#CaseoftheWeek Episode 45: Identifying and Producing Infringements in Use of Digital Images

Kelly Twigger returns for episode 45 of #CaseoftheWeek and analyzes the decision in Davis v. Pinterest. The case focuses on the use of digital images and the removal of indicia of copyright ownership. The issues related to this case are protective order, form of production, third party subpoena, attorney-work product, failure to produce, cooperation of counsel and proportionality.

Good morning and welcome to our Case of the Week for November 9, 2021.

A huge shout out to my dad today. It’s his 82nd birthday. Happy birthday, dad.

My name is Kelly Twigger. I am the CEO and founder of eDiscovery Assistant as well as the principal at ESI Attorneys. Thanks as always for joining us on the Case of the Week.

Before we get started this week, I want to give a huge shout out to Doug Austin at eDiscovery Today. Thanks so much for covering for me for the last three weeks while I was out, and I’m excited to be back with you for the Case of the Week and look forward to partnering with Doug again in the future as we get ready to put out our 2021 Case Law Report.

As you know, through our partnership with ACEDS each week, we choose an ediscovery decision that highlights key issues for litigators and those who are involved in the ediscovery process, with the goal towards providing some practical input for you, your practice, what you’re thinking about as you engage in electronic discovery and litigation.

No matter what platform you’re viewing us on—whether that’s LinkedIn, YouTube, Twitter or Facebook—you’ll find the public link to our decision today, which is titled Davis v. Pinterest.

You’ll also have a link to sign up for a demo of eDiscovery Assistant. If you’re interested in doing that, we’re conducting regular demos each Thursday morning, and you’ll also find a link to our 2020 Annual Case Law Report that I just referenced, which we did in cooperation with Doug Austin at eDiscovery Today.

We are in the process of planning for a 2021 report as well as for Legal Week in New York City. If you’re planning to be there and would love to sit down and talk with us, please reach out and let us know. You can drop us an email at support@ediscoveryassistantcom.

We also invite you to check out our website and sign up for the blog. If you’re interested in receiving the weekly Case Law newsletter. This video is incorporated into a blog post each week and comes out on Thursday so if you want to sign up to receive that, you can do so at ediscoveryassistant.Com/blog and those will come directly to your inbox.

All right, let’s get into this week’s case. Our decision this week comes from a case titled Davis v. Pinterest, Inc. It’s a decision or a case pending in the Northern District of California in front of United States District Judge Haywood Gilliam. Thomas Hickson is the Magistrate Judge who is also assigned for discovery matters.

This decision is fairly recent from October 22nd and really highlights some issues that are unique to digital images. There are a number of reasons that I selected this case today from a perspective of practical input. As we go through it, the themes that I want you to think about are planning for the case and the difficulty in dealing with digital images for purposes of discovery. Because, of course, most of what we do in discovery is search and filter based on text and metadata. With images, you have very little of either of those things, right?

Typically, we can’t OCR the text in an image and then be able to use that to search if it’s a marketing image. Even if it’s just a digital photograph, there’s no text to be able to OCR. Dealing with digital images is a real challenge.

All right, so let’s dive into the facts of this case. The plaintiff here, Davis, is a digital artist and a photographer, and he brought this action against Pinterest. If you’re not familiar with Pinterest, Pinterest is a social media platform that essentially allows users to create their own virtual image boards by pinning images to their boards. For example, I have an account on Pinterest. On my account, I’ve created boards that show different designs for fireplaces because we’re looking at putting a gas fireplace in our house as well as bathroom design, some new design things for our house that we moved into a couple of years ago.

You can use Pinterest for just about anything—for recipes, for outfits, for design, pretty much anything—and you can add images from all over the web to your boards. The issue here is whether or not many of those images are subject to copyright. For the plaintiff here, who is a digital photographer, his bread and butter is these digital images that he creates, whether they’re art or whether they are images taken with a camera.

Pinterest business model essentially is monetizing those boards by using targeted advertisements to users based on what you add to your boards. In this particular case, plaintiff alleges that “Pinterest does not have a system in place of screening the pins for copyright notices or other indicia of copyright ownership that are associated with the pinned images.” The plaintiff alleges that the defendant also “makes downloading an image exceedingly easy” for its users and provides users with a mechanism to “display the same image on the user’s webpage.”

Essentially, what we’re talking about here is that we’ve got ownership of these digital images and that plaintiff is alleging Pinterest is ignoring the copyright infringement issues associated with them, and that their business model essentially strips any potential copyright indicia. Whether that’s a watermark or other notes to the file type, they strip those out so that those advertisements can continue to monetize their site.

The plaintiff alleged in his complaint that as a result of the copying tools, Pinterest is a source of rampant copyright infringement by third parties and that he had identified thousands upon thousands of instances where his federally copyrighted images are used by Pinterest to hock goods and services. His original complaint was filed for both direct and contributory copyright infringement. That complaint was filed in November of 2019. After a series of motions with the Court, the sole remaining count on the complaint is for direct copyright infringement.

Now, there are other discovery disputes that have risen in this case, but this decision that we are on today from October 22nd of 2021 is a motion before the district court to limit the relief provided by Magistrate Judge Hickson in an order that he issued on July 20th of 2021.

In that order, Judge Hickson really imposed what the parties had agreed to in their joint case management order on November 17th of 2020. In that joint case management order, the parties raised a dispute about whether and when the plaintiffs should be required to identify all of the instances of alleged copyright infringement. The defendant argued that requiring the plaintiffs to identify the alleged infringements would allow it to investigate and take discovery as necessary. The plaintiff argued that it only needed to provide examples of the alleged infringement because the instances of the defendant’s infringement are numerous and ongoing.

Now, during the November 24th case management conference, the Court agreed that a deadline was necessary for the efficient litigation of the case, and the Court largely entered what the parties had proposed but also set June 1, 2021, as the deadline for plaintiffs to serve a final identification of alleged infringements at issue.

In that order, the Court set a definitive date by which the plaintiff had to identify every single one of its alleged infringements. There was not language in that order that allowed those identification of alleged infringements to be examples. That’s where we are. Its a difference between whether we’re talking about a list of everything or a list of examples that will carry the day in terms of providing sufficient discovery for plaintiffs.

Now, in addition to that order, there was also a July 2, 2021 discovery cut off, and that order also allowed the defendant to pursue discovery regarding the alleged infringements through September 3rd of 2021 because of the June date, I didn’t give them enough time before the close of discovery in July.

Now, prior to the close of discovery, about six months in December of 2020, the defendant served in interrogatory requesting “for each work in suit, identify the URL on Pinterest or other unique identifying information sufficient for Pinterest to locate each instance of alleged infringement.”

Now, six months after that interrogatory was propounded, the plaintiff produced various documents, including a PDF of an Excel spreadsheet that listed a number of URLs. There was a dispute over whether or not the form of that spreadsheet was appropriate. Ultimately, the plaintiff reproduced it in Excel format, which is, as we’ve discussed previously on Case of the Week, a better form and really provides both parties with what they should have. The defendant then asked the plaintiff to confirm that that was a complete list of infringements, and the plaintiff really bocked. Plaintiff said that they were merely a sampling and that the same image may have hundreds or thousands of different URLs or Pin IDs.

The defendant then moved to compel the plaintiff to state that the spreadsheet was the final identification of alleged infringements. We’re going back now to the language of the order that I mentioned previously, which is the Court said, “you got to give a definitive list.” The plaintiffs are still hung up on we’re going to provide examples. The Court here in looking at Judge Hickson’s order and determining whether there is any basis to go back into the facts of the case, says,

Plaintiff’s legal contentions can be whatever he wants them to be. If he wants to use an expensive supercomputer to scan billions of images to find every last one that contains his registered works, he is free to do that. If he instead just wants to use reasonable diligence to find instances of infringement, he can do that, too. It is up to him to build his case.

Here the plaintiff really is asking the Court to issue an order that would re-characterize as dicta Judge Hickson’s finding that the June 4 spreadsheet was the final identification of alleged infringements. Secondly, to overrule the July 20th order to the extent that it limits the alleged infringements to just the spreadsheet. Essentially, the district court says, while we look at Judge Hickson’s order de novo, because, “by limiting the instances of infringement that are actionable within the case, the July 20th order limits plaintiff’s claims and has the effect of dismissing any claim of infringement, not on the June 1st spreadsheet.”

Now, the plaintiff really argued that it was enough that he identified 51 separate infringements that are an issue in the case and with enough details so that the defendant could locate them. As Judge Hickson had explained in his order, some of the reproductions or displays of the works might not be infringement at all if there’s an affirmative defense that applies from Pinterest, such as a license or fair use. What Judge Hickson said in his original order was it’s not Pinterest job to decide which ones they have defenses to. They’ve got to have a complete list so that they can investigate and be able to respond to each alleged infringement appropriately.

Now, I think we’re going to talk about this a little bit in the takeaways, but I think really what the issue is here is that the plaintiff’s approach to identifying these infringements may have been a little too rudimentary from an ESI perspective to get a handle on this issue early on in the litigation. I want to talk about that a little bit of takeaways.

Staying with the Court’s rulings here, the district court said, look, “we understand that there’s a lot of possible infringements here, but as Judge Hickson has stated, it’s up to the plaintiff to build his own case, and we don’t see any basis for overturning what Judge Hickson said” The argument by plaintiff to set aside what Judge Hickson had ruled, which is that the spreadsheet contained all of the alleged infringements was denied.

Now, the parties also asked the Court to extend the discovery period briefly. What happened is there’s a third party search engine called Pixie, which is a digital investigative company that provides services to image owners to combat digital copyright infringement. Pixie was a third party that had received a subpoena from Pinterest in this case. As happens all the time, Pixie did not respond right away. There was a lot of back and forth, a lot of discussion about privilege as to how information was going to be provided. Ultimately, the defendants asked to have the close of discovery pushed back two weeks to allow them to conduct a deposition with Pixie. The Courts, in a trend that we’re seeing a lot in the federal courts, denied that extension. They basically said, You’ve got to work on your third party discovery earlier. You had plenty of time here, plenty of time, and you just didn’t do what you needed to do. They really felt like there was no reason to extend the discovery deadline here, and we’re seeing that a lot more with the federal court.

Don’t count on a continuance of discovery period. You’ve got to start early with these third parties. I suggest that you identify them out of the gate and get an immediate contact with them and then manage that process very effectively in terms of getting the information.

Takeaways and we’ll talk about that third party discovery.

As I mentioned at the outset, I really selected this case this week to highlight a lot of the difficulty of dealing with digital images and the evidence that’s required in intellectual property matters, particularly copyright cases. These are very heavy ESI cases, and the tools that we use to handle ESI don’t help us a lot when it comes to infringements in images and social media, and things like that. The nature of digital images makes them really hard to work with. They’re hard to collect from social media platforms.

We’ve talked before about the difficulty in collecting the full view of a post together with the comments from social media platforms, and then all of that information when you pull it into a database has to be thoughtfully tagged so that you can go back and find it.

You need to load them in files that make sense so that you can organize that. You need to track what you’re loading, and then you need to create a coding panel and code those documents so that you can go back and find them when you need to. Some of the ways in which we try to code things effectively are by different categorizations. It may be the social media platform they come from. It may be a date range. It may be content. Then you may have a separate tag for the copyright claim that it goes to. If they’re separate claims. If you’ve got affirmative defenses, you might tag them with those as well.

You want to provide as much organization to images in your database when you’re loading them that you can. What we see a lot in IP litigation is that we’re constantly having to go back and look through images over and over and over again.

If you’re taking images (for purposes of litigation), you need to make sure that you’re creating metadata for those images at the time you create them, and that the file names that you’re giving to the images are going to be something that’s useful. If you’re taking images with your iPhone for litigation for any reason or someone is or your sales team is or anything like that, you need to make sure that those files are named correctly. Then you also need to create the affidavit of who created those images at the time they’re created so you can manage all of those pieces.

Those are all the pieces that you’ll need for authentication down the line. You need to be thinking about how to deal with all those issues at the very outset of your litigation.

Now, here this situation for plaintiff in dealing with Pinterest is again (we’ve talked about this in the context of Facebook and Google and other tech companies), Pinterest has all the information, and they know what the capability is for them to search and filter to find similar images. I don’t know what their capabilities are, but I’m sure that plaintiffs don’t have those capabilities. Now, you can use some softwares to be able to match images, but those are expensive propositions from an ediscovery perspective, and they’re not tools that plaintiffs tend to have at their disposal.

You need a plan here before you file, a plan for how you’re going to identify all the alleged infringements. That plan can include deposing someone from Pinterest on what kind of software exists for them to be able to identify similar images. Then you can ask specific request for production of Pinterest, requiring them to run certain analyses and give you the results.

In this particular situation, it feels like from the decision that we have—and again, we’re always just stuck with the language that exists in the decision—that plaintiff essentially said, “hey, Pinterest has all this information. They’re the ones who can tell us.” The Court said “no, that’s not how it works.”

The Court’s right. That’s not how it works. But you do still have that imbalance of who has all the information. The answer is that the plaintiff has to figure out how to ask for the information effectively so that Pinterest has an obligation to provide it. And that’s a huge lesson from an ESI perspective that you’ve got to drill in and understand about these images, how they might be able to be filtered within Pinterest to be able to identify those alleged areas of infringement. Instead, plaintiff here was really left with whatever means by which he was able to create that spreadsheet that included the alleged areas of infringement.

The second piece, I think that really needed to be planned in this case is how you are going to identify those and provide them, and whether you were going to get the Court to agree that you could provide a sampling but what the sampling would be indicative of.

I think there are ways in which that argument could have been structured with the Court just on the basis of knowing ESI that could have been more effective here. Instead, plaintiff really got limited to the alleged infringement that was included in his spreadsheet from June of 2021. That’s what he’s left with with regard to his case. You need to have that plan.

There are ways that I can think of in looking at Pinterest and in the work that I’ve done on Pinterest that you might be able to take that into account. There are oftentimes tools that are used to scrape watermarks. There are different indicia of copyright that you could ask specifically about for Pinterest.

I think if you really sit down and look at the ESI and think about how you might be able to propound requests that will give you the information from Pinterest you need that’s always going to be the best way to go. It’s got to be an extremely thoughtful and creative process when it comes to the requests and how to get information from a technology company like Pinterest.

Now, finally, I mentioned this earlier in terms of takeaways third party discovery always takes longer than planned. Always. Always. Always.

We’ve had more than a share of cases over the last five years where we’ve had courts tell us that we can’t go back and get third party discovery because we didn’t start early enough. Subpoenas need to be sent months before the discovery cut off in order for the Court to enforce any kind of extension on getting that third party discovery.

Third parties don’t have any skin in the game, even if they are partners or agencies or other folks that work directly with your client, they still don’t have skin in the game. You’ve got to manage the request to those third parties. You’ve got to make sure you’re working with them on form of production, and then you’ve got to review the data as soon as you get it in to make sure you have what you need so that you can go back to that third party.

If you wait months and months and months to go back to a third party to get new images or a better form of production, it’s not going to happen. It’s going to be very difficult and you’re going to find yourself under the gun and you won’t be able to use that information effectively for depositions or for preparing your case.

All right, that’s our Case of the Week for this week. Thanks so much for joining me. I’ll be back again next week with another edition and another decision from eDiscovery Assistant.

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Have a great week. Stay safe and healthy and I’ll see you next week.

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