Roughly speaking, the Fifth Circuit Court held that a copyright infringer has to “want” to engage in conduct that infringes. That is, plaintiff had to allege that defendant’s conduct was volitional. The U.S. Supreme Court denied review of the Fifth Circuit’s decision, effectively allowing that decision to stand.
The BWP Media v T&S Software case involved an internet service provider (ISP) which hosted an online forum called “Hair Talk.” Third-party users posted infringing photographs of celebrities which plaintiff BWP Media had registered for copyright. Defendant T&S did not designate an agent to receive copyright notices, which is required for an ISP to invoke safe harbor immunity under the Digital Millennium Copyright Act. (In other words, defendant was snagged by a significant technicality.) Therefore the plaintiffs argued that T&S was liable for infringement even though T&S took down the images after it was in fact notified of the issue.
Defendant T&S argued that it did not engage in volitional conduct because third party users of the website had posted the infringing pictures. In contrast, T&S argued, it was simply performing its regular functions as an ISP.
The plaintiff attempted to use the case American Broadcasting Company v Aereo from 2014 in which the U.S. Supreme Court set the terms for what constituted copyright infringement regarding television programming. The Court had not analyzed whether the defendant in the Aereo case had engaged in volitional conduct — that is, the defendant may or may not have affirmatively DONE something. BWP argued that this meant a defendant could be held liable even if it did not actually engage in volitional conduct.
However, the Fifth Circuit Court disagreed with BWP and explained that this was a misinterpretation of the Supreme Court’s standard on what constitutes copyright infringement. It analogized the difference between a photocopy store that takes someone’s illegal images and helps them photocopy them as opposed to just giving the consumers access to a copy machine and letting them infringe or not infringe on their own. And in this case, it was decided that the defendant just allowed people to put up their own websites. It did not control the websites or any of the content on them. The Fifth Circuit then explained that the Supreme Court still requires a defendant to be involved, controlling and purposeful to be held responsible for direct copyright infringement.
In other words, volitional conduct still matters.
By choosing not to review the Fifth Circuit decision, the Supreme Court arguably has signalled that this is a correct interpretation of its previous rulings, and absent volitional conduct, a defendant will not be considered engaging in copyright infringement.
So, if you are truly uninvolved in what is posted on your ISP (and arguably, on any “bulletin board,” website, or social media that is not edited or curated by its owner), you should not be held liable for copyright infringement under this ruling. Keep in mind, though, this is not necessarily a nationwide precedent: if your case is not in the 5th Circuit, the Supreme Court’s declining to review does not amount to a decision from the Supreme Court. Helpful; persuasive; but not binding authority.
Mark S. Kaufman
Kaufman & Kahn
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New York, NY 10017
Tel. (212) 293-5556
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