Justin TV’s Smackdown With The UFC
by Jerry Glover
April 3, 2012
Justin.tv is a service that allows users to stream live videos (as opposed to YouTube’s pre-recorded videos) to people in over 250 countries. Each user who posts live video on Justin.tv is given a “channel”; each user is designated a “broadcaster.” It has been reported that people watch more than 300,000,000 live streams every month on Justin.tv.
Recently, a federal district court in Nevada granted Justin.tv’s motion to dismiss a complaint filed against it by Zuffa, LLC, the parent company of the Ultimate Fighting Championship (UFC). Zuffa, Inc. v. Justin.tv, Inc.,2012 WL 764424 (D. Nev. 2012). Apparently, one or more users of Justin.tv streamed a live broadcast of a UFC bout. UFC claimed to own the copyright in and to that broadcast. Zuffa alleged various causes of action against Justin.tv, but the motion to dismiss recently decided in Nevada only pertained to two of those claims: trademark infringement and theft of cable/satellite service. Other causes of action remain so this case is not over.
With regard to the trademark claim, UFC argued that its logo appeared as part of the broadcast streamed over Justin.tv and subsequently transmitted by Justin.tv users. This, UFC stated, was a false designation of the origin of the broadcast in violation of Section 43(a) of the U.S. Trademark Act (commonly called the Lanham Act).
Section 43(a) prohibits a person/company from using another’s trademark (even if that mark is not registered in the U.S. Trademark Office) on goods or services in a manner that would cause a “false designation of origin” and would be likely to cause confusion or mistake as to the “affiliation, connection or association” of those goods with the original trademark owner. 15 U.S.C. Section 1125. The typical 43(a) situation would involve Company A putting Company B’s trademark on Company A’s products or services so that the consumer would assume that Company A was the “origin” of the products/services. Here, UFC claimed that the live streams which included UFC’s trademark at the beginning of the broadcast falsely implied that Justin.tv was the origin of the broadcast, not UFC.
Justin.tv argued that UFC’s trademark claim was really a copyright claim in disguise and was barred by a 2003 U.S. Supreme Court decision, Dastar v. Twentieth Century Fox Film Corp, 539 U.S. 23 (2003). In Dastar, a video company reissued on home video a television series that first aired in the 1950’s concerning World War II. The copyright for that original series had lapsed and was not renewed by its original owner. Therefore, the footage that was original to the series was in the public domain and no copyright infringement claim was available. The original owner, however, claimed that the video company violated Section 43(a) of the federal trademark act (commonly called the Lanham Act) by failing to give attribution to the original series creators.
The Supreme Court held that the “false origin of goods” language in the Lanham Act referred to the physical goods (in Dastar, the actual home video/DVD) and not the copyrighted material and other intellectual property incorporated into those goods. So a failure to credit the original creator did not have Lanham Act implications. The Court also noted that to allow the TV series creator’s claim would have allowed copyright-like protection for a TV series that was in the public domain (the Court called it a “mutant copyright”).
In the Justin.tv situation, however, UFC’s logo was part of the stream played out over the web service by the service’s users. Therefore, the original creator of the broadcast was credited and Dastar did not apply. The district court added that had it ruled in UFC’s favor on its trademark claim then UFC could have prevented the duplication of the broadcast even if it had lost copyright protection and fallen into the public domain simply because the UFC logo was part of that broadcast.
UFC also argued that the federal Communications Act prohibited streaming of its fight broadcast over Justin.tv. This Act prevents theft of cable/satellite service which usually occurs through the use of signal descramblers. See 47 U.S.C. Sec. 553(a)(1). The typical scenario involves a restaurant or bar tapping into a cable/satellite service when it is not a subscriber to allow its customers to watch a single sporting event. But UFC did not allege that Justin.tv intercepted or received “a television signal from a television cable operator over cable infrastructure or a radio signal transmitted by satellite.” UFC argued that Justin.tv users received that cable/satellite broadcast and sent a digital copy by internet video stream to Justin.tv for rebroadcast over the internet. The court noted this is not the type of conduct prohibited by the Communications Act. The court noted that copyright law might apply to the internet streaming of UFC’s fight broadcast, but Justin.tv had no relationship with the original cable/satellite signal associated with the broadcast. Thus, the Communications Act could not be used under these circumstances.
Justin.tv argued that its internet service was immune from the prohibitions of the Communications Act as a result of Section 230 of the federal Communications Decency Act (the CDA). This portion of the CDA prohibits litigation against internet service providers who simply provide a space for third parties to post material and comments and do not edit or otherwise make editorial decisions about those materials/comments. The CDA prohibits treating web service providers as publishers since a book or newspaper publisher is liable for things printed in its newspapers and books even if written by a third party. Congress wanted to encourage development of the Internet and determined that this type of immunity from litigation would insure that development. But the district court noted it did not have to decide this “novel” issue since it had already determined that the Communications Act did not apply to the fact situation presented.