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Practice Area Newsletter

American Bar Association - Defending Liberty, Pursuing Justice

Fall 2008

Vol. 5, No. 1

Business Law

 

The Robots Are Coming: Protecting Website Owners From Copyright Infringement Claims

From the earliest days of the Internet, online technology has allowed users to access and distribute copyrighted content with seemingly reckless abandon. In recent years, however, high-profile copyright holders like major record labels and media companies have harnessed technology to detect—and demand payment for—online infringements of their works. Now, as wider adoption of online detection tools drives down the costs of discovering infringement, many more companies and individuals are turning to such tools to protect their copyrights.

Image recognition is one such tool that is proving extremely useful for owners of visual works to police use of their works online. Companies like Digimarc, PicScout, and Idée are exploiting the emerging market for copyright infringement detection by using sophisticated robots (also known as spiders) that troll through web sites image by image to find uses of their customers’ creative works. The robots then report those uses back to the copyright holder and, if no license is found, the copyright holder will typically seek damages for the unauthorized use. While the expense of these services had previously limited their use primarily to large media companies, new developments like the TinEye service from Idée promise to bring online detection of unlicensed images to a wider base of copyright holders. Similar services like copyscape.com are available for detecting infringements of written text.

What will these developments mean for website owners who are using these images? As copyright holders discover more unauthorized uses online, unsuspecting website owners will see an increase in cease and desist letters, Digital Millennium Copyright Act (DMCA) takedown notices, and, of course, demands for payment. The strict-liability nature of copyright law is often poorly understood by typical website owners, and anyone without scrupulous practices for licensing digital media risks liability for copyright infringement.

Attorneys whose clients include website owners—a group that encompasses practically every business and countless individuals—can advise those clients to take several specific steps to protect themselves from copyright infringement claims:

  1. License all content. While this may seem elementary, there still exists a common attitude that if something is available on the Internet, it must be in the public domain. This is not the case. And just because a work doesn’t have a copyright notice doesn’t mean it is available for free; Congress abolished the notice requirement for all works published after March 1, 1989, to comply with an international treaty. As noted above, copyright infringement is essentially a strict liability offense—where infringement in fact occurs, intent to infringe is not required to establish liability (although “innocent infringement,” as defined by statute, can reduce damages). This means that the burden is on a user of content to ensure that he has obtained proper permissions, not on the copyright holder to police her work.

  2. Supervise your web designer. Relatively few businesses create and maintain their own websites; most outsource this work to a web designer of some sort. But the owner of a website is ultimately responsible for the content it contains, so it is important to ensure that any web designer obtains all necessary permissions to use creative content. A savvy website owner will demand copies of all licenses for content of any kind. On top of that, your client may seek a warranty from the web designer that he has obtained all necessary licenses as well as indemnification should any infringement claims arise. But the licenses themselves are of paramount importance; contractual claims have little value against a cash-poor or defunct web designer, but a valid license will often defeat—and will at least mitigate potential damages resulting from—an infringement claim.

  3. License from the proper party. This step can be easier said than done. Where an author has registered her work with the U.S. Copyright Office, a potential licensee can demand to see a copy of the registration certificate or search the copyright records online to verify ownership. But registration is not required for copyright protection to vest in a work, and anyone can fraudulently claim authorship of an unregistered work. Even with registered works, an author may have already transferred her licensing rights to a third party. The best solution is often to seek warranties and/or indemnification from the licensor that she has all necessary rights to issue the license.

  4. Keep records of your licenses. Again this seems elementary, but most people don’t realize that content is often licensed for specific uses and durations. Any use that exceeds the license is technically infringement and is actionable as such. In practice, however, a typical copyright holder will likely seek license-extension fees from someone who can show that he holds a valid-but-incomplete license rather than sue for full-blown infringement. Extension fees are usually much less costly than defending against an infringement claim.

  5. Comply with the DMCA. This suggestion applies primarily to owners of websites that allow users to post and edit their own content online. Such websites include content-sharing sites, social networking sites, and even blog sites that allow users to post comments to blog entries. Without DMCA protections, website owners risk being held primarily liable for copyright damages whenever an outside user posts infringing content on the site. And while the DMCA shield is powerful, it is not automatic; website owners must comply with the specific requirements of the statute including registering with the Copyright Office as an Online Service Provider, publishing the contact information of a Designated Agent for handling DMCA takedown requests, and complying with such requests within the statutory time periods.

While this list isn’t exhaustive, these basic steps will go a long way towards insulating website owners from copyright infringement claims and defending any claims that do arise. For more information, the Copyright Office maintains several publications on its website, www.copyright.gov, to help content users navigate copyright law.

John Grant serves the legal needs of creative people and businesses in the areas of copyright, Internet law, and general business law. He practices in Seattle, Washington, and can be reached at .

Note

Originally published in the August 2008 issue of the King County Bar Association Bar Bulletin. Reprinted with permission of the King County Bar Association.

© Copyright 2008, American Bar Association.