Perennial Farm found liable in copyright infringement suit

SALEM, Ore. —A U.S. District Court in Maryland granted partial summary judgment in favor of Stepables owner Under A Foot Plant Co., finding that The Perennial Farm infringed 12 of Stepables copyrighted images on its Perennial Farm and Treadwell Plants line websites and marketing materials.

Stepables is Under A Foot Plant Co. product line of perennial plants for walkways, borders and lawn replacement, and available throughout the U.S. and Canada.

“We have been fighting Perennial Farms since 2011 to have our photos removed from their competing websites and marketing materials,” said company president Frances White, creator of the copyrighted images and the Stepables program.

White says she first became aware of the unauthorized use of her photos in 2011, when she found Stepables photos being used on The Perennial Farms homepage to promote the Treadwell Plants line and as the cover photo for a Treadwell Plants marketing brochure. She then found another of her photos on the cover of the 2011 Perennial Farm catalog. According to White, at this point she alerted The Perennial Farm and the company agreed to stop using and take down her copyrighted works.

In 2012, White found photos she had taken of her personal residence and her nursery’s display gardens on the Treadwell Plants backdrop for the Perennial Farms tradeshow booth, as well as on other marketing materials. White alerted The Perennial Farm of its unauthorized use and received a promise to take down the infringing photos.

The dispute continued into 2014 and led to the current lawsuit, UNDER A FOOT PLANT, CO. v. EXTERIOR DESIGN, INC. U.S. District Court for the District of Maryland, Civil No.: BPG-15-871.

In its defense, The Perennial Farm claimed that there were “clear distinctions” between the Stepables photographs and the pictures displayed on its marketing materials and websites. But U.S. Magistrate Judge Beth P. Gesner found, “As the similarities between the twelve protected works and defendant’s images . . . are so overwhelming as to preclude the possibility of independent creation, and as defendant has offered no evidence to rebut this finding, plaintiff has proved that defendant copied its protected works.”

Perennial Farms also argued that it was not liable because “the photographs used on its website may have been obtained ‘from garden centers, landscapers, and public domain websites,’ from purchases through ‘various websites’ or the product of ‘independent creation.’” The court disagreed, and said that even if that were the case, The Perennial Farm would still be liable for reproducing the protected works without permission.

Ed Kiley, director of sales and marketing for The Perennial Farm, directed questions to the company's counsel, but did send this comment via email: "The Perennial Farm is hesitant to comment on this ongoing case, but remains anxious to set the record straight when all relevant facts come to light at trial." The Perennial Farm's attorney could not be immediately reached via phone.

The summary judgment was granted for 12 images and denied for nine others. The next step for the case is a jury trial to determine whether Exterior Designs infringed on those nine additional images, how many of the infringements are deemed to be willful infringements of Stepables’ copyrighted works, and the amount of monetary compensation to be awarded.

This case has implications for the horticulture industry. When a business competitor uses a photo to create marketing tools that promotes its own product to the detriment to the copyright owner, the competitor may be sued for copyright infringement, found liable and be required to pay actual damages and the disgorgement of profits or statutory damages and legal fees. In a case where the infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000 per copyrighted work.