Linking and Framing: The Courts Have Spoken (Sort of)

Posted on 12/01/2000
In Intellectual Property

by Robert W. Clarida

Two relatively low-profile Web disputes in the Central District of California have recently generated published opinions, quietly creating precedents which may impact the development of IP law on the Web for years to come.  In case you missed them:

Framing = Preparing Derivative Work

One of the most fully-litigated Web cases to date, Futuredontics, Inc. v. Applied Anagramics, Inc., 45 USPQ2d 2005 (C.D. Cal. 1998), aff’d in part, No. 97-56711, 1998 U.S. App. LEXIS 17012 (9th Cir. July 23, 1998), involved the framing of material from plaintiff’s 1-800-DENTIST Website by a competitor’s site. The defendant’s site essentially created a link to plaintiff’s site, but rather than simply displaying the plaintiff’s content in its original form the defendant superimposed a frame featuring the defendant’s logo, and concealed the presence of the link so that the user would not be aware of the true source of the framed content.  No final decision on the merits has been issued, but the district court’s denial of plaintiff’s preliminary injunction motion, as well as its denial of defendant’s subsequent motion to dismiss, indicate that such unauthorized framing will quite likely constitute a violation of the exclusive right to prepare derivative works under § 106 of the Copyright Act.

The court initially refused to enter a preliminary injunction because the plaintiff had not demonstrated likely success on the merits regarding the derivative work claim.  The law pertaining to other sorts of derivative works was not entirely applicable in the context of the World Wide Web, found the court, and it was not clear that the defendant’s acts constituted a duplication or recasting of material from the plaintiff’s site.  Accordingly, the court refused to enjoin defendant’s conduct and defendant eagerly moved  to dismiss the complaint.

Revisiting the issue on defendant’s motion to dismiss, however, the court found that the acts alleged could amount to the creation of an infringing derivative work, if the modified Web page was embodied in a sufficiently “concrete or permanent form.”  If the defendant’s case rises or falls on that basis alone, though — as it appears to —  the result can hardly be in question. Since the Ninth Circuit ruling in MAI Systems Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993) the courts have repeatedly found that even the briefest loading of a work into a computer’s RAM memory is sufficient to result in the production of an infringing “copy.”  If that is the case, then defendant’s modification of plaintiff’s Web page in Futuredontics is probably permanent enough to be infringing, simply by virtue of  residing in the user’s computer. Futuredontics does not cite to MAI v. Peak, or even attempt to resolve the issue on the merits, but a California District court is not likely to ignore Ninth Circuit precedent if and when the question is properly before it.

Hypertext Linking = Substantial Non-Infringing Use

Another issue not resolved in Futuredontics is whether the infringing derivative work is “prepared” by the defendant, or instead by the user who unwittingly visits the site.  In the former case the defendant would be a direct infringer, as the Futuredontics court seems to assume, but even in the latter case the defendant would likely be liable under a theory of contributory infringement.  Unlike the maker of the Betamax video recorder in Sony Corp. v. Universal City Studios, Inc., 464  U.S. 417 (1984), the provider of a framed, hidden-link Website can show no “substantial non-infringing uses” of the product; there is literally nothing such a site can do except infringe the plaintiff’s work.

Ordinary hypertext linking apparently does not create such problems, however.  In Bernstein v. JC Penney, Inc., 50 USPQ2d 1063 (C.D. Cal. 1998), the court tersely dismissed a photographer’s complaint against defendants whose products had been advertised on a Website which, through a series of hypertext links, was connected to a site in Sweden containing unauthorized copies of the plaintiff’s work.  Defendants raised arguments disputing vicarious liability and direct infringement, but the court gave greatest emphasis to the arguments against contributory infringement: no act of direct infringement in the US, no significant participation in the infringement on defendant’s part, and “substantial non-infringing uses” for the hyperlinking technology which connected the defendants with the direct infringers.  The opinion does not elaborate on the reason for the court’s dismissal, but by emphasizing the contributory infringement arguments the court indicates that simple hyperlinking, without more,  is unlikely to provide a basis for a finding of contributory liability.

© 2000  Cowan, Liebowitz & Latman, P.C.


This the information provided in this article should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents are intended for general information purposes only, and you are urged to consult with a lawyer concerning your own situation and any specific legal questions you may have.