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IP/Entertainment Case Law Updates

Downs v. Oath

District court dismisses copyright claims against owner and operator of HuffPost for use of photo uploaded by contributor, finding defendant entitled to immunity under Digital Millennium Copyright Act’s safe harbor provision.

Kevin Downs, a professional photographer who does freelance work for the New York Daily News, sued defendant Oath Inc., the owner and operator of HuffPost, on a single claim for copyright infringement for unauthorized use of his copyrighted photograph alongside a contributed article posted on the site. Oath answered and raised affirmative defenses, including statutory immunity under the Digital Millennium Copyright Act, absence of volitional conduct, fair use and laches. Downs moved for summary judgment on the issue of liability, and Oath moved for summary judgment on its defense of statutory immunity under the DMCA. The district court granted summary judgment to Oath and denied Downs’ motion, finding that Oath was shielded from liability under the safe harbor provision of the DMCA. 

In December 2017, Downs photographed a group protesting President Donald Trump’s “travel ban” and licensed the photograph to the New York Daily News, which published the image alongside an article titled “Federal judge grants emergency stay to thwart Trump’s refugee ban and halt deportations.” The following day, an article was posted to www.huffpost.com with the title “Trump’s Disastrous Week of Presidency: The Chinese Exclusion Act and the Muslim Ban.” The article, written by Grace Ji-Sun Kim, a participant on HuffPost’s “contributor platform,” used Downs’ photograph without his permission and contained commercial advertisements. Contributors are not employed or paid by HuffPost for their content. They are required to agree to terms and conditions prohibiting them from uploading copyrighted materials. After publication, HuffPost editors screen the articles for offensive or illegal content, index articles, change articles’ headlines, and copyedit articles. The day after Kim posted her article, a HuffPost editor named Chloe Cohn screened the article and added content tags to the article’s metadata and a “related video” link beneath the article. 

To establish copyright infringement, two elements must be proven: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Here, the parties agreed that Downs satisfied both of these elements, but disputed whether Oath was nevertheless entitled to immunity under one of the safe harbor provisions of the DMCA (17 U.S.C. Section 512). 

Section 512(c) allows service providers to avoid liability for copyright infringement that occurs “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.” Downs argued that Oath failed to satisfy the requirements for statutory immunity under the DMCA.

First, Downs claimed that the infringement in this case did not occur “by reason of ... storage at the direction of a user” because it was Cohn, a HuffPost employee, rather than Kim who was responsible for the publication of the HuffPost article with Downs’ photograph. The court disagreed, finding that the infringing use of Downs’ photograph occurred by reason of storage at the direction of a user — Kim — who was not an employee or agent of Oath and who added the photograph to the HuffPost article. The court also rejected Downs’ argument that Cohn’s cursory screening and modification placed the article outside the safe harbor’s protection. Cohn’s addition of content tags to the article also did not deprive Oath of the safe harbor immunity. 

Second, Downs asserted that Cohn was “aware of facts or circumstances from which infringing activity [was] apparent.” Downs asserted that Cohn had “red flag” knowledge of infringement because the photograph in Kim’s article had a New York Daily News photo credit, and that any professional in Cohn’s position should have realized, based on that attribution, that the photograph was infringing. The court disagreed, explaining that the standard is not whether Cohn should have realized the infringing activity but whether it was “obvious to a reasonable person ... not endowed with specialized knowledge or expertise concerning ... the laws of copyright.” Here, the court reasoned that Cohn’s viewing of the document might have been brief and intended for several different purposes, including subject matter and screening for offensive content. Even assuming that Cohn saw the New York Daily News photo credit, this alone was not enough to create a triable issue of material fact, since Downs had the burden of demonstrating that Cohn had knowledge of the infringing activity. 

Third, Downs maintained that HuffPost received a financial benefit from the commercial advertising visible alongside Kim’s article, and that Oath had the right to control Kim’s article because it engaged in review and supervision of the content. To be protected under the safe harbor, an eligible service provider must “not receive 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 court found neither of Downs’ assertions compelling, explaining that it is not sufficient that HuffPost ran commercial advertisements on its site, and that Downs did not show that the advertising revenue that HuffPost received was “distinctly attributable” to the infringing activity or that HuffPost had the “right and ability to control such activity.”

Summary prepared by David Grossman and Mariah Volk