Archive for September, 2008

Court Requires That You Consider Fair Use Before Sending A DMCA Takedown Notice

A judge has ordered in the Lenz v. Universal Music that copyright owners must consider whether an unauthorized use of a copyrighted work qualifies as fair use before sending a “DMCA takedown notice.”  A takedown notice is used by copyright owners to ask Internet Service Providers (ISP) to remove their materials that have been posted without permission.


Enacted in 1998, the Digital Millennium Copyright Act (DMCA) implemented treaties signed at the 1996 World Intellectual Property Organization (WIPO) Geneva conference.  It addresses many issues, one of which affects copyright owners directly. The DMCA states that while an ISP is not liable for transmitting information that may infringe a copyright, the ISP must remove materials from users’ websites that appear to constitute copyright in­fringement after it receives proper notice. The letter you send is called a “DMCA takedown notice.”  The ISP is required to make its agent’s name and address available so that you can send them notification.  Your copyright does not have to be registered with the U.S. Copyright Office for you to take advantage of this DMCA provision.



In the Lenz case, the plaintiff sued Universal Music for claims resulting from Universal’s sending a DMCA takedown notice for a video posted on the Internet by Lenz.  Lenz had posted a video of her toddler son dancing to Prince’s song, “Let’s Go Crazy,” on YouTube.  Counsel for Universal Music sent YouTube a DMCA takedown notice claiming that the video infringed its copyright in the music. YouTube complied and notified Lenz about the takedown. Lenz sent a counter-notification and the site put the video back up about six weeks later.



Lenz claimed that her video did not infringe Universal’s copyright because it was fair use.  The Lenz court held that a copyright owner must consider whether an unauthorized use of a copyrighted work qualifies as fair use before sending a DMCA takedown notice.  Although Universal Music argued that fair use is difficult to determine, the court found that to not be an excuse.


Clearly, the DMCA statute requires that a takedown notice include:

(i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

 (ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site.

(iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be   disabled, and information reasonably sufficient to permit the service provider to locate the material.

 (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.

 (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law.

(vi) A statement that the information in the notification is accurate, and under penalty of penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

17 U.S.C. Section 512(c)(3)(A) (emphasis added). The Lenz court focused on the 5th requirement for its finding at issue here.
So what is a copyright owner to do when fair use is a tough call even for lawyers? Review the law as to what comprises fair use. Check this article on fair use to help. But as long as you have a good faith belief that the infringement is not fair use, you should be protected in your demand that infringing materials be removed from a website.

For more information, please contact Carolyn Wright at (404) 633-9230.

Workers’ Compensation Liability for Unexplained Falls

Accidents happen both on and off the job.  Sometimes, injuries such as tripping and falling down happen without explanation.  Are those accidents covered by workers’ compensation?

In Georgia, an injury is compensable under workers’ compensation when it satisfies the following three criteria: (1) it is the result of an accident; (2) it arises out of the worker’s employment; and (3) it occurs in the course of employment.  O.C.G.A. 34-9-1(4).  Traditionally, Georgia courts determined if an injury arose out of employment by assessing whether the causative danger was peculiar to the work.  That means that an injury is covered by workers’ compensation if the employment brings an employee “within the range of the danger by requiring his presence in the locale” when the peril occurs, even if any other person present would have been injured regardless of their employment.  However, this doctrine does not apply when the risk causing claimant’s injury is common to the general public and exists without any connection to “place, employment or pursuit.”  National Fire Insurance Co. v. Edwards, 152 Ga.App. 566, 263 S.E.2d 455 (1979).

Trips and falls can happen anywhere.  Sometimes they are a result of a hazard in the area.  Other times, they seemingly occur without explanation.  Under the principle established by the Georgia code and Edwards, an unexplainable fall is not compensable under workers’ compensation even if it occurred in the course of employment if it did not arise out of the employment.  To show that an injury did not arise out of employment, the employer must prove that:    

1.      No rational connection existed between the claimant’s job duties and the fall;

2.      Claimant’s injury did not result from a particular cause;

3.      The hazard that caused claimant’s injury was that of walking, and claimant was equally exposed to this hazard outside of work; and

4.      Claimant did not hit or impact an object specifically related to the work place as part of the fall other than the floor. 

See generallyid.; Borden Foods Co. v. Dorsey, 112 Ga.App. 838, 146 S.E.2d 532 (1965); Davis v. Houston General Insurance Co., 141 Ga.App. 385, 233 S.E.2d 479 (1977); Prudential Bank v. Moore, 219 Ga.App. 847, 467 S.E.2d 7 (1996); and Chaparral Boats, Inc. v. Heath, 269 Ga.App. 339, 606 S.E.2d 567 (2004).

For example, in Chaparral Boats, Inc., the claimant hyper-extended her left knee while walking across her employer’s premises to clock in to work.  Claimant could not show that she tripped or fell over any object.  The injury occurred in the course of claimant’s employment because it took place during a reasonable period of ingress from claimant’s car to the workplace.  Nevertheless, the Court concluded that claimant’s injury resulted solely from walking, and that claimant was exposed to this risk equally apart from work as she was at work.  Thus, an employer is not liable when the employee’s injury does not arise out of the employment. 

For more information, please contact Catherine Dellinger Buckley at (404) 633-9230.

The Importance of Conditions In Your Free License

Copyright owners often allow others to use their work without charge. They usually require a copyright credit for marketing purposes or other restrictions. But if the user doesn’t abide by those requirements, is it copyright infringement?

Such was the issue in the recent case of Jacobsen v. Katzer. There, Jacobsen had developed copyrighted software code for model trains but permitted others to use the software. Jacobsen’s “open source” code included an “Artistic License” that required users of the software to include items such as the authors’ names and Jacobsen’s copyright notices. Katzer admitted that it had not followed these terms when incorporating Jacobsen’s code into its own.

Jacobsen claimed that Katzer’s use of the software without abiding by the terms of the License constituted copyright infringement. Katzer asserted that because it had not paid for the License and only breached “covenants” of the License, it could be liable only for breach of contract, not copyright infringement, likely resulting in fewer damages.

The 9th Circuit sided with Katzer. On appeal, the Court of Appeals for the Federal Circuit disagreed. The appellate court held that the terms of the Artistic License were conditions; without following them, Katzer had no right to use the software code. The Court explained:

The Artistic License states on its face that the document creates conditions: “The intent of this document is to state the conditions under which a Package may be copied.” (Emphasis added.) The Artistic License also uses the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted “provided that” the conditions are met. Under California contract law, “provided that” typically denotes a condition.




Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material. . . . Copyright licenses are designed to support the right to exclude; money damages alone do not support or enforce that right. The choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes rather than as a dollar-denominated fee, is entitled to no less legal recognition.

Of note, the Creative Commons Corp. filed an amicus brief to support Jacobsen’s position because a negative ruling would directly affect CC licensing.

What can we learn from this? Always make the use of your copyrighted works conditioned on following your terms. Further, it’s always best to put your license in writing, even if it’s only an email, so a court will know exactly what were the terms and conditions of your license. Check with your attorney to make sure it’s all done right.

For more information, please contact Carolyn Wright at (404) 633-9230.

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