Attorney Evan Brown

September 10, 2020 Anonymity, Privacy

How Portland has not demonstrated long-term commitment to a ban on facial recognition technologies

Portland, Oregon yesterday passed a ban on facial recognition technology. Officials cited two primary reasons for the ban. First, current facial recognition technologies less accurately identify people who are not young, white and/or male. Second, everyone should have some sense of anonymity and privacy when in public places.

Should the facial recognition ban focus on disparate impact?

Do Portland’s efforts to “improve people’s lives, with a specific focus on communities of color and communities with disabilities” demonstrate an effective long-term commitment to keeping invasive facial recognition technology at bay? Such a focus implies that when facial recognition technologies get better and less biased, they should then be deployed full scale, because then everyone will be harmed equally.

That’s one of the problems with looking to ban a technology based on its nascent state and accompanying imperfect implementation. Given the choice between arguing (1) that a technology is being harmfully implemented now, and (2) that the technology, no matter how perfect it is, infringes some fundamental human right, I’d go with number (2) every time.

We will find ourselves halfway down the slippery slope

We know the accuracy of this technology will increase with the development of better cameras, smarter algorithms and more data. When that happens, if you are still seeking to argue against its harmful effects on fundamental rights such as anonymity and privacy, you will already have slid halfway down the slope. With your previous “best” argument made moot, your argument now – an appeal to fundamental rights – will have less impact.

So maybe we should focus on the real issues – the fundamental right of anonymity and privacy for everyone – rather than leading with a social justice argument. At some later point, having made it the primary argument and it having becoming moot, the rationale will be a liability.

About the author

Evan Brown is a technology and intellectual property attorney in Chicago. Follow him on Twitter at @internetcases. Phone: (630) 362-7237. Email: ebrown@internetcases.com.

What are the legal issues around web scraping?

Web scraping is that activity where a party uses automated software to crawl the internet and copy data and other content, usually so that it can compile that together and make its own product offering. This may be of concern to you because you are a company that does web scraping. Or you may be a web publisher and there are other parties that are scraping your content. Let’s examine some of the legal issues around web scraping.

Breach of contract

One of the questions that commonly arises around web scraping is whether the activity is a breach of contract. More specifically, the question is whether the use of automated software violates the terms of service of the website that is being scraped. You often see website terms of service prohibit the use of spider and other automated crawling software to access and use the site. Parties who own websites that are being scraped will often look to see whether the scraping of their site is a breach of contract.

Copyright infringement

Another common question arising when analyzing web scraping is lawful whether scraping constitutes copyright infringement. This is a difficult argument to make if all that is being scraped is data, because mere facts usually are not subject to copyright protection. But if there is other content being scraped, such as images or specific compilations of data, the question of copyright infringement becomes a bit easier to answer in that unauthorized copying is an likely an infringement.

Computer Fraud and Abuse Act

The Computer Fraud and Abuse Act is another topic that often comes up in discussions about web scraping. This is a federal law that makes it unlawful for a person to access a protected computer without authorization, or in excess of a specific authorization. So the question becomes whether that access by the automated web scraper violates the Computer Fraud and Abuse Act. There are some important things that have to be proven for a plaintiff to succeed under the Computer Fraud and Abuse Act, and one of those is loss or damage that results from the unauthorized access. It is a very fact intensive inquiry that has to be made, but the Computer Fraud and Abuse Act is one thing that parties should think about in the context of web scraping.

Trade secrets

The question of trade secrets is another good one to raise in the context of web scraping. A trade secret is any information that a company has that gives that company a commercial advantage in the marketplace because it is secret. The information also has to be the subject of protective efforts — the company has to try to keep the information secret. For example, if information on a website is put there in a way that is behind certain protective barrier,s and the party doing the scraping circumvents those barriers, it could be that there is a misappropriation of trade secrets, particularly if that information is used for some competitive purpose.

Let’s talk

Web scraping legal issues can be complex. Scraping presents certain legal risks to the ones doing it, and the law provides certain powerful remedies when web scraping runs afoul of the rules. If you have questions about web scraping, give me a call at (630) 362-7237, or send me an email at ebrown@internetcases.com.

About the author

Evan Brown is a technology and intellectual property attorney in Chicago. This content originally appeared on evan.law.

YouTube creator’s misrepresentation case over DMCA takedown notices lacked certain key evidence

Plaintiff ran a YouTube channel. Defendant sent takedown notices under the Digital Millennium Copyright Act (DMCA) to YouTube alleging that plaintiff infringed defendant’s copyright. Plaintiff sued defendant under 17 U.S.C. §512(f), which provides for recovery when a person sends a DMCA takedown notice based on “knowingly materially misrepresented” facts.

The district court granted defendant’s summary judgment motion. Plaintiff sought review with the Eleventh Circuit. On appeal, the court affirmed the lower court’s finding that defendant did not knowingly materially misrepresent facts when it sent the DMCA takedown notices to YouTube.

The DMCA’s good faith standard

The DMCA relieves online service providers (such as YouTube) of liability for storing copyright infringing content if, among other things, the service provider properly responds to the copyright holder’s takedown notice. The notice must state that the copyright holder has a “good faith belief” that the identified content infringes. The copyright holder can be liable for damages if it “knowingly materially misrepresents” that the identified content infringes. Copyright law provides that if use of content is fair use, then it is not infringing.

In 2016, the Ninth Circuit evaluated the questions of what it means for a DMCA takedown notice sender to have a “good faith belief” and to “knowingly materially misrepresent” that content infringes. In that case (Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2016)), the court held that having a “good faith belief” that certain content infringes requires that the copyright holder, before sending a takedown notice, consider if the potential infringement is a fair use. And the court held that failure to consider fair use before issuing a takedown notice is a misrepresentation of copyright infringement.

What diligence must a takedown notice sender undertake?

What kind of belief must the copyright holder have to be in line with the conduct required of the DMCA? The Lenz court held that a copyright holder’s subjective good faith belief that a use is both unauthorized and not fair use serves as a complete defense to a misrepresentation claim.

Counsel’s consideration of fair use was sufficient

In this case, defendant’s attorneys testified in affidavits that they investigated whether plaintiff’s YouTube uploads infringed. And they testified that they evaluated whether the uploads were fair use. So the court found that defendant, by relying on their attorneys’ investigations and opinions, reasonably believed in good faith that plaintiff’s videos infringed and did not constitute fair use, prior to filing the takedown notices.

The court found that plaintiff’s evidence did not show otherwise. Plaintiff testified in her deposition that she “knew” defendant did not consider fair use. She said that if defendant did consider fair use, it would not have sent the DMCA takedown notices. In the court’s view, this proffered evidence was just a bare and speculative statement, not evidence. It found that plaintiff failed to provide any meaningful evidence that defendant did not consider the fair use doctrine and that it did not have good faith when it submitted the takedown notices.

Johnson v. New Destiny Christian Center Church, Inc., 2020 WL 5289881 (11th Cir., September 4, 2020)

About the author:

Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases.

August 26, 2020 Copyright

Work Made For Hire – Part 3

In a couple of recent blog posts we have covered work made for hire generally and have looked at how it is defined. Let’s focus in this post on a key provision that should be in most independent contractor agreements because of the work made for hire doctrine.

The work made for hire framework

Remember that an employee will own the copyright in what an employee creates within the scope of his or her employment even without a written contract saying that. And with an independent contractor, certain kind of works can be work made for hire if the contract says that they are. There are at least two things to be concerned about because of this concept about work made for hire as it relates to independent contractors.

Why work made for hire creates concerns in contract drafting

The first concern is that if the independent contractor agreement is silent on the question of intellectual property ownership, the contractor, and not the hiring party, will own the copyright in the deliverables. Many hiring parties that have spent a lot of money for the work of an independent contractor have been distressed to learn this.

The second thing to be concerned about is the situation where the contract says the deliverables are to be work made for hire, but they are not a type of work that the Copyright Act says can be work made for hire. (We went through that list in part two of this series.) Software would in most circumstances probably fall into this category. If the contract just says the software will be a work made for hire, then the contract may not establish ownership in the party paying for the software to be developed, because it is not really a work made for hire when created by an independent contractor.

Contractor hereby assigns . . .

So you will often see contracts that say two things on this point. It will say that the deliverables are work made for hire. Then the contract will go on to say something along the lines of, to the extent the deliverables are not work made for hire, contractor hereby assigns all right, title and interest in and to the deliverables to the hiring party. If you have seen that language in an agreement before, you may have thought it was redundant but it serves a good purpose.

Blog posts in this series:

Need help with a work made for hire issue? Let’s talk.

Call me at (630) 362-7237, or send an email to ebrown@internetcases.com.

About the author

Evan Brown, Copyright work made for hire Evan Brown is an attorney in Chicago practicing copyright, trademark, technology and in other areas of the law. His clients include individuals and companies in many industries, as well as the technology companies that serve them. Twitter: @internetcases

August 24, 2020 Contracts

Is a website liable for leaving up content that violates its terms of service?

In a recent post, we discussed how Section 230 protected a website from liability for trade libel. The court held that third parties, and not the website itself, provided the offending posts. If the court had believed the posts were written by the site itself (or one of its agents) that may have turned the site into an information content provider and thus outside Section 230’s protections.

Terms of service violation?

This case – East Coast Test Prep LLC v. Allnurses.com, Inc. – had some other interesting aspects of interest to website operators seeking to effectively regulate content. For example, plaintiff claimed the website breached its own terms of service by failing to take down content prohibited by those terms of service. And the site allegedly breached its terms by closing a discussion thread, denying plaintiff the opportunity to respond to libelous content. The court dismissed plaintiff’s breach of contract claims.

The website’s terms stated, in relevant part, that users were not allowed to post libelous information. And it said the site operator would immediately take down content violating the law or invading another’s privacy. The terms also said that the website promoted the “idea of lively debate”.

What the plaintiff claimed

When the site refused to take down the offending content, plaintiff (a member of the site who had agreed to the terms of service) claimed the site violated the terms of service. And he claimed that the site breached the terms by not allowing him to comment, thereby going against the site’s commitment to foster the “idea of lively debate”.

The court rejected these breach of contract claims. It held that defendant did not promise to identify and immediately remove any and all potentially false statements. Instead, it disallowed users from posting libelous information and merely informed users that it would remove illegal or inappropriate posts. And the statement that defendant promoted the idea of a lively debate was not a promise to keep the site’s discussion threads open, particularly in light of the provision that “[p]roblematic posts/threads may be deleted or closed.”

East Coast Test Prep LLC v. Allnurses.com, Inc., — F.3d —, 2020 WL 4809911 (8th Cir. August 19, 2020)

Let’s talk!

Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

August 20, 2020 Section 230

Website avoided liability over user content thanks to Section 230

Section 230 protected a website from liability over content its users posted, in a recent case from the Eighth Circuit Court of Appeals.

Plaintiff sued defendant website operator for trade libel. The website had a forum board, and two forum board users posted that plaintiff was under federal investigation.

Likely recognizing Section 230 immunity would be an obstacle, plaintiff pled certain key facts about the posts’ authors. It claimed the two authors were longtime users. And it noted defendant occasionally paid its users to generate content. So plaintiff claimed the authors were “volunteers, employees, servants, contractors or agents of [defendant].” According to plaintiff’s logic, this would make the defendant website operator the “information content provider” of the offending posts.

The court did not buy that argument. Neither did the appellate court. The Communications Decency Act (at 47 U.S.C. §230) immunizes providers of interactive computer services against liability arising from content created by third parties. The Act provides that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”

The court held that these facts that plaintiff put forward did not plausibly show that defendant website operator was an information content provider. Since the facts only showed that independent parties created the offending posts, Section 230 immunity applied.

East Coast Test Prep LLC v. Allnurses.com, Inc., — F.3d —, 2020 WL 4809911 (8th Cir. August 19, 2020)

Let’s talk.

Do you need help with an internet law issue? Give me a call or drop me a line: (630) 362-7237 – ebrown@internetcases.com.

About the author

August 10, 2020 Copyright

Work Made For Hire – Part 2

[Looking for Part 1 of this three-part series? Go here.]

In this second part of a three-part series on work made for hire, we will explore what makes a work made for hire and then will look at the practical consequences of this doctrine.

What makes a work a work made for hire?

To determine what makes a work made for hire, we have to look at the Copyright Act (at 17 U.S.C. §101). The Copyright Act provides two different categories of work made for hire. The first category is comprised of those works of authorship made by an employee within the scope of his or her employment. Those works are automatically work made for hire even if there is not a contract between the employer and the employee saying that the creative works are. It just happens automatically.

The second category of work made for hire does not deal with employers and employees, but deals with independent contractors creating specially commissioned works. Here are the works that that the Copyright Act says can be a work made for hire (if the contract says it is a work made for hire):

contribution to a collective work
part of a motion picture or other audiovisual work
translation
supplementary work
compilation
instructional text
test
answer material for a test
atlas

The Copyright Act gives a little more information about what a supplementary work is. Think, for example, of when one author writes an introduction or a foreword for a book written by another author. Supplementary works can also include illustrations that an artist creates for another work.

What is the practical effect of something being a work made for hire?

Simply stated, a work made for hire is owned the very moment it is created. The party who did the hiring is the owner. The work is not even owned by the person who did the work, even for a millisecond before it is transferred to the employer or the party who hired the independent contractor. No, the employer or the party who hired the independent contractor is treated as the author and that party owns the work from the very moment it is created.

So from an even more practical perspective, if the work does not qualify as a work made for hire, and the party who does the hiring wants to own the copyright, there needs to be a written assignment.

Blog posts in this series:

Need help with a work made for hire issue? Let’s talk.

Call me at (630) 362-7237, or send an email to ebrown@internetcases.com.

About the author

July 29, 2020 Copyright

Work Made For Hire – Part 1

Work made for hire is an important concept for almost all employers employees, but people often misuse the term, or use it in a way that does not capture all of its nuance. We’ll take a look at this doctrine in three parts. Here are a few things to know as an introduction.

Work made for hire is a copyright concept

Work made for hire is a copyright issue. The Copyright Act defines work made for hire at 17 USC §101. The key question relates to who owns a particular creative work, whether that be written text, a photograph, a video, computer software, or any other type of work that copyright protects.

It pertains to employees and independent contractors

Another thing to know about work made for hire is that it addresses the question of who owns a creative work that is created by one party for someone else. That arise in the context of an employee working for an employer, or it could be an independent contractor working for the hiring party. In the employment situation, it is pretty straightforward – the employer owns what the employee creates within the scope of his or her employment. But in the independent contractor context, a lot depends on what the agreement says.

Work made for hire concepts address patents and trademarks differently than copyright

Work made for hire concepts apply differently to copyright than they do other forms of intellectual property. Ownership is treated differently when an employee or a contractor develops patentable subject matter, or develops material that could be used as a trademark. Patent applications list the actual employee as the inventor. And trademark rights generally do not come into existence until the company has used the mark in commerce.

Need help with a technology or intellectual property issue? Call me or send an email.

(630) 362-7237 | ebrown@internetcases.com

About the author

Evan Brown is a technology and intellectual property attorney in Chicago, helping clients with a wide variety of issues concerning copyright, trademark, domain names and technology services.

Blog posts in this series:

Is merely making files available on the internet a “distribution” under the Copyright Act?

Suppose an online provider allows third parties to upload digital files (which, in this context, would be “phonorecords” for copyright purposes). If no one else obtains one of those files, whether by streaming or download, has there been a distribution? In other words, is merely making available a copyrighted work an exercise of the right to distribute under the Copyright Act? The recent case of SA Music v. Amazon addresses this question. The court said no.

The Copyright Act lists the exclusive rights a copyright holder enjoys. One of those rights is to “distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending”

Making available copyrighted works on Amazon

Plaintiffs held the rights in some well-known 20th century songs (such as “I’ve Got the World on a String”). They sued Amazon over the presence of unauthorized copies of those musical works on Amazon’s music service. Plaintiffs asserted that merely making those files available online was an unauthorized distribution under the Copyright Act. Amazon moved to dismiss for failure to state a claim. The court granted the motion.

The statutory text favored Amazon

Amazon had contended that the Copyright Act (at 17 U.S.C. § 106(3)) did not contemplate plaintiffs’ “making available” theory of liability. The court agreed with Amazon’s position, finding there was no distribution of the works at issue. It held that the statute makes clear that a violation of exclusive distribution rights requires actual dissemination of the work.

SA Music, LLC v. Amazon.com, Inc., 2020 WL 3128534 (W.D. Wash. June 12, 2020)

Evan Brown is an intellectual property and technology attorney.

Have a question?

Send an email to ebrown@internetcases.com to request a time to talk. Or call (630) 362-7237.

June 24, 2020 Section 230

Section 230 did not protect online car sharing platform

Plaintiff Turo operates an online and mobile peer-to-peer car sharing marketplace. It allows car owners to rent their cars to other Turo users. It filed a declaratory judgment action against the City of Los Angeles, asking the court to determine the service was not being run in violation of applicable law.

The city filed counterclaims against Turo alleging (1) violation of local airport commerce regulations; (2) trespass; (3) aiding and abetting trespass; (4) unjust enrichment; and (5) unlawful and unfair business practices under California statute.

Should Section 230 apply?

Turo moved to dismiss. It argued that the City’s counterclaims sought to hold Turo liable for content published by users on Turo’s platform. In Turo’s mind, that should make it immune under Section 230.

Section 230(c) provides, in relevant part, that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”

Turo argued that the city’s claims were barred by Section 230 because they sought to hold Turo liable for its users’ actions. Those users published rental listings and selected LAX as the designated pickup point for car rentals. According to Turo, because the content of the rental listings were provided by third-party users, and because the city’s claims sought to hold Turo liable as an interactive computer service responsible for that content, Section 230 should apply.

No immunity, based on what the platform did

The court rejected Turo’s arguments that Section 230 immunized Turo from liability arising from the city’s counterclaims.

It held that Section 230 did not provide immunity because the city sought to hold Turo liable for its role facilitating online rental car transactions, not as the publisher or speaker of its users’ listings.

Citing to Force v. Facebook, Inc., 934 F.3d 53 (2d Cir. 2019), the court observed that “Section 230(c)(1) limits liability based on the function the defendant performs, not its identity.”

And the court compared the situation to the one in HomeAway.com, Inc. v. City of Santa Monica, 918 F.3d 676 (9th Cir. 2019). In that case, Section 230 did not immunize companies providing peer-to-peer home rental platform services from a government ordinance that required homeowners to register their properties with the city before listing them on a home sharing platform.

The court explained that Section 230 immunity did not apply because the government plaintiff did not seek to hold the platform companies liable for the content of the bookings posted by their users, but only for their actions of processing transactions for unregistered properties.

Turo v. City of Los Angeles, 2020 WL 3422262 (C.D. Cal., June 19, 2020)

Evan Brown is an intellectual property and technology attorney advising companies on issues relating to the internet and new technologies.

Have a question? Email Evan to set up a time to talk: ebrown@internetcases.com. Or call (630) 362-7237.

Should the facial recognition ban focus on disparate impact?

We will find ourselves halfway down the slippery slope

About the author

See also

Breach of contract

Copyright infringement

Computer Fraud and Abuse Act

Trade secrets

Let’s talk

About the author

See also:

The DMCA’s good faith standard

What diligence must a takedown notice sender undertake?

Counsel’s consideration of fair use was sufficient

See also:

About the author:

The work made for hire framework

Why work made for hire creates concerns in contract drafting

Contractor hereby assigns . . .

Blog posts in this series:

Need help with a work made for hire issue? Let’s talk.

About the author

Terms of service violation?

What the plaintiff claimed

See also:

Let’s talk!

See also:

Let’s talk.

About the author

What makes a work a work made for hire?

What is the practical effect of something being a work made for hire?

See also:

Blog posts in this series:

Need help with a work made for hire issue? Let’s talk.

About the author

Work made for hire is a copyright concept

It pertains to employees and independent contractors

Work made for hire concepts address patents and trademarks differently than copyright

Need help with a technology or intellectual property issue? Call me or send an email.

About the author

Blog posts in this series:

Making available copyrighted works on Amazon

The statutory text favored Amazon

Should Section 230 apply?

No immunity, based on what the platform did