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Ellison v. Robertson, 357 F.3d 1072, 69 U.S.P.Q.2d (BNA) 1616 (9th Cir. 2004) (full-text).

Factual Background[]

Science fiction author Harlan Ellison filed suit complaining that unauthorized digital copies of his novels were posted to “alt.binaries.e-book” — a newsgroup that AOL made available to its subscribers. The copies were not made by AOL itself; they were made by a fellow named Stephen Robertson, who Ellison also sued, for direct infringement, and who settled with Ellison almost immediately for $3,650. Ellison sued AOL for contributory and vicarious copyright infringement.

Trial Court Proceedings[]

Earlier in the case, District Judge Florence-Marie Cooper dismissed Ellison’s lawsuit on the grounds that AOL was protected from liability by the “safe harbor” provisions of the Digital Millennium Copyright Act. The issue of whether AOL is protected by the DMCA’s “safe harbor” was — and remains — a critical issue in the case, because even though Judge Cooper ruled that AOL could not be held liable for vicarious infringement, she also ruled that but for the DMCAsafe harbor,” AOL might be liable for contributory infringement.

Appellate Court Proceedings[]

In an opinion by Judge Harry Pregerson, the Court of Appeals agreed that AOL could not be found liable for copyright infringement. There was no evidence that AOL attracted or retained subscriptions as a result of infringing copies of Ellison’s novels being available to subscribers, nor was there evidence that AOL lost subscribers when it eventually blocked access to that newsgroup. As a result, the appellate court agreed with AOL (and District Judge Cooper) that “no jury could reasonably conclude that AOL received a direct financial benefit from providing access to the infringing material” — an essential element for finding vicarious copyright liability.

On the other hand, the appellate court agreed with Ellison (and again with Judge Cooper) that AOL might be liable for contributory copyright infringement. This was so, because a jury could find that AOL “had reason to know” of potentially infringing activity in the “alt.binaries.e-book” newsgroup, and because a jury could find that AOL contributed to that activity by storing copies of Ellison’s books in the newsgroups and making them available to subscribers.

Because a jury could find AOL liable for contributory copyright infringement, the question of whether AOL is protected by the “safe harbor” defense is critical. That question raises two issues: (1) whether AOL had “reasonably implemented” a policy against repeat infringers; and (2) whether copies of Ellison’s books in the newsgroup were maintained by AOL for no longer than was necessary. AOL actually maintained copies of Ellison’s books for 14 days. When the case was before Judge Cooper, the summary judgment argument focused on whether 14 days was longer than necessary. Judge Cooper held it was not, which is why she held that AOL was protected by the “safe harbor.”

On appeal, Judge Pregerson agreed that 14 days was not longer than necessary. But he ruled that a jury could reasonably find that AOL had not reasonably implemented a policy against repeat infringers. And that is why the Court of Appeals reversed the summary judgment AOL had won, and remanded the case for trial.

AOL did have a policy against repeat infringers. The reason there was a jury-worthy dispute about whether it had “reasonably implemented” that policy was surprisingly fact-specific — and, in fact, quite surprising. As part of its infringement policy, AOL maintained an email address to which copyright owners could send infringement complaints. In the beginning, that address was Later, in the fall of 1999, AOL changed the copyright-complaint address to But it failed to notify the Copyright Office of the change until April 2000. Worse yet, complaints sent to the old email address were not forwarded to the new address, were not received by anyone at AOL, and were not bounced back to those who had sent them. This mistake wasn’t simply academic; Ellison’s own complaint was never received by AOL.

According to Judge Pregerson, “AOL should have closed the old e-mail account or forwarded the e-mails sent to the old account to the new one. Instead, AOL allowed notices of potential copyright infringement to fall into a vacuum and to go unheeded; that fact is sufficient for a reasonable jury to conclude that AOL had not reasonably implemented its policy against repeat infringers.”

If, at trial, the jury does decide that AOL did not reasonably implement its policy against infringers, AOL will not be protected by the “safe harbor,” and the jury will have to decide whether AOL is liable for contributory copyright infringement. If, however, the jury decides that despite the email address snafu, AOL did reasonably implement its infringement policy, then AOL is protected by the “safe harbor,” and AOL will not be liable.