BWP Media USA Inc. v. Hollywood Fan Sites LLC

• Decision Date: 30 June 2015
• Docket Number: No. 14–CV–121 (JPO).,14–CV–121 (JPO).
• Citation: 115 F.Supp.3d 397
• Parties: BWP MEDIA USA INC., National Photo Group, LLC, and Fameflynet, Inc., Plaintiffs, v. HOLLYWOOD FAN SITES LLC, Fan Sites Org, LLC, and Hollywood.com, LLC, Defendants.
• Court: U.S. District Court — Southern District of New York

115 F.Supp.3d 397

BWP MEDIA USA INC., National Photo Group, LLC, and Fameflynet, Inc., Plaintiffs,

v.HOLLYWOOD FAN SITES LLC, Fan Sites Org, LLC, and Hollywood.com, LLC, Defendants.

No. 14–CV–121 (JPO).

United States District Court, S.D. New York.

Signed June 30, 2015.

Craig B. Sanders, David Michael Barshay, Stella Beth Goldstein, Sanders Law, PLLC, Garden City, NY, for Plaintiffs.

Jonathan Bloom, Richard L. Levine, Weil, Gotshal & Manges LLP, New York, NY, for Defendants.

OPINION AND ORDER

J. PAUL OETKEN, District Judge.

Plaintiffs BWP Media USA Inc. ("BWP"), National Photo Group, LLC ("NPG"), and Fameflynet, Inc. ("FFN"; collectively with BWP and NPG, "Plaintiffs") bring this action against Hollywood Fan Sites LLC ("HFS"), Fan Sites Org, LLC ("FSO"), and Hollywood.com, LLC ("Hollywood"; collectively with HFS and FSO, "Defendants"), asserting violations of federal copyright law. Now before the Court is BWP and NPG's motion for partial summary judgment, which seeks to strike the affirmative defense asserted by HFS and FSO under the safe harbor provisions of the Digital Millennium Copyright Act ("DMCA"). For the reasons that follow, the motion is granted in part and denied in part.

I. Background

A. Plaintiffs' Allegations¹

Plaintiffs allege that they are the owners of the rights to certain images of celebrities. (Dkt. No. 67 ("Am. Compl.") ¶¶ 2, 4, 6–7.) They possess valid copyright registrations from the U.S. Copyright Office ("USCO") for some photographs, and have registrations pending for others. (Id. ¶ 17.)

According to the complaint, Defendants own and operate more than 4,500 websites called the "Fan Sites Network," which are dedicated to celebrities. (Id. ¶ 21–22.) Plaintiffs allege that their photographs appear on websites operated by Defendants without a license and in violation of Plaintiffs' rights. (Id. ¶¶ 26–30.) The websites are run by individuals (termed "dummy webmasters" in the complaint) who maintain them and update their contents, subject to Defendants' "right of full control." (Id. ¶¶ 31–33.) Although "the most conspicuous use" of the websites "is the display of Plaintiffs' stolen [p]hotographs," and although Defendants "have knowledge or have reason to know of the dummy webmasters' theft" of the images, Defendants nonetheless do not prevent the infringing activity. (Id. ¶¶ 34–35, 41.)

B. Procedural History

This case was initially filed by BWP and NPG on January 8, 2014, against Defendants and several other entities and individuals. (Dkt. No. 1.) This Court granted in part and denied in part a motion to dismiss on November 14, 2014. See BWP Media USA Inc. v. Hollywood Fan Sites, LLC, 69 F.Supp.3d 342 (S.D.N.Y.2014). That decision dismissed claims against the parties other than Defendants for lack of personal jurisdiction, id. at 349–52, and also dismissed claims under the Racketeer Influenced and Corrupt Organizations Act for failure to state a claim, id. at 360–64. The remaining claims of copyright infringement were permitted to proceed.

Defendants answered the complaint on December 12, 2014. (Dkt. No. 35.) In the answer, Defendants asserted as a third affirmative defense that "Plaintiffs' claims are barred by the safe-harbor provisions of the [DMCA]...."² (Id. at 9.) On January 7, 2015, BWP and NPG filed the present motion for partial summary judgment, seeking to strike the DMCA-based affirmative defense. (Dkt. No. 45.) Defendants opposed the motion (Dkt. No. 54), and BWP and NPG replied (Dkt. No. 62).

In the meantime, each of the three Plaintiffs filed an additional complaint against Defendants.

See National Photo Grp., LLC v. Hollywood Fan Sites LLC, No. 15 Civ. 410 (S.D.N.Y. filed Jan. 20, 2015); BWP Media USA Inc. v. Hollywood Fan Sites LLC, No. 15 Civ. 411 (S.D.N.Y. filed Jan. 20, 2015); Fameflynet, Inc. v. Hollywood Fan Sites LLC, No. 15 Civ. 412 (S.D.N.Y. filed Jan. 20, 2015). The Court accepted those cases as related to this action, and the parties stipulated that the three new actions would be consolidated into this case. (Dkt. No. 66.) Plaintiffs also represented that they would file an amended complaint to "eliminat[e] any duplication among the four complaints" within twenty days of the entry of the order on April 17, 2015. (Id. at 2.) Although Plaintiffs filed the amended complaint several days late, the parties agreed that it would be accepted for filing and would become the operative pleading in this action. (Dkt. Nos. 67, 69.)

On May 20, 2015, Plaintiffs filed a letter in which they stated that the amendment to the complaint has no effect on the present motion for partial summary judgment. (Dkt. No. 70.)

II. Legal Standard

Summary judgment is proper when "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). A fact is material if it "might affect the outcome of the suit under the governing law," Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986), and a dispute is genuine if, considering the record as a whole, a rational jury could find in favor of the non-moving party, Ricci v. DeStefano, 557 U.S. 557, 586, 129 S.Ct. 2658, 174 L.Ed.2d 490 (2009) (citing Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) ).

On a motion for summary judgment, the party bearing the burden of proof at trial must come forward with evidence on each element of its claim or defense illustrating its entitlement to relief. Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). It cannot rely upon mere "conclusory statements, conjecture, or speculation" to meet its burden. Kulak v. City of New York, 88 F.3d 63, 71 (2d Cir.1996). If the party with the burden of proof makes the requisite initial showing, the burden shifts to the opposing party to identify specific facts demonstrating a genuine issue for trial, i.e., that reasonable jurors could differ about the evidence. Fed.R.Civ.P. 56(c) ; Liberty Lobby, 477 U.S. at 250–51, 106 S.Ct. 2505. The court should view all evidence "in the light most favorable to the non-moving party and draw all reasonable inferences in its favor," and a motion for summary judgment may be granted only if "no reasonable trier of fact could find in favor of the nonmoving party." Allen v. Coughlin, 64 F.3d 77, 79 (2d Cir.1995) (internal quotation marks omitted).

Where, as here, "a plaintiff uses a summary judgment motion ... to challenge the legal sufficiency of an affirmative defense—on which the defendant bears the burden of proof at trial—a plaintiff may satisfy its Rule 56 burden by showing that there is an absence of evidence to support an essential element of the non-moving party's case." FDIC v. Giammettei, 34 F.3d 51, 54 (2d Cir.1994) (internal quotation marks and brackets omitted).

III. Discussion

BWP and NPG move for partial summary judgment to strike HFS's and FSO's assertion of an affirmative defense under the safe harbor provisions of the DMCA, 17 U.S.C. § 512.

A. DMCA Safe Harbor

"[T]he DMCA added four safe harbor provisions to the Copyright Act ..., which shield service providers from liability for copyright infringement under certain circumstances." Capitol Records, LLC v. Escape Media Grp., Inc., No. 12 Civ. 6646(AJN), 2015 WL 1402049, at *5 (S.D.N.Y. Mar. 25, 2015) (citing 17 U.S.C. § 512(a) -(d) ). In order to receive protection under the DMCA safe harbors, a party "must meet a set of threshold criteria." Viacom Int'l, Inc. v. YouTube, Inc., 676 F.3d 19, 27 (2d Cir.2012). Among these criteria are requirements that the party qualify as a "service provider," as defined in the statute; adopt and reasonably implement a " ‘repeat infringer’ policy"; and "accommodate ‘standard technical measures' that are ‘used by copyright owners to protect copyrighted works.’ " Id. (quoting 17 U.S.C. § 512(k)(1)(B), 512(i)(1)(A)-(B), (i)(2) ).

If these initial requirements are satisfied, then "a party may be eligible for one or more of the four ‘safe harbor’ provisions codified at 17 U.S.C. § 512(a) through § 512(d)." Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724, 745 (S.D.N.Y.2012), aff'd sub nom. Wolk v. Photobucket.com, Inc., 569 Fed.Appx. 51 (2d Cir.2014) (summary order). The safe harbor that may apply in this case is § 512(c), which "covers infringement claims that arise ‘by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.’ " Viacom, 676 F.3d at 27 (quoting 17 U.S.C. § 512(c)(1) ).

At issue in this motion is § 512(c)'s requirement that a service provider "designate[ ] an agent to receive notifications of claimed infringement." 17 U.S.C. § 512(c)(2). To effectively make such a designation, "[t]he statute requires that the service provider make ‘available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information [:] the name, address, phone number, and electronic mail address of the agent.’ " Wolk, 840 F.Supp.2d at 748–49 (quoting 17 U.S.C. § 512(c)(2) ) (ellipsis omitted).³

A service provider cannot retroactively qualify for the safe harbor for infringements occurring before the proper designation of an agent under the statute. See 17 U.S.C. § 512(c)(2) ("The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in [the subsequent paragraph] ...."); see also Oppenheimer v. Allvoices, Inc., No. C 14–00499(LB), 2014 WL 2604033, at *5 (N.D.Cal. June 10, 2014) (citing cases and holding that the defendant "may not invoke the safe harbor found in Section 512(c)(1) with respect to infringing conduct that occurred prior to [the defendant's] designating a DMCA-related agent with the Copyright Office"); Costar Grp. Inc. v. Loopnet, Inc., 164...