Advertising & Marketing

Subscribe to Advertising & Marketing

We do it all the time, but is it legal? Maybe. Maybe not.

Embedding content from one source, e.g., a website, into another source, e.g., another website, is not uncommon. News sites embed photographs from Instagram, twitter messages, and videos into their content. Businesses embed videos and photographs of their products into their websites. Embedding also occurs when we post a link from a website into our social media accounts. For instance, after copying and pasting a website link into a social media post, an embedded version of the website automatically generates. This auto embedding typically consists of the formation of a small box or window which may include a reference to the website, an article name or title, and/or an image or video from the website. But is such use of embedded content copyright infringement?

Under the Copyright Act, the owner of a copyright has the exclusive right to “perform…. [or] display the copyrighted work publicly.” 17 U.S.C. §§ 106(4)-(6). Under the act, to” perform or display a work publicly” includes “to transmit or otherwise communicate a performance or display of the work… to the public, by means of any device or process.” 17 U.S.C. § 101. The Act further defines “display” as “to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process.” Id.

In Perfect 10 v. Google the Ninth Circuit established the “server test.” In this 2007 decision, it was held that Google’s presentation of images in its search results via in-line linking did not infringe another’s copyrights because Google did not make a copy or store a copy of the image on its servers. That is, the court found that Google wasn’t displaying a “copy.” For many, this settled the issue: as long as the content was hosted on third-party servers, an in-line or embedded link showing the same content elsewhere would not infringe. But in the last several months, something unexpected happened.

Two district courts recently rejected the holding in Perfect 10 to the extent it required actual possession (e.g., a copy on the accused infringer’s server) as a prerequisite for infringement because neither could find any such requirement in the express language of the Copyright act.

First, the Northern District of Texas held that when one website displays content from another’s website through embedding, it can publicly display copyrighted works of another “by ‘showing a copy’ of the works via a ‘process’” in violation of the Copyright Act. In effect, the court held, this was a live stream of another’s copyrighted content and no different than if a movie goer live streamed a movie via the internet to the public – actions that clearly constitute infringement even if the infringer does not possess a copy. Next, the Southern District of New York similarly held that embedding content into a website such that it displays content from another source could violate a copyright holder’s display rights, even if the website’s server did not store a copy of the work.

Thus, the law on embedded content may not yet be as settled as some believed. Of course, there are always defenses to copyright infringement to consider, like fair use. In the meantime, however, it may be wise to think twice before posting embedded content.

Yesterday the United States Supreme Court announced that it was granting the petition for writ of certiorari in the copyright infringement case previously discussed on this blog here and here.  The case is Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC and involves the question of when a copyright holder can properly file a copyright infringement lawsuit.

34126235 - copyrightCurrently there is a circuit-split as to whether the term “registration” as used in the Copyright Act includes the mere filing of a registration application or whether it requires that the Copyright Office have actually approved or denied the registration application.  The plaintiff in the case, Fourth Estate Public Benefit Corp., filed suit before the Copyright Office had approved or denied its application, and the Eleventh Circuit affirmed the lower court’s dismissal of its complaint on that basis.  The United States Solicitor General, who the Supreme Court invited to weigh in earlier this year, urged the Court to take the case and uphold the Eleventh Circuit’s position.

The Supreme Court is now poised to resolve the dispute and to give copyright holders clarity as to whether they may file suit merely after filing an application for a copyright registration.

Justice Anthony Kennedy of the United States Supreme Court announced his retirement yesterday, after having served three decades on the bench.  Justice Kennedy is known for casting the swing vote in a number of major cases and has drafted opinions on a myriad of hotly-contested issues, including LGBT rights and the First Amendment.  His retirement places President Trump in a position to select a conservative justice that will shift the ideological balance of the Court for years to come.

How this will impact future rulings in advertising, trademark, and other intellectual property cases remains to be seen, but we can certainly expect a more conservative slant from the bench going forward.

Today we welcome Brian Tu, a leader in the fast-paced and complex space formed at the intersection of technology, media and finance. Brian has worked with some of the most prominent—and interesting—media technology companies in Silicon Valley, helping them find ways to turn pageviews into dollars. He was the Head of Revenue Operations at Medium.com, a Senior Vice President of Revenue Strategy and Operations at DEFY Media, and has held similar positions with Break Media and America Online.

Brian Tu, Digital Media Industry Leader1. How did you get started in the digital media industry?

I’ve always been interested in the intersection of media and technology and particularly fascinated with the ability of technology to connect people and promote the sharing of ideas and information. I remember being one of the first of my friends and family to have an email address with CompuServe and America Online, back when a 14.4k modem was still a big deal. When I graduated from the University of California, Santa Barbara in 1999, I leveraged all of my personal connections to get a job in the nascent tech industry in Northern California. I landed an entry-level sales coordinator position with AOL right after I graduated, which was the perfect entrée for me into digital media. AOL was a real powerhouse and was poised right at the intersection of traditional media and technology and I’m profoundly grateful for the experience, opportunities, and friendships I gained while working there.

2. What do you see as the most interesting or impactful change in the digital media industry since you started with AOL in 1999?

The monetary life cycle of digital media has come full circle. In the early years, users paid for content on places like AOL and CompuServe. Then, as digital media exploded along with the proliferation of smartphones and tablets, the financial model shifted to an ad-supported system . Users became accustomed to free content—they would pay for the technology and Internet access, but not content. The problem, though, is that free content has eroded the quality of content in general. And, of course, the need for free content has caused content providers to look for other sources of revenue—advertisements and harvesting information from users. Certainly this has contributed to the firestorms surrounding “fake news” and the sale of user data to analytics firms. Now, there is a growing backlash against these practices and a concomitant growth in subscription models for high-quality content providers. Users are reembracing the old adage that, “You get what you pay for.” Publishers are realizing that a purely ad-supported model may not be the best model, and consumers are realizing they are willing to pay for better quality.

3. Do you see any potential for significant disruption in the digital media industry over the next several years?

Yes. People are becoming increasingly educated to the fact that their personal data—how they use the Internet, what they are reading and watching, what sites and pages they visit, all the data about how they consume the Internet—is being harvested, packaged and sold, and that this information is one of the most significant components of value in the digital ecosystem. People have come to realize that they are essentially selling their personal data in exchange for free content. This has enormous potential to change how people use the Internet.

Also, there is potential for disruption and growth in that a few major players control a vastly disproportionate share of the revenue from digital advertising. Some people would tell you, and I think this is reasonably accurate, that the two largest sellers of digital advertising receive roughly 85% of all digital media dollars spent. Everyone else is fighting for the remaining 15%, and of course the digital media market continues to swell as more and more consumers have access to the Internet.

4. What changes to your industry do you see happening over the next 10 years?

I think digital media publishers are going to be smarter about how they work with some social media platforms. For a long time, those platforms have been able to convince publishers to provide free access to the publisher’s content, primarily through links or embedded stories and videos. I expect that publishers are going to push back on this. And I think that people are going to be much smarter about how they share their data or allow it to be used.

5. Does the digital media industry need more, less, or better regulation?

We should expect changes to the regulations governing how data is collected and used by publishers and other websites. Frankly, in the advertising industry, everyone already knew about the widespread practice of harvesting data to provide advertising targeted to specific consumers. That’s been happening in digital media forever. Now, however, recent events have really opened the public’s eyes to how organizations use their data. We’re probably only scratching the surface as to what companies are doing with data—right now consumers really have to work hard to find out how a company is collecting and sharing their data. Usually these disclosures and settings are buried inside account setting pages or the end user license agreements. I would not be surprised to see regulation that increases transparency or requires more robust disclosures from websites that are collecting data.

6. How will the need for consumer privacy and data protection (and the massive legal exposure arising from data breaches) shape future business models?

I think we will see a ripple effect as consumer privacy issues spread to other industries. Right now, the focus seems to be on digital media and the use of analytics and targeted advertising. This may open people’s eyes towards how other industries such as finance and banking are collecting information. Digital media advertising is usually focused on immediate data collection, where ads are targeted to the consumer while they are actually browsing online. But many traditional industries are still collecting data, using it for slower-response advertising, and re-selling it to other companies.

Eric A. Bevan is an attorney with the law firm of Fox Rothschild LLP and a member of the firm’s Litigation, Financial Services Industry, Fiduciary Litigation, Construction and Government Contracts practice groups. He represents clients in the resolution and litigation of complex commercial disputes, including federal and state court litigation as well as alternative dispute resolution methods such as private arbitration and mediation. You can contact Eric at 561-804-4470 or ebevan@foxrothschild.com.

The FTC filed a lawsuit earlier this month in the U.S. District Court for the District of Utah charging telemarketers with violating the FTC Act and the Telemarketing Sales Rule.  The FTC alleges that defendants deceptively claimed their “business coaching” would help consumers earn thousands of dollars a month by starting a home-based Internet business.

According to the complaint, the defendants’ telemarketing operation relied on “leads” supplied by other companies.  Typically, these were consumers who had purchased some work-from-home-related product or service online for less than $100. For a fee or a percentage of defendants’ sales, the company that sold the product or service would encourage the buyer to contact an “expert consultant” or “specialist” to see if they qualify for an “advanced” coaching program.  However, when the consumer called to speak to a “specialist” they were merely routed to defendants’ telemarketers.

According to the lawsuit, the defendants then charged consumers up to $13,995 for their purported business coaching program, which merely provided information that was already freely available on the Internet.  Ultimately, most people who bought the service did not develop a functioning business, earned little or no money, and ended up deeply in debt.

When hoping to resolve advertising concerns or disputes quickly and easily, companies should not only consider utilizing the National Advertising Division (“NAD”), but also the potentially lesser-known Electronic Retailing Self-Regulation Program (“ERSP”).  ESRP is a self-regulatory program administrated for the Advertising Self-Regulatory Council (“ASRC”) by the Council of Better Business Bureaus.  The program was established in 2004 and its mission is “to enhance consumer confidence in electronic retailing by providing a quick and effective mechanism for resolving inquiries regarding the truthfulness and accuracy of claims in direct response advertising.”

Like actions before the NAD, ERSP actions provide guidance regarding certain advertisements.  ERSP is focused on reviewing direct-to-consumer advertising campaigns—largely infomercials but also radio ads, internet marketing efforts, TV shopping channel marketing, and pop-up advertising—for substantiation of claims, with the goal of preventing continued dissemination of deceptive claims.  ERSP members, as well as consumer or advocacy groups, can refer campaigns to ERSP for review, and ERSP reviews approximately 7-10 per month.  After review, ERSP may recommend that marketers discontinue making certain claims and may even alert the Federal Trade Commission about non-compliant companies.  ERSP reports that it has worked with companies to modify or discontinue use of almost 200 advertisements.

For more information, visit the Electronic Retailing Association’s website or read the ASRC’s blog posts regarding recent ERSP actions.

Although they may not immediately connote a traditional form of advertising, food menus and labels serve as a form of advertising in the minds of many consumers and are regulated by Food & Drug Administration (“FDA”).  Read below for two important updates/reminders in the food-related space.

62909081 - calorie dessert for each piece. problem with obesity. popular dessert menu.Menu Labeling:  As a follow up on a prior blog post and as detailed in today’s Consumer Update from the FDA, the FDA is requiring this month that certain types of food establishments post calorie information on menus and menu boards and provide nutrition information upon request in order to help consumers make informed choices in ordering food items.  The FDA’s requirement applies to chain restaurants as well as eating establishments with more than 20 locations, and the FDA’s Consumer Update provides examples of the types of locations where consumers should expect to now see calorie posting, if they don’t already.

Nutrition Facts Label:  Following up on another prior blog post, the FDA recently announced that it is extending the deadline to comply with its Nutrition Facts Label rule and its Serving Size rule by 18 months.  Instead of requiring compliance by certain manufacturers this summer, the FDA will now require compliance by January 1, 2020 for larger food manufacturers and January 1, 2021 for smaller food manufacturers.  This extension is intended to provide sufficient time to ensure industry compliance.

When marketing products or services to children, companies should be aware of applicable statutes and guidance and should be particularly cautious with their advertising claims.

Lanham Act & FTC Act

The prohibitions against false, misleading, and deceptive advertising under the Lanham Act and Section 5 of the FTC Act of course apply to advertising claims directed at children.  It’s important to remember that the advertisements may be viewed by a court or by the FTC as ordinary children would view them (not as the actual buyers, i.e. parents or other adults, would view them).  Therefore, companies should ensure that any advertising claims directed at children do not have the tendency to mislead or deceive those children.

FTC Guidance

The FTC advises companies to comply with truth-in-advertising standards when advertising directly to children or when marketing kid-related products to parents.  For example, the FTC is concerned with child privacy, marketing violent entertainment to children, and, given the rise in childhood obesity rates, food advertising to children.

COPPA

38772807 - little girl hand touch touch pad notebookThe Children’s Online Privacy Protection Act (COPPA) is a federal statute meant to protect children’s privacy and safety online by prohibiting unfair or deceptive practices relating to the collection of personal information from internet users under the age of 13.  COPPA requires providing certain information in privacy policies, giving parents direct notice, and obtaining parental consent before collecting personal information from children.  The FTC’s step-by-step COPPA compliance guide can help a company determine if it is covered by COPPA and, if so, how to comply with the rule.

CARU

The Children’s Advertising Review Unit (CARU) is an investigative unit of the advertising industry administrated by the Council of Better Business Bureaus.  CARU monitors advertisements (tv, print, radio, and online media) with the goal of advancing truthfulness, accuracy, and consistency and eliminating deceptive or inappropriate advertising directed toward children.  CARU publishes self-regulatory guidelines for advertisers and relies upon voluntary cooperation and change by advertisers themselves.

The FTC filed a lawsuit this week against Lending Club, a peer-to-peer lending company that operates an online marketplace for personal loans.  The lawsuit accuses Lending Club of luring consumers to its website with online advertisements promising “no hidden fees,” only to go ahead and deduct significant “up-front” origination fees from the loan proceeds.  As a result, customers were surprised when the amount that actually showed up in their bank account was less than the “Loan Amount” they thought they had signed up for.

According to the FTC, this deception is made worse by the fact that Lending Club never adequately discloses the up-front fee to consumers during the entire online application process.  The fee is only mentioned once—inside an explanatory “pop-up bubble” that only appears if the applicant happens to click or tap on a relatively small and inconspicuous icon. Because applicants are not required to click or tap on the icon in order to move forward with their loan application, many applicants never saw the disclosure at all.

“This case demonstrates the importance to consumers of having truthful information from lenders, including online marketplace lenders,” said Reilly Dolan, acting director of the FTC’s Bureau of Consumer Protection, in a statement. “Stopping this kind of conduct will help consumers make informed choices about loan offers.”

This case is a reminder of advertisers’ responsibility to ensure that advertisements are honest and forthcoming, especially in the ever-changing landscape of online advertising.  Some key takeaways:

  • If a disclosure is needed to prevent an online ad from being deceptive or unfair, it must be clear and conspicuous. This rule applies to all forms of online advertising, including paid blog posts or ads on social media platforms.
  • The “clear and conspicuous” rule also applies across all devices and platforms that consumers may use to view the ad. Advertisers must therefore ensure that required disclosures function properly on all programs and devices.
  • Putting necessary disclosures in hyperlinks or “pop-up bubbles” is strongly discouraged, particularly where the disclosure involves important information like additional costs or consumer safety. Where they are used, ensure the link is labeled accurately and that it functions properly regardless of device or platform.

Though apparently not when it comes to suing for copyright infringement.  Earlier this week, the Ninth Circuit issued a ruling in a case involving photographs taken by a monkey on a camera left unattended by a nature photographer in Indonesia—aptly deemed the “Monkey Selfies.”  The copyright infringement case was filed by People for the Ethical Treatment of Animals, Inc. (PETA) as “Next Friends” of the monkey named Naruto against the photographer and entity that published the Monkey Selfies in a book that identified themselves as the copyright owners (although also noting that Naruto took the photographs).  After a lengthy dispute, the Ninth Circuit affirmed the district court’s ruling and held that animals like Naruto cannot sue for copyright infringement because, as nonhumans, they lack the required standing under the Copyright Act, which does not expressly authorize animals to sue.