4 Va. J.L. & Tech. 7 (Fall 1999) <http://vjolt.student.virginia.edu>
1522-1687 / © 1999 Virginia Journal of Law and Technology Association

VIRGINIA JOURNAL of LAW and TECHNOLOGY

UNIVERSITY OF VIRGINIA

FALL 1999

4 VA. J.L. & TECH. 7


Online Information Provider Liability for Copyright Infringement: Potential Pitfalls and Solutions

 

By Michael L. Siegel*

I. Introduction

  1. The Internet[1] has grown in popularity and usage in the last several years. The World Wide Web (WWW) and browsing software packages have enabled users to access swiftly a multitude of information found around the world.[2] It has grown in large part because of the ability of websites to create new materials, sort through vast amounts of data and allow a viewer to access this information. Part and parcel with this exponential growth, services have developed to track information from websites as well as to allow users to input their own information for others to use.

  2. This tremendous growth has resulted in significant tension between the authors who seek to protect their interests and the public's need to access the information. The Internet is revolutionary in the way that it allows authors and viewers to exchange information.[3] Although copyright law has evolved to meet the challenges of new technologies such as photocopying and various forms of recording (digital and analog), the Internet presents challenges to the existing copyright paradigm that may not lend itself to national regulation. The existing copyright paradigm may not be sufficient to regulate the multitude of issues arising through the transmission and relay of information over the Internet.[4]

  3. The tension between those who think that the Internet, dubbed "The Wild West" by some,[5] should be regulated and controlled[6] and those who feel that there should be little or no regulation that is specific to the Internet will change the way that the Internet will be used in the coming years. In effect, the tension boils down to a "battle between copyright maximalists, those advocating for the highest levels of protection, and copyright minimalists, those arguing that copyright should offer only enough protection to give authors an incentive to create."[7] Governments will continue to attempt to regulate the Internet and the copyright, perhaps in vain, but their actions will shape the way that users interact on the Internet for years to come.[8] However, the most probable outcome is that businesses and individuals who currently use the Internet and conduct business online will determine the ownership and scope of protection individuals will receive for copyright in this new environment, and in addition will direct the creation of copyright law specific to this new frontier.

  4. The way information is posted online takes many forms[9] but one form in particular is susceptible to the traditional notion of copyright infringement and may determine the outcome of copyright protection for authors posting to the Internet environment. Information provider/gatherer websites (IPG’s)[10] are among the most recent innovation on the Internet. These websites allow an unparalleled exchange and expression of ideas among individuals spread around the world. They enable users to post messages that can be viewed by others; therein lies the rub. The ownership rights therefore depend greatly on the savvy of the IPG to determine the extent of protection or ownership it seeks to keep for itself. This comment will look at how IPG’s should treat copyright and whether they should utilize existing or future technologies, liability insurance policies, licensing societies, contractual relationships or whether they should call for expanding the Digital Millennium Copyright Act[11] in light of the jurisdictional difficulties.

    II. Jurisdictional Hurdle to Copyright Protection

  5. The Internet presents the legal systems of the world with a unique challenge; the Internet creates a paradigm that prevents any single nation from enforcing its laws over the whole.[12] As there are no new international law and enforcement mechanisms to protect the intellectual property rights of individuals, there is no method of enforcing existing copyright law in an international paradigm.[13]

  6. Stringent national laws for copyright are rendered ineffective on the Internet as the jurisdictional difficulties prevent adequate enforcement. United States courts have had to choose between either the development of a new body of jurisprudence or work from the existing body of law when dealing with the Internet, and thus far seem reluctant to develop a new body of law specifically for the Internet.[14] For the most part, they have opted to build from the existing jurisprudence and used analogous cases to define the law in the new medium.[15] The problem is whether a particular website, operating from another jurisdiction, has created a sufficient contact with the forum state so as to allow the court to exercise jurisdiction over the individual.[16]

  7. The U.S. Supreme Court, through International Shoe v. Washington,[17] utilized a test of minimum contacts to ensure fair play and substantial justice, enabling courts to achieve specific jurisdiction.[18] Even where the defendant is absent, jurisdiction over an individual may be acquired by a court through the court's exercise of specific jurisdiction arising out of a specific cause of action in the forum state.[19] The International Shoe doctrine was further refined by World-Wide Volkswagen[20] in that foreseeability of involvement in the forum state and purposeful availment of the forum state’s laws became part of the Due Process jurisdictional test.[21]

  8. The jurisdictional tests as set forth in International Shoe and World-Wide Volkswagen are capable of being extended to the realm of the Internet in that the ability to post hate speech online would likely fall outside the current jurisdictional tests, allowing individuals to elude jurisdiction in U.S. Courts.[22] However, there are some courts that appear willing to find the simple creation of a website enough to satisfy the purposeful availment criterion necessary to secure jurisdiction.[23] The court in Inset proposed that the development of a website could be analogous to a newspaper when individual Internet access points in the state could be considered equivalent to placing individual advertisements in the state.[24] This case examined the use of a website for advertising purposes, and the court found that the website should be considered a continuously running advertisement.[25]

  9. Once the courts are able to achieve jurisdiction, the analysis under copyright law proceeds as a traditional case normally would. The problem with the Internet is that the jurisdictional tests are quite difficult to satisfy due to the transitory nature of websites and the lack of purposeful availment of a particular jurisdiction’s laws. Although larger websites including The Mining Company[26], CNN[27], Suite101.com[28], iVillage.com[29] and the Jerusalem Post [30] would likely fall under the jurisdiction of various U.S. courts due to their reach into the marketplace through the existence of accounts in the jurisdiction, many other IPG’s would fall under the radar screen and jurisdiction would be more difficult to achieve.

    III. Changing Notions of Copyright

  10. Copyright protection is enunciated by the United States Constitution.[31] The purpose of copyright is to assure authors have the right to their original expressions, while encouraging others to build freely upon the ideas embodied in a particular work.[32] Specifically, the author is given the exclusive right to reproduce both published or unpublished copyrighted work in copies or phonorecords;[33] "prepare derivative works based upon the copyrighted work;" [34] "distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;"[35] "to perform the copyrighted work publicly," "in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works;"[36] " to display the copyrighted work publicly," "in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work;"[37] and "to perform" sound recordings "publicly by means of a digital audio transmission."[38]

  11. Works eligible for protection under the Copyright Act of 1976 must be original and fixed in tangible form.[39] The Copyright Act does not extend protection to ideas.[40] For example, this paper would be protectable as a literary work, but the theory itself would not be protectable. That is, others would be able to build freely on the theory found in the paper but they may not copy the way the author expressed the theory.

  12. Copyright law has continued to evolve in the last several years with the passage of the Sonny Bono Copyright Term Extension Act of 1998. [41] This Act extends the U.S. copyright term by another twenty years which, according to supporters of the Act, brings it in line with European copyright law.[42] The primary problem suggested by detractors is that allowing continued extensions of the copyright subverts the intent of the Constitution which states that copyright is a property interest that exists for a limited time.[43] This legislation, by harmonizing U.S. and European copyright law, would supposedly make enforcement of copyright easier on the Internet. However, as noted below, enforcement is far more difficult to accomplish due to the Internet’s uniquely international nature.

  13. Many users portray the information presented on the Internet as though it were the digital equivalent of browsing through a hardcopy version of The Firm. Although you might think that the only difference between the two is that you are reading from a computer screen instead of paper, two courts have concluded that this transitory "fixation" of a computer file in memory constitutes copying within the meaning of the Copyright Act.[44] The government's intellectual property working group adopted this view and therefore it carries great weight since it impacts the type of information that could be considered infringement of materials.[45]

  14. Although many nations provide various forms of protection for copyright, there is no international copyright protection.[46] Instead, there are a variety of reciprocal arrangements to which countries may adhere including the Berne Convention for the Protection of Literary and Artistic Works,[47] the World Intellectual Property Organization Copyright Treaty,[48] and the Universal Copyright Convention.[49] As one views the signatories to the list, [50] it becomes evident that there will not be sufficient protection for authors’ works without full cooperation of all countries of the world because some countries may harbor unscrupulous individuals who infringe the works of others. These individuals could exploit and unjustly enrich themselves through the hard work of others without fear of being caught.

    IV. Fair Use

  15. The Internet has always been closely tied to the academic world.[51] Many of the earliest users of the Internet were students and researchers who found the Internet to be a tremendous repository of information that was not available locally.[52] These Internet pioneers envisioned the Internet as a way that information could be freely transmitted among educational institutions. [53] Although some educators may believe that they are not infringing on copyright by posting infringing materials online, educators are not covered by the exceptions found in the Copyright Act.

  16. Although educators who post infringing materials online could claim the prose they choose to copy is for educational purposes, this argument fails because a work posted online would fail the four part test to determine a work’s permissible use under the Classroom Guidelines.[54] A fair reading of the Guidelines would suggest that you are not meeting the requirements for spontaneity and cumulative effect as well as a specific requirement that copying shall not substitute for the purchase of books, publishers’ reprints or periodicals, and cannot be repeated with respect to the item by the same teacher from term to term.[55] The Classroom Guidelines were far more comprehensive in treatment of copyright than any previous document on the subject. [56] Nevertheless, due to the influence of Internet pioneers and open sharing of information pertaining to the construction and operation of the Internet, an open sharing attitude has developed among Internet users and this may have the detrimental effect of reducing the impact of copyright protection on the Internet.[57]

    V. Actions By Other Jurisdictions

  17. Efforts to protect materials online through copyright have been inconsistent at best in jurisdictions outside the United States. Several nations, including Brazil,[58] have recently tightened the copyright protections afforded writers and artists. Brazil modified existing law such that in the absence of an agreement to the contrary, sales of a work transfer the right to exhibit the work, not to reproduce it.[59] In addition, authors have a permanent right of access to their work.

  18. Australia is currently in the process of tightening protections for online content.[60] The revised statutes would balance the rights of owners and users against the need for fair dealing and use by libraries and other public institutions.[61] Specific provisions would insure that telecommunications carriers and ISP’s are not liable for copyright infringement on websites they host.[62] Moreover, criminal sanctions and civil remedies would be applicable for commercial dealings in devices designed to circumvent technological protection measures, such as software packages designed to break password protection of materials on the Internet.[63] However, these protections do not appear to protect the IPG=s since the language appears consistent with U.S. efforts and the DMCA.

  19. Germany has been at the forefront of adapting its laws[64] to the new communications media of the Internet.[65] Although there have been some critics who suggest that Germany acted too soon in imposing legislation on the new technology, the new laws attempt to stimulate investment in multimedia through creating a stable and reliable legal environment. [66] The new law separates certain forms of online content into different legal jurisdictions. The federal government governs tele-services while the states retain jurisdiction to examine information and communications services that include editorial materials, online magazines or pages with strong editorial viewpoints.[67] ISP’s are made responsible for the content they create in addition to content created by others if the ISP’s are (1) aware of the content, (2) had a technical means of preventing its use and (3) can be reasonably expected to prevent its use.[68] The ISP’s would not be responsible for third party content as the liability would be imposed on the creator of the content and the party who placed the content on the network.[69]

  20. Furthermore, the legislation was seen as protecting the civil rights of the individual users while safeguarding the interests of the public. [70] Germany is known for its comprehensive legislation of a wide range of social matters. Therefore, because the German government has seen the potential impact of the Internet on society as being tremendous, it is no surprise that it has chosen to act in this legislative manner.[71]

  21. The German system may appear to address content delivered to a German network from outside the country, but it too falls short of extending jurisdiction beyond its borders. Even notions of long arm jurisdiction, similar to the U.S. system, would fall short on many levels due to the transitory nature of the Internet and the methodology used in presenting information online. Given the unsettled conditions of legislation worldwide and difficulties with obtaining jurisdiction, we now turn to potential solutions.

    VI. Potential Solutions

  22. Copyright infringement occurs when a viewer improperly copies the work of another. On the Internet, there are a variety of measures available to reduce the ability of a given user to copy the works of others. Each of these measures has benefits and drawbacks that, in the end, wind up hurting the users and creators of Internet posters. Among the possible copyright protection paradigms are requiring memberships, licensing rights, contracting for rights between the IPG and creator, and a new international copyright agreement specifically tailored to Internet issues.

    A. Fee For Use

  23. Membership fees imposed on users is one way is to limit access to copyrightable material and to compensate the posters of information. Fee services exist online in various forms, but the general theme of these sites is the requirement of payment to view information created by someone else. The fee structure can include the potential for copying or printing of that information.[72] Although the primary drawback of this system is that it restricts the flow of information from the author to the public and creates a system where only those who can afford to pay for the services will be able to view the materials, the information that these sites provide can be quite extensive and often contain the best available materials.

  24. Encyclopædia Britannica has a subscription website whereby users can pay to view the contents of its entire collection.[73] In addition to having a subscription system, the website has produced comprehensive usage and copyright guidelines that state specifically how much a person can copy or use fairly.[74] Using its website requires acceptance of all the terms of its agreement and specifically lists Illinois as the controlling jurisdiction. [75] Taken together, these two documents may provide adequate protection for Encyclopædia Britannica =s copyright in the online environment. Although the costs to the casual user may be low in the short term, the costs may be substantially higher to society due to the restricted flow of information.[76]

    B. Copyright Protection Through Licensing Societies

  25. Enforcement on the Internet may be analogous to the problems facing the recording industry due to the advent of radio and digital players. The recording industry responded to the potential for widespread copyright infringement through the creation of copyright performance royalty societies.[77] Instead of having to negotiate individual copyright agreements with each author, the author allows the copyright agency to negotiate the license on his/her behalf.[78] These societies monitor the licensees in order to calculate the total number of performances so that the authors can be compensated. [79]

  26. Although the telecommunications and recording industries may provide a possible solution through the use of licensing rights, they are too small and do not have the worldwide scope necessary to provide sufficient protection online.[80] Licensing would require the IPG to negotiate with an international copyright collection society similar to the American Society of Composers, Authors and Producers (ASCAP) or Broadcast Music Inc. (BMI) for the right to use the copyrighted works.[81] A licensing scheme would require the collection society to be international in scope so as to overcome the drawbacks found in the current recording industry practice.[82]

  27. This licensing scheme would allow the copyright protection societies to enter into agreements with the IPG’s in addition to the ISP’s further protecting the rights of authors. These services would patrol the newsgroups and other resources that have no authority at present to prohibit copyright infringement. However, it is likely that these copyright protection societies would drive up the cost of doing business on the Internet and restrict the free flow of ideas. The IPG’s and ISP’s would be forced into making licensing agreements even though the Internet allows anyone to become an author.[83] Although ASCAP has responded to the tremendous growth of the Internet and the capability to transmit digital recordings through instituting a license agreement with websites that have heavy recordings usage,[84] ASCAP protects only 70,000 artists, composers and authors[85] while BMI protects approximately 3 million works from thousands of artists, composers and authors.[86] ASCAP and BMI therefore lack the needed infrastructure to protect the interests of millions who create new content for the Internet on a daily basis as well as manage a huge database of individuals and IPG’s that require the use of a licensing scheme.

  28. The Internet, through its ability to empower individuals to create content easily, makes licensing difficult to enact due to the logistical difficulties of numbers and enforcement. It would also require the voluntary, and therefore highly unlikely, membership of millions of Internet users who post to the Internet. Therefore, utilizing this form of licensing scheme would not be successful in the current Internet environment.

    C. The Technological Solution? Browser and HTML Limitations to Prevent Copyright Infringement

  29. Another alternative relates to how individuals interact with the Internet currently. The vast majority of individuals accessing the Internet are doing so through a variety of browsers.[87] These browsers allow users to cache materials viewed on the Internet to speed the browsing experience as well as allow the user to cut and paste material viewed on the Internet.[88] In addition, the browsers have the ability to copy and paste information to and from the browser window to any other location within the computer. The manufacturers of these browsers could eliminate the ability to cut and paste information from the browser windows to other windows so as to eliminate the blatant copying of materials. This approach is likely to be strenuously resisted as this would reduce the ability of website owners to maintain their websites, pull URL’s[89] from existing websites to be incorporated into new web pages, and slow down the ability to browse the Internet. Therefore, a more fundamental approach should be examined.

  30. A second technological barrier to copyright infringement would be the further refinement of the programming languages used by website developers granting access to their website. Currently websites are designed using primarily HTML, Javascript, Java and Perl. [90] These programming languages allow the website designer to create certain effects, produce hyperlinks to additional websites, post pictures, and allow the website owner to produce statistics and generate reports. It is possible that in the near future these programming languages could be updated with new commands that restrict the ability of the user to use the cut and paste features of the browser functions without eliminating the access to the materials on the website. In this fashion, the website user would be able to view the information on the website but not be able to profit from copying or otherwise using the information without the permission of the author or website owner.

    D. Contracting the Relationship: IPG’s Take Differing Approaches

  31. Perhaps the most realistic approach to copyright protection online is the voluntary agreement between the user and the IPG. These voluntary agreements, although they place the poster at a disadvantage with the IPG in that they can be overly restrictive of the rights of the author, are the best method of resolving the distribution of rights between the author and the IPG. They place a tremendous amount of power in the IPG because the IPG writes the user agreements in its favor. However, this power may be offset to some degree by authors who choose IPG’s that grant greater rights or protections to their works. If there are sufficient numbers of authors who decide that one IPG does less to protect the copyright than others, it may force more IPG’s to institute greater copyright protections.

  32. The Internet permits a user to view information from any point around the world without regard for the jurisdictional issues that may arise. An American user would be able to view information posted in Germany through connections that pass through France and Britain so that the data streams through various jurisdictions on its way to the user=s computer. Once a user has determined that infringement has occurred, they would then have to determine where to bring suit and whether a recovery would be possible. The problem is that because the Internet is global and allows anonymity, anyone can infringe on a poster= s rights.[91] Unless a website has created a contractual relationship between the user and the website owner, the ability to police the copyright infringement will be extremely difficult.

  33. Suite101.com is one of a number of companies emerging on the Internet that allows users to post messages in discussion areas via a variety of means. [92] This company, based in Vancouver, British Columbia, has editors and readers from around the world who use the service to discuss a variety of topics and to learn of the best sites on the Internet for users.[93] The disclaimer that accompanies the site grants the user very specific rights while retaining significant rights of reproduction.[94] Specifically, it states: "By submitting content to any "public area" of Suite101.com, including, but not limited to: message boards, forums, contests and chat rooms, you grant Suite101.com, i5ive communications, inc., and its affiliates the royalty-free, perpetual, irrevocable, and non-exclusive right (including any moral rights) and license to use, reproduce, modify, adapt, publish, translate, create derivative works from, distribute, communicate to the public, perform and display the content (in whole or in part) worldwide and/or to incorporate it in other works in any form, media, or technology now known or later developed. You also warrant that the holder of any Rights, including moral rights in such content, has completely and effectively waived all such rights and validly and irrevocably granted to you the right to grant the license stated above. You also permit any subscriber to access, display, view, store and reproduce such content for personal use. Subject to the foregoing, the owner of such content placed on Suite101.com retains any and all rights that may exist in such content."[95]

  34. Should an Internet user place an original idea or concept on the Suite101.com website, they would lose the exclusive right to control the dissemination of the idea. The author and Suite101.com would both have the non-exclusive rights to control the dissemination of information and Suite101.com would be able to reprint the idea with attribution.[96] This user agreement/disclaimer is among the most comprehensive on the Internet as the website is primarily built from users adding to the content of the site with their postings. Suite101.com essentially circumvents the difficulty in handling copyright online through contracting for the rights to the postings on its site thereby obtaining rights to present and reuse postings while allowing the poster to retain ownership.[97] It also circumvents the problems arising from seeking a complete transfer of copyright that requires a written transfer agreement. [98]

  35. Another IPG, The Mining Company, also allows users to register to post and participate in discussions.[99] The user agreement, however, does not contain a specific reference to copyright issues and who retains ownership of rights when items are posted by the users. The Mining Company has attempted to utilize contract terms to regulate the ownership of rights in postings on its site although it has not clarified exactly what rights it intends to retain for itself and which rights the original author retains. Another IPG, geared towards women's issues, iVillage.com, has similar terms of involvement to Suite101.com.[100] It creates an agreement that the author assents to through its use of the website.[101] Furthermore, the user agreement provides iVillage.com the non-exclusive right to the author=s postings on its site.[102] The user agreement also includes a warranty by the poster that their contributions to the IPG are not going to infringe on the rights of others. [103]

  36. The Cable News Network, better known as CNN, is one of the largest news providers on the Internet.[104] This website has a community standards page that details how users may conduct themselves on the CNN discussion areas, and although it mentions that users may not use materials that are copyrighted elsewhere, it is silent as to what happens to the ideas of individuals who post non-copyrighted material.[105] Although it states that the website and users will conform to all laws and regulations relating to copyright, it does not specifically state which law governs.[106]

  37. CNN has posted a very comprehensive statement relating to the copyright protection that users may have.[107] This statement is part of the service agreement between users and the website.[108] It states, in part, that: "[s]ubscriber automatically grants, or warrants that the owner of such material has expressly granted CNN the royalty-free, perpetual, irrevocable, non-exclusive right and license to use, reproduce, modify, adapt, publish, translate and distribute such material (in whole or in part) worldwide and/or to incorporate it in other works in any form, media or technology now known or hereafter developed for the full term of any copyright that may exist in such material."[109]

  38. The Microsoft Network (MSN.com), owned by software giant Microsoft, is a major website that is visited by millions of users on a daily basis. [110] This website is also the umbrella for other websites including Slate, a political magazine.[111] These websites are governed by the same terms of use that make an explicit statement relating to copyright use and ownership.[112] Their terms of service state that the user is granting the website non-exclusive copyright ownership, avoiding the problem with a complete transfer of rights that includes obtaining permission in writing.

  39. The Jerusalem Post website, [113] based in Israel, allows users to send e-mail to the webmasters who then post them in a letters section.[114] The editors at the newspaper state that they reserve the right to edit work submitted for brevity, but there is no additional statement of respective rights asserted between the website and user.[115] This suggests that there are no rights reserved by the newspaper and that copyright is retained by the user who submits e-mail to be posted. Unlike the terms of service provided by CNN, MSN.com and other IPG's, the Jerusalem Post does not state what rights the website and author retain. It therefore places itself at the mercy of legislative whims or potential lawsuits despite the fact that the editors have the ability to review works prior to their posting on the site.

    E. Insurance as Untapped Resource

  40. Although there may be some relief for IPG’s through the proposed Uniform Commercial Code Article 2b, insurance may be the preferable method of protecting the IPG’s interests.[116] Article 2b will likely address passive conduit risk for websites that provide links to other sites that contain information that violates intellectual property rights of third parties.[117] The code would likely provide the blueprint for state action in this area to protect commercial interests. Since this legislation is likely to be implemented in the future, IPG’s should maintain sufficient insurance in the interim to cover potential contingencies.

  41. This insurance policy should include provisions for international coverage since the scope of the Internet allows businesses to interact in foreign jurisdictions.[118] Commercial general liability insurance policies should be purchased with specific attention to the advertising injury provisions.[119] IPG’s should be cautious to make sure that their policies include sufficient protection for their works so that potential infringement claims are covered.

  42. Although some companies recognize the importance of such policies, they have chosen not to maintain liability insurance to cover instances of copyright infringement based on the content, distribution and publication of materials.[120] Suite101.com and The Mining Company specifically recognize that measures taken to reduce online liability could result in stifled growth of their websites and affect the bottom line.[121] It would appear that IPG’s and other websites have not recognized the importance of insurance coverage although both Suite101.com and The Mining Company have noted that they may take measures to protect themselves in the future.[122] For the moment, however, they appear to have placed financial success ahead of protection of the rights of their users although that could change due to changing laws affecting the Internet.[123]

  43. iVillage.com has also recognized that there are problems with the current state of the law in their Securities and Exchange Commission filings. [124] Their filings also reflect the uncertainty of protecting their own interests and those of their licensees in foreign countries due to lack of reciprocity of copyright law under one of the Copyright treaties. The uncertainty in the legal system, combined with potential changes in laws around the world, means that IPG’s must be vigilant about their liability exposure in the intellectual property realm.

    F. Extending the DMCA to Information to IPG Sites

  44. Congress, in recently passing the Digital Millennium Copyright Act[125] (DMCA), has attempted for the first time to deal with the issues raised by the Internet medium.[126] This law implements two major additions to the World Intellectual Property Organization Copyright Treaty. Specifically, by amending Chapter 5 of the Copyright Act, the DMCA provides nearly complete insulation from liability for infringement claims brought against service providers for having infringing materials on their databases.[127] Prior to the DMCA, ISP’s were liable for both infringement that was directly or contributorily attributable to its own actions as well as vicariously liable for the acts of subscribers who are directly infringing.[128] A series of cases, including Religious Technology Center v. Netcom Online Communication Servs. Inc.[129] , Sega Enters. Ltd. v. MAPHIA,[130] and Playboy Enters. Inc. v. Frena,[131] were precursors to the DMCA in that they highlighted the vulnerability of ISP’s to infringement claims.[132]

  45. The DMCA was designed to provide a certain measure of immunity to ISP’s due to the perception that they are not in a position to control the flow of information that flows from their services into cyberspace. IPG’s have grown in size and scope so that they are now in a position rivaling that of many ISPs. Because the DMCA provides certain safe harbors that protect the ISP’s from monetary damages and relief from injunctions under certain circumstances,[133] extending such protection to IPG’s could be considered a logical extension of the law. These IPG’s are part of the fastest growing segment of the economy and their continued growth puts them at risk of lawsuit. To that end, IPG’s should be extended the same coverage provided ISP’s under the DMCA. IPG’s provide many of the same services that ISP’s provide in that they maintain extensive databases containing information that could potentially include infringing materials.

  46. A DMCA style approach would enable IPG’s to operate without fear of incurring additional liability and would provide some measure of legal stability. It would enable online publishing to flourish although some would argue that it is at a tremendous cost. Extending liability protection to IPG’s would prevent authors from going after the deep pockets of the IPG’s should infringement occur. This may have the unintended consequence of reducing the amount of new content online. Authors would choose not to produce content for the Internet and slow down the spread of new information running counter to the purpose of the Internet. Although detractors would point out that the limits on liability would allow IPG’s to get away with having infringing materials on their sites, extending the DMCA to IPG’s would provide the built in safeguards afforded by the four point test so as to allay the fears of detractors.[134]

  47. Critics could also point out that the sophisticated web developer could easily create an IPG-style website such that nearly any website could be turned into an IPG due to the interactive nature of the sites. Although this is a valid criticism, the statute could be tailored to protect only websites with databases larger than a certain size. Therefore, the IPG could still maintain the protections but would not be defined so broadly as to allow anyone and everyone to infringe copyright and intellectual property rights in general.

    VII. Conclusions

  48. Website creation and maintenance has never been easier with the advent of multipurpose editing packages and word processors.[135] Methods for submitting information to services online will continue to become more sophisticated. Sites that include Suite101.com, The Mining Company, iVillage.com and CNN will continue to allow users to post comments and participate in discussions while patrolling for content that may violate user guidelines. However, those sites continue to have tremendously differing positions as to how the information posted may be used and what the ownership rights in that material may be.

  49. Although there are Internet users who would argue that there is no reason to give copyright protection to the Internet, the medium is used by those who still abide by traditional notions of copyright and therefore would want traditional notions of protection extended to the Internet. There must be some reason and purpose for people to continue to post information to the Internet and reap the benefits of their works without fear of losing rights in the digital medium. Therefore, some form of protection should be considered.

  50. International agreement on copyright protection of an individual' s expressions in a digital arena has to be considered. Even if there is no additional treaty to deal specifically with the Internet and protection of intellectual property in the online environment, it is incumbent upon those who wish to ensure protection around the world to find a way to bring those countries which are not currently members of the Berne Convention or UCC into the fold. However, even reliance upon an international copyright protection scheme is not going to solve the problem of copyright infringement on the Internet. The Internet knows no boundaries and national attempts to protect the rights of citizens have only created a hodgepodge of regulations that provide disparate protections. Furthermore, the combination of high technology, the complexities of copyright law, and legislators and policy-makers who are unfamiliar with those complexities means that the potential laws to be enacted will not meet the needs of future users of the Internet and its successors.[136]

  51. One major drawback of protecting the copyright of individuals is that many websites offer anonymous posting. This means that the actual identity of the poster of information is unknown except for an alias or number. Anonymity conflicts with the ability to protect copyright as individuals can simply use an alias to post information that is copyrighted elsewhere or infringe upon the rights of others at any given website. Several lawsuits designed to attack anonymous posters of sensitive information[137] may have the unintended result of spurring further encryption and cloaking technologies to protect identities from being revealed.[138] Although anonymity is one of the few jealously guarded rights on the Internet, it should not be allowed to circumvent the copyright protections afforded writers and artists in their expression of ideas in words and graphics on the Internet.

  52. Extending the DMCA to the IPG beyond the current ISP protection would give information providers some measure of protection although some would suggest it is at the expense of the content writers. However, combining the DMCA protection with non-exclusive licenses to use the works of authors online would provide all the parties sufficient protection. Authors worried about the protection of their works online need to be careful in choosing where to post online. Choosing an appropriate IPG may be the only protection these authors have in the digital medium. The IPG agreement with the author may provide sufficient protection for authors although that too is dependent upon the individual IPG agreement. Websites that are less scrupulous in their copyright disclaimers relating to posting messages may open the door to potential lawsuits by individuals who think those hosting companies are profiting from the work of others without proper compensation.[139] Since content is a valuable commodity online, protecting that interest is going to be a significant issue for years to come. In the meantime, it is likely that IPG’s will utilize a combination of contractual relationships and insurance to overcome the potential liability pitfalls that may arise in the current litigious environment.

Footnotes

* B.A., M.A. University at Albany, State University of New York; J.D. 1999 Albany Law School of Union University. The author wishes to thank Professor Sandra Stevenson for her guidance and friends for their support. Deepest gratitude to my family, who have made this possible. This paper won first prize in the 1998-99 ASCAP Nathan Burkan Memorial Competition for Best Copyright Paper at Albany Law School.

[1] The Internet is a network of computers attached via links that connect smaller computer networks with one another so that they form an interconnected web. ACLU v. Reno, 929 F. Supp. 824, 830 (E.D. Pa. 1996). See also Internet Society (ISOC) All About the Internet: A Brief History of the Internet (visited May 5, 1999) <http://www.isoc.org/internet-history/brief.html> (defining the Internet as "... the global information system that -- (i) is logically linked together by a globally unique address space based on the Internet Protocol (IP) or its subsequent extensions/follow-ons; (ii) is able to support communications using the Transmission Control Protocol/Internet Protocol (TCP/IP) suite or its subsequent extensions/follow-ons, and/or other IP-compatible protocols; and (iii) provides, uses or makes accessible, either publicly or privately, high level services layered on the communications and related infrastructure described herein.").


[2] See ACLU v. Johnson , 4 F. Supp. 2d 1029, 1031 (1998). In Johnson the court found that by 1998, the Internet has reached 159 countries and over 109 million users who access a variety of services including chat services, electronic mail (e-mail), mail exploders (listservs), Internet Relay Chat (IRC), USENET newsgroups, Web-based discussion groups, and the World Wide Web (WWW). These services enable users to view and access information posted to those services from any point around the world. More recent data suggests that there are currently 147.8 million users and that this number is expected to continue growing. See also CNN, Web not so U.S.-centric anymore (visited April 25, 1999) <http://www.cnn.com/TECH/computing/9903/15/webworld.idg/>.


[3] See Hobbes' Internet Timeline - the definitive Internet history (visited May 6, 1999) <http://www.isoc.org/guest/zakon/Internet/History/HIT.html> (showing the progression from pure theoretical research to use as a research and economic transactional system worldwide).


[4] See Denise Caruso, Digital Commerce: Should an Extension of Current Copyright Law, Tweaked a Bit, Govern the Internet?, N.Y. TIMES, July 15, 1996, at D7.


[5] Michael Meyer & Anne Underwood, Crimes of the 'Net, NEWSWEEK, Nov. 14, 1994, at 46.


[6] See Barbara Cohen, A Proposed Regime For Copyright Protection on the Internet, 22 B ROOK. J. INT' L L. 401, 405.


[7] Stephen Fraser, The Copyright Battle: Emerging International Rules and Roadblocks on the Global Information Infrastructure, 15 J. MARSHALL J. COMPUTER & INFO. L. 759, 761-762.


[8] See INFORMATION INFRASTRUCTURE TASK FORCE, INTELLECTUAL PROPERTY AND THE N ATIONAL INFORMATION INFRASTRUCTURE: THE REPORT OF THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS 1 (1995) (showing that the U.S. has spent considerable time and effort in developing a working policy towards the Internet and balancing the rights of the involved parties in the online environment). See also Dan Thu Thi Phan, Will Fair Use Function on the Internet?, 98 C OLUM. L. REV. 169, 173.


[9] Information can be posted by users via e-mail, HTML webpages, discussion groups as well as by completing pre-formatted pages.


[10] Information provider/gatherer (IPG) websites is a term developed to describe any website, as opposed to newsgroups, that allows a user to input information to a database that allows other users to both access and view the information. It can take the form of sites that provide their own information or news as well as those sites that are completely user generated. This definition encompasses sites like Suite101.com, The Mining Company (now operating as About.com), iVillage.com, CNN, The Microsoft Network, Slate Magazine and Jerusalem Post that allow user feedback or postings to various discussion areas.


[11] See Digital Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860, Enacted H.R. 2281 (1998).


[12] See Cohen, supra note 6, at 408.


[13] See id.


[14] See Richard S. Zembek, Comment, Jurisdiction and the Internet, 6 ALB. L. J. SCI. & TECH. 339, 345 (1996), see also Michael L. Siegel, Hate Speech, Civil Rights and the Internet: The Jurisdictional and Human Rights Nightmare, 9 ALB. L.J. SCI. & TECH. 375 (1999).


[15] See Siegel, supra note 14.


[16] See Zembek, supra note 14, at 350.


[17] 326 U.S. 310 (1945); see also Zembek, supra note 14, at 350.


[18] 326 U.S. 310, at 318.


[19] See Hess v. Pawloski , 274 U.S. 352, 356 (1927); see also Michele N. Breen, Comment, Personal Jurisdiction and the Internet: "Shoehorning" Cyberspace Into International Shoe, 8 S ETON HALL CONST. L.J. 763, 778 (1998); see also Siegel, supra note 14.


[20] 444 U.S. 286, 292 (1980).


[21] See Breen, supra note 19, at 783-784.


[22] See Breen, supra note 19, at 790.


[23] See id. at. 791. See also Inset Systems Inc. v. Instruction Set, Co. , 937 F. Supp. 161 (1996).


[24] See Breen , supra note 19, at 806-807. See also Inset Systems, 937 F. Supp. at 161.


[25] Inset Systems, 937 F. Supp. at 165.


[26] See The Mining Company (visited May 6, 1999) <http://www.miningco.com>. Since the writing of this article, this company has been renamed About.com. Despite the new name, the terms of involvement and documents pertaining to the article have remained the same.


[27] See Cable News Network (CNN) (visited May 6, 1999) <http://www.cnn.com>.


[28] See Suite101.com Main Page (visited May 6, 1999) <http://www.suite101.com>.


[29] See iVillage.com: The Women's Network (visited April 25, 1999) <http://www.ivillage.com>.


[30] See The Jerusalem Post (visited May 6, 1999) <http://www.jpost.com>.


[31] See U.S. CONST. art. I, § 8, cl. 8. Congress is granted the authority "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." See also Joan Gilsdorf, Copyright Liability of On-Line Service Providers, 66 U. CIN. L. REV. 619, 627.


[32] See Feist Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 349-50 (1991).


[33] See U.S. COPYRIGHT OFFICE, COPYRIGHT BASICS (CIRCULAR 1) (visited April 26, 1999) <http://lcweb.loc.gov/copyright/circs/circ1.html>. See also 17 U.S.C. § 106(1) (1994).


[34] 17 U.S.C. § 106(2) (1994).


[35] Id. at § 106(3).


[36] Id. at § 106(4).


[37] Id. at § 106(5).


[38] Id. at § 106(6).


[39] See id. at § 102(a).


[40] See id. at § 102(b).


[41] Carl S. Kaplan, Online Publisher Challenges Copyright Law (visited May 6, 1999) <http://www.NYTimes.com/library/tech/99/01/cyber/cyberlaw/15law.html>.


[42] See id.


[43] See id.


[44] MAI Sys. Corp. v. Peak Computer Inc., 991 F.2d 511 (9th Cir. 1993); see also Advanced Computer Servs. of Mich. Inc. v. MAI Sys. Corp., 845 F. Supp. 356 (E.D. Va. 1994).


[45] See David G. Post, New Wine, Old Bottles: The Case of the Evanescent Copy (visited April 25, 1999) <http://www.eff.org/pub/Publications/David_Post new_wine_old_bottles_post.article>.


[46] See U.S. COPYRIGHT OFFICE, INTERNATIONAL COPYRIGHT RELATIONS OF THE UNITED STATES, CIRCULAR 38a (visited April 25, 1999) <http://lcweb.loc.gov/copyright/circs/circ38a>.


[47] Berne Convention for the Protection of Literary and Artistic Works, July 24, 1971, S. Treaty Doc. No. 99-27, 828 U.N.T.S. 221 (1986).


[48] World Intellectual Property Organization: Copyright Treaty, Dec. 20, 1996, 36 I.L.M. 65; WIPO Copyright Treaty (visited April 25, 1999) <http://www.wipo.org/eng/main.htm>. The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations working to improve intellectual property protection around the world. David M. Young, Congress Modifies Copyright Protections for the Digital Age, LEGAL BACKGROUNDER , February 19, 1999 (via Lexis).


[49] Universal Copyright Convention, opened for signature Sept. 6, 1952, 6 U.S.T. 2732, 216 U.N.T.S. 132, revised by the Universal Copyright Convention, done on July 24, 1971, U.S.T. 1341, 943 U.N.T.S. 178.


[50] See generally , COPYRIGHT OFFICE, supra note 46.


[51] See Barry M. Leiner et al., A Brief History of the Internet (visited May 5, 1999) <http://www.isoc.org/internet-history/brief.html>.


[52] See id.


[53] See id.


[54] See Sheldon Elliot Steinbach et al., Agreement on Guidelines for Classroom Copying in Not-For-Profit Educational Institutions, H.R. REP. NO. 94-1476, at 68-70 (1976), reprinted in 1976 U.S.C.A.A.N. 5659, 5681-83.


[55] See id.


[56] See Stephana I. Colbert & Oren R. Griffith, The Impact of "Fair Use" in the Higher Education Community: A Necessary Exception?, 62 A LB. L. REV. 437, 440 (1998).


[57] See Leiner , supra note 51.


[58] See David Merrylees, Brazil's IP Revolution: A Plethora of New Rights (visited March 17, 1999) <http://www.ipww.com/may98/p21_brazil.html>.


[59] See id.


[60] See Australia To Protect Online Copyright Material, ASIA PULSE, February 26, 1999 available on LEXIS, Asiapc Library, Apulse File.


[61] See id.


[62] See id.


[63] See id.


[64] The legislation, Gesetz zur Regelung der Rahmenbedingungen fur Informations - und Kommundikationsdienste (IuKDG) [The Federal Act Establishing the General Conditions for Information and Communication Services -- Information and Communication Services Act], was passed June 13, 1997 by the German Bundestag. Frithjof A. Maennel & Beth Noveck, Germany Enacts Sweeping Internet/Multimedia Law (visited March 19, 1999) <http://www.ljx.com/internet/11-12germany.html>.


[65] See id.


[66] See id.


[67] See id. Mediendienste [The Interstate Agreement on Media Services] grants the German states authority to regulate various content while the federal government retains authority over ISPs.


[68] See id.


[69] See id.


[70] See id.


[71] See id.


[72] See Lexis-Nexis Website (visited May 6, 1999) <http://www.lexis.com>; Westlaw, Westlaw Homepage (visited May 6, 1999) <http://www.westlaw.com>; Encyclopædia Britannica Online (visited April 19, 1999) <http://www.eb.com>.


[73] See Encyclopædia Britannica Online, supra note 72.


[74] See Encyclopædia Britannica Online: Copyright, Trademarks and Usage (visited April 19, 1999) <http://www.eb.com/about/copyright.html> (prohibiting use of more than fifteen percent of any article found in the website or one thousand words whichever is less in addition to requiring proper attribution to all citations of Encyclopædia Britannica materials).


[75] See Encyclopædia Britannica Online: Usage Agreement (visited April 19, 1999) <http://www.eb.com/about/usage.htm>.


[76] See Encyclopædia Britannica Online: Subscription Options (visited April 19, 1999) <http://subscribe.eb.com/>.


[77] See Cohen, supra note 6, at 423.


[78] See id.


[79] See id. Enforcement can include taping broadcasts, examinations of station logs, checking programs as well as looking for non-licensee use of copyrighted materials.


[80] See id. at 432.


[81] See id.


[82] See id. at 423-24. The primary drawback of these societies in the recording industry is that they are national in scope and are not in a position to protect copyright in the far reaches of the globe. Therefore, many of these societies have reciprocal agreements with foreign based societies.


[83] See id. at 425.


[84] See ASCAP's Calculator for the ASCAP Online User Agreement (visited April 11, 1999) <http://www.ascap.com/weblicense/webintro.html>.


[85] See ASCAP Internet Licensing: Frequently Asked Questions (visited April 11, 1999) <http://www.ascap.com/weblicense/webfaq.html>.


[86] See BMI General Licensing (visited May 6, 1999) <http://www.bmi.com/licensing/genlic.html>.


[87] See The History of the Internet and the WWW (visited Oct. 4, 1999) <http://members.magnet.at/dmayr/history.htm> (stating that Microsoft Internet Explorer and Netscape Navigator are the two most commonly used browsers of the World Wide Web although all can trace their lineage to Mosaic.)


[88] See id.


[89] See id.. URL’s or Uniform Resource Locators are the underlying software architecture that allows people to link from one website to another.


[90] See id.


[91] See David G. Post, Copyright, Copyright Management, and Freedom of Expression (visited April 25, 1999) <http://www.cli.org/DPost/X0017_TALK1.html>.


[92] See Suite101.com Media Kit (visited April 25, 1999) <http://www.suite101.com/info.cfm/kit>.


[93] See id.


[94] See Suite101.com Disclaimer and Posting Rules (visited April 25, 1999) <http://www.suite101.com/info.cfm/policy_disclaimer>.


[95] Id.


[96] See id.


[97] See id.


[98] See 17 U.S.C. § 204 (1994).


[99] See The Mining Company (visited April 25, 1999) <http://www.miningco.com>.


[100] See iVillage: The Women 's Network - Terms of Service (visited April 25, 1999) <http://www.ivillage.com/help/tos.html>.


[101] See id.


[102] See id.


[103] See id.


[104] See CNN, supra note 27.


[105] See CNN Community (visited April 25, 1999) <http://www.cnn.com/discussion/standards.html>.


[106] See id. (specifically stating "Access to and use of the Service and the Sites are subject to the terms and conditions of this User Agreement and Copyright Notice and all applicable laws and regulations, including laws and regulations governing copyright and trademark."


[107] See CNN Interactive SERVICE AGREEMENT (visited April 25, 1999) <http://cnn.com/interactive_legal.html>.


[108] See id.

[109] Id.


[110] See MSN.COM (visited April 25, 1999) <http://www.msn.com>.


[111] See Slate Magazine - Table of Contents (visited April 25, 1999) <http://www.slate.com>.


[112] See WEB SITE TERMS OF USE, INCLUDING PRIVACY STATEMENT (visited April 25, 1999) <http://home.microsoft.com/terms/> ("By posting messages, uploading files, inputting data, or engaging in any other form of communication through this Web site, you are granting Microsoft permission to: 1.Use, modify, copy, distribute, transmit, publicly display, publicly perform, reproduce, publish, sublicense, create derivative works from, transfer, or sell any such communication. 2.Sublicense to third parties the unrestricted right to exercise any of the foregoing rights granted with respect to the communication. The foregoing grants shall include the right to exploit any proprietary rights in such communication, including but not limited to rights under copyright, trademark, service mark or patent laws under any relevant jurisdiction.")

[113] The Jerusalem Post, supra note 30.


[114] See The Jerusalem Post Newspaper: Online News From Israel (visited March 8, 1999) <http://www.jpost.co.il/com/Letters/>.


[115] See id.


[116] See David B. Goodwin and Steven O. Weise, Risk Management in Cyberspace (visited April 24, 1999) <http://www.hewm.com/search/art.shtml?id=295>.


[117] See id. Conduit risk is where the content of one website infringes on the intellectual property rights of third parties and a website provides only a web link to that site.


[118] See id.


[119] See id. Advertising injury provisions typically cover intellectual property claims and modern forms of these provisions state to varying degrees the claims for which coverage is warranted.


[120] See SUITE 101 COM (BOWG) form 10Ksb (April 15, 1999), available at Yahoo! Finance (visited Nov. 12, 1999) <http://sec.yahoo.com/e/990415/bowg.html>.


[121] See id. See also MININGCO.COM Form S-1 (Dec. 30, 1998), available at EDGAR ONLINE SEC Filing (visited Nov. 12, 1999) <http://www.edgar-online.com>. Various IPG’s have included sections dealing with online liability as a matter of course in their financial statements but they have generally treated such liability as a cost of doing business online.


[122] See id.


[123] See id. See also EBAY Form 10k (Aug. 9, 1999), available at Yahoo! Finance (visited Nov. 13, 1999) <http://sec.yahoo.com/e/l/e/ebay.html> . Ebay, an online auction website, has encountered substantial difficulties in protecting the intellectual property of others from auctions where items are potentially infringing on the intellectual property of the rights holders. They recognize that lawsuits could arise over claims of infringement but they are not currently pursuing any additional changes in their policy since it would deter from the success of the business.


[124] See iVillage.com Form S-1 (Dec. 11, 1998), available at EDGAR ONLINE SEC Filing (visited Nov. 13, 1999) <http://www.edgar-online.com>.


[125] See Richard Raysman and Peter Brown, The Digital Millennium Copyright Act, THE NEW YORK LAW JOURNAL, p. 3 (via LEXIS).


[126] See id.


[127] See id. Service provider is defined as A ... an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user's choosing, without modification to the content of the material as sent or received.@ 105 P.L. 304; 112 Stat. 2860; 1998 Enacted H.R. 2281; 105 Enacted H.R. 2281. Furthermore, it states that [a]s used in this section, other than subsection (a), the term 'service provider' means a provider of online services or network access, or the operator of facilities therefor, and includes an entity described in subparagraph (A).


[128] See Gilsdorf, supra note 31, at 635.


[129] 907 F. Supp 1361 (N.D. Cal. 1995) (holding that contributory infringement was a possible source of liability).


[130] 857 F. Supp. 679 (N.D. Cal. 1994) (holding that the BBS was liable for infringement for actively encouraging the infringing activities).


[131] 839 F. Supp., 1552 (M.D. Fla 1993) (holding that the defendant was liable for direct infringement for posting digitized images from the plaintiffs magazines).


[132] See Karen S. Frank, Online International Trademark and Copyright Issues, GLOBAL TRADEMARK AND COPYRIGHT, 1998: P ROTECTING INTELLECTUAL PROPERTY RIGHTS IN THE INTERNATIONAL MARKETPLACE (Siegrun D. Kane and Mark A. Steiner eds., 1998).


[133] See 17 U.S.C. § 512 (a-d) (1999).


[134] See id.


[135] Software packages include Netscape Communicator Suite that bundles an HTML composer with the Navigator browser, Adobe Photoshop to create and manipulate images, Gif Construction Set that allows the creation of moving images and Microsoft Office or Corel WordPerfect that are multipurpose word processing suites. See also Siegel, supra note 14.


[136] See Fraser, supra note 7, at 761-762.


[137] See Carl S. Kaplan, Cyber Law Journal: Companies Fight Anonymous Critics With Lawsuits (visited April 25, 1999) <http://www.nytimes.com/library/tech/99/03/cyber/cyberlaw/12law.html>.


[138] See id.


[139] See 17 U.S.C. § 506(a) (1994).