Here is a story that would be an excellent fact pattern for a media law exam. Copyright! DMCA! Libel! Oh my…. Well, at least I hope it will be a topic of interest for the readers of this blog.

Background

Consider the following fact pattern, drawn from a series of blog posts by the parties to this dispute. (Each party has since made an effort to delete their respective posts, so this analysis will not refer to the parties by name.)

Photographer took a picture of downtown Houston, and then posted the photograph on his blog. He later discovered that several sites had used the photograph without his permission, and he proceeded to send them all DMCA takedown notices. Some of the sites took down the pictures, and others asked to be granted a license. Fourteen of the sites which received a DMCA notice from Photographer were owned by the same person, Blogger. These fourteen sites were all hosted by GoDaddy, whose policy is, upon receipt of a complaint, to remove or disable access to sites which are allegedly infringing copyright. Accordingly, access to all of Blogger's sites was disabled.

One of Blogger’s disabled sites was a blog she uses as a platform to express her support for a local candidate in a race for Sheriff. Another of these sites was a site designed to inform the public about a non-profit organization whose goal is to promote awareness for the education needs of special needs children (Nonprofit Organization). Blogger is Nonprofit Organization’s President.

According to Photographer, Blogger contacted him after her sites were taken down by GoDaddy, complaining about the issue, and asking him to reconsider his complaint in light of the worthy cause championed by Nonprofit Organization. Photographer then sent an email to GoDaddy asking for Blogger’s sites to be put back up, which was done.

Blogger allegedly contacted Photographer again after the sites were restored. She contended that she had lost thousands of dollars in billable hours as a result of the Nonprofit Organization site being taken down. She also claimed that, by taking down her political blog, Photographer had compromised the election, and she threatened to sue Photographer for sending the DMCA notice.

The material facts are somewhat disputed. The purpose of this post is not to try to assess who did what, but rather to address some of the legal issues raised by both Photographer and Blogger.

Does Photographer Have a Copyright in the Photograph?

In order to be protected by copyright, a particular work does not have to be registered with the Copyright Office, nor is it necessary to have a copyright notice [©] placed on it. In order to be protected by copyright, it is sufficient that that work is an original work of authorship, fixed in any tangible form. Therefore, even if a work is seen on the Internet without a ©, or even without attribution to a particular author, it may nevertheless be protected by copyright. It is best for citizen publishers and authors to assume that such is the case.

Was GoDaddy's Takedown Appropriate Under The Digital Millennium Copyright Act (DMCA)?

If an author discovers that his work has been reproduced online by a third party without his authorization, he may send the Internet Service Provider (ISP) a ‘DMCA take-down notice,’ informing the ISP that it is hosting copyright-infringing material. The DMCA provides a safe harbor for ISPs if, when notified of a claimed infringement, they respond “expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity” (17. U.S.C. § 512(d)(3)).

It is thus important for GoDaddy to have a procedure in place dealing with requests such as the one sent by Photographer. It seems, however, that GoDaddy took down all of the fourteen sites registered under Blogger’s name, some of which did not contain Photographer’s photograph, including the blog where she discusses her views on politics. One can regret that an ISP would respond to a DMCA takedown notice with a heavy hand, and that an author’s request to protect his work from infringement has as its consequence shutting down another author's speech. Society does not benefit from this.

However, by responding in an overbroad fashion, the ISP lowers its risk of litigation (so long as it does not thereby violate its user agreement with its customers). The ISP may thus offer consumers a better financial deal on hosting services. GoDaddy indeed offers low price point deals.

Was Blogger Making a Fair Use of the Photo?

Fair use is an affirmative defense to a claim of infringement. The general question here is whether the use of the protected work by a non-profit organization is authorized by the fair use doctrine.

Indeed, § 107 of the Copyright Act allows for the unauthorized use of a protected work, if this use is for purposes of criticism, comment, news reporting, teaching , scholarship, or research.
§ 107 identifies four factors that the courts should use to determine whether a particular use is fair use. They are: 

“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.”

The four factors cannot be “treated in isolation” and “[a]ll are to be explored, and the results weighed together, in light of the purposes of copyright,” wrote Justice Souter in 1994 in Campbell v. Acuff-Rose Music.

The first factor, the purpose and character of the use, could support the argument that Nonprofit Organization had the right to use work protected by copyright. However, the law does not give not-profit organizations carte blanche to use any copyrighted work. In Worldwide Church of God v. Philadelphia Church of God, Inc., the Ninth Circuit found that the first factor weighed against defendant, a church which had used the copyrighted material of another church without permission.

It would not necessarily matter if the non-profit did not incur any monetary gain from the use of the protected work, as profiting from the use of a protected work does not necessarily mean monetary profit. In Harper & Row v. Nation Enterprises, the Supreme Court explained that “[t]he crux of the profit/nonprofit distinction is not whether the sole motive of the use is monetary gain but whether the user stands to profit from exploitation of the copyrighted material without paying the customary price.” Therefore, it might be argued that Blogger profited (benefited) from the use of the photograph, as it contributed to making her site more attractive to the public, and thus helped her gain readership, and contributed to raise awareness to the cause she supports.

Conversely, even for-profit organizations may benefit from the fair use theory. The more transformative the use of the work is, the less important is the fact that the use is commercial. According to the Supreme Court, “the commercial or nonprofit educational purpose of a work is only one element of the first factor inquiry into its purpose and character” (Campbell, at 584). In Campbell, the use of Roy Orbison’s song “Oh Pretty Woman” by 2 Live Crew was commercial, yet permitted under the fair use doctrine. It is not clear whether Blogger used the photograph in a transformative way. If she had, this could have played into her favor.

The second fair use factor, the nature of the copyrighted work, would play in favor of Photographer. His photograph shows creativity. As for the third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, it seems that the whole picture was used, so this factor would probably also play in favor of Photographer.

Because the facts are not clear, the fourth factor, the effect of the use upon the potential market for or value of the copyrighted work, is difficult to assess. There is probably a market for the photograph, as Photographer wrote that some of the site’s owners which had used his work offered to pay for its use. Also, the fact that other sites’ owners chose to use Photographer’s picture tends to show that there is a market for this picture. Generally speaking, photographs of urban skylines at night are appreciated by the public.

How Does Deletion Factor into the Libel Claims?

Photographer explained his views about the situation in a post on his blog, but later deleted the post, stating that it was an effort to avoid litigation. Blogger had also disclosed her opinion about the situation and about the Photographer on some of her blogs. These original posts are no longer available online, but a cached version of Photographer’s post remains available. Should the author of particular speech be more vulnerable to litigation because his speech has been archived? If an online publication is defamatory, deleting it completely may even be impossible, as it may have been republished or copied by third parties, whether online or offline. In practice, this could prevent the resolution of defamation complaints outside the courtroom, as the aggrieved party could never ascertain that the defamatory speech is completely deleted, and would then seek other remedies, including damages.

Should a statute require that online defamatory speech be entirely deleted all around the Web after the speaker chooses to delete it? The idea of a right to have content removed has generally not been well received in the United States. The European Union is currently trying to make the right to be forgotten part of its legislative framework. Individuals would have the right to ask the data controller to erase personal data if the individual withdraws his consent to process (article 17(1)(a) of the Proposal). If the controller had made this data public, such as in the case of social networks sites, it would have to inform third parties of the wish of the data subject to have links to the data, or copies of the data, removed (article 17(2)), unless doing so would be impossible or involve“ a disproportionate effort,” (article 13). An exception to the right to be forgotten would be the right of freedom of expression (article 17(3)).

However, such a right to be forgotten would arguably be more protective of the reputation of the author of the defamatory speech than the reputation of the aggrieved party. The association of the author with a defamatory statement would be somewhat diluted, yet the content of the speech would remain available, as deleting all its republications may be impossible. That is, it would be forgotten that the author wrote a defamatory speech, but the content of the defamation would not be as easily forgotten, as it had been spread by third parties.

Conclusion

The dispute described above is one where we might wish that the DMCA takedown procedure would in the first instance result  in a notice to the alleged infringer, just like one of those routine notices one receives regularly in the mail, whether it be a reminder to file taxes or to get a dental cleanup. Yes, one may have infringed somebody’s copyright, but the takedown notice could be just a way to inform us of our mistake, and gently coax us to remedy it. When providing notice to the ISP, the copyright owner could also inform it that he is open to license the work, and name his price. The whole process would protect copyright owners, but be less dramatic than the current, sometimes heavy-handed, process, which stirred up considerable emotions in this case.

Marie-Andrée Weiss is a solo attorney admitted in New York, and her admission is pending in France. Her practice focuses on intellectual property, privacy, and social media law. She frequently writes on these topics and on European Union law.

(Image courtesy of Flickr user PugnoM, licensed under CC BY 2.0 license)