June 25, 2014


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by Nancy Wolff, PACA Counsel

Wolk v., No. 12–420–cv., 2014 WL 2723035, (2d. Cir. June 17, 2014)

On June 17th, the U.S. Court of Appeals for the Second Circuit affirmed a 2012 decision from the Southern District of New York absolving, an internet photo-sharing service from violating Sheila Wolk’s copyright in her fantasy images paintings.  Many of Wolk’s works were copied, stored, and printed by Photobucket users without Wolk’s authorization.  Photobucket permits users to house and display images and video on the site for free, and the site generates revenue through web advertising and photo printing.  Each item hosted on the site is given a unique internet addresses (URLs) through which users can access that particular content.  At the time of the 2012 decision Photobucket already hosted more than 9 billion images.  Lacking the staff to sift through each photo, Photobucket’s policy is to rely on the safe harbor provisions of Digital Millennium Copyright Act (“DMCA”) and leave the responsibility of policing for infringement up to the copyright owner.  Then, if and when an individual finds an infringement on the site, he or she can request that Photobucket remove the work in accordance with the take down provisions of the DMCA which provides notice to ISP’s of infringing content on the site, including location so the ISP may remove the material.

Between 2008 and 2010 Wolk found numerous infringements of her work on Photobucket, and requested that the site remove each unauthorized use.  The site removed each of the infringements for which Wolk supplied a completed copyright takedown request.  Although most of the infringing works had been removed, Wolk sued Photobucket for copyright infringement, purporting that the site did not do enough to prevent these infringements from appearing on the site.  The Southern District court found that Photobucket’s policies and the methodology the site used to protect against infringement allowed the site to qualify for protection under the “safe harbor” exclusion of the DMCA, insulating it from liability resulting from the infringement of Wolk’s art.

The court found that the “safe harbor” provision of the DMCA, codified as a part of the federal Copyright Act, was enacted to protect internet service providers and websites from this very type of liability issue.  With the growth of the internet, sites are often unable to police ever corner of the web looking for copyrighted material.  To qualify for the “safe harbor” protection, a service provider (1) must have no actual knowledge of an infringement, (2) must not be aware of circumstances which would make infringement apparent on the site, and (3) upon gaining actual knowledge of the infringement must work expeditiously in order to remove the infringement.  Additionally, to qualify for these “safe harbor” protections a service provider must have must have adopted, and effectively established a termination policy for repeat infringers.  The service provider must also not interfere with the ability of a copyright owner to find, identify, and protect their works.  The district court found that Photobucket had satisfied each necessary requirement.  Consistent with their corporate policy, Photobucket was not required to search out and remove all infringing works, but rather the site was only required to remove infringements of which they were made aware.

Unhappy with the district court’s verdict, Wolk’s appeal focused on the contention that the lower court had erred in finding the “safe harbor” protections were available to Photobucket.  However, there is no evidence from the opinion that Wolk brought forward any additional evidence to support that claim upon appeal.  As such, the court of appeals agreed with the prior ruling, and held that Photobucket is protected under the “safe harbor” defense.  The court placed the yolk of responsibility for protecting copyright squarely on the shoulders of the copyright owner, and not the service provider.

This decision is consistent with most cases reviewing the responsibility of services providers to assist content owners in limiting infringing content on their sites.  The notice and takedown requirements of the DMCA have led many content owners to liken it to a game of “Whack-A-Mole”.  No sooner after you send a takedown notice, the same material is reposted by another user.  In recent Congressional hearings in which various provisions of the Copyright Act are being reviewed, some are calling for a revision of the DMCA in which the work would stay removed after notice, even if another user reposted the same content, without requiring an additional notice, referred to as “notice and stay down”.  This will require ISPs to maintain records or filter for infringing content. Testimony from large ISPs  assert that the system works fine now and ISPs are resistant to any further obligations, particularly since case law has supported the hands-off approach.  For now, it’s clear that the copyright owner has the burden to continually monitor the Internet for infringing material.