Copyright Cases: Mavrix Photographs, LLC v. LiveJournal, Inc.

Mavrix Photographs, LLC v. LiveJournal, Inc.

 LiveJournal is a social media platform that displays photographs posted by users.  Maverix Photographs sued for copyright infringement of some of its photographs.  LiveJournal raised the defense that it was protected by the safe harbor provisions of the Digital Millennium Copyright Act (DMCA).  The district court agreed and dismissed the case on a summary judgment motion by LiveJournal.

Appeal

The appeals court (1) reversed the district court’s decision, instead finding that the safe harbor would apply if the photographs were posted at the direction of users. However, LiveJournal posted the photographs after a team of volunteer moderators, led by an employee,  reviewed and approved them. The court held that whether the photographs were posted at the direction of users depended on whether the acts of the moderators could be attributed to LiveJournal. Disagreeing with the district court, the panel held that the common law of agency applied to the LiveJournal’s DMCA safe harbor defense. Because there were genuine factual disputes regarding whether the moderators were the defendant’s agents, the panel reversed the district court’s summary judgment and remanded the case for trial.

The panel also discussed the remaining elements of the safe harbor affirmative defense. If an internet service provider shows that the infringing material was posted “at the direction of the user,” it must then also show that (1) it lacked actual or red flag knowledge of the infringing  material; and (2) it did not financially benefit from infringements that it had the right and ability to control. The court held that to fully assess actual knowledge, the fact finder must consider not only whether the copyright holder has given notice of the infringement, but also the service provider’s subjective knowledge of the infringing nature of the posts. The court held that to determine whether the defendant had red flag knowledge, the fact finder would need to assess whether it would be objectively obvious to a reasonable person that material bearing a generic watermark or a watermark referring to the plaintiff’s website was infringing. When assessing the service provider’s right and ability to control the infringements, the fact finder should consider the service provider’s procedures that existed at the time of the infringements and whether the service provider had “something more” than the ability to remove or block access to posted materials. Finally, the panel vacated the district court’s order denying discovery of the moderators’ identities.

Summary based on courts case summary.  Full opinion available HERE.

Court: U.S. Court of Appeals for the Ninth Circuit

Docket: 14-56596

Opinion Date: April 7, 2017

District Court

Benefits of a Federal Trademark Registration – FAQ

Question for Trademark lawyerWhat are the benefits of a federal trademark registration?

Answer: There are many benefits of a federal trademark registration, both direct and indirect.  Direct benefits are numerous and include:

  • National protection of the mark;
  • Ability to obtain injunctions stopping infringers;
  • Ability to use the registration to apply for foreign trademark registrations;
  • Greater access to the  federal court system;
  • Assistance from the United States Custom in stopping counterfeit and infringing goods from importation; and
  • Attorneys fees when proper notice has been attached to the goods or services. I

In addition to these considerations, trademark registration provides indirect benefits in the form of being able to point to it when protecting marks used for social media accounts, protect against improper use in search engines, ability to obtain new domains in sunrise periods, and providing great leverage in UDRP and URS disputes against cyber-squatters.

Why Provide these Benefits

Providing these benefits serve two primary functions.  By granting these rights to trademark owners the government helps to incentivise business owners by helping to protect the goodwill embodied in their brands.  This in turn helps protect consumers by letting them know that when they buy a product, that  the product originated from the brand owner and not an impostor.  This ability to build a portfolio of valuable business assets has obvious benefits to any business owner.

 

Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.

Trademark Registration Scam – FAQ

Question for Trademark lawyer

I filed a trademark application recently and suddenly I have been receiving papers from all these companies saying that I owe more money to finalize my trademark. Is this some kind of trademark registration scam?

Answer: In December (2016) the Department of Justice announced that two men had pled guilty of a scamming owners of US trademark applicants. Through there company called the Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO), the men, Artashes Darbinyan and Orbel Hakobyan, stole approximately $1.66 million from registrants and applicants of U.S. trademarks through a trademark registration scam by sending fraudulent solicitation for additional filing fees.

The USPTO worked with California law enforcement in this case and takes a number of steps to fight solicitations from companies fraudulently promising to protect trademarks. These questionable solicitations have been growing problem, both nationally and globally over the years. To help combat this, the USPTO has taken a number of steps.

1) Each Office Action regarding an application includes a warning and a link to the USPTO Non-USPTO Solicitations page.

2) A bright orange paper with a warning is sent along with every registration.

3) the USPTO maintains a list of non-USPTO solicitations on our Non-USPTO Solicitations page that the public can use to check against and they encourage the public to contact them with new solicitations so that the list can continually be updated.

Similar scams involve organizations contacting registrants claiming to represent foreign trademark offices, claiming that someone is attempting to register their trademark in their country’s registry. They then offer to register the mark in that country for you to prevent to claim jumper from moving in.

A registered trademark is a valuable asset, and where there’s money, unfortunately, there are bound to be criminal elements lurking. The USPTO continues to provide its ongoing full support to U.S. law enforcement officials working on this issue.