March 24, 2011
Photo Hosting Site Gets DMCA 512 Safe Harbor--Wolk v. Photobucket
By Eric Goldman
Wolk v. Kodak Imaging Network, Inc., 2011 WL 940056 (S.D.N.Y. March 17, 2011)
Wolk (is this her?) is a visual artist whose work was allegedly infringed on Photobucket. She sent some 512(c)(3) takedown notices to Photobucket, which were promptly honored. At some point, it appears that she tired of sending 512(c)(3) notices, so she took the position that she didn't need to send any more--the prior notices had sufficiently put Photobucket on notice to guard against future infringements. The court summarizes her position: "Plaintiff contends that Photobucket is now aware that her copyrights are being infringed on its site, and it must now police its sight [sic] to uncover current infringements and prevent future infringements, without her providing DMCA-compliant notice in each instance." She felt strongly enough in this reading to litigate the issue pro se.
Her (mis)reading of the statute meets a predictable fate. The ruling itself doesn't break much new ground--although it has some rare discussion about 512(j) injunctions--but its routine nature makes the ruling remarkable. A sufficient body of defense-favorable 512 rulings have developed (in particular, this case repeatedly cites Io v. Veoh and Viacom v. YouTube) that the court treats this litigation as a fairly easy and routine case. Given how many tortured 512 rulings we've seen, this opinion is a refreshingly uncomplicated read.
The court guts Wolk's basic argument as follows:
The requirement that DMCA-compliant notices identify and locate specific acts of infringement undermines Plaintiff's position, as her past notices do not identify and locate other, and future, infringing activity. The Court does not accept her invitation to shift the burden from her to Photobucket....Without receiving notices identifying and locating each instance of infringement, Photobucket did not have "actual knowledge" of the complained of infringements or "aware[ness] of facts or circumstances from which infringing activity is apparent."
The court reiterates its rejection of Wolk's desired burden-shift later in the opinion:
Plaintiff contends that failure to grant her relief will require her to find infringing activity on Photobucket's site and report it to them through DMCA-compliant notices. She contends that this will be difficult and labor intensive. However, the purpose of her motion is to shift that same burden to Photobucket, without Photobucket having the benefit of knowing whether Plaintiff has authorized any of her works to be displayed on its site. While, as Plaintiff points out, Photobucket is the larger enterprise, the burden it would bear in having to continually search its site for infringing activity is heavy. Furthermore, saddling Photobucket with this responsibility is out of step with the DMCA, which, as noted above, places the burden of uncovering infringing activity on copyright holders.
Wolk tried to kick Photobucket out of the safe harbor by arguing that Photobucket could set up technological filters, presumably fingerprinted on the photos she had already identified as copyright infringing. The court rejects the argument because "Plaintiff concedes that such technology is very burdensome to implement and notes Photobucket's contention that it would not be feasible to use such technology." The court also says Photobucket doesn't derive financial benefit from the infringement, even though it has a financial tie-in with Kodak. The court says that tie-in doesn't turn on the infringing nature of the photos.
The court also discussed 512(j) injunctions. I did a quick Westlaw search and I found less than 10 cases citing 512(j) at all, and I believe none of them have ever done more than cite the statute. This court doesn't get into lots of detail, but this is the most detailed judicial discussion of 512(j) to date.
512(j)(1)(A)(i) authorizes an "order restraining the service provider from providing access to infringing material or activity residing at a particular online site on the provider's system or network." The court interprets this to mean that "Photobucket [must] block access to infringing material when given proper notice"--in other words, if the service provider hasn't already honored the 512(c)(3) takedown notice, a court can force it to do so. Here, since Photobucket had honored Wolk's 512(c)(3)-compliant notices, there wasn't anything to order Photobucket to do.
512(j)(1)(A)(iii) is a "catch-all" authorization for "Such other injunctive relief as the court may consider necessary to prevent or restrain infringement of copyrighted material specified in the order of the court at a particular online location, if such relief is the least burdensome to the service provider among the forms of relief comparably effective for that purpose." Because the language references "a particular online location," which is what Wolk refused to provide, the court says her requested relief falls outside this provision.
Considered together, the court's interpretation of (i) and (iii) indicates that copyright owners can't effectively force service providers to prospectively prevent further infringement of a work previously subject to a 512(c)(3) takedown notice. Because we don't often discuss 512(j), I don't know how many copyright owners actually thought they could get such an order. Nevertheless, this is a useful boundary-setting for service providers when dealing overzealous copyright owners who want turnkey never-infringe-my-stuff-again services.
Overall, the lessons remain fairly clear for copyright owners. Send 512(c)(3) takedown notices, and you'll get the results you want from most service providers; but if you're trying to find a way to avoid sending 512(c)(3) takedown notices, the courts aren't going to be very sympathetic.
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