BWP Media USA Inc. v. Hollywood Fan Sites LLC

Citations: 115 F. Supp. 3d 397; 115 U.S.P.Q. 2d (BNA) 1467; 2015 U.S. Dist. LEXIS 84895; 2015 WL 3971750Docket: No. 14-CV-121 (JPO)

Court: District Court, S.D. New York; June 30, 2015; Federal District Court

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Plaintiffs BWP Media USA Inc., National Photo Group, LLC, and Fameflynet, Inc. filed a lawsuit against Defendants Hollywood Fan Sites LLC, Fan Sites Org, LLC, and Hollywood.com, claiming violations of federal copyright law. The Plaintiffs assert ownership of rights to celebrity images, supported by valid U.S. Copyright Office registrations and pending registrations. They allege that their images are displayed on over 4,500 websites operated by Defendants without authorization, facilitated by "dummy webmasters" who manage content under Defendants' control, despite Defendants' knowledge of this infringement.

The procedural history indicates that the case was initiated on January 8, 2014, and underwent a partial motion to dismiss that allowed copyright infringement claims to proceed while dismissing other claims for lack of jurisdiction and failure to state a claim. Defendants responded by asserting a DMCA safe harbor defense. On January 7, 2015, Plaintiffs moved for partial summary judgment to strike this affirmative defense, which Defendants opposed. Additionally, Plaintiffs filed three related complaints that were consolidated into this action, and an amended complaint was accepted despite being filed late, with no effect on the pending motion for summary judgment.

Summary judgment is appropriate when there is no genuine dispute regarding any material fact, and the movant is entitled to judgment as a matter of law, as per Fed. R. Civ. P. 56(a). A material fact is one that could influence the case's outcome under applicable law, while a genuine dispute exists if a rational jury could favor the non-moving party based on the complete record. The party with the burden of proof must present evidence for each claim or defense element to establish entitlement to relief, and cannot rely on conclusory statements or speculation. Once the burdened party makes an initial showing, the burden shifts to the opposing party to present specific facts indicating a genuine issue for trial. Evidence must be viewed in the light most favorable to the non-moving party, and summary judgment can only be granted if no reasonable jury could rule in favor of the non-moving party. Additionally, if a plaintiff challenges the legal sufficiency of an affirmative defense through a summary judgment motion, they may fulfill their burden by demonstrating a lack of evidence supporting an essential element of the defense.

BWP and NPG seek partial summary judgment to dismiss HFS's and FSO's claim for an affirmative defense under the DMCA's safe harbor provisions, outlined in 17 U.S.C. § 512. These provisions protect service providers from copyright infringement liability if specific criteria are met, including qualifying as a "service provider," implementing a "repeat infringer" policy, and accommodating standard technical measures used by copyright owners. The relevant safe harbor in this case is § 512(c), which pertains to user-stored material on a service provider's system. A key requirement under § 512(c) is that service providers designate an agent to receive infringement notifications, which must be publicly accessible and registered with the Copyright Office. A service provider cannot claim safe harbor for infringements that occurred prior to this designation. Evidence shows that HFS and FSO did not designate an agent until April 29, 2014, after the lawsuit was filed, supporting BWP and NPG's position. HFS and FSO counter that they complied with DMCA requirements, and the Court will evaluate their claims accordingly.

FSO, a subsidiary of Hollywood, filed its first DMCA agent designation with the US Copyright Office (USCO) on November 5, 2012, with subsequent amendments on December 5, 2013, and April 29, 2014. BWP and NPG do not dispute this evidence and argue for partial summary judgment to prevent FSO from claiming DMCA safe harbor protections for infringements occurring before the initial filing date. The Court agrees with this assertion and grants the motion for partial summary judgment, thereby barring FSO from utilizing the DMCA safe harbor for any infringement that took place before November 5, 2012.

The legal complexities surrounding HFS's DMCA agent designation are outlined, noting that HFS is a subsidiary of Hollywood. Evidence shows HFS filed its own agent designation on December 5, 2013, which was amended on April 29, 2014, while Hollywood's designation was filed on November 3, 2008. Defendants claim that the Hollywood designation includes HFS, asserting it was filed on behalf of its subsidiaries. However, Section 512(c) of the DMCA requires each service provider to designate an agent with specific contact information provided to the Copyright Office (USCO) and made publicly accessible. The Court finds that the 2008 designation does not reference HFS, as it only identifies Hollywood.com, LLC and its alternate names without mention of HFS, thus failing to satisfy the statutory requirement for safe harbor protection. The Court also cites the case Perfect 10, Inc. v. Amazon.com, Inc., emphasizing that a service provider cannot rely on a designation that does not explicitly include them. Furthermore, interim regulations from the USCO explicitly state that designations cannot be jointly filed by a parent and subsidiary, reinforcing that HFS’s claim to coverage under Hollywood's designation is invalid. The conclusion is that HFS cannot use the Hollywood designation as a defense under the DMCA.

Defendants argue compliance with the DMCA, claiming that information about their DMCA agent was available on HFS-hosted websites, and that NPG submitted infringement notices for the removal of photographs on multiple occasions, with confirmations of removal from a Hollywood agent. However, these assertions are deemed irrelevant, as the DMCA requires that a service provider must have two publicly available sources of DMCA agent information—one on their website and another in the USCO directory—to qualify for the 512(c) safe harbor. Defendants cannot rely on the claim that agent information was on HFS-controlled sites to avoid disqualification. The statute mandates that a registered agent must be designated to the Copyright Office for the safe harbor to apply. Furthermore, HFS's receipt and processing of infringement notices, or any claims of improper notice delivery by the plaintiff, do not negate the lack of a registered agent. Consequently, BWP and NPG’s motion is partially granted, and HFS cannot claim a DMCA safe harbor defense for any infringement occurring before December 5, 2013, when HFS filed its DMCA agent designation.

BWP and NPG’s motion for partial summary judgment is partially granted and partially denied. Defendants are prohibited from claiming a defense under 17 U.S.C. § 512(c) for any infringement by FSO prior to November 5, 2012, and by HFS prior to December 5, 2013. The Clerk of the Court is instructed to close motion number 45. The allegations by Plaintiffs are referenced solely for background and are not pertinent to this specific motion, which focuses on the ability of Defendants to assert a DMCA defense. It is acknowledged that HFS and FSO qualify as "service providers" under the DMCA safe harbor. The designations relevant to this case are filed under interim USCO regulations, referred to as "Interim Designation of Agent to Receive Notification of Claimed Infringement." Plaintiffs allege that the earliest infringement occurred on March 17, 2011, but evidence shows that actual infringement observations began in 2013. No acts of infringement prior to FSO’s November 2012 DMCA registration are documented. The Court does not need to determine the Plaintiffs' ability to prove any such infringement, nor does it need to address the validity of a joint-DMCA agent designation, as the information regarding HFS was deemed insufficient. The interpretation of the statute by the USCO is not addressed in this decision.