BWP MEDIA USA INC., dba PACIFIC COAST NEWS, PACIFIC COAST NEWS, NATIONAL PHOTO GROUP, LLC, Plaintiffs-Appellants-Cross-Appellees, v. POLYVORE, INC., Defendant-Appellee-Cross-Appellant.
Nos. 16-2825-cv, 16-2992-cv
United States Court of Appeals For the Second Circuit
Decided: April 17, 2019
AUGUST TERM, 2017
ARGUED: SEPTEMBER 19, 2017
Before: NEWMAN, WALKER, and POOLER, Circuit Judges.
We conclude that the district court‘s grant of summary judgment to Polyvore on the direct infringement claim was error because there is a dispute of material fact regarding whether Polyvore created multiple copies of BWP‘s photos that were not requested by Polyvore users. We further conclude that questions of material fact preclude us from holding at this stage that Polyvore satisfied the requirements for the Digital Millennium Copyright Act (DMCA)
Judges Walker, Newman and Pooler concur in separate opinions.
CRAIG B. SANDERS, Sanders Law, PLLC, Garden City, NY, for Plaintiffs-Appellants-Cross-Appellees.
ORIN SNYDER (Ester Murdukhayeva, on the brief), Gibson, Dunn & Crutcher LLP, New York, NY, for Defendant-Appellee-Cross-Appellant.
Robert Reeves Anderson, Arnold & Porter LLP, Denver, CO, John C. Ulin, Kathryn W. Hutchinson, Stephanie S. Roberts, Arnold & Porter LLP, Los Angeles, CA, for amicus curiae, Copyright Alliance, in support of Plaintiffs-Appellants-Cross-Appellees.
Seth D. Greenstein, Constantine Cannon LLP, Washington, D.C., amici curiae, The Consumer Technology Association and The Computer & Communications Industry Association, in support of Defendant-Appellee-Cross-Appellant.
Mitchell L. Stoltz, Daniel Nazer, Kit Walsh, Electronic Frontier Foundation, San Francisco, CA, for amici curiae, Electronic Frontier Foundation, Center for Democracy and Technology,
Kelly M. Klaus, David J. Feder, Munger, Tolles & Olson LLP, Los Angeles, CA, for amicus curiae, Motion Picture Association of America, Inc., in support of neither party.
PER CURIAM:
BWP Media USA Inc., Pacific Coast News, and National Photo Group, LLC (collectively “BWP“) appeal from a memorandum and order of the United States District Court for the Southern District of New York (Ronnie Abrams, J.) that granted summary judgment to Polyvore, Inc. (“Polyvore“) on BWP‘s copyright claims for direct and secondary infringement and denied BWP‘s cross-motion for summary judgment on direct infringement. The district court also denied Polyvore‘s motion for sanctions under
We conclude that the district court‘s grant of summary judgment to Polyvore on the direct infringement claim was error because there is a dispute of material fact regarding whether Polyvore created multiple copies of BWP‘s photos that were not requested by Polyvore users. We further conclude that questions of material fact preclude us from holding at this stage that Polyvore satisfied the
We request that the district court file its response within 60 days from the issuance of this opinion or as soon as practicable thereafter, and that upon such determination, the parties promptly notify the clerk of this court, whereupon jurisdiction will be restored to this court.
The facts are set forth in Judge Walker‘s separate concurring opinion, which also specifies the questions of material fact that remain for determination by the district court. Judge Newman concurs in the result with a separate opinion. Judge Pooler concurs in the result with a separate opinion.
I write separately to set out the facts and questions of material fact that remain for determination by the district court, as well as to describe my reasoning regarding each of our conclusions.
BACKGROUND
The following facts are undisputed. Defendant-appellee 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.1 Polyvore.com‘s “Clipper” tool let users “clip” images from other websites and collect them on Polyvore‘s site. Once a user clipped an image, they could store, modify, crop, or superimpose it on top of other images to make a digital photo collage, which Polyvore called a “set.” Users could
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. At issue in this case
As part of discovery, BWP produced a document containing the URLs and upload dates of the images at issue, as well as screenshots showing its images displayed on Polyvore‘s website; Polyvore served initial disclosures and identified witnesses with
In its opposition to that motion, BWP argued that Polyvore was not entitled to summary judgment on its direct infringement claims because Polyvore itself (1) copied, stored, and displayed BWP‘s images, and (2) interfered with a “standard technical measure” by stripping metadata from BWP‘s images, therefore disqualifying it from the protection of the safe harbor provisions of the DMCA which deny protection to ISPs that interfere with measures “used by copyright owners to identify or protect copyrighted works.”
To support its claims, BWP attached to its motion for summary judgment a spreadsheet prepared by BWP‘s counsel listing eighty-five different images that appeared on Polyvore‘s website stripped of their metadata. The spreadsheet also included nine separate Polyvore
After finding no evidence that Polyvore acted volitionally, the district court granted Polyvore‘s motion for summary judgment on all claims, denied BWP‘s motion for summary judgment on its direct infringement claim, and denied Polyvore‘s request for fees. Because the district court found no infringing conduct, it did not address Polyvore‘s safe harbor defense under the DMCA. BWP appealed, and Polyvore cross-appealed.
DISCUSSION
On appeal, BWP principally argues that (1) Polyvore directly infringed its copyrights by designing the Clipper to retrieve photos from other websites, displaying BWP‘s images at the request of users, and making and displaying multiple, unrequested copies of user-uploaded images; and (2) the DMCA does not shield Polyvore from
We review a district court‘s grant of summary judgment de novo. Baldwin v. EMI Feist Catalog, Inc., 805 F.3d 18, 25 (2d Cir. 2015). “Summary judgment is appropriate when, viewing the evidence in the light most favorable to the non-moving party, ‘there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.‘” Id. (quoting
I. Direct Infringement
The district court granted summary judgment for Polyvore on BWP‘s direct infringement claims. Applying Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) [hereinafter “Cablevision“], the district court found that BWP had failed to show the “volitional conduct” on the part of Polyvore necessary to establish its liability. On appeal, BWP argues that Cablevision‘s volitional conduct requirement was abrogated by American Broadcasting Companies, Inc. v. Aereo, Inc., 573 U.S. 431 (2014), and that therefore liability for direct copyright infringement does not require a showing of volitional conduct. I begin by briefly recounting the evolution of the volitional conduct requirement in order to answer the abrogation question. Next, with this background in mind, I apply the volitional conduct requirement to the facts of this case. Finally, I address the arguments regarding the volitional conduct requirement raised by Judge Newman in his concurring opinion.
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 Commc‘n 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,
Ten years ago in Cablevision, we adopted the volitional conduct requirement in this circuit as a prerequisite to establishing copyright infringement liability for service providers, holding that “volitional conduct is an important element of direct liability.” 536 F.3d at 131.4 In that case, we considered a direct infringement suit brought by owners of copyrighted television programs against a remote-service digital video recorder (“DVR“) company, Cablevision. Id. Cablevision‘s product allowed subscribers to direct that a live program be recorded and saved remotely so the user could watch it later. Id. at 125. Both the parties and the district court in that case analogized Cablevision‘s actions to that of a copy shop. Id. at 131–32. We concluded that because Cablevision “more closely resemble[d] a store proprietor who charges customers to use a photocopier on his premises,” it was “incorrect to say, without more, that such a proprietor ‘makes’ any copies when his machines are actually operated by his customers.” Id. at 132.
The Supreme Court reversed on grounds unrelated to whether Aereo‘s conduct was volitional. Aereo, 573 U.S. at 432. The Supreme Court held Aereo liable for direct copyright infringement because Aereo‘s system resembled the community antenna television (CATV) systems that Congress amended the Copyright Act in 1976 to cover. Id. at 441, 450–51. Previously, the Court had rejected the argument that CATV companies performed copyrighted television material. See id. at 439. The 1976 Act made it clear that rebroadcasting companies
In dissent, Justice Scalia, joined by Justices Thomas and Alito, applied a volitional conduct analysis, stating that “[t]he Networks’ claim is governed by a simple but profoundly important rule: A defendant may be held directly liable only if it has engaged in volitional conduct that violates the [Copyright] Act.” Id. at 453. In setting out the volitional conduct test, Justice Scalia noted that the volitional conduct requirement is “firmly grounded in the [Copyright] Act‘s text,” id. at 453, that “[e]very Court of Appeals to have considered an automated-service provider‘s direct liability for copyright infringement has adopted that rule,” id. (citing Fox Broadcasting Co. v. Dish Network LLC, 747 F.3d 1060, 1066–1068 (9th Cir. 2014); Cablevision, 536 F.3d at 130–131; CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 549–550 (4th Cir. 2004)), and that although the Supreme Court has “not opined on the issue, our cases are fully consistent with a volitional-conduct requirement,” id. at 454. Accordingly, whether or not one agrees with Justice Scalia‘s
BWP reads into the majority‘s silence on volitional conduct in Aereo a declaration that the volitional conduct requirement is dead. I disagree. First, it is plain that Aereo, as viewed by the majority, is confined to the discrete area of television rebroadcasting, which explains both the absence of the majority‘s discussion of volitional conduct and Aereo‘s inapplicability to the case before us. Second, we have reaffirmed post-Aereo (albeit without discussing Aereo) that “[v]olitional conduct is an important element of direct liability.” MP3tunes, 844 F.3d at 96 (holding that ISP that designed a system to infringe satisfied the volitional conduct requirement); see also Great Minds, 886 F.3d at 97; Fox News Network, LLC v. Tveyes, Inc., 883 F.3d 169, 181 (2d Cir. 2018). Because we have limited authority to overturn the decisions of prior panels even if we wanted to, the argument that the volitional conduct standard disappeared with Aereo is unavailing. See Doscher v. Sea Port Grp. Sec., LLC, 832 F.3d 372, 378 (2d Cir. 2016). Aereo did nothing to disturb Cablevision‘s volitional conduct requirement and that requirement continues to apply to cases involving ISPs.5
B. Whether Polyvore Acted Volitionally
The district court granted summary judgment to Polyvore, dismissing BWP‘s direct infringement claim. Notwithstanding a dispute about whether Polyvore made additional unrequested copies of BWP‘s images, the district court found that Polyvore did not act volitionally by designing the Clipper or copying BWP‘s images because (1) the images appeared on Polyvore‘s site without affirmative acts by Polyvore employees and (2) there was no evidence that the Clipper was designed specifically to infringe. I agree with the district court that Polyvore did not act volitionally when it designed the Clipper and made one copy of user-uploaded images belonging to BWP, but I disagree about the materiality of the additional images. After reviewing the record de novo, Baldwin, 805 F.3d at 25, I conclude that BWP produced sufficient evidence of additional copying to raise a question of material fact about whether Polyvore, separate from its users, acted volitionally by making and displaying the additional copies of BWP‘s images.
An ISP acts volitionally when it creates a program designed to infringe copyrighted material and selects the copyrighted material
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.7 See, e.g., MP3tunes, 844 F.3d at 96–97 (holding that displaying images only violated Copyright Act when defendant also took the additional step of procuring unrequested copyrighted images); CoStar, 373 F.3d at 551 (holding defendant ISP not liable for direct infringement for simply displaying user-posted real estate
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. For example, Cablevision was not liable for direct infringement where its program created one copy of the copyrighted programming each user requested. See id.; accord Fox Broadcasting Co., 747 F.3d at 1067 (holding that the user, not the defendant satellite television service provider, made the infringing copy of plaintiff‘s TV programs even where the satellite company modified start- and end-times of the programs and imposed certain restrictions on what users could record, because “Dish‘s program create[d] the copy only in response to the user‘s command“).
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,
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, “cause[d] 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.
There is evidence in the record, however, that after a user clipped one of BWP’s images, Polyvore made further copies that the user did not request. The spreadsheet prepared by BWP’s counsel listing eighty-five different images that appeared on Polyvore’s website shows that for at least some images that users uploaded to Polyvore, additional copies of the same images appeared in varying
This dispute is material because, assuming the jury finds that BWP’s images were in fact copied multiple times, Polyvore’s copying, like the copying in MP3tunes, was triggered regardless of whether the user knew about, let alone asked for, the additional images. See 844 F.3d at 96. This suggests that Polyvore, separate from its users, may have committed an infringing act. 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
C. Judge Newman’s Concurring Opinion
In his concurring opinion, Judge Newman argues that the volitional conduct requirement should be understood as a causation requirement. I disagree with this approach for several reasons.
First, it seems to me that volition and causation are different concepts. Importantly, what Judge Newman refers to when he discusses causation is not “but for” causation, but rather “proximate” causation. Proximate causation is a negligence concept that has to do with risk and foreseeability. See RESTATEMENT (THIRD) OF TORTS: PHYS. & EMOT. HARM § 29 (2010) (“An actor‘s liability is limited to those harms that result from the risks that made the actor‘s conduct tortious.”). Volition, on the other hand, is “[t]he act of making a choice
I also have serious reservations about applying a proximate causation analysis to the question of direct infringement. First, volition has textual underpinnings in the
Finally, it is important to remember that direct liability is not the only avenue for recovery against an ISP for copyright infringement. Secondary liability exists precisely to impose liability on defendants who, while not directly responsible for infringing conduct, still should be held liable. Direct liability “applies when an actor personally engages in infringing conduct.” Aereo, 573 U.S. at 452 (Scalia, J., dissenting). “Secondary liability, by contrast, is a means of holding defendants responsible for infringement by third parties, even when the defendants have not themselves engaged in the infringing activity. It applies when a defendant intentionally induces or encourages infringing acts by others or profits from such acts while declining to exercise a right to stop or limit them.” Id. (citations, internal quotation marks, and modifications omitted). 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
One might conclude from reading Judge Newman’s concurring opinion that the only kind of copyright liability is direct liability. But the concerns that motivate his desire to hold ISPs liable for infringing conduct under direct liability are addressed by the existence of secondary liability. And the existence of these two types of liability supports the volitional conduct requirement. As Justice Scalia stated in his Aereo dissent, “[t]he distinction between direct and secondary liability would collapse if there were not a clear rule for determining whether the defendant committed the infringing act. The volitional-conduct requirement supplies that rule; its purpose is not to excuse defendants from accountability, but to channel the claims against them into the correct analytical track.” Aereo, 573 U.S. at 455.
It is true that secondary liability is no longer at issue in this case because BWP has abandoned that claim. But BWP’s abandonment of its secondary liability claim is no reason to try to shoe-horn what should be that claim into a direct liability claim or to confuse the concept of volition in determining direct liability by equating it to proximate causation.
II. DMCA Safe Harbor
Polyvore next argues that even if a jury could find that it directly infringed BWP’s exclusive rights to display and reproduce its
Congress passed Title II of the
The section at issue here,
A service provider shall not be liable . . . for infringement of copyright 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, if the service provider—
(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the
material that is claimed to be infringing or to be the subject of infringing activity.
Polyvore argues it has satisfied all of these requirements for the
In response, BWP argues that Polyvore is not eligible for any safe harbor under the
A. 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
The
The caselaw provides little guidance on how to know when a widely followed practice has evolved into a “standard technical measure.” See Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1115 (9th Cir. 2007) (remanding to the district court to determine whether blocking copyright holders’ access to a website is a “standard technical measure,” and if so whether defendant interfered with that access); Gardner v. CafePress Inc., No. 13-cv-1108, 2014 WL 794216, at *6 (S.D. Cal. Feb. 26, 2014) (finding dispute of material fact as to whether stripping
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.9 BWP’s primary “evidence” is a single document attached as an exhibit to its opposition to summary judgment entitled “Guidelines for Handling Image Metadata,” authored by the
Alternatively, BWP argues that because courts interpreting
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
B. Storage “at the direction of a user”
“The
BWP argues in passing that Polyvore is ineligible for the
Making copies of user-uploaded materials solely to facilitate user access does not disqualify an ISP from availing itself of the
There is a question of material fact as to whether Polyvore’s additional copies were made solely to facilitate access by users. Polyvore, as the party with the burden to prove its affirmative defense, see Columbia Pictures, 710 F.3d at 1039, has not pointed to evidence in the record that shows, assuming these copies were made, why they were made at all.12 Without facts in the record about the purpose and function of these additional copies, I am unable to determine whether the copies here were made to “render” user-uploaded content “viewable over the Internet to most users.” Viacom, 676 F.3d at 39.
On the current incomplete record, Polyvore appears to resemble the defendants in Viacom and UMG in some ways, but not in others. For example, like the defendants in Viacom and UMG, Polyvore is alleged to have made, unbeknownst to its users, multiple copies of user-uploaded images. See Viacom, 676 F.3d at 39; UMG
III. Attorney’s Fees
Polyvore’s sole argument in its cross-appeal is that because of BWP’s history of aggressively filing cases that it fails to prosecute, the district court abused its discretion by declining to award Polyvore
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. See BWP Media USA Inc. v. Rich Kids Clothing Co., LLC, 103 F. Supp. 3d 1242, 1247-48 (W.D. Wash. 2015) (awarding fees to “deter BWP from engaging in similar litigation tactics in the future” after BWP “failed to comply with its pretrial disclosure and discovery obligations” and “waited until the deadline” to produce evidence supporting its
Jon O. Newman, Circuit Judge, concurring in the result.
The ultimate issue on this appeal, of increasing importance in the age of digital transmissions, concerns the circumstances under which a developer or operator of a computer system or program, activated by its customers, can be liable for direct infringement of a copyright. Now that the District Court, pursuant to our interim remand,1 has ruled that the claims of secondary liability for infringement in this case have been abandoned,2 the issue of liability for direct
However, as Judge Walker‘s opinion points out, before the direct infringement claim can properly be resolved, a remand is needed for District Court factfinding on two issues: first, whether, from the fact that Polyvore made multiple copies of 85 images for which plaintiff BWP Media USA Inc. (“BWP“) holds a copyright, it is inferable that Polyvore also made multiple copies of the nine copyrighted images at issue in this case; second, whether additional copies of the copyrighted images were made solely to facilitate access by users so as to accord Polyvore the safe harbor protection of the Digital Millennium Copyright Act,
I. Evolution of the volition requirement
Because the District Court rejected BWP‘s claim of direct infringement on the ground that Polyvore had not acted with the “volition” required for direct copyright infringement liability, see BWP Media USA Inc v. Polyvore, Inc., No. 13-CV-7867(RA), 2016 WL 3926450, at *1, *6 (S.D.N.Y. July 15, 2016), I begin my analysis with an exploration of that concept, which recurs frequently in copyright jurisprudence, see, e.g., Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121, 130-32 (2d Cir. 2008), but is rarely explained.
The first articulation of a volitional conduct as a requirement for direct infringement of copyright occurred in Religious Technology Center v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995) (usually cited as ”Netcom“). At that time, no provision of the Copyright Act immunized an
Preliminarily, I note that it is unlikely that Judge Whyte used the word “element” to mean a legally required element of an infringement claim. Numerous cases have long established that an infringement claim has only two elements – “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Television Service Co., 499 U.S. 340, 361 (1991). Thus, when an opinion of our Court later said that volition was “an important element of direct liability,” see Cartoon Network,3 536 F.3d at 131 (emphasis added), it likely was not using the word in the sense of a third legal component of a cause of action (as Judge Walker today confirms), but rather more colloquially as a fact needed to be established whenever the identity of a person liable for direct infringement was in dispute. Why volition must sometimes be
An initial issue posed by Netcom‘s “volition or causation” phrase is whether the words “volition” and “causation” are synonyms or alternatives. Long before Netcom, there was no doubt that when the identity of a person liable for direct infringement was disputed, it was necessary to prove who caused the infringement. Infringement is a tort, as this Court long ago recognized, see American Code Co. v. Bensigner, 282 F. 829, 834 (2d Cir. 1923); Ted Browne Music Co. v. Fowler, 290 F. 751, 754 (2d Cir. 1923), and no person may be held liable for any tort unless that person (alone or with others) has caused the injury for which a claim is made. “Volition” in Judge Whyte‘s phrase is best understood to mean a concept essentially reflecting tort law causation. See 4 NIMMER ON COPYRIGHT (hereafter “NIMMER“) § 13.08[C][1], at 13-290.6 (“Netcom simply stands for the unremarkable proposition that proximate causation historically underlines copyright infringement liability no less than other torts.“) (internal footnote omitted).4 Moreover, there is no reason to give “volition” a meaning separate from
Volition, that is, causation, is widely accepted as a requirement for direct infringement liability. “[E]very circuit to address this issue has adopted some version of Netcom‘s reasoning and the volitional-conduct requirement.”
The Supreme Court‘s first intimation of any thoughts concerning causation as a fact relevant to an infringement claim in the digital age was Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984).9 Although the Court‘s opinion does not use the word “volition,” it considered the issue whether the manufacturer of a home video tape recorder (“VTR” (called “Betamax“)) capable of producing a copy of a copyrighted video program at the command of a user, was liable for contributory infringement. Instead of inquiring first whether the user of a VTR was liable for infringement by making a copy and, if so, whether the VTR manufacturer was liable as an additional direct infringer or as a contributory infringer, the Court began its analysis by considering the manufacturer‘s possible liability.
This was not an entirely satisfactory standard because any copying equipment capable of copying copyrighted materials is also capable of copying public domain materials. But the holding of Sony (more important than the opinion‘s language, as is true of all decisions) is entirely defensible. There was evidence that many producers of copyrighted video programs favored time-shifting in order to expand their viewing audience. See id. at 424 (“Sony introduced considerable evidence describing television programs that could be copied without objection from any copyright holder, with special emphasis on sports,
The next significant development concerning volition/causation was the emergence of the bill that, in a modified form, became the Online Copyright Infringement Liability Limitation Act in 1998, Pub. L. 105-304, tit. II, § 202(a), 112 Stat. 2860 (Oct. 28, 1998), codified at
Pertinent to the law of this Circuit, the next development concerning volition/causation was the decision of this Court in Cartoon Network. The holding
I agree with that holding because, for me, Cartoon Network, like Sony before it, is ultimately about time-shifting, and it should not matter whether the viewer‘s recorded copy resides in a Betamax VTR device on top of a TV set or in the remote server of the Cablevision company. Although the opinion in Cartoon Network never mentions time-shifting, it described Cablevision‘s technology as “akin” to “traditional set-top digital video recorders,” 536 F.3d at 123. What else besides time-shifting made the RS-DVR system “akin” to an ordinary set-top recorder?
However, there is language in Cartoon Network that I question: “In determining who actually ‘makes’ a copy, a significant difference exists between
The risk that our Court would insulate from liability many developers or operators of systems that automatically caused an infringement at another person‘s command came close to fruition in a challenge to a system that allowed subscribers, for a fee, to watch over-the-air TV programs. A District Court denied a preliminary injunction against the operator of the system in light of Cartoon Network. See Broadcasting Cos. v. Aereo, Inc., 874 F. Supp. 2d 373 (S.D.N.Y. 2012) (“Aereo I“). The risk increased when a divided panel of our Court affirmed Aereo I. See WNET, Thirteen v. Aereo, Inc. 712 F.3d 676 (2d Cir. 2013) (“Aereo II“).
The risk lessened, however, when the Supreme Court reversed Aereo II. See American Broadcasting Cos. v. Aereo, Inc., 573 U.S. 431 (2014) (“Aereo III“). But the status of systems that automatically caused an infringement at a customer‘s command remained uncertain because the Supreme Court‘s majority opinion said nothing about volition or causation. Instead, Justice Breyer said that Aereo‘s system was functionally the equivalent of a community access television system
II. Volition as Causation
Once volitional conduct is understood as essentially concerning causation, the issue becomes how the concept of causation applies in the context of alleged direct infringement of copyright arising from use of a defendant‘s system or program that automatically makes copies of copyrighted images at a keystroke by a defendant‘s customer. Consideration of that issue begins with general principles of causation in tort law. “For harm resulting to a third person from the tortious conduct of another, one is subject to liability if
Pertinent to the possible infringement liability of the operator of a system that facilitates automatic copying, the legislative history of the 1976 Copyright Act recognized that “where the work was infringed by two or more tort feasors [sic], the bill would make them jointly and severally liable.”12 “There is no rule of copyright law that would preclude the imposition of direct liability on both parties [i.e., the system operator and the user].” Denicola, supra, 37 Cardozo L. Rev. at 1273.13
However, tort law principles of causation do not necessarily apply in the copyright field exactly as they apply with respect to torts generally or joint
The caselaw has not yet developed clear principles for determining when the developer or operator of a system, activated automatically by a user, is jointly liable with the user for direct infringement. The Fourth Circuit hinted at a generalized approach for making such a determination when it observed that the Copyright Act creates liability for “a person who causes in some meaningful way an infringement.” CoStar Group v. LoopNet, Inc., 373 F.3d 544, 549 (4th Cir. 2004) (emphasis added). Though in dissent in Aereo III, Justice Scalia also hinted at a similar generalized approach when he said that the system operator‘s “degree of involvement is not enough for direct liability.” 573 U.S. at 456 (Scalia, J., dissenting) (emphasis added). In another attempt to approximate the line a system operator crosses to become jointly liable with a user for direct infringement, a district court in this Circuit considered whether the operator shifted “‘from [a] passive provider[] of a space in which infringing activities
III. Judge Walker‘s Opinion
With these thoughts in mind, I now consider Judge Walker‘s opinion in the pending appeal. I fully agree with many portions of that opinion. Specifically, I agree that the requirement of volitional conduct must be shown when there is dispute as to which party or parties caused a direct infringement and that Aereo III did not abrogate the requirement of such conduct. I also agree that the copy shop example, which Judge Walker‘s opinion mentions, illustrates one situation where volitional/causation conduct is not present, at least as long as the copy shop merely permits its customers themselves to use copying machines on the shop‘s premises. But care must be taken not to generalize from that example. That a copy shop is not liable for direct infringement when its customer makes a copy on a shop‘s copying machine does not mean that all
I disagree with Judge Walker‘s opinion when it appears to indicate that all developers or operators of systems that make copies, at a customer‘s keystroke command, of copyrighted materials selected by the customer should be insulated from direct liability for infringement. Selection by the customer may well be relevant to determining whether system developers or operators share direct liability with a customer, but is not necessarily determinative.14 In any event, there is no need to make any definitive ruling on the significance of selection at this stage of the pending litigation.
I agree with Judge Walker when he says that “[a]n ISP acts volitionally when it creates a program designed to infringe copyrighted material,” but I reject the arguable implication of this language that an ISP acts volitionally only when it creates a program designed to infringe copyrighted material. Judge Walker‘s
I do not entirely agree with Judge Walker when he says, again citing MP3tunes, that “the volitional conduct requirement is not satisfied when an ISP simply displays user-uploaded images.”17 This statement is no doubt true in some circumstances but not necessarily true in all circumstances. For example, in Capitol Record, LLC v. ReDigi Inc., 910 F.3d 649 (2d Cir. 2018), where the customer of a developer of a system for reselling lawfully purchased digital music files “cause[d]” a file of purchased music to be transferred to the developer‘s remote server, see id. at 653, we held that the receipt and storage of the file on the developer‘s server involved the making of an infringing copy, in that case, a new phonorecord, see id. at 657, which rendered the developer liable for violating the reproduction rights of the holder of the copyright in the music. See id. at 659.
With these reservations, I concur in the result.
Rosemary S. Pooler, Circuit Judge, concurring in the result.
I concur in the result but write separately to emphasize the context and consequences of this case. To this effect, the Electronic Frontier Foundation, as amicus curiae, urges that such a website design as Polyvore‘s a) automatically generates copies of images in different sizes to allow users to view the images on various devices, and b) is “routine” and “very common [among] Internet technologies.” Amicus Br. at 13-14, Dkt. No. 87.
Regardless whether the volitional conduct requirement is properly understood as a causation requirement, as Judge Newman urges and Judge Walker disputes, the question will boil down to whether Polyvore is sufficiently tied to the act of copying for direct infringement liability to attach. Accordingly, I have strong line-drawing concerns with Judge Walker‘s framing of volitional conduct: “an ISP does not act volitionally when it automatically makes a single copy in response to a user‘s request,” but “ISPs that provide additional unrequested copies . . . in response to a user‘s request for a single copy . . . may be liable.” There is no basis to conclude that “additional unrequested copies” are of any significance when a machine is simply a passive agent. For instance, in MP3tunes, the system was designed to seek out the copyrighted material – album
While I concur in the result of remanding to the district court for further factfinding, I cannot agree with conceptualizing volitional conduct in such a way that an ISP does not act volitionally when it automatically makes one, but not more than one, unrequested copy in response to a user‘s request for a copy. I believe this volitional-conduct analysis must enter the landscape of multiple devices, mindful of both our copy-shop past and the realities of functional website design in our present.
Notes
First, the District Court stated, “This Court thus did not believe that it had discretion to determine that Plaintiffs had abandoned their secondary infringement claims, but rather believed that it was required to reach the merits of those claims.” Dist. Ct. Mem. at 2. The Court said it had reached that conclusion based on this Court‘s decision in Vermont Teddy Bear Co. v. 1-800 Beargram Co., 373 F.3d 241 (2d Cir. 2004), which had ruled that a failure to make any response to a motion for summary judgment did not relieve a district court of the obligation to make sure that summary judgment for the movant was warranted. See id. at 246. We subsequently pointed out in Jackson v. Federal Express, 766 F.3d 189 (2d Cir. 2014), however, that ”Vermont Teddy Bear involved a pro se litigant, and we are less demanding of such litigants generally, particularly where motions for summary judgment are concerned.” Id. at 195. Especially pertinent to the then-pending appeal in this case, Jackson noted that “there is a relevant distinction to be drawn between fully unopposed and partially opposed motions for summary judgment in counseled cases,” id. at 196, and ruled that “in the case of a counseled party, a court may, when appropriate, infer from a party‘s partial opposition [to a motion for summary judgment] that relevant claims or defenses that are not defended have been abandoned.” Id. at 198 (emphasis added).
Second, the District Court stated, “Having reviewed Jackson v. Federal Express in light of the Second Circuit‘s remand, the Court concludes that its language counsels in favor of a finding of abandonment here,” Dist. Ct. Mem. at 2, and set forth numerous facts and circumstances to support that finding. No member of the panel in the pending appeal believes that that finding of abandonment of claims of secondary infringement is clearly erroneous.
Third and finally, the District Court concluded “that it would have been proper to infer that Plaintiffs had abandoned their secondary infringement claims.” Dist. Ct. Mem at 3. This conclusion, read in conjunction with the District Court‘s second conclusion, is fairly understood to mean that had the District Court originally applied its current and correct understanding of Jackson, it would then have made the finding of abandonment that it has now made.
Thus, the abandonment of contributory infringement results from an explicit decision of the District Court, after the issue was specifically called to its attention. This is not a case where a claim of contributory infringement is alleged to have been abandoned because of some technical defect of pleading.
Perfect 10, 847 F.3d at 666 (citations abbreviated).“We wish to emphasize that the word ‘volition’ in this context does not really mean an ‘act of willing or choosing’ or an ‘act of deciding,’ which is how the dictionary defines the term. Volition, Webster‘s Third New International Dictionary (1986). Rather, as used by the court in Netcom, it ‘simply stands for the unremarkable proposition that proximate causation historically underlines copyright infringement liability no less than other torts.’ 4 NIMMER § 13.08[C][1].”
As one commentator has pointed out, “It is the concerted steps and their consequences, not the accident of whether those steps were executed by humans or automatons, that is the pivot of liability.” Paul Goldstein, 1 GOLDSTEIN ON COPYRIGHT § 7.0.2 (3d ed. Supp. 2013).