DMCA gives Walmart only a gleam of light in sculpture infringement case

Russell v. Walmart Inc., No. CV 19-5495-MWF (JCx), 2020 WL 9073046 (C.D. Cal. Oct. 16, 2020)

Russell owns registered copyrights in certain photos of sculptures that appeared on Walmart’s marketplace. Previously, the court found that all of Walmart’s affirmative defenses failed as a matter of law, except its DMCA defense, which remains for trial. There were genuine disputes of material fact as to whether Walmart was responsible for posting the photographs on the Walmart Marketplace. [What is being infringed here: the photos or the sculptures? Since the court concluded she owned both, that doesn’t matter for liability; it could matter a lot for damages and whether the DMCA applies, but the court seems uninterested.] [Looking back on previous orders in the case, it does not seem that Walmart got the right witness for its DMCA defense; she didn’t seem to have detailed personal knowledge of any DMCA policy, and more generally Walmart may be running behind Amazon in dealing with third-party seller misbehavior on its platform, despite the fact that Amazon is taking all the heat for this kind of thing.]

Russell created four sculptural works: “Medusa,” “Polyp,” “Hydra,” and “Ophelia”; there was a dispute about whether the sculptures resemble or embody natural aspects of real-life jellyfish and whether Russell intentionally designed them to look like freshwater jellyfish. Medusa seems to be the key one; Walmart argued that the sculpture’s “sole intrinsic function is providing light,” while Russell responded that the sculptures are works of art, “not simply light fixtures.”

the pictures and lights in suit

The key facts around Walmart’s responsibility for marketplace sellers have been redacted from the opinion, so it’s impossible to tell what’s going on there. Discussions about whether the accused product was a “poor quality replica” also include redactions, as do the discussion of damages. “In sum, the parties do not agree on much,” but the public can have no idea of where they diverge.

The court here concluded that there were disputed issues of material fact on substantial similarity (and excluded a proposed expert report from Mark McKenna). The Medusa lamp was separable from its lightbulb, so the useful articles doctrine didn’t diminish the protection granted by copyright. Nor was it “so lifelike in its resemblance of a jellyfish that it lacks copyright protection.”

Though the Medusa sculpture may borrow certain elements from jellyfish in nature, it does not appear, and was not intended to appear, like a lifelike jellyfish. The sculpture is not held in a glass container intended to mimic a jellyfish’s natural habitat like the sculpture in Satava; it is oversized and hangs from the ceiling on a string connected to the center of the sculpture. [Not sure why this fact in particular matters to whether it’s taken from life, though the rest seems relevant.] The top piece of the sculpture is constructed of overlapping sections of fabric, differing significantly from the large bulbous head of an actual jellyfish. Tendrils of varying length and patterned textures flow from the center of the sculpture, unlike the largely uniform tentacles of an actual jellyfish.

In other words, Plaintiff’s sculpture is “stylized and not lifelike.” Because of the “gazillions of ways to combine” jellyfish-like elements to create a stylized, jellyfish-inspired work of art, Plaintiff’s stylized sculpture is entitled to broad copyright protection.

Substantial similarity: Russell argued that substantial similarity wasn’t the appropriate test in cases involving direct copying [very wrong], but even if that test did apply, there were genuine issues of material fact. “[T]he lamps are the same color, have three distinct sections, have a circular top piece constructed out of overlapping panels with curved sides and scalloped edges, have a center part that is thicker than the bottom part, and have two sets of long, thin tendrils with two different patterns.” A reasonable jury could find substantial similarity.

Willful infringement: This requires actual awareness of the infringing activity or reckless disregard/willful blindness. The photographs posted on Walmart’s marketplace were strikingly similar to Russell’s copyrighted pictorial works, but there was a genuine dispute of material fact on whether Walmart was responsible for posting them, which precluded summary judgment in Walmart’s favor on willfulness. Walmart argued something else redacted, but those allegations were “hotly disputed,” and anyway “Plaintiff produced evidence showing that although Walmart had [redacted]. And in November 2018, [redacted] Walmart claims that [redacted].Walmart also knew that [redacted],” creating an inference of willful blindness/reckless disregard. Comment: This is not law. How is anyone to use this decision to guide their conduct with an understanding of what constitutes willful blindness or reckless disregard?

Russell could also cover profits attributable to the infringement, and some sort of dispute about that is redacted.

Lanham Act/unfair competition claims.  Again, there was a genuine issue of fact about Walmart’s responsibility for the posting. Apparently on the premise that the posting was literally false about something, if Russell proved Walmart’s responsibility, “actual deception and materiality will be presumed.” Her damage expert calculated that the false listings cost her thousands of dollars in lost profits and harm to her goodwill and reputation. Not clear how she worked around Dastar.