Playboy Enterprises, Inc. v. George Frena
839 F.Supp. 1552 (1993)
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Rule of Law:
An operator of a computer bulletin board service (BBS) directly infringes a copyright owner's exclusive rights of public distribution and display by making unauthorized copyrighted images available for subscribers to view and download, regardless of whether the operator or a third party uploaded the content.
Facts:
- George Frena operated a subscription-based computer bulletin board service (BBS) named Techs Warehouse BBS.
- Subscribers paid a fee or purchased products from Frena to gain access to the BBS.
- Users of the BBS could upload files for others to view and download.
- One hundred and seventy digitized photographs, copyrighted by Playboy Enterprises, Inc. (PEI), were made available on Frena's BBS without PEI's authorization.
- Subscribers to Frena's BBS downloaded these copyrighted PEI photographs.
- Frena claimed that subscribers, not he, had uploaded the PEI photographs onto the BBS.
- PEI's registered trademarks, PLAYBOY® and PLAYMATE®, were used as file descriptors for the images on the BBS.
- On some of the images, PEI's original text was removed and replaced with advertising for Frena's BBS, including its name and phone number.
Procedural Posture:
- Playboy Enterprises, Inc. (PEI) sued George Frena in the United States District Court for the Middle District of Florida.
- PEI filed motions for partial summary judgment, asking the court to rule that Frena was liable for copyright infringement, trademark infringement, and unfair competition under the Lanham Act.
- Frena filed responses opposing these motions.
- The case is before the district court to decide on PEI's motions for partial summary judgment.
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Issue:
Does the operator of a computer bulletin board service (BBS) infringe on a copyright owner's exclusive rights of public distribution and display when subscribers upload copyrighted images to the BBS, which the operator then makes available for other subscribers to view and download for a fee?
Opinions:
Majority - Schlesinger, District Judge
Yes. The operator of a computer BBS infringes on a copyright owner's exclusive rights by making copyrighted works available to subscribers. Frena violated PEI's exclusive right of distribution under 17 U.S.C. § 106(3) by providing a product (the BBS service) that allowed unauthorized copies of PEI's work to be downloaded by the public. Frena also violated PEI's exclusive right of public display under § 106(5), as making the images viewable on computer screens to paying subscribers constitutes a 'public display.' The court rejected Frena's fair use defense, finding the use was commercial, involved creative works, copied the most essential parts of the work, and harmed the potential market for PEI's photographs. The court also found trademark infringement because Frena's use of the PLAYBOY® and PLAYMATE® marks was likely to cause confusion as to the source or sponsorship of the images. Finally, removing PEI's marks and adding his own constituted 'reverse passing off,' a form of unfair competition under the Lanham Act.
Analysis:
This is a seminal early internet case that established that principles of direct copyright infringement apply to the digital environment of an online service provider. By holding the BBS operator directly liable for distribution and public display, the court treated the BBS not as a passive conduit but as an active publisher. This ruling highlighted the legal risks for online service providers and predated the 'safe harbor' provisions of the Digital Millennium Copyright Act (DMCA), which later created a framework to shield providers from liability if they follow specific notice-and-takedown procedures.
