John Welch, over at the inimitable TTABlog, has this summary of the Trademark Trial and Appeal Board’s decision in which it found that Reed Elsevier’s use of the domain name lawyers.com for a law-related database is generic, thus not entitled to trademark protection.
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Agents of the Kansas State Gaming Agency visited Zeke Rupnick in his office, and questioned him about allegations that he was illegally in possession of confidential business information. The agents seized his laptop computer, and a magistrate in a different county issued a warrant authorizing the search of the hard drive’s contents. Rupnick was convicted of felony computer crime based on the evidence obtained from the laptop.
Before trial, Rupnick sought to suppress the evidence contained on the computer, claiming violation of his Fourth Amendment rights. The trial court denied the motion to suppress. Rupnick sought review with the Kansas Supreme Court, which overturned the conviction.
The court held that the initial seizure of the laptop computer from Rupnick’s office without a warrant was justified, on the basis of probable cause plus the exigent circumstances presented by the possibility that Rupnick could easily delete the relevant data. The later warrant and search of the laptop, however, provided the basis for the reversal of the conviction.
The court began its analysis of the legality of the search by answering the question, which was one of first impression before the court, of whether a warrant must be obtained before the government may search the contents of a personal computer. In answering the question in the affirmative, the court looked to the Tenth Circuit cases of U.S. v. Carey, 172 F.3d 1268 (10th Cir. 1999) and U.S. v. Walser, 275 F.3d 981 (10th Cir. 2001).
In this case, the agents had indeed obtained a warrant before searching the contents of the laptop’s hard drive. However, the warrant failed to comply with the relevant Kansas statute (K.S.A. 22-2503), which requires that the search warrant be executed in the judicial district in which the magistrate judge resides. Because the magistrate that issued the warrant did not reside in the county in which the warrant was executed (i.e., where the search of the hard drive was made), the warrant was invalid, and the search was unlawful.
Despite the government’s argument that the defect in the warrant was a mere “technical irregularity,” the court strictly enforced the statute. The felony conviction was reversed and remanded for further proceedings.
State v. Rupnick, — P.3d —, 2005 WL 3439897 (Kan., December 16, 2005).
A few days before the public groundbreaking ceremony for the shopping mall that would be known as Provo Towne Centre, Plaintiff Rasmussen, unaffiliated with the mall, registered the domain name provotownecentre.com. Claiming an intent to start an online shopping mall, he also registered the domain names provotownecentre.biz and provotownecentre.net.
In an arbitration proceeding brought by the owner of the Provo Towne Center mall before the World Intellectual Property Organization (“WIPO”) pursuant to the Uniform Domain Name Dispute Resolution Policy, Rasmussen was found to have registered the domain names in bad faith. As an “apparent appeal” of the WIPO decision, Rasmussen filed suit in a Utah federal court against the mall owner, General Growth Properties, Inc.
General Growth filed several counterclaims against Rasmussen, alleging, among other things, violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a). It then moved for summary judgment on that claim. (It is interesting to note that although the case had at its root the use of a domain name, the opinion makes no mention of the Anticybersquatting Consumer Protection Act, another portion of the Lanham Act specifically drafted to address a cybersquatting case like this one.)
The court granted General Growth’s motion for summary judgment, and ordered the domain names transferred.
In its opinion, the court considered two elements to find that no genuine issue of material fact remained in regard to the alleged violation of Section 43(a). First, the court found that although General Growth’s mark “Provo Towne Centre” was merely descriptive of the services that General Growth provided, there was “exhaustive, unrebutted evidence” to show the term had acquired secondary meaning. Thus, it was protectable as a trademark.
Secondly, the court considered whether the use of the domain name would create a likelihood of confusion with General Growth’s “Provo Towne Centre” mark. It found that confusion would likely occur. The court determined that the marks were virtually identical, and that the bad faith intent found by the WIPO panel had been confirmed in the record before the court. It found the similarities between the parties’ “use and manner of marketing the services” was “problematic,” comparing Rasmussen’s intended online shopping mall with General Growth’s establishment of a successful site promoting the Provo Towne Centre mall. The court also found that the lack of sophistication in the affected consumers and the strength of the Provo Towne Centre mark weighed in favor of a finding of likelihood of confusion.
Accordingly, because General Growth had a protectable mark, and because Rasmussen’s use of the domain name would likely cause confusion, the court held that no reasonable jury would find in Rasmussen’s favor under Section 43(a).
Rasmussen v. General Growth Properties, Inc., 2005 WL 3334752 (D. Utah, December 7, 2005).
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Plaintiff Darden filed an application with the Copyright Office to register his claim of copyright in the text, maps and formatting of the website Appraisers.com. The Copyright Office denied the application, and this denial was affirmed each time during two reconsiderations within the Copyright Office. Noting that in general, the formatting of web pages is not copyrightable, the examiners determined, among other things, that Darden’s claim of copyright was too broad: the website as a whole lacked the requisite amount of originality to sustain registration.
Darden sought review in federal court of the Copyright Office’s adverse decision. However, the court affirmed the decision, holding that the denial was not an abuse of discretion. The court determined that the examiners at the Copyright Office had “intelligently account[ed]” for the denial via “reasoned decision making.”
The real problem with Darden’s application was that he was trying to claim copyright not just in the specific textual and graphical elements of the site, but was trying to claim copyright in the basic way the website was laid out. The “unoriginal formatting elements” and “uncreative layout” are not subject to protection, thus could not be included in the registration. The examiners had explained:
[T]he longstanding practice of the Copyright Office is to deny registration of the arrangement of elements on the basis of physical or directional layout in a given space, whether that space is a sheet of paper or a screen of space meant for information displayed digitally.
Accordingly, the Copyright Office was correct when it denied Darden a copyright registration for the style in which many web pages are formatted.
Darden v. Peters, — F.Supp.2d —, 2005 WL 3370676 (E.D.N.C., December 6, 2005).
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Copyright
Web Developement
Law
In a copyright infringement action pending in the Eastern District of Pennsylvania, the court has refused to grant Paramount Pictures’ motion for summary judgment. Defendant John Davis has been accused of being the “first propagator” – that is, the first person to offer illegal copies for P2P distribution – of last year’s movie “Lemony Snicket’s A Series of Unfortunate Events.”
The court determined that several material issues of fact remained, thus precluding summary judgment. The court ruled that Davis should be allowed to present evidence at trial as to, among other things, whether he was properly identified as the person engaging in infringing activity over the eDonkey network, and whether he was indeed the “first propagator.”
The court put forth a significant amount of effort analyzing Paramount’s claim that Davis should be sanctioned for reformatting his hard drive just a few days after receiving notice of the potential lawsuit against him. Because of this activity, all evidence of whether eDonkey or a copy of the Lemony Snicket movie were ever on Davis’ computer was lost. The court found that given the circumstances, Davis should have known to keep this evidence intact. The court also determined that this “spoliation” of relevant evidence caused significant prejudice to Paramount, resulting in substantial unfairness and the need to deter such conduct in the future. Although the court denied Paramount’s request to enter judgment in its favor because of the spoliation, the court stated that it would consider the deletion of the information in weighing Davis’ liability at trial.
Perhaps the most interesting aspect of this opinion lies not in the legal analysis, but in the detailed explanation by the court of the process by which Paramount monitors file sharing networks to determine whether any copyrighted works are being infringed. There is also a detailed description of the forensics involved in identifying “first propagators.” Anyone interested in the detective work that goes on prior to file-sharing lawsuits would find this case particularly interesting.
Paramount Pictures Corp. v. Davis, 2005 WL 3303861, (E.D. Pa., December 2, 2005).
Recently there has been a fair amount of controversy on the reliability of the well-known open source project known as Wikipedia. [See, e.g., here and here.] Although not everyone is convinced that Wikipedia can be trusted to always tell the truth, it is interesting to note that in the past year or so several courts, including more than one federal circuit court, have cited to it to fill in background facts relevant to cases before them. Here are some examples, and the terms or facts elaborated therein:
At least one court, however, has noted the risk of error in relying on an open source project, and refused to consider what Wikipedia had to say. The Tennessee Court of Appeals noted:
Given the fact that this source is open to virtually anonymous editing by the general public, the expertise of its editors is always in question, and its reliability is indeterminable. Accordingly, we do not find that it constitutes persuasive authority. [English Mountain Spring Water Co. v. Chumley, 2005 WL 2756072 (Tenn.Ct.App., October 25, 2005).]
The English Mountain court apparently took this whole notion of reliability pretty seriously. It wouldn’t even take Wikipedia’s word for it that “bottled water” is a “beverage.”
Plaintiff failed to allege antitrust injury resulting from Free Software Foundation’s use of GPL for Linux.
Plaintiff Wallace filed an antitrust lawsuit against the Free Software Foundation (“FSF”), claiming that FSF was conspiring with the likes of IBM, Red Hat, and Novell to fix the price of the intellectual property in the Linux operating system. Specifically, Wallace alleged that making the software available for free under the General Public License (“GPL”) has an anticompetitive effect, in that developers may be unwilling to create better products, knowing that they will not be rewarded financially for their efforts.
FSF moved to dismiss the complaint, and the court granted the motion. It held that although the allegations set forth a violation of Section 1 of the Sherman Act, the complaint could not survive because Wallace had not sufficiently alleged that he suffered an antitrust injury.
Wallace’s only allegations in this regard were, essentially, that he was unwilling to enter a market where he would have to compete with the free software distributed under the GPL. He had not alleged any injury to himself as a consumer, nor had he alleged injury to the software market as a whole. Because the complaint lacked this essential element of antitrust injury, the court dismissed the action.
Wallace v. Free Software Foundation, Inc., No. 05-618, 2005 WL 3239208 (S.D. Ind., November 28, 2005) (Not selected for official publication).
The recent case of Egilman v. Keller & Heckman LLP addressed a close question arising under a provision of the Digital Millennium Copyright Act (“DMCA”) found at 17 U.S.C. § 1201. The issue was whether accessing a computer system through the unauthorized use of a valid username and password constitutes an unlawful circumvention of a technological measure. The court held that such conduct is not “circumvention,” and thus not a violation of the DMCA.
Plaintiff Egilman maintained a website that was only available to visitors who entered a correct username and password. He had employed such measures so that only certain people (e.g., his students) would have access. Egilman alleged that, without authorization, the defendants obtained the correct username and password combination, and subsequently gained “improper and illegal” access to the site. He filed suit in federal court asserting, among other things, that the use of the unauthorized username and password was an illegal circumvention of a technological measure, in violation of 17 U.S.C. § 1201.
One defendant moved to dismiss for failure to state a claim, and the others moved for judgment on the pleadings. The court granted the motions.
An essential fact that drove the court’s holding was that the username and password which the defendants allegedly used were the actual username and password which the plaintiff had chosen to protect his website from unauthorized access. For this reason, the defendants were alleged to have merely “used” the technological measure put in place by the plaintiff, and not to have “circumvented” the measure. The court specifically adopted the language and analysis of the case of I.M.S. Inquiry Mgmt. Sys., Ltd. v. Berkshire Info. Sys., Inc., 307 F.Supp.2d 521 (S.D.N.Y. 2004), a case with similar facts and issues.
Quoting from I.M.S., the court stated:
Whatever the impropriety of defendant’s conduct, the DMCA and the anti-circumvention provision at issue do not target the unauthorized use of a password intentionally issued by plaintiff to another entity.
The court went so far as to say:
It was irrelevant who provided the username/password combination to the defendant, or, given that the combination itself was legitimate, how it was obtained. (Emphasis added.)
With this last statement, namely, that the means by which the username and password are obtained is irrelevant, did the court adjudicate a loophole in Section 1201? What if a defendant uses technological means to guess a username and crack a password? In that case, the defendant would ultimately be using the plaintiff’s intended username and password, and thus, according to the court, would merely be “using” and not “circumventing” a technological measure. In such a case, could one really say that for purposes of a Section 1201 analysis, how a username and password are obtained is irrelevant?
Egilman v. Keller & Heckman, LLP, — F.Supp.2d —, 2005 WL 3077260 (D.D.C., November 10, 2005).
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DMCA
Privacy
Circumvention
Third Circuit reverses dismissal of indictment against website operator.
The recent Third Circuit decision in the case of U.S. v. Extreme Associates is important to the law of the Internet, because from it we learn that the federal statutes which prohibit the distribution of obscene material – over the Internet or otherwise – are not unconstitutional. At least not yet.
Defendant Extreme Associates, the operator of an adult website, was indicted for distributing obscene material in violation of certain federal obscenity statutes (18 U.S.C. 1461 and 1465). The District Court, concluding that the Supreme Court’s pro-privacy decision in Lawrence v. Texas, 539 U.S. 558 (2003) had seriously undermined the constitutionality of the statutes, dismissed the indictment.
On appeal, the Third Circuit concluded that the District Court overstepped its bounds by declaring the statutes unconstitutional, where the Supreme Court has not expressly declared the statutes unconstitutional. The Court reaffirmed this essential statement of the doctrine of stare decisis: “For district and appellate courts in our judicial system, [a Supreme Court decision] dictates the result in analogous cases unless and until the Supreme Court expressly overrules the substance of its decision.”
U.S. v. Extreme Associates, — F.3d —, 2005 WL 3312634 (3d Cir., December 8, 2005).
Detailed coverage of the constitutional issues in this article.
The lawsuits filed by the music industry against individual users of peer-to-peer (P2P) software are beginning to make their way through the court system. The Seventh Circuit has affirmed a lower court’s grant of summary judgment against a user of Kazaa, holding that the downloading of copyrighted music files is not fair use under the Copyright Act.
Defendant-appellant Gonzalez used the Kazaa P2P software to obtain over 1,300 copyrighted sound recordings, some of which were contained on CDs she owned. BMG music and others filed a federal lawsuit against Gonzalez in 2003 alleging copyright infringement. Gonzalez’s defense was that by downloading the songs, she was merely sampling them to see whether she would want to purchase the entire CD. Accordingly, Gonzalez argued, she was not liable for infringement, because her conduct was protected under the doctrine of fair use.
The District Court disagreed, and granted summary judgment in favor of the recording industry plaintiffs. The District Court enjoined Gonzalez from engaging in any further infringement, and ordered her to pay over $22,000 in damages. Gonzalez sought review with the Seventh Circuit, which affirmed.
Judge Easterbrook’s opinion is unequivocal in rejecting Gonzalez’s fair use argument. The Court easily distinguished the present case from Sony Corp. of America v. Universal Studios, Inc., 464 U.S. 417 (1984) (also known as the Betamax case).
“This is not a form of time-shifting along the lines of [the Betamax case]. A copy downloaded, played, and retained on one’s hard drive for future use is a direct substitute for a purchased copy – and without the benefit of the license fee paid to the broadcaster.”
The Court’s analyzed Gonzalez’s claim in light the effect of P2P file-sharing on the potential market for the music. The Court emphasized that downloading unlicensed copies of music, even if for the purpose of testing whether one would want to later buy it, directly competes with legitimate means for consumers to sample music they might like.
For example, broadcast radio allows potential music purchasers to listen for free – and the artists and publishers profit in this scenario not only from future sales, but from the royalties paid by the broadcaster. Similarly, in legitimate online services such as iTunes and the revived Napster (who pay artists and publishers agreed-upon royalties), potential purchasers can sample music for little or no cost and later buy the tracks.
The Court noted that these modes of previewing music in an authorized manner “share the feature of evanescence.” Because downloading unlicensed permanent copies from the Internet directly competes with these legitimate means for artists and publishers to generate profit, the only relevant fair use factor weighed against Gonzalez. Accordingly, the District Court was correct to have found that Gonzalez committed copyright infringement.
BMG Music v. Gonzalez, — F.3d — No. 05-1314 (7th Cir., December 9, 2005).
More coverage of this case:
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