The artist, Richard Prince, based his works on photographs from a book about Rastafarians “to create the collages and a series of paintings based on [those photographs],” reported Randy Kennedy in the Times.

Then ensued a discussion of the degree to which material must be transformed to fall under copyright law’s “fair use” protection, which would allow use of copyrighted material if, as the article explains, “the new thing ‘adds value to the original’ so that society as a whole is culturally enriched by it.”  (The reference is to a 1990 Harvard Law Review article by Federal Judge Pierre Leval.  I previously discussed fair use’s 4-prong analysis in the context of photographs and artwork, here and in mashups here.)

In the Prince case, Judge Deborah Batts of New York Federal Court held that Prince infringed the photographer’s copyrights.

Prince has his defenders.  “The part that really troubles me about these discussions,” commented one such defender on TechDirt, “is a rather simple point about fair use: if the new work does not, in any way, harm the original work, it seems positively insane to me to think that it shouldn’t be seen as fair use.”

And it is true that fair use does look to whether the later work harms the market for the copyrighted original work.  But market harm (or lack thereof) is only one part of the test: After all, fair use is an exception to copyright, a creator’s exclusive “right to copy” (literally), and prevent others from doing so.  A proposed copying must show more than simply that the originator’s market was unharmed.  It may be true, but by itself that doesn’t overcome society’s determination that a grant of exclusive right of copying was justified.

More indeed is what Marina Galperina, a commentator on the AnimalNewYork website, describes in distinguishing between material that has and has not been adequately (for fair use purposes) “transformed”.  As “good” fair use, Galperina cites an art exhibit that made liberal use of Disney copyrighted images. “When 0100101110101101.org lynched Mickey Mouse, they stole a recognizable commercial visual and re-invented it in their own sick context,” she says. “That’s cool.”

Galperina next offers another art exhibit featuring panda designs in which a designer sampled patterns from other designers.  She writes, “When [the panda culprit] ‘borrowed’ a design from a designer and essentially wallpapered it into his design piece without updating the context, adding meaning or doing anything but putting squiggly lines around it …. That’s weak.”

Galperina and Kennedy both make the point that attitudes about artistic fair use – or “the borrowing ethos” – seem to change as technology allows images to be gathered, manipulated and disseminated easily and without attribution.  So, for example, Galperina cites the iPad app Mixel, which bills itself as “the first social art app.”  The app, created by a former New York Times staff writer, allows users to make and share collages, using any web-based images.

Although Mixel’s Terms of Service do not overtly restrict use of previously copyrighted material, Mixel does encourage users to submit complaints if they think intellectual property has been improperly used. “If you believe that your work has been copied in a way that constitutes copyright infringement, or that your intellectual property rights have been otherwise violated,” the policy reads, “you should notify Mixel of your infringement claim.”

Digital capabilities notwithstanding, what is not new about “fair use” is how difficult it remains to articulate outside of actual examples.  The Prince case is high-profile because of the notoriety of the artist, media sensitivity to decisions of the New York federal courts and yet another example of the increasing ease of access via digital technology.  All art is available instantly – and effortlessly – to all other artists not only for study and inspiration, but for incorporating, manipulating and, yes, transforming.  At the National Gallery’s fine exhibit on Picasso’s early drawings, an information board describes how Picasso’s formative years coincided with the emergence of the great museum retrospectives in Europe.  Picasso made brilliant use of these experiences, referentially incorporating into his works the ideas of his contemporaries and great predecessors.

Digital technology does not change any of this, and probably at worst just rapidly accelerates – and escalates the tradition.  As Kennedy writes in the Times,

[T]oday’s flow of creative expression, riding a tide of billions of instantly accessible digital images and clips, is rapidly becoming so free and recycling so reflexive that it is hard to imagine it being slowed, much less stanched, whatever happens in court. It is a phenomenon that makes Mr. Prince’s artful thefts … look almost Victorian by comparison, and makes the copyright battle and its attendant fears feel as if they are playing out in another era as well, perhaps not Victorian but certainly pre-Internet.

But it is nowhere clear how these developments should be cause for change in fair use law, or more specifically why existing fair use analysis cannot govern the changed landscape.  If the test remains whether a use is “transformative”, then the problem may be with the meaning of “transformative”.  Defendant Prince was asked in his deposition “What is the message [of his art]?”  To which Prince replied, “The message is to make great art that makes people feel good.”

That kind of honesty itself may be worthy of some protection, although his lawyers may have preferred that he simply tell the judge what she may have wanted to hear.  What she may have wanted to hear was the standard for “transformative” use stated by the Supreme Court in 1994:

… whether the new work “merely supersede[s] the objects” of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575, 114 S.Ct. 1164, 127 L.Ed.2d 500 (1994).

Which itself was merely illustrative of the main text of the fair use law, which states:

the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. (emphasis added)

As reported in the Times, Prince “also made it clear that he was not making art that commented on Mr. Cariou’s work itself. (Judge Batts ruled that for a work to be transformative it must “in some way comment on, relate to the historical context of, or critically refer back to the original works” it borrows from, a test she said Mr. Prince’s work failed.)”

Kate Tummarello, a Research and Social Media Intern with Mirsky & Company and a reporter at Roll Call/Congressional Quarterly, contributed to this post.

Gone are the days of bashing your boss in the breakroom. Now, colleagues gather online to anonymously air their grievances.  A group of disgruntled Demand Media, Inc. employees did just that with their website DemandStudiosSucks.com.  Then Demand Media struck back.

Late last month, attorneys for Demand Media, a content production company whose properties include eHow, LIVESTRONG.com, Cracked.com, typeF.com, Trails.com and GolfLink, sent a letter to DemandStudiosSucks.com asking it to remove content that had been copyrighted by Demand Media.

The media company accused the people behind this censorious website of creating and maintaining “a forum in which users can, and do, post and misuse Demand Media’s trademark, copyrighted material, including confidential and proprietary copy editing tests.”  The letter also referenced “an internal presentation regarding the company’s business plans”, published without permission on DemandStudiosSucks.com.

Immediately, of course, the letter was posted on DemandStudiosSucks.com.

The next day, a user named “Partick O’Doare,” who has posted the majority of the content on the site, published an open letter addressing the claims made by Demand Media’s attorneys.  Although the website removed the content addressed in the letter, O’Doare explained that the site’s creators had not acknowledged any infringement in removing the content.

Instead, those behind the website claimed that their use of the Demand Media content fell under fair use guidelines, specifically protections for commentary and criticism.  “Let’s be honest,” the open letter says, “if ever there was a case of unequivocal fair use, this would be it.”  A statement which should raise flags to anyone who previously felt similarly.

Fair use is a defense to a claim of copyright infringement, but not other claims.  A fair use argument cannot simply succeed on its merits where other legal rights are violated.  Context matters.  So, for example, as seen in some Facebook “suck site” cases, fair use will not protect against a claim of defamation.  Employees who publish company trade secrets and other proprietary information cannot rely on fair use to defend against claims of violations of corporate and employment law.

O’Daire’s letter proudly boasts that the voices behind DemandStudiosSucks.com were fully prepared to defend themselves, citing the fair use cases Lenz v. Universal Music Corp. and Online Policy Group v. Diebold, Inc.

The outrage was fast and furious.  A nice deal of blog and Tumblr and other commentary zeroed in on changes Dropbox announced to its TOS before the 4^th of July holiday, and in particular how this or that provision “won’t hold up in court”.  See for example J. Daniel Sawyer’s commentary here.

Sawyer was referring to language in the TOS for cloud-server services granting ownership rights to Dropbox or other cloud services.

At least I think that’s what he was referring to, because the Dropbox TOS did not actually grant those ownership rights to Dropbox.  Dropbox’ TOS – like similar TOS for SugarSync and Box.net – granted limited use rights to enable Dropbox to actually provide the service.  Here is the offending provision:

… you grant us (and those we work with to provide the Services) worldwide, non-exclusive, royalty-free, sublicenseable rights to use, copy, distribute, prepare derivative works (such as translations or format conversions) of, perform, or publicly display that stuff to the extent we think it necessary for the Service.

To be clear, if Dropbox actually claimed ownership rights to customer files – and actually provided for the same in its TOS – there’s no particular reason such a grant “won’t hold up in court”.   There are certainly cases of unenforceable contracts – contracts that are fraudulently induced or in contravention of public policy, for example – but a fully and clearly disclosed obligation in exchange for a mutual commitment of service is enforceable.

As one commenter wrote on zdnet, responding to criticism of similar rights-granting language in the Google Plus TOS,

The verbiage … from the TOS is of a *technical* nature. This way Google can convert media formats and/or compress your uploads without it being considered a “derived work” for you to sue Google over. It also gives Google the right to cache your imagery on their servers, even after you’ve deleted it from the service (cache mitigation is complex). Additionally it covers Google using first and/or third party content distribution networks to provide your media to users in the fastest and most available way possible.

Much of the critical commentary against Dropbox (see examples here and here) complain about seeming legal sleight-of-hand, but consider this: It may seem odd that a company that is receiving voluntary deposits of property would have to insist on a further level of explicit legal statement that it is allowed to actually do what it offers to do.  But Dropbox, like Google, is presumably reacting to a culture of lawyers playing “gotcha” games, claiming that unless someone is bludgeoned with repeated confirmations of acknowledgement, we cannot assume acceptance.  Why indeed does Facebook repeatedly ask, “are you sure you want to do that?” and “are you sure you want to delete that photo?”

But again, Dropbox did not claim any right of ownership.  What it did claim was a right to access files, use the files, display the files and so forth.  And since the whole concept behind Dropbox is entrusting files to a third party’s (presumably temporary) safekeeping, the absence of a user’s grant of these rights might perversely leave Dropbox in legal straits.

This was fairly clear in the offending Dropbox Terms, which began (in the paragraph immediately preceding the above-quoted language)

“You retain ownership to your stuff,” and another part which states, “This license is solely to enable us to technically administer, display, and operate the Services.”

Or as noted by the same commenter quoted above from zdnet about Google Plus, “The terms exist within the service, you’re not giving Google and/or Google+ users the right to steal your copyrighted content.”

That being said, Dropbox quickly responded last week with further changes to its TOS which seem to have satiated its noisiest critics.  Quoth Dropbox, and note in particular the highlighted first paragraph and the elaborated explanation of the technical reasons why this grant of use right is necessary:

You retain full ownership to your stuff. We don’t claim any ownership to any of it. These Terms do not grant us any rights to your stuff or intellectual property except for the limited rights that are needed to run the Services, as explained below.

We may need your permission to do things you ask us to do with your stuff, for example, hosting your files, or sharing them at your direction. This includes product features visible to you, for example, image thumbnails or document previews. It also includes design choices we make to technically administer our Services, for example, how we redundantly backup data to keep it safe. You give us the permissions we need to do those things solely to provide the Services. This permission also extends to trusted third parties we work with to provide the Services, for example Amazon, which provides our storage space (again, only to provide the Services).

(emphasis added)

If that wasn’t clear already.  Just in case someone might ask.  Just in case somebody isn’t certain.  Just in case.  You never can be too certain.

WTForever21.com, a parody site published by Rachel Kane, had prominently disclaimed any affiliation or endorsement by Forever 21.  And as indicated, Kane’s purpose was (some would claim clearly) parody.   Kane was the proud recipient of a cease and desist letter from Forever 21 on April 22 (a copy of which can be found here), which alleged trademark and copyright infringement, unfair competition and trademark dilution.

Without testing the merits of her legal position and, according to several initial reports, not willing to expend the resources to do so, Kane announced that she would pull down her site by June 10th.  Kane then reversed course, and issued a statement last month stating “If the company continues to makes threats that have no basis in law, my attorneys are prepared to vigorously defend me and seek all available legal redress against Forever 21.”  The site is currently live.

Forever 21’s letter to Kane stated that the name “WTForever21” “refers to an abbreviation for colloquial expression that the general public may find offensive.”  That evidently would be the “WTF” appendage.

Forever 21’s copyright claim relates to Kane’s use on her blog of copyrighted images from Forever 21’s site.  The company’s trademark claims – claiming both infringement and dilution – seem to have anticipated the plausibility of a trademark fair use defense (for parody) succeeding against a claim of infringement, which may not succeed against a claim of dilution.

In trademark land, “dilution” refers to the tarnishing or diminution of an established trademark regardless of whether the defendant’s use of the trademark constituted actual infringement.  To illustrate the point, Paul Supnik cites the classic Kodak case from 1898, which established the dilution doctrine.   (Eastman Photographic Materials Co. v. Kodak Cycle Co., 15 Rep. Pat. Cas. 105 (1898)).   In that case, the film manufacturer Eastman Kodak successfully challenged a bicycle manufacturer’s use of the name “KODAK”, even where (as Supnik notes) “No significant segment of the consuming public was likely to think that bicycles were made by, endorsed or sponsored by a film manufacturer.”  Nonetheless, Eastman Kodak successfully argued that the very use of the trademark – in this case a distinctive and established brand intimately associated with the Eastman Kodak company – served to dilute the distinctiveness and thus the value of the trademark, even where used in a noncompetitive market.

As Supnik explains:

Justification for the dilution doctrine is that somehow the public benefits from protection against diluting the distinctiveness of a famous mark and that it simply is not right to reduce the importance or value of a very valuable mark for the free ride of the newcomer, even if the public is not confused.

A parody fair use defense would (if successful) undercut a trademark infringement argument, the argument being that a use that is clearly parody would not cause a “likelihood of confusion” among the consumers as to the source of the trademark.  (See here for a good discussion of this point.)

But trademark dilution is a different story.

Baila Celedonia cites a 1994 case involving a competitor’s parody use of John Deere’s famous deer silhouette logo, where the competitor’s commercial was “animated and hopped around the television screen, pursued by [the competitor’s] lawn tractor and a barking dog.”  Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994)

The defendant’s use of Deere’s logo was clearly parody, preventing Deere from demonstrating any “likelihood of confusion” in the marketplace.  Deere lost its infringement claim, but won a dilution claim.  As Celedonia notes, even if intentionally parody and even if not technically “infringing”, a trademark use may constitute dilution.  Quoting from the court’s discussion of parody in the context of dilution:

Whether the use of the mark is to identify a competing product in an informative comparative ad, to make a comment, or to spoof the mark to enliven the advertisement for a noncompeting or a competing product, the scope of protection under a dilution statute must take into account the degree to which the mark is altered and the nature of the alteration.  Not every alteration will constitute dilution, and more leeway for alterations is appropriate in the context of satiric expression and humorous ads for noncompeting products. But some alterations have the potential to so lessen the selling power of a distinctive mark that they are appropriately proscribed by a dilution statute. Dilution of this sort is more likely to be found when the alterations are made by a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.  (emphasis added)

WTForever21.com is clearly not “a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that make no significant alteration.”  It is (at worst) a true parody site.  In the Deere case, the parody use by a direct competitor undercut the fair use defense.

Some of the issues I discuss are these:

• What is the BitTorrent file sharing technology? And how is it different from Napster and its peer-to-peer progeny?

• What are the 2 biggest distinctions between BitTorrent and peer-to-peer and, in particular, BitTorrent’s distributive approach to file-sharing?

• Why is bitTorrent in the (copyright) news? I will particularly discuss a case in federal court in California, involving Columbia Pictures and other film studios who sued a bitTorrent company called isoHunt, together with its founder, Gary Fung.

• What were the relevant legal issues in this case? Several important copyright arguments were made, but of most significance were 2 particular issues: inducement of copyright infringement, and the safe harbor for providers of “information location tools” under Section 512 of the Digital Millennium Copyright Act (the DMCA).

• Why did Google get involved? I discuss how this case was an unusual instance where a court ruled that DMCA safe harbor protection was not available to a provider of “information location tools” who knew or should have known about potential or actual copyright infringement happening on its service.

Please click below for the podcast.

2 great background sources on what BitTorrent is and how it works can be found here and here.  In short terms, BitTorrent is a file sharing technology, different from Napster and its peer-to-peer progeny in that it draws down pieces of large data files from multiple computers – rather than single computer to single computer peer-to-peer – based on a “community” structure of participating individual users.  The two biggest distinctions are (1) no single source for the compiled total file contributes more than a very small portion of the total file and (2) the distributive structure finesses the constant file-sharing problem of large data transfers demanding large broadband resources.

Why is bitTorrent in the (copyright) news?

BitTorrent is in the news not simply because Netflix’ CEO stated that “we’ve finally beaten bitTorrent.”  (“We”, by the way, presumably refers to Netflix’ full-file streaming capabilities.)

BitTorrent is mostly in the news because of its enormous popularity among file sharers, which of course begs the question why has it garnered so much popularity among file sharers?  Among other reasons, Napster and Grokster are gone, Limewire just recently settled all sorts of lawsuits with music labels, and the next target of the movie studios and content owners is … bitTorrent.

Legal issues aside (at least until the next paragraph), bitTorrent is an innovative exploitation of the internet’s networking and cloud-computing capabilities to distribute large and ever-larger files seamlessly and quickly.  From a the standpoint of a non-technologist observer, it is simply pretty neat how it takes advantage of distributive concepts of sharing and cost- and resource-burden shifting.

From the standpoint of content creators and intellectual property owners, however, the technology is really quite law-evading.

The isoHunt case

A leading bitTorrent case is in federal court in California, involving Columbia Pictures and other film studios who sued a bitTorrent company called isoHunt (defendants were isoHunt and its founder, Gary Fung).  The defendant – isoHunt – hosts a bitTorrent service, which was challenged by several major film studios as serving no purpose other than facilitating direct infringement by the technology’s users of copyrighted films and television programs.  And according to the film studios, doing so intentionally and willfully.

Columbia Pictures moved for summary judgment, and the court granted it, finding that isoHunt was liable to the studios for secondary copyright infringement.  To be clear, Columbia argued that the bitTorrent company itself didn’t directly infringe the copyrights, but rather improperly “induced” copyright infringement by its users.  Columbia’s summary judgment motion was granted, and thus isoHunt was liable for copyright infringement.

The court’s summary judgment Order can be found here.

isoHunt appealed the case to the 9^th Circuit Court of Appeals in San Francisco, and the appeal is pending.   isoHunt’s appeal brief can be found here.

Relevant legal issues

Several important copyright arguments were made in the isoHunt case.  Of most significance were 2 particular issues: Inducement of copyright infringement and the safe harbor for providers of “information location tools” under Section 512 of the Digital Millennium Copyright Act (the DMCA).

First, Inducement of Copyright Infringement

The film studios claimed – successfully – that isoHunt should be held liable for copyright infringement under a “secondary liability” theory.

This argument relied on the Supreme Court’s Grokster case, and its standard for determining inducement liability: “inducement requires that the defendant has undertaken purposeful acts aimed at assisting and encouraging others to infringe copyright”.

Grokster was the 2005 US Supreme Court case in which a peer-to-peer file-sharing service was held liable for copyright infringement under a theory of “inducing” infringement by others.  In the isoHunt case, the court ruled that the plaintiffs – the movie studios – had proven inducement by the defendant’s bit-torrent technology, applying the Grokster test for inducement.

What facts supported this argument?  Lots of them.  Some examples (see commentary from Michael Barclay here):

• Expert witnesses for the studios used statistical samplings of the content and server logs to show that 90-95% of all available content available through the defendant’s service infringed copyrights.

• The studios offered evidence that isoHunt’s search code was expressly designed to find copyrighted material:  As ArsTechnica reported, “One of [isoHunt’s] sites also displayed a list of the top-20 grossing movies in the US, with links to copies of each, while another had categories that included “High Quality DVD Rips” and “TV Show Releases.””

• The defendant’s own blog made statements questioning whether copyright infringement was really theft.

Second, DMCA safe harbor

The court then rejected isoHunt’s DMCA arguments based on the same facts, ruling that the same actions that demonstrated isoHunt’s inducement conduct also demonstrated either actual or presumed “knowledge” on the defendant’s part to nix any DMCA safe harbor argument.

For example, isoHunt argued that much if not most of the service’s offending content resulted from user queries that generated automatic responses – essentially, it was the user downloads of the dot-torrents that generated the infringing copying (or infringing distribution) of the copyrighted films and television shows.  If that argument had been accepted, this would have safely placed isoHunt within the DMCA’s safe harbor for information locator services, shielding the service provider from liability for content posted by its users.

This was the really interesting part of the case, because this is where – at least from the position of more established companies like Google – the court went off the rails with its decision.

First: In a footnote, the court made this statement about dot-torrent file downloads:

It may be true that the act of downloading a dot-torrent file is not itself a copyright-infringing action; but once that dot-torrent file triggers the process of downloading a content file, copyright infringement has taken place.  Because dot-torrent files automatically trigger this content-downloading process, it is clear that dot-torrent files and content files are, for all practical purposes, synonymous.  To conclude otherwise would be to elevate form over substance.

isoHunt had argued that whether or not it may have done things to “encourage” or “suggest” copyright infringement, its core, basic actions as embodied in its technology – dot-torrent files – did not (because it could not) constitute copyright infringement.  Thus, isoHunt made a sort of lack of “nexus” argument: Before you can claim inducement of copyright infringement, you have to prove … copyright infringement.  And therefore, users’ actions in downloading the dot-torrent files were not copyright infringement at all, and therefore isoHunt shouldn’t be held responsible for having induced anything illegal.

As just quoted, the court made fast work of this argument.

Second, the court used this same point to illustrate how isoHunt had undercut its own DMCA safe harbor argument: “upon obtaining such knowledge or awareness [of infringing material], [the service provider] acts expeditiously to remove, or disable access to, the material.”  (DMCA Section 512(d)).  isoHunt had not complied.

Third, quoting from TechDirt: “Most safe harbor cases have focused on whether or not the service provider responded to notices, but in this case, the court said that there were enough “red flags” that, even in the absence of notices, IsoHunt should have blocked certain files.”

Why is this case in the news?

Short answer?  Because Google got involved.  Longer answer?  Because this case was an unusual instance where a court ruled that DMCA safe harbor protection was not available to a provider of “information location tools” who knew or should have known about potential or actual copyright infringement happening on its service.  On the appeal, Google – which was not a party to the case – sought to intervene in the case arguing that the lower court got it right when it held against isoHunt for inducing copyright infringement, but also that the court went too far when it further held that this same reasoning nixed the availability of the DMCA safe harbor.  Or in other words, that inducement of copyright infringement in and of itself is distinct – and sufficiently culpable – as grounds for liability for copyright infringement.

Google’s brief on the appeal can be found here.

The court in isoHunt stated:

inducement liability and the Digital Millennium Copyright Act safe harbors are inherently contradictory.  Inducement liability is based on active bad faith conduct aimed at promoting infringement; the statutory safe harbors are based on passive good faith conduct aimed at operating a legitimate internet business.  Here, as discussed supra, Defendants are liable for inducement.  There is no safe harbor for such conduct.

It is this statement that drew Google’s attention and the attention of many commentators (see, for example, these stories from arstechnica and paidcontent).  Google is right in arguing that “mere knowledge of infringing potential or of actual infringing uses would not be enough here to subject a distributor to liability” (quoting from Grokster), and that a long line of cases had held that this “mere knowledge” hasn’t been sufficient to nix the availability of the DMCA safe harbor.

The problem for Google’s argument, though, is that that is what the DMCA safe harbor does actually state.  So, and more to the point, the language that Google relies upon is from Grokster, which was a case involving claims of inducement of copyright infringement, not the availability of the DMCA safe harbor.  Relying on language from Grokster – an inducement of infringement case – to address a DMCA safe harbor case may be misplaced.

Google argues that isoHunt’s lack of compliance with the DMCA’s takedown requirements is sufficient to nix any DMCA safe harbor defense that might be available.  So that, any further discussion of whether the DMCA would otherwise be available to a service provider in this situation is inappropriate.

A conceptual problem or an actual problem?

A problem in bitTorrent cases is the lack of any potential non-infringing uses, making the perverse situation where the yet – as Google and other DMCA safe harbor advocates would have it – further evidence is still needed of the service provider’s affirmative, demonstrable steps acknowledging infringement.  In isoHunt, arguably this wasn’t a big deal because you had a really bad actor doing egregious things.

On its appeal, isoHunt argues that it does the same thing that Google does when it comes to torrents, and that it is entirely easy to search for torrents on Google ((using a filetype: command for “torrent”).  Google probably cannot argue otherwise, but it can argue against (a) the inducement activities that isoHunt does (see above) and (b) isoHunt’s nonresponsiveness to DMCA notices.

Many times you’d be wrong.  One problem with ownership: Misidentification of value.

As Dan Berger of Social Tables pointed out, many technology companies aren’t strictly “technology” plays at all, and their value isn’t in their code, but rather in their execution or implementation.

I recently spoke with Eric Gunderson of Development Seed, whose open-source mapping technologies illustrate the same principle of technology execution: In the case of Development Seed’s MapBox, the great strength is speed.  Big data use means great mapping potential, but also means big processing problems.  Big processing problems reward innovative design execution.  If speed of mapping capability and management of data is a priority, ownership is less of a concern than execution and capabilities.  This is true even with proprietary products rather than services.  One might of course say, “Use our system, use our product,” but why should we use it?  The answer is that you do something better than everyone else out there using comparable – and perhaps even identical – technologies.  You wrap it up and package it – and execute it – better and faster.

The coding is valuable, but the greater value is in the execution of the coding and coupling of the organic coding with acquired knowledge from third-party applications and libraries, including (for example) Javascript libraries and other open-source software under GPL, MIT or other licenses.

The code itself may, or may not be open-source, but the value often is in the packaging, in the delivery, in the execution and the support.  In reality, I – the end user – cannot do much with the code itself beyond the immediate and narrow need of my specific use, and that will be without support, without updates, modifications, improvements and all the other benefits from open-source collaboration.  From the developer’s standpoint, the ability to develop products that continue to feed a renewable support business drives further continued product development.

Whether or not open-source, Social Tables, like MapBox, can benefit from copyright protection as a “collective work” or compilation, and that protection has meaningful value.  But as Dan Berger of Social Tables is quick to recognize, the copyright protection has less meaning to his potential market than the elegance of his design and the ease-of-use of his execution.   As technologist Piotr Steininger told me recently, referring to SproutCore, with increasing use of open-source, developers – and technology businesses – have realized that “the framework has potential but it can only benefit from open collaboration.  So in a sense the company gives up a product but in return gains a better product by sharing it.”

I am joined today by Liz Steininger, co-founder of Tapangi Consulting and project manager in the DC Government’s Office of the Chief Technology Officer.  Tapangi Consulting specializes in mobile and HTML5 application development as well as content management.  Liz is also an active member of the DC Tech community and you can find her on Twitter as @liz315.

Some of the issues we discuss today are these:

• Protecting ideas in early stages of pitching to potential clients.

• Application developer agreements and API Terms of Use (TOUs).

• Platform question: As a developer, how do you think about development based on different platform (e.g. Android or iOS or Blackberry) or a specific API?

• Copyright and “open source” issues, GPL, libraries, use of third-party code.

• Ownership and Rights Issues

• Privacy and uses of personal information (PI).

Please click here for the podcast.

Privacy issues become pressing later when the app goes public for end users, although the biggest privacy problems tend to arise when app publishers get tripped up by commitments made in their own end user license agreements (EULAs) or privacy policies, more so than from any violations of privacy laws.  More on privacy and the app/API problems in a separate blog post.

Immediate issues are copyright and trademark, both governed by federal laws, but also governed by API terms of use and similar application development agreements with hosting platforms.  Apple’s software developer kits (SDK) for the iPad and iPhone encompass similar purposes as part of broader packages of developer protocols for use of those APIs.

Copyright and trademark rules are sometimes obvious, but the platforms universally require covenants from developers that they actually own the intellectual property rights to their software.  But they also create contract commitments that can override traditional copyright and trademark rules such as fair use.

Copyright

First, copyright.  A good example is use of the Flickr API, where at least one developer has argued that fair use allows him to freely republish thumbnails of user photos from Flickr.  He may have a valid fair use argument because of cases such as Kelly v. Arriba Soft Corporation from 2003 and the more recent cases of Perfect 10 v. Google and Perfect 10 v. Amazon.com, but he is still breaching his contract commitment to Flickr (under Flickr’s API Terms of Use) which prohibits such use.

Copyright also is at stake when a developer uses previously copyrighted material from third parties in his app.  Neither Apple’s SDK nor most API Terms of Use make any distinction for fair use, instead simply requiring ownership of rights whether by actual ownership or by valid license.  When using video, music or other software in an app, fair use arguments are tricky because the platform itself likely will honor validly-submitted takedown demands for copyright infringement under the Digital Millennium Copyright Act (DMCA).  Fair use can be a valid defense to a claim of copyright infringement, but a practical problem is that the platform may give a presumption of validity to the copyright owner pending resolution of the dispute – and remove the app.

One more copyright comment: Even novel execution may not buffer against a valid copyright claim.  An example is an app based on a PC or desktop or console version of an existing game or application.  Development for the new API may very well involve extensive coder innovation, where the code is substantially dissimilar to the original.  Nonetheless, the original is copyrighted, and the new version may very well be deemed a “derivative work”, protected by the copyright law’s grant of exclusivity to the owner, and therefore infringing.

Trademark

Next, trademark.  First, the obvious: trademark law gives certain exclusivity of use prior registered trademarks, and app development cannot infringe a prior registered trademark.

And even if not infringing copyright, use of the same or a similar name to an existing registered trademark (the standard under 15 USC 1114(1)(a) is “likelihood of confusion”, see a good discussion on what this means here) can infringe that trademark.  So even if an app is dissimilar from another app, deceptive names – closely resembling the trademarked name of another app – can trigger trademark problems.

The more interesting problem is understanding when trademark is actually infringed.  Trademark is in some ways synonymous with brand-building, and infringement is based on confusion as to the owner: If an application is deceptively misleading as to its source or origin, it can infringe a trademark even if the app is branded under a different name than the trademark.

This restricts distribution of an app that is, in everything but name, the same as another app.  But an app may infringe and not be the same but merely suggestive.  How so?  Look and feel, layout, color scheme, suggestively similar text, fonts, and on and on.

As with copyright, most API Terms of Use (and Apple’s SDK) typically require representations of trademark non-infringement.  They also restrict use of the platform’s trademarks, say, for example using the “Skype” name in your app.  And again similar to copyright, fair use rights under trademark law – which typically permit use of a trademark for “nominative” purposes, meaning simply to identify the trademark without implying any endorsement – may be trumped by contract terms of the API.

So, for example, Skype’s API Terms of Use limit references to “Skype, Skype API and Skype Software” to:

“works with Skype Software” or “works with Skype”

“uses Skype Software” or “uses Skype”

“for Skype Software” or “for Skype”

The point is avoiding the perception of endorsement by the platform, and Skype makes this explicit, requiring prominent display of this additional statement: “This product uses the Skype API but is not endorsed, certified or otherwise approved in any way by Skype.”

Along the way, we will touch on Run DMC, Thierry Guetta (aka “Mr. Brainwash”), “pop-art”, photography, Andy Warhol and Robert Rauschenberg.

Joining me to discuss copyright, fair use, street art, what is street art and all that we can cover in 15 minutes … I’m joined by Brooke Jimenez.  Brooke is a second-year law student at Georgetown University Law Center with a focus on international law, and a creative mind on issues of media law.

Stories mentioned in the podcast include this from The Art Newspaper, and this from George Will in the Washington Post.  Please click the audio player link below for the podcast. Enjoy.