In a recent decision by the United States District Court for the Eastern District of Pennsylvania (ED Pa.), the court dismissed an individual author’s suit against Amazon for hosting an infringing copy of his copyrighted work. Parker v. Paypal, Inc., Civil Action No. 16-4786, 2017 WL 3508759 (E.D. Pa. Aug. 16, 2017).
I. THE FACTS
Plaintiff, Gordon Roy Parker, wrote a book entitled “Outfoxing the Foxes: How to Seduce the Women of Your Dreams,” for which he registered his copyright in 1998. In October 2015, he learned that his book was being sold online as part of an “anthology of books and articles written by and for pickup artists.” Id. at *2. He requested that the work be removed from the site – which appears to have occurred, at least for a time.
Several months later, in December 2015, he learned that sales of the anthology (including his copyrighted work) had resumed. In addition to seeking a take down of the book from this site, and to restricting the site’s access to its PayPal account, Parker notified Amazon.com, Inc. and Amazon Web Services, Inc. (collectively, “Amazon”) regarding Amazon’s hosting of the infringing work. (The Court’s opinion does not discuss any response by Amazon at this time.)
Parker alleges in his complaint that despite providing such notice to Amazon, the infringing work was still being hosted through Amazon’s cloud servers at least as late as Spring 2016.
In a May 2016 email, Parker told Jeff Bezos (CEO of Amazon) about the infringement and said that Parker was removing six of his titles from Amazon’s Kindle Books program. The distribution of his books through Kindle was undertaken under contract between Parker and Amazon. In response to Parker’s email, representatives of Amazon asked him to report potentially infringing material “consistent with the Digital Millennium Copyright Act.” Id. at *3. (Note: Within Amazon’s Conditions of Use Page, its “Notice and Procedure for Making Claims of Copyright Infringement” Section includes a link to an online form to report instances of infringement.)
II. AMAZON MOVED TO DISMISS THE CLAIMS
Amazon moved to dismiss Parker’s claims against it on the grounds that: (1) Parker failed to state a proper claim for copyright infringement or unfair competition as to Amazon; (2) Parker’s claim for breach of contract (based on the Kindle publishing agreement for seven of his e-books, including the infringed work) was pre-empted by the Copyright Act; and (3) the remaining claims for misappropriation of likeness and unjust enrichment are barred by the Communications Decency Act, 47 USC § 230 (“CDA”).
The Court agreed with Amazon’s analysis and dismissed Parker’s complaint as to Amazon. (Note that the case still proceeds with respect to other defendants.)
A. Copyright Claims
Parker’s theory of Amazon’s liability for copyright infringement was based entirely on the fact that Amazon hosted the electronic copies of the infringing work on an Amazon Cloud drive on behalf of the website that was making the illegal sales. The Court agreed with Amazon that such storage of material was “by its nature, passive conduct performed automatically at the instigation of others and does not render [Amazon] liable for any direct copyright infringement.” Id. at *4. Specifically, the Court explained that in order for a defendant to be liable for copyright infringement – even contributory copyright infringement – it must have “caused in some meaningful way the infringement.” Id. at *4 n.6 & *5.
B. Unfair Competition Claims
Parker’s theory of liability for unfair competition essentially was that Amazon’s storing of an infringing version of the work tied to the wrong author “enabled the unlawful sale” and was sufficient evidence of “active participation” to support his false designation of origin claim. Id. at *6.
The Court disagreed and explained that Plaintiff provided no evidence that Amazon actively participated in the infringement or was “a moving force in replacing his name on the infringing work” or participated in any way in the infringer’s decision as to the designation of authorship of the work. Id.
C. Misappropriation of Likeness/Unjust Enrichment Claims
Parker’s misappropriation claims combined a California right of publicity claim and a Pennsylvania right of privacy claim, asserting Amazon’s vicarious liability for both. Id. Similarly, its unjust enrichment claim was based on an allegation that Amazon somehow “benefited” from the misuse of Parker’s name and likeness. Id. at *6 -*7.
However, the Court explained that without additional facts demonstrating that Amazon exceeded its role as merely an Internet Service Provider (“ISP”) hosting the content – in other words, Parker had presented no evidence that Amazon took any active role in handling or modifying the content – then it is immune from liability because of the CDA, 47 USC § 230. Amazon’s immunity in this context is premised on the fact that it was not involved in publishing or altering the content itself, but instead, merely stored it. Because it exercised no editorial function, these claims were preempted by the CDA. Id.
D. Contract Claims
Parker alleged that Amazon was liable for breach of contract because it failed to remit royalty payments to Parker – due under his Kindle publishing agreement – for hosting and making available the infringing copy of his work. The Court held that this claim was “equivalent” to his copyright claim and thus preempted pursuant to 17 U.S.C. § 301.
III. IMPLICATIONS OF THIS CASE
This Complaint and the resulting Court’s decision dismissing the claims against Amazon together highlight two key doctrines:
(1) That fact patterns presenting copyright issues many times can also present trademark issues. For instance, copyrighted websites may also display the owner’s trademarks, or books published as part of a series may bear trademarks (e.g., Harry Potter). Depending on what the infringer copied, it may be worth exploring both theories of IP protection when evaluating what claims to bring against an infringer; and
(2) That merely because an ISP hosts or stores third-party-created content (or, User Generated Content) does not mean that the ISP will be liable for the substance of that content, whether the content is substantively infringing on someone else’s rights or is otherwise objectionable (e.g., a negative online review). This safe harbor from liability will generally stand unless the ISP takes a more active role in the alleged infringement (such as by editing the user generated content and/or jointly authoring the content) than merely hosting the content in an online location or allowing others to post content on its site.
In cases involving an ISP who has hosted or stored infringing content, consider carefully whether to sue the ISP because the ISP may be insulated from liability and pursuing the claim may result in costs to pay your lawyer, but an inability to obtain monetary relief from what you might have assumed was a “deep pocket.”