Category Archives: Copyright

ISPs Are Not Required to Search Independently for Potential Infringement

by Christina Frangiosa

Recently, the Southern District of New York confirmed that a copyright owner bears the sole responsibility for searching the marketplace for evidence of piracy or infringement of its works. In Viacom Int’l v. YouTube, Inc., the court explained that as long as an Internet Service Provider (“ISP”) such as YouTube complied with the notice and take down requirements of the Copyright Act (specifically the Digital Millennium Copyright Act, or “DMCA”), it could not be held liable for failing to proactively search for content on its site that might infringe copyrights owned by others. Viacom Int’l v. YouTube, Inc., No. 07 Civ. 2103, 2010 U.S. Dist. LEXIS 62829 (S.D.N.Y. June 23, 2010) (available on Justia.com).

Both parties moved for summary judgment. YouTube argued that the safe harbor of 17 U.S.C. § 512(c) protected it from liability for others’ infringing acts. Id. at *8-*9. In turn, Viacom argued that YouTube was liable for intentional infringement of thousands of Viacom’s copyrighted works and was not protected by the DMCA’s safe harbor rules because 1) it had actual knowledge of the infringement and failed to stop it, 2) YouTube benefited financially from the infringement because of the increased traffic to YouTube’s site; and 3) the safe harbor protected those ISPs that only provided storage at the direction of the user. Id.

The court was persuaded that the safe harbor applied and found that the phrases “actual knowledge that the material or an activity using the material on the system or network is infringing” and “facts or circumstances from which infringing activity is apparent” as used in § 512(c) meant “actual or constructive knowledge of specific and identifiable infringements of individual items” and not “general awareness that there are infringements (here, claimed to be widespread and common).” Id. at *15-*16. Ultimately, the court granted YouTube’s motion for summary judgment on the basis of the § 512(c) safe harbor and denied all of Viacom’s claims that YouTube was liable for direct and secondary copyright infringement. Id. at *45.

In this case, Viacom collected approximately 100,000 videos from YouTube that it claimed to be infringing and sent a single “mass take-down notice” listing each one. Id. at *30-*31. By the following business day, YouTube had removed “nearly all” of the videos identified in the notice. Id. at *31. YouTube’s prompt response was apparently key to the court’s holding. Id. at *37-*38. (YouTube’s current copyright policy (which relies on the § 512(c) safe harbor) can be found here.) Perhaps the court was also persuaded by the potentially daunting task facing an ISP that had “over 24 hours of new video-viewing time . . . uploaded to the YouTube website every minute” if it were required to search proactively for content that potentially infringed others’ rights. Id. at *14.

The court evaluated the legislative history of the DMCA and focused on its articulation of a “red-flag” test: “[A] service provider need not monitor its service or affirmatively seek facts indicating infringing activity (except to the extent consistent with a standard technical measure complying with subsection (h)), in order to claim this limitation on liability (or, indeed any other limitation provided by the legislation). However, if the service provider becomes aware of a ‘red flag’ from which infringing activity is apparent, it will lose the limitation of liability if it takes no action.” Id. at *20 (quoting Senate Judiciary Comm. Report, S. Rep. No. 105-190 at 44-45 (1998); House Comm. on Commerce Report, H.R. Rep. No. 105-551, pt. 2, at 53-54 (1998)).

The legislative history further clarified that “a service provider conducting a legitimate business would not be considered to receive a financial benefit directly attributable to the infringing activity’ where the infringer makes the same kind of payment as non-infringing users of the provider’s service.” Id. at *22 (quoting Senate Report at 44-45; House Rep. at 53-54). As a result, the court in the Viacom v. YouTube case concluded that any financial benefit YouTube received did not disqualify it from the safe harbor provisions because even those benefits must be tied to item-specific knowledge. Id. at *40-*41.

Congress similarly provided that the failure to recognize and act on “red flags” would preclude the application of the safe harbor. Id. at *25 (“a service provider would have no obligation to seek out copyright infringement, but it would not qualify for the safe harbor if it had turned a blind eye to ‘red flags’ of obvious infringement.”). Specifically, the ISP is not required to evaluate or reach any conclusion about the potential for infringement of someone else’s works. Id. at *26.

Ultimately, the court held that “[m]ere knowledge of prevalence of such activity in general is not enough” to justify imposing liability for indirect copyright infringement on an ISP. Id. at *29. Particularly, imposing liability on the ISP based solely on “knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials . . . would contravene the structure and operation of the DMCA.”

The court also rejected Viacom’s argument that the take down list (identifying approximately 100,000 claimed infringing videos) was merely “representative” of a larger number of infringing videos to be found on YouTube, and that the take down notice required YouTube to search for other similar works and remove them in order for the safe harbor to apply. Id. at *44-*45. The court opined that “This ‘representative list’ reference would eviscerate the required specificity of notice . . . if it were construed to mean a merely generic description (“all works by Gershwin”) without also giving the works’ locations at the site, and would put the provider to the factual search forbidden by § 512(m).” Id. at *44. Instead, take down notices must provide specific locations to the infringing works, whether by providing the precise URL (uniform resource locator, or website address), in order to permit the ISP to react appropriately to the notice and remove the infringing work.

The upshot is this: copyright owners still bear the burden to police the market to find instances of infringement, and cannot abdicate this duty to any of the various ISPs that host “user generated content.”

Statutory Language:

The relevant DMCA safe harbor rules that the court considered are contained in 17 U.S.C. § 512(c), reprinted below. There are several other safe harbors that the court did not analyze that can also be found in § 512. They are not reprinted here in the interest of space.

17 U.S.C. § 512(c) Information residing on systems or networks at direction of users.
(1) In general. A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider, if the service provider—
     (A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;
          (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or
          (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;
     (B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and
     (C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

(2) Designated agent. The limitations on liability established in this subsection apply to a service provider only if the service provider has designated an agent to receive notifications of claimed infringement described in paragraph (3), by making available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information:
     (A) the name, address, phone number, and electronic mail address of the agent.
     (B) other contact information which the Register of Copyrights may deem appropriate.
The Register of Copyrights shall maintain a current directory of agents available to the public for inspection, including through the Internet, in both electronic and hard copy formats, and may require payment of a fee by service providers to cover the costs of maintaining the directory.

(3) Elements of notification.
     (A) To be effective under this subsection, a notification of claimed infringement must be a written communication provided to the designated agent of a service provider that includes substantially the following:
          (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
          (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.
          (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material.
          (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
          (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.
          (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.
     (B) (i) Subject to clause (ii), a notification from a copyright owner or from a person authorized to act on behalf of the copyright owner that fails to comply substantially with the provisions of subparagraph (A) shall not be considered under paragraph (1)(A) in determining whether a service provider has actual knowledge or is aware of facts or circumstances from which infringing activity is apparent.
          (ii) In a case in which the notification that is provided to the service provider’s designated agent fails to comply substantially with all the provisions of subparagraph (A) but substantially complies with clauses (ii), (iii), and (iv) of subparagraph (A), clause (i) of this subparagraph applies only if the service provider promptly attempts to contact the person making the notification or takes other reasonable steps to assist in the receipt of notification that substantially complies with all the provisions of subparagraph (A).

17 U.S.C. § 512(c) (emphasis added).

Reassignment of Judge for Google Book Settlement?

by Christina Frangiosa

On April 22, 2010, the U.S. Senate unanimously confirmed The Honorable Denny Chin (currently sitting in the U.S. District Court for the Southern District of New York) to fill a vacancy on the U.S. Court of Appeals for the Second Circuit. Below is the summary of the legislative action related to his nomination and confirmation:

Nomination: PN1O6O-111

Date Received: October 06, 2009 (111th Congress)
Nominee: Denny Chin, of New York, to be United States Circuit Judge for the Second Circuit, vice Robert D. Sack, retired.
Referred to: Senate Judiciary
Reported by: Senate Judiciary

Legislative Actions
Floor Action: October 06, 2009 – Received in the Senate and referred to the Committee on the Judiciary.
Committee Action: November 18, 2009 – Committee on the Judiciary. Hearings held.
Committee Action: December 10, 2009 – Committee on the Judiciary. Ordered to be reported favorably.
Floor Action: December 10, 2009 – Reported by Senator Leahy, Committee on the Judiciary, without printed report.
Floor Action: December 10, 2009 – Placed on Senate Executive Calendar. Calendar No. 607.
Floor Action: April 15, 2010 – By unanimous consent agreement, the Senate proceed to executive session to consider nomination.
Floor Action: April 15, 2010 – Cloture motion presented In Senate.
Floor Action: April 20, 2010 – Cloture motion withdrawn by unanimous consent In Senate.
Floor Action: April 20, 2010 – By unanimous consent agreement, debate and vote 4-20-10.
Floor Action: April 22, 2010 – Considered by Senate pursuant to an order of April 20, 1010.
Floor Action: April 22, 2010 – By unanimous consent agreement, vote at 12 noon.
Floor Action: April 22, 2010 – Confirmed by the Senate by Yea-Nay Vote. 98 – 0. Record vote Number: 123.

Organization: The Judiciary
Control Number: 111PN0106000

Source: THOMAS (Library of Congress) (Screen clipping taken: 5/7/2010, 3:44 PM)

(Many times, links to the URL for the search results in the Library of Congress’s Thomas site end up not working, so I copied the text and provide it above.) The Congressional Record shows a report of the confirmation here (bottom right of the page).

The Wall Street Journal published a brief bio of Judge Chin when he was nominated in the Fall of 2009, noting that he is best known for “sentencing convicted Ponzi-scheme operator Bernard Madoff to 150 years in prison” earlier in 2009. See also, Benjamin Weiser, “Senate Confirms Federal District Judge for Appeals Court,” The New York Times, City Room (Apr. 22, 2010).

This confirmation is particularly interesting because Judge Chin currently presides over the Google Book Settlement case (Author’s Guild v. Google), which I’ve blogged about in the past. (Prior blog posts can be found archived together.) I have not found any information about when Judge Chin’s term begins on the Second Circuit, but note that he is currently listed as an active judge on the Second Circuit, effective 4/23/2010.

It remains to be seen who will be assigned to the Google Book Settlement once Judge Chin formally takes up his position as a judge of the Second Circuit, but the change will undoubtedly prove to be very interesting and may have a noticeable impact on the proceedings.

Google Book Project – Notice of Revised Settlement Agreement

by Christina Frangiosa

On December 14, 2009, the Settlement Administrator for the Google Book Project distributed a Supplemental Notice of the revised settlement. (More information about developments in the Authors’ Guild v Google lawsuit can be found in prior posts.) The Notice identifies the following changes to the various deadlines to proceed:

On or before January 28, 2010:

* Deadline to Opt Out of the settlement agreement, by completing and submitting the Opt Out Form (if a claimant already opted out of the prior version of the settlement agreement, it is not necessary to file another Opt Out Form).

* Deadline to Opt Back In to the settlement agreement, if an Opt Out Form was previously submitted.

* File an Objection to the Amended Settlement. If a claimant previously filed an objection to the prior settlement agreement, it will be maintained – without having to file it again. This deadline is for new objections only. (Parties can withdraw prior objections up until the date of the Fairness Hearing, if necessary.)

On or before February 4, 2010:

* File a notice of intent to appear at the Final Fairness Hearing.

February 18, 2010:

* The scheduled date for the Final Settlement/Fairness Hearing.

(The dates above were also set forth in the Court’s November 19, 2009 Order granting preliminary approval to the amended settlement agreement.)

On or before March 31, 2011:

* Deadline for any claimant who wishes to receive cash payments for “Books and Inserts” (as those terms are defined by the settlement agreement) to submit their claim forms. If a claimant is unable to submit a claim online, paper forms are available.

More details about the administration of the settlement agreement can be found on the Administrator’s Site, and potential claimants should review all of the details provided directly by the Administrator, in case specific forms or requirements change over the course of the administration period.

Related News

The Congressional Research Service released a report on November 27, 2009, analyzing Google’s argument that it did not infringe the copyrights at issue because its use (in digitizing, indexing and re-publishing to some extent the underlying works) qualified for the “fair use” defense to act as a complete bar to liability. The report, “The Google Library Project: Is Digitization for Purposes of Online Indexing Fair Use Under Copyright Law,” was prepared by Kate M. Manuel, Esquire, a legislative attorney with CRS, and is available through various subscription-only sites. If you have a subscription to BNA’s Patent, Trademark & Copyright Journal, you can find a copy of the Report as a reference at the end of the article entitled “Google Books Settlement Could Be Back Before Court, Foreign Litigation a Possibility,” 79 PTCJ 154 (Dec. 11, 2009).

Update on Google Book Settlement

by Christina Frangiosa

On November 13, 2009, the parties to the Author’s Guild, Inc. v. Google, Inc. lawsuit submitted a revised settlement agreement, for which it sought court approval. Prior posts about the lawsuit and its implications can be found here.

The revised settlement agreement is 171 pages (the original agreement was a mere 134 pages) – so it will take some time before all of the pivotal terms and conditions are understood and vetted by the media, government agencies and the public. I have only briefly scanned the revised agreement, and may decide at a later date to enhance my own written analysis of its implications as I become more familiar with its terms.

In the meantime, here are some provisions of interest of the revised Agreement for your preliminary consideration:

* Google will pay “a minimum of $45 million into the Settlement Fund to pay Settlement Class members whose Books and Inserts have been Digitized prior to the May 5, 2009.” Agreement ¶ 2.1(b).

* Anyone who wishes to receive a cash payment under the revised settlement agreement must file their claim form by March 31, 2011.

* Plaintiffs’ attorneys can receive up to $30 million in fees after the effective date of the Agreement (assuming that it obtains final approval by the Court). Agreement ¶ 5.5.

* The Agreement proposes to distribute “at least $60 per Principal Work,” and less for entire copies of “inserts” ($15) or partial copies of “inserts” ($5). Agreement ¶ 5.1(a).

* Certain foreign works have been removed from coverage by the Agreement (although works published in Britain, Canada or Australia are still covered). Agreement ¶ 1.19.

* Other online book distributors may participate in the distribution of out-of-print and unclaimed works (a right that previously had been reserved for Google exclusively). Agreement ¶ 2.4.

* Rights holders can direct Google to exclude their works (with some limitations) provided that the request is received no later than March 9, 2012. Agreement ¶ 3.5(a)(iii).

* Google may still elect to exclude works from the database for any “editorial or non-editorial” reasons, although it must provide a digital copy of the excluded work (along with an explanation of why it was excluded) to the Book Rights Registry. Agreement ¶¶ 3.7(e) & (e)(i).

* Google apparently will be allowed to continue scanning works that are not subject to payment under the Agreement. Agreement ¶ 3.1(a). Thus, even this revision appears to severely limit the online distribution rights of authors and publishers.

* Books and inserts can be designated as either “Display” or “No Display” – in other words, the author/publisher can request that the book not be displayed in search results. Agreement ¶¶ 3.3, 3.4. It appears, however, that the scanned copy of a book designed “No Display” will continue to exist in the database, even if Google is not permitted to display it in the search results.

Other Analyses of the Revised Settlement Agreement

Others have opined about the impact of this revision, including the following:

* Jonathan Band’s A Guide for the Perplexed, Part III, analyzing the November 13 amendments to the settlement agreement in great detail;

* Copyright Clearance Center seminars and webinars about the impact of the settlement;

* Electronic Frontier Foundation’s Deep Links Blog covered the revised settlement agreement from the perspective of the pros and cons, access, competition, and privacy;

* Dr. James Grimmelman’s Blog, The Laboratorium;

* The Official Settlement Web Site;

* The Public Index and its annotated copy of the revised settlement agreement;

(*Note that I have not fully analyzed or reviewed each of these external links – and therefore do not endorse their opinions or recommendations. I am providing links to these sources, however, in the interest of fostering a diverse and robust discussion of the impact of this agreement on copyright law and electronic book publishing into the future.)

Court Grants Preliminary Approval and Sets Deadlines

On November 19, 2009, the Court granted preliminary approval of the Amended Settlement Agreement, and set February 18, 2010 as the new hearing date for the Final Fairness Hearing. Any opposition to the revised settlement agreement must be filed by January 28, 2010. Any class member who wishes to appear at the hearing must file a Notice of Intent to Appear no later than February 4, 2010.

Basic Questions – Differences between Copyrights and Trademarks

by Christina Frangiosa

While it seems that this topic may be rather basic, the differences between types of protection under the broader heading of “intellectual property law,” are commonly confused. Not only have I been asked this question directly, but also I have heard folks frequently using the words “copyright,” “trademark” and “patents” interchangeably. These terms have very separate meanings, however, and the doctrines and black letter assumptions applicable to each are very different.

(Note that because I do not practice in the area of patent law, I am omitting patents from this discussion. Recognize, however, that patent law is a pivotal component of the larger intellectual property law environment and should not be ignored when considering what protections to pursue for various intellectual property assets.)

Copyrights (17 U.S.C. § 101 et seq.)

In a nutshell, U.S. copyright law protects an “original work of authorship fixed in a tangible medium of expression” from being copied and/or used by others. The phrase “works of authorship” generally refers to creative works such as books, movies, scripts, computer software, sculptures, paintings, music, and lyrics, although myriad other works are also covered.
What is protected is the expression itself, not the idea underlying the expression. As a result, if you wrote a book that describes a conflict between two family members, you could not prevent another author from writing a book that also describes such a conflict. If the new book copied your precise language (in whole or in significant part), you might have some remedies against infringement under the Copyright Act – but note that what is protected is the way that you expressed the idea, not the underlying idea itself.

Trademarks (15 U.S.C. § 1051 et seq.)

Generally, trademark law protects words, symbols, logos, sounds and other mechanisms of identifying brand names. The key to determining whether a particular mark has trademark value is whether or not consumers recognize it as identifying a single source of goods or services in the market. As a result, “use” of (or a bona fide “intent to use”) the mark in connection with particular goods or services governs the scope of the mark’s protection.

If a term is generic, it cannot act as a trademark or achieve federal registration, lacking any value as an indicator of source of goods or services. Beyond generic terms, various types of marks can be registered if certain circumstances exist, requiring an analysis of the underlying facts. A sliding scale describes the strength of these types of marks, ranging from merely descriptive on the one side (moderately strong source indicators) to arbitrary or fanciful on the other (very strong source indicators), with descriptive and suggestive marks falling in the middle.

How do Domain Names Fit into these Definitions?

Domain names are simply addresses at which a user of the Internet can locate a particular web site. They can be equated to mailing addresses or even 1-800 phone numbers and typically appear in a www.name.com or www.name.net (etc.) format. The domain names may contain trademarks or they may contain more generic or descriptive terms.

When a domain name contains a trademark owned by another, the trademark owner has several options to enforce his or her rights, including negotiations with the domain name owner, other pre-litigation strategies or ultimately, filing claims in either federal court (pursuant to the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125) or through a domain name dispute resolution provider (pursuant to the Uniform Dispute Resolution Policy). Which forum is appropriate in a particular case depends on an analysis of the specific circumstances, but each option has specific benefits and detriments to proceeding within its boundaries.

Future blog entries will be based on new developments in these areas. Please let me know if you have comments or questions.