United States: Ninth Circuit Provides A Second Look At Willful Copyright Infringement

In a case stemming from a copyright dispute over photographs of the legendary hip hop group Run-DMC, the US Court of Appeals for the Ninth Circuit reversed a district court's grant of summary judgment in favor of a music merchandising company on claims that the merchandising company willfully infringed the photographer's copyrights and knowingly removed copyright management information (CMI) from the images it used. The Court also affirmed the district court's ruling on the limitation of plaintiff's statutory damages. Glen E. Friedman v. Live Nation Merchandise Inc., Case No. 14-55302 (9th Cir., Aug. 19, 2016) (Berzon, J).

Glen Friedman is a well-known music and subculture photographer who took a series of photographs of Run-DMC in the 1980s. After he discovered that several of his Run-DMC images were being used without his permission by Live Nation Merchandising in a 2008 wall calendar and for three different t-shirt designs, Friedman filed a complaint for copyright infringement and removal of CMI.

Friedman moved for summary judgment on the copyright infringement issue, and Live Nation stipulated to liability for infringement. Live Nation then moved for partial summary judgment on Friedman's CMI and willful infringement claims. The district court granted Live Nation's motion for partial summary judgment, finding that Friedman offered no evidence regarding the removal of CMI or with regard to Live Nation's willful infringement. The district court also rejected Friedman's calculation of damages based on the number of third-party retailers to which Live Nation had distributed the calendars and t-shirts, and concluded that Friedman was entitled to only one statutory damages award per infringed work. Friedman appealed.

On appeal, the court examined (1) whether there was sufficient evidence in the record to permit a jury to conclude that Live Nation committed willful copyright infringement, making it liable for additional damages under the Copyright Act; (2) whether a jury could conclude that Live Nation knowingly removed CMI from the photographs in question; and (3) whether Friedman could recover statutory damages awards measured by the number of retailers that purchased infringing merchandise from Live Nation, even though Friedman did not join those retailers as defendants in his suit.

Willful Copyright Infringement

Under the Copyright Act, the copyright owner has the burden of proving willful infringement. The amount of damages that a plaintiff may recover for infringement depends on whether the infringement was committed willfully, i.e., through intentional or reckless behavior, or through willful blindness to the copyright holder's rights. 

The Ninth Circuit concluded that record evidence gave rise to a triable issue of fact as to whether Live Nation's infringement was willful. In particular, the Court pointed to evidence in the record discussing Live Nation's product approval forms, which did not provide that the artists granting approval of the merchandise products were obligated to report whether the artists owned the rights to images proposed by Live Nation. The Court found that approval procedures that never explicitly inquire as to copyright could amount to recklessness or willful blindness. The Court also cited an internal Live Nation email stressing that the company should not use Glenn Freidman photos because he owns all of the rights to his photos, which could suggest that Live Nation was aware of the risk of infringement. Thus, the Court concluded that the district court erred in granting summary judgment to Live Nation on the issue of willfulness.

Removal of CMI

The Ninth Circuit also found that the district court erred in granting summary judgment on Friedman's claim under § 1202(b) of the Digital Millennium Copyright Act regarding removal of CMI, and explained that Friedman could still prevail upon a showing that Live Nation distributed his works with knowledge that CMI has been removed, even if Live Nation did not remove it directly. Again looking to the evidence of record, the Court noted that Friedman's filings had shown comparison images that demonstrated that Friedman's images on Live Nation's products did not include copyright information that had been present on earlier versions of the photos. The Court concluded that record evidence created a triable issue of fact as to whether Live Nation distributed Friedman's photographs with the requisite knowledge that CMI had been removed.

Statutory Damages Under the Copyright Act

Finally, citing its own decision in Columbia Pictures v. Krypton Broadcasting, the Ninth Circuit affirmed the district court's ruling on statutory damages, holding that the Copyright Act § 504(c)(1) provision of separate statutory damage awards for the infringement of each work "for which any two or more infringers are liable jointly and severally" applied only to parties that have been included in the proceeding as defendants. Therefore, a plaintiff seeking separate damage awards on the basis of downstream infringement must join the downstream infringers in the action and prove their liability for infringement. Because Friedman did not join any of his purported downstream infringers as defendants in the action, the Court affirmed the district court's holding that was limited to one statutory damages award per work infringed by Live Nation.

Ninth Circuit Provides A Second Look At Willful Copyright Infringement

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