Internet CasesDigital Home Viacom v. You Tube Field v. Google Google Book Search Ellison v. AOL Kelly v. Arriba MGM v. Grokster Fonovisa v. Cherry ALS Scan v. Remarq Perfect10 v. CC Bill
Software CasesSega v. Accolade Lotus v. Borland Whelan v. Jaslow CA v. Altai
Software IssuesLicensing Ontologies Open Source GNU Licensing
Website IssuesWeb Protection Web Design Linking Newgroups
DMCADMCA Overview Safe Harbor Takedown Notice Subpoena NII SDMI Hacking Bill
MisrepresentationOverview Arista v. MP3Board Diebold v. OPG Rossi v. Universal Lenz v. Universal Sony BMG
MP3 Board and Arista Records
MP3Board designs around Napster
MP3 Board styled itself as a music locator service by providing links to mp3 files on other publicly available websites. By not hosting the mp3 files on its own servers, MP3 Board avoided claims of direct copyright infringement, and by not participating in the transfer of files from source to user (other than by providing the initial link), MP3 Board sought to avoid liability for contributory and vicarious copyright infringement visited upon Napster by virtue of their centralized server. MP3 Board provided an automated search engine that searched for, aggregated and organized links to media files on the Web. In furtherance of this activity, MP3Boad did the following:
- Provided a tutorial on how to locate and download files.
- Solicited users to post links to sites containing mp3 files.
- Posted a link to FreeDrive, a service where users could store mp3 files for free.
- Hosted a message board where users could ask questions of other users or MP3 Board staff.
- In response to message board postings from users, MP3 Board staff:
- Searched for links to songs;
- Posted links to songs;
- Solicited other users to provide requested songs; and
- Obtained and posted passwords to enable users to access certain mp3 files.
RIAA sends nastygrams
The RIAA served a notice and subpoena letter (“nastygram”) to MP3 Board’s ISP. The letter included a list of representative artists whose work was allegedly being infringed. The letter requested that the ISP remove or disable access to the site, or otherwise disable to the links posted on the site. The ISP blew off the request. Six months later, the RIAA sent MP3 Board’s ISP a second nastygram, again providing a list of representative artists whose works were allegedly being infringed, but further warning that the ISP could be liable under the DMCA if it failed to comply. This apparently got the attention of the ISP, and they cut off MP3 Board’s Internet connection. When MP3 Board requested that the connection be restored, the ISP indicated that it could only do so if MP3 Board complied with the Notice and Take-down provisions of the DMCA and provided a counter-notice. MP3 Board provided a counter-notice and the ISP restored the Internet connection (presumably after giving the RIAA opportunity to file a lawsuit first). Shortly thereafter, the RIAA sent a third nastygram, this time directly to MP3 Board. In this missive, they again provided a list of representative artists whose works were allegedly being infringed, but further included a list of representative songs along with screen shots from the MP3 Board website showing links to allegedly infringing mp3 files. The RIAA gave MP3 Board one week to remove the links. MP3 Board blew off the request.
A month later several record companies filed a lawsuit against MP3 Board claiming contributory copyright infringement, vicarious copyright infringement and unfair competition. MP3 Board responded that not only did their conduct not constitute contributory copyright infringement, vicarious copyright infringement or unfair competition, but that their activities were further protected under the First Amendment. MP3 Board also added the RIAA as a third party defendant claiming that their nastygrams constituted misrepresentation of copyright infringement, tortious interference with contractual relations, and tortious interference with prospective economic advantage.
click for full claims map
The Misrepresentation Claim
In looking at whether the RIAA had any potential liability for misrepresentation under section 512(f) for either of the two nastygrams sent to MP3Board’s ISP, the court determined that since the ISP blew off the first one, and that consequently no harm was visited upon MP3 Board, that no brain cells needed to be burned determining whether the RIAA would be liable for the first nastygram. Regarding the second nastygram, the fact that the RIAA had explicitly threatened the ISP with provision of the DMCA, and since the ISP complied by cutting off MP3 Board’s internet connection, MP3 Board had suffered damage and brain cells would need to be burned to determine whether the RIAA was liable for misrepresentation under section 512(f). Under this section, anyone who knowingly and materially misrepresents that material or activity is infringing shall be liable for any damages incurred by the alleged infringer who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing.
MP3 Board was injured by the disruption of its internet service resulting from the ISP’s reliance on the second nastygram, so the open issue is did the RIAA knowingly and materially misrepresent to the ISP that material or activity on the MP3 Boards website was infringing. The initial problem that MP3 Board seized on was that as far as DMCA take-down notices are concerned, the second nastygram was sloppily drafted and failed to meet the minimal requirements of adequately identifying the works allegedly infringed. Consequently, MP3 Board alleged that there was misrepresentation because:
- the take-down notice did not adequately identify the alleged infringing works;
- the take-down notice threatened the ISP with liability for infringement; and
- the take-down notice was vague.
Regarding the insufficient notification, the court found that indeed the notice was woefully inadequate and therefore defective under section 512(c)(3)(A), which requires that the sender of a take-down notice adequately identify the material from the copyright holder. The sender cannot shift that burden to the ISP, which the court felt that the RIAA was trying to do in this case. Inadequate identification of allegedly infringed songs does not in and of itself constitute an act of knowingly and materially misrepresenting that material or activity in infringing. The RIAA claimed that MP3 Board was “offering direct links to files on other Internet site containing full-length sound recordings for other users to download, including songs by [the listed] artists.” This was not an incorrect statement, and therefore is also not an act of knowingly and materially misrepresenting that material or activity in infringing. This will be a recurring theme in this case.
The second claim contends that threatening the ISP with a suit for money damages when the ISP is immune from such a suit under DMCA 512(a) constitutes misrepresentation. Unfortunately for MP3 Board, this threat did not misrepresent “that material or activity is infringing”, one of the key elements for misrepresentation.
The third claim contends that the notice was too vague, and that this vagueness may have induced the ISP to cut MP3 Board’s connection. However, vagueness does not equal misrepresentation. See the preceding paragraph for the flaw in this claim.
Note that the three claims presented here ultimately turn on the fact that the RIAA didn’t make a specific claim that a specific song was being infringed. In other words, the lack of a representation (whether mis- or not) “that material or activity is infringing”. This is in contrast to the handful of other cases in the 512(f) milieu, all of which turn on the “knowingly and materially misrepresented” prong, and specifically the criteria for determining “knowingly”.
The Other Claims
The record companies’ motion for summary judgment was denied because issues of material fact existed regarding whether the record companies’ copyrights were infringed by MP3Board’s users. All three claims proffered by the record companies ultimately rely on satisfying the two-prong test for establishing liability for contributory or vicarious liability, namely that:
- the record companies owned valid copyrights, and
- unauthorized infringements of those copyrights occurred.
While the court acknowledged that the record companies’ ownership of valid copyrights is undisputed, the record companies did not provide evidence that anyone ever actually clicked on a link and downloaded an mp3 file. Consequently, there remains a material issue of fact. MP3Board’s motion for summary judgment that their conduct did not constitute contributory copyright infringement, vicarious copyright infringement or unfair competition was denied for the same reason.