Tag Archives: copyright infringement

DMLA OPPOSES MARYLAND COPYRIGHT DEMAND LETTER BILL

On January 25, 2017 Nancy Wolff, along with representatives from Getty Images, the Copyright Alliance, MPAA, Comcast, BMI Music and others representing creators and owners of content, testified at a hearing against bill HR65 before the Maryland State Senate Finance Committee.

The Bill was trying to regulate copyright demand letters by preventing copyright owners from “making certain assertions of copyright infringement in bad faith”.  It also stipulated that a court might consider, among other factors, the absence of a certificate of copyright registration accompanying the letter s evidence of bad faith.  Read the entire story here.

 

 

DMLA Oppose MD State Law to Regulate Copyright Demand Letter

by Nancy Wolff, DMLA Legal Counsel

Sending copyright demand letters to users of images where no license is apparent has been a common practice of many DMLA members, even before images were distributed digitally. These demand letter s have been part of the copyright boot camp and form letters available to members to contact users and educate them about copyright misuse and to seek compensation if the images are not licensed.

On January 11, Maryland State Senator Edward Reilly (R) introduced a bill, HR 65 before the state legislature to regulate copyright demand letters. The bill is aimed at preventing copyright owners from “making certain assertions of copyright infringement in bad faith” and stipulates that a court may consider, among other factors, the absence of a certificate of copyright registration accompanying the letter as evidence of bad faith. The proposed remedies include the possibility of courts costs, attorney’s fees, and treble damages, including fees up to $50,000. On January 25, 2017 the Maryland State Senate Finance Committee held hearing on the bill. DMLA; Getty Images, the Copyright Alliance, MPAA, Comcast, BMI Music and other s representing creators and owners of content testified at the hearing as to the problems and burdens imposed by such a bill and provided written opposition. A copy of DMLA’s letter to the finance committee opposing the bill is [here]. The associations representing all the visual artists unanimously joined in the opposition as it would subject all copyright owner to unfair burdens in seeking compensation for infringements and violate federal copyright law. Joining our letter were the Society of Media Photographers (ASMP), National Press Photographers Association (NPPA), Professional Photographers of America (PPA), North American Nature Photography Association (NANPA), American Photographic Artists (APA), the Graphic Artist Guild (GAG) and Shaftel & Schmelzer.

Last week we learned that the Maryland Senate Finance Committee was not going to vote on the bill and as to not embarrass the member of the Finance Committee who had introduced the bill. Thanks to the Copyright Alliance for alerting us to so promptly so we could respond so quickly and for Getty Images for attending and speaking directly with Senator Reilly before the hearing. The entire content community mobilized to avoid a very problematic state bill. We will need to stay alert for other state legislatures who may feel the need to protect their citizens if complaints arise over copyright enforcement. Copyright is very different from patents and there is a push to stem what is known as patent trolling. We need to avoid being swept into the same category of bad actors. . The underlying cause in this bill seemed to be a lack of understanding as how images are licensed and the value of a rights managed image.

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SUPREME COURT AGREES TO TAKE ON COPYRIGHT CASE

by Nancy Wolff, DMLA Counsel

The U.S. Supreme Court has agreed to hear a case concerning when a prevailing party in a copyright case is entitled to recover its costs of litigation. Section 505 of the Copyright Act states that in copyright cases “the court in its discretion may . . . award a reasonable attorney’s fee to the prevailing party.” Because the law gives courts the discretion to award attorneys’ fees, over time several different standards have developed in the federal court system.

The Supreme Court has not considered this issue since 1994, when in Fogerty v. Fantasy, Inc. it rejected the tendency of some lower courts to engage in the “dual standard” of awarding generous fees to prevailing plaintiffs, while only awarding fees to prevailing defendants in extraordinary circumstances, such as when the plaintiff’s claim is deemed “frivolous” or in “bad faith.” The Court instead endorsed the three-factor analysis which looks to the “frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence. . . . so long as such factors are faithful to the purposes of the Copyright Act and are applied to prevailing plaintiffs and defendants in an evenhanded manner.”

Following the Fogerty case, courts began to award attorneys’ fees to defendants as well as plaintiffs which some say has been a deterrent to plaintiff’s initiating copyright cases against defendants for fear of losing and incurring the expense of attorney’s fees, particularly in hard cases involving fair use.

The present case, Kirtsaeng v. John Wiley & Sons, Inc., was before the Supreme Court only three years ago, albeit for an entirely different issue. In 2013, Supap Kirtsaeng, who had built a successful eBay business selling textbooks that he bought overseas, prevailed against a copyright infringement claim by the publisher John Wiley & Sons, Inc., and then sought to recover his attorneys’ fees. The Second Circuit Court of Appeals affirmed the district court’s decision to deny the motion for fees by focusing on the “objective reasonableness” of John Wiley & Sons’ pursuit of the case. Kirtsaeng, recognizing inconsistency among the circuit courts concerning the application of the three Fogerty factors, petitioned the Supreme Court to consider the appropriate standard for awarding attorneys’ fees to a prevailing party.

As the issue of attorney’s fees is significant in determining whether to bring copyright litigation or whether to settle a copyright infringement case, having guidance on this important issue from the Supreme Court and will be helpful to plaintiffs and defendants alike.

DMLA Participates in Various Meetings with the House Judiciary Committee

On November 3, Nancy Wolff, DMLA Counsel, attended the Rights Caucus for the House Judiciary Committee in Washington, DC.  The event was held in a Judiciary Committee hearing room in the Rayburn House Office Building.

The Creative Rights Caucus is a bi-partisan legislative “listening” committee co-Chaired by Representative Judy Chu (D-CA) and Representative Doug Collins (R-GA). It is dedicated to protecting the rights of content creators. More importantly, the Caucus aims to help the public understand that we cannot judge the entertainment industry by how well famous Hollywood or music stars are doing.

The event was organized by David Trust, Executive Director of the PPA (Professional Photographers of America), who also moderated the panel discussion. Panelists included photographer Denis Reggie, illustrator John Schmelzer, photographer Mary Fisk Taylor, graphic artist Lisa Shaftel, and photographer Michael Grecco.

There was an extraordinary turn-out of approximately 150 people and standing room only in the hearing room.

Afterwards Nancy joined the PPA and other association representatives in meeting some congressional staffers as well as Congressman Hakeen Jeffries of New York about the issues of the image licensing industry and about legislation to support a copyright small claims court and the modernization of the Copyright Office.

 

On November 10, 2015, Sarah Fix, DMLA President participated in a private meeting in Los Angeles bringing Members of the United States House of Representatives Judiciary Committee and their staff together with photographers and photo/visual editors representing ASMP, APA, DMLA and NPPA to discuss the marketplace realities facing professional photographers as small business owners and representatives of the creative class.

Organized and moderated by ASMP Executive Director, Tom Kennedy, it was a lively discussion covering a wide range of topics of concern to photographers including:

  • Modernization of the Copyright Office and the need to simplify copyright registration.
  • The creation of a Copyright Small Claims Court as a remedy for infringements that cannot realistically be pursued within the Federal court system.
  • The proliferation of infringement fostered by digital distribution systems and the commercial harm caused by such rampant infringements.
  • The challenges presented by “click-bait” sites whose entire business models are built around intentional infringement.

The House Committee seemed to respond well to the first-hand accounts from the presenters and generally agreeable to the ideas shared at the meeting including the Copyright Small Claims Court. It seemed clear that their legislative solutions would include individual creators.

 

DMCA Takedown Notices Require Fair Use Considerations

Lenz v. Universal Music Corp., Case Nos. 13-16106 and 13-16107, in the United States Court of Appeals for the Ninth Circuit.

 by Nancy Wolff and Josh Wolkoff, Cowan DeBaets Abrahams & Sheppard, LLP

The Digital Millennium Copyright Act (DMCA) was enacted in 1998 to address in part issues created by the internet and the widespread posting of content by users. In reforming the Copyright Act in 1978, the drafters thought that this Act would serve well into the future as it was content neutral but they could not foresee the way the Internet dramatically altered the way users exchanged content online and how perfect copies of copyrighted content could be virally distributed in seconds. Internet service providers (ISPs) were concerned with strict liability and monetary damages based on content posted by users and hosted on their servers over which they could not monitor and control. Section 512 of the Copyright Act was enacted to balance the concerns of ISPs and copyright owners. Qualified ISP were granted immunity from liability if they received a proper notice of infringement and expeditiously removed the infringing content.

There has been much litigation over the years regarding various aspects of the DMCA, including whether a copyright owner is required to consider whether the use made of the uploaded content is considered a fair use and not an infringement before issuing a takedown notice. Because of the massive amount of content uploaded by users, and the difficulty to search the ever increasing number of sites, content owners, including the music industry, employ technology to crawl the internet to find unlicensed content in order to end the ISP the requisite takedown notice.

A test case was brought in 2007 by Stephanie Lenz, a mother who sued Universal Music Group after YouTube removed a 29-second video of her toddler dancing to Prince’s “Let’s Go Crazy” in response to a DMCA takedown notice submitted by Universal Music Group, Prince’s music publisher. Not surprisingly, the Electronic Frontier Foundation, a pro user group supported Lenz in bringing this test case. Dubbed the “dancing baby case,” Lenz argued that her video was protected by the doctrine of fair use and that Universal’s takedown notice violated a section of the DMCA that provides liability for knowingly making material representations because it misrepresented that the video was infringing without considering fair use . Under the DMCA, a proper takedown notice must include a statement that the owner or its agent has a “good faith belief” that the use of the copyrighted work is not authorized under the law.

The case ultimately made its way to the Ninth Circuit Court of Appeals. An appeal the court was asked to examine whether fair use was a right under copyright and an authorized use, or a defense to infringement and unauthorized. In a significant ruling to content owners and ISP’s, the court issued a bright line rule that copyright holders must consider the fair use doctrine before issuing takedown notices to remove otherwise infringing content under the DMCA. The Court’s decision makes clear that a failure to do so can open the door to nominal monetary damages and attorneys’ fees for any material misrepresentations made (or improper procedures used) in the course of pulling content from service providers like YouTube. The court explained that fair use must be treated differently than other affirmative defenses because fair use is not merely an exception to an infringement – it is one that that is expressly “authorized by law” under Section 107 of the Copyright Act.

The Ninth Circuit took great pains, however, to qualify the thrust of its ruling, suggesting that it was “mindful of the pressing crush of voluminous infringing content that copyright holders face in a digital age.” In particular, a sender must only form a “subjective good faith belief” that the use is not a fair use or not authorized under the law. The inquiry “need not be searching or intensive” and, in fact, the Court recognized the role that computer algorithms and automated programs might play in making such fair use determinations and issuing proper takedown notices. The Ninth Circuit also confirmed that the question of liability for material misrepresentations does not hinge on whether or not the use is indeed a fair use: courts are “in no position to dispute the copyright holder’s belief even if [the court] would have reached the opposite conclusion.”

As a result content owners should review their notice and takedown procedures in order to ensure that their procedures give due consideration to potential fair uses. DMLA, in watching this case over the years, revised the declaration in its DMCA notice to include reference to a fair use review: I have a good faith belief that use of the material in the manner complained of herein is not authorized by COPYRIGHT HOLDER, its licensing representatives, or the law and is not a fair use.

Even if using recognition technology to find infringing uses, someone should review the use to determine if the use is a fair use or not. As fair use is determined on a case by case basis, and in not the easiest area of the law, the determination just needs to be made in good faith. As noted by the Ninth Circuit, it is not a material misrepresentation if a court might come out differently. Fair use is a judgment call after weighing the requisite four factors. DMLA has a webinar on fair use found [here] and the Copyright Office has published an index of fair use cases [http://copyright.gov/fair-use/]

*** You can find the DMCA takedown notice on the DMLA Document Library

COURT UPHOLD GRANT HEILMAN’S JURY AWARD FOR UNLICENSED PHOTO USAGE

by Nancy Wolff,  DMLA Counsel 

The Third Circuit, in Grant Heilman Photography, Inc. v. McGraw Educ. Holdings, LLC, 2015 WL 1279502 (E.D. Pa. Mar. 20, 2015), upheld the jury’s verdict that McGraw-Hill had not proven that Grant Heilman Photography, Inc. (“GHP”), was on notice as to McGraw-Hill’s unlicensed use of GHP’s photographs in its textbook publications prior to April 18, 2009. As such, GHP was not barred by the Copyright Act’s three-year-statute of limitation, 17 U.S.C. 507(b), from collecting damages for the overrun and unlicensed use of their images prior to April 18, 2009.

Background:

17 U.S.C. 507(b) states that a plaintiff cannot bring a civil copyright infringement claims, unless such claims are “commenced within three years after the claim accrued.” Circuits Courts, such as the Second (NY, CT and VT) and Third Circuit (NJ, PA and DE) has adopted the “discovery rule”, under which the three-year “countdown” does not begin to run until the plaintiff discovers, or should have discovered through due diligence, when the infringement took place.

On April 18, 2012, GHP brought a copyright infringement suit against McGraw-Hill citing 2,395 instances of McGraw Hill’s infringing use of GHP photographs between 1995-2011 (only a representative sample of 53 claims were presented to the jury). McGraw-Hill did not deny copyright infringement, but argued that GHP’s copyright infringement claims against McGraw-Hill for unlicensed use of their photographs prior to April 18, 2009—the purported accrual date of GHP’s claims—are barred under the Copyright Act’s three year statute of limitation.

In its review of the jury’s verdict for GHP, the court analyzed whether, as per the discovery rule, the evidence and testimony presented at trial showed that GHP “should have known the basis for [its] claims[, which] depends on whether [it] had sufficient information of possible wrongdoing to place [it] on inquiry notice or to excite storm warnings of culpable activity.” The court admitted that McGraw-Hill had a strong argument that an objectively reasonable copyright holder could recognize that McGraw-Hill’s numerous copyright infringements between1995-2009 were storm warnings “heralding possible greater infringement” by McGraw-Hill. However, in what it called “a very close question”, the court found that other evidence presented at trial indicated that the jury could have found verdict in favor of GHP. Mainly, there was evidence that:

  1. McGraw-Hill itself was unaware of the extent of its license infringements until 2013, so that a jury could find that GHP could not be on inquiry notice before April 18, 2009;
  2. McGraw-Hill’s records were not well organized, so that a jury could find that GHP would not have received concrete information even if it had inquired;
  3. There was an impliedly accepted “course of dealing” between McGraw-Hill and GHP, where McGraw-Hill would use GHP’s photographs without permission, and subsequently invoice GHP for the use;
  4. When GHP became aware of specific license infringements, it worked with McGraw-Hill towards resolving the issue, so that a jury could find that GHP (i) did not sit on its rights, and (ii) viewed past infringements by McGraw-Hill as officially resolved, and not as “storm warnings of future instability”;
  5. McGraw-Hill’s print run of its book was confidential, so that a jury could find the GHP, dependent on such information to determine whether McGraw-Hill had overrun its licenses, could not have been on inquiry notice.

Takeaway:

This case is a reminder that the industry’s procedures and course of dealings are relevant and that practices once prevalent before electronic licensing may need to be updated by publishers and licensors to ensure accurate licensing. A few years back the then PACA Editorial Relations Committee made great efforts to work with educational publishers on contracts ad practices that would protect the interests for both licensors and publishers in the digital era. Cengage was the most responsive and worked with the association in crafting language and licensing structures that took account the needs of both parties. DMLA remains open to further collaborations with other publishers. Hopefully this decision will reduce the litigation in this area and lead to reasonable resolutions as both publishers and image libraries need to work together to ensure that educational books contain images necessary to illustrate the history, culture and information reflective of our times.

Original article on original jury trial can be found here

Lived In Images Awarded Damages For Copyright Infringement Claims Against Content Farm

cleararts long logo

 

 

Los Angeles, California: Clear Arts – ImageProtect (www.imageprotect.com) an image tracking company, today announces that it has successfully negotiated a six figure settlement for damages of copyright infringement for Lived In Images, Inc., a stock photo archive specializing in home, garden, and interior design pictures against Buzzle.com, an online content farm.

“Clear Arts continues to grow successful outcomes from our operations and in the process has become more effective at monetizing revenues for our clients,” said Jonathan Thomas, CEO of Clear Arts. “We are undergoing rapid expansion in the market. Everyday our software tracks and gathers evidence of unauthorized use of copyrights and our legal teams in North America, Europe, and Russia close cases in our client’s favor. We have made great strides in combating the multi-billion dollar dilemma of copyright infringement.”

Visual content — photography, video, art, illustration, and multi-media — is intellectual property. It is owned and has tangible value. That value erodes when theft cannot be easily and cost-effectively deterred. When someone infringes a copyright, the copyright holder effectively is deprived of income (either directly or indirectly) that could be used to develop new or better content. Every year the content industries lose billions of dollars to copyright infringement, depriving the public of new creative works, costing industry jobs and hurting economic growth. The challenge for copyright owners is that the legal framework now in place requires the copyright owner, in order to protect its rights, to monitor and notice “each” individual act of infringement and document it. Clear Arts has automated this arduous process.

About Clear Arts: Clear Arts, Inc. (www.cleararts.com) is a technology company that builds tools to allow images to be easily tracked and monetized across the Web. Our proprietary and scalable image recognition software can determine where and by whom an image is being used online. We automate the tracking of copyright images, advertisements, and brands to enable measurement and monetization. Contact us at info@cleararts.com

Copyright Action Against Cafepress Permitted To Proceed Based On Merchandise Created From User Generated Content

by Nancy Wolff, DMLA Counsel

Photographer Steven Gardner was not pleased to find that four of his copyrighted images – “Alaska Wildlife,” “Polar Bears 10 Hidden Bears,” “Find 12 Tigers,” and “Harmony of Wolves” – were being printed and sold on merchandise by CafePress Inc., the company behind www.cafepress.com, without his permission. Gardner filed a copyright action against CafePress alleging that CafePress directly infringed his four images. No complaint was filed against the users that uploaded his images.

See entire article here

Copyright Action Against Cafepress Permitted To Proceed Based On Merchandise Created From User Generated Content

by Nancy Wolff, DMLA Counsel

Steven Gardner was not pleased to find that four of his copyrighted images – “Alaska Wildlife,” “Polar Bears 10 Hidden Bears,” “Find 12 Tigers,” and “Harmony of Wolves” – were being printed and sold on merchandise by CafePress Inc., the company behind www.cafepress.com, without his permission. Gardner filed a copyright action against CafePress alleging that CafePress directly infringed his four images.

CafePress allows users to upload images to its site, select from its menu of novelty items, including t-shirts and mugs, and CafePress handles the everything else, including printing the image on the merchandise and shipping. Users can also make their images available for third parties to purchase via various online marketplaces including CafePress’s own website, Amazon, and eBay.

In Gardner’s case, several CafePress users uploaded his images onto CafePress’s website and sold merchandise bearing images images through CafePress’s platform and other websites, generating approximately $6,000 in revenue. CafePress also ran advertisements featuring Gardner’s images.

CafePress moved for summary judgment, asking the court to find that there is no basis for a claim of direct copyright infringement, asserting that the Copyright Act requires some volitional conduct in order to find liability.

Generally, a party bringing a claim for copyright infringement must establish the following elements in order to succeed in a claim for direct copyright infringement: (1) ownership of the allegedly infringed material, (2) violation of at least one exclusive right granted to copyright holders, and (3) volitional conduct by the defendant. Here, the first two elements, ownership of the copyright and violation of at least one exclusive right were undisputed. Only this third element – volitional conduct by the defendant – was disputed.

CafePress argued that it did not act with the requisite volition because, just like cases involving satellite and cable television providers, it is the individual CafePress users – the ones who uploaded the images and offered the items bearing the images available for sale – who are directly liable for infringement, not CafePress. CafePress also attempted to rely on the immunities afforded to online service providers with respect to user-generated content under the Digital Millennium Copyright Act (DMCA). On the other hand, Gardner argued that CafePress is akin to the copy shops that courts have held directly liable for the conduct of its customers in copying course packs and the like.

In this instance, Gardner’s case was allowed to proceed past summary judgment because the court found that there were questions of fact as to whether CafePress’s conduct was sufficient to find liability. The Court’s decision was influenced by the fact that CafePress’s service is not completely automated and a significant portion of the alleged infringing acts was done by CafePress employees. In line with Gardner’s argument, the Court highlighted that, like the copy shop, “CafePress’s employees, not its customers, are the ones operating the machinery used by CafePress to create the allegedly infringing items.” While CafePress may act at the direction of its users initially, CafePress is the one actually making the merchandise.

In denying CafePress’s motion for summary judgment on the direct copyright infringement claim, the court kept alive the question of CafePress’s direct liability for another day. Notably, this decision also hints at the court’s willingness to chip away at protections afforded online service providers under the DMCA when the provider creates physical goods from user-generated content. This qualified immunity from monetary damages under the DMCA may be lost depending on the level of activity and involvement an online provider has in creating products with user generated content.