A Blog About Intellectual Property Litigation and the District of Delaware

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The District of Delaware issued a copyright decision today that I found fascinating.

As the Court describes it, back in 2011 a website called Flavorwire posted an article describing (and displaying) nine images from Tom Hussey Photography, LLC, without permission from the photographer.

In 2018, the defendant in the case, BDG, bought the Flavorwire website, including that article. After BDG purchased the site, the photographer discovered the article and sued them for infringement in Delaware, where BDG is incorporated.

In response, BDG moved to dismiss, arguing that it had merely bought, operated, and maintained the website itself (the asset, not the company that created the website), and therefore that it never committed a "volitional act" of copyright infringement.

The Court agreed. It held that even though BDG owned the infringing content and operated and managed the site that shows it, there is no copyright infringement here:

Plaintiff has failed to allege that BDG committed a volitional act of copyright infringement. The only volitional conduct alleged is that BDG acquired and thereafter managed Flavorwire, which hosts a 2011 article displaying Plaintiff’s copyrighted work. Plaintiff has not alleged that BDG caused Flavorwire to display the copyrighted images. To the extent Plaintiff argues that BDG should be liable for declining to take down the 2011 article after it acquired Flavorwire, . . . this omission is neither volitional conduct nor infringing conduct as contemplated by the Copyright Act.

The Court then explained that the plaintiff had alleged "display" of the photos, but the problem was that owning the content and operating and managing the site that delivers it is not enough to show that the content is "displayed" as used in the copyright act:

Plaintiff’s allegation that BDG “displayed” the copyrighted images appears based on a broad definition of “display.” Under the Copyright Act, “[t]o ‘display’ a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process . . . .” 17 U.S.C. § 101. The verb “display” can describe both the volitional act of making something visible (e.g., the Louvre displayed the Mona Lisa in 1797), as well as the passive maintenance of its visibility thereafter (e.g., the Mona Lisa has been displayed at the Louvre for many years). Plaintiff does not allege that BDG committed the initial act of display in 2011. Thus, Plaintiff argues impliedly that BDG has infringed Plaintiff’s copyright by passively displaying the copyrighted images after acquiring Flavorwire.
. . .
Because BDG’s only alleged volitional act was acquiring a website that hosted allegedly infringing copies of Plaintiff’s work, Plaintiff has not stated a claim of direct copyright infringement. Thus, Plaintiff’s claim will be dismissed.

The Court noted that many courts have rejected copyright liability against internet service providers who only "passively host" infringing content. It also rejected the idea that BDG had "distributed" the photos for the same reason.

Can This Be Right?

I haven't reviewed the precedent cited closely, but I did read the briefing. And one thing that jumps out as missing from the briefing is any discussion of how a web site actually works.

A web site is not like a copy of newspaper that sits on a shelf. A web site is more like a printing press that prints newspapers, and it only works if you turn it on, let it run, and provide paper. Or, in the case of a website—in the barest terms—it only works if you start the web server up, let it run, and provide electricity and network connectivity. When users request copies of the site, the server sends them.

Here, in my view, what BDG was doing was operating a server (or paying someone else to operate a server) that sends a copy of whatever is on the server to whoever asks for it. If BDG stops operating the server, the copying stops. BDG is not a common carrier like an ISP or hosting provider; the content is owned by BDG, and BDG's goal is to profit from that content through advertising or otherwise.

Thus, there is absolutely an affirmative act in both operating and maintaining the server. It's akin to buying a vending machine that prints copies of a book in exchange for money, and then feeding supplies into the machine, repairing it when it breaks, and taking the money out as people buy the books. The operation and maintenance are the affirmative acts that cause the copying to occur.

What Happens If This IS the Standard?

Consider what could happen if owning, managing and operating a website could not be infringement of the content on that site. Company A could make a perfect copy of everything on the New York Time's website, for example, and sell it to Company B.

Company B could then sell access to that content in perpetuity and compete with nytimes.com itself, with no worry of copyright infringement. Or it could provide it for free, like BDG is alleged to have done with this photographer's photos, and just sell ads. That cannot be the right result.

Of course, none of those arguments were before the Court. In the briefing and in the complaint, Plaintiff instead focused simply on citing a few cases saying that transmitting a copy of a website can be copyright infringement. But—per the Court—those cases are easily distinguished as involving websites where the accused infringer had made the images available in the first place.

And you can't fault the Court for taking the arguments as they are presented.

In my view, plaintiff really needed to spend some time explaining (and pleading) exactly how web sites and web servers work. With that understanding, the facts as alleged set out a clear-cut instance of copyright infringement. Yes, the "patent lawyer effect" is a real thing, where attorneys with certain backgrounds sometimes trend towards hyper-technical and unhelpful briefing, losing the forest for the trees. But this shows that the reverse can be true as well.

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