Tag Archives: infringement

Court sides with Apple in copyright dispute over photo in iPhone commercial

Plaintiff photographer took a photo that Apple used in an April 2010 TV commercial for the iPhone 3GS. The 30-second commercial showed the photo for about 5 seconds. Plaintiff sued for copyright infringement, claiming Apple did not have the proper license to use the photo. She sought to recover Apple’s “indirect profits” on iPhone sales attributed to the infringement. Apple moved for partial summary judgment on the issue of damages, arguing such damages were “impermissibly speculative.” The court granted the motion.

Apple made four arguments showing a lack of a causal nexus between the use of the photo and plaintiff’s claim for profits. First, Apple contended that plaintiff proffered no evidence to support her claim that the photo itself caused any sales. Second, Apple argued that the iPhone was “well established in the consumer marketplace” at the time of the commercial which made it impossible to ascribe iPhone 3GS sales to the use of a single commercial, let alone one image in a single commercial. Third, two additional commercials ran during the time period that the commercial ran, each featuring different applications that can be used on an iPhone. Fourth, overall sales of the iPhone decreased during the relevant time period, February 28, 2010 to May 29, 2010, which is the time during which the commercial aired and the month immediately preceding and following that period.

The court found that plaintiff proffered no evidence that the use of the photo caused any iPhone 3GS sales, nor that the commercial did itself. The photo was integrated into no more than five seconds of a 30–second commercial where numerous images and various product functions were displayed. There was no evidence showing that sales resulted from the mere use of the photo. The court noted that as a threshold matter, it was plaintiff’s burden to establish a causal connection to some portion of profits before Apple would have to carry the burden of apportioning profits that were not the result of infringement. The court found that plaintiff did not proffer any evidence directly related to causation or even a method for showing that the alleged infringement actually influenced customers.

It’s important to note that this decision does not mean Apple has gotten away with copyright infringement. The decision is on the measure of damages, not liability (which remains an open question). Moreover, this case deals just with the question of actual damages under the Copyright Act. Plaintiff may yet assert an entitlement to statutory damages, which could range anywhere from $750 to $150,000.

Thale v. Apple Inc., 2013 WL 3245170 (N.D.Cal. June 26, 2013)

[Updated 7/2/13 to add last paragraph.]

Ninth Circuit affirms that Righthaven had no standing to sue as a copyright owner

Righthaven LLC v. Hoehn, No. 22-16751 (9th Cir. May 9, 2013)

The copyright holder in certain newspaper articles granted to Righthaven the awkwardly-articulated rights “requisite to have Righthaven recognized as the copyright owner of the [articles] for purposes of Righthaven being able to claim ownership as well as the right to seek redress for past, present, and future infringements of the copyright . . . in and to the [articles].”

After the district court dismissed some of Righthaven’s cases for lack of standing, saying that Righthaven was not an owner of an “exclusive right” as required by the Copyright Act to maintain the suit, Righthaven sought review with the Ninth Circuit. On appeal, the court affirmed the lower court’s holding that Righthaven lacked standing.

The court found that the language used to grant rights to Righthaven did not in itself prove that Righthaven owned any exclusive rights. It held that the language in an assignment agreement purporting to transfer ownership is not conclusive. Instead, a court must consider the “substance of the transaction.” Since a separate agreement between Righthaven and the copyright holder placed limits on what Righthaven could do with any copyright assigned to it, Righthaven did not actually possess the required exclusive rights under the Copyright Act, and therefore lacked standing to sue.

Are courts wising up to BitTorrent copyright trolls?

BitTorrent copyright trolling continues despite Prenda Law’s self-implosion. But there is hope that courts are coming to their senses.

Earlier this week Judge Wright issued a Hulk smash order lambasting the tactics of notorious copyright troll Prenda Law and finding, among other things, that the firms’ attorneys’ “suffer from a form of moral turpitude unbecoming an officer of the court.”

Though Prenda Law’s copyright trolling days may be numbered, it is still too early to announce the death of BitTorrent copyright trolling. Copyright plaintiffs are still filing lawsuits against swarms of anonymous accused infringers, and courts are still allowing those plaintiffs to seek early discovery of John Does’ names.

But there is reason to believe that courts are recognizing the trolls’ disingenuous efforts to join scores of unknown defendants in a single action. Last week, a federal court in Ohio (in Voltage Pictures, LLC v. Does 1-43, 2013 WL 1874862) expressly recognized the concern that some production companies have been “misusing the subpoena powers of the court, seeking the identities of the Doe defendants solely to facilitate demand letters and coerce settlements, rather than ultimately serve process and litigate the claims.” Likewise, the court recognized that other BitTorrent plaintiffs have abused the joinder rules to avoid the payment of thousands of dollars in filing fees that would be required if the actions were brought separately.

So the court issued an ominous warning. Though it found that at this preliminary stage it was appropriate to join all 43 accused swarm participants in a single action, the court noted that “[s]hould [it] find that plaintiff has abused the process of joinder, the individual John Doe defendants may be entitled to — in addition to a severance — sanctions from plaintiff, under [the applicable rule or statute] or the Court’s inherent powers.” The court went on to warn that “[w]hile the Court will not automatically hold plaintiff responsible for the alleged abuses of others in its industry, it will not hesitate to impose sanctions where warranted.”

Though it has taken several years of abusive and extortion-like litigation brought by BitTorrent copyright trolls, we may be entering an era where courts will be more willing to require these trolls to show the courage of their convictions. No doubt we have Prenda Law and its possibly-unlawful tactics to thank mostly for this crackdown. Prenda had a good thing going (from its perspective, of course). Too bad it did not abide by the timeless maxim, “pigs get fed, hogs get slaughtered.”

If you critique SOPA, read the text. If you read the text, read it right.

Earlier this week Eriq Gardner speculated in a tweet that less than one tenth of one percent of folks have actually read the SOPA legislation. I bet he’s right. It’s good to read the statute. But what might be worse than not reading it is reading it wrongly and thereafter propagating misunderstanding.

One of the motifs that has permeated the SOPA discussion is this idea that evil (usually corporate) interests could shut down entire, innocent sites based on one piece of user generated content on that site that is, or links to, infringing material.

Some commentators, such as the usually astute Khan Academy in the video embedded below, have gone so far as to say that one little transgression by one user could bring down all of Facebook, YouTube, or Vimeo. (That discussion begins at about the 5:00 mark where the narrator purports to parse the language of Section 103 of SOPA.)

We are fortunate to have the means and motivation to rally around an issue like SOPA and make it a topic of worldwide discussion. But it turns unfortunate when some of the loudest criticism is based on misinformation. That’s happening now.

It is silly to think that one person could bring down Facebook and leave its almost a billion users in the dark. It is silly to think that Congress would enact legislation making that possible. Those thoughts are silly because they are not based on reality. One user could not cause Facebook to be shut down, and SOPA does provide content owners with a way to accomplish that.

If you take a close look at SOPA, (and of course you should) you see that this “one person taking down Facebook” conclusion is not supported by the language of the statute.

If a federal judge is convinced that a site is “dedicated to the theft of U.S. property,” then he or she can enter an injunction (according to the Federal Rules of Civil Procedure and all the case law attendant thereto) shutting down that site’s domain name.

The present misunderstanding comes from a reading of SOPA’s definition in Section 103 of what it means for a site to be “dedicated to the theft of U.S. property.” That definition is much narrower than what other commentators would have you believe. Among other things, the site has to be:

  • primarily designed or operated for the purpose of offering goods or services in a manner that engages in, enables, or facilitates infringement, circumvention or counterfeiting,
  • have only limited purpose or use other than offering goods or services in a manner that engages in, enables, or facilitates infringement, circumvention or counterfeiting, or
  • be marketed by its operator or another acting in concert with that operator for use in offering goods or services in a manner that engages in, enables, or facilitates infringement, circumvention or counterfeiting.

A less-than-careful reading leads one to think that the definition brings in any site that enables or facilitates infringement, circumvention or counterfeiting. Read the definition again. Is Facebook primarily designed to rip off US property? Is it used for only a little more (i.e., does it have a limited purpose) other than to enable or promote piracy? Does Mark Zuckerberg say that is what it is for? Because the answers to these questions are no, no and no, a federal judge would not conclude that Facebook is a site dedicated to the theft of U.S. property.

If that federal judge were to so conclude, then he would likely be smoking dope. And if that is the state of affairs, then our problem is not SOPA, but federal judges smoking dope.

The fervent opposition to SOPA leads one to be reminded, like David Newhoff was in this piece, of the “death panel” hyperbole that surrounded the healthcare debate. It might be the same part of the brain at work that caused all the irrationality in Vancouver after the Stanley Cup. I’m just sayin’.

Principled and reasonable debate is awesome. Misguided arguments waste everyone’s time.

No deposition of account holder allowed until he is named as defendant in BitTorrent copyright case

Hard Drive Productions, Inc. v. Doe, 2012 WL 90412 (E.D. Cal. July 11, 2012)

In a mass copyright infringement suit, plaintiff served a subpoena on an internet service provider and got the identifying information for the account holder suspected of trading a copy of a movie via BitTorrent. The account holder was uncooperative with plaintiff’s offers to settle, and denied downloading the file.

Instead of simply naming the identified account holder as a defendant in the case and proceeding with ordinary discovery, plaintiff asked the court for leave to take “expedited discovery,” namely, to depose the account holder to learn about:

  • the account holder’s involvement with the alleged distribution
  • his computers and network setup
  • his technical savvy
  • other users who may have had access to the computers or network

The court denied plaintiff’s request for leave to engage in the expedited discovery. It found that unlike other copyright cases in which anonymous infringers were identified, the efforts in this case “went far beyond seeking to identify a Doe defendant.” Instead, the court observed, it would be “a full-on deposition during which [the account holder] who plaintiff admits is likely not represented by counsel, may unwarily incriminate himself on the record before he has even been named as a defendant and served with process.”

Use of trademark in gripe site subdomain was not likely to cause confusion

Ascentive, LLC v. Opinion Corp., 2001 WL 6181452 (E.D.N.Y. December 13, 2011)

Plaintiffs sued gripe site pissedconsumer.com for trademark infringement and other forms of unfair competition. The court denied plaintiffs’ motion for preliminary injunction. It found, among other things, that defendants’ use of plaintiffs’ trademarks as subdomains (e.g., ascentive.pissedconsumer.com) was not likely to cause confusion.

The court looked to other cases where gripe site operators chose negative words to use in conjunction with the company being criticized. Over the years, gripe site operators have commonly chosen to add the word “sucks” to the target brand. For example, in Taubman Co. v. Webfeats, 319 F.3d 770 (6th Cir. 2003), the court held there was no trademark violation by the site taubmansucks.com.

Other “suck” parts of the URL have risen above the trademark infringement fray. A case from over a decade ago found that the web address compupix.com/ballysucks would not create a likelihood of confusion because no reasonable visitor to the site would assume it to come from the same source or think it to be affiliated with, connected with, or sponsored by Bally’s. Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998).

And it’s not just that these brands purport to suck. In Taylor Building Corp. v. Benfield, 507 F.Supp.2d 832 (S.D. Ohio 2007), the court found that taylorhomesripoff.com, used in connection with a forum for criticizing plaintiff, did not create any likelihood of confusion.

In this case, the notion of being “pissed” joins a lexicon of permissible gripe site nomenclature (depending on the circumstances, of course). So says the court: “Like the word ‘sucks,’ the word ‘pissed’ has entered the vernacular as a word instinct with criticism and negativity. Thus, no reasonable visitor to the [offending pages] would assume the sites to be affiliated with [plaintiffs], and PissedConsumer’s use of plaintiffs’ marks in the various domain names at issue is not likely to cause confusion as to source.”

Aside: Good lawyering by my friend Ron Coleman for the defendants in this case.

Video: my appearance on the news talking about isanyoneup.com

Last night I appeared in a piece that aired on the 9 o’clock news here in Chicago, talking about the legal issues surrounding isanyoneup.com. (That site is definitely NSFW and I’m not linking to it because it doesn’t deserve the page rank help.) The site presents some interesting legal questions, like whether and to what extent it is shielded by Section 230 of the Communications Decency Act for the harm that arises from the content it publishes (I don’t think it is shielded completely). The site also engages in some pretty blatant copyright infringement, and does not enjoy safe harbor protection under the Digital Millennium Copyright Act.

Here’s the video:

Customer reviews on social media provide important evidence in trademark dispute

Chipotle Mexican Grill, Inc. v. Chipotles Grill of Jonesboro, Inc., 2011 WL 2292357 (E.D. Ark. June 9, 2011)

The awesome burrito place Chipotle sued another restaurant that called itself Chipotles for trademark infringement. Plaintiff sought a preliminary injunction. The court granted the motion.

One of the most important factors in the court’s decision to grant injunctive relief was the plaintiff’s showing that it will likely succeed on the merits of the case. In a trademark infringement action, that analysis takes the form of the likelihood of confusion analysis.

Among the factors that a court should consider in determining whether there is a likelihood of confusion is whether there has been any actual confusion among members of the consuming public. In this case, the court found that the evidence plaintiff submitted of actual confusion was “substantial.”

In addition to a number of emails that customers had sent to plaintiff, the court looked to a couple of customer review sites — urbanspoon.com and Yahoo’s associatedcontent.com — each of which contained customer reviews that erroneously linked plaintiff and defendant. The court found this to constitute actual confusion, which could not be remedied even through reasonable care on the part of the consumers.

The case gives a good example of how companies (and their competitors) should be aware of how their brands appear in social media. Evidence of actual confusion is a powerful tool for a trademark plaintiff (and a potentially damning one for a trademark defendant). Smart companies will ensure they remain aware of how their marks and overall brand identity are being put forth, even off the beaten path on the web.

Evan Brown is a Chicago-based attorney practicing technology and intellectual property law. Send email to ebrown@internetcases.com, call (630) 362-7237, or follow on Twitter at @internetcases.

More subpoenas on the way to identify John Doe BitTorrent users in copyright cases

First Time Videos v. Does 1-37, 2011 WL 1431619 (N.D. California, April 14, 2011)

Hard Drive Productions v. Does 1-118, 2011 WL 1431612 (N.D. California, April 14, 2011)

There have been a couple of new cases filed in federal court in California alleging that unknown BitTorrent users committed copyright infringement and engaged in civil conspiracy by trading porn files online. [Read about some earlier, ongoing cases of this type here and here]. The court has issued orders that move the process of uncovering the identities of the John Doe defendant BitTorrent users.

Generally a plaintiff cannot start the discovery process in a case until it has had a “Rule 26(f)” conference with the defendant. But when the defendants are anonymous (as they are in these BitTorrent cases — they’re known only by IP address), the plaintiff has a bit of a problem. It needs discovery to find out the names of the defendants, but it cannot take discovery before the Rule 26(f) conference. [More on this]

So in cases like this, a plaintiff will ask the court to allow the early discovery to be had. Courts grant those motions allowing early discovery when good cause has been shown.

In this case, the court allowed the discovery because the following four criteria had been met:

(1) The plaintiffs had identified the Doe defendants with sufficient specificity that the court could determine that the defendants are real people who can be sued in federal court. On this point, the court credited the list of IP addresses associated with each of the unknown defendants.

(2) The plaintiffs recounted the steps taken to locate and identify the defendants. Again, the court looked to the fact that the defendants were known only by IP addresses. The names of the defendants could not be ascertained from the information available.

(3) The plaintiffs demonstrated that the action could withstand a motion to dismiss. In some cases this is a tough hurdle to get over. But in copyright cases the threshold can be met relatively easily — simply alleging ownership of a copyright and unlawful copying satisfies this element.

(4) The plaintiffs proved that the discovery was likely to lead to identifying information that will permit service of process. Getting the subscriber information from the ISPs would allow names to be associated with the IP addresses, for further action to be taken.

(The above 4-factor test is drawn from Columbia Ins. Co. v. seescandy. com, 185 F.R.D. 573, 578–80 (N.D.Cal.1999).)

So ISPs across the country will be getting peppered with more subpoenas, and sending out letters to their John Doe subscribers, giving deadlines to move to quash the subpoenas. More mad scramble to protect identities is on its way.

Court leaves thousands of BitTorrent copyright infringement defendants joined in single action

Call of the Wild Movie v. Does 1 – 1,062 — F.Supp.2d —, 2011 WL 996786 (D.D.C. March 22, 2011)

One of the craziest things about the copyright infringement lawsuits that have been brought against BitTorrent users accused of trading movies over the internet is the vast number of John Doe defendants that are usually lumped into one case. After the plaintiff copyright owners file a complaint for infringement — sometimes against thousands of anonymous defendants — they ask the court for leave to take expedited discovery. Then the movie companies serve subpoenas on the John Does’ internet service providers, asking the ISPs to disclose the identities of their customers associated with particular IP addresses.

Prosecuting a case against thousands of copyright infringement defendants is an enormous task, both for the plaintiffs’ attorneys as well as the ISPs who must respond to the subpoenas. Having so many defendants risks making the case unmanageable. So one may question whether it is appropriate under the Federal Rules of Civil Procedure to have so many unknown defendants all in the same case. In the nomenclature of civil litigation, the question is whether the joinder of all the defendants in one action is appropriate.

In three of the BitTorrent copyright cases pending in federal court in Washington DC brought by the US Copyright Group on behalf of a handful of independent film makers, groups like the Electronic Frontier Foundation, the ACLU and others argued improper joinder. These organizations filed amicus briefs in the cases of Call of the Wild Movie v. Does 1 – 1,062, Maverick Entertainment v. Does 1 – 4,350, and Donkeyball Movie v. Does 1 – 171, arguing that joining all the defendants in one action violated Rule 20 of the Federal Rules of Civil Procedure. The court rejected these arguments, finding that joinder was proper, at least in such early stages of the litigation where the defendants had not yet been identified.

The court considered three factors when answering the question of proper joinder: (1) whether the claims arose from the same transaction or occurrence or series of transactions or occurrences, (2) whether the legal and factual questions are common to all defendants, (3) and whether joinder would cause prejudice to any party or needless delay.

Same transaction or occurrence

The court observed that claims against joined parties must be “logically related,” and that this is a flexible test, with courts seeking the broadest possible scope of action. The court held that the claims against the BitTorrent users were logically related, based on plaintiffs’ allegations that the BitTorrent protocol makes every downloader of a file also an uploader, and accordingly, every user who has a copy of the infringing file on the network must necessarily be a source of download for that infringing file. This is an interesting finding, in that the strength of plaintiffs’ allegations were based on how BitTorrent works.

Common legal and factual questions

As for this second factor, the court found that the legal and factual questions were common because the parties would be litigating the same copyright claims, and all of the claims related to the use of BitTorrent.

Prejudice or needless delay

The court said some intriguing things about the interests of the parties in making its findings on this factor. For one, it said that leaving all the defendants joined in the same action would benefit them all, in that they would be able to see the defenses that other defendants were making. The court also expressed concern in favor of the efficiencies afforded the plaintiffs in filing these mass lawsuits. The plaintiff movie studios have been criticized for filing suit against large numbers of defendants in one action rather than separate suits against each defendant (and thereby having to pay only one filing fee to start the action versus several thousand filing fees). The court saw this question squarely in favor of plaintiff. It found that forcing plaintiffs to administer multiple actions, and having to pay the filing fees in all those actions “would certainly not be in the ‘interests of convenience and judicial economy,’ or ‘secure the just, speedy and inexpensive determination of the action.’”