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Instagram’s terms of service gave ability to embed photo

Embedding Instagram photos on website not infringement
Be sure to follow @internetcases on Instagram. 

Plaintiff – a professional photographer – sued website Mashable and Mashable’s owner after the website used HTML Instagram provides to embed one of plaintiff’s photos on Mashable. Defendants moved to dismiss, claiming they had rights to embed the photo under Instagram’s terms of service. The court agreed and dismissed the copyright infringement claim. Embedding Instagram photos on the website was not infringement. 

Mashable embedded anyway 

Before the dispute began, Mashable had first tried getting a license from plaintiff to use one of her photographs is a story about female photographers. It offered plaintiff $50 for the rights, but plaintiff refused. A few days later, Mashable used Instagram’s embed code to display the image on Mashable anyway.  

Was this a server test question? 

The embed code on Mashable caused the image to appear when one would visit the Mashable page by pulling the image data off of the Instagram server. Other cases have referred to this and similar technologies as “inline linking”. Almost 13 years ago, in the case of Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), the Ninth Circuit indicated strongly that inline linking did not cause copyright infringement problems because  the process did not involve making a copy of the image, but instead just called it from the original server. From this notion came the “server test” articulated in that case.  

A few months before the Perfect 10 v. Amazon decision, a district court in Texas (in the case of Live Nation Motor Sports, Inc. v. Davis, 2006 WL 3616983 (N.D.Tex., December 11, 2006)) had stopped a website owner from pulling in audio data from another server and appearing to stream it from his website. 

And just a couple of years ago, another court in the same district as this case involving Instagram declined to adopt the Ninth Circuit’s “server test,” instead finding that embedding an image of Tom Brady in a tweet on a website was an unauthorized infringement of that plaintiff photographer’s right under the Copyright Act to display the photo. See Goldman v. Breitbart News Network, LLC, 302 F.Supp.3d 585 (S.D.N.Y. 2018). 

Embedding Instagram photos on website was not infringement because of license

Though the underlying conduct in this case was very similar to that in Goldman v. Breitbart, the court’s decision here did not even cite that opinion. And it did not need to because the legal basis on which it decided this case was different.  

In this case, the court held that when plaintiff signed up for Instagram, she granted Instagram the right to allow others (via sublicensing) to embed photos that plaintiff uploaded and made publicly available. Even though plaintiff never directly authorized Mashable to use her photo, Mashable was granted rights via Instagram to embed the photo, Instagram having gotten the ability to grant those rights to Mashable from plaintiff when she agreed to Instagram’s terms of use.  

The message for Instagram users – your photos may end up on websites 

The simple message for users of Instagram (and there are a lot of them) is to be aware that by uploading photos to Instagram and making them publicly available, you are authorizing Instagram to let others display those photos on third party websites. Posting to Instagram and making photos publicly viewable is, quite possibly, posting them to be viewed by a much wider audience than the Instagram community.  Under the rule of this case, 
embedding Instagram photos on a website is not infringement. 

Sinclair v. Ziff Davis, LLC 2020 WL 1847841 (S.D.N.Y., April 13, 2020) 

Finding out who infringed copyright – identifying infringers

Need information about finding out who infringed your copyright? This video may provide some guidance. 

Copyright owners of video and photos may find their works have been copied and posted somewhere else online and therefore need to take action for copyright infringement. But the first challenge may be to identify who the unknown defendant is. This video discusses (1) filing a copyright infringement case in federal court, (2) showing good cause for early discovery to identify the unknown alleged infringer, and (3) sending subpoenas.  Finding out who infringed copyright can be a difficult task. 

The federal courts have exclusive jurisdiction for copyright infringement cases. That means a state court will not be able to hear a copyright infringement matter. A copyright infringement case filed in state court will get dismissed because state courts cannot hear cases that are exclusively the subject of federal jurisdiction.

When a party has filed suit, it usually knows who the defendant is. But sometimes it is necessary to file suits against “John Doe” defendants. In the online copyright infringement context, the copyright owner will need to take early discovery. This requires persuading the federal judge that good cause exists for taking early discovery. To show good cause, a party will need to show that an actual person has infringed, that it has taken as many steps possible to unmask the anonymous copyright infringer, and that its copyright infringement case is strong enough to survive a motion for summary judgment. 

Once these things are shown, the court will allow the plaintiff to send subpoenas to the host of the infringing content and to the internet service providers associated with the IP address that uploaded the copyright infringing content. Then, if the plaintiff is successful in unmasking the unknown defendant, the copyright infringement case can actually begin .

More information: Identifying unknown online copyright infringers: court gives guidance

finding out who infringed copyright

Identifying unknown online copyright infringers: guidance

unmasking online copyright infringers

A recent case addressed the problem of identifying unknown online copyright infringers. Plaintiff sued some unknown “John Doe” defendants who infringed plaintiff’s copyrights. To keep the lawsuit moving forward, plaintiff needed to serve the complaint on the defendants. But this presented a challenge, since plaintiff did not know to whom it should deliver the documents. So plaintiff filed a motion with the court, asking for permission to send interrogatories and to take depositions that would help unmask the anonymous infringers. Plaintiffs sought to get information from parties including PayPal, Cloudflare and various domain name registrars. The court’s response provides guidance to parties seeking to learn the identities of unknown parties.

To identify unknown online copyright infringers: early discovery

The rules of procedure in federal court do not permit discovery requests until the parties have had an initial conference with each other. But they cannot have that conference if the defendant is unknown. So the plaintiff needs to send discovery requests earlier than what the rules generally allow. It needs the court’s permission to do so.

A court will not permit early discovery in every instance. But courts have made exceptions, permitting limited discovery after a plaintiff files the complaint to permit the plaintiff to learn the identifying facts necessary to permit service on the defendant. Courts allow these requests upon a showing of good cause.

What constitutes good cause for early discovery?

This court applied the three part test for good cause set out more than 20 years ago in the case of Columbia Ins. Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999). The party seeking early discovery should be able to:

  • Identify the missing party with sufficient specificity such that the court can determine that the defendant is a real person or entity who could be sued in federal court;
  • Identify all previous steps taken to locate the elusive defendant; and
  • Establish to the court’s satisfaction that the suit against defendant could withstand a motion to dismiss.

Early discovery was appropriate in this case

Under the first prong of the test, the court found that plaintiff identified the missing parties with as much clarity as possible. Plaintiff stated that those missing parties were persons or entities, and that those parties had been observed and documented as infringing on plaintiff’s copyrights. Thus, as real persons or entities, those Doe parties could be sued in federal court.

As for the second prong, the only information plaintiff had regarding the defendants was the existence of accounts relating to the operations of the defendants’ websites. Therefore, there were no other measures plaintiff could take to identify the defendants other than to obtain their identifying information from the parties from whom it was sought.

Finally, on the third prong, for identifying unknown copyright infingers, the court found that plaintiff had pled the required elements of direct and contributory copyright infringement. Plaintiff claimed (1) it owned and had registered the copyrighted work at issue in the case; (2) defendants knew of the infringing activity and were conscious of their infringement; and (3) defendants actively participated in this infringement by inducing, causing and contributing to the infringement of plaintiff’s copyrighted work. Since plaintiff had alleged each of these elements properly, this cause of action could withstand a motion to dismiss.

MG Premium Ltd. v. Does, 2020 WL 1675741 (W.D. Wash. April 6, 2020)

Related: 

Domain disputes under federal law can be inefficient

A recent case from a federal court in Kentucky shows why the Anticybersquatting Consumer Protection Act (15 U.S.C. 1125(d) – the “ACPA”) can be – compared to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) – a relatively inefficient way of resolving domain name disputes under federal law.  

domain disputes under federal law

Defendant was an infringer

Here is a quick rundown of the facts. Defendant owned a business directly competitive to plaintiff ServPro. Plaintiff had used its mark and trade dress since the 1960’s. Defendant set up a website using plaintiff’s color scheme, bought Google AdWords triggering ads showing plaintiff’s mark, and registered a domain name identical to plaintiff’s mark – servpro.click. These facts supported the court’s entry of summary judgment in plaintiff’s favor on the question of trademark infringement. But the ACPA claim got the  court got hung up because of some hard-to-believe facts the defendant put forward.  

What the ACPA requires

The ACPA requires a plaintiff to prove bad faith intent to profit from the disputed domain name. And it gives courts a list of nine things that a court can consider in determining this bad faith. In other words, this list is not the be-all and end-all guide for determining ACPA bad faith. Here are the nine things a court should consider in resolving domain name disputes under federal law: 

  • (I) the trademark or other intellectual property rights of the person, if any, in the domain name; 
  • (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; 
  • (III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; 
  • (IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; 
  • (V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; 
  • (VI) the person’s offer to transfer, sell, or otherwise assign the 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 the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; 
  • (VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct; 
  • (VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and 
  • (IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of [the Lanham Act]. 

The court’s decision on cybersquatting

The court found that factors I through IV and IX weighed in plaintiff’s favor. But the court found there to be a genuine issue as to factor V and denied summary judgment. It found that defendant had an intent to divert plaintiff’s customers. 

Defendant asserted he did not purchase the servpro.click domain name intending to divert customers from plaintiff for defendant’s gain. Instead, he alleged that he registered the domain name to collect information and perform analytical research for running Google AdWords. He also alleged that the website the domain name pointed to did not advertise that it was ServPro. And the contact information on the website pointed to his personal cellphone. He alleged that when answering calls made to that number, he identified himself as affiliated with his company and never identified himself as affiliated with plaintiff. 

The court probably had difficulty denying summary judgment 
in a situation where the facts alleged are so hard to believe. A court’s role at the summary judgment stage, however, is not to weigh the evidence, but merely to determine whether there is a factual issue for trial. The time for really ascertaining the truth of defendant’s assertions will come later.  

Was the ACPA too cumbersome for this case?

In any event, these flimsy arguments remaining alive far into expensive litigation underscores how domain disputes under federal law are more cumbersome . The marshaling of evidence, briefing and argument in federal court can easily rack up six-figures in attorney’s fees and costs. Even after that effort, the summary judgment standard provides little assurance a party arguing against thin facts will get relief. Had the parties resolved this dispute under the UDRP and not the ACPA, plaintiff’s arguments would have had more success.  

ServPro Intellectual Property, Inc. v. Blanton, 2020 WL 1666121 (W.D. Ky. April 3, 2020) 

Related:

Influencer agreements: what needs to be in them

If you are a social media influencer, or are a brand looking to engage an influencer, you may need to enter into an influencer agreement. Here are five key things that should be in the contract between the influencer and the brand: 

  • Obligations 
  • Payment 
  • Content ownership 
  • Publicity rights 
  • Endorsement guidelines compliance 

Obligations under the influencer agreement.

The main thing that a brand wants from an influencer is for the influencer to say certain things about the brand’s products, in a certain way, and at certain times. What kind of content? Photos? Video? Which platforms? What hashtags? When? How many posts? The agreement should spell all these things out.

Payment.

Influencers are compensated in a number of ways. In addition to getting free products, they may be paid a flat fee upfront or from time to time. And it’s also common too see a revenue share arrangement. That is, the influencer will get a certain percentage based on sales of the products she is endorsing. These may be tracked by a promo code. The contract should identify all these amounts and percentages, and the timing for payment.

So what about content ownership? 

The main work of an influencer is to generate content. This could be pictures posted to Instagram, tweets, or video posted to her story. All that content is covered by copyright. Unless the contract says otherwise, the influencer will own the copyright. If the brand wants to do more with that content outside of social media, that needs to be addressed in the influencer agreement.

And then there are rights of publicity. 

Individuals have the right to determine how their image and name are used for commercial purposes. If the brand is going to feature the influencer on the brand’s own platform, then there needs to be language that specifies the limits on that use. That’s key to an influencer who wants to control her personal brand and reputation. 

Finally, endorsement guidelines and the influencer agreement. 

The federal government wants to make sure the consuming public gets clear information about products. So there are guidelines that influencers have to follow. You have to know what these guidelines are to stay out of trouble. And the contract should address what happens if these guidelines aren’t followed.

See also: When is it okay to use social media to make fun of people?

About the author: Evan Brown is an attorney helping individuals and businesses with a wide variety of agreements involving social media, intellectual property and technology. Call him at (630) 362-7237 or send email to ebrown@internetcases.com. 

Copyright registration certificate was invalid because of inaccurate information provided to Copyright Office

Although the author of a work owns the copyright the moment that work is created, Section 411 of the Copyright Act (17 U.S.C. 411) provides that the copyright owner must register the copyright before the owner can bring suit for infringement. If there is no valid registration certificate, the lawsuit cannot move forward.  A copyright registration certificate that is invalid can cause problems. 

copyright registration certificate was invalid

In a recent case from the Ninth Circuit, the defendant challenged the validity of the plaintiff’s registration certificate, and the lower court dismissed the matter on summary judgment. Plaintiff sought review with the Ninth Circuit. On appeal, the court affirmed the summary judgment.  

The appellate court agreed with the district court that plaintiff’s certificate of registration was invalid because: 

  • There was no genuine dispute that plaintiff knew that it included inaccurate information in its copyright application. Plaintiff falsely represented that the copy of its website it submitted was not how it looked on the publication date listed in the application.
  • The Register of Copyrights told the court that it would have refused registration had it known about the inaccurate information.  

Because Plaintiff’s certificate of registration was invalid, plaintiff failed to satisfy the registration precondition under Section 411 to bring a copyright infringement claim. 

SellPoolSuppliesonline.com, LLC v. Ugly Pools Arizona, Inc., 2020 WL 1527774 (9th Cir. March 31, 2020) 

Related: 
http://blog.internetcases.com/2016/11/23/is-a-copyright-registration-required-before-filing-an-infringement-lawsuit/

Video: 3 trademark essentials for your business

Here are three key ideas for selecting and protecting your company’s trademark:

(1) choose a distinctive mark that is not descriptive,

(2) conduct clearance so that you will not infringe, and

(3) seek registration with the United States Patent and Trademark Office.

Malware detection software provider gets important victory allowing it to flag unwanted driver installer

Despite a recent Ninth Circuit decision denying immunity to malware detection software for targeting competitor’s software, court holds that Section 230 protected Malwarebytes from liability for designating software driver program as potentially unwanted program.

Plaintiff provided software that works in real time in the background of the operating system to optimize processing and locate and install missing and outdated software drivers. Defendant provided malware detection software designed to scan consumer’s computers and to report potentially unwanted programs. After defendant’s software categorized plaintiff’s sofware as a potentially unwanted program, plaintiff sued, putting forth a number of business torts, including business disparagement, tortious interference and common law unfair competition.

Defendant moved to dismiss under 47 U.S.C. 230(c)(2)(B), which provides that no provider of an interactive computer service shall be held liable on account of any action taken to enable or make available others the technical means to restrict access to material that the provider deems to be obscene, lewd, lascivious, filthy, excessively violent, harassing, or otherwise objectionable.

The court granted the motion to dismiss, holding that Malwarebytes was immune from suit under Section 230. It differentiated the case from the Ninth Circuit’s recent decision in Enigma Software Group USA, LLC v. Malwarebytes, Inc., 946 F.3d 1040 (9th Cir. 2019), in which the court held that Section 230 immunity did not protect Malwarebytes for designating a competitor’s anti-malware software as “otherwise objectionable”. In this case, the court found that plaintiff’s software did not make it a competitor to defendant. Since the parties were not direct competitors, the limitations on Section 230’s protection did not apply.

The case can be met with a bit of a sigh of relief to those who, along with Professor Goldman expressed concern that the Enigma case would make it more difficult for anti-malware providers to offer their services. Though Enigma did limit Section 230 protection for these vendors, this decision shows that Section 230 immunity in this space is not dead.  

Asurvio LP v. Malwarebytes, Inc., 2020 WL 1478345 (N.D. Cal. March 26, 2020)

Video: How to stop phishing using your company’s trademarks

COVID-19: Phishing is up since the beginning of the Coronavirus crisis began. Companies can file a straightforward action to stop fraudsters using domain names similar to the company’s trademark.

Related blog post: How companies can use their trademarks to combat COVID-19-related phishing

Video: How to avoid breaking a software or technology agreement

There are a number of things software providers can be doing right now to reduce problems with customers in the coming weeks and months. 

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