There were many significant copyright-related court cases decided during 2018. Breaking them down, the most significant were:
ABS Entertainment v. CBS Corporation
A case involving whether digitally remastered pre-1972 sound recordings are independently copyrightable.
The U.S. Court of Appeals for the Ninth Circuit reversed the lower court’s grant of summary judgement in favor of CBS, holding that “the creation of an authorized digital remastering of pre-1972 analog sound recordings that qualify as copyrightable derivative works does not bring the remastered sound recordings exclusively under the ambit of federal law,” and that “the district court erred in concluding that plaintiffs’ state copyright interest in the pre-1972 sound recordings embodied in the remastered sound recordings was preempted by federal copyright law.”
BMG v. Co
A case in which BMG Rights Management accused Cox Communications of contributory and vicarious copyright infringement based on its subscribers’ peer-to-peer file-sharing.
The lower court had held that Cox did not qualify for safe harbor protection under the DMCA because “no reasonable jury could find that Cox implemented a [repeat infringer] policy” as required by the DMCA to obtain safe harbor. The Fourth Circuit reviewed the district court’s grant of summary judgment on this matter de novo. Cox argued that the district court erred in granting summary judgment in favor of BMG and that the term “repeat infringers” as it is used in § 512(i)(1)(A) should be limited to adjudicated infringers. The Fourth Circuit Court of Appeals disagreed with Cox’s interpretation and affirmed the lower court, stating that “Congress knew how to expressly refer to adjudicated infringement, but did not do so in the repeat infringer provision” and holding that “term ‘infringer’ in § 512(i) is not limited to adjudicated infringers.” The Court also found that Cox was “clearly determined not to terminate subscribers who in fact repeatedly violated the policy,” and that, “[a]t a minimum… an ISP has not ‘reasonably implemented’ a repeat infringer policy if the ISP fails to enforce the terms of its policy in any meaningful fashion” as Cox did in this case. For those reasons, the Fourth Circuit affirmed the lower court’s ruling that Cox is ineligible for DMCA safe harbor protection for failing to reasonably implement a repeat infringer policy “in any consistent or meaningful way — leaving it essentially with no policy.” BMG petitioned for a rehearing but was denied, and the parties eventually ended up settling the case.
Cambridge University Press v. Albert
A case brought by several academic publishers in 2008 that alleged infringement by Georgia State University in connection with its course e-reserve system.
The U.S. Court of Appeals for the Eleventh Circuit held that the district court misinterpreted its previous mandate and misapplied the fair use test. Specifically, the court agreed with the publishers’ arguments that the district court erred when it made its new findings of fair use after the first appeal, both when it revisited its factor four analysis and when it again applied a “mathematical formula” for weighing and balancing the four factors in its overall calculus of fair use for each excerpt. The court also held that the district court erred when it considered the cost of purchasing licenses in finding that the third factor favored fair use. Finally, the Eleventh Circuit vacated the lower court’s decision finding GSU a prevailing party and awarding it attorneys’ fees.
Capitol Records v. ReDigi
A case involving a service that allowed users to “resell” digital mp3 files.
The U.S. Court of Appeals for the Second Circuit published its long-anticipated decision affirming the district court’s finding that ReDigi infringed the reproduction rights of plaintiffs. The court affirmed the district court’s holding that ReDigi’s service created a new copy of a sound recording, and the reproduction right is not subject to the first sale doctrine, which applies solely to a particular phonorecord. The court also rejected ReDigi’s argument that its technical process of deleting the original copy of the file in the course of reselling a sound recording does not constitute a reproduction. Further, the court held that the deletion does not nullify the fact that a reproduction has been made, and that ReDigi’s fair use defense (relying heavily on its fair use decision in TVEyes) does not stand up.
Code Revision Commission v. Public.Resource.org
A case concerning whether the Official Code of Georgia Annotated (OCGA) was eligible for copyright protection.
The U.S. Court of Appeals for the Eleventh Circuit held that “where the official who created the work is entrusted with delegated sovereign authority, where the work carries authoritative weight, and where the work was created through the procedural channels in which sovereign power ordinarily flows – it follows that the work would be attributable to the constructive authorship of the People, and therefore uncopyrightable,” finding the OCGA uncopyrightable as a result.
Davidson v. United States
A case involving a photograph of the Lady Liberty replica statue in Las Vegas, which was reprinted on U.S. postage stamps under the mistaken belief that the photograph was of the original statue in New York.
The U.S. Court of Federal Claims ruled in favor of the sculptor in the amount of $3.5 million plus interest. The USPS argued that the replica statue “is too similar to the original in New York Harbor and that the government’s use copied nothing original to plaintiff,” and also asserted a fair use defense. But the court held that “Mr. Davidson’s work was original and … the Postal Service’s use of it was not permitted by statute.”
Fox News v. TVEyes
A case concerning whether TVEyes’ subscription service allowing users to view, download, and email ten-minute clips of Fox’s programming qualified as fair use.
The TVEyes’ service, which was available for $500 a month to businesses, governments, and professionals (but not for personal use), offered recorded programming 24/7 from over 1,400 television and radio stations. It also compiled the recorded programs into text-searchable databases. Subscribers could search the database by keyword, or by date and time, and could then watch, archive, download, and email the ten-minute-long clips contained in the search results. The District Court held that the function in TVEyes’ service that enabled subscribers to search for videos and clips using keywords (“Search Function”) and the functions that allowed subscribers to watch, archive, and share relevant clips with others (“Watch Function”) were both allowed under the fair use exception. The District Court held that the functions that allowed TVEyes’ subscribers to download and freely email clips or to watch clips obtained by using search functions other than by keywords were not fair use. Fox appealed the decision relating to the Watch function to the Second Circuit Court of Appeals, and the Second Circuit reversed the District Court’s finding of fair use on the Watch Functions, and remanded the case to the District Court to revise the injunction in light of its fair use ruling.
In its fair use analysis, the Second Circuit undeniably regarded the fourth factor concerning potential market harm as the “single most important element of fair use” and weighed in favor of Fox. Further, the Court found that TVEyes displaced revenue that Fox should have earned on its work, and further determined that, instead of properly licensing from Fox, TVEyes distributed and provided access to Fox’s content without licensing, therefore depriving Fox of the opportunity to get properly paid undermining the basic rule of copyright law that a copyright owner is entitled to control how to license (if at all) to those who want to use the work. The Court stated that, since “the ability to re-distribute Fox’s content in the manner that TVEyes does is clearly of value to TVEyes, it (or a similar service) should be willing to pay Fox for the right to offer the content.” The Court concluded by noting that “TVEyes ha[d] usurped a function for which Fox is entitled to demand compensation under a licensing agreement,” and weighed this factor in favor of Fox. TVEyes subsequently filed a petition for certiorari with the Supreme Court, which the Court recently denied.
Goldman v. Breitbart
A case concerning “how images [here, a photo of New England Patriots quarterback Tom Brady] shown on one website, but stored on another website’s server, implicate an owner’s exclusive display right.”
The U.S. District Court for the Southern District of New York granted the photographer’s partial motion for summary judgment, stating that “when defendants caused the embedded Tweets to appear on their websites, their actions violated plaintiff’s exclusive display right; the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.” In so holding, the court rejected the “Server Test” that was articulated in Perfect 10 v. Amazon, explaining that the “plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence, provide no basis for a rule that allows the physical location or possession of an image to determine who may or may not have ‘displayed’ a work within the meaning of the Copyright Act.” (The Second Circuit rejected an immediate appeal of the decision in July, but the decision will likely be appealed when the district court makes a final judgment.)
Oracle v. Google
A case concerning Google’s use of Oracle’s Java APIs in the Android platform. The Court of Appeals for the Federal Circuit, reversing the lower court, held that Google’s use did not constitute fair use as a matter of law, and remanded the case for a trial on damages. On the first factor, the Court rejected Google’s argument that using the APIs in a smartphone context was transformative enough while on the fourth factor, the Court held that Google effectively prevented Oracle from accessing the potential mobile devices market for the APIs. The Court stated that “[t]here is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform,” and that Google’s “superseding use is inherently unfair.” Google plans to file a petition for certiorari with the Supreme Court and the Supreme Court recently extended its deadline for doing so to January 2019.
3 District Court Fair Use Cases of Note in 2018
There were also several district court fair use cases worth noting simply to highlight how colossally the district court botched the fair use analysis. The three cases worth mentioning here are: Philpot v. Media Research Center, Brammer v. Violent, and Bell v. Powell.
In Philpot v. Media Research Center, Media Research Center used two of Philpot’s photos without permission in two separate online articles: a photo of Kenny Chesney in an article about pro-life celebrities; and a photo of Kid Rock in an article about his rumored U.S. Senate campaign. On summary judgment, the district court held both uses to be fair use on the basis that (1) defendant’s use was transformative because the purpose in using the photos – “to identify the celebrities as pro-life advocates or conservative Senate candidates” – was different from plaintiff’s purpose in taking the photos; (2) the use was not commercial because, while defendant collected display advertising revenues from its articles, it “does not charge readers for access to its articles, nor did it sell the Chesney and Kid Rock photographs to other parties” (the court also gave weight to the defendant’s status as a non-profit organization); and (3) the fourth fair use factor weighed in favor of fair use because “Defendant’s use of the Chesney and Kid Rock Photographs cannot impair the marketability of plaintiff’s works where, as here, plaintiff has not actually contemplated marketing those works” (because plaintiff had uploaded the photos to Wikimedia under a nonexclusive Creative Commons license).
In Brammer v. Violent – a case involving the Northern Virginia Film Festival’s alleged infringing use of Brammer’s time-lapsed photograph of a D.C. neighborhood on its website – the U.S. District Court for the Eastern District of Virginia held that the conduct constitutes fair use in part because, “while Brammer’s purpose in capturing and publishing the photograph was promotional and expressive, [the defendant’s] purpose in using the photograph was informational: to provide festival attendees with information regarding the local area,” and therefore, the court held that the use was transformative. In discussing the fourth factor, the court held that the use did not adversely affect the market for the photograph, because the photograph has been licensed at least two times since the alleged infringement, “demonstrating that [the defendant’s] use did not affect the market for the photo” and because the defendant “did not sell copies of the photo or generate any revenue from it.”
Bell v. Powell is a case involving an organization that published a brochure to promote its conference and included in the brochure a photograph of the Indianapolis skyline without permission from the photographer. In the case, the U.S. District Court for the Southern District of Indiana, on a motion for summary judgment, concluded that defendant’s use was a fair use because the photograph was not a prominent feature of the brochure, but rather it “appeared with two other photographs to show the location of the conference,” and that the defendants did not profit from the use of the brochure. The Court also relied on its determination that “the nature of Bell’s Indianapolis Nighttime Photo was a depiction of a city skyline in order to sell copies of a photograph of the Indianapolis skyline, whereas the nature of the photograph on MRNISO’s brochure was to provide a factual depiction of Indianapolis to inform the public about where an educational, professional conference on sexual assault would be held.” All three of these cases are painful for anyone who knows even the slightest bit about copyright fair use. Just about every part of the fair use analysis in the cases is completely incorrect. These holdings, if they are permitted to stand and be used as precedent when deciding future cases, could potentially be damaging to copyright owners—particularly press and stock photographers.
Predictions for 2019
While 2018 was certainly filled with both interesting and bizarre copyright court cases, 2019 promises more of the same. The Supreme Court is scheduled to hear two cases: Fourth Estate v. Wall-Street.com, on January 8, and Rimini Street v. Oracle, on January 14. The Fourth Estate case concerns the issue of whether the registration requirement for initiating an infringement suit is satisfied by the “application approach” or the “certificate approach.” The Rimini Street case concerns whether §505 of the Copyright Act limits what costs a court may award to a prevailing party in a copyright infringement case. Of course, as noted above, the Court will also decide whether it will take on the much-publicized Oracle v. Google fair use case.
Toward the end of 2018, we also saw several copyright infringement cases filed against Epic Games (the creator of the wildly popular video game Fortnite) and others, alleging infringements of dance moves. So, it looks like 2019 will also be the year we find out the scope of copyright protection afforded to dance moves.