Second Circuit Judges Brawl Over the Meaning of “Volition” in Copyright Cases–BWP v. Polyvore

12-AM-300x94This is an appeal of a summary judgment ruling in favor of Polyvore, an image clipping and sharing site, also known as a “mood board” app. (The site itself was acquired and, as the court notes, is now shut down.)

BWP asserted direct and secondary infringement claims. BWP conducted minimal discovery. As the court notes, it took no depositions. In response to Polyvore’s motion for summary judgment, BWP made several arguments regarding Polyvore’s extent of copying images, and steps taken in the process. It relied on evidence consisting of a spreadsheet created by BWP’s counsel. The spreadsheet listed images that were reproduced in various sizes (some nine times). In other words, BWP’s counsel testified that he or she observed various images reproduced several times and accessible via Polyvore. However, the images were not the ones at issue in the case. The district court granted summary judgment on all claims.

The second circuit reverses in a per curiam opinion, followed by three separate concurrences.

The per curiam opinion: The 11 sentence per curiam opinion does not provide any rationale for the reversal, except for the following:

there was a dispute of material fact regarding whether Polyvore created multiple copies of BWP’s photos that were not requested by Polyvore users.

The ruling also asks the district court to file its “response” directly with the appeals court (within 60 days of the order). This is an odd procedure I hadn’t previously seen before.

Judge Walker’s Opinion: Judge Walker says the volitional conduct requirement is live and well. He agrees with the district judge that Polyvore did not evince copyright volition when it designed its site, and an initial copy of a user-uploaded image does not satisfy the volitional conduct requirement. However, he says BWP produced sufficient evidence to raise a fact question about whether Polyvore made “additional copies”. He then takes a detour to talk about the merits of Judge Newman’s concurrence: understanding the volitional conduct requirement as a causation-based concept.

Judge Walker also addresses the availability of Polyvore’s DMCA defense. BWP argued that Polyvore wasn’t entitled to DMCA protection because (1) it altered image metadata and thus interfered with a “standard technical measure” and (2) the images were not stored at the direction of the user. Judge Walker  dismisses the first argument, saying that BWP didn’t provide any persuasive evidence that metadata is part of a standard technical measure to prevent infringement. He dismisses as having low evidentiary value things like a working group white paper that BWP cites. However, he says that there is a factual dispute as to whether the copies of the images (that BWP says were made) were made at the direction of the user. He then places the evidentiary burden on Polyvore to explain “why these copies were made” .. that is, “assuming” they were made at all!

Finally, he also has harsh words for BWP. Its actions are suggestive of a trolling operation (i.e., it “has a business model that involves abusing the . . . courts”). Nevertheless, despite his feelings towards the litigant, his interpretation of the law compels reversal of summary judgment.

Judge Newman’s Opinion: He starts by focusing on a possible ray of hope on remand. The question is whether the evidence supplied by BWP in opposition to summary judgment regarding images not at issue allows an inference regarding Polyvore’s practices regarding the images in question. He then goes on at generous length (14 pages!) about his views on volitional conduct. He also engages directly with Judge Walker’s thoughts on volitional conduct. I think they’re somewhat disagreeing over the role of a system’s design in determining whether there is volitional conduct on the part of a platform. Specifically, he’s unable to join in Judge Walker’s conclusion that there’s nothing volitional from a copyright standpoint in the design of Polyvore’s system.

Judge Pooler’s Opinion: She seems more tied to Judge Walker’s camp and appears less concerned generally about the effect of multiple copies. If the machine is passive, what’s the difference between one and several images?


FAIR WARNING: this is a tough opinion to get through. The opinion lacks utility for the parties and the trial judge, not to mention others reading it to try to get a sense of the law. The extreme lack of agreement among the judges in the opinion may be the best and easiest argument for rehearing.

I’m curious to see what the district court does. Perhaps it can focus on the evidentiary issue and simply say that if the plaintiff doesn’t have evidence as to the particular images at issue, then that’s its problem. From an evidentiary standpoint, in resisting summary judgment, can a copyright plaintiff simply rely on a spreadsheet supplied by counsel saying counsel observed images reproduced by the defendant? Is this competent evidence? That does not seem right to me, but none of the judges saw an issue with this or focused on it at all.

Judge Walker’s opinion seems clunky in a few ways:

  • he holds BWP to a very low standard of proof when it comes to showing that multiple copies were actually made
  • he holds BWP to a much higher standard when it comes to the status of metadata as a standard technical measure
  • he places the burden on Polyvore to provide evidence regarding the extent of copying while acknowledging the record doesn’t contain any evidence regarding whether Polyvore made extra copies in the first place

Maybe they’re all really arguing about the burden of proof, but that sure is not expressed simply and clearly in the opinions.

Interestingly, the court notes in a footnote (via amicus) that the multiple images at issue were likely made to make the images visible on different types of devices.

The entirety of the discussion between Judge Walker and Judge Newman feels like dicta. Depending on what the district court judge does, it may not be relevant at all anyway.

I’m probably stating the obvious, but a volitional conduct case in this setting will likely find itself in front of the Supreme Court sometime soon.


Eric’s Comments: This set of opinions is a fucking mess. No, literally: the final version of Judge Newman’s opinion retains some of the redlining. But the mess is metaphoric, too. Whenever a 3 judge panel produces 3 different opinions, you know something has gone seriously wrong.

In some sense, this doctrinal fracturing was inevitable. The Second Circuit’s Cablevision opinion introduced the “volition” requirement without defining it, so “volition” became a placeholder for lots of potential interpretations. Predictably, jurisprudential anarchy ensued. The Ninth Circuit seemingly cleaned this issue up in Perfect 10 v. Giganews when it equated “volition” with “proximate causation,” though “proximate causation” is another term of false precision that actually lacks any precision. Here, Judge Walker–invoking his status as author/daddy of the Cablevision case–tries to resurrect its legacy by emphatically rejecting that volition and proximate causation are the same. Judge Newman doesn’t agree, and apparently neither does the Ninth Circuit.

Now what? I have no fucking idea what “volition” means and when a court should conclude it’s absent. So I think this case is a fantastic candidate for en banc review. Without better guidance from the Second Circuit, the district court judge can’t do anything with this opinion, and no other judges will find anything actionable in this opinion.

More generally, this case illustrates why DMCA-related opinions routinely go to shit and become functionally unbloggable. From this ruling, we got 66 pages of dense judicial-ese that, in the end, tells us precisely nothing helpful. The appellate panel says Polyvore could have had volition, but we don’t know; the DMCA could apply to Polyvore, but we don’t know; and BWP waived the secondary claims, so we don’t know anything about those doctrines either.

[Props to Venkat for doing the main work on blogging this case. If I were up to me, I probably would have thrown up my hands in disgust and waited for a more resolute opinion in the case.]

As Venkat notes, Judge Walker does have some stinging words for BWP: “the fact that BWP filed a lawsuit before simply asking Polyvore to take its images down suggests that BWP has a business model that involves abusing the federal courts.” FFS, next time, just send fucking takedown notices, wilya? We’ll all benefit by avoiding 66 page-long legal purgatories that cost lots of money just to leave us in limbo.

Meanwhile, Polyvore has already been knocked out of the marketplace, so what wins are still available to it any more?

BONUS FROM ERIC: VHT, Inc. v. Zillow Group, 2019 WL 1216206 (9th Cir. March 15, 2019)

Though not cited by the BWP court, the Ninth Circuit’s VHT v. Zillow ruling covers very similar ground, including a reiteration that volition = proximate cause. The court says:

Zillow did not engage in volitional conduct necessary to support a finding of direct liability. The content of the Listing Platform is populated with data submitted by third-party sources that attested to the permissible use of that data, and Zillow’s system for managing photos on the Listing Platform was constructed in a copyright-protective way. The feed providers themselves select and upload every photo, along with the evergreen or deciduous designations, that wind up on the Listing Platform. As a result, the photos on the Listing Platform were not “selected” by Zillow. Nor did Zillow “exercise[] control” over these photos beyond the “general operation of [its website].” Zillow required feed providers to certify the extent of their rights to use each photo. Consistent with these designations, Zillow’s system classified each photo as deciduous or evergreen and programmed its automated systems to treat each photo consistently with that scope of use certified to by the third party.

Further, when multiple versions of the same photo were submitted through the various feeds, Zillow invoked its copyright-protective “trumping” rules. For example, one rule might prefer a photo provided by an agent over one provided by a multiple listing service, and another might prefer a local broker to an international one. Zillow used a rule that gave preference to photos with evergreen rights over photos with deciduous rights in the same image. As the district court recognized, “trumping” is a reasonable way to design a system to manage multiple versions of the same photo when the authorized use varies across versions. These rules, along with other features of the system, facilitate keeping the photos with evergreen rights on the website and removing the photos with deciduous rights once a property has sold. Thus, Zillow actively designed its system to avoid and eliminate copyright infringement….

A “personal board” is a bespoke digital bulletin board of images that a user saves or uploads from the Listing Platform. Users can also upload their own images. These boards are typically private, though users can share a link to their boards. When a user saves a copy of an image with evergreen rights to a personal board, that image automatically joins a queue for review by a Zillow
moderator. The moderator then decides whether to designate the photo for tagging so that it can be searchable on Digs, and thus select it for public display. Not all photos that are in the queue for moderation are reviewed. Additionally, in some instances, a user starts but does not finish the process of saving an image to this board. Beginning in 2014, Zillow programmed these “clicked to save” images—called “Implicit Digs”—to enter the queue for moderator review in the same manner as if the photo had been saved to a personal board.

According to VHT, the jury could have found that Zillow “caused the [2,093] images to be displayed . . . by subjecting the non-searchable VHT Photos to the potential for moderation.” This argument defies logic because the only display that occurred was triggered by the user. Any potential for future display is purely speculative. As the district court explained, the possibility that images might be moderated and tagged—conduct that is volitional—is not sufficient “to transform Zillow from a ‘passive host’ to a ‘direct[] cause’ of the display of VHT’s images.”…

Following Giganews, we conclude that Zillow’s automated processes storing or caching VHT’s photos are insufficiently volitional to establish that Zillow directly infringed VHT’s reproduction and adaption rights in these non-searchable photos. Unlike photos that Zillow curated, selected, and tagged for searchable functionality—activities that amount to volitional conduct establishing direct liability—these 2,093 photos were copied to “personal boards” and “Implicit Digs” based on user actions, not the conduct of Zillow or its moderators…

Additionally, Zillow’s behind-the-scenes technical work on Digs photos is not evidence that Zillow “selected any material for upload, download, transmission, or storage.” Zillow produced cached copies of these Digs images, a process that automatically trims or pads images whose height and width did not match the target resolution, for the purposes of accelerating website speed. This activity does not amount to volitional conduct. Nor can Zillow’s promotion of Digs, including encouraging users to share photos through its site, be seen as “instigat[ing]” user copying.

Zillow’s conduct with respect to these photos amounts to, at most, passive participation in the alleged infringement of reproduction and adaption rights and is not sufficient to cross the volitional-conduct line….

In the fair use discussion, there’s some bizarre distinctions between external search engines like Google, internal site search engines, and Google Books search. There’s also some interesting discussions about contributory and vicarious copyright infringement. Finally, the court rejects a willfulness determination because:

The notion that Zillow failed to take appropriate responsive measures after receiving this notice is belied by the record. Zillow immediately requested information to confirm VHT’s copyright ownership and cross-reference the photos with licensing information. VHT was not forthcoming with that information. Rather, in response, VHT offered merely an unsigned form contract. Instead of providing helpful information, VHT then filed suit. Given the limited information provided by VHT, Zillow could not reasonably be expected to have promptly and unilaterally removed each flagged photo.

Case citation: BWP Media USA Inc. v. Polyvore, Inc., 12 Civ. 7868 (2d Cir. Apr. 17, 2019)

Related Blog Posts on BWP:

Revisiting If Suing Bloggers For Copyright Infringement Can Be Profitable–BWP v. Mishka
Sideloading Service Defeats Copyright Infringement Claims–BWP v. Polyvore
512 Safe Harbor Applies to Content Submitted By Independent Contractors–BWP v. Examiner
DMCA 512(c) Formalities Strike Again–BWP v. Hollywood Fan Sites
Lawsuit Over User-Posted Celebrity Photos Survives Dismissal–BWP v. Hollywood Fan Sites