Want to file a DMCA takedown notice? Figure out fair use.

The Ninth Circuit released its decision in Lenz v. Universal this morning — the case about the baby dancing in his kitchen to Prince’s “Let’s Go Crazy.” It’s a ruling that gives a lot of gifts all around.

Fair use is an authorized use, not an affirmative defense

The main takeaway is the court’s holding that fair use is a right granted by the Copyright Act, and is wholly authorized by the law. It is not an affirmative defense to infringement, despite often being labeled as such for procedural reasons (“That fair use may be labeled as an affirmative defense due to the procedural posture of the case is no different than labeling a license as an affirmative defense for the same reason.”) It is, the court said, a mistake to conflate it with those affirmative defenses that excuse impermissible conduct; fair use is a wholly authorized and lawful use. Therefore, for purposes of the DMCA, a copyright holder must consider fair use before sending a DMCA takedown notice.

What does that mean to you?

If you’re sending DMCA takedown notices, you need to consider whether or not the stuff you’re complaining about is actually being used perfectly legally. It’s legal to use copyright-protected content for things like criticism, parody, or for transformative purposes (where the original work has been substantially changed in a way that adds new expression or meaning). This can be hard to figure out — seriously,  even copyright attorneys can’t ever agree on fair use — but the important thing here is that you ask yourself the question: is this actually infringing or is it being used legally?
If you’re receiving a DMCA takedown notice, you need to ask yourself the question as well: was my use fair, or was it actually infringing? If you’re just posting a song on YouTube because the song wasn’t already on YouTube and you wanted to share it, sorry, you’re infringing. Think about that before you send a counternotice.
New Media Rights has a really great online interactive Fair Use App that can walk you through some of these questions.

Subjective good faith belief

Because Universal failed to consider fair use before sending its takedown notice, the court held to the Rossi standard and imposed a subjective good faith belief standard in considering whether or not it knowingly misrepresented (for §512(f) purposes) that it had formed a good faith belief that Lenz’s video did not constitute fair use. In Rossi, the court held that “[a] copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake. Rather, there must be a demonstration of some actual knowledge of misrepresentation on the part of the copyright owner.” The court reaffirmed this holding, saying:

“To be clear, if a copyright holder ignores or neglects our unequivocal holding that it must consider fair use before sending a takedown notification, it is liable for damages under § 512(f). If, however, a copyright holder forms a subjective good faith belief the allegedly infringing material does not constitute fair use, we are in no position to dispute the copyright holder’s belief even if we would have reached the opposite conclusion. A copyright holder who pays lip service to the consideration of fair use by claiming it formed a good faith belief when there is evidence to the contrary is still subject to § 512(f) liability.”

What does that mean to you?

Believe it or not, this is the important stuff, when you sort through the legalese. This means that all you have to do is try.
  • If you don’t try at all to consider fair use, you’re violating the law.
  • If you say you considered fair use and formed a good faith belief, but all the evidence shows you totally ignored fair use, you’re violating the law.
  • But if you consider fair use, reasonably and in good faith, you’re safe. Even if your decision was wrong. Even if you thought something wasn’t fair use and some court later decides it actually was. As long as you can show you tried, you’re fine.

Automated DMCA takedowns can still consider fair use

The court didn’t leave copyright holders totally exposed, and in fact, did not demand human review of all content before sending DMCA takedowns. It discussed the implementation of computer algorithms as a “good faith middle ground for processing a plethora of content while still meeting the DMCA’s requirements to somehow consider fair use.” It set out guidelines for sufficient consideration of fair use in automated takedown programs, such as where
  1. “the video track matches the video track of a copyrighted work submitted by a content owner;
  2. the audio track matches the audio track of that same copyrighted work; and
  3. nearly the entirety . . . is comprised of a single copyrighted work.” *

What does this mean to you?

If you’re using a system for automated DMCA takedowns, you now have a very clear guide for how it should be configured. Content that would not be caught by this system should still involve human review.
If you’re not using a system for automated DMCA takedowns, this part doesn’t affect you much, but you can still use it as a good guideline for what kinds of takedowns the court considers less likely involve fair use.

Actual losses not necessary for §512(f)

Finally, the court holds that 512(f) does not require a plaintiff to show that she has suffered any actual monetary losses before she can recover damages. In short, the court describes the DMCA as “a statutorily created intentional tort whereby an individual may recover nominal damages for a knowingly material misrepresent[ation] under this section [512].” Therefore, 512(f) plaintiff may seek any damages suffered as a result of the misrepresentation.

What does this mean to you?

This part, along with one other, has gone back to the district court. We’ll have to see how it ends up in reality. However, in theory, this means that a plaintiff suing for a wrongful takedown could recover damages including attorneys’ fees, even if the plaintiff hasn’t actually suffered any losses (Stephanie Lenz is represented by pro bono counsel who is only paid if she recovers attorneys’ fees).
This is important because of how rarely §512(f) is used. Section 512(f) is really the only thing in the DMCA that polices fraudulent or inappropriate use of DMCA takedowns, and it needs to have some teeth without being so dangerous that content creators are too afraid to file legitimate DMCAs. All users should care about how this one comes out, because the balance here needs to be delicate.

* Interestingly, these limits come from fair use principles the EFF proposed back in 2007, in response to efforts by a large group of commercial copyright owners to create guidelines for online service providers that host user generated content (UGC). The UGC Principles proposed by the group of copyright owners were complex, confusing, difficult for online providers to implement (they required the use of identification technology such as ContentID), and they gave no consideration of fair use. Ultimately, they were largely ignored by service providers who were not original signatories of the UGC Principles. By contrast, the EFF Fair Use Principles are simple, clear, and while they are not perfect (for instance, they would still permit the wrongful takedown of a licensed work), the court agreed that they do offer a “good faith middle ground.”

CalECPA signed into law; warrants required for electronic communications

Edit, Oct. 8, 2015: One month after it passed the Assembly, Gov. Jerry Brown has signed CalECPA into law.

On September 8, the California Electronic Communications Privacy Act passed the California Assembly with strong bipartisan support (55–11). CalECPA passed the California Senate some time ago, so now it is headed to Gov. Brown’s desk for a signature. California is not the first state to enact legislation like this: five states have enacted legislation protecting electronic communications, and nine have legislation protecting GPS information. However, California is the largest, with the largest tech presence, and this law will have the largest impact.

What is CalECPA?

CalECPA updates current California laws to require that when law enforcement or other government entities wish to obtain information about people’s electronic communications or electronic devices from a California business, they must get a search warrant, wiretap order, or order for records. This affects all our digital information: our passwords, PIN numbers, and security codes; our photos, videos, and emails; our IMs, PMs, and DMs; our medical, financial, and location information; our Ashley Madison accounts and our Tinder profiles. Additionally, when a government entity receives electronic records, CalECPA requires the government to destroy any information provided within 90 days, subject to certain exceptions.

And there are indeed some exceptions — for example, a government entity may rely on a subpoena under certain specified conditions, and in certain defined emergency situations, a warrant may not be necessary. However, these are pretty reasonable and are what we generally see for any warrant.

CalECPA is a law that limits government entities, such as law enforcement. It does not limit service providers. Service providers may still voluntarily disclose subscriber information, when not prohibited by other state or federal laws. CalECPA just prevents service providers from being compelled to disclose electronic communication or device information without a warrant.

CalECPA was supported not only by civil liberties organizations like ACLU and EFF; and by the tech industry, including Adobe, Apple, Dropbox, Google, Facebook, LinkedIn, and Twitter; but also by major California law enforcement organizations, who recognized that clear rules would make their jobs easier.

I’m not in California. Why do I care?

CalECPA doesn’t just apply to California residents. It applies to California businesses. In other words, if you’re living in another state but using an online service provider headquartered in California (as so many are), and law enforcement would like to obtain your data from the California service provider, law enforcement will have to comply with CalECPA and get a warrant.

How does this affect you?

If you’re a member of law enforcement or a government entity, polish up your warrant-drafting skills. You’re going to be using those a lot more in California.

If you’re an online service provider in California, you should consult legal counsel and make sure your terms of service and privacy policies adequately address how you handle requests from law enforcement for users’ electronic information. You are now allowed to require a warrant, but you should give some thought to whether or not you want to promise that you will require one in all circumstances.

If you’re a user of California-based service providers, your online privacy just took a big step forward. Congratulations: you may feel somewhat safer using online service providers in California.

What does this mean, on a bigger scale?

I’ve talked before about the “California Effect,” as applied to the Internet: when a state with sufficient control over an industry creates more restrictive legislation than the federal standard, that state can create the new national default, and eventually drive federal (or even international) legislative change. As Paul Schwartz suggested, there is state action, then a flight to Washington. California did this before, first by creating the first data breach notification law (47 states now have data breach notification laws, and Europe adopted California’s model in its Data Privacy Directive), and second with its website privacy policy law, CalOPPA. While neither of these have created federal legislation, they have certainly established national standards.

Given CalECPA’s wide reach, it is very likely to become a national standard. As law enforcement agencies get accustomed to drafting warrants for electronic communications from California providers, it may become habit, and a standard practice to follow even when dealing with providers not located in California.

This is how change happens.

 

The nuclear option: FCC reclassifies broadband under Title II

I can’t be impartial and unbiased on this one: we just won the internet.

Four million Americans — and a few people from other countries who felt strongly enough about the matter to pitch in — wrote to the Federal Communications Commission, called their congressperson, spoke up online or in town hall forums, and made their viewpoints known. Not all of them agreed, but most of them were very clear about one thing: they did not want a small handful of massive companies controlling, throttling, and denying access to the internet content of their choice. This was an unprecedented number of responses, and it made perfectly clear how important the issue was to the American public: clear to the FCC, to Congress, and to the President himself.

Net Neutrality

Today, about half an hour ago at 1 pm EST on Feb. 26, the FCC voted to reclassify mobile and fixed broadband providers under Title II of the Telecommunications Act. This reclassification vote would have been unthinkable just a year ago, when Title II was still “the nuclear option,” and the FCC really had little contact with the millions of people it served. But we have come a long way in a short time, and it’s worth a quick recap.

As I’ve explained before, in greater detail, the whole Net Neutrality discussion started in 2005, when the FCC proposed four (later expanded to six) basic principles to guide its governance of internet providers. These were:

  • Consumers are entitled to access the lawful Internet content of their choice;
  • Consumers are entitled to run applications and use services of their choice, subject to the needs of law enforcement;
  • Consumers are entitled to connect their choice of legal devices that do not harm the network;
  • Consumers are entitled to competition among network providers, application and service providers, and content providers;
  • A provider of broadband Internet access service must treat lawful content, applications, and services in a nondiscriminatory manner; and
  • A provider of broadband Internet access service must disclose such information concerning network management and other practices as is reasonably required for users and content, application, and service providers to enjoy the protections specified in this rulemaking.

These seem like very reasonable ideals that would be hard to argue with. However, of course, providers argued, and were caught violating these principles. So, since 2005, the FCC has tried and tried to appease broadband providers with watered down versions of its Title I authority, while still trying to enforce them, and providers have just…sued the FCC.

Every time the FCC has gone to court, the courts have said, essentially, “These principles are great, but you can’t enforce them under your Title I authority. However, you’re welcome to reclassify, because you could totally enforce them using your Title II authority.”

The nuclear option

For many years, Title II reclassification was called “the nuclear option.” When the internet was still in its infancy, the FCC agreed that it would use Title I, which offered as little regulation as possible on the new industry, to encourage growth and competition. Over time, it was generally agreed — by the FCC and the large broadband providers — that this worked well enough, and it would be very dangerous to change it: no one knew what could happen to the industry if the FCC pushed the big red Title II button.

But the FCC had practically no power under Title I, and the providers knew it. So they kept pushing, and the American public felt the harm of their constant push. Comcast was caught throttling traffic. Verizon was caught downgrading Netflix at its interconnections during business negotiations. To the American public, Title II — which allowed the FCC to prevent these shenanigans — didn’t look like a nuclear option, it looked like the only way to provide protection.

When finally given access to the FCC — when the matter was opened up to public comment — the public commented en masse, on a level the FCC had never seen and could not really comprehend. Four million voices said: reclassify.

What changes now?

If you aren’t Comcast, Verizon, or AT&T…not much.

The important things to take away today:

  • These rules only affect broadband internet providers. This isn’t the government regulating The Internet, or the content on it. This has nothing to do with what you can or can’t watch or download. It’s about the companies that run the tubes.
  • These rules have been in place at the FCC since 2005. Nothing changes, from the FCC’s position. They’ve just been trying to find a way to make them enforceable for ten years. Things like accessing lawful content of your choice, using devices you want to use, and receiving content in a nondiscriminatory manner…these have been the goals of the FCC for a decade.
  • Other laws still apply. A provider can’t suddenly say that because the Open Internet rules allow it to only permit lawful internet content, it’s going to block all unlawful internet content, therefore it’s going to scan all email looking for evidence of unlawful content. This ruling does not give ISPs new powers.
  • We do not know yet how ISPs are going to react, or what their implementations of the new rules will be. Some major providers have already come out in support of reclassification. Some are certainly still against it, and will have to adjust to the new rules. Prepare for some growing pains.
  • There are going to be court cases over this. AT&T has already said it plans to sue. Courts have already said the FCC’s net neutrality principles are enforceable under Title II. So we’ll see.

This is an historic change: there should be no doubt about that. This is a grand experiment in broadband regulation, and a massive moment in internet history. You’re here for it, and if you were one of those four million voices, congratulations: you helped make it happen.

Aereo declares “NOT DEAD YET” in the most awesome way possible

Aereo Invaders

Today, in an absolutely hilarious stunner, internet television broadcaster Aereo declared to the world that it’s not dead yet. Its attorneys sent a letter to U.S. District Judge Alison Nathan announcing that since the Supreme Court declared that Aereo was a cable system, Aereo should be eligible for the statutory compulsory license offered to cable systems in the Copyright Act. They then collectively dropped the mic and strutted off whatever stage they happened to be on at the moment.

To me, this is the kind of balls-out crazy-genius move that keeps me loving my job, but I know that a lot of my friends don’t get why I’ve been laughing all day. So let’s talk about how we got here.

Aereo’s day in court

Two weeks ago in ABC v. Aereo, the Supreme Court handed Aereo a nasty 6-3 defeat. The Supreme Court’s decision was a strange one, though — it didn’t have a very clear holding, other than that the Justices really thought that Aereo looked awfully like a cable system, and seemed to be very unhappy with the fact that neither Aereo nor the TV networks suing it wanted to call Aereo a cable system.

But there was something else going on in that case…something really important. Scalia called it out in his excellent dissent: the majority seemed to think Aereo was doing something shady, exploiting a loophole, and for that reason it needed to be squashed. This is extremely important, but we need to figure out why first.

Story time!

Okay. So why isn’t Aereo a cable system? More importantly, what exactly was it that Aereo did that upset the Supreme Court majority?

(Side note: No one has ever written a better, more thorough recap of all the crazy twists and turns the law has taken, and the confusing, screwed up precedents it has created, than Professor James Grimmelmann in his excellent ArsTechnica article, Why Johnny can’t stream. Go read it. I’m not going to go into that much detail.)

Let’s start easy. An unlicensed public performance infringes copyright. So we know that you need a license to broadcast songs on the radio. You need a license to show movies in a theater. You don’t need a license to listen to songs, nor do you need one to watch a movie. When it comes to cable TV, things get complicated (because the viewer might be involved in the transmission). If a work is transmitted by any device or process, and the public receives it (and the public may receive it either in the same place or in separate places, and at the same time or at different times), it needs to be licensed. So now the question becomes whether or not the public is receiving it. You’ll be amazed at how hard a question that can be.

Long, long ago, video stores (both the family-friendly and adult kind) tried to figure this out. They tried to offer a service where they offered private theater rooms, and patrons could rent a video, go into a room, and watch a video in peace. A court ruled that that was actually a public performance…because once the movie was done, it went back into the store’s library, and could be watched by someone else. The same copy was shown to each member of the public at different times, so it was ultimately performed to the public.

Well, back up a second. Let’s talk about videos to begin with: the mighty VCR. When VCRs were invented, TV networks sued because clearly people would be using them to infringe. But the Supreme Court said that VCRs were fine, because they were “capable of substantial noninfringing uses.” One of those noninfringing uses was “time-shifting,” or recording live TV to store or play back at a more convenient time. The Court also found that playing recorded content in your home was a private performance, so that was also noninfringing. That decision is why we have technology like VCRs, and DVDs, and so on. Thanks, Supreme Court!

Okay. But what about DVRs? DVRs have mostly been under the VCR rule, but then Cablevision made a DVR that wasn’t at the viewer’s home. It was at Cablevision’s facility. Users could select which program they wanted to record, and it would make a unique stored copy for the user, and delete it when the user was done. That’s important, because when the TV networks sued (and they did), the court held that these unique copies, played just for an individual viewer, weren’t public performances. They were private. You couldn’t aggregate them together.

Why does that matter? Because remember what I said about video stores? They couldn’t show the same copy to the public. But unique copies for each individual? That was fine.

Aereo’s solution

Okay, so now we know what is allowed and what isn’t allowed, right?

Not allowed:

  • Re-broadcasting the same copy of a work to multiple people

Allowed:

  • Private, home viewing of TV shows
  • Individual copies of TV shows
  • Centralized technology that allows streaming of those individual copies of TV shows to private home viewers

With that complex road map of copyright precedents set out, Aereo built a business model that…created a centralized technology that allowed streaming of individual copies of TV shows to private home viewers.

And the Supreme Court got mad because they thought that Aereo was exploiting loopholes in the law.

Fair enough: obviously it was…because the law was poorly written, was written forty years ago, and doesn’t take into account changes in technology. Lower courts have created badly-written, loophole-filled precedents as they’ve tried to cope with shifting technologies in the intervening decades. As Scalia’s dissent pointed out, the right thing to do in this case wasn’t to create another badly written, loophole-filled precedent. The right thing to do was to ask Congress to fix the law.

In the wake of the Court

Many of my colleagues in internet and technology law have written excellent articles about what the Supreme Court’s decision in Aereo may mean for technology. I don’t think the Aereo decision necessarily harms current technology directly. I do, however, think the Aereo decision is very dangerous, because it tells technology innovators and disruptive start-ups (you know: you guys, my friends and clients) that if they work hard to obey the law, and step astutely into the gaps created by new technology and old statutes, they’re going to be seen as thieves and criminals. It sends the message to new geniuses that they shouldn’t try to enter the market in a clever way, because the law will assume that their attention to precedent means they’re trying to cheat. And I think that is devastating.

That, more than anything, is why I have been laughing all day at Aereo’s letter to Judge Nathan. Aereo isn’t dead yet. It’s still innovating. It’s still finding clever new moves, and smart ways to hack the law.

Good for you, Aereo.

Copyright and mesh wireframes in virtual worlds

Being an IP attorney in a virtual world environment can be really interesting. Lately, questions have arisen about copyright and digital mesh wireframe works — a question that an appeals court considered just a few years ago, just in a different context. The different context has the potential to really make a difference, but before we get there, we need to lay some ground work.

What makes something copyrightable?

In the United States, a creator automatically gets copyright in an original work the moment it is fixed in a tangible medium of expression. In other words, you don’t get a copyright for the things you’re just thinking of doing — you have to write them down, draw them up, put them in a form that can be reproduced first. We can talk about fixation another time, though. Right now, let’s talk about originality.

What does it mean for a work to be original? Well, the threshold is very low. Copyright may be granted to works that possess “at least some minimal degree of creativity.” And while that’s a very low threshold, it’s an extremely important one, and it gets to the entire philosophy behind the granting of copyright protection in the United States.

Before the Supreme Court articulated the “minimal degree of creativity” standard, there had been many arguments for why we should grant copyright protection to people who create works, and what we, as a society, should reward. One powerful argument was the “sweat of the brow” argument: that if a creator puts a lot of work and effort into a creation, that work should be rewarded with copyright protection. It was this argument that the Supreme Court rejected in setting the creativity standard: mere labor isn’t enough. The hard work of, for instance, arduously researching and compiling the phone book is not enough for copyright protection: there is no creativity involved.

So what’s not creative?

What about photographs? A photograph can be a creative work, sure. But it can also not be, for the above reasons. If a photographer takes a photograph that is intended to be an exact copy, as much as technology will allow, of another work (for instance, a photograph of a painting in a museum), the photograph doesn’t add any creative elements. It’s not copyrightable.

And then there are digital mesh works. In the 2008 case Meshwerks v. Toyota Motor Sales U.S.A., a court held that wireframe computer models of Toyota cars, intended to re-create the cars as exactly as possible, were not entitled to copyright protection. It didn’t matter how many hours of labor went into creating the models. It didn’t matter how much it cost to create them. They did not have that spark of creativity.

Does this mean all digital mesh wireframe models lack that spark of creativity? Does this mean no digital mesh models can be eligible for copyright protection? Probably not. But the ones in that case were not entitled to protection because they were a faithful copy of something that already existed. We can understand this a little better if we look at the law around derivative works.L.H.O.O.Q.

Derivative works

A derivative work is an adaptation or modification of an existing work (that you have permission to use). For instance, if I draw a moustache on the Mona Lisa and present it as a new piece of art, that’s a derivative work. But is it mine? The Mona Lisa isn’t mine. I didn’t paint her. I did paint the moustache, though (we will pretend, for the sake of argument, that I am totally Marcel Duchamp). For a derivative work, I can only have copyright protection in the original content I have added. I can’t have copyright protection in the entire work unless my own contribution is enough to merit protection on its own (so in this case, just drawing a moustache probably isn’t enough — I don’t know if L.H.O.O.Q. was ever granted an independent copyright).

How does this apply to digital mesh in virtual worlds?

Digital mesh wireframes in virtual worlds, then, are going to be one of three things:

  • Completely original works
  • As-close-as-possible reproductions of already existing items
  • Reproductions of existing items, with changes made.

Let’s get more specific.

Most mesh creations in virtual worlds such as Second Life are going to be original, or somewhat derivative but still mostly creative. Most mesh creations are not only the wireframe object, though: they’re also the texture that goes on top, which will depict decisions the creator made: color choices, lighting and shadow choices, creative choices. Those choices establish copyrightability.

However, the difficult questions arise in the context of mesh objects without textures (or with blank textures, designed to wear other creators’ textures). Mesh bodies and body parts, for instance, are (almost) all going to be reproductions of the SL avatar mesh. That’s the technical limitation of mesh bodies in Second Life. Every mesh body creator will make small tweaks to personalize the body, to make it in some way better than the SL avatar mesh, to give it life that the avatar mesh does not have.

And that’s the crux of it, for those of you who have stuck with me through this whole post: those small tweaks. Those small tweaks on a digital mesh wireframe derivative work of the SL avatar mesh. Whether they, by themselves, rise to the level of copyright protection is going to vary from creator to creator, and is probably something a creator would want to work with the Copyright Office on.

 

Net Neutrality: A History

Edit, Feb. 26, 2015: The FCC voted today to regulate broadband providers under Title II. More information here!

 

Today, news went out that the FCC is drafting a Notice of Proposed Rulemaking to reinstate its Open Internet rules…just in modified form. The new, modified rules would, in short, propose

  1. That all ISPs must transparently disclose to their subscribers and users all relevant information as to the policies that govern their network;
  2. That no legal content may be blocked; and
  3. That ISPs may not act in a commercially unreasonable manner to harm the Internet, including favoring the traffic from an affiliated entity.

Since FCC Chairman Tom Wheeler announced the proposed rulemaking, a lot of articles have been written expressing concern about these new principles, and many in the tech industry have seen them as a very dire sign for the future of the internet.

However, let’s be honest: net neutrality is a hard concept to grasp, and while we should be concerned about these rules, it’s not easy to understand exactly why, or what changed, or what’s so dangerous about the new situation. So let’s take a look at how we got here and where we’re going.

The regulation of the internet

First: I’m going to skip over a whole lot of history, and I’m going to simplify a lot here. Let’s just say that there’s a lot of history, and it predates the internet, and it’s mostly AT&T’s fault, and it’s actually way more interesting than you’d think: if you’d like to learn more, I recommend Tim Wu’s excellent book The Master Switch, and Cybertelecom.org‘s fantastic Federal Internet Law & Policy resource.

The Telecommunications Act of 1996 governs the internet. The Telecommunications Act is broken down into a few sections, but the important ones for our purposes are Title I and Title II. Title I regulates “information services” (like email and web pages: the stuff that runs over the tubes) and Title II regulates “telecommunications services.” So let’s look at what the differences between those are.

Chart of FCC regulations

Chart of FCC regulations

We’ll come back to all that, I promise, but it’s nice to have a chart, because it gets way more confusing, but I want to stress one more thing first: Title II regulation is much more stringent than Title I, and allows the FCC to impose many more rules than Title I. However, the FCC has a really important power called forbearance: it’s allowed to choose which rules it wants to impose and which rules it doesn’t. It can just ignore any provision that it doesn’t think is in the public interest.

So back to 1996, when nobody really knew what “the internet” was going to be. Congress knew it was going to be important, but it also knew the internet was going to change a lot, so it decided not to specify where the internet fit: whether it was supposed to be regulated under Title I or Title II. It let the FCC decide, depending on where technology and competition needed it to be, and also let the FCC change its mind if a change was necessary.

The advent of Title I regulation

The FCC did a lot of work on this, and I’m not going to go into the whole history (but I swear it’s pretty interesting). Ultimately, in 2002, it decided that because internet access providers did not offer access as a stand-alone product (at the time, you got your email, your web page hosting, and your news group access through your ISP, and ISPs were also the only organizations handling DNS services), internet access was not purely “transmission of information without change,” so it had to be an information service. In other words, because internet access providers did not only provide access, they had to be regulated under Title I.

The FCC also chose Title I because Title I had the least regulations and would allow the internet to grow and flourish unrestricted, and all the ISPs were very nice and said they’d be good, and said “please.” This was important to the FCC at the time, because 2002 — the height of the Bush years — was a period of deregulation in a lot of industries, and a firm belief that if left alone, the market would take care of itself. That worked out well across the board, right?

The results of Title I, and the rise of Net Neutrality

No, deregulation didn’t work out well across the board, and it didn’t work out well on the internet. Left alone, the big players in the free market  ate up all the small players pretty quickly. While, in 2002, the FCC had relied on new companies entering the market to create competition, and expected new innovations such as broadband over powerline, WiMAX, and satellite broadband to spur competition, these failed to flourish. Today, 96% of the United States has at most two options for broadband internet service (meaning that there may be two options in their area, but the two options may not actually compete with one another or be accessible by the same customers).

To its credit, the FCC quickly realized that there was a problem. Because it wanted to use as light a regulatory hand as possible on the thriving internet, it started by proposing some guidelines for ISP conduct in 2005. Those guidelines would be the first Net Neutrality / Open Internet rules. But the problem was,  they were just guidelines, really: no one had any real reason to follow them.

Cut to the chase: what are the rules?

  • Consumers are entitled to access the lawful Internet content of their choice
  • Consumers are entitled to run applications and use services of their choice, subject to the needs of law enforcement
  • Consumers are entitled to connect their choice of legal devices that do not harm the network
  • Consumers are entitled to competition among network providers, application and service providers, and content providers.
  • A provider of broadband Internet access service must treat lawful content, applications, and services in a nondiscriminatory manner
  • A provider of broadband Internet access service must disclose such information concerning network management and other practices as is reasonably required for users and content, application, and service providers to enjoy the protections specified in this rulemaking

Let slip the lawyers of war

So in  2009, the FCC decided to turn those four principles into six actual rules instead of guidelines, adding two new ones: a nondiscrimination rule and a transparency rule (see above). This became the “Open Internet” rulemaking, so if you hear people talk about “Open Internet” and you’re like, but wait, I thought we were talking about net neutrality…it’s the same thing, but god forbid the government use the same words everyone else is using.

Around this same time, Comcast got caught throttling peer-to-peer traffic. The FCC ruled that Comcast’s throttling was in violation of its net neutrality principles, and was unlawful. Comcast sued the FCC, and in 2010, the FCC lost. It was a fairly simple ruling: the DC Circuit Court told the FCC, look, you can’t regulate internet access because you classified it as an “information service,” as Title I, not a “telecommunications service.” You did it wrong, used the wrong magic words, and Title I doesn’t give you the kind of regulatory power you need. But you totally have the power to reclassify it, and then you can regulate it all you want, because Title II does exactly what you want it to.

Go on, scroll back up to the chart. I’ll be here when you get back.

The FCC reclassifies internet access under Title II and we all live happily ever a…oh, wait

As it had been before, the FCC was very skittish about imposing Title II regulation on the internet…and apparently it had totally forgotten that it was allowed to ignore the provisions it didn’t want to impose. It met with Comcast, AT&T, and Verizon, who of course begged them not to reclassify, promised to self-regulate responsibly, and probably even said “please” a few times.

So the FCC, who knew it was powerless, finished writing its Open Internet rules in 2011. But everybody else also knew that the FCC was powerless (the court had already said the rules weren’t going to work), so as soon as the rules were released, Verizon sued. The court case dragged on for three years, and then in February the DC Circuit told the FCC, look, you can’t regulate internet access because you classified it as an “information service,” not a “telecommunications service.” You used the wrong magic words, and Title I doesn’t give you the kind of regulatory power you need. But you totally have the power to reclassify it, and then you can regulate it all you want, because Title II does exactly what you want it to.

So now we’re here.

And now the FCC is, again, refusing to reclassify. We’ve been here before. The FCC is trying one more time to revive its Open Internet rules, and this time, they’re letting the service providers charge extra for access and use, as long as it’s not “commercially unreasonable,” and as long as they’re transparent about it. This time the FCC isn’t as toothless as before — those are things that the court said they could regulate without reclassifying — but that’s it.

And that transparency would be awesome, if you had any choice about your online access provider (which you don’t, because the FCC’s deregulation of the internet destroyed competition in the internet industry, which necessitated the net neutrality rules in the first place). It’s not a solution, it’s just the FCC’s attempt to strip down “net neutrality” until the Comcasts of the world are so unaffected by it that they stop suing to crush it. This ham-fisted compromise will harm small business owners, even further wreck competition and innovation, raise barriers to entry for new start-ups, and drain money from users both individual and corporate.

But I bet the ISPs said “please” again.

Okay, fine, what do I do about it?

  • Contact the FCC Commissioners. The FCC has just established an email address specifically for public feedback about the Open Internet rulemaking: openinternet@fcc.gov. You can also submit comments officially through the FCC’s comment procedure, under proceeding #14-28.
  • Call your Senators and Representatives and ask them to urge the FCC to reclassify broadband access under Title II. This is not something Congress can do — it’s the FCC’s responsibility — so don’t ask them to do it, but if Congresspeople start pounding on the FCC’s door, it’s likely to get a response.
  • Go to FreePress’s Save The Internet site and show your support.

 

Syrian Electronic Army takes over MarkMonitor; dog catches car

Facebook hijack attempt

On Wednesday, the well-known hacktivist group Syrian Electronic Army managed to get into MarkMonitor’s management portal. Once there, the group targeted Facebook: they used the management portal to alter Facebook’s WHOIS record, including Facebook’s registrant contacts, intending to hijack Facebook’s domain nameservers (as they had done earlier with both PayPal and eBay’s UK sites).

However, the hijack took “too much time,” and while they were able to take some screenshots of their process, they never got much farther than a prank. Facebook’s service was never disrupted, and shortly afterward, the SEA were kicked out of MarkMonitor’s management portal.

Here’s what should get people’s attention: these guys (maybe girls, too; let’s use “guys” as a unisex term) were in MarkMonitor’s management portalFor the rest of the evening, there was very little news about the incident, other than some limited reporting on the aborted attempt at hijacking Facebook’s domain. Facebook gets people’s attention.

So who is MarkMonitor? MarkMonitor does brand protection for pretty much everybody you’ve ever heard of. Sure, you trademark attorneys may just know them as that company that looks after trademarks on the internet, but they do more than that. They protect against things like fraud, spam, phishing, malware, and piracy. They monitor internet traffic to look for these sorts of things and collect data on the things they find. And, more importantly, through this activity, they hold the keys to how every brand that uses them is perceived — how every brand is trusted — by the rest of the world.

The MarkMonitor Portal is currently unavailable...

So MarkMonitor got popped, and they got popped deeply enough to give some random attackers full access to their management portal. Which means the attackers could have done anything they wanted to. They could have looked at, copied, or changed any data they wanted to. What they chose to do was make a lot of noise trying to hijack Facebook in a really obvious way, and MarkMonitor discovered the breach and kicked the attackers out.


So think about this for a minute: what if they’d been quieter? What if their attack had been much more subtle? And…how do we know that while they were annoying Facebook, they weren’t also doing something else?

Beastie Boys, Goldieblox, & Fair Use Part II: Electric Boogaloo

Oh, come on, I had to. I’ve wanted to use that in a blog post title for ages.

Last month, I talked about the mess Goldieblox and the Beastie Boys had gotten themselves into. A quick recap: Goldieblox made an ad on YouTube parodying one of the Beastie Boys’ songs, and it went viral. The Beastie Boys don’t let their songs be used in advertising. Much finger-pointing ensued, and Goldieblox sued the Beasties for declaratory judgment before putting up a CAN’T WE ALL JUST GET ALONG post. And then things went sort of quiet, while the internet sorted itself into Team Goldieblox, Team Beastie Boys, and Team Who The Hell Cares.

And then…

Last week, the Beastie Boys countersued Goldieblox. The counter-complaint (it’s a counter-complaint because Goldieblox sued first by asking the court for declaratory judgment, and the Beastie Boys had never gotten to make a complaint in the first place) is an arsenal: it’s not just copyright infringement but also trademark infringement, false advertisement, false endorsement. unfair competition, and misappropriation of right of publicity. They’ve thrown everything they could at Goldieblox. And interestingly, they’ve asked for the profits Goldieblox has made from the video.

Okay, that’s a lot to unpack. Let’s start with the doubletake:

Why are the Beastie Boys still so mad?

Goldieblox tried to make nice, right? Well…yes and no. Sure, Goldieblox put up a white flag blog post. But it never ended its lawsuit against the Beastie Boys. So Goldieblox was effectively standing there with one hand offering a handshake and the other holding a loaded gun.

And this was after Goldieblox had made similar videos rewriting Queen’s “We Are The Champions,” for which they never got licensing rights either, as well as videos using songs by Daft Punk, Kaskade, and other artists. These videos have now been pulled or made private, as has “I Want A Goat,” a similar video Goldieblox’s CEO and founder made for a fundraising campaign in India, for which she and her husband rewrote the lyrics to Lonely Island’s “I’m On A Boat” (presumably without getting the licensing rights). As the Beastie Boys say in their counter-complaint, “unfortunately, rather than developing an original advertising campaign to inspire its customers to create and innovate, GoldieBlox has instead developed an advertising campaign that condones and encourages stealing from others.”

Most importantly, though, it’s an ad, and it isn’t just any ad. It’s an ad that Goldieblox has submitted to a contest Intuit is hosting that will allow a small business to air a commercial during the Super Bowl, and Goldieblox’s ad is one of the four finalists. Goldieblox never withdrew the ad from the contest, and it is still eligible for the Super Bowl spot. While this is not mentioned in the prayer for declaratory judgment and is only briefly touched on in the counterclaim, I believe it is the crux of why the Beastie Boys went after Goldieblox as hard as they did. If that commercial airs during the biggest advertising day of the year, it not only stands to give Goldieblox some great advertising, but it potentially harms the Beastie Boys’ effort to keep their music from being associated with commercials and their names from being associated with advertising.

But it’s fair use, right?

Maybe. Probably. I think Goldieblox has a very good fair use argument. But nothing is ever 100% fair use until a judge says it is.

It may be an outdated exaggeration to say, as Larry Lessig does, that “Fair use is the right to hire a lawyer,” but to an extent it’s true: while we have a good deal of strong case law and precedent that gives us guidelines, ultimately fair use is what a court says it is. In this case, as I discussed in my last post, it is entirely possible for commercial use, even an advertisement, to also be fair use. However, the use of a work, even the parody of a work, in an advertisement weighs against a finding of fair use, but it’s only one thing to consider.

It’s worth discussing Goldieblox and parody, though. There’s a difference between parody and satire. A parody is a work that imitates another work in order to poke fun at or comment on something about the work itself. A satire is a work that pokes fun at or comments on something external to the work: the world in general, cultural issues, political issues, and so forth. The “Girls” video is a parody because the original song was misogynistic, and the Goldieblox video sings about empowering young girls. It comments on the work itself. However, looking at it in the context of Goldieblox’s larger campaign of taking songs from popular musicians and making funny, cute, derivative songs from them — such as turning “I’m On A Boat” into “I Want A Goat” — it begins to look less like an insightful commentary and more like coincidence. “I Want A Goat” does not comment on the message of “I’m On A Boat.” It just happens to fit the rhyme scheme. Still parody, but not a particularly inspiring one.

Okay, what about those damages? What profits? It’s YouTube!

Now that’s an interesting issue. How do you value damages for copyright infringement on social media? Shameless plug: I have some friends working on a really awesome article on that, coming out in a few months. In the meantime, we can always just speculate.

It’s a YouTube video, sure. But it’s also an ad, and it has an associated product. That product is now in the top 25 on Amazon.com in all toys and games. It’s also being sold at some other retailers, including Toys ‘R’ Us and smaller stores. You could track sales of the toy before the video launched and after the video launched. The Beastie Boys will argue that those increased sales are due to the video and its association with their song. Goldieblox, however, will point out that not only did they have a successful Kickstarter campaign last year, but in the weeks since the video launched, the holiday season has begun and parents are shopping for gifts for children. These purchases may not be attributable to the video.

Things may get really complex, though, if the Goldieblox video wins the Intuit contest and airs during the Super Bowl. An average 30-second ad spot cost $4 million for the 2013 Super Bowl. Will this count as profit or gain? Most likely. Certainly any resulting sales of the product attributable to the ad would.

Then they’d all have to argue about what proportion of those sales are due to the song, and what proportion are due to the use of the Beastie Boys’ name, and what proportion are due to the cute kids, and what proportion are due to the action in the video, and what proportion are due to the actual toy itself, and what proportion are due to the Goldieblox brand and reputation, and….

…now you know why we can’t have nice things.

How do I make sure this doesn’t happen to me?

That one’s super easy.

  • Are you making a parody song or using another artist’s work? Contact the artist and ask permission. That’s what Weird Al does (you notice he never covers any Prince songs? Prince never gives permission, and even though he’s pretty safe in the Fair Use Zone, Weird Al prefers to have the original artist’s permission). It’s amazing what you can do with permission.
  • Can’t get permission? Give some serious thought as to whether or not your idea is worth it. Fair use exists to give new creators the ability to innovate, but if your innovation is so close to someone else’s original work that they feel a need to protect it, you may need to defend your idea. Is it something you feel strongly enough about to defend? If it is, then you might talk to someone who knows fair use to make sure you minimize your risk.
  • Have you been using another artist’s work and find yourself on the receiving end of legal questions? Politely try to work things out amicably first. The creator of the This Charming Charlie Tumblr received several takedown notices from Universal Music, so she and some other fans reached out to Morrissey. Morrissey issued a statement that he was not represented by Universal, and he supported the Tumblr and hoped it would continue. As I said before, we live in an age of unprecedented access to artists: try asking for permission, even after the fact.
  • Have things progressed to the stage of legal threats or even legal action? Keep a level head. There’s no sense coming out swinging and then having to take things back.

 

Beastie Boys, Goldieblox, & Fair Use

At this point, most people who read my blog have a pretty good understanding of fair use. We understand the basic principles: we know that a fair use analysis considers four factors, and even commercial uses of a copyrighted work can be fair use, as long as the other factors point to fair use. One particularly protected area is in parody, where an artist is permitted to use of some elements of a prior original work in order to create a new composition that, in some way, comments on that original. Right?

We also know that fair use is one of the hardest, most thorny issues in intellectual property law. In the last few days, a situation has come up that has really done a fine job of illustrating why fair use is such a tricky area, and it points out the biggest thing so many artists forget: it isn’t enough to figure out whether or not a use is fair. The law isn’t all that matters. Let’s start with a little history lesson:

Three MCs and a song about girls

In 1986, the Beastie Boys recorded their (not really) debut album, Licensed to Ill. The album was almost entirely tongue in cheek: a “goof” on the braggadocio of rap music and party rock in which the Beasties depicted themselves as Wild West gunfighters, drunken rock stars, and womanizing louts, and it included a song called “Girls.” In the spirit of the rest of the album, “Girls” was a sexist fantasy about chasing after women (and not getting any), and wanting women to clean the house and hop into bed. Most people never understood that it was meant to be a joke, and the Beastie Boys quickly distanced themselves from the song. They rarely performed the song live, and on subsequent albums the Beasties have rapped about their respect for women.

In legal circles, the Beastie Boys are famous for their support of fair use and other use of copyrighted works — not just lip-service support, but their many legal battles to establish just how much of a work can be used (for instance, see Newton v. Diamond). The Beasties are the last people anyone would expect to be predatory with their copyrighted works.

Goldieblox and a video about girls

On November 18, a really great internet startup called Goldieblox posted a video on YouTube called “GoldieBlox, Rube Goldberg, & Beastie Boys.” The video is a commercial for Goldieblox’s construction toys aimed at little girls, and in the video, girls use the Goldieblox gear to construct an elaborate Rube Goldberg device while singing “Girls”…with new, improved lyrics. Lyrics about how girls’ toys are pink and pretty, and everything else is for boys. Lyrics about how girls can build spaceships and code apps. The video is, let’s face it, awesome.

It was also made without the Beastie Boys’ permission.

The Beastie Boys don’t license their music for commercials. They never have; they are currently suing Monster Energy for using their music in promotional clips without authorization. In fact, when much-loved Beastie Boy Adam Yauch died of cancer in May 2012, he left a will that prohibits the use of his music or likeness in commercials or advertising, stating: “in no event may my image or name or any music or any artistic property created by me be used for advertising purposes.” You might say this unwillingness to use music for ads is a big deal for them.

The backlash begins

A few days later, the Beastie Boys saw the video. They sent Goldieblox a letter explaining that while they liked they video, they didn’t allow their songs to be used in advertising, and they asked why Goldieblox was using “Girls.” Goldieblox immediately (on Nov. 21) went to court and sued, asking for a declaratory judgment: in short, Goldieblox asked the court to rule on whether or not the use was infringing.

And this is why we have such a difficult situation. Goldieblox is probably right in nearly every legal way: the use is fair. The use is a parody. The use doesn’t affect the Beastie Boys’ own ability to license their song, because they would never license it for a commercial anyway (and, for those who might be about to ask, yes, it’s totally okay to make a fair use of another work for commercial purposes). The use does not affect the market for the original song. Goldieblox is, legally, almost certainly in the right.

But that doesn’t mean Goldieblox is right. Oh yes, it followed the law. Goldieblox checked to make sure its use was okay from a fair use perspective. But now what? Now it’s not only in the middle of an expensive lawsuit, it also looks like the bad guy: the company who took a song from beloved musical heroes who’ve tried to honor the final wish of a fallen band member. It’s also in the ugly position of trying to paint the Beastie Boys as copyright bullies: a tactic that worked for about 24 hours, until Beastie Boy Mike Diamond sent an open letter to Goldieblox through the New York Times clarifying that Goldieblox sued them, not the other way around.

In the last day or two, the backlash against Goldieblox has been tremendous. The little startup has gone from viral video champion to villain as bloggers and journalists raised the argument that not only is the company playing dirty in its fight against the Beastie Boys, it’s also not really as girl-positive as the video claims. Rather than offering young girls STEM toys and encouraging them to build and learn, it seems that Goldieblox is locking little girls into the princess paradigm and handing them a pretty pink hammer so they can help build a parade float for their pretty princess friends.

So what did Goldieblox do wrong, and what can we learn?

Goldieblox didn’t try asking permission first. If Goldieblox had asked first, it would have learned that Beastie Boys don’t license their music for commercials…and maybe Goldieblox could have created a solution that allowed the awesome viral video to go forward with the blessing and support of the musicians they were parodying, instead of creating a controversy. If not, at least it could have had the discussion and decided whether or not to proceed once it had all the information, assessing not just the legal issues but also the public relations concerns.

We live in a world of unprecedented access to legal information. It’s easy to read an article about how to avoid legal liability, or how to make fair use of content. However, we also live in a world of unprecedented access to content creators (even famous ones), and there’s nothing as safe as a permitted use.

So it’s just like kindergarten: if you want to use somebody’s stuff, ask. Maybe they’ll say yes. Maybe they won’t, and it’ll still be okay to use it anyway, but at least then you can make a fully informed decision. Because in addition to doing the legal thing, we also have to do the right thing.

Edit: Today (Nov. 27), Goldieblox posted an open letter to the Beastie Boys asking if they could all just get along, and removed the song from the video. The lawsuit is still active, but Goldieblox states that it is ready to end it “as long as [they] will no longer be under threat” of an infringement suit. Isn’t it sad to think of how much negativity and bad press could have been spared if they’d just asked first?

Edit again! Newer developments have necessitated a sequel to this post. Go check it out! (I’m not typing out the scratch noises.)

Trademarks for Copyright Aficionados

The internet is filled with people who create copyrightable content, from blog posts like this one to YouTube videos to photographs. Many of the people who create content on the internet are familiar with good old copyright law, which seems so easy and straightforward (protip: it isn’t, but it’s good at pretending). On first approach, we expect trademark law to be the same: basically just copyright law with a business suit on.

It isn’t. Trademark law has a completely different goal and intent. Let me lay out the basics in a handy comparison chart, and then I’ll get to the hard stuff.

Readers Digest Version: Trademark law isn’t like copyright law. Copyright law protects the creator / owner. Trademark law protects the consumer / buyer. When trying to decide if something infringes or not, copyright asks, “Oh, is it similar to John Doe’s work?”. Trademark asks, “Would consumers think that this product comes from that source?”.

Okay, so that’s the easy part. Now we have to look at the really difficult part – the stuff that always throws people about trademarks.

When you create a work of authorship, like a painting, that work is covered. Full stop. It doesn’t matter what state you live in. It doesn’t matter whether you’re using that painting for your awesome lolcat website or for your grandmother’s birthday present. It’s covered.

When you create a brand name, a logo, a symbol, or any other mark, it matters how and where you choose to use that mark. If I create the “WhoaToes” brand of fuzzy socks and I am the first person to sell fuzzy socks under the name “WhoaToes,” I will immediately have a trademark for “WhoaToes” in my geographical area. I can register “WhoaToes” with the Trademark Office, and then I will have the right to use the mark nationwide. So that’s the where part.

The how part is more confusing. When I register my trademark, I have to indicate what kind of goods I intend to protect. I’m selling fuzzy socks. This means that when I register my trademark, I can register “WhoaToes” in clothing, and I can keep people from using that mark for clothing. So I could stop someone from making some awesome “WhoaToes” sweaters. However, if I’ve only claimed my mark in the clothing class of goods, I can’t stop someone from making “WhoaToes” potatoes or “WhoaToes” toys. I also can’t prevent non-commercial uses…

Except (you had to know there would be an except). I can prevent certain uses that harm the distinctiveness or the reputation of my brand. If my brand is famous, I get some extra protections on it: once practically everybody knows what WhoaToes is, I can stop people from making products in different classes. Basically, I can stop other people from cashing in on my famous mark, because if I don’t, then consumers won’t be able to tell what goods are really endorsed by WhoaToes and what goods are just some random person trying to ride my fuzzy WhoaToes coattails. After a while, consumers might just stop trusting the WhoaToes name, and that would be bad.

These are the basics. Of course, I am summarizing, and I am leaving a lot out (and some of the things I’ve left out are pretty important). If you have specific questions about getting trademark protection for your brand or logo, please talk to an attorney.

 

Side note: The chart above is CC0 public domain, to the extent of applicable law. Have at. I’d love a link back if you feel like it, but I don’t require it.