Ex©lusive Rights

I thought it’d be worthwhile do revisit the DMCA portion of the order in Facebook v. Power Ventures that we discussed a couple of days ago. There is a lot going on in the DMCA analysis that, upon further reflection, deserves more discussion. To review, Facebook brought suit against Power Ventures for offering a website that would ask a user for her Facebook login. Power Ventures would then scrape the user’s content from Facebook, allegedly along with some of Facebook’s content, and redisplay it on Power Ventures’ site.

Our last discussion of the order addressed the difference between copyright infringement and a claim for copyright infringement under the Copyright Act. 17 U.S.C. 102 extends protection to original works that are fixed in a tangible medium. An author, however, cannot bring a claim for copyright infringement until she registers her copyright. And her infringement claim is only as broad as her registration.

To use the present case as an example, Facebook operates a large site that is constantly being amended. Power Ventures may have infringed a great deal of content on Facebook’s website, but if it wasn’t covered under the registration upon which Facebook based its claim, Power Ventures cannot be found liable. Facebook is, of course, able to file a new registration for the updated site and bring a new claim, but it wouldn’t have a full set of remedies available.  To receive statutory damages, an author must register her copyright before infringement occurs, or within the first three months of publication.

The DMCA:

Now does the same thing hold true for a DMCA violation?  Must an author register a work underlying a DMCA violation before it can bring a claim? The answer appears to me to be no. 17 U.S.C. 1201 (”Circumvention of copyright protection systems”) states as follows: “(1) (A) No person shall circumvent a technological measure that effectively controls access to a work protected under this title . . .” The language of Section 1201 tracks the language of 17 U.S.C. 102, which as noted above, extends copyright protection to “original works of authorship fixed in any tangible medium of expression.” The registration provision of the Copyright Act, 17 U.S.C. 411, also only explicitly applies to “action[s] for infringement,” not violations of the DMCA.

What should we take away from this? DMCA claims can be, and often are, more broad than the copyright infringement claims that are pleaded in the same complaint. Facebook’s infringement claim only extends as far as its registration, which if the registration’s title “Facebook homepage” is any indication, only encompass the site’s homepage. Facebook’s DMCA claim can encompass all of the material of sufficient originality on Facebook’s website.

User Generated Content

As best as I can tell, the Court found that Power Ventures was potentially liable for a DMCA violation in regards to both user content and Facebook’s content; that Power Ventures would be liable for a DMCA violation if Facebook could prove that the company offered a tool to circumvent a technological measure to reach user content. If this was indeed the holding there are some clarifications in order.  The Court cited Chamberlien Group, Inc. v. Skylink Techs, Inc. for the prima facia test for a DMCA violation:

The elements necessary to state a claim under the DMCA are (1) ownership of a valid copyright; (2) circumvention of a technological measure designed to protect the copyrighted material; (3) unauthorized access by third parties; (4) infringement because of the circumvention; and (5) the circumvention was achieved through software that the defendant either (i) designed or produced primarily for circumvention; (ii) made available despite only limited commercial significance other than circumvention; or (iii) marketed for use in circumvention of the controlling technological measure. See Chamberlain Group, Inc. v. Skylink Techs, Inc., 381 F.3d
1178, 1203 (Fed. Cir. 2004).

Facebook’s terms of use were explicit that a user only granted Facebook a non-exclusive license,  and did not assign a copyright in her work to the site. Provided that you accept the test from Chamberlien for liability under the DMCA, Facebook’s claim of a violation for circumvention of a technology measure to reach user content can’t stand.  Facebook didn’t possess “ownership of a valid copyright” in the user content and does not satisfy the first prong of the Chamberlien test.