If It Involves Your Customer, It Could be Your Problem Too
Written by: Susan Neuberger Weller
Right on the heels of our blog on trademarks and contributory infringement, comes a case in which the court refused to dismiss a claim against Amazon for sales by third parties of allegedly infringing photographs on its site. The case, Masck v. Sports Illustrated, et al., involves multiple claims against multiple parties for copyright infringement based upon the unlawful reproduction of a famous photograph of Desmond Howard taken on November 23, 1991 during a football game between the University of Michigan Wolverines and the Ohio State Buckeyes. Howard, after running back a punt for a Michigan touchdown, struck what is now known as “the Heisman pose” just before crossing into the end zone. Plaintiff Masck took a photograph of Howard in this pose and sent it to Sports Illustrated, which paid Masck for use of the photograph in a 1991 SI article about Howard, for which he was properly credited. The negative for the photograph was never returned to Masck.
Since that time, Masck became aware of many unauthorized uses of the photograph by various third parties, and eventually brought suit for copyright infringement and other claims. Included among those claims were claims for vicarious and contributory copyright infringement against Amazon for allowing third-party sales of infringing photographs on its site. Amazon moved to dismiss the claims on grounds that it had neither the ability to supervise the sale of infringing photos on its site nor an obvious direct financial interest in the sale, emphasizing that as an “e-commerce platform provider” through which thousands of sellers posted thousands of items for sale, it had no “practical ability” to assess which of those items may or may not be infringing.
As with trademarks, a claim for vicarious copyright infringement requires that the alleged infringer have the “right and ability to supervise the infringing conduct” and has “an obvious and direct financial interest in the infringement.” If these facts are demonstrated, liability may exist even in the absence of actual knowledge of the infringement. On the facts alleged in this case, the court dismissed the vicarious infringement claim for Plaintiff’s failure to demonstrate that Amazon had the ability to supervise the infringing conduct.
However, the court refused to dismiss the contributory infringement claim against Amazon. Contributory infringement occurs when one “with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.” Since the photographer Masck had specifically requested that Amazon take down the infringing merchandise, the court found that Amazon had knowledge of the infringing activity and yet continued to sell or allow the sale of the merchandise nonetheless. The court stated that selling the infringing merchandise is a material contribution to the direct copyright infringement so that the claim would not be dismissed.
The lesson here is never to ignore an allegation that you are in some way involved, directly or indirectly, with conduct considered to be an infringement of another’s intellectual property rights. Such a claim should be vetted by competent counsel so appropriate steps can be taken, if necessary, to address the issue promptly and thoroughly. Moreover, ignorance is not always bliss where a direct financial interest in activities subject to your supervision and control are present. We will keep you posted on further developments in this case.