copyright – Page 3 – Attorney Evan Brown

January 31, 2022 Copyright

In copyright infringement case, artist’s social media popularity supported claim that retail chain copied artwork

Plaintiff is an artist who designs macabre items, including a bat-themed mug. Defendant (Michaels, the well-known retail craft store) started selling a vase that plaintiff claimed infringed its bat mug copyright. So he sued for copyright infringement. Michaels moved to dismiss, arguing there was no substantial similarity between the works. And even if there were substantial similarity, according to Michaels, plaintiff had not sufficiently alleged that Michaels actually copied the work. The court rejected Michaels’ arguments and denied the motion to dismiss.

Actual copying can be shown by indirect evidence. To adequately plead indirect evidence of actual copying, one must allege, among other things, that the accused infringer could reasonably access the plaintiff’s copyrighted work.

In this case, the artist alleged facts sufficient to establish that Michaels could reasonably access the vampire bat mug. Specifically, plaintiff alleged that it advertised its products, including the vampire bat mug, on various social media platforms, such as Facebook, Pinterest, Instagram, and Tumblr. Through these social media accounts, plaintiff had allegedly reached at least 30,000 followers. In addition to its social media presence, plaintiff alleged it advertised the mug on the internet more generally, and sold it through online retailers, including Etsy, eBay, and Amazon. The court credited plaintiff’s allegations that plaintiff’s reach over the internet extended to customers all over the world, in particular customers in China, where designers and advertisers purportedly saw the mug. These allegations were sufficient to show that defendant could have reasonably accessed plaintiff’s work.

Dellamorte, LLC v. The Michaels Companies, 2022 WL 254427 (D. New Jersey, January 27, 2022)

Copyright ownership transfers must be in writing

If you are hiring an independent contractor to create copyrightable subject matter, and you want to own the copyright in the resulting work product, be sure to have that contractor sign a written contract that specifically states that copyright ownership is being transferred. Even if you have paid the contractor for the work, and you both intend that ownership be transferred, the contractor will still own the copyright in the deliverables unless there is a writing, signed by the contractor, to the contrary. This is a key concern if your contractor has created subject matter that will be critical to your business – software, graphics, text, photos, any kind of protectable digital asset. If you do not secure ownership, the contractor may later object to how you are using the works differently than intended at the time of the contract, and claim infringement. Or the contractor could grant a license in the same work to another party, even one of your competitors.

The Copyright Act contains a couple of provisions that relate to this issue. The first one pertains to the definition of “work made for hire”. If an employee creates copyrightable subject matter within the scope of his or her employment, that is a work made for hire, and the employer owns the copyright. But note how that relates to employers and employees. Contractors are in a different category. There are other kinds of works that are “ordered or commissioned” that can be considered works made for hire, even if created by an independent contractor. But in any event, the Copyright Act says that these are works made for hire only “if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”

Let’s say you have not established that the contractor’s work is a “work made for hire”. You could still have the contractor assign his or her rights in the deliverables. Again, the Copyright Act requires this to be in writing. You cannot just agree on a handshake that ownership of copyright has been transferred. The statute provides that “[a] transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” Note that the contractor – the one making the assignment – has to sign the written document.

Paying attention to these issues on the front end of hiring an independent contractor will help ensure clear rights in the future, avoid future tangles and disagreements, and ultimately save time and money by avoiding costly dispute resolution.

Evan Brown is a technology and intellectual property attorney in Chicago. Twitter: @internetcases

July 26, 2021 Copyright, DMCA

DMCA anticircumvention case over copied YouTube videos moves forward

Defendant fired plaintiff over two videos advocating for COVID-19 workplace protections that plaintiff posted on YouTube. Around the time of the termination, the employer allegedly used a smartphone to record the videos in question while they were being played on a computer screen. Defendant then allegedly further copied, distributed and performed these videos in connection with legal proceedings involving plaintiff, without plaintiff’s consent.

DMCA anticircumvention

Plaintiff sued his former employer for copyright infringement. And because YouTube technology provides technological protection measures to prevent unauthorized copying of videos, plaintiff sued under Section 1201 of the Copyright Act – one of the anticircumvention provisions of the Digital Millennium Copyright Act (“DMCA”).

No fair use (yet)

Defendant argued its conduct was fair use of the videos. It asserted it submitted the videos in response to plaintiff’s OSHA complaint and in support of a no-trespass order. But the court refused to make a fair use determination at the motion to dismiss stage, since no facts supporting fair use could be found in the complaint.

DMCA circumvention

The court also allowed plaintiff’s DMCA circumvention claim to move forward.

Section 1201(a)(1)(A) of the DMCA states “[n]o person shall circumvent a technological measure that effectively controls access to a work protected under [the Copyright Act].” “Circumvent,” as used in §1201, “means to descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner[.]” §1201(a)(3)(A). “[A] technological measure ‘effectively controls access to a work’ if the measure, in the ordinary course of its operation, requires the application of information, or a process or a treatment, with the authority of the copyright owner, to gain access to the work.” §1201(a)(3)(B).

Defendant argued the court should throw out the DMCA circumvention claim because plaintiff did not identify a specific technological measure that defendant allegedly circumvented. The court rejected that argument, however, saying that that much specificity was not required to survive a motion to dismiss.

Defendant also argued the DMCA claim should fail because the statute prohibits “circumvention,” which is different from copying, and the complained-of conduct was simply copying. The court viewed the law differently, however, citing Chamberlain Group, Inc. v. Skylink Technologies., Inc., 381 F.3d 1178 (Fed. Cir. 2004), where the court held that while infringement and circumvention are distinct, an act of infringement can also involve an act of an authorized circumvention.

The facts of this case may cause one to consider cases such as R. Christopher Goodwin & Assoc., Inc. v. Search, Inc., 2019 WL 5576834 (E.D. Louisiana October 29, 2019) and wonder whether circumvention has really occurred. It does not appear defendant in this case did anything to disable measures that would have prevented it from viewing the videos. Presumably the streamed videos were available to anyone who could visit YouTube. And the act of creating the copies did not even touch on any of the protection measures YouTube put in place. There was no cracking or descrambling – just the capturing of video as it passed through the air (at that moment being analog) from the computer screen to the camera of the smart phone. Perhaps there is an analog hole defense here?

Edland v. Basin Electric Power Cooperative, 2021 WL 3080225 (D.S.D. July 21, 2021)

October 26, 2020 Contracts

Intellectual property issues in a speaker’s agreement

Let’s say you’re going to host a conference — these days that would be an online conference — and you want to invite people to give presentations. You will want to enter into a contract with those presenters to cover some of the obvious logistical items: the presenter is obligated to show up, the presentation will be on a certain topic, it will last for a certain amount of time, and there may be payment. And there are some important intellectual property issues that the speaker’s agreement should also address.

Marketing and promotion of the event

One important intellectual property issue in a speaker’s agreement has to do with the marketing and promotion of the event. This involves primarily the right of publicity. You are likely going to want to generate materials, such as social media posts, that have the name and the image of the presenter. You will want to seek to get a release from the presenter that authorizes you to use his or her name and image in connection with the marketing and promotion of the event.

Handout materials

A second issue that you will need to deal with has to do with handout materials or other accompanying documentation for the presentation. You will want to make sure that you have the appropriate copyright license from the presenter allowing you to copy and distribute those materials. You should also consider getting assurances from the presenter that those materials will not infringe any third party intellectual property rights. And you may want to have the agreement say that the presenter will indemnify you and pay the cost of the defense if you get sued by a third party because the handout materials infringe.

Video or audio of the presentation

A third intellectual property issue that you will want to think about in connection with a speaker’s agreement has to do with any content that you generate at the event. Say, for example, you film the presentation and you want to make the video available to the world so it can see what the event was like. On this point we are back to the discussion of the right of publicity. Obviously the presenter’s name and image is going to be in that content. So you want to make sure that you have a release for that.

As the host of the event, you will likely want to own the copyright in the video. The presenter may ask for a carveout — that is, clarification that though you own the copyright in the video, the presenter retains ownership of the underlying content presented.

Need help with intellectual property issues in a speaker’s agreement?

Please feel free to give me a call or send an email. Dial (630) 362-7237, or email ebrown@internetcases.com.

October 7, 2020 Copyright

Why get a copyright registration?

A work of authorship is protected by copyright at the moment it is created. If you take a photo or write some software or draft some text, copyright law protects that work the moment it becomes fixed in a tangible medium of expression for more than a transitory duration. You do not need a registration to own a copyright. It exists automatically. But there are certain benefits conferred by registering a copyright.

Copyright registration allows the holder to sue for infringement.

One benefit from having a registration is that the holder of the copyright can sue for infringement. This is a requirement for litigation – a court will not let a copyright infringement case go forward unless the plaintiff shows that it has a registration certificate. And that registration certificate needs to be in hand — it is not enough for the plaintiff to have just applied to register the copyright. It actually needs to have the registration issued.

Better evidence.

A second benefit of having a copyright registration certificate is the evidentiary weight that it carries in court. If the registration is obtained in the five years following the first publication of the work, the judge will look at that registration certificate and give it great importance in ascertaining whether the plaintiff has a valid copyright in the work.

Statutory damages and attorney’s fees.

A third benefit of having a registration is that in certain circumstances the plaintiff can recover its costs and attorneys fees, and be entitled to recover statutory damages. These damages can range anywhere from $750 all the way up to $150,000 per work infringed.

To be entitled to these things the plaintiff must have obtained a timely copyright registration. To be timely, it has to either have been obtained before the infringement began, or if it was obtained after the infringement began, it was obtained within the first three months following the first publication of the work. The key is that timing matters — it is generally advisable to register a work within the first three months following first publication.

Need help with a copyright registration?

Please feel free to give me a call at (630) 362-7237, or send email to ebrown@internetcases.com.

About the author:

Evan Brown, nondisclosure agreements 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 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

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.

No fair use (yet)

DMCA circumvention

Marketing and promotion of the event

Handout materials

Video or audio of the presentation

Need help with intellectual property issues in a speaker’s agreement?

Copyright registration allows the holder to sue for infringement.

Better evidence.

Statutory damages and attorney’s fees.

Need help with a copyright registration?

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

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