Copyright

Back on July 23, 2014, this blog examined in detail the problems with the Digital Millennium Copyright Act's "takedown notice." In particular, I explained the "whack-a-mole" problem, where infringing material is immediately reposted by the offending site. Also, I detailed how Google forwards all takedown notices to the Chilling Effects organization in an effort to publicly shame those content creators bold enough to demand that their rights be respected. These past weeks have provided some new twists. For its part, Google published a document titled "How Google Fights Piracy,"[ref]How Google Fights Piracy[/ref] asserting that it was demoting URLs in the search results that receive a large number of takedown notices. It also repeated the tired mantra that Google does not really aid in directing people to pirate sites. I would like to present you the verbatim text, but somehow the document disables the "copy and paste" function on my computer. That's some mighty fine "transparency" you've got there Google. But I digress. The effort was immediately derided by some artists as ineffective,[ref]Google's demotion of pirate search results earns a FAIL so far[/ref] but on further review, perhaps it was not. The TorrentFreak website reported yesterday that a new UK pirate website was using a special webcrawler and algorithm to actively promote listings back to the top of Google results after being demoted.[ref]Torrent Site Uses Google to Resurrect Taken Down Content[/ref] It works like this: "‘We created a technology that crawls DMCA notices and resurrects the torrent webpage under a different URL so it can appear in search results again. It was rather complicated to sharpen it, but eventually it works pretty well. We will use it on FileSoup.com for all the websites we proxy,' FileSoup explain. [sic] ‘It will lead to a situation when KickaAss.FileSoup.com (for example) will have more pages indexed in Google than the original Kickass.to because we will revive pages banned by DMCA within Google search results. We call this technology the Necromancer.'"[ref]Id.[/ref] And where do they get the information for the banned URLs? Why, from Google of course, and its partner in crime, the Chilling Effects organization. "The team behind the site say they have developed a web crawler designed to pull the details of content subjected to DMCA notices from two sources – Google's Transparency Report and the Chilling Effects Clearing House. From here the links are brought back to life."[ref]Id.[/ref] In other words, the Google and Chilling Effects "transparency reports" are little more than a road map of where to find pirated content. This has been complained about before, particularly by the Copyright Alliance.[ref]Google Protects Chilling Effects from Takedown Notices[/ref] There have even been attempts to remove those listings via DMCA takedown, reports the TorrentFreak website. "Home Box Office has tried to de-index Chilling Effects pages 240 times, with Microsoft and NBC Universal making 99 and 65 attempts respectively."[ref]Id.[/ref] Google, of course, being Google, ignores these DMCA notices.[ref]Id.[/ref] So, to add to the already burdensome "whack-a-mole" process, we now find the new and improved game of whack-a-mole where infringing content is easily indexed and reposted by third parties, thanks to the handy listing provided by Google and Chilling Effects. I ask again, whose speech is being "chilled" here? Just how determined and amoral the pirates are was highlighted by this exchange with the reporter at TorrentFreak:

"'But what happens when FileSoup itself is subjected to takedown notices of its own?' ‘When FileSoup receives a DMCA abuse notice we create a new URL address for the same content. After that this URL lives till the next DMCA abuse notice,' the team explain." [sic]

In other words, they are pre-planning the next round of whack-a-mole. But not so fast, smug pirate. By scanning the lists of banned URLs from Google and Chilling Effects, you are re-posting material that you know is infringing as it has already been the subject of a takedown notice. And by simply copying material that is subject to a DMCA notice sent to you to a new URL, you are also re-posting material you know is infringing. (NB: It also "mirrors" the Pirate Bay website which is banned in the UK.[ref]Torrent Site Uses Google to Resurrect Taken Down Content[/ref])The key to DMCA safe harbor is that you do not have notice that the material is infringing. So this website absolutely does not qualify for DMCA safe harbor from the word "go." Now, being located in the UK, the DMCA does not apply to them. But the UK law is fashioned after the EU e-commerce directive.[ref]Is there a UK equivalent of filing a DMCA cease and desist for websites hosting copied content?[/ref] It provides that "a ‘hoster' cannot rely on the directive's [safe harbor] protection if they have actual knowledge, even if they have not been served with a notice of any kind."[ref]Id.[/ref] So the owners and operators of this website are subject to a lawsuit in the UK, starting right now. And if minimum contacts with the United States exist, they can be sued here immediately as well. So perhaps these internet pirates are too clever by half. But once again, Google's assertions about their vigilant fight against piracy are not credible, search engines remain an important cog in the piracy machine, and the need for "takedown" to become "take down and stay down" becomes even more pressing and necessary.

Almost a year in the making and weighing in at a massive 129 pages, the 11^th Circuit Court of Appeals finally released its opinion in the closely watched case of Cambridge University Press v. Patton on October 17^th.[ref]Cambridge University Press v. Patton[/ref] This case, popularly referred to as the "Georgia State" case, was a copyright infringement test case brought by three academic textbook publishers against Georgia State University for their practice of digitizing excerpts from textbooks and placing them on university servers where they could be viewed by students. I say "test case" for two reasons. First, Georgia State, being an arm of the State Government of Georgia, has sovereign immunity from damages being assessed against it under the U.S. Constitution and 11^thCircuit precedent,[ref]National Association of Boards of Pharmacy v. Board of Regents of the University of Georgia, 633 F.3d 1297 11^th Circuit Court of Appeals 2011[/ref] and second, the behind-the-scenes Plaintiff, who was paying 50% of the attorneys fees, was the Copyright Clearance Center, a licensing agency for publishers.[ref]Cambridge University Press v. Becker 863 F.Supp 2d 1190 District Court for the Northern District of Georgia at 1213[/ref] The copying by Georgia State was rather small, on average around 9.6% of the total book pages and the majority were a single chapter from a book that averaged 18 chapters.[ref]Id. at 1204[/ref] Yet the publishers sued for 126 counts of copyright infringement. In deciding the case, the Trial Court followed a consistent line of reasoning. Factor one of Section 107, the "purpose and character of the use," always favored Georgia State as it was engaging in not for profit educational uses. Factor two, the "nature of the work used," also favored Georgia State as the excerpted works were primarily works of facts, science and research, and therefore were not entitled to as strong protection as works that were strictly commercial. With two out of the four factors already favoring Georgie State, you got the feeling that the publishers were playing catch up. For factor three, ‘the amount and substantiality of the taking" test, the Trial Court announced a bright line rule in an area of Copyright Law that is not supposed to rely on bright line rules. If the book had more than 10 chapters, then up to one chapter was permissible. If the book had less than ten chapters, then up to 10% of the total pagination was permissible. The majority of the counts brought against Georgia State failed under this test as well, making it three to zero against the publishers, though in one case the Judge did side with the publishers because the excerpt took the "heart of the book."[ref]Id at 1359[/ref] As to the fourth factor, the "effect on the market," the Trial Court's analysis began with the question of, did the excerpts harm the market for the books. In almost all of the cases, the answer was no because the excerpts were so small that no professor would require the purchase of the entire book only to have the students read a small portion.[ref]Id. at 1243[/ref] The trickier question was whether the excerpts harmed the market for paid digital excerpts from the Copyright Clearance Center. There, the Trial Court split the difference. If an excerpt was "available from CCC or the publisher…at a reasonable price and in a convenient format…and permissions are not paid, factor four weighs heavily in Plaintiffs' favor."[ref]Id.[/ref] But if a digital excerpt was not available, factor four tilted towards Georgia State.[ref]Id.[/ref] The Trial Court examined each count individually, using the analysis summarized above. This took the Trial Court 177 pages to fully explain her reasoning on each count, so certainly one cannot fault her for lack of thorough consideration. Out of the 126 counts initially brought, only 74 went to trial.[ref]Cambridge University Press v. Patton, 2014 WL 5303007 at 1, 11^th Circuit Court of Appeals 2014. Citation will be made to the WestLaw pagination as the Federal Reporter pagination is not available[/ref] Of those 74, the Court ruled that 26 counts failed to prove a prima facie case of infringement, 43 were fair use and the remaining 5 were infringing.[ref]Id.[/ref] Adding salt into the wounds of the publishers, the Judge declared Georgia State the prevailing party and assessed $2.5 million in attorneys fees and costs against the publishers.[ref]Id.[/ref] Needless to say, the publishers appealed. The parties presented oral arguments to the 11^th Circuit Court of Appeals on November 19, 2013.[ref]A discouraging day in court for GSU[/ref] The fact that it took 11 months to generate an opinion indicates to me that there was a lot of disagreement amongst the three judge panel, and perhaps there was more than a little "horse trading" on certain key points. Add to the fact that one Judge wrote a concurring opinion that read more like a stinging dissent from the majority position makes the decision even more curious. The Court of Appeals partially reversed the Trial Courts' decision, and sent the case back down to the Trial Judge to reconsider the case according to their instructions. What the Court of Appeals found the most fault with was the mechanical approach of the Trial Court. So, immediately, the "10% or one chapter" test goes out the window as does the "checkbox" approach that treats all four fairs use factors equally.[ref]Cambridge University Press v. Patton, 2014 WL 5303007 at 15-16[/ref] This is not surprising given that there is Supreme Court of the United States authority for this line of reasoning.[ref]Id. at 15[/ref] So, here are the major bullet points of the 11^th Circuit opinion:

• Fair use requires a case by case analysis.[ref]Id.[/ref]
• Rigid, arithmetic approaches are improper and not a valid method of analysis.[ref]Id.[/ref]
• Individual Fair Use factors may increase or decrease in importance depending upon the case.[ref]Id.[/ref]
• Fair Use factors vary in importance and cannot be given equal weight.[ref]Id. at 16[/ref]
• The fact that you are a not-for-profit educational institution is favorable for factor one, but does not automatically mean a "win" on that factor.[ref]Id. at 17[/ref]
• Digitizing analog works and placing them online was not a "transformative use" that would work in favor of Georgia State in factor one.[ref]Id.[/ref]
• Despite the use not being "transformative," the Court ruled that "use for teaching purposes by a non-profit education institution such as [Georgia State] favors a finding of fair use under the first factor…"[ref]Id. at 20[/ref]
• Factor two is of relatively little importance in analyzing Fair Use in this situation.[ref]Id. at 22[/ref]
• Factual works, such as textbooks, can have expressive qualities, so the Judge was wrong to rule that because the works contained mainly facts that factor two always fell in favor of Georgia State.[ref]Id.[/ref]
• The 10% or one chapter rule, even if it represents a general industry "best practice" for electronic course reserves, is not a law and is "not relevant to an individualized fair use analysis."[ref]Id. at 23[/ref] The 1976 Classroom Copying Guidelines pushed by the publishers, which would have limited copying to the lesser of one chapter or 1,000 words, fails as well.[ref]Id. at 24[/ref]
• The amount of allowable copying varies with the purpose and character of the use.[ref]Id. at 23[/ref]
• The use for a pedagogical purpose may expand the limits of permissible copying, but an entire work may not be copied unless the use is "highly transformative."[ref]Id. at 25[/ref]
• Factor four is the most important and "market substitution" is the primary concern for the Court.[ref]Id.[/ref]
• Georgia State's excerpting did not act as a substitute for the full books.[ref]Id.[/ref]
• The availability of electronic excerpts weighs against Fair Use, but does not preclude Fair Use.[ref]Id. at 26[/ref]
• The non-availability of electronic excerpts weighs in favor of Fair Use.[ref]Id.[/ref]
• The fourth factor should be analyzed in the context of the effect it has on the publishers' incentive to publish, not on an academic authors' incentive to write.[ref]Id. at 29[/ref]
• The fourth factor should carry the most weight in this case.[ref]Id.[/ref]

I cannot disagree with the emphasis being placed on factor four, the "market effect." If one reads between the lines of the three Supreme Court cases that have dealt with fair use, the Justices sided with the copyright holder where there was solid evidence on negative market effect and with the alleged infringer where there was no evidence of negative market effect. What I do find fault with is the instruction that the negative market effect be viewed through the eyes of the publisher, not the author. The Copyright enabling clause talks of granting exclusive rights to the "authors," not publishers. This is in order to promote the "progress of …the useful arts." In the academic world, authors may write for a number of reasons, some for profit, but others write to enhance their academic reputation and that of their institution of higher learning. They may not only not object to the small amount of copying being done here, but may be in favor of it. Next, I think the Court of Appeals' dismissal of the importance of the second factor "the nature of the work used" to be a serious error. The Copyright Act is very specific that "[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work."[ref]17 USC 102 (b)[/ref] So, a work consisting of facts or theories, whether scientific or historical, enjoys significantly less protection against copying than does a work that is purely commercial in nature. While the Court of Appeals gives lip service to "the proposition that applying fair use in a manner which promotes the dissemination of knowledge is consistent with the goals of copyright,"[ref]Cambridge University Press v. Patton, 2014 WL 5303007 at 29[/ref] it should not have demoted the factor in its' level of importance. It could have been worse, as I stated above, the "concurring" opinion of Judge Vinson reads more like a dissent, than a concurrence. He would have ruled against Georgia State on a blanket basis saying, "Checking the four statutory factors to ensure that they have been considered merely affirms the conclusion that what GSU is doing is not fair use."[ref]Id. at 31[/ref] While I understand why the Court of Appeals nixed the "10% or one chapter" rule, apparently lost on the Court was the utility it afforded an institution of higher learning. It was an easy, bright line rule that can be communicated simply and effectively to faculty members that bear the brunt of the fair use analysis. Now, they are being asked to inquire as to the "negative market effect" to a business they have limited understanding of and not a whole lot of resources with which to make a determination. There was a chance here to make fair use a whole lot easier to understand. There was a chance to set the acceptable parameters within which to make an intelligent decision, on an action that can have serious legal consequences, but have chosen not to do so. If Georgia State did not have sovereign immunity, and the Court found for the publishers on all 126 counts initially brought, at the maximum level of regular statutory damages, the amount awarded would have been $3.78 million dollars. Add to that the threat of paying prevailing party attorneys fees (Georgia State spent $2.5 million) and you have a very sobering decision to make. Namely, whether to license everything, even when the use might be fair use, or take the risk of a copyright infringement lawsuit of this type. Even the "license everything" does not solve the problem. Many faculty members have used the same materials for years, and may not remember from where or from whom it was obtained. What if the work is an "orphan work" for which the current copyright owner cannot be identified or located? The possibility also exists that the faculty member may decide that the analysis required by this Court's opinion is too burdensome and disregards it. So, in essence, the Court of Appeals' opinion does not change a whole lot, it just rewinds us back to before the publishers brought this suit in 2008. Unfortunately, the era to which it rewinds means that the answer to the question "is this fair use?" is always "maybe." I don't often agree with Larry Lessig, but I do when he states that "fair use in America simply means the right to hire a lawyer…[ref]Chapter Twelve: Harms[/ref] In sum, if your university has not previously created a position equivalent to mine, and your location is in Florida, Georgia or Alabama, you'd better do so now, especially if you are a private not-for-profit and absolutely if you are a for profit university. Because what we have here is the fair use equivalent to Justice Potter Stewarts's famous pronouncement about pornography… "I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description; and perhaps I could never succeed in intelligibly doing so. But I know it when I see it."[ref]Jacobellis v. Ohio, 378 U.S. 184, Supreme Court of the United States (1964).[/ref]

In a little more than four years from now, the twenty year extension given to existing copyrights by the Sonny Bono Copyright Term Extension Act will expire. Since copyright terms last through the end of the calendar year in which they first obtained copyright protection,[ref]17 USC 305[/ref] works will start going into the public domain as of January 1, 2019. As noted in a previous blog post, at the latest hearings before Congress on revisions to the Copyright Act, not one Representative and not one witness invited to testify put forth the proposition that copyright terms should be extended yet again.[ref]Copyrights Last Too Long! (Say the Pirates): They Don't; And Why It's Not Changing Anytime Soon[/ref] So, it seems that the outer limit of constitutional copyright protection has been reached and there are no pending proposals from within Congress or in the entertainment industries to further extend copyright terms. So Mickey Mouse, having first appeared in 1928 will scamper into the public domain on January 1, 2024, less than 10 years from now. But will he go quietly? I think everyone knows the answer to this. Certainly the entertainment conglomerate that is the Walt Disney Company will use very effort to assert continuing legal control over the world's most famous mouse. But precisely how? The answer lies in the realm of trademark law. Trademark law protects words, phrases and symbols used to identify the source of the products or services. Copyright protects works of artistic expression from being copied. So, on January 1, 2024, the very first Mickey Mouse cartoon Steamboat Willie will pass into the public domain, along with The Barn Dance.[ref]Mickey Mouse (film series)[/ref] The expiration of the copyrights in these films will mean that anyone can make copies of them. Many people also believe that this means that Mickey himself (Minnie and Pete as well) will also pass into the public domain, and anyone will be able to make new Mickey Mouse cartoons. This is by no means certain, as the application of trademark principles may prevent this. The use of trademark law to protect works also subject to copyright is nothing new. The first 21 stories about Tarzan, being first published commencing in 1916, are now all in the public domain.[ref]Tarzan[/ref] Yet, there are no rival stories about Tarzan being currently written by other authors. This is because heirs of Edgar Rice Burroughs, the creator of Tarzan, had the foresight to obtain a trademark on the name "Tarzan."[ref]The initial Tarzan registration is 0799908 was obtained in 1965 and is still a "live" trademark.[/ref] Armed with this registration, they have been successful in preventing the distribution of works using the "Tarzan" trademark and variations.[ref]See Edgar Rice Burroughs, inc. v. Manns Theaters, 195 USPQ 159 Central District of California 1976.[/ref] Yet, does this not fly in the face of the constitutional requirement that copyrights only exist for a limited time? Does not giving trademark status to a character in the public domain in effect grant a perpetual copyright? It would seem that it does. The catch is that not all formerly copyrighted characters will qualify for trademark protection. In the one case that I could find that solidly addressed the issue, the Court ruled that in order for trademark to protect a character in the public domain, the character must have obtained "secondary meaning."[ref]Frederick Warne & Co. v. Book Sales Inc., 481 F.Supp 1191 at 1197 District Court for the Southern District of New York 1979.[/ref] In other words, one who encounters the character must immediately associate it with the source. In denying summary judgment to the Defendants, this Court held that "[d]ual protection under copyright and trademark laws is particularly appropriate for graphic representations of characters. A character deemed an artistic creation deserving copyright protection…may also serve to identify the creator, thus meriting protection under theories of trademark and unfair competition."[ref]Id. at 1197[/ref] Given an open invitation like that, Disney executives would be foolish not to run with it. And so they have. Disney has made Mickey Mouse so prominent in all of their corporate dealings, that he is effectively the pre-eminent symbol of the Walt Disney Company. There can be little doubt that anyone seeing the image of Mickey Mouse (or even his silhouette), immediately thinks of Disney. Leaving nothing to chance, Disney has also obtained 19 different trademark registrations for the words "Mickey Mouse," including live action and animated television shows,[ref]TM Reg. 3750188[/ref] cartoon strips,[ref]TM Reg. 0315056[/ref] comic books,[ref]TM Reg. 1152389[/ref] theme parks,[ref]TM Reg. 3036883[/ref] and computer games.[ref]TM reg. 3006350[/ref] Disney also has trademark registrations for Mickey's visual appearance for animated and live action motion picture films.[ref]TM Reg. 3598848[/ref] This is where it gets very interesting. This is Mickey as he appears in Steamboat Willie: This is Mickey as he appears today:

Quite a difference. Now here is the trademark registration for the visual aspects of Mickey as used in "animated and live action motion pictures:" This really is more the Steamboat Willie Mickey, than the modern Mickey. Also note that the registration states that "[c]olor is not a claimed feature of the mark," reinforcing that this registration is for the black and white version of Mickey, not the modern Mickey with his signature red shorts and yellow shoes. Also note the date the registration was filed: April 11, 2004. This would have been the year that Steamboat Willie would have entered the public domain, but for the passage of the Sonny Bono Copyright Term Extension Act. Much has been made of the allegation that the SBCTEA was really the "Mickey Mouse Protection Act."[ref]The Disney Blog[/ref] As noted previously in this blog, the most immediate beneficiary of the SBCTEA was Winnie the Pooh. The first Pooh stories were published in 1926,[ref]1926 - A.A. Milne Publishes Winnie-the-Pooh[/ref] and thus were set to go into the public domain in 2002. So, the first trademark versus public domain character dust-up will involve Pooh, not Mickey, and will present a very interesting test case. Disney has indeed applied for and received trademark registrations for the "Winnie the Pooh" mark for a variety of products including "motion picture films."[ref]TM Reg. 3038490[/ref] The problem that arises with Pooh, but not Mickey, is that Pooh did not originate with Walt Disney, but instead British author A.A. Milne. The visual depiction of the Pooh characters originates with artist Ernest H. Sheppard.[ref]1926 - A.A. Milne Publishes Winnie-the-Pooh[/ref] So, there is a large period of time for which Pooh was not associated with Walt Disney. Remember, the Court's rationale for extending trademark protection to a copyrighted character lies in the assumption that "[a] character deemed an artistic creation deserving copyright protection…may also serve to identify the creator."[ref]Frederick Warne & Co. v. Book Sales Inc., at 1197[/ref] The Disney company may own all the rights to the Pooh characters, but they are not the "creator" of Pooh, any more than they are the "creator" of Snow White. So, the only elements that Disney owns as a matter of being the "creator" are the elements they have added. For example, the Pooh of the books wears no clothing, but in all Disney versions he wears a red, short-sleeved turtleneck shirt. No one would suggest that Disney could prevent a rival movie about Snow White, even though many people would associate Snow White with Disney. As recently as 2012, there was Snow White and the Huntsman made by Universal Studios.[ref]IMDb - Snow White and the Huntsman[/ref] So, it would seem that this result should apply to Pooh as well. Once the literary Winnie The Pooh enters the public domain, then anyone should be able to make copies of the book, the illustrations and produce new Winnie the Pooh material, including motion pictures based on the now public domain material. Disney may file suit to prevent any competing Pooh movies or television shows on the basis of their trademarks and that Pooh has achieved secondary meaning, in other words, that a competing Pooh movie will be assumed to come from Disney by the general public. I think that assumption is not pre-ordained success. The Supreme Court of the United States has already cautioned "against misuse or over extension of trademark law and related protections into areas traditionally occupied by…copyright."[ref]Dastar Corp. v. Twentieth Century Fox Film Corp. 123 S.Ct 2041Supreme Court of the U.S. 2003[/ref] Plus, it would seem that the producer of a new Pooh movie could survive the legal challenge by making it plain that the movie did not emanate from the Walt Disney Company. Mickey is a different story. Not only did he originate with Walt Disney, but he has been presented as a corporate symbol for so long that the achievement of secondary meaning in the minds of the public is a foregone conclusion. Mickey is Disney, and vice versa. As troubled as I am by the prospect of Disney using trademark principles to effectively get eternal copyright protection for Mickey, I cannot fault the logic of the legal theory. However, I can speculate this will not lead to wholesale protection of copyrighted characters who enter the public domain as trademarks. This is because few characters will ever become famous enough to create a sufficient level of secondary meaning. "The Terminator" is certainly famous as a character, but do you remember what company made the movies? I could not tell you without looking it up. The same would apply to the "Alien" of that series of movies. James Bond is certainly world famous as a character, but his movies have been produced at three different Hollywood studios. It would be hard to say that Bond has achieved secondary meaning for any of them. Of course, cartoon and comic book characters have an advantage in the secondary meaning analysis, because they have a stylized appearance that does not change significantly over time. Superman's iconic costume is instantly recognizable and I think most of the public would recognize DC Comics as the source. Marvel Studios has been especially successful in associating its characters with the Marvel brand. So in the end, the troubling aspect of effectively perpetual protection for a copyrighted character is balanced by the realization that Mickey Mouse is an outlier here. Few characters are so famous and so closely associated with their creators that this theory, if upheld by the Courts, would grant trademark protection to perhaps a handful of copyrighted properties.

The controversy over the leak of celebrity nude photos[ref]Unintended Consequences: How the DMCA Made the Distribution of Stolen Celebrity Photos All Too Easy[/ref] took a new turn last week. A lawyer claiming to represent "dozens of female celebrities, actresses, models and athletes" threatened to sue Google for its alleged failure to remove the photos in question from their search engines results, Google hosted blogs and YouTube, even though they had been the subject of numerous DMCA takedown notices.[ref]Celebrities Threaten Google With $100 Million Lawsuit for "Facilitating" Hacked Nude Photos You can also read the demand letter here: https://www.scribd.com/doc/241687788/Legal-Ntc-Ltr-to-Google-100114 [/ref] It had been previously noted by TorrentFreak, that 45% of the material referenced in a particular takedown notice remained up, with no action taken.[ref]Google Refuses to Remove Links to Kate Upton's "Fappening" Photos[/ref] "Google doesn't explain its decision keep the links in question in its search results. In some cases the original content had already been removed at the source site, so these URLs didn't have to be removed. Other rejections are more mysterious though. For example, the thefappening.eu URLs that remain online all pointed to stolen images when we checked. Most of these were not nudes, but they certainly weren't posted with permission."[ref]Id.[/ref] In response to the celebrity lawyers' threats, Google released a statement. According to the Hollywood Reporter, Google claims "[w]e've removed tens of thousands of pictures — within hours of the requests being made — and we have closed hundreds of accounts."[ref]Google Responds to Jennifer Lawrence Attorney's $100 Million Lawsuit Threat[/ref] This is what is known as a "non-denial denial." Google never answers the charge that some of the pictures continue be available after receiving takedown notices to remove them. Instead, they trumpet all the good work that they have done. Eriq Gardner, the reporter on the story speculates that "[a]s for search, Google says it has historically taken a different approach — removing items when they receive valid copyright notices. The key word there is "valid," as Google could be taking extra scrutiny when determining the validity of a copyright claim."[ref]Id.[/ref] David Newhoff at the Illusion of More website gave this analysis: "…Google is supposedly relying on an untested legal theory that the copyright holder of a selfie can only be the button pusher at the time of the taking. This seems hardly relevant with regard to the matter of just acting like decent human beings; if images are known to be stolen, and the subject(s) of those images request that your for-profit search business remove links to them, you ought to do it on principle alone. But this is not the mindset of the web industry despite its many self-aggrandizing proclamations as the engineers of social change for good."[ref]Maybe Google Means "See No Evil"[/ref] Point taken. Google could, if it had the will to, remove the offending URL's just in the name of protecting the privacy of the individuals involved, and being a good corporate citizen. Even the writers at TorrentFreak, who by no means are friends of copyright, could clearly see that the links pointed to material that were the subject of the takedown notice and "certainly weren't posted with permission." Yet Google has failed to remove them, without giving any reason why. The question then becomes, does Google really have the discretion under the law to determine whether a takedown notice presents a "valid" copyright claim? Google clearly thinks that it does. In Google's transparency report there is this rather bold statement: "Reasons we may decline to remove URLs include not having in enough information about why the URL is allegedly infringing; not finding the allegedly infringing content referenced in the request; deducing that the copyright removal process is being used improperly … or fair use."[ref]Google Transparency Report - Why do you remove some URLs but not others?[/ref] The problem with this is that nowhere in Section 512 does it grant the recipient of a takedown notice the discretion to engage in a fair use analysis. That statute only says that a company like Google "upon notification of claimed infringement as described in subsection (c)(3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity…"[ref]17 USC 512 (d)(3)[/ref] This is the essence of the "safe harbor" provision. The grant of immunity is predicated on a "no questions asked" system. If you don't know the material is infringing, the receipt of the notice should obligate you to take the material down, not pick apart the request in a fair use analysis, or acting as judge and jury on whether a request is improper.[ref]See generally my earlier blog post http://copyright.nova.edu/dmca-takedown-notices/[/ref] If the request is improper, or the use is a fair use, then the remedy is to have the aggrieved party file a counter-notice.[ref]17 USC 512 )g)(3)[/ref] But of course, Google being Google, cheats that process as well. Consider Google's YouTube. Google states that Google, and only Google, has the ability to determine whether a counter-notice filed against YouTube should be acted upon. It claims that it has the final say and you have no ability to complain if you feel Google has wrongfully denied your counter-notice.[ref]YouTube Terms of Service at paragraph 8 (B) emphasis added.[/ref] How did Google get the ability to ignore the law? Like all good tech companies, it's buried in your terms of service. Here is the operative language: "Unless the copyright owner files an action seeking a court order against the Content provider, member or user, the removed Content may be replaced, or access to it restored, in 10 to 14 business days or more after receipt of the counter-notice, at YouTube's sole discretion." As they say on TV, "but wait-there's more!" The reason for the rejection of your counter-notice is not limited to what Google thinks, but what the owner of the content thinks. As reported by Patrick McKay at Fair Use Tube, Google has granted veto power over counter-notices to certain content owners who provide Google with material for YouTube.[ref]YouTube Refuses to Honor DMCA Counter-Notices[/ref] This provision is truly buried and the only way I could find it was through a link in Mr. McKay's blog post. Again, here is the operative language: "Under these contracts, we may be required to remove specific videos from the site, block specific videos in certain territories, or prevent specific videos from being reinstated after a counter notification. In some instances, this may mean the Content ID appeals and/or counter notification processes will not be available."[ref]Videos removed or blocked due to YouTube's contractual obligations, emphasis added.[/ref] According to McKay's post, some of the beneficiaries of this policy are the record companies operated by Universal Music Group.[ref]YouTube Refuses to Honor DMCA Counter-Notices[/ref] So, by contract, UMG can get your video taken down, and have it stay down, even though it might be fair use. Remember you agreed to give "sole discretion" to Google as to whether to reinstate your video, and in turn Google has sold you out to UMG. This is the latest ploy in a rather disturbing trend, namely the efforts of big tech companies, to eliminate your rights under the copyright act through the use of language buried in the TOS. It started with Microsoft eliminating your rights under the first sale doctrine, by getting you to agree that what you thought was a sale, was in fact a non-transferable "license." Next up, as reported in a previous blog post, was the effort to use TOS to eliminate fair use.[ref]Is the Digital Revolution Going to Kill Fair Use?[/ref] Now, we have Google taking away your right to file an effective counter-notice under the DMCA. Again, as they say on TV, "but wait-there's more!" Google's much publicized "Content ID" system, which automatically flags and removes videos from YouTube, carries with it a rather cynical requirement. According to Harvard Business Professor Ben Edelman: "Google offered the [Content ID] filter only to rights-holders who signed license agreements to let Google use their content. A copyright holder who simply wanted to keep its content off of YouTube had no means to do so: the company could not use Google's filter because Google conditioned use of the filter on receipt of a license to the underlying content; and the company could not run its own filter because YouTube's Terms of Service disallow the automated access and bulk downloads necessary for efficient searches."[ref]DOJ pharmacy investigation undermines Google credibility[/ref] So, for those of you scoring at home, here is the box score:

• Google has the ability to flag and keep infringing material off YouTube but refuses to do so
• Google will subject your DMCA takedown notice to a validity and fair use analysis, even though it has no legal authorization to do so under the copyright statute
• Google will flag and keep infringing material off YouTube without the necessity of a DMCA takedown notice if you agree to let them use your content
• If you're a big enough player, Google will agree to let you to summarily reject valid counter-notices

So presumably, the reason why offending photos remain up in the face of a takedown notice, is that the heavy traffic generated by the photos means more money for Google, and it is looking for any excuse that it can to not remove the material. That they would put their safe harbor at risk, instead of taking down obviously stolen material, says an awful lot about the Google mindset. Google watchdog Scott Cleland has this rather lengthy list of Google's legal and ethical transgressions,[ref]Google Profiting from Hacked Celebrity Women Photos is "How Google Works"[/ref] the biggest of which was the 2011 non-prosecution agreement with the U.S. Department of Justice in which it paid a $500,000,000 fine to avoid criminal prosecution for assisting the illegal importation of prescription drugs from Canada. You read that right, a half a billion dollars was paid by Google to avoid criminal prosecution. You can read the non-prosecution agreement here.[ref]Non-Prosecution Agreement[/ref] If Google has the wherewithal to pay a fine of a half a billion dollars, this means that the mere $100 million in damages claimed in the demand letter for the hacked celebrity photos[ref]Celebrities Threaten Google With $100 Million Lawsuit for "Facilitating" Hacked Nude Photos[/ref] will not cause many sleepless nights at Google headquarters. What would cause some sleepless nights is for a Court to rule that Google's shenanigans in cheating both sides of the DMCA takedown process means that it has lost its safe harbor as an entire company, and is now liable for all the infringements occurring on all of their platforms and websites. This may seem like an extreme remedy, but may be the only way to rein Google in. It literally operates as if the law does not apply to it, especially where there is money to be made. Harvard Business Professor Ben Edelman: "[I]t's hard to reconcile Google's engineering strength -- capably indexing billions of pages and tabulating billions of links -- with the company's supposed inability to identify new advertisements mentioning or targeting a few dozen terms known to deceive consumers. From these facts, I could only suspect what the DOJ investigation now confirms: Unlawful ads persist at Google not just because advertisers seek to be listed, but also because Google intentionally lets them stay and even offers them special assistance."[ref]DOJ pharmacy investigation undermines Google credibility[/ref] News Corp. Chief Executive Robert Thompson's letter dated September 17, 2014 to European Commissioner for Competition Joaquín Almunia had this to say: "The shining vision of Google's founders has been replaced by a cynical management, which offers advertisers impressively precise data about users and content usage, but has been a platform for piracy and the spread of malicious networks, all while driving more traffic and online advertising dollars to Google. A company that boasts about its ability to track traffic chooses to ignore the unlawful and unsavoury (sic) content that surfaces after the simplest of searches. Google has been remarkably successful in its ability to monetize users, but has not shown the willingness, even though it clearly has the ability, to respect fundamental property rights."[ref]News Corp Opposed Google's European Commission Settlement Offer; Welcomed Competition Commission Reconsideration[/ref]

That strange thumping sound you heard last Monday was the sound of the top executives of Sirius XM Radio and Pandora falling over in a dead faint. On September 22, 2014, a federal Judge granted Flo and Eddie Inc.'s Motion for Summary Judgment, ruling that under California law, Sirius XM had to pay to digitally broadcast pre-1972 sound recordings.[ref]Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2014 WL 4725382 Central District of California 2014[/ref] Since this was filed as a class action, this meant that Sirius would owe damages not only to Flo and Eddie, Inc., but potentially all other owners of pre-1972 sound recordings. This class of recordings includes every recording ever made by The Beatles, The Doors, Jimi Hendrix, and Janis Joplin, not to mention Glen Miller and Tommy Dorsey. Sirius XM dedicates entire channels to these recordings. Sirius XM channels 4, 5, & 6 exclusively play recordings from the 40's, 50's and 60's respectively.[ref]Sirius XM Satellite Radio Channel Lineup[/ref] Throw in the fact that these channels operate 24 hours and day, seven days a week, and that Sirius has never paid any royalties to broadcast these songs, damages in the multiple millions of dollars is a forgone conclusion. "According to estimates, 10-15 percent of all songs Sirius transmits are pre-72s which would amount to about $2.72 to $4.08 million in royalty payments per year."[ref]Gill, Leigh F., Liberman, Heather R., Stein, Gregory S., Time to Face the Music: Current State and Federal Copyright Issues With Pre-1972 Sound Recordings, Landslide Volume 6, Number 6 July/August 2014 at page 3[/ref] Sirius XM's internet counterpart, Pandora, likewise pays nothing to owners of these recordings when it streams them.[ref]You See What Happens When You Find a Stranger in the Alps? Sirius Screws It Up For All Broadcasters.[/ref] The implications of this ruling are huge. To paraphrase David Byrne of the Talking Heads, "Well, how did we get here?" The answer, as usual, is fairly complicated. In the early days of recorded music, the only way to obtain a copy of a record was to buy a vinyl record from the record store. The pressing of a vinyl record required equipment far beyond the reach of the average consumer, so the record companies enjoyed almost total control over the distribution of their product. Then came the audio cassette. For the first time, a consumer could make a copy of a recording in their home at an inexpensive price. It wasn't long before someone figured out that selling bootlegged cassette copies could be a profitable business, and the first wave of record piracy began. The record companies found themselves without a viable legal remedy. No copyright protection existed for the recording, only for the songs contained on the recording. Some of the bootleggers went "legit," obtaining licenses for the songs from clearing houses such as the Harry Fox Agency, paying the few pennies per copy they required, and voilà: a "legitimate" product that did not violate the copyright laws. I remember seeing these in my local record store. Cassettes of albums by major artists, such as Cream and Credence Clearwater Revival appeared in the bins, yet all of them had the same cover art. The only thing that varied was the name of the artists and the songs on the cassette. In response, State laws sprung up, but proved unsatisfactory as, quite predictably, protection was not universal and the level and effectiveness of the protection varied widely. The ultimate remedy was to create a new class of copyright protected work: the sound recording. Effective February 15, 1972, Congress declared that recordings created after that date had the full might of the copyright act behind them. About this same time, the 60's rock band The Turtles were calling it quits. They had several hits, including, "It Ain't Me Babe," "Eleanor," "She'd Rather Be With Me" and "Happy Together," but their label was having serious financial problems,[ref]White Whale Records[/ref] and the band suspected they were not getting paid their royalties. Two of the members, Mark Volman and Howard Kaylan, later acquired the rights to the master tapes as a settlement with their former label for underpayment of royalties.[ref]Plaintiff Flo & Eddie, Inc's Reply to Sirius XM Radios Motion for Summary Judgment, Case number 13-CV-23182 US District Court for the Southern District of Florida at page 3. (NB: If the link does not work, try a cut and paste of the web address into your browser.) http://assets.law360news.com/0568000/568058//mnt/rails_cache/https-ecf-flsd-uscourts-gov-doc1-051113970062.pdf[/ref] They bought out the interests of the other members of The Turtles[ref]Id.[/ref] and formed Flo & Eddie, Inc. in California in 1971.[ref]Id.[/ref] The newly formed corporation, (named after the stage names they were using with Frank Zappa [ref]Flo & Eddie[/ref]) was then transferred the ownership of the master tapes.[ref]Plaintiff Flo & Eddie, Inc's Reply to Sirius XM Radios Motion for Summary Judgment, Case number 13-CV-23182 US District Court for the Southern District of Florida at page 3.[/ref] They may have been hippies, but this was a very shrewd business move. Meanwhile, back in the halls of Congress, the newly minted sound recordings lacked one major right, the right of public performance.[ref]17 USC 106 (4)[/ref] This was due to the lobbying might of the broadcasters, who insisted then, and continue to insist to this day, that their playing of music is equivalent of millions of dollars of free advertising to record companies,[ref]See, e.g. James N. Dertouzos, Ph.D. Radio Airplay and the Record Industry: An Economic Analysis preparedFor the National Association of Broadcasters June 2008: https://www.nab.org/documents/resources/061008_Dertouzos_Ptax.pdf [/ref]and thus should not be compensated. So for the next 24 years, this was the law of the land, until the invention of digital recording and the internet. In 1995, understanding that the performance of a sound recording by a digital transmission had the potential to create a digital copy of that same sound recording, Congress enacted the Digital Performing Rights Act (DPRA). It created, commencing July 1, 1996, three tiers: 1) digital broadcasts, which were exempted, 2) subscription but non-demand services, which were granted a blanket license and 3) subscription on demand services, which would require a fully negotiated license similar to a mechanical license.[ref]17 USC 114-115[/ref] Sirius XM and Pandora are level 2 services. Spotify and Rhapsody are level 3 services. In 2011, Sirius XM unilaterally stopped accounting for pre-72 in the accounting made to SoundExchange, the unified collection agency for digital transmission royalties.[ref]Gill, Liberman and Stein at page 3[/ref] SoundExchange responded by filing suit.[ref]Id.[/ref] For their part, Flo & Eddie, Inc. have filed three lawsuits against Sirius XM, in California, New York and oddly enough, Florida.[ref]Flo & Eddie, Inc, v. Sirius XM Radio, Inc. Case no.1:13-CV-23182 US District Court for the Southern District of Florida, Miami Division http://assets.law360news.com/0470000/470617/Turtles%20v%20Sirius.pdf [/ref] California is the home to Flo & Eddie, Inc., and New York is the corporate home of Sirius XM, which is a Delaware Corporation.[ref]Id. at page 4.[/ref] The only nexus Florida has to the litigants is that obviously Sirius XM broadcasts into the Florida market, and according to the complaint, has offices in Miami, Jupiter, Deerfield Beach and Boca Raton.[ref]Id.[/ref] Thus, Flo & Eddie have filed suit in three out of the four most populated states.[ref]List of U.S. states and territories by population[/ref] Why they have not filed suit in Texas is currently unknown. Florida has a law directly on point, 540.011.[ref]The 2014 Florida Statutes[/ref] It provides, in part, that "It is unlawful [k]nowingly and willfully and without the consent of the owner, to transfer or cause to be transferred, directly or indirectly, any sounds recorded on a phonograph record… with the intent to…use or cause to be used for profit through public performance, such article on which sounds are so transferred without consent of the owner." It seems that this law would directly apply, since Sirius XM has made an unauthorized copy of The Turtles for the purposes of profit by public performance. Yet Flo & Eddie have not invoked this statute, instead suing for common law copyright infringement, unfair competition, conversion and civil theft.[ref]Flo & Eddie, Inc, v. Sirius XM Radio, Inc. Case no.1:13-CV-23182 at page 9.[/ref] Perhaps this is because the statute itself states that "[t]his section shall neither enlarge nor diminish the right of parties in private litigation." The statute itself is mentioned but once in the court documents, and only for the proposition that Florida law recognizes the rights of pre-1972 sound recording owners.[ref]Plaintiff Flo & Eddie, Inc's Response to Sirius XM radio's Motion for Summary Judgment at 7 http://assets.law360news.com/0568000/568058//mnt/rails_cache/https-ecf-flsd-uscourts-gov-doc1-051113970062.pdf Again, If the link does not work, try a cut and paste of the web address into your browser[/ref] It is also worth noting that Flo & Eddie's claim for civil theft under Florida law carries with it the potential for an award of triple the amount of proven damages.[ref]The 2014 Florida Statutes[/ref] Sirius XM has filed for summary judgment in the Florida action.[ref]Defendant Sirius XM's Motion for Summary Judgment on Liability and Supporting Memorandum of Law[/ref] Flo & Eddie have filed a response,[ref]Plaintiff Flo & Eddie, Inc.'s Response to Sirius XM Radio's Motion for Summary Judgment[/ref] but have not yet moved for summary judgment on its own behalf. Sirius XM first advances the argument that since Congress has never granted pre-1972 sound recording performance rights, no right exists at all.[ref]Defendant Sirius XM's Motion for Summary Judgment on Liability and Supporting memorandum of Law at 5-7[/ref] This argument is rather curious because under the copyright act, pre-1972 recordings are explicitly removed from the purview of the statute. "With respect to sound recordings fixed before February 15, 1972, any rights or remedies under the common law or statutes of any State shall not be annulled or limited by this title until February 15, 2067."[ref]17 USC 301 (c)[/ref] So, not only did Congress recognize the continuing protection of State copyright protection for sound recordings, but it explicitly stated that nothing in the Act "annulled or limited" any State law, other than providing for a terminal date of 95 years from the first granting of sound recording rights, so that pre-1972 sound recordings would not enjoy perpetual protection under the law of any State. So how can the failure of Congress to act proceed to annul a State law providing for sound recording protection for public performances? This would not have been my first argument. Next up, without actually mentioning the words "public domain," Sirius advances the argument that all pre-1972 sound recordings are in the public domain, presumably because of publication without copyright notice.[ref]Defendant Sirius XM's Motion for Summary Judgment on Liability and Supporting memorandum of Law at 8-9[/ref] The failure to mention the words "public domain" is gleefully pounced upon by Flo & Eddie in their response, quoting verbatim deposition testimony from Sirius XM Executive Vice President and Chief Financial Officer, David J. Frear: [ref]Sirius XM Management Bios - David J. Frear[/ref] Q: Is it Sirius XM's position the pre-1972 sound recordings are in the public domain? A: Yes.[ref]Plaintiff Flo & Eddie, Inc's Response to Sirius XM radio's Motion for Summary Judgment at 2[/ref] Later there was this response: "To my knowledge we've never entered into discussions with The Turtles with respect to their songs. That-my understanding is that they're in the public domain and so we are simply using them under that theory."[ref]Id.[/ref] Under the then current edition of the copyright act in 1972, it was true that publishing your work without copyright notice would inject your work into the public domain. The problem with this argument is that sound recordings did not fall within the "subject matter" of copyright before 1972, when the right was first granted. Not being within the subject matter meant that Federal copyright law absolutely did not apply to pre-1972 sound recordings at all, so the rule against publishing without copyright notice does not apply. A Federal Judge from the Middle District of Florida agrees on this point.[ref]CBS, Inc. v. Garrod, 622 F.Supp 532 US District Court for the Middle District of Florida 1985[/ref] Again, a very curious argument. Sirius XM's final major argument is that State regulation of what is in effect a national broadcast operation would interfere with interstate commerce, and only Congress has the power to control interstate commerce. Any detailed discussion of the Commerce Clause of the U.S. Constitution would induce sleep and is much better suited to a law school classroom. In short, Sirius XM made this same argument in the California action, and the Judge was so unimpressed with the argument that he dismissed it in a footnote, citing controlling U.S. Supreme Court case law.[ref]Flo & Eddie, Inc. v. Sirius XM Radio, Inc., 2014 WL 4725382 at page 10[/ref] The difference between the California and the Florida action is that California had an actual statute in place, where the Florida action is based upon the "common law." The "common law" is a series of legal principles established through case decisions rendered over time and are not generated by the State Legislature. The case of CBS v. Garrod held that Florida does recognize common law copyright.[ref]622 F.Supp 532 US District Court for the Middle District of Florida 1985[/ref] The problem is that the case does not deal with the issue of whether common law copyright extended to performances of sound recordings, since the case dealt with the piracy of physical copies. Flo & Eddie, as Plaintiffs, bear the burden of proof to show that Florida common law copyright extends to such performances. There is no such proof, but only because it does not appear that any Florida Court has ever considered the question. What we may see is that the issue is referred to the Florida Supreme Court for resolution. So what happens next? Surely Sirius XM is not simply going to stop broadcasting channels 4, 5, & 6 into California, even if that were technologically possible. Alternatively, is a broadcaster that can play absolutely NO Beatles songs a very attractive option? Further, what might the damages be, and what might the royalty be going forward? Sirius XM certainly knows how many subscribers it has in California, but since this is California law, not Federal law, Flo & Eddie (and the members of the class, if and when it is established) are not bound by the royalty rate set by the CRB in establishing the blanket license rates. They could demand any sum of money going forward. How much is it worth to Sirius XM to be able to play The Beatles, The Doors and Jimi Hendrix? The implications get bigger when you consider YouTube. Here are The Turtles performing "Happy Together" on YouTube.[ref]The Turtles - Happy Together - 1967[/ref] The lead vocals are live, but everything else is mimed to the original sound recording. If YouTube is not currently paying Flo & Eddie for this performance, then they're going to have to start. The bigger question is, does the DMCA "safe harbor" provisions apply to pre-1972 sound recordings? The New York state appeals court has ruled that it does not.[ref]UMG Recordings, Inc. v. Escape media Group, Inc. 964 N.Y.S. 106 New York Appellate Division 2013: http://www.documentcloud.org/documents/691437-umg-recordings-inc-v-escape-media-group-inc.html [/ref] A New York Federal Court says that it does.[ref]Capitol Records, Inc. v. MP3tunes, LLC, 821 F.Supp 2d 627 District Court for the Southern District of New York 2011[/ref] That ruling is currently under a special appeal to the Second Circuit to resolve the question.[ref]Gill, Leigh F., Liberman, Heather R., Stein, Gregory S., Time to Face the Music: Current State and Federal Copyright Issues With Pre-1972 Sound Recordings, Landslide Volume 6, Number 6 July/August 2014 at page 3[/ref] If the answer to the question is "no" then YouTube has committed copyright infringement every time the video containing a pre-1972 sound recording has been streamed. Currently before Congress is the RESPECT Act, which would provide for performance royalties for pre-1972 sound recordings.[ref]Id. at 4[/ref] However, this legislation would not "federalize" pre-1972 sound recordings, it merely amends sections 114-115.[ref]Id.[/ref] So, when the executives of Pandora say they would support the RESPECT Act if it provided for "full federalization,"[ref]#irespectmusic and Fasten Your Seatbelts: Where Do We Go From Here on Pre-72?[/ref] what they really mean is they want DMCA safe harbor, fair use defenses, etc. Then there's the biggest question of all: what about terrestrial analog broadcasters? For all these years, have the analog broadcasters been getting away with not paying something they should have been paying for? It seems that the decision in favor of Flo & Eddie points to "yes."[ref]It is worth noting there one decision holding that broadcasters do not have to pay performance fees for records they have purchased, RCA Manufacturing Co. v. Whiteman 114 F.2d 86 Second Circuit Court of Appeals 1940, but this decision is not binding on the Courts in California.[/ref] Not bad for a couple of hippies.