Abandonment Defense Stays in Copyright Suit on Filesharing

“Malibu concedes that it may have done so for promotional purposes, but 'under the expectation that the videos could not be downloaded and distributed by the website[']s viewers,'” Chief Judge Conner said. “Yet a jury could infer from co-owner [Colette] Pelissier-Field's engagement with users on tubesites that she — and, by extension, Malibu — was familiar with the capabilities of those sites, including the download function. A reasonable jury may also find it compelling that Malibu introduced these videos into the digital ether without executing any type of written agreement with the tubesites or retaining a single record of which videos were uploaded to which tubesites.”

Doe has also alleged that Malibu promotes its content through so-called “X-Cash agents,” who sign up as affiliates of Malibu on X-Cash.com and are then paid to upload Malibu-owned content to various tubesites and even torrent sites.

“Malibu has also failed to engage in any meaningful way with John Doe's evidence and arguments regarding use of X-Cash agents to promote Malibu's material,” the chief judge said. “John Doe has adduced evidence establishing, by Malibu's own admission, that such a program exists, although the scope and nature of the X-Cash program and how it operates are not entirely clear. The evidence on this issue is thin but, at this juncture, it is unanswered by Malibu.”

But Chief Judge Conner also made clear that the defendant faced an uphill battle in making a copyright abandonment argument at trial. “To be clear, we do not conclude today that Malibu has abandoned its rights for any of the copyrights-in-suit,” the judge said. “At trial, John Doe will need to convince the jury that Malibu intentionally abandoned its rights to copy and to distribute as to each of the copyrights-in-suit. As we previously indicated, a finding by the jury that Malibu abandoned its rights to enforce one or more copyrights does not mean that Malibu's entire library of works is free for all internet users to download and share. We hold only that — based on an equivocal record compounded by less-than-pellucid [Local] Rule 56.1 statements — genuine disputes of fact remain for trial as to whether Malibu abandoned its right to enforce any or all of the copyrights-in-suit.”

Chief Judge Conner also said a jury would need to decide whether Doe unlawfully copied or distributed the one video he denies ever downloading, titled In for the Night. “Malibu has not directed the court to any evidence — contested or otherwise — showing that John Doe in fact downloaded or redistributed the contested video 'In for the Night,'” the judge wrote. “Absent such evidence, we cannot find as a matter of law that Malibu is entitled to summary judgment on the question of infringement as to this video.”

Still, Chief Judge Conner ruled against Doe on the rest of his affirmative defenses, including his assertion that Malibu granted him either actual or implied licenses to download its content by uploading it to tubesites. The court also rejected Doe's arguments that he was misled by advertisements on tubesites promoting Malibu's content as being free and that Malibu's lawsuit constituted copyright misuse.

“The record is devoid of evidence supporting John Doe's speculation that Malibu purposefully deceived him to download the copyrights-in-suit. Nor has John Doe submitted evidence from which a trier of fact might find that Malibu's lawsuit is anything other than a 'good faith attempt to enforce a copyright,' conduct which 'does not violate the antitrust laws,'” Conner said, quoting language from the U.S. Court of Appeals for the Third Circuit's 1984 ruling in Columbia Pictures Industries Inc. v. Redd Horne Inc., 749 F.2d 154 (3d Cir. 1984).

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Zach Warren is the Editor-in-Chief of Legaltech News, an ALM sibling of Entertainment Law & Finance. Contact him at [email protected].