United States District Court, S.D. California
STEVEN M. GARDNER, an individual, Plaintiff,
CAFEPRESS INC., a Delaware Corporation; BEVERLY TEALL, an indvidual, Defendants.
ORDER DENYING DEFENDANT CAFEPRESS INC.'S MOTION FOR SUMMARY JUDGMENT AND GRANTING CAFEPRESS INC.'S ALTERNATIVE MOTION FOR PARTIAL SUMMARY JUDGMENT
(ECF NO. 15)
GONZALO P. CURIEL, District Judge.
Before the Court in this copyright infringement case is defendant CafePress Inc.'s (CafePress) Motion for Summary Judgment (Motion) or, Alternatively, Motion for Partial Summary Judgment (Alternative Motion). (ECF No. 15.) In its Motion, CafePress asserts summary judgment should be granted in its favor because its allegedly infringing conduct falls within the safe harbor set forth in17 U.S.C. § 512(c) that protects internet service providers from copyright infringement liability under certain circumstances. In its Alternative Motion, CafePress asserts partial summary judgment should be granted in its favor on the issue of whether Plaintiff is entitled to statutory damages and attorney fees.
Plaintiff has filed an opposition to CafePress's Motion, including a request for additional discovery under Federal Rule of Civil Procedure 56(d). (ECF No. 46.) CafePress has filed a reply in support of its Motion and Alternative Motion. (ECF No. 44.) The Court finds CafePress's Motion and Alternative Motion suitable for disposition without oral argument. See CivLR 7.1.d.1. Having considered the parties' submissions, the Court will DENY CafePress's Motion and GRANT CafePress's Alternative Motion.
CafePress is an e-commerce vendor that operates an internet website at www.cafepress.com. (ECF No. 15-4, Moore Decl. ¶ 4.) CafePress allows individuals to upload images of their artwork, slogans, and designs for printing on items such as shirts, bags, and mugs. (See id.) While CafePress may decide to remove images, CafePress does not choose which images are uploaded. Rather, images are uploaded at the direction of CafePress users and are stored on servers through CafePress's website. (Id. ¶ 9.) The process for uploading images is automated, meaning that no individual sees or approves images before or while they are uploaded and that images may be automatically formatted "to reduce image compression effects" or automatically scaled "so they print properly on a product." (Id. ¶ 8.) Plaintiff has offered evidence that, when uploading images to CafePress's website, metadata regarding the image's copyright information is deleted. (ECF No. 32.)
Once images are uploaded, they may be printed onto products and sold in at least three ways. First, products may be sold from a user's own virtual shop established through CafePress's website. (See Moore Decl. ¶ 4.) Users may establish two types of virtual shops at no charge or a third type of virtual shop, called a "premium shop, " for a fee. (ECF No. 47-7 at 2-3.)
Second, users may make products in their virtual shops "eligible for placement in the CafePress Marketplace." (Id. at 1.) In fact, users' products are automatically placed in the Marketplace unless users opt out of such placement. (Id. at 1.) Still, "CafePress in its sole and absolute discretion... determine[s] what designs and products will be available through the CafePress Marketplace." (Id.) If products are made eligible for the Marketplace, "CafePress may automatically modify designs (e.g., cleaning up JPG artifacting, adjusting colors for different printers and products, and adjusting design placement on products)." (Id.) CafePress also determines the retail price for products sold in its Marketplace. (Id.) If online shoppers want to buy an item from the Marketplace, they pay CafePress directly, (id.), then CafePress pays a 5-10% commission to the user from whose virtual store the product came, (ECF No. 47-6 at 17).
The third way products are sold is through a "feed" to Amazon and eBay. (Id. at 10, 14.) This method involves CafePress's marketing department providing content to Amazon and eBay regarding certain products, which are then sold through those companies. (Id.)
To aid in its sales, CafePress contracts with a company that provides "re-targeted" advertising. (ECF No. 47-4 at 12.) This involves the displaying of images from the temporary cache memory of a computer used by an individual to browse CafePress's website. (Id.; ECF No. 47-11.) Because images are displayed from the cache of an individual's computer, neither CafePress nor the re-targeting company record or track whether or which images are advertised. (ECF No. 47-4 at 13.)
Once products are ordered, most are printed by CafePress at its "state-of-the-art" production facility in Kentucky. (ECF Nos. 47-1 at 1-2, 47-3 at 3.)
In his currently operative First Amended Complaint (FAC), Plaintiff alleges CafePress and now-dismissed defendant Beverly Teall (Teall) infringed Plaintiff's copyrights to an image entitled "Alaska Wildlife." (FAC ¶¶ 9-10.) "Alaska Wildlife" was registered with the U.S. Copyright Office, effective November 24, 2012. (FAC, Ex. A.)
Teall first uploaded the image that allegedly infringes "Alaska Wildlife" on November 19, 2011. Using her own virtual shop, Teall first sold a product displaying the allegedly infringing material on January 5, 2012-nearly a year before "Alaska Wildlife" was registered with the U.S. Copyright Office. (Moore Decl. ¶ 29.)
Plaintiff thus alleges CafePress and Teall infringed Plaintiff's copyrights by, among other things, "(1) distributing various marketing materials containing designs identical to or substantially similar to [P]laintiff's copyrights; (2) selling or offering for sale various products containing designs identical or substantially similar to [P]laintiff's copyrights; (3) copying [P]laintiff's copyrights; (4) creating derivative works from [P]laintiff's copyrights; and (4) reproducing [P]laintiff's copyrights." (FAC ¶ 14.)
Based on the foregoing, Plaintiff asserts a single cause of action for copyright infringement under the Copyright Act, 17 U.S.C. § 101 et seq. (Id. ¶¶ 1, 9-17.) Plaintiff seeks the seizure and/or destruction of all products used to perpetrate the infringing acts, actual or statutory damages, injunctive relief, and attorney fees and costs. (Id. ¶ 17.)
It is undisputed that Plaintiff did not send any notice of infringement to CafePress before filing suit, and that CafePress first learned of Plaintiff's infringement allegations when CafePress received Plaintiff's initial Complaint. (Moore Decl. ¶ 28.) It is also undisputed that, on the same day CafePress received Plaintiff's initial Complaint, CafePress disabled access to the material that allegedly infringed "Alaska Wildlife." (Id. ¶ 29.)
CafePress explains in its Motion that, the day before the Early Neutral Evaluation Conference was held in this case on October 1, 2013, Plaintiff's counsel notified CafePress's counsel that "Plaintiff had identified three other works that allegedly were being infringed by users on [CafePress's] Website: Harmony of Wolves, ' Find 12 Tigers, ' and Polar Bears 10 Hidden Bears.'" (See ECF No. 15-1, CafePress Mot. at 6.) CafePress notes that, while Plaintiff has not identified these additional works in his FAC, CafePress "proceeds with this summary judgment motion as though these works had been included in the [FAC]." (Id. at 6 n.2.)
"Harmony of Wolves, " "Find 12 Tigers, " and "Polar Bears 10 Hidden Bears" were each registered with the U.S. Copyright Office, effective January 20, 2013, December 14, 2012, and June 6, 2013, respectively. Allegedly infringing images of these additional works were found under the account of an individual CafePress has identified as "Second User."
Second User first uploaded the image that allegedly infringes "Harmony of Wolves" on November 18, 2008, and first sold a product displaying the material on December 10, 2011-more than a year before "Harmony of Wolves" was registered with the U.S. Copyright Office.
Second User first uploaded the image that allegedly infringes "Find 12 Tigers" on November 20, 2009, and first sold a product displaying the material on December 7, 2009-nearly three years before "Find 12 Tigers" was registered with the U.S. Copyright Office.
Second User first uploaded the image that allegedly infringes "Polar Bears 10 Hidden Bears" on November 5, 2008, and first sold a product displaying the material on November 30, 2008-more than four years before "Polar Bears 10 Hidden Bears" was registered with the U.S. Copyright Office.
It is undisputed that, on the same day counsel for CafePress learned of these additional allegedly infringing materials, CafePress disabled access to the materials. It is further undisputed that ...