BMG Rights Management (US) LLC v. Cox Communications, Inc.
149 F. Supp. 3d 634
E.D. Va.2015Background
- Cox Communications (ISP) provided nationwide internet service; plaintiffs BMG Rights Management and Round Hill alleged Cox subscribers used BitTorrent to infringe ~1,400 musical composition copyrights.
- Plaintiffs' investigator Rightscorp identified alleged infringements, produced millions of notices and downloaded many works; Rightscorp's notices contained settlement offers.
- Cox maintained an AUP and a CATS automated notice system with a graduated response (warnings → suspensions in soft/hard-walled gardens → possible termination after repeated notices); CATS "rolled up" same-day complaints and imposed per-complainant daily limits.
- Cox refused to accept/process Rightscorp notices because they contained settlement offers and ultimately blocked/blacklisted Rightscorp emails at the server level.
- Plaintiffs sued for contributory and vicarious copyright infringement (Feb 2012–Nov 2014); cross-motions for summary judgment followed. Court: denied Cox's SJ; granted-in-part and denied-in-part Plaintiffs' MSJ (ownership rulings) and held Cox not entitled to the DMCA §512 safe harbor due to unreasonable implementation of its repeat-infringer policy; dismissed Round Hill Music LP for lack of standing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Ownership of copyrights | Plaintiffs produced registrations and chain-of-title documents proving ownership for BMG and Round Hill categories | Cox attacked registrations and chains (e.g., alleged gaps, missing schedules, predecessor claims) | Court granted summary judgment for Plaintiffs on most ownership categories for BMG; Round Hill Music LP lacked standing (no exclusive rights transferred) |
| DMCA §512(i) repeat-infringer policy implementation | Cox did not reasonably implement its policy—it routinely avoided terminating repeat infringers, blacklisted Rightscorp, and imposed limits preventing effective notice handling | Cox said it had a written policy, used graduated responses, and later tightened terminations; refusing flawed Rightscorp notices was reasonable | Court held Cox ineligible for §512 safe harbor: pre‑fall 2012 Cox implemented sham "terminations" (reactivate policy); post‑2012 Cox still failed to terminate known, blatant repeat infringers in appropriate circumstances |
| Direct infringement / distribution right | Rightscorp evidence (IP hashes, downloads, "making available" data, investigator downloads) suffices to create triable issues of actual dissemination of copies via BitTorrent | Cox argued Rightscorp's methods are unreliable, that "making available" is not per se distribution, and identity/volition issues require John Doe discovery | Court found sufficient circumstantial evidence to raise genuine issues whether Cox subscribers distributed or made available copies; adopted actual dissemination standard for §106(3) but found enough evidence to proceed to trial |
| Secondary liability (contributory & vicarious) | Cox had knowledge or was willfully blind and materially contributed; Cox had the right/ability to supervise and obtained financial benefit from users drawn by infringement | Cox argued Grokster limits liability to inducement, lacks evidence of specific knowledge or material contribution, and no direct causal financial benefit | Court: material-contribution theory remains viable post‑Grokster; genuine issues of fact exist on knowledge/willful blindness and vicarious-liability elements (control and financial "draw") — summary judgment denied for Cox |
Key Cases Cited
- Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (articulates inducement and distinguishes secondary liability theories)
- Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020 (9th Cir. 2013) (discusses BitTorrent mechanics and ISP liability issues)
- Univ. Furniture Int’l, Inc. v. Collezione Europa USA, 618 F.3d 417 (4th Cir. 2010) (registration presumption and requirement to assess chain of title)
- Hotaling v. Church of Jesus Christ of Latter-Day Saints, 118 F.3d 199 (4th Cir. 1997) (holding that "making available" in a library context can satisfy distribution where proof of actual loans is impossible)
- CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004) (discusses volitional conduct for direct infringement and contributory liability)
- Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) (framework for assessing ISP repeat-infringer policy and knowledge standards)
- Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19 (2d Cir. 2012) (treatment of knowledge and willful blindness standards relevant to online service providers)
- ALS Scan, Inc. v. RemarQ Cmtys., Inc., 239 F.3d 619 (4th Cir. 2001) (DMCA safe-harbor interpretation; immunity not presumptive for non-innocent providers)