BWP Media USA, Inc. v. T & S Software Associates., Inc.
2017 U.S. App. LEXIS 5340
| 5th Cir. | 2017Background
- T&S Software hosted an online forum (HairTalk) where third-party users posted content; site terms prohibited posting copyrighted images and provided a "contact us" link for complaints.
- Plaintiffs BWP Media USA and National Photo Group owned registered copyrights in three celebrity photos that users posted on HairTalk without permission.
- Plaintiffs sued T&S for direct and secondary copyright infringement; the district court granted summary judgment for T&S on both theories.
- T&S had not designated a DMCA agent under 17 U.S.C. § 512(c) during the relevant period; it removed the photos after litigation began.
- The sole issue on appeal was whether volitional conduct is required to establish direct infringement and, if so, whether T&S engaged in it.
- The Fifth Circuit affirmed summary judgment for T&S, holding that direct infringement requires volitional conduct and that T&S did not engage in such conduct.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether volitional conduct is required for direct copyright infringement | BWP: Aereo undermines the volitional-conduct requirement; courts shouldn’t require it here | T&S: Direct liability requires volitional/causal conduct; mere hosting is passive | Court: Volitional conduct is required for direct infringement; T&S did not engage in it |
| Whether the DMCA (§512) displaced the volitional-conduct requirement | BWP: Netcom-era volition was superseded by DMCA safe harbors, which provide the exclusive ISP framework | T&S: §512(l) preserves other defenses; DMCA is a floor, not a ceiling—does not abrogate volition | Court: DMCA does not eliminate the volitional-conduct requirement; safe harbor analysis is a separate step after establishing infringement |
Key Cases Cited
- Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991) (elements of copyright infringement: ownership and copying)
- Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984) (direct infringement as trespass into copyright owner’s domain)
- Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (distinguishing direct and secondary liability)
- American Broadcasting Cos. v. Aereo, Inc., 134 S. Ct. 2498 (2014) (service deemed to "perform" publicly; did not resolve volition question generally)
- CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004) (adopting Netcom reasoning; volitional conduct required)
- Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017) (recognizing volitional-conduct requirement)
- Leonard v. Stemtech International Inc., 834 F.3d 376 (3d Cir. 2016) (applying volition principle in direct-infringement analysis)
- Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (discussing volitional conduct in direct liability context)