Playboy Enterprises, Inc. v. Frena

Facts

Defendant George Frena operated a subscription computer bulletin board service, Techs Warehouse BBS (“BBS”). Photographs copyrighted by Plaintiff Playboy Entertainment, Inc.'s (“PEI”) were uploaded onto BBS without permission. Subscribers of BBS were allowed to browse and download the photographs in high quality computerized images which were then stored on the subscriber’s home computer. One hundred and seventy of the images that were available on BBS were copies of photographs taken from PEI's copyrighted materials.

Defendant Frena claimed to never have uploaded any of PEI's photographs onto BBS and that subscribers to BBS uploaded the photographs. Defendant Frena states that as soon as he was served with a summons and made aware of this matter, he removed the photographs and has since that time monitored BBS to prevent additional photographs of PEI from being uploaded.

Copyright Infringement

Playboy Entertainment, Inc. (“PEI”) alleged that George Frena (“Frena”), the operator of Techs Warehouse BBS (“BBS”), a subscription based computer bulletin board service, was liable for copyright infringement when BBS’ subscribers distributed unauthorized copies of PEI’s copyrighted photographs on the bulletin board.

The Copyright Act of 1976

The Copyright Act of 1976 gives copyright owners control over most, if not all, activities of conceivable commercial value. The statute provides that the owner of a copyright has the exclusive rights to do and to authorize any of the following:

1. to reproduce the copyrighted work in copies or phonorecords;
2. to prepare derivative works based upon the copyrighted work;
3. to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (the right to sell)
4. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
5. in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
6. in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

Establishing Copyright Infringement

To establish copyright infringement, PEI must show (1) Ownership of the copyright and (2) Copying by Defendant Frena occurred.

Ownership of Copyright

The Court held that PEI owned the copyright to the photographs in question. The photographs were published in Playboy issues which PEI held a copyright registration certificate. The certificate constitutes prima facie evidence in favor of PEI. Once prima facie established by PEI, the burden then shifts to Defendant Frena to counter this evidence. However, Defendant Frena failed to rebut the appropriate inference of validity.

Copying by Defendant

The Court stated that even without direct evidence, copying may be inferentially proven by showing that Defendant Frena had access to the allegedly infringed work, that the allegedly infringing work is substantially similar to the copyrighted work, and that one of the rights statutorily guaranteed to copyright owners is implicated by Frena's actions.

Intent of Defendant

Intent or knowledge is not an element of infringement. Even an innocent infringer is liable for infringement. However, intent is significant in determining statutory damages and remedies.

Conclusion

Public distribution of a copyrighted work is a right reserved to the copyright owner, and seizure of that right constitutes infringement. The Court held that PEI's right to distribute copies to the public was violated by Defendant Frena. Exclusive rights in copyrighted works grants PEI the exclusive rights to sell, give away, rent or lend any material embodiment of his work.

In addressing Defendant Frena’s argument that he did not make the unauthorized copies but that subscribers to BBS uploaded the photographs, the Court ruled that it did not matter that Frena was not the originator of the authorized copies. Frena supplied a product containing unauthorized copies. Therefore, he violated PEI’s exclusive rights.

Display Rights

The Court also held that Defendant Frena had infringed upon the display rights of PEI. The concept of "display" covers the projection of an image on a screen or other surface by any method and the transmission of an image by electronic or other means. The display right precludes unauthorized transmission of the display from one place to another, for example, by a computer system.

In order for copyright infringement to occur, the display must be public. A public display is a display at a place open to the public or where a substantial number of persons outside of a normal circle of family and its social acquaintances are gathered. A place is open to the public in this sense even if access is limited to paying customers.

In the case at bar, Defendant Frena’s transmitted the copyrighted material electronically and displayed them public to its subscriber. BBS subscribers consisted of a substantial number of persons outside of a normal circle of family and its social acquaintances.