Don't "pin it" on Pinterest: addressing the conflict between the culture of sharing and secondary liability for copyright infringement.

• Author: Stokes, Roxanne A.

1. INTRODUCTION

   In the past decade we have truly become a community committed to sharing our interests, daily activities, and ideas through various social media platforms. We share our daily adventures and personal pictures on Facebook, our feelings and opinions in 140 characters or less on Twitter, and our professional skills and experiences on LinkedIn. As of March 2010, a new platform, Pinterest, (1) was released which allows its users to connect with others sharing things they find interesting. (2) Pinterest has quickly expanded to a community of over 70 million users. (3) The site allows users to create digital bulletin boards, or "pinboards," where images can be organized, posted, and shared by "re-pinning." (4) Users can upload images or add pictures from websites using Pinterest's "Pin It" button which links back to the original source of the image. (5)

   The Pin It button can be embedded in a user's browser toolbar allowing users to grab images from various websites to his or her pin-board while surfing the Internet. (6) Creating a compilation of images obtained from outside or unauthorized sources using the Pin It button can create a problem of copyright infringement because copyright holders retain particular exclusive rights to their works. (7) In an effort to limit liability, Pinterest implemented an "opt out" function, where website owners who do not want their copyrighted images pinned can disable the Pin It feature. (8) However, this opt out function may not solve the problem of copyright infringement by Pinterest users. (9) This Note analyzes the question of whether Pinterest by its Pin It button induces its users to infringe the copyrights of image owners or creators.

   Section II begins with an overview and history of copyright law in the United States affirming Congress's sustained purpose to promote innovation while protecting those innovators with exclusive rights to their work. (10) Liability for copyright infringement is divided into three tiers, providing courts with standards used to assess potential direct and indirect infringement. (11) Not only can users be held directly liable for their infringing conduct but service providers may also be indirectly liable for users' directly infringing conduct if the Internet service providers (ISPs) are not protected by safe harbor provisions. (12) It also examines how the Digital Millennium Copyright Act (DMCA) has evolved and adapted to changes in technology, assessing how courts handled issues of secondary liability regarding social media sites. (13) However, Congress struggles to keep up with technology and sustain the founding purposes of copyright law as the DMCA continue to evolve. (14)

   Section III describes aspects of Pinterest, a new and increasingly popular website, including the Pin It button and its policies. (15) Pinterest is equipped with standard take-down notice procedures, yet its Pin It button eases the ability of users to copy media without owners' permission leaving open the question of secondary liability. (16) Section IV applies current copyright laws to the Pin It button to determine whether Pinterest could be found liable for contributory infringement by inducing its users to violate others' copyrights. (17) It also compares Pinterest with precedent assessing it against other social media sites. (18) It also provides possible measures Pinterest can take to make it more conformant to copyright law, more likely to avoid secondary liability, and more clearly discouraging of users' copyright infringing conduct. (19) This Note ultimately argues that Pinterest is protected by DMCA safe harbor provisions, yet its Pin It button leaves Pinterest vulnerable to lawsuits because this feature subconsciously invites and encourages its users to directly infringe oth-others' copyrights. (20)

2. HISTORY OF U.S. COPYRIGHT LAW, THE DMCA, AND SECONDARY LIABILITY FOR ONLINE CONTENT SHARING

   1. Overview of U.S. Copyright Law

      The United States valued copyrights as significant from the beginning. (21) Congress first enacted the Copyright Act of 1790, to encourage learning and to secure "the copies of maps, charts, and books, to the authors and proprietors of such copies," thus encouraging sharing by publishing such maps, charts, and books. (22) It remains a fundamental aspect of our legislation and continues to evolve, from eliminating common law copyright protection in 1976 (23) to expanding copyright protection to works created online. (24) The Copyright Act grants copyright holders a bundle of six exclusive rights: (1) to reproduce copies; (2) distribute copies; (3) prepare derivative works; (4) perform works publicly; (5) perform publicly by digital transmission; and (6) to display works publicly. (25) When any one of these rights is violated, the copyright holder may be able to recover remedies for copyright infringement. (26) Evidence of ownership and the violation of at least one exclusive right establish a prima facie case of copyright infringement. (27) However, if the alleged infringer proves a valid defense, such as the fair use defense, he or she may escape liability. (28) Fair use provides an exception to the exclusive rights of copyright holders, allowing for the reproduction or distribution of works for the purposes of "criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research[.]" (29) In determining liability for infringement, courts try to balance the importance of limiting infringement without restricting innovation. (30) Furthermore, the ease, accessibility, and instantaneous nature of the Internet make this balancing act more complex and difficult. (31)

   2. Tiers of Liability for Copyright Infringement

      The Copyright Act, in conjunction with courts, established tiers of liability for copyright infringement. (32) The tiers consist of direct and indirect infringement. (33) Indirect infringement is also recognized as secondary liability with two subcategories: contributory and vicarious infringement. (34) Thus, liability for copyright infringement is split into three tiers: direct, contributory, and vicarious. (35)

      In order for one to be liable under the first tier of liability--direct copyright infringement--an individual must copy the "protected elements of a copyrighted work," such as originality, for instance, by evidence of access to the work or the copy's "substantial similarity" to the original. (36) Direct infringement calls for active conduct by the infringer though the infringer need not know his/her activity violates copyright law. (37) For example, in Playboy Enterprises v. Frena, (38) George Frena operated a computer bulletin board service that distributed Playboy's copyrighted photographs without Playboy's permission. (39) By uploading the photographs, it allowed other bulletin board subscribers to access the photographs, thus Playboy claimed its exclusive right to distribute copies was violated. (40) Playboy established a prima facie case of direct copyright infringement by proving ownership of the photographs by evidence of copyright registration, and that its distribution rights were violated because Frena, who added the copyrighted photographs to his service, lacked permission to do so. (41) The burden then shifted to Frena to provide a defense for his activity; however he failed to do so. (42) Thus, the court found Frena liable as owner and operator of the service for direct infringement by publicly displaying and distributing Playboy's copyrighted photographs. (43)

      Next, in order to establish secondary infringement, one must first establish the existence of direct infringement on behalf of a thirdparty. (44) Secondary liability, as mentioned above, encompasses contributory infringement and vicarious infringement of copyrighted material. (45) The second tier of liability, contributory infringement, requires knowledge of the infringing conduct, and inducement or material contribution to the infringing conduct of another. (46) The standard for knowledge is objective and thus established when a defendant knew or should have known about the infringing conduct. (47) Inducement requires "purposeful, culpable expression and conduct." (48) Advertisement is a

      common method of inducing infringement. (49) Material contribution occurs "when an actor 'either actively encourages infringement, or knows of the infringing activity and could control it, but does nothing to prevent it.'" (50)

      One of the first decisions based on this theory of contributory infringement was Gershwin Publishing Corp. v. Columbia Artists Management, Inc. (51) The American Society of Composers, Authors and Publishers (ASCAP) sued Columbia Artists Management, Inc. (CAMI) on behalf of Gershwin for failing to pay licensing fees to ASCAP to publicly perform a copyrighted song for-profit. (52) The singers performed the copyrighted song for-profit at a public, local community association's concert without obtaining prior permission. (53) CAMI managed the performers and also promoted and organized the concert where the unauthorized performance occurred. (54) The performers directly infringed Gershwin's exclusive performance copyright. (55) The Second Circuit held CAMI liable for contributory copyright infringement because it "knowingly participated" in the infringing conduct by its knowledge and active role in organizing what content was performed at its associations' concerts. (56) By contrast, in Betamax, the Supreme Court reasoned that Sony, manufacturers of the Betamax video recording machine, could not be liable for contributory copyright infringement just because one of the Betamax's many uses could be infringing to Universal, the motion picture studio company's copyrights in certain television programs. (57) Universal alleged that Betamax consumers used this machine to record its copyrighted works thereby infringing its exclusive right to reproduce copies. (58) However, the Betamax...