The Troubling Trend of Online Exceptionalism to Copyright's Separate Accrual Rule

New York State Bar Association
Entertainment, Arts and Sports Law Journal

Summer 2023

By Neville L. Johnson, Douglas L. Johnson, and Daniel B. Lifschitz*

In Petrella v. MGM, the United States Supreme Court wrote that “there is nothing untoward about [a copyright owner] waiting to see whether an infringer's exploitation undercuts the value of the copyrighted work, has no effect on the original work, or even complements it” before electing to pursue an infringement case over that exploitation.[i] However, a troubling line of district court authority developed since Petrella's issuance has significantly undercut that notion by holding copyright owners may not have the luxury of waiting when it comes to online exploitation of their works. The underlying logic of these decisions must be rejected by future courts as fundamentally unsound, both to preserve the core holding of Petrella and prevent an unjustifiable divestiture of protected copyright interests.

In Minden Pictures, Inc. v. Complex Media, Inc., a copyright holder was barred from pursuing an infringement suit in 2022 over a photo the defendant had posted to its website in 2012, with the district court holding, “that the continued presence of a copyrighted work on a website does not by itself give rise to a ‘new wrong' under the Copyright Act” sufficient to refresh its three-year statute of limitations.[ii] The court was unmoved by the fact that the plaintiff's photo remained available for public consumption on the defendant's website, holding that “the statute of limitations would be stripped of its force if it were triggered every time a web user accessed the allegedly infringing material.”[iii]

Minden found support for its narrow interpretation of copyright's separate accrual rule in past district court decisions that engaged in similar online exceptionalism. In Wolf v. Travolta, for example, the court held "[t]he fact that [an] allegedly infringing document — published in 2010, outside the relevant three-year window — remained on defendant's website through 2014 does not give rise to a discrete claim accruing within the three-year window.”[iv] Similarly, in Alfa Laval, Inc. v. Flowtrend, Inc.,[v] the court held that a defendant posting a plaintiff's copyrighted work to its website in 2009 was its sole act of infringement, no matter how recently third parties may have accessed the infringing post.[vi]

The Alfa Laval court justified its decision by analogizing it to the 1959 case of Maloney v. Stone,[vii] in which the district court found that a printer could not be held responsible for later sales of infringing materials that the printer had merely helped to prepare outside the statute of limitations period.[viii] The problem with this analogy is that the defendant in Maloney did not continue to make the infringing materials it prepared available to any customer who wished to obtain a copy. By contrast, the defendants in Alfa Laval, Wolf, and Minden continued to automatically vend digital copies of plaintiffs' works to their visitors, and – by these courts' logic – could apparently do so in perpetuity.

The patent absurdity of these decisions is illuminated by a simple thought exercise: In Petrella, the plaintiff was permitted to pursue copyright infringement claims over the decades-long exploitation of her father's screenplay in the film Raging Bull because the defendants continued to exploit the film to the present day, include by physical distribution in DVD and Blu-ray format.[ix] What if, however, the defendants only made the film available via digital streaming, such as on HBO Max?[x] According to the logic of Minden et al, the defendants' only act of infringement would be the initial uploading of Raging Bull to a given streaming platform, and they could therefore not be held directly responsible for the acts of infringement committed by the platform's users each time the film is unlawfully streamed.[xi]

In 2016, the U.S. Copyright Office published an exhaustive study entitled “The Making Available Right in the United States,” which concluded that the enforceable rights of a copyright owner properly encompass “the offer of public access, including through on‐demand services, without regard to whether a copy has been disseminated or received.”[xii] The report did not mention this right being unenforceable should a plaintiff's work first be uploaded to an on-demand service more than three years before their institution of litigation. By imposing such a bar to enforcement in online infringement cases, decisions like Minden essentially graft trademark law's inapposite “duty to police” onto copyright law,[xiii] precisely the opposite of what the Supreme Court was attempting to encourage in Petrella.[xiv]

Standing athwart these district court decisions is 2019's APL Microscopic, LLC v. United States, in which the Court of Federal Claims held that a photo posted to NASA's website in 2004 could be sued over in 2018 on the basis that NASA continued to distribute and publicly display the photo each time a user viewed its website, with each instance of access being a separate harm.[xv] Although this decision was raised by the plaintiff in Minden, the district court declined to follow it, noting that “[n]o district court has followed APL's logic, however, and at least two courts have explicitly rejected its reasoning.”[xvi]

District courts' rejection of APL, however, has been consistently tied to the notion that Petrella distinguished between “[s]eparately accruing harm[s]” and “harm[s] from past violations that are continuing," with the continued availability of prior-uploaded material being construed as falling into the latter category.[xvii] Under this reasoning, when a copyright holder is harmed by a brick-and-mortar store offering pirated copies of their work, every discrete sale (and subsequent restock) is merely a continuing harm emanating from the store's first offering of the pirated work. The only distinguishing feature of Minden et al is that later infringements are automated by the defendants' computer systems.

In Harrington v. Aerogelic Ballooning, LLC, it was observed that “[t]he courts long ago rejected the notion that the arrival of the internet somehow altered the copyright landscape[.]”[xviii] Yet with the advent of decisions like Minden, some courts now appear to believe that when copyrights are violated on the internet, the landscape must be altered in order to avoid creating “almost perpetual liability” on the part of uploaders.[xix] This ad hoc imposition of a single-publication rule solely for copyright violations on the internet is doctrinally pernicious, sanctions perpetual infringement as a policy matter, and threatens to upend the careful reticulation accomplished by Petrella. It should be rejected accordingly.

* Neville L. Johnson and Douglas L. Johnson are partners at Johnson & Johnson LLP, in Beverly Hills, CA, practicing entertainment, media, business, and class action litigation. Daniel B. Lifschitz is a senior associate at Johnson & Johnson LLP whose practice focuses on copyright litigation.

[i] Petrella v. MGM, 572 U.S. 663, 682 (2014)

[ii] Minden Pictures, Inc. v. Complex Media, Inc., No. 22-CV-4069 (RA), 2023 WL 2648027, 2023 U.S. Dist. LEXIS 52070, at *9 (S.D.N.Y. Mar. 27, 2023),

[iii] Id. at *10.

[iv] Wolf v. Travolta, 167 F. Supp. 3d 1077, 1099 (C.D. Cal. 2016)

[v] Relied upon in Bell v. Oakland Cmty. Pools Project, No. 19-cv-01308-JST, 2020 WL 4458890, 2020 U.S. Dist. LEXIS 140008, at *15 (N.D. Cal. May 4, 2020), which itself is relied upon in Minden, 2023 U.S. Dist. LEXIS 52070, at *9.

[vi] Alfa Laval, Inc. v. Flowtrend, Inc., No. H-14-2597, 2016 WL 2625068, 2016 U.S. Dist. LEXIS 60742, at *15-17 (S.D. Tex. May 9, 2016).

[vii] Maloney v. Stone, 171 F. Supp. 29 (D. Mass. 1959).

[viii] Alfa Laval, 2016 U.S. Dist. LEXIS 60742, at *16.

[ix] Petrella, 572 U.S. at 673.

[x] See Watch Raging Bull (HBO) – Stream Movies | HBO Max, https://www.hbomax.com/feature/urn:hbo:feature:GWGwjvQHvEpfDXwEAAAAL (last accessed April 21, 2023).

[xi] Cf. Alfa Laval, 2016 U.S. Dist. LEXIS 60742, at *16 (holding that “[a]lthough others may have downloaded the Copyrighted Material after [the Defendants' posting thereof], Defendants are ‘only liable for [their own] acts of infringement committed within three years prior to Plaintiff's lawsuit.") (quoting Makedwde Publ. Co. v. Johnson, 37 F.3d 180, 182 (5th Cir. 1994)). Query, however, whether the uploader might nevertheless be held secondarily liable for either (a) intentionally inducing or encouraging customers' infringement or (b) profiting from that infringement while declining to exercise a right to stop or limit it. See Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1169-73 (9th Cir. 2007).

[xii] U.S. Copyright Office, The Making Available Right in the United States at 4 (Feb. 2016), https://www.copyright.gov/docs/making_available/making-available-right.pdf.

[xiii] 3 Nimmer on Copyright § 12.05 n.185 (2022) (noting that “the ‘duty to police' is native to trademark soil, not to the terrain of copyright law.”).

[xiv] Petrella, 572 U.S. at 682 (citing Tim Wu, Tolerated Use, 31 Colum. J. L. & Arts 617, 619-620 (2008)).

[xv] APL Microscopic, LLC v. United States, 144 Fed. Cl. 489, 496-99 (2019)

[xvi] Minden, 2023 U.S. Dist. LEXIS 52070, at *12 (citing Color Image Apparel, Inc. v. Jaeschke, No. 22-CV-7187 (SVW) (MAR), 2022 WL 2643476, 2022 U.S. Dist. LEXIS 101960 (C.D. Cal. June 7, 2022) and Bell v. The Oakland Cmty. Pools Project Inc., No. 19-CV-01308, 2020 WL 4458890, 2020 U.S. Dist. LEXIS 140008 (N.D. Cal. May 4, 2020)

[xvii] Petrella, 572 U.S. at 671 n.6.

[xviii] Harrington v. Aerogelic Ballooning, LLC, Civil Action No. 18-cv-02023-MSK-NYW, 2018 U.S. Dist. LEXIS 201866, at *4 (D. Colo. Nov. 29, 2018).

[xix] See Color Image Apparel, 2022 U.S. Dist. LEXIS 101960, at *7 (citing Roberts v. McAfee, Inc., 660 F.3d 1156 (9th Cir. 2011)).