Dueling Embedding Decisions

    Beverly A. Berneman

    Embedding is a technical process that allows one website to link to and incorporate content from a second website. So when the user visits the first website, they see the content on the second website even though the content is actually still on the second’s website. 

    In the past couple of years, there have been two decisions about whether or not embedding is copyright infringement.

    First up, Justin Goldman sued Breitbart News Network (among others) for using his photo of Tom Brady. The photo went viral. It was posted on Twitter, Reddit and other websites such as Breitbart. All of this viral posting happened without Justin’s permission. Breitbart filed a motion for summary judgment. In its motion, Breitbart argued that embedding an image is not copying the image. The court denied Breitbart’s motion. The court held that embedding an image on a website can be considered copyright infringement. So the matter needs to go to trial.

    Then there’s Stephanie Sinclair’s suit against Ziff Davis LLC and Mashable. Stephanie is a professional photographer. She displays her works on her website and on Instagram. She uploaded one of her photos titled “Child, Bride, Mother/Child Marriage in Guatemala” onto her Instagram account. Mashable, a media and entertainment platform, asked Stephanie for permission to use the photo for an article on female photographers. Stephanie said no. Mashable published the article and used an embedded version of the photo from Stephanie’s Instagram account. The court held that embedding the photo from Instagram was not copyright infringement, in this case. The court relied on Instagram’s Terms of Use in which Stephanie granted Instagram the right to sublicense the use of content that she uploaded onto Instagram. Instagram sublicensed the use of the photo to Mashable for embedded use. The court didn’t directly address whether embedding content would have been infringement without Instagram’s Terms of Use.

    WHY YOU SHOULD KNOW THIS. Copyright infringement occurs when someone copies the work of another without permission. But is the technological act of embedding content really making a copy? The current version of the Copyright Act was written in the 1970s before the digital revolution. The Act didn’t contemplate emerging technologies and how a simple thing like “copying” may operate differently from the then current technology. Unless and until there’s a better understanding of whether embedding is infringement, look before you embed. Pay attention to whether there’s a license to embed the content.

    On another note, Mashable asked for permission and was turned down. Although Mashable was saved by Instagram’s terms of use, that might not always happen. So don’t go ahead and use someone else’s content after they turn you down. It might be considered willful infringement. And no one wants to go there.


    Data Links

    Beverly A. Berneman

    HiQ uses an automated application to look at publicly available data on social media and provide analytics to its customers. This is called “data scraping”. Businesses use the data for all sorts of things designed to increase revenue.

    HiQ scraped data from LinkedIn. LinkedIn’s Terms of Sale (TOS) prohibits use of automated scraping tools like the ones used by HiQ. LinkedIn will block any IP addresses that engage in scraping. Technically, most of the data on LinkedIn isn’t really LinkedIn’s data. Users post their own data and make it available to anyone who visits LinkedIn. So, HiQ determined that it could scrape publically available LinkedIn data.

    LinkedIn sent a cease and desist letter to HiQ based on HiQ’s violation of LinkedIn’s TOS and the Computer Fraud and Abuse Act (CFAA). The CFAA was enacted in the early history of the Internet to stop hacking. The key to the CFAA is the unauthorized use of permission to access a website. LinkedIn thought CFAA and its interpreting case law gave it a strong case.

    HiQ filed a declaratory judgment action seeing a ruling that its data scraping practices were ok. The district court granted LinkedIn’s motion for preliminary injunction. HiQ appealed. The Ninth Circuit Court of Appeals affirmed the preliminary injunction and remanded the case back to the district court for a final adjudication.

    While HiQ may have lost this battle, the Ninth Circuit’s opinion seems to open the door to HiQ ultimately winning the war.  The Ninth Circuit felt that HiQ raised some serious questions about the reference to access “without authorization” under the CFAA. The CFAA “contemplates the existence of three kinds of computer information: (1) information for which access is open to the general public and permission is not required, (2) information for which authorization is required and has been given, and (3) information for which authorization is required but has not been given (or, in the case of the prohibition on exceeding authorized access, has not been given for the part of the system accessed).” The Ninth Circuit believed that HiQ has an argument that public LinkedIn profiles, available to anyone with an Internet connection, fall into the first category. Therefore, using that public information would not violate the CFAA.

    WHY YOU SHOULD KNOW THIS.  The Ninth Circuit appears to be ok with data scraping in the context of freedom of competition and information. What might save HiQ is the fact that it is only scraping public data. There’s an open question as to whether HiQ is still violating LinkedIn’s TOS. So both HiQ and LinkedIn have some battles to fight before the war ends.


    Bad Spaniel Has First Amendment Rights

    Beverly A. Berneman

    VIP Products LLP sells a series of dog toys called “Silly Squeakers”. The toys are often fashioned to look like well-known beverage containers. One of the toys is called “Bad Spaniels”. It looks like a Jack Daniel’s whiskey bottle but with alterations. Of course, the name was changed from Jack Daniel’s to Bad Spaniels. But it didn’t stop there. Instead of “Old No. 7”, it said “Old No. 2 on your Tennessee Carpet” (which should resonate with dog owners). The alcohol description read 42% POO BY VOL” and “100% SMELLY” (again something instantly recognized by dog owners).

    Jack Daniel’s Properties, Inc. didn’t think it was funny. So they sent a cease and desist letter to VIP. VIP responded by filing suit for a declaratory judgment seeking a judgment that there was no infringement of the Jack Daniel’s brand. After losing in the district court, VIP appealed to the Ninth Circuit Court of Appeals. The Ninth Circuit affirmed the district court’s ruling that the Jack Daniel’s bottle was protectable trade dress. However, the Ninth Circuit reversed the other district court findings that VIP’s use of the Jack Daniel’s brand caused dilution and trademark infringement. The Ninth Circuit held that the “Bad Spaniels” toy was an expressive work entitled to First Amendment Protection.

    This case was not unlike a 2007 involving Louis Vuitton and a dog toy named “Chewy Vitton”. Sort of the same thing happened. Haute Diggety Dog, LLC manufactured and sold parody dog toys. One of them was designed to look like a Louis Vuitton hand bag. The Fourth Circuit Court of Appeals held that the toy was a parody of the original. And as a humorous expressive work, it’s protected by the First Amendment. The Fourth Circuit called it “permissive fair use”.

    WHY YOU SHOULD KNOW THIS. Parody can be a strong branding strategy for the right product. However, parody creates a tension between a trademark owner’s need to protect their brand and their ability to stop anything that references their brand. The line between going along with the joke and accusations of trademark infringement can be treacherous to navigate. But, in this case, Jack Daniel’s was given the proverbial newspaper on the nose by the Ninth Circuit.


    Agents of Copying

    Beverly A. Berneman

    Great Minds don’t always think alike when it comes to copyright infringement. Great Minds is a company that publishes school books, including a math book. Great Minds licenses use of the book to schools for free as long as it is for strictly non-commercial use. Great Minds uses the Creative Commons non-commercial license for these deals. A school district in New York had FedEx make copies of the book instead of using the school’s copiers and staff. Great Minds sued FedEx for copyright infringement arguing that it licensed the work to the school district and not FedEx. Great Minds tried to distinguish between the school staff making copies and the school ‘jobbing’ out the project to FedEx. In affirming a ruling against Great Minds, the Second Circuit held that there really was no difference between school employees making copies and having FedEx’s copy service making copies. The Court identified FedEx as an agent of the school district. Under pure agency principals, the school district’s license to copy would extend to FedEx.

    WHY YOU SHOULD KNOW THIS. Creative Commons is a non-profit organization that acts as a clearing house for copyright licenses. The licenses are standard forms that parties can use. However, there is no requirement that the parties accept the standard language. Parties can always add or delete anything that would better define their licensor/licensee relationship. In this case, the Creative Commons license was silent on whether the license extended to agents of the licensee. To avoid a problem like this, on the licensor side, it’s best to define authorized uses under the license. On the licensee side, it’s best to make sure that the license extends to employees and agents.