led to a Swedish university website where two allegedly infringing photographs of actress
Elizabeth Taylor owned by the plaintiff were displayed. Specifically, persons visiting J.C.
Penney’s website could, through a chain of no less than six links, reach the photographs on the
Swedish website.^3053 The plaintiff Bernstein insisted that J.C. Penney deliberately designed its
website so that visitors would be able to see the two photographs of Elizabeth Taylor. Bernstein
alleged that the defendants had previously licensed one of the photographs, suggesting that the
defendants were trying to benefit from the photographs without paying for them.^3054 The
defendants labeled the suit as based on a bizarre and unprecedented theory that, if accepted,
would destroy the Internet as a means of worldwide communication, and the judge apparently
agreed.^3055
- The Intellectual Reserve Case
In Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc.,^3056 the plaintiff was the
owner of the copyright in a Mormon Church work titled the “Church Handbook of Instructions”
(the “Handbook”). After the defendants were ordered to remove copies of the Handbook from
their website, the defendants posted a notice on their website stating that the Handbook was
online, and posted three links to other website addresses where the Handbook could be found.
The plaintiffs sought to hold the defendants liable for inducement of infringement and
contributory infringement.
The court ruled that the defendants were not liable for inducement of infringement,
because there was no evidence that the defendants had any direct relationship with the other
(^3053) Id. at 1063; “Judge Dismisses Copyright Claims Based on Linking,” Andrews Computer & Online Industry
Reporter (Oct. 6, 1998) at 3, 3. Defendant Arden, manufacturer of a perfume called “Passion” that was
endorsed by Taylor, recited the chain of links that a user would need to follow from Penny’s site to reach the
allegedly infringing photographs: from Penney’s main home page to (1) “Elizabeth Taylor’s Passion,” a part of
the Penney’s site, to (2) “Biography,” a part of the “Passion” site containing information about Taylor’s life, to
(3) “work on screen,” which took the user to (4) an Internet Movie Database Ltd. (IMDB) site, a completely
separate site with no connection to Penney’s, to (5) “FTP,” a link on the IMDB site that took the user to the
Swedish site, from where the user could (6) access the infringing photographs. Id.
(^3054) Id.
(^3055) The defendants argued that the plaintiff’s theory of infringement by multiple linking would have a devastating
impact on the Internet and argued that the claim should be dismissed for three reasons: “(1) a company whose
product is merely displayed on another entity’s website cannot be held liable for any infringement by the author
of that website; (2) linking cannot constitute direct infringement because the computer server of the linking
website does not copy or otherwise process the content of the linked-to site; and (3) multiple linking cannot
constitute contributory infringement because (a) Internet users viewing of the material at issue is not infringing
and thus there was no direct infringement in the United States to which Arden could contribute; (b) linking ‘is
capable of substantial noninfringing uses’ and thus cannot support a claim for contributory infringement; and
(c) the Court cannot infer from the facts alleged that [defendants] knew the photos had been posted to [one of
the websites in the chain] and multiple linking does not constitute substantial participation in any infringement
where the linking website does not mention the fact that Internet users could, by following the links, finding
infringing material on another website.” Bernstein, 50 U.S.P.Q.2d at 1064 (citations omitted). The court
dismissed the complaint without leave to amend without articulating any specific reasons therefor. Id.
(^3056) 53 U.S.P.Q.2d 1425 (D. Utah 1999).