Posted on March 8, 2010 by Douglas J. Wood

Social Media in Action in Copyright (EU)

Chapter Authors

Stephen Edwards, Partner – sedwards@reedsmith.com
Dr. Alexander R. Klett, Partner – aklett@reedsmith.com


Introduction

We have referred to copyright in several of the earlier chapters: in relation to advertising and marketing, commercial litigation, and in the chapter on trademarks, principally with reference to U.S. law and in particular the Digital Millennium Copyright Act (“DMCA”). We thought it would be helpful to pull those threads together and to add specific copyright elements, as well as a European law perspective, so as to provide an overview on the significance of copyright to social media across the continents. Copyright is, after all, at the heart of social media. This chapter will highlight some important differences between U.S. and other countries’ copyright laws that companies engaging with social media must have in mind.

In dealing with the position under U.S. law in previous chapters, we make the following points:

  • In relation to branded pages, we ask rhetorically whether a company can afford not to monitor its branded page for, among other things, copyright infringement, even though the provider of the social media service takes responsibility for responding to takedown notices received pursuant to the DMCA. We explicitly answer that question when discussing user-generated content, where we suggest that companies should have procedures in place if they receive a notice of copyright infringement, not least because (unlike the social media operator) they themselves will not likely have a defence under the DMCA to an infringement claim if they use an infringing work in a commercial context.
  • In discussing defamation risks and the immunity offered by the Communications Decency Act (“CDA”) in the United States, we noted that a blog operator (but effectively any company using social media) cannot assert a CDA defence to claims that are rooted in harm to the victim’s intellectual property. In consequence, if the victim asserts, as against the operator, a claim for copyright infringement based on the blogger’s uploading of protected material onto the blog, the operator has no CDA defence, and the claim must be resolved under copyright law and in particular the DMCA.
  • At the end of the discussion in chapter 12 [10] of the relationship between social media and trademark protection, we advise that “it is of the utmost importance to have strategies in place in order to best protect your ownership of intellectual property. By aggressively policing your trademarks, service marks, trade names and copyrights, intellectual property owners will be in the best position to prevent a claim that they have waived their ability to enforce their ownership rights, while at the same time discouraging others from any unauthorised use of such marks and works of authorship.”

If we look at these issues from a European perspective, the same concepts hold good, although it is not the DMCA that governs but rather the E-Commerce Directive[1], as applied by national law in the Member States of the European Union and the European Economic Area. As in the United States, as a general matter, the operator of a social media service is given protection against copyright infringement claims if it operates an effective notice and takedown procedure but, as in the United States, this protection available to the operator may not be available to a company that provides a branded marketing page on which users are able to upload infringing content. Some European courts, such as the German Federal Court of Justice, consistently take the view that while in line with the E-Commerce Directive[2] constant proactive monitoring of sites cannot be expected, an operator has an obligation to prevent subsequent evident infringements by the same infringer.[3] Only in exceptional cases, according to this case law, can an operator be sued to obtain injunctive relief as a precautionary measure if infringements of intellectual property rights on the site of the operator are feared.[4] In general, European courts agree that an obligation to monitor and review content will only exist for operators of services such as social media services with respect to significant, evident infringements.[5] Companies should therefore have procedures in place to ensure that any evidently infringing material or infringing material they are made aware of by right holders can be removed as swiftly as possible.

Copyright Infringements on Social Media Services

The question of whether the use of third-party content protected by copyright by a user on a social media site constitutes copyright infringement can be answered in a fairly straightforward way. If there is no consent by the right holder, such use will inevitably constitute an illegal act of making the work available to the public under most modern copyright regimes. Most operators of social media services provide in their terms of use that the user is responsible for making sure that material provided by him on the service does not infringe third-party copyrights. As has been discussed above, the interesting question then becomes whether the operator of the service can be held liable and can be asked to stop the infringement quickly, particularly in situations in which the identity of the infringer (the user) is difficult to establish or the infringer is located in a faraway country.

Conversely, however, one can ask whether content legitimately created by users of social media services enjoys copyright protection itself. If this is indeed the case one may wonder to what extent the operator of the service or other third parties may be allowed to refer to, cite or otherwise make use of such content.

Twitter

With respect to tweets, which by definition can be no longer than 140 characters, one may doubt whether they will be sufficiently creative and original to enjoy copyright protection. In many cases, tweets will only consist of short regular phrases that may not be regarded as an original work of authorship in the U.S. sense,[6] an original work in the UK sense[7], or a personal intellectual creation as required under German copyright law.[8] Consequently, in many cases, none of the three regimes will provide copyright protection to tweets.

To the extent Twitter states in its terms of use:

You retain your rights to any Content you submit, post or display on or through the Services.

this should actually be qualified by indicating that in most cases, tweets will be in the public domain for lack of originality or creativeness. It is not impossible, however, to create short poems or other brief literary works with no more than 140 characters. If originality and creativity can be established, the situation would be different. The analysis would also be different for longer original works broken down into sequences of tweets and made available on Twitter one by one—such as a short story published on Twitter in small bits of no more than 140 characters each, provided the single tweet enjoys protection on its own.

If a tweet or parts of a tweet can be found to be protected by copyright, the use of the respective content by third parties can constitute copyright infringement if fair use (United States), fair dealing (UK), or a similar exception under the respective applicable domestic copyright regime cannot be established. There is no rule, either, under U.S. or European copyright regimes requiring that in order to infringe a literary work, passages of a certain length need to be copied, provided the sequence used enjoys copyright protection as such.

As a consequence, so‑called retweeting, (i.e., repeating somebody else's tweet under one's own user name) may constitute copyright infringement as well, provided the earlier tweet is sufficiently original and creative to be protected. Citation exceptions provided[9] may not help in this context as mere repeating of an entire text without incorporating it into one’s own original work does not constitute citation.

Facebook, MySpace, et al.

The limitations existing with Twitter with regard to the number of characters do not exist on other social media services such as Facebook and MySpace, among others. The further possibility to upload photographs and/or audiovisual content onto such services leaves no doubt as to the possibility of copyright infringement if third parties copy or otherwise make relevant use without permission of materials taken from somebody’s page on Facebook or a similar site.

Terms of Use and Applicable Law for Copyright Law Purposes

Most social media services have terms of use providing for comprehensive non-exclusive copyright licences granted by users to the operator. Typically, such terms of use also provide for U.S. law in the state in which the service is based. Twitter, for example, provides the following in its terms of use:

These terms and any action related thereto will be governed by the laws of the State of California without regard to or application of its conflict of law provisions or your state or country of residence. All claims, legal proceedings, or litigation arising in connection with the service will be brought solely in San Francisco County, California, and you consent to the jurisdiction of and venue in such courts and waive any objection as to inconvenient forum.

While such terms, if they have been validly made the object of the agreement between the user and the operator of the social media service, may apply for general purposes of international law of contracts, the question needs to be asked whether for purposes of copyright law such a choice of law and venue clause will make all foreign copyright regimes inapplicable.

From a European perspective the answer is clearly: no. According to European case law (and the view of leading European scholars), the posting to social media services of works by users in Europe is governed by the copyright laws of the particular European country in which the user resides, regardless of the contractual regime agreed to in the terms of use. This may be surprising, but it needs to be taken into account, particularly in connection with copyright regimes providing for increased protection for copyright owners, such as under German copyright law.

Moral rights, compulsory remuneration rights, legal limitations on the scope of copyright licences and the prohibition of assignments of copyright provided in the German Copyright Act, for example, will all continue to apply for the benefit of a German right holder or with respect to uses in Germany, even if the operator of the social media service provides for California law. Companies are well advised, therefore, not to be misled into believing that simple choice-of-law clauses, even if they have been validly agreed, will enable them to avoid the much stricter and much more pro-author provisions in certain European copyright regimes, compared with what the U.S. Copyright Act provides.

Music Licensing Issues

In dealing with the copyright issues faced by U.S. companies engaging with social media in the U.S. market, we did not mention an issue that looms large for European and multi-national companies operating within Europe. If a company wishes to enliven its web-presence by using music, the rights-clearance arrangements that will be needed are very different if the company is operating in Europe rather than in the United States. A U.S. company can usually clear rights for the U.S. market by means of obtaining two or, at most, three licences, from the music rights societies and from the record company concerned. To reach the whole of the EU market, a multiplicity of licences will be needed, in many cases covering only a single country at a time. Only for a very small number of works is it possible to obtain European-wide clearance by means of two or three licences; choose the wrong work and you could be looking at having to obtain 30 or more licences.

Bottom Line—What You Need to Do

Police your own copyrights and be mindful of copyright protection that may exist for content provided by others. Be aware of the fact that the international nature of global social media services requires that you not only rely on one domestic or one contractually agreed regime, but that you also keep an eye on foreign laws involved with users based abroad.

When clearing rights for using content yourself, be aware of the international scope of the intended use as well, and make sure that you truly obtain sufficient geographic rights for the intended use.

If you operate a site enabling users to upload content, put in place a procedure allowing you to remove, as swiftly as possible, evidently infringing material or material of which you have been told that it is infringing.


[1]      Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market.

[2]      Art. 15 (1) of the Directive: Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.

[3]      Bundesgerichtshof[German Federal Court of Justice], GRUR 2004, p. 860 – Internet auction I.

[4]      Bundesgerichtshof[German Federal Court of Justice], GRUR 2007, p. 708 – Internet auction II.

[5]      See, for example, Bundesgerichtshof[German Federal Court of Justice], GRUR 1999, p. 418.

[6]     17 U.S.C. § 102 (a).

[7]     S. 1 (1) UK Copyright Designs and Patents Act.

[8]    § 2 (2) German Copyright Act.

[9]     Such as in § 51 German Copyright Act.
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Posted on March 8, 2010 by Douglas J. Wood

Social Media in Action in Copyright (U.S.)

Chapter Authors

Kathyleen A. O’Brien, Partner – kobrien@reedsmith.com
Rachel A. Rubin, Associate – rrubin@reedsmith.com


Introduction

This chapter explores the challenges to owners of copyrighted material (commercials, TV shows, films, music, lyrics, stories, articles, books, artwork, web content characters, etc.) created by social media and some strategies for dealing with such challenges.

The rise of social media and the broad reach of the Internet have created a host of new challenges for copyright owners. Digital technologies, including file sharing, MP3s, and digital photos, allow users to link to and display website content out of context while search engines, email, and social media sites enable them to disseminate copyrighted materials in an instant. While greater exposure and better communication with your company’s customers through social media can increase brand recognition and reach new markets, it also opens the door to copyright infringement on a whole new level.

The ease with which copyrighted material can be disseminated through social media presents competing considerations for copyright owners: how to adequately protect and preserve the value of your company’s creative works without squelching the public dialogue about those works or without alienating your customer base.

The following paragraphs provide an overview of key copyright issues that have arisen, or are likely to arise in connection with, three of the most popular social media sites—YouTube, Facebook and Twitter—and offer some practical pointers for copyright holders on ways to deal with them. We address real-life examples of copyright infringement in social media and how rights owners have responded, and identify key takeaways that rights owners can apply to their own works. We also look at the ways that YouTube, Facebook, and Twitter respond to copyright infringement claims and how they work—or sometimes don’t work—with rights owners. Finally, we provide a brief overview of copyright law to help you understand the legal protections that are available to your company.

Social Media in Action in Copyright

YouTube

YouTube, a popular site for sharing video content, has the sixth largest audience on the Internet and attracts 71 million unique users each month.[1] Each day, the viewing public watches more content on YouTube than on TV and cable combined—with more viewers than the Super Bowl.[2] While the size of YouTube’s audience and its display of video content present unique marketing opportunities, the unauthorized use of copyrighted material by its users is rampant. Users routinely post copyrighted commercials, music videos, TV shows, and films without authorization. They also use copyrighted material without permission in their own videos in a million creative ways ranging from postings of their kids dancing to a Michael Jackson song, to postings of their cats batting at a Disney cartoon on the TV. YouTube has been the object of media criticism directed at both its routine posting of infringing content and its failure to promptly remove such content.[3]

So what remedies do copyright owners have when the content they own is posted on social media sites? First, it is important to understand the legal obligations that have been imposed on Internet Service Providers (“ISPs”) like YouTube, which may help your company to stop infringement. The Digital Millennium Copyright Act (“DMCA”) requires ISPs to remove infringing content, upon notice from the copyright owner, in order to avoid liability for copyright infringement. The DMCA also requires ISPs to terminate the rights of those individuals who repeatedly post infringing content online.[4]

Second, it is important to know what tools ISPs like YouTube have made available to copyright owners to help stop infringement. For example, YouTube has created a dedicated Copyright Infringement Notification page where copyright owners can file an infringement notification.[5] In addition, YouTube has created a Copyright Verification Tool that “assists copyright owners in searching for material that they believe to be infringing and providing YouTube with information reasonably sufficient to permit…[it] to locate that material.”[6] Finally, YouTube offers a Video and Audio ID program that allows rights owners do the following: (1) identify user-uploaded videos comprised entirely or partially of their content; and (2) choose what they want to happen when those videos are found. Choices including making money from them; getting statistics on them, or blocking them from YouTube altogether.[7]

In an interesting twist, in October 2009, Scribd.com, an Internet-based social publishing company, was sued for copyright infringement by a copyright owner as a result of the very steps taken by the ISP to protect copyright owners from infringement. Elaine Scott, an author, claimed Scribd violated copyright law by retaining an unauthorized “digital fingerprint” of her book in its system and using it to ensure that content from the book was not reposted on its website. When Ms. Scott discovered content from her book on the Scribd website in July 2009, she notified the company of the infringement. As required under the DMCA, Scribd removed that content. However, it also left a “digital fingerprint” of the work in its filing system to help it to identify the book if it was reposted. Scribd did not obtain Ms. Scott’s consent to make or maintain this digital fingerprint, or to use her work in this manner.

This lawsuit highlights a Catch‑22 for ISPs. On one hand, if an ISP is notified of a violation and does not take steps to remove infringing material, it could be liable for infringement. On the other hand, using a filter system to make a digital fingerprint of the work to identify additional instances of unauthorized use may, itself, constitute infringement. Here, the court must decide whether using part of a work without the author’s consent is infringement or fair use. This case is particularly interesting because Scribd is a commercial publishing company and has created a filtering system that could be sold or licensed by Scribed to other similar companies. The case will decide whether an ISP’s limited use of a copyright owner’s work without the owner’s permission, in order to prevent reposting, constitutes fair use.[8]

Finally, your company may wish to consider what steps it can take to encourage consumers to use its copyrighted material in limited ways that are acceptable to it, such as by providing them with specific preapproved content through its company website and/or a social media site. Many companies are starting to create branded YouTube channels that allow consumers to interact with the company in new ways, such as through videos, games, or requests for user video responses to questions.[9] Because the YouTube Terms of Service grant YouTube a license in your company’s work, if your company is considering this option, it also should consider negotiating terms with YouTube that permit the company to retain control of its content.

In addition, YouTube Homepage Advertising, a video placement that places your company’s video on the top lineup on the YouTube home page,[10] can help your company to direct traffic to its copyrighted pages, and potentially deter consumers from uploading content without your permission. You then can track the traffic to your company’s video through the YouTube Insight page, which provides reports and maps of the traffic your company’s video receives, broken down by date, time, and global location.[11]

As social media sites like YouTube continue to evolve, it will be important for companies to continue to balance the need to protect their content from infringement against the need to provide consumers with preapproved content to use in their communications about your company and its products on social media sites, so that your company maintains some control and participates in that dialogue.

Facebook

Facebook has more than 350 million active users.[12] If Facebook were a country, its user base would make it the fourth largest country in the world. The enormous marketing opportunities presented by Facebook cannot be denied. These opportunities are not just domestic – about 70 percent of Facebook users are outside of the United States.[13] Further, there are more than 65 million active users currently accessing Facebook through their mobile devices, and the people who use Facebook on their mobile devices are almost 50 percent more active on Facebook than non-mobile users.[14] Not only can copyright infringement occur and proliferate quickly, but it can also be difficult to identify infringers. As a rights owner, this is not all bad news. Facebook is a great forum in which your company can monetize or share its work. However, you should understand how your company can stop infringement and think creatively about how to guide the use of its work in this medium before users take control.

Facebook offers various levels of copyright protection and remedies for infringement.[15] For example, the site provides both an automated DMCA form that your company can use to report copyright infringement,[16] and it has a procedure in place to appeal such claims.[17] Though Facebook’s enforcement of these policies is sometimes criticized, for the most part, these are viable and effective remedies.[18]

The key to copyright protection on Facebook is to monitor the dialogue, to think creatively and to respond quickly. A company that fails to take immediate action may lose out on unique marketing opportunities that may only exist for a fleeting amount of time. Take, for example, Hasbro’s response to Scrabulous, a thinly veiled online version of Hasbro’s Scrabble that was a major Facebook favorite in 2006-08.[19] Not surprisingly, the game and related application became the focus of an infringement lawsuit, which ultimately resulted in the removal of Scrabulous from Facebook; a lot of angry fans; the (not-as-successful) launch of Hasbro’s Scrabble application; and a re-branding and re-launch of what was formerly known as Scrabulous. One of the main reasons Scrabulous became so popular is because there was no “real” Scrabble on the site. Unfortunately, Hasbro missed out on a major opportunity to interact with and engage their audience in social media here by promptly providing a Scrabble application to fill that gap. Hasbro waited until two years after the developer of Scrabulous began exploiting Hasbro’s copyrighted game, made a profit, and gained the support of a broad swath of the Facebook audience, to respond with its own version. By the time the Hasbro finally launched its application, there had been too much controversy around Scrabble, and fans had moved on to other games. A month after the Scrabble application hit Facebook, there were only 8,900 active users, compared with the half-million-a-day users of Scrabulous the day Hasbro filed its lawsuit.[20] Neither Scrabble nor Lexolus, the new non-infringing version of Scrabulous, have recovered. In January 2010, Farmville was the most popular game on Facebook, and Scrabble does not even crack the top 15.[21]

Rights owners should also note how Facebook itself handled the controversy. While Facebook claimed to be a neutral platform provider, many commentators questioned this neutrality.[22] It was in Facebook’s interest to keep the game available on its site because it had a cross-generational appeal, and people could browse other Facebook pages while waiting for their opponent’s move. Any public relations fallout from pulling the game would have negatively impacted the site. Because the legal standards related to games are not as strict as those related to digital music or movies, Facebook was able to walk the line legally and err on the side of its platform developers.

The Scrabulous debacle should serve as a lesson to copyright owners: pay attention to what social media users are doing, act quickly and be creative. Doing so will not only protect your copyright, it can enhance the positive buzz about your company and its products, and can help your bottom line.

Twitter

Twitter is currently the fastest-growing social networking site out there. Twitter grew 1,382 percent year-over-year in February 2009, registering a total of just more than 7 million unique visitors in the United States for the month.[23] As noted in the Trademarks chapter, Twitter provides unique, immediate marketing opportunities,[24] but real risk of infringement of your company’s intellectual property as well. Unlike a traditional social media site like MySpace or Facebook, Twitter is a microblogging site that allows users to send and view short messages called tweets. Tweets are text-based messages limited to 140 characters in length that are posted on a user’s page and viewable to the entire world. Users can also restrict their tweets so they are viewable only to their friends, who are called followers. Users can tweet via the Twitter website, SMS, or smartphone applications.

For now, Twitter’s Terms of Service tend to follow the mold of other social media sites, with standard DMCA takedown requirements and disclosures. Twitter’s Terms of Service note that a user maintains ownership of her content, she grants a license to Twitter “authorizing [Twitter] to make [her] Tweets available to the rest of the world and to let others do the same.”[25] Twitter’s stated Copyright Policy is as follows:

Twitter respects the intellectual property rights of others and expects users of the Services to do the same. We will respond to notices of alleged copyright infringement that comply with applicable law and are properly provided to us. … We reserve the right to remove Content alleged to be infringing without prior notice and at our sole discretion. In appropriate circumstances, Twitter will also terminate a user’s account if the user is determined to be a repeat infringer.[26]

For copyright holders, such as authors, journalists, newspapers, screenwriters, lyricists, photographers, artists, and other holders of copyright in written and visual works, Twitter presents some new and novel challenges. By the nature of a Tweet, a user is more likely to get in trouble for defamation or libel than for copyright infringement.[27] However, as journalists and individuals begin to use Twitter to report during a political protest, such as those following the Iranian presidential election in June 2009 when the government shut down phone and Internet service,[28] or during a national disaster, like the earthquake in Haiti, copyright issues arise.

The unauthorized use of photographs posted via Twitter is the first opportunity the courts will have to examine copyright infringement on the site. In April 2010, Agence France Presse (AFP) sued a photojournalist in the U.S. District Court in New York, for “antagonistic assertion of rights.”[29] The photojournalist took an iconic photo of a woman staring out from the rubble in the aftermath of the Haiti earthquake, which he posted on Twitter via TwitPic, a Twitter-compatible—but separate from Twitter—photo sharing application. The next day, his image was picked up by AFP and Getty Images, and appeared on the cover of several publications and websites. The photojournalist never authorized AFP to use or distribute his images, and sent strongly worded cease-and-desist letters demanding payment. AFP claims that because he posted the images on Twitter, he is bound by Twitter’s terms of service, and that he had granted a nonexclusive license to use, copy and distribute his photographs. The AFP’s case relies on Twitter’s Terms of Service, which primarily address text-based tweets, not content linked to the site via another application. TwitPic has its own Terms of Service. The outcome of this case may change the way journalists and photographers share breaking news and information on social media. It will also inform how the courts approach copyright infringement on Twitter.

This case still leaves open two major questions with regard to Tweets and copyright law: (1) are pure text-based Tweets themselves copyrightable expression, and (2) can text-based Tweets infringe copyright ownership? At the moment, there is certainly potential for copyright infringement, but there are more questions than answers. A user may quote portions of your copyrighted work without attribution, which may be subject to the fair-use defence for an individual Tweet; but what happens if a user starts posting your entire novel, 140 characters at a time? Will a court look at the individual Tweets, or will it look at the larger conversation and context? Is one Tweet part of a longer document, or is each Tweet a separate event? What happens when users use your graphic design as their background on their Twitter pages, or as their personal image in their profile? If a Tweet is in fact copyrightable, is re-Tweeting, reading a Tweet, displaying full Tweets on other sites, or quoting a Tweet in a news story, fair use? Each of these actions copies the entire expression in the original Tweet. The Tweet was posted on a public site by a user who knows it “may be viewed around the world instantly,” and the user agreed via the Terms of Service that her tweets could be re-Tweeted, etc. Although these questions fall clearly within the realm of copyright infringement, the courts and regulators have not addressed them.

Users are beginning to question the copyrightablility of their Tweets. For example, in spring 2009, Mark Cuban, owner of the Dallas Mavericks, was slapped with a $25,000 fine by the National Basketball Association (“NBA”) for tweeting during a game about a bad referee. When ESPN republished his Twitter feed without his permission, Cuban got mad and raised questions about the propriety of ESPN’s act on his personal blog.[30]Under Twitter’s Terms of Service, however, by posting your Tweet, you allow Twitter to broadcast your comment to the entire world, and allow anyone to re-Tweet your comment. ESPN was fully within its rights to repost, but this kind of commentary among the Twitterverse will undoubtedly stir up legal issues.

Like the rest of the Twitter/copyright relationship, it is unclear whether a Tweet that is not quoting from a protected work is copyrightable expression. There is a plausible argument that a Tweet could be copyrighted if it is an original expression, it is not in the public domain, and is not licensed, either explicitly or implicitly. In order to be copyrightable, a Tweet must be sufficiently original—not just a statement of fact or the sharing of information.[31] Generally, there are two aspects to originality: independent creation and a modest quantum of creativity.[32] As a general proposition, mere words and short phrases, even if they occur in an original copyrighted work, do not themselves enjoy copyright protection.[33] Moreover, titles may not claim copyright protection.[34] At only 140 characters, a Tweet is likely too short and too superficial to be an original expression. If a Tweet is a slogan, there is some argument that the short phrase could be trademarked. (See Chapter 14 – Trademarks.)

At least for now, copyright owners should not expect full and complete rights in what they post on Twitter. These are all issues that have yet to be decided directly by a court, and it is as yet unclear how well developed Twitter’s plan for dealing with copyright infringement is, or how well enforced. As a result, a copyright owner must be active about protecting her rights, and must think about how (or whether) Tweets can damage your copyright interests. Determine a standard as to your opinion of objectionable use of your material, and use the copyright infringement policy to your advantage. As the Twitter Terms of Service say, “What you say on Twitter may be viewed all around the world instantly. You are what you Tweet!”[35]

Current Legal and Regulatory Framework in Copyright

Creative Commons Licenses

Creative Commons is a nonprofit organization dedicated to expanding the range of creative works available for others to build upon legally and to share.[36] They provide licenses to mark creative work and to allow an author to decide how others can use, share, remix, or use their work commercially.[37] These licenses give creators and content owners a way to grant copyright permissions to use their works. In the interest of sharing, collaboration, and access to creative content, Creative Commons licenses essentially enable content owners to change their copyright terms from “all rights reserved” to “some rights reserved.”[38] The rights reserved are up to the content owner.

Creative Commons licenses are becoming a popular alternative to traditional copyright licenses, particularly on the Internet.[39] Many individual photographers, writers, and musicians who are not associated with an agency or a label now are using Creative Commons licenses to share and protect their works. These licenses allow creators to grant broader access to their works. Musicians, bloggers, and artists are signing on to the idea of greater public access to information through licensing. New industries continue to accept Creative Commons licenses, so the impact of this shift may be significant. A blogger, for example, can select from seven different licenses, choosing which protections of traditional copyright licenses he wishes to apply to his work, and which he is willing to waive.

In the publishing and music worlds, Creative Commons licenses are becoming more and more common. In August 2009, Google Books launched a program to enable authors to make their Creative Commons-licensed content available for the public to share, download, remix, and use. In May 2009, the band Nine Inch Nails released a “one hundred percent free” album to fans under a Creative Commons license. The band told fans

‘we encourage you to
remix it
share it with your friends,
post it on your blog,
play it on your podcast,
give it to strangers,
etc.’[40]

All tracks are readily remixable via their audio source files that are available on the page.[41] Also, in contrast to services that prevent the re-distribution of tracks, all of these files are 100 percent DRM-free. This alternative path for artists to distribute their music creates a substantial challenge to the music industry, and essentially forecloses any copyright claims the band may have regarding the use of this content in the future.

The problem with these licenses is that content creators do not necessarily understand what rights they are getting or giving up. For example, a photographer uploaded pictures of his trip to Australia to his Flickr account. He later found them used in an Australian travel ad campaign. Though he was upset that the photos were used without his permission and without any payment, he lost his case because he used a Creative Commons license that granted use rights to the public. Thus, companies who chose to grant a Creative Commons license must be sure that they understand exactly what use rights they are granting to the public since they will no longer be able to reap the monetary benefits of the exclusive right to use that content in the future.

The Law Behind Copyright

In general, content on the Internet is protected by the very same copyright laws that protect content off-line. So far, the courts have not expanded the fair use defense to allow for the unauthorized use of copyrighted content by users on social media sites. The Internet does make it more difficult for companies who own copyrighted material to control the unauthorized distribution and use of such works, and may make it harder to identify the infringer and hold him accountable.

What is a copyright? According to the U.S. Patent and Trademark Office,

A Copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished…. The owner of copyright [has] the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly. [42]

A copyright protects the manner in which you express an idea, or the “form of expression rather than the subject matter of the writing.”[43] It does not protect the underlying idea or information. For example, your company’s original description or photograph of a clock could be copyrighted, but your copyright only prevents others from copying your specific description or photograph; it does not prevent them from writing their own description, taking their own photograph, or using the clock. The copyright on Kermit the Frog, for example, restricts others from making copies of or derivative works based on the Kermit character, but it does not prevent others from anthropomorphizing a frog. Likewise, there is no copyright protection for the idea of a hidden camera consumer taste test, but what can be protected is the actual dialogue, copy, layout, photography, music, or other actual expression used by your company in that format.[44]

Copyright law prohibits third parties from creating derivative works based upon a pre-existing work without the copyright owner’s permission. To establish copyright infringement in any context, the owner of the copyright must prove that he owns a valid copyright in the material and that the defendant has reproduced, distributed, or publicly displayed protected elements of the work, or has created a derivative work based on the copyrighted work without permission.[45] In the context of computers, mobile devices, and the Internet, the unauthorized transfer of a computer file representing the copyrighted work, or from which the copyrighted work can be reproduced with the aid of a machine, is copyright infringement.[46]

Copying is established when the copyright owner shows that the defendant had access to the copyrighted work and there is a substantial similarity between the copyrighted work and the defendant’s work.[47] Because the standards by which copyright infringement are judged are so subjective, each case must be decided based on its individual facts. Courts tend to analyze an advertisement to determine whether the allegedly infringing ad captured the “total look and feel” of the allegedly infringed work. This means that the court will look not only at the individual elements of the pre-existing work, but also at the aggregate appearance of the work to determine whether there is “substantial similarity” between them.

Because copyright infringement cases are so fact-specific, there is no bright line rule as to the amount of copying that constitutes copyright infringement. Some cases have found copyright infringement even where only a small portion of the text has been copied. For example, a court found copyright infringement where only 3-6 percent of the overall material had been copied.[48] In that case, the defendant published a book of trivia questions and answers about the “Seinfeld” television show. Only a small portion of each episode, including quotes and situations, was included in the book. Although the court did not find that the defendant had violated the “Seinfeld” copyrights based on the quantitative component, the court focused on the qualitative component, finding that each question was “based directly upon original, protectable expressions in Seinfeld.”[49]

In another case, the same court held that a defendant had not infringed works where it copied approximately 20 percent of the overall material.[50] In that case, the defendant copied approximately 22 abstracts from the plaintiff. Although the court found copyright infringement in 20 of the abstracts, the court concluded that two of the abstracts did not infringe Nikkei’s copyrights, but for two very different reasons.

In the article that copied the 20 percent of the plaintiff’s original work, the court found that the quantity of the copying did not constitute infringement given the “nature” of the articles, namely that they consisted “almost entirely of [plaintiff’s] reporting of unprotected facts . . .”[51] In the other abstract, the court found no infringement of plaintiff’s original work, as the defendant did not copy the abstract itself. The court determined that “by incorporating [plaintiff’s] abstracted facts into new and original sentences, [the defendant] stay[ed] well clear of qualitative infringement even though the abstract use[d] nearly all of the facts contained in the corresponding article.”[52]

Fair Use

The fair use doctrine is an affirmative defense to copyright infringement that limits the exclusive right of the copyright owner to reproduce the copyrighted work.[53] While the fair use defense is also fact specific, the Copyright Act provides the following illustrative list of factors to be considered in determining whether a defendant’s use of the work constitutes a fair use: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.[54]

Bottom Line—What You Need to Do

Although social media presents a new and ever-expanding forum in which to disseminate copyrighted material, copyright owners can use a variety of tools to protect their copyrighted works without squelching consumer interest. It is possible to walk the line between protecting your copyrighted works, encouraging public dialogue about your works, and maintaining a good relationship with your customer base. We encourage copyright owners to understand and participate in social media. Pay attention to how users seek to use and interact with both your copyrighted material and similar types of material offered by others. Be creative and consider new ways your work can be used in social media. If you discover your rights are being infringed in material ways that jeopardize your company’s rights or rob it of its profits, respond quickly in a way that is sensitive to the medium.


[1]      YouTube Advertising Information Page, http://www.youtube.com/advertise.

[2]      YouTube Advertising Information Page, http://www.youtube.com/advertise.

[3]      Most ISPs, including YouTube, do advise users not to use copyrighted words, and counsel them on how to avoid infringement. YouTube posts an intellectual property protection policy on its site and notifies users that they should not use copyrighted material without permission in its terms and conditions. YouTube Terms of Service. YouTube also has a Copyright Tips page that defines copyright protection and tells users how to avoid infringing someone else’s copyright:

Posting copyright-infringing content can lead to the termination of your account, and possibly monetary damages if a copyright owner decides to take legal action (this is serious—you can get sued!). Below are some guidelines to help you determine whether your video is eligible or whether it infringes someone else's copyright. YouTube Terms of Service, http://www.youtube.com/t/terms. YouTube Copyright Tips, http://www.youtube.com/t/howto_copyright.

        Finally, YouTube’s Terms of Service requires users to agree that they will not post any submissions that are subject to third party proprietary rights.

[4]      Full text of the DMCA: http://thomas.loc.gov/cgi-bin/query/z?c105:H.R.2281.ENR:

[5]      YouTube Copyright Infringement Notification, http://www.youtube.com/t/copyright_notice.

[6]      YouTube Content Verification Program, http://www.youtube.com/t/copyright_program.

[7]      YouTube Content Management, http://www.youtube.com/t/contentid.

[8]      Scribd.com Homepage, http://www.scribd.com/.

[10]    Id.

[11]    YouTube Insight, http://www.youtube.com/watch?v=Xo6HBKTyIzQ; YouTube Blog, Broadcasting Ourselves ;), More statistics coming to a video near you (July 22, 2009), http://youtube-global.blogspot.com/2009/07/more-statistics-coming-to-video-near.html.

[12]    Facebook Advertising, http://www.facebook.com/advertising/?src=pf.

[15]    Facebook’s copyright policy for advertisers reads:

Adverts cannot include any content that infringes upon the rights of any third party, including copyright, trademark, privacy, publicity or other personal or proprietary right.

The advertiser must have intellectual property rights to the creative and be permitted to display such creative as advertising on the Facebook Site.

        Facebook Advertising Guidelines, http://www.facebook.com/terms.php?ref=pf#/ad_guidelines.php.

[16]    Facebook Copyright Policy, How to Report Claims of Copyright Infringement, http://www.facebook.com/terms.php?ref=pf#/legal/copyright.php?howto_report

[17]    Facebook Copyright Policy, How to appeal claims of copyright infringement, http://www.facebook.com/terms.php?ref=pf#/legal/copyright.php?howto_appeal=1.

[18]    See, e.g., Sally M. Abel, Trademarks and Rights of Publicity in the Converged World, 978 PLI/pat 57, Sept. 2009.

[19]    Id.

[20]    Id.

[21]    AppData.com – Facebook Application Metrics, Leaderboards for Sunday, January 24, 2010, (Jan. 24, 2010), http://www.appdata.com/.

[22] Caroline McCarthy, Why Facebook Left Scrabulous Alone, The Social – CNET News (Aug. 1, 2008), http://news.cnet.com/8301-13577_3-10003821-36.html?tag=mncol.

[24]    On April 13, 2010, Twitter announced that it will begin to host advertisements on its site. These will not be traditional ads, but rather “promoted tweets” targeted at certain people based on their searches on the site, based on the Google advertising model. Twitter to have paid tweets show up in searches, AP Newswire (Apr. 13, 2010), http://www.google.com/hostednews/ap/article/ALeqM5h51oZKi0PpOIcpnnsbgdzpseGf1AD9F27S1O0. 

[25]    Twitter, Terms of Service, http://twitter.com/tos.

[26]    Twitter, Terms of Service, http://twitter.com/tos.

[27]    In March 2009, Courtney Love, Kurt Cobain’s widow and lead singer of the band Hole, was sued in Los Angeles by a fashion designer who had done work for her, who claims that Love posted a series of mean-spirited defamatory and libelous Tweets about her. Andrew Johnson, Love’s online spat sparks first Twitter libel suit, The Independent (Mar. 29, 2009), available at http://www.independent.co.uk/news/media/online/loves-online-spat-sparks-first-twitter-libel-suit-1656621.html.

[28]    Iran Protesters Using Tech to Skirt Curbs, CBS News.com (June 15, 2009), http://www.cbsnews.com/stories/2009/06/15/earlyshow/leisure/gamesgadgetsgizmos/main5088668.shtml.

[29]    Jessica Lum, News Wire Allegedly Steals Iconic Haiti Photo, Then Sues Photographer, (Apr. 27, 1010), http://www.petapixel.com/2010/04/27/news-wire-allegedly-steals-iconic-haiti-photo-then-sues-photographer/; Dan Kennedy, Haitian Copyright Case Turns on Twitter’s TOS, (Apr. 27, 2010), http://www.dankennedy.net/2010/04/27/more-on-the-haitian-copyright-case/.

[30]    Mark Cuban, Blog Maverick (March 29, 2009), http://blogmaverick.com/2009/03/29/are-tweets-copyrighted/.

[31]    The majority of tweets only relate facts or comments or retweet another’s statement of fact. Kelly Ryan, ed. Twitter Study Reveals Interesting Facts About usage, San Antonio, Texas: Pear Analytics, (Aug. 12, 2009), http://www.pearanalytics.com/wp-content/uploads/2009/08/Twitter-Study-August-2009.pdf.

[32]    Feist Publications, Inc. v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1990).

[33]    See Arica Institute, Inc. v. Palmer, 970 F.2d 1067, 1072-73 (2d Cir. 1992).

[34]    See Arvelo v. Am. Int’l Ins. Co., 1995 U.S. App. LEXIS 27165 (1st Cir. 1995) (per curiam) (citing Melville B. Nimmer & David Nimmer, Nimmer on Copyright, § 2.16, 185-85 (1995 ed.)).

[35]    Twitter Terms of Service, available at http://twitter.com/tos.

[36]    Creative Commons, About, http://creativecommons.org/about/.

[37]    Creative Commons, About, http://creativecommons.org/about/.

[38]    Creative Commons, What is CC? http://creativecommons.org/about/what-is-cc.

[40]    Nine Inch Nails – The Slip download site, http://dl.nin.com/theslip/signup.

[41]    Nine Inch Nails – Remix page, http://remix.nin.com/.

[42]    United States Patent and Trademark Office, Copyright Basics, http://www.uspto.gov/web/offices/dcom/olia/copyright/basics.htm; Federal copyright law protects eight broad categories of original works: (1) literary works; (2) musical works; (3) dramatic works; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. 17 U.S.C. § 102(a) (2001).

[43]    Id.

[45]    17 U.S.C. §§ 501, 106.

[46]    17 U.S.C. § 101; MAI System Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993).

[47]    Los Angeles Times v. Free Republic, 54 U.S.P.Q.2d 1453, 1458 (C.D. Cal. 2000).

[48]    Castle Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132, 144 (2d Cir. 1998).

[49]    Id. at 138.

[50]    Nihon Keizai Shimbun, Inc. v. Comline Bus. Data Inc., 166 F.3d 65, 73 (2d Cir. 1999).

[51]    Id. at 71.

[52]    Id.

[53]    Los Angeles Times v. Free Republic, 54 U.S.P.Q.2d 1453, 1458 (C.D. Cal. 2000).

[54]    17 U.S.C. § 107 (2001).

 
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Posted on September 16, 2009 by Joseph I. Rosenbaum

Veoh Vindicated; Vivendi Vanquished. DMCA Rules.

Veoh Networks, which makes both professionally created programming content and entertainment, as well as user-generated content, available through its website, has often lived in the shadow of Google, YouTube, and Apple’s iTunes. Earlier this week, Veoh got a bit of sunshine.

Two years ago, Universal Music Group (a company owned by Vivendi SA), sued Veoh for copyright infringement. The suit alleged that Veoh’s business was essentially based on the infringing use of copyrighted works of others, notably from Universal’s viewpoint, musical groups and artists.

Veoh countered with the fact that it used filtering technology to detect and remove protected content and, in the words of Judge Matz, writing for the U.S. District Court for the Central District of California, when Veoh “did acquire knowledge of allegedly infringing material . . . . it expeditiously removed such material . . .,” vindicating Veoh supporters who have consistently maintained Veoh is protected by the provisions of the Digital Millennium Copyright Act (DMCA). This is the second time the legal sun has shone on Veoh. A similar lawsuit brought by Io Group, an adult entertainment company, was also decided in favor of Veoh last year.

Legal Bytes has previously reported the criteria necessary to comply with the DMCA (you did read that, right?), thus you know that a key requirement for insulation from liability for copyright infringement under the DMCA is the question of whether, when a company becomes aware of infringing content, it promptly removes it from use and display. The California Court rules that Veoh had done just that, and consequently the safe harbor provisions of the DMCA served to protect Veoh from liability in this case. Judge Matz’ order notes: "The DMCA does not place the burden of ferreting out infringement on the service provider". You can read the full text of the Summary Judgment Order of the California Court.

Universal is expected to appeal, claiming the Judge’s order fails to adequately take into account Universal’s claim that everyone connected with Veoh must have known about rampant infringement and that alone should sustain the ‘knowledge’ which would remove the shield from their entire business model – a shield otherwise available to web hosting companies. However, it may well be an uphill battle since the Court specifically addressed this issue, noting “If such general awareness were enough to raise a 'red flag,' the DMCA safe harbor would not serve its purpose".

If you are concerned you don’t know enough about digital rights management; compliance with the provisions of the DMCA; about liability applicable to website owners and operators or the rights available to content owners, the Advertising Technology & Media group at Reed Smith is for you. Try us. You might like us. Feel free to call me or, if you are already a client, call the Reed Smith attorney with whom you regularly work. 

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Posted on September 16, 2009 by Joseph I. Rosenbaum

A Pirate's Life (Not) For Me: France Strikes Out Internet Piracy

This post was written by Andrew Boortz and Joseph Rosenbaum.

Over the last several months, France’s Parliament has been focusing on the issue of Internet piracy. In May, both houses of the French parliament passed the so-called “three strikes” law which would have given an independent body the ability to disconnect file-sharers from their ISPs. In June, the law was declared unconstitutional by the Constitutional Council because, under French law, the power to force such disconnection could only come through issuance of a court order. In response, French President Nicolas Sarkozy gave the first Presidential speech to the French Parliament in 150 years and passionately defended regulation of Internet piracy. 

After President Sarkozy's speech, the French Senate drafted and passed a modified version of the “three strikes” law which would allow alleged infringers to present their case to a French court, prior to losing their Internet connection. Judges in these hearings would have the power to: (1) order disconnection of the alleged infringer's Internet access; (2) fine the alleged infringer up to €300,000; and/or (3) sentence the alleged infringer to a two-year prison term. Just yesterday (September 15th), the French National Assembly gave preliminary approval to the measure by a vote of 285-225 and now, a joint committee will unify the Senate and Assembly versions and present a final bill to both houses for a vote on September 22nd.

In looking back over the piracy-related events of this year, it may well turn out that 2009 will be remembered as a watershed year in the struggle between Internet pirates and rights holders.  With the Jammie Thomas and Joel Tenenbaum verdicts in the States, the pseudo-shuttering of the Pirate Bay in Sweden, the implementation of a self-imposed, self-regulatory “three strikes” policy by Ireland’s largest ISP (created under threat of massive litigation) and now France’s revised and revitalized new “three strikes” law, the global community is indeed tilting towards greater sanctions and regulation of Internet piracy.

This raises questions for technology innovators. For example, Facebook, which according to a CNN report out today has a social network population nearly as large as the population of the United States, will soon launch a voice chat feature.  Most likely, the feature could be used to stream media across the globe as well as the nation? Would Facebook be liable for creation and distribution of such a feature, which is similar to that which created liability for the Pirate Bay creators for their torrent-tracking website?

Need help? Confused by the torrent of information, technology and legal rights?  Need to know more? Contact Andrew (“Drew”) Boortz, in our Washington, D.C. office, call me or contact the Reed Smith attorney with whom you regularly work.

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Posted on August 26, 2004 by Joseph I. Rosenbaum

Can You Grok This? Fans of Robert Heinlein Smile

In what may be a momentous ruling and certainly a setback to the music, film and entertainment industry’s effort to fight illegal on-line downloading and file swapping, on August 19, the three judges of the Ninth Circuit Court of Appeals upheld a lower court ruling that found that Grokster and Streamcast Networks were not violating the copyright laws merely because they made software available that allows people to trade digital content (e.g., movies, music). To be clear, the decision in no way condones copyright infringement, nor changes the law relating to the illegal use or theft of copyrighted materials, nor authorizes anyone to ignore the intellectual property rights of others. But harkening back to cases which look and feel (pun intended) much like the Sony Betamax cases years ago, the court ruled that this particular type of software—referred to as “file sharing” software—was designed in such a way that it could not be held illegal.

It is noteworthy that this is the same court that essentially brought Napster to its knees a few years ago with an exactly opposite conclusion. While critics will argue that the ruling is a descriptive guide to designing software that can avoid being caught in the web (another pun) of the Copyright Act, many others welcomed the ruling for bringing clarity to a murky area of the law and focusing on the distinctions which make some software and systems infringing, while others are not. For you technical gurus in the audience, the court found it significant that neither Grokster nor Streamcast used centralized databases or computer systems with programming file directories pointing to files on individual users’ computers—in other words, these systems didn’t direct other people (and couldn’t even intercept or prevent people) to actual or potentially pirated music, film or any other content. As with the Betamax cases, the court also found that although there were plenty of arguments (and evidence) provided in entertainment industry briefs noting that the vast majority of content exchanged by these programs was illicitly copied, the software Grokster and Morpheus (the software licensed by Streamcast), had other substantial non-infringing uses and thus could not be held illegal as a matter of law.

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