Homepage of now-defunct Polyvore website. Photo: Casimiro PT via Shutterstock

The willful action requirement for holding online companies and providers responsible for copyright violations is alive and well, the U.S. Court of Appeals for the Second Circuit confirmed Wednesday.

The Second Circuit’s decision partly revived a copyright infringement suit brought by BWP Media, a provider of celebrity images against the defunct virtual styling and e-commerce website Polyvore, which was shuttered after its acquisition by online retailer SSENSE in April 2018.

The so-called volitional requirement established by the Second Circuit in its 2008 decision in Cartoon Network v. CSC Holdings (also known as the Cablevision decision) remained circuit law, even as the panel, split among three separate concurring opinions, disagreed on some of the finer interpretations.

Circuit Judge John Walker Jr. laid out the reasons for revival of the cause of action, while reaffirming the volitional requirement in Second Circuit law.

BWP field suit against Polyvore in November 2013, claiming the site was liable for copyright infringements of their photos, which Polyvore users had brought and collected from other websites using an image clipping tool. U.S. District Judge Ronnie Abrams of the Southern District of New York granted Polyvore’s motion for summary judgment in July 2018. She found the website had not acted volitionally, while denying BWP’s own motion on its direct infringement claim.

Critical for the panel on appeal was BWP’s claim that the volitional requirement was abrogated by the U.S. Supreme Court’s 2014 decision in American Broadcasting Companies v. Aereo. The suit was reversed by the Supreme Court after the Second Circuit, applying the volitional standard setup in the circuit’s Cablevision suit, found an internet subscription service that allowed users to stream programs as they were broadcast had not likely infringed on the copyrights of broadcasters.

The Supreme Court, Walker noted, reversed the decision, but on Copyright Act grounds unrelated to the issue of volitionality. Deceased Supreme Court Justice Antonin Scalia, writing for the dissent in the case, applied just such a volitional analysis to reach his decision. According to Walker, “BWP reads into the majority’s silence on volitional conduct in Aereo a declaration that the volitional conduct requirement is dead.”

Aereo did nothing to disturb Cablevision’s volitional conduct requirement and that requirement continues to apply to cases involving ISPs,” Walker wrote.

Applying the standard, then, Walker said he supported Abrams dismissal of claims based on Polyvore’s image clipper, but found BWP produced sufficient evidence of additional copying of those same protected images by the website itself to raise a question of material fact that required a jury’s review.

While the circuit judges agreed on the reversal and remand of the suit over the copying issue, they differed on how the volitional conduct requirement got them there.

Walker and Circuit Judge Jon Newman sparred over whether to understand the volitional conduct requirement as a causation requirement. Walker saw the two concepts as discretely different. Though the two kinds of analysis might reach the same conclusions, “volition is not the same thing as causation.”

Newman, for his part, argued that volition was “essentially … a requirement for ‘causation,’ and it would be helpful to name the concept for what it is.” He argued that the circuit itself had “clearly understood volition to mean causation.”

Walker said he had “serious reservations” applying a proximate causation analysis to the question of direct infringement, as raised by Newman, in part because the Copyright Act is absent the same kinds of “textual underpinnings” for causation as it is for volition, and the proximate causation is “out of place” with a strict liability tort like direct infringement.

There were more than a few ways to hold ISPs responsible for copyright infringements, Walker went on to note.

“One might conclude from reading Judge Newman’s concurring opinion that the only kind of copyright liability is direct liability,” he wrote. “But the concerns that motivate his desire to hold ISPs liable for infringing conduct under direct liability are addressed by the existence of secondary liability. And the existence of these two types of liability supports the volitional conduct requirement.”

Walker, joined by Newman and Circuit Judge Rosemary Pooler, tackled the additional issue of whether Polyvore was protected by the safe harbor provisions of the Digital Millennium Copyright Act. While BWP argued the stripping of metadata from copyrighted information stored by Polyvore was widely seen as obviating these kinds of protections, Walker found the image company failed to establish this as a breach of a broad industry standard that should have been addressed by the district court.

However, the panel found the issue of whether the copying of images were done solely to facilitate access by users required the district court’s review on that aspect of the safe harbor protection claims.

Pooler took issue with Walker’s declaration that an ISP does not act volitionally when it automatically makes a single copy in response to a user’s request—an aspect of the lead opinion over which Newman, too, expressed concern.

“While I concur in the result of remanding to the district court for further factfinding, I cannot agree with conceptualizing volitional conduct in such a way that an ISP does not act volitionally when it automatically makes one, but not more than one, unrequested copy in response to a user’s request for a copy,” Pooler wrote. “I believe this volitional‐conduct analysis must enter the landscape of multiple devices, mindful of both our copy‐shop past and the realities of functional website design in our present.”

Polyvore was represented on appeal by Gibson, Dunn & Crutcher partner Orin Snyder. He did not respond to a request for comment.

Attorney Craig Sanders represented BWP. He declined to immediately provided comment on the panel’s trio of concurrences.


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