In Amended Opinion, Ninth Circuit Vacates Injunction Against Google But Directs Consideration of Ease of Stopping Infringement

Case: Perfect 10, Inc. v. Amazon.com, Inc., No. 06-55405 (9th Cir. 12/3/07)

Summary: In a copyright infringement case, the panel reversed a district court preliminary injunction stopping Google from displaying thumbnail images of plaintiff’s copyrighted nude photographs because Google was likely to prevail on its fair use defense. However, the panel remanded to the district court for consideration of factual questions as to whether Google could be contributorily liable for copyright infringement if it knew of specific infringing material but failed to take simple steps to prevent infringement. The district court was also to consider whether Google was entitled to a defense under the DMCA.



Ninth Circuit Holdings:

• Because the court had jurisdiction of the case due to plaintiff’s registration of some copyrighted works, the panel’s broad authority over remedies could extend to a preliminary injunction for non-registered copyrights as well.


• The district court erred in holding that plaintiff had the burden of proving that it would overcome Google’s fair use defense. On a preliminary injunction, the defendant had a burden of showing it was likely to succeed in proving fair use because defendant would bear that burden at trial.


• The panel affirmed the district court’s ruling that in-line framing of full size images by the Google browser did not violate the display, performance or distribution rights under copyright law. Google’s servers did not have a copy of the image, but rather used an HTML instruction to direct the browser to the web site publisher’s computer with the image.


• Plaintiff Perfect 10 established a prima facie case of copyright infringement of its display right for Google’s storage and display of thumbnail images in its image search feature.


• The fact that Google provided links to infringing web sites was not an abuse of good faith and fair dealing that would deprive Google of the ability to establish a fair use defense.


• The panel disagreed with the district court on the first fair use factor, the purpose and character of the use, holding that the factor weighed heavily in favor of Google. Google’s creation of a search index with the thumbnails was transformative, and outweighed the possibility that the thumbnails could supersede Perfect 10’s sale of cell phone downloads, and the minor commercial effect of Google’s use.


• The nature of the use factor favored Perfect 10 slightly. The images had been previously published, so were not entitled to the higher protection for unpublished images. The unretouched photographs of nude models were artistic and entitled to protection just as images of the American West were protected in Kelly v. Arriba Soft Corp., 336 F.3d 811, 816 (9th Cir. 2003).


• As in Kelly, the amount of use factor was neutral because Google’s search index of images needed to incorporate the entire image to be useful.


• On the fourth fair use factor, market harm, the potential that Google users could download thumbnails of the Perfect 10 images and hurt Perfect 10’s sales to cell phone users was hypothetical and not entitled to weight.


• In weighing all the factors, the panel concluded that Google’s thumbnails were a fair use, and reversed the district court’s granting of a preliminary injunction stopping use of the thumbnails.


• The district court properly refused to infer that Google users directly infringed by having infringing images stored on their local computers in the absence of any evidence from Perfect 10 on the issue.


• The local cache copy of an image made by a browser to allow Internet use was a fair use.


• The panel remanded for the district court to make factual findings as to the panel’s newly announced test:

  “[A] computer system operator can be held contributorily liable if it ‘has actual knowledge that specific infringing material is available using its system,’ Napster , 239 F.3d at 1022, and can ‘take simple measures to prevent further damage’ to copyrighted works, Netcom, 907 F. Supp. at 1375, yet continues to provide access to infringing works.”



• The district court properly found that Perfect 10 was not likely to succeed on its claim of vicarious liability for copyright infringement because Google lacked the right or ability to control the infringing acts of users who posted infringing images. Google did not have image analysis software that would allow it to screen infringing images.


• On remand, the district court should determine factual questions as to whether Google is entitled to protection under the notice and takedown provisions of the DMCA.


• On remand, the district court should resolve factual questions as to Amazon’s contributory liability and its DMCA defense.

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No Need To Engage In Likelihood Of Confusion Analysis Where Consumers Could Not Be Confused About A Product's Origin

Case: Top Tobacco, L.P. v. North Atlantic Operating Company, Inc., Case No. 07-1244 (7th Circuit Court of Appeals, December 4, 2007)

The One Sentence Summary: A picture is worth a thousand words: here, one glance is enough to decide that there is no probability of confusion.


Top Tobacco sued its competitor, North Atlantic Operating Company ("North Atlantic"), because North Atlantic re-designed its competing product with a label that included the phrase "Fresh-Top Canister." Top Tobacco claimed that North Atlantic could not use the word "top" as a trademark.

The Seventh Circuit Court of Appeals affirmed the district court's grant of summary judgment for North Atlantic, finding that "[i]t is next to impossible to believe that any consumer, however careless, would confuse these products." Under the circumstances, there is no need to analyze the "likelihood of confusion" factors because they are mere proxies for determining whether there is confusion. "If we know for sure that consumers are not confused about a product's origin, there is no need to consult even a single proxy."

Here is my favorite passage: "the word 'top' is too common, and too widely used to refer to the lids of packages - as well as parts of clothing ensembles, masts of ships, summits of mountains, bundles of wool used in spinning, half-innings of baseball, positions in appellate litigation (the top-side brief), and flavors of quark - to be appropriated by a single firm." In other words, please don't waste our time in the future.

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