Does use of a website constitute implicit consent to the site’s Terms of Use (TOU)? And if the TOU provides for copyright assignment, does that use thus constitute a valid assignment of copyright under the federal Copyright Act? Those were the questions last August before the US District Court for the District of Maryland, which granted the real estate multiple-listing service known as “Metropolitan Regional Information Systems” (MRIS) a preliminary injunction against defendant American Home Reality Network (AHRN). The court’s opinion can be found here. The case was discussed in some detail by RIS Media, a real estate technology blog, particularly the role of electronic signatures under the federal E-SIGN Act for valid assignments under the Copyright Act.
The court enjoined AHRN from copying and uploading MRIS’ photographs to AHRN’s website Neighborcity.com. Pamela Chestek, in her blog “Property, intangible”, points out that although the preliminary injunction was granted solely on the claim of infringement of photos in the MRIS database, MRIS had alleged infringement on its entire database. The photos had been removed by the morning of August 30, 2012 when real estate industry commentator Jeff Pearl posted here. The continued enforcement of the injunction assured that the photos would remain removed.
The preliminary injunction restricted unauthorized use of copyrighted content from MRIS’ database. In its Memorandum Opinion granting the injunction, the court stated:
Defendant AHRN and all persons acting under its direction, control or authority are hereby enjoined from unauthorized copying, reproduction, public display, or public distribution of copyrighted content from the MRIS database, and from preparing derivative works based upon the copyrighted content from the MRIS Database.
AHRN then moved to lift the preliminary injunction, arguing that the photos had not been validly assigned to MRIS under Section 204(a) of the Copyright Act, which requires a written and signed consent from the assignor. AHRN argued that there had been no valid assignment because the photos had been uploaded by MRIS’ subscribers without a valid signature as required by the Copyright Act. Thus, MRIS could not claim rights to copyright and therefore, could not seek to enforce any rights of copyright.
In November, JDSupra posted an update. On November 13, 2012, the court ruled that through Section 101(a) of the federal Electronic Signature in Global and National Commerce Act (known by its acronym “E-SIGN”), the assignment requirements of Section 204(a) under the Copyright Act could be satisfied through usage without more, and thus without the requirement of a separately written assignment.
Q: But how could this be, you ask?
A: Simple. When using a site in any way that is explicitly governed by TOU, you consent to these TOU.
Pamela Chustek then asked, “How far [away] from a [traditional written, formal] signature can [ESIGN] actually go”? In particular, Chustek questions whether uploading a photograph could satisfy ESIGN signature requirements, particularly where (as in this case) evidence of users’ actually having viewed the TOU was scant. In its November decision, the court held that the users’ consent to the site’s Terms of Use (TOU) was validly effected by uploading photographs:
The MRIS TOU constitutes credible evidence that MRIS’s users intended to assign their copyrights to MRIS through the electronic submissions of photographs, which would satisfy the relevant provisions of ESIGN.
The court “concluded that the MRIS TOU was clear in its terms and that the electronic process by which MRIS subscribers assigned the copyrights in the photographs met E-SIGN and [Copyright Act] Section 204(a) requirements.” Furthermore, “the assignments were not invalid as a matter of law” and, accordingly, AHRN’s motion to suspend the preliminary injunction was denied.
Chustek notes that the court’s decision does not clearly address how a MRIS subscriber encounters the Terms of Use. Chustek questions the court’s finding that an uploaded photograph fits the E-SIGN Act’s definition of electronic signature as “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.”
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