Advanced Copyright Issues on the Internet - Fenwick & West LLP

imposed on LoopNet once it was notified that one of its users had posted an infringingphotograph on the LoopNet system. In an earlier proceeding, the court had entered a preliminaryinjunction directing LoopNet to “(1) remove from its web site all photographs for which itreceived notification of claimed infringement from CoStar; (2) notify the user who uploaded thephotograph of CoStar’s claim of the removal and that repeat acts of infringement might result inrestrictions on the user’s (or the brokerage firm’s) access to the web site; and (3) with regard toidentified brokers, require prima facie evidence of copyright ownership prior to posting aphotograph.” 1861 Dissatisfied with LoopNet’s performance, CoStar sought a number ofsubstantial modifications to the requirements imposed on LoopNet, including a requirement toobtain a hand-signed written declaration of copyright ownership prior to any posting and arequirement that any repeat infringer thereafter be prohibited from submitting any furtherphotographs. 1862The court refused to make the modifications requested by CoStar. In view of its rulingswith respect to the contributory infringement and safe harbor issues, the court concluded thatCoStar had not shown a sufficient likelihood of success to justify the enhancements to the orderit sought. 1863 The court did, however, rule that a probation/termination policy LoopNet had setup, in which brokers who posted infringing photographs could have their probationary statusremoved in three, six, or twelve month intervals, was inadequate in two respects: “First, allbrokers in an office in which any broker posted an allegedly infringing photograph after notice toany broker in that same office should be subject to the prima facie evidence requirement.” 1864Second, the court required that the status of “repeat infringer,” once achieved, remain during thependency of the proceedings, with no possibility of discontinuing such status after a timeinterval. 1865Subsequent to the district court’s rulings, the parties stipulated to the dismissal of allclaims except the district court’s summary judgment in favor of LoopNet on direct infringement,and CoStar appealed. 1866 The Fourth Circuit’s rulings with respect to the issue of directinfringement are discussed in Section II.A.4(i) above. With respect to the safe harbors, CoStarargued on appeal that Congress intended the DMCA safe harbors to supplant the common lawimmunity of the Netcom case, and LoopNet could therefore rely solely on the safe harbors forimmunity. The Fourth Circuit rejected this argument, noting that the statute expressly states inSection 512(l) that the failure to qualify for limitation of liability under the safe harbors does notbear adversely upon the consideration of other defenses, including a defense that conduct simplydoes not constitute a prima facie case of infringement. 1867 The court also rejected CoStar’sargument that, because Congress codified Netcom in the DMCA, it can be only to the DMCA1861 Id. at 715.1862 Id. at 715-16.1863 Id. at 716.1864 Id.1865 Id. at 717.1866 CoStar Groups, Inc. v. LoopNet, Inc., 373 F.3d 544 (4 th Cir. 2004).1867 Id. at 552.- 404 -