Attorney Evan Brown

December 18, 2008 Trademarks

Disclaimer in trademark registration sinks UDRP action

Ideation Unlimited, Inc. v. Dan Myers, Case No. D2008-1441 (WIPO November 12, 2008).

A trademark owner who notices that someone else has registered a domain name incorporating the owner’s mark can file an arbitration action under the Uniform Domain Name Dispute Resolution Policy (UDRP for short). This often serves as a quicker and less expensive alternative to pursuing the cybersquatter in court.

To be successful under the UDRP, the “Complainant” has to show all of the following three elements:

(a) the registered domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(b) the “Respondent” has no rights or legitimate interests in respect of the disputed domain name; and

Ideation Unlimited, Inc. uses a logo with the word PRESCRIPTION COSMETICS. It has a United States and United Kingdom registrations for this logo. But in the U.S. registration the term “prescription cosmetics” is disclaimed. (Trademark applicants are required to “disclaim” any exclusive rights to use terms within their marks that are generic or merely describe the products.”) In the U.K. registration the word “prescription” is disclaimed.

The panel concluded that “[i]f the Complainant has willingly disclaimed any trade mark rights in the entire term ‘Prescription Cosmetics’, it cannot and should not claim to have trade mark rights in that term by virtue of its . . . registration.”

But what about common law rights, you ask? After all, one can support a UDRP action even without a trademark registration. The panel noted as follows:

Of course, it is not necessary for the Complainant to establish registered trade mark rights – it would be sufficient for the purposes of these proceedings under the Policy for the Complainant to demonstrate common law trade mark rights in the term PRESCRIPTION COSMETICS. However in the Complaint, the Complainant relies heavily on the three device marks, and provides little evidence of common law rights or reputation.

The decision underscores the importance of keeping trademark registrations up to date. Presumably, the mark in question here could have acquired distinctiveness by now (it’s been in use since the mid-70’s) so the disclaimer probably isn’t necessary anymore. And the decision also shows the importance of submitting evidence (at least a declaration) showing what common law or unregistered rights the complainant has.

December 16, 2008 Anonymity, First Amendment

Site operator successfully challenges subpoena which sought to unmask anonymous commenters

Enterline v. Pocono Medical Center, 2008 WL 5192386 (M.D. Pa. December 11, 2008)

A federal court in Pennsylvania has denied a motion demanding that a website operator turn over the identity of persons who commented anonymously in response to an article posted on the website. The court held that the website had standing to assert the free speech rights of the anonymous speakers, and that the First Amendment barred the unmasking where the information sought was available from other sources.

Plaintiff Enterline sued defendant Pocono Medical Center for sexual harassment and retaliation. On October 9, 2008, the local newspaper, The Pocono Record, published an article about the lawsuit. Several people left comments to the article, some of them claiming personal knowledge of facts possibly relevant to the case.

Enterline sent a subpoena to the newspaper seeking the identity of the anonymous commenters. When the newspaper wouldn’t respond, Enterline filed a motion to compel response to the subpoena. The newspaper responded by asserting a number of arguments. Among those arguments was that disclosure of the anonymous commenters’ identities would violate those persons’ First Amendment right to speak anonymously.

Siding with the newspaper, the court denied the motion.

The court first evaluated whether the newspaper website operator even had standing (i.e., the legal right) to assert the anonymous commenters’ First Amendment right. To answer this question in the affirmative, the court found that:

Practical obstacles prevented the anonymous commenters from asserting rights on their own behalf. The anonymity was the very right at stake. To defend that right, the commenters would have to be identified (setting aside for a moment the question of whether the commenters could appear as Doe defendants). The evaporation of that anonymity would lead to practical difficulties, as they had indicated they worked at the hospital or otherwise had personal connections with the litigants.
The anonymous commenters had sufficient injury-in-fact to satisfy the constitutional “case or controversy” requirement. Looking to such cases as RIAA v. Verizon, 257 F.Supp.2d 244 (D.D.C. 2003), the court agreed with the website operator, concluding that the relationship between the website and its readers was the type of relationship allowing it to assert the First Amendment rights of the anonymous commentators.
The website operator could reasonably be expected to properly frame the issues and present them with the necessary adversarial zeal. There was little discussion on this point, as the plaintiff did not contest that the website operator would be an adequate advocate to assert the First Amendment rights of the anonymous visitors.

Finding that the website operator had standing to assert the rights of its anonymous commenters, the court next considered whether the identification of the anonymous speakers would violate the First Amendment. To evaluate this question, the court applied the factors set out in Doe v. 2TheMart.com, 140 F.Supp.2d 1088 (W.D. Wash. 2001).

The court found that:

The subpoena was not brought in bad faith or for an improper purpose,
The information sought related to a core claim of the plaintiff,
The information was directly and materially relevant to the claim,

but that

Information required to prove the plaintiff’s claims was available from other sources. Several of the anonymous commenters stated that they were, for example, co-workers of the plaintiff or of the doctor against whom the plaintiff complained. The information these anonymous posters had could be uncovered through other discovery

This case is significant inasmuch as it could be applied to a case where a blogger or any other social media website operator is asked to turn over information that would identify its anonymous users. The decision outlines the framework that a blogger would have to use to show it has the right to argue on behalf of its anonymous visitors. The case then lays out (with the help of the 2TheMart.com decision) what must be shown after that initial threshold is crossed.

Photo of the Poconos courtesy Flickr user Nicholas T under this Creative Commons license.

December 11, 2008 Copyright

Cisco accused of violating open source licenses

Free Software Foundation, Inc. v. Cisco Systems, Inc., No. 08-10764 (S.D.N.Y., filed December 11, 2008). [Download the Complaint]

The Free Software Foundation (“FSF”) has filed a copyright infringement suit against Cisco claiming that Cisco has violated the GPL v.2 and Lesser GPL versions 2.0 and 2.1 open source licenses by distributing software without the source code. More specifically, FSF says that Cisco’s Linksys division has distributed firmware covered under these open source licenses in object code or executable form only, depriving users of the ability to modify and further distribute the source code for the programs.

No doubt FSF feels more confident in the success of its copyright infringement claims after this past summer’s decision from the Federal Circuit in Jacobsen v. Katzer. That case confirmed that the failure to abide by certain terms of an open source license can be treated as a use of the software beyond the scope of the license and therefore an infringement. The ability to seek remedies for copyright infringement and not merely breach of contract gives greater economic importance to open source licenses. Let’s hope this case gets to be litigated so that we can have some more resolution as to the contours of open source license enforceability.

More early coverage:

November 26, 2008 Copyright

Is Twitter a big fat copyright infringing turkey?

Here’s a topic you can mull over if conversation gets slow during tomorrow’s Thanksgiving dinner: Does Twitter infringe your copyright every time you post to it (i.e., put up a “tweet”)?

Consider this:

One of the exclusive rights of a copyright owner (under 17 U.S.C. 106) is the right to display the work. A website displays content when it serves up pages to the end user. Posts to Twitter — though they’re only 140 characters maximum — are arguably copyright protected works. (Set aside the question of retweeting.)

Twitter’s Terms of Service, in an earnest effort to be generous and progressive, assure users that when it comes to copyright, “what’s yours is yours.” Elaborating on this point, the Terms of Service go on to say that “[Twitter] claim[s] no intellectual property rights over the material you provide to the Twitter service.” In so many words, Twitter is saying “thanks but no thanks” to any copyright rights it might otherwise have over user-submitted content.

But by displaying tweets, Twitter is exercising one of the exclusive rights of the copyright owner. To do this lawfully, it has to have permission. And this permission is an intellectual property right. But didn’t Twitter just tell us that it doesn’t want any such right? Yes. So it has no permission. Exercise of an exclusive copyright right without permission (fair use aside) is infringement.

So should we all go out and sue Twitter for infringement? Of course not. Twitter would have a number of good defenses, which I expect may get articulated in the comments to this post. Are you really going to pay the filing fee to the Copyright Office and register the copyright in each of your tweets? You’ll have to do that before you can even show up in court. And what about injunctive relief? A court order making Twitter take down your stuff would seem to defeat the whole purpose, at least a little bit.

Similar analysis from Venkat here.

Turkey photo courtesy Flickr user stevevoght via this Creative Commons license.

November 24, 2008 Contracts, Litigation

Court enforces forum selection clause in web hosting agreement

Bennett v. Hosting.com, Inc., 2008 WL 4951020 (N.D. Cal. November 18, 2008)

Bennett filed an astounding 30-count complaint against defendant Hosting.com. Though the Managed Hosting Agreement designated Jefferson County, Kentucky to be the sole and exclusive venue for actions brought in connection with the agreement, Bennet brought the action in federal court in Northern California. Hosting.com moved to dismiss for improper venue. The court granted the motion.

Kentucky on a map

The court held that Bennett failed to prove that the forum selection clause in the hosting agreement was unreasonable. The fact that Hosting.com may have had superior bargaining power and the agreement appeared to be non-negotiable was not enough to render the agreement unconscionable. Moreover, Bennett failed to demonstrate how the forum selection clause was against any public policy of California. And the court rejected her argument that the case belonged in California because Kentucky does not recognize certain of the causes of actions in the complaint. After all, a Kentucky court could apply California law.

The court also rejected Bennett’s argument that the forum selection clause shouldn’t apply because a number of the claims arose from tort law and did not involve the agreement. This argument was rejected because many of the tort claims would require the same findings of fact as the contract-related claims. Moreover, and perhaps more importantly, the forum selection clause was broad. All the claims appeared to be “in connection with” the agreement. That was enough in this case to bring them in.

(Missing Kentucky image courtesy Flickr user dog_manor under this Creative Commons license.)

November 17, 2008 Trademarks, Unfair Competition

Results of Internet searches helpful in earthworm trademark case

Cascade Mfg. Sales, Inc. v. Providnet Co. Trust, 2008 WL 4889716 (W.D. Wash. November 12, 2008)

Cascade Manufacturing makes and sells composting bins in which earthworms “enhance and accelerate the composting process.” Cascade owns a federal trademark registration for WORM FACTORY. It sued its competitor Providnet Co. for trademark infringement over Providnet’s use of the mark GUSANITO WORM FACTORY. Cascade moved for a preliminary injunction against Providnet’s use of its “worm factory” mark. The court granted the motion.

One of Providnet’s arguments against the injunction was that “worm factory” is a generic term for the types of products being sold under the respective marks. To refute this contention, Cascade introduced evidence of Internet searches supporting its claim that the products at issue are referred to as “worm bins,” and that “worm factory” refers to Cascade’s particular product. The court found this evidence to be instructive.

Earthworm picture courtesy Flickr user Rick Harris under this Creative Commons license. Redistributed here under the same license.

November 6, 2008 First Amendment, Spam

Government spam blocking not a violation of First Amendment right to petition

Ferrone v. Onorato, No. 07-4299, 2008 WL 4763257 (3rd Cir. October 31, 2008)

The Third Circuit Court of Appeals has held that a county government did not violate a citizen’s First Amendment right to petition the government for a redress of greivences when the county set its spam filters to block all email from the citizen’s domain. There was no evidence that such blocking was done with intent to deprive the citizen of his Constitutional rights, or with reckless disregard of those rights.

The founding fathers managed Spam — The Founding Fathers managed Spam

The Allegheny County, Pennsylvania office of economic devlopment was getting a lot of email from press@rock-port.com. A county official directed that his IT staff block all future messages sent from that address. Accidentally, however, the filter was set to block all messages from the @rock-port.com domain from being sent to any county account.

Plaintiff Ferrone, who was already in a dispute with the county, tried sending 14 email messages to various county officials over the course of five weeks. Because of the spam filter settings, the messages did not get through. So Ferrone sued, claiming a violation of the First Amendment right to petition the government for a redress of grievences. The county moved for summary judgment and the court granted the motion. Ferrone sought review with the Third Circuit. On appeal, the court affirmed.

The court held that the First Amendment’s prohibition on the “abridgement” of the right to petition the government requires a plaintiff to show an actual intent on the part of the government to diminish this right. The court refused to accept Ferrone’s argument that the act of blocking email messages alone, without an examination of the government’s intent, would rise to the level of a constitutional violation. Rejecting Ferrone’s attempts to “plump” up his “specious claim” by throwing in the First Amendment, the court held that no reasonable factfinder could have found a violation of Constitutional rights.

Google Book Search case settles

Three years after it was filed, much of that time existing in apparent dormancy, the copyright infringement case filed by the Authors Guild against Google Book Search (f/k/a Google Print) has settled. (Thanks to Greg Beck for alerting me to this via a post he put up on Twitter.)

Here is a page with all kinds of information about the settlement. It’s a complicated proposed agreement, so it will take some time to understand it. There is sure to be plenty of commentary from others in the blogosphere over the next day or so.

It’s good to see this resolved. Almost three years ago I was on a panel discussion at the John Marshall Law School talking about the fair use implications of the case. You can download the MP3 of that talk here.

DMCA reaches the decade mark

My friend Kevin Thompson over at Cyberlaw Central reminded me this morning in this post that President Clinton signed the Digital Millennium Copyright Act ten years ago today. Tempus fugit. It’s interesting to reflect on how this critical piece of legislation has affected (I think fostered) the growth of the online infrastructure with its safe harbor provisions found at 17 U.S.C. 512.

DMCA at 10 years

Simply stated, the DMCA at section 512 gives safe harbor protections to providers of interactive computer services (like ISPs and websites hosting user generated content) from liability when users upload content that infringes on another’s copyright rights. To sail its ship into the safe harbor, the provider has to take certain affirmative steps, like registering an agent with the Copyright Office, terminating the accounts of repeat infringers, and, most importantly, responding appropriately to “takedown notices” sent by copyright owners identifying infringing content on the provider’s system.

Though few could disagree with the principle of protecting service providers from infringement liability occasioned by the conduct of third party users (i.e., stemming from user generated content), the DMCA has its critics. And the actual mechanism has some bugs.

A big factor in the problem is the sheer volume of user generated content that’s put online. How can an operator like YouTube, who gets hours of new content loaded to its servers every minute, reasonably be expected to give meaningful review to every takedown notice that comes its way? It can’t.

So for practical reasons, big providers (and smaller ones alike) take down accused content essentially with a rubber stamp. And who can blame them? It saves administrative time and helps ensure safe harbor protection. But there are negative consequences to users and to the public. These consequences on the First Amendment and other rights are well-exemplified by the recent correspondence between the McCain-Palin campaign and YouTube, with amicus-like voices joining the chorus.

Like any ten-year old, the DMCA shows signs of maturity. It has withstood a decade of scrutiny, all the while giving service providers peace of mind, along with relatively efficient mechanisms for copyright owners to get infringing material taken down quickly. But also like a ten-year-old, the challenging years of adolescence — and the accompanying rudimentary changes — are around the corner. It’ll still be the DMCA, but I wouldn’t be surprised to see some transformation going on as user generated content becomes less a novelty and more a standard.

Birthday cake photo courtesy of Flickr user “juverna” via this Creative Commons license.

October 27, 2008 Litigation

No judicial notice for Wikipedia entry

Flores v. State, No. 2008 WL 4683960 (Tx. App. October 23, 2008)

Not surprisingly, a Texas appellate court has held that it should not take judicial notice of a Wikipedia article.

Defendant was tried and convicted for cocaine possession. He appealed his sentence, arguing the trial court improperly admitted two oral statements the defendant made while being interrogated. Defendant apparently objected to the method investigators used to interrogate him, because he asked the appellate court to take judicial notice of the Wikipedia entry for the John Reid technique.

Citing to a Wall Street Journal article from earlier this year, the court declined to treat Wikipedia as a “reliable website,” instead invoking the overworn observation that Wikipedia’s greatest strength (its open platform) is also its greatest weakness.

At least one other court has declined giving judicial notice to a Wikipedia entry. This past May, the defendant in the trademark case Cynergy Ergonomics, Inc. v. Ergonomic Partners, Inc., 2008 WL 2064967 (E.D. Mo. May 14, 2008) asked the court to take judicial notice of the Wikipedia article about DaVinci’s Vitruvian Man.

The Cynergy Ergonomics court looked to Fed. R. Evid. 201 which provides that a court may take judicial notice of a fact not in the record where it is “either (1) generally known within the territorial jurisdiction of the trial court or (2) capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned.” While not expressly criticizing the reliability of Wikipedia, the court found that the entry did not meet the criteria for judicial notice.

Interrogation room photo courtesy Flickr user Vincent Tulio via this Creative Commons license. Vitruvian Man has been in the public domain for quite some time.