Perfect 10, Inc. v. Amazon.com, Inc., 2009 WL 1334364 (C.D. Cal. 2009)

This past Tuesday, Judge A. Howard Matz released an order in Perfect 10, Inc. v. Amazon.com, an ancillary to the blockbuster copyright  case Perfect 10 v. Google. Judge Matz is in a horse race with Judge Batts of the S.D.N.Y. for the title of most prolific judge on copyright issues over the past few months, which is great on both fronts for anybody who like well-articulated copyright decisions. The Court earlier granted summary judgment in favor of defendant A9 on claims for direct and vicarious copyright infringement. At issue in this order was the final remaining claim for contributory copyright infringement.

A9, a wholly owned subsidiary of Amazon, sought a summary determination that it was entitled to the § 512(c) safe harbor provisions of the DMCA due to the fact that Perfect 10 sent infringement notices in A9′s search results to Amazon, not itself. Perfect 10, in response, argued two grounds: first that A9 had actual knowledge of the infringement from court papers filed during litigation; and second, that A9 should be equitably estopped from seeking safe harbor. The court rejected the arguments and granted summary judgment in favor of A9 on the remaining claim.

Actual knowledge

Perfect 10 argued that the court papers it sent to A9 during litigation conferred actual knowledge of infringement:

Perfect 10 contended that A9 is not entitled to the safe harbor because it did in fact receive Perfect 10′s DMCA notices, and therefore had actual knowledge of infringement. An ISP is not entitled to the § 512(c) safe harbor if it has “actual knowledge that the material or an activity using the material on the system or network is infringing.” 17 U.S.C. § 512(c)(1)(A)(i) (emphasis added). The ISP must know that “specific infringing material is available using its system,” Amazon.com, 508 F.3d at 1172 (emphasis in original).

The Court wasn’t buying:

They are legally irrelevant. The absurd result otherwise would be that the complaint or any other pleading that contains sufficient identification of the alleged infringement could count as a DMCA notification.

Equitable estoppel

Perfect 10 made five core arguments in regards to equitable estoppel. First, Perfect 10 contended that Amazon instructed copyright owners to send DMCA notices regarding its affiliates directly to Amazon in the Conditions of Use posted on its site. The Court disagreed finding that neither Amazon’s Conditions of Use or filings with the Copyright Office included A9 among it affiliates.

Second, Perfect 10 argued that Amazon held itself out as an authorized agent for A9 because Amazon’s counsel responded to notices sent from Perfect 10, apparently on behalf of both Amazon and A9. The Court found that the fact that A9′s counsel was cc’d on a letter was insufficient to support the conclusion that Amazon was acting on its behalf, especially since A9 designated its own copyright agent on its site and in filings with the Copyright Office.

Perfect 10′s third and fourth estoppel arguments centered on Amazon’s actions, not A9′s. Perfect 10 contended that Amazon was the proper recipient because the infringing activity took place on its website, because the A9 search box was included on Amazon.com. The Court found that since A9 designated its own copyright agent, Amazon wasn’t the proper recipient, a fact that Perfect 10 was aware of as evidenced by the fact that Perfect 10 brought suit against A9 as well as Amazon.

Fourth, Perfect 10 argued that Amazon was obligated to notify A9 of the alleged infringements because it owns and hosts the site/corporation. The Court disagreed finding no precedent for the requirement that one ISP must pass along notices to another, because of ownership or hosting. The Court noted that even if Amazon’s representations were misleading it wouldn’t mean that A9 failed to comply with the DMCA’s requirements for designating a copyright agent or that a third party could ignore the designation:

Perfect 10 cites no authority that would require one ISP, by virtue of its ownership or hosting of another ISP, to pass along a DMCA notice, where the two ISPs are distinct corporate entities and, more importantly, have each properly designated its own copyright agent. That Amazon’s representations may have been misleading does not mean A9 failed to comply with the DMCA’s requirements for designating a copyright agent or that [Perfect 10] could ignore A9′s designation. See 17 U.S.C. § 512(c)(3)(A) (“To be effective …, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider …”) (emphasis added).

Finally, Perfect 10 argued that A9 failed to satisfy the DMCA’s requirements for the designation of a copyright agent to receive notifications of infringement. Subsection 512(c)(2) requires a service provider to designate a copyright agent “by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information: the name, address, phone number, and electronic mail address of the agent. [emphasis added]” Perfect 10 argued that A9 failed to meet the requirements because the name of the agent on its Copyright Office filing was outdated. The Court rejected the veracity of the factual assertion, but noted that even if it was true, it was not of consequence:

In any event, these are precisely the sort of technical departures from the listed requirements that Congress believed were inconsequential. There is no genuine dispute that the Copyright Office designation was valid and accurate and enabled anyone who saw it to contact A9′s designated agent, through mail, fax, telephone, or the online complaint form. Hence, A9′s Copyright Office listing substantially complies with § 512(c)(2).