Evox Productions LLC v. Verizon Media Inc.

Ninth Circuit reverses district court dismissal of copyright infringement claim, finding that under Perfect 10 test, digital image production company plausibly alleged that defendant violated Copyright Act by storing and displaying plaintiff’s copyrighted images for more than 90 days after expiration of licensing agreement. 

Evox Productions LLC, which creates and distributes digital images of automobiles, brought copyright and trademark claims against Verizon Media, alleging that Verizon, through its subsidiaries Yahoo Autos and Tumblr, continued to display Evox’s photos for more than 90 days after the termination of a licensing agreement between Evox and Verizon. Evox also alleged that users could download, copy and link the images to other websites, and it was not until Evox sent Verizon a second cease and desist letter that Verizon disabled public access to Evox’s images. The district court dismissed the suit, but on Evox’s appeal, the Ninth Circuit reversed, finding that Evox plausibly pleaded a copyright infringement claim under Perfect 10, Inc. v. Amazon.com, Inc.

The Ninth Circuit applied its test from Perfect 10, which states that an entity “displays a photographic image” within the meaning of the Copyright Act when it both stores an infringing image on its own servers and delivers that same image to an end user’s screen. Linking to images stored elsewhere or storing but not delivering an image to end users does not qualify as public display under the Perfect 10 test.

The court found that, while the test is ultimately an evidentiary one, Evox plausibly pleaded in its complaint that Verizon stored Evox’s photos on its own servers and that it delivered those images to end users on Tumblr and Yahoo Autos. Accordingly, the dismissal of Evox’s copyright claim was in error.

Evox also alleged trademark infringement against Verizon, claiming that the images that were displayed on Tumblr and Yahoo Autos contained Evox’s mark, which created consumer confusion in violation of the Lanham Act. The Ninth Circuit upheld the dismissal of this claim, finding that under established Ninth Circuit precedent, when a Lanham Act claim concerns a trademark embedded in a product that is also the subject of Copyright Act claims, the Copyright Act claim supersedes any trademark infringement claim.

The court reversed the decision on the copyright infringement claim, affirmed the decision on the trademark claim and remanded the case to the district court. 

Summary prepared by David Grossman and Alex Inman