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`No. _______
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`IN THE
`Supreme Court of the United States
`
`___________________
`VHT, INC.,
`Petitioner,
`
`v.
`ZILLOW GROUP, INC., AND ZILLOW, INC.
`Respondents.
`___________________
`On Petition for a Writ of Certiorari to the
`United States Court of Appeals for the Ninth Circuit
`___________________
`PETITION FOR A WRIT OF CERTIORARI
`___________________
`
`
`Stephen M. Rummage
` Counsel of Record
`Max B. Hensley
`Davis Wright Tremaine
`LLP 920 Fifth Avenue
`Suite 3300
`Seattle, WA 98104
`(206) 622-3150
`steverummage@dwt.com
`
`
`
`Marcia B. Paul
`Davis Wright Tremaine LL
`1251 Ave. of the Americas
`21st Floor
`New York, NY 10020
`(212) 489-8230
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`
`
`
`Counsel for Petitioner VHT, Inc.
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`QUESTIONS PRESENTED
`The owner of a copyright holds the exclusive rights
`of reproduction, distribution, public display, and
`adaptation in his or her work. 17 U.S.C. § 106. Where
`a plaintiff establishes ownership of a work, any other
`party who violates those exclusive rights in the work
`has infringed the plaintiff’s copyright. 17 U.S.C. §
`501(a). This case asks the Court to resolve the
`following questions, which determine when a party
`may be held liable for direct infringements:
`1. Whether a plaintiff must prove that a
`defendant engaged in some form of volitional conduct
`in order to prove direct copyright infringement, as
`described in Justice Scalia’s dissenting opinion in
`American Broadcasting Companies v. Aereo, Inc., 573
`U.S. 431 (2014).
`2.
`If so, whether that requirement is properly
`understood as (1) identical to common-law proximate
`causation, as the Ninth Circuit held here and as one
`member of the panel opined in BWP Media USA Inc.
`v. Polyvore, Inc., 922 F.3d 42 (2d Cir. 2019), or (2) a
`less demanding causation standard, as the Third,
`Fourth, and Fifth Circuits have held, or (3) requiring
`only an affirmative act with a meaningful connection
`to the infringement, as suggested by other members
`of the Second Circuit panel in Polyvore.
`3. Whether a volitional conduct requirement
`insulates
`from
`liability
`for direct
`infringement
`defendants who create and maintain automated
`systems for making copies of content not requested by
`users, as the Ninth Circuit held, in conflict with this
`Court’s decision in Aereo and opinions of the D.C. and
`Second Circuits.
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`ii
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`PARTIES TO THE PROCEEDING
`The parties named in the caption are the only
`parties to this proceeding. The petitioner, VHT, Inc.,
`is a for-profit corporation. The respondents are Zillow
`Group, Inc. and Zillow Inc.
`
`RULE 29.6 STATEMENT
`Petitioner VHT, Inc., does not have a parent
`corporation and no publicly held corporation owns
`10% or more of VHT’s stock.
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`iii
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`TABLE OF CONTENTS
`
`QUESTIONS PRESENTED ........................................ i
`
`PARTIES TO THE PROCEEDING ........................... ii
`
`RULE 29.6 STATEMENT .......................................... ii
`
`TABLE OF AUTHORITIES ........................................ v
`
`PETITION FOR A WRIT OF CERTIORARI ............. 1
`
`OPINIONS BELOW .................................................... 2
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`JURISDICTION .......................................................... 2
`
`STATUTORY PROVISIONS INVOLVED ................. 2
`
`A. Statutory Framework .................................... 3
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`B. Factual Background ....................................... 3
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`C. Proceedings Below ......................................... 6
`
`REASONS FOR GRANTING THE WRIT .................. 9
`
`I. The Ninth Circuit’s Ruling Has
`Entrenched a Circuit Split. ........................... 9
`
`A. The Third, Fourth, and Fifth Circuits
`Reject Proximate Cause Analysis in
`Favor of a Lesser Causation Standard. ...... 10
`
`B. The First and District of Columbia
`Circuits Apply Traditional Copyright
`Analysis to Determine the Scope of
`Direct Liability ............................................. 13
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`iv
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`C. The Second Circuit Has Manifested
`Confusion Over Volitional Conduct,
`Even While Finding Direct Liability
`in Circumstances Materially Identical
`to the Facts Here. ........................................ 16
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`II. The Ninth Circuit’s Ruling Cannot Be
`Reconciled with This Court’s Precedent. .... 19
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`III. The Ninth Circuit’s Rule Is Wrong As a
`Matter of Statutory Construction and
`as a Matter of Policy. ................................... 22
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`IV. The Question Presented Is Recurring and
`Important. .................................................... 26
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`CONCLUSION .......................................................... 27
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`APPENDIX ................................................................ 1a
`
`Appendix A, Opinion of the United States Court
`of Appeals for the Ninth Circuit ............................... 1a
`
`Appendix B, Order of the United States District
`Court for the Western District of Washington ....... 49a
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`Appendix C, Order of the United States District
`Court for the Western District of Washington ....... 59a
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`TABLE OF AUTHORITIES
` Page(s)
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`Cases
`
`Am. Code Co. v. Bensinger,
`282 F. 829 (2d Cir. 1922) ..................................... 14
`
`Am. Broad. Cos. v. Aereo, Inc.,
`573 U.S. 431 (2014) ...................................... passim
`
`BWP Media USA Inc. v. Polyvore, Inc.,
`922 F.3d 42 (2d Cir. 2019) ........................... passim
`
`BWP Media USA, Inc. v. T & S Software Assocs.,
`852 F.3d 436 (5th Cir.),
`cert. denied, 138 S. Ct. 236 (2017) ........... 12, 13, 15
`
`Capitol Records LLC v. Vimeo, LLC,
`826 F.3d 78 (2d Cir. 2016) ................................... 24
`
`Cartoon Network LP, LLLP v. CSC Holdings, Inc.,
`536 F.3d 121 (2d Cir. 2008) ................................. 17
`
`Columbia Pictures Indus., Inc. v. Redd Horne, Inc.,
`749 F.2d 154 (3d Cir. 1984) ................................. 14
`
`CoStar Group, Inc. v. LoopNet, Inc.,
`373 F.3d 544 (4th Cir. 2004) ........................ passim
`
`EMI Christian Music Grp., Inc. v. MP3tunes, LLC,
`844 F.3d 79 (2d Cir. 2016),
`cert. denied sub. nom. Robertson v. EMI
`Christian Music Grp., Inc., 137 S. Ct. 2269
`(2017) .................................................................... 17
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`vi
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`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
`499 U.S. 340 (1991) .............................................. 11
`
`Leonard v. Stemtech Int’l Inc.,
`834 F.3d 376 (3rd Cir. 2016),
`cert. denied, 138 S. Ct. 975 (2018) ................. 12, 13
`
`Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
`545 U.S. 913 (2005) .............................................. 26
`
`N.Y. Times Co. v. Tasini,
`533 U.S. 483 (2001) .............................................. 22
`
`Parker v. Google,
`242 F. App’x 833 (3d Cir. 2007) ........................... 12
`
`Perfect 10, Inc. v. Giganews, Inc.,
`847 F.3d 657 (9th Cir.), cert denied,
`138 S. Ct. 504 (2017) .................................... passim
`
`Playboy Enters., Inc. v. Russ Hardenburgh, Inc.,
`982 F. Supp. 503 (N.D. Ohio 1997) ...................... 10
`
`Princeton Univ. Press v. Mich. Doc. Servs., Inc.,
`99 F.3d 1381 (6th Cir. 1996) ................................ 14
`
`Religious Tech. Ctr. v. Netcom On-Line
`Commc’n Servs. Inc.,
`907 F. Supp. 1361 (N.D. Cal. 1995) ............... 10, 11
`
`Sega Enters. Ltd. v. MAPHIA,
`948 F. Supp. 923 (N.D. Cal. 1996) ....................... 10
`
`Shapiro, Bernstein & Co. v. H. L. Green Co.,
`316 F.2d 304 (2d Cir. 1963) ................................. 10
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`vii
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`Society of Holy Transfiguration
`Monastery, Inc. v. Gregory,
`689 F.3d 29 (1st Cir. 2012) ............................ 14, 15
`
`Spanski Enters., Inc. v. Telewizja Polska, S.A.,
`883 F.3d 904 (D.C. Cir. 2018) ...................... passim
`
`Stone v. I.N.S.,
`514 U.S. 386 (1995) .............................................. 23
`
`VHT, Inc. v. Zillow Grp., Inc.,
`918 F.3d 723 (9th Cir. 2019) ........................ passim
`
`WNET, Thirteen v. Aereo, Inc.,
`712 F.3d 676 (2d Cir. 2013),
`rev’d sub nom. Am. Broad. Cos. v.
`Aereo, Inc., 573 U.S. 431 (2014) ........................... 17
`
`Statutes
`
`17 U.S.C. § 106 ........................................................ 2, 3
`
`17 U.S.C. § 501 ...................................................... 3, 11
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`17 U.S.C. § 512 .................................................... 11, 23
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`28 U.S.C. § 1254 .......................................................... 2
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`28 U.S.C. § 1331 .......................................................... 6
`
`Other Authorities
`
`Google, Facebook, Apple, Amazon face
`U.S. anti-trust probe, BBC News,
`https://www.bbc.com/news/technolog
`y-48513328 (last visited June 12,
`2019) ..................................................................... 25
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`1
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`PETITION FOR A WRIT OF CERTIORARI
`Petitioner VHT, Inc., respectfully petitions for a
`writ of certiorari to review the judgment of the U.S.
`Court of Appeals
`for
`the Ninth Circuit
`in
`Nos. 17-35587 and 17-35588.
`in American
`Since
`this Court’s decision
`Broadcasting Companies v. Aereo, Inc., 573 U.S. 431
`(2014), a split has intensified among the circuits as to
`whether a plaintiff seeking recovery for direct
`infringement of a copyright must prove
`the
`infringement resulted from the defendant’s volitional
`conduct and, if so, what that proof entails. The Ninth
`Circuit stands alone in defining volitional conduct as
`proximate causation, a formulation that results in
`sweeping insulation of internet service providers
`(“ISPs”) from liability for infringements they facilitate
`on their websites. Further, the Ninth Circuit’s
`reasoning
`in adopting
`the proximate
`cause
`requirement runs counter to both the plain text of the
`Copyright Act and this Court’s decisions. By contrast,
`six sister Courts of Appeals have adopted different
`formulations for direct infringement liability, leading
`to deepening confusion over the circumstances in
`which ISPs face direct copyright liability for content
`on their websites.
`These conflicting approaches can be outcome-
`determinative on matters that should have a uniform
`federal rule. In fact, the Ninth Circuit’s application of
`a proximate cause requirement to the undisputed facts
`in this case resulted in a holding directly contrary to a
`holding by the Second Circuit on materially identical
`facts handed down just weeks later.
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`2
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`This Court should grant the writ, resolve the split
`among the circuits, and reverse.
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`OPINIONS BELOW
`The Court of Appeals’ opinion, App. 1a-48a, is
`reported at VHT, Inc. v. Zillow Group, Inc., 918 F.3d
`723 (9th Cir. 2019). The District Court’s order on the
`parties’ summary judgment and other motions, App.
`49a-58a, was not reported. The District Court’s order
`on the parties’ post-trial motions, App. 59a-72a, was
`not reported.
`
`JURISDICTION
`The court of appeals entered its judgment on
`March 15, 2019. This Court has jurisdiction under 28
`U.S.C. § 1254(1).
`
`STATUTORY PROVISIONS INVOLVED
`The Copyright Act provides, in relevant part:
`
`[T]he owner of copyright under this title
`has the exclusive rights to do and to
`authorize any of the following:
`(1) to reproduce the copyrighted work in
`copies …;
`(2) to prepare derivative works based
`upon the copyrighted work;
`(3) to distribute copies … of the
`copyrighted work to the public …;
`….
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`3
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`(5) in the case of … pictorial … works, …
`to display
`the
`copyrighted work
`publicly; ...
`….
`17 U.S.C. § 106. The Copyright Act also provides, in
`relevant part, as follows:
`
`
`Anyone who violates any of the exclusive
`rights of the copyright owner as provided
`by section[] 106 ... is an infringer of the
`copyright ....
`17 U.S.C. § 501(a).
`
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`STATEMENT OF THE CASE
`
`
`
`Statutory Framework
`A.
`The Copyright Act of 1976 gives copyright owners
`the exclusive right to reproduce, adapt, distribute, and
`publicly display their works. 17 U.S.C. § 106. “Anyone
`who violates any of the exclusive rights of the
`copyright owner ... is an infringer of the copyright[.]”
`17 U.S.C. § 501(a). This Court has recognized that a
`party is liable for direct copyright infringement “when
`an actor personally engages in infringing conduct.”
`Am. Broad. Cos. v. Aereo, 573 U.S. at 452.
`B.
`Factual Background
`Petitioner VHT is the largest professional real
`estate photography studio in the country. App. 5a.
`Real estate brokers, listing services, and agents hire
`VHT and its trained network of photographers to
`capture high-quality photographs of properties listed
`for sale or rent. Id. The photographers send the
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`images to VHT’s central office, where VHT selects a
`set for delivery (often after enhancing them in its
`studio) and then transmits them to the hiring broker,
`listing service, or agent. Id. VHT retains ownership
`of the copyrights in these photographs, although it
`grants limited licenses to its clients for the use of the
`photographs solely in the sale or marketing of the
`properties they depict. Id.
`Respondents Zillow Group, Inc., and Zillow, Inc.
`(collectively, “Zillow”), operate the leading online real
`estate sales and rental marketplace in the country. Id.
`Zillow allows users to browse property listings in its
`online database where they can check property values,
`research rental and sales listings, and view property
`photographs. Id. Two separate elements of Zillow’s
`diversified business are at issue here: the Listing
`Platform and Digs.1 The Listing Platform contains
`information and photographs of properties, some of
`which are for sale or rent, others of which are not. Id.
`Digs was a separate set of websites linked to the main
`Listing Platform which used exceptional photographs,
`selected from the Listing Platform by both automated
`and human review and from other sources, to enable
`Zillow to market home improvement and remodeling
`services and supplies. Id.
`Zillow receives the photographs it displays on its
`Listing Platform primarily through feeds from real
`estate agents, brokers, and Multiple Listing Services
`(collectively, “feed providers”). App 5a. Zillow
`contracts with each feed provider for the use of the
`images and information on these feeds. App. 10a.
`Zillow makes fourteen copies of each photo it receives
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`1 Digs is no longer an operational website.
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`5
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`from feed providers. In many cases, however, none of
`the copies of a photo are ever displayed on the Listing
`Platform.
`Some feed providers purport to grant Zillow the
`right to continue displaying photographs after the
`property they depict is no longer on the market
`(“evergreen rights”); others do not. Zillow designed its
`automated system so that when it stops displaying
`photos for which it lacks evergreen rights, the system
`searches other copies of that same photograph in
`Zillow’s possession, seeking one received from a feed
`that purports to permit post-sale display. If it finds a
`copy purporting to have evergreen rights, it then
`publicly displays that copy. App. 12a; App. 55a-57a.
`Zillow
`launched Digs several years after
`it
`launched its Listing Platform. It added photographs
`to Digs using three primary methods. First, Zillow’s
`human moderators chose sets of images from the
`Listing Platform for display on Digs. App. 65a-69a.
`Second, Zillow encouraged users of the Listing
`Platform to add images from that site to Digs. Id.
`Third, when a Listing Platform user selected an image
`and began to add it to Digs but failed to complete that
`process, Zillow nonetheless added it to Digs. Id. Users
`could also upload images to Digs from outside of the
`Listing Platform. Id. Zillow placed every “evergreen”
`image on Digs in a moderation queue. Id. Zillow’s
`moderators—first human, and then automated—
`added tags to the highest-quality images to describe
`their contents (including the design style, estimated
`cost, and the identity of certain products shown) and
`made those images searchable. Id.
`Zillow programmed its system so that every time
`an image was added to Digs—regardless of whether
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`6
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`Zillow or a user selected the image, regardless of
`whether Zillow tagged that image for search, and
`regardless of whether Zillow purported to have
`evergreen rights in that image—it created sixteen
`copies of that photograph, some of which have no
`connection to any use known to or intended by the
`user, and some of which were altered to fit Zillow’s own
`intended uses. App. 66a.
`C.
`Proceedings Below
`VHT filed its complaint for copyright infringement
`against Zillow in the United States District Court for
`the Western District of Washington on July 9, 2015.
`The district court had jurisdiction under 28 U.S.C. §
`1331. By the close of discovery, VHT alleged that
`Zillow directly infringed (a) 54,257 VHT images by
`displaying them on its Listing Site after the property
`they depict was no longer on the market, (b) 28,124
`images by reproducing, altering, and displaying them
`on Digs, and (c) one image by distributing it on a blog
`post. App. 10a; App. 15a. VHT argued that Zillow had
`treated these images as if it had evergreen rights
`when, in fact, VHT had granted only a limited license.
`Zillow moved for summary judgment on direct
`infringement, arguing the infringements did not result
`from its volitional conduct. The district court granted
`that motion in part and denied it in part. It dismissed
`the direct infringement claims relating to the use of
`VHT’s copyrighted photographs on the Listing
`Platform, finding no volitional conduct. App. 54a-56a.
`But the district court denied Zillow’s similar motion
`with respect to direct infringements on Digs, finding
`sufficient evidence to send the issue of volitional
`conduct to the jury for claims relating to the Digs
`platform. App. 56a-58a.
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`7
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`After trial, the jury rendered a unanimous verdict
`for VHT on each of the 28,124 VHT photographs on
`Digs, plus the one photograph Zillow distributed in a
`blog post. The jury found that Zillow had infringed
`VHT’s display, reproduction, and adaptation rights,
`both directly and secondarily; rejected Zillow’s implied
`license defense; rejected Zillow’s fair use defense;
`found
`that each photograph had
`independent
`economic value; and found that Zillow’s conduct was
`willful with respect to 3,373 photographs and innocent
`with respect to the remainder. VHT elected statutory
`damages for eligible photographs and actual damages
`for the remainder, for a total award of $8.27 million.
`The district court largely rejected the jury’s verdict.
`In a decision and order dated June 20, 2017, it granted
`in part and denied in part Zillow’s motions for
`judgment as a matter of law and/or a new trial. App.
`59a-60a. It granted Zillow judgment on 24,402
`photographs,
`reversing
`the
`jury’s
`factual
`determination that these photographs had been
`displayed on Digs and that Zillow was the cause of
`direct infringement of their copyrights. App. 61a-71a.
`The district court further rejected the jury’s verdict on
`VHT’s secondary liability claims as to all but 114
`photographs, but accepted the jury’s determinations
`that Zillow’s actions did not constitute fair use and
`that Zillow’s infringements were willful as to the
`searchable photographs.
`Both parties timely appealed to the Ninth Circuit.
`A panel of that court (1) affirmed the district court’s
`ruling that Zillow did not directly infringe the Listing
`Platform photos, App. 14a; (2) affirmed the district
`court’s ruling that Zillow did not directly infringe as to
`the non-searchable Digs photos, App. 22a; (3) affirmed
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`8
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`the district court’s ruling that Zillow’s actions to make
`Digs photos searchable did not constitute fair use,
`App. 35a; (4) affirmed the district court’s ruling that
`Zillow did not secondarily infringe as to the Digs
`photos, App. 40a-41a; (5) remanded the case for
`further proceedings as to whether the remaining
`photographs in dispute were a single work for
`statutory damages purposes as a compilation, App.
`43a; and (6) reversed the district court’s ruling, and
`vacated the jury’s finding, that Zillow willfully
`infringed with respect to the searchable photographs,
`App. 47a.
`In holding that Zillow did not engage in “volitional
`conduct” sufficient to make it liable for direct
`infringement as to either the Listing Platform or the
`non-searchable Digs photographs, the Ninth Circuit
`followed its decision in Perfect 10, Inc. v. Giganews,
`Inc., 847 F.3d 657 (9th Cir.), cert denied, 138 S. Ct. 504
`(2017). Relying on Giganews, the Ninth Circuit found
`that a defendant could be liable for direct infringement
`only if the infringement resulted from its “volitional
`conduct.” The court described the requirement as
`“‘simply stand[ing] for the unremarkable proposition
`that proximate causation historically underlines
`copyright infringement liability no less than other
`torts.’ Stated differently, ‘direct liability must be
`premised on conduct that can reasonably be described
`as the direct cause of the infringement.’” App. 8a
`(quoting Giganews, 847 F.3d at 666). The court
`concluded that Zillow’s conduct was not “volitional”
`even though Zillow designed its automated system to
`reproduce multiple copies of each image and alter
`some images for each of the Listing Platform and for
`Digs. According to the court, the conduct was “based
`on user actions,” even though Zillow’s creation and
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`9
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`alteration of multiple copies was for Zillow’s own
`purposes and not requested by any user. App. 21a
`(Digs); App. 12a (Listing Platform).
`The Ninth Circuit remanded the matter to the
`district court to establish the number of statutory
`damage awards VHT may recover for the 3,921
`copyrighted VHT images for which the Ninth Circuit
`affirmed Zillow’s direct liability, and to determine the
`amount of the damage award. App. 41a-47a.
`REASONS FOR GRANTING THE WRIT
`I. The Ninth Circuit’s Ruling Has Entrenched a
`Circuit Split.
`The Ninth Circuit stands alone in holding that a
`copyright holder seeking to prove direct infringement
`must show the infringer’s conduct to be the proximate
`cause of the infringement. According to the Ninth
`Circuit, a plaintiff pursuing a direct infringement
`claim must prove not only ownership and copying—
`the traditional elements of a copyright claim—but
`“must also establish causation, which is commonly
`referred to as the ‘volitional-conduct requirement.’”
`App. 8a. “[I]n this context,” the Ninth Circuit’s
`requirement is equal to “proximate causation.” Id.
`(quoting Giganews, 847 F.3d at 666).
`As
`explained below,
`the Ninth Circuit’s
`interpretation of the volitional conduct requirement
`conflicts with holdings from the District of Columbia,
`First, Second, Third, Fourth, and Fifth Circuits—all of
`which have considered this issue and reached different
`(and
`largely
`irreconcilable) conclusions.
` The
`variations among the circuits have the pernicious
`effect of making the outcome of direct infringement
`claims under the Copyright Act depend on the circuit
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`10
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`in which they are brought. Indeed, just weeks after
`the Ninth Circuit released its opinion in this case, the
`Second Circuit reached the opposite result on facts
`virtually indistinguishable from the facts here.
`A.
`The Third, Fourth, and Fifth
`Circuits Reject Proximate Cause
`Analysis in Favor of a Lesser
`Causation Standard.
`To provide context, we briefly review the
`development of the law of direct infringement as
`applied to website operators. Courts have long
`recognized that copyright infringement is a strict
`liability tort. See, e.g., Shapiro, Bernstein & Co. v. H.
`L. Green Co., 316 F.2d 304, 308 (2d Cir. 1963). Since
`the dawn of the Internet age, however, courts have
`struggled with that principle when confronting
`infringements resulting from user posts to purely
`passive ISPs. In an oft-cited decision, Religious
`Technology Center v. Netcom On-Line Communication
`Services Inc., 907 F. Supp. 1361 (N.D. Cal. 1995), the
`district court read into the Copyright Act an implicit
`requirement that an ISP could be liable for direct
`infringement only
`if
`it took some affirmative,
`volitional step to infringe. Netcom, 907 F. Supp. at
`1370. According to that court, a defendant can be
`liable for direct infringement only on a showing of
`either “volition or causation.” Id. (emphasis added).2
`
`
`2 See also Sega Enters. Ltd. v. MAPHIA, 948 F. Supp. 923, 932
`(N.D. Cal. 1996) (operator of online bulletin board not liable for
`direct copyright infringement because plaintiff did not show he
`“directly caused the copying”); Playboy Enters., Inc. v. Russ
`Hardenburgh, Inc., 982 F. Supp. 503, 513 (N.D. Ohio 1997)
`(encouraging upload and screening posts
`“transform[ed]
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`In response to these efforts to cabin liability for an
`ISP’s purely passive hosting conduct, Congress in 1998
`enacted the Digital Millennium Copyright Act, 17
`U.S.C. § 501 et seq. (“DMCA”). The DMCA implicitly
`recognized that the Copyright Act did not require a
`plaintiff suing for infringement to prove anything
`more than ownership and copying—the traditional
`touchstones of an infringement claim—to prevail
`against an ISP for user posts. See Feist Publ’ns, Inc.
`v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) (“To
`establish infringement, two elements must be proven:
`(1) ownership of a valid copyright, and (2) copying of
`constituent elements of the work that are original.”).
`But the DMCA provided safe harbors protecting ISPs
`from liability if they satisfied certain statutory
`requirements. 17 U.S.C. § 512. Through the DMCA,
`Congress thus largely redressed the inequity of
`applying strict liability to purely passive ISPs.
`After passage of the DMCA, courts considered
`whether the statute had fully addressed the problem
`identified
`in Netcom—or
`if volitional conduct
`remained relevant in assessing an ISP’s liability. In
`CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544 (4th
`Cir. 2004), the Fourth Circuit found that volitional
`conduct still had a place in infringement analysis,
`despite the DMCA’s passage. In CoStar, the Fourth
`Circuit held that defendant, a subscription-based
`commercial real estate website, did not infringe
`plaintiff’s copyrights in photographs because it was a
`purely passive actor. Brokers uploaded photographs
`of properties to the LoopNet’s site, which were then
`
`Defendants from passive providers of a space in which infringing
`activities happened to occur to active participants in the process
`of copyright infringement”).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`“cursorily” reviewed by LoopNet employees, and then
`its system tagged each photo to associate it with the
`web page for the property depicted. The Fourth
`Circuit found liability could attach only if the plaintiff
`showed “some aspect of volition and meaningful
`causation.” 373 F.3d at 550. But the Court did not
`define that element as “proximate causation.” Rather,
`it concluded that volitional conduct means only that
`the infringer must have caused “in some meaningful
`way” an infringement, requiring a plaintiff to show
`“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.” Id.
`Other courts continue to follow CoStar’s lead. The
`Third Circuit in Leonard v. Stemtech International
`Inc., 834 F.3d 376 (3rd Cir. 2016), cert. denied, 138 S.
`Ct. 975 (2018), for example, held that to establish
`direct copyright infringement, a plaintiff must show
`that the defendant “engaged in volitional conduct,”
`which it defined not as proximate causation but,
`instead, as CoStar defined it: “Volitional conduct
`occurs when a party engages in ‘the act constituting
`infringement.’” Id. at 386-87 (quoting CoStar, 373
`F.3d at 551).3 And the Fifth Circuit likewise followed
`CoStar in BWP Media USA, Inc. v. T & S Software
`Associates, 852 F.3d 436 (5th Cir.), cert. denied, 138 S.
`Ct. 236 (2017). That court acknowledged the Ninth
`
`
`3 Another panel of that court had previously reached the same
`conclusion, with similarly limited analysis, in an unpublished
`decision. Parker v. Google, 242 F. App’x 833, 836 (3d Cir. 2007)
`(affirming determination that plaintiff “failed to allege any
`volitional conduct on the part of Google in archiving USENET
`posts”).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`13
`
`Circuit’s proximate cause test as stated in Giganews.
`Id. at 440 n.1. But in deciding the case, the Fifth
`Circuit
`followed CoStar, holding that the ISP
`defendant in that case escaped liability because “[i]t
`cannot be said that [the ISP’s] conduct ‘cause[d] in
`some meaningful way an infringement.’” Id. at 442
`(quoting CoStar, 373 F.3d at 549).
`In short, the Third, Fourth, and Fifth Circuits do
`not make liability for direct infringement depend on a
`showing of proximate causation. Instead, these
`Courts simply ask whether the defendant did
`something more than merely “host[] the forum on
`which infringing content was posted.” T & S Software,
`852 F.3d at 442. This standard differs significantly
`from
`the Ninth Circuit’s proximate causation
`approach and would have produced a different result
`here. Here, the court of appeals required VHT to show
`more than that Zillow merely engaged in “the act
`constituting infringement.” Leonard, 834 F.3d at 387
`(quoting CoStar, 373 F.3d at 551). Rather, while
`acknowledging that Zillow copied and altered images
`for its own purposes, App. 21a-22a, the court
`concluded that “[a]ny volitional conduct with respect
`to these photos was taken by the users, not Zillow,”
`App. 21a.
`B.
`
`The First and District of Columbia
`Circuits Apply Traditional
`Copyright Analysis to Determine
`the Scope of Direct Liability
`Aside from the confusion associated with the
`definition of volitional conduct, two Circuits have
`considered and declined to adopt a volitional conduct
`requirement for direct copyright infringement.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`14
`
`In Society of Holy Transfiguration Monastery, Inc.
`v. Gregory, 689 F.3d 29 (1st Cir. 2012), the defendant
`admitted the plaintiff’s copyrighted works were
`available on his website but argued he was not liable
`because “he himself did not volitionally copy or post”
`them, relying on CoStar. Id. at 54. The First Circuit
`rejected this proposition. According to that Court,
`“because the [defendant] held authority and control
`over the Website, and … knew of and assented to [his
`agent’s] postings of” the copyrighted works, he could
`be held liable “regardless of whether the law mandates
`a showing of volitional conduct to establish direct
`infringement.” Id. at 56-57. It was enough that the
`defendant “engaged in sufficient acts of authority and
`control over the server and material actually posted”
`to warrant liability for direct infringement. Id. at 57.
`The First Circuit’s approach embodies the classic
`approach to direct infringement liability, which asks
`only whether the defendant committed some act of
`infringement. As the Second Circuit explained nearly
`a century ago: “It is established that the one who
`prints an infringing work is an infringer. So is the
`publisher. As likewise is the vendor.” Am. Code Co. v.
`Bensinger, 282 F. 829, 834 (2d Cir. 1922) (citations
`omitted). Until the Internet age, this doctrine was
`sufficiently uncontroversial to pass without explicit
`discussion. Compare Princeton Univ. Press v. Mich.
`Doc. Servs., Inc., 99 F.3d 1381, 1384 (6th Cir. 1996)
`(direct liability for copy shop which reproduced
`materials selected by university professors); Columbia
`Pictures Indus., Inc. v. Redd Horne, Inc., 749 F.2d 154,
`157 (3d Cir. 1984) (direct liability for video store that
`displayed movies selected by its patrons). In this case,
`Zillow had authority and control over the servers at
`issue, and determined what material could be posted
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`15
`
`to both its Listing Site and Digs. Zillow would be liable
`under the First Circuit standard applied in Gregory.
`Similarly, the District of Columbia Circuit in
`Spanski Enterprises, Inc. v. Telewizja Pols
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