by Lee Gesmer | May 2, 2013 | DMCA/CDA
The Digital Millennium Copyright Act (DMCA) allows a copyright holder to send a takedown notice to an online service provider that is hosting a copyright-protected work posted by a third party. But, lest the law be used to suppress lawful speech, the DMCA requires that a takedown notice contain (among other things) a “statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law,” and certify, under the penalty of perjury, that the information in the notification is accurate.
What if someone sends a takedown notice that is authorized by the law, and does so in bad faith? The law provides that –
[a]ny person who knowingly materially misrepresents under this section . . . that material or activity is infringing . . . shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer . . . as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing . . ..
But there is a hidden nuance to the law: what if the takedown notice demands takedown of a work that the complaining party owns, but where the use that is the subject of the notice is protected by the copyright fair use doctrine? In other words, what if the takedown notice is based on a misrepresentation that a fair use is infringing? Should such a notice be viewed as a misrepresentation, and the complaining party subject to penalties?
This is the issue before Massachusetts U.S. District Court Judge Richard Stearns in Tutuer v. Crosley-Corcoran. Without getting into the sordid details of this case, it’s enough to say that the case arose out of an online conflict between two bloggers, during which Crosley-Corcoran posted a photo of herself giving Tutuer the finger.* Tutuer, in turn, posted the image on her website without Crosley-Corcoran’s permission. On thing led to another, and eventually Crosley-Corcoran sent a DMCA takedown notice to Tutuer’s ISP. Tutuer filed suit, claiming that her use of the image was fair use (and therefore was “authorized by . . . the law”). Crosley-Corcoran’s takedown notice was, she alleged, an invalid notice, and therefore an abuse of the DMCA.
*Or, as Judge Stearns put it, “a graphic gesture with her middle finger that is often associated with an unrealized ambition of French soldiers at the Battle of Agincourt.”
Crosley-Corcoran, who lives in Illinois, filed a motion to dismiss based on lack of personal jurisdiction in Massachusetts. However, in reviewing the case Judge Stearns focused on an additional issue, one that Crosley-Corcoran had not herself raised. As Judge Stearns put it:
the court seriously questions whether Tuteur has stated a viable cause of action against Crosley-Corcoran. The takedown notice at issue appears to conform to the letter of the requirements of … the DMCA. In it, Crosley-Corcoran states accurately that her likeness has been copied without her express authorization and published by Tuteur without permission …. It is true that if the tables were reversed, and this was a lawsuit brought by Crosley-Corcoran against Tuteur for copyright infringement, Tuteur would have a plausible, and even dispositive fair use affirmative defense, … . But there is no requirement in the DMCA that a notice-giver inform the service provider of an infringer’s possible affirmative defenses, only that she affirm her good faith belief (as appears to be the case here) that the copyrighted material is being used without her (or her agent’s) permission. Seen in this light, there is no material misrepresentation by Crosley-Corcoran of infringement, as a viable cause of action …
Judge Stearns issued an Order to Show Cause, giving Tuteur 21 days—until May 1, 2013—to show why the case should not be dismissed on the merits of the DMCA improper takedown notice claim (and to address, as well, Crosley-Corcoran’s claim of lack of personal jurisdiction).
Tutuer filed her response yesterday. Also, the Electronic Frontier Foundation and Digital Media Law Project filed a motion for leave to file a joint amicus brief, along with their proposed brief. (Both briefs linked below).
Clearly, Judge Stearns’ Order raises a thorny issue under the DMCA, and one that is not expressly addressed in the statute. On the one hand, given that the question whether a work is subject to fair use is highly fact-dependent and is often the subject of extensive legal debate, how is the court to deal with an alleged improper takedown based on lawful fair use? Adjudication of this issue would require a trial to determine whether the fair use doctrine applied, and whether the copyright owner that sent the takedown notice had a subjective good faith belief that the work in question was not authorized under the fair use doctrine. Given the fact that a losing wrongful takedown notice defendant is subject to attorney’s fees, the party issuing the takedown is suddenly at potentially significant financial risk. Even if the actual damages are small, the attorney’s fees could be enormous.
On the other hand, there are many examples (some of which are provided in the EFF brief), in which the DMCA takedown procedure has been abused in order to silence lawful commentary making fair use of the work that is the subject of the notice. The DMCA should not be a weapon that copyright owners can use to force the removal of fair use free speech that they dislike.
How is Judge Stearns to decide this issue? It is an issue of first impression in this circuit, so Judge Stearns has no controlling precedent to guide him. In fact, no district court in the First Circuit has addressed this issue. Tuteur and the EFF rely on 9th Circuit district court cases, which are not binding on Judge Stearns, and may not even be persuasive to him. The leading reported case, upon which Tuteur and the EFF rely, is Lenz v. Universal Music (N.D. Cal. 2008). That case holds that an allegation that a copyright owner acted in subjective bad faith by issuing a takedown notice without proper consideration of the fair use doctrine is sufficient to state a misrepresentation claim under the DMCA. However, even in that case the court noted that it had “considerable doubt” that the plaintiff would be able to prove that the defendant acted with subjective bad faith.
The answer, unfortunately, is that Judge Stearns may avoid the issue altogether by holding that personal jurisdiction over Crosley-Corcoran is lacking in Massachusetts, and therefore decline to reach the more difficult issue of whether Tuteur has a claim arising out of a wrongful takedown notice. That would be too bad, since Judge Stearns is in a position to help develop the law around takedown misrepresentations based on fair use, and possibly advance this case to the First Circuit, which would become the first federal circuit court to squarely face the issue.
Stay tuned.
Order to Show Cause (April 10, 2013)
Tuteur Response to Notice to Show Cause
EFF/Digital Media Law Project Amicus Brief (May 1, 2013)
by Lee Gesmer | May 1, 2013 | CFAA
Yet another “data scraping” case is percolating in the Northern District of California. Craigslist has sued the online aggregator 3Taps, Inc. (and others), claiming that they illegally copied Craigslist’s classified apartment listings. In effect, 3Taps was attempting to disintermediate Craigslist—to insert itself between Craigslist and its users.
3Taps filed a motion to dismiss the multiple claims asserted in the suit, most of which was denied in the decision linked below.
Of particular interest is the court’s refusal to dismiss Craigslist’s claim that 3Taps violated the Computer Fraud and Abuse Act (CFAA), a controversial federal “anti-hacker” statute that has been interpreted in conflicting ways by the federal courts (see an earlier post on this topic here), and which was the law Aaron Schwartz was accused of violating (contributing, many believe, to his suicide earlier this year).
The CFAA permits a civil cause of action against any person who “intentionally accesses a computer without authorization or exceeds authorized access, and thereby obtains . . . information from any protected computer.” 18 U.S.C. § 1030(a)(c). Craigslist has alleged that 3Taps’ use of Craigslist’s listings violated a cease and desist letter Craigslist sent to 3Tap prohibiting it from republishing the listings. The court found that 3Taps’ continued use was a potential violation of the CFAA as the Ninth Circuit has interpreted that statute, and denied 3Taps’ motion to dismiss that claim.
This ruling is consistent with decisions in the First Circuit, the federal circuit which includes Massachusetts. (See, e.g., EFF Cultural Travel v. Explorica, 1st Cir. 2001).
Although the California district court denied 3Tap’s motion to dismiss the CFAA claim, it expressed its concerns around the policy issues raised by Craigslist’s CFAA claim in this case. Quoting from the opinion:
The parties have not addressed a threshold question of whether the CFAA applies where the owner of an otherwise publicly available website takes steps to restrict access by specific entities, such as the owner’s competitors. “Some commentators have noted that suits under anti-hacking laws have gone beyond the intended scope of such laws and are increasingly being used as a tactical tool to gain business or litigation advantages.” … The CFAA was passed in 1986, well before the development of the modern internet, and originally only covered certain computers operated by the federal government or financial institutions. … Although courts in this district have held that the CFAA may apply to unauthorized access to websites, the parties have not cited a case from this district or the Ninth Circuit addressing its application to information that is generally available to the public. … Applying the CFAA to publicly available website information presents uncomfortable possibilities. Any corporation could subject its competitors to civil and criminal liability for visiting its otherwise publicly available home page; in theory, a major news outlet could seek criminal charges against competing journalists for reading articles on its website.
These comments are a reflection of the Ninth Circuit’s concerns about the application of this statute, as described in the Ninth Circuit’s high-profile 2012 en banc decision in U.S. v. Nosal.
Last year (when this suit was filed) Professor Eric Goldman provided a trenchant analysis of the business issues facing Craigslist which motivated it to bring this lawsuit. He concluded, “even though it might look like Craigslist is making bizarre moves, I think its moves are quite rational. They’re exactly the kind of moves you’d expect from a panicked company realizing its uncomfortably precarious marketplace position.”
Craigslist v. 3Taps (N. D. Cal. April 29, 2013)
by Lee Gesmer | Apr 30, 2013 | Copyright
The recording companies have consistently maintained that the Digital Millennium Copyright Act’s (DMCA) notice-and-takedown regime does not apply to pre-1972 works. However, the law on this arcane issue has been scarce. In Capital Records v. MP3tunes (SDNY 2011), the court ruled that pre-1972 works were covered by the DMCA. After this decision the recording companies decided to make their argument in state court. Their strategy paid off – the New York State intermediate appellate court (the New York Supreme Court, Appellate Division), has issued a decision contrary to MP3tunes. In UMG Recordings v. Escape Media (often referred to as the Grooveshark* case), the court held that “Congress intended for the DMCA only to apply to post-1972 works.”
*Grooveshark is a music streaming service that allows users to upload sound recordings. According to Wikipedia, Grooveshark streams over one billion sound files a month.
The Grooveshark case arises out of two legal oddities: first, Congress did not extend copyright protection to “sound recording” until it passed the 1972 Copyright Act (the effective date of protection being February 15, 1972); and second, before 1972 copyright was subject to state law. The upshot of this is that although the federal courts have exclusive jurisdiction over most copyright law claims, pre-1972 sound recordings are an exception. Claims for breach of pre-1972 sound recordings can be brought in state court and decided under the antiquated state copyright laws.*
*Pre-1972 sound recordings remain protected under state copyright laws. All post-1972 copyrighted works are subject to federal copyright law. Under current law, state law jurisdiction over pre-1972 sound recordings continues until 2067, at which time all state protection will be preempted by federal law and pre-1972 sound recordings will enter the public domain. Yes, this is bizarre and inexplicable. If this strikes you as bizarre, you are normal.
Clearly, as I stated in the title of this post, this holding has the potential to blow open a hole in the DMCA system of safe harbors. For example, is Google now liable for every pre-1972 sound recording uploaded to Youtube, if the owner of the copyright files suit in New York state court? Must Google review every upload by a user to ensure that it is not a pre-1972 sound recording (a well-nigh impossible task)? Can New York state law trump federal law for sound recordings under the DMCA for the next 54 years?
This decision is only one step in this ongoing case. The trial court must now determine whether Grooveshark is liable for copyright infringement under the theory of secondary liability (since Grooveshark’s users, not Grooveshark, posted the pre-1972 sound recordings). However, there is little or no legal precedent upon which to base secondary liability for state copyrighted works. There is also the question of whether a small company like Grooveshark can afford this ongoing litigation, or whether the case will force it to fold.
This decision creates a new element of uncertainty under the DMCA, a statute that recently had been clarified by the federal courts. Ten steps forward, five steps back.
UMG Recordings v. Escape Media (Grooveshark) (April 23, 2013)
by Lee Gesmer | Apr 28, 2013 | Copyright
Assume I were to take a well-known, in-copyright work of art, modify it in a variety of ways and publish the results as a coffee table book. To make this thought experiment easy, assume that the Statute of Liberty is covered by a U.S. copyright registration today—in fact, the Statue of Liberty was registered with the U.S. Copyright Office in 1876, but its registration has long-since expired. Assume I took 30 photographs of the Statue and published my book with the images modified in various ways. For example, I created collages, altered the face of the Statue and superimposed various objects on the Statue. Instead of holding a torch and a tablet, in one picture she is holding a photo of the head of Osama Bin Laden, and in anther she is holding a day-glo image of the World Trade Center buildings. In some cases I used only parts of the Statue, and in others I painted objects that obscured the face. You get the idea.
Would the sculptor be able to assert copyright infringement, or would my book be protected by the copyright doctrine of fair use? The legal question, more precisely, would be: is my use of the Statue sufficiently transformative to qualify as fair use?
An issue like this faced the Second Circuit Court of Appeals in a much-watched case, Cariou v. Prince. The court released its decision last 
Thursday, reversing a Southern District of New York District Judge’s decision that 30 images copied from Patrick Cariou’s Yes Rasta book of photographs of Rastafarians in Jamaica and modified and recontextualised by “appropriation
artist”* Richard Prince were not covered by the fair use defense to copyright infringement. The district court’s rationale for rejecting the fair use defense was that Prince’s works (contained in a collection entitled “Canal Zone”) `did not comment on, or critically refer back to, Cariou’s original works. The Second Circuit rejected this reasoning, holding that “the law imposes no requirement that a work comment on the original or its author in order to be considered transformative.”
*”Appropriation art” refers to taking photographs and other images that others have produced and incorporating them into paintings and collages that the appropriation artist then presents, in a different context, as his own.
The Second Circuit’s reversal of the district court did not come as great surprise. Prince had a seemingly strong argument that the district court had ignored established fair use principles, and had issued an injunction ordering the destruction of Prince’s works without weighing any of the free speech interests at issue. Nevertheless, the case is likely to be viewed as an important precedent in the area of fair use as applied to appropriation art. The heart of the court’s rational was stated as follows
[O]ur observation of Prince’s artworks themselves convinces us of the transformative nature of all but five, which we discuss separately below. These twenty-five of Prince’s artworks manifest an entirely different aesthetic from Cariou’s photographs. Where Cariou’s serene and deliberately composed portraits and landscape photographs depict the natural beauty of Rastafarians and their surrounding environs, Prince’s crude and jarring works, on the other hand, are hectic and provocative.
The court found that the the “composition, presentation, scale, color palette, and media are fundamentally different and new compared to the 
photographs, as is the expressive nature of Prince’s work.” The court stated that “[T]he fair use determination is an open-ended and context-sensitive inquiry.” If the original work “is used as raw material, transformed in the creation of new information, new aesthetics, new insights and understandings – this is the very type of activity that the fair use doctrine intends to protect for the enrichment of society.”
The Second Circuit concluded that 25 of the 30 Prince images were transformative as a matter of law, requiring no further fact finding (and no trial) on remand. It sent five pictures back to the lower court judge to decide whether they violated Cariou’s copyrights under the legal standard set forth in the opinion. One of the judges on the three-judge panel dissented from the majority’s decision to assess the transformative nature of some of Prince’s works, but not others, and argued that all of the works should be remanded to the district court for analysis under the proper legal standard.
Of course, the key question in cases involving “appropriation art” is how a judge or jury is to determine whether the appropriated work is sufficiently transformative. The “gray area” in cases of this sort can be large, and highly subjective. What one judge or jury may conclude is transformative, another may not, making it difficult to eliminate all risk when publishing works of this sort. Judges and juries who may have little of no art experience will be asked to make judgments as to whether a piece of appropriation art uses a sufficiently “different aesthetic” or whether it is something “new and different” than the original work. Moreover, the willingness of the Second Circuit to decide the issue of fair use as to 25 of the 30 works without providing Mr. Prince with a jury trial may encourage trial judges to decide appropriation art cases on summary judgment, adding to the trend away from jury trials in copyright cases.
Left: Patrick Cariou, Photograph from Yes Rasta. Right: Richard Prince, Graduation
Cariou v. Prince (2nd Cir. April 25, 2013)
[The images on this web page are from Richard Prince’s work, “Canal Zone.” All photos at issue in the case, both the originals and the “transformed” works by Richard Prince, are available on the Second Circuit website, here.]
by Lee Gesmer | Apr 24, 2013 | What Were They Thinking
I haven’t written a post that falls in the “what were they thinking” category for quite a while, but you don’t see this very often.
In Angiodynamics v. Biolitec AG Massachusetts federal district court judge Michael Ponsor (pictured left) entered a preliminary injunction forbidding the defendant from entering into a merger with its German subsidiary corporation, so as not to put the company’s assets outside the reach of the plaintiff. In addition to corporate defendants, the corporate defendant’s CEO, Wolfgang Neuberger, was named as an individual defendant.
The injunction order was appealed, and the First Circuit upheld the injunction. The defendant then went forward with the merger in direct violation of the court’s order.
When Judge Ponsor received the plaintiff’s motion for contempt he ordered that Mr. Neuberger appear at the hearing on that motion. Neuberger declined to attend on the grounds that he was “afraid that the Court may . . . incarcerate him.”
Based on my experience with Judge Ponsor, he is a relatively easy-going, patient judge (as federal judges go). Not in this case. In response to the plaintiff’s motion for contempt he wrote that the defendant violated the injunction “in every way it could be violated: text, substance, spirit, body, and soul.” Judge Ponsor has been on the federal bench for 25 years. He wrote that the defendants’ conduct “constitutes the most flagrantly offensive violation of a court order that this court has personally encountered.”
Judge Ponsor entered an order that, in its severity, is unprecedented in my experience:
First, he ordered that a warrant be issued for the arrest of Wolfgang Neuberger. He stated that “the court asks the marshals to do everything possible to ensure that the warrant is effectuated internationally and Neuberger is brought to stand before this court.” This warrant is not to be taken lightly. In 2012 the U.S. Marshall Service arrested 36,200 federal fugitives. The Marshall Service “sees to it that there is no safe haven for criminals who flee the territorial boundaries of the United States.” Germany will not extradite a German citizen to the U.S. for criminal prosecution, but Neuberger is subject to arrest in many other countries that do have extradition treaties with the U.S.
Second, he ordered that the defendants be fined as follows: $1 million on May 10; $2 million on June 1; $4 million on July 1; $8 million on August 1 and on the first of each month thereafter. These fines will continue until the merger is reversed and the status quo ante restored. Likewise, only then will Mr. Neuberger be released from prison (assuming he is apprehended).
Third, Judge Ponsor has requested that the U.S. Attorney’s Office prosecute Neuberger for criminal contempt.
In the meantime, the fines ordered by Judge Ponsor will continue to accumulate unless and until the merger is reversed. Whether the plaintiff will be able to enforce those fines in Germany is an open (and doubtlessly difficult) question. However, a judgment against Biolitec (whether to enforce the fines or, perhaps, a default judgment) would be a serious obstacle to the company ever selling products (lasers and laser delivery systems) in the U.S. in the future, since the plaintiff could attach or trustee process any monies owed to Biolitec by an entity in the U.S.
Bottom line, Biolitec should reverse that merger post haste. What were they thinking?
Angiodynamics v. Biolitec AG (April 11, 2013)
