Mass Law Blog
Intellectual property and business litigation, Massachusetts and nationallyWritten by humans
Lee Gesmer’s Mass Law Blog began in 2005, and contains almost 600 posts. The site initially focused on Massachusetts law, but today it follows business and intellectual property law nation-wide. The site is hosted by Gesmer Updegrove LLP, a law firm based in Boston, Massachusetts. The firm represents startup and established companies in the areas of litigation, transactions (including financings, mergers and acquisitions), IP rights, taxation, employment law, standards consortia, business counseling and open source development projects and foundations. You can find a summary of the firm’s services here. To learn how Gesmer Updegrove can help you, contact: Lee Gesmer
Google and the Global Takedown
“One country shouldn’t be able to decide what information people in other countries can access online”
David Price, senior product counsel at Google
A risk long anticipated by Internet law observers is that the courts might become more aggressive in regulating online behavior, not just in their own nation, but worldwide. Google, more than any company, has had a target on its back for this kind of case.
The obvious example would be a court in one nation ordering Google to takedown (“de-index”) search results for users worldwide. This is exactly what happened in the Canadian Supreme Court’s decision in Google Inc. v. Equustek Solutions Inc. (June 28, 2017). This case represents the first time the highest court in a country has ordered a search engine to de-index worldwide in the context of a purely commercial two-party dispute. And, as we shall see below, this is a crucial issue for Google – one that it will not concede without a fight.
Mavrix v. LiveJournal: The Incredible Shrinking DMCA
While many performing artists and record companies complain that the Digital Millennium Copyright Act (the “DMCA”) puts them to the unfair burden of sending endless takedown notices, and argue that the law should require notice and “stay down,” supporters of Internet intermediaries and websites argue that court decisions have unreasonably narrowed the DMCA safe harbor.
A recent decision by the influential Ninth Circuit Court of Appeals (which includes California) adds to the concerns of the latter group.
LiveJournal, the defendant in this case, displayed on its website 20 photographs owned by Mavrix. Mavrix responded, not by sending DMCA “takedown” notices, as you might expect, but by filing suit for copyright infringement. LiveJournal responded that it was protected by the DMCA. However, to successfully invoke the DMCA’s safe harbor LiveJournal had to satisfy all of the legal requirements of the DMCA.
Failure to Put Infringing and Infringed Work in Evidence Dooms Copyright Case
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.
Gesmer Updegrove Client Advisory re New DMCA Agent Registration Requirement
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.
This site is hosted by Gesmer Updegrove LLP, a technology law firm based in Boston, Massachusetts. You can find a summary of our services here. To learn how GU can help you, contact:
Lee Gesmer