Volitional Conduct

New technologies expose latent ambiguities in copyright law

In a world of analog technology determining who should be directly liable for copyright infringement, as opposed to indirectly liable on the basis of contributory or vicarious infringement, was relatively straightforward. If a customer used the machine at a photocopy store herself, it made sense to regard her as “making” the copy and to regard the store as potentially liable depending on whether it had knowledge that the customer was infringing (material contribution seems like a given).

In his dissenting opinion in American Broadcasting Companies, Inc. v. Aereo, Inc., 134 S. Ct. 2498, 2513 (2014), Justice Scalia expands on this example:

A copy shop rents out photocopiers on a per-use basis. One customer might copy his 10–year–old’s drawings—a perfectly lawful thing to do—while another might duplicate a famous artist’s copyrighted photographs—a use clearly prohibited by § 106(1). Either way, the customer chooses the content and activates the copying function; the photocopier does nothing except in response to the customer’s commands. Because the shop plays no role in selecting the content, it cannot be held directly liable when a customer makes an infringing copy. (emphasis original)

Note the key points in this description: (i) the customer’s use may be either infringing or non-infringing, (ii) the customer, not the copy shop, chooses the content and (iii) activates the copying function, and (iv) the machinery used by the customer is passive—“the photocopier does nothing except in response to the customer’s commands.”

In contrast, where the store clerk undertakes the copying on behalf of the customer, it is the store that is directly liable and the customer who would be subject to contributory liability. As above, the customer’s use may be either infringing or non-infringing and the customer chooses the content, but critically the copy shop activates the copying function and the machinery is not merely dependent on the customer’s will.

In the concluding sentence of the above quoted passage Justice Scalia restates the importance of selection of content (at 2513):

Because the shop plays no role in selecting the content, it cannot be held directly liable when a customer makes an infringing copy.

However, the customer’s role in activating the copying function and the passivity of the machinery otherwise is arguably just as important. Indeed, it is because the customer activates the copying that we can truly say the shop plays no role in selecting the content. If the copy shop employee activated the copying function he would be in a position to review the customer’s selection and make the ultimate choice whether to copy or not to copy.

Even if the division between primary and secondary liability is clear in the photocopying scenarios above, it can quickly become less clear as we transition from analog copying machines to digital copying services.

In Sony v. Universal Studios, the Supreme Court considered the copyright implications of the videocassette recorder and found that consumer time shifting broadcast television was fair use and thus not infringing. However, other uses of the VCR, such as building a permanent video library, may have been infringing. The Sony Betamax litigation lasted from the mid-1970s to the mid-1980s. At no stage in this litigation did anyone suggest that the manufacturer of the VCR could be directly liable for the recording decisions made by its customers.

In fact, in Sony the Supreme Court held that a manufacturer of copy machines, possessing constructive knowledge that purchasers of its machine may be using them to engage in copyright infringement, is not strictly liable for infringement. Sony v. Universal City Studios, 464 U.S. at 439-42. Fast-forward 40 years and the same functionality can now be delivered to consumers as a service called a remote digital video recorder (R-DVR), rather than as a product. Suddenly the dividing line between direct and indirect liability is more contentious. An R-DVR is more or less the same as the old VCR, except that the recordings are digital rather than analog, and rather than residing in the user’s home the recording device is maintained at a central location by the service provider. In either case, it is the consumer who decides what to record and what to watch.

As Justice Scalia noted in his Aereo dissent (at 2512), the volitional conduct requirement is “a simple but profoundly important rule: A defendant may be held directly liable only if it has engaged in volitional conduct that violates the Act.” As Scalia explained (at 2513), although volitional conduct is an element of the cause of action for copyright infringement, it has often been left unstated because it is not in doubt in most scenarios:

The volitional-conduct requirement is not at issue in most direct-infringement cases; the usual point of dispute is whether the defendant’s conduct is infringing (e.g., Does the defendant’s design copy the plaintiff’s?), rather than whether the defendant has acted at all (e.g., Did this defendant create the infringing design?). But it comes right to the fore when a direct-infringement claim is lodged against a defendant who does nothing more than operate an automated, user-controlled system.

The volitional conduct requirement may have been of marginal relevance to copyright law in earlier times, but it is of critical importance now as we move more and more activity into the cloud and consumers buy services rather than software and machines.

The question is about to be litigated on a full record. In Concord Music Group, Inc. v. Anthropic PBC, No. 5:24-cv-03811 (N.D. Cal.), music publishers allege that Anthropic’s models reproduce song lyrics in response to user prompts. Anthropic’s answer is, in substance, that the user does the prompting. Whether a generative model that outputs protected expression on request is more like Netcom’s server or more like the copy shop is a question no court has yet had to answer on a developed factual record. For updates on this case and the generative AI copyright litigation more generally, see Professor Ed Lee’s blog, ChatGPT is eating the world, https://chatgptiseatingtheworld.com/concord-music-group-v-anthropic-i/.

The emergence of volitional conduct

In a series of cases beginning in the mid-1990s, courts in the United States began to clearly articulate a requirement of volitional action for copyright infringement. As Justice Scalia explained in Aereo, (at 2514):

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.

The volitional act requirement is not a mechanism to absolve parties of their responsibility for copyright infringement, but it channels the question of responsibility to the appropriate doctrines: direct liability for copyright infringement is often said to be a question of strict liability and the question of whether the infringer knew or intended the infringement is irrelevant; whereas, copyright’s doctrines of secondary liability require either knowledge of infringement, inducement of infringement, or the right and ability to control the infringing activity as might be found in the employer-employee context.

Netcom

Our discussion of copyright’s volitional act requirement begins with Religious Technology Center v. Netcom On-Line Communication Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995), possibly the most influential district court decision in modern American copyright law.

The Netcom case concerns an online bulletin board service and the secrets of the Church of Scientology. A bulletin board system, or BBS, allows multiple users to connect to a single server using a terminal program. In this configuration, all content resides on the central server and the user’s terminal is little more than a screen and a keyboard. Bulletin board systems were often networked such that several hosts in different locations would mirror the same content—this made dialing into a BBS cheaper and interacting with a BBS faster as well.

Bulletin board systems predate the World Wide Web although they are still used in various contexts today. Bulletin board systems were generally text-based, rather than graphical user interface-based (to sound knowledgeable, one says “gooey” for GUI, rather than “graphical user interface”).

In Netcom, a disgruntled former Scientology minister posted allegedly infringing copies of Scientological works on an electronic BBS. The messages were stored on the bulletin board operator’s computer, then automatically copied onto Netcom’s computer, and from there, copied onto other computers comprising “a worldwide community of electronic bulletin board systems.” The plaintiff, Religious Technology Center (“RTC”) controlled the copyrights, trademarks, and other IP rights of the Church of Scientology. RTC brought an infringement action against operator of computer bulletin board service (BBS) and Netcom, an Internet access provider.

In Netcom, the district court held that the defendant Internet service provider was not liable for the automatic reproduction of a copyrighted work by its computer system. The court refused to impose direct liability on the service provider, reasoning (at 1370) that:

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.

Rather than holding Netcom, the Internet service provider, liable as a direct infringer, the district court put it in the same position as the owner of a copying machine used by a customer. Thus, its liability turned on the existence of an underlying infringement plus the elements of contributory liability or vicarious liability. The Netcom court thought that it was significant that the service provider did not take any affirmative action that directly resulted in copying plaintiffs’ works other than by installing and maintaining a system whereby software automatically forwards messages received from subscribers onto the Usenet, and temporarily stores copies on its system. The court explained (at 1369):

Netcom’s act of designing or implementing a system that automatically and uniformly creates temporary copies of all data sent through it is not unlike that of the owner of a copying machine who lets the public make copies with it. Although some of the people using the machine may directly infringe copyrights, courts analyze the machine owner’s liability under the rubric of contributory infringement, not direct infringement.

Why did the court draw this distinction? Confronted with electronic communication systems whose content was determined by the end users the court recognized that holding service providers directly liable would create a multiplicity of infringements and lead to an unreasonable expansion of copyright liability. From the court’s point of view, propagating direct liability in this technological context would create an unworkable situation: it would not just make Netcom the ISP liable regardless of knowledge of infringement, it would make every server in the BBS network liable as well. At 1369, the court explained:

Plaintiffs’ theory would create many separate acts of infringement and, carried to its natural extreme, would lead to unreasonable liability.

It would also result in liability for every single Usenet server in the worldwide link of computers transmitting Erlich’s message to every other computer. These parties, who are liable under plaintiffs’ theory, do no more than operate or implement a system that is essential if Usenet messages are to be widely distributed. There is no need to construe the Act to make all of these parties infringers. 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. (emphasis added)

The court reiterated the unworkability of imposing direct “liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet.” At 1372-73 the court said:

Where the infringing subscriber is clearly directly liable for the same act, it does not make sense to adopt a rule that would lead to the liability of countless parties whose role in the infringement is nothing more than setting up and operating a system that is necessary for the functioning of the Internet.

The court does not find workable a theory of infringement that would hold the entire Internet liable for activities that cannot reasonable be deterred. Billions of bits of data flow through the Internet and are necessarily stored on servers throughout the network and it is thus practically impossible to screen out infringing bits from noninfringing bits. Because the court cannot see any meaningful distinction (without regard to knowledge) between what Netcom did and what every other Usenet server does, the court finds that Netcom cannot be held liable for direct infringement.

Netcom is significant in at least two ways. It was the first copyright case in the U.S. to clearly explain that copyright infringement involves “some element of volition or causation” and that this volitional conduct “is lacking where a defendant’s system is merely used to create a copy by a third party.” Additionally, the decision in Netcom significantly influenced the eventual design of the Internet safe harbors of the Digital Millennium Copyright Act of 1998, see Section 512 of the Copyright Act.¹

CoStar

CoStar Group, Inc., and a related company owned the rights in a number of photographs of commercial real estate. These photos had been posted on LoopNet’s website by LoopNet’s subscribers — generally real estate brokers — without CoStar’s consent. LoopNet did not post real estate listings on its own account. Rather it provided a “web hosting service that enables users who wish to display real estate over the Internet to post listings for those properties on LoopNet’s web site.” CoStar sued LoopNet for copyright infringement.²

Adopting the reasoning in Netcom, the Fourth Circuit held in CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544 (4th Cir. 2004), that because LoopNet was simply the owner and manager of a system used by others who are violating CoStar’s copyrights and not an actual duplicator itself, it is not directly liable for copyright infringement. As the Fourth Circuit explained (at 550):

But to establish direct liability under §§ 501 and 106 of the Act, something more must be shown than mere ownership of a machine used by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner. The Netcom court described this nexus as requiring some aspect of volition or causation. (emphasis added)

The Fourth Circuit focused on the text of the Copyright Act and noted that to violate the reproduction right under § 106(1) one must, without the copyright owner’s consent “reproduce the work in copies” and the term “copies” in this context is defined in Section 101 as “material objects ... in which a work is fixed.” Moreover, Section 101 also instructs that a work is “fixed,” in the relevant sense, when it is embodied in a material form “sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” The Fourth Circuit concluded (at 550-551) that as a mere conduit of data, it was wrong to say that the defendant copied the work:

When an electronic infrastructure is designed and managed as a conduit of information and data that connects users over the Internet, the owner and manager of the conduit hardly “copies” the information and data in the sense that it fixes a copy in its system of more than transitory duration.

In other words, the service provider may set up the system, but it is the user who undertakes the action of copying the work.

The court of appeals reprised the policy argument from Netcom in the following terms:

… we conclude that Netcom made a particularly rational interpretation of § 106 when it concluded that a person had to engage in volitional conduct — specifically, the act constituting infringement — to become a direct infringer. As the court in Netcom concluded, such a construction of the Act is especially important when it is applied to cyberspace. There are thousands of owners, contractors, servers, and users involved in the Internet whose role involves the storage and transmission of data in the establishment and maintenance of an Internet facility. Yet their conduct is not truly “copying” as understood by the Act; rather, they are conduits from or to would-be copiers and have no interest in the copy itself.

In a later passage the Fourth Circuit summarized its holding (at 555):

At bottom, we hold that ISPs, when passively storing material at the direction of users in order to make that material available to other users upon their request, do not “copy” the material in direct violation of § 106 of the Copyright Act.

Agreeing with the analysis in Netcom, we hold that the automatic copying, storage, and transmission of copyrighted materials, when instigated by others, does not render an ISP strictly liable for copyright infringement under §§ 501 and 106 of the Copyright Act.

An ISP, however, can become liable indirectly upon a showing of additional involvement sufficient to establish a contributory or vicarious violation of the Act. In that case, the ISP could still look to the DMCA for a safe harbor if it fulfilled the conditions therein.

In their 2020 Iowa Law Review article, Convergence and Conflation in Online Copyright, Professors Christopher Cotropia and James Gibson argue that CoStar Group v. LoopNet illustrates how in some respects at least, the DMCA safe harbor rules and the substantive liability doctrines in copyright have merged.

… the CoStar case presented the typical System Storage scenario, with service provider LoopNet operating a server onto which its users copied CoStar’s copyrighted photographs without a license. The twist here was that LoopNet had not met the threshold conditions for the DMCA safe harbor (having failed to implement a repeat-infringer policy), which made this a case purely about the ultimate liability standards.

Because the DMCA was unavailable to LoopNet, CoStar argued that Netcom should also be unavailable. In other words, it asserted that the statute “supplanted and preempted Netcom,” making the safe harbors the sole determinant of liability and thus finding infringement whenever they did not apply. The Fourth Circuit rejected this claim, embraced Netcom as the governing standard, and “held that the automatic copying, storage, and transmission of copyrighted materials, when instigated by others, does not render [a service provider] strictly liable for copyright infringement.” The substance of the safe harbors and the direct infringement liability standard were therefore viewed as identical, even when the DMCA defenses were technically unavailable. … This is textbook convergence.³

The volitional act requirement has also been endorsed by the Third Circuit in Parker v. Google, Inc., 242 F.App’x 833, 837 (3d Cir. 2007) (per curiam) (“To state a direct copyright infringement claim, a plaintiff must allege volitional conduct on the part of the defendant.”).

Cablevision

As noted previously in this book, the Second Circuit’s Cablevision ruling rests on three essential pillars. First, that temporary buffer storage does not meet the definition of creating a ‘copy’ as that term is defined in the Act because to qualify as a copy a work must be fixed for more than a transitory duration. Second, Cablevision was not a direct infringer of the reproduction right because it was not the ‘maker’, in the sense of the ‘volitional copy’ doctrine, of the fixed copies. Third, Cablevision did not publicly perform the works within the meaning of the ‘transmit clause’ of the public performance right. We will now focus on the second holding: that Cablevision was not a direct infringer of the reproduction right because it was not the ‘maker’, in the sense of the ‘volitional copy’ doctrine, of the fixed copies.

Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008)

Opinion by Circuit Judge John M. Walker, Jr.

… Direct Liability for Creating the Playback Copies

In most copyright disputes, the allegedly infringing act and the identity of the infringer are never in doubt. These cases turn on whether the conduct in question does, in fact, infringe the plaintiff’s copyright. In this case, however, the core of the dispute is over the authorship of the infringing conduct. After an RS-DVR subscriber selects a program to record, and that program airs, a copy of the program — a copyrighted work — resides on the hard disks of Cablevision’s Arroyo Server, its creation unauthorized by the copyright holder. The question is who made this copy. If it is Cablevision, plaintiffs’ theory of direct infringement succeeds; if it is the customer, plaintiffs’ theory fails because Cablevision would then face, at most, secondary liability, a theory of liability expressly disavowed by plaintiffs.

Few cases examine the line between direct and contributory liability. Both parties cite a line of cases beginning with Religious Technology Center v. Netcom On-Line Communication Services, 907 F. Supp. 1361 (N.D. Cal.1995). In Netcom, a third-party customer of the defendant Internet service provider (“ISP”) posted a copyrighted work that was automatically reproduced by the defendant’s computer. The district court refused to impose direct liability on the ISP, reasoning that “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.” Recently, the Fourth Circuit endorsed the Netcom decision, noting that

to establish direct liability under ... the Act, something more must be shown than mere ownership of a machine used by others to make illegal copies. There must be actual infringing conduct with a nexus sufficiently close and causal to the illegal copying that one could conclude that the machine owner himself trespassed on the exclusive domain of the copyright owner.”

CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 550 (4th Cir.2004).

Here, the district court pigeon-holed the conclusions reached in Netcom and its progeny as “premised on the unique attributes of the Internet.” While the Netcom court was plainly concerned with a theory of direct liability that would effectively “hold the entire Internet liable” for the conduct of a single user, its reasoning and conclusions, consistent with precedents of this court and the Supreme Court, and with the text of the Copyright Act, transcend the Internet. Like the Fourth Circuit, we reject the contention that “the Netcom decision was driven by expedience and that its holding is inconsistent with the established law of copyright,” and we find it “a particularly rational interpretation of § 106,” rather than a special-purpose rule applicable only to ISPs.

When there is a dispute as to the author of an allegedly infringing instance of reproduction, Netcom and its progeny direct our attention to the volitional conduct that causes the copy to be made. There are only two instances of volitional conduct in this case: Cablevision’s conduct in designing, housing, and maintaining a system that exists only to produce a copy, and a customer’s conduct in ordering that system to produce a copy of a specific program. In the case of a VCR, it seems clear — and we know of no case holding otherwise — that the operator of the VCR, the person who actually presses the button to make the recording, supplies the necessary element of volition, not the person who manufactures, maintains, or, if distinct from the operator, owns the machine. We do not believe that an RS-DVR customer is sufficiently distinguishable from a VCR user to impose liability as a direct infringer on a different party for copies that are made automatically upon that customer’s command.

The district court emphasized the fact that copying is “instrumental” rather than “incidental” to the function of the RS-DVR system. While that may distinguish the RS-DVR from the ISPs in Netcom and CoStar, it does not distinguish the RS-DVR from a VCR, a photocopier, or even a typical copy shop. And the parties do not seem to contest that a company that merely makes photocopiers available to the public on its premises, without more, is not subject to liability for direct infringement for reproductions made by customers using those copiers. They only dispute whether Cablevision is similarly situated to such a proprietor.

The district court found Cablevision analogous to a copy shop that makes course packs for college professors. In the leading case involving such a shop, for example, “the professor gave the copyshop the materials of which the coursepack was to be made up, and the copyshop did the rest.” Princeton Univ. Press v. Mich. Document Servs., 99 F.3d 1381, 1384 (6th Cir.1996) (en banc). There did not appear to be any serious dispute in that case that the shop itself was directly liable for reproducing copyrighted works. The district court here found that Cablevision, like this copy shop, would be “doing” the copying, albeit “at the customer’s behest.”

But because volitional conduct is an important element of direct liability, the district court’s analogy is flawed. In determining who actually “makes” a copy, a significant difference exists between making a request to a human employee, who then volitionally operates the copying system to make the copy, and issuing a command directly to a system, which automatically obeys commands and engages in no volitional conduct. In cases like Princeton University Press, the defendants operated a copying device and sold the product they made using that device. See 99 F.3d at 1383 (“The corporate defendant is a commercial copyshop that reproduced substantial segments of copyrighted works of scholarship, bound the copies into coursepacks, and sold the coursepacks to students.”). Here, by selling access to a system that automatically produces copies on command, Cablevision more closely resembles a store proprietor who charges customers to use a photocopier on his premises, and it seems incorrect to say, without more, that such a proprietor “makes” any copies when his machines are actually operated by his customers. Some courts have held to the contrary, but they do not explicitly explain why, and we find them unpersuasive. See, e.g., Elektra Records Co. v. Gem Elec. Distribs., Inc., 360 F.Supp. 821, 823 (E.D.N.Y.1973) (concluding that, “regardless” of whether customers or defendants’ employees operated the tape-copying machines at defendants’ stores, defendant had actively infringed copyrights).

The district court also emphasized Cablevision’s “unfettered discretion in selecting the programming that it would make available for recording.” This conduct is indeed more proximate to the creation of illegal copying than, say, operating an ISP or opening a copy shop, where all copied content was supplied by the customers themselves or other third parties. Nonetheless, we do not think it sufficiently proximate to the copying to displace the customer as the person who “makes” the copies when determining liability under the Copyright Act. Cablevision, we note, also has subscribers who use home VCRs or DVRs (like TiVo), and has significant control over the content recorded by these customers. But this control is limited to the channels of programming available to a customer and not to the programs themselves. Cablevision has no control over what programs are made available on individual channels or when those programs will air, if at all. In this respect, Cablevision possesses far less control over recordable content than it does in the [video on demand] context, where it actively selects and makes available beforehand the individual programs available for viewing. For these reasons, we are not inclined to say that Cablevision, rather than the user, “does” the copying produced by the RS-DVR system. As a result, we find that the district court erred in concluding that Cablevision, rather than its RS-DVR customers, makes the copies carried out by the RS-DVR system.

Our refusal to find Cablevision directly liable on these facts is buttressed by the existence and contours of the Supreme Court’s doctrine of contributory liability in the copyright context. After all, the purpose of any causation-based liability doctrine is to identify the actor (or actors) whose “conduct has been so significant and important a cause that [he or she] should be legally responsible.” W. Page Keeton et al., Prosser and Keeton on Torts § 42, at 273 (5th ed.1984). But here, to the extent that we may construe the boundaries of direct liability more narrowly, the doctrine of contributory liability stands ready to provide adequate protection to copyrighted works.

Most of the facts found dispositive by the district court — e.g., Cablevision’s “continuing relationship” with its RS-DVR customers, its control over recordable content, and the “instrumentality” of copying to the RS-DVR system, — seem to us more relevant to the question of contributory liability. In Sony Corp. of America v. Universal City Studios, Inc., the lack of an “ongoing relationship” between Sony and its VCR customers supported the Court’s conclusion that it should not impose contributory liability on Sony for any infringing copying done by Sony VCR owners. 464 U.S. 417, 437-38 (1984). The Sony Court did deem it “just” to impose liability on a party in a “position to control” the infringing uses of another, but as a contributory, not direct, infringer. Id. at 437. And asking whether copying copyrighted material is only “incidental” to a given technology is akin to asking whether that technology has “commercially significant noninfringing uses,” another inquiry the Sony Court found relevant to whether imposing contributory liability was just. Id. at 442.

The Supreme Court’s desire to maintain a meaningful distinction between direct and contributory copyright infringement is consistent with congressional intent. If Congress had meant to assign direct liability to both the person who actually commits a copyright-infringing act and any person who actively induces that infringement, the Patent Act tells us that it knew how to draft a statute that would have this effect. Because Congress did not do so, the Sony Court concluded that “the Copyright Act does not expressly render anyone liable for infringement committed by another.” 464 U.S. at 434. Furthermore, in cases like Sony, the Supreme Court has strongly signaled its intent to use the doctrine of contributory infringement, not direct infringement, to “identify[] the circumstances in which it is just to hold one individual accountable for the actions of another.” Id. at 435. Thus, although Sony warns us that “the lines between direct infringement, contributory infringement, and vicarious liability are not clearly drawn,” id. at 435 n. 17, that decision does not absolve us of our duty to discern where that line falls in cases, like this one, that require us to decide the question.

The district court apparently concluded that Cablevision’s operation of the RS-DVR system would contribute in such a major way to the copying done by another that it made sense to say that Cablevision was a direct infringer, and thus, in effect, was “doing” the relevant copying. There are certainly other cases, not binding on us, that follow this approach. See, e.g., Playboy Enters. v. Russ Hardenburgh, Inc., 982 F.Supp. 503, 513 (N.D.Ohio 1997) (noting that defendant ISP’s encouragement of its users to copy protected files was “crucial” to finding that it was a direct infringer). We need not decide today whether one’s contribution to the creation of an infringing copy may be so great that it warrants holding that party directly liable for the infringement, even though another party has actually made the copy. We conclude only that on the facts of this case, copies produced by the RS-DVR system are “made” by the RS-DVR customer, and Cablevision’s contribution to this reproduction by providing the system does not warrant the imposition of direct liability. Therefore, Cablevision is entitled to summary judgment on this point, and the district court erred in awarding summary judgment to plaintiffs.

…

[With respect to the public performance right] Cablevision contends that (1) the RS-DVR customer, rather than Cablevision, does the transmitting and thus the performing and (2) the transmission is not “to the public” under the transmit clause.

As to Cablevision’s first argument, we note that our conclusion [above] that the customer, not Cablevision, “does” the copying does not dictate a parallel conclusion that the customer, and not Cablevision, “performs” the copyrighted work. The definitions that delineate the contours of the reproduction and public performance rights vary in significant ways. For example, the statute defines the verb “perform” and the noun “copies,” but not the verbs “reproduce” or “copy.” We need not address Cablevision’s first argument further because, even if we assume that Cablevision makes the transmission when an RS-DVR playback occurs, we find that the RS-DVR playback, as described here, does not involve the transmission of a performance “to the public.”

Notes and questions

(1) Why does the court think that Cablevision’s customers made the copies using the RS-DVR system? What are the key facts pointing toward this conclusion?

(2) Can you see why the Second Circuit suggests that the volitional act requirement might work differently in the context of the performance right than in reproduction right cases?

(3) Cablevision reasoned that a narrow rule of direct liability was safe because contributory liability stood behind it: the court’s “refusal to find Cablevision directly liable on these facts is buttressed by the existence and contours of the Supreme Court’s doctrine of contributory liability.” That assumption is worth revisiting after Cox Communications, Inc. v. Sony Music Entertainment, 146 S. Ct. 959 (2026), discussed at length in the chapter on secondary liability, where the Court held that “a company is not liable as a copyright infringer for merely providing a service to the general public with knowledge that it will be used by some to infringe copyrights.” If the backstop is narrower than Cablevision supposed, does that change how hard the volitional conduct line should work? Or does it simply mean that some conduct now falls outside both doctrines?

How did the Supreme Court decision in Aereo affect the Cablevision ruling?

This is a difficult question to answer because Justice Breyer’s majority opinion in Aereo can be read in different ways. In Aereo, the majority of the Supreme Court held that the defendant Internet retransmission service did publicly perform works initially broadcast by various television networks within the meaning of the ‘transmit clause’ of the public performance right. At its narrowest, Aereo holds that, regardless of the source of the transmission or whether the user initiated the transmission, a service provider that is indistinguishable from a cable retransmission service from the point of view of the end-user publicly performs whenever it makes a transmission to the end-user. More broadly, one could read Aereo as holding that any transmission of the same work to multiple people is potentially a public performance, regardless of whether it is sourced from the same copy, depending on the “relationship” those people have to the work, particularly, whether they receive the work “in their capacities as owners or possessors” thereof.

Aereo’s system combined the features of an RS-DVR and Internet retransmission service. Aereo’s customers predominantly used it to watch broadcast television in close-to-real-time as a substitute for using their own antenna or subscribing to a traditional cable system. The Aereo service was clearly designed to take as much advantage of the Second Circuit’s Cablevision holding as possible. Rather than using a single receiver and recording only one copy of each work that might be required, Aereo supposedly dedicated an individual dime-sized antenna and an individual hard drive allocation to each user. Broadcast television was only received, recorded, and transmitted to the end-user if that end-user so specified.

In the Aereo case, the defendant argued that given the individualized and automated nature of its system, the individual users and not the service provider ‘made’ the transmissions at issue. It also argued that these same design choices made any transmissions to end-users private, rather than public. These arguments resonated with Justice Scalia, but found no traction with the majority. Indeed, it is striking that the majority decision barely addresses the volitional conduct question at all. The majority simply holds that, in view of the legislative history and the manifest intention of Congress to make cable retransmission services liable for copyright infringement, “an entity that acts like a CATV system itself performs, even if when doing so, it simply enhances viewers’ ability to receive broadcast television signals.” Aereo at 2506 (emphasis added).

In his detailed exposition of the volitional act requirement, Justice Scalia argued that cable systems perform because they send a constant transmission stream to their subscribers. The Aereo system, in contrast, remained inert until a subscriber sent the ‘watch’ command. Only then, and quite automatically, would the Aereo system activate an antenna and begin to transmit the requested program. In Scalia’s view, even though both sender and receiver of a conventional broadcast could be said to ‘perform’ because both engage in an affirmative volitional act, only the user of an automated system performs when she alone initiates and receives a transmission.

Writing for the majority, Justice Breyer dismissed this argument, noting that the “sole technological difference between Aereo and traditional cable companies” was invisible and meaningless to Aereo’s subscribers and to Aereo itself. Breyer’s commitment to purposivism brushed aside Scalia’s commitment to formalism, (at 2507):

But this difference means nothing to the subscriber. It means nothing to the broadcaster. We do not see how this single difference, invisible to subscriber and broadcaster alike, could transform a system that is for all practical purposes a traditional cable system into ‘a copy shop that provides its patrons with a library card.’

The majority in Aereo did not reject the volitional act requirement across the board, not even necessarily in the context of the performance right. The contours of the cable system analogy are far from clear; all that can be said without fear of contradiction is that transmissions that “look like a cable system” to the Supreme Court are deemed volitional.

Is there a textual basis in the Copyright Act for the volitional act requirement?

In Aereo, Justice Scalia observed:

The Networks’ claim is governed by a simple but profoundly important rule: A defendant may be held directly liable only if it has engaged in volitional conduct that violates the Act. This requirement is firmly grounded in the Act’s text, which defines “perform” in active, affirmative terms: One “perform[s]” a copyrighted “audiovisual work,” such as a movie or news broadcast, by “show[ing] its images in any sequence” or “mak[ing] the sounds accompanying it audible.” § 101. And since the Act makes it unlawful to copy or perform copyrighted works, not to copy or perform in general, see § 501(a), the volitional-act requirement demands conduct directed to the plaintiff’s copyrighted material.

Are you convinced?

Fox Broadcasting Co., Inc. v. Dish Network L.L.C., 747 F.3d 1060 (9th Cir. 2014)

Opinion by Circuit Judge Thomas:

The district court did not abuse its discretion in holding that Fox was unlikely to succeed on its claim of direct copyright infringement regarding PrimeTime Anytime. To establish a claim of copyright infringement by reproduction, the plaintiff must show ownership of the copyright and copying by the defendant. In this case, the district court determined that Fox had demonstrated ownership of the copyrights of some of the shows. The court then focused on who made the copies of Fox programs using PrimeTime Anytime: Dish or its customers. The district court noted that the Second Circuit had considered a similar question in Cartoon Network LP v. CSC Holdings, Inc. (“Cablevision”), 536 F.3d 121 (2d Cir.2008). The Second Circuit concluded that Cablevision’s remote-storage DVR system did not directly infringe the plaintiffs’ copyrights. Unlike a typical DVR system, in which a customer’s remote sends signals to the set-top box in her home, users of Cablevision’s remote-storage DVR system sent signals to Cablevision’s central facility, where a copy of the program the viewer selected was created and stored on Cablevision’s central servers. The question was “who made this copy” — the viewer or Cablevision? Id. at 130. The Second Circuit held that much like a VCR user makes the copy, so did the Cablevision customer.

In this case, the district court found that “Dish exercises a degree of discretion over the copying process beyond that which was present in Cablevision.” It pointed to the facts that Dish decides how long copies are available for viewing, Dish maintains the authority to modify the start and end times of the primetime block, and a user cannot stop a copy from being made once the recording has started. Yet the court held that “at this stage of the proceedings,” it was “not satisfied” that PrimeTime Anytime had “crossed over the line that leads to direct liability.” The court held that the “user, not Dish, must take the initial step of enabling” PrimeTime Anytime. “The user, then, and not Dish, is the most significant and important cause of the copy.”

The district court did not abuse its discretion in concluding that Fox had not established a likelihood of success on this claim. Infringement of the reproduction right requires copying by the defendant, which comprises a requirement that the defendant cause the copying. See Cablevision, 536 F.3d at 130 (explaining that direct infringement claim turned on “who made” the copies). Fox argues that because Dish participates in the operation of PrimeTime Anytime on a daily basis, Dish made the copies, either alone or concurrently with its users. However, operating a system used to make copies at the user’s command does not mean that the system operator, rather than the user, caused copies to be made. Here, Dish’s program creates the copy only in response to the user’s command. Therefore, the district court did not err in concluding that the user, not Dish, makes the copy.

That Dish decides how long copies are available for viewing, modifies the start and end times of the primetime block, and prevents a user from stopping a recording might be relevant to a secondary or perhaps even a direct infringement claim. Cf. Cablevision, 536 F.3d at 132-33 (finding that factors evidencing Cablevision’s control over copying process seemed “more relevant to the question of contributory liability” but reserving the question “whether one’s contribution to the creation of an infringing copy may be so great that it warrants holding that party directly liable for the infringement, even though another party has actually made the copy”). But these facts do not establish that Dish made the copies. Therefore, the district court did not err in holding that Fox did not establish a likelihood of success on its direct infringement claim.

Notes and questions

(1) In Fox v. Dish Network, the Ninth Circuit followed earlier decisions such as Netcom, CoStar, and Cablevision and held: “Infringement of the reproduction right requires copying by the defendant, which comprises a requirement that the defendant cause the copying.” It elaborated that “operating a system used to make copies at the user’s command does not mean that the system operator, rather than the user, caused copies to be made.” Is Fox Broadcasting a significant extension of Cablevision? At what point should the “degree of discretion over the copying process” make a service provider directly liable for copyright infringement? In Fox Broadcasting, the service provider decided how long copies are available for viewing, it modified the start and end times of the primetime block according to the networks’ own schedules, and it did not allow users to stop a recording of the primetime blocks once it had begun. How significant were these features?

(2) Some overseas jurisdictions treat a service provider like Dish as jointly making copies along with its customers. Does that make sense? Fox argued that because the defendant participated in the operation of its PrimeTime Anytime feature on a daily basis, the defendant service provider made the copies, either alone or concurrently with its users. In Fox’s view, the conclusion that the users made the copies does not negate a finding that the service provider did too — the copies could be considered jointly made by both service provider and end-user. What did the court of appeals make of that argument?

(3) Note that not everything turns on who made the copy. The court of appeals notes several factors indicating Dish’s degree of involvement with the copying notes that these “might be relevant to a secondary or perhaps even a direct infringement claim” (emphasis added). The court cites the passage in Cablevision where the Second Circuit reserved the question “whether one’s contribution to the creation of an infringing copy may be so great that it warrants holding that party directly liable for the infringement, even though another party has actually made the copy …” See Cablevision 536 F.3d at 132-33. What degree of involvement might justify holding a service provider liable as a direct infringer even if the service provider did not perform the infringing act?

(4) In addition to holding that the district court had not abused its discretion in holding that Fox was unlikely to succeed on its claim of direct copyright infringement regarding Dish Network’s new DVR features, the court of appeals also found that Fox was unlikely to succeed on its claim of secondary copyright infringement for the PrimeTime Anytime and AutoHop programs because the copying by the consumers was fair use.

(5) More recent cases on the volitional act requirement include Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017), BWP Media USA, Inc. v. T & S Software Assocs., Inc., 852 F.3d 436 (5th Cir. 2017), VHT, Inc. v. Zillow Group, Inc. (9th Cir. 2019) (March 15, 2019) and BWP Media USA Inc. v. Polyvore, Inc. (2d Cir. 2019); Oracle America, Inc. v. Hewlett Packard Enterprises Co., 971 F.3d 1042, 1053 (9th Cir. 2020). Some of these are discussed below.

Volition as proximate cause?

Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017) is a good place to pick up the debate about whether volition means an act of deciding/choosing or something like proximate cause in tort law. The 2017 Ninth Circuit decision in Giganews is in some ways a replay of the Netcom decision that first articulated the volitional conduct requirement in 1995. The USENET group that is the subject of the Giganews case is essentially the same thing as the Internet BBS in Netcom. The extract below is confined to the volition as an act of deciding versus volition as causation issue.

Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017)

Circuit Judge D.W. Nelson

… To establish a prima facie case of direct infringement, a plaintiff “must show ownership of the allegedly infringed material” and “demonstrate that the alleged infringers violated at least one exclusive right granted to copyright holders under 17 U.S.C. § 106.” A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001). In addition, direct infringement requires the plaintiff to show causation (also referred to as “volitional conduct”) by the defendant. See Fox Broad. Co., Inc. v. Dish Network L.L.C., 747 F.3d 1060, 1067 (9th Cir. 2013).

We wish to emphasize that the word “volition” in this context does not really mean an “act of willing or choosing” or an “act of deciding,” which is how the dictionary defines the term. Volition, Webster’s Third New International Dictionary (1986). Rather, as used by the court in Religious Technology Center v. Netcom 907 F.Supp. 1361, 1370 (N.D. Cal. 1995), it simply stands for the unremarkable proposition that proximate causation historically underlines copyright infringement liability no less than other torts. As the district court cogently explained:

The so-called “volition” element of direct infringement is not a judicially-created element of intent or knowledge; it is a basic requirement of causation. As its name suggests, direct liability must be premised on conduct that can reasonably be described as the direct cause of the infringement.

Perfect 10, Inc., 2014 WL 8628034, at *7 (emphasis in original).

Contrary to Perfect 10’s contention, this requirement of causation remains an element of a direct infringement claim. In Fox Broadcasting, we explained that “infringement of the reproduction right requires copying by the defendant, which comprises a requirement that the defendant cause the copying.” 747 F.3d at 1067. In using this language, we indicated that causation is an element of a direct infringement claim.

Notes and questions

(1) In addition to the causation discussion extracted above, Giganews is also significant for its post-Aereo reaffirmation of the volitional conduct requirement. The Ninth Circuit reviewed the case law on volitional conduct and noted that every Court of Appeals to have considered an automated service provider’s direct liability for copyright infringement had adopted the volitional-conduct requirement. The court argued that the Aereo majority did not expressly address the volitional conduct requirement and that the Court’s analysis could be reconciled with it, and thus “we conclude that the requirement was left intact …” This was recently reaffirmed in the 2023 case of Hunley v. Instagram, LLC discussed in the chapter of this book addressing the Copyright Implications of Linking and Embedding on the Internet.

(2) In BWP Media USA Inc. v. Polyvore, Inc., 922 F.3d 42 (2d Cir. 2019) the Second Circuit also confirmed that volitional act survives Aereo. However, the Second Circuit panel divided on the exact nature of the volition requirement. In addition to a short per curiam decision, each member of the panel wrote separately, concurring in the result.

Judge Newman argued that volition should be understood to mean proximate causation in the sense that term is used in torts. Judge Walker disagreed, insisting that “volition and causation are different concepts.” Whereas Judge Pooler also wrote separately but did not take a side in the volition versus proximate cause debate.

As Judge Walker notes,

Proximate causation is a negligence concept that has to do with risk and foreseeability. Volition, on the other hand, is the act of making a choice or determining something. In the context of direct copyright infringement, volition is choosing to engage in an act that causes infringement. Therefore, although a volition analysis may under certain circumstances require an explicit causation analysis, and although applying only a causation analysis to particular facts may yield the same result as a volition analysis, volition is not the same thing as causation.

Even if one accepts that volition is something like the tort law concept of proximate cause, the imprecision of that particular analytical tool means that one is still left wondering exactly what volition means. Do acts too remote from the infringing act lack volition, or does a lack of volition make an act too remote from the infringing act to qualify as direct infringement? If we concede that volition is, or is like, proximate cause and that proximate cause reflects important policy judgments about how far tort liability should extend, then what are the relevant policies that should flesh out the concept of volition?

(3) For further reading, see Professor Robert C. Denicola, Volition and Copyright Infringement, 37 Cardozo Law Review 1259 (2016).

Linking, Embedding and the “Server Test”

Origins of the server test in Perfect 10, Inc. v. Amazon.com, Inc.

In the language of computer programming, a “server” is a computer which manages access to a centralized resource or service in a network. A server can be a program running on a laptop connected to a network, or it can be an enormous data center occupying millions of square feet and consuming as much power as a small city. For many purposes, which server a piece of data resides on is not very important, but sometimes in copyright law it is vitally important.

In Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), the plaintiff argued, among other things, that Google and Amazon were directly liable for copyright infringement when they linked to third party websites that hosted infringing materials. Perfect 10 argued that when a user clicks on a link to an image, the search engine that provided that image makes an unauthorized display.

In Perfect 10 the Ninth Circuit drew a sharp distinction between displaying an image from one’s own server and merely linking to the same image stored on someone else’s server. The former is both a reproduction and a display; the latter is merely an instruction to the user’s Internet browser to render a display from elsewhere. As such, under the “server test,” there is no direct liability for ordinary linking on the Internet.

As a matter of statutory interpretation, the Ninth Circuit reasoned that because “display” is defined as “to show a copy of [the work] either directly or by means of [any] device or process” and “copies” is defined in terms of “material objects,” it follows that “based on the plain language of the statute, a person displays a photographic image by using a computer to fill a computer screen with a copy of the photographic image fixed in the computer’s memory.” Is that convincing?

The server test and embedded content

In Goldman v. Breitbart News Network, LLC, 302 F.Supp.3d 585 (S.D.N.Y. 2018), the district court held third parties who embedded a Tweet displaying a copyrighted photograph potentially violated the exclusive right to display the work, directly and not merely through contributory or vicarious liability. The court held that the Ninth Circuit’s “server test” was inapplicable, finding no basis in the “plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence … for a rule that allows the physical location or possession of an image to determine who may or may not have ‘displayed’ a work within the meaning of the Copyright Act.” The court in Goldman held that the “server test” was inapplicable in cases where the user takes no action to “display” the image. Although Goldman and a handful of other cases have questioned, if not refuted, the server test, the Ninth Circuit seems reluctant to let it go.

Hunley v. Instagram, LLC, 73 F.4th 1060 (9th Cir. 2023)

The post showed Brauer’s Instagram post in its entirety. Time did not seek a license from Brauer or permission from Instagram to display this photo. Because Time embedded Brauer’s Instagram post containing the photo, Time never stored or made a copy of Brauer’s photo. Instead, the embedding instructions caused Brauer’s Instagram post to appear on Time’s website alongside Time’s own content.

[BuzzFeed and Time] do not violate Instagram users’ exclusive display rights. Because they do not store the images and videos, they do not “fix” the copyrighted work in any “tangible medium of expression.” Therefore, when they embed the images and videos, they do not display “copies” of the copyrighted work.

To perform or display a work “publicly” means

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

When a user clicks on a thumbnail image, the user’s browser program interprets HTML instructions on Google’s webpage. Following these instructions, the browser creates a “window”: the infringing image appeared “in its original context[] on the lower portion of the window on the user’s computer screen[,] framed by information from Google. Google did not host or store the image that filled the bottom part of the screen, nor did Google communicate the images to the user: the browser, following directions from Google, accessed the third-party website and relayed it to the user.

Here the signals pursue their ordinary course of travel through the universe until today’s “turn of the knob”—a click on a website— activates machinery that intercepts and reroutes them to Aereo’s subscribers over the Internet. But this difference means nothing to the subscriber. It means nothing to the broadcaster. We do not see how this single difference, invisible to subscriber and broadcaster alike, could transform a system that is for all practical purposes a traditional cable system into “a copy shop that provides its patrons with a library card.”

Notes and questions

(1) In Hunley v. Instagram, LLC the Ninth Circuit upheld the Perfect 10 Server Test and confirmed its application to embedded photos. It did so in the face of intense skepticism from the Southern District of New York. Specifically, the court held that, under Perfect 10, Instagram could not be liable for secondary infringement because embedding a photo does not “display a copy” of the underlying image on the theory that a copy of a photographic image is not displayed unless it is fixed in a computer’s memory. Accordingly, the only display that occurs is from the computer where the embedded file is located.

(2) The panel responded to several arguments that have been raised against the Server Test: it held that Perfect 10 did not restrict the application of the Server Test to a specific type of website, such as search engines; it said that it was powerless to hold that Perfect10 is inconsistent with the Copyright Act outside of an en banc proceeding; and it held that Perfect 10 was not effectively overturned by American Broadcasting Co. v. Aereo, 573 U.S. 431 (2014), which held that a streaming provider infringed broadcasters’ exclusive right of public performance. Should the Ninth Circuit have heard this case en banc? Should the Supreme Court weigh in on the Server Test?

(3) Note that the server test does not immunize Internet hosts from liability for copyright infringement, it simply channels the question to copyright’s doctrines of secondary liability. In Perfect 10 v. Amazon.com, the Court of Appeals found that by linking to infringing material a search engine “substantially assists websites to distribute their infringing copies to a worldwide market and assists a worldwide audience of users to access infringing materials,” and thus a search engine could be said to make a “material contribution” to infringing conduct. On this basis, the court remanded the decision back to the District Court for further consideration as to whether Google had the requisite level of knowledge for contributory liability. Note that this describes the law as it stood before Cox. Until 2026 a fair summary of contributory liability was that a defendant with the appropriate knowledge of infringing activity and who materially contributed to it could be held liable. The Supreme Court has now held that knowledge, whether specific or general, is not the question, and that the trigger for contributory liability is intention: “The provider of a service is contributorily liable for the user’s infringement only if it intended that the provided service be used for infringement.” How much of Perfect 10’s “material contribution” reasoning survives is an open question, and it matters here, because the whole point of the server test is to route these cases into secondary liability.

(4) What is the alternative to the Server Test? Should all unlicensed in-line linking or embedding be presumptively infringing, regardless of whether the person linking had any knowledge of the relevant facts? That does not seem right, but perhaps volitional conduct is all we need as an alternative to the Server Test? In Goldman v. Breitbart, 302 F. Supp. 3d 585 (S.D.N.Y. 2018) the district court noted that “each and every defendant itself took active steps to put a process in place that resulted in a transmission of the photos so that they could be visibly shown.” The defendants were the volitional actors, even though the photo did not reside on their servers. Whereas in Perfect 10 it was clearly the users who took the most proximate volitional act in causing the display of the high-resolution image to occur. One could distinguish Goldman from Perfect 10 in terms of volition without the need for the Server Test. Would this approach be better? How would it have worked out in Hunley v. Instagram?

(5) Buzzfeed changed the title of the story and noted a correction on June 11, 2020: “This post has been updated and several photographs were removed because the original list did not meet our editorial standards regarding photo permissions.” In response to pressure from the American Society of Media Photographers (ASMP) and the National Press Photographer’s Association (NPPA), Instagram now (since December 2012) gives all users control over whether to permit embedding in their account settings. This explains why, as of July 2023, several of the photos in the Buzzfeed article have been replaced by a notice that reads: “Instagram. The link to the photo or video may be broken, or the post may have been removed. Visit Instagram.”

(6) The Second Circuit had a chance to address this issue in 2026 but declined to do so. In Richardson v. Townsquare Media, Inc., 174 F.4th 299 (2d Cir. 2026), a hip-hop news site embedded a videographer’s clip from a post on X. The court set out the disagreement over the viability of the server test, but noted that the defendant had not argued the point. For the state of that disagreement in the district courts, see Lynk Media, LLC v. Independent Digital News & Media, LLC, 2025 WL 2771625 (S.D.N.Y. Sept. 29, 2025), whose footnote 6 collects the Second Circuit decisions going the other way.

(7) The question is also pending in the Fifth Circuit. Emmerich Newspapers, Inc. v. Particle Media, Inc. was argued on 2 June 2026 and had not been decided at the time of writing.

(8) Embedding and licensing. In Sinclair v. Ziff Davis, LLC, 454 F. Supp. 3d 342 (S.D.N.Y. 2020), professional photographer Stephanie Sinclair sued Ziff Davis and Mashable for copyright infringement after Mashable embedded her photograph, “Child, Bride, Mother/Child Marriage in Guatemala,” in an article without her permission. Sinclair had posted the photograph on her public Instagram account and refused to license it directly to Mashable. The district court initially dismissed Sinclair’s claims, holding that by agreeing to Instagram’s Terms of Use and making her account public, Sinclair had authorized Instagram to grant a sublicense to API users like Mashable. However, upon reconsideration, the court found insufficient evidence that Instagram had indeed explicitly exercised its right to grant a sublicense to Mashable. See Sinclair v. Ziff Davis, LLC, No. 18-CV-790 (KMW), 2020 WL 3450136 (S.D.N.Y. June 24, 2020). The court emphasized that valid licenses require the licensor’s “explicit consent” and deemed Instagram’s Platform Policy language ambiguous, as it could be interpreted in multiple ways. Compare Richardson, above, where the license argument succeeded. The interview video had been uploaded to YouTube by a third party, and YouTube’s Terms of Service give it a “worldwide, non-exclusive, royalty-free, sublicensable and transferable license.” The Second Circuit held that the uploader thereby “gave permission to YouTube to sublicense the video to Townsquare and provided a license directly to Townsquare as well,” both covering republication by embedding, and that the Terms were “integral” to the complaint and so could be considered on a motion for judgment on the pleadings.