Copyrightability Clarified for Designs of “Useful” Articles

On March 22, 2017, the U.S. Supreme Court decided Star Athletica, L.L.C. v. Varsity Brands, Inc., ruling that decorative designs of cheerleading uniforms may be eligible for copyright protection.[1]  In so deciding, the Court clarified the application of the copyright laws to designs of “useful” articles. Previously, as has been my experience in the registration and enforcement of designs of “useful” articles, the “useful” nature of an item has been broadly cited as excluding, or severely limiting, the protection of copyright laws to the design/ornamentation of such an item.  However, the Supreme Court has now clarified that the shadow of utility does not limit the otherwise available statutory scope of protectable expression. By the example of the Star Athletica case, while the overall “cut” of a uniform is utilitarian (useful as clothing) and not protectable expression, protection is available to decorative works on that uniform, even if bounded by that utilitarian shape, to the extent those works could be perceived separately therefrom and fixed in to decorate another tangible medium. Background – “Useful” Nature as a Tool to Exclude Protections Prior to this decision, a claim of copyright protection in a “useful” item was often subject to attack being overridden,… Read More »Copyrightability Clarified for Designs of “Useful” Articles

Volitional Conduct: an Element of Copyright Infringement

The Ninth Circuit Court of Appeals recently held in Perfect 10 v. Giganews, No 15-5550 (Jan 23, 2017), that an alleged copyright infringer can only be found directly liable if its “volitional conduct” actually causes the infringing activity to happen. Notably, the Court rejected Appellant’s argument that the Supreme Court’s ruling in American Broadcasting v. Aereo, Inc. removed this “volitional conduct” requirement. Appellant Perfect 10, Inc. owns copyrights to several images. Appellee Giganews, Inc. owns and operates several Usenet servers and provides subscribers to user-stored content to other Usenet providers. Perfect 10’s images have been distributed by users over Giganews’s servers, and Perfect 10 sued Giganews for direct and indirect copyright infringement claims. The district court granted Giganews’s motions for summary judgment as to the direct and indirect copyright infringement claims. The Court reviewed the grant of summary judgment de novo. To show a prima facie case of direct copyright infringement, Perfect 10 had to show “ownership of the allegedly infringed material” and “demonstrate that the alleged infringers violated at least one exclusive right” granted to copyright holders. Furthermore, direct infringement requires that Perfect 10 show causation, referred to as “volitional conduct,” by Giganews. In the context of copyright infringement,… Read More »Volitional Conduct: an Element of Copyright Infringement

DMCA Safe Harbor Covers Content from Independent Contractors

The Tenth Circuit recently held that a website provider could not be held liable for copyright infringement for the unauthorized use of copyrighted photographs in content created by its contractors. BWP Media, USA v. Clarity Digital Group, 2016 U.S. App. LEXIS 7406 (10th Cir. Apr. 25, 2016). Defendant AXS owns and operates, a “dynamic entertainment, news and lifestyle network that serves more than 20 million monthly readers across the U.S. and around the world.” BWP Media at *4. Rather than retain dedicated staff writers, AXS hires “Examiners,” independent contractors who create content for the website. Plaintiff BWP owns the copyright for 75 photographs used in content posted on BWP did not grant permission to use the photographs. Upon BWP’s request, AXS removed the photographs and notified BWP. Still, BWP sued AXS for copyright infringement. AXS won summary judgment at the district court, successfully arguing that AXS qualified for the “safe harbor” provision of the Digital Millennium Copyright Act, immunizing AXS from liability here. See 17 U.S.C. § 512(c). The DMCA safe harbor provision applies when the internet service provider (ISP) shows that the infringing content was stored at the direction of a “user” and when the ISP has… Read More »DMCA Safe Harbor Covers Content from Independent Contractors

Cert. Denied in Google Books Copyright Case: Big Win for Fair Use Doctrine

The U.S. Supreme Court recently denied review of the Second Circuit decision in The Authors Guild et al. v. Google Inc., 804 F.3d 202 (2d Cir. 2015), finalizing a decision allowing Google to continue its mass digitization projects as fair use. This decision is a major victory for fair use – and for Google’s preservation efforts for university libraries. The ten year litigation battle is a bit complicated, so here’s a brief primer on the main issues. In short, Google works with several university libraries to digitize their collections and monetize the digital copies through searches through Google Books and Google’s Library Project. The works are mostly non-fiction, out-of-print books, many of which are deteriorating. The Google Books search function allows a searcher to view a limited amount of text, which Google describes as a “snippet,” or about three lines of text. Google also provides a digital copy of each work to all of the libraries involved, even to the libraries who do not have a corresponding physical copy. The Google Books project has immensely helped both the libraries involved and the searching functionality of Google, including improved accuracy of Google Translate and more visibility of out-of-print works to searchers.… Read More »Cert. Denied in Google Books Copyright Case: Big Win for Fair Use Doctrine

A Reminder That Website Agreements Are Usually Enforceable

Long before the Internet, courts were not reluctant to enforce adhesion contracts. This willingness is one thing the Internet age has not changed.  A good reminder – and lessons for parties seeking to enforce, as well as users wary of, website agreements – comes in a recent case in which a U.S. district court enforced a rather draconian transfer of copyright in a browsewrap agreement. Small Justice LLC v. Xcentric Ventures LLC, No. 13-cv-11701, (D. Mass March 27, 2015). The court here granted summary judgment for the defendant, enforcing its browsewrap agreement that gave the defendant an exclusive license to the copyright in material that a user posted to its site. Christian DuPont posted negative comments about attorney Richard Goren on (“ROR”), a website operated by Xcentric. The website included terms and conditions including the following, which would only have been seen by a user who scrolled through a text box: “[b]y posting information or content to any public area of [the ROR], you automatically grant and you represent and warrant that you have the right to grant to Xcentric an irrevocable, perpetual, fullypaid, worldwide exclusive license to use, copy, perform, display and distribute such information and content .… Read More »A Reminder That Website Agreements Are Usually Enforceable

Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

In Fischer v. Forrest, 14 Civ. 1304 (PAE); 14 Civ. 1307 (PAE) (S.D.N.Y. Jan 13, 2015), the court denied a Rule 12(b)(6) motion to dismiss a suit alleging copyright and trademark infringements. Of particular interest in this post is the pleading required to state a claim for remove of Copyright Management Information (CMI) under the DMCA. Also of interest is the way in which the facts supporting this claim were intertwined with a claim for trademark infringement under the Lanham Act.  Finally, this case offers a lesson for drafting choice of law provisions in confidentiality agreements — make them broad enough to cover related tort claims in addition to breach of contract claims. The plaintiff held a valid federal copyright registration for text and images used on his website, and a valid federal trademark registration for his honey harvesting product for beekeepers called Bee-Quick®. The plaintiff authorized the defendant to use the trademark name, images and text to sell Bee-Quick® through the defendant’s website. After eight years, the defendant terminated the business relationship with the plaintiff, but allegedly continued using the copyrighted text, images and trademark on his website and catalogs to market his own product. Specifically, the plaintiff alleged… Read More »Pleading Removal of Copyright Management Information Under the DMCA (and a Related Trademark Claim)

Action Brought Under DMCA and CFAA Dismissed (Part I)

In LivePerson, Inc. v. 24/7 Customer Inc., 2015 U.S. Dist. LEXIS 3688, No. 1:2014cv01559 (Jan. 16, 2015), the Southern District of New York dismissed a complaint alleging copyright infringement, a violation of the Digital Millennium Copyright Act (DMCA), and the Computer Fraud and Abuse Act (CFAA) for failure of the pleadings under F.R.C.P. 12(b)(6). This case thus provides good guideposts for drafting sufficient pleadings alleging both DMCA and CFAA violations.  Here in Part I, we will discuss the copyright infringement and DMCA claims, while in Part II, we will discuss the CFAA claim. Plaintiff LivePerson provides customers with live-interaction and customer engagement technology for e-commerce websites, allowing real-time interaction with customers. Defendant 24/7 is a customer service technology company that historically provided human call-center operators to answer phones in customers’ call centers. In 2006 and 2007, Plaintiff and Defendant entered into a license agreement, wherein Defendant received a license to “access, operate, and use” Plaintiff’s intellectual property. As Defendant has developed its own competing software, Plaintiff alleged that Defendant misappropriated their technology to sell as Defendant’s own; notably, the alleged conduct includes improperly accessing Plaintiff’s systems to allow Defendant’s software to mimic Plaintiff’s software. A copyright infringement claim requires four… Read More »Action Brought Under DMCA and CFAA Dismissed (Part I)

Use of Copyrighted Software’s Output and Mere Downloading of Copy Held Not to Constitute Infringement

Neither using output from copyrighted software, nor downloading (but not installing or using) the copyrighted software, constituted actionable copyright infringement under the US copyright statute.  Design Data Corporation v.  Unigate Enterprise, Inc., No. 12-cv-04131-WHO (N.D. Cal. Aug. 6, 2014).  Accordingly, the court in this case granted summary judgment in favor of the defendants on the plaintiff’s claims of direct as well as contributory copyright infringement. The plaintiff “created and owns copyrighted structural steel detailing software called SDS/2.”  The plaintiff never sold licenses to SDS/2 to any of the defendants.  Although the defendants contended that they merely acted as intermediaries between Chinese contractors and US clients, and had never used SDS/2 themselves, it was undisputed that SDS/2 “appear[ed] to have been used to create drawings and images for five of” their projects.  Moreover, the defendants admitted that they had forwarded SDS/2 output files “to clients and prospective clients,” even while contending they had never used the software themselves. The defendants also admitted that one of them had downloaded the SDS/2 software.  The purpose of this download was in dispute.  The plaintiff contended that the download was of a “cracked” copy that then did not work.  The defendant averrred that she had… Read More »Use of Copyrighted Software’s Output and Mere Downloading of Copy Held Not to Constitute Infringement

Ninth Circuit Affirms Inapplicability of Copyright First Sale Doctrine to Restrictive Software License

The Ninth Circuit has affirmed a district court decision (reported in this blog) holding that a restrictive software license is not a “sale” for purposes of the federal copyright laws, and that the license could not be used to assert a defense to copyright infringement based on the first sale doctrine.  Adobe Systems Inc. v. Anthony Kornrumpf, No. 12-16616 (9th Cir. June 2, 2014). The operative paragraph of the court’s per curiam three-paragraph opinion explained that, after its de novo review, the Ninth Circuit determined that: The district court did not err in its application of Vernor v. Autodesk, Inc., 621 F.3d 1102, 1111 (9th Cir. 2010), to Dell’s and HP’s acquisition of copies of Adobe software products. The original equipment manufacturer contracts specified that Dell and HP were granted licenses, significantly restricted Dell’s and HP’s ability to transfer the software and imposed notable use restrictions. A transfer of software products under these circumstances constitutes a license rather than a sale. See Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1159 (9th Cir. 2011); MDY Indus., LLC v. Blizzard Entm’t, Inc., 629 F.3d 928, 938-39 (9th Cir. 2010), as amended; Vernor, 621 F.3d at 1111-12.

Third Party Affirmative Defenses to Software Copyright Infringement

A license, either express or implied, may be an affirmative defense to software copyright infringement.  However, a recent case, brought by Oracle against a vendor who had provided services to Oracle’s customer, illustrates the limits of these defenses.  Oracle USA, Inc. v. Rimini Street, Inc., No. 2:10-CV-00106-LRH-PAL (D. Nev. Feb 13, 2014).  Perhaps more importantly, this case illustrates practices – generally governed by fairly standard provisions in a software license – concerning which both the software licensee and its third-party vendors should take care. Following a motion by Oracle, the court granted summary judgment denying a number of the affirmative defenses raised by the defendant, albeit reserving judgment on a few.  The defendant, Rimini, conceded that it had copied Oracle’s software.  However, with respect to four different Oracle customers, Rimini argued that it had express and implied licenses to use the software.  (Rimini also raised an affirmative defense of “consent,” which the court explained was the same as an implied license.) Express License Defenses Turning to the first Oracle customer at issue, the City of Flint, the court first rejected Oracle’s argument that Rimini could not “assert the City of Flint’s software licensing agreement as a defense” at all “because… Read More »Third Party Affirmative Defenses to Software Copyright Infringement