Contrib Infringement – Safe Harbor
Column Editor: Bruce Strauch (The Citadel, Emeritus)
HARLAN ELLISON V. STEPHEN ROBERTSON AND AMERICA ONLINE INC. UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT, 357 F.3d 1072; 2004 U.S. App. LEXIS 2074.
Harlan Ellison (b. 1934) has published over 1,700 short stories, novellas, screenplays, comic book scripts, teleplays, and essays. He’s won Hugos, Nebulas and Edgars. Famous novels include Web of the City, Spider Kiss, The Starlost, A Boy and His Dog. Whew.
He was expelled from Ohio State for belting a professor who belittled his writing skills. And he proceeded to send said prof a copy of each and every story he published.
He refuses to use a computer and types on a manual typewriter. He voiced himself on the Scooby-Doo! Mystery Incorporated. The episode “The Shrieking Madness” was H.P. Lovecraft inspired. And he was in a scene with Milhouse on The Simpsons.
Yes, what a character. He has some famous quotes.
“The two most abundant things in the universe are hydrogen and stupidity.”
“People who can’t get laid watch star trek and eat twinkies.”
“Love ain’t nothing but sex misspelled.”
“You are not entitled to your opinion. You are entitled to your informed opinion. No one is entitled to be ignorant.”
In 1962 he began churning out screenplays for The Oscar, The Loretta Young Show, The Flying Nun, Burke’s Law, Route 66, The Outer Limits, Star Trek, The Man from U.N.C.L.E., Cimarron Strip, The Alfred Hitchcock Hour.
Widely known to be argumentative, he assaulted an author at the Nebula Awards banquet, sent 213 bricks to a publisher postage due, and a dead gopher to another by slow mail. And he’s sued various people.
Which leads us to our case. And another known quote on copyright thieves: “If you put your hand in my pocket, you’ll drag back six inches of bloody stump.”
Anderson and AOL
Around April of 2000, Stephen Robertson posted four Ellison (copyrighted) short stories on the USENET, a peer-to-peer file sharing network. The particular USENET newsgroup — alt.binaries.e-book — was primarily a vehicle for exchanging unauthorized digital copies of works by famous authors.
AOL subscribers are given access to USENET, so Ellison emailed AOL, warning of the infringement in compliance with notification procedures of the Digital Millennium Copyright Act (DMCA). He got no reply. AOL claims to have not received it.
Which it hadn’t. But there’s a reason for it as you’ll see below.
Ellison sued Anderson, and included AOL for vicarious and contributory copyright infringement. Upon receipt of service of suit, AOL blocked users’ access to alt.binaries.e-book.
At the trial court level, AOL got summary judgment on direct and vicarious copyright infringement, but was told contributory infringement was a triable fact. BUT, the safe harbor limitation of liability under the DMCA blows that claim away.
You are contributorily violating copyright if you induce, cause or materially contribute to infringement. A&M Records v. Napster, Inc., 239 F.3d 1004, 1013 (9th Cir. 2001) (Napster II)
You are vicariously liable for infringement if you enjoy a direct financial benefit from another’s infringement and have “the right and ability to supervise” the activity. Napster II, 239 F.3d at 1022.
But … Safe Harbors?
Congress wrote Title II of the DMCA, Online Copyright Infringement Liability Limitation Act (OCILLA) 17 U.S.C. § 512 (2003) to get cooperation between copyright owners and Internet service providers.
To give greater certainty of legal exposure to service providers, it created a series of “safe harbors” for ordinary activities.
For Ellison to win, he must show AOL knew infringement was taking place and contributed to it.
Incredibly, AOL had changed its contact email address but waited some months to register the change with the U.S. Copyright Office and failed to configure the old address to forward new messages. Which was why they didn’t get Ellison’s notice.
Further, AOL had received a phone call from a subscriber telling them of infringing activity on the alt.binaries.e-book group.
They don’t address whether a lone phone call to a behemoth corporation should trigger knowledge. But that’s why it’s a jury question.
AOL provided a service that automatically distributed all USENET postings, infringing and noninfringing when it knew of the infringing stuff. This can be a material contribution, making for a triable issue. Religious Tech. Ctr. v. Netcom On-Line Communication Servs., Inc., 907 F. Supp. 1361, 1375 (N.D. Cal. 1995).
Ellison must show AOL received a direct financial benefit from the infringement and had the right to supervise the activity.
AOL’s future revenue depends upon a growing userbase. While the infringing group might be a small portion of AOL’s vast revenue, it can still be liable without regard to size. Indeed, almost any unit of their services might seem relatively small next to the whole.
But was the infringing activity a draw for subscribers? Ellison could not show AOL attracted customers by ripping off his stories nor could it show it lost them when the infringement was lost.
Good grief. What exhaustive discovery would have to be undertaken to prove this?
But the vicarious claim flopped.
Leaving contrib still alive but for …
OCILLA’S Safe Harbors
To be secure in a safe harbor, a service provider must have a termination of services policy for repeat offenders, implement it, and inform its users.
The 9th Circuit found AOL did not have an effective policy in place at the time due to the email SNAFU that had new emails falling into a vacuum. Or at least evidence from which a reasonable juror could conclude no effective policy.
And So …
We go back to the trial court level for a jury to consider the issues of contributory infringement and safe harbor protection.
In the course of plowing through this, you might have wondered just what the damages might be for the pirating of four stories. And was the battle worth it?
If we can believe Variety Feb. 5, 2002, Ellison’s lawyer didn’t take the case on contingency. At that point, Ellison had shelled out $250,000 in legal bills.
But from Techdirt June 10, 2004 we learn that “after years of fighting, it looks like AOL just got fed up and has paid him off in a settlement to go away.”