Contributory Liability Claim Against Amazon Based on Third-Party Photo Sales Survives

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By David McAuley  


A photographer's claim that infringing copies of his iconic, copyrighted sports photograph were sold on after he informed the company of the infringement was sufficient to support an action for contributory copyright infringement against Amazon, the U.S. District Court for the Eastern District of Michigan ruled June 11 (Masck v. Sports Illustrated, E.D. Mich., No. 2:13-cv-10226-GAD-DRG, 6/11/13).

Judge Gershwin A. Drain said that Inc.'s continued sales of infringing merchandise over the company's website after it learned of the infringement amounted to a material contribution to the infringement.

The court rejected Amazon's argument that it had a defense to a claim of contributory infringement under Sony Corp. of America v. Universal City Studios Inc., 464 U.S. 417 (1984), because its website was capable of substantial noninfringing uses.

The “product” here was not the website, it was the copied photographic merchandise, the court said. “There is no need to impute culpable intent since the products sold by Amazon already possessed their infringing characteristics.”

Posing on the Way to Fame

The plaintiff in this case captured an image of University of Michigan football player Desmond Howard striking a “Heisman” pose on his way to a touchdown in a 1991 game against arch-rival Ohio State University. The picture became a hit, and a number of merchants sold copies attached to various physical objects, some over the website.

Amazon and a number of other defendants moved to dismiss the plaintiff's various claims.

While Amazon failed to win dismissal on the contributory infringement claim, it did manage to persuade the court that the infringement claim should be dismissed to the extent it rested on a theory of vicarious liability.

Amazon argued that it simply delivered an “e-commerce platform” service to third party merchants in this case, and thus failed to fill either of the two elements of vicarious infringement liability: (1) having the right and the ability to supervise infringing conduct, and (2) having a direct and obvious financial interest in the infringement. It analogized its position to that of an internet service provider with essentially no ability to monitor what goes up on its website.

The court agreed. The plaintiff failed to make a factual allegation showing that Amazon could plausibly verify the copyright status of each and every piece of merchandise from third party vendors, the court said, and that failure required dismissal of that aspect of the claim.

Dastar Inapplicable, Photo Is Tangible

A number of defendants argued that the plaintiff's Lanham Act claims for using deceptive and misleading marks, 15 U.S.C. § 1125, should be dismissed. That provision of the Lanham Act applies to a person whose false designation of origin of any goods is likely to cause confusion as to the origin of the goods.

In Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 66 U.S.P.Q.2d 1641(2003) (106 PTD, 6/3/03), the U.S. Supreme Court held that the “origin” of “goods” in this respect refers only to tangible goods, not “communicative products.”

Here, the district court said it was not prepared to characterize the plaintiff's work as an intangible item, at least at this stage of the proceedings. The evidence of record shows that the plaintiff sold physical copies of the photograph, making him a producer of tangible goods, the court said.

And consumers bought the photograph in its physical form, it said. “So, unlike other photographs, the physical nature of the photo remains an inalienable characteristic,” the court concluded. It denied this motion to dismiss, but without prejudice to the defendants bringing it up again as the evidence unfolds.

Thomas H. Blaske, of Blaske & Blaske, Ann Arbor, Mich., represented Masck.

Deepak Gupta and Roderick M. Thompson, of Farella Braun & Martel LLP, San Francisco, and William D. Gilbride Jr., of Abbott Nicholson, Detroit, represented Amazon. Matthew W. Bower and Richard T. Hewlett (Novi, Mich.), and Timothy E. Eagle (Grand Rapids, Mich.), of Varnum LLP, represented Howard. Timothy E. Galligan, Auburn Hills, Mich., represented Champions Press. Jenice C. Mitchell Ford, of Clark Hill PLC, Detroit, represented Wal-Mart Stores. Ambika K. Doran and Stephen M. Rummage, of Davis Wright Tremaine LLP, Seattle, and J. Michael Huget (Ann Arbor) and James E. Stewart (Detroit), of Honigman Miller Schwartz and Cohn LLP, represented the other defendants.

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