Flava Works, Inc v. Marques Rondale

                              In the

United States Court of Appeals
               For the Seventh Circuit

No. 11-3190

F LAVA W ORKS, INC.,
                                                    Plaintiff-Appellee,
                                  v.

M ARQUES R ONDALE G UNTER, doing business as
   myVidster.com; and S ALSA INDY, LLC,

                                             Defendants-Appellants.



             Appeal from the United States District Court
        for the Northern District of Illinois, Eastern Division.
                No. 10 C 6517—John F. Grady, Judge.



      A RGUED M AY 25, 2012—D ECIDED A UGUST 2, 2012




 Before P OSNER, FLAUM, and W OOD , Circuit Judges.
  P OSNER, Circuit Judge. The defendants (“myVidster”
for short) appeal from the grant of a preliminary in-
junction in a suit by Flava Works for copyright infringe-
ment. The district judge based the injunction on his
finding that myVidster is a contributory infringer
(more precisely, that the trier of fact would probably
2                                                 No. 11-3190

find this to be the case in a full trial)—in other words,
roughly an infringer’s accomplice. See Metro-Goldwyn-
Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005);
Kalem Co. v. Harper Brothers, 222 U.S. 55, 62-63 (1911)
(Holmes, J.); In re Aimster Copyright Litigation, 334 F.3d 643,
651 (7th Cir. 2003); 3 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright § 12.04[A][3], pp. 12-84 to 12-85 (2012).
As we explained in Aimster, “Recognizing the imprac-
ticability or futility of a copyright owner’s suing a multi-
tude of individual infringers (‘chasing individual con-
sumers is time consuming and is a teaspoon solution to an
ocean problem,’ Randal C. Picker, ‘Copyright as Entry
Policy: The Case of Digital Distribution,’ 47 Antitrust Bull.
423, 442 (2002)), the law allows a copyright holder to
sue a contributor to the infringement instead, in effect
as an aider and abettor. Another analogy is to the tort
of intentional interference with contract, that is, in-
ducing a breach of contract. See, e.g., Sufrin v. Hosier,
128 F.3d 594, 597 (7th Cir. 1997). If a breach of contract
(and a copyright license is just a type of contract) can be
prevented most effectively by actions taken by a third
party, it makes sense to have a legal mechanism for
placing liability for the consequences of the breach on
him as well as on the party that broke the contract.”
334 F.3d at 645-46.
  The district judge in this case erred at the outset by
saying that “as a practical matter, the analysis boils
down to a single factor—the plaintiff’s likelihood of
success.” He based this assertion on the statement in
Atari, Inc. v. North American Philips Consumer Electronics
Corp., 672 F.2d 607, 620 (7th Cir. 1982), that “irreparable
No. 11-3190                                                  3

injury may normally be presumed from a showing of
copyright infringement.” But the Supreme Court’s sub-
sequent decision in eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388, 392-93 (2006), made clear that there is no
such presumption; and though that was a case about
patents rather than copyrights and about permanent
rather than preliminary injunctions, we are persuaded
by Flexible Lifeline Systems, Inc. v. Precision Lift, Inc., 654
F.3d 989, 995-96, 998 (9th Cir. 2011) (per curiam), and
Salinger v. Colting, 607 F.3d 68, 82 (2d Cir. 2010), that eBay
governs a motion for a preliminary injunction in a copy-
right case, as well. See also Winter v. Natural Resources
Defense Council, Inc., 555 U.S. 7, 22-24 (2008). Therefore
likelihood of success was only one factor for the
district judge to consider in deciding whether to grant a
preliminary injunction. But as that is the only factor
the parties discuss (apart from a perfunctory and conjec-
tural contention by Flava that no one who becomes
habituated to seeing videos for free on myVidster will
pay to see them on Flava’s website or buy DVDs of
them from Flava unless the preliminary injunction is
upheld), we can confine our analysis to it.
  Flava specializes in the production and distribution
of videos of black men engaged in homosexual acts.
Although some people would disapprove of such a
service, there is no suggestion that it is illegal; and any-
way the prevailing view is that even illegality is not a
bar to copyrightability. Jartech, Inc. v. Clancy, 666 F.2d
403, 406 (9th Cir. 1982); Mitchell Brothers Film Group v.
Cinema Adult Theater, 604 F.2d 852, 854-55 (5th Cir.
4                                                No. 11-3190

1979); Belcher v. Tarbox, 486 F.2d 1087, 1088 (9th Cir. 1973);
1 Nimmer & Nimmer, supra, § 2.17, pp. 2-195 to 2-197.
As pointed out in the Jartech case, “obscenity is a com-
munity standard which may vary to the extent that con-
trols thereof may be dropped by a state altogether.
Paris Adult Theatre I v. Slaton, 413 U.S. 49 (1973); United
States v. 2,200 Paper Back Books, 565 F.2d 566, 569-70
(9th Cir. 1977). Acceptance of an obscenity defense
would fragment copyright enforcement, protecting regis-
tered materials in a certain community, while, in effect,
authorizing pirating in another locale.” 666 F.2d at
406. A separate question, which is unresolved, and is
unnecessary to resolve in this case, is the applicability
of the doctrine of in pari delicto (equally at fault), which
we discussed recently in Schlueter v. Latek, 683 F.3d 350,
355-56 (7th Cir. 2012), to an infringement suit by the
holder of copyright on an illegal work. It could be
argued that the courts shouldn’t be bothered with a
suit that, whichever side wins, will have been won by
a wrongdoer. No matter; as we said, there is no conten-
tion that any of Flava’s videos are illegal.
  The websites that host them are behind a “pay
wall”; that is, access to them (except for previews) is
available only upon payment of a fee in advance. The
user must agree not to copy, transmit, sell, etc. the
video, although Flava’s terms of use permit the user to
download it to his computer for his “personal, noncom-
mercial use”—only.
  Enter myVidster, an online service engaged in what
is called “social bookmarking”—enabling individuals
No. 11-3190                                                5

who have similar tastes to point one another (and
actually provide one another access) to online materials
that cater to those tastes, by bookmarking materials on
the social-bookmarking service’s website. We need to
describe how this works.
   Patrons of myVidster find videos on the Internet, and
if they want to make them available to other patrons of
myVidster (who apparently can be anyone—as far as
we can discern from the record all content on myVidster
is publicly accessible) “bookmark” (note) them on
myVidster’s website. Upon receiving the bookmark
myVidster automatically requests the video’s “embed
code” from the server that hosts (that is, stores) the video.
In the present context “server” denotes a specialized
computer for storing and transmitting bulky online
materials, like videos. When you upload a video to the
Internet, the video is stored on a server that transmits
the video to other Internet users’ computers on request.
   The embed code contains the video’s web address
plus instructions for how to display the video. Armed
with that code, myVidster creates a web page that
makes the video appear to be on myVidster’s site. When
you visit the site, that video and other videos appear,
each in the form of a “thumbnail,” a miniature picture of
a video’s opening screen shot. A click on a thumbnail
activates computer code that connects the visitor’s com-
puter to the server; the connection made, the visitor is
now watching the video. He’s watching it through a
frame that myVidster has put around it, containing ads
(it’s by selling ads for display on its website that
6                                             No. 11-3190

myVidster finances its operation). He may think, there-
fore, that he’s seeing the video on myVidster’s website.
But actually the video is being transmitted directly from
the server on which the video is stored to the viewer’s
computer. Someone had uploaded the video to that
server, and later a subscriber to myVidster had come
across it and decided to bookmark it. This led to the
creation of a page on myVidster’s website and by
clicking on the page other visitors to myVidster can
now view the video—but on the server that hosts the
video, not on myVidster’s website; the bookmarked
video is not posted on myVidster’s website.
   Uploading a video to the Internet is commonplace
and simple to do. See, e.g., Philip Bloom, “Uploading
Videos to the Internet: Six Easy-to-Follow Steps,”
w w w .pp m ag.com /web-exclusive s/ 20 10 /0 3/video-to-
internet.html (visited July 25, 2012). And once uploaded
it is easy to send to a friend to view and is easily found
in a search of the web and viewed. Uploading is the
source of the immense number of videos viewable
on YouTube. See “YouTube,” Wikipedia, http://
en.wikipedia.org/wiki/YouTube (visited July 25, 2012).
But if the uploaded video is copyrighted, the uploader
has (depending on the terms of use) infringed the copy-
right. A customer of Flava is authorized only to down-
load the video (or if he obtained it on a DVD sold by
Flava, to copy it to his computer) for his personal use.
If instead he uploaded it to the Internet and so by
doing so created a copy (because the downloaded
video remains in his computer), he was infringing.
No. 11-3190                                                  7

  Is myVidster therefore a contributory infringer if a
visitor to its website bookmarks the video and later
someone clicks on the bookmark and views the video?
myVidster is not just adding a frame around the video
screen that the visitor is watching. Like a telephone
exchange connecting two telephones, it is providing a
connection between the server that hosts the video and
the computer of myVidster’s visitor. But as long as the
visitor makes no copy of the copyrighted video that he
is watching, he is not violating the copyright owner’s
exclusive right, conferred by the Copyright Act, “to
reproduce the copyrighted work in copies” and “dis-
tribute copies . . . of the copyrighted work to the public.” 17
U.S.C. §§ 106(1), (3). His bypassing Flava’s pay wall by
viewing the uploaded copy is equivalent to stealing
a copyrighted book from a bookstore and reading it.
That is a bad thing to do (in either case) but it is not
copyright infringement. The infringer is the customer
of Flava who copied Flava’s copyrighted video by up-
loading it to the Internet.
  The right to control copying is not the only exclusive
right of a copyright owner. That would make life too
simple for us. He also has an exclusive right “to
perform the copyrighted work publicly.” § 106(4). But
we begin our analysis with the right to prevent copying
and ask whether myVidster is the copiers’ accomplice.
  A typical, and typically unhelpful, definition of “contrib-
utory infringer” is “one who, with knowledge of the
infringing activity, induces, causes or materially con-
tributes to the infringing conduct of another.” Gershwin
8                                               No. 11-3190

Publishing Corp. v. Columbia Artists Management, Inc., 443
F.2d 1159, 1162 (2d Cir. 1971). Such a one “may be held
liable as a ‘contributory’ infringer.” Id. But does “may
be held liable” mean that a person who fits the definition
of “contributory infringer” may nevertheless not be a
contributory infringer after all? And what exactly
does “materially contribute” mean? And how does one
materially contribute to something without causing or
inducing it? And how does “cause” differ from “induce”?
  Brevity is the soul of wit and tediousness its limbs and
outward flourishes. We therefore prefer the succinct
definition of contributory infringement in Matthew
Bender & Co. v. West Publishing Co., 158 F.3d 693, 706
(2d Cir. 1998): “personal conduct that encourages or
assists the infringement.” See also Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007).
  Flava contends that by providing a connection to
websites that contain illegal copies of its copyrighted
videos, myVidster is encouraging its subscribers to cir-
cumvent Flava’s pay wall, thus reducing Flava’s in-
come. No doubt. But unless those visitors copy the videos
they are viewing on the infringers’ websites, myVidster
isn’t increasing the amount of infringement. See Perfect 10,
Inc. v. Visa Int’l Service Ass’n, 494 F.3d 788, 797 (9th Cir.
2007). An employee of Flava who embezzled corporate
funds would be doing the same thing—reducing Flava’s
income—but would not be infringing Flava’s copyrights
by doing so. myVidster displays names and addresses
(that’s what the thumbnails are, in effect) of videos
hosted elsewhere on the Internet that may or may not be
copyrighted. Someone who uses one of those addresses
No. 11-3190                                                9

to bypass Flava’s pay wall and watch a copyrighted
video for free is no more a copyright infringer than if
he had snuck into a movie theater and watched a copy-
righted movie without buying a ticket. The facilitator
of conduct that doesn’t infringe copyright is not a con-
tributory infringer.
  A practical objection to stretching the concept of contrib-
utory infringement far enough to make a social-
bookmarking service a policeman of copyright law is
that the service usually won’t know whether a video
that a visitor bookmarks on the service’s website is pro-
tected by copyright. Congress addressed this problem
in the Digital Millennium Copyright Act of 1998, Pub. L.
105-304, 112 Stat. 2860. The Act provides a safe harbor
to Internet service providers. It states that a provider
isn’t liable for copyright infringement by “referring
or linking users to an online location containing
infringing material” if it meets certain conditions—it
doesn’t know the material is infringing, it isn’t aware
of facts that would make the infringement apparent,
upon learning such facts it acts expeditiously to remove
or disable access to the infringing material, it doesn’t
receive a financial benefit directly attributable to the
infringing activity, 17 U.S.C. § 512(d), and it terminates
repeat infringers. § 512(i)(1)(A). myVidster received
“takedown” notices from Flava designed to activate
the duty of an Internet service provider to ban repeat
infringers from its website, and Flava contends that
myVidster failed to comply with the notices. But
this is irrelevant unless myVidster is contributing to in-
fringement; a noninfringer doesn’t need a safe harbor.
10                                           No. 11-3190

As the record stands (a vital qualification, given that
the appeal is from the grant of a preliminary injunction
and may therefore be incomplete), myVidster is not
an infringer, at least in the form of copying or dis-
tributing copies of copyrighted work. The infringers
are the uploaders of copyrighted work. There is no evi-
dence that myVidster is encouraging them, which
would make it a contributory infringer.
  It might seem that the mention in the Digital
Millennium Copyright Act of “referring or linking users
to an online location containing infringing material”
expands the concept of contributory infringement to
any reference to, or linkage in the sense of facilitating
access to, copyrighted material. But this is implausible,
and anyway is not argued by Flava. Taken literally it
would make the publication, online or otherwise, of any
contact information concerning a copyrighted work a
form of contributory infringement. A more plausible
interpretation is that Congress wanted to make the safe
harbor as capacious as possible—however broadly con-
tributory infringement might be understood, the Internet
service provider would be able to avoid liability.
  Now if myVidster invited people to post copy-
righted videos on the Internet without authorization or
to bookmark them on its website, it would be liable
for inducing infringement, Metro-Goldwyn-Mayer Studios
Inc. v. Grokster Ltd., supra, 545 U.S. at 930, 936—a form
of contributory infringement, see Perfect 10, Inc. v.
Amazon.com, Inc., supra, 508 F.3d at 1170-71, that empha-
sizes intent over consequence. But inducing infringement
was not a ground of the preliminary injunction issued
No. 11-3190                                            11

by the district judge in this case and anyway there is
no proof that myVidster has issued any such invitations.
  myVidster knows that some of the videos bookmarked
on its site infringe copyright, but that doesn’t make it a
facilitator of copying. Although visitors who view those
videos are viewing infringing material, they are paying
nothing for it and therefore not encouraging infringe-
ment, at least in a material sense, unless perhaps the
infringer gets ad revenue every time someone plays
the video that he posted on the Internet—but there is
no evidence of that. True, bookmarking is a way of
making friends on a social network, and one needs some-
thing to bookmark, and so if you want to make friends
with people who like the kind of videos that Flava pro-
duces you may be inclined to upload those videos to
the Internet in the hope that someone will bookmark
them on myVidster’s website and someone else will
watch them and be grateful to you. But this is very
indirect. For will a visitor to myVidster who watches
a bookmarked infringing video know whom to be
grateful to—know who uploaded it, thus enabling it to
be bookmarked and viewed? That is unlikely. The unau-
thorized copier—the uploader of the copyrighted video—
is not a part of the social network unless he’s a
myVidster member and uploads the Flava video for the
purpose of its being bookmarked on myVidster and
somehow gets credit for the bookmarking and for the
ensuing viewing of the bookmarked video. There is no
evidence that there are any such people.
12                                             No. 11-3190

  A term in the conventional definition of contributory
infringement—“material contribution”—invokes com-
mon law notions of remoteness that limit efforts to
impose liability for speculative imaginings of possible
causal consequences. As we said in BCS Services, Inc. v.
Heartwood 88, LLC, 637 F.3d 750, 755 (7th Cir. 2011), “An
injury will sometimes have a cascading effect that no
potential injurer could calculate in deciding how
carefully to act. The effect is clear in hindsight—but only
in hindsight.” The absence of evidence of myVidster’s
effect on the amount of infringement of Flava’s videos
brings concern about remoteness into play.
  The absence of evidence arises in part from the fact
that although Flava has a specialized subject matter,
myVidster does not. It’s like YouTube, except that
YouTube hosts the videos it provides access to and
myVidster as we know does not. Another difference,
however, is that YouTube refuses to provide access to
pornography, and myVidster, as we also know, is not so
choosy—on the contrary. It’s true that its home page,
www.myvidster.com/ (visited July 4, 2012), lists videos
that range from the fighting in Syria to “Obamacare”
and “Ugliest Tattoos” and “Why You Should Spiral-Cut
Your Wiener” (and yes, that really is about hot dogs),
with nary a pornographic video among them. But
this is misleading, because in the default setting
on myVidster (the setting when you first click on its
website) the “family filter” is turned on; if you turn it
off, your visit will reveal a mixture of pornographic
and nonpornographic videos, with the former predom-
No. 11-3190                                                13

inating, and of those the majority are homosexual
and many of the actors in the homosexual videos are black.
   But Flava is not the only producer of such videos, and
there is no information in the record concerning its
market share. All we glean from the record—and it is of
no help to Flava—is that of the 1.2 million bookmarks
that have been made on myVidster’s website, Flava
has been able to identify only 300 as bookmarks of copy-
righted Flava videos; and we don’t know whether any
visitors to myVidster’s website clicked on any of them
and thus actually watched an unauthorized copy of a
Flava video. Flava claims that its sales have fallen by 30
to 35 percent and that as a result it probably has lost
more than $100,000 in revenue. But it doesn’t say over
what period the decline in revenue has occurred and
it acknowledges that there are at least a dozen websites
besides myVidster’s on which access to unauthorized
copies of Flava’s videos can be obtained. So the $100,000
loss in revenue can’t be ascribed entirely to myVidster.
Indeed, myVidster may have very little—even nothing—
to do with Flava’s financial troubles.
  Google and Facebook in a joint amicus curiae brief
friendly to myVidster manage to muddy the waters
by analyzing remoteness of injury from an alleged in-
fringement not as a matter of general tort principles but
as a species of layer cake. There are the “direct” infringers,
who upload copyrighted videos to the Internet without
authorization. There are myVidster members who book-
mark videos illegally uploaded by the “direct” infring-
ers—the brief describes the bookmarking visitors as
14                                                No. 11-3190

“secondary” infringers. And finally there is myVidster,
which connects visitors to its website to the servers that
host the infringing videos. The brief describes myVidster
as being at worst a “tertiary” infringer, beyond the reach
of copyright law because the law doesn’t recognize
tertiary copyright infringement. But the law doesn’t
recognize “secondary infringement” either. The only
distinctions relevant to this case are between direct in-
fringement (which really ought just to be called infringe-
ment—the law doesn’t speak of “direct negligence”
versus “contributory negligence” or “direct murder”
versus “aiding and abetting murder”) and contributory
infringement, and between contributory infringement
and noninfringement. The direct infringers in this case
are the uploaders; myVidster is neither a direct nor a
contributory infringer—at least of Flava’s exclusive right
to copy and distribute copies of its copyrighted videos.
   That is an essential qualification. So far we’ve been
discussing infringement just by copying, and we can’t
stop there. For remember that the Copyright Act also
makes it unlawful “to perform the copyrighted work
publicly,” 17 U.S.C. § 106(4), defined, so far as relates
to this case, as “to transmit or otherwise communicate a
performance . . . of the work . . . to the public . . . whether
the members of the public capable of receiving the per-
formance . . . receive it in the same place or in separate
places and at the same time or at different times.”
§ 101. One possible interpretation is that uploading plus
bookmarking a video is a public performance because
it enables a visitor to the website to receive (watch) the
No. 11-3190                                            15

performance at will, and the fact that he will be watching
it at a different time or in a different place from the
other viewers does not affect its “publicness,” as the
statute makes clear. We’ll call this interpretation, for
simplicity, “performance by uploading.” An alterna-
tive interpretation, however—call it “performance by
receiving”—is that the performance occurs only when
the work (Flava’s video) is transmitted to the viewer’s
computer—in other words when it is “communicated to
the public in a form in which the public can visually or
aurally comprehend the work.” William F. Patry, Patry
on Copyright § 14:21, p. 14-41 (2012).
  On the first interpretation, performance by uploading,
the performance of a movie in a movie theater might
by analogy be said to begin not when the audience is
seated and the movie begins but a bit earlier, when
the operator of the projector loads the film and puts
his finger on the start button; while on the second inter-
pretation, performance by receiving, it begins when he
presses the button and the reel begins to unwind. The
second interpretation is certainly more plausible in the
movie-theater setting. But in the setting of our case
the viewer rather than the sender (the latter being the
uploader of the copyrighted video) determines when
the performance begins, and it is odd to think that
every transmission of an uploaded video is a public
performance. The first interpretation—public per-
formance occurs when the video is uploaded and the
public becomes capable of viewing it—is better at giving
meaning to “public” in public performance but worse
at giving meaning to “performance.” Legislative clarifica-
16                                           No. 11-3190

tion of the public-performance provision of the Copy-
right Act would therefore be most welcome.
  The second interpretation—the performance occurs
when the video is viewed—is more favorable to Flava,
because myVidster plays a role there and not in up-
loading. So we’re surprised that Flava doesn’t urge it.
The first interpretation is hopeless for Flava. For there
is no evidence that myVidster is contributing to the
decision of someone to upload a Flava video to the
Internet, where it then becomes available to be book-
marked on myVidster’s website. myVidster is giving
web surfers addresses where they can find entertain-
ment. By listing plays and giving the name and address
of the theaters where they are being performed, the New
Yorker is not performing them. It is not “transmitting or
communicating” them. Cf. Perfect 10, Inc. v. Amazon.com,
Inc., supra, 508 F.3d at 1159-61; In re Aimster Copyright
Litigation, supra, 334 F.3d at 646-47.
  Is myVidster doing anything different? To call the
provision of contact information transmission or com-
munication and thus make myVidster a direct infringer
would blur the distinction between direct and con-
tributory infringement and by doing so make the
provider of such information an infringer even if he
didn’t know that the work to which he was
directing a visitor to his website was copyrighted. Then
he would have to search for a safe harbor in the
Digital Millennium Copyright Act. myVidster doesn’t
touch the data stream, which flows directly from one
computer to another, neither being owned or operated
by myVidster. Compare National Football League v.
No. 11-3190                                              17

PrimeTime 24 Joint Venture, 211 F.3d 10, 13 (2d Cir. 2000),
a retransmission case.
   But if the public performance is the transmission of
the video when the visitor to myVidster’s website clicks
on the video’s thumbnail (the second interpretation)
and viewing begins, there is an argument that even
though the video uploader is responsible for the trans-
mitting and not myVidster, myVidster is assisting
the transmission by providing the link between the
uploader and the viewer, and is thus facilitating pub-
lic performance. There is a remote analogy to the “swap
meet” operated by the defendant in Fonovisa, Inc. v.
Cherry Auction, Inc., 76 F.3d 259, 262 (9th Cir. 1996). That
was a flea market in which, as the defendant knew,
pirated recordings of music copyrighted by the plaintiff
were sold in such bulk that the subsequent performance
by the buyers (when they played the recordings) may
have satisfied the broad definition of public performance
in the Copyright Act, although the opinion doesn’t say
whether the infringement consisted of unauthorized
distribution of copies or unauthorized public performance
and probably meant the former. Under either interpreta-
tion the swap meet operator was providing “sup-
port services” without which “it would [have been]
difficult for the infringing activity to take place in the
massive quantities alleged.” Id. at 264.
  In contrast, Flava’s pirated videos are not sold, and
there isn’t even admissible evidence that they’re
actually being accessed via myVidster, rather than via
other websites, and if they are not, myVidster is not
18                                               No. 11-3190

contributing to their performance. Unlike the defendant
in Fonovisa, myVidster is not providing a market for
pirated works, because infringers who transmit copy-
righted works to myVidster’s visitors are not selling
them. That isn’t determinative, because copyrights can
be infringed without a pecuniary motive. But it is
relevant to whether myVidster’s bookmarking service
is actually contributing significantly to the unauthorized
performance of Flava’s copyrighted works by visitors
to myVidster’s website. It’s not as if myVidster were
pushing the uploading of Flava videos because it had a
financial incentive to encourage performance of those
works, as the swap meet did.
   Nor is this case like our Aimster case, cited earlier. That
was a file-sharing case. Kids wanted to swap recorded
music (often copyrighted) over the Internet. The swapping
required special software—which Aimster provided.
By doing so it created the online equivalent of a swap
meet, since anyone equipped with Aimster’s software
could easily obtain copies of copyrighted songs in AOL
chat rooms; the first three letters in “Aimster” were
an acronym for “AOL instant messaging.” Although
it wasn’t proved that all the swapped recordings were
copyrighted, it was apparent that most were—and maybe
all, for we noted that “Aimster has failed to produce
any evidence that its service has ever been used for a
noninfringing use.” In re Aimster Copyright Litigation, supra,
334 F.3d at 653 (emphasis added). That can’t be said
about myVidster’s social-bookmarking service. Unlike
Aimster, it’s not encouraging swapping, which in turn
No. 11-3190                                               19

encourages infringement, since without infringement
there is nothing to swap.
  As should be clear by now, on the record compiled so
far in this litigation there is no basis for the grant of a
preliminary injunction. That is not to say that Flava
can’t establish grounds for such an injunction, consistent
with the eBay standard. It seems at least entitled to an
injunction against myVidster’s uploading to its website
videos in which Flava owns copyrights. Before it was
sued by Flava, myVidster had been doing that—making
copies of videos that some of its subscribers had
posted, including videos copyrighted by Flava. Although
myVidster doesn’t charge for membership in its social
network, it charges a fee for a premium membership
that included the backup service. That service infringed
Flava’s copyrights directly—it didn’t just abet others’
infringements.
  myVidster has stopped offering it. But Flava would still
be entitled to an injunction—cessation of an unlawful
practice doesn’t exonerate a defendant, since unless
enjoined he might resume infringing. Friends of the Earth,
Inc. v. Laidlaw Environmental Services (TOC), Inc., 528
U.S. 167, 189 (2000); Chicago United Industries, Ltd. v. City
of Chicago, 445 F.3d 940, 947 (7th Cir. 2006). It’s thus a
surprise that the preliminary injunction doesn’t enjoin
the backup service, especially since the district judge
considered it evidence that myVidster was contributing
to the infringing activity of its members. (Actually,
though, we’ve seen that the members were not the in-
fringers—the third parties who uploaded Flava videos
20                                              No. 11-3190

to the Internet were the infringers to whose activities
myVidster is alleged to have been contributing.) But
the judge said that while the “plaintiff also referred
in closing argument to its claims of direct copyright in-
fringement and inducement of copyright infringe-
ment, . . . its motion for a preliminary injunction is not
based on those claims.” The backup service was direct
infringement—myVidster was copying videos, including
some of Flava’s, without authorization. Yet as the judge
said, Flava didn’t make a claim for direct infringement a
basis for its motion for preliminary relief. It doesn’t seem
to be interested in such an injunction. At oral argument,
however, myVidster’s lawyer said his client wouldn’t
oppose such an injunction, and maybe this will awaken
Flava’s interest. This is something for consideration
on remand.
  Flava may be entitled to additional preliminary injunc-
tive relief as well, if it can show, as it has not shown
yet, that myVidster’s service really does contribute sig-
nificantly to infringement of Flava’s copyrights. The
preliminary injunction that the district court entered
must, however, be
                                                 V ACATED .




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