Entrepreneurs tend to focus on opportunity rather than startup legal risk, and rightly so. As Steve Blank has written, at its core, a startup is an organization formed to search for a repeatable and scalable business model. In the lexicon of the lean startup movement, once “product-market fit” has been achieved, the focus shifts to scale and execution as the startup matures into a growth company.
In a sense, risk and opportunity are two sides of the same coin to early stage startups. The huge risk that eclipses all others is that the product or service being offered simply won’t succeed — there is no product-market fit, at least at numbers that would make for a financially viable business — in which case (assuming competent execution) the perceived opportunity, viewed broadly, wasn’t really there to begin with.
Perhaps it shouldn’t be surprising that financial and startup IP legal risk items on which experts focus seem like afterthoughts to many founders. After all, if value isn’t created in the first place, isn’t it premature to worry about its impairment? Even at large corporations, legal departments are jokingly dubbed the “Department of Sales Prevention” because of their tendency to insist on the elimination of all risk from deals.
A word about the title of this post: I’m not using “wrong” in any moral sense, but rather to refer to running afoul of the law in a way that makes for bad business. The very notion of intellectual property is a construct of legislation and court decisions made by fallible humans, riddled with exceptions, inconsistencies and ambiguities. We do the best we can under the circumstances, but in the age of social media, taking an expansive view, virtually every person who has touched a computer has infringed copyright at some point, probably hundreds or thousands of times.
The law simply hasn’t kept pace with the largest upheaval in the distribution and consumption of content in human history, which has taken place in barely two decades since the consumer Internet was born in 1994. To a large extent, members of the general public have little idea what copyright is, how it works, or how it applies online, if at all. By contrast, how many items of merchandise have you shoplifted or cars have you stolen unintentionally? To equate infringement with theft, as copyright maximalists such as RIAA and MPAA do, is to insult our collective intelligence. But I digress.
In recent years, many of the most creative and disruptive startup businesses have involved the use of intellectual property in innovative, non-traditional ways that defy easy categorization and stretch the boundaries of concepts such as the fair use doctrine in copyright. When presented with a product or service in development, we often have to admit that there is no clear precedent and look for the best analogous situation to assess the startup’s IP legal risk. Is Instapaper like collecting press clippings? (If so, do you have to buy a copy of each paper first?) Is pinning a photo or article on Pinterest more akin to showing someone an article in a magazine you’ve bought or actually making and handing them a copy? Does using a friend’s photo in a Facebook ad more closely resemble a personal recommendation by that friend to buy the product or plastering the friend’s photo on the product packaging in stores?
At the height of the “cyberspace exceptionalism” era in the mid-1990s, the giants of the Internet industry were so worried about these legal risks that they invested heavily in lobbying Congress and helped shape the legal landscape of the social Internet. Unlike startups, companies like AOL, AT&T, etc. had the clout to take on the content industry and strike a balance in copyright law that ensured their survival. As I’ve written before at Gust, the social media explosion of the 2000s owes its very existence to their efforts. Nevertheless, the DMCA is showing its age with the advent of new communication tools (Twitter), content rendering platforms (Flipboard), curation formats (Pinterest) and even media consumption devices (iPad). What strikes the engineer or entrepreneur as brilliant and disruptive may come across to threatened incumbents as dangerous and illegal.
One poster child for this type of innovation — an extreme example of startup IP legal risk — is the original MP3.com’s introduction of a service called “My.MP3.com” way back in 2000. Its “Beam-It” tool enabled users to take music CDs they had already bought and upload them to an online “storage locker” of sorts (what we would now call “cloud storage“) from which they could then access the music anywhere on any compatible device. To implement the service, MP3.com bought a huge number of CDs — virtually every music CD available at the time — and made digital copies on its servers. A user could authenticate his or her physical CD and get access to the same tracks on the system without having to upload the actual song files. The benefits of this kind of system are clear: In the pre-iPod era, making one’s entire CD collection available anytime, anywhere was a vast improvement over carrying faux-leather CD caddies around with scores of discs. (Remember those?) In the digital domain, the system also eliminated the tremendous redundancy involved if hundreds of thousands of music fans were to independently upload identical digital copies of the same tracks from the same albums to their personal “digital lockers,” with corresponding savings in bandwidth, storage, and time (“data deduplication”).
My.MP3.com was a bold, innovative cloud music service a decade before cloud storage became commonplace. Yet as the saying goes, no good deed goes unpunished, so it was essentially sued out of existence by the recording industry. Without getting bogged down in details, a service catering to consumers who owned legally purchased CDs furnished by a company that had also bought legal copies of the same CDs, making users’ music consumption more convenient and enjoyable while minimizing the burden placed on the related digital infrastructure, was crushed under the weight of century-old copyright law in the form of a $53 million settlement with one record label alone, plus many others.
If this product sounds vaguely familiar, it’s because Apple introduced virtually the same music service, branded iTunes Match, in November 2011 (count ’em, eleven years later) as part of its iCloud suite of cloud storage and computing services. Presumably it helps to be one of the world’s most valuable companies controlling the most valuable music distribution platform on the planet when negotiating deals with labels and publishers. In any event, the lesson for new startups is to look both ways before crossing the busy IP highway.
Copyright is not the only type of IP right implicated — and others such as rights of privacy and publicity become increasingly relevant in the age of social media — but it provides many of the most accessible examples. Let’s use Pinterest as a case study. For those who may not have tried the service, Pinterest is an online “pinboard” of sorts, enabling users to create “boards” on various areas of interest (see mine, Term Sheet, as an example). There is nothing new per se about a user-generated content site on which users select and post items of interest from around the Internet; “social bookmarking” and recommendation tools have been around for years, and of course sites such as Facebook and MySpace allow users to post images and links by the millions.
What sets Pinterest apart its its heavy emphasis on visual elements. In many cases the item being “pinned” (or “repinned” by others) is primarily an image itself rather than the underlying site or story to which the image is linked. This visual design accounts for much of the enthusiasm that drives Pinterest’s massive growth, but to some — notably professional photographers — it’s an example of rampant copyright infringement for which the site should be liable. Enough of a fuss was raised that Pinterest made a point of going back to review, revise and clarify its Terms of Use Agreement in an attempt to alleviate these concerns.
What gives? To gauge the degree of startup IP legal risk incurred by the company, we have to start by reviewing the basics of copyright law as it applies to photo licensing. Without turning this into a long, boring law school exam question, here are the key questions followed by answers:
- Does posting a photo on Pinterest involve making a “copy?”
- If yes, is the photo I’m planning to post copyrighted?
- If yes, do I own the copyright or have permission (a license) from the copyright holder?
- If not, can I still do it anyway?
- If so, what, if anything, can the copyright owner do about it?
- Finally, from the site operator’s perspective, is Pinterest liable for any infringing photos that I (or its millions of other users) might post on the service?
To the entrepreneur building a startup, the last two points are the ones that really matter. Granted no business owner wants to see his or her customers sued, but the liability issues that can kill a startup of this nature or render it unfundable are ones of secondary liability: In legal parlance, is Pinterest liable for contributory or vicarious infringement because of what its users are doing?
At this point, for anyone left wondering whether or when to consult a good lawyer, the answer should be self-evident. If the difference between creating an enterprise worth ten figures (let’s call it “Instagram“) and getting sued into bankruptcy (let’s call that one “Napster“) rests on critical points of startup IP legal risk such as questionable fair use and secondary liability, there’s no such thing as getting too much, or too early, advice from the right professionals. In getting up to speed, there’s also no substitute for reading the work of commentators whose grasp of the subject matter is detailed enough to make a thorough, reasoned analysis (notably Techdirt’s Mike Masnick — himself a lawyer — in this example).
In closing, it’s worth noting that even the most seasoned attorneys and law professors will disagree on some of these subjects. As with other potentially complex, risky undertakings like surgery, it never hurts to get a second opinion — although chances are, with lawyers as with doctors, you’ll always manage to fine one who is risk-averse enough to tell you not to do it.
Connect with social media lawyer Antone Johnson on Mastodon or Bluesky Social.
