Ventura Content v. Motherless ( 2018 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
VENTURA CONTENT, LTD., an Nos. 13-56332
Anguilla corporation, 13-56970
Plaintiff-Appellant/
Cross-Appellee, D.C. No.
2:11-cv-05912-
v. SVW-FMO
MOTHERLESS, INC., a New York
corporation; JOSHUA LANGE, an OPINION
individual,
Defendants-Appellees/
Cross-Appellants.
Appeal from the United States District Court
for the Central District of California
Stephen V. Wilson, District Judge, Presiding
Argued and Submitted October 19, 2015
Pasadena, California
Filed March 14, 2018
Before: Andrew J. Kleinfeld, Johnnie B. Rawlinson,
and Jacqueline H. Nguyen, Circuit Judges.
Opinion by Judge Kleinfeld;
Dissent by Judge Rawlinson
2 VENTURA CONTENT V. MOTHERLESS
SUMMARY*
Copyright
The panel affirmed the district court’s summary judgment
in favor of the defendants and its order denying attorneys’
fees in a copyright case.
The plaintiff, a creator and distributor of pornographic
movies, alleged that infringing clips were stored and
displayed on defendants’ website.
The panel held that the defendants qualified for the safe
harbor defense set forth in the Digital Millennium Copyright
Act. The material on the website was stored at the direction
of users, who decided what to post. The defendants did not
have actual or apparent knowledge that the clips were
infringing, and they expeditiously removed the infringing
material once they received actual or red flag notice of the
infringement. The defendants also did not receive a financial
benefit directly attributable to infringing activity that they had
the right and ability to control. In addition, the defendants
had a policy of excluding repeat infringers from the website.
The panel held that the district court did not abuse its
discretion in not exercising supplemental jurisdiction over a
California state law claim. The district court also did not
abuse its discretion in denying an award of attorneys’ fees to
defendants.
*
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
VENTURA CONTENT V. MOTHERLESS 3
Dissenting, Judge Rawlinson wrote that there were
triable issues of material fact as to whether the defendants
qualified for the safe harbor. Specifically, there were
disputed issues regarding defendants’ compliance with the
requirement that they adopt, implement, and inform
subscribers and account holders of a policy providing for
termination of repeat offenders.
COUNSEL
Peter R. Afraisabi (argued), Christopher Arledge, and John
Tehranian, One LLP, Newport Beach, California, for
Plaintiff-Appellant/Cross-Appellee.
David S. Richman (argued), Theodora Oringher PC, Los
Angeles, California, for Defendants-Appellees/Cross-
Appellants.
4 VENTURA CONTENT V. MOTHERLESS
OPINION
KLEINFELD, Senior Circuit Judge:
We address the safe harbor provision in the Digital
Millennium Copyright Act1 and conclude that the defendants
are entitled to safe harbor.
FACTS
This case was decided on summary judgment. Joshua
Lange, the named defendant, owns, operates, and is the sole
employee of his internet site, Motherless.com. The site
contains over 12.6 million mostly pornographic pictures and
video clips. The content generally has been uploaded by the
site’s users, and the uploaders may or may not have created
the material. Motherless stores the content on servers that
Lange owns. In 2011, the website had nearly 750,000 active
users and about 611,000 visits daily.
No one has to pay Motherless or Lange anything to look
at the pictures or watch the videos on his site. A “premium”
subscription is available for viewers willing to pay in
exchange for avoiding advertisements and enabling
downloading, but only two in a thousand active users buy
premium subscriptions. Motherless makes about 15% of its
income from subscriptions, T-shirts, coffee mugs, and the
like. The remaining 85% comes from advertisements.
When Lange started Motherless, he uploaded around
700,000 pictures and videos that users had uploaded to a site
1
Pub. L. No. 105-304, § 202, 112 Stat. 2860, 2877–86 (1998)
(codified at 17 U.S.C. § 512(a)–(d)).
VENTURA CONTENT V. MOTHERLESS 5
he previously owned, Hidebehind.com. Since that initial
upload, Motherless has gotten all of its pictures and videos
from its users. It does not have any licensing deals with
content producers. Motherless does not pay users for the
pictures and clips they upload. Early on, members and
premium members who uploaded a great deal of material got
“credits” which they could exchange for premium
subscriptions, T-shirts, and such. Motherless later expanded
its award system so that members could also exchange credits
for money, with each credit worth a nickel. One of the
biggest uploaders, who uploaded over 300,000 videos and
pictures, testified at his deposition that he made about $200
after Motherless allowed him to exchange credits for money.
A user forfeits all his credits if he uploads a picture or video
that violates the website’s Terms of Use.
Users can upload up to 999 pictures and videos at a time.
Each time that a user uploads a file, he receives a warning on
his computer screen that says “Anyone uploading illegal
images/videos will be reported to the authorities. Your IP
address . . . has been recorded. Any images/videos violating
our Terms of Use will be deleted.” After the user has
uploaded content, he can add a title and tag to it. Tags are
words for which Motherless’s search software will look when
a user searches for particular content. Motherless does not
edit, review, or approve file names, titles, or tags. It does
maintain links to certain classes of content, such as “Most
Viewed” and “Most Popular.”
The Terms of Use posted on the site provide a “partial list
of content that is illegal or prohibited,” such as child
pornography, bestiality, and copyright-infringing material.
The Terms prohibit posting copyrighted material without the
prior written consent of the copyright owner, and they invite
6 VENTURA CONTENT V. MOTHERLESS
takedown notices for infringing material. The website gives
directions for emailing takedown notices. Motherless also
uses a software program that provides copyright owners with
a link and password so that they can directly delete infringing
material themselves, without having to send a takedown
notice to Lange.
Lange explained at his deposition that he and an
independent contractor review all the pictures and videos
before they are displayed on the site. Lange uses software
that generates a thumbnail of each picture, and five
thumbnails of each video clip at the 20%, 40%, 60%, 80%,
and 100% time points in the clip (e.g., for a two minute clip,
at 24, 48, 72, 96, and 120 seconds into the clip). Lange or his
contractor look at each thumbnail for “obvious signs of child
pornography, copyright notices, watermarks, and any other
information that would indicate that the [material] contains
illegal content or violates” the Terms of Use. Lange spends
three to six hours a day, seven days a week, looking at the
uploads, and he estimates that he reviews between 30,000 to
40,000 images per day. He looks at about 80 thumbnails per
minute to keep up with the volume of uploads. He deletes
any violating material that he or his contractor spot.
Whenever he finds child pornography, he contacts the
National Organization of Missing and Exploited Children so
that criminal action can be instigated against the uploader.
Lange personally examines all copyright infringement
notices, whether DMCA-compliant or not, and deletes any
infringing content that he can find. He locates infringing
content using the URL, that is, the web address that appears
at the top of the screen when an image or clip is on the
screen. The complainant identifies the material by the URL
and Lange deletes it as quickly as he can, ordinarily within a
VENTURA CONTENT V. MOTHERLESS 7
day or two. He also sends an email to the user who uploaded
the video or picture, notifying him that the uploaded material
has been deleted. Motherless uses software to prevent users
from re-uploading previously deleted material. Since 2008,
Motherless has received over 3,500 takedown notices. Lange
has deleted over 4.5 million pictures and videos for violating
Motherless’s Terms of Use and estimates that 4% to 6% of
the deleted files were for copyright infringement.
Motherless does not have a written policy instructing its
employees on when to expel repeat infringers; there are no
employees to instruct. Lange personally terminates repeat
infringers; the independent contractor does not terminate
repeat infringers. Termination is a matter of Lange’s
judgment. He considers the following factors in deciding
whether to terminate a repeat infringer: (1) the volume of
complaints; (2) the amount of linked content in the
complaints; (3) the timespan between notices; (4) the length
of time the alleged infringer’s account had been active;
(5) the amount of total content the account has; (6) whether
the user is maliciously and intentionally uploading infringing
content or uploading content without knowing the source; and
(7) whether the takedown notices were DMCA-compliant.
Between 2008 and 2011, Lange terminated over 33,000 user
accounts for violating the website’s Terms of Use. Lange
estimated that he terminated about 4% to 6% of these users
for possible copyright infringement, which would be between
1,320 and 1,980 users.
Ventura Content, the plaintiff, creates and distributes
pornographic movies. Ventura found 33 clips on Motherless
from movies it had created and had not licensed to
Motherless. The infringing clips were anywhere from 20
8 VENTURA CONTENT V. MOTHERLESS
seconds to 46 minutes long, mostly 15 minutes or longer. It
is undisputed that the clips infringed on Ventura’s copyright.
All the infringing clips were segments of Ventura movies,
not merely pictures, and not the full movie. None of the clips
contained anything to indicate that Ventura owned the
copyright. A few had watermarks naming other websites,
which appear to be other pornography aggregators, but there
were no Ventura watermarks, credits, or other pieces of
information suggesting in any way that Ventura owned the
copyright. These clips were visited 31,400 times during the
20 months they were posted on Motherless. During this time,
Motherless received about 600,000 visits per day, so the
views of the Ventura clips were a minuscule proportion of the
total views on Motherless.
Eight users uploaded the 33 infringing clips. Lange
terminated two of these users by 2012 (after this litigation
began), one for repeat copyright infringement. There is no
evidence to show that whoever uploaded the Ventura material
got any credits or other compensation for these uploads.
Lange does not remember reviewing any of these videos.
Ventura did not send DMCA notices or any other sort of
takedown notice for the infringing material. Nor did Ventura
remove the material itself, as Motherless’s software link
enabled it to do. Ventura’s first notice of infringement to
Motherless was this lawsuit.
After Lange was served with the complaint in this case,
he asked Ventura to send him the URLs for the infringing
clips so that he could delete them. Ventura did not respond
the first time Lange asked for the URLs, so Lange asked
again. Ventura answered his follow-up request. On the day
VENTURA CONTENT V. MOTHERLESS 9
that Ventura gave Lange the URLs, Lange deleted the
infringing clips.
Ventura sued Motherless and Lange for copyright
infringement under federal law2 and for unfair business
practices under California law.3 Ventura sought damages and
an injunction, but the injunction claim became moot when
Lange deleted all the infringing clips. The district court
granted summary judgment in favor of Motherless and Lange
on the federal copyright claim. It dismissed the state law
claim without prejudice, declining to exercise supplemental
jurisdiction over it. Motherless then moved for attorney’s
fees under 17 U.S.C. § 505, but the district court denied
Motherless’s motion.
ANALYSIS
The Digital Millennium Copyright Act contains several
“safe harbor” provisions that protect certain categories of
copyright infringers if they meet the statutory conditions.4
The short title for this statutory portion is the “Online
Copyright Infringement Liability Limitation Act.”5 The
central issue in this case is whether Motherless met the safe
harbor conditions.
2
17 U.S.C. § 501 et seq.
3
Cal. Bus. & Prof. Code § 17200 et seq.
4
A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1025 (9th Cir.
2001); see 17 U.S.C. § 512(a)–(d).
5
Pub. L. No. 105-304, § 202, 112 Stat. 2860, 2877 (1998).
10 VENTURA CONTENT V. MOTHERLESS
Ventura contends that (1) the district court erred in
granting partial summary judgment to Motherless on its safe
harbor defense and (2) abused its discretion by declining to
exercise supplemental jurisdiction over its state-law claim.
Motherless (1) cross-appeals the district court’s determination
that it directly infringed on Ventura’s copyrights and
(2) separately appeals the district court’s denial of attorney’s
fees. All but the first issue may be addressed summarily.
With regard to the summary judgment on safe harbor, we
review de novo, taking the evidence in the light most
favorable to the non-moving party, Ventura.6 Most of the
material facts are undisputed. We assume without deciding
that Ventura established direct infringement, because it is
unnecessary to reach that issue. We review for abuse of
discretion the district court’s decisions not to exercise
supplemental jurisdiction over Ventura’s state-law claim and
to deny Motherless attorney’s fees under the Copyright Act.7
Much of Ventura’s briefing draws our attention to the
lurid sexual material on Motherless. And Ventura is suing to
protect its own pornographic creations from infringement.
But federal copyright law does not distinguish between
pornographic and non-pornographic works, so the nature of
the sexual material that Ventura creates and Motherless hosts
is irrelevant.
6
Kennedy v. Allied Mut. Ins. Co., 952 F.2d 262, 265 (9th Cir. 1991).
7
Brown v. Lucky Stores, Inc., 246 F.3d 1182, 1187 (9th Cir. 2001)
(supplemental jurisdiction); Seltzer v. Green Day, Inc., 725 F.3d 1170,
1180 (9th Cir. 2013) (attorney’s fees); see also 17 U.S.C. § 505 (allowing
the court “in its discretion” to award attorney’s fees as part of costs).
VENTURA CONTENT V. MOTHERLESS 11
I. Safe Harbor
The Digital Millennium Copyright Act places the burden
of policing copyright infringement on the copyright owner,
not on the person or firm storing and hosting the material.8 It
is undisputed that Ventura owned the copyrights to the
33 clips that were stored and displayed by Motherless.
The safe harbor clause at issue in this case, 17 U.S.C.
§ 512(c), provides as follows:
(1) IN GENERAL.—A service provider shall
not be liable for monetary relief . . . for
infringement of copyright by reason of the
storage at the direction of a user of material
that resides on a system or network controlled
or operated by or for the service provider, if
the service provider—
(A) (i) does not have actual knowledge
that the material or an activity
using the material on the system
or network is infringing;
(ii) in the absence of such actual
knowledge, is not aware of facts or
circumstances from which infringing
activity is apparent; or
(iii) upon obtaining such knowledge
or awareness, acts expeditiously to
8
See Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1114 (9th Cir.
2007).
12 VENTURA CONTENT V. MOTHERLESS
remove, or disable access to, the
material;
(B) does not receive a financial benefit
directly attributable to the infringing
activity, in a case in which the service
provider has the right and ability to
control such activity; and
(C) upon notification of claimed
infringement as described in paragraph
(3), responds expeditiously to remove, or
disable access to, the material that is
claimed to be infringing or to be the
subject of infringing activity.9
Thus for a service provider to get safe harbor protection
despite its infringement, it must not know of the
infringement, and the infringement cannot be apparent. It
must also take down or prevent access to the infringing
material as soon as it learns about it or receives a DMCA
notice. And it must not directly benefit financially from the
infringement in situations when it can control the activity.
There is an additional condition on safe harbor eligibility:
the service provider must have a policy to terminate users
who repeatedly infringe on copyrights, and it must implement
that policy reasonably. The statute setting this condition,
17 U.S.C. § 512(i), reads as follows:
9
17 U.S.C. § 512(c)(1) (emphasis added). The added emphasis is to
highlight language that Ventura has put at issue.
VENTURA CONTENT V. MOTHERLESS 13
CONDITIONS FOR ELIGIBILITY.—
(1) ACCOMMODATION OF TECHNOLOGY.—The
limitations on liability established by this
section shall apply to a service provider only
if the service provider—
(A) has adopted and reasonably
implemented, and informs subscribers and
account holders of the service provider’s
system or network of, a policy that
provides for the termination in appropriate
circumstances of subscribers and account
holders of the service provider’s system or
network who are repeat infringers; and
(B) accommodates and does not interfere
with standard technical measures.
The overall scheme is plain enough at a superficial level.
A service provider must delete or disable access to known or
apparent infringing material, as well as material for which he
receives a statutorily compliant takedown notice. He must
also terminate repeat infringers when appropriate. The
copyright owner, not the service provider, has the burden of
policing infringement. But the service provider, to maintain
its shield, must respond expeditiously and effectively to the
policing. If these conditions are met, the service provider
will not be financially liable for infringing material on his
website. The details, of course, get complicated, and we must
address those complications.
14 VENTURA CONTENT V. MOTHERLESS
A. “By reason of the storage at the direction of a
user”
Section 512(c) says that, subject to additional conditions
discussed below, a service provider will not be liable “for
infringement of copyright by reason of the storage at the
direction of a user of material that resides on a system or
network controlled or operated by or for the service
provider.”10 Ventura points out that Lange uploaded 700,000
files from his old site, screens uploads for illegal material
before putting them on the site, and has his software
categorize material into classes (such as “Most Popular”).
Ventura would therefore have us conclude that the Motherless
material was stored and made available “at the direction of”
Motherless, not the users. We do not agree.
Lange did upload thousands of pictures and videos from
his old site, Hidebehind.com, when he first established
Motherless in 2008. However, those uploads amount to only
6% of what the site now carries. He has not uploaded any
material to the site since he started it with his old material.
Lange and his contractors did not upload any of the 33 clips
over which Ventura claims copyright ownership. There is no
evidence that any of the Hidebehind.com tranche infringed on
anyone’s copyright. That material therefore does not
establish liability here.
Ventura also argues that Lange is not entirely passive
because he screens out child pornography, bestiality, and
copyright infringement that he spots. The argument is that by
screening out this material, Motherless effectively directs
what is posted instead of enabling posting “at the direction of
10
17 U.S.C. § 512(c)(1).
VENTURA CONTENT V. MOTHERLESS 15
a user.” But Ventura cites no authority for the unlikely
proposition that screening out illegal material eliminates the
safe harbor shield. Indeed, section 512(m) says that the law
should not be construed to eliminate the safe harbor because
a service provider monitors for infringement or disables
access to material where the conduct depicted is prohibited by
law.11 Motherless screens out child pornography because it
is prohibited by law. It screens out bestiality because a few
European countries prohibit bestiality pornography by law,
and some of Lange’s European advertisers voiced concerns
about this content. We find it counterintuitive, to put it
mildly, to imagine that Congress intended to deprive a
website of the safe harbor because it screened out child
pornography and bestiality rather than displaying it. Instead,
we read section 512(m) to say that Congress expressly
provided that such screening does not deprive a website of
safe harbor protection.
Finally, Ventura argues that because Motherless groups
together the tagged videos and pictures so that users can find
11
17 U.S.C. § 512(m) reads as follows:
(m) PROTECTION OF PRIVACY.—Nothing in this section
shall be construed to condition the applicability of
subsections (a) through (d) on—
(1) a service provider monitoring its service or
affirmatively seeking facts indicating infringing
activity, except to the extent consistent with a standard
technical measure complying with the provisions of
subsection (i); or
(2) a service provider gaining access to, removing, or
disabling access to material in cases in which such
conduct is prohibited by law.
16 VENTURA CONTENT V. MOTHERLESS
what they want, it is Motherless, rather than the user, who
directs the “storage.” But Lange testified, and Ventura does
not dispute, that his editorial principle is as announced on the
site: “anything legal stays.” Ventura merely argues that this
case can be distinguished from opinions which applied the
safe harbor to sites that screen and alter content.
Our controlling case is UMG Recordings, Inc. v. Shelter
Capital Partners, LLC.12 There, we addressed whether a
website that enabled sharing music videos, some of which
turned out to be infringing, was entitled to safe harbor.13 The
videos in UMG were not just stored, as one might store
family photographs on a “cloud” service such as iCloud,
Dropbox, or Google Drive. Users uploaded material and
watched and listened to videos and songs.14 Some of the
music was infringing.15 We held in UMG that the phrase “by
reason of the storage at the direction of a user” covers more
than “mere electronic storage lockers.”16 It allows service
providers to perform access-facilitating processes such as
breaking up the files for faster viewing and converting them
to a Flash format.17
12
718 F.3d 1006 (9th Cir. 2013).
13
Id. at 1011–12.
14
Id.
15
Id. at 1013.
16
Id. at 1016 (quoting UMG Recordings, Inc. v. Veoh Networks, Inc.,
620 F. Supp. 2d 1081, 1088 (C.D. Cal. 2008)).
17
See id.
VENTURA CONTENT V. MOTHERLESS 17
As in UMG, Motherless’s users, not the website, decide
what to upload and what file names and tags to use.18 Our
holding in UMG disposes of the argument that altering the
file format to make it accessible before posting, and enabling
users to apply search tags to uploads, takes the posting of the
content out of the “at the direction of a user” definition. It
also disposes of the argument that being anything more than
an electronic storage locker, such as by facilitating user
access to files that other users posted, deprives the website of
safe harbor protection.
Ventura argues that by using software to highlight the
“Most Popular” material, and by giving credits to users who
post the most popular material, Motherless is posting at its
own direction rather than hosting material posted at the
direction of the user. This argument is inconsistent with our
holding in UMG.19 It is also inconsistent with the meaning of
the words “at the direction of the user.” The users post what
they post, popular or not. Motherless does not screen out
material for relatively low popularity, and of course most
postings do not fall within the “Most Popular” category. Yet
there they are, up on the site, because the users put them
there. We do not see how the Motherless incentive program,
which makes credits usable to buy coffee mugs and T-shirts
and such for high volume uploaders, makes “storage” at the
direction of Motherless rather than “at the direction of a
user.” Whether the uploader does so for the glory of the thing
(Motherless’s biggest uploader testified that he wanted his
name on the leaderboard for big uploaders) or for a coffee
mug, his craving for such fame and fortune as was available
18
See id. at 1012.
19
See id. at 1016, 1019 & n.10.
18 VENTURA CONTENT V. MOTHERLESS
does not mean that the specific content he uploaded was
directed by Motherless, rather than “by the user.”
We recently addressed the phrase “by reason of storage at
the direction of the user” in Mavrix Photographs, LLC v.
LiveJournal, Inc.20 The website in Mavrix was not entitled to
summary judgment on the safe harbor issue because there
was a genuine issue of fact as to whether the storage of
material on the site was at the direction of the site or at the
direction of its users.21 The Mavrix website used moderators
to review user submissions for substance. It published only
those submissions that, in the moderators’ judgment, were
“relevant to new and exciting celebrity news.”22 We
remanded because genuine issues of material fact remained
as to “whether the moderators were LiveJournal’s agents.”23
We restated in Mavrix what we had held in UMG: “Infringing
material is stored at the direction of the user if the service
provider played no role in making that infringing material
accessible on its site or if the service provider carried out
activities that were ‘narrowly directed’ towards enhancing the
accessibility of the posts.”24 And we further noted that
section 512(m) of the statute expressly provided that deleting
20
873 F.3d 1045, 1052–57 (9th Cir. 2017).
21
Id. at 1056–57.
22
Id. at 1050.
23
Id. at 1057.
24
Id. at 1056 (quoting UMG Recordings, Inc. v. Veoh Networks, Inc.,
620 F. Supp. 2d 1081, 1088 (C.D. Cal. 2008)) (citing UMG Recordings,
Inc. v. Shelter Capital Partners LLC, 718 F.3d 1006, 1018 (9th Cir.
2013)).
VENTURA CONTENT V. MOTHERLESS 19
unlawful material did not deprive the site of safe harbor
protection.25
The case before us falls within UMG, not Mavrix. The
moderators in Mavrix directed posting only if they thought
the user-submitted material was “new and exciting celebrity
news.”26 Lange and his contractor do not review whether the
pornography submitted by users is “new and exciting” or
meets any other discretionary standards. The Motherless rule
is “anything legal stays.” Lange does not exercise judgment
in what to host. His editing is limited to the kind protected by
section 512(m), screening out illegal material.
Perhaps if Lange’s site were flooded with pictures and
videos of kittens playing with yarn, he would change his rule
and exercise judgment about whether the material was
pornographic enough to host, but that is speculation. We
have been directed to nothing in the record that establishes a
factual dispute about whether Lange actually exercises
judgment about what to host beyond his screening out child
pornography, bestiality, and infringing material. Though
Motherless has groups, posts need not be placed into a group
to be stored on the website. None of Ventura’s infringing
clips were selected or listed under any of Motherless’s
groups, but all of them were posted anyway.
Although UMG compels our holding, we also note that
our sister circuits agree with the critical point that “storage at
the direction of a user” affords safe harbor protection to sites
where users can look at other users’ uploads, not just to what
25
Id.
26
Id. at 1050.
20 VENTURA CONTENT V. MOTHERLESS
UMG called “electronic storage lockers.”27 The Second
Circuit ruled in Viacom International, Inc. v. YouTube, Inc.28
that YouTube was entitled to safe harbor—even though it
converted user-submitted videos into a standard display
format and used an algorithm to suggest related
videos—because “to exclude these automated functions from
the safe harbor would eviscerate the protection afforded to
service providers by § 512(c).” Likewise, the Fourth Circuit
held in CoStar Group, Inc. v. LoopNet, Inc.29 that a real estate
listing website that allowed subscribers to post listings was
not liable for copyright infringement even though an
employee cursorily reviewed the photographs for infringing
material. The CoStar majority analogized the service
provider to an owner of a traditional copy machine “who has
stationed a guard by the door to turn away customers who are
attempting to duplicate clearly copyrighted works.”30 And
the Tenth Circuit held in BWP Media USA, Inc. v. Clarity
Digital Group, LLC31 that a news site that relied on user-
generated content was entitled to safe harbor even though it
instructed users on topics to write about and suggested that
users include pictures or slide shows with their articles.
Citing to UMG, the Tenth Circuit explained that “if the
infringing content has merely gone through a screening or
27
UMG Recordings, Inc. v. Shelter Capital Partners, LLC, 718 F.3d
1006, 1016 (9th Cir. 2013).
28
676 F.3d 19, 39 (2d Cir. 2012).
29
373 F.3d 544, 546–47 (4th Cir. 2004).
30
Id. at 556.
31
820 F.3d 1175, 1181 (10th Cir. 2016).
VENTURA CONTENT V. MOTHERLESS 21
automated process, the [service provider] will generally
benefit from the safe harbor’s protection.”32
Because the users, not Motherless, decided what to
post—except for Lange’s exclusion of illegal material and his
original upload when he created the website—the material,
including Ventura’s, was “posted at the direction of users.”
B. Knowledge and Expeditious Takedown
Though the statutory scheme places the burden of
policing infringement on the copyright owner, the scheme
does not allow a website owner to avoid responsibility for
knowingly selling pirated material by deleting a particular
posting only when he gets caught. Instead, the statute
excludes blatant pirates from the safe harbor by requiring that
a service provider:
(i) does not have actual knowledge that the
material or an activity using the material on
the system or network is infringing;
(ii) in the absence of such actual knowledge,
is not aware of facts or circumstances from
which infringing activity is apparent; or
(iii) upon obtaining such knowledge or
awareness, acts expeditiously to remove, or
disable access to, the material.33
32
Id. (citing UMG, 718 F.3d at 1020).
33
17 U.S.C. § 512(c)(1)(A).
22 VENTURA CONTENT V. MOTHERLESS
If the website provider actually knows that the material
for which relief is sought is infringing, or if the infringement
is “apparent,” he remains liable if he does not expeditiously
remove the material upon gaining knowledge.
i. Actual Knowledge
Ventura and its expert argue that Lange must have had
actual knowledge that the Ventura clips infringed on its
copyright because they appeared to be professionally
produced and because a few had watermarks. That argument
is unavailing.
According to Ventura, because Lange reviewed all of the
material that users submitted, he would have seen that four of
the 33 clips had watermarks. But none of the watermarks
establish actual knowledge of infringement because Ventura
did not watermark its clips. The watermarks on the four clips
said “videosz.com” and “monstercockbabes.com,” suggesting
the clips came from pornography aggregators rather than
copyright owners. The watermarks gave no hint that Ventura
owned the material, and they do not establish a genuine issue
of fact about whether Motherless knew the material was
infringing.
Ventura also argues that Motherless had to know the clips
were infringing because, it claims, the high quality of the
videos showed professional production. But the conclusion
does not follow from the premise. Professionally created
work often is posted online to publicize and attract business
for the creator. Amateurs often do professional quality work
in artistic endeavors, and amateurs are no less entitled to
copyright protection than professionals, so it is not apparent
why professionalism matters. And digital cameras have
VENTURA CONTENT V. MOTHERLESS 23
become so good and so easy to use that even home movies of
children’s birthday parties can look professionally done.
Nor do we see what on the Ventura videos distinguishes
them from amateur creations. Many of the clips include
shaky camera footage and poor lighting. One starts with a
camera bouncing around taking pictures of the interior of a
car, has a voiceover saying “figured out how to finally turn
this thing [the camera] on,” and so forth. We have no idea
how it would be possible to recognize “professionals” from
amateurs on the videos, and Ventura has not provided any
factual information to help us. It is hard to see what
distinguishes Ventura’s videos from homemade work
uploaded to the internet by the rightful owner, and it is even
harder to see why it would be obvious that the Ventura videos
were infringing. An ordinary person who had not studied
movie-making and personally made movies would likely be
oblivious to the professionalism that the expert report
identifies. This is not to criticize the quality of Ventura’s
videos. The apparent amateurism may be a skilled
professional means of giving them an appearance of
authenticity. But nothing about their professionalism would
inform Motherless that they were infringing or would make
infringement apparent.
Ventura could have indicated its ownership by
watermarking its videos as copyrighted, but it did not. And
Ventura could have notified Motherless that the clips
infringed on its copyright when it discovered them on
Motherless’s site, but it did not. Ventura’s “decision to forgo
the DMCA notice protocol ‘stripped it of the most powerful
evidence of a service provider’s knowledge—actual notice of
24 VENTURA CONTENT V. MOTHERLESS
infringement from the copyright holder.’”34 If Ventura had
notified Motherless about these 33 infringing videos before
filing this lawsuit and Motherless had not taken them down,
then Motherless would have lost its safe harbor. On the facts
of this record, however, Ventura did not establish a genuine
issue of fact as to actual knowledge. The statutory phrase
“actual knowledge” means what it says: knowledge that is
actual, not merely a possible inference from ambiguous
circumstances.
ii. Apparent Knowledge
Actual knowledge is not necessary to deprive an infringer
of safe harbor. Motherless would also lose its safe harbor if
it was “aware of facts or circumstances from which infringing
activity is apparent” and did not “act[] expeditiously to
remove, or disable access to, the material.”35 This is different
from actual knowledge because instead of looking at
subjective thoughts, we look at objective facts and
circumstances from which the specific infringement would be
obvious to a reasonable person.36 The statutory term
“apparent” is often described, in the cases and secondary
34
UMG Recordings, Inc. v. Shelter Capital Partners, LLC, 718 F.3d
1006, 1020 (9th Cir. 2013) (quoting Corbis Corp. v. Amazon.com, Inc.,
351 F. Supp. 2d 1090, 1107 (W.D. Wash. 2004)) (citing Io Grp., Inc. v.
Veoh Networks, Inc., 586 F. Supp. 2d 1132, 1148 (N.D. Cal. 2008)); see
also 4 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
§ 12B.04[A][3], at 12B-94 (rev. ed. 2017) (“NIMMER”).
35
17 U.S.C. § 512(c)(1)(A)(ii)–(iii).
36
UMG, 718 F.3d at 1025–26; Io Grp., 586 F. Supp. 2d at 1148.
VENTURA CONTENT V. MOTHERLESS 25
literature, as “red flag” knowledge.37 The sports metaphor is
no more helpful than the statutory word “apparent,” and we
use the words interchangeably.
Ventura’s arguments for “apparent” awareness are similar
to its arguments for actual knowledge. And the same reasons
for absence of knowledge apply. There is nothing about the
Ventura clips that would make infringement apparent. That
is not to say that Motherless did not know that infringement
was probably occurring on its website. It is hard to imagine
that a site with 12.6 million pictures and video clips uploaded
by users would not contain some material that users had
uploaded without authorization. It is also hard to imagine
that Lange and his contractor would have spotted all the
infringing videos with the few seconds of viewing they gave
to each one.
Nevertheless, we held in UMG that hosting material
capable of copyright protection, with the general knowledge
that the site could be used to share infringing material, is not
enough to impute knowledge.38 The material in UMG was
much more likely to arouse awareness of infringement than
the material in this case, because it included music videos by
well-known celebrities like 50 Cent, Avril Lavigne, and
Britney Spears.39 We held that this sort of knowledge was not
enough to amount to red flag knowledge.40
37
See, e.g., NIMMER § 12B.04[A][1][b], at 12B-52 (explaining that
this form of knowledge can be best described as a red flag test).
38
UMG, 718 F.3d at 1022.
39
Id. at 1023.
40
Id.
26 VENTURA CONTENT V. MOTHERLESS
Similarly, in Capitol Records, LLC v. Vimeo, LLC,41 the
Second Circuit addressed whether a service provider may be
found to have apparent knowledge because it relies on mass
uploading by users. Its reasoning is instructive. The service
provider in Capitol Records was Vimeo, which operates a
website that enables members to post videos that they
created.42 As of 2012, Vimeo had more than 31 million
videos and 12.3 million registered users.43 Nearly 43,000
videos were uploaded to Vimeo daily.44 Capitol Records sued
Vimeo for copyright infringement because 199 videos on the
website contained recordings to which Capitol Records held
the copyright.45 The Second Circuit explained that the
copyright holder must demonstrate that the service provider
had actual knowledge of facts “that would make the specific
infringement claimed objectively obvious to a reasonable
person.”46 Capitol Records further explained that “suspicion
of infringement” is not the same as “facts making
infringement obvious.”47 Requiring service providers to
investigate potential copyright infringement whenever they
41
826 F.3d 78 (2d Cir. 2016).
42
Id. at 81.
43
Id. at 84.
44
Id.
45
Id. at 86.
46
Id. at 93 (emphasis added) (citing Viacom Int’l, Inc. v. YouTube,
Inc., 676 F.3d 19, 31 (2d Cir. 2012)).
47
Id. at 98.
 VENTURA CONTENT V. MOTHERLESS 27
were suspicious would undermine “an important part of the
compromise embodied in the safe harbor.”48
We agree. The copyright owner must show knowledge,
actual or red flag, for the videos that infringed its copyright
and are the subject of its claim. And for red flag knowledge,
infringement must be apparent, not merely suspicious.
Congress used the word “apparent,” not “suspicious” or some
equivalent. Ventura, not Lange, is in charge of policing
Motherless for its copyrighted material. Congress could have
put the burden of policing infringement in suspicious
circumstances on the provider, but it instead put it on the
copyright holder.
Because the facts and circumstances from which a
reasonable person might suspect infringement were much
more substantial in UMG than in this case, and because there
we held that the infringement was not “apparent,” we must
reach the same conclusion here. As UMG implies,49 and as
the Second Circuit in Capitol Records expressly stated,50 even
if it were obvious to a reasonable person that some of the
material on the site must be infringing, that is not enough to
lose the safe harbor. It must be obvious that the particular
material that is the subject of the claim is infringing. Here, it
would not be obvious to a reasonable person that the clips
excerpted from Ventura movies were infringing.
48
Id.
49
See UMG Recordings, Inc. v. Shelter Capital Partners, LLC, 718
F.3d 1006, 1022 (9th Cir. 2013); see also Mavrix Photographs, LLC v.
LiveJournal, Inc., 873 F.3d 1045, 1057 (9th Cir. 2017).
50
826 F.3d at 93 (citing Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d
19, 30–31 (2d Cir. 2012)).
28 VENTURA CONTENT V. MOTHERLESS
Ventura argues that we should infer apparent knowledge
under Columbia Pictures Industries, Inc. v. Fung.51 Fung’s
website used a peer-to-peer file sharing protocol.52 That
means the content was not on the website’s server, but rather
on the hard drives of the users. Clicking on a URL on the
website enabled the user to get into the shared material on
another user’s hard drive. Fung’s website enabled users to
download popular movies and television shows, not just clips
but entire movies.53 For example, users downloaded over
1.5 million copies of the James Bond movie Casino Royale.54
The website included categories such as “Top 20 TV Shows”
and “Top 20 Movies,”55 so it was obvious that using it would
enable the user to get this obviously infringing content in its
entirety. Fung solicited users to upload and download
copyrighted material and assisted those seeking to watch
copyrighted material, including helping downloaders burn
DVDs of the infringing material.56 We held that Fung had
apparent knowledge, because “[t]he material in question was
sufficiently current and well-known that it would have been
objectively obvious to a reasonable person that the material
51
710 F.3d 1020 (9th Cir. 2013).
52
Id. at 1024.
53
Id. at 1028–29.
54
Id. at 1029.
55
Id.
56
Id. at 1043.
VENTURA CONTENT V. MOTHERLESS 29
solicited and assisted was both copyrighted and not licensed
to random members of the public.”57
This case is very much like UMG and not at all similar to
Fung. In Fung, the site marketed itself as a pirate site for free
access to feature movies and top television shows, and no one
could mistake the material on it for anything but infringing
material. Fung had complete, long movies, but Motherless
limited uploads to 500 megabytes, which would be around
half or three-quarters of an hour at standard density, and
much less at high density. The Ventura clips had no
indication that Ventura owned the copyright—or was
associated with the videos at all. Fung had “current and well-
known” material, like Casino Royale.58 Whoever the actors
in the Ventura material may have been, they are not as
famous as the actors who have played James Bond. No one
could mistake Casino Royale for a couple of amateurs filming
their own activities and purposely posting them for
exhibition, but an ordinary person could mistake the Ventura
clips for just that.
In Fung, we noted that “the record is replete with
instances of Fung actively encouraging infringement, by
urging his users to both upload and download particular
copyrighted works.”59 Lange did not do that. His posted
Terms of Use prohibited posting copyrighted material without
prior written consent from the copyright owner, and he
invited takedown notices for infringing material. While such
57
Id.
58
Id.
59
Id.
30 VENTURA CONTENT V. MOTHERLESS
posted notices language could be merely for appearances sake
if it were not followed by action, Lange estimates that he has
deleted over 180,000 videos and pictures for copyright
infringement. He has removed an estimated 1,320 to 1,980
users from the site for repeated copyrighted infringement.
His software stops users from re-uploading previously deleted
material. Fung’s was fairly explicitly a pirate website.
Motherless, though, appears to be managing the website to
make money while avoiding legal trouble from users posting
child pornography, bestiality, or copyright infringing
material.
Lastly, Ventura makes the policy argument that “[i]t is
exceedingly difficult for [Ventura]—or any adult Web site,
for that matter—to convince customers to pay for content that
is readily available for free on the adult tube sites” such as
Motherless. That may be so, but Congress, not judges, makes
the policy decision on whether to offer a safe harbor from
suit.
iii. Expeditious Takedown
An additional requirement for the accidental infringer’s
safe harbor relief is expeditious removal of the infringing
material once there is actual or red flag notice of the
infringement. The statutory wording is that “upon obtaining
such knowledge or awareness,” the service provider must
“act[] expeditiously to remove, or disable access to, the
material.”60 To trigger the expeditious removal requirement,
a copyright owner’s notification must substantially comply
with the requirements of subsection (c)(3)(A) of the safe
60
17 U.S.C. § 512(c)(1)(A)(iii).
VENTURA CONTENT V. MOTHERLESS 31
harbor statute.61 Among other things, the notification must
identify the infringing material with “information reasonably
sufficient to permit the service provider to locate the
material.”62
In this case, the infringing videos had no Ventura
identification, and the site had more than a half-million
videos, so as a practical matter what Motherless needed to
remove them was a URL for each. Ventura did not send
Motherless a statutory notification before filing suit. When
Lange was served with Ventura’s complaint, he asked
Ventura to provide him with the URLs to the infringing clips
so that he could delete them. Ventura did not initially
respond. Subsequently, Ventura provided the URLs after
Lange followed up on his initial request. Lange deleted the
33 infringing clips the same day. That satisfied the “responds
expeditiously to remove” requirement.
C. Right and Ability to Control
Even if subsection (c)(1)(A) is satisfied (no actual or red
flag knowledge, expeditious removal), a service provider still
loses its safe harbor under subsection (c)(1)(B) if it receives
“a financial benefit directly attributable to the infringing
activity, in a case in which the service provider has the right
61
Id. § 512(c)(3)(B).
62
Id. § 512(c)(3)(A)(iii). This part of the statute provides that notice
is effective only if it includes: “Identification of the material that is
claimed to be infringing or to be the subject of infringing activity and that
is to be removed or access to which is to be disabled, and information
reasonably sufficient to permit the service provider to locate the material.”
32 VENTURA CONTENT V. MOTHERLESS
and ability to control such activity.”63 This raises two
questions: did Motherless have “the right and ability to
control” the infringing activity, and if so, did it receive a
financial benefit “directly attributable to the infringing
activity”?
Motherless certainly had the physical ability to control
any and all infringing activity. Lange could take down all of
Motherless’s content, infringing or not, and bar any uploads,
infringing or not. We have held, however, that the “‘[r]ight
and ability to control’ involves ‘something more than the
ability to remove or block access to materials posted on a
service provider’s website.’”64 To have the right and ability
to control, a service provider must be able to exert
“substantial influence” on its users’ activities.65
We held in UMG that the service provider did not have
the “ability to control.”66 In Fung, it did.67 This case is like
UMG and not like Fung. Nothing in the record suggests that
Motherless told its users what to upload. Its homepage
welcomed users to “a moral free zone where anything legal
63
Id. § 512(c)(1)(B).
64
Mavrix Photographs, LLC v. LiveJournal, Inc., 873 F.3d 1045,
1058 (9th Cir. 2017) (quoting UMG Recordings, Inc. v. Shelter Capital
Partners, LLC, 718 F.3d 1006, 1030 (9th Cir. 2013)).
65
UMG, 718 F.3d at 1030 (quoting Viacom Int’l, Inc. v. YouTube,
Inc., 676 F.3d 19, 38 (2d Cir. 2012)).
66
Id.
67
Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020, 1046 (9th
Cir. 2013).
VENTURA CONTENT V. MOTHERLESS 33
stays.” It did not curate uploaded content in any meaningful
way, nor did it reject unpopular groups or content.
Motherless deleted only user-created groups that contained
little or no content, and it started deleting bestiality content
due to legality issues raised by European advertisers.
Motherless rewarded uploaders of the most popular
content with points redeemable for items of negligible value,
such as coffee mugs and t-shirts, but that does not amount to
encouraging uploads of infringing material. Even after
Motherless started letting users exchange points for cash, the
payouts were nominal. One of the most prolific Motherless
users (he uploaded over 300,000 files) testified that he made
just $200. Except for Motherless’s screening out of child
pornography, bestiality pornography, and apparent infringing
material, the uploaders, not Motherless, controlled what was
uploaded. Such censoring by Motherless could not enable it
to control uploads of non-obvious infringing material,68 and
there was nothing in the uploaded video clips to identify their
infringing nature.
Nor was there any evidence that Motherless received “a
financial benefit directly attributable to the infringing
activity.” Unlike the site in Fung, Motherless did not
advertise itself as a place to get pirated materials. Of course,
the more pornography Motherless had, the more users it
would attract, and more views would lead to more advertising
revenue. The words “the” and “directly” in the statute,
though, must mean that some revenue has to be distinctly
attributable to the infringing material at issue. There is no
68
See UMG, 718 F.3d at 1027–28; Io Grp., Inc. v. Veoh Networks,
Inc., 586 F. Supp. 2d 1132, 1151 (N.D. Cal. 2008).
34 VENTURA CONTENT V. MOTHERLESS
evidence that Motherless made any money directly from the
Ventura clips.
D. Repeat Infringer Termination
So far, we have examined the specifics of the safe harbor
as applied to Ventura’s movie clips. Ventura did not submit
cognizable evidence establishing a genuine issue of fact as to
whether Motherless was entitled to safe harbor.69 The
evidence is uncontradicted that Motherless did not know, nor
was it apparent, that its site included infringing Ventura clips.
Motherless immediately removed them on the day that
Ventura gave Motherless enough information to do so. And
Motherless did not control what users uploaded. These
conditions are necessary to enjoy the safe harbor. However,
they are not sufficient.
Basically, subsection (c) of the safe harbor provision aims
at individual infringements, not the service as a whole. It
uses the phrase “the material”—that is, the material for which
an infringement remedy is sought—in the context of setting
out what a service provider needs to do to avoid liability for
the infringement of the copyrighted material at issue. Our
sister circuit and we both read it this way.70 If subsection (c)
were read to apply to all the material on the website, instead
of the material for which a remedy was sought by the victim
of infringement, then no large site would be protected by the
69
See Fed. R. Civ. P. 56(c).
70
See UMG Recordings, Inc. v. Shelter Capital Partners LLC,
718 F.3d 1006, 1021–22 (9th Cir. 2013); Capitol Records, LLC v. Vimeo,
LLC, 826 F.3d 78, 93 (2d Cir. 2016); Viacom Int’l, Inc. v. YouTube, Inc.,
676 F.3d 19, 31 (2d Cir. 2012).
VENTURA CONTENT V. MOTHERLESS 35
safe harbor. It is unimaginable that any website with
hundreds of thousands or millions of user uploads could
successfully screen out all of the copyright infringing
uploads, or even all of the uploads where infringement was
apparent.
But Congress promulgated subsection (i) to limit the
eligibility for safe harbor treatment. Even if a website deletes
infringing material as soon as it learns about it, the safe
harbor is unavailable unless the site has a policy of excluding
repeat infringers. This ineligibility provision “is a
prophylactic against future acts of infringement by actors
whose past conduct renders them suspect.”71
This repeat infringer policy requirement does not focus on
the particular infringement at issue. Instead, subsection (i)
bars use of the subsection (c) safe harbor unless the service
provider adopts and “reasonably” implements a policy of
terminating repeat infringers in “appropriate” circumstances:
(1) ACCOMMODATION OF TECHNOLOGY.—The
limitations on liability established by this
section shall apply to a service provider only
if the service provider—
(A) has adopted and reasonably
implemented, and informs subscribers and
account holders of the service provider’s
system or network of, a policy that
provides for the termination in appropriate
circumstances of subscribers and account
71
NIMMER § 12B.10[A][2], at 12B-168.7.
36 VENTURA CONTENT V. MOTHERLESS
holders of the service provider’s system or
network who are repeat infringers; and
(B) accommodates and does not interfere
with standard technical measures.
Unlike subsection (c), subsection (i) addresses how the site is
generally managed, not just how the site responds to notice of
a particular infringement. Without subsection (i), an
unscrupulous website might take down infringing material as
soon as it received a proper takedown notice identifying it,
yet still operate as a pirate site. Subsection (i) obliges the
provider to exclude repeat infringers, subject to its
qualifications: “reasonably” and “in appropriate
circumstances.” In this case, subsection (i) means that if
Motherless did not reasonably implement a policy of
terminating in appropriate circumstances users who were
repeat infringers, then innocence in hosting Ventura’s works
and promptness in removing them once notified would not
shield Motherless from infringement remedies.
The “standard technical measures” referenced in
subsection (i)(1)(B) enable copyright owners to establish
some technical means so that service providers can spot and
exclude infringing material without substantial expense.72
72
“Standard technical measures” is defined in 17 U.S.C. § 512(i)(2),
which states:
DEFINITION.—As used in this subsection, the term
“standard technical measures” means technical
measures that are used by copyright owners to identify
or protect copyrighted works and—
(A) have been developed pursuant to a broad consensus
VENTURA CONTENT V. MOTHERLESS 37
One can imagine a digital version of the old c in a circle (©)
automatically triggering the uploading software to exclude
material so marked by the copyright owner. But subsection
(i)(1)(B) is not at issue in this case. The evidence establishes,
without any genuine issue of fact, that Ventura did not in any
way mark its material so that infringement could be spotted
and the material excluded by some standard technical
measure.
However, the inapplicability of subsection (B) to this case
does not free Motherless from the burden of subsection (A).
The service provider must satisfy both. Motherless has a
written policy of excluding infringing material, stated on its
membership sign-up page:
C In connection with User-Submitted
Content, you affirm, represent, and/or
warrant that: you won or have the
necessary licenses, rights, consents and
permissions to use and authorize
[Motherless] to use all . . . copyright . . .
rights in and to any and all User-
Submitted Content to enable inclusion and
use of the User-Submitted Content in the
manner contemplated by the [Motherless]
website and these Terms of Use.
of copyright owners and service providers in an open,
fair, voluntary, multi-industry standards process;
(B) are available to any person on reasonable and
nondiscriminatory terms; and
(C) do not impose substantial costs on service providers
or substantial burdens on their systems or networks.
38 VENTURA CONTENT V. MOTHERLESS
C [Motherless] and its administrators
reserve the right (but not the obligation) in
their sole discretion to refuse, delete,
move or edit any and all Content that it
deems is in violation of the law (including
. . . copyright law) . . . .
C A partial list of content that is illegal or
prohibited includes content that . . .
Promotes an illegal or unauthorized copy
of another’s copyrighted work, such as
pirated computer programs or links to
them, or providing information to
circumvent manufacturer-installed copy-
protect devices, or providing pirated
music or links to pirated music files . . . .
C You agree that you will not post, or
otherwise distribute or facilitate
distribution of any Content that . . .
infringes on any . . . copyright . . . of any
party . . . .
C You may not post, distribute, or reproduce
in any way, any copyrighted material . . .
without obtaining the prior written
consent of the owner of such proprietary
rights or otherwise have a valid basis
under the law, including “fair use.”
And Motherless has a written policy of terminating repeat
infringers. On its page entitled “DMCA Notice & Takedown
Policy and Procedures,” Motherless said that “[it] is the firm
VENTURA CONTENT V. MOTHERLESS 39
policy of the [site] to terminate the account of repeat
copyright infringers, when appropriate.”
The details of the termination policy are not written down.
However, the statute does not say that the policy details must
be written, just that the site must inform subscribers of “a
policy” of terminating repeat infringers in appropriate
circumstances. Motherless consists only of Lange and a few
independent contractors, and Lange alone determines when
to terminate repeat infringers.73 A company might need a
written policy to tell its employees or independent contractors
what to do if there were a significant number of them, but
Motherless is not such a firm. Small operations in many
industries often do not have written policies because the
owners who would formulate the policies are also the ones
who execute it. There might not have been a need for
anything in writing. So the lack of a detailed written policy
is not by itself fatal to safe harbor eligibility. Neither is the
fact that Motherless did not publicize its internal criteria.74
Lange described how he applies Motherless’s repeat
infringer policy in his deposition testimony. He testified that
he excludes infringing material by looking for an identifying
watermark in the corner, the usual way owners identify their
copyrighted material. If he receives a DMCA takedown
73
The dissent conflates Lange’s screening of content for child
pornography and bestiality before it is made available on the website, and
his implementation of Motherless’s policy to terminate repeat infringers.
Lange does only the former with the assistance of contractors.
74
See Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1102
(W.D. Wash. 2004), overruled on other grounds, Cosmetic Ideas, Inc. v.
IAC/Interactivecorp, 606 F.3d 612 (9th Cir. 2010); NIMMER § 12B.10[F],
at 12B-195 n.195.
40 VENTURA CONTENT V. MOTHERLESS
notice (the form designated in subsection (c)(3)(A)),75 he
75
17 U.S.C. § 512(c)(3)(A) lists out the requirements for a notice of
infringement. The subsection reads as follows:
ELEMENTS OF NOTIFICATION.—
(A) To be effective under this subsection, a notification
of claimed infringement must be a written
communication provided to the designated agent of a
service provider that includes substantially the
following:
(i) A physical or electronic signature of a person
authorized to act on behalf of the owner of an exclusive
right that is allegedly infringed.
(ii) Identification of the copyrighted work claimed to
have been infringed, or, if multiple copyrighted works
at a single online site are covered by a single
notification, a representative list of such works at that
site.
(iii) Identification of the material that is claimed to be
infringing or to be the subject of infringing activity and
that is to be removed or access to which is to be
disabled, and information reasonably sufficient to
permit the service provider to locate the material.
(iv) Information reasonably sufficient to permit the
service provider to contact the complaining party, such
as an address, telephone number, and, if available, an
electronic mail address at which the complaining party
may be contacted.
(v) A statement that the complaining party has a good
faith belief that use of the material in the manner
complained of is not authorized by the copyright owner,
its agent, or the law.
VENTURA CONTENT V. MOTHERLESS 41
also uses “hashing” software so that copies of the image or
clip will be removed and will be screened out if anyone tries
to post them again. Ordinarily, he will not terminate a user
because of one takedown notice, but he will if there are two
or more, which is to say, “repeated” instances of
infringement. He might make a “gut decision” to terminate
a user after the first DMCA notice (that is, a user who is not
a repeat infringer) if there are multiple infringing pictures or
videos identified in the notice, though that is not his usual
practice. Motherless has received over 3,000 DMCA
takedown notices. Lange does not keep a written list of
subscribers whose submissions generated DMCA notices, but
he saves each of the takedown notices and can track the
number of times each user’s content has been deleted in
response, as well as the date of and reason (e.g., copyright
infringement, child pornography) for each deletion. In
deciding to terminate a user, he considers the account’s
history, as well as his memory and judgment. He is
especially careful to look for and screen out material from
one producer who threatened to sue him for infringement.
Before removing a user, Lange considers multiple factors,
as detailed above, including the number of complaints arising
from the user’s uploads, the amount of infringing content in
the complaint he received, and whether he thinks the user had
maliciously or intentionally uploaded infringing content.
Lange testified at one point that Motherless had an automated
system for removing repeat infringers, but he subsequently
admitted that Motherless did not have such a system and may
(vi) A statement that the information in the notification
is accurate, and under penalty of perjury, that the
complaining party is authorized to act on behalf of the
owner of an exclusive right that is allegedly infringed.
42 VENTURA CONTENT V. MOTHERLESS
have confused it with Motherless’s automatic removal of
content when two or more people report it for violating the
Terms of Use within a 24-hour period. Lange uses his
judgment, not a mechanical test, to terminate infringers based
on the volume, history, severity, and intentions behind a
user’s infringing content uploads. Ventura does not dispute
this.
Perfect 10, Inc. v. CCBill LLC76 holds that “a service
provider ‘implements’ a policy if it has a working notification
system, a procedure for dealing with DMCA-compliant
notifications, and if it does not actively prevent copyright
owners from collecting information needed to issue such
notifications.” The “implementation is reasonable if, under
‘appropriate circumstances,’ the service provider terminates
users who repeatedly or blatantly infringe copyright.”77 A
“substantial failure” to record alleged infringers may raise a
genuine issue of material fact, but the maintenance of a
DMCA log is adequate even if the log is not perfect.78 (One
page of the log was not fully filled out in CCBill, but the log
was still adequate.79) DMCA-compliant notices put the
provider on notice of infringement, but unsworn, non-
compliant complaints do not.80 The service provider’s
responses to DMCA notices from copyright holders other
76
488 F.3d 1102, 1109 (9th Cir. 2007).
77
Id.
78
Id. at 1110.
79
Id.
80
Id. at 1112–13.
VENTURA CONTENT V. MOTHERLESS 43
than the parties to the case are relevant to assessing the
provider’s policy.81
Various factors may bear on whether a service provider
has “adopted and reasonably implemented” its policy for
terminating, “in appropriate circumstances,” repeat infringers.
Certain factors work in favor of the service provider,
including: a DMCA log, as discussed in CCBill; blocking a
subscriber’s name and email address from uploads;82 putting
email addresses from terminated accounts on a banned list;83
and prohibiting a banned user from reopening a terminated
account.84 Other factors cut against the service provider,
including: changing the email address to which takedown
notices are sent without providing notice of the change;85
participating in copyright infringement;86 allowing terminated
users to rejoin the site;87 and refusing to terminate known
81
Id. at 1113.
82
See Io Grp., Inc. v. Veoh Networks, Inc., 586 F. Supp. 2d 1132,
1143–44 (N.D. Cal. 2008).
83
See Capitol Records, LLC v. Vimeo, LLC, 972 F. Supp. 2d 500,
514–16 (S.D.N.Y. 2013), overruled in part on other grounds, 826 F.3d 78
(2d Cir. 2012).
84
Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090, 1103–04
(W.D. Wash. 2004).
85
See Ellison v. Robertson, 357 F.3d 1072, 1080 (9th Cir. 2004).
86
See EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 844 F.3d
79, 90 (2d Cir. 2016).
87
See BMG Rights Mgmt. (US) LLC v. Cox Commc’ns, Inc., 149 F.
Supp. 3d 634, 656–58 (E.D. Va. 2015).
44 VENTURA CONTENT V. MOTHERLESS
repeat infringers.88 Congress did not require that, to be
eligible for safe harbor, a provider must maintain a logbook
of infringers which it consults whenever it receives a DMCA
notice. Congress required that the provider reasonably
implement a policy of terminating repeat infringers, and the
use of such a logbook and procedure would be good evidence
that it did.
We conclude that on this record, there was no triable issue
of fact as to whether Motherless, when it infringed on
Ventura’s copyrighted material, had “adopted and reasonably
implemented” its policy of terminating repeat infringers “in
appropriate circumstances.” No trier of fact could conclude
from the evidence in the record that Motherless had failed to
reasonably implement a repeat infringer policy.
As the district court pointed out, there is a paucity of
proven failures to terminate. Safe harbor eligibility does not
require perfection, just “reasonable” implementation of the
policy “in appropriate circumstances.” Eligibility for the safe
harbor is not lost just because some repeat infringers may
have slipped through the provider’s net for screening them
out and terminating their access. The evidence in the record
shows that Motherless terminated between 1,320 and 1,980
users for alleged copyright infringement and that only nine
alleged repeat infringers had slipped through. Of those nine,
only six were before Ventura filed its lawsuit, and only four
of the six had been the subject of more than one DMCA
notice.89 That suggests that less than one repeat infringer in
88
See id. at 659–62.
89
See NIMMER § 12B.10[C][1], at 12B-178 (defining “repeat
infringer”).
VENTURA CONTENT V. MOTHERLESS 45
100,000 active users was missed. If that is the extent of
failure, there could be no genuine issue of material fact as to
whether Motherless “reasonably implemented” its
termination policy. Congress used the word “reasonable” to
modify “implemented,” so the phrase cannot be construed to
require perfect implementation.90
Ventura points out that one of Motherless’s biggest
uploaders, Kristy7187, was not terminated until Motherless
had received a fourth DMCA-compliant notice on a
Kristy7187 upload. It may be hard to imagine how a site with
so many subscribers and uploads could have so few repeat
infringers, and how it could screen so effectively. Motherless
does not even have an automated log of subscribers whose
uploads generated DMCA notices. And since the policy is
little more than Lange’s multifactor judgment based largely
on his recollection of DMCA notices, it may be hard to
imagine how it could work so well. It is tempting, perhaps,
to say that a policy is not “reasonably” implemented if it does
not include both a database of users whose uploads have
generated DMCA notices and some automated means of
catching them if they do it again. But the statute does not
require that. It modifies the termination requirement with the
phrase “appropriate circumstances” in addition to the word
“reasonable.” And as the district court held, the evidence in
the record allows for only one conclusion: that Motherless
succeeded in reasonably implementing its policy of
terminating repeated infringers. Although the dissent points
out that anonymous users could also upload files, 85% of the
uploads came from members, and the Ventura clips were not
90
See Io Grp., Inc. v. Veoh Networks, Inc., 586 F. Supp. 2d 1132,
1144 (N.D. Cal. 2008); Corbis Corp. v. Amazon.com, Inc., 351 F. Supp.
2d 1090, 1104 (W.D. Wash. 2004).
46 VENTURA CONTENT V. MOTHERLESS
uploaded by anonymous users. The number of repeat
infringers who escaped termination, at least as the record
shows, is a tiny number and a minuscule percentage of users.
Doubt that Motherless really does have a “policy” of
terminating repeat infringers that is “reasonably
implemented” is unavoidable in light of unsystematic and
casual implementation. But doubt is not evidence. Ventura
has presented no evidence to establish a genuine issue of fact
as to whether Motherless failed to reasonably implement its
policy. Motherless, however, has met its burden.91 The
absence of any significant number of repeat infringers who
escaped termination compels the conclusion that a trier of fact
could not conclude, on the record before us, that Motherless
failed to meet the repeat infringer eligibility requirement for
safe harbor. Motherless and Lange are therefore entitled to
claim the protection of the safe harbor.
II. Remaining Issues
Ventura Content argues that the district court abused its
discretion in not exercising supplemental jurisdiction over its
California state law claim for violation of California Business
and Professional Code § 17200. The district court did not
abuse its discretion.
Federal courts may exercise supplemental jurisdiction
over a state law claim if it shares a “common nucleus of
operative fact” with a federal claim and if “the state and
91
See Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020, 1039
(9th Cir. 2013).
VENTURA CONTENT V. MOTHERLESS 47
federal claims would normally be tried together.”92 Ventura’s
state law claim is for unlawful business practices, a cause of
action that “borrows violations of other laws” and makes
them “independently actionable.”93 Specifically, Ventura
alleges that Motherless is violating federal law by not
creating and maintaining records of the performers on its
site.94 The district court held that this claim did not share a
“common nucleus of operative fact” with the copyright
infringement claim. That was not an abuse of discretion for
the very reason that the district court gave: Motherless’s
“failure to keep records has little, if anything, to do with the
copyrighted material that appears on their system.”
Likewise, the district court did not abuse its discretion by
denying an award of attorney’s fees to Motherless. Among
the factors bearing on the exercise of discretion are “(1) the
degree of success obtained; (2) frivolousness; (3) motivation;
(4) the objective unreasonableness of the losing party’s legal
and factual arguments; and (5) the need, in particular
circumstances, to advance considerations of compensation
and deterrence.”95
92
Bahrampour v. Lampert, 356 F.3d 969, 978 (9th Cir. 2004).
93
Davis v. HSBC Bank Nev., N.A., 691 F.3d 1152, 1168 (9th Cir.
2012) (quoting Cel-Tech Commc’ns, Inc. v. L.A. Cellular Tel. Co.,
973 P.2d 527, 539–40 (Cal. 1999)).
94
See 18 U.S.C. § 2257(a) (requiring producers of media depicting
sexually explicit conduct to “create and maintain individually identifiable
records pertaining to every performer”).
95
Seltzer v. Green Day, Inc., 725 F.3d 1170, 1180–81 (9th Cir. 2013)
(citing Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)).
48 VENTURA CONTENT V. MOTHERLESS
The district court noted that Ventura’s claim was neither
objectively unreasonable nor frivolous because prior Ninth
Circuit precedent had not directly addressed several
arguments that Ventura raised. Ventura’s motivation was not
improper, nor was there a need to deter the claims that
Ventura made. It had, after all, been the victim of copyright
infringement and sued parties that played a role in the
infringement. It was thwarted only because of the
complexities of the safe harbor rules that had not yet been
fully explicated in the case law.
CONCLUSION
The record and the law support the district court’s
decisions (1) granting summary judgment in favor of
Motherless; (2) declining to exercise supplemental
jurisdiction over Ventura Content’s state-law claim; and
(3) denying Motherless’s motion for attorney’s fees.
AFFIRMED.
VENTURA CONTENT V. MOTHERLESS 49
RAWLINSON, Circuit Judge, dissenting:
I respectfully dissent from my colleagues’ conclusion that
Motherless, Inc. and Joshua Lange qualified for the safe
harbor provided for in the Digital Millennium Copyright Act
(the Act).
It is important to remember that this case was resolved on
summary judgment. Therefore, if a material issue of fact was
raised by Ventura Content, Ltd. (Ventura), entry of summary
judgment in favor of Motherless, Inc. and Lange was in error.
See Zetwick v. County of Yolo, 850 F.3d 436, 441 (9th Cir.
2017) (“[W]here evidence is genuinely disputed . . . that issue
is inappropriate for resolution on summary judgment. The
district court erred in granting summary judgment to the
defendants . . .”) (citations, alteration, and internal quotation
marks omitted). Moreover, all evidence is to be construed in
the light most favorable to Ventura. See id. at 440.
From my reading of the record, a gargantuan issue of fact
was raised by Ventura regarding Motherless’/Lange’s
compliance with the requirement that the service provider
adopt, implement, and inform subscribers and account
holders of the policy providing for termination of repeat
infringers to merit safe harbor protection from copyright
infringement.
It is important to set forth the obligations imposed upon
the service provider Motherless/Lange under the Act. The
Act provides that the safe harbor is available to a service
provider “only if the service provider” “has adopted and
reasonably implemented and informs subscribers and account
holders of the service provider’s system or network of, a
policy that provides for the termination in appropriate
50 VENTURA CONTENT V. MOTHERLESS
circumstances . . . of repeat infringers.” 17 U.S.C.
§ 512(i)(1)(A) (emphasis added). The Act requires not only
that the service provider have a policy, but that the policy be
adopted and reasonably implemented. See id. The
subscribers and account holders of the system must also be
informed of the policy.
The majority concedes that Motherless/Lange has adopted
no written or publicized policy that may be used to instruct
regarding the expulsion of repeat infringers. See Majority
Opinion, pp. 7, 38–39. The majority excuses this deficiency
by noting that “there are no employees to instruct.” Id., p. 7.
However, there is at least one independent contractor who,
together with Lange, reviews all the photographs and videos
before they are uploaded to the website. See Majority
Opinion, p. 6. If, as the majority concedes, there is no written
policy to instruct the independent contractor regarding repeat
infringers, at a minimum a material issue of fact is raised
regarding compliance with that requirement of the safe harbor
provision.
The majority accuses me of “conflat[ing] Lange’s
screening of content . . . and his implementation of
Motherless’s policy to terminate repeat infringers.” Majority
Opinion, p. 39 n.73. I beg to differ. I readily acknowledge
that the screening precedes the implementation of the
“policy” to terminate repeat infringers. But how would
Lange know whom to terminate if the repeat offenders are not
first identified by Lange or to Lange by the contractor? That
question brings us back to the lack of guidance regarding the
“appropriate circumstances” for terminating repeat infringers.
17 U.S.C. § 512(a)(1)(A). If the independent contractor has
no guidance for determining when to refer screened material
as from a potential repeat infringer, and Lange is the only one
VENTURA CONTENT V. MOTHERLESS 51
who actually terminates repeat offenders, a material issue of
fact looms regarding the reasonableness of the
Motherless/Lange system of identifying and terminating
repeat infringers. See id.
Further supporting the existence of a material issue of fact
regarding the establishment of a policy is the failure of Lange
to articulate a consistent approach to the termination of repeat
infringers. At one point Lange stated the repeat infringer
policy as: “If we receive more than one takedown notice, we
terminate the account.” Lange even went so far as to describe
this approach as “a written policy of Motherless.” At a
different point, Lange described an “automated system for
removing people” that he later acknowledged did not actually
exist.
The majority has apparently settled on the third approach
articulated by Lange, the “I delete any infringing content I
can find” approach. Majority Opinion, p. 6. Lange described
this approach as “look[ing] at about 80 thumbnails per
minute” to weed out repeat infringers. What Lange is really
saying is that he looks at each thumbnail for a fraction of a
second to identify repeat infringers. Lange uses his
“judgment” rather than a policy to make this determination.
Majority Opinion, p. 7. And Lange never explains how,
without a written policy, his “judgment” is transferred to the
independent contractor who is also responsible for identifying
repeat infringers. For instance, Lange might make a “gut
decision” to terminate a user after the first takedown notice.
Majority Opinion, p. 41. Who can say with a straight fact
that a “gut decisionmaking process” constitutes a policy? I
certainly can’t.
52 VENTURA CONTENT V. MOTHERLESS
At a minimum, Lange’s inconsistent and inadequate
articulation and application of the Motherless/Lange policy,
such as it is, governing termination of repeat infringers
precluded entry of summary judgment in favor of
Motherless/Lange. See Zetwick, 850 F.3d at 441.
The majority relies on “the paucity of proven failures to
terminate” as evidence supporting satisfaction of the safe
harbor requirements. Majority Opinion, p. 44. But this
“evidence,” or more precisely, lack of evidence is singularly
unpersuasive because it relies completely on the less than
stellar, unautomated recordkeeping system utilized by
Motherless. The missing link is how many repeat infringers
slipped through the massive cracks in the Motherless/Lange
casual monitoring system. And as the majority concedes,
there is evidence in the record that repeat infringers slipped
through these cracks. See id. One of the biggest uploaders to
the website was not terminated until after Motherless
received a fourth takedown notice under the Act. See id., p.
45. This circumstance raises a material issue of fact
regarding the lack of implementation of one of Lange’s self-
described policies of terminating an account “if [Motherless]
receive[s] more than one takedown notice.” The failure to
terminate the account of this admittedly repeat infringer
certainly raised a material issue of fact regarding whether
Motherless had “a policy that provides for the termination [of
repeat infringers] in appropriate circumstances.” 17 U.S.C.
§ 512(i)(1)(A); see also Perfect 10 v. CC Bill LLC, 488 F.3d
1102, 1113 (9th Cir. 2007) (“A policy is unreasonable . . . if
the service provider failed to respond when it had knowledge
of the infringement. . . .”).
The majority admits that “it may be hard to imagine how
a site with so many subscribers and uploads could have so
VENTURA CONTENT V. MOTHERLESS 53
few repeat infringers, and how it could screen so effectively.”
Majority Opinion, p. 45. But the majority can only reach the
conclusion that there are few repeat infringers, and that
Motherless screens effectively, by impermissibly viewing the
evidence in the light most favorable to Motherless rather than
to Ventura. See Zetwick, 850 F.3d at 440. In addition to
raising material issues of fact regarding the existence and
implementation of the required policy, Ventura presented
evidence that Motherless is completely unable to capture
anonymous infringers. So how can the majority have
confidence in the number of infringers who purportedly
escaped termination if there is no way of knowing the actual
number of infringers? This is a classic example of “garbage
in, garbage out” evidence and should not permit Motherless
to escape accountability under the Act for failing to adopt,
disseminate, and reasonably implement a policy to terminate
repeat infringers.
The safe harbor provision is basically an exception to the
liability that otherwise applies under copyright law for those
who harbor repeat copyright infringers. As with any other
exception, its parameters should be construed narrowly. See,
e.g., Federal Bureau of Investigation v. Abramson, 465 U.S.
615, 636 n.5 (1982) (noting that exceptions to the Freedom of
Information Act are to be narrowly construed). The majority
concedes that Motherless’ policy is comprised primarily of
“little more than Lange’s [unwritten] multifactor judgment
based largely on his recollection of DMCA notices” and his
glances at the uploads. Majority Opinion, p. 45. I am not
prepared to say as a matter of law that a “policy” that is
unwrittten, uncommunicated, and often unimplemented falls
within the safe harbor provisions of the Act.
54 VENTURA CONTENT V. MOTHERLESS
I agree with the majority that the district court acted
within its discretion when it declined to exercise jurisdiction
over Ventura’s California state law claim and when it denied
an award of attorney’s fees to Motherless. However, I
seriously disagree with the majority that the district court
properly awarded summary judgment in favor of
Motherless/Lange. Viewing the evidence in the light most
favorable to Ventura, material issues of fact remain regarding
the existence of a policy as defined in the Act, and the
reasonableness of actions taken by Motherless/Lange to
terminate repeat infringers. I would reverse that portion of
the district court’s ruling, and I respectfully dissent from the
majority’s contrary ruling.