or
were conducting reverse image searches using the same or
similar photo. If any user had visited the pinpoint address
for the Indianapolis photo, under either of its file names,
Wilmott’s server—where it is undisputed the photos were
stored—would transmit that photo to the user, where the
photo would “fill [the user’s] computer screen with a copy
of the [Indianapolis photo] fixed in the computer’s
memory.” Id. at 1160. Thus, Wilmott transmitted, and
therefore displayed, the Indianapolis photo without Bell’s
permission, and Wilmott is simply incorrect to assert that it
“did not provide the ability to see [the Indianapolis photo].”
Wilmott’s display was also public by virtue of the way
Wilmott operated its servers and its website,
www.VisitUSA.com. Wilmott’s server transmitted the
Indianapolis photo to any member of the public who used
the pinpoint address or a reverse image search. It is
undisputed the Indianapolis photo was accessible to
members of the public, both before and after the specific file
was possibly renamed, but only if an individual knew how
to access it. As Bell notes, that he was able to locate his
photo by using a reverse image search means that “reverse
image search companies had already received Wilmott’s
public display before Mr. Bell discovered it,” and thus the
photo was already publicly displayed.
BELL V. WILMOT STORAGE SERVICES 17
Wilmott makes much of the fact that Google never
indexed the Indianapolis photo, so that the photo would not
appear in response to a Google text search for images related
to “Indianapolis,” which would have made it much more
likely that members of the public would have come across
the image. By displaying the Indianapolis photo on a server
that was publicly accessible to anyone with an Internet
connection, however, Wilmott publicly displayed the photo,
see 17 U.S.C. § 106(5), regardless of whether or not any
particular person actually found and viewed it. In Perfect
10, we had no trouble concluding that Google’s list of
thumbnails gave rise to a prima facie case of infringement of
Perfect 10’s exclusive display right without requiring proof
that users had in fact accessed the photos. 508 F.3d at 1160.
As in Perfect 10, Bell does not need to prove there was some
minimum number of users who in fact accessed the
Indianapolis photo to make out a prima facie case of
infringement. See id. at 1159. The Copyright Act does not
require proof that the protected work was actually viewed by
anyone. Rather, the Act defines “publicly” to merely require
that the display be at “a place open to the public,” 17 U.S.C.
§ 101 (emphasis added), thereby readily encompassing any
publicly accessible server like Wilmott’s. Indeed, a public
transmission of a work includes transmissions to the public
even when “there is no proof that . . . any people were in fact
operating their respective receiving apparatus at the time of
transmission of a given work.” 2 M. Nimmer & D. Nimmer,
Copyright, § 8.14[C][2] (2019) (hereinafter Nimmer on
Copyright). In the analogous context of public performance,
it is “not necessary” that the public “in fact attend or receive
the performance.” Id.; see also H.R. Rep. 94-1476, at 64–65
(1976) (same).
18 BELL V. WILMOT STORAGE SERVICES
B.
Having concluded that Wilmott publicly displayed the
Indianapolis photo, we would ordinarily ask whether the
infringing work was substantially similar to the copyrighted
work. Copying is only actionable if the “defendant’s work
is substantially similar to [the copyrighted work] (and is the
product of copying rather than independent effort).”
2 Nimmer on Copyright § 8.01[G]. In other words, “even
where the fact of copying is conceded, no legal
consequences will follow from that fact unless the copying
is substantial.” 4 Nimmer on Copyright § 13.03[A]. Here,
the “degree of copying” was total—the infringing work was
an identical copy of the copyrighted Indianapolis photo.
There is thus no place for an inquiry as to whether there was
de minimis copying. As Professor Nimmer explains, “[i]f
such duplication is literal or verbatim, then clearly
substantial similarity exists.” Id. § 13.03[A][1]. On the
other hand, if the degree of copying is merely de minimis,
then it is non-actionable.
Our circuit and the majority of our sister circuits do not
view the de minimis doctrine as a defense to infringement,
but rather as an answer to the question of whether the
infringing work and the copyrighted work are substantially
similar so as to make the copying actionable. We first
articulated this principle in Fisher v. Dees, 794 F.2d 432 (9th
Cir. 1986). In that case, Marvin Fisher and Jack Segal, the
composers and copyright owners of the song “When Sunny
Gets Blue,” sued Rick Dees, a DJ, and others, for copyright
infringement stemming from Dees’s release of a parody song
entitled “When Sonny Sniffs Glue.” Id. at 434. Specifically,
Dees’s parody “copie[d] the first six of the [original’s]
thirty-eight bars of music—its recognizable main theme,”
and it also changed the opening lyrics from “When Sunny
BELL V. WILMOT STORAGE SERVICES 19
gets blue, her eyes get gray and cloudy, then the rain begins
to fall” to “When Sonny sniffs glue, her eyes get red and
bulgy, then her hair begins to fall.” Id. Although the case
was resolved on the grounds of fair use, Dees argued on
appeal that his “taking from the [original] song was de
minimis and thus not violative of the composers’ copyright.”
Id. at 434 n.2.
We rejected Dees’s argument “out of hand” because the
parody was “an obvious take-off.” Id. at 434 & n.2. We
noted that “the appropriation would be recognized instantly
by anyone familiar with the original,” and thus the parody
was substantially similar to the original work. Id. at 434 n.2.
We also noted that “[a]s a rule, a taking is considered de
minimis only if it is so meager and fragmentary that the
average audience member would not recognize the
appropriation,” i.e., the works could not be said to be
substantially similar. Id. (emphasis added) (citing Elsmere
Music, Inc. v. Nat’l Broad. Co., 482 F. Supp. 741, 744
(S.D.N.Y. 1980), aff’d per curiam, 623 F.2d 252 (2d Cir.
1980)). We even went on to cast doubt on the notion that
copying “for parodic purposes” could ever constitute de
minimis copying as a “parody is successful only if the
audience makes the connection between the original and its
comic version,” a connection that requires the parody artist
to “appropriate a substantial enough portion of it to evoke
recognition.” Id.We next addressed de minimis copying in a pair of
cases—Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004)
and VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir.
2016)—both of which, like Fisher, involved alleged copying
of protected musical works. In both Newton and VMG
Salsoul, we addressed whether “sampling,” a method by
which musicians incorporate “a short segment of a musical
20 BELL V. WILMOT STORAGE SERVICES
recording into a new musical recording,” could constitute
copyright infringement. Newton, 388 F.3d at 1190; see also
VMG Salsoul, 824 F.3d at 875.
In Newton, the accomplished jazz flutist James Newton
sued the Beastie Boys for copyright infringement based on
the musical group’s unauthorized digital sampling of “a six-
second, three-note segment” from one of Newton’s protected
compositions. 388 F.3d at 1190. Although we stated that
the Beastie Boys’ “use” of a portion of Newton’s musical
work was de minimis and therefore non-actionable, we
intended “use” in this context to connote the amount of
copying. Id. at 1193. Citing Fisher, we underscored that “a
use is de minimis only if the average audience would not
recognize the appropriation,” an observation that “reflects
the relationship between the de minimis maxim and the
general test for substantial similarity, which also looks to the
response of the average audience, or ordinary observer, to
determine whether a use is infringing.” Id. (citing Fisher,
794 F.2d at 434 n.2). This meant that “even where the fact
of copying is conceded, no legal consequences will follow
from that fact unless the copying is substantial.” Id. (citing
Laureyssens v. Idea Grp., Inc., 964 F.2d 131, 140 (2d Cir.
1992)); see also 4 Nimmer on Copyright § 13.03[A].
Thus, we concluded that despite the “high degree of
similarity between the works” in Newton (the Beastie Boys
directly copied a three-note sequence from Newton’s song),
the “limited scope of the copying” placed Newton’s
copyright infringement claim into the realm of “fragmented
literal similarity.” Id. at 1195 (quoting 4 Nimmer on
Copyright § 13.03[A][2]). In such cases, the key question is
“whether the copying goes to trivial or substantial elements,”
i.e., whether the works are substantially similar. Id.; see also
id. (“Substantiality is measured by considering the
BELL V. WILMOT STORAGE SERVICES 21
qualitative and quantitative significance of the copied
portion in relation to the plaintiff’s work as a whole.”).
Applying this test to the Beastie Boys’ song, we concluded
that “no reasonable juror could find the sampled portion of
the composition to be a quantitatively or qualitatively
significant portion of the composition as a whole” and the
works were substantially dissimilar. Id. at 1195–96. Thus,
the Beastie Boys had engaged in only non-actionable, de
minimis copying. Id. at 1196.
We reaffirmed Newton in VMG Salsoul, which involved
a claim for copyright infringement based on the use of a
“0.23-second segment of horns” from the plaintiff’s
protected musical work by Madonna in her hit song,
“Vogue.” VMG Salsoul, 824 F.3d at 874. Noting the
extreme brevity of the copied portion at issue relative to the
six-second portion in Newton, we held that “a reasonable
jury could not conclude that an average audience would
recognize an appropriation of the [plaintiff’s] composition,”
therefore rendering the works substantially dissimilar. Id. at
879.
We reiterated that the de minimis concept applies to the
amount or substantiality of the copying—and not the extent
of the defendant’s use of the infringing work—in Design
Data. See 847 F.3d at 1172. There, the defendant
“intentionally downloaded a complete copy of [plaintiff’s
computer program].” Id. The district court granted
summary judgment to the defendant because there was no
evidence that the defendant installed or used the program,
concluding that the infringement was de minimis and non-
actionable. Design Data Corp. v. Unigate Enter., Inc., 63 F.
Supp. 3d 1062, 1069–70 (N.D. Cal. 2014) (relying on
Knickerbocker). We reversed, holding that “[i]n light of ‘the
overwhelming thrust of authority[, which] upholds liability
22 BELL V. WILMOT STORAGE SERVICES
even under circumstances in which the use of the
copyrighted work is of minimal consequence,’ it was error
to grant summary judgment on the basis that [the
defendant’s] download of [the program] constituted a de
minimis infringement.” Design Data, 847 F.3d at 1172–73
(second alteration in original) (quoting 2 Nimmer on
Copyright § 8.01[G]); see also BMG Music v. Perez,
952 F.2d 318, 320 (9th Cir. 1991) (rejecting argument that
any conduct short of “wholesale” importation equals de
minimis infringement). Though “among the several
potential meanings of the term de minimis, [the] defense
should be limited largely to its role in determining either
substantial similarity or fair use.” 2 Nimmer on Copyright
§ 8.01[G]; see also Design Data, 847 F.3d at 1172–73.
Wilmott misinterprets both Design Data and Newton to
suggest that we have approved a de minimis defense when
the use of the infringing work is minimal. Though we have
frequently characterized the de minimis principle in
copyright as one centered around the defendant’s “use” of
the protected work, see, e.g., Newton, 388 F.3d at 1192–93;
VMG Salsoul, 824 F.3d at 877; Design Data, 847 F.3d
at 1172, “use” in this context does not refer to how
extensively a defendant uses an indisputably infringing work,
as Wilmott and the district court below interpret the term.
Rather, by “use,” we have consistently referred to the quality
or quantity of the protected work that was “used” by the
defendant to make the allegedly infringing copy in
determining whether the two works were substantially
similar. While perhaps best articulated by Fisher as a
question of whether the defendant’s “taking” was “de
minimis,” as opposed to “use,” we have consistently
analyzed the de minimis principle in the context of
substantial similarity, even if we have referred to it by the
somewhat confusing term “use.” See Fisher, 794 F.2d at 434
BELL V. WILMOT STORAGE SERVICES 23
n.2. Indeed, in Design Data, upon which Wilmott heavily
relies, we were simply referencing the discussion of
substantial similarity raised in Newton, i.e., whether the
quantity and quality of the sampled portion of the song
“used” by the Beastie Boys made the works substantially
similar. See Newton, 388 F.3d at 1192–93. The same
analysis applies here.
In sum, we have consistently applied the de minimis
principle to determine whether a work is infringing by
analyzing the quantity and quality of the copying to
determine if the allegedly infringing work is a recognizable
copy of the original work, in other words, whether the works
are substantially similar. We have never recognized a de
minimis defense based on the allegedly minimal use of
concededly infringing material. The First, Third, Fourth,
and Eleventh Circuits have reached the same conclusion. In
Situation Management Systems, Inc. v. ASP. Consulting
LLC, 560 F.3d 53 (1st Cir. 2009), the plaintiff, a consulting
company, sued a competitor for copying portions of its
copyrighted training materials. Id. at 54–55. The district
court found that the defendant had copied the plaintiff’s
materials but concluded that the copying was not actionable
because the allegedly infringing works were not
substantially similar. Id. at 57. On appeal, the defendant
argued that the district court’s conclusion was best
understood as holding that “the amount of copying done was
so small as to be de minimis.” Id. at 58. The First Circuit
flatly rejected this argument, holding that “de minimis
copying is best viewed not as a separate defense to copyright
infringement but rather as a statement regarding the strength
of the plaintiff’s proof of substantial similarity.” Id. at 59;
see also id. (“Used in this fashion, de minimis copying
represents simply the converse of substantial similarity.”
(quoting 2 Nimmer on Copyright § 8.01[G])); Greene v.
24 BELL V. WILMOT STORAGE SERVICES
Ablon, 794 F.3d 133, 161 n.33 (1st Cir. 2015) (reaffirming
Situation Mgmt. Sys., 560 F.3d at 59).
In Dun & Bradstreet Software Services, Inc. v. Grace
Consulting, Inc., 307 F.3d 197 (3d Cir. 2002), the defendant
appealed the district court’s decision to strike a de minimis
defense from the jury charge based on the defendant’s
argument that its “quantitative infringement [of the
plaintiff’s copyrighted software] amounted to only twenty-
seven lines out of 525,000 lines,” where literal copying was
conceded. Id. at 208. Affirming the district court’s decision
to strike the de minimis defense, the Third Circuit held that
a “de minimis defense does not apply where the qualitative
value of the copying is material.” Id. And, in that case, the
copied material was so essential that the entire program
could not work without it. Id. The Third Circuit relied upon
the Supreme Court’s rejection of “a claim that copying 300
to 400 words of a copyrighted book was insubstantial” for
its qualitative analysis of substantial similarity. Id. (quoting
Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S.
539, 564–66 (1985)).
Similarly, in Palmer v. Braun, 287 F.3d 1325 (11th Cir.
2002), Palmer, the author of a book on psychological
reflection and mental exercises, sued Braun, who had bought
Palmer’s book and had taken the related courses offered by
Palmer, for copying portions of Palmer’s book and
reproducing them in his own, competing book. Id. at 1327–
28. Specifically, Braun had allegedly copied 15 sentences
out of the plaintiff’s 53-page book in a section on specific
mental exercises, an amount the district court concluded was
non-actionable de minimis infringement. Id. at 1334. On
appeal, the Eleventh Circuit rejected this holding. Pointing
out that “Braun does not inadvertently sprinkle his work with
Palmer’s sentences” but rather “uses the same sentences in
BELL V. WILMOT STORAGE SERVICES 25
the same exercise as Palmer and intends to achieve the same
results with them,” the court concluded that such use “is not
de minimis.” Id. Though the court ultimately affirmed the
district court’s preliminary injunction ruling on other
grounds, its core holding affirmed that the de minimis
principle arises solely when considering substantial
similarity to determine actionable copying. Id.; see also
Silicon Knights, Inc. v. Epic Games, Inc., 551 F. App’x 646,
648–649 (4th Cir. 2014) (rejecting a de minimis defense
where the infringing party had copied a copyrighted video
game engine “in toto,” i.e., all of its code, when it began
development of its own game and continued to use 20% of
the code from that engine).
Against the overwhelming authority of our precedents
and that of our sister circuits, Wilmott relies instead on a
strained reading of Knickerbocker Toy Co. v. Azrak-
Hamway Int'l, Inc., 668 F.2d 699 (2d Cir. 1982) to assert the
existence of a de minimis use defense to actionable
copying—a “technical violation of a right so trivial that the
law will not impose legal consequences.” Ringgold v. Black
Ent. Television, Inc., 126 F.3d 70, 74 (2d Cir. 1997). There,
Knickerbocker had brought two claims against Azrak, the
first for copyright infringement of its Wrist Racers toy that
would launch a wind-up model car and the second for
trademark infringement based on trade catalogues
advertising Azrak’s competing toy. Knickerbocker,
668 F.2d at 701. During discovery, Knickerbocker obtained
from Azrak a “blister” display card that allegedly used a
copyrighted photograph of its Wrist Racers product, which
then formed the basis of a second, last-minute copyright
infringement claim. Id. Azrak’s Vice President of
Merchandising and Operations “testified that the card was
simply a sample which Azrak had produced in order to
position the artwork, and that a totally different illustration
26 BELL V. WILMOT STORAGE SERVICES
would be used for the production run of the card.” Id. The
district court succinctly dismissed the blister pack copyright
claim, stating that “the short answer is that (the blister card)
was only an office copy which was never used.” Id.The Second Circuit affirmed this holding in one line,
stating “on the record herein, the copyright claim with
respect to the blister card falls squarely within the principle
of de minimis non curat lex, and the dismissal of that claim
is affirmed.” Id. at 703. The court did not explain this
holding further—it provided no analysis or reasoning for its
conclusion. It may simply have found no unlawful copying
occurred because the office copy was not made public.
Moreover, the Second Circuit has never held that the limited
circulation of an indisputably infringing work is sufficiently
de minimis to serve as a defense to an infringement action. 9
Knickerbocker itself can be easily read as falling into the
category of cases where the de minimis analysis is more
traditionally applied. Knickerbocker may be read to hold
only that Azrak’s “use” of Knickerbocker’s protected image
in its mockup amounted only to de minimis, i.e., non-
9
The Second Circuit did discuss such a de minimis “technical
violation” defense as a theoretical possibility in Ringgold, as have some
commentators. See 126 F.3d at 74. Describing the use of the de minimis
defense in this way as being based on “a technical violation of a right so
trivial that the law will not impose legal consequences” even for
indisputably infringing works, the Second Circuit observed that the
circumstances of such a defense are unusual and therefore not often the
subject of litigation. Id. (emphasis added). It offered by way of example
only Knickerbocker and Judge Pierre Leval’s example of a New Yorker
cartoon photocopied and placed on a refrigerator. See id. (citing Pierre
N. Leval, Nimmer Lecture: Fair Use Rescued, 44 UCLA L. Rev. 1449,
1457 (1997)). Ringgold provided no further explanation, as the facts in
Ringgold concerned the de minimis doctrine as we have recognized it,
i.e., whether the works were substantially similar so as to constitute
actionable copying. Id. at 74–75.
BELL V. WILMOT STORAGE SERVICES 27
actionable, copying after considering the relative
non-significance of the blister pack’s protected image,
compared to the principal claim that Azrak had copied
Knickerbocker’s toy, which the evidence plainly refuted.
668 F.2d at 702. This interpretation of Knickerbocker would
better align the Second Circuit with every other circuit that
has applied the de minimis principle in copyright.
Thus, the de minimis analysis is best thought of in terms
of the substantiality of the copying, to delineate the boundary
between actionable and non-actionable copying. Our long
line of precedent and that of the majority of our sister circuits
supports the application of the de minimis principle in
copyright only to questions of substantial similarity (and
potentially fair use), i.e., whether there was de minimis
copying of the protected work so as to be non-recognizable
as a copy. Wholesale copying or reproduction of another’s
protected work, like the Indianapolis photo, by definition
cannot be de minimis copying.
C.
We reject Wilmott’s “technical violation” theory of a de
minimis defense adopted by the district court. The district
court found that Wilmott’s infringement was “technical,”
that Wilmott was unaware that it was violating Bell’s
exclusive copyright in the Indianapolis photo, and that it did
not intentionally “use[]” the photo. But holding that a de
minimis defense was sustainable to defeat Bell’s claims is
not the answer to these troubling facts. Rather, the statutory
law of copyright itself supplies the answers to these
questions. “Copyright ‘is a creature of statute, and the only
rights that exist under copyright law are those granted by
statute.’” Corbello v. DeVito, 777 F.3d 1058, 1064 (9th Cir.
2015) (quoting Silvers v. Sony Pictures Ent., Inc., 402 F.3d
881, 883–84 (9th Cir. 2005) (en banc)); see, e.g., 17 U.S.C.
28 BELL V. WILMOT STORAGE SERVICES
§ 106(1), (3), (5). “[W]here an unauthorized material use of
a copyrighted work does fall within one of those [exclusive]
rights, infringement occurs, unless the use is excused by one
of the privileges, exemptions, or compulsory licenses found
in sections 107 through 122.” 10 William F. Patry, 3 Patry on
Copyright § 9:2 (2020 ed.).
The Act carefully details both the exclusive rights in
copyright and its exceptions, and it provides for situations
where, in other contexts, courts would otherwise apply or
rely upon traditional, equitable doctrines, as the district court
did here in recognizing a de minimis “technical violation”
defense. In doing so, the Act modifies or completely
precludes the application of these doctrines. For example, in
Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court
held that the equitable defense of laches was inappropriate
as an independent defense to a copyright infringement suit
brought within the Act’s statute of limitations. 572 U.S. 663,
677 (2014) (citing 17 U.S.C. § 507(b)). Because § 507(b)
“itself takes account of delay” by barring suits more than
three years from the date of infringement, the Court held that
it was error to apply laches to take account of delays separate
from those encompassed by the statute. Id. Congress
enacted a scheme that balanced the “long duration” of a
copyright term with a much narrower time limit within
which to bring suit, thus “leav[ing] ‘little place’ for a
doctrine that would further limit the timeliness of a copyright
owner’s suit.” Id. at 685 (quoting 1 D. Dobbs, Law of
Remedies § 2.6(1), at 152 (2d ed. 1993)).
10
Patry is clear that by his use of “material” in this context he is
referencing the concept of substantial similarity so as to constitute
actionable copying. See 3 Patry on Copyright §§ 9:59, 9:60.
BELL V. WILMOT STORAGE SERVICES 29
The Act further details the limitations on a copyright
owner’s exclusive rights and provides defenses to claims of
infringement for some types of copying or uses of protected
works that might be conceptualized as de minimis. See
17 U.S.C. §§ 107–122. While none of these limitations are
de minimis in name, Section 112, for example, exempts
“ephemeral recordings,” such as temporary recordings of
broadcasts to be rebroadcast in another time zone, § 112(a),
or temporary copies made by online streaming services to
buffer or cache songs, § 112(e). The Act even protects the
“fair use” of a protected work, notwithstanding the
potentially infringing nature of the use, by explicitly
weighing “the purpose and character of the use” and “the
effect of the use on the market” for the protected work,
among other factors. Id. § 107. To the extent the de minimis
principle also plays a role in the fair use defense by analyzing
the extent or manner of the use of a protected work, the de
minimis doctrine is itself explicitly codified by statute. See
id. 11
Yet nowhere in the Act’s numerous and detailed
provisions is there any exception for the de minimis use of a
concededly infringing work, i.e., for a “technical violation.”
The Act defines a copyright infringer as “[a]nyone who
violates any of the exclusive rights of the copyright owner.”
Id. § 501(a) (emphasis added). A prima facie case of
infringement thus requires only that a plaintiff demonstrate
ownership of the copyright at issue, a violation of an
11
Though Congress did not expressly codify the fair use doctrine
until the Copyright Act of 1976, that codification merely recognized the
longstanding “judicial doctrine of fair use” that had been recognized by
United States courts since 1841. See Tresóna Multimedia, LLC v.
Burbank High Sch. Vocal Music Ass’n, 953 F.3d 638, 647 (9th Cir.
2020).
30 BELL V. WILMOT STORAGE SERVICES
exclusive right set forth in copyright, and causation by the
defendant. Giganews, 847 F.3d at 666. Tellingly, a plaintiff
need not prove damages. See id. Instead, the Act provides
that a plaintiff may elect statutory damages in place of actual
damages, thus providing causes of action for infringement
even when the infringement has not actually worked any
financial harm to the copyright holder. 17 U.S.C. § 504(c).12
Similarly, the Act also provides that the right “to reproduce
the copyrighted work in copies or phonorecords” is an
exclusive right of the copyright’s owner, as much as any
other. Id. § 106(1). A “technical violation” defense, at least
as potentially articulated in Knickerbocker, is plainly in
tension with this right because it suggests that making a
single copy is somehow not enough to show a violation
absent some further material use or action. But, crucially,
the Act is agnostic as to the use of the copy once it is made;
the unlicensed copying itself is the violation. Thus, the Act
“itself takes account of [remedies]” for copyright holders
even where the infringing use is minor. Petrella, 572 U.S.
at 677. And the Act itself answers the district court’s
concerns here about mere, “technical” violations of an
exclusive right, “leav[ing] ‘little place’” for a defense based
on the de minimis use of a concededly infringing work
resorted to by the district court. See id. at 685. This
conclusion is further strengthened by the recent enactment
of the Copyright Alternative in Small-Claims Enforcement
(“CASE”) Act, which establishes a Copyright Claims Board
within the Copyright Office to create a cost-effective
administrative venue for litigating “small claims” of
12
Bell has yet to elect either statutory or actual damages. See
17 U.S.C. § 504(c). However, given the difficulty Bell will have in
demonstrating actual damages (there is no evidence that anyone other
than Bell viewed the allegedly infringing copy of the Indianapolis
photo), we suspect he will elect statutory damages.
BELL V. WILMOT STORAGE SERVICES 31
copyright infringement as an alternative to federal courts.
See 17 U.S.C. §§ 1501–11.
However, our holding does not mean that an infringer’s
innocent intent and technical use of the infringing work are
irrelevant. The Act also accounts for the culpability of the
infringer, distinguishing willful from innocent infringement
by limiting the statutory damages that can be imposed
against the latter. See Id. § 504(c)(2); Unicolors, Inc. v.
Urban Outfitters, Inc., 853 F.3d 980, 991 (9th Cir. 2017). 13
Thus, any concern that the de minimis doctrine is needed to
protect “accidental” or unwitting infringement, a concern
that appears to be shared by the district court, is also
addressed by the Act, which provides that where an
“infringer was not aware and had no reason to believe that
his or her acts constituted an infringement of copyright,” the
court may reduce statutory damages to as little as $200.
17 U.S.C. § 504(c)(2).
Our holding today is thus consistent with the statutory
scheme.
D.
Alternatively, Wilmott characterizes the de minimis use
defense as one centered around the lack of any volitional act
of infringement and argues that it cannot be liable for
infringement because it did not intentionally cause any
public display of the Indianapolis photo. Indeed, Wilmott
did not even know of the photo’s existence until Bell
13
The statute expressly describes when attorneys’ fees and costs
may be awarded, and Section 505 of the Act leaves the award to the
discretion of the district court. Our judicially created doctrine for these
awards takes into account an infringer’s culpability and motive. See
Tresóna, 953 F.3d at 653.
32 BELL V. WILMOT STORAGE SERVICES
contacted the company, and therefore there “was no
volitional public display.” While Wilmott is correct that
non-volitional conduct is not infringing, Wilmott
mischaracterizes what we commonly call the “volitional-
conduct requirement.” VHT, Inc. v. Zillow Grp., Inc.,
918 F.3d 723, 731 (9th Cir. 2019) (citation omitted). We
reject this “unintentional violation” theory of de minimis
use. Here, Wilmott’s conduct was volitional for purposes of
copyright infringement.
“[T]he word ‘volition’ in [the copyright] context does
not really mean an ‘act of willing or choosing’ or ‘an act of
deciding,’” but merely “the unremarkable proposition that
proximate causation historically underlies copyright
infringement liability no less than other torts.” Giganews,
847 F.3d at 666 (quoting 4 Nimmer on Copyright
§ 13.08[C][1]). Indeed, copyright infringement is a strict
liability tort. See 3 Patry on Copyright § 9:5; 4 Nimmer on
Copyright § 13.08[B][1] (explaining that “the innocent
intent of the defendant constitutes no defense to liability”).
Courts determine “who is close enough to the [infringing]
event to be considered the most important cause.”
Giganews, 847 F.3d at 666 (alteration in original) (citation
omitted). We have held that a website or service that
provides only a platform for third-party users to upload,
download, and share content, i.e., merely using the platform
as a vehicle, has not engaged in volitional conduct in this
sense, because it is the users who cause infringement. See
id. at 669 (holding that “passively storing material at the
direction of users in order to make that material available to
other users upon request” is not infringement (citation
omitted)); see also Am. Broad. Cos. v. Aereo, Inc., 573 U.S.
431, 438–39 (2014) (distinguishing liability for those who
transmit protected works and those who “merely suppl[y]
equipment that allows others to do so”). By contrast, one
BELL V. WILMOT STORAGE SERVICES 33
who “exercised control” or “selected any material for
upload, download, transmission, or storage” has acted
volitionally. VHT, 918 F.3d at 732 (quoting Giganews,
847 F.3d at 670).
Wilmott’s conduct was plainly “volitional” in the
proximate cause sense. Wilmott hosted the Indianapolis
photo on its servers in a manner that was accessible to the
public. Although Wilmott plausibly claims it did not know
of the Indianapolis photo’s presence on the server until
Bell’s first notice to the company, its negligence is
nonetheless sufficient. Here, VisitUSA.com did not merely
function as an online platform where third-party users
independently upload and share materials, see Giganews,
847 F.3d at 666, but rather a website managed (and updated)
by Wilmott itself, which included the data then stored on the
website’s servers, including the Indianapolis photo, cf. VHT,
918 F.3d at 734. As a result, Wilmott’s actions assuming
responsibility for and maintaining the server are clearly “the
most important cause[s]” of the public display of the
Indianapolis photo. Giganews, 847 F.3d at 666 (citation
omitted). Wilmott’s conduct is therefore plainly volitional
for purposes of copyright infringement. Whether Wilmott
intended to infringe Bell’s copyright is ultimately
immaterial—“the innocent intent of the defendant
constitutes no defense to liability.” 4 Nimmer on Copyright
§ 13.08[B][1]; see also 3 Patry on Copyright § 9:5.
III.
We therefore reverse the district court’s grant of
summary judgment based on a putative de minimis use
defense. On remand, the district court must consider
Wilmott’s remaining defenses, and it can address the
questions surrounding Bell’s ownership of the Indianapolis
photo, in addition to the other defenses raised by Wilmott.
34 BELL V. WILMOT STORAGE SERVICES
Because we vacate the district court’s order based on its
erroneous application of the de minimis doctrine, we also
vacate and remand the district court’s denial of Wilmott’s
motion for attorney’s fees that was premised on prevailing
at summary judgment. Wilmott can renew its motion should
it prevail before the district court. Each party shall bear its
costs of appeal.
REVERSED AND REMANDED.
CLIFTON, Circuit Judge, with whom WARDLAW, Circuit
Judge, joins, concurring:
I join fully in the opinion by Judge Wardlaw. Although I
conclude that the basis upon which the district court granted
summary judgment was not appropriate, I understand
entirely why the district court sought to dispose of Plaintiff’s
claims. I write separately to discourage further pursuit of
those claims.
Plaintiff is reported to have filed over 100 copyright
infringement lawsuits concerning the Indianapolis photo.
Bell v. Davis, 430 F. Supp. 3d 718, 720–21 (D. Or. 2019).
That number exceeds 200 when combined with similar suits
Plaintiff has brought for another photograph of the
Indianapolis skyline. Id. at 721 n.1. With each successive
suit, Plaintiff, a retired attorney, is solidifying his
identification as a “copyright troll”—one “more focused on
the business of litigation than on selling a product or service
or licensing their [copyrights] to third parties to sell a
product or service.” Glacier Films (USA), Inc. v. Turchin,
896 F.3d 1033, 1042 (9th Cir. 2018) (alteration in original).
BELL V. WILMOT STORAGE SERVICES 35
The present case, and the others like it, may be
particularly egregious because they are based on a copyright
that may not belong to Plaintiff. See Bell v. Carmen Com.
Real Est. Servs., No. 1:16-cv-01174-JRS-MPB, 2020 WL
5016891, at *1 (S.D. Ind. Aug. 25, 2020) (noting that “[t]he
jury found that Bell did not prove that he ‘authored the
Indianapolis Skyline Photo, that he owns a copyright in it,
and that he registered it with the Copyright Office’”). Even
if the copyright does belong to Plaintiff, it seems doubtful
that there was sufficient notice of the copyright, because, by
his own admission, Plaintiff only registered it in 2011,
eleven years after the Indianapolis photo was taken and
posted online.
The record does not establish that Defendant knew of
this registration, or that it intended to infringe on Plaintiff’s
purported copyright by displaying the photograph. There is
also no evidence in the record that suggests the Indianapolis
photo was in fact accessed by anyone other than Plaintiff.
Given this set of facts, I understand the district court’s
inclination to resolve the case promptly and in Defendant’s
favor. Although Plaintiff may prevail today, the long-range
potential of his claim does not appear bright. He may
ultimately prove to be entitled to a judgment in his favor, but
nothing in the facts as described to us supports anything
more than an award of statutory damages in a limited
amount, not in any sum that should encourage further pursuit
of this claim.
CHOE-GROVES, Judge, concurring in part:
I agree with the majority that the de minimis concept is
not a defense for Wilmott’s wholesale copying and with the
36 BELL V. WILMOT STORAGE SERVICES
majority’s result vacating the grant of summary judgment
and remanding, but I would remand for the district court to
first consider the threshold question of whether Bell owns
the copyright in the Indianapolis photo, with consideration
of the jury verdict in a related case, and to address Wilmott’s
alleged violation and defenses only if the district court finds
valid copyright ownership.
For purposes of summary judgment, Wilmott and the
district court assumed that Bell owned a valid copyright in
the Indianapolis photo. Now that we are vacating the grant
of summary judgment, on remand Bell must first establish
ownership of a valid copyright in the Indianapolis photo.
See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
361 (1991) (citation omitted); Topolos v. Caldewey,
698 F.2d 991, 994 (9th Cir. 1983) (citations omitted) (“In an
action for infringement plaintiff necessarily must establish
ownership of a valid copyright and copying by the
defendant. Ownership of the copyright is therefore always a
threshold question.”). The district court will need to
determine the evidentiary weight to be accorded to Bell’s
certificate of registration because it was issued eleven years
after first publication and thus the presumption of copyright
validity does not apply. See 17 U.S.C. § 410(c) (“In any
judicial proceedings the certificate of a registration made
before or within five years after first publication of the work
shall constitute prima facie evidence of the validity of the
copyright and of the facts stated in the certificate. The
evidentiary weight to be accorded the certificate of a
registration made thereafter shall be within the discretion of
the court.”). Furthermore, the district court should
consider the jury verdict in Bell v. Carmen Commercial Real
Estate Services, No. 1:16-cv-01174-JRS-MPB (S.D. Ind.
Sept. 26, 2019), appeal dismissed, No. 20-2902 (7th Cir.
Apr. 23, 2021), a case involving the same Indianapolis photo
BELL V. WILMOT STORAGE SERVICES 37
that proceeded to jury trial. 1 The court instructed the jury
that:
Plaintiff “owns” a copyright in the
Indianapolis Skyline Photo if, and only if,
(1) he created the Photo; and
(2) he did not create the Photo within the
scope of his employment at Cohen &
Malad.
It is Plaintiff’s burden to prove ownership of
the Photo by a preponderance of the
evidence.
Bell v. Davis, 430 F. Supp. 3d 718, 722 (D. Or. 2019)
(citation omitted) (discussing Carmen). The jury verdict
form asked, “Do you find that by a preponderance of the
evidence that Richard N. Bell authored the Indianapolis
Skyline Photo, that he owns a copyright in it, and that he
registered it with the Copyright Office?” Id. (citation
omitted). The jury found that he did not. Id. (citation
omitted).
In addition to Carmen and the instant case, Bell has filed
over 100 other similar lawsuits alleging copyright
infringement of the same Indianapolis photo. Id. at 721.
Most have been resolved by default judgments awarding
Bell statutory damages of $2,000 to $3,000 in each case. Id.(citing Bell v. Barber, No. 3:18-cv-01491 DMS (BGS), 2019
1
An appeal limited to Bell’s second motion for a new trial is
pending. Bell v. Carmen Com. Real Est. Servs., No. 21-1851 (7th Cir.
docketed May 13, 2021).
38 BELL V. WILMOT STORAGE SERVICES
U.S. Dist. LEXIS 159756, at *4 (S.D. Cal. Sept. 16, 2019)
($3,000); Bell v. Mattox, No. 1:18-cv-01677-SEB-DLP,
2019 U.S. Dist. LEXIS 23272, at *3 (S.D. Ind. Feb. 12,
2019) ($3,000); Bell v. KG Am. Real Est. Holdings, LLC, No.
1:15-cv-01423-JMS-DML, 2016 U.S. Dist. LEXIS 127087,
at *5 (S.D. Ind. Sept. 16, 2016) ($2,000); Bell v. Am. Auto
Transp., No. 1:11-cv-00766-TWP-DKL, 2014 U.S. Dist.
LEXIS 82156, at *1 (S.D. Ind. June 17, 2014) ($2,500)). In
a few default judgments, however, Bell obtained the
statutory maximum of $150,000. Id. at 721–22 (citing Bell
v. Patrick, No. 1:16-cv-1160-TWP-DML, 2018 U.S. Dist.
LEXIS 59685, at *5 (S.D. Ind. Apr. 9, 2018) ($150,000);
Bell v. A1 Luxury Limousine of S. Fla., Inc., No. 1:16-cv-
02536-LJM-TAB, 2017 U.S. Dist. LEXIS 132231, at *4–5
(S.D. Ind. Aug. 18, 2017) ($150,000)). I share Judge
Clifton’s concern that these awards, most of which were
granted pursuant to default judgments, were obtained despite
the questions surrounding Bell’s ownership. This concern is
all the more reason to adhere to the statutory requirement
that Bell must establish ownership on remand before he may
avail himself of the protection afforded to copyright owners.
Because Bell has not yet established that he is the owner
of a valid copyright, I would not discuss the issue of whether
Wilmott’s actions constitute public display. Having
concluded that the de minimis concept does not prevent
Wilmott’s copying from being actionable, I would reverse
and remand for the district court to first determine copyright
ownership including considering the jury verdict in Carmen,
and, if the district court finds that Bell’s ownership of the
copyright is valid, to then consider whether Wilmott’s total
copying violated the exclusive right to publicly display and,
if applicable, Wilmott’s remaining defenses.
For the foregoing reasons, I concur in part.