infringement – Page 2 – Attorney Evan Brown

November 8, 2021 Contracts, Copyright

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

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.

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.

April 16, 2020 Copyright

Instagram’s terms of service gave ability to embed photo

Embedding Instagram photos on website not infringement — Be sure to follow @internetcases on Instagram.

Plaintiff – a professional photographer – sued website Mashable and Mashable’s owner after the website used HTML Instagram provides to embed one of plaintiff’s photos on Mashable. Defendants moved to dismiss, claiming they had rights to embed the photo under Instagram’s terms of service. The court agreed and dismissed the copyright infringement claim. Embedding Instagram photos on the website was not infringement.

Mashable embedded anyway

Before the dispute began, Mashable had first tried getting a license from plaintiff to use one of her photographs is a story about female photographers. It offered plaintiff $50 for the rights, but plaintiff refused. A few days later, Mashable used Instagram’s embed code to display the image on Mashable anyway.

Was this a server test question?

The embed code on Mashable caused the image to appear when one would visit the Mashable page by pulling the image data off of the Instagram server. Other cases have referred to this and similar technologies as “inline linking”. Almost 13 years ago, in the case of Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), the Ninth Circuit indicated strongly that inline linking did not cause copyright infringement problems because the process did not involve making a copy of the image, but instead just called it from the original server. From this notion came the “server test” articulated in that case.

A few months before the Perfect 10 v. Amazon decision, a district court in Texas (in the case of Live Nation Motor Sports, Inc. v. Davis, 2006 WL 3616983 (N.D.Tex., December 11, 2006)) had stopped a website owner from pulling in audio data from another server and appearing to stream it from his website.

And just a couple of years ago, another court in the same district as this case involving Instagram declined to adopt the Ninth Circuit’s “server test,” instead finding that embedding an image of Tom Brady in a tweet on a website was an unauthorized infringement of that plaintiff photographer’s right under the Copyright Act to display the photo. See Goldman v. Breitbart News Network, LLC, 302 F.Supp.3d 585 (S.D.N.Y. 2018).

Embedding Instagram photos on website was not infringement because of license

Though the underlying conduct in this case was very similar to that in Goldman v. Breitbart, the court’s decision here did not even cite that opinion. And it did not need to because the legal basis on which it decided this case was different.

In this case, the court held that when plaintiff signed up for Instagram, she granted Instagram the right to allow others (via sublicensing) to embed photos that plaintiff uploaded and made publicly available. Even though plaintiff never directly authorized Mashable to use her photo, Mashable was granted rights via Instagram to embed the photo, Instagram having gotten the ability to grant those rights to Mashable from plaintiff when she agreed to Instagram’s terms of use.

The message for Instagram users – your photos may end up on websites

The simple message for users of Instagram (and there are a lot of them) is to be aware that by uploading photos to Instagram and making them publicly available, you are authorizing Instagram to let others display those photos on third party websites. Posting to Instagram and making photos publicly viewable is, quite possibly, posting them to be viewed by a much wider audience than the Instagram community. Under the rule of this case,
embedding Instagram photos on a website is not infringement.

Sinclair v. Ziff Davis, LLC 2020 WL 1847841 (S.D.N.Y., April 13, 2020)

April 9, 2020 Anonymity, Copyright, Electronic Discovery, Litigation, Uncategorized

Identifying unknown online copyright infringers: guidance

A recent case addressed the problem of identifying unknown online copyright infringers. Plaintiff sued some unknown “John Doe” defendants who infringed plaintiff’s copyrights. To keep the lawsuit moving forward, plaintiff needed to serve the complaint on the defendants. But this presented a challenge, since plaintiff did not know to whom it should deliver the documents. So plaintiff filed a motion with the court, asking for permission to send interrogatories and to take depositions that would help unmask the anonymous infringers. Plaintiffs sought to get information from parties including PayPal, Cloudflare and various domain name registrars. The court’s response provides guidance to parties seeking to learn the identities of unknown parties.

To identify unknown online copyright infringers: early discovery

The rules of procedure in federal court do not permit discovery requests until the parties have had an initial conference with each other. But they cannot have that conference if the defendant is unknown. So the plaintiff needs to send discovery requests earlier than what the rules generally allow. It needs the court’s permission to do so.

A court will not permit early discovery in every instance. But courts have made exceptions, permitting limited discovery after a plaintiff files the complaint to permit the plaintiff to learn the identifying facts necessary to permit service on the defendant. Courts allow these requests upon a showing of good cause.

What constitutes good cause for early discovery?

This court applied the three part test for good cause set out more than 20 years ago in the case of Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999). The party seeking early discovery should be able to:

Identify the missing party with sufficient specificity such that the court can determine that the defendant is a real person or entity who could be sued in federal court;

Identify all previous steps taken to locate the elusive defendant; and

Establish to the court’s satisfaction that the suit against defendant could withstand a motion to dismiss.

Early discovery was appropriate in this case

Under the first prong of the test, the court found that plaintiff identified the missing parties with as much clarity as possible. Plaintiff stated that those missing parties were persons or entities, and that those parties had been observed and documented as infringing on plaintiff’s copyrights. Thus, as real persons or entities, those Doe parties could be sued in federal court.

As for the second prong, the only information plaintiff had regarding the defendants was the existence of accounts relating to the operations of the defendants’ websites. Therefore, there were no other measures plaintiff could take to identify the defendants other than to obtain their identifying information from the parties from whom it was sought.

Finally, on the third prong, for identifying unknown copyright infingers, the court found that plaintiff had pled the required elements of direct and contributory copyright infringement. Plaintiff claimed (1) it owned and had registered the copyrighted work at issue in the case; (2) defendants knew of the infringing activity and were conscious of their infringement; and (3) defendants actively participated in this infringement by inducing, causing and contributing to the infringement of plaintiff’s copyrighted work. Since plaintiff had alleged each of these elements properly, this cause of action could withstand a motion to dismiss.

MG Premium Ltd. v. Does, 2020 WL 1675741 (W.D. Wash. April 6, 2020)

March 31, 2020 Podcasts, Trademarks

Video: 3 trademark essentials for your business

Here are three key ideas for selecting and protecting your company’s trademark:

(1) choose a distinctive mark that is not descriptive,

(2) conduct clearance so that you will not infringe, and

(3) seek registration with the United States Patent and Trademark Office.

October 28, 2019 Anonymity, Copyright

Court denies porn company’s request to unmask anonymous copyright infringers

Serial copyright plaintiff Strike 3 Holdings filed a number of copyright complaints against defendants – known only by their IP addresses – for copyright infringement. Since plaintiff needed to know the identities of the defendants to move forward, it asked the court for leave to seek expedited discovery. In a consolidated matter – addressing a number of complaints – the court denied the motion.

The main reason for denying the motion was that, in the court’s view, as pleaded, plaintiff’s complaints were futile – they did not meet the standard for a motion to dismiss under Rule 12(b)(6).

Further, even if plaintiff had pled a cognizable copyright infringement claim, the court would still have denied the requests for expedited discovery. Good cause for the expedited discovery did not exist because:

plaintiff based its complaints on unequivocal affirmative representations of alleged facts that it did not know to be true
plaintiff’s subpoenas were misleading and created too great of an opportunity for misidentification of the unknown defendants
the linchpin of plaintiff’s good cause argument, that expedited discovery was the only way to stop infringement of its works, was wrong – plaintiff could have sent takedown notices under the Digital Millennium Copyright Act
plaintiff had other available means to stop infringement besides suing individual subscribers in thousands of John Doe complaints
the deterrent effect of plaintiff’s lawsuits was questionable
substantial prejudice may have inured to subscribers who were misidentified; and
plaintiff underestimated the substantial interest subscribers had in the constitutionally protected privacy of their subscription information.

On balance, therefore, the court found that the overall administration of justice and the prejudice to subscriber defendants outweighed plaintiff’s interest in expedited discovery.

Strike 3 Holdings, LLC v. Does, 2019 WL 5446239 (D.N.J. October 24, 2019)

October 9, 2019 Trademarks

Seventh Circuit requires trademark defendants to pay plaintiff’s attorneys’ fees

Court held this was an “exceptional case” and that trial court judge should have awarded plaintiff its attorneys’ fees under the Lanham Act.

While it is fairly common for successful litigants in copyright cases to be awarded the attorneys’ fees they incur in bringing or defending the case, that fee-shifting is not as common in trademark cases. There is a higher standard that must be met in trademark cases – the prevailing party must show that it has won an “exceptional case”. That recently occurred in the Seventh Circuit Court of Appeals.

Plaintiff home remodeling company and defendants – a manufacturer of storm shelters and one of its owners individually – found themselves in a trademark dispute over rights to use a mark plaintiff had developed to use as a distributor of defendants’ storm shelters.

Defendants disregarded on oral license agreement it had with plaintiff and used the mark for years outside the territorial scope of the license. The evidence showed that defendants intended to just buy the mark in the event plaintiff noticed defendants’ out-of-scope use.

Plaintiff indeed noticed and sued. The trademark infringement case went to trial. The trial court – though it found in plaintiff’s favor on the liability question and awarded more than $17 million in damages to plaintiff – declined to order defendants to pay plaintiff’s attorneys fees. Plaintiff sought review of the denial of attorney’s fees with the Seventh Circuit.

On appeal, the court reversed and remanded. It found that the trial court’s findings made this an “exceptional case” and thus appropriate for an award of attorneys’ fees.

Specifically, the court found that defendants’ conduct was willful, egregious and intentional. Likewise, defendants had acted in bad faith and maliciously, and refused to cease infringing activity, causing plaintiff unnecessary trouble and expense.

4SEMO.com Inc. v. Southern Illinois Storm Shelters, Inc., Nos. 18-1998 & 18-2095 (7th Cir., October 7, 2019)

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. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Web design feature killed express license argument in copyright case

Plaintiff sued defendant for copyright infringement over unlicensed use of plaintiff’s musical works in advertisements that defendant created and uploaded to YouTube. Defendant argued that the language and structure of plaintiff’s website – from which the works were downloaded – resulted in an express license or at least an implied license to use the musical works for commercial purposes. The court rejected these arguments and awarded summary judgment to plaintiff.

No express license

The basis for defendant’s argument that plaintiff’s website gave rise to an express license is not clear. In any event, plaintiff argued that a browsewrap agreement in place on the website established that the works could not be used for commercial purposes without the payment of a license fee. Citing to the well-known browsewrap case of Specht v. Netscape, 306 F.3d 17 (2d Cir. 2002), defendant argued that it did not have notice of the terms and conditions of the browsewrap agreement.

The court distinguished this case from Specht. In this case, plaintiff’s home page contained – similar to the case of Major v. McCallister, 302 S.W.3d 227 (Mo. Ct. App. 2009) – “immediately visible” hyperlinks that referenced terms of use and licensing information. A user did not have to scroll to find these links. So the terms and conditions of the browsewrap agreement were enforceable. Since the browsewrap agreement contained provisions requiring a license for commercial use, no reasonable jury could find that plaintiff had granted defendant an express license to use the musical works for commercial purposes free of charge.

No implied license

Defendant argued in the alternative that plaintiff had granted defendant an implied license to use the musical works, based on (1) plaintiff’s company name “Freeplay,” and (2) the absence of any conspicuous warning that the works were not available for commercial use.

The court found these arguments to be “easily disposed of.” Citing to I.A.E., Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996), the court noted that an implied license exists only when:

a person (the licensee) requests the creation of a work,
the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and
the licensor intends that the licensee-requestor copy and distribute his work.

The court found that defendant failed to prove any of these elements. Defendant never asked plaintiff to create any works. Nor did plaintiff make any works at defendant’s request to be used in defendant’s YouTube videos. Moreover, given plaintiff’s paid license requirements for business use of the copyrighted works available on its website, it could not be said that plaintiff intended that defendant download and distribute those works free of charge. Accordingly, the court found that no implied license existed.

Freeplay Music, LLC v. Dave Arbogast Buick-GMC, Inc., No. 17-42, 2019 WL 4647305 (S.D. Ohio, September 24, 2019)

November 20, 2018 Anonymity, Copyright, Electronic Discovery, Litigation, Privacy

Court labels copyright plaintiff as a troll and shuts down efforts to ID anonymous infringer

When a copyright plaintiff does not know who a particular alleged infringer is, it must first send a subpoena to the ISP assigned the IP address used to commit the alleged infringement. But the rules of procedure do not allow the sending of subpoenas until after the 26(f) conference – a meeting between the plaintiff and defendant (or their lawyers) to discuss the case. A plaintiff cannot have a 26(f) conference if the defendant has not been served with the complaint, and the complaint cannot be served unless the defendant’s identity is known.

So you can see the conundrum. To break out of this not-knowing, plaintiffs in situations like this will ask the court’s help through a motion for leave to take early discovery. That way the plaintiff can learn who the defendant is, serve the complaint, and move the case forward.

In the recent case of Strike 3 Holdings v. Doe, Judge Royce Lamberth of the U.S. District Court for the District of Columbia put a stop to the efforts of a plaintiff that it called a copyright troll right to its face (or at least right in the text of the opinion). The court denied Strike 3’s motion for leave to take early discovery to learn the identity of an unknown BitTorrent user accused of downloading pornography.

The court held that the plaintiff’s request was not specific enough, and the privacy interests of the unknown defendant, together with the social harm of being wrongfully accused of obtaining “particularly prurient pornography” were not outweighed by the trollish plaintiff’s need for the information.

Key to the court’s ruling was the idea that a subpoena in circumstances like this must be able to actually identify a defendant who could be sued. The court noted, however, that

Strike 3 could not withstand a 12(b)(6) motion in this case without resorting to far more intensive discovery machinations sufficiently establishing defendant did the infringing—examining physical evidence (at least the computers, smartphones, and tablets of anyone in the owner’s house, as well as any neighbor or houseguest who shared the Internet), and perhaps even interrogatories, document requests, or depositions. Strike 3’s requested subpoena thus will not—and may never—identify a defendant who could be sued.

The opinion is an entertaining read and conveys the judge’s clear frustration with copyright troll plaintiffs. Below are some of the more memorable quips.

Regarding the flaws of using IP addresses to identify people:

[Plaintiff’s] method [of identifying infringers] is famously flawed: virtual private networks and onion routing spoof IP addresses (for good and ill); routers and other devices are unsecured; malware cracks passwords and opens backdoors; multiple people (family, roommates, guests, neighbors, etc.) share the same IP address; a geolocation service might randomly assign addresses to some general location if it cannot more specifically identify another.

Regarding the public shame of being accused of infringing porn:

… But in many cases, the method is enough to force the Internet service provider (ISP) to unmask the IP address’s subscriber. And once the ISP outs the subscriber, permitting them to be served as the defendant, any future Google search of their name will turn-up associations with the websites Vixen, Blacked, Tushy, and Blacked Raw. The first two are awkward enough, but the latter two cater to even more singular tastes.

How trolls are quick to flee:

Indeed, the copyright troll’s success rate comes not from the Copyright Act, but from the law of large numbers. … These serial litigants drop cases at the first sign of resistance, preying on low-hanging fruit and staying one step ahead of any coordinated defense. They don’t seem to care about whether defendant actually did the infringing, or about developing the law. If a Billy Goat Gruff moves to confront a copyright troll in court, the troll cuts and runs back under its bridge. Perhaps the trolls fear a court disrupting their rinse-wash-and-repeat approach: file a deluge of complaints; ask the court to compel disclosure of the account holders; settle as many claims as possible; abandon the rest.

It’s pretty much extortion:

Armed with hundreds of cut-and-pasted complaints and boilerplate discovery motions, Strike 3 floods this courthouse (and others around the country) with lawsuits smacking of extortion. It treats this Court not as a citadel of justice, but as an ATM. Its feigned desire for legal process masks what it really seeks: for the Court to oversee a high-tech shakedown. This Court declines.

The court’s decision to deny discovery is anything but the rubber stamp approach so many judges in these kinds of cases over the past several years have been accused of employing.

Strike 3 Holdings v. Doe, 2018 WL 6027046 (D.D.C. November 16, 2018)

Tag: infringement