In January 2010, freelance photographer Daniel Morel uploaded to his TwitPic account a number of photos he took in Haiti in the immediate aftermath of the earthquake. An individual named Lisandro Suero took those photos from Morel’s Twitter account, reposted them to his own Twitter account, and tweeted that he had exclusive photos of the earthquake. AFP got the photos from Suero’s Twitter page, attributed the photos to Suero, and began distributing them to users of its wire and databank services. Getty Images (“Getty”) received the photos through AFP’s wire service. The Post received the photos from Getty. Getty and the Post published the photos on their websites, with captions that attributed them to Suero.

When Morel’s exclusive agent found out that AFP, Getty and the Post were using his photos, his agent complained. While at least some efforts were made by AFP, Getty and the Post to address Morel’s agent’s complaint, those efforts in most respects fell far short of what is required under the law.

In March 2010, AFP sought a declaratory judgment that it did not infringe Morel’s copyrights, and Morel counterclaimed for copyright infringement against AFP, Getty and the Post. During the course of the case, Morel moved for summary judgment on his copyright infringement counterclaim. In response, the defendants argued that pursuant to the Twitter Terms of Service (TOS), Morel provided them a license to use the photos by his very act of tweeting the photos.

Judge Nathan disagreed. Judge Nathan found that the Twitter TOS provides that users generally retain their rights to the content they post—with the exception of the license granted to Twitter and its partners. Twitter’s “Guidelines for Third Party Use of Tweets in Broadcast or Other Offline Media” further underscored that, while the Twitter TOS permit users to retweet posts, the Twitter TOS was not intended to let the “world-at-large” remove content from Twitter and commercially distribute it. Rebroadcasting tweets in their entirety is now a news program staple and actively encouraged by Twitter. Twitter’s TOS, however, do not permit media outlets to rip copyrighted material out of tweets and use it for some other purpose. Because AFP and the Post put forward no defense other than their license defense, Judge Nathan granted Morel’s motion for summary judgment and found them both liable for copyright infringement.

Unlike AFP and the Post, Getty argued that it was entitled to the benefit of the safe-harbor provisions of the Digital Millennium Copyright Act (DMCA) that protect service providers from liability for copyright infringement. Judge Nathan held, however, that genuine issues of fact existed as to whether Getty could take advantage of the DMCA safe harbor, noting that companies like Getty that are in the business of selling copyrighted material may not be shielded from copyright liability under the DMCA’s safe harbor. Thus, it remains to be seen whether Getty will also be found liable for copyright infringement.

In one bright spot for AFP and Getty, Judge Nathan granted summary judgment in their favor on the proper method for calculating statutory damages under the Copyright Act, which can result in awards of up to $150,000 per work infringed. Morel claimed that he was entitled to a statutory damage award “in the tens or hundreds of millions of dollars” against AFP and Getty. Morel argued that, because AFP and Getty distributed the photos to many of their subscribers, each downstream infringement by one of their subscribers would entitle him to an additional statutory damages award. Judge Nathan disagreed and held that any award of statutory damages against AFP and Getty could not be multiplied based on the number of infringers with whom they may be jointly and severally liable.

This decision clarifies that Twitter users do not lose ownership rights to their content by posting it to Twitter. Although you may have the right to retweet or publish tweets in their entirety, you don’t have the right to take someone else’s content and use it for commercial gain.

After CafePress refused to remove user designs incorporating the phrase, BTR filed a complaint for, among other things, trademark infringement. Following discovery, CafePress filed a motion for summary judgment, arguing that the “Born to Rock” designs were not used in commerce (an element of trademark infringement) and that, even if they were, CafePress’s use was “fair use”—i.e., a descriptive or ornamental use of the phrase “Born to Rock” in a non-trademark sense.  The court struck down the first argument outright, stating that CafePress was being “facetious” in arguing that it did not use the mark in commerce given that CafePress actually imprints the designs on merchandise and ships that merchandise to customers. In considering the fair use argument, the court acknowledged that certain uses of the “Born to Rock” designs may constitute non-trademark fair use (e.g. “Born to Ride / Born to Rock”), but concluded that CafePress could not rely on fair use as a blanket defense for all of the designs.

Legal scholar Eric Goldman has pointed out that CafePress can raise other, stronger arguments in the future, including that the trademark is invalid and that consumers were not likely to be confused by CafePress’s use of the mark. Nonetheless, the district court’s denial of summary judgment does send a message to trademark holders: you can sue online service providers for trademark infringement based on user-generated content and you just might win.  The Digital Millennium Copyright Act (DMCA) creates a safe harbor for online service providers who promptly remove user-generated copyright-infringing content after receiving takedown notices, but there is no equivalent safe harbor for content that infringes trademarks (although chillingeffects.org, a website devoted to the DMCA, does note that “in the absence of any caselaw on the subject, should a trademark holder bring a claim for contributory infringement, an [online service provider] might be able to mount a valid defense by analogy to [DMCA] section 512(c).”).

Social media sites in particular may be easy targets for trademark claims based on user-generated content. Such sites often host “community pages” that serve as fan pages for brands without any authorization from the companies involved (for example, compare this official Facebook page established by a trademark holder with this community page run by a fan). In the wake of the case against CafePress, social media sites and other websites that host user-generated content should be aware of these trademark-related risks and the fact that the DMCA safe harbors do not apply to trademark claims.

In an opinion written by one of the country’s preeminent circuit judges and cat fanciers, Richard Posner, the court addressed whether to uphold a preliminary injunction against social bookmarking site myVidster for contributory copyright infringement. myVidster allows users to “bookmark” videos they find on the Internet, such as videos from YouTube or Vimeo. myVidster automatically retrieves the “embed code”—code that permits the video to be viewed in a browser window separate from the original website (for example, when you link to a YouTube video on your Facebook page, the site automatically embeds the video so that your friends can view the video on Facebook rather than having to go to YouTube). myVidster then creates a new page for the embedded video, replete with advertisements.

Plaintiff Flava Works is an entertainment company that produces and streams adult videos through various websites. Flava allows its customers to download its content solely for personal use. Users are not permitted to upload Flava’s videos to other sites or to create any additional copies of the content. Thus, in Judge Posner’s view, a user who copies Flava’s videos by downloading them and then uploading the copyright-protected video to a third-party website is a direct infringer of Flava’s copyright. Because myVidster didn’t upload the infringing videos, the court found that myVidster did not directly infringe Flava’s copyright.

The court next considered whether myVidster should be held liable for contributory infringement based on such copying by Flava’s users. Posner disregarded the oft-cited Gershwin Publishing Corp. v. Columbia Artists Management, Inc. definition of contributory infringement in favor of a more succinct standard from Matthew Bender & Co. v. West Publishing Co.: contributory infringement is “personal conduct that encourages or assists [direct] infringement.” The court ultimately held that myVidster was not liable for contributory infringement for two reasons.

First, myVidster does not make any copies of Flava’s videos—whether on its own initiative or at its users’ direction—but instead links to videos on servers controlled by third parties. In bookmarking offending videos, myVidster’s users were not copying such videos. And by embedding those videos on its site, myVidster was not furthering any copying. Rather, the court found that myVidster effectively acts as an exchange, connecting the server hosting the video and myVidster’s users. Posner wrote:

[The user’s] bypassing Flava’s pay wall by viewing the uploaded copy is equivalent to stealing a copyrighted book from a bookstore and reading it. That is a bad thing to do (in either case) but it is not copyright infringement. The infringer is the customer of Flava who copied Flava’s copyrighted video by uploading it to the Internet.

Second, the court found that myVidster had done nothing to encourage uploaders to upload Flava’s videos. Therefore, myVidster did not “encourag[e]” infringement and was not a contributory infringer. As a result, myVidster had no need to resort to the § 512(c) safe harbors.

One of the most interesting aspects of the Flava Works opinion is its discussion of the various flavors (flavas?) of contributory infringement. Google and Facebook submitted an amicus curiae brief  in which they argued that the connections between myVidster’s (and other social bookmarking sites’) activities and any copyright infringement by users are simply too attenuated to constitute either direct or contributory infringement. They argued that myVidster was, at most, “contributing to contributory infringement.” Thus, myVidster’s potential infringement was not “secondary,” but rather, tertiary: the direct infringers are those who uploaded Flava’s copyrighted material, those who bookmarked the videos are arguably “secondary” infringers, while myVidster might be a “tertiary” infringer. Posner dismissed this argument, finding that common law notions of remoteness were sufficient to deal with this “contributing to contributory infringement” situation: “An injury will sometimes have a cascading effect that no potential injurer could calculate in deciding how carefully to act. The effect is clear in hindsight—but only in hindsight.” For Judge Posner, even in social media situations, there’s no need for the direct-secondary-tertiary “layer cake” model; there is simply infringement, contributory infringement, and non-infringement. And regardless of the theoretical “level” of removal of myVidster from the underlying direct infringement, myVidster was not “materially contributing” to that infringing activity—that is, myVidster’s actions were too remote from the uploader’s infringement—and was therefore not liable for contributory infringement by copying.

Judge Posner also addressed whether myVidster might be liable for contributory infringement based on public performance of Flava’s videos. The Copyright Act makes it unlawful “to transmit or otherwise communicate a performance . . . of the work . . . to the public . . . whether the members of the public capable of receiving the performance . . . receive it in the same place or in separate places and at the same time or at different times.” Posner identified two ways in which myVidster might infringe Flava’s performance right: “performance by uploading” and “performance by receiving.” On the “uploading” interpretation, “uploading plus bookmarking a video is a public performance because it enables a visitor to the website to receive (watch) the performance at will[.]” On the “receiving” interpretation, the performance occurs (or is, in other words, finalized) when the user clicks on and plays the video.

Posner dismissed the “uploading” view, arguing that myVidster is simply “giving web surfers addresses where they can find entertainment[,]” much like TimeOut and the New Yorker  list the details of various social events happening in the real world. According to Posner, the only infringer on the “uploading” view is the uploader himself. myVidster does not interfere with the data streaming directly from the host to the viewer, so myVidster did not contribute to the uploader’s infringement of Flava’s public performance right.

On the “receiving view,” the infringing act occurs when the myVidster users click “play” on Flava’s videos. Flava argued that, by providing an exchange that makes Flava’s videos available to myVidster’s users, myVidster provides “‘support services’ without which ‘it would [have been] difficult for the infringing activity to take place in the massive quantities alleged.’” Posner, however, was not persuaded by the “receiving” argument either. First, myVidster was not selling the allegedly infringing videos and thus had no direct pecuniary motive for pushing visitors to view Flava content bookmarked by the site’s users. Second, there was no substantial evidence that the videos were being accessed via myVidster rather than other websites. Thus, in Posner’s view, there was no basis to hold that myVidster was “abet[ting] others’ infringements” of Flava’s public performance right.

Judge Posner left open the possibility that myVidster had invited users to post infringing material, in which case it could be liable for inducing infringement. Similarly, he stated that myVidster’s now-discontinued sideloading service constituted direct—not secondary—infringement. Sideloading typically involves the transfer of data between two local devices. myVidster’s service allowed premium members to back up bookmarked videos on myVidster’s servers. As at least one commentator has noted, this raises interesting issues for sites like Pinterest and other social networks that periodically sideload copyrighted material posted by users on the presumption that such sideloading is authorized by, and therefore done at the direction of, the user. If such actions constitute direct infringement, the §512(c) safe harbors may not be available.

Burberry approached social media with an innovative concept: “historical timelines” on its various social media pages, including Facebook, Twitter, and Instagram. These timelines featured photos of celebrities wearing Burberry’s iconic trench coats, scarves, and other products. Among Burberry’s chosen photos was a shot of Humphrey Bogart from the final scene of Casablanca, in which Bogart’s Rick, clad in a timeless Burberry trench, sends Ingrid Bergman’s Ilsa off to Brazzaville. While Burberry acquired permission to use the photo from photo agency Corbis, which manages the rights to various stock photos from Casablanca, Burberry failed to clear its use with Bogart LLC, which owns the actor’s publicity rights. Applicable law allows a celebrity to object to use of his or her name or likeness in a commercial context, particularly if the use is likely to cause members of the intended market to believe that the celebrity endorses the product. Bogart LLC alleged that Burberry’s use of the photo falsely implied that Bogart had endorsed the brand, thereby violating Bogart LLC’s publicity rights. Burberry countered, arguing that its timelines constituted “a historical positioning of the image within an educational project along with numerous other photographs of people wearing Burberry apparel over the last century.”

Although Burberry and Bogart LLC settled their pending state and federal cases for an undisclosed amount, this case provides a good example of the unexpected issues that can arise when brand managers fail to consider the full spectrum of rights that may be implicated by the use of photographs and other content. While the content industries have spent the last decade educating the public on copyright law’s effects in the digital media world, less attention has been paid to other areas of potential liability, such as trademark infringement and privacy and publicity rights violations, and their respective effects on the social media experience.

For example, in 2007, Virgin Mobile Australia (VMA) launched an advertising campaign using amateur photography culled from the social photo-sharing site, Flickr. The photos used by VMA were licensed under a Creative Commons “Attribution” license, which requires only that the original creator—that is, the copyright holder—be given credit. VMA chose for its campaign a photo of then-15-year-old Alison Chang, taken by her church youth counselor and uploaded by him to Flickr. Although VMA had appropriate copyright clearance to use the counselor’s picture under the Creative Commons license, Chang’s parents sued VMA for failing to get permission from Chang or her parents to use Chang’s name or likeness. Although the case was dismissed on procedural grounds, the incident illustrates how easily (and often) clearance procedures are overlooked when it comes to Internet-based content.

Similar cases have raised complex issues relating to federal preemption of state law claims. For example, in Laws v. Sony Music Entertainment, Inc., the plaintiff sued Jennifer Lopez and LL Cool J, alleging misappropriation of her name and voice through use of a sound recording on which the plaintiff’s voice was featured. The defendants had obtained a license to use the sound recording on which the plaintiff’s voice was featured, but had not obtained from the plaintiff the right to use her voice. Nonetheless, the Ninth Circuit held that, on this set of facts, the federal Copyright Act preempted the plaintiff’s state law right-of-publicity claim. Thus, her permission was not required for the defendants to use the validly licensed sound recording. By contrast, a different Ninth Circuit panel in Downing v. Abercrombie & Fitch, Inc., held that the Copyright Act did not preempt the plaintiffs’ state law publicity claims based on Abercrombie’s advertising use of a photo of the plaintiffs taken after the 1965 Makaha International Surf Championship in Hawaii. Thus, Abercrombie should have sought the plaintiffs’ permission in the first instance. The preemption inquiry is fact-bound—the Copyright Act preempts state law publicity claims in some circumstances, but not others.

While the details of these preemption cases exceed the scope of this article, suffice it to say that a company’s social media marketing personnel may not have the expertise to wade through such complex clearance issues. A clearance system that focuses narrowly on copyright issues and doesn’t consider other forms of intellectual property may therefore result in unexpected claims. It is also worth noting that the safe harbors provided by the Digital Millennium Copyright Act apply only to copyright claims, not other types of claims such as those mentioned above, and in any event, provide protection only with respect to user-generated content, not content posted by a company’s own employees. Therefore, companies should not assume that the DMCA will shield them from all liability for content posted on their social media pages.

Social media is an exciting new channel for reaching both current and prospective customers. But from a rights-clearance perspective, the old rules largely remain in force. Accordingly, companies’ review procedures for company-driven social media content should, to the extent possible, mirror the process they undertake for print ads and other traditional media. And where that may not be feasible (given the speed and flexibility often required on social media platforms), companies should institute rigorous policies and train marketing associates on how to avoid potential liability.

Second Life places users, or “residents,” into a virtual world where they participate in a virtual economy, trading virtual goods and services with each other.  Residents also have the ability to create new content using a programming language built into Second Life.  Under Second Life’s Terms of Service, residents retain ownership of the copyright in any content they create.  Second Life is thus a breeding ground for digital rights disputes, as residents spend virtual “Linden Dollars”—which can be exchanged for “real world” currency—for virtual goods created by other residents, implicating legally protected rights that have dollar value in the “real” economy.  In other words, as one blog describes it, “[w]hile it may be a virtual world, it still has to deal with real-life intellectual property shenanigans.”

The dispute in Amaretto Ranch concerned the sale of “breedable” virtual animals created and sold to users within Second Life.  Ozimals accused Amaretto Ranch of selling “virtual horses” that used the same code used to create Ozimals’ “virtual bunnies,” thereby infringing Ozimals’ copyrights.  Ozimals sent a Digital Millennium Copyright Act (“DMCA”) takedown notice to Linden Labs, the operator of Second Life, demanding the removal of Amaretto Ranch’s virtual horses, sparking a public war of words between Ozimals and Amaretto Ranch.

Amaretto Ranch responded by suing Ozimals for violation of Section 512(f) of the DMCA, which provides a cause of action (including recovery of attorneys’ fees) for sending a takedown notice containing material misrepresentations.  Amaretto Ranch also asserted a state law cause of action for tortious interference with contract based on Ozimals’ takedown notice.  Amaretto sought and obtained a temporary restraining order and a preliminary injunction requiring Ozimals to withdraw the DMCA notice.  Therefore, Linden Labs did not remove any of the allegedly infringing materials from Second Life.

On a first motion to dismiss, the court disposed of Amaretto Ranch’s Section 512(f) claim fairly easily, dismissing the claim because Linden Labs had never actually removed the allegedly infringing material.  Removal of the allegedly infringing material is a requirement to state a claim under the statute.  The court also dismissed without prejudice Amaretto Ranch’s claim for tortious interference with contract because it was not “plausibly pleaded.”

Amaretto then amended its complaint, and Ozimals filed another motion to dismiss.  The amended complaint asserted additional state law claims — defamation, trade libel, intentional interference with contract and interference with prospective business advantage — based on Ozimals’ takedown notice.  In contrast to the state law claim in the first complaint, which the court dismissed because Amaretto had not pleaded sufficient facts, the amended complaint required the court to consider tougher questions regarding federal preemption of state law claims stemming from a DMCA takedown notice.

Perhaps unsurprisingly, the court followed two previous cases from the Northern District of California holding that Section 512(f) preempts state law claims based on DMCA takedown notices, Online Policy Group v. Diebold, Inc. and Lenz v. Universal Music Corp. According to the court, Diebold and Lenz stand for the proposition that a DMCA takedown notification is “a creature of a federal statutory regime, and . . . that regime preempts any state law claim based on an allegedly improper” takedown notice.

Amaretto Ranch tried to distinguish Diebold and Lenz by pointing out that, in those cases, an actual takedown occurred, while in this case Linden Labs never actually removed the allegedly infringing materials.  Therefore, argued Amaretto Ranch, the court should follow Rock River Comm., Inc. v. Universal Music Group, Inc., a case we have reported on previously).  In Rock River, a Central District of California court held that the DMCA did not apply to the cease and desist letter at issue and, therefore, the DMCA did not preempt a state law tortious interference claim based on the letter.  The Amaretto Ranch court, however, did not find this argument persuasive.  According to the court, Rock River was distinguishable because, in that case, there was no takedown notice under the DMCA in the first place, whereas Amaretto Ranch had plainly alleged that Ozimals takedown notice was “within the ambit of the DMCA.”

Based on this analysis, the court held that Amaretto Ranch’s state law claims were preempted by the DMCA.  Of course, as noted, the court had also dismissed Amaretto Ranch’s DMCA claim, leaving Amaretto Ranch without any remedy at all.  This outcome reveals how thin the protections against misuse of DMCA takedown notices can be where no removal of the allegedly infringing materials has occurred.  As other commentators have noted, the DMCA sometimes does not provide for efficient resolution of copyright disputes.  No matter what harm results from the issuance of a DMCA takedown notice, and even if the notice contains flagrant misrepresentations and false accusations of copyright infringement, the Amaretto Ranch approach denies the accused party any remedy unless the service provider actually removes the allegedly infringing content.  At the very least, Amaretto Ranch highlights an important strategic consideration:  When a competitor sends out a groundless DMCA notice, should the accused infringer immediately seek judicial intervention or is it better to wait for the service provider to remove the accused materials?  If the accused infringer gets an injunction to prevent takedown of the accused material, that success could ultimately preclude any recovery for harm resulting from the notice.

Until recently, case law construing the repeat infringer policy requirement Section 512’s has interpreted the statute to give OSPs wide latitude in adopting and implementing such policies.  However, in a recent opinion, Flava Works, Inc. v. Gunter, a federal district court in Illinois held that an OSP’s repeat infringer policy was likely insufficient to afford such the protection of the DMCA’s safe harbors because its policy did not consider repeated copyright infringement to be a sufficient basis for termination.

Section 512’s statutory requirement for a repeat infringer policy has four parts:  (1) the OSP must adopt a termination policy; (2) the adopted policy must provide for termination in appropriate circumstances of subscribers and account holders of the OSP’s system or network who are “repeat infringers”; (3) the OSP must inform its subscribers and account holders about the termination policy; and (4) the OSP must “reasonably implement” the policy.

In Flava Works, the court issued a preliminary injunction against the defendants, Marques Rondale Gunter (“Gunter”) and his website, myVidster.com.  myVidster.com allows users to “bookmark” or “post” video files, thereby embedding the video files from other websites on to myVidster.com.  While some of the videos offered on myVidster.com are hosted on its servers, the vast majority are hosted on the servers of third-party websites.  Importantly, regardless of where a video is hosted, when it is embedded on myVidster.com, it is not simply linked-to from the site; rather, when users play an embedded video, they remain on myVidster.com while viewing it.

Flava Works, Inc. (“Flava Works”), a producer and distributor of adult entertainment products and the plaintiff in the case, repeatedly asked defendant Gunter to remove its copyrighted content from myVidster.com.  The evidence indicated that Gunter would only sometimes comply with these requests to remove Flava Works’ content and, further, did not terminate any users’ accounts for repeated postings of Flava Works’ content.

In issuing a preliminary injunction against the defendants, the court held that Gunter and myVidster.com were unlikely to succeed in their argument that they were protected by one of the four safe harbor provisions of Section 512.  In rejecting their argument, the court did not examine every requirement that a defendant must satisfy in order to receive the protection of Section 512’s safe harbors.  Rather, the court focused on Section 512’s repeat infringer policy requirement.  Gunter, in explaining the repeat infringer policy of myVidster.com, stated that he believed the term “infringer” only included those users who posted videos from password protected or private websites.  He stated, in other words, that an infringer under his policy is not one who posts copyrighted works without authorization, but rather, one who posts videos that are not otherwise available on public websites.

In finding that Gunter and myVidster.com’s repeat infringer policy was insufficient to satisfy the requirements of Section 512, the court noted that “[Gunter’s] understanding of the term ‘infringer’ does not encompass the law of copyright.”  Indeed, because myVidster.com’s repeat infringer policy did not actually provide for the termination of repeat copyright infringers, the court held that Gunter and myVidster.com were not eligible for the safe harbor provisions of Section 512.

While Flava Works does not offer much guidance as to what an adequate repeat infringer policy might look like, it does offer insight into at least a necessary requirement for such a policy.  In particular, the case makes clear that a repeat infringer policy must provide for termination of users for repeatedly violating copyright law; a personal determination of what an individual believes to be proper or improper usage is insufficient to satisfy the requirements of Section 512.  If nothing else, Flava Works serves as a reminder to companies operating blogs and websites to confirm that they have adopted and implemented a policy for terminating users engaged in repeated copyright infringement.

Even though Flava Works does not explore other qualities that a repeat infringer policy should possess to satisfy DMCA requirements, previous cases have offered guidance on this issue.  In Perfect 10, Inc. v. Cybernet Ventures, Inc., the court stated that, at minimum, an OSP should terminate users when “given sufficient evidence to create actual knowledge of blatant, repeat infringement from particular users.”

Moreover, the court in Perfect 10, Inc. v. CCBill, LLC stated that a policy would be considered reasonably implemented “if it has a working notification system, a procedure for dealing with DMCA-compliant notifications, and if it does not actively prevent copyright owners from collecting information needed to issue such notifications.”  The court went on to note that implementation is reasonable “if, under ‘appropriate circumstances,’ the service provider terminates users who repeatedly or blatantly infringe copyright.”

In an attempt to standardize the repeat infringer policies across Internet service providers (“ISPs”), various large ISPs as well as representatives from the film, music and television industries recently teamed up to create a model repeat infringer policy.  The policy, which will be administered by the newly created Center for Copyright Information (a partnership of the groups that produced the model policy), creates a “six strikes and you’re out” rule for copyright violations, with each strike having escalating consequences for the user.  While this standardized policy is by no means binding on ISPs, it has received support from the White House.

Plaintiff Rock River is a producer and distributor of music records.  In 2006, Rock River remixed recordings of reggae music by Bob Marley and the Wailers, purportedly under license from a company called San Juan Music.  Defendant Universal Music Group (“UMG”) is the owner of Island Records and controls the rights to a number of Bob Marley’s records.  In October 2007, UMG sent cease and desist letters to various Internet music distributors, including Apple, asserting that it had exclusive rights to the Bob Marley recordings and threatening copyright infringement actions.  As a result, the distributors stopped distributing Rock River’s remixes.  Rock River then sued, asserting a number of claims, including that UMG violated Section 512(f) of the DMCA by sending a cease and desist letter to Apple that contained knowing and material misrepresentations that Rock River’s remixes infringed UMG’s copyright.

The court held that Section 512(f) of the DMCA did not apply because the “notification” at issue—the cease and desist letter to Apple—was not a notification pursuant to the DMCA.  Section 512(c)(1) of the DMCA provides a safe harbor for online service providers with respect to liability “for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” UMG’s cease and desist letter was found not to be a take-down letter as described in Section 512(c) because it did not address infringement by reason of the storage at the direction of a user.  Rather, the alleged infringing conduct at issue concerned Apple’s own actions with respect to the selection and distribution of music through its iTunes services, not the performance of the user-directed functions contemplated by the DMCA.  Therefore, the court held that UMG’s cease and desist letter was not the functional equivalent of a Section 512(c)(3) takedown notice and, accordingly, was not subject to sanctions under Section 512(f) of the DMCA.

Over time, these contracts have reflected different approaches.  In an earlier version, the patient agreed to “refrain from directly or indirectly publishing or airing commentary regarding Physician and his practice, expertise and/or treatment.” The doctor would presumably be able to seek an injunction against the patient for breaches of the contract, such as the publication of reviews.  The patient’s agreement to such restrictions was described as consideration for the doctor’s treatment and for the doctor’s agreement not to exploit “legal privacy loopholes” that the contract claimed would otherwise be permissible under federal privacy law.

While this initial approach would have imposed liability on the patient for publishing reviews, it would still have allowed websites to continue hosting such reviews under the protection of Section 230 of the CDA.  More recent contracts—possibly revised in response to this problem—do not directly restrain patients from posting reviews, but instead require the patient to prospectively assign to the doctor the copyright in any such reviews.  “[I]f Patient prepares such commentary for publication on web pages, blogs, and/or mass correspondence about Physician, the Patient exclusively assigns all Intellectual Property rights, including copyrights . . . ” to the physician.  If valid, such an assignment would allow doctors to send “take-down” notices under the Digital Millennium Copyright Act (“DMCA”) to websites hosting the patient reviews, thus requiring such websites to remove such reviews or face liability for copyright infringement.  Section 230 of the CDA would not protect websites that receive such DMCA take-down notices, because Section 230 expressly does not provide any defense to infringement of copyright or other intellectual property rights.

As a novel use of copyright law, the Medical Justice approach may raise more problems for doctors than it solves.  The website DoctoredReviews has identified several issues facing doctors who wish to enforce such contracts against patients or to serve take-down notices to websites hosting patient reviews.  For example, such contracts may be unconscionable under state law and thus unenforceable, given the nature of the terms and the superior bargaining power of the doctor.  Doctors may even face liability for attempting to exercise their rights under the DMCA.  For example, if a doctor knows that he has not actually received a copyright assignment from the author of the review, then the doctor is potentially liable under the DMCA for submitting a take-down notice based on misrepresented information.  Because many reviews are published anonymously, some doctors require all patients to sign the contracts, in hopes of establishing that any patient publishing a review must necessarily have assigned the copyright to the doctor.  Even if a doctor does hold copyright assignments from all of her patients, the doctor may still know or suspect that a review had been fictitiously authored by a non-patient, who would not have signed any agreement.  The publication of patient reviews may also constitute noninfringing fair use, and at least one court has found that copyright owners must consider whether fair use applies before sending DMCA take-down notices.

In addition to potential liability under the DMCA, doctors may face problems arising from the legal consideration that they offer to patients in exchange for the copyright assignments.  In certain instances, the U.S. Department of Health & Human Services has prohibited doctors from representing that a patient’s agreement is in consideration for “providing greater privacy protection than required by law” when the law does, in fact, require such greater privacy protection.  Beyond the legal issues, the use of such contracts may also violate a doctor’s ethical obligation to put the patient’s interests before the doctor’s own financial interests.

Other industries have also explored the use of prospective copyright assignments, although with different— and less ambitious—approaches than Medical Justice recommends.  The Burning Man festival, for example obtains a joint ownership interest, together with attendees, in the copyright to any photographs taken at the event.  Attendees also agree to make only “personal use” of such photographs.  The agreement clarifies that, with respect to social networks, a use is only deemed “personal” if the attendee does not upload the images “with the intent to publicly display them beyond one’s immediate network, and if one’s immediate network is not inordinately large.”  The festival’s representatives have stated that these terms are intended to protect the event from commercialization, and to protect the privacy of the attendees.  In another example, the pop singer Lady Gaga reportedly requires a copyright assignment of photographs taken at concerts as a condition to obtaining press credentials.  The photographers receive a limited license to use the photographs in connection with a specific website for a four-month period.

As user-generated review websites such as Yelp continue to grow in popularity, one can anticipate increasingly clever uses of intellectual property law by businesses intent on exercising greater control over their online personae.  Yet, as the Medical Justice situation shows, too clever by half may not be clever enough.  In the end, while social media may provide a company with the world’s largest, most cost-effective platform for promoting its goods and services, that same platform is also available to the company’s detractors.