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John C. Gatz is a member of the firm Nixon Peabody LLP in Chicago. Column contributors include the following writers. Copyrights: Zachary J. Smolinski, Panduit Corporation; Michael N. Spink, Brinks, Hofer, Gilson & Lione; Mark R. Anderson, Ulmer & Berne LLP. Trademarks: Janet M. Garetto and Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki. Patents: Cynthia K. Barnett, Johnson & Johnson; Timothy M. Kowalski, Motorola Mobility, Inc.; R. Trevor Carter and Daniel M. Lechleiter, Baker & Daniels, Indianapolis; Robert W. (Bill) Mason, Kinetic Concepts, Inc.
Wolk v. Kodak Imaging Network, Inc., 2012 WL 11270 (S.D.N.Y 2012). Wolk is an artist with a number of copyrighted creations. Kodak runs an online photography service called the Kodak Gallery, which allows users to create and store photo albums online, and allows users to create items that include photos uploaded to the website. Kodak also had an agreement with Photobucket, another user-uploaded online photo storage site, to allow Photobucket users to print or create items using images from the users’ Photobucket account. Wolk sued Kodak and Photobucket for copyright infringement. All parties moved for summary judgment on copyright infringement. The court granted Kodak’s and Photobucket’s motion for summary judgment, while denying Wolk’s motion. The court found that Kodak lacked the level of “volition” required to infringe Wolk’s copyrights because all of the acts Kodak performed were done electronically and without any human intervention. Therefore, the court concluded that Kodak had not directly infringed the copyrights and secondary liability was not alleged.
With respect to Photobucket, the court found that the DMCA’s “Safe Harbor” provisions applied, and granted Photobucket’s motion for summary judgment. The court held that Photobucket qualified as a service provider, as it is a website that hosts and allows sharing of user-submitted material. Further, Photobucket had implemented a policy for terminating users that are repeat copyright infringers. Photobucket removed alleged infringing works when Wolk provided sufficient notice. The court found that Photobucket was not liable for instances where Wolk failed to provide proper notice, such as by not providing the URL, rejecting Wolk’s argument that a single notice for one copyright should require Photobucket to remove all copies of that work from its website, not just the identified copy. The court ruled that Photobucket did not have a duty to police its website for infringing works. The court ruled that Photobucket was not liable for contributory or vicarious liability, as it did not encourage direct infringement or have the ability to control the alleged infringing activity and profit from the infringement.