IP Law Blog

Weintraub Tobin and Moss Adams are co-sponsoring the LAVA Digital Media Group’s panel discussion: “What’s Ahead for Digital Media in 2013” on Tuesday, February 26.

Making predictions in digital media can be challenging. At this time last year who even knew what Pinterest was, let alone that it would explode in popularity. Our panel will talk about what they see as being in store for 2013 and what opportunities might exist for L.A. Technology companies.

Featured Speakers include Jake Winett, Vice President, Consumer Services | Digital Strategy & Innovation | Sony Pictures Home Entertainment, and Keyvan Peymani Head of Digital Strategies Division, ICM Partners.

The event takes place from 6:30-9 p.m., Tuesday, February 26^th at ROC, 604 Arizona Street in Santa Monica. For more information, contact Lee Lanzi at len@lava.org or visit www.lava.org

By Scott Plamondon

Most of us have become familiar with the terms and conditions printed on the back of the ticket that is obtained when parking our cars in public lots. We all are familiar with the caption at the top of the ticket proclaiming “This contract limits our liability, please read it.”  Having parked my car hundreds of times in public parking lots, each time receiving a small ticket informing me of this proclamation, I now scandalously admit that I have never read these terms. Yet, if a dispute were to ensue regarding the terms and conditions of my use of public parking, the dispute would likely center around the terms and conditions that I have carelessly ignored in cavalier fashion. While I’m not suggesting that we review, analyze, revise and negotiate the boilerplate terms thrust upon us in the context of public parking, I mention this frequently overlooked contract relationship to demonstrate that we often may enter into contracts with others, while giving little thought or consideration to the terms we have accepted.

By: Lisa Y. Wang and Matthew N. Sugarman 

Some Facebook trends are more fun than others (remember the annual Doppelganger Week and the "25 Random Things About Me" trend in 2009?).  This past week a different Facebook status trend took hold: a copyright disclaimer.  Millions have been posting a copyright notice as their Facebook status because they believe it will prevent Facebook from using their intellectual property (such as pictures, status updates, clever memes, and everything else we put on Facebook) without their permission.  These copyright notice status updates first appeared in May 2012 after Facebook went public and resurfaced over Thanksgiving after a rumored change in Facebook's user agreement.  And, it's as ineffective now as it was back then.  Below is the legally worthless notice:

In response to the new Facebook guidelines I hereby declare that my copyright is attached to all of my personal details, illustrations, comics, paintings, professional photos and videos, etc. (as a result of the Berner Convention). For commercial use of the above my written consent is needed at all times!

(Anyone reading this can copy this text and paste it on their Facebook Wall. This will place them under protection of copyright laws. By the present communiqué, I notify Facebook that it is strictly forbidden to disclose, copy, distribute, disseminate, or take any other action against me on the basis of this profile and/or its contents. The aforementioned prohibited actions also apply to employees, students, agents and/or any staff under Facebook's direction or control. The content of this profile is private and confidential information. The violation of my privacy is punished by law (UCC 1 1-308-308 1-103 and the Rome Statute).

Facebook is now an open capital entity. All members are recommended to publish a notice like this, or if you prefer, you may copy and paste this version. If you do not publish a statement at least once, you will be tacitly allowing the use of elements such as your photos as well as the information contained in your profile status updates.

By: Nathan Geronimo

I have written several articles about litigants running into trouble when their testimony is contradicted by their own postings on social media websites.  A recent case from Sacramento illustrates a unique twist on the interplay between social media and court proceedings: the effect of juror posts on a defendant’s right to a fair trial.

Juror Number One v. Superior Court involved a juror posting comments on his Facebook wall about evidence presented at trial while the trial was in progress.  Following the trial and conviction on assault charges, the Court became aware of the Facebook activity, and held a subsequent juror misconduct hearing based on Juror One’s trial posts.  Juror One admitted posting comments on Facebook during the trial, but denied that the posts were about the trial or any evidence presented.  For example, Juror One admitted to posting that he was so bored one day during trial that he almost fell asleep.  He also invited a female juror to be his Facebook “friend.”  At the conclusion of the misconduct hearing, the Court was satisfied that there had been clear misconduct, but had further questions about the degree of misconduct, and whether it had been prejudicial to the trial.  Counsel for the real party in interest then issued a subpoena to Juror One for all postings by Juror One during the trial, including all emails and other electronic communications.  Juror One moved to quash the subpoena as overbroad.  The Court agreed that the subpoena was overbroad, but issued an order requiring Juror One to turn over all of his Facebook postings during trial to the Court for in camera review.

By: Lisa Y. Wang

The internet is about to change dramatically. Since Al Gore “invented” the world wide web, users have been used to using a limited number of top-level domains (“TLD”). A top level domain is the end portion of a web address (e.g. .com, .net, .org, .biz, and .gov). A second level domain name consists of the words in between www. and the TLD (e.g. apple in www.apple.com). Currently, there are 22 top level domains (such as .org, .edu, and, .com) and over 200 country based domains (such as .us, .de, or .eu). But, by this time next year there may over a thousand in multiple categories such as place domains (e.g. .nyc, .taipei), keyword domains (e.g. .hotel, .watch, .apparel) or even brand domains (e.g. .apple, .gap, .walmart). It is important to protect your business from potential consumer confusion and infringement when these new TLDs go live next year.

The Internet Corporation for Assigned Names and Numbers (“ICANN”), a non-profit corporation, manages most TLDs, internet protocol addresses, and basically anything that involves the URL itself. Last year, ICANN approved the creation of new TLDs called generic top-level domains (“gTLD”) to increase competition and choice in the world wide web. Any legal entity may apply to create and manage a gTLD.

By: Jeff Pietsch and Michael Robinson

It is Monday morning and you are recovering from a bachelor party in Sin City. Thankfully, your privacy settings on Facebook allow you to share pictures of your shenanigans in Vegas with only your friends. But what happens when your boss asks a friend and coworker to show him your embarrassing and private photos? Should a status update intended for a select few be protected from the prying eyes of your employer?

At an age when over 900 million people use Facebook, it is no surprise employers increasingly use social media in evaluating current and prospective employees. For example, last week the Federal Trade Commission (FTC) approved a process allowing a background check company to screen job applicants’ Internet photos and postings. The FTC determined that such actions were in compliance with the Fair Credit Reporting Act. This means a search of what you have said or posted to Facebook, Twitter, Flickr, blogs, and the Internet may become a standard part of background checks when you apply for a job.  

By: Nathan Geronimo

We have all participated in practical jokes.  If good-natured, executed correctly, and within the bounds of civility, practical jokes can be a fun way to get closer to people.  However, sometimes jokes can be anything but funny, and in the worst cases can constitute a crime.  In a recent case involving social media sites, California’s Fifth District Court of Appeal found that a minor’s conduct on Facebook constituted identity theft, which can be a misdemeanor or a felony.  In In re Rolando S., a juvenile obtained a classmate’s Facebook login information and accessed her Facebook page.  The minor was able to access the victim’s Facebook page because he received an unsolicited text message with the victim’s email password.  Armed with the email account information and password, he used this information to log into the victim’s Facebook account.  Once in the account, he made obscene changes to the victim’s profile, and posted lewd messages on two of the victim’s male friends’ pages purportedly as the victim. 

The minor was charged with willfully obtaining personal identifying information (which includes unique electronic data) and using it for an unlawful purpose, a violation of California Penal Code section 530.5.  The minor admitted to accessing the victim’s Facebook page and making the offending posts and changes, and he was convicted of identity theft.  On appeal, the minor argued that because he received the victim’s login information via unsolicited text message, that he did not “willfully” obtain the personal identifying information.  The Court disagreed, finding that the minor willfully obtained the information when he chose to remember the password from the text, and used the password to access the victim’s Facebook account.  Essentially, the Court found that the minor demonstrated a willingness to commit the act. 

By: David Muradyan

Online service providers and operators of such sites should take careful note of the Second Circuit Court of Appeals’ recent decision in Viacom Int’l, Inc. v. YouTube, Inc., Case No. 10-3342-cv (“Viacom”), where the court held that service providers and operators will not be protected from the safe harbor provisions of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 512(c), if they have “actual knowledge or awareness of facts or circumstances that indicate specific and identifiable instances of infringement.”

For background, “[t]he DMCA was enacted in 1998 to implement the World Intellectual Property Organization Copyright Treaty,” Universal City Studios, Inc. v. Corley, 273 F.3d 429, 440 (2d Cir. 2001), and to update domestic copyright law for the digital age. Ellison v. Robertson, 357 F.3d 1072, 1076 (9^th Cir. 2004). In particular, the DMCA established a series of four “safe harbors” that allow qualifying service providers to limit their liability for claims of copyright infringement based on (a) “transitory digital network communications,” (b) “system caching,” (c) “information residing on systems or networks at [the] direction of users,” and (d) “information location tools.” 17 U.S.C. §§ 512(a)-(d). The safe harbor at issue in Viacom was § 512(c), which covers infringement claims that arise “by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the service provider.” 17 U.S.C. § 512(c)(1). To qualify for protection under any of the safe harbors, a party must: (1) be a “service provider,” which is defined as “a provider of online services or network access, or the operator of facilities therefor,” Id. § 512(k)(1)(B); (2) satisfy certain “conditions of eligibility,” including the adoption and reasonable implementation of a “repeat infringer” policy that “provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network,” Id. § 512(i)(1)(A), and (3) accommodate “standard technical measures” that are “used by copyright owners to identify or protect copyrighted works.” Id. §§ 512(i)(1)(B), (i)(2). The § 512(c) safe harbor will apply only if the service provider: 

By: Jeff Pietsch

What happens when someone takes your virtual goods?  You know, the virtual goods that you earn or buy by playing games such as Farmville or Second Life.  Usually, these goods are in the form of virtual objects such as weapons or special character features.  Virtual goods can also be in the form of virtual currency which can be used to purchase virtual objects.

Virtual goods and currencies were recently valued at more than $3 billion dollars globally.  Despite the large virtual economy, the law is relatively unclear when it comes to how virtual goods are treated.  Should virtual goods be treated similar to property laws or are virtual goods merely an aspect of a game that can be changed or eliminated at the whim of the game creator?  A recent class action lawsuit against Google may help clarify these issues for gamers and game developers alike.

The plaintiffs in this case are players of an online video game known as SuperPoke! Pets (“SPP”) who purchased virtual gold or other virtual items within SPP.  SPP allows its users to adopt, name and care for a virtual pet.  Users can interact with their virtual pet, dress it, customize its environment and also interact with other user’s virtual pets.  From its creation in 2008, SPP’s popularity increased and it was eventually acquired by Google in 2010.

By: Nathan Geronimo

A few months ago I wrote about the dangers of posting information online that contradicted your own contentions when involved in litigation.  I cited to cases where posts on social networking sites were used as evidence against plaintiffs in civil cases.  A recent case involving blogs and social networking sites illustrates yet another legal issue associated with internet posts in the modern times: Posts affecting a third party’s privacy, and the possibility that such posts can be considered harassment.

Johnson v. Arlotta is a classic “jilted lover” story with a modern twist.  Andrew Arlotta and Ann Marie Johnson had a romantic relationship for just under a year.  After this relationship terminated, Arlotta continued to contact Johnson, who did not welcome Arlotta’s communications.  In late December 2009, Johnson obtained a six-month harassment restraining order against Arlotta, which prohibited Arlotta from committing any acts intended to adversely affect Johnson’s safety or privacy, and from having any contact with Johnson by email or by other means or persons.

By Zachary Wadlé

In my last column of 2011 I wrote about the proposed “Stop Online Piracy Act” (“SOPA”) introduced in the United States Congress to provide the government with enhanced, but highly controversial, tools to fight online copyright infringement. As I noted, SOPA “spawned a fierce public relations and lobbying battle between Silicon Valley and Hollywood that will play out in the media and in the halls of Congress in the months to come.” Despite the spotty record of my predictive powers, these words turned out to be prescient. The debate over SOPA has blown up in recent weeks, culminating with Wikipedia’s (and many other well-known internet sites) decision to black out their website on January 19, 2012. Google got in on the act too by “censoring” the Google logo on its homepage, (but still allowing use of its search engine and all other Google web services).

The online blackout led by Wikipedia had an immediate effect. The next day, Senate Majority Leader Harry Reid (D-NV) and Congressman Lamar Smith (R-TX), chairman of the House of Representatives Judiciary Committee, postponed critical votes on SOPA (and its companion Senate Bill – the “Protect Intellectual Property Act” or “PIPA”). Rumors swirled that Reid did not have the necessary 60 votes in the Senate to move the legislation past a key procedural hurdle, and Smith said, “I have heard from the critics and I take seriously their concerns regarding proposed legislation to address the problem of online piracy.” For now, the legislation is tabled for further negotiation and re-drafting in light of the substantial criticism from internet heavyweights.

By Nathan Geronimo

People are better connected with friends and family than ever before.  Social media sites such as Facebook and Twitter can be an excellent way to stay in touch with loved ones, and to get daily updates of people’s lives.  Similarly, through sites such as YouTube, people are able to share videos and information with others almost instantaneously.  While these sites can be great to disseminate images and information to a desired audience, they can also make information readily available to audiences that are less desirable to, and not contemplated by the poster.  There has been a great deal of buzz in recent years about employers using social media sites to perform “background checks” on prospective employees, and warning job applicants to be conscious of this fact when posting on social media sites.  In addition to this concern, recent cases illustrate a possible new concern for social media posters: use of social media posts in litigation.

In a recent decision in Louisiana, Boudwin v. General Ins. Co., Plaintiffs sued an individual and an insurance company based on alleged injuries arising out of a car accident.  In the lower Court, Plaintiff’s prevailed on the question of liability, but were unsatisfied with the jury awards of $25, 000 to the first Plaintiff, and $50,000 to the second Plaintiff.  On appeal, Plaintiffs argued that the jury erred in failing to award them any damages for physical disability or loss of enjoyment of life.  To recover based on a theory of detrimental lifestyle change, a court looks at both the severity of the injury, and Plaintiff’s lifestyle prior to the injury.

By Zachary Wadlé

On Oct. 26, 2011, the Stop Online Piracy Act “SOPA” (H.R. 3261) was introduced in the United States House of Representatives. One of SOPA’s primary goals is to address the continuing problem of online digital piracy of counterfeit movie, music, and other copyrightable works engaged in through foreign websites. 

The 1998 Digital Millennium Copyright Act (DMCA) and the Copyright Act of 1976 are the primary existing U.S. laws that address copyright infringement, but both have limited ability to address foreign based websites that engage in digital piracy. SOPA attacks this problem by giving both government officials and copyright owners new powers to target foreign websites and infringers through the search engines, web hosts, and payment system providers that allow foreign websites to reach the U.S. market. 

By James Kachmar

Although courts routinely grant permanent injunctions to curtail deceptive marketing practices, they sometimes struggle with whether an injunction impermissibly violates a party’s rights under the First Amendment. In TrafficSchool.com, Inc. v. EDriver Inc., the Ninth Circuit struck down one such injunction finding that it was overbroad and violated the defendants’ First Amendment Constitutional rights to free speech.

In TrafficSchool.com, the defendants owned and managed several for-profit websites, including DMV.org, whose mission was to save their customer “time, money and even a trip to the DMV.” People could visit the defendants’ website “for help renewing drivers’ licenses, buying car insurance, viewing driving records, beating traffic tickets, registering vehicles and even finding DUI/DWI attorneys.” The defendants generated revenue from the DMV.org website based on the number of visitors it attracted. Given the website name DMV.org, as well as its layouts, many visitors confused the website with the one that was run by California’s actual Department of Motor Vehicles. In addition to consumers, law enforcement officials and DMV employees from other states also confused DMV.org with the real California DMV website.

By Scott Plamondon

Most of us easily will recall one of the first uses of the internet: Napster. While Napster thrilled users with the prospect of “free” music and the ability to locate those obscure songs you thought were lost when your last vinyl LP record broke, its widespread use was devastating to the retail music industry and infuriated Metallica drummer Lars Ulrich. Further, in most instances, the use of Napster to download music and other content also amounted to copyright infringement. Accordingly, Napster was sued, the general public was educated about the fact that stealing copyrighted content is unlawful, and Lars Ulrich was happy.

The end of Napster marked only the beginning of the use of the internet for sharing files over what are called peer-to-peer (“P2P”) networks. Although Napster ultimately was moved to make adaptations to comply with copyright laws, multiple other unrestricted P2P file-sharing tools sprang up in its place. Seemingly overnight, tools like LimeWire Kazaa, and BearShare came into existence to fill the void left by Napster.

By Scott Hervey

The motion picture industry’s battle against cyber piracy took an interesting twist when an individual who allegedly engaged in the illegal downloading of the movie Far Cry filed a lawsuit against the Copyright Group and the law firm that has filed numerous suits against thousands of alleged infringers.  To date, the law firm, Dunlap, Grubb & Weaver has filed suit against 20,000 anonymous “Doe” defendants for illegal file trading copies of various motion pictures, including Hurt Locker and Far Cry. Once the firm determines a defendant’s true identity it then sends out a demand letter informing the individual that they have been identified as having illegally downloaded a motion picture and explaining that the plaintiff is entitled up to $30,000 in damages under the Copyright Act for each infringed work (and in cases where the plaintiff can prove that the infringement was intentional, up to $150,000 in damages.)   The firm then offers the individual an early opportunity to settle for $2,500 before it is named as a defendant in the complaint. 

By: David Muradyan

Does the Anticybersquatting Consumer Protection Act impose liability upon cybersquatters who innocently register a domain name and properly use it for many years, but who then use a domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom? In DSPT Int’l, Inc. v. Nahum, __ F.3d __, 2010 WL 4227883, No. 08-55062 (9^th Cir. Oct. 27, 2010), the Ninth Circuit answered in the affirmative.

By Scott Hervey

In October, 1998 the EU enacted the European Commission’s Directive on Data Protection (“Directive”) which, among other things, established a comprehensive approach to the protection of various forms of data, and prohibits the transfer of an individual’s personal data to non-EU nations that fail to meet the EU’s “adequacy” standard for privacy protection. The U.S is one such nation. 

By W. Scott Cameron

The Ninth Circuit issued an interesting ruling last week regarding the ownership and status of a domain name as property. In Office Depot, Inc. v. Zuccarini, ___ F.3d ___, Feb. 26, 2010, the Ninth Circuit ruled that a judgment creditor can levy a domain name of a judgment debtor to satisfy his judgment. This ruling was interesting for a couple of reasons. First was the location where the domain name can be levied, and second the facts of the case make the result somewhat ironic.

by Jeff Pietsch

A federal district court in Minnesota dismissed claims made under the Computer Fraud and Abuse Act (18 U.S.C. § 1030) (“CFAA”) for the receipt of unwanted text messages. The CFAA, which was originally adopted as criminal law to prohibit actions that damaged another’s computer system or stealing information from it, now permits a claim for civil damages. 

By Jeff Pietsch

On June 30, 2009, the Second District Court of Appeals in Los Angeles affirmed the judgment of a lower court and held that internet servers like MySpace cannot be held liable when minors are sexually assaulted by adults they meet through the website.   The plaintiffs representing the four minor “Julie Does” and their parents or guardians brought suit against MySpace for negligence, gross negligence, and strict product liability claims.  They contend that MySpace should have instituted “reasonable, basic safety precautions” such as using age-verification software or setting the default security on minor’s accounts to “private” to protect minors from sexual predators.  The court, however, found that Section 230 of the Communications Decency Act protects MySpace from liability, and ruled that what the plaintiffs want—to restrict or make available certain material—is expressly covered by Section 230 and provides immunity to MySpace.

By W. Scott Cameron

The Internet is a seemingly endless and ever-expanding collection of information. You can find almost anything on the Internet if you look for it, and look in the right place. To find it, however, you often need the “domain name,” or address, of the web site that has the information you want. Every web page has its own unique domain name, and only one company can maintain the database that keeps track of all the domain names on the Internet. That company, currently VeriSign, Inc., essentially controls the Internet. The way VeriSign got that control, and the way it keeps it, led the Coalition for ICANN Transparency, Inc. (“CFIT”), to file an antitrust lawsuit, CFIT v. VeriSign, Inc. The Ninth Circuit ruled this week that CFIT can go forward with its suit, reversing the district court which had dismissed the suit three times. This begs the question: Will the Ninth Circuit bring down the Internet?

by James Kachmar

On May 7, 2009, the Ninth Circuit issued its opinion in the case, Barnes v. Yahoo!, Inc. (No. 05-36189), in which it decided the issue of whether the Communications Decency Act of 1996 (“CDA”) protected Yahoo from a lawsuit where it allegedly promised to remove harmful material to the plaintiff from its website but failed to do so. 

In 2004, Cecilia Barnes broke up with her boyfriend and he responded by posting profiles of Ms. Barnes on a Yahoo website. The profiles contained nude photographs of Ms. Barnes and her ex-boyfriend that were apparently taken without her knowledge and the profiles included solicitations to engage in sexual intercourse. The ex-boyfriend also participated in discussions in Yahoo chat rooms in which he posed as Ms. Barnes and directed correspondents to the fraudulent profiles of Ms. Barnes he had created. In response to these profiles, several men contacted plaintiff, including visits to her office, all in the expectation of sex.

By Jeff Pietsch

Last year, Google lost the first round of a court battle against Vulcan Golf, a golf club manufacturer, in a trademark and cybersquatting dispute. In that decision, the US District Court in Illinois ruled that Google could be sued for its role in serving ads on websites that use domain names that violate trademark and cybersquatting laws. In the latest round of decisions on this case, the court denied class certification damaging the plaintiffs’ hopes in prevailing in this matter.  

by Scott Cameron

eBay describes itself on its website as: “The World's Online Marketplace®, enabling trade on a local, national and international basis. With a diverse and passionate community of individuals and small businesses, eBay offers an online platform where millions of items are traded each day.” Nearly anything can be bought and sold on eBay. However, the Ninth Circuit recently announced that one thing you do not buy on eBay is personal jurisdiction.

The decision, Boschetto v. Hansing, 539 F.3d 1011 (9^th Cir. 2008), begins by stating that the “appeal presents a question that remains surprisingly unanswered by the circuit courts: Does the sale of an item via the eBay Internet auction site provide sufficient ‘minimum contacts’ to support personal jurisdiction over a nonresident defendant in the buyer’s forum state?” In the Ninth Circuit it does not.

By Scott Cameron

Intellectual property law is governed by an assortment of federal laws and also several state laws. Trademarks, trade dress, copyrights, patents, and antitrust are all protected by federal statutes and a complaint alleging a violation of these rights can usually be filed in or removed to federal court. Therefore, intellectual law practitioners are generally accustomed to litigating in federal court. Among other aspects of federal practice, IP litigators are usually familiar with the well known “notice pleading” requirement for a federal complaint. 

Under the notice pleading standard, a complaint will not be dismissed for failure to state a claim so long as it puts the defendant on notice of the gravamen of the plaintiff’s complaint and includes the “short and plain statement of the claim showing that the pleader is entitled to relief” called for in Rule 8 of the Federal Rules of Civil Procedure. Detailed factual allegations are not required to survive a challenge to the complaint. The U.S. Supreme Court set out the pleading requirement decades ago in a case that has been almost universally cited ever since. In Conley v. Gibson, 355 U.S. 41 (1957), the Court laid down what it termed “the accepted rule that a complaint should not be dismissed for failure to state a claim unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief.” Federal courts have applied that standard for 50 years to refuse to dismiss complaints containing only the barest of allegations.    

By Sarra Ziari

On August 20, 2008, in Lenz v. Universal Music Corp., Judge Fogel of the United States District Court, N.D. California ruled that copyright owners must consider fair use before issuing takedown notices under the Digital Millennium Copyright Act (“DMCA”), and issued a warning against the misuse of takedown notices by overreaching copyright owners. 

By Jeffrey Pietsch

eBay let out a sigh of relief last month when a New York Federal Court ruled that eBay’s efforts to remove sellers of counterfeit goods was sufficient to combat the sale of fake Tiffany & Co. products. In fact, the court held that trademark holders, such as Tiffany & Co., are the ones responsible for policing the online market place for counterfeit products, not online “swap meets” such as eBay.

By: Dale C. Campbell and Serena Crouch, Third Year Law Student at McGeorge School of Law

Internet users and privacy advocates across the nation fear they are losing the continuing battle to protect internet privacy rights.  A court decision in a lawsuit between Viacom and YouTube.com is the most recent battlefield regarding data likely to provide the video viewing habits of millions around the world.  

In March 2007, Viacom sued YouTube and Google, Inc. in the United States District Court, Southern District of New York, seeking at least $1 billion in damages for alleged copyright infringement.  Viacom claims that YouTube built its business by willfully offering Viacom’s copyright protected material such as episodes of “The Daily Show with Jon Stewart” and the cartoon “SpongeBob SquarePants.”  Viacom claims that neither YouTube nor its users are licensed to upload its material in the manner it is being used.

By Dale C. Campbell

Search engine websites sell keywords as a component of their advertising programs. By purchasing an advertising keyword, a business’s advertisement will appear next to the search results whenever a person enters the advertising keyword as a search term. Trademark questions arise whenever a competitor purchases an advertisement keyword that is confusingly similar to the protected mark of another competitor, thereby causing its advertisement to pop up next to the search results.

By Jeffrey Pietsch

Google may soon be facing an expensive and damaging class action lawsuit. A federal court ruled last month that Google can be sued for its role in serving ads on websites that use domain names that violate trademark and cybersquatting laws. This case is significant because Google is not the owner or user of the infringing domain names. Google is simply providing advertising services to these domain names. Google, seeking dismissal of the case, argued along these lines. The court, however, held that Google may be liable for cybersquatting.

By Dale C. Campbell

Lawyers can’t turn around without being bombarded with CLE brochures announcing yet another e-discovery workshop. Electronic discovery is a new medium for storing information, but the time-tested rules concerning an attorney’s ethical duty to the court and opposing counsel in connection with discovery have not changed. On January 7, 2008, Magistrate Judge Barbara L. Major on the United States District Court, Southern District of California, issued an order granting sanctions against Qualcomm Incorporated and several of its attorneys in connection with discovery abuses. (See Qualcomm Incorporated v. Broadcom Corporation, U.S.D.C., S.D. Cal. Case No. 05-CV-1958-B (BLM). The Qualcomm decision commands the attention of all corporate counsel and litigators involved in the discovery process. As stated by Magistrate Judge Major, the decision “provide[s] a roadmap to assist counsel and corporate clients in complying with their ethical and discovery obligations and conducting the requisite ‘reasonable inquiry.’”

By Scott Hervey

Just how valuable are baseball statistics? Apparently very valuable. In fact, baseball statistics are so valuable that CBC Distribution and Marketing, which has run the CDM Fantasy Sports leagues since 1992, sued Major League Baseball and challenged its ownership claim over player statistics.   In a matter which rose all the way to the United States Court of Appeals for the 8^th Circuit, CBC agued that baseball statistics become historical facts as soon as a game is over, and that it shouldn’t have to pay for the right to use them. Major League Baseball claimed that the right of publicity belonging to major league baseball players makes it illegal for fantasy leagues to commercially exploit the statistical profiles of its players.

By Scott Cameron

Has eBay become so powerful that it can successfully claim to be the only “Bay” on the Internet? That’s what it argued in a recent Ninth Circuit Court of Appeals trademark infringement case. In that case, Perfumebay.com, Inc. v. eBay, Inc., - - - F.3d - - - (9^th Cir. November 5, 2007), the court upheld a federal district court decision from the Central District of California which ruled that the term “PerfumeBay” and “perfumebay.com” infringed the mark of Internet giant eBay. 

By Jeff Pietsch

Earlier this month, a California district court certified a class on behalf of blind internet users against Target.com under the American Disabilities Act and California law. National Federation of the Blind v. Target Corp. (N.D. Cal. Sept. 28, 2007). The class claims that the Target.com website is inaccessible to the blind and therefore violates federal and state laws prohibiting discrimination against the disabled. This ruling should give notice to website owners that websites, especially those available in California, should be made to be accessible to the blind.

By Scott Hervey

It's not uncommon for companies to change or modify the terms under which they provide services to consumers. This is true whether the company is a traditional brick and mortar company or Internet based.   When traditional companies make a change to service terms they usually send some type of written notice to the consumer. But for some reason this never caught on for Internet based companies. Often the Internet based Company would merely make changes to its terms of use (the contract which governs the consumers’ use of the relevant website and its services) and post the revised terms of use on its website.  In most instances, unless the user reviewed the terms of use frequently and compared the current version to the version that was posted at the time the consumer became a user of the site, the user would be unaware of any changes.

By Jeff Pietsch

On May 15, 2007, the 9^th U.S. Circuit Court of Appeals created a significant exception to the immunity granted to a website operator under 47 U.S.C. § 230 “The Communications Decency Act” (“CDA”). The court held that Roommate.com can be held liable for publishing content from member questionnaires created by using drop-down menus and distributing member profiles, but is immune from liability for publishing users’ responses to open-ended fields or questions. (Fair Housing Council of San Fernando Valley v. Roommate.com, LLC, 2007 WL 1412650 (9th Cir.). With this recent ruling, website operators will need to determine when the protection provided by the CDA for Internet services applies to its site.

By Scott Hervey

The United States District Court for the Southern District of New York rules that the downloading of a digital music file embodying a particular song does not constitute a "public performance" of that song within the meaning of the Copyright Act.  Thus, on-line music retailers need not negotiate a license with performance rights organizations like ASCAP and BMI in order to offer downloadable music files to consumers.

The opinion is available here

By James Kachmar

On March 29, 2007, the Ninth Circuit issued its opinion in the case Perfect 10, Inc. v. CCBill LLC, et al. in which it attempted to clarify when immunity is available to internet service providers for copyright infringement under the Digital Millennium Copyright Act (“the DMCA”), 17 U.S.C §512. Perfect 10, the publisher of an adult magazine and a related subscription website, brought a lawsuit claiming that CCBill and CWIE violated copyright laws by providing services to other websites that posted images stolen from Perfect 10’s magazine and website. CWIE provides web hosting and related internet connectivity services to the owners of various websites. CCBill allows customers to use credit cards or checks to pay for subscriptions or memberships to various websites. The U.S. District Court granted summary judgment in favor of CCBill and CWIE as to the copyright claims finding that they qualified for the “safe harbor” provisions from copyright infringement liability under the DMCA. 

By Dale Campbell

When can you knowingly republish defamatory statements without risk of liability? When you do so on the Internet. 

The California Supreme Court, in Barrett v. Rosenthal (November 2006) 40 Cal.App.4^th 33, followed the line of federal cases interpreting the Communications Decency Act of 1996 (CDA) to find broad immunity for both Internet service providers and users of an interactive computer service for republishing defamatory statements. 

By Jeff Pietsch

Last week Keith Urban, the Grammy nominated country singer from Australia, sued Keith Urban, a New Jersey painter, for use of the website www.keithurban.com. The suit filed in federal court alleges that Keith Urban, the painter, is infringing on the singer’s trademark rights by misleading internet users into believing that the website is owned by the singer. The website, which has been owned and registered by the painter since 1999, sells oil paintings through the website. Upon entering the site users see the following: “You have reached the site of Keith Urban. To those who don’t know, oil painting is one of my hobbies.” Users are then directed to a link which displays several paintings. The singer claims this use infringes on the Keith Urban trademark by violating the Anticybersquatting Consumer Protection Act, the Federal Trademark Dilution Act, and federal unfair competition laws. This article will examine the claims against the painter under the Anticybersquatting Consumer Protection Act.

By Jeffrey Pietsch

In 2006, Federal District Courts throughout the country were asked to decide if purchasing and using trademark-protected keywords to trigger internet advertising constitute trademark violations as contemplated by the Lanham Act. Unfortunately for advertisers, these rulings were inconsistent. In 2007, this trend continues with the Eastern District of Pennsylvania ruling in J.G. Wentworth v. Settlement Funding, LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007). In J.G. Wentworth, the court siding with advertisers, ruled that using trademark-protected words to trigger internet advertising does not violate trademark law.

By James Kachmar

          A California appellate court affirmed last month that an employer is entitled to immunity from tort liability for threatening emails sent on or through the employer’s internet/email system by one of its employees. On December 14, 2006, the Sixth Appellate District in the case Delfino v. Agilent Technologies, Inc., 2006 WL3635399, affirmed summary judgment in Agilent’s favor finding that Agilent, as an employer, was immune from tort liability under the Communications Decency Act of 1996 (“CDA”) for threatening emails sent and posted by one of its employees. This case, apparently one of first impression, extended the immunity protections of the CDA to cover corporate employers who provide their employees with internet access through internal computer systems. Employers thus have additional protection from claims that their employees have used the employer’s computer system to commit torts against third persons.

By April Hiroshima Gatling

          This month, a United States District Court ruled that retailer Land’s End will get a trial in a case where defendant website owners are accused of profiting from the company’s online affiliate program through a scheme that gave “typosquatting” a new twist.

          “Typosquatting” is a form of cybersquatting that relies on typographical mistakes made by Internet users when inputting a website address into a web browser. Most typosquatters are either in the practice of tricking or diverting Internet users to alternative websites or attempting to sell the domain name back to the trademark owner.         In this case, however, defendants directed Internet users to the Land’s End’s website, but only after channeling them through “affiliate” sites owned by defendants, who in turn received commissions associated with subsequent purchases.

By Scott Hervey

On June 27, 2005, the United States Supreme Court handed down its decision in MGM v. Grokster.#160 That case involved an appeal from the Ninth Circuit by MGM, various record labels and other content owners of an adverse decision in their attempt to hold Grokster and other peer-to-peer network companies liable for copyright infringement.#160 MGM and the other content owners had initially filed a lawsuit against Grokster and other peer-to-peer network technology companies to hold them liable for damages resulting from their supplying the technology that enabled users to trade online copyrighted works.#160 The Ninth Circuit, upholding the District Court's finding, held that the technology companies could not be held either vicariously liable or liable for contributory copyright infringement.#160 In coming to its conclusion, the Ninth Circuit interpreted the Sony v. Betamax case in holding that the distribution of a commercial product capable of substantial noninfringing uses could not give rise to contributory liability for infringement unless the distributor had actual knowledge of specific instances of infringement and failed to act on that knowledge.#160 Because the Ninth Circuit found the technology company's software to be capable of substantial noninfringing uses and because respondents had no actual knowledge of infringement resulting from the software's decentralized architecture, the court held that they were not liable.#160 (The architecture of the defendant's file trading network is an open network.#160 That is, it does not have a central server like the old Napster network but rather uses nodes and supernodes; computer systems that are owned by users of the software and have no relationship to the defendants.)#160 The Ninth Circuit also held that the defendants did not materially contribute to their user's infringement because the users themselves searched for, retrieved and stored the infringing files, with no involvement by respondents beyond providing the software in the first place.#160 Finally, the court held that the defendants could not be held liable under a vicarious infringement theory because the defendants did not monitor or control the software use and had no agreed upon right or current ability to supervise its use and had no independent duty to police infringement

The United States Supreme Court held on Monday that Internet file-sharing services will be liable for copyright infringement if they intend for their customers to use their software primarily to engage in illegal downloading.

Read the full opinion here:#160 Download grokst1.pdf

By Scott Hervey

Podcasting is a way of publishing sound files to the Internet, and delivering the files to users who subscribe to a feed.#160 Podcasting uses a distinct content delivery protocal that has enabled many producers to create self-published "radio shows" that users can subscribe to and have delivered directly to their computer via one of a number of content aggregators.#160

Podcasts are technologically unlike webcasting or streaming. Webcasting is an Internet stream of a live broadcast, or an online simulcast of a broadcast signal.#160 Streaming is a technological means for accessing a stream of electronic information at the same time it is delivered to a user's computer.#160 Neither webcasting nor streaming result in the creation of an audio file on the Internet user's computer.#160 Podcasting however, involves the downloading of a single complete audio file to a user's computer to be listened to at a later time.

Like blogs, podcasting has been adopted both by amatures who want to host their own "radio show" and by professionals who see podcasting as an inexpensive way to distribute content.#160 Podcasting is not the realm of techno geeks or Internet extremists.#160 Mainstream broadcasting and media companies have realized the benefit of podcasting.#160 National Public Radio offers podcasts of most of its shows, and Infinity broadcasting network announced plans to launch a pure podcast radio station.#160 ABC is even offering podcasts of Nightline and Good Morning America.#160 Despite Corporate America quickly embracing this new technology, the majority of podcasts being offered today are from individuals and small businesses.

One of the quickest ways for a podcaster to get into hot water is to infringe a third party's copyright.#160 #160A number of music podcasts are produced by DJ's or independent record labels that use their podcast programs as a means of promoting other artists.#160 Most of these podcasts have a "mixed tape" quality to them, especially in the dance, hip-hop and rap genres.#160 Other podcasts are produced by music fans who may be interested in a certain style or type of music.#160 For example, one more popular podcast, Coverville, focuses entirely on covers songs.#160 If a podcast includes music and the podcaster has not obtained all the necessary rights, copyright infringement will result.#160 The real problem is for podcasters who want to stay out of the RIAA's crosshairs, determining exactly what type of license to get can be challenging.

Copyright law implications in music can become very confusing, very quickly.#160 Copyright law provides the copyright owner with the following rights:#160 the right to control the public performance of its copyrighted work; the right to control the production and distribution of a sound recording embodying a copyrighted work; and the right to create a copy of a sound recording.#160 Each of these rights may be implicated in podcasting.#160

Performance right organizations (PRO), such as BMI, ASCAP and SESAC license the public performance of copyrighted work.#160 Usually a license from all three is recommended because each organization represents different publishers of musical works.#160 #160Performance rights organizations have staked a claim to the right to license music for podcasting.#160 On its website, BMI claims that it has "been licensing podcasters for nearly a year covering the public performance rights to the BMI repertoire" and lists Coverville as one of its licensees.

The right to produce and distribute a sound recording which embodies a copyrighted composition is controlled by music publishers, who have abdicated the responsibility to the Harry Fox Agency.#160 HFA collects mechanical license fees (a mechanical license covers the right to reproduce and distribute copyrighted musical compositions [i.e. songs], including uses on CDs, records, tapes, and certain digital configurations) on behalf of publishers.#160 This includes full permanent downloads, whether or not charged for.#160 Since podcasting technology results in the creation of a single digital audio file to a user's computer, HFA could rightfully claim that it is the proper agency to control licensing for podcasts.#160 While HFA has yet to make this claim, given what occurred when PROs and HFA were trying to determine who controlled the right to issue licenses for webcasting and streaming, it is only a matter of time.

It is important to note that HFA licenses cover the right to make and distribute recordings of musical compositions, and not the use of existing sound recordings.#160 In order to clear those rights, a podcaster would have to obtain permission from the owners of each sound recording, which in most cases are record labels.#160

In 1995 and again in 1999, the Copyright Act was amended to create a statutory license mechanism for the digital transmission of sound recordings and musical works.#160 The 1995 legislation covered uses like the commercial sale of MP3s, while the 1999 amendment covered webcasting and streaming.#160 The 1999 amendments allowed webcasters the right to webcast or stream copyrighted music, and required them to pay certain pre-set royalties to SoundExchange, a performance rights organization that was designated by the U.S. Copyright Office to collect and distribute statutory royalties.#160

The 1999 amendments to the Copyright Act do not provide coverage for podcasting because the statutory license only covers the transmission of a sound recording, not the distribution of a copy of it.#160 Podcasting involves the reproduction of a sound recording and results in the creation of an audio file on a user's computer.#160 As stated above, clearing the right to create a reproduction of a sound recording, not just the musical composition, necessitates approval from the record label that owns the sound recording.#160

Although BMI and ASCAP are offering performance licenses, podcasters who want to remain on the right side of the law may also need to clear rights from other parties.#160 Because there is no industry wide standard and no central clearance mechanism like SoundExchange, clearing rights to the sound recording can be rather expensive and time consuming.#160 The music industry and our lawmakers need to devise a mechanism that allows podcasters to easily comply with the law and a licensing scheme that is not financially daunting.#160 Most non-corporate podcasters, such as Coverville, fund their operation entirely out of their own pocket, or by donations from listeners.#160 There is a desire for this type of alternative music programming; a desire that is not being fulfilled by commercial radio.#160 It would be shame if red tape and licensing costs silenced these unique and interesting programs emanating from the left of the radio dial.

By Scott Hervey

Wired reports that the French judiciary has been issuing lenient sentences and penalties to individuals involved in criminal proceedings involving illegal file trading.#160 The president of the French magistrate union, Judge Dominique Barella, has openly taken the position that the harsh criminal penalties imposed under French copyright law are inappropriate under the circumstances.#160 Wired reports#160 the Barella has insisted that a more appropriate policy needs to be adopted in France and in Europe that protects what he says are mostly young people of the MP3 generation who are weak targets against the machinations of the entertainment industry's legal agenda.

The French entertainment industry is not taking Barella's position lightly.#160 In a letter to the French Minister of Justice, representatives of France's entertainment, film, music associations stated "[w]e are surprised and shocked that the president of the magistrates union, given the level of influence he has on his colleagues, can publish in the press a call to not criminally sanction criminal acts, which contradicts the intentions of government bodies."

Barella defends his position, stating that the government's resources would be better spent focusing on large scale, international counterfeiting rings instead of targeting young Parisians who just want fill their ipod.

By Scott Hervey

If consumers in Ontario, Canada purchase goods from you over your website, you have until July 30, 2005 to prepare to for compliance with Ontario's Consumer Protection Act of 2002 (CPA 2002).#160 The CPA 2002 has a very long reach, similar to California's Data Security Law (See Business Data Management Practices - Fertile Ground For Liability).#160 The CPA 2002 applies to both companies located within Ontario and companies engaging in a transaction with a resident of Ontario.

Under the CPA 2002, U.S. companies conducting business with an Ontario resident over the Internet will have to provide its name and any other name it uses to conduct business, its address, and telephone number.#160 #160The company will also have to describe the goods in a fair and accurate manner, and provide a detailed breakdown on the price charged to the consumer (cost of goods, freight, tax, etc.) and fully explain payment terms.#160 #160

Under the CPA 2002, U.S. Companies will also have to provide the Ontario resident with a copy the agreement between the parties (e.g., a purchase agreement) within 15 days and provide the purchaser with opportunity to accept or decline and to correct any errors in the agreement.

If after July 30, a U.S. company fails to comply with the CPA 2002, the Ontario purchaser will have the right to cancel the transaction within 7 days after receiving a copy of the agreement.#160 If the Ontario purchaser never receives a copy of the agreement, the purchaser then has the right to cancel the transaction within 30 days after entering into agreement.#160