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Serving a Perfect 10: No Protection for Embedding

By Jodi Benassi on Jul 27, 2023
Posted In Copyrights

The US Court of Appeals for the Ninth Circuit found that a photo- and video-sharing social networking service could not be liable for secondary copyright infringement because embedding a photo does not “display a copy” of the underlying image. Hunley v. Instagram, LLC, Case No. 22-15293 (9th Cir. July 17, 2023) (Bybee, Bumatay, Bennett, JJ.)

Embedding is a method of displaying images on a website by directing a browser to retrieve an image from the host server. Instead of hosting an image file on a home server, a website merely pulls the image, along with any other content, from an external server and displays it.

Alexis Hunley and Matthew Brauer are photographers who brought a class action lawsuit against Instagram on behalf of copyright owners whose work was “caused to be displayed via Instagram’s embedding tool on a third party website without the copyright owner’s consent.” Hunley alleged that Buzzfeed News and Time embedded Hunley’s Instagram posts (copyrighted photos and videos) within news articles. Hunley also alleged that Instagram’s embedding tool violated her exclusive display right under the Copyright Act by enabling third-party websites to display copyrighted photos posted to Instagram.

Hunley’s argument was unsuccessful, and the district court granted Instagram’s motion to dismiss. The district court determined that the Ninth Circuit’s 2007 holding in Perfect 10 precluded relief to Hunley. The court explained that under the “server test” set forth in Perfect 10, embedding websites that do not store an image or video does not “communicate a copy” of the image or video and therefore does not violate the copyright owner’s exclusive display right. The court explained that because Buzzfeed News and Time do not store images and videos, they do not “fix” the copyrighted work in any “tangible medium of express” (a copy), and therefore when they embed the images and videos on a website, they are not displaying “copies” of the copyrighted work. Hunley appealed.

Hunley argued that Perfect 10 was inconsistent with the Copyright Act, but the Ninth Circuit declined to consider the argument in detail as the proper procedure was to seek a rehearing en banc. While the Court was sympathetic to policy arguments advanced by Hunley (as well as other amici), the Court stated it was not its place to create a policy solution. Hunley’s final major argument questioned the validity of Perfect 10 in light of the Supreme Court’s 2014 decision in American Broadcasting Co. v. Aereo, but this too was rejected. The Ninth Circuit failed to see sufficient similarities between the performance and display rights, holding them as two distinct rights with few parallels.

Applying the server test to the facts presented, the Ninth Circuit found that Instagram could not be found secondarily liable for displaying images on third-party sites. Since Buzzfeed News and Time embedded the images and no copy was stored, they could not be liable for direct infringement. Because there was no direct infringement, there could be no secondary infringement, and the Court found that the district court properly [...]

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A Single Picture Database Is Worth a Thousand Statutory Damages Awards

By Tessa Kroll on Jun 22, 2023
Posted In Copyrights

In the latest appeal of a copyright infringement dispute, the US Court of Appeals for the Ninth Circuit upheld the lower court’s finding that the copyright owner’s photographs were not part of a single compilation for purposes of awarding statutory damages. VHT, Inc. v. Zillow Grp., Inc., Case Nos. 22-35147; -35200 (9th Cir. June 7, 2023) (McKeown, Fletcher, Gould, JJ.)

VHT is a professional real estate photography studio that real estate brokerages and listing services hire to photograph properties. VHT retouches the photographs, saves them in its photo database and licenses them to its clients for marketing purposes. In 2015, VHT sued Zillow for copyright infringement based on Zillow’s display of VHT photographs on its real estate listing website and on its Digs home design website. The district court found that Zillow was not liable for displaying VHT photographs on its real estate listing website or for displaying untagged, unsearchable VHT photographs on its Digs home design website. However, the district court found that Zillow’s display of tagged, searchable VHT photographs on Digs constituted infringement and that the searchability functionality was not fair use.

The parties cross-appealed, and the Ninth Circuit considered the issue of infringement in a 2019 decision (Zillow I). In this prior appeal, the Ninth Circuit agreed that Zillow’s display of VHT photographs on its real estate listing website was not copyright infringement, while Zillow’s display of searchable VHT photographs on its Digs home design website constituted infringement and was not fair use. The Ninth Circuit also reversed the jury’s finding that Zillow had willfully infringed 2,700 searchable VHT photographs displayed on Digs and remanded for consideration of whether the searchable photographs were a compilation for purposes of awarding statutory damages. On remand, the district court found that the photographs were not a compilation and awarded statutory damages of $200 for each innocently infringed photograph and $800 for each remaining photograph.

The district court also considered the impact of the Copyright Act’s preregistration requirement and Fourth Estate v. Wall-Street (Supreme Court, 2019) on VHT’s ability to sue. In accordance with Ninth Circuit precedent holding that registration is made when the Copyright Office receives a completed registration application, VHT had sued Zillow for copyright infringement after applying for copyright registration. However, the works were not registered until after the suit was filed. Just 11 days before Zillow I was decided, in Fourth Estate, the Supreme Court held that registration is made when the Copyright Office has registered a copyright after examination—not when the application is filed. Zillow argued that VHT’s claims should be dismissed because VHT did not satisfy the preregistration requirement. The district court excused the exhaustion requirement because dismissal would result in a massive waste of resources. The parties again cross-appealed.

Preregistration and Fourth Estate

Addressing the preregistration issue, the Ninth Circuit agreed that dismissal was not required. The decision to excuse compliance with a non-jurisdictional exhaustion requirement is based on whether the claim is wholly collateral to the substantive [...]

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A Work of Art? Ninth Circuit Analyzes Foreign Judgments and Fair Use

By Sarah Bro on Jul 21, 2022
Posted In Copyrights

The US Court of Appeals for the Ninth Circuit analyzed the fair use doctrine of US copyright law in a dispute for recognition of a 2001 French judgment relating to a finding of copyright infringement of certain photographic works featuring the art of Pablo Picasso. The Court’s analysis ultimately resulted in a reversal of the district court’s ruling for the defendants against whom the French judgment was sought. Vincent Sicre de Fontbrune et al; v. Alan Wofsy et al, Case Nos. 19-16913; -17024 (9th Cir. July 13, 2022) (Hurwitz, VanDyke, JJ.; Ericksen, Distr. J.) The Court remanded for further proceedings for an examination of the enforceability of the judgment under California’s Uniform Foreign-Country Money Judgment Recognition Act (California Recognition Act).

In 1979, Yves Sicre de Fontbrune acquired the business capital and intellectual property rights to Cashiers d’Art, a complete published catalog of the works of Pablo Picasso. The catalog was created in 1932 by photographer Christian Zervos and featured almost 16,000 photographs of Picasso’s works. In 1991, Alan Wofsy Fine Arts obtained permission from the estate of Pablo Picasso to publish The Picasso Project, a work illustrating and describing Picasso’s works. The Picasso Project contained reproductions of certain photos from Cashiers d’Art.

Sicre de Fontbrune sued Wofsy in France for copyright infringement after The Picasso Project was offered for sale at a book fair in Paris and French police seized two volumes of the work. A trial court in France first found the photographs to be documentary in nature and ineligible for copyright protection. In 2001, however, the French Court of Appeal determined that the photographs at issue were not mere copies of Picasso’s works but added creative elements through deliberate choices of lighting, lens filters and framing. The Court of Appeal reversed the trial court, found Wofsy “guilty of infringement of copyright” and entered judgment in favor of Sicre de Fontbrune.

A long and complex procedural process followed the Court of Appeal’s ruling, during which appeals and new lawsuits were filed. Wofsy failed to appear on several occasions while also filing a review proceeding in the French courts. Before Wofsy filed the French review proceeding, however, Sicre de Fontbrune brought an action in the Superior Court of California in Alameda County, seeking recognition of the original French judgment. Wofsy removed that action to district court, which dismissed the case with prejudice pursuant to Federal Rule of Civil Procedure 12(b)(6). The Ninth Circuit reversed, finding the French judgment to be not a penalty but a sum of money cognizable under the California Recognition Act.

On remand, the parties submitted cross motions for summary judgment on eight defenses under the California Recognition Act. The district court granted summary judgment for Wofsy on only one of the defenses, finding that the French judgment was “repugnant to public policy.”

On appeal of the international diversity case, the Ninth Circuit explained that the enforceability of foreign judgments is governed by the law of the state in which enforcement is sought, making the California Recognition [...]

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Re-Poster Child for § 230: Immunity under the CDA for Reposting Content of Another

By Sarah J. Fischer on Mar 31, 2022
Posted In Copyrights

The US Court of Appeals for the First Circuit affirmed a district court’s decision to dismiss claims for defamation under the Communications Decency Act (CDA), 47 USC § 230, and for copyright infringement under the fair use doctrine. Monsarrat v. Newman, Case No. 21-1146 (Kayatta, Lipez, Gelpí, JJ.).

The parties’ dispute arose from a series of posts on a community message board. Residents of the Davis Square neighborhood in Massachusetts maintained a Live Journal forum for several years. In response to a revision of the Live Journal terms of service in 2017, Ron Newman, a member of the community, copied the entirety of the content from the Live Journal forum to another online platform: Dreamwidth. The copied content included a series of allegedly defamatory posts about Jonathan Monsarrat and a post that Monsarrat had copyrighted. Monsarrat sued Newman for both defamation and copyright infringement. Newman moved to dismiss the defamation claim under the CDA, § 230, and the copyright claim under the fair use doctrine. After the district court granted the motions, Monsarrat appealed.

The First Circuit first addressed the defamation claim under § 230. Newman argued that § 230 provided him immunity from defamation. Specifically, § 230 states “[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.” It also provides a shield from state law claims that would be “inconsistent with this section.” Courts apply a three-part analysis to determine whether a defendant is entitled to immunity under § 230:

Is the defendant a “provider or user of an interactive computer service”?
Is the claim based on “information provided by another information content provider”?
Does the claim treat the defendant “as the publisher or speaker” of that information?

Monsarrat did not challenge the fact that Newman was a “user” under the first prong. Regarding the second prong, the analysis hinged on whether Newman was an “information content provider,” which in turn relied on whether Newman was responsible for the allegedly defamatory content in whole or in part. The factual record showed that Newman did nothing but copy the allegedly defamatory posts that had been created by another. Monsarrat unsuccessfully argued that Newman was responsible because Newman copied the posts from Live Journal to a different digital platform with an allegedly different audience. The First Circuit was not persuaded, ruling that providing essentially the same content on a different platform did not make a defendant responsible for that content under § 230. Regarding the third prong, Monsarrat’s complaint clearly alleged that Newman was acting as a publisher. The Court affirmed the dismissal of the defamation claim under § 230.

Monsarrat’s copyright claim related to a Live Journal post by Monsarrat in the Davis Square forum. He had created a post with a link to Live Journal’s harassment policy, a quotation from the policy and a brief message regarding his attempts to report the abuse he felt he had suffered by other [...]

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Supreme Court to Consider Fair Use and Transformative Works of Art

By Amol Parikh on Mar 31, 2022
Posted In Cert Alert, Copyrights

The Supreme Court of the United States agreed to consider the application of the fair use doctrine as it relates to transformative works. The Andy Warhol Foundation v. Goldsmith, Case No. 21-869 (Supr. Ct. Mar. 28, 2022) (certiorari granted).

In a case touching the estates of two of the world’s best-known artists, the US Court of Appeals for the Second Circuit held that a series of prints and illustrations of the musical artist Prince created by the visual artist Andy Warhol were substantially similar to a 1981 portrait photograph of Prince taken by the photographer Lynn Goldsmith. The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, et al., Case No. 19-2420-cv (2d Cir. Mar. 26, 2021) (Lynch, J.) (Sullivan, J., joined by Jacobs, J., concurring) (Jacobs, J., concurring). The Andy Warhol Foundation petitioned the Supreme Court for review of the decision.

The question presented is as follows:

Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the Second Circuit has held).

Second Circuit: Supreme Court Google Precedent Doesn’t Alter Copyright Law’s Fair Use Analysis

By Sarah Bro on Sep 2, 2021
Posted In Copyrights

Addressing fair use as an affirmative defense to copyright infringement, the US Court of Appeals for the Second Circuit amended its recent opinion, reversing a district court’s summary judgment in favor of fair use. The Court did not change its original judgment but took the opportunity to address the recent Supreme Court of the United States precedent in Google v. Oracle. The Andy Warhol Foundation for the Visual Arts, Inc. v. Lynn Goldsmith, Lynn Goldsmith, Ltd., Docket No. 19-2420-cv (2d Cir., Aug. 24, 2021) (Lynch, J.) (Jacobs, J., concurring).

Lynn Goldsmith and Lynn Goldsmith, Ltd. (collectively, LGL) appealed from a district court judgment that granted summary judgment to The Andy Warhol Foundation for the Visual Arts, Inc. (AWF) on its complaint for a declaratory judgment of fair use and dismissing defendants-appellants’ counterclaim for copyright infringement. The Second Circuit reversed and remanded for further proceedings.

In 1984, LGL’s agency licensed her 1981 photograph of Prince to Vanity Fair for use as an artist reference for creating a rendering of Prince to accompany Vanity Fair‘s profile of the artist. What LGL did not learn until more than 30 years later, shortly after Prince’s untimely death, was that the artist commissioned by Vanity Fair to create the Prince drawing was Andy Warhol and that Warhol had used the photograph to create an additional 15 silkscreen prints and illustrations, known as the Prince Series. In 2017, LGL notified AWF, as the successor to Warhol’s copyright in the Prince Series, of her claims of copyright infringement. AWF responded with a lawsuit seeking a declaratory judgment that the Prince Series works were non-infringing, or, in the alternative, qualified as fair use of LGL’s photograph. LGL countersued for infringement. Relying on the Second Circuit’s 2013 holding in the copyright case Cariou v. Prince, the district court granted summary judgment to AWF, agreeing with its assertion of fair use and considering the Warhol work to be “transformative” of the original.

LGL’s appeal required the Second Circuit to consider the four fair use factors under §107 of the Copyright Act:

The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
The nature of the copyrighted work
The amount and substantiality of the portion used in relation to the copyrighted work as a whole
The effect of the use upon the potential market for, or value of, the copyrighted work.

In its March 2021 opinion, the Second Circuit rejected AWF’s fair use defense, concluding that the Prince Series was not transformative and substantially similar to LGL’s original photograph.

After the Second Circuit’s initial disposition of the appeal, the Supreme Court issued its decision in Google LLC v. Oracle America, Inc., which discussed the four fair use factors as applied to a computer programming language and found that Google’s copying of certain Oracle application programming interfaces (APIs) “to create new products . . . [and] expand the use [...]

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Not With a Bang but a Whimper

By Paul Devinsky on May 27, 2021
Posted In Copyrights

In a non-precedential Order issued by the US Court of Appeals for the Federal Circuit—on remand from the US Supreme Court’s April 2021 decision upholding Google’s fair use defense to Oracle’s copyright infringement claim—the Court recalled its mandate in the case “solely with respect to fair use,” leaving intact the Federal Circuit’s May 2014 judgment favoring Oracle on the question of copyrightability. Oracle America Inc. v. Google LLC, Case Nos. 17-1118; 1202 (Fed. Cir. May 14, 2021)(PER CURIAM). After recalling its mandate, the Federal Circuit issued its order without further briefing by the parties.

This Mashup Is Not a Place You’ll Go – Seuss Copyright Will ‘Live Long and Prosper’

By Sarah Bro on Jan 7, 2021
Posted In Copyrights, Trademarks

Presented with a publishing company defendant’s mashup of Dr. Seuss’ copyrighted works with Star Trek in a work titled Oh, the Places You’ll Boldly Go!, the US Court of Appeals for the Ninth Circuit tackled claims of both copyright and trademark infringement, including the defense of fair use and the use of trademarks in expressive works. The Ninth Circuit reversed the district court’s summary judgment in favor of defendants on the copyright infringement claim and affirmed the district court’s dismissal and grant of summary judgment in favor of defendants on the trademark claim. Dr. Seuss Enterprises, L.P. v. ComicMix LLC, et al., Case No. 19-55348 (9th Cir. Dec. 18, 2020) (McKeown, J.)

Seuss Enterprises owns the intellectual property in the works of late author Theodor S. Geisel, better known as Dr. Seuss. Seuss Enterprises carefully yet prolifically licenses the Dr. Seuss works and brand across a variety of entertainment, media, art and consumer goods, including derivative works of Dr. Seuss’ final book, and graduation favorite, Oh, the Places You’ll Go! When Seuss Enterprises encountered a Kickstarter campaign to raise funds for the Oh, the Places You’ll Boldly Go! mashup work created by ComicMix (a company whose employees include an author of Star Trek episodes), it filed suit for copyright and trademark infringement. The district court granted ComicMix’s motion for summary judgment, holding that the Boldly work was a fair use of Dr. Seuss’s Oh, the Places You’ll Go! and that Seuss Enterprises did not have a cognizable trademark infringement claim under the Lanham Act. Seuss Enterprises appealed.

On appeal, ComicMix asserted its defense of fair use by arguing that its copying of the Dr. Seuss works (described at one point in the record as painstaking attempts to create “identical” illustrations) resulted in a parody of the works. The Ninth Circuit examined the facts under the four non-exclusive factors of fair use reflected in § 107 of the Copyright Act:

The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
The nature of the copyrighted work
The amount and substantiality of the portion used in relation to the copyrighted work as a whole
The effect of the use upon the potential market for, or value of, the copyrighted work.

Remarking that the outcome of the purpose and character of the use factor influences the assessment of the third and fourth factors, the Ninth Circuit concluded that the Boldly work was not transformative as a parody or otherwise, and that the “indisputably commercial” nature of the work weighed against fair use. The Court explained that a parody exists only if the resulting work critiques or comments on the underlying copyrighted work. The Ninth Circuit cited its decision in another Seuss case (Dr. Seuss Enters. v. Penguin Books), which involved the retelling of the O.J. Simpson murder trial through the lens of The Cat in the Hat. Here, the Court similarly found that Boldly only “evokes” Oh, the Places [...]

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Jersey Boys Don’t Cry: No Copyright Protection for Facts “Based on a True Story”

By Jodi Benassi on Sep 16, 2020
Posted In Copyrights

The US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of judgment as a matter of law finding that the musical Jersey Boys did not infringe a copyright held in an autobiography of band member Tommy DeVito. Donna Corbello v. Frankie Valli, et al., Case No. 17-16337 (9th Cir. Sept. 8, 2020) (Berzon, J.).

In the 1990s, Rex Woodard ghostwrote an autobiography of Tommy DeVito, one of the original members of the 1950s quartet the Four Seasons. Woodard and DeVito agreed to split the profits equally. However, shortly after finishing the book, and before finding a publisher, Woodard died. Donna Corbello, Woodard’s widow, became the successor-in-interest to the book, and she continued the search for a publisher. Almost 15 years later, Corbello still had not published the book.

DeVito’s autobiography reads as a straightforward historical account of the Four Seasons. At the beginning of the book, DeVito, as the narrator, describes his autobiography as a “complete and truthful chronicle of the Four Seasons,” and he promises not to let “bitterness taint the true story.” Corbello also sent letters to potential publishers emphasizing that the book provided a “behind-the-scenes” look at the Four Seasons. In all accounts, the book is a non-fiction, historical chronicle of events of the Four Seasons.

In 2005, the musical Jersey Boys debuted on Broadway. Jersey Boys also depicts the history of the Four Seasons from its origins in New Jersey to its induction into the Rock and Roll Hall of Fame in 1990. DeVito admitted to working with people involved in developing Jersey Boys and sharing the book with the individuals researching the history of the band.

In 2007, Corbello sued DeVito and 14 defendants, including the band members and the writers, directors and producers of Jersey Boys. The complaint included 20 causes of action, including various forms of copyright infringement. The district court granted summary judgment in favor of the defendants on most of the claims. Corbello appealed. The Ninth Circuit reversed the district court’s grant of summary judgment in favor of defendants, vacated its assessment of costs against Corbello, and remanded for further proceedings.

On remand, the case proceeded to a jury trial where the jury found that the musical infringed the book and that use of the book was not fair use. After the verdict, the district court granted the defendant’s motion for judgment as a matter of law, concluding that any infringement was fair use. Corbello appealed.

On appeal, the central disagreements were whether the musical was substantially similar to the book and whether the defendants copied any protectable portions of the book. The Ninth Circuit analyzed the similarities under the extrinsic test for substantial similarity. The appellate court found that each of the similarities failed because they involved only non-protectable elements of the book. Those non-protectable elements included DeVito depicting himself in the musical (a character based on a historical figure is not protected); Bob Gaudio arriving late to rehearsal, excited about a new song he just [...]

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Diamonds to Dust? Too Many Factual Disputes Precludes Summary Judgment

By Sarah Bro on Aug 26, 2020
Posted In Trademarks

The US Court of Appeals for the Second Circuit vacated a district court’s summary judgment grant in favor of a fine jewelry producer for trademark infringement, counterfeiting and unfair competition because factual disputes exist around whether the accused infringer’s use of the word “Tiffany” was merely descriptive of a particular ring setting, thereby supporting a fair use defense to infringement. Tiffany and Company v. Costco Wholesale Corporation, Case Nos. 17-2798-cv, -19-338, -19-404 (2nd Cir. Aug. 17, 2020) (Livingston, J.).

In 2012, a Costco customer alerted Tiffany that she believed Costco was selling diamond engagement rings advertised as Tiffany rings. When Tiffany approached Costco about the issue in December 2012, Costco asserted that its point-of-sale displays bearing the Tiffany name referred to the diamond setting styles of its rings, and that other similar point-of-sale displays also identified common ring settings such as “bezel” or “cathedral” settings. Costco also claims that within one week after Tiffany’s December 2012 outreach, it voluntarily removed all uses of “Tiffany” from its jewelry displays and has not since used the word “Tiffany” to identify any rings or setting styles.

Nevertheless, in 2013, Tiffany filed suit against Costco for trademark infringement and counterfeiting under the Lanham Act, and unfair competition in violation of New York state law, based on Costco’s sales of otherwise unbranded diamond engagement rings identified by point-of-sale signs containing the word “Tiffany.” In response, Costco raised the affirmative defense of fair use, arguing that its use of “Tiffany” on certain signage for rings was not as a source-identifying trademark, but merely to describe a particular six-prong diamond setting style. Costco also filed a counterclaim seeking to cancel certain federal trademark registrations for the TIFFANY mark as “generic” for a specific jewelry setting, and not entitled to registered trademark protection.

The district court granted Tiffany’s motion for summary judgment finding Costco liable for trademark infringement and counterfeiting as a matter of law. The district court then revised a jury’s damages award finding that Costco was liable for willful or intentional infringement to the tune of more than $21 million. Costco appealed.

On appeal, Costco argued it had successfully raised a question of material fact as to its liability for trademark infringement and counterfeiting and was entitled to present its fair use defense to a jury. The Second Circuit addressed the lower court’s trademark “likelihood of confusion” assessment under its own Polaroid factors and explained that if a factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment. Here, the Court determined that Costco raised a triable question of fact as to at least three of the Polaroid factors, namely, (1) whether Costco’s customers were actually confused as to the source or affiliation of its diamond engagement rings, (2) whether Costco adopted Tiffany’s trademark in bad faith and (3) whether the relevant population of consumers was sufficiently [...]

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