SDNY Reaffirms 'Volitional Conduct' Element of Infringement

One of the major challenges facing any practicing intellectual property lawyer is advising clients on whether a given course of conduct or proposed business model will subject them to liability for copyright infringement. It may seem (to the client) like a simple enough question, and one a lawyer should be able to answer with a simple “yes” or “no.” But for the lawyer, such a determination is extremely complex. For one thing, under the modern copyright law, the concept of infringement has expanded to include a host of behaviors that may not look, at first glance, like “copying.” Public performance of a sound recording, displaying an artwork without proper attribution and “circumventing” the copy-protection on digital media can all be violations of the copyright laws under the right (or wrong) factual circumstances. Defenses to infringement—most notably fair use—are similarly complex and fact specific, and the courts are constantly refining the parameters of acceptable conduct as new paradigms emerge. On top of all of that, there is potential liability for direct infringers (those who actually commit the infringement), and secondary infringers (those who knowingly aid in, profit from, or provide the means for, infringement). Copyright infringement is never simple.

But in New York, even the simple cases aren’t simple. A traditional claim for direct infringement is as straightforward as copyright claims can get. It has just two elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns v. Rural Tel. Serv., 499 U.S. 340, 361 (1991). Generally, if defendant admits that copies have been made of plaintiff’s copyrighted works, liability is established. But in the Second Circuit, there is a wrinkle: the question of who actually made the copies. If defendant is merely a passive participant in the copying process—not the source of the “volitional conduct” responsible for the copying—then defendant is not liable for infringement. The volitional conduct test is controversial, especially in light of recent U.S. Supreme Court jurisprudence, and in particular the context of Internet service providers (ISPs) (which have other protections against liability, including “safe harbor” provisions under the Digital Millennium Copyright Act (DMCA)), but a recent decision from the Southern District of New York makes it clear that the doctrine is alive and well, at least for the time being.

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