BWP Media USA Inc. v. Polyvore, Inc.

(quoting Fed. R. Civ. P. 56(a)) (citation

11 omitted). “The same standard applies where, as here, the parties filed

12 cross‐motions for summary judgment and the district court granted

13 one motion, but denied the other.” Morales v. Quintel Entmʹt, Inc., 249

14 F.3d 115

, 121 (2d Cir. 2001) (citation omitted). “[E]ach party’s motion

15 must be examined on its own merits, and in each case all reasonable

BWP also attempts to press its secondary infringement claims on 3

contributory and vicarious infringement theories. However, on remand from this court, the district court concluded that Jackson v. Federal Express “counsels in favor of” finding that BWP has abandoned these claims. See Jackson v. Federal Express,

766 F.3d 189

, 196–98 (2d Cir. 2014) (holding that a counseled party who partially opposed a motion for summary judgment had abandoned those claims it did not specifically oppose because “the papers and circumstances viewed as a whole” indicate “that abandonment was intended”). We have no reason to reject the district court’s finding that in this case “the papers and circumstances viewed as a whole” indicate that BWP abandoned its secondary infringement claims. Jackson, 766 F.3d at 196–97. 7

1 inferences must be drawn against the party whose motion is under

2 consideration.”

(citation omitted). Even when both parties contend

3 that there are no genuine issues of material fact, we are not bound to

4 enter judgment for either of the parties, because this court may

5 discern material factual disputes on its own.

6 I. Direct Infringement

7 The district court granted summary judgment for Polyvore on

8 BWP’s direct infringement claims. Applying Cartoon Network LP,

9 LLLP v. CSC Holdings, Inc.,

536 F.3d 121

(2d Cir. 2008) [hereinafter

10 “Cablevision”], the district court found that BWP had failed to show

11 the “volitional conduct” on the part of Polyvore necessary to establish

12 its liability. On appeal, BWP argues that Cablevision’s volitional

13 conduct requirement was abrogated by American Broadcasting

14 Companies, Inc. v. Aereo, Inc.,

573 U.S. 431

(2014), and that therefore

15 liability for direct copyright infringement does not require a showing

16 of volitional conduct. I begin by briefly recounting the evolution of

17 the volitional conduct requirement in order to answer the abrogation

18 question. Next, with this background in mind, I apply the volitional

19 conduct requirement to the facts of this case. Finally, I address the

20 arguments regarding the volitional conduct requirement raised by

21 Judge Newman in his concurring opinion. 8

1 A. The Volitional Conduct Requirement

2 Section 106 of the Copyright Act gives copyright holders an

3 exclusive bundle of rights, including the right “to reproduce the

4 copyrighted work in copies,” and the right to “display the

5 copyrighted work publicly.”

17 U.S.C. § 106

(1), (5). The Copyright Act

6 makes parties who infringe on those rights liable for damages,

7 regardless of whether they had knowledge that the content was

8 infringing. See

17 U.S.C. § 504

. In other words, the Copyright Act is a

9 strict liability regime. See EMI Christian Music Grp., Inc. v. MP3tunes,

10 LLC,

844 F.3d 79, 89

(2d Cir. 2016) [hereinafter “MP3tunes”], cert.

11 denied sub nom. Robertson v. EMI Christian Music Grp., Inc.,

137 S. Ct. 12 2269

(2017).

13 The advent of the internet posed a problem for this regime,

14 however, since applying strict liability to infringing content posted

15 online meant that websites could be held liable for infringing content

16 posted by their users based solely on the existence of the website—an

17 outcome that could be unfair. See, e.g., Religious Tech. Ctr. v. Netcom

18 On‐Line Commcʹn Servs., Inc.,

907 F. Supp. 1361

, 1368–70 (N.D. Cal.

19 1995). In response, beginning in the mid‐1990s, courts began to read

20 into the Copyright Act an implicit requirement that for a service

21 provider to be liable for direct infringement, it must have taken some

22 affirmative, volitional step to infringe. See

The doctrine posits that

23 to hold a service provider liable for direct copyright infringement, 9

1 that infringement must have resulted from the provider’s own

2 volitional conduct. See

3 Ten years ago in Cablevision, we adopted the volitional conduct

4 requirement in this circuit as a prerequisite to establishing copyright

5 infringement liability for service providers, holding that “volitional

6 conduct is an important element of direct liability.”

7 In that case, we considered a direct infringement suit brought by

8 owners of copyrighted television programs against a remote‐service

9 digital video recorder (“DVR”) company, Cablevision.

10 Cablevision’s product allowed subscribers to direct that a live

11 program be recorded and saved remotely so the user could watch it

12 later.

Id. at 125

. Both the parties and the district court in that case

13 analogized Cablevision’s actions to that of a copy shop.

at 131–32.

14 We concluded that because Cablevision “more closely resemble[d] a

15 store proprietor who charges customers to use a photocopier on his

16 premises,” it was “incorrect to say, without more, that such a

17 proprietor ‘makes’ any copies when his machines are actually

18 operated by his customers.”

Id. at 132

Judge Newman’s concurrence correctly notes that volitional conduct is 4

not a legal component of a direct liability cause of action, and that the use of the term “element” in the Cablevision opinion is therefore somewhat imprecise.

. As the author of the Cablevision opinion, I agree that volitional conduct is not an element of a cause of action for direct liability, but rather a factual component that must be established when the identity of the infringer is in doubt. 10

1 Subsequently, in Aereo, we considered a direct copyright

2 infringement claim brought by holders of copyrights in broadcast

3 television programs against Aereo, Inc., whose service allowed

4 subscribers to watch television programs over the internet at virtually

5 the same time as the program was broadcast. See WNET, Thirteen v.

6 Aereo, Inc.,

712 F.3d 676

, 680–84 (2d Cir. 2013), revʹd sub nom. American

7 Broadcasting Companies, Inc. v. Aereo, Inc.,

573 U.S. 431

(2014). Once a

8 subscriber chose a program, one of Aereo’s servers selected a

9 separate, dedicated antenna out of thousands it housed in a

10 centralized warehouse, which then received the broadcast and

11 transmitted it over the internet to the subscriber. See

id.

at 682–83.

12 Applying Cablevision, we held that the plaintiffs were not likely to

13 succeed on their claims that Aereo’s transmissions were infringing

14 under the Copyright Act, and therefore we affirmed the district

15 court’s denial of a preliminary injunction.

Id. at 696

16 The Supreme Court reversed on grounds unrelated to whether

17 Aereo’s conduct was volitional. Aereo, 573 U.S. at 432. The Supreme

18 Court held Aereo liable for direct copyright infringement because

19 Aereo’s system resembled the community antenna television (CATV)

20 systems that Congress amended the Copyright Act in 1976 to cover.

21 Id. at 441, 450–51. Previously, the Court had rejected the argument

22 that CATV companies performed copyrighted television material. See

23 id. at 439. The 1976 Act made it clear that rebroadcasting companies 11

1 both performed the programs and, under a newly enacted provision,

2 also transmitted the performance to the public. See id. at 441–42. The

3 Aereo majority viewed the case as squarely within the genre of

4 television retransmission, see id. at 441–49, which has nothing to do

5 with internet service providers except as they may operate within that

6 genre. The majority did not discuss the issue of volitional conduct.

7 In dissent, Justice Scalia, joined by Justices Thomas and Alito,

8 applied a volitional conduct analysis, stating that “[t]he Networks’

9 claim is governed by a simple but profoundly important rule: A

10 defendant may be held directly liable only if it has engaged in

11 volitional conduct that violates the [Copyright] Act.” Id. at 453. In

12 setting out the volitional conduct test, Justice Scalia noted that the

13 volitional conduct requirement is “firmly grounded in the

14 [Copyright] Act’s text,” id. at 453, that “[e]very Court of Appeals to

15 have considered an automated‐service provider’s direct liability for

16 copyright infringement has adopted that rule,” id. (citing Fox

17 Broadcasting Co. v. Dish Network LLC,

747 F.3d 1060

, 1066–1068 (9th

18 Cir. 2014); Cablevision, 536 F.3d at 130–131; CoStar Group, Inc. v.

19 LoopNet, Inc.,

373 F.3d 544

, 549–550 (4th Cir. 2004)), and that although

20 the Supreme Court has “not opined on the issue, our cases are fully

21 consistent with a volitional‐conduct requirement,” id. at 454.

22 Accordingly, whether or not one agrees with Justice Scalia’s 12

1 conclusion that Aereo did not engage in volitional conduct, id. at 457,

2 his unchallenged discussion of that standard is instructive.

3 BWP reads into the majority’s silence on volitional conduct in

4 Aereo a declaration that the volitional conduct requirement is dead. I

5 disagree. First, it is plain that Aereo, as viewed by the majority, is

6 confined to the discrete area of television rebroadcasting, which

7 explains both the absence of the majority’s discussion of volitional

8 conduct and Aereo’s inapplicability to the case before us. Second, we

9 have reaffirmed post‐Aereo (albeit without discussing Aereo) that

10 “[v]olitional conduct is an important element of direct liability.”

11 MP3tunes,

(holding that ISP that designed a system to

12 infringe satisfied the volitional conduct requirement); see also Great

13 Minds, 886 F.3d at 97; Fox News Network, LLC v. Tveyes, Inc.,

883 F.3d 14 169, 181

(2d Cir. 2018). Because we have limited authority to overturn

15 the decisions of prior panels even if we wanted to, the argument that

16 the volitional conduct standard disappeared with Aereo is unavailing.

17 See Doscher v. Sea Port Grp. Sec., LLC,

832 F.3d 372, 378

(2d Cir. 2016).

18 Aereo did nothing to disturb Cablevision’s volitional conduct

19 requirement and that requirement continues to apply to cases

20 involving ISPs.5

Alternatively, BWP argues that even if the volitional conduct 5

requirement survived Aereo, it only applies to defendants that are not ISPs because ISPs are already protected by the DMCA. See Appellant Br. at 21– 13

1 With this background, I turn to the question of whether either

2 party is entitled to summary judgment on direct infringement.

3 B. Whether Polyvore Acted Volitionally

4 The district court granted summary judgment to Polyvore,

5 dismissing BWP’s direct infringement claim. Notwithstanding a

6 dispute about whether Polyvore made additional unrequested copies

7 of BWP’s images, the district court found that Polyvore did not act

8 volitionally by designing the Clipper or copying BWP’s images

9 because (1) the images appeared on Polyvore’s site without

10 affirmative acts by Polyvore employees and (2) there was no evidence

11 that the Clipper was designed specifically to infringe. I agree with the

12 district court that Polyvore did not act volitionally when it designed

13 the Clipper and made one copy of user‐uploaded images belonging

14 to BWP, but I disagree about the materiality of the additional images.

15 After reviewing the record de novo, Baldwin,

805 F.3d at 25

, I conclude

16 that BWP produced sufficient evidence of additional copying to raise

17 a question of material fact about whether Polyvore, separate from its

18 users, acted volitionally by making and displaying the additional

19 copies of BWP’s images.

20 An ISP acts volitionally when it creates a program designed to

21 infringe copyrighted material and selects the copyrighted material

28. This is unpersuasive because, as previously discussed, we applied the volitional conduct requirement to an ISP in MP3tunes. See

. 14

1 that it copies. See MP3tunes,

.6 In MP3tunes, for example,

2 we upheld a jury verdict finding the defendant liable for direct

3 infringement where the defendant had designed a program

4 specifically to collect material that its creators knew to be copyrighted:

5 album cover art. See id.; see also Capitol Records, Inc. v. MP3tunes, LLC,

48 F. Supp. 3d 703, 720

(S.D.N.Y. 2014) affʹd in part, revʹd in part and

7 remanded sub nom. EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 844

8 F.3d 79

(2d Cir. 2016).

9 In contrast, the volitional conduct requirement is not satisfied

10 when an ISP simply displays user‐uploaded images and plays no role

11 in selecting the images.7 See, e.g., MP3tunes, 844 F.3d at 96–97 (holding

12 that displaying images only violated Copyright Act when defendant

13 also took the additional step of procuring unrequested copyrighted

14 images); CoStar,

373 F.3d at 551

(holding defendant ISP not liable for

15 direct infringement for simply displaying user‐posted real estate

This principle is also articulated by Justice Scalia in his Aereo dissent: 6

“The defendant may be held directly liable only if the defendant itself ‘trespassed on the exclusive domain of the copyright owner.’” Aereo, 573 U.S. at 454 (quoting CoStar,

373 F.3d at 550

). “Most of the time that issue will come down to who selects the copyrighted content: the defendant or its customers.”

at 454–55 (citing Cablevision, 536 F.3d at 131–132). 7 In questioning this statement, Judge Newman’s concurrence cites to

Capital Records, LLC v. ReDigi Inc.,

910 F.3d 649

(2d Cir. 2018). That case, however, did not specifically discuss the volitional conduct requirement. And in any case, ReDigi’s program seems more akin to the program in MP3tunes, in that it “inevitably involves the creation of new [copyrighted] phonorecords,”

id. at 657

, through unauthorized reproduction,

id. at 659

. 15

1 photos because defendant’s actions were “not truly ‘copying’ as

2 understood by the [Coypright] Act” and defendant acted simply as a

3 “conduit[] from or to would‐be copiers”); Netcom,

907 F. Supp. at 1372

4 (“No purpose would be served by holding liable those who . . . might

5 be in some sense helping to achieve . . . the users’ ‘public’ display of

6 files.”); see also Cablevision,

536 F.3d at 132

(suggesting that an ISP’s

7 passive display of images “where all copied content was supplied by

8 the customers themselves” would fall short of the requisite volitional

9 conduct because it would be less proximate than even Cablevision’s

10 non‐infringing conduct).

11 Likewise, an ISP does not act volitionally when it automatically

12 makes a single copy of content selected by the user in response to a

13 user’s request. See Cablevision,

536 F.3d at 123, 132

. For example,

14 Cablevision was not liable for direct infringement where its program

15 created one copy of the copyrighted programming each user

16 requested. See id.; accord Fox Broadcasting Co.,

747 F.3d at 1067

(holding

17 that the user, not the defendant satellite television service provider,

18 made the infringing copy of plaintiff’s TV programs even where the

19 satellite company modified start‐ and end‐times of the programs and

20 imposed certain restrictions on what users could record, because

21 “Dish’s program create[d] the copy only in response to the user’s

22 command”). 16

1 ISPs that provide additional unrequested copies of copyrighted

2 material in response to a user’s request for a single copy, however,

3 may be liable for direct infringement. See MP3tunes,

. For

4 example, we upheld MP3tunes’s liability for direct infringement

5 when it acted independently to copy and display copyrighted cover

6 art that the user had not asked for each time the user uploaded a song.

7 See

We explained that the fact that MP3tunes’s system “retrieved a

8 copyrighted item that a user did not request, frequently without the

9 user’s knowledge” was sufficient evidence “that copying of the cover

10 art was directed by MP3tunes, not users.” MP3tunes,

;

11 accord Perfect 10, Inc. v. Amazon.com, Inc.,

508 F.3d 1146

, 1160–61 (9th

12 Cir. 2007) (holding that copyright holders who challenged Google’s

13 creation of a thumbnail version of their copyrighted images, which

14 the user had not specifically requested be made, had made out a

15 prima facie case of direct copyright infringement).

16 In this case, there is no evidence that Polyvore designed the

17 Clipper to retrieve exclusively a specific kind of image that Polyvore

18 knew to be copyrighted. Instead, the evidence shows that Polyvore

19 designed a tool that its users could use to clip images generally,

20 whether copyrighted or not. Thus the single act of designing the

21 Clipper does not amount to volitional conduct that can be said to

22 “cause[] the copy to be made” each time its users selected the image

23 and used the Clipper to create a single copy of the image. Cablevision, 17

. Accordingly, Polyvore cannot be liable for direct

2 copyright infringement for designing the Clipper to simply retrieve

3 photos picked out by users from other websites (before Polyvore

4 makes any copies).

5 Likewise, the undisputed record in this case shows that one

6 copy of user‐uploaded images on Polyvore’s website was displayed

7 automatically by Polyvore’s software. Like the defendant ISP in

8 CoStar, Polyvore simply served as a “conduit[]” that allowed the user

9 to display his clipped images.

373 F.3d at 551

. This “conduit” function

10 aligns Polyvore with the hypothetical ISP that only displayed user‐

11 supplied content that we discussed in Cablevision.

536 F.3d at 132

. At

12 the user’s direction, Polyvore simply displayed the image its user

13 directed it to display. As to that one copy, it is clear to me that the

14 user, who selected the item to be copied, and not Polyvore, “cause[d]

15 the copy to be made.” Cablevision,

. Thus, in accordance

16 with Cablevision, Polyvore is not liable for displaying the images its

17 users uploaded.

18 There is evidence in the record, however, that after a user

19 clipped one of BWP’s images, Polyvore made further copies that the

20 user did not request. The spreadsheet prepared by BWP’s counsel

21 listing eighty‐five different images that appeared on Polyvore’s

22 website shows that for at least some images that users uploaded to

23 Polyvore, additional copies of the same images appeared in varying 18

1 sizes at distinct URLs.8 Although this spreadsheet does not list images

2 at issue in this case, it does provide circumstantial evidence from

3 which a reasonable juror could infer that BWP’s images, which

4 appeared on Polyvore’s website only two years earlier, were also

5 copied in the same way. Drawing all inferences in favor of BWP, as

6 we must, I conclude that BWP has met its burden of raising an issue

7 of material fact as to whether Polyvore made additional unrequested

8 copies of BWP’s copyrighted images. See Anderson v. Liberty Lobby,

9 Inc.,

477 U.S. 242, 248

(1986).

10 This dispute is material because, assuming the jury finds that

11 BWP’s images were in fact copied multiple times, Polyvore’s copying,

12 like the copying in MP3tunes, was triggered regardless of whether the

13 user knew about, let alone asked for, the additional images. See 844

14 F.3d at 96. This suggests that Polyvore, separate from its users, may

15 have committed an infringing act. And, by stripping its resized

16 images of their metadata and housing them at separate URLs where

17 they were able to be viewed by anyone, Polyvore is alleged to have

During the course of this appeal, Polyvore appears to have ceased to 8

operate its website. See Matney, supra note 1. The links that BWP put into the record showing the additional copies, therefore, no longer actively link to copies of the images. Because we were able to view some of these images at the listed URLs before the images were removed and because Polyvore’s counsel confirmed at oral argument that the Clipper makes more than one copy, I conclude that this evidence is sufficient at this stage to establish some additional copying. See Barlow v. Male Geneva Police Officer who Arrested me on Jan. 2005, 434 F. Appʹx 22, 24 n.1 (2d Cir. 2011). 19

1 gone further than the defendant in Perfect 10, who only made

2 temporary thumbnail versions of the relevant images.

508 F.3d at 3

1160‐61. I do not think it is dispositive, as Polyvore suggests, that

4 Polyvore did not retrieve copyrighted information like the defendant

5 did in MP3tunes. See

. After all, the Copyright Act is

6 violated not when data is procured before the copies are made, but

7 when the copies are made. Accordingly, I conclude that the district

8 court erred in granting summary judgment to Polyvore based on the

9 absence of volitional conduct regarding the unrequested copies, and

10 that, as to those copies, the case must be remanded. See, e.g., Anderson,

477 U.S. at 248

12 C. Judge Newman’s Concurring Opinion

13 In his concurring opinion, Judge Newman argues that the

14 volitional conduct requirement should be understood as a causation

15 requirement. I disagree with this approach for several reasons.

16 First, it seems to me that volition and causation are different

17 concepts. Importantly, what Judge Newman refers to when he

18 discusses causation is not “but for” causation, but rather “proximate”

19 causation. Proximate causation is a negligence concept that has to do

20 with risk and foreseeability. See RESTATEMENT (THIRD) OF TORTS:

21 PHYS. & EMOT. HARM § 29 (2010) (“An actorʹs liability is limited to

22 those harms that result from the risks that made the actorʹs conduct

23 tortious.”). Volition, on the other hand, is “[t]he act of making a choice 20

1 or determining something.” VOLITION, Blackʹs Law Dictionary (10th

2 ed. 2014). In the context of direct copyright infringement, volition “is

3 choosing to engage in an act that causes infringement.” 3 PATRY ON

4 COPYRIGHT § 9:5.50 (emphasis added). Therefore, although a volition

5 analysis may under certain circumstances require an explicit

6 causation analysis, and although applying only a causation analysis

7 to particular facts may yield the same result as a volition analysis, ,

8 volition is not the same thing as causation. When the district court in

9 Netcom referred to “volition or causation” in stating how direct

10 liability might be limited “where a defendant’s system is merely used

11 to create a copy by a third party,”

907 F. Supp. at 1370

, I think it was

12 positing two possibilities, not one. In any event, subsequent opinions

13 in our circuit have clearly applied a volition requirement, not a

14 causation requirement. Fox News Network, LLC,

883 F.3d at 181

;

15 MP3tunes,

; Cablevision,

718 F.3d 23 1006, 1012, 1016

. Absent a ruling

16 from the Supreme Court endorsing a causation requirement, the only

17 way to introduce such a requirement into our jurisprudence (either in

18 addition to or in lieu of the volition requirement) would be through

19 our en banc process. Doscher,

832 F.3d at 378

20 I also have serious reservations about applying a proximate

21 causation analysis to the question of direct infringement. First,

22 volition has textual underpinnings in the Copyright Act, whereas

23 proximate causation does not. See Aereo, 573 U.S. at 453 (Scalia, J., 21

1 dissenting). Second, because proximate causation is a concept that

2 sounds in negligence and deals with the foreseeability of risks, it

3 seems out of place to apply it to a strict liability tort like direct

4 infringement. Third, proximate causation has an opacity and

5 imprecision that has generated significant confusion. See

6 RESTATEMENT (THIRD) OF TORTS: PHYS. & EMOT. HARM § 29 cmt. b

7 (2010) (“[T]he term ‘proximate cause’ is a poor one to describe limits

8 on the scope of liability. It is also an unfortunate term to employ for

9 factual cause or the combination of factual cause and scope of liability.

10 Even if lawyers and judges understand the term, it is confusing for a

11 jury.”). Fourth, when proximate causation is employed, more often

12 than not, it is to determine who should not be held liable for

13 committing a particular tort, rather than the converse. See id. at § 29

14 cmts. d–e. For this reason, tort cognoscenti have urged that the term

15 be abolished. See e.g. RESTATEMENT (THIRD) OF TORTS: PHYS. & EMOT.

16 HARM 6 Spec. Note (2010). It is noteworthy that the pertinent section

17 of the Third Restatement of Torts in dealing with this area of law uses

18 the caption “Scope of Liability (Proximate Cause)” and comments

19 that when the Fourth Restatement is published, the authors

20 “fervently” hope that the parenthetical will be removed all together.

21 Id. Fifth, Judge Newman further opines that proximate causation in

22 the context of determining who infringes is different from proximate

23 causation in determining who or what is responsible for the harm, 22

1 and that here we are concerned only with the former. But if the term

2 has two possible independent applications in the law, why sow even

3 more confusion by using the term in the copyright context when the

4 word volition will do? It therefore strikes me as ill‐advised to import

5 the confusing baggage of proximate causation into the discrete and

6 specialized tort of copyright infringement where negligence is rarely

7 (if at all) at issue.

8 Finally, it is important to remember that direct liability is not

9 the only avenue for recovery against an ISP for copyright

10 infringement. Secondary liability exists precisely to impose liability

11 on defendants who, while not directly responsible for infringing

12 conduct, still should be held liable. Direct liability “applies when an

13 actor personally engages in infringing conduct.” Aereo, 573 U.S. at 452

14 (Scalia, J., dissenting). “Secondary liability, by contrast, is a means of

15 holding defendants responsible for infringement by third parties,

16 even when the defendants have not themselves engaged in the

17 infringing activity. It applies when a defendant intentionally induces

18 or encourages infringing acts by others or profits from such acts while

19 declining to exercise a right to stop or limit them.” Id. (citations,

20 internal quotation marks, and modifications omitted). I think

21 secondary liability is the proper framework for holding an ISP liable

22 for copyright infringement when the ISP does not select the

23 copyrighted material and make the infringing copy itself but is aware 23

1 of it and encourages or contributes to the infringement by the direct

2 volitional infringer.

3 One might conclude from reading Judge Newman’s concurring

4 opinion that the only kind of copyright liability is direct liability. But

5 the concerns that motivate his desire to hold ISPs liable for infringing

6 conduct under direct liability are addressed by the existence of

7 secondary liability. And the existence of these two types of liability

8 supports the volitional conduct requirement. As Justice Scalia stated

9 in his Aereo dissent, “[t]he distinction between direct and secondary

10 liability would collapse if there were not a clear rule for determining

11 whether the defendant committed the infringing act. The volitional‐

12 conduct requirement supplies that rule; its purpose is not to excuse

13 defendants from accountability, but to channel the claims against

14 them into the correct analytical track.” Aereo, 573 U.S. at 455.

15 It is true that secondary liability is no longer at issue in this case

16 because BWP has abandoned that claim. But BWP’s abandonment of

17 its secondary liability claim is no reason to try to shoe‐horn what

18 should be that claim into a direct liability claim or to confuse the

19 concept of volition in determining direct liability by equating it to

20 proximate causation.

21 II. DMCA Safe Harbor

22 Polyvore next argues that even if a jury could find that it

23 directly infringed BWP’s exclusive rights to display and reproduce its 24

1 copyrighted images, Polyvore cannot be held liable for direct

2 infringement because it qualifies for the safe harbor of § 512(c) found

3 in Title II of the DMCA.

4 Congress passed Title II of the DMCA in 1998 to “clarify the

5 liability faced by service providers who transmit potentially

6 infringing material over their networks.” Viacom Intʹl, Inc. v. YouTube,

7 Inc.,

676 F.3d 19, 27

(2d Cir. 2012) (internal alteration and quotation

8 marks omitted) (quoting S. Rep. No. 105–190 at 2 (1998)). The act

9 established four safe harbors to spare ISPs from liability for “claims

10 of copyright infringement based on (a) ‘transitory digital network

11 communications,’ (b) ‘system caching,’ (c) ‘information residing on

12 systems or networks at [the] direction of users,’ and (d) ‘information

13 location tools.’” Viacom,

676 F.3d at 27

(quoting

17 U.S.C. § 512

(a)‐(d)).

14 The section at issue here, 512(c), provides: 15 A service provider shall not be liable . . . for infringement of 16 copyright by reason of the storage at the direction of a user of material that 17 resides on a system or network controlled or operated by or for the service 18 provider, if the service provider— 19 (A)(i) does not have actual knowledge that the material or an 20 activity using the material on the system or network is infringing; (ii) in 21 the absence of such actual knowledge, is not aware of facts or 22 circumstances from which infringing activity is apparent; or (iii) upon 23 obtaining such knowledge or awareness, acts expeditiously to remove, or 24 disable access to, the material; 25 (B) does not receive a financial benefit directly attributable to the 26 infringing activity, in a case in which the service provider has the right 27 and ability to control such activity; and 28 (C) upon notification of claimed infringement as described in 29 paragraph (3), responds expeditiously to remove, or disable access to, the 25

1 material that is claimed to be infringing or to be the subject of infringing 2 activity.

17 U.S.C. § 512

(c)(1). A service provider that meets all of these criteria

4 is shielded from copyright liability as long as it also “has adopted and

5 reasonably implemented, and informs subscribers and account

6 holders of the service provider’s system or network of, a policy that

7 provides for the termination in appropriate circumstances of

8 subscribers and account holders of the service provider’s system or

9 network who are repeat infringers; and . . . accommodates and does

10 not interfere with standard technical measures.”

17 U.S.C. § 512

(i)(1).

11 Since the DMCA safe harbors are affirmative defenses, a defendant

12 generally has the initial burden of establishing that it meets the

13 statutory requirements. See Capitol Records, LLC v. Vimeo, LLC, 826

14 F.3d 78, 94

(2d Cir. 2016).

15 Polyvore argues it has satisfied all of these requirements for the

16 DMCA safe harbor of § 512(c) because the undisputed record shows

17 that at the time of the conduct alleged: (1) Polyvore was an ISP,

18 (2) Polyvore registered an agent to receive take‐down notices and

19 remove infringing content, (3) Polyvore had a repeat infringer policy,

20 (4) the infringing images were initially uploaded by users, and

21 (5) Polyvore had no actual or “red flag knowledge” that any of BWP’s

22 images uploaded by users were copyrighted.

23 In response, BWP argues that Polyvore is not eligible for any

24 safe harbor under the DMCA because (1) by altering the metadata of 26

1 images uploaded to its site it interfered with “standard technical

2 measures” in contravention of § 512(i), and (2) the copying of the

3 additional images was not infringement “at the direction of the user.”

4 Appellant’s Br. at 41. I agree with Polyvore that BWP has not raised

5 an issue of material fact as to whether preserving metadata is a

6 “standard technical measure,” but other questions of material fact still

7 prevent me from saying that Polyvore has shown that the copying

8 here was done “at the direction of the user.”

9 A. Metadata as a standard technical measure

10 Because the district court held that Polyvore’s conduct was not

11 infringing, it did not address whether Polyvore’s stripping of

12 metadata interfered impermissibly with “standard technical

13 measures” such that Polyvore was not eligible for the DMCA safe

14 harbor.

17 U.S.C. § 512

(i). Because the proper interpretation of the

15 statutory phrase “standard technical measures” is a question of law,

16 I address it even though the district court did not. See Travelers Ins. Co.

17 v. Pataki,

63 F.3d 89

, 93 (2d Cir. 1995).

18 The DMCA defines “standard technical measures” as

19 “technical measures that are used by copyright owners to identify or

20 protect copyrighted works.”

17 U.S.C. § 512

(i)(2). To qualify as a

21 standard technical measure, a practice must (1) “have been developed

22 pursuant to a broad consensus of copyright owners and service

23 providers in an open, fair, voluntary, multi‐industry standards 27

1 process,” (2) be “available to any person on reasonable and

2 nondiscriminatory terms,” and (3) “not impose substantial costs on

3 service providers or substantial burdens on their systems or

4 networks.”

17 U.S.C. § 512

(i)(2). When a measure meets these

5 qualifications, “[r]efusing to accommodate or implement a ‘standard

6 technical measure’ exposes a service provider to liability.” Viacom, 676

7 F.3d at 41. In other words, section 512(i) encourages copyright owners

8 and ISPs to work together to establish technical means by which

9 service providers can cheaply and easily identify infringing material.

10 See Ventura Content, Ltd. v. Motherless, Inc.,

885 F.3d 597, 615

(9th Cir.

11 2018) (“One can imagine a digital version of the old c in a circle (©)

12 automatically triggering the uploading software to exclude material

13 so marked by the copyright owner.”). At issue here is whether

14 metadata such as that used in the images in this case has become a

15 “standard technical measure.”

17 U.S.C. § 512

(i) (emphasis added).

16 The caselaw provides little guidance on how to know when a

17 widely followed practice has evolved into a “standard technical

18 measure.” See Perfect 10, Inc. v. CCBill LLC,

488 F.3d 1102, 1115

(9th

19 Cir. 2007) (remanding to the district court to determine whether

20 blocking copyright holders’ access to a website is a “standard

21 technical measure,” and if so whether defendant interfered with that

22 access); Gardner v. CafePress Inc.,

2014 WL 794216

, at *6 (S.D. Cal. Feb.

23 26, 2014) (finding dispute of material fact as to whether stripping 28

1 metadata regarding images’ copyright information is a “standard

2 technical measure”); Wolk v. Kodak Imaging Network, Inc.,

840 F. Supp. 3

2d 724, 745 (S.D.N.Y. 2012) (holding that providing editing tools that

4 some users used to remove watermarks from images did not interfere

5 with “standard technical measures”), affʹd sub nom. Wolk v.

6 Photobucket.com, Inc., 569 F. Appʹx 51 (2d Cir. 2014); Obodai v. Demand

7 Media, Inc.,

2012 WL 2189740

, at *5 (S.D.N.Y. June 13, 2012) (holding

8 that distributing copyrighted texts and entering into a distribution

9 agreement was “not evidence of interference with standard technical

10 measures under the DMCA”), affʹd sub nom. Obodai v. Cracked Entmʹt

11 Inc., 522 F. Appʹx 41 (2d Cir. 2013).

12 I need not expound upon what may or may not constitute a

13 “standard technical measure” because BWP has not come close to

14 establishing that there is a broad consensus among copyright owners

15 and service providers that preserving metadata should be so

16 considered.9 BWP’s primary “evidence” is a single document

17 attached as an exhibit to its opposition to summary judgment entitled

18 “Guidelines for Handling Image Metadata,” authored by the

Although Polyvore has the burden of proving its affirmative defense 9

of its entitlement to the safe harbor of § 512(c), see Columbia Pictures Indus., Inc. v. Fung,

710 F.3d 1020, 1039

(9th Cir. 2013), BWP, as the party asserting that metadata is a standard technical measure, has the burden of proving it. See Natʹl Commcʹns Assʹn, Inc. v. AT & T Corp.,

238 F.3d 124, 131

(2d Cir. 2001) (“The general rule is that the party that asserts the affirmative of an issue has the burden of proving the facts essential to its claim.”) (internal quotation marks omitted). 29

1 Metadata Working Group, which is made up of representatives from

2 Adobe, Apple, Canon, Microsoft, Nokia, and Sony. Dkt. 85‐2 at 2. This

3 document is wholly deficient in establishing that preserving metadata

4 is “standard.” First, representatives from these six software and

5 hardware companies do not constitute a “broad consensus” of

6 “copyright owners and service providers.”

17 U.S.C. § 512

(i)(2)(A)

7 (emphasis added); see also

17 U.S.C. § 512

(k).10 Even assuming that

8 these companies are all “service providers” within the meaning of the

9 statute, there is no demonstrated consensus of copyright owners.

10 Moreover, the language in the document itself hardly permits the

11 inference that preserving metadata is an industry “standard.”

12 Instead, the document does no more than indicate that, at the time of

Additionally, at least some of these companies, on BWP’s telling, 10

appear not to meet the statutory definition of a “service provider.”

17 U.S.C. § 512

(k)(1) (“[T]he term ‘service provider’ means an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the userʹs choosing, without modification to the content of the material as sent or received.”). According to BWP, Canon develops printers, projectors, and lenses; Adobe makes multimedia software and products for creating webpages; Apple produces consumer technology and software; Nokia manufactures cellular phone technology; Microsoft makes software and consumer electronics; and Sony manufactures electronics and is involved in music publishing and financial services. Even if some of these companies do function as ISPs, BWP has not put forth evidence definitively showing that all of these companies “offer[] the transmission, routing, or providing of connections for digital online communications,”

17 U.S.C. § 512

(k)(1), sufficient to show that the views of these companies alone indicates a “consensus” of “service providers.”

17 U.S.C. § 512

(i)(2)(A). 30

1 its authorship in 2010, preserving metadata was an aspirational goal.

2 See App’x at 211 (listing “goals” of working group as including the

3 “[p]reservation and seamless interoperability of digital image

4 metadata”). Furthermore, the document does not categorically reject

5 deleting metadata; in fact, it sets out norms for when and how

6 metadata may be deleted. App’x at 271 (stating that deleting metadata

7 can be a “legitimate design choice”); App’x at 271 (“[Applications that

8 modify metadata] need to strive to preserve information while

9 ensuring that changes leave the metadata relevant and consistent”

10 (emphasis added)). Most importantly, rather than claiming that there

11 is an existing norm around preserving copyright metadata, the

12 document states that whether to place “additional safeguards . . .

13 around sensitive metadata such as copyright” is “the purview of the

14 application,” not the working group. App’x at 271.11

15 Alternatively, BWP argues that because courts interpreting 17

16 U.S.C. §§ 1202–1204, which establish civil and criminal penalties for

BWP also points to evidence that the International Press 11

Telecommunications Counsel, a consortium of news‐industry groups, has established norms around photo metadata. See Sanders Decl. ¶ 49–56, ECF 85. These norms, however, refer to how metadata can be added to images, and therefore hardly establish that there is a norm about whether metadata can be removed. See, e.g., The IPTC Photo Metadata Standard, THE INTERNATIONAL PRESS TELECOMMUNICATIONS COUNSEL, https://iptc.org/standards/photo‐metadata/iptc‐standard/ (last visited April 16, 2019) (“[The IPTC Photo and Metadata Standard] defines metadata properties that allow users to add precise and reliable data about images.” (emphasis added)). 31

1 removing “copyright management information,” have considered

2 metadata to be copyright management information, metadata should

3 be considered a standard technical measure. This argument is

4 unavailing. The section of the DMCA that specifies when a “technical

5 measure” can be considered “standard” makes no reference to

6 “copyright management information,” § 1202, or to judicial

7 interpretations of § 1202. See

17 U.S.C. § 512

(i)(2). The fact that some

8 courts have construed § 1202’s prohibition on destroying “copyright

9 management information” to reach metadata is beside the point and,

10 regardless, does not speak to the standardization question. “When a

11 statute includes an explicit definition, we must follow that

12 definition,” Stenberg v. Carhart,

530 U.S. 914, 942

(2000); see also Burgess

13 v. United States,

553 U.S. 124, 129

(2008), and there is no indication in

14 § 512(i) that Congress intended that items that courts find to be

15 “copyright management information” for § 1202 purposes somehow

16 count as “standard technical measures” for § 512(i) purposes. See

17 Burgess,

553 U.S. 124, 130

(2008).

18 More broadly, Congress did not leave it to the courts to simply

19 pronounce out of thin air that a given technical measure has become

20 a “standard” in the industry such that interfering with it prevents an

21 ISP from claiming the protection of the § 512(c) safe harbors. It is plain

22 from § 512(i) itself that such a pronouncement can only come from “a

23 broad consensus of copyright owners and service providers in an 32

1 open, fair, voluntary, multi‐industry standards process.”

17 U.S.C. § 2

512(i)(2)(A). I see nothing to show, to date, that such a consensus or

3 such a process has developed. For these reasons, BWP has failed to

4 proffer evidence upon which a reasonable jury could conclude that

5 altering or destroying metadata disqualifies a service provider from

6 the safe harbor protections of § 512(c).

7 B. Storage “at the direction of a user”

8 “The § 512(c) safe harbor is only available when the

9 infringement occurs ‘by reason of the storage at the direction of a user

10 of material that resides on a system or network controlled or operated

11 by or for the service provider.’” Viacom,

676 F.3d at 38

(emphasis

12 added) (quoting

17 U.S.C. § 512

(c)(1)).

13 BWP argues in passing that Polyvore is ineligible for the

14 § 512(c) safe harbor protections because Polyvore, not its users, made

15 the infringing additional copies, thereby disqualifying Polyvore from

16 the safe harbor for copying done “at the direction of a user.” 17 U.S.C.

17 § 512(c). The question whether the storage of the materials by

18 Polyvore was “at the direction of the user” turns upon whether

19 additional copies that are not specifically requested by the user are

20 still made at the direction of the user when that user’s request for a

21 single copy triggers their automatic production.

22 Making copies of user‐uploaded materials solely to facilitate

23 user access does not disqualify an ISP from availing itself of the 33

1 § 512(c) safe harbor. For example, in Viacom, we held that YouTube

2 had met the requirements of the § 512(c) safe harbor even though it

3 had converted or “transcoded” videos its users uploaded into a

4 standard display format. 676 F.3d at 38–39. That transcoding process

5 involved automatically “mak[ing] one or more exact copies of the

6 video in its original file format,” as well as one or more copies in

7 “Flash” format once a user uploaded a video. Id. at 28. These copies

8 allowed YouTube to make user‐uploaded videos accessible not just to

9 the user who uploaded the video, but to other users who requested to

10 play the video. See id. at 28, 39. Relying on Ninth Circuit precedent,

11 we rejected plaintiffs’ argument that the transcoding was not “by

12 reason of” user storage, because the transcoding merely served to

13 “render the video viewable over the Internet to most users” and

14 delivered copies of YouTube videos to the user “in response to [the]

15 user[’s] request.” Viacom,

676 F.3d at 39

(internal quotation marks

16 omitted). Thus, even though YouTube made additional copies,

17 potentially unbeknownst to the user, it still qualified for the § 512(c)

18 safe harbor. See id.; see also Ventura Content, 885 F.3d at 605–06 (“[T]he

19 phrase by reason of the storage at the direction of a user covers more

20 than ‘mere electronic storage lockers. It allows service providers to

21 perform access‐facilitating processes.”) (internal quotation marks

22 omitted); UMG Recordings, Inc. v. Shelter Capital Partner, LLC,

, 1019–20 (9th Cir. 2013) (holding that defendant’s use 34

1 of “access‐facilitating processes that automatically occur when a user

2 upload[ed] a video,” including making four copies of video in various

3 formats so that they could be viewed on multiple devices, did not

4 disqualify it from “by reason of storage at the direction of the user”

5 safe harbor).

6 There is a question of material fact as to whether Polyvore’s

7 additional copies were made solely to facilitate access by users.

8 Polyvore, as the party with the burden to prove its affirmative

9 defense, see Columbia Pictures,

710 F.3d at 1039

, has not pointed to

10 evidence in the record that shows, assuming these copies were made,

11 why they were made at all.12 Without facts in the record about the

12 purpose and function of these additional copies, I am unable to

13 determine whether the copies here were made to “render” user‐

14 uploaded content “viewable over the Internet to most users.” Viacom,

676 F.3d at 39

16 On the current incomplete record, Polyvore appears to

17 resemble the defendants in Viacom and UMG in some ways, but not

18 in others. For example, like the defendants in Viacom and UMG,

19 Polyvore is alleged to have made, unbeknownst to its users, multiple

20 copies of user‐uploaded images. See Viacom,

676 F.3d at 39

; UMG

At oral argument, Polyvore’s counsel said that the copies were made 12

to make the images visible on a range of devices, a practice some amici tell us is common. See Br. of Amici Curiae Electronic Frontier Foundation, Center for Democracy and Technology, and Public Knowledge at 13–14. 35

1 Recordings, Inc., 718 F.3d at 1019–20. And Polyvore, like the

2 defendants in those cases, is alleged to have slightly altered the user‐

3 uploaded content when it resized the uploaded images. See Viacom,

676 F.3d at 28

(finding that defendant converted uploaded videos into

5 other file formats); UMG,

718 F.3d at 1012

(finding that defendant

6 broke down uploaded videos into smaller “chunks”). Unlike in

7 Viacom and UMG, however, the copies at issue here were allegedly

8 given separate URLs that could be viewed by anyone at any time. See

9 UMG,

718 F.3d at 1019

(discussing how risk of infringement is

10 lessened when copies are inaccessible to public). Because Polyvore’s

11 similarity to the defendant in Viacom centers on the existence and

12 nature of the disputed additional URLs, however, I cannot decide as

13 a matter of law whether Polyvore’s copying occurred “at the direction

14 of [the] user.”

17 U.S.C. § 512

(c)(1). Therefore, a remand to the district

15 court to apply Viacom after further factfinding is required. In doing

16 so, the district court may want to consider, among other things,

17 whether under Viacom a defendant’s alteration, if any, of the original

18 image matters or whether it is significant that user‐uploaded content

19 is housed at separate, publicly accessible URLs.

20 III. Attorney’s Fees

21 Polyvore’s sole argument in its cross‐appeal is that because of

22 BWP’s history of aggressively filing cases that it fails to prosecute, the

23 district court abused its discretion by declining to award Polyvore 36

1 fees under

17 U.S.C. § 505

. In reaching its decision, the district court

2 appropriately considered BWP’s general “diligen[ce],” discovery

3 conduct, and the Copyright Act’s goals to conclude that, viewed in

4 the totality of the circumstances, sanctions were not warranted

5 because BWP had not acted in “bad faith” or engaged in “misconduct

6 before the court.” App’x at 533; see also Kirtsaeng v. John Wiley & Sons,

7 Inc.,

136 S. Ct. 1979, 1985

(2016). Mindful that the district court was

8 “intimately familiar with the nuances of the case” and “in a far better

9 position” to assess the severity of BWP’s actions than we are, In re

10 Bolar Pharm. Co., Sec. Litig.,

966 F.2d 731, 732

(2d Cir. 1992), I cannot

11 say that the district court, in concluding that BWP’s conduct did not

12 merit sanctions, strayed outside the range of permissible decisions.

13 See In re Bank of Am. Corp. Sec., Derivative, & Employee Ret. Income Sec.

14 Act (ERISA) Litig.,

772 F.3d 125, 134

(2d Cir. 2014).

15 However, notwithstanding the district court’s denial of legal

16 fees, I cannot let pass my concern over BWP’s record of aggressive

17 litigation, which entails filing hundreds of lawsuits directed at ISPs

18 without even attempting to substantiate its claims in discovery. See

19 BWP Media USA Inc. v. Rich Kids Clothing Co., LLC,

103 F. Supp. 3d 20 1242

, 1247–48 (W.D. Wash. 2015) (awarding fees to “deter BWP from

21 engaging in similar litigation tactics in the future” after BWP “failed

22 to comply with its pretrial disclosure and discovery obligations” and

23 “waited until the deadline” to produce evidence supporting its 37

1 claims). Here, the fact that BWP filed a lawsuit before simply asking

2 Polyvore to take its images down suggests that BWP has a business

3 model that involves abusing the federal courts. See

Despite my

4 distaste for BWP’s tactics, I cannot affirm the district court’s dismissal

5 of BWP’s claims on summary judgment based on this record because

6 questions of material fact remain. I therefore leave it to the district

7 court to direct further discovery necessary to complete the necessary

8 factfinding. To the extent the district court determines that this added

9 effort could have been avoided had BWP taken discovery, the district

10 court is of course aware of its discretionary authority to impose

11 appropriate sanctions. Jon O. Newman, Circuit Judge, concurring in the result.

The ultimate issue on this appeal, of increasing importance in the age of

digital transmissions, concerns the circumstances under which a developer or

operator of a computer system or program, activated by its customers, can be liable

for direct infringement of a copyright. Now that the District Court, pursuant to

our interim remand,1 has ruled that the claims of secondary liability for

infringement in this case have been abandoned,2 the issue of liability for direct

1 On October 11, 2018, we remanded the case to the District Court to “advise whether the [C]ourt understood that it had discretion . . . to determine whether the plaintiff had abandoned its secondary infringement claims, and, if not, whether it believed that it was required to reach the merits of those claims.” BWP Media USA Inc. v. Polyvore, Inc. No. 16‐2825 (2d Cir. Oct. 11, 2018) (order remanding for clarification). 2 On December 13, 2018, the District Court responded to our remand by entering a Memorandum

with three conclusions. See BWP Media USA Inc. v. Polyvore, Inc., No. 13‐cv‐7867 (S.D.N.Y December 13, 2018) (Memorandum entered on remand (“Dist. Ct. Mem.”)). First, the District Court stated, “This Court thus did not believe that it had discretion to determine that Plaintiffs had abandoned their secondary infringement claims, but rather believed that it was required to reach the merits of those claims.” Dist. Ct. Mem. at 2. The Court said it had reached that conclusion based on this Court’s decision in Vermont Teddy Bear Co. v. 1‐800 Beargram Co.,

373 F.3d 241

(2d Cir. 2004), which had ruled that a failure to make any response to a motion for summary judgment did not relieve a district court of the obligation to make sure that summary judgment for the movant was warranted. See

id. at 246

. We subsequently pointed out in Jackson v. Federal Express,

766 F.3d 189

(2d Cir. 2014), however, that “Vermont Teddy Bear involved a pro se litigant, and we are less demanding of such litigants generally, particularly where motions for summary judgment are concerned.”

Id. at 195

. Especially pertinent to the then‐pending appeal in this case, Jackson noted that “there is a relevant distinction to be drawn between fully unopposed and partially opposed motions for summary judgment in counseled cases,”

id. at 196

, and ruled that “in the case of a counseled party, a court may, when appropriate, infer from a partyʹs partial opposition [to a motion for summary judgment] that relevant claims or defenses that are not defended have been abandoned.”

Id. at 198

(emphasis added). Second, the District Court stated, “Having reviewed Jackson v. Federal Express in light of the Second Circuit’s remand, the Court concludes that its language counsels in favor of a finding of abandonment here,” Dist. Ct. Mem. at 2, and set forth numerous facts and circumstances to support that finding. No member of the panel in the pending appeal believes that that finding of abandonment of claims of secondary infringement is clearly erroneous.

infringement, and only that issue, is before us. For that reason I express no views

on the possibility that defendant Polyvore, Inc. might have been found secondarily

liable for infringement.

However, as Judge Walker’s opinion points out, before the direct

infringement claim can properly be resolved, a remand is needed for District Court

factfinding on two issues: first, whether, from the fact that Polyvore made multiple

copies of 85 images for which plaintiff BWP Media USA Inc. (“BWP”) holds a

copyrighted images at issue in this case; second, whether additional copies of the

copyrighted images were made solely to facilitate access by users so as to accord

Polyvore the safe harbor protection of the Digital Millennium Copyright Act,

17 U.S.C. § 512

(c)(1). I agree that a remand for factfinding is warranted and therefore

concur in the judgment, but I write separately because, although I agree with much

of Judge Walker’s opinion, I disagree with some significant statements that Judge

Walker has made concerning the so‐called volitional conduct requirement for

Third and finally, the District Court concluded “that it would have been proper to infer that Plaintiffs had abandoned their secondary infringement claims.” Dist. Ct. Mem at 3. This conclusion, read in conjunction with the District Court’s second conclusion, is fairly understood to mean that had the District Court originally applied its current and correct understanding of Jackson, it would then have made the finding of abandonment that it has now made. Thus, the abandonment of contributory infringement results from an explicit decision of the District Court, after the issue was specifically called to its attention. This is not a case where a claim of contributory infringement is alleged to have been abandoned because of some technical defect of pleading.

liability for direct infringement. Without concluding, in advance of the findings on

remand, whether volitional conduct by Polyvore has been shown, I set forth some

views on the volitional conduct requirement and on certain aspects of Judge

Walker’s opinion for such value as they might have for courts considering similar

issues in the future and perhaps for the parties in this case considering the

possibility of settlement.

I. Evolution of the volition requirement

Because the District Court rejected BWP’s claim of direct infringement on

the ground that Polyvore had not acted with the “volition” required for direct

CV‐7867(RA),

2016 WL 3926450

, at *1, *6 (S.D.N.Y. July 15, 2016), I begin my

analysis with an exploration of that concept, which recurs frequently in copyright

jurisprudence, see, e.g., Cartoon Network LP v. CSC Holdings, Inc.,

536 F.3d 121

, 130‐

32 (2d Cir. 2008), but is rarely explained.

The first articulation of a volitional conduct as a requirement for direct

infringement of copyright occurred in Religious Technology Center v. Netcom On‐

Line Communication Services, Inc.,

907 F. Supp. 1361

(N.D. Cal. 1995) (usually cited

as “Netcom”). At that time, no provision of the Copyright Act immunized an

alleged infringer for violating any of the proprietor’s rights by means of a

defendant’s automatic processes activated by an individual. Nevertheless, Judge

Whyte stated, “Although copyright is a strict liability statute, there should still be

some element of volition or causation which is lacking where a defendant’s system

is merely used to create a copy by a third party.”

Id. at 1370

Preliminarily, I note that it is unlikely that Judge Whyte used the word

“element” to mean a legally required element of an infringement claim. Numerous

cases have long established that an infringement claim has only two elements –

“(1) ownership of a valid copyright, and (2) copying of constituent elements of the

work that are original.” Feist Publications, Inc. v. Rural Television Service Co.,

499 U.S. 340, 361

(1991). Thus, when an opinion of our Court later said that volition was

“an important element of direct liability,” see Cartoon Network,3

(emphasis added), it likely was not using the word in the sense of a third legal

component of a cause of action (as Judge Walker today confirms), but rather more

colloquially as a fact needed to be established whenever the identity of a person

liable for direct infringement was in dispute. Why volition must sometimes be

3 I do not know why this case is sometimes cited as “Cablevision,” the name of the defendant, instead of “Cartoon Network,” the name of the plaintiff. See, e.g., Judge Walker’s opinion in this case; Fox News Network, LLC, v. TVEyes, Inc.,

883 F.3d 169, 181

(2d Cir. 2018). But see, e.g., EMI Christian Music Group, Inc. v. MP3tunes,

840 F.3d 69, 96

(2d Cir. 2016) (citing Cartoon Network as “Cartoon Network”).

shown emerges from consideration of Judge Whyte’s phrase “volition or

causation.”

An initial issue posed by Netcom’s “volition or causation” phrase is whether

the words “volition” and “causation” are synonyms or alternatives. Long before

Netcom, there was no doubt that when the identity of a person liable for direct

infringement was disputed, it was necessary to prove who caused the

infringement. Infringement is a tort, as this Court long ago recognized, see

American Code Co. v. Bensigner,

282 F. 829, 834

(2d Cir. 1923); Ted Browne Music Co.

v. Fowler,

290 F. 751, 754

(2d Cir. 1923), and no person may be held liable for any

tort unless that person (alone or with others) has caused the injury for which a

claim is made. “Volition” in Judge Whyte’s phrase is best understood to mean a

concept essentially reflecting tort law causation. See 4 NIMMER ON COPYRIGHT

(hereafter “NIMMER”) § 13.08[C][1], at 13‐290.6 (“Netcom simply stands for the

unremarkable proposition that proximate causation historically underlines

omitted).4 Moreover, there is no reason to give “volition” a meaning separate from

4 Having viewed the volition requirement of Netcom as a requirement of proximate causation, the NIMMER treatise later makes the somewhat surprising suggestion that it is preferable to treat volition as an “affirmative defense” that “a defendant who wishes to avoid liability must specially inject . . . into the case.” Id. at 13‐290.9 (discussing Cartoon Network,

). Perhaps all the treatise means is that in most infringement cases there is no dispute as to the identity of the actor who might be liable, but where

“causation.” Although many decisions and some commentators have written

extensively about what they call “volition,” they are essentially explaining a

requirement of “causation,” and it would be helpful to name the concept for what

it is. And, as the NIMMER treatise makes clear, “causation,” in the context of

causation. See id.; Robert C. Denicola, Volition and Copyright Infringement,

37 Cardozo L. Rev. 1259

, 1268 (2016). However, in this context. “[u]nlike ‘legal’ or

‘proximate’ cause, ‘causation’ is not invoked in Netcom to evaluate the connection

between the tort and the plaintiff’s harm, but instead to analyze the connection

between the defendant’s actions and the commission of the tort. Judge Whyte was

concerned with whether the defendants ‘caused’ the infringement, not whether

the infringement ‘caused’ the plaintiff’s injury.”

Id. at 1269

Volition, that is, causation, is widely accepted as a requirement for direct

infringement liability. “[E]very circuit to address this issue has adopted some

version of Netcom’s reasoning and the volitional‐conduct requirement.” BWP

that issue is in dispute, as is happening more frequently in the digital age, it must receive attention. But, as with the identity of a person who proximately caused any tort, the plaintiff must prove who is the tortfeasor. 5 See, e.g., Wolk v. Kodak Imaging Network, Inc.,

840 F. Supp. 2d 724, 742

(S.D.N.Y. 2012) (“Direct

liability requires ‘volitional conduct’ that ‘causes’ the infringement.”), aff’d sub nom. Wolk v. Photobucket.com,

569 F. App’x 51

(2d Cir. 2014).

Media USA, Inc. v. T&S Software Associates, Inc.,

852 F.3d 436, 440

(5th Cir. 2017).

“To prove direct infringement, a plaintiff must show that . . . [a defendant]

engaged in volitional conduct.” Leonard v. Stemtech International Inc.,

834 F.3d 376

386‐87 (3d Cir. 2016) (internal citations omitted). Many courts, including the

Second Circuit, have clearly understood volition to mean causation. “Netcom and

its progeny direct our attention to the volitional conduct that causes the copy to be

made.” Cartoon Network,

(emphasis added).6 “[D]irect infringement

requires the plaintiff to show causation (also referred to as ‘volitional conduct’) by

the defendant.” Perfect 10, Inc. v. Giganews, Inc.,

847 F.3d 657, 666

(9th Cir. 2017)

(emphasis added) (internal citation omitted).7 When the Fourth Circuit endorsed

Netcom in a case raising the issue whether ownership of a machine used by others

to make illegal copies sufficed to establish direct infringement, it said, “There must

be actual infringing conduct with a nexus sufficiently close and causal to the illegal

6 In light of this assertion, no in banc rehearing is needed to establish that the Second Circuit considers the requirement of volitional conduct to concern causation. 7 Elaborating the point, The Ninth Circuit explicitly disagreed with the suggestion (expressed in

Judge Walker’s opinion) that the meaning of “volition” in the copyright context should be drawn from a dictionary definition: “We wish to emphasize that the word ‘volition’ in this context does not really mean an ‘act of willing or choosing’ or an ‘act of deciding,’ which is how the dictionary defines the term. Volition, Webster’s Third New International Dictionary (1986). Rather, as used by the court in Netcom, it ‘simply stands for the unremarkable proposition that proximate causation historically underlines copyright infringement liability no less than other torts.’ 4 NIMMER § 13.08[C][1].” Perfect 10,

847 F.3d at 666

(citations abbreviated).

copying that one could conclude that the machine owner himself trespassed on

the exclusive domain of the copyright owner.” CoStar Group, Inc. v. LoopNet, Inc.,

373 F.3d 544, 550

(4th Cir. 2004) (emphasis added).8

The Supreme Court’s first intimation of any thoughts concerning causation

as a fact relevant to an infringement claim in the digital age was Sony Corp. of

America v. Universal City Studios, Inc.,

464 U.S. 417

(1984).9 Although the Court’s

opinion does not use the word “volition,” it considered the issue whether the

manufacturer of a home video tape recorder (“VTR” (called “Betamax”)) capable

of producing a copy of a copyrighted video program at the command of a user,

was liable for contributory infringement. Instead of inquiring first whether the

user of a VTR was liable for infringement by making a copy and, if so, whether the

VTR manufacturer was liable as an additional direct infringer or as a contributory

infringer, the Court began its analysis by considering the manufacturer’s possible

liability.

8 Occasionally courts state volition as an alternative to causation, implying that they regard the terms as different concepts. See, e.g., Spanki Enterprises, Inc. v. Telwizja Polska, S.A.,

883 F.3d 904, 912

(D.C. Cir. 2018) (“Several courts have . . .requir[ed] copyright plaintiffs to establish some element of volition on the part of an alleged infringer or some close causal nexus between the alleged infringer’s conduct and the violation of the plaintiff’s rights.”) (emphasis added). 9 For a thorough and enlightening analysis of the Sony decision, see Peter S. Menell & David

Nimmer, Unwinding Sony,

95 Cal. L. Rev. 941

(2007).

Looking to patent law, the Court enlisted the “staple article of commerce”

doctrine, insulating from contributory infringement the seller of a “staple article

or commodity of commerce suitable for substantial noninfringing use,” Sony,

464 U.S. at 440

(quoting

35 U.S.C. § 271

(c)) (emphasis added). Applying that doctrine, the

Court then considered whether VTRs were suitable for such use by examining

what users were doing with them. “Accordingly, the sale of copying equipment,

like the sale of other articles of commerce, does not constitute contributory

infringement if the product is widely used for legitimate, unobjectionable

purposes. Indeed, it need merely be capable of substantial noninfringing uses.”

Id. at 442

This was not an entirely satisfactory standard because any copying

equipment capable of copying copyrighted materials is also capable of copying

public domain materials. But the holding of Sony (more important than the

opinion’s language, as is true of all decisions) is entirely defensible. There was

evidence that many producers of copyrighted video programs favored time‐

shifting in order to expand their viewing audience. See

id. at 424

(“Sony introduced

considerable evidence describing television programs that could be copied

without objection from any copyright holder, with special emphasis on sports,

religious, and educational programming.”). Thus, the Betamax device was not just

capable of recording public domain materials, it was in fact being used to a

considerable extent to make copies of copyrighted materials to which many

The next significant development concerning volition/causation was the

emergence of the bill that, in a modified form, became the Online Copyright

Infringement Liability Limitation Act in 1998, Pub. L. 105‐304, tit. II, § 202(a),

112 Stat. 2860

(Oct. 28, 1998), codified at

17 U.S.C. § 512

. This Act is Title II of the Digital

Millennium Copyright Act (“DMCA Title II”). Although the House Judiciary

Report on that bill stated that it “codifies the result” of Netcom, see H. Rep. No. 105‐

551, pt. 1, at 11 (1998), DMCA Title II, as enacted, is a more elaborate and more

carefully calibrated set of provisions that cannot be said to “codif[y]” the sweep of

Netcom. See 3 NIMMER § 12B.06[B][2][b]. As the NIMMER treatise wisely counsels,

Netcom “should be followed to the extent that Congress deliberately embodied it

into the law, and not followed in the other instances for which Congress chose not

to codify it.” Id. § 12B.06[B][2][c][i] (footnotes omitted).

Pertinent to the law of this Circuit, the next development concerning

volition/causation was the decision of this Court in Cartoon Network. The holding

was unexceptional. At issue was a proposed remote storage digital video recorder

(“RS‐DVR”) system, permitting TV viewers “to record cable programming on

central hard drives housed and maintained by Cablevision at a ‘remote’ location”

and “then receive playback of those programs through their home television sets,

using only a remote control and a standard cable box equipped with the RS‐DVR

software.” Cartoon Network,

536 F.3d at 124

. We ruled that the system operator was

no more liable for direct infringement than the manufacturer of a set‐top VTR. See

id. at 131

; see also Sony,

464 U.S. at 456

(manufacturer of set‐top VTR not liable for

contributory infringement).

I agree with that holding because, for me, Cartoon Network, like Sony before

it, is ultimately about time‐shifting, and it should not matter whether the viewer’s

recorded copy resides in a Betamax VTR device on top of a TV set or in the remote

server of the Cablevision company. Although the opinion in Cartoon Network never

mentions time‐shifting, it described Cablevision’s technology as “akin” to

“traditional set‐top digital video recorders,”

536 F.3d at 123

. What else besides

time‐shifting made the RS‐DVR system “akin” to an ordinary set‐top recorder?

However, there is language in Cartoon Network that I question: “In

determining who actually ‘makes’ a copy, a significant difference exists between

making a request to a human employee, who then volitionally operates the copying

system to make the copy, and issuing a command directly to a system, which

automatically obeys commands and engages in no volitional conduct.”

Id. at 131

(emphasis added). I agree there is a difference, but the stark alternatives posed by

this sentence create the risk that it will be overread to mean that only a human

being who operates a copying system, for example, in a copy shop,10 can satisfy

the volition/causation requirement and render the copy shop liable for

infringement, and that the person or entity that designs and or operates a system

that makes one or more copies when it “automatically obeys commands” cannot

be liable for infringement.11 I am satisfied, however, that Cartoon Network did not

intend to preclude infringement liability for all developers or operators of systems

that automatically make copies upon an individual’s command. The Cartoon

10 The holding of Cartoon Network was that a remote recording system was just as immune from liability as the manufacturer of a set‐top recording device, see

798 F. Supp.2d 1303, 1309

, and any language in Cartoon Network comparing the remote recording system to a copy shop was dicta. 11 For examples of such overreading, see, e.g., Wolk,

840 F. Supp. at 742

(“There is no dispute that

any reproduction, display or transmission of the Plaintiffʹs images by or through the KODAK Gallery website is an automated process with no human intervention by any employee of the Kodak Defendants.”) (emphasis added); Disney Enterprises, Inc, v, Hotfile Corp.,

(S.D. Fla. 2011) (“Finally, the plaintiffs contend that they have alleged a volitional act because they have alleged that hotfile.com makes additional copies once the copyrighted material is uploaded to the server. This argument too fails, for courts have repeatedly held that the automated conduct of software, unaided by human intervention, is not ‘volitional.’ ”) (emphasis added). As one commentator has pointed out, “It is the concerted steps and their consequences, not the accident of whether those steps were executed by humans or automatons, that is the pivot of liability.” Paul Goldstein, 1 GOLDSTEIN ON COPYRIGHT § 7.0.2 (3d ed. Supp. 2013).

Network opinion explicitly identified and left open the question “whether one’s

contribution to the creation of an infringing copy may be so great that it warrants

holding that party directly liable for the infringement, even though another party

has actually made the copy.” Id. at 133.

The risk that our Court would insulate from liability many developers or

operators of systems that automatically caused an infringement at another

person’s command came close to fruition in a challenge to a system that allowed

subscribers, for a fee, to watch over‐the‐air TV programs. A District Court denied

a preliminary injunction against the operator of the system in light of Cartoon

Network. See Broadcasting Cos. v. Aereo, Inc.,

874 F. Supp. 2d 373

(S.D.N.Y. 2012)

(“Aereo I“). The risk increased when a divided panel of our Court affirmed Aereo I.

See WNET, Thirteen v. Aereo, Inc.

712 F.3d 676

(2d Cir. 2013) (Aereo II”).

The risk lessened, however, when the Supreme Court reversed Aereo II. See

American Broadcasting Cos. v. Aereo, Inc.,

573 U.S. 431

(2014) (“Aereo III”). But the

status of systems that automatically caused an infringement at a customer’s

command remained uncertain because the Supreme Court’s majority opinion said

nothing about volition or causation. Instead, Justice Breyer said that Aereo’s

system was functionally the equivalent of a community access television system

(“CATV”) and noted that in the Copyright Act of 1976 Congress had “ma[d]e clear

that an entity that acts like a CATV system itself performs [the copyrighted

works], even if when doing so, it simply enhances viewers’ ability to receive

broadcast television signals,”

id. at 442

, and therefore infringes the performance

right of the owners of the copyright in the performed material, see id at 451. In

dissent, Justice Scalia started from the premise that “[a] defendant may be held

directly liable only if it has engaged in volitional conduct that violates the Act,”

id. at 453

, and concluded that the defendant’s operation of the CATV system “is a

volitional act,”

id. at 456

, “but, as in the case of the copy shop, [the defendant’s]

“degree of involvement is not enough for direct liability.”

Id.

II. Volition as Causation

Once volitional conduct is understood as essentially concerning

causation, the issue becomes how the concept of causation applies in the

context of alleged direct infringement of copyright arising from use of a

defendant’s system or program that automatically makes copies of copyrighted

images at a keystroke by a defendant’s customer. Consideration of that issue

begins with general principles of causation in tort law. “For harm resulting to

a third person from the tortious conduct of another, one is subject to liability if

he . . . knows that the other’s conduct constitutes a breach of duty and gives

substantial assistance or encouragement to the other so to conduct himself.”

RESTATEMENT (SECOND) OF TORTS § 876(b) (“Restatement”). “For harm resulting

to a third person from the tortious conduct of another, one is subject to liability

if he . . . permits the other to act . . . with his instrumentalities, knowing or

having reason to know that the other is acting or will act tortiously.” Id. § 877(c).

Pertinent to the possible infringement liability of the operator of a system

that facilitates automatic copying, the legislative history of the 1976 Copyright

Act recognized that “where the work was infringed by two or more tort feasors

[sic], the bill would make them jointly and severally liable.”12 “There is no rule

of copyright law that would preclude the imposition of direct liability on both

parties [i.e., the system operator and the user].” Denicola, supra, 37 Cardozo L.

Rev. at 1273.13

However, tort law principles of causation do not necessarily apply in the

12 S. Rep. No. 94‐473 at 162 (1975). 13 Denicola cites two examples: “Three Boys Music Corp. v. Bolton,

212 F.3d 477

(9th Cir. 2000) (holding a composer, a music publisher, and a record company liable for infringement of plaintiff’s musical work); Fitzgerald Publ’g Co. v. Baylor Publ’g Co.,

807 F.2d 1110

(2d Cir. 1986) (holding a printer and a publisher liable for infringement of a literary work).” Denicola, supra, 37 Cardozo L. Rev. at 1273 n.116 (italics added).

tortfeasor liability in particular. In addition to assuring protection for the rights

of copyright owners in order to promote creativity, copyright law, especially in

the digital age, must avoid such an expansive regime of protection that

developers of computer programs and system operators are unduly deterred

from making socially useful contributions to widespread access to information.

The caselaw has not yet developed clear principles for determining when

the developer or operator of a system, activated automatically by a user, is

jointly liable with the user for direct infringement. The Fourth Circuit hinted at

a generalized approach for making such a determination when it observed that

the Copyright Act creates liability for “a person who causes in some meaningful

way an infringement.” CoStar Group v. LoopNet, Inc.,

373 F.3d 544, 549

(4th Cir.

2004) (emphasis added). Though in dissent in Aereo III, Justice Scalia also hinted

at a similar generalized approach when he said that the system operator’s

“degree of involvement is not enough for direct liability.” 573 U.S. at 456 (Scalia,

J., dissenting) (emphasis added). In another attempt to approximate the line a

system operator crosses to become jointly liable with a user for direct

infringement, a district court in this Circuit considered whether the operator

shifted “’from [a] passive provider[] of a space in which infringing activities

happened to occur to [an] active participant[] in the process of copyright

infringement,’” Capitol Records, LLC v. ReDigi, Inc.,

934 F. Supp. 2d 640, 657

(S.D.N.Y. 2013) (quoting Arista Records LLC v. Usenet.com, Inc.,

633 F. Supp. 2d 124, 148

(S.D.N.Y. 2009) (alterations in original) (quoting Playboy Enterprises,

Inc. v. Hardenburch, Inc.,

982 F. Supp. 503, 513

(N.D. Ohio 1997))), aff’d,

910 F.3d 649

(2d Cir. 2018).

III. Judge Walker’s Opinion

With these thoughts in mind, I now consider Judge Walker’s opinion in

the pending appeal. I fully agree with many portions of that opinion.

Specifically, I agree that the requirement of volitional conduct must be shown

when there is dispute as to which party or parties caused a direct infringement

and that Aereo III did not abrogate the requirement of such conduct. I also agree

that the copy shop example, which Judge Walkerʹs opinion mentions, illustrates

one situation where volitional/causation conduct is not present, at least as long

as the copy shop merely permits its customers themselves to use copying

machines on the shop’s premises. But care must be taken not to generalize from

that example. That a copy shop is not liable for direct infringement when its

customer makes a copy on a shop’s copying machine does not mean that all

developers and operators of programs and systems are equally immune from

such liability just because the customer selects the item to be copied and

accomplishes the copying at a keystroke without any intervention by an

employee of the developer or operator.

I disagree with Judge Walker’s opinion when it appears to indicate that

all developers or operators of systems that make copies, at a customer’s

keystroke command, of copyrighted materials selected by the customer should

be insulated from direct liability for infringement. Selection by the customer

may well be relevant to determining whether system developers or operators

share direct liability with a customer, but is not necessarily determinative.14 In

any event, there is no need to make any definitive ruling on the significance of

selection at this stage of the pending litigation.

I agree with Judge Walker when he says that “[a]n ISP acts volitionally when

it creates a program designed to infringe copyrighted material,” but I reject the

arguable implication of this language that an ISP acts volitionally only when it

creates a program designed to infringe copyrighted material. Judge Walker’s

Justice Scalia’s emphasis on selection of copyrighted material as a key indicator of the party 14

engaging in volitional conduct, as well as his entire analysis of volitional conduct, was expressed in dissent in Aereo III, see 573 U.S. at 454, and did not establish the position of the Supreme Court.

opinion cites EMI Christian Music Group, Inc. v. MP3tunes, LLC,

844 F.3d 79

(2d Cir.

2016), but MP3tunes (as it is generally cited) did not say that the defendant’s

program was designed to infringe copyrighted material. It said that the jury could

have found that the defendant’s program “was designed to facilitate

infringement,”

id. at 94

(emphasis added), an easier standard for an infringement

claimant to meet than “designed to infringe.”15 Furthermore, the principal issue in

MP3tunes was whether an ISP “adopted and reasonably implemented” a policy to

terminate “repeat infringers” so as to qualify for a safe harbor protection of the

DMCA,

15 U.S.C. § 512

(i)(1)(A), that shields it from liability for infringing acts of

its customers. See MP3tunes, 844 F.3d at 88‐91. The panel deciding MP3tunes had

no occasion to decide whether the defendant was liable for direct infringement

and did not purport to do so. Indeed, a requirement that a developer of a program

or an operator of a system or would be liable for directly infringing copying only

if its system or program was designed to copy copyrighted material would make

no sense because any program or system capable of copying copyrighted material

15 The only other use of the word “designed” in MP3tunes is the following sentence: “MP3tunesʹs employees testified that the companyʹs LockerSync system was designed to retrieve one aspect of a copyrighted work (the album art) whenever a user uploaded another aspect of a copyrighted work (the song).”

.That observation was not offered as a requirement for infringement.

could also copy material in the public domain.16 After all, Sony exonerated the

Betamax manufacturer from liability only after determining that “a significant

number” of uses of the device were noninfringing, not all uses. Sony,

464 U.S. at 442, 444

I do not entirely agree with Judge Walker when he says, again citing

MP3tunes, that “the volitional conduct requirement is not satisfied when an ISP

simply displays user‐uploaded images.”17 This statement is no doubt true in

some circumstances but not necessarily true in all circumstances. For example,

in Capitol Record, LLC v. ReDigi Inc.,

910 F.3d 649

(2d Cir. 2018), where the

customer of a developer of a system for reselling lawfully purchased digital

music files “cause[d]” a file of purchased music to be transferred to the

developer’s remote server, see

id. at 653

, we held that the receipt and storage of

the file on the developer’s server involved the making of an infringing copy, in

that case, a new phonorecord, see

id. at 657

, which rendered the developer liable

for violating the reproduction rights of the holder of the copyright in the music.

See

id. at 659

16 Perhaps “designed to copy” copyrighted material is intended to mean “designed for the purpose of copying” such material or even “designed for the principal purpose of copying” such material. 17 For support, Judge Walker again cites Cartoon Network, which, as discussed above, held only that

a defendant maintaining a remote recording device, used for time‐shifting, was as insulated from liability as the manufacturer of a set‐top recording device.

Finally, I do not agree with Judge Walker’s conclusion that “Polyvore

cannot be liable for direct copyright infringement for designing the Clipper[18]

to simply retrieve photos picked out by users from other websites (before

Polyvore makes other copies).” In view of the remand for further factfinding,

which our judgment orders, it is at least premature to rule at this point whether

Polyvore can be liable for designing the Clipper, and such a ruling might be

incorrect. It is arguable that Polyvore has given “substantial assistance,”

Restatement § 876(b), to its customers to make copies of copyrighted

photographs and has permitted its customers to act with its

“instrumentalities,” id. § 877(c) knowing that they “will act tortiously,” id. It is

also possible that Polyvore could reasonably be found to know that its Clipper

tool would be used to search for photos of celebrities appropriate for

embellishment with the addition of such items as clothing, hair styling, and

jewelry, and that a considerable number of such photos would be copyrighted.

And, unlike the owner of a copy shop, Polyvore maintains a continuing

relationship with its customers. I prefer to withhold any ruling as to direct

infringement until the District Court responds to our remand, and only then

18 The Clipper is a key component of Polyvore’s system.

face the vexing issue of what factors should determine whether the developer

of a program or the operator system is jointly liable with its customer for

causing direct copyright infringement and whether Polyvore’s system crosses

the line.

With these reservations, I concur in the result.

Rosemary S. Pooler, Circuit Judge, concurring in the result.

I concur in the result but write separately to emphasize the context and

consequences of this case. To this effect, the Electronic Frontier Foundation, as

amicus curiae, urges that such a website design as Polyvore’s a) automatically

generates copies of images in different sizes to allow users to view the images on

various devices, and b) is “routine” and “very common [among] Internet

technologies.” Amicus Br. at 13‐14, Dkt. No. 87.

Regardless whether the volitional conduct requirement is properly

understood as a causation requirement, as Judge Newman urges and Judge

Walker disputes, the question will boil down to whether Polyvore is sufficiently

tied to the act of copying for direct infringement liability to attach. Accordingly, I

have strong line‐drawing concerns with Judge Walker’s framing of volitional

conduct: “an ISP does not act volitionally when it automatically makes a single

copy in response to a user’s request,” but “ISPs that provide additional

unrequested copies . . . in response to a user’s request for a single copy . . . may

be liable.” There is no basis to conclude that “additional unrequested copies” are

of any significance when a machine is simply a passive agent. For instance, in

MP3tunes, the system was designed to seek out the copyrighted material—album 2

cover art which matched the user’s songs. EMI Christian Music Grp., Inc. v.

MP3tunes, LLC,

844 F.3d 79, 96

(2d Cir. 2016). The user had not requested, much

less supplied, any of the copyrighted material. See