U.S. District Court declines to hold CafePress an online service provider entitled to protection under the DMCA safe harbor

By Béatrice Martinet Farano

On 16 March 2014, the U.S. District Court for the Southern District of California issued an interesting decision against CafePress – a marketplace selling products bearing user-uploaded content – which could re-launch the debate over the definition of “service provider” under the DMCA.

In this case, Gardner, a wildlife photographer, decided to sue CafePress and internet user Beverly Teall on the ground that Teall had sold through CafePress a product displaying one of Gardner’s copyrighted image. CafePress moved for summary judgment on the complaint, arguing it was entitled to immunity under the DMCA safe harbor.

Although U.S. courts have adopted a broad definition of service providers under the DMCA (see e.g UMG Records v. Veoh, TTLF newsletter No. 2/2013 p. 8 and YouTube v. Viacom, TTLF Newsletter No. 2/2012 p.5), the Court in this case observed that in addition to allowing its users to set up online shops and selling products bearing content uploaded by end users, CafePress allowed its users to make their product eligible for sale via CafePress’ marketplace, which CafePress ultimately curated and managed.

The Court also observed that CafePress was making these products available on Amazon and eBay, and selecting and fixing the price for such products.

The Court concluded that CafePress’ exclusive discretion to determine which user-uploaded images would be sold on its online marketplace, along with its ability to modify the design and set the retail prices for such products went beyond “storage” within the meaning of the DMCA.

As a result, the Court declines to find as a matter of law that CafePress was a service provider entitled to protection under the DMCA.

The Court finally remanded this case on the issue of whether, by stripping out metadata from these photos – an automated process which happened when users upload their content in connection with their proposed CafePress products – CafePress had interfered with a technical standard provision, thereby losing protection under the DMCA safe harbor.

Assuming the parties do not settle this matter before trial, the decision on the merit should bring interesting developments on these two issues.