Court Hints at Greater Copyright Protection for Artists and Designers Against Online Infringement

August 12, 2015

By Courtney A. H. Thompson

On May 8, 2013, Steven M. Gardner filed an action against CafePress, Inc. (CafePress). Gardner alleged that contents posted on the CafePress website, infringed Gardner’s copyrights in four works entitled “Find 12 Tigers,” “Polar Bears 10 Hidden Bears,” “Alaska Wildlife,” and “Harmony of Wolves.” The alleged infringement led to approximately $6,320 worth of products being sold.


CafePress is an online vendor that allows users to upload images for printing on items such as shirts, bags and mugs. The process for uploading images is automated. The images are printed onto the novelty items by CafePress at its facility in Kentucky, and sold to customers online.

Direct Infringement

Under the Copyright Act, there are three elements to a prima facie case of direct copyright infringement:

  1. Ownership of the allegedly infringed material,
  2. Violation of at least one exclusive right granted to copyright holders, and
  3. Volitional conduct by the defendant. There are four exclusive rights granted to the holders of graphical copyrights: (1) reproduction, (2) derivative creation, (3) distribution and (4) public display.

The parties did not dispute the first two elements of direct infringement: (1) that Gardner is the copyright owner and (2) that at least one of Gardner’s rights in those copyrights was violated. As for the third element, volitional conduct by CafePress, the court found that while users uploaded images to the website, a significant portion of the process was done by CafePress itself, namely the production of the allegedly infringing items. Therefore, the court denied CafePress’s motion for summary judgment on Gardner’s direct liability cause of action because there was a question of fact whether CafePress engaged in a sufficient amount of volitional conduct.

Safe Harbor

As a defense, CafePress argued it was entitled to summary judgment on the issue of infringement pursuant to the safe-harbor provided under the Online Copyright Infringement Liability Limitation Act. However, the court disagreed and held that CafePress was not necessarily entitled to the safe-harbor protection because it had the “right and ability to control” the allegedly infringing activity, including its policy of determining “in its sole and absolute discretion” which images are printed, its ability to modify images, and its authority to set retail prices for products sold through its online store.


While CafePress and Gardner recently stipulated to dismissing the lawsuit, this case is good news for artists and designers. Seeking to enforce a copyright against parties like CafePress, opposed to each individual user that uploads a copyright work, is a more efficient means to stop, and be compensated for, infringement.

Further, and perhaps more importantly, this case might prompt parties like CafePress to rethink their copyright policies and better police activity that constitutes copyright infringement on their sites. In part, this is because these parties might face potential liability for direct copyright infringement even if some of the wrongful activity is user generated or computerized.

Finally, this case suggests that the more a site or service provider is involved in the infringing process, the less likely it will qualify for a safe-harbor defense. As a result, designers and artists will be provided more of the protection they deserve.

If you are facing a copyright dispute, or another intellectual property matter, the attorneys at Fredrikson & Byron P.A. can help you understand your rights and advocate for your interests.

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