Attorney Evan Brown

April 15, 2010 Cybersquatting, Trademarks, Uncategorized

UDRP loser did not commit fraud on USPTO by saying it was exclusive user of mark

Salu, Inc. v. Original Skin Store, Slip Copy, 2010 WL 1444617 (E.D.Cal. April 12, 2010)

This is kind of a wonky trademark/domain name case. So if that’s not in your wheelhouse, don’t strain yourself.

Plaintiff sued defendant for infringement of plaintiff’s registered trademark. Defendant moved for summary judgment, claiming that the asserted trademark registration was obtained by fraud on the United States Patent and Trademark Office. Specifically, defendant argued that plaintiff misrepresented when it told the USPTO that its SKINSTORE mark had “acquired distinctiveness” (i.e., was not merely descriptive of the goods and servcies) by means of “substantially exclusive” use in commerce.

The court denied the motion for summary judgment.

Defendant had argued that plaintiff committed fraud by saying its use was exclusive. It pointed to a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) that the plaintiff had brought against the user of the domain name eskinstore.com. The WIPO panel in that case refused to find a clear case of cybersquatting.

In this case, defendant argued that plaintiff’s earlier unsuccessful UDRP challenge to a similar mark showed there were third parties using the mark and therefore the claim of exclusivity was fraudulent.

The court rejected this argument, noting that the plaintiff had undertaken significant efforts to protect its exclusive rights in the trademark. (It had sent out an astounding 300 cease and desist letters in the past couple of years alone!)

Moreover, and more importantly, the court noted that the WIPO panel hearing the UDRP complaint specifically declined to determine cybersquatting had occurred, finding it to be a question of infringement better addressed by the United States courts.

April 12, 2010 Uncategorized

Wife posts pics with boyfriend on MySpace, loses child custody

And you should have heard what the judge said in open court!

Lipps v. Lipps, 2010 Ark. App. 295, 2010 WL 1379803 (Ark. App. April 7, 2010). [Read the opinion]

This is one of those cases that’d do well as a movie on Lifetime Television for Women. Unlike other cases I talk about on this blog, this one only kind of deals with the internet Here the husband (an Iraq war veteran) saw pictures on MySpace of his wife in bed with another man, so he filed for divorce and sought child custody.

What’s worth paying attention to in this case is the “disparaging and intemperate remarks” made in open court by the judge.

At a hearing where the judge entered a temporary order granting joint custody of the couples’ infant son, the court admonished the wife/mother, characterizing her situation as “a nightmare every parent faces . . . when you have got a child that acts like a slut, quite frankly, a slut.”

Later in the case the judge granted sole custody to the husband. The wife sought review with the Arkansas appellate court. On appeal, that court affirmed the trial court’s order on custody.

The wife had argued that the trial court judge was biased, and asked for a new trial with an impartial judge. Although the appellate court was “deeply troubled” by judge’s rude remarks, it held that because the wife had not raised that argument in the trial court, and had not asked the judge to recuse himself, the court could not consider that question on appeal.

So the court affirmed the foul-mouthed judge.

The appellate opinion is embedded below:

2010-04-07_lipps_v_lipps

March 31, 2010 Electronic Discovery, Employment, Litigation, Privacy

Emails sent through Yahoo account using work computer protected under attorney-client privilege

The New Jersey supreme court has held that emails an employee sent to her lawyer using her company-issued computer and a personal Yahoo account are protected by the attorney-client privilege.

Stengart v. Loving Care Agency, Inc., — A.2d —, 2010 WL 1189458 (N.J. March 30, 2010)

The New Jersey courts have a reputation of being protective of “informational privacy.” See, e.g., State v. Reid. A recent decision concerning employee privacy in personal emails adds to that reputation.

Plaintiff-employee used a work-issued laptop to access her Yahoo email account, through which she communicated with her lawyer about her lawsuit against the employer. During the discovery phase of that employment discrimination lawsuit, the employer used computer forensics to recover those Yahoo emails that had been copied to the computer’s temporary internet files folder.

Counsel for plaintiff demanded that the employer turn over the recovered emails, arguing that the communications were protected by the attorney-client privilege. When the employer agreed to turn them over but not discontinue use of the information garnered from them, plaintiff sought relief from the court.

The trial court denied relief and plaintiff sought review with the appellate court. That court reversed, and the employer sought review with the state’s supreme court. The supreme court upheld the appellate court’s decision, holding that the employee had a reasonable expectation of privacy in the communications.

The employer relied on a broadly-written company policy through which the employer reserved the right to review and access “all matters on the company’s media systems and services at any time.” But the court rejected those arguments.

Framework for the analysis

The supreme court considered two aspects in its analysis: (1) the adequacy of the notice provided by the company policy, and (2) the important public policy concerns raised by the attorney-client privilege.

As for the adequacy of the notice provided by the policy, the court found that because the policy did not address the use of password-protected personal email accounts, the policy was “not entirely clear.” As for the importance of the attorney-client privilege, the court lavished it with almost-sacred verbal accoutrements, calling it a “venerable privilege . . . enshrined in history and practice.”

“Intrusion upon seclusion” as source for standard

The court noted that the analysis for a reasonable expectation of privacy in dealings between two private parties was a bit different than the analysis in a Fourth Amendment case. The common law source for the standard in this context is with the tort of “intrusion upon seclusion.” Under New Jersey law, that tort is committed when one intentionally intrudes, physically or otherwise, upon the solitude or seclusion of another or his private affairs or concerns, in a manner that would be highly offensive to a reasonable person. (This language comes from the Restatement (Second) of Torts § 652B.)

In this situation, the court found that plaintiff had both a subjective and objective expectation that the messages would be private. Supporting her subjective belief was the fact that she used a private email account that was password protected, instead of her work email account. And she did not store her password on the computer. Her belief was objectively reasonable given the absence of any discussion about private email accounts in the company policy.

Plaintiff’s expectation of privacy was also bolstered by the fact that the email messages were not illegal, nor would they impact the performance of the employer’s computer system. And they bore all the “hallmarks” of attorney-client communications.

For all these reasons, not the least of which the priority of the courts “to keep private the very type of conversations that took place here,” the court found that the conversations were protected by the attorney-client privilege.

March 23, 2010 Litigation

Kentucky Supreme Court: gambling domain names did not have standing

Com. ex rel. Brown v. Interactive Media Entertainment and Gaming Ass’n, Inc., — S.W.3d —, 2010 WL 997104 (Ky. March 18, 2010)

Back in 2008 the Commonwealth of Kentucky took an extraordinary step in its battle against online gambling. It filed an action in state court seeking to take over 141 domain names that the Commonwealth believed were used for illegal gambling sites. The trial court ordered forfeiture of the domain names.

Kentucky

Lawyers arguing against the forfeiture of the domain names sought a “writ of prohibition” from the appellate court, asking that court to prevent the forfeiture of the domain names. The lawyers appearing before the appellate court fell into two categories: those purporting to actually represent certain domain names (not the domain names’ owners) and those representing gambling trade associations whose members purportedly included some of the registrants of the affected domain names.

The appellate court granted the writ of prohibition. The Commonwealth sought review with the state supreme court. The supreme court dismissed the writ because those arguing against it lacked standing.

Who’s interest was at stake?

The court noted that only a party with a “judicially recognized interest” could challenge the forfeiture of the domain names. The court rejected the notion that the domain names could represent themselves:

An internet domain name does not have an interest in itself any more than a piece of land is interested in its own use. Just as with real property, a domain name cannot own itself; it must be owned by a person or legally recognized entity.

As for the gambling associations, the court held that there could be no “associational standing” because none of the associations would identify any of their members. Associational standing is when an organization (say, for example, the NAACP or a labor union) files suit on behalf of its members. One of the fundamental requirements of associational standing a showing that members of the association would have the right to sue in their individual capacities. Since there was no evidence as to whose interests the associations represented, there was no basis to conclude that the associations’ members would have standing to sue in their own right.

So the court sent the matter back down to the appellate court with orders to vacate the writ of prohibition. But the supreme court also hinted that those affected by the forfeiture could get another bite at the apple: “If a party that can properly establish standing comes forward, the writ petition giving rise to these proceedings could be re-filed with the Court of Appeals.” One would think that at least one brave soul will step forward. Some in the industry seem to hope so.

Other accounts of this story:

Domain Names Can’t Defend Themselves (Freedom to Tinker)
Kentucky Supreme Court Reverses Ruling Challenging Domain Name Seizures, Tells Registrants to Try Again (EFF)
Kentucky Supreme Court Rules Against Domain Owners (Name Talent)

March 19, 2010 Anonymity

Anonymous sender of beer pong email gets to remain unknown

A.Z. v. Doe, 2010 WL 816647 (N.J. Super. App. Div. March 8, 2010)

What's not to love about beer pong?

Even if you do just a cursory review of cases that deal with online anonymity, you are bound to come across a 2001 New Jersey case called Dendrite v. Doe. That case sets out a four part analysis a court should undertake when a defamation plaintiff seeks an order to unmask an Internet user who posted the offending content anonymously.

Under Dendrite, a court that is asked by a defamation plaintiff to unmask an anonymous speaker must:

require the plaintiff to try to notify the unknown Doe speaker that he or she is the subject the unmasking efforts, and give him or her a reasonable opportunity to oppose the application;
require the plaintiff to identify and set forth the exact statements purportedly made by each anonymous poster that plaintiff alleges constitutes actionable speech;
require the plaintiff to produce sufficient evidence supporting each element of its cause of action, on a prima facie basis; and
balance the defendant’s First Amendment right of anonymous free speech against the strength of the prima facie case presented and the necessity for the disclosure.

The state appellate court in New Jersey recently had occasion to revisit the Dendrite analysis in a case called A.Z. v. Doe. It found that a defamation plaintiff was not entitled to learn the identity of a person who anonymously sent an email that had content and attached photos that allegedly defamed plaintiff. The court found that plaintiff failed to meet the third factor in the Dendrite analysis, i.e., failed to present a prima facie case of defamation.

Beer pong is not for honor students

Someone took pictures of plaintiff playing beer pong at a party and posted them on Facebook. That’s all in good fun, except that plaintiff was a minor and belonged to her high school’s “Cool Kids & Heroes” program. Kids get into that program by making good grades and promising to refrain from bad behavior.

A purported “concerned parent” set up a Gmail account (anonymously) and sent an email to the faculty advisor for the Cool Kids & Heroes program. The email had photos attached showing several of the program’s kids doing things they shouldn’t be doing like drinking and smoking pot. In all fairness it should be noted that the picture of plaintiff only showed her playing beer pong — it didn’t actually show her drinking or smoking, though there were cups and beer cans on the table in front of her.

The faculty advisor forwarded the email and images on to school administrators, and the school also notified the police. But law enforcement apparently took no further action.

Plaintiff filed a defamation lawsuit against the anonymous sender of the email and sent a subpoena to Google to find out the IP address from which the message was sent. Google notified plaintiff that it came from an Optimum Online IP address. So plaintiff sent a subpoena to Optimum Online for the identifying information. The ISP notified its customer Doe, and Doe moved to quash the subpoena.

The trial court granted the motion to quash, concluding that plaintiff failed to meet the fourth Dendrite factor (dealing with the First Amendment). Plaintiff sought review with the appellate court, which affirmed but on different grounds.

Why the defamation claim failed

The appellate court agreed that the motion to quash should be granted (that is, that the anonymous sender of the email message should not be identified). But the appellate court’s reasoning differed. It didn’t even need to get to the fourth Dendrite factor, because it held that plaintiff didn’t meet the third factor (didn’t present a prima facie defamation case).

The big problem with plaintiff’s defamation claim came from the requirement that the statement alleged to be defamatory (in this case, that plaintiff had broken the law) needed to be “false.” The court found five reasons why this element had not been met:

Plaintiff submitted no evidence (like an affidavit) that she wasn’t drinking the night the photo was taken.
Plaintiff submitted no evidence that law enforcement actually concluded to take no further action. Plaintiff argued their lack of action showed she didn’t break the law.
Even if there was evidence that law enforcement decided to take no action, that would not have been relevant to the truth of the question of whether plaintiff was drinking. That would only go to show that law enforcement decided not to do anything.
The photograph attached to the email showing plaintiff playing beer pong would lead one to conclude that she was in “possession” of the alcohol on the table, and that was a violation of the law.
Doe submitted other photos from Facebook in connection with the motion to quash which showed plaintiff actually holding a beer.

So the court never got to the question of the First Amendment and how it related to the anonymous email sender’s right to speak. The court concluded that because plaintiff had not put forth a prima facie case of defamation, the anonymous speaker should stay unknown.

Beer pong photo courtesy Flickr user elisfanclub under this Creative Commons license.

Manganese dendrites in limestone photo courtesy Flickr user Arenamontanus under this Creative Commons license.

March 3, 2010 Uncategorized

Supreme Court clarifies basis for why copyright suits over unregistered works should be dismissed

: Image via Wikipedia

Supreme Court overturns Second Circuit, holding that a copyright plaintiff’s failure to register the work before filing suit does not deprive the court of subject matter jurisdiction.

Reed Elsevier v. Muchnick, Slip. Op., 559 U.S. ___ (March 2, 2010) [View opinion here]

“Subject matter jurisdiction” refers to a court’s power to hear the matter before it. The Constitution sets out the general contours for the federal courts’ jurisdiction, and Congress enacts statutes that give more detail to this set of powers. Particular statutes can define whether the federal courts have subject matter jurisdiction over certain types of cases. For example, Congress has declared that the federal courts have exclusive jurisdiction over copyright cases (See 28 U.S.C. 1338).

If a court does not have subject matter jurisdiction over the type of matter before it, it has no power to adjudicate the case. So the question of whether subject matter jurisdiction exists is critical.

The Supreme Court just decided a case that deals with the scope of subject matter jurisdiction in copyright cases, and clarifies a notion that has been the subject of some uncertainty. The question the court decided was whether a federal court has subject matter jurisdiction over a copyright case when a work at issue is not the subject of a copyright registration.

Section 411(a) of the Copyright Act (at 17 U.S.C. 411(a)) provides, among other things, that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.”

Some courts have held, and many litigants have argued, that this provision of Section 411 is a “jurisdictional prerequisite.” Said another way, some have argued that if the copyright plaintiff files suit without having secured a registration, the court is without subject matter jurisdiction over the case. In the case of Reed Elsevier, Inc. v. Muchnick, however, the Supreme Court held that Section 411 does not deprive the court of subject matter jurisdiction, but instead merely provides a “claim-processing rule,” akin to an element of the case.

The lower court proceedings

A group of freelance writers filed a class action copyright infringement case in federal court in New York. They settled the case and the judge approved the settlement. Some of the plaintiffs objected to the settlement on procedural grounds, and when the court entered final judgment, those objecting plaintiffs appealed to the Second Circuit. On its own motion, the Second Circuit raised the question of whether it had subject matter jurisdiction over the case, as some of the plaintiffs in the class had unregistered works.

The case took on a peculiar procedural aspect — neither side in the dispute argued that the federal court was without subject matter jurisdiction, but the Second Circuit decided anyway that it did not. (After all, subject matter jurisdiction pertains to the power of the court, not the rights of the parties, so parties cannot waive the absence of subject matter jurisdiction.) Concluding that it didn’t have jurisdiction, the Second Circuit reversed the approval of the settlement.

The defendants in the underlying case sought review with the Supreme Court, and the high court took on the case. It reversed the Second Circuit, holding that the court did indeed have jurisdiction, even though some of the plaintiffs’ copyrights at issue were unregistered.

The court’s holding

It is worth noting that this case does not address the bothersome question of whether Section 411 requires that a copyright plaintiff actually have a registration certificate in hand before filing the complaint, or whether he or she simply needs to have the application on file. The case also does not stand for the proposition that one can pursue copyright infringement litigation without having registered his or her copyright. A plaintiff without a registration will still lose, just for different reasons.

Justice Thomas wrote the majority opinion. He began the analysis by noting the court’s recent efforts to curtail “drive-by jurisdictional rulings,” which can “miss the critical differences between true jurisdictional conditions and nonjurisdictional limitations on causes of action.” It was with this eye toward careful analysis that the court looked to the present question.

The court reviewed the general approach it set out in the case of Arbaugh v. Y&H Corp., 546 U.S. 500 (2006) for distinguishing jurisdictional conditions from claim-processing requirements or elements of a claim, stating in part that “when Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as nonjurisdictional in character.” Said another way, if a statute somehow limits the way a case can be brought before federal court but doesn’t come out and say that it’s a limitation on subject matter jurisdiction, it should not be read as limiting jurisdiction. In this way, the court’s approach is to broaden federal jurisdiction.

In this case, the court found that Section 411(a) did not “clearly state” that the registration requirement is jurisdictional. Moreover, the section of federal law that provides for federal court jurisdiction in general (28 U.S.C. 1331) and federal jurisdiction over copyright claims (28 U.S.C. 1338) says nothing about a requirement that there be a registration before the court has subject matter jurisdiction. Furthermore, Section 411 provides on its face certain exceptions for the registration requirement (e.g., no registration is required for non-United States works). The court observed that “it would be at least unusual to ascribe jurisdictional signifcance to a condition subject to these sorts of exceptions.”

What does it mean?

The case actually addresses a rather nuanced point of copyright law. And the effect of the holding will not change the end results of cases brought in the future with the same facts — after all, a non-registering plaintiff will still lose either way, now just for a different reason. Motions to dismiss copyright complaints alleging infringement of unregistered works will clearly fall under Fed. R. Civ. P. 12(b)(6) (failure to state a claim) and not 12(b)(1) (lack of jurisdiction).

But the question of a federal court’s jurisdiction is of significant import, regardless of how nuanced the question is, or the lack of difference in practical effect. The question of whether a court should dismiss a case because it doesn’t have the power to hear it, as compared to dismissing it because the plaintiff has not jumped through the appropriate hoops, is an important one.

High Court Revives Freelancer Settlement (online.wsj.com)
Justices Reinstate Settlement With Freelance Writers (nytimes.com)

February 28, 2010 Defamation, Section 230

Forwarder of defamatory email protected under Section 230

Hung Tan Phan v. Lang Van Pham, — Cal.Rptr.3d —, 2010 WL 658244 (Cal.App. 4 Dist. Feb. 25, 2010)

Defendant, a veteran of the Vietnamese military, forwarded an email to some other Vietmamese veterans which apparently defamed another veteran. He didn’t just forward the email, though. He added some commentary at the beginning, which said (translated from the original Vietnamese):

Everything will come out to the daylight, I invite you and our classmates to read the following comments of Senior Duc (Duc Xuan Nguyen) President of the Federation of Associations of the Republic of Vietnam Navy and Merchant Marine.

The person who was the subject of the defamatory email sued the forwarder. The trial court dismissed the case, holding that the defendant was immune from liability under the Communications Decency Act at 47 U.S.C. 230.

That section gives immunity from suit to users and providers of interactive computer services who are distributing information provided by a third party. More than three years ago, in Barrett v. Rosenthal, the California Supreme Court held that Section 230 immunity applies to one who further distributes the contents of a defamatory email message.

The plaintiff sought review with the California Court of Appeal. The court affirmed.

The court looked to the Roommates.com case, to which it attributed a test that requires a defendant’s own acts to materially contribute to the illegality of the internet message for Section 230 immunity to be lost.

In this case, the court held that the introductory remarks did not meet the material contribution test articulated in Roommates.com. The court found that “[a]ll [the defendant] said was: The truth will come out in the end. What will be will be. Whatever.”

Email ribbon photo courtesy Flickr user Mzelle Biscotte under this Creative Commons License

January 28, 2010 Trademarks

File extensions cannot be trademarks

Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 WL 5218009 (N.D. Cal. December 31, 2009)

One of the issues in the case of Autodesk, Inc. v. Dassault Systemes Solidworks was whether Autodesk could claim trademark rights and the letters “DWG”. The .dwg (“drawing”) file extension is the native file format for Autodesk’s flagship product AutoCAD.

File types

Plaintiff Autodesk moved for summary judgment on the trademark issue. The defendant pointed out that the trademark laws do not permit one to claim exclusive rights in trademarks that are merely functional.

During the hearing on the motion, the court asked Autodesk’s counsel to disavow any claim to trademark protection for the letters “DWG” when used for the file extension. Counsel did disavow such claim but held onto Autodesk’s argument that the letters could serve as a word mark to be used on packaging and advertising and marketing materials.

The Court agreed and sided with Autodesk and included in its order language that expressly stated “anyone in the world is free to use .dwg as a file extension as far as Autodesk is concerned.”

Autodesk filed a motion and asked the court to reconsider its holding, arguing that what Autodesk really meant when it disavowed the claim of exclusive rights was that anyone else could use the extension so long as the use was being made with Autodesk’s proprietary technology, or was interoperable with that technology.

The court rejected this argument holding:

File extensions are functional, and functional uses cannot be trademarked. To rule otherwise would invite a clog on commerce, given the millions of software applications. The limited universe of extension permutations would soon be encumbered with claimants and squatters purporting to own exclusive rights to file extensions.

The court went on to say there would be no consumer confusion because,

[T]he primary purpose of a file extension is to tell the computer the type of the file it is handling. A computer is not a consumer. Its “reading” of the file extension is not in connection with a commercial transaction. It doesn’t care who made the file format it is trying to read.

This isn’t the first time the question of whether machine perception of information has been held to not give rise to trademark protection. An analogous situation is the 1-800 Contacts v. WhenU decision in which the Second Circuit held that WhenU did not “use” another company’s trademarks within the meaning of the Lanham Act when it included trademarked terms in an unpublished directory that triggered delivery of contextually relevant advertising.

January 26, 2010 Computer Crime, Contracts, Litigation

Wait just a second . . . isn’t online gambling illegal?

Wong v. Partygaming Ltd., — F.3d —, 2009 WL 4893955 (6th Cir. December 21, 2009)

The Sixth Circuit’s recent opinion in the case of Wong v. Partygaming is interesting if you’re a civil procedure wonk and care about things like which law applies to determine the enforceability of forum selection clauses in website terms and conditions and what factors a court should consider when dismissing a case on the basis of forum non conveniens.

bling

The most intriguing part of the case, however, comes from Judge Merritt’s concurrence, in which he addresses the significance of the fact that the terms of service for an online gambling website are probably illegal.

The majority opinion painstakingly analyzed whether the district court abused its discretion in dismissing, of its own will (or “sua sponte” as stodgy lawyers like to say), the plaintiffs’ suit against an online gambling website. The plaintiffs had alleged that the site fraudulently misrepresented that there was no collusion among other online gamblers, and that the site did not target people with gambling problems. The website terms of service contained a forum selection clause naming Gibraltar as the jurisdiction in which disputes were to be heard.

The appellate court affirmed the lower court’s decision that the case should be dismissed and that Gibraltar (which follows English law) would be a suitable and not-too-inconvenient forum. But the majority opinion said nothing about the legality of online gaming.

That’s where Judge Merritt picked up in the concurrence. He agreed that the matter should have been dismissed in favor of it being heard in Gibraltar — that’s why he concurred and did not dissent. His reasoning differed from that of the majority.

View Larger Map

Judge Merritt observed that the plaintiffs’ logic was inconsistent. They had argued that Ohio law should apply to the terms of service. But under Ohio law (and federal statutes like RICO), the subject matter of the contract would probably have been illegal and therefore void. Not to mention the fact that the conduct could send the parties to jail.

The judge wrote that something analogous to the principle of lenity — and not necessarily a rigorous analysis of the forum selection clause and the doctrine of forum non conveniens — should underlie the dismissal of the lawsuit. Lenity requires that when the question of criminal liability is ambiguous, interpretation should be made in favor of the defendant (see McNally v. United States). Since online gambling presumably was not illegal under the law of Gibraltar, the more lenient stance would be to see the matter litigated there.

Bling photo courtesy Flickr user PhotoDu.de under this Creative Commons license.

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