The issue of whether a party has engaged in a volitional act, or has the ability to control an infringer, sufficient to result in liability for copyright infringement, either as a direct infringer or through vicarious copyright infringement, has taken on new significance due to the rise of online sellers providing goods and services.  In the recent case Gardner v. CafePress Inc., the United States District Court of the Southern District of California was called upon to determine whether an online sales site is liable for direct and vicarious copyright infringement by virtue of its involvement in the sale of goods that incorporated user supplied matter that violates another’s copyright.  On summary judgment, the District Court found that, under certain circumstances, an online sales platform could be liable for both direct and vicarious copyright infringement.

The defendant, CafePress, is a leading online retailer of user-customized products.  CafePress allows users to upload images of artwork, slogans and designs for printing on items such as shirts, bags and mugs. These images are uploaded at the direction of CafePress users and are stored on CafePress servers through a website, and CafePress provides its users with services including online printing, shipping and related services.  The plaintiff is a wildlife photographer, who discovered that his copyrighted images had been uploaded and printed onto products by CafePress’s users and then sold by such users on CafePress’s website.

In denying of CafePress’s motion for summary judgment with respect to the issue of liability for direct copyright infringement, the court held that Café Press’s business activity was sufficiently volitional. As an initial matter the court determined that the Ninth Circuit requires a finding of volitional conduct in order for there to be direct infringement, notwithstanding arguments by plaintiff that the Supreme Court decision in American Broadcasting Cos. v Aereo militates against a volitional conduct requirement. With respect to volitional conduct, CafePress argued that the cases Fox Broad. Co. v. Dish Network L.L.C. and Cartoon Network LP v. CSC Holdings, Inc. supported the contention that mere providers whose users were the cause of infringement are not liable for copyright infringement, because the providers do not have sufficient volition.  The court distinguished those cases, which both involved customers’ use of digital video recorders (DVRs), largely because the DVR software was entirely automated.  Ultimately, in those cases, the provider had not engaged in enough action to qualify as volitional conduct sufficient for a claim of direct copyright infringement.

The District Court noted that while some of CafePress’s process is similar to the DVR cases—specifically where users upload images to the site and customers request items—a significant portion of the process is done by CafePress itself, namely the production and sale of the allegedly infringing items.  In making the allegedly infringing items, CafePress’s employees respond to a customer request to purchase the item; the process is not fully automated.  Therefore, the court denied CafePress’s motion for summary judgment on the direct copyright infringement cause of action.

The District Court applied an analogous concept to CafePress’s motion for summary judgment with respect to the second element required for a finding of vicarious copyright infringement – : that the party had “the right and ability to control” a third party’s infringing activity.  Unlike online sites such as Amazon and eBay, who have been found not liable for copyright infringement for sales listed by others, CafePress was found to have active control over at least some of the allegedly infringing items during the process in which CafePress produces and then ships those items to customers.  Thus, while CafePress’s actions in response to allegedly infringing uploads may be similar to Amazon and eBay, CafePress’s production of allegedly infringing items at its production facility was deemed to be “purposeful conduct” such that CafePress has the requisite “right and ability to control.”  Accordingly, the District Court denied CafePress’s motion for summary judgment on the plaintiff’s vicarious liability cause of action.

The court here found direct human involvement, as opposed to human-created automated processes, to be sufficient to establish “volition” in the context of direct copyright infringement and “control” in the context of vicarious copyright infringement.  Whether this is a sufficient distinction, and what degree of human involvement will be required to establish liability, will likely be the subject of future litigation and appellate review.