Copyhype

The Supreme Court’s solo foray into copyright this term, Cox v. Sony, has shaken up the landscape of secondary liability.

In its wake, a growing chorus of voices have noted that direct liability under copyright law needs a fresh look, particularly the doctrine of volitional conduct. Shortly after the decision was published, law professor Guy Rub wrote, “If contributory liability becomes harder to prove, plaintiffs might lean more heavily on direct liability. That means revisiting doctrines that have traditionally limited it, especially volitional conduct.” Similarly, and more recently, attorney Aaron Moss wrote, “But as secondary liability narrows in Cox‘s wake, the doctrine that may shape the next phase of AI litigation—the fight over its outputs—lives on the direct infringement side of the line. It’s volitional conduct, a judge-made rule that decides who’s responsible when an automated system makes an infringing copy.”

They have a point. At best, volitional conduct is an unnecessary synonym for proximate causation, and an imprecise application of the doctrine.¹Robert C. Denicola, Volition and Copyright Infringement, 37 Cardozo Law Rev. 1259, 1268-70 (2016). At worst, it stands for an irrational “who pressed the button test.”²See Cartoon Network LP v. CSC Holdings, 536 F.3d 121, 131 (2d Cir. 2008) (“the person who actually presses the button to make the recording [] supplies the necessary element of volition, not the person who manuactures, maintains, or, if distinct from the operator, owns the machine”); see also Fox Broad. Co. v. Dish Network, 747 F.3d 1060, 1067 (9th Cir. 2014); CoStar Grp., Inc. v. LoopNet, Inc., 373 F.3d 544, 551 (4th Cir. 2004); Disney Enters. v. Hofile Corp., 798 F. Supp. 2d 1303, 1308 (S.D. Fla. 2011). Such a test does not align with general tort principles, nor is it consistent with the Copyright Act or its goals. And as Moss points out, Cox comes at a time when it is especially vital to get these issues right, as AI ushers in an era where systems are being developed that can engage in increasingly sophisticated autonomous acts at the press of a button.

Where did the volitional conduct doctrine come from? The Copyright Act provides that “Anyone who violates any of the exclusive rights of the copyright owner … is an infringer of the copyright.”³17 USC § 501(a). In an early decision involving a copyright infringement claim against an ISP, the Northern District of California said, “Although copyright is a strict liability statute, there should still be some element of volition or causation which is lacking where a defendant’s system is merely used to create a copy by a third party.” It was wary of “a theory of infringement that would hold the entire Internet liable for activities that cannot reasonably be deterred.” But it noted that even if an ISP was free from direct liability under its theory, it may still be liable under a theory of secondary liability.

Appellate courts embraced the Netcom decision and expanded it in several unhelpful ways.

In CoStar Grp. v. LoopNet, the Fourth Circuit read Netcom as an almost categorical rule that “the automatic copying, storage, and transmission of copyrighted materials, when instigated by others” does not create direct liability under the Copyright Act.⁴373 F.3d 544, 555 (4th Cir. 2004). And it went one step further by holding that the additional act of the ISP in this case of screening user-uploaded photographs to a commercial real estate listings website it operated does not change its conclusion, drawing a dissent that said, “the majority expands the non-volitional defense well beyond Netcom and subsequent holdings, and gives direct infringers in the commercial cybersphere far greater protections than they would be accorded in print and other more traditional media.”

The Second Circuit made CoStar’s expansion look modest in comparison. Cartoon Network v. CSC Holdings rejected the lower court’s conclusion that Netcom was “premised on the unique attributes of the Internet,” and held that a cable service was not directly liable for copying live television programming to allow for later viewing.⁵536 F.3d 121 (2d Cir. 2008). The volitional conduct doctrine was now available to service providers who designed, implemented, and operated their own enterprise services—services which provide access to copyrighted content that users wouldn’t otherwise have and derive economic value from that content. This was a sharp departure from the passive, conduit ISP at issue in Netcom and the policy concerns that drove that decision.

ABC v. Aereo presented the Supreme Court with the first natural opportunity to consider the volitional conduct doctrine.⁶573 U.S. 431 (2014). Somewhat surprisingly, the majority did not rely on the Netcom framework nor even mention volition. But a dissenting opinion did—Justice Scalia described the volitional-conduct requirement as a given, calling it “firmly grounded in the Act’s text” and “fully consistent” with precedent.⁷573 U.S. at 453-455 (J. Scalia dissent).

What’s more surprising is that later courts seem to have followed the Aereo dissent more than the majority. Several circuit courts rejected arguments Aereo pressed delete on the volitional conduct doctrine, characterizing the majority’s silence as tacit acquiescence.⁸Perfect10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017); BWP Media United States v. T & S Software Assocs., 852 F.3d 436 (5th Cir. 2017).

Despite the (sometimes reflexive) acceptance of the doctrine in lower courts, it has attracted just as much, if not more, doctrinal criticism.⁹One noteworthy judicial debate arose in the Second Circuit’s BWP Media v. Polyvore decision, which consisted of a brief per curiam statement indicating its ruling and three separate concurring opinions on the volitional conduct requirement. In the previously mentioned article from Prof. Rub, he says it “has always been somewhat fragile: thin textual grounding, no clear Supreme Court endorsement, and uneven (and somewhat unclear) lower court application.”

Among its most fundamental flaws, it reduces the scope of liability to a single inquiry: who was the final party to take an action in the process of copying. It insists that in factual scenarios arising in the digital and online environment there is a single, unique causal actor. It doesn’t allow for joint or multiple causal actors. It ignores all the affirmative steps involved in designing, implementing, and operating an automated system that makes the copying possible in the first place and allows capture of commercial value from that copying.

More importantly, the volitional conduct doctrine arose within a legal framework in which secondary liability served as a backstop. For example, Justice Scalia wrote in his Aereo dissent, “The distinction between direct and secondary liability would collapse if there were not a clear rule for determining whether the defendant committed the infringing act. The volitional-conduct requirement supplies that rule; its purpose is not to excuse defendants from accountability, but to channel the claims against them into the correct analytical track.”¹⁰573 U.S. at 455 (J. Scalia dissent). Because volitional conduct and secondary liability are intertwined, to the extent Cox has redefined the standard for secondary liability, courts should accordingly reconsider the standard for direct liability.

At a minimum, courts should reject the “who pressed the button” version of volitional conduct. They can look instead to well-established principles of proximate causation¹¹Note that the term “proximate causation” has drawn disfavor, see, e.g., Restatement (Third) of Torts, § 29 cmt. b (2010). to better allocate direct liability on actors who are factual causes of copying, including actors who design, implement, and operate automated systems. Actors should not be able to evade direct liability simply because they are able to automate their service or design it so it requires user initiation, and copyright owners should not be precluded from seeking relief from infringement against a least-cost avoider.

This will ensure the exclusive rights remain meaningful.

It does not, however, mean the floodgates of direct liability would open. Courts could, for example, continue to decide that ISPs like Netcom, doing no more than engaging in the automated, temporary, indiscriminate copying of all data that moves through their systems as part of a larger, interconnected network, are not directly liable for any infringement initiated by their users. Additionally, the DMCA would still operate as a shield against uncertainty over the scope of liability since the safe harbors apply to both direct and secondary liability claims.