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. Wall-Street.com, 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).

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