Tag Archive for Copyright

How to Sell Your Grandmother Guilt-Free

January 21, 2011 Craig Family History, Genealogy

In the last post, we told how our friend Sheri Fenley had been approached by a publisher who asked permission to use a photograph of her grandmother which had appeared on Sheri’s blog.  The publisher apparently had no intent to compensate Sheri although the publisher stood to make a fine sum of money from the publication on the cover of which the photograph would appear.  Sheri made a very generous offer and never heard from the publisher again.

What should a genea-blogger do when approached by a commercial enterprise which wants to  use some of the blogger’s content?  Each individual will come to a different conclusion as each situation will differ from others.  But here are some things to think about:

  • Is the potential user a non-profit whose cause you can support?

If so, you may feel perfectly comfortable lending your content for the greater good.  Even in this event, there are some precautions, you may want to take, which we’ll discuss below.

  • Is the potential  user a commercial enterprise that intends to make a profit from the item(s) that would include your content?

If so, you may want to consider asking for compensation for the use of your content.  To be in the best negotiating position, remembered the adage that “knowledge is power.”  You need to research the enterprise and its industry, to understand what the likelihood of a profit is, and the potential magnitude of that profit.  You need a clear understanding of how your content is likely to be used.

You also need to know what alternatives to the potential user has, because that will affect the price that the commercial enterprise is willing to pay to use your content.

To maximize your potential return, you need to have clear title and exclusive rights to the content that you might permit someone to use. So we need to consider copyright, among other things.

We have discussed copyright at length in this particular space.  I suggest a review of those posts to get up to speed on copyright.  (Just type “copyright” into the search box on this page). Remember some basics: (1) ideas cannot be copyrighted;  (2) facts cannot be copyrighted;  (3) titles cannot be copyright.  On the other hand, forms, formats, and templates can be copyrighted. A particular arrangement of factual material can be protected by copyright law.

What about photographs of people on your blog?  We’ve talked about how tricky copyright for photographs can be.  Go back and review some of those posts as well.  But keep in mind that apart from copyright, people have a privacy right in protecting the use of their likeness for commercial purposes.

In many states, the law protects a “right of publicity.” This right of publicity is simply the right of a person to control the commercial use of his or her identity. The right of publicity is a valuable property right, protecting the commercial value of a person’s identity or likeness. A person desiring to make commercial use of a celebrity’s name, voice, signature, photograph, or
likeness thus must get the consent of the celebrity. Note this applies to commercial use, and not to use in a news story, for example.

In 1979, the California Supreme Court considered two cases, Lugosi v. Universal Pictures, 25 Cal.3d 813, and Guglielmi v. Spelling-Goldberg Productions, 25 Cal.3d 860, raising the issue of whether this right of publicity survived the death of the holder of the right. [Everyone knows that Bela Lugosi (nee Béla Ferenc Dezso Blaskó) played "Dracula" in the 1931 film of the same name; congratulations to those who knew that Rodolfo Alfonso Raffaello Piero Filiberto Guglielmi (1895-1926) was also known as Rudolph Valentino!]

In the Guglielmi case, the studio had exhibited on television a “fictionalized version” of Valentino’s life, depicting the actor’s name, likeness and personality without obtaining the prior consent of either Valentino or his legal heir. The heir sought damages and injunctive relief on the theory that the studio had misappropriated Valentino’s “right of publicity,” and that Valentino’s legal heir was the present owner of that right. In the Lugosi case, the actor’s heirs sought an injunction against and an accounting for profits from the studio which had licensed the use of the image of the actor as Dracula on a variety of commercial products.

In both cases, the California Supreme Court held that the right is not descendible and expires upon the death of the person so protected. In 1984, responding to those cases and several other similar cases, the California Legislature enacted a statute that gave to the heirs of a deceased personality the commercial rights in that deceased personality’s name, voice, signature, photograph, or likeness. As a result, if one desires to use the name, voice, signature, photograph, or likeness of, say, Elvis Presley, in a commercial context in California, one must have the permission of the Presley Estate. The heir’s rights are valid for seventy years after the death of the celebrity. A person who violates the heirs’ right may be liable for damages, including punitive damages.

Although we have discussed this in terms of “celebrities,” the right of publicity could belong to any person. Under statutory law, that right may be passed that person’s heirs.  Thus, in Sheri’s case, she controlled the right of commercial use of her grandmother’s likeness.  The publisher r understood that and that’s why they asked for permission.  Now, here’s what you need to consider:

(1) What purpose is the material going to be put to?  Is the purpose legal or morally objectionable?  Would the use place your ancestor in a false light?  Or would the use be favorable to your ancestor?
(2) Will the use serve some important artistic, scientific, literary or political merit?
(3) What’s the use worth?

Answering question number three is the toughest one of all.  Yet it’s the key to what approach you will take.  Does the potential buyer want to make a one-time use of the material?  For how long does the potential buyer want to use the material?  How many copies of the material would be may?  For how much would a copy of the materials sell?  Would distribution be limited to the United States, or would it be worldwide?  Could the potential buyer authorize others to use the material and receive royalty payments from those others?

To sell your ancestor for too little would be an insult to your ancestor; on the other hand, if you receive a tremendous amount of compensation, you  may be regarded as a callous gold-digger enriching yourself on the bones of your forebears.

In the typical case, you will want to give a license to the potential user of the material.  A license is a limited right to use the material.  You will include in the license the price for the license; the term of the license (i.e., how long it lasts); the scope of use of the material (how often they may use it, what it may be used for, where geographically it may be used).  And you will want to spell out what it cannot be used for, e.g., any used that is illegal in in the jurisdiction where it is to be used, any use that would place the subject of the material in a false light, any used that violates contemporary community standards in any community where the material might be used.  You may think of others.

The license should state whether or not the material can be used to advertise products other than the material to which it may be adhered.  The license will spell out the type of advertising that  can be used with the material.

The license should state whether it includes digital rights,  international rights, and believe it or not, some lawyers are now advising that licenses  include “galactic rights.”  The license should also state whether it is assignable or transferable to other parties.

Here’s an outline of a potential license agreement:

I.  Grant of license.
A.  license granted on condition of payment
B.   amount of payment (one-time fee and/or royalties)
C.  general term (in time) of agreement
D.  general terms of use.

II.  Rights granted
A.  permissible uses.
B.   prohibited uses.
C.  geographical scope of use.
D.  technological scope of use (i.e. digital, digital storage)

III.  Specific terms of payment (when due; where and to whom to be sent)    `

III.  Transfer and assignment

IV.  Indemnification (licensee agrees to indemnify you for any liability arising from unauthorized or other breach of the license agreement).

V.  Termination or revocation (circumstances under which the license may be terminated or revoked prior to the expiration of the term of the line of the license).

I might also put in some recital about the uniqueness and value of the material that is going to be used.  The things I’ve listed above are sort of the minimums that I would put any agreement  with a commercial enterprise who wanted to use something from your blog.

Pricing is a matter of negotiation, and here’s where having good information will help you out tremendously.  Know whether or not there are other sources of similar material that may be in the public domain or may be available at a lesser price than you would want to license for.

You can negotiate these licenses yourself; there are a number of excellent self-help web sites and books available. These include Nolo.com, Lawyers.com (which has licensing templates by state), and Allbusiness.com.  But if it seems like it’s getting too complicated,  you may want to go to a site like Rocket Lawyer.com or LegalZoom.com. In some circumstances, you may need to consult a lawyer, especially if there’s a lawyer on the other side.  Keep in mind that regardless of what the books say or what I suggest, you can put anything you want in your licensing agreement.  It’s entirely up to you.

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Should Newspaper Be Publishing “Love Letters”?

September 4, 2008 Craig Uncategorized

We’ve been discussing the publication of a number of “love letters” from a World War II sailor to his wife back home in San Francisco.  The letters from Claude Everett Dawson to his wife Nadine Henry Dawson were discovered in a trash bin in Grass Valley, Nevada County, California, a Sierra foothills community.   The local newspaper, The Union, has published several of the more than 100 missives and has stated an intention to return the letters to a family member of the Dawsons, if one can be found.  A group of genealogists and others, including GeneaBlogie, have weighed in with volunteer research to help locate a family member.

In the comments to our last post about this, Apple, who writes the fine New England blog, Apple’s Tree, queries:

. . . . Should the paper be publishing these letters? With my current project I’m not publishing anything written by someone who hasn’t been dead at least 70 years. If they don’t know who the heirs are, who holds the copyright?

An excellent question, Apple.  Indeed, several readers of The Union have expressed similar concerns, though not as eloquently as Apple did.  For example, a reader who goes by the name “consarned citizen,” called the publication a “bizarre and cruel activity,” taking the newspaper to task thusly:

Shameful exploitation of the private thoughts of two people who were not writing for publication, who may never have lived in this area, who are dead (and whose immediate heirs might have died of old age).

Another reader of the paper, “nclover,” said simply: “Put the letters back in the trash where you found them.” But reader “havetosayit” compared the letters to the posthumously published letters of great historical figures such as Vincent van Gogh or W.E.B. DuBois. “In my opinion, these letters are a very interesting way of seeing the WW2 era through one sailor’s view,” this reader commented.

Well, what about it? Obviously, there are legal and ethical issues here that the newspaper must have confronted.  Let’s look at the legal issues first.

To whom do the letters belong?  The publisher of The Union says, “The letters belong to [the Dawsons] and, if they are gone, to their survivors . . . .”  That may or may not be correct. I think ownership of the physical letters may depend on how they got into that trash can.  Suppose they had been stolen and the thief, regarding them of no value, discarded them?  From whom were they stolen and did that person have a legal right to ownership?  Or suppose before their deaths in 1994, Claude and Nadine instructed someone to discard them at a certain place and time.  Maybe Claude and Nadine by their wills gave such an instruction.  Or suppose that after Claude and Nadine died, the letters were found by a family member who threw them away?  Maybe the letters were specifically bequeathed to a particular family member or someone else who no longe wanted them and tossed them out for that reason.

The newspaper seems to be operating on the assumption that the letters were discarded inadvertently, which is not an unreasonable assumption; it just might not be true.  And there is no evidence at this point to say for sure.  In that case, the newspaper may be acting reasonably to try to find a potential owner.  But is publication necessary to do that? Another good question.

If the newspaper believes that it does not own the letters, why is it acting as if it does by publishing them without the permission of the owner?  That may be more of an ethical question than a legal question.

Generally speaking, the law regards things that have been intentionally discarded as “abandoned” and anyone may claim such property.  Is the newspaper acting on that principle? If so, why does it care who the letters used to “belong to”?

Which brings us to teh copyright question.  Mere ownership of the phyical objects does not mean onwerhsip of the copyright.  The letters were created between 1943 and 1945.  The Copyright Act of 1909 was in effect then and it was much different than copyright law of today.  The old law placed great emphasis on publication and registration and formalities such as where and how the (c) symbol appeared.  Copyright terms were 28 years with the possibility of renewal for another 28 year term.  The technical requirements of the 1909 Act have mostly been eliminated by the current Copyright Act of 1976 and its 1992 and 1998 amendments, as well as by a treaty called the Berne Convention.

Under the 1909 Act, a work could acquire statutory protection by publication with the required formalities of notice or if unpublished, by registration with the Copyright Office and deposit of a number of copies as required by statute.  Generally, any work not so protected by the 1909 Act passed into the public domain under the terms of the 1976 Act.  [There are some other issues here, so if you have a problem involving such a work, consult a copyright lawyer].

The point is that Claude’s letters are probably in the public domain.  The  newspaper has no problem under copyright law publishing the letters.

[Law Lesson:  Why is Apple referring to 70 years above? Answer: The 1976 Act generally protects works for the life of the author plus 70 years.]

What about invasion of privacy? Well, Claude and Nadine are dead–their right to privacy in this sense went with them. There are other people mentioned in the letters, however.  The newspaper is perhaps calculating that  (1) none of them are sufficiently identifiable from the letters alone and (2) they’re probably dead anyway; both good bets!

Apart from the legal aspects, what about the ethical issues?

Craig Manson is an active member of the California State Bar.  In addition to the California courts, he is also admitted to practice before the United States Supreme Court and various other federal courts.  He does not currently practice copyright law.  The information in this article is intended for educational purposes only and is not a substitute for legal advice.  If you have an actual legal problem, consult a lawyer in your jurisdiction.

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Copyright Issues: Photographs

February 17, 2008 Craig Uncategorized

Around the first of the year, Jewelgirl left the following comment:

I would really love to hear your ideas about old photographs and who owns them. I find it hard to think that a 100 year old photo is owned by a 130 year old photographer. And I need a signature from the dead person so I can copy the photo for my family history album for a family member. The new law drives me crazy…….. what do you think?

And I promised that I would blog about that issue fairly soon. But time caught up with me and here I am halfway through February just now getting around to it. But, Jewelgirl, there’s good news.

How do you deal with that 100 year old photograph? Photos can be tricky because copyright information isn’t always easily available for images. Here are some general rules.

A threshold question to ask first is whether the photograph is a work of the United States government? Works of the United States government are not eligible for copyright protection. Be careful here however. The fact that a photograph appears in a government publication or on a government web site does not necessarily mean that it–the photograph–is a work of the United States government. Be aware furthermore, that the rule that works of the US government are not eligible for copyright protection does not apply to state governments.

Next you need to know whether the photograph was published or not. While the term “published” is not explicitly defined in the copyright law before 1976, the 1976 Copyright Act defined publication as follows:

“‘Publication’ is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication.” The authorization of the creator is required for an item to be considered published.

The term “unpublished” refers to material which has not been published, or which was distributed without the authorization of the creator or copyright holder.

  • Works published or registered in the U.S. before 1923 are now in the public domain.

According to the Copyright Act of 1976, works registered for copyright or published with a copyright notice were protected for a maximum of 75 years of copyright protection, assuming the copyrights on the works were renewed (28 years first term plus 47 for the second, if renewed). Public Law 105-298 enacted in October 1998 increased the maximum to 95 years [28 years first term and 67 for the second, if renewed]. Before 1998 the longest amount of time a work could be protected was 75 years, so works before 1923 were no longer protected (1998 minus 75 years equals 1923). When the law changed, the 1923 date was ‘frozen” and will remain so until 2018 [2018 minus 95 equals 1923]. Starting in 2018 the date that works are no longer protected will again change yearly, being calculated as the current year minus 95 years.

  • Works published with notice or registered in the U.S. from and including 1923 through 1963 are now in the public domain unless the copyright was renewed, in which case they are protected for 95 years from the copyright or publication date. A copyright search is required to establish if the item was copyrighted and that the copyright was renewed.
  • Works published with notice or registered between January 1, 1964 and December 31, 1977 are protected for 95 years.

In some interpretations the fact that no copyright notice is found on the item that was published from 1923 through 1977, means that the item has passed into the public domain. The pre-1978 copyright law required that a copyright notice be placed on a work as way to alert potential users that permission was needed. The criterion of the copyright notice is easy enough to apply to books, but a bit tricky with images, since the original work may have had a copyright notice which was not reproduced on subsequent copies or the copyright may have been on the work in which the image appeared, rather than on the image itself. The U.S. Copyright Office states that “Before March 1, 1989, the use of the notice was mandatory on all published works. Omitting the notice on any work first published before that date could result in the loss of copyright protection if corrective steps are not taken within a certain amount of time.”

If it appears that the photograph is unpublished, the U.S. Copyright Office offers the following guidance:

  • Works created before January 1, 1978 but not published or registered by that date are protected by copyright law for the life of the creator plus 70 years.
  • Works created on or after Jan. 1, 1978 are protected for the creator’s life plus 70 years.

Works Made “For Hire” or Anonymous or Pseudonymous Work

A work made for someone else is a “work for hire”. Works for hire may be protected by copyright by the employer, not the employee. The duration of copyright for works for hire and for anonymous and pseudonymous works is 95 years from publication or 120 years from creation, whichever is shorter.

To get a “simple” view of these rules, see this chart, produced by Cornell University.

Orphan Works

“Orphan works” are works where it is difficult because of insufficient information to determine rights. In these cases you may have to determine a course of risk management. Consider what you know about when and why the image was created, what you plan to use the image for, and then assess the risk of using it for that purpose. “risk management” might consist of the following:

  • Consider whether the image has been published by other researchers. Repeated publication without a rights holder making a claim may lessen the liability of users.
  • Request a copyright search, even if you have little information to go on. The paperwork from the Copyright Office could show your good faith effort to establish the rights status of the image.
  • Record the type of searching you have done and what you did or didn’t find, so you can demonstrate you used due diligence in searching for the rights holder.

Now it is possible that a hundred year old photograph could still be subject to copyright. But it’s unlikely you’d have to dig up the 130 year-old photographer. Remember that a copyright is property which can be treated just like any other property; which is to saying sold or devised by will or otherwise transferred. so if that 100 year old photograph is subject to copyright, the copyright is likely held by someone other than the original creator.

Sources:

U.S. Copyright Office web site

Library of Congress Prints & Photographs Reading Room

Scott Tambert, How to Use Images Legally

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A Most Unique Law Lesson

December 6, 2007 Craig Uncategorized

For this lesson, you have to visit my friend the footnoteMaven. Enjoy!

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Genealogy Law Quiz Answers

October 26, 2007 Craig Genealogy

The fall semester will be over soon at Pacific McGeorge School of Law, so I thought I’d practice for the grading season with the quiz that appeared here a couple of days ago. BTW, every one who tried it got a passing grade. Here’s the “model answer”:

Copyright Infringement

The first claim against Delia is Al and Bert’s action for copyright infringement. The first issue here is whether Al or Bert or both of them own the copyright in the diary in order to permit them to sue for copyright infringement. The diary was written by their mother. From what we can tell, the diary was never published before Delia got her hands on it. Likewise, from what we know, there is no evidence that a copyright was ever registered for this work.

The Copyright Act provides that copyright protection subsists in original works of authorship fixed in any tangible medium of expression. The copyright in a work of authorship immediately becomes the property of the author. It is not necessary to publish the work or register the copyright.

Thus, Delia’s grandmother owned t he copyright when she wrote the diary. Copyrights may be transferred or sold. We are not told whether Delia’s grandmother transferred the copyright during her lifetime. Assuming, therefore, that she did not transfer it during her lifetime, the copyright could pass as part of her decedent’s estate. That is what most likely happened here.

We are not told whether Grandma had any heirs other than Al and Bert, or whether she had a will. In any event, it is reasonable to assume that Al and Bert were her heirs and that they became owners of the copyright at her death.

We do not know when the diary was “created.” If it was created on or after January 1, 1978, then the copyright protection lasts for 70 years after the death of the author. Certain works copyrighted before January 1, 1978 may have copyright protection for as long as 120 years depending on the circumstances of their registration or renewal. We therefore may assume that Grandmother’s copyright is still “good” and owned by Al and Bert.

The fact that Delia had physical possession of the diary does not affect the ownership of the copyright. (Query whether when Al said to Delia, “Help yourself to anything in [the trunk],” not being aware of the diary, he intended to make a gift of any of his property in the trunk, including the copyright to the diary. Answer: this is probably ineffective to transfer the intangible property such as the copyright).

The next issue is whether Delia infringed the copyright to the diary when she published a portion of it on her blog. Copyright infringement occurs when a copyrighted work is published without t he permission of the owner. However, the doctrine of “fair use” is a limitation on the rights of the copyright owner. Section 107 of the copyright law sets forth four factors to be considered in determining whether or not a particular use is fair:

1. the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

In Delia’s case the purpose and character of the use was non-commercial. A court presumably could consider that a purpose of her use was vengeance and that she acted in anger toward her relatives, which would tend not to favor “fair use.”

The nature of the copyrighted work in Delia’s case likely favors a finding of “fair use.” The work is her grandmother’s diary, given to her by her uncle, who didn’t even know he had it.

Another factor tending to favor “fair use” in this case is the amount and substantiality of the portion used in relation to the copyrighted work as a whole. Delia used but one paragraph of a diary that had been kept “for many years.”

Finally, with respect to the effect of the use upon the potential market for or value of the copyrighted work, it is unlikely that Delia’s use of the one paragraph damaged in any significant way. We have no reason to believe that there exists very much of a market for Grandma’s diary or that there is any significant value to be had for Grandma’s diary from anyone except the parties here themselves.

As a result of the foregoing analysis, “fair use” is likely a strong defense for Delia.

Defamation

To create liability for defamation, there must be (1) a false and defamatory statement concerning another person; (2) an “unprivileged” publication of that statement to a third party; and (3) negligence or some greater fault on the part of the person making the statement. The wronged party must suffer some damages or in some cases, need not suffer particular damages where the statement is “defamatory per se.”

Al’s Claim of Defamation

Al must show that Delia published a false and defamatory statement about him and that the publication was unprivileged. The statement that “My sons have been nothing but woe to me,” could be deemed defamatory in that a statement by a mother that her sons have been “woeful” tends to harm the reputation of the sons by lowering them in the estimation of the community. But this is probably not defamatory per se, so Al must show some special damages from publication of the statement. For instance, Al might show that his business was damaged because people did not want to deal with someone who was not nice to his mother. Of course, Al must also show the statement is false. We have no information abut that.

The statement that “[Al's] a thief and a liar,” is defamatory per se and Al need not show any special damages as a result of publication of that statement. He, however, must show that it is false.

Bert’s Claim of Defamatiom

See above for discussion of the statement, “My sons have been nothing but woe to me.” Bert will also claim that the statement “Bert is worse” is defamatory in that it makes him out either as a worse “thief and liar” than Al or even worse than “a thief and liar.” In either circumstance, the statement is defamatory per se. Of course, he must show that the statement is false.

Bert will also claim that the statement that “Bert’s wife, Catherine, is a sl**,” defames him in that “sl**” will be clearly understood to mean “slut,” and he will be harmed in his reputation by the innuendo that he consciously or unknowingly married a woman of low virtue. This statement is not defamatory per se, as to Bert and he will have to show some special damages. Likewise, he must show that the statement is false.

Catherine’s Claim of Defamatiom

Of course, the statement that “Bert’s wife, Catherine, is a sl**,” if false, is defamatory per se as to Catherine. She need not show any special damages.

Invasion of Privacy

Al’s claim

Al may claim invasion of privacy on two grounds: (1) public disclosure of private facts; and (2) publicity placing in him in a false light to the public. Concerning the first, one who gives publicity to a matter concerning the private life of another is subject to liability to the other for invasion of his privacy, if the matter publicized is of a kind that (a) would be highly offensive to a reasonable person, (b) is not of legitimate concern to the public, and (c) is publicized without permission. Al will argue that the details of his relationship with his mother constituted private facts, the disclosure o f which was highly offensive, and not of legitimate concern to the public. We have no reason to believe that Al is a public figure, so generally speaking, his relationship with is mother indeed would be a private matter.

As to Al’s second ground for invasion of privacy: Giving publicity to a matter concerning another that places the other before the public in a false light is an invasion of privacy, if (a) the false light in which the other was placed would be highly offensive to a reasonable person, and (b) the actor had knowledge of or acted in reckless disregard as to the falsity of the publicized matter and the false light in which the other would be placed. Al will claim that Delia’s disclosure of his mother’s sentiments about him placed him in a highly offensive false light. However, Delia may not have had knowledge of the falsity of Grandma’s statements. On the other hand, this very lack of knowledge on Delia’s part will work against her. By publishing the statements out of anger and making no attempt to discover whether they were true or not, Delia has acted in reckless disregard of the truth or falsity of the statements. On that basis, she may be held liable.

Bert’s Claim to Invasion of Privacy

Bert’s claim to invasion of privacy on the basis of “false light” is the same as his brother Al’s. Bert’s claim to invasion of privacy on the basis of public disclosure of private facts is also the same as Al’s. But Bert has an additional claim: that the disclosure that Delia is not his biological daughter is an invasion of privacy. This disclosure would be highly offensive to someone wishing to keep it private and is not of legitimate concern to the public. The final element is that the disclosure be made without permission. Since it was Delia who was adopted and Delia who made the disclosure, may she argue successfully that she was entitled to make this disclosure? Answer: Just because Delia was involved in the private facts does not give her a right to disclose it as it affects her parents.

Catherine’s Claim to Invasion of Privacy

Catherine’s claim to invasion of privacy is both a “false light” claim and a “disclosure of private facts” claim. The false light claim is based on the publication of the statements that “Bert’s wife, Catherine is a sl**,” and “I know she had an affair.” Catherine’s “disclosure of private facts” claim is the same as her husband Bert’s.

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Some Final Thoughts on "Did Ancestry Violate Copyright Law?"

September 15, 2007 Craig Uncategorized

I think an analysis of the statutory “fair use” factors can lead to the conclusion that Ancestry.com’s “Internet Biographical Collection” as it was initially set up, did not constitute a fair use of the copyrighted material collected and used.

I think that Ancestry’s IBC probably does not qualify for the system caching “safe harbor” for infringement in the Digital Millennium Copyright Act. Some of Ancestry’s statements about the IBC suggest a certain permanence, not the “intermediate and temporary” caching that the law protects.

I think that issues of “fair use” and DMCA “safe harbor” as they relate to search engine caching have not yet had a full examination by the courts. I think that reliance on the few decided cases leaves a great deal of uncertainty, no matter how much the industry puts an optimistic face on it. I think that the United States Supreme Court will eventually decide these issues. The law yet may turn out to be as the industry wants it, but that’s not where we are today.

The few decided cases on this matter seem to suggest that the copyright holder must take steps to keep the protected content from being collected by the various bots that roam the Internet. In Field v. Google, for example, the court held that Field’s failure to utilize a “no-archive” meta-tag was the basis on which the court could find that Field had given Google an “implied license” to use his copyrighted content. This holding either turns the law on its head or shows how different copyright law is from other law or is an example of judicial value imposition.

Here’s what I mean by the last sentence above. To say that a web publisher gives an implied licence to anyone who wants to take protected content if the publisher fails to use certain meta-tags or other technical means is akin to saying that one gives an implied license to a burglar if one’s door isn’t locked. That turns the law on its head. Or perhaps that’s just how different copyright law is.

Actually, I think it’s the third thing: judicially imposed values. By this I mean that judges have decided that there are salutary purposes served by the practices of companies like Google and that to enjoin them would constrain the economic growth of the Internet. This can be seen by the recitation by the courts of the “socially important purposes” served by Google, for example. [See Field v. Google, Inc., 412 FSupp2d 1106, 1119 (D.Nev. 2006)] In the nineteenth century, courts took a doctrinally similar approach to the development of law concerning railroads. Philosophically, I may agree with the notion that the law shouldn’t hinder the development of the Internet, but some of the questions about how the law operates with respect to the Internet, are for the Congress, and not judges to decide. That’s especially so when it appears that the judges got the intent of Congress wrong in the first place. [See the discussion of the DCMA in the post yesterday.]

===>So did Ancestry’s IBC violate copyright law? Well, lawyers are infamously cautious . . . . If I were advising Ancestry [which I am not] and sticking to a careful reading of the law, I would tell them to take the IBC back the drawing board, because I would not be comfortable with the infringement risk that they took. It looks to me like they collected and archived and made avail to third parties content owned by other publishers. I would tell them not to rely on the Field case, the Parker case, or the Kelly case. I might tell Google the same thing were I advising them [which I'm not]. Lindsay said in the comments the other day:

Google is very analogous to an ISP in that it is not in the content business. Ancestry on the other hand is taking content for the purpose of publishing it on their own site. One is a side effect of providing search services and has other uses, the other is appropriation for the purpose of publishing.

As to Google’s search engine, I think this is true.

====>Must content owners utilize meta-tags and “robot.txt” files to avoid giving an implied licence? [What follows is opinion, not legal advice] I know that an unlocked door is no defense to a burglar, but I still lock my doors. The problem is that the burden of using these technical tools is, in many cases, fairly minimal, whereas the courts believe the burden on the service provider like Google to communicate with each publisher is substantial, if not insurmountable. Now some content owners do not necessarily have access to the page source to insert such code,; they may have to ask their web-hosting services to help them out. If they won’t, get another host. Now I happen to believe that the Supreme Court may modify this emerging rule to some extent, but until they do, perhaps “safe rather than sorry” is a good idea.

====>Does Ancestry’s Terms and Conditions of Use protect it in this matter? I think not.

====>What is the significance of “notice” of the MyFamilyBot? At some point, Ancestry.com added the following page to its site:

The MyFamilyBot Information Page:

What is MyFamilyBot? Why is it accessing my files?:

MyFamily is creating an index based on a powerful person-based biographical ranking engine that gives superior results over searches done using the more general purpose internet search engines. Ancestry.com indexes the biographic text and provides a search service that points users back to the originating website.

MyFamilyBot is the name of a web crawler (a.k.a. robot, spider) used by MyFamily.com to find biographical text on the Internet in connection with this engine. The crawler works by deeply crawling sites that contain biographical text. We have constructed the bot to limit its affect on site usage to be within the range of that of the large commercial search engines. Sites that do not contain biographical text are examined in a superficial manner.

How do I prevent MyFamilyBot from crawling my site?
MyFamilyBot supports the Internet standard protocols for restricting spiders from crawling web sites. These protocols are described here:
http://www.robotstxt.org/wc/exclusion.html

How can I contact someone concerning MyFamilyBot?
Please send questions and concerns about MyFamilyBot to SearchBot@MyFamilyInc.com.

I have no idea when this page was added and I’m still not sure how to access it on the Ancestry.com site. (Ironically, I used Google’s cache to find it). Some may believe that this page constitutes some sort of notice to Web publishers who thereupon should have put into place the well-known protocols for preventing “MyFamilyBot” from crawling their site. I don’t agree with this for a variety of reasons. First, I’m concerned about the adequacy of the notice. Second, the reasons I gave above apply here. This would continue to turn property law upside down.

CONCLUSION: Ancestry did the right thing by removing the IBC. They were in a fog of legal uncertainty. And more importantly, the rather surreptitious manner in which they established the IBC breached faith with their membership and the rest of the genealogical community. The legal issues ultimately will be resolved the by the United States supreme Court. The ethical and social issues can only be worked out if Ancestry reaches out to the community and engages the community in a genuine effort to close the breach. They’ve got some work to do on that issue. Now’s the time to start.

Part 1
Part 2
Part 3
Part 4

Notice: The information in this writing is intended for educational use only and is not intended nor should it be construed as legal advice. If you have a legal problem, consult a lawyer admitted to practice in your state of residence. I am an active member of the bar of the State of California and am admitted to practice before the United States Supreme Court and various other federal courts. I am not licensed to practice in any other state. I am not presently soliciting or accepting new clients in the matters discussed above.

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Did Ancestry Violate Copyright Law?. . . . It Depends. . . .Part 4 of 4

September 13, 2007 Craig Uncategorized

Here are some important observations before we go on:

(1) Ancestry’s IBC is operationally unlike Google’s search engine. “Fair use” and direct infringement cases are highly fact-specific.

(2) Whether Google’s search engine is or is not “fair use” has yet to be considered adequately
by a court because:

  1. The Field case involves unique facts (i.e., the plaintiff “set up” Google to get money from them.
  2. The Parker case relies to some extent on the Field case. The U.S. Third Circuit Court of Appeals affirmed the trial court in Parker, but ordered that its decision not be published. This means that it cannot be relied upon as precedent by other courts. It also may signal that the Court of Appeals does not have full confidence in the decision.

I do not agree that the Field case “clears away copyright questions that have troubled the entire search engine industry,” as an attorney with the Electronic Frontier Foundation said.

[For the record, I am not a Google-basher. I like Google. While we're at it, I generally like Ancestry.com, too, and I use it frequently. But I was angry to discover my content on their IBC.]

(3) It is possible that Ancestry.com, Google, or somebody else, could set up a genealogy-specific search engine that would “fairly use” both links and a cache of copyright-protected Web sites.

Now back to our series.

The Digital Millennium Copyright Act

In 1998, the Congress enacted the Digital Millennium Copyright Act (DCMA). There are a number of aspects to this statute, but here, the relevant matter is in Title II of the Act, which is known as the “Online Copyright Infringement Liability Limitation Act.” This part of the law creates limitations on the liability of online service providers for copyright infringement when engaging in certain types of activities. I discuss it here because the court in Field v. Google discussed it and several commenters have mentioned it.

Section 512(b) of the Act provides the so-called system caching “safe harbor” for online service providers. An online service provider is not liable for for infringement of copyright by reason of the “intermediate and temporary storage of material on a system or network controlled or operated by or for the service provider” in certain circumstances. Those circumstances are where:


(A) the material is made available online by a person other than the service provider;
(B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person; and

(C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to the material from the person described in subparagraph (A), if the conditions set forth in paragraph (2) are met.


Before we go onto paragraph (2), let’s examine the portions above. First, the cache must be “intermediate and temporary.” In Field v. Google cache , the court had evidence before it that Google stored material for 14 to 20 days. Relying on a case called Ellison v. Robertson, 357 F.3d 1072, 1081 (9th Cir. 2004), involving AOL, the Field court held that 14 to 20 days was “intermediate and temporary.”

We don’t know how long Ancestry planned to keep material in its cache. There are hints in the company’s statements that can be interpreted to suggest a temporary cache and hints that suggest a longer storage. I would suggest that 14-20 days is probably on the outer limits of the plain meaning of “intermediate and temporary.” Certainly, if Ancestry intended to keep material in its cache longer than that, they would not qualify for the infringement liability “safe harbor.”

Now here’s the analysis of the rest of paragraph (1):


(A) the material is made available online by a person other than the service provider;

This provision is met when the copyright holder posts his or her content online. The content owner is “a person other than the service provider.”


(B) the material is transmitted from the person described in subparagraph (A) through the system or network to a person other than the person described in subparagraph (A) at the direction of that other person;

This means that the copyrighted content is accessed by someone other than the copyright owner from the copyright owner. Note that this provision suggests a very temporary caching, because the caching takes place when the content is accessed by a user from the content provider’s site. In Field, the court got this wrong. The court described Google, the service provider, as the “other person.” If Congress had intended the service provider to be “the other person,” Congress would have said so.

The point here is that to take advantage of the safe harbor, Ancestry would have to cache the material temporarily as it was being transmitted between content provider and content user. That’s not how they described what they were doing. Further evidence of my point is in subparagraph (C):


(C) the storage is carried out through an automatic technical process for the purpose of making the material available to users of the system or network who, after the material is transmitted as described in subparagraph (B), request access to the material from the person described in subparagraph (A) . . . .


A leading copyright expert says about this provision:

Thus, the literal language of Section 512(b) appears not to cover “advance” caching, in which material is copied into a cache for anticipated requests for it, rather than upon the first actual request for it . . . .

David L. Hayes, Advanced Copyright Issues on the Internet (2007) [The link is to a 412-page document. The quote is on page 307.]

This interpretation is also borne out by the legislative history of the DCMA. House of Representatives Report No. 105-551, part2, page 52, includes the following:

For subsection (b) to apply, the material must be made available on an originating site, transmitted at the direction of another person through the system or network
operated by or for the service provider to a different person, and stored through an automatic technical process so that users of the system or network who subsequently request access to the material from the originating site may obtain access to the material from the system or network.

Ancestry was doing “advance” caching, which would not protect it from infringement claims under the DCMA.

Recall that the safe harbor also requires that “the conditions set forth in paragraph (2) are met.” Having already found that Ancestry would not qualify for the DCMA safe harbor, we can assume that Ancestry would meet the other requirements without changing the result.

A careful reading of the DMCA leads to the conclusion that Ancestry’s IBC would not be safe from infringement claims under the Copyright Act.

Having spent a considerable amount of time on this, I need to take a day off. I meant this to be a four-part series, but so many good questions have been raised in the comments that I will answer (many of them, if not all) in one more post on Friday. Then I’ll get back to being a genealogist in this space.

COMING ON FRIDAY: Some Final Thoughts

Notice: The information in this writing is intended for educational use only and is not intended nor should it be construed as legal advice. If you have a legal problem, consult a lawyer admitted to practice in your state of residence. I am an active member of the bar of the State of California and am admitted to practice before the United States Supreme Court and various other federal courts. I am not licensed to practice in any other state. I am not presently soliciting or accepting new clients in the matters discussed above.

6 comments , ,

Did Ancestry Violate Copyright Law? . . . . Part 3of 4: Fair Use

September 12, 2007 Craig Uncategorized

We’ve explored the Field v. Google, Inc., case thus far and learned about the facts of that case and some of the holdings. A number of commenters have insisted (and still insist) that because the court found Google’s caching to be “fair use,” the same result would obtain with respect to Ancestry’s Internet Biographical Collection.

I do believe that the matter of “fair use” is the most important issue in the analysis. But, I’ve said here that these cases are highly fact-specific. So before we get to the fair use analysis, let’s take a look at some of the factual matters that various commenters have raised since we started this series.

Janice said:

I do have two comments. I’m not sure it changes things in a legal sense, but Ancestry also provided an option (to subscribers only, and even after IBC became “free”) to click and save the cached page to their “Shoebox”–a holding area of documents that subscribers are interested in.

Also, the initial Ancestry.com source description calls the IBC a “database-online,” not a search engine (I have a screen shot of that if you need it).

Jeff Scism said:

Ancestry through a spokesperson clearly stated what the intent was initially, “the websites have VALUE. And even if the site owners were to remove the contents, the pages would remain available through Ancestry.com”

That indicates to my simple mind that, since only paying customers had original access, that Ancestry had premeditated their intent to take and sell the content, despite what the site owners decided to do with their creations. Their obvious attempt to actually hide the source pages at first and only provide a sanitized copy of the data- removing source website info, and identifying graphics, and copyright notices, shows that the intent was to steal and sell the content.

Another issue not addressed is that Family Tree maker, a genealogy program they sell, still has this search built in, and provides the data directly for merging into your family file, sourcing it as Ancestry’s collection, and no direct reference to the authors.

And Ancestry said on August 28, 2007:

Ancestry.com just added the Internet Biographical Collection which is a compilation of genealogy information across the web.

I also recommend that you check out the comments on Dick Eastman’s blog here and here.

Now, on to “Fair Use.”

“Fair Use” is a limitation on the exclusive rights of a copyright owner. It’s contained in section 107 of the Copyright Act. [Title 17, United States Code]. The Act says that use “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research is not an infringement of copyright .” The United States Supreme Court has stated that the statute “calls for case-by-case analysis.” [Campbell v. Acuff-Rose Music, Inc., 510 US 569 (1994)]. In that respect, a court must analyze at least four factors:

(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted
work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted
work.

Factor 1: Purpose and Character of the Use

In the case of Campbell v. Acuff-Rose Music, Inc., the Supreme Court said about this first factor of the “fair use” analysis:

The enquiry here may be guided by the examples given in the preamble to § 107, looking to whether the use is for criticism, or comment, or news reporting, and the like . . . . The central purpose of this investigation is to see . . . whether the new [use] merely “supersedes 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” . . . . [510 US at 578-579]


The Field court looked to a case decided by the U.S. Ninth Circuit Court of Appeals to understand how to apply this “transformative” rule. (As a trial court within the Ninth Circuit, which covers the Far West, the federal district court in Nevada is obligated to follow the precedent of the Ninth Circuit Court of Appeals).

The case which the court followed is called Kelly v. Arriba Soft Corp., 336 F3d 811 (2003). In that case, the appeals court held that the use of copyrighted images that were displayed on Internet web sites by an operator of a “visual search engine,” which displayed search results as “thumbnail” pictures, was “fair use” of copyrighted images.

But before we jump to any conclusions about Ancestry’s IBC, it’s important to understand why the court came to that conclusion in the Kelly case.

Arriba, now known as “Ditto.com,” developed a computer program that “crawls” the web looking for images to index. This crawler downloads full-sized copies of the images onto Arriba’s server. The program then uses these copies to generate smaller, lower-resolution thumbnails of the images. Once the thumbnails are created, the program deletes the full-sized originals from the server. Although a user could copy these thumbnails to a computer or disk, the user cannot increase the resolution of the thumbnail; any enlargement would result in a loss of clarity of the image.

The court found Arriba’s use of Kelly’s photographs to be “transformative,” that is, Arriba’s use “added a further purpose or different character” to the photographs. The court said:

Kelly’s images are artistic works intended to inform and to engage the viewer in an aesthetic experience. His images are used to portray scenes from the American West in an aesthetic manner. Arriba’s use of Kelly’s images in the thumbnails is unrelated to any aesthetic purpose. Arriba’s search engine functions as a tool to help index and improve access to images on the Internet and their related web sites. In fact, users are unlikely to enlarge the thumbnails and use them for artistic purposes because the thumbnails are of much lower-resolution than the originals; any enlargement results in a significant loss of clarity of the image, making them inappropriate as display material. [336 F3d at 818].

The court observed that Arriba’s thumbnails of Kelly’s photographs “are not used for illustrative or artistic purposes and therefore do not supplant the need for the originals.” [336 F3d at 820]

The question now is whether, using this reasoning, Ancestry’s use of others’ content in its IBC was “transformative.” I would note first that, unlike Arriba with respect to Kelly, Ancestry is in the same field of endeavor as are the copyright owners whose material was used in the IBC. Ancestry’s purposes seem to have been the same as that of the content owners. Ancestry initially described the IBC as a “collection,” not a search engine. It would thus appear that Ancestry simply intended to make available on its genealogical site, initially for a fee, the exact same content owned by others. Unlike the “thumbnails” of “much lower-resolution than the originals” in Kelly’s case, the entire content of any collected site was available in the IBC. In other words, Ancestry’s use merely superseded that of the content owners. This is not a transformative use.

It cannot be said that either Field or Kelly, either individually or taken together, endorsed as “fair use” anything denominated a “search engine.” Again, the determination of “fair use” is fact-specific. For example, Google’s search engine operates somewhat differently than did Arriba’s. Along these lines, it is not at all clear that the IBC operated, or was intended to operate, like Google’s or Arriba’s search engines. The term “search engine” in reference to the IBC did not appear until after the controversy erupted.

For another example, is Google Books merely a “search engine”? I think as it was originally conceived, it was more of an electronic library than a search engine. Hence, the concern by publishers. But, as it now operates, Google Books is a bit of both search engine and electronic library. With respect to certain items now beyond copyright protection (those for which the user gets “Full View”), the electronic library aspect is fully operational. With respect to those items given the most protection (those for which the reader is given only a “Snippet”), Google Books is almost entirely a search engine. In the full electronic library mode, Google’s use clearly supersedes that of the original content creator.

Ancestry’s IBC, as we originally understood it, was more like Google Books than like Google’s “simple” search engine.

The court also considered the commercial use of Kelly’s work:

While such use of Kelly’s images was commercial, it was more incidental and less exploitative in nature than more traditional types of commercial use. Arriba was neither using Kelly’s images to directly promote its web site nor trying to profit by selling Kelly’s images [336 F3d at 818]


These do not seem to be the facts of Ancestry’s use, especially when the content was behind their paid subscriber wall.

Factor 2: Nature of the Copyrighted Work

The second statutory factor, “the nature of the copyrighted work,” draws on the value of the materials used. Works that are creative in nature are closer to the core of intended copyright protection than are more fact-based works. [Kelly v. Arriba, 336 F3d at 820]. The court found Kelly’s work to be creative, as would be found as to the content collected by Ancestry for the IBC.

The court also said that the fact that a work is published or unpublished also is a critical element of its nature. Published works are more likely to qualify as fair use because the first appearance of the artist’s expression has already occurred. [Kelly v. Arriba, 336 F3d at 820] The court found that these two elements caused this factor to weigh in favor of Kelly, but only slightly. The same could be said of the content included in the IBC. All of it had appeared on the Internet before it appeared in the IBC.

Factor 3: Amount and substantiality of portion used.

In Kelly v. Arriba, the court said:

While wholesale copying does not preclude fair use per se, copying an entire work militates against a finding of fair use. However, the extent of permissible copying varies with the purpose and character of the use. If the secondary user only copies as much as is necessary for his or her intended use, then this factor will not weigh against him or her. [336 F3d at 820-821]

The IBC seems to have copied the entirety of the works collected for the IBC. But what is the extent of permissible copying in light of the purpose and character of use in this situation?

In Field v. Google, the court said:

. . . Google’s use of entire Web pages in its Cached links serves multiple transformative and socially valuable purposes. These purposes could not be effectively accomplished by using only portions of the Web pages. Without allowing access to the whole of a Web page, the Google Cached link cannot assist Web users (and content owners) by offering access to pages that are otherwise unavailable. Nor could use of less than the whole page assist in the archival or comparative purposes of Google’s “Cached” links. Finally, Google’s offering of highlighted search terms in cached copies of Web pages would not allow users to understand why a Web page was deemed germane if less than the whole Web page were provided. Because Google uses no more of the works than is necessary in allowing access to them through “Cached” links, the third fair use factor is neutral, despite the fact that Google allowed access to the entirety of Field’s works. [412 FSupp2d at 1121]

The Field court’s reasoning might apply to Ancestry’s IBC if the IBC had the same function and functionality as Google’s search engine. And it’s not clear that the IBC operated like Google’s search engine. Ancestry could have copied only a”snippet” of the collected IBC works and included a link to the original and still have accomplished a worthy purpose–much like Google Books does.

Factor 4: The Effect of the Use upon the Potential Market for or Value of the Copyrighted Work

The Kelly court said:

This last factor requires courts to consider “not only the extent of market harm caused by the particular actions of the alleged infringer, but also ‘whether unrestricted and widespread conduct of the sort engaged in by the
defendant … would result in a substantially adverse impact on the potential
market for the original.’ ” [336 F3d at 821, citing Campbell v. Acuff-Rose Music, Inc.]

There are several potential markets for the content collected in the IBC. Many of the content owners sell advertising space on their sites. Ancestry obviously found the content valuable enough to initially place it behind their paid subscriber wall; a content owner could license their content to some potential competitor of Ancestry’s, like World Vital Records, for example. It could be reasonably said that Ancestry’s actions could harm the potential market for the content owners’ products. Some portion of the potential audience for the content would find it first at Ancestry’s site and because of the way it initially was set up at the IBC, that audience would find no need to go to the original site. And this is particularly so if, as alleged by one of the commenters, Ancestry has linked the IBC to the Family Tree Maker software.

Based on the foregoing analysis of the cases, a court could find that Ancestry’s use was not a “fair use.”

Here are several points to keep in mind:

(1) What’s said above is based on the premise that Ancestry’s IBC is not like Google’s search engine. For example, as far as we know, the IBC did not include a statement on “cached” pages that the user is viewing only a cached page. (Later, of course, Ancestry added links to the original pages). I think the two things may be factually distinguishable.

(2) Field should not necessarily be relied upon, because it’s the classic example of bad facts making bad law. That is to say, to take a general rule out of that case is a bad idea because the facts are so unique and egregious.

(3) There are a lot of facts about the IBC that remain known only to Ancestry. Some of those facts may help them; some may hurt them.

(4) Nobody, not a lawyer, not the Copyright Office, nobody but a court can finally settle what is or is not “fair use.”

I’m going to move our discussion of the Digital Millennium Copyright Act to tomorrow’s post. In that post, I’ll also address some issues that have come up in the Comments and share some thoughts on copyright protection.

3 comments , , ,

Part 3 of Legal Analysis Temporarily Delayed

September 11, 2007 Craig Uncategorized

It’ll be here later today. I have to add a few things and I got busy with my first priority–my students!

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Did Ancestry Violate Copyright Law? . . . . Part 2 of 4

September 9, 2007 Craig Uncategorized

Before we get to the heart of the legal analysis, here are some additional facts which may be legally significant. They were provided in the Comments to yesterday’s post by Janice Brown of Cow Hampshire. Janice first called my attention to this issue in late August.

Ancestry also provided an option (to subscribers only, and even after IBC became “free”) to click and save the cached page to their “Shoebox”–a holding area of documents that subscribers are interested in.

Also, the initial Ancestry.com source description calls the IBC a “database-online,” not a search engine . . . .

Janice is correct about these additional facts and we will analyze their legal significance.

Janice also writes:

Also, there were several people who argued in commentary on various blogs and message boards that we, as bloggers and web sites owners, should have known that Ancestry would be doing this, due to various announcements and press releases they made, and the burden was on each of us to place a robots.txt file or some sort of HTML coding to prevent Ancestry.com from caching our sites. Is the burden truly on the blogger or web site owner, even if they are not commercial (i.e., the “mom and pop” web sites and blogs).

We’ll explore what the courts have to say about this issue as well. At the end of the series, I’ll have some suggestions for copyright owners.

I should point out to all readers that this remains an unsettled and evolving area of law; this ride may prove a bit frustrating at times. Now on with the show . . . .

Field v. Google, Inc., 412 FSupp2d 1106 (D.Nev. 2006) [the link is to a PDF version of the court's Order], is the case that was cited by most commentators and bloggers concerning the Ancestry IBC issue. They opined that the outcome of that case likely would dictate the rule of law applicable to the IBC issue. My preliminary reaction was that since Field is a decision of a trial court, the lowest level of the federal judiciary, no other court is obligated to follow it; and second, there are some unique facts in this case that may have had an influence on the outcome.

Blake Field is a lawyer in Nevada. He’s also a poet. Field was familiar with Google’s search and caching processes. With this knowledge, according to the court, “Field decided to manufacture a claim for copyright infringement against Google in the hopes of making money from Google’s standard practice.” [412 FSupp2d at 1113]. In January 2004, Field created fifty-one works and put them on a website, accessible for free. He also created a “robots.txt” file for his site because he wanted search engines to visit his site and include the site within their search results. The court notes that “Field knew that if he used the ‘no-archive’ meta-tag on the pages of his site, Google would not provide “Cached” links for the pages containing his works.” [412 FSupp2d at 1114] So, he consciously chose not to use the “no-archive” meta-tag on his Website.

As Field intended and expected, the “Googlebot” visited his site, and indexed and cached its pages. Thereafter, each of Field’s pages was retrieved from Google’s cache by some individual or individuals.

Field sued Google for copyright infringement. “Field allege[d] that Google directly infringed his copyrights when a Google user clicked on a “Cached” link to the Web pages containing Field’s copyrighted works and downloaded a copy of those pages from Google’s computers.” [412 FSupp2d at 1115; emphasis added] Field did not allege that Google infringed his copyrights when the Googlebot initially copied his pages and stored then in the system cache.

Following established legal precedent, the court pointed out that for copyright infringement, a plaintiff must show ownership by the plaintiff, and copying by the defendant. Furthermore, the copying must the result of a volitional act on the part of the defendant. [CoStar Group, Inc. v. LoopNet, Inc., 373 F.3d 544, 555 (4th Cir.2004)].

Applying the law to the facts, the court ruled in favor of Google. The court said, “[W]hen a user requests a Web page contained in the Google cache by clicking on a ‘Cached’ link, it is the user, not Google, who creates and downloads a copy of the cached Web page. Google is passive in this process.” [412 FSupp2d at 1115] In other words, the court found no volitional act on the part of Google when a user accesses its system cache.

There’s more to the Field case, certainly. And certainly, it doesn’t answer questions such as whether the user can be sued for copyright infringement; whether Google is liable for infringement for the actions of its bot; and others. But let’s stop here for a moment and examine how the law would apply to Ancestry.

Presumably, the path leads in the same direction. That is, when a user clicked on the relevant link in the IBC, Ancestry would be “passive” in that process and thus there would be no infringement by Ancestry when users requested information from the IBC.

But a couple of facts seemed important to the court in reaching this conclusion. First, the court pointed out that pages retrieved from Google’s cache contain a “conspicuous” disclaimer that the cached page is not the “original” and that there are two separate links to the current page. It is not clear, or certainly was not clear at the outset, that Ancestry’s IBC would operate in that manner. Second, the court examined the purposes of Google’s cache. For example, “Google’s ‘Cached’ links allow users to view pages that the user cannot, for whatever reason, access directly.” As to the IBC, while it was behind Ancestry’s paid subscription wall, this was true only for paid subscribers. Additionally, Google’s cache enables users to determine how a Web page may have been altered over time as well as to determine more quickly whether and where a search query appears and thus whether the page is germane to the user’s query. It is not at all clear that Ancestry’s IBC would operate in this manner. Recall that Ancestry began calling it a “search engine” only after the negative initial response. We do not now know Ancestry’s true intent at the outset of this project or what would have happened had they chosen to press ahead despite the negative reaction. [These are matters that we might be able to discover through various procedures if litigation had been commenced].

Back to the Field Case: Google asserted several defenses to Field’s claim. First, Google asserted that Field had granted it an implied license to use his content. The law on this matter is that a copyright owner may grant a nonexclusive license expressly or impliedly through conduct. Melville B. Nimmer & David Nimmer, Nimmer On Copyright, vol. 3, section 10.03[A] (1989) An implied license can be found where the copyright holder engages in conduct from which the other party may properly infer that the owner consents to his use. The United States Supreme Court endorsed this rule in the 1927 patent case of De Forest Radio Telegraph & Telephone Co. v. United States, 273 U.S. 236. Consent to use a copyrighted work may be based on the copyright holder’s silence where the copyright holder knows of the use and encourages it.
Recall that Field knew that had he placed a “no archive” meta-tag on the pages of his Web site, Google would have known not to display “Cached” links to his pages. Nonetheless, Field specifically chose not to include the no-archive meta-tag on his site, knowing that Google would interpret this absence as permission to allow access to the pages via “Cached” links. The court said: “Thus, with knowledge of how Google would use the copyrighted works he placed on those pages,and with knowledge that he could prevent such use, Field instead made a conscious decision to permit it. His conduct is reasonably interpreted as the grant of a license to Google for that use.” [412 FSupp2d at 1116]

Does this ruling in the Field case mean the burden is always on the copyright holder to preemptively fend off those crawling or scavenging the Web for copyrighted material? Consider that the inclusion of a “no archive” meta-tag or the appropriate “robots.txt” file is relatively simple for the content owner while as the court said “Given the breadth of the Internet, it is not possible for Google (or other search engines) to personally contact every Web site owner to determine whether the owner wants the pages in its site listed in search results or accessible through ‘Cached’ links.” [412 FSupp2d at 1112]

On the other hand, a copyright owner should have the right to choose which “distributors” or search engines the copyright owner wishes to grant a license. This would require knowledge of the use to which the other party intended to make of the copyright holder’s content, as the Field court said. In the case of Ancestry’s IBC, no content owner knew in advance that Ancestry would make such use of their content.

On this last point, some have referred to The Generations Network’s Terms and Conditions, specifically this provision:

User provided content
Portions of the Service will contain user provided content, to which you may contribute appropriate content. For this content, Ancestry is a distributor only. By submitting content to Ancestry, you grant MyFamily.com, Inc., the corporate host of the Service, a license to the content to use, host, distribute that Content and allow hosting and distribution of that Content, to the extent and in that form or context we deem appropriate. Should you contribute content to the site, you understand that it will be seen and used by others under the license described herein. You should submit only content which belongs to you and will not violate the property or other rights of other people or organizations. MyFamily.com, Inc. is sensitive to the copyright of others.

In my view, nothing in that provision puts one on notice that Ancestry.com would use robots to crawl the Web in a manner similar to Google or other search engines. Indeed, the choice of the verbs “submit” and “contribute” suggest more than a passive or silent consent to use content.

Recall that Mr. Field set out to get Google to use his content so he could sue them for infringement!

But, one additional point on the responsibility of content owners to protect their content: the court points out that the use of meta-tags has been an industry standard “for years.” I can see a court in a future case using this fact to hold Web publishers responsible to protect their content by communicating their preferences to Web crawlers.

The “Estoppel” Defense: Google put forth (successfully) a defense to copyright infringement known as “estoppel.” This means that: (1) the content owner knew of the allegedly infringing conduct; (2) the content owner intended that the alleged infringer should rely on the content owner’s conduct or acted in such a way that the alleged infringer had a right to believe it was so intended; (3) the alleged infringer was ignorant of the true facts; and (4) the alleged infringer relied on the content owner’s conduct to its detriment.

Put plainly, this means, for example, that the content owner acted in a manner to lead the alleged infringer to believe that the content owner did not object to the alleged infringing conduct and in reliance on that, the alleged infringer went ahead with the conduct.

In the Field case, the success of this defense has much to do with Mr. Field’s (dishonest) conduct. But this defense could succeed where there is no dishonest conduct. For example, this morning, I discovered a rather new site called Blogoholix. It purports to be a “blog search engine.” There is a note on the main page which says “es.blogoholix.com is a blog search engine in development. The tech and design work is still in progress, so please send an e-mail to info@blogoholix.com if you have any suggestions on how to improve the site.” I found GeneaBlogie on that site. Suppose with that knowledge and the knowledge that I can prevent my blog from showing there, I do nothing, and the owner of that site continues to crawl my blog. I think a court following the Field reasoning would say that my silence is conduct that they are entitled to rely upon.

Well, that may be enough law for today. Tomorrow in Part 3, we’ll explain fair use and the Digital Millenium Copyright Act. In Part 3, we’ll take a very specific look at Ancestry’s IBC. After that, we wrap this up with Part 4 and some conclusions and suggestions.

Part 1 can be found here.

TOMORROW: Fair Use and The Digital Millenium Copyright Act Meet Ancestry.com

Notice: The information in this writing is intended for educational use only and is not intended nor should it be construed as legal advice. If you have a legal problem, consult a lawyer admitted to practice in your state of residence. I am an active member of the bar of the State of California and am admitted to practice before the United States Supreme Court and various other federal courts. I am not licensed to practice in any other state. I am not presently soliciting or accepting new clients in the matters discussed above.

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