By Thomas Long, J.D.
In reversing grant of summary judgment in favor of Polyvore, members of appellate panel agree that more factfinding is required, but disagree as to the nature of the "volitional conduct" requirement for direct infringement.
In a split decision in which the judges agreed on the result but disagreed as to the reasoning behind it, a three-judge panel of the U.S. Court of Appeals in New York City has vacated and remanded a summary judgment decision by a district court holding that digital image collage website operator Polyvore, Inc., was not liable for direct copyright infringement by reproducing and displaying copyrighted celebrity images that were uploaded by users of Polyvore’s website. All three judges agreed that genuine issues of material fact precluded summary judgment as to Polyvore’s liability for direct infringement. They disagreed, however, as to what conduct by Polyvore could infringe, based on their differing views of the "volitional conduct" required to find an Internet service provider liable for direct infringement. The case was remanded for more factfinding regarding Polyvore’s own creation—not at the direction of its users—of additional copies of the images at issue, which all panel members agreed would constitute infringement. The appellate court affirmed the district court’s determination that Polyvore was not liable for secondary infringement, as well as the determination that Polyvore was not entitled to an award of attorney fees based on the copyright owner’s failure to take depositions during the discovery period (BWP Media USA Inc. v. Polyvore, Inc., April 17, 2019, per curiam).
Defendant Polyvore, Inc., operated a website called Polyvore.com that allowed users to create and share digital photo collages devoted to fashion, art, and design. Polyvore.com featured a tool called "Clipper" that let users extract images from other websites and collect them on Polyvore’s site. Users could then store the image, modify the background, and superimpose the image on top of another image to create what Polyvore called a "set" of images. Users share their sets with other Polyvore users, comment on other users’ sets, and submit their sets in contests to win prizes. Polyvore employees were not involved in displaying the images, and they did not screen the source sites or content before displaying the images. Automatic processes created a URL for each images and attached a hyperlink to it, and indexed the image to make it searchable. Polyvore’s library contained over 118 million user-uploaded images at the time the complaint was filed. Polyvore had established anti-infringement policies, including terms of service that prohibited users from posting copyrighted images, a repeat-infringer policy, and a notice-and-takedown system.
Plaintiffs BWP Media USA Inc., Pacific Coast News, and National Photo Group, LLC (collectively "BWP") owned the copyrights on a variety of celebrity photographs, which were licensed to online and print publications for a fee. BWP alleged that alleged that at least 79 of BWP’s photos appeared on Polyvore.com without BWP’s permission. The images at issue included photos of McKayla Maroney, Carly Rae Jepsen, Ryan Gosling, Kim Kardashian, and Selena Gomez.
In November 2013, BWP sued Polyvore for copyright infringement alleging that Polyvore’s posting of the photos violated BWP’s exclusive rights under the Copyright Act to reproduce and display its images publicly. During the discovery phase, 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; however, BWP took no depositions. Polyvore moved for summary judgment, arguing that BWP had not substantiated its direct or secondary liability claims. In July 2016, the district court granted summary judgment to Polyvore on BWP’s claims for direct and secondary copyright infringement and denied BWP’s cross-motion for summary judgment on direct infringement. In the district court’s view, there was no evidence that Polyvore acted with the requisite volition to be liable for infringing BWP’s copyrights. The district court also denied Polyvore’s motion for attorney fees under 17 U.S.C. §505. Both parties appealed.
In a per curiam opinion, the appellate panel briefly stated that it was affirming the district court’s grant of summary judgment dismissing BWP’s secondary infringement claims, affirming the denial of attorney fees, vacating the judgment as to direct infringement, and remanding for further proceedings. Each member of the panel wrote separate concurring opinions.
Direct infringement. According to the Second Circuit, the district court erred in granting summary judgment to Polyvore on the direct infringement claim because there was a material factual dispute as to whether Polyvore created multiple copies of BWP’s photos that were not requested by Polyvore users. On appeal, BWP argued that 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.
In an opinion concurring in the result, Circuit Judge John M. Walker, Jr., wrote that he agreed 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. However, Judge Walker disagreed about the materiality of the additional images. Judge Walker concluded 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 that it copies," Judge Walker said. There is no evidence that Polyvore designed the Clipper to retrieve exclusively a specific kind of image that Polyvore knew to be copyrighted. Rather, Polyvore designed a tool that its users could use to clip images generally, whether copyrighted or not. The single act of designing the Clipper did 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, so Polyvore did not directly infringe by designing the Clipper to simply retrieve photos picked out by users from other websites, according to Judge Walker. With respect to that single image, the Polyvore.com site only displayed an image the user chose to display, using an automated process. There was evidence, however, that Polyvore made further copies that the user did not request. These additional images could have directly infringed, Judge Walker opined.
In his concurring opinion, Circuit Judge Jon O. Newman disagreed with Judge Walker on the nature of the volitional conduct requirement. Judge Newman argued that the volitional conduct requirement should be understood as a causation requirement. In Judge Walker’s view, Judge Newman’s approach amounted to a "proximate causation" standard that was more appropriate for negligence cases and would pose problems if applied in the copyright context. In Judge Newman’s opinion, a jury could find that Polyvore was liable for infringement by designing and providing the Clipper tool, if it doing so caused infringement by giving "substantial assistance" to its users’ copying of copyrighted photos.
Circuit Judge Rosemary S. Pooler, in her concurring opinion, wrote separately to emphasize the context and consequences of this case. "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," Judge Pooler wrote. "Accordingly, I have strong line-drawing concerns with Judge Walker’s framing of volitional conduct. In Judge Pooler’s view, there was no basis to conclude that "additional unrequested copies" were of any significance when Polyvore’s system was simply a passive agent. "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," Judge Pooler said. "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."
DMCA safe harbor. Polyvore argued that even if it infringed copyrights, it was protected by the Digital Millennium Copyright Act (DMCA) Section 512(c) safe harbor for Internet service providers. BWP argued that safe harbor protection was unavailable because Polyvore had stripped metadata from the copyrighted images, thereby interfering with "standard technical measures" in contravention of Section 512(i). In the panel’s view, questions of material fact precluded the court from holding that Polyvore satisfied the requirements for the safe harbor, even though BWP had not shown that Polyvore’s stripping of metadata disqualified it from safe harbor protection. Although Judge Walker agreed with Polyvore that BWP did not show that metadata was a "standard technical measure" to protect copyright, he believed that there were factual questions as to whether the copying at issue was done "at the direction of the user."
Secondary infringement. The appellate court affirmed the district court’s grant of summary judgment to Polyvore on BWP’s secondary infringement claims of contributory, vicarious, and inducement of infringement. The district court correctly found that BWP abandoned those claims.
Sanctions. Finally, the Second Circuit found no error in the district court’s decision not to sanction BWP by awarding Polyvore its attorney fees. The district court had determined that BWP’s arguments were not objectively unreasonable or frivolous. Although BWP did not engage in the discovery process, there was no bad faith or misconduct.
This case is No. 16-2825-cv.
Attorneys: Craig B. Sanders (Barshay Sanders, PLLC) for BWP Media USA Inc. d/b/a Pacific Coast News and National Photo Group, LLC. Orin Samuel Snyder (Gibson, Dunn & Crutcher LLP) for Polyvore, Inc.
Companies: BWP Media USA Inc. d/b/a Pacific Coast News; National Photo Group, LLC; Polyvore, Inc.
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