Category Archives: copyright infringement

May Copyright Infringement Suits Allow the Use of Blanket Subpoenas to Identify Anonymous Users of Potentially Infringing Internet Content? Originally Published Jan 28, 2014

Is it abusive for a company alleging copyright infringement to uncloak the anonymity of users of adult content in an effort to embarrass them into settling marginal claims? That issue was considered by the Court in Amselfilm Productions v. Swarm, 6A6DC, 12-cv-3865.
In that case, the plaintiff clearly was the object of infringing conduct by persons using BitTorrent – a peer to peer method of sharing content anonymously. The only question was whether the plaintiff could issue blanket subpoenas to obtain the IP addresses of the groups (“swarms”) of BitTorrent users and then coerce these individuals to obtain individual settlements with them. The implication was that if these individuals did not settle, their names would be made public, causing embarrassment over the fact that they potentially had downloaded adult content. This became a particularly important issue because so many of the claims of infringement were relatively unsubstantiated, i.e., how does one prove that any one individual within the larger “swarm” specifically downloaded specific content on a specific day?
The Court found that this was a misuse of legal process and procedure and prohibited employing such subpoenas without more of a showing of a particularized set of circumstances. In other words, there would have to be some level of demonstration suggesting that a particular individual had downloaded specific infringing content.
This case is one of many throughout the U.S. in which the practice of issuing blanket subpoenas successfully has been challenged.
© 2014 Nissenbaum Law Group, LLC

Will Forcing Institutes of Higher Education to Guard Internet Networks Against Piracy Decrease the Rate of Illegal Downloading?

As the accessibility and knowledge of how to use technology has increased, so has the ability to take advantage of them. College students today have found loop holes in downloading files for free and this has caught the attention of entertainment industries. An excellent article Colleges and Universities Join Anti-Piracy Fight discusses how the Recording Industry of America (RIAA) and the Motion Picture Association of America (MPAA) have waged a battle on piracy for many years but finally urged for provisions to the Higher Education Opportunity Act of 2008
Aside from institution requirements and information on available grant programs, the Higher Education Opportunity Act of 2008 contained synopses of law provisions that would affect the higher education system. One of which focused on Copyright Infringement, which stated that institutions needed to “develop plans to detect and prevent unauthorized distribution of copyrighted material over campus networks”. It expanded to include all forms of intellectual property, including music and video files (
Nonetheless, RIAA and MPAA continued to complain that piracy was an increasingly rapid problem. According to an analysis by the Institute for Policy Innovation, global music piracy was the direct source for $12.5 billion of economic losses and 71,060 U.S. job losses per year ( Furthermore, it was recorded that only 37% of acquired music by American consumers was paid for in 2009.  From these numbers, it was quite obvious that piracy had a negative impact on the music industry.
Since college students were/are some of the most avid music and media consumers in today’s society, clearly, some of the blame needed to be placed on the absence of stricktly enforced anti-piracy policies at universities and colleges.  As a result, entertainment industries wanted the provision to require universities and colleges to “implement at least one ‘technology based deterrent’ such as blocking file transfers, traffic shaping, or preventing access to peer-to-peer file transfer sites”. In the absence of that, it wanted to deny access to federal student financial aid.
The provision was made effective in 2010, and has received both positive and negative reviews. Some universities and colleges were able to successfully implement anti-piracy technology devises and have testified in having less copyright infringement notifications. On the other hand, the issue of piracy will always be a concern, as one cannot completely control the use of technology. To some, this new provision also seems to be just another tactic for entertainment industries to monopolize online music and media.

Does the Discovery Rule Apply to Copyright Infringement?

In Urbont v. Sony Music Entertainment, No. 11 Civ. 4516 (S.D.N.Y. March 27, 2012), the federal District Court for the Southern District of New York was presented with the question of whether the discovery rule applies to causes of action under the Copyright Act.

The discovery rule allows parties to extend a statute of limitations because they did not have reason to know, nor did they know, that they had a potential cause of action.  In this case, application of the discovery rule would have extended the three (3) year statute of limitations under the Copyright Act for infringement.

The court determined that the discovery rule would not apply here because there was no evidence of material concealment of the fraud that led to the alleged infringement.  Instead, the plaintiff had complete access to all the information necessary to determine that an infringement had taken place, and he had simply not brought his cause of action within the applicable period.


© 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

Should Appropriation Artists Be Protected By Fair Use?

Appropriation artists deliberately copy images and present them in a new version or context.  This art form has become a popular form of creative expression. But is it legal? 

The United States District Court for the Southern District of New York recently faced that question and determined whether appropriators of images belonging to others are entitled to use the defense of fair use against a claim of copyright infringement. Cariou v. Prince, 784 F.Supp. 2d 337 (S.D.N.Y. 2011).

The plaintiff in that case, professional photographer Patrick Cariou (“Cariou”), had spent six years in Jamaica. After gaining the trust of the Rastafarians, he had been permitted to take their portraits. In 2000, Cariou published a book of his photographs. The book contained those portraits as well as landscape photos he had taken throughout Jamaica. According to the book’s colophon page and his testimony, Cariou was the sole copyright holder of the images that appeared in his book.

The defendant, Richard Prince (“Prince”), was a well-known appropriation artist who had shown his work at several museums. During an exhibit at a hotel in St. Barts between December 2007 and February 2008, Prince showed a collage entitled “Canal Zone (2007)” which included 35 photographs that had been taken from Cariou’s book. Prince painted over some portions of the photos. Some were displayed in their entirety, while others were only partially shown. Prince intended to use “Canal Zone (2007)” as a means of introducing characters he intended to include in a planned series of artworks. Cariou eventually claimed that Prince had infringed on his copyright, but Prince asserted that his works were protected by the defense of fair use.

The principle that photographs are protectable by the our copyright laws is over 100 years old. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). Cariou clearly possessed undisputed ownership of a valid copyright in the photos.

The Court then considered whether Prince’s use of Cariou’s copyrighted work should be protected as a type of fair use. When determining whether a particular use of a copyrighted work qualifies as fair use, courts will consider four factors:

1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2) the nature of the copyrighted work;

3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. §107.

First, the Court considered the purpose and character of Prince’s use of the photos. It found its purpose to be substantially commercial, and interpreted Prince’s failure to obtain permission (and the co-defendant Gagosian Gallery’s failure to inquire as to whether Prince had obtained permission) to constitute bad faith. Cariou at 350-1. Thus, it determined that the first prong weighed heavily against Prince. In other words, it weighed against a finding that the doctrine of fair use applied.

Second, the Court found that Cariou’s photos were highly original and creative (as opposed to factual or informational). Again, the Court held that the use of such works without permission also weighs against fair use. Id. at 352.

Third, the Court considered the amount and substantiality of the portion of Cariou’s photos used in Prince’s works. It found that, in the majority of his works, Prince appropriated central figures that went to the very heart of Cariou’s works, and that this factor also weighed heavily against a finding of fair use. Id.

Finally, the Court found the fourth factor also weighed against fair use because Prince’s secondary use “unfairly damaged the original market for [Cariou’s] [p]hotos and, if widespread, would likely destroy any identifiable derivative market for [them].” Id. at 353. Because none of the four factors considered supported fair use, the Court found that the defendants were not entitled to the defense of fair use. Id. Accordingly, Cariou prevailed.

The Court’s decision in Cariou provides a framework for how other courts might treat appropriation artists who claim their alleged copyright-infringing behavior should be protected by fair use. This decision suggests that courts are less likely to accept a fair use defense when an appropriation artist produces a highly-commercial work that features the heart of the original work but the artist does not obtain the permission of the original author.


© 2012 Nissenbaum Law Group, LLC

Is a notice terminating a license to use a copyrighted composition sufficient to establish willful copyright infringement?

In a recent decision, the United States District Court for the Southern District of New York held that evidence that a record company continued to sell records containing copyrighted compositions after receiving a notice terminating its compulsory licenses for failure to pay the required statutory royalties was sufficient to establish that the infringement was willful. EMI Entertainment World, Inc. v. Karen Records, Inc.  2011 WL 3795037, 1 (S.D.N.Y.,2011).

Plaintiff, EMI Entertainment World, Inc. is a music publisher and owns copyrights in the four musical compositions at issue in this case. EMI receives royalty payments for its compositions through Harry Fox Agency. Defendants are record companies owned by individual defendants Isabel Rodriguez and her husband Bienvenido Rodriguez. On Janurary 14, 2005, EMI filed a lawsuit for copyright infringement against the record company. Following discover, the Court granted partial summary judgment to EMI with respect to its claims of copyright infringement of the works for which royalty was not paid. However, the Court denied summary judgment to EMI for its claims for statutory damages for willful infringement. The Court requested the parties to submit supplemental evidence indicating the number of infringing sales that occurred during the time period for which damages were sought.

A plaintiff who successfully proves copyright infringement may request the court to award statutory damages under 17 U.S.C. §504(c) in addition to the award of actual damages and profits. “The Copyright Act affords a trial court ‘wide discretion … in setting the amount of statutory damages.’” Id at 2. In determining this amount, the trial court takes into account ‘the expenses saved and the profits reaped by the infringers’; ‘the revenues lost by the plaintiff’; ‘the value of the copyright’; ‘the potential for discouraging the defendant’ and ‘the deterrent effect on other besides the defendant.’ Id. In addition to these factors, it is also relevant to determine whether the defendants conduct was willful or innocent. To prove willful infringement under the Copyright Act, the plaintiff must show that the:

(1) Defendant was actually aware of the infringing activity; or

(2) Defendant’s actions were the result of the reckless disregard for, or willful blindness to, the copyright holder’s rights. Id. at 3.

In this case, EMI advanced three reasons for the Defendant’s willful infringement:

(1) The individual defendants had extensive experience in the industry who owned ‘more than six hundred copyrighted sound recordings and musical compositions’. Id. at 4.

(2) EMI’s prior suit against the Defendant’s with respect to other copyrights made the Defendant’s ‘well aware of the obligations to obtain mechanical licenses and pay statutory license fees for the use of others’ musical compositions.’ Id at 5.

(3) EMI’s letter to the Defendant’s put them on notice about the termination of its compulsory licenses for failure to pay the required statutory royalties. Id.

The Court held that EMI presented a strong circumstantial evidence of willfulness which warranted an award of enhanced statutory damages. The Court awarded EMI $25,000 in statutory damages for infringement of each composition.


© 2011 Nissenbaum Law Group, LLC

Will the Use of Common Elements and Themes Leave Filmmakers Susceptible to Copyright Infringement Suits?

Tales of drug-dealing, jail time and growing up in the ghetto are too common to be considered original elements of a copyrighted work.

The United States District Court for the District of New Jersey recently granted hip-hop artist 50 Cent’s motion to dismiss a suit brought by a plaintiff who sued the rapper for copyright infringement. Winstead v. Jackson, 2011 U.S. Dist. LEXIS 107560 (D.N.J. 2011).

The plaintiff, Shadrach Winstead (“Winstead”), claimed that 50 Cent (also known as Curtis Jackson) (“Jackson”) used words and plot themes from Winstead’s copyrighted autobiography “Preacher’s Son – But the Streets Turned Me Into a Gangster” (the “book”) in a CD/DVD set produced by Jackson in 2009. Winstead asserted that several elements from the autobiography – including jail time for the main characters, committing crimes for money, and the death of a parent – were also present in Jackson’s production “Before I Self-Destruct” (the “film”). Winstead also claimed that portions of dialogue were taken from his book and used in the script of the film.

Jackson filed a motion to dismiss the suit, arguing that Winstead failed to state a claim upon which relief can be granted. The Court granted Jackson’s motion, determining that the elements that Winstead argued he had copyright protection over were so common that they could not be considered copyrighted material. The decision relied on a copyright law doctrine known as “scenes a faire” which essentially means that there are certain elements to a work that are not protected by copyright since they are essential to express the character of the work itself.

To establish a claim of copyright infringement, a plaintiff must establish:

  1. ownership of a valid copyright; and
  2. unauthorized copying of original elements of the plaintiff’s work.”

Dun & Bradstreet Software Servs. v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d. Cir. 2002).

Though Winstead was able to prove ownership of a valid copyright in his book, the Court found that he could not prove any copying of original elements from his work. “[G]eneral plot ideas and themes lie in the public domain and are not protected by copyright law,” the Court stated. Id. at 6. “In addition, all situations and incidents which flow naturally from a basic plot premise, known as scenes a faire, are not entitled to copyright protection.” Id.

While the Court acknowledged the similarities between the two works’ characters, themes and settings, it held that these common features have been part of the public domain for some time and have provided the themes for many films and television programs before. “[A]ny common themes of a young male whose tumultuous upbringing leads him to resort to a life of crime and violence in order to gain power and money are scenes a faire.” Id. at 7.

Winstead also argued that Jackson lifted dialogue from his book – including phrases such as “ringing,” “stash,” and “get the dope, cut the dope” – for use in the film. However, the Court also found this language too common to be the protected under Winstead’s copyright. “The average layman, who would be observing these phrases in the context of an overall story or song, would not regard these minute snippets as unique or protectable,” the Court held. Id. at 9.

The Court’s decision is significant because it demonstrates that there are limits to how much copyrighted material is protected. Winstead’s copyright protection over his book did not extend to plot themes and generic language used in it. The Court’s holding gives copyright holders an example of elements in the public domain that are not included within the scope of copyright protection.


© 2011 Nissenbaum Law Group, LLC

When is an idea for a television show so “substantially similar” to the idea for another that it violates copyright law?

Recently, the a Federal Court in the State of New York was asked to decide whether the Spike television show, “Pros v. Joes”, was similar enough to a proposed show called “Two Left Feet”, such that it infringed upon the copyright issued to Two Left Feet.  Castorina v. Spike Cable Networks, Inc., No. 10-2954 (March 24, 2011).
In 2004, Plaintiffs Christopher Castorina and Steven Morse (“Plaintiffs”) pitched a treatment for a television show called Two Left Feet.  That treatment proposed a show where amateur athletes would compete against professional athletes.  In 2006 after Pros v. Joes debuted on Spike, the Plaintiffs sued Spike in the United States District Court for the Eastern District of New York claiming that Pros v. Joes was so “substantially similar” to Two Left Feet that it infringed upon the copyright issued to Two Left Feet.
The Plaintiffs claimed that the two shows were similar in that: 1) each portrayed competition between professional athletes and amateur athletes; 2) the competitions were in the sports of basketball, hockey, baseball, and football; 3) each employed two judges of notably different personalities and backgrounds; 4) each had guest appearances by celebrity sports figures; and 5) each used virtually the same language to promote the shows.  The Plaintiffs took the position that “no theory of coincidence, simultaneous creation, prior common source or any explanation other than copying” could account for the similarities.  Id.
In order to establish copyright infringement, the Plaintiffs had to establish: 1) ownership of a valid copyright; and 2) copying of constituent elements of the work that were original.  Id.  To establish the second element, the Plaintiffs had to prove that Spike actually copied the Plaintiffs’ work and that the copying was illegal because “a substantial similarity exists between the defendant’s work and the protectable elements of plaintiffs’.”  Id.
At the outset, the court noted that, “the standard test for substantial similarity between two items is whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard [the] aesthetic appeal as the same.” (the “Ordinary Observer Test”). Id. citing Peter F. Gaito Architecture, LLC v. Simeone Development Corp., 602 F.3d 57, 63 (2d Cir. 2010).  When applying the Ordinary Observer Test, a court must ask whether “an average lay observer would recognize the alleged copy as having been appropriated from copyrighted work.”  Id. citing Gaito, 602 F.3d at 63.  The inquiry must address whether the “alleged infringer has misappropriated the original way in which the author has selected, coordinated, and arranged the elements of his or her work.”  Id.  There must be substantial similarity in the expression of ideas and not just in the ideas themselves.  “If a work ‘copies the original way in which the author has selected, coordinated, and arranged’ these unprotectable elements to such an extent that the copying work is substantially similar to the ‘expression of ideas’ and ‘total concept and overall feel’ of the copied work, infringement can occur.”  Id. citing Gaino, 602 F.3d at 66-67.
Based upon the evidence presented, the court determined that Two Left Feet consisted largely of stock concepts and Scène à faire – the concept that certain elements of a creative work are not protectable via copyright because they are mandated by or customary to the genre.  The court held that Pros v. Joes could only infringe upon Two Left Feet “if it copied the ‘original way in which the author has selected, coordinated, and arranged’ various elements to such an extent that its ‘expression of ideas’ and ‘total concept and overall feel’ was substantially similar to the Two Left Feet treatment.”  Id. citing Gaino, 602 F.3d at 66-67.
The court determined, and the Plaintiffs conceded, that the Two Left Feet treatment contained only limited original selection, coordination, and arrangement.  Plaintiffs claimed that they purposely left the treatment vague to show their “flexibility.”  Unfortunately for Plaintiffs, the court found that “the treatment’s vagueness, however intentional, also undercuts its protectability, because the less ‘specifics’ and ‘detail’ it contained, the less it uniquely and imaginatively ‘selected, coordinated and arranged’ the stock elements contained within.”  Id. citing Gaino, 602 F.3d at 66-67.  The treatment’s selection, coordination and arrangement of those stock elements were also largely inherent to a sports reality show and “not ‘original’ creative expressions of any particular idea.”  Id.
The court also pointed out numerous differences between the shows.  For example, while Two Left Feet relied heavily on the dynamic between two judges, one “good” and one “evil”, Plaintiffs did not allege that Pros v. Joes utilized a similar creative choice.  Two Left Feet also envisioned the hosts providing their subjective beliefs and acting as judges, while winners on Pros v. Joes were determined using an objective points system, such as the number of baskets scored.  Also, in Two Left Feet the amateurs competed against the professionals in the sport played by the professional.  In Pros v. Joes the contestants might compete against the professional in the professional’s sport, but with a twist – e.g.  shooting baskets from a moving conveyor belt.

In conclusion, the court held that based upon the evidence “no objective observer could conclude that Two Left Feet and Pros v. Joes share a substantially similar total concept and overall feel.”  Id.  As a result, the court granted Spike’s motion to dismiss the Plaintiffs’ complaint.