VHT v. Zillow Group II (9th Cir. 2023) – DMLA Summary

July 17, 2023 - Nancy Wolff

VHT, the largest professional real estate photography studio in the country, sued Zillow for copyright infringement after Zillow displayed thousands of their photos on the “Digs” part of  its website. After summary judgement rulings, a jury trial, an initial appeal, and a bench trial, the case wound its way back to the Ninth Circuit for a second time as the parties appealed the bench trial on remand.  Significantly, on the second round of VHT v. Zillow Group II (2023), the Ninth Circuit, in addition to deciding a registration issue, held that VHT’s images, registered both as a database and as individual images, were individual works that gave rise to statutory damages for each of the 2,700 infringements, rather than as a database that would give rise to only a single act of infringement and one award of statutory damages as a compilation.

The photographs at issue were registered using a database registration for photographs, where images were filed using Copyright Office instructions for photographic databases. This database  registration had initially been provided to DMLA (then PACA) in 1997 by the then Chief Examiner of the Visual Arts Department. These registrations allowed digital images residing on a server to be registered as photographs, as well as the compilation of the data. At the time, there was no group registration of photographs and the Copyright Office worked with DMLA to come up with a way to effectively register images distributed online rather than viewed in large stock catalogs displaying duplicate images for physical delivery. The issue was whether the database only protected the “compilation” of the images and was one “work” or  permitted separate awards of statutory damages for each individual image infringed within the database. 

The Court ultimately found that “[t]he statutory text, caselaw, and common sense compel one result: the infringed works were not the database but instead were the 2,700 individual photographs, and VHT is entitled to an award for each of the 2,700 infringements.” VHT owned registrations in both the individual photos and in its database (a type of “compilation”), but the Court emphasized that a work included in a compilation can also exist as a separate, independent work. They underscored the “independent economic value,” of each individual photograph as an important, but not necessarily dispositive factor. They note that Zillow did not infringe the copyrightable aspects of VHT’s database (i.e. the selection, coordination, and arrangement of preexisting pictorial works), rather, they infringed the individual photos, using each one independently to market home designs. The court noted that VHT licensed the photographs on a per image  and per property basis, and the selection and arrangement of the database (the compilation) was not licensed.  

The Court also traces the history of the Copyright Office’s statements on compilations of photographs, noting how it created a new “group option for unpublished photographs,” in 2018 specifically to allow for the separate registration for each photograph included within the group. The Court took the opportunity to clarify that its prior decision in Alaska Stock, LLC v. Houghton Mifflin Harcourt Publishing Co. (9th Cir. 2014) and held that a stock photo agency that registered databases had successfully registered both a copyright in the databases and the individual images stored within them and rejected the Copyright Office’s reading that the database registration could potentially limit  recovery to one award of statutory damages. The court cited the amici brief filed on behalf of VHT by the photography industry,  which DMLA joined  along with NPPA, ASMP, APA, GAG PPA, NNPA and ASMP, “According to amici, database registration remains a “critically important “ course: Unlike other creators of copyrightable works, photographers can create hundreds and sometimes thousands of photographs per day”. 

Lastly, the Ninth Circuit affirmed the District Court’s awarding of statutory damages of $800 per photo for 2,312 images and $200 per image for 388 “innocently infringed” photos.

Due to the Copyright Office’s concern that database registrations may be limited to one statutory damages, photographers have been encouraged to rely on the group registration of published and unpublished images offered by the Copyright Office which limit each registration to 750 works. However, the database registration that covers unlimited number of photographs may be an option after this decision provided the following requirements  are met: Section 1112: Group Registration of Database Updates and Revisions 

States that a database registration “may cover the component elements that appear within the database, such as photographs…provided that (i) the claimant owns the copyright in those elements, (ii) there is a sufficient amount of creative expression in those elements, and (iii) those elements have not been previously published or previously registered.

In the past, some image libraries filed database registrations for images on their websites if photographers agreed to transfer copyright to the company for registration purpose. If the photographer left the image library, the copyrights were to be reassigned. These registrations should continue to cover the individual images that were first published on the website based on this decision.