Copyright Infringement and “The World’s Largest Copy Machine”
Any frequent Internet user, whether for personal or business reasons, conducts searches to learn new information and draw inspiration. Sometimes these users find the search results so helpful or compelling that they decide to reproduce part or all of the content for their own uses. The reproduction may occur in the form of plagiarism or direct copying to an online or offline destination. Though the technology exists to prevent the printing or copying/pasting of content found on web pages, it is frequently not utilized by the content provider. This makes it easy for others to grab text, graphics, or photos that they want to use without contacting the provider.
We have represented the owners of such content in making claims against the unauthorized users. We have also represented the parties who have obtained such content without the owner’s permission and are the target of a claim by that owner. This article presents information and guidelines that may be helpful to each group.
If you have published original text, graphics, or photos on the Internet and find such items being used by third parties, your most likely avenue for relief is a claim of copyright infringement. Copyright law protects "original works of authorship" that are "fixed in a tangible form of expression." Such works of authorship include, but are not limited to, literary works (text) and pictorial and graphic works. Works of authorship are not entitled to copyright protection if they do not contain some degree of originality, and for that reason instructions (for example, recipes), common information (for example, a calendar) and familiar symbols (for example, a "smiley face") are not eligible for copyright protection.
Assuming your work is an original work of authorship, you next need to make sure that you own the copyright in it. If you are an individual, and created the work without any obligation to turn it over to a third party (such as your employer), this should not be an issue. If "you" are an entity, then unless the work was created by an employee within the scope of his/her job, or was created by an independent contractor who assigned the rights in the work to you, it is likely you don’t own the copyright and have no authority to enforce it against a third party. In either instance, if your investigation reveals that you do not own the work, you would need to obtain an assignment from the actual owner before pursuing the copyright claim against the third party.
If you do own the copyright, your next move is to evaluate what your desired outcome is. Our clients typically have simply wanted the infringing activity halted, and are not interested in pursuing monetary damages. This can generally be accomplished through a combination of a "cease and desist" letter to the infringing party and a self-help mechanism made available under a federal law known as the "Digital Millennium Copyright Act" or "DMCA." The DMCA obligates search engines, such as Google, and website hosting providers, to "take down" websites upon receiving notice and reasonably sufficient proof that those websites contain infringing content. All major search engines provide relatively simple instructions on how to file a DMCA claim.
If you are interested in pursuing damages, your path is more complicated and expensive. Any claim of copyright infringement must be pursued in federal court. Not only is this an expensive route to relief, but you must have a copyright registration in the infringed-upon work, or at least a pending application to register the copyright, before you can file a complaint. If you do not have a registration prior to the commencement of the infringing activity, you can only claim the right to recover actual damages and the infringer’s profits associated with the infringement. Unless you are in the business of licensing the infringed-upon items, it is likely that there will be minimal to no provable damages. No matter how offended you may be at the unauthorized use of your work, your best outcome is typically cessation of the infringing activity and a promise "not to do it again."
If you have used someone else’s original text, graphics, or photos and have received a claim that you have engaged in copyright infringement, you should engage legal counsel experienced in this area to formulate an appropriate response and action plan. Direct communications with the party claiming copyright ownership, or an action in response to its claim, should be avoided, particularly if you have not investigated the origin of the allegedly infringing item or the strength of the claim.
If it turns out that you have used someone else’s text, graphic, or photo, however unknowingly, the best result for you will be your agreement to take down the item, with no payment due to the copyright owner. The worst result is the payment of compensation. Certain companies, particularly those in the business of licensing photographs or other images for use online, register their copyrights in those images and aggressively pursue monetary damages. It is unlikely that in such instances you will avoid making any payment; your goal should be to negotiate it down to the lowest amount possible.
As always, opportunities exist for preventative measures to avoid infringing activity. If you are the owner of online content, consider using technological means to prevent the "copying and pasting" of your works of authorship. If you are developing or updating your own website, make sure you understand where the content originated. If you are using a non-employee website developer, obtain written representations from that developer that it has not used third party content on your site without the content owner’s permission. You should also obtain the right to receive indemnification from the developer if that representation is breached. Professional website developers are aware of this issue and will be neither surprised nor offended by these provisions.
Please contact any member of the Intellectual Property Practice Group (Roberta Christensen, David Goeschel, or Linda Dammann) if you have any questions about this article.
by Roberta L. Christensen