The US Court of Appeals for the Fifth Circuit affirmed the district court’s grant of summary judgment, holding that “volitional conduct” is required to establish a claim for direct copyright infringement under the safe harbor provision of the Digital Millennium Copyright Act (DMCA). BWP Media USA, Incorporated, et al. v. T & S Software Associates, Inc., Case No. 16-10510 (5th Cir., Mar. 27, 2017) (Southwick, J).

T & S Software, an internet service provider (ISP), hosted an internet forum called HairTalk on which third-party users posted various images, shared comments, asked questions and posted other content on topics that include hair, beauty and celebrities. BWP Media sued T & S claiming that a third-party HairTalk user posted images that infringed BWP’s copyrights. BWP argued that during the relevant time period, T & S did not have an agent designated to receive notices of content that should be removed, as required to qualify for the DMCA statutory safe harbor.

The DMCA protects ISPs from liability when users upload copyrighted content while requiring such ISPs to remove the material if they receive notice or otherwise become aware of the infringement. To qualify for the safe harbor protection, an ISP must have “designated an agent to receive notifications of claimed infringement.” 17 USC § 512.

After the district court granted summary judgment in favor of T & S as to both direct and secondary infringement, BWP appealed the direct infringement liability ruling.

The Fifth Circuit affirmed the district court’s grant of summary judgment, determining that volitional conduct is required to prove a claim of direct infringement. The Court explained that although T & S hosted the forum on which infringing content was posted, T & S’s “connection to the infringement ends there.” The users of the HairTalk forum posted the infringing content, and T & S did not provide them access to the infringing content. T & S “and the infringing content are not linked by volitional conduct.” The Court further noted that it couldn’t be said that T & S’s “conduct caused in some meaningful way an infringement.” 

BWP also argued that the DMCA safe harbor rules created an exclusive method of protecting an arguably innocent ISP. The Fifth Circuit disagreed, explaining that “even though the DMCA was designed to provide ISPs with a safe harbor from copyright liability, nothing in the language of § 512 indicates that the limitation on liability described therein is exclusive.” The Court concluded that it is difficult to argue “that the statute in fact precludes ISPs from relying on an entire strain of case law holding that direct infringement must involve conduct having a volitional or causal aspect.”