BWP MEDIA USA, INCORPORATED, doing business as Pacific Coast News; NATIONAL PHOTO GROUP, L.L.C., Plaintiffs - Appellants
T & S SOFTWARE ASSOCIATES, INCORPORATED, Defendant-Appellee
from the United States District Court for the Northern
District of Texas
SMITH, CLEMENT, and SOUTHWICK, Circuit Judges.
H. SOUTHWICK, Circuit Judge:
appeal is about whether "volitional conduct" is
required to establish a claim for direct copyright
infringement. Defendant T&S Software Associates, an
internet service provider, hosted an internet forum on which
third-party users posted images that infringed copyrights
owned by plaintiffs BWP Media USA and National Photo Group.
The plaintiffs sued T&S for direct and secondary
copyright infringement. The district court granted summary
judgment in favor of T&S. The plaintiffs appeal the
district court's direct-infringement holding. We AFFIRM.
AND PROCEDURAL BACKGROUND
hosts a website that includes a public forum called
"HairTalk." Users of the forum may post content,
share comments, ask questions, and engage in online
interactions with other users on a range of topics including
hair, beauty, and celebrities. Use of HairTalk is governed by
terms of service providing that "any photo containing .
. . celebrities . . . or any copyrighted image (unless you
own the copyright) is not permitted." Every time someone
logs on to HairTalk, the user must agree to these terms.
Also, each page of the website includes a "contact
us" link, which allows anyone to contact the website to
report objectionable content. During the relevant time
period, T&S did not have an agent designated to receive
notices of content that should be removed as required to
qualify for the statutory safe harbor of the Digital
Millennium Copyright Act ("DMCA"). The specific
section on the protections arising from naming an agent is 17
U.S.C. § 512(c).
BWP Media USA and National Photo Group (collectively,
"BWP") are registered owners of various celebrity
photographs. Three photographs owned by BWP were posted by
third-party users on HairTalk without BWP's permission.
They depicted Ke$ha, Julianne Hough, and Ashlee Simpson. BWP
sued for copyright infringement. The suit claimed that
T&S was liable for its users' infringement because it
failed to designate a registered agent under Section 512.
T&S learned of the photographs upon commencement of this
suit and promptly removed them. The district court granted
summary judgment in favor of T&S as to both direct and
secondary infringement. BWP appeals the district court's
judgment only as to T&S's direct-infringement
review a grant of summary judgment de novo, applying
the same standard as the district court. Ibe v.
Jones, 836 F.3d 516, 526 (5th Cir. 2016). Summary
judgment is appropriate "if the movant shows that there
is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). Here, there is no factual dispute; the
case turns on the proper interpretation of the Copyright Act.
We review the district court's interpretation of the Act
de novo. Comput. Mgmt. Assistance Co. v. Robert
F. DeCastro, Inc., 220 F.3d 396, 399-400 (5th Cir.
determinative issue on appeal is whether volitional conduct
is required to prove a claim of direct infringement. Our
answer starts with the text of the Copyright Act. The Act
gives a copyright owner "the exclusive right" to
"reproduce the copyrighted work" and
"display" it "publicly." 17 U.S.C. §
106(1), (5). "Anyone who violates any of the exclusive
rights of the copyright owner as provided by section 106 .
. . is an infringer . . . ." Id. § 501(a).
Thus, a plaintiff generally must prove two elements to
establish infringement: "(1) ownership of a valid
copyright, and (2) copying of constituent elements of the
work that are original." Feist Publ'ns, Inc. v.
Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
there is a question as to who infringed, the analysis can
turn on whether the type of infringement is direct or
secondary. Direct liability is imposed on those who
"trespass into [the copyright owner's] exclusive
domain by using or authorizing the use of the copyrighted
work . . . ." Sony Corp. of America v. Universal
City Studios, Inc., 464 U.S. 417, 433 (1984). Secondary
infringement involves liability for actions of third parties.
See Metro-Goldwyn- Mayer Studios Inc. v. Grokster,
Ltd., 545 U.S. 913, 930 (2005). Only direct infringement
is at issue on this appeal.
direct-infringement cases, courts have trended toward
requiring volitional conduct. This requirement first came to
the fore in 1995 when a California district court held that
an ISP serving as a passive conduit for copyrighted material
was not liable for direct infringement. See Religious
Tech. Ctr. v. Netcom On-Line Commc'n Servs., 907
F.Supp. 1361 (N.D. Cal. 1995). There, a user posted
copyrighted works to an online bulletin board. Id.
at 1365. The owners of the copyrighted works, seeking
compensation for infringement, sued the operator of the
bulletin-board service and the ISP that the operator used to
access the internet. Id. The court reasoned that
"[a]lthough 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." Id. at
the court rejected the plaintiffs' argument that the ISP
stored and thereby copied the copyrighted works: "Where
the infringing subscriber is clearly directly liable for the
same act, it [would] not make sense to adopt a rule that
could lead to the liability of countless parties whose role
in the infringement [was] nothing more than setting up and
operating a system that is necessary for the functioning of
the Internet." Id. at 1372. The court did
"not find workable a theory" that would hold online
parties, such as ISPs, liable "for activities that
cannot reasonably be deterred." Id. Thus,
because the Netcom plaintiffs could not show that
either the ISP or bulletin-board service was actively
involved in the infringement, the court held neither was
liable as a direct infringer. Id. at 1372-73,
courts followed. The Fourth Circuit was an early adopter of
Netcom and the volitional-conduct requirement.
CoStar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544,
551 (4th Cir. 2004). There, the copyright owner sued an ISP,
LoopNet, for direct infringement after "CoStar's
copyrighted photographs were posted by LoopNet's
subscribers on LoopNet's website." Id. at
546. Like the copyright owners in Netcom, CoStar
argued its "photographs were copied into LoopNet's
computer system, " and so LoopNet was strictly liable,
even though LoopNet's actions were passive. Id.
The court disagreed. It held instead that because LoopNet, as
an ISP, was "simply the owner and manager of a system