The Tenth Circuit recently held that a website provider could not be held liable for copyright infringement for the unauthorized use of copyrighted photographs in content created by its contractors. BWP Media, USA v. Clarity Digital Group, 2016 U.S. App. LEXIS 7406 (10th Cir. Apr. 25, 2016).

Defendant AXS owns and operates Examiner.com, a “dynamic entertainment, news and lifestyle network that serves more than 20 million monthly readers across the U.S. and around the world.” BWP Media at *4. Rather than retain dedicated staff writers, AXS hires “Examiners,” independent contractors who create content for the website.

Plaintiff BWP owns the copyright for 75 photographs used in content posted on Examiner.com. BWP did not grant permission to use the photographs. Upon BWP’s request, AXS removed the photographs and notified BWP. Still, BWP sued AXS for copyright infringement. AXS won summary judgment at the district court, successfully arguing that AXS qualified for the “safe harbor” provision of the Digital Millennium Copyright Act, immunizing AXS from liability here. See 17 U.S.C. § 512(c).

The DMCA safe harbor provision applies when the internet service provider (ISP) shows that the infringing content was stored at the direction of a “user” and when the ISP has no actual knowledge of the infringement or knowledge of facts or circumstances from which infringing activity is apparent. 17 U.S.C. § 512(c)(1). If the ISP became aware of the infringement and did not act expeditiously to remove or disable access to the content, it cannot qualify for safe harbor protection.

BWP primarily argued that the Examiners were not “users” in the context of the DMCA and that, even if the Examiners were “users,” AXS directed the Examiners to post the infringing content. BWP at *5. Furthermore, BWP argued that AXS had actual or circumstantial knowledge of the infringement, which would disqualify them from the safe harbor protections.

The Court, under a de novo standard of review, found that AXS qualified for the safe harbor provision. The Court found that the term “user” should be interpreted “according to its plain meaning,” which would include the Examiners. Id. at *6. Furthermore, the Court rejected BWP’s arguments that the Examiners were agents of AXS because the Examiners’ contracts with AXS clearly designated them as independent contractors. The Court then held that the infringing material was not stored at the direction of AXS and that AXS did not have actual or constructive knowledge of the infringing activity. While AXS did ask its Examiners to use photographs in articles, AXS provided a licensed photograph database and admonished the Examiners not to violate copyright law. Id. at *12.

The message from this case is that ISPs should take measures that ensure satisfaction of the DMCA safe harbor provisions. For example, ISPs should clarify the relationship with their content creators to ensure that the creators satisfy the requirements of the DMCA. The Tenth Circuit relied heavily on the contract between the Examiners and AXS in holding that the Examiners were independent contractors and that AXS qualified for the safe harbor provisions. Furthermore, because the infringing material was not “stored at the direction of AXS,” and thus eligible for the safe harbor provisions, ISPs should ensure that their communications and processes discourage copyright infringement. That is, ISPs should take measures to control potential infringement, such as AXS providing a database of licensed photographs for Examiners to use. AXS won because their policies convinced the Court that they did everything in their control to prevent potential copyright infringement, and ISPs who may need the DMCA safe harbor provisions should enact similar policies.