Nysba Fall 2018 | Vol

NYSBA FALL 2018 | VOL. 27 | NO. 2 Bright Ideas A publication of the Intellectual Property Law Section of the New York State Bar Association In This Issue n TVEyes and the Future of n The Emergence and Consolidation Technotainment of a Jurisprudence of Domain Names n How to Litigate Against a Copyright n Court Clarifies Liability for Deletion of Troll Copyright Management Information n 16th Women in IP Program Held n Do Surveys Enhance the Chances of at Davis Wright Tremaine Winning Trademark Infringment Cases? NEW YORK STATE BAR ASSOCIATION ANNUAL 2019 MEETING JANUARY 14 – 18 NEW YORK CITY | NEW YORK HILTON MIDTOWN New Year’s Day One Week Earlier! NYSBA Annual Meeting Week Martin Luther King Day Join nearly 5,000 members of the New York State Bar Association from around the state and beyond at the 2019 Annual Meeting. Take advantage of the excellent schedule of events presented by the Association’s sections and committees, network at the member receptions and make connections with the exciting array of exhibitors. WWW.NYSBA.ORG/AM2019 Table of Contents Page TVEyes and the Future of Technotainment .................................................................................... 4 Scott J. Sholder Gone But Not Forgotten: Court of Appeals Clarifies Liability for Deletion of Copyright Management Information .............................................................. 8 Mark S. Kaufman Will a Survey Enhance the Chances of Winning Your Trademark Infringement Case? ................................................................................................. 10 James T. Berger Section Activities: 16th Annual Women in IP Program ............................................................. 13 How to Litigate Against a Copyright Troll .................................................................................. 17 Stephanie Furgang Adwar The Emergence and Consolidation of a Jurisprudence of Domain Names ............................ 20 Gerald M. Levine Section Committees and Chairs ..................................................................................................... 25 NEW YORK STATE BAR ASSOCIATION If you have written an article you would like considered for publication in Bright Ideas, or have an idea for one, please contact the Editor-in-Chief: Jonathan Bloom Weil, Gotshal & Manges LLP 767 Fifth Avenue New York, NY 10153-0001 [email protected] Articles should be submitted in electronic document format (pdfs are NOT acceptable), along with biographical information. REQUEST FOR ARTICLES NYSBA Bright Ideas | Fall 2018 | Vol. 27 | No. 2 3 TVEyes and the Future of Technotainment By Scott J. Sholder I. Introduction the boundaries set by Authors Guild.9 Despite recent case Several months have passed since the Second Circuit law holding that transformative use is the most important handed down its decision in Fox News Network, LLC v. fair use factor, the TVEyes court seemed to return to the TVEyes, Inc.,1 and the various stakeholders are undoubt- earlier view that market harm is “the single most impor- edly settling into the new reality concerning the bound- tant element.” aries of fair use. The court confirmed in TVEyes that its earlier decision in Authors Guild v. Google, Inc.2 set the III. I’ll Take Door Number Four: The Significance outer limits of fair use when it comes to duplication of of the Court’s Focus on Market Harm copyright-protected materials for indexing and search- Potential market harm, in the form of lost licensing ing purposes. Whether it is seen as a victory or a setback, opportunities, is the most relevant effect of services like TVEyes represents the current state of the law in one of TVEyes, not just legally but from a real-world standpoint the most copyright-intensive jurisdictions in the coun- in a modern digital environment full of content that try (encompassing the seat of the media and publishing can be indexed, searched, and consumed in a variety of industries).3 ways. The strategic approach that Fox News took in the With the recent explosion in the availability of digital case—not appealing the district court’s fair use ruling on content, including photographs, movies, television, short- TVEyes’ indexing and searching functions, likely because form videos and clips, music, and games, and the pro- they are fair uses under Authors Guild—may, at least tacit- liferation of new platforms and technologies for the use, ly, have opened a door to an Authors Guild-style exception exploitation, and sharing of such content, the potential for the indexing and searching of all sorts of media while, impact of TVEyes is substantial. at the same time, limiting what else can be done without a license. II. A Quick Recap: Previously on TVEyes… The dividing line, at least for the time being, is clear: This article will explore some of the broader practi- third parties (i.e., technologists) can offer only limited util- cal implications of the Second Circuit’s TVEyes decision. itarian organizational functions vis-à- vis content they do First, however, a brief summary of the facts is in order. not own, whereas content owners are, of course, free to do much more. TVEyes clearly knew that those two buckets TVEyes—a for-profit media/technology company— of rights would be far more useful (and profitable) if com- offered a fee-based service that allowed clients to “sort bined. Now the question is whether coders and copyright through vast quantities of television content to find clips holders can work together, above board, and still turn a that discuss items of interest to them” by way of, among profit. other functions, search, archive, and watch features.4 A judge in the Southern District of New York held that A. DIY Network: Content Owner Internal these functions constituted fair use of the plaintiff’s Development 5 programs, but on appeal (which concerned the watch, In the current digital environment, copyright own- downloading, archiving, and sharing functions but not ers will want to offer convenience and customizability the searching/indexing feature), the Second Circuit dis- for audiences looking for ways to sift through the end- agreed. The court of appeals noted that while TVEyes’ less amount of content available online. Content own- copying of content and its provision of a “watch” service ers like Fox News, record labels with vast catalogues of could be considered at least somewhat “transformative” digital master sound recordings, digital image libraries, 6 under the first fair use factor, the transformative char- and video game developers can develop indexing and acter did not outweigh the fourth fair use factor—the searching tools as well as functionalities like sharing and impact on the market and potential market for the copy- downloading and charge a fee based on the value of their righted works. content and that of the services offered. TVEyes preserved Specifically, the court found that TVEyes “essentially for copyright owners the market opportunity to act as republishe[d] [copyrighted] content unaltered from its one-stop shops. 7 original form” on a commercial basis and “undercut[] The photography and digital image licensing industry Fox’s ability to profit from licensing searchable access is a model of this marriage of content and technology. Ag- 8 to its copyrighted content to third parties.” Consumers gregators of video footage, film clips, photographs, and clearly were willing to pay for a service that aggregated, indexed, and provided a searchable database of creative content. TVEyes therefore “deprive[d] Fox of revenue SCOTT J. SHOLDER is a partner with Cowan, DeBaets, Abrahams & Shep- that properly belongs to the copyright holder,” exceeding pard LLP in New York City. 4 NYSBA Bright Ideas | Fall 2018 | Vol. 27 | No. 2 other visual imagery such as Getty Images, Shutterstock, without a license and hoping for the best in a fair-use and Corbis, invested millions of dollars in the last decade gunfight. Indeed, this type of arrangement could have digitizing and indexing their licensed content to be easily resulted had TVEyes partnered with Fox News, thereby searchable, accessible, and available on-demand.10 Their making TVEyes even more viable. content is paid for through licensing arrangements with content owners and is offered to users for fees that vary As discussed below, the melding of tech and content based on the type of content and the type of license avail- through legally sound licensing arrangements and co- able, with royalties shared with contributors. In 2015 the operation between content owners and aggregators, on market for licensing audiovisual content was valued at the one hand, and technology and software developers, TVEyes $550 million globally for video footage alone.11 A ruling on the other hand, appears to be the future that in favor of TVEyes in connection with its “watch” func- predicted. tion and associated features would have endangered this established—and steadily growing—business model. IV. Role Models: Developments But this solution may not work for everyone. This is in Content-Based Technology where teamwork comes in handy. A few recent developments demonstrate the business possibilities in the post-TVEyes world of technology-con- B. “We will add your biological and technological tent fusion. While there are surely many other examples distinctiveness to our own”: Tech/Content out there, the proliferation of artificial intelligence (AI) Synergies12 and user-generated content (UGC) apps incorporating ex- Internal technology development is not the

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