F OR P UBLICATION



### UNIT E D ST AT E S CO URT O F APPE AL S FO R T H E NINT H CIRCUIT

G L E N E. F R I E D M A N , Plaintiff-Appellant

,

v

.

L I V E N A T I O N M E R

C H A N D I S E , I N C .; A N T H I L L T R

A D I N G , L L C; A R

T

. C O M , I N C ., Defendants-Appellees. N o. 14-55302

D.C. No. 2:11-cv-02047- MW F -VB K

OPI NI ON

A ppeal from the United States District Court for the Central District of California Michael W . F itz g erald, District J udg e, Presiding

Arg ued and Submitted F ebruary 11, 2016 Pasadena, California

F iled Aug ust 18, 2016

B efore: Marsha S. B erz on, and J o hn B . Owens, Circuit J u dg es, and Alg enon L . Marbley

, * District J udg e.

Opinion by J udg e B e rz on

* T h e Ho n o rab le A lg en o n L

. Marb ley , Un ited States District J u d g e f or th e So u t h ern District o f

Oh i o , sittin g b y

d esig n atio n

.F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 2

SUMMARY * *

Copyright

I n a case arising out of a copy rig ht dispute over L ive Nation’s unauthoriz ed use, on t-s h i r t s and a calendar, o f photog raphs G l e n F riedman took of the hip hop g roup RunDMC, the panel ( a ) reversed the district court’s summary judg ment in f

avor o f L ive Nation Merchandise, I nc., on

c laims that L ive Nation willfully infring ed F riedman ’s
copy rig hts and knowing ly removed copy rig ht manag eme n t information from the imag es it used, an d ( b ) a ffirmed the district court’s ruling on statutory damag es.

L ive Nation stipulated that it infring ed Fr i e d man’s
copy rig hts. The panel held that the e vidence in the re c o r d
g ave rise to a triable issue o f fact as to whether L ive Nation’s infring ement was willful, which would make it l i a b l e for additional damag es u n der 17 U.S.C. § 504(c)(2), and that the district court therefore erred in g ranting s u mmary judg ment to L ive Nation on willfulness.

The panel h eld that the district c ourt also erred in g ranting
summary judg ment on F riedman’s cla i m u nder section 1202(b) o f the Dig ital Millennium Copy rig ht Act reg arding removal of c opy

rig ht manag ement in f

o rmation. The panel

ex p lained that F riedman could prevail upon a showing that L ive Nation distributed his works with k nowle dg e that
copy rig ht manag ement information had been removed, even if L ive Nation did n ot r emove it. The panel concluded that

** T h is su m m ary co n stitu

t es n o p ar t o f t h e o p in io n o f th e co u rt. It h as b een p rep ared b y

co u rt staf

f f o r th e co n v en i en ce o f

th e read er.F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 3

evidence in the r e c o r d creates a triable issue of fact as to whether L ive Nation d istributed F r i e d m a n ’ s p h o t o g r a

p hs with the requisite knowledg e.

Affirming the district court’s ruling on statutory d amag es, the panel held that Copy r ig ht Act Section 5 0 4 ( c )(1)’s
p r ovision o f separate statutory damag e awards for th e infring ement o f each work “ for which any two o r more infring ers are liable jointly and sev e rally ” applies o nly to parties who have been determined jointly and severally liable in the course of the liability determinations in the case for the infring ements adjudicated in the action, a nd that a p laintiff seeking separate damag es a wards on the basis of downstream infring ement must join the alleg ed downstream infring e rs in the action and prove their liability for infring ement. The panel concluded that b ecause F r iedman d id not join any of his alleg ed downstream infring e rs as defendants in this case, the district court correctly held that he was limited to one award per work infring e d by

L ive Nation.

COUNSEL

L orin E. B rennan (argu ed), Erica Allen Gonz ales, a nd Doug las A. L inde, The L inde L aw F i r m , L o s Ang eles, California, for Plaintiff-Appellant.

Matthew R. Gershm a n (arg ued), Peter Yu, J r ., and J eff E. Scott, Greenberg Traurig L L P, L os A n ge l e s, California, for Defendants-Appellees.F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 4

OP INION

B ERZ ON, Circuit J udg e :

This case arises out of a copy rig ht dispute over the use o f photog raphs Appellant Glen F ried m a n took of the h ip hop
g roup Run-DMC. Appellee L ive Nation Merchandise (“L ive Nation”) stipulated in the district court that it infring ed F riedman’s copy

rig hts when i t u sed h is photos without his authoriz ation on t-shirts and a c alendar. Our questions a re whether there is sufficient evidence in the record to permit a jury to conclude that L ive Nation committed willful copy rig ht i n f ring ement, making it liable for additional damag es under 17 U.S.C. § 504(c)(2); w hether a j u r y could conclude that L ive Nation knowing ly remov ed copy rig h t manag ement information (“CMI ”) from the p h otog raphs in violation o f 17 U.S.C. § 1202(b); a

nd w hether F ri edman can r ecover statutory damag es a

wards measured by the number o f retailers who purchased infring ing merc h a n dise from L ive Nation, even thoug h F riedman did not join those retailers a s defendants in his suit.

F A CTUAL AND P R OCEDURAL HISTORY

Gl e n F r i e d

m a n is a well-known photog rapher whose work focuses on f

i gures f rom several A merican subcultures, including skateboarders, punk rock musicians, a nd hip hop artists. His photog r aphy has been in g allery ex hibitions a nd on record covers and has been published widely

. During the 1980s, F riedman took a series of photog raphs of the hip hop g roup Run-DMC. Several of F riedman’s photog raphs of the g r oup appeared in a book collecting his work. I n 2005, F riedman g ranted a license to Sony Music toF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 5

reproduce some of his Run-DMC photog raphs, accompanied by inform a tion indicating that F r iedman owned the
copy rig hts, on a website. F ans could download the imag es to

use as computer “ wallpapers.” Sony ’s license permitted it to alter the imag es in some respects — for ex ample, by a dding

a g reen tint, a Run-DMC log o, or a sparkle effect — and was the o n l y l i c ense in which F riedman authoriz ed such alterations to his photog raphs.

L ive Nation 1 is a music merchandising company involved in the desig n, manufacture, an d s a l e of apparel and other products featuring imag es a nd log os o f various popular music artists. I n developing products, L ive N ation ty pically enters i n t o written merchandising a g reements with music a rtists i n which the artists retain f

inal approval authority on the desig n, development, d i s t

r i b u t i o n a n d sale of merchandise bearing the artists’ marks and likeness. I n practice, L ive N ation submits “Product Approval F orms” to artists asking them to sig n off

on the development of products display i n g specific imag es. Those forms supplied by L ive Nation include no reference to copy rig hts or other usag e restrictions. L ive Nation maintains that artists are “not supposed to” provide approval if they do
not have the rig hts to the proposed photog raphs, but points to no instruction or ag reement so stating

.

L ive Nation also produced “Sty le Guides” — e ssentially

, collections of available imag es of particular artists

— to inform supplier s a b o ut imag es they could contract to use on merchandise. L i k e individual products, the Sty le Guides

1 In ad ditio n t o L iv e Natio n , th ree o th er p a r t i e s , A rt.co m , In c., NMR Distrib u tio n ( Am erica) In c., an d Mich ael Ho w ard

, w h o acted as

“ distrib u to rs, retailer s, licen sees, an d v en d ors” are n am ed as def en d an ts as to Fried m an ’ s co py

rig h t claim s.F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 6

were first submitted to the a rtists, w ho w ere supposed to “preclear” the i m a g es of them included in the Guides. L ive Nation’s Run-DMC Sty le Guide ( “Run-DMC Guide”) included a nu mber of F riedman’s imag es. L ive Nation soug ht and obtained approval from R un-DMC for a 2008 Wall Calendar that included four of F riedman’s imag es, a nd later, for three t-shirt desig ns, that included F riedman imag e s previously

featured in the Run-DMC Guide.

A ft er h e became aware of L ive Nation’s use of h i s photog raphs, F riedman f

iled a complaint asserting claims for relief for (1) copy

righ t i n f r ing ement, under 17 U.S.C. § 101
et se q

. , a nd (2) removal of copy rig h t manag ement information ( “CMI ”), u n der 17 U.S.C. § 1202. During discovery

, L ive Na tion propounded a set of contention i n t e rr o ga t o rie s a n d r eq u e s t s f o r a d m i s s i o n

. T h e interrog atories a sked F riedman to de t ail the evidence supporting his claims, while the requests for admission asked him to concede that he lacked e v idence to support a number of his assertions. The district court had set April 23 as the discovery cut-off date. F riedman’s resp o nses were due on April 19.

Fr i e d m an d id not respond in time. I nstead, on April 2 0
, F riedman filed objections a sserting that eac h request was “untimely ” b e c ause it “requires a response bey ond the discovery cut-off. ” Fr i edman claimed that this was so even thoug h his responses were due before the discovery c ut-off date as — ac cording to him

— the d iscovery cut-off “is the date by which all discovery

, including a ll hearing s on and any related motions, is to be completed.” Reasoning that “a hearing o n any discovery motio n c ould not be completed before” A pril 23, and because “discov e r y not completed before the discovery cut-off date is not enf o rc e able,”F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 7

F riedman maintained that he “was not r equired to provide any response to Defendants’ discovery requests.”

After the close of discove ry , F r iedman moved for
summary judg ment on the copy rig ht infring ement issue. I n response, L ive Nation stipulated to liability for infring ement, and the district c ourt entered partial summary judgm e n t i n F riedman ’ s favor. L ive Nation then moved for partial
summary judg ment o n F riedman’s CMI claim, and, to the

ex tent F riedman claimed L ive Nation’s i n f ring ement was “committed willfully ” under 17 U.S.C. § 504(c)(2), on the
copy rig ht infring ement claim. Rely ing larg e ly o n F riedman’s discovery de f

a u l t , L ive Nation arg ued that F riedman h ad produced no evidence whatsoever indicating that L ive Nation had w illfully infring e d h i s copy rig hts or had knowing ly removed CMI from a

ny o f the imag es. I n h i s opposition to L ive Nation’s motion, F r iedman r e q uested that the court permit him to withdraw an y deemed admissions under F ederal Rule of Civil Procedure 36(b).

W ithout referring to deemed a dmissions or ex plicitly ruling on F riedman’s Rule 3 6(b) r e q u e st, the district court g ranted L ive N ation’s motion for partial summary judg ment. On the CMI cla i m , the c ourt found that “F riedman has offered no evidence sug g e sting that L ive Nation Merchandise actually removed CMI from any of his Run-DMC photog r a p h s, much less that it did so knowing ly o r intentionally .” As to Fr iedman’s claim of willful infring ement , t h e court concluded that “the b urden of proof here r ests on F riedman, and it is not clear that he h as offered
any evidence that would create an issue of fact for a jury .”

F riedman nex t f

iled a r evised statement of dama ges claiming

, “ [ i] n lig ht of the Court’s Order GrantingF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 8

Defendant’s Motion fo r S u mmary J udg ment, the max imum statutory d amag e award” of $3,120,00 0

. F riedman later

ex p lained that this fig ure was based o n records indicating that L ive Nation had distributed o ne of the t-shirts to 27 r etailers, the other t-shirt to 44 retailers, a nd the calendar to 33 retailers for a tota l o f 104 separate statutory damag e awards o f $30,000 each. See 17 U.S.C. § 504(c)(1).

The district court rejected this calculation, ruling that F riedman was “entitled to o nly one statutory damag es award
per infring ed work.” Even if F riedman’s calculation of 104 “downstream infring ers” were correct, the cour t held, this

case “involves photog r aphs in a mass-marketing campaig n.” Althoug h a p r i o r Ninth Circuit case, Columbia Pictures Television v. Krypton B r o adcasting of Birmingham, Inc.
, 106 F .3d 284 (9th Cir. 1997), rev’d on other grounds sub

nom. Feltner v. Columbia P ictures Television, Inc.
, 523 U.S. 340 (1998), w as “arg

uably consistent wit h [ F riedman’s] position if read broadly enoug h ,” the court stated that “there is nothing in [ Columbia Pictures ] that sug g ests its r easoning should be a

pplied to a mass-marketing campaig n such as that at issue in this case.”

This appeal followed.

D ISCUSSION

On appeal, F riedman challeng e s the district court’s g rant of summary judg ment to L ive N ation on his willful infring ement and CMI violati o n c l a ims. He a lso c halleng e s the district court’s order limiting his recovery to one statutory damag es award per infring ed work.F R I E D M A N V

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I

. “Summary judg ment is appropriate only if, t a k ing the evidence and a ll reasonable inferences drawn therefrom in the lig ht most favorable to the non-moving party , there a r e n o g enuine issues o f material fact a n d t he moving party is entitled to judg ment as a matter of law.” Torr es v. City of Madera

, 648 F .3d 1119, 1 123 ( 9th Cir. 2011) (citing Corales

v. Bennett
, 567 F .3d 554, 562 (9th Cir. 2009)). “[ T] here is no issue for trial unless there is sufficient evidence favoring the nonmoving p a r t y fo r a jury to return a v erdict for that party

. I f the evidence is mer el y c o lorable, or is not sig nificantly probative, summary

judg ment may

be g ranted.” M

cIndoe v. Huntington Ingalls Inc.
, 817 F .3d 1 170, 1 173 (9th Cir. 2 016) (quoting R .W

. Beck & Assocs

. v. City & Borough of Sitka

, 27 F

. 3d 1475, 1480 n

. 4 (9th Ci r. 1 994)). I n d etermining whether there is sufficient e vidence to s u p p ort a g rant o f
summary judg ment, we “review[ ] the recor d as a whole.” Vander v

. U.S. Dep’t of Justice
, 268 F .3d 661, 6 6 3 (9th Cir. 2001).

B e fore proceeding

to the merits of the g rant of summary judg ment, we consider, a n d reject, a thres h old question

— L ive Nation’ s c ontention that it is entitled to summary judg ment on the basis of F r iedman’s discover y d efault. 2

2 Fried m an d o es n o t d isp u t e th at h is o bj ectio n s to th e in t erro g ato ries an d
req u e s ts f o r ad m issio n w ere u

n tim ely

. Fried m an d o es co n tin u e to p ress h is arg u m en t, raised in itially i n th o se o b j ectio n s, th at L iv e Natio n ’ s d isco v ery req u ests w ere th em selv es u n t im ely becau s e t h ey req u ired a resp on s e o n A

p r i l 1 9
, 2 01 2
, j u st f

o u r d ay s b ef

o re th e d isco v ery cu t- o f

f d ate o f A p ril 2 3

. Fried m an cites n o au th o rity f o r t h e p r o p o s itio n th at a d isco v ery req u est w ith

a d ead lin e p rio r to th e d isco v ery cu t- o f f co u ld b e

n o n eth eless u

n tim el y

. In an y case, Fried m an w aiv ed th is ob j ectio n b y f ailin g tim ely

to raise it. S

ee Fed . R. Civ . P . 3 3 (b )(2 ); 3 6 (a)(3 ).F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 10

F riedman’s failure to specify evidence in response to an interrog atory does not mean that the evidence does not ex ist in the record. I n both his motion for summary judg ment a nd his opposition to L ive N ation’s motion for partial sum mary judg ment, F riedman p ointed to specific evidence in the record upon which he relied.

Second, a s t o a ny d eemed a dmission due to h is failure timely to respond to the r e q uest f or admissions, F riedman made a motion f

o r relief under F ederal Rule of Civil Procedure 36(b)

, w h i ch provides that a court “may p ermit withdra w al o r amendment [ of any deemed admission] if it would promote the presentation of the merits o f t h e action and if the c ourt is not p ers uaded that it would prejudice the requesting party in maintaining or defending the action on the merits.” L ive N ation’s contention to the c o ntrary notwithstanding

, Conlon v. United States
, 474 F

. 3d 616, 625 (9th Cir. 2007) does not require that a request f or relief under Rule 3 6(b) be broug ht in a separate mot i o n

. Rather, Conlon
stresses the discretionary nature of relief under Rule 36(b). Nor does Rule 36(b) m a n d ate that relief from a deemed admission may be g ranted only upon a showing o f go od

cause. As Conlon ex plained, the two f actors listed in the rule

are mandator y , but a district court “ may consider other factors, including whether the moving party c a n show g ood

caus e for the delay .” Conlon

, 474 F .3d at 625 (emphasis added).

The district court n ever ex plicitly r u l e d on F riedman’s Rule 36(b) motion, but it n ecessarily g ranted it. T h e court

never stated that F ried m a n had been deemed to make any admissions, nor did it rely on any of t h e requested admissions. I nstead, the court consi d e r e d the summary judg ment issue on the merits, discussing specific evidence inF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 11

the rec o r d a

nd stating

, w ith respect to the request for admissions d i s pute, only that F riedman had attempted to “sidestep[ ] ” discovery

. Given this sequence, the district court necessarily g ranted, albeit implicitl y , F riedman’s request to withdraw the d eemed admis s i o n s

. I t had authority to do so, to “promote the presentation of the merits of the action” and because the timing of the request was so late in the discovery period that L ive N ation could not have been prejudiced in its disco v er y conduct by the inability to rely on deemed admissions.

A. W illful Infringement

Under the Copy

rig ht Act, t h e amount of damag es a plaintiff may r ecover for infring e ment depends on whether the infring ement was “comm i t t e d willfully .” 1 7 U .S.C. § 504(c)(2). T he copy

rig ht owner has the burden of proving willfulness. Id. “[ A] finding of ‘willfulness’ in this contex t

can be based on e ither ‘intentional’ be h a v i or, or merely ‘reckless’ behavior.” In re Barboza , 545 F .3d 702, 707 (9th Cir. 2008) (citations o mitted). “To prove ‘willfulness’ under th e Copy rig ht Act, the plaintiff must show (1) that the defendant was actually a ware o f t h e infring ing activity

, o r (2) that the defend a nt’s a c tions were the result of ‘reckless disreg ard’ for, or ‘willful blindness’ to, the copy r ig ht holder’s

r i gh ts.” Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc.
, 658 F

. 3d 9 36, 944 ( 9th Cir. 2011) (quoting Island S oftware & Computer Serv., Inc. v. Microsoft Corp.
, 413 F .3d 257, 263 (2d Cir. 2005)).

A d etermination of willfulness requires an assessment o f

a defendant’s state of mind. “ Questions involving a person’s
state of mind

. . . a

re g enerally factual issues inappropriate for resolution by summary judg ment.” F.T.C. v. Network Servs.F R I E D M A N V

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Depot, Inc.
, 617 F

. 3 d 1 1 2 7
, 1139 (9th Cir. 2010) (quoting Braxton-Secret v. A.H

. Robins Co.
, 769 F .2d 528, 531 (9th Cir. 1985)). I ndeed, a s the d istrict c ourt noted, L ive Nation

wa s n o t able to c ite any “cases in which a court has g ranted
summary judg ment in favor of a d efendant on the issue o f willfulness.”

The district court nonetheless g ranted summary judg ment to L ive N a t i o n on the willfulness issue, concluding that F riedman had not “offered any evidence that would create an issue of fact f

or a jury ” reg a

r ding L ive Nation’s awareness o f

or reckless disreg ard concerning F riedman’s copy rig h t rig hts. Not so.

On the current record, a jury could reasonably conclude that L ive Nation’s approval p rocedures amo u n t e d to

r e cklessness or willful blindness w ith respect to F riedma n ’s intellectual p roperty rig hts. L ive Nation’s Product Approval F orms say nothing whatsoever about establishing or reporting

on who holds the rig h ts to the imag es whose use is proposed. The forms only include fields indicating the manufacturer o f the proposed product, the artist r epresen t e d, and the sug g ested price, along w ith space for unspecified “comments” by L ive Nation and the artist. F ro m t h e f ace of the documents, o ne could conclude that they are directed at d esig n decisions, not the rig hts to the photog r aphs. Nor do the sp e c ific f orms sig ned by Run-DMC indicate in any way that the g roup was clearing the leg al rig h t to use the photog raphs, on their o wn behalf or any

o ne else’s.

I n a declaration in support of L ive Nat i o n ’ s summary judg ment motion, one o f its employ ees ex plained tha t w h en artists did not own the rig hts to photog raphs, “they were not supposed to, and should not, p rovide their written appro valF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 13

. . . to develop merchandise using th o s e photog raphs.” B ut the employ ee did not say how o r when R un-DMC was apprised of this duty

. She asserted only th a t a s an industry practice “it is g enerally the responsibility of the music artists’ personal manag ers to uncover the relevant facts and ascertain the scope of the music artists’ rig hts.” Given an approval
process that nev e r ex plicitly a sks about copy rig h ts at all, a jury c ould reasonably conclude that L ive Nation’s reliance on the artists w ho were the subjects of the p hotog raphs a t issue
to c lear photog raphic rig hts, r ather than on the photog raphers who took them — based only on a purported industry practice

never reflected in any d o cument

— amounted to recklessness or willful disreg ard, and thus willfulness.

That inference is particularly strong in this case. L ive Nation submitted evidence showing that it knew it needed to take special care with respect to Fr i e d man’s imag es. I n response to an unrelated r equest to use certain photog raphs o f Run-DMC, a L ive N ation employ ee sent an e m a i l s t ressing that “we do not want t o u s e ANY Glenn F reidman [ sic] Photos for RUN DMC[ .] [ H] e owns all the rig hts to his photos and is really not int er e s ted in u sing them for [ m] erchandise and he is r eally e x pensive to e ven g et clearance for.” This email w as sent on March 26, 2009, a fter the infring ing use of F riedman’s photog raphs at issue in this
case, b ut b efore F riedman b roug h t that infring ing u se to L ive Nation’s attention on October 21, 2010. L ive Nation arg ues that this email demonstrates that it took active steps to respect F riedman’ s r ig hts and avoid knowing ly using any of his photos without permission. B ut a jury could as p l a u s i bly understand it to demonstrate that L ive N ation k n ew there was

a risk that photos of Run-DMC would be F riedman’s photos, b u t n onetheless went forward with developing theF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 14

merchandise w ithout taking steps to ascert a in whether it featured F riedman’s work.

W e therefore c onclude tha t , d rawing all inferences in F riedman’s favor, the evi d e n ce i n the record g ave rise to a triable issue of fact as to L ive Nation’s willfulness, and we reverse the district court’s g rant of summary

judg ment.

B. The CMI Violations

Section 1202(b) of the Dig ital Millennium Copy rig ht A ct pr o h i b its, inter alia, the d istribution of works “ knowing that the copy rig ht manag ement information h as been removed o r altered without authority of the copy rig h t owner or the law,” and with knowledg e tha t s u c h distribution “will induce, enable, facilitate, or conceal” copy r ig ht infring ement. 3 17 U.S.C. § 1202(b). I n g r anting summary judg ment on the CMI claim, the district court ag ain r elied on w hat it described

as “F r iedman’s complete f ailure to adduce competent evidence in discovery or in opposition to Defendants’ Motion” and concluded that “he h as made no factual showing that L ive Nati o n M er chandise either removed the CMI in question (the alleg e d ‘act’) or did so knowing ly (the requisite state of mind).”

W e note at the outset that the district court f ocused on the
wrong question. The statute do e s prohibit the intentional removal of CMI

. See 17 U.S.C. § 1 202(b)(1). B ut F riedman could a lso prevail upon a showing tha t L ive Nation

3 A s d ef in ed b y th e statu te, “ co p y rig h t m an ag em en t in f

o rm atio n ” ref

ers to v ario u s ty

pes o f “ in f o rm atio n co n v ey ed in co n n ectio n w ith co p i es

. . . o f a w o rk ,” in clu d i n g th e n am e o f th e w ork

, th e n am e o f th e au th or, an d th e n am e o f

th e co p y rig h t h o ld er, am o n g o th ers. 1 7 U.S.C. § 1 20 2 (c).F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 15

distributed his works with the k n owledge that CMI had been removed, e ven if L ive N ation d id not remove i t

. S ee id. § 1202(b)(3). T he question, therefore, is whether evidence in the r ecord creates a triable issue of fact as to whether L ive Nation distributed F riedman’s photog raphs with the requisite knowledg e. W e conclude t h a t i n the circumstances of this case, it does. 4

As we have p reviously ex p lained, “[ a] m oving party without the ultimate burden of persuasion at trial” — such a s L ive Nation in this case — n o n e t heless “has both the initial burden of production a

nd the ultimate burden o f persuasion

on a motion for summary judg ment.” Nissan Fire & M arine I n s

. C o

. v. Fritz Companies, Inc.
, 210 F .3d 1099, 1102 (9 t h Cir. 2000) (citati o n s o m itted). The moving party may discharg e its initial burden by “show[ ing ] that the nonmoving party does not have enoug h e vidence of an essential element
to carry its ultimate burden o f pers u a s i o n at trial.” Id. B ut, “to carry its u ltimate burden of persuasion on the motion, the moving party must persuade the c ourt that there is n o g enuine issue of material fact.” Id.

W h ere “a moving party carries its burden of production,
t h e nonmoving party must p roduce evidence to support i t s claim or defense. ” Id. at 1103 (citations omitted). W e may

4 In reach in g its co n t

rary co n clu sio n , th e d istrict co u rt relied o n an o th er

case w ith so m e w

h at an alo g o u s f

acts, qu o tin g it f

o r th e p ro p o sitio n th at

“ Plain tif f ask s th e Co u rt to s i m

p l y a s su m e th at [Def

en d an t s] m

u st h av e

cro p p ed th e [CMI] an d m

u st h av e po ssessed th e req u isite in ten t.” (q u o tin g W illia m W a d e W a ller Co

. v. N

exsta r Bro a d

., In c. , No

. 4- 1 0- CV- 0 0 7 6 4 GT E, 2 0 1 1 W L 2 6 4 85 8 4
, at * 5 (E.D. A rk

. J u ly 6, 2 0 1 1 ) (alteratio n s in th e d istrict co u

rt’ s o p in io n ). T h is relian ce w as m isp laced

, as, ag ain

, th e statu te d o es n o t req u ire th at L iv e n atio n h av e “c r o p p e d ” th e CMI, in ten tio n ally

o r o th erw i se.F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 16

assume that L ive N ation c arried its initial burden o f production in its motion for partial s u mmary judg ment. Contrary to the district court’s assertion, however, F riedman did produce evidence suppo r t i n g his claim. Most importantly

, F riedman produced the imag es as they a ppeared

o n L ive Nation’s merchandise and the same imag es as they had appeared on Sony ’s website and in h i s book. I n his motion for summary judg ment, h e compared the m, demonstrating that there were striking similarities.

F or ex ample, so m e o f the photog raphs used in L ive Nation’s calendar included alterations, such as tint effects a nd added log os, that F r iedman had authoriz ed only for the Sony website. Photos that appeared in the Sty le Guide appeared to have been scanned from F riedman’s book, as they contained captions and other lay out features that a ppeared in that source alone. The imag es on L ive Nation’s products did not include
copy rig ht information that had been pres e n t o n the earlier versions.

“[ A] ‘striking similarity ’ between the works may g ive r ise
to a permissible inference o f copy ing .” B axter v. MCA, Inc.
, 812 F .2d 421, 423 (9th Cir. 19 8 7 )

. H ere, the fact that the
p h otog raphs u sed by L ive Nation were ex act copies of t h e imag es precisely as they appeared o n Sony ’s website and in F riedman’s book g ives r i s e to the compelling inference that L ive Nation’s photog raphs were directly copied f r o m those

sources. B ecause the only mat e r i a l difference in the L ive Nation versions w a s that the CMI was missing

, it was necessarily the case that the CMI had been remove d o n the copied version.

The o n ly question, th e n , i s whether the evidence as a whole permits a reasonable inference that L ive Nation knewF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 17

of the removal of the CMI

. A s to this question, a reasonable jury could c ertainly conclude that L ive N ation had knowledg e that photog raphs a re often copy rig hted. I ndeed, L ive Nation’s 2009 employ ee email indicates its awareness that F riedman himself often held the copy r ig hts to photog raphs o f Run-DMC. F urthermore, L ive Nation has never offered a ny

e x planation of how it came to possess the imag es. I t d i d

, however, provide the declaration of one of i t s officers, w ho asserted that his “investig ation

. . . uncovered no evidence that [ L ive Nation] ever o btained a ny o f M r

. F riedman’s claimed p hotog raphs of Run-DMC from any website

. ” (emphasis added). A jury could draw an adverse inference from this artfully worded lang uag e, w hich c ar efully a voids either an outrig ht denial that L ive Nation copied the photog raphs knowing th a t t h e CMI had been removed or an

ex p lanation as to what the investig ation did uncover about the orig in of the photog raphs.

At bottom, L ive Nation’s arg u ment amounts to a claim that F riedman was required to produce dire c t e v idence o f L ive Nation’s knowledg e of the CMI removal. That is not the law. This court has long r ecog n iz ed that “ c i r cumstantial evidence can be used to prove any f act.” United States v

. Ramirez-Rodriquez

, 5 52 F .2d 883, 884 (9th Cir. 1977). W e have noted in particular that whether a party h a d knowledg e

o f a p a rticular circumstance “is a question of fact subject to demonstration in the u sual way s, including inf e r e nce from circumstantial e v i d ence.” Harrington v. Scribner

, 785 F .3d 1299, 130 4 (9th Cir. 2015) (quoting F armer v. B rennan , 511 U.S. 825, 84 1 –42 (1994)). I ndeed, whenever state o f mind is a t issue, “‘direct p roof’ of one’s spec i f i c wrong f ul intent is ‘rarely available’” a nd so recourse to circumstantial evidence is most often necessary

. United States v. Dearing
,F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 18

504 F .3d 897, 901 (9th Cir. 2007) (quoting United S tates v

. Marabelles , 724 F .2d 1374, 1379 (9th Cir. 1984)).

L ive Nation is wrong , t h er e fo re, that the evidence in the record as a whole is not consi s t en t w i t h a reasonable, if not particularly strong , i n f

erence that L ive Nation knew of the removal of the CMI when it distributed F riedm a n’s photog raphs. B ecause F riedman had therefore discharg ed his burde n of production at summary judg ment, the burden shifted back to L ive Nation “to c arry its ultimate burden o f persuasion” by “persuad[ ing ] the court that there is no g enuine issue of material fact.” Nissan Fire
, 2 1 0 F .3d at 1102. I t mig ht have done so by providing some ex planation for how it c a m e t o possess F r iedman’s imag es — missing their CMI — in the first pl a c e, e stablishing its lack o f knowledg e and neg ating the inference drawn from the jux taposition of the photog raphs.

W e recently employ ed a similar burden-shifting approach in another copy

rig ht c as e

. I n A dobe Systems I nc. v

. Christenson

, 809 F .3d 1071, 1 079 ( 9th Ci r

. 2 0 15), we h eld that when a party asserts the first sale a ffirmative defense, its burden at summary jud gment requires it only to produce “evidence sufficien t for a jury to find lawful acquisition o f title, throug h purchase or otherwise, to g enuine copies of the
copy rig hted software.” I f the copy rig ht holder asserts that its acquisition could not have been lawful because “the software

wa s never sold, o n ly licensed, the burden shifts b ack to the
copy rig ht holder to establish such a license or the a bsence o f

a sale.” Id. W e n o t e d t h a t t his rule “accords with

. . . our g eneral precedent t h at fairness dictates that a litig ant oug ht
not have the burden of proof with respect to facts p a rticularly within the knowledg e of the opposing party .” Id.F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 19

So too here. H ow L ive Nation came to possess F riedman’s photog raphs — a nd thus wh e t her it h ad knowledg e that the C M I had been removed — is a fact “particularly within” L ive N a tion’s knowledg e. I t w o uld be unfair to burden F r iedman a t the summary judg ment stag e with proving that knowledg e with g reater specificity than he did

. W e therefore reverse the district court’s decision
g ranting summary judg ment to L ive Nation on F riedman’s CMI claim.

II. Statutory Dam ages

The Copy

rig ht Act provides that “the copy rig ht ow n er may elect, a t a n y time before final judg ment is rendered, to
recover, instead of actual damag es and profits, an awa r d o f statutory damag es for a ll infring e ments involved in the action, with respect to any one wo rk, for which any o ne infring er is liable individually

, or for which any two o r more infring ers a

re liable jointly a

n d severally

. . . .” 17 U .S.C. § 504(c)(1). The number o f a wards available u n d e r this provision depends not on the number of separate infring ements, but rather on ( 1) the numb er of individual “works” infring ed and ( 2) the number of separate infring ers. See W alt Disney Co. v. Powell

, 897 F

. 2d 565, 569 (D.C. Cir. 1990). The o nly issue on appeal is the number of infring ers. 5

5 A s to th e n

u m b er o f w o rk s in f

rin g ed

, th e d istrict co u

rt said th at it w as

“ n o t clear” th at it co u ld “ d ecid e th e issu e o f th e n u m b er of w o rk s o n th e

cu rren t reco rd ,” bu t th at “ [t]h e n u m b er o f in f rin g ed w o rk s is lik ely eith er f iv e (th e n u m ber o f Fried m an ’ s ph o to g rap h s t h at h av e b een i n f

rin g ed ) or tw o (th e n

u m ber o f Fried m an ’s c o p y rig h ted b o o k s th at h av e b een in f rin g ed ).” T h at ru lin g is n ot at issu e o n ap p eal.F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 20

W e may assume for pre sent purposes that, a s F riedman claims, L ive Nation sold infring ing merchandise to 104 separate retailers. Our question is whethe r , a p ply ing Co l umbia Pictures
, F riedman is entitled under the statute to 104 separate awards, because the retailers were each join tly

a nd severally liable with L ive N ation but not collec t i v el y jointly a nd severally liable f

or the infring ement o f any o ne work.

I n Columbia Pictures
, the defendant owned t h r e e televis i o n stations — also defendants in the suit — e ach o f which infring ed works o wned by the plaintiff. W e concluded that the plaintiff was entitled to separate awards w ith reg ard
to each o f t h e three stations, which were “ separate infring ers.” 106 F .3d at 294. L ooking to the tex t of Section 504(c)(1), we ex plained that “w hen statutory damag es a re assessed ag ainst one defendant or a group of defendants h eld
to be jointly and severally liable, each work i nfring ed may form the basis of only one award, reg ardless of the number o f separate infring ements of that work.” Id. (emphasis added). On the other hand, Columbia Pictures ex plained, leg islative history indicated that “where separate infring em ents for which two or more defendants a r e not jointly liable are joined i n the same action, separate awards of statutory damage s would be appropriate.” Id. (emph a s i s added) (quoting H.R. Rep. No. 94-1476, 94th Cong
., 2d Sess., at 162). B ecause the station s w e re each jointly and severally liable with the defendant but not with each other, we concluded, the p laintiff

was entitled t o t h r e e separate awards. Id. at 294–95 & 294 n.7.

A prominent treatise provides a h y pothetical (much d i s c u ssed by the parties and the lower c ourt) ex plaining an analog ous situation:F R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 21

I f each defendant is liable f or only one of the several infr ing ements that are the subject o f the lawsuit, then e a ch defendant will be liable for a separate set of statutory damag es (each with its own mini m u m). Suppose, for

e x a m p l e , a s i n g l e c o m p l a i n t a l l e g e s infring ements of the p ublic performance rig ht in a motion picture ag ainst A, B , and C, e ach of whom owns and operates her own mot ion picture theater, and each of w ho m , without

au thority

, publicly performed plaintiff’s motion p i ct u r e

. I f A
, B
, and C have no relationship with one another, there is no joint

or several liability as between them, so t h at each is liable for a t least a minimum $750 statutory damag e award

. S u p p o s e , further, that D, without authority

, distributed plaintiff’s motion picture to A, B
, and C. Althoug h A, B
, a n d C are not jointly or severally liable eac h with the other, D will b e jointly a nd severally liable with each of the others. T herefore, three
sets of statutory damag es may b e awarded, a s to each of w hich D will be jointly liable for at least the minimum of $750. H o w e v er, D ’s
pa rt i c ipation will not create a fourth set o f statutory damag es.

Nimmer on Copyright § 14.04[ E ] [ 2] [ d ] (2016) (emphasis added).

F riedman arg ues that Columbia Pictures g overns the situation in this case, as a number of “ downstream infring ers”

— retailers to whom L ive Nation distr ibuted infring ing merchan d i se — are each jointly a nd severally liable forF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 22

infring ement with L ive Nation, but no t with each other. A s in that case, he contends, he s hould be e ntitled to a separate award f or each “unit” o f infring ers jointly and severally liable.

The district court r eject e d this arg ument. I t survey ed a

num b e r o f recent district court decisions that “ rejected outrig ht both the [ Colum b i a P ictures ] decision and the Nimmer hy

p othetical, finding them inapplicable to situations involving larg e numbers of infring ements.” (quoting Arista Records LLC v. Lime Grp. LLC
, 7 84 F

. Supp. 2d 3 1 3
, 3 18 (S.D.N.Y. 2011)); see also Bouchat v

. Champion P rods., Inc.
, 327 F

. Supp. 2d 537, 553 (D. Md. 2003) (“[ Profe s s o r Nimmer] did not address, and doubtlessly did not consider, a coordinated mass marketing operati o n such as [ the Defendant’s] business.”). L ike those c ases, the district court concluded that, due to the larg e num b e r of downstream infring ers, g ranting F riedman a separate award for e ach would “lead to an absurd result.” The c o u r t acknowledg ed th a t Columbia Pictures w as “binding precedent” but

c oncluded that this c ase was “disting uishable”: wher e a s Columbia P ictures “involved t elevision shows and only [ three] downstream infring ers

. . . , [ t] his case involves photog raphs in a mass-marketing c ampaig n with 104 downstream infring ers,” and there was “nothing in Columbia that s u gge sts its r easoning should be applied to a massmarketing campaig n such as that at issue in this case.”

W e cannot accept this rationale. Columbia P ictures is the law of this circuit, and nothing in the opinion — o r in the tex t of the statute itself — admits of a “ma s s -marketing ”

ex c e ption. Creating such a n ex c eption would mean r e a d i ng th e s t atute in two different way s depending on how many down-the-line violations there were. And it would require usF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 23

to come up with some d efinition of the number of violations required to invoke the ex ception, without any apparent basis for doing so.

W e do ag ree , t houg h, that F riedman reads Columbia Pictures too broadly

, alb ei t f or a different reason. Our holding in Columbia Pictures was ex plicitly premised on the fact that each of the downstream infring ers for w hom the plaintiff r eceived a separate d amag es award was a defendant in the case. B efore the question o f damag es was raised, those parties had already

been adjudicated liable for infring ement,

an d j o i n tly and severally liable with another infring er. That is not true in this c ase. Here, F r i e dman first asserted that there were 104 downstream infring ers only after the question of L ive Nation’s liability for its own infring e ment had been resolved, not having named any o f those do wnstream infring ers as defendants in the case.

Colu m b ia Pictures ’s emphasis on the status of the d o wnstream infring ers as defendants is g r ounded in the lang uag e of the statute. Section 504 ( c )( 1 ) p rovides f or “an award of statutory damag es for a ll infring ements involved in the action
, with respect to an y o n e w o rk, for w hich a ny o ne infring er is liable individually

, or for which any two o r more infring ers a

re liable jointly a

n d severally

. . . .” 17 U .S.C. § 5 0 4 ( c) ( 1 ) ( emphasis added). Any downstr e a m infring ements cannot be “involved in the action” unless the alleg ed infringe r s responsible for those infring e ments were j o i n ed as defendants in the case, and the particular alle g e d infring ements involving them adjudicated.

This interpretation is supported by the leg islative history

on which Columbia Pictures relied, w h i c h ex plains that “where separat e infring ements for which two or moreF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 24

defendants are not jointly liable are joined in the same action
, separate awards of statutory damag es would be appropriate.” H.R. Rep. No. 94-14 7 6
, 94th Cong
., 2d Sess., at 162 (emphasis a dded). Cong ress did not, therefore, intend for courts, in determining the amount of damag es, to eng a ge i n

a n e n t irely separate adjudication as to the liability of a larg e g ro up of p eople not parties to the case, with respect to separate infring ing acts not involved in t he action. To the contrary , the situation Cong ress contemplated was o n e like that in Columbia Pictures
, in which each jointly and severally liable pair of infring e rs was “joined in the same a c t i o n” a nd liable for the same infring ements.

As the district c o urt rig htly recog niz ed, the broad r eading of Columbia Picture s Friedman urg es leads to e x tremely unlikely results, with d irect infring ers becoming liable for astronomical sums in cases with l a r ge numbers o f downstream infring ers unrelated to each other. This risk has become particularly acute in the intern e t era, where rapid peer-to-peer f

ile sharing has enabled m a s s piracy of books, films, music, and other copy r ig hted materials. See, e.g. , Metro-Goldw

yn

- Mayer Studios Inc. v. Grokster, Ltd.

, 545 U.S. 913, 920 (2005).

A district court decision illustrates the problem. I n Arista R ecords LLC v. Lime G roup LLC
, 784 F

. Supp

. 2 d 3 1 3 (S.D.N.Y. 2011), a r ecord company sued the maker o f an online file-sharing prog ram th a t allowed users to download recording s and thereby make them available for peer-to-peer sharing

. T he plaintiffs identified “approx imatel y 11,000 sound recording s th a t they alleg e[ d] have been infring ed throug h the L imeW ire sy stem.” Id

. a t 315. Rely ing on Columbia Pictures and the Nimmer hy pothetical, t h e plaintiffs a r gu e d that they were entitled to recover separateF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 25

statuto r y damag e awards for each downstream infring e r

— i.e., sharer — of each infring ed work. The c ourt rejected this position, noting that under this theory “ Defendants’ damag e s could reach into the trillions ” of dollars. Id. at 317. L ike the Ari s t a Records court, we cannot conclude that Cong ress intended such an ex orbitant result, althoug h we reach that conclusion for different reasons than did the A r i s t a Records
court.

W e therefore hold that Section 5 04(c)(1)’s p r o vision o f separate statut o r y d amag e a wards for the infring e ment o f each work “ for which any two or more infring ers a re liable jointly and sever a l ly ” applies only to parties who have been determined j o i n t l y and severally liable in the course of the liability determinations in the case for th e i n fring ements adjudicated in the action. A p l a i n t iff seeking separate damag es awards on the basis of do w n stream infring ement must join the alleg ed downstream infring ers in the action a nd
prove their liability for infring ement. B ecause F riedman did
not join any of his al l eg ed downstream infring ers a s defendants in this c a se, the district court correctly held that he

was limited to one award p e r work infring ed by L ive Nation. W e therefore affirm the district co urt’s statutory damag e s ruling

.

CONCLUSION

B ec a u s e there was sufficient evidence in the r e cord to allow a reasonable jury to conclude that L ive N ation willfully infring ed F riedman’s copy rig hts and knowing ly r emoved CMI from the imag es it u sed, we reverse the d is trict court’sF R I E D M A N V

. L I V E N A T I O N M E R C H A N D I S E 26

g rant of summary judg ment to L ive Nation on those issues. W e affirm the district c ourt’s ruling as to statutory d amag es.

AF F IRMED IN P ART AND REVERSED IN P ART.