Tag Archives: statutory damages

DMLA JOINS IN AMICUS BRIEF VHT v ZILLOW

DMLA joins in amicus brief in VHT v Zillow, supporting VHT’s award of statutory damages based on number of infringed images under a database group registration of photographs

On Monday December 18, 2017, DMLA joined NPPA, ASMP and GAG in submitting an amicus brief before the Ninth Circuit Court of Appeals in support of VHT, a real estate photography company against Zillow, an online real estate platform on the narrow issue of the proper calculation of statutory damages based on multiple infringed images registered using a database registration consisting predominantly of photographs. The appeal by Zillow argues, among other issues, that the district court erred in awarding statutory damages to VHT based on each image infringed having independent economic value, despite being registered under a single database registration of photographs, which Zillow argues should only entitle VHT to one award of statutory damages regardless of the massive number of images infringed. The relevant question in the Zillow case hinges on what a court considers a “work” under Section 504(c)(1) of the Copyright Act, each separate image filed within the application, or the database as a whole, which would be one work.

The amicus brief supports the view that the independent value test applied by the lower court, and previously adopted by the Ninth Circuit is the correct one. The amicus brief describes the historical background of the various group registration procedures designed by the U.S. Copyright Office, to ease the administrative burden of registration of photographs which has unique challenges given the amount of images a photographer can create in a day.  In particular, the database registration of photographs was developed with input from DMLA and its members (formerly PACA) to protect images distributed through online platforms, which formerly were distributed via published print catalogs. The amici argue that the form of registration should have no impact on whether the independent works covered by the registration should be considered a single work, entitled to a single statutory damage or multiple works entitled to damages for each work infringed. The outcome of the Ninth Circuit’s ruling could have a major impact on the ability of image libraries and their contributing photographers to recover appropriate damages from infringers who use more than one of their photographs without permission, based on group registration, particularly those in the Ninth’s Circuit’s jurisdiction which includes California, Oregon, Washington state, Idaho, Montana, Nevada, Arizona, Alaska and Hawaii.

The brief, which you can find here, was filed by NPPA’s Deputy General Counsel, Alicia Calzada, with support from DMLA’s attorneys Nancy Wolff and Marissa Lewis of Cowan, DeBaets , Abrahams and Sheppard LLP. An amicus brief on another important issue in the case—secondary liability—was filed in support of VHT by the Copyright Alliance (link: http://copyrightalliance.org/wp-content/uploads/2017/12/Copyright-Alliance-VHT-v-Zillow-Amicus-Brief.pdf ), where DMLA is a member.

GRANT HEILMAN AND PANORAMIC IMAGES• AWARDED DAMAGES FOR COPYRIGHT INFRINGEMENT CLAIMS AGAINST TEXTBOOK PUBLISHERS

In two recent jury trials, both Grant Heilman Photography Inc. (Grant Heilman) and Panoramic Images were awarded copyright damages against textbook publishers resulting from the publication of images outside of the scope of the license terms.

Grant Heilman brought a copyright infringement action in Federal Court, Eastern District of Pennsylvania against the McGraw-Hill Companies. This trial was a bellwether trial, meaning that the trial was limited to a representative sample of the many images that were alleged to be used outside the scope of the license, to give the parties a feel of how a jury would decide the issues on the other images. The jury was asked to determine a number of issues and all were answered in Grant Heilman’s favor. One issued involved the validity of Grant Heilman’s copyright registrations in some of the images that were being contested by the publisher. The jury did not agree that the publisher had presented evidence that the copyright registrations were invalid, upholding Grant Heilman’s registration practices.

In this sample infringement case, the copyright registrations were not filed before the infringing use, consequently Grant Heilman was limited to seeking actual damages, including profits and could not elect statutory damages. Nonetheless Grant Heilman was awarded a total of $127, 087, which included profits and actual damages.

Importantly, the jury rejected the publisher’s theory that Grant Heilman should have known about “storm warnings” (general knowledge of excessive use of images by textbook publishers) or should have been on notice that the publisher was not complying with its license agreements prior to 2009. This is significant because if the publisher was successful in claiming that Graham Heilman should’ve known of “storm warnings”, then the statute of limitations may have reduced the number of years that damages could be awarded. Because the jury found in Grant Heilman’s favor, it was not precluded from bringing claims for infringements prior to April 18, 2009. Presumably, the parties will either have a trial or settle the remaining claims that were not tried in this bellwether trial.

Panoramic Images brought a similar action against John Wiley & Sons, Inc. in Federal District Court of the Northern District of Illinois. This trial involved damages for six images in excessive of license terms. As in the Grant Heilman case, there was an issue as to whether Panoramic should have known that the publisher was not complying with its license agreements before it filed its claim, which would have limited the amount of years Panoramic could recover damages. The jury did not find that Panoramic should have known that its licenses were not complied with and did not cut off damages before December 17, 2009. In this instance, 5 of the 6 pictures were registered before the infringement, permitting the jury to award statutory damages.

The jury found that Wiley’s infringement of the 5 photographs was willful and for 4 of the images the jury awarded damages of $62,500 each, for a total of $250,000.

For one cover image, the excess use was substantial, and the jury awarded the maximum statutory damages of $150,000. For another individual image that Panoramic Images had not registere3d before the use, the jury awarded actual damages of $500 and profits of $3000. In total the jury award for all six images was $403,500.

Both Grant Heilman and Panoramic Images were represented by the firm of Harmon & Seidman.