Advanced Copyright Issues on the Internet - Fenwick & West LLP

(1) Cases Holding That Mere Posting Is a DistributionIn Playboy Enterprises, Inc. v. Frena, 368 the court, with very little analysis of the issue,held a BBS operator liable for infringement of the public distribution right for the making ofphotographs available through the BBS that were downloaded by subscribers, even though thedefendant claimed he did not make copies of the photographs himself. But because the BBS wasapparently one devoted to photographs, much of it of adult subject matter, and subscribersroutinely uploaded and downloaded images therefrom, the court seems to have viewed thedefendant as a direct participant in the distributions to the public that took place through theBBS.Similarly, in Playboy Enterprises, Inc. v. Chuckleberry Publishing Inc., 369 the court ruledthat uploading copyrighted pictorial images onto a computer in Italy which could be accessed byusers in the United States constituted a public distribution in the United States. In contrast to theNetcom case, the court noted that the defendant did more than simply provide access to theInternet. Instead, the defendant provided services and supplied the content for those services,which gave users the option to either view or download the images. By actively solicitingUnited States customers to the services, the court concluded that the defendant had distributed itsproduct within the United States.In Playboy Enterprises, Inc. v. Webbworld, Inc., 370 the court held the defendants directlyliable for infringing the distribution right by making copyrighted images available through awebsite for downloading by subscribers. The court found that, in contrast to the Netcom case,the defendants took “affirmative steps to cause the copies to be made.” 371The court in Marobie-FL, Inc. v. National Association of Fire Equipment Distributors 372ruled that the placement of three files containing copyrighted clip art on the Web page of thedefendant constituted a direct violation of the plaintiff’s distribution right because the files wereavailable for downloading by Internet users and were transmitted to Internet users upon request.In all of the preceding four cases, it was apparent that actual downloads of completecopies of the copyrighted material had taken place, and this fact, coupled with affirmative stepstaken by the defendants to promote the acts of downloading, seem to have led those courts tofind a violation of the distribution right. The more difficult cases of line drawing have arisen inthe peer-to-peer file sharing cases, many of which are discussed in the remainder of thissubsection and the next subsection, in which the defendant often merely makes availablecopyrighted files for sharing (through a “shared file” folder used by the peer-to-peer clientsoftware), but does not take additional affirmative steps to promote the downloading of copies ofthose files. In addition, there often is not clear proof in those cases whether actual downloads368369370371372839 F. Supp. 1552 (M.D. Fla. 1993).939 F. Supp. 1032, 1039 (S.D.N.Y. 1996).45 U.S.P.Q.2d 1641 (N.D. Tex. 1997).Id. at 1647.45 U.S.P.Q.2d 1236 (N.D. Ill. 1997).- 93 -