Tag Archives: copyright infringement

Google Books Program Considered Fair Use

Posted on November 18, 2013 by | Comments Off on Google Books Program Considered Fair Use

By: Joe Carnicella, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

On November 14, 2013, the United States District Court for the Southern District of New York held that Google’s Books Program constituted fair use under Section 107 of the Copyright Act, 17 U.S.C. 107.

Since 2004, Google has scanned more than twenty million books as part of its two digital book programs, the “Partner Program” and the “Library Project” (collectively referred to as “Google Books”).  Almost 93% of the books scanned are non-fiction while the remaining 7% are fiction.  The Partner Program, which is designed to help publishers sell books and to help books become discovered, consists of Google hosting and displaying material provided by book publishers or other rights holders with the permission of the rights holders.  The Library Project involves the digital scanning of books in the collections of numerous libraries without the permission from the copyright holders.  Pursuant to an agreement with Google, participating libraries can download a digital copy of each book scanned from their collections.  Google also creates more than one copy of each book it scans and maintains digital copies on its servers and back-up tapes.

Plaintiffs, the legal or beneficial owners of various books, commenced this action alleging that Google committed copyright infringement by scanning copyrighted books and making them available for search without permission of the copyright holders.  Google’s primary defense was fair use.  According to Section 107 of the Copyright Act, the fair use of a copyright work , . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.  In determining whether the use made of a work in any particular case is a fair use, the factors to be considered shall include — (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.  The court analyzed each of these factors as general guidance to determine whether Google infringed on the rights of the copyright holders.

First, with respect to the purpose and character of use, a key consideration is whether the use of the copyrighted work is “transformative,” that is, whether the new work merely supersedes or supplants the original creation or whether it instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.  The court determined that Google’s use of the copyrighted works was highly transformative.  Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers and others find books.  Google Books helps librarians and cite-checkers to identify and find books.  The court found that the use of book text to facilitate search through the display of snippets was transformative.  The court also found Google Books to be transformative in that it has transformed book text into data for purposes of substantive research, including data mining and text mining in new areas, thereby opening up new fields of research.  Moreover, the court concluded that Google Books does not supersede or supplant books because it is not a tool to be used to read books.  Finally, even though Google is a for-profit company and Google Books is a commercial enterprise, and despite the fact that a commercial use tends to weigh against a finding of fair use, the court found fair use because Google does not engage in direct commercialization of copyrighted works, i.e. Google does not sell the scans it has made of the books, does not sell the snippets that it displays, and does not run ads on the pages that contain snippets.

With respect to the second factor, the court considered certain facts (e.g. that the majority of the books are non-fiction and that the books at issue are published and available to the public), and concluded that such considerations favor a finding of fair use.

With respect to the third factor, the court noted that Google scans the full text of books and it copies verbatim expression.  The court noted that, as one of the keys to Google Books is its offering of full-text search of books, full-work reproduction is critical to the functioning of Google Books.  Even though Google limits the amount of text it displays in response to a search, the court concluded that the third factor weighed slightly against a finding of fair use.

Finally, with respect to the fourth factor, the plaintiffs argued that Google Books would negatively impact the market for books and that Google’s scans would serve as a “market replacement” for books.  The court disagreed with this argument because Google does not sell its scans, and the scans do not replace the books.  The plaintiffs also argued that users could put in multiple searches, varying slightly the search terms, to access an entire book.  Again, the court disagreed and found it highly unlikely that someone would take the time and energy to input countless searches to try and get enough snippets to comprise an entire book.  According to the court, not only is that not possible as certain pages and snippets are blacklisted, the individual would have to have a copy of the book in his possession already to be able to piece the different snippets together in coherent fashion.  To the contrary, the court found that Google Books would only enhance the sales of books to the benefit of copyright holders and determined that Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays.

The court weighed the competing factors and found Google’s use to be a fair use.  According to the court, Google Books provides significant public benefits by advancing the progress of the arts and sciences, by maintaining respectful consideration for the rights of authors and by not adversely impacting the rights of copyright holders.  Also, Google provides the libraries with the technological means to make digital copies of books that they already own, wherein the libraries then use the digital copies in transformative ways by creating their own full-text searchable indices of books, maintaining copies for purposes of preservation, and making copies available to print-disabled individuals.

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Sharing a Publication at Work May Constitute Copyright Infringement

Posted on September 5, 2013 by | Comments Off on Sharing a Publication at Work May Constitute Copyright Infringement

by: Kelly A. Williams, a shareholder at Picadio Sneath Miller & Norton, P.C.

wd-pa-courthouseDo you work in an office that receives a single copy of a trade publication, which is passed around the office for multiple people to read?  Be careful because such use may constitute copyright infringement—at least that is what one publisher argues.

In Energy Intelligence Group, Inc. v. The United Steel, Paper and Forestry, Rubber, Manufacturing, Energy, Allied Industrial and Service Workers International Union, AFL-CIO/CLC (“USW”), Civ. Action. No. 11-00428, 2013 U.S. Dist. LEXIS 123080 (W.D. Pa. Aug. 29, 2013) (Judge Conti), Energy Intelligence Group, Inc. and Energy Intelligence Group (UK) Limited (collectively “EIG”) filed suit to seek damages from Defendant USW for sharing its single subscription to the “Oil Daily” with multiple USW employees.  USW, located in Pittsburgh, Pennsylvania, is a labor organization, which provides collective bargaining services to its union members.  USW subscribed to the Oil Daily, beginning in 1992.  From 1992 to 1999, the Oil Daily was sent in paper copy.  Starting in 1999, EIG began sending the Oil Daily in electronic form.  USW subscribed to the Oil Daily through a subscription agent, EBSCO Information Services (“EBSCO”).

EIG’s suit involves 2,880 issues of the Oil Daily, which were published from December 1999 to March 2011.  EIG owns valid U.S. copyright registrations for each of these publications and provides copyright notices on its website, articles, emails and publications, including on the Oil Daily itself.  In February 2006, EIG sent a letter to all subscribers informing them that single-user subscriptions were not to be shared by multiple readers.  This letter was not sent directly to USW but was sent to EBSCO.  However, the court determined that EBSCO was USW’s agent and this constituted notice to USW, as well as EBSCO.

Mary Dimoff, USW’s librarian, was the sole subscriber to the Oil Daily.  When she received the Oil Daily in hard copy, she maintained a list of USW recipients to receive the Oil Daily, and she routed the paper to these individuals over the course of three to four days.  When Ms. Dimoff started receiving the Oil Daily in electronic form, she forwarded it to the recipients via email.  Through various communications with EIG and EBSCO, Ms. Dimoff revealed to EIG that she was sharing her subscription, and EIG filed suit.

USW conceded that it copied and distributed the 2,880 issues of the Oil Daily.  However, USW asserted that it was permitted to do so based upon several different defenses including, implied license, equitable estoppel, fair use, and laches.  USW also argued that damages should be limited to the three-year period prior to the filing of the complaint.  The parties filed cross motions for summary judgment on the defenses and the damages issues.

The court held that factual issues precluded the entry of summary judgment on all but one issue which was the equitable estoppel defense.  The court concluded that it would be impossible for USW to prove that the equitable estoppel defense applied because it could not prove all four factors necessary to establish such a defense: (1) the plaintiff had actual or constructive knowledge of the defendant’s infringing conduct; (2) the plaintiff intended or expected that defendants would act on the plaintiff’s misrepresentations or concealments; (3) the defendant was ignorant of the true facts; and (4) the defendant relied on the plaintiff’s conduct to its injury.

The court found that USW had sufficient evidence to prove that EIG had at least constructive knowledge of the infringing conduct for approximately three years before filing suit and thus, met the first factor.  However, USW could not prove the last three factors.  As for the second factor, the court determined that EIG did not misrepresent or conceal its intent to assert its copyrights because it affixed its copyright notice on every edition of the Oil Daily.  With respect to the third factor, the court rejected USW’s argument that it acted innocently because it had the notice of the copyright on the Oil Daily and because USW never followed up with EBSCO or with EIG to confirm if its actions were permissible.  Finally, the court held that USW could not show that it relied on EIG’s conduct to its detriment because EIG provided the copyright notice directly on the Oil Daily and sent its terms and conditions to EBSCO.  Therefore, EIG made no misrepresentations and did not conceal its copyrights.

The Energy Intelligence Group case is an interesting copyright case.  For more details on the other defenses and the factual issues raised, you can read the entire case here.

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Preliminary Ruling Okaying Use of Copyrighted Articles During Patent Prosecution as Fair Use

Posted on August 15, 2013 by | Comments Off on Preliminary Ruling Okaying Use of Copyrighted Articles During Patent Prosecution as Fair Use

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Magistrate Judge Jeffrey J. Keyes from the U.S. District Court for the District of Minnesota issued an important report and recommendation affirming the ability of patent attorneys to use copyrighted articles during patent prosecution (e.g., to submit them to the USPTO to fulfill disclosure requirements) as fair use.

BACKGROUND

In American Institute of Physics, et al. v. Schwegman Lundberg & Woessner, P.A.  (No. 12-cv-00528), various publishers sued a law firm that had copied their copyrighted scientific articles in order to assess whether the articles were prior art and, if they were, sent copies to the USPTO to fulfill its obligation to disclose prior art. The publishers originally argued that any use by the law firm of these articles without payment constituted copyright infringement. However, they dropped their claims as to the firm’s (1) making copies to be sent to the USPTO, (2) sending copies to the USPTO, and (3) retaining one copy for its files. They continued their infringement claims as to the downloading of the articles, making other copies that existed in the firm’s files, and distributing the copies to its clients or others in the firm. The law firm argued that none of these actions infringed because of the fair use exception.

THE COURT’S DECISION

In assessing the applicability of the fair use defense, a court must consider (1) the purpose and character of the accused infringer’s use, (2) the nature of the copyrighted work, (3) the amount of used, and (4) the effect of the copying on the relevant market.

The Court determined that the nature and purpose of the firm’s use was different from that of the publishers. The publishers publish the works for the betterment of science and to allow other scientists to test and validate the authors’ findings. In contrast, the firm used the articles to satisfy a legal requirement of disclosure to assist the USPTO in determining whether an invention was new and novel. The Court further found that the intended audience for the two parties was different and did not overlap. The publishers’ audience was scientists, students, libraries, etc., whereas the firm’s audience was the USPTO and lawyers in the firm.

The Court also considered the nature of the articles to slightly favor the law firm. Because the articles were primarily factual and informational in nature, they fell a bit further from the creative types of expression more strongly protected by copyright law.

The Court looked at the amount of use and also concluded that, despite the copying of the entire article, this factor also favored the law firm. In order to satisfy its obligation of disclosure, the firm had to use the entire article. Thus, its entire use was consistent with its allowed purpose.

Finally, the Court looked to whether there were any other factors that might favor either party. It concluded that the law firm’s use was consistent with the overriding Constitutional basis for both the patent and copyright laws, which is to promote the progress of the science and useful arts. Such copying ultimately furthered this objective and the public good by assisting the USPTO in weeding out improper patents.

Ultimately, in weighing all of the factors, the Court concluded that the law firm’s use of the copyrighted articles was fair use and not copyright infringement.

 

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Ninth Circuit Confirms Righthaven LLC Lacked Standing to Bring Copyright Infringement Claims

Posted on June 3, 2013 by | Comments Off on Ninth Circuit Confirms Righthaven LLC Lacked Standing to Bring Copyright Infringement Claims

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Copyright SignIn what appears to be the conclusion to the saga that was the Righthaven LLC copyright troll experiment (see past posts here), the Ninth Circuit affirmed the District Court’s determination that Righthaven lacked standing to sue for copyright infringement in Righthaven LLC v. Hoehn, No. 11-16751. As the Ninth Circuit confirmed, a plaintiff must have more than a bare right to sue in order to have standing.

As we discussed two years ago, Righthaven LLC was set up to acquire copyrights from various entities and then sue alleged infringers who used any or all of the copyrighted works. In particular, Righthaven purported to obtain assignments from the Las Vegas Review-Journal. However, these assignments were nothing more than a bare right to sue with restrictions. Righthaven obtained no right to exploit the copyrights or obtain any royalties. Instead, the paper retained essentially every meaningful right associated with the copyright, including an exclusive license, the right to veto any potential copyright litigation, the right to receive proceeds from any litigation, and the right to revert ownership back to itself should it choose.

Nonetheless, Righthaven proceeded to sue hundreds of individuals who used some or all of these copyrighted works. Eventually, as the result of discovery and inquiries by the Court, the true nature of Righthaven’s rights became apparent. At that point, the District Court determined that Righthaven was not, in fact, the true owner of the copyright and dismissed Righthaven’s copyright claims. Righthaven appealed this determination to the Ninth Circuit, which affirmed.

Under the Copyright Act, only the “legal or beneficial owner of an exclusive right under a copyright” has standing to sue for infringement. 17 U.S.C. § 501(b). An assignment of a bare right to sue is not sufficient to confer standing. To determine whether a party has sufficient exclusive rights, courts are to look at the substance and effect of any contract purporting to assign ownership, rather than the words or labels given by the parties.

In this case, the Ninth Circuit found that Righthaven held none of the exclusive rights typically associated with a copyright owner. Instead, it only had a bare right to sue, which was insufficient to confer standing.

With this finding, it appears that the Righthaven experiment in copyright trolling is over. It will be interesting to see if others take up the mantle or whether this was a fleeting experiment.

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U.S. Supreme Court Interprets the “First Sale” Doctrine

Posted on March 20, 2013 by | Comments Off on U.S. Supreme Court Interprets the “First Sale” Doctrine

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By: Joe Carnicella, intellectual property attorney with Picadio Sneath Miller & Norton, P.C.

On March 19, 2013, in Kirtsaeng v. Wiley & Sons, Inc., No. 11-697, the U.S. Supreme Court held that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad.  Specifically, a buyer or other lawful owner of a copy (of a copyrighted work) lawfully manufactured abroad is protected under the “first sale” doctrine and such buyer may bring that copy into the United States (and sell it or give it away) without obtaining permission to do so from the copyright owner.

Section 106 of the Copyright Act grants the owner of copyright exclusive rights including the right to distribute copies of the copyrighted work to the public by sale or other transfer of ownership.  One limitation on these exclusive rights falls under Section 109(a) of the Copyright Act (commonly referred to as the “first sale” doctrine), which provides that the owner of a particular copy lawfully made under this title is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.  Thus, once a copy has been lawfully sold or its ownership otherwise lawfully transferred, the buyer of that copy and subsequent owners are free to dispose of the copy as they wish.  Section 602(a)(1) further provides that importation into the United States, without the authority of the owner of copyright under this title, of copies of a work that have been acquired outside the United States is an infringement of the exclusive rights to distribute copies under Section 106.

Wiley & Sons publishes academic books and assigns rights to publish, print and sell the English language textbooks abroad to its wholly owned foreign subsidiary.  Supap Kirtsaeng, while studying in the United States, asked his friends and family to purchase copies of foreign edition English-language textbooks at Thai book shops, which sold the books at low prices, and to mail the books to him in the United States, wherein he used the books, sold them, reimbursed his family and friends and kept the profit.

In 2008, Wiley initiated a lawsuit against Kirtsaeng for copyright infringement on the grounds that Kirtsaeng’s unauthorized importation of its books and his later resale of those books amounted to an infringement of Wiley’s Section 106(3) exclusive right to distribute as well as the Section 602 related import prohibition.  Kirtsaeng defended against the claim on the ground that the books he had acquired were “lawfully made” and that he had acquired them legitimately.  His position was that the “first sale” doctrine under Section 109(a) permitted him to resell or otherwise dispose of the books without the copyright owner’s further permission.  The District Court ruled that the “first sale” defense was not available to Kirtsaeng because the doctrine does not apply to “foreign-manufactured goods.”  The Second Circuit agreed with the District Court.

The Court analyzed the language within these statutes, and in particular the phrase “lawfully made under this title.”  Wiley argued that the phrase imposes a form of geographical limitation and that the “first sale” doctrine does not apply to copies of American copyrighted works manufactured abroad.  Kirtsaeng argued that the phrase imposes a non-geographical limitation, and in particular, that the intention was for the phrase to mean “made in accordance with” or “in compliance with the Copyright Act.”  In this case, Kirtsaeng asserted that the “first sale” doctrine would apply to copyrighted works as long as their manufacture met the requirements of American copyright law, e.g. copies manufactured abroad with the permission of the copyright owner.  The Court considered the language of Section 109(a), its context and the common-law history of the “first sale” doctrine and concluded that Section 109(a) favors a non-geographical interpretation.  The U.S. Supreme Court determined that, while Section 602(a)(1) makes clear that importing a copy without permission violates the owner’s exclusive distribution right, it also refers explicitly to Section 106(3), which is by its terms is subject to various limitations including the “first sale” limitation under Section 109(a).

A complete copy of the Court’s Opinion can be found on the United States Supreme Court’s website.

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Court Threatens to Sanction Copyright Troll Righthaven LLC

Posted on June 15, 2011 by | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Yesterday, Chief Judge Roger Hunt of the United States District Court for the District of Nevada issued a stern ruling threatening sanctions against Righthaven LLC in one of the numerous copyright infringement lawsuits brought by Righthaven in Nevada (Righthaven LLC v. Democratic Underground, LLC, No. 2:10-cv-01356-RLH-GWF). In dismissing the case, the Court found that Righthaven misrepresented its rights in the underlying copyrighted works and did not have standing to sue for infringement. The Court further ordered Righthaven to show cause why it should not be sanctioned for failing to disclose another party’s (Stephens Media LLC) pecuniary interest in this and hundreds of other cases filed in Nevada.

Who Is Righthaven LLC?

Righthaven is a Nevada company that acquired limited rights from a variety of copyright holders, including Stevens Media LLC and News Media Group, to file hundreds of lawsuits against individuals and entities that allegedly infringe copyrights by posting excerpts of articles from newspapers such as the Las Vegas Review-Journal and the Denver Post. Righthaven has filed suit in a variety of jurisdictions throughout the United States, including Nevada, Colorado, and South Carolina.

Righthaven does not create or publish the works it is suing on. Instead, it acts as an enforcement arm of the original copyright holders that it has a relationship with. It scours the web looking for individuals, typically bloggers, that have reposted all or portions of articles appearing in newspapers such as the Las Vegas Review-Journal or Denver Post. It then files suit, threatening substantial sanctions, including damages up to $150,000 and forfeiture of web site domain names. Righthaven has sued everyone from political candidates to charities, individuals, bloggers, and companies—even those that a newspaper featured in the very article that was copied.

Because Righthaven does not create or publish the content that it is suing on, Righthaven is often referred to as a “copyright troll,” in an apparent tip to how many people refer certain types of non-practicing entities in the patent infringement arena.

Righthaven Lacks Standing to Sue

With respect to copyrights from Stevens Media, Righthaven entered into a Strategic Alliance Agreement (“SAA”) in 2010 that was made public for the first time this year as a result of discovery in one of the lawsuits. The agreement purported to assign all rights to the copyrighted materials to Righthaven. In fact left all of the rights with Stephens Media except for the bare right to sue. For example, Stephens Media expressly retained the rights to license, receive royalties, and exploit the copyrighted works. In addition, Stephens Media receives 50% of any of the litigation proceeds (minus costs) that Righthaven receives for lawsuits involving Stephens Media’s copyrights.

The Copyright Act only allows the legal or beneficial owner of an exclusive right to the copyrighted work to sue for infringement, and a copyright holder cannot (under Ninth Circuit law) assign the bare right to sue to another. In the Court’s decision yesterday, it found that the SAA gave Righthaven only a bare right to sue, so it was ineffective and Righthaven lacked standing—“ The plain and simple effect of this section was to prevent Righthaven from obtaining, having, or otherwise exercising any right other than the mere right to sue as Stephens Media retained all other rights.”

Righthaven Faces Sanctions

The Court was very troubled by Righthaven’s actions during this and other lawsuits brought in federal court in Nevada. In particular, the Court called some of Righthaven’s arguments and statements “disingenuous,” “inaccurate,” and “dishonest.” Most troubling to the Court was Righthaven’s failure to disclose that Stephens Media had a pecuniary interest in the litigation, despite Local Rule 7.1-1’s explicit requirement that all parties disclose anyone that has a direct, pecuniary interest in the outcome of the case. The Court believed that Righthaven also failed to disclose this information in approximately 200 other cases it filed in Nevada. Therefore, the Court ordered Righthaven to show cause within two weeks “why it should not be sanctioned for this flagrant misrepresentation to the Court.”

Is Righthaven Finished?

The Court’s decision yesterday is a stinging rebuke to Righthaven and its tactics. It will be interesting to see if it can survive this ruling and the likely challenges by defendants in the hundreds of other cases around the country. What may have appeared to be an easy way to make money off of these copyrights could end up costing Righthaven significant amounts of money in sanctions and attorneys’ fees.

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