BWP Media U.S. Inc. v. Polyvore, Inc.
| Decision Date | 17 April 2019 |
| Docket Number | Nos. 16-2825-cv,August Term, 2017,16-2992-cv,s. 16-2825-cv |
| Citation | 922 F.3d 42 |
| Parties | BWP MEDIA USA INC., dba Pacific Coast News, Pacific Coast News, National Photo Group, LLC, Plaintiffs-Appellants-Cross-Appellees, v. POLYVORE, INC., Defendant-Appellee-Cross-Appellant. |
| Court | U.S. Court of Appeals — Second Circuit |
Craig B. Sanders, Sanders Law, PLLC, Garden City, NY, for Plaintiffs-Appellants-Cross-Appellees.
Orin Snyder (Ester Murdukhayeva, on the brief), Gibson, Dunn & Crutcher LLP, New York, NY, for Defendant-Appellee-Cross-Appellant.
Robert Reeves Anderson, Arnold & Porter LLP, Denver, CO, John C. Ulin, Kathryn W. Hutchinson, Stephanie S. Roberts, Arnold & Porter LLP, Los Angeles, CA, for amicus curiae, Copyright Alliance, in support of Plaintiffs-Appellants-Cross-Appellees.
Seth D. Greenstein, Constantine Cannon LLP, Washington, D.C., amici curiae, The Consumer Technology Association and The Computer & Communications Industry Association, in support of Defendant-Appellee-Cross-Appellant.
Mitchell L. Stoltz, Daniel Nazer, Kit Walsh, Electronic Frontier Foundation, San Francisco, CA, for amici curiae, Electronic Frontier Foundation, Center for Democracy and Technology, and Public Knowledge, in support of Defendant-Appellee-Cross-Appellant.
Kelly M. Klaus, David J. Feder, Munger, Tolles & Olson LLP, Los Angeles, CA, for amicus curiae, Motion Picture Association of America, Inc., in support of neither party.
Before: Newman, Walker, and Pooler, Circuit Judges.
BWP Media USA Inc., Pacific Coast News, and National Photo Group, LLC (collectively "BWP") appeal from a memorandum and order of the United States District Court for the Southern District of New York (Ronnie Abrams, J. ) that granted summary judgment to Polyvore, Inc. ("Polyvore") on BWP’s copyright claims for direct and secondary infringement and denied BWP’s cross-motion for summary judgment on direct infringement. The district court also denied Polyvore’s motion for sanctions under 17 U.S.C. § 505.
We conclude that the district court’s grant of summary judgment to Polyvore on the direct infringement claim was error because there is a dispute of material fact regarding whether Polyvore created multiple copies of BWP’s photos that were not requested by Polyvore users. We further conclude that questions of material fact preclude us from holding at this stage that Polyvore satisfied the requirements for the Digital Millennium Copyright Act (DMCA) § 512(c) safe harbor, even though BWP has not shown that Polyvore’s stripping of metadata disqualifies it from safe harbor protection. We agree with the district court, however, that Polyvore is entitled to summary judgment on BWP’s secondary infringement claims of contributory, vicarious, and inducement of infringement because the district court found that BWP abandoned those claims. And we find no error in the district court’s decision not to sanction BWP. We therefore AFFIRM the district court’s grant of summary judgment dismissing BWP’s secondary infringement claims, AFFIRM the denial of attorney’s fees, VACATE the judgment as to direct infringement, and REMAND for further proceedings pursuant to the principles and procedures set out United States v. Jacobson , 15 F.3d 19 (2d Cir. 1994). We request that the district court file its response within 60 days from the issuance of this opinion or as soon as practicable thereafter, and that upon such determination, the parties promptly notify the clerk of this court, whereupon jurisdiction will be restored to this court.
The facts are set forth in Judge Walker’s separate concurring opinion, which also specifies the questions of material fact that remain for determination by the district court. Judge Newman concurs in the result with a separate opinion. Judge Pooler concurs in the result with a separate opinion.
I write separately to set out the facts and questions of material fact that remain for determination by the district court, as well as to describe my reasoning regarding each of our conclusions.
The following facts are undisputed. Defendant-appellee Polyvore is an internet service provider that ran a website, Polyvore.com, that allowed users to create and share digital photo collages devoted to fashion, art, and design.1 Polyvore.com’s "Clipper" tool let users "clip" images from other websites and collect them on Polyvore’s site. Once a user clipped an image, they could store, modify, crop, or superimpose it on top of other images to make a digital photo collage, which Polyvore called a "set." Users could share their sets with other Polyvore users, comment on other users’ sets, and submit their sets in contests to win prizes. At the time this suit was filed, Polyvore’s website attracted 14.2 million visitors a month.
When a user uploaded an image to Polyvore.com, it triggered a series of automatic technical processes: Polyvore (1) attached a hyperlink to that image that linked back to the image’s original site; (2) gave the image a unique Uniform Resource Locator ("URL") that identified its precise location on Polyvore’s website, Polyvore.com; and (3) indexed the photo so it was searchable on Polyvore.com. All posted images were displayed automatically by software—meaning Polyvore employees did not review or interact with user-posted images before they appeared on the site. Based on these user uploads, Polyvore.com had an extensive library of searchable images—118 million when the complaint was filed.
Because some photos clipped by users were copyrighted images, Polyvore had policies in place that were designed to combat copyright infringement, including terms of service that prohibited users from posting copyrighted images, a repeat-infringer policy, and a notice-and-takedown system.
BWP owns copyrights in celebrity photographs, which it licenses to online and print publications for a fee. At issue in this case are at least seventy-nine of BWP’s photographs that appeared on Polyvore.com without BWP’s permission.2 The images include photos of celebrities such as McKayla Maroney, Carly Rae Jepsen, Ryan Gosling, Kim Kardashian, and Selena Gomez. In November 2013, BWP sued Polyvore for copyright infringement alleging that Polyvore’s posting of the photos violated BWP’s exclusive rights under the Copyright Act to reproduce and display its images publicly. See 17 U.S.C. § 106(1), (5). In its first amended complaint, BWP sought relief for (1) direct copyright infringement, (2) contributory copyright infringement, (3) vicarious copyright infringement, and (4) inducement of copyright infringement. Polyvore moved to dismiss, but the district court denied the motion. Relying on, among other things, BWP’s allegation that Polyvore employees actively worked with the photographs, the district court found that BWP had stated direct and secondary infringement claims. The case proceeded to discovery.
As part of discovery, BWP produced a document containing the URLs and upload dates of the images at issue, as well as screenshots showing its images displayed on Polyvore’s website; Polyvore served initial disclosures and identified witnesses with knowledge about facts alleged in the complaint. Because the software programs most relevant to BWP’s claims were highly technical, the parties agreed that instead of producing code, Polyvore would make available witnesses who could be deposed about the site’s design and functionality. During the seven-month discovery period, however, BWP never took a single deposition. With the record therefore essentially the same as it had been before discovery, Polyvore moved for summary judgment, arguing that BWP had not substantiated its direct or secondary liability claims.
In its opposition to that motion, BWP argued that Polyvore was not entitled to summary judgment on its direct infringement claims because Polyvore itself (1) copied, stored, and displayed BWP’s images, and (2) interfered with a "standard technical measure" by stripping metadata from BWP’s images, therefore disqualifying it from the protection of the safe harbor provisions of the DMCA which deny protection to ISPs that interfere with measures "used by copyright owners to identify or protect copyrighted works." 17 U.S.C. § 512(i)(2).
To support its claims, BWP attached to its motion for summary judgment a spreadsheet prepared by BWP’s counsel listing eighty-five different images that appeared on Polyvore’s website stripped of their metadata. The spreadsheet also included nine separate Polyvore URLs for each image—an original link and then a link to the same image reproduced in eight different sizes, "e," "g," "l," "m," "s," "t," "x," and "y." None of the images that the spreadsheet listed as having been copied nine times (including the original clipped image), however, were images at issue in this case. Relying on the evidence of the additional URLs, BWP cross-moved for summary judgment on direct infringement, arguing that Polyvore’s copying and display of BWP’s images "separate and apart" from the images its users clipped established direct infringement as a matter of law.
After finding no evidence that Polyvore acted volitionally, the district court granted Polyvore’s motion for summary judgment on all claims, denied BWP’s motion for summary judgment on its direct infringement claim, and denied Polyvore’s request for fees. Because the district court found no infringing conduct, it did not address Polyvore’s safe harbor defense under the DMCA. BWP appealed, and Polyvore cross-appealed.
On appeal, BWP principally argues that (1) Polyvore directly infringed its copyrights by designing the Clipper to retrieve photos from other websites, displaying BWP’s images at the request of users, and making and displaying multiple, unrequested copies of user-uploaded images; and (2) the DMCA does not shield Polyvore from its own directly...
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