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 terragalleria.com, 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.
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.