Originally Published in the National Law Journal (Vol. 22, No. 23) on January 31, 2000, at C9.

Republished as the "In Depth Feature" in the February 8, 2000, (Vol. 2, No. 6) edition of E-Commerce Law Weekly, at 160.

Utah court finds contributory infringement for encouraging use of links to infringing sites.

On Dec. 6, 1999, U.S. District Judge Tena Campbell issued a preliminary injunction in Salt Lake City against the Utah Lighthouse Ministry. It prohibited Jerald and Sandra Tanner from posting e-mail and other text on their Web site, including information about links to third-party Web sites containing pirated copies of a copyrighted handbook owned by the Church of Jesus Christ of Latter-Day Saints (LDS).1 Judge Campbell concluded that the Tanners were engaging in contributory copyright infringement by actively encouraging others to locate, browse and/or copy the copyrighted handbook.

This decision is yet another round in a series of legal battles being waged over IP on the Internet. It raises some serious concerns about the ability to freely use one of the most important features of the Internet: electronic links to other sites.

In July 1999, the Tanners posted on their Web site 17 pages of a guidebook for lay clergy, the Church Handbook of Instruction. The posted pages included information describing church discipline and the removal of names from LDS church membership rolls. The handbook is a closely guarded, privately printed, limited-distribution, unpublished book that is given only to LDS church officers. The Tanners allegedly received an electronic copy of the handbook from an anonymous source and indicated that for many years, they had received numerous requests for the information they posted from the handbook.

In October 1999, Intellectual Reserve Inc. (IRI), a corporation that manages the LDS Church's intellectual property, sued the Tanners, who are longtime critics of the church, alleging that the 17 pages of the handbook posted on the Web site violated the church's federal copyright in the handbook.

IRI filed a motion for a temporary restraining order prohibiting the Tanners from posting any portion of the handbook on their Web site. Judge Campbell granted the TRO, ordering the Tanners to remove the pages from their Web site, post a public acknowledgement of the LDS church's copyright on the handbook, admit their violation of the copyright in the handbook and request that all copies of the handbook previously downloaded be destroyed.

Without admitting fault or liability, the Tanners initially consented to, and complied with, the TRO by removing the handbook from their Web site and posting the demand letter sent by IRI to satisfy the publication requirement. The demand letter, legal papers and other news stories related to the case can be viewed on the Tanners' Web site. (www.utlm.org/underthecoveroflight_news.htm)

In November 1999, however, the Tanners posted e-mail and other text on their Web site that included a description of three links to third-party sites where copies of the entire handbook, or portions of it, could be obtained. Although the Tanners complied with the "letter" of the TRO's terms, it appears that they did not comply with its "spirit" when they posted the text and e-mail.

The Tanners initially conceded that the LDS church owned a valid copyright in the handbook and that they may have directly infringed the copyright by placing portions of the handbook on their Web site. They then changed their position and moved to dismiss the request for the preliminary injunction, claiming that IRI had failed to allege facts showing ownership of a valid copyright, one of the necessary elements to show infringement. Judge Campbell rejected their argument when IRI produced a copyright registration certificate.

The judge also rejected the Tanners' argument that their First Amendment rights were being infringed, stating that the First Amendment did not give defendants the right to infringe on legally recognized rights under the copyright law. Because the Tanners appear not to have advanced any other defenses to the direct copyright-infringement claim--such as fair use--the court granted the preliminary injunction, on Dec. 6, 1999, to protect the LDS church from further harm. It found a substantial likelihood that the LDS church would prevail on its claim of copyright infringement.

Along with arguing procedural matters and the First Amendment defense, the Tanners could have also considered raising a fair-use defense against the direct-infringement claim. The Copyright Act provides that fair use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, scholarship or research is not an infringement of the copyright.2

A court, in determining whether a use is fair, considers four factors: the purpose and character of the use, including whether the use is of a commercial nature or is for nonprofit educational purposes; the nature of the copyrighted work; the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and the effect of use on the potential market for or value of the copyrighted work.

Several factors of the fair-use defense could have worked in the Tanners' favor. First, the information including how to remove a person's name from LDS church rolls was posted for nonprofit, educational purposes. Second, the nature of the portions of copyrighted work posted by the Tanners appear factual in nature, and copyright law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy. Third, the Tanners posted only 17 pages of Vol. One of the handbook, which comprises only about 10% of the total number of pages of that volume. The entire handbook comprises two volumes, totaling approximately 330 pages; thus, the Tanners posted only about 5% of the handbook. Finally, because the handbook is unpublished and closely guarded, any potential market value for, or the actual value of, the handbook may prove very difficult to determine.

Contributory infringement

Judge Campbell's statements about contributory copyright infringement, including the three links to infringing Web sites posting all or part of the handbook, are far more significant. The IRI alleged that the mere act of posting e-mail and related text encouraged others to locate, browse and/or copy the handbook, and that this constituted contributory copyright infringement.

Judge Campbell, citing Gershwin Publishing Corp. v. Columbia Artists Management Inc.,3 stated that liability for contributory infringement is imposed when one who, with knowledge of the infringing activity, induces, causes or contributes to the infringing conduct of another. Citing Subafilms Ltd. v. MGM-Pathe Communications Co.,4 the judge stated that to prevail on its contributory infringement claim, IRI must first establish that the Tanners aided or encouraged contributory infringement.

She concluded that the Tanners did not contribute to the infringing actions of those who operate the three infringing Web sites. There was no direct relationship between the Tanners and the three Web sites; the Tanners did not provide the Web site operators with copyrighted materials; and the Tanners did not receive any kind of compensation from the operators.

The next inquiry was whether the Tanners were liable under a contributory copyright infringement theory for the actions of those who browse the handbook on any of the three infringing Web sites. It is well-established that browsing a Web site makes a temporary copy of electronic content that can infringe a copyright on the electronic content. Judge Campbell, citing MAI Systems Corp. v. Peak Computer Inc.,5 concluded that any user who browses any of the infringing Web sites causes a temporary copy of the handbook materials to be made in the random access memory of a user's computer. Thus, any such copy infringes the handbook's copyright.

However, she did conclude that the Tanners actively induced, caused or materially contributed to the infringement of the copyright by posting on their Web site the text "Church Handbook of Instructions is back online!" and listing the three infringing Web addresses; by posting e-mail suggesting that the lawsuit's outcome may be affected if enough users visit one of the infringing Web sites and download the complete handbook; and posting e-mail that mentions sending a copy of the material to the media. The judge further found that the Tanners, in response to an e-mail stating that the sender had unsuccessfully tried to browse a Web site including the handbook, gave further instructions on how to browse the material.6

What the case portends

In terms of current copyright law, Judge Campbell's decision adds additional uncertainty to an already unsettled area of the law. One can speculate that her decision might have been different if the Tanners had engaged only in passive conduct, such as posting text and e-mail including a description of the links for the three infringing sites, without the apparently more active conduct.

The electronic text and e-mail describing the infringing links on the Tanners' Web site were not hot-linked. That is, a visitor to the Tanners' Web site could not directly "click" on any of the links in the text or e-mail to connect immediately to one of the third-party infringing sites. A visitor instead would have to electronically cut and paste or physically input location information from the links into a browser to access one of the infringing sites.

The Tanners filed a notice of appeal of the preliminary injunction to the U.S. Court of Appeals for the 10th Circuit on Dec. 24, 1999. The 10th Circuit now has a chance to review Judge Campbell's decision and potentially help remove some of the uncertainty associated with applying copyright law to links to copyrighted electronic content on the Internet.

One important question, however, remains uncertain from the Tanner decision: Is the simple act of posting text and/or e-mail describing sites with pirated copyrighted material enough to induce, cause or materially contribute to copyright infringement? If so, aside from its First Amendment right to report the news and its fair-use rights, is the Salt Lake City Tribune also guilty of contributory copyright infringement by posting an electronic copy of a story about the Tanners that includes a description of two of the three infringing links?7 Moreover, are the owners/operators of the various Web sites that posted electronic stories, messages or e-mails about the Tanners including any of the three links to the infringing cites also guilty of contributory copyright infringement?

There is older case law, unrelated to the Internet, which suggests that third-party contributory infringement liability may exist if a party acts with knowledge of the infringement and the related activities aid the primary infringer in accomplishing illegitimate activities.8

This is not the first copyright dispute over electronic links on the Internet, and it certainly will not be the last. Ticketmaster Online-City Search Inc. settled a lawsuit against Microsoft Corp. over copyright violations related to a practice known as deep linking, which allows a user to avoid a home page and link to lower levels of the site. Ticketmaster recently sued a competitor, Tickets.com Inc., over the same deep linking practice.9

EBay Inc. recently sought to bar Ruby Lane, Auction Universe and BiddersEdge Inc. from collecting data about auction items from eBay's Web site and then including links to those items on their own sites.10

Jean-Pierre Bazinet, a 20-year-old film buff, was recently asked to remove some of the links on his Web site to 900 movie trailers scattered across the Internet. Universal Pictures sent Mr. Bazinet a letter asking him to remove the links to the trailers owned by Universal or face legal action. Mr. Bazinet has voluntarily removed all links from his site to those trailers.11

Many of these disputes arise because of new e-business models on the Internet. As society evolves toward a more knowledge-based economy driven by technology advances related to the Internet, there appears to be a growing sentiment among Web site owners that copyright laws should be expanded to include specific protection for the way users "experience" Web sites or "navigate" through Web sites. Congress may have to consider whether it is appropriate to revise the copyright laws to address such concerns and other problems sure to arise on the Internet.

Footnotes

(1) Intellectual Reserve Inc. v. Utah Lighthouse Ministry Inc., No. 2:99-CV-808C, 1999 U.S. Dist. Lexis 19103 (Dec. 6, 1999, D. Utah).

(2) 17 U.S.C. 107.

(3) 443 F.2d 1159, 1162 (2d Cir. 1971).

(4) 24 F.3d 1088, 1092 (9th Cir. 1994).

(5) 991 F.2d 511 (9th Cir. 1993).

(6) 1999 U.S. Dist. Lexis 19103, at *11.

(7) See www.sltrib.com/1999/oct/10301999/utah/43791.htm.

(8) See Nimmer on Copyright § 12.04[A][2][a].

(9) Ticketmaster Corp. v. Tickets.com Inc., No. 2:99CV7654 (C.D. Cal. July 23, 1999).

(10) Ebay Inc. v. Bidder's Edge Inc., No. 5:99CV21200 (N.D. Cal. Dec. 10, 1999).

(11) See www.movie-list.com/universal.html.

Copyright © 2000 by Stephen Lesavich, PhD. All rights reserved

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