So You received a copyright infringement letter – now what?

by | Feb 7, 2023 | Copyrights, Intellectual Property, Internet, Technology and Privacy Law

You get home and in your mail is a letter, typically from a law firm – accusing you of infringing some obscure copyrighted image you posted on a blog, website or other online location – often one you posted many years before.  It asks for a large payment (at least to you) – often several thousand dollars – to remedy the past alleged infringement.  Many times the law firm sending the letter is a one trick pony – this is all they do – that is to say, they literally make money by threatening (and suing) small alleged infringers.  If the law firm is a real firm – that is to say, they do other things and are enforcing rights of a smaller client as an example, then you probably should take it more seriously.

These copyright holders are often referred to as “copyright trolls” – in reference to their modus operandi of putting copyrighted material on the web – often easy to download, with hidden or hard to find license terms, and then scouring the web and sending these letters, in the hopes that a number of recipients just pay up – because it’s too expensive to hire lawyers.  Done incorrectly by the troll . . . and they can go to jail.  However the trolls often have enough evidence that the claim appears facially valid – and coupled with the possibility of a lawsuit or losing, and the high cost of lawyers – probably a lot of people just pay.  What should you do?

One option of course is do nothing and ignore it . . . and while in many cases the copyright holder might never actually sue you – there is a risk that they do sue you – and often that suit might be in a remote court.  At that point it will probably cost a lot of money to defend it, or settle.  Copyright cases must be brought only in federal court.  So step 1 is to check PACER, and see how “litigious” the plaintiff is. If the plaintiff actually follows through and sues, it is obviously more risky to do nothing. We also recommend internet searching the plaintiff and the lawyer.  Often you may find others who have won, or otherwise successfully defended against them – or worse, you might discover they are “Prenda like” (see the link above) and then you would definitely consider rejecting their offer or reporting them to the authorities for extortion.

Step 2 is to investigate what you did, when you did it, and where you did it.  We have handled many of these cases. A common statement is something to the effect that “I hired a web developer that handled this” – and more rarely “they got the images and told me they were free.”  Just because something is posted on the internet does not make it free.  Just because you had a web developer do it for you does not exonerate you.  Even the free sites, like Pixabay, have license terms.  Some allow unrestricted commercial use, some do not, or require attribution.  If a third party did this, you should review your contract with the developer, and see if they represented that they would create an infringement free website. You might have an indemnification right – in which case you need to make a claim against the developer. If you personally did this, you should see if you can track back to where you copied the image from.  Some sites, particularly social media sites, have very permissive use rights for people on their platform – though often the original image is copied by another user from somewhere else and posted without permission of the owner of the copyright.  You also need to determine if you just linked to the content, or whether you actually copied it and reposted it.  In short, you need to determine if in fact you are responsible for the image or other content that is claimed to be an infringement.  If you copied the image and did not modify it, you need to review the meta data in the image.  Meta data, a portion of which is also referred to as copyright management information or CMI, can be attached to an image to note the author, where to obtain permission, the web site of where the image is available from, and other information. In most cases, it is a violation of US law to modify any CMI in an image.

Step 3 is, if you are a business, to review your insurance policies. In most cases copyright infringement is not within coverage.  However, infringements that are contained in advertising can be, and if you had special insurance, known as media liability1, the policy may cover it. Note that a business is not a formal construct – if you were operating as a sole proprietor and purchased insurance, you should check the policy. You may also have purchased “umbrella” personal coverage that might provide insurance coverage.

Step 4 is to determine  if in fact you are infringing, and if so, whether you have a defense.

In determining if you are infringing and if you might have a defense, some of the factors are:

  • How long ago did this occur?  Was it continuing?  If the initial act occurred more than 3 years ago and the infringement is not a continuing infringement, the statute of limitations may apply and bar the claim.
  • How was the image used – thumbnail? Embedded link (an image tag that references another server), full resolution or lesser resolution?  In some cases some uses of images like thumbnails are less likely to infringe than full resolution copies.
  • Did the image have a copyright notice on it? (please note, such notice could be contained in meta data/CMI and may not be visible)
  • Did you try and remove any CMI?
  • Was the image used in connection with a recent news event, relevant to that event, and associated with reporting on such event?
  • Was the image posted on social media and is that where it came from (some social media sites have broad licenses to re-use those images by other users – at least within those platforms)
  • Did the site generate any revenue of any kind (including 3rd party advertising?)
  • Was the image used in more than one location, in emails, text messages, or posted on other sites?  Each such use might be a separate infringement.
  • If the content is a video and the claim is related to an image in the video (and not the video itself), how long was the image viewable and how prominent was the image?
  • Did the copyright holder provide evidence of registration? A copyright holder in the US cannot sue in court without an actual registration certificate (although they can sue inside of the copyright office, and simultaneously file an application)
  • If evidence was provided, are there any defects in the registration?  Often, the registration is a “group registration” but in fact did not qualify – in which case the registration would be invalid. Group registrations are complex and often authors file them as group registrations but the images are not grouped correctly which can result in a defective registration.
  • Did the copyright holder typically license the image?  How (for example, alone, or solely in a group of other images)?  What was a typical license fee for the image/group?
  • Did you make any effort to try and license the image, investigate etc? Did you get legal advice/clearance?

Some notes about common misperceptions.  The first is that many people immediately think they have a fair use right to use the content. Fair use is a somewhat limited concept in most cases outside of real news reporting.  Every piece of content is not news.  For example, where you ate today and what the food looked like is not news in the typical fair use sense.  If you grab an image that is copyrighted and include it in your foodie blog, that is not normally going to be a fair use just because you think it is news.  However, if the blog is not commercial – in the sense of the blog does not earn you any money – either directly or indirectly, such as from advertising, then that is factor in fair use, though not dispositive.   The second is that many people’s immediate reaction is – well only like 50 people saw the image, or “only my family saw the image” or similar.  Copyright law does not turn on the external number of views.  An infringement occurs if you exercise any exclusive right in the copyright, regardless of whether even one person saw it.  Having said the above, to be sure, fair use is a real legal concept and there are cases in which the unlicensed use of a copyright is permitted under that doctrine.

At this point then, if you have determined there might be an infringement, the question is how to resolve the issue.  Even if you feel like you were making a fair use, just the elimination of risk can have some value.  So then you need to determine – what can a copyright holder recover in damages?

In the US, if the registration was filed within 90 days of publication, or before the infringement occurred, the copyright holder can recover statutory damages and attorneys’ fees.  Those statutory damages range from $750 to $30,000, however, criminal infringement can carry a damage award of $150,000 per infringement.  Having noted that, however “In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.” This is known as an “innocent infringer.” To be an innocent infringer, however, the work needs to have omitted a copyright notice.  If you see a work that has a copyright notice on it (and again, that can be contained in meta data), and you infringe, you cannot be an innocent infringer.

One note about “per infringement” – an infringement is a single exercise of an exclusive right – again, without regard to how many people see the work.  So, for example, the posting of an image on a website is a single act of infringement – whether 1 person or a million saw it.  However, then embedding it in an email . . . is a separate instance of infringement.

Step 5 is now to determine whether to try and resolve the claim yourself, ignore it, or hire a lawyer to resolve it. A few notes on what we have seen:

1. A fair number of letters we see omit a copy of the registration certificate, or any explanation of the claim of infringement.   We would normally never resolve such a claim without seeing the registration certificate and verifying at least to some extent, that the registration is valid.

2. The dollar amount requested is often very bizarre.  For example, $3,568.  How is that determined?  The letters often make no explanation.  In our view, the number should be an even number, most typically based on $200, or $750, unless some evidence of bad faith infringement is shown.

3. The release included or provided if you do pay is often woefully inadequate.  For example, it often is related to a single example.  If a client pays, then it should be released for all uses of any kind in any media through the date of payment. The releases often include other notoriously oppressive language, like arbitration clauses, weird venue clauses in other states, and a variety of other terms that are oppressive and unfair, like future liquidated damages clauses.

While we have helped many of our regular business clients with these issues – it can be tough to help a “one off” personal infringement – as our fees rather quickly approach the amount sought by the copyright troll.

And a final note – if things get very bad and you get sued – HIRE A LAWYER (not us, as we generally restrict our litigation to inside the USPTO).  You may have rights under the AntiSLAPP legislation applicable in many states.  The copyright law generally gives the prevailing party a right to recover their fees – and in some cases in actual court, you can make a special type of offer, and if the plaintiff ultimately wins, but less or equal to your offer, then they have to pay your fees.

Copyright Infringement Small Claims Court Services

by | Jun 8, 2022 | Copyrights, Intellectual Property, Litigation

The Copyright Small Claims Court will be commencing operations in a few weeks (late June, 2022), and Oliver & Grimsley is pleased to announce that we will be providing both plaintiff and defense services for copyright small claims actions.

Copyright small claims actions should be a cost effective way of enforcing copyrights in the United States, if the copyright holder is primarily seeking a determination of infringement, and willing to receive an award of no more than $30,000. There are some considerations to keep in mind, however.

One advantage is that Copyright small claims actions can be filed without having previously received a certificate of registration, and without filing an application for special expedited status (which is expensive). However, an application for a certificate of registration must have at least been filed at the time of filing a small claims action.

The ability to file small claims efficiently should also provide a slightly better basis for pre-litigation resolution, as prior to this, it has always been a bit of a poker game to figure out whether an actual full suit would be filed in Federal court. Federal cases are very expensive, and if the copyright was not timely registered (see note 1), no statutory remedies or attorneys fees are available. With the ability to file claims informally, for much less cost, and without significant risk of years of discovery, a defendant receiving a cease and desist letter will have to more carefully consider whether a small claims action might be filed. However, the defendant receiving a small claims complaint can treat that claim as a true case or controversy, opt out of the proceeding, and commence a declaratory judgment action in some remote location, so this risk is not mitigated with the small claims process.

The biggest problem with the small claims process is that the small claims court is not mandatory – it is elective. If a defendant has such a claim filed against it, it can “opt out” of the proceeding, in which case “If you opt out, the CCB will dismiss the claim against you, but the claimant can still bring the same claim in federal court.” See https://ccb.gov/respondent/. Therefore, a plaintiff could go to the trouble of filing the small claim, spending money and filing fees, only to have the defendant opt out, and then the plaintiff has to start all over again in Federal court. It is virtually never cost effective to file a Federal court claim in the $30,000 range, so it will be easy for defendants who determine their risk is only at or around that number, to opt out and thus bet that the plaintiff will not follow through.

On the other hand, if a defendant believes that the claim is higher than $30,000, and there is real risk of plaintiff winning and also collecting fees (see note 1) – then opting in might make sense for the defendant.

In short, there is no one answer whether a plaintiff should file in small claims, and no one right answer whether a defendant should opt out. However, as the process is currently set up, it is generally going to be more likely that a defendant elects to opt out, especially where the plaintiff failed to timely register their copyright, and cannot seek statutory damages and the collection of attorney fees.

Note 1: Under 17 U.S.C. § 412, statutory remedies and attorneys fees are not available to a plaintiff/copyright holder unless the effective date of registration is either within 3 months of first publication of the work, “or 1 month after the copyright owner has learned of the infringement,” https://www.copyright.gov/title17/92chap4.html#412

Mike Oliver and Kim Grimsley Recognized Again in the 28th Edition of the Best Lawyers®️ in America

by | Aug 19, 2021 | Featured, Firm Matters

Best Lawyers, an international lawyer ranking and referring source that is currently celebrating its 40th anniversary, has announced its 28th Edition of The Best Lawyers in America® for 2022, which will include Mike Oliver and Kim Grimsley.  In order to be featured, lawyers are nominated, critiqued by currently recognized lawyers on the caliber of their work, and analyzed accordingly.

Mike Oliver has been recognized in this publication for the past 16 years since being recognized initially in 2006.  He is also recognized as “Lawyer of the Year” for his work in Trademark Law in Baltimore – which will also be his 8th “Lawyer of the Year” award, having previously been named for his work in various fields, including copyright, intellectual property, and information technology law. This is granted to only one lawyer per specialty and location a year, given to lawyers with the highest overall peer-feedback in such area and region.

Mike has been practicing intellectual property law for over 30 years.  In addition, his knowledge as a computer programmer has been a valuable asset for those clients in the software and technology industry.

Kim Grimsley has been recognized again in this publication for her professional excellence by her peers – she is being recognized in the fields of Copyright Law and Trademark Law.  This will be Kim’s second year being featured.

Kim has been practicing intellectual property law for 20 years, and she has enjoyed working with clients – from start-up businesses to publicly traded companies in all industries – in building and protecting their intellectual property in the United States and worldwide.

Everyone at Oliver & Grimsley would like to congratulate Kim and Mike on their continued hard work and excellence. 

University of Alabama seeing Crimson over recent ruling?

by | May 1, 2013 | Copyrights, Intellectual Property, Licensing, Uncategorized

In University of Alabama v New Life Art, the 11th Circuit Court of Appeals resolved a portion of a long standing dispute over the protection afforded authentic reproductions of college uniforms.  A painter made paintings (and calendars) accurately depicting University of Alabama games.  For many years this practice was unlicensed, but done with the knowledge of the UofA.  Later, the painter began using the paintings he created on mugs, towels, t shirts and so on.   Eventually the University of Alabama required use of accurate depictions of the uniforms to be licensed, and the artist refused.   Therein ensued litigation, now in its 7th year.

The 11th Circuit held that “An artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.”

Thus the paintings were held to be protected under the implied fair use rights under the 1st Amendment, even though they depicted the uniform colors. The other issues were remanded as the record had not been developed on them (somewhat surprising after 7 years of litigation!)

It should be noted that the University had licensing agreements with the artist in some respects (they gave him press credentials to access games and allowed him to create a painting live on air at one point – without however licensing his subsequent sales of reproductions of those paintings).  The terms in the license agreement were very broad, but not broad enough to cover the colors on the uniforms when shown on a uniform.

This case demonstrates that the cost of fair use determinations is substantial, and the findings can be somewhat limiting – indeed, it is not clear the artist will prevail on the other claims – he apparently did not raise fair use on appeal as to them, and there is an argument that the licensing agreements he had signed did cover those items.

Use of an aggressive trademark holders marks, even trade dress, without a license, and even with a fair body of case law finding fair use, can be very risky.

For more information, contact Mike Oliver or Kimberly Grimsley.

Recent court decision in Oracle v Google raises serious copyright questions in certain types of software

by | May 1, 2013 | Copyrights, DMCA, Infotech, Intellectual Property, Licensing, Patents, Software, Uncategorized

In a decision in the Oracle v Google case, the court held that APIs – application program interfaces – small amounts of human readable source code, are not sufficiently original to qualify as copyrights.  This decision can impact API licenses, which most likely are based on copyrights.

What Google did.  Google decided that to construct a mobile platform operating system (ultimately, the Android operating system) it wanted to be able to “interoperate” with java programs – in this way, developers could rapidly publish their programs written in Java, to the mobile platform.  In order to do this, however, Google either needed a license to the Java virtual machine to allow it to “port” it to the mobile hardware, or it needed to emulate that environment.  Google approached Sun (later bought by Oracle) for this license, but the parties never agreed.  Google eventually copied the names of the base classes and methods, and wrote its own original code to implement the particular functions.  So as an example, a Java program would call a function, using the precise identical name of the function, class or method, but the “behind the scenes” black box code in Android that returned a result, was written by Google and not copied from Java.  Google did a few other things (for example, they decompiled some executable code in Java, and used the source code derived from that to test their own software compatibility, and they included verbatim 9 lines of code in a range check function, which the court utterly dismissed as De-minimis copying)

What Oracle claimed.  Faced with having examined 15 million lines of code and discovering that only the structure, sequence and function was copied, Oracle took the position that it had a copyright in that structure, function and sequence.

What the court held.  The parties had agreed that the issue of copyright was for the court to decide, with the jury being the arbiter of any infringement or damages.  The court did a very good job of reviewing the history of protection of computer software – which really started in about 1980, with amendments to the Copyright Act that recognized computer software as a literary work.  (this case is very well written and researched, so I can commend it to anyone who wants a crash course in software law)

The trouble with the copyright protection, however, is that copyrights cannot protect ideas – that is the exclusive domain of patent law.  So, whenever a copyright expresses an idea, we often say that the idea is free but the expression of it may not be.  However, where there is only a limited way of expressing the idea – courts hold that the idea then “merges” into the expression, becoming inseparable, and renders that particular expression free from copyright protection.   That is what the court held here – essentially, the court said that if you want to protect the sequence, function and structure of how a software program works, you must use patent, and not copyright, law.  This ended the case for Oracle, as Oracle had lost on patent infringement.

The court summarized the best argument as follows: “Oracle’s best argument, therefore, is that while no single name is copyrightable, Java’s overall system of organized names — covering 37 packages, with over six hundred classes, with over six thousand methods — is a “taxonomy” and, therefore, copyrightable under American Dental Association v. Delta Dental Plans Association, 126 F.3d 977 (7th Cir. 1997).” (emphasis added)

What impact does this case have?   In the abstract, this case follows a fairly well defined line of cases that have denied copyright protection to such things as menu structures and programmatic access to underlying operating systems.   In this regard, the case does not change the law.  However, in a bigger picture view, and with particular reference to the amount of copying here – all of the main class and method calls in Java were replicated verbatim . . . it could be seen as a step toward requiring either very good contracting practice, or patenting, to protect access to a software language system.   The only other way to protect access is under the Digital Millennium Copyright Act – installing and using a sufficient technological measure that must be decrypted in order to access content.

If a software developer desires to restrict access to base operating code, the Oracle v Google case poses a significant barrier to reliance on copyright alone.  As stated above, the developer should consider proper contract language, patenting the system, and use of encryption technology to unlock such access.

For more information contact Mike Oliver.