In early 2018, Stephanie Sinclair, a professional photographer brought a copyright suit against Mashable, Inc. and its parent company, Ziff Davis, LLC. Stephanie alleged the defendants infringed on her copyright regarding one of her photographs at least because Stephanie posted said photograph to her Instagram profile wherein Mashable then displayed the photograph on one of their articles.

In discovery, Mashable created an article, and displayed Stephanie’s photograph as part of the article by virtue of embedding the photograph from Stephanie’s Instagram. It is critical to note, as opposed to directly downloading and posting and/or copying and pasting Stephanie’s photograph to Mashable’s article (which may otherwise be knowing as uploading), Mashable embedded her photograph to the article via an Instagram interface.

From the standpoint of this case, embedding may be defined as a simple process wherein a webpage author can display an image, video and/or other media source to the author’s webpage by virtue of directly linking the source of such media. The process of embedding technically allows for the author’s website to display such media without the author’s website needing to “host,” own, or in some cases, have a license for the media.

An example of embedded media may be found here. Note, that upon hovering over or selecting embedded media, a user may be directed to Instagram’s webpage or have Instagram’s information displayed above such media.

The case (which can be found here) was ultimately dismissed in full albeit many arguments made by Stephanie. The ruling came generally from the following discovery: (1) Instagram’s terms and conditions state content posted to Instagram grants Instagram (and subsequently Instagram’s embedding interface) a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to such content, (2) Stephanie agreed the above portion of Instagram’s terms and condition and (3) Mashable properly utilized Instagram’s embedding interface to display Stephanie’s photograph. Thus, a generalized conclusion could be made that Mashable was not in fact infringing on Stephanie’s copyright as Mashable was utilizing a photo licensed by Instagram and interface owned by Instagram.

Now recently, a similar suit was filed by Elliot McGuken, a photographer who took a photo of a lake and posted the photo to his Instagram page. He found himself in a near identical situation to Stephanie wherein the day after Elliot posted the photograph, he found the photo displayed on a Newsweek LLC, article. The suit outlines the fact that Elliot is suing for copyright infringement and the fact that Newsweek properly embedded Elliot’s photograph from Instagram.

In contrast to Stephanie’s case, Elliot’s case was not dismissed in full and Elliot may have an opportunity to legally claim prayer for relief in form of damages, which may be monetary. Reportedly, an Instagram representative has made comment stating that the use of their embedding interface does not directly extend Instagram’s license of content to those seeking to utilize the interface, which creates a sharp contrast for the cases as described above.

More information is sure to emerge on not only the status of Elliot McGuken vs. Newsweek, LLC, but also the use of Instagram’s embedding interface and possibly the copyright implications that may arise from its use.

Instagram is the one of the largest photograph and video-sharing social media platforms in the world. As Instagram releases more information on the subject, it is sure to be a topic for online news, blog or media outlets to pay close attention to in order to ensure compliance with copyright laws, and a subject for photographers who use Instagram to follow to ensure their rights are protected.

Published in Copyright

An original work of authorship is accorded copyright protection when the work is fixed in a tangible medium of expression (17 U.S.C. §102). However, a copyright owner cannot sue for infringement of the copyrighted work until either 1) “registration has been made” of the work to the Copyright Office, or 2) the work is refused registration by the Copyright Office and the required deposit, application, and fee have been delivered to the Copyright Office in proper form (17 U.S.C. §411).

The phrase “registration has been made” has been interpreted differently by different federal appeals courts. Some courts have ruled the phrase means that the application has been accepted and registered by the Copyright Office. Other courts have ruled the phrase means that a properly filed application for copyright has been received by the Copyright Office. These other courts find support in their interpretation from other statutes where the same phrase is understood to mean properly applying for registration. Supporters of both interpretations point to part 2) of the statute for support of their respective interpretation.

This conflict among federal appeals courts has been recognized in the highest courts, and now the Supreme Court has agreed to settle the dispute in the case, Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, et al. Does the phrase “copyright registration being made” require only a properly filed application to be received by the Copyright Office? Or does that phrase require an action to be taken by the Copyright Office—either acceptance or refusal—in response to receipt of a properly filed application? The Supreme Court will soon answer that question.

Published in Copyright

Online service providers should note the approaching deadline in connection with the Digital Millennium Copyright Act (“DMCA”). Many websites, mobile apps, blogs, discussion boards, and the like qualify as online service providers: “those that allow users to post or store material on their systems, and search engines, directories, and other information location tools”. The DMCA has "safe harbor" provisions that may shield online service providers from copyright infringement liability with respect to content that is posted or uploaded by their users. In order to seek to take advantage of this "safe harbor" protection, online service providers must designate an agent that will receive notifications of claimed copyright infringement with respect to user-generated content. If you have designated an agent for this purpose in the past, please note that any designation that was made using the U.S. Copyright Office’s former registration system will automatically expire on January 1, 2018. Therefore, it is critical for online service providers to file a new designation before the end of 2017. Our firm handles these filings and has been appointed as the designated agent for DMCA take-down notifications for many clients. For more information about the process, or to speak to one of our attorneys about having our firm designated as your agent for take-down notifications under the DMCA's "safe harbor” provisions, please contact our office at 305-858-8000.

Published in Copyright

Online service providers should note the approaching deadline in connection with the Digital Millennium Copyright Act (“DMCA”). Many websites, mobile apps, blogs, discussion boards, and the like qualify as online service providers: “those that allow users to post or store material on their systems, and search engines, directories, and other information location tools”. The DMCA has "safe harbor" provisions that may shield online service providers from copyright infringement liability with respect to content that is posted or uploaded by their users. In order to seek to take advantage of this "safe harbor" protection, online service providers must designate an agent that will receive notifications of claimed copyright infringement with respect to user-generated content. If you have designated an agent for this purpose in the past, please note that any designation that was made using the U.S. Copyright Office’s former registration system will automatically expire on January 1, 2018. Therefore, it is critical for online service providers to file a new designation before the end of 2017. Our firm handles these filings and has been appointed as the designated agent for DMCA take-down notifications for many clients. For more information about the process, or to speak to one of our attorneys about having our firm designated as your agent for take-down notifications under the DMCA's "safe harbor” provisions, please contact our office at 305-858-8000.

Published in Copyright
Wednesday, 12 July 2017 22:09

Important Copyright Notice

This is an important notice regarding the Digital Millennium Copyright Act (“DMCA”). The DMCA has "safe harbor" provisions that may shield online service providers from copyright infringement liability with respect to content that is posted or uploaded on a website by others. In order to seek to take advantage of this "safe harbor" protection, online service providers must designate an agent that will receive notifications of claimed copyright infringement with respect to user-generated content on their web sites. If you have designated an agent for this purpose in the past, please note that any designation that was made using the U.S. Copyright Office’s former registration system will automatically expire on January 1, 2018. Therefore, it is critical for online service providers to file a new designation before the end of 2017. Our firm handles these filings and has been appointed as the designated agent for DMCA take-down notifications for clients. For more information about the process, or to speak to one of our attorneys about having our firm designated as your agent for take-down notifications under the DMCA's "safe harbor” provisions, please contact our office at 305-858-8000.
Published in Copyright

Firm Attorneys Peter Matos, Meredith Mendez and Jonathan Woodard were successful in enforcing  the valuable intellectual property rights of well-known jeweler Merit Diamond Corporation related to its highly successful Sirena®  Collection in federal court in Miami, Florida.  Merit sued Defendants, Sears, Roebuck & Co., Sears Holdings Management Corporation, Sears Brands, LLC, Kmart Operations LLC, Kmart Corporation, iStar Jewelry LLC, Yelnats, Inc., and Stanley Creations, Inc. for copyright and trade dress infringement due to their sale and manufacture of infringing jewelry.  The Court entered a Judgment upon consent in favor of Merit requiring the Defendants to pay Merit Diamond the amount of $90,000 and permanently cease all manufacture, distribution, and sale of the infringing products. http://bit.ly/2qT9pwg

Published in Copyright

The 11th Circuit in Fourth Estate Public Benefit v. Wall-Street.com, LLC, No. 16-13726 (11th Cir. 2017) has reaffirmed its position that a copyright owner cannot file a copyright infringement lawsuit unless the Register of Copyrights registers the copyright in the works at issue. 

Although registration is not required to own a copyright, it is required for a copyright owner to enforce its rights in court in a copyright infringement action. The Copyright Act provides that “registration” of a copyright is a precondition to filing suit for copyright infringement. 17 U.S.C. § 411(a).

In Fourth Estate, the plaintiff filed an application to register its works, although the Register of Copyrights did not register the works. The Court held that “registration” occurs when the Register of Copyrights registers the copyright and not merely when an owner files an application to register the copyright. Therefore, the Court affirmed the district court’s dismissal of the plaintiff’s complaint on the basis that it failed to plead compliance with the registration requirement of 17 U.S.C. § 411(a). 

This decision represents a split in authority among the circuits as some circuits such as the Ninth and Fifth Circuits follow the “application approach”, which requires a copyright owner to file the deposit, application, and fee required for registration before filing a suit for infringement.

 

Published in Copyright

Leonard v. Stemtech Int'l, Inc, No. 15-3198 (3d Cir. 2016)

These pictures are worth more than just 1,000 words.  In August, the Third Circuit affirmed a jury’s return of a $1.6 million verdict for Andrew Leonard as a result of copyright infringement by Stemtech International.  The infringement stemmed from photographs that Leonard took of stem cells using electron microscopes in a highly technical type of photography.  The two photographs at issue were created in 1996, then registered with the U.S. Copyright Office in 2007, when he planned to bring the lawsuit.

Published in Copyright