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Welcome to the website of the Internet and Intellectual Property Justice Clinic, a University of San Francisco School of Law clinical program that provides legal assistance to parties in intellectual property matters. For more information, see the "About Us" page.

Our website includes commentary from our students on cutting-edge internet law and intellectual property topics. Those posts are listed below, and more are archived under "Pages" on the right. Enjoy!

Right to Privacy on the Internet

By Patrick L.

This note will explore an individual’s legal right to privacy on Facebook.

The right to privacy is rooted in the 4th Amendment to the United States’ Constitution, which protects a person’s legitimate expectations of privacy. U.S. Const. amend. IV. This means that if an individual has both a subjective (actual) and objective (reasonable) expectation of privacy it is an expectation that society will recognize. This right to privacy is accorded to both citizens and non-citizens while on U.S. soil.

In 1986 Congress passed a federal law regulating the privacy of communication. Information posted on a website is subject to regulation under the federal Stored Communications Act (SCA). 18 U.S.C.A. §§ 2701-2712. The SCA permits disclosure of electronic communications that are publicly posted.

In regards to the right of privacy with respect to communications made via an Internet website, such as Facebook, the 9th Circuit has found that the unauthorized viewing of a secured website was an unlawful invasion of privacy. Konop v. Hawaiian Airlines, Inc., 236 F.3d 1035 (9th Cir. 2001). In Konop the website at issue was designed as a secure website requiring a user name and password to which an individual could only get a user name and password from Konop. Konop created the website and granted access to fellow employees of Hawaiian Airlines so they could discuss their experiences working for Hawaiian Airlines. Id. The court found the limited access to the website which could only be granted by the creator of the website to be a distinction from other websites requiring a user name and password. Id. This distinction gave the user’s of the website Konop created a higher expectation of privacy than a website which would allow anyone to create there own user name and password. Id.

Websites that are readily available to the public—websites that anyone can access without a user name or password—do not carry an expectation of privacy regarding electronic communications made through the website. Id. A secured website is one that requires a user to insert a user name and password to access the site. Facebook is a website that requires a user name and password to access the site. However, anyone can create their own user name and password and be granted access to the Facebook website. In Konop the user names and passwords were created by the administrator of the website, who only granted access to the website to certain co-workers.

Facebook’s Privacy Policy

Many websites, including Facebook, have privacy policies designed to protect an individual’s privacy and assure them that information a user posts on the website will not be readily available to anyone on the Internet. Facebook has an extensive privacy policy which can be found by clicking on the word “Privacy” located at the bottom right hand corner of the Facebook page and displayed as a blue hyperlink. Anyone who signs up can become a Facebook user, as long as they are at least 13 years old. Being a Facebook user allows people to stay in touch with friends through posting comments and pictures on a person’s Facebook page, and through live instant-message chatting.

A Facebook user can post as much or as little information about themselves as they want on the profile page. A Facebook user’s profile page is the central part of having a Facebook account where a user can update their status, receive messages from friends, and post pictures. Facebook’s default privacy settings allow other Facebook users to view this information when looking at the profile page. These privacy settings can be changed by each individual user to increase or decrease the access that other Facebook users have to one’s profile page. However, Facebook makes certain information publicly available to everyone: name, profile photo, list of friends, gender and geographic region. This means that even if a user sets their Facebook page to private settings that only allow their Facebook friends to view their page, anyone searching Facebook, or the Internet, can access the publicly available information.

When signing up for Facebook, certain personal information is required, including a user’s name, email, gender, and birth date. Even though it is required, personal information such as an email address, or birth date, can be hidden from other users through optional privacy settings.

The lowest level of privacy setting on a user’s Facebook page is “everyone”. With this setting, Facebook considers all information provided by the user as publicly available. This info is available to anyone through Facebook, through search engines, or even through other websites not affiliated with Facebook.

Facebook is constantly collecting and logging user information. For example, the Facebook website keeps track of all actions a user takes such as adding a friend, joining a group, or creating a photo album. Facebook also collects information from the computer or mobile phone with which a user accesses the site. Facebook collects information on the browser used, IP address, and the other web pages a user visits.

One way user information is utilized by Facebook is to improve services and features and to provide customer support. Facebook also uses a user’s information to contact them with service related announcements when there have been changes to the website, new features have been added, or the privacy policy has been amended. An important—and revenue generating—use of personal information by Facebook is to present advertisements to the user that are personalized based on the information obtained by Facebook.

Facebook states that a user’s information is only shared with third parties when the sharing is permitted by the user based on privacy settings, is reasonably necessary to offer services, or when Facebook is legally required to do so.

Facebook stresses that there are inherent risks in sharing information. Facebook is about sharing information and content with friends, and any of this information is subject to exposure by unauthorized third parties in violation of privacy settings or security measures taken by Facebook. The nature of the internet gives any “hacker” the opportunity to access a Facebook user’s information in violation of the Facebook privacy policy and the privacy settings chosen by an individual user.

Facebook Users Expectation of Privacy

Under the 9th Circuit’s standard for an expectation of privacy in websites such as Facebook, the crucial fact is whether or not the site requires a user name and password given to a user by the creator of the website. Facebook users would most likely not be considered to have an expectation of privacy under this test because anyone can sign up for Facebook by creating their own user name and password. Once a person signs on as a user they need to understand that Facebook is a publicly available resource, which anyone can join, as long as they are at least 13 years old. And, once a person becomes a Facebook user, they can access all of the information of their Facebook friends, as well as the information of any Facebook user whose Facebook page has a privacy setting of “everyone”.

In short, there is no complete privacy for any Facebook user since certain information such as name, date of birth, and email address are publicly available information according to the Facebook privacy policy regardless of the user’s privacy settings. When signing up for a new Facebook account, a user is provided the default privacy settings by Facebook. These default settings allow other Facebook users to access a person’s information, even if they are not Facebook friends.

Even if a user voluntarily chooses to keep their information private through the privacy settings on their page, Facebook’s privacy policy allows the company to share a user’s information with the government or authorities whenever required by law, such as in the course of a police investigation.
Facebook also disclaims any guarantee of privacy. As with any information posted on the internet, Facebook cannot guarantee that a user’s information won’t be accessed by an unauthorized third party hacking into the site and violating the Facebook privacy policy or the law.

At its core Facebook is about a user sharing information and connecting with friends. Based on Facebook’s design for a user to share information, Facebook’s privacy policy, and existing caselaw, a Facebook users best approach is to assume there is no expectation of privacy in anything they post on Facebook.

Location-Aware Services & Privacy

By Andrea S.

The Christian Science Monitor recently ran a story about a new website called PleaseRobMe.com. Soon, nearly every popular blog on the web was featuring the story and a link to the site.

PleaseRobMe.com mocks users of FourSquare who connect their location “check-ins” to their Twitter status updates. FourSquare is a location aware service that allows users to tell friends the address of which Starbucks, movie theater, or restaurant they are at. PleaseRobMe.com demonstrates the potential dangers of this technology by allowing users to enter a city or a specific username and get updates on exact locations of other users.

While PleaseRobMe.com focuses on FourSquare and Twitter, there are plenty of other services that have the same function. For instance, Yelp iPhone application users can use the “Check-It” feature to post their current locations to their Facebook status updates. The program even automatically announces if you’re a “regular,” or frequent patron of a specific business.

Ultimately, the developers of PleaseRobMe.com disabled the search feature and replaced it with two articles: one from the Center for Democracy and Technology (CDT) and the other from the Electronic Frontier Foundation (EFF). The articles highlight how location-aware internet services like FourSquare can present a number of problems. One is social; having friends, family or your significant other know your location at all times in undesirable, even if you are doing nothing wrong.

Another problem is emerging, at least in the U.K., is that people who use such services are seen as an insurance risk. Insurers who protect people’s homes and other personal property are concerned about the public’s increasing willingness to reveal extremely personal information. While one small piece of information seems inconsequential, the totality of an individual’s posts could reveal a good deal about their routines and property.

Then there are the legal concerns that come from broadcasting one’s location and activities. In private disputes, such as insurance fraud or problems between employee/employer, location-aware services pose a number of potential problems. For instance, if an individual is on disability, and presumably homebound, too many public announcements of outside location may be cause for a challenge to the benefits – even if not a violation of the benefit program rules.

As for criminal offenses, posting ones location may waive potential 4th Amendment rights. While there are usually some procedural barriers for determining someone’s whereabouts at a specific time, the same is not true for information that is public and observable. Broadcasting real time location for anyone on the internet to read, gives up any reasonable expectation of privacy.

Of course, quick access to this information does not always have a negative result. There are instances where such information could help law enforcement or allow an accused to establish innocence. The question is whether or not citizens want to open themselves up to a system with less protections than those currently enjoyed.

Despite the potential dangers of such services, a recent MSNBC.com article says that location-aware social networking may be a new trend. While it may be a powerful, new, and up-and-coming technology, it has a lot of troubling features. Moreover, it seems unnecessary. Restaurant and shopping reviews can be posted without it being in real time or announcing the reviewer’s current location. Additionally, there are private communication tools that allow friends to find each other. The bottom line is: for the time being social media users will continue to use location based services, like FourSquare, until the negative consequences of surrendering locational privacy hits home.

YouTube’s Compliance with the DMCA’s Safe Harbor Provisions

By Allen K.

Given the revolution of the Internet and the rise in number of uploaded videos to the web, it has become much easier to reproduce and publicly distribute copyrighted works thus increasing the need for copyright protection. Enter YouTube, the revolutionary website that serves as a host for those who want to “Broadcast Yourself.” YouTube allows anyone to upload their videos to the website and publicly broadcast them to the world. This however raises many issues of copyright infringement as many videos are considered to be “derivative works” as they are based upon one or more pre-existing copyrighted works.

Under Title II of the Digital Millennium Copyright Act (DMCA), the Online Copyright Infringement Liability Limitation Act (OCILLA), creates a conditional safe harbor for online service providers (OSPs) against copyright liability. OCILLA requires that OSPs such as YouTube adhere to certain prescribed safe harbor guidelines and promptly block access to allegedly infringing material if they receive a notification claiming infringement from the copyright owner or the copyright holder’s agent. In order to prevent false claims from being made, section 512(f) of the DMCA states that any person who knowingly materially misrepresents that material or activity is infringing may be subject to liability for damages. Once YouTube has verified that the Complainant is authorized to bring the claim, under OCILLA, YouTube is required to remove the video until the alleged infringer provides sufficient evidence that they are in fact authorized to use the content.

OCILLA’s § 512(c) Safe Harbor provision requires that OSPs 1) not receive a financial benefit directly attributable to the infringing activity, 2) not be aware of the presence of infringing material or know any facts or circumstances that would make infringing material apparent, and 3) upon receiving notice from copyright owners or their agents, act expeditiously to remove the purported infringing material.

With thousands of videos uploaded daily and minimal policing by YouTube admin it is nearly impossible for YouTube to identify infringing material. As such, it only makes sense that the copyright owner or someone authorized to act on behalf of the copyright owner assert their ownership rights directly to YouTube. In order to file a copyright infringement notification, the complainant must send a written communication along with certain enumerated requirements. Upon receipt of the Copyright Complaint Web form, YouTube may forward the information provided in the legal notice to the person who provided the allegedly infringing content and claimant information will be published on the YouTube site in place of the disabled content.

As long as YouTube complies with the requirements for a given safe harbor, it is immunized and not liable for money damages. The passage of OCILLA has part of the 1998 DMCA represents a victory for telecom and Internet related industry groups over powerful copyright interests who had wanted service providers to be held strictly liable for the acts of their users.

Google and Censorship

By Wei Z.

With the development of information technology, internet service providers are able to serve their consumers with unlimited kinds of information, across all geographical boundaries. Internet users in almost every corner of the earth can easily benefit from the advantages of information from the internet. However, a series of problems have risen. And, among the problems, a hot topic is whether Internet Service Providers should comply with the local legal regulations.

As is well known, Google Inc. withdrew from China on March 23, 2010, because the company did not want to self-censor the results of searches on its Chinese site, google.cn. Since Google opened the China-based service about three years ago, it has filtered responses to users’ searches to remove results that the government finds unacceptable, including pornography and content on political topics such as the Chinese human rights issues. Despite the self-censorship, however, Google has drawn a strong following, especially among educated and wealthier Chinese Internet users. China has 338 million Internet users as of June of 2009 and Google has 30% of the search market.

Considering the huge economic benefit of operating in China, Google Inc. did not leave this attractive market entirely. Google chose instead to move to Hong Kong and tries to reach its Chinese customers through its search engine based in Hong Kong, where there is no censorship. However, it was reported that when users in China use Google as a search engine, some sensitive content has been blocked. That means the conflicts between Google and Chinese government have not ended. Although Hong Kong has a separate legal system from China, it still is part of China. About the issue of Google’s leaving China, China’s Minister of Industry and Information Technology warned Google: “If you want to do something that disobeys Chinese law and regulations, you are unfriendly, you are irresponsible and you will have to bear the consequences.”

China’s Censorship Regulations

China has censorship regulations. In September 2000, the State Council Order No. 292 in China created the first content restrictions for Internet content providers. China-based Web sites cannot link to overseas news Web sites or carry news from overseas media without separate approval. Only “licensed print publishers” have the authority to publish news on-line. Non-licensed Web sites that wish to broadcast news may only publish information already released publicly by other news media. These sites must obtain approval from state information offices and from the State Council Information Agency. Article 11 of this order mentions that “content providers are responsible for ensuring the legality of any information disseminated through their services.

Article 14 gives Chinese officials full access to any kind of sensitive information they wish: “an IIS provider must keep a copy of its records for 60 days and furnish them to the relevant state authorities upon demand in accordance to the law.” Finally, article 15 defines what information must be restricted: “IIS providers shall not produce, reproduce, release, or disseminate information that endangers national security, is detrimental to the honor of the state, undermines social stability and the state’s policy towards religion and other information prohibited by the law or administrative regulations”.

In November 2003,China began to operate the Golden Shield Project, often referred to as the 'Great Firewall of China.' This is a censorship and surveillance project operated by the Ministry of Public Security (MPS) division of the government of China. It has been nicknamed the Great Firewall of China in reference to its role as a network firewall and to the ancient Great Wall of China. A major part of the project includes the ability to block content by preventing IP addresses from being routed through and consists of standard firewalls and proxy servers at the Internet gateways. Like the Great Wall of China, the Great Firewall of China has the same purpose: to protect the national security from threat.

Restrictive Regulations Outside of China

Computer-based communications which cut across territorial borders, create a new realm of human activity and can undermine the feasibility and legitimacy of laws based on geographic boundaries. Because of this, many governments’ first response to electronic communications crossing their territorial borders is to try to stop or regulate that flow of information. Even local governments in the United States have expressed concern about their loss of control over information and transactions flowing across their borders. But, efforts to control the flow of electronic information across physical borders are likely to prove futile, at least in countries that hope to participate in global commerce. Faced with their inability to control the flow of electronic signals across physical borders, some authorities strive to inject their boundaries into the new electronic medium through filtering mechanisms and the establishment of electronic barriers. Many countries have set up a censorship system. Besides China, Arab countries have heavy surveillance system. United States, United Kingdom, France, German, Italy, and other countries also set up the censorship systems with different standards.

Even Google itself commonly censors information from its services or subsidiary companies, such as YouTube, in order to comply with its company policies, legal demands, or various government censorship laws. Google censors search results to comply with Digital Millennium Copyright Act-related legal complaints in the United States.

In Europe, Italy has one of the lowest levels of press freedom. Censorship is applied in television and in the press for several reasons. Legal tools there are in development to monitor and censor Internet access and content. Some examples are Romani law, a special law proposed by parliament after Facebook’s cases of group protest against Prime Minister Berlusconi.

On February 24, one former Google Inc. executive and two current managers at the company were found guilty of privacy violations by a court in Milan. The criminal convictions sprang from an incident in which a group of Italian school kids uploaded a video to Google Video. The video showed them bullying an autistic classmate. Regardless if there is direct evidence for the court to make the decision, it is obvious that the court in Milan is not satisfied with Google’s actions: allowing the posting on Google Video of a mobile-phone video showing the harassment of a handicapped youth by his Turin classmates, and taking two months to remove the video, which was posted in Google Italy’s “Most Fun Videos” section and received 5,500 hits before being removed.

Of course Google is not satisfied with the conviction either. Currently, Google only implemented “notification-and-take-down” policy, which does not meet the censorship standard in Italy.


Google decided to withdraw from China because of the requirement for self-censorship. Will Google have to withdraw from Italy because of the criminal conviction? Criminal convictions are considered more serious than a requirement of self-censorship. As to the censorship system in other countries, Google will probably have to withdraw from all the heavy surveillance countries someday.

If Google’s purpose is to make its business as successful as possible, withdrawing from the market is a large problem for Google. Internet Service Providers, however, cannot claim immunity from local government regulations. As Bill Gates said: "You've got to decide: Do you want to obey the laws of the countries you're in, or not? If not, you may end up not doing business there."

Proving Trademark Dilution: Special Challenges in Survey Evidence

By Ian B.

Over the last decade of Intellectual Property litigation, trademark dilution by blurring has become an increasingly popular plaintiff’s claim for a multiplicity of reasons: the non-necessity of showing confusion, the increased judicial recognition of pre-sale and post-sale consumer impressions, the enactment of the Federal Trademark Dilution Act and a more recent Supreme Court ruling on its construction all contribute to the attractiveness of making such a dilution claim.

However, the increasing popularity of simply ‘tossing in’ a blurring claim along with more structured assertions of confusion, has also created a vast amount of uncertainty as to what needs to be proven to sustain such claims of dilution and how the blurring claim should be proven.

What follows is a brief discussion of some of the relevant issues involved when attempting to present a successful empirical showing of trademark dilution by blurring.


At the outset it is worth noting that there are two necessary elements which must be effectively proven to sustain any claim of trademark dilution. The first necessary element is fame of the mark. In many cases a showing of fame is a mere formality because the concerned plaintiff is a widely recognized entity with vast commercial exposure.

In some cases, however, the concerned plaintiff’s mark may not be wholly distinct from other famous marks of a similar nature or its fame may be relegated to a certain region or demographic. It is generally established that nationwide fame is the requisite showing, but with the wide accessibility of internet commerce and exposure, plaintiffs frequently argue that marks which might otherwise be famous only in a certain region, are in fact recognizable on a national if not worldwide level. This, along with the fact that many marks may only be famous in a given set of consumer-demographics, has led to the use of survey evidence, even at this most basic threshold stage, to establish a dilution claim.

While creation and use of such surveys is not an uncertain practice itself, the presence of such surveys (particularly where the chosen route is to establish secondary meaning) can complicate the design and defense of surveys which may later be necessary to make a showing of ‘actual dilution’ as opposed to simple association. Frequently a strong empirical showing of secondary meaning necessary to establishing fame can end up weakening an assertion of an actual loss of distinctiveness in the concerned mark where such a showing will be necessary to meeting a court’s requirement to demonstrate dilution via loss of selling power.

The issue of fame aside, all claims of trademark dilution must also be based upon a second necessary element: a senior and a junior mark which are ‘similar.’ For dilution, only the marks themselves must be similar. This presents a stark contrast to establishing similarity when making a confusion claim (confusing similarity) which usually requires not only similar marks, but also similar products and/or business channels or other showings under the standard Sleekcraft Factors.

In short, claims of trademark dilution require only a showing of fame and a showing similarity of the concerned marks and the threshold for these showings, while sometimes a bit complicated, is not especially high. For this reason, dilution claims, and particularly claims based upon blurring, are frequently made upon a wide range of actual consumer associations and the existence of actual harm may remain speculative. Hence, the courts have applied a variety of standards in determining whether or not a prima facie assertion of dilution is in fact indicative of actual blurring. The only certainties which have been offered to date are a handful of elements which the Supreme Court has deemed as not necessary to actually establish a dilution claim.


Prior to the enactment of the 1996 Federal Trademark Dilution Act (FTDA), standards for trademark dilution were governed entirely by state laws. After the implementation of the FTDA, trademark dilution effectively became the province of federal law, and while the certain standards reflected in prior state laws such as the requisite elements of fame and similarity were retained, other aspects of the federal law were uncertain because rulings were inconsistent.

In response to these inconsistencies, the Supreme Court eventually heard Moseley v. Victoria’s Secret Catalogue, Inc., 537 U.S. 807. The Court’s ruling in Moseley clarified the following standards and limitations in regard to sustaining a claim for trademark dilution:
1. Dilution may only be based upon a claim of actual dilution, likelihood of dilution is insufficient.
2. Showing confusion, either a likelihood or actual, is not necessary in proving dilution.
3. Whether or not the senior and junior mark holders are competitors is not a limiting factor.
4. Showing actual loss of sales is not a requisite element to proving dilution.

The Court in Moseley did an excellent job in outlining what claims and elements of proof could not and did not need to be used to sustain a claim of dilution, but as to blurring it offered precious little guidance in terms of what a plaintiff should show in order to prove a loss of distinctiveness or how any requisite showings could be properly supported. This presents us with the current post-Moseley landscape, in which, as will now be discussed, there is vast uncertainty as to what standard judges will expect or apply when assessing a claim for trademark dilution by blurring. It has largely become an ‘anything goes’ atmosphere and many famous mark holders and plaintiff’s attorneys are struggling to find any sort of predictability to the manner in which they must prove their claims of trademark dilution. In brief, the present picture is as follows.


In so far as marketplace association is concerned, the traditional model of dilution has historically been that at the point of sale, a consumer would see the defendant’s mark and by its similarity to the plaintiff’s famous mark, would make an association with the plaintiff’s mark thereby diluting its distinctiveness. This model is no longer the standard.

Judicial recognition of actionable commercial association either prior to or after the point of sale, coupled with increasingly effective arguments in consumer psychology studies based upon an aggregate marketplace experience, have led courts to accept a variety of associations and respective effects as being potentially indicative of dilution by blurring. Today it is just as probable that blurring may be proven by showing the traditional association ‘defendant’s mark recalls plaintiff’s mark’ as it is by the reverse.

This broadened scope of acceptable types of association to substantiate dilution is due in part to the aforementioned factors but is also a result of the Court’s observation in Moseley that dilution does not require an actual showing of loss of sales. Upon this assumption, attorneys have increasingly turned their attention to making convincing and creative showings of association alone, arguing that this in and of itself can evidence actual dilution.

The problem is that many courts still hold that dilution is not proven unless an actual loss of distinctiveness in terms of lost selling power is shown. This raises the question as to how one can show a loss of distinctiveness through a loss of selling power without having to actually show lost sales. It is upon this hurdle that many of the most convincing forms of association surveys get tripped up. The result is a lack of standardization in how to actually construct and execute a dilution survey and an increasing reticence among plaintiff’s attorneys to rely solely on such surveys when trying to formulate a convincing presentation of empirical evidence to prove dilution by blurring.

This relative open-endedness and uncertainty in how to effectively prove dilution has not only reduced the frequency with which surveys are relied upon by plaintiffs, but it has created a variety of approaches in how to conduct effective dilution surveys. Issues such as the potentially diminished value of a survey in the overall association model, persistent problems of cost, decreased attractiveness in the face of alternative empirical methods and predictable characterizations of flaws and bias by opposing experts, are all issues which must be accounted for in survey construction. In lieu of these issues, what follows is a short list of a few of things which should be done when designing and implementing a trademark dilution survey aimed at proving actual dilution by blurring.


1. Use a diverse and size appropriate population: Diversity of the survey population is a crucial element to guarding against the inevitable assertion by opposing counsel that the design is flawed.
2. Implement sufficiently dissimilar controls: Control subjects which are too similar to the marks at issue will uniformly open the design to attack; the risk vs. reward is disproportionate any other way.
3. Use a double-blind method: To prevent allegations of clear bias, both the administrators and the survey participants must be ignorant of the purpose of the survey.
4. Reduction for noise: This is merely a standard methodological practice in proper survey analysis.
5. Focus only on the element to be proven: If the survey is to support blurring, design the survey to optimize the chance of showing reduced distinctiveness and selling power, don’t try to produce evidence of secondary meaning or confusion by the same design.
6. Lead without leading: A clever survey design must increase the chance that participants will indicate the desired response but the approach must be extremely subtle, opposing counsel will be constantly vigilant for bias.
7. Don’t overreach: The strength of survey results or the survey design must never be presumed as unassailable, a prudent approach assumes that flaws will be found and corroborative evidence will be necessary.
8. Account for marketplace realities: Every design must mimic the actual consumer experience as closely as possible; it is better to slightly sacrifice desirable results than to expose to survey to invalidation too easily due to an unrealistic design.
9. Be ready to fight it out: At the end of the day, every survey will be deemed “fatally flawed.”


Surveys to prove dilution of a trademark by blurring are feasible albeit lacking in a standard approach which is predictably known to be effective. Records of case law and various practice guides indicate that certain models are recognized to be optimal given certain situations and there is a reasonable degree of published discussion on the subject of dilution surveys generally. This said, as detailed above, prudent attorneys seldom approach the problem of proving trademark dilution by relying on a single survey as the sole form of empirical evidence to support their case. Increasingly the typical approach employs a survey along with some actual evidence of sales records of the plaintiff both before and after the introduction of a defendant’s mark into the marketplace and/or an extensive opinion by a well-versed consumer psychologist to support the assertion that association alone can and will lead to diminished selling power via a loss of distinctiveness.

In the case of a claim for dilution of trade dress, the picture is far less well developed. In fact, there are essentially no published opinions offering any record of a successfully designed and litigated consumer survey which has actually been deemed to prove dilution of trade dress by blurring. Simply put, trade dress claims are less frequently brought than trademark claims or they are brought in tandem. Claims for dilution of trade dress are rarer still, and there are only a handful of published cases in which a survey to support an assertion of dilution of trade dress by blurring has actually been considered or attempted.

This presents a very interesting caveat in an otherwise reasonably well documented area of legal study: How to design and use a consumer association survey to effectively yield empirical evidence of actual dilution in trade dress by blurring? The cases outlined below have at least touched on the issue.


Nabisco, Inc. v. PF Brands, Inc., 50 F. Supp. 2d 188 (S.D.N.Y., 1999): In Nabisco the dispute involved the popular ‘Goldfish crackers’ and a planned product to promote the cartoon ‘Cat-Dog’ featuring a variety of animal shaped crackers including one of a fish which was very similar in appearance to ‘Goldfish.’ The overall circumstances of the case presented an excellent opportunity to design and conduct a trade dress dilution survey which would likely have ended in a winning showing for the plaintiff, but the planned survey in the case was derailed when Nabisco failed to comply with a discovery order to produce the requisite units of ‘Cat-Dog’ crackers for Pepperidge Farm to conduct its proposed analysis. As such the survey was scrapped and its proposed design was never published.

Gibson Guitar v. Paul Reed Smith Guitars, 423 F. 3d 539 (C.A. 6, 2005): In Gibson the dispute was between two guitar makers for a similarly shaped ‘swoop-cleft’ design which constituted a substantial portion of the right side of the front face of a guitar. The basic facts of the case presented a seemingly good opportunity to conduct an effective survey for dilution of trade dress but the survey was never produced as Gibson lost on the issue of confusion and did not pursue the matter further.

Gateway, Inc. v. Companion Products, 2002 WL 34248562 (D. SD., 2003): Gateway involved the famous trade dress of the ‘Gateway Cow Motif’ and a computer accessories designer selling products comprised of several different cow-appearing items which allegedly called the Gateway-Motif to mind. A survey was conducted in the case and published and the judge found the evidence it yielded to be compelling but the survey was designed to show a likelihood of confusion. Even though Gateway prevailed on both the counts of confusion and trade dress dilution, the only published empirical evidence was the confusion assessment and it is well established that proving confusion is an entirely different standard and proposition than proving dilution. Hence, the design of the confusion survey cannot be relied upon as an effective standard for evidencing dilution across the board, even though the designed survey may have worked in this particular case.

I.P. Lund Trading v. Kohler Co., 11 F. Supp. 2d 112 (D. Mass., 1998): This case involved a dispute between two makers of faucets. In holding that there was sufficient evidence of actual dilution the court considered an application of the Mead Data Factors which assess the similarity of the marks, the similarity of the products, the sophistication of consumers, the question of predatory intent, and renown of each of the concerned marks. Through an analysis of these factors the court was comfortable in arriving at the conclusion that actual dilution was occurring. The main problem with this decision is that it offered no real explanation as to how an actual reduction in selling power by loss of distinctiveness was occurring. This case stands for the example that even after Moseley, courts take a wide swath of approaches in deciding what truly needs to be shown to constitute actual dilution and are sometimes prepared to take logical leaps of faith.

Adidas America v. Payless Shoesource, 2008 WL 4279812 (D. OR., 2008): The diversity of approaches to assessing actual dilution is also evident in the Adidas decision which presented a very strong case for dilution of trade dress but did not entail a survey. Instead, the plaintiff’s winning argument utilized an extensive report by a consumer psychology expert who presented a convincing argument that actual dilution could be determined upon the strength of consumer association alone. This case demonstrates how the uncertain standards in proving dilution of tradedress are encouraging attorneys to rely on alternative forms of evidence which may be more cost-effective and less time consuming to produce than surveys.


The aforementioned cases nearly constitute the entire universe in which trade dress dilution surveys have been considered or have been a viable option. Their ‘proper construction’ generally remains an open issue and if and when a successful trade dress dilution claim is brought and proven on the strength of a survey, it will likely be a very well studied case. Until such time though, this remains a largely open issue and the existence of a generally appropriate approach to presenting empirical evidence of dilution remains uncertain.

Because of this reality, the continually and rapidly changing consumer experience in an open marketplace and the variety of judicial approaches to what must be shown in substantiating a claim of actual dilution, it can only be said that a savvy approach to the issue must be a flexible one which is not reliant on any one mode of proof.

Google v. China – Just What in the World Is Going on over There?

By Patrick S.

Recently, there has been significant coverage in the news about Google, and other Western companies, and their problems in China. Much of the recent coverage has been driven by Google’s January 12th, 2010 blog posting that it had been the victim of a "highly sophisticated and targeted attack on our corporate infrastructure originating from China." Google's problems with respect to this issue were so severe that it resulted in a full blown diplomatic dispute between the U.S. and China. The US government has stated that Google's allegations against China "raise very serious concerns and questions [and] we look to the Chinese government for an explanation. . . [t]he ability to operate with confidence in cyberspace is critical in a modern society and economy." In response to this and related US criticism, the Chinese government has, either directly or indirectly, provided sharp and highly critical anti-US responses. An example of such a response could be found in the Chinese state-sponsored newspaper (The Global Times), which quoted a Chinese analyst as calling Google’s complaint “a U.S. government-initiated strategy with covert political intentions . . . [and that] [a]s the global landscape is undergoing profound irreversible shifts, the calculated free-Internet scheme [advocated by Google] is just one step of a U.S. tactic to preserve [the U.S.'s] hegemonic domination.” As for Google, after first attempting to resolve its differences with the Chinese government, it has now moved forward with its “doomsday scenario” and formally exited China - no small feat for a publically-listed multinational corporation under tremendous pressure to grow its market-share and revenues.

So, one might ask: just what is all this rancor about? Unfortunately, this is not an easy question to answer. In reality, there are many reasons for Google's concerns with the Chinese government including censorship of Google’s search results and the Chinese rule of law with respect to protection of intellectual property. The focus of this brief commentary will be on Google's concerns related to Chinese violation of Google's most valuable asset - its intellectual property.

Google appears to be claiming that, either directly or indirectly, China (and/or its citizens) played a role in allowing, encouraging or tolerating computer "hackers" to break into Google's IT system and illegally perform a number of actions. Of significant concern to Google (and approximately 30 other western-orientated companies, such as Adobe Systems) was the hackers apparent attempts to access and steal intellectual property, including the Company's most valuable asset - its source code, which is defined as the means most often used by programmers to specify the actions to be performed by a computer. Google’s top-of-the-line search methodology, for example, is powered by patented source code developed by the Company’s two founders, Larry Paige and Sergey Brin.

For a Company such as Google that lives or dies by its proprietary source code, this is a crucial issue. More than anything else, Google is a Company that, through its self-created computer programs (i.e. source code), analyzes user-input search terms, retrieves what it believes to be the most relevant result across the world wide web, and quickly presents that data to the end-users. Google's effectiveness and skill at doing this has allowed it to gain the greatest market share in search-related advertising revenue, and provided the Company with billions of dollars in revenue each year. As such, the processes by which Google performs these activities are highly confidential and valuable.

From a U.S. legal point of view, Google's methods and processes for analyzing user-input search terms would be considered a proprietary trade secret. For instance, Section 1(4) of the Uniform Trade Secrets Act defines "trade secret" as "information, including a formula, pattern, compilation, program, device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy." Court cases from across the U.S. that have considered the issues related to trade secrets have offered significant protection to persons or companies that have invested in and created such trade secrets. For instance, in US West Communications, Inc. v. Office of Consumer Advocate, 498 N.W.2d 711, 714 (Iowa 1993), the Court held that "[t]rade secrets can range from customer information, to financial information, to information about manufacturing processes to the composition of products. There is virtually no category of information that cannot, as long as the information is protected from disclosure to the public, constitute a trade secret. We believe that a broad range of business data and facts which, if kept secret, provide the holder with an economic advantage over competitors or others, qualify as trade secrets." In another opinion, a U.S. Court provided even greater potential protection to those creating trade secrets, holding that, in essence, anything which provides its owner with a competitive advantage can qualify as a trade secret if it is appropriately guarded as such. Prince Mfg., Inc. v. Automatic Partner, Inc., 191 U.S.P.Q. (N.J. Super. Ct. Ch. Div. 1976).

Because of this, under general U.S. legal standards, Google could expect its computer source code / programs /processes to be legally protected. Part of the controversy between companies like Google and China is that western-orientated firms are finding that China may not fully respect western-style intellectual property laws, thus putting companies - like Google - that exist only because of their intellectual property, at great risk. As increasing numbers of western-oriented businesses expand into China due to its large domestic consumer market, manufacturing base, and growth potential, firms such as Google are finding that they may be faced with a lose/lose type of decision: either pull-out of China and ensure protection of their intellectual property but lose out on the tremendous market share growth the market offers, or put the Company's intellectual property at risk but enjoy revenue and market share growth. For companies that rely on the protection of their trade secrets to survive and grow, a country's failure to respect the sanctity of intellectual property could, as Google has shown, be a deal breaker. Whatever the growth benefits of investing in China are, if the country will not vigilantly protect foreigners’ intellectual property and trade secrets, companies will increasingly think twice about investing there - to the detriment of China and western Companies. Further, in some cases, firms already invested in China may decide, as Google did, to pack up and leave.

Google’s Patent on Censorship

By Hui W.

In the last few months, Google and the Chinese government have argued over the cyber-attack allegedly coming from the Chinese government. As a result, Google has announced that it no longer censors web search result through Google.cn, the subsidiary of Google in China. If the Chinese government prohibits free access of Google.cn search results, Google would withdraw completely from the Chinese market. The bold and public show of defiance has won Google applause all over the world; especially because China is the fastest growing economy and Western companies have bent over backwards to follow the suppressive laws and regulations of the Communist government. The move has boosted Google's image as a new kind of company, and that its motto of "do no evil" is not just empty words, but the guiding principle it follows in its operations.

Yet in the midst of the campaign against Internet censorship of the Chinese government, Google quietly obtained a US patent grant entitled "Variable user interface based on document access privileges" on February 16, 2010. The patent is for a way to change what a reader can see based on "geographical location information of the user" or "access rights possessed for the document." In other words, Google is patenting a censoring technology that blocks or allows access to content of its search results depending on where the user is coming from. The irony is inescapable: If censorship is so bad that Google is willing to cease operations in a country to protest, why does Google want the right to exclude the very definition of patent?

Google's patent also raises several interesting legal points about Internet patent. At first glance, we may say that technological progress has removed the validity of one argument from some of the earlier cases. In 2000, Yahoo! was sued in France for failure to filter out Nazi memorabilia items from its website if an Internet user accessed Yahoo.com from France. The reason is that in France the displaying of Nazi memorabilia is illegal, and by allowing French Internet user to see Nazi memorabilia in France, Yahoo.com violated French law, La Ligue Contre Le Racism v. Yahoo! Inc. (Paris 2000). One defense Yahoo! argued was that it had no technology to filter out content based on where the Internet user was coming from. The court ultimately did not accept this argument, and stated that if Yahoo! could show advertisements in French when the Internet user was from Yahoo.fr, it should be able to block Internet content too.

The Google patent shows that, unequivocally, the technology to "censor" content online based on user location is available, and that not blocking content is a choice and not a technical limitation.

Another interesting legal issue created by this patent, involves the interaction between copyright and patent laws on the Internet. Google's patent provides a way to alter website content, and it is plausible that the alteration may violate the copyright of web content owner. One of the rights that a copyright owner gets is the adaptation right: the right to authorize or refuse to authorize a derivative work, which in any manner recasts, adapts or transforms the original work, such that the resulting work is substantially similar to the original work. Formatting a website with reduced content is an alternation. The alternation arguably is adaption, transformation, or recasting. A copyright owner may make a colorable claim that "new" web content formed after Google's alteration is a derivative work generated by Google, and Google's action violates the copyright owner's adaptation right.

Google may counter such a challenge by arguing that the patent is specifically limited to comply with “applicable copyright laws” as specified in the Claim 1 of the patent. Arguably, the location based filtering is out of necessity due to difference in copyright law among various countries. An often mentioned example on the inconsistency of copyright term is that “Happy Birthday to You,” probably surprising to most, has a valid copyright, and the copyright lasts until 2030 in US while only until 2016 in Europe. On the Internet, suppose a user tries to access with the tune embedded on a website in 2017. If the user is from say France, an EU country, Google may grant access so the tune would be played when the user views the website; if the user is from US, the same website can still be accessed, but the tune could be blocked using Google patented technology, due to violation of public performance right of a work under existing valid copyright. In application like this, Google may argue, the patent helps compliance with copyright law, not violating it.

Morality aside, it’s hard to tell if Google’s patent would violate any intellectual property law in the United States. Obviously, Internet access has worldwide implications, and it remains to be seen if a patent like this would violate the law somewhere outside of the U.S.; and if it does violate the law in another jurisdiction, what the results of this conflict would be.