Copyright infringement lawsuit against print on demand website, dismissed. SID AVERY v. PIXELS

In 1998 the United States passed the Digital Millennium Copyright Act (DMCA). The DMCA implemented a number of laws that brought United States Copyright law into sync with World Intellectual Property Organization Treaty requirements. One of the laws the DMCA implemented was the Online Copyright Infringement Liability Limitation Act (OCILLA).

OCILLA exempts online service providers (OSP) from monetary liability for copyright infringement if the online service provider meets certain conditions. An online service provider is a group which includes internet service providers and website operators. Online service providers are exempted from liability for both direct copyright infringement and for secondary liability for the infringement of their users.

To be granted exemption from liability for copyright infringement an OSP must:

(1) have a policy to address and terminate users that repeated infringe on the copyright of others, (2) not interfere with copyright holders “standard technical measures” to identify their works on the OSP’s network, (3) not have actual knowledge that there is infringing content on your servers, or know any surrounding facts that would make the infringing use apparent, (4) not receive any financial benefit directly attributable to the infringing activity if you have the ability to control such activity, and (5) act expeditiously to remove or disable access to the infringing material upon obtaining knowledge or awareness that the material is infringing or upon receiving a properly drafted notice of infringement.

OSPs that comply with the above requirements may qualify for safe harbors from copyright liability stemming from: transmitting, caching, storing, or linking to infringing material. However, safe harbor only extends to money damages, the online service provider may still be ordered by a court to perform specific actions such as disabling access to infringing material.

SID AVERY AND ASSOCIATES, INC. v. PIXELS.COM, LLC, 2:18-cv-10232 (C.D.CA 2021) is an example of a case where an online service provider was shielded from liability for copyright infringement because it complied with the DMCA.

Defendant in this case Pixels, provides online marketplaces for artists or image rights holders to sell their images. Pixel refers to these people as contributors. Contributors upload images onto Pixels’ website for customers to purchase as prints or printed on various products including apparel, coffee mugs, tote bags, and pillows. Pixels has over 25 million images uploaded to its website and over 10,000 images are added daily.

Plaintiff in this case is the copyright owner of several different photographs taken by Sid Avery. During the 1950’s and 60’s, Sid Avery took iconic photographs of celebrities including Frank Sinatra, the Rat Pack, Paul Newman, Nat King Cole, Marlon Brando, and James Dean. Plaintiff claims that some of the images available for purchase on Defendant’s website were the Plaintiff’s property. Plaintiff filed suit against the Defendant alleging direct copyright infringement.

The court noted that to establish direct copyright infringement, Plaintiff must prove that (1) Plaintiff is the owner of valid copyrights, and (2) Defendant copied original elements from the alleged copyrighted works. The Court found that Plaintiff was the owner of a valid copyright in all of the images which were allegedly infringed. With respect to the second element the courts analysis was much more involved.

When a direct-infringement claim is lodged against a defendant who does nothing more than operate an automated, user-controlled system the issue of who committed copyright infringement will come down to who selects the copyrighted content: the defendant or its customers. The district court found that Defendant does not select the images to be uploaded to its websites, Contributors do, therefore Defendant was not found liable for direct copyright infringement.

The district court also found that Defendant was shielded from liability by the DMCA safe harbor. The court found that the Defendant does not encourage or incentivize the uploading of any particular content, Contributors can upload whatever images they choose if they represent and warrant to Defendant that they own the rights in the uploaded images. Defendant did not exert substantial influence on the activities of its users. Furthermore, when Defendant received notice it was being sued it removed the allegedly infringing images. This means that any injunctive relief Plaintiff was entitled to is now moot.

Based on these findings the district court entered judgement in favor of Defendant.

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