Opt In v. Opt Out

Lawrence Lessig has been discussing Kahle v. Gonzales, here and here and follow the case here, a case brought on behalf of Brewster Kahle, founder of the Internet Archive (home of the Wayback Machine), challenging the constitutionality of the current copyright regime. Essentially, the case argues that the 1976 Copyright Act ushered in a fundamental change to copyright by creating automatic copyright protection for every work (opt out) and replaced the old standard of requiring works to be registered before being covered under copyright (opt in). The change brought by the 1976 Act is constitutionally significant as applied to free speech and thus the two recent copyright extensions (the 1992 Copyright Renewal Act and the Sonny Bono CTEA of 1998) should be held unconstitutional because they places unreasonable burdens on speech in violation of free speech.

The basis for the suit is much like that in Eldred v. Ashcroft, in that copyright law is being questioned on the basis of its harmful effects on free speech, but rather than challenge whether or not copyright terms are essentially perpetual (as was argued in Eldred), the Kahle case is focusing on the shift brought by the 1976 Act.

Here's a link to a copy of the appellate brief for the 9th Circuit (Kahle lost in the lower court). If you've ever wanted to read a good and concise summary of how copyright law has changed in 1976 and how that and more recent changes have caused problems, you would be well served to read the introduction to the case on pages 2 through 9.

However, I'm not sure I agree that a change to something pre-1976, that would require people to register their works before being protected, is something I'd actually want. Every time I write a post on this blog it is automatically covered by copyright without me having to do a thing. While I fully support others reading, linking, quoting, and otherwise spreading my work, I do enjoy the powers that copyright bestows on me (ie. the right to issue DMCA notices against sites that scrape my posts). Would I be inclined to deal with government bureaucracy every I wrote a new post? Absolutely not, especially given that having to flex my copyright enforcement muscles is a rare occurrence.

But I do have to say that I like the approach Lessig is taking in trying to solve some of copyright law's problems. To require that copyright laws pass first amendment muster before being enacted would be a welcome development that would help ensure that all creators, not just Big Content, have their interests represented.

Retaliatory Infringement

There's a fascinating article on Slate laying out a hypothetical situation where the recent ban on online gambling could lead to trouble with the WTO and open the door for countries to be well within their rights to ignore intellectual property treaties with the United States.

YouTube's Terms of Use and the DMCA

Mark Cuban has been all over the various story lines behind YouTube, first mentioning their $500 million copyright infringement slushfund (which turns out to be only about $200 million) and now posting Robert Tur's motion for summary judgment. After all his criticism of YouTube, it does seem like a major coincidence that Cuban is contemplating the purchase of Tur's Los Angeles News Service. However, he has taken a serious interest in the case, keeps providing material, and always poses the right questions, for which he is to commended. Most recently, the question has become whether or not YouTube's Terms of Service grant it the right and ability to control infringing material on its site, which would open the door to a claim of vicarious liability for copyright infringement. It appears not.

Tur's motion for summary judgment claims that YouTube has forfeited its status under the DMCA's safe harbors. This is to be expected because a court can only find YouTube liable for copyright infringement if it is not protected by any of the DMCA's safe harbors, but here, the reason for why Tur claims YouTube is not covered is interesting. One argument is that YouTube forfeits its safe harbor by financially benefitting from infringing content by serving ads, which is a no-no under the DMCA. The claim I'm focusing on here is that YouTube's Terms and Conditions, which say in pertinent part that:

For clarity, you retain all of your ownership rights in your User Submissions. However, by submitting the User Submissions to YouTube, you hereby grant YouTube a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the User Submissions in connection with the YouTube Website and YouTube's (and its successor's) business, including without limitation for promoting and redistributing part or all of the YouTube Website (and derivative works thereof) in any media formats and through any media channels.

appears to essentially give YouTube "effective ownership" of user videos (since the license covers must rights that a copyright owner enjoys) which could mean that YouTube would have sufficient control over uploaded content so as to void its safe harbor status. No more safe harbor status means no more YouTube since any and everybody could (and most likely will) start suing YouTube for infringement. Whoa.

The DMCA offers several safe harbors that limit liability for a variety of actions that could lead to copyright infringement, but YouTube falls squarely under the DMCA's 512(c) covering "Information Residing on Systems or Networks at Direction of Users." In order to qualify for this safe harbor, and to not be held liable for anything a user uploads to its site, YouTube must not be a contributory infringer [512(c)(1)(A)], must not receive a financial benefit directly attributable to the infringing material [512(c)(1)(B)], and must not expeditiously remove infringing content upon receipt of a DMCA takedown notice [512(c)(1)(C)].

Tur's claim, that the Terms of Use give YouTube control over user content is a claim of vicarious infringement rather than contributory infringement. The distinction between vicarious and contributory infringement is subtle, but an important one that can be muddled.

Vicarious infringement occurs when a party (1) has the right and ability to control the infringer's acts and (2) receives a direct financial benefit from the infringement. In contrast, contributory infringement occurs when a party, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another. These two species of infringement are related, but sufficiently different so that YouTube could be vicariously liable yet not a contributory liable, or vice versa, because the elements of each are quite distinct. It's important to note that the requirements under section 512(c)(1)(A) describe contributory infringement and not vicarious. Under a strict reading of the DMCA, it appears that vicarious infringement would not defeat YouTube's safe harbor status since the statute only contemplates the contributory infringement standard. But I will continue on addressing YouTube vicarious liability and whether or not it has the right and ability to control infringing material.

In Religious Technology Center v. Netcom, a lawsuit over the posting of the unpublished writings of Scientology founder Ron Hubbard on Netcom's bulletin board service, the court found that Netcom could be held liable for contributory infringement but not vicarious infringement. For vicarious liability, evidence that Netcom reserved the right to take remedial action against its users in its Terms of Service, that it reserved the right to restrict the posting of infringing material, that it suspended user accounts upwards of 1000 times, and that it had deleted specific postings in the past, all showed that Netcom had the right and ability to control acts of infringement on its servers. However, the Church could not prove that Netcom benefited directly from the infringing activity because there was no evidence showing that this specific case of infringement "in any way enhance[d] the value of Netcom's services to subscribers or attracts new customers. The court thus found that Netcom was not vicariously liable for the infringement, but found it was contributorily liable because it had actual knowledge of the infringement once the Church of Scientology notified it of the infringement and that it materially contributed to the infringement by providing an a service for the automatic distribution of the infringing material. Though the case was decided before the DMCA went into effect, the principles of contributory and vicarious infringement enunciated in both are still the relevant standards.

Another case dealing with these two kinds of infringement is Perfect10 v. Google, which dealt with Google's liability over its display of and linking to copyrighted photos through its Image Search feature. The court held that Google would not be secondarily liable, either under vicarious or contributory theories. As to vicarious liability, the court found that Google lacked the right and ability to control the infringing conduct of others, because it "does not exercise control over the environment in which it operates - ie. the web." As opposed to Napster, which was vicariously liable for infringement because it remove access to a file within its universe, Google is unable to do the same since its universe is the entire Internet. Even though Google could remove its link to the material at issue, the material is still widely available either directly or through another search engine, which shows that Google lacks the ability to control the infringing uses. Further, Perfect10 used the Terms of Service strategy to say that Google's AdSense policy gave it the right and ability to control its users, but this argument was rejected. The court said that if "right and ability to control" is to mean anything, it must mean more than what is included in AdSense's revenue sharing agreement and that such Terms must include "some form of control over or the authority to stop or limit the infringing conduct itself. The court found that Google did receive a financial benefit from the infringement, through its AdSense service, but without having the right and ability to control it could not be held liable.

It is important to note that YouTube has much more in common with Napster than with Google in regards to the Perfect10 opinion. It is pretty clear that YouTube operates within its own universe and serves infringing content from its own servers, much like Napster did, as opposed to how Google operates or even compared to the decentralized construction of Grokster and other p2p sites.

So does YouTube really have the right and ability to control infringing material? The user license excerpted above does not address infringing activity, but simple grants YouTube fairly broad distribution and reproduction rights. This clause would certainly cover things like when CNN runs YouTube videos in the Situation Room and other such promotional displays beyond the website itself. The clause is also similar to a Creative Commons license, in particular a Creative Commons Attribution 2.5 License, but without an explicit attribution requirement. Based on Netcom and Perfect10, this license agreement in the Terms of Service may not be enough in itself to show that YouTube has the right and ability to control infringing material in the legal sense required for a showing of vicarious infringement.

A close reading of YouTube's Terms of Service shows that it really doesn't reserve any rights that would make it vicariously liable. According to the Terms in section 5(c):

YouTube does not permit copyright infringing activities and infringement of intellectual property rights on its Website, and YouTube will remove all Content and User Submissions if properly notified that such Content or User Submission infringes on another's intellectual property rights. YouTube reserves the right to remove Content and User Submissions without prior notice.

The Terms give YouTube the right to remove content only when notified: this is the procedure laid out in DMCA 512(c) for takedown notices. I would highly doubt that reserving the right to follow the prescriptions of the DMCA could be interpreted as being the same as "having the right and ability to control infringing material." It simply cannot be that by following the requirements for safe harbor status one simultaneously loses that status. That YouTube can remove content without prior notice could be read to mean only that YouTube has no obligation to inform a user that a takedown notice has been received before disabling access to the material. Further, the Terms go on to say:

YouTube will also terminate a User's access to its Website, if they are determined to be a repeat infringer. A repeat infringer is a User who has been notified of infringing activity more than twice and/or has had a User Submission removed from the Website more than twice.

Again, the determination of being a repeat infringer is based on the DMCA takedown process and seems to contemplate a user who has had multiple DMCA takedown notices filed against material they have uploaded. The terms get really interesting when they say:

YouTube also reserves the right to decide whether Content or a User Submission is appropriate and complies with these Terms of Service for violations other than copyright infringement and violations of intellectual property law, such as, but not limited to, pornography, obscene or defamatory material, or excessive length.

That YouTube reserves the right to screen material for things like obscenity, but not for copyright, seems a bit tricky, but is more a problem with the law than with YouTube. CDA section 230 shields YouTube from liability if a user posts defamatory or otherwise explicit material on the site. It also encourages YouTube to self-police its site by not revoking its exemption from liability if it does remove such material. Previous cases held that if a site edited user submissions it was on the hook to edit all submissions (an almost impossible task when it comes to searching for defamation). Congress objected to this development in the law and passed CDA section 230 to encourage sites to regulate themselves and harmful material on their servers by passing what is essentially a safe harbor much like those in DMCA section 512. This kind of self policing is at odds with the vicarious liability analysis, which is more like the state of online defamation law prior to the passage of CDA 230. It is distressing to think that a judge would force a party like YouTube to chose between the protections of CDA 230 and DMCA 512, so I would think that YouTube's rejection of the right to remove material unilaterally for copyright infringement is not all that troublesome.

When YouTube changed its Terms of Service in July 2006 to include its broad licensing right it got lots of attention. However, in terms of copyright infringement under a vicarious liability analysis, the change is not enough to trigger liability for YouTube because it fails to give YouTube the right to remove or otherwise restrict infringing material. A closer look at the rest of YouTube's Terms shows that it really reserves no rights to act independent of a DMCA takedown notice when it comes to copyright violations. Further, whether a theory of vicarious copyright infringement that accuses YouTube of having the ability to control infringing uses and of receiving a financial benefit from such uses, does not appear to effect YouTube's safe harbor standing under DMCA 512(c), which concerns itself with contributory infringement rather than vicarious.

Tur's agrument, however, that YouTube receives a financial benefit from hosting his video could be a winner and his reliance on the Terms of Service is just superfluous. Receiving a financial benefit from infringing material is enough on its own to void YouTube's safe harbor status, and if Perfect10 v. Google is any guide, YouTube could be in serious trouble on this one. However, the license agreement included in the Terms of Service may be nothing more than a red herring in this case. Good thing for YouTube that it got bought by Google, who's lawyers I'm sure are itching to revisit the Perfect10 decision holding that Google receives a financial benefit from linking to copyrighted material and who already have a head start in crafting that argument in their favor.

Mystery Lawsuit Against Google

Google disclosed in its quarterly SEC filing that it's the subject of a video copyright lawsuit. There are no other details, and as TechDirt points out, the lawsuit could very well be the one filed this summer by Robert Tur against YouTube (more at EFF) over his footage of trucker Reginald Denny getting domed with a brick during the Rodney King riots of 1992 appearing on the site. The conspiracy theorist in me can't help but implicate Universal and Google's $500 million legal slush fund in the announcement, but there is no mention of who is suing Google or whether it even involves YouTube.

By the way, this video is why YouTube is great. Reginald Denny can be found at 2:00. It makes me think that the Rodney King video, which ultimately led to the riots, was possibly the most powerful amateur content ever in terms of its total social impact outside of perhaps the Zapruder film. Good thing we have copyright law to prevent people from seeing these primary sources themselves.

Using the Google TM in your URL

Saw a post on Google Blogoscoped that has me concerned. It appears that Google has cut off a Blogger user's AdSense account because his blog, Google Operating System, has the word "Google" in its url: googlesystem.blogspot.com. Despite the blog's efforts to clear up any confusion, Google is maintaining its stance, according to its Guidelines for Third Party Use of Google Brand Features, that you can't register Google TM's as "second-level domain names" (a fancy technical way of saying URL). While there's no legal action going on, Google has shut off GOS's AdSense account until the problem has been addressed. Can I really not use someone's TM in my URL?

The answer is, obviously, it depends. It's not a problem per se to use someone else's trademark in a url. Domain disputes usually come in one of two flavors. The first is where the domain uses a trademark in a bad faith effort to confuse people and to capitalize on the good will of the trademark. This is obviously bad and will probably get your domain taken and money damages may be involved. The other is where the domain owner has a colorable claim to use a domain name that is similar to the trademark at issue. Using "Google" in a subdomain on a blog about Google would fall into this second category.

The doctrine called initial interest confusion says that a URL can mislead and confuse a user as to who is running the website and is an actionable offense under trademark law. In Brookfield Communications v. West Coast Entertainment, the court described this doctrine as being the equivalent to a video store putting up a sign saying "Blockbuster this exit" and diverting traffic to their store. No one would confuse the video store for Blockbuster once they got there, but that people intended to go to Blockbuster and that their desire was frustrated by the video store's use of the Blockbuster trademark is the harm that initial interest confusion addresses.

Initial interest confusion also covers situations such as those in PETA v. Doughney, where the defendant registered PETA.org for his website People Eating Tasty Animals. No one could confuse that for the real PETA website once they saw it, but that the URL was misleading was enough for the court to find against Doughney. Using "Google" in a domain name could trigger a similar result where people are confused into thinking that the site is sponsored or provided by Google itself.

One question is whether the average person thinks that googlesystem.blogspot.com, or for that matter googlecopyright.blogspot.com, is a site that is sponsored and run by Google. This is totally debatable and unclear, though a convincing argument could be made that since Google is found at google.com and its services tend to be identified through subdomains (eg. maps.google.com, mail.google.com, etc.) a user wouldn't think that googlesystem.blogspot.com is a Google sponsored site. User sophistication is the x-factor here, because who knows if the average person is savvy enough to figure this out. And it certainly doesn't help that the Official Google Blog can be found at googleblog.blogspot.com, which follows the same structure as the two given examples.

Another issue is incorporating the Google mark into a domain and whether that creates confusion, separate from initial interest confusion and a standard trademark claim, under the AntiCybersquatting Consumer Protection Act, 17 USC 1125(d). In Ford Motor Company v. GreatDomains.com, the court found that vintagevolvos.com and volvoguy.com (among other sites) were confusingly similar to Ford's trademarks. The court said that, generally, "a domain name that incorporates a trademark is 'confusingly similar to' that mark if 'consumers might think that [the domain is] used, approved, or permitted' by the mark holder" and that "slight differences between domain names and registered marks, such as the addition of minor or generic words to the disputed domain names are irrelevant." This rationale suggests that googlesystem.blogspot.com is in fact "confusingly similar."

Along with confusion, a trademark owner must also show bad faith by the domain owner. In the Ford case, the court noted that the Senate and House intended that "the use of a domain name for purposes of comparative advertising, comment, criticism, parody, news reporting, etc., even where done for profit, would not alone satisfy the bad-faith intent requirement." So even if googlesystem.blogspot.com is confusingly similar to Google's mark, since it's done for the purpose of comment, possibly criticism, and news reporting about Google, it would be ok and not an infringement upon Google's trademark.

Since the use of "Google" in googlesystem.blogspot.com falls into a gray area (how gray? charcoal) it is unlikely that Google would take any formal legal action against the site over its domain name. But, as GOS found out, just because Google won't sue for trademark infringement doesn't mean that Google has no remedy.

The terms of service for AdSense say in section (5)(viii) that the user is prohibited from "act[ing] in any way that violates any Program Policies posted on the Google Web Site, as may be revised from time to time" and that any such act is a "material breach" of the terms of service and that Google can immediately suspend or terminate the user's AdSense account. Thus, a violation of Google's TM guidelines is a prohibited act that can lead to the suspension or termination of an AdSense account. Again, always check through these terms of service and try to act accordingly, especially if you plan on generating income.

What is disturbing about how these terms of service agreements work out is that, effectively, Google won't do business with a user that engages in fair use of Google's TM. Google has every right to chose with whom and on what terms it wants to do business, but given its market share in online advertising (25% of all online ad revenues in 2006), Google's ability to dictate speech based on its advertising terms seems a bit suspect. To be fair, I'm painting an extreme picture here and GOS has been around for about a year before Google caught on so it's not clear that Google is all that active in policing this type of use, but it's not a sound strategy to rely on Google's motto "don't be evil" to hope that Google won't shut down your AdSense account if you're "misusing" Google's TM. At least I don't have an AdSense account to worry about.

Oops

Google accidentally sends Kama Sutra worm in email to Google Video group.

The NHL Gets Google Video

As a hockey fan, I am used to being considered a fringe sports fan. On ESPN, the sport falls somewhere between IRL and Soccer in importance, and it's coverage elsewhere is lamentable. Any serious hockey fan has to turn to Canadian sources (eg. TSN where hockey leads the list of sports) for any in-depth coverage. Why, the only TV deal the NHL has is a $200 million three-year deal with OLN/Versus because no one else wanted to front the money. Compare that with the NFL's $8 billion six-year deal with the networks.

With that I am ecstatic that the NHL has announced a partnership deal with Google Video to host full-length games all season long as well as other video content. The service has a delay built in of a couple days so the service doesn't directly compete with the NHL's Center Ice package that goes for $169 a season, which is exactly how the NHL should balance its contractual obligations while extending its reach. And yes, it comes without ads too. The head of the NHL's online division said:

When web users are searching for diverse video content, Google Video is the first place they go, just as NHL.com is the first place hockey fans go when they want NHL video... The combination of our content and Google's massive reach is a terrific pairing, and we're excited to add fan-generated content to the mix.

Get that? The NHL has its own videos it needs to be seen on its site, but has made it official policy to use Google Video to get hockey seen by as many people as possible. And since the service comes without ads, this isn't like one of those sketchy online video deals being struck these days or a strong armed negotiating tactic. Perhaps the NHL isn't suffering from poor management after all.

This is especially great given the NHL's new unbalanced schedule, where the schedule emphasizes division rivalries and reduces inter-conference games. The new schedule has led to the absurd result of having the Washington Capital's and Alexander Ovechkin (greatest goal ever) going on a road trip to Edmonton in the first month of the season, and not only not playing another game the rest of the year outside the Eastern time zone, but it being three years before Edmonton fans can see him play in person again. You can blame the league for the new schedule - and it looks like they're listening because it's up for discussion at tomorrows GM meeting in Toronto - but it appears that the NHL does in fact understand that it's good to let fans follow the exciting new players in the league. These are games that fans can't see unless they're paying for Center Ice and the NHL is letting fans be fans by letting these videos out on Google Video.

But free full length games isn't even the best part. The Google Video NHL page also allows users to submit their own videos. The game videos can be downloaded without any DRM, but it looks like you have to download the Google player, so it appears that the NHL is in part looking for user remixes of game footage. Want to put together a highlight reel of last night's games? You can. Want a NY Rangers only clip fest? You can. The NHL is even putting up select games from years past, including 1994's Game 6 Game 7 between the Rangers and Devils (Matteau! Matteau! Matteau!) and Game 7 between the Rangers and Canucks. All of these games can be downloaded and played with.

I coach a Pee Wee hockey team at a grade/middle school here in New York and have always wished I could put together a highlight video to watch on the bus trips to our rink in NJ. Say, how certain teams break out of the zone or how someone like Chris Pronger patrols the front of the net and the corners. Maybe even a reel of Alexi Kovalev on the importance of making sure when you make a drop pass just inside the blue line that someone on your team is there to pick it up.

While this all seems silly, it is this silly stuff that makes the NHL's move here smart. Hockey has a notoriously loyal fan base (albeit a bit smaller than other sports) who rabidly consume everything hockey. Give those fans the tools to be creative and to help market the game through online video and who knows what will happen, but it's a safe bet it can only do good. Here I am as a coach wanting to mix clips as a teaching tool, which will make my kids better at and more interested in hockey, which makes them much more likely to shell out money for season tickets in 15 years than anyone else.

Dare I say that the NHL is actually being a leader in professional sports with this move? I think so, and it's also a sign that a huge entity with IP rights and licensing deals to worry about is letting their stuff out into the Internets tubes for fans to download and play with. The NHL as a leader in the changing entertainment business? Now that's tough to swallow.

More on Google Bombs in the News

NYT runs an article a little more attuned to the Google Bomb phenomenom than their last one a few days ago.  It's amusing to see the paper try to follow Google's approved uses of its name when it says right right at the start that "some Web gurus have suggested [it's] perhaps better called a link bomb, in that it affects most search engines."  Gurus?  Anyway, the article actually does give a good description of the problems associated with Google Bombs while pointing out that people are having trouble handling the  perceived authority of search results:

We also take much at face value. In results released last year, the Nielsen Norman Group, which surveys Internet behavior, found that fewer than 1 percent of searchers avail themselves of the advanced search options available on most search engines. And the Pew Internet and American Life Project found last year that while most consumers can distinguish between regular programming and infomercials on TV, and between regular content and advertorials in print publications, only 38 percent of searchers were aware of a distinction between paid and unpaid results among search returns.

The article also sends readers off to MyDD.com to view its very public campaign to Google Bomb Republicans running in this election.  By the way, when did the NYT start providing real links to other sites?  This is great.

Lastly, the article links to an article from First Monday by Clifford Tatum, which breaks down the makeup of the sites that comprise a Google Bomb and uses the language of Alberto Melucci, social movements and collective action scholar, to describe them as social movements and online protests, such as the "media mind bombs" of Greenpeace's Bob Hunter.

Diehl, Fortuny, and what to do when your blog gets DMCA'd

The lawsuit being brought by Jeff Diehl and the EFF against Michael Crooks is big news since it involves the misuse of everybody's favorite piece of copyright legislation, the DMCA. It's easy to dislike the DMCA for how it can be used to stifle speech and creativity, but this post is an offering to shine some light on the nasty bits of DMCA Section 512 and to show everyone that they're really not that nasty. While DMCA 512 can be abused, as in the case of Crook, it also provides users the means to protect themselves from erroneous takedown notices though the counter notification process. I have also posited the idea, based on a recent case from Pennsylvania, that obeying a takedown letter could be interpreted as a binding contract not to republish the material. In dissecting this case, I have realized that this dispute provides the average blogger a great example of what and what not to do when a DMCA takedown is received. It's also helpful in figuring out the proper way to get infringing material removed. Hopefully interest in this dispute will lead to greater awareness of these details and how the DMCA takedown process works. This post hopes to do just that. After all, knowledge is power.

Michael Crooks v. Jeff Diehl

First some background on this dispute. In September, a man going by the name Jason Fortuny went on Craigslist posed as a woman and put up a post looking for some BDSM sex back in September. He proceeded to post the responses - which included some sexually graphic pictures - on the wiki Encyclopedia Dramatica. A few weeks later, a man named Michael Crook mimicked Fortuny and put up his own ads on Craigslist, again posed as a woman, and posted the comments on his website craigslist-perverts.org (a site he created solely for this purpose). Crook has a history of these kinds of agitating shenanigans, having started forsakethetroops.info to "call attention to what I feel is excessive pay and benefits given to our military" and to other gripes about American soldiers. For this he managed to get onto Hannity and Colmes and was berated by Hannity (more on the link to this clip at the bottom). So when a blog called 10 Zen Monkeys used an unflattering screenshot of Crooks from his Hannity and Colmes appearance in a post critical of Crooks, he DMCA'd their ISP and sent 10 Zen Monkeys editor Jeff Diehl a letter demanding that the picture be taken down, claiming that 10 Zen Monkey's posting of the picture violated his copyright. A day after removing the picture Diehl switched ISPs to Laughing Squid (which has good coverage of this whole affair since Diehl is friends with the owner) and put the original article with picture back up. Crooks responded by filing a new DMCA takedown request with Laughing Squid, again demanding that the picture be taken down. Diehl once again relented, but replaced the picture with a link to another copy of the same picture, which prompter another DMCA notice asking that the link be taken down (this description of the affair is based on the complaint, which differs from Diehl's own recollections). Laughing Squid notified Diehl of the notice and he contacted the EFF for legal help. Diehl has since filed suit against Crooks for "misrepresentation of copyright claims under the DMCA" (read the complaint and all the other documents).

Whew... ok, let's be clear on one thing. Crooks does not own the copyright to the image, FOX News does.

Who is an Authorized Agent

The Digital Millenium Copyright Act Section 512(c) provides not only a series of "safe harbors" for ISPs (under the statute, "ISP" has a broad meaning of internet service provider, which includes entities such as an internet hosting service and entities like YouTube that provide services over the internet) wherein they may avoid legal liability for copyright infringement on their networks, but also sets out a detailed way in which copyright owners can have infringing uses of their works taken down. These are the notorious "DMCA takedown notices" and is the process by which, for example, broadcasters get clips of their shows removed from YouTube. Specifically, Section 512(c)(3)(A)(vi) provides that such a takedown notice must include:

A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed

It really can't get much more clear than that. Unless FOX News has authorized Crooks to act on its behalf, Crooks has clearly misrepresented himself. Most bloggers shouldn't run into problems with this section since if it's your picture (that is, you took it) or writing that is being misused, you own the copyright. If a work copyrighted by someone else is embedded in your post, and your post is ripped off, remember that you are asking that your material be taken down and that it happens to include someone else's work as well. You still own copyright in what you did, but if you're wondering if you've done enough around the other work, consult an attorney.

Having a Good Faith Belief of Infringement

Even assuming that Crooks is authorized to act on FOX News' behalf, Section 512(c)(3)(A)(v) requires the takedown notice to include:

A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

The law recognizes "fair use," as codified under 17 USC 107, which includes criticism, comment, and news reporting as acts that do not constitute an infringement of copyright. In order to ensure that the DMCA is not misused (ha!), Section 512(f) provides that:

Any person who knowingly materially misrepresents under this section—

(1) that material or activity is infringing, or

(2) that material or activity was removed or disabled by mistake or misidentification,

shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.

This section effectively prevents a party from making spurious copyright infringement claims. The voting machine company Diebold lost in court on this point when it filed a DMCA takedown notice against a student group that posted leaked internal documents revealing flaws in their electronic voting machines. The judge said in his decision that "no reasonable copyright holder could have believed that the portions of the email archive discussing possible technical problems with Diebold's voting machines were protected by copyright..." because they obviously newsworthy. The section also prevents a person from erroneously claiming that the material is not infringing when a reasonable person would see that it is. Thus, in order to file a DMCA takedown notice, you have to be pretty sure that copyright infringement is occurring.

The cost of a mistake on this point is that the mistaken party has to pay the other side's attorney's fees, which could be substantial depending on who the opposing party is and who their attorneys are. Imagine the kind of legal bill a company like Universal could rack up and imagine having to pay it off.

It seems equally clear that the use of Crooks' picture would be covered under "fair use," especially considering that he has put himself forward as a public figure (appearing on Hannity and Colmes for his site forsakethetroops.com) and for his subsequent newsworthy acts on Craigslist, and that the nature of the 10 Zen Monkeys blog post was criticism and commentary.

A point that is interesting is that misrepresenting that one is authorized to act in 512(c) makes one liable for perjury and misrepresenting that copyright infringement is occurring under 512(f) makes one liable for attorney's fees. A straightforward reading of the statute indicates that the penalty is much less for misrepresenting one's authorization than the activity going on, meaning that it's "better" to make a random claim over someone else's work than it is to make an overreaching claim over your own copyrighted material. Diehl's complaint is seeking damages under 512(f) because he has Crook caught under both sections, since he both misrepresented his authorization to act and whether the use was infringing.

The Takedown Process

Shoot First, Ask Questions Later
The thing to take away from this dispute is what the DMCA says on the takedown process itself. The DMCA promotes a "shoot first, ask questions later" response from ISPs upon receipt of a takedown notice. First, 512(c)(1)(A)(iii) obliges an ISP to "act expeditiously to remove, or disable access to, the material" upon receipt of a takedown notice if the ISP is to maintain its status within the "safe harbor" and avoid liability for the user's acts. If the ISP doesn't, it might be liable as a contributory infringer. Second, Section 512(g) says that an ISP can't be held liable for taking down a user's material, regardless of whether the material is actually infringing, so long as the ISP follows a process specified by the statute. What people don't necessarily realize is that a DMCA takedown notice is merely a letter from the purported copyright owner to the ISP claiming infringement. One does not need accept what the letter says.

Takedown Notices and Counter Notices
The counter notification process follows a "last to speak wins" process, where the ISP is only obligated to listen to the last party to speak on the issue. Section 512(g) says that an ISP is not liable to a user for wrongly taking down material pursuant to a DMCA takedown notice if the ISP:

(A) takes reasonable steps promptly to notify the subscriber that it has removed or disabled access to the material;

(B) upon receipt of a counter notification described in paragraph (3), promptly provides the person who provided the notification under subsection (c)(1)(C) with a copy of the counter notification, and informs that person that it will replace the removed material or cease disabling access to it in 10 business days; and

(C) replaces the removed material and ceases disabling access to it not less than 10, nor more than 14, business days following receipt of the counter notice, unless its designated agent first receives notice from the person who submitted the notification under subsection (c)(1)(C) that such person has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material on the service provider’s system or network.

Whether or not an ISP is required to notify a user that a takedown notice has been initiated is debatable since "reasonable steps" allows that ISP to claim that it could not locate or sufficiently identify the user in question. The odds are that a user would receive notice from their ISP (eg. by email) if a takedown notice was in the works, but if not, that user might want to find out whether its ISP may be liable if it turns out the takedown notice was bogus.

Another point is that there's no reason under the statute why the ISP can't notify the user of the takedown notice before removing the material. The requirement to "act expeditiously" doesn't preclude this option. Ethan Ackerman made this point regarding BB's posts on the dispute.

The user may elect to send a counter notification to their ISP protesting the takedown letter. Under 512(g)(3), such a letter must be sent to the ISP's designated agent (check your ISP's website) and must include:

(A) A physical or electronic signature of the subscriber.

(B) Identification of the material that has been removed or to which access has been disabled and the location at which the material appeared before it was removed or access to it was disabled.

(C) A statement under penalty of perjury that the subscriber has a good faith belief that the material was removed or disabled as a result of mistake or misidentification of the material to be removed or disabled.

(D) The subscriber’s name, address, and telephone number, and a statement that the subscriber consents to the jurisdiction of Federal District Court for the judicial district in which the address is located, or if the subscriber’s address is outside of the United States, for any judicial district in which the service provider may be found, and that the subscriber will accept service of process from the person who provided notification under subsection (c)(1)(C) or an agent of such person.

A user needs to know that by filing a counter notification, he or she has made themselves available to be sued in Federal District Court. Before the counter notification, the copyright owner may or may not know the identity and location of the user. If the user's identity is unknown, the easiest thing for the copyright owner to do is simply to ask the ISP to take down the material. However, once the user submits their name, address, and consent to jurisdiction in Federal Court, the barrier to being hauled into court have dropped significantly. If the user isn't known and no counter notification is sent, then we are getting into the realm of the RIAA suits against file sharers and it seems that most copyright owners do not avail themselves of subpeoning ISPs to find users.

And as said before, a bogus claim that the material is not infringing will bring a user under Section 512(f) for misrepresentation.

Once the counter notification is sent to the ISP, it must forward it to the person who filed the takedown notice. At this point the ISP must replace the removed material in no less than 10, but no more than 14 days. Only if the person who filed the original takedown notice tells the ISP that it "has filed an action seeking a court order to restrain the subscriber from engaging in infringing activity relating to the material" will the ISP be required to keep the material offline. It's worth noting here that anyone Once this last notice has been sent from the takedown notice sender to the user, the whole affair has effectively been moved into Federal court and is out of the ISP's hands. Of course, when I say the "ISP must" it doesn't mean that the ISP can't behave otherwise. It only means that if the ISP wants to remain immune from suit for copyright infringement itself, it has to take these steps. "Must" then becomes "will" because no ISP would rightly want to get involved in these kinds of cases.

Jeff Diehl's Response to the Takedown Notices

Getting back to the lawsuit, it appears that Diehl was sent 3 different takedown notices and took the material down all 3 times. At no point did Biehl send a counter notification to his ISP. Instead he picked up and moved to a more friendly ISP in Laughing Squid, presumably because he's friends with its owner and thought his ISP would be supportive of his position. A reader might be inclined to think that Biehl would have been rather helpless without his connection at Laughing Squid, but the fact is that the same DMCA that is accused of being so draconian nevertheless gives users like Diehl some ability to defend themselves. It's just as easy for Diehl to fire off a counter notification as it is for someone like Crook to "use the [DMCA] to stifle free speech," as Diehl accused in the post linked above.

The Notice-Counter Notice regime shares much with a simple game of chicken: the first to wuss out loses. If Diehl was so convinced of his claim, he could have sent a counter notification and waited to see if Crook would have returned with a lawsuit. If Crooks balked, then Diehl's material would have been put back online. If Crooks sued, well, then Diehl wouldn't be much farther away from where he is now. Crooks would also have had to think much harder about whether to pursue his claims before a real judge, which can get expensive and even more so if the claim really is bogus. A party like Universal or the RIAA might not think twice about filing a lawsuit, but the economic cost/benefit analysis is a bit different for an individual, even for someone like Crooks.

All in all, Diehl did not avail himself of the takedown notice procedures outlined in the DMCA. I do not know how this will effect his case against Crook, but the fact does appear relevant. A plain reading of the statute does not seem to support the contention that a person who falsely files a takedown notice can be taken to court immediately following the issuance of such a notice. This would seem to make the whole idea of a counter notification process pointless. The Diebold case also appears to have failed to followed the DMCA's full takedown procedures, but then again, Diebold withdrew from its infringement claims and issued retractions of its takedown notices.

The biggest problem with the takedown procedure is that its default position is one that tends to assume that copyright infringement is taking place. If an ISP were to contact users of DMCA takedown notices before removing the material, this assumption isn't that strong, but most ISPs don't behave this way. As is, once the ISP gets a takedown notice of any sort it will usually just pull the material down and let the user know in due course.

The DMCA process thus essentially grants a copyright owner about a 10 day window in which the material won't reappear once a takedown notice is sent. If the process laid out in the statute is followed, and a counter notification is sent to the ISP, the material can be reposted without further issue after 10 days (this would be handy if a copy of a new album makes it online a few days before its official release, assuming the RIAA didn't care that it was out there afterwards). For some, this required down time of 10 days is too much, and I agree, especially when talking about protected forms of speech. If important documents surfaced within 10 days of an election, for instance, it would be an infringement of free speech for a "copyright owner" to force the ISP to remove the material until after the election with no other recourse than a counter notification.

So I guess its just best to say that a user has an option when a DMCA takedown notice comes to its attention. Either fire off a counter notification or head down to court and get an injunction against the notice's issuer.

A Takedown Notice as a Binding Contract

A thought that will really rile up some people is that a court could find that abiding by a DMCA takedown notice could constitute a binding contract prohibiting the user from reposting the removed material. Though not dealing with a DMCA notice, a Pennsylvania court found that a doctor's demand that potentially defamatory material be taken down off a patient's website, and in return the doctor promised not to sue, became a binding contract once the patient removed the material at issue. In this case, the doctor was a Lasik specialist and the patient was left legally blind because of the doctor's malpractice. The court said that the patient was in breach of his contract with his doctor when he reposted material critical of him after their previous agreement.

That obeying a takedown letter could be a binding contract may be far-fetched in the DMCA context because both the user, if the user is contacted and decides to follow the letter, and the ISP, if the user fails to respond, may be responsible for removing the material and it would seem doubtful that the ISP would or could be consenting to such binding terms. The idea may also be wrong for many other reasons, but it does not appear that the DMCA is suited to handle situations where one user continually and repeatedly posts allegedly infringing material, is sent a takedown notice, abides by the takedown notice, and then posts again. At some point a court surely could find that the takedown process is also like something else, such as the formation of a new contract between the parties. Funny enough, if that were to happen here, Diehl would surely lose on this point.

So What?

In the end, the whole sage between Diehl and Crooks serves as a great snapshot of the state of user generated content online in terms of the DMCA. First, the DMCA makes it really easy to suppress anything relating to copyright infringement online and gives ISP an incentive to go along. Second, those who publish online don't really know how the DMAC gives them some protection. After all, if you're ignorant of your rights you can't very well exercise them and will thus continuously be taken advantage of. Third, it doesn't seem that ISP's even know how the entire DMCA takedown process is supposed to work since it appears that Laughing Squid did not even mention to Diehl that a counter notification was an option.

The lesson? If you're publishing online, especially if you make money doing it, but anyone who considers themselves a "blogger," you should be very familiar with Section 512 of the DMCA and Section 230 of the CDA (which covers defamation). This really is the dividing line between "amateur" content and "user generated" content, if you will. Amateurs are just goofing around. Users' interests and effort are slightly higher, and as such, they should become aware of their legal surroundings. There's no excuse: learn it, know it, live it.

The Video of Crook on Hannity and Colmes

Not only is Crook in trouble for misrepresenting authority over copyrighted materials in his DMCA action against Diehl, but Crook has been active in having clips of his appearance on Hannity and Colmes removed from YouTube. It seems as if LindaSoG at Something... and Half of Something takes credit for putting the clip up and claims that it received a notice from YouTube taking it down. SaHoS has provided access to the clip. Here's how SaHoS approached the copyright issue:

So, I've contact Hannity and advised that I have made the video available on my website and, unless and until the owner of the copyright, Fox News that is, complains of copyright violation, the video of Michael Crook's appearance on Hannity and Colmes will be available right here on lindasog.com.

I've also advised my host as to who owns the copyright to the video of Michael Crook's appearance on Hannity and Colmes. Any false claims or accusations will be dealt with accordingly.

That was written May, 2005, which leads me to conclude that there's probably a whole army of people pissed off at Crook for misusing the DMCA that he could be in even bigger trouble than from just Diehl. Perhaps it's best to remind people that it's best not to act out and draw attention to yourself for creating controversy when the Internet can quickly make you a star and universally loathed without providing an easy way to crawl back into the shadows.

Google Updates Its Approved Uses

The Official Google Blog has more clarification on the proper use of Google as a verb. Google as a noun is good. Google as a verb is ok only if you're talking about Google. Google as a verb when talking about using Yahoo! is right out.

I liked the Google's old examples of proper use better.

Google Gets Into the Wiki Business

It's no secret that Google's success relies heavily on new content being added to the Internet, because it makes search that much more important, so it's not surprising to hear that Google bought JotSpot, a Wiki creation service. Can't wait to try it out once registration for the site reopens. If you're a skeptic, you could view this as merely another boost to Google's brand visibility as it gets lots of press for purchasing sites that end up tanking.