Attorney Evan Brown

February 17, 2009 Contracts, Copyright, Privacy, Right of Publicity

Shame on you, Facebook, for overreaching

Facebook, I hereby grant to you an irrevocable, perpetual, non-exclusive, transferable, fully paid, worldwide license (with the right to sublicense) to use the following content: “Go jump in a lake.”

The past few days people have been talking about how scandalous it is that Facebook changed its terms of service to grab up a very broad license in content its users upload. I’m sure that Facebook is counting on this controversy to go wherever it is that memes go to die, to be forgotten just like most controversies-du-semaine. It probably will, but as the sentiment finds itself already on the decline, I’ll comment.

Here’s what the offending section of the Facebook terms of service now says, in relevant part:

You hereby grant Facebook an irrevocable, perpetual, non-exclusive, transferable, fully paid, worldwide license (with the right to sublicense) to (a) use, copy, publish, stream, store, retain, publicly perform or display, transmit, scan, reformat, modify, edit, frame, translate, excerpt, adapt, create derivative works and distribute (through multiple tiers), any User Content you (i) Post on or in connection with the Facebook Service or the promotion thereof subject only to your privacy settings or (ii) enable a user to Post, including by offering a Share Link on your website and (b) to use your name, likeness and image for any purpose, including commercial or advertising, each of (a) and (b) on or in connection with the Facebook Service or the promotion thereof. You represent and warrant that you have all rights and permissions to grant the foregoing licenses.

I was pretty peeved when I learned that Facebook had modified its terms to get a broader license. But I was even more peeved when I read founder Mark Zuckerburg’s blog post from yesterday which tried to justify the changes. Of course Facebook must make sure it has the rights it needs in order to “show [users’ content and information] to the other people they’ve asked [it] to share it with.” But isn’t the right to share that content inherent in the very “asking”? Why be grabby?

Facebook is being content greedy. It’s commandeering more than it needs to run the service. An example Zuckerburg uses in the post concerns the text of a messages sent between friends. If one user deactivates his or her account, a copy of each message will still exist in the other friend’s inbox. Fine. I see the point. So get a license to store and display a copy of private messages. There’s no problem with that.

The bigger rub comes with photos and video users upload. Why does Facebook need a perpetual license for that? I don’t see any reason, whether from a technological or other practical standpoint, why photos and video could not or should not be deleted — and the license to Facebook terminated — when a user deactivates his or her account. YouTube doesn’t demand a license for content after it has been taken down by a user.

Zuckerburg’s post contains the following interesting statement: “In reality, we wouldn’t share your information in a way you wouldn’t want.” Okay Mark, let’s talk about reality. I don’t want you using information about me, like my name, for commercial purposes. That’s reality. Why then do you demand to have the right to use my name and other information for commercial purposes? Are you suggesting that the terms of service as now written don’t reflect reality? I know they were written by lawyers, but surely your legal counsel can’t be that removed from the real world.

I like Facebook, and through it I have reconnected with old friends and made some new ones. But those connections are what’s important, not the intermediary. I may delete my photos off of there but I’ll probably keep using it, at least for now. But I’ll likely post less content. Shame on you, Facebook, and shame on you Mark Zuckerburg, for putting up a post just filled with platitudes, all while ignoring the fact there’s no reason for your new overreaching. That kind of stunt will invigorate those who want an alternative to Facebook, and will accellerate the process of making Facebook tomorrow’s Friendster.

Greedy photo courtesy Flickr user Gribiche under this Creative Commons license.

February 13, 2009 Copyright, Litigation

RIAA’s need for discovery was not so urgent

Elektra Entertainment Group, Inc. v. Does 1-6, No. 08-444 (S.D. Ohio February 5, 2009)

The RIAA’s de-emphasis on lawsuits against individual file sharers may underlie the result in a recent case from a federal court in Ohio. The music industry plaintiffs had sought expedited discovery so they could learn which members in a household (either the mother or one of the children) was responsible for illegally trading files. Finding that the need for the discovery was not urgent, the court denied the record companies’ request.

Electra Entertainment and others sued one David Licata in 2007, accusing him of infringing the copyright in sound recordings back in 2005. Licata claimed he did not know who was responsible for trading the files (though AOL had identified Licata’s account as corresponding with the offending IP address). During discovery in that case, however, Licata identified the other members of his household.

Instead of suing one or more of these other members of the household, the recording industry plaintiffs filed another John Doe suit, leaving it to later to find out the identities of the particular individuals who were allegedly infringing. But instead of acting diligently to figure out who to go after, the record companies did nothing for about five months.

Last November, the court ordered the plaintiffs to show cause why the case should not be dismissed, since the defendants had not been served with process (after all, the record companies claimed they didn’t know who to sue). In response to that order, the plaintiffs sought leave under Fed. R. Civ. P. 26(d) to take expedited discovery. The court denied the motion, holding that there was not good cause shown to accelerate the normal discovery schedule.

The court looked to the long period of time — 152 days — that had passed from the suit being filed to the request for expedited discovery. That duration, coupled with the fact that the plaintiffs already knew the names of the other family members who were likely the proper defendants, undercut any argument that the need for discovery was urgent. Without such urgency (which usually exists when there is a risk that evidence will be destroyed or someone will be injured), there was no good cause to allow the depositions of the mother and children prior to the Fed. R. Civ. P. 26(f) conference.

[Hat tip to Ray Beckerman for alerting me to this decision.]

Photo courtesy Flickr user swanksalot under this Creative Commons license.

February 11, 2009 Copyright

Does the Kindle 2’s text-to-speech feature violate copyright law?

The executive director of the Author’s Guild apparently objects to a feature of Amazon’s new Kindle 2 that would permit the vision impaired to hear the book’s text read in a computer generated voice. The Wall Street Journal quoted Paul Aiken yesterday as saying “They don’t have the right to read a book out loud. That’s an audio right, which is derivative under copyright law.”

Does Aiken have a legitimate gripe? I say it depends on the technology. And the fact that there could be a difference based merely on a technological setup underscores how digital technology has sent some aspects of copyright fumbling towards absurdity.

Granted, one of the exclusive rights that a copyright owner has under the Copyright Act is the right to prepare derivative works. The Copyright Act defines a derivative work as a “work based upon one or more preexisting works, such as a . . . sound recording . . . in which a work may be recast, transformed, or adapted.” But is the sound being read aloud by the Kindle 2 truly a “work” that is protected by copyright? If it’s not a work to begin with, it can’t be a derivative work.

Copyright protection only attaches to works of authorship that are fixed in a tangible medium of expression. For a work to be “fixed,” it has to be embodied for more than a mere transitory duration.

Here’s where the Kindle 2’s technology could determine whether a copyrightable derivative work comes into existence. I’ve searched for some technical specifications on the Kindle 2 but haven’t found anything on this point (maybe someone in the comments can help) — if the text-to-speech functionality creates an entire file that is saved and played back, it looks more like a fixed, copyrightable work has come into existence. On the other hand, if the device creates the audio data on the fly, so to speak, and releases it into some sort of buffer that is continually overwritten, it looks less likely a copyrightable work has been created.

We can look to the Second Circuit’s Cablevision decision from last summer for guidance. (The real name and full cite to that case is Cartoon Network v. CSC Holdings, 536 F.3d 121 (2nd Cir. 2008)). In Cablevision, the court held that a buffer comprising just one second of an audiovisual work at a time did not embody the work for more than a mere transitory duration.

So do you see how this could relate to the Kindle 2? If just a little part of the underlying textual work is being converted to audio at a time, there is nothing derivative being embodied for more than a mere transitory duration. Though creating audio, it would seem not to implicate the “audio right” that Aiken of the Author’s Guild mentions.

February 6, 2009 Fraud/Misrepresentation, Trademarks

Trademark infringement and false designation claims not subject to heightened pleading standard

Court also foreshadows that if all they’re talking about is metatags, there won’t be much of a case.

Indiaweekly.com, LLC v. Nehaflix.com, Inc., 2009 WL 189867 (D. Conn. January 27, 2009)

In moving to dismiss claims brought against it for trademark infringement and false designation of origin under 15 U.S.C. Secs. 1114(1) and 1125(a), Indiaweekly.com, LLC claimed that the counterplaintiff Nehaflix.com had failed to allege sufficient facts to meet the standard of Fed. R. Civ. P. 9(b). That rule requires that “[i]n alleging fraud . . . a party must state with particularity the circumstances constituting fraud . . . .”

Bollywood mudflap

The U.S. District Court for the District of Connecticut rejected Indiaweekly.com’s assertion that such claims were subject to Rule 9’s heightened pleading standard. Nehaflix.com’s allegations that Indiaweekly.com placed Nehaflix’s trademark on Indiaweekly.com to draw in search traffic survived the motion to dismiss. It was plausible that potential Nehaflix customers, when searching for the term “Nehaflix” would, upon being directed to another site containing the term and selling competing goods, conclude that the two businesses were related when in fact they were not.

It is important to note that the court assumed for the sake of the motion to dismiss that the allegations that the Nehaflix mark “appeared” on Indiaweekly.com meant that the mark was visible when viewing the site and not merely in metatags. The court nodded to S&L Vitamins v. Australian Gold, Inc., 521 F.Supp.2d 188 (E.D.N.Y. 2007), which held that mere metatag use was not “use in commerce” for purposes of the Lanham Act.

Photo courtesy Flickr user Meanest Indian under this Creative Commons license.

February 5, 2009 Computer Crime, Employment

Probable cause existed to arrest employee for criminal data tampering

Deng v. Sears, Roebuck & Co., 552 F.3d 574 (7th Cir. January 5, 2009).

Employee Deng got a bad review from his employer Sears, Roebuck & Co. Disaffected, he took disability leave but continued to come into the office. On one of these visits, he deleted a bunch of data relating to work he had been doing. It cost Sears more than $40,000 to restore that data.

Sears called the police to report the data deletion, and Deng was arrested a year and a half later in Massachusetts (which is where he had fled). Deng was charged with violation of 720 ILCS 5/16D-3(a)(3), the Illinois law that prohibits tampering with computer files without the permission of the files’ owner. The criminal court dismissed the charges at the preliminary stage because a witness failed to appear.

Deng then filed a federal civil action against Sears for malicious prosecution. After his case was thrown out at the district court level, he sought review with the Seventh Circuit. On appeal, the court affirmed the dismissal of Deng’s suit. Among the things Deng was required to prove was that his arrest was made without probable cause. The court found that probable cause existed.

Deng had argued that he was authorized to delete the data, since statistical modelers like him were expected from time to time to free up disk space and get rid of unneeded data. One problem with this argument, however, was that Deng was on disability leave. Nothing in the record showed that the remaining Sears employees thought the data was no longer needed. After all, they spent significant sums to restore it. Moreover, because Deng was on disability leave, he had no authority to do anything with the data, let alone get rid of it. Finally, Deng’s fleeing after the troubles began was an indicator to authorities that he had done something wrong. Probable cause requires an objective analysis. Flight added to the impression that a crime had been committed.

Tennessee lawyer Jack Burgin also discusses this case at his blog Our Own Point of View.

January 22, 2009 Personal Jurisdiction, Right of Publicity

No personal jurisdiction over Australian defendant in Flickr right of publicity case

Chang v. Virgin Mobile USA, LLC, 2009 WL 111570 (N.D.Tex. January 16, 2009)

Allison Chang (through her mother, since Allison is a minor) and Justin Ho-Wee Wong sued Australian-based Virgin Mobile Pty Ltd. alleging a number of tort claims including misappropriation of Chang’s right of publicity. Plaintiffs claimed that Virgin wrongfully used Chang’s picture in an Australian advertising campaign.

What makes the case intriguing is that Virgin got the photo off of Flickr. Wong took the picture and uploaded it there, attaching a Creative Commons Attribution 2.0 license to it. [See the ad]

Virgin moved to dismiss the action for lack of personal jurisdiction, arguing that it lacked minimum contacts with the forum state of Texas to satisfy constitutional due process. The court granted the motion and dismissed the case.

Chang argued that the court could exercise personal jurisdiction based on three contacts between Virgin and Texas: (1) Virgin’s accessing a Flickr server located in Texas; (2) Virgin’s contract (i.e., the Creative Commons license) with Wong, a Texas resident; and (3) the intrastate effects of Virgin’s use of Chang’s photograph in the advertising campaign.

The court found that Chang failed to establish the downloaded photo was on a server located in Texas. Though Flickr does maintain servers there, the photo could have been on another server located in either Virginia or Texas. The court rejected Chang’s argument that because Virgin directed its conduct to Flickr.com, it could be haled into court anywhere there are Flickr servers.

The court similarly found that any purported agreement with Wong via the Creative Commons license was not sufficient to establish personal jurisdiction. The Creative Commons license did not require Virgin to perform any of its obligations in Texas. Instead, the license permitted the photograph to be used anywhere in the world. Furthermore, Chang failed to show that Virgin performed any of its obligations in Texas. It used the photograph solely in Australia, the one place that, according to Virgin’s evidence, it was authorized to sell its products and services. Finally, because Virgin only used the photograph in Australia, the license that permitted its use was centered in Australia, not Texas.

Chang’s final argument was that she felt the injurious effects of the alleged misappropriation in Texas and therefore, under the holding of Calder v. Jones, a court in Texas could hear the case. The court rejected this argument finding that even though Chang may have shown she was affected in Texas, plaintiffs failed to show that Virgin’s conduct was intentionally directed into the forum.

Australian flag image courtesy Flickr user euthman under this Creative Commons license.

January 12, 2009 Computer Crime, Employment, Trade Secrets

No CFAA claim where no impairment of system or data

Andritz, Inc. v. Southern Maintenance Contractor, LLC, 2009 WL 48187 (M.D. Ga. January 7, 2008)

When defendants Pettit and Harper worked for plaintiff Andritz, Inc., they had company-issued laptops with which they accessed proprietary information. After defendants resigned, they allegedly took that proprietary information and gave it to defendant-competitor SMC.

Andritz sued in federal court, alleging violation of the Computer Fraud and Abuse Act (CFAA). Defendants moved to dismiss for failure to state a claim. The court granted the motion.

The CFAA claim failed because the plaintiff did not allege the type of “loss” or “damage” required to sustain such a claim. The loss that plaintiff alleged was that defendants took proprietary information and used it to poach customers.

But the CFAA requires there be an impairment of the computer system or data accessed. Because the plaintiff “still had access to the data just as it had before [d]efendants’ actions,” there was no violation of the CFAA.

Laptop photo courtesy Flickr user maveric2003 via this Creative Commons license.

January 8, 2009 Cybersquatting, Trademarks

Verizon obtains damages, injunction against regsitrar under ACPA

[This is a guest post by contributor Brian Beckham]

Plaintiff Verizon California, Inc. (Verizon) recently obtained a default judgment in the U.S. District Court for the Northern District of California, San Jose Division, in its favor against Defendant, the registrar OnlineNIC, Inc. (press release).

Despite repeated attempts, Verizon was not able to serve notice on OnlineNIC; the court ultimately approved Verizon’s application to serve process with the California Secretary of State. OnlineNIC was alleged to have engaged in the bad faith registration of 663 identical or confusingly similar domain names incorporating one of Verizon’s family of marks (e.g., <bestverizon.net>, <myprepaidverizon.com>, <verizonflios.com>, <vzwactivate.com>, etc.) inter alia, in violation of the ACPA. Verizon’s unchallenged, well-pleaded allegations were accepted by the court as true; OnlineNIC’s liability was thus established.

In addition to OnlineNIC’s default, significantly, the court noted that OnlineNIC had refused to alter its behavior (presumably after a cease & desist letter) and had purposefully attempted to avoid detection (e.g., by providing false contact information). However, given the default, the court was reluctant to impose the full statutory damages provided for under the ACPA ($100,000 per infringement), but imposed damages of $50,000 per violation (totaling $33.15 million). It remains to be seen whether Verizon will successfully collect, nonetheless, Verizon obtained a transfer order in its favor for all of the 663 infringing domain names. OnlineNIC (including any related entity) was further enjoined from directly or indirectly (i) registering, trafficking in or using any domain name that is identical or confusingly similar to the Verizon marks and (ii) assisting, aiding or abetting any other person or business entity in engaging in or performing and of the said activities.

This injunction seems to leaves open the question of whether the seemingly common registrar practice of actively suggesting alternate domain names available for registration (e.g., those that add alphanumerical strings, e.g., <new____4u.com>, <buy____.net>, <your____.org>, <my____pro.com>, <best____.com>, etc.) would be covered by the “assisting, aiding or abetting” language in the injunction.

Case is: 2008 U.S. Dist. LEXIS 104516

Should ISPs get paid to respond to DMCA takedown notices?

CNET News is running a story about how Jerry Scroggin, the owner of Louisiana’s Bayou Internet and Communications, expects big media to pay him for complying with DMCA takedown notices. No doubt Scroggin gets a little PR boost for his maverick attitude, and CNET keeps its traffic up by covering a provocative topic. After all, people love to see the little guy stick it to the man.

Here is something from the article that caught my attention:

Small companies like [Bayou] are innocent bystanders in the music industry’s war on copyright infringement. Nonetheless, they are asked to help enforce copyright law free of charge.

A couple of assumptions in this statement need addressing. I submit that:

ISPs are not innocent bystanders.

As much as one may disdain the RIAA, the organization is enforcing legitimate copyright rights. Though an ISP may have no bad intent to help people infringe (i.e., the “innocent” part), infringing content does pass through their systems. And few would disagree that the owner of a system is in the best position to control what happens in that system. So unless we’re going to turn the entire network over to a government, we must rely on the ISPs at the lower parts of the web to comply with the DMCA. They owe a duty. It’s in this way that the ISPs are anything by innocent bystanders in the copyright wars. In fact, they’re soldiers (albeit perhaps drafted).

Though the administrative burdens of DMCA compliance fall on the ISPs, the work is not undertaken for free.

The safe harbor that ISPs enjoy in return for compliance is a huge compensation. An entity in the safe harbor has more certainty that a suit for infringement would be unsuccessful. Were there more doubt about the outcome, there would be more litigation. More litigation equals more cost. And I guarantee you that those litigation costs would dwarf the administrative costs associated with taking down content identified in a notice. So substract the administrative costs from the hypothetical litigation costs, and there you have the compensation paid to ISPs for compliance.

What do you think?

Pirate Christmas photo courtesy Flickr user Ross_Angus under this Creative Commons license.

What could the RIAA’s switch in strategy mean?

The Wall Street Journal and others are reporting that the Recording Industry Association of America is adjusting its strategy for combating the massive infringement occasioned by the sharing of music files over the internet. Since 2003, that strategy has been to pursue copyright infringement cases against individual file sharers. The RIAA now says it will focus less on pursuing infringement litigation and more on working with internet service providers to shut down the accounts of individuals suspected of illegally trading files.

This is the third wave in the recording industry’s attack on digital piracy:

First wave: The labels went after the purveyors of the software used in file sharing. There are reported decisions involving Napster, Aimster and Kazaa, not to mention the U.S. Supreme Court decision in MGM v. Grokster.
Second wave: The thousands of lawsuits against individual file sharers. Though it’s said that the RIAA sued some 35,000 people, only one of those cases went through to verdict (the Jammie Thomas case). Most settled for a few thousand dollars.
Third wave: Rejection of the massive litigation model (announced today) and collaboration with ISPs to combat file sharing.

So what does this change in strategy tell us? Does it mean that the RIAA has given up and the file sharers have won? It’s hard to tell. But there may be some insight to be had into the broader picture of digital copyright enforcement. Here are some observations:

The ability to easily make innumerable perfect copies creates a problem for copyright holders that must be addressed at a systemic level (like at the ISP level). The suits against individuals are too much like whack-a-mole to have practical effect.
The question of whether merely making a copy available can be infringement is problematic. So it was probably a good time for the litigation to end so that that question doesn’t have many more opportunities to be answered unfavorably for the RIAA.
It makes less sense to think of copyright in terms of the right to “copy” as it did in the analog-only world. What’s more important now, it seems, is a distribution or access right. Another reason to focus on the ISPs and not the individuals. For more on this, see the work of Ernest Miller and Joan Feigenbaum, Taking the Copy Out of Copyright [Warning – PDF file].
Shifting to a model of “punishing” file sharers before claims of infringement can be litigated presents some issues that implicate due process. See Cindy Cohn’s comments in this article.
Regardless of the legal merits of one’s claim (i.e., the RIAA certainly has legitimate rights to enforce), there is a public relations downside to standing up for those rights.

No matter what the shift of strategy really means, the fact that there is a shift at all demonstrates the changing dymanic of the music industry. And it points to a shift, both practical and normative, in the manner copyright law applies to the digital content.

Photo courtesy Flickr user [nati] under this Creative Commons license.