In Defense of Copyright’s De Minimis Defense

Richard Bell's photograph was at the center of a Ninth Circuit case rejecting copyright's de minimis defense

The Ninth Circuit took a overly minimalist view of copyright’s de minimis defense, finding that a photo stored on an inaccessible web server doesn’t qualify.

De Minimis non curat lex: The law does not concern itself with trifles. Except of course, when it does. Website owner Wilmott Storage Services learned that first hand last week when the Ninth Circuit held that an image stored on a largely inaccessible web folder wasn’t protected by the “de minimis defense” to copyright infringement.

I think the court missed a real opportunity here to return the doctrine to its classic equitable roots, and instead has made it more difficult to dispose of cases involving technical but trivial violations of copyright law. More on this later, but first, a brief overview of the facts of Bell v. Wilmott Storage Services, LLC.

The Facts

Even the staunchest copyright maximalist would be hard-pressed not to feel for Wilmott based on the facts of the case: The company bought the website VisitUSA.com in 2012 from a third party. Unbeknownst to Wilmott at the time, the site’s image database contained a photograph of the Indianapolis skyline taken by Richard Bell. Bell is a retired attorney. Instead of taking up woodworking or rock climbing like some retirees I know, Bell has apparently decided to spend his golden years filing copyright infringement lawsuits. He’s brought over 200 in all, including over a hundred based on this single photo:

Richard Bell's photograph was at the center of a Ninth Circuit case rejecting copyright's de minimis defense
Richard Bell’s photograph of the Indianapolis skyline, from the Ninth Circuit’s opinion.

Bell’s image didn’t appear on any of the defendant’s public-facing web pages, which means that a typical internet user wouldn’t have been able to access the photo by going to
VisitUSA.com and navigating the site. But in 2018, Bell ran a Google reverse image search in an effort to locate unauthorized copies of his photo. He found that a copy was located in a VisitUSA database folder. For some strange reason, the photo was in a folder containing images of Mobile, Alabama, not Indianapolis, which only underscores how hidden the image really was. As a retired attorney who has filed over 200 lawsuits is wont to do, Bell sued Willmott for copyright infringement.

The Ruling

Last year, I wrote about fashion designer Elie Tahari’s unsuccessful attempt to use the de minimis defense to shield it from liability after the company posted an unauthorized copy of a photo on social media. In that case, the defendant placed the infringing photo on its publicly-accessible Instagram account. Here, Wilmott’s de minimis defense focused on the fact that the Bell photograph was not located on any of its visible web pages, but only dormant on its server. Central District of California Judge Consuelo Marshall held that Wilmott’s use of the Indianapolis photo was so insubstantial as to constitute a mere “technical” or de minimis violation of copyright that wasn’t actionable.

The Ninth Circuit reversed, declaring that the district court took an improperly expansive view of the de minimis doctrine. According to the opinion, the defense only applies to how much of a plaintiff’s copyright work was used, not the manner in which it is used by the defendant. Here, the entirety of Bell’s image had been publicly displayed by Wilmott, as its server was continuously transmitting the image to those who knew the specific pinpoint URL address hosting the image.

Writing for the panel, Judge Kim Wardlaw said that 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, “the de minimis use of the infringing work is not a defense to an infringement action.” The court concluded that “Wholesale copying or reproduction of another’s protected work, like the Indianapolis photo, by definition cannot be de minimis copying.”

The Problem with Using the De Minimis Doctrine as a Proxy for Lack of Substantial Similarity

The Ninth Circuit relied on what it termed a “long line of precedent” by the majority of circuit courts applying the de minimis principle, not 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.”

But this characterization not only fails to account for the ultimate result of many leading de minimis opinions, it also leaves the doctrine with little, if any, work to do. After all, if two works aren’t substantially similar in the first place, there’s no infringement, period, and no reason to even invoke the de minimis defense.

The confusion over the de minimis doctrine isn’t limited to the Ninth Circuit. Other courts have also purported to characterize the doctrine as a question of whether copying is so trivial that it falls below the quantitative threshold of substantial similarity. You may be familiar with some of these cases, because they often arise when copyrighted works are used as unauthorized set decorations on movies or TV shows.

For example, in a case involving the 1995 Brad Pitt crime thriller “Seven”, the Second Circuit found that that the use of copyrighted photos that appeared fleetingly and out of focus for 35 seconds of the film was de minimis. Another court reached the same result when a pinball machine appeared in the background of a scene from “What Women Want.” And last year, the court in Solid Oak Sketches v. 2K Games held that the use of NBA players’ tattoos in the popular “NBA 2K” video games was de minimis, pointing out that the tattoos appeared only fleetingly, and comprised only 0.000286% to 0.000431% of the total game data.

In these and other cases applying the de minimis doctrine, there was no question that the “entirety” of the plaintiff’s work had been copied. The courts instead made their determinations based on the degree to which the plaintiff’s work could or would be observed in the defendant’s work. Courts have examined factors such as focus, lighting and camera angles to judge observability, along with looking at how long a work is visible.

The problem with this approach is that the length of time or degree to which a copyrighted work is observable isn’t particularly relevant to the question of whether the entire work has been copied. To borrow the Ninth Circuit’s phrase, there’s clearly been “wholesale copying”—it just hasn’t harmed the copyright owner in any appreciable way.

De Minimis Needn’t Be So Complicated—Or Controversial

A more straightforward approach for these cases would be to see the de minimis doctrine for what it is in the classic sense of the term— an acknowledgment that the law doesn’t deal with trifling matters, even if they’re technically violations of copyright law. In one of his lectures, renowned Judge Pierre Leval recognized that the doctrine had a role to play in disposing of “questions that never to be answered,” giving the example of a photocopy of a New Yorker cartoon put up on someone’s refrigerator. It’s not about substantial similarity (which clearly exists). It’s more about not allowing the judicial system to be used to resolve trivial lawsuits.

The Ninth Circuit could have viewed Bell v. Wilmott Storage Services, LLC through this lens. Frankly, it might have even justified an affirmance by reference to cases focusing on practical observability. After all, thousands more people likely picked out the images of the Silver Slugger pinball machine appearing in “What Women Want” than ever saw Bell’s image which was buried on Wilmott’s server. Bell’s photo could only be seen by those few people (almost certainly limited to Richard Bell himself) who ran a reverse image search or knew the pinpoint URL address pointing to the hosted image. Is a technically a public display? Perhaps. Is allowing a lawsuit to proceed over it a massive waste of time? Most definitely.

The judges in Wilmott all appeared to recognize this, but seemed to believe their hands were tied based on a overly-restrictive view of the de minimis doctrine. Judge Richard Clifton (joined by Judge Wardlaw) wrote in concurrence that “With each successive suit, plaintiff, a retired attorney, is solidifying his identification as a ‘copyright troll’ . . . 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.”

Judge Jennifer Choe-Groves, sitting by designation, noted that on remand, the district court should first consider the question of whether Bell even owns the copyright in the image he’s suing over, noting that a jury in another case involving the photo found that he didn’t.

Meanwhile, Wilmott and Judge Marshall are now forced to continue to deal with this incredibly meaningless case, one that at the end of the day is never going to be anything more than a technical violation of a totally trivial right. Which, of course, is exactly what the de minimis doctrine is supposed protect against.

As always, let me know what you think. Hit me up in the comments below or on social media @copyrightlately. In the meantime, the full opinion in Bell v. Wilmott Storage Services, LLC is below.

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