Volitional Conduct Required for Direct Copyright Infringement Claim: Fifth Circuit | Practical Law

Volitional Conduct Required for Direct Copyright Infringement Claim: Fifth Circuit | Practical Law

In BWP Media USA, Inc. v. T&S Software Associates, Inc., the US Court of Appeals for the Fifth Circuit held that volitional conduct is required to establish a direct copyright infringement claim.

Volitional Conduct Required for Direct Copyright Infringement Claim: Fifth Circuit

Practical Law Legal Update w-007-2613 (Approx. 3 pages)

Volitional Conduct Required for Direct Copyright Infringement Claim: Fifth Circuit

by Practical Law Intellectual Property & Technology
Published on 29 Mar 2017 • USA (National/Federal)
In BWP Media USA, Inc. v. T&S Software Associates, Inc., the US Court of Appeals for the Fifth Circuit held that volitional conduct is required to establish a direct copyright infringement claim.
On March 27, 2017, in BWP Media USA, Inc. v. T&S Software Associates, Inc., the US Court of Appeals for the Fifth Circuit affirmed the US District Court for the Northern District of Texas's ruling that volitional conduct is required to establish a claim for direct copyright infringement ( (5th Cir. Mar. 27, 2017)).
T&S Software Associates (T&S), an internet service provider, hosts an internet forum in which third-party users posted images that infringed copyrights owned by BWP Media USA and National Photo Group (collectively, BWP). T&S did not qualify for the statutory safe harbor under the Digital Millennium Copyright Act (DMCA) because it did not designate an agent to receive DMCA notices.
BWP sued T&S in the Northern District of Texas, alleging direct and secondary infringement. On March 25, 2016, the district court granted summary judgment to T&S on both claims. On the direct infringement claim, the district court followed a line of decisions in other circuits requiring volitional conduct by a defendant for direct copyright infringement liability.
BWP appealed the direct infringement holding to the Fifth Circuit, arguing that the US Supreme Court rejected a volitional-conduct requirement for direct copyright infringement claims in American Broadcasting Cos. v. Aereo, Inc.(134 S.Ct. 2498 (2014)). The Fifth Circuit rejected BWP's argument, holding that:
  • Like other circuits, the Fifth Circuit requires a showing of volitional conduct for direct copyright infringement liability.
  • The volitional conduct requirement is consistent with the Aereo majority opinion because the Supreme Court in that case:
    • did not expressly address the volitional conduct requirement for direct infringement liability;
    • expressly limited its decision to the technology at issue in that case; and
    • acknowledged that in cases involving different technology or services, the level of user involvement may affect a provider's liability.
  • T&S conduct was not volitional and factually distinguishable from the defendant's conduct in Aereo because:
    • the defendant in Aereo provided users with access to and the means to transmit the infringing content; and
    • T&S had no active role but merely hosted the forum on which the infringing content was posted solely by users.
BWP also argued that the DMCA safe harbor rule under 17 U.S.C. § 512(c) is an exclusive method to protect an arguably innocent ISP and that a volitional conduct requirement renders the safe harbor meaningless. The Fifth Circuit:
  • Followed the Fourth Circuit's analysis in CoStar Grp., Inc. v. LoopNet, Inc. (373 F.3d 544, 552 (4th Cir. 2004)), holding that:
    • the DMCA's limitation on liability is not exclusive; and
    • volitional conduct must first be established in order for courts to analyze whether the ISP falls within the DMCA safe harbor.
  • Although the volitional conduct requirement may diminish the usefulness of the DMCA safe harbor in direct infringement cases, it does not have this effect in secondary infringement cases.