copyright licensing

Disney Case Teaches Importance of Clear Contract-Forming Language to Create Contractual Restrictions

Many companies that market products or content protected by intellectual property rights rely on “shrink-wrap” or “box top” licenses to impose licensing restrictions on their customers.  But that strategy only works if the customer is indeed bound by the terms – meaning that he or she will be deemed to have accepted the terms as a matter of contract formation.  A recent decision of a California federal court highlights the need to use language in such licenses that clearly inform the user that they are agreeing to contractual terms when using the product (by opening a box or entering a website). 

Disney Enterprises, Inc. v. Redbox Automated Retail LLC (C.D.Cal. 2018) denied Disney’s motion for a preliminary injunction based on contract and copyright claims.  A key part of the decision was the court’s finding that no contract had been created between the parties when the defendant opened a Disney “combo pack” that included codes used to download Disney movies.  The box top language was not sufficiently clear that the user opening the box was agreeing to contractual terms and restrictions.

Unlike prior cases involving “box top” licenses, Disney’s combo pack did not make clear that by opening the box, the user was entering into a contract by which it accepted restrictions on use and resale of the contents.  The combo pack merely stated that “[c]odes are not for sale and transfer” in medium print.  In very small print, they stated “Terms and Conditions apply.”  That was not enough to alert the user that he or she was agreeing to contractual terms.

The lesson: if you want contractual terms to be binding, you must make clear that the user is entering into a contract

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.