Advanced Copyright Issues on the Internet - Fenwick & West LLP

of its secondary liability claims because the district court failed to consider whether Google andAmazon.com knew of infringing activities yet failed to take reasonable and feasible steps torefrain from providing access to infringing images. Accordingly, the Ninth Circuit remanded thecase to the district court for further proceedings on this point, as well as to consider whetherGoogle and Amazon.com would qualify for any of the safe harbors of the DMCA, an issuewhich the district court did not consider because of its rulings. Because the district court wouldneed to reconsider the appropriate scope of injunctive relief after addressing the secondaryliability issues, the Ninth Circuit decided that it need not address the parties’ dispute overwhether the district court abused its discretion in determining that Perfect 10 satisfied theirreparable harm element of a preliminary injunction. 3535. Healthcare Advocates, Inc. v. Harding, Earley, Follmer & FraileyIn Healthcare Advocates, Inc. v. Harding, Earley, Follmer & Frailey, 354 the court ruledthat display of copyrighted images on computer monitors within a law office constituted a publicdisplay, but was permitted under the fair use doctrine. Healthcare Advocates had filed a lawsuitalleging that a competitor infringed trademarks and copyrights and misappropriated trade secretsbelonging to Healthcare Advocates. The defendants in that case were represented by theboutique IP law firm of Harding, Earley, Follmer & Frailey. To aid in preparing a defense, ontwo occasions employees of the Harding firm accessed screenshots of old versions of HealthcareAdvocates’ web sites that had been archived by the Internet Archive’s web site(www.archive.org). The old versions of the web site were accessed through the “WaybackMachine,” an information retrieval system offered to the public by the Internet Archive thatallowed users to request archived screenshots contained in its archival database. Viewing thecontent that Healthcare Advocates had included on its public web site in the past was very usefulto the Harding firm in assessing the merits of the trademark and trade secret allegations broughtagainst the firm’s clients. The Harding firm printed copies of the archived screenshots of interestand used the images in the litigation against their clients. Healthcare Advocates then sued theHarding firm, alleging that viewing the screenshots of the old versions of their web site oncomputers within the firm constituted an infringing public display, and that printing of copies ofthose screenshots and storing them on hard drives at the firm also infringed the company’scopyrights. 355The court ruled that, “[u]nder the expansive definition of a public display, the display ofcopyrighted images on computers in an office constitutes a public display.” 356 The courtconcluded, however, that the Harding firm’s display and copying of those images for purposes ofdefending its clients in the litigation brought by Healthcare Associates constituted a fair use.With respect to the purpose of the use, the court noted that the images were used to betterunderstand what Healthcare Associates’ complaint, which did not specify what had been353354355356Id. at 1176-77.2007 U.S. Dist. LEXIS 52544 (E.D. Pa. July 20, 2007).Id. at *2-10.Id. at *19.- 89 -