Internet Copyright Infringement - Courts Weigh-In

We frequently handle Internet copyright infringement issues.  These issues present themselves in many forms.  Some examples include: Internet copyright infringement resulting from copied website contents, Internet copyright infringement claims against ISP resulting from copied website photographs, Internet copyright infringement claims against Internet search engine from displaying copyright images as thumbnails with the indexed results, and Internet copyright infringement claim against search engine and online retailer resulting from the use of copyrighted images as thumbnails.

Internet copyright infringement decisions are far from uniform.  Quite to the contrary, Internet law is one of the least predictable areas of law. However, the decisions of some courts follow:


Internet copyright infringement from copied Internet website contents

The owner of a website that sold goods and services over the Internet discovered that a competitor had copied the contents of its website and had created a rival Internet site that was a virtual mirror image if its website. The website was copied by posting identical source code at other Internet websites. The replication of the site diverted traffic and sales from the original website.

A New York federal court held that the Internet copyright infringement resulting from the copying of the website was willful and awarded statutory damages for Internet copyright infringement as well as costs and attorneys’ fees.

The Court found that the infringement was willful and awarded statutory damages with the objectives of compensating copyright owners for past infringement and deterring future infringement. The Factors considered relevant to determining an appropriate statutory damages award include the “expenses saved and profits reaped by the infringers,” the revenues lost by the plaintiff, the infringers' state of mind (wilful, knowing or merely innocent), the value of the copyright and the deterrent effect on both the defendant and others. The court also awarded attorney's fees and costs

Internet copyright infringement claims against ISP resulting from copied website photographs

The owner of an Internet website containing commercial real estate information sues an ISP for Internet copyright infringement, contributory copyright infringement, vicarious Internet copyright infringement, and challenging the applicability of the DMCA safe harbor provision to the ISP.

A Virginia federal court dismissed the claims of Internet copyright infringement, contributory copyright infringement, and vicarious copyright infringement. The DMCA safe harbor provision protected the ISP.

A provider of commercial real estate information on the Internet collected a comprehensive a comprehensive database of information on commercial real estate markets and commercial properties in the United States and the United Kingdom. The database, including photographs was available to customers through the Internet.

An Internet service provider’s (“ISP”) website allowed subscribers, generally real estate brokers, to post listings of commercial real estate on the Internet. The ISPs terms of service included a promise not to post copies of photographs without authorization. When informed of the violations, the ISP removed the photographs.

The commercial real estate provider commenced action against the ISP for copyright infringement, violation of the Lanham Act, and several state-law causes of action. A federal court in Maryland held that the ISP had not engaged in direct infringement under the Copyright Act. It left open, however, CoStar's claims that LoopNet might have contributorily infringed CoStar's copyrights and that LoopNet was not entitled to the “safe harbor” immunity provided by the Digital Millennium Copyright Act, 17 U.S.C. § 512.

The U.S. Court of Appeals held that an Internet service provider (ISP) could not be held liable as a direct copyright infringer when its facility was used by subscriber to violate copyright without intervening conduct of ISP; ISP, which provided system that automatically received subscriber's infringing material and transmitted it to Internet at instigation of subscriber, had not itself fixed copy in its system of more than transitory duration.

Internet service providers (ISPs), when passively storing material at direction of users in order to make that material available to other users upon their request, do not “copy” material in direct violation of Copyright Act. 17 U.S.C.A. § 106.

Automatic copying, storage, and transmission of copyrighted materials, when instigated by others, does not render Internet service provider (ISP) directly liable for copyright infringement; ISP can become liable indirectly upon showing of additional involvement sufficient to establish contributory or vicarious infringement, but even then may still look to Digital Millennium Copyright Act (DMCA) for safe harbor if it fulfilled conditions therein. 17 U.S.C.A. §§ 106, 501, 512.

Internet copyright infringement claim against Internet search engine from displaying copyright images as thumbnails with the indexed results


A professional photographer and owner of copyrighted images displayed on his Internet web site sued a leading Internet search engine, which displayed search results as “thumbnail” pictures, for copyright infringement.

A California federal court dismissed the claim of Internet copyright infringement. The use of copyrighted images that were displayed on Internet web sites by the search engine, which displayed search results as “thumbnail” pictures, was “fair use” of copyrighted images.

The plaintiff was a professional photographer who has copyrighted many of his images. Some of these images are located on plaintiff’s web site or other web sites with which plaintiff had a license agreement. The defendant operated an internet search engine that displayed its results in the form of small pictures rather than the more usual form of text. The defendant obtained its database of pictures by copying images from other web sites. By clicking on one of these small pictures, called “thumbnails,” the user can then view a large version of that same picture within the context of the web page.

When plaintiff discovered that his photographs were part of defendant’s search engine database, he brought a claim against defendant for copyright infringement. The court found that plaintiff had established a prima facie case of copyright infringement based on defendant’s unauthorized reproduction and display of plaintiff’s works, but that this reproduction and display constituted a non-infringing “fair use” under Section 107 of the Copyright Act.

The use of copyrighted images that were displayed on Internet web sites by operator of visual search engine, which displayed search results as “thumbnail” pictures, was “fair use” of copyrighted images; although creative nature of the copyrighted works weighed in favor of image owner, purpose and character of operator's use of works and effect of that use on potential market for or value of works weighed in favor of search engine operator. 17 U.S.C.A. § 107.


Internet copyright infringement claim against search engine and online retailer resulting from the use of copyrighted images as thumbnails

A copyright owner brought legal action major Internet search engine and Internet retailer for Internet copyright infringement resulting from the copying of copyrighted images. The copyright owner sought a preliminary injunction based on its claim of Internet copyright
infringement to prevent the retailer and the search engine from copying, reproducing, distributi
ng, displaying, or otherwise
infringing, or contributing to the Internet copyright infringement of its photographs.

A California court dismissed the claim of Internet copyright infringement, held that the Internet search engine operator's display of thumbnail images of copyright owner's photographs, in response to user searches, was fair use of copyrighted photographs; operator put images to a use fundamentally different than use intended by owner, thereby providing significant benefit to the public.

A copyright owner brought legal action major Internet search engine and Internet retailer for Internet copyright infringement resulting from the copying of copyrighted images. The copyright owner sought a preliminary injunction based on its claim of Internet copyright infringement to prevent the retailer and the search engine from copying, reproducing, distributing, displaying, or otherwise infringing, or contributing to the Internet copyright infringement of its photographs.

Internet search engine operator's display of thumbnail images of copyright owner's photographs, in response to user searches, was fair use of copyrighted photographs; operator put images to a use fundamentally different than use intended by owner, thereby providing significant benefit to the public. 17 U.S.C.A. § 107.

Even if search engine users who linked to websites showing owner's copyrighted photographs automatically made “cache” copies of full size images of the works, and such action amounted to direct infringement of owner's right of reproduction, such automatic copying was fair use of copyrighted images; such copying was a transformative use, the cache copied no more than was necessary to assist the user in Internet use, and the copying had no more than a minimal effect on owner's rights, while having a considerable public benefit. 17 U.S.C.A. § 107.

Owner of copyrighted photographs was not likely to succeed on its claim of vicarious copyright infringement by Internet search engine operator that provided, to its users, links to third-party websites that reproduced, displayed, and distributed unauthorized copies of owner's images, as required for preliminary injunction prohibiting such linking; owner did not demonstrate likelihood of showing that operator had legal right to stop or limit direct infringement of third-party websites, notwithstanding agreements, through an advertising program, permitting it to terminate an entity's participation in that program, operator could not terminate third-party websites or block their ability to host and serve infringing full-size images on the Internet, and operator lacked practical ability to police the infringing activities of third-party websites.

Contact us for a professional consultation if you wish to discuss Internet copyright infringement issues or other Internet legal issues with an Internet trial attorney.
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Our Interview With the BBC

Last Friday, I had the pleasure of being invited for an interview with reporter Alex Ritson from the BBC. I appeared on his  satellite  radio  broadcast where we discussed issues related to Internet Defamation, the Communications Decency Act immunity, the differences between a service provider and a content provider, the Wikileaks case, and related Internet Law matters. 

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Peer to Peer (P2P) software is great!... until the SWAT team arrives

Many people install file sharing, peer-to-peer (P2P) software in their computers.  The concept sounds promising, having open collaboration and open sharing of files and information between Internet users throughout the world.  Unfortunately, that is not the way it usually ends. 

P2P software frequently becomes a tool for copyright infringement, computer hacking, child pornography, and similar actionable conduct.  Often, this conduct results in civil and/or criminal prosecution.  Now, we are not discussing whether P2P software is itself a problem. There is plenty of case law discussing whether the software can be used for non-infringing uses and whether infringement is the primary purpose of the software.  In fact, these points have been discussed ad nauseam by the courts and commentators.  The intention here is to present a practical perspective of the issue, so that those thinking of installing and using P2P software may make a more informed decision.

Many people, perhaps out of curiosity, or maybe knowing full well what they are getting themselves into, install P2P software in their computers.  Next thing, they search for songs by their favorite artists or for their favorite movies. Double click and the file is transfered to computer.  The trip to Target to buy the CD or DVD is hereby canceled.  This becomes an addiction for some, getting song after song, movie after movie, and in turn sharing them with other P2P users.  However, people who think that their P2P acts will go unnoticed are wrong.  The owner of the copyrighted works will use the same P2P software to track down and catch the infringer.  The result is single mothers having to pay enormous amounts of money in damages, college students seeing their future career possibilities hampered, and some being prosecuted criminally.  Not to mention that the downloaded version of your "favorite song" may contain a computer virus that may destroy your hard drive or facilitate the theft of your personal identification data and files. This addiction to P2P becomes more and more expensive.

Speaking of addictive, many use P2P software to download pornographic material.  As an Internet crime defense attorney, I have spoken to people who use P2P software to download hundreds of pornographic files every day. Some download the files just to download them and never even view a large number of the downloaded files.  Downloading adult pornography is not usually prosecuted, but those who download child pornography are. 

These people who download a large number of files from P2P may not realize that embedded between their files are depictions of child pornography.  These files are sometimes put in the "shared" folder of the P2P software for others to download.... sounds like distribution to me.  The P2P user may not realize that these acts will almost certainly subject them to prosecution for receipt, possession, and distribution of child pornography.  States aggressively prosecute these crimes and the federal system is merciless.  We frequently defend people charged with these crimes and have the required legal and technical expertise to do so in an expert manner, but make no mistake, you can pick up serious felony charges from the comfort of your own home.  By the time you hear the agents knocking on your door, your life has already changed.   Is it worth it to install and use P2P software?... You decide.




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Hidden System Files May Support Criminal Prosecution

We recently completed an Internet crime trial.  The large majority of the prosecution's evidence was found in hidden system files of a computer running Windows XP.  These files could not be retrieved without the use of software not standard in Windows and which is not available to unsophisticated computer users. 

It took dedication and patience to explain to the court the inner workings of hidden files such as thumbs.db.  Without the ability to effectively describe the operation of the Windows XP Operating System it would have been impossible to obtain a favorable outcome for our client.  Without this specialized technical competence, taking this case to trial, as opposed to pleading to whatever could be gotten from the prosecutor, would have been insane.  Without expertise about computer operating systems and the Internet, it is very difficult for an attorney to be effective when trying a computer or cyber crime case.

As far as I know, we are the only Internet Law Firm that has an attorney who is also a Computer Engineer with in depth technology experience, including critical projects with the Department of Defense.  We can apply our unique computer and Internet knowledge to any cyber crime matter.


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Computer Hacking and Unauthorized Access to Computer Networks: Curiosity Can Kill the Cat

Recently, we have encountered many instances of the following scenario... Often out of curiosity, an Internet website visitor may exceed his authorized access under his access login or under the website's terms of use.  Website access scripts are easily available online. Their use, however, may generate serious accusations of computer crime, specifically hacking and unauthorized access.  Under cybercrime and computer laws, a conviction for computer hacking can carry 20 years to life in prison.

If you are accused of computer hacking or unauthorized access to a computer network, our computer hacking defense attorneys understand the technical aspects of the Internet and can provide you with a top tier computer hacking defense.



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The importance of having a computer expert as your Internet cyber trial attorney

During a cyber trial, a computer crime, or a trial involving issues of Internet law, I can’t overstress the importance of having an attorney who is not only a legal subject matter expert, but also an expert in computer technology and the technical concepts related to the Internet.

Case in point, we recently completed a long and complex cyber crime trial.  We were fully equipped to expertly handle the criminal defense aspects of the case, we knew the law, how to cross-examine witnesses, and how to establish reasonable doubt.  However, during the trial, it was our technical expertise what allowed us to provide a unique perspective to the evidence presented.

For example, the alleged criminal activity was traced to our client’s IP address and MAC addresses.  However, the documentation used by the government contained errors that only an attorney with expert Internet technology knowledge would have caught.  Error number one was that one of the MAC addresses utilized by the government to justify the search warrant had one character too many, i.e., it was not valid.  The other MAC address pointed to a laptop computer, but the government identified it as a router.  These critical defects would have probably gone unnoticed to the eyes of the typical lawyer.  Does the average attorney even know how many characters there are in a valid MAC address?  I can guarantee you that the answer is no.

Another issue that came up was that the government’s evidence was mostly obtained through forensic analysis of hidden system files, such as the thumbs.db file and others.  If it takes forensic analysis to even retrieve evidence that a client who is not technically sophisticated and who does not have the necessary computer forensic tools is accused of “intentionally” possessing, how can the government show intent?  It took a lot of finesse, patience, and art to explain to the court how the evidence presented could have been retrieved in the first place.  The typical non-technical attorney would have had a hard time understanding these concepts and attacking this evidence.  I have seen cases forced to a settlement or plea that is not warranted under the circumstances simply because, although the attorney can competently argue the law, he/she can’t competently argue the technology.  Our expertise includes technical degrees in Computer Engineering and years of Internet technology experience.



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Microsoft Corporation Sues a Dentist for Trademark Infringement and Cybersquatting

The Anti-cybersquatting Consumer Protection Act (ACPA) makes those who register infringing domain names in bad faith liable to civil suits from a trademark owner.  

Microsoft has filed a trademark infringement suit against a California dentist, Dr. Saed Said, who has registered more than 40 Internet domains with names similar to Microsoft’s products or brands, including: aMicrosoftShop.com, aMicrosoftStore.com, XboxOutlet.info and XboxMarket.mobi.

Microsoft claims that Dr. Said operates the domains with the intent to divert Internet surfers looking for Microsoft’s products. "The person has been diverted from the Microsoft Web site he or she was seeking to visit, and Microsoft has lost the opportunity to interact with that person," Microsoft claims in the lawsuit.  According to Microsoft, Said profited from the misdirection because his Web sites contain advertising for non-Microsoft products.

We are experts in all issues related to Domain Name law and cybersquatting.  If you receive a cease and desist notice or are served with a lawsuit accusing you of cybersquatting, we can provide you with the expert legal representation necessary to fight against large corporations such as Microsoft.


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Internet Defamation can cost you.... to the tune of $11.3 M

Internet blogs continue to create litigation.  The days when the courts would not intervene in matters involving Internet defamation resulting from Internet blog postings are behind us.  Recently, a Florida woman was awarded $11.3 million dollars in damages resulting from postings made by a Louisiana woman accusing the Florida woman of being a "crook", a "con artist" and a "fraud." 

The defendant in that case was not represented by counsel at the time the verdict was issued.  Although it appears that in this case, the Defendant was affected by Hurricane Katrina in a manner that affected her ability to defend herself, the situation brings up a significant issue.  Many misunderstand the impact and importance of Internet defamation accusations.  The result can be financially devastating.

Bloggers and cyber gripers run a significant risk when they post their statements online.  There is no such thing as a completely "anonymous" blog post.  A competent Internet defamation lawyer who knows the technical aspects of the Internet and knows how to properly utilize the legal process can discover the identity of the author.  At that point, the author must be prepared to utilize the services of a competent attorney to provide expert legal defense.

For more information regarding Internet defamation, please visit our Internet defamation website at www.cyberdefamationlawyer.com or our main Internet law website at http://www.cyberinternetlawyer.com

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Single mother ordered to pay $222,000 in Internet copyright infringement damages

A Minnesota federal jury found Jammie Thomas guilty of copyright infringement.  She now owes a total of $222,000.00 in damages to the RIAA.  The copyright damages are based on the jury's valuation of $9,250 for each infringed recording.  Under copyright laws, RIAA might have recovered up to $150,000 per song infringed.

This judgment can potentially shake up the way the P2P copyright infringement litigation game is played.  The defense had some questionable moves, or lack thereof.  Of note is that the defense relied almost exclusively on the theory that some hacker might have used Ms. Thomas' usual user
name and her computer without her knowledge. Was it lack of knowledge of the technology involved, lack of knowledge of how to properly defend an Internet copyright infringement case, overconfidence, etc?

The lesson learned is that if you are accused of online copyright infringement or involved in any other Internet law related litigation, you are best served to seek the assistance of competent counsel.  Competent counsel will not only claim to practice Internet Law, but will also have a proven successful litigation record as well as a technical resume that demonstrates in-depth knowledge of the complicated technological aspects of these matters. 
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ICANN fails to pass domain name WHOIS registry privacy reforms

The Internet Corporation for Assigned Names and Numbers (ICANN) failed to overcome a stalemate on its efforts to reform the way that domain names WHOIS data is handled.  The WHOIS registry contains the names, address, and contact information of Internet domain name registrants.  The information contained in the registry is public, with the exception of domain names with proxy registration.

Businesses, law enforcement, and especially Intellectual Property and Internet Lawyers regularly utilize the domain names WHOIS registry to identify cybersquatters, spammers, phishers, trademark infringers, copyright infringers, and others.  However, the WHOIS registry is also open to abuse and can potentially expose domain name registrants to spam as well as Internet privacy violations.  ICANN’s attempts to reform the WHOIS system to balance the ability to identify cyber wrongdoers against privacy concerns have failed.

Several proposals failed to gain acceptance.  For example, under a proposal called the “Operational Point of Contact”, domain name registrars would continue collecting contact information from domain name registrants.  However, domain name registrants would have been required to keep certain information shielded from public access with certain exceptions.  Defining these exceptions was fatal for this proposal.  

A different proposal included shielding the contact information of individual domain registrants but not the information of commercial registrants.  The difficulty of determining whether a domain name registrant was “commercial” proved fatal for this proposal.

These proposals, as well as others failed and an acceptable compromise between the needs for privacy and the need for identification was not reached.  In the foreseeable future, the only mechanism available to domain name registrants who choose to remain anonymous is to purchase proxy registrations from the domain name registrars.

Cyber Lawyer, Domingo J. Rivera, is an attorney specialized in Internet Law and domain name law cases throughout the United States. 

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Website development contracts: The “handshake deal” can cost you.

Under  U.S. copyright laws, the developer of a website owns the intellectual property and copyrightable elements of the website.  The copyrightable elements of a website include the text, graphics, scripts, code, and the “look and feel.”  Unless there is a contract to the contrary, the website developer’s client only obtains a non-exclusive license to utilize the intellectual property that it paid to develop.  Even the copyright notice on the client’s website applies only to the contents that were developed by the client and not to the contents that were created by the developer.

This means that under the default scenario, your business’ website developer can create a very similar website for your competitors.  Furthermore, at the end of your business’ relationship with the website developer, the website developer can also demand that you stop using its intellectual property and copyrightable contents.  If you refuse, you may find yourself as the defendant in a copyright infringement lawsuit.  Even worse, your website developer may refuse to facilitate your business’ transition to a new developer.  If your business depends on its website, it may never recover from this website hijacking scheme commonly applied by some unscrupulous website developers.

You should be aware of the risks associated with the absence of a carefully drafted website development agreement and should consult with an Internet Attorney before hiring others to develop your website.

Cyber Lawyer, Domingo J. Rivera, is an attorney specialized in Internet Law, handling cases throughout the United States. 




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Your website’s Privacy Policy: Draft carefully and always abide by it.

Almost every e-Commerce website collects personal identifiable information from its users.  Personal identifiable information includes name, address, e-mail address, phone number, social security number, date of birth, age, gender, income, occupation, browsing patterns, etc.  Many websites have a posted privacy policy explaining what information is collected from the users of the website and how the information is used. 

Once a company posts a privacy policy on its website, it will be held legally liable for its failure to abide by the policy.  For example, Geocities’ website contained the statement “we will never give your information to anyone without your permission.” However, when it appeared that Geocities sold and disclosed the information to others, the FTC accused Geocities of misrepresenting its reasons for collecting information from adults and children.  The matter eventually settled.

So with such a big risk, why should companies even post a privacy policy at all?  After all, it is impossible to violate a privacy policy that does not exist.  However, some jurisdictions require websites to have posted privacy policies. 

For example, the California Online Privacy Protection Act requires websites to 1) identify the categories of information collected and with whom the information may be shared; 2) describe how to review and change the personally identifiable information; 3) explain how to find out about changes to the privacy policy; and 4) indicate the effective date of the privacy policy.  Additionally, websites that collect information from children are subject to the requirements of the Children’s Online Privacy Protection Act (COPPA).  The European Union also imposes privacy protection requirements for websites who operate in or have customers in the European Union. 

Therefore, if your website obtains business from California residents, children, or the European Union, you must have a carefully drafted privacy policy and must abide by it.  

Cyber Lawyer, Domingo J. Rivera, is an attorney specialized in Internet Law, handling cases throughout the United States. 






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Cybercrime basics...

The term Cybercrime is broadly defined to include any criminal activity committed on the internet.  Almost everyone has at least a basic understanding about online identity theft, probably the most common cybercrime.  However, there appears to be considerable confusion regarding some of the other basic cybercrimes and their definitions.  I recently visited the website of a firm where the terms phishing and spoofing were incorrectly used interchangeably! 

Some of the most common cybercrimes are: 

Email spoofing – The forgery of an e-mail header in a manner that the message appears to have originated from somewhere other than the actual source.   Widely used by spammers, a spoofed e-mail may appear to be from a legitimate source asking for personal information, passwords, credit card numbers, etc. 

Phishing – The sending of an email to a recipient in an attempt to scam the recipient into revealing private information. The email contains a link to what appears the website of a legitimate enterprise but is only a fake version of the organization’s website.  When the recipient visits the fake website, the recipient is asked to update personal information, such as passwords and credit card, social security, and bank account numbers that the legitimate organization already has.

Cookie Poisoning – Some websites store cookies on your computer's hard drive to authenticate your identity, speed up your transactions, monitor your behavior, and personalize your website experience. Cookie poisoning is the modification of a cookie by an attacker to gain unauthorized access to private information about the user.  The attacker may use this private information for identity theft and to gain access to the user's existing accounts.

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CAN-SPAM Act: Non-compliance is a crime… and overzealous ISPs may refuse to deliver legally compliant email messages

On May 31, 2007, the BBC reported “U.S. Arrests Internet spam king” Robert Soloway.   (A copy of the Article can be found at: http://news.bbc.co.uk/2/hi/technology/6707333.stm).  

Mr. Soloway is accused of being “responsible for tens of millions of unsolicited e-mails promoting his own company between November 2003 and May 2007” in violation of the Controlling the Assault of Non-Solicited Pornography and Marketing (CAN-SPAM) Act of 2003.

The CAN-SPAM Act is codified under 15 U.S.C. § 7701-7713.  Contrary to the belief of many, the CAN-SPAM Act does not prohibit sending spam emails.  Instead, it imposes certain requirements.  These mandatory requirements include, inter alia, the use of accurate email subject lines and transmission information, opt-out procedures where recipients can elect not to receive additional emails fom the sender, mandatory timeframes for the removal of users who elect to opt-out, and a prohibition of improper email harvesting. 

But, what happens when a sender complies with all the requirements of CAN-SPAM?  Can an ISP still refuse to deliver compliant email messages to the intended recipients?

In White Buffalo Ventures, LLC v. University of Texas, 420 F.3d 366 (5th Cir. 2005), the Plaintiff, White Buffalo, was an online dating service operating several online dating websites, including one that targeted students of the University of Texas (UT).  White Buffalo obtained the "non-confidential, non-exempt email addresses" held by UT through a Public Information Act request. 

White Buffalo used these email addresses to send CAN-SPAN compliant commercial emails to members of the UT community. UT issued a cease and desist letter but White Buffalo refused to comply.  As a result, UT blocked all emails originating from White Buffalo’s IP address.

White Buffalo sued UT, arguing that the First Amendment and the CAN-SPAM Act precluded UT’s actions.  The Court disagreed and held that the CAN-SPAM Act does not prevent Internet Service Providers (ISPs), in this case UT, from filtering CAN-SPAM compliant commercial emails.

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Are domain names property or contractual rights, and why do we care?

Some courts have held that that domain names are property.  In Kremen v. Cohen, 337 F.3d 1024 (9th Cir. 2003), the plaintiff registered the domain name sex.com.  The registrar transferred the name to a different individual on the basis of a forged letter.  The Court reversed the district court’s holding that domain names were intangibles not subject to conversion.  The Court held that the registrar was subject to liability “for giving away someone else's property.”  Id. at 1035.

Other courts, however, have concluded that "a domain name registration is the product of a contract for services between the registrar and registrant.”  Network Solutions, Inc. v. Umbro Int'l, Inc., 259 Va. 759, 770 (2000) (citing Dorer v. Arel, 60 F. Supp. 2d 558, 561 (E.D. Va. 1999)). 

If considered property rights, domain names would be subject to state property laws and state property causes of action, such as conversion, would be applicable.  However, if domain names confer only contractual rights, the nature of the protection afforded to the registrant would be quite different. 

Under ICANN rules, a domain name owner must intervene within five days to stop an inter-registry transfer request.  Therefore, whether a domain name is treated as property or as a contractual right can make a huge difference in the remedies available to victims of domain name hijacking who do not intervene within the five-day period prescribed by ICANN.






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The Digital Millennium Copyright Act: Protecting the ISPs and bogging down technology

The Digital Millennium Copyright Act (DMCA), codified in 17 U.S.C. § 512, amended the U.S. Copyright Act of 1976.  The DMCA provides for severe criminal penalties for circumventing technical measures protecting copyrighted works. 

The DMCA protects Internet Service Providers (ISPs) from liability arising from acts by the ISP’s customers.  However, there are certain conditions that an ISP must meet in order to qualify for the Act’s safe harbor provisions.  To enjoy safe harbor protection, an ISP must:  

1. Implement a policy to terminate infringers;
2. Designate a service provider agent for notification of claims of infringement.  (The list of designated service provider agents is located at: http://www.copyright.gov/onlinesp/list/index.html)
3. Provide means to receive notice of infringement and upon obtaining notice act expeditiously to remove, or disable access to the infringing material; and
4. Have no actual knowledge of the infringing activity.

Arguably, the DMCA has bogged down the development of technology.  For example, in Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984), a case decided prior to the passage of the DMCA, the U.S. Supreme Court held that a manufacturer of video tape recorders could not be held liable for contributory copyright infringement.  The Court found that although video tape recorders could be used to copy copyrighted television shows, there were commercially significant non-infringing uses for the device.  This decision facilitated the commercial widespread of video tape recording devices such as Betamax and VCRs.

In Universal City Studios v. Reimerdes, 111 F. Supp. 2d 294 (2000), a case decided after the passage of the DMCA, motion picture studios brought action under the DMCA to enjoin Internet website owners from posting or downloading software that decrypted digitally encrypted movies on DVDs.  The United States District Court for the Southern District of New York granted the injunction under the authority of the DMCA. 

Despite the obvious differences between the distribution of a machine that records unencrypted television shows and the distribution of code that allows the copying of encrypted DVDs, had the DMCA existed in 1984, what would have happened to the development of the home video recording industry?






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FTC Opens preliminary antitrust investigation into Google’s acquisition of DoubleClick

Today Google owns the Internet search engine market and DoubleClick owns the Internet banner advertisement market.  Now Google is bidding $3.1 billion to dominate the search engine market, the banner advertisement market… and a lot of data.  

DoubleClick has the ability to track what sites people visit and Google has the ability to collect search histories.  Unfettered exclusive access to all this information could potentially allow Google, not the market, to set the prices for Internet advertisement.  We will be waiting for the Federal Trade Commission’s report.

A related news article can be found at:

http://www.nytimes.com/2007/05/29/technology/29antitrust.html






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KSR International Co. v. Teleflex, Inc - Obvious non-obviousness?

Teleflex International Co. held a patent titled “Adjustable Pedal Assembly With Electronic Throttle Control.”  One of the claims of the patent describes a mechanism where an electronic sensor is combined with an adjustable pedal to control the throttle in an automobile.  KSR International Co. added an electronic sensor to its previous automobile pedal design and Teleflex obviously sued for patent infringement. 

The District Court dismissed the case, holding that the claim contained in Teleflex's patent was obvious.  The Federal Circuit reversed, applying its "Teaching, Suggestion, Motivation" test.  Under this test, the combination of existing processes to create new processes is not obvious when there is no prior art that explicitly or implicitly teaches, suggests, or motivates the combination.  

The Supreme Court reversed, holding that the Federal Circuit's application of the test need not become “rigid and mandatory formulas” and finding that “any need or problem” can provide the patentee with a reason for combing processes.   The Supreme Court's new obviousness standard will probably increase litigation on obviousness grounds (the Verizon v. Vonage appeal comes to mind)... However, the full impact of the new obviousness standard is certainly non-obvious.

The full text of the opinion may be found at:
http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf






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Site Pro-1 Inc. v. Better Metal LLC: a better approach for deciding trademark infringement claims resulting from competitive metatag usage and keyword advertising?

This was a trademark infringement lawsuit filed by Site Pro-1, Inc, the owner of the registered trademark SITE PRO 1®, against Better Metal, LLC.  Better Metal is a competitor of Site Pro-1. 

Better Metal purchased a "sponsored search" from Yahoo! that caused its website to be included among the results listed when a Yahoo! search user searched for some combination of the terms "1", "pro", and "Site."  The SITE PRO 1® mark was not displayed in the sponsored search result linking to Better Metal's website.

The Court stated:


The key question is whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin. Here, there is no allegation that Better Metal did so, and therefore no Lanham Act “use” has been alleged. Indeed, the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff’s SITE PRO 1® trademark on any of its goods, or any advertisements or displays associated with the sale of its goods. Complaint, Ex. B. Neither the link to Better Metal’s website nor the surrounding text mentions SitePro1 or the SITE PRO 1® trademark. The same is true with respect to Better Metal’s metadata, which is not displayed to consumers.



The Court's approach seems to be inline with the Second Circuit's position regarding competitive metatag usage and keyword advertising.  Most courts do not share this approach. Under similar facts, Courts in Virginia, California, Pennsylvania, Minnesota, and many others, have reached contrary results.  

So which court has the better approach for deciding trademark infringement claims resulting from competitive metatag usage and keyword advertising?  The debate continues... 

The text of the opinion may be found at: http://claranet.scu.edu/tempfiles/tmp32239/siteprovbettermetal.pdf






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Email privacy at work: Your employer can lie to you about reading your emails… and then fire you for relying on these lies!


Most employees probably know that the emails sent from their work email accounts are probably being monitored.  However, what if your employer repeatedly assures you that all e-mail communications would remain confidential and privileged?  What if your employer further tells you that e-mail communications could not be intercepted and used by against you as grounds for termination or reprimand?  Can your employer still intercept your emails, read them, and then fire you for the contents…?  YOU BET!!

In Smyth v. Pillsbury Co., 914 F. Supp. 97 (1996), Pillsbury maintained a company e-mail system which the employees used to communicate among themselves.  Mr. Smyth was an employee of Pillsbury. Pillsbury assured Mr. Smyth as well as the other employees that all e-mail communications would remain confidential and privileged and that the e-mail communications could not be intercepted and used against the employees as grounds for termination or reprimand. 

The U.S. District Court for the Eastern District of Pennsylvania surprisingly held that despite the assurances made by Pillsbury, its employees did not have a “reasonable expectation of privacy in e-mail communications voluntarily made by an employee to his supervisor over the company e-mail system.”  The Court went on to hold that no “reasonable person would consider the . . . interception of these communications to be a substantial and highly offensive invasion of his privacy.” 

The Pillsbury case, although decided under Pennsylvania law and dating back to 1996, has been cited with approval by courts in other states, including Massachusetts, Rhode Island, New York, Oregon, and Texas.

So, what should this mean to you?

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