§ 512. Limitations on liability relating to material online, 17 USCA § 512
Hi Patricia,
I had my associate Jason Gilbert do some research on the Safe Harbor protection for your
website (see his email to me below and the attached documents). After he got into the project,
he determined that the Safe Harbor rule would not protect your organization in a situation
where you host a PowerPoint presentation on your own website (and I agree after reviewing
his research). The Safe Harbor rule/language only protects organizations that provide web
hosting services such as YouTube where the users post the copyrighted material. Hence, for
your situation it appears the best protection you could get would be by having an
indemnification agreement signed by the speakers before posting the material where they
agree to indemnify you for any damages/attorneys’ fees incurred because of a copyright
infringement claim.
I am not going to bill you for my time in this matter (I probably have over 2 hours into this
matter), but my associate had 1 billable hour ($300) doing the research and communicating
with me. Please let me know if it is acceptable to you that we only bill you $300 for Jason’s
time and close this file since it appears there is nothing further we can do to assist you (your
corporate attorney can draft an indemnification agreement).
I look forward to your response.
Best regards,
Michael Neustel
U.S. Patent Attorney
Neustel Law Offices, LTD | 2534 South University Drive, Suite 4 | Fargo, North Dakota 58103
Telephone: 701-281-8822 | Fax: 701-237-0544 | Website: www.neustel.com | Email:
michael@neustel.com
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
1
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
United States Code Annotated
Title 17. Copyrights (Refs & Annos)
Chapter 5. Copyright Infringement and Remedies (Refs & Annos)
17 U.S.C.A. § 512
§ 512. Limitations on liability relating to material online
Effective: December 9, 2010
Currentness
(a) Transitory digital network communications.--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 provider’s
transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the
service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting,
routing, or providing connections, if--
(1) the transmission of the material was initiated by or at the direction of a person other than the service provider;
(2) the transmission, routing, provision of connections, or storage is carried out through an automatic technical process
without selection of the material by the service provider;
(3) the service provider does not select the recipients of the material except as an automatic response to the request of another
person;
(4) no copy of the material made by the service provider in the course of such intermediate or transient storage is maintained
on the system or network in a manner ordinarily accessible to anyone other than anticipated recipients, and no such copy is
maintained on the system or network in a manner ordinarily accessible to such anticipated recipients for a longer period than
is reasonably necessary for the transmission, routing, or provision of connections; and
(5) the material is transmitted through the system or network without modification of its content.
(b) System caching.--
(1) Limitation on liability.--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 intermediate and temporary storage
of material on a system or network controlled or operated by or for the service provider in a case in which-© 2015 Thomson Reuters. No claim to original U.S. Government Works.
2
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
(A) the material is made available online by a person other than the service provider;
(B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person
other than the person described in subparagraph (A) at the direction of that other person; and
(C) the storage is carried out through an automatic technical process for the purpose of making the material available to
users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to
the material from the person described in subparagraph (A),
if the conditions set forth in paragraph (2) are met.
(2) Conditions.--The conditions referred to in paragraph (1) are that--
(A) the material described in paragraph (1) is transmitted to the subsequent users described in paragraph (1)(C) without
modification to its content from the manner in which the material was transmitted from the person described in paragraph
(1)(A);
(B) the service provider described in paragraph (1) complies with rules concerning the refreshing, reloading, or other
updating of the material when specified by the person making the material available online in accordance with a generally
accepted industry standard data communications protocol for the system or network through which that person makes the
material available, except that this subparagraph applies only if those rules are not used by the person described in
paragraph (1)(A) to prevent or unreasonably impair the intermediate storage to which this subsection applies;
(C) the service provider does not interfere with the ability of technology associated with the material to return to the person
described in paragraph (1)(A) the information that would have been available to that person if the material had been
obtained by the subsequent users described in paragraph (1)(C) directly from that person, except that this subparagraph
applies only if that technology--
(i) does not significantly interfere with the performance of the provider’s system or network or with the intermediate
storage of the material;
(ii) is consistent with generally accepted industry standard communications protocols; and
(iii) does not extract information from the provider’s system or network other than the information that would have
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
3
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
been available to the person described in paragraph (1)(A) if the subsequent users had gained access to the material
directly from that person;
(D) if the person described in paragraph (1)(A) has in effect a condition that a person must meet prior to having access to
the material, such as a condition based on payment of a fee or provision of a password or other information, the service
provider permits access to the stored material in significant part only to users of its system or network that have met those
conditions and only in accordance with those conditions; and
(E) if the person described in paragraph (1)(A) makes that material available online without the authorization of the
copyright owner of the material, the service provider responds expeditiously to remove, or disable access to, the material
that is claimed to be infringing upon notification of claimed infringement as described in subsection (c)(3), except that
this subparagraph applies only if--
(i) the material has previously been removed from the originating site or access to it has been disabled, or a court has
ordered that the material be removed from the originating site or that access to the material on the originating site be
disabled; and
(ii) the party giving the notification includes in the notification a statement confirming that the material has been
removed from the originating site or access to it has been disabled or that a court has ordered that the material be
removed from the originating site or that access to the material on the originating site be disabled.
(c) Information residing on systems or networks at direction of users.--
(1) In general.--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--
(A)(i) does not have actual knowledge that the material or an activity using the material on the system or network is
infringing;
(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is
apparent; or
(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
4
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider
has the right and ability to control such activity; and
(C) 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.
(2) Designated agent.--The limitations on liability established in this subsection apply to a service provider only if the
service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by
making available through its service, including on its website in a location accessible to the public, and by providing to the
Copyright Office, substantially the following information:
(A) the name, address, phone number, and electronic mail address of the agent.
(B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including
through the Internet, and may require payment of a fee by service providers to cover the costs of maintaining the directory.
(3) Elements of notification.--
(A) 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.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
5
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
(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.
(B)(i) Subject to clause (ii), a notification from a copyright owner or from a person authorized to act on behalf of the
copyright owner that fails to comply substantially with the provisions of subparagraph (A) shall not be considered under
paragraph (1)(A) in determining whether a service provider has actual knowledge or is aware of facts or circumstances
from which infringing activity is apparent.
(ii) In a case in which the notification that is provided to the service provider’s designated agent fails to comply
substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii), (iii), and (iv) of
subparagraph (A), clause (i) of this subparagraph applies only if the service provider promptly attempts to contact the
person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially
complies with all the provisions of subparagraph (A).
(d) Information location tools.--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 provider referring or linking users to
an online location containing infringing material or infringing activity, by using information location tools, including a
directory, index, reference, pointer, or hypertext link, if the service provider--
(1)(A) does not have actual knowledge that the material or activity is infringing;
(B) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent;
or
(C) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
(2) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider
has the right and ability to control such activity; and
(3) upon notification of claimed infringement as described in subsection (c)(3), responds expeditiously to remove, or disable
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
6
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
access to, the material that is claimed to be infringing or to be the subject of infringing activity, except that, for purposes of
this paragraph, the information described in subsection (c)(3)(A)(iii) shall be identification of the reference or link, to
material or activity claimed to be infringing, that is to be removed or access to which is to be disabled, and information
reasonably sufficient to permit the service provider to locate that reference or link.
(e) Limitation on liability of nonprofit educational institutions.--(1) When a public or other nonprofit institution of higher
education is a service provider, and when a faculty member or graduate student who is an employee of such institution is
performing a teaching or research function, for the purposes of subsections (a) and (b) such faculty member or graduate student
shall be considered to be a person other than the institution, and for the purposes of subsections (c) and (d) such faculty
member’s or graduate student’s knowledge or awareness of his or her infringing activities shall not be attributed to the
institution, if--
(A) such faculty member’s or graduate student’s infringing activities do not involve the provision of online access to
instructional materials that are or were required or recommended, within the preceding 3-year period, for a course taught at
the institution by such faculty member or graduate student;
(B) the institution has not, within the preceding 3-year period, received more than two notifications described in subsection
(c)(3) of claimed infringement by such faculty member or graduate student, and such notifications of claimed infringement
were not actionable under subsection (f); and
(C) the institution provides to all users of its system or network informational materials that accurately describe, and promote
compliance with, the laws of the United States relating to copyright.
(2) For the purposes of this subsection, the limitations on injunctive relief contained in subsections (j)(2) and (j)(3), but not
those in (j)(1), shall apply.
(f) Misrepresentations.--Any person who knowingly materially misrepresents under this section--
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled by mistake or misidentification,
shall be liable for any damages, including costs and attorneys” fees, incurred by the alleged infringer, by any copyright owner
or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of
the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to
be infringing, or in replacing the removed material or ceasing to disable access to it
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
7
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
(g) Replacement of removed or disabled material and limitation on other liability.--
(1) No liability for taking down generally.--Subject to paragraph (2), a service provider shall not be liable to any person
for any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to
be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material
or activity is ultimately determined to be infringing.
(2) Exception.--Paragraph (1) shall not apply with respect to material residing at the direction of a subscriber of the service
provider on a system or network controlled or operated by or for the service provider that is removed, or to which access is
disabled by the service provider, pursuant to a notice provided under subsection (c)(1)(C), unless the service provider--
(A) takes reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material;
(B) upon receipt of a counter notification described in paragraph (3), promptly provides the person who provided the
notification under subsection (c)(1)(C) with a copy of the counter notification, and informs that person that it will replace
the removed material or cease disabling access to it in 10 business days; and
(C) replaces the removed material and ceases disabling access to it not less than 10, nor more than 14, business days
following receipt of the counter notice, unless its designated agent first receives notice from the person who submitted the
notification under subsection (c)(1)(C) that such person has filed an action seeking a court order to restrain the subscriber
from engaging in infringing activity relating to the material on the service provider’s system or network.
(3) Contents of counter notification.--To be effective under this subsection, a counter notification must be a written
communication provided to the service provider’s designated agent that includes substantially the following:
(A) A physical or electronic signature of the subscriber.
(B) Identification of the material that has been removed or to which access has been disabled and the location at which
the material appeared before it was removed or access to it was disabled.
(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or
disabled as a result of mistake or misidentification of the material to be removed or disabled.
(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction
of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of
the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
8
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.
(4) Limitation on other liability.--A service provider’s compliance with paragraph (2) shall not subject the service provider
to liability for copyright infringement with respect to the material identified in the notice provided under subsection (c)(1)(C).
(h) Subpoena to identify infringer.--
(1) Request.--A copyright owner or a person authorized to act on the owner’s behalf may request the clerk of any United
States district court to issue a subpoena to a service provider for identification of an alleged infringer in accordance with this
subsection.
(2) Contents of request.--The request may be made by filing with the clerk--
(A) a copy of a notification described in subsection (c)(3)(A);
(B) a proposed subpoena; and
(C) a sworn declaration to the effect that the purpose for which the subpoena is sought is to obtain the identity of an alleged
infringer and that such information will only be used for the purpose of protecting rights under this title.
(3) Contents of subpoena.--The subpoena shall authorize and order the service provider receiving the notification and the
subpoena to expeditiously disclose to the copyright owner or person authorized by the copyright owner information sufficient
to identify the alleged infringer of the material described in the notification to the extent such information is available to the
service provider.
(4) Basis for granting subpoena.--If the notification filed satisfies the provisions of subsection (c)(3)(A), the proposed
subpoena is in proper form, and the accompanying declaration is properly executed, the clerk shall expeditiously issue and
sign the proposed subpoena and return it to the requester for delivery to the service provider.
(5) Actions of service provider receiving subpoena.--Upon receipt of the issued subpoena, either accompanying or
subsequent to the receipt of a notification described in subsection (c)(3)(A), the service provider shall expeditiously disclose
to the copyright owner or person authorized by the copyright owner the information required by the subpoena,
notwithstanding any other provision of law and regardless of whether the service provider responds to the notification.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
9
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
(6) Rules applicable to subpoena.--Unless otherwise provided by this section or by applicable rules of the court, the
procedure for issuance and delivery of the subpoena, and the remedies for noncompliance with the subpoena, shall be
governed to the greatest extent practicable by those provisions of the Federal Rules of Civil Procedure governing the
issuance, service, and enforcement of a subpoena duces tecum.
(i) Conditions for eligibility.--
(1) Accommodation of technology.--The limitations on liability established by this section shall apply to a service provider
only if the service provider--
(A) has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s
system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account
holders of the service provider’s system or network who are repeat infringers; and
(B) accommodates and does not interfere with standard technical measures.
(2) Definition.--As used in this subsection, the term “standard technical measures” means technical measures that are used
by copyright owners to identify or protect copyrighted works and--
(A) have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair,
voluntary, multi-industry standards process;
(B) are available to any person on reasonable and nondiscriminatory terms; and
(C) do not impose substantial costs on service providers or substantial burdens on their systems or networks.
(j) Injunctions.--The following rules shall apply in the case of any application for an injunction under section 502 against a
service provider that is not subject to monetary remedies under this section:
(1) Scope of relief.--(A) With respect to conduct other than that which qualifies for the limitation on remedies set forth in
subsection (a), the court may grant injunctive relief with respect to a service provider only in one or more of the following
forms:
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
10
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
(i) An order restraining the service provider from providing access to infringing material or activity residing at a particular
online site on the provider’s system or network.
(ii) An order restraining the service provider from providing access to a subscriber or account holder of the service
provider’s system or network who is engaging in infringing activity and is identified in the order, by terminating the
accounts of the subscriber or account holder that are specified in the order.
(iii) Such other injunctive relief as the court may consider necessary to prevent or restrain infringement of copyrighted
material specified in the order of the court at a particular online location, if such relief is the least burdensome to the
service provider among the forms of relief comparably effective for that purpose.
(B) If the service provider qualifies for the limitation on remedies described in subsection (a), the court may only grant
injunctive relief in one or both of the following forms:
(i) An order restraining the service provider from providing access to a subscriber or account holder of the service
provider’s system or network who is using the provider’s service to engage in infringing activity and is identified in the
order, by terminating the accounts of the subscriber or account holder that are specified in the order.
(ii) An order restraining the service provider from providing access, by taking reasonable steps specified in the order to
block access, to a specific, identified, online location outside the United States.
(2) Considerations.--The court, in considering the relevant criteria for injunctive relief under applicable law, shall consider-
(A) whether such an injunction, either alone or in combination with other such injunctions issued against the same service
provider under this subsection, would significantly burden either the provider or the operation of the provider’s system or
network;
(B) the magnitude of the harm likely to be suffered by the copyright owner in the digital network environment if steps are
not taken to prevent or restrain the infringement;
(C) whether implementation of such an injunction would be technically feasible and effective, and would not interfere
with access to noninfringing material at other online locations; and
(D) whether other less burdensome and comparably effective means of preventing or restraining access to the infringing
material are available.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
11
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
(3) Notice and ex parte orders.--Injunctive relief under this subsection shall be available only after notice to the service
provider and an opportunity for the service provider to appear are provided, except for orders ensuring the preservation of
evidence or other orders having no material adverse effect on the operation of the service provider’s communications
network.
(k) Definitions.--
(1) Service provider.--(A) As used in subsection (a), the term “service provider” means an entity offering the transmission,
routing, or providing of connections for digital online communications, between or among points specified by a user, of
material of the user’s choosing, without modification to the content of the material as sent or received.
(B) As used in this section, other than subsection (a), the term “service provider” means a provider of online services or
network access, or the operator of facilities therefor, and includes an entity described in subparagraph (A).
(2) Monetary relief.--As used in this section, the term “monetary relief” means damages, costs, attorneys” fees, and any
other form of monetary payment.
(l) Other defenses not affected.--The failure of a service provider’s conduct to qualify for limitation of liability under this
section shall not bear adversely upon the consideration of a defense by the service provider that the service provider’s conduct
is not infringing under this title or any other defense.
(m) Protection of privacy.--Nothing in this section shall be construed to condition the applicability of subsections (a) through
(d) on--
(1) a service provider monitoring its service or affirmatively seeking facts indicating infringing activity, except to the extent
consistent with a standard technical measure complying with the provisions of subsection (i); or
(2) a service provider gaining access to, removing, or disabling access to material in cases in which such conduct is prohibited
by law.
(n) Construction.--Subsections (a), (b), (c), and (d) describe separate and distinct functions for purposes of applying this
section. Whether a service provider qualifies for the limitation on liability in any one of those subsections shall be based solely
on the criteria in that subsection, and shall not affect a determination of whether that service provider qualifies for the limitations
on liability under any other such subsection.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
12
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
CREDIT(S)
(Added Pub.L. 105-304, Title II, § 202(a), Oct. 28, 1998, 112 Stat. 2877; amended Pub.L. 106-44, §§ 1(c)(1), 1(d), Aug. 5,
1999, 113 Stat. 221, 222; Pub.L. 111-295, § 3(a), Dec. 9, 2010, 124 Stat. 3180.)
Notes of Decisions (99)
17 U.S.C.A. § 512, 17 USCA § 512
Current through P.L. 113-234 approved 12-16-2014
End of Document
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
13
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
Rights of litigants to act in person or by
attorney
Federal Civil Procedure
Pro Se or Lay Pleadings
840 F.Supp.2d 724
United States District Court,
S.D. New York.
Sheila WOLK, Plaintiff,
v.
KODAK IMAGING NETWORK, INC., Eastman
Kodak Company, and Photobucket.com, Inc.,
Defendants.
Submissions by pro se parties are held to less
stringent standards than formal pleadings drafted
by lawyers; as a result, courts construe the
pleadings of a pro se plaintiff liberally, and
interpret them to raise the strongest arguments
they suggest.
No. 10 Civ. 4135. | Jan. 3, 2012.
Cases that cite this headnote
Synopsis
Background: Independent artist of fantasy images and
sports art brought copyright infringement action against
photo-sharing internet service provider and other related
defendants, alleging infringement in various forms,
interference with advantageous business relations, and
seeking declaratory and injunctive relief based on
defendants’ purported use of artist’s images. Parties
brought various motions.
[2]
Attorney and Client
Rights of litigants to act in person or by
attorney
Federal Civil Procedure
Pro Se or Lay Pleadings
Courts will not excuse frivolous or vexatious
filings by pro se litigants, and pro se status does
not exempt a party from compliance with relevant
rules of procedural and substantive law.
Holdings: The District Court, Sweet, J., held that:
[1]
good cause did not exist to grant artist leave to amend
her complaint;
[2]
Cases that cite this headnote
artist’s expert was precluded from submitting testimony;
[3]
lack of evidence of volitional conduct by company and
related defendants precluded their direct liability under
Copyright Act;
[3]
The decision to grant or deny leave to amend a
pleading is within the discretion of district court.
Fed.Rules Civ.Proc.Rule 15(a)(2), 28 U.S.C.A.
[4]
internet provider was eligible to qualify for safe harbor
provisions of Digital Millennium Copyright Act (DMCA);
and
Cases that cite this headnote
[5]
provider was shielded from liability under safe harbor
provisions of DMCA.
Defendants’ motions for summary judgment granted.
West Headnotes (33)
[1]
Attorney and Client
Federal Civil Procedure
Discretion of Court
[4]
Federal Civil Procedure
Time for amendment in general
Federal Civil Procedure
Injustice or prejudice
Federal Civil Procedure
Form and sufficiency of amendment; futility
Leave to amend a pleading may be properly
denied for undue delay, bad faith or dilatory
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
14
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
motive on the part of the movant, repeated failure
to cure deficiencies by amendments previously
allowed, undue prejudice to the opposing party
by virtue of allowance of the amendment, or
futility of amendment; however, mere delay is
not, of itself, sufficient to justify denial of motion
seeking leave. Fed.Rules Civ.Proc.Rule 15(a), 28
U.S.C.A.
[5]
5 Cases that cite this headnote
[7]
Cases that cite this headnote
Evidence
Matters involving scientific or other special
knowledge in general
Evidence
Necessity and sufficiency
Federal Civil Procedure
Time for amendment in general
Federal Civil Procedure
Pretrial Order
Under Daubert, a court conducts a two-part
inquiry in determining whether to admit expert
testimony: (1) whether the expert used a reliable
methodology; and (2) whether testimony will
assist trier of fact to understand evidence or to
determine a fact in issue. Fed.Rules Evid.Rule
702, 28 U.S.C.A.
A finding of good cause, required for leave to
amend a pleading once deadline specified in
scheduling order for amendment has passed,
depends on the diligence of the moving party; the
standard is not satisfied when proposed
amendment rests on information the party knew,
or should have known, in advance of the
deadline. Fed.Rules Civ.Proc.Rules 15(a), 16(b),
28 U.S.C.A.
Cases that cite this headnote
[8]
Evidence
Matters of common knowledge or observation
The district court should not admit expert
testimony that is directed solely to lay matters
which a jury is capable of understanding and
deciding without the expert’s help.
10 Cases that cite this headnote
Cases that cite this headnote
[6]
Federal Civil Procedure
Time for amendment in general
Federal Civil Procedure
Pretrial Order
Although moving party’s diligence is a district
court’s primary consideration in good cause
inquiry as to whether leave to amend a pleading
should be granted once deadline specified in
scheduling order for amendment has passed, a
court also may consider other relevant factors
including whether allowing amendment of
pleading at particular stage of litigation will
prejudice defendants, and amendment would be
prejudicial if it would require the opponent to
expend significant additional resources to
conduct discovery and prepare for trial, or
significantly delay resolution of the dispute.
Fed.Rules Civ.Proc.Rules 15(a), 16(b), 28
U.S.C.A.
[9]
Federal Civil Procedure
Lack of cause of action or defense
Federal Civil Procedure
Right to judgment as matter of law
Federal Civil Procedure
Ascertaining existence of fact issue
The courts do not try issues of fact on a motion
for summary judgment, but, rather, determine
whether the evidence presents a sufficient
disagreement to require submission to a jury or
whether it is so one-sided that one party must
prevail as a matter of law.
Cases that cite this headnote
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
15
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
2 Cases that cite this headnote
[10]
Federal Civil Procedure
Absence of genuine issue of fact in general
Federal Civil Procedure
Weight and sufficiency
[13]
Summary judgment is appropriate where the
moving party has shown little or no evidence may
be found in support of the nonmoving party’s
case; as a result, when no rational jury could find
in favor of nonmoving party because the evidence
to support its case is so slight, there is no genuine
issue of material fact and a grant of summary
judgment is proper.
Professional artist’s failure to provide sufficient
information for court to conduct Daubert analysis
as to testimony of her proposed expert precluded
admission of testimony in artist’s infringement
action against photo-sharing internet service
provider and other related defendants; although
discovery had concluded, no expert report or
statement for basis of expert’s opinions had been
provided, and artist had ample time following
resolution of motion to compel production of
documents to expert to serve report or seek
additional extensions. Fed.Rules Evid.Rule 702,
28 U.S.C.A.
Cases that cite this headnote
[11]
Federal Civil Procedure
Burden of proof
Federal Civil Procedure
Weight and sufficiency
On a motion for summary judgment, the nonmoving party may not rely simply on conclusory
allegations or speculation to avoid summary
judgment, but instead must offer evidence to
show that its version of events is not wholly
fanciful.
Cases that cite this headnote
[14]
Cases that cite this headnote
[12]
Evidence
Matters involving scientific or other special
knowledge in general
Evidence
Preliminary evidence as to competency
Evidence
Necessity and sufficiency
Under Daubert, the trial court is tasked with
ensuring that an expert’s testimony both rests on
reliable foundation and is relevant to the task at
hand, and the proponent of expert testimony
bears the burden, by preponderance of the
evidence, to demonstrate that the admissibility
requirements of Federal Rule of Evidence
governing admissibility of expert testimony are
satisfied. Fed.Rules Evid.Rule 702, 28 U.S.C.A.
Federal Civil Procedure
Time for amendment
Federal Civil Procedure
Pretrial Order
Good cause did not exist to grant artist leave to
amend her complaint, nearly seven months after
deadline for amendment in court’s scheduling
order, to assert unfair competition claim against
photo-sharing internet service provider and
related defendants, absent any evidence claim
turned on any facts not available to artist when
she commenced action, and it was improper to
seek leave to amend complaint to add new claim
in response to summary judgment motion, when
discovery
was
complete.
Fed.Rules
Civ.Proc.Rules 15(a), 16(b), 28 U.S.C.A.
Evidence
Necessity and sufficiency
1 Cases that cite this headnote
[15]
Evidence
Necessity and sufficiency
Daubert enumerates numerous factors which
bear on the reliability of proposed expert
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
16
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
defendants in connection with defendants’
purported use of artist’s images; transfer of
information about an order from photo-sharing
website to fulfillment vendor was done
electronically through an automated computer
system, and all of information displayed on
website, including simulation of products
containing
artist’s
images,
was
done
electronically, with no human intervention by any
employee of defendants. 17 U.S.C.A. § 101 et
seq.
testimony, including: (1) whether the theory or
technique can be tested; (2) whether the theory or
technique has been subject to peer review; (3) the
technique’s known or potential rate of error and
existence and maintenance of standards
controlling the technique’s operation; and (4)
whether a particular technique or theory has
gained general acceptance in the scientific
community. Fed.Rules Evid.Rule 702, 28
U.S.C.A.
Cases that cite this headnote
Cases that cite this headnote
[16]
Copyrights and Intellectual Property
Nature and elements of injury
[19]
To establish a claim of copyright infringement
violative of Copyright Act, a plaintiff must
establish: (1) ownership of a valid copyright, and
(2) unauthorized copying or a violation of one of
the other exclusive rights afforded copyright
owners pursuant to the Copyright Act. 17
U.S.C.A. § 101 et seq.
Copyrights and Intellectual Property
Pictorial, graphic, and sculptural works
The display of copyrighted images on a
defendant’s website does not demonstrate
volition required for direct liability for
infringement under the Copyright Act. 17
U.S.C.A. § 101 et seq.
Cases that cite this headnote
2 Cases that cite this headnote
[20]
[17]
Copyrights and Intellectual Property
Intent or purpose
To qualify for the “safe harbor” provisions under
the Digital Millennium Copyright Act (DMCA),
a party must meet certain threshold requirements,
including that the party: (1) must be a “service
provider” as defined by DMCA; (2) must have
adopted and reasonably implemented a policy for
termination in appropriate circumstances of users
who are repeat infringers; and (3) must not
interfere with standard technical measures used
by copyright owners to identify or protect
copyrighted works. 17 U.S.C.A. § 512(c).
Direct liability, for purposes of infringement
claim brought under Copyright Act, requires
volitional conduct that causes the infringement.
17 U.S.C.A. § 101 et seq.
1 Cases that cite this headnote
[18]
Copyrights and Intellectual Property
Pictorial, graphic, and sculptural works
Lack of any evidence of volitional conduct by
company involved in development of cameras,
film, and related products, which offered its
customers online photography service, as well as
other related defendants precluded professional
artist’s claim, under Copyright Act, of direct
liability for copyright infringement against
Copyrights and Intellectual Property
Defenses
4 Cases that cite this headnote
[21]
Copyrights and Intellectual Property
Defenses
Photo-sharing internet company, which offered
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
17
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
site that hosted and allowed online sharing of
photos and videos at the direction of users, was
“service provider” under Digital Millennium
Copyright Act (DMCA), as required to qualify
for DMCA’s “safe harbor” provisions. 17
U.S.C.A. § 512(k)(1)(B).
Photo-sharing internet service provider was
sheltered from liability, under safe harbor
provisions of Digital Millennium Copyright Act
(DMCA), in connection with artist’s copyright
infringement claims related to artist’s images
which were located on provider’s website;
provider did not have actual knowledge of
infringing activity and removed infringing
material when it obtained sufficient information,
it did not have right and ability to control and did
not receive direct financial benefit from alleged
infringing activity, it designated agent to receive
notifications of claimed infringements, and it had
no duty to police its website for infringements. 17
U.S.C.A. § 512(c).
5 Cases that cite this headnote
[22]
Copyrights and Intellectual Property
Defenses
Photo-sharing internet service provider, through
developing system available to public on its
website through which copyright holders of
images could submit a take-down notice, adopted
and reasonably implemented policy for
termination in appropriate circumstances of users
who were repeat infringers, as required for
provider to qualify for safe harbor under Digital
Millennium Copyright Act (DMCA); further,
when provider received artist’s notices, it acted to
remove infringing material. 17 U.S.C.A. § 512(i).
4 Cases that cite this headnote
[25]
While the Copyright Act does not expressly
render anyone liable for infringement committed
by another, it does not preclude the imposition of
liability for copyright infringements on certain
parties who have not themselves engaged in the
infringing activity. 17 U.S.C.A. § 101 et seq.
4 Cases that cite this headnote
[23]
Copyrights and Intellectual Property
Defenses
Photo-sharing
internet
service
provider
accommodated and did not interfere with
standard technical measures used by artists or
photographers to protect their copyrighted works,
as required for provider to qualify for safe harbor
under Digital Millennium Copyright Act
(DMCA); watermarks appeared on images, and
provider did not advise or encourage its users to
use photo-editing tools to circumvent copyright,
but rather, it would be users who would use tools
to circumvent copyright protection measures on
site. 17 U.S.C.A. § 512(i)(1)(B).
Copyrights and Intellectual Property
Persons liable
Cases that cite this headnote
[26]
Copyrights and Intellectual Property
Persons liable
Through contributory infringement, one infringes
in violation of Copyright Act by intentionally
inducing or encouraging direct infringement. 17
U.S.C.A. § 101 et seq.
2 Cases that cite this headnote
2 Cases that cite this headnote
[27]
[24]
Copyrights and Intellectual Property
Defenses
Copyrights and Intellectual Property
Persons liable
Vicarious infringement exists, so as to violate
Copyright Act, where one profits from direct
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
18
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
party’s intended illegitimate use will not be liable
for contributory infringement under Copyright
Act. 17 U.S.C.A. § 101 et seq.
infringement while declining to exercise a right
to stop or limit it. 17 U.S.C.A. § 101 et seq.
1 Cases that cite this headnote
1 Cases that cite this headnote
[28]
Copyrights and Intellectual Property
Persons liable
[32]
In order to hold a defendant secondarily liable
under Copyright Act, someone else must have
directly infringed on the copyright holder’s
rights. 17 U.S.C.A. § 101 et seq.
Copyrights and Intellectual Property
Persons liable
One may be vicariously liable for infringement
under Copyright Act if he has right and ability to
supervise the infringing activity and also has a
direct financial interest in such activities. 17
U.S.C.A. § 101 et seq.
1 Cases that cite this headnote
1 Cases that cite this headnote
[29]
Copyrights and Intellectual Property
Persons liable
[33]
To establish a claim for contributory copyright
infringement under Copyright Act, a plaintiff
must allege that the defendant with knowledge of
the infringing activity, induced, caused, or
materially contributed to infringing conduct of
another. 17 U.S.C.A. § 101 et seq.
Copyrights and Intellectual Property
Persons liable
Vicarious infringement is established under
Copyright Act if it is shown that a party, with
knowledge of infringing activity, induces, causes,
or materially contributes to the infringing
conduct of another. 17 U.S.C.A. § 101 et seq.
5 Cases that cite this headnote
4 Cases that cite this headnote
[30]
Copyrights and Intellectual Property
Persons liable
Attorneys and Law Firms
An allegation that a defendant merely provided
the means to accomplish an infringing activity is
insufficient to establish a claim for contributory
infringement under Copyright Act, as
defendant’s participation must be substantial. 17
U.S.C.A. § 101 et seq.
3 Cases that cite this headnote
[31]
Copyrights and Intellectual Property
Persons liable
*728 Sheila Wolk, New York, NY, pro se.
Nixon Peabody LLP, by: Gina M. McCreadie, Esq.,
Boston, MA, by: Mark D. Robins, Esq., New York, NY,
Talley M. Henry, Esq., San Francisco, CA, for Defendants
Kodak Imaging Network, Inc. and Eastman Kodak
Company.
Norwick Schad & Goering, by: Kenneth P. Norwick, Esq.,
New York, NY, Satterlee Stephens Burke & Burke LLP,
by: Mark Alan Lerner, Esq., New York, NY, for Defendant
Photobucket.com, Inc.
One who furnishes a copyrighted work to another
but is innocent of any knowledge of the other
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
19
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
OPINION
SWEET, District Judge.
There are seven motions pending before the Court. Plaintiff
pro se Sheila Wolk (the “Plaintiff” or “Wolk”) has filed
motions, pursuant to Fed.R.Civ.P. 56, for both partial
summary judgment against Defendants Kodak Imaging
Network, Inc. and Eastman Kodak Company (collectively,
the “Kodak Defendants”) as well as summary judgment
against Photobucket.com, Inc. (“Photobucket” and, with
the Kodak Defendants, the “Defendants”). The Kodak
Defendants have filed a cross motion for summary
judgment with respect to all counts of Plaintiff’s complaint
pursuant to the same rule. Photobucket has filed its own
similar motion. In addition to the four summary judgment
motions, also pending before the Court are Plaintiff’s
motion to amend, Plaintiff’s motion to admit expert
testimony and a motion Plaintiff has filed entitled “Motion
To Investigate The Subordination And Acts Of Perjury By
The Defendants.”
Upon the findings and conclusions set forth below,
Plaintiff’s motion for partial summary judgment against
the Kodak Defendants, motion for summary judgment
against Photobucket, motion to amend, motion to admit
expert testimony and motion to investigate are denied.
Defendants’ motions for summary judgment are granted.
Prior Proceedings
Wolk filed her initial complaint on May 19, 2010 and an
amended complaint on *729 July 6, 2010 (the
“Complaint”). In the Complaint, Wolk seeks declaratory
judgment and an injunction and alleges both direct and
secondary copyright infringement and interference with
advantageous business relationships. Wolk, an
independent artist of fantasy images and sports art, licenses
her images through an exclusive licensing agent. Wolk
alleges that clients of Photobucket have displayed, copied,
modified and otherwise used her images on its site in
violation of her copyrights, and that the Defendants have
displayed, copied, prepared derivative works and
distributed her images without a valid license.
The Complaint alleges seven counts, including a request
for a declaratory judgment, a request for an injunction,
contributory copyright infringement by Photobucket,
vicarious copyright infringement by Photobucket, direct
infringement by Photobucket, direct liability for
infringement by the Kodak Defendants and interference
with advantageous business relations by the Kodak
Defendants.
There have been several matters upon which the Court has
already passed judgment. On September 15, 2010, Wolk
filed an Emergency Motion for a Preliminary Injunction.
After granting requests for extensions of time, the motion
was considered fully submitted on November 3, 2010, and,
in an opinion dated March 17, 2011, 2011 WL 940056,
Wolk’s motion was denied on grounds that the Plaintiff did
not demonstrate a likelihood of success on the merits and
the Plaintiff failed to satisfy the other criteria necessary to
obtain relief. On March 22, 2011, Wolk filed a motion to
compel the release of confidential documents to her
proposed expert witness. Plaintiff’s motion was denied on
grounds that the Plaintiff had not established her expert to
be a “bona fide professional expert” as required under the
parties’ Stipulated Confidentiality Order, but the Plaintiff
was granted leave to move to qualify her proposed expert
as an appropriate witness under Daubert. Also on March
22, 2011, Plaintiff filed a motion to increase the time
allotted for discovery and expert reports. The motion was
granted and deadlines to complete discovery and serve
expert reports were extended. On April 11, 2011, Wolk
filed a motion to strike deposition testimony of Plaintiff’s
licensing agent and information relating to Plaintiff’s
expert. Finding no basis under the Rules of Civil Procedure
for this request, the Court denied the Plaintiff’s motion.
There are seven motions that remain pending before the
Court. On April 8, 2011, Plaintiff filed a “Motion To
Investigate The Subordination And Acts Of Perjury By The
Defendants,” and, on April 19, 2011, both the Kodak
Defendants and Photobucket filed separate affirmations in
opposition to the Plaintiff’s motion. On May 4, 2011, Wolk
filed a motion for partial summary judgment against the
Kodak Defendants. In response, the Kodak Defendants
filed both their opposition to the Plaintiff’s motion for
partial summary judgment as well as a cross-motion for
summary judgment on all counts. The motions were
marked fully submitted on July 27, 2011. Plaintiff filed a
motion to amend her complaint on June 26, 2011, which
the Kodak Defendants have opposed. On September 13,
2011, Wolk filed a motion to admit the expert testimony of
Dr. Robert Sarvis. The motion was marked fully submitted
on October 28, 2011. On September 23, Photobucket filed
a motion for summary judgment with respect to all counts
of the Complaint. On October 15, 2011, the Plaintiff filed
a cross-motion for summary judgment against Photobucket
on all counts. These motions were marked fully submitted
on November 30, 2011.
*730 The Facts
The facts are set forth in the Local Rule 56.1 Statements of
Undisputed Fact submitted by Wolk, the Kodak
Defendants and Photobucket, The facts are not in dispute
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
20
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
except as noted below.
Wolk has been a professional artist for over 40 years.
Working alone, Wolk spends a great deal of time creating
and producing her art. Some of the images Wolk creates
can consume as much as a year of Wolk’s professional time
to create and produce in final form. The Plaintiff’s sole
source of income is the sale or licensing of her art, and
Wolk runs an online store that exclusively sells her art. The
art the Plaintiff creates is owed by Wolk and is registered
with the United States Copyright Office.
Photobucket is a photo-sharing Internet service provider
that
operates
a
website
located
at
http://www.photobucket.com. Photobucket is what is
known as a “user-generated content” website, which
provides an online platform for users to post material that
the users themselves upload. Photobucket enables users
who establish a Photobucket account to upload digital
photographs and videos so that they may be stored and
viewed on the website. The images and videos posted to
Photobucket, of which there are approximately 9 billion,
are generated by the users themselves. Each image or video
on Photobucket is associated with a unique uniform
resource locator, or “URL.” Photobucket does not charge a
fee to users to use its website, and Photobucket earns the
majority of its income from advertising revenue.
Eastman Kodak is a company founded in 1889 whose
business involves the development of cameras, film and
related products. In 2001, Eastman Kodak acquired Ofoto,
Inc. as a wholly-owned subsidiary. In 2005, Ofoto, Inc.
changed its name to Kodak Imaging Network and the
online photography service became known as KODAK
Gallery. KODAK Gallery offers its customers the ability to
upload their personal digital photographs, create and store
albums to share with family and friends, and to order prints
of and products containing their digital photographs.
Effective January 21, 2009, Photobucket and Kodak
Imaging Network entered into a Photo Print and
Merchandise Agreement (the “Agreement”), which
allowed Photobucket users to print images obtained from
Photobucket on products available through KODAK
Gallery. Eastman Kodak was not a party to the Agreement.
At the time this action was commenced, Photobucket
allowed users to submit photos to Photobucket’s former
business partner, Kodak Imaging Network, to create prints
and other items incorporating the photographs.
Photobucket states that it did not control the Kodak
Defendants’ activities pursuant to this relationship and that
it was not involved in the Kodak Defendants’ fulfillment
of orders. Photobucket also states that it played no role in
a user’s decision to access the Kodak Defendants’ services
and no role in the user’s selection of images for which the
user desired the Kodak Defendants’ services. Wolk
disputes this characterization of the relationship between
Photobucket and the Kodak Defendants, stating that
Photobucket understood the relationship under the
Agreement between Photobucket and Kodak Imaging
Network to be a partnership. Photobucket contends that it
has referred to Kodak Imaging Network colloquially as its
former business “partner,” but disputes the characterization
as to how it understood the relationship. Photobucket
disputes Wolk’s contention that Photobucket had the
ability to control the activities of the Kodak Defendants.
Photobucket also avers that Photobucket’s financial benefit
from its business relationship with the Kodak Defendants
was not contingent on the particular images submitted *731
to Kodak Imaging Network by users. Rather, Photobucket
received the same payment for any image printed by a
Kodak Imaging Network user, regardless of content. The
Kodak Defendants state that, under the Agreement between
Kodak Imaging Network and Photobucket, Kodak Imaging
Network was obligated to pay Photobucket 50% of “net
profits,” meaning total monthly gross revenue less certain
expenses.
Photobucket’s website includes “Terms of Use” that are
available to users of the website. Under the Terms of Use,
Photobucket users “represent and warrant that ... the
posting and use of your Content on or through the
Photobucket Services does not violate the privacy rights,
publicity rights, copyrights, contract rights, intellectual
property rights or any other rights of any person.” In
addition, the Terms of Use state:
Protecting Copyrights and Other Intellectual
Property. Photobucket respects the intellectual property
of others, and requires that our users do the same. You
may not upload, embed, post, email, transmit or
otherwise make available any material that infringes any
copyright, patent, trademark, trade secret or other
proprietary rights of any person or entity. Photobucket
has the right to terminate the Membership of Infringers.
If you believe your work has been copied and posted on
or through the Photobucket Services in a way that
constitutes copyright infringement, please follow the
procedures set forth in the Photobucket copyright and IP
Policy.
The Plaintiff states that Photobucket does not require
perspective users to read the Terms of Use in order to
register as a user. Photobucket does not dispute this fact
insofar as Photobucket only requires users to agree to its
Terms of Use in order to register, and Photobucket has no
way of requiring users to actually read the terms.
Photobucket states that it has taken steps in accordance
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
21
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
with the Digital Millennium Copyright Act (the “DMCA”)
that enable copyright owners who believe their rights are
being infringed by Photobucket users to notify
Photobucket and have their content removed. According to
Photobucket, the website advises visitors to the website
how to complain if they believe their rights are being
infringed and, on every page where an image is displayed,
there is a link allowing viewers to “report inappropriate
content.” Users who click this link are prompted to view
Photobucket’s “Copyright and Intellectual Property
Policy” and are directed to send Photobucket a notice of
infringement, or “take-down notice.” According to
Photobucket, the website provides instructions for users to
send the take-down notice, informing users of the elements
required under the DMCA to provide Photobucket with the
information necessary to remove the infringing material.
Among other things, the instructions state: “Identify the
material or link you claim is infringing (or the subject of
infringing activity) and that access to which is to be
disabled, including at a minimum, if applicable, the URL
of the link shown on the Photobucket website where such
material may be found.” The instructions also designate an
agent to receive notices of alleged infringement.
Photobucket has stated that staff members review each
take-down notice to ensure that the copyright holder has
provided the specific URL for each allegedly infringing
image because, if a copyright holder provides only an
image, the website does not have the capability to search
the 9 billion images and videos for infringing material.
According to Photobucket, if a take-down notice does not
provide the URL for the allegedly infringing content,
Photobucket *732 staff members contact the copyright
holder to request the information.
The Plaintiff states that she has limited knowledge of
computers and has no formal education in computers or
computer science. The knowledge she does have of
computers has come from using a personal computer and
not from formal computer training. Photobucket does not
dispute this fact, but highlights that Wolk, via a notices sent
using Photobucket’s online reporting system as early as
May 2008 and in emails to Defendants’ counsel, has
proven herself able to ascertain and report to Photobucket
alleged infringements of her work by URL, the specific
character string that constitutes a reference to an Internet
resource, and that Wolk operates an online retail store.
Wolk states that when she first noticed Photobucket, she
did not know what a URL was or how it functioned in
computer systems.
According to Photobucket, if a take-down notice with a
URL is received, Photobucket removes the infringing
images and provides the copyright holder with an email
informing them that the content has been removed. An
email is also sent to the user who posted the allegedly
infringing image to allow the user to refute the copyright
holder’s claim of infringement. Photobucket states that it
has a policy of banning repeat offenders from using the
website.
Wolk has stated that the Photobucket software offers tools
to allow its users to defeat copyright holders’ watermark.
Photobucket does not dispute that the software offers
editing tools, but rejects the characterization that these
tools are provided to allow customers to defeat a copyright
owner’s watermark. Wolk states that Photobucket’s search
function can, in some categories, cause a user to have
search results with more than 70% of the images displayed
being protected by copyright. Photobucket disputes this
fact and states that the website’s search function is entirely
dependent on information supplied by the Photobucket
users who post the material. Wolk avers that Photobucket
received a direct financial benefit from the alleged
copyright infringement of her art and images. Photobucket
disputes this fact, stating that it received the same share of
profits realized by Kodak for infringing and noninfringing
images and its revenues were in no way enhanced by or
dependent on the allegedly infringing nature of any
particular image.
Wolk has contended, and Photobucket does not dispute,
that users of Photobucket have copied, displayed and
modified Wolk’s copyrighted material, and Plaintiff has
not given approval for any of these users to copy, display,
modify or otherwise use her art. The Plaintiff states that
products have been made using her images by Kodak
pursuant to the Agreement with Photobucket, a fact
Photobucket does not dispute to the extent such products
were ordered by Wolk, her proposed expert Dr. Robert
Sarvis or her proposed expert’s assistant Nick Virgilio. The
Kodak Defendants aver that, during discovery in this
action, the Kodak Defendants first became aware of three
orders placed through KODAK Gallery by Nick Virgilio
for products containing images he obtained from
Photobucket at the direct request of Wolk’s potential expert
witness, Dr. Robert Sarvis. Photobucket notes that the
evidentiary record does not include any such products
having been made prior to the filing of the Complaint.
According to Wolk, Kodak Imaging Network’s standard
operating procedure is to visually review each image
product prior to production, a fact the Kodak Defendants
dispute. With respect to Wolk’s contention that Kodak
Imaging Network made products using her images, the
Kodak Defendants state that the three orders placed
involving Wolk’s images were fulfilled by Kodak Imaging
*733 Network’s third-party fulfillment vendors without
any human intervention by any employee of the Kodak
Defendants.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
22
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
site person to give away or for you to sell as prints ...”
Wolk avers that Photobucket and the Kodak Defendants
have transformed her images without license or approval
and have transferred her images to subcontractors who
have produced products using her images without license
or her approval. Photobucket disputes these facts, stating
that there is no evidence that Photobucket transforms
images when users decide to have images made into prints
or other Kodak products. Furthermore, Photobucket states
that it does not transfer images, but rather allows users to
select images which are then automatically sent to Kodak
Imaging Network, and Photobucket had no knowledge of
the images selected and plays no role in how the selected
images are handled by the Kodak Defendants.
Wolk states that in late 2007 or early 2008, she became
aware that her images were being copied, displayed and
modified by users of Photobucket in violation of her
copyrights. Photobucket does not dispute this fact, but
notes that Wolk did not attempt to notify Photobucket of
any purported infringements until May 9, 2008. When
Wolk did notify Photobucket, she did so through the
website, clicking on the image and selecting an option
which allowed her to “report inappropriate content.” Wolk
then selected the “infringes on my copyright” option,
causing a button linking to Photobucket’s “Copyright
Policy” to appear. The Copyright Policy did not define
URL as an abbreviation for “uniform resource locator,” but
the policy did indicate that a URL link should be included
where applicable. Wolk avers that, even after notifying
Photobucket, her images were still displayed, copied and
being modified. Photobucket denies this contention, stating
that when Wolk identified infringing images to
Photobucket via a proper notice with a URL, the images
were removed.
On May 9, 2008, Wolk, in an initial notice, identified an
alleged infringement of a painting the Plaintiff called
“Sanctuary” and included a URL. Wolk’s notice stated, in
part: “Can you please remove my solely owned
copyrighted painting of ‘SANCTUARY’ from this persons
page. I never gave permissions for them or anyone to use
my artworks in this fashion of gliiter, graphics, sparkles,
messeges, etc. All my artworks are copyrighted at the
Library of Congress in Washington D.C. and I am sole
owner of all copyrights.” In a second notice sent on the
same day, Wolk identified two other images, along with
URLs, and stated: “My ‘Tranquility’ COPYRIGHTED
PAINTING (copyrighted in Washington D.C. with the
U.S. Copyright Bureau) WHICH I AM SOLE OWNER OF
is in hennesey page of your website ... photobucket ...
please remove my artwork from this page ...” (ellipses in
original) and “please remove these two paintings of mine
that were altered without permissions and grabbed by your
According to Photobucket, on the following day,
Photobucket advised Wolk that these notices did not fully
comply with Photobucket’s or the DMCA’s requirements
for take-down notices, and Wolk was provided with
instructions on how to provide a complete and compliant
notice. On May 12, 2008, Wolk submitted to Photobucket
revised notices identifying the images with URLs for the
infringements she referenced in her May 9, 2008 notices.
The same day, Photobucket advised Wolk that it had
removed the alleged infringing images.
On January 11, 2010, Gordon P. Black, Corporate Counsel
for Applejack Art Partners, Inc. sent a take-down notice to
Photobucket. The notice explained that Applejack *734 Art
Partners, Inc. is the exclusive licensor of Wolk’s artwork,
and the notice listed 12 URLs and artwork titles for
Photobucket to remove. The same day, Photobucket faxed
a response stating: “We received your fax requesting the
removal of content infringing on Sheila Wolk’s copyright.
Only one direct link was supplied, and we are unable to
find the images by their titles alone. Please provide the
direct links to the images you need removed.” The response
included instructions for how to find the direct link.
Photobucket states that it never received a response to this
January 11, 2010 fax.
Wolk’s initial complaint, filed on May 19, 2010, named 15
of her paintings that were allegedly infringed by
Photobucket. At least six of these alleged infringements
had not been previously identified to Photobucket. Wolk’s
initial complaint did not provide any URLs for her alleged
continuing infringements. On July 2, 1020, Wolk filed her
Amended Complaint that added 7 more titles of paintings.
The Amended Complaint noted that, after filing the initial
complaint but prior to filing the amended complaint, Wolk
provided an additional listing of infringing images to
Photobucket at Photobucket’s request. According to
Photobucket, the notice provided 123 URL-specific
addresses for alleged infringements and, the day after the
notice was received, Photobucket’s then-counsel
responded, stating that Photobucket had removed 102 of
the images, but that additional information was required on
the remaining 21 images. Photobucket states that Wolk
never responded to this request for additional information.
On July 17, 2010, following the filing of the Amended
Complaint, Wolk sent two emails to Photobucket’s counsel
detailing more than 700 URL-identified alleged
infringements. On July 22, 2010, Photobucket’s counsel
responded: “I am writing to report to you that Photobucket
has taken down all of the images you identify by specific
URL in your two e-mails to me dated July 17, As we had
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
23
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
previously requested, those URLs were sufficiently
complete to enable Photobucket to identify each of the
images that you were seeking to have taken down,”
According to Wolk, sample searches she has conducted
have yielded approximately 3,000 infringements of her
images. Wolk states that this represents a small portion of
the full amount of infringements occurring on Photobucket
of her images, and that many or her infringements consist
of multiple duplicates of images, sometimes five or six
copies of the same image by a single user. Photobucket
does not dispute this fact, but states that prior to Wolk filing
this lawsuit, Photobucket received no notice of these other
purported infringements, and these other purported
infringements the Plaintiff has identified post-date the
filing of her initial complaint. Photobucket states that it has
removed each infringing image when it received a DMCAcomplaint notice from Wolk. Wolk states that Photobucket
has failed to implement and remove repeat infringers, and
that Wolk has identified 22 repeat infringers.
The Applicable Standards1
[1] [2]
In addressing the present motions, the Court is
mindful that Wolk is *735 proceeding pro se and that her
submissions are held to “less stringent standards than
formal pleadings drafted by lawyers....” Hughes v. Rowe,
449 U.S. 5, 9, 101 S.Ct. 173, 66 L.Ed.2d 163 (1980)
(quoting Haines v. Kerner, 404 U.S. 519, 520, 92 S.Ct.
594, 30 L.Ed.2d 652 (1972)). The courts “construe the
pleadings of a pro se plaintiff liberally and interpret them
to raise the strongest arguments they suggest.” Fuller v.
Armstrong, 204 Fed.Appx. 987, 988 (2d Cir.2006); see also
Lerman v. Bd. of Elections in City of N.Y., 232 F.3d 135,
139–40 (2d Cir.2000) (“Since most pro se plaintiffs lack
familiarity with the formalities of pleading requirements,
we must construe pro se complaints liberally, applying a
more flexible standard to evaluate their sufficiency that we
would when reviewing a complaint submitted by
counsel.”). However, the courts will not “excuse frivolous
or vexatious filings by pro se litigants,” Iwachiw v. New
York State Dep’t of Motor Vehicles, 396 F.3d 525, 529 n. 1
(2d Cir.2005), and “pro se status ‘does not exempt a party
from compliance with relevant rules of procedural and
substantive law.’ ” Triestman v. Fed. Bureau of Prisons,
470 F.3d 471, 477 (2d Cir.2006) (quoting Traguth v. Zuck,
710 F.2d 90, 95 (2d Cir.1983)).
A. Applicable Standard on a Motion to Amend
[3] [4]
Leave to amend should be “freely give[n] ... when
justice
so
requires.”
Fed.R.Civ.P.
15(a)(2).
Notwithstanding this lenient standard, the decision to grant
or deny leave to amend is within the discretion of the
district court. See Foman v. Davis, 371 U.S. 178, 182, 83
S.Ct. 227, 9 L.Ed.2d 222 (1962). A district court may
properly deny leave to amend for “undue delay, bad faith
or dilatory motive on the part of the movant, repeated
failure to cure deficiencies by amendments previously
allowed, undue prejudice to the opposing party by virtue of
allowance of the amendment, futility of amendment, etc.”
See id.; see also SCS Commc’ns, Inc. v. Herrick Co., Inc.,
360 F.3d 329, 345 (2d Cir.2004) (“[U]nder Fed.R.Civ.P.
15(a), leave to amend a pleading may only be given when
factors such as undue delay or undue prejudice to the
opposing party are absent.”). However, “mere delay is not,
of itself, sufficient to justify denial of a Rule 15(a) motion.”
Parker v. Columbia Pictures Indus., 204 F.3d 326, 339 (2d
Cir.2000).
“Although Rule 15(a) governs the amendment of
pleadings, Rule 16(b) also may limit the ability of a party
to amend a pleading if the deadline specified in the
scheduling order for amendment of the pleadings has
passed.” Kassner v. 2nd Ave. Delicatessen Inc., 496 F.3d
229, 243 (2d Cir.2007). Rule 16(b)(4) provides that “[a]
schedule may be modified only for good cause [.]” The
Second Circuit has held that, where a district court has set
a deadline for amending pleadings, “the Rule 16(b) ‘good
cause’ standard, rather than the more liberal standard of
Rule 15(a), governs a motion to amend filed after the
deadline[.]” Parker, 204 F.3d at 340.
“A finding of good cause depends on the diligence of the
moving party.” Grochowski v. Phoenix Constr., 318 F.3d
80, 86 (2d Cir.2003) (affirming denial of leave to amend
where the plaintiffs delayed more than one year, discovery
had completed and a summary judgment motion was
pending). “[T]he good cause standard is not satisfied when
the proposed amendment rests on information ‘that the
party knew, or should have known, in advance of the
deadline.’ ” Enzymotec Ltd. v. NBTY, Inc., 754 F.Supp.2d
527, 536 (E.D.N.Y.2010) (citation omitted) *736 (finding
plaintiff acted with diligence in seeking leave to amend
within two months of discovering the facts underlying its
new cause of action); but see Jackson v. Roslyn Bd. of
Educ., 596 F.Supp.2d 581, 586 (E.D.N.Y.2009) (finding
plaintiff’s delay of nearly five months to evince “a lack of
diligence”).
[5]
Although the moving party’s diligence is a district
court’s “primary consideration” in its Rule 16(b) good
cause inquiry, a court “also may consider other relevant
factors including, in particular, whether allowing the
amendment of the pleading at this stage of the litigation
will prejudice defendants.” Kassner, 496 F.3d at 244. An
amendment is prejudicial to the non-moving party if it
[6]
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
24
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
“would require the opponent to expend significant
additional resources to conduct discovery and prepare for
trial or significantly delay the resolution of the dispute.”
Ruotolo v. City of New York, 514 F.3d 184, 192 (2d
Cir.2008).
B. Applicable Standard on a Motion to Admit Expert
Testimony
[7] [8]
A district court can admit expert testimony from a
person “qualified as an expert by knowledge, skill,
experience, training, or education,” assuming that
“scientific, technical, or other specialized knowledge will
assist the trier of fact to understand the evidence or to
determine a fact in issue.” Fed.R.Evid. 702. Under Daubert
v. Merrell Dow Pharm., Inc., 509 U.S. 579, 113 S.Ct. 2786,
125 L.Ed.2d 469 (1993), and Rule 702 of the Federal Rules
of Evidence, the Court’s role is to determine whether the
“expert” is qualified to testify as an expert. The Court
conducts a two-part inquiry: (1) whether the expert used a
reliable methodology; and (2) whether the testimony will
assist the trier of fact to understand the evidence or to
determine a fact in issue. Daubert, 509 U.S. at 592–93, 113
S.Ct. 2786. The district court should not admit testimony
that is “directed solely to lay matters which a jury is
capable of understanding and deciding without the expert’s
help.” United States v. Castillo, 924 F.2d 1227, 1232 (2d
Cir.1991).
C. Applicable Standard on a Motion for Summary
Judgment
[9]
Summary judgment should be rendered if the pleadings,
the discovery and disclosure materials on file, and any
affidavits show that there is no genuine issue as to any
material fact and that the movant is entitled to judgment as
a matter of law. Fed.R.Civ.P. 56(c). The courts do not try
issues of fact on a motion for summary judgment, but,
rather, determine “whether the evidence presents a
sufficient disagreement to require submission to a jury or
whether it is so one-sided that one party must prevail as a
matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 251–52, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
“The party seeking summary judgment bears the
burden of establishing that no genuine issue of material fact
exists and that the undisputed facts establish [its] right to
judgment as a matter of law.” Rodriguez v. City of N.Y., 72
F.3d 1051, 1060–61 (2d Cir.1995). Summary judgment is
appropriate where the moving party has shown that “little
or no evidence may be found in support of the nonmoving
party’s case. When no rational jury could find in favor of
the nonmoving party because the evidence to support its
[10] [11]
case is so slight, there is no genuine issue of material fact
and a grant of summary judgment is proper.” Gallo v.
Prudential Residential Servs., L.P., 22 F.3d 1219, 1223–24
(2d Cir.1994) (citations omitted). In considering a
summary judgment motion, the Court must “view the
evidence in the light most favorable to the non-moving
party *737 and draw all reasonable inference in its favor,
and may grant summary judgment only when no
reasonable trier of fact could find in favor of the
nonmoving party.” Allen v. Coughlin, 64 F.3d 77, 79 (2d
Cir.1995) (internal citations and quotation marks omitted);
see also Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).
However, “the non-moving party may not rely simply on
conclusory allegations or speculation to avoid summary
judgment, but instead must offer evidence to show that its
version of events is not wholly fanciful.” Morris v. Lindau,
196 F.3d 102, 109 (2d Cir.1999) (quotation omitted).
Plaintiff’s Motion to Amend the Complaint Is Denied
As described above, motions to amend are typically
governed by Fed.R.Civ.P. 15(a), which requires a court to
find undue delay, bad faith or dilatory motive, repeated
failure to cure deficiencies by previously allowed
amendments, or undue prejudice to the opposing party to
justify denial of a motion to amend. However, when a
motion to amend is brought after the deadline set for such
motions by the scheduling order, the motion is governed by
Rule 16(b), which provides that scheduling orders “shall
not be modified except upon a showing of good cause.”
Fed.R.Civ.P. 16(b); Parker, 204 F.3d at 339–40. Wolk’s
motion to amend was filed on June 26, 2011, nearly seven
months after the November 30, 2010 deadline set by the
scheduling order to which the parties stipulated.
Accordingly the Rule 16(b) “good cause” standard will be
applied.
In her amended complaint, Wolk proposes to retract Count
VII, which alleges interference with advantageous business
relations by Kodak Gallery and the Kodak Defendants, and
instead bring a new Count VIII alleging unfair competition
by Kodak Gallery and the Kodak Defendants. The new
count alleges that the Kodak Defendants, without
authorization or license, copied, distributed, produced and
sold the Plaintiff’s work, and that the products the Kodak
Defendants produce are in direct competition with products
produced under license using Wolk’s images by Wolk’s
licensees. As such, the Kodak Gallery and the Kodak
Defendants directly interfere with the commercialization of
the Plaintiff’s images, damaging the Plaintiff in the amount
of $1,500,000. The proposed amended complaint also
requests an award of punitive damages in the amount of
$6,000,000 for the unfair competition of Kodak Gallery
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
25
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
and the Kodak Defendants.
[12]
As described above, when a motion to amend is brought
after the deadline set by the Court, Fed.R.Civ.P. 16(b),
which provides that scheduling orders “shall not be
modified except upon a showing of good cause,” applies.
“Good cause” is not satisfied when the proposed amended
complaint rests on information that the movant “knew, or
should have known, in advance of the deadline.”
Enzymotec, 754 F.Supp.2d at 536. Here, Wolk has not
shown good cause to add a claim for common law unfair
competition. There is no evidence that the unfair
competition claim turns on any facts that were not available
to Wolk when she commenced this action, as all the facts
alleged in the proposed Count VIII were included in her
original amended complaint. As such, Wolk has not shown
the “good cause” necessary to allow her to amend her
complaint after the November 30, 2010 deadline.
While it is true that Wolk is proceeding pro se, even when
her motion to amend is evaluated under the less stringent
standard provided by Fed.R.Civ.P. 15(a), her motion still
fails. Wolk moved to amend her complaint in late June
2011. Her motion comes after she previously amended
*738 her complaint, after the November 30, 2010 deadline
for amending the pleadings, after the motions for summary
judgment were filed and after the June 15, 2011 discovery
deadline. Even under the more liberal Rule 15(a) standard,
it is improper to amend a complaint and add a new claim
in response to a motion for summary judgment when
discovery is complete. See, e.g., AEP Energy Servs. Gas
Holding Co. v. Bank of Am., N.A., 626 F.3d 699, 726–27
(2d Cir.2010) (holding that leave to amend should be
denied where motion to amend was filed after defendant
had filed summary judgment papers based on existing
claims); McCarthy v. Dun & Bradstreet Corp., 482 F.3d
184, 202 (2d Cir.2007) ( “Plaintiffs sought to amend their
complaint after an inordinate delay. By that time, discovery
had closed, defendants had filed for summary judgment,
and nearly two years had passed since the filing of the
original complaint. In light of this record, we conclude that
the district court did not exceed its discretion in denying
plaintiffs’ leave to amend.”). Given that discovery has been
completed, it would be inappropriate to allow the Plaintiff
to amend her complaint at this stage of the litigation.
The Plaintiff cannot meet either the “good cause” standard
under Fed. R. Civ. P. 16(b) or the less stringent standard
provided under Fed.R.Civ.P. 15(a). Accordingly, her
motion to amend the complaint is denied.
Plaintiff’s Motion to Admit Expert Testimony Is Denied
Plaintiff has filed a motion to admit the expert testimony of
Dr. Robert Sarvis. In her motion, Wolk states that Dr.
Sarvis holds a Doctor of Business Administration, has
previously studied probability and statistics, has taught
undergraduate and graduate level courses in business and
statistics at accredited universities and has served as a
consultant on various financial and copyright issues for
over five years. Wolk’s motion states:
The methodology of statistical
analysis employed by Dr. Sarvis is
generally accepted, reliable, and
well tested in the scientific
community. The approach is peer
reviewed and included in most
textbooks on the subject of
population sampling and statistical
analysis. He bases his conclusions
and opinions upon the result of these
statistical surveys for which
standard deviation and statistical
error can and are measured.
Wolk states that Dr. Sarvis’ testimony is important to
adjudicating this case because Dr. Sarvis can address the
irreparable harm to the Plaintiff resulting from the
Defendants’ alleged actions. Furthermore, Wolk states that
Dr. Sarvis will establish that the solicitation and display of
copyrighted images by Photobucket is an integral part of
Photobucket’s business and that the Defendants “turned a
blind eye” to the copying, displaying, transfer and
reproduction of the Plaintiff’s artwork. The Plaintiff’s
motion does not include any written report, opinion,
affidavit or any statement from Dr. Sarvis.
“Whether a purported expert witness is qualified ... is a
‘threshold question’ to be resolved prior to other inquiries.”
See Arista Records LLC v. Lime Group LLC, No. 06 CV
5936(KMW), 2011 WL 1674796, at *2 (S.D.N.Y. May 2,
2011) (citing Nimely v. City of N.Y., 414 F.3d 381, 396 n.
11 (2d Cir.2005)). The only evidence Plaintiff has
submitted attesting to Dr. Sarvis’ qualifications is his
“Vita,” which describes Dr. Sarvis’ educational
background, teaching experience and business and
consulting experience. The Defendants argue that this vita
provides insufficient evidence of Dr. Sarvis’ qualifications
in the field of statistics, noting that Dr. Sarvis’ vita does not
list any degree or professional certification in statistics, nor
does it list any published *739 works or testimony
presented in the field of statistics. However, Dr. Sarvis’
vita does include courses in “business statistics” and states
that he has experience teaching statistics at the
undergraduate and graduate levels. As Judge Weinstein
instructs, “The standard for qualifying expert witnesses is
liberal. This generosity extends to substantive as well as
formal qualifications.” 4 Weinstein’s Federal Evidence, §
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
26
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
702.04[1]. Accordingly, Dr. Sarvis’ testimony will not be
excluded on grounds that his qualifications are insufficient.
The Plaintiff’s motion to admit Dr. Sarvis’ testimony is
denied because the Plaintiff has failed to provide the Court
with information sufficient to conduct a Daubert analysis.
Although discovery in this matter has concluded, no expert
report or statement for the basis of Dr. Sarvis’ opinions has
been provided. While Plaintiff’s failure to serve an expert
report by the April 30, 2011 deadline may be excused on
account of the then-pending (and ultimately unsuccessful)
motion to compel the production of documents to Dr.
Sarvis, the Plaintiff had ample time following the
resolution of that motion to serve a report or seek additional
extensions. The Court’s August 25, 2011 order provided
the Plaintiff until September 15, 2011 to file a motion to
admit Dr. Sarvis as an expert under Daubert, but the
Plaintiff did not serve any report.
technique or theory has gained general acceptance in the
scientific community. See Daubert, 509 U.S. at 593–94,
113 S.Ct. 2786; Williams, 506 F.3d at 160.
[13]
[14] [15]
Under Daubert, the trial court is tasked with
“ensuring that an expert’s testimony both rests on reliable
foundation and is relevant to the task at hand.” Daubert,
509 U.S. at 597, 113 S.Ct. 2786. The proponent of expert
testimony bears the burden, by preponderance of the
evidence, to demonstrate that the admissibility
requirements of Rule 702 are satisfied. See In re NYSE
Specialists Litig., 260 F.R.D. 55, 65 (S.D.N.Y.2009)
(citing United States v. Williams, 506 F.3d 151, 160 (2d
Cir.2007)). Fed.R.Evid. 702 provides:
A witness who is qualified as an expert by knowledge,
skill, experience, training, or education may testify in the
form of an opinion or otherwise if:
(a) the expert’s scientific, technical, or other
specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in
issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles
and methods; and
(d) the expert has reliably applied the principles and
methods to the facts of the case.
In addition to the requirements of Fed.R.Evid. 702,
Daubert enumerates other factors which bear on the
reliability of proposed expert testimony, including (i)
whether the theory or technique can be tested; (ii) whether
the theory or technique has been subject to peer review;
(iii) the technique’s “known or potential rate of error” and
“the existence and maintenance of standards controlling
the technique’s operation”; and (iv) whether a particular
Here, the Plaintiff asks the Court to conduct a Daubert
analysis based solely on her descriptions of Dr. Sarvis’
conclusions. No explanation has been provided regarding
Dr. Sarvis’ methods, excepting the Plaintiff’s contention
that “[t]he methodology of statistical analysis employed by
Dr. Sarvis is generally accepted, reliable, and well tested in
the scientific community.” Even if this contention is
accepted, the Plaintiff’s motion fails to allege any facts
which support the methodology’s acceptance *740 in the
scientific community. The motion does not identify any
peers who have reviewed the methodology or any data to
support the methodology’s acceptance or reliability. The
motion fails to present sufficient facts or data upon which
Dr. Sarvis’ opinions are based, a sufficient description of
the principles and methods Dr. Sarvis’ employed or a
description of how Dr. Sarvis’ applied his methodology to
the facts of the case. Because the Plaintiff’s motion fails to
meet the criteria established in Fed.R.Evid. 702 or
Daubert, the Plaintiff’s motion to admit expert testimony
must be denied.
Plaintiff’s Motions for Partial Summary Judgment
Against the Kodak Defendants and Summary Judgment
Against Photobucket Are Denied, and Defendants’
Motions for Summary Judgment Are Granted
On May 2, 2011, Wolk moved for partial summary
judgment against the Kodak Defendants. The Kodak
Defendants have opposed the Plaintiff’s motion for partial
summary judgment and have filed a cross-motion for
summary judgment on all counts. In addition, Photobucket
has filed a motion for summary judgment seeking dismissal
of all the Plaintiff’s claims, to which Wolk has responded
with a cross-motion for summary judgment against
Photobucket. For the reasons stated below, the Plaintiff’s
motions for partial summary judgment against the Kodak
Defendants and summary judgment against Photobucket
are denied, and the Defendants’ motions for summary
judgment are granted.
A. The Plaintiff’s Motion For Partial Summary
Judgment With Respect To The Kodak Defendants Is
Denied, And The Kodak Defendants’ Motion For
Summary Judgment Is Granted
Wolk has moved for partial summary judgment against the
Kodak Defendants, seeking a declaratory ruling that the
Kodak Defendants infringed on the copyrights of the
Plaintiff, that the Kodak Defendants are not a “service
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
27
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
provider” or, in the alternative, are not protected by the safe
harbor provisions of the DMCA, that the Kodak
Defendants’ infringement was willful and that the Plaintiff
is entitled to statutory damages under 17 U.S.C. §
504(a)(2), (c)(1) and (c)(2) per work of art infringed. In the
Complaint, there are four counts pertaining to the Kodak
Defendants: Count I requesting a declaratory judgment that
the Defendants’ infringed upon the Plaintiff’s copyrights,
Count II requesting a permanent injunction, Count VI
alleging direct liability for infringement by Kodak Gallery
and the Kodak Defendants and Count VII alleging
interference with advantageous business relations by
Kodak Gallery and the Kodak Defendants. In her reply
brief in support of the motion for partial summary
judgment, the Plaintiff has stated that she waives her claims
for tortious interference against the Kodak Defendants.
Accordingly, the remaining question relevant to whether
the Kodak Defendants can be held liable is whether the
Kodak Defendants engaged in direct infringement of
Wolk’s copyrighted images.2
In her motion, Wolk details ten instances where the Kodak
Defendants allegedly *741 made, sold and shipped
products using Wolk’s copyrighted images without
obtaining Wolk’s permission or a valid license. Because
the Copyright Act, 17 U.S.C. § 106(1), (2) and (5), grants
the owner of the copyright exclusive rights to reproduce,
produce derivative works and distribute the copyrighted
images, Wolk argues that the Kodak Defendants’ creation
and distribution of these products causes them to be liable
for statutory damages as set forth in 17 U.S.C. § 504(a)(2),
(c)(1) and (c)(2). Although direct infringement is not a
strict liability tort, Wolk alleges that the Kodak
Defendants’ infringing activity meets the level of
“volition” required under the Second Circuit case of
Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121,
130–31 (2d Cir.2008) because the Kodak Defendant’s
made copies of her images and transformed them into
products, thereby changing the Kodak Defendants’ status
from being “passive providers of a space in which
infringing activities happen to occur to active participants
in the process of copyright infringement.” Arista Records
LLC v. Usenet.com, Inc., 633 F.Supp.2d 124, 148
(S.D.N.Y.2009). Wolk also argues that, unlike Cartoon
Network where the defendants made a single copy, the
Kodak Defendants have made multiple copies, modifying
Wolk’s artwork to conform to a particular product. As
such, Wolk concludes that the Kodak Defendants have
directly infringed.
Wolk avers that the Kodak Defendants do not qualify for
the safe harbor the DMCA affords to “service providers”
where incidental infringement occurs when these service
providers perform Internet functions, such as providing
storage at the discretion of a user. The Plaintiff further
contends that Eastman Kodak is vicariously liable because
Kodak Imaging Network is a wholly-owned subsidiary of
Eastman Kodak.
Wolk states that she is entitled to statutory damages and
that, pursuant to 17 U.S.C. § 504(c)(1), the Kodak
Defendants are obligated to pay damages on a per image
basis. The Plaintiff notes that statutory damages are
awarded when no actual damages are proven or actual
damages and profits are difficult or impossible to calculate,
and, in this case, the Kodak Defendants have either
intentionally or with wanton disregard failed to keep and
maintain the records necessary to calculate damages. Wolk
contends that, since the Kodak Defendants cannot
demonstrate either that they were unaware or that they had
no reason to believe that their acts constituted
infringement, the Kodak Defendants’ are strictly liable,
their infringement is considered “willful” under the statute
and the district court has discretion to increase the damages
award up to $150,000 per “willfully” infringed work,
pursuant to 17 U.S.C. § 504(c)(2). In support of this
argument, Wolk notes that Dr. Sarvis and his assistant were
able to purchase products that contained Wolk’s
copyrighted images after this action had been filed, and,
under applicable Second Circuit precedent, where
sophisticated defendants knew or should have known that
their conduct was infringing, those defendants
infringement is classified as “willful.” See Twin Peaks
Prods., Inc. v. Publications Int’l, Ltd., 996 F.2d 1366, 1382
(2d Cir.1993). The Plaintiff argues that this is a case where
the imposition of statutory damages is necessary as a
deterrent to protect artists, who often have limited
resources and are unable to protect their rights.
“To establish a claim of copyright infringement, a
plaintiff must establish (1) ownership of a valid copyright,
and (2) unauthorized copying or a violation of one of the
other exclusive rights afforded copyright owners pursuant
to the Copyright Act.” *742 Byrne v. British Broad. Corp.,
132 F.Supp.2d 229, 232 (S.D.N.Y.2001) (citing Twin
Peaks, 996 F.2d at 1372). Direct liability requires
“volitional conduct” that “causes” the infringement. See
Cartoon Network, 536 F.3d at 131. In Cartoon Network,
the Second Circuit addressed a case involving
Cablevision’s Remote Storage Digital Video Recorder
system, which allowed cable television subscribers to
select programs to be reproduced onto Cablevision’s hard
drives for later playback. See Cartoon Network, 536 F.3d
at 123–25, 130. In determining whether Cablevision could
be held liable for creating an unauthorized reproduction of
a television program, the Second Circuit adopted the
“volition standard”, noting that:
[T]o establish direct liability under
[16] [17]
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
28
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
... the [Copyright] Act, something
more must be shown than mere
ownership of a machine used by
others to make illegal copies. There
must be actual infringing conduct
with a nexus sufficiently close and
causal to the illegal copying that one
could conclude that the machine
owner himself trespassed on the
exclusive domain of the copyright
owner. Id. at 130.
In deciding the case, the Second Circuit held that
“Cablevision’s conduct in designing, housing and
maintaining a system that exists only to produce a copy”
was not sufficiently proximate to any instance of
unauthorized copying instigated by a Cablevision customer
to hold Cablevision liable as a direct infringer. Id. at 131.
Rather, “by selling access to a system that automatically
produces copies on command, Cablevision more closely
resembles a store proprietor who charges customers to use
a photocopier on his premises and it seems incorrect to say,
without more, that such a proprietor ‘makes’ any copies
when his machines are actually operated by his customers.”
Id. at 132. Accordingly, the Second Circuit reversed the
summary judgment that had been entered against
Cablevision. Id.
[18]
[19]
Applying Cartoon Network to the Kodak
Defendants, there is no evidence of volitional conduct,
thereby preventing Wolk from establishing direct liability.
Wolk has presented two theories to hold the Kodak
Defendants liable for infringement: first, the Kodak
Defendants infringed because they reproduced her images
onto various products; and second, the Kodak Defendants
infringed because an electronic preview page is generated
on the Kodak Gallery website when a user is making an
order for a product bearing an image imported from the
Photobucket website. However, the evidence the Kodak
Defendants have offered, which Wolk has not rebutted, is
that the transfer of information about an order from the
KODAK Gallery website to the fulfillment vendor is done
electronically through an automated computer system and
that all of the information displayed on the KODAK
Gallery website, including the simulation of products
containing the Photobucket images, is done electronically.
There is no dispute that any reproduction, display or
transmission of the Plaintiff’s images by or through the
KODAK Gallery website is an automated process with no
human intervention by any employee of the Kodak
Defendants. The fact that Wolk’s images are copied into
product simulations in addition to being transmitted to
fulfillment vendors does not constitute a volitional act
where the copying is automated. See Disney Enters., Inc.
v. Hotfile Corp., 798 F.Supp.2d 1303, 1309 (S.D.Fla.2011)
(“Finally, the plaintiffs contend that they have alleged a
volitional act because they have alleged that hotfile.com
makes additional copies once the copyrighted material is
uploaded to the server. This argument too fails, for courts
have repeatedly held that the automated conduct of
software, unaided by human intervention, is not
‘volitional.’ ”). Furthermore, the display of copyrighted
images on a defendant’s website *743 does not
demonstrate volition. See CoStar Grp., Inc. v. LoopNet,
Inc., 373 F.3d 544, 550 (4th Cir.2004) (holding that
Internet service provider did not engage in volitional
conduct sufficient for copyright liability where user of
service posted copyrighted images that were displayed on
defendant’s website) (cited by Cartoon Network, 536 F.3d
at 130–31). Because the Plaintiff has failed to establish any
volitional conduct, the Kodak Defendants are not liable for
direct infringement.
Because the Kodak Defendants cannot be held liable for
direct infringement, the issues of whether they fall under
the DMCA’s “safe harbor” provision, whether their alleged
infringement was “willful” under the statute and whether
Wolk is entitled to damages per work of art infringed need
not be reached. Similarly, although the Kodak Defendants
dispute whether the Plaintiff has properly asserted a claim
of vicarious liability against Eastman Kodak, there is no
need to address this issue because the Plaintiff has not
established liability on the part of either of the Kodak
Defendants.
B. The Plaintiff’s Cross–Motion For Summary
Judgment Against Photobucket Is Denied, And
Photobucket’s Motion For Summary Judgment Is
Granted
There are five counts in the Complaint applicable to
Photobucket: Count I requesting a declaratory judgment
that Photobucket has infringed on Wolk’s copyrights,
Count II requesting a permanent injunction preventing
Photobucket from continuing to infringe, Count III alleging
contributory copyright infringement, Count IV alleging
vicarious copyright infringement and Count V alleging
direct infringement. On September 23, 2011, Photobucket
filed its motion for summary judgment with respect to all
counts. In response, Wolk filed her opposition to
Photobucket’s motion as well as a cross-motion seeking
summary judgment against Photobucket. For the reasons
stated below, Wolk’s cross-motion for summary judgment
fails, and Photobucket’s motion for summary judgment is
granted with respect to all counts.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
29
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
1. Photobucket Cannot Be Held Liable Because It
Falls Within The DMCA’s “Safe Harbor”
Photobucket cannot be held liable for infringing upon
Wolk’s copyrighted work because Photobucket falls within
the DMCA’s “safe harbor,” thereby protecting
Photobucket against the Plaintiff’s copyright infringement
claims.
F.Supp.2d at 1100 (“This definition encompasses a broad
variety of Internet activities.”). Courts have found services
similar to Photobucket, such as Youtube.com and
Veoh.com, to be “service providers” under the DMCA. See
Viacom Int’l, Inc. v. YouTube, Inc., 718 F.Supp.2d 514, 518
(S.D.N.Y.2010); Io Grp., 586 F.Supp.2d at 1143. Because
Photobucket offers a site that hosts and allows online
sharing of photos and videos at the direction of users,
Photobucket, like YouTube.com or Veoh.com, qualifies as
a “service provider” under § 512(k)(1)(B).
[22]
A. Photobucket Meets The Threshold Requirements
To Qualify For The DMCA’s “Safe Harbor”
Provisions
To qualify for the “safe harbor” provisions under the
DMCA, a party must meet certain threshold requirements,
including that the party (1) must be a “service provider” as
defined by the statute; (2) must have adopted and
reasonably implemented a policy for the termination in
appropriate circumstances of users who are repeat
infringers; and (3) must not interfere with standard
technical measures used by copyright owners to identify or
protect copyrighted works. Corbis Corp. v. Amazon.com,
Inc., 351 F.Supp.2d 1090, 1099 (W.D.Wash.2004),
overruled on other grounds, Cosmetic Ideas, Inc. v.
IAC/Interactivecorp., 606 F.3d 612 (9th Cir.2010); Io Grp.,
Inc. v. Veoh Networks, Inc., 586 F.Supp.2d 1132, 1142–43
(N.D.Cal.2008).
[20]
Photobucket has also adopted and reasonably
implemented a policy for the termination in appropriate
circumstances of users who are repeat infringers. Pursuant
to 17 U.S.C. § 512(i), to qualify for a safe harbor, a service
provider must demonstrate that it has “adopted and
reasonably implemented, and informs subscribes and
account holders of the service provider’s system or
network of, a policy that provides for the termination in
appropriate circumstances of subscribers and account
holders of the service provider’s system or network who
are repeat infringers.” 17 U.S.C. § 512(i)(1)(A); see also
Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1109 (9th
Cir.2007). To fulfill the requirements of 17 U.S.C. § 512(i),
a service provider must (i) adopt a policy that provides for
the termination of service access for repeat copyright
infringers; (ii) inform users of the service policy; and (iii)
implement the policy in a reasonable manner. Corbis, 351
F.Supp.2d at 1100; see also Perfect 10, 488 F.3d at 1109–
15.
[21]
Photobucket meets the applicable definition of a
“service provider” under the DMCA. The DMCA includes
two definitions of the term “service provider:”
(A) As used in subsection (a), the term ‘service provider’
means an entity offering the transmission, routing, or
providing of connections for digital online
communications, between or among points *744
specified by a user, of material of the user’s choosing,
without modification to the content of the material as
sent or received.
(B) As used in this section, other than in subsection (a),
the term ‘service provider’ means a provider of online
services or network access, or the operator of facilities
therefor, and includes an entity described in
subparagraph (A).
17 U.S.C. § 512(k)(1). Because Photobucket is eligible
under the “safe harbor” contained in 17 U.S.C. § 512(c),
the broader definition included in 17 U.S.C. § 512(k)(1)(B)
is applicable. See Io Grp., 586 F.Supp.2d at 1143 n. 7. The
DMCA’s definition of “service provider” is intended to
encompass a broad set of Internet entities. See Corbis, 351
In her opposition papers, Wolk has alleged that
Photobucket does not terminate repeat infringers and that
Photobucket has merely “given lip service to this and
created a paper policy it does not enforce.” The evidence,
however, establishes that Photobucket has developed a
policy under which copyright holders can submit a takedown notice and that this policy was made available to the
public on Photobucket’s website. When Photobucket
received Wolk’s take-down notices, both those that
included URLs as well as those that did not, Photobucket
acted to remove the infringing material. As such, the
evidence presented indicates that Photobucket has fulfilled
the requirements of 17 U.S.C. § 512(i), having adopted,
informed users of and reasonably implemented a policy of
terminating users who repeatedly infringe copyrights.
Photobucket also meets the third threshold qualification, as
it “accommodates and does not interfere with standard
technical measures.” 17 U.S.C. § 512(i)(1)(B). As
described by the Court in Io Group, “standard technical
measures” are defined as “technical measures that are used
by copyright owners to identify or protect copyrighted
works” and which have been developed pursuant to a broad
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
30
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
consensus of copyright owners and service providers in an
open, fair, voluntary, multi-industry standards process, are
available to any person on reasonable and
nondiscriminatory terms and do not impose *745
substantial costs on service providers or substantial
burdens on their systems or networks. See Io Grp., 586
F.Supp.2d at 1142 n. 6.
[23]
Wolk argues that, because Photobucket affords its users
computer tools that allow users to obliterate, hide or crop
out the copyright watermarks on the electronic images
uploaded, Photobucket is precluded from using the DMCA
“safe harbor.” Wolk’s contention is that Photobucket has
developed these tools because, if users could not remove
the watermark, Photobucket’s business would suffer
because those users who seek copyrighted art and photos
would be unable to obtain them for free. However, the
Plaintiff does not suggest that Photobucket advises or
encourages its users to use the photo-editing tools to
circumvent the copyright. The fact that the watermarks
appear suggests that Photobucket does, indeed,
accommodate “standard technical measures.” While the
Plaintiff argues that the editing software “interfere[s] with
standard technical measures,” it is not Photobucket, but
rather users, who would use the editing tools to attempt to
circumvent copyright protection measures that were
already on the site. Accordingly, the editing tools
Photobucket provides do not disqualify it from “safe
harbor” eligibility.
system or network is infringing;
(ii) in the absence of such actual knowledge, is not
aware of facts or circumstances for which
infringing activity is apparent; or
(iii) upon obtaining such knowledge or awareness,
acts expeditiously to remove, or disable access to,
the material;
(B) does not receive a financial benefit directly
attributable to the infringing activity, in a case in
which the service provider has the right and ability
to control such activity; and
(C) 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.
(2) Designated agent. The limitations on liability
established in this subjection apply to a service
provider only if the service provider has designated an
agent to receive notifications of claimed infringement
described in paragraph (3), by making available
through its service, including on its website in a
location accessible to the public, and by providing to
the Copyright Office, substantially the following
information:
*746 (A) the name, address, phone number, and
electronic mail address of the agent.
B. Photobucket Is Sheltered From Liability Under 17
U.S.C. § 512(c)
[24]
Once the threshold requirements are met, a party may
be eligible for one or more of the four “safe harbor”
provisions codified at 17 U.S.C. § 512(a) through § 512(d).
In this case, the most applicable “safe harbor” is that
included in 17 U.S.C. § 512(c):
(c) Information residing on systems or networks at
direction of users.
(1) In general. 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—
(A)(i) does not have actual knowledge that the
material or an activity using the material on the
(B) Other contact information which the Register
of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current
directory of agents available to the public for
inspection, including through the Internet, in both
electronic and hard copy formats, and may require
payment of a fee by service providers to cover the
costs of maintaining the directory.
Here, Photobucket has fulfilled all the statutory conditions
necessary to be sheltered from liability.
i. Photobucket Did Not Have Actual Knowledge Of
The Infringing Activity, Was Not Aware Of Any Facts
From Which Infringing Activity Was Apparent And
Expeditiously Removed Infringing Material When It
Obtained Sufficient Information
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
31
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
As described in the statute above, to meet the eligibility
requirements of the 17 U.S.C. § 512(c) “safe harbor”
provision, Photobucket must show, inter alia, that it did not
have actual knowledge that the material or an activity using
the material on the system or network is infringing and was
not aware of facts or circumstances from which infringing
activity is apparent. Where a service provider does obtain
either actual or apparent knowledge, it may still enjoy the
“safe harbor” if it acts expeditiously to remove or disable
access to the infringing material.
There is no evidence that Photobucket had actual or
constructive knowledge of the copyright infringement
Wolk alleges. To be DMCA-compliant so as to constitute
notice sufficient to give knowledge to a service provider of
infringement, the notice a copyright owner submits to the
service provider must include six elements: (1) a physical
or electronic signature of a person authorized to act on
behalf of the owner of an exclusive right that is allegedly
infringed; (2) identification of the copyrighted work
claimed to have been infringed; (3) 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; (4) information reasonably sufficient to permit
the service provider to contact the complaining party; (5) 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;
and (6) 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
copyright owner. See 17 U.S.C. § 512(c)(3); see also
Hendrickson v. eBay, Inc., 165 F.Supp.2d 1082, 1089
(C.D.Cal.2001).
As described above, prior to the commencement of this
litigation, Wolk provided Photobucket with fifteen notices
of the infringement of nine different works. Eleven of these
notices were not DMCA-compliant. Wolk argues that these
fifteen notices serve as DMCA-compliant notice of any and
all other unidentified alleged infringements of these nine
works that may appear on the Photobucket site, thereby
providing Photobucket with the requisite knowledge
necessary to require it to remove those alleged
infringements. The Plaintiff, however, is incorrect. Section
512(c)(3)(A)(iii) and 512(c)(3)(A)(v) require a DMCAcompliant take-down notice to provide “[i]dentification 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 *747
reasonably sufficient to permit the service provider to
locate the material” and a “statement that the complaining
party has a good faith belief that the use of the material in
the manner complained of is not authorized by the
copyright owner, its agent, or the law.” 17 U.S.C. §§
512(c)(3)(A)(iii), 512(c)(3)(A)(v). “An example of such
sufficient information would be a copy or description of the
allegedly infringing material and the so-called ‘uniform
resource locator’ (URL) (i.e. web site address) which
allegedly contains the infringing material.” Viacom, 718
F.Supp.2d at 521. In Viacom, the Court rejected the
plaintiffs’ complaint that the service provider, YouTube,
“remove[d] only the specific clips identified in DMCA
notices, and not other clips which infringe the same
works.” Id. at 528. The same reasoning applies here:
Photobucket cannot be held liable for its failure to remove
images for which the Plaintiff failed to provide proper
notice.
Although Wolk advocates for a system where one notice of
infringement would apply to all instances of that image
appearing on the website, it would be irresponsible for
Photobucket to assume infringement in the way the
Plaintiff describes. Because Wolk and other copyright
holders retain the right to license their work, a policy under
which Photobucket assumes infringement could result in
Photobucket unlawfully blocking others from uploading
images to which they hold valid licenses. Notices that do
not identify the specific location of the alleged
infringement are not sufficient to confer “actual
knowledge” on the service provider. See UMG Recordings,
Inc. v. Veoh Networks Inc., 665 F.Supp.2d 1099, 1108–09
(C.D.Cal.2009) (“If merely hosting user-contributed
material capable of copyright protection were enough to
impute actual knowledge to a service provider, the section
512(c) safe harbor would be a dead letter because vast
portions of content on the internet are eligible for copyright
protection.”); Hendrickson, 165 F.Supp.2d at 1082
(“[DMCA] expressly provides that if the copyright
holder’s attempted notification fails to ‘comply
substantially’ with the elements of notification described in
subsection (c)(3), that notification shall not be considered
when evaluating whether the service provider had actual or
constructive knowledge of the infringing activity ...”).
In those circumstances where Wolk validly notified
Photobucket of infringing activity, it is undisputed that
Photobucket has acted promptly to take down the
infringing material in an expeditious manner. Even in
instances where notices were non-compliant, Photobucket
acted to remove the material.
Accordingly, because Photobucket did not have knowledge
that the material or an activity using the material on the
system or network was infringing, was not aware of facts
or circumstances from which infringing activity is apparent
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
32
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
and acted expeditiously to remove infringing material
when it became aware, Photobucket is entitled to the
protection of the “safe harbor” afforded under 17 U.S.C. §
512(c).
infringing. The Defendants’ profits are derived from the
service they provide, not a particular infringement.
Furthermore, Photobucket has no knowledge of which
images users may select to send to the Kodak Defendants
to be printed, and, as such, Photobucket has no ability to
control whether users request that infringing material be
printed.
ii. Photobucket Does Not Have The “Right And Ability
To Control” And Does Not Receive Direct Financial
Benefit From The Alleged Infringing Activity
Because the evidence does not support a finding that
Photobucket received “a financial benefit directly
attributable to the infringing activity, in a case in which the
service provider has the right and ability to control such
activity,” the limitation to the “safe harbor” provided in 17
U.S.C. § 512(c)(1)(B) does not apply to Photobucket.
Section 512(c)(1)(B) conditions the availability of the
“safe harbor” on the service provider not receiving “a
financial benefit directly attributable to the infringing
activity, in a case in which the service provider has the right
and ability to control such activity.” In other words, the
service provider complies with the provision if it “either
does not have the right and ability to control the infringing
activity, or—if it does—that it does not receive a financial
benefit directly attributable to the infringing *748 activity.”
Io Grp., 586 F.Supp.2d at 1146.
“[T]he right and ability to control infringing activity, as the
concept is used in the DMCA, cannot simply mean the
ability of a service provider to remove or block access to
materials posted on its website or stored on its system.”
Corbis, 351 F.Supp.2d at 1110. Instead, such a right and
ability to control must take the form of prescreening
content, rendering extensive advice to users regarding
content and editing user content. See id. In this case,
Photobucket does not engage in such activities, and,
considering that millions of images are uploaded daily, it is
unlikely that this kind of prescreening is even feasible. Cf.
Io Grp., 586 F.Supp.2d at 1153 (where “hundreds of
thousands of video files” had been uploaded to a website,
the Court found that “no reasonable juror could conclude
that a comprehensive review of every file would be
feasible”).
There is also no evidence that Photobucket receives “a
financial benefit directly attributable to the infringing
activity.” As noted by the Ninth Circuit in Perfect 10,
where there is no evidence in the record that the service
provider “attracted or retained subscriptions because of the
infringement or lost subscriptions because of its eventual
obstruction of the infringement,” no reasonable jury could
conclude that the service provider received a direct
financial benefit from providing access to the infringing
material. Perfect 10, 488 F.3d at 1118. While Wolk alleges
that Photobucket receives a financial benefit from
infringements from a profit-sharing relationship with the
Kodak Defendants, there is no evidence indicating that
either the Kodak Defendants or Photobucket capitalizes
specifically because a given image a user selects to print is
iii. Upon Notification Of Claimed Infringement,
Photobucket Responded To Remove The Allegedly
Infringing Material
To be eligible for the “safe harbor” provided in 17 U.S.C.
§ 512(c), it must be shown that a 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.” As described above,
whenever Wolk had validly notified Photobucket of
infringing activity, Photobucket acted promptly to take
down the infringing material in an expeditious manner. In
those instances where Wolk’s notices were non-DMCA
compliant, Photobucket still acted to remove the material
to the best of its ability.
iv. Photobucket Has Designated An Agent To Receive
Notifications Of Claimed Infringements
Finally, to be eligible for the “safe harbor” under 17 U.S.C.
§ 512(c), a service provider must designate an agent to
receive DMCA notifications. The statute requires that the
service provider make “available through its service,
including on its website in a location accessible to the
public, and by providing to the Copyright *749 Office,
substantially the following information ... the name,
address, phone number, and electronic mail address of the
agent.” 17 U.S.C. § 512(c)(2). Here, the evidentiary record
includes instructions Photobucket provided on its website
that included the following contact information for
Photobucket’s designated copyright agent:
Copyright Agent
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
33
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
Photobucket.com, Inc.
PO Box 13003
Denver, CO 80201
abuse@photobucket.com
Fax: (303) 395–1165
Although this contact information does not include a name
or phone number, the statute mandates that the service
provider
provide
“substantially
the
following
information,” and by including the address, email address
and fax number of the copyright agent, Photobucket has
included sufficient information to have designated an
agent.
v. Photobucket Has No Duty To Police Its Website For
Infringements
As described above, Photobucket is a website that consists
of over 9 billion images and videos. Under the Plaintiff’s
theory, Photobucket would be required to police its website
for infringing copies of her work wherever they may
appear once she has provided a DMCA-compliant notice.
However, under 17 U.S.C. § 512(m), the DMCA limits
Photobucket’s obligations:
(m) Protection of privacy. Nothing in this section shall
be construed to condition the applicability of subsections
(a) through (d) on(1) a service provider monitoring its service or
affirmatively seeking facts indicating infringing
activity, except to the extent consistent with a
standard technical measure complying with the
provisions of subsection (i); or
(2) a service provider gaining access to, removing, or
disabling access to material in cases in which such
conduct is prohibited by law.
“The DMCA is explicit: it shall not be construed to
condition ‘safe harbor’ protection on ‘a service provider
monitoring its service or affirmatively seeking facts
indicating infringing activity ....” Viacom, 718 F.Supp.2d
at 524 (citing Perfect 10, 488 F.3d at 1113). Thus, the
DMCA does not require the policing the Plaintiff suggests.
Because Photobucket fulfills all the required provisions of
the statute and because the DMCA does not require the
active enforcement the Plaintiff has described,
Photobucket is able to take advantage of the “safe harbor”
provision under 17 U.S.C. § 512(c). Accordingly,
Photobucket “shall not be liable for monetary relief, or ...
for injunctive relief 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.” 17 U.S.C. § 512(c)(1).
2. Photobucket Cannot Be Held Liable For
Contributory Or Vicarious Infringement
In Counts III and IV of her complaint, Wolk alleges
contributory and vicarious copyright infringement by
Photobucket. Because Photobucket is afforded the
protection of the DMCA’s “safe harbor” provision, these
secondary infringement claims are also dismissed. See
Viacom, 718 F.Supp.2d at 529 (“Defendants are granted
summary judgment that they qualify for the protection of
17 U.S.C. § 512(c) ... against all of plaintiffs’ claims for
direct and secondary copyright infringement.”). However,
in addition to having the protection of this “safe harbor”
provision, there are additional reasons why Photobucket
cannot, in this case, be held liable for contributory or
vicarious copyright infringement.
*750 [25] [26] [27] [28] A defendant may be secondarily liable
for another’s infringement. While “[t]he Copyright Act
does not expressly render anyone liable for infringement
committed by another,” it “does not preclude the
imposition of liability for copyright infringements on
certain parties who have not themselves engaged in the
infringing activity.” Sony, 464 U.S. at 434–35, 104 S.Ct.
774. Through contributory infringement, one infringes “by
intentionally
inducing
or
encouraging
direct
infringement.” Metro–Goldwyn–Mayer Studios Inc. v.
Grokster, Ltd., 545 U.S. 913, 930, 125 S.Ct. 2764, 162
L.Ed.2d 781 (2005). Vicarious infringement exists where
one “profit[s] from direct infringement while declining to
exercise a right to stop or limit it.” Id. As these definitions
suggest, in order to hold a defendant secondarily liable
someone else must have directly infringed on the copyright
holder’s rights. See Faulkner v. National Geographic
Enterprises Inc., 409 F.3d 26, 40 (2d Cir.2005) (“[T]here
can be no contributory infringement absent actual
infringement.”); Matthew Bender & Co. v. West Publ’g
Co., 158 F.3d 693, 706 (2d Cir.1998) (rejecting plaintiff’s
contributory infringement claim, in part, because the
plaintiff “has failed to identify any primary infringer”).
Here, however, the Plaintiff has failed to adduce sufficient
evidence to support a claim for either contributory or
vicarious infringement.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
34
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
i. The Evidence Does Not Support The Plaintiff’s
Allegation Of Contributory Infringement
Count III of Wolk’s complaint alleges that
Photobucket engaged in the contributory infringement of
Wolk’s copyrighted artwork because of its business
relationship with the Kodak Defendants. “To establish a
claim for contributory copyright infringement, a plaintiff
must allege that the defendant ‘with knowledge of the
infringing activity, induced, caused, or materially
contributed to the infringing conduct of another.’ ” Brought
to Life Music, Inc. v. MCA Records, Inc., No. 02 CIV.
1164, 2003 WL 296561, at *2 (S.D.N.Y. Feb. 11, 2003)
(quoting Gershwin Publ’g Corp. v. Columbia Artists
Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir.1971)). An
allegation that a defendant “merely provid[ed] the means
to accomplish an infringing activity” is insufficient to
establish a claim for contributory infringement. Livnat v.
Lavi, No. 96 CIV. 4967, 1998 WL 43221, at *3 (S.D.N.Y.
Feb. 2, 1998); see also Quiroga v. Fall River Music, Inc.,
No. 93 CIV. 3914, 1998 WL 851574, at *37 (S.D.N.Y.
Dec. 7, 1998) (“A mere allegation that the defendant
provided the third party with the opportunity to engage in
wrongful conduct would not even be enough to survive a
motion to dismiss.”). Participation must be “substantial.”
Demetriades v. Kaufmann, 690 F.Supp. 289, 294
(S.D.N.Y.1988). In addition to establishing a defendant’s
substantial participation, the plaintiff must also
demonstrate the defendant’s knowledge of the infringing
activity. One who “supplies another with instruments by
which another commits a tort, must be shown to have
knowledge that the other will or can reasonably be
expected to commit a tort with the supplied instrument. The
test is whether [the] wrongdoing ... might well have been
anticipated by the defendant.” Display Producers, Inc. v.
Shulton, Inc., 525 F.Supp. 631, 633 (S.D.N.Y.1981).
“[O]ne who furnishes a copyrighted work to another but is
innocent of any knowledge of the other party’s intended
illegitimate use will not be liable.” Livnat, 1998 WL 43221,
at *3.
[29] [30] [31]
In this case, the Plaintiff has failed to establish the elements
required to state a claim for contributory infringement. The
Plaintiff has not demonstrated Photobucket to have acted
with knowledge that it was passing along infringing images
to the *751 Kodak Defendants. There is also no evidence
that Photobucket and the Kodak Defendants acted in
concert to infringe upon the Plaintiff’s rights. Instead, the
evidence suggests that the Photobucket website was, at
most, a means for unidentified users of the website to
accomplish an infringing activity. Although the Plaintiff
invokes Metro–Goldwyn–Mayer Studios, 545 U.S. 913,
125 S.Ct. 2764, A & M Records, Inc. v. Napster, 239 F.3d
1004 (9th Cir.2001) and In re Aimster Copyright Litig., 334
F.3d 643 (7th Cir.2003), in support of her claim for
contributory infringement, these cases address facts that do
not exist in the present action. While those three cases
involved peer-to-peer websites and evidence that
facilitating the unauthorized exchange of copyrighted
material was a central component of the defendants’
business strategy, the Plaintiff in this case has presented no
evidence suggesting that Photobucket sought to encourage
copyright infringement or promoted its service as a means
of circumventing copyright. Additionally, as described
above, the Plaintiff bears the burden of establishing
Photobucket’s knowledge of the infringing activity. The
Plaintiff’s attempt to establish knowledge using the notices
the Plaintiff sent is unavailing because, as the Court noted
in Viacom, “knowledge,” means “actual or constructive
knowledge of specific and identifiable infringements of
individual items,” not “a general awareness that there are
infringements.” Viacom, 718 F.Supp.2d at 525. As such,
the Plaintiff has presented insufficient evidence to support
a claim for contributory infringement.
ii. The Evidence Does Not Support The Plaintiff’s
Allegation Of Vicarious Infringement
Count IV of Wolk’s complaint alleges Photobucket
to have engaged in vicarious copyright infringement.
“[O]ne may e vicariously liable if he has the right and
ability to supervise the infringing activity and also has a
direct financial interest in such activities.” Gershwin
Publ’g, 443 F.2d at 1162. Similar to contributory liability,
vicarious infringement “is established if it is shown that a
party, with knowledge of infringing activity, induces,
causes, or materially contributes to the infringing conduct
of another.” Universal City Studios, Inc. v. Nintendo Co.
Ltd., 615 F.Supp. 838, 857 (S.D.N.Y.1985). As described
above, the Plaintiff has presented no evidence that
Photobucket had any “right and ability to supervise” any
alleged infringing activity by the Kodak Defendants, nor is
there evidence suggesting that Photobucket had
“knowledge” of such infringing activity. Accordingly,
Count IV, alleging Photobucket to have vicariously
infringed upon Wolk’s copyrights, is dismissed.
[32] [33]
Conclusion
Based upon the facts and conclusions set forth above,
Wolk’s motion for partial summary judgment against the
Kodak Defendants, motion for summary judgment against
Photobucket, motion to amend, motion to admit expert
testimony and motion to investigate are denied, and the
Defendants’ motions for summary judgment are granted.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
35
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
It is so ordered.
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102
U.S.P.Q.2d 1652
Parallel Citations
Footnotes
1
As noted above, on April 11, 2011, Plaintiff filed a “Motion To Investigate The Subornation And Acts Of Perjury By The
Defendants.” The Plaintiff’s motion states that the affidavit of a defense witness contained false information and that, “on information
and belief,” the Defendants’ attorneys knowingly drafted the false affidavit and permitted it to be filed with the Court.
Notwithstanding the seriousness of her allegations, Wolk has provided no evidence to support her contention that a witness
committed perjury and that two attorneys in this action committed subornation of perjury. The Plaintiff’s accusations are completely
unsupported, and the motion is denied.
2
While a defendant may be held secondarily liable for another’s infringement, see Sony Corp. of Am. v. Universal Studios, Inc., 464
U.S. 417, 434–35, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984), Wolk has not pled any form of secondarily liability with respect to the
Kodak Defendants. Wolk has pled various forms of secondary liability against Photobucket. Accordingly, it is assumed that the only
form of infringement Wolk alleges against the Kodak Defendants is direct infringement.
End of Document
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
36
Wolk v. Kodak Imaging Network, Inc., 840 F.Supp.2d 724 (2012)
2012-1 Trade Cases P 30,185, 81 Fed.R.Serv.3d 698, 102 U.S.P.Q.2d 1652
© 2015 Thomson Reuters. No claim to original U.S. Government Works.
37