U.S. Second Circuit cannot agree on the meaning of 'volitional conduct'

What does 'volitional conduct' mean in direct copyright infringement under US law? When the Second Circuit answered this question in April, the panel did not agree on the answer.

The IPKat is delighted to host a guest contribution by Katfriend Zachary Wawrzyniakowski, a JD student at Chicago-Kent College of Law, who analyzes an intriguing recent decision of this court.

Here's what Zachary writes:

U.S. Second Circuit Cannot Agree on the Meaning of Volitional Conduct 

What does 'volitional conduct' mean? In BWP Media USA Inc. v. Polyvore, Inc., No. 16-2825-cv (2d Cir. 2019), Judges Walker, Newman, and Pooler each concurred in the result (that a genuine dispute of material fact prevented summary judgement), but no two judges agreed on a meaning of volitional conduct. Judge Walker believed that volitional conduct means the choice to engage in an act which causes infringement. Judge Newman argued that it refers to the tort concept of causation, or proximate cause. Finally, Judge Pooler voiced no opinion on the issue, but pointed to several policy considerations judges should consider when choosing how to define volitional conduct. 

Factual Setting

The defendant, Polyvore, ran the website Polyvore.com, where users could create and share digital photograph collages. Polyvore provided a tool to help users create these collages: the Clipper. The Clipper allowed users to “clip” images from other websites to use in their collages. Once a user clipped an image, Polyvore: attached a hyperlink to that clip, linking the clip to the image’s original location; stored the image on Polyvore.com with its own unique URL; and indexed and made the image searchable on Polyvore. The website displayed all clipped images automatically, without any human interaction. 

Some Polyvore users clipped—and Polyvore copied and displayed—about seventy-nine copyrighted photographs which were owned by the plaintiff, BWP Media (“BWP”). Polyvore moved for and was granted summary judgement, with the district court finding that Polyvore had not acted volitionally in copying the images. The district court granted Polyvore’s motion over BWP’s contention that Polyvore copied, stored, and displayed their images. BWP also presented evidence that Polyvore reproduced some images (which were unrelated to the litigation) in eight different sizes. 

BWP appealed the district court’s finding, arguing that Polyore’s conduct in designing the clipper was infringing. Also on appeal was if the Digital Millennium Copyright Act shielded Polyvore from liability. BWP argued that the DMCA did not shield Polyvore because Polyvore had stripped the images’ metadata. 

Evolution of the Volitional Conduct Requirement in U.S. Copyright Law 

The advent of the internet created problems for the strict liability regime of copyright infringement. It did not make sense to hold a website strictly liable where users posted infringing conduct on that website. It did not make sense to hold websites strictly liable for its users where the users post infringing content on that website. For an ISP to be liable, “the infringement must have resulted from the provider’s own volitional conduct.” Considering the ISP’s actions through the volitional conduct requirement identifies the ISP as a direct infringer. The volitional conduct requirement primarily has been, and still is, a creature of the circuit courts, with the exception of the U.S. Supreme Court decision in ABC v. Aereo 134 S. Ct. 2498 (2014)

At issue in Aereo was a television rebroadcasting service run by Aereo. Aereo’s service would, at the request of a user, pick up a desired television signal and rebroadcast that signal over the internet to that user. The majority held that the rebroadcasting was direct infringement, but did not rule on the volitional conduct issue. In dissent, Justice Scalia wrote that Aereo was not liable because the copyright infringement requires volitional conduct which violates the Copyright Act, and in Aereo’s case, they did not engage in volitional conduct because they did not choose to rebroadcast any particular content. 

Although the majority in Aereo did not discuss volitional conduct, the Second Circuit held that their silence did not mean the volitional conduct requirement was dead. The Second Circuit has ruled on the volitional conduct requirement several times since then. 

Volitional conduct in images
Defining Volitional Conduct

With this backdrop in mind, the primary point of disagreement between the judges was the meaning of volitional conduct. To determine its meaning, the court looked to one of the first cases to articulate a volitional conduct requirement, Religious Tech. Ctr. v. Netcom On-Line Commc'n Servs., Inc., 907 F.Supp. 1361, 1368-70 (N.D. Cal. 1995). Netcom held that “there should still be some element of volition or causation. . . ” in copyright infringement. The meaning of volition to this panel hinged on the interpretation of this line. “Volition” can either be read to mean the choice to engage in an act or causation. 

Volition as Choice

In his opinion, Judge Walker interprets the above-mentioned line in Netcom to posit two possible elements: a volition element and a causation element. He notes that the Second Circuit, however, has only applied the volition requirement, so being bound by precedent, the Second Circuit should only consider volition. Judge Walker adopted Black’s Law Dictionary and Patry on Copyright’s definitions of volition. These sources defined volition as “choosing to engage in an act that causes infringement.” 

Volition as Causation (Proximate Cause)

Judge Newman interpreted Netcom differently. When Netcom stated “volition or causation,” Newman interpreted this to mean that “causation” was meant to be a restatement of the concept contained in “volition.” Thus, volition is causation. Newman adopted the Nimmer treatise view of causation, that causation is the tort concept of proximate cause. As the Restatement on Torts suggests, one is liable for the conduct of another if the former gives substantial assistance to the later, or if the former allows the later to use their instrumentalities knowing or having reason to know the later will act tortiously. Judge Newman relies on Costar (4th Cir.) and Aereo to say that there is liability for website developers based on their degree of involvement and contribution to the infringement 

Weighing the Options

Judge Walker lodged several reasons why the volitional conduct requirement should not be a causation analysis. Three of them critiqued proximate cause generally. First, the term “proximate cause” has generated significant confusion. Second, tort law uses proximate cause to show that a defendant is not liable, rather than as Judge Newman would apply it, to help establish liability. Third, given that tort law already uses proximate cause to establish who is responsible for the harm, and that Judge Newman wants to use proximate cause to establish the identity of the infringer, Judge Walker argues that this would create more confusion surrounding the concept of proximate cause. 

Judge Walker’s three other critiques concern the effect of using a proximate cause analysis in U.S. copyright law. First, volitional conduct has underpinnings in the U.S. Copyright Act, whereas proximate cause does not. Next, it is strange to consider foreseeability in a strict-liability tort. Finally, Judge Walker argues that considering foreseeability in direct infringement would have the effect of collapsing secondary liability into direct liability, as secondary liability considers knowledge. 

On the other side, Judge Newman simply believes that interpreting volition as the choice to engage in an act is the incorrect interpretation. He notes that several other circuits have interpreted the volitional conduct requirement to mean causation, that the defendant must have caused the illegal copying. The Supreme Court decision in Sony Corp. of America v. Universal City Studios, Inc., 104 S. Ct. 774 (1984) is applicable, Judge Newman suggests, because to consider whether something is capable of substantial non-infringing uses is akin to engaging in a causation analysis. Finally, Judge Newman suggests liability should extend to website developers who cause infringement by automatically causing an event to take place, such as automatically making a copy. 

The third judge on the panel, Judge Pooler, emphasized the significance of the consequences of holding ISPs liable for making copies of copyrighted works NOT at the direction of the user. It is common practice in the industry to make multiple copies of images to allow the images to be viewed across different device sizes, and we should not prevent websites from making additional copies which allow the images to be viewable on multiple devices of different sizes. 


This Katfriend thinks that defining volitional conduct as causation has potential. Volitional conduct as “choice to engage in an act which causes infringement” does not seem like a high enough standard because many actions taken by website developers may result in infringement. The website developer’s action of allowing users to post material may cause infringement because without the website’s actions, there would not have been infringement. Just because infringement followed from the website developer’s actions should not mean that they are liable for subsequent infringement in all cases. 

The causation definition seems like the better approach because it considers both the website developer’s knowledge of tortious conduct and their contribution to the infringement. This approach could be strengthened further by allowing websites to argue against liability by allowing them to point to remedial measures they took to stop the infringement, thereby minimizing their contribution to infringement. If the website took steps to stop contributing to infringement, then this remedial measure should count in their favor. 

Finally, I am not convinced that defining volitional conduct as causation collapses secondary liability into direct liability because in secondary liability, the party charged with that claim has usually not committed direct infringement. This is not the case for ISPs because, without the volitional conduct requirement, they would be liable for direct infringement because direct infringement is a strict liability offense. Therefore, reinstating direct liability because the ISP contributed to and had knowledge of the infringement does not seem problematic. 
U.S. Second Circuit cannot agree on the meaning of 'volitional conduct' U.S. Second Circuit cannot agree on the meaning of 'volitional conduct' Reviewed by Eleonora Rosati on Wednesday, June 12, 2019 Rating: 5

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