Cite as 12 J. High Tech. L. 106 (2011)
Decades from now, we will remember 2010 for the BP oil spill and the year 2011 because of a slow recovery from the steepest economic downturn since the Great Depression of the 1930s. (1) Nevertheless, it is reasonably certain that intellectual property (IP) lawyers will still remember some of the remarkable copyright cases included in this roundup of cyberspace-related cases. For the past two decades, copyright law has been accommodating to the digital age. While the World Wide Web did not become part of mainstream American culture until the mid-1990s, the widespread use of the Internet dramatically changed the course of copyright law.
The World Wide Web continues to enable copyright infringement on a scale unfathomable in the 1980s and 1990s. In October 2011, the U.S. Copyright Office released its strategic plan that prioritized its activities for the next two years. One Copyright Office priority is the "feasibility and facilitation of the mass digitization of books, outside the context of Google's private effort." (2) Google Book Search already enables users around the world to access millions of books from the world's finest libraries at the click of a mouse. (3) Among the U.S. Copyright Office's call for legislative action is to find new ways to deter 'rogue websites' that enable widespread copyright infringement of copyrighted works, "particularly motion pictures, television programs, books, and software." (4) Another legislative priority is to ramp up "criminal penalties for unauthorized online streaming of content." (5) The U.S. Copyright Office also calls for "amending federal law to give librarians and archivists more support in their efforts to deal with digital content." (6) The priority of restraining widespread infringement on the Internet is a top priority for copyright owners around the world. This Article is a roundup of how Internet-related cases decided in the past two years continue to reshape the contours of copyright law.
A Roundup of Internet-Related Copyright Developments
In 1990, a court for the first time mentioned the word, "Internet" in a judicial opinion in United States v. Morris, (7) where the Second Circuit upheld a graduate student's conviction under the Computer Fraud and Abuse Act for releasing a worm that caused hundreds of educational and military computers to crash. (8) The first copyright infringement cases with implications for the Internet were decided shortly before the World Wide Web became part of the common currency. (9) In Atari Games v. Nintendo, (10) the court found that a computer program that locked out unauthorized cartridges out of a Nintendo game system contained protectable forms of expression. (11) In Sega Enterprises Ltd. v. Maphia, (12) a California federal court found an electronic bulletin board liable where subscribers downloaded copyrighted computer games without permission of the copyright owner. (13) The court issued an injunction ordering the operator of the bulletin board to stop enabling subscribers to copy Sega's game. (14) This decision had great implications for the Internet because it created a swirl of uncertainty about whether administrative Internet activities such as caching or viewing content constituted copyright infringement.
The year 1995 marked the first time a court considered whether an Internet Service Provider (ISP) could be found secondarily liable for permitting infringing material to be posted on its website. (15) The bellwether case regarding Internet-related copyright infringement was decided a decade later. In Metro-Goldwin-Mayer Studios, Inc. v. Grokster, Ltd., (16) the U.S. Supreme Court unanimously held that "one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties." (17) The Grokster Court unanimously held the P2P defendants distributed their software in order to promote copyright infringement. (18) The "mere knowledge of infringing potential or actual infringing uses would not be enough here to subject [a defendant] to liability." (19) The Court described how Grokster induced direct infringement in its advertising and business model targeting millions of consumers. (20) "The probable scope of copyright infringement," just with respect to the two networks at issue there, was "staggering." (21) Since Grokster, courts have continued to grapple with the problems of accommodating copyright law to digital content, and these cases are featured next. (22)
The Law of Electronic Rights
Hardly a week goes by without new cases and controversies involving copyright law and cyberspace. Since the mid-1990s, the U.S. Congress and courts have stretched the law of copyright to accommodate electronic rights. (23) Our roundup of cyberspace-related copyrighted content begins with the problem of adapting copyright law to electronic rights. Copyright law protects "original works of authorship" that "fixed" in any tangible medium of expression." (24) The federal law of copyright recognizes property interests in expressions that are the product of the human intellect. (25) The Internet's ease of copying creates challenges for copyright owners to protect their works. (26) When the owner of a copyright transferred "the right to 'print, publish and sell the work[s] in book form,'" the Rosetta Books court ruled that the transfer of rights in book form did not include ebook rights. (27) The Eleventh Circuit in Greenberg v. National Geographic Society (28) held that National Geographic could not republish a freelance photographer's work in a CD-ROM collective work without receiving permission. (29) National Geographic created a compact disc program including all of its published magazines and an animated clip featuring one of the plaintiff's photographs. (30) The district court granted summary judgment to the magazine holding that the revision of the prior collective work was privileged. (31) The Eleventh Circuit disagreed, holding that the CD-ROM was a new collaborative product not protected by fair use and was not a mere revision of the magazines, but an entirely new product. (32)
In New York Times Co. v. Tasini, (33) the U.S. Supreme Court affirmed the Second Circuit's reversal of the district court's dismissal of copyright infringement claims by freelance authors against owners of online databases and print publishers. (34) The freelance authors had licensed their copyrighted works for print media but not for electronic publication in LexisNexis and other digital databases. (35) The Tasini Court held that the electronic republication of copyrighted works by freelance writers in an electronic database constituted copyright infringement. (36) The publisher-defendants' position was that the privilege of 17 U.S.C. [section] 201(c) gave them the right to "reproduce and distribute" collective works in the electronic databases. (37) Justice Ginsburg, writing for the majority, reasoned:
[t]he publishers are not sheltered by [section] 201(c), we conclude, because the databases reproduce and distribute articles standing alone and not in context, not "as part of that particular collective work" to which the author contributed, "as part of ... any revision" thereof, or "as part of ... any later collective work in the same series." (38) The Tasini Court held that in the absence of a separate agreement, the electronic and print periodical publishers infringed the copyrights of the freelance writers by including their works in electronic databases. (39) After Tasini, electronic and print publishers revised their license agreements with freelance writers. (40) Some publishers entered into separate agreements with the writers whereas others removed the freelancers' works from the electronic databases. (41) Today most publishers require authors to sign made for hire agreements, or to assign or transfer their separate electronic rights to them. (42) After Tasini, the copyright infringement lawsuits filed by the freelance writers were stayed and later consolidated by the Judicial Panel on Multi-district Litigation. (43)
Nearly a decade later, the Court continues to grapple with issues reverberating from Tasini in Elsevier, Inc. v. Muchnick. (44) The Second Circuit reversed the approval of a settlement between freelance writers and online database owners and publishers, finding that the registration requirement in 17 U.S.C. [section] 411(a) divested the federal courts of jurisdiction over the unregistered holders' infringement claims. (45) In Muchnick, the Court held that 17 U.S.C. [section] 411(a) does not limit a federal court's subject matter jurisdiction to certify a class and approve a settlement that includes class members with unregistered works. (46) In August 2011, the Second Circuit ruled that the class representation was inadequate for one of the categories of electronic database plaintiffs. (47) The complexity of the electronic database litigation is emblematic of new legal dilemmas for copyright law in responding to the digital world.
A Roundup of Recent DMCA Cases
i. Introduction to DMCA
The Digital Millennium Copyright Act (DMCA) is special legislation to address the problem of accommodating copyright law for the Internet, (48) which has been described as the world's largest copy machine. (49) President William Clinton signed the DMCA on October 28, 1998, which addressed a large number of Internet-related issues. The DMCA amended the U.S. Copyright Act to comply with copyright treaties of the World Intellectual Property Organization (WIPO). (50) The DMCA was the first time that Congress revised copyright law to accommodate Internet technologies. (51) Title II of the DMCA limits service provider's liability for copyright infringement for: (1) transitory digital network communications, (2) system...