Attorney Evan Brown

September 21, 2010 Cybersquatting, Litigation

Domain name owner gets swift relief against impostor website

Starcom Mediavest Group v. Mediavestw.com, No. 10-4025, 2010 WL 3564845 (September 13, 2010)

In rem actions over domain names are powerful tools. A trademark owner can undertake these actions when it identifies an infringing domain name but cannot locate the owner of that domain name. In a sense, the domain name itself is the defendant.

The Anticybersquatting Consumer Protection Act (which is a part of the federal trademark statute dealing with the unauthorized registration of domain names) says that a court can enter ex parte orders requiring a domain name to be turned over when: (1) the plaintiff owns a registered trademark, (2) the domain name registry is located in the judicial district in which the action is being brought, (3) the domain name violates the plaintiff’s trademark rights, and (4) the plaintiff cannot locate the owner of the domain name even though it has diligently tried.

An “impostor” registered mediavestw.com, and “tricked” at least one of plaintiff’s business partners into signing up for advertising services. Plaintiff owns a trademark for MEDIAVEST and operates a website at mediavestww.com. Plaintiff filed an in rem action and sought a temporary restraining order (TRO).

The court granted the motion for TRO. It found that plaintiff had met its burden for a temporary restraining order in that it had shown that it was likely to succeed on the merits and that it would suffer irreparable harm in the absence of preliminary relief. As for the showing of harm to its trademark rights, the court noted the efforts on the part of the domain name registrant to fraudulently enter into business arrangements with plaintiffs’ business partners.

The court found that the TRO would serve the public interest because such interest favors elimination of consumer confusion. (Consider whether there really was any consumer harm that took place here if the alleged fraud was on a business-to-business level. Compare the findings in this case with the finding of no consumer nexus in the recent Reit v. Yelp case.)

The court found that plaintiff had made such a strong showing of the likelihood of success that it did not require plaintiff to post a bond. It ordered the domain name transferred into the court’s control immediately. Behold the power of in rem actions.

September 20, 2010 Employment, Evidence

Plaintiff failed to show that Facebook pics supported hostile workplace claim

Jabbar v. Travel Services, Inc., 2010 WL 3563112, (D.Puerto Rico September 10, 2010)

Plaintiff sued her former employer for racial discrimination. The court granted summary judgment in favor of the employer, finding there was not enough evidence to go to trial on plaintiff’s claim. Plaintiff asked the court to reconsider the judgment against her. The court held its ground.

One of the assertions that plaintiff made was that someone from work had posted a discriminatory comment on a Facebook photo taken at a company outing.

The court found there was no evidence apart from plaintiff’s own deposition testimony that the company’s official policy was to upload photos to Facebook. And there was no evidence as to who owned the Facebook account in question.

So the court found no basis to overturn its earlier determination that plaintiff failed to establish a prima facie case of employment discrimination.

September 18, 2010 Computer Crime, Copyright

Ohio record pirating statute preempted by Copyright Act

State v. Boyd, 2010 WL 3565414 (Ohio App. 1 Dist. September 15, 2010)

Defendant was convicted under Ohio state criminal law for selling pirated DVD movies on a street corner. This apparently was the first ever prosecution under a law — a “record pirating statute” — enacted in 1976 (which was two years before the Copyright Act took effect). Defendant sought review of his conviction with the state appellate court. On appeal, the court reversed the conviction.

The court held that the state record pirating statute (R.C. 1333.52) was preempted by Section 301 of the Copyright Act (17 U.S.C. 301).

It was not clear which subsection of the record pirating statute defendant had been accused of violating. The statute provides:

No person shall purposely do either of the following: (1) Transcribe, without the consent of the owner, any sounds recorded on a phonograph record, disc, wire, tape, film, or other article on which sounds are recorded, with intent to sell or use for profit through public performance any product derived from the transcription. . . .

and

No person shall purposely manufacture, sell, or distribute for profit any phonograph record, tape, or album of phonographic records or tapes unless the record and the outside cover, box, or jacket of the record, tape, or album clearly and conspicuously discloses the name and street address of the manufacturer of the record, tape, or album, and the name of the performer or group whose performance is recorded. . . .

The Copyright Act expressly preempts certain state-law actions. Section 301 states that all legal or equitable rights that are equivalent to any of the exclusive rights conferred by the Copyright Act and that come within the subject matter of copyright . . . are governed exclusively by the Copyright Act.

In this case, there was no dispute that the movies were within the subject matter of federal copyright law. The more detailed analysis came in examining the question of whether the work was governed exclusively by the Copyright Act. That inquiry looks to see whether there is a qualitatively different “extra element” in the state law claim beyond what is required to show copyright infringement.

The court looked to two similar Ohio cases in which defendants had engaged in similar conduct. In State v. Perry, the Ohio supreme court found that the statute supporting the prosecution for “unauthorized use of property” by uploading and downloading computer software to an internet bulletin board service was preempted. In State v. Moning, the court held that a computer crime statute that prohibited the unauthorized access to data in a database was not preempted. The unauthorized access provided the extra element in that case.

September 17, 2010 Evidence, Litigation

Juror internet research again causes criminal conviction to be overturned

Child molester’s conviction vacated because juror read articles about victim’s alleged injuries.

Lockwood v. State, 2010 WL 3529416 (Nev., September 3, 2010)

Last week it was manslaughter. This week it’s child molestation.

Defendant was convicted on multiple counts of the heinous crime of sexual assault of a child under the age of sixteen. He moved for a new trial when he learned that the jury foreperson did some internet research on the nature of the injuries suffered by the victim. The trial court denied the motion for a new trial, but the Nevada supreme court overturned the conviction on the basis of the juror misconduct.

To be successful on a motion for new trial, the defendant had to show (1) the occurrence of juror misconduct, and (2) that the misconduct was prejudicial.

The court held that although independent research by a juror generally would not give rise to the presumption of prejudice, in this case, the independent research did rise to that level.

The jury foreperson consulted eight to ten internet articles on the nature of the victim’s injuries over the course of forty-five minutes and shared her research with the rest of the jury during deliberations. The court held that by conducting her own research and relaying that information to the rest of the jury, the foreperson engaged in misconduct that was prejudicial.

The information related directly to whether it was possible that the victim was assaulted. Moreover, by sharing that information, the foreperson might have bolstered the credibility of both the victim and the State’s expert witness and thereby infected the deliberations such that there was a “reasonable probability that the information affected the verdict.”

September 16, 2010 Computer Crime, Privacy

Setting up Outlook rule to intercept another’s email can be a federal crime

U.S. v. Szymuszkiewicz, — F.3d —, 2010 WL 3503506 (7th Cir. September 9, 2010)

Seventh Circuit upholds conviction of employee who secretly intercepted his boss’s email.

A federal jury convicted the defendant, who was an IRS revenue officer, of violating the Wiretap Act (or the Electronic Communications Privacy Act, as some like to call it — 18 USC 2511(1)(a). He had snuck onto his boss’s computer and set a rule in Microsoft Outlook to autoforward copies of all incoming email to his own account.

The defendant sought review of his conviction with the Seventh Circuit. On appeal, the court affirmed. Judge Easterbrook’s opinion is interesting reading. It is a nice accompaniment to the 2005 decision from the First Circuit in U.S. v. Councilman.

The court rejected the defendant’s argument that the Wiretap Act required that the “interception” of the email be “contemporaneous” with its transmission: “[d]ecisions articulating such a requirement are thinking football rather than the terms of the statute.” (Such decisions would include Fraser v. Nationwide Mutual (3d Cir.), Steve Jackson Games v. Secret Service (5th Cir.), Konop v. Hawaiian Airlines (9th Cir.) and United States v. Steiger (11th Cir).

In any event, the court found that the defendant’s interception of the messages in this case was “contemporaneous by any standard.” The evidence showed that the Outlook rules, though set within the email client, operated on the server. A message to the boss would go to an email server in Kansas City, and then be “flung across the network” as packets making up two copies, one for the boss and one for the defendant. It was this copying on the server that was the unlawful interception.

If you’re at all interested in this case and the Wiretap Act, then you must check out Orin Kerr’s post at the Volokh Conspiracy, especially the comments to that post. Very erudite discussion.

September 15, 2010 Litigation, Personal Jurisdiction

Internet transactions support exercise of personal jurisdiction over out of state cigarette seller

: Image via Wikipedia

Illinois v. Hemi Group LLC, — F.3d —, 2010 WL 3547647 (7th Cir. September 14, 2010)

Seventh Circuit declines once again to adopt the Zippo test for personal jurisdiction in internet cases.

The State of Illinois filed a civil suit in federal court in Illinois against a New Mexico-based online cigarette seller. The trial court denied the defendant’s motion to dismiss for lack of personal jurisdiction. The defendant sought review with the Seventh Circuit. On appeal, the court affirmed the denial of the motion, holding that the defendant’s website satisfied the minimum contacts requirement for the exercise of personal jurisdiction.

The mechanics of the website were important in the minimum contacts analysis. The site expressly said that the company would sell to consumers in any state except those in New York. The court interpreted this to relate to the personal jurisdiction question in two ways. First, such a statement implicitly said that the defendant would do business in Illinois. Second, it revealed that the defendant knew that it could be subject to the jurisdiction of out-of-state courts (i.e., New York) and also knew how to prevent such an exercise (by not selling there).

In this analysis, the court expressly declined to adopt the well-known Zippo sliding scale test, which evaluates the interactivity of a website in the personal jurisdiction analysis.

Restating a hesitancy “to fashion a special jurisdictional test for Internet-based cases,” the court applied the traditional constitutional approach of the “effects test” found in Calder v. Jones. It made the interesting observation, as it did in Jennings v. AC Hydraulic A/S, that “although technological advances may alter the analysis of personal jurisdiction, those advances may not eviscerate the constitutional limits on a state’s power to exercise jurisdiction over nonresident defendants.”

Creation of False Blog and LinkedIn Account Targeting Utah Resident Supports Personal Jurisdiction in Utah — Buckles v. Brides Club, Inc. (ericgoldman.org)

September 14, 2010 Anonymity, Copyright, First Amendment, Litigation

Court orders anonymous accused Bittorrent defendants to be identified

West Bay One v. Does 1 – 1,653, — F.Supp.2d. —, 2010 WL 3522265 (D.D.C. September 10, 2010)

Achte/Neunte Boll Kino Beteiligungs v. Does 1 – 4,577, — F.Supp.2d —, 2010 WL 3522256 (D.D.C. September 10, 2010)

In mass copyright infringement cases against alleged traders of copyrighted movies via Bittorrent, unknown defendants had no reasonable expectation of privacy in their subscriber information held by internet service provider.

Several unknown “Doe” defendants who were sued for copyright infringement for trading movies via Bittorrent moved to quash the subpoenas that the plaintiff copyright owners served on the defendants’ internet service providers.

The subpoenas sought subscriber information such as the defendants’ names, addresses and MAC addresses, so that they could be named as defendants in the copyright litigation.

Defendants moved to quash the subpoenas, arguing that their subscriber information was private information that should not be disclosed pursuant to a Rule 45 subpoena. The court denied the motions and ordered the subscriber information produced.

The court held that the defendants did not have a reasonable expectation of privacy in their subscriber information held by the internet service providers. It cited to a number of cases that supported this holding, each of which had found that a person loses his or her expectation of privacy in information when that information is disclosed to a third party. See Guest v. Leis (6th Cir.), U.S. v. Hambrick (4th Cir.), and U.S. v. Kennedy (D. Kan.).

In footnotes, the court also addressed the potential First Amendment rights that the defendants would have to engage in anonymous file sharing. It quickly dispensed with any notion that such activities were protected in this case, as the pleadings on file set forth a prima facie case of infringement. “[C]ourts have routinely held that a defendant’s First Amendment privacy interests are exceedingly small where the ‘speech’ is the alleged infringement of copyrights.”

September 9, 2010 Defamation, Fraud/Misrepresentation, Section 230

Yelp successful in defamation and deceptive acts and practices case

Reit v. Yelp, Inc., — N.Y.S.2d —, 2010 WL 3490167 (September 2, 2010)

Section 230 of Communications Decency Act shielded site as interactive computer service; assertions regarding manipulation of reviews was not consumer oriented and therefore not actionable.

As I am sure you know, Yelp! is an interactive website designed to allow the general public to write, post, and view reviews about businesses, including professional ones, as well as restaurants and other establishments.

Lots of people and businesses that are the subject of negative reviews on sites like this get riled up and often end up filing lawsuits. Suits against website operators in cases like this are almost always unsuccessful. The case of Reit v. Yelp from a New York state court was no exception.

Plaintiff dentist sued Yelp and an unknown reviewer for defamation. He also sued Yelp under New York state law for “deceptive acts and practices”. Yelp moved to dismiss both claims. The court granted the motion.

Defamation claim – protection under Section 230

Interactive computer service providers are immunized from liability (i.e., they cannot be held responsible) for content that is provided by third parties. So long as the website is not an “information content provider” itself, any claim made against the website will be preempted by the Communications Decency Act, at 47 U.S.C. 230.

In this case, plaintiff claimed that Yelp selectively removed positive reviews of his dentistry practice after he contacted Yelp to complain about a negative reivew. He argued that this action made Yelp an information content provider (doing more than “simply selecting material for publication”) and therefore outside the scope of Section 230’s immunity. The court rejected this argument.

It likened the case to an earlier New York decision called Shiamili v. Real Estate Group of New York. In that case, like this one, an allegation that a website operator may keep and promote bad content did not raise an inference that it becomes an information content provider. The postings do not cease to be data provided by a third party merely because the construct and operation of the website might have some influence on the content of the postings.

So the court dismissed the defamation claim on grounds of Section 230 immunity.

Alleged deceptive acts and practices were not consumer oriented

The other claim against Yelp — for deceptive acts and practices — was intriguing, though the court did not let it stand. Plaintiff alleged that Yelp’s Business Owner’s Guide says that once a business signs up for advertsing with Yelp, an “entirely automated” system screens out reviews that are written by less established users.

The problem with this, plaintiff claimed, was that the process was not automated with the help of algorithms, but was done by humans at Yelp. That divergence between what the Business Owner’s Guide said and Yelps actual practices, plaintiff claimed, was consumer-oriented conduct that was materially misleading, in violation of New York’s General Business Law Section 349(a).

This claim failed, however, because the court found that the statements made by Yelp in the Business Owner’s Guide were not consumer-oriented, but were addressed to business owners like plaintiff. Without being a consumer-oriented statement, it did not violate the statute.

Other coverage of this case:

Rebecca Tushnet

September 8, 2010 Litigation

iPhone using juror causes manslaughter conviction to be overturned

Tapanes v. State, — So.3d —, 2010 WL 3488709 (Fla.App. 4 Dist. September 8, 2010) [Opinion (PDF)]

Defendant was accused of killing his new neighbor and was indicted for murder. The jury convicted him of the lesser charge of manslaughter.

One of the key concepts in the case, and mentioned specifically in the jury instructions, was whether the defenant acted with “prudence” in his dealings with the victim.

During a break from deliberations, the jury foreperson used his iPhone to access Encarta and look up the word “prudence”. Adding to this misdeed, the foreperson shared this information with the other jurors.

Based on this misconduct, defendant filed a motion seeking a new trial, and the trial court denied that motion. So defendant sought review with the Court of Appeal of Florida. On appeal, the court reversed, holding that the defendant was entitled to a new trial.

The appellate court observed that the concept of “prudence” was one that could have been key to the jury’s deliberations. Using the smartphone in this way was analogous to using a dictionary, and that conduct has generally been prohibited in juror deliberations. The appellate court found that at the very least, it could “not say that there [was] no reasonable possibility that the . . . misconduct . . . did not affect the verdict in this case.”

Ed. note: If the jury foreperson was savvy enough to use an iPhone, why on earth was he consulting Encarta? Hello, 1995 called – it wants its web pages back.

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