AUTHORS*
Simon J. Frankel
Jenna Zhang
Celin Carlo-Gonzalez
2021 saw a number of interesting art law cases in both federal and state courts in California. The Ninth Circuit provided much-needed clarity on copyright issues such as the right to public performance under California's copyright statute; the amount of statutory damages awards authorized under federal copyright law; the availability of a "de minimis use" defense; and whether a Dr. Seuss-Star Trek mashup was protected by the fair use doctrine. A district court opinion, presently on appeal to the Ninth Circuit, also charted a new course for fair use by holding that the doctrine could only be used in a defensive posture. Meanwhile, two state court decisions showcased the potential significance of the California Environmental Quality Act ("CEQA")1 to public art litigation.
In Flo & Eddie, Inc. v. Sirius XM Radio, Inc.,2 the Ninth Circuit struck a blow to those seeking to recover public performance royalties from digital and satellite radio providers who play music made before 1972. Howard Kaylan and Mark Volman, founders of the Turtles, created Flo & Eddie, Inc. in 1971 to control the rights to the band's songs.3 But while Flo & Eddie receives royalties whenever the Turtles' songs are played in movies or television, it does not when the songs are played over the radio.4 Plaintiff Flo & Eddie sought to challenge the status quo by arguing that digital radio providers like Sirius XM Radio, Inc. owe public performance royalties under California's copyright law whenever they play pre-1972 sound recordings of the Turtles' songs.5
The question before the Ninth Circuit was whether the California copyright statute's grant of "exclusive ownership" to pre-1972 sound recordings included a right of public performance.6 Distinguishing between literalism and textualism, the Ninth Circuit held that the historical context of the phrase "exclusive ownership" did not suggest that California had intended to create a right of public performance under the statute.7 Looking back to 1872, when the statute was first enacted, the court explained that courts in other states had largely rejected the idea that the right to public performance was protected by copyright law.8 The court reasoned that the term "exclusive ownership" was not intended to codify a right of public performance because there was no evidence that it sought to displace the common law understanding that no such right exists.9 In doing so, the Ninth Circuit definitively closed the door on any possibility of recovering public performance royalties for pre-1972 sound recordings.
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Applying another textualist approach, the Ninth Circuit ruled in Desire, LLC v. Manna Textiles, Inc.,10that federal copyright law authorizes only one award of statutory damages per infringed work, and not one award per infringement.11 In 2015, Top Fashion of N.Y., Inc., a women's clothing manufacturer, purchased fabric from Desire, LLC bearing a copyright protected design that Desire owned.12 After a dispute over price, Top Fashion sent the fabric to Manna Textiles, Inc., which modified the design and then sold fabric bearing the new design to three clothing manufacturers (including Top Fashion).13 These three manufacturers then sold the clothing to three clothing retailers.14 Desire then sued the manufacturers, one of the retailers, and Manna for copyright infringement, and a jury returned a verdict for Desire.15
Before trial, the district court concluded that Desire would be entitled to separate statutory damages awards for each of the defendants' infringements.16 After judgment, defendants appealed this determination and asserted that Desire was only entitled to one damages award.17
Citing the language of 17 U.S.C. § 504(c)(1), which allows a copyright holder to recover "an award of statutory damages for all infringements involved in the action, with respect to any one work," the Ninth Circuit held that the statute's text does not authorize recovery of more than one statutory damages award per work.18 The court further explained that a contrary holding would produce an absurd result because it would increase liability for those who infringe less culpably.19 The court also found this could lead to "potentially astronomical statutory damages" that would frustrate the purpose of the statute.20 This ruling has far reaching implications as it conclusively forecloses the possibility of multiple statutory damages awards under federal copyright law Plaintiffs' lawyers should keep this case in mind while weighing the benefits of statutory versus actual damages.
In another important decision, Bell v. Wilmott Storage Services, LLC,21 the Ninth Circuit narrowed the scope of the "de minimis use" defense to infringement.22 In the early 2000s, Richard Bell, an attorney at an Indianapolis law firm, took a photo of the Indianapolis skyline and published it online.23 Bell monitors potentially infringing uses of the photo through reverse-image searches—searches run through Google Images which allow a person to identify where a particular image appears online.24His Indianapolis photo is apparently quite popular; Bell has filed over 100 copyright infringement lawsuits involving that specific image.25
One of Bell's lawsuits was against Wilmott Storage Services, LLC, because the Indianapolis photo existed on the company's website server.26 Wilmott had purchased the website from a different company and was unaware that the photo was on its server.27 In fact, the average internet user would not have been able to see the Indianapolis photo on the website without either conducting a reverse-image search or entering the precise URL address of the database archiving the photograph.28
The district court entered summary judgment for Wilmott under what it called the de minimis use defense.29 It held that "Wilmott's use of the Indianapolis photo was so insubstantial as to constitute a mere 'technical' or de minimis violation that was not actionable as a matter of law."30
The Ninth Circuit reversed, clarifying that the de minimis doctrine does not provide a defense to infringement, but rather informs the question of whether a defendant's work is substantially similar to the plaintiff's.31 As the court explained, "a use is de minimis only if the average audience would not recognize the appropriation."32 Because Wilmott conceded to using the entirety of Bell's photo,
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it effectively conceded the issue of substantial similarity and so precluded any application of the de minimis doctrine.33 The Ninth Circuit further rejected Wilmott's "technical violation" theory of copyright law which would create a complete defense for minor or unknowing uses of copyrighted materials.34 Recognizing that copyright infringement is a strict liability tort, Bell confirmed that lack of knowledge cannot defeat an infringement claim.35 Bell serves as a significant reminder that even a minor and unintentional use of copyrighted materials can lead to infringement and damages.
In a significant decision involving fair use, Dr. Seuss Enterprises, LP v. ComicMix LLC,36 the Ninth Circuit held that a Dr. Seuss-Star Trek mash-up was not protected under the fair use doctrine.37 Without seeking or receiving a license, defendants created Oh, the Places You'll Boldly Go!, a graphic novel inserting Star Trek characters into a landscape and world inspired by Dr. Seuss's Oh, the Places You'll Go!38 The Boldly mash-up "uses Captain Kirk and his spaceship Enterprise to tell readers that 'life is an adventure but it will be tough.'"39
On appeal from a grant of summary judgment finding fair use, the Ninth Circuit ruled that Boldly failed to satisfy any of the four elements of the defense. The court first found that the mash-up was not transformative because Boldly was simply a "funny" book and not a parody critiquing or commenting on Dr. Suess's work.40 It...
