The Business Lawyer
American Bar Association
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Recent Developments in Copyright Law
DOI 10.928/ac.2021.03.36 , Volume: 76 , Issue: 1
Bradley: Recent Developments in Copyright Law

I. Introduction

It has been an interesting year for cyberlaw copyright issues. Part II discusses cases analyzing whether social media content sharing features, such as retweets, can give rise to actionable copyright claims. Part III looks at secondary liability claims against Internet service providers for their handling of takedown notices under the Digital Millennium Copyright Act (“DMCA”), while Part IV discusses a case upholding a statutory damages award against an online seller. Part V addresses copyright preemption issues in connection with the popular Fortnite video game. The Supreme Court held that Georgia’s annotated statutory code is not protected by copyright, which opinion is discussed in Part VI. Part VII presents key takeaways from the Copyright Office’s report on the DMCA notice-and-takedown provision, which offered suggestions for Congress to improve the provision to strike a better balance between protecting copyright holders while still fostering the growth of online service providers and Internet technology. Finally, Part VIII previews the upcoming heavyweight match between Google and Oracle in the Supreme Court.

II. Social Media Cases

Each of the three cases discussed below relates to motions to dismiss under Rule 12(b)(6) for copyright infringement claims premised on sharing social media content using social network features, namely Twitter’s retweet and the embedding of an Instagram post in a webpage through Instagram’s application programming interface (“API”).

In Sinclair v. Ziff Davis, LLC,1 a photographer alleged copyright infringement against online publication Mashable based on its using Instagram’s API to embed the photographer’s image in an online article. The court initially granted defendants’ motion to dismiss on the grounds that Mashable had obtained a sub-license by using Instagram’s API according to Instagram’s Terms of Use.2 Subsequently, on the photographer’s motion for reconsideration, the court revised its opinion on the grounds that the pleadings contained insufficient evidence to establish that Instagram had actually granted the sublicense.3 In particular, the court noted that the terms were ambiguous as to whether use of the API conferred a license, because, although the terms could be interpreted as granting a license, that was not the only interpretation possible.4 The court accordingly reinstated the action against Mashable.5

In McGucken v. Newsweek LLC,6 the facts were very similar to those of Sinclair in that a photographer alleged copyright infringement based on Newsweek’s having used Instagram’s API to embed the photographer’s image in an online article. The court reached a similar outcome, denying defendant’s motion to dismiss due to a lack of evidence in the pleadings that use of Instagram’s API conferred a sublicense to display the image in question.7 Notably, Instagram has yet to update its Terms of Use to include an explicit sublicense, presenting potential challenges to online publishers as similar disputes arise.8

In Bell v. Chicago Cubs Baseball Club, LLC,9 the court considered whether a retweet constitutes an actionable act of copying under the Copyright Act. The plaintiff alleged that its copyright in a book was infringed when an employee of the Chicago Cubs organization retweeted a passage of the book on Twitter. As most readers will likely know, Twitter is a microblogging platform where users can post text and images in short messages known as “tweets,” with the text usually being 280 characters or less. A “retweet” is the sharing of the tweet of another on one’s own Twitter feed. Defendants argued that there was no direct infringement because a retweet is not a copy, but rather a link back to the original source of a pre-existing post. The court denied defendants’ motion to dismiss the direct infringement claim, finding that a factual issue existed as to whether a retweet creates a copy or just a link to an existing copy.10

III. Secondary Liability of ISPs

District court decisions from the Fourth and Tenth Circuits dealt blows to Internet service providers (“ISPs”) for not sufficiently addressing copyright infringement by their subscribers. The copying at issue primarily occurred through BitTorrent, a communication protocol for sharing electronic files over the Internet. Unlike traditional peer-to-peer file sharing systems, where a user generally downloads an entire file from a single source, BitTorrent enables users to download smaller portions of a particular file simultaneously from many other users, providing for rapid distribution of files. Both cases included an assortment of record companies and music publishers as plaintiffs asserting secondary liability claims against ISPs for the infringing acts of ISP subscribers.

In Sony Music Entertainment v. Cox Communications, Inc.,11 the court first granted plaintiffs’ summary judgment motion, holding that Cox had the requisite knowledge to support a finding of contributory infringement. The court pointed to section 512(c)(3),12 which defines the requirements for takedown notices, and used that as a criterion for whether a notice conveyed sufficient knowledge for contributory infringement liability. The court was unpersuaded by Cox’s argument that the takedown notices it received were insufficient, noting that plaintiffs had provided extensive information in the notices, including IP addresses, hash values of each infringing file, and a timestamp of the detected infringement.13 In particular, the court reasoned that “[i]t would be farcical to argue that Cox had no knowledge of the hundreds of thousands of notices it received indicating infringement for the works in suit” when Cox served as the middle man between plaintiffs and its Internet subscribers, and where the notices were sent to an email address Cox created for the very purpose of receiving take-down notices.14

After the jury awarded a staggering $1 billion in statutory damages, the court, in a subsequent decision,15 upheld the jury’s per-infringed-work award of $99,830 as reasonable, as supported by the evidence, and as not violative of Cox’s due process rights,16 but the court gave Cox an opportunity to recalculate the number of works in the suit due to overlapping copyrights in single works.17 In doing so, the court pointed to some unflattering evidence about Cox, including internal emails indicating knowledge of widespread infringement, and placement of a higher priority on generating revenue than enforcing copyrights.18 The court also noted that, in a two-year span, only thirty-two customers were terminated for copyright infringement, but 620,000 customers were terminated for failure to pay bills.19

In Warner Records Inc. v. Charter Communications, Inc.,20 the court denied defendant Charter’s motion to dismiss plaintiffs’ vicarious copyright infringement claim that sought to hold Charter accountable for the infringing conduct of its Internet subscribers. Specifically, the court found it plausible that Charter’s conduct fulfilled both prongs of the vicarious copyright infringement test: having (1) the right and ability to supervise infringing activity and (2) a direct financial interest in such activities.21 Regarding the first prong, the court noted that it was not necessary for Charter to be able to control the infringing activity of its subscribers using other forms of Internet access, but only through its own services.22 Regarding the second prong, the court noted that it was plausible that at least some of Charter’s subscribers were drawn to Charter for the ability to infringe plaintiffs’ works (allegedly “some of the world’s most famous and popular music”) based on Charter’s advertisement of features attractive to infringers, such as the ability to download “8 songs in 3 seconds.”23

IV. Statutory Damages Award Against an Online Seller

In Greg Young Publishing, Inc. v. Zazzle, Inc.,24 the Ninth Circuit reversed a district court finding of non-willfulness, thereby restoring the jury’s statutory damages award of $460,800. The defendant Zazzle runs a website that enables users to upload artwork, which Zazzle prints onto various goods, such as apparel and coffee mugs. The user earns a royalty from sales of those goods. The plaintiff had alleged infringement of thirty-four works, thirty-one of which had been printed on goods sold by Zazzle.25 The district court had previously found Zazzle to be ineligible for the safe harbor of section 512(c) for products it had manufactured and sold bearing infringing images, due to Zazzle’s benefitting financially from such sales and having the ability to control them.26 In upholding the finding of willful infringement, the Ninth Circuit noted that Zazzle continued to sell works featuring the infringing images after receiving notice, took no action to address a known infringing user, never provided plaintiff ’s catalogue of works to its enforcement team, and never improved its oversight system despite repeated notice of its ineffectiveness.27

V. Copyright Preemption for Fortnite Avatar Dancing

In a pair of district court cases, the individuals behind viral Internet dance videos sought to enforce their intellectual property rights against Epic Games, Inc. for its depiction of the dances in its Fortnite video game.

In the first of these cases, Brantley v. Epic Games, Inc.,28 the plaintiffs were the alleged creators of the “Running Man” dance that had been widely shared on social media and featured on the Ellen DeGeneres Show. In the second case, Pellegrino v. Epic Games, Inc.,29 the plaintiff was a professional saxophone player whose dance involved a particular pattern of foot movements executed while playing the saxophone. In each instance, Epic had made the dances available as purchasable digital content for characters in Fortnite without the consent of the creators. Both courts applied the Copyright Act’s preemption test, under which a state-law claim is preempted if (1) the work is within the subject matter of copyright and (2) the state law creates rights equivalent to the exclusive rights protected by the Copyright Act.30

In Pellegrino, the plaintiff raised a number of claims, including right of publicity, unjust enrichment, unfair competition, false designation of origin, false endorsement, and state trademark infringement. The court’s preemption analysis only considered the state trademark infringement claim, and the court concluded that the claim was preempted. In particular, the court found that the dance fell within the ambit of “choreographic works” under the Copyright Act,31 and that the infringement alleged in the state trademark claim was analogous to the copying prohibited by the Copyright Act because no extra element beyond copying was alleged in that claim.32

In Brantley, the court took preemption further, finding that right of publicity, common law unfair competition, and common law unjust enrichment claims were preempted. Regarding the first prong, the Brantley court noted “the Running Man is somewhere on the continuum between copyrightable choreography and uncopyrightable dance,” but held that where it fell on that continuum did not affect the preemption analysis because “the scope of copyright preemption is broader than that of copyright protection.”33 Regarding the second “equivalency” prong, the court found that the behavior alleged in each of the various claims was essentially the same copying that would infringe an exclusive right under the Copyright Act.34

VI. Supreme Court Rules on the Copyrightability of Annotated Statutes

In Georgia v. Public.Resource.Org, Inc.,35 the U.S. Supreme Court considered whether the annotated version of Georgia’s official statutory codification, the Official Code of Georgia Annotated (“OCGA”), was eligible for copyright protection. The OCGA included the text of every Georgia statute and a set of annotations mapping statutory provisions to various judicial decisions, law review articles, and similar reference materials. Summaries of relevant judicial decisions were also provided.36 Public.Resource.Org had published the OCGA online, and the State of Georgia sued for copyright infringement.37

The annotations in the OCGA were prepared by the LexisNexis Group, pursuant to a work-for-hire agreement under which any copyright in the OCGA vested exclusively in the State of Georgia. Although Lexis drafted the annotations, a Code Revision Commission, a majority of which consisted of state legislators, and which was funded through legislative appropriations, specified in detail what the annotations must include.38 Under its agreement with Georgia, Lexis had an exclusive right to charge a price for access to the OCGA.39

The Court found that the OCGA, including the annotations, was ineligible for copyright protection because of the “government edicts doctrine,” under which legislators may not own a copyright in works produced in the course of their official duties.40 The Court found the government edicts doctrine applicable because the Commission was the author of the OCGA, and because the Commission created the annotations in the discharge of its legislative duties.41 Regarding authorship, the Court reasoned that the Commission, and not Lexis, was the author due to the Commission’s involvement in creating the annotations, and a work-for-hire agreement between the parties.

VII. Copyright Office Report on Section 512

Twenty-plus years after the passage of the DMCA,42 the Copyright Office issued a report43 on how effective the DMCA notice-and-takedown process and the corresponding safe harbors of section 512 have been at striking a balance between protecting copyright holders and allowing Internet technology to flourish.

The report recognizes a number of areas in which the system has favored online service providers (“OSPs”) at the expense of copyright holders. The report uses the term “OSPs” to include both ISPs and entities that do not provide Internet access, but rather provide services such as hosting content (e.g., user-uploaded media) or linking to content (e.g., through a search engine).

The Copyright Office recognizes the frustrations of copyright holders, observing that “the volume of notices demonstrates that the notice-and-takedown system does not effectively remove infringing content from the internet; it is, at best, a game of whack-a-mole.”44

The report also recognizes that regulatory and technological barriers that were likely not contemplated when the DMCA was drafted have made it difficult to serve proper takedown notices and enforce copyrights in general.45 These measures include proxy services that anonymize user data or mask the location of hosting services, and also foreign laws that prevent OSPs from sharing user information, such as the recent General Data Protection Regulation from the European Union.46

The Copyright Office suggested concrete ways that Congress could improve the system, explicitly noting that it was not recommending any wholesale changes to section 512, but rather was “electing to point out where Congress may wish to fine-tune section 512’s current operation in order to better balance the rights and responsibilities of OSPs and rightsholders in the creative industries.”47 The Copyright Office’s suggestions include clarifying whether “repeat infringer” policies are meant to refer to repeat alleged infringers or repeat adjudicated infringers,48 and clarifying what constitute appropriate circumstances for terminating user accounts based on repeated acts of infringement.49 The Copyright Office further suggested clarifying the boundaries of the “information reasonably sufficient . . . to locate” infringing material in a takedown request, such as whether this requires a unique, file-specific URL for every instance of infringing material on an OSP’s service.50

VIII. Google v. Oracle

After delaying the argument due to the COVID 19 pandemic, the Supreme Court finally heard oral arguments in Google LLC v. Oracle America, Inc.51 on October 7, 2020. The case centers around Google’s Android operating system, and in particular how Google used API definitions from Java in Android to make it easier for software developers familiar with Java to write software for Android. Notably, Google only copied the API definitions, rewriting the source code called by those API definitions. Thus, to a software developer calling a given API, the API name and parameters are the same, and the API creates the same output as in Java, but the underlying code within the API that creates that output is not copied from Java.

The Court granted Google’s petition for certiorari52 on the Federal Circuit’s decisions, which held that copyright extends to a software interface,53 and which overturned a jury verdict finding that Google’s copying constituted fair use.54 This is a significant case regarding fair use, software copyright, and the degree to which functional code can be protected, and it is certainly one to watch closely.

Notes

1 No. 18-CV-790 (KMW), 2020 WL 1847841 (S.D.N.Y. Apr. 13, 2020).
2 Id. at *2–3.
3 Sinclair v. Ziff Davis, LLC, No. 18-CV-790 (KMW), 2020 WL 3450136 (S.D.N.Y. June 24, 2020).
4 Id. at *1.
5 Id. at *2.
6 No. 19 Civ. 9617 (KPF), 2020 WL 2836427 (S.D.N.Y. June 1, 2020).
7 Id. at *4–5.
8 Terms of Use, Instagram, https://help.instagram.com/581066165581870 (last modified Apr. 19, 2018).
9 No. 19-cv-2386, 2020 WL 550605 (N.D. Ill. Feb. 4, 2020).
10 Id. at *3–4.
11 426 F. Supp. 3d 217 (E.D. Va. 2019).
12 DMCA, 17 U.S.C. § 512(c)(3) (2018).
13 Sony Music Entm’t, 426 F. Supp. 3d at 231.
14 Id. at 232.
15 Sony Music Entm’t v. Cox Commc’ns, Inc., No. 1:18-cv-950-LO-JFA, 2020 WL 3121306 (E.D. Va. June 2, 2020).
16 Id. at *27–38.
17 Id. at *26.
18 Id. at *7, *10, *30.
19 Id. at *30.
20 No. 19-cv-00874-RBJ-MEH, 2020 WL 1872387 (D. Colo. Apr. 15, 2020).
21 Id. at *3, *6 (citing Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657 (9th Cir. 2017); Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007)).
22 Id. at *7.
23 Id. at *1, *6 (first quoting the complaint; and then quoting the magistrate judge’s recommendation on defendant’s motion to dismiss).
24 785 F. App’x 417 (9th Cir. 2019).
25 Plaintiff Greg Young Publishing, Inc.’s Memorandum of Contentions of Law and Fact Pursuant to L.R. 16-4 at 17, Greg Young Publ’g, Inc. v. Zazzle, Inc., No. 2:16-cv-04587-SVW-KS (C.D. Cal. May 22, 2017).
26 Order Re: Defendant’s Motion for Summary Judgment and Plaintiff ’s Motion for Partial Summary Judgment at 9–10, Greg Young Publ’g, Inc. v. Zazzle, Inc., No. 2:16-cv-04587-SVW-KS (C.D. Cal. May 1, 2017).
27 Zazzle, Inc., 785 F. App’x at 418.
28 No. 8:19-cv-594-PWG, 2020 WL 2794016 (D. Md. May 29, 2020).
29 No. 19-1806, 2020 WL 1531867 (E.D. Pa. Mar. 31, 2020).
30 17 U.S.C. § 301 (2018); Brantley, 2020 WL 2794016, at *3; Pellegrino, 2020 WL 1531867, at *8.
31 17 U.S.C. § 102(a)(4) (2018).
32 Pellegrino, 2020 WL 1531867, at *8–9.
33 Brantley, 2020 WL 2794016, at *5.
34 Id. at *7–8.
35 140 S. Ct. 1498 (2020).
36 Id. at 1504.
37 Id. at 1505.
38 Id. at 1504–05.
39 Id. at 1505.
40 Id. at 1506–08.
41 Id. at 1508–09.
42 Pub. L. No. 105-304, 112 Stat. 2860 (1998) (codified in scattered sections of 17 U.S.C.).
43 U.S. Copyright Off., Section 512 of Title 17—A Reportof The Registerof Copyrights (2020), https://www.copyright.gov/policy/section512/section-512-full-report.pdf.
44 Id. at 33.
45 Id. at 34.
46 Id. (citing Council Regulation 2016/679, 2016 O.J. (L 119) 1 (EU)).
47 Id. at 7.
48 Id. at 2–3.
49 Id. at 3.
50 Id. at 5 (quoting 17 U.S.C. § 512(c)(3)(A)(iii)).
51 140 S. Ct. 520 (2019) (granting certiorari).
52 Petition for a Writ of Certiorari, Google LLC v. Oracle Am., Inc., 140 S. Ct. 520 (2019) (No. 18-956), 2019 WL 338902.
53 Oracle Am., Inc. v. Google LLC, 750 F.3d 1339 (Fed. Cir. 2014).
54 Oracle Am., Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018).
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