IP Law Chat : IP Law Chat -- Hendricks & Lewis, intellectual property, trademark, copyright and technology attorneys

MGE sued Power Maintenance International, Inc. and GE ("GE/PMI") for, among other things, violations of the Digital Millennium Copyright Act in connection with MGE's uninterruptible power supply machines ("UPS") and MGE's copyrighted software used on those machines.

As to MGE's DMCA claim, MGE's UPS machines require use of MGE's copyrighted software to complete full servicing of the machines.  MGE instituted security measures related to use of its software, succinctly described by the Fifth Circuit:

The software requires connection of an external hardware security key (called a "dongle") to the laptop serial port.  Each dongle has an expiration date, a maximum number of uses, and a unique password.  When the software is activated, it searches for a properly programmed dongle before it will fully launch.  Once launched, the software will go through a second series of protocol exchanges with the data located on the UPS machine's microprocessors to confirm that MGE software is communicating with MGE hardware.  If the protocol exchange is successful, MGE's software proceeds to collect system status information for the technician.

After MGE introduced the security technology, hackers published information on the Internet disclosing how to defeat the security features of a hardware key.  Once that key is defeated, the software can be accessed and used without limitation.  GE/PMI apparently admitted that it recovered a laptop that contained hacked MGE software and had used the software in five instances.

During an off-record jury charge conference, the District Court dismissed MGE's DMCA claim and MGE appealed that decision, among others.

But the Fifth Circuit affirmed the dismissal of the DMCA claim, concluding that MGE had not shown that GE/PMI circumvented MGE's software protections in violation of the act.  Specifically, the Fifth Circuit found that MGE had not shown that bypassing its "dongle" infringed a right protected by the Copyright Act, which is the type of "access" the DMCA was intended to reach.  The Fifth Circuit concluded that the DMCA required that the "owner's technological measure must protect the copyrighted material against an infringement of a right that the Copyright Act protects, not from mere use or viewing."  MGE's "dongle" only prevented initial access to the software rather than protecting against copyright violations and therefore circumventing the "dongle" did not give rise to a DMCA claim.

The case cite is MGE UPS Systems Inc. v. GE Consumer & Indus. Inc., No. 08-10521 (5th Cir. July 20, 2010).

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The Southern District of New York brought an end to the copyright infringement case brought by Viacom against YouTube and Google (referred to collectively as YouTube) by granting summary judgment in favor of YouTube on all of Viacom's claims for direct and secondary copyright infringement.

Despite its length, the Court's conclusion was short:  YouTube was entitled to the protections of the Digital Millennium Copyright Act's ("DMCA") "safe harbor" provisions, 17 U.S.C. 512(c).  The "critical question," according to the Court, was whether the knowledge required under the DMCA's language was "a general awareness that there are infringements (here, claimed to be widespread and common), or rather mean actual or constructive knowledge of specific and identifiable infringements of individual items."

Based on lengthy excerpts of legislative history supported by case law, the Court concluded that "[g]eneral knowledge that infringement is 'ubiquitous' does not impose a duty on the service provider to monitor or search its service for infringements."  Rather, the burden is on the copyright owner to identify infringements.  But if a service provider knows of specific instances of infringement from notice from the copyright owner, that provider must promptly remove the infringing material.  Because in this case it was uncontroverted that YouTube removed material when it was given notices, it was protected "'from liability for all monetary relief for direct, vicarious and contributory infringement'" under the DMCA.

The case cite is Viacom Int'l Inc. v. YouTube, Inc., 07 Civ. 2103 (LLS) (S.D.N.Y. June 23, 2010) and the Court's opinion can be found here.

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In February 2007, Stephanie Lenz videotaped her young children dancing in the family's kitchen while a song, "Let's Go Crazy" by Prince, played in the background.  Lenz uploaded the 29 second video to YouTube.  (Although the song purportedly can be heard for about 20 seconds of the video, I have to admit that I could hear very little of it because of the admittedly "poor sound quality" and the sounds the children were making as they pushed toys around the family's kitchen.)

Universal then sent a takedown notice pursuant to Section 512 of the DMCA to YouTube, which stated in part that Universal had a "good faith belief" that the video "is not authorized by the copyright owner, its agent, or the law."  In response, YouTube took down the video although it was re-posted approximately six weeks later after Lenz sent a DMCA counter-notification.

Lenz then sued Universal for several claims, two of which were dismissed upon Universal's first motion to dismiss.  Lenz then filed an amended complaint that asserted a single claim under Section 512(f) of the DMCA that Universal "knowingly materially misrepresent[ed]" that the home video of her dancing children infringed Universal's copyright in the Prince composition.  Specifically, Lenz asserted that her use of the song was a "self-evident non-infringing fair use" under the Copyright Act and that Universal's DMCA notice stating to the contrary was an actionable misrepresentation under Section 512(f) of the DMCA.

Although Universal claimed that "it [was] time for this case to be over," the Court apparently did not agree and denied Universal's motion to dismiss the amended complaint.

Essentially, Universal argued that (1) it did not send a DMCA notice because, although it was sent to the email address dedicated to such notices and contained all the necessary elements of a DMCA notice, Universal apparently "does not agree that YouTube is eligible for protection under the DMCA's 'safe harbors,'"; (2) there was no knowing misrepresentation because fair use is an affirmative defense to otherwise infringing conduct; (3) fair use is never "self-evident" because of its "fact-specific, equitable nature"; and (4) as a fact-specific matter, Lenz's use was not "self-evidently" a fair use.  (As a side-note, it seems problematic for Universal to be claiming that it can and does make legal and factual conclusions about whether YouTube is "eligible for protection under the DMCA's 'safe harbors'" but cannot be expected to consider the fair use doctrine.)

Stating as a fact that Universal did send a DMCA notice to YouTube, the Court characterized the issue before it as follows:  "whether 17 U.S.C. [Section] 512(c)(3)(A)(v) requires a copyright owner to consider the fair use doctrine in formulating a good faith belief that 'use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.'"  Noting that the Copyright Act expressly provides that "fair use of a copyrighted work . . . is not an infringement of copyright," the Court concluded that the copyright owner must consider the fair use doctrine in evaluating its "good faith belief that use of the material in the manner complained of is not authorized by . . . the law."  Thus, the Court concluded that an allegation that the copyright owner acted in bad faith by issuing a takedown notice without consideration of the fair use doctrine is sufficient to state a misrepresentation claim under Section 512(f) of the DMCA.

You can find the Court's opinion here (PDF, 10 pages), and for an interesting read, the parties' lengthy briefing on the motion here (PDF, 24 pages), here (PDF, 28 pages) and here (PDF, 18 pages).

 

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The Electronic Frontier Foundation filed suit against "paranormalist" Uri Geller (apparently also known as, according to the complaint, Uri Geller Freud), in the United States District Court for the Northern District of California on behalf of Brian Sapient, a member of the "Rational Response Squad."  According to the complaint, Uri Geller is a well-known performer who claims to have psychic abilities that he apparently uses to, among other things, bend spoons with his mind.

Brian Sapient, as part of the Rational Response Squad's activities attempting to debunk what it contends are irrational beliefs and theories, posted a portion of a NOVA video called "Secrets of the Psychics" on YouTube that apparently challenged Geller's "performance techniques."  Geller responded by demanding that YouTube take down the video under the DMCA, which YouTube did.  It is not clear how much of the NOVA video was posted on YouTube but according to the complaint, only three seconds of the video is subject to a copyright owned by Geller or the company of which he is a director and controlling shareholder, "Explorologist Ltd."

The complaint alleges that Geller and Explorologist Ltd. misrepresented that the NOVA video infringed their copyright and seeks, among other things, a declaration of non-infringement.

To read a copy of the complaint check out the EFF's website.

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