Higbee Tries To Shake Down Forum For Deep Linked Photograph

Update: Paul Levy has now put up his own blog post about the case, with many more details. It is worth reading.

We've written a few times now about copyright troll Higbee and Associates, which has a long track record of sending highly questionable (to outright bullshit) copyright demands to various people on the internet. Many of the demands are absurd. Frequently the images don't have a registered copyright. Sometimes, it's not even clear if the "client" holds any copyright at all. The demand letters usually come with misleading and threatening language -- often demanding way more than any license would ever bring in.

Public Citizen's Paul Levy has been tracking Higbee for quite some time now, and representing a few people who have been hit by Higbee letters. And now he (along with Stanford's law clinic) are taking Higbee to court for declaratory judgment of non-infringement on yet another bogus and exaggerated Higbee threat. The background is quite interesting. Kevin Schlossberg runs a forum website about knives called Blade Forums. Way back in 2007, a user of Blade Forums wrote about the use of wood burls for knife handles -- and in the process deeplinked a photograph taken by Quang-Tuan Luong, and posted on Luong's own website, Terra Galleria.

Schlossberg did not host the image. Schlossberg actually had no idea about the deeplinked image at all until Higbee showed up demanding $2,500. In response, he did change the hotlinked image into just a URL, but Higbee still demanded $2,500. Schlossberg did a bit of internet sleuthing and pointed out that this clearly wasn't infringement since he wasn't hosting the image, and pointed to the various Perfect 10 cases. In response, Higbee doubled down, and insisted that the Perfect 10 rulings had been narrowed recently (they have not), that fair use doesn't matter, and that since Schlossberg had only just registered a DMCA agent, that he was not at all protected by the DMCA's safe harbors.

At this point, Paul Levy stepped in and wrote one of his standard letters to Higbee detailing how almost everything that Higbee's staff was claiming was wrong. As per usual, it's worth reading the entire letter (which is at the end of the filing as the final exhibit), but here's a snippet:

First, and most important, Luong has no infringement claim because the forum user did notplace the photograph on the forum page; he only embedded a link to the location where thephotograph is displayed by your client's own web site. Your client could easily have used technicalmeasures to prevent others from providing deep links that allowed members of the public to viewthe photograph on your client's own web site, but he chose not to do so. In the Ninth Circuit, whereboth your firm and Luong are located, the established law is that "framing" a photograph within aweb site, without actually making a copy of the photograph and placing such a copy on the site's ownservers, is not copyright infringement. Perfect 10, Inc. v. Amazoncom, Inc, 508 F.3d 1146, 1161(9th Cir. 2007).

Second, even if the photograph itself had been placed on the forum instead of being linkedfrom that forum, it was neither Schlossberg nor his company that placed it there; it was a user of theforum. The Blade Forums hosts more than eighteen million separate posts, arranged in nearly one-and-a-half million separate threads. In the last month alone, more than eighteen thousand newthreads were created, and more than two hundred thousand new posts were placed by the forum?susers. Schlossberg cannot and does not keep track of them all, and he had no knowledge that theallegedly infringing work was linked from the forum. He did nothing to encourage copyrightinfringement on the forum and has no financial interest in the allegedly infringing activity. BladeForums' terms and conditions expressly forbid users from posting content that even "risks copyrightinfringement." Consequently, Luong cannot expect to hold the forum host liable either for directinfringement or for either of the two prongs of secondary liability, vicarious infringement orcontributory infringement. VHT, Inc. v. Zillow Group, 918 F.3d 723, 732, 745-747 (9th Cir. 2019).VHT v. Zillow is just the most recent of a line of appellate decisions holding that hosts do notinfringe without volitional conduct, BWP Media USA v. T & S Software Assocs. 852 F.3d 436, 440(5th Cir. 20 1 7), and that the Digital Millennium Copyright Act in 1998, which provided an immunityregime along with the notice and counternotice procedure, does not abro gate requirements under thepre-existing statute for holding hosts liable for copyright infringement.

Levy also points out that, not only has Higbee tried to avoid Levy in the past, his own firm appears to be doing exactly the kind of thing that Higbee (completely incorrectly) insists that Levy is violating the rules by doing:

Finally: in previous cases, in which I have responded to your demand letters to other clients,you have refused to respond because my office is in Washington, DC, and because I belong onlyto the D.C., and New York bars. You have suggested that I cannot provide assistance to a client whois located in a jurisdiction other than those, and in opposition to a party who is in a jurisdiction otherthan those; you suggested that this is unauthorized practice of law. You are mistaken. The standardprocedure in such situations is for the lawyer to do the necessary work in preparation for litigation,to identify local counsel before the litigation actually begins, and to seek admission pro hac vice oncethe litigation has begun. Each time I have written to you, I have completed those first two steps.Moreover, considering that your own firm's web site touts your "national firm . . . that feel[s] localno matter where you are," you must be aware of Rule 5.5(c)(2) of the ABA's Model Rules, whichallows a lawyer to provide services that are related to a potential proceeding in a jurisdiction wherethe lawyer "reasonably expects to be . . . authorized" to appear pro hac vice. Most states take thatapproach. E. g, California Rules of Court Winterrowd v. American General AnnuityInsurance 321 F.3d 933 (9th Cir. 2009). That, indeed, appears to be your own law firm'spractice (considering that your associate Mr. Sell, who is admitted to practice only in Colorado, senta threatening email from your Nevada office, on behalf of a client in California, to my client, locatedin Kentucky). I hope, therefore, that you will respond and on the merits to my effort toavoid litigation over your threatened copyright claims.

Higbee chose unwisely, and did not respond, leading to Levy (with help from local counsel, Phil Malone from Stanford's IP law clinic) to file for declaratory judgment on behalf of Schlossberg against Quang-Tuan Luong.

Higbee and similar firms go around signing up copyright holders by basically promising them free money by surfing the web to find "infringing" works, demanding money, and giving some of it over to the copyright holders. Many who sign up for these kinds of services don't seem to realize that they are putting themselves at risk, as in the case of Luong here, of finding themselves on the receiving end of a declaratory judgment claim (and the possibility of paying the legal fees of the other side). I do wonder if Mathew Higbee makes it clear to his clients that this is a risk they are taking in retaining him to send his troll letters.