Richard Bell v. Wilmott Storage Services, LLC
12 F.4th 1065
9th Cir.2021Background
- Richard Bell photographed the Indianapolis skyline (circa 2000), published it online, and registered the copyright in 2011.
- In 2018 Bell found an identical copy of the photo on VisitUSA.com via a reverse-image search; the image was hosted on Wilmott Storage Services’ server at a pinpoint URL accessible to anyone with the address or via reverse-image indexing.
- Bell notified Wilmott; Wilmott removed one copy but a renamed copy persisted temporarily on its server; Bell never licensed the photo to Wilmott.
- At summary judgment the district court assumed Bell’s copyright and granted judgment for Wilmott on a de minimis ("technical violation") defense, so it did not reach fair use or statute-of-limitations defenses.
- The Ninth Circuit reversed: it held (1) hosting the image on a publicly accessible server satisfied the statutory “public display” right under the Perfect 10 server test, and (2) de minimis is a substantial-similarity inquiry, not a defense to conceded wholesale copying; the case was remanded for ownership, remaining defenses, and damages.
- Concurring opinions urged the district court to first resolve Bell’s copyright ownership (given a related jury verdict rejecting ownership) and criticized Bell’s pattern of litigation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether hosting an image on a server that is accessible only by a pinpoint URL or by reverse-image search constitutes a "public display" under 17 U.S.C. § 101/106(5) | Bell: server-hosting that transmits the image to any member of the public (via URL or reverse-image indexing) is a public display | Wilmott: image was not publicly displayed because it was not discoverable by ordinary site navigation or indexed by Google text searches | Held: Yes — applying the Perfect 10 server test, serving the image to anyone who accessed the URL or reverse-image index is a public display regardless of how discoverable it was |
| Role and scope of the de minimis doctrine in copyright infringement | Bell: de minimis is a test for substantial similarity (non-actionable copying), not a defense where copying is conceded | Wilmott: de minimis can be a defense to trivial/technical violations — i.e., minimal use of a conceded infringing copy | Held: De minimis applies to the substantiality of the copying (whether works are substantially similar); it is not a stand-alone defense to conceded wholesale/literal copying |
| Whether non‑knowledge or lack of intentionality (no volitional act) bars infringement liability | Bell: volition requirement does not excuse a party that controlled/hosted the server; negligence/maintenance suffices | Wilmott: it lacked knowledge and did not volitionally cause any public display; thus not liable | Held: Wilmott’s hosting/maintenance made it the proximate cause; volitional-conduct requirement is satisfied and innocent intent is not a defense to liability (though it may limit statutory damages) |
| Remedy posture on remand and fees | Bell: summary judgment was erroneous; ownership and other defenses remain to be decided | Wilmott: prevailed below and seeks attorneys’ fees; de minimis justified summary judgment | Held: Reversed and remanded to consider ownership, remaining defenses, and damages; district court’s denial of fees vacated so Wilmott may renew fees if it prevails on remand |
Key Cases Cited
- Perfect 10, Inc. v. Amazon, Inc., 508 F.3d 1146 (9th Cir. 2007) (adopts "server test" for online public display)
- Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017) (reaffirms server test and public-display analysis)
- Fisher v. Dees, 794 F.2d 432 (9th Cir. 1986) (frames de minimis as recognition/substantial-similarity inquiry)
- Newton v. Diamond, 388 F.3d 1189 (9th Cir. 2004) (applies de minimis/substantial-similarity to musical sampling)
- VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016) (applies de minimis to extremely brief musical sampling)
- Design Data Corp. v. Unigate Enterprises, Inc., 847 F.3d 1172 (9th Cir.) (discusses limits of de minimis and substantial-similarity role)
- Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014) (statutory scheme can displace equitable doctrines such as laches)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (plaintiff must establish valid copyright ownership)
- Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (qualitative importance of copied material in substantiality analysis)
- Knickerbocker Toy Co. v. Azrak-Hamway Int’l, Inc., 668 F.2d 699 (2d Cir. 1982) (discussed by parties and district court re: "technical"/de minimis copying)
- Ringgold v. Black Ent. Television, Inc., 126 F.3d 70 (2d Cir. 1997) (discusses narrow instances of de minimis non curat lex concept)