Website operator faces copyright liability over use of allegedly infringing third party add-on

4925366648_802681f881_b

The recent case of Live Face on Web, LLC v. Biblio Holdings LLC illustrates some important risks of which any purchaser of third-party technology services or deliverables should be aware. The defendant in this case faces potential copyright liability (and the expenses associated with defending such claims) arising from technology that a third party vendor provided for defendant to enhance defendants’ website.

Plaintiff’s software

Plaintiff developed software that allows website operators to display video of a personal “host” to welcome online visitors to the website. A website operator implements plaintiff’s software by embedding an HTML script tag in the code of its website. The added code links the website to a copy of plaintiff’s software stored on the same server as the customer’s website or on a different server. When a user points his or her browser to the web page, the embedded HTML script tag causes the distribution of plaintiff’s software, which in turn causes the personal host video to be displayed. The browser saves plaintiff’s software into cache or hard drive or both, and automatically loads the software into RAM.

Defendants’ alleged infringement

Defendants allegedly used an infringing version of plaintiff’s software to display a spokesperson video on its website. Specifically, defendants claim that they contracted with a third party vendor that processed video that defendants provided, then sent defendants HTML code which defendants implemented into their site. When a user visited defendants’ website, his or her browser would call on the allegedly infringing code, which was stored on the third party vendor’s server. This caused a copy of the allegedly infringing software to be stored on the visitor’s computer in cache, memory, or its hard drive.

The proceedings

Plaintiff filed suit for copyright infringement in the U.S. District Court for the Southern District of New York. Defendants moved to dismiss for failure to state a claim upon which relief may be granted. The court denied most of the motion to dismiss, leaving the majority of copyright-related claims remaining in the case. It granted the motion to dismiss on the question of contributory liability.

Direct copyright infringement

Defendants raised several arguments as to why they should not be liable for direct copyright infringement . Although the court rejected each of these arguments, it observed that defendants’ most promising argument was that any infringement was actually done by the third party vendor that provided the technology to defendants. In this part of its opinion, the court considered the holdings of Perfect 10 v. Amazon, 508 F.3d 1146 (9th Cir. 2007) and other cases that involved in-line linking. The court observed that the reasoning of these cases appeared to limit plaintiff’s ability to hold defendants liable for direct infringement of plaintiffs distribution right. Nonetheless, the record did not have enough information for the court to definitively make a determination at this early stage. Accordingly, the court decided to permit discovery on the relationship between the third-party technology vendor and he allegedly infringing software.

The court also rejected defendants’ other arguments against liability for direct infringement. It found unpersuasive defendants’ arguments that the software was never downloaded. On this point, the court found that the complaint had sufficiently alleged that the infringing software was automatically saved into the cache or hard drives and automatically loaded into computer memory or RAM of visitors to defendants’ website. The court also rejected defendants’ arguments that the DMCA Safe Harbors protected them from liability, that any copying was only de minimis, and that previous lawsuits against the third-party technology provider should relieve defendants from liability.

Contributory infringement

On the question of contributory liability, the court granted defendants’ motion to dismiss. To bring a claim for contributory infringement, a plaintiff must allege both that its copyrighted work was directly infringed and that the defendant, with knowledge of the infringing activity, induced, caused, or materially contributed to the infringing conduct of another. The court found that plaintiffs had alleged only a bare legal conclusion that defendants knew or had reason to know they were using an infringing version of the software. Without strong enough allegations on the knowledge element of contributory infringement, this claim failed.

Vicarious infringement

Vicarious liability for copyright infringement may be imposed where a defendant profits directly from the infringement and has a right and ability to supervise the direct infringer, even if the defendant initially lacks knowledge of the infringement. The court denied the motion to dismiss on this point, as plaintiff plausibly alleged that defendants controlled the allegedly unlawful distribution of copies of plaintiff’s software to its website visitors. The court drew inferences in plaintiff’s favor, noting the allegation that defendants did modify their website to include code linking to the allegedly infringing software. Plaintiffs also successfully alleged that defendants profited from the use of the infringing software in that having the video host captured, held and prolonged the attention of the average online user, and did in fact generate revenues and profits for defendants. On this point, the court look to Arista Records v. MP3Board, 2002 WL 1997918 (S.D.N.Y. August 28,2002), which stands for the proposition that “infringement which increases a defendant’s user base or otherwise acts as a draw for customers constitutes a direct financial interest.”

Implications

In the course of negotiating technology development and service agreements, a customer should seek to get assurances from its vendor that any technology being provided will not infringe third party intellectual property rights. It is critically important to, were possible, have the vendor warrant and represent that the deliverables are non-infringing. It is equally important, still from the customer’s perspective, to have the vendor obligate itself to indemnify the customer in the event there are third party claims of intellectual property infringement. Although from this opinion we do not see all the facts, it appears this could be a situation where the defendant/customer is being taken to task and having to incur needless expense for the use of infringing software provided by its vendor. If that is the case, it is an unfortunate situation, one which a prudent customer of technology services would be well advised to seek to avoid.

Live Face on Web, LLC v. Biblio Holdings LLC, 2016 WL 4766344 (S.D.N.Y., September 13, 2016)

Photo courtesy of Flickr user J E Theriot  under this Creative Commons license.

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Yelp not liable for allegedly defamatory customer reviews

In a recent case having an outcome that should surprise no one, the United States Court of Appeals for the Ninth Circuit has affirmed a lower court’s decision that held Yelp immune from liability under the Communications Decency Act (47 U.S.C. 230 – the “CDA”) over customer reviews that were allegedly defamatory.

Plaintiff sued Yelp for violations under RICO and the Washington Consumer Protection Act, as well as libel under Washington law. Yelp moved to dismiss for failure to state to claim upon which relief may be granted. The lower court found that plaintiff had failed to allege any facts that plausibly suggested Yelp was responsible for the content, and therefore dismissed the case. Plaintiffs sought review with the Ninth Circuit. On appeal, the court affirmed.

The appellate court observed that plaintiff’s complaint, which he filed pro se, “pushed the envelope” of creative pleading. The court observed that plaintiff cryptically – “to the point of opacity” – alleged that Yelp was the one that created and developed the offending content. The court declined to open the door to such “artful skirting” of the Communications Decency Act’s safe harbor provision.

The key question before the court was whether the alleged defamatory reviews were provided by Yelp or by another information content provider. CDA immunity does not extend to situations where the web site itself is responsible for the creation or development of the offending content. The immunity protects providers or users of interactive computer services when the claims being made against them seek to treat them as a publisher or speaker of the information provided by another information content provider.

In this case, the court found that a careful reading of plaintiff’s complaint revealed that he never specifically alleged that Yelp created the content of the allegedly defamatory posts. Rather, plaintiff pled that Yelp adopted them from another website and transformed them into its own stylized promotions. The court found that these “threadbare” allegations of Yelp’s fabrication of allegedly defamatory statements were implausible on their face and were insufficient to avoid immunity under the Communications Decency Act. The court was careful to note that CDA immunity does not extend to content created or developed by an interactive computer service. “But the immunity in the CDA is broad enough to require plaintiffs alleging such a theory to state the facts plausibly suggesting the defendant fabricated content under a third party’s identity.”

The plaintiff had alleged in part that Yelp’s rating system and its use by the author of the allegedly defamatory content resulted in the creation or development of information by Yelp. The court rejected this argument, finding that the rating system did “absolutely nothing to enhance the defamatory sting of the message beyond the words offered by the user.” The court further observed that the star rating system was best characterized as a neutral tool operating on voluntary inputs that did not amount to content development or creation.

Finally, the court addressed plaintiff’s cryptic allegations that Yelp should be held liable for republishing the alleged defamatory content as advertisements or promotions on Google. A footnote in the opinion states that plaintiff was not clear whether the alleged republication was anything more than the passive indexing of Yelp reviews by the Google crawler. The decision’s final outcome, however, does not appear to depend on whether Google indexed that content as Yelp passively stood by or whether Yelp affirmatively directed the content to Google. “Nothing in the text of the CDA indicates that immunity turns on how many times an interactive computer service publishes information provided by another information content provider.” In the same way that Yelp would not be liable for posting user generated content on its web site, it would not be liable for disseminating the same content in essentially the same format to a search engine. “Simply put, proliferation and dissemination of content does not equal creation or development of content.”

Kimzey v. Yelp! Inc., — F.3d —, 2016 WL 4729492 (9th Cir. September 12, 2016)

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Donald Trump wins smackdown victory in defamation and tortious interference lawsuit over domain name dispute

Donald Trump filed a UDRP action against plaintiff Stevens over plaintiff’s registration of the domain name TrumpEstates.com. While that action was pending, plaintiff filed a lawsuit against Trump, his organization, and his lawyers, asserting claims of defamation, tortious interference with business relations, and also seeking a declaratory judgment concerning cybersquatting.

Trump moved to dismiss for failure to state a claim upon which relief may be granted. The court granted the motion and dismissed the action with prejudice.

The defamation claim failed because plaintiff had established a website at the disputed domain name that provided a link to a New York Post article that republished the report of the defamatory allegations, namely, that plaintiff had violated the law and had committed cybersquatting by registering the disputed domain name. This claim failed under New York law because words voluntarily disseminated to the world by the party allegedly aggrieved cannot, by definition, be found defamatory.

The tortious interference claim failed because plaintiff did not identify any third party with which it had a business relationship, let alone one with which the Trump defendants interfered and injured.

Plaintiff’s claim for declaratory judgment sought an order from the court holding that plaintiff had not improperly registered the domain name. The court found that plaintiff did not offer any factual allegations of he acted in good faith when he registered the disputed domain name. Instead, plaintiff actually admitted that his business centered around the reselling of domain names. Federal law recognizes it to be an indication of bad faith when it offers to transfer, sell, or otherwise assign a domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in a bona fide offering of any goods or services. (In this case, the disputed domain name had been advertised as being for sale for $400,000.)

The case can be properly characterized as a “smackdown” because the court dismissed the action with prejudice, meaning that plaintiff does not have the opportunity to refile the deficient complaint. The court added some gloss on the part of the opinion where it determined that leave to amend it would be improper. It noted that the “network of regulations” that protect trademark owners’ interests in domain names makes “crystal clear that, even in cyberspace, the TRUMP mark is entitled to regulatory protection fair and square.” The court went on to note that it was inconceivable that plaintiff could, as the silence of his papers emphasized, plead any facts that would entitle him to co-opt the Trump name.

Stephens v. Trump, 2016 WL 4702437 (E.D.N.Y., September 7, 2016)

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

No liability for cable company that retained customer information in violation of law

Court essentially holds “no harm, no foul” in case involving violation of federal privacy statute. The case fails to provide an incentive for “privacy by design”.

Can a company that is obligated by law to destroy information about its former customers be held liable under that law if, after the contract with the customer ends, the company does not destroy the information as required? A recent decision from the United States Court of Appeals for the Eighth Circuit (which is located in St. Louis) gives some insight into that issue. The case is called Braitberg v. Charter Communications, Inc., — F.3d —, 2016 WL 4698283 (8th Cir., Sep. 8, 2016).

12493182714_859e827fe6_z

Plaintiff filed a lawsuit against his former cable company after he learned that the company held on to his personally identifiable information, including his social security number, years after he had terminated his cable service. The cable company was obligated under the federal Cable Communications Policy Act to “destroy personally identifiable information if the information is no longer necessary for the purpose for which it was collected.”

The lower court dismissed the lawsuit on the basis that plaintiff had not properly demonstrated that he had standing to bring the lawsuit. Plaintiff appealed to the Eighth Circuit. On review, the court of appeals affirmed the dismissal of the lawsuit.

The appellate court’s decision was informed by the recent Supreme Court decision in Spokeo, Inc. v. Robins, 136 S.Ct. 1540 (S.Ct. 2016), which addressed, among other things, the question of whether a plaintiff asserting violation of a privacy statute has standing to sue.

As a general matter, Article III of the Constitution limits the jurisdiction of the federal courts to actual “cases or controversies”. A party invoking federal jurisdiction must show, among other things, that the alleged injury is both “concrete and particularized” and “actual or imminent, not conjectural or hypothetical”.

In this case, the Court of Appeals found that plaintiff had not alleged an injury in fact as required under Article III and the Spokeo decision. His complaint asserted merely “a bare procedural violation, divorced from any concrete harm.”

The court’s opinion goes on to provide some examples of when the violation of a privacy statute would give rise to standing. It does this by noting certain things that plaintiff did not allege. He did not, for example allege that defendant had disclosed information to a third party, that any other party accessed the data, or that defendant used the information in any way after the termination of the agreement. Simply stated, he identified no material risk of harm from the retention. This speculative or hypothetical risk was insufficient for him to bring the lawsuit.

One unfortunate side effect of this decision is that it does little to encourage the implementation of “privacy by design” in the development of online platforms. As we have discussed before, various interests, including the federal government, have encouraged companies to develop systems in a way that only keeps data around for as long as it is needed. The federal courts’ unwillingness to recognize liability in situations where data is indeed kept around longer than necessary, even in violation of the law, does not provide an incentive for the utilization of privacy by design practices.

Braitberg v. Charter Communications, Inc., — F.3d —, 2016 WL 4698283 (8th Cir., Sep. 8, 2016)

Photo courtesy Flickr user Justin Hall under this Creative Commons license.

Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Cruz campaign still facing copyright and breach of contract liability over songs used in political ads

Court denies motion to dismiss copyright and breach of contract claims over songs used in YouTube and TV political ads.

Months after Ted Cruz ended his presidential bid, his campaign, and the advertising company hired to create ads for the campaign, still face liability over two songs used in YouTube and television ads. A federal court in Washington state has denied the defendants’ motion to dismiss copyright infringement and breach of contract claims brought against them.

An employee of the Cruz campaign’s advertising company allegedly downloaded two songs from Audiosocket, and then used those songs in two separate campaign ads. Audiosocket and the copyright holders sued for infringement and breach of the licensing agreements under which the songs were provided.

The court rejected the defendants’ arguments. It held that the plaintiffs had adequately pled the existence of their copyright registrations, and that the claims for breach of the licensing agreement were not preempted by the Copyright Act. Because the licensing agreement expressly prohibited the songs to be used for political purposes, the breach of contract claims were not “equivalent” to a copyright infringement claim, and therefore not subject to preemption under 17 USC 301.

The case is a reminder of the risks that companies and organizations face when hiring outside vendors to procure and create content. The hiring party should seek, at minimum, to ensure that the vendor has obtained the appropriate rights in the content it will integrate into the deliverables provided under the arrangement. And the vendor should utilize appropriate internal protocols and form documents to help ensure that the content it provides to its customer does not infringe. That kind of diligence will help avoid unpleasant situations between vendor and customer that arise when third parties claim against both of them that intellectual property rights have been infringed.

Leopona, Inc. v. Cruz For President, 2016 WL 3670596 (W.D. Washington, July 11, 2016)

Six things business owners should know about trademarks

#1 – Trademark law protects your brand.

shield

Trademarks are intellectual property. The different categories of intellectual property can be confusing, and as you are identifying and evaluating the different legal issues your business faces, you should seek to understand the role that each category plays. That way you can determine where you should focus your resources to cover the company’s greatest needs. Every business has trademark needs. Trademark law gives exclusive rights to providers of goods and services to use the company’s distinctive marks in connection with the company’s goods and services. A trademark (or a service mark, collectively “marks”) identify the source of goods and services. So while the company is the one that may claim rights in the trademark, it is useful to remember that the ultimate reason for trademark protection is to keep members of the consuming public from being confused about where the goods or services come from.

#2 – Registration is not necessary, but it is a good idea.

seal

At least in the U.S., trademark rights arise from using the mark in commerce. This means a couple of different things. For one, the law will provide your company with exclusive rights to use a certain mark in connection with certain goods or services by virtue of your having used the mark in commerce in connection with those goods or services. But there are limits to this protection — you can only claim that exclusivity in the geographic area in which you’ve actually used the mark. Getting a registration with the United States Patent and Trademark Office helps you in this area. Once the USPTO awards your company a registration certificate for the mark, you are the presumed owner of the exclusive rights to that mark in connection with those goods and services anywhere in the United States, regardless of where you have actually done business. A registration carries with it other benefits as well — you can use the “circle R” designation with the mark, and your registration serves to help give notice to (i.e., warn) other companies who might consider adopting the same or similar mark.

#3 – Descriptive words and phrases generally cannot be trademarks.

descriptive

Trademark law does not allow a company to claim exclusive rights on words or phrases that merely describe the product or some characteristic of it. This is a common issue that companies face when deciding on a mark for adoption and registration. Descriptive terms are good in that they convey to the consuming public what the product is all about. But descriptive terms are to be avoided in that they are not distinctive. Unless a mark is distinctive, the trademark laws do not recognize it as a trademark or service mark. A mark can be “inherently distinctive” in a number of ways. It may be a made up word (e.g., Kodak), “arbitrary” in that the original meaning of the word does not correspond with the products (e.g., Apple for computers), or “suggestive” – sort of describing the product but requiring a step in imagination (e.g., Beautyrest for mattresses). Or the mark can be a design. Marks can become distinctive over time (usually after 5 years of use). This is known as “acquired distinctiveness.”

#4 – Smart business owners do trademark clearance.

clearance

Trademark clearance is the process that a company goes through before actually using or seeking to register a mark. The goal is to become reasonably sure that the use of the proposed mark will not put you at high risk of infringing someone else’s mark. Clearance also helps prevent wasting resources on a trademark application that will get rejected by the USPTO because there is already a similar mark that someone else has applied for or registered. Clearance usually has a couple steps. Many companies have their trademark counsel perform “knockout searches” to identify any obvious risks of conflict. This can be as simple as doing a web search and a search of the USPTO database for marks that look and sound the same and are for similar goods or services. Before going all out on adopting and seeking to register a mark, however, it is a good idea to have trademark counsel perform a comprehensive search and advise on the results. A number of parties offer comprehensive search services. The key question in trademark clearance is likelihood of confusion. A mark owner needs to be reasonably sure that using the proposed mark in commerce will not cause confusion among the confusing public as to the source of the goods or services offered under the mark.

#5 – Trademark fair use is a thing.

starbucks

In some circumstances a company can use another company’s trademark without much risk of infringement. Generally this falls under the heading of “fair use.” Classic fair use is when one company uses another’s mark in just a descriptive sense. For example, a laundromat may say in its advertising that it is next door to the Burger King. In that case, the use of Burger King is not an infringement. Nominative fair use is when a company uses another mark to describe some characteristic of that mark. A commercial for Toyota, for example, may use the Honda trademark for purposes of comparing the two product lines.

#6 – Use it or lose it. Protect it or lose it.

abandoned

Trademark rights come from the company’s use of the mark, and there is always a risk that those rights might be abandoned. If a company stops using a mark, a court may find that it has abandoned its rights, and another company would be free to adopt and use the mark. The USPTO requires that documents be filed every few years to ensure that marks that are listed as registered remain in use. If a company does not take appropriate steps to ensure its mark is distinctive in the marketplace, it can similarly be found to have abandoned its rights. So mark owners should do some “policing” to see that there no one else uses a confusingly similar mark on similar products. If the company discovers such use, it must be diligent in seeking to get the other company to stop, through sending a cease and desist letter or through litigation when appropriate.

Food&Beverage photo courtesy schatz under this Creative Commons license.

Coffee sign photo courtesy Aaron Gustafson under this Creative Commons license.

Evan Brown is an attorney in Chicago advising clients on matters dealing with trademarks, copyright, technology, the internet and new media.

No statutory damages in online copyright case where infringement continued after copyright registration

2240294793_25ebe9cff9_o
If a copyright infringement begins before the plaintiff registers its copyright, and continues after the date of registration, can the plaintiff recover its attorney’s fees and statutory damages for the infringement that occurs after registration? The U.S. District Court for the Southern District of Indiana recently considered that question in the case of Bell v. Turner, 2016 WL 1270221 (S.D. Ind. March 31, 2016).

The prospect of recovering statutory damages and attorney’s fees is a big motivator for copyright plaintiffs. The Copyright Act (at 17 U.S.C. § 504(c)(1)) provides that a plaintiff can receive an award of statutory damages — in lieu of actual damages and profits — in a sum not less than $750 or more than $30,000 for each infringement. If the copyright infringement is willful, “the court in its discretion may increase the award of statutory damages to an award of not more than $150,000.” And 17 U.S.C. § 505 provides that a successful party in a copyright action can recover its costs and attorney’s fees in the court’s discretion.

But statutory damages and attorney’s fees are only available if certain conditions are met. The Copyright Act precludes a plaintiff from obtaining statutory damages and attorney’s fees if the infringement of the work commenced after publication but before registration. The Copyright Act provides, at 17 U.S.C. § 412(2), that “no award of statutory damages or attorney’s fees…shall be made for…any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work”.

In Bell v. Turner, the court granted summary judgment to the defendant on the issue of whether plaintiff was entitled to recover statutory damages and attorney’s fees. Plaintiff first published his photo of the Indianapolis skyline online in 2000. In 2009, defendant copied the photo and placed it on his website. In 2011, plaintiff registered the copyright in the work, but defendant left his copy of the photo online, even after the work was registered.

In granting summary judgment to defendant, the court cited to Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2009) and observed that “the first act of infringement in a series of ongoing infringements of the same kind marks the commencement of one continuing infringement under § 412.” Because the defendant posted the photo online more than three months before the date plaintiff registered the work, plaintiff was not entitled to recover statutory damages or attorney’s fees, even though the infringement continued after the date of registration.

Bell v. Turner, 2016 WL 1270221 (S.D. Ind. March 31, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Website operator not liable for copyright infringement despite lack of DMCA safe harbor protection

Online platforms that allow user-generated content should take advantage of the safe harbor provisions of the Digital Millennium Copyright Act (DMCA), which protect the platform in the event of a third party claim of copyright infringement over the user-generated content. But the recent case of BWP Media USA, Inc. v. T&S Software Associates, Inc., 2016 WL 1248908 (N.D. Tex., March 25, 2016) shows that a platform may still avoid liability for infringement even if it has not availed itself of the benefits of the DMCA.

Plaintiff copyright holders sued defendant online forum board operator for direct and vicarious copyright infringement, over photos uploaded by users of the online forum board. Defendant moved for summary judgment. The court granted the motion. The defendant successfully defeated these claims of copyright infringement even though it had not met the DMCA safe harbor requirement of designating an agent with the Copyright Office to receive takedown notices.

Direct Infringement

The court found there was no triable issue on plaintiffs’ claim that defendant was liable for direct infringement, because the parties did not dispute that defendant played no direct role in uploading the photos. Citing the seminal case of Religious Tech. Ctr. v. Netcom OnLine Comm’cn Servs., 907 F, Supp. 1361 (N.D.Cal. 1995), the court observed that “making an internet company liable for direct copyright infringement simply because it gave users access to copyrighted material posted by others would create unreasonable liability.”

Vicarious Liability

A defendant may be vicariously liable for copyright infringement where it “profits directly from the infringement and has a right and ability to supervise the direct infringer, even if the defendant initially lacks knowledge of the infringement.” Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005). In this case, the court found that although plaintiffs contended that (1) the copyrighted photographs were displayed alongside paid advertising, (2) defendant received revenue from the paid advertising on its forum, and (3) the revenue received was based, in part, on the website traffic, plaintiff failed to point to any evidence in the record showing that defendant directly profited from the infringing conduct.

Observation: DMCA Safe Harbor Not Needed Here

Online service providers that make their platforms available for the storage of user-generated content (even if such ability is trivial, e.g., allowing users to upload profile pictures) are encouraged to take the appropriate steps to place the service provider within the protections of DMCA safe harbor. These steps include providing appropriate information in the platform’s terms of service, employing internal processes to handle takedown requests and repeat infringers, having a plan in place for dealing with counternotifications, and designating an agent with the Copyright Office to receive takedown notices. Being in the safe harbor means that the service provider has an affirmative defense if it is sued by a third party copyright holder for infringement causaed by the platform’s users.

Many have mistakenly believed that if a service provider fails to get safe harbor protection, it is automatically liable for infringement occasioned by user generated content uploaded to the service. That is not true, and the BWP Media case serves as an example. A copyright-owning plaintiff must still establish the elements of infringement against the service provider — whether for direct infringement or under a theory of secondary liability (like vicarious infringement) — even if the defendant does not find itself within the DMCA safe harbor.

BWP Media USA, Inc. v. T&S Software Associates, Inc., 2016 WL 1248908 (N.D. Tex., March 25, 2016)


Evan_BrownAbout the Author: Evan Brown is a Chicago technology and intellectual property attorney. Call Evan at (630) 362-7237, send email to ebrown [at] internetcases.com, or follow him on Twitter @internetcases. Read Evan’s other blog, UDRP Tracker, for information about domain name disputes.

Facebook’s Terms of Service protect it from liability for offensive fake account

0723_facebook-screenshot
Someone set up a bogus Facebook account and posted, without consent, images and video of Plaintiff engaged in a lewd act. Facebook finally deleted the account, but not until two days had passed and Plaintiff had threatened legal action.

Plaintiff sued anyway, alleging, among other things, intrusion upon seclusion, public disclosure of private facts, and infliction of emotional distress. In his complaint, Plaintiff emphasized language from Facebook’s Terms of Service that prohibited users from posting content or taking any action that “infringes or violates someone else’s rights or otherwise would violate the law.”

Facebook moved to dismiss the claims, making two arguments: (1) that the claims contradicted Facebook’s Terms of Service, and (2) that the claims were barred by the Communications Decency Act at 47 U.S.C. 230. The court granted the motion to dismiss.

It looked to the following provision from Facebook’s Terms of Service:

Although we provide rules for user conduct, we do not control or direct users’ actions on Facebook and are not responsible for the content or information users transmit or share on Facebook. We are not responsible for any offensive, inappropriate, obscene, unlawful or otherwise objectionable content or information you may encounter on Facebook. We are not responsible for the conduct, whether online or offline, of any user of Facebook.

The court also examined the following language from the Terms of Service:

We try to keep Facebook up, bug-free, and safe, but you use it at your own risk. We are providing Facebook as is without any express or implied warranties including, but not limited to, implied warranties of merchantability, fitness for a particular purpose, and non-infringement. We do not guarantee that Facebook will always be safe, secure or error-free or that Facebook will always function without disruptions, delays or imperfections. Facebook is not responsible for the actions, content, information, or data of third parties, and you release us, our directors, officers, employees, and agents from any claims and damages, known and unknown, arising out of or in any way connected with any claims you have against any such third parties.

The court found that by looking to the Terms of Service to support his claims against Facebook, Plaintiff could not likewise disavow those portions of the Terms of Service which did not support his case. Because the Terms of Service said, among other things, that Facebook was not responsible for the content of what its users post, and that the a user uses the service as his or her on risk, the court could not place the responsibility onto Facebook for the offensive content.

Moreover, the court held that the Communications Decency Act shielded Facebook from liability. The CDA immunizes providers of interactive computer services against liability arising from content created by third parties. The court found that Facebook was an interactive computer service as contemplated under the CDA, the information for which Plaintiff sought to hold Facebook liable was information provided by another information content provider, and the complaint sought to hold Facebook as the publisher or speaker of that information.

Caraccioli v. Facebook, 2016 WL 859863 (N.D. Cal., March 7, 2016)

About the Author: Evan Brown is a Chicago attorney advising enterprises on important aspects of technology law, including software development, technology and content licensing, and general privacy issues.

Posts navigation

1 2 3 4 5 6 7 79 80 81