2011 Review of Copyright Law and the Internet
Stephen J. Quigley - 10/20/2011
This article covers some of the recent case decisions and other legal developments concerning copyright law and the internet which are representative of current court decisions deciding copyright infringement issues, as well as major trends in the copyright and domain name fields.
In this continuously evolving area of the law, litigants and courts struggle to apply established legal principles to a constantly changing technology that drives the internet. As noted by the United States Court of Appeals for the Ninth Circuit: "We must be acutely aware of excessive rigidity when applying the law in the Internet context; emerging technologies require a flexible approach." Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137, 1141-1142 (9th Cir. 2011).
New Top Level Domain Names
On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the registration of new top-level domains (TLDs) to be used in web addresses. Companies will now have the opportunity to use a custom TLD to brand themselves on the internet, for example .pepsi, .ibm, .ford. It will cost $185,000 to register a new TLD, with an additional annual fee of $25,000. The first registration period for new TLDs begins on January 12, 2012 and ends on April 12, 2012.
The primary benefit to a new TLD is a unique, distinctive presence online that can guide customers away from illegitimate sites with similar top level domain names. Trademark owners, however, will not be guaranteed TLDs for their marks, nor will other companies necessarily be precluded from registering TLDs containing a trademark belonging to someone else. For these reasons, there will be a rigorous application and filtering process as well as a trademark protest system. Nonetheless, trademark dilution will be a threat as will be the potential for "cybersquatting", i.e., buying up domain names and attempting to sell them for inflated prices.
A new “sponsored” top level domain name is .xxx. This will provide an easily identifiable means of recognizing adult and pornographic web sites and is expected to make it easier to block such sites. Trademark owners, however, are concerned that cybersquatters will register trademarks as .xxx domain names, for example, www.pepsi.xxx. The ICM Registry that will administer the .xxx sTLDs is providing owners of existing trademarks and domain names outside the pornographic industry the opportunity during the initial “sunrise” period (September 7, 2011 through October 28, 2011) to pre-empt others from registering their mark with the .xxx sTLD by requesting the removal of their trademarks and domain names from the pool of names available for .xxx registration.
Seizing Domain Names
In February 2011, federal prosecutors and agents from Immigration and Customs Enforcement in New York executed seizure warrants against ten domain names that hosted websites with links to allegedly unlawful video streaming of live sports broadcasts. Seizures were also made in November 2010 of 82 domain names associated with websites allegedly involved with counterfeiting, and in June 2010 of seven domain names of websites accused of criminal copyright infringement of movies and television shows.
Medical Care Reviews
An organization named Medical Justice provides physicians with an “anti-defamation package” which includes a contract for patients to assign intellectual property rights to the physician. This enables the physician to send a take down notice under the Digital Millennium Copyright Act (DMCA) to have websites such as Yelp and Angie’s List remove critical comments from the patients as infringing content.
As a counter-measure, the law schools at the University of California at Berkeley and the University of Santa Clara created doctoredreviews.com to help patients, doctors, and website operators understand the problems created by the removal of online patient reviews, and to offer tips and suggestions for allowing patients to talk about their healthcare experiences.
Copying From Web Sites
The federal Computer Fraud and Abuse Act (CFAA), 18 U.S.C. § 1030, is a civil and criminal anti-hacking statute designed to prohibit the use of hacking techniques to gain unauthorized access to electronic data. In Cvent Inc. v. Eventbrite, Inc., 739 F.Supp.2d 927 (E.D. Va. 2010), Eventbrite’s copying (“scraping”) information on meeting venues from Cvent’s web site did not violate the CFAA because the information was publicly available on the internet without requiring any login, password or other individualized grant of access.
Agence France-Presse v. Morel, 769 F. Supp.2d 295 (S.D.N.Y. 2011), ruled that photographs uploaded on one’s Twitpic page (Twitter’s media sharing website) cannot be used or reproduced by others. Daniel Morel’s photographs of Haiti following the 2010 earthquake that he posted on his Twitpic page were used by Agence France-Presse and other news organizations, as well as at least one individual who claimed them as his own. Although Twitter’s terms of services grant Twitter and its partners a non-exclusive license to use and reproduce “content”, including photographs, posted on Twitter and Twitpics, that license did not extend to other Twitter users.
In Capitol Records, Inc. v. Thomas-Rasset, No. 06-1497 (D. Minn.), the jury ordered the defendant to pay $1.5 million in statutory damages for her willful peer-to-peer sharing of 24 copyrighted music files.
In Sony BMG Music v. Tenenbaum, No. 07-11446 (D. Mass.), the jury awarded $675,000 ($22,500 for each illegally downloaded song) in statutory damages against an individual file sharer. The judge reduced the award to $67,500. The Court of Appeals upheld the verdict of copyright infringement, but reinstated the original damages award. Sony BMG Music Entm't v. Tenenbaum, 2011 U.S. App. LEXIS 19086 (1st Cir. 2011).
In Murphy v. Millennium Radio Group LLC, 99 USPQ2d 1022 (3d Cir. 2011), Millennium’s removal of the copyright information from a photograph it copied from a web site and displayed on its own web site violated the DMCA (17 U.S.C. § 1201) which bars circumvention of a technological measure that effectively controls access to a work.
Publication of a Work on a Foreign Based Website
In order to sue for copyright infringement in the United States, the work must first have been registered in the U.S. Copyright Office (17 U.S.C. § 411(a)). An exception is made for works published in a foreign country. In Kernal Records Oy v. Mosley, 2011 U.S. Dist. LEXIS 60666 (S.D. Fla. 2011), the Court ruled that publication of a work on a web site based in Australia constituted simultaneous publication in the United States (as well as everywhere else in the world). Publication on the internet made the work a “U.S. Work” requiring a U.S. registration in order to file suit.
The Kernal holding appears to conflict with Moberg v. 33T LLC, 666 F. Supp.2d 415, 422, 424 (D. Del. 2009), which held that publication of photographs posted on a German website did not amount to simultaneous publication in both the United States and Germany and therefore, because the photos were not "United States works," the plaintiff did not have to satisfy the U.S. registration requirement before suing for copyright infringement.
YouTube’s “Copyright School”
Google, which owns YouTube, now requires copyright violators to first watch a copyright video tutorial explaining why videos are removed from YouTube’s website and then pass a test showing that they understand YouTube’s copyright policies before being allowed to submit new videos. The public interest group Public Knowledge criticized this tutorial because it does not explain that excerpts of copyrighted works may be acceptable under the “fair use” doctrine.
DMCA – Safe Harbor and Take Down Notices
An internet service provider (ISP) is protected from liability for copyright infringement where it merely transmits or provides connections for online communications by a user without modifying the user’s content. (17 U.S.C. § 512(k)(1)(A)). In order to invoke the DMCA’s “safe harbor” provision, the ISP must 1) not interfere with the measures used by copyright owners to identify or protect copyrighted works, 2) implement and communicate a policy that provides for the termination of subscribers and account holders who are repeat infringers, and 3) designate an agent to receive notifications of claimed infringement. In Louis Vuitton Malletier SA v. Akanoc Solutions Inc., 97 USPQ2d 1178 (N.D. Cal. 2010), aff’d in part and vacated in part [concerning the damages award], 2011 U.S. App. LEXIS 18815 (9th Cir. 2011), Akanoc (the ISP) was denied the safe harbor protections because it designated its agent after the complaint was filed; the agent admitted that he did not understand the DMCA requirements, and Akanoc failed to terminate repeat offenders.
Safe harbor protection was also denied in Flava Works, Inc. v. Gunter, 2011 U.S. Dist. Lexis 82955 (N.D. Ill. 2011), which ruled that Gunter could not reject a DMCA take down notice on the ground that his MyVidster.com web site merely “bookmarked” the allegedly infringing material from other web sites. This erroneous interpretation of the DMCA did not entitle him to avoid a claim of contributory copyright infringement liability.
In Wolk v. Kodak Imaging Network, Inc., 98 USPQ2d 1152 (S.D.N.Y. 2011), Wolk contended that because Defendant’s Photobucket web site had removed her copyrighted works based on several DMCA-compliant take down notices she had submitted, Photobucket was obligated to police its site to uncover other current infringements and prevent future infringements. The Court denied Wolk’s motion for a preliminary injunction ruling that it would place a burden on Photobucket beyond the DMCA requirement (17 U.S.C. § 512(c)(3)(A)) that for each instance of alleged infringement, the copyright owner must submit a notice that identifies and reasonably locates the infringing activity.
This is consistent with the holding reported in last year’s letter where the Court ruled in Viacom Int’l Inc. v. YouTube Inc., 718 F. Supp.2d 514 (S.D.N.Y. 2010), that an online service provider has a duty to take down infringing content only when it has “knowledge of specific and identifiable infringements of particular individual items.” General knowledge of the prevalence of infringing activity on a web site is not sufficient to hold the service provider liable for any particular infringing videos. This ruling is now pending appeal in the Second Circuit.
Design Furnishings Inc. v. Zen Path LLC, 97 USPQ2d 1284 (E.D. Cal. 2010), granted a preliminary injunction to Zen Path barring further take down notices by Design claiming that Zen Path’s furniture infringed Design’s allegedly copyrighted designs. The Court further ruled that because Design’s furniture designs may have been utilitarian (its copyright application was rejected), Design may be liable to Zen Path under the DMCA (17 U.S.C. § 512(f)) for knowingly making material misrepresentations in the take down notices by claiming that its furniture designs were entitled to copyright protection.
On December 2, 2010, Google announced that it will implement better methods for complying with the DMCA’s notice and take down requirements, including acting on reliable copyright take down requests within 24 hours.
Downloading Musical Works
United States v. Am. Soc'y of Composers, 627 F.3d 64 (2d Cir. 2010), ruled that downloading a digital file containing a musical work is not a “public performance” of the work. Therefore, online music vendors (in this case Yahoo and RealNetworks) need not obtain or pay for public performance licenses for their distribution of, and their customers’ use of, the digital music files.
As reported in our previous letters, Google is seeking to digitize entire collections of several university and research libraries and post them on-line. For those works still under copyright, Google would permit the viewing of only “snippets” with links to booksellers. A class action lawsuit was filed in 2005 by several authors and publishers seeking to block the publication of these works (Authors Guild Inc. v. Google Inc., No. 05 CV 8136 (S.D.N.Y.)). In 2008, a tentative settlement was reached which established a centralized royalty collection organization to compensate the authors of the scanned works that are still under copyright. The settlement also allowed Google to publish complete “orphan” works – those for whom the copyright owner cannot be located.
On March 22, 2011, the Court rejected the settlement because it did not adequately represent the rights of authors – particularly the authors/owners of the orphan works – who were not represented by the plaintiffs. The parties are continuing to discuss settlement, but concerns regarding fair use, the orphan works, antitrust, security for the digitized works, and whether legislation is the more appropriate course, are complicating the negotiations. Because of the delays in reaching a settlement, on September 15, 2011, the Court set a trial schedule.
On September 12, 2011, a different set of authors and authors’ groups (including the Authors’ Guild which represents more than 8500 authors) filed a copyright infringement suit against HathiTrust, a partnership of the research and university libraries that is working with Google to digitize their collections. In addition to claims of copyright infringement, the suit is seeking to transfer the books (more than 9.5 million volumes) from HathiTrust’s server to a trustee.
What was once a contested issue – whether it is per se improper to purchase a competitor’s name or trademark from a search engine as a metatag or keyword in order to bring up a sponsored link in a search using that name or mark – appears to have been settled in favor of the keyword purchasers. The issue now is whether the use of that keyword, metatag or AdWord will create a likelihood of confusion. Network Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137 (9th Cir. 2011), vacated a preliminary injunction against the use of keywords because the district court did not accord sufficient weight to those likelihood of confusion factors that matched the specific facts of the case.
Binder v. Disability Group, Inc., 772 F. Supp.2d 1172 (C.D. Cal. 2011), found a likelihood of confusion where Disability Group, a law firm specializing in obtaining benefits from Social Security Disability Insurance and Supplemental Security Income programs, purchased an AdWord for “Binder and Binder”, a law firm offering the same services. Finding that the AdWord constituted commercial use of the Binder and Binder trademark, the Court applied the standard likelihood of confusion analysis ruling that Disability Group had infringed Binder’s trademark.
In Jurin v. Google Inc., 768 F. Supp.2d 1064 (E.D. Cal. 2011), Jurin alleged that Google’s sale of Jurin’s STYROTRIM trademark as an AdWord to a competitor which brought up a Sponsored Link to the competitor’s website when a search using the term was conducted, created a false association. The Court held that even though Google was not a producer of the type of goods sold by Jurin, it could nonetheless be liable for false designation of origin. In last year’s letter, we reported that an earlier decision in this case (Jurin v. Google, Inc., 695 F. Supp. 2d 1117 (E.D. Cal. 2010)), ruled that because Google was not the producer of the competing product in the Sponsored Link, there could not be a false designation of origin because Google only provided advertising support for others in the plaintiff's industry. The Court stated that to the extent this conclusion ran counter to the Court's previous opinion, it is this analysis that is the correct one.
In 1-800 Contacts Inc. v. Lens.Com Inc., 755 F.Supp.2d 1151 (D. Utah 2010), the Court applied the standard likelihood of confusion test, finding no likelihood of confusion for those ads where the trademark used as a keyword did not appear in the text of the ad connected to the Sponsored Link.
Ascertaining the identity of those who illegally post copyrighted materials on the internet is difficult. In Liberty Media Holdings, LLC v. Swarm of November 16, 2010, 99 USPQ2d 1620 (S.D. Cal. 2011), 95 unknown defendants allegedly downloaded Liberty’s film using a BitTorrent peer-to-peer file sharing network. Because Liberty knew the IP addresses of the “Doe” defendants, the court granted its request to subpoena the defendants’ ISPs in order to personally identify the users.