Abolish Copyright

Careful What You Download - What You Don’t Know Can Cost You

David Abrams, Chilling Effects Clearinghouse, March 5, 2010

Abstract: A second federal appeals court has now eviscerated the “innocent infringer” defense for copyright infringement, this time for residents of Louisiana, Mississippi and Texas. The court concluded that, as long as a copyright notice appears on a physical CD somewhere, anyone who illegally downloads that music from the Internet is subject to the higher $750 statutory minimum damages; even if that person believed he or she had permission to download the material. In 2005, a different appeals court made a similar ruling affecting residents of Wisconsin, Illinois and Indiana.

Under current U.S. copyright law (17 U.S.C. 504), the owner of a copyrighted work found to be infringed may seek either "actual damages" equal to the financial loss he or she suffers as a result of the infringement or "statutory damages," of $200-150,000 per work infringed. Where the actual damages are small or where it is difficult to prove the amount of harm, the copyright owner will choose the statutory damages. This is especially true in the case of infringement caused by downloading a song without permission. While the actual loss to the copyright holder per song might be as little as $0.70 (based on the cost of downloading the song from iTunes), the federal copyright statute requires a minimum statutory penalty of $750 per song and a judge or jury may increase that penalty up to $30,000 (or even up to $150,000 per song if the copyright owner proves that the infringement was committed willfully).

Clearly these are very serious penalties, particularly since in the peer-to-peer context, it is rare to be sued for infringing only a single song, so even the minimum statutory damages can reach into the thousands or tens thousands of dollars for a defendant found liable for copying only a handful of songs. In addition, it is no defense to claim that you did not know the songs were protected by copyright or that you believed you had permission to download the songs. Copyright infringement is a strict liability offense, all the copyright owner needs to prove to obtain damages is that the work was protected by copyright, that you made a copy of the work and that he or she did not authorize that copy. It does not matter that you did not intend to do anything wrong.

To ameliorate somewhat the extreme damages that could result to an innocent infringer, Congress provided that if the defendant can show he or she “was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200 [per work infringed].” As the House Committee on the Judiciary explained in its 1976 report on the law, the purpose of including this provision in the statute was "to protect against unwarranted liability in cases of occasional or isolated innocent infringement" while "preserv[ing] its intended deterrent effect." In 1988, Congress amended copyright law to make placing a notice of copyright on sound recordings optional; however, it also added a section which eliminated the innocent infringer reduction to the minimum statutory damages if "a notice of copyright in the form and position specified by this section appears on the published phonorecord or phonorecords to which a defendant in a copyright infringement suit had access."

In the recent decision by the Court of Appeals for the Fifth Circuit (with jurisdiction for federal appeals in Louisiana, Mississippi and Texas), the defendant Whitney Harper was accused by several music companies of sharing their copyrighted sound recordings on a peer-to-peer network. Harper, who was between 14 and 16 when she downloaded the songs, had claimed that she did not understand how file sharing worked and that she believed that listening to music on a file sharing network was no different than listening to an Internet radio station. A lower court found that Harper had infringed 37 of the plaintiffs’ audio files, but that a jury could find that her claim that she was unaware that this constituted copyright infringement was plausible, subjecting her to "innocent infringer" statutory damages of $200 per song ($7,400 total) rather than $750 per song ($27,750 total). On appeal, the Court of Appeals reversed the lower court’s ruling, concluding that because there was no disagreement that the original CDs from which the songs had come from contained a copyright notice, Harper could never claim the innocent infringer defense. The court held that as long as there was a CD somewhere with the copyright notice on it that Harper could have sought out and looked at, she was responsible for the higher $750 minimum per song damages. The Court of Appeals for the Seventh Circuit came to the same conclusion in a similar case in 2005. Both courts assumed without discussion that the word "access" in the statute refers not to the defendant making an illegal copy of the song from a CD with a copyright notice on it, but merely that a copy of the CD with the notice on it exists in a store somewhere in the country. In addition, neither court considered the changes in technology between 1988 and 2005 (or 2010) that have made the primary method of music distribution electronic rather than physical.

The problem with these decisions is that they eliminate innocent infringer protection for all music downloads, thus ignoring Congress' stated purpose in creating the defense. With few exceptions, every commercially released song is available somewhere on a CD bearing a proper copyright. However, people no longer obtain all their music by buying a CD. Consumers download songs from iTunes, other online music stores and from artists' and publishers’ web sites never seeing the original CD. Consumers do not think they are infringing not because they do not know the songs are subject to copyright, but because they believe they have permission to download the copy. However, there is no way, short of becoming an expert in copyright law or hiring a lawyer, for them to verify this. Web sites such as http://musicmp3.ru/ sell music that is likely infringing while assuring their customers that the songs are legal to download (but only under Russian law). If consumers can prove they had a sincere and reasonable belief that they were not committing infringement, they should be protected from the full brunt of the law. The appeals courts’ rulings preclude this, putting the burden on users to somehow determine not only whether they have permission to download a song, but also whether the song has been properly licensed from its copyright holder in the first place.

Microsoft Invokes DMCA to Take Down Cyptome.org, then Relents

David Abrams, Chilling Effects Clearinghouse, February 25, 2010

Abstract: Network Solutions has taken the Cryptome website down after receiving a DMCA takedown notice from Microsoft claiming copyright infringement. Microsoft objects to the publication of a handbook provided to law enforcement describing what information the service keeps on its users and what legal steps are required to obtain that information. However, its takedown of the well-known web site may have effect of increasing the number of people who read the document.

Network Solutions has taken the Cryptome website down after receiving a DMCA takedown notice from Microsoft claiming copyright infringement. Cryptome collects "documents for publication that are prohibited by governments worldwide, in particular material on freedom of expression, privacy, cryptology, dual-use technologies, national security, intelligence, and secret governance”. It has been in operation since 1996. One class of documents posted on the site are procedure manuals provided by ISP and hosting services to law enforcement describing what information the service keeps on its users and what legal steps are required to obtain that information.

Cryptome obtained and posted Microsoft’s Global Criminal Compliance Handbook and subsequently refused Microsoft’s request to remove the document. Microsoft then invoked the takedown procedures of the Digital Millennium Copyright Act (DMCA), sending a takedown notice to Cryptome’s hosting provider, Network Solutions, claiming copyright infringement late on Monday, Feb. 22. Network Solutions then sent the registered owner of the web site, John Young, a notice that it would “disable your Web site on Thursday, February 25, 2010, unless the dispute between the Notifying Party and yourself is resolved.” Young refused to remove the document, citing what appears to be a fair use/news reporting defense, that the “document provides important information for the public to understand how Microsoft violates the trust placed in it by customers to protect their privacy and confidentiality of personal data and usage of Microsoft products.” On Wednesday, Feb. 24,Young sent a counter notice to Network Solutions contesting Microsoft’s claim of infringement. Network Solutions then forwarded the counter notice to Microsoft, but apparently chose to disable the Cryptome web site immediately rather than wait until the deadline specified in its initial notice to Young. Microsoft now has two weeks to file a lawsuit against Young. If it does not, Network Solutions will be required to restore the site under DMCA rules.

In the meantime, however, Young has republished the Cryptome web site at http://cryptomeorg.siteprotect.net/ minus the contested document. Young argues that Microsoft is:

Improper[ly] us[ing] copyright to conceal from its customer violations of trust toward its customers. Copyright law is not intended for confidentiality purposes, although firms try that to save legal fees. Copyright bluffs have become quite common, as the EFF initiative against such bluffs demonstrates.

Whether true or not, the result of Microsoft’s action in having a such a high profile web site taken down is only likely to make more people aware of the very document it is trying to keep confidential. The manual is currently available on Wired’s web site and the publicity surrounding the takedown will likely cause more people to seek it out to see what the fuss is about.

Update: Perhaps realizing that it could not contain release of the document (particularly given its newsworthiness in light of the Cryptome.org takedown), Microsoft informed Network Solutions this morning (Feb. 25th) that it was withdrawing its takedown notice. The site is now back up at its original URL.

Bloggers Cry Foul in Google Music Blog Takedowns

David Abrams, Chilling Effects Clearinghouse, February 17, 2010

Abstract: Music bloggers are up in arms over Google's removal of six popular music blogs. Google claims it deleted the blogs after receiving multiple Digital Millennium Copyright Act (DMCA) takedown notices alleging that the blogs allowed readers to download copyrighted works without the owner's permission. The dispute appears to arise partially from an aggressive stance taken by Google in response to industry takedown notices and partially from a lack of understanding of DMCA takedown procedures by the blog owners.

Music bloggers are up in arms over Google's removal of six popular music blogs, I Rock Cleveland, It’s a Rap, Living Ears, To Die By Your Side, Masala and Pop Tarts, from blogging sites it owns

Music bloggers are up in arms over Google's removal of six popular music blogs, I Rock Cleveland, It’s a Rap, Living Ears, To Die By Your Side, Masala and Pop Tarts, from blogging sites it owns. Google claims it deleted the blogs after receiving multiple Digital Millennium Copyright Act (DMCA) takedown notices alleging that the blogs allowed readers to download copyrighted works without the owners’ permission.  (Google has since reinstated one of the blogs, Masala, describing its deletion as a mistake.)  The blog owners complain that the blogs were deleted before they received notice of the violations and at least one blog owner insists that he had permission to post all of the music files on his blog from the copyright holders.

 

This dispute appears to arise partially from an aggressive stance taken by Google in response to industry takedown notices and partially from a lack of understanding of DMCA takedown procedures by the blog owners.  Under the provisions of the DMCA, a service provider like Google can protect itself from liability for copyright infringement if it removes infringing material quickly when notified by a copyright holder.  It must also notify the individual who posted material that it may file a counter-notice protesting the removal.  If a counter-notice is filed, the service provider then must forward it to the complaining party.  If the complaining party does not file a claim in court in 14 days, the materials must be restored to the Internet.  The statute requires the complaining party to clearly identify the material it claims ownership of and provide “information reasonably sufficient to permit the service provider to locate the material” claimed to be infringing.  A service provider who follows these procedures is also protected against a lawsuit from the individual whose material was taken down.  Note that the service provider does not have any responsibility to determine who is correct or if the material actually is in violation of the complaining party’s copyright.   It merely has to mechanically follow the procedures in the DMCA to protect itself from legal liability from either the complaining party or the individual that posted the material.  While the procedure described above requires the service provider to remove only the offending item upon receipt of a proper takedown notice, the DMCA does require the service provider to have a policy in place to terminate the accounts of individuals who are repeat infringers.  However, neither the DMCA nor Google define what constitutes a repeat offender.  Google only states that “[w]hen we receive multiple DMCA complaints about the same blog, and have no indication that the offending content is being used in an authorized manner, we will remove the blog.”

 

One complaint by the bloggers is that the takedown notices forwarded to them by Google do not provide enough information for them to file a proper counter-notice. In particular, many of the notices only provide the Uniform Resource Locator (URL) of a blog page, which may contain links to dozens of files, but fail to identify either the copyrighted work or the location of the allegedly infringing file as required by the DMCA.  Nevertheless, Google accepts the arguably faulty takedown notice as valid notification of infringing behavior by that blog owner.  Even if the blogger is able to identify and delete a complained-of link, it appears that he or she is considered an infringer, thus coming closer to being labeled a “repeat offender” subject to account termination.   Since there appears to be no way to clear Google's infringement counter, even a blogger who attempts to only post noninfringing material and immediately removes links to an infringing file when notified is likely to find his or her account terminated for repeat infringement over a long enough time period. 

 

On the other hand, bloggers harm themselves by failing to file counter-notifications when they are accused of infringement erroneously. Indeed, Google warns bloggers that they must file a DMCA counterclaim to avoid having their account terminated.  If a blogger files a proper counter-notice and the complaining party then fails to file a lawsuit, the material must be reinstated and Google should not count the incident as an infringement leading to repeat offender status.

 

Who Dat Trademark Belong To?

Blake Reid, Chilling Effects Clearinghouse, February 3, 2010

Abstract: It's sunny and warm in south Florida as the New Orleans Saints head to the Super Bowl for the first time in the team's 42-year history. Back in New Orleans, though, a cold front is blowing through as the National Football League tries to use intellectual property claims to lock down "Who Dat," a seminal New Orleans slogan adapted by Saints fans to cheer on the team.

In January, the NFL sent a cease and desist letter to New Orleans T-shirt shops Fleurty Girl and and Storyville, ordering them to stop selling shirts emblazoned with the "Who Dat" slogan. The NFL claimed trademark rights in the slogan, arguing that the shirts implied affiliation with the team. After public outcry led Louisiana governor Bobby Jindal to consider a lawsuit against the league, the league backed off, acquiescing to shirts emblazoned with "Who Dat" in black and gold, the Saints team colors. The league nonetheless maintains that clothing emblazoned with the slogan and the Saints team logo, a fleur-de-lis symbol, infringes the team's trademark rights. That claim, however, may rest on dubious legal ground.

History of "Who Dat" and the Fleur-De-Lis

The "Who Dat" slogan has a long and rich history of use in New Orleans dating back to minstrel shows and vaudeville acts in the late nineteenth century, possibly beginning with the song "Who Dat Say Chicken In Dis Crowd" by Paul Laurence Dunbar and Will Marion. Louisiana college and high school sports teams, including Southern University and Patterson High School, have used the slogan as a supportive chant since the 1970s. The chant didn't become associated with the Saints until 1983, when fans began using the chant at games, leading singer Aaron Neville and Saints players to record a version of "When the Saints Go Marching In" featuring the chant.

The fleur-de-lis has an even longer history, dating back many centuries prior to its adoption as the Saints logo. Many modern sports teams, schools, and organizations as part of their logos, including the New Orleans Hornets (of the National Basketball League), the Fiorentina soccer team, the University of Louisiana at Lafayette, Saint Louis University, Washington University, several fraternities, and even the Boy Scouts. Perhaps more importantly, the symbol has also served as symbol for the city of New Orleans, particularly since Hurricane Katrina devastated the city in 2005.

Trademark Law

In light of the storied history of "Who Dat" and the fleur-de-lis, some believe that the marks belong to the public - and they are probably right. Trademark law serves to help consumers identify the source of products and services by protecting marks associated with a particular source, and at the same time protects the investment of a company's "goodwill" into its brand. But generic marks, which may indicate many possible sources, or no source at all, aren't protected under the law, because they don't help identify the source of goods. The widespread use of "Who Dat" and the fleur-de-lis by various institutions throughout New Orleans, Louisiana, and the rest of the country over the past century arguably makes them generic, and thus unprotectable, because the use of the marks doesn't signify a particular source. That is, a shirt with a fleur-de-lis or "Who Dat" on it doesn't indicate that the NFL or the Saints necessarily made it.

In fact, neither the NFL or the Saints directly manufacture much, if any, of their "official" merchandise; since 2001, almost all NFL clothing has been manufactured by Reebok (an arrangement that the Supreme Court may deem illegal under antitrust law). Because the ornamental use of a team logo on clothing doesn't indicate the source of the clothing (i.e., Reebok, and not the NFL or the team), the league arguably doesn't even have the right to exclude others from making merchandise with team logos (though some courts have held to the contrary). By wearing Saints-branded clothing, fans may merely be showing their support for the team without knowing or caring who is producing the merchandise - and the NFL arguably doesn't have a right to profit from that support, except when fans buy the merchandise from the league itself.

Even if the NFL can stop vendors from selling merchandise that explicitly references the Saints, the league doesn't have much of a leg to stand on when it comes to "Who Dat" and the fleur-de-lis. The goodwill surrounding those marks has been developed not by the NFL, but by the people of Louisiana and New Orleans, including Saints fans - and that goodwill arguably belongs to them. Louisiana Attorney General Buddy Caldwell agrees, calling the idea of the NFL and the Saints claiming either mark as a protectable trademark "ridiculous." While the NFL may have built up goodwill surrounding the league and its teams, "Who Dat" and the fleur-de-lis have arguably become a part of the public lexicon, and thus usable by everyone, not just the NFL.

The NFL and IP Bullying

Regardless of the validity of its claims, the NFL should think carefully before going after "Who Dat Nation" again - its residents aren't easily scared away. U.S. Senator David Vitter (the "Junior Senator" of the Nation) publicly called the league out, threatening to print and sell T-shirts with the phrase "WHO DAT say we can't print Who Dat!" And the NFL should also beware the Streisand effect; publicity of the league's cease and desist letter has driven customers in droves from the NFL's official outlets to Fleurty Girl's doorsteps. According to Fleurty Girl owner Lauren Thom, "What started out as a letter that scared the bejesus out of me, has turned out to be the best thing ever for my business."

Of course, the NFL is not likely to be dissuaded; the league and its members are notorious for making overbearing intellectual property claims, such as going after an Indianapolis church for hosting a Super Bowl party for young parishioners. (Many organizations were forced to rename their gatherings as "Big Game" parties in response.) Saints quarterback Drew Brees even sued his mom for using his picture in a political campaign. And the league used the Digital Millenium Copyright Act to attack Chilling Effects founder Wendy Seltzer for posting a fair use clip of the league's infamously overbearing copyright notice.

The NFL and the Saints reap tremendous benefits from the public: the goodwill associated with the long-standing Louisiana symbols of "Who Dat" and the fleur-de-lis have made the Saints more popular than ever, and the taxpayers even pay for the Saints stadium. By going after Saints fans, though, the league risks biting the hand that feeds. Instead of trying to chill New Orleans, the NFL should embrace the community that has rallied around the Saints. As they say on Bourbon Street...

"Who dat? Who dat? Who dat say dey gonna beat dem Saints? Who dat? Who dat?"

Hopefully not the league itself.

Filmmakers Sued for Fictional Patent Infringement?

Rebecca Schoff, Chilling Effects Clearinghouse, December 3, 2009

Abstract: Legal reporter Eriq Gardner over at THR, Esq. has brought our attention to a lawsuit filed by Global Findability, Inc. against Summit Entertainment, makers of the sci-fi thriller Knowing, for patent infringement, apparently because the characters in the film are depicted using a string of numbers (including date, latitude, and longitude) to indicate the time and location of an event.

Let's say that there's still an active patent on automobiles—is it okay to film someone driving an automobile and put that in a movie? How about a business method patent on a way to monitor investments—can Steven Spielberg film a riveting action blockbuster about investment bankers using that very method? You'd think the obvious answer should be yes, but there's a company in Washington, D.C. that seems to disagree.

Global Findability, Inc. describes itself as a "geospatial information company." They hold a patent for what they call the "Geocode service," which "creates a single geospatial code that provides location, local time, global time and other geospatial information." In a complaint filed in U.S. district court, Global Findability alleges that Summit Entertainment and their partners have infringed the Geocode patent by "making, using, importing, offering for sale and/or selling in the United States, without authority, the Film that embodies the invention claimed in the '286 patent and/or . . . by actively inducing or contributing to infringement of said patent by others."

The allegedly infringing film is Knowing, the thriller starring Nicholas Cage, in which [SPOILER ALERT] aliens telepathically whisper a string of numbers to entranced children. The numbers turn out to be a series of dates, locations, and body counts for global disasters, including the final destruction of the world, which the aliens accurately predict using a method that was never quite clear to this viewer.

The filing of the complaint has caused consternation amongst commentators (see the ">Techdirt coverage, e.g.) because the wording of the complaint, though general, seems to imply that the so-called "embodiment" of the invention that infringes the patent is the representation of the characters using a string of numbers—or rather, pretending to use a string of numbers, because, of course, they don't really use the numbers to find any locations—for that, they actually used the movie SCRIPT. In other words, if we're reading the complaint correctly, Global Findability is claiming that the filmmakers infringed the patent by making and selling the film, not by making and selling the patented device or method--which sounds a little. . . alien. . . to patent law.

Given the role of aliens in the production of the string of numbers in the film, it's not clear that the film even represents Geocode being used. Take a look at the patent, number 7,107,286, posted here. No aliens are claimed as an element of the invention. Similarly, you'll notice several elements in the patented invention missing from the film--so many missing elements that an analogy between the alien/child duo and the patented system would seem to belittle Geocode to an embarrassing degree, making the complaint doubly perplexing.

Nor does the fate of the characters who use the number string suggest that the film promotes the actual use of such number strings or the infringement of any potential patents thereon (everyone suffers total annihilation, except for two of the number-chanting kids, who are saved by. . . well, just see the film if you must know.)

Generally speaking, a finding of patent infringement requires that the allegedly infringing device or method perform all of the elements of at least one of the claims in the patent. For more on patent infringement see Patent.

More to the point, patent law gives the holder of the patent the exclusive right to make, use, and sell the patented invention. Talking about the patented invention or fictionally representing the patented invention should be okay. In fact, bringing inventions into the public eye is one of the central justifications for patent law. We give inventors a monopoly on the production, use, and sale of their inventions for a fixed amount of time and in return the inventor must give the public a detailed description of his invention, how it works, and the best possible way to make it. Patents are published and made available to the public precisely because we want people to think about new inventions, talk about them, and even find a way to make them better. Scholars must be free to write about patented inventions and, yes, science fiction filmmakers must be free to imagine what might happen if someone used them, even if what they imagine is the complete incineration of the world.

Something Smells Off: Getty Images Sued Over Silhouette of Air Freshener

Research Staff, Chilling Effects Clearinghouse, November 23, 2009

Abstract: Getty Images has been sued by Car-Freshner Corp. for trademark infringement, dilution, and unfair competition over stock photographs of cars that include images of tree-shaped air fresheners hanging from the rear-view mirror.

Rebecca Tushnet's 43(B)log reports, via Seattle Trademark Lawyer, that Car-Freshner Corp. has sued the online photo-licensing clearinghouse Getty Images for allegedly distributing photos of car interiors that include tree-shaped air fresheners. Seattle Trademark Lawyer posted the complaint here.

Car-Freshner Corp. has a litigious history with respect to its trademarks of an "absorbent body impregnated with a perfumed air deodorant" in the shape of a pine tree. In 2005, Car-Freshner Corp. sued novelty greeting card company Corndog (and Urban Outfitters, who distributed the product), for producing a scratch-and-sniff Christmas card that played on the familiar pine-tree fresheners. According to the Business Journal, the card included the following text on the back:

The differences between these unusual cards and an actual car air freshener are: (1) our cards glow in the dark and (2) give off a weird, sticky pine smell only when you scratch and sniff them, instead of all the damn time, until you get car sick and throw up.

The scrappy card company argued that the cards were a parody of the ubiquitous air fresheners (and thus not likely to be confused with actual products of Car-Freshner Corp.), but the court never got to judge the case on the merits. The Austin-based Corndog ran out of money for attorney's fees and was forced to settle when it lost the fight to keep the case local. (See coverage in The Austin Chronicle.)

Car-Freshner Corp. also settled a lawsuit against Old Navy last year over t-shirts featuring images of pine-tree air fresheners. In that case, however, Car-Freshner could have shown registration of their trademark pine-tree-silhouette for use on t-shirts--and vigorous efforts to enter the car-freshener-apparel market. (The Car-Freshner website has a clothing store featuring such products as this charming Halloween costume. One size fits most!)

The claims in the suit against Getty Images are difficult to evaluate in part because it isn't clear what use has been made of the images (and therefore whether such use is confusing to consumers, or, if the Car-Freshner brand is legally "famous," whether such use threatens to dilute the brand). Use not as a mark -- that is, not to identify the source of photographs, but as an element of background scenery -- would not be a "trademark use," and so couldn't be an infringement.

In trademark law, the use made of the trademark (or confusingly similar image) does matter . . . unless the real-world costs of litigation overpower the aroma of a dubious claim.

Intel Corp. Sues Mexican News Outlet (For Publishing "Intel")

Research Staff, Chilling Effects Clearinghouse, November 19, 2009

Abstract: Another hat tip to Techdirt for bringing our attention to Intel Corp.'s recently filed suit against the publishers of Mexico Watch, a digital newsletter whose URL is latinintel.com, and whose parent company does business as Americas News Intel Publishing.

Intel Corp. has alleged both confusion-based infringement and trademark dilution against the company, although its website is clearly branded in ways that would easily distinguish it from the computer chip maker and its use of the word "intel" to mean "intelligence" is in common use.

"This is a time when we need good intel, but we're not getting it."
--Tom Clancy, in _The Sum of All Fears_ (1991)

Intel Corporation has filed a trademark infringement suit against Americas News Intel Publishing in the Northern District Court of California. The publishing company clearly describes its Mexico Watch newsletter as an "intelligence service on business, politics, and economy." In that context, as Michael Masnick notes above, the possibility of consumer confusion between their business and Intel Corp.'s seems unlikely. Ordinary trademark infringement is based on consumer confusion and generally if two businesses are unrelated enough (and their uses of a similar trademark are different enough), then no infringement will be found. For instance, we can all deal with a computer company called "Apple" and the Beatles' use of "Apple Records" without collapsing into a steaming heap of befuddlement.

United States federal trademark law does provide another kind of protection for trademark owners whose marks are qualified as legally "famous," however: protection against trademark "dilution," which does not require any consumer confusion. The Trademark Dilution Revision Act of 2006 (15 U.S.C. section 1125(c)) defines two kinds of "dilution": tarnishment, where the similarity between a famous mark and another use of the mark harms the reputation of the famous mark, and blurring, where a use of a mark "impairs the distinctiveness of the mark." (For more on dilution see Apple Steps up to Podium with TM Claims.)

Intel's correspondence with Americas News Intel Publishing, posted here, alleges that latinintel.com blurs the distinctiveness of their mark.

Americas News Intel Publishing hired a lawyer, who sent the following response, also published on their home page. We think it's worth quoting at length:

More importantly, the word 'intel' as used in the intelligence and information services sectors may not be trademarked. The word intel is an abbreviation for intelligence in the English language, and can be found in dictionaries of record such as the Oxford English Dictionary and Merriam-Webster's Collegiate Dictionary. And the use of the word intel as an abbreviation for intelligence is common in public discourse. . . . No sum of money spent to secure the public identification of the word 'intel' with products produced by Intel Corporation can withdraw the word, as it is used in standard English, from the public domain.

The argument made there, that words used descriptively or generically to describe a product may not be trademarked in that product's sector, is a valid one. For instance, if I owned some kind of "apple" trademark, I couldn't keep sellers of that round red or green fruit from using the word "apple"—or consumers really would get confused!

We think the Oxford English Dictionary gives pretty reliable intel, but nonetheless, the point may be moot: the Mexico Watch newsletter has already ceased publication and Americas News Intel Publishing, now facing a lawsuit from Intel, describes its own future as uncertain.

--

Update - 2/11
Americas News Intel Publishing isn't giving up without without a fight. According to a representative, the company is taking Intel to the mat in the Northern District of California thanks to pro bono assistance and public donations. Said the rep, "[W]hether or not the company is publishing, the right to stake a private claim on a public-domain English-language word is a legal issue, not an operational one." The case is scheduled to proceed in March. Stay tuned!

Ohio County's Free Wi-Fi Shut Down Over a Single Complaint

Rebecca Schoff, Chilling Effects Clearinghouse, November 13, 2009

Abstract: The chilling effect in Coshocton County, Ohio, was in obvious evidence last week when a single complaint from Sony Pictures Entertainment caused the county to shut down its free Wi-Fi service.

Coshocton County started providing free wi-fi service in the area around the county courthouse about five years ago. The Coshocton Tribune reports that the service was used by many. Out-of-towners with business near the courthouse could access it from their cars. County Sheriff's deputies could file traffic or incident reports from their cruisers. During county festivals held near the courthouse, vendors could use the network to process credit card transactions. The free municipal wi-fi provided Internet access in a way that directly benefited the public.

Last week the county's ISP, itself described on Freakbits as "an award-winning, non-profit organization serving Northern Ohio by connecting public and non-profit institutions to their fiber-optic network," received a complaint from Sony alleging a single illegal download of a film. In response, the county shut down the service.

The county is described as "cash-strapped" and, while their IT director has researched software filters that would prevent illegal downloads, county commissioners doubt that the cost to implement the program would be "justified for the free service."

The incident illustrates the unique pressure put on free municipal services of this type. With public funds scarce, it's understandable why the county would move to avoid legal threats in the quickest and cheapest way possible. Wendy Davis of the Daily Online Examiner points out that no evidence was established that the allegation of an illegal download was true. She cites the paper published by University of Washington computer scientists last year, demonstrating that legal uses of BitTorrent technology unrelated to the sharing of copyrighted material can attract false, unfounded DMCA takedown notices for a range of reasons, including bugs in software. Coshocton County says that it will investigate to try to determine what triggered the complaint from Sony, but in the mean time the county wi-fi is dead.

We owe a hat tip to Techdirt on this one, where Michael Masnick notes that the MPAA, when interviewed by the Coshocton Tribune on the issue, "doesn't seem concerned at all about the collateral damage."

UPDATE: Michael Masnick has an update on the story: an embarrassed Sony has asked the county to put its wifi back up!

German Murderer Threatens to Censor Wikipedia

Rebecca Schoff, Chilling Effects Clearinghouse, November 13, 2009

Abstract: A convicted murderer is attempting to have his name removed from the English-language version of Wikipedia and all other media coverage of his crime under a German law that protects private citizens from having their names and likenesses published against their will.

Wolfgang Werlé, who was convicted of the cruel murder of a well-known German actor, has employed the wonderfully named law firm of Stopp and Stopp to send cease and desist letters to media outlets covering his crime and his release. The German-language version of Wikipedia has reportedly already been sued and the English version has been threatened with legal action if the name of the murderer, who was recently paroled after serving fifteen years of a life sentence, is not removed from the article on Walter Sedlmayr, the victim. The Electronic Frontier Foundation notes that Werlé has also sued an Austrian ISP for the publication of his name and that case may go to the European Court of Justice.

The cease and desist letter sent by Stopp and Stopp (posted here at Wired and here on Chilling Effects: German Convict Seeks to Censor Wikipedia) makes the following argument:

"German law provides that our client is not a public figure after many year have passed [sic] since the crime. The German courts including several Courts of Appeals, have held that our client's name and likeness cannot be used any more in publication regarding Mr. Sedlmayr's death. . . ."

The problem is that Mr. Sedlmayr's "death" was a criminal matter of public concern. Sedlmayr was a beloved German actor, whose career stretched from 1949 to 1988 before his death at the age of 64, according to the information available at IMDB. German media online here and here still describe the nature of the killing: Sedlmayr was found in his home, bound, stabbed, and beaten to death with a hammer. German media, however, no longer fully identify the men convicted of the crime: Wolfgang Werlé and his half-brother Manfred Lauber, who reportedly knew Sedlmayr personally. The respected German magazine Der Spiegel refers to the two as "Wolfgang W." and "Manfred L." The German-language version of Wikipedia now merely refers to the "Verurteilten"—the convicts. American media coverage of the cease and desist letter, much of it including photos of Werlé in addition to his name, has mushroomed in the past two days (check out the Huffington Post's coverage, for example).

In an interview with Wired, EFF lawyer Jennifer Granick noted that if a media outlet lost a suit like the one threatened by Werlé, German privacy laws would require not only that the outlet cease reporting the names of the paroled convicts going forward, but also that it "go back and change what is already being written"—even "online archives" would have to be scrubbed of the convicts' names. Indeed, the link to Der Spiegel above is actually to a 2007 article on the brothers' release, which has apparently now been edited to remove their full names.

The application of this German law to news and information outlets in the United States is unthinkable. Having effectively silenced their victim, under this law, murderers would be free to silence the media, to wipe the history of their crimes from their identities. Imagine a world in which Charles Manson's name was not used in histories of the 1960's. Now imagine that he's been released and that the news media recount his crimes, but are not allowed to report his name.

The application of German privacy laws in this case would seem to prioritize the ease of re-assimilation for convicts following their release. In sharp contrast, United States law prioritizes basic freedoms of speech and press, not to mention the public's right to know a fact of public concern (which includes the early release of a violent criminal). All fifty states, for instance, have publicly available sex offender registries.

Nonetheless, Stopp and Stopp, who both received law degrees in the United States, claim that "[a]s [Wikipedia's] article deals with a local German public figure (such as the actor Walter Sedlmayr), we expect you are aware that you have to comply with applicable German law." We expect that Stopp and Stopp are aware that the United States Constitution has a First Amendment.

As the EFF points out in the article linked above, there has already been a U.S. district court ruling in which the imposition of a foreign speech restriction was found to violate the First Amendment. That was LICRA v. Yahoo!, but it was overturned in the Ninth Circuit for lack of personal jurisdiction over the French party. The speech restriction in that case was a French law that forbade the commercial exhibition of Nazi memorabilia to the French people. (One of the remedies the court ordered was the posting of warnings on the French-language version of Yahoo! that following links to sites on the English-language version could violate French law.) A suit against the English-language version of Wikipedia might similarly turn on questions of jurisdiction (which would be controlled by the rules of civil procedure, not by the subject of the speech in question).

In other ways a suit against Wikipedia would be markedly different from the Yahoo! case. The Yahoo! case was about restrictions on sales to the French people. Werlé 's threat against Wikipedia is about restrictions on the information made available to Americans. Applying German privacy laws to American-based websites would radically restrict their ability to report facts to Americans—and eradicate the balance between personal privacy rights and the First Amendment that has been struck by American law.

If German law wants to provide a remedy to convicts that will restrict the free flow of information from the Internet to the German people, there are models of restrictive filters available in China and Iran. Depriving the American public of the protection of the Constitution should not be available as a remedy for embarrassed murderers in Germany.

Pending Legislation Could Make ISPs Liable for Financial Fraud

Rebecca Schoff, Chilling Effects Clearinghouse, November 6, 2009

Abstract: John Timmer over at Ars Technica has reported that a bill introduced in Congress last month would make Internet service providers liable if a particular kind of financial fraud is perpetrated on their networks.

The bill, HR 3817, proposes a specific extension of ISP liability: it would apply in cases where someone using the ISP's network misrepresents himself as a member of the Securities Investor Protection Corporation, a federal agency that aids investors when their brokerage firm fails or when their assets are stolen by a broker. In order to be held liable for damages, the ISP would also have to be aware that the information on their servers or network was fraudulent in this way, or take no action to prevent access after having been informed of the misrepresentation.

Timmer points out two concerns, the first is a "lack of clarity about how [these sanctions] might be implemented," since the bill doesn't provide for any notice or takedown process analogous to the DMCA's process. Ultimately, Timmer comments, "it's a bit disturbing to see that the first response to fraudulent content on the Internet is an attempt to force the ISPs to police the content they transmit."

The bill is still in the early stages and these provisions are just a small part of it, but it seems clear that this is legislation worth watching.

Here's a link to the Jurist article covering the bill's approval by the House Financial Services Committee. That article includes a link to the full text of the bill and a record of its progress through Congress on Congress's Thomas database.

Takedown Hall of Shame Debuts at Electronic Frontier Foundation

Rebecca Schoff, Chilling Effects Clearinghouse, November 5, 2009

Abstract: The Electronic Frontier Foundation has inaugurated a new venue for exposing bogus copyright and trademark claims that stifle free speech on the Internet.

As part of their "No Downtime for Free Speech Campaign", the Electronic Frontier Foundation has created the Takedown Hall of Shame, a web site calling attention to egregious abuses of trademark and copyright law. Many of the featured takedown notices suggest calculated efforts to use intellectual property law to silence critics or political opponents and, as such, are deeply concerning. (The DMCA does provide a cause of action against a certain kind of misuse of the takedown process, see DMCA Notices.) All the takedowns noted in the Hall of Shame are really worthy of attention, but our personal favorite is Universal Music Group's attempt to yank down this video of a dancing baby. That's right: UMG shot off a takedown notice to a couple of proud parents sharing a clip of their bouncy, giggly baby dancing to Prince's "Let's Go Crazy."

Those parents used the counter-notification process to have their video reinstated on YouTube and then fought UMG in court, represented by lawyers from the Electronic Frontier Foundation. As of August 2008, the U.S. District Court for Northern California denied Universal Music Group's latest motion to dismiss the case, and rendered a landmark judgment that copyright holders must make a good faith consideration of fair use before sending takedown notices. You can follow the case on the EFF site here. Rock on, dancing baby, rock on!

Trademark Disunity: Clear Channel Zaps "Unity Day"

Research Staff, Chilling Effects Clearinghouse, October 9, 2009

Abstract: After announcing that Philadelphia radio station WDAS would not be able to sponsor the Unity Day festival for the first time in 30 years, Clear Channel has used an allegation of trademark rights in the name "Unity Day" to prevent citizens from raising funds and obtaining city permits to keep the tradition going.

The first "Unity Day" in Philadelphia was held in 1978. Over the past thirty years, the event, produced by Philadelphia radio station WDAS and sponsored by other corporations, has grown into an annual community celebration of African American culture, drawing tens of thousands of spectators together to enjoy food, family activities, and live music. This year, Clear Channel, which owns WDAS, announced that the economic downturn would prevent them from sponsoring Unity Day.

Amidst the great disappointment, a group of concerned citizens started to raise funds and formed a corporation, Unity Day on the Parkway, Inc., with plans to sponsor the festival themselves and return it to its traditional venue, the Benjamin Franklin Parkway. Clear Channel responded by claiming trademark rights in the name "Unity Day." They sent a cease and desist letter to Unity Day on the Parkway (posted here Clear Channel Claims Ownership of "Unity Day"), demanding not only that they use some other name for their festival, but that they also cease and desist from making any reference to previous Unity Days on their website. The current website contains historical photographs, including an image of the late State Representative Dave Richardson playing at the 1979 Unity Day softball game.

Though Unity Day on the Parkway argued that the name "Unity Day" is too generic to serve as a trademark for Clear Channel's services, the allegation of trademark rights temporarily halted the city permit process. The traditional date of the third Sunday in August has passed for 2009 and now Unity Day on the Parkway has vowed to try to hold a Unity Day next year. For more information on genericism and other limitations of trademark rights see Trademark.

What was the goal here in pressing trademark rights on a festival that had become a community tradition? The news that Clear Channel was not able to sponsor the event had been very public, so confusion as to whether Clear Channel was involved this year seems unlikely, and could have been cleared away with disclaimers. The only thing certainly accomplished by the cease and desist letter is the destruction of community goodwill that had been built up over years of sponsoring the event. The future of Unity Day is now uncertain, but, in any case, trademark rights do not give a mark owner the power to keep others from using the mark to discuss the mark owner's services, for instance, in cases of product comparison, news, criticism, or commentary. In other words, we should all feel free to discuss the Unity Day softball game of 1979 and all of the other fun memories Philadelphians surely associated with the festival.

Happy New Year: Federal Anti-SLAPP Bill Introduced

Rebecca Schoff, Chilling Effects Clearinghouse, December 30, 2009

Abstract: Rep. Steve Cohen of Tennessee has introduced a bill (H.R. 4364) that would provide protection from strategic lawsuits against public participation (SLAPPs) at the federal level.

We have written before about the role of anti-SLAPP legislation in protecting free speech from frivolous lawsuits (see Sedgwick Appeals Case Over Wild West Wanted Posters). The classic SLAPP is a lawsuit that abuses the court system by alleging bogus claims with the aim of silencing criticism or preventing whistleblowers from bringing wrongdoing to light. But isn't such speech already protected by the First Amendment, by the limits of intellectual property rights, and by the various defenses to claims of defamation and other torts, you ask? To which we can only gratefully respond, "Yes, Virginia, there really is a First Amendment." But unlike Santa Claus, who apparently doesn't have to worry about attorney's fees, defendants who are assaulted with a SLAPP may not be able to afford to defend themselves through a potentially lengthy trial.

Currently only 28 states have anti-SLAPP laws. This month, Rep. Steve Cohen of Tennessee introduced a bill that would offer anti-SLAPP protection at the federal level. According to the Federal Anti-SLAPP Project, the bill, called the Citizen Participation Act, provides for an early motion to dismiss lawsuits identified as SLAPPs and would give defendants the ability to recover attorney's fees from a plaintiff who brings a SLAPP. Both elements are crucial if the anti-SLAPP protection is to have real teeth. The fee-shifting provision encourages defendants to fight such suits because they may recover their costs, but it may also actually help defendants get the legal counsel they need because lawyers may take such cases on contingency. The provision of an early motion to strike minimizes the cost and the amount of time all parties and the courts must waste on such lawsuits. Both provisions would hopefully act as a deterrent to bringing the most egregious forms of SLAPPs.

The bill is currently with the House Committee on the Judiciary, on which Rep. Cohen serves. Rep. Cohen also sits on the subcommittee for the Constitution, Civil Rights and Civil Liberties.

You can follow the bill's progress on the Library of Congress's THOMAS database here. If this bill turns out to offer real protection against federal SLAPPs, it is worth getting excited about, for the sake of all those intimidated by strategic lawsuits in the past.

BoingBoing brings a ray of sunshine to DMCA-chilled air

Wendy Seltzer, Chilling Effects, October 8, 2009

Abstract: For several years, the Chilling Effects Clearinghouse has cataloging the effects of legal threats on online expression and helping people to understand their rights. Amid all the chilling we continue to see, it's welcome to see rays of sunshine when bloggers stand up to threats, helping to stop the cycle of threat-and-takedown.

The BoingBoing team did this the other day when they got a legal threat from Ralph Lauren's lawyers over an advertisement they mocked on the BoingBoing blog for featuring a stick-thin model. The lawyers claimed copyright infringement, saying "PRL owns all right, title, and interest in the original images that appear in the Advertisements." Other hosts pull content "expeditiously" when they receive these notices (as Google did when notified of the post on Photoshop Disasters), and most bloggers and posters don't counter-notify, even though Chilling Effects offers a handy counter-notification form.

Not BoingBoing, they posted the letter (and the image again) along with copious mockery, including an offer to feed the obviously starved models, and other sources picked up on the fun. The image has now been seen by many more people than would have discovered it in BoingBoing's archives, in a pattern the press has nicknamed the "Streisand Effect."

We use the term "chilling effects" to describe indirect legal restraints, or self-censorship, because most cease-and-desist letters don't go through the courts. The lawyers (and non-lawyers) sending them rely on the in terrorem effects of threatened legal action, and often succeed in silencing speech for the cost of an e-postage stamp.

Actions like BoingBoing's use the court of public opinion to counter this squelching. They fight legalese with public outrage (in support of legal analysis), and at the same time, help other readers to understand they have similar rights. Further, they increase the "cost" of sending cease-and-desists, as they make potential claimants consider the publicity risks being made to look foolish, bullying, or worse.

For those curious about the underlying legalities here, the Copyright Act makes clear that fair use, including for the purposes of commentary, criticism, and news reporting, is not an infringement of copyright. See Chilling Effects' fair use FAQ. Yet the DMCA notice-and-takedown procedure encourages ISPs to respond to complaints with takedown, not investigation and legal balancing. Providers like BoingBoing's Priority Colo should also get credit for their willingness to back their users' responses.

As a result of the attention, Ralph Lauren apologized for the image: "After further investigation, we have learned that we are responsible for the poor imaging and retouching that resulted in a very distorted image of a woman's body. We have addressed the problem and going forward will take every precaution to ensure that the caliber of our artwork represents our brand appropriately."

May the warming (and proper attention to the health of fashion models) continue!

Cyanogen and Google Work Past the Cease and Desist

Rebecca Schoff, Chilling Effects Clearinghouse, October 2, 2009

Abstract: News this week of a cease and desist letter sent to Cyanogen, the popular amateur developer of Android software, had members of the Android community hoping for a Jedi mind trick to make the legal threat go away: "Google, this is not the Droid you are looking for...."

But as the situation unfolds, participants hope that Google and Cyanogen will find a solution that protects Google's closed-source applications without chilling the innovation of the open-source Android community.

Google's Android is a software platform developed initially for use on mobile phones. In October 2008, Google made Android source code available to the public, royalty free and openly licensed, to encourage industry and amateur adaptation of the code via the Android Open Source Project. Since then, a flourishing community of developers has been providing "mods" and applications for the platform.

Among the innovators, a developer known by the handle Cyanogen released a modified version of the operating system, garnering a user-base of 30,000 who swear by the increased operating speed and other improvements Cyanogen's mod provides for their phones.

Last week, however, that community was alarmed to learn from Cyanogen's site that Google had sent him a cease-and-desist letter. Fearing the worst, some were ready to start protests. See the comments at Gizmodo and Android and Me.The movement even spawned its own Hitler video.

Google responded not with more lawyergrams, but an explanation: the company's aim was not to stop modifications of the base, open-source Android code, but rather to halt redistribution of its own closed-source applications, which Cyanogen had shipped along with his mod. Some view the redistribution of the closed-source apps (Google Maps, Android Market, gTalk, Gmail, and Youtube) as a "technicality", since they would ship only to those who have already bought "Google Experience" phones, which come with the apps already installed. Rooting the phone and installing a new mod erases the apps, so Cyanogen was saving these users the step of re-installing the software—and without the apps, the operating system doesn't have much functionality. On Google's side, however, distribution of proprietary software is a protected exclusive right of copyright owners, and Cyanogen's latest mod did include an upgrade of Android Market that Google had not yet released through its ordinary distribution channels. The loss of control over distribution of its applications could impair Google's (or any other company's) ability to make deals and build relationships based on the licensing of those products.

The latest news is that Google has reached out to the open-source community to make available previously unreleased tools (makefiles and configuration files), which will make it easier to develop mods that work "out of the box" without Google's closed-source applications. (For more, see Technology News.) In addition, Cyanogen is working on stripping Google's proprietary apps out of the CyanogenMod and on an application that will streamline the backup and restore process for owners of Google Experience phones who wish to root and then reinstall the proprietary apps. And who's assisting with these projects? Among others, Google staff. (See Cyanogen's blog.)

In the midst of the march forward there has been a lot of lingering criticism of the decision to send the C&D "nastygram" in the first place. Why not call Cyanogen first and work out a solution without the "lawyerisms"? True, sending a C&D into an open-source community is like using a table saw to cut your hair—you should probably try some other tools first. The backlash against "lawyerisms," though, might be obscuring another solution to these kinds of problems, and that's clear language up front about what parts of a code-base are freely licensed, and what is not. Experienced drafters of licensing agreements, which come in a myriad of collaboration-facilitating forms, might be just the guys to help write that language, so that everyone understands how to work together from the outset. Knowing where that line is between proprietary and open source can be complicated and clear agreements can help. In other words, IP lawyers might not be completely evil: search your feelings, you know it to be true.

DMCA Double Take: Suit Claims No Safe Harbor for Scribd

Rebecca Schoff, Chilling Effects Clearinghouse, September 29, 2009

Abstract: We know what the safe harbor provisions in the Digital Millennium Copyright Act mean ... don’t we?

A number of cases in California have confirmed what a straight-forward reading of the law would suggest: that the DMCA safe harbor provisions apply to hosting sites when those sites meet the requirements set out in section 512 of the law. (Perhaps most recently, a federal judge ruled in California that the safe harbor provisions applied to video-sharing site Veoh, see Veoh Survives Universal Music Group Copyright Infringement Suit.) Plaintiffs in a case just filed in Texas against document sharing site Scribd, however, would like to challenge that understanding.

As you read on, bear in mind that a complaint is just one party's allegations -- not proof of facts or accepted legal theories. Plaintiffs can ask for anything, even one hundred billion dollars, but that doesn't mean they'll get it.

BusinessWeek has described Scribd as “a kind of YouTube for publishing.” The lawyers of Texas law firm Camara & Sibley have a different way of describing the document sharing site and, indeed, the entire industry of hosting sites. In the complaint filed on behalf of author Elaine Scott, lawyer Kiwi Camara alleges that “under the aegis of self-promoting mis-interpretations of federal statutes, the West coast technology industry has produced a number of startup firms premised on the notion that commercial copyright infringement is not illegal unless and until the injured party discovers and complains of the infringing activity and the infringer fails to respond to such complaints. Apparently, they believe any business may misappropriate and then publish intellectual property as long as it ceases to use a stolen work when an author complains.”

Camara is painting the current understanding of the DMCA’s safe harbor provisions with a very broad brush, and commentators have objected. (Some contend that the complaint paints the industry more in the style of Jackson Pollock—with little effort to represent reality. See Michael Masnick’s comments at Techdirt.)

The "federal statutes" to which Camara refers are presumably sections 512(c) and 512(d) of the DMCA. For more information on them, see DMCA Safe Harbor and DMCA Notices.

These statutes do not make it legal to infringe. The safe harbor provisions do, however, shield Internet or online service providers from liability for damages from the infringement as long as they comply with a series of requirements, which include, among other things, quick removal (“takedown”) of the infringing file in response to a complaint from the copyright owner. The copyright owner can still sue the users who uploaded the material onto a sharing site, for instance. As Camara knows from his unsuccessful defense of music file sharer Jammie Thomas in a suit by the RIAA, courts will enforce copyright law against end-users. (For more on Camara & Sibley’s history with copyright cases, see Ars Technica.)

The safe harbor provisions make it possible for hosting sites and Internet service providers to develop technology for legal forms of file sharing and provide service to non-infringing users without the fear of constant litigation. On the other hand, the legislation does permit copyright holders to clear the harbor by informing ISPs and OSPs of infringement on their networks or sites: A provider who is properly notified of a specific infringement will not be eligible for safe harbor if it leaves the file up. Read this way, the law strikes a delicate balance.

If the safe harbor provisions of the DMCA were not intended to shield online hosts from liability under the stated conditions, it isn’t clear what they were intended to do. The complaint in the Scott case does not elaborate.

Curiouser and Curiouser

Ever since passage of the DMCA, we expect one of the key issues of any copyright infringement suit against a hosting site to be whether the site has met the stated conditions in order to qualify for the safe harbor. Usually the steps taken by a hosting site to prevent or remediate copyright infringement are evidence in its defense--not so in the Scott complaint.

Scribd’s general terms of use disallow copyright infringement. The site also posts clear notifications of its DMCA copyright infringement takedown policy and DMCA counter-notification policy. The site implements a three-strikes-you’re-out policy for users who are identified as "repeat infringers" (whose accounts are then terminated without notice). Finally, the site posts a FAQ list regarding the DMCA and Copyright Infringement that advises its users of the intellectual property rights of authors and other copyright holders.

These measures respond to requirements of sections 512(c) and 512(i) of the DMCA--and so should help the site qualify for the safe harbor, but the complaint in the Scott suit quotes from the FAQ, seemingly to argue that the FAQ’s correct acknowledgement of the rights of copyright holders is evidence that Scribd is a knowing infringer: "In documents published on their website, Scribd acknowledges that distribution of copyrighted content without the copyright’s owner [sic] permission is illegal. For example, the FAQ on copyright and DMCA states: '[d]istributing copyrighted content without the copyright owner’s permission is copyright infringement even if you give the document away for free.'" Under this logic, anyone who knows the law is a "knowing" infringer and the proper education of users incurs liability for a hosting site--surely a perverse result!

The DMCA does not require online service providers to patrol their systems in an effort to prevent copyright violations. The law explicitly states that safe harbor protection is not to be conditioned on "a service provider monitoring its service or affirmatively seeking facts indicating infringing activity" (17 U.S.C. Sec. 512(m)).

A number of sites do, however, take measures to prevent infringement. For a recent example, revisit the Veoh case: Veoh Survives Universal Music Group Copyright Infringement Suit. Veoh employed “hash” filtering and Audible Magic to scrub infringing copies from its network. Scribd has developed a Copyright Management System, a filter of its own that "fingerprints" works that have attracted a takedown notice so that the system will recognize copyrighted works and prevent users from reposting them. Scribd also allows any copyright holder to submit works to the Copyright Management System voluntarily, before there is an infringing post. In order to do so, copyright owners must sign an agreement not to sue Scribd if the filter fails and, in essence, to acknowledge Scribd’s compliance with the DMCA safe harbor provisions.

Seems like that would help, right? Preventing copyright violations in response to takedown notices? Not in the Scott complaint. The complaint against Scribd actually cites use of the Copyright Management System as a separate violation, alleging that the "fingerprinting" of the work, which creates a pattern for the filter to use to block posting of the work, creates a "copy" that violates a copyright owner’s exclusive right to duplicate her work. Whether this is true as a matter of law depends on the particular facts of how the technology functions (is a "fingerprint" a copy?) and on the application of fair use analysis to the facts. (For more on the fair use defense, see Copyright and Fair Use. Essay comparison service Turnitin.com made successful fair use defense of its fingerprinting.)

The complaint hints that the root of the problem with the Copyright Management System is that the filter itself might one day have separate value—perhaps the filtering system could be sold as a stand-alone copyright protection system for other sites--shouldn’t copyright holders get a piece of that pie? Camara hints darkly: "The value of the copyright protection system may someday exceed (or already has) the value of the document storage and retrieval system, especially if it were illegal to operate a Scribd-type business unless the business also implemented a copyright filter." But would copyright to a novel, for instance, confer rights to the profit in having created the filtering technology that protects the novel from illegal posting to the Internet?

What seems patently evident for now is that the Scott complaint tries to spring a Catch 22 trap for hosting sites, as its arguments seek to hold the site liable both for missing infringements on its system and for attempting to catch them.

Finally, the complaint Camara filed on Scott’s behalf promotes itself as a teaching moment for the IP legal community. The complaint quotes a lesson Ms. Scott offers to students when invited to speak about her work in classrooms. We think Camara’s use of the quotation is worth addressing here. It follows:
“As an author and lecturer, Ms. Scott regularly addresses the issues of plagiarism and the rights of authors. In her own words: ‘. . . . I begin by talking to students about the sacredness of words--theirs and mine--explaining that the words in my books are copyrighted to me, and therefore belong to me--just as the words they write belong to them. I add that their words are so important and valuable that the United States government considers them copyrighted too, even if their copyright isn’t registered. Therefore, I say to my wide-eyed audience, stealing a classmate’s words by copying them without permission is not only cheating, it is a form of copyright violation and technically against U.S. law. I usually close this portion of the presentation by stating that stealing someone else’s words is a little like stealing that person’s lunch money. It is simply wrong.”

Ms. Scott’s efforts to raise students’ awareness of copyright law are to be commended, but there are several unfortunate choices of words here that make this statement unsuitable for use in a complaint before a court of law and even, we regret to say it, misleading about the nature and extent of copyright. First, copyright does not confer ownership in words. Words most emphatically “belong” to us all. (The chilling effect of conferring ownership in words would be arctic.) Rather, copyright gives the creators of certain kinds of “fixed works” a series of exclusive rights in those works. It is the work and not the word that belongs, in a limited sense, to its creator. (See Copyright.) Putting it that way just doesn’t have the same ring as saying that words belong to you, but don’t knock it--the exclusive rights of a creator have real power.

Second, the ownership conferred by copyright and the ownership one has in one’s lunch money are a little alike in the sense that horses are a little like chickens. They are both animals, but they are not the same animal. There are limits on copyright ownership, notably the limited duration and the fair use defense, that just don’t apply to my lunch money. And there are good reasons for that. When we talk about copyright, it’s worth trying to be as precise as possible about both the extent and the limitations of the rights conferred by law. When we approach a court, such precision is indispensable. Maybe the ultimate lesson to be learned from the Scott case is that the IP legal community has a role to play in educating the public and in fostering precision in the approach to intellectual property rights on the part of both potential plaintiffs and defendants.

For further reading, the complaint in Scott v. Scribd has been posted on the Scribd site here. And the ads selected by the system to frame the document? They sell legal advice.

Veoh Survives Universal Music Group Copyright Infringement Suit

Rebecca Schoff, Chilling Effects Clearinghouse, September 17, 2009

Abstract: U.S. District Court Judge A. Howard Matz has granted summary judgment in favor of Veoh, an online video hosting site, ruling that Veoh’s procedures to protect against copyright infringement are adequate to qualify Veoh for safe harbor protection under the Digital Millennium Copyright Act.

Veoh, which hosts user-generated videos in a manner similar to Youtube, was sued by Universal Music Group for alleged copyright infringement in video clips posted on the site. As Ars Technica reports, UMG argued that “Veoh’s transcoding of uploaded videos disqualified it from any sort of protection under the DMCA.” In a categorical rejection of that approach, the Court’s ruling applies the safe harbor provision of the DMCA to prevent Veoh from being held liable for potential infringement in those clips. In the opinion, Judge Matz noted that the measures employed by Veoh to guard against copyright infringement on its site "fulfilled the requirements of section 512(c)(1)(A)."

Liz Gannes over at NewTeeVee summarizes the elements of Veoh’s successful policy, including a warning against copyright infringement in the terms of use, disabling access within two days of receipt of a takedown notice, the use of hash filtering to keep allegedly infringing videos from being re-posted, and the termination of accounts for repeat copyright violations.

Commentators at both the above links suggest that the reasoning in Judge Matz’s opinion has implications for Viacom’s suit against Youtube.

Interestingly, Judge Matz is no stranger to landmark copyright cases, also having been the author of the district court opinion in _Perfect 10 v. Google_. In that case, Judge Matz preliminarily enjoined Google from displaying thumbnail images from unauthorized sites that allegedly infringed on Perfect 10’s copyright to photographs for adult entertainment, but the 9th Circuit reversed that portion of the opinion on appeal. (Both opinions are available online here, along with more information from the Electronic Frontier Foundation.

For more information on the DMCA Safe Harbor provisions, see DMCA Safe Harbor.

Apple Reverses Course on Public Chats, Withdraws BluWiki Objection

Research Staff, Chilling Effects Clearinghouse, September 11, 2009

Abstract: The Electronic Frontier Foundation reports that Apple has stepped back from threats of legal action against BluWiki, a host of public wiki pages that discussed the use of software other than iTunes to download media onto Apple products--but the withdrawal of threats was based on the pages having been rendered obsolete by new code.

In November of 2008, Apple objected to a thread on BluWiki, a public wiki hosting site, which discussed the use of software other than iTunes to download media onto the iPod and iPhone. Apple's concern, as reported in the Harvard Journal of Law and Technology's Flash Digest was that the content was "designed to circumvent Apple's Fairplay digital rights management system" and thus violated the Digital Millennium Copyright Act. (For more info see Anticircumvention (DMCA) and Reverse Engineering.)

In response to threats of legal action, BluWiki removed the pages, but at the same time, the Electronic Frontier Foundation and San Francisco law firm Keker & Van Nest filed a lawsuit on behalf of BluWiki's operator, OdioWorks, seeking a declaratory judgment in order to "clarify the rights of the parties." According to a July 2009 press release by EFF, Apple recently sent a letter "withdrawing its cease-and-desist demands and stating that 'Apple no longer has, nor will it have in the future, any objection to the publication of the iTunes DB Pages.'" However, the letter, posted by EFF here, also says that the discussions on BluWiki were rendered obsolete by changes in Apple's code in the seven months that have passed since they were taken down.

Will technology stop this discussion where legal threats did not?