Attorney Steve® Photo Infringement Essentials - Statute of Limitations where expert image detectors are involved as Plaintiff
Introduction
We are currently dealing with a lawsuit from a Plaintiff photographer that also has his own "photo infringement detection company." In other words, he is a professional photo infringement detection investigator who searches out photo infringement claims not only for himself (and files many lawsuits) but also for others. His website says he scours the internet every day looking for infringements. Thus, he holds himself out as an expert and admits he searches the internet for infringements every single day (certainly for his own gain first as he has filed so many photo infringement lawsuits). We are not going to name names now, but we plan to take this guy on in court as he filed a lawsuit over four years after he knew or should have known about it (the so-called discovery rule). But now, alas, his copyright lawyer says he has no obligation to search the internet and learn of these things. I find it hard to believe, and this case law below shows some of the legal issues that may be involved. This may be a question of fact that will have to be decided through discovery.
Issue
Is a photo infringement detection expert held to a higher standard when it comes to enforcing infringement claims under the three-year copyright statute of limitations discovery rule? A photo infringement expert is expected to know or should know when his content is being infringed per the discovery rule.
Facts
A professional photographer is also the owner of a copyright photo enforcement company. The photographer states on his website that he searches the internet every day to find infringing photos for his clients, and also for himself. Since he holds himself out as being an expert at detecting photo enforcement, and states that he scours the internet everyday, does this hold him to a higher standard and preclude his claim for copyright infringement when he fails to discover an infringing photo within the copyright three-year statute of limitations?
Conclusion
The plaintiff pursuing a copyright infringement claim bears the burden of proving the applicability of the discovery rule. To do so, they must establish facts that show they lacked knowledge and that in the exercise of reasonable diligence the facts could not have been discovered earlier. (Free Speech Sys., LLC v. Menzel, Michael Grecco Prods. v. Livingly Media)
The inquiry as to whether the plaintiff reasonably should have discovered the infringement raises a question of fact but may be considered on a motion to dismiss if no reasonable finder of fact could conclude that the claimant's lack of knowledge was reasonable under the circumstances. (Free Speech Sys., LLC v. Menzel)
The plaintiff's use of third-party vendors to discover infringement does not, in and of itself, establish that they reasonably should have discovered the infringement earlier. (Michael Grecco Prods. v. Livingly Media)
Courts in the Ninth Circuit regularly find that filing other copyright infringement lawsuits does not put a party on more notice that an infringement has occurred. (Minden Pictures, Inc. v. The Excitant Grp., LLC)
No decisions were identified that discussed a plaintiff in a copyright infringement action who identified themself as a "photo infringement detection expert;" however, the following decisions involving plaintiffs who had a habit of searching for infringement and plaintiffs who hired third parties to search for infringement may be instructive:
In Free Speech Sys., LLC v. Menzel, the defendant asserted counterclaims for copyright infringement. The plaintiff argued that the defendant's habit of searching for infringement made it less reasonable for him to claim it took him seven years to discover the alleged infringement in this case and that conducting a Google reverse image search would have revealed the plaintiff's use. The United States District Court for the Northern District of California noted that the reasonableness of discovering copyright infringement is generally a question of fact and neither the plaintiff nor the defendant established the issue as a matter of law.
In the unpublished case of Michael Grecco Prods., Inc. v. BDG Media, Inc., the plaintiff's amended complaint alleged facts that established the difficulty of detecting online infringements, even when the plaintiff invested in both in-house infringement detection using Google image search, as well as third-party reverse image search software. The United States Court of Appeals for the Ninth Circuit held that the issue of at what time search processes would or should have captured alleged infringements was a question of fact that could not be determined on a motion to dismiss.
Law
No decisions were identified that discussed a plaintiff in a copyright infringement action who identified themselves as a "photo infringement detection expert;" however, a discussion of decisions involving plaintiffs who had a habit of searching for infringement and plaintiffs who hired third parties to search for infringement may be instructive.
In Free Speech Sys., LLC v. Menzel, 390 F.Supp.3d 1162 (N.D. Cal. 2019), the United States District Court for the Northern District of California explained that the Ninth Circuit follows the discovery rule of claim accrual; thus, the three-year clock for copyright claims begins when a party discovers, or reasonably should have discovered, the infringement. The plaintiff pursuing a copyright infringement claim bears the burden of proving the applicability of the discovery rule. The inquiry as to whether the plaintiff reasonably should have discovered the infringement raises a question of fact but may be considered on a motion to dismiss if no reasonable finder of fact could conclude that the claimant's lack of knowledge was reasonable under the circumstances (at 1169):
Copyright claims must be brought within three years after the claim accrues. 17 U.S.C. § 507(b). The Ninth Circuit follows the "discovery rule" of claim accrual; the three-year clock begins when a party discovers, or reasonably should have discovered, the infringement. See Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 706 (9th Cir. 2004). "Where ... a plaintiff contends that the statute of limitations is not a bar based on the discovery rule ..., the plaintiff bears the burden of proving the applicability of such." Garcia v. Coleman, No. C-07-2279-EMC, 2008 WL 4166854, at *5 (N.D. Cal. Sept. 8, 2008). This inquiry raises a question of fact but may be considered on a motion to dismiss if no reasonable finder of fact could conclude that the claimant's lack of knowledge was reasonable under the circumstances. See Goldberg v. Cameron, 482 F. Supp. 2d 1136, 1148 (N.D. Cal. 2007) (dismissing a claimant's infringement claims as time-barred because his lack of knowledge due to a twenty-year spiritual journey was unreasonable under the circumstances).
In this case, the plaintiff sought a declaration that it had not infringed on the defendant's copyrights. The defendant asserted counterclaims for copyright infringement. The plaintiff argued that the defendant's habit of searching for infringement made it less reasonable for him to claim it took him seven years to discover the alleged infringement and that conducting a Google reverse image search would have revealed the plaintiff's use. The Court noted that the reasonableness of discovering copyright infringement is generally a question of fact and neither the plaintiff nor the defendant established the issue as a matter of law. Thus, the Court denied the motion to dismiss based on the statute of limitations (at 1169-1171):
The parties disagree on when Menzel's copyright claim accrued. There is no dispute that the Post appeared on InfoWars on April 30, 2012, and so FSS argues that Menzel is barred from bringing a copyright
[390 F.Supp.3d 1170]
infringement claim against FSS because he reasonably could have discovered the allegedly infringing material by conducting an investigation into the unauthorized use of his photographs. MTD 4, 6. Menzel counters that he did not discover the Post until December 2018. FAAC, pg. 9 ¶ 11. He states that he does not "frequent infowars.com, and could not have reasonably discovered" the Post before that. Id. He also asserts that he has regularly enforced his intellectual property rights, having filed eight copyright infringement lawsuits from 2015 to 2018, at least three of which were about the same photographs at issue here. Oppo. 3 n.2 [Dkt. No. 25]. He argues that despite taking reasonable steps to protect his copyrighted works, he simply did not discover the allegedly infringing Post on InfoWars until December 2018. Id. at 2-3.
In reply, FSS argues that Menzel's "habit of searching for infringement" makes it less reasonable for him to claim it took him seven years to discover the allegedly infringing Post on InfoWars. Reply 2-3 [Dkt. No. 27]. To support its position, FSS relies on facts outside the pleadings, including the functionality of a "Google reverse image search" that purportedly allows a user to use the search engine to "instantaneously identify all the places on the Internet that image is used...." Id. 2 (quoting Erez Rosenberg, An Audio-Visual Notice of Use Database: A Solution to the Orphan Works Problem in the Internet Age, 22 UCLA Ent. L. Rev. 95, 121 (2014) ). FSS contends that conducting a Google reverse image search would have revealed InfoWars's use. Reply 2.
As noted above, reasonableness of discovering copyright infringement is generally a question of fact. Neither FSS nor Menzel cite any cases supporting their position that Menzel's delay in discovering the infringement by FSS was either reasonable or unreasonable as a matter of law.3 Ignoring the extra-judicial facts asserted by FSS (e.g., Google reverse image searching) and considering only the alleged or admitted facts – that Menzel polices his copyrights but does not frequent the InfoWars site and that the Post was up as of April 30, 2012 – Menzel's pleading does not establish as a matter of law that his delay in filing suit was unreasonable.4
[390 F.Supp.3d 1171]
The Motion to Dismiss based on the statute of limitations is DENIED.
In the unreported case of Michael Grecco Prods. v. Livingly Media, 2021 U.S. Dist. LEXIS 117652, 2021 WL 2546749 (C.D. Cal. April 16, 2021), the United States District Court for the Central District of California explained that for a plaintiff to prove the applicability of the delayed discovery rule, they must establish facts that show they lacked knowledge and that in the exercise of reasonable diligence the facts could not have been discovered earlier (at 31-32):
Livingly argues the statute of limitations bars this suit as to Photographs 1 and 3. Copyright infringement claims must be "commenced within three years after the claim accrued." 17 U.S.C. § 507(b). "[T]he general federal rule is that a limitations period begins to run when the plaintiff knows or has reason to know of the injury which is the basis of the action." [*32] Norman-Bloodsaw v. Lawrence Berkeley Lab'y, 135 F.3d 1260, 1266 (9th Cir. 1998) (internal quotation marks omitted). However, under the "discovery rule," a copyright infringement claim accrues — and the statute of limitations begins to run — when a party discovers or, with the exercise of diligence, reasonably should have discovered, the alleged infringement. Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 706 (9th Cir. 2004). To defeat a statute of limitations defense, the plaintiff has the burden of proving the applicability of the delayed discovery rule or equitable tolling. V.C. v. L.A. Unified Sch. Dist., 139 Cal. App. 4th 499, 516, 43 Cal. Rptr. 3d 103 (2006). To satisfy this burden, the plaintiff must establish facts that show the plaintiff lacked knowledge and that in the exercise of reasonable diligence the facts could not have been discovered earlier. Id.
The defendant argued that the plaintiff, the photographer's company, reasonably should have discovered the alleged infringement earlier because the plaintiff used a reverse image search vendor to search for infringement, and the photographer hired multiple outside agencies to find infringement on his behalf. The Court held that the plaintiff's use of third-party vendors did not in and of itself establish that it reasonably should have discovered the publications earlier. However, the plaintiff also did not establish any facts showing it would have been difficult to discover the images earlier. Thus, the Court found there was a genuine issue of material fact as to whether the plaintiff should have reasonably discovered the infringement earlier (at 33-35):
Livingly argues MGP reasonably should have discovered the alleged infringement earlier because Grecco hired multiple outside agencies to find infringement on his behalf. Livingly Opp'n at 24. Until August 2018, MGP used a reverse image search vendor called ImageRights to search for infringement, but MGP does not know whether ImageRights discovered the use of any of the Photographs. DSUF ¶¶ 58-59. At some point Grecco also began using other vendors, including Higbee & Associates. Id. ¶ 60.
In Michael Grecco Productions, Inc. v. BDG Media, Inc., 834 F. App'x at 354, the Ninth Circuit held the district court erred in holding Grecco's claim was time-barred. The circuit court noted that "[a]t what time . . . search processes would or should have captured alleged infringements is a question of fact that cannot be determined on a motion to dismiss" due to "the difficulty of detecting online infringements, even when plaintiffs like Grecco invest in both in-house infringement detection using Google image search as well as third-party reverse image search software." Id.
MGP's use of third-party vendors, therefore, does not in and of itself establish it reasonably should have discovered the publications earlier. However, MGP also does not establish [*34] any facts showing it would have been difficult to discover the images earlier. MGP even admits that it does not even know whether ImageRights discovered any of the photographs. If ImageRights — acting on MGP's behalf — had discovered any infringement, a reasonable jury could surely find that MGP should have known about the publication earlier. MGP argues only that Livingly states — in a different context — that due to technical limitations, it inadvertently overlooked some uses of the photographs. MGP Reply at 10. Livingly's technical limitations are irrelevant to whether MGP should have discovered the images earlier.
MGP cites two district court cases in which the courts noted plaintiffs didn't have a general duty to comb through the internet for infringement of their copyrighted material. MGP Reply at 10-11 (citing Delano v. Rowland Network Commc'ns LLC, No. CV-19-02811-PHX-MTL, 2020 U.S. Dist. LEXIS 81374, 2020 WL 2308476, at *3 (D. Ariz. May 8, 2020) and Mackie v. Hipple, No. C09-0164RSL, 2010 U.S. Dist. LEXIS 82462, 2010 WL 3211952, at *2 (W.D. Wash. Aug. 9, 2010)). In Mackie, the court held only that "on a motion for summary judgment, viewing the evidence in the light most favorable to the plaintiff, the Court c[ould] not conclude as a matter of law that he is chargeable with knowledge of Hipple's alleged infringement on a date certain before his actual discovery [*35] of the alleged infringement in 2007." 2010 U.S. Dist. LEXIS 82462, 2010 WL 3211952, at *2.8
The Court agrees there remains a genuine issue of material fact as to whether MGP should have reasonably discovered the infringement earlier. MGP hired multiple companies to find infringement but does not know if they discovered any. According to MGP, it was not until more than six months after one of the vendors it hired not only discovered Livingly's use of the Photographs but actually sent two cease and desist letters that MGP itself learned of the alleged infringement. The Court therefore DENIES summary judgment to both parties on the statute of limitations defense.
Similarly, in the unreported case of Michael Grecco Prods., Inc. v. BDG Media, Inc., 20-55441 (9th Cir. 2021), the United States Court of Appeals for the Ninth Circuit found that the District Court erred when it held that the plaintiff's claim based on infringement of their photo was time-barred. The Court noted that the plaintiff's amended complaint alleged facts that established the difficulty of detecting online infringements, even when the plaintiff invested in both in-house infringement detection using Google image search as well as third-party reverse image search software. The Court held that the issue of at what time these search processes would or should have captured alleged infringements was a question of fact that could not be determined on a motion to dismiss (at 2):
- The district court erred in holding that Grecco's claim based on the Flashlight Photo was time-barred. Copyright infringement claims must be "commenced within three years after the claim accrued," 17 U.S.C. § 507(b), which occurs "when a party discovers, or reasonably should have discovered, the alleged infringement." Oracle Am., Inc. v. Hewlett Packard Enter. Co., 971 F.3d 1042, 1047 (9th Cir. 2020). This discovery rule analysis is a factual one, Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 707 (9th Cir. 2004), and Grecco's allegations suffice to survive a motion to dismiss with respect to the Flashlight Photo. Grecco alleged discovering defendant's infringing uses of the Flashlight Photo in January and February 2019, and it is not apparent from the face of the complaint (or from the judicially noticeable facts) that Grecco should have discovered the alleged infringements before May 2016 (three years before it filed the original complaint). Grecco's amended complaint alleges facts that establish the difficulty of detecting online infringements, even when plaintiffs like Grecco invest in both in-house infringement detection using Google image search as well as third-party reverse image search software. At what time these search processes would or should have captured alleged infringements is a question of fact that cannot be determined on a motion to dismiss.
In Mackie v. Hipple, 2010 U.S. Dist. LEXIS 82462, 96 U.S.P.Q.2D (BNA) 1932, 2010 WL 3211952 (W.D. Wash. August 9, 2010), the defendant argued the suit was time-barred and he was entitled to summary judgment because a reasonable person would have discovered the infringement more than three years prior to the suit. The defendant argued that a reasonable person would have periodically searched the internet to discover any infringement. However, the United States District Court for the Western District of Washington rejected this argument and held that a person who holds a copyright on a photograph does not have an affirmative duty to police the internet and stock photography agencies to find infringing copies of their work. Furthermore, the Court noted that the defendant admitted that he could not prove that the plaintiff would have found the infringement through a general search. Thus, the Court found that whether the plaintiff was chargeable with knowledge of the alleged infringement on a date before his actual discovery was a fact-intensive inquiry and not appropriate for determination on summary judgment (at 4-6):
Hipple argues that he is entitled to summary judgment because Mackie's suit is barred by the Copyright Act's statute of limitations. 17 U.S.C. § 507(b) provides that "[n]o civil action shall be maintained [*5] under the provisions of this title unless it is commenced within three years after the claim accrued." The Ninth Circuit, following the "discovery rule" adopted by the majority of circuits, interprets § 507(b) so that a claim for copyright infringement accrues "when one has knowledge of a violation or is chargeable with such knowledge." Roley v. New World Pictures, Ltd., 19 F.3d 479, 481 (9th Cir. 1994). Under the discovery rule, a plaintiff is chargeable with knowledge when a reasonable person would have discovered the infringement. See, e.g., Warren Freedenfeld Associates, Inc. v. McTigue, 531 F.3d 38, 44 (1st Cir. 2008).
Hipple argues that a reasonable person "would at least [have] tried to search on Google or stock photography agencies' websites beginning in the year 2000" and that "[r]easonable diligence required Mackie to periodically search the Internet to discover what was there to be discovered." Reply at 2. Hipple admits, however that he "cannot prove that Mackie would have found Hipple's photograph through a general search . . . ." Reply at 2. Moreover, Hipple presents no case law indicating that Mackie had an affirmative duty to police the internet and stock photography [*6] agencies to find infringing copies of his work. The copyright case cited by Hipple for the proposition that the discovery rule incorporates a "duty of diligence" also specifically holds—contrary to Hipple's arguments-that "[a]rchitects have no general, free-standing duty to comb through public records or to visit project sites in order to police their copyrights." McTigue, 531 F.3d at 46. Presumably, a sculptor would have no similar duty to scan the internet for all possible photographic infringers simply because her work has been infringed in the past. At the least, on a motion for summary judgment, viewing the evidence in a light most favorable to plaintiff, the Court cannot conclude as a matter of law that he is chargeable with knowledge of Hipple's alleged infringement on a date certain before his actual discovery of the alleged infringement in 2007. See, e.g., Beidleman v. Random House, Inc., 621 F.Supp.2d 1130, 1134 (D.Colo. 2008) ("This is a fact-intensive inquiry, not appropriate for determination on the Defendant's motion for summary judgment.").
In the unreported decision of Minden Pictures, Inc. v. The Excitant Grp., LLC, 2020 U.S. Dist. LEXIS 247769 (C.D. Cal. December 22, 2020), the defendant argued that the plaintiff's sophistication and infringement litigation history should give rise to constructive knowledge of infringement as of the posting date of the article. Additionally, the defendant argued that the plaintiff's use of ImageRights, a copyright enforcement service, to search for potential infringement should have revealed the defendant's use of the photo earlier. The United States District Court for the Central District of California found that whether the plaintiff's copyright infringement claims were timely was a question of fact that could not be decided on a motion to dismiss. Furthermore, the Court noted that the issue of when the copyright enforcement service would have captured the alleged infringement and notified the plaintiff was a question of fact and that courts in the Ninth Circuit regularly find that filing other copyright infringement lawsuits does not put a party on more notice that an infringement has occurred (at 7-9):
Copyright claims must be brought within three years after the claim accrues. 17 U.S.C. § 507(b). The Ninth Circuit follows the "discovery rule" of claim accrual, where the three-year clock begins when a party discovers, or reasonably should have discovered, the infringement. Polar Bear Prods., Inc. v. Timex Corp., 384 F.3d 700, 706 (9th Cir. 2004). "This inquiry raises a question of fact but may be considered on a motion to dismiss if no reasonable finder of fact could conclude that the claimant's lack of knowledge was reasonable under the circumstances." Free Speech Systems, LLC v. Menzel, 390 F. Supp. 3d 1162, 1170 (N.D. Cal. 2019); see also Oracle Am. Inc. v. Hewlett Packard Enter. Co., 971 F.3d 1042, 1047 (9th Cir. 2020) (The date of discovery of the alleged copyright infringement "is an issue of fact."); Michael Grecco Prods. v. Ziff Davis, LLC, 830 Fed. Appx. 233, 234 (9th Cir. 2020) ("The statute of limitations discovery rule analysis is a factual one.").
There is no dispute that the Subject Photo was posted on Defendant's website in 2014. Instead, the parties disagree on when Plaintiff's copyright claim accrued. Defendant argues that "Plaintiff's sophistication and litigation history should give rise to constructive knowledge of infringement as of the posting date of the article." [*8] (Mot. at 8.) According to Defendant, "[a]s a serial litigator who aggressively defends his rights, Plaintiff should reasonably be on notice regarding potential infringement of photos by media companies," and notes that Plaintiff has filed seventy-seven copyright infringement cases since 2017 (Id. 8-9 (citing Minden Pictures, Inc. v. Buzzfeed, Inc., 390 F. Supp. 3d 461, 467 (S.D.N.Y. 2019).). In addition, Defendant argues that Plaintiff's use of ImageRights to search for potential infringement should have revealed Defendant's use of the photo earlier. (Id. at 9-10.) Plaintiff on the other hand argues that it was not feasible for Plaintiff to be expected to discover every possible infringement of the photo at issue simply because it files copyright lawsuits and uses search technology to find infringement. (Opp. at 4-7.)
Here, the Court finds that whether Plaintiff's delay in filing the lawsuit is a question of fact that cannot be decided on a motion to dismiss. Plaintiff explains in detail in its FAC why it did not discover the alleged infringement until 2018. Further, courts in this circuit regularly find that filing other copyright infringement lawsuits does not put a party on more notice that an infringement has occurred. See Free Speech Systems, LLC, 390 F. Supp. 3d at 1170. In addition, when ImageRight would have captured the alleged infringing [*9] image and notified Plaintiff is a question of fact. See Michael Grecco Prods., 830 Fed. Appx. 233 at 234 ("[W]hether the Google reverse image search technology would have captured the image is a question of fact, inappropriate for dismissal at the motion to dismiss stage.") Thus, "it is not clear from the face of the [FAC] that [Plaintiff's] copyright infringement claims were untimely."
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Legal Authorities
Free Speech Sys., LLC v. Menzel, 390 F.Supp.3d 1162 (N.D. Cal. 2019)
Michael Grecco Prods. v. Livingly Media, 2021 U.S. Dist. LEXIS 117652, 2021 WL 2546749 (C.D. Cal. April 16, 2021)
Michael Grecco Prods., Inc. v. BDG Media, Inc., 20-55441 (9th Cir. 2021)
Mackie v. Hipple, 2010 U.S. Dist. LEXIS 82462, 96 U.S.P.Q.2D (BNA) 1932, 2010 WL 3211952 (W.D. Wash. August 9, 2010)
Minden Pictures, Inc. v. The Excitant Grp., LLC, 2020 U.S. Dist. LEXIS 247769 (C.D. Cal. December 22, 2020)
