Case Document 81 Filed 05/01/17 Page 1 of 10 Page ID #:1922

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

 

 

CIVIL 
Case Nos. Date May 1, 2017
Title Greg Young Publishing, Inc. v. Za::le, Inc. Page 1 of 10

 

 

Present: The Honorable STEPHEN V. WILSON, U.S. DISTRICT JUDGE

 

 

 

Paul Cruz NOT REPORTED

Deputy Clerk Court Reporter

Attorneys Present for Plaintiff(s) Attorneys Present for Defendant(s)
None Present None Present

Proceedings: IN RE: DEFENDANT ?3 MOTION FOR SUMIVIARY
JUDGMENT (DOC. 49) AND MOTION FOR PARTIAL
SUIVIMARY JUDGMENT (DOC. 50)

On March 27, 2017, Defendant Zazzle, Inc. (?Zazzle?) ?led a motion for summary
judgment. Doc. 49. The same day, Plaintiff Greg Yormg Publishing, Inc. ?led a
motion for partial summary judgment. Doc. 50. The motions have been fully briefed (Docs. 69?
70, 77?78), and are appropriate for resolution without oral argument. L.R. 7-15. The Court rules
as follows:

I. 

Greg Young is an individual who works in Visual art publishing. Begirming in 1992,
Young did business under the d/b/a ?Greg Yorurg Publishing? Beginning in 2007, he
began using the d/b/a ?Greg Young International? On December 18, 2007, he created
GYPI, a alifomia corporation.

Yormg has worked with a number of visual artists. Since 1999, Yormg has worked with
Kerne Erickson to produce and market vintage-style art. And since 2010, Young has been the
licensing agent for Scott Westmoreland, an artist who creates landscape and beach-themed art.

 

1 This section draws upon Doc. 71 response to Zazzle's statement of undisputed facts) and Doc. 69-1
(Zazzle?s response to statement of undisputed facts).

 

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Zazzle is a California corporation with its headquarters in Redwood City, California. It
runs a website that allows users to upload images of artwork, slogans, and designs. Users can
choose various consumer products they want the image to appear upon (e.g., coffee mugs,
posters, t-shirts, etc.), and offer these products for sale to the public. When an order is placed,
Zazzle will produce and deliver the product, paying a royalty to the user who uploaded the image
appearing on the product.
GYPI alleges that Zazzle has publicly displayed 41 paintings by Westmoreland or
Erickson on its website, and that Zazzle has created consumer products bearing these images. It
asserts claims for copyright infringement and seeks injunctive relief, statutory damages (or, in
the alternative, actual damages and restitution), and attorney’s fees.
II.

LEGAL STANDARD

The Court may grant summary judgment only “if the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a). “Only disputes over facts that might affect the outcome of the suit
under the governing law will properly preclude the entry of summary judgment.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). On a motion for summary judgment, the district
court’s “function is not . . . to weigh the evidence and determine the truth of the matter but to
determine whether there is a genuine issue for trial.” Id. at 249.
The moving party bears the initial responsibility to point to the absence of any genuine
issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the
nonmoving party has the burden of proof at trial, the moving party can carry its initial burden
either by submitting affirmative evidence that there is not a triable, factual dispute or by
demonstrating that the nonmoving party “fail[ed] to make a showing sufficient to establish the
existence of an element essential to that party's case.” Id. at 322. The burden then shifts to the
nonmoving party “to designate specific facts demonstrating the existence of genuine issues for
trial.” In re Oracle Corp. Sec. Litig., 627 F.3d 376, 387 (9th Cir. 2010) (citing Celotex Corp.,
477 U.S. at 324). This means that the evidence is such that “a jury could reasonably render a
verdict in the non-moving party’s favor.” Id. (citing Anderson, 477 U.S. at 252). “The evidence
of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.”
Anderson, 477 U.S. at 255.
III.
A.

ZAZZLE’S MOTION

Governing Law

A copyright is comprised of “the exclusive rights to do and to authorize any of the
following”: the reproduction, distribution, performance, or display of the work, the transmission
of an audio recording of the work, or the preparation of derivative works. 17 U.S.C. § 106.
Copyright ownership initially vests in the author, or, in the case of a work made for hire, in the
author’s employer. §§ 201 (a), (b). Ownership may be transferred, but only by written
agreement. §§ 201(d), 204(a). Each of the six exclusive rights can be conveyed separately.
Minden Pictures, Inc. v. John Wiley & Sons, Inc., 795 F.3d 997, 1002 (9th Cir. 2015). Each right

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can also be subdivided, which means the owner can transfer part of his interest in an exclusive
right while retaining an interest in the same right. See id. at 1002–04.
Only “[t]he legal or beneficial owner of an exclusive right under a copyright is entitled …
to institute an action for any infringement of that particular right committed while he or she is the
owner of it.” 17 U.S.C. § 501(b).2 It follows that “[t]he assignment of the bare right to sue for
infringement, without the transfer of an associated exclusive right, is impermissible.”
Righthaven LLC v. Hoehn, 716 F.3d 1166, 1169 (9th Cir. 2013).
B.

Westmoreland Copyrights

Zazzle moves for summary judgment on GYPI’s claims for infringement of the
Westmoreland copyrights. The material facts are not in dispute. GYPI and Westmoreland
entered an agreement providing that GYPI would be Westmoreland’s “exclusive representative”
for soliciting, negotiating, and administering licensing agreements with third parties. Doc. 49-4
at 14. Westmoreland holds the copyrights to his paintings, and GYPI agreed that it would not
acquire “any right” in these copyrights. See id. at 17. GYPI has no authority to enter into
contracts on Westmoreland’s behalf, but may present potential agreements to him for his
approval. See id. at 18. The parties agreed that if Westmoreland elected not to bring an action to
enforce his copyrights, GYPI would have the right to do so. See id.
Zazzle argues that GYPI cannot sue to enforce Westmoreland’s copyrights because it
lacks any ownership interest in these copyrights. The Court agrees. Although GYPI is
Westmoreland’s exclusive representative for soliciting, negotiating, and administering
agreements with third parties, it does not have authority to exercise any exclusive right with
respect to Westmoreland’s works. Without his permission, GYPI cannot reproduce, distribute,
or display his paintings or create derivative works. At most, GYPI can negotiate licensing
agreements and submit them to Westmoreland for approval. That is not a power to use or
authorize the use of the copyrighted works. GYPI’s status as Westmoreland’s exclusive
representative is insufficient to establish statutory standing under 17 U.S.C. § 501(b). Accord
Plunket v. Doyle, 2001 WL 175252, at *5 (S.D.N.Y. Feb. 22, 2001) (individual’s “exclusive
management rights” with respect to copyrighted worked were insufficient to establish statutory
standing under § 501(b)).
GYPI argues that its position is analogous to that of the licensing agent in Minden
Pictures, 795 F.3d at 1002. Not so. The licensing agreement there explicitly authorized the
licensing agent “to reproduce, and to authorize the reproduction of, the copyrighted
photographs.” Id. at 1003. That right was “unrestricted”—the licensing agent could “distribute .
. . and/or exploit the Images . . . without seeking special permission to do so.” Id. at 1000
(emphasis added). GYPI had no comparable authority to use Westmoreland’s paintings without
his permission.
GYPI also argues that it may proceed under the “Enforcement of Copyrights” provision,
which purports to give GYPI “the right to enforce the copyrights as a beneficiary to th[e]
2

A party is considered “the legal or beneficial owner of an exclusive right” if it holds the exclusive right by
“assignment, mortgage, exclusive license, or any other conveyance,” but not if it holds a mere nonexclusive license.
17 U.S.C. § 101.
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Agreement” if Westmoreland declines to do so. But the law in the Ninth Circuit is that “[t]he
assignment of the bare right to sue for infringement, without the transfer of an associated
exclusive right, is impermissible.” Righthaven, 716 F.3d at 1169. Because GYPI lacks any
exclusive rights in the Westmoreland copyrights, it cannot bring suit under § 501(b).
C.

Erickson Copyrights

Zazzle moves for summary judgment on GYPI’s claims for infringement of the Erickson
copyrights, arguing that GYPI lacks statutory standing to pursue this claim. In the alternative,
Zazzle seeks summary judgment that GYPI is not entitled to statutory damages with respect to
certain of the Erickson copyrights.
1.

Statutory Standing

The material facts are not in dispute. The Erickson works were created pursuant to
agreements between Erickson and Young’s d/b/a entities, GYP and GYI. The copyrights in
these works were assigned to Young’s d/b/a entities. Doc. 71, ¶¶ 39, 41–42, 46, 53–55, 58.
However, Young’s d/b/a entities are not parties to this case, and (with three exceptions) GYPI
failed to obtain written transfers of the Erickson copyrights before initiating this lawsuit.
Zazzle argues that GYPI cannot sue to enforce the Erickson copyrights because at the
time of the alleged infringement these copyrights were owned by Young’s d/b/a entities, not by
GYPI. GYPI counters that it should be allowed to enforce copyrights held by Young’s d/b/a
entities because Young is GYPI’s sole officer, director, and shareholder. Alternatively, GYPI
seeks leave to amend to add Young’s d/b/a entities as plaintiffs.
The Court agrees that GYPI should be allowed to assert copyright claims belonging to
Young’s d/b/a entities. As a practical matter, Young is GYPI, just as Young was GYP and GYI.
No conceivable purpose is served by a myopic focus on the way Young’s business was
organized at the time of a particular act of infringement.
Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir. 2010) is
instructive. That case involved copyright claims brought by Ashley Gasper, an adult film star,
and Jules Jordan Video, Inc. (“JJV”), a corporation founded by Gasper in which Gasper was the
sole officer, director, and shareholder. Id. at 1150. The district court held that Gasper,
proceeding in his individual capacity, lacked statutory standing to assert copyright infringement
claims for certain videos, because he was JJV’s employee at the time the videos were created,
and the copyrights for these videos would have vested in JJV under the work-for-hire doctrine.
Id. at 1152.
The Ninth Circuit rejected this analysis as “legally erroneous, inequitable, and illogical.”
Id. at 1155. It explained:
The problem with the district court’s analysis is that JJV was a one-man shop.
Gasper was the sole officer, director, and shareholder of JJV, exercised complete
control over it, and made all decisions concerning JJV and production of the
films. It was all Gasper all the time. JJV as employer and Gasper as employee
could certainly agree as to the scope of the employee’s employment, and could
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agree that Gasper should retain all copyrights. Since JJV was Gasper, JJV
intended whatever Gasper intended, and if Gasper intended that his creative work
be outside the scope of his employment with JJV, there was no one to disagree.
Id. at 1156.
The appellate court went on to explain that if the jury were to credit Gasper’s testimony
that he and JJV always intended for the copyrights to vest in Gasper personally, defendants could
not be heard to object that this understanding was never reduced to writing (as is generally
required for a transfer of copyright ownership under 17 U.S.C. § 204(a)):
Section 204(a) is designed to resolve disputes between owners and transferees and
to protect copyright holders from persons mistakenly or fraudulently claiming oral
licenses or copyright ownership. When there is no dispute between the copyright
owner and transferee, it would be unusual and unwarranted to permit a third-party
infringer to invoke § 204(a) to avoid suit for copyright infringement.
Id. at 1157.
The analysis is the same here. GYP, GYI, and GYPI were all one-man shops. It was all
Young all the time. Because Young was the man behind the curtain with respect to all of these
entities, he could decide that copyrights owned by any of these entities would be jointly owned
by all them, and no one could disagree. Nor would any third-party infringer have standing to
object to the lack of a written instrument confirming Young’s understanding.
Even if GYPI were prohibited from asserting copyright claims belonging to Young’s
d/b/a entities, leave to amend to add these entities as plaintiffs would certainly be appropriate.
See Fed. R. Civ. P. 15(a)(2) (“The court should freely grant leave when justice so requires.”).3
As an alternative to its holding that GYPI is entitled to assert claims belonging to Young’s d/b/a
entities, the Court deems the operative complaint amended to add GYP and GYI as plaintiffs.
Cf. Dale Carnegie & Assocs., Inc. v. King, 31 F. Supp. 2d 359, 366 (S.D.N.Y. 1998) (“the
complaint is deemed amended . . . to include Dale Carnegie Service Corporation as a plaintiff”);
In re Joint E. & S. Districts Asbestos Litig., 124 F.R.D. 538, 540 (E.D.N.Y. 1989) (“the
complaint is deemed amended to add Celotex as a party defendant”).

3

Zazzle cites cases holding that the court should not grant leave to amend to cure a jurisdictional defect. See, e.g.,
Lans v. Gateway 2000, Inc., 84 F. Supp. 2d 112, 115 (D.D.C. 1999) (“a plaintiff may not amend the complaint to
substitute a new plaintiff in order to cure a lack of jurisdiction, because a plaintiff may not create jurisdiction by
amendment when none exists”) (citation and quotation marks omitted). But the alleged defect here is GYPI’s
purported lack of statutory standing. That is not a question of jurisdictional significance. Even if it lacks statutory
standing, GYPI would likely be able to establish Article III standing based on the injury to Young, its sole officer,
director, and shareholder. See generally Hunt v. Washington State Apple Advert. Comm’n, 432 U.S. 333, 342 (1977)
(setting forth circumstances in which association has standing to sue on behalf of its members); cf. Planned
Parenthood Fed’n of Am., Inc. v. Ctr. for Med. Progress, 2016 WL 5946858, at *27 (N.D. Cal. Sept. 30, 2016)
(corporation had associational standing based on injury to its employees).

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2.

Statutory Damages

“[T]he owner of copyright or of any exclusive right in the work may obtain registration
of the copyright claim by delivering to the Copyright Office” a copy of the work, an application
for copyright registration, and the requisite fee. 17 U.S.C. § 408(a). A copyright owner may
generally correct information included in its original application if that information was incorrect
at the time of the registration. 37 C.F.R. § 201.5(b)(2)(i). A supplemental application must be
for “the same work” included in the original registration; a supplemental registration cannot be
used “to reflect changes in the content of the work.” § 201.5(b)(1), (2)(iii).
Although a copyright owner need not submit a registration in order to enjoy the
protections of the Copyright Act, registration expands the remedies available in the event of
infringement. Any copyright owner is “entitled to recover the actual damages suffered by him or
her as a result of the infringement, and any profits of the infringer that are attributable to the
infringement” which are not taken included in the damages calculation. 17 U.S.C. § 504(b). If
the infringed work was registered with the Copyright Office before the infringement occurred,
however, the copyright owner may elect to recover statutory damages in lieu of actual damages
and restitution, and may also recover attorney’s fees. See §§ 412, 504(c)(1), 505.
Zazzle argues that GYPI cannot obtain statutory damages or attorney’s fees with respect
to 24 of the Erickson paintings. It is undisputed that the original registrations stated that the
“nature of the work” was a photolithographic reproduction of a work of art. E.g., Doc. 49-6 at 1.
Young subsequently filed supplemental registrations which changed the nature of the work to
“mixed media.” E.g., id. at 51. The parties agree that the original registrations were defective
because the photolithographic reproductions were unoriginal and thus not eligible for copyright
protection. Zazzle argues that the supplemental registrations were also defective because they
were not directed at the same work as the original registrations.
The Court is not persuaded. The original registrations included copies of the Erickson
paintings. The supplemental registrations do not claim any new content; they simply correct the
description of the claimed works to indicate that Young holds copyrights not in the reproductions
but in the paintings themselves. Because the supplemental registrations were directed to the
same content as the original registrations, the “same work” requirement is satisfied. Cf. Schiffer
Publ’g, Ltd. v. Chronicle Books, LLC, 2005 WL 67077, at *3–4 (E.D. Pa. Jan. 11, 2005) (this
requirement was not satisfied where the original application only included text, but the
supplemental application included text and photographs).
Zazzle also argues that the supplemental registrations are invalid because none of the
information in the original registration was incorrect, and supplemental registrations are only
allowed where necessary to fix an error. Again, the Court disagrees. The original applications
incorrectly described Young’s copyright interest in the Erickson paintings. He owned the
copyrights to the paintings themselves, not to the photolithographic reproductions. The
supplemental registrations corrected this mistake.

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IV.

GYPI’S MOTION

Section 512(c) of the Digital Millennium Copyright Act (“DMCA”) creates a safe harbor
from copyright liability for service providers—defined as “provider[s] of online services or
network access, or the operator[s] of facilities therefor.” 17 U.S.C. §§ 512 (c), (k)(1)(B). In
general, service providers are not monetarily liable “by reason of . . . storage” of infringing
material at the direction of a user, as long as they have no specific knowledge that the material is
infringing, and as long as they take expeditious action to remove infringing content upon being
receiving a complaint. § 512(c)(1)(A). To be eligible for this safe harbor, a service provider
must show that it “did 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.”
§ 512(c)(1)(B). The service provider must also show that it has adopted and reasonably
implemented a policy that provides for the termination of repeat offenders, and that it
“accommodates and does not interfere with standard technical measures” used by copyright
owners to identify and protect their copyrights. § 512(i)(1).
In its answer, Zazzle asserted as an affirmative defense that it was protected by the safe
harbor set forth at § 512(c). Doc. 44, ¶ 97. GYPI moves for summary judgment that Zazzle’s
conduct was not protected by this safe harbor because: (1) Zazzle is not a service provider;
(2) Zazzle knew its services were being used to infringe GYPI’s copyrights; and (3) Zazzle
received a financial benefit from this infringing activity and had the right and ability to control it.
A.

Service Provider

To be eligible for § 512(c)’s safe harbor, a defendant must establish that it is a service
provider: “a provider of online services or network access, or the operator[s] of facilities
therefor.” 17 U.S.C. § 512(k)(1)(B). The definition of “service provider” is very broad; indeed,
it is difficult to imagine any online service that the definition would not encompass. Accord In
re Aimster Copyright Litig., 252 F. Supp. 2d 634, 658 (N.D. Ill. 2002). Websites that host useruploaded images and videos fall under this definition. See UMG Recordings, Inc. v. Shelter
Capital Partners LLC, 718 F.3d 1006, 1016 (9th Cir. 2013) (Veoh.com is a service provider for
purposes of § 512(c)); Viacom Int’l, Inc. v. YouTube, Inc., 676 F.3d 19, 39 (2d Cir. 2012)
(YouTube is a service provider for purposes of § 512(c)); Wolk v. Kodak Imaging Network, Inc.,
840 F. Supp. 2d 724, 744 (S.D.N.Y. 2012) (Photobucket is a service provider). So do
commercial websites that allow users to market and sell their products. See Corbis Corp. v.
Amazon.com, Inc., 351 F. Supp. 2d 1090, 1100 (W.D. Wash. 2004) (“Amazon operates web
sites, provides retail and third party selling services to Internet users, and maintains computers to
govern access to its web sites. These activities fall squarely within the broad scope of the
§ 512(k)(1)(B) definition of “service provider[.]”); Hendrickson v. eBay, Inc., 165 F. Supp. 2d
1082, 1088 (C.D. Cal. 2001) (“eBay clearly meets the DMCA’s broad definition of online
service provider”).
Zazzle alleges that it is a service provider because it “merely operates the Zazzle platform
to which users can upload designs at their direction for printing at the direction of these users on
products supplied by Zazzle.” Doc. 44, ¶ 18; see also ¶ 97. GYPI argues that Zazzle is not a
service provider because it goes beyond passively accepting and displaying user-submitted
images by directly manufacturing and selling physical products bearing the user-submitted
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images. The problem with GYPI’s argument is that it is wholly unmoored from the statutory
text. The statute defines “service provider” to include “a provider of online services.” Zazzle
operates a website that allows users to upload images to print on various consumer products.
Zazzle also sells products bearing images from Disney, Warner Bros., Marvel, and other popular
brands. These are unquestionably “online services.” It follows that Zazzle is a “service
provider” within the meaning of § 512(c).
GYPI relies on Agence France Presse v. Morel, 934 F. Supp. 2d 547 (S.D.N.Y. 2013) in
arguing otherwise. As GYPI itself recognizes, Morel is “a notable exception to most DMCA
cases” in treating the definition of “service provider” as a meaningful restriction on the
applicability of § 512(c)’s safe harbor. Doc. 50-1 at 18. Morel is an outlier for a reason: its
analysis is not persuasive. The court in Morel reasoned that Congress must have intended its
definition of service provider “to impose some limitation on the availability of the § 512(c) safe
harbors,” or it would not have provided such a definition at all. Morel, 934 F. Supp. 2d at 565.
That premise is faulty. Congress will often define a term because it wants the term to carry a
broader meaning than it would in ordinary parlance,4 or because it wants to emphasize that it is
rejecting an implied limitation that might otherwise be imported from another area of law.
Nothing about the definition of “service provider” in § 512(k)(1)(B) supports the notion that it
was intended as a limitation on § 512(c)’s safe harbor.
In any event, Morel is inapposite. Morell held that, to be entitled to the protections of
§ 512(c), a website must be “engaged in facilitating or supporting online access or the activities
of users of the internet.” Id. at 567 (emphasis added). The court suggested that a defendant
would not be eligible for the safe harbor if the evidence showed that the defendant itself
uploaded the content in question pursuant to a claimed license in that content. Id. at 567–68.
That is plainly not what happened here. There is no dispute that the GYPI images that appeared
on Zazzle where uploaded by third-party users.
GYPI also relies on Gardner v. CafePress Inc., 2014 WL 794216 (S.D. Cal. Feb. 26,
2014), which the Court also finds to be unpersuasive. In Gardner, the court reasoned that
although e-vendors like Amazon, eBay, and PhotoBucket are service providers,” CafePress—a
company with the same basic business model as Zazzle—was not, because it went “beyond
facilitating the sale of products between internet users by directly selling products to online
shoppers.” Id. at *5. The problem with this argument is that, as a logical matter, a company
does not cease to be “a provider of online services” because it offers offline services as well.
There is nothing in the statutory text or in Ninth Circuit precedent that suggests an entity must be
primarily engaged in providing online services to benefit from § 512(c)’s safe harbor. The Court
will not impose such a requirement by implication.
B.

Knowledge

A service provider is not eligible for § 512(c)’s safe harbor if it has “actual knowledge
that the material or an activity using the material on the system or network is infringing,” or, if
4

See, e.g., 42 U.S.C. § 9601(21) (for purposes of CERCLA, “[t]he term ‘person’ means an individual, firm,
corporation, association, partnership, consortium, joint venture, commercial entity, United States Government, State,
municipality, commission, political subdivision of a State, or any interstate body.”).

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“in the absence of such actual knowledge,” it is “aware of facts or circumstances from which
infringing activity is apparent.” 17 U.S.C. § 512(c)(1)(A) (i)–(ii). The constructive knowledge
clause has been construed so narrowly in the Ninth Circuit that it is questionable whether it
retains any independent meaning. See UMG Recordings, 718 F.3d at 1023–25 (9th Cir. 2013)
(notwithstanding constructive knowledge clause, service providers do not forfeit protection of
§ 512(c)’s safe harbor unless they have “specific knowledge of particular infringing activity” and
fail to take corrective action); Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1114 (9th Cir.
2007) (refusing to impute constructive knowledge of infringement to defendant who hosted
websites named “illegal.net” and “stolencelebritypics.com”). A service provider will not be
found to have knowledge of infringement unless (1) the copyright holder submits a complaint
that complies with the DMCA’s procedural requirements (a deficient notice cannot be used to
establish knowledge); or (2) a third-party submits a sufficiently specific complaint about
potential infringement. See UMG Recordings, 718 F.3d at 1025.
GYPI argues that Zazzle knew its users were uploading GYPI’s images because GYPI
complained about this infringement and provided Zazzle with a catalogue of its images to be
used to check for future incidents of infringement. Even if that is true, it does not render Zazzle
ineligible for the protection of § 512(c)’s safe harbor. GYPI offers no evidence that Zazzle had
“specific knowledge of particular infringing activity” and nonetheless failed to take corrective
action with respect to that activity.
C.

Financial Benefit with Ability to Control

To be eligible for § 512(c)’s safe harbor, a service provider must show that it “did 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.” 17 U.S.C. § 512(c)(1)(B).
Zazzle does not dispute that it received a financial benefit directly attributable to infringing
activity when it sold physical products bearing GYPI’s images. Doc. 69 at 26. The only
question is whether Zazzle had “the right and ability to control” this activity.
A service provider will not be found to have “the right and ability to control” infringing
activity simply because it has the general ability to remove infringing material and terminate the
accounts of repeat infringers. UMG Recordings, 718 F.3d at 1030. Nor does “limited
monitoring . . . for ‘apparent’ infringements” amount to such a right. Hendrickson, 165 F. Supp.
2d at 1094. Rather, the service provider will not be found to have the right and ability to control
the activities of its users unless it exerts “substantial influence” over these activities. UMG, 718
F.3d at 1030. Such influence will be found where the service provider plays an active role in
selecting, monitoring, or marketing user content. Id. (citing Viacom, 676 F.3d at 38); see also
Hendrickson, 165 F. Supp. 2d at 1030 (e-commerce website might be found to have “the right
and ability to control” the sale of infringing content if it was “actively involved in the listing,
bidding, sale and delivery of any item offered for sale on its website”); Corbis Corp., 351 F.
Supp. 2d at 1110 (e-commerce website might be found to have the right and ability to control if
it was “in possession of the products” sold by its users or if it “preview[ed] the products prior to
their listing . . . edit[ed] the product descriptions . . . suggest[ed] prices . . . or otherwise
involve[d] itself in the sale”); Gardner, 2014 WL 794216, at *9 (reasonable jury could find that
CafePress had right and ability to control where facts showed it was “actively involved in the
listing, sale, manufacture, and delivery of items offered for sale in its Marketplace”).
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GYPI argues that Zazzle had “the right and ability to control” the sale of infringing
products because “it is actively involved in selecting the products that are sold, pricing those
products, selling the products, manufacturing the products, inspecting the products, and finally
packaging and delivering the products.” Doc. 50-1 at 27. Zazzle does not dispute that it engages
in these activities. The Court concludes that Zazzle had the right and ability to control the types
of products it produced. Unlike eBay or Amazon, Zazzle’s role is not limited to facilitating the
sale of products owned and marketed by third parties. Zazzle creates the products. If Zazzle
lacks the right and ability to control the sale of products it creates, it is hard to imagine any
defendant that would have such a right.
Zazzle argues that it lacked the ability to control the sale of infringing products because,
in practice, “the production process was effectively automatic . . . after a product was ordered
and approved by Zazzle’s CMT [content management team].” Doc. 69 at 25. That is a nonsequitur. It doesn’t matter if Zazzle lacked the ability to control its production process after
CMT approved the product; presumably CMT had the authority to reject products that were
infringing. More to the point, even if the entire process were automatic, that would suggest at
most that Zazzle had chosen not to exercise its right and ability to reject infringing products, not
that it lacked the right or ability to do so. GYPI is entitled to summary judgment that Zazzle is
not protected under § 512(c) to the extent it manufactured and sold physical products bearing
infringing images. This ruling does not preclude Zazzle from invoking § 512(c) with respect to
images that were displayed on its website but never printed onto physical products. It is not clear
that Zazzle received a financial benefit from merely displaying images on its website, or that
Zazzle had the right or ability to control the types of images its users uploaded.
V.

CONCLUSION

Zazzle’s motion for summary judgment (Doc. 49) is GRANTED IN PART and DENIED
IN PART. GYPI lacks standing to enforce the Westmoreland copyrights; any infringement
claim based on these copyrights is dismissed. However, GYPI has standing to enforce the
Erickson copyrights. In attempting to enforce these copyrights, GYPI may elect to pursue
statutory damages and attorney’s fees.
GYPI’s motion for partial summary judgment (Doc. 50) is GRANTED IN PART and
DENIED IN PART. To the extent it manufactured and sold physical products bearing infringing
images, Zazzle is not protected under 17 U.S.C. § 512(c). But Zazzle may invoke this safe
harbor to the extent GYPI seeks to impose liability based solely on the unauthorized display of
copyrighted images on Zazzle’s website.

IT IS SO ORDERED.

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