VHT, Inc. v. Zillow Group, Inc. et al

Filing 347

ORDER denying Defendant Zillow Group, Inc., and Zillow, Inc.'s 339 Motion for Judgment on the Pleadings; granting VHT, Inc.'s 343 Cross-Motion for partial summary judgment. The court further ORDERS the parties to submit a joint statement and proposed amended judgment as specified in Section III.D of this order. Signed by Judge James L. Robart. (PM)

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 1 of 37

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT SEATTLE

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VHT, INC.,

CASE NO. C15-1096JLR
ORDER ON THE PARTIES’
CROSS-MOTIONS

Plaintiff,

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v.
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ZILLOW GROUP, INC., et al.,
Defendants.

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I.

INTRODUCTION

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Before the court are: (1) Defendant Zillow Group, Inc., and Zillow, Inc.’s
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(collectively, “Zillow” or “Defendants”) motion for judgment on the pleadings, or in the
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alternative, partial summary judgment (Zillow Mot. (Dkt. # 339)); and (2) Plaintiff VHT,
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Inc.’s (“VHT”) cross-motion for partial summary judgment (VHT Mot. (Dkt. # 343).) 1
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VHT’s cross-motion for partial summary judgment includes VHT’s response to
Zillow’s motion for partial summary judgment. For simplicity’s sake, the court cites to the
parties’ motions respectively as “Zillow Mot.” and “VHT Mot.”

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Both motions are opposed. (See VHT Mot.; Zillow Reply (Dkt. # 345).) 2 The court has

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considered the motions, the parties’ submissions in support of and in opposition to the

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motions, the relevant portions of the record, and the applicable law. Being fully advised, 3

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the court construes Zillow’s motion for judgment on the pleadings as a portion of

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Zillow’s motion for partial summary judgment, DENIES Zillow’s motion for partial

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summary judgment, and GRANTS VHT’s motion for partial summary judgment.

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II.
A.

BACKGROUND

Factual Background
1. VHT’s and Zillow’s Businesses

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This action arises from Zillow’s use of VHT’s copyrighted real estate

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photographs. (See PTO (Dkt. # 244) at 2-3; Ex. 600 (Dkt. # 272) ¶ 2.) VHT is a real

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estate photography company that commissions photographs from professional

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photographers. (10/25/16 Hensley Decl. (Dkt. # 140) ¶ 2, Ex. A (“Balduf Dep.”) at

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Zillow filed a combined response to VHT’s cross-motion for partial summary judgment
and reply in support of Zillow’s motion for partial summary judgment. For simplicity’s sake, the
court cites to this filing as “Zillow Reply.”
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VHT and Zillow both request oral argument. (See Zillow Mot. at 1; VHT Mot. at 1.)
Oral argument is not necessary where the non-moving party suffers no prejudice. See Houston v.
Bryan, 725 F.2d 516, 517-18 (9th Cir. 1984); Mahon v. Credit Bureau of Placer Cty. Inc., 171
F.3d 1197, 1200 (9th Cir. 1999) (holding that no oral argument was warranted where “[b]oth
parties provided the district court with complete memoranda of the law and evidence in support
of their respective positions,” and “[t]he only prejudice [the defendants] contend they suffered
was the district court’s adverse ruling on the motion.”). “When a party has an adequate
opportunity to provide the trial court with evidence and a memorandum of law, there is no
prejudice [in refusing to grant oral argument].” Partridge v. Reich, 141 F.3d 920, 926 (9th Cir.
1998) (quoting Lake at Las Vegas Investors Grp., Inc. v. Pac. Malibu Dev. Corp., 933 F.2d 724,
729 (9th Cir. 1991)) (alterations in Partridge). Here, the issues have been thoroughly briefed by
the parties, and oral argument would not be of assistance to the court. See Local Rules W.D.
Wash. LCR 7(b)(4). Accordingly, the court DENIES the parties’ requests for oral argument.

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20:13-15; id. ¶ 3, Ex. B (“Bosch Dep.”) at 39:6-9, 51:9-52:8; id. ¶ 15, Ex. N (“VHT

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Contractor Agmt.”) at VHT005555-58.) VHT creates and curates photographs of

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residential real estate properties listed for sale and the licenses those photographs to real

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estate brokers and agents. (PTO at 5.) VHT’s clients, which include real estate

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brokerages and real estate agents, use VHT’s photographs to market their properties and

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listings. (Balduf Dep. at 20:18-21:2.) When a broker or agent requests that VHT obtain

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and license photos of a residential real estate property, VHT dispatches one of the

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photographers in the VHT Photographer Network to shoot photographs of that property.

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(Id.) VHT maintains its photographs in a database and licenses the photographs in its

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database either collectively or individually to third parties. (TAC (Dkt. # 123) ¶ 23.) A

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typical shoot results in approximately 16 photographs of a property. (Id. ¶ 27.)

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Customers pay on either a per-property or per-photograph basis. (Id.)

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Zillow operates Zillow.com, a large real estate website. (10/25/16 Kutner Decl.

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(Dkt. # 130) ¶ 2.) Since February 2013, Zillow’s website has included a content area

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called Zillow “Digs,” which is themed around the topic of home design and renovation.

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(Id.; see generally TAC.) Digs “includes a searchable set of images of home interiors

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classified by room type and tagged with information about the room contents, as well as

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‘boards’ where users can save and share images they are interested in.” (10/25/16 Kutner

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Decl. ¶ 4.)

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Zillow obtains the photographs that it uses on Digs from two main sources: (1)

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public records; and (2) real estate listings received from agents, brokers, and Multiple

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Listing Services (“MLSs”). (Id. ¶ 5.) Zillow contracts with each agent, broker, and MLS

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to clarify the terms under which Zillow may use the contents of each listing. (Id.) Some

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of those contracts restrict how Zillow may use the photos after a property is sold; Zillow

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calls these contracts “deciduous.” (Id. ¶ 6.) However, the majority of the contracts are

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“evergreen,” meaning they do not restrict Zillow’s ability to use data or images after a

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property sells. (Id.)

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2. Zillow’s Use of VHT’s Images

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In this lawsuit, VHT alleges that Zillow infringed upon 28,125 of VHT’s

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photographs (“the VHT Photos”). (See PTO at 2-3; Ex. 600 ¶¶ 6, 9-10; Summ. Image SS

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(Dkt. # 256-1); Final JIs (Dkt. # 275) at 20.) Zillow used 28,124—all but one—of the

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VHT Photos in conjunction with the Digs section of Zillow’s website. (See Summ.

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Image SS; Ex. 600 ¶ 11; Ex. 512 at Column N.) Zillow also used one of those 28,124

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VHT Photos in an email. (1/27/17 Trial Tr. (Dkt. # 291) at 98-100, 112; Ex. 293; Ex. 512

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at Row 17,744, Column AV.) 4 Zillow used the final VHT Photo exclusively in a blog

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post. (1/27/17 Trial Tr. at 100, 112; Ex. 243; Ex.512 at Row 28,127, Column AV.) 5

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All citations beginning with “Ex.” without reference to a declaration or other filing refer
to trial exhibits.
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Because of the voluminous number of VHT Photos at issue, the parties tried the case by
stipulating to the accuracy of an electronic spreadsheet that provided pertinent details regarding
all 28,125 VHT Photos. (See Ex. 600 ¶ 12; Ex. 512; see also Ex. 600 ¶ 13; Ex. 513 (displaying
each VHT Photo from VHT’s copyright registrations and the mirror image from Digs).)

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B.

Procedural Background

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1. VHT’s Copyright Applications and Registrations

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VHT maintains its images in a database. (See Rummage Decl. (Dkt. # 344) ¶ 2,

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Ex. A.) On a quarterly basis, VHT registers its images with the United States Copyright

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Office (the “Copyright Office”) through a group registration procedure that allows large

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volumes of photographs to be registered using a single form. (See id. Exs. 1-9.)

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VHT filed this lawsuit on July 8, 2015. (See id.) At the time VHT filed its initial

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complaint, it had filed applications to register photographs in its database created from

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the beginning of 2010 through the end of the first quarter of 2015. (Id.) Attached to

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VHT’s initial complaint are copies of nine applications VHT has submitted as of the time

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of its initial complaint. (See id. ¶ 27, Exs. 1-9.)

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Zillow answered VHT’s initial complaint on August 27, 2015. (See Answer (Dkt.

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# 22).) On September 22, 2015, the Copyright Office rejected eight of VHT’s ten

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pending applications for failure to establish the element of “compilation authorship”

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required for the form of registration that VHT had chosen. (See Crosby Decl. (Dkt.

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# 340) ¶ 3, Ex. 2 at TX405.) On that basis, the Copyright Office refused to register

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VHT’s images and closed its files. (Id.) VHT asked the Copyright Office to reconsider

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its decision in a December 14, 2015, letter. (See Crosby Decl. ¶ 2, Ex. 1 at TX 244.005.)

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On June 30, 2016, the Copyright Office granted VHT’s request to reconsider its

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determination. (See Crosby Decl. ¶ 4, Ex. 3 at TX 365.002.)

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VHT amended its complaint three times. (See FAC (Dkt. # 53); SAC (Dkt.

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# 105); TAC.) By mid-2016, the Copyright Office had reconsidered and approved 11 of

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VHT’s registrations. (See Rummage Decl. ¶ 2, Ex. A.) VHT filed its third amended

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complaint on October 24, 2016, and attached to it the relevant Copyright Office

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registrations. (See TAC ¶ 30, Ex. 15.) Each registration states that it is a “group

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registration for VHT, Inc. database” along with corresponding dates. (See id.) Each

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registration further states: “Basis of registration: compilation of photographs added to

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revised database.” (See id.) Listed as the “derivative work or compilation” is

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“[p]reviously published photographs” and under “material added to this work” is

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“[c]ompilation of photographs in unpublished database and photographs contained in the

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database.” (Id.) The effective date for five of the registrations was July 8, 2015; the rest

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have an effective date of January 27, 2016. (See id.)

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2. Pretrial Motions

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On October 25, 2016, Zillow moved for summary judgment on all five of VHT’s

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copyright infringement claims. (See Zillow MPSJ (Dkt. # 129).) VHT cross-moved for

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partial summary judgment as to liability on its copyright infringement claims and sought

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summary judgment on Zillow’s four counterclaims. (See VHT MPSJ (Dkt. ## 137

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(redacted); 141 (sealed)).) The court granted in part and denied in part the parties’

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motions. (See MSJ Order (Dkt. # 211) at 50.) The court granted VHT summary

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judgment on Zillow’s counterclaims, granted Zillow summary judgment on VHT’s

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infringement claims with respect to Zillow’s home details pages on its listing website,

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denied Zillow summary judgment on VHT’s infringement claims with respect to Zillow’s

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use of Digs, and made several other rulings. (See id. at 32, 38-41.)

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3. The Compilation Issue

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At trial, Zillow asked the court to determine whether 17 U.S.C. § 504(c)(1) limits

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VHT to a single award of statutory damages for all infringements of any number of

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images that VHT registered under an express claim of compilation in a single database.

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(See Prop. PTO (Dkt. # 218) at 6.) Under 17 U.S.C. § 504(c)(1), a party may elect to

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recover statutory damages instead of actual damages for copyright infringement. 17

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U.S.C. § 504(c)(1). A party that does so is entitled to a statutory damages award of

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between $750.00 and $30,000.00 “with respect to any one work.” Id. For the purposes

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of statutory damages, “all the parts of a compilation or derivative work constitute one

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work.” Id. In other words, if VHT’s images constitute a single “compilation,” then the

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images by definition constitute a single “work,” and VHT would be entitled on a single

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award of statutory damages for Zillow’s infringement of any or all of the images. On the

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other hand, if each image is a separate work, VHT would be entitled to statutory damages

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on a per-image basis.

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The court initially declined to rule on the question of whether VHT would be

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entitled to statutory damages on a per-image basis. (See 2/7/17 Trial Tr. (Dkt. # 294) at

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12.) Prior to issuing final jury instructions, the court ruled that VHT was entitled to a

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separate award of statutory damages for each image that has independent economic

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value. (See id. at 13.) The court relied on Columbia Pictures Television v. Krypton

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Broad. of Birmingham, Inc., 106 F.3d 284, 292 (9th Cir. 1997) (“Columbia Pictures

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I”), rev’d sub nom. Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998)).

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(See 2/7/17 Trial Tr. at 13.) Based on Columbia Pictures I and its progeny, the court

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determined that “the proper test to apply in analyzing whether each component is a

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separate work for purposes of statutory damages is whether each component has

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independent economic value.” (See id. at 16.) The court placed the question of

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independent economic value before the jury. (See Jury Instructions (Dkt. # 275) at 31

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(“Congress established statutory damages for each separate work infringed. Each VHT

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Photo that has independent economic value constitutes a separate work.”); Verdict Form

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(Dkt. # 281) at 5.)

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4. Trial and Verdict

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Following trial, the jury found that Zillow directly infringed 28,125 of VHT’s

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images. (Verdict Form at 1-2.) The jury also found that Zillow contributorily and

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vicariously infringed VHT’s copyrights, but because the verdict form instructed the jury

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not to double-count Zillow’s infringements, it is not clear how many copyrights the jury

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found Zillow indirectly infringed. (Id. at 2.) After rejecting Zillow’s affirmative

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defenses of license and fair use (id. at 3), the jury awarded actual damages of $2.84 per

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photograph, or $79,875.00 (id. at 4).

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The jury also awarded $8,247,300.00 in statutory damages. (Id. at 6.) The jury

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found that 19,312 images were eligible for statutory damages under 17 U.S.C.

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§ 594(c)(1), and that each of those 19,132 images had independent economic value. (Id.

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at 5:6-17.) Because some of the statutory and actual damages were duplicative (see id. at

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4:15-6:9), VHT elected to receive statutory damages for the 19,312 VHT Photos that

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were eligible for statutory damages (see Summ. Image SS at 1; Ex. 512 at Column AR)

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and actual damages for the remaining 8,813 VHT Photos (see Summ. Image SS at 1; Ex.

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512 at Column AR; Dam. Election (Dkt. # 286) at 1). Pursuant to the jury’s verdict and

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VHT’s damages election, the court entered judgment for VHT in the amount of

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$8,272,328.92. (See Judgment (Dkt. # 296).)

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5. Post-Trial Motions

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After trial, Zillow filed a motion for judgment notwithstanding the verdict or for a

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new trial. (See JNOV Mot. (Dkt. # 301).) The court partially granted Zillow’s motion,

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reversed in part the jury’s verdict, reduced VHT’s actual damages to $3,467.64, and

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reduced VHT’s statutory damages award to $4,050,400.00. (See 6/20/17 Order (Dkt. # 2)

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at 46.) The court entered a final judgment on July 10, 2017. (See Final Judgment (Dkt.

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# 322).)

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6. Appeal and Remand

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The parties cross-appealed issues stemming from partial summary judgment, the

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jury verdict, and judgment notwithstanding the verdict. See VHT, Inc. v. Zillow Grp.,

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Inc., 918 F.3d 723, 730 (9th Cir. 2019), cert. denied, 140 S. Ct. 122, 205 (2019). The

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Ninth Circuit affirmed (1) the court’s summary judgment in favor of Zillow on direct

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infringement of the Zillow’s listing platform photos; (2) the court’s judgment

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notwithstanding the verdict in favor of Zillow on 22,109 non-displayed photos and 2,093

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displayed but not searchable photos; (3) the court’s summary judgment in favor of VHT

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on 3,921 displayed, searchable Digs photos; and (4) the court’s judgment notwithstanding

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the verdict in favor of Zillow on secondary liability, both contributory and vicarious, on

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the Digs photos. Id. at 750. The Ninth Circuit reversed the court’s denial of judgment

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notwithstanding the verdict on the issue of willfulness and vacated the jury’s finding on

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willfulness. See id.

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Finally, the Ninth Circuit remanded for consideration of the issue of whether

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VHT’s photos used on Digs were part of a compilation or were individual “works.” Id. at

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747-48, 750. The Ninth Circuit instructed that determining whether the images at issue

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are part of a “compilation” is a “threshold damages question” and that “consideration of

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the independent economic value factor does not answer the question whether something

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is a compilation.” See id. at 747.

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7. The Fourth Estate Opinion
On March 4, 2019, 11 days before the Ninth Circuit issued its opinion in this case,

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the United States Supreme Court decided Fourth Estate Public Benefit Corp. v.

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Wall-Street.com, LLC, et al., ---U.S.---, 139 S. Ct. 881 (2019). Fourth Estate addressed

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the interpretation of 17 U.S.C. § 411(a), which states, in relevant part, that “no civil

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action for infringement of the copyright in any United States work shall be instituted until

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preregistration or registration of the copyright claim has been made.” See 17 U.S.C.

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§ 411(a). In a unanimous opinion, the Supreme Court resolved a circuit split and held

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that “‘registration . . . has been made’ within the meaning of 17 U.S.C. § 411(a) not when

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an application for registration is filed, but when the Register has registered a copyright

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after examining a properly filed application.” See id. at 892. Fourth Estate overturned

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the prior settled law in the Ninth Circuit, under which “receipt by the Copyright Office of

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a complete application satisfies the registration requirement of § 411(a).” See Cosmetic

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Ideas, Inc. v. IAC/Interactive Corp., 606 F.3d 612, 621 (9th Cir. 2010), overruled by

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Fourth Estate, 139 S. Ct. 881. Zillow’s motion for judgment on the pleadings at issue

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here is the first instance in which Zillow has raised a Fourth-Estate-based challenge to

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VHT’s claims. (See Zillow Reply at 10-13.)

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8. Post-Remand Procedure

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The parties filed a stipulated motion setting a briefing schedule for post-remand

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motions (see Briefing Mot. (Dkt. # 336)), which the court granted (see 11/27/19 Order

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(Dkt. # 338)). In accordance with that schedule, Zillow filed a motion for judgment on

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the pleadings based on Fourth Estate, or in the alternative, for partial summary judgment

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on the compilation issue. (See Zillow Mot.) VHT filed a combined opposition to

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Zillow’s motion and cross-motion for partial summary judgment on statutory damages.

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(See VHT Mot.) The court now considers the parties’ cross motions.

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III.

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ANALYSIS

The court first sets forth the legal standards applicable to the parties’ motions.

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The court next addresses Zillow’s motion for judgment on the pleadings because it raises

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a potential jurisdictional defect. The court then turns to the parties’ cross-motions on the

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compilation issue.

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A.

Legal Standards

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1. Summary Judgment

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Summary judgment is appropriate if the evidence shows “that there is no genuine

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dispute as to any material fact and the movant is entitled to judgment as a matter of law.”

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Fed. R. Civ. P. 56(a); see Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Galen v.

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Cty. of L.A., 477 F.3d 652, 658 (9th Cir. 2007). A fact is “material” if it might affect the

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outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A

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factual dispute is “‘genuine’ only if there is sufficient evidence for a reasonable fact

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finder to find for the non-moving party.” Far Out Prods., Inc. v. Oskar, 247 F.3d 986,

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992 (9th Cir. 2001) (citing Anderson, 477 U.S. at 248-49).

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The moving party bears the initial burden of showing there is no genuine dispute

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of material fact and that it is entitled to prevail as a matter of law. Celotex, 477 U.S. at

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323. If the moving party does not bear the ultimate burden of persuasion at trial, it can

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show the absence of such a dispute in two ways: (1) by producing evidence negating an

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essential element of the nonmoving party’s case, or (2) by showing that the nonmoving

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party lacks evidence of an essential element of its claim or defense. Nissan Fire &

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Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1106 (9th Cir. 2000). If the moving party

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bears the ultimate burden of persuasion at trial, it must establish a prima facie showing in

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support of its position on that issue. UA Local 343 v. Nor-Cal Plumbing, Inc., 48 F.3d

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1465, 1471 (9th Cir. 1994). That is, the moving party must present evidence that, if

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uncontroverted at trial, would entitle it to prevail on that issue. Id. at 1473. If the moving

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party meets its burden of production, the burden then shifts to the nonmoving party to

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identify specific facts from which a fact finder could reasonably find in the nonmoving

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party’s favor. Celotex, 477 U.S. at 324; Anderson, 477 U.S. at 250.

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The court is “required to view the facts and draw reasonable inferences in the light

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most favorable to the [nonmoving] party.” Scott v. Harris, 550 U.S. 372, 378 (2007)

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(internal quotation marks and citation omitted). The court may not weigh evidence or

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make credibility determinations in analyzing a motion for summary judgment because

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those are “jury functions, not those of a judge.” Anderson, 477 U.S. at 255. However,

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the nonmoving party “must do more than simply show that there is some metaphysical

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doubt as to the material facts . . . . Where the record taken as a whole could not lead a

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rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.”

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Scott, 550 U.S. at 380 (internal quotation marks omitted) (quoting Matsushita Elec.

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Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986)).

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2. Judgment on the Pleadings

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The standard for dismissing claims under Federal Rule of Civil Procedure 12(c) is

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“substantially identical” to the Rule 12(b)(6) standard set forth in Ashcroft v. Iqbal, 556

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U.S. 662, 678 (2009). Chavez v. United States, 683 F.3d 1102, 1008 (9th Cir. 2012)

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(internal quotation marks and citation omitted); see also Cafasso, U.S. ex rel. v. Gen.

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Dynamics C4 Sys., Inc., 637 F.3d 1047, 1054 n.4 (9th Cir. 2011) (“Although Iqbal

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establishes the standard for deciding a Rule 12(b)(6) motion, we have said that Rule 12(c)

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is functionally identical to Rule 12(b)(6) and that the same standard of review applies to

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motions brought under either rule.”) (internal quotation marks and citation omitted). This

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is because, “under both rules, a court must determine whether the facts alleged in the

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complaint, taken as true, entitle the plaintiff to a legal remedy.” Chavez, 683 F.3d at

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1008 (internal quotation marks and citation omitted).

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Rule 12(c) motions for judgment on the pleadings should be made “[a]fter the

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pleadings are closed—but early enough not to delay trial.” Fed. R. Civ. P. 12(c). Courts

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have discretion to accept extraneous matter and construe a motion for judgment on the

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pleadings as a motion for summary judgment. See Sirisup v. It’s Thai, L.L.C., No.

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CV-13-07246-DDP, 2015 WL 6181688, at *4 (C.D. Cal. Oct. 21, 2015), aff’d sub nom.

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716 F. App’x 739 (9th Cir. 2018).

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B.

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Zillow’s Motion for Judgment on the Pleadings
Zillow moves for judgment on the pleadings on the ground that Fourth Estate

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requires dismissal of VHT’s “remaining claims” 6 for failure to meet 17 U.S.C. § 411(a)’s

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registration requirement. (See Zillow Mot. at 12 (citing Fourth Estate, 139 S. Ct. 881).) 7

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Zillow further argues that the Copyright Office’s registration of VHT’s images after VHT

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filed suit—and VHT’s corresponding amendment of its complaint to include these

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registrations—does not remedy VHT’s failure to satisfy § 411(a). (See Zillow Mot. at

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13-14.)

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VHT does not dispute that it obtained registrations for its images after filing suit.

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(See generally VHT Mot.; VHT Reply.) VHT opposes Zillow’s motion for judgment on

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the pleadings on several grounds: (1) Zillow’s motion is procedurally improper because

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a Rule 12(c) motion is by definition a pre-trial motion; (2) Zillow cannot seek judgment

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on the pleadings because there are no longer operative pleadings in this case, given that

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the pretrial order superseded the operative pleadings; (3) Even if Zillow’s motion was

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Zillow is not explicit as to what claims it considers “remaining.” (See generally Zillow
Mot.) VHT’s copyright infringement claims have already come before a jury and Zillow’s
liability on those claims has been argued further in post-trial motions and on appeal. See supra
§ II.B. Although not explicit, Zillow appears to seek dismissal of those same copyright
infringement claims that have already been subject to judgment and appeal. Therefore, the court
construes Zillow’s motion as seeking dismissal of all of VHT’s copyright infringement claims
upon which Zillow was found liable in this case and dismissal of this case entirely.
7

22

The court cites the parties’ briefing with the page numbers provided by the court’s
electronic filing system.

ORDER - 14

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 15 of 37

1

procedurally proper, the Copyright Office registered VHT’s images prior to VHT’s third

2

amended complaint, which attached those registrations; (4) VHT’s right to recover on its

3

copyright claims is now the law of the case; (5) § 411(a)’s registration requirement is not

4

jurisdictional, but rather a “claim-processing rule”; and (6) Zillow waived any argument

5

that VHT filed this lawsuit prematurely. (See VHT Mot. at 19-29.) VHT further

6

contends that even if Zillow had preserved the issue, the proper remedy would not be

7

dismissal but rather to conform the pleadings to the evidence or permit an amendment

8

relating back to the original complaint. (See id. at 29.)

9

In reply, Zillow contends the court “cannot excuse” VHT’s failure to comply with

10

§ 411(a)’s registration requirement. (See Zillow Reply at 18.) Although not explicit,

11

Zillow’s argument that the court “cannot excuse” § 411(a)’s registration requirement

12

implies a jurisdictional challenge. If the court lacks jurisdiction to adjudicate VHT’s

13

claims, it must dismiss those claims regardless of the procedural posture of this case. See

14

Henderson ex rel. Henderson v. Shinseki, 562 U.S. 428, 434-35 (2011). Because

15

questions of jurisdiction are paramount, the court first analyzes the effect of Fourth

16

Estate and whether, as Zillow argues, Fourth Estate requires this court to dismiss VHT’s

17

copyright infringement claims. The court then turns to the parties’ remaining arguments,

18

including VHT’s procedural challenge to Zillow’s motion for judgment on the pleadings.

19

1. The Nature of Section 411(a)’s Registration Requirement

20

Section 411(a) provides that “no civil action for infringement of the copyright in

21

any United States work shall be instituted until . . . registration of the copyright claim has

22

been made in accordance with this title.” 17 U.S.C. § 411(a). Prior to Fourth Estate, a

ORDER - 15

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 16 of 37

1

circuit split existed on the question of whether registration “has been made” in

2

accordance with § 411(a) as soon as the claimant delivers the required application, copies

3

of the work, and fee to the Copyright Office (the “application approach”); or only after

4

the Copyright Office reviews and registers the copyright (the “registration approach”). 8

5

Fourth Estate, 139 S. Ct. at 886. Prior to Fourth Estate, the Ninth Circuit followed the

6

application approach. See Cosmetic Ideas, Inc., 606 F.3d at 621 (holding that registration

7

“has been made” under § 411(a) when the copyright claimant’s “complete application”

8

for registration is received by the Copyright Office). In Fourth Estate, the Supreme

9

Court opted for the registration approach. See 139 S. Ct. at 892.

10

Fourth Estate describes the registration requirement as “akin to an administrative

11

exhaustion requirement that the owner must satisfy before suing to enforce ownership

12

rights.” Id. at 887. 9 Fourth Estate further states that “[t]ime and again, then, Congress

13

has maintained registration as a prerequisite to suit.” Id. at 891. However, Fourth Estate

14

does not squarely address whether failure to meet the registration requirement mandates

15

dismissal in every case or whether a copyright claimant may amend its complaint to

16

include subsequently registered material. See id.; see also Izmo, Inc. v. Roadster, Inc.,

17

No. 18-CV-06092-NC, 2019 WL 2359228, at *2 (N.D. Cal. June 4, 2019).

18
19
20
21
22

8

Under either approach, once registered, copyright protection runs from the date of the
work’s creation. See, e.g., 17 U.S.C. § 106; Eldred v. Ashcroft, 537 U.S. 186, 195 (2003).
9

Fourth Estate also refers to the “limited circumstances” in which copyright owners may
file an infringement suit before undertaking registration. 139 S. Ct. at 888. Neither VHT nor
Zillow discuss these limited circumstances and neither argue that any of these limited
circumstances apply in this case. (See generally Zillow Mot; VHT Mot.; Zillow Reply; VHT
Reply.) Therefore, the court does not address them further.

ORDER - 16

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 17 of 37

1

The United States Supreme Court has held unmistakably that § 411(a)’s

2

registration requirement is non-jurisdictional and is instead a claim-processing

3

requirement. See Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 166 (2010) (“Section

4

411(a) thus imposes a type of precondition to suit that supports nonjurisdictional

5

treatment under our precedents.”) In Reed Elsevier, Inc., the Supreme Court held that

6

“Section 411(a)’s registration requirement is a precondition to filing a claim that does not

7

restrict a federal court’s subject-matter jurisdiction.” Id. at 157. “While perhaps clear in

8

theory, the distinction between jurisdictional conditions and claim-processing rules can

9

be confusing in practice.” Id. at 1243. The Reed Elsevier Court applied the Arbaugh test,

10

which is used to distinguish between jurisdictional requirements and “claim-processing”

11

requirements. Id. at 161. The Court noted that “jurisdiction” refers to a court’s

12

adjudicatory authority and speaks to “the courts’ statutory or constitutional power to

13

adjudicate the case” rather than to “the rights or obligations of the parties.” Id. at 160-61

14

(quoting Steel Co. v. Citizens for Better Env’t, 523 U.S. 83, 89 (1998); Landgraf v. USI

15

Film Prods., 511 U.S. 244, 274 (1994)). Under the Arbaugh test:

16
17
18
19
20

If the Legislature clearly states that a threshold limitation on a statute’s scope
shall count as jurisdictional, then courts and litigants will be duly instructed
and will not be left to wrestle with the issue. But when Congress does not
rank a statutory limitation on coverage as jurisdictional, courts should treat
the restriction as nonjurisdictional in character.
Arbaugh v. Y&H Corp., 546 U.S. 500, 515-16 (2006).
Applying Arbaugh, the Reed Elsevier court concluded that § 411(a) does not

21

clearly state that the registration requirement is jurisdictional. Reed Elsevier, Inc., 559

22

U.S. at 163. The Court further noted that it has treated as non-jurisdictional other

ORDER - 17

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 18 of 37

1

claim-processing requirements. See id. at 166 & n.6 (citing cases). Nevertheless, the

2

Reed Elsevier Court declined to address whether § 411(a)’s registration requirement is a

3

“mandatory precondition to suit that . . . district courts may or should enforce sua sponte

4

by dismissing copyright infringement claims involving unregistered works.” See id. at

5

171.

6

Whether the registration requirement is jurisdictional or non-jurisdictional is

7

significant in analyzing Zillow’s Fourth Estate-based arguments. If the registration

8

requirement is jurisdictional, Zillow cannot waive or forfeit objections to the

9

requirement. Additionally, the court would have an obligation to raise the defect sua

10

sponte, and a late-discovered defect might void VHT’s judgment on the merits. See

11

Henderson ex rel. Henderson, 562 U.S. at 434-35 (discussing the consequences of

12

whether a “procedural rule is ‘jurisdictional’”); see also Peter A. Devlin, Jurisdiction,

13

Exhaustion of Administrative Remedies, and Constitutional Claims, 93 N.Y.U. L. Rev.

14

1234, 1236 (2018). However, “a party may waive or forfeit the benefit of a

15

nonjurisdictional rule.” Paycom Payroll, LLC v. Richison, 758 F.3d 1198, 1203 (10th

16

Cir. 2014) (quoting Muskrat v. Deer Creek Pub. Sch., 715 F.3d 775, 784 (10th Cir.

17

2013)); see also Mount v. Johnson, 36 F. Supp. 3d 74, 80 (D.D.C. 2014) (noting that Title

18

VII exhaustion requirements are nonjurisdictional, and therefore, failure to exhaust must

19

be raised as an affirmative defense).

20

In addition to waiver, courts regularly create exceptions to non-jurisdictional

21

exhaustion requirements and other claim-processing requirements. See, e.g., McBride

22

Cotton & Cattle Corp. v. Veneman, 290 F.3d 973, 976 (9th Cir. 2002) (holding that the

ORDER - 18

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 19 of 37

1

exhaustion requirement of 7 U.S.C. § 6912(e) is not jurisdictional and excusing the

2

plaintiffs’ noncompliance); Douglas v. Donovan, 559 F.3d 549, 556 n.4 (D.C. Cir. 2009)

3

(“Because the exhaustion requirement, though mandatory, is not jurisdictional . . . we do

4

not decide whether Douglas adequately exhausted his administrative remedies.”); Hoeft v.

5

Tucson Unified Sch. Dist., 967 F.2d 1298, 1302-03 (9th Cir. 1992) (noting that the

6

Individuals with Disabilities Education Act’s exhaustion requirement “is not a rigid one,

7

and is subject to certain exceptions,” determined by “the general purposes of exhaustion

8

and the congressional intent behind the administrative scheme”).

9

Because § 411(a)’s registration requirement is not jurisdictional, the court rejects

10

Zillow’s arguments that the court “must” dismiss VHT’s claims and “cannot excuse” a

11

failure to comply. Before turning to whether the court should dismiss VHT’s claims—

12

and vacate the corresponding judgment—based on any defects in VHT’s compliance with

13

the registration requirement under Fourth Estate, the court addresses VHT’s procedural

14

objection to Zillow’s motion for judgment on the pleadings.

15

2. Procedural Propriety of Zillow’s Motion for Judgment on the Pleadings

16

VHT argues that Zillow’s motion for judgment on the pleadings is procedurally

17

improper because “there no longer are operative pleadings.” (VHT Mot. at 19 (citing

18

Wash. State Auto Dealers Ins. Tr. v. Aon Consulting, Inc., No. C07-1182 MJP, 2008 WL

19

4889680, at *1 (W.D. Wash. Nov. 12, 2008) (“Once the Court enters the final pretrial

20

order, that document will supersede the parties’ pleadings and will control the remainder

21

of this action.”)).) Zillow responds that its motion is proper because although VHT’s

22

pleadings have been superseded, those pleadings failed to show compliance with

ORDER - 19

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 20 of 37

1

§ 411(a)’s registration requirement, and therefore entitle Zillow to judgment on those

2

pleadings—even if inoperative. (See Zillow Reply at 13-14.) Zillow further argues that

3

regardless of the form in which it brings its motion, Zillow is justified in raising the

4

Fourth Estate issue now, and courts “routinely recast motions for judgment on the

5

pleadings as motions for summary judgment.” (See id. at 13 (citing Sirisup, 2015 WL at

6

*4 (converting a motion for judgment on the pleadings into a motion for summary

7

judgment).)

8

VHT’s argument is well-taken. The pretrial order in this case superseded the

9

pleadings (see PTO). Moreover, Rule 12(c) motions for judgment on the pleadings

10

should be made “[a]fter the pleadings are closed—but early enough not to delay trial.”

11

Fed. R. Civ. P. 12(c). Although the court agrees with VHT that a motion for judgment on

12

the pleadings is procedurally improper at this stage of the case, the court concludes that

13

Zillow is entitled to make its Fourth Estate-based arguments in another form. Zillow

14

could not have known about Fourth Estate at the time of trial because Fourth Estate was

15

decided after trial in this case. Zillow raised its Fourth Estate-based arguments in a

16

combined motion for judgment on the pleadings and motion for partial summary

17

judgment. (See Zillow Mot. at 5-12.) Moreover, Zillow suggests the court may construe

18

its motion for judgment on the pleadings as a motion for summary judgment (see Zillow

19

Reply at 13-14), and VHT does not respond to that suggestion in its reply brief (see

20

generally VHT Reply). Additionally, the court considers extraneous materials, including

21

VHT’s copyright registrations, in order to resolve the issue. Therefore, the court

22

//

ORDER - 20

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 21 of 37

1

construes Zillow’s motion as a motion for partial summary judgment on § 411(a)’s

2

registration requirement. See Sirisup, 2015 WL at *4.

3

3. Law of the Case

4

VHT contends that the law of the case doctrine precludes dismissal of its already

5

adjudicated claims based on the law of the case doctrine. (See VHT Mot. at 20-24.)

6

“Under the doctrine, a court is generally precluded from reconsidering an issue

7

previously decided by the same court, or a higher court in the identical case.” United

8

States v. Lummi Nation, 763 F.3d 1180, 1185 (9th Cir. 2014). “For the doctrine to apply,

9

the issue in question must have been decided explicitly or by necessary implication in the

10

previous disposition.” Id. However, “[t]he law of the case doctrine expresses the

11

practice of courts generally to refuse to reopen that which has been decided, and is not a

12

limitation of the courts’ power.” Merritt v. Mackey, 932 F.2d 1317, 1320 (9th Cir. 1991).

13

The doctrine is discretionary, not mandatory. See id. (citing United States v. Houser, 804

14

F.2d 565, 567 (9th Cir. 1986)); see also United States v. Mills, 810 F.2d 907, 909 (9th

15

Cir. 1987); Milgard Tempering, Inc. v. Selas Corp. of Am., 902 F.2d 703, 715 (9th Cir.

16

1990). A court properly exercises its discretion to reconsider an issue previously decided

17

in only three instances: (1) the first decision was clearly erroneous and would result in

18

manifest injustice; (2) an intervening change in the law has occurred; or (3) the evidence

19

on remand was substantially different. Milgard Tempering, Inc., 902 F.2d at 715.

20

Because Fourth Estate was decided after trial, and Zillow did not challenge

21

VHT’s conformance with § 411(c)’s registration requirement, the court has not “decided

22

explicitly” whether VHT complied with § 411(a) when it instituted this lawsuit.

ORDER - 21

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 22 of 37

1

However, because § 411(a) is a pre-filing requirement, the fact that this case made it to

2

trial implies a decision that VHT either complied with § 411(a) or was excused from

3

compliance. See Lummi Nation, 763 F.3d at 1185. Accordingly, the court applies the

4

law of the case doctrine and concludes that VHT’s compliance with—or excusal from

5

compliance with—§ 411(a) is the law of the case.

6

The court may still exercise its discretion to reconsider the judgment in this case

7

on VHT’s copyright claims if Fourth Estate constitutes an “intervening change in law.”

8

Milgard Tempering, Inc., 902 F.2d at 715. The court should only do so, however, “where

9

an intervening decision of a higher tribunal clearly demonstrates that the prior decision is

10

wrong.” Pediatric Specialty Care, Inc. v. Arkansas Dep’t of Human Servs., 443 F.3d

11

1005, 1013 (8th Cir. 2006), judgment vacated in part on other grounds sub nom. Selig v.

12

Pediatric Specialty Care, Inc., 551 U.S. 1142 (2007). The court concludes that Fourth

13

Estate is not an intervening change in law with respect to VHT’s copyright claims in this

14

case because Fourth Estate was decided after trial and judgment but before the appellate

15

opinion in this case, and the issue was not raised on appeal. See Merritt, 932 F.2d at

16

1320; United States v. Scrivner, 189 F.3d 825, 828 (9th Cir. 1999).

17

4. Excusal

18

Even if the law of the case doctrine did not apply here, and assuming Zillow did

19

not waive its objection to § 411(a)’s registration requirement, the court would excuse the

20

requirement in this narrow instance. See, e.g., Paycom Payroll, LLC, 758 F.3d at 1203

21

(10th Cir. 2014) (“Generally, a party may waive or forfeit the benefit of a

22

nonjurisdictional rule.”) (quoting Muskrat, 715 F.3d at 784; Hoeft, 967 F.2d at 1303.

ORDER - 22

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 23 of 37

1

Here, the purposes behind § 411(a)’s requirement would not be served by vacating

2

the final judgment and dismissing this case in its entirety. See Hoeft, 967 F.2d at 1303

3

(analyzing whether to apply exceptions to a statutory exhaustion requirement by

4

determining whether application of that requirement will “further the general purposes of

5

exhaustion and the congressional intent behind the administrative scheme”). Exhaustion

6

requirements serve twin purposes to (1) protect agency autonomy and (2) promote

7

judicial efficiency. See Weinberger v. Salfi, 422 U.S. 749, 765-66 (1975) (“Exhaustion is

8

generally required as a matter of preventing premature interference with agency

9

processes, so that the agency may function efficiently and so that it may have an

10

opportunity to correct its own errors, to afford the parties and the courts the benefit of its

11

experience and expertise, and to compile a record which is adequate for judicial

12

review.”). Neither of these purposes would be served by dismissal here. First, VHT has

13

already obtained registrations for the images at issue, and dismissal would not require

14

VHT to interact with the Copyright Office whatsoever in order to refile its claims. (See

15

supra § II.B.) Second, dismissal would result in a massive waste of judicial resources.

16

The parties have litigated this case for five years through dispositive motions, trial,

17

post-trial motions, an appeal, and now a remand. (See id.)

18

At least one other court has already declined to dismiss copyright infringement

19

claims in cases that have advanced significantly, despite Fourth Estate’s intervention. In

20

Schmidt v. Baldy, No. CV169368DSFAGRX, 2019 WL 8219486, at *1 (C.D. Cal. June

21

11, 2019), the Central District of California declined to dismiss a defendant’s copyright

22

infringement counterclaim after Fourth Estate was issued just weeks before trial. That

ORDER - 23

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 24 of 37

1

court noted that “the Supreme Court [in Fourth Estate] did not state that dismissal was

2

the only remedy.” Id. Here, this case has progressed far beyond Schmidt relative to the

3

time the defendant raised a Fourth-Estate-based objection.

4

True, several courts have granted motions to dismiss copyright infringement

5

claims filed before Fourth Estate based on the failure to obtain copyright registrations.

6

See, e.g., Izmo, Inc. v. Roadster, Inc., No. 18-CV-06092-NC, 2019 WL 2359228, at *2

7

(N.D. Cal. June 4, 2019); UAB “Planner 5D” v. Facebook, Inc., No.

8

19-CV-03132-WHO, 2019 WL 6219223, at *7 (N.D. Cal. Nov. 21, 2019); Xclusive-Lee,

9

Inc. v. Hadid, No. 19-CV-520-PKCCLP, 2019 WL 3281013, at *4 (E.D.N.Y. July 18,

10

2019); Imagize LLC v. Ateknea Sols. Hungary KFT, No. 18-CV-01098-RS, 2019 WL

11

3068345, at *3 (N.D. Cal. July 12, 2019). However, none of these cases progressed as

12

far as this one at the time of dismissal. Zillow fails to cite to any case in which a court

13

dismissed copyright infringement claims based on Fourth Estate after a trial on the

14

merits, a final judgment, an appeal, and a remand. The court declines to do so here. 10

15
10

16
17
18
19
20
21
22

The parties also dispute whether amending a complaint “cures” a defect with § 411(a)’s
registration requirement. (See VHT Mot. at 19; Zillow Reply at 14-18.) District courts are split
on this question, although the majority of courts hold that amendment does not cure a defect.
See, e.g., Malibu Media, LLC v. Doe, No. 18-CV-10956 (JMF), 2019 WL 1454317, at *2
(S.D.N.Y. Apr. 2, 2019) (“Plaintiff’s argument would make a meaningless formality out
of Fourth Estate’s requirement that an application be approved prior to filing suit. Were it
correct, a plaintiff could file suit at any time, notwithstanding Section 411(a)’s precondition, and
simply update the complaint when registration finally occurred.”); cf. Imagize LLC v. Ateknea
Sols. Hungary KFT, No. 18-CV-01098-RS, 2019 WL 3068345, at *3 (N.D. Cal. July 12, 2019)
(dismissing complaint for failure to allege compliance with § 411(a)’s registration requirement
with leave to amend). That this question is largely moot here is further reason to excuse strict
compliance with § 411(a)’s requirement as interpreted by Fourth Estate. Here, VHT already
amended its complaint to include allegations that it holds registrations for the images at issue,
and that amended complaint was further superseded by the pretrial order. Therefore, the
question of whether to allow amendment is not before the court. Moreover, the parties stipulated

ORDER - 24

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 25 of 37

1
2

C.

Compilation and Statutory Damages
The parties cross-move for partial summary judgment on the issue of statutory

3

damages. (See Zillow Mot. at 15-21; VHT Mot. at 24-46.) Zillow contends that VHT’s

4

images constitute a “compilation” under 17 U.S.C. § 504(c)(1) and therefore a single

5

“work” for statutory damages purposes. (See Zillow Mot. at 15-21.) On that ground

6

Zillow contends that VHT is limited to one award of statutory damages for all remaining

7

images at issue. (See id.) VHT argues that the images do not comprise a “compilation”

8

and seeks judgment as a matter of law that VHT is entitled to a separate statutory

9

damages award for each remaining image. (See VHT Mot. at 24-46.)

10

The parties diverge in their interpretations of the Ninth Circuit’s opinion with

11

respect to the compilation question. Zillow focuses largely on the registration status of

12

VHT’s images and contends that the images’ independent economic value is “irrelevant”

13

to the compilation issue. (See Zillow Mot. at 15-23.) VHT, on the other hand, argues

14

that the images are separate works because they were separately infringed and contends

15

that separate statutory damages awards are appropriate even though it registered its

16

images as part of a “compilation” with the Copyright Office. (VHT Mot. at 38-46.)

17

The court proceeds with its analysis of the compilation issue as follows. First, the

18

court briefly reviews the relevant statutory text regarding compilations and statutory

19

damages. Second, the court reviews its prior analysis of the statutory damages question.

20
21
22

in their proposed pretrial order—eventually entered by the court, superseding the pleadings—that
“[t]he United States Copyright Office has issued copyright registrations to VHT for 27,358 of the
photographs that are the subject of this action.” (See Prop. PTO at 5; PTO at 5.)

ORDER - 25

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 26 of 37

1

Third, the court analyzes the Ninth Circuit’s opinion in this case regarding the proper test

2

for “compilation.” Fourth, the court reconciles the Ninth Circuit’s opinion here with

3

earlier Ninth Circuit authority on which the court previously relied. Finally, based on the

4

statutory text and the court’s reconciliation of these Ninth Circuit authorities, the court

5

analyzes whether VHT’s images in this case constitute a “compilation.”

6

1. Statutory Damages Under the Copyright Act

7

Under the Copyright Act, a party may elect to receive statutory damages in lieu of

8

actual damages for all infringements involved in the action “with respect to any one

9

work.” See 17 U.S.C. § 504(c)(1). In relevant part, 17 U.S.C. § 504(c)(1) provides:

10

[T]he copyright owner may elect, at any time before final judgment is
rendered, to recover, instead of actual damages and profits, an award of
statutory damages for all infringements involved in the action, with respect
to any one work, for which any one infringer is liable individually, or for
which any two or more infringers are liable jointly and severally, in a sum of
not less than $750 or more than $30,000 as the court considers just.

11
12
13

Id. Section 504(c)(1) further provides that “[f]or the purposes of this subsection, all the
14
parts of a compilation or derivative work constitute one work.” Id.
15
A “work” is undefined in the statutory scheme. See Sullivan v. Flora, Inc., 936
16
F.3d 562, 567 (7th Cir. 2019). “Compilation” is defined as “a work formed by the
17
collection and assembling of preexisting materials or of data that are selected,
18
coordinated, or arranged in such a way that the resulting work as a whole constitutes an
19
original work of authorship.” 17 U.S.C. § 101.
20
//
21
//
22

ORDER - 26

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 27 of 37

1

2. The Court’s Prior Analysis

2

Prior to trial, Zillow asked the court to determine whether 17 U.S.C. § 504(c)(1)

3

limits VHT to a single award of statutory damages for all infringements of any number of

4

images that VHT registered under an express claim of compilation in a single database.

5

(See Prop. PTO at 6.) VHT asked the court to determine whether it is entitled to separate

6

statutory damages awards for each image that has independent economic value. (See id.)

7

The court analyzed the statutory damages question on the record. (See 2/7/17

8

Trial Tr. at 11-17.) After a review of controlling Ninth Circuit authority, the court

9

determined that it must apply the “independent economic value” test to determine

10

whether VHT’s images constitute separate “works.” (See id.) Specifically, the court

11

relied on Columbia Pictures I and its progeny. (See id. (citing Columbia Pictures I, 106

12

F.3d at 295).) In Columbia Pictures I, the Ninth Circuit determined that the “proper test

13

to apply in analyzing whether [each material] is a separate work” for purposes of

14

statutory damages is whether each material “has an independent economic value.” See

15

Columbia Pictures I at 295. This court also noted that other circuits had rejected the

16

“independent economic value” test. (See 2/7/17 Trial Tr. at 16 (citing Bryant v. Media

17

Right Prods., Inc., 603 F.3d 135, 142 (2d Cir. 2010)).) Further, other federal circuit

18

courts had recognized the Ninth Circuit’s application of the “independent economic

19

value” test. See, e.g., Bryant, 603 F.3d at 142 (noting that three other circuits have

20

adopted the “independent economic value” test, including the Ninth Circuit, and citing

21

Columbia Pictures I, 106 F.3d at 295).

22

//

ORDER - 27

Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 28 of 37

1

The court also relied on Columbia Pictures Television, Inc. v. Krypton

2

Broadcasting of Birmingham, Inc., 259 F.3d 1186, 1193 (9th Cir. 2001) (“Columbia

3

Pictures II”). (See 2/7/17 Trial Tr. at 16-17.) Columbia Pictures II noted that every

4

circuit to address the issue of separate statutory damages has held that “separate

5

copyrights are not distinct works [for the purpose of statutory damages] unless they can

6

live their own copyright life,” and stating that “[a]s applied to episodes of a television

7

series, this test requires us to determine whether each episode has an independent

8

economic value and is, in itself, viable.” See Columbia Pictures II, 259 F.3d at 1193.

9

Columbia Pictures II states that the Ninth Circuit “adopted this test” for what constitutes

10
11

a “work.” Id.
Based on this authority, the court concluded that the independent economic value

12

test was the appropriate measure of whether VHT is entitled to separate statutory

13

damages for each of its images. (See 2/7/17 Trial Tr. at 17.) The court declined to “veer

14

from established and unqualified precedent based on an insignificant difference in

15

registration format and an equivocal Copyright Office interpretation that can be

16

reconciled with that precedent.” (See id.)

17

3. The Ninth Circuit’s Opinion

18

The Ninth Circuit opinion in this case reads Columbia Pictures I and its progeny

19

differently. Instead of a “test,” the Ninth Circuit reads Columbia Pictures II to hold that

20

the question of independent economic value “informs our analysis of whether the photo

21

or episode is a work, though it is not a dispositive factor.” See VHT, Inc., 918 F.3d at

22

747 (citing Columbia Pictures II, 259 F.3d at 1193) (emphasis added). Moreover, the

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1

Ninth Circuit declared that “consideration of the independent economic value factor does

2

not answer the question whether something is a compilation” under 17 U.S.C. § 101.

3

VHT, Inc., 918 F.3d at 747. In other words, “independent economic value” is merely one

4

factor in determining whether something is a separate “work,” and does not resolve

5

whether something is a “compilation.”

6

The Ninth Circuit held that “[w]hether various VHT photo collections comprise

7

one or more compilations is a threshold damages question.” See id. The Ninth Circuit

8

further noted that “[t]hough the registration label is not controlling, it may be considered

9

by the court when assessing whether a work is a compilation.” Id. at 748. The Ninth

10

Circuit emphasized that “[u]ltimately, what counts is the statutory definition.” Id. The

11

Ninth Circuit therefore remanded to this court “for further proceedings as to whether the

12

VHT photos remaining at issue were a compilation.” Id.

13

4. Reconciliation with Columbia Pictures I and Its Progeny

14

Now, the court must reconcile the Ninth Circuit’s opinion with Columbia Pictures

15

I and its progeny with respect to (1) the role of the “independent economic value” test;

16

and (2) the interaction between “work” and “compilation.”

17
18

a. Independent Economic Value
First, the Ninth Circuit concludes that “the question of whether something . . . has

19

‘independent economic value’ . . . is not a dispositive factor” as to whether something is a

20

“work” for the purpose of statutory damages. See id. at 747. The Ninth Circuit cites

21

Columbia Pictures II, 259 F.3d at 1193, in support of this conclusion. Columbia Pictures

22

II states that “every circuit to address the issue has held that ‘separate copyrights are not

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1

distinct works unless they can ‘live their own copyright life,’” Columbia Pictures II, 259

2

F.3d at 1193 (quoting Walt Disney Co. v. Powell, 897 F.2d 565, 569 (D.C. Cir.

3

1990)) (additional internal quotation omitted), and that as applied to episodes of a

4

television series, “this test requires us to determine whether each episode ‘has an

5

independent economic value and is, in itself, viable,’” see id. (emphasis added) (quoting

6

Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1117 (1st Cir. 1993) (internal

7

citation omitted). Columbia Pictures II goes on: “We adopted this test for what

8

constitutes a ‘work’ in a prior appeal of this case.” Id.

9

In addition to Columbia Pictures II, Columbia Pictures I holds that “the proper

10

test to apply in analyzing whether each episode is a separate work” is whether the

11

episodes have “independent economic value.” See Columbia Pictures I, 106 F.3d at 295.

12

Moreover, other circuits view the Ninth Circuit as having adopted the independent

13

economic value “test.” See, e.g., Bryant, 603 F.3d at 142 (noting that three other circuits

14

have adopted the “independent economic value” test, including the Ninth Circuit, and

15

citing Columbia Pictures I, 106 F.3d at 295).

16

Nevertheless, the Ninth Circuit now clarifies that “the question of whether

17

something . . . has ‘independent economic value’ . . . is not a dispositive factor” as to

18

whether something is a “work” for the purpose of statutory damages. See VHT, Inc., 918

19

F.3d at 747. Thus, although the court will consider the “independent economic value” of

20

the VHT Photos, in fidelity to the Ninth Circuit’s opinion here, it will not consider this

21

factor as dispositive.

22

//

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1

b. Relationship Between “Work” and “Compilation”

2

Second, the Ninth Circuit concludes that “consideration of the independent

3

economic value factor does not answer the question whether something is a compilation.”

4

See VHT, Inc., 918 F.3d at 747. Nevertheless, if Columbia Pictures I and Columbia

5

Pictures II are to be given effect, although independent economic value may not be

6

dispositive of the issue, it must at least weigh in favor of finding that that item is a

7

distinct “work.” If VHT’s images each are distinct “works” for statutory damages

8

purposes (possibly by virtue of having, in part, independent economic value), it would

9

appear that they cannot be a “compilation,” because a “compilation” is defined in the

10

statute as a single “work” for statutory damages purposes. See 17 U.S.C. § 504(c)(1).

11

Moreover, this court has been unable to locate a case that draws a bright-line

12

distinction between the question of whether something is a “compilation” and whether

13

something is a single “work” for the purpose of statutory damages. Courts generally treat

14

these as the same question in an analysis under 17 U.S.C. § 504(c)(1), and collapse them

15

into a single inquiry regarding whether materials are single or separate works for the

16

purposes of statutory damages. See, e.g., Columbia Pictures I, 106 F.3d at 292;

17

Columbia Pictures II, 259 F.3d at 1193; Bryant, 603 F.3d at 142 (comparing the Second

18

Circuit’s test for “compilation” directly with the Ninth Circuit’s “independent economic

19

value” test for “work”); Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1180 (9th Cir.

20

2012) (holding that each wedding photo on a disk is a separate “work” and the set of

21

photos is not a “compilation” because each photo “has an independent economic value”)

22

(quoting Columbia Pictures II, 259 F.3d at 1193)). Thus, although this court is mindful

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1

of the Ninth Circuit’s instruction that “the independent economic value factor does not

2

answer the question whether something is a compilation,” see VHT, Inc., 918 F.3d at 747,

3

the court concludes that independent economic value is still one factor that is relevant to

4

its analysis.

5
6

c. Reconciliation
As this court is bound by the Ninth Circuit’s opinions in this case and in the

7

Columbia Pictures line of cases, the court must reconcile the two. First, the court takes

8

heed of the Ninth Circuit’s instruction that “[u]ltimately, what counts is the statutory

9

definition” of “compilation.” VHT, Inc., 918 F.3d at 748. Thus, the court reads the Ninth

10

Circuit’s instruction and the statutory text to require the court to consider how VHT’s

11

images are “selected, coordinated, or arranged” in analyzing whether they constitute a

12

compilation.

13

For further guidance, the court turns to Bryant, 603 F.3d at 142. 11 In Bryant, the

14

Second Circuit analyzed whether the songs on an album each constituted separate works

15

or a single compilation. See id. at 140. The Bryant court focused on whether “the

16

plaintiff—the copyright holder—issued its works separately, or together as a unit.” Id. at

17

141. The court noted that in two prior cases, a series of television shows and a series of

18

songs were not “compilations” because the plaintiff issued each episode or show

19

separately. Id. (citing Twin Peaks Prods., Inc. v. Publ’ns. Int’l Ltd., 996 F.2d 1366, 1381

20
11

21
22

The Ninth Circuit cited Bryant for the proposition that “[t]he question of whether a
work constitutes a ‘compilation’ for the purposes of statutory damages pursuant to Section
504(c)(1) of the Copyright Act is a mixed question of law and fact.” See VHT, Inc., 918 F.3d at
747 (citing Bryant, 603 F.3d at 140).

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(2d Cir. 1993); WB Music Corp. v. RTV Comm. Grp., Inc., 445 F.3d 538, 541 (2d Cir.

2

2006)). The Bryant court then contrasted those facts from the facts before it, in which the

3

copyright holders decided to issue their songs in album form and concluded that the

4

albums constituted “compilations.” See id.

5

The court finds the Bryant court’s method of determining whether something is a

6

“compilation” persuasive. Bryant’s focus on how the copyright holder arranges its own

7

materials hews closely to the statutory language that addresses how the materials at issue

8

are “selected, coordinated, or arranged.” See 17 U.S.C. § 101. Moreover, looking to the

9

form in which the copyright holder issues its materials helps reconcile the Ninth Circuit’s

10

opinion in this case with the Columbia Pictures line of cases. Under this analysis, it may

11

be possible for materials to have independent economic value if issued separately (and

12

therefore potentially constitute separate “works”), but in fact not be issued separately

13

(and therefore constitute a compilation).

14

Applying Bryant’s analysis is not a perfect solution. Tensions remain between the

15

definition of “work” and the definition of “compilation.” Nevertheless, the court finds

16

the most faithful reading of the Ninth Circuit’s opinion here to be that Columbia Pictures

17

I and Columbia Pictures II are about “works,” not “compilations.” If that is the case,

18

even though Bryant distinguishes its test from that in Columbia Pictures I and Columbia

19

Pictures II, the Bryant test can be reconciled by interpreting it as defining a

20

“compilation,” separate and apart from “work.”

21
22

Bryant’s approach is also consistent with one potential reading of Monge. See
Monge, 688 at 1180. In Monge, the Ninth Circuit analyzed the question of “work” and

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1

“compilation” together. See id. (concluding that each photo on a disk was a separate

2

work and concluding in the following sentence that “[i]n sum, there is no compilation.”).

3

However, the Monge court reviewed the statutory definition of compilation and

4

concluded that a series of images on a disk were not “selected, coordinated, or arranged”

5

to create “an original work of authorship.” Id.

6

Finally, the court pays heed to the Ninth Circuit’s instruction that “[t]hough the

7

registration label is not controlling, it may be considered by the court when assessing

8

whether a work is a compilation.” VHT, Inc., 928 F.3d at 748. Therefore, the court will

9

consider VHT’s images’ registration label insofar as it provides guidance with respect to

10

how VHT’s images are “selected, coordinated, or arranged” when VHT issues those

11

images. See 17 U.S.C. § 101.

12

5. Application

13

Zillow argues that VHT’s images are a “compilation” because they are part of

14

VHT’s master photo database and because the Copyright Office determined that VHT’s

15

database is a compilation. (See Zillow Mot. at 15.) VHT responds that the question is

16

not whether it stores its photos in a database, but rather whether its photos “used on Digs”

17

are part of a compilation. (See VHT Mot. at 34 (citing VHT, Inc., 918 F.3d at 747).) In

18

other words, VHT argues that the question is whether the “works infringed” make up a

19

compilation or not. (See id. at 34-35.)

20

The court agrees with VHT. VHT stores its images in a database and registers the

21

database as well as its individual images. However, VHT’s organization of its images

22

prior to issuance does not answer the question of how VHT’s images are organized or

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1

arranged when issued. See Bryant, 603 F.3d at 142; see also Monge, 688 F.3d at 1180

2

(holding that individual wedding images on a disk did not constitute a “compilation”). In

3

fact, VHT licenses its images on a per-image or per-property basis. Thus, VHT’s images

4

in its database are more akin to the television episodes in Twin Peaks than the collection

5

of songs on an album in Bryant. Compare Twin Peaks Prods., Inc., 996 F.2d at 1381,

6

with Bryant, 603 F.3d at 142. True, the fact that VHT group-registers its images as

7

“compilations” weighs in favor of a “compilation” finding. See VHT, Inc., 928 F.3d at

8

748. However, this factor is not controlling (see id.), and the court finds it outweighed by

9

the form in which VHT issues its images.

10

Finally, to the extent the images’ independent economic value remains a factor to

11

consider in the “compilation” analysis, see supra § III.C.4.b, the court concludes, based

12

on the jury’s finding, that this factor weighs against finding a “compilation.” 12 (See

13

Verdict Form at 5.)

14

Therefore, the court concludes as a matter of law that VHT’s database does not

15

constitute a “compilation” under 17 U.S.C. § 101. Accordingly, the court DENIES

16

Zillow’s motion for partial summary judgment on the compilation issue, and GRANTS

17

VHT’s motion for partial summary judgment on the same issue.

18

//

19

//

20

//

21
22

12

The court notes, however, that even if it did not consider the independent economic
value factor, it would still conclude that VHT’s database does not constitute a compilation under
17 U.S.C. § 101.

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Case 2:15-cv-01096-JLR Document 347 Filed 05/08/20 Page 36 of 37

1

D.

2

Order Regarding Remaining Issues in This Case
Having concluded that the court will not dismiss this case on Fourth Estate

3

grounds, and that VHT’s database is not a “compilation” as a matter of law, the court

4

ORDERS the parties to submit the following:

5

(1) A joint statement, not to exceed ten (10) pages, that includes (a) the parties’

6

position(s) as to the remaining issues left for adjudication in this case; and (b) if the

7

parties believe any issues remain that are not addressed by an amended judgment, the

8

parties’ proposal for resolving those remaining issues; and

9

(2) A proposed amended judgment that accounts for the Ninth Circuit’s reversal of

10

the court’s denial of Zillow’s motion notwithstanding the verdict on the issue of

11

willfulness and vacating of the jury’s willfulness determination (see 9th Cir. Op., 918

12

F.3d at 750).

13

The parties should confer and attempt to reach agreement on both of the above

14

items. If the parties are unable to reach agreement, the parties may include separate

15

statements. The parties shall file their statement and their proposed amended judgment

16

no later than fourteen days from the date of this order.

17

//

18

//

19

//

20

//

21

//

22

//

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1
2

IV.

CONCLUSION

For the foregoing reasons, the court DENIES Zillow’s motion for judgment on the

3

pleadings or for partial summary judgment (Dkt. # 339); and GRANTS VHT’s motion

4

for partial summary judgment (Dkt. # 343). The court further ORDERS the parties to

5

submit a joint statement and proposed amended judgment as specified in Section III.D of

6

this order.

7

Dated this 8th day of May, 2020.

8

10

A

11

JAMES L. ROBART
United States District Judge

9

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ORDER - 37