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Photo Clearance Procedure May Support Willful Copyright Infringement: Ninth Circuit
Practical Law Legal Update w-003-1772 (Approx. 4 pages)
Photo Clearance Procedure May Support Willful Copyright Infringement: Ninth Circuit
by Practical Law Intellectual Property & Technology
| Law stated as of 22 Aug 2016 • USA (National/Federal) |
In Friedman v. Live Nation Merchandise, Inc., the US Court of Appeals for the Ninth Circuit reversed a district court's summary judgment, ruling there was a triable issue of material fact concerning whether Live Nation Merchandise, Inc.'s inadequate copyright clearance practices supported a finding of willful infringement. The court also held that Live Nation's mere knowledge of removal of copyright management information could support a claim for violation of the Digital Millennium Copyright Act (DMCA), and infringement by non-parties cannot be the basis for multiple statutory damage awards.
On August 18, 2016, in Friedman v. Live Nation Merchandise, Inc., on appeal from the US District Court for the Central District of California, the US Court of Appeals for the Ninth Circuit:
- Reversed the district court's grant of summary judgment to Friedman because there was a triable issue of material fact concerning whether:
- Live Nation's practices indicated recklessness or willful blindness to support a finding of willful infringement; and
- Live Nation distributed Friedman's photographs with knowledge that copyright management information (CMI) had been removed, a fact that would support Friedman's CMI removal claim under the Digital Millennium Copyright Act (DMCA) even if Live Nation did not remove the CMI (17 U.S.C. § 1202).
- Affirmed the district court's holding that Friedman is not entitled to multiple statutory damage awards for the infringing sale of Live Nation's merchandise by non-party retailers. However, the Court of Appeals rejected the district court's reasoning and affirmed the holding because multiple awards are limited to cases where a court finds that multiple defendants are jointly and severally liable.
This case arose from a series of photographs that photographer Friedman took of a rap group, Run-DMC, which he included in a book collecting his work and also licensed to Sony Music for use on a website. Both the book and the website included CMI indicating that Friedman owned the copyrights. Without Friedman's approval, Live Nation used Friedman's images in connection with a wall calendar and several t-shirt designs. Live Nation obtained permission to use the images only from Run-DMC, and claimed that it relies on artists to approve only images over which they own or control the copyright. None of Live Nation's merchandise included the CMI that appeared in the book and on the Sony website.
Friedman sued Live Nation for:
- Copyright infringement under Section 101 of the Copyright Act (17 U.S.C. § 101).
- Removal of CMI under Section 1202 of the Copyright Act (17 U.S.C. § 1202).
The US District Court for the Central District of California:
- Granted summary judgment to Friedman on the copyright infringement claim after Live Nation stipulated to liability.
- Granted summary judgment to Live Nation on:
- Friedman's claim that the copyright infringement was willful under 17 U.S.C. § 504(c)(2) because Friedman had not produced evidence of willful infringement; and
- the CMI claim because Friedman had not produced evidence that Live Nation removed CMI from his images.
- Ruled that Friedman was only entitled to one statutory damages award per infringed work, denying his claim for multiple awards for each of the "downstream" infringements by 104 retailers that sold the infringing t-shirts and calendars.
Friedman appealed the CMI, willful infringement, and statutory damages judgments. The Ninth Circuit reversed the CMI and willful infringement judgments, and affirmed the statutory damages judgment.
The Ninth Circuit disagreed with the district court that Friedman had not offered evidence of willful copyright infringement. The Ninth Circuit found that a jury could reasonably conclude that Live Nation's product approval procedures were reckless or willfully blind to Friedman's copyrights because:
- The approval forms that Live Nation submits to artists when proposing use of images say nothing about the artists confirming copyright ownership.
- In response to an unrelated request to use Run-DMC photos, a Live Nation employee sent an email stressing that the company should not use any of Friedman's photos.
The Ninth Circuit also disagreed with the district court's ruling that Friedman had not offered evidence of knowing or willful removal of CMI. Specifically, the Ninth Circuit found that:
- The striking similarity between Friedman's images in the book and on the Sony website and the images on Live Nation's merchandise was compelling evidence that the photographs had been copied from those sources with the CMI removed.
- A reasonable jury could conclude that Live Nation knew the CMI had been removed when it distributed Friedman's photographs, and that Live Nation's mere knowledge of the removal is grounds for a claim even if Live Nation did not itself remove the CMI.
- It would be unfair to place the burden of proof on Friedman at the summary judgment stage when information on how Live Nation obtained Friedman's photographs, and whether it knew the CMI had been removed, was within Live Nation's knowledge.
Finally, the Ninth Circuit upheld the district court's determination that Friedman was only entitled to one statutory damages award per infringed work. The court rejected the district court's reasoning that granting statutory damages awards for all 104 retailers would lead to an absurd result. Instead, it concluded that the statutory damages provision (17 U.S.C. § 504(c)(1)) only covers parties that have been determined jointly and severally liable in the action, and none of the alleged downstream infringers were parties in the case.