Ellison v. Robertson

• Decision Date: 10 February 2004
• Docket Number: No. 02-55797.,02-55797.
• Citation: 357 F.3d 1072
• Parties: Harlan ELLISON, Plaintiff-Appellant, v. Stephen ROBERTSON, an individual a/k/a Steven Robertson a/k/a Shaker@tco.net, Defendant, and America Online Inc., a Corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

357 F.3d 1072

Harlan ELLISON, Plaintiff-Appellant, v. Stephen ROBERTSON, an individual a/k/a Steven Robertson a/k/a Shaker@tco.net, Defendant, and America Online Inc., a Corporation, Defendant-Appellee.

No. 02-55797.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted March 6, 2003.

Filed February 10, 2004.

Glen L. Kulik, John H. Carmichael (brief), and Brigit K. Connelly, of Kulik, Gottesman, and Mouton, LLP, Sherman Oaks, CA, and Charles E. Petit (argued), Law Office of Charles E. Petit, Urbana, IL, for the plaintiff-appellant.

Daniel Scott Schecter (argued) and Belinda S. Lee, Latham & Watkins, Los Angeles, CA, for the defendant-appellee.

Donald B. Verilli, Jr. (argued), Thomas J. Perilli, Kali N. Bracey, and Younjae Lee, Jenner & Block, LLC, Washington, D.C., for amici curiae BMG Music, EMI Recorded Music, Sony Music Entertainment, and Universal Music Group.

Sonya D. Winner, Evan Cox, Daniel Hirsch, Covington & Burling, San Francisco, CA, for amicus curiae Business Software Alliance.

Daniel Schultz, James J. Halpert, and Arthur F. Fergenson, Piper Rudnick, LLP, Los Angeles, CA, for amicus curiae Internet Commerce Coalition and Stewart A. Baker and Alice E. Loughran, Steptoe & Johnson, LLP, Washington, D.C., for amicus curiae U.S. Internet Service Provider Association.

Laura A. Kaster, Frank L. Politano, and Michele A. Farber, AT & T Corp., Bedminster, NJ, for amicus curiae AT & T Corporation.

Bruce G. Joseph and Scott E. Bain, Wiley, Rein, & Fielding, Washington, D.C., for amici curiae Association of American Universities, American Council on Education, and National Association of State Universities and Land-Grant Colleges.

Appeal from the United States District Court for the Central District of California; Florence Marie Cooper, District Judge, Presiding. D.C. No. CV-00-04321-FMC.

Before PREGERSON, THOMAS, Circuit Judges, and OBERDORFER,^* Senior District Judge.

PREGERSON, Circuit Judge:

Harlan Ellison appeals the district court's summary judgment dismissal of his copyright infringement action against America Online, Inc. (AOL). The copyright infringement action arose when, without Ellison's authorization, Stephen Robertson posted copies of some of Ellison's copyrighted short stories on a peer-to-peer file sharing network, the USENET.¹ Because AOL provides its subscribers access to the USENET news-group² at issue, Ellison brought claims for vicarious and contributory copyright infringement against AOL. AOL moved for summary judgment. It asserted defenses to Ellison's infringement claims and alternatively argued that it qualified for one of the four safe harbor limitations of liability under Title II of the Digital Millennium Copyright Act (DMCA).³ The district court concluded that AOL was not liable for vicarious infringement. Although the court found there to be triable issues of material fact concerning Ellison's contributory infringement claim, it nonetheless granted summary judgment because it held that AOL qualified for the DMCA safe harbor limitation of liability under 17 U.S.C. § 512(a).

We hold that the district court erred in granting AOL's motion for summary judgment. We affirm the district court's holdings as to vicarious and contributory infringement, but we reverse the district court's application of the safe harbor limitation from liability. There are triable issues of material fact concerning whether AOL meets the threshold requirements, set forth in § 512(i), to assert the safe harbor limitations of liability of §§ 512(a-d). If after remand a jury finds AOL to be eligible under § 512(i) to assert the safe harbor limitations of §§ 512(a-d), the parties need not relitigate whether AOL qualifies for the limitation of liability provided by § 512(a); the district court's resolution of that issue at the summary judgment stage is sound. We affirm in part, reverse in part, and remand.

Facts and Procedural Background

Harlan Ellison is the author of numerous science fiction novels and short stories and he owns valid copyrights to those works. In the spring of 2000, Stephen Robertson electronically scanned and copied a number of Ellison's fictional works to convert them to digital files. Robertson subsequently uploaded the files onto the USENET news-group "alt.binaries.e-book." Robertson accessed the Internet through his local Internet service provider, Tehama County Online, and his USENET service was provided by RemarQ Communities, Inc. The USENET news-group at issue in this case was used primarily to exchange unauthorized digital copies of works by famous authors, including Ellison.

After Robertson made the infringing copies of Ellison's works accessible to the news-group, the works were forwarded and copied throughout the USENET to servers all over the world, including those belonging to AOL. As a result, AOL's subscribers had access to the news-group containing the infringing copies of Ellison's works. At the time Robertson posted the infringing copies of Ellison's works, AOL's policy was to store and retain files attached to USENET postings on the company's servers for fourteen days.

On or about April 13, 2000, Ellison learned of the infringing activity and contacted legal counsel. On April 17, 2000, in compliance with the notification procedures the DMCA requires, Ellison's counsel sent an e-mail message to agents of Tehama County Online and AOL to notify the service providers of the infringing activity. Ellison received an acknowledgment of receipt from Tehama County Online but received nothing from AOL, which claims never to have received the e-mail.

On April 24, 2000, Ellison filed an action against AOL and others in the United States District Court for the Central District of California. Upon receipt of Ellison's complaint, AOL blocked its subscribers' access to the news-group at issue. AOL thereafter moved for summary judgment, arguing that the undisputed facts did not prove Ellison's copyright infringement claims. AOL alternatively asserted the safe harbor limitations to liability under Title II of the DMCA. On November 27, 2001, Ellison moved for summary judgment of his contributory and vicarious copyright infringement claims against AOL. On March 13, 2002, the district court granted AOL's summary judgment motion and denied Ellison's summary judgment motion. The court found that: (1) the evidence failed to establish Ellison's claims of direct and vicarious copyright infringement; (2) whether AOL was liable for contributory copyright infringement presented a triable issue of fact; (3) the evidence showed that AOL met the threshold eligibility requirements of 17 U.S.C. § 512(i) for the safe harbor limitations from liability under OCILLA (Title II of the DMCA); and (4) AOL qualified for the safe harbor limitation on liability under 17 U.S.C. § 512(a). Ellison now appeals.

Discussion

I. Jurisdiction and Standard of Review

We have jurisdiction to hear this appeal under 28 U.S.C. § 1291. We review an order granting summary judgment de novo. Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1257 (9th Cir.2001). For the purposes of summary judgment, the moving party bears the burden of proving the absence of a genuine issue of a material fact for trial. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Fed.R.Civ.P. 56. A genuine issue of fact is one that could reasonably be resolved in favor of either party. Anderson, 477 U.S. at 250-51, 106 S.Ct. 2505. Moreover, in the summary judgment context, we construe all facts in the light most favorable to the non-moving party. Clicks, 251 F.3d at 1257. We review de novo the district court's interpretations of the Copyright Act, 17 U.S.C. § 101, et seq. Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir.2000).

II. The Law of Copyright Infringement and the DMCA

Ellison alleges that AOL infringed his copyrighted works. As a threshold question, a plaintiff who claims copyright infringement must show: (1) ownership of a valid copyright; and (2) that the defendant violated the copyright owner's exclusive rights under the Copyright Act. 17 U.S.C. § 501(a) (2003); Ets-Hokin, 225 F.3d at 1073. We recognize three doctrines of copyright liability: direct copyright infringement, contributory copyright infringement, and vicarious copyright infringement. To prove a claim of direct copyright infringement, a plaintiff must show that he owns the copyright and that the defendant himself violated one or more of the plaintiff's exclusive rights under the Copyright Act.⁴ A & M Records v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001) (Napster II). "One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another may be liable as a `contributory' [copyright] infringer." Gershwin Publ'g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir.1971) (footnote omitted and emphasis added). We have interpreted the knowledge requirement for contributory copyright infringement to include both those with actual knowledge and those who have reason to know of direct infringement. Napster II, 239 F.3d at 1020. A defendant is vicariously liable for copyright infringement if he enjoys a direct financial benefit from another's infringing activity and "has the right and ability to supervise" the infringing activity. Napster II, 239 F.3d at 1022 (quoting Gershwin Publ'g Corp., 443 F.2d at 1162); Fonovisa, Inc. v. Cherry Auction, Inc., 76 F.3d 259, 262 (9th Cir.1996); 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.04[A][1] (perm.ed., rev.vol.2003).

Congress enacted the DMCA in 1998 to comply with international copyright treaties and to update domestic copyright law for the online world. See Digital Millennium Copyright Act, Pub.L. No. 105-304, 112 Stat. 2860 (1998); 3 Nimmer on Copyright § 12A.02[A]; David W. Quinto, Law of Internet Disputes § 6.02 (2002). Difficult and controversial...