`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`
` No. 19-55882
`
`D.C. No.
`2:18-cv-07328-
`CBM-MRW
`
` No. 19-56181
`
`D.C. No.
`2:18-cv-07328-
`CBM-MRW
`
`
`OPINION
`
`RICHARD N. BELL,
`Plaintiff-Appellant,
`
`
`
`v.
`
`
`WILMOTT STORAGE SERVICES, LLC,
`Defendant-Appellee.
`
`
`RICHARD N. BELL,
`
`Plaintiff-Appellee,
`
`
`WILMOTT STORAGE SERVICES, LLC,
`Defendant-Appellant,
`
`
`
`
`
`v.
`
`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.
`
`
`
`BELL V. WILMOT STORAGE SERVICES
`
`4
`
`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
`
`
`
`5
`
`BELL V. WILMOT STORAGE SERVICES
`
`
`
`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.
`
`
`
`BELL V. WILMOT STORAGE SERVICES
`
`8
`
`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 search4 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).
`
`
`
`9
`
`BELL V. WILMOT STORAGE SERVICES
`
`
`
`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.
`
`
`
`BELL V. WILMOT STORAGE SERVICES
`
`10
`
`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
`
`located
`was
`copy
`this
`Specifically,
`6
`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
`
`
`
`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
`
`11
`
`
`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.’”).
`
`
`
`BELL V. WILMOT STORAGE SERVICES
`
`12
`
`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).
`
`
`
`BELL V. WILMOT STORAGE SERVICES
`
`14
`
`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
`
`
`
`did Perfect 10 authorize Google to display its copyrighted
`images. Id. at 1159.
`
`15
`
`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
`
`
`
`BELL V. WILMOT STORAGE SERVICES
`
`16
`
`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
`
`
`
`19
`
`BELL V. WILMOT STORAGE SERVICES
`
`
`
`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
`
`
`
`BELL V. WILMOT STORAGE SERVICES
`
`20
`
`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