Plaintiff had no duty to “scour” the internet for infringements – statute of limitations did not bar copyright claim made 7 years after infringement

Plaintiff freelance photojournalist sued defendant website publisher for copyright infringement over photos plaintiff took of a luxury maximum security prison in Norway in 2010. Defendants posted the photos on its website in 2011 without permission, in connection with a widely-publicized story of a notorious mass shooter being relocated there. Plaintiff registered the copyright in his photos in 2015 and filed suit in 2018, claiming that he did not learn of the alleged infringement until 2016.

Each party filed motions for summary judgment. Plaintiff claimed that the court should enter summary judgment in his favor because he had a valid copyright to the photographs, and there was no dispute that defendant published several of them without authorization. Defendant asserted that plaintiff’s claims were time-barred by the Copyright Act’s three-year statute of limitations, because he knew, or should have known, of the infringement when interest in the photos spiked following the remand of the alleged mass murderer to the prison where the photos were taken.

Photos included in copyright registration

The court found there was no genuine issue as to any material fact concerning plaintiff’s ownership of the copyright in the photos. And defendant conceded it published the photos without authorization. Defendant had challenged whether plaintiff’s copyright registration covered the photos at issue. Plaintiff had not introduced the deposit materials, but had submitted a sworn statement saying the photos had been included in the registration. The court found the sworn statement to carry the issue – had the defendant filed a motion to compel or sought the deposit materials from the copyright office, it may have been able to show the photos were not included. But on these facts, it was clear to the court that the copyright registration covered the photos.

Statute of limitations – no duty to scour

The court denied defendant’s motion for summary judgment, finding that the copyright infringement claims were not barred by the statute of limitations. Civil actions for copyright infringement must be “commenced within three years after the claim accrued.” 17 U.S.C. § 507(b). The Second Circuit has stated that the “discovery rule” governs when the statute of limitations begins to run: an infringement claim does not ‘accrue’ until the copyright holder discovers, or with due diligence should have discovered, the infringement.

The court found that plaintiff’s knowledge about general interest in the prison following the news stories about the mass shooter being relocated there was not sufficient to constitute constructive discovery that his photographs of that prison were being infringed. Plaintiff did not have knowledge of any infringement of his work and there was no reason for him to think, or duty for him to scour the internet to find out if, anyone was using his photographs without his consent. The court cited Wu v. John Wiley & Sons, Inc., 2015 WL 5254885 (S.D.N.Y. Sept. 10, 2015) to observe that “[i]f that were the expectation, then stock photo agencies and photographers likely would spend more money monitoring their licenses than they receive from issuing licenses.”

Masi v. Moguldom Media Group, 2019 WL 3287819 (S.D.N.Y., July 22, 2019)

Facebook scores Section 230 win over claims brought by Russian page accused of meddling in 2016 U.S. presidential election

Plaintiffs owned and operated a Facebook page that Facebook shut down in 2018 because of concerns the page was associated with Russian interference with the 2016 U.S. presidential election. After getting shut down, plaintiffs sued Facebook alleging a number of claims, including:

  • damages under 42 U.S.C. §1983 for deprivation of a constitutional right by one acting under color of state law;
  • civil rights violations under California law;
  • breach of contract; and
  • breach of implied covenant of good faith and fair dealing.

Facebook moved to dismiss these claims under the Communications Decency Act at 47 U.S.C. §230. The court granted the motion to dismiss.

Section 230 immunizes defendants from liability if:

  • defendant is a provider or user of an interactive computer service;
  • the information for which plaintiff seeks to hold defendant liable is information provided by another information content provider; and
  • plaintiff’s claim seeks to hold defendant liable as the publisher or speaker of that information.

In this case, there was no dispute Facebook met the first two elements, i.e., it is a provider of an interactive computer service and the information (namely, the content of plaintiffs’ page) was provided by a party other than Facebook. The real dispute came under the third element.

Plaintiffs argued that Section 230 should not immunize Facebook because this case did not concern obscenity or any other form of unprotected speech. Instead, plaintiffs argued, the case concerned political speech that strikes at the heart of the First Amendment. The court rejected this argument, holding that immunity under the Communications Decency Act does not contain a political speech exception. The statutory text provides that no “provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider. (Emphasis added). No distinction is made between political speech and non-political speech.

Plaintiff also argued that granting Facebook immunity would be counter to congressional intent behind the Communications Decency Act. But the court borrowed language from Barnes v. Yahoo!, Inc., 570 F.3d 1096 (9th Cir. 2009) on this point: “Both parties make a lot of sound and fury on the congressional intent of the immunity under section 230, but such noise ultimately signifies nothing. It is the language of the statute that defines and enacts the concerns and aims of Congress; a particular concern does not rewrite the language.” Looking to Fair Hous. Council of San Fernando Valley v. Roommates.Com, LLC, 521 F.3d 1157 (9th Cir. 2008), the court noted that Ninth Circuit case law interpreting the language of the Communications Decency Act has held that “activity that can be boiled down to deciding whether to exclude material that third parties seek to post online is perforce immune under section 230.”

Federal Agency of News LLC v. Facebook, Inc., 2019 WL 3254208 (N.D. Cal. July 20, 2019)

DMCA injunction against company accused of importing Iranian cracking tools and Chinese password generator to unlock software

Defendant entered into a software license agreement with plaintiff that allowed defendant to use plaintiff’s software in China. Plaintiff filed suit, accusing defendant of violating the anticircumvention provisions of the Digital Millennium Copyright Act (DMCA), which enabled defendant to use the software in California. It sought a preliminary injunction and the court granted the motion. 

The DMCA at 17 U.S.C. § 1201(a)(1) prohibits “circumvention of technological measures that effectively control access to a copyrighted work.” The court found that plaintiff was likely to succeed on this claim: defendant’s computers contained evidence of crack files used to gain unauthorized access to plaintiff’s software, and these cracking tools were used to circumvent anti-piracy measures by unlocking the software. Also, defendant manually changed the MAC addresses of 11 computers in the United States, which also allowed defendant to circumvent plaintiff’s anti-piracy measures.

The court also found that plaintiff could prove violation of § 1201(a)(2), which prohibits importing and manufacturing “technology that circumvents a technological measure that ‘effectively controls access’ to a copyrighted work.” The forensic evidence collected from defendant’s computers showed that defendant imported a crack file from an Iranian software piracy website and obtained license key generator software from a Chinese website known to host pirated software.

Synopsys v. Innogrit, 2019 WL 2617091 (N.D. Cal. June 26, 2019)

Photographer’s copyright claim against officer of company over photos on website moves forward

Plaintiff, a professional photographer, sued defendant company and an individual who was its “registered agent and … officer, director, manager, and/or other genre of principal” for copyright infringement over two photographs that appeared on the defendant company’s website. The infringement claims against the individual defendant included one for vicarious infringement.

The individual defendant moved to dismiss the vicarious infringement claim. The court denied the motion.

One “infringes vicariously by profiting from direct infringement while declining to exercise a right to stop or limit it.” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). “In order to establish vicarious liability, a copyright owner must demonstrate that the entity to be held so liable: (1) possessed the right and ability to supervise the infringing activity; and (2) possessed an obvious and direct financial interest in the exploited copyrighted materials.” Nelson-Salabes, Inc. v. Morningside Dev., LLC, 284 F.3d 505, 513 (4th Cir. 2002).

In this case, plaintiff alleged that the individual defendant controlled nearly all decisions of the company and was the dominant influence in the company. In addition, plaintiff alleged that the individual defendant “had the right and ability to supervise and/or control the infringing conduct of the company, and/or stop the infringements once they began.” Finally, plaintiff alleged that the individual defendant had an obvious and direct financial interest in the infringing activities of the company since he was an officer, director, manager or other principal of/for the company. As a principal of the company, the individual defendant’s financial interests were intertwined with the company’s. Therefore, the individual defendant had a direct and obvious financial interest in the company.

So the court concluded that plaintiff had presented sufficient facts with regard to each element of the vicarious liability claim.

Oppenheimer v. Morgan, 2019 WL 2617080 (W.D.N.C., June 26, 2019)

Section 230 protected Twitter from liability for deleting Senate candidate’s accounts

Plaintiff (an Arizona senate candidate) sued Twitter after it suspended four of plaintiff’s accounts. He brought claims for (1) violation of the First Amendment; (2) violation of federal election law; (3) breach of contract; (4) conversion, (5) antitrust; (6) negligent infliction of emotional distress; (7) tortious interference; and (8) promissory estoppel.

Twitter moved to dismiss on multiple grounds, including that Section 230(c)(1) of the Communications Decency Act (“CDA”), 47 U.S.C. § 230, rendered it immune from liability for each of plaintiff’s claims that sought to treat it as a publisher of third-party content.

The CDA protects from liability (1) any provider of an interactive computer service (2) whom a plaintiff seeks to treat as a publisher or speaker (3) of information provided by another information content provider.

The court granted the motion to dismiss, on Section 230 grounds, all of the claims except the antitrust claim (which it dismissed for other reasons). It held that Twitter is a provider of an interactive computer service. And plaintiff sought to treat Twitter as a publisher or speaker by trying to pin liability on it for deleting accounts, which is a quintessential activity of a publisher. The deleted accounts were comprised of information provided by another information content provider (i.e., not Twitter, but plaintiff himself).

Brittain v. Twitter, 2019 WL 2423375 (N.D. Cal. June 10, 2019)

Amazon faces liability for assuming a duty to act, by sending email warning of hoverboard fires

Online marketplaces should take note – sometimes trying to do the right thing will create more legal exposure. 

Plaintiffs tragically lost their home and suffered injuries in a fire caused by a hoverboard they bought through Amazon. They sued Amazon. Their negligence claim arose under Tennessee tort law, arising from the principle set out in Restatement (Second) of Torts § 324A, which states:

One who undertakes, gratuitously or for consideration, to render services to another which he should recognize as necessary for the protection of a third person or his things, is subject to liability to the third person for physical harm resulting from his failure to exercise reasonable care to protect his undertaking if (a) his failure to exercise reasonable care increases the risk of such harm, or (b) he has undertaken to perform a duty owed by the other to the third person, or (c) the harm is suffered because of reliance of the other or the third person upon the undertaking.

Plaintiffs claimed that defendant Amazon gratuitously undertook to warn the purchaser of the hoverboard (one of the plaintiffs) of the dangers posed by the hoverboard when it sent her an email outlining some of the dangers with hoverboards. Plaintiffs claimed that Amazon was negligent in that undertaking, and that the negligence caused plaintiffs harm.

The lower court granted summary judgment in Amazon’s favor, but the Sixth Circuit reversed the summary judgment order. It held that when Amazon chose to send the email to the one plaintiff, and in so doing sought to warn her of the dangers posed by the hoverboard, it assumed a duty to warn. There remained genuine issues of material fact as to whether Amazon breached that duty and whether any breach caused plaintiffs’ harm.

For instance, there was a genuine issue of material fact regarding whether Amazon’s failure to include certain information in the email amounted to negligence. The email did not inform hoverboard purchasers of any of the actions Amazon had taken to evaluate the dangers posed by hoverboards, including the findings and results of its internal investigation. The email did not inform hoverboard purchasers that the reported safety issues included a risk of fire or explosion. And the email did not inform hoverboard purchasers that Amazon had ceased all hoverboard sales worldwide.

And there was a genuine issue of material fact regarding whether the plaintiff read the email, and thereby could have acted in reliance on it. Though plaintiff had no specific recollection of reading the email, she “had a habit” of reading emails sent to her email address. She also testified that she would not have let the hoverboard enter or remain in her home had she known, among other things, that there had been 17 complaints of fires or explosions in the United States that involved hoverboards purchased on Amazon, that Amazon anticipated additional complaints, particularly during the upcoming holiday season, or that Amazon had ceased all hoverboard sales worldwide.

Fox v., Inc., 2019 WL 2417391 (6th Cir. June 10, 2019)

Question of who owns source code proceeds to trial in trade secrets case

Plaintiff sued its competitor in the mobile payment space for, among other things, trade secret misappropriation. Plaintiff claimed that defendant created its products using source code copied from plaintiff by two of plaintiff’s former employees who now work for defendant.

Defendant moved for summary judgment, arguing that plaintiff did not own the source code (and the trade secrets in it), because an independent contractor created the source code.

The court denied the motion for summary judgment. Plaintiff had provided evidence that the source code was written by a number of parties (including its own employees) and not just the independent contractor that defendant claimed owned the source code. The court held that plaintiff had presented evidence to raise genuine issues for trial as to who wrote what code.

Citcon, USA, LLC v. RiverPay Inc., 2019 WL 2327885 (N.D. Cal., May 31, 2019)

Coachella unsuccessful in domain name dispute, failing to prove bad faith use and registration

Disputed domain name:

The Complainant is the owner of the well-known Coachella festival. It owns a trademark registration, issued in 2016, for the mark CHELLA.

The Respondent asserted that he intended to use the disputed domain name to set up an online women’s clothing store but never did so. He claimed that growing up, his nickname was “Chelle” and that he modified that name to make it sound more feminine for use in connection with the store.

Coachella challenged the domain name registration. A single-member NAF panel denied the complaint. It found in favor of the Complainant on the first two UDRP elements, but did not find that the Respondent registered and used the disputed domain name in bad faith.

In the present case, the Panel found that, in contrast to the COACHELLA mark, the Complainant failed to show that its CHELLA mark was sufficiently well-known. All of the Complainant’s exhibits substantiating the well-known character of its mark related to its COACHELLA mark. Since the disputed domain name was considered to only be confusingly similar to Complainant’s CHELLA mark, the Panel found that future active use of the disputed domain name could thus be legitimate without interfering with the Complainant’s marks.

The Panel was also of the opinion that the Complainant did not sufficiently show the Respondent’s constructive knowledge of the COACHELLA or CHELLA marks to evidence bad faith registration of the disputed domain name. Considering that the term “Chella” is used as a personal name or to denote a town in Spain, the Panel found that it was plausible that the disputed domain name was registered in good faith by the Respondent, without any knowledge of or intention to target the Complainant’s marks. Finally, the Panel found that the Respondent had not violated any of the factors listed in Paragraph 4(b) of the UDRP or engaged in any other conduct that would constitute bad faith registration and use under the UDRP.

Coachella Music Festival, LLC v. John Mercado, FA1904001840140 (Forum, May 27, 2019)

This post originally appeared on UDRP Tracker.

Sony’s EULA did not protect it from liability under CFAA and for trespass to chattel

Plaintiff filed a class action lawsuit against Sony after Sony issued a software update that bricked plaintiff’s Sony Dash. Sony moved to dismiss for failure to state a claim. The court granted the motion on a number of claims but allowed the Computer Fraud and Abuse Act (CFAA) and trespass to chattel claims to move forward.

CFAA Claim

Sony had argued that the CFAA claim should fail because plaintiff had not alleged the software update was “without authorization,” given the language of the end user license agreement, which read:

From time to time, Sony … may automatically update or otherwise modify the Software, for example, but not limited to for purposes of error correction, improvement of features, and enhancement of security features. Such updates or modifications may change or delete the nature of features or other aspects of the Software, including but not limited to features you may rely upon. You hereby agree that such updates and modifications may occur at Sony’s sole discretion, and that Sony may condition continued use of the Software upon your complete installation or acceptance of such updates or modifications.

Specifically, Sony argued that the EULA authorized Sony to “modify” the software at any time, and warned that such modifications may change or delete the nature of features or other aspects of the software, including features the consumer may rely upon. A court addressed a similar argument in In re Apple, 596 F.Supp.2d 1288 (N.D. Cal. 2008). In that case, Apple, as defendant, relied on the following language to argue that it acted “with authorization” for purposes of the CFAA when bricking iPhones that had been unlocked to access third-party applications:


In that case, the court concluded that usage of the term “may” (as in “may result” in damage) created too much ambiguity surrounding Apple’s warning and found plaintiff’s allegations as to its CFAA claim sufficient to defeat Apple’s motion to dismiss.

Here, Sony had used the same ambiguous “may” (as in “may change or delete the nature of features”) and even more uncertain language than in In re Apple. Unlike in In re Apple, Sony did not explicitly warn that a subsequent software update could render the Dash “permanently inoperable.” The EULA did not say that Sony could delete all features. Instead, it vaguely warned consumers that Sony “may change or delete the nature of features” that a consumer “may rely upon.” This sentence was also prefaced by the following: “From time to time, Sony … may automatically update or otherwise modify the Software, for example, but not limited to for purposes of error correction, improvement of features, and enhancement of security features.”

The court found that this preface implied that automatic software updates would improve or enhance the Dash – not destroy its functionality. The court could not say at this stage that by using the Dash and thus implicitly agreeing to the EULA, plaintiff authorized Sony to render his device inoperable. Accordingly, the court found that plaintiff plausibly pled that Sony acted “without authorization” in bricking the Dash.

Tresspass to Chattel

Under New Jersey law, “[a] cognizable claim for trespass to chattel occurs ‘when personal property, in the actual use of the owner, is injured or taken by a trespasser, so that the owner is deprived of the use of it.’” Arcand v. Brother Int’l Corp., 673 F. Supp. 2d 282, 312 (D.N.J. 2009) (quoting Luse v. Jones, 39 N.J.L. 707, 709 (N.J. 1877)). “[P]hysical contact with the chattel, for instance, where a person kicks another’s car bumper, is not required.” Id. “All that is required … is interference with the chattel as a direct or indirect result of an act done by the actor.” Id.

In this case, Sony’s software update bricked plaintiff’s Dash. The court found that contrary to Sony’s assertions, plaintiff had not consented to Sony rendering his device wholly nonfunctional by agreeing to the EULA.

Sony had also argued that plaintiff never owned the software used by the Dash (in accordance with the EULA) and therefore Sony could not be liable for altering that software in the update. But the court saw it otherwise — whether plaintiff owned the software, Sony, at a minimum, indirectly injured plaintiff’s physical Dash by rendering it completely nonfunctional through the software update. The court again looked to In re Apple wherein that court found that the plaintiffs plausibly pled trespass to chattel by alleging that Apple released a software update that rendered the plaintiffs’ iPhones permanently inoperable. On these facts, the court found that plaintiff had plausibly pled his trespass to chattel claim.

Grisafi v. Sony Electronics Inc., 2019 WL 1930756 (D.N.J. April 30, 2019)

Affirmative defense asserting that Copyright Act is unconstituational survives motion to strike

Plaintiff sued defendant search engine for copyright infringement alleging that defendant wrongfully reposted a picture plaintiff had taken. Defendant’s answer included a number of affirmative defenses. Plaintiff moved to strike the affirmative defenses. The court struck some of them but allowed at least a couple of them to survive.

Unclean hands – Defendant apparently perceived some trollish behavior on the part of the plaintiff. Defendant alleged that, in light of plaintiff’s practice of taking photographs of no actual value, for which there is no market, and seeding them on the internet for the purpose of attempting to extort revenue through litigation, that the claims for equitable relief should be barred by unclean hands. Plaintiff objected, claiming that it was scandalous to characterize plaintiff’s enforcement efforts this way. The court found, though, that the defense was adequately pled and not scandalous. “While the … defense is unfavorable to Plaintiff, it does not ‘cast a cruelly derogatory light on’ Plaintiff as necessary for the Court to conclude that the defense is scandalous.”

Unconstitutionality of portions of Copyright Act – Defendant also asserted that 17 U.S.C. §§ 102 and 410, statues dealing with copyright protections, are unconstitutional as applied to pictures based on technological advancements in photography. Plaintiff responded by pointing out that the Supreme Court since 1884 has found copyright protection for photographs to be constitutional, and argued that defendant presented no cognizable legal argument to suggest that Congress exceeded its constitutional powers by enacting the Copyright Act. Perhaps surprisingly, the court rejected plaintiff’s argument. It noted that the defense was not insufficient, redundant, immaterial, impertinent, or scandalous, but that defendant was arguing that the law, or at least the application of the law, should be changed, and defendant presented grounds for its argument.

Miller v. 4Internet, LLC, 2019 WL 1937567 (D.Nev. April 30, 2019)