Flava Works, Inc. v. Gunter et al

Filing 89

MEMORANDUM OPINION Signed by the Honorable John F. Grady on 9/1/2011. Mailed notice(cdh, )

10-6517.113-JCD

September 1, 2011

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
FLAVA WORKS, INC.,
Plaintiff,
v.
MARQUES RONDALE GUNTER d/b/a
myVidster.com; SALSAINDY, LLC;
VOXEL DOT NET, INC., and
JOHN DOES 1-26,
Defendants.

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No. 10 C 6517

MEMORANDUM OPINION
Flava Works, Inc. (“Flava”), is a company that produces and
distributes

adult

streaming video.

entertainment

products,

including

DVDs

and

Flava brought this copyright and trademark

infringement action against Marques Rondale Gunter, who created,
owns, and operates a website called myVidster.com (“myVidster”);
SalsaIndy, LLC (“SalsaIndy”), an entity controlled by Gunter that
funded the start-up of myVidster; and Voxel Dot Net, Inc., a
company that previously provided web-hosting services to myVidster.
Earlier this year, Flava moved for a preliminary injunction
prohibiting Gunter and SalsaIndy from infringing on its copyrights,
and we conducted a hearing on the motion in May and June.

In late

July, we issued a memorandum opinion granting the motion on the
basis that Flava is likely to succeed on the merits of its

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contributory infringement claim.

Flava Works, Inc. v. Gunter, No.

10 C 6517, 2011 WL 3205399 (N.D. Ill. July 27, 2011).1

Gunter and

SalsaIndy have filed a motion for reconsideration of our decision.
The motion will be denied for the reasons explained below.
“Rule 59(e) allows a party to direct the district court’s
attention to newly discovered material evidence or a manifest error
of law or fact, and enables the court to correct its own errors and
thus avoid unnecessary appellate procedures.

The rule does not

provide a vehicle for a party to undo its own procedural failures,
and it certainly does not allow a party to introduce new evidence
or advance arguments that could and should have been presented to
the district court prior to the judgment.”

Moro v. Shell Oil Co.,

91 F.3d 872, 876 (7th Cir. 1996) (citation omitted).

Although

defendants do not set out the basis for their motion, they contend
that our holding that Flava is likely to succeed on the first prong
of its contributory infringement claim (direct infringement by a
third party) is “directly contrary to the Ninth Circuit’s seminal
decision in Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146,
1160-61 (9th Cir. 2007)” and thus appear to contend that the court
made a manifest error of law.

(Defs.’ Br. at 1.)

We will address

the argument on its merits despite the fact that it could and

1/

The injunction is being issued today. We asked the parties to confer
and attempt to agree on the language of a proposed injunction order.
They
recently submitted their separate proposals, and a number of their suggestions
are included in the order we are entering.

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should have been presented to us at the time of the hearings.
Defendants did previously cite to Perfect 10, but only briefly, in
conjunction with an argument that displaying thumbnail images of
videos is fair use.

They argued in perfunctory fashion that

myVidster users did not directly infringe Flava’s works, but did
not develop that argument or cite Perfect 10 in support.
To establish contributory copyright infringement, the first
element that a plaintiff must prove is that a third party directly
infringed its copyrighted work.

We held that Flava demonstrated a

likelihood of success on this element by submitting uncontradicted
evidence that it owns the copyrights for works that myVidster users
have, without authorization, copied and/or posted on myVidster.
The vast majority of myVidster users have not created backup copies
of videos on the site, but have directed myVidster to “embed” video
clips on the site through the posting/bookmarking process.2

It is

this action, to which defendants also refer as “inline linking,”
that is the focus of the instant motion to reconsider.

Defendants

contend that Perfect 10 is the “prevailing legal standard for
analyzing copyright infringement in the [i]nline linking context”
and that it stands for the proposition that a party who “links to
third-party materials cannot be a direct infringer, but at most can
be a contributory infringer.”

2/

(Defs.’ Br. at 2-3.)

The parties use the terms “posting” and “bookmarking” interchangeably.

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In Perfect 10, the plaintiff, Perfect 10, Inc., sued Google
and Amazon.com for infringing its copyrighted photographs of nude
models.

The technology at issue in the appeal pertained to

Google’s Image Search, the search engine that identifies text in
its

database

that

is

responsive

to

a

search

query

and

then

“communicates to users the images associated with the relevant
text.” 508 F.3d at 1155. The Ninth Circuit described Google Image
Search’s inline linking process as follows:
Google’s software cannot recognize and index the images
themselves. Google Image Search provides search results
as a webpage of small images called “thumbnails,” which
are stored in Google’s servers. The thumbnail images are
reduced, lower-resolution versions of full-sized images
stored on third-party computers.
When a user clicks on a thumbnail image, the user’s
browser program interprets HTML instructions on Google’s
webpage.
These HTML instructions direct the user’s
browser to cause a rectangular area (a “window”) to
appear on the user’s computer screen. The window has two
separate areas of information. The browser fills the top
section of the screen with information from the Google
webpage, including the thumbnail image and text. The HTML
instructions also give the user’s browser the address of
the website publisher’s computer that stores the
full-size version of the thumbnail. By following the
HTML instructions to access the third-party webpage, the
user’s browser connects to the website publisher’s
computer, downloads the full-size image, and makes the
image appear at the bottom of the window on the user’s
screen. Google does not store the images that fill this
lower part of the window and does not communicate the
images to the user; Google simply provides HTML
instructions directing a user’s browser to access a
third-party website. However, the top part of the window
(containing the information from the Google webpage)
appears to frame and comment on the bottom part of the
window. Thus, the user’s window appears to be filled
with a single integrated presentation of the full-size
image, but it is actually an image from a third-party

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website framed by information from Google’s website. The
process by which the webpage directs a user’s browser to
incorporate content from different computers into a
single window is referred to as “in-line linking.” The
term “framing” refers to the process by which information
from one computer appears to frame and annotate the
in-line linked content from another computer.
508 F.3d at 1155-56 (citation and footnote omitted).

Perfect 10

argued that Google’s thumbnail images (stored on Google’s servers)
and inline links to the full-size images (stored on third parties’
servers) infringed Perfect 10’s copyrights. The Ninth Circuit held
that Perfect 10 made a prima facie case that Google’s communication
of its stored thumbnail images directly infringed Perfect 10’s
right

to

display

its

copyrighted

works,3

but

rejected

the

contention that Google directly infringed by “displaying” a copy of
the full-size images stored on third-party computers. Id. at 116061.

The Court explained:
Because Google’s computers do not store the photographic
images, Google does not have a copy of the images for
purposes of the Copyright Act. In other words, Google
does not have any “material objects ... in which a work
is fixed . . . and from which the work can be perceived,
reproduced, or otherwise communicated” and thus cannot
communicate a copy. 17 U.S.C. § 101.
Instead of communicating a copy of the image, Google
provides HTML instructions that direct a user’s browser
to a website publisher’s computer that stores the
full-size photographic image.
Providing these HTML
instructions is not equivalent to showing a copy. First,
the HTML instructions are lines of text, not a
photographic image.
Second, HTML instructions do not
themselves cause infringing images to appear on the

3/
The Court went on, however, to hold that Google’s use of the thumbnail
images is “highly transformative” and therefore that Google was likely to succeed
on its fair-use defense regarding the thumbnails. Id. at 1165-68.

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user’s computer screen.
The HTML merely gives the
address of the image to the user’s browser. The browser
then interacts with the computer that stores the
infringing image. It is this interaction that causes an
infringing image to appear on the user’s computer screen.
Google may facilitate the user’s access to infringing
images.
However,
such
assistance
raises
only
contributory liability issues and does not constitute
direct infringement of the copyright owner’s display
rights.
Perfect 10 argues that Google displays a copy of the
full-size images by framing the full-size images, which
gives the impression that Google is showing the image
within a single Google webpage. While in-line linking
and framing may cause some computer users to believe they
are viewing a single Google webpage, the Copyright Act,
unlike the Trademark Act, does not protect a copyright
holder against acts that cause consumer confusion.
Id. at 1160-61 (citations omitted).

The Court applied the same

reasoning to conclude that Perfect 10 was not likely to prevail on
its claim that Google directly infringed its right to distribute
its full-sized images.
According

to

Id. at 1162-63.

defendants,

Perfect

10

instructs

that

“the

critical factual inquiry is the location of the infringing image.”
Defendants argue that the videos posted to myVidster are hosted on
third-party servers, as were the full-size images in Perfect 10,
and “the way the videos are linked and displayed is the same as in
Perfect 10.”

(Defs.’ Br. at 5.)

The video links, or “embeds,”

that appear on myVidster are shown to the viewer as if they are
part of the myVidster site, even though the videos are hosted by
(stored on) a third-party server.

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We decline to apply Perfect 10 to this case.

The Ninth

Circuit’s decision is not binding on this court; moreover, it is
highly fact-specific and distinguishable.

Defendants assert that

the cases involve “essentially the same technology.”

Both cases

may involve inline linking,4 but the processes are quite different.
The relevant comparison is between the conduct of Google and the
conduct of myVidster’s users, not between Google and myVidster. In
response to a search query, Google’s image search engine uses an
automated process to display search results through inline linking.
In contrast, myVidster’s users do not employ any sort of automation
to determine which videos they bookmark; rather, they personally
select and submit videos for inline linking/embedding on myVidster.
(And many of those hand-picked videos are infringing.) Google’s use
of inline linking is neutral to the content of the images; that of
myVidster’s users is not.
To the extent that Perfect 10 can be read to stand for the
proposition that inline linking can never cause a display of images
or videos that would give rise to a claim of direct copyright
infringement, we respectfully disagree.

In our view, a website’s

servers need not actually store a copy of a work in order to
“display” it.

The fact that the majority of the videos displayed

4/
We say “may” because while it does appear that myVidster uses inline
links (or “embeds”) of videos, defendants provided little to no detailed evidence
about exactly how myVidster works. We are unable to provide the kind of lengthy
and technical description of the kind provided by the Ninth Circuit regarding
Google’s process.

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on myVidster reside on a third-party server does not mean that
myVidster

users

are

not

bookmarking those videos.

causing

a

“display”

to

be

made

by

The display of a video on myVidster can

be initiated by going to a myVidster URL and clicking “play”; that
is the point of bookmarking videos on myVidster--a user can
navigate to a collection of myVidster videos and does not have to
go to each separate source site to view them.
Because we find that Perfect 10 is inapplicable to the instant
case, defendants’ motion will be denied.
CONCLUSION
For the foregoing reasons, defendants’ motion to reconsider
the issuance of a preliminary injunction [84] is denied.

DATE:

September 1, 2011

ENTER:

___________________________________________
John F. Grady, United States District Judge