Best of 2005: Overlawyered Knocks Off Our White Hats

A few years ago I was a partner at Gibney, Anthony & Flaherty, LLP in New York, a firm that does a lot of intellectual property enforcement both in the streets (literally) and on the Internet. During that period I had a colleague named Matt Carlin, a very bright and talented guy.

One of his jobs was sending out cease and desist letters in connection with various clients’ needs; one of those clients was a purple dinosaur and, regrettably, one of those letters — of which I was a primary author, though poor Matt had signed it — became a little bit famous.Recently, Matt’s Barney advocacy (please, the guy is just doing his job!) has gotten him a few pixils once again. At this point I can take no credit, because I left the Barney beat a while ago. Give Matt points for un-dinosaur-like tenacity!I am guessing, however, that this (and Google) is the reason for the sudden blip of renewed interest in an article Matt and I published in Mealey’s Litigation Report — Cyber Tech & E-Commerce, back when publishing your ideas on paper made some sense, in May of 2001.The article, “Hacker with a White Hat” (I named the article, and actually stumbled on what we later learned was a well-known bit of techie imagery) suggests that it may be appropriate to ask a judge for permission to hack the website of a defaulting, non-cooperating defendant in a trademark infringement case when it has refused repeated court orders to stop selling infringing merchandise on its website. My guess is that someone was Googling Matt’s name looking for more ways to cause him agita, and it rang a few bells…

One of those bells is Overlawyerer Walter Olson, who attributes “fame” to this blog and who queried whether our heretofore ignored four-and-a-half-year-old article constitutes a declaration of “open season to hack trademark infringers”. Walter, whom I met when he came to speak to the Federalist Society in New Jersey a few years back, links to two other sites that discuss this article. One is Declan McCullough’s site; he opens it up to lively discussion on his Politech mailing list. I’ve contributed a response.   The commentors raise some good points, if not always with good manners.The other one is Jonathan B. Wilson. He notes, in opposing our suggestion:

No one would suggest, for example, that the successful plaintiff who obtains injunctive relieve against his neighbor’s too-loud stereo could obtain a further court order that authorizes the plaintiff to destroy the stereo or steal it.

Actually, you wouldn’t have to do that. If you had such an injunction, and it were ignored, the Court could send federal marshalls to the house to enforce the order. Regrettably (to IP plaintiffs), this is not possible on the Internet. He continues:

Second, and perhaps more importantly, is the fact that the Congress has already developed a reasoned balancing of the interests of intellectual property rights-holders and website operators through the Digiltal Millenium Copyright Act, the Communications Decency Act and some related statutes.

My response to that is that (a) the DMCA does not cover trademarks, and (b) you can write laws all day long, but if court orders issued pursuant to those laws are not enforced, what does it get you? More:

Coleman and Carlin’s suggestions would abandon this balanced legal approach in favor of cyber-vigilantism, in which a party who obtained a default judgment and an injunction would be empowered to fire electronic rounds through the web at his elusive quarry.

In fact, nothing a court orders is vigilantism. We never proposed that anyone be “empowered” to do anything by virtue of an injunction unless that injunction itself explicitly, and pursuant to the legal standards set forth in the cases and the Federal Rules of Civil Procedure, grants that power. And once it does so, there is no vigilantism — you now have the permission of the law to do.

I have a better idea, though. Let’s empower the U.S. Marshalls Service to enforce federal court orders instead of leaving it to private parties. No need for posses; we’ll just send in the marshalls. Please just don’t hold it against me if I decline to hold my breath waiting for that to happen! Happy trails….