Twitter’s Potential Secondary Liability

Cross-posted on the Copyhype blog.

Last week, Seattle-based photographer Christopher Boffoli sued Twitter in the U.S. District Court for the Western District of Washington for contributory copyright infringement. Boffoli is well-known for his “Disparity Series,” which according to the complaint is “a series of art photographs featuring miniature figures in whimsical poses on fruit.” Seattle Magazine has a brief article about the series. Boffoli’s case was also a topic of discussion on the most recent episode of “This Week in Law” (where Terry Hart was a guest).

In the complaint, Boffoli alleges that Twitter users uploaded several of his copyrighted photographs without license or permission and then linked to them in various tweets. Some images were hosted on Twitter’s own servers, while others were hosted on servers operated by third-parties. Boffoli claims that even though he sent four DMCA takedown notices to Twitter’s registered agent for receiving such notices, none of the hosted links or images were removed.

As such, Boffoli alleges that Twitter is liable for willful contributory infringement because (1) it had actual knowledge of infringement provided by his DMCA takedown notices, and (2) it materially contributed to the underlying infringements by Twitter’s users.

Ars Technica and Techdirt ran articles about the lawsuit last week. Both pointed out that Twitter’s failure to respond to the DMCA takedown notices doesn’t necessarily mean that the service provider is liable for infringement. That much is true, but it was also suggested in both articles that Twitter wasn’t likely to be liable for infringement despite its failure to remove the links and images complained of. It’s that notion that I’ll examine more closely.

DMCA Notice-and-Takedown

The DMCA1 notice-and-takedown provisions are no doubt familiar. Title II of the DMCA, titled the “Online Copyright Infringement Liability Limitation Act,” created Section 5122 of the Copyright Act—what people often are referring to when they talk about the “DMCA,” even though it’s only one part. It’s here that the notice-and-takedown provisions are found. The idea is simple: A copyright owner who finds infringing material on a service provider’s system sends notice to the service provider who then takes it down.

The “DMCA did not simply rewrite copyright law for the on-line world,” but rather, “it crafted a number of safe harbors which insulate ISPs from most liability should they be accused of violating traditional copyright law.”3 The DMCA uses a classic carrot-and-stick approach to get service providers to play along. The carrot of limited liability within the safe harbors is enforced by the stick of full liability without. This “preserves strong incentives for service providers and copyright owners to cooperate to detect and deal with copyright infringements that take place in the digital networked environment.”4

When a third-party user stores material on a service provider’s system, the provider’s potential copyright liability is greatly reduced if it “responds expeditiously to remove, or disable access to,” the material upon notice that it “is claimed to be infringing or to be the subject of infringing activity.”5 Thus, to moor in the safe harbors, a service provider must quickly take down allegedly infringing material when notified. Once in the safe harbors, a service provider is only potentially liable for limited injunctive relief—it’s not potentially liable for monetary relief as it would be otherwise.

A common misperception is in thinking that a service provider that qualifies for the safe harbors cannot be liable for infringement. The DMCA itself is irrelevant to determining whether the service provider is an infringer. The safe harbors limit liability, but they “do not affect the question of ultimate liability under the various doctrines of direct, vicarious, and contributory” infringement.6 After it’s determined that a service provider is an infringer in the first place, the safe harbors can be used to assess the extent of the liability. Although as a practical matter, courts usually start with the analysis of the safe harbors first.7

Nor does the fact that a service provider fails to qualify for the safe harbors necessarily mean that it is liable for infringement. Such a service provider “is still entitled to all other arguments under the law—whether by way of an affirmative defense or through an argument that conduct simply does not constitute a prima facie case of infringement under the Copyright Act.”8 This make sense because the material complained of may not even be infringing or the service provider may qualify for some defense. Just because its liability isn’t limited by the safe harbors, it doesn’t mean that the service provider is liable in the first place.

Immunity under the safe harbors is not presumptive, and it’s only granted to service providers who do not have knowledge, either actual or constructive, of infringement. The “DMCA’s protection of an innocent service provider disappears at the moment the service provider loses its innocence, i.e., at the moment it becomes aware that a third party is using its system to infringe.”9 One common way to alert a service provider of infringement is via a takedown notice, which is effective only if it “includes substantially” certain elements listed in the statute.10

Contributory Infringement

With “roots in the tort-law concepts of enterprise liability and imputed intent,” contributory infringement is a type of secondary copyright liability.11 It follows from the common law doctrine that “one who knowingly participates in or furthers a tortious act is jointly and severally liable with the prime tortfeasor,” a concept that applies in copyright law as it does in numerous other areas of the law.12 Put simply, contributory infringement is the idea that a person who contributes to the infringement of another is held liable for the infringement they helped to bring about.

The courts have formulated different tests for contributory infringement, but they all share the same basic elements. The test in the Ninth Circuit, where Boffoli filed his suit against Twitter, is simple: “one contributorily infringes when he (1) has knowledge of another’s infringement and (2) either (a) materially contributes to or (b) induces that infringement.”13 Inducement infringement, identified by the Supreme Court in the Grokster opinion,14 is not at issue here. Boffoli is claiming traditional contributory infringement, which has two elements: (1) knowledge, and (2) material contribution.

As to the knowledge element, contributory infringement “requires that the secondary infringer know or have reason to know of direct infringement.”15 In other words, either actual or constructive knowledge will suffice. It’s not enough that a service provider merely supplies the means of accomplishing infringement.16 Instead, there must be knowledge of “specific information which identifies infringing activity” before liability attaches.17 This makes sense because without specific knowledge, a service provider wouldn’t know what items to remove to avoid liability.

The relationship between knowledge and intent should also be noted. An explicit finding of intent is not “necessary to support liability for contributory copyright infringement.”18 Under the “rules of fault-based liability derived from the common law,”19 the “intention to cause the natural and probable consequences” of one’s conduct may be imputed.20 It’s not mandatory to find that a service provider actually intended to contribute to the underlying infringement. Instead, a “knowing failure to prevent infringing actions” can be the basis for imposing contributory liability.21

Generally speaking, the material contribution element “turns on whether the activity in question substantially assists direct infringement.”22 In the internet context, the Ninth Circuit last year held that there “is no question that providing direct infringers with server space satisfies” this standard because it is “an essential step in the infringement process.”23 The alleged material contribution must have a direct connection to the infringement such that it assists or enables internet users to locate infringing content.24

In the famous Napster case, the Ninth Circuit held that “if a computer system operator learns of specific infringing material available on his system and fails to purge such material from the system, the operator knows of and contributes to direct infringement.”25 The appellate court concluded that “Napster materially contributes to the infringing activity,” since without its help, “Napster users could not find and download the music they want” as easily.26 To impose contributory liability, it was enough that “Napster provides the site and facilities for direct infringement.”27

Similarly, the Ninth Circuit in Perfect 10 stated that “a computer system operator can be held contributorily liable if it has actual knowledge that specific infringing material is available using its system and can take simple measures to prevent further damage to copyrighted works yet continues to provide access to infringing works.”28 The court of appeals held that “Google could be held contributorily liable if it had knowledge that infringing . . . images were available using its search engine, could take simple measures to prevent further damage to [plaintiff’s] copyrighted works, and failed to take such steps.”29

Putting it all together, I think Boffoli has a good chance of success on the merits of his claim. If he sent DMCA takedown notices to Twitter that complied substantially with the elements listed in the statute, then Twitter will have lost its innocence and will be deemed to have knowledge of the infringement (should there actually be any). Once knowledge is established, Twitter’s intent to cause the infringement will be imputed. And as to material contribution, Twitter is assisting and enabling its users to find the infringing content it provides on its system.

This is similar to the situation in Napster, where the Ninth Circuit held that Napster could be liable as a contributory infringer for failing to remove material it knew to be infringing. This is also similar to the circumstances in Perfect 10, where the Ninth Circuit held that Google could be liable as a contributory infringer for failing to remove links to infringing images once alerted to their presence. Here, Twitter is failing to remove both links and images.

That said, it’s kind of hard to understand why Twitter hasn’t removed the links and images Boffoli complained of. Perhaps there’s more going on here than meets the eye, but under the allegations in the complaint, it seems to me that Twitter could be contributorily liable for whatever infringement is taking place of Boffoli’s copyrighted images.

Follow me on Twitter: @devlinhartline

© 2013 Devlin Hartline. Licensed under the Law Theories Public License 1.0.

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  1. Digital Millennium Copyright Act, Pub.L. No. 105-304, 112 Stat. 2860 (1998) (codified as amended in scattered sections of 17 U.S.C. and at 28 U.S.C. § 4001). 
  2. 17 U.S.C.A. § 512 (West 2012); Section 512 codified the principles developed by the district court in Religious Tech. Ctr. v. Netcom On-Line Commc’n Services, Inc., 907 F.Supp. 1361 (N.D. Cal. 1995). 
  3. Ellison v. Robertson, 189 F.Supp.2d 1051, 1061 (C.D. Cal. 2002). 
  4. H.R. Conf. Rep. 105-796, 72 (1998). 
  5. See 17 U.S.C.A. § 512(c)(1)(C) (West 2012) (“A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider– *** upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.”). 
  6. Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F.Supp.2d 1146, 1174 (C.D. Cal. 2002). 
  7. See, e.g., Costar Group Inc. v. Loopnet, Inc., 164 F.Supp.2d 688, 699 (D. Md. 2001) (“The existence of the safe harbor convolutes the analysis of copyright infringement which, theoretically, should proceed in a straight line. Ideally, CoStar would have to make a prima facie showing that LoopNet was liable of contributory infringement and then the court would turn to the question of whether the “safe harbor” provided a defense. However, because the parameters of the liability protection provided by the “safe harbor” are not contiguous with the bounds of liability for contributory infringement, the analysis may proceed more efficiently if issues are decided a bit out of order. On summary judgment, it is often appropriate for a court to decide issues out of the traditional order because a dispute of fact is only material if it can affect the outcome of a proceeding. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Thus, to the extent, if at all, that LoopNet is entitled to summary judgment in its safe harbor defense, all other issues concerning damages liability for contributory infringement would be rendered immaterial.”). 
  8. CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 552 (4th Cir. 2004). 
  9. ALS Scan, Inc. v. RemarQ Communities, Inc., 239 F.3d 619, 625 (4th Cir. 2001). 
  10. 17 U.S.C.A. § 512(c)(3)(A) (West 2012) (“To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed. (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.”). 
  11. Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788, 795 (9th Cir. 2007). 
  12. 1 Niel Boorstyn, Boorstyn On Copyright § 10.06[2], at 10-21 (1994). 
  13. Perfect 10, 494 F.3d at 795; it should be noted too that contributory infringement requires direct infringement to have occurred before liability attaches; see 1 Goldstein, Copyright: Principles, Law and Practice § 6.1, at 705 (1989) (“It is definitional that, for a defendant to be held contributorily . . . liable, a direct infringement must have occurred.”). 
  14. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (the Court held that “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”). 
  15. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1020 (9th Cir. 2001). 
  16. See, e.g., Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 436 (1984). 
  17. Napster, 239 F.3d at 1021. 
  18. Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936, 943 (9th Cir. 2011). 
  19. Grokster, 545 U.S. at 934-35. 
  20. DeVoto v. Pac. Fid. Life Ins. Co., 618 F.2d 1340, 1347 (9th Cir. 1980); see also Restatement (Second) of Torts § 8A (1965) (“All consequences which the actor desires to bring about are intended, as the word is used in this Restatement. Intent is not, however, limited to consequences which are desired. If the actor knows that the consequences are certain, or substantially certain, to result from his act, and still goes ahead, he is treated by the law as if he had in fact desired to produce the result.”). 
  21. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007). 
  22. Louis Vuitton, 658 F.3d at 943 (internal quotations omitted). 
  23. Id. (internal quotations omitted). 
  24. Perfect 10, 494 F.3d at 797. 
  25. Napster, 239 F.3d at 1021. 
  26. Id. at 1022. 
  27. Id
  28. Perfect 10, 508 F.3d at 1172 (internal quotations and citations omitted). 
  29. Id