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Is There a De Minimis Defense for Trivial Use of Concededly Infringing Material? Ninth Circuit Says No.

By Benjamin E. Marks and Michael
Goodyear

On September 9, 2021, the U.S. Court of Appeals for the Ninth Circuit reversed
the district court’s grant of summary judgment in favor of the defendant in Bell
v. Wilmott Storage Servs., LLC.
1 In its decision, the panel clarified that the de
minimis doctrine does not excuse technical violations of a copyright holder’s
exclusive rights, even if trivial. Rather, the court held that the de minimis inquiry
only concerns the amount and substantiality of the copying. The extent of a
defendant’s use of an allegedly infringing work and the defendant’s awareness
of the alleged infringement are irrelevant to the de minimis use inquiry. The
Ninth Circuit’s clarification of the de minimis inquiry provides important guidance
for navigating permissible uses of copyrighted works and defending claims.
Background
The plaintiff, a lawyer and photographer named Richard Bell, took a landscape
photograph of the Indianapolis skyline in 2000 and published the photo online
later that year.2 Numerous entities have copied the photo, and Bell has been
no stranger to copyright infringement lawsuits. He has filed over 100 lawsuits
concerning this photo alone.3
In 2018, by running a reverse image search on Google Images, Bell discovered
a copy of his photo on a server database associated with VisitUSA.com, a
web site maintained by the defendant, Wilmott Storage Services. The copy
was not visible to ordinary users navigating through the site; it could only be
seen by running a reverse image search or by inserting the specific pinpoint
address of the web page containing the image. And Wilmott was ignorant of
the photo’s existence on its server until Bell notified the company of his claim.
Indeed, the court noted that the photo had likely been present on the server
when Wilmott acquired the VisitUSA.com website from a third party in 2012.
Wilmott attempted to remove the photo in response to the notification, but
Bell sued Wilmott for unlawfully infringing his exclusive right to publicly display
the copyrighted work.4
At the close of discovery, Wilmott moved for summary judgment on its
affirmative defenses of de minimis use, fair use, and the statute of limitations.
Bell cross-moved for summary judgment on liability. Wilmott argued that its use
of the photo was at most a “technical” violation that could not sustain a finding
of liability, contending that, because it had not actively used the photo, its use
qualified as de minimis and therefore non-infringing.5 The district court
embraced this theory of de minimis use and granted summary judgment to
Wilmott without reaching the other defenses.

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