When Is an Image “Made Available” and Why Does it Matter?

The “make available” theory of direct copyright infringement, based on the alleged infringer’s passive conduct, is being used by plaintiffs against companies that have websites that hosts content like image libraries. Practitioners in the digital copyright space should take note.

The Volitional Conduct Standard in Copyright Law

Most of you reading this already know that courts generally identify two broad elements of a claim for copyright infringement: (1) ownership of a valid copyright and (2) violation of one of the exclusive rights afforded copyright owners. To succeed on a claim for direct copyright infringement, a plaintiff must show that he or she owns a valid copyright and that the defendant copied, distributed, reproduced, and/or performed protected elements of that work.

To survive dismissal, most courts also require copyright plaintiffs to prove that the defendant engaged in “volitional conduct” that caused direct infringement. The volitional conduct requirement emanated from Religious Technology Center v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995) (“Netcom”). There, a user of the defendant internet service provider posted copyrighted content that was automatically copied by the defendant’s software. The court rejected the plaintiffs’ claim for direct infringement, comparing Netcom’s system of automatically archiving copies of content from third parties to a paper copy machine, and finding that while users of a copy machine may be liable for direct infringement, the machine owner’s liability, if any, is assessed under the contributory infringement standard. The court held, “(a)lthough 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.” Netcom, 907 F. Supp. at 1369–70.

That reasoning has been approved and adopted by numerous courts, including the Second and Fourth Circuits. Importantly, the Ninth Circuit applied the volitional conduct requirement in a case where a plaintiff failed to prove that Zillow directly infringed based on allegedly infringing images displayed automatically on Zillow’s real estate listing platform. VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723, 733-34 (9th Cir. 2019) (finding that Zillow “did not engage in volitional conduct necessary to support a finding of direct liability.”); cf. ABC, Inc. v. Aereo, Inc., 573 U.S. 431, 453-54 (2014) (Scalia, J., dissenting) (“Although we have not opined on the issue, our cases are fully consistent with a volitional-conduct requirement.”).

The Make Available Theory of Passive Conduct Infringement

A copyright holder using the “make available” theory shows direct infringement by demonstrating the defendant made the work publicly available, even where the work was not displayed, sold, or actively distributed by the defendant. See SA Music, LLC v. Amazon.com, Inc., 2020 WL 3128534, at *4 (W.D. Wash. June 12, 2020) (discussing the theory and collecting cases). Some courts have recognized the existence of the theory but refused to apply it. In the digital image hosting context for example, some courts have declined to apply the make available theory where the alleged infringer did not “communicate” the purportedly infringing hosted images to the computers of those who used the website’s search engine. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1162 (9th Cir. 2007).

The “make available theory” was an ideal solution for the problems created by music file-sharing platforms around the turn of the century.  In those settings, an individual may have had music files licensed for his individual use residing on a server that is connected to a file-sharing platform (like the now-defunct Napster or Limewire) that allowed third parties to access his server to make unlicensed copies of the music files. In that scenario, the original licensee did not display, copy, or distribute the copyrighted material—he simply “made it available” for others to find, usually through an index provided by the file-sharing platform. Many Courts found infringement under the “make available theory” in this context. E.g. Universal City Studios Prods. LLLP & Paramount Pictures Corp. v. Bigwood, 441 F. Supp. 2d 185, 188 (D. Me. 2006) (KaZaA user found liable).

Conversely, some courts have rejected the “make available” theory outright, finding that an alleged infringer must actively distribute the copyrighted work or at least offer to do so before it can be liable for infringing the distribution right. This is the prevailing doctrine in the Ninth Circuit for example, which tracks the usual requirement that an infringer engage in volitional conduct. See SA Music, LLC, supra, 2020 WL 3128534, at *4.

Renewed Interest in Expanding the Make Available Theory

Certain plaintiffs are currently filing lawsuits for direct infringement against companies whose websites passively host content—often under a current or expired license from the copyright owner—that might be found by a third party, if the happen to look in just the right place. Plaintiffs in these matters often engage a vendor to search the allegedly offending websites for copyrighted works that are hosted (perhaps unknowingly) on a server and claim infringement against the website owner for making available the images to the public without license or authorization—even though the website owner was merely passively hosting the content. It is not yet clear whether courts will expand the “make available theory” to cover these scenarios.

Conclusion

The weight of case authority nationwide, and widespread adoption of the volitional conduct standard by federal circuit and district courts alike, strongly suggests that at least active conduct by an alleged infringer involving actual dissemination—akin to file-sharing or interactive music streaming—is required to demonstrate a cognizable “make available” claim for direct infringement. But copyright practitioners should be aware of this renewed effort to assert the “make available theory” outside of its file-sharing origins.