Category Archives: Copyright

Court labels copyright plaintiff as a troll and shuts down efforts to ID anonymous infringer

When a copyright plaintiff does not know who a particular alleged infringer is, it must first send a subpoena to the ISP assigned the IP address used to commit the alleged infringement. But the rules of procedure do not allow the sending of subpoenas until after the 26(f) conference – a meeting between the plaintiff and defendant (or their lawyers) to discuss the case. A plaintiff cannot have a 26(f) conference if the defendant has not been served with the complaint, and the complaint cannot be served unless the defendant’s identity is known.

So you can see the conundrum. To break out of this not-knowing, plaintiffs in situations like this will ask the court’s help through a motion for leave to take early discovery. That way the plaintiff can learn who the defendant is, serve the complaint, and move the case forward.

In the recent case of Strike 3 Holdings v. Doe, Judge Royce Lamberth of the U.S. District Court for the District of Columbia put a stop to the efforts of a plaintiff that it called a copyright troll right to its face (or at least right in the text of the opinion). The court denied Strike 3’s motion for leave to take early discovery to learn the identity of an unknown BitTorrent user accused of downloading pornography.

The court held that the plaintiff’s request was not specific enough, and the privacy interests of the unknown defendant, together with the social harm of being wrongfully accused of obtaining “particularly prurient pornography” were not outweighed by the trollish plaintiff’s need for the information.

Key to the court’s ruling was the idea that a subpoena in circumstances like this must be able to actually identify a defendant who could be sued. The court noted, however, that

Strike 3 could not withstand a 12(b)(6) motion in this case without resorting to far more intensive discovery machinations sufficiently establishing defendant did the infringing—examining physical evidence (at least the computers, smartphones, and tablets of anyone in the owner’s house, as well as any neighbor or houseguest who shared the Internet), and perhaps even interrogatories, document requests, or depositions. Strike 3’s requested subpoena thus will not—and may never—identify a defendant who could be sued.

The opinion is an entertaining read and conveys the judge’s clear frustration with copyright troll plaintiffs. Below are some of the more memorable quips.

Regarding the flaws of using IP addresses to identify people:

[Plaintiff’s] method [of identifying infringers] is famously flawed: virtual private networks and onion routing spoof IP addresses (for good and ill); routers and other devices are unsecured; malware cracks passwords and opens backdoors; multiple people (family, roommates, guests, neighbors, etc.) share the same IP address; a geolocation service might randomly assign addresses to some general location if it cannot more specifically identify another.

Regarding the public shame of being accused of infringing porn:

… But in many cases, the method is enough to force the Internet service provider (ISP) to unmask the IP address’s subscriber. And once the ISP outs the subscriber, permitting them to be served as the defendant, any future Google search of their name will turn-up associations with the websites Vixen, Blacked, Tushy, and Blacked Raw. The first two are awkward enough, but the latter two cater to even more singular tastes.

How trolls are quick to flee:

Indeed, the copyright troll’s success rate comes not from the Copyright Act, but from the law of large numbers. … These serial litigants drop cases at the first sign of resistance, preying on low-hanging fruit and staying one step ahead of any coordinated defense. They don’t seem to care about whether defendant actually did the infringing, or about developing the law. If a Billy Goat Gruff moves to confront a copyright troll in court, the troll cuts and runs back under its bridge. Perhaps the trolls fear a court disrupting their rinse-wash-and-repeat approach: file a deluge of complaints; ask the court to compel disclosure of the account holders; settle as many claims as possible; abandon the rest.

It’s pretty much extortion:

Armed with hundreds of cut-and-pasted complaints and boilerplate discovery motions, Strike 3 floods this courthouse (and others around the country) with lawsuits smacking of extortion. It treats this Court not as a citadel of justice, but as an ATM. Its feigned desire for legal process masks what it really seeks: for the Court to oversee a high-tech shakedown. This Court declines.

The court’s decision to deny discovery is anything but the rubber stamp approach so many judges in these kinds of cases over the past several years have been accused of employing.

Strike 3 Holdings v. Doe, 2018 WL 6027046 (D.D.C. November 16, 2018)

Web scraping case fails under Dastar

Plaintiff sued defendant claiming that defendant wrongfully scraped sales listings from plaintiff’s website and copied those listings on defendant’s own website. It brought the following claims:

  • Violation of the Copyright Act’s prohibitions against distributing false copyright management information (“CMI”) (17 U.S.C. §1202(a)), and removing or altering CMI (Id., §1202(b)); and
  • Violation of the Lanham Act for reverse passing off and false endorsement.

Defendant moved to dismiss for failure to state a claim upon which relief could be granted. The court granted the motion.

CMI claim

The court dismissed the claim asserting distribution of false CMI because plaintiff alleged that the false CMI was a blanket copyright notice found on defendant’s website’s terms of use, and not on the pages where the copied content was displayed.

It also dismissed plaintiff’s claim for removal of CMI because it found that the allegations concerning the CMI allegedly removed – a copyright notice found at the bottom of the pages of plaintiff’s website – covered the pages of the website itself, not the particular listings that were allegedly copied without the CMI. It held that:

To violate the DMCA, the false CMI must be “conveyed in connection” with the work. General copyright notices are not “conveyed” with the work, and thus do not violate the DMCA. [See GC2 Inc. v. Int’l Game Tech. PLC, 255 F. Supp. 3d 812, 821 (N.D. Ill. 2017)] (“Courts, however, have generally required more than a boilerplate terms of use notice near a copyrighted work in order to find a party liable for distributing false CMI”); Pers. Keepsakes, Inc. v. Personalizationmall.com, Inc., 2012 WL 414803, at *7 (N.D. Ill. Feb. 8, 2012) (“[A]s a matter of law, if a general copyright notice appears on an entirely different webpage than the work at issue, then that CMI is not ‘conveyed’ with the work and no claim will lie under the DMCA.”)

Lanham Act claim

On the Lanham Act claim, the court found that plaintiff failed to allege that it had a protectible mark that was being used in a manner that was likely to cause confusion among consumers.

The court also applied the 2003 Supreme Court case of Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) to find that plaintiff’s Lanham Act claim failed. In Dastar, the Supreme Court concluded that “false designation of origin” as it is used in the Lanham Act attaches to the producer of tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. In this case, the defendant created the final product (website listings), albeit using the plaintiff’s content (just like in Dastar). Because plaintiff was not the source of the product (the duplicated listings), it did not have a claim under the Lanham Act.

Alan Ross Machinery Corp. v. Machinio Corporation, 2018 WL 6018603 (N.D.Ill. November 16, 2018)

Suit under DMCA for concealing copyright management information failed because plaintiff did not properly allege defendants’ intent

Plaintiff sued defendants under the provision of the Digital Millennium Copyright Act (DMCA) (17 U.S.C. § 1202(a)) that, among other things, prohibits a person from knowingly and with the intent to induce, enable, facilitate, or conceal infringement, provide copyright management information that is false.

Defendants moved to dismiss for failure to state a claim. The district court granted the motion, and plaintiff sought review with the Second Circuit. On appeal, the court affirmed the dismissal.

It noted that in order to plead a violation of Section 1202(a), a plaintiff must plausibly allege that a defendant knowingly provided false copyright information and that the defendant did so with the intent to induce, enable, facilitate, or conceal an infringement. This is a double scienter requirement.

In this case, the court found that plaintiff’s DMCA claim merely alleged that one of the defendants was identified on a disputed work (a book) as its author, and that she was listed in the notice of copyright as its owner, which plaintiff alleges is false.

The court held that these facts did not amount to a plausible allegation that defendants knew that such copyright information was false, or that it even was false. Moreover, plaintiff had failed to adequately plead that defendants intended to conceal valid copyright management information.

Krechmer v. Tantaros, 2018 WL 4044048 (2nd Cir. August 24, 2018)

Court takes into consideration defendant’s privacy in BitTorrent copyright infringement case

Frequent copyright plaintiff Strike 3 Holdings filed a motion with the U.S. District Court for the District of Minnesota seeking an order allowing Strike 3 to send a subpoena to Comcast, to learn who owns the account used to allegedly infringe copyright. The Federal Rules of Civil Procedure created a bootstrapping problem or, as the court called it, a Catch-22, for Strike 3 – it was not able to confer with the unknown Doe defendant as required by Rule 26(f) because it could not identify the defendant, but it could not identify defendant without discovery from Comcast.

The court granted Strike 3’s motion for leave to take early discovery, finding that good cause existed for granting the request, and noting:

  • Strike 3 had stated an actionable claim for copyright infringement,
  • The discovery request was specific,
  • There were no alternative means to ascertain defendant’s name and address,
  • Strike 3 had to know defendant’s name and address in order to serve the summons and complaint, and
  • Defendant’s expectation of privacy in his or her name and address was outweighed by Strike 3’s right to use the judicial process to pursue a plausible claim of copyright infringement.

On the last point, the court observed that the privacy interest was outweighed especially given that the court could craft a limited protective order under Federal Rule of Civil Procedure 26(c) to protect an innocent ISP subscriber and to account for the sensitive and personal nature of the subject matter of the lawsuit.

Strike 3 Holdings, LLC v. Doe, 2018 WL 2278110 (D.Minn. May 18, 2018)

About 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.

Court allows Microsoft to unmask unknown Comcast users accused of infringement

A federal court in Washington state has given the green light for Microsoft to subpoena records from Comcast to discover the identity of the person or persons associated with an IP address used to activate thousands of unauthorized copies of Microsoft software.

Statue_of_Anonymus_(Budapest,_2013)

Generally, in federal court litigation, a party cannot serve discovery requests or subpoenas until after the plaintiff and defendant have conferred (in a Rule 26(f) conference). But when the plaintiff does not know the identity of the defendant, there is a bootstrapping problem – discovery needs to be taken to find out the defendant with whom to conduct the conference. In situations like this, the plaintiff seeking to unmask an unknown defendant will file its complaint against one or more “John Does,” then ask the court for leave to serve discovery prior to the Rule 26(f) conference.

That is what happened in this case. It is a common tactic used by parties legitimately seeking to enforce intellectual property, as well as parties that may be considered copyright trolls. See, e.g., this early bittorrent case from 2011.

Microsoft filed its complaint and also filed a motion for leave to take discovery prior to the Rule 26(f) conference. Finding that good cause existed for the early discovery, the court granted the motion.

It held that

(1) Microsoft had associated the John Doe Defendants with specific acts of activating unauthorized software using product keys that were known to have been stolen from Microsoft, and had been used more times than were authorized for the particular software,

(2) Microsoft had adequately described the steps it took in an effort to locate and identify the John Doe defendants, specifically by utilizing its “cyberforensics” technology to analyze product key activation data, identifying patterns and characteristics which indicate software piracy,

(3) Microsoft had pleaded the essential elements to state a claim for copyright and trademark infringement, and

(4) the information proposed to be sought through a subpoena appeared likely to lead to identifying information that would allow Microsoft to serve the defendants with the lawsuit.

Microsoft Corp. v. John Does 1-10, 2017 WL 4958047 (W.D. Wash., November 1, 2017)

Image courtesy Dmitrij Rodionov under Creative Commons Attribution-Share Alike 3.0 Unported license. Licensed granted hereby under same terms.

Website liable for statutory damages and attorney’s fees for copyright infringement

Plaintiff photojournalism company sued defendant retail website operator for copyright infringement arising from the publication on the site of two celebrity photographs. Plaintiff moved for summary judgment on its copyright infringement claim. The court granted the motion.

Infringement Claim

Defendant argued that the copyright registration – which was a compilation of photographs taken over a couple of months – did not cover the photographs in question, because the registration made no specific mention of the photos. But the court rejected this argument, finding that the registration certificate for the compilation was valid because (a) all the photographs were by the same photographer, (b) all the photographs were published in the same calendar year, and (c) all the photographs had the same copyright claimant. Defendant could not point to any specific evidence in the record to cast doubt on the validity of the registration.

The parties did not dispute that defendant’s employees copied and reposted the photographs. Accordingly, the court found that plaintiff had established the elements required for a copyright infringement claim.

But defendant argued that it had a license to reuse the photographs, based on the terms of the E! website from which it obtained the photos. The court easily rejected this argument, noting that the defendant had not provided a copy of that purported license agreement, nor come up with any other evidence to support the claim.

Statutory Damages and Attorney’s Fees

The court awarded $750 in statutory damages – the minimum amount that the Copyright Act authorizes. The court based this in part on looking at the actual licensing fees charged for the photographs. Plaintiffs had charged E! a license fee of $75 for use of the photos. Even trebling this amount would not bring the damage calculation within the statutory minimum. So the court raised it to the lowest threshold permitted under the act.

As for attorney’s fees, the court found it appropriate to award fees to promote the stated purposes of the Copyright Act. Specifically, shifting fees here, in the court’s view, served to encourage and reward innovators for their contributions in the march toward progress rather than burdening them with the costs of defending their protected works.

Fameflynet, Inc. v. The Shoshanna Collection, — F.Supp.3d —, 2017 WL 4402568 (S.D.N.Y. October 2, 2017)

Online platform’s EULA barred software developer from claiming copyright ownership

eulaDeveloper entered into an agreement with the TD Ameritrade platform that gave him access to the platform’s APIs so that he could develop his own analytical tools. He claimed that without his authorization, the platform incorporated his software routines into its own technology. Developer sued for copyright infringement.

The platform moved to dismiss the claim and the court granted the motion.

Developer had presented to the court a registration certificate as evidence that he owned the copyright in the software he created. Such a registration certificate serves as prima facie evidence of copyright ownership, and establishes a rebuttable presumption of such ownership.

In its argument to dismiss developer’s claims, the platform pointed to its agreement with developer that stated, among other things, that use of the services “[would] not confer any title, ownership interest, or any intellectual property rights to me.” It also expressly prohibited the developer from creating derivative works from the services. The platform looked to these provisions in the agreement to rebut the presumption that the developer owned the copyright in the tools. The court agreed.

Developer argued that the platform had actually encouraged – and thereby authorized – the development of tools such as the ones he had created. But the court observed that while such a claim is “possible,” the developer had failed to allege any facts to demonstrate that the claim is “plausible.” So in sum, the court credited the terms of the agreement, and took those terms to preclude the developer from owning the copyright in the software he had developed.  It should be noted that the court left open the option for plaintiff to re-plead. But that does little to mitigate the extent to which the court’s reasoning here as to how the agreement could limit a claim of copyright is questionable.

TD Ameritrade v. Matthews, 2017 WL 4812035 (D. Alaska, October 25, 2017)

[Post updated 27 Oct 2017 at 8:08 CST to address option to re-plead.]

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.

YouTubers get fair use win in copyright suit brought over reaction video

Plaintiff makes videos and posts them to YouTube. Defendants took snippets of one of plaintiff’s videos, interspersed those snippets with their own commentary about the content of those snippets, and posted that to their YouTube channel. Plaintiff sued for copyright infringement. Defendants moved for summary judgment, arguing they were entitled to the affirmative defense of fair use.

The court granted the defendants’ motion for summary judgment. It found that “[a]ny review of the defendants’ video leaves no doubt that it constitutes critical commentary of the [plaintiff’s] video.” It also found there is “no doubt that the [defendants’] video is decidedly not a market substitute for the plaintiff’s video.” Leaning on these elements – the first and fourth elements of the Copyright Act’s four-factor analysis – the court found in favor of defendants on their fair use defense.

Hosseinzadeh v. Klein, No. 16-CV-3081 (S.D.N.Y., August 23, 2017)

More coverage at TechCrunch.

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.

Toilet paper bearing Trump tweets a copyright problem?

This report from Fox News discusses toilet paper available via Amazon printed with Donald Trump tweets. It raises the question of whether the president would be able to stop the sale of this product and seek damages for copyright infringement. Assuming the tweets are printed without his permission, could he make a claim?

tp_tweets

There are a number of issues to consider here.

The first is the long-kicked-around question of whether tweets are copyrightable. In other words, do they contain enough and the kind of content to rise to the level of originality that copyright law requires? One would be hard pressed to argue that a tweet not comprised just of facts is outside copyright’s protection. Though only 140 characters, there is plenty of room for originality. If a tweet is not copyrightable, then neither would The Red Wheelbarrow.

The second issue is whether the tweets may not be subject to copyright because they are a work of the federal goverment. Section 105 of the Copyright Act says that “[c]opyright protection . . . is not available for any work of the United States Government.” This splits out into a couple of other issues. Are the tweets from when their author was president? And even if they are, would tweets from a personal account be a “work of the United States Government”?

The article gives us an answer to the first question, which postpones the opportunity to answer the second one. The tweets are from before he became president. So there does not appear to be much standing in the way of the Donald fighting these on copyright grounds if he were to so choose.

But not so fast. What about fair use? Obviously the nature of the product is a commentary on the content printed upon it.

What a crappy situation. Maybe Amazon will just flush this product from its site before we get there.

Instagram DMCA case over removal of copyright notice moves forward

Linking to the source will not keep you out of copyright trouble.

Defendant clothing company copied and cropped one of plaintiff photographer’s images, making plaintiff’s watermarked copyright notice no longer visible. Defendant posted the cropped version to Instagram and included a link to plaintiff’s Instagram post that contained the original image.

Plaintiff sued for copyright infringement and for unauthorized removal and/or alteration of copyright management information (“CMI”) under 17 U.S.C. 1202(b) (a portion of the Digital Millennium Copyright Act).

Defendant moved to dismiss the action. The court granted the motion as to copyright infringement, but denied the motion as to removal of CMI.

The court dismissed the copyright infringement claim because plaintiff only alleged that she had applied for registration of the copyright in the image but had not yet received the registration certificate. (We covered this issue in a previous post.)

But the court held that registration was not a requirement for the CMI claim under the DMCA. And the court also rejected defendant’s argument that the inclusion of a link to plaintiff’s work undermined any assertion on plaintiff’s part that defendant’s conduct was intentional. (The relevant section of the DMCA concerning CMI includes a requirement that the removal be done “intentionally”).

Gattoni v. Tibi, LLC, 2017 WL 2313882 (S.D.N.Y. May 25, 2017)

Image courtesy of Flickr user Igor Putina under this Creative Commons license. Image cropped.

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.