Sideloading Service Defeats Copyright Infringement Claims–BWP v. Polyvore

BWP Media is a celebrity photo agency and a repeat online copyright plaintiff. Polyvore is…well, I don’t really get what they do. They say the site “is a new way to discover and shop for things you love in fashion, beauty and home decor” and they mention “social commerce,” whatever all that means. I don’t think I’m in the target audience.

Polyvore apparently enables its users to sideload photos as they browse the Internet. The term “sideload” doesn’t appear in the opinion, but the court’s opinion and Polyvore’s own description point strongly to sideloading. So a user of Polyvore’s “Clipper” tool can designate photos that are automatically loaded into Polyvore’s database and added to the user’s profile, where the user can further manipulate the photos. BWP claimed that Polyvore’s database contained at least 79 BWP photos.

The court says it doesn’t need to address the DMCA safe harbors. Instead, BWP’s case fails on the prima facie elements.

Direct infringement. The direct copyright infringement claim fails because Polyvore lacks volition. The court says:

Applying Cablevision and its progeny [including Smith v. BarnesandNoble and Wolk] here, no reasonable juror could find that Polyvore acted volitionally….nothing in the record suggests that Polyvore’s Clipper tool was designed specifically to infringe anyone’s copyright interests….[The Clipper tool] allows users to clip images from anywhere, not locations that display only copyrighted material.

BWP argued that the DMCA safe harbors preempted any prima facie element of volitional conduct. The court rightly responds that the DMCA safe harbors only added bonus defenses. BWP also argued that Aereo negated a volitional defense, but the court distinguishes Aereo because “although Polyvore provides equipment–namely, the Clipper tool and Polyvore’s web platform–it is Polyvore’s users who select the content (which may or may not be copyrighted) to be uploaded and displayed.”

Secondary infringement. The secondary liability claims don’t do any better. Like the recent Hydentra v. Luchian ruling, the court rejects contributory liability due to the “Sony-Betamax rule” because Polyvore’s system is capable of non-infringing uses. We’ve now seen two recent opinions cite Sony to dismiss contributory claims against online service providers; are courts resurrecting the Ninth Circuit’s pre-Supreme Court Grokster holding?

The vicarious infringement claim fails because the record doesn’t contain evidence of supervision/control of users, any “causal relationship” between infringement and financial benefit, or the site drawing users because of infringing content. The inducement claim similarly fails due to lack of record evidence.

Fee shift. While it’s a clean sweep for Polyvore on liability, the court denies a 505 attorney fee shift. Citing the recent Kirtsaeng Supreme Court ruling, the court says BWP’s arguments were not objectively unreasonable or frivolous (as partially evidenced by the complaint having survived a motion to dismiss–does this imply that defendants won’t get fee shifts unless they win a motion to dismiss?). Plus, while BWP could have been more diligent with discovery, the court saw no evidence of bad faith or misconduct.


Like the Hydrenta decision, the defense won without relying on the DMCA safe harbors. While the DMCA safe harbors play an essential role in managing copyright liability exposure, it’s nice to see that default law provides some protection even if the DMCA safe harbors aren’t available for whatever reason. Furthermore, we’ve seen a deep and perhaps surprising entrenching of the “volitional” defense post-Aereo. As this case illustrates, it’s a major defense that does a lot of doctrinal work that people thought were the role of the DMCA safe harbors.

The case’s rulings echo the uncited 2012 Seventh Circuit myVidster case, which dealt with video instead of photos. That case left open the possibility that users initiating sideloading could be direct infringers, a topic not addressed in this case.

This is another painful loss for BWP, following its loss in the Examiner case. The court does not have kind words to say about BWP’s litigation tactics, denigrating its anemic discovery which provided the court with a thin evidentiary record; as well as the fact that its summary judgment papers didn’t argue secondary liability at all. I wonder if BWP’s litigation strategy is working out the way it had hoped?

Case citation: BWP Media USA Inc. v. Polyvore, Inc., 2016 WL 3926450 (SDNY July 15, 2016).

Bonus Hidden Track: Between 2013 and 2015, a number of 512/secondary liability cases slipped off my blogging queue. One of those was another case involving Polyvore, also uncited by this court: Sarvis v. Polyvore, Inc. It’s a messy case, so here’s a few highlights about it.

I see three opinions addressing Polyvore’s motions to dismiss from 2013 (2013 WL 4056208 (D. Mass. Aug. 9, 2013)), 2014 (2014 WL 2957720 June 30, 2014) and 2015 (2015 WL 1387928 March 25, 2015). In the latter ruling, the court adopts the magistrate’s second set of recommendations (which I haven’t seen or linked to) and summarizes the case as follows:

Drawing all reasonable inferences in Plaintiff’s favor, the Amended Complaint alleges, in essence, that Defendant maintains a large database of images, “particularly copyrighted images”[1]; that the CEO of the company has personally committed, at a minimum, several instances of copyright infringement using Defendant’s website; that the CEO is aware of some other instances of copyright infringement on the website in light of her personal participation in one section of the website; that Defendant, at the conclusion of a contest supported by outside sponsors, takes possession and control over the contest winner’s set of images and publishes this set on its website; that, in at least one instance, Defendant published a winning set, which included a copyrighted work; and that Defendant’s website contains tools enabling the removal of copyright watermarks, the clipping of images, and the display or enlargement of images in its database, including copyrighted images.

On these allegations, the Court agrees with Magistrate Judge Bowler’s careful analysis that Plaintiff has stated claims for direct, contributory, and induced infringement.

Polyvore then sought a motion for judgment on the pleadings, but in August 2015, the magistrate issued what appears to be a third set of recommendations and rejected the motion (2015 WL 5934759 Aug. 24, 2015). Sarvis is enforcing copyrights created by Sheila Wolk, the litigant against Photobucket. Polyvore argued that Sarvis lacked standing because he obtained Wolk’s copyrights via a security agreement, and Wolk can take the copyrights back by paying off the debt (or $1k) to Sarvis. Reading the assignment agreement’s provisions, the court says Sarvis has full ownership rights, so the court can distinguish the case from Righthaven v. Hoehn.

On the plus side, the magistrate rejected Sarvis’ motion for judgment on the pleadings. The judge again adopted all of the magistrate’s recommendations (2015 WL 6182226 Sept. 14, 2015).

I’m not sure what doctrinal lessons to draw from this case so far, but it stands out that Sarvis is battling–pro se–Polyvore’s defense team of FOUR Gibson Dunn attorneys and two local New York counsel, yet Polyvore hasn’t shaken much of the case after three years of litigation and a lot of attorneys’ fees. Oof.