The Law and Business of Social Media
May 08, 2017 - DMCA, Copyright, Litigation

5th Circuit: ISP Not Liable for Infringement Due to Lack of Volitional Conduct, Despite Ineligibility for DMCA Safe Harbor

5th Circuit: ISP Not Liable for Infringement Due to Lack of Volitional Conduct, Despite Ineligibility for DMCA Safe Harbor

The Fifth Circuit Court of Appeals recently considered in BWP Media USA, Inc. v. T&S Software Associates, Inc. whether volitional conduct is required to establish a claim for direct copyright infringement against an Internet service provider (“ISP”). The defendant ISP, T&S Software Associates (“T&S”), hosted a website that included a public forum called “HairTalk” where users could post content about hair, beauty, and celebrities.

HairTalk users posted photographs of Ke$ha, Julianne Hough, and Ashlee Simpson that were owned by the plaintiffs, BWP Media USA and National Photo Group (“BWP”), without BWP’s authorization. The plaintiffs sued T&S for direct and secondary copyright infringement based on the users’ posts. The district court granted summary judgment in favor of T&S as to both direct and secondary infringement and BWP appealed the judgment as to the direct infringement claim.

On appeal, the Fifth Circuit found that the determinative issue was whether a claim of direct infringement required volitional conduct by the defendant. The court looked to two past cases where courts implicitly, if not explicitly, required volitional conduct—Religious Tech v. Netcom and CoStar v. LoopNet. In Netcom, the California district court held that an ISP that provided Internet access for an online bulletin board was not liable for infringement based on a user’s posting of copyrighted works to the bulletin board. The Netcom court reasoned that “[a]though copyright is a strict liability statute, there should still 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.”

Similarly, in CoStar, the Fourth Circuit found the defendant ISP not liable for direct copyright infringement based on its subscribers’ posting of copyrighted photographs on its website. The court reasoned that the ISP was “simply the owner and manager of a system used by others who [were] violating CoStar’s copyrights and [was] not an actual duplicator itself[.]”

BWP argued that the Supreme Court’s 2014 decision in American Broadcasting Cos. v. Aereo rejected the volitional-conduct precedent in Netcom and CoStar. In Aereo, the petitioners alleged that Aereo infringed their exclusive right to publicly perform their copyrighted television programs by providing a service that allowed subscribers to stream the programs. Subscribers to Aereo’s service could request to stream a particular television program. After receiving the subscriber’s request, Aereo would record the broadcast of the selected show, transform the signals into data, and transmit the data through the Internet to the subscriber.

In distinguishing the Aereo decision from Netcom and CoStar, the Fifth Circuit noted that Aereo never addressed the volitional-conduct requirement and instead based its holding on the technology at issue. Looking to the distinction the Aereo dissent drew between engaging in infringing activity and merely supplying equipment that allows others to do so, the Fifth Circuit concluded that T&S fell in the latter category—it merely hosted the forum on which the users posted the copyrighted photographs. The court pointed out that, unlike T&S, Aereo played an active role in the infringement by providing the means to obtain and transmit copyrighted content and by routing the copyrighted content to its subscribers.

Regular Socially Aware readers may be wondering at this point where do the safe harbors under the Digital Millennium Copyright Act (“DMCA”) fit into this case? Unfortunately for T&S, it did not qualify for the Section 512(c) safe harbor because it did not have an agent designated to receive takedown notices during the relevant time period, as the statute requires. BWP seized on this fact to argue that the DMCA superseded the Netcom line of “volitional conduct” cases, and that the Section 512(c) safe harbor now serves as the exclusive means of protection for ISPs against copyright infringement liability based on hosting user content. Because T&S was not eligible for protection under Section 512(c), BWP asserted T&S’s hosting of the celebrity photographs constituted copyright infringement regardless of whether or not there was volitional conduct.

The Fifth Circuit flatly rejected this argument and noted that the DMCA explicitly provides that the failure to qualify for limitation of liability under the DMCA “shall not bear adversely” on any of the ISP’s other defenses under the law. The court concluded that T&S’s lack of eligibility for the Section 512(c) safe harbor did not preclude T&S from arguing and proving that it was never liable for copyright infringement in the first place.

While this case will surely comfort ISPs hoping to avoid liability for copyright infringement arising from hosting user-generated content, it also serves as a cautionary tale to double check that DMCA agent designation, as it’s always better to have two lines of defense rather than just one.


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For other Socially Aware posts relating to the DMCA safe harbors, please see Second Circuit Clarifies “Repeat Infringer” Policy Requirement for DMCA Copyright Safe Harbors; New Copyright Office Rule Creates Potential “Gotcha” for Blogs and Websites Hosting User-Generated ContentNew Court Decision Highlights Potential Headache for Companies Hosting User-Generated ContentCourt Holds That DMCA Safe Harbor Does Not Extend to Infringement Prior to Designation of Agent; and First-Ever Award of “Any Damages” for Fraudulent DMCA Takedowns Under Section 512(f).