IP Law Daily, COPYRIGHT—D. Mass.: Court denies website provider’s summary judgment motion, where photographer alleged his photographs were posted on website without permission, (Oct 3, 2023)

By Robert Margolis, J.D.

Court rejects several grounds for dismissal of claims, including that the photographer had granted an implied license, there was no evidence of copying, and defendant’s use was de minimis.

The federal district court in Boston has denied Boston Web Power LLC’s (BWP) motion for summary judgment in a copyright infringement action, rejecting several arguments that the display of twelve photographs taken by professional photographer Alexander Bayonne Stross on a website BWP operates does not constitute copyright infringement (Stross v. Boston Web Power LLC, September 29, 2023, Kelley, A).

Posted photos. Stross owns a certificate of registration for twelve photographs that are part of a photo shoot of small housing units in Texas (the “Tiny House Project”) designed by architect Matt Garcia. ImageRights International, who Stross uses to monitor his copyrights online, found an article on the website www.wanjiaweb, run by BWP, that contained the twelve photographs. It sent two emails to BWP in April 2019, which BWP claims it did not receive. When it received another email in May 2020, it immediately deleted the article and the photographs. BWP claims the photographs were posted by a third-party user and it was unaware of them. When BWP refused to pay the requested $24,000 license fee, Stross sued, alleging copyright infringement in violation of the Copy Right Act and the Digital Millennium Copyright Act. BWP moved for summary judgment.

No implied license. The court first addressed, and rejected, BWP’s argument that Stross had granted an implied license to Garcia, based on allegations that Stross traded seven of the photographs to Garcia in exchange for Garcia providing design work for Stross. According to BWP, this trade constitutes the grant of an implied license for those seven photographs.

A nonexclusive license to use a copyrighted work, when ownership of the copyright is not transferred, may be implied from conduct by the owner that indicates the intent to create such a license and permit the licensee to use the work. The court found no evidence of such intent between Stross and Garcia here. The record did not suggest an ongoing working relationship between them, establish whether there was a written contract (let alone its terms), and did not demonstrate that they intended such a contract. In sum, there was no evidence Stross intended to let Garcia distribute the seven photographs, which is the essence of an implied license, the court held.

Actual copying. BWP next argued that there was no evidence of actual copying. The court found that argument unavailing. Stross could point to both direct and circumstantial evidence of copying. For direct evidence, Stross pointed to interrogatory responses where BWP conceded that the twelve photographs were posted on www.wanjiaweb.com and that on receiving the 2020 email, it deleted the article with the twelve photographs. For circumstantial evidence, the court applied the “probative similarity” standard, looking at whether BWP had access to the photographs and then comparing the original photographs with the allegedly infringing works on the website. There was no dispute that the photographs were widely published on the internet, and the court’s comparison showed the photographs on the website to be extremely similar to Stross’s originals, with the most significant difference being how the photos are cropped on BWP’s website. The court then analyzed the photographs for “substantial similarity,” again noting that the only discernible difference is in the cropping, which removed Stross’s copyright notice.

Originality. BWP also argued that the twelve photographs are derivative works, thus constituting a single work for damages purposes. The court found there to be disputed material issues of fact on this issue. Photographs of architectural works can be original, and courts note that the photographer’s choices of light, angle, timing, and the selection of subjects are all examples of originality. Further, whether the photographs are original or derivative does not affect the underlying question of copyrightability, but rather the scope of copyright protection and damages, which are questions that need not be addressed at this time, the court concluded.

Not de minimis. BWP also argued that it displayed the photographs only once on the website, so the amount of copying was de minimis. But the number of times the photographs were displayed is irrelevant to whether the de minimis doctrine applies; that doctrine concerns the extent of copying and ascertaining the strength of plaintiff’s proof of substantial similarity. As noted above, the photographs on the website are extremely similar to Stross’s copyrighted originals. Thus, the de minimis doctrine does not apply.

The Case is No. 1:20-cv-11341-AK.

Attorneys: Robert Terry Parker (Law Office of R. Terry Parker) for Alexander Bayonne Stross. Jie Tan (JT Law Services, PC) for Boston Web Power LLC d/b/a Wanjiaweb.com.

Companies: Boston Web Power LLC d/b/a Wanjiaweb.com

Cases: Copyright MassachusettsNews GCNNews