As we mentioned in our previous post, the Ninth Circuit’s intrinsic-extrinsic framework for substantial similarity has a number of problems. Those problems include confusing terminology, misuse of the terms “objective” and “subjective,” the lack of a clear goal for the infringement determination, and an unnecessary division of the substantial similarity inquiry, which creates havoc not only at trial but on appellate review. (For more, see our brief at 10-13, 24-31.)  It is a welcome development that the full Ninth Circuit is revisiting the question en banc this week.

In this post, we’re not going to dwell on what is wrong with the current framework. Instead, we’re going to explain what we think should replace it and why.

A test for copyright infringement has to make several discrete inquiries, many of which are uncontroversial. First, the plaintiff must first demonstrate that it is the owner of a valid copyright in a registered work. Second, the plaintiff must show that its copyright has been infringed in some way. So far, no one would disagree. For infringement through copying (as opposed to public performance or public display), even the Ninth Circuit now agrees (since Rentmeester v. Nike in 2018) that the plaintiff must prove both that the defendant actually copied material from the plaintiff’s work, and that the copying constituted wrongful appropriation.

It is the second sub-element of infringement–wrongful appropriation–where most of the confusion lies, and where we encourage the Ninth Circuit to focus the most attention in our amicus brief.

Created by DALL-E Sept. 2026

Any successful test for wrongful appropriation must at a minimum achieve three critical goals. First, unprotected material must be filtered out from the comparison, to prevent defendants from being held liable for taking material that copyright policy clearly states is common property. Second, in cases where a jury has been requested, the inquiries that form an infringement determination need to be appropriately divided between those that are primarily legal in nature, and thus can be decided by the judge, and those that are primarily factual in nature, which usually must be reserved for the jury. Finally, the purpose of the “wrongful appropriation” element must be made clear to judges and juries alike, both to enable them to apply it consistently and to prevent it from collapsing into a determination of actual copying.

In our brief, we recommend consolidating the extrinsic and intrinsic tests and dividing the wrongful appropriation inquiry in a different way. Wrongful appropriation should be separated into (1) an initial step focused on identifying the protected expression in the material plaintiff claims has been copied, and (2) a subsequent step of assessing whether the copied expression takes a substantial amount of the appeal of the plaintiff’s work to its ordinary audience.

The first step is one that in many cases will be mostly legal in nature, and one that is appropriately assigned to the court, preferably based on a plaintiff-generated list of the protectable expression that has been copied.

The second step is likely to be a task for the trier of fact, based not on the individualized view of the works personal to each juror, but rather on an assessment of the copied expression from the perspective of the ordinary audience. That assessment would focus only on copied expression, not unprotected material, and would be based on a comparison of both the discrete elements of each work as well as overall similarities or dissimilarities between the two–in other words, both the forest and the trees.

This revised framework has several advantages over the current Ninth Circuit test. One thing that many infringement tests lack, including the Ninth Circuit’s extrinsic-intrinsic framework, is a clear stage at which the copyrightable expression present in the material allegedly copied from the plaintiff’s work is identified and separated from unprotected (but similar) material, which is then used in the ultimate comparison of the two works. This is a critical part of any infringement determination, but one that is often folded into other stages of the inquiry, such as the extrinsic test in the Ninth Circuit. Given the minimal amount of creativity that copyright law requires to register a work, it is essential that at some point, difficult as it may be, the copyrightable expression and the unprotected material alleged to have been copied are distinguished from each other, in order to avoid conflating the two in either direction (over-protecting or under-protecting the plaintiff’s copyright).

That is why we recommend that any revised infringement test clearly identify a “filtration” stage as a distinct initial step of the wrongful appropriation inquiry. This sort of prior delineation of the scope of protection occurs in patent law (through claiming) and trademark law (which insists on identifying classes of protection in advance), but is lacking in copyright. Filtering for protected expression requires some familiarity with the Copyright Act–a statute never accused of being excessively accessible to lawyers, let alone to lay jurors–as well as comfort navigating the case law interpreting it. Judicially formulated limitations, such as the scènes à faire and merger doctrines, play a vital role in protecting the interests of authors, competitors, audiences and the public domain. Their contours, as applied, are often metaphysical and complex in ways that are unquestionably challenging for judge and jury alike.

In other words, we think that judges are usually going to be the better entity to filter for protected expression, for several reasons. Judges, if new to copyright, can more quickly be brought up to speed on copyright’s utilitarian purposes and the ways in which it does not always track lay expectations. Understanding the correct intended scope of protection is an important first step to applying filtering mechanisms accurately. Additionally, judges are more likely to have repeated experiences with determinations of copyright’s protected expression, especially in the copyright-heavy dockets, whereas most jurors are unlikely to serve on a jury more than once or twice in their lifetimes, let alone serve in a copyright trial more than once. Greater familiarity with copyright’s quirks and requirements makes it easier to filter effectively while still also protecting artistic expression robustly. Finally, judges’ determinations of protected expression as a matter of law can be reviewed de novo, which facilitates appellate review of the important legal question of the scope of plaintiff’s copyright.

We believe the filtering step, when performed by a judge, should be performed at a preliminary stage of the case (to allow for possible early resolution of the dispute) and, to minimize workload on the court, should be based on a list of the claimed protected elements in the plaintiff’s work that have been alleged to have been copied, a list the plaintiff should be required to produce.

There’s another issue addressed by our proposal, which has to do with distinguishing between the two parts of the inquiry to determine infringement, actual copying and wrongful appropriation. Frequently, these two steps are conflated in copyright cases. Many decisions seem to treat “substantial similarity”–the way wrongful appropriation is demonstrated–as a way of proving that the defendant actually copied something from the plaintiff. We recommend clarifying the distinction through both terminology and substance. With respect to terminology, the phrase often used for the second part of the infringement test––“substantial similarity”–is both unhelpful and potentially misleading. Similarity, as we say in the brief, is meaningless when considered by itself. Whether two objects are similar depends on what the goal of the comparison is. In the brief, we give the example of similar but not identical outfits–they may be too similar for evening wear, but not similar enough for a uniform.

We propose giving some shape to the substantial similarity inquiry by clarifying the goal. The purpose is not to determine similarity vel non, but to evaluate whether the defendant’s copying of protected expression was wrongful. We thus refer to the second part of the test not as “substantial similarity,” but as “wrongful appropriation”–although other phrases have been used (“unlawful appropriation,” “improper appropriation,” “illicit copying,” “actionable copying”), and those are consistent with our understanding. The point is that something other than simple copying of expression is being evaluated. Drawing on language from earlier cases, we connect the wrongfulness of the appropriation to whether it takes a substantial part of the appeal of the plaintiff’s work to the ordinary audience (e.g., ordinary observer, reasonable observer, or lay listener). In other words, the appropriation has to be significant enough to cause some harm to the plaintiff, whether that is monetary harm, harm to the plaintiff’s market share or potential audience, or some other cognizable injury.

Crucially, and worth repeating: injury has to be evaluated from an objective standpoint. The “ordinary observer,” like the reasonable person in tort law, is a legal fiction, an abstracted hypothetical entity meant to operate as a proxy. But a proxy for what? It is often unclear what it does and doesn’t do. The reasonable person standard symbolizes what an ordinary person ought to have done or known under similar circumstances, and thus helps define the boundaries of acceptable behavior versus unreasonable risk-taking or carelessness. That standard draws on ordinary experience common to the collective, rather than particularized to an individual decisionmaker. This distinction is why it is considered “objective” rather than “subjective.”

Similarly, the ordinary observer in copyright law helps locate the boundaries around certain behaviors through the adoption of a given perspective. From that vantage point, the trier of fact identifies when copying is unacceptable (“substantial appropriation”) and thus becomes legally cognizable as copyright infringement. Yet, adopting the ordinary observer perspective (or audience test) does not by itself yield the descriptively correct answer any better than any other test. As with the reasonable person standard, application of the ordinary observer standard inevitably integrates normative elements; there is no absolute “substantial similarity” that can be found, if we could only figure out the right decisionmaker. No matter what test is used, wrongful appropriation requires a normative determination, and the ordinary observer fiction is simply the framework through which to conduct that normative inquiry (a view captured in the Goldstein treatise and reflective of the modern trend since Arnstein v. Porter).

Often, the normative elements of the test are not fully acknowledged by courts, or they are wrongly characterized and even pilloried as undermining the jury’s ultimate conclusion. The problem is that there has been a pernicious slippage from objective to subjective conceptions of the ordinary observer, from ordinary observer as a fictional construct to ordinary observer as the jurors’ interior mental responses to the works. This slippage is a mistake; the second step of the substantial similarity determination should be treated as a device, like the reasonable person fiction–a device that formalizes the adoption of a lay perspective. The ordinary observer perspective is thus instrumental, a means to an end, and a means “peculiarly fitted” for a jury (to quote Arnstein v. Porter).

The problem with the slide from an objective to a subjective inquiry is that, in the Ninth Circuit, it would appear that jury verdicts on substantial similarity, precisely because they allegedly rest on jurors’ subjective views of the works, are treated as though they are a form of unshakeable truth accessible only to empaneled jurors and are thus inappropriate to consider on appeal. Now the ordinary observer test becomes something else altogether: not a helpful perspective to adopt, but the answer, and, what is more, a conclusion that cannot be revisited on appellate review. Put another way, courts are not merely expressing appropriate appellate deference in refusing to set aside or even review the jury’s view of the ultimate question of substantial similarity; they are giving voice to an unsupported, and ultimately untenable, view of epistemological supremacy. Under this view, the jury is a source of precious epistemic certainty, and its determinations must be presumed to be correct–and allowed to remain as they are.

Copyright’s ordinary observer standard resembles tort’s reasonable person standard, and it ought to be treated as an objective test, one that abstracts to a fictionalized entity in order to produce a normative conclusion about what is reasonable versus wrongful, whether the subject matter is a slippery sidewalk or a highly similar screenplay. As such, the ordinary observer standard, and the jury’s decision applying it, ought to be susceptible to sufficiency challenges like other jury decisions based on objective standards. Treating the jury’s conclusion as appellate Teflon represents a form of copyright exceptionalism and, as Prof. Sepehr Shahshahani argued in his amicus brief in Sedlik, a departure from longstanding rules and norms about the jury’s function. Whatever else it does in this case, the Ninth Circuit should ensure that copyright jury verdicts are treated no differently than jury verdicts in other areas of civil law.

The post Sedlik v. Von Drachenberg: The Right Way to Evaluate Wrongfulness (Guest Blog Post) appeared first on Technology & Marketing Law Blog.

Odds are that the outcome will be terrible; and even if not, the reasoning will be 100% cringe.

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Embed/in bed

This opinion revisits the question of when embedding constitutes copyright infringement. This should have been an easy case. The Ninth Circuit has repeatedly and decisively concluded that embedding doesn’t constitute direct copyright infringement due to the “Server Test,” i.e., direct liability for a public display requires the alleged infringer to have a fixed “copy” of the work stored on a server in its possession or control. The Ninth Circuit reaffirmed the Server Test in a major 2023 ruling, Hunley v. Instagram.

In this lawsuit, the lower court relied on the Ninth Circuit’s Server Test to dismiss the claim. On appeal, the Fifth Circuit finds a way to undo everything in a dense, tendentious, tangent-filled, cringy, and poorly drafted decision. #BringTissues.

* * *

Description of Embedding

The court describes how NewsBreak (by Particle Media) embeds third-party content, including content on Emmerich’s website:

From the NewsBreak newsfeed, users see a thumbnail image of an article and can click it to link to that article. Then, as the embedding webpage, NewsBreak creates an empty frame within its own page and fills the frame according to the instructions it receives from the link; that is, the link connects to the address of the server for the relevant article webpage and receives instructions from that server. The frame typically populates with the linked webpage in its entirety….from the NewsBreak App, users could see the live page of an Emmerich article on an Emmerich site

Rejecting the Server Test

After doing some statutory construction, the panel says “the statutory language in Section 106(5)—“to display the copyrighted work publicly”—translates to the following: To show a fixed work by transmitting it to the public.” The panel believes this rearticulation negates the Ninth Circuit’s approach:

we find the server test is on weak statutory footing. Put simply, the server test focuses on the definition of display—which requires showing a fixed work. The server test rests on the idea that a work is always fixed on a server. But we shift the focus to the definition of displaying a work publicly—which requires transmitting the work. Although rooted in different statutory text, this shift likely provides similar results as the server test in many ways….

both the server test and the test we announce end up in a similar place: a website cannot transmit a work that it does not have.

Why does the Fifth Circuit disagree with the Ninth Circuit? An in-line linker could theoretically create a fixed copy of the linked work:

even though embedded links show live content by way of interpreting HTML instructions from the content host, the embedder’s webpage is not necessarily so fleeting that it could not meet the definition of “fixed,” meaning embodied for more than a transitory duration. Using the Goldman case as an example: the news outlets embedded the copyrighted photo by linking to tweets that included the photo….the server test would falter, in our view, for a simple reason: it is possible for another third-party website to embed the photo by way of linking to one of the news outlets, thereby demonstrating that the news outlet’s showing of the work was sufficiently permanent or stable such that it would be considered fixed for purposes of the statute.

This made my head hurt. No one contests that the content delivered in response to an inline link is fixed. But who is doing the fixing? The user, the linking website, or the linked website? And does it matter? It seems like this panel is saying that the linking website did the fixing and that’s why it “showed” the copy to the user sufficient to jeopardize the Server Test. In contrast, I think either the user or the linked website fixed the copy that appears from the linked website, and that ought to reinforce the Server Test.

Despite this weird perspective on the responsibility for fixing works, the panel says that the linking website isn’t “transmitting” the content that was fixed (by someone). To support its thinking, the panel invokes an old-school offline analogy:

Think of Particle as a switchboard operator: In the same way a switchboard operator cannot connect a caller without the intended recipient picking up the phone and agreeing to be patched through, Particle cannot connect a user to Emmerich’s content without Emmerich’s transmittal of the content. Just as the critical act in having a telephone conversation is someone picking up the other end, we find that the critical act in the linking process is the transmittal of content, which requires courts to evaluate the party responsible for “communicat[ing]” the copy

If this opinion really wanted to capture the essence of Internet Law, the panel might have relied on analogies to telegraphs or pigeon carriers instead.

The telephone switchboard analogy leads the panel to this statement:

pointing or directing a user’s browser to request and receive the copyright owner’s own copy does not involve transmitting, or communicating, the content “beyond the place from which [it is] sent.” If the transmission must come from the content owner in order for a user to see any content at all, then no copyright liability exists for the linking site. If not, we must find where the transmission originates. Simply, one cannot transmit content it does not have.

My head hurts again. I don’t think its statement “one cannot transmit content it does not have” is precise, at least with respect to fixation. The 101 definition of “fixed” says (emphasis added): “A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission.” In other words, the statute contemplates transmission of a work that someone else has fixed. The panel is appears to be saying that the linking website never touches the flow of packets being transmitted, but this is exactly what the Server Test already said.

(The panel also makes mind-numbing segues into the meaning of “volitional” conduct, how websites can opt-out of linking, and how copyright is an opt-in statute).

Although it sure sounds like the court articulated a bright-line test (“If the transmission must come from the content owner in order for a user to see any content at all, then no copyright liability exists for the linking site”), the court goes out of its way to say it is not: “our decision should not be understood to mean that embedding will always be permissible.” It mentions two limits:

Our analysis has rested on two principles: (1) the transmission of the copy is from an authorized source, whereas the embedding webpage only makes a transmission request; and (2) the authorized source could have rejected the request….we therefore do not pass on the application of this approach beyond these circumstances

Does #1 mean that if a user uploads an infringing item to Instagram, and a third-party site embeds it, the linking site is now transmitting/displaying the work even though there is no technological difference in the way the packets are flowing? If so, this suggests the court is actually characterizing an upload as implied permission to embed, which wouldn’t depend on the definition of display or transmission at all. #2 starts to veer into the trespass to chattels arena, where if a website blocks embedding, then it’s controlling its chattel regardless of its rights under copyright law. Otherwise, this sounds again like an implied permission to embed.

The court also has this mind-bending statement that fair use is a limiting doctrine: “when linked according to formats such as Full-Text View or the like, fair use provides a viable pathway to prevent links that rise to the level of infringement, regardless of the test.” I think the judge is trying to say that courts could conclude that the full text displays don’t qualify as fair use, but (1) fair use is a defense, not a limiting principle, and (2) a court only reaches the fair use defense if there’s an infringement, which the court just said there wasn’t. So I’m confused how this limitation could ever be reached.

The court adds that 1201 could also be a limitig principle because content can be put behind registration walls protected by 1201. UGH. While true, we’re seeing rampant 1201 abuse as an anti-scraping doctrine, something courts should definitely not encourage.

So does this ruling create a circuit split? Sort of…?

Yes, because the Fifth Circuit largely rejected the Ninth Circuit’s reliance on the definitions of “display” and “fixed” and instead rested its decision on the definition of “transmit.” Thus, the Fifth and Ninth Circuits are reading the statute differently. Also, this opinion is filled with so many tangents and asides that it kinda conflicts with just about everything.

No, because the circuits mostly reach the same result. Linking to copyrighted material shouldn’t be infringing, whether it’s done as embedding, in-line linking, or other methods that don’t require the user to take any further manual actions to see the linked content.

URLs as CMIs

Having wrecked the law of embedding and 106 copyright infringement, the court next turns its attention to wrecking 1202. This entire topic is mind-bending.

The plaintiff claims that a URL is copyright management information (CMI) for 1202 purposes, and framing “removes” the URL by obscuring it. First, this collapses the distinction between copyright and trademark by treating framing as a form of passing off. Second, if anyone copies any portion of the page without attributing the excerpt to the source page’s URL, would that constitute a 1202 violation? It seems like that would be the natural consequence of this argument.

The Fifth Circuit already gummed up 1202 in Energy Intel. Grp., Inc. v. Kayne Anderson Cap. Advisors, L.P., 948 F.3d 261, 277 (5th Cir. 2020), which held that electronic filenames could be CMI. I don’t have the energy to see how that opinion got off the rails, but that precedent forces this panel into more contortions because URLs are sorta like file names.

This leads to all kinds of tortured statements of how URLs are and aren’t like filenames, and my brain kept breaking with each subtopic. We get ponderous epistemological statements like:

URLs primarily operate as a functional utility of directing someone to the copyrighted work, as opposed to a filename, which is information inherent to the copyrighted work itself.

…and…

we find that a future court could conceivably discern that the URL website descriptor as-applied meets the CMI requirements, similar to PDF filenames. Importantly, though, this question remains a fact-specific inquiry for district courts to conduct in the first instance.

There is also this cringy footnote:

Take, for example, a New York Times article. The title of the article was: “3 Ways Operas Speak to the Moment, With Success and Failure,” yet as evident in the URL, the website descriptor is different entirely. Gabrielle Ferrari, 3 Ways Operas Speak to the Moment, With Success and Failure, N.Y. Times (May 19, 2026), https://www.nytimes.com/2026/05/19/arts/music/american-opera-projectsexperiments-in-opera-heartbeat-opera.html.

Hold on. Apparently, the panel doesn’t know that the NY Times experiments with many headlines but the URL only reflects the first…? SMH.

1202 refers to the word “link,” and this causes the panel to go into a tailspin:

Although intuitively a URL seems to be a link, the question remains whether we must construe “link” as a term of art in a particular way. Caselaw defining “link” under Section 1202(c)(7) is underdeveloped….

To qualify as a link to CMI, the URL would have to connect to an address that displays CMI, such as a page that contained a website’s copyright, disclosures, and permissions. Even still, we recognize that the nature of links is that they can change if the pages they locate are altered….

However, should the link be more stable, should it connect to a qualifying page, and should it provide notice of the CMI it is linked to, the broad language in Section 1202(c)(7) could provide a basis for URLs to constitute CMI.

UGH. Read that last paragraph again. WHAT??? The panel emphasizes that there are scenarios where 1202 could apply to URLs:

Following suit with our approach in Energy Intelligence Group, we leave open the possibility that certain URLs could possess the hallmarks of CMI. But, as described in the foregoing sections, several factors are essential to confirm before reaching that determination, including: whether the domain name corresponds with the copyright owner; whether the copyright is over the website as a whole or specific pages; whether the URL is sufficiently stable and not subject to change; and, above all, whether the URLs are clearly being conveyed for the purpose of communicating a copyrighted work.

What does this even mean? What harm would this approach redress?

One possibility is that the panel’s opinion will be read to create a free-floating obligation to cite a URL for any secondary works based on content from a web page. I don’t think the panel has any clue that it’s opened this Pandora’s box. EVERY online copyright infringement lawsuit in the Fifth Circuit should make a 1202 claim when the defendant’s secondary use didn’t include the source URL. Fun times ahead. The Fifth Circuit ultimately will need to walk back its Energy Intelligence precedent and rethink everything.

The panel has one more brain-breaker topic to mess up: what constitutes removal or alteration of a URL? That leads to the absolute soul-crushing discussion of the possibility that “shortening a URL would be a DMCA violation, even though the URL is just meant to take a user to the location of the copyrighted work. Our court, for example, incorporates permalinks of webpages into opinions to capture the source at the time of its citation.”

I’m not sure what the Fifth Circuit means by “permalinks.” Typically, a permalink includes both a persistent substitute URL and a cached copy of how the source material looked on the specified date. Permalinks cannot be merely URL shorteners, because otherwise, if the underlying URL changes or breaks, the URL shortener breaks too. I seems like the panel didn’t understand any of this…? On the plus side, to the extent that permalink usage could be a 1202 violation, the Fifth Circuit has invited linked sites to SUE THEM for 1202 violations!!!

After all of this hand-wringing and navel-gazing, the Fifth Circuit defers the denouement:

Future cases will need to decide where the line is with respect to such commonplace practices, including whether there is a distinction between using a URL shortener that excludes CMI or removing a URL altogether (e.g., framing the content on another webpage, under a different URL).

In light of the necessity of a fact-specific inquiry, we recognize that workability concerns abound. If certain URLs, but not others, are deemed CMI, further frustrating the lack of notice given externally, we must anchor on whether any alteration or removal was “intentional” to “remove or alter [the] copyright management information.”

I. Can’t. Wait. until these issues bounce back to the Fifth Circuit again so I will get the pleasure of reading more of their judicial handiwork.

Case Citation: Emmerich Newspapers, Inc. v. Particle Media, Inc., 2026 WL 2530247 (5th Cir. Aug. 27, 2026).

The post The Fifth Circuit Does Fifth Circuit Things in Copyright Embedding Case–Emmerich v. Particle appeared first on Technology & Marketing Law Blog.

On June 9, the Ninth Circuit granted rehearing en banc in Sedlik v. Von Drachenberg, agreeing to reconsider the test for infringement first adopted in Sid & Marty Krofft v. McDonald’s back in 1977. At the time, we had just begun work on a joint project looking at copyright infringement doctrine generally, but we immediately pivoted to writing an amicus brief. Why ruin three perfectly good summer weeks in this way? This is the best opportunity the Ninth Circuit has had in decades to not only abandon its idiosyncratic approach to substantial similarity, but to take the lead by adapting copyright infringement doctrine for the age we are in now, when infringement cases often go to a jury. It could be a long time before another chance presents itself.

We’ll get to our specific proposal in a future post, but in this post we want to focus on how to frame the issue coming up before the full(ish) court, which will hear oral argument in this appeal on Tuesday, September 29. What does the Sedlik trial say or, even more importantly, not say about the shortcomings of the Ninth Circuit’s infringement test? One common reaction to the verdict below, including from the three-judge panel, was that the only reason the jury found in favor of the defendant is that its attention was “divert[ed]” from “objectively substantial copying of protected expression” by the vague language in the Ninth Circuit’s “intrinsic” test for substantial similarity. But we have our doubts that that is correct as a factual matter, and the danger is that mistaken perceptions about how the infringement inquiry is currently operating could lead the Ninth Circuit astray once more.

Before we get there, some brief background. Sedlik involves a copyright infringement claim by Jeffrey Sedlik, who took the well-known photo of Miles Davis on the left, against Katherine von Drachenberg, a/k/a “Kat von D,” who created a tattoo based on the photograph (at right). After a four-day trial, the jury rendered a verdict of non-infringement as to the tattoo and various social media posts, checking off a box that read “Not Substantially Similar” for each of six works at issue. The district court judge then denied Sedlik’s Rule 50(b) motion, and the Ninth Circuit affirmed. (The affirmance has now been vacated pending en banc review.)

Two judges on the panel, Judges Wardlaw and Johnstone, wrote lengthy concurrences expressing frustration that their hands were tied by the court’s “intrinsic test,” which “considers the perspective of the ‘lay observer’” and asks the jury to perform “a holistic comparison that focuses on whether the works are substantially similar in the total concept and feel of the works.” The panel believed that reversing a jury verdict on the intrinsic test “would be tantamount to ‘supplanting the jury’s subjective interpretation with [our] own,’” Sedlik panel op. at 15, making it “all but unreviewable” (Johnstone, J., concurring). As a fix, Judge Wardlaw proposed “dispensing with [the intrinsic test] altogether,” noting “the dispositive role the intrinsic test played here.”

We have a question about the right way to interpret this chain of events, but first we need to more fully explain the Ninth Circuit’s terminology and where it came from. (Copyright mavens can skip the next two paragraphs.) The golden era of test-making in copyright law dates from around the middle of the twentieth century. The Second Circuit was the first out of the gate with a multi-stage infringement inquiry in 1946’s Arnstein v. Porter. Under the original Arnstein framework, after establishing ownership of a valid copyright, the plaintiff had to make a two-part showing of infringement: that the defendant actually copied material from the plaintiff’s work, and that the copying took enough of “what is pleasing to lay listeners” to constitute wrongful appropriation. In later cases, the wrongful appropriation step was designated with a different term, “substantial similarity.”

The Ninth Circuit began developing its own version of the Arnstein inquiry in 1977’s Sid & Marty Krofft v. McDonald’s Corp. The key insight that prompted the new test was that nowhere in the Arnstein inquiry was the court formally required to evaluate how much of the allegedly copied material was protected expression. Copying of unprotected material, no matter how extensive, is insufficient to make a defendant liable for infringement. The Krofft panel’s solution, however, was to recombine pieces of Arnstein into a framework that, after establishing ownership of a valid copyright, required a plaintiff to show three things: access to the plaintiff’s work (which was part of Arnstein’s actual copying stage), followed by two forms of substantial similarity. First, there is the so-called extrinsic test, which as presently defined identifies and compares “the protectable elements of the plaintiff’s expression” in order to “assess similarities in the objective details of the works. The second form of substantial similarity is the intrinsic test, which “considers the perspective of the ‘lay observer’” and asks the jury to perform “a holistic comparison that focuses on whether the works are substantially similar in … total concept and feel.”

It’s the intrinsic test that was the focus of attention in the panel decisions: the per curiam opinion concluded that “the district court did not err in denying Sedlik’s Rule 50(b) motion because the jury’s verdict was based on an application of the intrinsic test,” and in turn “[b]ecause the jury’s verdict was based on an application of the intrinsic test, we will not second-guess it.” The concurring opinions likewise lamented that the result “came down to the ‘intrinsic’ test,” producing an “inscrutable no-infringement verdict.”

That leads to our question: Why is everyone so certain that the jury decided this case based on the intrinsic test? It’s not just the panel judges; most commentators have made the same assumption. (One of us (Said) has a forthcoming essay, Reading the Jury’s Mind, that dives into further detail on this question.) The assumption is not only unwarranted, it’s misleading; it suggests that the way to fix the Ninth Circuit framework is to eliminate the intrinsic test. While we agree the intrinsic test should go, the right way to do that is by rethinking the whole infringement determination, not by targeting only one subpart.

It could turn out that the well-known problems with the intrinsic test are a red herring in this case. Here’s the issue: under the Ninth Circuit framework, the plaintiff must demonstrate both forms of substantial similarity to prevail at trial, the extrinsic test and the intrinsic test. The jury was clearly informed, in its instructions and at trial, that it needed to consider both tests. As a result, the jury could have found for the defendant on the basis of the extrinsic test, the intrinsic test, or both. Indeed, the substantial similarity instructions required the jury to consider the extrinsic test as their “first step,” and if they failed for the plaintiff there, the inquiry was over. See Jury Instr. 20. That means that the jury may never even have reached the intrinsic test.

What makes a verdict based on the extrinsic test a plausible scenario is that the jury heard a considerable amount of argument and evidence at trial that the elements copied by the defendant were not copyrightable, which for all we know could have been the basis of its verdict. The verdict form sheds no light on this; none of the six questions on substantially similarity broke the question down by test. (As a side note, it is possible to include doctrinal nuance for the jury to decide, as we saw with Griffin v. Sheeran’s detailed verdict form, which allowed the jury to make clear that it was finding for Sheeran on the basis of independent creation.) In her post-trial decision, Judge Dale Fischer seemed to agree: “The Court must draw the reasonable inference that the jury found that it was the unprotected elements of the Portrait that were copied.” Both parties then briefed the Ninth Circuit panel on both the intrinsic and the extrinsic tests on appeal, which suggests that they considered the issue a live one at that point. In fact, one of Sedlik’s main arguments—at summary judgment, and again on appeal—was that the extrinsic test ought to dispose of the case as a matter of law, in his favor. It’s therefore puzzling, given its role in the litigation up until that point, that the extrinsic test has pretty much disappeared from view.

So why has everybody been assuming that the jury verdict was based only on the intrinsic test? It makes sense that the panel would base its decision on the intrinsic test; an appellate court can affirm on any basis present in the record, and since according to Ninth Circuit case law, the intrinsic test is now characterized as unreviewable, that provides a quick resolution to the appeal. But that’s a different question from what the jury in fact decided, and much of the commentary seems to be making an unsupported assumption that the jury was on track to find for the plaintiff until it was derailed by the intrinsic test. We think instead that, on a review of the record, the proper outcome of the infringement inquiry is not obvious in this case (in fact we disagree), but we agree that the en banc rehearing presents an opportunity for the Ninth Circuit to fix the sequencing and elements of the decision-making process in infringement cases, which has been a problem ever since Sid & Marty Krofft was decided.

One possible explanation for why the panel focused on the intrinsic test may have had to do with how the infringement inquiry is usually litigated in the Ninth Circuit. As we’ll explain later, the infringement inquiry is a mixture of factual and legal questions that are difficult to split apart but are problematic to consider together. The Ninth Circuit framework addresses this problem by allowing judicial review of the extrinsic test, but only the extrinsic test, on a motion for summary judgment. In some ways this makes sense, because the question of what in the plaintiff’s work constitutes protectable expression is one of the more legal tasks in the infringement inquiry. There thus may be some temptation to think of the extrinsic test as an issue for the judge, leaving only the intrinsic test as an issue for the jury. But that’s not what happens. The parties may not even move for summary judgment on the extrinsic test. Even if there is such a motion and it is denied, the jury will then consider both tests, not just the intrinsic test. If anything, the jury is likely to focus even more attention on the extrinsic test, which it is typically instructed to consider first. Whatever happens beforehand, once the case gets to trial, the jury is then asked to do much of the work of filtering unprotected material from the plaintiff’s claims.

In a subsequent post, we’ll address another issue that particularly concerned the Sedlik panel judges, the apparent “asymmetry” in granting summary judgment for defendants if the extrinsic test fails, but denying summary judgment to plaintiffs if they succeed on the extrinsic test. And we’ll describe and expand upon the solution proposed in our amicus brief, namely, that wrongful appropriation be reformulated to include a clear test for protected expression followed by an assessment of the appropriation considered from the perspective of the ordinary observer, also known as the audience test. Stay tuned!

Prior Tattoo Copyright Blog Posts

• Tattoo Artist Wins Copyright Claim, But Gets Zero Damages–Alexander v. Take Two
• Videogame Maker Has Implied License to Depict Copyrighted Tattoos–Hayden v. 2K
• This Blog Has Jumped the Shark: I’m Covering a Copyright Opinion About a Tattoo of Tiger King’s Joe Exotic–Cramer v. Netflix
• Jury Awards Damages to Tattoo Artist for Video-Game Depiction–Alexander v. WWE 2K
• Can Tattoos Infringe Copyrights, and If So, What Happens Then?–Sedlik v. Kat Von D
• Depicting Randy Orton’s Tattoos in a Video Game Could Be Copyright Infringement–Alexander v. WWE 2K
• Videogame Doesn’t Infringe Tattoo Copyright By Depicting Basketball Players–Solid Oak Sketches v. 2K Games
• Copyright and Tattoos: Hangover II Injunction Denied, But the Copyright Owner Got Some Good News Too–Whitmill v. Warner Bros.
• Tattoo Advertising/Human Billboards
• Copyright in Tattoos
• Also, see Q2 of my 2005 contracts law exam and the sample answer.

The post Sedlik v. Von Drachenberg: All About That Intrinsic Test? (Guest Blog Post) appeared first on Technology & Marketing Law Blog.

This case was part of a broad-based copyright owner litigation campaign that included Viacom v. YouTube and UMG v. Veoh. All of these lawsuits were designed to permanently shut down the video hosting category by finding a hole in the Section 512(c) online safe harbor so that copyright owners could sue UGC sites even if they didn’t send individual takedown notices. YouTube settled, Veoh went broke, and Vimeo soldiered on (and on and on…).

In January 2025, Vimeo scored a major win in the Second Circuit. When the dust settled, the court summarizes: “Vimeo ultimately achieved complete victory on all of Plaintiffs’ claims after many long, hard-fought years spent litigating this dispute.”

Vimeo sought a 505 attorneys’ fee shift for its $6 million in defense costs over 17 years. The court denies the request, but awards it a token $16,000 in costs.

The court summarizes its thinking:

As Vimeo itself has previously recognized, this case raised “many difficult or new” issues….An award of attorneys’ fees to Vimeo, however, would not serve the purposes of the Copyright Act. Plaintiffs asserted reasonable claims that raised novel, complex questions of law, and they litigated those claims reasonably and in good faith. This case also presents little need for either compensation or deterrence.

What were those novel issues?

This case raised many issues of first impression, including, but not limited to, the legal framework governing when a service provider is deemed to have actual or constructive (also called “red flag”) knowledge of infringement, the circumstances in which willful blindness is a proxy for knowledge, the factual showing necessary for a plaintiff to establish the foregoing, and whether the DMCA’s safe harbor provisions applied to sound recordings fixed prior to February 15, 1972.

Those issues felt more novel back in 2009. The court acknowledges the case’s venerability, saying:

the legal standards governing, and the factual showing required to receive, DMCA safe harbor protection had not been addressed by the Second Circuit when Plaintiffs filed suit in 2009….

Even following Viacom, the evidentiary showing necessary to present or defeat a safe-harbor defense under the DMCA was not settled law, particularly with respect to the question of actual or red flag knowledge of infringement.

Vimeo pointed out that the record labels could have avoided this case entirely by sending proper 512(c)(3) takedown notices. The court is unmoved:

there is no statutory requirement that a plaintiff exhaust its notice-and-takedown remedies against a defendant before bringing suit under the Copyright Act….

As the Second Circuit noted, the notice-and-takedown provisions merely “augment[ed] the arsenal of copyright owners” by creating an alternative remedy. And because the limitation on liability conferred by the DMCA is qualified, rather than absolute, there remains a place for good-faith lawsuits under the Copyright Act to test whether a service provider is entitled to that immunity. From a rightsholder’s perspective, the two remedies are far from the same: unlike a claim brought under the Copyright Act, a DMCA takedown notice does not provide a rightsholder with monetary relief for past infringement or injunctive relief against future infringement, both of which Plaintiffs sought in this action. Penalizing a rightsholder for seeking a remedy available to it under the Copyright Act—without an exhaustion requirement—would not serve the Act’s purposes.

The court did award Vimeo $16k in costs because it prevailed in the most recent Second Circuit appeal.

* * *

Did the record labels really have colorable arguments when they first filed this lawsuit? Well, yes, in the sense that the DMCA is a long and complicated safe harbor filled with ambiguities. Major copyright owners planned to test all of the ambiguities–and are still working on that agenda nearly 30 years later.

However, the copyright owners’ real agenda was never to clarify the ambiguities in good faith. Instead, their goal is, and always was, to tacitly amend the DMCA safe harbor in court to secure terms they did not and could not get from Congress via legislative deal-making–most notably, to let copyright owners bypass the DMCA’s central notice-and-takedown architecture so that they could sue UGC services over user-caused copyright infringement without sending individual takedown notices. The copyright owners have been willing to risk many millions of dollars to obtain that backdoor amendment in court, and they really don’t care about the consequences for the defendants they steamroller or bankrupt in the process. To me, this is exactly why a 505 fee shift would have been the only fair outcome here. If the copyright owners are going to gamble some of their fortune on securing legislative amendments via impact litigation, they should bear the full costs of that strategy.

Instead, the fee shift denial implicitly legitimizes the copyright owners’ lawfare strategy against the DMCA online safe harbors. There is surely one or more lessons about the proper design of immunities and safe harbors buried in this case study somewhere.

Case Citation: Capitol Records, LLC v. Vimeo, LLC, 2026 WL 2606633 (S.D.N.Y. Sept. 3, 2026)

The post After $6M and 17 Years Fighting the Record Labels’ Copyright Lawfare, the Court Awards Vimeo $16k in Costs–Capitol Records v. Vimeo appeared first on Technology & Marketing Law Blog.

I presume the plaintiff and many of the 44 defendants are Chinese entities. This case appears to be another example of how the SAD Scheme has become one of the U.S.’s most popular exports to China.

The plaintiff claims that the defendants infringed its copyright, including registration #VAu 1-517-249, titled “Black Castor Oil 1 and 3 Other Unpublished Works.”

As usual with SAD Scheme cases, the plaintiff initially obtained an ex parte TRO. Then, Shenzhen Moulis Electronic Co., Ltd., on behalf of 18 defendants (the “Aliver Defendants”), appeared in the case and started poking holes in the plaintiff’s assertions.

Following the preliminary injunction hearing, the plaintiff dismissed the defendants voluntarily with prejudice. Voluntary dismissals are a standard tactic when SAD Scheme cases become contested. From the plaintiff’s standpoint, it’s better to cut loose the squeaky defendants who might disrupt the entire case, so the plaintiff can keep squeezing the other defendants.

However, it is less typical for the plaintiff to voluntarily dismiss the defendants with prejudice. Normally that occurs only after a settlement, which did not happen here. The court calls the plaintiff’s dismissal with prejudice “unusual.”

The Aliver Defendants then sought a 505 attorneys’ fee shift of nearly $40k, which the court grants.

Did the Aliver Defendants Prevail?

When copyright plaintiffs are losing, a voluntary dismissal provides a way to reduce any residual exposure, because judges rarely order a fee shift for a defendant who is already out of the case. Also, at least in the 11th Circuit, a court doesn’t have the statutory authority to issue a fee shift to a defendant dismissed without prejudice.

But here, the plaintiff dismissed with prejudice, and the court treats the requested fee shift here as a novel question: “does a defendant prevail if the dismissal materially changes the relationship between the parties but the dismissal does not require judicial imprimatur other than a perfunctory order closing the matter?”

The court says yes: “Plaintiff sought damages and injunctive relief against the Aliver Defendants but obtained neither.” The court notes how badly the case was going for the plaintiff:

At the preliminary injunction hearing, the Aliver Defendants argued—and the Court agreed—that Plaintiff was unlikely to prevail on the merits of its copyright claim against the Aliver Defendants. The Court’s denial of preliminary injunctive relief was based on multiple glaring issues with Plaintiff’s claim, including that Plaintiff failed to allege or provide evidence to support that the Aliver Defendants had access to or copied Plaintiff’s alleged copyrighted artwork and failed to rebut the other issues raised by the Aliver Defendants regarding Plaintiff’s creation, ownership, and publishing of the alleged copyrighted artwork.

It was only after the Court denied Plaintiff’s PI Motion, on the basis that Plaintiff was unlikely to prevail on the merits of its claim, that Plaintiff voluntarily dismissed its claims against the Aliver Defendants with prejudice. The fact that Plaintiff’s notice of voluntary dismissal was with prejudice—as opposed to without prejudice—is persuasive here even if the dismissal did not require judicial imprimatur. A voluntary dismissal without prejudice generally leaves the parties as though the action had never been brought and does not prevent the plaintiff from refiling. By contrast, Plaintiff’s notice of voluntary dismissal with prejudice permanently barred Plaintiff from reasserting the same copyright claims against the Aliver Defendants….

here, the Court denied Plaintiff’s PI Motion on the ground that Plaintiff failed to demonstrate a substantial likelihood of success on the merits and identified on the record the specific deficiencies in Plaintiff’s allegations against the Aliver Defendants. In doing so, the Court effectively “rebuffed” Plaintiff’s claims.

Ultimately, the rights of the parties were conclusively resolved following the preliminary injunction ruling: Plaintiff’s subsequent voluntary dismissal with prejudice permanently barred re-litigation of the very claims the Court had already found deficient. The Court’s rejection of the viability of Plaintiff’s claims coupled with Plaintiff’s with-prejudice dismissal renders the Aliver Defendants prevailing parties

So, the big mystery of this case: why did the plaintiff choose to dismiss with prejudice? Occam’s razor suggests that it was an unforced error.

(To be clear, we should favor plaintiffs dismissing with prejudice rather than without. Dismissals without prejudice leave a Sword of Damocles hanging over the defendants’ heads, with associated inhibiting effects).

[UPDATE: a reader wrote to me: “defendants in this sort of case can put P’s in the position where dismissals MUST be with prejudice (or at least by stipulation or with court permission) by filing an answer or an MSJ.”]

Factors Supporting 505 Fee Shift

Having determined the defendants’ eligibility for a fee shift, the court decides it’s appropriate to issue a fee shift here because:

• “Aliver Defendants achieved complete success.”
• “Plaintiff’s copyright theory was objectively unreasonable. Plaintiff alleged infringement of unpublished works but did not adequately allege access, even after the Aliver Defendants identified that deficiency”
• “compensation and deterrence favor fees” because it encourages plaintiffs to scrutinize their claims (which they should be doing anyway)

This is a good reminder of why copyright owners have not embraced the SAD Scheme as thoroughly as trademark owners. While the copyright and trademark statutes both have attorneys’ fee shifting provisions, courts are more willing to grant fee shifts in copyright cases. As we’ve seen for decades, it’s hard to run a copyright-based online trolling campaign when fee shifts cause the profit meter to run in reverse.

Implications

In contrast to the resolution of many SAD Scheme cases, this case resolved comparatively favorably for the defense. The defendant got the claims dismissed and an award of their attorneys’ fees.

Great, but this outcome still isn’t good news. The court wrongly issued a TRO based on an apparently defective copyright claim. Worse, as the court itself described, the case had “multiple glaring issues”–but, I guess, not glaring enough for the court to catch them at the TRO stage? In other words, had the judge more aggressively policed the plaintiff’s ex parte requests, this case never should have proceeded against the Aliver Defendants. Further, the judge doesn’t acknowledge her complicity, order any further sanctions against the plaintiff, or even scold the plaintiff for extracting an undeserved TRO from her.

The court’s choices not to hold the plaintiff fully accountable or lament her role in the scheme is one of the reasons the SAD Scheme keeps perpetuating. In plaintiffs’ efforts to create SAD Scheme omelettes, they routinely and predictably break some eggs, and the courts don’t adequately impose consequences for the messes they make. #StopTheSADScheme.

Case Citation: XYZ Corp. v. Schedule A Defendants, 0:24-cv-61886-JB (S.D. Fla. Sept. 3, 2026)

SUPPLEMENT: Ningbo Jiaruisi E-Commerce Co., Ltd. v. WHAM-O Holding, Ltd., No. 1:26-cv-10701 (N.D. Ill. complaint filed Sept. 3, 2026). This lawsuit represents some of the fallout from the Seventh Circuit’s Kangol v. Hangzhou Silk decision, which rejected email service on many Chinese defendants. The complaint summarizes its purpose:

to obtain relief from default judgments and related orders entered in Northern District of Illinois “Schedule A” cases against mainland-China defendants who were incorrectly served via email pursuant to FRCP 4(f)(3) and not through the Hague Service Convention, did not appear, did not settle, and were subjected to default judgments, asset restraints and collection. Plaintiff seeks declaratory and equitable relief, including relief from void judgments, an accounting, restitution of funds collected under such judgments, taxable costs and reasonable attorneys’ fees and litigation expenses to the extent authorized by law, including from any common fund or monetary benefit created, preserved, or restored through this action, prejudgment and post-judgment interest, and related relief necessary to restore the parties to the position they would have occupied absent the improper entry and enforcement of those judgments.

This case reinforces how judges don’t voluntarily clean up, or even acknowledge, any mistakes they made in past SAD Scheme rulings. Following Kangol, it’s now clear that a huge number of SAD Scheme defendants were not properly served, but what steps are the courts voluntarily taking to correct those due process violations? As far as I can tell, none. I’m not sure if this lawsuit is the right redress mechanism, but I hope the harmed defendants find some relief.

Prior Blog Posts on the SAD Scheme

• New York Judge Shuts Down a SAD Scheme TRO Request–CJB Global v. Schedule A Defendants
• Every SAD Scheme Opinion Is Weird In Its Own Way–Cai v. Chaozhoushi Yitong Dianzi Shangwu Youxiangongsi
• Federal Circuit Rebuffs SAD Scheme Plaintiff–Shenzhen Jisu v. Annex A Defendants
• Court Rebuffs Emojico’s SAD Scheme TRO Request
• Seventh Circuit Limits Email Service to Chinese SAD Scheme Defendants–Kangol v. Hangzhou Silk
• SAD Scheme Defendant Gets Damages Payout from the Bond–Bright Head v. Schedule A Defendants
• Judge Shopping & Schedule A (Guest Blog Post)
• SAD Scheme Plaintiff Gets Default Win But Blows the Layup on Damages–Shenzen Huajie v. Shenzen Leyibei
• SAD Scheme Copyright Plaintiff Must Compensate Defendants–Shenzhen Langmi v. Schedule A Defendants
• A “But They’re ‘Counterfeiters’!” Argument Doesn’t Clinch a SAD Scheme TRO–Emojico v. Schedule A Defendants
• New Article Alert: “SAD Scheme Standing Orders”
• Greer Burns Law Firm Sanctioned for “Willfully Abusive” and “Egregious” SAD Scheme Judge-Shopping
• Schedule A: Ten Notable Developments in 2025 (Guest Blog Post)
• Second Circuit Rejects Email Service on Chinese Defendants in Baby Shark SAD Scheme Case
• 11th Circuit Sidesteps the SAD Scheme’s Problems–Ain Jeem v. Schedule A
• Another Shill Article Tries to Normalize the SAD Scheme
• Court Sanctions Plaintiff’s Lawyer for Unverified Claims That the Defendant Was Hiding–Guangzhou Youlan Technology Co. Ltd. v. Onbrill World
• SAD Scheme Cases Are a Cesspool of IP Owner Overreaches–Nike v. Quanzhou Yiyi Shoe Industry
• District of New Jersey Adopts SAD Scheme Standing Order
• Court “Sanctions” SAD Scheme Judge Shopping—Crimpit v. Schedule A Defendants
• Chicago-Kent SAD Scheme Symposium TOMORROW
• Amicus Brief Urges Seventh Circuit to Award Attorneys’ Fees in SAD Scheme Case–Louis Poulsen v. Lightzey
• Court Rejects Schedule A Claims Against Sellers of Compatible Parts/Accessories (Cross-Post)
• Judge Kness: the SAD Scheme “Should No Longer Be Perpetuated in Its Present Form”–Eicher Motors v. Schedule A Defendants
• SAD Scheme Lawyers Sanctioned for Judge-Shopping–Dongguan Deego v. Schedule A
• Judge Ranjan Cracks Down on SAD Scheme Cases
• Because the SAD Scheme Disregards Due Process, Errors Inevitably Ensue–Modlily v. Funlingo
• SAD Scheme-Style Case Falls Apart When the Defendant Appears in Court—King Spider v. Pandabuy
• Serial Copyright Plaintiff Lacks Standing to Enforce Third-Party Copyrights–Viral DRM v 7News
• Another N.D. Ill. Judge Balks at SAD Scheme Joinder–Zaful v. Schedule A Defendants
• Judge Rejects SAD Scheme Joinder–Toyota v. Schedule A Defendants
• Another Judge Balks at SAD Scheme Joinder–Xie v. Annex A
• Will Judges Become More Skeptical of Joinder in SAD Scheme Cases?–Dongguan Juyuan v. Schedule A
• SAD Scheme Leads to Another Massively Disproportionate Asset Freeze–Powell v. Schedule A
• Misjoinder Dooms SAD Scheme Patent Case–Wang v. Schedule A Defendants
• Judge Hammers SEC for Lying to Get an Ex Parte TRO–SEC v. Digital Licensing
• Judge Reconsiders SAD Scheme Ruling Against Online Marketplaces–Squishmallows v. Alibaba
• N.D. Cal. Judge Pushes Back on Copyright SAD Scheme Cases–Viral DRM v. YouTube Schedule A Defendants
• A Judge Enumerates a SAD Scheme Plaintiff’s Multiple Abuses, But Still Won’t Award Sanctions–Jiangsu Huari Webbing Leather v. Schedule A Defendants
• Why Online Marketplaces Don’t Do More to Combat the SAD Scheme–Squishmallows v. Alibaba
• SAD Scheme Cases Are Always Troubling–Betty’s Best v. Schedule A Defendants 
• Judge Pushes Back on SAD Scheme Sealing Requests
• Roblox Sanctioned for SAD Scheme Abuse–Roblox v. Schedule A Defendants
• Now Available: the Published Version of My SAD Scheme Article
• In a SAD Scheme Case, Court Rejects Injunction Over “Emoji” Trademark
• Schedule A (SAD Scheme) Plaintiff Sanctioned for “Fraud on the Court”–Xped v. Respect the Look
• My Comments to the USPTO About the SAD Scheme and Anticounterfeiting/Antipiracy Efforts
• My New Article on Abusive “Schedule A” IP Lawsuits Will Likely Leave You Angry
• If the Word “Emoji” is a Protectable Trademark, What Happens Next?–Emoji GmbH v. Schedule A Defendants
• My Declaration Identifying Emoji Co. GmbH as a Possible Trademark Troll

The post SAD Scheme Plaintiff Must Pay $40k to Defendant–Guangzhou Tinpod v. Schedule A Defendants appeared first on Technology & Marketing Law Blog.

This lawsuit raises one of the venerable but surprisingly vexing copyright law questions: when is a price copyrightable? That might sound like a stupid question because “facts” aren’t copyrightable and a price seems like it should be characterized as a “fact.” And yet…the copyright law jurisprudence is littered with cases saying or implying that individual prices could be copyrightable (e.g., the abysmal CDN v. Kapes opinion), as wacky as that may seem. These cases have imperiled various important social activities, such as price comparisons.

This court, in contrast, treats the copyrightability of prices as the easy question I always thought it should be

Ideally, the clean lower court ruling would have finally ended the price copyrightability drama. Instead, the Second Circuit did a “well, actually….” and revives the case.

[A reminder that in this case, Nivoda never published Rapaport’s prices directly. Instead, Nivoda displays “percentages representing the difference between Nivoda’s price for the diamond and the price for that category of diamond in the Price List, not a display of the entire List itself.”]

The court summarizes its views on when numbers are facts:

Where the expression takes the form of a number, “[t]he question then becomes the possible range of that number.” Determining this range allows the court to assess whether the number is an “original creation[],” deserving of copyright protection, or merely a “pre-existing fact[],” free to be copied.

No, this makes no sense. How can a single number be expressed as a range of numbers???

What’s slowing down courts is when a number is the distillation of an estimator’s asset valuation. Valuations aren’t a precise science, so any numerical expression of a valuation isn’t a “fact” but an “opinion” and could very well be expressed as a range rather than a single number. Yet, as the lower court held, we can’t separate the estimator’s opinion from the fact that the estimator held this numerical opinion. That inseparability triggers copyright’s merger doctrine. This means anyone should be free to republish the estimator’s numerical “opinion” without copyright entanglements.

The Second Circuit, harvesting years of precedential doubt it has sowed on this point, cannot reach such a clean outcome:

Without evidence to establish how the Price List is created, however, the court lacked a basis for concluding that this idea is what is reproduced in the Price List. As pled, the Price List reflects Rapaport’s “opinion as to the market value of any diamond based on size, color, and clarity,” based on Rapaport’s “analysis and sophisticated expert industry opinion.” Rapaport does not allege, for example, that the List reflects nothing more than the average transaction prices for particular types of diamonds in a particular time span, based on an aggregation of reported sales. To the contrary, text accompanying printed versions of the Price List emphasizes that the List reflects Rapaport’s “opinion” of prices, which may differ “substantially” from “actual transaction prices.” Thus, for the limited purpose of our analysis, drawing all reasonable inferences in Rapaport’s favor based on the facts alleged in the complaint and other facts appropriately considered at this stage of litigation, we identify the “idea” at risk of merging with Rapaport’s expression, as “Rapaport’s opinion as to the value,” as opposed to the actual “market price” (meaning the price set by the market) of particular diamonds based on their size, color, and clarity….

No, this makes no sense. The process of manufacturing a number should be irrelevant to its copyrightability. Even if the valuation required the most creative process that has ever existed in human history, the estimator’s valuation becomes a fact about the estimator holding that opinion.

Still harvesting the decades-long bad precedent, the court continues:

In order to determine whether all possible expressions of a party’s opinion
regarding diamond price valuation are “substantially similar,” we must assess the possible range of these estimates. In doing so, we evaluate whether the number is better considered a “mechanical derivation[]” of a pre-existing fact, or an “original creation[],” resulting from “some minimal degree of creativity….

the values included in Rapaport’s Price List, as alleged, reflect Rapaport’s “opinion” as to hypothetical products meeting certain specifications, based on Rapaport’s “analysis and sophisticated expert industry opinion.” On appeal, Rapaport emphasizes that the values included in the Price List do not express the “actual market price of any-real world diamond,” but rather its “opinion as to what should be the sales prices for different classes of hypothetical diamonds.” Perhaps most relevant, unlike the actual market price of particular futures contracts (which the settlement prices in New York Mercantile aimed to capture mostly by reference to a fixed set of trading data), the value of a diamond—like that of a used car—may depend on any number of facts beyond current trading data, such as subjective considerations of personal opinion and aesthetic preference. Rapaport alleges in its complaint that it arrives at the values included in the Price List by reference to factors beyond raw trading data, such as its “extensive market research and proprietary knowledge,” and its “decades of knowledge, investment, and industry relationships.” At this stage of the litigation, we are obliged to take them at their word. Only discovery can tell whether the sources and processes used by Rapaport in fact more closely resemble those used by NYMEX to determine settlement prices, and not (as alleged) those used by the Red Book editors for used-car valuations.

Devastating. This is some seriously bad epistomology. Here’s a possibility: a number could be BOTH an opinion (a valuation estimation) and a fact (the estimator’s published belief) AT THE SAME TIME. If the court had entertained that possibility, this should have been an easy dismissal (as the lower court held).

And what goal does this hack philosophizing advance? It suggests that every copyright claim over single numbers will not be resolvable on a motion to dismiss (and maybe not on summary judgment either). That’s a lot of socially wasteful litigation.

The court addresses other policy matters in wholly unsatisfactory ways:

the List attempts to value hypothetical products whose ultimate value is tied, at least in part, to subjective preferences. We are therefore not persuaded that failing to apply the [merger] doctrine will “seriously impair the policy of the copyright law that seeks to preserve free public access to ideas.”…

Nivoda does not suggest, nor does the present record indicate, that Rapaport would still have an incentive to produce the Price List if it lost its exclusive rights over that publication. The Price List “is available by paid subscription only” and, Rapaport asserts, is the product of “significant time, resources and expense,” resulting from the company’s longstanding “industry and customer relationships.”  Accordingly, applying the doctrine appears unlikely, based on what we must assume to be true at this point in the proceedings, to serve copyright’s aim of encouraging the authorship of innovative works.

Feist eliminated sweat-of-the-brow justifications for copyright. Apparently the Second Circuit prefers a pre-1991 world. Oops, I’m not sure I can reference the number 1991. I might have infringed on someone’s copyright.

On remand, I hope the lower court embraces the full spectrum of ways this case should resolve in favor of the defense. Ultimately, I hope this opinion becomes another mockable tangent in courts’ decades-long quixotic quests to manufacture copyrights for single numbers.

Case Citation: Rapaport USA, Inc. v. Nivoda USA, LLC, 25-1065 (L) (2d Cir. Sept. 4, 2026). Judge Nardini, a Trump appointee, authored this opinion.

BONUS: The Construction Specifications Institute, Inc. v. Zerodocs.com, Inc., 2026 WL 2600412 (C.D. Cal. Sept. 1, 2026). The court summarizes the plaintiff’s work:

The work at issue in this copyright and trademark case—the CSI MasterFormat—is a classification system that has been, for decades, the national standard for identifying construction bids. CSI’s 2020 edition of its MasterFormat contains a taxonomy system for classifying and organizing technical information and project details in architectural, engineering, and construction projects. Specifically, each component of a project can be identified by a standardized six-digit number, which can be expanded to eight digits when greater detail is required, accompanied by a standard title that is usually a descriptive word or short phrase…

CSI’s MasterFormat Maintenance Task Team (the “MFMTT”) is tasked with conducting ongoing reviews of the MasterFormat, and the MFMTT has adopted a biennial revision process. Users of the MasterFormat can submit commentary and proposals to the MFMTT for review and approval. The MFMTT bases its approval and revision process on several broad, flexible criteria. The MFMTT draws on user feedback and proposals to make its revision and addition determinations. All proposals must pass through a two-stage process before they can be approved by the MFMTT.

The court’s description of the defendant’s activities:

Zerodocs distributed a product called “SimpleSpec” that is composed of a collection of pre-written word processing document templates. The SimpleSpec templates were created in 2017 to help users write bid proposals that comply with the MasterFormat classification system. Each SimpleSpec template is directed to one entry in CSI’s MasterFormat system.

Zerodocs used CSI’s “CSI” mark on its website to refer to CSI’s MasterFormat, but it did so without CSI’s authorization. Those references accurately reflect the source of the standards to which the Zerodocs SimpleSpec templates were written—the MasterFormat standard…

Zerodocs has adopted the structural style of MasterFormat into its Vendor Specs, and it uses CSI’s MasterFormat framework. Specifically, Zerodocs’s SimpleSpec offers at least 457 templates organized in the MasterFormat framework. CSI further identifies that, in March 2024, Zerodocs’s website displayed at least 199 SimpleSpec specifications that are identical to the 2020 edition of CSI’s MasterFormat. CSI shows that SimpleSpec contains templates that use specific number and title combinations from the MasterFormat—e.g., “03 30 00—Cast-In-Place Concrete.”

Though Zerodocs copied something, there was no copyright infringement. The “divisions, numbers, and titles of the MasterFormat are short phrases, and, therefore, they are not protected elements.”

The taxonomy isn’t copyrightable either:

CSI’s descriptions are factually concise, and they identify “specific work results and construction practices.” For example, in the section for Concrete, there is no room for creative expression because CSI must necessarily be as concise as possible and identify the specific work result—i.e., Concrete. In describing the sections and title of the taxonomy, CSI is “knuckling under” to facts about materials used or jobs performed in construction projects. Furthermore, whether a description is updated or adopted by the MFMTT’s revision process is a rote, four-step process that asks if the new description better defines the subject matter, is more useful, or is more appropriate. Those are utilitarian queries, not creative endeavors. Even if the MFMTT wanted to change a description, it prioritizes established industry terms and introduces new terms only when necessary. No “blood is shed” in the MFMTT’s revision process…

CSI assigns descriptors as concisely as possible by using words that best describe the subject.

I don’t think knuckles or blood have a lot to do with the copyrightability of taxonomies, but it might make a good Netflix series. Also, I’m not sure an author’s utilitarian aim dictates whether a work is expressive. Still, this court is at least doing better than the Rapaport court.

Zerodocs argued Baker v. Selden resolved the case. I do love topical citations in the 2020s to the nineteenth century classic, but the court points to rogue decisions from the 3rd and 7th Circuit that found taxonomies copyrightable despite the Selden case. Instead, “the Court is unpersuaded that CSI’s MasterFormat is wholesale uncopyrightable simply because it is a system. Rather, as previously discussed, the Court concludes that CSI’s MasterFormat did not meet the threshold for copyrightability of a taxonomy, as guided by American Dental and Southco.”

The court dismisses the trademark claims due to the nominative use doctrine.

The post Courts Still Can’t Let Go of the Possibility that Individual Prices are Copyrightable–Rapaport v. Nivoda appeared first on Technology & Marketing Law Blog.

if all of plaintiff’s requested ex parte relief were to be granted, plaintiff would at the outset be entitled to broad discovery with serious consequences to defendants. Plaintiff would first be authorized to serve expedited discovery on the Financial Institutions, who would be obligated to provide all known e-mail addresses and mailing addresses for defendants, as well as information relating to defendants’ assets and accounts “regardless of the hosting platform or institution.” Having received that information, and still without notice to any defendant, plaintiff could then freeze the assets maintained in any of the accounts identified through expedited discovery of 100 different international defendants. Acknowledging that plaintiff’s request for an asset restraint is in no way cabined only to accounts through which defendants sell the allegedly infringing products, this restraint would presumably apply to all of defendants’ accounts and assets regardless of their relation to this case. Only after discovery has been provided and the assets frozen would plaintiff notify any of the defendants of the existence of this action, through a proposed procedure inconsistent with the requirements of international service under the Hague Convention.

Judge Buchwald wraps up this overview of the SAD Scheme with a conclusion that seems obvious to me but shockingly isn’t yet obvious to all judges: “It may not be an exaggeration to say that once plaintiff’s requested relief has been authorized, the case is effectively over.”

Given the tenor of this overview, unsurprisingly the judge rejects the case’s “merits.”

On the design patent claim, Judge Buchwald says the “plaintiff has failed to show a likelihood of success on the merits for the simple reason that plaintiff has chosen not to submit its own product nor a physical example of any of defendants’ products for comparison.” The plaintiff tried a standard SAD Scheme trick of placing orders, taking screenshots, and then canceling the orders. The screenshots aren’t enough for the judge to “make a meaningful comparison sufficient to support the ‘extraordinary and drastic’ relief that plaintiff seeks.” She explains why test buys are needed to satisfy the Egyptian Goddess standard:

any existing differences between the products sold by defendants and those sold by plaintiff are of paramount importance. In this context, particularly given that plaintiff asserts design patent claims against 100 separate defendants, the Court is unable to determine from screenshots alone that plaintiff has satisfied the ordinary observer test and is likely to succeed on its design patent claim against each of the 100 defendants.

Click on image to play the GIF

In a footnote, she adds some lemon juice to the paper cut: “The position in which plaintiff finds itself is a self-inflicted wound. Plaintiff made a conscious choice to cancel each of the orders it placed, thus depriving the Court of the ability to meaningfully compare the products.”

#TestBuysOrBust.

With respect to the copyright claim, the plaintiff claims copyrights in the marketing photos. However, due to the high volume of defendants, the case preparation appears suspect: “plaintiff’s exhibits reflect that 22 of the 100 defendants have not violated plaintiff’s copyright.” These errors are enough to inhibit the judge from granting any requested copyright relief.

In a footnote, she adds: “if the plaintiff’s concern was truly in protecting their copyright, the Digital Millenium Copyright Act contemplates that copyright holders may enforce their copyright directly through service providers like Amazon.” I’m not sure we should fully celebrate the DMCA’s remedial powers here, but the DMCA’s notice-and-takedown option highlights what the plaintiff is trying to do here. Is the plaintiff trying to stop the sale of infringing items, or is it running a trolling campaign? The SAD Scheme is a widely preferred tool of choice for the latter; DMCA takedowns, not so much.

Judge Buchwald also questions the standard SAD Scheme argument for joinder. She points out that “the fact that plaintiff placed 99 separate orders to the same address in Manhattan undercuts the idea that defendants are related because the use of a single purchasing address would have placed defendants on notice that litigation was forthcoming.” This assumes that the order details reach the defendants even if the orders are canceled–I’m not sure if that’s true. In any case, the judge doesn’t act on her joinder concerns yet, but it seems like that will be a hurdle for the plaintiff.

Plaintiff’s TRO request denied.

I didn’t check to see if this is Judge Buchwald’s first SAD Scheme case, but either way, her strong and negative reactions to the scheme are commendable and, I hope, persuasive to her judicial colleagues.

Case Citation: CJB Global Imports, Ltd. v. Schedule A Defendants, 2026 WL 2517616 (S.D.N.Y. August 26, 2026).

* * *

BONUS: The Galleon Guild, Ltd. v. Schedule A Defendants, 2026 WL 2495610 (S.D. Fla. July 17, 2026). As usual, the court initially granted the SAD Scheme plaintiff’s requested ex parte TRO and allowed email service, followed by preliminary injunctions. Then, the case got reassigned to a new judge (Judge K. Michael Moore), and the plaintiff’s good times stopped.

The new judge inquired about jurisdiction, and the plaintiff’s answers sucked. First, the court rejects the “on information and belief” framing for the plaintiff’s fact claims, saying that a judge:

need not accept allegations made on information and belief where there is insufficient factual support to make those allegations plausible rather than just conclusory. Given that Plaintiff’s Complaint is largely full of the sort of generalized, form allegations that appear in many Schedule A complaints, the Court is not inclined to give credence to allegations made on information and belief

Second, the judge isn’t impressed with the plaintiff’s standard presentation of evidence by screenshots: “Plaintiff provides screenshots of order screens (which show orders that were not actually placed, let alone shipped into Florida) showing only that it seemed possible to place orders with Defendants that would ship to Florida.” Instead, to satisfy the Florida long-arm statute, the plaintiff must show that the defendant “actually sells trademark-infringing goods to Florida residents through his website.” #TestBuysOrBust.

The court reinforces that evidence of sales in Florida also may be required to satisfy Constitutional due process: “Where a defendant has merely existed on a website and has not consummated a sale into Florida, or even tried making a sale into Florida, there is no personal jurisdiction….[the court] is not holding a single sale into Florida would be sufficient to confer personal jurisdiction, only that Plaintiff has not plausibly alleged such a sale has occurred.”

While this case has reached its logical denouement, remember that the plaintiff long ago got the ex parte TRO, alternative service, and a preliminary injunction. In other words, a case that the court lacked jurisdiction to hear nevertheless caused a whole lot of judicially authorized damage anyway.

Prior Blog Posts on the SAD Scheme

• Every SAD Scheme Opinion Is Weird In Its Own Way–Cai v. Chaozhoushi Yitong Dianzi Shangwu Youxiangongsi
• Federal Circuit Rebuffs SAD Scheme Plaintiff–Shenzhen Jisu v. Annex A Defendants
• Court Rebuffs Emojico’s SAD Scheme TRO Request
• Seventh Circuit Limits Email Service to Chinese SAD Scheme Defendants–Kangol v. Hangzhou Silk
• SAD Scheme Defendant Gets Damages Payout from the Bond–Bright Head v. Schedule A Defendants
• Judge Shopping & Schedule A (Guest Blog Post)
• SAD Scheme Plaintiff Gets Default Win But Blows the Layup on Damages–Shenzen Huajie v. Shenzen Leyibei
• SAD Scheme Copyright Plaintiff Must Compensate Defendants–Shenzhen Langmi v. Schedule A Defendants
• A “But They’re ‘Counterfeiters’!” Argument Doesn’t Clinch a SAD Scheme TRO–Emojico v. Schedule A Defendants
• New Article Alert: “SAD Scheme Standing Orders”
• Greer Burns Law Firm Sanctioned for “Willfully Abusive” and “Egregious” SAD Scheme Judge-Shopping
• Schedule A: Ten Notable Developments in 2025 (Guest Blog Post)
• Second Circuit Rejects Email Service on Chinese Defendants in Baby Shark SAD Scheme Case
• 11th Circuit Sidesteps the SAD Scheme’s Problems–Ain Jeem v. Schedule A
• Another Shill Article Tries to Normalize the SAD Scheme
• Court Sanctions Plaintiff’s Lawyer for Unverified Claims That the Defendant Was Hiding–Guangzhou Youlan Technology Co. Ltd. v. Onbrill World
• SAD Scheme Cases Are a Cesspool of IP Owner Overreaches–Nike v. Quanzhou Yiyi Shoe Industry
• District of New Jersey Adopts SAD Scheme Standing Order
• Court “Sanctions” SAD Scheme Judge Shopping—Crimpit v. Schedule A Defendants
• Chicago-Kent SAD Scheme Symposium TOMORROW
• Amicus Brief Urges Seventh Circuit to Award Attorneys’ Fees in SAD Scheme Case–Louis Poulsen v. Lightzey
• Court Rejects Schedule A Claims Against Sellers of Compatible Parts/Accessories (Cross-Post)
• Judge Kness: the SAD Scheme “Should No Longer Be Perpetuated in Its Present Form”–Eicher Motors v. Schedule A Defendants
• SAD Scheme Lawyers Sanctioned for Judge-Shopping–Dongguan Deego v. Schedule A
• Judge Ranjan Cracks Down on SAD Scheme Cases
• Because the SAD Scheme Disregards Due Process, Errors Inevitably Ensue–Modlily v. Funlingo
• SAD Scheme-Style Case Falls Apart When the Defendant Appears in Court—King Spider v. Pandabuy
• Serial Copyright Plaintiff Lacks Standing to Enforce Third-Party Copyrights–Viral DRM v 7News
• Another N.D. Ill. Judge Balks at SAD Scheme Joinder–Zaful v. Schedule A Defendants
• Judge Rejects SAD Scheme Joinder–Toyota v. Schedule A Defendants
• Another Judge Balks at SAD Scheme Joinder–Xie v. Annex A
• Will Judges Become More Skeptical of Joinder in SAD Scheme Cases?–Dongguan Juyuan v. Schedule A
• SAD Scheme Leads to Another Massively Disproportionate Asset Freeze–Powell v. Schedule A
• Misjoinder Dooms SAD Scheme Patent Case–Wang v. Schedule A Defendants
• Judge Hammers SEC for Lying to Get an Ex Parte TRO–SEC v. Digital Licensing
• Judge Reconsiders SAD Scheme Ruling Against Online Marketplaces–Squishmallows v. Alibaba
• N.D. Cal. Judge Pushes Back on Copyright SAD Scheme Cases–Viral DRM v. YouTube Schedule A Defendants
• A Judge Enumerates a SAD Scheme Plaintiff’s Multiple Abuses, But Still Won’t Award Sanctions–Jiangsu Huari Webbing Leather v. Schedule A Defendants
• Why Online Marketplaces Don’t Do More to Combat the SAD Scheme–Squishmallows v. Alibaba
• SAD Scheme Cases Are Always Troubling–Betty’s Best v. Schedule A Defendants 
• Judge Pushes Back on SAD Scheme Sealing Requests
• Roblox Sanctioned for SAD Scheme Abuse–Roblox v. Schedule A Defendants
• Now Available: the Published Version of My SAD Scheme Article
• In a SAD Scheme Case, Court Rejects Injunction Over “Emoji” Trademark
• Schedule A (SAD Scheme) Plaintiff Sanctioned for “Fraud on the Court”–Xped v. Respect the Look
• My Comments to the USPTO About the SAD Scheme and Anticounterfeiting/Antipiracy Efforts
• My New Article on Abusive “Schedule A” IP Lawsuits Will Likely Leave You Angry
• If the Word “Emoji” is a Protectable Trademark, What Happens Next?–Emoji GmbH v. Schedule A Defendants
• My Declaration Identifying Emoji Co. GmbH as a Possible Trademark Troll

The post New York Judge Shuts Down a SAD Scheme TRO Request–CJB Global v. Schedule A Defendants appeared first on Technology & Marketing Law Blog.

Plaintiff Channel 781 News (“Channel 781”) is a YouTube-based news outlet focusing on local affairs in Waltham, Massachusetts. Channel 781 posted clips from Waltham municipal government meetings that it believed to be newsworthy. Channel 781 took these clips without permission from recordings of the meetings produced by Defendant Waltham Community Access Corporation (“WCAC”) for the city’s public access channel. The clips Channel 781 posted were accompanied by titles and captioning but otherwise consisted entirely of excerpts from WCAC’s recordings.

In September 2023, WCAC sent three notices to YouTube asking YouTube to take down fifteen of Channel 781’s clip videos on the basis that they infringed WCAC’s copyrights. YouTube complied and temporarily deactivated Channel 781’s account. Channel 781 subsequently sued WCAC under 17 U.S.C. § 512(f), alleging that WCAC failed to adequately consider that Channel 781’s videos were fair use and, thus, knowingly misrepresented in its takedown notices that it had a good faith belief that the videos were infringing.

It seems weird that anyone could restrict Channel 781’s ability to clip-farm videos of local government meetings. However, the videographer WCAC is an independent contractor to the local government, not the local government itself. This contractual arrangement interposes copyright interests into coverage of government functions. Unsurprisingly, WCAC then essentially uses its copyright ownership to act as a censorship proxy for the local government. Sad, but entirely predictable.

In a prior ruling, the court said Channel 781’s 512(f) claim survived WCAC’s motion to dismiss. Now, on summary judgment, the court dismisses the 512(f) claim. This becomes yet another 512(f) case that gets a little traction and then predictably goes splat.

The court adopts the Rossi standard, which means WCAC is liable for a 512(f) violation only if it subjectively believed its takedown notices were unjustified.

(In a footnote, the court disgrees with the Moonbug decision, treating 512(f)’s scienter requirement as negligence, saying that standard “appears to be inconsistent with the Ninth Circuit’s decisions in Rossi and Lenz”).

Applying this standard, the court holds that “no reasonable jury could find that WCAC failed to form a subjective good faith belief that the Channel 781 clip videos for which WCAC sent takedown notices did not constitute fair use.” The court explains:

Sheehan asked Wangler to assess whether Channel 781 had the right to post clips from WCAC’s recordings. To do so, Wangler read the email Kastorf sent to Sheehan about the fair use doctrine and watched a YouTube video on the same topic. He then emailed Sheehan that “[i]t’s possible [Channel] 781 … Zoom videos using short clips qualify as [f]air [u]se” but that “[w]hat does not qualify are the large number of videos taken directly from us and reproduced verbatim with zero editing or commentary.” He attached to his email a screenshot from the YouTube video he watched describing facts that make a use “less likely to qualify for fair use.” Wangler and Sheehan then agreed to send takedown notices only for the clip videos reproducing WCAC’s recordings with no editing or commentary except for the addition of a title. When Wangler later decided which videos to include in the takedown notices, he chose clip videos that consisted solely of excerpts from WCAC’s recordings, which he believed did not qualify for fair use protection. Given Wangler’s viewing of  YouTube video about fair use, his determination that some of Channel 781’s videos may have qualified as fair use while others did not, and the fact that WCAC only sent takedown notices for the latter set of videos, the record does not support a reasonable finding that WCAC failed to consider fair use or form a subjective good faith belief that the clip videos posted by Channel 781 were not fair use.

In light of Rossi, the fact that WCAC developed an overreaching fair use policy doesn’t support 512(f). “Channel 781’s arguments are a misguided effort to smuggle an objective reasonableness inquiry into the applicable subjective standard.” Per Lenz, WCAC did, in fact, consider fair use before sending takedown notices, so it satisfied the requirements:

Wangler expressly researched the fair use doctrine; made an effort to apply the doctrine to Channel 781’s clip videos; and determined before sending the takedown notices that the relevant videos were not fair use.

Channel 781 argued that WCAC took down its videos as part of a censorship agenda. The court says that motivation, even if true, would be irrelevant because WCAC properly considered the fair use considerations. The judge summarizes:

While Wangler’s fair use analysis may have been deficient, he did not intentionally fail to consider the possibility that Channel 781’s clip videos were fair use.

When I blogged the Lenz case over a decade ago, I wrote:

Let’s look at a hypothetical deposition transcript of a notice sender:

Q: Did you consider fair use?
A: Yes
Q: What steps did you take to evaluate the possibility of fair use?
A: I thought about it and decided it probably didn’t apply

Where does a 512(f) plaintiff go from here? It seems like the sender can legitimately claim that they considered fair use, albeit not in a “searching or intensive” way. 512(f) case apparently over.

This case is an excellent illustration of that hypothetical transcript and the inevitable futility of most 512(f) cases.

In my opinion, the secret “villian” is this story is the Waltham local government, which outsourced the videographing to a third-party rather than treating government transparency as a social value that should be funded by taxpayers.

Case Citation: Channel 781 News v. Waltham Community Access Corporation, 2026 WL 2409846 (D. Mass. Aug. 18, 2026)

BONUS: Parmar v. Google LLC, 2026 WL 2620416 (E.D. Tex. Sept. 3, 2026):

Parmar cannot show entitlement to an injunction under § 512(f) because that statute makes the defendants liable, if at all, only for “damages, including costs and attorneys’ fees.” It does not authorize injunctive relief. So § 512(f) cannot support a TRO.

Bonus: Peterson v. Berggren, 2026 WL 2925083 (D. Ore. Sept. 29, 2026)

Defendants allege that Plaintiff misrepresented to Etsy and Shopify that “artwork being sold by [Defendant] Berggren infringed the copyright of [Plaintiff’s] own works,” causing Defendant Berggren’s artwork to be “removed for sale” and Defendant Lettered And Lined, LLC’s online stores to be suspended….

Defendants allege that Plaintiff “was knowledgeable about copyright and the development of copyrighted artworks,” that Plaintiff “knowingly misstated the rights of a copyright holder … in her take-down notices to Etsy and Shopify,” and that Plaintiff sent a takedown notice “with the intent that Etsy and Shopify would respond by halting sales of [Defendants’ artwork].”…

Prior Posts on Section 512(f)

* Do DMCA Takedown Notices Need to Expressly Refer to the Lack of Fair Use?–Take-Two v. PlayerAuctions
* Does 512(f) Apply Differently to Counternotices Compared to Takedown Notices?
* It Takes a Lot for 512(f) Claims to Survive a Motion to Dismiss–Cordova v. Huneault
* Copyright Takedown Notices May Be Affecting Your Washing Machine Options–Ningbo Yituo v. GoPlus
* 512(f) Claim Sent to Trial (Which Didn’t Happen)–Leszczynski v. Kitchen Cube
* 512(f) Doesn’t Support Preliminary Injunction–BViral v. TheSoul
* In 512(f), the “F” Stands for “Futility”–Shaffer v. Kavarnos
* Does Anyone Still Care About NFTs? (Yuga Labs, LLC v. Ripps) — Guest Blog Post
* Viral DRM Awarded Damages for Its 512(f) Claims, But At What Cost?
* Big YouTube Channel Gets TRO Against Being Targeted by DMCA Copyright Takedown Notices–Invisible Narratives v. Next Level Apps
* The Competition Between Temu and Shein Moves Into a Courtroom–Whaleco v. Shein
* Copyright Battles Over City Council Videos
* Record Label Sends Bogus Takedown Notice, Defeats 512(f) Claim Anyway–White v. UMG
* Plaintiffs Make Some Progress in 512(f) Cases
* 512(f) Doesn’t Restrict Competitive Gaming of Search Results–Source Capital v. Barrett Financial
* 512(f) Once Again Ensnared in an Employment Ownership Dispute–Shande v. Zoox
* Surprise! Another 512(f) Claim Fails–Bored Ape Yacht Club v. Ripps
* You’re a Fool if You Think You Can Win a 512(f) Case–Security Police and Fire Professionals v. Maritas
* 512(f) Plaintiff Must Pay $91k to the Defense–Digital Marketing v. McCandless
* Anti-Circumvention Takedowns Aren’t Covered by 512(f)–Yout v. RIAA
* 11th Circuit UPHOLDS a 512(f) Plaintiff Win on Appeal–Alper Automotive v. Day to Day Imports
* Court Mistakenly Thinks Copyright Owners Have a Duty to Police Infringement–Sunny Factory v. Chen
* Another 512(f) Claim Fails–Moonbug v. Babybus
* A 512(f) Plaintiff Wins at Trial! –Alper Automotive v. Day to Day Imports
* Satirical Depiction in YouTube Video Gets Rough Treatment in Court
* 512(f) Preempts Tortious Interference Claim–Copy Me That v. This Old Gal
* 512(f) Claim Against Robo-Notice Sender Can Proceed–Enttech v. Okularity
* Copyright Plaintiffs Can’t Figure Out What Copyrights They Own, Court Says ¯\_(ツ)_/¯
* A 512(f) Case Leads to a Rare Damages Award (on a Default Judgment)–California Beach v. Du
* 512(f) Claim Survives Motion to Dismiss–Brandyn Love v. Nuclear Blast America
* 512(f) Claim Fails in the 11th Circuit–Johnson v. New Destiny Christian Center
* Court Orders Rightsowner to Withdraw DMCA Takedown Notices Sent to Amazon–Beyond Blond v. Heldman
* Another 512(f) Claim Fails–Ningbo Mizhihe v Doe
* Video Excerpts Qualify as Fair Use (and Another 512(f) Claim Fails)–Hughes v. Benjamin
* How Have Section 512(f) Cases Fared Since 2017? (Spoiler: Not Well)
* Another Section 512(f) Case Fails–ISE v. Longarzo
* Another 512(f) Case Fails–Handshoe v. Perret
* A DMCA Section 512(f) Case Survives Dismissal–ISE v. Longarzo
* DMCA’s Unhelpful 512(f) Preempts Helpful State Law Claims–Stevens v. Vodka and Milk
* Section 512(f) Complaint Survives Motion to Dismiss–Johnson v. New Destiny Church
* ‘Reaction’ Video Protected By Fair Use–Hosseinzadeh v. Klein
* 9th Circuit Sides With Fair Use in Dancing Baby Takedown Case–Lenz v. Universal
* Two 512(f) Rulings Where The Litigants Dispute Copyright Ownership
* It Takes a Default Judgment to Win a 17 USC 512(f) Case–Automattic v. Steiner
* Vague Takedown Notice Targeting Facebook Page Results in Possible Liability–CrossFit v. Alvies
* Another 512(f) Claim Fails–Tuteur v. Crosley-Corcoran
* 17 USC 512(f) Is Dead–Lenz v. Universal Music
* 512(f) Plaintiff Can’t Get Discovery to Back Up His Allegations of Bogus Takedowns–Ouellette v. Viacom
* Updates on Transborder Copyright Enforcement Over “Grandma Got Run Over by a Reindeer”–Shropshire v. Canning
* 17 USC 512(f) Preempts State Law Claims Over Bogus Copyright Takedown Notices–Amaretto v. Ozimals
* 17 USC 512(f) Claim Against “Twilight” Studio Survives Motion to Dismiss–Smith v. Summit Entertainment
* Cease & Desist Letter to iTunes Isn’t Covered by 17 USC 512(f)–Red Rock v. UMG
* Copyright Takedown Notice Isn’t Actionable Unless There’s an Actual Takedown–Amaretto v. Ozimals
* Second Life Ordered to Stop Honoring a Copyright Owner’s Takedown Notices–Amaretto Ranch Breedables v. Ozimals
* Another Copyright Owner Sent a Defective Takedown Notice and Faced 512(f) Liability–Rosen v. HSI
* Furniture Retailer Enjoined from Sending eBay VeRO Notices–Design Furnishings v. Zen Path
* Disclosure of the Substance of Privileged Communications via Email, Blog, and Chat Results in Waiver — Lenz v. Universal
* YouTube Uploader Can’t Sue Sender of Mistaken Takedown Notice–Cabell v. Zimmerman
* Rare Ruling on Damages for Sending Bogus Copyright Takedown Notice–Lenz v. Universal
* 512(f) Claim Dismissed on Jurisdictional Grounds–Project DoD v. Federici
* Biosafe-One v. Hawks Dismissed
* Michael Savage Takedown Letter Might Violate 512(f)–Brave New Media v. Weiner
* Fair Use – It’s the Law (for what it’s worth)–Lenz v. Universal
* Copyright Owner Enjoined from Sending DMCA Takedown Notices–Biosafe-One v. Hawks
* New(ish) Report on 512 Takedown Notices
* Can 512(f) Support an Injunction? Novotny v. Chapman
* Allegedly Wrong VeRO Notice of Claimed Infringement Not Actionable–Dudnikov v. MGA Entertainment

The post A 512(f) Case Survived a Motion to Dismiss. Guess What Happened Next–Channel 781 v. WCAC appeared first on Technology & Marketing Law Blog.

• it’s in the Western District of Texas, not the more typical N.D. Ill.
• it’s a copyright claim rather than the more typical trademark claim
• it’s against a single defendant, not dozens or hundreds of defendants
• it’s filed by the Valley & Summit Law firm, a relatively new firm (formed 2024) I haven’t encountered before. The firm’s principal says in her bio: “Ms. Ouyang started her IP practice by helping cross-border e-commerce stores defend draconian IP lawsuits. Over the years, Ms. Ouyang accumulated abundant experience in the fun area of IP litigation.” Switching sides and bringing SAD Scheme lawsuits is my idea of “fun” too.
• it’s in front of a new judge, Judge Andrew Bray Davis, who just took the bench in April. I’ve previously suggested that recent judges tend to be more skeptical of SAD Scheme cases than judges who have rubber-stamped them for years, though I’m not sure this opinion supports that hypothesis.

Add all of these differences up, and the resulting decision reads a little differently than other SAD Scheme opinions I’ve seen.

TRO Against Infringement

The plaintiff has copyright registrations for “two-dimensional artistic works entitled ‘Bohemian Printing.'” Here is the registered work (left) and an allegedly infringing product (right):

The defendant’s version look similar or identical to the plaintiff’s version except that it omits the outer ring. Judge Davis says “a side-by-side comparison of Plaintiff’s designs and Defendant’s wares reveals little—if any—in the way of differences between the two designs.”

Judge Davis says the alleged infringement could cause irreparable harm because “damages fail to address loss of control—as well as damage to reputation and goodwill.” It’s troubling to see a copyright injunction predicated on concerns about the plaintiff’s goodwill, which normally should be the province of trademark law. Even the reputation concern is dubious. The judge further conflates this copyright case with trademark law when considering the public interest, saying the “public also has a clear interest in not being deceived or confused as to the origin, source, or sponsorship of copyrighted products.” Copyright law generally has little to say about products’ origin, source, or sponsorship.

Asset Restraint

The plaintiff requested an order restraining the defendant’s assets to preserve money to cover damages. Judge Davis rejects the request because “Plaintiff seeks to freeze all of Defendant’s assets without either showing that they are all profits or offering a way to separate the profits from the damages.” Citing Grupo Mexicano, Judge Davis says that asset restraints can only preserve “the availability of equitable relief in a final judgment.” In copyright cases, profit disgorgement is an equitable remedy, but actual damages are not. Here, the pleadings don’t make an adequate distinction between the two: “Plaintiff offers no evidence of even the rough proportion of Defendant’s assets attributable to infringement, and without it the Court cannot tether an asset freeze to the ultimate equitable relief Plaintiff seeks—the infringer’s ‘additional profits.'”

But…the judge has no visibility into how the online marketplaces like Amazon will process the infringement-based TRO. If Amazon suspends the account based on the TRO, the assets will be frozen despite the court’s legal distinction.

In a subsequent ruling (on July 16), the court orders the asset freeze anyway based on the following report the plaintiff obtained from Amazon (through expedited discovery):

Defendant has grossed $641,077.99 from 15,136 individual unit sales of 11 different allegedly infringing products over an unspecified time period. Defendant’s U.S. Amazon account held a balance of $1,092.69 when Plaintiff submitted her most recent motion to the Court

Sealing Request

Judge Davis temporarily accepted the sealing request. It was lifted on July 27, 2026, only after the plaintiff voluntarily dismissed the defendant. This is what the sealed complaint looked like:

The post-dismissal unsealing is likely why I learned about the opinion only now.

Service Via Email

The Second and Seventh Circuits have limited email service to Chinese defendants. Nevertheless, based on Fifth Circuit precedent, Judge Davis says that email service is in his discretion, and he orders it. Sounds like a circuit split needs resolution?

It is unclear if/when service was ever effectuated. My guess is that the defendant learned of the lawsuit from Amazon’s asset freeze, and that triggered an extrajudicial settlement regardless of service.

Request for Expedited Discovery

Judge Davis grants that request too.

Bond

The judge approves a $5k bond, which seems quite low based on what the judge knew at the time. I’ve lamented before about the lack of guidelines for bond-setting in ex parte cases.

The “Addendum”

The opinion includes this unusual passage:

Cases like this one requesting ex parte restraint and expedited discovery under seal—often against numerous defendants listed on a “Schedule A”—are being filed at pace throughout the federal courts. See Eric Goldman, A Sad Scheme of Abusive Intellectual Property Litigation, 123 COLUM. L. REV. 183, 193–202 (2023) (dissecting the proliferation of Schedule A cases and their legal shortcomings). For good reason, some courts have found many of these requests to fall short of the clear letter of the law. See, e.g., Price v. Individuals, P’ships, & Unincorporated Ass’ns Identified on Schedule A., 821 F. Supp. 3d 1315 (M.D. Fla. 2026) (Mizelle, J.).

Because this specific case involves only a single defendant, it appears to avoid many of the pitfalls present in Schedule A cases. But it is difficult to be sure. “The whole point of our adversarial legal system is that the robust exchange of competing views helps ensure the discovery of truth and avoid error.” United States v. Quintanilla-Matamoros, 164 F.4th 366, 375 (5th Cir. 2026) (Ho, J., concurring) (cleaned up). Yet Plaintiff in this case, like the plaintiffs in the Schedule A cases, not only demands emergency relief outside of the adversarial process, but likely anticipates seeking a default judgment that is also outside the adversarial process. In these circumstances, it is imperative for courts not only to be vigilant that any relief awarded is lawful, but to be willing to reconsider—sua sponte if necessary—relief already awarded if that relief should not have been granted in the first place.

But what if the TRO causes the case to “settle” before the judge gets another crack at it to fix any past errors? The case settled on July 27, 11 days after the court approved the Amazon asset freeze.

I wasn’t quite sure what to make of this addendum. Was the judge issuing a warning to the plaintiff? Leaving a note to himself? Something else?

Also, the judge says courts must be “vigilant that any relief awarded is lawful” in ex parte proceedings. Does this opinion adequately demonstrate such vigilance?

Implications

Given the plaintiff and defendant are both in China, I didn’t see any clear reason why the case was filed in W.D. Tex. instead of alternative venues, such as California (where the plaintiff’s lawyers are based) or Illinois (where most SAD Scheme cases are litigated). This looks like forum-shopping, but why W.D.Tex.?

This is another SAD Scheme case between Chinese plaintiffs and defendants, taking place in US courts. The Chinese plaintiffs prefer the SAD Scheme because US courts will disregard the rule of law even more than Chinese courts would.

Given that this lawsuit was against a single defendant and was not a high volume operation like a typical SAD Scheme, I didn’t see any legitimate reason why the plaintiff chose the SAD Scheme template over the standard copyright infringement playbook. To me, it’s another datapoint illustrating how the SAD Scheme is functionally displacing all IP litigation. This is because plaintiffs get better outcomes via the SAD Scheme than than they would get from the standard package of rights actually conferred to them via IP and civil procedure law. As the maxim goes, plaintiffs will keep doing it so long as it works. In this case, despite the judge’s quirky addendum, the plaintiff got essentially everything they asked for. So why wouldn’t plaintiffs keep the good times rolling?

Reflecting the case’s novelty, at least to him, Judge Davis goes through most of the plaintiff’s arguments in greater-than-average detail. Yet, as is typical with ex parte proceedings, he ultimately sides with the plaintiff on most questions. Judge Davis correctly spotted some of the weak spots of the SAD Scheme, and yet arguably the scheme sucked him in anyway.

Case Citation: Cai v. Chaozhoushi Yitong Dianzi Shangwu Youxiangongsi, 2026 WL 2294410 (W.D. Tex. June 26, 2026).

Prior Blog Posts on the SAD Scheme

• Federal Circuit Rebuffs SAD Scheme Plaintiff–Shenzhen Jisu v. Annex A Defendants
• Court Rebuffs Emojico’s SAD Scheme TRO Request
• Seventh Circuit Limits Email Service to Chinese SAD Scheme Defendants–Kangol v. Hangzhou Silk
• SAD Scheme Defendant Gets Damages Payout from the Bond–Bright Head v. Schedule A Defendants
• Judge Shopping & Schedule A (Guest Blog Post)
• SAD Scheme Plaintiff Gets Default Win But Blows the Layup on Damages–Shenzen Huajie v. Shenzen Leyibei
• SAD Scheme Copyright Plaintiff Must Compensate Defendants–Shenzhen Langmi v. Schedule A Defendants
• A “But They’re ‘Counterfeiters’!” Argument Doesn’t Clinch a SAD Scheme TRO–Emojico v. Schedule A Defendants
• New Article Alert: “SAD Scheme Standing Orders”
• Greer Burns Law Firm Sanctioned for “Willfully Abusive” and “Egregious” SAD Scheme Judge-Shopping
• Schedule A: Ten Notable Developments in 2025 (Guest Blog Post)
• Second Circuit Rejects Email Service on Chinese Defendants in Baby Shark SAD Scheme Case
• 11th Circuit Sidesteps the SAD Scheme’s Problems–Ain Jeem v. Schedule A
• Another Shill Article Tries to Normalize the SAD Scheme
• Court Sanctions Plaintiff’s Lawyer for Unverified Claims That the Defendant Was Hiding–Guangzhou Youlan Technology Co. Ltd. v. Onbrill World
• SAD Scheme Cases Are a Cesspool of IP Owner Overreaches–Nike v. Quanzhou Yiyi Shoe Industry
• District of New Jersey Adopts SAD Scheme Standing Order
• Court “Sanctions” SAD Scheme Judge Shopping—Crimpit v. Schedule A Defendants
• Chicago-Kent SAD Scheme Symposium TOMORROW
• Amicus Brief Urges Seventh Circuit to Award Attorneys’ Fees in SAD Scheme Case–Louis Poulsen v. Lightzey
• Court Rejects Schedule A Claims Against Sellers of Compatible Parts/Accessories (Cross-Post)
• Judge Kness: the SAD Scheme “Should No Longer Be Perpetuated in Its Present Form”–Eicher Motors v. Schedule A Defendants
• SAD Scheme Lawyers Sanctioned for Judge-Shopping–Dongguan Deego v. Schedule A
• Judge Ranjan Cracks Down on SAD Scheme Cases
• Because the SAD Scheme Disregards Due Process, Errors Inevitably Ensue–Modlily v. Funlingo
• SAD Scheme-Style Case Falls Apart When the Defendant Appears in Court—King Spider v. Pandabuy
• Serial Copyright Plaintiff Lacks Standing to Enforce Third-Party Copyrights–Viral DRM v 7News
• Another N.D. Ill. Judge Balks at SAD Scheme Joinder–Zaful v. Schedule A Defendants
• Judge Rejects SAD Scheme Joinder–Toyota v. Schedule A Defendants
• Another Judge Balks at SAD Scheme Joinder–Xie v. Annex A
• Will Judges Become More Skeptical of Joinder in SAD Scheme Cases?–Dongguan Juyuan v. Schedule A
• SAD Scheme Leads to Another Massively Disproportionate Asset Freeze–Powell v. Schedule A
• Misjoinder Dooms SAD Scheme Patent Case–Wang v. Schedule A Defendants
• Judge Hammers SEC for Lying to Get an Ex Parte TRO–SEC v. Digital Licensing
• Judge Reconsiders SAD Scheme Ruling Against Online Marketplaces–Squishmallows v. Alibaba
• N.D. Cal. Judge Pushes Back on Copyright SAD Scheme Cases–Viral DRM v. YouTube Schedule A Defendants
• A Judge Enumerates a SAD Scheme Plaintiff’s Multiple Abuses, But Still Won’t Award Sanctions–Jiangsu Huari Webbing Leather v. Schedule A Defendants
• Why Online Marketplaces Don’t Do More to Combat the SAD Scheme–Squishmallows v. Alibaba
• SAD Scheme Cases Are Always Troubling–Betty’s Best v. Schedule A Defendants 
• Judge Pushes Back on SAD Scheme Sealing Requests
• Roblox Sanctioned for SAD Scheme Abuse–Roblox v. Schedule A Defendants
• Now Available: the Published Version of My SAD Scheme Article
• In a SAD Scheme Case, Court Rejects Injunction Over “Emoji” Trademark
• Schedule A (SAD Scheme) Plaintiff Sanctioned for “Fraud on the Court”–Xped v. Respect the Look
• My Comments to the USPTO About the SAD Scheme and Anticounterfeiting/Antipiracy Efforts
• My New Article on Abusive “Schedule A” IP Lawsuits Will Likely Leave You Angry
• If the Word “Emoji” is a Protectable Trademark, What Happens Next?–Emoji GmbH v. Schedule A Defendants
• My Declaration Identifying Emoji Co. GmbH as a Possible Trademark Troll

The post Every SAD Scheme Opinion Is Weird In Its Own Way–Cai v. Chaozhoushi Yitong Dianzi Shangwu Youxiangongsi appeared first on Technology & Marketing Law Blog.

Last month, while sitting at Amsterdam’s Schiphol Airport, a passenger typed www.annefrankmanuscripten.org on her laptop to look up the website at issue in the latest judgment by the Court of Justice of the European Union (CJEU) on geoblocking—the Anne Frank Fonds judgment. The retrieved webpage notified her that “due to copyright considerations,” the content, a scholarly edition of Anne Frank manuscripts, was not available to users connecting from the Netherlands.

Using a VPN service, she connected through a server in Belgium. This time the content webpage appeared, asking her to confirm that she was located in one of the listed “public domain countries.” The page warned her that if she was not located in one of those countries, she was “circumventing protection measures” and possibly “infringing copyrights.”

Had she misrepresented her location and confirmed that she was connecting from Belgium, presumably she could have accessed the content, even though she was in the Netherlands, which is not one of the public domain countries of the publication. The content is still protected by copyright in the Netherlands, where the provider of the scholarly edition has no license to make the content available to the public.

The CJEU judgment in Anne Frank Fonds does not address the liability of the cyber-traveling passenger. Instead, it concerns the liability of other actors in the story—the providers of the content and, in the abstract, a VPN provider.

Given the trajectory of prior CJEU judgments that have discussed geoblocking, and the opinion of the Advocate General in this case, the CJEU’s holdings in Anne Frank Fonds are not surprising. Under EU law, a content provider is not liable for copyright infringement by communicating a work to the public in a country where the work is still protected by copyright and for which the provider has no license, if the provider uses an effective–meaning “state of the art”–geoblocking measure. In such a case, the provider is not communicating to the public in the geoblocked country, even if Internet users can circumvent the geoblocking measure with a VPN or similar service. If the geoblocking measure is not effective and therefore a copyright-infringing communication to the public does take place in the country where the work is still protected by copyright, that communication is attributable to the provider of the content and not to the provider of the VPN or similar service.

Several aspects of the Anne Frank Fonds judgment deserve thorough analysis. At the global level, the judgment might raise concerns that it signals the end of a free and open Internet, legitimizes the balkanization of the Internet, and marks a new era of territorialization of the Internet. But none of these trends are new or surprising. In fact, some commentators might argue the opposite. By clarifying how actors on the Internet may lawfully provide a work to users only in countries where the work is in the public domain or for which the actors hold a license, the judgment advances legal certainty for actors who seek to operate lawfully in cyberspace, thus ensuring that more content becomes available online in general.

Clarity about the ability of actors to geographically limit their conduct online might be an argument against the balkanization of the Internet. If access to content can be effectively regulated by content providers, no government intervention should be necessary to wall off the Internet in individual countries. Even the territorialization of the Internet is not new; the Internet has been subject to gradually increasing territorialization from its origins, and the end of the “Wild West era” of the Internet was inevitable.

Any comprehensive analysis of Anne Frank Fonds should be subject to further debate, but two aspects can be highlighted for now: the establishment of the knowledge standard, and the assessment of the effectiveness of geoblocking measures. Both of these aspects will be crucial for the future of the Internet under the legal regime that the judgment has created.

According to the CJEU, the “obligation to adopt effective technological measures to restrict access” to copyrighted content online falls on “any person who knows or ought reasonably to have known” that a work is protected by copyright in some EU member states, even though the work is in the public domain in other member states (par. 42). In the Anne Frank Fonds case, this knowledge standard presents no issue. The defendants clearly knew that the work was still protected by copyright in the Netherlands, as was confirmed by their deployment of geoblocking measures to prevent access from the Netherlands. But in many other cases, the reasonableness of having knowledge about foreign copyright protection might be debated. Will the expectation of knowledge be the same for corporate content providers, individual influencers, and occasional social media users? Imposition of an unreasonably high standard would translate into uneconomic costs that would deter speech, or at least some speech, on the Internet.

Cost considerations might also affect the standard of legal effectiveness of geoblocking measures. While some costs of doing business on the Internet are reasonable, a requirement that would result in unreasonable costs would negatively affect speech on the Internet. Geoblocking tools are not all created equal; their effectiveness varies. If the law is to rely on geoblocking, minimal technical standards must be set to identify geoblocking tools that meet any legal minimum. In the Anne Frank Fonds judgment, the CJEU confirmed, very sensibly, that a possibility of circumvention does not automatically render geoblocking measures ineffective for legal purposes (par. 51). However, the CJEU left it to the national court to decide whether the deployed measure was effective (par. 48).

The CJEU defined “a geo-blocking measure” as “a process that is aimed at enabling or preventing access to the work published on the website depending on the geographical location of the user in the light of the Internet Protocol address (‘IP address’) which he or she uses to connect to the website” (par. 44). We can only assume, and also hope, that by prefacing the court’s definition with the phrase “[i]n the present case,” the CJEU intended the wording not to be the legal definition of geoblocking measures, because newer geoblocking tools no longer rely solely on IP addresses. If the geoblocking measure deployed by the defendants in Anne Frank Fonds relied solely on IP addresses, the question whether the measure was “state of the art” might be warranted (par. 49).

The post CJEU Judgment on Geoblocking & Standards for Knowledge of Foreign Copyright Laws and Geoblocking Measures (Guest Blog Post) appeared first on Technology & Marketing Law Blog.