Reasoning that the form of a copyright registration does not really matter, the Ninth Circuit recently affirmed a district court’s ruling that real estate photography provider VHT was entitled to statutory damages for 2,700 photos infringed by Zillow even though VHT had registered all of the works at issue as part of a single database. Zillow argued that VHT should be held to its registration, i.e., that the infringement was of a single work for which VHT could obtain a single statutory damage award of not more than $30,000. Reasoning that this would result in elevating form over substance, the Ninth Circuit affirmed the district court’s award of statutory damages for each photo Zillow had been found to infringe.

VHT provides residential photography services and has a database containing millions of photographs. Defendant Zillow is a real estate website that sometime publishes those photos on its website to assist in the marketing of residential real estate. At issue here, was Zillow’s unauthorized use of 2,700 photos on the “Digs” portion of its website, a webpage that provided “visual inspiration” for remodel projects. (Ed. Note: When we tried to access “Digs”, we received an “Error 404” message.). After a prior appeal, there was no question whether the photos were infringing, only whether VHT’s registration of a single photograph database with the Copyright Office would support multiple statutory damage awards.

The Copyright Act states that plaintiffs typically must register their works either within three months of publication or prior to infringement as a prerequisite to obtaining statutory damages. Zillow raised two problems with VHT’s registration. First, the Copyright Office had not issued the registrations prior to VHT bringing suit.  Second, VHT had not registered the photos as individual works, but rather as a single database.

Despite the Supreme Court’s 2019 holding in Fourth Estate Public Benefit Corp. v., LLC that a plaintiff must obtain an issued registration from the Copyright Office before filing suit, the Ninth Circuit handily dispensed with this requirement under the unique circumstances this case presented. Because the Supreme Court’s opinion in Fourth Estate issued during the litigation, it gave VHT a pass – reasoning that under prior Supreme Court precedent, copyright registration is not jurisdictional. Given that this was a fairly exceptional set of procedural facts, it is doubtful that Zillow will seek (or obtain) a writ of certiorari from the Supreme Court. So, while the discussion of this was interesting, it is not likely to be of much use to practitioners.

The more interesting question was whether VHT would be held to a single statutory damages award having registered a single database as a compilation. The district court, for its part, found that it need not look at the form of the registration, what matters was that each photo was independently copyrightable and infringed. Thus, each act of infringement would support an award of statutory damages.  This was contrary to guidance contained in the Copyright Office’s Compendium of U.S. Copyright Office Practices, section 1112 suggesting that plaintiffs seeking damages for infringing a database compilation would be limited to a single statutory damages award (“Consequently, when a group of photographs is registered as a database, the copyright owner may be entitled to seek

only one award of statutory damages for the database as a whole – rather than a separate award for each photograph – even if the defendant infringed all the photographs covered by the registration.”)

On appeal, the Ninth Circuit affirmed that Zillow had infringed individual photos, not the database compilation. The copyrightable content in a database compilation is “the selection, coordination, and arrangement of preexisting pictorial works.” Here, because each individual photograph was published individually and selected by Zillow for infringement individually, VHT was entitled to statutory damages for each infringement of each photo, rather than a single statutory damages award for infringing the database.  Courts need not follow the Copyright Office Compendium since it does not have the force of law and is merely persuasive. 

But what about the fact that VHT registered millions of works as a single database (often in chunks of tens or hundreds of thousands) without submitting deposit copies?  The Ninth Circuit says that focusing on the type of registration “elevates the form of registration above all else.” “Although the Copyright Act states that all parts of a compilation … constitute one work, it does not say that any work included in a compilation cannot also exist as a separate, independent work.”

According to the Ninth Circuit, there are a number of ways to register groups of photos, including group registrations (typically limited to 750 individual works published within the prior year). Under the Ninth Circuit’s rationale, a single registration of a stock photo database is sufficient to register all of the photographs contained in it, and that such a registration will support an award of statutory damages (and presumably give the district court discretion to award attorneys’ fees as well).

Because “photographers can create hundreds, and sometimes thousands, of photographs per day,” the Ninth Circuit reasoned that allowing them simply to register a single database will protect the financial interests of the photographers and keep the Copyright Office from facing a deluge of copyright applications from prolific photographers. Thus, going forward, content owners can protect countless photographic works through a single registration and still enforce their rights with the threat of statutory damages.

While we sympathize with the difficulties faced by photographers, we wonder whether the Ninth Circuit’s rationale here holds water. As the Ninth Circuit pointed out, the purpose of permitting the registration of a database compilation is to protect the selection and arrangement of preexisting works, not the underlying works themselves.  Nonetheless, by including within the scope of the database registration the individual works, the Ninth Circuit has created a boon for photographers who would certainly prefer to avoid paying multiple registration fees to the copyright office.

Under the Supreme Court’s 2022 opinion in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., a mistake in registering a copyright will generally not be held against the registrant in enforcement proceedings. So, even if it turns out that the Ninth Circuit was wrong, any registration obtained under its rationale in VHT will likely be immune to challenge under Unicolors regardless of whether the case is brought in the Ninth Circuit or anywhere else. 

The case is VHT, Inc. v. Zillow Grp., Inc., 2023 U.S.P.Q.2d 671 (9th Cir. 2023).