Trolling for Copyright Claims Against Online Hosts

by Paul Alan Levy

Those who have been following the issue of copyright trolls for many years may remember that one of the prime features of the Righthaven technique for shaking down unwitting bloggers for payments was to concentrate its litigation campaign on those who made the mistake of failing to register with the Copyright Office their DMCA agent for the receipt of takedown notices. Registration is, in fact, a technical requirement for enjoying DMCA immunity, and those who had not registered paid a heavy price until some enterprising litigants found other ways to put that copyright troll out of business.

Higbee and Associates Has a New Angle for Demanding Payments

This spring, I was been able to identify Higbee and Associates as the newest operator working from the Righthaven playbook. This discovery came about as a result of my blog post a few months ago stemming from my representation of Homeless United for Friendship and Freedom, opposing a copyright infringement demand letter that the Higbee firm sent on behalf of Agence France Presse. Following that post, I have received a steady stream of requests from targets of his demand letters. For many of these targets, the best I could do was tell them that they had infringed a copyright, and to suggest approaches that they might take in dealing with the demand.  When the damages demand was high enough to warrant hiring counsel, on some occasions I have helped them find good copyright counsel to negotiate a resolution;the Higbee firm's reputation is bad enough that a number of lawyers are glad to take these cases. In schmoozing with some of the targets, I got wind of bargaining strategies that they were using with Higbee, and I have shared those around.

But one pattern has emerged recently — demands against people who hosted discussion sites on a variety of topics, where photos copyrighted by Higbee clients, or links to such photographs, had been posted by their users, and where the host had not learned that DMCA immunity depends on registration of the DMCA agent with the copyright office.

The host at Something Awful deployed a particularly aggressive strategy: a series of incendiary emails, full of vulgar language, announcing that the host was not going to pay a cent. I am a bit too conventional to take that tack, or indeed to recommend it, although it appears to have been effective in fending off the demand.

There is, however, a path to legal relief for such unlucky targets. Over the past several years, a line of cases has emerged in several Courts of Appeals that a defendant cannot be held directly liable for copyright infringement unless the infringement resulted from defendant's volitional act. E.g., VHT, Inc. v Zillow Group, 918 F.3d 723 (9th Cir. 2018). For the host of a web site on which some user posted copyrighted matter without any involvement by the host, and indeed in the face of communications from the host (such as in Terms of Service) discouraging copyright infringement, that principle means that the host will ordinarily not be held directly liable for infringement. Moreover, the various forms of secondary liability for infringement will not be found unless the host either encouraged the infringement, or drew some sort of direct benefit from the infringement.  Some plaintiffs have argued that, even assuming that the the language of the Copyright Code as it existed before the enactment of DMCA immunity provided such protection, the enactment of the DMCA's immunity scheme, with its specific takedown procedure and related requirements for asserting immunity, implicitly repealed that pre-existing law.  But this line of argument has been rejected.

Certainly DMCA immunity is a better protection for a host, because it is automatic assuming that the host properly registers an agent and follows the notice and takedown procedure. It would be a mistake for hosts to refrain from registering in reliance on the VHT line of cases.  But relying on the volition requirement is an alternative approach. Writing on behalf of the host of a discussion forum about elections in the United States, who received a demand letter from the Higbee firm about the posting of a deep link to a photo of depicting the 1980 election campaign of John Anderson, I tried to  raise these issues with Matthew Higbee privately, hoping to persuade him not to pursue such cases, but he blew off my arguments, refusing to address them on the merits on the theory that a D.C. lawyer helping a client threatened with litigation by a California photographer constituted the unauthorized practice of law, and by telling me that my contentions were "delusional."

New Test Case on the Liability of Forum Hosts for Deeplinking

In order to get this point decided, we have now filed an action for a declaratory judgment of non-infringement on behalf of Kevin Schlossberg, a resident of Louisville Kentucky who runs a discussion forum for knife enthusiasts. Nearly a dozen years ago, a member of that forum began a discussion thread about the use of burl in making knife handles. Some users asked what burl was, prompting yet another user to post, in December 2007, a deep link to a photograph of redwood burl that appears on, the web site of the noted nature photographer Quang-Tran Luong. (I recommend browsing in Luong’s web site—he takes wonderful photos).

Fast forward to this past March, when Schlossberg received a  Higbee demand letter, blaming Schlossberg for the alleged infringement of Luong's photograph and telling him that unless he forked over $2500, suit would be filed seeking much more money. Schlossberg took down the deeplink but pushed back on the monetary demand. As it usually does in these cases, the Higbee firm responded that removal was not enough, demanding payment of a ransom as well. And when Schlossberg did not start bargaining for a smaller payment, he got the usual barrage of emails and telephone calls from a paralegal in the firm, as well as from a junior associate. The paralegal kept suggesting that she was the good cop who assumed that the infringement must have been unintentional and asking for a counteroffer, while at the same time warning that if Schlossberg did not play nice, he would soon be in the hands of the bad cop.

Because the case involves the same deep linking issue as the Homeless United situation from earlier this year, I wrote to Matthew Higbee, repeating our arguments as well as explaining to him why his theories about unauthorized practice were offbase. In addition, I pointed out that it Luong wants to prevent deeplinking to his photographs (an issue that his Terms of Use specifically address), he has only to adopt one of the simple technical measures that would guard against access from external links to his site.  I have to assume that Luong has not done this because he wants to give his art broad exposure.

Moreover, because Higbee he had been so dismissive of this argument in the past, I put him on a short leash, giving him only a few days to drop his claims. Because he never responded, we have now filed an action for a declaratory judgment of noninfringement in which Mr. Higbee will have a chance to explain to the Court why Schlossberg’s defenses are delusional.

Reminder About Posting Photographs

I began this blog post with an unflattering analogy to Righthaven.  As I see it, the Higbee firm goes overboard in its enforcement efforts, sometimes by making illegitimate infringement claims, sometimes by threatening to sue even though there is no real intention to file a lawsuit, and sometimes by basing its damages claims on license fees far in excess of what its clients get paid in the open market. Still, the Higbee firm is not in the same trolling class as Righthaven, which was acquiring licenses for copyrighted works only for the purpose of bringing copyright claims.

As I noted in my first blog post about this firm’s practice, it is representing real copyright holders, who are genuinely aggrieved in a number of cases. Unlike Righthaven, the core of the Higbee practice is a legitimate one. Creative artists like Luong deserve to be paid license fees for the posting of their photographs, and especially when the posting is done to enhance a commercial web site. Moreover, Internet users cannot be reminded too often that the mere fact that you can find a photograph or video clip online does not mean that it is free for you to download and place on our own web site. 

0 thoughts on “Trolling for Copyright Claims Against Online Hosts

  1. M. Higbee says:

    Thank you for the invitation to comment on your post.
    The idea that our law firm or its clients share anything in common with Rightshaven is more than just “unflattering;” it is preposterous. So too is the application of the pejorative term “troll.” What is disappointing is that I suspect you know this, as you kindly buried in the third to last line that “the core of the Higbee practice is a legitimate one.”
    The operators of Rightshaven were trolls, as they did not create or arguably own any of the rights they sought to enforce. Lumping in our clients, all of whom create or sponsor the works they own, is insulting. Our clients range from independent artists to the largest news agencies in the world. They each play important roles in our democracy— whether it is creating or inspiring art, or capturing insightful news photos. Also, Rightshaven’s tactics and legal claims were shown to be meritless. We and the attorneys to whom we refer some claims have filed hundreds of copyright lawsuits and not a single one has ever been dismissed for lack of merit or involved conduct worthy of sanction. We know we are not perfect – no law firm is – but we work hard to get better every day.
    You state that “creative artists deserve to be paid license fees for the posting of their photographs, and especially when the posting is done to enhance a commercial web site.” We concur. However, Public Citizen took the exact opposite position in this case. They represented a for-profit business that profited from an artist’s work in two ways— first by selling subscriptions to the forum page that was displaying the artist’s work, and secondly, by selling ads on that page.
    Your argument that copyright holders should lose their copyrights if they do not utilize complex coding, which happens to be easily circumvented, is the equivalent of saying that people who do not hide their valuables under their mattresses cannot press charges against thieves who break in and steal them. Not only does this blame the victims, it ignores the reality that most infringement occurring from linking involves the infringer linking to an image that is not even on a site controlled by the copyright holders themselves.
    It is a disservice to readers nationwide to instruct them to rely on the Ninth Circuit’s server test when evaluating liability on cases involving deep or inline linking. First of all, district courts in several circuits have found liability for deep or inline linking and expressly rejected the Ninth Circuit’s server test. Furthermore, while it appears to be a viable defense in the Ninth Circuit for now (although we are not convinced that Perfect 10 or VHT actually hold that all forms of inline linking are an automatic defense to infringement), nobody will be shocked if the Ninth Circuit refines or entirely changes its position in the near future, in which case, those claims that were discovered within the statute of limitations may become enforceable.
    As previously stated, we welcome any fair criticism as an opportunity for us to find new ways to improve our ability to better achieve our goal of protecting our clients’ work with the integrity and professionalism they expect. We will also take without complaint the pejorative labels and mischaracterizations that come with fighting for the rights of artists and other creative professionals— but we will admit that it is a bit surprising to be receiving them from Public Citizen.

  2. Jonah E, says:

    The deep-linking host has set up an automated system to profit mightily from infringing, while avoiding liability on the most arcane and niggling of grounds.

  3. Peter Dordal says:

    So what is the deal with copyright infringement claims for deep links? Were these simple href hyperlinks, requiring a click to access the original image? Or were the original images embedded, through the link, in the secondary page?
    And has any court ever decided that deep links — of either form, but particularly the first — constitute infringement? I’d always thought this was settled in the negative by the Perfect 10 case, but that was a dozen years ago.
    Finally, I note that this comment box states “URLs automatically linked”. That might be worth revisiting, if linking creates a legal liability!

  4. JOHN MCCANN says:

    Thank you for a fascinating, well written, and entertaining post. My son received Higbee shakedown email. It has been a long time since I have had anything but robust contempt for the legal profession. Your post reminded me of the feelings I had when I went to law school years ago. It was then to me a noble profession. Your work speaks to its highest aspirations and accomplishments. Thanks for making my day with a fresh reminder that there are a few good men left in the profession.

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