TV Syndication Company Attempts To Take Down Public Domain Content By Abusing Trademark Law

from the if-you-can't-play-by-the-rules,-simply-use-a-different-rule-set! dept

Some players in the copyright industry just can't let things go, even when the content in question doesn't belong to them anymore. Once something's in the public domain, it's there to stay unless an act of Congress yanks it back out. Some of this discussion seems almost theoretical considering copyright has been extened to the point where something "lapsing" into the public domain now happens more infrequently than Halley's Comet sightings.

But some things do actually make it into the public domain, and the Internet Archive has done an amazing job over the years of preserving these works. Unfortunately, its archival efforts have drawn some attention from a company wishing to take back content that no longer belongs to it. The fact that the content it's trying to take down is in the public domain hasn't deterred it. It's only made it alter its attack strategy. (MST3K fans will definitely recognize the company name.)

Sandy Frank Film Syndication has hit the Archive with ridiculous legal threats based not on copyrights, but rather trademark rights. The company initially demanded that the Archive takedown not just links to the television show [popular 1950s show "You Asked for It"] (which it admits is in the public domain) but also links to remix videos that use footage from the show, a series of sermons that happen to use the term “you asked for it” in the title, and a reference to a record that also used the term.

The Internet Archive pushed back immediately, but this only resulted in SFFS removing its takedown requests for "colloquial use" (the sermons). Despite the fact that SFFS openly admits the content it wants taken down is in the public domain, it has pressed on with the rest of its demands and even added an additional (and absurd) claim that using the term while searching the internet was a trademark violation.

This isn't the first time we've seen entities attempt to skirt the limitations of copyright law by dragging trademark law into the mix. (The Faulkner Estate dodging fair use arguments for a nine word misquote of Faulkner/photographer Brian Masck making up for a long-delayed copyright registration -- both claiming Lanham Act violations.)

At this point, the EFF stepped in and issued a long, thorough letter to SFFS that destroys all of its arguments point-by-point (posted below). It points out that SFFS has no trademark claim over the content stored and streamed by the Internet Archive. For one, it's non-commercial use, making it statutorily exempt from the Lanham Act. For another, every use of the show's title on the Internet Archive is either protected use or not infringing on SFFS' trademark.

In response to claims of "likelihood of confusion," the EFF writes:

Trademark law does not forbid the use of "You Asked For It" to accurately identify the shows available via the Archive. Indeed, it is unclear how else the Archive might identify the shows...

No one would imagine your client, the holder of the trademark, in connection with licensing television shows, is the source of the programs in question, not least because no such licensing is required for these programs.

As for the remix videos using "You Asked for It" content, SFFS has no viable claim there either.

The videos in question do not raise a trademark issue -- they don't even use the term "You Asked for It." Even if they did use the term, the videos are fully sheltered by the First Amendment.

The EFF also attacks the claim that using its trademarked show title as search terms might be actionable, pointing out that the cases SFFS cites refer to keyword advertising, not the actual searches themselves. Citing cases that contradict or weaken its claims seems to be a problem for SFFS, most likely because the sort of IP end-around it's running has rarely found favor in judicial decisions. The EFF's letter basically states that SFFS is shooting itself in the foot with its own quoted legal precedents.

More broadly, your citation to Dastar v. 20th Century 539 U.S. 23 (2003) is surprising at best, because that is one of many cases that doom your legal theories. In that case, the Supreme Court addressed precisely the kind of bootstrapping your client is attempting here. The plaintiff claimed that reproducing (modified) public domain videos without attribution to the original creator infringed trademark law. The Court rejected the claim, noting that any other holding would place trademark law in direct conflict with copyright:

"The rights of a patentee or copyright holder are part of a “carefully crafted bargain,” . . . under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution."

The EFF is hoping this rebuttal will encourage SFFS to drop its claims against the Internet Archive, but it warns that this probably won't be the last time a trademark owner will attempt to abuse its limited protections to reclaim content from the public domain. SFFS may decide to press on despite any real legal leg to stand on. Its website offers a variety of licensable clips from its shows, including the disputed "You Asked for It," and it's likely very interested in being the sole distributor of the 1950s run of the show, especially considering its main "competitor" is offering these episodes for free. But doing so will be an uphill battle against a knowledgeable opponent and a legal system predisposed towards this sort of IP law abuse.

Filed Under: public domain
Companies: internet archive, sandy frank film syndication

Concerns Raised About Aaron Swartz's Prosecution And The Wikileaks Connection

from the fishing-expedition dept

Let's state upfront that a lot of what's in this post is conjecture based on a few pieces of information out there. I'm not convinced that it presents enough evidence of an actual connection. However, a bunch of folks have been talking about this (and submitting it here), so we wanted to raise the issue to see what people thought, and if there was any other information that could confirm or deny some of the conjectures in the piece. As far as we can tell, some of the timing is a bit odd, but it could very well be a coincidence. We'd love to have the full story if there was one, but federal prosecutors -- especially those under media scrutiny -- aren't known for suddenly opening up about these sorts of things. Given that, we thought we'd post some of the details of the discussion for the sake of continuing the discussion and seeing if anyone had anything more conclusive, either showing a connection between Aaron Swartz's prosecution and Wikileaks... or debunking it.

We've already discussed how Wikileaks bizarrely outed Aaron Swartz as a possible source, and that's leading to other speculation as well, including a question as to whether or not the grand jury investigation into Swartz was really more about the fishing expedition against Wikileaks, rather than the whole MIT/JSTOR effort. The Emptywheel blog (linked above) notes that Swartz's defense indicated it was aware of a much deeper investigation concerning Swartz that went beyond MIT and JSTOR to Twitter, Google, Amazon, the Internet Archive and possibly more -- and asked the government to turn over such materials:

These paragraphs request information relating to grand jury subpoenas. Paragraph 1 requested that the government provide “[a]ny and all grand jury subpoenas – and any and all information resulting from their service – seeking information from third parties including but not limited to Twitter. MIT, JSTOR, Internet Archive that would constitute a communication from or to Aaron Swartz or any computer associated with him.” Paragraph 4 requested “[a]ny and all SCA applications, orders or subpoenas to MIT, JSTOR, Twitter, Google, Amazon, Internet Archive or any other entity seeking information regarding Aaron Swartz, any account associated with Swartz, or any information regarding communications to and from Swartz and any and all information resulting from their service.” Paragraph 20 requested “[a]ny and all paper, documents, materials, information and data of any kind received by the Government as a result of the service of any grand jury subpoena on any person or entity relating to this investigation.”

Swartz requests this information because some grand jury subpoenas used in this case contained directives to the recipients which Swartz contends were in conflict with Rule 6(e)(2)(A), see United States v. Kramer, 864 F.2d 99, 101 (11th Cir. 1988), and others sought certification of the produced documents so that they could be offered into evidence under Fed. R. Evid. 803(6), 901. Swartz requires the requested materials to determine whether there is a further basis for moving to exclude evidence under the Fourth Amendment (even though the SCA has no independent suppression remedy).

[snip]

Moreover, defendant believes that the items would not have been subpoenaed by the experienced and respected senior prosecutor, nor would evidentiary certifications have been requested, were the subpoenaed items not material to either the prosecution or the defense. Defendant’s viewing of any undisclosed subpoenaed materials would not be burdensome, and disclosure of the subpoenas would not intrude upon the government’s work product privilege, as the subpoenas were served on third parties, thus waiving any confidentiality or privilege protections.

Given all of that, it's leading some to wonder if this was more about the big fishing expedition a grand jury has supposedly been working on for quite some time, trying to sniff out anything that can be used against Wikileaks. There is no confirmed connection to the Wikileaks investigation, but Emptywheel notes some oddities in the timing -- such as the grand jury investigation into Aaron seeming to ramp up just as it appeared that the big Wikileaks grand jury was coming up empty. In fact, as Emptywheel showed in a different post, it looked like the investigation into Swartz was going absolutely nowhere... until the grand jury suddenly showed renewed interest long after the arrest. The post notes that the Secret Service didn't even bother searching the laptop onto which Swartz had downloaded the JSTOR material for weeks after getting involved in his case.

But what happened in between the arrest and the sudden decision to really look into Swartz? The DOJ drew a big, fat blank against Wikileaks. The timeline:

• Swartz was arrested on January 6th, 2011.
• On February 9th it was reported that the Justice Department had drawn a blank on anything it could use to go after Wikileaks.
• That same day, February 9th, the Secret Service suddenly got around to issuing warrants to search Swartz's hardware

Oh, and one other key date. Just a couple weeks before all of this, on December 27th, 2010, Swartz had filed a FOIA seeking information concerning the treatment of Bradley Manning. As is noted in the posts linked here, it's not at all normal for the Secret Service to wait so long to get a subpoena.

I will say that I'm far from convinced there was a full connection here. There is way too much speculation and conjecture and it is quite possible (even probable) that the timing is all a coincidence. But the timing is at least worth noting, since it seems that more and more information keeps coming out about this.

Filed Under: aaron swartz, secret service
Companies: amazon, google, internet archive, jstor, mit, twitter, wikileaks

Washington State Stops Trying To Defend Unconstitutional Law Criminalizing Service Providers

from the moving-on dept

Earlier this year, we wrote about a ridiculous state law up in Washington that sought to place liability on service providers for the actions of their users, all in the name of "protecting the children!" The Internet Archive quickly sued to stop the implementation of the law, winning a quick injunction blocking the law from being put into place. The court made it pretty clear that the law appeared to violate Section 230 of the CDA, the federal law that grants service providers clear immunity from certain user actions.

While the case had continued to move forward, Washington has now decided to stop trying to defend the law, effectively letting it die. Of course, you might still wonder why it was passed in the first place, but of course, the answer to that is basic politics. Either way, some states like to fight these kinds of things through multiple levels of appeals, wasting taxpayer money all the way, so it's nice that Washington state seemed to know to stop digging early on in the process.

Filed Under: intermediary liability, secondary liability, washington
Companies: backpages, internet archive

Why The Internet Archive Says It Can Show You Every TV News Program

from the and-why-the-tv-news-guys-may-disagree dept

Like many folks, I saw the news today about the always-wonderful Internet Archive offering up a treasure trove of TV news broadcasting and thought it was a great thing. They're basically making available every TV news recording they could get from 2009 forward, including all of the major TV networks, the news channels (CNN, Fox News, etc.), etc. They'll also have a bunch of local TV broadcasts as well, which is cool. All in all, it's launching with 350,000 clips. They'll even have recordings of The Daily Show as a part of the archive -- which seems fitting, since Internet Archive mastermind Brewster Kahle noted that with this collection, they can "let a thousand Jon Stewarts bloom" by letting them find interesting (or contradictory) news clips.

You can go check out the TVNews Search & Borrow site right now. The search feature is pretty cool, combing through closed captions to find the relevant content. So it's neat to do a quick search on topics of interest and see what they turn up. Of course, there are still a few kinks to work out. Out of curiosity, I did a search on SOPA, and got back some relevant news stories (including the Jon Stewart story about blackout day. But... I also got a bunch of Spanish-language programs about soup. Even when I limited the language to English. I assume those things will get better over time. Each clip is split into 30 second increments, so it's not like you're automatically getting the full broadcast, though you can piece together the clips.

And it's not just a "historical" archive. They're going to continue to add to it, with new clips being available 24-hours after they air.

Of course, all of this made me wonder about the copyright issues involved. The NY Times had this somewhat cryptic statement:

The act of copying all this news material is protected under a federal copyright agreement signed in 1976. That was in reaction to a challenge to a news assembly project started by Vanderbilt University in 1968.

I was curious about that, and a few people pointed me to 17 USC 108 (f)(3), which notes that:

nothing in this section shall be construed to limit the reproduction by lending of a limited number of copies and excerpts by a library or archives of an audiovisual news program subject to [a few other clauses concerning archives]...

This is based on the Vanderbilt Television News Archive, which the Internet Archive directly calls out in its own announcement as being the inspiration for this new project. Inspiration... and legal helper.

Here's a bit of historical perspective from Historians.org:

Indeed, in the early days of the archive, CBS had sued for copyright infringement, claiming that broadcasts could not be recorded without the permission of the networks. At the time of the lawsuit, Congress was in the process of revising the copyright law. Congress recognized the growing importance and influence of television media on American culture, thought, and politics, and felt that news broadcasts should have special protection under the copyright law, to allow the American people access to their own history. Senator Howard Baker of Tennessee introduced an amendment to the 1976 U.S. Copyright Act to give universities and archives the right to record news broadcasts off-air and to make a limited number of copies for research purposes. Following the enactment of the new law with this provision, CBS and Vanderbilt mutually withdrew from the lawsuit.

But does that really make the Internet Archive legal? I'm not so sure the TV guys are going to see it that way. That same report at Historians.org notes that Vanderbilt is not allowed to share nearly all of its collection online -- and it also notes that "The advent of the Internet and the consequent possibility of making digital copies and lending them online have, however, raised new legal problems that need to be resolved." I would imagine that a key one among them is whether or not the Internet Archives' setup qualifies as "lending a limited number of copies."

One would hope that an informed court would recognize that this fits with the intent of Congress in creating this kind of exception, though I fear that the networks are likely to fight pretty hard on this one, even as it seems like this service could really benefit them as well as others, rather than really take away from anything they do.

Filed Under: archives, broadcasts, copyright, exceptions, tv news
Companies: internet archive

Court Shelves Washington State Law That Would Turn Service Providers Into Criminals Based On Their Users' Behavior

from the good-move dept

Back in June, we wrote about a challenge -- from both the Village Voice's Backpage.com and the Internet Archive to a new law in Washington State, SB 6251, that effectively criminalized online service providers based on actions by their users. We've long talked about the problems of such secondary liability efforts, and thankfully the US has section 230 of the CDA that forbids most such efforts to apply secondary liability. And, indeed, the court has now granted a preliminary injunction against the law, citing the Section 230 issues, among other things. Basically, the court sides with Backpage and the Internet Archive on every issue here, finding the state's reasoning in support of the law to be weak.

There are some important points in this ruling. First up, the court said that Section 230 applied, even though this was about a criminal law issue, rather than a civil law issue. Many (even Section 230 supporters) have argued that Section 230 only applies to civil law. The court notes that the law says it doesn't apply to federal criminal laws, but says nothing about state laws. And, as such, CDA 230 should be seen to apply to state laws, even if they're criminal:

If Congress did not want the CDA to apply in state criminal actions, it would have said so.

So, the law is already on shaky legs due to it being knocked out by Section 230. However, the court goes further to focus on how the bill violates the First Amendment as well, targeting the suppression of speech. It's a pretty detailed explanation for how laws that target speech, rather than action, have a much higher bar, and this bill does not appear to meet that higher bar. Most importantly, the court recognizes that any laws targeting speech can have severe chilling effects, even on legal speech, and that's unacceptable under the First Amendment:

The most problematic aspect of SB 6251 is not the protected speech that it regulates by its terms, but the likelihood that it will chill a substantial amount of protected speech in addition to the unprotected speech that Defendants argue the statute was meant to address

The court even notes that it could create chilling effects and potentially criminalize sites like Facebook and Twitter as well. While the state denied this possibility, the judge points out that it's entirely possible to read the law in that way, and that alone could create chilling effects from companies trying to avoid criminal liability. Finally, the court notes that the law also almost certainly violates the Commerce Clause, because it would regulate companies located entirely outside of Washington State.

In other words, the state is on very thin ice here, as the court isn't buying any of its arguments for why the statute is legal. At this point in the case, the discussion is just over whether or not an injunction is granted to block the enforcement of the law -- and that's now done. There's still much more to come in the case, but the law doesn't look likely to survive at this point, and that's a good thing. There are some real issues that the law seeks to take on (mainly dealing with prostitution and child porn), but it does so in such a broad way and with the wrong tool: criminalizing service providers. It's good that the courts are recognizing how this law is massively overbroad.

Filed Under: liability, section 230, service providers, washington state
Companies: backpage, internet archive

Washington State Tries To Criminalize Service Providers For User Behavior; Internet Archive Sues

from the section-230,-have-you-read-it? dept

For years, we've talked about the importance of Section 230 in properly applying liability directed at the actual people who break laws, rather than the tools and services they use. Unfortunately, some people fail to make a distinction and love to blame service providers. And... once it gets into areas that make people react emotionally, things get ridiculous. For example, we've written a few times about the misguided attacks on Backpage.com, which only came about because of similar misguided attacks on Craigslist. At issue was that both sites had been used for prostitution and sex trafficking. But, rather than do the sensible thing and work with those platforms -- who both have programs to do exactly this -- to make it easier for law enforcement to find and prosecute those involved in such efforts, grandstanding politicians and activists blamed the service providers, driving the actual activities further underground. Of course, they have never had any real legal argument, and the lawsuits have fallen flat.

However, it appears that some politicians in Washington State decided to pass a state law (SB 6251) which targets service providers. It's one of those laws that it's easy for politicians to get behind without realizing what they're actually doing. They think they're "protecting the children" but they're actually making the problem significantly worse. That's because they're not setting up a better way to track down and stop those actually responsible, but rather are simply telling them to move further underground, where it will be even harder to stop them.

And, of course, in their zeal to "protect the children" the politicians who passed this bill wrote it so broadly that it can create massive problems for tons of legitimate online service providers. The Internet Archive, represented by the EFF, has filed to join a lawsuit (from Backpage) against the law, pointing out that it clearly violates Section 230 of the CDA, which providers the necessary safe harbors for service providers. The overreach of the Washington law is pretty astounding:

SB 6251 would effectively coerce, by threat of felony prosecution, online service providers to become censors of third-party users' content by threatening five years imprisonment and a $10,000 fine per violation against anyone who knowingly publishes, disseminates or displays or anyone who “indirectly” “causes” the publication, dissemination, or display of content that contains an explicit or even “implicit” offer of any sexual contact for “something of value” in Washington if the content includes an image that turns out to be of a minor. Because of its expansive language (i.e., “indirectly” “causes”), the law could be applied not only to online classified ad services like Backpage.com but also to any web site that provides access to third-party content, including user comments, reviews, chats, and discussion forums, and to social networking sites, search engines, Internet service providers, and more. A law that takes such an overbroad approach is of serious concern to the Internet Archive, which aims to serve as a library for the Internet, and accordingly, houses more than 150 billion web pages archived since 1996.

The law expressly states that it is not a defense that the defendant did not know that the image was of a minor. Instead, to avoid prosecution, the defendant must obtain governmental or educational identification for the person(s) depicted in the post (notably, even if that ID does not contain a photograph). This means that service providers – no matter where headquartered or operated – may be asked to review each and every piece of third-party content accessible through their services to determine whether the content is an “implicit” ad for a commercial sex act in Washington, whether it includes a depiction of a person, and, if so, obtain and maintain a record of the person’s ID. These obligations would severely impede the practice of hosting third-party content online.

I'm sure the folks behind this law had the best of intentions. Sex trafficking of underage persons is a very real and horrific problem (even if the numbers bandied about are massively exaggerated). But the real solution is to go after the actual perpetrators, and that means working with service providers to help track them down -- not criminalizing the service providers in a way that kills off lots of legitimate activity as well.

Filed Under: cda, censorship, liability, safe harbors, section 230, washington state
Companies: backpage.com, craigslist, eff, internet archive, village voice

'Rogue Site' The Internet Archive To Go Dark In Protest Of SOPA/PIPA

from the making-a-statement dept

You may recall that, a few months ago, the popular "library of the internet," The Internet Archive, was among the popular sites listed as a "rogue site" dedicated to "piracy," by ad giant GroupM, with inputs from Universal Music, Paramount Pictures and others. It seems that Brewster Kahle, the founder of the Archive, has recognized that SOPA and PIPA are important issues -- especially for a site that some apparently think is a rogue site. He's announced that the Internet Archive will go dark tomorrow, joining Reddit, Wikipedia and others. Tomorrow might be quite a strange day online.

Filed Under: brewster kahle, internet archive, pipa, protect ip, rogue sites, sopa
Companies: internet archive