BELL v. MERCHANTS BANK OF INDIANA

Filing 98

ORDER on Motions for Summary Judgment. Mr. Bells motion for summary judgment on infringement is GRANTED. Dkt. 56 . Merchants motion for summary judgment is DENIED IN PART, as to infringement, and GRANTED IN PART, as to willfulness. Dkt. 74 . The parties SHALL INFORM the Court by June 11, 2020 whether a damages hearing will be required. (See Order). Signed by Judge James Patrick Hanlon on 4/27/2020. (MAC)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
RICHARD N. BELL,

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Plaintiff,
v.
MERCHANTS BANK OF INDIANA
Defendant.

No. 1:18-cv-00056-JPH-DLP

ORDER ON MOTIONS FOR SUMMARY JUDGMENT
Richard Bell alleges that Merchants Bank willfully used his copyrighted
photo of the Indianapolis skyline on its website without his permission. He has
moved for summary judgment on his claim of copyright infringement. Dkt.
[56]. Merchants denies that it infringed and contends that even if it did, the
infringement was not willful. Merchants has moved for summary judgment on
Mr. Bell’s claim of infringement and as to willfulness. Dkt. [74]. For the
reasons stated below, Mr. Bell’s motion is GRANTED, and Merchants’ motion is
GRANTED in part and DENIED in part.
I.
Facts and Background
The parties have filed cross-motions for summary judgment, so the Court
takes the motions “one at a time.” American Family Mut. Ins. v. Williams, 832
F.3d 645, 648 (7th Cir. 2016). For each motion, the Court views and recites
the evidence and draws all reasonable inferences “in favor of the non-moving
party.” Id.
1

In September 2014, Merchants Bank of Indiana contracted with Sonar
Studios Incorporated to develop Merchants’ new website. Dkt. 74-1 (Marsh
Decl.) ¶ 6. Merchants provided the text for the website, but Sonar provided the
other content, including most of the images. Id. ¶¶ 16-18. One of the photos
Sonar included on the website was a photo of the Indianapolis skyline at night
(the “Photo”). Id. ¶¶ 31-35; dkt. 26 ¶¶ 22-23. This Photo and the other website
content were included in the website’s media library and stored on a server
that Merchants leased. Dkt. 74-1 ¶ 20.
The website launched in January 2015 and, in 2017, included this
statement at the bottom of every page: “© Copyright 2017 Merchants Bank. All
Rights Reserved.” Id. ¶¶ 11, 36; dkt. 26 ¶ 24. On March 13, 2017, Rebecca
Marsh, the Merchants employee charged with operating the website, created a
blog post that included the Photo. Dkt. 74-1 ¶¶ 11, 39–43. She linked to the
Photo from the website’s media library on the server where Sonar stored it. Id.
¶¶ 42-44.
In December 2017, Richard Bell discovered that the Photo was being
displayed on Merchants’ website. Dkt. 57-1 (Bell Decl.) ¶¶ 8, 10, Ex. B. He
recognized it as a picture he took of the Indianapolis skyline and had
copyrighted with the United States Copyright Office. Id. ¶¶ 2-7, Ex. A, C.
Neither Merchants nor Sonar had paid him for the Photo, and he had not
provided them with a license to reproduce, distribute, or publish it. Id. ¶¶ 1112.

2

On December 14, Mr. Bell emailed the owner of Merchants’ server stating
that Merchants was infringing on his copyright by displaying the Photo on its
website. Dkt. 74-1 ¶ 47, Exhibit F. The next day, Ms. Marsh removed the
Photo from the website and deleted it from the media library. Id. ¶ 48. Mr. Bell
then sued Sonar and Merchants for copyright infringement. Dkt. 1; dkt. 23.
Sonar has since been dismissed from the case. Dkt. 93; dkt. 94.
Mr. Bell has moved for summary judgment, dkt. 56, and Merchants has
filed a cross-motion for summary judgment, dkt. 74.
II.
Applicable Law
Summary judgment shall be granted “if the movant shows that there is
no genuine dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed. R. Civ. P. 56(a). The moving party must
inform the court “of the basis for its motion” and specify evidence
demonstrating “the absence of a genuine issue of material fact.” Celotex Corp.
v. Catrett, 477 U.S. 317, 323 (1986). Once the moving party meets this
burden, the nonmoving party must “go beyond the pleadings” and identify
“specific facts showing that there is a genuine issue for trial.” Id. at 324. In
ruling on cross motions for summary judgment, the Court takes the motions
“one at a time,” viewing and reciting the evidence and drawing all reasonable
inferences “in favor of the non-moving party.” Williams, 832 F.3d at 648.

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III.
Analysis
A.

Copyright infringement
The Copyright Act provides copyright holders with six “exclusive rights,”

including the exclusive right “to display the copyrighted work publicly.” 17
U.S.C. § 106(5). Anyone who violates any of these exclusive rights infringes on
the copyright. 17 U.S.C. § 501(a). Copyright infringement may occur
unintentionally. 17 U.S.C. § 504(c)(2); Design Basics, LLC v. Lexington Homes,
Inc., 858 F.3d 1093, 1099 (7th Cir. 2017). In a case of willful infringement, the
copyright owner may recover up to $150,000 in statutory damages. 17 U.S.C.
§ 504(c)(2).
B.

Did Merchants’ infringe on Mr. Bell’s copyright?
“To establish copyright infringement, a plaintiff must prove two elements:

‘(1) ownership of a valid copyright, and (2) copying of constituent elements of
the work that are original.’” Design Basics, 858 F.3d at 1099 (quoting JCW
Investments, Inc. v. Novelty, Inc., 482 F.3d 910, 914 (7th Cir.
2007)). Merchants contests both elements. Dkt. 75 at 14-25; dkt. 77 at 4-5.
1. Ownership
Mr. Bell has designated evidence that he owned a valid copyright of the
Photo during the relevant timeframe. Mr. Bell testified that he was sole owner
of the Photo and that he registered it with the Copyright Office. Dkt. 57-1 ¶¶
2-7. He also provided a copy of his registration. Id. at Exhibit C. This creates
a presumption that he owns the copyright of the Photo. Mid Am. Title Co. v.

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Kirk, 59 F.3d 719, 721 (7th Cir. 1995) (holding that certificate of copyright
registration provides a rebuttable presumption of ownership of a valid
copyright); see also Kuryakyn Holdings, LLC v. Ciro, LLC, 242 F. Supp. 3d 789,
802 (W.D. Wis. 2017).
Merchants has not designated evidence that rebuts this presumption. It
argues only that Mr. Bell “may not own a valid copyright to the Photo” because
a jury in a different case found that Mr. Bell did not own a copyright to a
different photo. Dkt. 77 at 4. Merchants contends that the Photo here was
registered under the same copyright application and registration number as
the photo in that case. Id. But Merchants admits that the photos are different
and has not designated evidence that Mr. Bell does not own a copyright to the
Photo here, or that his copyright application and registration are invalid. Nor
has Merchants disputed any of Mr. Bell’s designated evidence demonstrating
his ownership. Therefore, Mr. Bell has met the first element of his copyrightinfringement claim.
2. Infringement
Merchants admits that it displayed the Photo on its website in 2016 and
2017. Dkt. 26 ¶ 23. Mr. Bell did not grant Merchants or Sonar permission to
display his Photo. Dkt. 57-1 ¶¶ 11, 12. Merchants argues that it did not
infringe on Mr. Bell’s copyright, however, because it never uploaded the Photo
to its website—Sonar did. Dkt. 75 at 15. Once uploaded, the Photo existed on
Merchants’ website only as a unique hyperlink. Id. at 19-20. According to
Merchants, that makes this case similar to Flava Works, Inc. v. Gunter, 689
5

F.3d 754 (7th Cir. 2012) and Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d
1146 (9th Cir. 2007), which held that businesses that displayed copyrighted
photos or videos on their websites did not infringe on the copyrights.
But this case is different. In both of those cases, the defendants’
websites acted as middlemen, pointing visitors to content hosted on other
websites. In Flava Works, the defendant’s website allowed customers to
bookmark videos that they found somewhere else on the internet. 689 F.3d at
756. When customers viewed bookmarked videos, they were viewing content
that was hosted elsewhere. Id. And in Perfect 10, Google allowed visitors to
search for images, and it would display the results, but the images themselves
were stored on another website. 508 F.3d at 1155–56. 1 In both cases, the
copyrighted images or videos were stored on servers hosting other websites that
were beyond the control of the defendants. Flava, 689 F.3d at 756; Perfect 10,
508 F.3d at 1155–56.
Here, Merchants’ website was not a middleman; its website displayed the
Photo without connecting its visitors to another website that hosted the Photo.
Unlike the defendants above, Merchants stored the Photo on servers it leased.
Dkt. 74-1 ¶¶ 20, 34. Indeed, Merchants admits that the Photo was “being
Technically, Google stored “thumbnail” versions (i.e. small versions with reduced
quality) of the images on its servers, but when these images were clicked, they took
users to the website that hosted the full-sized image. Perfect 10, 508 F.3d at 1155–56.
The Ninth Circuit concluded that displaying the thumbnails was a prima facie
infringement of the copyright owner’s display rights, but linking to the full-size images
was not. Id. at 1160–61.
1

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stored on its Website.” Dkt. 75 at 15. Furthermore, Merchants “had the right
and ability to control and supervise the content of its website.” Dkt. 26 ¶ 18.
Ms. Marsh had “the keys” to the website, allowing her to decide what images
visitors to the site could see. Dkt. 74-1 ¶¶ 11, 25. This allowed Ms. Marsh to
display the Photo or remove it entirely. See id. ¶¶ 47-48.
These facts make this case more like Batesville Servs., Inc. v. Funeral
Depot, Inc., No. 1:02-cv-1011-DFH-TA, 2004 WL 2750253, at *12 (S.D. Ind.
Nov. 10, 2004) (Hamilton, J.), in which the court rejected an argument similar
to the one Merchants makes here. There, the defendant hosted a website that
displayed copyrighted photos of caskets, but when the photos were clicked,
they took visitors to a different website that was authorized to display the
images. Id. at *1-2. The defendant argued that it did not infringe on any
copyrights because the photos were just hyperlinks. Id. at *12. The court
rejected this argument, holding that the defendant was responsible for the
infringement because it created the pages, paid for them, controlled them, and
made changes to them. Id.
So too here. Merchants paid for the website, paid for the server that
stored the Photo, controlled the content on the website, made changes to the
website, and even used the Photo with original content. Dkt. 74-1 ¶¶ 11, 20,
43. The Photo’s hyperlink was a part of Merchant’s website with an address
that included “merchantsbankofindiana.com.” Id. ¶ 35. This conduct is
sufficient to establish infringement.

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Merchants also argues that it is entitled to summary judgment because it
“never copied the Photo.” Dkt. 75 at 14. But a party can infringe on a
copyright holder’s rights by violating any of its exclusive rights. 17 U.S.C.
501(a). An infringement on any of these rights, not just the right to copy, can
support a claim for copyright infringement. See Flava Works, 689 F.3d at 760.
Display of a copyrighted photograph on a webpage can infringe on the
copyright holder’s exclusive rights. See Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146, 1160 (9th Cir. 2007); Goss Int’l Americas, Inc. v. A-Am. Mach. &
Assembly Co., No. 07-c-3248, 2007 WL 4294744, at *1-2 (N.D. Ill. Nov. 30,
2007). On this basis, Mr. Bell has been awarded summary judgment in other
cases in which businesses have posted his photos on their website without his
permission. See, e.g., Bell v. Turner, No. 1:15-cv-931-TWP-DKL, 2016 WL
1270221, at *1-2 (S.D. Ind. Mar. 31, 2016).
Finally, Merchants argues that it is entitled to summary judgment
because “Sonar, not Merchants, stored (uploaded) the [Photo] on the website
without Merchants knowing that Bell claimed rights to it.” Dkt. 75 at 2.
While the designated evidence supports Merchants’ lack of knowledge, liability
for copyright infringement exists even when the defendant “was not aware and
had no reason to believe that his or her acts constituted an infringement of
copyright.” 17 U.S.C. § 504(c)(2); Design Basics, LLC, 858 F.3d at 1099
(ownership and copying, not knowledge or intent, are the elements of an
infringement claim). Thus, “it is no defense to copyright infringement that the
infringer reasonably but mistakenly thought he had a license.” Douglass v.
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Hustler Magazine, Inc., 769 F.2d 1128, 1140 (7th Cir. 1985); see also Novelty,
Inc. v. RCB Distrib., Inc., No. 1:08-cv-0418-DFH-WTL, 2008 WL 2705532, at *4
(S.D. Ind. July 9, 2008) (“copyright infringements may occur unintentionally”).
Therefore, Mr. Bell is entitled to summary judgment on his claim that
Merchants infringed on his copyright.
C.

Was Merchants’ infringement willful?
Merchants has moved for summary judgment on the claim of willful

infringement. 2 The Copyright Act allows courts to award up to $150,000 in
statutory damages per infringement if the infringement was “willful.” 7 U.S.C.
§ 504(c)(2). The Act does not define “willful,” but the Seventh Circuit has held
that infringement is willful “if the infringer knows that its conduct is
an infringement or if the infringer has acted in reckless disregard of
the copyright owner’s right.” Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18
F.3d 502, 511 (7th Cir. 1994). In making this determination, “the trier of fact
may consider evidence that the defendant ignored the plaintiff’s notices about
copyright protection, did not seek advice of an attorney, and passed the matter
off as a nuisance.” Id. at 512. In sum, while actual knowledge is not required
for infringement to be willful, the defendants must know or have some reason
to know that their actions constituted infringement. Martin v. City of
Indianapolis, 4 F. Supp. 2d 808, 810 (S.D. Ind. 1998), aff’d, 192 F.3d 608 (7th
Cir. 1999).
Mr. Bell initially moved for summary judgment on the question of willfulness, dkt. 57
at 13-15, then stated that there are issues of fact on the question of willfulness and no
longer seeks summary judgment on that issue, dkt. 91 at 1, 8-9.

2

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For example, the court in Morganactive Songs v. K&M Fox Inc. held that a
defendant willfully infringed on a copyright when it knew it needed a license to
use copyrighted material and ignored “repeated warnings of potential liability.”
No. IP-00-1039-C-G/H, 2005 WL 3601973, at *8 (S.D. Ind. Mar. 29, 2005). In
contrast, the court in Boehm v. Zimprich denied a plaintiff summary judgment
on the question of willfulness after the defendants reproduced copyrighted
material but “thought they were authorized” to do so. 68 F. Supp. 3d 969, 979
(W.D. Wis. 2014).
Here, Ms. Marsh—the only Merchants employee who could modify
Merchants’ website—testified that she did not select the photos that were
stocked in the website’s media library. Dkt. 74-1 ¶¶ 11, 37-38. When she
reviewed the website, she had no reason to believe that the Photo infringed on
anyone’s copyright. Id. ¶¶ 49-50, 52. When Ms. Marsh had worked with web
developers in the past, the web developers owned or licensed the website’s
images; she thought Sonar did that here. Id. ¶¶ 50-51. And there was nothing
in the Photo itself, such as a watermark or copyright symbol, suggesting it was
copyrighted material. Id. ¶¶ 54-55. Finally, upon learning of the allegation of
infringement, Ms. Marsh immediately caused the Photo to be removed from the
media library and website. Dkt. 74-1 ¶¶ 47-49. Collectively, this evidence
demonstrates that Merchants did not know and had no reason to know that
the Indianapolis skyline Photo on the Merchants website infringed on Mr. Bell’s
copyright. Mr. Bell has not designated evidence from which a reasonable trier
of fact could find otherwise.
10

The only evidence Mr. Bell has designated to show willfulness is the
watermark statement that appeared on the page of Merchants’ website that
contained the Photo, but not on the Photo itself: “© Copyright 2017 Merchants
Bank. All Rights Reserved.” Dkt. 91 at 9-10. But Ms. Marsh’s Declaration
states that “[t]he purpose of the Merchants copyright language was to protect
the Website generally. Merchants did not intend to claim ownership of the
Photo or the Image.”

Dkt. 74-1 ¶ 57. Mr. Bell has not designated evidence

showing that Ms. Marsh’s sworn statement is not true. See Broad. Music, Inc.
v. CDZ, Inc., 724 F. Supp. 2d 930, 939 (C.D. Ill. 2010).
Mr. Bell contends that the existence of a copyright notice on a website
containing infringing material constitutes willful infringement, knowledge of
infringement, or reckless disregard for infringement. In support of this
argument he cites Bell v. Fischer, 1:18-cv-1570 RLY-MJD, Dkt. 22 ¶2 (S.D. Ind.
August 15, 2019) and Bell v. Patrick, 1:16-cv-1160-TWP-DML, Dkt. 18, p. 2-3
(S.D. Ind. April 9, 2018). But Fisher and Patrick are distinguishable. As
discussed above, Merchants has designated evidence that the copyright at the
bottom of the website was not intended to claim ownership of the copyrighted
material. There was no such designated evidence in Fisher or Patrick.
Considering the designated evidence in this case, the presence of the copyright
statement at the bottom of the website page does not support the inference that
Merchants knew that its conduct infringed or that it acted in reckless disregard
of Mr. Bell’s rights. Wildlife Exp. Corp., 18 F.3d at 511.

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In sum, Mr. Bell has not designated evidence showing that Merchants
willfully infringed on his copyright. Merchants’ motion for summary judgment
on this ground is GRANTED.
IV.
Conclusion
Mr. Bell’s motion for summary judgment on infringement is GRANTED.
Dkt. [56]. Merchants’ motion for summary judgment is DENIED IN PART, as
to infringement, and GRANTED IN PART, as to willfulness. Dkt. [74]. The
parties SHALL INFORM the Court by June 11, 2020 whether a damages
hearing will be required.
SO ORDERED.
Date: 4/27/2020

Distribution:
Richard N. Bell
BELL LAW FIRM
[e-mail]
Jason R. Delk
DELK MCNALLY LLP
[e-mail]
Maura K. Kennedy
THE LAW OFFICE OF MAURA K. KENNEDY, LLC
[e-mail]
David W. Patton
WOODEN & MCLAUGHLIN LLP (Indianapolis)
[e-mail]
Zachary Thomas Searcy
WOODEN MCLAUGHLIN, LLP
[e-mail]
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John D. Waller
WOODEN & MCLAUGHLIN LLP (Indianapolis)
[e-mail]

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