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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Copyright - Internet Library of Law and Court Decisions - Updated November 3, 2008

414 F.3d 400 (2d Cir., June 27, 2005)

Reversing the court below, the Second Circuit dismisses trademark infringement claims brought by a mark holder and website operator against a distributor of pop-up ads.  Such claims fail because "as a matter of law, [defendant] WhenU does not 'use' [plaintiff] 1-800's trademarks within the meaning of the Lanham Act, 15 U.S.C. § 1127 when it (1) includes 1-800's website address … in an unpublished directory of terms that trigger delivery of WhenU's contextually relevant advertising to [computer] users; or (2) causes separate, branded pop-up ads to appear on a [computer] user's computer screen either above, below, or along the bottom edge of the 1-800 website window."

The absence of such a use by WhenU of plaintiff's trademarks is fatal to 1-800 Contacts' trademark infringement claims, and mandated reversal of the District Court's grant of preliminary injunctive relief.  The District Court had enjoined WhenU from including the domain name of plaintiff's website in its unpublished directory, or causing pop-up ads to be displayed when that domain name is entered into the URL bar of a web browser, or as a search term.

In reaching this result, the Second Circuit agreed with the decisions of two other district courts - the Eastern District of Virginia in U-Haul Inc. v. WhenU.com Inc., 279 F. Supp. 2d 723 (E.D.Va. 2003) and the Eastern District of Michigan in Wells Fargo & Co., et al. v. WhenU.com Inc., 293 F.Supp.2d 734 (E.D.Mich. 2003) - each of which similarly held that WhenU's activities did not infringe the respective plaintiffs' trademarks because such activities did not constitute the requisite use of the plaintiffs' respective marks.

309 F.Supp.2d 467 (S.D.N.Y., Dec. 22, 2003), reversed in part and remanded, -- F.3d -- (2d. Cir., June 27, 2005)

Finding plaintiff likely to prevail on its claims of trademark infringement, the District court issued a preliminary injunction, enjoining the pop-up advertiser WhenU from delivering ads which are triggered by a consumer's entry of plaintiff's domain name in either his browser or a search engine, or from including plaintiff's domain name in defendant's proprietary directory, which is used to identify the ads to be delivered to consumers.  Defendant WhenU delivered pop-up ads of plaintiff's competitor to computer users when they typed plaintiff's domain name into either their browser or a search engine.  The court found such conduct likely to cause actionable "initial interest confusion" and to allow defendants to divert consumers seeking plaintiff's products to their own offerings, and thereby unfairly profit from plaintiff's goodwill.  Applying the eight factor Polaroid test, the court found that consumers were likely to be confused by defendants' actions, despite the branding of defendant's advertisements as "a WhenU offer."  As such, the court held that plaintiff was likely to prevail on its trademark infringement claims, and enjoined defendants from continuing to use plaintiff's domain name as a trigger for the delivery of advertisements. 

The court also held that plaintiff was unlikely to prevail on its copyright infringement claims, which arose out of the delivery of pop-up advertisements in a "window" which partially covered the 'window' in which plaintiff's site appeared on a consumer's computer screen.  The court found that this conduct neither violated plaintiff's right to display its copyrighted website, nor its right to create derivative works therefrom.  This later ruling was premised on the court's determination that defendant's ads are not sufficiently fixed to constitute an infringing derivative work.

The court's holding on plaintiff's trademark infringement claims is at odds with that reached by two other district courts - the District Court for the Eastern District of Virginia in U-Haul International, Inc. v. WhenU.com, 279 F.Supp. 2d 723 (E.D.Va. 2003), and the District Court for the Eastern District of Michigan in Wells Fargo & Co. v. WhenU., 2003 WL 22808692 (E.D. Mich. 2003), each of which refused to issue similar injunctive relief.  As the Southern District of New York court noted, "this Court disagrees with, and is not bound by these findings."

No. C 99-05183 MHP (N.D. Cal. 2000)

The court denied Napster Inc.'s ("Napster") motion for partial summary judgment, in which motion Napster sought to limit the damages and other relief that could be awarded against it for alleged direct or contributory copyright infringement by application of the safe harbor provisions of 17 U.S.C. section 512(a) of the Digital Millennium Copyright Act ("DMCA"). Section 512(a) limits a service provider's liability for copyright infringement by reason of the service provider's "transmitting, routing or providing connections for material through a system or network controlled or operated by or for the service provider ...".

The court held that Napster's role in the transmission of MP3 files by and among the various users of its system was not entitled to protection under Section 512(a) because such transmission does not occur through Napster's system. Rather, although Napster informs the user's computer of the location of a computer on which MP3 files the user seeks are stored, and its willingness to permit the user to download such files, all files transfer directly from the computer of one Napster user through the Internet to the computer of the requesting user. Similarly, any role that Napster plays in providing or facilitating a connection between these two computers does not occur through its system. "Although the Napster server conveys address information to establish a connection between the requesting and host users, the connection itself occurs through the Internet."

The court also held that issues of fact existed as to whether Napster was entitled to any protection under the DMCA at all. To be entitled to such protection, a service provider must meet the requirements of section 512(i) of the DMCA, which, among other things, obligates the service provider to "adopt[] and reasonably implement[] and inform[] subscirbers and account holders of the service provider's system or network of a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider's system or network who are repeat infringers ...". The court held that issues of fact existed as to whether Napster had appropriately adopted and informed its users of such an effective policy which precluded at this time any relief to Napster under the DMCA.

Civ. Act. No. 07-0293 (E.D. Va., March 11, 2008)

Court holds that minors entered into valid ‘click wrap’ agreement with defendant IParadigms LLC (“IParadigms”) by clicking an “I agree” icon which appeared directly below an online Usage Agreement, and indicated their assent to be bound thereby.  Plaintiffs were high school students that were directed by the schools they attended to submit class work to defendant IParadigm’s “Turnitin” website to check for plagiarism.  As part of this submission process, plaintiffs were obligated to assent to the site’s Usage Agreement.  Because the Usage Agreement contained a limitation of liability clause precluding liability to plaintiffs as a result of their use of the Turnitin site, the Court rejected plaintiffs’ copyright infringement claims, which arose out of defendant’s storage of plaintiffs’ class work in a database used to check student homework for plagiarism.

In reaching this result, the Court rejected plaintiffs’ claims that, as minors, they were not bound by the terms of the site’s Usage Agreement.  Because they had accepted the benefits of the agreement – the ability to submit their class work for grade to their respective schools was dependent upon their use of the site – they could not escape the contractual conditions upon which such benefits were rendered.

The Court further held that plaintiffs’ copyright infringement claims failed because defendant had made a permissible fair use of their works.  In reaching this result, the Court relied on the fact that Turnitin’s use of plaintiffs’ school work was highly transformative of the original works, in that it added plaintiffs’ school work to a non-publicly available database used only to check for plagiarism by students.  The Court also rested its holding of fair use on the fact that defendant’s use did not impact the market for plaintiffs’ works, as the copies Turnitin made thereof were not available to the public, but rather maintained in a non-public database.

The Court rejected the counterclaims advanced by defendant iParadigms, including a claim for indemnification as a result of the commencement of this action.  This claim was based on a separate “Usage Policy” found on the Turnitin site.  The Court held that plaintiffs were not bound by this policy, which was not linked or otherwise referenced in the Usage Agreement to which plaintiffs were in fact bound.  There was no evidence that plaintiffs were aware of this separate “usage policy,” which was contained in a link on each page of the Turnitin site.  As a result, and because the parties’ contract stated that it constituted the full agreement between the parties, the plaintiffs’ use of the site was held not to create a valid browse wrap agreement, and the claim for indemnification, predicated on the Usage Policy, was dismissed.

The remaining counterclaims advanced by iParadigms arose out of the use of the site by one of the plaintiffs to submit class work to an institution he did not attend.  These claims for trespass to chattels, and violations of both the Computer Fraud and Abuse Act and Virginia Computer Crimes Act, failed due to the absence of the requisite damage.

173 F.Supp.2d 1044, Civ. No. CV00-02963DDPAJWX (C.D.Cal., October 23, 2001)

Court denies plaintiff's motion for summary judgment, seeking to hold operator of computer fairs liable for copyright infringement as a result of the sale of allegedly infringing software by various unaffiliated vendors at fairs operated by defendants. The court held that issues of fact precluded it from determining that the fair operator was liable, on theories of vicarious and contributory infringement, for such sales. As to the former, the court held that issues of fact existed both as to whether the copyright infringement at issue provided a direct financial benefit to the fair operators, or whether the defendants had the requisite ability to control the vendor selling the allegedly infringing merchandise, both necessary to establish vicarious infringement. The court held that while defendants did not need to share in the proceeds of the goods in question to establish the requisite financial benefit, the sale of the infringing materials had to be the "draw" which attracted customers to defendants' shows, and hence produced revenue for defendants in terms of entrance and vendor fees. Issues of fact precluded the court from reaching a determination on this issue. Such issues also existed as to whether defendants had the ability to exercise the requisite control over the vendors, given, in part, the difficulty in determining whether the vendors in question had authority to sell the products in question. The court also held that issues of fact precluded it from holding defendants liable on a theory of contributory infringement, as the record did not permit the court to determine whether defendants had the requisite knowledge that infringing activities were being carried on at the fair. This determination was based, in part, on evidence that the amount of infringing goods sold at the fair was a relatively small percentage of the overall number of goods sold.

Civ. No. 95C0719 (D.Ill., May 28, 1997)

Plaintiffs, whose videotaped movements served as models for software defendants created for Mortal Kombat games, held not to be joint authors of software under Copyright Act because, inter alia, the source code which reduced this software to a form of fixed tangible expression was created solely by defendants. Such claim was also barred by an agreement between the parties, pursuant to which plaintiffs granted defendants all rights they had in the copyright of the images in question. The court further held that defendants' use of these images did not violate plaintiffs' common law right of publicity, as such claims were preempted by the Federal Copyright Act.

2007 WL 4207923 (S.D. Cal., Nov. 20, 2007)

After trial, court dismissed copyright infringement claims advanced by plaintiff against a competitor as a result of defendant’s alleged use of elements of plaintiff’s website on its own website.  Both parties operated websites at which they sold ‘changing portraits’ that contained antique photos that ‘changed’ into haunted spirits when viewed from different angles.  The court found that plaintiff did not possess a copyright in the individual elements of his site, which included unoriginal fonts, a ‘buy it now’ button, and the frame used to display the ‘changing portraits’ offered for sale on plaintiff’s website.  The court held that plaintiff did possess a copyright in the assembled compilation of these elements on his website.  Because defendant’s website was not ‘substantially similar’ to plaintiff’s, however, the court found that defendant was not guilty of copyright infringement.

The court spent the balance of its opinion addressing claims each of the competitors asserted against the other arising, inter alia, out of derogatory statements each made concerning the other, and claims and statements they made concerning their own activities, history and accomplishments.  These claims, including claims for defamation, false advertising and unfair competition, are of little interest to the legal community at large, and will not be discussed here.  Those interested can read the court’s decision which, in large part, dismissed these claims and counterclaims.

Civ. Act. No. 04-CV-3740 (E.D. Pa., March 30, 2005)

Court holds that defendants, who hired web developer to update their websites, have implied non-exclusive license to use resulting updated websites, and thus are not infringing any copyright developer had therein by making sites available for viewing on the Internet.  The Court accordingly granted defendants' motion for summary judgment, and dismissed copyright infringement claims brought by web developer against his former clients.

2004 WL 2750253, Case No. 1:02-cv-1011-DFH-TAB (S. D. Ind., November 10, 2004)

Court holds that defendant Funeral Depot Inc. ("Funeral Depot") may be infringing plaintiffs' copyright in advertising materials consisting, inter alia, of lithographs of caskets, by placing small thumbnail images of those copyrighted materials on defendant's website which are linked to allegedly infringing full size copies of those same materials that defendant arranged to have placed on the website of a third party.  While this third party website is owned by one of plaintiffs' authorized dealers, visitors to the web pages containing the challenged images view defendant Funeral Depot's contact information, as well as prices for these caskets set by defendant.  Because issues of fact existed as to whether the third party dealer had an implied license to use the advertising materials in this fashion, the Court could not determine if defendant was infringing plaintiff's copyright on the parties' respective summary judgment motions.  The Court did reject a number of defenses advanced by Funeral Depot to plaintiff's copyright infringement claims, including its fair use, copyright misuse and antitrust defenses.

Case No. 06cv1445 BTM (S.D. Cal., August 16, 2007)

Website containing compilation of online deals is protected by copyright as a compilation, as a result of plaintiff’s selection and arrangement, inter alia, of the deals included in the compilation.  Because the individual listings of the deals themselves are not protected by plaintiff’s copyright, however, in the absence of “bodily appropriation of [plaintiff’s] expression” or the “unauthorized use of substantially the entire item,” the use of a portion of those deals in the website of another will not rendered the defendant guilty of copyright infringement.  As a result, the court dismissed most of the copyright infringement claims advanced by Bensbargains.net, a website which posts compilations of online deals, against a competitor, which it accused of copying its listings of deals.  While the defendant did post on its site a number of the deals found in plaintiff’s compilations, it also posted other deals.  As to all compilations as to which the defendant copied less than 70% of the listings, the court dismissed plaintiff’s copyright infringement claim, finding defendant’s site was not sufficiently similar to sustain an infringement claim.  Only plaintiff’s claims as to those compilations as to which defendant copied over 70% of the listings, and those listings, in turn, comprised over 70% of defendant’s own compilation, were allowed to proceed.

478 F.Supp.2d 1240, No. C06-1002RSL (W.D. Wash., Jan. 18, 2007)

Court allows plaintiff Blue Nile to proceed with trade dress infringement claims against direct competitors arising out of their alleged creation of a web site that copied the "look and feel" of plaintiff Blue Nile's web site.  The Court denied defendants' motion to dismiss the trade dress claim, which motion was grounded on defendants' assertion that it was preempted by Copyright Act.  The Court held it could not resolve the preemption issue at the outset of the litigation given the limited factual record developed to date.  It also rested its decision on the precept that claims raising novel issues should not be resolved on motions to dismiss, without the benefit of a development of a complete factual record.

The Court did dismiss so much of plaintiff's complaint that alleged that defendants had violated the Washington Consumer Protection Act, and asserted claims for unfair competition, unjust enrichment and restitution.  These claims were all grounded on defendants' alleged copying of copyrighted elements of plaintiff's web site, and were thus preempted by the Copyright Act.  Notably, this copying formed the basis of copyright infringement claims that were also asserted in the complaint, and were not the subject of the instant motion.

Civ. No. 01-0408, 153 F. Supp.2d 763 (E.D. Pa., August 1, 2001) aff'd. 347 F3d 485 (3rd Cir. 2003)

FCC licensed AM-FM radio stations are permitted to broadcast sound recordings over the air in their geographic region without paying royalties to those who hold a copyright in those sound recordings. The United States Copyright Office promulgated rules ("Rules") making it clear that the statute under which such royalty free transmissions are permitted, 17 U.S.C. §114, does not extend to the simultaneous transmission of those radio broadcasts over the Internet via streaming. Those who wish to make such transmissions must accordingly obtain a license, with attendant fees, from the holders of the copyright in those sound recordings they seek to "stream". Holding both that the Copyright Office had the authority to promulgate rules interpreting the statute in question and had approximately exercised such authority here, the Court upheld the Rules against challenge.

351 F.Supp. 2d 1090 (W.D. Wash., December 21, 2004)

Court holds that the Digital Millennium Copyright Act ("DMCA") immunizes Amazon.com, Inc. ("Amazon") from copyright infringement claims arising out of the sale by nonaffiliated third party vendors on Amazon.com of photographs in which plaintiff claims a copyright.  In reaching this result, the Court held that Amazon had met both the DMCA's threshold requirements, as well as the requirements necessary to qualify for the protection of the safe harbor provisions of 17 U.S.C. § 512(c).  512(c) protects service providers from liability for copyright infringement by reason of their storage of infringing materials at the direction of a third party.

The Court dismissed plaintiff's Lanham Act claim, finding that it was the Copyright Act, and not the Lanham Act, that provided any remedy for the alleged wrongs at issue.  The Court also dismissed plaintiff's Washington State law Consumer Protection Act and tortious interference with business relations claims, finding Amazon immunized therefrom by operation of the Communications Decency Act.

Finally, the Court held that issues of fact precluded dismissal of copyright infringement claims plaintiff asserted arising out of the alleged use of one of its copyrighted images in an advertisement on a separate website owned by Amazon.

373 F.3d 544 (4th Cir., June 21, 2004)

Fourth Circuit holds that web site operator is not guilty of direct copyright infringement as a result of the posting on its site by third parties of images of commercial real estate in which plaintiffs hold the copyright.  In reaching this result, the Court reaffirms the validity of Religious Technology Center v. Netcom, which holds that a party must engage in "volitional conduct" that contributes to the infringement to be liable for direct copyright infringement. 

Importantly, the Court reached this result notwithstanding the fact that defendant's involvement in the posting of images to its site was not completely passive - rather defendant conducted a limited screening of all images presented by third parties to determine if they should be posted, eliminating those that either 1) exhibited obvious evidence of copyright infringement (such as a copyright notice in someone other than the poster) or 2) did not depict commercial real estate.

In a strong dissent, Circuit Judge Gregory argued that because of this gatekeeping activity, defendant's actions were not passive and thus were not entitled to protection under Netcom.  According to Judge Gregory, Netcom protects a defendant only when its involvement in the copying of copyrighted work is passive, and the automatic result of the operation of its facilities by a third party.

No. CV 05-3699-PHX-JAT (D. Arizona, May 19, 2008)

Court holds that unauthorized internet reseller of plaintiff’s tanning products is not guilty of trademark infringement as a result of its use of plaintiff’s trademarks in the meta tags of a website at which such products are sold, and as search engine keywords triggering the display of a link to such a website.  In reaching this result, the Court rejected plaintiff’s claim that such use of its marks causes actionable ‘initial interest confusion’ by directing those searching for plaintiff’s site to that of the defendant.  To sustain such a claim, holds the court, defendant’s conduct must be deceptive.  Plaintiff failed to meet this burden because defendant’s site does indeed offer plaintiff’s products for sale, and thus, its use of plaintiff’s mark in the site’s meta tags is not deceptive, but rather accurately describes the contents of defendant’s site.  This was true, held the Court, notwithstanding the fact that S & L offered plaintiff’s competitors products for sale on its site as well.

The Court also dismissed trademark dilution claims arising out of defendant’s use of plaintiff’s marks.  The Court held that, under the circumstances, defendant’s use of plaintiff’s marks in the meta tags of its site, and as search engine key words, constituted a permissible nominative fair use of those marks.  To establish that a use of a trademark qualifies as a permissible nominative fair use, the defendant must ‘do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.’  Notably, the Court reached this result because plaintiff failed to submit adequate evidence as to the impact this use of its marks had on the listing of defendant’s site in search results for plaintiff’s mark.  The Court left open the possibility that such a use of plaintiff’s mark may not qualify as a nominative fair use if in fact it caused defendant’s site to appear at or near the top of search engine results for plaintiff’s mark, and thereby suggested that plaintiff sponsored or endorsed defendant’s site. 

The Court denied so much of defendant’s motion for summary judgment which sought dismissal of copyright infringement claims arising out of its use of electronic renderings of plaintiff’s products to promote the sale of such products on its web site.  Issues of facts as to whether defendant copied such images from plaintiff’s web site, or created its own, precluded an award of summary judgment.  In allowing this claim to proceed to trial, the Court rejected defendant’s argument that its alleged use of plaintiff’s images was protected as a fair use.  Notwithstanding the fact that defendant’s use did not effect the potential market for plaintiff’s images – which plaintiff does not offer for sale – the Court rejected defendant’s fair use argument, pointing to the fact that its use was commercial, and copied plaintiff’s image, which was a creative work, in its entirety.

Finally, the Court rejected plaintiff’s claim for intentional interference with contractual relations, which arose out of prohibitions contained in contracts with plaintiff’s distributors precluding their resale of plaintiff’s products to Internet resellers such as defendant.  Defendant obtained plaintiff’s products from tanning salons, to whom the distributors were permitted to sell such products.  Because there was no evidence either that such tanning salons were acting as defendant’s agent in purchasing goods from plaintiff’s distributors, or that defendant directly purchased such goods from the distributors in breach of the prohibitions contained in their agreements, this claim failed.

189 F. Supp.2d 1051, 2002 U.S. Dist. Lexis 4166 (C. Dist. Cal., March 12, 2002), aff'd. in part, reversed in part, remanded by 357 F. 3d 1072 (9th Cir. 2004)

Court granted defendant America Online's motion for summary judgment, and dismissed copyright infringement claims advanced by plaintiff author as a result of the posting of his works by defendant Robertson on a Usenet newsgroup made available by AOL to its users and others, and stored for a period of 14 days on AOL's servers.  AOL's involvement in these infringing activities was passive - it did not post nor direct the posting of the infringing material to the Usenet newsgroup in question.  Rather, the claims against it were predicated on its agreement, via peering agreements, to store the content of the Usenet newsgroup to which this offending post was made on its servers, and to transmit that content to, and make it available for viewing by, others.

The court held that AOL could not be liable for direct copyright infringement, because such passive involvement in the infringing activity at issue was insufficient to sustain a direct copyright infringement claim.  The court similarly rejected plaintiff's claim that AOL was liable on a theory of vicarious copyright infringement, because it had neither the right and ability to supervise Robertson's infringing activity, nor a direct financial interest therein.  The court held that AOL's ability to block access (over its systems) to the infringing materials in question did not give it the requisite ability to control the infringing activity.  Rather, because AOL could not prevent Robertson from acting, it did not have the requisite ability to control the infringing activities necessary to make AOL vicariously liable for the acts of copyright infringement Robertson initiated.  Nor did AOL derive the necessary direct financial benefit from this infringing activity.  The court held that this required AOL to receive a substantial or significant benefit from the posting of the Usenet material in question, which the evidence showed it did not receive.

The court did, however, hold that issues of fact precluded it from determining whether AOL could be liable for the acts at issue on a theory of contributory infringement.  Under such a theory, "one who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be liable as a 'contributory infringer.'"  Here the court held that issues of fact existed as to whether AOL was a contributory infringer, given the fact that plaintiff's attorneys had sent an e-mail to an AOL designated address that informed AOL of the infringing activity in question, after which AOL continued to allow the material in question to be posted on its servers, and made available to others.  The court held that issues of fact existed as to whether AOL, which it found had not received this e-mail, should nonetheless be charged with notice thereof given its designation of the e-mail address to which it was sent with the US Copyright Office.  In reaching this conclusion, the court held that "providing a service that allows for the automatic distribution of all Usenet postings, infringing and noninfringing, can constitute a material contribution [to the infringing activities and hence expose the ISP to liability for contributory infringement] when the ISP knows or should know of infringing activity on its system yet continues to aid in [its] accomplishment."

Nonetheless, the court dismissed this claim, holding that AOL was protected therefrom by operation of the safe harbor provisions of section 512(a) of the Digital Millennium Copyright Act.  This section protects a qualifying internet service provider from liability for copyright infringement by reason of the intermediate and transient storage of digital material (such as e-mails) in the course of transmitting, routing or providing connections thereto.  The court held that AOL's practice of storing the Usenet postings in question on its servers for a period of 14 days was an intermediate and transient storage for the purpose of the DMCA, and that it met the other requirements of the DMCA necessary to obtain the protection of this provision.  The court accordingly dismissed plaintiff's claim for contributory copyright infringement against AOL.

357 F. 3d 1072 (9th Cir. 2004)

Affirming in part and reversing in part the court below, the Ninth Circuit grants so much of defendant America Online's motion for summary judgment which sought dismissal of claims of vicarious copyright infringement advanced by the plaintiff author.  These claims arose out of  the posting of plaintiff's works by defendant Robertson on a Usenet newsgroup made available by AOL to its users and others, and stored for a period of 14 days on AOL's servers.  AOL's involvement in these infringing activities was passive - it neither posted nor directed the posting of the infringing material to the Usenet newsgroup in question.  Rather, the claims against AOL were predicated on its commitment, via peering agreements, to store the content of the Usenet newsgroup to which this offending post was made on its servers, and to transmit that content to, and make it available for viewing by, others.

The Ninth Circuit affirmed the District Court's dismissal of plaintiff's vicarious copyright infringement claim, because plaintiff had failed to submit evidence that AOL "received a direct financial benefit from providing access to the infringing material" to its users.  Thus, "there [was] no evidence that indicate[d] that AOL customers either subscribed because of the availabil[ity of] infringing material or cancelled subscriptions because it was no longer available."

The Ninth Circuit also affirmed so much of the District Court's decision that denied AOL's motion to dismiss the contributory infringement claims plaintiff advanced.  "One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be liable as a 'contributory infringer.'"  Here the court held that issues of fact existed as to whether AOL had the requisite knowledge to be guilty of contributory infringement, given the fact that plaintiff's attorneys had sent an e-mail to an AOL designated DMCA notice address that informed AOL of the infringing activity in question, after which AOL continued to allow the material in question to be posted on its servers, and made available to others.  The court held that issues of fact existed as to whether AOL, which it found had not actually received this e-mail, should nonetheless be charged with notice thereof given its failure to continue to operate this e-mail address, which it had designated with the US Copyright Office as the address to which DMCA notices of copyright infringement were to be sent.    The Ninth Circuit held that this knowledge, coupled with AOL's storage of the infringing material on its servers, and provision of access thereto to AOL users, could render AOL liable for contributory copyright infringement.

The Ninth Circuit reversed the District Court's determination that AOL was protected from this potential liability for contributory copyright infringement by operation of the safe harbor provisions of section 512(a) of the Digital Millennium Copyright Act.  This section protects a qualifying internet service provider from liability for copyright infringement by reason of the intermediate and transient storage of digital material (such as e-mails) in the course of transmitting, routing or providing connections thereto.  The Ninth Circuit, affirming the District Court, held that AOL's practice of storing the Usenet postings in question on its servers for a period of 14 days constituted intermediate and transient storage in the course of transmitting or providing connection to digital material that qualified for protection if AOL met the requirements of the  safe harbor provisions of Section 512(a) of the DMCA.  However, reversing the District Court, the Ninth Circuit held that issues of fact existed as to whether AOL had reasonably implemented a polity to terminate repeat infringers, given, as stated above, that the AOL e-mail address to which DMCA notices of infringement were to be sent was not operational.  As implementation of such a policy was a prerequisite to entitlement to the protections of the DMCA, this branch of AOL's summary judgment motion was denied.

Finally, the District Court held that AOL could not be liable for direct copyright infringement, because AOL's passive involvement in the infringing activity at issue was insufficient to sustain a direct copyright infringement claim.  This claim was "abandoned" by Ellison on appeal.

No. 05-16964 (11th Cir., June 13, 2007)

The 11th Circuit holds that pursuant to 17 U.S.C. Section 201(c), the republication of 1200 National Geographic magazines in a 30 disc cd-rom set titled ‘the Complete National Geographic’ is a permitted revision of those collective works for which the National Geographic, the owner of the copyright therein, does not need additional license or permission from plaintiff, the owner of the copyright in various photos contained in these magazines.  The fact that this cd-rom set also contained a new 25 second video montage of the covers of 10 of the magazines it contained did not alter this conclusion.  In reaching this result, the 11th Circuit followed the decisions of the Second Circuit in Faulkner v. Nat’l Geographic Society, 409 F.3d 26 (2d Cir.) cert denied – US --, 126 S.Ct. 833 (2005) and the Supreme Court in New York Times Co. v. Tasini, 533 U.S. 483 (2001).  The 11th Circuit accordingly reversed its prior contrary decision, and remanded the case to the District Court for further consideration of plaintiff’s claim that the inclusion of one of his photographs in a magazine cover contained in this new 25 second montage infringed his copyright therein.

428 F. Supp. 2d 1369, 4:05 CV 00018-BAE (S.D. Ga. April 18, 2006)

Court holds that the use by defendant Camp Systems International ("Camp") of maintenance manuals prepared by plaintiff Gulfstream Aerospace Corporation ("Gulfstream") to advise owners of the need for maintenance of their Gulfstream aircraft is a permissible fair use of those manuals.  Court accordingly grants Camp's motion for summary judgment, and dismisses both copyright and trademark infringement claims advanced by Gulfstream arising out the placement by Camp of portions of those manuals on its computer system, which manuals Camp made available, and transmitted, to both the aircraft's owner and appropriate repair personnel.

165 F. Supp. 2d 1082, Case No. CV 01-0495 RJK (RNBx) (C.D. Cal. 2001)

Court grants defendants' motion for summary judgment, and dismisses claims brought by plaintiff, the owner of a copyright in the documentary "Manson", against defendant eBay arising out of the use by unaffiliated third parties of the eBay auction site to sell unauthorized copies of the Manson documentary. The Court held that plaintiff's claims for contributory and vicarious copyright infringement were barred by operation of Section 512(c) of the Digital Millennium Copyright Act. The DMCA offers service providers such as eBay protection from copyright infringement claims arising out of the storage of material on their web site provided, inter alia, (i) they do not have actual knowledge of the infringing activity or promptly upon gaining such knowledge move to prevent the use of their service to further it, (ii) do not receive a financial benefit directly attributable to infringing activity they have the ability to control, and (iii) expeditiously remove material from their service on receipt of an appropriate notice. The court held that eBay was entitled to protection under this section because (i) it did not have actual notice of the infringing activity, (ii) could not control it as the transactions were consummated off-line without eBay's involvement, and (iii) eBay had not received the requisite notice of infringing activity because, inter alia, the infringing articles were not appropriately specified in the notice sent by plaintiff. Plaintiff's claims for trademark infringement were mooted, held the Court, because of eBay's status as an innocent infringer, and its removal from its site of those advertisements plaintiff identified as improperly offering infringing copies of his movie for sale.

Case No. MS-07-6236-EJL-MHW (D. Idaho, November, 16, 2007)

Magistrate Judge grants in part and denies in part a motion to quash a subpoena issued pursuant to the Digital Millennium Copyright Act (“DMCA”).  The Magistrate Judge denied so much of the motion to quash which sought to prevent disclosure of the identity of the anonymous individual who posted a copy of a letter sent by a lawyer, for which the lawyer had obtained copyright registration, demanding the removal of other anonymous posts from a blog. 

The Court recommended granting so much of the motion to quash which sought to prevent disclosure of the identity of the anonymous individual who made the allegedly offensive posts that counsel sought to have removed in the demand letter in question.

75 F.Supp. 2d 1290 (D. Utah, Dec. 6, 1999)

The court issued a preliminary injunction, directing defendants to remove from their website statements that informed site visitors of the domain names of websites on which were posted materials that infringed plaintiff's copyright. The posting of such messages was held by the court to constitute contributory copyright infringement. The court reached this result despite the fact that the defendants' website did not contain links to the sites containing the infringing materials.

Defendants claimed that their actions did not constitute contributory infringement because the users defendants referred to the websites on which infringing content was posted did not themselves infringe plaintiff's copyright. As framed by the Court the issue "is whether those who browse any of the three infringing websites are infringing plaintiff's copyright. Central to this inquiry is whether the persons browsing are merely viewing the Handbook (which is not a copyright infringement), or whether they are making a copy of the Handbook (which is a copyright infringement)." The court held that by viewing a web page containing infringing material thru a browser, the user is himself infringing the copyright in the underlying work because in so doing he creates a copy of the infringing materials in his computer's random access memory.

505 F.Supp.2d 755, Civ. No. 06-cv-01726-LTB-CBS (D. Colo., Feb. 13, 2007)

Court allows pro se litigant to proceed with breach of contract claims against the Internet Archive, operator of the Way Back Machine, arising out of the Internet Archive's reproduction and display of historical versions of defendant's website without her consent.  Defendant alleged that such copying of her site constituted an acceptance of the site's terms of use, which require the payment of exorbitant fees for such copying, and even greater amounts as liquidated damages should the copier fail to pay the required copying fees.  The court denied plaintiff's motion to dismiss this claim, holding the counterclaims stated a viable cause of action for breach of contract.  In reaching this result, the court noted it could not determine if the Internet Archive knew at the time it copied defendant's site that that act constituted an acceptance of the site's terms of use.  The court could not resolve that question on the instant motion because the record before it was unclear both as to the manner in which such terms of use were displayed on defendant's site, as well as to whether Internet Archive received any notice thereof, given  its claim to only have accessed the site via a web crawler, and not via an individual.

The Court did dismiss so much of defendant's counterclaims that advanced claims for conversion, civil theft and RICO arising out of the same copying activities.  The Court dismissed the conversion claims both because Internet Archive did not exercise sufficient dominion over defendant's property merely by copying her site and displaying it online, and because Internet Archive removed defendant's site, and thereby ceased exercising any dominion over it, promptly upon her request.

The Internet Archive did not move to dismiss copyright infringement claims defendant asserted arising out of its copying activities, which will also go forward.

No. 00-55521, 280 F.3d 934 (9th Cir., February 6, 2002) withdrawn, -- F.3d --- (9th Cir., July 3, 2003)

The Ninth Circuit Court of Appeals holds that defendant's display on a visual search engine of lower resolution "thumbnails" of copyrighted images appearing elsewhere on the Internet, without the copyright owners' permission, is a protected fair use of those images under the Copyright Act. The court further holds that defendant's display of the full copyrighted image as part of its search engine results, either via inline linking or framing, infringes the copyright owner's right to publicly display the work. Such use of the full images as they appear on the copyright owner's site is not a protected fair use because it is done for the same purpose, to attract viewers, as the copyright owner's own use, and causes injury to the copyright owner by diverting users from his site.

In the decision that replaced its original decision of February 6, 2002, the 9th Circuit affirmed so much of the lower court's determination that held that Arriba Soft's production of thumb nails of plaintiff's copyrighted works to facilitate its display of image search results was a permitted fair use for the reasons stated in its original decision of February 6.  However, in the revised July 3, 2003, the 9th Circuit did not determine, as it had previously, that Arriba Soft's in-line linking to the full images of plaintiff's works constituted copyright infringement.  Instead, it reversed the lower court's determination on this score on procedural grounds, and remanded the issue to that court for further consideration.

77 F.Supp. 2d 1116 (C.D. Cal., Dec. 15, 1999) aff'd. in part, reversed in part, 280 F.3d 934 (9th Cir., Feb. 6, 2002)

Court holds that defendant's operation of a "visual search engine" which presents, without the owners' permission, "thumbnails" of copyrighted images that appear both without identifying copyright management information, and separated from the Internet web page in which the image was originally displayed, is a protected fair use under the Copyright Act which does not run afoul of the Digital Millennium Copyright Act ("DMCA").

The court's ruling that this represented a fair use was based predominantly on its determination that defendant's use was "transformative" of and "very different" from the original work. Said the court: "Plaintiff's photographs are artistic works used for illustrative purposes. Defendant's visual search engine is designed to catalog and improve access to images on the Internet. The character of the thumbnail index is not esthetic, but functional; its purpose is not to be artistic, but to be comprehensive."

Defendant's separation of the image from its copyright management information did not constitute a violation of Section 1202(b)(3) of the DMCA, because defendant did not have reasonable grounds to believe such separation would cause copyright infringement. The court reached this conclusion because defendant posted warnings on its site concerning the possibility of use restrictions, and referred the user to the originating web site, which could be visited via a provided link, to ascertain any applicable restrictions before copying. What made the images vulnerable to copying, according to the court, was their display by plaintiff on a web site.

78 Cal. App. 4th 362 (Cal. App., 2d Dist., Feb. 17, 2000)

The California Court of Appeals holds that a right of publicity claim asserted under California Civil Code Section 3344 seeking to stop an unauthorized third party from using photographs containing an individual's likeness is not preempted by federal copyright law, provided the claim is asserted against a party other than the holder of the copyright in the photograph.

Civ. Act. No. 02-571-KSF (E.D. Kentucky, February 27, 2003)

Court issues preliminary injunction, enjoining defendant from continuing to manufacture and sell Smartek microchips for use in connection with plaintiff's toner cartridges.  Defendant's chips contain software that circumvents authentication procedures installed by plaintiff in its own toner cartridges, which authentication procedures prevent use of unauthorized cartridges in printers manufactured by plaintiff.  These chips also contain a copy of Toner Loading software programs in which plaintiff holds a copyright, which programs are used in the operation of the printer.  In issuing this injunction, the Court finds that plaintiff is likely to prevail on its claim that defendant's conduct infringed plaintiff's copyright in its Toner Loading Programs, as well as on its claim that defendant's chips are products which circumvent technological measures used by plaintiff to restrict access to its copyrighted works in violation of the Digital Millennium Copyright Act ("DMCA").

271 F.Supp.2d 737, Civil No. WDQ-01-3898 (D. Md., July 10, 2003)

On the parties’ cross-motions for partial summary judgment, the Court found defendant Legg Mason guilty of copyright infringement as the result of its unauthorized copying and distribution of numerous editions of a financial newsletter published by plaintiff Lowry’s Reports.  An individual employed in Legg Mason’s research department contracted with Lowry’s to receive a single copy of its financial newsletter.  Her contract prohibited copying or dissemination of the newsletter or its contents.  Without authorization, that employee made numerous copies of various newsletters received which were faxed to Legg Mason brokers and branch offices, posted on the company intranet, and supplied to other members of the research department.  Legg Mason brokers downloaded copies of the newsletter from Legg Mason’s website.  After receipt of a cease and desist letter from Lowry’s, the employee continued to provide copies to other members of the research department.  These activities were conducted over an extended period of time.

The Court found that such activities constituted copyright infringement.  In reaching this result, the Court held Legg Mason vicariously liable for this misconduct of its employees, given that it had both the right and ability to supervise the conduct of its employees at issue, and a direct financial interest in exploitation of the copyrighted materials.

The Court denied so much of defendants’ motion that sought to reduce the statutory damages available to plaintiff for such infringement because defendant was an innocent infringer.  Such a defense was not available as the newsletters contained a copyright notice.

The Court further held that whether defendant was a willful infringer, and thus exposed to additional, and higher statutory damages, would have to await resolution at trial.

The Court did hold that plaintiff could not pursue claims for any indirect profits defendants made by use of the information contained in the newsletter.  While a copyright owner can recover, in addition to its own damages, profits an infringer made from the unauthorized use of his copyrighted materials, Lowry’s could not do so here because the link to such damages was too attenuated.  Thus, held the Court, plaintiff could not prove that profits made by Legg Mason as a result of investments it made were the result of information contained in plaintiff’s newsletters, which did not recommend specific investments, but rather provided informational gauges on the market as a whole.

The Court held that plaintiff could proceed with breach of contract claims, holding they were not preempted by application of the Copyright Act.

The same was not true of Lowry’s state law unfair competition claim, however, which rested on a ‘hot news’ theory.  This claim arose out of Legg Mason’s inclusion of factual information contained in Lowry’s reports – market predictors known as the ‘Lowry’s numbers’ – in a morning phone broadcast to its brokers.  Lowry’s could not pursue such a claim on a copyright infringement theory because the information conveyed – the ‘Lowry’s numbers’ - was held to consist of unprotectable facts.  And because Lowry’s unfair competition claim rested on the same elements as a copyright infringement claim – the broadcast was held akin to a ‘performance’ of the newsletter – it was held preempted by the Copyright Act.

It should be noted that this case was ultimately tried to a jury, which awarded Lowry’s just under $20 million as a result of Legg Mason’s infringing activities.  The case subsequently settled for an undisclosed sum.

999 F.2d 511 (9th Cir. 1993)

9th Circuit held computer repair company guilty of copyright infringement, as a result of its use of computer's operating software resident on the customer's computer to display the computer's system error log for the purpose of aiding repair.  To cause the customer's computer to display such software, the software was retrieved from the client's computer storage system, and placed in the computer's Random Access Memory ("RAM").  Such constituted the creation of a copy of the software.  As this use was unauthorized by the plaintiff, the manufacturer of the computer being repaired, it was held to constititue copyright infringement. 

983 F. Supp. 1167 (N.D. Ill., Nov. 13, 1997)

Defendant NAFED was guilty of direct copyright infringement because, without plaintiff's permission or authorization, NAFED obtained copies of plaintiff's copyrighted clip art and uploaded it onto computers hosting NAFED's website accesible to those using the web. Defendant Northwest, however, which hosted NAFED's site on its computers and made it available to those using the Internet, was neither liable for direct nor vicarious copyright infringement. Northwest only provided the means to copy plaintiff's work, much like the owner of a public copying machine used by a third party to copy protected material. It did not actually engage in the copying itself and accordingly, was not guilty of direct infringement. And because Northwest only received a flat fee from NAFED for its hosting activities that did not vary based on the use of NAFED's site, it did not profit from defendant NAFED's infringing activities, and hence was not guilty of vicarious infringement.

94 Civ. 0589 (S.D.N.Y., May 19, 1997) aff'd. 158 F.3d 674 (2d Cir. 1998)

Plaintiffs were permitted to copy court decisions published by West in a series of compilations, because the changes West made to those decisions, including the addition of parallel citations and the subsequent history of the case, together with the identification of the judge and attorneys involved in the action, and correction of citation errors, were insufficient to create a derivative work protectable under copyright law. The plaintiffs did not, nor did the court permit, the copying of West's key number head note system.

259 F. Supp. 2d 1029 (C.D. Cal., April, 2003) aff'd. -- F.3d -- (9th Cir., Aug. 19, 2004)

Granting defendants' motion for summary judgment, the District Court holds that neither Grokster Ltd. ("Grokster") nor StreamCast Networks Ltd. ("StreamCast") are liable, on theories of contributory or vicarious copyright infringement, for infringing plaintiffs' copyrights as a result of their distribution, respectively, of branded versions of Kazaa (Grokster) and Gnutella (StreamCast) software.  This software enables third party users to connect to peer-to-peer file sharing networks, over which they frequently share and download copyrighted materials without the consent of the owners of the copyrights therein.  The court held that defendants were not liable for contributory copyright infringement both because there were "substantial non-infringing uses" to which their software applications could be put, and because defendants were not involved in the third parties' use of their software after its distribution.  Similarly, the court held that defendants were not responsible for vicarious copyright infringement because they could not control the uses to which their software were put.  In making this conclusion, the court rejected plaintiffs' arguments that defendants should be held liable for vicarious infringement because, by altering the functionality of their software, defendants could prevent it from being used to infringe the copyrights of third parties.

___ F.3d __ (9th Cir., August 19, 2004)

Affirming the court below, the Ninth Circuit Court of Appeals holds that distributors of Kazaa and Morpheus are not liable for the infringing uses to which their peer-to-peer file sharing programs are put by third parties.  These third parties use defendants' software to make and distribute unauthorized copies of sound recordings and motion pictures in which plaintiffs hold copyrights.  Because, however, defendants' programs can also be used for 'substantial non-infringing uses,' such as the sharing of works either in the public domain, or with the permission of the holders of the copyrights therein, the Ninth Circuit held that defendant distributors are not liable as contributory infringers for such third party activities.  These claims fail because defendants did not have the requisite knowledge of the users' infringing activities at a time when they contributed to, or could take steps to prevent that infringement, given the decentralized nature of defendants' software.  Nor are the distributor defendants liable as vicarious infringers, as they did not have the requisite right and ability to supervise, or prevent, the infringing conduct of the users of their software.  The Ninth Circuit accordingly affirmed the District Court's grant of partial summary judgment to the distributor defendants, dismissing so much of the complaint which asserted copyright infringement claims arising out of those versions of defendants' software being distributed at the time of the District Court's decision.

5 F. Supp. 2d 823 (C.D. Cal. April 27, 1998)

Court enjoined Internet Entertainment Group ("IEG") from distributing on its adult-oriented subscription website a video tape depicting plaintiff and Pamela Anderson Lee engaging in sexual activity. Such dissemination would infringe plaintiff's and Ms. Lee's copyright in the video, as well as violate their rights of publicity and privacy. In so holding, the court rejected IEG's claim that, for $16,500, it had purchased a non-exclusive license to display the video. This claim was disproven by statements from both plaintiff and Ms. Lee that they had not conveyed such license, by evidence that plaintiff had rejected a $1 million dollar offer to grant such a license and finally, by evidence that the alleged source of this license admitted that he did not have (and therefore could not convey) a right to distribute the tape. The Court also held that IEG could not display small excerpts or stills from the video under the guise of the fair use doctrine.

Civ. 02-C-0038-C (W.D. Wis., May 2, 2002)

Court granted defendants' motion for summary judgment and dismissed copyright infringement claim brought by plaintiff, who asserted that defendants had copied a series of FAQs (Frequently Asked Questions) found on plaintiff's website.  The court held that a comparison of the parties' respective FAQs did not support plaintiff's contention of copying.  While there were similarities between the FAQs, they arose from the fact that the parties each created their FAQs to answer factual questions about their respective tanning products, which were themselves similar.  These similarities were not the product of copying.  As neither the ideas and facts presented in these FAQs nor the FAQ format itself could be copyrighted, plaintiff's copyright infringement claim failed.  The balance of plaintiff's claims - unfair competition and trademark infringement arising from the same alleged copying - were dismissed on preemption grounds.

376 F.Supp.2d 877, Civ. No. 03 C 4349 (N.D. Ill., July 12, 2005)

After a bench trial, court holds that defendant Bitstream Inc. is neither guilty of contributory copyright infringement nor indirect trademark infringement as a result of its creation and distribution of a software program which permits the user to copy and incorporate into a document any typeface font, whether or not the owner of the copyright in such font has consented to such copying and use.  In an earlier decision, the court, on defendant’s summary judgment motion, dismissed claims of direct copyright and trademark infringement, as well as vicarious copyright infringement, arising out of defendant’s activities.  The court’s decision was grounded principally on the absence of admissible evidence that defendant’s software had been used by its licensees to copy typeface fonts in which plaintiffs held copyright.  The Court also based its decision on its holding that defendant Bitstream neither was aware of any such infringing activities, nor sought to increase the sales of its software by advertising that its products could be used for that purpose.

121 S. Ct. 2381 (June 25, 2001)

The Supreme Court holds that The New York Times and various other publishers, by licensing all of the content of various editions of their newspapers and magazines to operators of electronic databases, which in turn permit users to search those databases for, and retrieve individual articles that appeared in such newspapers and magazines, violated the copyrights possessed in such articles by the freelance authors thereof. The Supreme Court held that Section 201(c) of the Copyright Act does not provide either the Times or other publishers who are parties to this litigation with the right to so license their publications, because the databases at issue reproduce the individual articles separate and apart from the collective work in which the publishers hold a copyright.

337 F. Supp. 2d 1195 (N.D.Cal. September 30, 2004)

Court holds that defendants Diebold Incorporated and Diebold Election Systems Inc. (collectively “Diebold”) violated Section 512(f) of the Digital Millennium Copyright Act (“DMCA”) by having outside counsel send DMCA take-down notices to Internet Service Providers (“ISPs”).  These notices demanded that the ISPs disable access to or remove a website containing an archive of emails prepared by Diebold employees in which “some employees acknowledged problems associated with [Diebold’s electronic voting] machines.”  Diebold claimed a copyright in this archive, which had apparently been stolen and posted on the Internet.  The take-down notices also sought to disable a hypertext link to this website, found in an online newspaper article critical of Diebold’s electronic voting machines.  The Court held that because “portions of the email archive are subject to fair use protections,” the notices constituted knowing material misrepresentations that material or activity infringes Diebold’s claimed copyright in the archive in violation of Section 512(f), exposing Diebold to liability for the damages and attorneys’ fees resulting from actions taken by the ISPs in response to these notices.  It has subsequently been reported by the Online Policy Group that Diebold paid $125,000 to plaintiffs and their attorneys in satisfaction of this claim.

Civ. No. 04-CV-3918 (E.D. Pa., March 10, 2006), affirmed -- F.3d – (3rd Cir., July 10, 2007).

District Court dismisses claims charging Google with direct copyright infringement as a result both of its archiving Usenet postings that contain excerpts of plaintiff’s copyrighted works, and its display of excerpts of plaintiff’s copyrighted website in search results.  The District Court holds that Google has not engaged in the requisite volitional conduct necessary to be held guilty of direct copyright infringement because such copying is a by-product of the automated operation of Google’s search engine and related technologies.  As such, Google’s acts are akin to a user’s use of its ISP to transmit infringing material to a third party, which do not give rise to direct infringement claims against the ISP.  On appeal, the Third Circuit affirmed the dismissal of Parker’s direct infringement claims, on the grounds that Google’s archiving of infringing Usenet postings lacked the requisite “volitional conduct.”

Relying on Field v. Google, (D. Nevada 2006), the District Court also dismisses direct copyright infringement claims arising out of Google’s presentation to users of “archival” copies of plaintiff’s website in search results denominated “cache.”  The District Court holds that Section 512(b) of the Digital Millennium Copyright Act (“DMCA”), applicable to copyright infringement claims arising out of “system caching,” bars such claims here.

The District Court also dismissed vicarious and contributory copyright infringement claims arising out of Google’s archiving of Usenet posts created by third parties that themselves allegedly infringe plaintiff’s copyright, both because Google lacks the requisite knowledge of such inadequately identified infringing activity, and because it does not derive sufficient direct financial benefit therefrom.  This decision too was affirmed by the Third Circuit on appeal.

The District Court further dismissed defamation, invasion of privacy and negligence claims advanced by plaintiff arising both out of Google’s archiving of Usenet posts authored by third parties that allegedly defamed plaintiff, as well as out of Google’s storage and display in its “cache” of a website that purportedly defamed plaintiff.  Such claims are barred by the immunity afforded Google by Section 230 of the Communications Decency Act (“CDA”), a decision affirmed on appeal.

Finally, the District Court dismissed Lanham Act claims brought against Google as a result of its alleged republication of a website operated by a third party titled “the Official Roy Gordon FAQ.”  The District Court held that the third party was not violating the Lanham Act both because it was not using a mark in commerce as it was not selling anything on its site, and because consumers were not likely to be confused as to the origin of the site, given the criticism of plaintiff found thereon.  The Lanham Act claims against Google also failed because it was not a “moving force” or “active participant” in the creation of this site, or the alleged use thereon of plaintiff’s ‘mark.’  The Third Circuit affirmed the dismissal of the Lanham Act claims because of the absence of a likelihood of consumer confusion.  The Court also affirmed the dismissal of plaintiff’s trade disparagement claims because the statements at issue on the third party website were not made in the context of commercial advertising.

It should be noted that the plaintiff appeared pro se.  In addition, the Third Circuit’s opinion was denoted “Not Precedential.”

Case No. CV 04-9484 AHM (SHx) (C.D. Cal., February 2006) aff'd. in part, reversed in part, remanded, 487 F.3d 701 (9th Cir., May 16, 2007).

On a motion for a preliminary injunction, the Court holds plaintiff likely to succeed on copyright infringement claims arising out of defendant Google's display of "thumbnail" images of plaintiff's copyrighted photographs in response to users' searches for images matching their description.  The Court held that it is likely to find that such a display is not a fair use of plaintiff's works, given, inter alia, its commercial nature, and the fact that such use likely interferes with a market for plaintiff's photographs.

The Court further holds that plaintiff is not likely to prevail on copyright infringement claims arising out of Google's use of "in-line links" that incorporate into Google's own web pages the web pages of third parties that themselves contain infringing copies of plaintiff's copyrighted photographs.  These "in-line links" allow users who are interested in a thumbnail image presented in Google's search results to view the actual image on the web page on which Google found it.  The Court held that it is not likely to find that Google directly infringed plaintiff's copyrights by such conduct, because, adopting the "server test," it is the third parties who created the websites that contain the infringing images, and not Google, that are displaying and/or distributing them in violation of plaintiff's copyright.

The Court further held that it was not likely to find Google guilty of contributory or vicarious copyright infringement as a result of such third party displays, notwithstanding any advertising Google may deliver to the web pages that contain such images, or revenue Google may derive therefrom.  Google is not guilty of vicarious infringement because it does not possess the requisite ability to control the content of such third party sites, or compel the third parties that operate them to remove infringing content found thereon.  Google's ability to remove such websites from search engine results does not constitute such control.  Nor, the Court stated, was it likely to hold that Google encourages or assists such infringement sufficiently to be guilty of contributory infringement.  The Court held that the record before it was insufficient to establish that the third parties displaying plaintiff's content were motivated by the revenue they might derive from the display of Google ads or that such revenue contributed to their posting of the infringing images in question.

487 F.3d 701, No. 06-55405 (9th Cir., May 16, 2007).

The Ninth Circuit holds that Google’s creation and display in search results of lower resolution ‘thumbnail’ copies of infringing images found on third party websites for the purpose of aiding the public in locating such images is a fair use that does not infringe the rights of the holder of the copyright therein.  In reaching this result, the court relied largely on the transformative nature of the thumbnails Google created, which, by facilitating the public’s ability to search the web for images, serve a different purpose than the original images, which are designed to entertain.  The Ninth Circuit accordingly reversed so much of the decision of the District Court which had enjoined Google from displaying such thumbnails in its search results. 

The Ninth Circuit further held that framing infringing images found on third party web sites via “in-line linking” to such sites does not directly infringe the display or distribution rights of the holder of the copyrights in such images.  As part of the process by which it provides results to those who search for images, Google presents a ‘framed page,’ the bottom half of which comes directly from the third party web site on which the image is found, and contains that image.  For the purpose of direct infringement, the Ninth Circuit endorsed the “server test” applied by the District Court.  Under this test, a party infringes the display rights of a copyright holder in an image when it stores a copy of that image on its own server, and delivers it to a third party.  When a party merely provides a link to a third party website on which such infringing material can be found, it is that third party web site, and not the party providing the link, that directly infringes the display rights of the copyright holder by causing that infringing image to be displayed on a user’s computer screen.  Applying this test, Google did not directly infringe by providing “in-line links” to third party websites that themselves contained infringing images.

Reversing the District Court, the Ninth Circuit held, however, that Google is potentially liable on a theory of contributory infringement for infringing plaintiff’s copyrights as a result of its provision of such in-line links.  According to the Court, “Google could be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10’s copyrighted works, and failed to take such steps.”  Issues of fact as to the adequacy of notices sent by Perfect 10 alerting Google that it was in fact providing links to third party web sites that contained infringing images, of Google’s response thereto, and of Google’s ability to remove such infringing sites from its search results, mandated denial of plaintiff’s motion for summary judgment.  Also left for the District Court to resolve on remand was whether the Digital Millennium Copyright Act (“DMCA”) immunized Google from liability for such contributory infringement, an issue the District Court had not addressed because it had determined that Google was not likely to be found liable for contributory infringement.

Finally, the Ninth Circuit held that Perfect 10 was unlikely to prevail on vicarious infringement claims arising out of Google’s provision of in-line links to third party web sites that contained infringing images.  The Court held that Perfect 10 had not demonstrated that Google had the ability to control such third party websites, and compel them to remove infringing images found on their sites, a prerequisite to a finding of vicarious infringement.

The Ninth Circuit resolved the copyright infringement claims Perfect 10 asserted against Amazon.com in a similar fashion.  These claims arose out of the provision by Amazon.com to users of its site of Google search results, “framed” via in-line links. By this arrangement, the Amazon user received the same search result as the Google user.  Accordingly, the Court reached the same conclusions concerning Amazon’s conduct as it did concerning Google’s.  All claims save that which sought to hold Amazon.com liable on a theory of contributory infringement were held likely to fail.  The contributory infringement claim, arising out of Amazon’s provision of in-line links to third party sites that contained infringing images, was remanded for further consideration by the District Court.

488 F.3d 1102, No. 04-57143 (9th Cir., March 29, 2007) cert. denied, 128 S.Ct. 709 (2007)

The Ninth Circuit allows Perfect 10 to pursue copyright infringement claims against defendants, who provide web hosting and credit card billing services, arising out of the unauthorized posting on the web by their third party customers of “adult” images in which Perfect 10 holds copyrights.  Questions of fact precluded a determination of whether defendants were immunized from monetary liability for such claims by the Digital Millennium Copyright Act (“DMCA”).  Such immunity extends only to service providers who “reasonably implement” a policy for terminating those of their customers that repeatedly infringe copyrights.  In considering this question, the Ninth Circuit held  courts should consider not only the manner in which the defendants responded to “take down” infringement notices sent by the plaintiff copyright holder, here Perfect 10, but also the manner in which they responded to similar notices from third party copyright holders.  Because the District Court failed to consider whether defendants terminated customers identified in such third party “take down” infringement notices, the Ninth Circuit could not determine whether defendants “reasonably implemented” a compliant DMCA policy, and thus whether they were entitled to DMCA immunity.  The case was accordingly remanded to the District Court for further consideration.

The Ninth Circuit held that defendants had no obligation to respond to the “take down” notices provided by Perfect 10, or take steps to prevent the infringing conduct alleged therein, due to Perfect 10’s failure to provide such notices under penalty of perjury.  Absent the sworn acknowledgement required under the DMCA that the complainant is both an authorized representative of the copyright owner, and has a good faith belief that the material at issue is unlicensed, the service provider has no obligation to act upon the notice. 

Nor, held the Ninth Circuit, were defendants obligated to take action against purported “red flag” sites defendants serviced, which included sites that purported without authorization to provide users with passwords to access plaintiff’s materials, or other websites bearing names such as “stolencelebritypics.com” or “illegal.net.”   The DMCA does not impose on service providers the obligation to conduct an affirmative investigation into the bona fides of such sites.  To qualify as a “red flag” site that imposes an obligation on a service provider to act, held the Ninth Circuit “it … need[s] to be apparent that the website instructed or enabled users to infringe another’s copyright.”

The Ninth Circuit allowed Perfect 10 to pursue direct copyright infringement claims against the defendants as a result of the posting of infringing images on hornybees.com.  The court held that sufficient evidence of defendants’ direct involvement in the operation of that site was presented to survive a motion for summary judgment.

Finally, the Ninth Circuit held that the Communications Decency Act immunized defendants from the unfair competition, false advertising and right of publicity claims advanced by Perfect 10.

2002 U.S. Dist. Lexis 7333, CV 01-2595 LGB (C.D. Ca., April 22, 2002)

Court issues preliminary injunction against Cybernet Ventures, which operates an Age Verification Service, based on the use by web sites operated by third parties of various images in which plaintiff held the copyright, or featuring a model who had assigned her right of publicity to plaintiff. 

Cybernet Ventures operates the Age Verification Service "Adult Check."  Participating web sites put a script on their site which direct first time users to Cybernet, who sells them access to the Adult Check family of sites.  The user is thereafter free to visit Adult Check sites for a set period of time.  The fees generated by this user are paid to Cybernet, who splits them with the web site which sent the user to Cybernet.  To assist the user in finding Adult Check sites to his liking, Cybernet provides both a series of links as well as a search engine.  It also advertises its network. 

Cybernet takes an active interest in the content of Adult Check sites, employing a staff of 12 to review the site both before it is admitted to the Adult Check family, and periodically thereafter.  The content of the site is reviewed by Cybernet to prevent the inclusion of prohibited images.  Cybernet also provides comment on the site's layout.  The images on each site, however, are not provided by Cybernet.  Instead, each site is run by a third party, who is responsible for locating the images, arranging to have the site hosted, and advertising the site.

Perfect 10, which holds the copyright in a number of images of nude women made available to the public both on its web site and in a magazine, brought this suit, charging that web sites in the Adult Check family contained over 10,000 images in which Perfect 10 held the copyright. 

The court determined that Perfect 10 was likely to prevail on its claims contributory and vicarious copyright infringement against Cybernet, as well on its claims of unfair competition under Cal. Bus. and Professions Code Section 17200.  The court held that Perfect 10 was likely to prevail on its contributory infringement claim because Cybernet was likely to be held to have the requisite notice of the infringing activities at issue, and to have materially contributed to this infringement by its operation of the Age Verification Service, and particular its collection of fees for, and advertising of the web sites in question.

The court further held that Perfect 10 was likely to prevail on its vicarious infringement claim, because Cybernet had the ability to control the web sites, as evidenced by the review of its content it conducted, and received a direct financial benefit from the presence on these web sites of the infringing images.  Lastly, the court held that Perfect 10 was likely to prevail on its unfair competition claim, because Cybernet was likely to be held to have aided and abetted a violation of various models' right to publicity, again by virtue of its knowledge of infringement, and contributed thereto by virtue of its operation of the AVS system.

The court further held that Cybernet was unlikely to be able to avoid this liability under the safe harbor provisions of the Digital Millennium Copyright Act, because the court was likely to hold both that the DMCA policy Cybernet adopted failed to comply with the DMCA, and that Cybernet failed to reasonably implement such a policy, or terminate repeat infringers.  Cybernet was also unlikely to be able to seek the protections of the DMCA because it received a financial benefit directly attributable to infringing activity it had the right and ability to control.

The court accordingly issued a preliminary injunction, which prohibited Cybernet from utilizing or linking to the images in question.  The injunction further obligated Cybernet to stop linking to sites containing the images in question where Cybernet had either notice thereof, or knew or should have known of the presence of the images, under circumstances specified in the injunction.  The injunction also obligated Cybernet to undertake reviews both of sites seeking to become members of the Adult Check network, and of designated existing sites, to ascertain whether they were using any of the images at issue, and to bar such new sites from entering the network without proper rights documentation.  The scope of this injunction is discussed in greater depth in the accompanying "in depth" analysis of this decision.

968 F. Supp. 1171 (N.D. Tex. 1997)

Webbworld, which operated a subscription website on which it offered users access to unlicensed copyrighted images originally appearing in publication owned by plaintiff, held liable for copyright infringement. It was no defense that the infringing images were originally uploaded by third-parties onto the adult newsgroups from which Webbworld drew its content. Court further held Webbworld's principals liable for vicarious copyright infringement as a result of this activity, due to their financial interest in and control over the operations of Webbworld's site

839 F.Supp. 1552 (M.D. Fla. 1993)

In this case, Playboy charged the defendants, operators of a bulletin board system, with copyright and trademark infringement, as well as unfair competition. Defendants' bulletin board system is accessible via telephone modem to subscribers. Subscribers uploaded onto the bulletin board various pictures published by Playboy to which Playboy owned the applicable copyright. In addition, these subscribers, in the description of the material they provided other bulletin board users, utilized Playboy's trademarks Playboy and Playmate. Lastly, in some instances, Playboy's trademark was removed from the photograph, and replaced with the name of the bulletin board service and its telephone number.

On these facts, the court granted plaintiff's motion for partial summary judgment, finding defendants guilty of copyright and trademark infringement, as well as unfair competition. The court reached such conclusion notwithstanding defendant Frena's claim both that he did not upload the images onto his bulletin board system (subscribers did) and he was unaware of the presence of such images on his service until such time as he was served with the summons and complaint in this action, at which time he caused them to be deleted.

982 F. Supp. 503 (N.D. Ohio, Nov. 25, 1997)

Operators of bulletin board service found liable for both direct and contributory copyright infringement. The BBS operators had adopted a policy which encouraged their subscribers to upload GIFs onto the BBS in exchange for additional usage credits of the BBS system. After uploading, defendants briefly checked the new files to ascertain that they were neither pornographic nor blatantly protected by copyright, and then posted those files which passed muster onto the BBS. Approximately 400 GIFs uploaded by subscribers and posted on the BBS contained adult photographs in which plaintiff owned the copyright. This constituted direct copyright infringement, notwithstanding defendants' claim that they were unaware that plaintiff was the owner of the copyright in the images in question.

No. 97 Civ. 1140, 1998 U.S. Dist. Lexis 10201 (S.D.N.Y., July 10, 1998)

Unauthorized posting on organization's website of photographs plaintiff took at organization events held to constitute copyright infringement. Such infringement was not willful, however, because the defendant organization did not know who took the photographs at the time they were posted on its site, because plaintiff, on prior occasions, had authorized defendant's use of other photographs he had taken, and because of the parties' apparent confusion over the organization's policies concerning appropriate use of photographs taken at organization events. As a result, plaintiff was only awarded damages in an amount equal to the statutory minimum of $500 for each infringement.

857 F. Supp. 679 (N.D. Cal. 1994)

Court of Session, Edinburgh (Lord Hamilton, J.) (October 24, 1996)

2000 WL 1705637, Civ. No. 305666 (Sup. Ct. Ca., November 7, 2000)

Court holds that Section 230 of the Communications Decency Act ("CDA") renders Ebay immune from a suit charging that the use by third parties of Ebay's web site to sell "bootleg" musical recordings violates Cal. Bus. and Professions Code Section 17200.

No. 95 C2154, U.S. Dist. Lexis 11789, 13 F. Supp. 2d 782 (N.D. Ill., July 29, 1998)

Court holds that unauthorized commercial distribution of shareware posted on the Internet in violation of express restrictions prohibiting such distribution infringed plaintiffs' copyright in the software. Because such distribution did not amount to "fair use," the court held defendant liable for statutory damages in the amount of $20,000.

488 F.Supp.2d 991, 2007 WL 214595 (E.D. Ca., January 25, 2007)

Court allows the operator of a subscription-based website to proceed with copyright infringement and other claims arising out of the allegedly unauthorized access by the defendants of copyrighted materials contained on plaintiff's site.  These materials consist of pharmacist prepared monographs describing the results and/or effects of various drug treatments.  The complaint alleged that defendants NBTY, Rexall Sundown and Le Naturiste improperly used passwords obtained from plaintiff to allow more users to access plaintiff's site than permitted by applicable license agreements, thereby depriving plaintiff of appropriate license fees.  The court denied in its entirety defendants' motion to dismiss plaintiff's claims that such conduct constituted copyright infringement, violations of the Computer Fraud and Abuse Act ("CFAA"), the Electronic Communications Privacy Act and California Penal code section 502, as well as common law trespass and misappropriation of trade secrets. 

The Court held that plaintiff had adequately plead a copyright infringement claim by alleging that the defendants had accessed the monographs on its website without its permission, and had cut and pasted portions thereof into emails that were transmitted to others.

The Court further held that plaintiff had alleged damages sufficient to support its CFAA claim by alleging that it lost revenue as a result of defendants' unauthorized use of its site in excess of their license rights.

Finally, the Court held that the passwords necessary to access plaintiff's site were trade secrets entitled to protection under the Uniform Trade Secrets Protection Act.

488 F.3d 352, No. 06-2080 (6th Cir., June 14, 2007)

Reversing the court below, the Sixth Circuit awards plaintiff Thoroughbred Software International (“Thoroughbred Software”) $183,794.25 in “actual” damages it sustained as a result of defendant Dice Corporation’s (“Dice”) distribution of unauthorized copies of plaintiff’s software to its customers, which software was never used.  Such ‘actual’ damages were held to be the license fees plaintiff would have charged Dice for its use and/or distribution of the software in question.  These actual damages were awarded pursuant to 17 U.S.C. section 504(b) of the Copyright Act.  In reaching this result, the Sixth Circuit rejected defendant’s argument that Thoroughbred Software was not entitled to such relief because it could not prove that defendant’s infringing acts caused Thoroughbred Software any actual injury, as the software in question was never used.  The requisite ‘causal connection’ between defendant’s infringement and plaintiff’s loss of anticipated revenue was satisfied by the parties’ contract, which obligated defendant to pay a license fee for each copy it made and distributed of plaintiff’s software.

The Sixth Circuit also vacated the District Court’s denial of attorney’s fees to Thoroughbred Software as the prevailing party in a copyright infringement action, and remanded the matter for further consideration in light of the Court’s decision on appeal.

2003 U.S. Dist. Lexis 6483 (C.D. CA., March 7, 2003)

Court holds that a binding agreement can be formed by the use of a web site, without more, if the user has actual knowledge that the site's Terms and Conditions so provide.  As a result, the Court denied defendant Tickets.com's summary judgment motion, which sought dismissal of breach of contract claims arising out of Tickets.com's use of a search robot to obtain information about concerts from plaintiff Ticketmaster's web site.  The Court held that issues of fact as to defendant's knowledge of the site's Terms and Conditions at the time it used plaintiff's site precluded a determination as to the binding nature of such Terms.

The Court did grant so much of Tickets.com's summary judgment motion which sought dismissal of trespass to chattels claims Ticketmaster asserted as a result of such activity.   These claims failed because of the absence of evidence that "the use or utility" of Ticketmaster's computers were being adversely affected by Tickets.com's use of a search robot to gather information from plaintiff's site.

Finally, the Court dismissed several copyright infringement claims brought by Ticketmaster.  These included infringement claims arising out of the temporary copying into the RAM of defendant's computers of data from plaintiff's site, including materials in which plaintiff held a copyright.  These materials were copied as an intermediate step to obtaining, and displaying on Tickets.com's own site, factual information contained therein.  The Court held such copying was a protectable fair use given the only materials retained at the end of the process were the facts -- as to concert locations, dates and times -- contained therein, which facts were not protected by copyright.  Infringement claims arising out of deep linking to interior pages of plaintiff's website were dismissed because, by deep linking into plaintiff's site, Tickets.com was not showing or displaying plaintiff's copyrighted materials (which instead were being displayed by plaintiff itself).  Finally, infringement claims arising out of copying the URLs from such interior pages were dismissed because such URLs did not have sufficient originality to be copyrightable.

2000 U.S. Dist. Lexis 4553 (C.D. Ca., March 27, 2000)

The court, in granting defendant's motion to dismiss plaintiffs' breach of contract claim, held that a contract is not created simply by use of a web site on which is posted at the bottom of the site's home page terms and conditions that provide that such use constitutes the user's assent to be bound by the site's Terms and Conditions. The court left open the possibility, however, that use of a web site, coupled with knowledge of Terms and Conditions which declare such use evidence of assent to be bound thereby, could create a binding contract, and granted plaintiffs leave to replead their claim.

The court further held that "hyperlinking [without framing] does not itself involve a violation of the Copyright Act ... since no copying is involved." In addition, the court held that "deep linking by itself (i.e. without confusion of source) does not necessarily involve unfair competition."

The court refused at the outset of a litigation, however, to dismiss plaintiffs' claim that defendant, by deep linking, was tortuously interfering with plaintiffs' prospective business advantage, by depriving them of advertising revenue that might otherwise be achieved if the user were forced first to go to the site's home page (with the necessary increase in traffic that would generate) before he could proceed to an event page.

Lastly, the court held that defendant did not infringe plaintiffs' copyright in their site by extracting data concerning concert and other entertainment events from plaintiffs' web site (such as location, date and time of the event) and presenting it on defendant's web site in its own format. The court further held that plaintiffs could not attempt to recast such a claim into either state law misappropriation, trespass, unfair business practice or unjust enrichment claims, as those claims, to the extent they prohibited conduct permitted under the copyright act, were preempted thereby.

2000 U.S. Dist. Lexis 12987 (C.D. Ca., August 10, 2000)

Court denies plaintiff's application to enjoin defendant from using spiders to copy factual information contained on plaintiff's web site. In so holding the court rejects plaintiff's claim that such spidering constitutes an improper trespass on plaintiff's computers, because the spidering neither harms plaintiff's computers, nor interferes with their use. The court also held that even though copies of plaintiff's materials were made during this spidering, this was likely to constitute a protected fair use akin to the copying permitted during the reverse engineering of a product.

507 F.Supp.2d 1096 (C.D. Ca., October 16, 2007)

This case arises out of the use of automated devices by ticket brokers and others to purchase tickets from plaintiff Ticketmaster, and thereby prevent the public from purchasing those tickets themselves. 

In this case, the Court holds that plaintiff Ticketmaster LLC (“Ticketmaster”) is likely to prevail on claims of direct and contributory copyright infringement as a result of defendant RMG Technologies Inc. (“RMG”) distribution of a software application that permits its clients to circumvent Ticketmaster.com’s CAPTCHA access controls, and use Ticketmaster’s  copyrighted website in manners prohibited by the site’s Terms of Use.  Among other things, Ticketmaster prohibits the use of automated devices such as the software application at issue to access Ticketmaster’s site and search for and purchase tickets to events.  Because defendant was likely to be held to have exceeded its license to use Ticketmaster’s copyrighted site, the Court held it was likely to be found guilty of direct copyright infringement, having made unauthorized copies of plaintiff’s site in its computer’s RAM when it viewed the site to create and test its product.

By distributing its software application to third parties, and encouraging them to use it in violation of Ticketmaster’s Terms of Use, the Court held plaintiff was also likely to prevail on claims of contributory copyright infringement.

The Court further held that Ticketmaster was likely to prevail on claims that defendant RMG breached its contract with Ticketmaster by using the site in a manner prohibited by the site’s Terms of Use, which, among other things, prohibited use of the site for commercial purposes, and use of automated devices on the site.  These Terms of Use were likely to be binding on defendant RMG, because it used the site with notice of the Terms, which advised that such use would constitute assent to be bound thereby.

Finally, the Court held that plaintiff Ticketmaster was likely to prevail on claims that defendant, by distributing its software application, violated the Digital Millennium Copyright Act, because it trafficked in a device designed both to circumvent technological measures that control access to, and protect, a copyrighted work – namely plaintiff’s website.

The Court held that defendant’s conduct was likely to cause plaintiff irreparable injury.  Because it constituted infringement of plaintiff’s copyright, such irreparable harm was presumed.  In addition, plaintiff submitted evidence that the use of automated devices on its site by ticket brokers and others was injuring its reputation and good will with the public, who attributed their inability to obtain tickets to events to misdeeds in which plaintiff and its employees were involved.

As a result, the Court issued a preliminary injunction, enjoined defendant from further trafficking in or using its software application.

279 F. Supp.2d 723 (E.D. Va., September 5, 2003)

Court grants defendants' motion for summary judgment, and dismisses trademark infringement, copyright infringement and unfair competition claims brought by website owner against distributor of pop-up ads.  Defendants distribute a software program, which causes pop-up ads to be displayed on a user's computer screen in a window that covers all or part of plaintiff's website.  The court held that such conduct does not constitute a use of plaintiff's trademark, a prerequisite to a trademark infringement claim.  Quite the contrary, the display results from the computer user's consensual download of defendants' software, and his ability to control, via the multitasking capabilities of window's operating environment, what appears on his own computer screen.  Similarly, defendants' acts do not infringe plaintiff's copyright in the material that appears on plaintiff's website, because defendants neither display plaintiff's copyrighted materials nor make a derivative work thereof.  Defendants' ads instead appear in a separate window on a user's computer screen, which operates independently of plaintiff's website, and leaves the content appearing thereon untouched.

92 F. Supp. 2d 349 (S.D.N.Y., May 4, 2000)

Court held that defendant's My.MP3.com service infringes plaintiffs' copyrights in various sound recordings. Defendant claims in advertisements that this service permits users to store and listen to their CDs from any location at which they can access the Internet. To operate this service, defendant purchased a large number of CD's containing plaintiffs' sound recordings, converted them to MP3 files, and stored these MP3 files on its servers. A user wishing to access any of the songs contained in these files was first required either to demonstrate to defendant that it owned a CD containing the song in question (by inserting the CD into its computer), or to purchase the CD from a designated online vendor. Once the user satisfied this requirement, he was permitted for free to access the MP3 file resident on defendant's server, which MP3 file had been created from plaintiffs' CDs.

The court held that defendant's act of converting plaintiffs' CDs into MP3 files, and providing access to these files to users in the manner outlined above, infringed plaintiffs' copyrights in these sound recordings. In addition, the court rejected defendant's arguments that this was a fair use of plaintiffs' sound recordings because its activities "transform" the original recordings. Instead, the court held that in the case at bar, "unauthorized copies are being retransmitted in another medium" in violation of the copyright laws.

192 F. Supp.2d 321 (D.N.J., March 28, 2002) aff'd. 342 F.3d 191 (3rd Cir. 2003)

Court issues preliminary injunction, enjoining plaintiff Video Pipeline Inc. ("Video Pipeline") from continuing to display over the Internet 62 promotional "trailers" plaintiff made to promote the sale of videos of movies in which defendant's licensors hold copyrights.  (Defendant and it's licensors will be referred to herein collectively as "Defendant").  The trailers in question consist of excerpts from Defendant's movies, combined with a display of Defendant's trademarks and the title of the film.  Plaintiff did not add any commentary, music or voice overs to its trailers.  The trailers were made available to the public via the Internet websites of Vendors selling authorized copies of Defendant's films.  For this service, the Vendors paid plaintiff a fee based on the amount of time users spent viewing the trailers.

The court held that plaintiff's conduct infringed Defendant's copyright in the films, including Defendant's exclusive right to create derivative works of the copyrighted films, as well as its right to perform and publicly display the work under 17 U.S.C. Section 106.

The court further held that plaintiff's actions were not protected by either the 'first sale' or 'fair use' doctrines.  Plaintiff could not claim protection under the first sale doctrine because it only permits owners, and not their licensees, to advertise the sale of a copy of the copyrighted work that they own.  Moreover, the court held that the 'first sale' doctrine probably would not permit Vendors to display over the Internet promotional trailers they created to advertise the sale of copies of the films they owned.  Rather, such display was probably limited under 17 U.S.C. Section 109(c) to "the place where the copy [owned by the Vendor] is located."

The court held that plaintiff could not claim protection under the 'fair use' doctrine, because its use of Defendant's copyrighted materials was commercial and not transformative, represented a copying of the heart of the works in question, and was of a fictional, and not factual work.

The court accordingly issued the requested injunctive relief.  In so doing, the court rejected arguments that its order would allow Defendant to control the sale of home videos over the Internet to the detriment of the public and/or Vendors of legitimate copies of the works.  The court held that other means were available to the Vendors to market Defendant's films, including via written descriptions of the films.

Civil Action No. 04-90-KAJ (D. Del. September 26, 2005)

After a bench trial, a Federal Delaware District Court found defendant Consumer Innovations guilty of willfully infringing plaintiff Webloyalty.com's copyrights in a banner ad and related "sell page."  These materials are used by Webloyalty to promote an online "club" whose members, for a monthly fee, can purchase merchandise offered for sale through the "club" at a discount.  Defendant, a competitor, was held to have infringed plaintiff's copyrights by copying substantial portions of these advertising materials.  Such copying was held to be willful, in large part, because Consumer Innovations denied copying plaintiff's materials in the face of convincing evidence to the contrary.  As a result, the Court awarded plaintiff statutory damages of $50,000, comprised of $25,000 for each act of infringement, together with a significant portion of the attorneys' fees expended by plaintiff in prosecuting this action.  In setting the amount of such damages, the Court took into account both the absence of any evidence that plaintiff had been injured by defendant's activities, as well as evidence that defendant generated only $1,000 in revenue from its use of the promotional materials at issue.

293 F.Supp.2d 734 (E.D. Mich., November 19, 2003)

Court denies website operators' application for a preliminary injunction, and refuses to enjoin defendant WhenU.com, Inc. from delivering advertisements, triggered by a computer user's visit to plaintiffs' sites, that either pop-up or under those sites.  Defendant WhenU delivers such ads via its software applications Save and Save Now!  These applications are typically consensually downloaded by the user to his or her computer as the quid pro quo of his free receipt of another software application.

The Court held that WhenU's delivery of these ads neither infringes the trademarks found on plaintiffs' sites, nor their copyrights in the material thereon.  WhenU's activities - including the use of plaintiffs' marks in a directory which determines the ads a user receives, and the display of ads in windows that partially obscure plaintiffs' websites but do not contain plaintiffs' marks - do not constitute a use of plaintiffs' marks in commerce, a prerequisite to a trademark infringement claim.  Plaintiffs' trademark infringements claims also failed because plaintiffs did not present evidence sufficient to establish that users would likely be confused by WhenU's activities, and conclude that plaintiffs sponsored WhenU's ads.  Rather, the Court held, users with Save and Save Now! installed on their computers are likely to conclude that WhenU is the sponsor of the ads in question, both because the ads so inform the user, and because of their familiarity with such displays.

The Court held that plaintiffs' copyright infringement claims failed because the appearance of WhenU's ads in a window that partially obscures plaintiffs' sites does not constitute the creation of an unauthorized derivative work in violation of plaintiffs' exclusive right to create the same.  Rather, plaintiffs' copyrighted works - the content of their websites - remain unaltered on the servers on which they are hosted, and simply appear simultaneously with WhenU's advertisements in separate windows opened by and with the consent of the user on whose computer screen they appear.  Plaintiffs' copyright infringement claims also failed because any images appearing on a user's screen are simply too transitory to constitute the creation of a work.  As such, WhenU and the users cannot be held to have created a derivative work, and thus cannot be held to have infringed plaintiffs' copyrights.

Quick Hits

BMG Music, et al. v. Cecilia Gonzalez
438 F.3d 888 (7th Cir., December 9, 2005)

Affirming the decision of the court below, the Seventh Circuit finds defendant Cecilia Gonzalez (“Gonzalez”) guilty of copyright infringement because she downloaded and retained on her computer over 1370 copyrighted songs.  The Court rejected Gonzalez’ contention that she was engaging in a permissible fair use by downloaded the songs to sample and purchase if they appealed to her.  In finding defendant guilty of copyright infringement, the Court made no distinction between songs Gonzalez owned at the time of her download, subsequently purchased, or never owned.  Said the Seventh Circuit:


Although BMG Music sought damages for only the 30 songs that Gonzalez concedes she has never purchased, all 1000+ of her downloads violated the [copyright] statute.  All created copies of an entire work.  All undermined the means by which authors seek to profit. … With all of these means available to consumers who want to choose where to spend their money, downloading full copies of copyrights material without compensation to authors cannot be deemed ‘fair use.’

The Seventh Circuit accordingly affirmed the lower court’s award to BMG of statutory damages of $22,500 on its motion for summary judgment.  This represented the minimum statutory damage award permitted under the Copyright Act of $750 for each of 30 works Gonzalez was held to have infringed.  Importantly, this was the relief requested by BMG, and not the result of the trial court’s exercise of its discretion as to an appropriate damage award.  BMG elected to seek damages for only those songs Gonzalez downloaded which she admitted she did not own or purchase, either before or after downloading.

In reaching this result, the Seventh Circuit rejected defendant’s claim that the lower court erred in failing, under Section 504 of the Act, to reduce this statutory damage award because defendant did not believe her acts constituted infringement.  Such a defense is not available where the infringed works, such as those at bar, bear an appropriate copyright notice.  This was true notwithstanding the fact that the actual copies Gonzalez copied did not themselves contain such notice.

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Getaped.com Inc. v. Cangemi
188 F. Supp. 2d 398 (S.D.N.Y. 2002)

District Court awards Getaped.com $46,015 in statutory damages, attorney’s fees and court costs as a result of the copying of its website’s source code by a direct competitor, who utilized the same to operate a competing website. Of import, the court determined that a Web site's source code is considered "published" when the site goes live on the Internet. As Getaped registered its website within three months of this date, it was entitled to statutory damages under the Copyright Act, 17 USC 505, as a result of defendants’ copying of its site, which occurred after plaintiff’s site went live, but before a copyright therein was registered. As noted by the court “both statutory damages and attorney’s fee and costs are unavailable if “(1) an infringement of copyright in a unpublished work commenced before the effective date of its registration; or (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” 17 USC section 412.  
 
The court determined that $30,000 in statutory damages was appropriate given that defendants’ conduct was “willful” within the meaning of 17 USC Section 504. In reaching this result, the court relied on the fact that defendants copied the source code of Getaped’s site, which featured a prominent copyright notice, and continued to use this content after receipt of notice of infringement from Getaped. The Court also awarded plaintiff the actual attorneys fees it incurred in prosecuting the suit under 17 USC section 505.

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Chris Gregerson v. Vilana Financial Inc., et al.
2007 U.S. Dist. Lexis 64960, Civ. No. 06-1164 ADM/AJB (D. Minn., August 31, 2007)

On the parties’ cross-motions for summary judgment, the Court finds the corporate defendants guilty of copyright infringement as a result of their unauthorized use of two of plaintiff’s copyrighted photographs in advertisements for their businesses. 

The Court further held that defendant Andrew Vilenchik, the sole board member and shareholder of defendant Vilana Financial, could not be held vicariously liable for defendant’s copyright infringement, because he did not have or derive a sufficiently direct financial interest from the use of plaintiff’s photographs.

The Court granted plaintiff summary judgment, dismissing defendants’ claim that his use of defendants’ trademark in the path of his site’s domain name violated the Anticybersquatting Consumer Protection Act.  Defendants’ claim failed both because they failed to submit sufficient evidence that plaintiff had a bad faith intent to profit from this use of the mark, and because use of the mark in the path of the domain name does not constitute actionable use of the mark in a domain name

The Court also dismissed trademark infringement claims brought by defendants as a result of plaintiff’s use of their trademark in a website that purportedly disparaged defendants as a result of their use of the photographs at issue, and in the meta tags of that site.  The court held defendants failed to establish the requisite likelihood of consumer confusion sufficient to sustain such a claim, given that the parties were not competitors – plaintiff was a photographer, and defendants sold real estate and mortgage services – and plaintiff’s website was highly critical of defendants.  In reaching this result the court noted that “a defendant’s use of a trademark in metatags in a descriptive manner can constitute a non-infringing fair use.”

Finally, the Court left for trial defendants’ remaining claims, which included deceptive trade practices, interference with contractual and business relationships, and misappropriation of name and likeness, all of which arose out of the disparaging remarks posted on plaintiff’s website about the defendants.  This site included a photograph of defendant Vilenchik.  Because issues of fact existed as to the truth of these statements, the court reserved decision on these claims until trial.

It should be noted that plaintiff ultimately prevailed at trial, was awarded approximately $20,000 on his copyright infringement claims, and that defendants’ remaining claims were dismissed.

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Live Nation Motor Sports Inc. f/k/a SFX Motor Sports Inc. v. Robert Davis, d/b/a/ TripleClamps and www.supercrosslive.com
2006 WL 3616983, Civ. Act. No. 3:06-CV-276-L (N.D.Texas, December 12, 2006).


Court issues preliminary injunction, enjoining defendant from continuing to provide hyperlinks on his supercrosslive.com website that permit users to access live audio webcasts of plaintiff’s motorcyle racing events.  Court holds that plaintiff is likely to prevail on its claim that such acts infringe plaintiff’s copyrights in these audio webcasts, and violate its exclusive rights to publically display and perform such works.  Said the Court:  “the court finds that the unauthorized ‘link’ to the live webcasts that Davis provides on his website would likely qualify as a copied display or performance of SFX’s conpyrightable material.”  It should be noted that defendant denied “streaming” plaintiff’s audio webcasts.   He claimed that he merely included a "hyperlink, which launches the visitor's media player" instead of copying the audio file and republishing it.  As such, this decision is at odds with the Ninth Circuit’s recent decision in Perfect 10 v. Amazon, No. 06-55405 (9th Cir., May 16, 2007).  There, the court held that the provision of in-line links which instruct a user’s browser to display the contents of a third party site that itself contains infringing material does not constitute a direct infringement of the copyright in such material, because it is the infringing site, and not the provider of the link, that is actually displaying the materials in question.

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Merle Norman Cosmetics, Inc. v. Joyce Labarbera and Jane Doe
Case No. 07-60811-CV-Cohn (S.D. Fla, August 3, 2007)

Court denies defendant Labarbera’s motion to dismiss tortuous interference with contract, civil conspiracy and deceptive and unfair trade practice claims advanced by plaintiff Merle Norman Cosmetics as a result of defendant’s sale of plaintiff’s cosmetic products on the Internet.  Plaintiff claimed that defendant obtained the products at issue from a studio – named here as Jane Doe – which by contract was prohibited from reselling Merle Norman Cosmetics on the Internet.  Defendant denied that allegation, claiming she obtained the cosmetics from another source.  Plaintiff “conceded … that if Labarbera’s source is a flea market, than she can make the sales in question without committing a tort.”  However, for the purpose of the instant motion, the Court accepted plaintiff’s contentions as to the source of the goods defendant sold.

Defendant argued that plaintiff’s claims were barred by application of the First Sale doctrine which, inter alia, permits a party who has lawfully acquired a copyrighted work to resell it free from claims of copyright infringement.  The Court held that this doctrine had not been extended to tort claims such as that at bar, and accordingly denied defendant’s motion.  Said the Court “the point at this early stage of this litigation is that the First Sale Doctrine has not been accepted as a complete defense to tortuous interference and civil conspiracy claims.  Therefore, the Court will deny the motion to dismiss …”.

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Nautical Solutions Marketing, Inc. v. Boats.com
2004 WL 783121 (M.D. Fla. 2004)

Use by competing yacht broker of internet "spider" to extract non-copyrightable facts concerning yachts for sale from competitor's website did not infringe website owner's copyright.  Court held that "momentary copying" of competitor's site during this "extraction" process was a permissible fair use under Section 107 of the Copyright Act.  Court further held that copying, modifying and reposting individual yacht listings and the pictures contained therein with the permission of either the yacht owner or his broker did not infringe any copyrights in such works, which were held by the yacht broker and not the competitor's web site on which the listings were posted.  Finally, web site's owners claim that competitor infringed its copyright by copying the site's "look and feel" failed because, according to the court, the similarities between the sites derived from unprotectable elements, including pictures, headings and descriptions of yacht listings.

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Pollstar v. Gigmania Ltd.
170 F. Supp. 2d 974 (E.D. Cal. 2000)

Court denies motion to dismiss, and allows Pollstar to proceed with common law misappropriation and unfair competition claims arising out of Gigmania's alleged copying and reposting on its own website of factual concert listings found on Pollstar's site.  The complaint alleged that this information was "hot news" which is protected against misappropriation if plaintiff can show that it "(i) generates or collects information at some cost or expense (ii) the value of the information is highly time-sensitive; (iii) the defendant's use of information constitutes free-riding on the plaintiff's costly efforts to generate or collect it' (iv) the defendant's use of the information is in direct competition with a product or service offered by the plaintiff; (v) the ability of the other party to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened."

The Court also allowed Pollstar to proceed with claims the Gigmania's conduct breached a browse-wrap license agreement between the parties, which prohibits the acts complained of.  The Contract provides that use of the information found on the site constitutes acceptance of the contract's terms.  Notably, the court allowed this claim to proceed despite the fact that notice of such terms were given "in small gray text on a gray background" which, in turn, contained a link to the actual contract terms, without the usual "underlining" signifying such a link.

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SMC Promotions, Inc., et al. v. SMC Promotions, et al.
355 F. Supp.2d 1127 (C.D. Cal. 2005)

Court finds web developer guilty of copyright infringement by copying without authorization plaintiff Specialty Merchandise Corporation’s (“SMC”) copyrighted photographs and descriptions of its products, and an uploading them on clients’ websites, who are authorized distributors of plaintiffs’ products.  In reaching this result, the Court held the web developer was not authorized to engage in such activity, notwithstanding the fact that its clients were licensed by SMC to place the photos on their own websites.  This license was expressly limited by SMC to the distributor, who was not allowed to “delegate or authorize any other person to do so, whether on [the distributor’s] behalf, or otherwise.”  Because the web developer had copied works in which plaintiff SMC held copyright without authorization, it was found guilty of copyright infringement.

The Court also found the web developer guilty of trademark infringement, by using plaintiff’s ‘SMC’ trademark in the domains of various websites at which it advertised it web development services for SMC distributors.  These domains included SMCPromotions.com, SellSMC.com, and SMCForums.com.  The Court found that defendants’ use was likely to cause consumer confusion.  In reaching this result, because the matter arose ‘in the context of the Internet,’ the Court relied on three of the 9th Circuit’s eight ‘Sleekcraft’ factors for evaluating consumer confusion, known as the ‘internet trinity.’  Each of these three factors, held the Court – the similarity of the marks used, the related nature of the parties’ goods and services, and the parties’ simultaneous use of the internet as a marketing channel – pointed strongly in favor of a finding of likely consumer confusion.  Notably, defendants were competing with an affiliate of SMC, plaintiff eMerchants Club, which also offered web development services to SMC distributors.  The use on defendants’ site of a disclaimer, disclaiming affiliation with plaintiffs, and the addition of generic terms such as ‘sell’ ‘promotion’ or ‘forum’ in the domain names, did not alter this conclusion.  Said the Court:

The use of such confusingly similar marks in Defendants' domain names and on their websites creates initial interest confusion, regardless of Defendants' use of a disclaimer on their websites that they are not "owned, operated, endorsed or recommended" by Plaintiffs.

The Court’s finding was buttressed by the presence of actual confusion on the part of a SMC distributor who thought defendants were affiliated with plaintiffs when he hired them.  Because the remaining five “Sleekcraft” factors did not ‘weigh strongly’ against a finding of likelihood of confusion, the Court found defendants guilty of copyright infringement. 

Plaintiff SMC and its affiliates import and distribute various products through a network of distributors known as members.  The products plaintiffs sell are depicted in catalogues, which contain copyrighted photos and descriptions of those products.  Members can access these photographs and descriptions on a secure portion of plaintiff’s website, and are allowed to display them on their own website.  Plaintiff SMC’s affiliate offers SMC members web development services.  Defendants were attempting to compete with this affiliate for the web development business of SMC members, which efforts gave rise to this suit.

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Veeck v. Southern Building Code Congress Int'l Inc.
293 F.3d 791, No. 99-40632 (5th Cir. 2002)

The Fifth Circuit, sitting en banc, held that both laws and the judicial opinions of the courts are not copyrightable.  As such, the Fifth Circuit directed the dismissal of copyright infringement claims brought by the Southern Building Code Congress International ("SBCCI") arising out of plaintiff's posting on his not-for-profit website of model building codes authored by the SBCCI and adopted as law by two Texas municipalities.  Plaintiff had obtained a CD-Rom from SBCCI, and copied the building code it contained onto his website.  The Court held that the building code, once adopted as law, became a "fact" no longer subject to the protection of copyright.  As there was only one way to express the "idea" represented by the code, that expression, as found in the SBCCI's CD-Rom, was not subject to the protection of the copyright statutes, and its copying could not, therefore, give rise to a copyright infringement claim.  This result, held the court, was mandated by appropriate application of the merger doctrine.  Finally, the court held that the SBCCI maintained its copyright in the model building codes it authored until such time, as any, as the code became enacted into law.

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