Protect Your Copyrighted Works and Avoid Liability for your Website

Protect Your Copyrighted Works and Avoid Liability for your Website

Maria Crimi Speth

Maria Crimi Speth

September 12, 2022 08:21 PM

On April 16, 2019, the U.S. Court of Appeals for the Ninth Circuit issued an opinion in Erickson Productions, Inc. v. Kast. The Erickson decision teaches several important lessons. First, it reminds copyright owners of the importance of registering their works with the U.S. Copyright Office, especially following the U.S. Supreme Court’s recent decision in Fourth Estate Public Benefit Corp. v., LLC. Second, it reminds anyone wanting to use photos taken from the Internet to think twice and make sure they obtain the needed legal rights and permissions before doing so. Third, Erickson teaches website owners the importance of having a well drafted agreement signed with the web developer hired to build, change, or maintain a website. Finally, it teaches website owners the importance of overseeing the hired web developer to make sure they don’t include any third party’s copyrighted content without first obtaining the necessary rights and permissions.

In Erickson, plaintiffs Jim Erickson and his company, Erickson Productions, Inc. (collectively, “Erickson”), owned three photos that were licensed to Wells Fargo Private Bank. In 2010, Defendant Kraig Kast hired website developer Only Websites to revamp his real estate wealth management company’s website. In emails to Only Websites, Kast said he wanted to mimic Wells Fargo Private Bank’s website and noted that he “need[ed] to choose photos from options” provided by Only Websites. Kast also told Only Websites he wanted the photos “to be more casual like” those on Wells Fargo’s website. Eventually, the three photos licensed by Erickson that were on Wells Fargo’s website became part of Kast’s website (the Erickson court noted that the record was unclear on “whether Kast directed Only Websites to include the photos or whether Only Websites did so unilaterally”).

Using imagery tracking software, Erickson discovered the photos on Kast’s website and sent Kast a letter in July 2011 demanding that Kast remove the photos and pay damages. Kast promptly instructed Only Websites to remove the photos but refused to pay Erickson. In response, Erickson sued Only Websites for direct infringement and sued Kast for direct, vicarious, and contributory copyright infringement. Erickson also alleged that Kast’s infringement was willful, making the infringement subject to enhanced damages. Only Websites defaulted and went out of business, leaving Erickson alone to defend the case.

Notably, had Erickson not filed for and obtained a copyright registration before the infringement, only actual damages could have been sought in the lawsuit. Because the copyrighted photos had been registered, however, Erickson was allowed to seek statutory damages of up to $150,000 per photograph.

The case went to a jury trial where “two divergent narratives emerged.” At trial, Kast claimed that Only Websites had copied the photos without his consent and that he’d understood Only Websites’ contract to state that they would only use licensed photos for the website. However, he admitted that he knew the photos were on his business’s website as early as January 2011 and had remained there until he received the July 2011 demand letter.

The jury returned a verdict finding that Kast had vicariously and contributorily (but not directly) infringed Erickson’s copyrighted photos by displaying them on his business’s website and did so willfully. The jury awarded Erickson the maximum statutory damage amount of $150,000 per photograph, for a total of $450,000. Kast appealed.

On appeal, the Ninth Circuit vacated the jury’s vicarious liability verdict because Erickson had presented no evidence that could constitute a direct financial benefit to Kast as a matter of law. However, the Ninth Circuit affirmed the jury’s contributory liability verdict against Kast, because the trial court had not plainly erred in instructing the jury that “knowledge” for contributory infringement purposes includes having a “reason to know” of the infringement. The Ninth Circuit did vacate the jury’s willfulness finding though, based on the trial court’s erroneous instructions to the jury that it could find that Kast’s infringement was willful if he “should have known” that his acts infringed Erickson’s copyright. The case was remanded back to the trial court to determine whether Kast’s infringement was willful based on the existing record.

Erickson serves as another reminder to copyright owners that to enforce their copyrights in court and be eligible for statutory damages (and attorney’s fees), they must first register them. Equally important, Erickson reminds website owners that to avoid becoming a defendant in a copyright lawsuit for the unauthorized use of photos on a website, they must: (1) make sure they have the proper licenses and permissions for all third party copyrighted content used on their commercial website; (2) have a well drafted agreement signed with any web developer they hire to build, change, or maintain their website(s); and (3) make sure they properly oversee the web developer’s work product to ensure that no copyrighted content is used without the necessary rights and permissions.

Related Articles

Learn How to Value Your Company's IP Portfolio as a Source of Income with Patent Scorecarding

by Troy A. Groetken

It’s imperative that intellectual property counsel, especially those responsible for the protection of innovation in the electrical, chemical, pharmaceutical and life-science arenas, regularly audit their company’s IP portfolio. Here’s the best way to do it.

Intellectual Property Scorecarding Benefits

What Entrepreneurs Should Know About Intellectual Property

by Todd Fichtenberg

With the growing rates of entrepreneurs and startups during 2020, applications for EINs and intellectual property protections should grow proportionately.

Business Owners And Intellectual Property

Anthony M. Insogna - San Diego 2021 Lawyer of the Year

by Best Lawyers

Litigation - Intellectual Property San Diego, California

Anthony M. Insogna

The State of Women Inventors

by Amanda Hermans and Kate Rockwood

What’s being done to improve the gender patent gap—and how attorneys can help.

How to Improve the Gender Patent Gap

Property Protectors

by Best Lawyers

Georg Schönherr and Thomas Adocker discuss the theft of trade secrets, patent infringement, and strategies to combat fake goods.

An Interview With Schwarz Schönherr Rechtsanw

Protect Your Intellectual Property From Patent Trolls

by Best Lawyers

Michael Ritscher discusses how he advises clients to better protect their trade secrets.

An Interview With Meyerlustenberger Lachenal

Technology and the Changing IP Climate in Mexico

by Best Lawyers

Roberto Arochi discusses Arochi & Lindner’s 2019 “Law Firm of the Year” award for Intellectual Property Law in Mexico in an interview with Best Lawyers.

Arochi & Lindner "Law Firm of the Year" Q&A

Alicia Lloreda on the Increasing Complexity of IP Law

by Best Lawyers

The Lloreda Camacho & Co. attorney discusses the firm's 2019 “Law Firm of the Year” award for Intellectual Property Law.

Alicia Lloreda Law Firm of the Year

After 30 Years, Kevin R. Casey Looks Back on IP Law

by Best Lawyers

Kevin R. Casey, the 2019 "Lawyer of the Year" winner for IP Law in Philadelphia talks about his practice and career.

Kevin R. Casey 2019 "Lawyer of the Year"

Four Disastrous IP Mistakes Most Companies Make

by Eric Vaughn-Flam

Registering and investigating trademarks are just the beginning when it comes to keeping your intellectual property safe.

Four IP Mistakes and How to Avoid Them

Stopping Infringement before It Happens

by Jennifer Ko Craft

IPR protection strategies that work.

How to Prevent Copyright Infringement

Trending Articles

The Best Lawyers in Spain™ 2023

by Best Lawyers

Announcing Spain's recognized lawyers for 2023.

Flag of Spain

Announcing the 2023 The Best Lawyers in America Honorees

by Best Lawyers

Only the top 5.3% of all practicing lawyers in the U.S. were selected by their peers for inclusion in the 29th edition of The Best Lawyers in America®.

Gold strings and dots connecting to form US map

The Best Lawyers in Chile™ 2023

by Best Lawyers

The results include an elite field of top lawyers and firms in Chile.

White star in blue box beside white box with red box on bottom

Thirteen Years of Excellence

by Best Lawyers

For the 13th consecutive year, “Best Law Firms” has awarded the most elite and talented law firms across the country through a thorough and trusted data review process.

Red, white and blue pipes and writing on black background

The Best Lawyers in South Africa™ 2023

by Best Lawyers

Best Lawyers proudly announces lawyers recognized in South Africa for 2023.

South African flag

The 2023 Best Lawyers in Portugal™

by Best Lawyers

Announcing the elite group of lawyers recognized in Portugal for 2023.

Green and red Portuguese flag

Announcing The Best Lawyers in Peru™ 2023

by Best Lawyers

Honoring our awarded lawyers for 2023 in Peru.

Red and white stripes with green leaf symbol

Best Lawyers: Ones to Watch in America for 2023

by Best Lawyers

The third edition of Best Lawyers: Ones to Watch in America™ highlights the legal talent of lawyers who have been in practice less than 10 years.

Three arrows made of lines and dots on blue background

The Best Lawyers in Spain™ 2022

by Best Lawyers

The results include an elite field of top lawyers and firms.

The Best Lawyers in Spain™ 2022

Famous Songs Unprotected by Copyright Could Mean Royalties for Some

by Michael B. Fein

A guide to navigating copyright claims on famous songs.

Can I Sing "Happy Birthday" in Public?


Rewriting 𝙃𝙀𝙍𝙨𝙩𝙤𝙧𝙮 One Verdict at a Time

by Justin Smulison

Athea Trial Lawyers was formed only a year ago by several prestigious lawyers seeking justice for their clients, and together they are making history.

Six female lawyers sitting in office

Announcing the 2022 Best Lawyers® in the United States

by Best Lawyers

The results include an elite field of top lawyers listed in the 28th Edition of The Best Lawyers in America® and in the 2nd Edition of Best Lawyers: Ones to Watch in America for 2022.

2022 Best Lawyers Listings for United States

Strength in Numbers: When Partnering Up May Be Best in Whistleblower Litigation

by Justin Smulison

Whistleblower claims make headlines when they result in multimillion-dollar settlements. But the journey to the courtroom is characterized by complexity and requires time and resources. Bienert Katzman Littrell Williams partner and The Best Lawyers in America awardee Michael R. Williams discusses when and why partnerships between counsel will strengthen whistleblower litigation.

A Blue Person in the Middle of White People

What the Courts Say About Recording in the Classroom

by Christina Henagen Peer and Peter Zawadski

Students and parents are increasingly asking to use audio devices to record what's being said in the classroom. But is it legal? A recent ruling offer gives the answer to a question confusing parents and administrators alike.

Is It Legal for Students to Record Teachers?

Announcing the 2023 The Best Lawyers in Canada Honorees

by Best Lawyers

The Best Lawyers in Canada™ is entering its 17th edition for 2023. We highlight the elite lawyers awarded this year.

Red map of Canada with white lines and dots

Announcing the 2022 "Best Law Firms" Rankings

by Best Lawyers

The 2022 “Best Law Firms” publication includes all “Law Firm of the Year” recipients, national and metro Tier 1 ranked firms and editorial from thought leaders in the legal industry.

The 2022 Best Law Firms Awards