On February 10, 2004, the Ninth Circuit affirmed in part and vacated in part the district court decision that granted America Online, Inc. (AOL) summary judgment in a copyright infringement suit. The district court had found that AOL qualified for the Digital Millennium Copyright Act (DMCA) safe harbor limitation of liability under 17 U.S.C. § 512(a). The Ninth Circuit ruled that the district court had improperly granted summary judgment for AOL when there was a triable issue of fact as to whether AOL had properly met the requirements for DMCA’s “safe harbor” for Internet service providers.Science fiction author Harlan Ellison filed suit against AOL based upon Stephen Robertson’s posting of his copyright-protected short stories to a peer-to-peer file-sharing network, the USENET news-group. The unauthorized digital copies of copyrighted works were temporarily stored and retained on AOL’s servers. Ellison alleged that AOL was liable for copyright infringement under either direct or vicarious liability and/or contributory infringement. AOL moved for summary judgment on the grounds that no reasonable trier of fact could conclude from the evidence that it was liable for copyright infringement, and that it qualified for one of the four safe harbor limitations of liability under Title II of the DMCA. Although the district court found there to be triable issues of material fact concerning Ellison’s contributory infringement claim, the court nonetheless granted AOL’s motion for summary judgment based on the safe harbor provision.
The Ninth Circuit affirmed the district court's holding that AOL's liability for contributory copyright infringement is a triable issue. The Ninth Circuit also affirmed district court finding that there was insufficient evidence to demonstrate that AOL financially benefited from the infringing activity to sustain a claim for vicarious copyright infringement. However, in reversing the district court grant of summary judgment, the Ninth Circuit considered AOL’s actual policies in handling copyright infringement claims to be triable issues of fact.
To be eligible for any of the four safe harbor limitations of liability under § 512(a), a service provider must meet the conditions of eligibility set forth in § 512(i)(1)(A) requiring service providers to: (1) adopt a policy that provides for the termination of service access for repeat copyright infringers in appropriate circumstances; (2) implement that policy in a reasonable manner; and (3) inform its subscribers of the policy. Evidence in the record suggests that AOL did not meet these threshold requirements.
While the district court found that AOL did not have actual knowledge of the infringement prior to the lawsuit, it concluded that a reasonable trier of fact could find that AOL had reason to know of infringing activities and that AOL had failed to “reasonably implement” a policy against repeat infringers and would thus be ineligible for the safe harbor defense. Prior to the lawsuit, Ellison had sent an email message to AOL, notifying the service provider of infringing activities. Although AOL had notified the Copyright office of its correct email address before Ellison’s attorneys attempted to contact AOL and posted its email on its website along with a summary of its policy for repeat infringers, AOL (1) changed the e-mail address to which infringement notifications were supposed to have been sent; and (2) failed to forward messages sent to the old address or notify the sender that the old email address was inactive.
The Ninth Circuit remanded the case for trial on Ellison’s claim of contributory negligence, and if necessary, on AOL’s eligibility for safe harbor limitations under § 512(i).