Website operator not liable for copyright infringement despite lack of DMCA safe harbor protection

Online platforms that allow user-generated content should take advantage of the safe harbor provisions of the Digital Millennium Copyright Act (DMCA), which protect the platform in the event of a third party claim of copyright infringement over the user-generated content. But the recent case of BWP Media USA, Inc. v. T&S Software Associates, Inc., 2016 WL 1248908 (N.D. Tex., March 25, 2016) shows that a platform may still avoid liability for infringement even if it has not availed itself of the benefits of the DMCA.

Plaintiff copyright holders sued defendant online forum board operator for direct and vicarious copyright infringement, over photos uploaded by users of the online forum board. Defendant moved for summary judgment. The court granted the motion. The defendant successfully defeated these claims of copyright infringement even though it had not met the DMCA safe harbor requirement of designating an agent with the Copyright Office to receive takedown notices.

Direct Infringement

The court found there was no triable issue on plaintiffs’ claim that defendant was liable for direct infringement, because the parties did not dispute that defendant played no direct role in uploading the photos. Citing the seminal case of Religious Tech. Ctr. v. Netcom OnLine Comm’cn Servs., 907 F, Supp. 1361 (N.D.Cal. 1995), the court observed that “making an internet company liable for direct copyright infringement simply because it gave users access to copyrighted material posted by others would create unreasonable liability.”

Vicarious Liability

A defendant may be vicariously liable for copyright infringement where it “profits directly from the infringement and has a right and ability to supervise the direct infringer, even if the defendant initially lacks knowledge of the infringement.” Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). In this case, the court found that although plaintiffs contended that (1) the copyrighted photographs were displayed alongside paid advertising, (2) defendant received revenue from the paid advertising on its forum, and (3) the revenue received was based, in part, on the website traffic, plaintiff failed to point to any evidence in the record showing that defendant directly profited from the infringing conduct.

Observation: DMCA Safe Harbor Not Needed Here

Online service providers that make their platforms available for the storage of user-generated content (even if such ability is trivial, e.g., allowing users to upload profile pictures) are encouraged to take the appropriate steps to place the service provider within the protections of DMCA safe harbor. These steps include providing appropriate information in the platform’s terms of service, employing internal processes to handle takedown requests and repeat infringers, having a plan in place for dealing with counternotifications, and designating an agent with the Copyright Office to receive takedown notices. Being in the safe harbor means that the service provider has an affirmative defense if it is sued by a third party copyright holder for infringement causaed by the platform’s users.

Many have mistakenly believed that if a service provider fails to get safe harbor protection, it is automatically liable for infringement occasioned by user generated content uploaded to the service. That is not true, and the BWP Media case serves as an example. A copyright-owning plaintiff must still establish the elements of infringement against the service provider — whether for direct infringement or under a theory of secondary liability (like vicarious infringement) — even if the defendant does not find itself within the DMCA safe harbor.

BWP Media USA, Inc. v. T&S Software Associates, Inc., 2016 WL 1248908 (N.D. Tex., March 25, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Must a service provider remove all content a repeat infringer uploaded to qualify for the DMCA safe harbor?

459px-Enjoy_Don't_DestroyDoes an online service provider forfeit the safe harbor protections of the Digital Millennium Copyright Act if, when terminating the account of a repeat infringer, it does not delete all content the repeat infringer uploaded — infringing and noninfringing alike? A recent decision involving the antique internet technology Usenet sheds light on an answer.

Active copyright plaintiff Perfect 10 sued Usenet provider Giganews for direct and secondary liability for hosting allegedly infringing materials on the Giganews servers. Giganews asserted the safe harbor of the DMCA (17 U.S.C. 512) as an affirmative defense. Perfect 10 moved for summary judgment on whether the safe harbor applied – it argued that the safe harbor did not apply, Giganews argued that it did. The court denied Perfect 10’s motion.

Perfect 10 asserted that Giganews had not reasonably implemented a policy to terminate the accounts of repeat infringers as required by 17 U.S.C. 512 (i)(1)(A). One of the arguments Perfect 10 made was that Giganews did not reasonably implement its repeat infringer policy because Giganews terminated the accounts of the infringers but did not also delete all the content the infringers had uploaded.

The court was not persuaded that § 512(i)(1)(A) requires a service provider to disable or delete all content a repeat infringer has ever posted. The plain language of the statute requires “termination … of subscribers and account holders,” not the deletion of content. And because a requirement of taking down all content, not just infringing content, would serve no infringement-preventing purpose, the court held that there was no justification for reading such a requirement into the statute.

Perfect 10, Inc. v. Giganews, Inc., — F.Supp.2d —, 2014 WL 323655 (C.D.Cal. January 29, 2014)

DMCA reaches the decade mark

My friend Kevin Thompson over at Cyberlaw Central reminded me this morning in this post that President Clinton signed the Digital Millennium Copyright Act ten years ago today. Tempus fugit. It’s interesting to reflect on how this critical piece of legislation has affected (I think fostered) the growth of the online infrastructure with its safe harbor provisions found at 17 U.S.C. 512.

DMCA at 10 years

Simply stated, the DMCA at section 512 gives safe harbor protections to providers of interactive computer services (like ISPs and websites hosting user generated content) from liability when users upload content that infringes on another’s copyright rights. To sail its ship into the safe harbor, the provider has to take certain affirmative steps, like registering an agent with the Copyright Office, terminating the accounts of repeat infringers, and, most importantly, responding appropriately to “takedown notices” sent by copyright owners identifying infringing content on the provider’s system.

Though few could disagree with the principle of protecting service providers from infringement liability occasioned by the conduct of third party users (i.e., stemming from user generated content), the DMCA has its critics. And the actual mechanism has some bugs.

A big factor in the problem is the sheer volume of user generated content that’s put online. How can an operator like YouTube, who gets hours of new content loaded to its servers every minute, reasonably be expected to give meaningful review to every takedown notice that comes its way? It can’t.

So for practical reasons, big providers (and smaller ones alike) take down accused content essentially with a rubber stamp. And who can blame them? It saves administrative time and helps ensure safe harbor protection. But there are negative consequences to users and to the public. These consequences on the First Amendment and other rights are well-exemplified by the recent correspondence between the McCain-Palin campaign and YouTube, with amicus-like voices joining the chorus.

Like any ten-year old, the DMCA shows signs of maturity. It has withstood a decade of scrutiny, all the while giving service providers peace of mind, along with relatively efficient mechanisms for copyright owners to get infringing material taken down quickly. But also like a ten-year-old, the challenging years of adolescence — and the accompanying rudimentary changes — are around the corner. It’ll still be the DMCA, but I wouldn’t be surprised to see some transformation going on as user generated content becomes less a novelty and more a standard.

Birthday cake photo courtesy of Flickr user “juverna” via this Creative Commons license.