In only three years the “Jumpman” case has become an established teaching tool in CopyrightX. I’ve taught it in the first class for three years running, and I know many other teaching fellows have as well. It’s a great way to get people who are new to copyright law thinking about copyright issues, in this case whether a photograph by Nike infringes a photo of Michael Jordan taken by Jacobus Rentmeester in 1984. The two photos are show below: Rentmeester’s original on the left, Nike’s allegedly infringing photo on the right. Rentmeester also alleged that Nike’s Jumpman logo (above) infringed the copyright in his photo.
Now, the Ninth Circuit has upheld this ruling. Rentmeester v. Nike (9th Cir. February 27, 2018).
In a lengthy and detailed opinion the court outlined the steps necessary to establish copyright infringement of a photograph, and held that neither Nike’s photo, nor the Jumpman logo (above), infringed Rentmeester’s 1984 photo of Michael Jordan. If anything, this case will now be even more fun to teach to people new to copyright law.
It’s long been widely assumed that in-line linking is not a basis for copyright infringement. Following a recent decision by a Southern District of New York federal judge, that is no longer true.
Justin Goldman took a photograph of Tom Brady. Under the copyright laws, one of his exclusive rights is the right of public display.
Goldman posted the photo to Snapchat. It went viral and was embedded in a tweet. A number of mainstream media publications posted the tweet by embedding the tweet into articles on their sites. Because the tweet was linked “in-line” (displaying content from one site within another via a link), none of the publications downloaded the image, copied it, or stored it on their own servers.
Is this copyright infringement? Specifically, did the embedded tweet violate Goldman’s right of public display?
SDNY judge Katherine Forrest held that it could, and granted summary judgment to Goldman on this issue, leaving for trial or later motions whether Goldman released his image into the public domain by posting it on Snapchat and whether the defendants have a fair use defense.
In her ruling the judge outright rejected the Ninth Circuit’s so-called “server test,” established in Perfect 10 v. Amazon in 2007. This case held, in the context of a search engine, that whether a website publisher is directly liable for infringement based on the public display right turns on whether an image is hosted on the publisher’s own server, or is embedded or linked from a third-party server. Judge Forrest stated:
The plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence provide no basis for a rule that allows the physical location or possession of an image to determine who may or may not have “displayed” a work within the meaning of the Copyright Act.
However, the judge took pains to distinguish the in-line linking at issue in this case from the images at issue in Perfect 10:
In Perfect 10, Google’s search engine provided a service whereby the user navigated from webpage to webpage, with Google’s assistance. This is manifestly not the same as opening up a favorite blog or website to find a full color image awaiting the user, whether he or she asked for it, looked for it, clicked on it, or not. Both the nature of Google Search Engine, as compared to the defendant websites, and the volitional act taken by users of the services, provide a sharp contrast to the facts at hand.
This dicta may be of some reassurance to Google and other search engines, but it leaves publications that want to engage in in-line linking with a great deal of uncertainty.
As noted, this case is not over – the defendants can proceed to trial (or seek summary judgment) on defenses such as fair use and waiver. In theory, the case could go to the Second Circuit, and the Second Circuit could either adopt or reject the server test. However, it seems unlikely this will happen. Given the potential damages and the costs of defense, the more likely outcome is that the case will settle, leaving this decision on the books. (See update below). If so, the extent to which it will be persuasive on other courts, or even with other judges within the Southern District, is an open question.
In the meantime, online publications face a tough decision: do they pull back on in-line linking based on this decision, or do they assume this case is an outlier, and the server test remains good law? No lawyer can provide an unequivocal answer to this question, other than to say that the legal risks of in-line linking are now greater than they were before this decision was issued.
[Update]: On March 19, 2018, the federal district court judge certified her decision for immediate appeal to the Second Circuit. The order stated, in relevant part, as follows:
The Court credits the parties’ representations that its February 15, 2018 Opinion, . . . has created tremendous uncertainty for online publishers. In this case, the embedded image was hosted on Twitter; given the frequency with which embedded images are “retweeted,” the resolution of this legal question has an impact beyond this case. . . . Accordingly, in order to bring resolution to an important and controlling question of law and to more efficiently resolve this matter, the Court certifies its February 15, 2018 Opinion for interlocutory appeal. All other proceedings are stayed pending this appeal.
[Update 2 – May 2019]: The Second Circuit denied interlocutory review, and the case settled as to all defendants. Accordingly, this case will not be heard by the Second Circuit, and the District Court’s opinion will stand unreviewed.
Copyright law is confusing, but music copyrights take it up a notch. Often, judges and jurors with no background in a music genre are asked to determine whether two works are “substantially similar” after being subjected to esoteric analysis by musicologists who present arguments that even a trained musician might find hard to follow.
However, whether Pharrell Williams and Robin Thicke’s 2012 recording of “Blurred Lines” infringes Marvin Gaye’s 1976 composition of “Got To Give It Up” presents issues of copyright law that are challenging even by the arcane standards of music copyright law.
A quick recap: in 2015 a California jury found that Pharrell Williams and Robin Thicke’s (“Williams”) recording of Blurred Lines infringed the copyright in the composition of Got To Give It Up, and awarded Marvin’s Gaye’s heirs over $7 million in damages. The judge reduced this damages award to $5.3 million, but awarded a “running royalty” of 50% of future songwriter and publication royalties, which over time could be millions more.
After losing the jury trial Williams and Thicke appealed to the Ninth Circuit Court of Appeals, which heard oral argument in October 2017.
The copyright and music communities have been entranced by this case, and there are strong opinions on both sides. How will the Ninth Circuit rule? What arguments did the parties make that will determine the outcome of the appeal?
One way to answer these questions is to read the hundreds of pages of dense legal briefs Williams and Gaye filed with the Ninth Circuit. However, because the Ninth Circuit releases videos of oral arguments (on Youtube, no less) an easier alternative is to watch the video. The parties had only 30 minutes each to make their case, so they were forced to cut the chaff and argue the issues that are most important to their cases. All-in-all, watching the oral argument can be more edifying (and a lot less time consuming) than reading the briefs.
In this case oral argument is particularly interesting for two reasons: first, both sides were represented by preeminent appellate lawyers, two of the best in the country, so the arguments of the parties are well-articulated. Second, the oral argument makes it clear that the appeal may turn on one key issue: in a case claiming infringement of a musical composition created before sound recordings became protected by copyright, is the copyright limited to the sheet music? Or, may the copyright owner go beyond the sheet music deposited with the copyright office and play for the jury a contemporaneous sound recording of the composition?
First, some background on this issue.
It has long been a requirement that to register a copyright a copy of the work be deposited with the Copyright Office – the so-called “deposit copy.”
However, pre-1978 the Copyright Act did not protect sound recordings, only musical compositions. Gaye wrote Give It Up in 1976 and registered the sheet music for the composition, which was little more than a sketch of the melody, lyrics and chords (a “lead sheet”). But, he did not register his recording of the song. Indeed, since sound recordings were not protected the Copyright Office would not have accepted a deposit of the recording.
At the trial of this case, there was never any question that the jury would hear Blurred Lines, the allegedly infringing work. But as the case developed leading up to trial, a hotly contested issue was whether Gaye’s heirs should be limited to the lead sheet of Give It Up, or whether they could also play the recording for the jury.
The trial judge sided with Williams on this issue – he held that the scope of Gaye’s copyright was defined by the sheet music deposit filed with the Copyright Office 40 years earlier. This led to the surprising fact (widely commented on during the trial) that Gaye was never allowed to play Give It Up for the jury.
However, trial are messy, and despite this ruling, during trial (according to Williams), the judge allowed Gaye’s music experts to testify about the sound recording and play musical excerpts based on parts of the sound recording that were not present in the sheet music.
At oral argument before the Ninth Circuit it quickly became clear that whether this was permissible would be the focus of the hearing. Williams’ lawyer argued that the deposit copy (the sheet music submitted to the Copyright Office) strictly defines the scope of the copyright. In other words, Gaye’s copyright is defined, note for note, by the sheet music. Because the judge let Gaye go beyond the sheet music, she argued, the court should order a new trial.
The lawyer for Gaye’s heirs argued that the deposit copy does not define or limit the scope of the copyright in the composition. The best evidence of the composition, she argued, is the studio recording of Give It Up. Therefore, even if the jury did hear evidence present in the sound recording but not in the sheet music, the jury verdict should stand.
Gaye’s lawyer also argued that an expert can testify to what is “implied” in the sheet music – the sheet music deposit can be “interpreted” based on what would be understood by a knowledgeable musician. And, the sound recording may be relevant to that interpretation. Therefore, to the extent that Gaye’s music expert went beyond the sheet music “note for note,” this interpretation was permissible.
The problem, for the lawyers and the judges at the hearing, is that there appear to be no clear precedents to help determine which view of the law is correct. No court has squarely addressed this issue, and there is no legislative history to guide the Ninth Circuit judges.
It’s difficult to predict how the Ninth Circuit will resolve this issue, assuming they address it at all. Gaye’s lawyer had a “Plan B” argument that she stressed to the court, which is that even if the court accepts Williams argument regarding the limiting scope of the deposit copy, Gaye’s expert provided enough evidence for the jury to find in favor of Gaye based on the sheet music alone, without any evidence from the recording. Courts often will usually take the easier of two routes to a decision, so the Ninth Circuit may be able to avoid the issue that attracted most of the time and attention at the hearing by accepting this alternative argument.
However, if the Ninth Circuit does address the relevance of the sound recording to the pre-1978 composition, it will be an important copyright law precedent. There is a large catalog of pre-1978 music that is potentially subject to infringement claims, and the likely success of those claims will be viewed in light of the Ninth Circuit’s holding in this case.
If the Ninth Circuit does uphold the jury verdict in favor of Gaye, I wouldn’t discount the likelihood that Williams and Thicke will seek review by the Supreme Court. $5.3 million is a lot of money, and 50% of the future royalties for Blurred Lines is likely to increase that number substantially. The unusual issue of copyright law at the heart of this case could induce the Supreme Court to accept an appeal of this case.
Lastly, a discussion of the Blurred Lines case would be incomplete without a mention of Skidmore v. Led Zeppelin, in which the heirs of Randy Wolfe (aka Randy California), asserted copyright infringement of the 1967 Spirit song “Taurus” in the opening notes to “Stairway to Heaven.” That case was tried in federal court in California in 2016, and resulted in a jury verdict of non-infringement for Led Zeppelin, the opposite result to Blurred Lines. The judge in that case held that Wolfe’s case would be limited to the pre-1978 deposit copy, and refused to allow Wolfe to play the sound recording of Taurus for the jury. He appears to have been more strict than the judge in Blurred Lines in refusing to allow Wolfe’s expert to provide any interpretation of the sheet music.
The Led Zeppelin case is on appeal to the Ninth Circuit, although oral argument has not yet taken place and therefore any decision is likely to be issued after a decision in Blurred Lines. If the Blurred Lines panel of judges doesn’t decide the sound recording issue, the Ninth Circuit may have a second opportunity to rule on the issue in the Led Zeppelin case. If the Blurred Lines judges do decide that issue, it will be binding throughout the Ninth Circuit, including the court in the Led Zeppelin appeal.
Update: The Ninth Circuit issued its decision on March 21, 2018, upholding the jury verdict. The court did not decide the question of whether Gaye’s evidence should have been limited to the deposit copy, instead deciding the case under what I describe above as Gaye’s “Plan B.” The court stated:
The parties have staked out mutually exclusive positions. The Gayes assert that Marvin Gaye’s studio recording may establish the scope of a compositional copyright, despite the 1909 Act’s lack of protection for sound recordings. The Thicke Parties, on the other hand, elevate the deposit copy as the quintessential measure of the scope of copyright protection. Nevertheless, because we do not remand the case for a new trial, we need not, and decline to, resolve this issue in this opinion. . . . Both experts referenced the sound recording. Both experts agreed that sheet music requires interpretation. The question of whose interpretation of the deposit copy to credit was a question properly left for the jury to resolve.
Second Update: The case was reheard en banc, and the jury’s verdict in favor of Led Zeppelin was upheld. Link
If you were asked why copyright law exists you probably would respond along the lines of “to give authors and artists a financial incentive to create new works, and to protect the integrity of their works.” It’s unlikely you would respond, “to give someone the ability to manage their online reputation and remove defamatory online reviews.”
Yet, in a bizarre case that has wound its way through the courts of Massachusetts for the last six years, that is exactly what attorney Richard Goren attempted to do. Ultimately, Goren was unsuccessful, but only after years of litigation, culminating in an appeal to the First Circuit Court of Appeals, the highest federal court in Massachusetts.
Background. I first wrote about this case in 2014, and the facts are described in detail in that post. In short, a person named Christian DuPont (about which the case record discloses little beyond his name) published two posts on RipOffReport defaming Goren. RipOff, as is its practice, refused to take down the posts, claiming protection under Section 230 of the Communications Decency Act.
That’s when Goren’s copyright workaround strategy took hold.Goren sued DuPont for defamation in Massachusetts state court. DuPont didn’t show up, so he was defaulted. Goren then asked the court to assign to him ownership of the copyright in the posts.
Copyright in hand, Goren (and an LLC he assigned the copyright to) again asked RipOff to remove the posts; RipOff again refused.
Goren – disregarding the possible Streisland Effect consequences – then sued RipOff for copyright infringement in federal court in Massachusetts.
In the end RipOff won. The posts defaming the attorney remain on Rip Off Report to this day.
The Copyright Issue. Goren’s lawsuit asserted that he now owned the copyright in the two posts, and that RipOff was infringing that copyright by continuing to publicly display the posts without his consent.
RipOff’s defense was twofold: first, that when DuPont first published the posts he had assigned the copyrights to RipOff via RipOff’s online agreements. If that was the case the state court’s assignment to Goren was invalid, and Goren owned no copyright he could assert against RipOff.
Second, even if DuPont had not assigned the copyrights to RipOff, he had given RipOff a nonexclusive license to display the posts, and Goren owned the copyrights subject to this license.
These defenses required the court to consider two issues. First, did RipOff’s online agreement transfer ownership of the copyrights from DuPont to RipOff?
Second, if ownership was not conveyed, did the online agreement transfer a license to RipOff, allowing RipOff to continue to display the posts even after copyright ownership had been transferred to Goren?
The district court analyzed RipOff’s online agreement in this case in excruciating detail. The agreement was imperfect, but the court concluded that it was legally effective, at least as a matter of contract law. However, the court concluded that the conveyance of ownership was ineffective as a matter of copyright law. The Copyright Act requires that “[a] transfer of copyright ownership, . . . is not valid unless an instrument of conveyance, or note or memorandum of transfer, is in writing and signed by the owner of the rights conveyed….” 17 U.S.C. § 204. DuPont never signed an instrument transferring his ownership to RipOff, and therefore RipOff did not own the copyright in the posts.
However, RipOff was still left with a perpetual, irrevocable nonexclusive license to display the posts (a limited license does not require a signed conveyance), and therefore Goren’s copyright ownership was subject to the rights granted by this license.
The First Circuit upheld the district court’s ruling that, based on this reasoning, RipOff’s continued publication of the posts was not copyright infringement.
Attorney’s Fees. The district court found that the legal and factual basis for Goren’s copyright claims were “at best questionable,” notwithstanding Goren’s claim that he had litigated in good faith.The court awarded RipOff $123,000 in attorney’s fees under the Copyright Act. An award of attorney’s fees is infrequent in copyright cases, but the Supreme Court has vested broad discretion in district courts to award attorney’s fees to prevailing parties in copyright cases (seeKirtsaeng v. Wiley, USSC 2016), and this discretion is rarely upset by appeals courts. In this case the district court did not abuse its discretion, and therefore the fee award was upheld by the First Circuit.*
*RipOff’s post-judgment motion for attorney’s fees involved some procedurally complex issues. The First Circuit decision is worth reading by lawyers who seek statutory attorney’s fees in federal court.
Takeaway. If this case strikes you as crazy complicated, you’re in good company. If nothing else, it shows how the copyright system has the potential to be manipulated for purposes other than the policies that underlie copyright law. Goren failed in this case, but only because RipOff had the foresight to create an online agreement that required posters to give it a license – but for that, Goren’s copyright claim might have succeeded. The case is a reminder of how important it is that websites ensure that their online browsewrap/clickwrap agreements are effective. And, it teaches that (at least in the First Circuit) an online agreement will not be sufficient to effect an assignment.
Many copyright lawyers who have watched this case have applauded the outcome on the ground that what Goren attempted to achieve subverted the goals of copyright law, which are to “promote the progress of science” (Constitution, Article I Section 8. Clause 8) not for reputation management. In the words of Professor Eric Goldman (below), the case exposes the “ugly interface between copyright and reputation management.”
I was surprised when I read the Ninth Circuit’s recent decision in Antonick v. Electronic Arts, Inc. (9th Cir. Nov. 22, 2016). In that case the plaintiff alleged copyright infringement against EA* based on copying of computer source code for the John Madden Football game, but failed to introduce the source code into evidence, choosing instead to rely solely on expert testimony to prove copying.
*[footnote] Technically speaking, this was a breach of contract case. However, the contract between Antonick and EA stated that Antonick would receive royalties on the sale of any “derivative work”, as that term is defined under U.S. copyright law. As a result, the parties and the courts applied copyright law to determine whether EA had breached its royalty agreement with Antonick.
This was an enormous risk, and it doomed Mr. Antonick’s case. The Ninth Circuit panel held:
Antonick’s claims rest on the contention that the source code of the Sega Madden games infringed on the source code for Apple II Madden. But, none of the source code was in evidence. The jury therefore could not compare the works to determine substantial similarity.
Expert testimony alone was not sufficient, the court ruled. However, even if expert testimony had been sufficient, Antonick’s case failed: the expert testimony presented by Antonick related to how the games appeared to users (the user interface), not the source code. Antonick’s case was based on similarities between the source code of the products, not the user interface.
Maybe there was a good reason that Antonick’s lawyers didn’t introduce the source code into evidence. Perhaps the original source code (which is decades old) was no longer available, and Antonick was trying to skirt this issue; if so this isn’t apparent from the opinion. I hope, for Antonick’s sake, that his lawyers didn’t think they could prove copying of source code by focusing on the user interface of the programs, since similarities in interfaces don’t necessarily mean the source code that generates them are the same or similar.
Trial lawyers know that one goal at trial is to introduce as much evidence into the record as possible, to avoid just this kind of outcome. As long as evidence is in the record, a party can point to it to support its case even if (as likely was the case here), the evidence is computer source code incomprehensible to the jury. A document may be incomprehensible to the jury, but as long as it is in evidence, the courts will adopt the fiction that that the jury considered it in reaching its verdict.
In this case Antonick prevailed in a jury trial, but the judge set the verdict aside post-trial, based on his failure to introduce the two works. Antonick appealed, but lost on appeal.
Antonick went the last mile to try to save his case on appeal, retaining famed copyright lawyer and treatise author David Nimmer (“Nimmer on Copyright”) to argue his case. This was unsuccessful.
Here is the video of oral argument before the 3-judge 9th Circuit panel. Nimmer’s argument begins at :20 in the video, and his rebuttal testimony begins at 1:10.
The district court’s opinion, which discusses the plaintiff’s failure to introduce the works at issue into evidence in more detail, is available here.
The U.S. Copyright Office has issued a new rule that has important implications for any website that allows “user generated content” (UGC). This includes (for example), videos (think Youtube), user reviews (think Amazon or Tripadvisor), and any site that allows user comments.
In order to avoid possible claims of copyright infringement based on UGC, website owners rely on the Digital Millennium Copyright Act (the “DMCA”). However, the DMCA imposes strict requirements on website owners, and failure to comply with even one of these requirements will result in the loss of protection.
One requirement is that the website register an agent with the Copyright Office. The contact information contained in the registration allows copyright owners to request a “take down” of the copyright owner’s content.
The Copyright Office is revamping its agent registration system, and as part of this process it is requiring website owners to re-register their DMCA agents by the end of 2017, and re-register every three years thereafter. Gesmer Updegrove LLP’s Client Advisory on this new rule is embedded in this post, below. You can also click here to go directly to the pdf file on the firm’s website.
In August, MediaPost reported that Redigi and one of its founders, John Ossenmacher, had filed bankruptcy:
“ReDigi recently stipulated to pay Capitol $3.5 million in damages, but also appealed the underlying copyright infringement finding to the 2nd Circuit Court of Appeals. This week, the company said in an appellate filing that it had declared bankruptcy in U.S. District Court for the Southern District of Florida. ReDigi co-founder John Ossenmacher also declared bankruptcy in the same court.” (link)
I’ve written about this case several times, and in April 2013 I observed:
In addition, Capitol may seek leave of court to add as defendants the individual owners and employees of Redigi that exercised control over or benefited from the infringement. While Redigi could oppose such as motion as coming too late in the case, a decision would be at the discretion of the judge. As Capitol Records showed in its copyright suit against MP3tunes and Michael Robertson, Capitol is not above suing not only corporate infringers but their founders and owners. (See: The Record Labels Want My Minivan).* The philosophy of the record companies in many copyright cases may best be described as, “never kick a man when he’s down, unless that’s the only way to keep him there.” Capitol may be preparing to put on its steel toe boots in this case. (link)
In fact, this is what transpired. In September 2013 Capital Records amended its complaint to include Redigi founders John Ossenmacher and Larry Rudolph as defendants.
I also noted that –
According to the court decision Redigi consulted legal counsel before launching Redigi and engaging the recording industry in a test case.
A test case can be a great idea, but I can’t help but wonder whether the lawyers Redigi consulted warned Messrs. Ossenmacher and Rudolph that they risked personal liability. Business people are told that a corporation or LLC protects them from personal liability, but there are many exceptions to this rule, and one of these is copyright infringement. To quote a New York federal court on this issue:
It is well established that all persons and corporations who participate in, exercise control over or benefit from an infringement are jointly and severally liable as copyright infringers. . . . An individual, including a corporate officer, who has the ability to supervise infringing activity and has a financial interest in that activity, or who personally participates in that activity is personally liable for infringement.
Sadly, I have met many lawyers, including “IP lawyers,” who were unaware of this fact. I hope Mr. Ossenmacher’s lawyers were not in this group, and that he knew the personal risk he undertook when founding Redigi.
The press calls Melania Trump’s use of Michelle Obama’s 2008 nomination speech “plagiarism,” but is it also copyright infringement? Could the authors or assignees of Michelle’s speech sue Melania and others for copyright infringement?
It’s hard to imagine this would ever happen for political and practical reasons (one of which I discuss below). But it’s interesting (fun?) to think about whether a copyright infringement suit against Melania would have legs. In that spirit, consider the following.
Ownership. It’s likely that Michelle’s 2008 speech was written by several people, each of whom could be considered a co-author. The Forward reports that the speech was first written by Sarah Hurwitz, but it’s not clear if she was an independent contractor, an employee of the Obama campaign or working for someone else. This could raise ownership issues under the work-for-hire provision of the copyright statute.
Setting aside work-for-hire, if several people participated in writing the speech (Hurwitz, Michelle, Barack?), assuming that each of these people meets the stringent requirements for co-authorship under U.S copyright law (independently copyrightable contribution and intent) and hasn’t assigned ownership to someone else, each co-author has independent standing to sue Melania for copyright infringement.
It’s not inconceivable that Sarah Hurwitz (or her then-employer) is the sole owner of the copyright in Michelle’s 2008 speech, and Michelle, Barack and the Obama campaign would have no control over a copyright infringement suit.
The bottom line is that ownership of Michelle’s speech is a complicated issue.
Fixed in Tangible Form. Michelle’s speech was recorded in video and audio, satisfying the fixation requirement.
Originality. The originality threshold for copyright protection is very low, and Michelle’s speech easily meets the minimum level of creativity to satisfy it.
Substantial Similarity. Melania might argue that the sentences she copied from Michelle were a small part of Michelle’s speech, as well as a small part of her speech, and that this de minimis level of copying does not rise to the level of copyright infringement. However, a copier cannot escape infringement based on how little of a work she copied. Even a quantitatively small amount of copying can be infringement if it copies a qualitatively important part of the original work. Michelle’s case would also rest on the tongue-twisting copyright doctrine of fragmented literal similarity, since Melania did not engage in wholesale copying, but copied fragments of Michelle’s speech. Although it may be borderline, Michelle’s claim of substantial similarity appears viable and would likely be decided by a jury after trial (rather than be resolved by a judge on a motion to dismiss or summary judgment).
Fair Use. In addition to arguing no infringement based on lack of substantial similarity and de minimis copying Melania could claim fair use – a defense asserted in virtually every contemporary copyright case. She would argue fair use based on her use of fragments of Michelle’s speech in a political, non-profit context. And, like every copyright defendant today, she would argue that her use was “transformative,” although it’s difficult to see a transformative use in this case. Nevertheless, a fair use defense has the potential to be effective, and could result in a finding of no infringement.
Scènes à faire. Melania could argue that the common phrases copied from Michelle are indispensable, or standard, in a political speech of this type, and therefore unprotected under the copyright law doctrine known as scènes à faire. Again, this defense could be effective.
No Intent. Copyright infringement is a “strict liability” violation – neither knowledge nor intent is necessary, and the absence of both is not a defense.
Idea-Expression, Merger. There are a few other “tag-along” defenses that are raised in almost every copyright case, and which Melania could assert. For example, she could argue that the sentences copied were unprotected “ideas,” or that there are so few ways to express the ideas that Michelle’s expression is unprotectable under the “merger doctrine.” However, these defenses appear weak given the material copied.
Defendants Other Than Melania. The speech was broadcast by television stations, web sites, newspapers and magazines. All of these publishers are potential defendants, but most of them would have a strong fair use defense, since they used the speech in connection with news reporting.
However, Melania’s co-authors (Merideth McIver, for example), are also potential defendants, and they stand in a position similar to Melania, whose fair use defense is weaker than that of news organizations. Note that Melania need not have participated in writing the speech to be liable, since she infringed by reading the speech in public.
Registration and Damages. It’s unlikely that Michelle’s speech was registered before Melania copied it – a quick search of Copyright Office registration records shows that both Barack and Michelle Obama have registered books, but Michelle’s 2008 speech does not appear in the registration records. Michelle would need to register the speech as a condition to bringing suit, which is easily done. However, failure to register before the infringement occurred would prevent her from recovering statutory damages (which might have been up to $150,000) or attorney’s fees (take a wild guess, now triple it). Without pre-infringement registration Michelle would be limited to recovering “actual” damages (her lost profits or a reasonable license fee), or Melania’s illegal profits attributable to the infringement, and each of these could prove difficult to establish. Of course, Michelle could also seek an injunction, but the absence of any financial incentive is likely to discourage Michelle (or her co-authors) from bringing suit. But, the statute of limitations for a copyright infringement suit is three years, so they have plenty of time to think about it.
Conclusion. A copyright infringement suit against Melania faces significant obstacles based on ownership, fair use and proof of damages, and I don’t expect that we will ever see this case brought. But, it’s fun for a copyright lawyer to think about.
Before listening in on this fictional conversation, a brief recap: YouPostVid is a small “you post, we host” music video website. Kevin Kickstarter is its sole owner. YouPostVid is struggling to meet the confusing requirements necessary to receive safe harbor protection for copyright infringement under the Digital Millennium Copyright Act (the DMCA). (See the earlier transcript to be updated on how the DMCA can protect web hosts, aka “service providers”, from copyright liability for works uploaded by users).
Two years ago Mr. Jaggers advised Kevin on how to stay on the safe side of the DMCA. But Kevin was frustrated by the confusing law, to the point where he even considered selling his business. However, demonstrating true grit he has soldiered on and now, more than two years later, he’s back, ready to discuss the latest developments with his lawyer. We are privileged to listen in ….
* * *
Kevin Kickstarter: Wassup Mr. Jaggers? I almost didn’t want to see you today for fear of the latest. It has sure been hard playing it safe with the law, as you suggested last time.
Mr. Jaggers: Hello Kevin. I am pleased to tell you that for once, your worries are not to be realized. The Court of Appeals for the Second Circuit, based in New York and arguably the most influential copyright court in the country, has made some progress in clarifying the scope of the DMCA in a case called Capitol Records, LLC v. Vimeo, LLC. The decision was written by Judge Pierre Leval, who authored the Google Books decision last year, and who may be the single most influential living judge on matters of copyright law.
The decision leaves many remaining uncertainties under this law, but it gives companies like yours more protection from claims of copyright infringement based on uploads by your customers. And coming from Judge Leval in the Second Circuit, it carries a lot of weight.
Kevin: Sounds good, dude, tell me more.
Mr. Jaggers: Quite. So do you remember how I explained that YouPostVid had the burden of proving it has complied with certain DMCA safe harbor legal requirements in order to avoid liability for copyright infringement based on user uploads? Well this is still the case. So first up, to qualify a video must be uploaded by a user outside your company. Therefore, be sure to continue to instruct your employees not to upload videos that infringe copyright, a mistake the owners of Grooveshark made, to their regret. And, of course, you have registered a contact agent with the Copyright Office and identified that person on your website for receipt of notices of infringement. Plus, you have a repeat infringer policy.
Kevin: OK, I’m with you so far. I’ve done all that stuff. What was the next requirement under this crazy law?
Mr. Jaggers: Well this is the tricky part we discussed last time. An internet service provider with “actual” knowledge” or “red flag” knowledge must remove or take down the offending material expeditiously.
Kevin: Ugh, the red flag stuff. This gives me a headache. I don’t know how you lawyers do it, Mr. Jaggers. Remind me of what “actual” knowledge and “red flag” knowledge mean.
Mr. Jaggers: Yes, it is confusing, as it requires application of a mixed subjective/objective legal standard – I’m not sure how a jury would ever understand this enough to apply it in a trial. This remains the most perplexing aspect of the DMCA.
According to the Second Circuit in Vimeo, “actual” knowledge means that you actually, “subjectively” know of a specific infringement. If you do, you need to remove the item from your site. An example of this might be if Capital Records writes to you, informs you that they are the owner of a specific video, that its publication on your site is unauthorized, and demands that you take it down. Even though they have not sent you a formal DMCA “takedown notice” that complies with the DMCA “to the letter,” you should take the video down as soon as possible, or to quote the DMCA, “expeditiously.”
“Red flag” knowledge, on the other hand, means that you are subjectively aware of facts that would have made the specific infringement objectively obvious to a reasonable person.
Kevin: Mr. Jaggers, this is the same legal mumbo jumbo as last time. “Red flag,” “objective,” “subjective”! Who can understand this stuff? Normal people don’t even talk like that. But Mr. Jaggers, were there formal takedown notices from Capitol Records in this case – you know, a formal notice identifying the URL and containing the stuff the DMCA requires in a takedown notice?
Mr. Jaggers: No Kevin, there were no takedown notices in this case.
Kevin: Why not?
Mr. Jaggers: I think the large copyright owners, in this case Capital Records, want to expand the scope of the DMCA, and avoid having to serve formal notices – formal notices are too burdensome, and one of their goals is to persuade the courts to shift responsibility for locating and removing infringements to web sites like yours. However, that strategy failed in this case.
Kevin: OK, I think I get it. So, to return to “red flag” knowledge, the last time we met you said if my employees view any clip where the existence of copyright protection would be “objectively obvious to a reasonable person”, then it’s a red flag, and needs to be taken down. You even told me that my own employees couldn’t view videos on the site unless they were trained in this “objectively obvious” standard. This, despite the fact that most of them are part-time high school kids and college students! As a result I’ve told my employees to try to avoid viewing videos – do I still have to do that?
Mr. Jaggers: Kevin, in 2013 the district court in the Vimeo case held that Vimeo had to determine the type of music, that is, professional v. amateur. The court assumed that any “professional” material was posted without the consent of the copyright owner. The court held that a “recognizable song,” played essentially in its entirety and in unedited form triggered the red flag, and a website owner like Vimeo was required to either take it down, or investigate to confirm it was not a copyright violation. The last time we met I advised you based on the law as described in that case.
The good news is that the Second Circuit disagreed with the district court. The Second Circuit held that the fact that an uploaded video contains recognizable, or even famous, copyrighted music and was viewed, even in its entirety, by an employee of a service provider is insufficient, without more, to establish red flag knowledge.
The judges also held that when applying the “red flag” test, the hypothetical “reasonable person” to whom infringement must be obvious is an ordinary person – not someone with specialized knowledge or expertise concerning music or the laws of copyright. In other words, your employees no longer need to be trained in how to sort out the nuanced details of fair use and copyright law. If copyright infringement isn’t obvious to a reasonable person, then the standard is satisfied in your favor.
Kevin: Well, OK, but what does “obvious to a reasonable person” mean? How am I supposed to apply that rule in my company. Remember, I have around 15 kids – well, ok, young adults – working for me. How do I apply this standard to them? Frankly, I wouldn’t call many of “reasonable,” if you get my drift …
Mr. Jaggers: Well, the problem for you, and other web sites that rely on user generated content, is that even there remains a great deal of gray area in this law. Courts have a tendency to decide the narrow issue before them, and usually don’t address hypothetical situations. In the case of the DMCA, that has meant that our understanding of the law has crept forward at a glacial pace.
In this case the Second Circuit didn’t provide any examples of when an infringement would be obvious to a reasonable person, leaving that for the lower courts to work out on a case-by-case basis. But, they did provide an example that shows how difficult it will be for a copyright owner to prove red flag knowledge under this standard. As I mentioned, it’s not enough to establish red flag knowledge to show, without more, that an employee viewed a full length video containing a recognizable song by a well-known artist containing a copyright notice. The video could have been authorized or be fair use – how is the employee to know? Any way you look at it, it’s now much more difficult for a copyright owner to prove red flag knowledge.
Kevin: That’s good as far as it goes, Mr. Jaggers, but it doesn’t go very far. And, what does “without more” mean?
Mr. Jaggers: We don’t know yet, Kevin, the Second Circuit didn’t explain what additional facts would push this into “red flag” territory. Again, the bad news is that this will have to be worked out by the trial courts. But let me give you an example. Assume that you’ve received a valid, formal takedown notice for a specific video, and you’ve told an employee to take the video off your site. If that employee sees the same video re-uploaded shortly afterwards, that would probably trigger a red flag. The employee should take that video down. Anything short of that I can’t say at this point – we’ll have to see what the courts do in follow-up cases. But, if you come across a situation where you are in doubt, you should do one of two things – take the clip down, to be safe. Or, call me to discuss it, and I’ll advise you.
And, to answer your earlier question as to how to apply the “reasonable person” standard, that’s the kind of instruction that is often left in the hands of juries.
Kevin: I think I get it, Mr. Jaggers, and I can’t say I like it. Except at either extreme, this law remains unpredictable, and that means risks I can’t afford to take. And, it creates opportunities for the large copyright owners to make me spend money on defense, and that alone could force me out of business. The fact that the district court viewed the law one way, and that we tried to live under that legal regime for two years, only to have the Second Circuit provide a different rule of law, is incomprehensible to me. Don’t judges even know what the law is? If they can’t agree, how are we supposed to figure it out? What a crazy system.
Mr. Jaggers: It’s a crazy system, but it may be better than any of the alternatives. Do you have any questions, Kevin?
Kevin: This all sounds like the law is moving in the right direction – for me, at least. Before we break – what about the “willful blindness” doctrine? You said last time that it was hard to distinguish from the “red flag” rule.
Mr. Jaggers: That’s correct. “Red flag, “actual knowledge,” “willful blindness” – there are three separate doctrines at work in the DMCA, and it’s difficult to say where one ends and the other begins. In fact, the DMCA doesn’t even mention “willful blindness” – it seems to be a concept the Second Circuit grafted on to the statute.
Kevin: They can do that?
Mr. Jaggers: I’m afraid so. But, in a nutshell, a service provider is “willfully blind when it is aware of a high probability of an infringement and it consciously avoids confirming that fact.
Kevin: How is that any different from “red flag” knowledge?
Mr. Jaggers: Yes, it’s confusing. This willful blindness concept is still up in the air, I’m sorry to say. But, in the Vimeo case the Second Circuit discussed three situations where Capital Records argued Vimeo was willfully blind, and it rejected all of them. The first argument would be applicable to you Kevin, with regards to your community flagging system, which allows users to report videos that are pornographic or that contain hate speech. However, your system is not configured to allow users to flag possible copyright infringements. Vimeo similarly monitored its website, but in its case the monitoring was for infringement of visual copyrighted content as opposed to audio content. Remember that the DMCA has an explicit “no-duty-to-monitor” rule – there is no duty for service providers like you to monitor user content. This rule protected Vimeo – the court held that there was no reason that voluntarily monitoring a site for one type of infringement requires monitoring for a different type of infringement. In other words, even if you monitor for one thing, you’re not willfully blind if you don’t monitor for another. This means you don’t need to add flagging for possible copyright infringement.
Kevin: OK. What were the other two arguments relating to willful blindness?
Mr. Jaggers: The second is simple, and again you don’t need to worry. The Second Circuit held that “suspicion” of copyright infringement is not the same as knowing facts that make infringement obvious, nor does it trigger the “red flag.” In other words, if you or one of your employees is merely suspicious that a video is infringing, you are not obligated to investigate, and failure to do so does not mean you are “willfully blind.”
The third argument is slightly more complicated, and Vimeo skated very close to the line on this one. Believe it or not, Vimeo employees encouraged users to post videos containing infringing material. However, this was sporadic, and there was no evidence that this encouragement led to posting of any of the videos at issue in the suit.
Capitol Records argued that Vimeo’s generalized encouragement of copyright infringement should result in Vimeo being stripped of its DMCA protection altogether, but the Second Circuit rejected this argument.
I think Vimeo narrowly escaped disaster on this issue. It’s reasonable to think that you can’t encourage people to infringe, turn a “blind eye” to infringements and expect the courts to overlook your behavior. The only reason Vimeo won this argument is that the encouragement was minimal and sporadic, and it was not encouraged by company management.
Not only could encouragement rise to the level of “willful blindness,” but it could be viewed as inducement to infringe under the Supreme Court 2005 decision in Grokster. So, my advice is that you should instruct your employees about this in the strongest terms. They should not encourage infringement.
Kevin: OK. So, this last area is certainly more problematic for my business. It’s difficult for me to control my employees, or monitor what they are telling users. Maybe I’ll set up a system where all outgoing company emails get routed to one person, whose job it will be to review them to make sure my employees follow these rules.
But, not to change the subject, the thing that really confuses me is how all of this fits in to the law on sound recordings created prior to 1972. Last time you told me that I had to monitor my website for those because they were governed by some other laws, and DMCA protection didn’t apply. I’ve heard a lot about this pre-1972 sound recording issue, and Flo and Eddie’s lawsuits over their ‘60’s recordings, and I’m still confused by that. Did the court touch on that issue?
Mr. Jaggers: This is where I have saved the best until last. The Second Circuit held that Congress intended the DMCA to apply to all sound recordings, not just post-1972 recordings. The Second Circuit is the first federal appeals court to make this ruling so it is very important. While other courts could disagree, and the issue is not definitively resolved, I’m comfortable saying that you no longer have to treat pre-1972 recordings as a special case – you can treat them the same as everything else for purposes of the DMCA.
Kevin: Wow Mr. Jaggers! That will make life easier. But, I have to say this whole DMCA thing is crazy. The DMCA is still so unsettled that large companies like Capitol Records can still sue me and make me spend a fortune defending, right?
Mr. Jaggers: Yes, we can’t do much about that, I’m afraid. And, in fact, the Second Circuit did remand the Vimeo case so Capitol Records could conduct further discovery into some the “red flag” issues – presumably, this means they’ll be deposing Vimeo employees and questioning them about specific videos they viewed. This is a major problem, Kevin. I know that neither you nor any other startup can afford to defend a case like this if it drags on for years – the cost alone could put you out of business and scare off investors. I’m hopeful that the courts will short-circuit cases like this in the future, to save companies like yours the cost of defending. The Second Circuit hinted as much. We’ll see.
But keep your nose clean, Kevin, and you have a good chance of avoiding a case like this.
Kevin: So, that’s a bummer. And this whole law seems so complicated and crazy! Do you think it will ever be changed, or do we have to live with this forever? In my weaker moments, I even feel sorry for the copyright owners, who have to play “whack a mole” sending takedown notices over and over again for the same music!
Mr. Jaggers: Yes Kevin, content owners are lobbying Congress to change the law, and it’s not just big companies like Universal, Sony and Warner that are complaining , and hundreds of artists have complained about how unfair the DMCA is to them. Of course, internet service providers like you are not happy with the complexities of the law, either. Everyone is dissatisfied and thinks the law should be changed to favor them. Whether anything gets done to correct these problems, and if so when, is anyone’s guess.
The last two years have been spent preparing for trial on damages.
However, on Monday of this week, on the eve of trial, the parties reported the case settled. Very likely, this settlement (which is confidential), was engineered to allow the decision on liability to be appealed to the Second Circuit. The way this works is that if the appeal is unsuccessful, the defendants will owe a certain amount of money (stipulated in the settlement agreement, which is confidential/non-public). If Redigi wins on appeal, it will not owe that money (and, presumably, it will be able to resume offering its service, which appears to be inactive at present). The settlement agreement likely provides for either outcome.
It has always been the expectation that Redigi wanted to get this case to the Second Circuit, so I believe this is likely to be the scenario that is in progress, particularly since there is no permanent injunction issued pursuant to the settlement. However, without seeing the settlement agreement (or seeing a Notice of Appeal filed by Redigi), we can’t be 100% certain that the case will go to the Second Circuit.
Several of the CopyrightXteaching fellows used the 1990s Lotus v. Borland copyright case in their classes last week. In an excellent Case Study, Professor Fisher and TF/Berkman Center intern Ben Sobel dissected the background and holdings in this complex case.
Lotus appealed to the Supreme Court, which granted cert. The question the Solicitor General’s office faced in December 1995 was whether to support Borland or Lotus, and on what grounds. The policy issues were impacted by the fact that by 1995 Microsoft’s Excel spreadsheet program had an 80% market share, leaving Borland’s Quattro Pro and Lotus 1-2-3 in the dust.
Kagan’s files show the extent to which the administration was internally divided over this issue.
The DOJ Antitrust Division (headed by Joel Klein, who led the DOJ’s antitrust suit against Microsoft a few years later), supported Borland, and wanted to argue for affirmance. However, it disagreed with the First Circuit’s holding that the Lotus 1-2-3 commands were a method of operation, arguing instead that the First Circuit should be upheld on the ground that the commands were an uncopyrightable computer language. In fact, it appears that all of the agencies, even those that sided with Borland and wanted the First Circuit upheld, believed the First Circuit’s reasoning to have been flawed.
The Department of Commerce and the Copyright Office argued that the administration should take no position either way on the appeal, stating: ”
We all agree that the First Circuit’s reasoning was contrary to the copyright law, and that the Supreme Court should be apprised of the First Circuit’s legal errors. Professional organizations representing intellectual property experts, such as the American Intellectual Property Law Association, have already well-briefed the Supreme Court on these legal errors. . . . Thus, the Supreme Court should be fully informed on all issues in the case, obviating the filing of
a government brief.
We vehemently oppose the filing of this or any amicus brief on behalf of Borland. The filing of such a brief would seriously jeopardize copyright protection for computer programs.
Commerce’s position ruled the day, and the government took no position on the case. The Supreme Court heard argument in early 1996 and tied 4-4 (Justice Stevens did not vote), affirming the First Circuit decision, but limiting it’s holding to that circuit. Since then no other circuit has adopted Lotus, and the First Circuit has not had occasion to revisit the case.
While the internal government memos and correspondence are fascinating, Kegan’s files also contain draft briefs that reflect the “computer language” argument that the DOJ was urging the SG to adopt. Here is the argument, asserting that the result is correct, but on different grounds than those relied on by the First Circuit:
Although the court of appeals’ reading did not lead it to an erroneous result in this case, we believe that, if left uncorrected, the court of appeals’ interpretation could effectively nullify Congress’ decision to treat computer programs as literary works eligible for protection under the Act. …
We agree with the court of appeals’ conclusion that the command hierarchy used by Lotus 1-2-3 is not subject to copyright protection. The command hierarchy is not, itself, a computer program; rather, it is a type of programming language, analogous to the rules of a game. It constitutes an abstract system of rules that defines permissible sequences of symbols, expressed as keystrokes or otherwise, and assigns meaning to those sequence. The hierarchy itself does not instruct the computer to carry out any function; it is the structure of a language that allows the user and Lotus 1-2-3 to communicate. As such, it facilitates, but is not itself, expression. Therefore, it cannot be afforded copyright protection by Section l02(a) which protects only original expression. …
The court of appeals misconstrued Section l02(b) by failing to interpret that provision in the context of the long-established idea/expression dichotomy that determines what is subject to copyright protection. The court appeared to interpret Section l02(b) as a bar to copyright protection for an expressive work of authorship if the work expresses a method operation. Thus, the court erred in that it interpreted “method of operation” as used in Section 102(b) to reach both idea and expression. But, as demonstrated above, Congress intended through Section l02(b) to exclude from copyright protection ideas and similarly abstract concepts such as methods and processes, but not to preclude copyright for the original expression in which such an idea is presented. …
To the extent the court of appeals’ analysis can be read to be inconsistent with’ the idea/expression dichotomy, it should be rejected. By failing to give effect to Congress’s intent to protect expression while leaving idea [sic] unprotected, it raised unjustified doubts about the copyright status of any work of authorship that could be characterized as “procedure, process, system, [or] method of operation.” …
So understood, the command hierarchy constitutes the structure of a language. The keystroke commands form the language’s vocabulary and the hierarchy defines its syntax and semantics. …
The command hierarchy is not a computer program because the hierarchy, i.e. the rules, do not instruct the computer to perform any operation or “bring about a certain result.” 17 U.S.C. 101. Rather, statements that users write in the language according to those rules i.e., macros — constitute such instructions. …
In sum, the rules that allow communication with a computer in the Lotus 1-2-3 language, like the rules that allow the playing of a particular game or the practice of a particular accounting system, are abstract ideas that may be expressed in copyrightable form, but are not themselves copyrightable expression under Section 102(a). This analysis preserves the public’s right freely to use the rules to create original expression and serves the fundamental policy considerations of the Copyright Act.
I’m privileged to be a CopyrightXteaching fellow this year, and this week CopyrightX met the real world – in the form of an encounter with Sony Music and the DMCA. Professor William Fisher’s CopyrightX lecture 3.3, The Subject Matter of Copyright: Music, contains audio clips of Bob Dylan’s All Along the Watchtower played by Dylan, Hendrix and Stevie Ray Vaughn. The course is making the point, with musical illustrations, that U.S. copyright law allows cover versions, so long as the artist making the cover pays the required compulsory license, and, that the cover version can depart quite significantly from the “fundamental character” of the original.
Unsurprisingly, Youtube’s automated ContentID system, cannot distinguish fair use from illegal use. Presumably, a “put back” notice will resolve this little contretemps.
Techdirt’s Mike Masnick discusses the whole episode in more detail, here.
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