Follow-up on ICE Domain Name Seizure

As blogged previously, the U.S. Customs has seized domain names from those who post infringing works on their websites.  One of the seizures was for rojadirecta.com and rojadirecta.org owned by Puerto 80 Projects S.L.U. (“Puerto”). It is alleged that the two referenced websites collected a list of third party links to live sporting events and pay-per-view events. 

Puerto sought to obtain the domain names back seeking immediate release of the seized property. The U.S. government argued that Puerto could not show substantial hardship and giving back the domain names would only lead to further criminal acts. 

Puerto claims harm because of a reduced number of visitors. (Puerto operates other websites such as rojadirecta.me that were not seized.) The Court rejected this as substantial harm. Puerto also raised the First Amendment; however, the court rejected this argument finding that the forums for comment are not the purpose of the websites seized. The court finds the purpose of the two seized websites is to catalog links to copyrighted materials.  See the Court's August 4, 2011 order here.

The court did not reach the question of whether giving back the domain names would only foster criminal activity but may take up the question when Puerto’s motion to dismiss is heard next month.

Things to Know about Copyright and your Website

Copyright protects the expression in tangible form of original works of authorship.　 A website – like a brochure, an advertisement, a press kit, or a press release – is a valuable asset and marketing tool which merits protection.

1. Create and use your own images. The best way to avoid infringement claims against your website is to create your own original images for display. If you are not creating your own images...
   
   
   1. Get permission before copying internet images. Copying images from the internet is controversial. If the owner of the image gives permission, you can use the image. Many times, however, the purported owner of the image is not the actual owner (i.e. the image was obtained falsely), which can lead to an infringement claim. The copying of images created by third parties without permission is infringement. See FragranceNet.com, Inc. v. FragranceX.com, Inc., 679 F. Supp. 2d 312 (E.D.N.Y. 2010) (where defendant used over 900 copyrighted images from Plaintiff's website).
   
   
   2. Follow the terms of the images’ license agreement. Taking images from purchased software (i.e. Microsoft Word Clip-Art) is not necessarily infringement. By purchasing the software, you have accepted the license agreement terms. It is imperative to review the license to find out how the images may be used. For example, sample language from the Microsoft Service Agreement states that Microsoft product users that have access to media images, clip art, and the like, “may copy and use the media elements in projects and documents.” They may not, however, “(i) sell, license, or distribute copies of the media elements by themselves or as a product if the primary value of the product is the media elements; (ii) grant your customers rights to further license or distribute the media elements; (iii) license or distribute for commercial purposes media elements that include the representation of identifiable individuals, governments, logos, trademarks, or emblems or use these types of images in ways that could imply an endorsement or association with your product, entity or activity; or (iv) create obscene works using the media elements.”  The use of licensed images from the internet may not be infringement, as long as you follow the terms of the license. See Stockart.com v. Engle, 10-CV-00588-MSK-MEH (D. Col. Feb. 18, 2011) (where the use of a copyrighted photo on a website without a license was a violation of the plaintiff’s copyright).


2. If possible, use only original text. When preparing text for a webpage, the text should be original, written specifically by the creator. The use of another’s written work without permission is copyright infringement. See Cvent v. Eventbrite, Inc., 96 USPQ2d 1798 (E.D. Va. 2010) (where the defendant’s online directory information was “scraped”, or copied, from plaintiff’s website)


3. Avoid making source code available for public use. The source code of a website can also be registered for copyright protection. The copying of registered website source code is an infringement. See Hermeris v. Brandenburg, 10-2531-JAR (D. Kan. Jan. 23, 2011) (where the defendant’s copying of content and source code of the plaintiff’s online document preparation business was copyright infringement).


4. Video and/or sound recordings should be copyrighted separate from the website. If a website contains video and or sound recordings (such as background music), they should be separately copyrighted (apart from the website itself) as these materials could be easily lifted separately and may have their own independent worth.
 

5. Web designers should operate under a work-for-hire contract. To determine whether a work is made for hire, one must first establish whether the work was made by an employee or an independent contractor. See Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989). If the work is made by the employee, then the work is generally considered to be a work made for hire, and the employer retains control of the work. If the work is created by an independent contractor, then the work is only a work made for hire if (1) it falls within one of the nine enumerated categories of works in Section 101 of the Copyright Act, and (2) the parties specifically agree in a written document that the work is one made for hire. If these provisions are not met, then the work is not a work made for hire, and the independent contractor is considered the “author” of the work. It is therefore essential to create a written agreement with an independent website designer to ensure that the designer assigns all copyright ownership to the website owner. Companies should also be advised that if their website is created by an independent contractor, there should be indemnification clauses in the assignment to ensure that the work, including the source code, is original.


6. Register, register, register. U.S. companies are required to obtain copyright registrations in order to bring an infringement action in the United States. In registering copyrights, website owners should identify the portions of the site that are being copyrighted. In addition, if a copyright owner files for registration within three months of the work’s publication, he is entitled to several remedies in a case of infringement potentially including attorney’s fees.


7. If a copyright owner decides to file a complaint for copyright infringement... Broad language, such as “all texts, photographs, selection, arrangement and compilation”, would be insufficient against a copyright infringement claim. See Salt Optics v. Jand, SACV 10-0828 (C.D. Cal. Nov. 2010) (where specific indication of the infringed portions of a website were necessary to bring an infringement claim).

 

Opting Out, Opting In - Google Books Settlement Update

Last week, a hearing was held in the Southern District of New York by Judge Chin for an update on progress on settlement in the Google Book Settlement.

However, there has been no progress. Previously, the judge had indicated that the settlement may clear antitrust hurdles if the default provision was that authors had to opt-in to the settlement to agree to make their works available through Google Books. This will also allow for snippets of the work available through a search mechanism on Google.

An attorney from Google indicated that there were business issues in addition to legal issues that were still being worked out.

Previously, the Court indicated that it was doubtful that a settlement would be reached. Id. Google does not have much interest in the opt-in provision. Id.

Without a settlement, the judge will likely have to decide whether the use of the snippets from books are a fair use for which Google can provide to users or whether these may be infringements of the literary works. Is it possible that this is what Google actually seeks?

Rather than pay a hefty settlement sum for an opt-in option that is not as attractive to Google, it may merely wait to see if its use of the published materials from authors is a fair use – for which Google may have to pay nothing at all.

The parties have until September 15, 2011 before the next report is due to the judge.

IT’S FRIDAY…NO IT’S $2.99…BUT IT'S FRIDAY...BUT IT'S $2.99

The YouTube viral music video sensation “Friday” featuring Rebecca Black is now the subject of a copyright dispute. 

Apparently, Ark Music, the company that produced the video, wanted to start charging $2.99 for viewing of the “Friday” video on YouTube.  No one told Rebecca Black.  Apparently Black only learned of this development by fans. 

Upon learning of the charges, Black’s lawyers sent a copyright takedown notice to YouTube for the video.  Black’s lawyers claim that Ark Music does not have the rights of publicity or right to advertise the video.  Black’s lawyers also claim that Ark Music has failed to provide the master recording of the song and that the company has no right to exploit the work (i.e. charge $2.99 on YouTube for the video). 

While the dispute is being decided, the video has been removed from YouTube. 

Is this one of those instances where a copyright takedown actually benefits the public.....will there be withdrawal without free access to the “Friday” video, and would anyone pay $2.99 to rent it?

Hangover Lawsuit Update

Last month, Warner Bros. and S. Whitmill “amicably settled” the copyright dispute regarding the use of the tribal tattoo that appears on Mike Tyson’s face from being used on another character in The Hangover 2.  The details of the settlement were not disclosed.

Prior to reaching an agreement with Whitmill, Warner Brothers informed the Court that if it is unable to resolve the lawsuit involving the tribal tattoo on Ed Helms' character in The Hangover 2 (detailed in my previous post), that WB would take the step of altering the appearance of the tattoo on one of the character’s faces in the movie when it is released on DVD.  This apparently is an expensive alteration.  However, it may be less expensive than having to pay damages for infringement.  Obviously, if the reproduction of the tattoo were not longer to appear in the movie, then the claim for additional damages would be mitigated. 

An additional twist on this case is from David Nimmer who filed a declaration as an expert for Warner Brothers. The declaration can be seen in its entirety here.

Part of Nimmer’s argument is that the tattoo (and therefore, the copyrighted work) is not fixed in a tangible medium when the design was affixed to Tyson’s face.  There are several references to the history of the Copyright Act and failure to mention tattoos as part of the legislation.  But I think the analysis misses the overall structure and underlying purpose of the fixation of the work into a tangible medium.  Part of the purpose of the fixation was to ensure that the work was not fleeting.  While arguably, the tattoo may be able to be removed, it does nothing to change the analysis that the work is fixed.  The work was clearly capable of being drawn onto a piece of paper or a picture of the work as appeared on Tyson’s face would suffice to show how the work appeared.  It also raises a completely different question, because clearly Whitmill had to file a deposit of the copyright and could not have filed Mike Tyson’s face.  (I presume a photograph was submitted to the Copyright Office.)  Without getting into the merits of the level of protection that the tattoo should be provided under copyright law, it seems a rather flimsy argument to claim that the work is not fixed in tangible medium.  The photograph itself would show the tattoo artist’s rendering. 

The argument lacks credibility.  By analogy, if an artist drew sketches in pencil, would the drawing not be capable of copyright protection because the copyright registration indicated that the sketch was in pencil and was capable of being removed with an eraser?

Another argument pressed by WB and Nimmer is that there are no reported cases involving copyright infringement for tattoos.  (A case involving Rasheed Wallace was settled out of court – however, in that case, the tattoo involved was an actual tattoo on the person involved not a temporary reproduction on another person.)  There is a copyright infringement case involving temporary tattoos. See Gonzalez v. Kid Zone, Ltd., 2001 U.S. Dist. LEXIS 12008 (N.D. Ill. Aug. 14, 2001).

Because of the settlement we will have no way of knowing how the case would have turned out.  What do you think the Court would have decided? 

Lost in the Moment?

Super Bowl advertisements tend to be the most memorable ads of the year. 

Last year, a Chrysler commercial prominently featured Detroit native Eminem and the background music was one of his hit songs, “Lose Yourself.” 

Last month Eminem's publishing company, Eight Mile Style, filed a lawsuit in a German court for Audi’s use of the same song in a video similar to the Chrysler ad promoting the 2012 Audi A6 Avant.

Audi claims the video is not an advertisement and has not aired in the United States.  According to Audi, the video was shown at a press event in Germany.  The video has since been posted on YouTube and can be viewed here.

While the Audi video has not appeared on television or radio in the U.S., jurisdiction and infringement may be hard to establish for a copyright infringement action in the U.S.  This is likely why Eight Mile has filed suit in Germany. 

However, it poses an interesting question...if the YouTube video is available in the United States, could a copyright infringement action be brought in the United States? 

Would Audi had to have authorized the copy of the video to be allowed to be posted on YouTube in order for a U.S. lawsuit to be brought?  I do not believe a U.S. lawsuit will be filed but I will keep up to see what happens in the German action.

The Hangover 2: Did they go a tattoo far?

Last week brought good news for Hangover 2 fans -- the movie premiered over the weekend as scheduled, despite the copyright infringement lawsuit recently filed against Warner Brother Entertainment by tattoo artist S. Victor Whitmill (Complaint found here via Wired). Along with the lawsuit, Mr.Whitmill sought an injunction to prevent the release of the motion picture.

Mr. Whitmill is a tattoo artist located out of St. Louis, Missouri, whose most notable work is the design tattooed on the face of Mike Tyson. Whitmill obtained a copyright registration for a tattoo design for a tribal design on April 19, 2011.

Mike Tyson appears in The Hangover 2 but it is not the tattooed image on his face that Whitmill is seeking to enjoin but the replication on Ed Helms' character Stu.

I have not yet seen the movie, but in the trailer for The Hangover 2, it appears that Stu wakes up after a night of partying with a tribal tattoo similar in nature to the one that appears on Mike Tyson’s face. The tattoo is also featured in most of the print advertising for the film.

According to his complaint, Whitmill owns the rights to the image based on an agreement that was signed at the time Tyson obtained the tattoo. One of the terms of the agreement (a standard tattoo release form) is that the artwork belongs to the artist, not the person who recieves the tattoo. Whitmill alleges that as the owner of the copyright, he has exclusive rights to copy, distribute and publically display the tattoo. (Obviously, it would be difficult for Whitmill to try enforce any rights in the tattoo as it appears on Tyson’s face. One reason is because Tyson is the owner of the particular copy and has the right to display the work. Second, on some level there must be an implied license that the tattoo artist agreed to by placing his work on Tyson’s face. Otherwise, any photograph of Tyson could be considered an unlawful reproduction.)

In its Answer, Warner Brothers argued that there is no copyrightable expression in the tattoo as the design is not sufficiently original or creative, and that tattoos on skin are not copyrightable. Warner Brothers also hired David Nimmer to provide a declaration in support of the lack of copyrightablity.

Even if the Court does decide that Mr. Whitmill does indeed own the copyright to the tattoo, there are still a number of issues that will need to be decided any ruling on infringement can be made.