The latest issue of our Socially Aware newsletter is now available here.

In this issue of Socially Aware, our Burton Award-winning guide to the law and business of social media, we examine the use of the Computer Fraud and Abuse Act to combat web scraping; we explore the launch of Google Glass in the UK and the issues it raises; we analyze the FDA’s latest attempt to provide direction for drug and device manufacturers concerning how and when they may use social media; we report on a recent case concerning whether service providers can avail themselves of certain DMCA safe harbors; we highlight the increasingly important role of social media services in proxy contests; we take a look at how the Supreme Court’s Aereo decision might impact other areas of technology; and we discuss the ongoing controversy regarding website accessibility under the ADA and California’s Unruh Act.

All this—plus a collection of thought-provoking statistics about social media and the World Cup…

Read our newsletter.

 

In a string of cases against Google, approximately 20 separate plaintiffs have claimed that, through advertisements on its AdWords service, Google engaged in trademark infringement. These claims have been based on Google allowing its advertisers to use their competitors’ trademarks in Google-generated online advertisements. In a recent decision emerging from these cases, CYBERsitter v. Google, the U.S. District Court for the Central District of California found that Section 230 of the Communications Decency Act (CDA) provides protection for Google against some of the plaintiff’s state law claims.

As we have discussed previously (see here and here), Section 230 states that “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” The Section 230 safe harbor immunizes websites from liability for content created by users, as long as the website did not “materially contribute” to the development or creation of the content. An important limitation on this safe harbor, however, is that it shall not “be construed to limit or expand any law pertaining to intellectual property.”

In the CYBERsitter case, plaintiff CYBERsitter, which sells an Internet content-filtering program, sued Google for selling and displaying advertisements incorporating the CYBERsitter trademark to ContentWatch, one of CYBERsitter’s competitors. CYBERsitter’s complaint alleged that Google had violated numerous federal and California laws by, first, selling the right to use CYBERsitter’s trademark to ContentWatch and, second, permitting and encouraging ContentWatch to use the CYBERsitter mark in Google’s AdWords advertising. Specifically, CYBERsitter’s complaint included the following claims: Trademark infringement, contributory trademark infringement, false advertising, unfair competition and unjust enrichment.

Google filed a motion to dismiss, arguing that Section 230 of the CDA shielded it from liability for CYBERsitter’s state law claims. The court agreed with Google for the state law claims of trademark infringement, contributory trademark infringement, unfair competition and unjust enrichment, but only to the extent that these claims sought to hold Google liable for the infringing content of the advertisements. The court, however, did not discuss the apparent inapplicability of the Section 230 safe harbor to trademark claims. As noted above, Section 230 does not apply to intellectual property claims and, despite the fact that trademarks are a form of intellectual property, the court applied Section 230 without further note. This is because the Ninth Circuit has held that the term “intellectual property” in Section 230 of the CDA refers to federal intellectual property law and therefore state intellectual property law claims are not excluded from the safe harbor. The Ninth Circuit, however, appears to be an outlier with this interpretation; decisions from other circuit courts suggest disagreement with the Ninth Circuit’s approach, and district courts outside the Ninth Circuit have not followed the Ninth Circuit’s lead.

Google was not let off the hook entirely with regard to the plaintiff’s state trademark law claims. In dismissing the trademark infringement and contributory trademark infringement claims, the court distinguished between Google’s liability for the content of the advertisements and its liability for its potentially tortious conduct unrelated to the content of the advertisements. The court refused to dismiss these claims to the extent they sought to hold Google liable for selling to third parties the right to use CYBERsitter’s trademark, and for encouraging and facilitating third parties to use CYBERsitter’s trademark, without CYBERsitter’s authorization. Because such action by Google has nothing to do with the online content of the advertisements, the court held that Section 230 is inapplicable.

The court also found that CYBERsitter’s false advertising claim was not barred by Section 230 because Google may have “materially contributed” to the content of the advertisements and, therefore, under Section 230 would have been an “information content provider” and not immune from liability. Prof. Eric Goldman, who blogs frequently on CDA-related matters, has pointed out an apparent inconsistency in the CYBERsitter court’s reasoning, noting that Google did not materially contribute to the content of the advertisements for the purposes of the trademark infringement, contributory infringement, unfair competition and unjust enrichment claims, but that Google might have done so for the purposes of the false advertising claim.

CYBERsitter highlights at least two key points for website operators, bloggers, and other providers of interactive computer services. First, at least in the Ninth Circuit, but not necessarily in other circuits, the Section 230 safe harbor provides protection from state intellectual property law claims with regard to user-generated content. Second, to be protected under the Section 230 safe harbor, the service provider must not have created the content and it must not have materially contributed to such content’s creation.

Popular online marketplace CafePress.com suffered a legal setback recently when a U.S. District Court in the Southern District of New York denied CafePress’s motion for summary judgment against claims of trademark infringement. CafePress operates an online “print on demand” service that allows users to upload designs which CafePress then prints on a variety of items. The users receive a share of the money that CafePress makes when it sells items displaying the users’ designs. These items include everything from coffee mugs and beer steins to iPhone cases and flip-flops. In 2009, guitar neck manufacturer Born to Rock Design Incorporated (BTR), which owns a federal registration for the trademark “Born to Rock,” sent a letter to CafePress asking the site to stop selling merchandise displaying the mark. Since 2003, CafePress had produced a number of different items displaying the “Born to Rock” phrase, all based on designs provided by users. These designs included the following:

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.

Section 512 of the Digital Millennium Copyright Act (“DMCA”) offers various “safe harbors” to online service providers (“OSPs”) for claims of copyright infringement against them arising from certain acts of their subscribers and account holders.  Section 512 provides that in order for an OSP to qualify for the DMCA’s protections, it must satisfy certain requirements.  One threshold requirement is that an OSP must have a policy that, under appropriate circumstances, provides for the termination of subscribers and account holders who are “repeat infringers.”

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.

Section 512(f) of the Digital Millennium Copyright Act (“DMCA”) imposes liability on those who abuse the DMCA’s notice and take-down procedures by making knowingly false claims of copyright infringement.  Courts have issued sanctions on overly zealous copyright owners based on this provision, such as in the case of a voting technology firm that knowingly issued meritless notices of infringement to ISPs. Courts tend to apply Section 512(f) fairly narrowly, however, as illustrated in a recent Central District of California case, Rock River Communications, Inc. v. Universal Music Group, Inc.

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.