Copyright

Tarantino v. Gawker Media, LLC

Date: 

01/27/2014

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Gawker Media, LLC; Gawker Media Group, Inc; Gawker Entertainment, LLC; Doe 1 aka AnonFiles.com; Does 2 through 10

Type of Party: 

Individual

Type of Party: 

Individual
Organization
Media Company

Court Type: 

Federal

Court Name: 

United States District Court for the Central District of California, Western Division

Case Number: 

2:14-cv-00603

Legal Counsel: 

Jean-Paul Jassy; Robert Penchina; Thomas Curley; Kevin L. Vick (for the Gawker defendants)

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

Tarantino, a multiple Oscar winning and nominated writer and director, is the writer and owner of a screenplay entitled The Hateful Eight. The script was leaked by unknown persons. On January 22, 2014, the website Gawker.com published an article about the leak and Tarantino's reaction, and solicited readers to provide Gawker with a copy of the script. The following day, Gawker.com carried an article on its website with a hyperlink to a website where the document appeared.

Tarantino filed a complaint in the U.S. District Court for the Central District of California against Gawker Media, LLC, Gawker Media Group, Inc., and Gawker Entertainment, LLC (collectively, "Gawker") and Does 1-10, asserting the following claims:

  1. Copyright Infringement [17 U.S.C. § 101 et. Seq.] (against Does 1-10)
  2. Contributory Copyright Infringement [17 U.S.C. § 101 et. Seq.] (against defendants Gawker and Does 2-10)

The complaint alleges that Doe 1, also named as "AnonFiles.com," provided a full copy of the screenplay for download, which copy was either uploaded by Gawker or uploaded by another Doe defendant with Gawker's encouragement, and that other Does committed direct infringement by accessing the copy. The complaint further alleges that Doe 1 failed to respond timely or effectively to a DMCA takedown notice. The contributory infringement claim against Gawker is based on Gawker's providing a link to AnonFiles.com.

Gawker filed for a motion to dismiss for failure to state a claim upon which relief could be granted. Gawker argued that contributory infringement could not exist in the absence of direct infringement, and that merely accessing the script by clicking on the link provided by Gawker was not copyright infringement. Moreover, Gawker asserted merely encouraging others to read - but not copy, distribute, or otherwise use - the script on another site was not encouragement of copyright infringement. Finally, Gawker argued that publishing links to extant copies of Tarantino's work in the context of a news report was a non-infringing fair use pursuant to 17 U.S.C. § 107. 

Tarantino, in his opposition to Gawker's motion, argued that the complaint's allegations that third parties accessed the screenplay via Gawker's link were sufficient to support a claim of direct infringement to support a claim of contributory infringement against Gawker. Because the screenplay was provided by Doe 1 in PDF format, Tarantino argued, it could not be viewed unless a complete infringing copy was downloaded to the user's computer. Tarantino further argued that Gawker's fair use argument was premature as asserting an affirmative defense, but went on to argue that Gawker's use was not fair because: (1) the primary purpose of the infringing use was commercial, not news reporting; (2) the use was not transformative; (3) the screenplay was unpublished; (4) the screenplay was a creative work, (5) the entire screenplay was made available; and (6) the disclosure of the screenplay undermined the market for the work.

In a subsequent reply brief, Gawker argued (among other things) that the format in which the screenplay was provided was neither relevant nor pleaded in the complaint, and that any allegations that Gawker was responsible for Doe 1's posting of the screenplay were purely speculative.

On April 22, 2014, the court granted Gawker's motion to dismiss, holding that Tarantino had failed to allege a claim of contributory infringement against Gawker because "nowhere in ... the Complaint does Plaintiff allege a single act of direct infringement committed by any member of the general public that would support Plaintiff's claim for contributory infringement. Instead, Plaintiff merely speculates that some direct infringement must have taken place." The court did not address Gawker's fair use arguments, finding that the "arguments, albeit persuasive and potentially dispositive, are premature." The court nevertheless granted Tarantino leave to amend the complaint to attempt to amend the defects in the claim against Gawker.

Tarantino filed a First Amended Complaint on May 1, 2014, dropping the Doe defendants and asserting claims solely against Gawker Media, LLC, for direct and contributory copyright infringement. The new complaint added allegations that Gawker itself downloaded an illegal copy of the screenplay and disseminated portions of the screenplay to others. On May 7, 2014, before Gawker was due to respond, Tarantino voluntarily dismissed the new complaint without prejudice, ending the case.

Subject Area: 

Jurisdiction: 

Blurred Boundaries: When Copyright and FOIA Collide

Technology has given citizens the ability to interact with government information in a way never before possible. Some exploit this data for commercial gain; others use new analysis techniques to uncover layers of meaning previously unrecognized; still others collate and publish government records to simplify access for everyone else. But what happens when there is an assertion that vital government records are subject to copyright restrictions?

Subject Area: 

Jurisdiction: 

Instagram: Uncharted Territory for Courts and Journalists

As a Los Angeles Superior Court prepares to break new ground concerning defamation on Instagram, journalists look towards the popular smart phone app as an alternative platform from which they can reach new audiences.

Jurisdiction: 

Subject Area: 

Content Type: 

An Increase in Infringement or the Promotion of Censorship? The Growing Tension of VPN Use

In the days of unwarranted government surveillance and elaborate data collection, people increasingly rely on anonymizing services to keep their online activities private, such as proxy servers, encrypted cloud storage, and virtual private networks. Virtual private networks, or VPNs, route online communications through a secure and encrypted private network to a remote server (sometimes in a jurisdiction with greater protection for freedom of speech or weaker law enforcement).

Subject Area: 

Jurisdiction: 

Small Justice LLC et al. v. Xcentric Ventures LLC

Date: 

07/16/2013

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Xcentric Ventures LLC

Type of Party: 

Individual
Organization

Type of Party: 

Organization

Court Type: 

Federal

Court Name: 

United States District Court for the District of Massachusetts

Case Number: 

1:13-CV-11701

Publication Medium: 

Website

Relevant Documents: 

Status: 

Pending

Disposition: 

Lawsuit Filed

Description: 

This case arose from the judicial transfer of the copyright in a report entitled "Complaint Review: Richard A. Goren" ("the Report") that was posted on consumer reporting website Ripoff Report on January 31, 2012. The copyright transfer was ordered by a justice of the Massachusetts Superior Court in Goren v. Doe.

On July 16, 2013, Goren and Small Justice LLC, a separate entity alleged to have an interest in the copyright of the Report, filed a complaint in the U.S. District Court for the District of Massachusetts against Xcentric Ventures, the owner and operator of Ripoff Report, for copyright infringement. The complaint claimed that after the state court transferred copyright ownership to Goren on May 8, 2013, he served Xcentric Ventures on May 14, 2013, with a demand that the defendant cease infringing on his copyright and remove the Report. The complaint alleged that Goren made the same demand on June 25, 2013, and that on June 27, 2013, Ripoff Report -- which has a strict no-removal policy -- notified Goren of its refusal to remove the Report.

The complaint stated that per a preliminary injunction issued by the state court, Google acquiesced to Goren's request to remove the URLs containing the content specified in the injunction, which appeared in response to searches for "Richard Goren attorney" and "Richard Goren fraud." The plaintiffs alleged that after the removal, however, the Report was re-indexed with different dates from the original and appeared again on a Google search. They alleged that these acts of infringement were willful and intentional and that, unless enjoined, the conduct would continue to cause both plaintiffs "great and irreparable injury that [could not] fully be compensated or measured in money." The plaintiffs sought injunctive relief, statutory and actual damages, and attorney's fees, as well as a jury trial.

Plaintiffs filed a First Amended Complaint on  September 2, 2013, adding "Christian DuPont dba Arabianights-Boston Massachusetts" - alleged to be the creator of the original Ripoff Report entry at issue - as a plaintiff. The new complaint also added three new claims against Xcentric: libel, tortious interference, and unfair and deceptive acts under Massachusetts General Laws chapter 93A. The last claim involved allegations that Xcentric operated a scheme where they refused to remove damaging content while offering those affected an opportunity to pay for "arbitration services" to restore their reputations.

Xcentric moved to dismiss the First Amended Complaint on  September 16, 2013, arguing among other things that: (1) the new claims were barred by Section 230 of the Communications Decency Act because they were based on content created by a third party; and (2) Goren lacked any ownership of the copyrights because  Xcentric owned those copyrights itself under the original author's earlier agreement to the Ripoff Report terms of service, and/or because the state court judge's purported transfer of copyrights to Goren was invalid under the Copyright Act as an involuntary transfer.

The plaintiffs opposed the motion to dismiss, arguing that Section 230 did not apply to Xcentric's content because Xcentric claimed to own the content at issue and affirmatively promoted it.  It further argued that Xcentric's arbitration scheme for damaging content was separately actionable as an unfair trade practice. With respect to copyright standing, the plaintiffs claimed that the alleged transfer of rights to Xcentric was invalid as a matter of contract, and that the transfer of rights by the state court judge was the result of the original author's voluntary decision not to defend against the state court action.  The plaintiffs further sought partial judgment on the pleadings that Xcentric was not protected by Section 230 and could not prove that it had received a transfer of the copyrights at issue.

On March 24, 2014, the district court ruled on the pending motions, as follows: (1) granting the motion to dismiss (and denying plaintiffs' motion) as to the libel, tortious interference, and Chapter 93A claims to the extent they were based on publication of third-party content, finding that these claims were barred by Section 230 regardless of whether Xcentric owned or promoted the content; (2) denying the motion to dismiss as to the Chapter 93A claim to the extent that it was premised on the offering of arbitration services; and (3) denying both Xcentric's motion to dismiss and plaintiffs' motion for judgment on the pleadings as to the copyright issues, finding that the state of copyright ownership could not be determined on the current state of the record. The court did not reach the question of the validity of the state court's purported transfer of the copyright to Goren.

 

Content Type: 

Jurisdiction: 

Subject Area: 

Goren v. Doe

Date: 

11/09/2012

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

John Doe d/b/a Arabianights-Boston, Massachusetts; Steven DuPont a/k/a Steven Christian DuPont

Type of Party: 

Individual

Type of Party: 

Individual

Court Type: 

State

Court Name: 

Superior Court for Suffolk County, Massachusetts

Case Number: 

SUCV2012-04121

Legal Counsel: 

(defendants defaulted without appearance)

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Default Judgment
Injunction Issued

Description: 

On November 9, 2012, attorney Richard A. Goren filed a complaint in the Superior Court for Suffolk County against John Doe d/b/a Arabianights-Boston, Massachusetts, and Steven DuPont a/k/a Steven Christian DuPont.

According to the complaint, on January 31, 2012, defendant Doe filed a report entitled "Complaint Review: Richard A. Goren" on the consumer reporting website Ripoff Report. Among other things, the report asserted that "Psycho-Richard Goren" has problems with addiction; commits perjury and fraud; abuses the law; and has a history of child abuse, domestic violence, and bisexuality ("the Report"). The complaint further alleged that an anonymous reply to the Report was posted stating that Steven Christian DuPont was "defaming another person," after which DuPont, under an alias, responded that he was not "guilty of any crimes or 'schemes'" and that the anonymous poster was guilty of many crimes. The complaint stated that Goren had previously represented a plaintiff in a lawsuit filed against DuPont, and that "[u]pon information and belief DuPont is Doe."

The complaint listed three causes of action: libel, equitable and injunctive relief, and intentional interference with prospective contractual relations. Goren claimed that the Report constituted libel per se and was susceptible only of a defamatory meaning, alleging that the defamatory per se publication was first on a Google search for Goren and that he had suffered a loss of income, damage to his reputation, and emotional distress as a direct result of the publication. Under the claim of equitable and injunctive relief, the complaint alleged that the continued republication of the Report on Google, Bing, and other online search engines presented a continuing threat of irreparable harm to Goren, warranting entry of a temporary restraining order, a preliminary injunction, and a permanent injunction enjoining Doe from continuing to publish the Report. The complaint then alleged that Doe's actions constituted intentional interference with Goren's prospective contractual relations and that Goren had suffered damages as a direct and proximate result of this interference.

On November 26, 2012, a justice of the Superior Court entered a preliminary injunction against publishing or republishing the Report. The court held the Report presented a "continuing threat of irreparable harm" to Goren that could not be remedied by an award of damages.

On March 20, 2013, the court entered a default judgment against the defendants and issued a permanent injunction. The judgment noted that Goren had dismissed his claims for libel and intentional interference with prospective contractual relations, leaving only a claim for equitable and injunctive relief. The court permanently enjoined the defendants -- now referred to as Defendant John Doe d/b/a Arabianights-Boston, Massachusetts, n/k/a Christian DuPont, and Defendant Steven DuPont a/k/a Steven Christian DuPont -- from publishing or republishing the Report. The court ordered Doe to "take any and all necessary steps and action necessary or appropriate" to remove, retract, and/or delete the Report from the website. Further, the court appointed Goren as "attorney-in-fact, coupled with an interest, with the power of substitution, in the name and place of" Doe to take all necessary steps to remove the Report.

On March 25, 2013, Goren filed a motion to amend the default judgment and permanent injunction. The motion proposed that the court add an assignment and transfer of the copyright of the Report to Goren "[t]o achieve the purpose of the Default Judgment."

On May 8, 2013, the court entered a judgment and amended permanent injunction. The judgment added to the previous judgment and injunction, explicitly stating that "all rights in and to ownership of the copyright by the author [Doe] of the [Report] is hereby transferred to [Goren], meaning and intending to convey, transfer and assign by this Order and Judgment the full and exclusive ownership of copyright." The order also added that Goren had the power of attorney in his own name, as well as Doe's, to take any action necessary for the Report's removal.

The copyright transfer from this case resulted in a copyright infringement case, Small Justice LLC et al. v. Xcentric Ventures LLC.

Content Type: 

Jurisdiction: 

Subject Area: 

Monsarrat v. Filcman

Date: 

04/30/2013

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Deb Filcman, Ron Newman, Does 1-100

Type of Party: 

Individual

Type of Party: 

Individual

Court Type: 

State

Court Name: 

Middlesex Superior Court Department of the Trial Court of Massachusetts

Case Number: 

MICV2013-00399-C

Legal Counsel: 

Dan Booth (Booth Sweet LLP), Zachary C. Kleinsasser, Michael J. Grygiel (Greenberg Traurig, LLP)

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

On February 4, 2013, Jonathan Graves Monsarrat filed a complaint in the Superior Court Department of Middlesex County, Massachusetts against defendants Deb Filcman, Ron Newman, and John and Jane Does 1-100. The complaint alleges that the defendants posted defamatory comments about the plaintiff on the website www.LiveJournal.com beginning on February 4, 2010, which related a linked-to blog post by defendant Filcman on the Somerville Journal's "Wicked Local" webpage. Defendant Newman administers the "davis square" forum on the site on which Monsarrat alleges many of the defamatory responses were posted. As LiveJournal is an online forum, many users are known only by aliases; Monsarrat asserted claims against these commentators by naming them as "John and Jane Does 1 through 100" until their identities could be ascertained through the discovery process.

The defendants' posts concerned Monsarrat's arrest on January 29, 2010, in connection with charged of keeping a noisy and disorderly home and serving alcohol to persons under 21. While these charges were ultimately dismissed against Monsarrat, the plaintiff alleges that the defendants' comments ruined his "reputation, regard, esteem and goodwill." The complaint cites to many of the comments posters made to the "davis square" forum, alleging that these posts are particularly defamatory as they affect him and his businesses locally.

Monsarrat's complaint included claims for: defamation; a violation of Massachusetts' Unfair and Deceptive Trade Practices Act, Mass. Gen. L. ch. 93A; business disparagement; common law copyright infringement (based on photographs taken from Monsarrat's website); intentional infliction of emotional distress; and civil conspiracy.

The complaint alleges that the defendants "intentionally planned and orchestrated this cybersmear attach" [sic] and that defendants "conspired together" to commit the acts which injured Monsarrat. Monsarrat's complaint claims damages amounting to over $500,000 from medical expenses, lost wages (documented and anticipated), and reputational damages.

On April 30, 2013, Monsarrat filed an amended complaint. The amended complaint included all of the initial allegations, and added that under Monsarrat's fourth claim for relief - common law copyright infringement - the defendants' misappropriation was not "for fair use or satire purposes" but instead "in furtherance of their collective willful, wanton and tortious conduct." The amended complaint also included additional damage demands in the form of "costs and disbursements plus interest from the date of commencement" of the action.

On May 14, 2013, defendant Newman's attorney sent a letter in response to Monsarrat's complaint. The answer described Newman's discussion on the LiveJournal forum as "promoting respectful, lively conversation without imposing ham-fisted restraint on the free speech of the community." The letter addressed each of the complaint's assertions in turn, including asserting that:

  • no statements attributed to Newman could sustain a defamation claim;
  • the complaint did not state a Chapter 93A claim against any defendant, and Monsarrat had failed to send a pre-suit demand letter to Newman as required under Chapter 93A;
  • on the business disparagement claim, Monsarrat's complaint did not point to any "actionably false statements" by the defendants, and did not identify any of the plaintiff's products that were disparaged;
  •  "there is no such thing" as common-law copyright infringement;
  • Monsarrat's infliction of emotional distress claim would fail as the complaint does not show that the defendant acted without privilege;
  • on the conspiracy claim, the complaint does not "identify any statement or action by which Mr. Newman could be inferred to have agreed to injure the plaintiff"; and
  • punitive damages for defamation have not been permitted in Massachusetts since 1974.

The May 14th letter claims that Monsarrat's claims are wholly without merit and were brought in bad faith, and demands that Monsarrat's attorney file a notice voluntarily dismissing the complaint with prejudice or else face sanctions.

On May 28, 2013, defendant Filcman's attorney sent a letter in response to Monsarrat's complaint. The letter contends that Filcman's article on Monsarrat's January 2010 arrest is protected under the First Amendment and adds that the plaintiff's allegation of a "wide-spread cyber-smear campaign" is without basis "in fact or law" and "frivolous, abusive, and harassing." In addressing the defamation claims, the letter points to Massachusetts' fair report privilege that provides a safe harbor on fair and accurate reports. The letter also asserts that there is "no such thing" as a common law copyright claim, and under the federal Copyright Act, the plaintiff's photograph was not federally registered and his claim would therefore fail.

On June 7, 2013, Monsarrat's attorney filed a voluntary dismissal with prejudice (a copy of the official text is posted on LiveJournal). No settlement was reported on the docket of the court and no payments were made.

Content Type: 

Jurisdiction: 

Subject Area: 

Craigslist v. 3taps

Date: 

07/20/2012

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

3taps, PadMapper

Type of Party: 

Organization

Type of Party: 

Organization

Court Type: 

Federal

Court Name: 

United States District Court for the Northern District of California: San Francisco Division

Case Number: 

3:12-cv-03816-CRB

Legal Counsel: 

3taps: Allen Ruby (Skadden, Arps, Slate, Meagher & Flom LLP), Christopher J. Bakes (Locke Lord LLP); PadMapper: Venkat Balasubramani (Focal PLLC)

Publication Medium: 

Website

Relevant Documents: 

Status: 

Pending

Disposition: 

Dismissed (partial)
Lawsuit Filed

Description: 

Craigslist is a classified advertisements website with one section of its site dedicated to housing. With a simple design that has not been significantly updated since its creation, craiglist allows users to post (among other things) apartment rental listings. In order to make the material on craigslist more user-friendly, PadMapper takes the information from craigslist's apartment listings and plots these on an easily searchable map, adding search filters. 3taps is a startup committed to collecting and distributing public data, which partnered with PadMapper to assist with its access to the apartment information on craigslist.

In response to their use of craigslist's listings, craigslist sent PadMapper a cease and desist letter. After PadMapper refused to comply, craigslist filed a complaint in the U.S. District Court for the Northern District of California on July 20, 2012, against PadMapper and 3Taps. In its complaint, craigslist asserted ten claims for relief, including contract (asserting breaches of craigslist's terms of use), copyright, and trademark/unfair competition claims.

3taps answered the complaint on September 24 and filed a counterclaim, asserting claims of antitrust violations, unfair competition, and interference with economic advantage. Overall, 3taps' defense and counterclaims focused on the premise that the facts drawn from craigslist's website are not craigslist's property, but in public domain, and that craigslist has maintained an unlawful monopoly through sham lawsuits, copyright misuse, improperly restrictive terms of use, and "ghosting." In its answer on October 30, PadMapper raised similar counterclaims alleging anticompetitive conduct by craigslist.

Craigslist filed a first amended complaint on November 20, 2012. In this amended complaint, craigslist added seven additional claims, for a total of 17. The claims were as follows (with new claims in italics)

  1. Trespass: Defendants have gained unlawful access to and interfered with craigslist's computer system, servers, and network.
  2. Breach of Contract: Defendants affirmatively accepted and agreed to be bound by the Terms of Use, which they willfully, repeatedly and systematically breached by accessing the craiglist website to copy and distribute the content posted therein.
  3. Misappropriation: As competitors with craigslist, Defendants wrongfully accessed craigslist's website and computer systems to make craigslist's content available to their customers, constituting free-riding on craigslist's substantial investment of time, effort, and expense.
  4. Copyright Infringement: Defendants reproduced and distributed the copyrighted material on the craigslist website without authorization from the copyright holder, craigslist.
  5. Contributory Copyright Infringement (against 3taps): 3taps provides its users with copies and derivative works of craigslist's copyrighted works without craigslist's consent, and knowingly permits its users to copy, reproduce, and prepare derivative works from the copyrighted works.
  6. Federal Trademark Infringement: Defendants' unauthorized use of the CRAIGSLIST mark in interstate commerce in connection with the sale or advertising of goods is likely to cause consumer confusion.
  7. Federal False Designation of Origin: Defendants' unauthorized use of the CRAIGSLIST mark is likely to create the false and misleading impression that Defendants' products or services are provided or sponsored by craigslist.
  8. Federal Dilution of a Famous Mark (against 3taps): CRAIGSLIST is a famous and distinctive mark, and 3taps' use of the mark is likely to cause dilution by blurring, particularly depleting the strength of the mark by impairing its distinctiveness.
  9. Federal Cyberpiracy Prevention (against 3taps): 3taps' use of CRAIGGERS in the craiggers.com domain is confusingly similar to and dilutive of the famous, registered CRAIGSLIST mark.
  10. California Trademark Infringement: Defendants' unauthorized use of the CRAIGSLIST mark in connection with the sale or advertising of goods/services in California is likely to cause confusion as to the source and/or sponsorship of the goods/services.
  11. Common Law Trademark Infringement: Defendants' unauthorized use of the CRAIGSLIST mark is likely to cause confusion as to the source and/or sponsorship of the goods/services.
  12. California Unfair Competition: Defendants have engaged in unfair business practices, injuring craigslist's business, reputation, and trademarks.
  13. Violations of the Computer Fraud and Abuse Act: Defendants accessed craigslist's computers and servers without authorization or in excess of authorization and obtained valuable information in transactions involving interstate or foreign communications.
  14. California Comprehensive Computer Data Access and Fraud Act: Defendants accessed and copied data from craigslist's computer systems and servers without authorization.
  15. Aiding and Abetting Trespass (against 3taps): 3taps has encouraged and facilitated access to craigslist's computers by supporting the collection, transfer, and storage of craigslist's content.
  16. Aiding and Abetting Misappropriation (against 3taps): 3taps has knowledge that the time-sensitive "scraped" craigslist content they provide PadMapper is to compete with craigslist, therefore aiding PadMapper's misappropriation.
  17. Accounting: As Defendants have benefited financially as a result of their misconduct at craigslist's expense, craigslist is entitled to a full accounting to determine the amount of money due to craigslist.

In response, PadMapper and 3taps amended their counterclaims on December 21. PadMapper updated its counterclaims to include (attempted) illegal maintenance of a monopoly in violation of the Sherman Act and California unfair business practices, and to seek declaratory relief for noninfringement of craigslist's copyrights. 3taps alleged similar counterclaims, including multiple monopoly and contract claims under the Sherman Act, California unfair competition, and interference with economic advantage.

PadMapper and 3taps also filed motions to dismiss on December 21, 2012. PadMapper, which first filed a motion to dismiss on October 30, 2012, amended this motion to dismiss craigslist's claims for trespass (claim 1), breach of contract (2), federal trademark infringement (6), federal false designation of origin (7), California trademark infringement (10), and common law trademark infringement (11). PadMapper argued that the Copyright Act preempts the breach of contract claim and that craigslist failed to state a trespass claim against PadMapper. PadMapper also argued that the four trademark claims are precluded under the U.S. Supreme Court's decision in Dastar v. Twentieth Century Fox Film, which narrowed the scope of the Lanham Act so not to cover claims where the core issue is a copyright claim, primarily the improper reproduction of copyrighted material.

3taps moved to dismiss craigslist's claims of copyright infringement (claim 4), contributory copyright infringement (5), violations of the Computer Fraud and Abuse Act (13), and California Comprehensive Computer Data Access and Fraud Act (14). With respect to the copyright claims, 3taps argued that craigslist has no standing to assert copyright infringement of user-generated content and its asserted copyright registrations are invalid. 3taps also argued that the statutory elements of the CFAA and California statute could not be satisfied, as establishing unauthorized access requires proof of hacking which craigslist judicially admitted did not occur.

In an opposition filed on January 31, 2013, craigslist reasserted the sufficiency of its pleadings and the validity of its copyrights. PadMapper and 3taps replied in support of their respective motions to dismiss on February 13.

On February 8, 2013, noting the complexity of the lawsuit, craigslist filed a motion to bifurcate and stay Defendants' amended counterclaims pending resolution of craigslist's claims. Craigslist argued that the counterclaims would be made moot or significantly narrowed if craigslist prevailed on its claims, and consideration of the antitrust counterclaims in conjunction with craigslist's claims would increase the legal and factual complexity of the case, delaying the proceedings. PadMapper and 3taps both opposed this motion on March 1. The defendants argued that the claims at issue are intertwined and would not be rendered moot if craigslist prevails, such that bifurcation would be inappropriate. The defendants further argued that a decision on bifurcation would be premature, and a stay of discovery would result in prejudice. In a reply on March 15, craigslist maintained that resolving craigslist's claims would at least streamline the antitrust claims, while the balance of potential prejudice weighs heavily towards bifurcation. Craigslist also argued that the motion was not premature and the bifurcation should occur before the start of discovery.  

On April 29, 2013, Judge Charles Breyer issued an order granting in part and denying in part the defendants' motions to dismiss, and granting craigslist's motion to bifurcate.  The district court denied 3taps' motion to dismiss the Computer Fraud and Abuse Act and California Comprehensive Computer Data Access and Fraud Act claims, noting that the defendant's continued access after clear statements regarding authorization in the cease and desist letters and terms of use sufficiently constitutes unauthorized access under these statutory provisions. The Court also denied PadMapper's motion to dismiss the trespass claim and the breach of contract claim, which it it ruled was not preempted by the Copyright Act. PadMapper's motion to dismiss the trademark claims was also denied, as the Court held that they were not precluded by Dastar. With respect to the copyright claims, the Court held that craigslist sufficiently established the originality of the compilation of the posts to warrant copyright protection, even in the individual posts themselves, and sufficiently registered copyright for this content.

However, the Court ruled that craigslist was the exclusive licensee of this content only from July 16, 2012 through August 8, 2012, during which period users were presented with a notice to click confirming craigslist's position as the exclusive licensee of the post. Outside of those weeks when the exclusive license confirmation statement was in use, the court found that craigslist could not sue for copyright infringement. Accordingly, the Court granted the motions to dismiss the copyright claims with respect to user-created posts submitted before July 16 or after August 8, 2012. Lastly, the Court concluded that "the likelihood of streamlining discovery for and adjudication of the antitrust counterclaims based on the outcome of Craigslist's claims-even if those counterclaims must ultimately proceed-warrants bifurcation," and therefore granted craigslist's motion to bifurcate and stay discovery on the antitrust counterclaims.

Content Type: 

Subject Area: 

Jurisdiction: 

Peteski Productions, Inc. v. Gawker Media, Inc.

Date: 

05/06/2013

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Gawker Media, Inc.

Type of Party: 

Organization

Type of Party: 

Organization

Court Type: 

Federal

Court Name: 

United States District Court for the Eastern District of Texas

Case Number: 

5:13-cv-46-MHS-CMC

Publication Medium: 

Blog

Relevant Documents: 

Status: 

Pending

Description: 

Peteski Productions is the copyright owner of the television show the Dr. Phil Show, and Gawker Media is the owner of the sports news website Deadspin.com. This dispute concerns coverage by both Deadspin.com and the Dr. Phil Show addressing the hoax pulled by Ronaiah Tuiasosopo on Notre Dame football quarterback Manti Te'o. The hoax in part involved Tuiasosopo speaking with Te'o by telephone and pretending to be a Stanford University student by the name of Lennay Kekua. 

The complaint alleges that Deadspin copied two episodes of the Dr. Phil Show wherein host Phil McGraw interviewed Tuiasosopo, asking him to explain the hoax. The interview extended over two aired episodes, with a "cliffhanger" at the end of the first episode suggesting that Tuiasosopo would perform the "Kekua" voice in the continuation of the interview in the second episode. According to the complaint, the interview was an "exclusive," and Tuisasosopo agreed not to appear in any other media between the time of the interview with McGraw and the airing of the interview on the Dr. Phil Show

Peteski alleges that Deadspin reported about the interview in three posts on January 30 and 31, 2013, with two posts before and one immediately after the first Dr. Phil Show episode; in the third post, Deadspin noted that the episode ended on a cliffhanger and encouraged readers to read Deadspin's blog the following day. According to the complaint, Deadspin then obtained a copy of the second Dr. Phil Show episode and posted an excerpt of the McGraw interview with Tuiasosopo (described as the "heart of Episode 2") on its website "not later than 9:30 a.m. Eastern Standard Time, hours before the Dr. Phil Show aired to over 98% of its viewers." The complaint appears to be referencing this post by Deadspin. The complaint seeks statutory damages, attorneys' fees, and an injunction barring the video excerpt.

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Subject Area: 

Jurisdiction: 

The DMLP Joins EFF in an Amicus Brief Addressing DMCA Misrepresentations and Critical Speech

Earlier today the Digital Media Law Project, through our counsel at the Harvard Law School Cyberlaw Clinic, joined a brief filed by the Electronic Frontier Foundation in the United States District Court for the District of Massachusetts case Tuteur v. Crosley-Corcoran.

Jurisdiction: 

Subject Area: 

Content Type: 

Tuteur v. Crosley-Corcoran

Threat Type: 

Lawsuit

Date: 

01/25/2013

Party Receiving Legal Threat: 

Amy Tuteur, M.D.

Type of Party: 

Individual

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

United States District Court for the District of Massachusetts

Case Number: 

13-cv-10159

Legal Counsel: 

Russell Beck and Stephen D. Riden (Beck Reed Riden LLP)

Publication Medium: 

Blog

Relevant Documents: 

Status: 

Pending

Description: 

On January 25, 2013, Dr. Amy Tuteur, an obstetrician-gynecologist residing in Massachusetts, filed suit in federal court against Gina Crosley-Corcoran, a resident of Illinois, based upon a dispute arising out of blogs written by each individual: The Skeptical OB, by Tuteur, and The Feminist Breeder, by Crosley-Corcoran. The case is centered on DMCA takedown notices issued by Crosley-Corcoran to the hosts of Tuteur's blog.

According to the Complaint, Tuteur and Crosley-Corcoran engaged in a heated debate through the medium of their respective blogs on the dangers and merits of home births. This debate escalated to a point at which Crosley-Corcoran allegedly published a post entitled "This One's For You, 'Dr.' Amy," which included a photograph of Crosley-Corcoran extending her middle finger, with the accompanying comment, "I don't want to leave you without something you can take back to your blog and obsess over, so here's a picture of me, sitting at my dining room table[.]" Tuteur responded by publishing the photo of Crosley-Corcoran on her own website in a post entitled "Pounding the table," in which Tuteur argued that the photo was an "outstanding example of table pounding" and accusing Crosley-Corcoran of being afraid to answer questions posed by Tuteur.

Crosley-Corcoran then allegedly responded with a series of efforts to compel the removal of the photograph from Tuteur's website, including a cease-and-desist letter and two Digital Millennium Copyright Act takedown notices directed to Tuteur's website hosts. Tuteur claimed that these takedown notices resulted in service interruptions and her website hosts terminating her contract with them. Tuteur also alleged that Crosley-Corcoran acted in bad faith in sending the takedown notices with the motive of interfering with the publication of critical statements on Tuteur's blog, claiming that Crosley-Corcoran was subjectively aware or should have been aware that Tuteur's use of the photograph was either (1) authorized by the text with which Crosley-Corcoran originally presented the photo, or (2) a "self-evident non-infringing fair use under 17 U.S.C. § 107."

Based on these allegations, Tuteur's complaint asserts two claims: (1) a claim under 17 U.S.C. § 512(f) for knowing and material misrepresentations in Digital Millennium Copyright Act takedown notices; and (2) a claim for tortious interference with Tuteur's contractual relationships with her website hosts. Tuteur sought damages, attorneys' fees, and an injunction barring Crosley-Corcoran and/or her agents from pursuing any copyright claim related to the "finger" photograph.

On March 5, 2013, Crosley-Corcoran moved to dismiss the complaint for lack of personal jurisdiction, alleging that she did not have sufficient contacts with Massachusetts to justify filing suit against her there, and arguing that neither the sending of a cease-and-desist letter into Massachusetts nor allegations of harm suffered in Massachusetts were sufficient.

In an opposition filed on April 5, 2013, Tuteur asserted that Crosley-Corcoran knew that Tuteur lived in Massachusetts and had intentionally targeted her allegedly wrongful conduct at Tuteur's activities there. Tuteur argued that Crosley-Corcoran's failure to file an actual  copyright lawsuit over the photo was evidence that the takedown notices were intended to interfere with Tuteur rather than defend Crosley-Corcoran's copyrights. Accordingly, Tuteur argued that Crosley-Corcoran's purpose to cause harmful effects in Massachusetts, together with harm actually caused there, was sufficient for the federal court in Massachusetts to exercise personal jurisdiction over her. Alternatively, Tuteur requested the right to take limited discovery on the jurisdictional issue.

On April 10, 2013, the district court issued an order on the motion to dismiss. While the court acknowledged that Tuteur's claims were premised on Crosley-Corcoran's takedown notices, it characterized the core issue in the jurisdictional dispute as to whether "ownership of an active, interactive, or passive website maintained by a service provider based outside of Massachusetts but which Massachusetts residents can access over the Internet satisfies the purposeful availment test." The court also questioned whether Tuteur could succeed in demonstrating "conduct uniquely or expressly aimed at the forum state," i.e., Massachusetts.

Ultimately, however, the court opined that the case might be more properly resolved on its merits than the "thorny issue of internet-based personal jurisdiction," because the "court seriously question[ed] whether Tuteur ha[d] stated a viable cause of action against Crosley-Corcoran":

The takedown notice at issue appears to conform to the letter of the requirements of section 512(c)(3) [of] the DMCA. In it, Crosley-Corcoran states accurately that her likeness has been copied without her express authorization and published by Tuteur without permission on her SkepticalOB website. ... It is true that if the tables were reversed, and this was a lawsuit brought by Crosley-Corcoran against Tuteur for copyright infringement, Tuteur would have a plausible, and even dispositive fair use affirmative defense ..., or as she suggests at one point, a defense of implied license ... . But there is no requirement in the DMCA that a notice-giver inform the service provider of an infringer's possible affirmative defenses, only that she affirm her good faith belief (as appears to be the case here) that the copyrighted material is being used without her (or her agent's) permission. Seen in this light, there is no material misrepresentation by Crosley-Corcoran of infringement, as a viable cause of action under section 512(f)(1) would require.

Tuteur’s tortious interference claim would also seem vulnerable on similar grounds. Here, there would seem nothing improper about the purpose of Crosley-Corcoran’s takedown notice, which was to stop what she believed was an infringement of her copyrighted likeness, while the means that she chose, sending a the notice to the service provider, was one explicitly authorized by the statute.

Accordingly, the court ordered Tuteur to show cause with 21 days why the complaint should not be dismissed on its merits and/or jurisdictional grounds.

Update:

May 1, 2013: Tuteur filed a memorandum of law with the court in response to the court's order to show cause. In the memorandum, Tuteur asserted that a Section 512(f) claim is available when a party filing a DMCA takedown notice misrepresents that the targeted content is infringing, and that misrepresentations of infringement are independent of whether there are misrepresentations as to ownership or authorization. Accordingly, Tuteur argued, Crosley-Corcoran's takedown notices gave rise to a Section 512(f) claim because she allegedly knew that she had no viable claim of infringement at the time the notices were sent. Tuteur specifically argued that her use of the "finger photo" was protected as a fair use. On the jurisdictional issue, Tuteur argued that (1) Crosley-Corcoran's sending of takedown notices directed at a blog that Crosley-Corcoran knew was operated in Massachusetts sufficed to subject her to specific jurisdiction in Massachusetts, and (2) Crosley-Corcoran's operation of her own website, which had a widespread presence and specific contacts with Massachusetts users, was sufficient for the court to exercise general jurisdiction over her in Massachusetts.

On the same day, the Electronic Frontier Foundation and the Digital Media Law Project (disclosure: the DMLP hosts this database) filed an amicus brief in the case, urging the court to recognize (1) that a Section 512(f) claim can be based on misrepresentations as to infringment alone, and (2) that a party sending a takedown notice must consider questions of fair use before they may form a good faith belief that content is infringing.

May 9, 2013: Crosley-Corcoran filed a response to Tuteur's May 1 memorandum, arguing that the district court's analysis in its order to show cause was correct, and more specifically that: (1) Tuteur had failed to plead that the takedown notices caused the removal of her blog, thus failing to plead damages as required for a Section 512(f) claim; (2) Section 512(f) requires proof of a lack of subjective good faith, such that evidence that the defendant honestly but unreasonably relied upon a meritless interpretation of the law is not sufficient; and (3) Tuteur's tortious interference claim was preempted by Section 512(f).

May 10, 2013: The Motion Picture Association of America filed an amicus brief, in which it argued that "[l]iability under § 512(f) arises only where the copyright owner has actual, subjective knowledge that it is making a material misrepresentation that the use of the copyrighted work is infringing." Thus, the MPAA argued, liability under Section 512(f) could not be premised on a failure to consider fair use of the work allegedly infringed or reliance upon an unreasonable interpretation of the law. In particular, the MPAA asserted that because fair use is characterized as an affirmative defense in the First Circuit, it should not be the copyright holder's burden to evaluate whether the fair use doctrine would make a particular use "authorized by law." The MPAA further argued that imposing the burden upon copyright holders to conduct a complex fair use analysis before asserting their rights under the Digital Millennium Copyright Act would be unjust and frustrate the purposes of the statute.

Content Type: 

Subject Area: 

Jurisdiction: 

David v. CBS Interactive, Inc.

Date: 

11/14/2011

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

CBSI Interactive, Inc., CNET Networks, Inc.

Type of Party: 

Individual
Media Company

Type of Party: 

Media Company

Court Type: 

Federal

Court Name: 

Central District of California

Case Number: 

CV11-9437

Legal Counsel: 

Richard B. Kendall, Laura W. Brill, Richard M. Simon, and Cassie D. Palmer from Kendall, Brill & Klieger LLP; Lawrence F. Pulgram, Jennifer L. Kelly, and Erin Simon from Fenwick & West LLP

Publication Medium: 

Website

Relevant Documents: 

Status: 

Pending

Disposition: 

Dismissed (partial)
Injunction Denied

Description: 

On Nov. 14, 2011, a group of musicians and music companies claiming to be the legal owners of copyrighted works available for unlicensed use through various peer-to-peer (P2P) BitTorrent clients filed suit against CBS Interactive, Inc. (CBSI) and CNET Networks, Inc., claiming that the companies were liable for infringement of Plaintiffs' copyrighted works because of their alleged role in distributing and popularizing P2P BitTorrent programs.

CNET is a "network of technology media websites that publishes news articles, blogs, reviews, ratings and podcasts about technology, software, and consumer electronics"; Download.com, a CNET website, "is the world's largest comprehensive software directory and rating service, providing reviews, ratings, and download links" for third-party software. Download.com provides links to sites where users can download P2P BitTorrent software, including uTorrent, Vuze, Frostwire, and BitComet; CNET reports extensively on the software, including the P2P software. CNET and Download.com are owned and operated by CBSI.

Plaintiffs alleged that Defendants have promoted and are promoting a "massive piracy culture" by distributing P2P software that they know is primarily used for copyright infringement and by publishing articles, videos, and reviews encouraging users to download the software and use it to infringe copyrighted material. Plaintiffs also alleged that CBSI profits from users downloading P2P software and using it to infringe. Based on those allegations, Plaintiffs asserted claims for vicarious, contributory, and inducement infringement and requested injunctive relief and actual and statutory damages.

Plaintiffs claimed that Defendants are liable for vicarious infringement because they have the "right and ability to control and/or supervise the infringing conduct of P2P client software publishers and individual users (whether by contract or as a matter of practical control)" and a direct financial interest in the infringing conduct. Specifically, they claimed Defendants could refuse to list and link to P2P software and cease "publishing articles promoting and instructing users on the use of P2P software." Plaintiffs claimed Defendants benefited financially from infringement through "fees and revenues earned from downloads on download.com," "advertising revenues generated from encouraging users to seek out and download clients from download.com," and "cross-promotion on P2P client download pages for other sites."

Plaintiffs alleged Defendants committed contributory infringement by providing tools and instruction for infringement and had actual and constructive "knowledge of the massive infringement that has occurred through P2P software they . . . distributed, and promoted." To demonstrate the Defendants' knowledge, Plaintiffs listed a number of articles and user comments on CNET and Download.com comparing clients currently listed on Download.com to illegally operated systems like Grokster and Napster (which were removed from the Download.com directory after courts found them liable for copyright infringement). They also cited side-by-side comparisons of various BitTorrent clients and videos of product demonstrations by CNET editors in which copyrighted songs appeared in search results.

Plaintiffs claimed that Defendants induced copyright infringement by both distributing P2P software that is used to infringe copyrights and promoting the software's infringing use by "inform[ing] users that the software [i]s optimized for infringement" and instructing users "on how to most effectively use" it. Plaintiffs claimed that Defendants' intent to induce infringement is clear, because the Defendants maintain a "business model to profit directly from the demand for infringing P2P clients," "purposefully target[] and cater[] to the P2P infringement community," and continue to "provide downloads for P2P software that fails to block or diminish access to infringing material even though there are technological means to do so."

Motion to Dismiss

Defendants moved to dismiss the complaint on March 5, 2012, stating that Plaintiffs' theory that "offering truthful descriptions, evaluations, and links to lawful P2P software" could subject them to liability for "violations by end-users of that software," was an "unprecedented attempt to expand the law of copyright infringement." According to Defendants, only "a tiny fraction" of "hundreds of thousands of products listed in the Download.com directory" includes P2P software, and Defendants do not host P2P software but rather provide links to third-party sites where it can be downloaded. Defendants further argued that such an interpretation of copyright law would unconstitutionally restrict speech.

Defendants argued that Plaintiffs failed to state a claim for vicarious infringement because they did not allege facts supporting the claim that Defendants have the right and ability to control direct infringement by P2P client users, or that Defendants "can even identify those who use the service to find infringing content." Based on Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007) ("Perfect 10-Amazon") and Perfect 10, Inc. v. Visa, 494 F.3d 788 (9th Cir. 2007) ("Perfect 10-Visa"), they argued that "the law is clear that ability to block or remove links to P2P software altogether is not sufficient control." Because their lack of control was fatal to the claim, defendants argued, they did not need to address whether they received a financial benefit from infringement, but stated that they are not paid per download, and, even if they were, a financial benefit from users downloading the software would not be a benefit from infringement.

Defendants argued that the contributory copyright infringement claim failed because the complaint did not allege that Defendants had actual knowledge of specific infringement. Defendants claimed that "the sale of copying equipment . . . does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes," and BitTorrent technology has numerous advantages that are not related to copyright infringement, including faster downloads, more stable mechanisms, and more efficient data transfer that reduces internet traffic. Defendants noted that educational institutions including Stanford and the TED Conferences use such technology for these benefits and argued that, when a product has such substantial non-infringing uses, "evidence of actual knowledge of specific acts of infringement is required" to show contributory infringement. They stated that Plaintiffs cited no evidence that Defendants knew of "specific instances of infringement of Plaintiffs' works" and that, based on the Supreme Court's decision in Sony Corp. v. Universal City Studios, 464 U.S. 417 (1984), "constructive knowledge predicated on alleged knowledge of pervasive general infringement" cannot be a basis for contributory infringement.

Defendants further argued that the inducement claim was inadequately pleaded, because the complaint did not allege "purposeful, culpable expression and conduct," as required under Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 454 U.S. 913 (2005). They argued that a defendant may only be liable for inducement under Grokster if the defendant intended to induce infringement and that Plaintiffs produced no evidence that Defendants "supported or promoted any P2P service that was known to be unlawful at the time, and as such they have not alleged that Defendants knew they were inducing . . . copyright infringement." In fact, Defendants stated that they automatically "warn anyone clicking on a link to P2P software against using it for purposes of copyright infringement." Additionally, Defendants stated that the Ninth Circuit made clear in Perfect 10-Amazon that a defendant must have promoted its own services for purposes of infringement to be liable for inducement, and the Complaint did not allege that. In fact, Defendants stated, CBSI does not create or own any P2P BitTorrent software.

Finally, Defendants argued that imposing liability on them for their "reporting, opinions, [and] descriptions [on] matters of public interest and concern" would violate the First Amendment. The Defendants argued that Plaintiffs sought to impose Grokster inducement liability without Grokster's culpable intent requirement, thereby violating the First Amendment. They noted that they could not be liable for merely linking to P2P software, and therefore a penalty based on linking plus speech would be a penalty for speech. They also said that liability would "compromise legitimate commerce or discourage innovation having a lawful promise" in violation of Grokster.

Opposition to Motion to Dismiss

Plaintiffs opposed the motion to dismiss on June 4, 2012. They argued that the First Amendment was irrelevant to their claims, because the Defendant's speech was not being penalized for its content, but was merely important evidence of CBSI's intent. According to plaintiffs, the case "involves conduct not expression."

Plaintiffs argued that their vicarious liability claim should survive the motion because, based on Fonovisa, Inc. v. Cherry Auction Inc., 76 F.3d 259 (9th Cir. 1996), there are two valid tests for vicarious liability: (1) the "right or ability to control direct infringers" and (2) "pervasive participation" in the "formation and direction" of the direct infringers. They alleged that Defendants did have the right or ability to control infringers, and that the amount of control they had is necessarily "fact specific," and would be filled in by discovery. At the very least, they argued, they had alleged that Defendants were engaged in "pervasive participation" in the "formation and direction" of infringers.

Plaintiffs also argued that their contributory liability claim should stand because they demonstrated constructive knowledge, which, under A&M Records, Inc. v. Napster, 239 F.3d 1004 (9th Cir. 2001), is sufficient. They argued that a device's substantial non-infringing uses only come into play when liability is predicated only on that device's capabilities and that since, "a range of conduct may show constructive or actual knowledge," the conduct cited in the complaint is sufficient to infer knowledge. Additionally, Plaintiffs argued that requiring actual knowledge of specific infringement would "give rise to strategic ignorance of monstrous proportions."

Plaintiffs further argued that their inducement claim was adequately pleaded, because inducement liability does not require that an entity distribute its own product. Plaintiffs also claimed that they had produced sufficient evidence of the Defendants' culpable intent, arguing that, "the defendant's own communications and advertising designs evinced an intent to target . . . a community well-known for infringement," "defendants' business model depended on high-volume use of software which was overwhelmingly infringing," and Defendants failed to take steps to stop infringement. Finally, according to Plaintiffs, generalized knowledge of infringement is sufficient for inducement liability-defendants do not need to have knowledge of the specific songs infringed or "malicious intent." Plaintiffs stated that CBSI "cannot seriously insist that it was unaware of the massive and illegal infringement carried out by the software it distributed."

Reply to the Opposition to the Motion to Dismiss

Defendants replied to the opposition to their motion to dismiss on June 16, 2012. They argued that the correct test for vicarious liability is whether a defendant had the "right or ability to control direct infringers," and that Plaintiffs' argument that "pervasive participation" in the "formation and direction" of infringement is sufficient was incorrect. Citing Perfect 10-Visa, the Defendants argued that the Ninth Circuit had made it clear that control is a necessary element of vicarious liability.

Defendants also argued that Plaintiffs failed to meet the standard for contributory liability laid out in Perfect 10-Amazon, which requires actual knowledge of specific acts of infringement of a plaintiff's works. According to Defendants, Napster did not hold that constructive knowledge was sufficient.

Finally, Defendants argued that their relationship to the infringement is too attenuated to constitute inducement-it is "merely a resource for locating . . . software" and is therefore "distinct from file-sharing software services that existed primarily to promote infringement." Defendants argued that the inducement liability cases Plaintiffs relied on are distinguishable because, in those cases, the defendants encouraged users to download infringing torrent files, whereas here, CBSI merely encouraged users to download a tool with numerous noninfringing uses. Further, Defendants argued that Global-Tech Appliances v. SEB S.A., 131 S.Ct. 2060 (2011), clarified that, to be liable for inducing infringement, a defendant must have knowledge of the specific plaintiff's interests and encourage others to invade those rights. "Linking to peer-to-peer services combined with public statements that the services can be used to copy files is not sufficient."

Order

On July 7, 2012, the court held a hearing on the Defendants' motion, and, on July 13, the court issued an order dismissing the vicarious liability claim and the traditional contributory liability claim, but allowing the inducement liability claim to proceed.

The court dismissed the vicarious liability claim based on Plaintiffs' failure to show that Defendants had a legal right to stop the infringement. Under Grokster, the court stated, vicarious liability requires "more than just an opportunity to control the infringement, [Defendants] must have a legal right to do so." The court noted that, in Perfect 10-Amazon, "the Ninth Circuit affirmed the dismissal of a vicarious copyright infringement claim against an internet search engine because it had neither a contractual nor implied right to ‘stop direct infringement by third-party websites,' despite its ability to control its index, search results, and web pages." In that case, the court noted, the Ninth Circuit recognized that even if a search engine stopped linking to a website that website could continue to infringe copyrights. Similarly, in this case, the court noted, "if Defendants removed the links to P2P software from their site, infringing third-parties would not be prevented from seeking the software out elsewhere and continuing to pirate copyrighted music."

The court dismissed the claim for traditional "material contribution" contributory liability because the complaint did not allege that Defendants' had the requisite knowledge or that Defendants materially contributed to infringement. The court stated that, contrary to Defendant's assertions, constructive knowledge could be sufficient, because Napster "did not discard constructive knowledge as a sufficient basis for contributory liability." However, the court held, Defendants must have knowledge-actual or constructive-of infringement of specific works of the Plaintiffs. The court therefore found that "[a]llegations that Defendants had knowledge that the overarching purpose of the P2P software was piracy are not enough to satisfy the knowledge standard laid out by the Ninth Circuit in Napster." Additionally, the court noted that Defendants did not materially contribute to infringement because no copyrighted material is available through Defendants' website, Defendants' services do not allow for direct infringement, and Defendants could not take simple steps to stop the infringement.

The court allowed the claim for inducement liability to proceed, stating that "[t]his is not a particularly close or challenging case." The court held that, under the "inducement" variation of contributory copyright infringement, Plaintiff must plead that Defendants distributed a device "with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement," and "evidence of actual infringement by recipients of the device."

Here, the court stated, Plaintiff alleged sufficient facts to show intent because "Defendants are alleged to have taken the unusual and ill-advised steps of distributing software programs that are capable of widespread copyright infringement while simultaneously demonstrating how to infringe copyrights using that software and evaluating the various programs as to their effectiveness in copying copyrighted material." The court found that it was irrelevant that Plaintiffs had not alleged that specific files had been infringed.

Finally, the court held that the First Amendment was not directly implicated, because Defendants' "behavior" in distributing P2P software and providing "explicit commentary on that software's effectiveness in infringing copyright" "moves beyond opinion into the realm of conduct and does not directly implicate any First Amendment issues."

Amended Complaint and Answer

Plaintiffs filed an amended complaint on July 25, 2012 making only an inducement liability claim. Defendants answered the complaint on August 13, 2012, denying all charges and asserting 24 affirmative defenses, including that the claim is barred "because application of the Copyright Act to impose liability in this case would violate the First Amendment" and "because any alleged injury or loss sustained by Plaintiffs was the fault and responsibility of third parties over whom Defendant had and has no control."

Motion for Preliminary Injunction

On November 9, 2012, Plaintiffs moved for a preliminary injunction, asking the court to enjoin defendants from (1) facilitating, permitting, assisting, soliciting, encouraging, or inducing anyone in downloading P2P BitTorrent software; (2) hosting, linking to or otherwise providing for download P2P BitTorrent software; and, (3) encouraging, soliciting, or inducing the infringement of copyrighted works, directly or indirectly, through the use of P2P software. Plaintiffs asserted that they were entitled to preliminary relief because: (1) they "own registered copyright interests" in specific works available for download through the P2P software at issue; (2) Defendants "continue to provide for free download bittorrent applications capable of illegally downloading Plaintiffs' works in a manner of minutes;" (3) "Defendants know that the bittorrent applications they distribute are being used to infringe musical works on a massive scale;" and (4) Defendants' "websites provide clear instruction on how to use bittorrent applications for purposes of infringement."

Plaintiffs claimed that "[t]hese facts demonstrate a strong likelihood of success on the merits of Plaintiffs' inducement claim," and that "Defendants' conduct evinces a brazen intent to continue their misconduct even after the Court's . . . strong admonishment."

Citing Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., WL 3715350 at *16 (D. Md. Aug. 27, 2012), Plaintiffs also claimed that they could not practically stop P2P software users from downloading their works, so their only "practical alternative" was to try to stop the distribution of P2P software.

They also argued that their interest in "protecting their copyright interests" outweighed the Defendants' "hypothetical" interest in "maintaining their illegal activity" and that an injunction would serve the public interest because the public is interested in the societal benefits of copyright. They quoted Grokster's language: "In sum, where an article is ‘good for nothing else' but infringement, [citation omitted] there is no legitimate public interest in its unlicensed availability, and there is no injustice in presuming or imputing an intent to infringe," and argued that, "although bittorrent technology potentially has non-infringing uses, Defendants are well-aware that its primary use is for infringing copyrights and it is this use alone which Defendants have promoted, encouraged, instructed and profited from."

Plaintiffs also reiterated their claim that the case does not implicate the First Amendment, because the Defendant's speech is only being used as evidence of the intent to induce.

Opposition to the Motion for Preliminary Injunction

Defendants filed an opposition to the motion for a preliminary injunction on January 25, 2013, stating that Plaintiffs had the burden of establishing all factors for preliminary injunctive relief and had failed to do so.

First, Defendants argued that Plaintiffs were not likely to succeed on the merits because they had not shown ownership of the works at issue, reliable evidence of direct infringement, connection between any infringement and the Defendants, or evidence that the Defendants intended to promote P2P software's use to infringe. Defendants stated that the Plaintiff's motion includes no evidence of ownership other than printouts from the Copyright Office's website, which identify other parties as the copyright owners, and that there is no reliable evidence of direct infringement because there is no evidence that anyone who used Defendants' websites to locate the software used it to download Plaintiffs' works. Defendants also argued that Plaintiffs cannot show that Defendants intended to promote P2P software's use to infringe, because their true purpose is to inform the public, and"[t]heir business model is legitimate, based on creation and aggregation of content, not its infringement." Defendants also pointed out that most of the reviews of P2P BitTorrent protocols that Plaintiffs alleged show intent to induce infringement were written before Grokster introduced the inducement theory of liability in 2005.

Second, Defendants argued that a lack of harm is evidenced by the "years of delay" between Plaintiffs' works becoming available through BitTorrent and their "filing this action, and another full year of delay in bringing this motion after filing suit." Defendants argued that the delay is dispositive.

Third, Defendants argued that Plaintiffs failed to show that the balance of equities tips sharply in their favor. On the contrary, they argued that the injunction Plaintiffs proposed would "substantially damage CBSI's business of providing a comprehensive index of software applications and editorial information about them" and would not stop any individual from downloading P2P BitTorrent software from other sources. This would hurt the public, they argued, because the public would be denied "legitimate and truthful information about pervasive technology."

Fourth, the Defendants contended that the proposed injunction was "unconstitutionally and inequitably vague and overbroad" because it would "require CBSI to cease functions that are not even alleged to constitute inducement." They argued that the "injunction would cover ... content that simply describes [BitTorrent software's] function or use and links to the software itself. This could include news articles" as well as, "not only torrent software, but all P2P software, including products such as Skype or messaging services having nothing to do with Plaintiffs' alleged copyrights." Finally, they claimed that the injunction did not clarify what statements would be prohibited, and that such "[v]ague and broad requests for injunctive relief ... targeting speech or the press raise serious First Amendment issues."

Denial of the Motion for Preliminary Injunction

On February 19, 2013, the district court denied the motion for a preliminary injunction, stating that "Plaintiffs have not shown any likelihood that Defendants will be found liable for their continuing activities," and an injunction is not appropriate when "there is no evidence of any ongoing distribution" of software with the "intent of promoting its use to infringe copyright." Here, the court stated, "Plaintiffs' only solid evidence of possible inducement comes from reviews that were published a decade ago," leading the court to conclude that there was "no reason to believe that Defendants will purposefully encourage copyright infringement now or in the foreseeable future."

Finally, the court concluded that an injunction would not serve the public interest because most of the articles Plaintiffs objected to "are straightforward, legitimate news articles that do not in any way encourage or induce copyright infringement." This suggested to the court that "Plaintiffs' goal goes far beyond stopping actual infringement by Defendants and extends instead to silencing public discussion of P2P technologies."

On February 25, 2013, the court filed another order dismissing CNET Networks, Inc. from the case and amending the case caption to reflect that change as well as the fact that Alkiviades David's claims were previously dismissed. The case caption is now Sugar Hill Music, et al. v. CBS Interactive, Inc. 

Subject Area: 

Jurisdiction: 

Digital First Sale: A U.S. District Court Tackles Used MP3 Sales

As many of us clear out our CD collections and move to digital music, more and more used CDs are making their way to garage sales, used music stores, eBay, Goodwill, and more. We don't worry about being sued for copyright infringement, because the first sale doctrine protects this resale. Should the sale of used mp3s be treated any differently? In other words, should the medium matter?

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Jurisdiction: 

Creative Lawyering or Copyright "Trolling" - a Copyright Society Event at Suffolk Law

This Thursday I'll be joining Jason Sweet from the Cambridge law firm (and OMLN member firm) Booth Sweet LLP at an event hosted by the New England chapter of the Copyright Society of the USA entitled "Creative Lawyering or Copyright 'Trolling.'" The event will be a discussion of some recent attempts by law firms and rightsholders to use e

Subject Area: 

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The First Circuit Tackles Copyright in News Photography and Docudramas

On Monday the First Circuit released an important opinion addressing copyright and news photography, in Harney v. Sony Pictures Television, Inc., No. 11-1760 (1st Cir. Jan. 7, 2003).  The case is related to the famous "Clark Rockefeller" incident.

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Copyright in Tattoo Case: Escobedo v. THQ, Inc.

Excerpt from Escobedo v.

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Copyright of “Public Facts”: Craigslist v. PadMapper

Craigslist was meant for the common good, or as founder Craig Newmark puts it, “doing well by doing good.”  At least, that has been its announced mission since it began as an email distribution among friends.

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AF Holdings LLC v. Doe

Date: 

04/24/2012

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

John Doe, Josh Hatfield

Type of Party: 

Organization

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

U.S. District Court for the Northern District of California

Case Number: 

4:12-cv-02049-PJH

Legal Counsel: 

Nicholas Ranallo

Publication Medium: 

Other

Relevant Documents: 

Status: 

Pending

Description: 

On April 24, 2012, AF Holdings LLC filed a complaint against a John Doe defendant as well as individual defendant Josh Hatfield in the U.S. District Court for the Northern District of California, arising out of the alleged distribution via BitTorrent swarm of a video. The plaintiff, which asserted that it held the copyright in the video by assignment, claimed that the Doe defendant violated its copyright by reproducing and distributing the video via BitTorrent, and contributed to infringement by all other members of the BitTorrent swarm.

The plaintiff claimed that defendant Hatfield was liable on a state law theory of negligence for failing to secure his wifi Internet connection against public use (including the alleged use by defendant Doe) for infringing purposes. The plaintiff also noted that it did not know whether Hatfield himself was the Doe responsible for the uploading of the video via BitTorrent.

Hatfield filed a motion to dismiss the complaint against him, or, in the alternative, for a more definite statement as to whether plaintiff was pursuing a contributory copyright infringement against Hatfield as well as a negligence claim. This first motion was withdrawn when the plaintiff filed an amended complaint, which added further allegations regarding the negligence claim against Hatfield (including allegations in support of the claim that Hatfield should have known about infringing activity occurring via his Internet connection).

On June 30, 2012, Hatfield filed another motion to dismiss (or for a more definite statement with respect to contributory infringement), this time with respect to the allegations of the amended complaint. The motion argued that the negligence claim against Hatfield failed for three reasons: (1) the claim as stated on the face of the complaint was within the subject matter of copyright, and preempted by federal copyright law either expressly or on theories of conflict or field preemption; (2) the claim was barred by Section 230 of the Communications Decency Act because it treated Hatfield as the "speaker or publisher" of material provided by a third party; and (3) the plaintiff failed to plead a special relationship giving rise to a duty on Hatfield's part to secure his wifi Internet connection. Hatfield further argued that the complaint was ambiguous as to whether he was being sued only for negligence or also for contributory copyright infringement, and sought clarification as to the basis for the claims against him in order to allow him to respond properly.

On July 3, 2012, the Electronic Frontier Foundation moved for leave to file an amicus curiae brief in support of Hatfield's motion to dismiss. The proposed brief argued that finding negligence liability for failure to secure a wifi connection would interfere with federal, state, private, and community efforts to promote open access to public wifi, and would exacerbate problems with allegedly coercive settlement practices in mass file-sharing litigation. The court denied leave to file the brief.

In its opposition to Hatfield's motion to dismiss, the plaintiff argued that express preemption by federal law did not apply to the negligence claim; rather than asserting infringement of copyright, the plaintiff said, the claim asserted negligent operation of a residential network, which is not an exclusive right under the Copyright Act. The plaintiff further argued that Hatfield failed to establish either conflict preemption (because he identified no conflicting state or federal statutes relating specifically to operation of home Internet connections) or field preemption (because he did not cite to cases indicating that a federal regulatory scheme had occupied the relevant field). With respect to Hatfield's Section 230 defense, the plaintiff argued that Section 230 was inapplicable because the claim related to negligence leading to copyright infringement by a third party, rather than a failure to edit, withhold, or restrict access to a third party's offensive speech. Finally, the plaintiff argued that Hatfield had engaged in negligent affirmative acts rather than a negligent failure to act, giving rise to a general responsibility to the public that did not require proof of a specific duty owed by Hatfield.

With respect to Hatfield's motion for a more definite statement, the plaintiff argued that the issue of the definiteness of the negligence claim would not be ripe until after the motion to dismiss was resolved. In another part of the plaintiff's opposition, however, the plaintiff explicitly disclaimed that it was asserting that Hatfield "knowingly facilitated and actively participated in another's alleged infringement."

Hatfield responded further to these arguments in a reply brief on July 23, 2012, arguing, among other things: (1) with respect to preemption, that the plaintiff improperly focused on Hatfield's conduct as opposed to the rights plaintiff sought to protect; (2) that Section 230 protection was not limited to cases involving "offensive speech;" and (3) that plaintiff's argument that Hatfield engaged in active misfeasance as opposed to a negligent failure to act conflicts with the plaintiff's own complaint, which alleged a failure to secure an Internet connection.

On September 4, 2012, the district court granted Hatfield's motion to dismiss the claims against him. The court ruled that the claim against Hatfield (1) was expressly preempted by the Copyright Act; and (2) alleged a failure to act that was deficient as a negligence claim because the plaintiff had not established any special relationship between it and Hatfield giving rise to a duty to act. The court further noted that Hatfield appeared to meet the qualifications for protection under Section 230, but found that it was not necessary to rule on that issue given the other deficiencies in the plaintiff's claim.

The court further noted that there was no evidence that the plaintiff had served the Doe defendant, and gave the plaintiff until October 5, 2012, to do so or face the dismissal of the remainder of the complaint without prejudice.

On September 28, 2012, the plaintiff moved for leave to file a second amended complaint expressly identifying Hatfield as the Doe defendant, claiming that further investigation following the filing of the first amended complaint had given rise to a reasonable basis to name and serve Hatfield as a direct and contributory infringer of the plaintiff's copyright. The motion for leave stated that the additional information discovered by the plaintiff related to Hatfield's "interactions on the computer and living situation (among other things)."

Hatfield filed an opposition to the motion to file a seconded amended complaint on October 12, 2012. The plaintiff moved to strike Hatfield's opposition, on the basis that Hatfield was not a party in the time period between the dismissal of the claim against Hatfield in the first amended complaint and the allowance of the proposed second amended complaint. Therefore, plaintiff argued, Hatfield had no standing to respond to the plaintiff's attempt to add new claims against him. The court rejected this argument.

In the opposition, Hatfield argued that the plaintiff had failed to prosecute its claims against the Doe defendant in a timely manner and as required by the court's October 5th order, and as such the court should dismiss the remainder of the first amended complaint. Hatfield further argued that leave to amend the complaint a second time should be denied, because: (1) the plaintiff's motion was made in bad faith and futile, because the plaintiff conceded in its response to the earlier motion to dismiss that Hatfield was ignorant of the alleged infringement; and (2) there was no excuse for the plaintiff's delay in proceeding against Hatfield, the plaintiff having neither identified the new information at issue or why it could not have learned that information earlier.  Hatfield also noted that the identification of his IP address as the source of the torrent at issue (which plaintiff knew about at the beginning of the case) had not been sufficient to name him as an infringer at the outset.

The plaintiff replied to the opposition, arguing that the identification of Hatfield's IP address would have been sufficient to name Hatfield at the outset, but that it had wanted to be "confident that it ha[d] an objectively reasonable basis to name" him as the infringer. Thus, the plaintiff claimed, its delay in naming Hatfield as the Doe defendant was the result of careful diligence rather than inaction or bad faith. With respect to the issue of whether it could have discovered the new information earlier with reasonable diligence, the plaintiff argued that its investigation was "heavily reliant on insights, the timing of which are out of Plaintiff’s control; after enough 'digging', Plaintiff will sometimes have the good fortune to find information sufficient to name a direct and contributory infringer." The plaintiff also argued that it had no obligation to disclose that information in support of its motion to amend. Finally, the plaintiff argued that an amendment cannot be considered futile merely because it contradicts a position previously taken by a plaintiff and considered by a court, because an "amended complaint inherently changes the position taken by the amending party."

At a hearing on November 7, 2012, the district court rejected the suggestion that the current amended complaint should be dismissed pursuant to the October 5th order, and (as mentioned above) denied the motion to strike Hatfield's opposition to the motion for leave to amend. The court further directed the plaintiff to submit for the court's consideration a revised proposed second amended complaint specifically identifying the new facts learned about Hatfield; pending that submission, the court deferred on ruling on the motion to amend.

On November 14, 2012, plaintiff submitted its second proposed second amended complaint for consideration as directed by the court. The new allegations presented in support of the identification of Hatfield as the infringer include:

  • "that Defendant had a large Internet presence, and that presence demonstrated Defendant's knowledge of computers and the Internet."
  • "According to a Facebook page purportedly attributed to a Josh Hatfield living in the Bay Area ... Defendant ‘likes' movies, ‘pretty much any movie,' among other things."
  • "According to a MySpace page purportedly attributed to a Josh Hatfield living in the Bay Area ... he goes by the moniker ‘Mistah HAT' and has pictures of his various activities including, but not limited to, playing video games."
  • "Defendant lived in a small apartment building in Oakland, California ... . Plaintiff discovered a recent listing by a real estate agent for one of the units located on the property. According to that listing, the building has eight units with at least on two-bedroom unit."
  • "There was no information available about Defendant's neighbors or whether he in fact Defendant [sic] had any nearby neighbors."
  • "Research on the building's other potential residents indicated that, while a residential building, it had a few tenants who were running their businesses out of their units."
  • "Through [a] skip trace, it was revealed that Defendant was thirty-three-years old and in fact currently residing at [ADDRESS]. Further it revealed that he lived at that location with thirty-year old female with a different last name. There was no indication that the two were married."
  • "Defendant had a criminal record. The offenses allegedly occurred in Oregon on June 25, 2001 and January 10, 1999, and both were labeled as ‘Court Offense: VIOL OF BASIC RULE.' The actual violation charged was unclear, but each passed through the criminal courts in Oregon."
  • "Plaintiff found no evidence that Defendant had a wireless Internet network. Further, Plaintiff found no evidence that, if such wireless Internet connection existed, that such network was unsecured (i.e. without password protection)."
  • "Most importantly, Plaintiff searched the Court's docket in this case and never found any declaration under oath from Defendant stating clearly that he had not infringed on Plaintiff's work. In fact, Plaintiff had never encountered such a document off the record as well."

On January 7, 2013, the court denied the plaintiff's motion to file the second amended complaint and its motion to strike the defendant's opposition to the motion. The court indicated uncertainty as to whether Hatfield would be substantially prejudiced by the amendment given his lack of knowledge, based on the plaintiff's prior conduct and statements, that he was considered a target for a direct copyright infringement claim. However, the court did find that "AF Holdings delayed unduly in seeking leave to amend, and that its conduct is at least suggestive of bad faith." The court further found that

the new allegations in the revised proposed [Second Amended Complaint] are vague and speculative, and do not demonstrate diligence or add any substance to the claims. ... In short, the revised proposed SAC alleges no facts showing that Hatfield infringed AF Holdings' copyrighted material, apart from the facts that were previously alleged and that have been known to AF Holdings for more than a year[.]

Having denied the plaintiff's motion to amend, the court also denied Hatfield's motion that the case be dismissed for lack of prosecution as per its comments at the hearing on November 7, 2012.

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Pinterest: Fair Use of Images, Building Communities, Fan Pages, Copyright

When using Pinterest (and Flickr and YouTube and Facebook and on and on), what copyright, fair use, trademark and other issues weigh on building communities and corporate use of fan pages and social media generally?  A hypothetical “Company” has plans for its Pinterest “community”, and in particular, wonders about these situations:

  • Using Images of Identifiable People
  • Fair Use and Images
  • Trademarks: When is a “Fair Use” Argument Strongest?
  • Why Attribution and Linking to Original Sources is Important

3 introductory questions:

Question #1: Someone used to be a paid Company sponsor or spokesperson.  They are no longer.  Can the Company continue to post a photo of the old sponsor to Pinterest? Short Answer: If the contract with the sponsor expressly permits it, yes.  Ordinarily, the contract would specify engagement for limited time, and that would prohibit rights to use images beyond the contract period.  But it really depends on what the contract says.

Question #2: Can the Company post a photo of a fan of the Company? Short Answer: Express consent is required, either through a release or the fan’s agreement (whenever the photo is submitted) to terms of service.  Exceptions are discussed below.

Question #3: Can the Company post a photo of a Coca-Cola bottle on its Pinterest page? Short Answer: If the use of the image does not suggest (implicitly or explicitly) endorsement or association, then yes.

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