United States: The Complications Of Copyrighted Images In The Yellow Pages

Yellow Pages Photos, Inc. v. Ziplocal, LP

Reviewing a spectrum of copyright-related issues following the conclusion of a jury trial, the U.S. Court of the Appeals for the Eleventh Circuit affirmed the district court, concluding that  willful copyright infringement under 17 U.S.C. § 504(c)(2) encompasses reckless disregard of the possibility that one's actions are infringing a copyright and that the independent economic value test should be used to distinguish between individual photos and compilations for purposes of counting "works" subject to statutory damages. Yellow Pages Photos, Inc. v. Ziplocal, LP, Case Nos. 14-13355; -13401 (11th Cir., July 30, 2015) (Coogler, D.J., sitting by designation).

Plaintiff Yellow Pages Photos (YPP) and its principal Trent Moore sued former business partner Ziplocal for breach of contract and copyright infringement. YPP also sued Ziplocal's subcontractor, Yellow Pages Group (YPG) for copyright infringement. YPP was the owner of an expansive library of stock photographs that were grouped into "collections" or "headings" such as "Plumbers, "Roofers," "Attorneys, or "Landscape." The photograph collections were marketed and sold to publishers of Yellow Page phonebook products because the collections were organized along the same headings as the Yellow Pages. This organization allowed YPP's customers to efficiently select between many different photos for a given category.

YPP sold the photographs to Ziplocal pursuant to two agreements finalized in March 2004: a Site License Purchase Agreement (SLPA) and an End User License Agreement (EULA). In relevant part, the EULA prohibited transfer of the images sold to Ziplocal without YPP's consent. In 2010, however, Ziplocal outsourced the assembly and pagination of its phonebook products to YPG. As part of the subcontracting arrangement, Ziplocal sent YPG the YPP photos without consent from YPP. YPG, although not a party to the earlier agreements between YPP and Ziplocal, promised in its outsourcing agreement not to infringe any third-party intellectual property rights.

Against Ziplocal, the jury awarded one dollar in actual damages and zero dollars in statutory damages. Against YPG, the jury awarded zero dollars in actual damages and $123,000 in statutory damages. Because the jury found that Ziplocal contributed to YPG's infringement, it awarded YPP $100,000 against Ziplocal for contributory infringement. YPG appealed, challenging an array of legal and evidentiary rulings. YPP cross-appealed and sought a new trial on damages.

The 11th Circuit carefully analyzed YPG's arguments that it was entitled to judgment as a matter of law (JMOL) that it was permitted to use YPP's photo collections under the SLPA. However, because the panel agreed that there was sufficient evidence for the jury to conclude that the SLPA and the EULA should be understood together, YPG's arguments were rejected. Properly construed, the EULA did not permit distribution of the images from Ziplocal to YPG without authorization of the copyright owner.

Having established liability, the 11th Circuit then considered whether the infringement was willful under § 504, thereby entitling YPP to enhanced statutory damages. The 11th Circuit characterized willful copyright infringement as a defendant as proceeding to infringe having knowledge that its actions constituted an infringement. Yet, based on the facts of this case, including the absence of any due diligence to determine who owned the photos, the 11th Circuit expanded the meaning of willfulness to include a defendant who "recklessly disregarded the possibility that it was infringing a copyright." In so holding, the 11th Circuit's position on reckless disregard of the copyright holder's rights (rather than actual knowledge of infringement) now aligns with the Second, Fifth, Seventh and Eighth Circuits.

The 11th Circuit also considered whether the 178 collections of photos organized by heading name were—for purposes of calculating statutory damages—10,411 individual photo "works" or 178 compilation "works." Finding the issue to be a mixed question of law and fact, the review proceeded de novo. The court concluded that § 101 of the Copyright Act (defining "compilation"), coupled with the factual record, warranted the conclusion that the infringement pertained to 178 compilations rather than 10,000+ individual photos. Not only did Mr. Moore (YPP's principal) create, market and distribute his photos as collections organized by subject matter heading, but he also registered his photos with the Copyright Office as collections rather than individual photos. The court further considered YPP's competing arguments under the independent economic value test and, in particular, whether individual photos had real-world value outside of the collection. Notwithstanding YPP's contentions, the court determined that precedent compelled the conclusion that the district court was correct to treat each collection of photos as a compilation subject to only one award of statutory damages.

Practice Note: The 11th Circuit recognized that the jury's award of zero dollars for statutory damages against Ziplocal was inconsistent with the monetary range proscribed in the Copyright Act. However, although it was legally erroneous for the jury to award zero dollars for statutory damages after finding infringement, the award was not disturbed on appeal because counsel agreed during trial—in response to a question submitted by the jury during deliberations—that the jury could award zero dollars in statutory damages to one defendant. By so endorsing that path, YPP had invited the legal error and thereby waived the opportunity to challenge the result on appeal.

The Complications Of Copyrighted Images In The Yellow Pages

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions