Copyright – Page 17 – Attorney Evan Brown

April 18, 2008 Copyright, DMCA

The vexing linkage between access and protection in DMCA anticircumvention analysis

A couple of days ago David Donoghue wrote about the recent case of Nordstrom Consulting, Inc. v. M&S Technologies, Inc., No. 06-3234, 2008 WL 623660 (N.D. Ill. March 4, 2008). Dave’s post gives a very thorough treatment of all aspects of the case, which involve primarily allegations of infringement of the copyright in software.

The case also involved a claim of circumvention under the Digital Millennium Copyright Act, at 17 U.S.C. 1201(a). The court granted the defendants’ summary judgment motion on this claim.

The dispute arose from a rather typical set of facts. The parties had collaborated on the development of some software. Along the way the principal author of the software became dissatisfied and parted ways. Litigation ensued over the parties’ ownership and use of the source code.

Before plaintiff Nordstrom officially severed ties, he went on vacation. While he was gone, one of the defendant’s employees (Butler) sent Nordstrom an email saying that Butler needed access to the source code which was stored on a computer there in the office, in order to help out a customer. Nordstrom didn’t respond for several days, and in the meantime, Butler disabled the BIOS password for the computer.

Nordstrom sued under Section 1201 over this disabling of the password. The court relied heavily on the Federal Circuit’s decision in Chamberlain Group, Inc. v. Skylink Technologies, Inc., 381 F.3d 1178 (Fed. Cir. 2004) to conclude that there was no violation of Section 1201’s anticircumvention provisions.

The Chamberlain case draws a necessary connection between circumvention and infringement. And the presence of this connection is the vexing part of the analysis. A quick reading of Section 1201 does not reveal the link.

But the Chamberlain court held that Section 1201’s prohibition on circumvention does not give rise to a new property interest, only a new cause of action, one that goes after circumvention of methods controlling access to protected works. One can’t pursue a defendant just for circumvention in a vacuum, so to speak. The circumvention has to bear some “reasonable relationship to the protections that the Copyright Act otherwise affords copyright owners.” Chamberlain, 381 F.3d at 1202. In other words, without infringement or the facilitation of infringement arising from the cirumvention, a cause of action under 1201 does not arise. The linkage is one between access and protection.

The holding of the Nordstrom case as to the DMCA claim picks up on this link between access and protection. Summary judgment on the circumvention claim was proper because the plaintiff could not show that Butler’s disabling of the BIOS password protection on the computer storing the source code enabled any infringement. The evidence before the court was that Butler accessed the code to fix a problem on behalf of an authorized licensee of the software. Because of the license, there could be no infringement. Without any connection to infringement, under the teaching of Chamberlain, a cause of action for circumvention could not be sustained.

March 20, 2008 Copyright

“Copyright misuse” not an independent cause of action

Ticketmaster L.L.C. v. RMG Technologies, Inc., — F.Supp.2d —-, 2008 WL 649788 (C. D. Cal. March 10, 2008)

Last October I wrote about a decision from the U.S. District Court for the Central District of California in the case of Ticketmaster L.L.C. v. RMG Technologies, Inc. You may recall that the court granted an injunction against RMG’s automated software that accessed Ticketmaster’s Web site, allegedly in violation of the DMCA anticircumvention provisions (17 U.S.C. §1201 et seq.) as well as the site’s terms of use. Because of such ruthless behavior on the part of RMG, some parents were evidently denied the chance to purchase Hannah Montana tickets for their daughters. (How can we be concerned about the economy or the war on terror when things like that are going on?)

RMG didn’t give up after last October’s injunction against it, but went on the offensive, filing a counterclaim against Ticketmaster alleging, among other things, copyright misuse. In general, the doctrine of copyright misuse prevents copyright holders from leveraging their limited monopoly to allow them control of areas outside that monopoly. Trying to extract a licensing fee for the use of a work in the public domain would be a clear example of copyright misuse.

The problem for RMG was that copyright misuse is a defense to an infringement action, not a cause of action in itself. And the court recognized that, citing to a number of cases, including:

Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1090 (9th Cir.2005) (affirming district court’s refusal to “extend [ ] the doctrine of copyright misuse beyond ‘its logical place as a defense to a claim of copyright infringement’ ”)
Practice Mgmt. Info. Corp. v. American Medical Ass’n, 121 F.3d 516, 520 (9th Cir.1997) (adopting rule that “misuse is a defense to copyright infringement”)
Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 269 F.Supp.2d 1213, 1225 (C.D.Cal.2003) (noting that, as even defendant conceded, “copyright misuse cannot found a claim for damages”)

Accordingly, the court granted Ticketmaster’s motion to dismiss the claim for copyright misuse. Leaving no uncertainty, the court continued by observing that because “this holding is not based on the way in which this claim was pled, but on the fact that no such claim can ever be pled, the dismissal of this claim is WITH PREJUDICE, as no possible amendment could save it.”

How’s that for black letter law?

January 22, 2008 Anonymity, Copyright, Litigation

Anonymous alleged infringer identified with little substantive inquiry into infringement claim

[In re Subpoena Issued Pursuant to the Digital Millennium Copyrigt Act to: 43SB.com, No. 07- 6236, 2007 WL 4335441 (D. Idaho, December 7, 2007).]

When the general counsel for Melaleuca, Inc. saw some negative content someone had posted about the company on the Web site 43rdstateblues.com, he sent a cease and desist letter demanding the content be removed. The letter, however, did not accomplish its intended purpose. Instead, the site owner posted the entire letter.

Melaleuca did not give up, but just adapted its strategy. It served a DMCA subpoena [see 17 U.S.C. §512(h)] on the site, seeking to identify the person who posted the letter “so that [Melaleuca] might seek redress for copyright infringement.” Melaleuca claimed that its copyright rights in the letter were infringed when it was posted online. (Claiming copyright in cease and desist letters is not a new tactic. See, e.g., here and here.)

The website moved to quash the subpoena, asserting, among other things, that the letter was not subject to copyright protection, and that the failure by Melaleuca to establish a prima facie case of copyright ownership was fatal to the subpoena.

The court denied the motion to quash. The Web site had argued that Melaleuca could not own a copyright in the letter, according to 17 U.S.C. 102(b)’s exclusion of “any idea, procedure, process, system, method of operation, concept, principle or discovery” form copyright protection. But the court rejected that argument.

Declining to “go into an in-depth analysis of the merits of a copyright infringement claim in determining whether to quash [the] subpoena,” the court found that Melaleuca’s copyright registration in the letter was sufficient to establish ownership of a valid copyright. As for alleged copying, the court found that posting of the entire letter was sufficient.

There are a couple of interesting observations to be made from this decision. First, unlike cases in which plaintiffs seek to uncover the identity of anonymous defendants accused of defamation [see here], this court gave – relatively speaking – little inquiry into the merits of the plaintiff’s case. Perhaps it felt that such an analysis was not necessary given that the Copyright Office had already determined copyrightable subject matter to exist (when it issued the registration certificate).

A second interesting question arises when one considers how the court might have ruled had the defendant asserted fair use as a basis for the motion to quash. (Doesn’t it seem like posting a cease and desist letter on the Internet, ostensibly for eliciting public ridicule, is a transformative use?) Given the fact intensive inquiry of a fair use analysis, the court would have probably reached the same conclusion, if anything to put off the factfinding until later. But would a court do that in other cases where the offending, anonymous use is more obviously fair?

December 4, 2007 Copyright

Court flushes septic company’s request for injunction in copyright suit

Biosafe-One, Inc. v. Hawks, — F.Supp.2d —-, 2007 WL 4212411 (S.D.N.Y. November 29, 2007)

Back in 2005, industrial-strength septic system cleaning products company Bio-Safe One, Inc., needed a “jumbo mortgage,” so its president, one Jorgensen, did a web search for brokers and located Messrs. Hawks and Skierkowski, who helped Bio-Safe One with its mortgage needs. Although that transaction was over in June 2005, Jorgensen believed that Hawks and Skierkowski used information he had provided them during the mortgage transaction to start up a competing septic business.

Jorgensen and Bio-Safe One filed a lawsuit against Hawks and Skierkowski in New York federal court alleging, among other things, copyright infringement. They claimed that the competing enterprise illegally copied elements Bio-Safe One’s website.

The plaintiffs sought a preliminary injunction to prevent Hawks and Skierkowski from continuing what they believed to be copyright infringement. The court denied the motion for preliminary injunction.

It held that although the plaintiffs had established ownership of the copyright in the Bio-Safe One website by presenting a registration certificate for it, they failed to show that the defendants had engaged in illegal copying of any original elements of the site.

Applying the “ordinary observer test,” the court held that a side-by-side comparison simply would not prompt a person to regard the aesthetic appeal of the websites as the same. Rather, it was difficult to detect any similarities. The arrangement, photographs, and graphics on the websites were “decidedly dissimilar.” And the textual elements that were similar on the websites, including minor phrasing and terminology, were so far spaced throughout that they were not noticeable.

Accordingly, the court held that the plaintiffs would not likely succeed on their claim of copyright infringement.

November 27, 2007 Copyright

Booklocker.com on the copyright offensive in Maine

Booklocker.com, Inc. v. Sartain, No. 07-0176 (D. Me., Filed November 21, 2007). [Download the Complaint]

Online, on demand book publisher Booklocker.com has filed a declaratory judgment action against Utah-based artist Julie Sartain, in response to a cease and desist letter Sartain sent to Booklocker alleging copyright infringement. In the case, Booklocker seeks a determination by the United States District Court for the District of Maine that Booklocker’s use of artwork on book covers does not infringe on any copyright right held by Sartain.

The allegations are a bit sparse, as one may expect to see in federal pleading, but it appears that Booklocker believes Sartain does not own the copyrights in the cover artwork, but that such artwork is owned by the authors who have Booklocker print their books on demand. In the alternative, Booklocker asserts that it has some sort of implied license to reproduce the artwork through the course of dealing between the parties during the past four years.

In asserting that the individual authors — and not Sartain — own the copyrights in the individual pieces of cover art, Booklocker is putting a lot of faith in the process whereby the authors may have commissioned Sartain to create those works. The complaint says that there are more than a thousand works at issue. Are we to believe that there is a detailed, written agreement in place for each one of those works, in which Sartain assigned her copyright rights to these authors?

November 21, 2007 Copyright, DMCA

Beaded jewelry website tussle turns into lawsuit alleging bogus DMCA takedown notice

Does a hosting provider breach the contract with its customer when it responds to a DMCA takedown notice concerning its customer’s content? The plaintiff in this case would have you believe that. [Download the Complaint]

Jades Creations, LLC v. White, No. 07-50225 (N.D. Ill., Filed November 16, 2007)

Rockford, Illinois-based Jades Creations, LLC has filed suit in federal court against its competitor in the beaded jewelry industry over what Jades claims were unmeritorious takedown notices sent to Earthlink under the Digital Millennium Copyright Act.

Back in October, SW Creations sent a DMCA takedown notice to Earthlink, the host of Jades Creations’ Web site, claiming that material located thereupon infringed SW Creations’ copyright and trademark rights. (Never mind the DMCA does not apply to trademarks.) Jades, of course, disputed the fact that there was infringing content on its site, and successfully had access to its site restored after sending Earthlink a counternotification.

But Jades didn’t stop there. Obviously perturbed by what it believed to be an unwarranted takedown notice that caused it to lose business, it filed a lawsuit in the Northern District of Illinois, asking for a declaration of non-infringement and asserting various tort claims for the takedown notice.

One of the claims is for tortious interference with the contract between Jades and her hosting provider Earthlink. This is intriguing, but it looks like there could be a bit of a hurdle here.

Under Illinois law, a successful plaintiff in a tortious interference with contract action has to prove, among other things, that an actual breach of contract occurred because of the defendant’s conduct. Belden Corp. v. InterNorth, Inc., 413 N.E.2d 98 (Ill. App. 1st Dist. 1980). Did Earthlink breach the contract with its hosting customer when it obeyed the demands of a third party DMCA takedown notice?

Jades alleges that this was a breach (see paragraph 60 of the complaint). Do you agree?

Earthlink’s terms of service can be found here. And remember, 17 U.S.C. 512(g) provides that “a service provider shall not be liable to any person for any claim based on the service provider’s good faith disabling of access to, or removal of, material or activity claimed to be infringing or based on facts or circumstances from which infringing activity is apparent, regardless of whether the material or activity is ultimately determined to be infringing.”

November 16, 2007 Copyright, Litigation

This case is not off to a good start

Windy City Marketing, Inc. v. Places Advertising, Inc., No. 07-6401 (N.D. Ill., filed November 12, 2007) [Download the complaint]

Windy City Marketing, a Chicago company, has filed a federal lawsuit against a startup competitor, Places Advertising, Inc. The suit alleges infringement of copyright allegedly owned by Windy City Marketing in certain bound marketing pieces called “inside chicago”. Windy City Marketing claims that Places Advertising has wrongfully copied the marketing materials and is distributing those to Windy City Marketing’s customers.

The big problem with the complaint is that there is no allegation that Windy City Marketing owns a registration in the works at issue. A quick read of Section 411 of the Copyright Act will reveal what’s wrong with this picture. You gotta have a registration before you can file a lawsuit for copyright infringement. For the plaintiff’s sake, thank goodness for Fed. R. Civ. P. 15.

Scandal over use of Creative Commons photo on Flickr results in lawsuit

The details on this are still sketchy, but according to this article, the mother of a Texas minor has sued in state court over Virgin Mobile’s use of a Creative Commons attribution-only licensed photo found on Flickr. From what I can tell, Virgin Mobile found the photo on Flickr, cropped it, did a horizontal flip, and added the moniker “Dump Your Pen Friend.” A guy in Australia noticed the Creative Commons work in the add, posted a picture of it on Flickr [here], where the subject of the photo noticed it. [This story unfolds in the comments for the picture.]

I’m sure that more details will emerge and we’ll get a better picture of what’s going on here. There’s one nagging question that in my mind needs answering. Why is the plaintiff suing Creative Commons? Apparently the claims in the lawsuit are state-based right of publicity claims. How, by merely providing a licensing mechanism for the copyright in a photo, could Creative Commons be liable for anything in this situation?

Hat tip to Michael Geistfor alerting me to this story.

Do ad blocking plugins cause copyright and terms of use problems?

CNet News has run this interesting article which raises questions about whether ad blocking software may face legal challenges from website publishers and advertising providers. What we’re talking about here are browser plugins that the user chooses to install, that allow web pages to be viewed sans the advertisements. Website publishers that rely on ad revenue (as well as upstream providers of advertising services, read: Google) may be concerned about such practices for obvious reasons.

The article speculates that if this kind of software were to face legal scrutiny, the plaintiffs would argue copyright infringement and violation of the sites’ terms of service, which may prohibit the use of this kind of software.

But who exactly would the plaintiffs sue? The individual users? The makers of the software? Maybe both, and depending on the defendant, the theories may be different.

Going after millions of users would seem impracticable, and the damages calculations in each of those situations would be problematic. What we could see, if we see anything at all on the lawsuit front, are challenges against the makers of these browser plugins.

This will require some creative theory-making. It does not seem like the software providers are the ones doing the actual “infringing” (i.e., aren’t the ones changing the appearance of a page thereby making an unauthorized derivative work). So I suppose the advertising side would put forward some type of inducement theory of secondary copyright infringement liability. Grokster will come in handy in those cases. And for the breach of contract aspect, perhaps we’ll see theories of tortious interference.

Maybe it’s a tempest in a teapot, and nothing will happen. But there could be a lot of money at stake, and that aspect could provide a strong catalyst. On the other hand, doesn’t it seem like the individual user has a clear right to determine what content is delivered?

Don’t make Christopher Knight the posterboy for copyright oppression

Enough already about Christopher Knight’s purported martyrdom because he had a clip pulled from YouTube. [Boing Boing sums it up in 100 words or less here.] Here’s what happened: Knight made some ridicule-worthy videos and posted them on YouTube. Viacom, through it’s VH1 channel, appropriated some of that video into a portion of its show Web Junk 2.0, with the host of the show adding some comedic commentary. Knight then posted the Web Junk 2.0 footage on YouTube. Viacom had the clip removed pursuant to a DMCA takedown notice.

You can’t swing a cat around the blogosphere these past couple days without hitting a post about this. Christopher Knight is to this week what Nixon Peabody was to last.

Sure, Viacom, like many other big content owners, may overreach from time to time when it comes to the enforcement of its intellectual property rights. That’s a disservice to both Viacom and to the public. And to the extent there is overreaching, criticism is appropriate.

But to truly make that criticism effective, one needs to mount arguments against practices that truly are contrary to law. In this Christopher Knight situation, Viacom’s conduct is not beyond the pale. They have rights in the Web Junk 2.0 clip as it is an original work they created. It may be a derivative work, based on Knight’s clip. Fine. What’s more, Knight’s posting was bodily appropriation of VH1’s work.

In any event, it sure looks like VH1’s use of the work is a fair one. And who doesn’t love fair use? (Then I heard something about a goose and a gander.) So by using Knight’s clip in the first place, VH1 was not being the bad actor here. Owen Thomas gets it.

This situation is the wrong one in which to villainize big media. Look for a more sympathetic victim of copyright abuse.