Tag Archives: Internet Law

He’s got the key

Originally posted 2009-12-01 17:06:25. Republished by Blog Post Promoter

Worthy of inclusion

Worthy of inclusion

Eric Goldman, author of one of the bona-fide-deserving, regularly updatedABA-Blawg-100-listed and actually fairly indispensable Technology & Marketing Law Blog updates us on a beat I’ve written on a whole bunch but given up hope on following comprehensively.  It is, however, a topic that anyone involved in trademark use on the Internet must stay on top of:  Keyword advertising litigation.

Here’s the latest, a report on a case called Morningware, Inc. v. Hearthware Home Products, Inc., 2009 WL 3878251 (N.D. Ill. Nov. 16, 2009), which involves a fairly novel question of what happens when one advertiser uses the phrase “Why buy an imitation?” in the small copy space Google ads allow you, along with the brand name of the competitor — suggesting the competitor is imitating the advertiser.

Eric walks you through the opinion, which he acknowledges is unremarkable in many respects.  But these observations are the ones I was particularly motivated to cut and paste here:

The advertiser also argued for a 12(b)(6) motion to dismiss on lack of consumer confusion grounds. While I understand the advertiser’s hope, I think it’s hard to convince a judge that the trademark owner failed to allege sufficient confusion in the complaint. This is especially true when plaintiffs invoke the stupid “initial interest confusion” doctrine, which has no doctrinal contours and therefore is simply impossible for defendants to refute at the motion-to-dismiss stage (obligatory cite to my anti-initial interest confusion rant from 2005). Citing to the abysmal 2002 Promatek case, the court says the plaintiff alleged enough initial interest confusion to survive the 12(b)(6).

Thanks, as ever, on that point Eric!  (Obligatory cite to my anti-initial interest confusion rant from 2003 here.)   Actually there were two points — I just get excited whenever he starts talking about initial interest confusion.  The first point is a good one, too:  Judges really don’t like to dismiss a trademark infringement complaint on 12(b)(6) grounds.*  Really good judges do, but they unfortunately are not in abundance in as many times and places as would be wished.

This paragraph is worth repeating too, as a summation of “what’s going on” this area of litigation:

I keep getting calls from reporters operating under the misimpression that trademark owner-vs.-search engine keyword advertising lawsuits are more common than trademark owner-vs.-keyword advertiser lawsuits. While the lawsuits against search engines certainly get way more press coverage, in reality they are relatively rare. I don’t have an exact count of pending lawsuits, but only 10 immediately come to my mind (9 against Google and the AA v. Yahoo case). In contrast, trademark owner-vs.-advertiser lawsuits are so numerous that I don’t blog on every complaint I see, and most trademark owners are wise enough to leave the search engines out of their litigation.

There you have it.   Reporters, keep calling Eric Goldman — he knows these things!  That’s why I ask him for free answers, too.RDC BIG BEARD

Defendants, on the other hand — “who you gonna call”?


*  The awfulness of this fact on legal, policy and justice grounds cannot be contained in this post, but is essentially the topic of about one fifth of the LIKELIHOOD OF CONFUSION® blog.

Diversion, yes, but no

Originally posted 2009-11-26 08:30:51. Republished by Blog Post Promoter

Some people have all the luck in the Eastern District of New York.  Whereas me — I think I’ve got it coming to me right down the middle, and then it seems to get, I don’t know — diverted from me!

So some lawyers get assigned judges in the Eastern District of New York whose ideas about trademark law and, well, the Federal Rules of Evidence — and, actually, the Federal Rules of Civil Procedure have, well, um . . . okay, I won’t say.  But in their courtrooms this is the kind of thing happens to “unauthorized resellers,” regardless of the actual “law” stuff.

RDC BIG BEARDI know, regular readers are sick of hearing about the S&L case, but I’m just framing the story here, okay?  Stick with me.

And then there are other judges in that same court who actually not only get it, but really, really, really get it:  There’s no such thing as “diversion” of authentic, untainted merchandise by “unauthorized” resale on the Internet.  Whether or not the manufacuter of a product thinks you need a whole two years of community college or that certificate from beauty school to slather on hair goop or tanning sludge, that preference does not “run with” the over-hyped blech they sell.

So — still setting the stage here, stay with me! — Judge Leonard Wexler, in 2007, went this far to make that point, as reported here exactly two year agos from tomorrow:

L’Oréal maintains that to keep the value, integrity and status of the products, they are supposed to be sold only by company-trained professionals in fashionable salons. Matrix alone “has been the number one professional hair brand on the market, with an estimated 16 percent market share,” L’Oréal said in court papers.

Quality King and Pro’s Choice, however, were obtaining the products in violation of the injunction by buying them, or, as it is called, diverting them, from middlemen and reselling them to nonqualified dealers, L’Oréal contended.

Diverting attention

Diverting attention

In his opinion, Wexler declined to enforce the old injunction, in effect, throwing out L’Oréal’s case against the two companies.

The judge said that if L’Oréal wanted seriously “to stop diversion of Matrix products,” it could terminate those of its distributors who are the sources of the diverted products.

He actually declined to enforce the old injunction, did Judge Wexler, because it would have actually been, well, wrong to!  Because of the law stuff.

Isn’t that enough mazal for Quality King?  Can’t some other lawyers in other courtrooms in that District have some of that good fortune?

No!  Evidently, on appeal of the earlier decision, the Second Circuit affirmed his vacatur (cancellation) of the injunction going forward, but remanded for further determination of whether the injunction should be not only — not “only”! — vacated, but also “terminated,” i.e., retroactively time-traveled into non-ever-existence.

So once more comes Matrix, the plaintiff, and with them this time big guns from the collossal Weil Gotshal, a real New York law firm this time.  So, was it a good idea to spend a good 50% more on fees (not to mention their markup on donuts!) to make the same arguments? Read More…

Google Gets it Right

Originally posted 2005-08-04 18:30:32. Republished by Blog Post Promoter

Perfect discrimination is every seller’s dream. The Internet at once promises to make that dream reality and yet provides consumers with the range of choice and potential transparency of the sell side that can maximize their options as well. From a microeconomic point of view, it’s a fascinating dynamic. In this online Wired article, “Media Hack” Adam L. Penenberg explains how Google is approaching perfect discrimination in the advertising business — and is only just scratching the surface.

Libel in the blogosphere

Originally posted 2006-05-05 11:49:54. Republished by Blog Post Promoter

Glenn Reynolds wonders aloud whether the Maine blogger dustup (UPDATE: suit withdrawn!) will generate some interest in his new “libel in the blogosphere” article. Well, what is LIKELIHOOD OF CONFUSION if not an obsequious devotee of Instapundit, who has been known to link here on a frequency akin to when we change the clocks?

I haven’t read the piece yet, but I will. The fact is that as an Internet law icon myself (that is typed with appropriate irony), I get a lot of inquiries on this topic (besides my pro bono work with the Media Bloggers Association on cases like the Maine situation). I anticipate that his bottom line will be the same one I tell 99% of prospective defamation clients:

  1. You haven’t suffered, and certainly can’t prove, damages.
  2. You’re highly unlikely to meet the legal standards for defamation, especially since (a) truth is a complete defense to a defamation claim and (b) statements of opinion (which is read very broadly) are never defamation, which requires a false assertion of what purports to be fact.
  3. You can’t afford litigation, and no, you’re not entitled to attorneys’ fees in the unlikely event that you do win.
  4. Your lawsuit will mainly serve to magnify “defamatory” statements that otherwise are little more than drops in the ocean — if it involves the Internet, immensely so.

But then, Prof. Reynolds has footnotes. And a gazillion readers. But I have [used to have] polka dots along the margins!

Jews for Jesus v. Google and Brodsky – update and analysis

Originally posted 2006-01-22 12:59:35. Republished by Blog Post Promoter

Jews for Jesus

I was on a panel called “Trademark Rights vs. Free Speech” at the Fall 2000 INTA Trademarks in Cyberspace Conference with Marty Schwimmer and David Bernstein. (Five years later I’m still glowing from the reflected brilliance!) The moderator was IP superstar Brendan O’Rourke, who cruelly, on-the-record, and correctly reminded me, “Ron, you lost the Jews for Jesus case, okay? Okay?” Yeah, well, okay. But that doesn’t mean the next guy–in this case, Google–has to! The “Jews for Jesus Whistle Blower” writes, at his Jews for Jesus blog:

Google has a few more days to respond to Jews for Jesus’ lawsuit over the rights to a blog. I bet Jews for Jesus is praying ferverently (and keeping their collective fingers crossed) that Google will give in. What is the likelihood that Google will set a precedent that all anyone has to do is sue Google and they’ll give in? Seems to me that Google is principled. And if they are willing to defend themselves against the government, there’s a good chance they’ll defend themselves against Jews for Jesus.

If Google doesn’t give in, will Jews for Jesus wilt? How much money do they have to pursue the control of a simple blog?

WB, they have plenty of money, and, as you cannily point out, they’re using this litigation to raise more. Jews for Jesus claimed (off the record) during the Brodsky litigation to have raised more in sympathetic donations than they spent on Thelen Reid’s legal fees. We’ll never know if that was true, but it’s food for thought.

As far as the “other side” went, although Steve Brodsky was the sole defendant and there was nothing but the most casual (well, and virtual) link between him and Rabbi Toviah Singer, certainly the two were aligned sympathetically. Rabbi Singer later told me that as a result of the controversy and the traffic that was generated as a result of the publicity for his website, a number of Messianic Jews (i.e., Christians with gefilte fish) returned to the Jewish fold. Maybe he was able to raise a dollar or too himself.

It is fair enough to say that the litigation was more helpful for J4J than it was for either Steve Brodsky, Rabbi singer or anti-J4J missionaries. The real loser, of course, was the law of trademark infringement, which still has not fully recovered. The most egregious aspect of J4J’s arguments on this point (as opposed to the even worse arguments–such as the cooked up “commercial use”–in the opinion) is the very premise that there is, with respect to these website cases, anything even approximating LIKELIHOOD OF CONFUSION.

As we put it in the Third Circuit brief which, among others, future Supreme Court justice Samuel Alito by all indications did not read (although he was on the panel that rubber-stamped the District Court decision with one sentence of affirmation):

Liability under the Lanham Act requires a showing, inter alia, of likelihood of confusion as to source. Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). But, appellee has submitted no admissible proof to support a finding that confusion is likely.
. . .

[I]t takes virtually no time for even self-described “unsophisticated” users to quickly realize they are at Mr. Brodsky’s site, not that of appellee. The honesty of the non-confusing message on Mr. Brodsky’s website is in stark contrast to the defendant’s website in Planned Parenthood:

Because the words on the top of the page load first, the user is first greeted solely with the “Welcome to the Planned Parenthood Page!” It is highly likely that an Internet user will still believe that she has found plaintiff’s web site at that point.

42 U.S.P.Q.2d at 1438. That kind of confusion is simply impossible in the case of Mr. Brodsky’s website . . . In response to this argument, the District Court found that an individual may be a sophisticated consumer of the Internet but may be an unsophisticated consumer of information about religious organizations. Such a user may find his or her way to the Defendant Internet site and then be confused; the Defendant Internet site advocates views antithetical to those of the Plaintiff Organization.

The last two clauses in the excerpt above constitute a non-sequitur. They also make no sense in the context of the actual website at issue, which explicitly states its opposition to “the Jews for Jesus cult” and disclaims any affiliation with appellee. Concluding that Mr. Brodsky is not part of a Jews for Jesus organization does not require any particular “sophistication.” It only requires the ability to read.

In fact, the courts routinely define “sophistication” in much less “sophisticated” terms than did the court below, where a simple grasp of the obvious is all that is required to negate confusion. Thus, in Girls Scouts v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1231 (S.D.N.Y. 1969), the court ruled that “rational analysis” precluded confusion about whether the Girl Scouts were the source of a poster depicting a pregnant girl in the well-known uniform of the Girl Scouts appearing with the caveat “BE PREPARED.” Similarly, in Stop the Olympic Prison v. United States Olympic Committee, supra, 489 F. Supp. at 1123, a poster reading “Stop the Olympic Prison” was held not to violate the trademark of the United States Olympic Committee. The court reasoned as follows:

On the basis of its own examination of the poster, the Court finds it extremely unlikely that anyone would presume it to have been produced, sponsored or in any way authorized by the U.S.O.C. While at a fleeting glance, someone might conceivably mistake it for a poster advertising the Olympics, nobody could conceivably retain such a misconception long enough to do any harm: for example, there is no danger that anyone would purchase or display it as such.

Id. . . .  As in Girl Scouts and Olympic Prison, no rational person could believe that Mr. Brodsky’s message was in any way affiliated with appellee. The District Court nonetheless held that confusion is likely because Mr. Brodsky’s site is “related” to that of appellee [and that the use of the trademark was in fact more, not less, protected for this reason, on fair use grounds!-- RDC]. The court below inexplicably rejected the inescapable conclusion that consumers can dispel any confusion if they merely trouble to read Mr. Brodsky’s message, the way Chellathurai, Kalstein and Sanchez did.

If you’re still with me, here’s a last nail from the Third Circuit reply brief:

In defending the District Court’s likelihood of confusion analysis, appellee comes again to its prized exhibits: the three “confusion affidavits” of Chellathurai, Kalstein and Sanchez. There is little left to debate regarding whether these affidavits demonstrate confusion, or, more likely, the absence of confusion. This Court will simply have to read them. A076, A080, A257. Appellee suggests that the District Court found “initial interest confusion” here. Opp. Brief. at 37. But this doctrine is mentioned nowhere in the opinion below. Developed in a sales context, it has been applied only where “a potential purchaser is initially confused [such that] the [senior seller] may be precluded from further consideration.”

Weiss Assoc., Inc. v. HRL Assoc., Inc., 902 F.2d 1546 (Fed. Cir. 1990) (emphasis added). Thus it does not apply here. In fact, in Girl Scouts the Southern District of New York rejected transient confusion as proof of trademark harm in a social-commentary context:

Even if we hypothesize that some viewers might at first believe that the subject of the poster is actually a pregnant Girl Scout, it is highly doubtful that any such impression would be more than momentary or that any viewer would conclude that the Girl Scouts had printed or distributed the poster.

304 F. Supp. at 1231. As the Girl Scouts court recognized, ephemeral moments of confusion that do not threaten to divert sales are not evidence of actionable harm under the Lanham Act. Real harm must be shown to overcome the constitutional protection of free speech:

No evidence is found anywhere in the record before the court that the poster has to date damaged the plaintiff in any way. No facts are presented to show that contributions to the organization have fallen off, that members have resigned, that recruits have failed to join, that sales . . . have decreased, or that voluntary workers have dissociated themselves or declined to support the honorable work of the organization.

Id. at 1235. Similarly, there is no evidence in this case of any actionable or even discernible harm that appellee has suffered as a result of Mr. Brodsky’s website. Even the court below admitted that the publicity surrounding this dispute was, far from harmful, undoubtedly a boon for appellee. A436-37. And all three supposedly confused affiants found their way to appellee’s website, undeterred by Steven Brodsky and more zealous than ever in their devotion to appellee. In fact, their reports to appellee negate the suggestion of confusion; again from Girl Scouts:

[I]ndignation is not confusion. To the contrary, the indignation of those who [reported the offending use] would appear to make it clear that they feel that the Girl Scouts are being unfairly put upon, not that the Girl Scouts are the manufacturers or distributors of the object of indignation.

Id. at 1231. This passage perfectly describes the three “confusion” affidavits here: indignant, yes, but certain that appellee was not the source of Mr. Brodsky’s website. They were not confused.

They were not confused. Unfortunately, a lot of people were, and are–about what the Lanham Act is, and is not, meant to protect, and don’t get this key point:  Indignation is not confusion. We can survive that, as long as too many of them aren’t judges.

It’s a good bet, as Whistle Blower suggests, that Google will get a better hearing than lone idealist Steve Brodsky did in his case, and not just because it is better heeled. (My old firm, Pitney Hardin, handled the Brodsky litigation pro bono.) And the issues are somewhat different.

Still, Whistle Blower says that the Reverend David Brickner, the pleasant, non-Jewish head of Jews for Jesus, thinks this is the second coming of the Brodsky case. Jews for Jesus attorneys Thelen Reid probably hope so (though perhaps not every Thelen Ried partner is singing from the same sheet of music on the topic of God and intellectual property). WB beleives that from a legal point of view this seems like somewhat wishful thinking. (Not to mention the fact that this case was filed in the federal court in New York, not New Jersey, and that Judge Lechner of the former court has retired and moved onto bigger and better things.)

Then again, the Rev. Brickner’s statement is hardly the first instance of wishful confusion to eminate from the the precincts of Jews for Jesus–not hardly.

Little people, big lawsuits

Originally posted 2008-01-10 11:18:01. Republished by Blog Post Promoter

The Washington Post reports on legal action taken by ordinary folk against Big IP Content Generating institutions for lifting and using “user-generated” content, i.e., pictures and stuff uploaded onto blogs and galleries by regular people. The corporations are doing this, evidently, in the quest for authentic authenticity. There will be spanking.

This is an odd quote, though, from Lawrence Lessig:

What’s noteworthy in each of these cases, Lessig says, “is that bloggers, a community typically associated with piracy, are rallying in support of copyright.”

Is that a fair “association”? Hat tip to erstwhile blogger “Penny Wit.”

Ideological purity

Originally posted 2007-01-24 16:18:46. Republished by Blog Post Promoter

Yahoo News:

Chinese Communist Party chief Hu Jintao has vowed to “purify” the Internet, state media reported on Wednesday, describing a top-level meeting that discussed ways to master the countrys sprawling, unruly online population. . . .

Hu, a strait-laced communist with little sympathy for cultural relaxation, did not directly mention censorship.

But he made it clear that the Communist Party was looking to ensure it keeps control of China’s Internet users, often more interested in salacious pictures, bloodthirsty games and political scandal than Marxist lessons.

Don’t kid yourself: This could be a very big deal. China can’t be competitive as anything other than a source of slave labor if it shuts down the Internet, Cuba-style — and it wants to be. On the other hand, its leaders do not want to cede political control along with economic control, which history has proved to be a very difficult task.

Incidentally, I take the stated concern with morality, as understood by the bourgeois among us — “We must promote civilized running and use of the Internet and purify the Internet environment” — at face value. It’s not an illegitimate concern, issues of power apart. The Internet is, or perhaps more accurately encompasses many things including, a moral cesspool. Free societies have by and large surrendered to this risk, preferring the very real risk of social harm to what they regard as the intolerable cost of censorship. How China goes about making its way on this issue, regardless of our view of it, will be objectively interesting and will matter beyond the borders of Middle Earth.

UPDATE: I chose the graphic even though there was no specific Google angle to this. But now there is.  And, of course, more here.


Search for resolution

Originally posted 2012-11-07 16:48:57. Republished by Blog Post Promoter

It’s two posts in one (I like to pull that off when I can), not even counting this one:  Mike Masnick on Eric Goldman on the settlement of the Google / Rosetta Stone case that gets everyone so agitated alla time:

Perhaps the most well known [adwords lawsuit against Google] was the one that Rosetta Stone filed back in 2009 (the ninth such case). That case has been kicking around for years, with various ups and downs. Rosetta Stone even went so far as to supportSOPA’s predecessor, COICA, in the hopes that it would be useful in making Google liable for the ads others placed on its site. We had thought that a clear headed judge would point out the obvious, but instead, we got a massively confused ruling that was quite troubling in which it was unclear if the judge really understood the issues at play. Given all of this, it’s not a huge surprise that Google figured out a way to settle the case out of court. Metzenbaum Federal Courthouse, Cleveland, OhioWhile it probably had to pay a small sum to make that happen, Eric Goldman notes, nothing in what’s been announced suggests that Google agreed to change any of its practices. He also notes that, at this point, nearly every such case against Google has ended in a Google win or quiet settlement in which Google’s policies are left intact:

Irrespective of the specific settlement terms, ending this case is a strategic win for Google because it takes out the last “major” US trademark owner challenger to AdWords.  Combined with the recent dismissal of the Jurin lawsuit, Google is now down to two pending US trademark lawsuits over AdWords: CYBERsitter and Home Decor Center.  Despite CYBERsitter’s recent intermediate “win,” I don’t think either of the two remaining lawsuits are dangerous to Google.  As a result, Google is tantalizingly close to successfully running the table on all of the US trademark challenges to its AdWords practices.  When this happens, Google will have legitimized the billions of dollars of revenues it makes by selling trademarked [sic] keywords in AdWords.

Eric may be slightly more optimistic on this than I am. Having seen so many of these cases come and go, I still expect others to jump in, in the hopes of getting offered a similar “settlement” just to go away. Hopefully one of the remaining cases ends in a clear judicial smackdown against companies who are trying to stretch trademark law well beyond its intended purpose.

Hard to disagree with Mike here.   Read More…

Brand abuse on line

Originally posted 2007-08-15 18:38:04. Republished by Blog Post Promoter

Tom Crandall gets graphic.

Best of 2010: Forget breakfast — eBay eats Tiffany’s lunch

Originally posted 2010-12-23 08:00:54. Republished by Blog Post Promoter

Tiffany's NYC The Second Circuit, unsurprisingly according to most commentators, has affirmed the decision of the Southern District of New York refusing to find eBay liable for contributory trademark infrintgement in the Tiffany v. eBay case.  I have been following the case since before it was filed (yeah, bitter as usual!) and have written bunches of posts on it — see, look?

In terms of the Second Circuit opinion itself, you can find that here.  If at some point I have something really original to say about it–after all the blogging is done by everyone else–you’ll be the first to know.  But here’s a little roundup of “takes.” First, the WSJ Law Blog on the thrust of the story:

So long as eBay takes steps to remove listings it knows are bogus — and isn’t otherwise willfully blind to fraudulent sales — it can avoid liability, the court ruled.  Judge Robert Sack, writing for the three-judge panel, seemed to hang his hat on the “market”:

We are disposed to think, and the record suggests, that private market forces give eBay and those operating similar businesses a strong incentive to minimize the counterfeit goods sold on their Web sites . . .

EBay received many complaints from users claiming to have been duped into buying counterfeit Tiffany products sold on eBay. The risk of alienating these users gives eBay a reason to identify and remove counterfeit listings. Indeed, it has spent millions of dollars in that effort. . . .

Tiffany had argued that eBay knew it had a problem with counterfeit items being listed on its Web site and did little to clean it up. EBay insisted the obligation rested with the New York jeweler to identify and alert it to auctions of counterfeit Tiffany silver jewelry.

But that’s not the whole story, exactly, though it mostly is.  As Law.com’s Corporate Counsel explains:

The court sent the case back to the district level for more discussion of whether eBay may be guilty of false advertising because it promotes the presence of “Tiffany” products on its site in both direct advertisements and paid ads that pop up when users search for Tiffany on Google and other search engines.

Those ads could be deemed false, because eBay is aware that “a significant portion” of goods advertised as Tiffany items on eBay are actually counterfeit, the court said. (The exact percentage of counterfeit Tiffany items among all those advertised is in dispute). EBay has pointed out that its site contains a special “About Me” page for Tiffany (and controlled by Tiffany) in which users are told that any Tiffany item advertised for sale on eBay is likely to be a fake.

To win a false advertising claim, Tiffany will have to produce evidence that consumers were confused by the advertisements, the court said. So far, Tiffany has not produced that sort of evidence, which usually comes in the form of consumer surveys.

Usually?  Well, usually if anyone’s actually watching, I guess.  Anyway, some more–here’s a great article by a partner at Pattishall McAuliffe (the law firm that bears the name of my late trademark law prof)  named Uli Widmaier that gets to the heart of the matter (I’ve removed the citations for bloggy reading and added a link or two):

In other words, for a defendant to be liable for contributory trademark infringement, the defendant must have knowledge of specific individuals engaged in infringing activities. General knowledge that infringing activity might take place is not enough. This is an application of the “narrow standard” of contributory liability articulated in Inwood Laboratories, Inc. v. Ives Laboratories, Inc. eBay argued in the district court that this standard did not apply, but accepted the Inwood standard for purposes of the appeal.  Thus, the Court “assume[d] without deciding that Inwood’s test for contributory trademark infringement governs.

Tiffany had also argued that eBay was “willfully blind” as to the sale of counterfeit Tiffany goods on eBay’s website. The Court stated that, as a general matter, “[a] service provider is not, we think, permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way.” However, the Court declined to impose liability for contributory trademark infringement on this ground because “eBay did not ignore the information it was given about counterfeit sales on its website.”

In sum, the Second Circuit affirmed that a service provider is not permitted to be willfully blind to alleged trademark infringement. But eBay’s removal of listings identified as counterfeit by Tiffany, as well as eBay’s affirmative steps to police its website for counterfeiters were enough to render eBay not willfully blind. Had eBay done less, it might have been found liable. Unfortunately, the decision gives very little guidance as to the dividing line between “willful blindness” and sufficient vigilance.

Great point.  There’s something about trademark law that, for some reasons, makes judges want to make lawyers and businesses guess about liability until it’s too late.  As usual, Eric Goldman gets that, too: Read More…

Aereo (Part One): Angry Like (a) Fox

So: Aereo, right? Kind of a big deal. You might want to read about it. Maybe we should write something about it. Let’s work backward, though:

On April 8, News Corporation announced that it would consider taking Fox—the broadcast television channel—off the air if the service known as Aereo is permitted to continue doing what it’s been doing for a year to date. “Aereo is stealing our signal,” said News Corp’s president Chase Carey. “We believe in our legal rights. We’re going to pursue those legal rights fully and completely, and we believe we’ll prevail. But we want to be clear. If we can’t have our rights properly protected through legal and political avenues, we will pursue business solutions. One such business solution would be to take the network and turn it into a subscription service.” Ah, but no less considerable a legal authority than the United States Court of Appeals for the Second Circuit has determined that, more likely than not, Aereo is not doing anything illegal.

Matthew David Brozik

Dapper like a fox.

Unless you’ve been living in a cave—or simply outside New York City—you’ve maybe heard of Aereo, a subscription service that, essentially, enables a subscriber to watch broadcast programming on an Internet device—a computer, tablet, “phablet,” or smart phone. A subscriber has the option of watching a program at the same time that it airs—with a minor delay, to allow for buffering—or to “record” the program and watch it later. (There are noteworthy limits to the recording feature, but those are not germane to the legal issue, as it happens.) Aereo charges a subscriber somewhere between eight and twelve dollars per month for the service (reports differ) and currently provides the service only in New York City and parts of Connecticut, although the company has plans to expand its availability, eventually, to no less than the entire planet.

In March of 2012, two lawsuits sought to stop Aereo, Inc. from doing what it was then going to start doing on March 14. The plaintiffs of the two suits (commenced separately but treated together) are an intimidating consortium, to be sure: all of the broadcast networks in New York City (ABC, CBS, NBC, Fox, THIRTEEN, WNET, WPIX, PBS, Telemundo, Univision… and Disney, among a few other entities). The complaints asserted, principally, that Aereo’s scheme was a blatant infringement of the plaintiffs’ exclusive public performance right provided by Section 106(4) of the Copyright Act. The plaintiffs argued that the mechanics of Aereo’s system is a sham.

What Aereo does—and I’m simplifying here, some—is this: At a facility in Brooklyn, there is an array of dime-sized antennae. When an Aereo subscriber requests that a program be streamed to him or her over the Internet, the facility dynamically assigns an available antenna to that subscriber’s account, and tunes the antenna to the local broadcast station showing the program requested. Other equipment at the facility converts the broadcast signal to a digital stream, which Aereo then sends to the subscriber’s account. What’s important—what was important to the courts, at least—is that at any given moment, any one Aereo antenna is working for at most one subscriber.

So when the plaintiffs moved for a preliminary injunction on their common cause of action based on Section 106(4), Judge Alison Nathan of the United States District Court for the Southern District of New York denied the motion, finding that what Aereo does is not in fact a public broadcast, being that the digitized signal is sent only to a person, and a person is not the public. (Again, I’m simplifying.) Judge Nathan decided that the plaintiffs were unlikely to prevail upon the merits of their claim, ultimately (and that, while the plaintiffs had demonstrated a likelihood of suffering irreparable harm absent an injunction, an injunction would also likely destroy Aereo’s business… which gave Aereo the advantage there). This was on July 11, 2012. The plaintiffs filed their notices of appeal the following day.

As if the plaintiff roster in the two cases weren’t impressive enough, the amici dramatis personae is a Who’s Who of important institutions: the NBA, NFL, NHL, and MLB; Paramount Pictures, Warner Bros., the Directors Guild of America, SAG-AFTRA, the Writers Guild of America, MGM, et al.; ASCAP, BMI, SESAC, et al.; Ralph Oman, former Register of Copyrights of the United States—all in support of the plaintiffs-appellants—and entities including the Computer & Communications Industry Association, the Internet Association, Intellectual Property and Copyright Law Professors, and the Electronic Frontier Foundation, among others, all for Aereo. Even if you knew nothing about the case, you’d know from looking at just the list of people with opinions about it that it’s something big.

The appellate decision, issued on April 1, 2013, is long and dense and needs to be read more than once to be fully understood, but the upshot of it is that the District Court denial of the plaintiffs’ motion for a preliminary injunction (decision here) was held to be proper. (Judge Denny Chin dissented, but he was outnumbered two to one.) Judges Droney and Gleeson made a point of acknowledging that Aereo’s set-up seems evidently designed specifically to be legal, insofar as the law was lain down by the 2008 decision of the Second Circuit in Cartoon Network v. CSC Holdings (a case referred to as “Cablevision”). In that case, the court had ruled that Cablevision’s Remote Storage Digital Video Recorder (RS-DVR) did not infringe copyright holders’ reproduction and public performance rights. And the same analysis and conclusion now apply to Aereo’s setup. Attempts by the plaintiffs to distinguish Cablevision were not well received, as it were.

“Though presented as efforts to distinguish Cablevision,” the decision reads, “many of Plaintiffs’ arguments really urge us to overrule Cablevision. One panel of the Court, however… cannot overrule a prior decision of another panel…. Plaintiffs have provided us with no adequate basis to distinguish Cablevision from the Aereo system. We therefore see no error in the district court’s conclusion that Plaintiffs are unlikely to prevail on the merits.”

To be continued in Part Two…

dot… Pineapple?

LoC got wind—and then a copy—of this letter, dated as of the date of this post, to ICANN in support of the creation of a new top-level domain. Further updates as events warrant.

An excerpt:

Abstract

The undersigned respectfully present this white paper to the Internet Corporation for Assigned Names and Numbers (ICANN) in order to advance the case for the creation of a new top-level domain (TLD), to wit: “.pineapple.” The creation of such a TLD would without question help resolve the longstanding debate over what Internet content is pineapple-related, and thereby aid service providers in discharging their responsibility under the Tropical Plant Communications Act of 1996.

View the entire white paper here.