B. The Volitional-Conduct Requirement
Since the early days of the commercial Internet, courts have held that a provider of online services can be held directly liable for copyright infringement only if the conduct alleged to be infringing is “volitional.” Two district courts arrived at different conclusions on the issue of whether a website operator acted volitionally when it allowed users to upload copyrighted materials.
In Sid Avery & Associates, Inc. v. Pixels.com, LLC, the court found that the defendant did not engage in volitional conduct when it operated a website that allowed users to upload photographs that others could purchase as prints or have printed on items, such as coffee mugs and tote bags. Relying on a Ninth Circuit decision, the court explained that, to demonstrate volitional conduct, the plaintiff had to show that the defendant “exercised control (other than by general operation of [its website]); selected any material for upload, download, transmission, or storage; or instigated any copying, storage, or distribution” of the photographs. Because defendant did not select the images to be uploaded (its uploading users did), or determine which items were purchased (its purchasers did), and because it in fact prohibited the uploading of infringing content and took down such content as soon as possible, the alleged infringement did not result from defendant’s volitional conduct and defendant could not be held directly liable.
In Atlantic Recording Corp. v. Spinrilla, LLC, a court reached the opposite result on somewhat similar facts by applying a notably different analysis. The website in question allowed approved users to upload mp3 files of hip-hop songs and “mixtapes” consisting of multiple songs. Other users could select from the uploaded music files and listen to them streamed via the Internet. The defendant had a policy of removing music files once notified they were infringing. The court relied on prior decisions to conclude that the website operator engaged in volitional conduct when it allowed music to be streamed from the site. Because the streaming constituted an unauthorized public performance of copyrighted sound recordings, the website operator was directly liable for the infringement.
C. Latest Case on the Making-Available Right
A district court in Washington State became the latest court to hold that merely making a copyrighted work available to the public, without actually distributing copies of it, does not infringe the public distribution right.
In SA Music, LLC v. Amazon.com, Inc., the copyright owners of numerous musical works composed between the 1920s and the 1960s (including jazz standards such as Stormy Weather and the music of the 1939 motion picture The Wizard of Oz) charged that defendants made unauthorized copies of the songs, compiled them into albums accompanied by copies of the original album artwork, and made the recordings available to purchase via digital download on Amazon’s online music store. Amazon, which was named as a defendant, moved to dismiss the claim that it infringed the plaintiffs’ public distribution right merely by making the unauthorized copies available for purchase. The court agreed with Amazon, holding “that distribution of a copyrighted work under § 106(3) requires ‘actual dissemination’ of the copyrighted work and, in the context of a digital music store, actual dissemination means the transfer (or download) of a file containing the copyrighted work from one computer to another.”
III. Trademark Law Developments
A. Registering “generic.com” as a Trademark
Booking.com is a website that enables its users to make vacation rentals and other travel arrangements. The operator of the website sought to register “Booking.com” as a trademark for the services it offers. The U.S. Patent and Trademark Office (“USPTO”) refused to issue the registration on the ground that the proposed mark is generic. A generic mark is one that refers to a type of good or service rather than the source of a particular good or service. For example, “beer” is a generic term for a type of beverage, while “Bell’s Two Hearted Ale” is a trademark that distinguishes a particular beer that comes from a particular source. Trademark law provides that a generic mark cannot be registered.
The district court and the Fourth Circuit held that the USPTO’s analysis was erroneous, and, in U.S. Patent & Trademark Office v. Booking.com B.V., the U.S. Supreme Court agreed. The USPTO based its analysis on a nineteenth-century case in which the U.S. Supreme Court held that “a generic corporate designation added to a generic term does not confer trademark eligibility.” Thus, a brewery called “Beer Company” could not successfully argue that, while “Beer” is unregistrable as generic, the addition of the word “Company” made the name distinctive and therefore registrable. The Court held that it is different with domain names: The addition of a generic top-level domain (like “.com”) to a generic name (like “beer”) may result in a distinctive designation that is eligible for registration. Because “only one entity can occupy a particular Internet domain name at a time,” consumers may associate a domain name with a particular source of goods or services.
Whether a domain name of the form “generic.com” actually is distinctive depends on consumer perception. What counts is “[t]he primary significance of the registered mark to the relevant public.” The lower courts determined that consumers do in fact perceive “Booking.com” as indicating a particular online source of travel-related services, rather than as a type of travel-service providers: Nobody would ever say “Travelocity is my favorite Booking.com.”
The Court thus rejected a per se rule that a domain name of the form “generic.com” is ineligible for registration as a trademark. Whether a particular domain name is registrable will depend on how consumers perceive it.
B. Liability of an Online Platform for Facilitating Trademark-Infringing Transactions
Redbubble operates an online marketplace that allows artists to upload images they create and allows consumers to order items (such as clothing, wall art, and jigsaw puzzles) that display those images. Some artists uploaded designs that included trademarks owned by Ohio State University (“OSU”), and consumers purchased items bearing those designs. OSU sued Redbubble for trademark infringement. The district court granted summary judgment to Redbubble, finding that its role in the transactions was too limited to render it directly liable for the resulting trademark infringement.
In Ohio State University v. Redbubble, Inc., the Sixth Circuit held that the district court should not have granted summary judgment. The appellate court began its analysis by noting that, in previous cases, courts have determined that some online marketplaces, including Amazon (to the extent that it hosts third-party sellers) and eBay, are not directly liable for trademark infringement occurring by virtue of sales that they facilitate. Such platforms employ a hands-off business model. Their role is to connect willing buyers with willing sellers, earning commissions from the transactions. On the other hand, the manufacturers of trademark-infringing items, and the retail stores (online or brick-and-mortar) that sell them, are generally held liable. These entities may therefore be placed on a “spectrum,” with Amazon and eBay at one end and retailers and manufacturers at the other end. The question that the court addressed was where Redbubble falls on this spectrum. More generally, “what level of involvement and control must a defendant exercise over the creation, manufacture, or sale of offending goods to be considered akin to a ‘seller’ or ‘manufacturer’” and therefore potentially directly liable for the resulting infringement?
Redbubble has a greater involvement in the transactions it facilitates than do Amazon and eBay. When a consumer places an order, “Redbubble automatically contacts the artist and arranges the manufacturing and shipping of the product with independent third parties.” Is this degree of involvement enough to render Redbubble liable? The appellate court determined that “one key distinction” relevant to this question “is the degree to which the party represents itself, rather than a third-party vendor, as the seller, or somehow identifies the goods as its own.” The record included some findings of relevance to this criterion. For example, the goods that consumers order “often arrive in Redbubble packaging and contain Redbubble tags.” These facts created a triable issue on the degree of Redbubble’s involvement, making the district court’s grant of summary judgment erroneous.