by Lee Gesmer | Sep 16, 2015 | Copyright, DMCA/CDA
It’s not often that a case involving a 29 second video of toddlers cycling around on a kitchen floor goes to a federal court of appeals, much less results in an important, precedent-setting copyright decision. But that is exactly what happened in Lenz v. Universal Music Corp.
The cases arises from an issue inherent in the Digital Millennium Copyright Act. The DMCA allows copyright owners to request the “takedown” of a post that uses infringing content.
But, what does the copyright owner have to do to determine, first, whether fair use applies? Does it need to do anything at all?
This question has finally been decided by the Ninth Circuit in a much-anticipated decision issued on September 14, 2015.
The case had inauspicious beginnings. In 2007 Stephanie Lenz posted to YouTube a 29 second video of her toddler son cycling around the kitchen, with Prince’s song “Let’s Go Crazy” playing in the background. Universal sent a DMCA takedown notice to YouTube, but Ms. Lenz contended her use of the song was fair use, and therefore was non-infringing. Eventually the dispute made its way to federal court in California, with Ms. Lenz asserting that her use of the song was protected by fair use, and that Universal had failed to take fair use into consideration before requesting takedown of her video.
The issue before the court was whether, before sending a DMCA takedown notice, copyright holders must first evaluate whether the offending content qualifies as fair use. The court held that the copyright statute does require such an evaluation, but that the copyright holder need only form a “subjective good faith belief” that fair use does not apply. And, the copyright holder may not engage in “willful blindness” to avoid learning of fair use.
In this case Universal arguably failed to consider fair use at all.
The court does not answer the practical question now faced by Universal and others: what, exactly must a copyright holder do to show subjective good faith under the DMCA? Noting that it was “mindful of the pressing crush of voluminous infringing content that copyright holders face in a digital age,” the court described generally what appears to be a low standard to satisfy the “good faith” test. The court opined that subjective good faith belief does not require investigation of the allegedly infringing content. And, “without passing judgment,” that the use of computer algorithms appeared to be a “valid … middle ground” for processing content. However, the court failed to provide a standard for an computerized algorithmic test that might apply in the notoriously uncertain legal context of copyright fair use.
It seems difficult to conclude other than that this decision will increase the cost burden on the part of content holders who wish to use the DMCA to force the takedown of copyright-infringing content on the Internet. While the court provides little guidance as to what a copyright content owner will have to do to show that it exercised “subjective good faith” before sending a takedown notification, it seems likely that the ruling will involve increased human involvement, and perhaps even legal consultation in “close cases.”
This case was originally filed by Ms. Lenz in 2007, eight years ago, however it is far from concluded. The Ninth Circuit’s decision only sends the case back to the trial court for a trial under the legal standard enunciated by the Ninth Circuit. And, even that determination can only be reached after the court (or a jury) concludes that the 29 second video was fair use of the Prince song in the first place, an issue that has yet to be taken up by the court.
What, one might ask, can Ms. Lenz expect to receive in the event she prevails at trial? First, The Ninth Circuit decision explicitly allows her to recover “nominal damages” — in other words, damages as low as $1. However, even if she prevails and recovers only one dollar, she would be entitled to her costs and attorney’s fees, which could be a substantial amount, notwithstanding the fact that Ms. Lenz is represented by counsel pro bono.
Of course, given the economics of this type of case, its unlikely we’ll see too many similar cases of this sort in the future. Clearly, this was a “test case,” in which the principle, not monetary compensation, was the motivation. Not many recipients of DMCA takedown notices will bring suit when at best they can hope to recover nominal damages plus attorney’s fees.
For an earlier post discussing a decision on this issue by Judge Stearns in the District of Massachusetts, see Judge Stearns Weighs in on Legal Standard for Copyright Takedown Notices (Sept. 30, 2013).
Lenz v. Universal Music Corp. (9th Cir. Sept. 14, 2015).
by Lee Gesmer | Sep 1, 2015 | Copyright
One of the hoariest chestnuts of copyright law is that a recipe is not copyrightable.
Seemingly unaware of this – or in outright defiance of the law – the plaintiffs in Lorenzana v. South American Restaurants Corp. argued to the contrary. Specifically, the plaintiffs claimed copyright in a “Pechu Sandwich” recipe consisting of”fried chicken breast patty, lettuce, tomato, American cheese, and garlic mayonnaise on a bun.”
The complaint contained no allegation that the “recipe” for the sandwich was in a form of expression beyond that of a list of ingredients.
The district court dismissed the copyright claim, and the First Circuit made short work of affirming:
Contrary to [plaintiff’s] protests on appeal, the district court properly determined that a chicken sandwich is not eligible for copyright protection. This makes good sense; . . .. A recipe — or any instructions — listing the combination of chicken, lettuce, tomato, cheese, and mayonnaise on a bun to create a sandwich is quite plainly not a copyrightable work.
The only surprise in this decision is that the First Circuit did not award the defendants costs or attorney’s fees incurred in defending this appeal.
by Lee Gesmer | Jul 31, 2015 | Trademark
[Note: The decision discussed below turned out to be short-lived. On October 21, 2015, less than three months after its publication dated, the decision was withdrawn and a new opinion was issued, upholding the district court’s ruling that Amazon’s search results did not violate the Lanham Act. ]
In an unusual decision the Ninth Circuit Court of Appeals has held that the Amazon search results page for an “MTM Special Ops” watch — a product Amazon does not sell — has the potential to violate the Lanham Act. The Ninth Circuit reversed a decision holding to the contrary by the Federal District Court for the Central District of California, and remanded the case for trial.
MTM’s dealer agreements prohibit them from selling to Amazon, and MTM does not sell to Amazon directly. However, at issue were Amazon search engine results obtained when consumers searched for MTM’s Special Ops watch on Amazon. While Amazon was unable to offer its customers Special Ops watches, it brought them to a page displaying watches by MTM competitors such as Luminox and Chase-Durer.
MTM sued Amazon, but this was not a case of trademark infringement in the conventional sense – instead, of claiming that Amazon illegally used MTM’s trademark, MTM alleged that when consumers searched for MTM watches on Amazon, Amazon illegally misled them by merchandising competitive watches.
The district court dismissed the case, holding that the search results page made it unlikely that consumers would think the watches displayed were associated with the MTM watch.
The Ninth Circuit disagreed, holding that even if consumers realized that the watches featured by Amazon in place of the MTM watch were not Special Ops watches before making a purchase, Amazon’s search results may have created “initial interest confusion.” This offshoot of trademark law, which has been widely criticized and thought by many to be a thing of the past, arises when confusion arises early in the shopping process, even if the confusion is dispelled before the actual sale occurs.
The Ninth Circuit gave Amazon, and every other online retailer, an easy out from claims of this sort by repeatedly noting that “clear labeling” could avoid any confusion. In fact, the court unfavorably compared Amazon to Buy.com and Overstock.com, both of which informed consumers 
that they did not carry MTM Special Ops watches. Interestingly, however, in what may be an act of passive aggression by Jeff Bezos, Amazon has not yet changed its search results or added additional labeling since the Ninth Circuit’s opinion issued on July 6, 2015.
It may be a stretch to conclude that this decision has implications beyond internal search engines run by online retailers such as Amazon, but one never knows – the case may have breathed life back into the moribund “initial interest confusion” doctrine, at least in the Ninth Circuit.
Multi Time Machine, Inc. v. Amazon.com, Inc. (9th Cir. July 5, 2015)
by Lee Gesmer | Mar 18, 2015 | General
Stephen Lyons, a friend and attorney at Klieman & Lyons, asked me to guest-lecture the Law & Technology class he is teaching at MIT this semester. I only had one class period, so I decided to focus on the 2014 Supreme Court Aereo case. Although the slides are not “stand-alone” they are somewhat self-explanatory. I am sharing them below.
MIT Copyright Seminar 3-13-2015 (Reduced File Size) by gesmer
by Lee Gesmer | Jan 14, 2015 | Copyright
The fact that the Supreme Court has asked the Obama Administration (via the Office of the Solicitor General) to comment on Google’s application for certiorari in Oracle v. Google* has focused renewed interest on this case – not that it needs it. The case, if the Supreme Court accepts it, could be a replay of Lotus v. Borland, an important software copyright case the Supreme Court tried but failed to decide in 1996, when the Court deadlocked 4-4 (one justice abstaining).
*Note: For detailed procedural and substantive back ground on this case see these earlier posts: How Google Could Lose on Appeal; Oral Argument in Oracle v. Google: A Setback for Google?; CAFC Reverses Judge Alsup – Java API Declaring Code Held Copyrightable; Google Rolls the Dice, Files Cert Petition in Oracle Copyright Case. I also made a presentation to the Boston Bar Association on this case before the CAFC decision, slides here.
The issue is this: computer software — both source code and object code — is protected by copyright law so long as it meets copyright’s statutory requirements, the most important of which, for purposes of the case discussed in this post, is originality. At issue are the 7,000 lines of “declaring code” of Oracle’s Java API software. This software was copied by Google when it implemented the Android smartphone operating system. The Java API declaring code clearly satisfies copyright law’s requirement of “originality.” The issue, therefore, is why this code should not be protected by copyright.
*Note: APIs are specifications that allow programs to communicate with each other. A computer program designed to be compatible with another program must conform to the API of the first program, which establishes rules about how other programs must communicate information so that the two programs can work together to execute specific tasks.
The argument Google has made to the Supreme Court is that the software a “method of operation”* that should be denied copyright protection?
*Note: The Copyright Act states that “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b)
This issue has bedeviled the courts in this case. A federal district court judge in California held that Oracle’s Java API was an unprotectible method of operation. The Court of Appeals for the Federal Circuit reversed, holding that copyright protects the expression of a method of operation, and therefore the Java API is protected by copyright.
Now the software industry and copyright lawyers are eager to learn whether the Supreme Court is likely to accept review of this case, and the Court’s request that the Obama Administration weigh in thickens the plot by suggesting that the Court is giving Google’s appeal serious consideration.
The Supreme Court takes about 1% of the petitions filed with it, and despite its request to the Office of the Solicitor General I don’t think this case is likely to make the cut. Why is that so?
Setting aside the question of copyright fair use (which remains pending and will be retried on remand if the Supreme Court denies cert.), the core question is whether the Java API — 7,000 lines of programming code — is protected by copyright law.
The question is, why would the 7,000 lines Google copied from the Java API not be copyrightable? Google argues that the API code is not copyrightable because it is a “method of operation,” a category the Copyright Act expressly excludes from copyright protection. Google is inviting the Court to pick up, once again, an issue it proved unable to decide in 1996. In that case, Lotus v. Borland, decided by the First Circuit Court of Appeals based in Boston, the First Circuit held that a menu command hierarchy in a user interface (“File,” “Print,” “Copy” ….) was a “method of operation,” and therefore excluded from copyright protection, regardless of whether it is original. The menu commands were the “means by which a person operates something” — in that case a computerized spreadsheet — and therefore the commands were not protected by copyright.
The Supreme Court accepted review of that case, but one justice recused himself, and the remaining eight judges voted 4-4, leaving the case undecided at the Supreme Court and affirming (by default) the decision of the First Circuit, where it has stood as controlling law ever since (but only in the First Circuit).
No other federal circuit court has adopted Lotus v. Borland wholesale, and several courts have finessed the issue. In addition to the Federal Circuit’s decision in the current case, at least one circuit court has expressed disagreement, but that was in 1997, eighteen years ago. In other words, this is not an issue that has been burning up the federal courts since 1996. Google does its best to elevate this to a clear circuit split (one sure way to attract the attention of the Supreme Court is to present a circuit split), but frankly its effort is not entirely convincing given the infrequency with which the the issue has reached the appeals courts.
The amicus brief filed by the Electronic Frontier Foundation and a host of computer scientists (77 scientists) is no more convincing. The scientists based their argument on the need for compatibility. They argue that “copyrightable APIs would discourage innovation by creating potential liability for the mere act of writing a compatible program.” The problem with the scientists’ “compatibility/interoperability” argument is that it goes to fair use, an issue that neither the district court nor the Federal Circuit decided. At the trial of this case the jury deadlocked on the issue, and therefore absent intervention by the Supreme Court the case will be remanded for a retrial on this defense. While the scientists argue that the need for compatibility should lead the court to take the case and hold that APIs are uncopyrightable, their argument does not clearly address the “method of operation” argument made by Google.
Moreover, the scientists ignore the fact that the Google Android-Java API is not compatible with the Oracle API, a fact that Google has conceded.
If the Supreme Court is looking for the Office of the Solicitor General to help them decide whether this case is review-worthy, Google is likely to be disappointed. First, there is no reason to believe this is an issue of interest to the Obama administration – it hardly falls within any of the social action categories the administration is focused on. Second, the case can be appealed to the Court in the future by whichever party loses the retrial on fair use. Perhaps the case will settle, or the losing party will not appeal, saving the Court (and the Solicitor General) the effort. Lastly, as noted, while there may be a split of opinion among the federal circuit courts, the decisions that create the split are spread out over two decades. This hardly amounts to a cry for help from divided federal courts. Rather, this seems to be an obscure issue which could lie dormant for another ten or twenty years. If events prove otherwise, the Supreme Court will have another opportunity to take up the issue in a future case.
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The parties’ briefs filed with the Supreme Court:
Google Petition for Certiorari
Computer Scientists’ Amicus Filing in Support of Google
Oracle Opposition to Google’s petition
Update: The Supreme Court did not accept this case for review
Second Update: On re-appeal, following a trial and second appeal on fair use, the Supreme Court accepted Google’s appeal of this case. See my Oracle v. Google Resource Page here.
