The IP Update

Jason Camillo of Buchanan Ingersoll & Rooney in Pittsburgh is our new Trade Secrets SLG Chair. Jason has been keeping busy: He’s recently successfully defended four patents related to radiotherapy treatment optimization technology against several inter partes review petitions filed against his client, a U.S. medical company. Putting the shoe on the other foot, he’s also brought several IPRs on behalf of a U.S. software company against a competitor’s patent portfolio, leading to successful settlement. When not at work, he’s busy with two little ones, a two-year-old son and a four-year-old daughter, who have a trip to Disney in their future once normal travel resumes.

And our new Trademark SLG Chair is Kelley Gordon of Marshall, Gerstein & Borun here in Chicago. Back on January 6, when the rest of us were watching events at the Capitol in D.C., Kelley was the co-presenter of a program called “PROTECT YOUR TURF – IP Protection Issues in Landscape/Urban Design” at the University of Florida’s Department of Landscape Architecture & Planning. I guess that’s landscape design humor. Among her other bar association activities, Kelley serves as Co-Chair of the Midwest Chapter of the Copyright Society of the USA.

David Levitt wrote to let me know that he and his Hinshaw & Culbertson colleagues recently won summary judgment for the defendant in a design patent/trade dress infringement matter, Topps Co. v. Koko's Confectionery & Novelty, 482 F.Supp.3d 129 (S.D.N.Y. 2020). Topps claimed that Koko’s product, Squeezy Squirt Pop, infringed on the design patent and trade dress of Topps’ product, Juicy Drop Pop. After claim construction, the court granted Koko’s motion for summary judgment, finding that there was no patent infringement, and that “no reasonable jury could find that the trade dresses of Juicy Drop Pop and Squeezy Squirt Pop are confusingly similar because the lack of similarity between the two products is overwhelming.” I could have told the judge that myself. David has also been writing a blog for The Times of Israel, an online, English language, centrist Israeli newspaper. He says that “most columns deal with issues of international law related to Israel as well as U.S. politics related to Israel, but other topics have included gun control, reactions to the pandemic, civility and language, and being an American Jew.” David’s thoughts are always worth reading, and you can find his blog here.

Next, I’m proud to announce that that our committee’s webinar, “IP 101: The Nuts & Bolts of Intellectual Property,” has been selected as one of DRI’s 20 committee-led webinars for 2021, and will be added to the “DRI Basics” series.  The recording of the webinar presentation will be July 9, 2021, and the broadcast date will be July 16, 2021. Thanks to everyone who is involved in this, especially our speakers, Crystal Broughan, Rob Wagner, and Rachael Rodman. You are making our small but mighty group look mighty good.

Finally, after many years of laughter and tears, I want to let all of you know that this is the last issue of The IP Update that I’ll be editing. Working on this newsletter has been a great way for me to stay in touch with my friends on the committee, and I’m grateful to have had the opportunity, but it’s time to pass the torch. I am pleased to announce that Carrie Garrison of Porter Wright Morris & Arthur LLP in Pittsburgh has agreed to serve the committee as publications vice chair. Thanks to Jay Ludlam at DRI for his editorial help, and tremendous thanks to Kara Thorvaldsen, our chair of publications. You’re the best, Kara. Help Kara and Carrie out: Write an article for one of our publications! Or, you know, “encourage” your associates to write one. Either way.

Jeffrey Bergman, of counsel with Sperling & Slater, P.C., in Chicago, is a business trial attorney, with broad experience in areas including complex commercial litigation, accounting and securities fraud, directors and officers liability, bankruptcy and restructuring, ERISA and other fiduciary litigation, intellectual property litigation, litigation concerning the enforcement of employee restrictive covenants, and defamation defense. His clients range from individuals and family owned businesses to financial institutions, publicly owned companies, national accounting and consulting firms, and government agencies. He has tried cases in courts around the country, and has also resolved many cases through arbitration and mediation.

Google and Facebook Link to News from Media Outlets

Google publishes headlines, thumbnail photographs, and snippets in two places. First, on google.com, a search for “snowstorm news,” for example, brings up a row of three hits, each consisting of a headline and a thumbnail photo that links to each source’s webpage. Underneath this row with photographs is a list of further hits, each consisting of a headline and the opening sentence or so of an article (i.e., a “snippet”) that links to the source’s webpage.

Second, Google has a site at news.google.com that also links to articles from news sources, but these links are organized by topic, such as weather, politics, or sports. Some links include thumbnail photographs and some include snippets; all include the headline.

Facebook also publishes headlines, snippets, and photographs in two ways. First, a news outlet can publish its own posts, which are then sent to its followers’ feeds. Second, a user can repost a post from a news source.

Google and Facebook’s use of headlines, snippets and thumbnail photographs has elicited scrutiny from plaintiffs involving interesting copyright issues. While this article discusses Google’s uses, both as a search engine and as a news aggregator, Facebook’s uses implicate many of the same issues, but differ in some significant ways such that not every argument that works for Google is relevant to Facebook, and vice versa. Other platforms also offer similar services and may be targeted in a similar fashion.

Some skeptics of the major platforms’ perspectives, including the news media and the bill’s supporters, say Google’s use of snippets and thumbnails violates the copyright laws and diverts traffic from the media outlet’s own websites. For its part, Google argues that the thumbnails and snippets, far from diverting viewers from the news media, actually increase traffic to the media websites by displaying just enough of the news to whet viewers’ appetites for the whole story, which is found only on the media websites. In other words, Google maintains that its headlines, snippets, and thumbnails are not a substitute for the real thing, which sounds a lot like a fair use argument.

Is Google’s Use of Snippets and Thumbnails Fair Use?

Google has publicly stated that its use of news snippets and thumbnails is fair use and therefore not a copyright violation. In a June 26, 2020, Google News Initiative blog post, Google linked to four cases, each of which found fair use in the display or copying of snippets and/or thumbnails when those were displayed as results from an online search.

In Kelly v. Arriba Soft Corp., 336 F.3d 811, 818 (9th Cir. 2003), the Ninth Circuit held that an online search engine’s display of results as thumbnail photographs is fair use because, inter alia, the use was transformative: the images were smaller, lower resolution than the originals; there was no aesthetic purpose to the use whereas the original use was to “portray scenes from the American West in an aesthetic manner”; and the search engine “functions as a tool to help index and improve access to images on the internet and their related web sites.” The use also was not deemed a substitute for the original 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.”

Next, in Field v. Google, Inc., 412 F.Supp 2d 1106, 1118–19 (D.Nev. 2006), the U.S. District Court for the District of Nevada held that Google’s storage of web pages in a temporary repository called a “cache” to enable its search function is fair use. When a page turns up as a search result, Google provides a link to the current page, and a snap-shot of the “cached” page as it looked the last time that Google’s web crawler visited that page.

The court found that making the cached copy was fair use because:

• Google’s functionality enabled users to access content when the original page was inaccessible – and was therefore not a replacement for the original
• The cached links allowed users to detect changes that were made to a web page over time – another function that was not a replacement for the original
• The cached copy helped users more “quickly find and access the information they are searching for” – a function that also was not available in the original
• A banner at the top of a cached link explained that the link was only to a snap-shot of the current page and there also was a link to the current page, enabling users to visit the current page if they so choose.
• Google ensured that any site owner can disable the cache function on their pages.

In sum, “[b]ecause Google serves different and socially important purposes in offering access to copyrighted works through ‘cached’ links and does not merely supersede the objectives of the original creation,” Google’s use was found by the court to be transformative and fair use.

Next, Google cited to Perfect 10 v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), which held that Google’s display of thumbnail photographs as search results is fair use. The court relied on Kelly v. Ariba to find that Google’s use of the thumbnails was “highly transformative … in other words, a search engine puts images in a different context so that they are transformed into a new creation.”

Last, the Ninth Circuit held that Google’s digital copying and indexing of full books that can be searched online by key words was fair use. Authors Guild v. Google, Inc., 804 F.3d 202 (2014). The court explained that Google’s use was “highly transformative” because “the purpose of Google’s copying is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include a reference to it.”

These cases are strong precedent that Google’s use of snippets and thumbnails is fair use. Critics point to other precedent to argue that the use of such material is not fair use. For example, in 1985, the Supreme Court held in Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985) that a use is not fair use when it acts as a substitute for the original by (1) publishing before the original is published and (2) publishing the “heart” or the “most interesting and moving parts” of a work. The Court, in finding that the publication of the passage explaining the reason that President Ford pardoned President Nixon appropriated the heart of the work, quoted Justice Story: “It is clear that if he thus cites the most important parts of the work, with a view, not to criticize, but to supersede the use of the original work, and substitute the review for it, such use will be deemed in law a piracy.” Accordingly, critics argue that the “heart” of a news story may be present in its headline, first sentence and accompanying photograph, which could indicate that Google’s use of snippets and thumbnails for news is not fair use.

With such arguments percolating, it still is uncertain whether Google will prevail in every copyright suit brought by news media on fair use grounds. Google settled a case raising this  issue before the court had a chance to rule on its fair use defense in 2005. Thus, with the recent focus of the decline in traditional media being blamed in part on major internet platforms, more litigation in this area is likely to follow.

The Test Case

In 2005, Agence France Presse (AFP) brought a copyright infringement suit against Google based on Google’s use of the news agency’s headlines, photographs and lead sentence on its news.google.com website. Agence France Presse v. Google, No. 05-00546 (D.D.C) (2005). The case ended in a settlement that, as widely reported, included Google paying a license fee to AFP to link to its news stories. However, before settlement, the parties filed a few substantive documents that give us insight into the issues that would be contested in a case like this.

In its complaint, AFP described its headlines, lead sentences and thumbnails as “qualitatively the most important aspects of a story” (Amended Complaint, D.I. 4 at 18), clearly laying the groundwork for an argument based on Harper & Row that fair use cannot apply because the accused use took the “heart” of the copyrighted work. AFP also set up its fair use argument by stating that the use of the materials “is not transformative in any way,” and that Google used the material “in the exact same manner” that it is used by those who actually pay for the content.

Google’s answer included many defenses, including fair use. Google argued that it transforms headlines, first sentences and photographs “by creating links”; “by categorizing them by subject matter and creating an index of news stories and thumbnail images that users may use to find and select web sites containing information relevant to them”; “by indexing them by subject matter”; “by informing the reader of the source of the story”; “by organizing and ranking them using proprietary Google algorithms developed to reflect the collective wisdom of the internet regarding what constitutes current news of note”; and “by creating a small, very low resolution thumbnail image of fewer than 100 pixels by 100 pixels to serve as a link to the source web site.”

But Google had other arguments, too. To name just a few, Google argued that headlines and lead sentences are not copyrightable subject matter as they are too short and factual; that the Digital Millennium Copyright Act (DMCA) protects it from copyright infringement because its service merely acts as a pointer to the full news stories; and that AFP granted an implied license to Google by not using web tools that would act like an “opt-out” to Google’s web crawler and would prevent Google from linking to AFP’s content.

Google also pled facts regarding the technical way that the news headlines and photographs are displayed on its site. The photos and headlines are not copied or stored on Google servers; instead, Google “embeds” links to the headlines and stories on Google’s pages, but these links point to the news media’s own website. The Ninth Circuit has held that Google’s embedded content that is not hosted by, copied to, or stored on Google’s servers does not infringe any right under copyright, in what it terms the “server test.” Perfect 10 v. Amazon.com. The server test was created in 2007, after Google settled its suit with AFP, but based on the timing and based on Google’s pled facts, Google’s defense in AFP likely would have included an argument that embedding links does not violate the copyright laws. Today, as these authors have discussed recently, the Ninth Circuit’s server test is still viable in the Ninth Circuit, but has been criticized and rejected by other courts, notably, the District Court for the Southern District of New York. (See “Embedding in a State of Flux: New York Courts Challenge Decade Old Reasoning from the Ninth Circuit.”)

While Google pled many defenses, it still decided to settle the case before the judge was able to rule on fair use and other defenses. AFP also decided to settle, thus leaving the issue unresolved.

Conclusion

Google, Facebook, and other major platforms are under fire socially and politically regarding their publication of news content. (See “Australia passes law requiring Facebook and Google to pay for news content.”) However, the legal aspects of the platforms’ use of news media’s material are far from clear. Whether by fair use or some other legal theory, it is possible that such use is permitted by law, but there are no court decisions on this precise topic. It will be interesting to watch how this develops and how it may impact other news reporting or other content aggregating services.

Adam Bialek is co-chair of Wilson Elser’s Intellectual Property practice and a member of the firm’s Information Governance Leadership Committee. From the firm’s New York City office, he guides his nationwide team of highly qualified attorneys to offer clients a full range of IP and cyber/media legal services. Adam is experienced with all facets of intellectual property law, internet law, art law, data security and privacy, and cyber/media risk matters, including insurance coverage pertaining to these areas. Clients rely on Adam for his extensive experience with cutting-edge internet-based issues and his success in using innovative tactics to enforce client rights. In addition, Adam combines the knowledge of an in-house counsel with his position in a leading national firm to enhance the role of outside general counsel to his IP clients.

Sarah Fink, an associate in Wilson Elser’s Garden City, New York, office, focuses her practice on all types of IP litigation, protection, transfer and licensing for patent, trademark, copyright, trade secret, false advertising, and rights of publicity and privacy. Sarah’s practice particularly focuses on the unique areas of IP that arise in the online context. In addition, Sarah’s practice encompasses protecting and advising clients regarding all types of online communications, including drafting terms of use, privacy policies, and terms of sale; auditing websites for compliance with relevant federal and state laws; and navigating ADA online lawsuits regarding website accessibility. Sarah also counsels clients on IP-related matters, offering formal opinions and assisting clients in designing their IP development and protection strategies.