copyright – Page 14 – Attorney Evan Brown

February 18, 2009 Copyright

Retrospective: Graham v. James

I’m speaking about open source at John Marshall Law School’s 53rd Annual Intellectual Property Law Conference on February 27. More info here (warning – PDF!).

To prepare, I’m going over some important cases dealing with copyright licensing in general, that is, cases that deal with copyright licensing but not open source. In case you’re interested, here’s a writeup I just did of the classic case of Graham v. James, 144 F.3d 229 (2d Cir. 1998):

Graham contracted with James for James to develop a custom file retrieval program for use in connection with a CD-ROM compilation that Graham published. The two had an oral agreement whereby Graham would pay $1,000 to James for each new version of the CD-ROM, plus $1 for each disc sold.

After Graham and James had a falling out, Graham continued to use the program James wrote in subsequent versions of the CD-ROM. Graham had removed a copyright notice from the program’s source code, and did not pay the promised royalties. The two ended up in litigation against each other with James accusing Graham of infringing the copyright in the program.

After a bench trial, the lower court found in favor of James on the copyright infringement claim. Graham sought review with the Second Circuit. On appeal, the court vacated the judgment and remanded.

There was no dispute that a license agreement had been formed. Graham argued that at best, James could recover for breach of contract for the removal of the copyright notice and the failure to pay royalties, but not copyright infringement. James presented a number of arguments in an attempt to show there was no license that authorized the use.

One argument that James made was that Graham breached the conditions of the license agreement (and thereby used the program outside the scope of the license) by removing the copyright notice and failing to pay royalties. The court rejected this argument, holding that such activities were mere breaches of contractual covenants between the parties and not a failure to satisfy conditions of the license agreement.

Citing to Nimmer, the court easily held that one does not have a cause of action for infringement when one fails to attribute the author. So there was no infringement resulting from that.

Under the circumstances, the nonpayment of royalties was not the failure of a condition for authorized use. Under New York law, there is a presumption that terms of a contract are covenants and not conditions. In this case, James turned over the program for use before any royalties were paid. Contract obligations that are to be performed after partial performance are not treated as conditions, but as promises (i.e., covenants).

Another argument James made (which the court also rejected) was that assuming, arguendo, the nonpayment of royalties and the failure to attribute were breaches of covenants and not failures to satisfy a condition of the license, the breach of the covenant was so material that the contract was terminated by rescission.

But rescission does not happen automatically upon a substantial breach. The nonbreaching party must “manifest his intention to rescind within a reasonable time.” In this case, the record did not show that James rescinded the license to Graham.

Since James failed to show the absence of a licensing agreement or a failure to satisfy a condition of the agreement, the court vacated the copyright infringement judgment.

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.

December 22, 2008 Copyright, DMCA

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.

December 19, 2008 Copyright, Litigation

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.

November 26, 2008 Copyright

Is Twitter a big fat copyright infringing turkey?

Here’s a topic you can mull over if conversation gets slow during tomorrow’s Thanksgiving dinner: Does Twitter infringe your copyright every time you post to it (i.e., put up a “tweet”)?

Consider this:

One of the exclusive rights of a copyright owner (under 17 U.S.C. 106) is the right to display the work. A website displays content when it serves up pages to the end user. Posts to Twitter — though they’re only 140 characters maximum — are arguably copyright protected works. (Set aside the question of retweeting.)

Twitter’s Terms of Service, in an earnest effort to be generous and progressive, assure users that when it comes to copyright, “what’s yours is yours.” Elaborating on this point, the Terms of Service go on to say that “[Twitter] claim[s] no intellectual property rights over the material you provide to the Twitter service.” In so many words, Twitter is saying “thanks but no thanks” to any copyright rights it might otherwise have over user-submitted content.

But by displaying tweets, Twitter is exercising one of the exclusive rights of the copyright owner. To do this lawfully, it has to have permission. And this permission is an intellectual property right. But didn’t Twitter just tell us that it doesn’t want any such right? Yes. So it has no permission. Exercise of an exclusive copyright right without permission (fair use aside) is infringement.

So should we all go out and sue Twitter for infringement? Of course not. Twitter would have a number of good defenses, which I expect may get articulated in the comments to this post. Are you really going to pay the filing fee to the Copyright Office and register the copyright in each of your tweets? You’ll have to do that before you can even show up in court. And what about injunctive relief? A court order making Twitter take down your stuff would seem to defeat the whole purpose, at least a little bit.

Similar analysis from Venkat here.

Turkey photo courtesy Flickr user stevevoght via this Creative Commons license.

October 28, 2008 Copyright

Google Book Search case settles

Three years after it was filed, much of that time existing in apparent dormancy, the copyright infringement case filed by the Authors Guild against Google Book Search (f/k/a Google Print) has settled. (Thanks to Greg Beck for alerting me to this via a post he put up on Twitter.)

Here is a page with all kinds of information about the settlement. It’s a complicated proposed agreement, so it will take some time to understand it. There is sure to be plenty of commentary from others in the blogosphere over the next day or so.

It’s good to see this resolved. Almost three years ago I was on a panel discussion at the John Marshall Law School talking about the fair use implications of the case. You can download the MP3 of that talk here.

October 28, 2008 Copyright, DMCA

DMCA reaches the decade mark

My friend Kevin Thompson over at Cyberlaw Central reminded me this morning in this post that President Clinton signed the Digital Millennium Copyright Act ten years ago today. Tempus fugit. It’s interesting to reflect on how this critical piece of legislation has affected (I think fostered) the growth of the online infrastructure with its safe harbor provisions found at 17 U.S.C. 512.

DMCA at 10 years

Simply stated, the DMCA at section 512 gives safe harbor protections to providers of interactive computer services (like ISPs and websites hosting user generated content) from liability when users upload content that infringes on another’s copyright rights. To sail its ship into the safe harbor, the provider has to take certain affirmative steps, like registering an agent with the Copyright Office, terminating the accounts of repeat infringers, and, most importantly, responding appropriately to “takedown notices” sent by copyright owners identifying infringing content on the provider’s system.

Though few could disagree with the principle of protecting service providers from infringement liability occasioned by the conduct of third party users (i.e., stemming from user generated content), the DMCA has its critics. And the actual mechanism has some bugs.

A big factor in the problem is the sheer volume of user generated content that’s put online. How can an operator like YouTube, who gets hours of new content loaded to its servers every minute, reasonably be expected to give meaningful review to every takedown notice that comes its way? It can’t.

So for practical reasons, big providers (and smaller ones alike) take down accused content essentially with a rubber stamp. And who can blame them? It saves administrative time and helps ensure safe harbor protection. But there are negative consequences to users and to the public. These consequences on the First Amendment and other rights are well-exemplified by the recent correspondence between the McCain-Palin campaign and YouTube, with amicus-like voices joining the chorus.

Like any ten-year old, the DMCA shows signs of maturity. It has withstood a decade of scrutiny, all the while giving service providers peace of mind, along with relatively efficient mechanisms for copyright owners to get infringing material taken down quickly. But also like a ten-year-old, the challenging years of adolescence — and the accompanying rudimentary changes — are around the corner. It’ll still be the DMCA, but I wouldn’t be surprised to see some transformation going on as user generated content becomes less a novelty and more a standard.

Birthday cake photo courtesy of Flickr user “juverna” via this Creative Commons license.

Subpoena to university in P2P case must give time to notify parents

UMG Recordings, Inc. v. Doe, No. 08-3999, 2008 WL 4104207 (N.D.Cal. September 4, 2008)

Plaintiff record companies, using Media Sentry, found the IP address of a John Doe file-sharing defendant, and filed suit against Doe in federal court for copyright infringement. As in any case where a defendant is known only by his or her IP address, the record companies needed some discovery to ascertain the name and physical address matching that IP address. But the federal rules of procedure say that without a court order, a party cannot seek discovery until the parties have conferred pursuant to Fed. R. Civ. P. 26(f).

So the record companies sought the court order allowing them to issue a subpoena to Doe’s Internet service provider prior to the 26(f) conference. The court granted the order, but with a caveat.

The evidence showed that Doe was a student at the University of California, Santa Cruz. Under the Family Educational Rights and Privacy Act at 20 U.S.C. § 1232g, a college generally cannot disclose “any personally identifiable information in education records other than directory information.” There’s an exception to that rule when the college is answering a lawfully issued subpoena, provided that “parents and the students are notified of all such … subpoenas in advance of the compliance therewith by the educational institution or agency.”

The court granted the record companies’ motion for leave to serve the subpoena prior to the Rule 26(f) conference, but required that the subpoena’s return date “be reasonably calculated to permit the University to notify John Doe and John Doe’s parents if it chooses prior to responding to the subpoena.”

Veoh eligible for DMCA Safe Harbor

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Io Group, Inc. v. Veoh Networks, Inc., 2008 WL 4065872 (N.D.Cal. Aug. 27, 2008)

The U.S. District Court for the Northern District of California ruled that Veoh’s hosting of user-provided content is protected by the DMCA safe harbor provision, and that it does not have a duty to police for potential copyright infringement on behalf of third-parties, but rather must act to remove infringing content when so put on notice.

IO produces adult films; Veoh hosts, inter alia, its own “Internet TV channels” and user-posted content (much like YouTube). In June 2006, IO discovered clips from ten (10) of its copyrighted films ranging from 6 seconds to 40 minutes in length hosted on Veoh. Rather than sending Veoh a “DMCA Notice & Takedown” letter, IO filed the instant copyright infringement suit. (Coincidentally, Veoh had already removed all adult content sua sponte — including IO’s prior to the suit). Had Veoh received such a notice, so the story goes, it would have removed the content, and terminated the posting individual’s account.

When a user submits a video for posting, Veoh’s system extracts certain metadata (e.g., file format and length), assigns a file number, extracts several still images (seen on the site as an icon), and converts the video to Flash. Prior to posting, Veoh’s employees randomly spot check the videos for compliance with Veoh’s policies (i.e., that the content is not infringing third-party copyrights). On at least one occasion, such a spot check revealed infringing content (an unreleased movie) which was not posted.

Veoh moved for summary judgment under the DMCA’s Safe Harbors which “provide protection from liability for: (1) transitory digital network communications; (2) system caching; (3) information residing on systems or networks at the direction of users; and (4) information location tools.” Ellison, 357 F.3d at 1076-77. Finding that Veoh is a Service Provider under the DMCA, the Court had little trouble in finding that it qualified for the Safe Harbors. IO admitted that Veoh “(a) has adopted and informed account holders of its repeat infringer policy and (b) accommodates, and does not interfere with, “standard technical measures” used to protect copyrighted works”, but took issue with the manner in which Veoh implemented its repeat infringer policy.

Veoh clearly established that it had a functioning DMCA Notice & Takedown system:

Veoh has identified its designated Copyright Agent to receive notification of claimed violations and included information about how and where to send notices of claimed infringement.
Veoh often responds to infringement notices the same day they are received.
When Veoh receives notice of infringement, after a first warning, the account is terminated and all content provided by that user disabled.
Veoh terminates access to other identical infringing files and permanently blocks them from being uploaded again.
Veoh has terminated over 1,000 users for copyright infringement.

The Court held that Veoh did not have a duty to investigate whether terminated users were re-appearing under pseudonyms, but that as long as it continued to effectively address alleged infringements, it continued to qualify for the DMCA Safe Harbors; moreover, it did not have to track users’ IP addresses to readily identify possibly fraudulent new user accounts.

The Court further noted that: “In essence, a service provider [Veoh] is eligible for safe harbor under section 512(c) if it (1) does not know of infringement; or (2) acts expeditiously to remove or disable access to the material when it (a) has actual knowledge, (b) is aware of facts or circumstances from which infringing activity is apparent, or (c) has received DMCA-compliant notice; and (3) either does not have the right and ability to control the infringing activity, or – if it does – that it does not receive a financial benefit directly attributable to the infringing activity.”

The Court found that (1) there was no question that Veoh did not know of the alleged infringement — since IO did not file a DMCA Notice (2) it acted expeditiously to remove user-posted infringing content, (3) it did not have actual knowledge of infringement, (4) it was not aware of infringing activity, and (5) it did not have the right and ability to control the infringing activity (the Court did not address any financial benefit).

In sum: the Court “[did] not find that the DMCA was intended to have Veoh shoulder the entire burden of policing third-party copyrights on its website (at the cost of losing its business if it cannot). Rather, the issue [was] whether Veoh [took] appropriate steps to deal with [alleged] copyright infringement.”

There is much speculation as to how, if at all, this case will affect the Viacom / YouTube case. YouTube praised the decision, Viacom noted the differences. Each case turns on its own facts, but to the extent there are similarities, this decision is wind in YouTube’s sails.

Case is: IO Group Inc.(Plaintiff), v. Veoh Networks, Inc. (Defendant)