infringement

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Most of us are familiar with Instagram – a social media engine, primarily utilized in its all-too-familiar form of a phone application, that allows users to share images and videos of themselves or others for public viewing and potential recognition.

With the increased popularity of photo-sharing social media tools like Instagram, users have begun to wonder more about what, if any, intellectual property rights they may own to the content they publish to such sites. In a previous post, we discussed the legal implications of posting content to social media and found that the user is often the primary owner of their content.

This begs the question – if each user is the owner of the content he/she posts, what, if any, are the legal implications of reposting the content of another user?

On March 15, 2019, a federal trial court judge ruled in favor of famous golfer Jack Nicklaus’ company in a case that may be of interest to copyright and trademark owners. (Nicklaus Cos. LLC. v. Bryan Hepler Golf LLC, No. CV-18-01748-PHX-ROS (D. Ariz. March 15, 2019) (2019 WL 1227198).)

The case began in a way that is probably all too familiar with copyright owners: photos and videos owned by the plaintiff began appearing without permission the defendant’s website and were posted by the defendant on social media sites. The plaintiff sent a demand letter to the defendant, but the conduct did not stop.

We previously reported on Grumpy Cat Limited’s big win in a copyright and trademark suit. As a recap, Grumpy Cat—the social-media-famous grimacing feline, or rather the holding company owned by her “parents”—filed a lawsuit after the defendants went beyond the scope of a licensing agreement to market a variety of Grumpy Cat-themed coffee products. According to the suit, the contract was only intended to cover bottled iced-coffee beverages called Grumpuccinos.

Though judgment was entered, the tale is not over yet. Grumpy Cat Limited recently asked the court to award it over $320,000 in costs and attorneys’ fees from the defendants, Nick and Paul Sandford of Grenade Beverages (later renamed Grumpy Beverages LLC).

Many social media sites and pages encourage people to post and share photos. This activity creates an issue where the owner of the photos has not given permission for that use, as a photographer alleged in a recent Fifth Circuit case Stross v. Redfin Corp., ___ Fed. Appx. ___ (5th Cir. Apr. 9, 2018) (2018 WL 1721749).

Grumpy Cat has a new reason to turn that frown upside-down. Though the cat is known for her sneer, she is (or rather, Grumpy Cat Limited and its/her owners are) sitting pretty on a recent jury award in California of over $700,000 for trademark and copyright infringement and breach of contract. (Grumpy Cat Ltd. v. Grenade Beverage LLC, Civ. No. 8:15-cv-02063 (C.D. Cal. Jan. 24, 2018) (jury verdict)).

The age of the Internet poses many new challenges to those individuals seeking to protect and enforce their intellectual property rights online. As the Federal Court of Appeal in Canada recently stated: “Under the cloak of anonymity on the internet, some can illegally copy, download, and distribute the intellectual property of others, such as movies, songs and writings.”  (Voltage Pictures, LLC et al. v. John Doe #1 et al., 2017 FCA 97 at para. 1 [Voltage Pictures].)  As a result, Canada has slowly began modernizing its copyright regime in order to allow the cloak of anonymity to be lifted and the identity of alleged infringers to be revealed.  (See e.g., Copyright Modernization Act, S.C. 2012, c. 20, s. 47.)

In today’s world, intellectual property owners are well aware that social media users frequently post infringing content. Companies and brand owners have developed various strategies for enforcing their intellectual property rights on social media, utilizing methods such as demand letters and takedown requests. Often there are so many infringing uses that brand owners must be strategic with their enforcement efforts by developing guidelines for the types of infringement that are worth confronting. For example, an infringer that is impersonating a company or selling counterfeit goods on social media may be worth the time and cost of enforcement measures, while a user who posts a single copyrighted image may not justify such measures. In addition, a company may decide strategically to monitor only certain social media platforms that have a broad enough popularity or impact among the public.

The Regional Court of Hamburg recently applied for the first time the new decision by the Court of Justice of the European Union (CJEU) regarding the liability for hyperlinks and further increased the risks and responsibilities for social media website operators.

The EU Court Decision

The CJEU held in September 2016 that using a hyperlink may constitute an infringement of copyright law, if (a) the linked website to contains infringing content, (b) the hyperlink was provided with the intent to realize profits and (c) the person providing the link did not review the content on the linked website.