The Catholic University of America

Selected Recent Case Law

Blackwell Publishing v. Excel Research Group, Case No. 07-12731 (E.D. Michigan US District Court) (Oct. 14, 2009)

In this case Excel was charging students for course packs. A *master copy* was provided by Excel, and handed to the students who personally made the copies. The professors at University of Michigan provided Excel with the copy of the required course materials. No copyright permission was obtained from the publishers. Excel had each student sign a statement the copying was for educational purposes and that he/she was a student in the class. Excel had several defenses. One of those defenses was that the student is doing the copying, not Excel. The court roundly rejected this defense. Excel was found to have engaged in unauthorized distribution of the publishers' work. The fair use defense was also not available to Excel, for several reasons. The use was for profit and commercial, the nature of the work was creative, the amount of use of the work also favored the publishers, and finally the effect of the use upon the market was also found to favor the publishers. In finding Excel's actions violated copyright law the court stated: "Simply put, copyright law should not turn on who presses the start button on a copier."

 

A.V. et al. v. IParadigms, LLC. (4th Cir. April 16, 2009)

Decision by U.S. Fourth Circuit Court of Appeals in copyright infringement suit brought by high school students against the operator of Turnitin.com, a plagiarism detection service used by high schools and institutions of higher education. The court held that the defendant's use of plaintiffs' papers was transformative and a fair use.

Greenberg v. National Geographic Society, No. 05-16964 (C.A. 11th Cir.) Decided June 20, 2008.

This case is an interpretation of 17 USC § 201(c) of the Copyright law, which provides as follows:

 

(c) Contributions to collective works. Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

The plaintiff photographer sued National Geographic for digitizing print editions of past issues of the National Geographic. The Court of Appeals for the 11th Circuit held that National Geographic had the right to fully reproduce the past issues, including photos and other works provided by freelancers.

The Court noted that the purpose of adding Section 201(c) to the Act was to protect both the copyrights of freelance authors in their individual contributions, but also to protect the copyright of the publisher in the collective work. See the Library Journal for an analysis of this case and its importance to library digitization projects.

 

Cambridge University Press et al v. Patton (Georgia State case)
Text of complaint filed against Georgia State officials on April 15, 2008 alleging massive copyright infringement in connection with the use of electronic reserves. See scholarly commentary on the case. See also the filings in the case.

 

A.V. et al. v. iParadigms, LLC. Civil Action # 07-0293 (U.S. Dist. Ct. For the E.D. Virginia) March 11, 2008

Plaintiff students sued the company, iParadigms, that owns and operates Turnitin, a plagiarism detection service that uses technology to evaluate the originality of written works. Plaintiffs were required by their teachers to submit an electronic copy of their papers to Turnitin for an originality evaluation or accept a zero for credit. To use the service, plaintiffs had to click *I Agree* to the terms of the user agreement. Plaintiffs read and understood that Turnitin would archive their written work, but included a disclaimer on the face of the works that they did not consent to the Turnitin archive feature. The archive feature is what (in part) allows Turnitin to conduct an originality evaluation. Plaintiffs alleged copyright infringement by Turnitin,based on the digital archiving of their papers. The court rejected the plaintiff's claim, finding that the clickwrap agreement precluded liability. In dicta, the court went on to note that even if the agreement by plaintiffs to terms of use of the site did not preclude liablity, the use by Turnitin was transformative and a fair use. See Georgia Harper's analyis of the case. Note that although this was not reported in the case, typically when Turnitin indicates an overlap with another source, the professor is given a source name (school and date). Upon selection of the source name, the following message appears:

Because submitted papers remain the intellectual property of their authors, instructors, and respective institutions, we are unable to show you the content of this paper at this time.
If you would still like to view this paper, please use the button below to submit a permission request to the author's instructor. We will send the instructor an email detailing your request and include any information the instructor will need to respond if your request is accepted.

Graham v. Kindersley, No. 05-2514 U.S. Court of Appeals, (2nd Circuit) decided May 9, 2006

Copyrighted images of Grateful Dead concert posters were reproduced in a biography of the musical group known as the Grateful Dead. The copyright holder of the images claimed infringement. The district court (Southern District of New York) found fair use, and the Second Circuit affirmed. The publisher, Dorling Kindersley (DK), had sought permission, but negotiations over the fees were not resolved. DK went ahead and used seven images of concert posters (but in significantly reduced form) as a way of illustrating the narrative. The court agreed with the District Court that the reproduction of the images is protected by the fair use exception to copyright infringement. Note that cases coming out of the SDNY are considered very important in the publishing world.

 

The court came down on the four factors as follows:

 

Purpose and Character of the Use: The Court noted that courts have frequently afforded fair use protection to the use of copyrighted material in biographies, recognizing such works as forms of historic scholarship, criticism and comment that require incorporation of original source material. Here, DK's use of the images was different (transformative) from the original intended use of the images, favoring a finding of fair use. Also, the book publisher significantly reduced the size of the images, combined them with a timeline and text and original graphic artwork, and employed them only to enrich the cultural history of the book, not to exploit the posters for commercial gain.

Nature of Copyrighted Work: Here the use was to emphasize the images' historical use, rather than their creative value, so even thought these are creative works, the second factor has limited weight in the analysis.

Amount and Substantiality of Portion used: Even though the images were copied in their entirety, the visual impact was limited due to reduced size, thus favoring a finding of fair use. Also, the court found the use to be an inconsequential portion of the biography. The book was 480 pages long, with posters appearing on only a portion of seven pages.

Effect of use on Market: The parties agreed use of the images in the book did not affect the primary market for sale of posters. Court did not buy argument of Graham that the book publisher had interfered with its market for licensing images for use in books. The court distinguished this case from the Texaco case, stating that when the use of images is transformatively different from their original expressive use, a copyright holder cannot prevent others from entering fair use markets merely by developing or licensing a market for parody, news reporting, or other transformative uses. The court also stated that being denied permission to use a work, or pay such fees, does not weigh against a finding of fair use, and that a publisher's willingness to pay license fees does not establish that the publisher may not, in the alternative, make fair use of those images.

 

BMG Music v. Gonzalez, No. 05-1314 (7th Cir. (Dec. 2005)

The defendant Gonzalez downloaded over 1370 copyright protected songs from the internet. Her claim that she was "just sampling," was found rejected by the court, and she was found guilty of direct copyright infringement for 30 songs from which she clearly had never purchased or owned copies. Statutory damages of $750 per song were assessed, for a total of $22,500 in damages. The court rejected her argument that downloading all of these songs was simply a fair use.

 

Blake Field v. Google (No. CV-S-04-0413-RCJ-LRL) U.S. Dist. Ct. Nevada (Jan. 12, 2006)

This case was really a set up against Google that backfired. The plaintiff Blake Field decided to quickly publish (51 works in three days) some documents on the internet on his personal website, www.blakeswritings.com.

The works were made available to the world for free. Field decided not to include the metatag that would have indicated to Google that the "literary works" should not be cached. Field admitted that he was aware of the "no archive" metatag and that would have prevented Google from caching his web pages. Field then filed a copyright infringement compliant against Google claiming that by allowing access to his work (from the Google cached repository) Google had violated his exclusive rights to reproduce and distribute copies of his works.

 

As soon as the complaint was filed, Google removed the cached sites. The court granted Google's motion for summary judgment against the plaintiff on non-infringement, implied license to use, estoppel and fair use, so basically a clean sweep for Google. The case contains some very useful language on fair use, including a fifth fair use factor, comparison of equities.

 

Perfect 10 v. Google (U.S. Dist. Ct. Central Dist. Calif) Feb. 21, 2006

In this case the court considered whether or not Google directly infringed (by publicly displaying, distributing, or reproducing) thumbnail images of Perfect 10's copyrighted images. Google does not store any Perfect 10 full size images.The court found that since the content of the images was stored on Google's server, even though not in full size, Google had violated the exclusive right of the copyright owner under Section 106 to display the copyrighted content. However, by merely framing and in line linking to third party web sites, Google had not distributed infringing copies of the photographs under disputed. Although Google's web crawler signals not to index Perfect 10 content from the Perfect 10 site, these images were from other sites, without the metatag indicating to the crawler not to copy them. The court did not find that Google's display of the images was a fair use, in part because Google actually had some ads on the pages displayed on the images search pages that turned up these photos, and also in part because Perfect 10 argued there was a market for thumbnail images of the nude photographs of models, i.e. for download and use on cell phones. The case has a long discussion of what constitutes a display as to as to in line linking.

 

McGraw-Hill et al. v. Google Inc., 05 CV 8881 (filed Oct. 19, 2005, SDNY)

Five members of the American Association of Publishers filed a copyright infringement lawsuit against Google on Oct. 19th, 2005 for Google's actions with regard to the Google Library Project. McGraw-Hill, Pearson Education, Penguin Group, Simon and Schuster and John Wiley and Sons were the AAP members filing the complaint which sought declaratory, preliminary and permanent injunctive relief under the Copyright Act. The plaintiffs took issue with the scanning in and retention (one for Google and one for the library) of the digital copies of the books still under copyright, the offer to the public to search the books, and public display of excerpts of the books. The Publishers noted that while they support making books available in digital format, they are working on their own means of doing so, for example by working with the Open Content Alliance.

 

On Sept. 20, 2005 the Authors Guild filed a complaint against Google on the Library project. See Google's statement about the Authors Guild litigation. For more views on the pros and cons of the litigation see Larry Lessig's blog on this issue.

 

MGM Studios v. Grokster, No. 04-480 Decided June 27, 2005

 

In a closely watched case on illegal file sharing on the Internet, Justice Souter authored a unanimous opinion overturning the 9th Circuit Court of Appeals issuance of summary judgment for Grokster and StreamCast and adopted a legal theory based on patent law generally referred to as "active inducement." The holding of the Court was as follows: "One who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties." The Court further explained the inducement rule as follows:

 

For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties. We are, of course, mindful of the need to keep from trenching on regular commerce or discouraging the development of technologies with lawful and unlawful potential. Accordingly, just as Sony did not find intentional inducement despite the knowledge of the VCR manufacturer that its device could be used to infringe, 464 U.S., at 439, n. 19, mere knowledge of infringing potential or of actual infringing uses would not be enough here to subject a distributor to liability. Nor would ordinary acts incident to product distribution, such as offering customers technical support or product updates, support liability in themselves. The inducement rule, instead, premises liability on purposeful, culpable expression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise.

 

The Court remanded to the 9th Circuit Court of Appeals the factual question as to whether Grokster and StreamCast were guilty of "active inducement" by encouraging the violation of copyright law when it made available free software products that allowed computer users to share electronic files through peer to peer networks. Evidence in the record showed that the software was largely used by those who illegally traded copyright protected files of music or videos, and the Court hinted strongly that the evidence overwhelmingly suggested culpability on the part of Grokster and StreamCast. For example, an internal memo from Streamcast that was cited in the record showed that StreamCast aimed to have a larger number of copyrighted works available on their networks that other file sharing networks.

 

Significantly, the Court discussed but did not overturn Sony Corp. of America v. Universal City Studios, 464 U.S. 417 (1984). In the Sony case, the Court considered the liability of a company that sold VCRs, which could be used to replicate copyrighted material and non-copyrighted material. The holding of the Sony case was that as long as the product (the VCR) was capable of substantial non-infringing uses, the manufacturer could not be held liable for copyright infringement solely on the basis of distribution of the product.

 

In the Grokster case, the Court agreed with MGM that the 9th Circuit misapplied the Sony case by reading it too broadly. The Court stated as follows:

 

We agree with MGM that the Court of Appeals misapplied Sony, which it read as limiting secondary liability quite beyond the circumstances to which the case applied. Sony barred secondary liability based on presuming or imputing intent to cause infringement solely from the design or distribution of a product capable of substantial lawful use, which the distributor knows is in fact used for infringement. The Ninth Circuit has read Sony's limitation to mean that whenever a product is capable of substantial lawful use, the producer can never be held contributorily liable for third parties' infringing use of it; it read the rule as being this broad, even when an actual purpose to cause infringing use is shown by evidence independent of design and distribution of the product, unless the distributors had "specific knowledge of infringement at a time at which they contributed to the infringement, and failed to act upon that information." 380 F.3d, at 1162 (internal quotation marks and alterations omitted). Because the Circuit found the StreamCast and Grokster software capable of substantial lawful use, it concluded on the basis of its reading of Sony that neither company could be held liable, since there was no showing that their software, being without any central server, afforded them knowledge of specific unlawful uses.

Justice Ginsburg and Justice Breyer both wrote concurring opinions which differed about the application of the law in Sony to the case at hand. Justice Ginsburg found the evidence reviewed by the lower courts overwhelmingly favored the MGM argument, and that summary judgment for Grokster and StreamCast was not in order. On the other hand, Justice Breyer disagreed with the Ginsburg concurrence, and set forth his understanding of the evidence in the record, finding that the standard set in Sony for proof of non-infringing uses could properly have been considered met by the lower court. In other words, Grokster and StreamCast passed the Sony test. Ginsburg was careful to note that this case was not about peer-to-peer technology generally, but merely about the software products put out into the marketplace by Grokster and StreamCast.

 

In Re Literary Works In Electronic Databases Copyright Litigation: Settlement Agreement

This is the full text of the agreement whereby major electronic databases, including New Yorks Times, Wall Street Journal, NEXIS and West Group agreed to pay writers whose work appeared in electronic databases without their specific permission. The total settlement amount is $18 million. Authors of copyright registered articles will receive up to $1,500, and those who did not register copyrights will receive up to $60 per article. This litigation is a follow up to the Tasini case. See

New York Times Co. v. Tasini, et al. No. 00-201, 121 S. Ct. 2381; 150 L. Ed. 2d 500; 2001 U.S. LEXIS 4667. For more on the specific terms of the settlement, see the Freelance Rights web page.

 

Cert. granted in Grokster case: Dec 10, 2004 The Supreme Court granted cert today in the case of MGM v. Grokster (see below). The Electronic Frontier Foundation has a short write up online. Oral arguments are set for March 2005.

 

Metro-Goldwyn-Mayer v. Grokster No. 03-55894 (9th Circuit) decided August 19, 2004
Petition for Certiorari Filed (Oct 08, 2004)(NO. 04-480)

In this appeal from the District Court partial grant of summary judgment in favor of Defendants, the 9th Circuit agreed with the District Court that defendant distributors of peer to peer file sharing computer networking software were not liable for copyright infringement by users. Users of the software share digital audio, video, picture and text files, some of which are copyrighted and shared without authorization, some of which are copyrighted and shared with authorization, and some of which are in the public domain. The vast majority of files are exchanged in violation of copyright law. The Court found that the plaintiffs could not prove either contributory copyright infringement, or vicarious copyright infringement. Evidence presented showed that substantial noninfringing uses could be made of the software, and thus the Sony-Betamax doctrine applied. No material contribution to the infringement could be established as the Software Distributors are not access providers and do not provide file storage and index maintenance. The Court made special mention of the numerous legal uses of peer to peer file sharing technology, including significantly reducing distribution costs of public domain and permissively shared art and speech. The Court noted in closing: "...we live in a quicksilver technological environment with courts ill suited to fix the flow of internet innovation." See also a Future of Music background article entitled Is Grokster Contributory and Vicarious?

Lowry's Reports Inc., v. Legg Mason, 271 F. Supp. 737 (D.C. MD. 2003)
and Lowry's Reports Inc., v. Legg Mason, 2004 U.S. Dist. LEXIS 1908 (decided Feb. 11, 2004)

This case involved serious copyright infringement by Legg Mason, a global financial services firm. One employee at Legg Mason subscribed to a financial newsletter, Lowry's New York Stock Exchange Market Trend Analysis (the "Reports"). Lowry's Reports provide "original and proprietary technical analysis of the stock market." The reports also include three numbers that represent buying power, selling pressure, and short term buying power. For five years the employee at Legg Mason who subscribed to the daily and weekly copy of the reports faxed copies of the report to all branch offices, where they were further distributed. Between 1999 and 2001, this employee posted the weekly report on the company intranet. According to the record in the case, hundreds of employees and other brokers downloaded the documents over 16,000 times. In addition, the three Lowry's proprietary numbers were regularly broadcast over the intercom in a morning call placed to brokers at Legg Mason. Additional copies of the reports were distributed by email.

 

Lowry's Reports limits subscriptions to individuals, and each subscriber must execute an agreement that strictly prohibits unauthorized copying or dissemination of the reports. When Lowry's Reports received notice from a Legg Mason employee that copyright infringement was taking place with respect to the Reports on a grand scale, the firm contacted the employee at Legg Mason who was a subscriber. The employee agreed to remove the report from the Intranet. A cease and desist letter ordering immediate ceasing of all unauthorized copying followed. The employee continued to email copies of the report to her colleagues without permission, and Lowry's Reports sued Legg Mason for copyright infringement, common law unfair competition, and breach of contract. The July 10th, 2003 decision granting summary judgment contains a useful recitation of the four factors of fair use as applied to the case. Needless to say the copying was found not to be a fair use under the law.

 

On Oct. 3, 2003, a jury found Legg Mason guilty of for breach of contract and wilful copyright infringment and awarded Lowry's $19,725,270 in damages. In a Feb. 2004 memorandum opinion, the U.S. District Court for the District of Maryland upheld the award. The Court found there was evidence from which the jury could have concluded the conduct was unreasonable and in bad faith. The Court also found that the wealth of the defendant has been widely recognized as relevant to the deterrent effect of the damages award.

 

 

Metro-Goldwyn-Mayer Studios Inc. et al., v. Grokster, LTD. and Lieber v. Fastrack

(U.S. District Court, C.D. Calif.)

This is an April 2003 decision under 17 U.S.C. 501. The plaintiffs, motion picture studios, record companies, professional songwriters and music publishers sued defendants who distributed free software which users can download free of charge. In many instances, the software is used to trade copyrighted materials over the Internet. Plaintiffs sought injunctive relief for copyright infringement and thus the Court considered only the questions of whether the current versions of Defendants' products subjected them to liability. The case did not address software offered by Sharman Networks, proprietor of the Kazaa.com website. The Court denied plaintiffs motions for summary judgment and held that the Defendants were not liable for either contributory or vicarious copyright infringement.

 

The Court cited Sony Corp. of America v. Universal City Studios, Inc. 464 U.S. 417, (1984) for the proposition that the sale of copying equipment does not constitute contributory infringement if the product is capable of substantial non-infringing uses. In the current case, the Court found it was clear that substantial non-infringing uses existed, such as distributing movie trailers, free songs and other non-copyrighted works. The Court distinguished the present case from the decision in A & M Records Inc. v. Napster, Inc., 239 F. 3d 1004 (9th Cir. 2001). In the Napster case, because Napster provided the site and facilities for direct infringement, Napster was found to have materially contributed to the infringement. As the Court further found that Defendants had no right and ability to supervise the infringing conduct, the Court also declined to find vicarious infringement.

 

New York Times Co. v. Tasini, et al. No. 00-201, 121 S. Ct. 2381; 150 L. Ed. 2d 500;

On June 25, 2001 the U.S. Supreme Court, in a 7-2 opinion, upheld the 2nd Circuit decision that the print and electronic publishers had infringed the copyrights of freelance authors. At issue in the case was § 201 (c) of the Copyright Act. Section 201 deals with ownership of copyright, and § 201 (c) reads as follows:

 

Contributions to collective works. Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

The plaintiffs in the case were freelance authors whose copyright registered articles were put into electronic databases (such as Lexis-Nexis) by publishers who had not sought specific permission from the authors. The articles in question were published in electronic format between 1980 and 1995. After 1995 the New York Times and other publishers began requiring freelancers to sign contracts giving the publisher the electronic publication rights to the articles.

The publishers argued that publishing the articles in the database was part of a collective work under was § 201 (c) and thus it was not necessary to receive further permission from the authors. In rejecting this argument, the Court found it significant that the articles are retrieved as individual articles, divorced from the specific issue of the paper the articles were originally published in.

 

In an argument that was firmly rejected by the majority of the Court, the publishers stated that if the Court did not rule for their side, the publishers would have to remove a number of articles from the database, creating gaps in the historical record. The Court pointed out that there were numerous models for distributing copyrighted works and remunerating authors for their distribution, and stated:

In any event, speculation about future harms is no basis for this Court to shrink authorial rights Congress established in §201(c). Agreeing with the Court of Appeals that the Publishers are liable for infringement, we leave remedial issues open for initial airing and decision in the District Court.