By James Juo.

The incidental appearance of a trivial portion of a large visual work, such as an outdoor mural, in the background of a photograph may be de minimis use that does not give rise to copyright infringement. “Typically, courts examine the de minimis defense first to determine if any actionable copying has occurred. . . . [that is] if the de minimis threshold for actionable copying has been exceeded.” Gordon v. Nextel Communications, 345 F.3d 922, 923–24 (6th Cir. 2003) (citations omitted); see also 3 Patry on Copyright § 9:60 “Copying of a material amount of expression—De minimis uses” (noting the de minimis defense is “a negation of an element of plaintiff's prima face case”).

The de minimis defense has been recognized as allowing the literal copying of a small or trivial aspect of a copyrighted work. Warner Bros. Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231, 242 (2d Cir. 1983); Louisiana Contractors Licensing Serv., Inc. v. Am. Contractors Exam Servs., Inc., 13 F. Supp. 3d 547, 554 (M.D. La. 2014), aff'd, 594 F. App'x 243 (5th Cir. 2015); Rudkowski v. MIC Network, Inc., No. 17 CIV. 3647 (DAB), 2018 WL 1801307, at *4 (S.D.N.Y. Mar. 23, 2018) (“An individual frame clearly represents an extremely small fragment of the whole Video.”), appeal withdrawn, No. 18-2686, 2018 WL 6536114 (2d Cir. Nov. 2, 2018).

According to the Second Circuit in On Davis v. The Gap, Inc., 246 F.3d 152, 173 (2d Cir. 2001):

The de minimis doctrine is rarely discussed in copyright opinions because suits are rarely brought over trivial instances of copying. Nonetheless, it is an important aspect of the law of copyright. Trivial copying is a significant part of modern life. Most honest citizens in the modern world frequently engage, without hesitation, in trivial copying that, but for the de minimis doctrine, would technically constitute a violation of law. We do not hesitate to make a photocopy of a letter from a friend to show to another friend, or of a favorite cartoon to post on the refrigerator. Parents in Central Park photograph their children perched on José de Creeft's Alice in Wonderland sculpture. . . . When we do such things, it is not that we are breaking the law but unlikely to be sued given the high cost of litigation. Because of the de minimis doctrine, in trivial instances of copying, we are in fact not breaking the law. If a copyright owner were to sue the makers of trivial copies, judgment would be for the defendants. The case would be dismissed because trivial copying is not an infringement.

However, it might not be a “de minimis” use if the reproduction of the work was the “focal” point of advertisements. On Davis, 246 F.3d at 173.

The relevant inquiry is whether the alleged copying of Plaintiff's work was sufficiently small or trivial to be considered a de minimis use. On Davis, 246 F.3d at 172; Rudkowski, 2018 WL 1801307, at *4.

This threshold issue may be decided at the pleadings stage. E.g., Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 634 (S.D.N.Y. 2008) (granting motion to dismiss because “where the use is de minimis, the copying will not be actionable, even where the work was chosen to be in the background for some thematic relevance.”). When visual works are at issue and are attached to the pleadings or otherwise cognizable on a motion to dismiss, the Court may determine whether the use was de minimis—and thus not copyright infringement as a matter of law—based upon a visual comparison of the works. Rudkowski, 2018 WL 1801307, at *3 (dismissing Plaintiff's Complaint with prejudice because the use of a still image from a copyrighted video was de minimis so there was no infringement).

In one recent example, the Southern District of New York dismissed a copyright infringement claim based on the de minimis doctrine. Gayle v. Allee, No. 18 CIV. 3774 (JPC), 2021 WL 120063, at *10 (S.D.N.Y. Jan. 13, 2021). The plaintiff owned the copyright associated with outdoor graffiti works with the words “ART WE ALL ONE,” and the copyright infringement claims related to a photograph that the defendant took of two buildings in New York City where, viewable in the bottom right corner of the photograph, was a small construction barrier tagged with graffiti reading, “ART WE ALL ONE.” Id. at *1.

The Court noted that “substantial similarity” for the purposes of the de minimis inquiry is not entirely about whether something was in fact copied because there is a difference between “factual copying” and “actionable copying”—that is, copying that is “quantitatively and qualitatively sufficient” to support a claim of copyright infringement. Id. at *10. “The qualitative component concerns the copying of expression, rather than ideas, a distinction that often turns on the level of abstraction at which the works are compared.” Id. (quoting Ringgold, 126 F.3d at 75.). “By contrast, ‘[t]he quantitative component generally concerns the amount of the copyrighted work that is copied, a consideration that is especially pertinent to exact copying.'” Id. (quoting Ringgold, 126 F.3d at 75.).

Addressing whether the alleged copying rose above a de minimis level, the Court noted that “the actual graffiti appears in small print in the bottom corner of the Photograph in a manner that is far less prominent than the apartment buildings that dominate the vast majority of the Photograph, and even less prominent than other items in the Photograph like a ‘Do Not Enter' sign and a bicycle.” Id. at *10. The Court concluded that the alleged use was “both qualitatively and quantitatively de minimis such that it cannot support an infringement claim.” Id.

The copyright attorneys at Thomas P. Howard, LLC can evaluate copyright infringement issues including whether the alleged use is actionable.