internet law cases
COPA & Privacy
ASHCROFT v. ACLU, No. 03-218 (U.S.S.C. June 29, 2004)
The Court upheld a preliminary injunction barring the enforcement of the Child Online Pornography Act, because the statute likely violates the First Amendment. A divided U.S. Supreme Court on June 29, 2004 barred enforcement of a 1998 federal law designed to keep Internet pornography away from minors because it likely violates constitutional free-speech rights. By a 5-4 vote, the high court handed a defeat to the Justice Department in a case that has pitted free-speech rights against efforts by Congress to protect minors from online pornography. The Supreme Court Justices pose for an official picture December 5. Pictured in the front row (L-R) Associate Justice Antonin Scalia, Associate Justice Associate Justice John Stevens, Chief Justice of the United States William Rehnquist, Associate Justice Sandra O'Connor and Associate Justice Anthony Kennedy. Standing (L-R) are Associate Justices Ruth Ginsburg, David Souter, Clarence Thomas and Stephen Breyer. Photo by Jason Reed/Reuterssee also: internet privacy decisions via EFF
patents.com merely descriptive
IN RE OPPEDAHL & LARSON LLP, (Fed Cir. 2004)The Trademark Trial and Appeal Board properly refused to register the mark patents.com to plaintiffs because it is merely descriptive under U.S.C. section 1052(e)(1).
a really useful item
PIVOT POINT INT'L v. CHARLENE PRODS., INC., (7th Cir. 2004) [pdf]The court found that a mannequin head was copyrightable subject matter under the Copyright Act of 1976, because it is a useful item. The case was remanded for determination of the copyright infringement claim on the merits.
Web Publishers Not Liable for Advertisers' Activities
Web site owners can rest a little easier following a little-noticed court decision last month that bolsters legal protections against lawsuits arising from the activities of their advertisers. Ramey v. Darkside involved a Washington, D.C., area dancer who sued a Web site publisher after one if its advertisers used a photo of her without her permission. [c-net]
Back Out the US Public Domain
Copyfight: All Your Public Domain Are Belong to Us: "Disappointing, but not unexpected news about the ability of the government to restore copyright to public domain works. In Luck's Music Library v. Ashcroft [PDF] (21 pages), the United States District Court for the District of Columbia upheld the ability of the government to restore copyright for foreign works that had entered the public domain in the US, but were copyrighted in their home country. The case challenged the constitutionality of Section 514 of the Uruguay Round Agreements Act, codified at 17 U.S.C. 104a. The case had been held up until after the Eldred decision. The plaintiffs were a sheet music company and a film restoration company."
DirecTV Loses Weapon in Piracy Fightlaw.com: In a setback to DirecTV's fight against satellite piracy, a federal appeals panel on Tuesday ruled that the company cannot sue people under a wiretapping law just because they possess cards allowing them to intercept its signal. The 11th Circuit said that DirecTV must be able to show that the alleged pirate actually used the device. It's the first federal appellate decision on the issue, and thus is controlling law nationally for the time being. See DIRECT TV INC. v. TREWORGY, (11th Cir. 2004) (18 U.S.C. section 2520(a) does not create a private cause of action against a defendant found in illegal possession of equipment used to intercept satellite transmissions in violation of the criminal statute). [6/16/2004
Statutory Copyright Damages
Copyfight: The First Circuit has issued an opinion discussing how to calculate statutory damages for copyright infringement. Venegas Hernandez v. Sonolux Records. Nos. 03-2014, 03-2015 (First Circuit June 7, 2004). 17 USC Section 504(c) states that a copyright owner can elect to recover statutory damages "For all infringements involved in the action, with respect to one work, for which any infringer is liable individually." The issue is whether that means you multiply the amount of statutory damages by the number of plaintiff's copyrighted songs involved in the suit (here, two songs) or the number of infringing works for which the defendant is liable (here, sixteen infringing albums which each included at least one of the plaintiffs' songs). Answer- the number of infringed works.
Ad Restrictions Unconstitutional
AP reports that 'A judge said Wednesday that a federal law aimed at restricting the display of paid, pro-marijuana ads in buses and subway stations is unconstitutional, improperly infringing on free speech rights.'" [via How Appealing]
Attorney's Fees in mixed IP Case
Award of attorney's fees and costs to prevailing defendants was authorized by the Copyright Act even though much, if not all, of the legal work performed in the case had application to the state law claims as well as the copyright claim. Invessys, Inc. v. McGraw-Hill Cos., Ltd., (1st Cir. May 21, 2004)
Defamation: Single Pub Rule
The single-publication rule applies to defamatory statements published on Internet Web sites; the rule's one-year statute of limitations bars plaintiffs' defamation cause of action. Traditional Cat Ass'n, Inc. v. Gilbreath, California Appellate, May 6, 2004.
Sex E-Mails to Minors Not Shielded by First AmendmentMiami Daily Business Review: "In a victory for child protection advocates and law enforcement, a state appeals court rejected a first-ever constitutional challenge to the Florida Computer Pornography and Child Exploitation Prevention Act of 1986. Monday's unanimous ruling by the 1st District Court of Appeal in Tallahassee holds that the First Amendment to the U.S. Constitution does not protect e-mails intended to lure children into illegal sexual activity."
Freebies decision
Barbie v. The Rockettes
MATTEL, INC. v. GOLDBERGER DOLL MFG. CO. (2d Cir. 2004) Copyright law bars competitors from copying plaintiff's realization of upturned nose, bow lips, and widely spaced eyes; district court erred in concluding that copyright protection does not extend to Barbie's eyes, nose, and mouth. Summary judgment for defendants is vacated.
Content Distribution on the Internet: VA
PSINET, INC. v. CHAPMAN, (4th Cir. 2004) In light of current technology, Va. Code Ann. section 18.2-391, which criminalizes the dissemination of material harmful to minors over the Internet, violates both the First Amendment and the Commerce Clause.
Internet Jurisdiction: New York
Internet casino, World Interactive Gaming Corporation, based in Suffolk County, New York claimed that they were not subject to New York gambling laws, since their Internet servers were licensed in Antigua. However, the Supreme Court of the State of New York ruled that the Caribbean location was irrelevant, since the actual transmission of information from New York via the Internet constituted gambling activity within the state. [World Interactive Gaming Corporation (1999)]
Prior Work Filtered before Access / Analysis in Copyright Claim
MURRAY HILL PUBL'NS, INC. v. TWENTIETH CENTURY FOX FILM CORP., (6th Cir. March 19, 2004) via FindLaw: Elements of a copyright defendant's work that were created prior to access to a plaintiff's work are to be filtered out at the first stage of substantial-similarity analysis. Because no reasonable jury could have found defendant's movie substantially similar to plaintiff's screenplay solely on the basis of the non-filtered remainder, judgment as a matter of law must be entered for defendant.
H.R. 3872: Consumer Access to Information Act of 2004H.R. 3872: To prohibit the misappropriation of databases while ensuring consumer access to factual information.
SCO Attacks Linux UsersTHE SCO GROUP, INC. v. AUTOZONE, INC. (March 3, 2004)
On The Day That The UNIX Software Owner Releases Its First Quarter Earnings Report, It Files A Copyright Infringement Lawsuit Against The Auto Parts Retailer, Claiming The Company Uses Linux Computer Operating System Software That The Software Company Claims Infringes Upon Its Copyrighted Programming Code [PDF]THE SCO GROUP, INC. v. DAIMLERCHRYSLER, CORP. (March 3, 2004)
In Another UNIX Suit, The Software Owner Files A Complaint In Michigan State Court Following The Motor City-Based Car Manufacturer's Alleged Refusal To Certify Its Compliance With The Plaintiffs' Software License, Suspecting That The Car Maker Is 'Migrating Its Installed Base To The Linux Operating System.' [PDF]see also: Court Ordes SCO to show more code
The 'No Electronic Theft' Act
17 U.S.C. 506: Any person who infringes a copyright willfully either– (1) for purposes of commercial advantage or private financial gain, or (2) by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000,shall be punished as provided under section 2319 of title 18, United States Code. For purposes of this subsection, evidence of reproduction or distribution of a copyrighted work, by itself, shall not be sufficient to establish willful infringement.
Em sues Apple
Rap Musician Eminem's Copyright Lawsuit Against Apple Computer, Advertising Agency TBWA/Chiat/Day, MTV, And Viacom, Alleging The Computer Company Used "Lose Yourself" in an iPod ad without his consent [Findlaw] [Eight Mile Style v. Apple Computer Complaint]
Judge Posner, copyright, and comic booksGaiman v. MCFarlane, 7th Cir. 2004: A Spawn who talks medieval and has a knight’s costume would infringe Medieval Spawn, and if he doesn’t talk medieval and doesn’t look like a knight then he would infringe Spawn.see also: Neil Gaiman's Journal
Canadian court grabs some Internet jurisdiction
blogbook: "Article on a jurisdictional ruling in a defamation case brought in Toronto against the Washington Post by a former UN official, over an article written while he was in Kenya, allegedly mismanaging an allegedly corrupt UN program there ... the Canadian court has jurisdiction."
WhenU Pit Trademark Law Against Competition
EFF: "Online contact lens distributor 1-800 Contacts, Inc., won an initial trademark violation lawsuit against WhenU.com, Inc., in October 2002, claiming that WhenU.com's SaveNow software confused potential customers by generating ads related to the words and web addresses people enter into online search engines and web browsers. WhenU.com appealed the lower court's ruling in December 2003 explaining that its ads -- known as pop-ups, pop-unders, and other types -- are all generated in a manner that does not confuse web users."Donna Wentworth: Fred von Lohmann, in a media release on the amicus brief EFF signed in 1-800 Contacts v. WhenU: "If I'm walking to my neighborhood drugstore to purchase contact lenses and on the way I see a pharmacy with lenses at half the price, I should be able to stop by and take a look at the competition before making my purchase."
Wine Imports & First Amendment
Swedenberg v. Kelly (2d Cir 2004): New York's Alcoholic Beverage Control Law violates the First Amendment insofar as it prohibits all commercial speech pertaining to the sale of alcoholic beverages directed to New York consumers by unlicensed entities. Its prohibition of the direct sale and shipment of wine from unlicensed wineries to New York consumers lies within the 21st Amendment and thus is exempted from the normal operation of the Commerce Clause.
18 U.S.C. section 2252A
USA v. Harris (2d Cir. 2004): 18 U.S.C. section 2252A(a)(5)(B), which prohibits the possession of child pornography, is a proper exercise of Congress's powers under the Commerce Clause.
Leave a Message
Los Angeles Superior Court judge ruled that the plaintiff had no expectation of privacy when he left message on Snoop's answering machine and it ended up as part of a song.
Jorgensen v. Epic/Sony Records
Evidence of corporate receipt of unsolicited work is insufficient to raise a triable issue of access where there is no evidence of any connection between the individual recipients of the protected work and the alleged infringers. With respect to some defendants, summary judgment is vacated as plaintiff did proffer sufficient evidence on the issue of access. Jorgensen v. Epic/Sony Records (2d Cir. 2003) [pdf]
Owning Beethoven
Professor Lenz has a very interesting report on a recent ECJ decision, concerning trademarks consisting of sounds: The plaintiff in [Shield Mark v. Kist] had registered the first nine notes of the musical composition Für Elise, by Ludwig van Beethoven. He is suing a competitor for trademark infringement based on that registration.The Court says that sounds can be registered as trademarks in Europe and that for compositions, the description in a stave (musical notation) is sufficiently clear, precise, self-contained, easily accessible, intelligible, durable and objective.That probably means that the plaintiff will win his case. Which in turn means that he owns Beethoven's famous composition as a trademark for various products and services in Classes 9 (computer software (recorded), etc.), 16 (magazines, newspapers, etc.), 35 (publicity, business management, etc.), 41 (education, training, organisation of seminars on publicity, marketing, intellectual property and communications in the business sector, etc.) and 42 (legal services) of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as amended and modified.See also IPKat's discussion.
Proprietary Database, Public Data and Copyright
IPTAblog: "In Assesment Technologies of WI, LLC v. WIREdata, Inc., the Seventh Circuit Court of Appeals held that one may copy and access a copyrighted database in order to extract non-copyrightable public information from that database."Plaintiff, a database software manufacturer, cannot by contract or copyright prevent municipalities from revealing their own data that exists within the database, especially when the complete data are unavailable anywhere else, and might constitute copyright misuse. [pdf]
Trademark Trial and Appeal Board Inquiry System
TTABVUE: The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) maintains this system, which allows users to view images of documents concerning trademark disputes. TTABVUE includes images of most documents filed since January 2003. Some earlier records covering the period June 2001 to January 2003 also are available. Access is available only by entering a TTAB proceeding number. [via TVC]
Publishers Defend Right To Satirize Public Officials
The case, New Times, Inc. v. Isaacks et al, is a defamation action brought against the Dallas Observer, an alternative newsweekly, and its parent company, New Times, Inc., as a result of the publication of a fictitious article satirizing the way in which two local elected officials enforced a school violence "zero-tolerance" policy by jailing a 13-year old student for writing a school-assigned Halloween essay. [FEN]
Beastie Boys Sampling Not Infringement
The Ninth Circuit has issued a divided opinion finding that the Beastie Boys are not guilty of copyright infringement for their sampling of a six-second, three-note segment of a performance by accomplished jazz flutist, James W. Newton. The decision is here Newton v. Diamond, et. al. [PDF]. [via Ernest Miller]
The King, Copyright and Fair Use
In a copyright infringement action, the district court's order granting a preliminary injunction is affirmed where the court did not abuse its discretion when it weighed the four statutory fair-use factors together and determined that plaintiffs would likely succeed on the merits. ELVIS PRESLEY ENTERS., INC. v. PASSPORT VIDEO, No. 02-57011 (9th Cir. 2003) [pdf] See also Denise Howell's mini-discussion here.
Judge Refuses Caterpillar Request to Block Disney Release
AP: "A federal judge refused to block the U.S. release of George of the Jungle 2, a Walt Disney Co. comedy that Caterpillar Inc. contends will hurt its image and sales of children's products. The manufacturer filed a trademark infringement lawsuit, alleging that the company's reputation will be tarnished because its well-known yellow earth-moving equipment is linked to the film's villains and described as deleterious dozers."
Spider-Man Billboard Case Dismissed Without Prejudice
The Trademark Blog: On appeal, the Second Circuit has affirmed the dismissal of the federal claims. However, it has reversed the dismissai WITH prejudice, instead remanding the case to the District Court to enter a dismissal WITHOUT prejudice, because the District Court should not have exercised supplemental jurisdiction over the state trespass claim. A NY State Court has not yet ruled on the question as to whether physical damage is an element of trespass - the same issue raised by the Intel v. Hamidi case - and thus dismissal with prejudice was not proper. Plaintiff can now re-file in state court should it choose to do so. Sherwood 48 v. Sony, 02-9100 (Sept 29, 2003)
Misappropriation Construed
The term "misappropriation" in an insurance policy issued by defendant refers generally to the wrongful acquisition of property, and the ambiguity in the term "misappropriation" must be interpreted in favor of coverage; summary judgment to defendant is vacated. State Auto Prop & Cas Ins. Co. v. Travelers (4th Cir. 2003)
Gator.com v. L.L. Bean (9th Cir. 2003)
Findlaw: "A Maine corporation's contacts with California, particularly its substantial mail-order and internet-based commerce in the state, are sufficient to support assertion of general personal jurisdiction."The Trademark Blog: "The Ninth Circuit found that California courts could exercise general jurisdiction over L.L. Bean, based on its continuous and systematic contacts with the state, specifically those contacts arising from its operation of a 'virtual store' over the Internet, national advertising and mailings into California. While it had never registered to do business in California, L.L. Bean derives 6% of its sales from California and sources products from there. Bancroft & Masters v. Augusta National, 223 F.3d 1082 (9th Cir. 2000) is one of the few other 9th Circuit cases evaluating whether contacts over the Internet can give rise to general jurisdiction (in that case, they didn't)."
Film Clips not Fair Use
A preliminary injunction is affirmed against online display of clip reviews," an approximately two-minute segment of a movie, copied without authorization from the film’s copyright holder. Video Pipeline v. Buena Vista (3d Cir. 2003)
2d Circuit: D&O Policy Is Not an AssetProceeds of an insurance policy covering legal expenses of the Rigas family and Adelphia Communications officers is not an asset of the bankrupt company. [New York Law Journal]
Anti-SLAPP Law Strengthened
Finke v. Disney: "we hold a defendant may move to strike a cause of action under section 425.16 if at least one of the predicate acts was an act in furtherance of the defendant's right to petition or free speech in connection with a public issue." Analysis at So Cal Law Blog. [8/3/2003 23:55]
Marty on VirginThe Trademark Blog discusses Virgin Enterprises v. Nawab, et. al. (2d Cir. July 11, 2003): "This is why you can never tell a client that you will definitely win. The District Court may display a 'considerable misunderstanding' of the likelihood of confusion analysis and you lose."
geographically deceptively misdescriptive and final judgment
The Trademark Trial and Appeal Board applied an outdated standard for section 2(e)(3) of the Lanham Act, in its refusal to register a mark because the mark was primarily geographically deceptively misdescriptive. In re Les Halles (2003).In entering summary judgment in a suit for infringement on the basis of claim preclusion, the district court erred in concluding that the dismissal of a prior related action was a final adjudication on the merits. Media Technologies Licensing, LLC v. The Upper Deck Co. (Fed Cir. 2003).
Insured's TM infringment Claim Not Covered by Advertising Injury
In an action alleging that an insurer was required to reimburse plaintiff for part of the cost of defending a counterclaim for trademark infringement, plaintiff was not entitled to coverage under the insurance policy because infringement fell outside the provisions of the policy relating to "advertising injury." Sport Supply Group, Inc. v. Columbia Cas. Co. (5th Cir., 2003).
4th Cir. says no jurisdiciton in tm infringment case
An Illinois organization did not subject itself to personal jurisdiction in Maryland by operating an Internet website thatallegedly infringed the trademark rights of a Maryland insurance company. Carefirst Of Maryland, Inc. v. Carefirst Pregnancy Ctrs. (4th Cir. 2003)4th Circuit also decides domain name registrar immunity case.
Florida S.Ct to consider commerical misappropriation of privacyAn appeal involving the film "The Perfect Storm" provides a perfect opportunity for the Eleventh Circuit to certify a Florida state law question to Supreme Court of Florida. Issues involve whether there is a relational right of privacy and whether Florida statute S. 540.08 applies to unauthorized commercial misappropriation and invasion of privacy concerning the motion picture The Perfect Storm. See this unanimous per curiam opinion. [Actual Malice / Dishings / How Appealing]
Federal Circuit disapproves of Jack-OffThe Federal Circuit has affirmed a TTAB refusal of the mark 1-800-JACK-OFF for 'adult entertainment services.' In re The Boulevard Entm't, Inc. (substantial evidence supports the Trademark Trial and Appeal Board's finding that the term JACK OFF is a vulgar reference to masturbation and that plaintiff's use of the marks refers to such meaning, thus registration of the mark is barred by section 2(a) of the Trademark Act, which precludes registration of marks that consist of immoral or scandalous matter).
Kelly v. Arriba Soft
An internet search engine operator's "thumbnailed" reproductions of a copyright plaintiff's pictures amounted to a fair use under the Copyright Act. Kelly v. Arriba Soft, No. 00-55521 (9th Cir. July 07, 2003) More on Kelly: 9th Circuit Rules Creating Thumbnails from Other Webpages is Fair Use While Framing Other WebPages May Infringe Copyrights
Supreme Court Won't Hear Nike Ad Case
Volokh, John Maltbie, WaPo, Supreme CourtPrior Items:Nike, SCOTUSblog, Hilden, The New Jersey Law Journal, Tony Mauro, Denise Howell
Tiger's '1997 Masters' painting does not violate trademark law
"We hold that, as a general rule, a person's image or likeness cannot function as a trademark," Judge James Graham wrote in the majority opinion. [foxsports.com] [ETW CORP. v. JIREH PUBL'G, INC. (6th Cir, 2003]
4th Circuit finds no duty to defend 'kit car'
Underlying complaints for trademark infringement did not fall under the scope of coverage as "personal and advertising injury" in plaintiff's policy, thus defendant insurer owed no duty to defend the claims against plaintiff for manufacturing an infringing "kit car." SUPERFORMANCE INT'L INC. v. HARTFORD CAS. INS. CO., (4th Cir.).
Trademark Blog: Fourth Circuit Case on Abandonment
Sloane v. Auditron Electronic, 02-1787 (Fourth Circuit, June 5, 2003) (unpublished).Practice point for pro se trademark plaintiffs: Always bring 43(a) because if for no other reason, your registration could get cancelled.Another practice point: plaintiff's loss of his registered rights illustrates why someone's first trademark application should be for a word mark or 'typewriter letters' as some call it. A company is much more likely to change its stylization over time than its housemark. [click here for more analysis from The Trademark Blog]
Opposition of mark that dilutesGary at The Statutory Construction Zone discusses the Enterprise Rent-A-Car v. Advantage Rent-A-Car (Fed. Cir. May 30, 2003)
(Dyk) wherein the court held that "the owner of a famous mark cannot oppose registration based on dilution where its mark did not achieve fame prior to the applicant’s prior use in a limited geographic area, and that a trademark holder cannot oppose registration based on claims of dilution under state law."
Why you should have a copyright notice on your blog
The Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. Dastar v. 20th Century Fox Film Corp. (Sup. Ct. 2003)
Or you could have a Creative Commons notice.
CINCINNATI INS. CO. v. ZEN DESIGN GROUP, LTD. (6th Cir.)
An insurer had a duty to defend where a complaint of infringement of a slogan "arguably" stated a claim for liability for an advertising injury under Michigan law.
ENTER. RENT-A-CAR CO. v. ADVANTAGE RENT-A-CAR, INC. (Fed. Cir.)
Under the Trademark Amendments Act of 1999 and Federal Trademark Dilution Act of 1995, the owner of a famous mark cannot oppose registration based on dilution where its mark did not achieve fame prior to the applicant's prior use in a limited geographic area. A trademark holder cannot oppose registration based on claims of dilution under state law, under 15 U.S.C. section 1063(a). [via FINDLAW see also FindLaw Opinion Summaries Archive: September 2000 to the Present]
Corporate Names and Domain Names Alone Do Not Equal Trademark Rights
Article explains, as many entrepreneurs have discovered to their dismay, that registering a corporate name and a domain name alone, do not create protectable trademark rights. [What's In a Name? BusinessWeek Online]
$35 Million Patent Verdict Against Internet Auction Company eBay [EDVA / pdf]
TTAB applied an outdated standard in its analysis, under section 2(e)(3) of the Lanham Act, when it refused to register the mark CALIFORNIA INNOVATIONS to a Canadian-based corporation because it was geographically deceptively misdescriptive [Fed. Cir.]
Determining substantial similarity in copyright infringement cases requires identifying which aspects of the artist's work, if any, are protectible by copyright, then determining whether the allegedly infringing work is substantially similar to protectible elements of the artist's work. [6th Cir.]
District court did not clearly err in finding that plaintiff had failed to show that its pill configuration and color were non-functional and thus not eligible for trade dress protection [3d Cir. / pdf]
Who pays for discovery of E-mail?
Ernie discusses the effect of a recent order requiring defendant to pay for the search and recovery of e-mail messages requested by a plaintiff: I think that a new aresenal in discovery is going to be the 30(b)(6) deposition of the IT person at an organization, who can be used to ferret out the information is electronically archived and who can be asked how burdensome it would be to retrieve it.
Law Practice Management Resources
The ABA Section of Litigation has assembled a powerful set of resources to assist you in your law practice: Civil Trial Practice Standards, Guidelines for Conduct, Uniform Task-Based Management System and Civil Discovery Standards.
Another Step Closer to Citing Unpublished Opinions
The federal judiciary has taken the next key step toward the enactment of a rule that would allow lawyers to cite unpublished opinions in all appeals courts. [Legal Times]
New Standards Proposed for Cost Shifting in E-Discovery
In an employment discrimination suit against an investment bank, a Southern District of New York judge has proposed a new standard for evaluating whether the cost of electronic discovery requests should be shifted to the plaintiff. [New York Law Journal]
IP Protection Strategies
Intellectual property isn't always easy to identify. It's even harder to protect. Here's how CSOs can work with others to protect their companies' future. [Don't Lose Your Head CSO Magazine]
New technologies face legal headaches
Lawyers at the O'Reilly Emerging Technology Conference warned developers yesterday that companies face a host of legal issue that they need to consider when developing emerging technology. EFF lawyer Fred von Lohmann said companies that provide services, end-user licenses, and increasingly, automatic updates, could become targets of IP holders who argue that such companies could do more to stop copyright infringement because they have established an ongoing relationship with their customers.
Protection for removal or alteration of copyright Management Info
In 1998, Congress passed the WIPO Copyright and Performances and Phonograms Treaties Implementation Act. Part of that statute provided remedies for the alteration or removal of what the statute termed "Copyright Management Information" -- information such as the author's copyright notice, name, and date of publication, for example. See 17 U.S.C. §§ 1202, 1203. The statute did not provide a remedy for the violation of these provisions until 1998, but as of that time provided for actual damages or statutory penalties of up to $25,000 and attorney fees. [Law.com (sub req'd)]
Jury Sides With Photographer Over Reuse of Work in CD-ROMs
U.S. District Court jury in Miami found last month that the National Geographic Society willfully violated a free-lance photographer's copyright by republishing his work in a CD-ROM anthology. [Law.com]
Corporate Disclosure Statements
Effective December 1, 2002, a new Rule 7.1 was added to the Federal Rules of Civil Procedure governing the form of the corporate disclosure statement that must be filed with the Court along with the first pleading filed (complaint for a plaintiff; answer for a defendant). Previously, disclosure statements were governed only by local rules such as Local Rule 1.9 in the Sourthern and Eastern Districts of New York. The effect of the new rule is to expand the disclosure required. This is because Rule 7.1 is in addition to any local rules. The combination of Fed. R. Civ. P. 7.1 and Local Rule 1.9 means that disclosure statements for corporate parties in S.D.N.Y. and E.D.N.Y. must include the following information:1. The name of any parent corporation (not just a publicly-held corporate parent) of the corporate party. Moore's on Federal Practice indicates that the term "parent" includes corporate grandparents, great-grandparents, etc. as well.2. Any publicly-held corporation that owns at least 10% of the stock of the corporate party.3. Any publicly-held subsidiary or affiliate of the corporate party.If you are asked to prepare, type or review a Rule 1.9 statement, please keep this revised disclosure requirement in mind.
Registration of the copyright in a work does not implicitly register the copyright in its derivative workIn a copyright infringement action involving a rag doll, 1) registration of the copyright in a work does not implicitly register the copyright in its derivative work, and 2) a work does not violate a copyright holder's right to control the production of derivative works if it is not substantially similar to the copyrighted original. Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., (2d Cir. 2003) [pdf]
ASHCROFT v. ACLU, No. 03-218 (U.S.S.C. June 29, 2004)
The Court upheld a preliminary injunction barring the enforcement of the Child Online Pornography Act, because the statute likely violates the First Amendment. A divided U.S. Supreme Court on June 29, 2004 barred enforcement of a 1998 federal law designed to keep Internet pornography away from minors because it likely violates constitutional free-speech rights. By a 5-4 vote, the high court handed a defeat to the Justice Department in a case that has pitted free-speech rights against efforts by Congress to protect minors from online pornography. The Supreme Court Justices pose for an official picture December 5. Pictured in the front row (L-R) Associate Justice Antonin Scalia, Associate Justice Associate Justice John Stevens, Chief Justice of the United States William Rehnquist, Associate Justice Sandra O'Connor and Associate Justice Anthony Kennedy. Standing (L-R) are Associate Justices Ruth Ginsburg, David Souter, Clarence Thomas and Stephen Breyer. Photo by Jason Reed/Reuterssee also: internet privacy decisions via EFF
patents.com merely descriptive
IN RE OPPEDAHL & LARSON LLP, (Fed Cir. 2004)The Trademark Trial and Appeal Board properly refused to register the mark patents.com to plaintiffs because it is merely descriptive under U.S.C. section 1052(e)(1).
a really useful item
PIVOT POINT INT'L v. CHARLENE PRODS., INC., (7th Cir. 2004) [pdf]The court found that a mannequin head was copyrightable subject matter under the Copyright Act of 1976, because it is a useful item. The case was remanded for determination of the copyright infringement claim on the merits.
Web Publishers Not Liable for Advertisers' Activities
Web site owners can rest a little easier following a little-noticed court decision last month that bolsters legal protections against lawsuits arising from the activities of their advertisers. Ramey v. Darkside involved a Washington, D.C., area dancer who sued a Web site publisher after one if its advertisers used a photo of her without her permission. [c-net]
Back Out the US Public Domain
Copyfight: All Your Public Domain Are Belong to Us: "Disappointing, but not unexpected news about the ability of the government to restore copyright to public domain works. In Luck's Music Library v. Ashcroft [PDF] (21 pages), the United States District Court for the District of Columbia upheld the ability of the government to restore copyright for foreign works that had entered the public domain in the US, but were copyrighted in their home country. The case challenged the constitutionality of Section 514 of the Uruguay Round Agreements Act, codified at 17 U.S.C. 104a. The case had been held up until after the Eldred decision. The plaintiffs were a sheet music company and a film restoration company."
DirecTV Loses Weapon in Piracy Fightlaw.com: In a setback to DirecTV's fight against satellite piracy, a federal appeals panel on Tuesday ruled that the company cannot sue people under a wiretapping law just because they possess cards allowing them to intercept its signal. The 11th Circuit said that DirecTV must be able to show that the alleged pirate actually used the device. It's the first federal appellate decision on the issue, and thus is controlling law nationally for the time being. See DIRECT TV INC. v. TREWORGY, (11th Cir. 2004) (18 U.S.C. section 2520(a) does not create a private cause of action against a defendant found in illegal possession of equipment used to intercept satellite transmissions in violation of the criminal statute). [6/16/2004
Statutory Copyright Damages
Copyfight: The First Circuit has issued an opinion discussing how to calculate statutory damages for copyright infringement. Venegas Hernandez v. Sonolux Records. Nos. 03-2014, 03-2015 (First Circuit June 7, 2004). 17 USC Section 504(c) states that a copyright owner can elect to recover statutory damages "For all infringements involved in the action, with respect to one work, for which any infringer is liable individually." The issue is whether that means you multiply the amount of statutory damages by the number of plaintiff's copyrighted songs involved in the suit (here, two songs) or the number of infringing works for which the defendant is liable (here, sixteen infringing albums which each included at least one of the plaintiffs' songs). Answer- the number of infringed works.
Ad Restrictions Unconstitutional
AP reports that 'A judge said Wednesday that a federal law aimed at restricting the display of paid, pro-marijuana ads in buses and subway stations is unconstitutional, improperly infringing on free speech rights.'" [via How Appealing]
Attorney's Fees in mixed IP Case
Award of attorney's fees and costs to prevailing defendants was authorized by the Copyright Act even though much, if not all, of the legal work performed in the case had application to the state law claims as well as the copyright claim. Invessys, Inc. v. McGraw-Hill Cos., Ltd., (1st Cir. May 21, 2004)
Defamation: Single Pub Rule
The single-publication rule applies to defamatory statements published on Internet Web sites; the rule's one-year statute of limitations bars plaintiffs' defamation cause of action. Traditional Cat Ass'n, Inc. v. Gilbreath, California Appellate, May 6, 2004.
Sex E-Mails to Minors Not Shielded by First AmendmentMiami Daily Business Review: "In a victory for child protection advocates and law enforcement, a state appeals court rejected a first-ever constitutional challenge to the Florida Computer Pornography and Child Exploitation Prevention Act of 1986. Monday's unanimous ruling by the 1st District Court of Appeal in Tallahassee holds that the First Amendment to the U.S. Constitution does not protect e-mails intended to lure children into illegal sexual activity."
Freebies decision
Barbie v. The Rockettes
MATTEL, INC. v. GOLDBERGER DOLL MFG. CO. (2d Cir. 2004) Copyright law bars competitors from copying plaintiff's realization of upturned nose, bow lips, and widely spaced eyes; district court erred in concluding that copyright protection does not extend to Barbie's eyes, nose, and mouth. Summary judgment for defendants is vacated.
Content Distribution on the Internet: VA
PSINET, INC. v. CHAPMAN, (4th Cir. 2004) In light of current technology, Va. Code Ann. section 18.2-391, which criminalizes the dissemination of material harmful to minors over the Internet, violates both the First Amendment and the Commerce Clause.
Internet Jurisdiction: New York
Internet casino, World Interactive Gaming Corporation, based in Suffolk County, New York claimed that they were not subject to New York gambling laws, since their Internet servers were licensed in Antigua. However, the Supreme Court of the State of New York ruled that the Caribbean location was irrelevant, since the actual transmission of information from New York via the Internet constituted gambling activity within the state. [World Interactive Gaming Corporation (1999)]
Prior Work Filtered before Access / Analysis in Copyright Claim
MURRAY HILL PUBL'NS, INC. v. TWENTIETH CENTURY FOX FILM CORP., (6th Cir. March 19, 2004) via FindLaw: Elements of a copyright defendant's work that were created prior to access to a plaintiff's work are to be filtered out at the first stage of substantial-similarity analysis. Because no reasonable jury could have found defendant's movie substantially similar to plaintiff's screenplay solely on the basis of the non-filtered remainder, judgment as a matter of law must be entered for defendant.
H.R. 3872: Consumer Access to Information Act of 2004H.R. 3872: To prohibit the misappropriation of databases while ensuring consumer access to factual information.
SCO Attacks Linux UsersTHE SCO GROUP, INC. v. AUTOZONE, INC. (March 3, 2004)
On The Day That The UNIX Software Owner Releases Its First Quarter Earnings Report, It Files A Copyright Infringement Lawsuit Against The Auto Parts Retailer, Claiming The Company Uses Linux Computer Operating System Software That The Software Company Claims Infringes Upon Its Copyrighted Programming Code [PDF]THE SCO GROUP, INC. v. DAIMLERCHRYSLER, CORP. (March 3, 2004)
In Another UNIX Suit, The Software Owner Files A Complaint In Michigan State Court Following The Motor City-Based Car Manufacturer's Alleged Refusal To Certify Its Compliance With The Plaintiffs' Software License, Suspecting That The Car Maker Is 'Migrating Its Installed Base To The Linux Operating System.' [PDF]see also: Court Ordes SCO to show more code
The 'No Electronic Theft' Act
17 U.S.C. 506: Any person who infringes a copyright willfully either– (1) for purposes of commercial advantage or private financial gain, or (2) by the reproduction or distribution, including by electronic means, during any 180-day period, of 1 or more copies or phonorecords of 1 or more copyrighted works, which have a total retail value of more than $1,000,shall be punished as provided under section 2319 of title 18, United States Code. For purposes of this subsection, evidence of reproduction or distribution of a copyrighted work, by itself, shall not be sufficient to establish willful infringement.
Em sues Apple
Rap Musician Eminem's Copyright Lawsuit Against Apple Computer, Advertising Agency TBWA/Chiat/Day, MTV, And Viacom, Alleging The Computer Company Used "Lose Yourself" in an iPod ad without his consent [Findlaw] [Eight Mile Style v. Apple Computer Complaint]
Judge Posner, copyright, and comic booksGaiman v. MCFarlane, 7th Cir. 2004: A Spawn who talks medieval and has a knight’s costume would infringe Medieval Spawn, and if he doesn’t talk medieval and doesn’t look like a knight then he would infringe Spawn.see also: Neil Gaiman's Journal
Canadian court grabs some Internet jurisdiction
blogbook: "Article on a jurisdictional ruling in a defamation case brought in Toronto against the Washington Post by a former UN official, over an article written while he was in Kenya, allegedly mismanaging an allegedly corrupt UN program there ... the Canadian court has jurisdiction."
WhenU Pit Trademark Law Against Competition
EFF: "Online contact lens distributor 1-800 Contacts, Inc., won an initial trademark violation lawsuit against WhenU.com, Inc., in October 2002, claiming that WhenU.com's SaveNow software confused potential customers by generating ads related to the words and web addresses people enter into online search engines and web browsers. WhenU.com appealed the lower court's ruling in December 2003 explaining that its ads -- known as pop-ups, pop-unders, and other types -- are all generated in a manner that does not confuse web users."Donna Wentworth: Fred von Lohmann, in a media release on the amicus brief EFF signed in 1-800 Contacts v. WhenU: "If I'm walking to my neighborhood drugstore to purchase contact lenses and on the way I see a pharmacy with lenses at half the price, I should be able to stop by and take a look at the competition before making my purchase."
Wine Imports & First Amendment
Swedenberg v. Kelly (2d Cir 2004): New York's Alcoholic Beverage Control Law violates the First Amendment insofar as it prohibits all commercial speech pertaining to the sale of alcoholic beverages directed to New York consumers by unlicensed entities. Its prohibition of the direct sale and shipment of wine from unlicensed wineries to New York consumers lies within the 21st Amendment and thus is exempted from the normal operation of the Commerce Clause.
18 U.S.C. section 2252A
USA v. Harris (2d Cir. 2004): 18 U.S.C. section 2252A(a)(5)(B), which prohibits the possession of child pornography, is a proper exercise of Congress's powers under the Commerce Clause.
Leave a Message
Los Angeles Superior Court judge ruled that the plaintiff had no expectation of privacy when he left message on Snoop's answering machine and it ended up as part of a song.
Jorgensen v. Epic/Sony Records
Evidence of corporate receipt of unsolicited work is insufficient to raise a triable issue of access where there is no evidence of any connection between the individual recipients of the protected work and the alleged infringers. With respect to some defendants, summary judgment is vacated as plaintiff did proffer sufficient evidence on the issue of access. Jorgensen v. Epic/Sony Records (2d Cir. 2003) [pdf]
Owning Beethoven
Professor Lenz has a very interesting report on a recent ECJ decision, concerning trademarks consisting of sounds: The plaintiff in [Shield Mark v. Kist] had registered the first nine notes of the musical composition Für Elise, by Ludwig van Beethoven. He is suing a competitor for trademark infringement based on that registration.The Court says that sounds can be registered as trademarks in Europe and that for compositions, the description in a stave (musical notation) is sufficiently clear, precise, self-contained, easily accessible, intelligible, durable and objective.That probably means that the plaintiff will win his case. Which in turn means that he owns Beethoven's famous composition as a trademark for various products and services in Classes 9 (computer software (recorded), etc.), 16 (magazines, newspapers, etc.), 35 (publicity, business management, etc.), 41 (education, training, organisation of seminars on publicity, marketing, intellectual property and communications in the business sector, etc.) and 42 (legal services) of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as amended and modified.See also IPKat's discussion.
Proprietary Database, Public Data and Copyright
IPTAblog: "In Assesment Technologies of WI, LLC v. WIREdata, Inc., the Seventh Circuit Court of Appeals held that one may copy and access a copyrighted database in order to extract non-copyrightable public information from that database."Plaintiff, a database software manufacturer, cannot by contract or copyright prevent municipalities from revealing their own data that exists within the database, especially when the complete data are unavailable anywhere else, and might constitute copyright misuse. [pdf]
Trademark Trial and Appeal Board Inquiry System
TTABVUE: The Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) maintains this system, which allows users to view images of documents concerning trademark disputes. TTABVUE includes images of most documents filed since January 2003. Some earlier records covering the period June 2001 to January 2003 also are available. Access is available only by entering a TTAB proceeding number. [via TVC]
Publishers Defend Right To Satirize Public Officials
The case, New Times, Inc. v. Isaacks et al, is a defamation action brought against the Dallas Observer, an alternative newsweekly, and its parent company, New Times, Inc., as a result of the publication of a fictitious article satirizing the way in which two local elected officials enforced a school violence "zero-tolerance" policy by jailing a 13-year old student for writing a school-assigned Halloween essay. [FEN]
Beastie Boys Sampling Not Infringement
The Ninth Circuit has issued a divided opinion finding that the Beastie Boys are not guilty of copyright infringement for their sampling of a six-second, three-note segment of a performance by accomplished jazz flutist, James W. Newton. The decision is here Newton v. Diamond, et. al. [PDF]. [via Ernest Miller]
The King, Copyright and Fair Use
In a copyright infringement action, the district court's order granting a preliminary injunction is affirmed where the court did not abuse its discretion when it weighed the four statutory fair-use factors together and determined that plaintiffs would likely succeed on the merits. ELVIS PRESLEY ENTERS., INC. v. PASSPORT VIDEO, No. 02-57011 (9th Cir. 2003) [pdf] See also Denise Howell's mini-discussion here.
Judge Refuses Caterpillar Request to Block Disney Release
AP: "A federal judge refused to block the U.S. release of George of the Jungle 2, a Walt Disney Co. comedy that Caterpillar Inc. contends will hurt its image and sales of children's products. The manufacturer filed a trademark infringement lawsuit, alleging that the company's reputation will be tarnished because its well-known yellow earth-moving equipment is linked to the film's villains and described as deleterious dozers."
Spider-Man Billboard Case Dismissed Without Prejudice
The Trademark Blog: On appeal, the Second Circuit has affirmed the dismissal of the federal claims. However, it has reversed the dismissai WITH prejudice, instead remanding the case to the District Court to enter a dismissal WITHOUT prejudice, because the District Court should not have exercised supplemental jurisdiction over the state trespass claim. A NY State Court has not yet ruled on the question as to whether physical damage is an element of trespass - the same issue raised by the Intel v. Hamidi case - and thus dismissal with prejudice was not proper. Plaintiff can now re-file in state court should it choose to do so. Sherwood 48 v. Sony, 02-9100 (Sept 29, 2003)
Misappropriation Construed
The term "misappropriation" in an insurance policy issued by defendant refers generally to the wrongful acquisition of property, and the ambiguity in the term "misappropriation" must be interpreted in favor of coverage; summary judgment to defendant is vacated. State Auto Prop & Cas Ins. Co. v. Travelers (4th Cir. 2003)
Gator.com v. L.L. Bean (9th Cir. 2003)
Findlaw: "A Maine corporation's contacts with California, particularly its substantial mail-order and internet-based commerce in the state, are sufficient to support assertion of general personal jurisdiction."The Trademark Blog: "The Ninth Circuit found that California courts could exercise general jurisdiction over L.L. Bean, based on its continuous and systematic contacts with the state, specifically those contacts arising from its operation of a 'virtual store' over the Internet, national advertising and mailings into California. While it had never registered to do business in California, L.L. Bean derives 6% of its sales from California and sources products from there. Bancroft & Masters v. Augusta National, 223 F.3d 1082 (9th Cir. 2000) is one of the few other 9th Circuit cases evaluating whether contacts over the Internet can give rise to general jurisdiction (in that case, they didn't)."
Film Clips not Fair Use
A preliminary injunction is affirmed against online display of clip reviews," an approximately two-minute segment of a movie, copied without authorization from the film’s copyright holder. Video Pipeline v. Buena Vista (3d Cir. 2003)
2d Circuit: D&O Policy Is Not an AssetProceeds of an insurance policy covering legal expenses of the Rigas family and Adelphia Communications officers is not an asset of the bankrupt company. [New York Law Journal]
Anti-SLAPP Law Strengthened
Finke v. Disney: "we hold a defendant may move to strike a cause of action under section 425.16 if at least one of the predicate acts was an act in furtherance of the defendant's right to petition or free speech in connection with a public issue." Analysis at So Cal Law Blog. [8/3/2003 23:55]
Marty on VirginThe Trademark Blog discusses Virgin Enterprises v. Nawab, et. al. (2d Cir. July 11, 2003): "This is why you can never tell a client that you will definitely win. The District Court may display a 'considerable misunderstanding' of the likelihood of confusion analysis and you lose."
geographically deceptively misdescriptive and final judgment
The Trademark Trial and Appeal Board applied an outdated standard for section 2(e)(3) of the Lanham Act, in its refusal to register a mark because the mark was primarily geographically deceptively misdescriptive. In re Les Halles (2003).In entering summary judgment in a suit for infringement on the basis of claim preclusion, the district court erred in concluding that the dismissal of a prior related action was a final adjudication on the merits. Media Technologies Licensing, LLC v. The Upper Deck Co. (Fed Cir. 2003).
Insured's TM infringment Claim Not Covered by Advertising Injury
In an action alleging that an insurer was required to reimburse plaintiff for part of the cost of defending a counterclaim for trademark infringement, plaintiff was not entitled to coverage under the insurance policy because infringement fell outside the provisions of the policy relating to "advertising injury." Sport Supply Group, Inc. v. Columbia Cas. Co. (5th Cir., 2003).
4th Cir. says no jurisdiciton in tm infringment case
An Illinois organization did not subject itself to personal jurisdiction in Maryland by operating an Internet website thatallegedly infringed the trademark rights of a Maryland insurance company. Carefirst Of Maryland, Inc. v. Carefirst Pregnancy Ctrs. (4th Cir. 2003)4th Circuit also decides domain name registrar immunity case.
Florida S.Ct to consider commerical misappropriation of privacyAn appeal involving the film "The Perfect Storm" provides a perfect opportunity for the Eleventh Circuit to certify a Florida state law question to Supreme Court of Florida. Issues involve whether there is a relational right of privacy and whether Florida statute S. 540.08 applies to unauthorized commercial misappropriation and invasion of privacy concerning the motion picture The Perfect Storm. See this unanimous per curiam opinion. [Actual Malice / Dishings / How Appealing]
Federal Circuit disapproves of Jack-OffThe Federal Circuit has affirmed a TTAB refusal of the mark 1-800-JACK-OFF for 'adult entertainment services.' In re The Boulevard Entm't, Inc. (substantial evidence supports the Trademark Trial and Appeal Board's finding that the term JACK OFF is a vulgar reference to masturbation and that plaintiff's use of the marks refers to such meaning, thus registration of the mark is barred by section 2(a) of the Trademark Act, which precludes registration of marks that consist of immoral or scandalous matter).
Kelly v. Arriba Soft
An internet search engine operator's "thumbnailed" reproductions of a copyright plaintiff's pictures amounted to a fair use under the Copyright Act. Kelly v. Arriba Soft, No. 00-55521 (9th Cir. July 07, 2003) More on Kelly: 9th Circuit Rules Creating Thumbnails from Other Webpages is Fair Use While Framing Other WebPages May Infringe Copyrights
Supreme Court Won't Hear Nike Ad Case
Volokh, John Maltbie, WaPo, Supreme CourtPrior Items:Nike, SCOTUSblog, Hilden, The New Jersey Law Journal, Tony Mauro, Denise Howell
Tiger's '1997 Masters' painting does not violate trademark law
"We hold that, as a general rule, a person's image or likeness cannot function as a trademark," Judge James Graham wrote in the majority opinion. [foxsports.com] [ETW CORP. v. JIREH PUBL'G, INC. (6th Cir, 2003]
4th Circuit finds no duty to defend 'kit car'
Underlying complaints for trademark infringement did not fall under the scope of coverage as "personal and advertising injury" in plaintiff's policy, thus defendant insurer owed no duty to defend the claims against plaintiff for manufacturing an infringing "kit car." SUPERFORMANCE INT'L INC. v. HARTFORD CAS. INS. CO., (4th Cir.).
Trademark Blog: Fourth Circuit Case on Abandonment
Sloane v. Auditron Electronic, 02-1787 (Fourth Circuit, June 5, 2003) (unpublished).Practice point for pro se trademark plaintiffs: Always bring 43(a) because if for no other reason, your registration could get cancelled.Another practice point: plaintiff's loss of his registered rights illustrates why someone's first trademark application should be for a word mark or 'typewriter letters' as some call it. A company is much more likely to change its stylization over time than its housemark. [click here for more analysis from The Trademark Blog]
Opposition of mark that dilutesGary at The Statutory Construction Zone discusses the Enterprise Rent-A-Car v. Advantage Rent-A-Car (Fed. Cir. May 30, 2003)
(Dyk) wherein the court held that "the owner of a famous mark cannot oppose registration based on dilution where its mark did not achieve fame prior to the applicant’s prior use in a limited geographic area, and that a trademark holder cannot oppose registration based on claims of dilution under state law."
Why you should have a copyright notice on your blog
The Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. Dastar v. 20th Century Fox Film Corp. (Sup. Ct. 2003)
Or you could have a Creative Commons notice.
CINCINNATI INS. CO. v. ZEN DESIGN GROUP, LTD. (6th Cir.)
An insurer had a duty to defend where a complaint of infringement of a slogan "arguably" stated a claim for liability for an advertising injury under Michigan law.
ENTER. RENT-A-CAR CO. v. ADVANTAGE RENT-A-CAR, INC. (Fed. Cir.)
Under the Trademark Amendments Act of 1999 and Federal Trademark Dilution Act of 1995, the owner of a famous mark cannot oppose registration based on dilution where its mark did not achieve fame prior to the applicant's prior use in a limited geographic area. A trademark holder cannot oppose registration based on claims of dilution under state law, under 15 U.S.C. section 1063(a). [via FINDLAW see also FindLaw Opinion Summaries Archive: September 2000 to the Present]
Corporate Names and Domain Names Alone Do Not Equal Trademark Rights
Article explains, as many entrepreneurs have discovered to their dismay, that registering a corporate name and a domain name alone, do not create protectable trademark rights. [What's In a Name? BusinessWeek Online]
$35 Million Patent Verdict Against Internet Auction Company eBay [EDVA / pdf]
TTAB applied an outdated standard in its analysis, under section 2(e)(3) of the Lanham Act, when it refused to register the mark CALIFORNIA INNOVATIONS to a Canadian-based corporation because it was geographically deceptively misdescriptive [Fed. Cir.]
Determining substantial similarity in copyright infringement cases requires identifying which aspects of the artist's work, if any, are protectible by copyright, then determining whether the allegedly infringing work is substantially similar to protectible elements of the artist's work. [6th Cir.]
District court did not clearly err in finding that plaintiff had failed to show that its pill configuration and color were non-functional and thus not eligible for trade dress protection [3d Cir. / pdf]
Who pays for discovery of E-mail?
Ernie discusses the effect of a recent order requiring defendant to pay for the search and recovery of e-mail messages requested by a plaintiff: I think that a new aresenal in discovery is going to be the 30(b)(6) deposition of the IT person at an organization, who can be used to ferret out the information is electronically archived and who can be asked how burdensome it would be to retrieve it.
Law Practice Management Resources
The ABA Section of Litigation has assembled a powerful set of resources to assist you in your law practice: Civil Trial Practice Standards, Guidelines for Conduct, Uniform Task-Based Management System and Civil Discovery Standards.
Another Step Closer to Citing Unpublished Opinions
The federal judiciary has taken the next key step toward the enactment of a rule that would allow lawyers to cite unpublished opinions in all appeals courts. [Legal Times]
New Standards Proposed for Cost Shifting in E-Discovery
In an employment discrimination suit against an investment bank, a Southern District of New York judge has proposed a new standard for evaluating whether the cost of electronic discovery requests should be shifted to the plaintiff. [New York Law Journal]
IP Protection Strategies
Intellectual property isn't always easy to identify. It's even harder to protect. Here's how CSOs can work with others to protect their companies' future. [Don't Lose Your Head CSO Magazine]
New technologies face legal headaches
Lawyers at the O'Reilly Emerging Technology Conference warned developers yesterday that companies face a host of legal issue that they need to consider when developing emerging technology. EFF lawyer Fred von Lohmann said companies that provide services, end-user licenses, and increasingly, automatic updates, could become targets of IP holders who argue that such companies could do more to stop copyright infringement because they have established an ongoing relationship with their customers.
Protection for removal or alteration of copyright Management Info
In 1998, Congress passed the WIPO Copyright and Performances and Phonograms Treaties Implementation Act. Part of that statute provided remedies for the alteration or removal of what the statute termed "Copyright Management Information" -- information such as the author's copyright notice, name, and date of publication, for example. See 17 U.S.C. §§ 1202, 1203. The statute did not provide a remedy for the violation of these provisions until 1998, but as of that time provided for actual damages or statutory penalties of up to $25,000 and attorney fees. [Law.com (sub req'd)]
Jury Sides With Photographer Over Reuse of Work in CD-ROMs
U.S. District Court jury in Miami found last month that the National Geographic Society willfully violated a free-lance photographer's copyright by republishing his work in a CD-ROM anthology. [Law.com]
Corporate Disclosure Statements
Effective December 1, 2002, a new Rule 7.1 was added to the Federal Rules of Civil Procedure governing the form of the corporate disclosure statement that must be filed with the Court along with the first pleading filed (complaint for a plaintiff; answer for a defendant). Previously, disclosure statements were governed only by local rules such as Local Rule 1.9 in the Sourthern and Eastern Districts of New York. The effect of the new rule is to expand the disclosure required. This is because Rule 7.1 is in addition to any local rules. The combination of Fed. R. Civ. P. 7.1 and Local Rule 1.9 means that disclosure statements for corporate parties in S.D.N.Y. and E.D.N.Y. must include the following information:1. The name of any parent corporation (not just a publicly-held corporate parent) of the corporate party. Moore's on Federal Practice indicates that the term "parent" includes corporate grandparents, great-grandparents, etc. as well.2. Any publicly-held corporation that owns at least 10% of the stock of the corporate party.3. Any publicly-held subsidiary or affiliate of the corporate party.If you are asked to prepare, type or review a Rule 1.9 statement, please keep this revised disclosure requirement in mind.
Registration of the copyright in a work does not implicitly register the copyright in its derivative workIn a copyright infringement action involving a rag doll, 1) registration of the copyright in a work does not implicitly register the copyright in its derivative work, and 2) a work does not violate a copyright holder's right to control the production of derivative works if it is not substantially similar to the copyrighted original. Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., (2d Cir. 2003) [pdf]
