Purchasing Online Copyright Infringement: Tom Hussey Photography v. BDG Media

A Kat sees her own reflection
A potential circuit split in U.S. copyright law exists over the volitional act
requirement for copyright infringement liability (see Katpost by Ieva Gierdrimaite addressing VHT v. Zillow Cert. petition). 

Is purchasing and operating a website with locally-hosted infringing content a volitional act? 

Last week, the United States District Court for the District of Delaware ruled that this "passive" ownership and operation does not constitute a volitional act and, thus, does not constitute actionable copyright infringement. 

Let's explore how the court reached this decision in Tom Hussey Photography, LLC v. BDG Media, Inc..


The Plaintiff, Tom Hussey is a photographer based in Dallas, Texas. In 2009, he published a series of photographs titled "Reflections" for an advertisement campaign for a treatment for Alzheimer's disease. The photographs depict older persons seeing images of their younger selves reflected in a mirror or window. The reflections depict these younger selves in pivotal moments of life (such as a graduation or childbirth) or in their professions. 

The Defendant, Bustle Digital Group (BDG Media) is a digital media publisher which operates several websites, including Bustle, Mic, and Romper. In August of 2018, BDG acquired the website Flavorwire, an online magazine covering art and culture - "Highbrow, lowbrow, and everything in between." On March 23, 2011, Flavorwire posted an article describing the Reflections series in which nine of the images are reproduced. 

Tom Hussey alleges that he discovered the article in October of 2018; then, in January of 2020, he demanded that BDG remove the article containing the photographs. After BDG refused, Hussey filed a suit alleging copyright infringement on March 20, 2020

Volitional Act

In order to state a claim for copyright infringement, a plaintiff must show that they had (1) ownership of a valid copyright and (2) unauthorized copying of original elements of the plaintiff's work. The second element of the claim, unauthorized copying, concerns the unpermitted exercise of one or more of the six exclusive rights granted to copyright owners under Section 106 of the Copyright Act. In order to prove direct infringement, the plaintiff must establish that through "volitional conduct", the defendant caused the copyrighted material to be infringed (see guest post by Zachary Wawrzyniakowski on the volitional conduct requirement).

Display Right

Although Hussey alleged violations of the rights of reproduction, distribution, and public display, the court primarily focused upon the right of public display. The right of public display is defined in Section 101 of the Copyright Act as follows:
Credit: Yashima Gakutei

To perform or display a work “publicly” means—

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

Here, the court noted that "display" as a verb holds two potential meanings. First, the word may refer to the initial act of making something available to be viewed ("e.g. the Louvre displayed the Mona Lisa in 1797"). Second, the word may refer to the continued act of maintaining the availability of a work for public viewing ("e.g. the Louvre has displayed the Mona Lisa for many years"). The court turned to the narrow definition, requiring active rather than passive display of the works in question.

The cases cited by Hussey in which the "passive" display of copyrighted works constituted direct infringement, also included defendants that committed the initial act of display. Because the initial act of display took place in 2011, before BDG acquired flavorwire.com, the court ruled that BDG was not liable for direct copyright infringement. 

Statute of Limitations and Volitional Conduct

An additional issue before the court, which the court did dispositively address, is the statute of limitations on the alleged infringement. Generally, there is a 3-year statute of limitations on filing claims of copyright infringement. However, in APL Microscopic, LLC v. United States, the Federal Circuit Court of Appeals ruled that public display occurs "each time an individual computer user accesses the relevant page on a website that displays the work." 

The court noted that this allowed a plaintiff to overcome the statute of limitations, where each new access to the infringing page reset the three year clock. While the court declined to address whether the same principle would apply in the present case, the court noted that these displays must still result from an initial volitional act by the defendant. Therefore, the court dismissed Tom Hussey Photography's claim of copyright infringement. 


Mipha to the Window by Mark Rimmel
This Kat was certainly surprised by the outcome of this case. The court cited 
several cases in which internet service providers had not been held liable for direct infringement where the infringing content had been uploaded by users of the website in question. By contrast, the case at hand concerns an internet service provider who acquired the website, which displayed the copyrighted works posted by the original owner of the website without permission from the copyright owner. 

The volitional conduct requirement reflects that ISPs do not have an affirmative duty to monitor their services for infringing content posted by users under Section 512(m) of the Copyright Act. However, the acquisition of a website with owner-posted infringing content appears to be a novel consideration under the volitional conduct requirement. The infringing content was not posted by a user, outside the control of the ISP; rather, the content was posted by the owner of the ISP. This Kat is concerned that this ruling where subsequent owners of such an ISP are not liable for direct infringement for a lack of volitional conduct fails to adequately protect copyright owners by creating a new loophole for infringement. 
Purchasing Online Copyright Infringement: Tom Hussey Photography v. BDG Media Purchasing Online Copyright Infringement: Tom Hussey Photography v. BDG Media Reviewed by Thomas Key on Sunday, December 27, 2020 Rating: 5

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