Internet + Intellectual Property Justice Clinic

Copyright and Clothing

2010-12-15T22:20:00.000-08:00

By Elisa G.

   The Innovative Design and Privacy Prevention Act (IDPPPA) was first introduced on August 5, 2010 by New York senator Charles C. Schumer in an effort to provide more protection to fashion designers. If passed, the bill will offer intellectual property protection in an industry that often depends on the use of copying.

   Currently, nothing in U.S intellectual property law protects the design of practical articles such as clothing. Intellectual property rights, copyright, trademark, and patent laws do not protect the clothing industry and its designers. Previous attempts to solve this problem, most notably the Design Piracy Prohibition Act (DPPA), have failed to win congressional approval.

   The IDPPPA provides limited protection to fashion. If passed the IDPPA would protect only “unique designs” and only “substantially identical” copies would be illegal. For qualifying designs, the bill would offer protection by prohibiting unauthorized importation, sale, or distribution of any infringing design for three years. Remedies would include statutory damages or an infringer’s profits, injunctive relief, and destruction of infringing articles.

   Supporters of this bill say the ability to receive royalties from the production of knockoffs would encourage the investment of capital in design activity and therefore boost the entire apparel industry. Supporters say that the three-year protection is enough time to award research and development without hindering creativity and progress in products based on the protected design.

   However, the IDPPPA has its share of critics. A strong concern is that the bill will hurt the fashion industry. Critics argue that much of the growth and creativity in fashion depends on imitation. These critics argue that the concept of the “trend” is what sells fashion. Because of this, they argue, copyright protection for clothing fashion would cause prices to rise and the creative cycle to slow down. Others critics argue that once in the hands of lawyers and judges, such a law will expand to harm both designers and consumers. They say that the only people who will benefit from this law are lawyers and those who can afford costly lawsuits.

   According to insiders, the bill is likely to pass. Should intellectual property protection be given to this industry, the result might be that imitation may no longer be the sincerest form of compliment but instead an expensive ticket to the courtroom.

iPhone Jailbreaking and the DMCA

2010-12-15T19:25:00.000-08:00

By Sinny T.

   The Digital Millennium Copyright Act (DMCA) was originally enacted to prohibit “circumvention” of digital rights management and “other technical protection measures” used to protect and control access to copyrighted works. The DMCA has since cast a wide net to protect copyrighted material even when the use of the copyright materials arguably may be permissible under fair use guidelines.

   In order to curtail DMCA’s overly restrictive implications, the DMCA provides that the Library of Congress possesses the power to define exceptions under the DMCA for legitimate, non-infringing uses of copyrighted material. Pursuant to this power the Librarian of Congress has recently issued a public statement declaring that it was legal to bypass a cell phone’s operating system (particularly iPhone) on the particular software it will run to get “lawfully obtained” programs to operate.

   Apple, Inc. has maintained tight control over the types of programs allowed to run on the iPhone, namely, applications (a.k.a. Apps) pre-approved by Apple and which only could be purchased through the App Store. But, with the Library of Congress’ new ruling, Apple’s ability to police and prohibit jailbroken iPhones has vanished. A jailbroken iphone allows the user to bypass the restriction Apple places on iPhones to only allow the installation of applications from the App Store.

   Here’s how the argument had developed over this issue between Apple and “jailbreakers”:

   Apple argues that it has the right to control the software on its devices and jailbroken, altered phones infringes upon Apple’s copyright for Apple’s operating system. Apple further argues that altering the phone encourages pirated applications, exposes iPhones to security risks, and hampers the user’s overall iPhone experience.

   Jailbreaking proponents, however, argue that users should be allowed to customize their phones as they see fit and to have freedom to use features or programs that fall outside of the App Store. Furthermore, allowing this ability to customize phones will in fact bolster iPhone sales and appeal when Apple would not have such a restrictive grip over its products and application store.

   The current Library of Congress ruling allows jailbreaking iPhone users a big sigh of relief as to fear of prosecution. The ruling also alleviates any concerns about bringing a jailbroken iPhone into the Apple Store for repair or analysis.

   Although negative publicity over the leak of a secret phone prototype and iPhone 4 antenna problems have chipped away Apple’s iron control over its products, sales figures have not been impacted. Consumers continue to purchase Apple products regardless of any government ruling or unsavory publicity.

   The Library of Congress exception has also allowed artists to remix copyright-protected video content for noncommercial work, and renewed its approval for cellphone owners to “unlock” their devices in order to allow its operation under other wireless carriers.

HP v. Hurd: Trade Secret Misappropriation and Inevitable Disclosure in California

2010-12-15T18:15:00.000-08:00

By Patrick U.

    On September 7, 2010, Hewlett-Packard (HP) filed a complaint against Mark Hurd, former HP President and CEO, in an effort to obtain an injunction to prevent Hurd from joining competitor Oracle as President and member of the board. HP alleged (1) breach of contract and (2) threatened misappropriation of trade secrets. The claim for breach of contract alleged that Hurd was under contractual obligations to maintain the confidentiality of HP’s trade secrets, and that Hurd violated those obligations. The threatened misappropriation claim alleges that, in his position at Oracle, it will be impossible for Hurd to avoid using or disclosing HP’s trade secrets.

    On September 20, 2010, HP and Oracle reached a settlement that would allow Hurd to join Oracle. The details of the settlement are confidential, but an SEC filing indicates that Hurd forfeited a large chunk of HP stock options and experts suspect Hurd agreed not to participate in certain business decisions. Hurd will likely not be allowed to make business decisions for a period of time in areas involving Oracle’s growing hardware business.

    This note will analyze HP’s claims on their merits and take a quick look at California’s rejection of the inevitable disclosure doctrine.

HP’s Claims

    HP’s claims are really one and the same. HP is claiming that Hurd is in breach of his employment contract because he will inevitably disclose information he is under an obligation to keep confidential. The second cause of action, threatened misappropriation of trade secrets, is an extension of this theory. That, regardless of the employment contract, Hurd will inevitably disclose HP’s statutorily protected trade secrets in his new role at Oracle.

    The inevitable disclosure doctrine arises from Cal. Civ. Code § 3426.2(a): “Actual or threatened misappropriation may be enjoined.” Threatened misappropriation has been interpreted, in some jurisdictions, to include situations in which a former employee would “inevitably” disclose trade secrets. Schlage Lock Co. v. Whyte, 101 Cal. App. 4th 1443 (2002). The seminal case on the inevitable disclosure doctrine is Pepsico v. Redmond, in which a former Pepsi executive takes a job at Quaker Oats and Pepsi seeks an injunction to prevent the move. 54 F.3d 1262 (7th Cir. 1995). The court held that “a plaintiff may prove a claim of trade secret misappropriation by demonstrating that defendant’s new employment will inevitably lead him to rely on the plaintiff’s trade secrets.” Id.

    Plaintiff in Schlage attempted to apply the inevitable disclosure doctrine in California. 101 Cal. App. 4th 1443. In California, non-compete agreements in employment contracts are per se void. Cal. Prof. Bus. Code § 16600. Through this statute, California seeks to promote employee mobility and protect a person’s right to earn a living. In Schlage, the California Court of Appeals declined to extend the doctrine to threatened misappropriation cases in California, reasoning that it creates an “after-the-fact covenant not to compete restricting employee mobility.” 101 Cal. App. 4th at 1447.

    In HP v. Hurd, both causes of action were likely to fail because of California’s policy of favoring employee mobility. Despite the suit’s lack of merit, Hurd (Oracle) and HP settled quickly because of the deep relationship between the two companies. The companies have around 140,000 customers in common, and 40% of Oracle software runs on HP machines. The suit would have soured relations between two companies who have long been synergistic. Interestingly, hiring Hurd signifies Oracle’s hardware ambitions, which is most likely why HP brought the suit in the first place. A legal “firing across the bow.” Watch for this relationship to degrade further over the next few years.

The Value of a “-book”: Facebook v. Teachbook

2010-12-15T17:12:00.000-08:00

By Carlos R.

   On August 18, 2010 Facebook, Inc., better known as Facebook.com, one of the world’s most popular Internet websites, filed a federal lawsuit against Teachbook.com LLC alleging trademark infringement due to the use of Teachbook.com’s “-book” suffix in its registered domain name. This will be a case of first impression in the Northern District of California, and will test the ability of wholly online services to trademark otherwise generic portions of their domain name.

   This suit against Teachbook is the main warning shot of a carefully launched campaign against other social networking websites that use the “-book” suffix in their domain names. Besides this suit other sites that received cease and desist letters from Facebook to refrain from using “-book” in their name were Placebook, Redneckbook, Doctorbook, Vetbook, and Geezerbook. Many of these sites complied and were taken down. Teachbook may have been specifically targeted because it was planning a large nation-wide launch in the fall of 2010 and has explicitly advertised itself as an alternative to Facebook for teachers.

   Another targeted site, Lamebook, recently turned the tables and filed their own proactive trademark proceedings in the Western District of Texas against Facebook. Lamebook seeks declaratory judgment it is protected by the free speech element of the First Amendment as a parody and that it is a non-competitor of Facebook since it does not offer any social networking services.

   Many tech commentators on the Internet have suspected that Facebook's campaign was coordinated as a response to the release of David Fincher and Aaron Sorkin’s largely unflattering film adaptation of the events that led to the foundation of Facebook titled The Social Network. The lawsuit may also have much to do with the fact that many in Silicon Valley are betting on social networking websites expanding in the future and that Facebook sought to make a clear statement that it will protect its trademark name from dilution and infringement from imitators at all costs.

   Trademark law differs from copyright and patent law in that for a trademark to be enforceable it must be in use in the marketplace. The central theories behind trademark law is that a mark will help identify goods in the marketplace and serve the dual purpose of protecting consumers from being tricked by imitator goods and also giving the owners of the mark a cause of action against competitors who piggyback off the success of the original mark to sell their own goods. A mark is considered "in use" once it is a recognizable indicator of a particular good in the marketplace. Marks can be things such as words, logo designs, colors, sounds, smells, or any combination of features that accomplishes the purpose of identifying one good.

   Words are often tricky to trademark because they can easily be found to be “generic” and not subject to trademark protections. Generic words are common or descriptive terms. For example a trademark for “apple” would be impossible to establish if one was selling apples. However, the more unique the mark to the good the better chance of success in obtaining a trademark. If one used the term “apple” to establish a mark in the computer hardware world they have a much higher likelihood of being successful (if not for the fact that Steve Jobs has gotten there first.)

   Domain names online may be considered trademarks because domain names are the central tool used by online consumers to access online goods and services. Facebook is operating under the central theory that they have established use in the marketplace and registered the name “Facebook” as a trademark for the purpose of online social networking.

   In the August 18th complaint against Teachbook the plaintiffs made two primary accusations against Teachbook.

   First, Facebook alleges trademark infringement based on the fact that the suffix “-book” causes Facebook and Teachbook to sound similar which may lead to confusion. They also claim Teachbook is directly competing for the same market pool as both Facebook and Teachbook operate online and both offer social networking to working professionals.

   Second, Facebook alleges dilution of its name brand. Facebook claims that Teachbook will weaken the strength of Facebook’s name, which has been expensive to build and maintain. Allowing a direct competitor to piggyback off the name recognition of Facebook, particularly through the use of “-book” in its domain name, will allow others to do the same and weaken the overall name brand of Facebook. The key wording here is that adding the term “-book” to the Teachbook domain name is wholly arbitrary to the function of it’s service as a social networking site for teachers, and that the only possible explanation for its use is to make consumers identify it through Facebook’s own name.

   The dilution cause of action may clearly be the stronger of the two. A similar case was decided in the fast food world earlier this year in Malaysia, where the nations highest court ended a lengthy eight year court battle between McDonalds and McCurry, an Indian-food based fast food chain. The allegations by McDonalds were very similar to the allegations made by Facebook, particularly to how the prefix “Mc-” was being used by McCurry to cause confusion among consumers and piggyback off McDonald’s name brand. For it’s own part McCurry claimed the “Mc” stood for “Malaysian Chicken” and that they were not direct competitors with McDonalds as they did not sell American fast food. The Malaysian court bought both of these arguments and found no infringement on McCurry’s part.

   The Facebook v. Teachbook case however will be fought in the Northern District of California. American Federal Courts are known to more friendly to intellectual property holders than courts in other areas of the world. It will be interesting to see which direction the court decides to go with. A win on Facebook’s part could shut down any running social networking site with the suffix “-book” and give Facebook a complete monopoly on the name and, in many ways, protect it from any competitors whose presence might be healthier for the marketplace. On the other side a win by Teachbook might open a floodgate for competitors to drown out any current value of “-book” in Facebook’s name and possibly spread the trend to other popular domain names.

   In either case the court will have a difficult time parsing through the worth of suffixes and prefixes on domain names and what value they have to the overall value of the name. I expect this will become an important issue as the Internet marketplace grows in the future. This is a case to keep an eye on.

Google-Verizon's Net Neutrality Proposal

2010-12-15T16:08:00.000-08:00

By Yeon Soo C.

   Two Internets could emerge: the public” information highway” we know today, and a private one with faster lanes and expensive tolls.

   The principle of “network neutrality” requires companies providing internet service to treat all sources of data equally. Network Neutrality also requires no restrictions by internet service providers or governments on content, sites, platforms, and the modes of communication.

   Currently, Internet users get access to any web site on an equal basis: Foreign and domestic sites, large corporation home pages and low traffic blogs all show up on a user’s screen in the same manner when their addresses are typed into a browser.

   But, now there is a passionate debate over whether companies providing internet service should be able to give preferential treatment to content providers who pay for faster transmission, or, to their own content, in effect creating a two-tier Web. This two-tier Web would have a fast lane and a slow lane, and the means to block or impede content containing controversial points of view.

   The Federal Communications Commission (“FCC”) has kept things the way they presently are. However, the FCC’s ability to do so has been in doubt since a federal appeals decision in April 2010 restricted its authority over broadband service: The Comcast Corporation, the nations’ largest cable company, challenged the FCC’s authority to impose the “net neutrality” obligations on broadband providers. The FCC argued that such rules are needed to prevent phone and cable companies from using their control over Internet access to favor some online content and services over others. The US Court of Appeals for the District of Columbia, however, held that the FCC lacks the authority to require broadband providers to give equal treatment to all Internet traffic flowing over their networks.

   There is still another point of view on this issue. Recently, two leading players in internet service and content – Google and Verizon – came out with a joint proposal that took a different approach. In a joint policy statement Google and Verizon issued in August 2010, they proposed that regulators enforce the principle of net neutrality on wired connections but not on the wireless internet.

   Some large Internet and telecommunications companies – Google, Verizon, AT&T – as well as some startup companies showed positive reaction to this “Google and Verizon’s two-tier web” proposal. The main reason for their support of the Google and Verizon’s two-tier proposal is that this proposal gives carriers the flexibility they need to be able to manage their networks. They argue that there should be an internet service that remains open and neutral, but that does not necessarily mean there shouldn’t also be premium options to appeal to some for a better consumer experience. Of course, it would also generate revenue for those companies who favor the two-tier approach.

   I fear, however, that there is the possibility of a negative impact from having a two-tier web in any form. Technology companies and consumer advocacy groups – Facebook, Amazon, Ebay – also strongly oppose the two-tier web proposal. If the proposal were to be adopted, the Internet would not be quite as open anymore. There is a great value in preserving an open Internet that is accessible to innovators – regardless of their size of wealth. The Internet we have today has promoted a vibrant and competitive marketplace where consumers have ultimate control over the content and services delivered through their Internet connections.

Performing Rights Organizations

2010-12-15T15:59:00.000-08:00

By Shoshana L.

    Since the 1909 Copyright Act, copyright holders in the United States have held the exclusive right to the public performance of their works. A public performance occurs “at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered.” 17 U.S.C. § 110 (2006).

    Enforcing the copyright holder’s right presents a problem. To truly police this right, the holder must monitor a range of performance venues from strip malls to strip clubs. How could one individual, or a small group of owners, hope to enforce their rights against impermissible use across the United States?

Basics of PRS/PRO

    In the music industry, copyright holders are able to employ a type of collective rights administration called Performance Rights Organizations (PRO) or Performance Rights Societies (PRS). Composers, lyricists and publishers join together as part of an entity which can negotiate licenses, extract royalties and monitor the enforcement of each member’s copyright when performed in public venues, TV and radio. Council of Better Business Bureaus, Music in the Marketplace, 12/14/2007, http://www.bbb.org/us/article/music-in-the-marketplace-3072. The first such group formed in 1914 under the name American Society of Composers, Authors and Publishers (ASCAP). ASCAP’S leadership of songwriters included many important songwriters of the day.

    The composer Victor Herbert, ASCAP’s first president, played the most important part in ensuring the survival of PROs. Mr. Herbert sued a restaurant called Shanley’s for performing his compositions on the piano for the entertainment of diners without paying any compensation to him. When the U.S. Supreme Court ruled upon the matter (in addition to a related suit against Hilliard Hotel Company), Justice Holmes remarked that “[i]f music did not pay, it would be given up. If it pays, it pays out of the public's pocket. Whether it pays or not, the purpose of employing it is profit, and that is enough.” Herbert v. Shanley Co., 242 U.S. 591, 595 (1917). Holmes’ comment, arguably vague, has been interpreted as establishing the legality of PROs, as PROs seek to ensure the profit from copyright goes to copyright holders. See 174th St. & St. Nicholas Ave. Amusement Co. v. Maxwell, 169 N.Y.S. 895, 895 (N.Y. Sup. Ct. 1918). Following ASCAP’s lead, but to represent different interests, two other groups have also arisen: BMI (Broadcast Music, Inc.) and SESAC (Society of European Stage Actors and Composers).

    The efficiency of PROs results from the use of blanket licenses. A blanket license grants a licensee the right to perform any or all the works in the PRO’s repertory. Council of Better Business Bureaus, Music in the Marketplace, 12/14/2007, http://www.bbb.org/us/article/music-in-the-marketplace-3072. Originally, PROs tailored their licenses to the medium and user. As a result of decisions regarding antitrust and unfair competition in New York and the Second Circuit, licenses today are non-exclusive, without discrimination in license rates terms or conditions among similarly situated users. ASCAP’s licenses are not considered a monopoly because artists retain the right and ability to license their works themselves, and ASCAP licenses do not discriminate in price between licenses similarly situated. U.S. v. ASCAP, 1940-1943 Trade Cas. para. 62,104 (S.D.N.Y. 1941). Similarly, when a Buffalo TV station challenged the blanket license in its region, the Second Circuit found options available in single-program licenses for use or source licenses with the copyright holders themselves. Buffalo Broadcast Co., Inc. v. ASCAP, 744 F.2d. 917, 933 (2nd Cir. 1984). It should be noted that ASCAP’s leading competitor, BMI, does not operate under such agreement so writers and publishers may be treated differently. Bernard Korman & I. Fred Koenigsberg, Performing Rights in Music and Performing Rights Societies, 238, PLI/Pat 9, 65 (1986).

Monitoring

    Each PRO monitors various public venues to seek out new licenses and enforce existing ones. Based upon the copyright statute, these public venues include restaurants, bars, clubs and hotels where live or recorded music is played; shopping malls; stores that play broadcast or recorded music; spas, gyms or other sites that offer exercise to music; trade shows; conventions; dance studios; skating rinks; private clubs or fraternal organizations; offices and stores that use “music on hold” for telephone customers; sports teams; colleges and universities; amusement parks; bowling centers; and the Internet. Also, businesses traditionally associated with the performance of music such as radio and television networks and stations, and concert promoters are tracked for non-dramatic performance of works. “Dramatico-musical works” are distinguished from “performing rights” and thus must be licensed directly from the copyright holder or a separate organization.

    Initially, ASCAP employed quasi-lawyer sleuths to uncover infringing establishments. In exchange for discovering infringement, the lawyer received the right to represent ASCAP in the case. This practice was criticized as verging on “barratry,” (the overzealous solicitation of legal work), in at least one case. Buck v. Elm Lodge, Inc., 29 U.S.P.Q. 444 (N.D.N.Y. 1936). The criticism led ASCAP to rely solely upon staff to search for infringing establishments, a practice also in place at BMI and SESAC.

    PRO staff members identify establishments through local advertising and other sources which indicate venues that publically play music. Sites which have not previously entered an agreement receive a visit from a field representative. The representative presents the owner with two options: purchase a license to continue using the work or face a copyright infringement suit. The sites which choose to agree to one of ASCAP, BMI or SECAC’s blanket licenses then must cooperate by handing over royalties. Local radio and TV stations generally provide representative samples from which the PRO can determine the number of uses of copyrighted works. Larger venues such as network TV stations and airlines provide complete logs of the music played.

Paying Owners

    Generally, the owners of the establishment which has entered a license agreement are responsible for handing over fees to the PRO. If an establishment pays a service to “pipe in” background music, as by playing a radio station, the service bears responsibility for paying license fees. The Better Business Bureau notes that federal courts have been rather strict in holding an establishment liable for payment. Establishments have attempted and failed to circumvent payment by claiming that performers were hired as independent contractors; or were not paid by the club owner and worked only for tips; or that the owner specifically instructed the musicians not to play copyrighted music; or not to play specific songs; or not to play music in the repertory of a particular performing rights organization; or even that the owner did not know the music actually performed was copyrighted.

    As PROs need money to operate, copyright holders receive a figure less than the performance license. First, PROs deduct operating expenses. The remainder is divided among members based upon two factors. The first measures the quantity of times a particular work is played, determined via a survey which quantifies the appearance of each piece of music at a given venue. The second quantifies the amount of the work performed. Where less than the entire work is used, as with a jingle or TV show themes, the performer receives proportionally less than if the entire song had aired. Korman & Koenigsberg at 74.

    Challenges to legality and fairness continue to be issues for PROs. However, none to date have succeeded in proving price fixing or antitrust violations. Discontent did, however, lead Congress to enact The Fairness in Music Licensing Act of 1998. The Act, codified at 17 U.S.C. § 513, permits individual proprietors of 7 or fewer non-publically traded establishments in which non-dramatic musical works are performed publically to claim a PRO has demanded an unreasonable license rate or fee and to require the PRO to receive a reasonable license fee.

User Generate Parody Videos and Copyright Owners’ Duty Under DMCA

2010-12-15T15:04:00.000-08:00

By James P.

    With the increasing popularity of user-generated content on the Internet and the ease with which users can manipulate media with readily accessible technology, it is no surprise that copyright owners are aggressively fightin to keep unauthorized content off websites like YouTube. At odds with the Copyright Owners’ interest in controlling the use of their content are the rights of individuals to express their own creativity while engaging in a “fair use” of another’s work, often through the creation of parody. A particularly dramatic scene from the 2004 film “Downfall” is a magnet for such parody creators, who superimpose captions over the film, “chang[ing] Hitler's words … into satirical commentaries on everything from annoying World Cup vuvuzela horns to the collapse of real estate values.” Evangelista, Benny, Parody, Copyright law clash in online clips, San Francisco Chronicle, July 22, 2010 (available online at http://www.sfgate.com/cgi-bin/article.cgi?f=/c/a/2010/07/22/BUQV1EHV9G.DTL). In an effort to protect its copyright, Downfall’s producer began utilizing YouTube’s online mechanism for identifying copyrighted works.

    Even though the producer’s and studio’s main argument was that the entire film “Downfall” can be “viewed online in 10-minute increments without compensation for the studio, producers or actors.” However, the studio’s search for violations “also netted the parody videos,” a significant number of which have been removed pursuant to YouTube’s compliance with the Digital Millennium Copyright Act. The question remains, in its zealous attempt to protect copyrighted work from infringement, what steps must a copyright owner take to ensure that it does not target fair use of a copyrighted work and trigger erroneous takedowns?

Fair Use Under US Copyright Law

    The fair use doctrine is found in Section 107 of the Copyright Act, 17 U.S.C. Section 107. Under that section, in order to determine whether a work qualifies for the fair use defense, courts must look at (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. This statute doctrine codifies the federal common-law test articulated in Folsom v. Marsh (1841). As Justice Storey articulated, “[a] reviewer may fairly cite largely from the original work, if his design be really and truly to use the passages for the purposes of fair and reasonable criticism.” Folsom v. Marsh, 9 F.Cas. 342 (1841). To test the reviewers true intentions, Justice Storey articulates a balancing test that “look[s] to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work. I.d. Section 107 applies not only to criticism to all uses of copyright that meet the four-factor balancing test.

Fair Use and the DMCA?

    An unanswered question in Fair Use Doctrine is whether a Copyright owner must undertake an analysis of whether an allegedly infringing work qualifies for the statutory fair use defense before demanding a takedown under the Digital Millennium Copyright Act. The DMCA (17 USCA 1512(c)) creates a safe harbor from copyright infringement liability for an ISP who timely complies with a copyright owner’s notice to take down a work. The notice must be accompanied by an affidavit stating that the owner has a good faith believe that the work in question is infringing. The ISP then must take down the allegedly infringing work.

    Recently, however, the Northern District of CA determined that a copywriter owner must make “a good faith consideration of whether a particular use is fair use” before issuing a takedown notice, reasoning that “[r]equiring owners to consider fair use will help “ensure[ ] that the efficiency of the Internet will continue to improve and that the variety and quality of services on the Internet will expand” without compromising “the movies, music, software and literary works that are the fruit of American creative genius.” Lenz v. Universal Music Corp., 572 F.Supp.2d 1150 (N.D.Cal.,2008). Lenz involved a mother who posted a short clip of her toddler dancing to a Prince song on YouTube, triggering a DMCA notice to YouTube from Universal. The case is currently on appeal to the 9th Circuit Court of appeals. Should the 9th Circuit uphold the District Court’s ruling, Copyright owners must consider whether an allegedly infringing use is indeed a “fair use” before filing a takedown notice in the 9th Circuit.

Do the “Downfall” Parody Videos meet the Statutory Fair Use Test?

    Any inquiry into whether a particular use meets the statutory “Fair Use” test under Section 107 is fact-intensive. For example, the question is not whether the “Downfall” Parody videos as a complete set meet the “Fair Use” requirements. Indeed, there will be cases in which some videos do and some do not. Given the competing interests between the copyright owner and the parody creators, it seems wholly unfair to me that the producer of “Downfall” can systematically scan YouTube for any uses of their film and utilize the DMCA notice and takedown provisions to block all uses, without an inquiry into whether the particular use qualifies as “fair use.”

Should Human Genes be the Subject of Patent Protection?

2010-12-15T14:56:00.000-08:00

By Eunji C.

    The mapping of the human genome was a huge innovation that had great possibilities for early detection of diseases. For some patients and doctors, however, this has been disappointing to put it mildly. While the United States Patent and Trademark Office (USPTO) does not grant patents over the actual genes in the human body, it grants patents for the purified and isolated gene sequences and genetic tests which correlate the genetic sequences and medical conditions. This has led to a monopoly on genetic testing for certain diseases such as breast cancer.

    The Constitution grants the Congress with the power to grant patents to "promote the Progress of Science and useful Arts." U.S. Const. art. I, § 8, cl. 8. The idea of the patent system is quid pro quo. The patent owner is granted the right to exclude others from making, using, or selling the patented invention for 20 years. This right provides an incentive for inventors to invest their time and effort on new innovations and recoup the cost as well as award them for their contribution to the progress of science. In exchange, the public receives benefits from new inventions and developments. Additionally, inventors are required to provide a full disclosure of the invention, making the invention public knowledge once the period of exclusivity is over. This must be a careful balancing because too much patent protection can impede rather than promote the objective of patent protection. Lab. Corp. of Am. Holdings v. Metabolite Labs,. Inc., 548 U.S. 124, 126-127 (2006).

   In order to be granted a patent, the invention must meet the requirements set out in the Patent Act: patentable subject matter, utility, novelty, and nonobviousness. The subject matter requirement has been interpreted very broadly as “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). This, however, is not without limits. The Supreme Court stated that “laws of nature, physical phenomena, and abstract ideas” are not patentable. Id. at 309. These are not inventions which were meant to be protected because they are naturally occurring phenomenon.

    The USPTO has been granting patents on purified and isolated human genes based on the idea that purified DNA should be treated as any other chemical compound. The word "isolated" has become very powerful in distinguishing a claimed gene from its naturally occurring counter parts. Currently, about 20% of human genes are patented.

    In the case Association for Molecular Pathology v. United States Patent and Trademark Office, Seven patents relating to BRCA1 and BRCA2 genes have been challenged as invalid. 702 F.Supp. 2d 181 (S.D.N.Y. 2010). These genes correlate to increased risk of breast and ovarian cancer. Myriad Genetics Inc. owns the patents at issue and sells BRCA screening tests at about $3000 per test. Myriad stopped other companies and researchers from BRCA screening through cease and desist letters and lawsuits.

    The opponents of human gene patents argue that gene sequences are products of nature and thus are not patentable subject matter. Additionally, they argue that these patents are unconstitutional because they impede rather than promote the progress of science. Many researchers have ceased their work on the BRCA genes due to fear of a lawsuit, which impedes the development of improved genetic testing. Patent owners can block alternative tests and research that could lead to better and cheaper testing. In the worst case scenario, patent owners could prohibit others from conducting research while not even practicing the research themselves. Researchers and doctors have become infringers, subject to harsh monetary penalties. Myriad also does not permit researchers to tell the results of the tests to the patients involved, which makes them unable to meet their ethical obligations to the people in the research.

    More importantly, the gene patents are having negative impact on the patients. Many of the plaintiffs in the case are patients who could not afford the tests. The testing is not covered by a number of insurers. Also, patients are unable to get a secondary test from another lab to confirm their results before having to make difficult decisions. This violates the patient's right to bodily integrity and health and the idea that a person should be able to look at their own genome and see if there is a mutation without paying a license fee to someone else. In Ontario, Canada, where the patents are ignored, the testing costs about one third of the cost in the United States.

    There is also an increasing tendency to patent upstream inventions such as research tools instead of the products of research, as a way to make money on license agreements.

    Proponents of the gene patents argue that patent protection has been given to other innovations that are also derived from nature. Myriad argued that the patents are on the purified form of naturally occurring compounds. They argued that since the genes do not exist in nature in pure form, this satisfies the difference needed for the patent protection. Proponents of gene patents also argue that patents allow for the much needed investment. Researchers might be deterred from developing innovative tests and drugs if they can't protect the fruits of their labor. Myriad argued that substantial private investing went into their search on the BRCA genes since it takes about 5-15 years and $100 million to bring a new biologic drug to market. Myriad also pointed out that they are constantly improving the testing process and that they will do a second interpretation of the results.

    The District Court denied Myriad's argument and said patentable subject matter must be markedly different from a product of nature; there must be a transformation which leads to a distinctive name, character, or use. The court’s decision is based on the idea that there has been too much focus on the term "isolated" when the entire utility of the isolated gene lies in the fact that it is functionally indistinguishable from the natural version of the gene. This is because the purified form has the exact same information as the gene in the human body that the purified form can be used as a diagnostic tool. The court’s opinion concluded that that purification of a natural product, without more, is insufficient to transform the product into a patentable subject matter. The District Court recognized that this was a valuable scientific achievement for which Myriad deserves recognition, but said that that is not the same as being entitled to a patent. The case is now in the Court of Appeals.

    The outcome of this decision could have significant impact on the health care and biotechnology industry. One major factor is the patient's right to information and health care concerning their own body. With breast cancer being the second cause of death for women in the United States, this issue has impact over a major population. Another consideration is the biotechnology industry. Unlike the technology industry with lower development costs, biotechnology industry has huge regulatory and expense hurdles. This could make it impractical without the patent protection to recoup the cost needed. Additionally, while the decision of a District Court may not have strong value as precedent, if the Court of Appeals decides to uphold the District Court's decision, this will have an impact for all of the human gene patents. Companies that have filed their human gene patent applications, have already disclosed their innovation. If these patents become invalid, the innovation could become public knowledge without the patent applicants being rewarded for their innovation, and investments in the company would probably lose value.

    There are other possible solutions to address concerns of both sides of this question. For example, the current research exception is very narrow. If there was an expanded exception for research, the gene patents would not impair the progress of science. Combined with a limited patent which excludes research and diagnostic tests, or a mandated compulsive licensing, patent owners could continue to benefit from the patent protection while research and personal health rights would not be affected.

    Considering the far reaching consequences of the BRCA genes decision, it is especially critical to ensure that these patents truly serve the goal of the patent system. With a creative approach, it is possible to promote innovation in the science industry while preserving the personal right to access and make informed decisions over one's own body.

Cyberbullying, Schools, and the Constitution

2010-12-15T13:50:00.000-08:00

By Dale R.

     The suicides of two teenagers became the center of national attention in 2010. Fifteen year old Phobe Prince, an Irish immigrant in Massachusetts killed herself after several months of being the victim of bullying at school and on-line.. More recently, an eighteen year old college freshman named Tyler Clementi jumped off the George Washington bridge after his roommate used a computer camera to record Clementi engaged in sexual activity with another man, and posted the video on the Internet. Both suicides resulted in criminal charges being filed against the alleged bullies.

   The suicides turned media and national attention to the growing problem of cyberbullying. Researchers Sameer Hinjua and Justin W. Patchin at the Cyberbullying Research Center found that about 20.8 percent of students under eighteen were the victims of cyberbullies according to a study conducted in February 2010.

   This commentary will discuss possible school responses to cyberbullying and potential legal restrictions that might apply to those responses.

   The Supreme Court famously upheld the free speech rights of students in the 1968 case Tinker v. Des Moines Independent School District. In Tinker, school administrators punished several students for wearing black armbands to protest the Vietnam War. The Supreme Court via Justice Fortas dismissed the suspensions as violations of the First Amendment. The Court held that schools can only discipline speech if it is creates a "substantial disruption" to the daily operation of the school. Later Supreme Court cases placed limitations on Tinker's sweep. For example, in Fraser v. Bethel School District (1986), The Supreme Court upheld the suspension of a student who, at an assembly, gave a speech filled with sexual innuendo. Chief Justice Burger wrote that the suspension was justified because schools play a vital role in teaching proper civil discourse and could punish students for speech that is lewd and vulgar.

   Courts often have found that many instances of cyberbullying and other cyberconduct by student's violate the Tinker standard. For example, the Pennsylvania Supreme Court upheld a student expulsion for a website the student created even though the site was created off campus. In this case, J.S. v. Bethlehem School District, J.S., created an anonymous website attacking school administrators and teachers. He compared one teacher to the Nazis and asked for donations so he could hire a hitman to kill her. The Principal contacted the police and F.B.I. to discover the creator of the website and decided to expel J.S. after the F.B.I. stated they would not file criminal charges against him.

   The majority upheld the expulsion even though J.S. did not tell anyone at the school about the website and took it down voluntarily. The Court reasoned that Tinker's substantial disruption standard was met because the teacher-victim suffered emotional distress and needed to take a leave of absence because of the remarks.

   Many jurisdictions agree with the decision reached by the Pennsylvania court in J.S. and hold that schools need broad power to punish students for unacceptable conduct even if the actions occur off-campus and not during school hours.

   But in other jurisdictions, there are some courts that reach the opposite result. A federal court in California held that a suspension for cyberbullying violated the First Amendment and Due Process in J.C. v. Beverly Hills Unified School District. J.C. created a video mocking a fellow student named C.C. as a slut and posted the video on YouTube. The court noted that J.C., unlike J.S. in the case above, wanted other kids at school including the victim to see the video. J.C. received a two-day suspension. The court held that her suspension violated J.C.'s First Amendment rights because there was no substantial disruption to school activities and the kind of name-calling J.C. did on her video was the every day kind of bullying that school administrators can expect from students.

   J.C. also received support for her argument from California Education Code Section 48900(s). The court noted that the statute severely limits the scope of school jurisdiction and no reasonable person can interpret it to allow a school to punish a student for off-campus activities that were not connected to any school function or event.

   Many states are considering or have passed legislation to deal with cyberbullying. Oregon's law may represent a well-balanced approach. The Oregon law requires every school district set up a policy for cyberbullying but encourages schools to consult with students, parents, and teachers to create the policy. School districts are required to explicitly tell student's about the policy and the consequences of violations. The victims of cyberbullying maintain their rights to bring private lawsuits against their attackers but the statute itself expressly does not create a private right of action.

   My prediction is that the Prince and Clementi suicides will pressure states and school administrators to punish students for off-campus conduct even if it greatly expands school power in constitutionally questionable ways. This is troubling to me because it is probable that cyberbullies often attack their victims during school-hours as well non school hours and school administrators should focus their attention on in-school bullying to solve both problems. This desire to take action against cyber conduct may lead to harsh punishments for what might be considered protected speech in other contexts.

Right to Privacy on the Internet

2010-06-02T22:23:00.000-07:00

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

2010-06-02T21:57:00.000-07:00

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

2010-06-02T21:54:00.000-07:00

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

2010-06-02T21:50:00.000-07:00

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.

Conclusion

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

2010-06-02T21:38:00.000-07:00

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.

THE BASIC REQUISITE SHOWINGS

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.

UNNECESSARY ELEMENTS

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.

A FREE-FOR-ALL OF ASSOCIATION

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.

WHAT TO DO

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.”

BEYOND A BASIC BLURRING DESIGN: THE CONUNDRUM OF TRADE DRESS

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.

THE ELUSIVE TRADEDRESS DILUTION SURVEY: CASES WHICH ARE CLOSE

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.

CONCLUSION

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?

2010-06-02T21:33:00.000-07:00

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

2010-06-02T21:29:00.000-07:00

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.

Advantages and Limitations of Trade Dress Registration (Using iPod Nano Registration as an Example)

2010-05-31T21:43:00.000-07:00

By Robert X.

This blog posting discusses the pros and cons of trade dress registration using the iPod Nano as an actual example. The table below contains a drawing for the trade dress registration (registration # 3,365,816, top left) and five different brands of MP3 players found in the market. Can you tell which MP3 player the registered trade dress protects?

Drawing in trade dress registration:

(1):

(2):

(3):

(4):

(5):

The answer is that the registration is owned by Apple Inc. and is based on Apple’s 1st generation iPod Nano. The current and 5th generation of iPod Nano is # 3 in the table. If you cannot match the drawing to any of the players, it is because the design of the iPod Nano has changed from 1st generation to the current generation. (Note: the MP3 players are made by: (1) JWin, (2) Coby, (3) Apple, (4) Sandisk, (5) Coby.)

A photo of the 1st generation iPod Nano was used as part of the evidence in the trademark application file, shown below. Compared to the photo, the drawing does not show color, texture, polish, and build quality of the unit, and the symbols “MENU”, play, back, and forward are missing. The differences between the drawing and the photo are substantial, so is this a problem for the validity of the trade dress registration?

Trademark registration is based on the drawing. The first question is: what is the trade dress this registration is supposed to protect: is it the drawing, the actual iPod as depicted in the photo, or something in between? A common sense answer is that it cannot be something in between because it is undefined as to where in between. One may argue that because the registration is intended to protect the actual trade dress, the registration should protect the actual trade dress based on the photo. On the other hand, the actual photo is only shown in the application file. The examiner examined the application based on the drawing. Over, in a trademark search, only the drawing is shown on the trademark registration. Moreover, if more than one photos are used (for example, showing the iPod’s front, back, and side), which photo controls? So the argument seems to favor the drawing. In fact, this is the view expressed by the 6th Circuit in the dicta in Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539, 546 (6th Cir. 2005). The case dealt with a registration for the trade dress of an electric guitar where the drawing was 2-dimensional and showed only the contour of the guitar. The court stated: “[W]e do not believe that the two-dimensional drawing included in the LP Trademark should be construed to create a trademark on the entire guitar as depicted in photographs accompanying the trademark application (including the location and style of knobs, switches, and other hardware).” Id.
If the trade dress registration is based on the drawing, then there are questions as to the validity of the registration.

Lack of secondary meaning. In the trade dress application, the color picture of the iPod was used in the declarations filed to prove “acquired distinctiveness.” In each of the declaration, a customer or a sales person vouched that when they see a picture of an iPod, they could immediately recognize that it is an iPod made by Apple. Because the registration is based on the drawing instead of the photo, the proper question should be whether the declarants could recognize the drawing as an iPod. Because the declarations focused on the wrong question, the application failed to show that the drawing was recognized by an appreciable number of relevant consumers as an indication of product origin or sponsorship. Thus, the registration is invalid.
In contrast, traditional stylized (or design) trademark registration has much less of such problem because they are usually simple and distinctive even when reduced to a drawing. For example, the Nike swoosh, the Apple with a bite, and Mercedes Star are simple and distinctive. One can easily recognize these marks by looking a drawing without seeing a photo.

Distinctiveness or genericness. To be registrable, product designs always require a showing of acquired secondary meaning; thus, a product design needs to be not generic to be capable of acquiring secondary meaning. The features that remain in the iPod drawing include (1) the square shape of the screen, (2) the square shape of the entire unit, (3) the circular shape of the control dial, and (4) the arrangement of the square and the circle. The square shape of the screen was disclaimed in the amended application because the examiner thought it was functional. The square shape of the entire unit should have been disclaimed as well because the rectangular shape is generic to most mp3 players. The circular shape of the control is also generic because such dial controls have long been used in TV remote controls and are widely popular on portable electronics. Lastly, the arrangement of the square and the circle is likely generic because there are only two possible arrangements of the square screen and the circular control: the circle on the top, or at the bottom. Overall, the impression of the drawing is so generic that it is unlikely to acquire secondary meaning.
The drawing omitted the symbols “MENU”, play, back, and forward. This would have been a good idea if this were a patent because patent coverage is wider if there are fewer limitations in the claims. However, here it seems that removal of these symbols further renders the drawing unrecognizable as an iPod Nano.

Functionality. There are several factors in analyzing the functionality of a product design for trade dress protection. For brevity, we focus on the fundamental question of whether the exclusive use of the trademarked feature would put competitors at a significant non-reputation related disadvantage. Here we find many products are based on the same simple design, but each with variations (including Apple’s own product, which includes features not found in the drawing). Because the drawing contains only the basic design elements that the other designs necessarily build upon, the other manufactures are likely disadvantaged if they are not allowed to use the basic design elements. Thus, it is likely that the basic design in the drawing is functional.

Changing Product Design. Product designs change faster than traditional trademarks such as logos. For example, the shape of iPod Nano has undergone major changes twice. On the other hand, trade dress registrations must be given narrow interpretation because many products look alike. Thus, as product design changes, the trade dress registration based on the design will likely be abandoned. This is not a huge problem for trade dresses such as the gold fish shape for a cracker because there is no incentive to change. However, the design of an iPod is dictated by its function. For example, the demand for photo and video functions dictates that the current generation has a larger screen.

Advantages of registration despite validity concerns. Trademark registration is inexpensive, and the protection afforded by registration is on top of any trade dress right the owner already has. A federal registration on the Principal Register is prima facie evidence of validity, which becomes incontestable after five years. In case of litigation, registration shifts the burden to the defendant to prove that the mark is invalid. A trademark registration also serves as a nationwide notice to potential infringers. In this case, even if a potential infringer could successfully challenge the validity of the iPod trade dress registration, it cannot say it does not have notice. Then if Apple wins on the merit of the case based on its trade dress right in the iPod itself, the infringement would be more likely to be found to be willful because of the notice.

In applying for a trade dress registration, attention needs to be paid to the drawing to reflect the right amount of detail of the product to get the maximum level of protection. The registration can include a short description, so this should be used to capture additional features that cannot be expressed in the drawing. The registration can take one to two years to complete, so it is probably not worth the effort if the design is expected to change quickly, or if the designs of similar products have been changing every year. Used properly, trade dress registration is helpful to provide additional protection to the brand owner.

Apple v. Psystar (and the “Apple tax”): Legal Analysis

2010-05-31T21:40:00.000-07:00

by John S.

Apple Computers is perhaps the best in the business at garnishing favorable press. Everyone knows about the iPhone, iPod, and the new iPad from the commercial blitzkrieg surrounding Apple’s key note addresses. In addition to its key note addresses, Apple has also produced a line of popular commercials entitled “Mac v. PC”. These commercials, among other things, tell consumers about Apple’s Mac OS X: an alternative to windows. The commercials suggest that Mac OS X is superior to Windows because of its stability, ease of use, and invulnerability to viruses and malware. What is implied, however, but not immediately clear from watching the commercials is that Mac OS X is only available on Apple computers; if you want the advantages of Mac OS X, then you need to buy an Apple.

This can be a sore point for many consumers, because the starting price of the cheapest Apple computer is the $599 mini, which doesn’t even include a monitor. To get the full Mac OS X experience, a consumer needs to spend at least $1000 (which is about the price of Apple’s cheapest laptop). Computer geeks everywhere are more than happy to tell you that this high entry price is due to the “Apple tax”.

Without digging too deeply into the issue, here is a quick overview of what the “Apple tax” means: an Apple computer costs approximately 15% more than a PC with comparable hardware specifications; this is largely uncontested. This 15% price difference is called the “Apple tax”, and PC fans argue this is the price that Apple charges for the privilege of using a computer with Mac OS X (again assume this simple model for the sake of the argument, there are other points to be made as to aesthetic design, reliability, etc). This poses the question of whether it is fair for Apple to create an extremely competitive and desirable operating system while at the same time confining it to expensive Apple computers.

In April 2008, Psystar felt that this was not fair, and began selling computers with Mac OS X pre installed for the low price of $399. Since Mac OS X will not work on non-Apple hardware, Psystar had to a create a modified version of Mac OS X that bypassed this limitation, and then pre-installed the modified operating system on all of their computers. Predictably, Apple sued Psystar in July of 2008 for copyright infringement, trademark infringement, and software licensing violations seeking statutory damages and a permanent injunction. The resulting Apple v. Psystar case was widely followed by numerous internet communities because it asked, for the first time, not if Apple’s business model was fair, but if it was legal.

Analyzing the Case

The case begins with an analysis of the copyright infringement claims from Apple. To succeed on a copyright infringement claim, Apple had to prove that it was the owner of the copyright, and then prove that Psystar violated one of the exclusive rights granted by the copyright in question. Apple easily demonstrated its ownership of the copyright on Mac OS X, and then alleged that Psystar violated its exclusive reproduction, distribution and derivative works rights.

Reproduction Right

Apple claimed that Psystar violated its exclusive right to copy Mac OS X when Psystar made copies of Mac OS X and installed those copies on its non-Apple computers. Psystar admitted that they made copies of Mac OS X, but in its defense responded with a fair use defense and a statutory defense under §117(a). However, as the judge said in his decision, Psystar failed to properly plead §117(a), never mentioned the four fair use factors, and cited to irrelevant case law in its fair use defense. The court found that Psystar violated Apple’s exclusive reproduction right.

Distribution Right

Apple next contended that Psystar violated its distribution right by offering and selling Mac OS on Pystar computers to the public. Psystar again admitted to violating this right. In its defense, Psystar claimed protection under the First Sales Doctrine. The First Sales Doctrine provides that “the owner of a particular copy...lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of copyright owner, to sell or otherwise disposte of the possession of that copy”. Again the judge wasted little time in dispelling this defense. Psystar’s Mac OS X copies were clearly not protected by the First Sales Doctrine because Psystar’s copies were unauthorized, illegal copies, thus violating the “lawfully made under this title” requirement. The judge also felt the case law Psystar cited was not on point and irrelevant. For these two reasons, the court ruled that Psystar violated Apple’s distribution rights of Mac OS X.

Right to Create Derivative Works

Apple next alleged that Psystar violated its right to create derivative works of Mac OS X. The right to create a derivative work essentially means that Apple has the right to create a work based upon Mac OS X. Apple said Psystar violated this right when it created the modified version of Mac OS X to run on the Psystar hardware. Psystar contended that their modified version of Mac OS X didn’t violate this right because they didn’t modify Apple’s source code. The judge did not find Psystar’s argument persuasive, and pointed out that if one were to remove the files Psystar added to Mac OS X, the operating system would even be able to boot onto a computer. The judge further added that Psystar failed to supported its argument with valid case law, while Apple reinforced its arguments with relevant case law. Again Psystar was found to have infringed on Apple’s copyright.

Contributory Infringement

The last copyright infringement claim brought against Psystar was contributory infringement: “one infringes contributorily by intentionally inducing or encouraging direct infringement.” Psystar was accused of contributory infringement because it sold its unauthorized copies of Mac OS X to the public. Psystar didnt offer a defense on this issue.

Copyright Misuse Defense

However, although it lost on all the copyright infringement claims, Psystar still had a chance to win this case with a doctrine called “Copyright misuse”. Copyright misuse is a defense to copyright infringement which “forbids the use of a copyright to secure an exclusive right or limited monopoly not granted by the Copyright office and which is contrary to public policy.” A misused copyright is invalid and thus cannot be infringed upon.

Psystar argued that Apple’s attempt to use a copyright to tie Mac OS X to Apple hardware constituted copyright misuse because it was violative of public policy. This argument relies on the idea of the “Apple Tax” (discussed above): it is simply unfair to the public to tie a good operating system to extremely expensive hardware.

However, on this issue the law seems not to have supported Psystar’s argument. The court pointed to cases that constituted copyright misuse, and distinguished the copyright use by Apple from those cases. For example, the court first highlighted a 9th circuit decision that invalidated an AMA copyright on a coding system. AMA required contracting parties to ONLY use AMA”s coding system and nothing else. Apple never prohibited purchasers from using competitors products, it simply prevents users from using Mac OS X on competitors products. To be analogous to the AMA coding system, Apple would have had to force users to agree to never use Windows after purchasing Mac OS X. The court’s second illustrative case of copyright misuse was a 4th circuit decision. A company, Lasercomb, required purchasers of its software to agree to forego utilization of the creative ability of all its officers, directors, and employees in the area of of CAD/CAM die-making software (the kind of software that Lasercomb made) for a period of ninety-nine years. Apple’s copyright use was no where near as egregious as Lasercomb, Apple simply tries to control the use of its own software where as Lasercomb tried to control the business practices of its customers; an area clearly outside of Lasercomb’s copyright.

After analyzing the case law, the court felt that Apple’s use of its copyright on Mac OS X was distinguishable and therefore not violative of public policy. Psystar’s copyright misuse defense failed.

Wrap Up

After reading through the case a number of times I was left with a confusing question: why did Psystar let this case go to court? Psystar must have known they were violating Apple’s copyright in one way or another. Even though Pystar had defenses for some of the copyright infringement claims they completely conceded on contributory infringement. This leads me to believe that Psystar felt that they it might actually win on their Copyright Misuse defense. But, by looking at the AMA and Lasercomb precedents for Copyright Misuse (both of which Psystar cited in its response), it was fairly evident that both cases were distinguishable from Apple’s copyright use. So again, why would Psystar let this case go to court when it knew Pystar violated Apple’s copyright AND it should have seen that the Copyright Misuse cases did not support its position? It could have been a serious misjudgment by the attorneys involved or a strong conviction that a judge could be convinced that Apple’s business mode violated public policy and that the “Apple tax” was just plain wrong. Psystar gambled and lost.

Now, as a result of the Apple v. Psystar decision, there is no question that Apple’s copyright on Mac OS X is valid. Open source supporters around the world can continue to groan about the fairness of Apple’s restrictive software, but Apple v. Psystar makes it clear that tying Mac OS X to Apple hardware is legal.

Protectable Trademark or Symbol of Oppression?

2010-05-31T21:30:00.001-07:00

By Aman S.

For years, activist groups have scrutinized the Washington Redskins and other collegiate and professional teams that incorporate references to or images of American Indians in their mascots. American Indian activists have particularly taken issue with the use of the term ‘Redskins’ by the Washington D.C. National Football League team for its offensive nature as a reminder of an oppressive past. Although fans of the team insist the term actually pays homage to one of the first Redskins’ head coaches who happened to be of Sioux heritage, other activists say otherwise. "Redskin' is the most derogatory word you can use to describe a Native American," says Bill Means, founder of the International Indian Treaty Council. The term originates from the bounty-hunting days, when colonies and companies would pay settlers for killing American Indians. Scalps, called "redskins," were used as trophies and proof of killing because it was too difficult to carry the entire body, says Suzan Harjo, one of the plaintiffs in the suit. "In some cases male scalps could be bought for 80 cents, women for 60 [cents], and children for even less. This term describes a heinous act," Harjo adds. Newsweek

On November 16, 2009, the Supreme Court denied a petition for certiorari in Harjo v. Pro-Football, Inc. The suit, brought by Native American activists, contested the validity of the Washington Redskins’ trademark rights in their name and logo. The six trademarks being challenged included the image of the Native American on the helmet, the image of a spear, the script version of the word Redskins, and the name of the professional cheerleading squad, the Redskinettes. The team registered those trademarks in 1967. The plaintiffs in the case argued that the trademarks are invalid because they are “scandalous, disparaging and may bring Native Americans into disrepute or contempt.” The Lanham Act prohibits the registration of such trademarks (words, logos, symbols) that are proven to be disparaging to a group of people. 15 U.S.C. § 1052(a). Given the history behind the term ‘redskin’, the issue of whether or not the team’s trademark is disparaging would have lead to a contentious debate.

However, the Supreme Court did not address whether the trademark was disparaging but whether the activist group’s claim was barred by the doctrine of laches, a legal technicality similar to a statute of limitations. On appeal, The Washington Redskins successfully argued that the plaintiffs slept on their rights and waited too long to assert their claim. The Supreme Court affirmed the Appellate Court ruling and denied the plaintiffs’ petition for certiorari. The Lanham Act does, however, provide for the cancellation of a trademark “at any time,” when the challenged mark is found to be disparaging. 15 U.S.C. § 1064(3).

Interestingly, on April 2, 1999, the Trademark Trial and Appeal Board ruled in favor of Harjo and the American Indians on the issue of disparagement and ordered that the Redskins’ trademark registrations be canceled. Harjo, 50 U.S.P.Q. 2d 1705 (TTAB 1999). The Washington Redskins then appealed that decision to the U.S. District Court for the District of Columbia. The district court ruled that the activists’ claim was barred under the doctrine of laches.

Although Harjo and the other plaintiffs were defeated in their efforts to invalidate the Washington Redskins trademark, another group of American Indian plaintiffs will now be able to pursue their disparagement claim against the team. That suit, Blackhorse v Pro-Football, Inc., was put on hold pending the outcome of Harjo but is now expected to move forward. We’ll see how the Washington Redskins trademark protection holds up this time around. One important issue to pay attention to will be the millions of dollars that the Redskins have invested in and earned from their trademark since its registration in 1967. The team will have a strong argument that it has created its own Redskins brand through extensive marketing and commerce, which will be an important factor when the validity of the mark is analyzed by the court. Stay tuned.

Family Sues Phone Company Over Ad

2007-09-20T20:20:00.000-07:00

DALLAS (AP) — A Dallas family has sued Australia's Virgin Mobile phone company, claiming it caused their teenage daughter grief and humiliation by plastering her photo on billboards and Web site advertisements without consent.

The family of Alison Chang says Virgin Mobile grabbed the picture from Flickr, Yahoo Inc.'s popular photo-sharing Web site, and failed to credit by name the photographer who took the photo.

...

The picture of 16-year-old Chang flashing a peace sign was taken at an April church car wash by Alison's youth counselor, who posted it that day on his Flickr page, according to Alison's brother, Damon. In the ad, Virgin Mobile printed one of its campaign slogans, "Dump your pen friend," over Alison's picture.

The ad also says "Free text virgin to virgin" at the bottom.

...

People who post photos on Flickr are asked how they want to license their attribution. The person who posted the photo of Chang chose a sharing license from Creative Commons that allows others to reuse work such as photos without violating copyright laws, if they credit the photographer and say where the photo was taken.

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Poking fun at Paris leads to a lawsuit for Hallmark

2007-09-13T20:28:00.000-07:00

KANSAS CITY, Mo. — "That's hot." A lawsuit says that's Paris Hilton's remark.

...

Hallmark Cards says it was just dishing up satire with a greeting card spoofing "Paris' First Day as a Waitress." There's a photo of Hilton's face superimposed on a cartoon waitress telling her customer, "Don't touch that, it's hot." The customer asks, "What's hot?" and the waitress says, "That's hot."

...

Legally, the question isn't "What's hot?" but who owns the rights to "That's hot." A lawsuit against Hallmark, filed last week by the heiress, notes that the federal patent office in February issued to her a registered trademark on the term "That's hot" for its use in apparel.

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UC Berkeley, Stanford crack down on illegal downloading

2007-09-05T14:09:00.000-07:00

College students beware: Universities are ratcheting up punishments for illegally downloading music and video from your dorm rooms this school year in an effort to tamp down the popular pastime.

Stanford University and UC Berkeley are among schools that have added teeth to their policies to make students think twice about violating copyright laws. The hope, in part, is to keep students from being sued by Hollywood studios, which consider online piracy a threat to their business and are sparing little expense to track down people who illicitly share songs, television shows and films.

The penalties are an acknowledgment by the schools that they have been largely ineffective at keeping students from online file-sharing services like Limewire, Ares and Gnutella, where music by top artists can be swapped for free.

Stanford started a program on Saturday that financially hits students who go astray. If students fail to remove illegal digital downloads from their computers within 48 hours of being asked to do so, the university will sever their campus Internet connections, and they will have to pay $100 to get them restored.

A second offense will require a $500 reconnection fee. A third infraction will cost students $1,000.

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Google To Pay Nothing in Keyword 'Sucker's Bet'

2007-09-04T20:40:00.000-07:00

Google will not pay American Blind & Wallpaper Factory any fee after settling a suit over its Adwords trademark policy.

As long as Google does not change its trademark policy, American Blind & Wallpaper Factory will drop its suit, according to a copy of the agreement obtained by internetnews.com.

"We are very pleased with this outcome and to note that Google has not paid and will not be paying any settlement fee, our trademark policies remain unchanged, and we've made no special exceptions for American Blind," Google managing counsel Michael Kwun told internetnews.com.

...

Eric Goldman, director of Santa Clara University School of Law's High Tech Law Institute, thinks the now-former plaintiff fell for a "sucker bet" when it decided to sue over the fact that search queries on some of its trademarked terms returned searches from competitors and others.

"I think American Blinds' complete capitulation is the latest reminder to plaintiffs that it's often irrational to bring lawsuits over keywords," Goldman wrote on his Technology & Marketing Law blog.

"This case reiterates that keyword-related lawsuits can be a sucker's bet," Goldman wrote.

If that's true, the latest "sucker" to test the legality of Google AdWords's trademark policy might be American Airlines, which wants Google to stop selling keyword-based sponsored search results tied to any of its trademarks and is seeking punitive damages over the alleged infringement.

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Before Models Can Turn Around, Knockoffs Fly

2007-09-04T05:38:00.000-07:00

“If I see something on Style.com, all I have to do is e-mail the picture to my factory and say, ‘I want something similar, or a silhouette made just like this,’ ” Ms. Anand said. The factory, in Jaipur, India, can deliver stores a knockoff months before the designer version.

...

Ms. Anand’s company, Simonia Fashions, is one of hundreds that make less expensive clothes inspired by other designers’ runway looks, for trendy stores like Forever 21 and retail behemoths like Macy’s and Bloomingdale’s.

A debate is raging in the American fashion industry over such designs. Copying, which has always existed in fashion, has become so pervasive in the Internet era it is now the No. 1 priority of the Council of Fashion Designers of America, which is lobbying Congress to extend copyright protection to clothing. Nine senators introduced a bill last month to support the designers. An expert working with the designers’ trade group estimates that knockoffs represent a minimum of 5 percent of the $181 billion American apparel market.

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Virtual sex sparks real lawsuit

2007-08-13T05:45:00.000-07:00

TAMPA, Fla. - Kevin Alderman didn't bring sex to "Second Life." He just made it better.

The 46-year-old entrepreneur recognized four years ago that people would pay to equip their online selves - which start out with the smooth anatomy of a Barbie or Ken doll - with realistic genitalia and even more to add some sexy moves.

Business at Eros LLC has been brisk. One of his creations, the SexGen Platinum, has gotten so popular that he's now had to hire lawyers to track down the flesh-and-blood person behind the online identity, or avatar, that he says illegally copied and sold it.

The $45 SexGen animates amorous avatars in erotic positions. It is software code, written in the scripting language of "Second Life" and placed in virtual furniture and other objects. Avatars click on the object and choose from a menu of animated sex acts.

Alderman filed a civil lawsuit in U.S. District Court in Tampa, Fla., last month alleging an avatar named "Volkov Catteneo" broke the program's copy protection and sold unauthorized copies. Alderman, who runs his business from home in a Tampa suburb, allows users to transfer his products, but prohibits copying.

"We confronted him about it and his basic response was, 'What are you going to do? Sue me?"' Alderman said. "I guess the mentality is that because you're an avatar ... that you are untouchable. The purpose of this suit is not only to protect our income and our product, but also to show, yes, you can be prosecuted and brought to justice."

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WhoseTube? Viacom Sues Google Over Video Clips

2007-03-31T23:50:00.000-07:00

Viacom, the parent company of MTV, Nickelodeon and Comedy Central, filed a wide-ranging lawsuit against Google on Tuesday, accusing it of “massive copyright infringement.” Viacom said it was seeking more than $1 billion in damages and an injunction prohibiting Google and YouTube from committing further infringement.

Citing the $1.65 billion that Google paid for YouTube, the complaint said that “YouTube deliberately built up a library of infringing works to draw traffic to the YouTube site, enabling it to gain a commanding market share, earn significant revenues and increase its enterprise value.”

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The Name Game (Plus Typos)

2007-03-31T21:35:00.000-07:00

THE practice of “cybersquatting” has evolved from the days when people bought a trademarked Internet domain name and hoped to squeeze the trademark owner for some cash. The law is pretty clear on that: you can’t do it.

But now, companies like Microsoft are filing lawsuits against outfits they say engage in a more complicated but potentially much more lucrative practice called “domain tasting” or “domain swiping.”

Here, domains are purchased, and Web pages festooned with advertisements built behind them to see how much traffic the U.R.L.’s attract. If it is not much, the domains are returned to the registrar within five days for a full refund. If the traffic is adequate, the domain is kept, and the domain owner collects money every time someone clicks on one of the ads.

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Agency Rejects .xxx Suffixes for Sex-Related Sites on Internet

2007-03-31T21:28:00.000-07:00

A longstanding proposal to create a specialized .xxx suffix for sex-related entertainment Web sites received a final rejection yesterday by the agency governing the Internet address system.
The plan, first introduced seven years ago by ICM Registry, was rejected by a vote of 9 to 5 by the Internet Corporation for Assigned Names and Numbers, or Icann, at a meeting in Lisbon.

Board members who voted against the plan expressed concern that it would compel Icann to become involved in regulating content, among other issues.

Some who objected to the proposal included companies in the sex-related entertainment industry as well as religious groups. The entertainment executives raised fears that use of the domain, although voluntary, could open the way for governments to isolate sex-oriented Web sites into a single part of the Internet.

Others warned that the move would create a bonanza for ICM Registry, since companies with existing Web sites would be compelled to buy .xxx domain names to prevent someone else from creating sites using their company names.

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Carol Burnett files $2M copyright infringement suit over portrayal of her Charwoman character

2007-03-29T07:14:00.000-07:00

LOS ANGELES -- Carol Burnett has filed a $2 million copyright infringement lawsuit against 20th Century Fox, claiming her cleaning woman character was portrayed on the animated series ”Family Guy.”

Besides copyright infringement, Burnett alleges 20th Century Fox violated her publicity rights.

”’Family Guy,’ like ’The Carol Burnett Show,’ is famous for its pop culture parodies and satirical jabs at celebrities. We are surprised that Ms. Burnett, who has made a career of spoofing others on television, would go so far as to sue ’Family Guy’ for a simple bit of comedy,” said 20th Century Fox Television spokesman Chris Alexander.

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Community To Fight Martha Stewart's 'Katonah' Trademark

2007-03-27T13:45:00.000-07:00

A group of Martha Stewart's Westchester County neighbors has moved a step closer to opposing her efforts to trademark the "Katonah" name.

The Katonah Village Improvement Society voted on Monday to take whatever action it deems necessary to keep Martha Stewart Living Omnimedia's from using the Katonah name for lines of furniture, paints and other homemaking products.

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Judge Rules Against Vonage on Patents

2007-03-23T07:17:00.000-07:00

Alexandria, Va. (AP) - A federal judge on Friday ordered a permanent injunction against Internet phone carrier Vonage for use of rival Verizon Communications Inc.'s patents. But the injunction, which could potentially cause major disruptions to the service provided by Vonage to its 2 million customers, will not take effect for at least two weeks. U.S. District Judge Claude Hilton said he will wait two weeks to officially enter the injunction while he considers Vonage's request for an extended stay.

Verizon sued Vonage last year for infringing on five patents it said makes the Internet telephone service network functional. On March 8, the eight-person jury found that Vonage had infringed on three of them. And it ruled that Vonage must pay $58 million, plus possible future royalties, to Verizon. That was far less than the $197 million that Verizon had requested, and was even slightly less than what Vonage had suggested would be fair if it were found liable.

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Cybersquatting Remains on the Rise

2007-03-12T20:41:00.000-07:00

The number of cybersquatting disputes filed with the World Intellectual Property Organization (WIPO) in 2006 increased by 25 percent as compared to 2005. In a related development, the evolution of the domain name registration system is causing growing concern for trademark owners, in particular some of the effects of the use of computer software to automatically register expired domain names and their "parking" on pay-per-click portal sites, the option to register names free-of-charge for a five-day "tasting" period, the proliferation of new registrars, and the establishment of new generic Top Level Domains (gTLDs). The combined result of these developments is to create greater opportunities for the mass, often anonymous, registration of domain names without specific consideration of third-party intellectual property rights.

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NFL marketers want 'Big Game' trademark

2007-03-01T13:57:00.000-08:00

The National Football League is so popular, it can get away with applying Roman numerals to its championship game. It is a corporate colossus that vigilantly protects its trademarked terms, like the words "Super Bowl,'' "Super Sunday," "NFL'' and the names of teams.

Each year it sends out cease-and-desist letters to businesses and advertising firms demanding that such terms not be used for commercial purposes.

But now the NFL is pushing into Cal and Stanford territory.

The NFL wants to trademark the phrase "The Big Game."

But the Big Game also has a very specific application for Stanford University and UC Berkeley, whose annual football game dates back to 1892. It has been known as the Big Game since 1902, according to San Francisco author Ron Fimrite, who is writing a history of Cal football.

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Cisco Sues Apple for Trademark Infringement

2007-01-10T19:12:00.000-08:00

SAN JOSE, Calif., January 10, 2007 - Cisco® today announced that it has filed a lawsuit in the United States District Court for the Northern District of California against Apple, Inc., seeking to prevent Apple from infringing upon and deliberately copying and using Cisco's registered iPhone trademark.

Cisco obtained the iPhone trademark in 2000 after completing the acquisition of Infogear, which previously owned the mark and sold iPhone products for several years. Infogear's original filing for the trademark dates to March 20, 1996. Linksys, a division of Cisco, has been shipping a new family of iPhone products since early last year. On Dec. 18, Linksys expanded the iPhone® family with additional products.

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About Us

2007-01-01T21:50:00.000-08:00

You are visiting the website of the Internet and Intellectual Property Justice Clinic. The Clinic is a University of San Francisco School of Law program, which provides legal assistance to parties who require help with intellectual property matters.

The Clinic is currently available to help parties in domain name disputes, including those under ICANN UDRP dispute resolution proceedings. The Clinic is also available to provide assistance to parties with copyright infringement matters and copyright registration, as well as other trademark and copyright work that the faculty supervisors feel is appropriate.

Legal work will be performed by students under the direction of faculty members. Professor Robert Talbot, who has been directing clinics at the School of Law for many years, supervises the students. Internationally renowned intellectual property attorney and author Professor J. Thomas McCarthy serves as senior executive adviser to the Clinic. Students working for the Clinic are upper-division law students specializing in intellectual property.

Legal assistance will be supplied free of charge, although any filing or court costs will be paid by the parties. The extent of representation, if any, will be determined by the Clinic on a case by case basis.

Contact us: clinic@internetjustice.org