I’ve been following the efforts of Carl Malamud and Public.Resource.Org to free the law. In short, and inadequately summarized, sometimes lawmakers incorporate by reference or otherwise make part of the law works that are subject to copyright. Thus, for example, a state may require electricians to comply with the NFPA National Electrical Code. And, for the low low price of $98, the NFPA will sell it to you.
“But, wait!” you may say, “why should I have to pay for a copy of the code when the code is the law?” And that’s the kind of thing Public.Resource.Org has been questioning. It originally bought copies of these codes and published them. And, earlier this year, they lost a law suit brought by the publishers of these codes, and they have been enjoined from publishing them. They also suffered a second defeat, in another case, last month, involving the State of George’s official, but privately published, annotated code (the code is in the public domain, but the annotations are not, despite legal reliance on the annotations).
From a due process standpoint, it is unreasonable to be held accountable for a violation of a law or code, locked up behind a copyright, especially where there is no defense for ignorance. On the flip side, the fact that code authors should have to give their works away for free just because (even though at their encouragement) some government entity adopts it as law, gives me pause.
Codes sound very law-ish by their nature that it’s easy to mentally treat them as something that shouldn’t even be copyrightable, like a phone book. But, since there is some creativity involved, with choices made as to what is safe and what is not, it probably is copyrightable. Thus, there’s no legal reason why one class of copyrightable works should be treated differently than any other. And republication would, generally speaking, be infringement.
Let’s use a different type of copyrightable work to illustrate. Assume the State of New Columbia requires all teenagers to graduate from high school. And let’s say the curriculum, as implemented by the schools and teachers, required every student to read and do a book report. One teacher chooses “Twilight” for some horrible reason, presumably related to the sorry state of our educational system. Thus, essentially by law, every student in that teacher’s class must obtain a full copy of Stoker’s ugly stepchild. Should I, then, be allowed to post a PDF of that book for any of the students to download for free, without permission of the author? Of course not. Even if she lobbied the schools. So long as the schools fairly make the book available to borrow, so students can actually do their assignment, due process should be satisfied. So, too, with the codes. So long as an electrician can fairly access and learn what he/she needs to do, that should be sufficient.
The Google Books saga is informative, and there was a fascinating article in The Atlantic yesterday that got me thinking about this again. About two and a half years ago, Google prevailed in an appeal before the Second Circuit in its case against the Author’s Guild. Google had embarked on an ambitious project to scan millions of books in order to make snippets of text available in search results. The Second Circuit found that Google’s reproduction of the works, but limited to the snippets, was fair use. This is where Google’s outcome differs from the losses of Public.Resource.Org. The latter published and made available the full texts of the codes online, unlike Google, which restricted the amount of the works displayed. This was a key distinction made by the courts.
Of course, sometimes you can republish a work wholesale for comment as fair use. And Public.Resource.Org could well prevail in these arguments on appeal. It will be interesting to watch, both for freeing the law and, if successful, for whatever else might be freed just because the government made it required reading.
In the wake of Super Bowl XLIV, Katy Pery’s backup dancer “Left Shark”, disputes among intellectual property lawyers arose as to what kind, if any, protection was available to the owners/designers of the costume. Recently, our friend, the Boozy Barrister, over at Lawyers and Liquor, became embroiled with the world of furries, which got me thinking again about the copyrightability of costumes or fursuits, as the case may be.
Much of the precedent involving the copyrightability of fursuits came out of the Second Circuit. See Chosun Int’l v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005). In Chosun, competing animal-themed Halloween costume makers fought over whether Chosun Int’l had a valid copyright to enforce. The district court dismissed, finding the costumes to be non-copyrightable useful articles. The Second Circuit reversed, remanding for a determination of whether there were elements that could be physically or conceptually separated from the costume itself. By way of example, the Second Circuit suggested the head or hands could be removed physically or conceptually from the useful, clothing aspect of the costume.
Last month, the Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017) rejected the physical-conceptual distinction utilized in Chosun. In Star Athletica, a copyright dispute arose regarding cheerleading uniforms. Varsity Brands claimed its costumes were infringed upon and Star Athletica argued that the costumes were useful articles and could not be copyrightable. Star Athletica won at the District Court, but suffered a reversal in the Sixth Circuit. The Supreme Court affirmed the Sixth Circuit decision–the graphic designs were separately identifiable and could be protected. It found that the designs could, essentially, be drawn as art and, therefore, were protected (the shape, cut, and dimensions of the uniform were not protectable). The specific test announced was:
We hold that an artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.
So, turning back to Left Shark and furries, either could be perceived as a separate work of art that is protectable. Separability might be harder to determine, as the dimensions of the shark shape or a Boozy Barrister Badger fursuit are integral to the costume itself, but this is probably not fatal. This is especially where fursonas (an actual term, though I prefer “fursonae”) may include the avatar, which can be a depiction of the fursuit in two dimensional form–a separate work of art.
Thus, a fursuit is likely eligible for copyright protection. (The Left Shark trademark dispute is really not about the costume and the trademark is really unnecessary if it is copyrightable anyhow.)
I read an interesting case over the weekend. You may recall the case of Heleen Mees allegedly stalking Citigroup chief economist Willem Buiter. She was charged with five misdemeanor counts after, it seems, an affair with the married Buiter didn’t pan out. The charges were dropped as part of a deal. However, the story doesn’t end there.
It seems that, following the criminal process, Ms. Mees intended to sue Mr. Buiter in the Netherlands for defamation. She filed an application in Federal court in New York, pursuant to 28 U.S.C. § 1782, which allows a district court, “upon the application of any interested person,” to require a person (assuming personal jurisdiction) to “give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal.” The application was denied, so she appealed to the Second Circuit.
Last week, the Second Circuit issued its decision. There are two key parts to its holding:
First, an applicant may satisfy the statute’s “for use” requirement even if the discovery she seeks is not necessary for her to succeed in the foreign proceeding. Second, the discovery need not be sought for the purpose of commencing a foreign proceeding in order to be “for use” in that proceeding.
Ms. Mees had not even begun litigation in the Netherlands and it was unclear whether she even needed what she sought to either plead her case or prove it. Yet, the 2nd Circuit ruled that her application could proceed. It was remanded to determine whether the discretionary factors under Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 259, 124 S.Ct. 2466, 159 L.Ed.2d 355 (2004) were met. As set forth in that case, the factors are:
First, when the person from whom discovery is sought is a participant in the foreign proceeding (as Intel is here), the need for §1782(a) aid generally is not as apparent as it ordinarily is when evidence is sought from a nonparticipant in the matter arising abroad. A foreign tribunal has jurisdiction over those appearing before it, and can itself order them to produce evidence….In contrast, nonparticipants in the foreign proceeding may be outside the foreign tribunal’s jurisdictional reach; hence, their evidence, available in the United States, may be unobtainable absent §1782(a) aid. …
Second, …a court presented with a §1782(a) request may take into account the nature of the foreign tribunal, the character of the proceedings underway abroad, and the receptivity of the foreign government or the court or agency abroad to U. S. federal-court judicial assistance. …Further, the grounds Intel urged for categorical limitations on §1782(a)’s scope may be relevant in determining whether a discovery order should be granted in a particular case. …Specifically, a district court could consider whether the §1782(a) request conceals an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country or the United States…. Also, unduly intrusive or burdensome requests may be rejected or trimmed. …[Internal citations omitted]
This case got me thinking. Normally, to obtain discovery in a case, one must file a lawsuit against a defendant over whom the court has jurisdiction, engage in a Rule 26(F) conference with them, and then propound discovery. One of the biggest obstacles is when you don’t know who the defendant is. Take, for example, your standard bittorrent movie download, violating the studio’s copyright. Let’s assume that actual infringement has occurred and that the studio has the right to pursue the claim. All the investigation may turn up is the IP address used to download the movie.
One of the problems raised by the defendants is that an IP address, like a telephone number, only tells you the subscriber, not the infringer. It is as if you only got the license plate number of the car that hit you, not the driver. In the MVA context, you can frequently sue the driver under a theory of negligent entrustment or vicarious liability and ultimately learn the identity of the motorist. Unfortunately, those theories might not be available in the copyright context, notwithstanding arguments to the contrary. So, what is a content creator to do? Suing the John Doe account holder might get the case thrown out when trying to obtain early discovery if the complaint does not allege facts to suggest John Doe is the infringer, rather than his roommate.
What is needed, then, is a pure bill of discovery. Some states, such as Connecticut, permit the taking of discovery before commencing an action in its own state courts. C.G.S. 52-156a. Florida, though, appears to permit it more broadly. However, both of those have limitations where the person with the information is either in a different state or if (in Connecticut’s case) the use is for an action in another court.
The Second Circuit effectively determined that a section 1782(a) application can work as a pure bill of discovery. The caveat, of course, is that the rights holder must be able to contemplate an action against the infringer outside the United States. Under the Berne Convention, it would seem generally cognizable, assuming a foreign infringer in a signatory country. Bittorrent swarms not infrequently include actual foreign infringers and domestic infringers using foreign proxies. Thus, a cognizable claim to pursue these infringers in a foreign court can be alleged; the scope of the discovery, however, need not be limited to them. Under the Second Circuit’s ruling, the rights holder could pursue discovery from a domestic ISP to identify the account holder and then directly from the account holder to identify the swarm participant, so as to potentially call the participant as a witness in the foreign proceeding that the rights holder never actually has to file. [Of course, it is a good idea to actually file abroad, especially if there is a concern that the 1782(a) application was not filed in good faith.] And, once an actual domestic infringer is identified, there is nothing to preclude bringing a domestic copyright infringement action against that person.
Now to see if anyone thinks this could work.
Comments Off on A Federal Pure Bill of Discovery | copyright | Permalink Posted by Jay Wolman
I recently wrote about the two year FBI investigation into the song Louie Louie. Read it here. The short version, some blueballed fuckhead agents and uptight feminists lost their shit at the thought that Louie Louie might be corrupting our youth.
The FBI had its theories as to what the “dirty words” were. But, they were totally wrong. Here is what the cops and the feminists thought the lyrics were:
The UK-based “virtual band” Flirt With Danger decided to release its own version of Louie Louie, not using the original lyrics, but using the lyrics that the FBI and the Junior Anti-Sex League thought the lyrics were. (source)
Gotta love that.
So who owns the copyright to those lyrics?
Inside the United States, they would be public domain. 17 U.S.C. § 105 states:
Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.
17 U.S.C. § 101 defines a government work as follows:
A “work of the United States Government” is a work prepared by an officer or employee of the United States Government as part of that person’s official duties. (source)
I would say that the faux lyrics to Louie Louie were prepared by an FBI agent as part of his official duties. That would mean that Flirt With Danger might be flirting with some kind of danger, but not the danger of a copyright infringement suit.
Well, wait a sec though…
What if the U.S. Government wants to enforce the copyright to its “work” outside the United States? It could do that. The U.S. Government work exception only applies in the United States. See S. REP. NO. 473, 94th Cong., 2d Sess. 56 (1976)). House Report No. 94-1476, p.59 (“The prohibition on copyright protection for United States Government works is not intended to have any effect on protection of these works abroad. Works of the governments of most other countries are copyrighted. There are no valid policy reasons for denying such protection to United States Government works in foreign countries, or for precluding the Government from making licenses for the use of its works abroad.”).
Therefore, the Government could assert its right to the incorrect lyrics to Louie Louie outside the USA. Flirt With Danger is a UK-based band. Do they have a problem?
Well, for starters, the FBI would have to seek to enforce its copyright against Flirt With Danger, which would be a pretty stupid public relations move. But, lets say they tried. The “US Government Works” prohibition would not be a an impediment to their infringement claims in the UK.
So now what? Lets say the FBI was that stupid.
Aha! What about authorship? Is the FBI really the “author?” Wouldn’t the “author” be the person who called the FBI and reported those to be the actual lyrics? Wouldn’t the lyrics have sprung from the dirty-mind of Mrs. Complainy-Pants?
Perhaps. But then, Mrs. Complainy-Pants would need to try and enforce her copyright in the lyrics. But, then again, you don’t have copyright until your work is in a “fixed tangible medium.”
A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.
So, Mrs. Complainy-Pants only had the lyrics in her mind. The FBI agent “fixed them.” But, did he really? Did he write exactly what she said? What if the wrong lyrics didn’t come from Mrs. Complainy-Pants, but rather from some kid at her daughter’s school? Wouldn’t he be the author?
The real story is likely lost to history – as is any claim of authorship. To the extent that any claim of authorship could ever be extracted from the jumbled mess of history, I think that our friends at Flirt With Danger are in little to no danger of a copyright infringement claim.
Horizon v. Marvel: Copyright in the Three-Point Landing?
I love copyright law, usually. Why is it there? It is there to ensure that authors and artists can profit from their work. Great idea.
Unfortunately, somewhere along the line, the concept got polluted. Originally, copyright protected works for 14 years, with a renewal period of 14 years. After a number of changes, we’re now up to a term that is the entire lifetime of the artist plus another 70 years. Nuts. This has created all kinds of problems with “orphaned works” — works that nobody publishes, people want to read, but they can’t — because copyright.
Come at us bro!
Another issue arises when we have copyright privateers – when plaintiffs clearly don’t have any claim that has anything to do with incentivizing new works, but they sue anyway.
Don’t get me wrong, these are not what you would call “frivolous” claims. Why not? Because they work. Federal courts have increasingly provided such expansive interpretations of copyright protection, that it is a big welcome mat to anyone with one of these expression-stifling claims. For example, the law surrounding sampling has really grown out of proportion. And, the recent “Blurred Lines” case shows where copyright has run amok. (For more, read The Asshat in the Rye)
Well, here we go again. In this circumstance, we have an infringement case involving Marvel Comics — and comic books, almost by design, use common ideas and themes all the time. In a recent complaint, we have essentially a claim based on the “three point landing”. See Horizon Comics Prod. v. Marvel Ent., LLC, No. 15-11684 (Mass. Apr. 23, 2015).
Horizon Comics, owned by the Lai brothers who also happen to be employees of Marvel, asserts that Marvel’s reinvention of the Iron Man character in its 2013-2015 theatrical releases infringes upon and undermines their copyright in characters from the Horizon comic Radix, originally released in 2001. Horizon claims that Marvel, without permission, took its (grey, mind you) fully armored suits and fitted them for the new Iron Man (red and gold) look, as “ the comic typically depicted Iron Man wearing simple spandex-like attire and minimal armor.” Id. at 11. Horizon further contends that it claims copyright on the three point landing. Perhaps in the future they would narrow this to the three-point landing specifically while wearing armor and leaning on their left hand , though that certainly wouldn’t be original enough either. In any case Horizon seeks redress against Marvel’s theft of the “fully mechanized suit of body armor” and the three-point landing depicted in the Iron Man Movie Poster.
Neither mechanized body armor nor the three-point landing are new to the comic world. For armor, characters of note may include Master Chief from Halo, Batman, Transformers, and perhaps the Pacific Rim comic release that coincided with the movie in 2013. Horizon seeking to profiteer here would mean that they could, I suppose, seek redress against DC for Superman’s occasional adaptation of the pose, or other places in the Anime realm including characters from Kuogane Pukapuka Tai and Naruto (which has been around since 1997). Although one may think to consider that three-point landings of note include Black Widow and Spiderman, both Marvel characters begs the question does Marvel favor the three-point stance, and did this fancy come about after Lais’ involvement?
Either way, the three-point stance and the armored wardrobe cannot so simply be claimed by the Lai brothers. We should reflect on this as an example of how not to use our lawyering super powers to crush the comic realm into copyright compliance. Copyright indeed should, though it doesn’t always, cover creative and novel characters in comics, books, and movies, though we must draw the line at common tropes used to further artistic invention.
The Three Point Landing is such a cliché at this point that I hardly think it could be deemed copyrightable. See, e.g., Herzog v. Castle Rock Entertainment, 193 F.3d 1241 (11th Cir. 1999) (holding that plaintiff failed to establish substantial similarity between two films portraying detectives investigating murder in small town. The court reasoned “scenes a faire, ‘sequences of events which necessarily follow from a common theme,’ are not protectable.”)
Unfortunately, this case shows where the problem lies with copyright. I’m no copyright abolitionist. I think that real infringement should be hit with real penalties. But, cases like this are the cancer within copyright — the cancer that threatens to eat creativity. The cancer that threatens to use copyright law to stifle free expression.
You remember that episode, where Michael Scott declares bankruptcy?
Keep that in mind for this lesson, kids.
This happens to all of us, from time to time. A lawyer sends you a letter with some threatening language on it that he thinks accomplishes his goal of making it “confidential.” You know, like this:
CONFIDENTIAL LEGAL NOTICE
PUBLICATION OR DISSEMINATION IS PROHIBITED
The correct legal response is “suck my ass” or whatever you want to say. Ok, fine, how about “your point is invalid”. Let’s go with that. It is nicer, after all. And I’m all about being nice.
Now here’s one thing you can rest assured of: If someone puts that foolishness on their letter, it is because they’re afraid of that letter getting out there. They can’t possibly have confidence in what’s in it. Look, I write a letter, I expect that it might wind up getting slapped on Simple Justice, with Greenfield making fun of it. Even then, I can’t seem to catch every typo. But you know what? If my name is on it, you can bet your ass that I’ll own it.
And here’s why you can make the chucklefuck who signed YOUR letter own it by publishing the shit out of it, if you want.
For starters, saying “This letter constitutes confidential legal communication and may not be published in any manner.” is about as legally compelling as Michael Scott yelling “I DECLARE BANKRUPTCY.” Lawyers do not have magic powers that turn letters into confidential communications. You’re more likely to find a lawyer who can turn water into funk than a lawyer who has the magic spell to make a letter confidential. Sure, there might be some rules that make them inadmissible for certain purposes in litigation. But, you wanna share that letter? Go right the fuck ahead. Unless you’ve agreed to confidentiality, it ain’t confidential.
When I get one, I usually email the other guy and say “I’m not going to respect your request for confidentiality.” I give them a chance to support their position. When they don’t, I ask them if they want to give me something in exchange for confidentiality. So far, no takers.
Then, they realize “holy flaming peckerballs, this Randazza character can see right through the I DECLARE CONFIDENTIALITY trick! Randazza has spell capability? FUCK, he’s not a fighter, he’s a goddamned level 9 Ranger, and he’s got Druid spells! HE JUST CAST THE ‘SEE THROUGH BULLSHIT’ SPELL!!!!!
I know, it’s my intellectualize proprietary res judicata!
So then they try again…
“Aha, smart ass. That letter is COPYRIGHTED! I hereby throw the spell of Title 17!”
Bush. League. Shit.
If someone pulls that on you, they’re even more full of shit than the guy who just tries the I DECLARE CONFIDENTIALITY spell.
Dumbass rolls a 2.
Here’s why:
It is no secret that the film, The People vs. Larry Flynt is one of my favorite movies of all time. It was required viewing in my classes, back when I did the lawprof thing. New hires need to watch it at my firm. You need to watch it.
Most of my readers are fully aware of the Supreme Court case depicted in the film. However, the lesser known case, mentioned for all of 30 seconds in the film, is the Hustler v. Moral Majoritycountersuit.
In that case, Jerry Falwell took the “Jerry Falwell Talks About His First Time” Campari parody and sent it to his Moral Majority minions — soliciting donations. Falwell took the entire copyrighted work and used it for a blatantly commercial purpose.
One of Falwell’s top executives conceded that the inclusion of a copy of the ad parody was part of a “marketing approach” to fund-raising, and the court can safely assume that this strategy involved encouraging the faithful to donate money. Hustler v. Moral Majority, 606 F. Supp. 1526, 1534 (C.D. Calif. 1985).
However, the court also found that he was not using the ad to elicit support for purely commercial gain, but even if he was, this did not dissolve his fair use defense.
[T]he court must also consider whether “the alleged infringers copied the material to use it for the same intrinsic purpose for which the copyright owner intended it to be used.” Marcus, 695 F.2d at 1175; Jartech, Inc. v. Clancy, 666 F.2d 403, 407 (9th Cir.), cert. denied 459 U.S. 879, 74 L. Ed. 2d 143, 103 S. Ct. 175 (1982) (same); see Italian Book Corp. v. American Broadcasting Companies, 458 F. Supp. 65, 70 (S.D.N.Y. 1978) (fair use generally sustained if defendant’s use not in competition with the copyrighted use). Under this principle, defendant’s use is more likely to be considered fair if it serves a different function than plaintiff’s.
…
In distributing the parody Falwell evidently meant to provoke the anger of his followers and to comment on the level of obscenity in the work.
The C.D. of California also pointed out portions of the Copyright Act’s legislative history, upon which a re-poster of a demand letter can rely:
The court discerns additional support for Falwell’s position in the legislative history to section 107. The House Report states: “When a copyrighted work contains unfair, inaccurate, or derogatory information concerning an individual or institution, the individual or institution may copy and re-produce such parts of the work as are necessary to permit understandable comment on the state-ments made in the work.” House Report, supra, at 73. It would thus be consistent with congressional intent to find that Falwell was entitled to provide his followers with copies of the parody in order effectively to give his views of the derogatory statements it contained.
Accordingly, when a law firm sends you a cease and desist letter accusing you of illegal activity, you can use that letter to provide your own supporters with copies of it in order to effectively give your own views on the issue — and to gather support for your cause. And… to make fun of that shit (because making fun of buffoons is classic fair use)
The legal landscape for I DECLARE CONFIDENTIALITY gets even more gloomy as we continue to read the Hustler case. The First Amendment rears her sexy pouty slutty face. (Yes, I want to bang Lady Liberty. Its a fetish. Constitutional cosplay anyone?)
First amendment considerations also enter into the court’s assessment of the purpose and character of defendants’ use. Although the first amendment does not provide a defense to copyright infringement, when an act of copying occurs in the course of a political, social or moral debate, the public interest in free expression is one factor favoring a finding of fair use. See Keep Thomson Governor Committee v. Citizens for Gallen Committee, 457 F. Supp. 957, 959-60 (D.N.H. 1978) (political committee’s use of a portion of rival candidate’s musical composition amounted to fair use in light of public interest in full debate over election and absence of injury to plaintiff). Cf. Robert Stigwood Group Limited v. O’Reilly, 346 F. Supp. 376, 383-84 (D. Conn. 1972), (priests’ un-authorized copying of rock opera, “Jesus Christ Superstar,” was not fair use where facts did not support defendants’ contention that their performance was counterattack to original’s “perverted” version of the Gospel), rev’d on other grounds, 530 F.2d 1096 (2d Cir.), cert. denied, 429 U.S. 848, 50 L. Ed. 2d 121, 97 S. Ct. 135 (1976).
Similarly, anyone who receives a cease and desist letter, from any lawyer (including me) can certainly claim that there is a debate at hand. Without the debate, there would be no complained-of statements or actions. It does not take Justice Brennan to see the First Amendment protection inherent in the republication of a demand letter in this context.
The purpose of copyright is to create incentives for creative effort. Even copying for noncommercial purposes may impair the copyright holder’s ability to obtain the rewards that Congress intended him to have. But a use that has no demonstrable effect upon the potential market for, or the value of, the copyrighted work need not be prohibited in order to protect the author’s incentive to create. The prohibition of such non-commercial uses would merely inhibit access to ideas without any countervailing benefit. Sony Corp. v. Universal City Studios, 104 S. Ct. 774, 793 (1984)
Under the “harm to the market for the original” prong of fair use, if the defendant’s use would tend to diminish sales of the plaintiffs work, then the factor can count against the defendant. However, that only applies if it would supplant the marketplace for the original. For example, if I copied a demand letter and used it as my own, then I might be committing copyright infringement. On the other hand, if I use the demand letter to ridicule the author, and the result of that ridicule is that consumers form the opinion that perhaps it would not not be a wise choice to select that lawyer to represent them, that is protected speech.
Let us return to Hustler v. Falwell:
The court has carefully considered all the evidence placed before it in light of the factors set out in section 107. It concludes that the “‘equitable rule of reason ‘ balance,” Sony Corp., 104 S. Ct. at 795, tilts sharply in favor of a finding of fair use. Any other result would mean applying the copyright laws in an inflexible manner and ignoring fundamental considerations of fairness. The ad parody was a satire about Falwell. He was entitled to use it as he did.
Exactly. The cease and desist is an instrument of attack upon the recipient. Any court that would find that this is copyright infringement should be reversed or impeached.
Okay counselor, but do you have a case that is exactly on point?
As a matter of fact, I do.
In Online Policy Group v. Diebold, the Northern District of California held that “fair use is not an infringement of copyright.” This is a slight tilt from the more common “fair use is an affirmative defense” logic. The N.D.Calif. held that the copying of the copyrighted materials (Diebold email archives) was so clearly fair use that “[n]o reasonable copyright holder could have believed that [they] were protected by copyright.” The court in that case held that a DMCA notice and take down was defective and that the sender was liable for material misrepresentation. § 512(f) FTW.
Conclusion
In short, while this is not legal advice, I’d say that if you want to reproduce a cease and desist letter as an act of self-defense or criticism, you should feel comfortable that the fair use defense will back you up.
And if you are the author of a cease and desist letter, don’t write anything that you don’t want the entire world to see.
Bottom line, no court has ever held I DECLARE CONFIDENTIALITY to be valid, nor has any court supported the “DON’T MAKE FUN OF ME BECAUSE COPYRIGHT” position – but an undisturbed case, relying on mountains of precedent, refutes it.
Short version of the story: Lena Dunham wrote a book in which she arguably wrote about doing some sketchy shit with her little sister. Truth Revolt wrote about it. The quotes from the book back up the Truth Revolt article. Dunham got all snippy about it. (source)
Its not stupid that she did it. She was a child. Ok. I can live with that. Its not even stupid that she wrote about it. Respect to her. (Ok, not really, book sounds like a piece of shit) But, what the monkeys-eating-their-own-feces-fuck was she thinking in authorizing a law firm to make a stink about it? Stupid. Well, unless they had a meeting and said “hey, Lena, want us to totally fiddle-fuck you by making you look like an asshole? Well then, have we got a plan for you!” If that happened, then GENIUS!
This article constitutes confidential legal communication and may not be published in any manner.
Germany has limited individual piracy penalties to about $1,300 a pop. (source). On one side, I think that’s a reasonable penalty for stealing a song or a movie. On the other hand, it isn’t if there are procedural hurdles to actually being able to enforce even that low amount. I don’t know German civil procedure, so no idea on that.
(From Charles Platt) Is this a real threat, or just posturing? The ADA has already been extended far beyond the areas in which is was first designed to apply. I can certainly imagine regulations compelling web sites to be “equally accessible” to the disabled. Discussion here.
No matter your opinion on U.S. copyright law, it is the law of the land. Copying a work without consent may be unlawful and subject the copier to damages. On this blog, and others, we’ve seen instances of legitimate and illegitimate copyright claims.
An entirely separate issue is the manner by which copyright claims are enforced. In the U.S. District Court for the Central District of California, there have been concerns raised regarding certain attorneys, their firms, and (as the judge termed it) their “shell” companies. Yesterday, a hearing was held at which certain non-appearing attorneys affiliated with Prenda Law were invited to attend, as well as an attorney formerly associated with that firm. Ken White at Popehat attended and his writeup is here: http://www.popehat.com/2013/03/11/brett-gibbs-gets-his-day-in-court-but-prenda-law-is-the-star/
This is a case in which the Plaintiff even dismissed the case against the Defendant, but the Court is exploring whether there was fraud committed by the Plaintiff or its counsel in consolidated and related matters. Hearings like this generally do not occur, and apparently the non-appearing attorneys affiliated with Prenda appeared by counsel, rather than in person, which may have violated the court’s order (although they made a last-minute filing arguing they could not properly be compelled to attend). What is particularly interesting is that the subject lawyers and Plaintiffs have been intimately involved with the development of how Bittorrent claims are prosecuted, including early discovery orders, mass joinder, etc. Of note, it has become practice for a content provider to sue John Does, because all that is available is the IP address used to access a covered work. A subpoena is issued to the ISP, who may provide the identity of an account holder. Common practice is then to make a demand on the account holder or amend the complaint to identify them by name. Of concern by this court and others is that the account holder may not be the infringer. A content provider may need to engage in further discovery and investigation to find out who may have had access to the internet connection prior to naming the person as defendant. Recent rulings have suggested that just as you cannot simply sue the person who owns a telephone for a call that may have given rise to liability, you must sue the caller, you cannot simply sue the internet account holder. This court has questioned the Plaintiff’s and its attorneys’ efforts in identifying the infringer. Additional procedural concerns are raised in this case over who financially benefits in the litigation and how content has been transferred.
Lee Cheng, Chief Legal Officer of online retailer Newegg, said:
“A troll is a type of entity that doesn’t sell a product, or transfer value of any sort. All they offer is the right to not be sued. It’s protection money. To put it bluntly, it’s extortion.” (source)
Righthaven produced nothing but lawsuits. The term is properly applied to them. Porn companies, record companies, and other companies trying to stop infringement, or trying to recoup losses from infringement are not properly so-labeled.
FOR YOUR INFORMATION, THE SUPREME COURT HAS ROUNDLY REJECTED PRIOR RESTRAINT!!!!!
As some of you remember, Raanan Katz sued Google and others for copyright infringement this summer over a Blogger user’s publication of an “unflattering” photograph of him. Today, popular sports blog Deadspin has the story.
Beyond the copyright suit, the Deadspin piece goes on to discuss a Florida trial court’s order in separate, concurrent litigation that Katz has brought against the same defendant as his copyright suit.
This is a very complicated case. You know a lot of ins, a lot of outs, a lot of what-have-yous, but in particular, Deadspin addresses a decision by Florida’s 11th Judicial Circuit enjoining the defendant from writing further about Katz, since what the Defendant has written thus far is “arguably defamatory.” (source.)
Excerpt from Escobedo v. THQ Inc. lawsuit including “signature moment” shot allegation.
A tattoo artist sued THQ, Inc., the makers of a UFC themed video games, for copyright infringement. The artist tattooed a lion on Carlos Condit’s torso, and claims that it was his original creation. (Complaint at 12) The artist alleges that he created the original design, and owns a registration for the copyright to the design. (Compl. at 16). He claims that by using the work in a video game, depicting Carlos Condit, THQ infringed upon his copyright in the work.
The artist’s attorney said, in a press release,
“People often believe that they own the images that are tattooed on them by tattoo artists,” explains Speth. “In reality, the owner of the tattoo artwork is the creator of the work, unless there is a written assignment of the copyright in the tattoo art.” Escobedo and Condit never had a written agreement. Thus, claims Escobedo in the lawsuit, he remains the owner of the copyright over the image he drew.(source).
Nothing in this statement is false, but that doesn’t mean that this gets you to the correct answer. Here is the correct answer:
1. Ownership of the copyright: If the tattoo artist designed the tattoo, unless the tattoo artist signed a “work for hire” agreement, then the copyright in the tattoo is, presumptively, his intellectual property. No question about it. Therefore, I can’t take a copy of that tattoo and make posters of it. Nor can Condit. I can’t re-license it to other people. On ownership of the copyright, I think the artist wins, hands down.
But, that doesn’t mean that he wins the case.
2. Fair Use: I see very little room to argue that THQ’s use is not fair use. THQ has the right to use Condit’s likeness. That likeness happens to have been augmented with someone else’s copyrighted work. The copyright owner can no sooner prohibit this use than he can prohibit me from using it demonstratively as I have in this piece (doubly so, since I clipped it from his complaint). THQ can’t accurately depict Condit without the tattoo. THQ can not be prohibited from depicting Condit accurately, just because the artist wants more money.
That said, there might be some theoretical claims, but not against THQ.
Condit himself might (I stress MIGHT) have some liability. This is a highly theoretical argument – but I presume that Condit got paid for the right to use his likeness in the video game. Lets say that the agreement has a clause that states that Condit has the legal ability to transfer or license all relevant rights. There *might* be an argument that Condit did not have the right to assign the rights to the ink, and thus the artist gets a portion of Condit’s profits. Again, theory here, and not likely. But, if I had to save the case, I’d argue that.
Right of Publicity: The tattoo has now become part of Condit’s persona. So, could copyright actually limit his right of publicity? Again, an interesting egghead argument to be merged with #3, but essentially, if the artist prevailed against Condit, it would mean that anyone who gets a tattoo without a work for hire agreement has mortgaged a certain portion of their publicity rights to the tattoo artist. I am not seeing that as a winning theory.
Bottom line: Fair use, artist loses. Creative arguments could revive the case under some exotic uses of state law claims, which would (at best) be against Condit, and for a small fraction of what Condit himself earned, but even then, I can’t see them carrying the day.
In May of 2010, Thomas Privitere and Brian Edwards, a gay couple, hired a photographer to take pictures of the two men in a New York City park. Their favorite photograph displayed the two men kissing and holding hands with the Brooklyn Bridge in the background. The couple liked the picture so much that they posted it on the Internet as their engagement photo.
Cut to Spring of 2011: Public Advocate of the United States, a conservative nonprofit, needed a photograph for a political flyer to take a Republican State Senator from Colorado to task for voting to approve same-sex civil unions. Public Advocate ran across Privitere’s and Edwards’ engagement photograph on the Internet. Presumably, the nonprofit believed Coloradans would find an image of two men innocently and chastely kissing inherently gross, and decided to use the photo for its attack ad. Before doing so, Public Advocate doctored the image – removing the Brooklyn Bridge and replacing it with imagery reminiscent of a Colorado mountaintop.
Unsurprisingly, Privitere, Edwards, and their photographer were not flattered when they discovered that the couple’s engagement photo had been used by a right wing “think tank” to appeal to Colorado voters’ homophobia. Earlier this month, the three filed suit against Public Advocate in federal court for copyright infringement on the photograph and misappropriation of the couple’s likeness.
Public Advocate’s use of the engagement photo should certainly be morally reprehensible to any reasonably tolerant person, and the photographer appears to have a very strong copyright infringement claim against the nonprofit. Public Advocate has no real fair use defense here. The political mailer was not meant to criticize or parody the original photograph. Instead, it was meant to denigrate a politician’s views on same sex marriage or civil unions.
However, were the couple’s rights of publicity violated? That question is a much harder one and could likely swing either way should this case proceed to trial. Rights of publicity laws are generally intended to protect persons from the unauthorized commercial use of their likenesses. For example, Nevada’s rights of publicity laws define “commercial use” as being “for the purposes of advertising, selling, or soliciting the purchase of any product, merchandise, goods, or service.”
Here, Public Advocate has a strong argument that the flyers that it produced were purely political speech protected by the First Amendment. The organization was not attempting to use the photograph for any commonly recognized “commercial” purpose. Rather, it was using the image to advance its objection to homosexual civil union.
On the other hand, Public Advocate’s own website proclaims that some of its primary goals are to provide “strong and vocal opposition” to “[s]ame sex marriage and the furtherance of so-called ‘Gay Rights’” and to decry the “mainstream media’s promotion and glorification of . . . homosexuality.” (Public Advocate is the organization that infamously compared same-sex unions to state-sanctioned bestiality, and claimed that allowing gay men to serve in the Boy Scouts was akin to “being an accessory to the rape of hundreds of boys.”) Its website prominently asks social conservatives for contributions so that it might continue spreading its message to the masses. If a court were to view the political mailer containing the doctored photograph as, in part, a solicitation for increased funding, the requisite “commercial use” may very well be present.
The Innocence of Muslims seems to be the place wehre really stupid free speech positions intersect with the Arab-Israeli conflict.
In the latest installment, we have the dumbest copyright infringement suit filed by anyone whose name does not end in “haven.”
Actress Cindy Lee Garcia appeared in the now-infamous online film “The Innocence of Muslims.” She first filed a lawsuit in California state court, trying to get a state judge to order YouTube to remove the film from publication. (Complaint) She claimed that the director told her that she would star in a “desert adventure film,” but the actual movie was one in which the Prophet Mohammed appeared to perform cunnilingus on Garcia’s character. The state court judge refused to pull the film, and opined that Garcia was not likely to prevail on the merits of her lawsuit. (Order). Garcia then dropped her case and re-filed in federal court. Her complaint is attached. [PDF]
For the purposes of this piece, let us presume that Ms. Garcia was indeed duped and that she had no idea that she was going to appear in such a movie. If that is the case, she might have claims for fraud; she might have claims for unfair business practices; she might even have a valid claim under some other theory.
However, this article is about the truly moronic claim that her lawyers decided to bring – copyright infringement.
Before we even get into that claim, let’s take a look at the press release that came out along with the complaint. I guess her lawyers live by the credo of making sure to yell “look y’all, watch this!” before doing something completely stupid.
“We are seeking the legally appropriate mechanism and the least politically controversial one to allow Google and YouTube to do the right thing,” according to M. Cris Armenta, counsel to Ms. Garcia. “Again, this is not a First Amendment case. But, the First Amendment does protect American’s [sic] rights to freedom to express, and also the right to be free from expression.” In Ms. Garcia’s case, the words that were dubbed over her performance were not hers and she finds them personally and profoundly offensive. Ms. Garcia has publicly stated worldwide, including in live broadcasts to Middle Eastern television stations that she does not condone the message in the film and would never willingly participate in such a hateful venture.
You get that? This is not a First Amendment case. Why not? Because M. Cris Armenta says it isn’t. That might make her feel better as she is sitting around her conference room table, but it doesn’t make it so. Of course, someone with their head so far up their ass that they believe that the First Amendment protects “the right to be free from expression,” probably looks really funny sitting at a conference room table – what with the head in the ass and all.
Ms. Garcia “filed an application for a federal copyright registration for the rights in her dramatic performance ‘Desert Warrior.'” (Complaint at ¶ 11) Further, she “has issued five DMCA ‘takedown notices’ to Defendants YouTube and Google.” (Complaint at ¶ 13) But let us all remember, “this lawsuit is not an attack on the First Amendment, nor on the right of Americans to say what they think, but does request that the offending content be removed from the Internet because not only is it not speech protected by the First Amendment, it violates Plaintiff Garcia’s copyright in her performance.” (para 29) How convenient. It is not an “attack on the First Amendment” because Ms. Garcia’s lawyers cleverly simply declare that the content is “not speech.” Meanwhile, I guess that she owns the copyright in the film because she filed an application for a registration.
The press release sent out by Garcia’s lawyers claims that the attorneys responsible for this monstrosity were “previously affiliated” with Skadden Arps Slate Meagher & Flom LLP and both are former federal law clerks. What does that tell you? Being at the top of your class doesn’t mean that you don’t have shit for brains. Those of you attending TTT law schools take note. While chances are that your counterparts at the T14 did better on the LSAT, it doesn’t mean that you can’t wipe the floor with them when it comes to really practicing law.
Ms. Armenta and Ms. Sol’s complaint really is a piece of crap that no worthwhile attorney would have signed. Not only do the claims expose them as abject idiots, but the complaint exposes their client to a serious potential downside. First and foremost, Ms. Garcia most certainly does not own the copyright that she claims to. Thus, she does not have standing to bring this claim under the Copyright Act. This is not some obscure issue that it takes an IP law expert to figure out, but is clear from the plain language of 17 U.S.C. § 501(b), limiting actions for infringement to legal or beneficial owners of a registered work. When you don’t own anything, you don’t get to sue. Incredibly, Garcia filed suit in a court residing within the Ninth Circuit – which means there’s a small mountain of precedent examining this exact issue with a fine point. Sybersound Records, Inc. v. UAV Corp., 517 F.3d 1137, 1146 (9th Cir. 2008); Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 889-90 (9th Cir. 2005); Righthaven LLC v. Hoehn, 792 F. Supp. 2d 1138 (D. Nev. 2011).
Welcome to the Pwn-Dome.
An actor’s performance in a film is not an independently copyrightable work. I am surprised that these two attorneys are unfamiliar with this rule of law. They might be well-served to review Aalmuhammed v. Lee, 202 F.3d 1227 (2000). You know, the case that is in pretty much every single copyright textbook published since before the Clinton administration ended. Jesus fucking christ, is it so much to ask that someone take a copyright course before filing a copyright infringement lawsuit?
Anyhow, back to Aalmuhammed v. Lee: In that case, Mr. Aalmuhammed contributed a significant amount of work to the Spike Lee movie, The Autobiography of Malcolm X. Mr. Aalmuhammed sought to be deemed to be a co-author of the film. However, the Ninth Circuit held:
Aalmuhammed did not at any time have superintendence of the work. Warner Brothers and Spike Lee controlled it. Aalmuhammed was not the person “who has actually formed the picture by putting the persons in position, and arranging the place ….” Spike Lee was, so far as we can tell from the record. Aalmuhammed, like Larson’s dramaturg, could make extremely helpful recommendations, but Spike Lee was not bound to accept any of them, and the work would not benefit in the slightest unless Spike Lee chose to accept them. Aalmuhammed lacked control over the work, and absence of control is strong evidence of the absence of co-authorship.
Under the law, the director of the film (and not any other contributor) is the author of the work. Not the consultants, not the actors, and not the guy who brought everyone coffee. If it were otherwise, then every actor or anyone else who had any part in the creation of the film would then engage in a feeding frenzy over who actually owned the rights to the film. For a creative work, the author, and not “helpers” owns the copyright.
The Aalmuhammed court stated:
The Constitution establishes the social policy that our construction of the statutory term “authors” carries out. The Founding Fathers gave Congress the power to give authors copyrights in order “[t]o promote the progress of Science and useful arts.” Progress would be retarded rather than promoted, if an author could not consult with others and adopt their useful suggestions without sacrificing sole ownership of the work. Too open a definition of author would compel authors to insulate themselves and maintain ignorance of the contributions others might make. Spike Lee could not consult a scholarly Muslim to make a movie about a religious conversion to Islam, and the arts would be the poorer for that.
The broader construction that Aalmuhammed proposes would extend joint authorship to many “overreaching contributors,” like the dramaturg in Thomson, and deny sole authors “exclusive authorship status simply because another person render[ed] some form of assistance.” Claimjumping by research assistants, editors, and former spouses, lovers and friends would endanger authors who talked with people about what they were doing, if creative copyrightable contribution were all that authorship required.
The arts would certainly be more impoverished if every director had to contend with every actor, especially any actor who is disgruntled, claiming copyright in the film and thus, the right to suppress the film’s publication. ‘Cause that is what this is really about: suppressing the publication of the work. It has nothing to do with an “author” claiming her rights under Art. I, Sect. 8, of the Constitution or Title 17.
Remember that? The Constitution? It grants “authors” the right to profit from their works. The Copyright Clause was not put there so that Ms. Garcia could use it as a tool to try and deal with actress regret.
If she’s going to regret anything, it very well may be filing this case. Remember those consequences I mentioned above? Yeah, they can bite her in the ass pretty hard. If Mr. Nakoula has counsel that is even remotely competent, the first thing he will do is file a special motion to strike under California Civ. R. Pro. 425.16, the California Anti-SLAPP Statute. While this statute does not stop discovery in its tracks in federal court, the way it does in state court, it still places the fear of a quick dismissal and attorney’s fees on Garcia’s head. Furthermore, the Copyright Act, under 17 U.S.C. § 505 provides for prevailing party attorney’s fees. There is no way that Garcia can non-fraudulently claim a copyright interest in the motion picture. How her lawyers missed that is beyond me. If I were judging this case, she still might win (on some of her claims) but in the end, the Plaintiff would be the one writing a check.
Ms. Armenta and Ms. Sol have walked their client into a buzzsaw. They clearly either have no idea what they are doing when it comes to copyright law, don’t care what they copyright law is, or have some other ulterior motive for bringing this claim. Whatever their motivation, this is one of the dumbest copyright infringement suits I have ever seen. For the love of god, if this happens to wind up in front of their eyes, I have a message for them: STOP. FIND SOMEONE WHO KNOWS WHAT THE FUCK THEY ARE DOING TO HELP YOU.
While Mr. Nakoula does not seem to be the most savory guy in the world, sometimes the bad guy wins. In this case, I certainly hope that he gets competent counsel, because this complaint deserves to be met with an anti-SLAPP motion and an award of attorneys fees heaped upon Ms. Garcia’s head. Otherwise, other idiots will see it and be emboldened to bring even more idiotic litigation into our already crowded federal courts.
This blog often features articles on developments in § 230 of the Communications Decency Act, or the Digital Millennium Copyright Act, but the significance – and nuance – of such rulings may not be immediately appreciable to many readers. Hopefully such posts are helpful to lawyers. However, they are important to non-lawyers and even only casual users of the Internet. In order to provide retroactive context to those articles and background for future ones, we provide this brief history of Internet-related laws.
…
In the two decades since the Internet reached large-scale consumer adoption, its role in business, recreation and every facet of life has been largely taken for granted. However, it interacts with the law in a number of ways that some might not expect. With services such as Google, Facebook and YouTube thoroughly integrated with every facet of life – with established brands as banal as Tide laundry detergent vying to be “liked” by you on facebook, to political campaigns posting videos directly to the user-generated video site – that it is easy to overlook the patchwork of federal law that allows the internet to operate.
Federal law embraced the internet with some of its existing measures, such as the Cable Privacy Act of 1984, 47 U.S.C. § 551 (requiring cable companies – which have today become internet service providers including Time Warner and Comcast – to provide notice to subscribers before turning over personally identifying information pursuant to a lawful subpoena). This law remains particularly significant in protecting anonymous activity and speech online, ranging from blog comments to the use of BitTorrent – all of which can be done without behind an IP address until the user’s internet service provider is subpoenaed and provides notice to its customer that his or her personally identifying information will be produced unless the subpoena is quashed.
Criminal law has also been instructive in shaping the law of the internet. The Stored Communications Act, 18 U.S.C. §§ 2701-2712, prohibits service providers such as Google and Facebook from turning over users’ passwords and internal messages (such as messages and chat logs from one Facebook user to another) without a court order. Additionally, hacking – a topic given great attention in the 1990s, but still persisting today – was made punishable with both criminal and civil penalties by 18 U.S.C. § 1030.
Perhaps the greatest tool of all for the internet, though, has been Section 230 of the Communications Decency Act, 47 U.S.C. § 230. Section 230 immunizes service providers like Yahoo and Google for the acts of its users. When someone opens a blogspot blog that allegedly defames someone, it is not Google’s fault – rather, liability falls on the shoulders of the blog’s author. Similarly, message board operators are not liable for the torts of their users who may post tortious material to the website. If they were, services such as Yahoo’s finance message boards and (unintentionally hilarious) Yahoo Questions would have never taken off. This protection is not vitiated if a web service edits or deletes a user’s submission. 47 U.S.C. § 230(c)(2).
While courts have consistently upheld § 230’s protections for online service providers, the law has not been an absolute shield. Where a site creates its own content that is tortious, then the service can be held liable. Similarly, if the site requires a user to post tortious material as a condition of using its service, then the site is not afforded § 230 protections. Fair Housing Counsel v. Roommates.com LLC, 521 F.3d 1157, 1166 (9th Cir. 2008) (“By requiring subscribers to provide the information as a condition of accessing its service, and by providing a limited set of pre-populated answers, Roommate becomes much more than a passive transmitter of information” and thus not entitled to § 230’s immunity). For pure social media sites, § 230 provides valuable immunity against litigation from angry parents and the thin-skinned. In states with strong anti-SLAPP statutes, § 230 has worked in tandem with these laws to create a fortress around internet companies, protecting them from common law claims and requiring parties with attorneys foolish enough to bring these claims to pay the companies attorney’s fees in most cases. (California and Seattle, where numerous social media companies are based, allow defendants to recover attorneys’ fees incurred in successful anti-SLAPP motions).
There is, however, one hole in § 230 – it expressly does not apply to intellectual property claims. 47 U.S.C. § 230(e)(2). Thus, online service operators were potentially liable for hundreds of thousands of dollars in damages if their users copied and distributed copyrighted content on their sites. In 1998, however, Congress enacted the Digital Millennium Copyright Act (“DMCA”) to combat this problem. 17 U.S.C. § 512. Within this legislation, Congress granted certain entities, such as internet service providers, immunity from infringement as transitory networks where the infringing data does not reside – but it imposed burdens onto both web hosts, web sites and even right holders.
For most self-hosting bloggers and other internet users, the DMCA is fairly straightforward. The service provider must register an agent to receive DMCA notices with the U.S. Copyright Office for $105, which is listed in an online registry of DMCA agents. When receiving a proper DMCA take-down notice under 17 U.S.C. § 512(c)(3)(A), the service operator must remove the infringing content within a reasonable period of time, or risk being held liable for infringement. The DMCA take-down process requires rights holders to seek out instances of infringement and send notices to infringers, but unlike a lawsuit for infringement, does not require the right holder to obtain a copyright registration certificate (or, in some circuits, merely an application).
While many small website operators do not comply with the DMCA, rights holders often send DMCA-compliant take-down notices, which are honored with the removal of allegedly infringing content. For large services that stake their entire existence on user-submitted content, however, complying with the DMCA becomes remarkably more complicated. For a service such as YouTube (or, more in your author’s practice area, a “tube site” containing pornography) the DMCA takes no complex new dimensions that are still unsettled despite the DMCA being more than a decade old, and the user-generated segment of web entertainment not being significantly younger.
For instance, the Second Circuit’s recent decision in Viacom v. YouTube, vacating many of the Southern District of New York’s 2010 conclusions about how the DMCA operates, has created significant uncertainty about the meaning of 17 U.S.C. § 512(c)(1). For a service such as a large “tube” site, particularly one that monitors its submissions to avoid unlawful or inappropriate content, there is a question as to what is required in addition to a DMCA take-down notice to constitute “actual notice” of infringement, or “facts or circumstances from which infringing activity is apparent.” Id. The Second Circuit’s decision also re-opens the question of what constitutes the “right and ability” to control infringing material: Namely, whether this standard is contiguous with the same standard articulated in the doctrine of vicarious copyright infringement, or subject to a different, DMCA-specific standard as previously found by the Southern District of New York (requiring “specific knowledge” of infringement in order to have the right and ability to control it).
The DMCA contains additional twists and turns for both service operators and rights holders. If a service provider has users who consistently engage in copyright infringement, it must ban them in accordance with an established, publicized policy to terminate these repeat infringers. 17 U.S.C. § 512(i). Additionally, there is a question as to what constitutes an effective termination – while banning by e-mail address may satisfy the procedural requirements of this provision, the ease of creating new e-mail addresses ensures that this action would fall short of substantively fulfilling it. Service operators must also act as an ombudsman for counter-notifications seeking the reinstatement of non-infringing content under § 512(g)(3).
For right holders, fair use of the copyrighted work must be considered before sending a takedown notice. § 512(c)(3)(A) (requiring “good faith belief” of infringement and signing of notice under penalty of perjury). Failing to satisfy this requirement, or sending a DMCA take-down notice that is otherwise improper – such as to remove critical, non-infringing material, or to assert the rights of a third party who the notice-sender does not represent – makes the misrepresenting notifier liable for the uploader’s damages, costs and attorneys’ fees under § 512(f). (Similarly, a misrepresentation in a § 512(g) counter-notification also triggers the penalties of § 512(f)). Counterbalancing this restriction, though, is the right holder’s power to issue a federal subpoena under § 512(h) – again, without even a copyright registration – in order to identify an infringer. While this provision of the DMCA is infrequently used, the jurisprudence of § 512(h) is a fascinating sub-topic for another time.
However, the DMCA provides no protection for trademark infringement committed by a third party. While proposed laws like PIPA and SOPA addressed the full theater of potential intellectual property infringement, the DMCA protects only against copyright infringement liability. Thus, a novel theory from plaintiff’s attorneys is that a third party’s use of a trademarked name in an internet posting constitutes trademark infringement and unfair competition under 15 U.S.C. §§ 1114 and 1125. While this is a frivolous claim to bring against a service provider, it can be pled to avoid a motion to dismiss in jurisdictions without robust anti-SLAPP statutes that allow for the inclusion of evidence in anti-SLAPP motions. This leads to summary judgment and, in many cases, settlement – a detriment to the companies falling prey to these questionable suits.
Acting in conjunction, federal criminal, telecommunications and copyright law has created an ecosystem ripe for enormous online commerce. Without these laws, the multi-billion dollar companies that dominate the internet likely would not exist. While the ecosystem is still in flux, and will be as both technology and IP laws change, services such as Facebook, YouTube, Pinterest and Tumblr are here to stay.
Posted by Jay Wolman 
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