Category Archives: Copyright

Goldman v. Breitbart News, LLC: The Embedding Balance Has Tipped, per U.S. District Court

By: Scott J. Sholder and Nancy Wolff

On February 16, Judge Forrest of the U.S. District Court for the Southern District of New York in Goldman v. Breitbart News, LLC – one of a pair of cases pending in Manhattan federal court concerning the practice of “embedding” copyrighted content – issued a ruling in favor of the plaintiff, photographer Justin Goldman, holding that embedding (or framing) content from another website does not immunize content users from copyright infringement claims. The court declined to adopt the Ninth Circuit’s “server test” as set forth in Amazon v. Perfect 10, holding that the location of the allegedly infringed work does not determine whether a defendant has “publicly displayed’ that work in violation of the copyright owner’s exclusive rights. Put another way, “the fact that the image was hosted on a server owned and operated by an unrelated third party . . . does not shield” defendants from a finding that a plaintiff’s display right had been violated.

As background, this case is one of a pair of cases pending in the U.S. District Court for the Southern District of New York, that Justin Goldman has brought against various online media outlets to determine whether embedding images on a website through in-line linking without authorization constitutes copyright infringement. A website embeds an image using an in-line link when it uses HTML code to direct a user’s browser to an image file hosted on and transmitted from a server controlled by a third-party (usually another website) yet it appears as if the image resides on the website the user is actually viewing. The allegedly infringing website effectively opens a “window” allowing the user to see an image hosted by a third party, yet never actually copies, stores, or serves up the image itself.

Because of the 9th Circuit ruling in favor of the server test in Amazon v Perfect 10 (which DMLA filed an amicus brief opposing the server test) many digital media companies will use this technology. Many content owners and their representatives, believe this type of embedding harms the image licensing market by permitting the display of content without proper licensing.

The defendants in both the Breitbart cases lost initial motions to dismiss and moved in each instance for partial summary judgment on the question of the legality of embedding under the Copyright Act (a motion complete with amicus briefs). Goldman’s companion case, Goldman v. Advance Publications, Inc., et al., is pending in the same court but before a Judge Carter , and is at an earlier procedural stage.

At issue in the Breitbart summary judgment motion is whether the defendants’ embedding of a photograph posted on Twitter constitutes unauthorized “public display” of that photograph in violation of 17 U.S.C. § 106(5). The defendants, including Time, Inc., Yahoo, Inc., and Vox Media, own media outlets that reported about New England Patriots quarterback Tom Brady’s meeting with members of the Boston Celtics in the Hamptons – a newsworthy occurrence in the context of NBA player trades. Goldman captured a photograph of the athletes, which several Twitter users posted on the social media platform. The defendants then embedded tweets containing Goldman’s photograph using in-line linking. Goldman sued for copyright infringement, asserting that this display in connection with thestory violated his rights under copyright.

The Defendants, in moving for summary judgment opposing Goldman’s direct copyright infringement claims, rely heavily on Perfect 10 v. Amazon in which Google’s in-line linking of the plaintiff’s copyrighted images of nude models was not copyright infringement because the images were stored on the servers of third-party sites. Goldman counters that Perfect 10 was wrongly decided because the user still displays the photo; that there are significant technological differences between what Google did in Perfect 10 and embedding content from social media platforms; and that Perfect 10 does not apply because it is not precedential in the Second Circuit.

The court agreed and chiefly relied on the language of the Copyright Act, including § 101’s definition of “display,” which includes showing a copy of a work by any “device or process,” and transmitting or communicating a display by means of any “device or process.” The court explained that the Copyright Act does not require a user to possess, or to store at their own physical location, a copy of the work to display it within the meaning of the statute. The court further looked to legislative history and the 2014 decision in Aereo to note the application of the Copyright Act to new technologies.

Consequently, the district court found that the defendant websites engaged in processes that resulted in transmission and “display” of the photograph at issue even though the photograph was stored on Twitter’s servers, noting the seamless presentation of the photograph on their websites from the perspective of a website visitor. Moreover, the court expressed skepticism that Perfect 10 correctly interpreted the Copyright Act’s display right, but that, even so, there were key factual and technological differences that distinguished it from the Breitbart case. Specifically, in Perfect 10, the defendant, Google, operated a search engine that indexed web content for easy reference and facilitation of access, and users made active choices to click on images before they were displayed, whereas in Breitbart, users simply viewed a webpage that displayed an image regardless of whether the user specifically looked for it or clicked on it. Moreover, the court found that very few cases followed the “server test,” and so was unconvinced that there was an “unbroken” line of cases supporting the position set forth in Perfect 10.

Goldman’s companion case against Advanced Publications, Inc., is still pending, with Judge Carter staying discovery and requesting immediate notification of a decision in the Breitbart case as of January 19, 2018. It remains to be seen whether Judge Carter will be influenced by Judge Forrest’s decision, and whether any appeals will be forthcoming.

Judge Forrest’s decision is seen as a victory for content owners, creators, and licensors who believe that the technological machinations behind how content is posted should not serve as a workaround to proper licensing. Presumably the case closes a perceived loophole against IP licensing, and its scope would apply to the display right of any content. While the blogs (and particularly the tech writers) were a buzz about how this case ruins sharing online, the Breitbart court did not believe that the resultant impact of its decision on the Internet at large would have as “dire consequences” as predicted by the defendants and their amici, and noted that in this case, strong defenses to liability separate from the “server test” still exist, including proper ownership, licensing/authorization, fair use, the DMCA safe harbor, and innocent infringement. Nonetheless, these defenses only come into play once a claim or action is asserted, so proper instruction on licensing is still important.

DMLA supported Getty Images and other visual artists associations in filing an amicus brief supporting Goldman in opposition to the server test. A copy of the amicus brief is here and the decision is here.

A Coming Change: KodakOne Attempts to Prevent Unlicensed Use of Pictures

by Nancy E. Wolff and Kyle Brett.

On January 9th, Kodak announced its intention to enter the cryptocurrency craze by developing a blockchain-based service that presumably allow participating photographers to get paid each time their licensed work is used on the Internet without their prior consent. As described on the company’s website, the digital platform, currently referred to as KODAKOne, will “provide continual web crawling to monitor and protect the [intellectual property] of images registered in the KODAKOne system.” Upon detection of an unlicensed use, Kodak will manage the post-licensing process and (i) have the picture removed, or (ii) compensate the participating photographer in the company’s own currency, referred to as KodakCoin. By December 11th, the company’s stock had more than tripled.

Read entire article here

KodakOne Attempts to Prevent Unlicensed Use of Pictures

by Nancy E. Wolff and Kyle Brett.

On January 9th, Kodak announced its intention to enter the cryptocurrency craze by developing a blockchain-based service that presumably allow participating photographers to get paid each time their licensed work is used on the Internet without their prior consent. As described on the company’s website, the digital platform, currently referred to as KODAKOne, will “provide continual web crawling to monitor and protect the [intellectual property] of images registered in the KODAKOne system.” Upon detection of an unlicensed use, Kodak will manage the post-licensing process and (i) have the picture removed, or (ii) compensate the participating photographer in the company’s own currency, referred to as KodakCoin. By December 11th, the company’s stock had more than tripled.

While digital photo licensing is a concept as old as the first website, and entire businesses are built around assisting photographers in the collection of royalties, KODAKOne’s innovation seems to be in its attempt to leverage blockchain’s strengths against traditional photo licensing’s weaknesses in securing compensation for unauthorized online uses. For example, in order to be compensated for an unlicensed use of a photograph, a photographer (or its representative) would have to own the the copyright, detect an unlicensed use, contact the unlicensed user (if possible), engage in a discussion regarding compensation and agreeing on compensation, and wait to be compensated by the unlicensed user or initiate a DMCA process to have the unlicensed picture removed or bring a copyright action. Here, blockchain technology (a digital ledger in which transactions are recorded publically) allows the KODAKOne platform to automate all of the foregoing by simultaneously serving as a database of rights, detecting an unlicensed use across the entire Internet and seamlessly compensating a participating photographer in its ecosystem’s own currency. In addition, “accredited investors” can buy KodakCoins and purchase the rights to license a picture registered with KODAKOne.

That being said, there are several potential issues with Kodak’s premise, first of which is whether photographers will even want to be compensated in KodakCoins. Yet, according to a Kodak spokesperson, “KodakCoins can be exchanged for U.S. dollars and the exchange will be announced in the coming weeks.” So, provided that the margins of the exchange rate (even if not the best) are commercially reasonable, KODAKOne may provide a way for photographers to recoup some profits from unlicensed uses that would have otherwise provided none.

From here, it is not difficult to see where Kodak may hope its idea grows: if KODAKOne successfully manages, markets and monetizes the rights to digital pictures, Kodak may eventually attempt to add IP rights to digital videos and digital music on their platform, becoming an entire marketplace for digital art and entertainment. But, nonetheless, it is an idea fraught with historical failures: over the years, the music industry has wasted millions of dollars attempting to build a central music rights database, such as Global Database Repertoire (GRD). In GRD’s case, a collection of organizations attempted to build a joint database that, like KODAKONE, would have primarily allowed for a rights holder to (i) register their work once with GRD, instead of numerous times in different countries, (ii) track royalties and guarantee the rights holder was paid promptly and fairly, and (iii) initiate cease and desist actions against unauthorized users.  But, in 2014 and after more than 12 million dollars was spent developing the database, the effort to build GRD was abandoned as organizations pulled out over concerns regarding control and the potential loss of revenue from an efficient GRD. In Kodak’s case, and because the company will control the entire platform from the outset, KODAKOne may not be beleaguered by same set of problems that shelved GRD.

Yet, there are still remaining legal questions that must be answered before KODAKOne is declared an industry salve, and many industry experts are skeptical about Kodak’s entire endeavor, some suggesting it is at best doomed to fail and a worst a final trick from historically troubled company. A question, for example, is whether Kodak will request that unlicensed users pay for their infringement (as the mechanism to compensate participating photographers) and, if so, what will be the amount that Kodak requests an unlicensed user to pay? In current practice, depending on the copyright status of the picture at issue, the appropriate fee would either be the reasonable licensing fee or a multiplier of the licensing fee. If KODAKOne does not, at a minimum, collect a reasonable licensing fee, many photographers may choose to not register with the platform and instead to hire a third parties to crawl the Internet for unlicensed uses and negotiate for a much higher settlement. Another example of an outstanding legal question is what language the KODAKOne Terms and Conditions will have around “exclusivity”—that is, whether KODAKOne has an exclusive right to manage the rights of a given picture. If KODAKOne does have an exclusive right, the platform may indirectly create an incentive for photographers to not put their best work on the platform and, as of the result of that, buyers may be disincentived from using KODAKOne as a primary resource for licensable pictures.

Notwithstanding the many open questions, Kodak has taken a creative step forward for itself and the discussion of rights management has a further addition into the exciting cryptocurrency space. But, as with all new areas, right holders should consult a lawyer before participating.

Alternet Publishes Rick Gell’s Article

Congratulations to DMLA Board Member, Rick Gell, whose thought-provoking article entitled “How Silicon Valley’s Capitalist Greed Continues to Cheat Creators and Rob American Culture has been published by Alternet.

The article, which criticizes the DMCA and CDA – two laws that he believes have hurt copyright owners and journalists, is a very interesting read for all media licensors.

You can read the article here

 

 

 

 

 

 

 

 

DMLA JOINS IN AMICUS BRIEF VHT v ZILLOW

DMLA joins in amicus brief in VHT v Zillow, supporting VHT’s award of statutory damages based on number of infringed images under a database group registration of photographs

On Monday December 18, 2017, DMLA joined NPPA, ASMP and GAG in submitting an amicus brief before the Ninth Circuit Court of Appeals in support of VHT, a real estate photography company against Zillow, an online real estate platform on the narrow issue of the proper calculation of statutory damages based on multiple infringed images registered using a database registration consisting predominantly of photographs. The appeal by Zillow argues, among other issues, that the district court erred in awarding statutory damages to VHT based on each image infringed having independent economic value, despite being registered under a single database registration of photographs, which Zillow argues should only entitle VHT to one award of statutory damages regardless of the massive number of images infringed. The relevant question in the Zillow case hinges on what a court considers a “work” under Section 504(c)(1) of the Copyright Act, each separate image filed within the application, or the database as a whole, which would be one work.

The amicus brief supports the view that the independent value test applied by the lower court, and previously adopted by the Ninth Circuit is the correct one. The amicus brief describes the historical background of the various group registration procedures designed by the U.S. Copyright Office, to ease the administrative burden of registration of photographs which has unique challenges given the amount of images a photographer can create in a day.  In particular, the database registration of photographs was developed with input from DMLA and its members (formerly PACA) to protect images distributed through online platforms, which formerly were distributed via published print catalogs. The amici argue that the form of registration should have no impact on whether the independent works covered by the registration should be considered a single work, entitled to a single statutory damage or multiple works entitled to damages for each work infringed. The outcome of the Ninth Circuit’s ruling could have a major impact on the ability of image libraries and their contributing photographers to recover appropriate damages from infringers who use more than one of their photographs without permission, based on group registration, particularly those in the Ninth’s Circuit’s jurisdiction which includes California, Oregon, Washington state, Idaho, Montana, Nevada, Arizona, Alaska and Hawaii.

The brief, which you can find here, was filed by NPPA’s Deputy General Counsel, Alicia Calzada, with support from DMLA’s attorneys Nancy Wolff and Marissa Lewis of Cowan, DeBaets , Abrahams and Sheppard LLP. An amicus brief on another important issue in the case—secondary liability—was filed in support of VHT by the Copyright Alliance (link: http://copyrightalliance.org/wp-content/uploads/2017/12/Copyright-Alliance-VHT-v-Zillow-Amicus-Brief.pdf ), where DMLA is a member.

Copyright Small Claims: A Solution for Many Creators

Since the bill Copyright Small Claims Bill, H.R. 3945,  entitled, the “Copyright Alternative in Small-Claims Enforcement Act of 2017” (the “CASE Act”) was introduced by Representative Hakeem Jeffries (D-NY), there have been many articles published in support of this important legislation. Here is a great article to help you understand why this bill is so important to our industry and to all creators.

Copyright Alternative in Small-Claims Enforcement Act of 2017

DMLA is happy to announce our support for the bill by Representative Hakeem Jeffries (D-NY) to create a small claims court within the Copyright Office.  The bill, H.R. 3945,  entitled, the “Copyright Alternative in Small-Claims Enforcement Act of 2017” (the “CASE Act”) is also cosponsored by Representatives Tom Marino (R-PA), Lamar Smith (R-TX), Doug Collins (R-GA), Judy Chu (D-CA) and Ted Lieu (DCA).

Here are links to the press release issued by Rep. Jeffries and his colleagues yesterday announcing the introduction of the bill, a press release issued by DMLA and several other visual artist organizations praising the introduction of the legislation, and the bill, H.R. 3945.

 

 

ImageRights Announces Dedicated Copyright Registration Service

ImageRights International, the global leader in copyright enforcement services for photo agencies and professional photographers, today announced the launch of a dedicated copyright registration service. For the first time, any photographer or agency can register their images with the United States Copyright Office through ImageRights highly efficient and precise copyright service. Previously, only ImageRights members had access to the service.

Read more here