Copyright Action Against Cafepress Permitted To Proceed Based On Merchandise Created From User Generated Content

by Nancy Wolff, DMLA CounselSteven Gardner was not pleased to find that four of his copyrighted images – “Alaska Wildlife,” “Polar Bears 10 Hidden Bears,” “Find 12 Tigers,” and “Harmony of Wolves” – were being printed and sold on merchandise by CafePress Inc., the company behind www.cafepress.com, without his permission. Gardner filed a copyright action against CafePress alleging that CafePress directly infringed his four images.CafePress allows users to upload images to its site, select from its menu of novelty items, including t-shirts and mugs, and CafePress handles the everything else, including printing the image on the merchandise and shipping. Users can also make their images available for third parties to purchase via various online marketplaces including CafePress’s own website, Amazon, and eBay.In Gardner’s case, several CafePress users uploaded his images onto CafePress’s website and sold merchandise bearing images images through CafePress’s platform and other websites, generating approximately $6,000 in revenue. CafePress also ran advertisements featuring Gardner’s images.CafePress moved for summary judgment, asking the court to find that there is no basis for a claim of direct copyright infringement, asserting that the Copyright Act requires some volitional conduct in order to find liability.Generally, a party bringing a claim for copyright infringement must establish the following elements in order to succeed in a claim for direct copyright infringement: (1) ownership of the allegedly infringed material, (2) violation of at least one exclusive right granted to copyright holders, and (3) volitional conduct by the defendant. Here, the first two elements, ownership of the copyright and violation of at least one exclusive right were undisputed. Only this third element – volitional conduct by the defendant – was disputed.CafePress argued that it did not act with the requisite volition because, just like cases involving satellite and cable television providers, it is the individual CafePress users – the ones who uploaded the images and offered the items bearing the images available for sale – who are directly liable for infringement, not CafePress. CafePress also attempted to rely on the immunities afforded to online service providers with respect to user-generated content under the Digital Millennium Copyright Act (DMCA). On the other hand, Gardner argued that CafePress is akin to the copy shops that courts have held directly liable for the conduct of its customers in copying course packs and the like.In this instance, Gardner’s case was allowed to proceed past summary judgment because the court found that there were questions of fact as to whether CafePress’s conduct was sufficient to find liability. The Court’s decision was influenced by the fact that CafePress’s service is not completely automated and a significant portion of the alleged infringing acts was done by CafePress employees. In line with Gardner’s argument, the Court highlighted that, like the copy shop, “CafePress’s employees, not its customers, are the ones operating the machinery used by CafePress to create the allegedly infringing items.” While CafePress may act at the direction of its users initially, CafePress is the one actually making the merchandise.In denying CafePress’s motion for summary judgment on the direct copyright infringement claim, the court kept alive the question of CafePress’s direct liability for another day. Notably, this decision also hints at the court’s willingness to chip away at protections afforded online service providers under the DMCA when the provider creates physical goods from user-generated content. This qualified immunity from monetary damages under the DMCA may be lost depending on the level of activity and involvement an online provider has in creating products with user generated content.