Recent Intellectual Property Legal Issues

This post is not directly related to our issue but should be of interest to readers as it relates to recent intellectual property issues and may provide guidance on the Getty case.

(1) In late July, 2008, a federal court dismissed Tiffany, Inc.'s trademark infringement suit against eBay. Tiffany had sued eBay due to the number of Tiffany "knock-offs" sold on eBay's e-marketplace website. Tiffany had made two claims against eBay: that eBay directly infringed on Tiffany's trademark by promoting the sale of Tiffany products and by advising sellers on how to better market Tiffany products, when all the time these were not Tiffany products and secondly that eBay indirectly infringed on the Tiffany trademark by hosting the sale of Tiffany knockoffs. The court ruled that eBay's use of the Tiffany name and eBay's promotion of the sale of Tiffany items was a "fair use" of the trademark. But it is the court's ruling on the "indirect trademark infringement " claim that is interesting. The court said that since there was nothing about the proposed sale that would telegraph to anyone that the sale was of a knock-off item as opposed to an actual Tiffany item, that eBay could not be responsible for the seller's trademark infringement of Tiffany's name and design. The court noted that in every instance of a Tiffany knock-off sale, as soon as eBay was notified by Tiffany that it was not an actual Tiffany product being sold, eBay took the sale off its website and derogated the seller to a "bad seller's" list The court held this was sufficient conduct on the part of eBay to make it not responsible for indirect infringement. While trademark law is not identical to copyright law, there are parallels in the two areas. eBay's reaction to the notice from Tiffany is similar to many of our client's reaction to notice from Getty. They did not actually download the allegedly copyrighted image and took it down immediately once notified of the alleged infringement. It should certainly give Getty pause as to whether they will be able to get the amount of damages they seek.

(2) In today's NY Times, there is a front page story in the Arts section about DJ Girl Talk ( real name Gregg Gillis, be careful not to download the photo accompanying the article, it is from Getty Images!) who has released an album of "mixes" that are comprised of overlayed samples of songs. He claims it is a "fair use" of the copyrighted song because he uses such a small portion of it to create a new original work. I suspect that if push came to shove a court of law would find that it is not a fair use as anyone working in the intellectual property field know that most labels and producers spend a fair amount of time getting clearances and licenses when their recording artists want to employ or sample even a "beat" from another song. While this position may seem at odds with my position on the Getty issue, it is not - please remember that more often I am on the side of the artist/author trying to protect his/her/its intellectual property, it is just that Getty is over-reaching and over-charging and may not have the correct legal position. But what is interesting about the DJ Girl Talk issue is that the Times speculates that the music industry is cautious about bringing suit against the popular DJ because of bad publicity and the danger of setting a bad precedent. Well, I am sure that Getty is (and should be) concerned about similar issues here. They are already getting bad publicity from this and if a court agrees with my legal position should it get to court, they will have to stop this gravy train of demand letters and settlements. That may explain why no lawsuits have been filed even though they started this in 2005.



Edited 2 time(s). Last edit at 10/31/2008 12:55AM by admin.

A reader of this site sent me the following via email :

[recordingindustryvspeople.blogspot.com]


The text below is taken from the link above - seems to me most of us in the Getty case had no idea we were getting images that "belonged" to Getty and how would we find out? And in many cases the images used were actually thought to be in the public domain or purchased properly. So, would the below "innocent infringement" defense apply to us since we had no way of knowing the images were (perhaps) copyrighted???

Innocent infringement defense may reduce damages to $200 per song file in Maverick v. Harper

In Maverick v. Harper, a San Antonio, Texas, case of which we were unaware until yesterday, the RIAA has been pursuing a college age defendant who admitted to having committed copyright infringement using the Kazaa program when she was 16 years old.

Although admitting copyright infringement, she asserted an innocent infringement defense under 17 USC 504(c)(2), which could reduce the statutory damages to $200 per infringement.

The RIAA argued that defendant could not qualify for 'innocent infringer' status, since CD's of the songs sold in stores have copyright notices.

The Court disagreed, and denied the RIAA's motion for summary judgment unless the RIAA agrees to accept $200 per infringement:

Plaintiffs request the statutory minimum damages of $750 per work rather than a calculation of actual damages. Defendant contends that due to her age—sixteen years old at the time of the infringement—and technological experience, she did not intentionally violate Plaintiffs’ copyrights and should therefore be considered at most an innocent infringer.

The damages provision of the Copyright Act provides that a plaintiff may elect to seek
minimum damages of $750 per work. 17 U.S.C. § 504(c)(1). However, it also provides that “where the infringer . . . was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.” 17 U.S.C. § 504(c)(2). The defendant has the burden to prove the lack of intent necessary for innocent infringement. Id.

As evidence of her “innocent” infringement, Defendant presents a signed affidavit stating that before the lawsuit, she “had no knowledge or understanding of file trading, online distribution networks or copyright infringement.” In addition, Defendant stated that “Kazaa and similar products did not inform me that the materials available through their service were stolen or abused copyrighted material and I had no way of learning this information prior to this lawsuit.” (Id., at 13). Plaintiffs contend that by complying with 17 U.S.C. § 402 and placing notices on each the containers and on the surface of the compact discs of the Recordings, they have provided notice such that Defendant could have learned that the Recordings were copyrighted. This argument is not completely satisfactory. In this case, there were no compact discs with warnings.

The Copyright Act provides that “f a notice of copyright . . . appears on the published phonorecord . . . to which a defendant had access, then no weight shall be given to such a defendant’s interposition of a defense based on innocent infringement” unless the infringement was believed to be fair use. 17 U.S.C. § 402(d). Although the Fifth Circuit has not addressed this issue directly, the Seventh Circuit has found that an innocent infringer defense did not apply in a case where the defendant “readily could have learned, had she inquired, that the music was under copyright.” BMG Music v. Gonzales, 430 F.3d 888, 892 (7th Cir. 2005). Defendant, relying on Electra Entertainment Group v. McDowell, a case involving a thirteen-year-old girl, argues that her age and knowledge of technology alone should be sufficient to introduce a genuine issue of material fact as to innocent infringement. The McDowell Court held that a genuine issue of material fact was present as to the defendant’s access to the copyright notices. See Electra Entertainment Group Inc. v. McDowell, No. 4:06-CV-115 (CDL), 2007 WL 3286622, at *2 n.2 (M.D. Ga. Nov. 6, 2007).

Although proper notice was provided on the cover of each of the Recordings, a question remains as to whether Defendant knew the warnings on compact discs were applicable in this KaZaA setting. Defendant admitted that she owned compact discs. However, both in her affidavit and in her deposition, Defendant claimed that she believed using KaZaA and similar products to be akin to listening to radio over the internet and did not know that the Recordings were being either downloaded or distributed. She further claimed that prior to this lawsuit, she did not have any understanding of copyright infringement.

At the summary judgment stage, all factual disputes must be construed in the light most favorable to the non-moving party—in this case, Defendant. Anderson, 477 U.S. at 255. Defendant has the burden of proving by a preponderance of the evidence that her actions constituted innocent infringement. 17 U.S.C. § 502(c)(2). Plaintiffs have not introduced any evidence to contradict that Defendant did not have an understanding of the nature of file-sharing programs and copyright sophisticated enough to have reason to know that her actions infringed Plaintiffs’ copyrights. Therefore, the Court finds that a fact issue exists as to whether Defendant was an innocent infringer.


MY REPLY:


This is essentially a re-statement of our position relating to Getty Images. That is, that intent does matter particularly with respect to the amount of damages to which Getty may be entitled. This opinion, along with the case I mention above, Tiffany v. eBay, enforces that we have a strong legal position and just need to push back until Getty sees the light of day here. I want to thank the reader for bringing this case to our attention.

Oscar Michelen

Today the NY Times reported that a judge ruled in favor of J.K. Rowling, popular author of the Harry Potter series, in a copyright/trademark infringement claim she brought against a fan who developed an online encyclopaedia of Potteralia (my word, don't steal it).

The fan had copied whole sections of her book as well as of course, all the names, characters, place names, plot lines, etc. His defense was that it was "a fair use" one of the exemptions of copyright infringement. Ironically, if he had made fun of the series or critically reviewed the books,and had used the exact same quotes in his parody or critique, he would have likely won his fair use defense. But instead his pure and unaltered devotion to the works meant that it was out and out copyright infringement.

The point of this post - despite all of the above, the court awarded Rowling (actually her publishing company) the whopping sum of $6,000. Years of litigation, evidence of direct, intentional infringement and you get $6,000. Of course, it was vitally important for Rowling to fight this fight to establish that this kind of site does harm to her ownership rights and ability to market her ideas so the money was irrelevant.

Remember that the website owner in the Rowling case did not want to take the site down. But for Getty, its all about the money as almost everyone contacted by them immediately stops using the images and therefore stops any alleged infringement. This monetary award should give Getty pause (no legal fees were awarded according to the report) and make them realize that the damages they seek are insupportable in a court of law.



Edited 1 time(s). Last edit at 10/31/2008 12:54AM by admin.

Just wanted to share some language from another court case I came across while doing some legal research on another copyright claim. The court had decided the defendants were innocent infringers and stated:


"The concern of this Court is that in these lawsuits, potentially meritorious legal and factual defenses are not being litigated, and instead, the federal judiciary is being used as a hammer by a small group of plaintiffs to pound settlements out of unrepresented defendants."
-Hon. S. James Otero, District Judge, Central District of California, March 2, 2007, Elektra v. O'Brien, 2007 ILRWeb (P&F) 1555


Sound applicable to the Getty cases?

In an effort to keep you guys updated on trends in copyright law, I wanted to tell you about Faulkner v. National Geographic a case decided herein NY last month that completely supports our position on Getty. I'd be glad to summarize it for you. Photographers sued National Geographic for using their unregistered images without permission. They had given permission for some form of media but not for use in CDROMs etc. They sought all kinds of punitive damages and asked for "multipliers" based on the use and re-use of the image in the future since the CD ROMS were distributed in the marketplace.

While the court did not rule on what would have been fair compensation (it left that for a later trial) it ruled that (1) it has long been the law that statutory damages are not available as the images were not registered; (2) plaintiffs could only get actual damages (3) evidence of willfulness is therefore irrelevant and (4) while it didn't give an amount, the decision makes clear that the court believed $1,320 per image was likely the best plaintiffs would get. Its important to note the court talked about that number because (for whatever reason) Nat'l Geographic did not contest plaintiff's evidence that this was a reasonable license fee. Here are some snippets from Judge Lewis Kaplan's decision:

Plaintiff may not pursue statutory damages here because he did not register his claims to copyright in the photographs in question before the start of the alleged infringement. See, e.g., Mannion v. Coors Brewing Co., 530 F.Supp.2d 543, 554 (S.D.N.Y.2008); 17 U.S.C. § 412. His claim therefore is limited to “actual damages” under 17 U.S.C. § 504(a).

The Second Circuit (THE NY APPELLATE FEDERAL COURT) has made abundantly clear that “[p]unitive damages are not available in statutory copyright infringement actions.” Accordingly, the plaintiff's punitive damages claim is stricken.

As I have concluded above, the Copyright Act limits recovery in this case to “actual damages” and does not permit recovery of punitive damages. Whatever the industry may do or believe as a matter of voluntary and consensual practice does not trump Congress' limitation of damages for infringement in this case to actual damages.

I feel compelled to make one additional point. What plaintiff is entitled to here is actual damages, one measure of which is a reasonable license fee that would have been arrived at between a willing licensor and a willing licensee. Plaintiff Psihoyos here claims infringement of copyright in five images. Were Mr. Dauman's (THE PLAINTIFFS EXPERT) theory of damages accepted, he would be entitled to damages of more than $900,000. And that is just a drop in the bucket. Mr. Dauman's theory, applied to plaintiff Ward, who claimed infringement with respect to 532 images and whose case has been dismissed on other grounds, would have yielded damages to Mr. Ward of more than $96 million.

Indeed, he (THE EXPERT) conceded at his deposition that “had they sought permission ahead of time the cost per picture was $1,350.”

Some sense of rationality must prevail in the law. Certainly if photographers doing this sort of work commanded such compensation in the real world, one would have expected Mr. Dauman to have said so. But there is nothing in this record to suggest that figures such as these are at all reasonable.



Edited 1 time(s). Last edit at 10/31/2008 12:52AM by admin.

So it would seem that the getty tactic is "Scare High, Settle Lower" may have flaws in its original "business plan".

Dave,

It is not quite flawed enough in that they are victimizing too many people out of the victims's sheer ignorance. But I do like the mantra you came up with that summarizes Getty's extortionistic tactics.

Matthew

I found your site while doing research on this topic. I wanted to thank you for helping those of us who have been contacted by Getty for incredibly unreasonable. Your generosity gives some of us hope in a world where money seems to be the bottom line above all else.

I have some questions about my own case but want to read through your site in depth first before posting as I can tell there is great info here. These case stories are very helpful.

Thanks you again for your kindness and integrity in helping to right a wrong.

Nancy

Much has been made about the recent decisions awarding large statutory damages in the most recent RIAA (song download) cases. The case to have gotten the most attention is RIAA v. Tenenbaum in which a jury awarded $22,000 per downloaded song. I think two critical differences distinguish the Getty issue from Tenenbaum. First, Mr. Tenenbaum had the illegally downloaded songs on a Peer-To_peer website. That meant that he would open his computer up and allow anyone else in the world to also download the songs he had on his server. So he also distributed the images in addition to possessing them. Second, the jury found it was a willful infringement -which makes sense. Who doesn't know that recorded and published music is subject to copyright? In the Getty issue the vast majority of alleged infringers had no reason to believe they were using copyrighted images.

I think these two points make Tenenbaum inapplicable to Getty cases. We should all keep an eye on the case anyway to see if the jury award in Tenebaum will be upheld.

What can be done if I want Iterasi to remove a page that they archived without my permission.

According to their copyright legal it states that they will remove if it is sent to their copyright agent.. which seems odd since they are the ones infringing to begin with.
See under copyright on page link below
[www.iterasi.net]



Edited 2 time(s). Last edit at 08/24/2009 06:03PM by goober.

Goober:

I would start by following the instructions on their terms of use page and emailing them at legal@iterasi.net with your complaint. Keep us posted

Hi Oscar:

I've been trying to reach you for a week via your sbmlegal.com e-mail but haven't heard back from you - the e-mail I sent you messages probably went over to your spam folder or something.

Could you perhaps un-mark my email address as spam, kelvin [at] zension [dot] com and drop me a reply those messages I left you? Thanks!

Or if you are reachable via another email account, do let me know, and I will forward the previous messages there too!

Regards,
Kelvin

Oscar has been in Belize for several days since last week. Plus he gets tons of emails. Are you an existing client or new client? When did you send the email to him?

Ah, I'm probably new. One of my customers just got the dreaded letter and we're hoping Oscar could help us write a letter back to Getty. I sent him the letter on the 25th I think - and thought it went into the spam mail folder as, well, loads of emails do.

Any idea when he will be back?

By the way, Matthew, you should know that someone / quite a few people flagged emails from your (this) domain as spam and it's blacklisted with Google Mail accounts (including Google Apps, etc). I unflagged it, but any mails from this website still somehow goes into there.

Dear Kelvin:

Checked my spam and junk mail folders and found no emails from your address As I stated in my private message to you try my home email oscarm@optonline.net Look forward to working with you on this issue.


Oscar

The only emails that get sent out are the auto-notification emails regarding the discussion forum and the occasional one when people subscribe to our email database. Thanks for letting me know.

kelvin Wrote:
-------------------------------------------------------
>
> By the way, Matthew, you should know that someone
> / quite a few people flagged emails from your
> (this) domain as spam and it's blacklisted with
> Google Mail accounts (including Google Apps, etc).
> I unflagged it, but any mails from this website
> still somehow goes into there.