Healthcare Advocates, Inc. v. Harding, Earley, Follmer & Frailey, 497 F. Supp. 2d 627, 650 (E.D. Pa. 2007)
Healthcare Advocates (“HA”), a patient advocacy group that helps its members deal with health care providers, brought an action against a competitor alleging trademark infringement and misappropriation of trade secrets. The competitor was represented by Harding, Earley, Follmer & Frailey (“Harding”), a “boutique” law firm specializing in intellectual property matters. Harding began investigating HA, and part of that investigation consisted of using the internet to do searches and view the the group’s website. Harding also used a tool known as the “wayback” machine to look at materials that had been posted to the web in the past.
The wayback machine, maintained by the Internet Archive, stores screenshots from websites that can be looked up by any interested internet surfer. This allowed Harding to HA’s website pages as they would have appeared before the litigation began. Harding printed some of these pages, and some of these prints were during the course of the litigation. Harding did not save any of the images to hard drives.
HA had placed a file, named Robots.txt, on its website server to direct indexing engines and the wayback machine from pages that HA did not want accessed or displayed by the public. On this occasion, however, this protective measure failed, and the wayback machine displayed “forbidden” content to Harding. The failure was due to an issue with the wayback machine’s servers, and not with any action taken by Harding.
Nevertheless, HA brought this action against Harding, alleging, inter alia, that Harding had: violated provisions of the Digital Millenium Copyright Act (“DMCA”); infringed upon their copyrights by printing and unknowingly saving copies of the archived web pages in temporary memory, and distributing copies of the pages to co-counsel; committed spoliation by failing to preserve the copies in temporary memory, violated provisions of the Computer Fraud and Abuse Act (“CFAA”) “by intentionally exceeding their access and obtaining information from protected computers used in interstate commerce;” and violated Pennsylvania laws with respect to conversion and trespass.
Harding requested summary judgment in its favor on all counts.
Copyright Infringement: The court found that HA had established both elements for infringement. HA had a valid copyright on the materials found on its website, and had demonstrated that Harding had “reproduced” and “publicly displayed” these materials. The court then conducted an analysis to determine whether Harding’s actions were permissible under the Fair Use Doctrine.
The court began by listing the factors considered for Fair Use:
- “the nature and character of the use” by the alleged infringer;
- “the nature of the copyrighted work;”
- “the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and”
- “the effect of the use upon the potential market for or value of the copyrighted work.”
The court then continued its examination. For the first factor, although it noted that the display and copying of the website content was in pursuit of a profitable activity, that it nevertheless cut in favor of the law firm. The court noted that “[Harding] copied these materials as supporting documentation for the defense they planned to raise for their clients against the allegations,” and stated that “[i]t would be an absurd result if an attorney defending a client against charges of trademark and copyright infringement was not allowed to view and copy publicly available material, especially material that his client was alleged to have infringed.”
The court held that the second factor also cut in favor of Harding, because the the data copied was of an informational nature.
The third factor cut in favor of HA, as Harding copied and displayed the entire website, however, because the information was relevant in a pending litigation, and the firm had a duty to preserve such material, “the substantiality of the portion used does not militate against a finding of fair use.”
The fourth factor “militate[d] in favor of a finding of fair use.” Harding’s actions in copying and displaying the material were for the use in a lawsuit, and not for the purpose of “gaining a competitive advantage.” The court’s analysis concluded with a determination that Harding’s “infringing use is excusable under the doctrine of fair use.” The court granted Harding’s motion for a summary judgment with respect to HA’s copyright infringement claim.
Spoliation of Evidence: With respect to the specific case of the data copied to temporary files, the court noted that HA had not presented any evidence of what had been copied. HA argued that it deserved a “spoliation inference” because the Harding’s duty to preserve existed with respect to this data. The court began by discussing the three factor test used in the third circuit for spoliation determinations. “The considerations are: (1) the degree of fault of the party who altered or destroyed the evidence, (2) the degree of prejudice suffered by the opposing party, and (3) whether there is a lesser sanction that will avoid substantial unfairness to the opposing party and where the offending party is seriously at fault, will serve to deter such conduct by others in the future.”
In examining the facts in the context of the first factor, the court found that because the files were deleted automatically, and not by an affirmative action on the part of Harding, the factor weighed in favor of Harding. The court was not convinced by HA’s argument that Harding’s failure to immediately “remove the computers from further use” did not “shock the conscience.” Nor did the court find persuading HA’s argument that Harding should have taken measures once it received a subsequent letter demanding all evidence be preserved, as the firm felt that nothing relevant had been saved onto the hard drives of its computers.
The second factor, likewise, weighed in favor of a finding against spoliation, because the court concluded that HA suffered no real prejudice from the loss of this data.
The court determined that the final factor cut the same way as the other two, when it stated: “[t]he Harding firm did not purposefully destroy evidence. To impose a sanction on the Harding firm for not preserving temporary files that were not requested, and might have been lost the second another website was visited, does not seem to be a proper situation for an adverse spoilation inference.”
The Claim under the DMCA: The court then turned to examine HA’s claim that Harding had violated the provision in the DMCA under 17 U.S.C. § 1201(a)(1)(A), prohibiting the circumvention of a technical mechanism designed to protect copyrighted material. Here, HA argued that Harding bypassed the protection of the “robots.txt” file, and thus was in violation of the measure. The court found that, “in this situation,” the placement of the file on the website constituted an anti-circumvention technological measure as defined under the DMCA. The court emphasized, however, that “this finding should not be interpreted as a finding that a robots.txt file universally qualifies as a technological measure that controls access to copyrighted works under the DMCA.”
The court continued by noting that the defect was with Internet Archive’s server, and that when used by Harding, it was as though the protective measure was not present. Harding accessed the data, but not by circumventing the protection, and was therefore not in violation of the DMCA. Harding’s motion for summary judgment on HA’s DMCA claim was granted.
HA’s claim under the CFFA: HA argued that Harding’s viewing of the content prohibited by the Robots.txt file constituted a violation of the CFAA. The court concluded that Internet Archive’s computers were used in interstate commerce, and were protected under the act, and that the costs accrued by HA in investigating the unauthorized access, estimated in excess of $9,600, met the statutory threshold. However, merely using a public website does not create liability under the act, and HA was unable to present evidence of prohibited activity, and Harding’s motion for summary judgment on the CFFA claim was granted.
HA’s claims for trespass to chattels and conversion: The final two claims arose under state law, and the court concluded that these claims were preempted by the federal copyright claims under 17 U.S.C. § 301(a), that the court had already examined. Harding’s motion summary judgement with respect to the state law claims was also granted.
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