Monthly Archives: June 2012

What Federal Jurisdiction Should Apply in the Lawsuit Concerning Dish Network’s Commercial-Skipping Television Broadcasting Capability

Dish Network is in a dispute with almost all of the major television networks over Dish Network’s offering to consumers that allows them to skip commercials in television shows.  The lawsuit is in its earliest stages.  The issue being decided now is what jurisdiction should hear the federal lawsuits.

The reason that this has become such a tangled issue is because not only have CBS, NBC, Fox and Dish itself filed separate lawsuits, but Dish’s lawsuit was filed in New York while the others were filed in California (ABC has not yet filed suit).  This is important because New York case law would appear to favor the Dish Network’s position more than that of the networks.


© 2012 Nissenbaum Law Group, LLC

How Much Copyright Protection Is Granted To A Twitpic?

Does copyright protection extend to original pictures that users post on their Twitter account? That question was considered by the United States District Court for the Southern District of New York last year. Agence France Presse v. Morel, 2011 WL 147718 (S.D.N.Y. Jan. 14, 2011).

The defendant, Daniel Morel (“Morel”), was a photojournalist working in Haiti when an earthquake devastated the city in January 2010. After photographing the aftermath, he opened his Twitter account as well as Twitpic, a third-party application of Twitter. He uploaded his earthquake photos to Twitpic and then posted a message on Twitter that advertised that he had “exclusive earthquake photos,” while also providing a link on Twitter to his Twitpic page. There were no copyright notices on the images themselves, but his Twitpic page included the attributions “Morel” and “by photomorel.”

Minutes after the photos were posted, Dominican Republic resident Lisandro Suero (“Suero”) copied the photos, posted them on his Twitpic account and then “tweeted” that he had the “exclusive photographs of the catastrophe for credit and copyright.” Morel at 2. He did not give attribution to Morel. Eventually, the plaintiff, Agence France Press (“AFP”) and many other international news agencies began to acquire photos of the devastation. AFP emailed Morel asking if he had pictures the agency could use, but before he responded, AFP downloaded 13 of Morel’s earthquake photos from Suero’s Twitpic page. AFP placed the photos in its image forum, where they were transmitted to Getty (Getty holds exclusive rights to market AFP images in North America). AFP then included a credit line of “AFP/Getty/Lisandro Suero.” Getty subsequently licensed the photos to other news outlets, including CBS and CNN.

In December 2010, AFP brought a declaratory judgment action that alleged that it had an express license to use Morel’s photos and thus did not infringe on his copyright. In a counterclaim, Morel alleged that AFP had in fact infringed on his copyright. AFP made a motion to dismiss Morel’s counterclaim, but the Court denied it.

To prevail on a claim of copyright infringement, a plaintiff must demonstrate both:

1)      ownership of a valid copyright, and

2)      infringement of the copyright by the defendant.

Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 108-09 (2d. Cir. 2001).

However, even where both elements of the infringement claim are met, the existence of a license is a valid defense. Tasini v. N.Y. Times Co., Inc., 206 F.3d 161, 170-71 (2d. Cir. 2000). AFP argued that the Twitter and Twitpic Terms of Service granted the news agency an express license to use Morel’s photos and thus did not infringe on his copyright. However, the Court did not accept the argument, finding that the Terms of Service “by their express language […] grant a license to use content only to Twitter and it partners. Similarly, Twitpic’s terms grant a license to use photographs only to or affiliated sites.” Morel at 6. The Court held that because AFP was not a partner or affiliate of Twitter, it had not proven that it had an express license to use the photos.

AFP also argued that it should be considered a third party beneficiary of the agreement between Morel and Twitter. However, the Court held that the contracting parties must have intended to benefit the third party in order for that party to be considered a beneficiary of the agreement. The Court did not find any evidence that the language of the agreement indicated any intention to confer a license upon third parties, even though the language might have encouraged re-use of any content that is posted. “That language is ambiguous and insufficient to establish on the pleadings that Morel ‘understood that [Twitter] had [the] intent’ to confer a license on other users.” Id.

The Morel Court declined AFP’s motion to dismiss the plaintiff’s counterclaim and found that the photographer could proceed with his copyright infringement claims.


© 2012 Nissenbaum Law Group, LLC

How Does LinkedIn Affect What Can And Cannot Be Considered A Trade Secret?

Employment agreements and other contracts have traditionally been drafted in a manner that prevents a former employee from sharing their former employer’s trade secrets and other confidential information with a new business. However, as professional social networking sites, such as LinkedIn, become more prevalent and users are more willing to share information on them, courts have begun to reconsider what type of corporate information should be considered confidential.

The United States District Court for the Eastern District of New York recently considered this problem. Sasqua Group, Inc. v. Courtney, 2010 U.S. Dist. LEXIS 93442 (E.D.N.Y. Aug. 2, 2010). The plaintiff, Sasqua Group (“Sasqua”), alleged that its former employer, defendant Lori Courtney (“Courtney”), provided her new employer with Sasqua’s confidential trade secrets, including its customer list. In its complaint, Sasqua asserted that their trade secrets included confidential, proprietary and competitively sensitive information about (a) its client contacts; (b) their individual profiles; (c) their hiring preferences; (d) their employment backgrounds; and (e) descriptions of previous interactions with client contacts. The company claimed that all of the information was kept in a central database and maintained by a computer technician. Sasqua also claimed that the information was not available from any public source and is not information that could be easily duplicated.

Under New York law, courts consider several factors in order to determine whether information constitutes a trade secret, including:

1) the extent to which the information is known outside of the business;

2) the extent to which the information is known by employees and others involved in the business;

3) the extent of measures taken by the business to guard the secrecy of the information;

4) the value of the information to the business and its competitors;

5) the amount of effort or money expended by the business in developing the information; and

6) the ease or difficulty with which the information could be properly acquired or duplicated by others.

Unisource Worldwide, Inc. v. Valenti, 196 F.Supp.2d 269, 278 (2002).

Additionally, “[a] customer list developed by a business through substantial effort and kept in confidence may be treated and protected at the owner’s instance against disclosure to a competition, provided the information it contains is not otherwise readily ascertainable.” Id. Knowledge of a customer’s needs and prices charged to that customer are also considered confidential.  In order to claim misappropriation of a trade secret, a plaintiff must prove that:

1) it possessed a trade secret; and

2) the defendant is using that trade secret in breach of an agreement, confidence, or duty, or as the result of discovery my improper means.

Computer Associates International, Inc. v. Bryan, 784 F. Supp. 982, 987 (E.D.N.Y. 1992).

Sasqua could not complete the first prong of this test because the Court did not find that its customer list was a trade secret. Courtney testified that the information could have been acquired through a series of Google searches as well as through professional networking sites such as Bloomberg and LinkedIn. The Court determined that, in earlier years, the information in Sasqua’s database might have been a protectable trade secret because greater time, energy and resources would have been needed to gather such detail. “However, for good or bad, the exponential proliferation of information made available through full-blown use of the Internet and the powerful tools it provides to access such information [today] is a very different story.” Sasqua at 63.

The Court’s decision in Sasqua may have a major impact on trade secret law. Traditional non-compete clauses may need to be revised and drafted in a way that grants protection over — or at least accounts for — information that might be available through social networking sites.


© 2012 Nissenbaum Law Group, LLC