69 F.4th 983
9th Cir.2023Background
- VHT is a large commercial real-estate photography studio that licenses individual property photos and stores them in a master electronic database; Zillow displayed VHT photos on its Listing Platform and on a design site called Digs.
- VHT sued Zillow for copyright infringement; the Ninth Circuit in VHT I held Digs’ searchable display was not fair use, vacated a jury finding of willfulness as to 2,700 images, and remanded to decide statutory damages and whether the images constituted a single “compilation” or individual works.
- After remand, Zillow argued VHT’s suit should be dismissed under 17 U.S.C. § 411(a) because many registrations issued after suit was filed (Fourth Estate); the district court excused exhaustion and proceeded.
- The district court held the 2,700 contested images were individual works (not a single compilation), conducted a bench trial on damages/innocence, found 388 infringements innocent, and awarded statutory damages ($800 for 2,312 images; $200 for 388).
- Zillow and VHT cross-appealed; the Ninth Circuit affirmed the district court in full: excusal of §411(a) exhaustion, the “individual works” ruling (entitling VHT to per-photo statutory damages), and the damages/innocence determinations and award.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether VHT’s failure to have issued registrations before filing (post-Fourth Estate) required dismissal under §411(a) | Excusal appropriate: registration is non-jurisdictional; ownership exists from creation; dismissal now would be irreparable and wasteful | Dismissal required under Fourth Estate because registration was not "made" until Copyright Office acted | Excusal affirmed: §411(a) treated as non-jurisdictional exhaustion; court applied three-factor test (wholly collateral, irreparable harm, futility) and excused compliance |
| Whether the 2,700 images are a single "compilation" (one statutory award) or individual works (per-image awards) | Photos are separately licensed, have independent economic value, and were infringed individually | Photos resided in VHT’s registered database (a compilation), so only one statutory award should apply | Images are individual works, not a compilation for §504(c); VHT entitled to statutory damages per infringed photo |
| Whether district court exceeded mandate by holding a new bench trial on damages/innocence after willfulness vacatur | Cross-appeal: district court exceeded mandate and award should reflect prior jury findings | New trial was necessary because willfulness vacatur left uncertain the status of many images and appropriate damages | New bench trial proper; court correctly reconsidered innocence and awarded damages accordingly |
| Whether VHT’s database registrations were invalid under §411(b) because they described a compilation | Registrations valid as applied to individual photos; compilation holding resolves the concern | Registrations inaccurate because database registration implies compilation | Court rejected Zillow’s §411(b) challenge as inapplicable given the finding that infringed works were individual photos |
Key Cases Cited
- Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019) (registration is "made" only when the Copyright Office issues a registration after examination)
- Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (Section 411(a) is non-jurisdictional; registration functions like administrative exhaustion)
- VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723 (9th Cir. 2019) (earlier Ninth Circuit opinion: Digs searchable use not fair use; vacated willfulness for 2,700 images and remanded on compilation/damages)
- Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673 (9th Cir. 2014) (discusses registration of databases and dual copyrights for database and constituent works)
- Eldred v. Ashcroft, 537 U.S. 186 (2003) (copyright protection exists from creation, separate from registration)
- Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 142 S. Ct. 941 (2022) (knowledge-based registration inaccuracies can be excused)