IP Law Daily, COPYRIGHT—S.D. Cal.: CafePress could be liable for users’ orders of products with copyrighted images, (Dec 8, 2014)

By Jody Coultas, J.D.

A copyright holder stated direct infringement and vicarious liability claims against CafePress Inc., based on CafePress’s use of copyrighted works on items advertised and sold on its website, the federal district court in San Diego has held (Gardner v. CafePress Inc., December 4, 2014, Curiel, G.).

CafePress is an e-commerce vendor that allows users to upload images of artwork, slogans, and designs for printing on items such as shirts, bags, and mugs. Several CafePress users uploaded copies of works to CafePress’s service and sold items bearing copies of the copyrighted works through CafePress’s service on its website and other websites. CafePress generated approximately $6,000 in revenue from these allegedly infringing sales. CafePress also purchased advertisements that displayed copies of the works and generated revenue from users who clicked on the advertisements. The copyright holder sued CafePress alleging copyright infringement.

Direct infringement. The court denied CafePress’s motion for summary judgment on the direct liability claim. To state a claim for direct infringement, the copyright holder needed to show ownership of the allegedly infringed material, violation of at least one exclusive right granted to copyright holders, and volitional conduct by the defendant. The parties agreed on the first two elements, but disputed whether CafePress engaged in volitional conduct. CafePress argued that its users were the actual cause of the infringement. The issue was whether CafePress was more similar to a copy shop that made “photocopiers available to the public on its premises” or to a copy shop where customers requested a copy from the copy shop’s human employees “who then volitionally operate[] the copying system to make the copy.” Because CafePress employees, not its customers, operate the machinery used by CafePress to create the allegedly infringing items, CafePress engaged in at least some volitional conduct.

Vicarious liability. Genuine issues of material fact precluded summary judgment of the vicarious liability claim, according to the court. To state a claim for vicarious infringement, the copyright holder needed to show CafePress directly benefitted financially from third party’s direct infringement, and CafePress’s ability to supervise a third party’s infringing activity. A certain number of CafePress customers saw ads bearing images of the copyrighted works, clicked through those ads, and generated revenue for CafePress and that some CafePress customers bought items bearing images of the copyrighted works. The fact CafePress generated revenue from images of the copyrighted works, there was a genuine issue of material fact as to whether the infringing activity drew customers and thus whether there was a “direct financial benefit.”

There were also genuine issues of material fact as to whether CafePress had the ability to supervise the infringing activity, according to the court. The copyright holder argued that CafePress had complete control over what products were displayed and sold on its website. CafePress argued that its infringement prevention was an “after-the-fact ability to remove or black access to infringing activities.” The court found that CafePress’s production of allegedly infringing items at its production facility appeared to be “purposeful conduct” such that CafePress had the “right and ability to control.” Therefore, the motion for summary judgment was denied.

The case is No. 3:13-cv-1108-GPC-JLB.

Attorneys: Darren James Quinn (Law Offices of Darren J. Quinn) for Steven M. Gardner. Adrienne J. Lawrence (Greenberg Traurig LLP) for CafePress Inc.

Companies: CafePress Inc.

Cases: Copyright CaliforniaNews