Copyright
Direct Infringement
Volitional Conduct Requirement
Internet Law
Internet Service Provider (ISP)
Metadata
URL
Secondary Liability
DMCA Safe Harbor
Abusive Litigation
Contempt of Court
A Per Curiam Opinion.
John M. Walker, Jr., Circuit Judge, concurring
in the result: Polyvore is an internet service provider that ran a website, Polyvore.com,
that allowed users to create and share digital photo collages devoted to
fashion, art, and design. Polyvore.com’s “Clipper” tool let users “clip” images
from other websites and collect them on Polyvore’s site.
When a user uploaded an image to Polyvore.com,
it triggered a series of automatic technical processes: Polyvore (1) attached a
hyperlink to that image that linked back to the image’s original site; (2) gave
the image a unique Uniform Resource Locator (“URL”) that identified its precise
location on Polyvore’s website, Polyvore.com; and (3) indexed the photo so it
was searchable on Polyvore.com. All posted images were displayed automatically
by software—meaning Polyvore employees did not review or interact with user‐posted images before they appeared on the site. Based on these user
uploads, Polyvore.com had an extensive library of searchable images—118 million
when the complaint was filed.
Because some photos clipped by users were
copyrighted images, Polyvore had policies in place that were designed to combat
copyright infringement, including terms of service that prohibited users from
posting copyrighted images, a repeat‐infringer policy, and a notice‐and‐takedown system.
BWP owns copyrights in celebrity photographs,
which it licenses to online and print publications for a fee.
The Volitional Conduct
Requirement:
Section 106 of the Copyright Act gives copyright
holders an exclusive bundle of rights, including the right “to reproduce the copyrighted
work in copies,” and the right to “display the copyrighted work publicly.” 17
U.S.C. § 106(1), (5). The Copyright Act makes parties who infringe on those
rights liable for damages, regardless of whether they had knowledge that the
content was infringing. See 17 U.S.C. § 504. In other words, the
Copyright Act is a strict liability regime. See EMI Christian Music Grp.,
Inc. v. MP3tunes, LLC, 844 F.3d 79, 89 (2d Cir. 2016) [hereinafter “MP3tunes”],
cert. denied sub nom. Robertson v. EMI Christian Music Grp., Inc.,
137 S. Ct. 2269 (2017).
The advent of the internet posed a problem for
this regime, however, since applying strict liability to infringing content
posted online meant that websites could be held liable for infringing content posted
by their users based solely on the existence of the website—an outcome that
could be unfair. See, e.g., Religious Tech. Ctr. v. Netcom On‐Line Commcʹn Servs., Inc., 907 F. Supp.
1361, 1368–70 (N.D. Cal. 1995). In response, beginning in the mid‐1990s, courts began to read into the Copyright Act an implicit
requirement that for a service provider to be liable for direct infringement,
it must have taken some affirmative, volitional step to infringe. See id.
The doctrine posits that to hold a service provider liable for direct
copyright infringement, that infringement must have resulted from the
provider’s own volitional conduct. See id.
(…) An ISP acts volitionally when it creates a
program designed to infringe copyrighted material and selects the copyrighted
material that it copies. See MP3tunes, 1 844 F.3d at 96.
(…) In contrast, the volitional conduct
requirement is not satisfied when an ISP simply displays user‐uploaded images and plays no role in selecting the images.
(…) This principle is also articulated by
Justice Scalia in his Aereo dissent: “The defendant may be held directly
liable only if the defendant itself ‘trespassed on the exclusive domain of the
copyright owner.’” Aereo, 573 U.S. at 454 (quoting CoStar, 373
F.3d at 550). “Most of the time that issue will come down to who selects the
copyrighted content: the defendant or its customers.” Id. at 454–55
(citing Cablevision, 536 F.3d at 131–132).
(…) Likewise, an ISP does not act volitionally
when it automatically makes a single copy of content selected by the user in
response to a user’s request. See Cablevision, 536 F.3d at 123, 132. (…)
“Dish’s program created the copy only in response to the user’s command”.
(…) ISPs that provide additional unrequested
copies of copyrighted material in response to a user’s request for a single
copy, however, may be liable for direct infringement. See MP3tunes, 844
F.3d at 96.
(…) accord Perfect 10, Inc. v. Amazon.com,
Inc., 508 F.3d 1146, 1160–61 (9th Cir. 2007) (holding that
copyright holders who challenged Google’s creation of a thumbnail version of
their copyrighted images, which the user had not specifically requested be
made, had made out a prima facie case of direct copyright infringement).
In this case, there is no evidence that Polyvore
designed the Clipper to retrieve exclusively a specific kind of image that
Polyvore knew to be copyrighted. Instead, the evidence shows that Polyvore designed
a tool that its users could use to clip images generally, whether copyrighted
or not. Thus the single act of designing the Clipper does not amount to
volitional conduct that can be said to “cause the copy to be made” each time
its users selected the image and used the Clipper to create a single copy of
the image. Cablevision, 536 F.3d at 1 131. Accordingly, Polyvore cannot
be liable for direct copyright infringement for designing the Clipper to simply
retrieve photos picked out by users from other websites (before Polyvore makes
any copies).
Likewise, the undisputed record in this case
shows that one copy of user‐uploaded images on Polyvore’s
website was displayed automatically by Polyvore’s software. Like the defendant
ISP in CoStar, Polyvore simply served as a “conduit” that allowed the
user to display his clipped images. 373 F.3d at 551. This “conduit” function aligns
Polyvore with the hypothetical ISP that only displayed user supplied content
that we discussed in Cablevision. 536 F.3d at 132. At the user’s
direction, Polyvore simply displayed the image its user directed it to display.
As to that one copy, it is clear to me that the user, who selected the item to
be copied, and not Polyvore, “caused the copy to be made.” Cablevision,
536 F.3d at 131. Thus, in accordance with Cablevision, Polyvore is not
liable for displaying the images its users uploaded.
(…) And, by stripping its resized images of
their metadata and housing them at separate URLs where they were able to be
viewed by anyone, Polyvore is alleged to have gone further than the defendant
in Perfect 10, who only made temporary thumbnail versions of the
relevant images. 508 F.3d at 1160‐61.
(…) I think secondary liability is the proper
framework for holding an ISP liable for copyright infringement when the ISP
does not select the copyrighted material and make the infringing copy itself
but is aware of it and encourages or contributes to the infringement by the
direct volitional infringer.
(…) Polyvore next argues that even if a jury
could find that it directly infringed BWP’s exclusive rights to display and
reproduce its copyrighted images, Polyvore cannot be held liable for direct infringement
because it qualifies for the safe harbor of § 512(c) found in Title II of the
DMCA. Congress passed Title II of the DMCA in 1998 to “clarify the liability
faced by service providers who transmit potentially infringing material over
their networks.” Viacom Intʹl, Inc. v. YouTube, Inc., 676 F.3d
19, 27 (2d Cir. 2012) (quoting S. Rep. No. 105–190 at 2 (1998)). The act established
four safe harbors to spare ISPs from liability for “claims of copyright
infringement based on (a) ‘transitory digital network communications,’ (b)
‘system caching,’ (c) ‘information residing on systems or networks at the
direction of users,’ and (d) ‘information location tools.’” Viacom, 676
F.3d at 27 (quoting 17 U.S.C. § 512(a)‐(d)). (…) A service provider
that meets all of these criteria is shielded from copyright liability as long
as it also “has adopted and reasonably implemented, and informs subscribers and
account holders of the service provider’s system or network of, a policy that provides
for the termination in appropriate circumstances of subscribers and account
holders of the service provider’s system or network who are repeat infringers;
and . . . accommodates and does not interfere with standard technical
measures.” 17 U.S.C. § 512(i)(1). Since the DMCA safe harbors are affirmative
defenses, a defendant generally has the initial burden of establishing that it
meets the statutory requirements. See Capitol Records, LLC v. Vimeo,
LLC, 826 14 F.3d 78, 94 (2d Cir. 2016).
In response, BWP argues that Polyvore is not
eligible for any safe harbor under the DMCA because (1) by altering the
metadata of 26 images uploaded to its site it interfered with “standard
technical measures” in contravention of § 512(i), and (2) the copying of the additional
images was not infringement “at the direction of the user.” Appellant’s Br. at
41. I agree with Polyvore that BWP has not raised an issue of material fact as
to whether preserving metadata is a “standard technical measure,” but other
questions of material fact still prevent me from saying that Polyvore has shown
that the copying here was done “at the direction of the user.”
Metadata as a standard
technical measure
Because the district court held that Polyvore’s
conduct was not infringing, it did not address whether Polyvore’s stripping of metadata
interfered impermissibly with “standard technical measures” such that Polyvore
was not eligible for the DMCA safe harbor. 17 U.S.C. § 512(i). Because the
proper interpretation of the statutory phrase “standard technical measures” is
a question of law, I address it even though the district court did not. The
DMCA defines “standard technical measures” as “technical measures that are used
by copyright owners to identify or protect copyrighted works.” 17 U.S.C. §
512(i)(2). To qualify as a standard technical measure, a practice must (1)
“have been developed pursuant to a broad consensus of copyright owners and
service providers in an open, fair, voluntary, multi‐industry standards process,” (2) be “available to any person on
reasonable and nondiscriminatory terms,” and (3) “not impose substantial costs
on service providers or substantial burdens on their systems or networks.” 17
U.S.C. § 512(i)(2). When a measure meets these qualifications, “refusing to
accommodate or implement a ‘standard technical measure’ exposes a service
provider to liability.” Viacom, 676 F.3d at 41. In other words, section
512(i) encourages copyright owners and ISPs to work together to establish
technical means by which service providers can cheaply and easily identify
infringing material. See Ventura Content, Ltd. v. Motherless, Inc., 885
F.3d 597, 615 (9th Cir. 2018) (“One can imagine a digital version of the old c
in a circle (©) automatically triggering the uploading software to exclude
material so marked by the copyright owner.”). At issue here is whether metadata
such as that used in the images in this case has become a “standard technical
measure.” 17 U.S.C. § 512(i).
The caselaw provides little guidance on how to
know when a widely followed practice has evolved into a “standard technical measure.”
(…) I need not expound upon what may or may not
constitute a “standard technical measure” because BWP has not come close to establishing
that there is a broad consensus among copyright owners and service providers
that preserving metadata should be so considered.
(…) 17 16 U.S.C. §§ 1202–1204, which establish
civil and criminal penalties for removing “copyright management information”.
(…) More broadly, Congress did not leave it to
the courts to simply pronounce out of thin air that a given technical measure
has become a “standard” in the industry such that interfering with it prevents
an ISP from claiming the protection of the § 512(c) safe harbors. It is plain from
§ 512(i) itself that such a pronouncement can only come from “a broad consensus
of copyright owners and service providers in an open, fair, voluntary, multi‐industry standards process.” 17 U.S.C. §512(i)(2)(A). I see nothing to
show, to date, that such a consensus or such a process has developed. For these
reasons, BWP has failed to proffer evidence upon which a reasonable jury could
conclude that altering or destroying metadata disqualifies a service provider
from the safe harbor protections of § 512(c).
(…) “The § 512(c) safe harbor is only available
when the infringement occurs ‘by reason of the storage at the direction of a
user of material that resides on a system or network controlled or operated
by or for the service provider.’” Viacom, 676 F.3d at 38 (emphasis added)
(quoting 17 U.S.C. § 512(c)(1)) (…) Making copies of user‐uploaded materials solely to facilitate user access does not disqualify
an ISP from availing itself of the § 512(c) safe harbor.
(…) However, notwithstanding the district
court’s denial of legal fees, I cannot let pass my concern over BWP’s record of
aggressive litigation, which entails filing hundreds of lawsuits directed at
ISPs without even attempting to substantiate its claims in discovery (…) Here,
the fact that BWP filed a lawsuit before simply asking Polyvore to take its
images down suggests that BWP has a business model that involves abusing the
federal courts (Op., p. 37).
(U.S. Court of Appeals for the Second Circuit,
April 17, 2019, BWP Media USA Inc., v. Polyvore, Inc., Docket No. 16-2825-cv,
Per Curiam)
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