Perfect 10 v. Google: Naked Pictures Copyright Case Continues

Perfect 10, Inc., the former publisher of Perfect 10 Magazine, is back at it with Google over whether Google’s display of certain images of scantily clad women infringes the copyrights owned by Perfect 10. Perfect 10 created and sold pictures of nude models through a now defunct print magazine, and now creates and sells pictures through a password-protected subscription website. Simultaneous actions are pending in both United States and Canada, each with recent rulings over the last two weeks, with a ruling in Canada on July 18, 2010, and a ruling on Google’s motion for summary judgment in the United States District Court for the Central District of California on July 26, 2010.

On July 18, 2010, Perfect 10 announced that the Canadian Federal Court denied Google’s attempt to dismiss Perfect 10’s copyright infringement lawsuit against Google in Canada. “We are heartened by this ruling,” said Dr. Norm Zada, President of Perfect 10 and a former professor at Stanford and Columbia Universities. “The court rejected Google’s argument that Perfect 10 could not sue Google in Canada because Perfect 10 was in litigation against Google in the United States,” said Zada. “Perfect 10’s case against Google in the United States has been going on for almost six years,” Zada added.

Presumably in addressing whether the Canadian action was merely re-litigating the same exact claim that is being litigated in the United States, and has been litigated in the United States since 2004, the Canadian court stated, “I am satisfied, that the claim for copyright infringement in either jurisdiction arises by virtue of rights created by statute – separate legislative schemes in Canada and the United States, that in cases of alleged infringement, give rise to different causes of action, different defenses and different remedies.” The court further stated that “I am not satisfied that the claims, based on two different statutes, are the same.”

“Google continues to display approximately 22,000 Perfect 10 thumbnails in Google Image Search results, including in Canada, and refuses to remove those images,” says Zada. “This case is inherently different from the Viacom v. Google case, where the Judge apparently felt that Google expeditiously processed Viacom’s notices. Our experience with Google is that Google processes almost no notices from small companies,” Zada adds. “I have sent more than 500 notices of infringement to Google,” Zada said. “I basically do a Google Image search, cross off the images Perfect 10 does not own, and send an Adobe copy of that Google web page to Google, with the infringing images clearly marked. Google can clearly see which images are infringing and where they are located. Yet Google has refused to process those notices,” Zada says.  But that is not exactly what the United States District Court for the Central District of California found.  In fact, the US District Court found that almost all of Prefect 10’s take down notices were defective because they did not include the appropriate information mandated by statute to be included in the notice.

In fact, in the United States action there was a ruling on Google’s summary judgment motion just days ago, on July 26, 2010. The US case history starts back on November 19, 2004, Perfect 10 filed suit against Google, Inc., alleging a variety of claims, including direct, contributory, and vicarious copyright infringement. It alleged that Google, the world’s largest search engine and provider of other internet services, infringed and continues to infringe on its copyright by, among other things, linking to third-party websites that host images that infringe Perfect 10’s copyrights, caching portions of websites that host infringing images, and hosting infringing images on its own servers that have been uploaded by users of its “Blogger” service.

In three separate motions, Google has moved for partial summary judgment that it is entitled to immunity under three different provisions of the Digital Millennium Copyright Act (“DMCA”). Specifically, Google asserts that it deserves safe harbor under 17 U.S.C. § 512(d) for its web and image searches, under 17 U.S.C. § 512(b) for its caching feature, and under 17 U.S.C. § 512(c) for its Blogger service. Ultimately the District Court granted in part and denied in part Google’s motion for partial summary judgment of entitlement to safe harbor under 17 U.S.C. § 512(d) for its Web and Image Search. Furthermore, the District Court granted Google’s motion for partial summary judgment for its caching feature based on 17 U.S.C. § 512(d), without having to assess whether it would be separately entitled to safe harbor under 17 U.S.C. § 512(b). The District Court also granted Google’s motion for partial summary judgment of entitlement to safe harbor under 17 U.S.C. § 512(c) for its Blogger feature.

The DMCA provides immunity from certain copyright infringement liability when three threshold conditions are met. This so-called safe harbor immunity requires: (1) the party must be a service provider as defined under 17 U.S.C. § 512(k)(1)(B); (2) the party must have “adopted and reasonably implemented, and inform subscribers and account holders of the service provider’s system or network of a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers.” 17 U.S.C. § 512(i)(1); and (3) the party must accommodate and not interfere with standard technical measures used by copyright owners to identify or protect copyrighted works. 17 U.S.C. §§ 512(i)(1)-(2).

Prefect 10 did not not dispute that Google meets the first and third threshold requirements service provider status and non-interference with standard technical measures. They did, however, argue that there are genuine issues of material fact as to whether Google has implemented a suitable repeat infringer policy. Siding with Google, the District Court found that Google did have suitable repeat infringer policies, which thereby would entitle them to the protections of DMCA safe harbor immunity, at least on a threshold level. Specifically, Perfect 10 only alleged that there were not sufficient repeat infringer policies in place with respect to Google’s Blogger service, but the Court found that Google provided clear evidence that it terminates Blogger users who repeatedly or blatantly infringe copyright. By satisfying the DMCA threshold prerequisites Google could make an argument based on their factual handling of notifications that their servers contained unauthorized copyrighted files. So Google was entitled to argue that safe harbor protections applied.

The District Court largely handed Google the summary judgment victory it sought, but there were two notable exceptions that dealt with notifications of copyright infringement sent from Perfect 10 to Google. The parties divided these DMCA notices into three groups based on when they were sent to Google. The Group A notices consist of email communications that P10 sent between May 11, 2001 and July 6, 2001. The Group B notices comprise notices sent primarily in Excel spreadsheet form between May 31, 2004 and April 24, 2007. The Group C notices were provided on DVDs and external hard drives between December 9, 2005 and June 13, 2009.

Unfortunately for Perfect 10, most of the copyright infringement notices they sent to Google that were intended to invoke the DMCA and put Google to action to rectify the infringement were defective. In short, the Group A notices and the Group C notices were defective, and some of but not all of the Group B notices were defective. So Perfect 10 prevented a complete Google victory on summary judgment because some of their Group B notices satisfied the requirements of the DMCA.

It is difficult to understand how or why Prefect 10 was unable to send a DMCA notification that satisfied the requirements of the statute. The DMCA provides the formula and specifically identifies what a takedown letter must include. For example, you must provide at a minimum:

1. A physical or electronic signature (i.e., /s/NAME) of a person authorized to act on behalf of the owner of the copyright that is allegedly infringed.
2. Identification of the copyrighted work claimed to have been infringed.
3. Identification of the material that is claimed to be infringing and information reasonably sufficient to permit the service provider to locate the material.
4. Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted.
5. A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner.
6. A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of the copyright that is allegedly infringed.

For more on DMCA take down letters see Sample DMCA Take Down Letter.

In any event, Perfect 10 contends that a substantial portion of Google’s yearly revenue is attributable to Google’s unauthorized use of intellectual property on a massive scale. “I believe that Google makes hundreds of millions of dollars each year by placing unauthorized Google Ads around hundreds of thousands of images, including Perfect 10 images, and by placing such ads around tens of thousands of celebrity images, without the permission of the celebrity. What Google does in cyberspace it would never get away with in the real world,” says Zada.

Given that Perfect 10 is litigating in both the United States and Canada, and the US case has already once gone up to the United States Court of Appeals for the Federal Circuit, it seems likely we have not heard the last of this matter.