IP Law Daily ISP not liable for users’ infringement of celebrity photos; no ‘volitional conduct’
Wednesday, March 29, 2017

ISP not liable for users’ infringement of celebrity photos; no ‘volitional conduct’

By Thomas Long, J.D.

To state a claim for direct copyright infringement, the owners of copyrights to photographs of celebrities were required to establish that an Internet service provider (ISP) had engaged in "volitional conduct," the U.S. Court of Appeals in New Orleans has held. The ISP hosted a forum on which third-party users posted copyrighted images that allegedly infringed the owners’ rights. Because the copyright owners did not contend that the ISP engaged in volitional conduct, the provider was entitled to summary judgment in its favor. The ISP was not subject to liability for direct copyright infringement merely for failing to designate an agent to receive "takedown" notices under the Digital Millennium Copyright Act and was not limited to asserting a safe harbor defense under that statute (BWP Media USA, Inc. v. T & S Software Associates, Inc., March 27, 2017, Southwick, L.).

Defendant T & S Software Associates, Inc., hosted a website with a public forum called "HairTalk." Forum users could post content, including photographs, subject to terms of service providing that users were not permitted to post copyrighted images that they did not own. Plaintiffs BWP Media, Inc., and National Photo Group, L.L.C. (together, "BWP") filed suit against T & S for direct and secondary copyright infringement, in connection with photos of celebrities Ke$ha, Julianne Hough, and Ashlee Simpson. According to BWP, T & S was liable for its users’ infringement because it failed to designate an agent to receive notices of infringing content under Section 512 of the Digital Millennium Copyright Act (DMCA). After suit was filed, T & S removed the photos and moved for summary judgment as to both direct and secondary infringement. BWP appealed the judgment only with respect to the direct infringement claim.

According to the court, the determinative issue on appeal was whether volitional conduct was required to prove a claim of direct infringement. The Fifth Circuit noted that the trend in the courts was toward recognition of a volitional-conduct requirement with respect to cases involving Internet service providers acting as "passive conduits" for copyrighted material. Even though the Copyright Act is a strict liability statute, the reasoning behind imposing a volitional-conduct requirement is that there should be "some element of volition or causation which is lacking where a defendant’s system is merely used to create a copy by a third party." The requirement has been adopted by appellate courts in the Second, Third, Fourth, and Ninth Circuits.

BWP argued that the Supreme Court rejected the volitional-conduct requirement in American Broadcasting Cos. v. Aereo, Inc., 134 S.Ct. 2498 (2014), in which the Court held that Internet video service provider Aereo performed broadcasters’ works publicly, within the meaning of the Transmit Clause of the Copyright Act, by streaming broadcast television programs to its users over the Internet. However, the Fifth Circuit said, the Court never addressed whether Aereo’s conduct was volitional and instead based its holding on the similarities between Aereo’s system and "community antenna television" systems regulated by the Transmit Clause. The Court did not, in the Fifth Circuit’s view, dispute or repudiate a statement by Justice Scalia, writing in dissent, that volition was a requirement for infringement liability.

Moreover, the facts in the Aereo case were distinguishable from the facts in the current case, according to the court. Aereo did more than provide equipment to third-party infringers; it also provided access and the means to transmit the infringing material. Aereo played an active role in the infringement by routing infringing content to its users, who did not merely use Aereo’s service to store infringing content that they had obtained elsewhere. T & S, in contrast, merely hosted an online forum, and the users posted the infringing content, which they did not obtain from T & S. T & S and the infringing content were not linked by volitional conduct.

The court also held that T & S was not limited to the Section 512 safe harbor defense for ISPs. T & S did not qualify for that safe harbor because it failed to designate an agent to receive "takedown" requests from copyright owners. Section 512 stated, "The failure of a service provider’s conduct to qualify for limitation of liability under this section shall not bear adversely upon the consideration of a defense by the service provider that the service provider’s conduct is not infringing under this title or any other defense." The DMCA did not alter the volitional-conduct requirement but merely added a second step to assessing infringement liability for ISPs. Determining whether there was volitional conduct was the first step of establishing infringement, and only if infringement was shown were courts to analyze whether the ISP was nonetheless protected by the Section 512 safe harbor.

Because BWP did not allege that T & S did, in fact, engage in volitional conduct with respect to the images at issue, the district court’s grant of summary judgment in favor of T & S was affirmed.

The case is No. 16-10510.

Attorneys: Craig B. Sanders (Sanders Law, PLLC) for BWP Media USA, Inc., d/b/a Pacific Coast News and National Photo Group, LLC. Joseph F. Cleveland, Jr. (Brackett & Ellis, P.C.) for T & S Software Associates, Inc.

Companies: BWP Media USA, Inc., d/b/a Pacific Coast News; National Photo Group, LLC; T & S Software Associates, Inc.

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