copyright infringement

Miley Cyrus Case Shows Importance of Early Copyright Registration

A recent copyright case, May v. Sony Music Entm't and Cyrus, involving a top-of-the-charts song illustrates the importance of early copyright registration, before any infringement begins.

Later registration will not preclude suit, but it will limit the relief that can be collected.  In some cases, that limitation may turn what seems like a winning case into a loser.

The case also highlights an effective strategy for those defending against copyright infringement claims, especially in cases involving “copyright trolls.”

Lawsuits are about more than who is liable – they are also about remedies, including how much to pay in damages.  If there is a way to limit the awardable damages, that can go a long way towards disposing of a suit.

Partial Dismissal of Copyright Claims Teaches Additional Strategies to Deal with Trolls

We have previously written about strategies to defend against claims by copyright trolls, Copyright Case Teaches How to Deal with Trolls. A recent decision by a federal court in New York, Minden Pictures, Inc. v. Buzzfeed, Inc. (S.D.N.Y. 2019), teaches some further valuable strategies to deal with such claims.   

Minden Pictures is a wildlife and nature photo licensing agency that has filed 36 copyright infringement lawsuits since 2010.  In this case, Minden alleged that the copyrighted photographs were displayed on Buzzfeed’s website at various times since 2011.  Buzzfeed moved to dismiss, and the district court granted much of Buzzfeed’s various dismissal motions.

One key ruling was that the three-year statute of limitations applied to any pictures posted more than three-years prior to suit.  Minden tried to avoid the statute of limitations by invoking the Second Circuit’s “discovery rule.”  But the court ruled that as a sophisticated party that had brought numerous copyright suits, Minden was expected to exercise considerable diligence to protect its rights.  It could have discovered the infringements had it reviewed Buzzfeed’s site.

Other rulings include dismissal of conclusory allegations of willful infringement, barring of statutory damages (and attorney’s fees) for pictures that had not been registered before infringement, and limiting statutory damages to one award for an entire “collection” of works registered as such.

The overall strategy highlighted by the Minden decision is that, even if one cannot achieve full dismissal of a troll’s case, paring down the claims as much and as early as possible can be an effective and useful strategy.

Souvenir Company’s Copyright Suit Against Balenciaga Shows Need for Luxury Goods Companies to Undertake Due Diligence

Usually, luxury goods companies are the victims of knockoffs and infringements – an expensive fashions item is copied by a cheap imitator.  However, an interesting twist has come up in a recent copyright suit against Kering’s Balenciaga. A souvenir company selling cheap souvenirs claims copying by the fashion company, at prices 100 times the original!

The takeaway is that high-end companies should not assume that they are immune from getting into trouble by copying others’ designs.  While new designs are the lifeblood of fashion, counsel’s due diligence before they are introduced can avoid major legal headaches.  And, once a charge of copying is made, ignoring it would only make matters worse.  These are lessons that Balenciaga may now learn the hard way.

Photograph Case Decision Points Out Limits of Copyright Claims and to a Defense Strategy

 

There has been an explosion of copyright cases involving infringement of photographs, many involving small claims to one or a few photographs with little commercial value.  How does one defend against such a case?  A recent decision of a New York federal court points to an effective defense strategy.

Typically a case involves a professional photographer (or photograph licensing organization) alleging that it owns the copyright in a photograph that was then taken by a website or other user without paying a royalty fee.  Some attorneys have even turned this into a cottage industry, leveraging the burden of litigation to extract large settlements.  But the recent decision in Fameflynet, Inc. v. The Shoshana Collections, LLC (S.D.N.Y. 2018) may limit the effectiveness of such suits – and points to a strategy to defend them.

Fameflynet involved a typical claim − copying a celebrity photograph on the defendant’s website.  The court found the infringement to be willful.  But in awarding damages, it reasoned that the presumptive damages were only treble the license fee for the photograph − $75.  And since the Copyright Act requires a minimum of statutory damages of $750 for willful infringement, that is what plaintiff was awarded.

The court also awarded about $17,000 in attorney’s fees – much less than the $68,000 sought.  Apart from finding plaintiff’s hourly rates excessive, the court found many hours billed unnecessary, because the same firm had used form pleadings from prior similar cases.

The fairly nominal award points the way to an effective strategy in dealing with such cases:  ascertain the license fee and proffer an offer of judgment under Rule 68 for treble the fee or $750, whichever is greater.  Such an approach might have saved the defendant substantial fees, both its own and the plaintiff’s.

News-Indexing Site Case Limits Fair Use

Copyright protection has long been limited by the fair use doctrine, which allows unlicensed use of others’ content for certain “fair” purposes. 

Many recent decisions have focused on whether a use is “transformative” to determine whether it is fair – meaning it creates something new and different.  But a recent Second Circuit decision involving large quantities of video content rejected a fair use defense even though finding the use transformative.  Companies considering use of others’ content would be well advised to consider the ramifications of the decision.

In the digital world, often there are often huge quantities of copyrighted information that users may wish to sift through to find content they are interested in.  Secondary businesses have arisen that compile and index the content and then allow users to search and locate what they need or are interested in.  Three years ago, in Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015), the Second Circuit found such a commercial indexing scheme to constitute “fair use” of the underlying content. 

But recently, in Fox News Network, LLC v. TVEyes, Inc. (2d Cir. 2018), the Second Circuit found another such scheme as not being protected as fair use.  The contrast between the two cases informs users of copyrighted content as to where to draw the line between fair and not fair use.

Fourth Circuit DMCA Case Teaches How to Ensure Immunity For Third Party Postings

A recent Fourth Circuit decision, BMG Rights Mgmt LLC v. Cox Communications Inc. (4th Cir. 2018) affirmed summary judgment that an internet service provider, an ISP, was not entitled to claim Digital Millenium Copyright Act (DMCA) immunity from copyright infringement for third-party postings through its service, opening up the company to massive copyright liability. 

A central part of the DMCA, a part of U.S. copyright law, is the exemption from direct and indirect liability of internet service providers and other intermediaries on the internet.

In Cox, the ISP had failed to implement a reasonable policy to remove repeat infringers, a condition of DMCA immunity, and so lost its immunity.

The Cox decision teaches several important lessons to companies who wish to use the DMCA to avoid copyright liability. 

It’s Time to Pay Closer Attention to Digital Millennium Copyright Act

The Digital Millennium Copyright Act (“DMCA”) was Congress’ attempt, almost six years ago, to protect authors and artists against hi-tech piracy.  The DMCA created new prohibitions against activities that facilitate copyright infringement.  Congress gave copyright holders a new weapon with which to go after would be transgressors.  The DMCA has broad application, from computer software, to digital movies and music, and affects both large corporate interests and individual users of digital content.

In Chamberlain Group, Inc. v. Skylink Technologies, Inc., 381 F.3d 1178 (2004), the Federal Circuit proffered at least three significant interpretations of the DMCA:

  • Under the DMCA, the plaintiff has the burden of proving absence of license.
  • A claim for trafficking in circumvention technology must have a nexus with copyright-protected materials.
  • Contrary to a 2001 Second Circuit holding, the fair use doctrine applies to claims under the DMCA.

Each of these holdings can be significant to counseling clients about the impact of the DMCA.