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Copyright law and free expression (human rights) are now on a collision course according to some commentators on a recent US Appeal Court case, Leslie A Kelly -v- Arriba Soft Corporation. The case is commonly known as the "Ditto.com" case since Arriba has changed its name to Ditto.com.
The provisions dealt with in the case have rough equivalents in the UK Copyright, Designs and Patents Act 1988 (CDPA), even though they are by no means identical. Kelly was a famous photographer whose work appeared on his website and other websites licensed by him. Ditto.com operated a search engine that (instead of displaying results in text format, like most search engines) did so in "thumbnail" images which were obtained by copying from other websites. You can view a large version of the picture on the Ditto.com web page by clicking on the thumbnail.
Importing an image from another website is called "linking". It is displayed as though it was part of the Ditto.com website. Ditto.com also employed frames to display the original web page (the image from a second web site is viewed within a frame that is pulled into the primary site's web page). So, although the full image (as opposed to the thumbnail) on the Ditto.com web page was directly from the originating website and not copied onto Ditto.com's website, few users would know that the full image was on another website. Kelly sued Ditto.com for copyright infringement. The case boiled down to two issues:
The Court decided that the thumbnail images were a "fair use"; the images themselves were poor resolution and they enhanced Kelly's market if anything. The linking and framing of images, however, did infringe Kelly's copyright. There was no infringement by copying as such because the images were imported directly from Kelly's site. The wrong rested on Ditto.com's infringement of Kelly's exclusive right to display the copyrighted work publicly. However, it was conceded that a link to a web page containing the image - as opposed to the image itself - does not amount to copyright infringement. This judgment is welcome on two fronts. First, it allows search engines to continue to assist web searchers by the use of thumbnails. Second, it permits linking to an entire web page of another's website in the form of a new window (as opposed to an image or a frame). Both these aspects take into account the important role that search engines play in making the Web what it is. One may regard this decision as an effort to make copyright law accommodate the realities of the Internet and the way it functions.
However, not everybody is happy. The Electronic Frontier Foundation (EFF, a US non-profit membership-supported civil liberties organisation), maintains that the Ditto.com judgment imposes, in effect, strict liability on a website operator for the entire contents of any website to which the operator is linked. It argues that the judgment makes the transmission by a website operator of a simple URL, resulting in the display of a copyrighted work on a third party website, a direct infringement of the public display right of the linked-to website. They argue that if the rule is allowed to stand every link on the web will give rise to a case of direct copyright infringement, imposing strict liability on the link provider.
They contend that by transmitting a mere URL (a bit of text that instructs a viewer's web browser software to fetch an image directly from another web server), Ditto.com did not make a 'transmission of a display of a work to the public'. At all times it was Kelly who was transmitting his works to end-users, and thus Kelly who was publicly displaying his own images. Ditto's only transmission is a URL, an address for the location on Kelly's Web site where the image may be fetched by an interested viewer.
As this is the first decision of the US Higher (Appellate) Court on the subject of linking and framing, and bearing in mind the comments of the EFF, one can expect further consideration of these issues in due course. No similar case has come before an English Court so Ditto.com may point the way for English law on similar questions.
The legality of Internet web linking was recently considered by the US District Court in Michigan in Ford Motor Company v 2600 Enterprises & Ors. Ford applied for a preliminary injunction to stop the defendants from automatically redirecting users from their website - www.fuckgeneralmotors.com - to the claimant's official website: www.ford.com.
The defendants had done this by embedding a link in the programme code of their website (a metatag) using the claimant's commercial trademark. The sole purpose of the website was to re-direct users who type in the URL of the defendants' website (the domain name of which they owned) to the claimant's official website.
The claimant argued that by using the trademark, the defendants had committed an act of dilution of their trademark under the US Federal Trademark Dilution Act ('the Act') and had infringed their trademark under the US Lanham Act. In other words, they pleaded trademark infringement. Unfair competition was also alleged.
The Court held that because the defendants did not use the trademark for commercial purposes, there was no dilution or infringement of trademark; nor was there any unfair competition. It was significant that the defendants' web site, which used the "Ford" mark, did not offer goods or services from that website.
If the Act's "commercial use" requirement is to have any meaning, it cannot be interpreted so broadly as to include any use that might disparage or otherwise commercially harm the mark owner. The court also did not believe that Congress intended the Act to be used by trademark holders as a tool for eliminating Internet links which, in the trademark holder's subjective view, disparage its trademark. Trademark law does not permit claimants to enjoin persons from linking to their web pages simply because they do not like the domain name or other content of the linking web page.
The Court refused to follow the decision in the earlier case of Jews for Jesus v Brodsky [1998] which had held that the defendant's use of the claimant's mark in the domain name "jewsforjesus.com" constituted "commercial use" because the site was "a conduit" to another of the defendant's web pages, which conducted fund raising through the sale of merchandise.
The Ford decision is significant in respect of US trademark and Internet law, especially as it relates to linking and framing. It is, therefore, interesting to ascertain what its impact would be in the UK. Trademarks law here is governed by the UK Trade Marks Act 1994 (TMA). While there is no equivalent of the dilution rule, the TMA does provide for infringement of trademarks as well as elements of unfair competition.
A US Court of Appeal has affirmed the landmark (certainly as far as the Internet is concerned) 1999 decision of a Federal Judge to reject a lawsuit filed by Playboy Enterprises Inc against Playboy Playmate of the Year 1981, Terri Welles. Playboy had claimed that Welles violated trademark law by using her titles "Playboy Playmate of the Month" and "Playboy Playmate of the Year 1981" within the metatag on her website.The Federal Judge had found that Welles used her titles in good faith to describe herself and her website.
The "Playboy" and "Playmate" titles had become part of Welles' public identity and she had not intended to mislead anyone. Moreover, Playboy had presented no evidence of consumer confusion. Indeed, Welles had added disclaimers to her website (www.terriwelles.com) stating that it was not sponsored by or affiliated in any way with Playboy. Playboy appealed to the US Court of Appeal, which decided that, since Welles' use of the Playboy trademark did not imply current sponsorship or endorsement by Playboy, but merely identified Welles as a past "Playmate of the Year", there was no infringement, even though its use was commercial.
The nub of the decision is that nothing - whether it is the demands of the Internet or other technological innovations - should detract from the fundamental purpose of a trademark: the identification of the source of goods or services. The whole point being: the prevention of unscrupulous traders from free-riding on their rivals' marks and capitalising on their rivals' investment of time, money and resources. That would certainly be a basis on which an English court in interpreting the UK Trade Marks Act 1994 could find as the US Court of Appeal did in Playboy v Terri Welles. It follows that if Welles had used the trademarked metatags to sell goods and services in competition to Playboy's, in a way that would create confusion in the minds of net-consumers as to whether the goods or services were Playboy's or not, there would have been infringement. Quite clearly a decision such as this, even though it is based on US trademarks law, would be persuasive in an English court were a similar case to arise before it.
Maitland Kalton, of Kaltons, is an IT/Internet solicitor who has also recently been admitted to the New York Bar.
Email Maitland@kaltons.co.uk.
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