By Pamela C. Maloney, J.D.
The owner/operator of HuffPost succeeded on its DMCA immunity defense in an infringement action brought by a photographer who had alleged that the use of one of his photographs in an article uploaded to HuffPost’s website by a contributor violated his copyright.
An infringement action brought by a professional photographer who alleged that use of his copyrighted photograph of "Travel Ban" protestors in an article uploaded to HuffPost’s website constituted infringement was dismissed by the federal district court in New York City because the owner and operator of the site was entitled, as a matter of law, to statutory immunity under the safe harbor provisions of the Digital Millennium Copyright Act (DMCA). According to the district court, the service provider did not have actual knowledge that the photo, which was uploaded directly by the contributor, had infringed the photographer’s copyright, nor did the service provider receive a financial benefit directly attributable to the infringing activity over which it had the right and ability to control (Down v. Oath Inc., May 22, 2019, Rakoff, J.).
A professional freelance photographer who was the copyright owner of a photograph of a group of individuals who were protesting President Trump's "Travel Ban" at JFK Airport sued Oath Inc., the owner and operator of HuffPost, a media brand with a website at www.huffingtonpost.com, alleging that its use of the photograph in an article uploaded by one of its contributors infringed his ownership rights in the photo. Oath moved to dismiss the infringement claim, arguing that it was entitled to statutory immunity under the Digital Millennium Copyright Act’s safe harbor provisions.
Storage at the direction of a user. The photographer argued that the infringement did not occur as a result of storage at the direction of the user because a HuffPost editor was responsible for publication of the contributor’s article. According to the photographer, there was no evidence to support the service provider’s claim that the contributor, not the HuffPost editor, had added the copyrighted photograph to the article. The photographer also claimed that the HuffPost editor had substantially enhanced the article to make it publication-ready. The undisputed evidence, which consisted of screenshots of the article’s edit history and a sworn statement by the HuffPost’s standards editor, clearly showed that the contributor had added the photograph to the article. In addition, the contributor had uploaded the article directly to the website and the cursory screening and modifications made to the article by the HuffPost editor did not place the article outside the safe harbor protections. Nor did the addition of content tags deprive the service provider of immunity, the district court concluded, citing a Second Circuit decision that had extended safe harbor to software functions performed by the service provider for the purpose of facilitating access to user-stored material.
Red flag knowledge. The photographer also argued that the HuffPost editor had "red flag" knowledge of infringement because the photograph used in the article had a New York Daily News credit and, as a trained professional, the editor should have known that use of a photograph with attribution was an infringing act. However, immunity under the DMCA depended on whether the infringement would have been obvious to a reasonable person, not to someone equipped with specialized knowledge or expertise. In this case, the HuffPost’s editor’s review of the article could have been brief and most probably involved multiple purposes, included subject matter classification and screening for offensive content. Although it was possible that the editor saw the New York Daily News credit, that possibility was not enough to create a triable issue as to red flag knowledge. The burden was on the photographer to prove that the editor had acquired knowledge of the facts and circumstances from which infringing activity was obvious and, in the opinion of the district court, the photographer failed to provide sufficient evidence to meet this burden.
Furthermore, even if the photographer had shown that the HuffPost editor was aware of the photo’s credit, the service provider still would be entitled to summary judgment on the red flag issue because there was no evidence that the HuffPost editor could be expected to distinguish between infringements and fair or authorized use.
Financial benefit and control issues. In order to take advantage of the safe harbor provisions, the service provider must not have received a financial benefit directly attributable to the infringing activity when the service provider has the right and ability to control such activity. The photographer claimed that HuffPost received a financial benefit from the commercial advertisements that were visible on the face of the contributor’s article and that through its editorial supervision and review of the content posted to its website, HuffPost had the right and ability to control the infringing activity. According to the district court, it was not enough to show that HuffPost ran commercial advertisements on its website to demonstrate financial control. Instead, the photographer was required to provide evidence of a connection between the allegedly infringing activity and the financial benefit HuffPost received—a showing the photographer failed to make. There was no evidence that HuffPost encouraged infringement, that it promoted advertising by pointing to infringement, or that its users primarily engaged in infringing content. The undisputed evidence showed that HuffPost merely ran advertisements on user-generated articles, some of which contained infringing material.
Further, even assuming that HuffPost received a financial benefit directly attributable to the infringing activity, there was no evidence that HuffPost had the right and ability to control that activity. The possession of the right and ability to control required more than the service provider’s ability to remove or block access, which was a prerequisite to safe harbor protection. However, the evidence clearly showed that the contributors self-published their articles directly to the website and that HuffPost engaged in cursory screening and modification. Finding that the level of involvement exercised by HuffPost was insufficient, as a matter of law, to demonstrate that HuffPost had the right and ability to control infringing activity by members of its contributor platform, the court concluded that Oath could assert statutory immunity under the DMCA’s safe harbor provisions.
This case is No. 1:18-cv-10337-JSR.
Attorneys: James H. Freeman (Liebowitz Law Firm, PLLC) for Kevin Downs. Jennifer A. Golinveaux (Winston & Strawn LLP) for Oath Inc.
Companies: Oath Inc.
MainStory: TopStory Copyright TechnologyInternet NewYorkNews
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