Flava Works, Inc. v. Gunter et al

Filing 77

MEMORANDUM Opinion Signed by the Honorable John F. Grady on 7/27/2011. Mailed notice(cdh, )

10-6517.112-JCD

July 27, 2011

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
FLAVA WORKS, INC.,
Plaintiff,
v.
MARQUES RONDALE GUNTER d/b/a
myVidster.com; SALSAINDY, LLC;
VOXEL DOT NET, INC., and
JOHN DOES 1-26,
Defendants.

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No. 10 C 6517

MEMORANDUM OPINION
Plaintiff, Flava Works, Inc. (“Flava”), is a company that
produces and distributes adult entertainment products, including
DVDs and streaming video.

Flava brought this action against

defendant Marques Rondale Gunter, who created, owns, and operates
a

website

called

myVidster.com

(“myVidster”),

and

defendant

SalsaIndy, LLC, an entity controlled by Gunter that funded the
start-up of myVidster.1
collectively

as

(We will refer to Gunter and SalsaIndy

“defendants.”)

Flava

alleges

that

infringes its registered copyrights and trademarks.

myVidster
The Third

1/
Flava also sued Voxel Dot Net, Inc. (“Voxel”), a company that is
alleged to have provided web-hosting services to myVidster, and John Does 1-26,
who are registered users of myVidster. Voxel has provided plaintiff with a sworn
declaration that it no longer hosts myVidster, and plaintiff has withdrawn its
motion for a preliminary injunction as to Voxel.

- 2 -

Amended

Complaint

contains

several

claims

for

copyright

and

trademark infringement.
Before the court is plaintiff’s motion for a preliminary
injunction

“to

prevent

defendants

from

enabling,”

myVidster, the infringement of plaintiff’s works.
1.)2

through

(Pl.’s Mem. at

In its motion, Flava contends that it has a likelihood of

succeeding on its contributory and vicarious copyright infringement
claims.3

On May 18 and June 9, 2011, we conducted a hearing on

plaintiff’s motion. The court heard testimony from two witnesses-Gunter and Philip Bleicher, plaintiff’s CEO.

We have considered

the materials and evidence submitted by the parties4 and conclude
that this is a proper case for issuance of a preliminary injunction
pursuant to Federal Rule of Civil Procedure 65.

2/

The specific relief sought by plaintiff is discussed at the end of this

opinion.
3/
In conclusory fashion, plaintiff asserts in its memorandum in support
of its motion that it is likely to succeed on its trademark infringement claims.
The trademark-infringement argument is waived because it is undeveloped. At the
injunction hearing, plaintiff briefly mentioned its trademark claims in closing
argument, and we indicated that we understand the motion to be limited to the
issue of copyright infringement. Plaintiff also referred in closing argument to
its claims of direct copyright infringement and inducement of copyright
infringement, but its motion is not based on those claims.
Rather, plaintiff
states that its motion is “made on the grounds that Plaintiff is likely to
succeed on the merits of its claims for contributory and vicarious copyright
infringement.” (Pl.’s Mot. at 2.)
4/
We have not, however, considered Phillip Bleicher’s affidavit.
Defendants previously sought to have portions of the affidavit stricken.
We
denied the motion, explaining that it was unnecessary; plaintiff did not need to
use the affidavit because it was anticipated that Mr. Bleicher would testify at
the injunction hearing. He did testify at the hearing, so we have considered his
testimony instead of his affidavit.

- 3 -

Facts
Gunter owns and operates myVidster, which he calls a “social
video bookmarking” website. MyVidster is Gunter’s solo project; he
is its only programmer.

(Tr. of June 9, 2011 Hr’g (June Tr.) 7.)

On myVidster, users can “bookmark” video files.
refer to this action as “posting.”)

(The parties also

There are two types of

myVidster users: (1) general users, whose memberships are free; and
(2) “pro” users, who pay a small monthly ($3 or $5) or yearly ($40)
fee for the additional benefit of being able to create and save
backup copies of the videos that they post to myVidster. MyVidster
has about 80,000 general users and 25 to 30 pro users.

Its primary

source of revenue is advertising fees; advertisers pay for the
number of “impressions” and/or “clicks” that their advertisements
receive.
When a user bookmarks or posts a video on myVidster, he
essentially directs myVidster to “embed” a video clip on its site.
When a user submits a video to be posted on myVidster, myVidster
“crawls” the website that hosts the video, gets information about
that video file, and creates a thumbnail image of the video if one
is not already available.5

MyVidster then “embeds” the video on

its site, allowing it to be displayed there.

MyVidster does not

simply link to video files displayed on another site; it embeds the
files on its own site at the direction of users.
5/

In other words,

The thumbnail image is hosted on myVidster’s servers.

(June Tr. 66.)

- 4 -

when a visitor to myVidster clicks on a video that is posted there,
the video plays directly on myVidster, and the visitor remains on
the myVidster site; he or she is not taken to the site that hosts
the video file.
Some of the videos that appear on myVidster are hosted on
myVidster’s own servers--the “backup copy” videos--but the vast
majority of them are hosted on third-party websites.
displays

information

about

its

embedded

videos,

MyVidster

such

as

the

username of the user who posted the video, the date the user posted
the video, the “source link,” and the “embed” code.

The “source

link” displays the URL (uniform resource locator, a unique address
for a file accessible on the internet) where the user bookmarked
the video.

In cases where a myVidster user bookmarks another

user’s bookmark, the “source code” will be a myVidster URL even
though the original file of the video may be hosted elsewhere.

As

for the “embed” code, it enables the display of the video and
signifies its “true source”--the site where the video is hosted.
(June Tr. 16.)

Some videos that appear on myVidster have an

associated “download” button; by clicking the button, users can
download a copy of the video to their own computer or storage
device.
When a user posts a video, he can “tag” the video with
keywords.

MyVidster indexes those tags, enabling users to find

videos through a keyword search. MyVidster filters videos into two

- 5 -

categories--adult and non-adult.

(More than half of the videos

that appear on myVidster contain adult pornography.)

In order to

view adult videos, a website visitor must turn off the “family
filter.”

Besides the adult/non-adult filter, myVidster does not

have other filters in place for content posted on the site.
Phillip Bleicher is Flava’s owner, CEO, and webmaster.

He

describes Flava as a “gay ethnic adult company” that produces
internet website content, streaming video, DVDs, magazines, and
photographs.

(Tr. of May 18, 2011 Hr’g (“May Tr.”) 13.)

He first

became aware of myVidster when some of Flava’s customers complained
about having to pay for its videos when they could get them for
free on myVidster.

Bleicher then visited myVidster, used its

search

search

function

“Flavamen”
copyrighted
permission).

to

and

for

“CocoDorm,”

videos

displayed

and
on

Flava’s
found

trademarks,
hundreds

myVidster

such

as

of

Flava’s

(without

Flava’s

Bleicher noted that myVidster provides space for

comments on videos and that in some of those comments, myVidster
users

inquired

about

obtaining

more

of

Flava’s

requested that other users post more Flava videos.

content

and

Bleicher could

see which users had posted Flava’s videos and could also see that
for some of the videos, the “source link” and/or “embed code” was
myVidster itself.

Bleicher and his staff took screenshots of many

different copyrighted Flava videos as they were displayed on

- 6 -

myVidster at various times in 2010 and 2011, and plaintiff has
submitted copies of several of those screenshots.
On

May

12,

2010,

Flava

sent Gunter

a

“takedown

notice”

pursuant to § 512 of the Digital Millennium Copyright Act (“DMCA”),
17 U.S.C. § 512. Flava sent Gunter additional DMCA notices on July
20, August 21, September 22, December 2, December 5, and December
9, 2010.6

The notices listed specific files and thumbnail images

that Flava contended were infringing its copyrights and demanded
immediate removal from myVidster.

Most of the DMCA notices also

specified myVidster users whom Bleicher had identified as “repeat
infringers”--i.e., users who have repeatedly posted videos that
infringe Flava’s copyrights.
Bleicher testified that after he sent Gunter the DMCA notices,
Gunter “[s]ometimes would act upon them and remove the content,
some of it; sometimes he would remove just the links but not the
videos or the embedded thumbnails; and sometimes he leaves some of
the content up.”

(May Tr. 25.)

Bleicher elaborated:

For the most part, [Gunter] left the thumbnails up quite
often.
I kept having to remind him that all of the
content that I had identified needs to be removed.
Sometimes he removes the thumbnails still, sometimes he
doesn’t.
Sometimes he removes the links we identify,
sometimes he doesn’t. Sometimes, you know, he leaves--he
keeps pointing out that these files are elsewhere, but
they are clearly on myVidster.

6/

In addition to these notices that are referred to in the complaint and
were sent via U.S. mail and e-mail, there was at least one additional DMCA notice
that was sent by e-mail (and perhaps U.S. mail as well; it is unclear) on October
18, 2010. In 2011, plaintiff also sent defendants a number of DMCA notices.

- 7 -

. . .
Q. Has he ever removed any of the thumbnails?
A. He has removed some of them, but it’s a painstaking
process that we keep identifying when we give him links
to remove and then he doesn’t remove all of the links or
doesn’t remove all of the thumbnails or the videos.
Q.
So some of the thumbnails are still up [on
myVidster]?
A. Yes, they are.
(May Tr. 26-27.)

The amount of time it took for Gunter to remove

the infringing content varied, but it was “more than a few days,”
according to Bleicher.

(May Tr. 25-26.)

(Gunter, on the other

hand, testified that he removed material identified in the notices
within twenty-four hours of receipt of the notice.)7

Moreover,

although Gunter was in frequent contact with Bleicher regarding the
repeat infringers that Flava identified, he did not disable any of
those users’ accounts:
Q. Has [Gunter] ever called you and explained to you the
results of his investigation?
7/
Defendants’ Hearing Exhibit 4 is a chart that Gunter created that
purports to show every embedded video containing plaintiff’s content that Gunter
has removed from myVidster since plaintiff began sending DMCA notices. The chart
includes the date that the DMCA notice for the particular video was received as
well as the date Gunter removed the video. (June Tr. 21-25.) We noted during
the hearing that plaintiff’s counsel could not possibly conduct effective crossexamination regarding the chart because defendants’ counsel refused to tender it
to him until the moment it was given to Gunter on the stand. Moreover, we have
doubts about the reliability of the chart.
Although Gunter testified that he
created it from a “data dump from myVidster’s database,” he did not provide any
more detail about how it was prepared or explain how the information he “dumped”
was originally recorded. Moreover, the e-mail exchanges between Flava and Gunter
show that Gunter did not always fully comply with the DMCA notices; even when he
represented that certain content had been removed, it was not always fully
removed, and Flava was forced to follow up with Gunter in an effort to have the
entire content related to a particular file removed. In any event, although it
does appear that it was sometimes like pulling teeth to obtain full compliance
from Gunter, as discussed infra, the crux of the problem here is not so much the
removal of the infringing videos; it is Gunter’s attitude toward copyright
protection and his related refusal to adopt measures to prevent or reduce
copyright infringement on myVidster as well as to adopt and implement an
appropriate policy regarding repeat infringers.

- 8 -

A. Yes, he has. He’s contacted me by email or phone and
explained on numerous occasions that he’s just a passthrough and that he has no, he has no part into [sic]
this copyright infringement, and tries to wiggle his way
out and tell us where to go to remove the content. But
we continuously find that the content is still hosted on
myVidster.
Q. Has he ever explained to you why he has not removed
repeat infringers?
A. I don’t believe that he has. This, just beyond the
fact that he thinks that he doesn’t have to remove the
repeat infringers because he doesn’t believe that they
are repeat infringers, I guess.
(May Tr. 38.)
removed

some

Bleicher also testified that even after Gunter
of

Flava’s

videos

from

myVidster,

those

videos

resurfaced there because they were re-posted by another user.
According to Bleicher, the availability of Flava’s videos on
myVidster is causing Flava to lose sales.

Flava’s sales are down

thirty percent from last year, which equates to a estimated loss of
between $100,000 and $200,000, while the number of myVidster users
has grown to over 70,000 since the site was created a few years
ago. In addition, myVidster grew from 67,000 visits per month from
October 2009 to about 460,000 visits in April 2010.

Bleicher

attributes at least some of Flava’s lost sales to myVidster because
hundreds of Flava’s videos have appeared (and still appear) on
myVidster.
Gunter testified that he has designed myVidster to filter
videos only for adult content (and not to block adult videos, just
to classify them).

He is capable of designing myVidster so that it

would block the posting of videos with certain associated tag

- 9 -

words, such as plaintiff’s trademarks, but claims that he has not
implemented such filters because of a “false positives” problem. He
explained his position as follows:
Q. [Y]ou could filter out words like Raw Rods or
CocoDorm, correct?
A. Correct.
Q.
And that would prevent a user from posting any
videos with the tag names Flava Works or any other
trademark[ed] names on myVidster, correct?
A. I could design myVidster to block the bookmarking
based on tag words, yes.
Q. Is there any reason why you haven’t done that?
A. The main reason is it’s called false positives where
if you just try to block a bookmark--when somebody is
linking a video from another web site and you have an
arbitrary set of key words to block, let’s just say
CocoDorm, one example that would come to mind to be a
false flag is let’s just say an actor from CocoDorm was
interviewed, and the video was posted on YouTube, and
that key word was CocoDorm because that person is an
actor of CocoDorm, and that interview video would not be
posted, it would be blocked.
So you have an issue of false positives, where
okay, if it is material owned by Flava Works, it would
block it in that case, but it would also block other
videos that would not be owned by the owner.
(May Tr. 103-04.)

When asked how difficult it would be to create

code or find a script for myVidster filters that would minimize
the number of false positives, Gunter stated that he did not know
of any code available on the internet for free that would minimize
false positives, but acknowledged that he has not searched for
code available for purchase or tried to write such a code himself.
When asked by plaintiff’s counsel about myVidster’s repeatinfringer policy, Gunter testified as follows:
Q. Let’s go to your repeat infringer policy. I asked
you one time how many times somebody would have to post

- 10 -

copyrighted materials before you considered them a repeat
infringer, and you would take it on a case-by-case basis,
correct?
A. Correct.
Q. And it would probably be two. If they, if somebody
posted copyright materials at least two times, you would
consider them a repeat infringer?
A. What is your definition of post?
Q. Bookmark, post.
A. When it comes to myVidster’s repeat infringer policy,
I cannot, I cannot determine whether or not the user who
links bookmarks of video from a third party web site to
myVidster, I have no idea if they know that them linking
that video or submitting that link to myVidster, if they
have knowledge of the copyright status I guess whether or
not it’s infringing or not.
So when it comes to the
subject of them posting links to other web sites to
myVidster, I do not, I would not, I cannot determine
whether or not they are an infringer.
I do not know
what’s in their head, I don’t know whether or not, if
they see a video and they say, okay, I’m going to save
this, I’m going to link this link to myVidster, whether
or not that link is infringing or not.
Q.
So if a person who has been accused of repeat
infringing reposts a video from a site that’s publicly
accessible to members of the public, you wouldn’t
consider that person a repeat infringer, that’s where
your repeat infringer investigation would end, isn’t that
correct?
A. Correct. When a user goes to a publicly available-web site, are they supposed to know whether or not that
is infringing material? And in my humble opinion, it
would be the video--the person who uploaded and the video
host that is [sic] the ones that are the gatekeepers and
the determination on whether or not that video, that
material is infringement or not.
Q. So if I--If a user, if a user were to find a fulllength film of Star Trek, which is copyrighted, on
pornhub and which is accessible to everybody of the
members of the public, if that user were to repost it on
[myVidster] and you looked into that, because the video
was originally found on a publicly-accessible [site], you
wouldn’t consider that [a] repeat infringer?
A. Correct.
. . .
A. . . . [M]y repeat infringer policy is I’m looking for
users that are trying to use myVidster as a ways and

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means to distribute content that may not be publicly
available.
. . .
Q.
So if somebody alerts you that there’s a repeat
infringer and they ask you to investigate and your
investigation does not lead to a password-protected web
site or a single link that is private, your investigation
ends there?
A. Yes.
Q. But isn’t most of the internet public?
A. A lot of the internet is public, yes.
Q. Wouldn’t you say like just about more than 90 percent
is public?
A. Possibly.
Q. How could you ever have a situation where you would
have a repeat infringer if you just limit it to a
password-protected site?
A. I came across one that I sent a warning to.
Q.
And I think you’ve told me that in the time that
you’ve had myVidster, you’ve only had one repeat
infringer that you investigated?
A. Correct.
Q. And what happened to the other 28 or 27 or 29 [repeat
infringers] that Mr. Bleicher informed you of?
A. I did not consider them repeat infringers.
Q. And your reasoning was?
A. As I stated before, they were not using myVidster as
a ways and means to distribute content that is not
publicly available.
They did not fall under my
definition of repeat infringers, so I did not, I did not
pursue them.
Q. What about the fact that the videos are copyrighted
and have been on myVidster before?
A. All links reported on the Flava Works DMCA notices
have been removed expeditiously.
. . .
Q. Why don’t you consider someone a repeat infringer
when they continue to post copyrighted materials on your
web site?
A.
They do not fall under my definition as repeat
infringers. They may fall under yours or Phillip’s, but
they do not fall under mine.
Q. What is your definition, what is your understanding
of the law in terms of a repeat infringer?
A. Should I repeat? Repeat infringers, my policy on
repeat infringers are those who are using myVidster as a
ways and means to distribute content that is not publicly
available.

- 12 -

(May Tr. 111-12, 114-116, 119-20.)
Gunter has not implemented any mechanism on myVidster that
would prevent a particular video from being posted on the site more
than once, although he conceded that it would not be difficult to
do so.

(May Tr. 131.)

Gunter also has not implemented any

mechanism on the myVidster site for users to report videos that
violate copyright; the option to “flag” a video for “copyright
complaint” merely refers users to the myVidster “copyright” page,
which requires a complainant to send a written DMCA notice to
Gunter.

(May Tr. 120.)

Preliminary Injunction Standards
The Copyright Act authorizes injunctive relief on such terms
as the court deems reasonable “to prevent or restrain infringement
of a copyright.”

17 U.S.C. § 502(a).

To determine whether a

preliminary injunction is warranted, we engage in a two-phase
analysis:
As a threshold matter, a party seeking a preliminary
injunction must demonstrate (1) some likelihood of
succeeding on the merits, and (2) that it has “no
adequate remedy at law” and will suffer “irreparable
harm” if preliminary relief is denied. If the moving
party cannot establish either of these prerequisites, a
court’s inquiry is over and the injunction must be
denied.
If, however, the moving party clears both
thresholds, the court must then consider: (3) the
irreparable harm the non-moving party will suffer if
preliminary relief is granted, balancing that harm
against the irreparable harm to the moving party if
relief is denied; and (4) the public interest, meaning
the consequences of granting or denying the injunction to
non-parties.

- 13 -

Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 11-12 (7th Cir.
1992) (citing Lawson Prods., Inc. v. Avnet, Inc., 782 F.2d 1429
(7th Cir. 1986) and Roland Mach. Co. v. Dresser Indus., 749 F.2d
380 (7th Cir. 1984)). “Irreparable injury may normally be presumed
from a showing of copyright infringement.”

Atari, Inc. v. North

Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 620 (7th Cir.
1982), superseded by statute on other grounds as recognized in
Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423 (7th Cir.
1985).

As for the third factor, “courts typically fail to invoke

this standard in copyright cases” because if it were applicable, “a
knowing infringer would be permitted to construct its business
around its infringement.”

4 Melville B. Nimmer & David Nimmer,

Nimmer on Copyright § 14.06[A][2][c], at 14-138 (2009) (quoting
Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240,
1255 (3d Cir. 1983) and citing, inter alia, Horn Abbot Ltd. v.
Sarsaparilla Ltd., 601 F. Supp. 360, 369-70 (N.D. Ill. 1984)).
Similarly, the fourth factor requires little discussion because
there is a strong public policy interest in protecting copyrights.
See Erickson v. Trinity Theatre, Inc., 13 F.3d 1061, 1066 (7th Cir.
1994) (quoting Apple Computer, 714 F.2d at 1255 (“It is virtually
axiomatic that the public interest can only be served by upholding
copyright protections . . . .”)). Thus, as a practical matter, the
analysis boils down to a single factor--the plaintiff’s likelihood

- 14 -

of success.

Flava has demonstrated a likelihood of success on its

claim for contributory copyright infringement.8
Contributory Copyright Infringement
“[O]ne

who,

with

knowledge

of

the

infringing

activity,

induces, causes or materially contributes to the infringing conduct
of another, may be held liable as a ‘contributory’ infringer.”
Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d
1159, 1162 (2d Cir. 1971); see also Metro-Goldwyn-Mayer Studios
Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005).

To establish

contributory copyright infringement, plaintiff must show: (1) a
third party directly infringed its work; (2) the defendant knew of
the infringement; and (3) the defendant materially contributed to
the infringement. Monotype Imaging, Inc. v. Bitstream Inc., 376 F.
Supp. 2d 877, 883 (N.D. Ill. 2005).
Although defendants do not concede the first element, it
cannot be seriously disputed that third parties have directly
infringed

Flava’s

works

by

posting

its

videos

on

myVidster.

Plaintiff has submitted evidence that it owns the copyrights for
works that have been copied and distributed by myVidster users,
without

plaintiff’s

authorization.

There

is

uncontradicted

evidence that myVidster users have created backup copies of Flava’s
works, which are stored on myVidster’s servers.

There is also

8/
Because plaintiff has satisfied the standard for a preliminary
injunction with regard to its claim for contributory copyright infringement, we
need not address its claim for vicarious copyright infringement.

- 15 -

uncontradicted

evidence

(actually,

defendants’

own

evidence

demonstrates) that myVidster users have caused Flava’s works to be
displayed on myVidster without Flava’s permission.
We also have no doubt that defendants knew or should have
known of the infringement occurring on myVidster.

As noted in our

previous opinion, knowledge, for purposes of contributory copyright
infringement, encompasses both actual and constructive knowledge.
In re Aimster Copyright Litig., 334 F.3d 643, 650 (7th Cir. 2003)
(“Willful blindness is knowledge, in copyright law (where indeed it
may be enough that the defendant should have known of the direct
infringement) . . . .”).

“The knowledge element for contributory

copyright infringement is met in those cases where a party has been
notified of specific infringing uses of its technology and fails to
act to prevent future such infringing uses, or willfully blinds
itself to such infringing uses.”

Monotype, 376 F. Supp. 2d at 886

(citing Aimster, 334 F.3d at 650, and Fonovisa, Inc. v. Cherry
Auction, Inc., 76 F.3d 259, 264 (9th Cir. 1996)).

It is undisputed

that over a period of several months, plaintiff sent defendants at
least seven DMCA notices that identified specific infringing files
and users as well as specific repeat infringers.
Gunter received these notices and responded to them.

Furthermore,
Gunter and

Bleicher spoke on the telephone and exchanged several e-mails in
which Bleicher informed Gunter of ongoing problems with plaintiff’s
works being posted on myVidster.

- 16 -

The e-mail exchanges (several of which were submitted by
defendants) show that Gunter, upon receiving Flava’s DMCA notices,
was not wholly cooperative.

In a May 2010 exchange between Gunter

and Jesse Lanshe (a representative of the plaintiff) that began
with

a

DMCA

notice,

responsibility.

Gunter’s

initial

response

was

to

evade

Instead of addressing whether he would take down

the videos appearing on myVidster, Gunter told Lanshe: “I . . .
would like to inform you that the videos listed are not hosted by
myVidster.
recommend

What you are seeing are video embeds. . . . I would
you contact

the video

host

that

is

rehosting

your

content. When they remove the content from their servers the video
embeds will no longer work.

If i [sic] removed the embeds from

user’s [sic] collection they can easily revised [sic] the source
site and embed the video again.”9

Only later in the e-mail

exchange did Gunter inform Lanshe that he did “not have an issue
removing the video embeds/links.”

(Defs.’ Hr’g Ex. 10.)

Bleicher

also testified, and some of the e-mail exchanges show, that when
notified of infringing material, Gunter sometimes removed only part
of the infringing material. He removed the remaining material (for
example, infringing thumbnail images, or various stray files) only
when prompted a second or third time to remove it.
Moreover,

Gunter

has

failed

to

implement

filters

or

identifiers to prevent repeated infringing conduct and failed to
9/

This statement also demonstrates Gunter’s failure to act to prevent
future infringement on myVidster.

- 17 -

take action against, or properly investigate and/or disable the
accounts of, myVidster users whom plaintiff identified as repeat
infringers.

Gunter’s “repeat infringer” policy is in fact no

policy at all, at least with respect to copyright infringement. In
an e-mail to Bleicher on October 19, 2010 that is part of an
exchange concerning repeat infringement, Gunter stated:
Here is the policy that I use when addressing [repeat
infringers]:
A user who uses myVidster to publish links/embeds of
videos that would otherwise not be accessible by the
public. For example if a user is uploading videos to
file server and using myVidster as a way and means to
distribute the content.
If a user is found in violation of this, the links/embeds
will be removed and a warning email is sent to the user.
If the user repeats this violation then their account
will be deleted.
Being that most of the content are embeds which are
hosted on external websites, I would suggest contacting
the websites that are hosting your content to help stop
the future bookmarking of it on myVidster.
(Defs.’ Hr’g Ex. 9.)
blindness.”

This perspective is the epitome of “willful

Gunter is not concerned about copyright infringement;

he simply examines whether the material posted by the user is
“otherwise not [] accessible by the public,” i.e., behind a paywall
or otherwise private website.

In the e-mail, he again pointed a

finger at other websites while failing to acknowledge that his own
website

is

perpetuating

copyright

infringement.

When

Gunter

testified in the preliminary injunction hearing, his cavalier
attitude had not changed.

His definition of “repeat infringer”

does not encompass copyright law.

There is ample evidence that

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after having received the DMCA notices from plaintiff, defendants
failed to act to prevent future similar infringing conduct.
There is also evidence that defendants materially contributed
to the infringing activity of myVidster’s users.

Gunter provides

the myVidster site, which enables the display of embedded videos
and thus the infringement.

Gunter also makes video storage (which

involves making a copy of a video) available for a fee.

When

Gunter first introduced the “video backup” service in 2009, he
provided it free of charge for a limited time, and he discussed it
on his myVidster blog and listed reasons for using the service. One
of the reasons, he stated, is “[n]ever fearing that your online
videos will get removed by the video host.”

(Pl.’s Hr’g Ex. 6.)10

Videos are often removed by hosts because the copyright owner
asserts a copyright claim and requests takedown.

The backup

function enables users to keep an infringing copy of a video that

10/
Gunter attempted to explain away this subtle encouragement of copyright
infringement by stating that it is “two years old” and that myVidster has
“evolved.” (May Tr. 124-25.) The promotional commentary, however, still appears
on his myVidster blog as a reason for using the backup service.
Another way in which Gunter subtly encourages copyright infringement
relates to the videos that he marked as his “favorites” on myVidster. Plaintiff’s
Hearing Exhibit 8 is a screenshot of three videos that Gunter has labeled on
myVidster as “Marques’ Favorites >> Full Movies.” The three videos are labeled
“Star Trek,” “Crank 2,” and “Hancock,” which are all titles of major motion
pictures.
Gunter was asked about the embedded “Star Trek” video at the
preliminary injunction hearing. He admitted that he had not considered whether
he had been given permission by the copyright owner to post that video on
myVidster. (May Tr. 107-09.) Gunter also conceded at the hearing that he could
“make an assumption that” a “feature, full-length film” would be copyrighted, but
acknowledged that at his deposition, he had refused to admit that he was able to
make such an assumption and had instead suggested that only a copyright owner
could assess whether a film was copyrighted. (May Tr. 105-06.) When asked by
his own counsel on June 9, however, whether he “could tell” at the time he posted
the videos “whether or not the videos . . . were infringing someone else’s
copyrights,” Gunter replied, “I would not have an idea.” (June Tr. 17.)

- 19 -

has become otherwise unavailable on the original host site due to
a copyright claim.

In addition, the “download” button, where

available on myVidster, enables a user to download from the source
site a copy of an embedded video.
MyVidster also explicitly encourages sharing but fails to
include any warnings about copyright infringement.

Under the

myVidster tab marked “invite,” the question “Why should I invite my
friends?” appears with the following answer: “While bookmarking
videos can be a fun and addictive activity, it is more enjoyable in
the company of like minded friends.

The form below will send

invites to your friends telling them about myVidster and you will
be given the option to provide a link to your video collection.”
(Third Am. Compl. Ex. E.)

MyVidster does not warn its users to

avoid posting videos that infringe copyright.

In fact, its very

brief terms of service page does not mention copyright at all.
Rather,

the

terms

reflect

Gunter’s

indifference

to

copyright

protection:
Do not bookmark any video content that contains child
pornography, promotes racism/hate or in violation of US
law.
Do not bookmarking [sic] videos that are not
accessible by the public. For example videos hosted on
password protect [sic] websites or private file servers.
Failing to do so will result in the deletion of your
account without notice. All adult related video content
must be flagged as either “adult” or “private”.
(Pl.’s Hr’g Ex. 16.)
There

is

still

more

evidence

contributed to users’ infringement.

that

Gunter

materially

Gunter acknowledged that he

- 20 -

did not consider or investigate whether the users identified by
plaintiff as repeat infringers were infringing copyright; he merely
investigated whether the users were posting videos containing
“content that is not publicly available.”

(May Tr. 114-15.)

He

has not implemented any filters or identifiers to prevent repeat
infringers.11

He has not implemented any mechanism to prevent the

same infringing video from being re-posted to myVidster, even
though he acknowledged that implementation would not be difficult.
(May Tr. 130-31.)
stop

or

ban

the

Furthermore, Gunter took virtually no action to
repeat

infringers

who

posted

plaintiff’s

copyrighted works on myVidster (except for warning one of those
users to stop posting videos hosted on password-protected web
sites, Defs.’ Hr’g Ex. 6).12
“Safe Harbor” Defense
Defendants contend that they qualify for one of the four “safe
harbors” from liability set forth in the DMCA.

Section 512, also

known as the Online Copyright Infringement Liability Limitation Act
(OCILLA), creates limitations on liability for network service
providers who meet all of the conditions for a particular safe-

11/
When the court asked Gunter about the likelihood of false positives
with respect to keywords connected with plaintiff’s content, Gunter conceded that
“false positives” would not occur very often. (May Tr. 132-33.)
12/
Contrary to defendants’ argument, there is evidence in the record-namely, screenshots of videos posted to myVidster that identify the user who
posted the video--that at least some of the users identified by plaintiff as
repeat infringers, such as “fifthcharactermuppet” and “Damon1420,” did in fact
post videos containing plaintiff’s copyrighted content on two or more occasions.

- 21 -

harbor exemption. Defendants assert that they qualify for the safe
harbor for information “residing on systems or networks at [the]
direction of users,” 17 U.S.C. § 512(c).
We need not discuss each of the requirements of § 512(c)
because it is clear that defendants do not satisfy one of the
threshold requirements.

Section 512 provides in pertinent part:

The limitations on liability established by this section
shall apply to a service provider only if the service
provider-has adopted and reasonably implemented, and informs
subscribers and account holders of the service provider’s
system or network of, a policy that provides for the
termination in appropriate circumstances of subscribers
and account holders of the service provider’s system or
network who are repeat infringers . . . .
17 U.S.C. § 512(i)(1)(A).
It is difficult for us to understand how defendants can argue
with

a

straight

face

that

they

have

adopted

implemented a “repeat infringer” policy.
policies for, and controls, myVidster.

and

reasonably

Gunter determines the

His understanding of the

term “infringer” does not encompass the law of copyright; he
operates his site under the mistaken view that an “infringer” is
limited to a person who posts content that is hosted on a passwordprotected or private website. The statute does not define the term
“repeat

infringer,”

but

it

is

an

obvious

conclusion

that

“infringer” refers at the very least to someone who infringes
copyright.

See 3 Nimmer, supra, § 12B.10[B][1], at 12B-103 (2009)

(“[I]n the context of the placement of Section 512 into the

- 22 -

Copyright Act, an ‘infringer’ most naturally refers to someone who
infringes another’s copyright.”).

Gunter does not warn his users

about copyright infringement (coyly instructing them not to violate
“US law” does not cut it).

He removes videos from myVidster that

are listed in DMCA notices, but goes no further.

Beyond his

mechanical response to the notices, Gunter refuses to concern
himself with

copyright

protection.

It

is true

that

service

providers are not required to police their sites for infringement,
but they are required to investigate and respond to notices of
infringement--with respect to content and repeat infringers.

See

Aimster, 334 F.3d at 655 (“The [DMCA] does not abolish contributory
infringement. The common element of its safe harbors is that the
service provider must do what it can reasonably be asked to do to
prevent the use of its service by ‘repeat infringers.’”). Gunter’s
attitude is similar to that of Aimster, which the Seventh Circuit
deemed an “ostrich-like refusal to discover the extent to which its
system was being used to infringe copyright,” noting that it was
“another piece of evidence” of contributory infringement.

Id.

It

would be very easy for Gunter to determine whether a particular
myVidster user had posted, on two or more occasions, a video that
infringes one of plaintiff’s copyrights.

He refuses to do so, and

he refuses to acknowledge his duty to terminate the accounts of
such users.

- 23 -

Defendants are not eligible for the user-generated-content
safe harbor.

Plaintiff has shown that it is likely to succeed on

its claim for contributory copyright infringement. Defendants have
failed to rebut the presumption of irreparable harm that arises
from a showing of copyright infringement.

Their assertion that

plaintiff waited too long to bring suit and to bring its motion is
rejected.

Before filing suit, plaintiff made several attempts to

seek Gunter’s full compliance with the numerous DMCA notices that
it sent.

That compliance never came; plaintiff should not be

penalized for initially trying to avoid litigation. We also reject
defendants’ contention that the existence on other websites of
material that infringes plaintiff’s copyright somehow suggests that
plaintiff

is

not

suffering

irreparable

harm

from

defendants’

activities.
This is a proper case for issuance of a preliminary injunction
pursuant to Federal Rule of Civil Procedure 65 and the Copyright
Act because (1) plaintiff is likely to succeed on the merits of its
contributory

infringement

claim;

(2)

unless

a

preliminary

injunction issues, plaintiff will suffer irreparable harm to its
business; (3) the balance of harms favors plaintiff; and (4) the
public interest favors granting a preliminary injunction.
Appropriate Relief
Plaintiff has submitted a proposed injunctive order.
views on the proposed provisions are as follows:

Our

- 24 -

¶

1:

This

paragraph

is

unnecessary.

An

order

that

defendants “comply with U.S. copyright law” is not appropriately
tailored relief.
because

it

should

Moreover, the second sentence is unnecessary
be

understood

from

this

opinion

that,

in

plaintiff’s words, the “fact that a video is available publicly on
the [i]nternet shall not be reason for [Gunter’s] abdication of
[his] responsibility to make a determination as to whether or not
a video is copyrighted.”
¶ 2:

Plaintiff presented no evidence on what constitutes

“digital fingerprinting” or whether its implementation would be
reasonably feasible or affordable.

We decline to order that

defendants implement this technology.
¶ 3:

This relief is appropriate.

¶ 4:

Should be modified to read: “Filter the following

keywords and tags to prevent the upload or download of, posting of
links to videos, and the posting of embedded videos containing
plaintiff’s

copyrighted

content,

including

intentional

or

inadvertent misspellings of keywords and tags . . . ”
¶ 5:
implement

Should be modified to read: “Adopt and reasonably
a

repeat-infringer

policy

with

respect

to

the

infringement of copyright.”
¶ 6:

We will not require defendants to implement “flag”

buttons that work in the particular way described by plaintiff.

- 25 -

However, we will more generally require defendants to implement
measures designed to prevent repeat infringement.
¶ 7:

This relief is appropriate.

¶ 8:

More broadly, we will require defendants to disable

the accounts of users who on two or more occasions have posted
content that infringes on one or more of plaintiff’s copyrights.
¶ 9:

This relief is appropriate.

¶ 10:

Plaintiff has included a paragraph ordering defendants

to pay its attorney’s fees and costs associated with the bringing
of the motion.

Plaintiff did not include a request for this relief

in its motion or memorandum, nor did it develop this argument.
Therefore, this provision will not be included in the order.
¶ 11:

Ordering the shutdown of myVidster.com would not be

appropriately tailored relief. This paragraph should be stricken.
We believe that the order should also direct defendants to
file with the court and serve plaintiff with a report or series of
reports of compliance that identify all steps defendants have taken
to comply with the injunction order.

The parties should confer in

an attempt to agree on a schedule for the provision of the report
or reports.
The injunction order should also include a provision stating
that it shall become effective upon the plaintiff’s posting of a
$20,000 bond.

- 26 -

CONCLUSION
For

the

foregoing

reasons,

plaintiff’s

preliminary injunction [20] is granted.

motion

for

a

Plaintiff is directed to

prepare a proposed preliminary injunction order in accordance with
this opinion and submit it to defendants by August 5, 2011.
Thereafter, the parties shall confer and attempt to agree on the
language of the proposed injunction order.

Plaintiff shall submit

the final proposed injunction order to the court by August 15,
2011; if there are any outstanding disputes with respect to its
language, the plaintiff shall submit, along with the proposed
order, a brief statement describing the disputes.

DATE:

July 27, 2011

ENTER:

___________________________________________
John F. Grady, United States District Judge