Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

BWP Media USA Inc. v. Polyvore, Inc.

United States Court of Appeals, Second Circuit

April 17, 2019

BWP Media USA Inc., dba Pacific Coast News, Pacific Coast News, National Photo Group, LLC, Plaintiffs-Appellants-Cross-Appellees,
v.
Polyvore, Inc., Defendant-Appellee-Cross-Appellant.

          Argued: September 19, 2017

          Appeal from the United States District Court for the Southern District of New York. No. 13 Civ. 7867 - Ronnie Abrams, Judge.

         BWP Media USA Inc., Pacific Coast News, and National Photo Group, LLC (collectively "BWP"), appeal from a memorandum and order of the United States District Court for the Southern District of New York (Ronnie Abrams, J.) that granted summary judgment to Polyvore, Inc. ("Polyvore") on BWP's copyright claims for direct and secondary infringement and denied BWP's cross-motion for summary judgment on direct infringement. The district court also denied Polyvore's motion for sanctions under 17 U.S.C. § 505.

         We conclude that the district court's grant of summary judgment to Polyvore on the direct infringement claim was error because there is a dispute of material fact regarding whether Polyvore created multiple copies of BWP's photos that were not requested by Polyvore users. We further conclude that questions of material fact preclude us from holding at this stage that Polyvore satisfied the requirements for the Digital Millennium Copyright Act (DMCA) § 512(c) safe harbor, even though BWP has not shown that Polyvore's stripping of metadata disqualifies it from safe harbor protection. We agree with the district court, however, that Polyvore is entitled to summary judgment on BWP's secondary infringement claims of contributory, vicarious, and inducement of infringement because the district court found that BWP abandoned those claims. And we find no error in the district court's decision not to sanction BWP. We therefore AFFIRM the district court's grant of summary judgment dismissing BWP's secondary infringement claims, AFFIRM the denial of attorney's fees, VACATE the judgment as to direct infringement, and REMAND for further proceedings pursuant to the principles and procedures set out United States v. Jacobson, 15 F.3d 19 (2d Cir. 1994).

          Craig B. Sanders, Sanders Law, PLLC, Garden City, NY, for Plaintiffs-Appellants-Cross-Appellees.

          Orin Snyder (Ester Murdukhayeva, on the brief), Gibson, Dunn & Crutcher LLP, New York, NY, for Defendant-Appellee-Cross- Appellant.

          Robert Reeves Anderson, Arnold & Porter LLP, Denver, CO, John C. Ulin, Kathryn W. Hutchinson, Stephanie S. Roberts, Arnold & Porter LLP, Los Angeles, CA, for amicus curiae, Copyright Alliance, in support of Plaintiffs-Appellants-Cross- Appellees.

          Seth D. Greenstein, Constantine Cannon LLP, Washington, D.C., amici curiae, The Consumer Technology Association and The Computer & Communications Industry Association, in support of Defendant-Appellee-Cross-Appellant.

          Mitchell L. Stoltz, Daniel Nazer, Kit Walsh, Electronic Frontier Foundation, San Francisco, CA, for amici curiae, Electronic Frontier Foundation, Center for Democracy and Technology, and Public Knowledge, in support of Defendant-Appellee-Cross- Appellant.

          Kelly M. Klaus, David J. Feder, Munger, Tolles & Olson LLP, Los Angeles, CA, for amicus curiae, Motion Picture Association of America, Inc., in support of neither party.

          Before: Newman, Walker, and Pooler, Circuit Judges.

          PER CURIAM

         BWP Media USA Inc., Pacific Coast News, and National Photo Group, LLC (collectively "BWP") appeal from a memorandum and order of the United States District Court for the Southern District of New York (Ronnie Abrams, J.) that granted summary judgment to Polyvore, Inc. ("Polyvore") on BWP's copyright claims for direct and secondary infringement and denied BWP's cross-motion for summary judgment on direct infringement. The district court also denied Polyvore's motion for sanctions under 17 U.S.C. § 505.

         We conclude that the district court's grant of summary judgment to Polyvore on the direct infringement claim was error because there is a dispute of material fact regarding whether Polyvore created multiple copies of BWP's photos that were not requested by Polyvore users. We further conclude that questions of material fact preclude us from holding at this stage that Polyvore satisfied the requirements for the Digital Millennium Copyright Act (DMCA) § 512(c) safe harbor, even though BWP has not shown that Polyvore's stripping of metadata disqualifies it from safe harbor protection. We agree with the district court, however, that Polyvore is entitled to summary judgment on BWP's secondary infringement claims of contributory, vicarious, and inducement of infringement because the district court found that BWP abandoned those claims. And we find no error in the district court's decision not to sanction BWP. We therefore AFFIRM the district court's grant of summary judgment dismissing BWP's secondary infringement claims, AFFIRM the denial of attorney's fees, VACATE the judgment as to direct infringement, and REMAND for further proceedings pursuant to the principles and procedures set out United States v. Jacobson, 15 F.3d 19 (2d Cir. 1994). We request that the district court file its response within 60 days from the issuance of this opinion or as soon as practicable thereafter, and that upon such determination, the parties promptly notify the clerk of this court, whereupon jurisdiction will be restored to this court.

         The facts are set forth in Judge Walker's separate concurring opinion, which also specifies the questions of material fact that remain for determination by the district court. Judge Newman concurs in the result with a separate opinion. Judge Pooler concurs in the result with a separate opinion.

          John M. Walker, Jr., Circuit Judge, concurring in the result.

         I write separately to set out the facts and questions of material fact that remain for determination by the district court, as well as to describe my reasoning regarding each of our conclusions.

         BACKGROUND

         The following facts are undisputed. Defendant-appellee Polyvore is an internet service provider that ran a website, Polyvore.com, that allowed users to create and share digital photo collages devoted to fashion, art, and design.[1] Polyvore.com's "Clipper" tool let users "clip" images from other websites and collect them on Polyvore's site. Once a user clipped an image, they could store, modify, crop, or superimpose it on top of other images to make a digital photo collage, which Polyvore called a "set." Users could share their sets with other Polyvore users, comment on other users' sets, and submit their sets in contests to win prizes. At the time this suit was filed, Polyvore's website attracted 14.2 million visitors a month.

         When a user uploaded an image to Polyvore.com, it triggered a series of automatic technical processes: Polyvore (1) attached a hyperlink to that image that linked back to the image's original site; (2) gave the image a unique Uniform Resource Locator ("URL") that identified its precise location on Polyvore's website, Polyvore.com; and (3) indexed the photo so it was searchable on Polyvore.com. All posted images were displayed automatically by software-meaning Polyvore employees did not review or interact with user-posted images before they appeared on the site. Based on these user uploads, Polyvore.com had an extensive library of searchable images-118 million when the complaint was filed.

         Because some photos clipped by users were copyrighted images, Polyvore had policies in place that were designed to combat copyright infringement, including terms of service that prohibited users from posting copyrighted images, a repeat-infringer policy, and a notice-and-takedown system.

         BWP owns copyrights in celebrity photographs, which it licenses to online and print publications for a fee. At issue in this case are at least seventy-nine of BWP's photographs that appeared on Polyvore.com without BWP's permission.[2] The images include photos of celebrities such as 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. See 17 U.S.C. § 106(1), (5). In its first amended complaint, BWP sought relief for (1) direct copyright infringement, (2) contributory copyright infringement, (3) vicarious copyright infringement, and (4) inducement of copyright infringement. Polyvore moved to dismiss, but the district court denied the motion. Relying on, among other things, BWP's allegation that Polyvore employees actively worked with the photographs, the district court found that BWP had stated direct and secondary infringement claims. The case proceeded to discovery.

         As part of discovery, 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; Polyvore served initial disclosures and identified witnesses with knowledge about facts alleged in the complaint. Because the software programs most relevant to BWP's claims were highly technical, the parties agreed that instead of producing code, Polyvore would make available witnesses who could be deposed about the site's design and functionality. During the seven-month discovery period, however, BWP never took a single deposition. With the record therefore essentially the same as it had been before discovery, Polyvore moved for summary judgment, arguing that BWP had not substantiated its direct or secondary liability claims.

         In its opposition to that motion, BWP argued that Polyvore was not entitled to summary judgment on its direct infringement claims because Polyvore itself (1) copied, stored, and displayed BWP's images, and (2) interfered with a "standard technical measure" by stripping metadata from BWP's images, therefore disqualifying it from the protection of the safe harbor provisions of the DMCA which deny protection to ISPs that interfere with measures "used by copyright owners to identify or protect copyrighted works." 17 U.S.C. § 512(i)(2).

         To support its claims, BWP attached to its motion for summary judgment a spreadsheet prepared by BWP's counsel listing eighty- five different images that appeared on Polyvore's website stripped of their metadata. The spreadsheet also included nine separate Polyvore URLs for each image-an original link and then a link to the same image reproduced in eight different sizes, "e," "g," "l," "m," "s," "t," "x," and "y." None of the images that the spreadsheet listed as having been copied nine times (including the original clipped image), however, were images at issue in this case. Relying on the evidence of the additional URLs, BWP cross-moved for summary judgment on direct infringement, arguing that Polyvore's copying and display of BWP's images "separate and apart" from the images its users clipped established direct infringement as a matter of law.

         After finding no evidence that Polyvore acted volitionally, the district court granted Polyvore's motion for summary judgment on all claims, denied BWP's motion for summary judgment on its direct infringement claim, and denied Polyvore's request for fees. Because the district court found no infringing conduct, it did not address Polyvore's safe harbor defense under the DMCA. BWP appealed, and Polyvore cross-appealed.

         DISCUSSION

         On appeal, BWP principally argues that (1) 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; and (2) the DMCA does not shield Polyvore from its own directly infringing acts, or any of its other acts, because Polyvore altered the metadata of user-uploaded images and because some of the infringing conduct was directed by Polyvore, not its users.[3]

         We review a district court's grant of summary judgment de novo. Baldwin v. EMI Feist Catalog, Inc., 805 F.3d 18, 25 (2d Cir. 2015). "Summary judgment is appropriate when, viewing the evidence in the light most favorable to the non-moving party, 'there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.'" Id. (quoting Fed.R.Civ.P. 56(a)) (citation omitted). "The same standard applies where, as here, the parties filed cross-motions for summary judgment and the district court granted one motion, but denied the other." Morales v. Quintel Entm't, Inc., 249 F.3d 115, 121 (2d Cir. 2001) (citation omitted). "[E]ach party's motion must be examined on its own merits, and in each case all reasonable inferences must be drawn against the party whose motion is under consideration." Id. (citation omitted). Even when both parties contend that there are no genuine issues of material fact, we are not bound to enter judgment for either of the parties, because this court may discern material factual disputes on its own. Id.

         I. Direct Infringement

         The district court granted summary judgment for Polyvore on BWP's direct infringement claims. Applying Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) [hereinafter "Cablevision"], the district court found that BWP had failed to show the "volitional conduct" on the part of Polyvore necessary to establish its liability. On appeal, BWP argues that Cablevision's volitional conduct requirement was abrogated by American Broadcasting Companies, Inc. v. Aereo, Inc., 573 U.S. 431 (2014), and that therefore liability for direct copyright infringement does not require a showing of volitional conduct. I begin by briefly recounting the evolution of the volitional conduct requirement in order to answer the abrogation question. Next, with this background in mind, I apply the volitional conduct requirement to the facts of this case. Finally, I address the arguments regarding the volitional conduct requirement raised by Judge Newman in his concurring opinion.

         A. The Volitional Conduct Requirement

         Section 106 of the Copyright Act gives copyright holders an exclusive bundle of rights, including the right "to reproduce the copyrighted work in copies," and the right to "display the copyrighted work publicly." 17 U.S.C. § 106(1), (5). The Copyright Act makes parties who infringe on those rights liable for damages, regardless of whether they had knowledge that the content was infringing. See 17 U.S.C. § 504. In other words, the Copyright Act is a strict liability regime. See EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 844 F.3d 79, 89 (2d Cir. 2016) [hereinafter "MP3tunes"], cert. denied sub nom. Robertson v. EMI Christian Music Grp., Inc., 137 S.Ct. 2269 (2017).

         The advent of the internet posed a problem for this regime, however, since applying strict liability to infringing content posted online meant that websites could be held liable for infringing content posted by their users based solely on the existence of the website-an outcome that could be unfair. See, e.g., Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc., 907 F.Supp. 1361, 1368-70 (N.D. Cal. 1995). In response, beginning in the mid-1990s, courts began to read into the Copyright Act an implicit requirement that for a service provider to be liable for direct infringement, it must have taken some affirmative, volitional step to infringe. See id. The doctrine posits that to hold a service provider liable for direct copyright infringement, that infringement must have resulted from the provider's own volitional conduct. See id.

         Ten years ago in Cablevision, we adopted the volitional conduct requirement in this circuit as a prerequisite to establishing copyright infringement liability for service providers, holding that "volitional conduct is an important element of direct liability." 536 F.3d at 131.[4]In that case, we considered a direct infringement suit brought by owners of copyrighted television programs against a remote-service digital video recorder ("DVR") company, Cablevision. Id. Cablevision's product allowed subscribers to direct that a live program be recorded and saved remotely so the user could watch it later. Id. at 125. Both the parties and the district court in that case analogized Cablevision's actions to that of a copy shop. Id. at 131-32. We concluded that because Cablevision "more closely resemble[d] a store proprietor who charges customers to use a photocopier on his premises," it was "incorrect to say, without more, that such a proprietor 'makes' any copies when his machines are actually operated by his customers." Id. at 132.

         Subsequently, in Aereo, we considered a direct copyright infringement claim brought by holders of copyrights in broadcast television programs against Aereo, Inc., whose service allowed subscribers to watch television programs over the internet at virtually the same time as the program was broadcast. See WNET, Thirteen v. Aereo, Inc., 712 F.3d 676, 680-84 (2d Cir. 2013), rev'd sub nom. American Broadcasting Companies, Inc. v. Aereo, Inc., 573 U.S. 431 (2014). Once a subscriber chose a program, one of Aereo's servers selected a separate, dedicated antenna out of thousands it housed in a centralized warehouse, which then received the broadcast and transmitted it over the internet to the subscriber. See id. at 682-83. Applying Cablevision, we held that the plaintiffs were not likely to succeed on their claims that Aereo's transmissions were infringing under the Copyright Act, and therefore we affirmed the district court's denial of a preliminary injunction. Id. at 696.

         The Supreme Court reversed on grounds unrelated to whether Aereo's conduct was volitional. Aereo, 573 U.S. at 432. The Supreme Court held Aereo liable for direct copyright infringement because Aereo's system resembled the community antenna television (CATV) systems that Congress amended the Copyright Act in 1976 to cover. Id. at 441, 450-51. Previously, the Court had rejected the argument that CATV companies performed copyrighted television material. See id. at 439. The 1976 Act made it clear that rebroadcasting companies both performed the programs and, under a newly enacted provision, also transmitted the performance to the public. See id. at 441-42. The Aereo majority viewed the case as squarely within the genre of television retransmission, see id. at 441-49, which has nothing to do with internet service providers except as they may operate within that genre. The majority did not discuss the issue of volitional conduct.

         In dissent, Justice Scalia, joined by Justices Thomas and Alito, applied a volitional conduct analysis, stating that "[t]he Networks' claim is governed by a simple but profoundly important rule: A defendant may be held directly liable only if it has engaged in volitional conduct that violates the [Copyright] Act." Id. at 453. In setting out the volitional conduct test, Justice Scalia noted that the volitional conduct requirement is "firmly grounded in the [Copyright] Act's text," id. at 453, that "[e]very Court of Appeals to have considered an automated-service provider's direct liability for copyright infringement has adopted that rule," id. (citing Fox Broadcasting Co. v. Dish Network LLC, 747 F.3d 1060, 1066-1068 (9th Cir. 2014); Cablevision, 536 F.3d at 130-131; CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 549-550 (4th Cir. 2004)), and that although the Supreme Court has "not opined on the issue, our cases are fully consistent with a volitional-conduct requirement," id. at 454. Accordingly, whether or not one agrees with Justice Scalia's conclusion that Aereo did not engage in volitional conduct, id. at 457, his unchallenged discussion of that standard is instructive.

         BWP reads into the majority's silence on volitional conduct in Aereo a declaration that the volitional conduct requirement is dead. I disagree. First, it is plain that Aereo, as viewed by the majority, is confined to the discrete area of television rebroadcasting, which explains both the absence of the majority's discussion of volitional conduct and Aereo's inapplicability to the case before us. Second, we have reaffirmed post-Aereo (albeit without discussing Aereo) that "[v]olitional conduct is an important element of direct liability." MP3tunes, 844 F.3d at 96 (holding that ISP that designed a system to infringe satisfied the volitional conduct requirement); see also Great Minds, 886 F.3d at 97; Fox News Network, LLC v. Tveyes, Inc., 883 F.3d 169, 181 (2d Cir. 2018). Because we have limited authority to overturn the decisions of prior panels even if we wanted to, the argument that the volitional conduct standard disappeared with Aereo is unavailing. See Doscher v. Sea Port Grp. Sec., LLC, 832 F.3d 372, 378 (2d Cir. 2016). Aereo did nothing to disturb Cablevision's volitional conduct requirement and that requirement continues to apply to cases involving ISPs.[5]

          With this background, I turn to the question of whether either party is entitled to summary judgment on direct infringement.

         B. Whether Polyvore Acted Volitionally

         The district court granted summary judgment to Polyvore, dismissing BWP's direct infringement claim. Notwithstanding a dispute about whether Polyvore made additional unrequested copies of BWP's images, the district court found that Polyvore did not act volitionally by designing the Clipper or copying BWP's images because (1) the images appeared on Polyvore's site without affirmative acts by Polyvore employees and (2) there was no evidence that the Clipper was designed specifically to infringe. I agree 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, but I disagree about the materiality of the additional images. After reviewing the record de novo, Baldwin, 805 F.3d at 25, I conclude 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. See MP3tunes, 844 F.3d at 96.[6] In MP3tunes, for example, we upheld a jury verdict finding the defendant liable for direct infringement where the defendant had designed a program specifically to collect material that its creators knew to be copyrighted: album cover art. See id.; see also Capitol Records, Inc. v. MP3tunes, LLC, 48 F.Supp.3d 703, 720 (S.D.N.Y. 2014) aff'd in part, rev'd in part and remanded sub nom. EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 844 F.3d 79 (2d Cir. 2016).

         In contrast, the volitional conduct requirement is not satisfied when an ISP simply displays user-uploaded images and plays no role in selecting the images.[7] See, e.g., MP3tunes, 844 F.3d at 96-97 (holding that displaying images only violated Copyright Act when defendant also took the additional step of procuring unrequested copyrighted images); CoStar, 373 F.3d at 551 (holding defendant ISP not liable for direct infringement for simply displaying user-posted real estate photos because defendant's actions were "not truly 'copying' as understood by the [Coypright] Act" and defendant acted simply as a "conduit[] from or to would-be copiers"); Netcom, 907 F.Supp. at 1372 ("No purpose would be served by holding liable those who . . . might be in some sense helping to achieve . . . the users' 'public' display of files."); see also Cablevision, 536 F.3d at 132 (suggesting that an ISP's passive display of images "where all copied content was supplied by the customers themselves" would fall short of the requisite volitional conduct because it would be less proximate than even Cablevision's non-infringing conduct).

         Likewise, an ISP does not act volitionally when it automatically makes a single copy of content selected by the user in response to a user's request. See Cablevision, 536 F.3d at 123, 132. For example, Cablevision was not liable for direct infringement where its program created one copy of the copyrighted programming each user requested. See id.; accord Fox Broadcasting Co., 747 F.3d at 1067 (holding that the user, not the defendant satellite television service provider, made the infringing copy of plaintiff's TV programs even where the satellite company modified start- and end-times of the programs and imposed certain restrictions on what users could record, because "Dish's program create[d] the copy only in response to the user's command").

         ISPs that provide additional unrequested copies of copyrighted material in response to a user's request for a single copy, however, may be liable for direct infringement. See MP3tunes, 844 F.3d at 96. For example, we upheld MP3tunes's liability for direct infringement when it acted independently to copy and display copyrighted cover art that the user had not asked for each time the user uploaded a song. See id. We explained that the fact that MP3tunes's system "retrieved a copyrighted item that a user did not request, frequently without the user's knowledge" was sufficient evidence "that copying of the cover art was directed by MP3tunes, not users." MP3tunes, 844 F.3d at 96; accord Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1160-61 (9th Cir. 2007) (holding that copyright holders who challenged Google's creation of a thumbnail version of their copyrighted images, which the user had not specifically requested be made, had made out a prima facie case of direct copyright infringement).

         In this case, there is no evidence that Polyvore designed the Clipper to retrieve exclusively a specific kind of image that Polyvore knew to be copyrighted. Instead, the evidence shows that Polyvore designed a tool that its users could use to clip images generally, whether copyrighted or not. Thus the single act of designing the Clipper does 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. Cablevision, 536 F.3d at 131. Accordingly, Polyvore cannot be liable for ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.