OPINION AND ORDER
Louis K. Smith (“Smith”) brought claims of direct and contributory copyright infringement against Defendant Barnesand-Noble.com (“Defendant” or “Barnes & Noble”), based on the fact that a free sample of Smith’s book remained in a single customer’s cloud-based storage locker after Smith terminated his distribution agreement.
Smith had entered into an agreement with an online eBook distributor to make a book he authored available on both the distributor’s own website and the websites of its retail partners. Defendant was such a partner, and it made Smith’s book available for sale on its website. Under Smith’s agreement with the distributor, and the distributor’s agreement with Defendant, the websites also made available a free sample of Smith’s book. If a customer obtained a sample of the book through Defendant’s website, a listing for it was added to a “digital locker” associated with that customer’s account, allowing the customer to later access the sample through the website, through Defendant’s proprie
In October 2011, Smith ended his agreement with the ebook distributor. Defendant learned of the termination of the agreement in April 2012 and immediately removed the book from its website. However, Defendant did not remove the book sample from the digital locker of the lone customer who had requested it. On two occasions after the book was removed from the website, the book was downloaded from the cloud to devices associated with the customer’s account.
On the basis of those two downloads, Smith sued Defendant for direct copyright infringement and contributory copyright infringement.
BACKGROUND
Smith was the author of an eBook titled The Hardscrabble Zone (“Hardscrabble” or the “book”). (PI. 56.1 Stmt., May 11, 2015, ECF. No. 70, ¶3.) In September 2009, Smith created a user account with an online eBook distributor, Smashwords, Inc. (“Smashwords”). (PI. 56.1, ¶ 5; Def. 56.1 Stmt., May 11, 2015, ECF No. 75, ¶2.) In exchange for a small fee, Smashwords made its users’ books available for sale and sampling both on Smashwords’s own website and on the websites of its retail partners. (Def. 56.1 ¶¶ 3-4.) In December 2009, Smith uploaded his book to Smash-words, in the process electing to charge customers $3.33 to download his book and authorizing Smashwords and its retail partners to post a free sample of 33 percent of Hardscrabble. (Def. 56.1 ¶¶ 5, Ills.) The webpage through which Smith uploaded his book indicated that by clicking the “Publish” button, he was agreeing to Smashwords’s “Terms of Service.” (Def. 56.1 ¶ 16; Stris Deck, May 11, 2015, ECF No. 75-5, ¶ 5-6; Exh. C (Def.’s Req. Admis.), Stris. Deck, ECF No. 75-8, ¶¶ 5-10.) At that time, the Terms of Service provided that Smith was assigning to “Smashwords the non-exclusive worldwide right to digitally publish, distribute, market, and sell (‘Publish’) and to license others to do so, the work ...” and the “right to distribute samples of the Work in any form of media ...” (Def. 56.1 ¶ 19-20.) Smith retained the right to unpublish his work at any time by clicking an “unpublish” button on the Smashwords website. (Id.)
After Smith uploaded Hardscrabble to Smashwords, the book was listed for sale on the website. (Def. 56.1 ¶ 23.) Customers could also view a free sample of the book online or download it in a variety of
At the time Smith’s book was listed. Barnes & Noble made it available to customers through a cloud-based system (the “Digital Locker” system). (Def. 56.1 ¶¶ 44-45) When customers logged into their accounts on the Barnes & Noble website, on Barnes & Noble’s proprietary e-reader device, or on a software application, they could access eBooks they had purchased or free samples they had acquired. (Id. ¶ 45.) Each time a customer acquired digital content, a listing for that content was saved in the customer’s personal “digital locker,” appearing in the library of the e-reader, on the software, and on the customer’s account on the website. (Id. ¶¶ 46-47.) When the customer selected the listing, the file would open. (Id. ¶ 48.) While the content could be stored locally on the e-reader, under certain situations — such as when it was short on storage space — the e-reader would automatically release the stored file to the cloud. (Idlffl 48-50.) In the event the content had been released to the cloud, it would re-download to the customer’s device once she selected it from his digital locker. (Id. ¶ 50.) On June 12, 2010, for the first and only time, a Barnes & Noble customer (“the Customer”) acquired a free sample of Hardscrabble from the website, and it was saved to her digital locker. (Id. ¶¶ 38-39.)
More than a year later, on October 27, 2011, Smith terminated his agreement with Smashwords. (PI. 56.1 ¶ 15.) In addition to “unpublishing” Hardscrabble, he requested via email, “Please close my account 8immediately [sic].” (Exh. C (Smith and Smashwords emails), Am. Compl., ECF No. 8-3.) Smashwords replied, “[I]t’s in your own best interest to wait a few months after you unpublish your titles before you request an account deletion,” and in response, Smith reiterated that Smashwords should “comply with request.” (Id.) After Smashwords asked for confirmation once more, and Smith sent an unresponsive answer, his account was deleted. (Id.; Def. 56.1 ¶ 60; PI. Resp. Def. 56.1 Stmt, ECF. No. 76-1, ¶ 60.) Smith’s act of unpublishing triggered a “takedown notice” in the Smashwords system, to be transmitted to retailers in the next automated shipment. (Def. 56.1 ¶ 63; Exh. A (Dep. Mark Coker), Stris. Decl., at 86:17-22.) When Smith’s account was deleted, so too was this “takedown notice.” (Def. 56.1 ¶ 64.) As a result, Hardscrabble remained listed on Barnes & Noble’s website even after Smith ended his agreement with Smashwords. (Def. 56.1 ¶ 66; PL 56.1 ¶ 16.) On April 20, 2012, Smith’s lawyer sent notification to Defendant of copyright infringement and threatened legal action. (Def. 56.1 ¶ 68; Pl. 56.1 ¶ 16.) That same day, Defendant removed the listing from its website. (Def. 56.1 ¶ 69; Pl. 56.1 ¶ 16.)
At that time, it became impossible for anyone new to purchase Hardscrabble or acquire a free sample of it through Barnes & Noble’s website. (Def. 56.1 ¶ 70.) However, Defendant did not remove the free sample of the book from the digital locker of the lone customer who had downloaded it. (Id. ¶ 70; PL 56.1 ¶ 18.) After the date
Smith filed the instant action against Defendant on June 5, 2012, alleging direct copyright infringement, contributory copyright infringement, and unfair competition claims. (ECF No. 1.) Defendant filed its first motion for summary judgment on October 31, 2013. (ECF No. 27.) The Court granted summary judgment to Defendant on the unfair competition claim on September 23, 2014. (ECF No. 37.) Defendant filed its second motion for summary judgment on May 11, 2015. (ECF No. 69.) Plaintiff cross-moved for summary judgment the same day. (ECF No. 73.)
LEGAL STANDARD
Summary judgment is appropriate where the movant shows that “there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see Celotex Corp. v. Catrett, 477 U.S. 317, 322-323,
Where the parties cross-move for summary judgment, the inferences and burdens of proof remain the same as those for a unilateral motion. See Straube v. Fla. Union Free Sch. Dist.,
DISCUSSION
I. Direct Copyright Infringement
Defendant moves, and Plaintiff cross-moves, for summary judgment on the claim that Defendant directly infringed on Plaintiffs copyright. To establish a claim of direct copyright infringement, the plaintiff must show: (1) that the plaintiff owns a valid copyright of the material at issue; and (2) that the third party infringed on the copyright by unauthorized copying or distribution.
Plaintiff alleges that Defendant infringed through both unauthorized reproduction and unauthorized distribution. (PL’s Mot. Summ. J. at 8-9.) Plaintiff argues that Defendant infringed on its exclusive reproduction right when the Customer “re-downloaded a sample of the Book” after the termination of the agreement between Plaintiff and Smashwords. (PL’s Mot. Summ. J. at 7.) She alleges that Defendant violated her exclusive distribution right at the moment of “the electronic transfer performed by the Customer.” (Id. at 10.)
Plaintiff asserts that reproduction occurs when a copyrighted work is fixed in a new material object. (PL’s Mot. Summ. J. at 9, citing Matthew Bender & Co., Inc. v. W. Pub. Co.,
In Cartoon Network, defendant Cablevision unveiled a service through which its subscribers could select programming that Cablevision distributed in realtime under license from copyright owners and request that the programming be stored and subsequently transmitted to the users without a license from the copyright owners.
Courts have also refined the definition of “volitional conduct” put forth in Cartoon Network. There, the court refrained from deciding “whether one’s contribution to the creation of an infringing copy may be so great that it warrants holding that party directly liable for the infringement, even though another party has actually made the copy.” Cartoon Network,
Applying Cartoon Network to this case, there is no evidence of volitional conduct. Like Cablevision, Defendant designed, housed, and maintained a system— the Digital Locker system — through which it distributed licensed content to consumers. (Def. 56.1 ¶¶ 44-51.) Consumers could access digital content by locating the content on BarnesandNoble.com, selecting a free sample or an eBook, then storing that digital content through the digital locker system (PI. 46.1 ¶ 16; Def. 56.1 ¶¶ 46-50), akin to Cablevision subscribers requesting that certain programs be saved to the portion of Cablevision’s hard drive allotted to that customer. After the item was in her locker, a customer could request it and retrieve it either from her own personal device or by having it delivered to her device (“re-downloaded,” in Plaintiffs terms), depending on whether the device had previously released the stored digital file to the cloud. (Def. 56.1 ¶ 48-50.) While Defendant had a license to distribute the content at the time the content was selected, that license may have expired by the moment of the re-
Plaintiffs case cannot be saved by the subsequent refinements to Cartoon Network. This is not a case where Defendant’s “contribution to the creation of an infringing copy [is] so great that it warrants holding that party directly liable for the infringement, even though another party has actually made the copy.” Cartoon Network,
The lack of volitional conduct on Defendant’s part precludes Plaintiffs claim for direct copyright infringement under a theory of reproduction. See Cartoon Network,
II. Contributory Copyright Infringement
The parties also move for summary judgment on the claim of contributory copyright infringement. To recover under this theory, “a plaintiff must first establish direct infringement by the relevant third party.” Arista Records LLC v. Lime Grp. LLC,
In addition to knowledge, the plaintiff must establish a “material contribution” by showing that the defendant: “(1) had actual or constructive knowledge of the infringing activity, and (2) encouraged or assisted others’ infringement, or provided machinery or goods that facilitated infringement.” Lime Grp.,
Even “a defendant who distributes a product that materially contributes to copyright infringement will not be liable for contributory infringement if the product also is widely used for legitimate, unobjectionable purposes or is merely capable of substantial noninfringing use.” Lime Grp.,
Plaintiff argues that material facts not in dispute establish that Defendant contributed to infringement of her copyright as a matter of law. (PL’s Mot. Summ. J. at 12.) At the outset, there is no dispute that Hardscrabble was re-downloaded to two separate devices associated with the Customer’s account after Smith had notified Barnes & Noble that he wanted the book removed. (Exh. B (Dep. David Bock), PL’s Mot. Summ. J., at 126.) Plaintiff classifies this as a clear instance of direct infringement on the part of the Customer, arguing that the Customer reproduced the book each time it was transmitted from the cloud back to her device. (PL’s Mot. Summ. J. at 12.) Defendant disputes that, arguing instead that “[t]he customer validly acquired a sample without restrictions, and merely accessed through Barnes & Noble’s systems what she legitimately could have accessed elsewhere online.” (Def. Resp. Opp’n, June 1, 2015, ECF No. 77, at 13.) Defendant further contends that even if the customer “technically created new material objects when twice refreshing the sample to devices associated with his or her Barnes & Noble account, this was not copyright infringement.” (Id.)
Whether Customer’s possibly unintentional redownload of a previously authorized sample constitutes “reproduction” is a thorny question. Other cases have established that the unauthorized duplication of digital files over the Internet infringes on copyright, see, e.g., Napster,
Even if the third party engaged in infringing conduct, Defendant cannot be
This noninfringing capability sets Barnes & Noble apart from defendants who provided the site and facilities for infringement and were found liable under theories of contributory infringement. In ReDigi, defendants’ computer program scanned customers’ computers specifically for protected content, thus “ensurfing] that only infringement occurred.”
Here, the service clearly is “capable of noninfringing uses” and is not “incapable of compliance with the law.” ReDigi,
The facts do support summary judgment in Defendant’s favor, under the Sony-Be-tamax rule. The digital locker system “is widely used for legitimate, unobjectionable purposes.” Sony,
CONCLUSION
Defendant’s motion for summary judgment is GRANTED. Plaintiffs motion for summary judgment is DENIED. The Clerk of Court is respectfully directed to enter judgment for the Defendant and close this case.
SO ORDERED.
Notes
. Smith also brought a claim of unfair competition, on which the Court previously granted summary judgment to Defendant. (ECF No. 37.)
. The parties do not dispute, at this stage, that Plaintiff owned a valid copyright. (Def.’s Mot. Summ. J. at 10 n. 9.)
. In a dissent in another case, Justice Scalia indicated that he might find a defendant who selects the content to have engaged in volitional conduct. He wrote, "Video-on-demand services, like photocopiers, respond automatically to user input, but they differ in one crucial respect: They choose the content.... That selection and arrangement by the service provider constitutes a volitional act directed to specific copyrighted works and thus serves
. Plaintiff states, "The record is undisputable regarding the fact that B & N's misappropriation of residual Digital Locker rights was intentional, inherent, and an overt part of its husiness model, not only in Smith’s case but in the case of all Smashwords’ authors.” (Pl.’s Mot. Summ. J. at 13). However, Plaintiff’s citations in support of this assertion are inapposite. For example, Plaintiff cites to a Court Order stating, "Defendant’s records show that one customer acquired a sample of Plaintiff’s book in June 2010, and accessed it again on at least seven different occasions between June 2010 and July 2012 when the customer re-downloaded the book from his or her digital locker onto his or her device.” (PL 56.1, ¶ 3.) That has nothing to do with whether any author other than Plaintiff may have had his copyrights infringed upon. The Court agrees with Defendant that "the record contains no evidence of alleged violations with respect to authors other than Smith.” (Def. Mem. Law. Opp. at 4 n. 5.)
. Here, for instance, "under certain circumstances, such as when the device is running out of space, the [device] may automatically release the stored digital file in order to conserve disk space ... If that has occurred, clicking the icon will refresh the file from the cloud if the device is connected to the internet." (Def. 56.1 ¶¶ 49-50 (emphasis added).)