April 2004 Archives

Trademark fair use hypo time

I have to learn a whole lot of corporations law before I get around to studying for my trademark exam, but here are two fact patterns that raise issues of trademark fair use:

1. Anti-advertising activists release a sneaker called the "blackSpot"
in order to raise awareness of Nike's use of sweatshop labor and offer an alternative made by fairly-paid, unionized workers.

They plan to use this "subvertising campaign" to promote the sneakers:

phil knight had a dream. he'd sell shows. he'd sell dreams he'd get rich. he'd use sweatshops if he had to.
then along came a new shoe. plan. simple. cheap. fair. designed for only thing:
kicking phil's ass.
the unswoosher.

To what extent can Nike use trademark law to prevent this "un-marketing" campaign? What defenses can Adbusters offer?

(via BoingBoing.)

2. Martin Schwimmer offers another hypo for discussion at the Trademark Blog: George W. Bush on The Apprentice:

View this political video parodying The Apprentice, then read this decision in the Mastercard v. Nader2000 case.

Discuss NBC's and Trump's rights against TrueMajority (source of the video).

Comments are open.

A New Pentagon Papers Case

Ernest Miller: A New Pentagon Papers Case - Newspapers, Blogs and the Diebold/Jones Day Memos

On April 20th, the Oakland Tribune published a story regarding Diebold's alleged use of uncertified voting software in violation of California state law (Diebold knew of legal risks). The article cited and focused on internal legal memos from the Jones Day law firm showing that Diebold's own lawyers had warned of some of the possible illegalities. Online, the Oakland Tribune posted the documents in addition to the article. That afternoon, the Trib's parent company and the reporter were sued by Jones Day to have the documents returned. The judge ordered the documents returned, except for those already published on the internet
It is worthwhile to pay attention to the importance of these documents.

Who doesn't like freedom?

The Computers, Freedom and Privacy conference is running through today over on the left coast. Read about the panels via the CFP blogs

The Copyfight crew has some coverage: CFP, Take 2

LawMeme's James Grimmelman braved a visit to Newark and went to the P2P symposium at Seton Hall. He posted detailed notes: Conference Report: Peer-to-Peer at the Crossroads

David Opderbeck: Seton Hall P2P Symposium

AP: Panel: Don't use Diebold touch-screen voting machines

California should ban the use of 15,000 touch-screen voting machines made by Diebold Election Systems from the Nov. 2 general election, an advisory panel to Secretary of State Kevin Shelley recommended Thursday.

By an 8-0 vote, the state's Voting Systems and Procedures Panel recommended that Shelley cease the use of the machines, saying that Texas-based Diebold has performed poorly in California and its machines malfunctioned in the state's March 2 primary election, turning away many voters in San Diego County.

The GMail Saga

Brad Templeton discusses Google's GMail, expectations of privacy and ECPA: The GMail Saga

PCs infested with spyware

In a "spyware audit" of more than 1 million computers, Earthlink found more than 29.5 million examples of spyware installed-- an average of nearly 30 spyware programs installed per computer. BBC News reports: PCs 'infested' with spy programs

These are parasite programs sometimes come attached to software downloaded from the web.

The details are often included in the license agreement small print that most users click through without reading.

But sometimes they do not even need your permission to download, but just bury themselves on a hard drive as you browse the net.

With the exception of pop-up ads or a slower computer, people may not notice anything different when spyware programs are present, say experts.

Push to wiretap

News.com: Pushing to wiretap 'push to talk'

U.S. cell phone service providers are willing to wiretap "push to talk" phone calls, but only one has the technological capability to do so, according to sources familiar with the situation.

"The current technology to tap these calls doesn't exist," said a representative of Verizon Wireless, which this week told the Federal Communications Commission that it believes wiretapping laws apply to push-to-talk, a service that lets cell phone customers talk with the push of a button, like a walkie-talkie. "But being able to (wiretap push-to-talk calls) is different from believing we shouldn't be bound by law to do it."

Online Chat with Lessig

WashingtonPost.com will host an online chat with Lawrence Lessig today on Copyright in the digital Age. Today at 1 PM.

Label Your Porn Spam

The FTC announced new rules which require pornographic spam to be labeled "SEXUALLY-EXPLICIT:" in the e-mail subject header. The regulation is codified in 16 CFR Part 316. The rule goes into effect on May 19.

This year, the Utah state legislature passed Spyware Control Act (H.B. 323). This law is intended to give website holders a recourse against adware providers such as Claria and WhenU.

The bill would:

  • prohibit using a federally registered trademark to trigger an ad by someone other than the trademark owner.
  • require user consent to a license agreement which includes a notice of:
    • the collection of each specific type of information to be transmitted as a result of the software installation;
    • a clear and representative full-size example of each type of advertisement that may be delivered;
    • a truthful statement of the frequency with which each type of advertisement may be delivered;
    • a clear description of a method by which a user may distinguish the advertisement by its appearance from an advertisement generated by other software services
  • Allow the following types of persons to bring an action:
    • a website owner
    • a trademark or copyright owner
    • an authorized advertiser on an Internet website.
A number of web publishers who are not Claria or WhenU fear that this law is too broad: Leading Internet Providers Oppose Passage of Spyware Control Act
Web publishers and businesses including American Online, Amazon.com, Cnet, eBay, Google, Microsoft Corp., and Yahoo! signed a letter on March 1 to Utah Senate Majority Leader John Valentine and Representative Steven Urquhart, who sponsored the bill, warning that the bill--if signed into law--could create serious repercussions for the entire online community. According to reasons cited in the letter, the Spyware Control Act is structurally flawed because its definition of spyware is too broad. It states that several types of important and beneficial Internet communications software, and even routine network communications, fall under the bill's definition of spyware.
On Monday, WhenU filed a lawsuit alleging that the law " violates its constitutionally protected right to advertise, while doing little to protect computer users' privacy."

The Complaint (courtesy of Ben Edelman, via Trademark Blog)

GMail Privacy Kerfuffle

| 1 Comment

On April 1, Google announced Gmail, its new free webmail service, which features an unprecedented 1GB of storage. Google plans to generate revenue from this service by placing advertising in the service. The major free webmail providers, including Yahoo! and Hotmail, sell advertising banners in their services. Google will provide context-related text advertising in GMail. Google already provides contextual advertising for searches and to third-party websites who use the AdSense service.

Some privacy advocates are concerned that Google will be scanning the content of its users' emails. A letter from 28 privacy and civil liberties organizations to Google CEO Sergei Brin:

Google’s proposed Gmail service and the practices and policies of its business units raise significant and troubling questions.

First, Google has proposed scanning the text of all incoming emails for ad placement. The scanning of confidential email violates the implicit trust of an email service provider. Further, the unlimited period for data retention poses unnecessary risks of misuse.

Second, Google's overall data retention and correlation policies are problematic in their lack of clarity and broad scope. Google has not set specific, finite limits on how long it will retain user account, email, and transactional data. And Google has not set clear written policies about its data sharing between business units.

Third, the Gmail system sets potentially dangerous precedents and establishes reduced expectations of privacy in email communications. These precedents may be adopted by other companies and governments and may persist long after Google is gone.

The privacy policy for Gmail is still a work in progress. The most troubling aspect of the privacy policy

Internet e-mail is an insecure means of communications and users should avoid sending confidential information unencrypted across the internet because the messages may be intercepted and read while in transit. So long as Google does not log data about the keywords extracted from e-mail, this is the least objectionable privacy concern about the Gmail service. Already, many e-mail providers scan e-mail messages for spam or virus contents. Email users are free to choose other webmail services if they are uncomfortable with Google inserting contextual ads next to their inboxes.

Other concerns include identifiability and record retention. EFF Deep Links reports that Your Gmail Email Address Can Be Linked to Your Search History. This changes Google's search data from being at least somewhat anonymous to becoming linked to an identity. EFF recommends that Gmail users frequently delete their Google cookie. Google could de-link search records from e-mail identity by using separate cookies and user id's for search and Gmail.

Google's fuzzy data retention policies are troubling. When a Gmail user deletes a message from her Gmail account, that message may not be immediately deleted from the system, but instead live on in a limbo where a deleted message may be recoverable long after a user thinks that message has vanished.

Going to extremes, California State Senator Liz Figuero plans to introduce legislation to prohibit scanning personal e-mail for advertising purposes. BBC News: Google's Gmail Could Be Blocked. ClickZ: Lawmaker Voices Google Privacy Concerns

Figueroa called the tradeoff of contextual ads for greater storage and other enhancements a Faustian bargain.

"They will be scanning your private e-mail," Figueroa [said]. "You may say that's fine and dandy, but I may not like it. To what extent are we giving up privacy?"

Eugene Volokh responds, Please Save Us From Ourselves, Ms. Legislator:
 I realize that there are sometimes plausible arguments for saving people from their own folly; I don't always agree with them, but I respect them -- for instance, if their folly seems likely to get them killed (consider bans on dueling, seat belt laws, and the like), or likely to get them addicted and thus drastically diminish their ability to undo their error (that's a common justification for bans on certain drugs), or likely to seriously harm others as well as themselves.

What's striking about this proposal is how utterly inapplicable those arguments are here. The Nanny State (or, at this point, one of its directors) is trying to save us from the irreversible, appalling horror of getting custom-tailored advertising based on the context of our e-mail. We're in trouble indeed.

Screech loses his website

In a UDRP arbitration hearing, actor Dustian Diamond could not recover DustinDiamond.com from its owner, because the site is a non-commercial parody.

(via TechLaw Advisor)


The Fourth Circuit released a decision finding that "freebie" is a generic term: Retail Services, Inc. v. Freebies Publishing.

(via How Appealing.)

Digital Cops Roundup

Ed Felten proposes a grand unified theory of file sharing

The Grand Unified Theory explains the study results by breaking down the users of filesharing into two subpopulations, which I will call Free-riders and Samplers.

Free-riders are generally young. They have few if any moral qualms about filesharing, and they tend to assume that others feel the same way. They use filesharing to accumulate libraries of music, as an alternative to buying CDs.

Samplers are generally older and more risk-averse. They are highly engaged with cultural products of all sorts. They are morally conflicted about filesharing, and use it mostly to download songs that either aren't for sale, or that they don't value enough to pay for. They buy music that they really like, and filesharing causes them to find more music they like, so it tends to increase their CD purchases.

Samplers only use the P2P file sharing networks for sampling, because they do not have the time to spend searching determinedly for what they want. Because they have sufficient money to buy the albums they want, the samplers use the most time-efficient method of acquiring music.

Free-riders use the file sharing as a substitute for purchasing albums because they have more time than money. While they can not afford to purchase vast libraries of albums, they do have the time and persistence to find what they want by file sharing.

What happens when the file sharing networks get significantly quicker and easier to use? As the time investment required to use P2P goes down, a number of samplers will become free riders. The less the time investment and the greater selection that is available on P2P, won't more samplers become free riders?

When the number of free riders becomes larger than the number of samplers, then the music industry will feel negative effects. To stop this, the major labels need to both offer a nearly frictionless alternative to p2p. Except for the limited catalog and DRM restrictions, iTunes is close. Through lawsuits, the RIAA is trying to create more transaction friction in P2P. By making file sharing more difficult, whether eliminating centralized systems like Napster or making file sharers face the threat of lawsuit, the major labels are attempting to maintain the status quo by cutting down the number of freeloaders.

Ernest Miller: Felten, Boorstin and Filesharing

while Felten's generational distinction is an important one, I'm not sure his theory fully explains what is going on. The main problem I see is that Eric Boorstin's thesis (Music Sales in the Age of File Sharing), which found that internet access correlates with increased music purchases for older people but decreased music purchases by younger people, isn't really about file sharing per se. The disconnect here is that there is no data for the correlation between filesharing and internet access.

AP: RIAA Singing the Same Old Song 

Overall U.S. music sales -- CDs, legal downloads, DVDs, etc. -- rose 9.1 percent in the first three months of the year over the same period in 2003, according to Nielsen SoundScan.

Spyware and Adware Roundup

News.com The spyware that loved me

I had an idea something was amiss when ordinary Web browsing got weird. I don't typically use Internet Explorer, so pop-up windows aren't a problem. Suddenly they became a fact of life. Immediately after installing the software in question, I began seeing new windows for a site offering to give me new "Smiley" icons for Yahoo Messenger. Whenever I used Google, a site called Zesty Find oh-so-helpfully popped up in front of whatever I was really trying to find.

News.com: Gator mutation Claria files for IPO
Claria, whose advertising platform (or adware) has come under legal fire from multiple Web site operators, filed an S-1 document with the SEC, seeking to raise an unspecified sum through an initial public offering. According to its filing, the company said it had a net income of about $35 million on revenue of $90 million in 2003.

Free Culture Flame War

In Forbes, Stephen Manes writes Let's Have Less Of Lessig

Lessig replies: “It’s Simple” says the MANes

The NY Times reviews Free Culture: 'Free Culture': The Intellectual Imperialists

File Sharing Heresy

NY Times: A Heretical View of File Sharing

The music industry says it repeatedly, with passion and conviction: downloading hurts sales.

That statement is at the heart of the war on file sharing, both of music and movies, and underpins lawsuits against thousands of music fans, as well as legislation approved last week by a House Judiciary subcommittee that would create federal penalties for using what is known as peer-to-peer technology to download copyrighted works. It is also part of the reason that the Justice Department introduced an intellectual-property task force last week that plans to step up criminal prosecutions of copyright infringers.

But what if the industry is wrong, and file sharing is not hurting record sales?

Prof. Susan Crawford addressed the Copyright Office earlier this week.

But I'm here to tell you during this peaceful lunchtime in this lovely setting, right here at the intersection of 12th and 5th, that copyright policy is being taken away from you and you may never get it back; and if you're told that you're in charge of it, as you assist with international negotiations, you're not being told the truth.

With PacBell Park offering free WiFi at Giants games this season, a BoingBoing reader wonders "If I take my Powerbook to the ballpark and plug in my iSight Camera with it pointed towards the game, then isn't that an illegal broadcast of Major League Baseball?"

An appellate court ruled on a In a decision issued this week, Morris Comm. Corp. v. PGA Tour Inc., the 11th Circuit ruled that the PGA tour can prevent web sites from publishing compiled real-tme golf scores without violating the Sherman Anti-Trust Act (15 U.S.C. §2).

The Morris decision is not applicable to the situation in Pac Bell Park. The PGA does not allow the use of cell phones or handheld devices on the course during play. The only way to collect complete scoring information during a PGA tournament is to use the tour's electronic scoring system, available at the event media center. The PGA restricts access to the media center to organizations credentialed by the PGA.

The 11th Circuit affirmed the District Court's decision, finding that the PGA's actions do not exclude competitors from the market.Eeven if the PGA possessed monopoly power in the relevant market, the PGA has a valid business justifications for its actions, and so those actions are not prohibited by the Sherman Act. Here, the valid business justification was to "prevent free-riding" on the real-time scoring system which the PGA spent considerable money to develop. While "sweat of the brow" is not a valid argument for granting copyright protection, preventing free-riding is a valid business justification for excluding competitors under antitrust law.

Under this reasoning, the Giants could have a valid business justification for enacting contract terms to prevent a fan from sitting in the stands and webcasting the game. Major League Baseball has invested money to employ the umpires and the Giants have invested money to pay their players and stadium staff. Furthermore, MLB invested money in installing equipment and negotiating an exclusive deal with Real.com to webcast baseball games. Unlike golf, Major League Baseball has no similar, legitimate reason for preventing the use of phones or handheld devices within the stadium In fact, the Giants seem to be encouraging the use of handheld devices or portable computers from within the stadium and might not add a contract clause to prevent webcasting. Whether such a contract would be enforceable will depend on its specific terms.

Currently, theGiants' Pac Bell Park guide states: "Cameras and video equipment are allowed in SBC Park. However, the equipment may not obstruct the view or path of travel of others. Fans are not allowed to reproduce or re-broadcast any film or videotape of Giants games for commercial purposes without the written permission of the San Francisco Giants and Major League Baseball."

At Lawgorithm, Dan thinks these terms should be sufficient to stop an independent webcaster on unfair competition grounds:

It is well-established that the teams have the right to sell exclusive licenses to broadcast their games. See Pittsburgh Athletic Co. v. KQV Broadcasting Co., 24 F. Supp. 490 (W.D. Pa. 1938). Pittsburgh Atletic (the Pirates) had sold the exclusive rights to broadcast their games to General Mills, which then contracted with NBC to broadcast the games on radio stations KDKA and WWSW. Defendant KQV had observers standing outside the stadium (not under the standard ticketholder contract), watching the game and broadcasting live play-by-play. The Pirates sued to enjoin KQV from broadcasting. KQV said the Pirates had no rights in the facts of the game and that it intended to continue. The court found for the Pirates on unfair competition grounds, following INS v AP, 248 U.S. 15 (1918).
The Giants' home opener is on April 12, against the Milwaukee Brewers.

Law.com reports on the PGA decision: PGA Wins Round Over Real-Time Scores

Two new blogs from EFF

Deep Links and Mini Links (no relation to Linky Links).

Popping Fresh

IPKat reports on a German decision granting a preliminary injunction in Hertz's suit against pop-up advertiser Claria (the company formerly known as Gator Corp.): Squeeze the Former Gator til it Really Hertz

a court in Cologne, Germany, granted Hertz Germany an injunction against Claria (formerly known as Gator), ordering that company to stop feeding its pop-up ads for Hertz's competitors on to Hertz's website. The court found that this infuriating practice breached provisions of the German Unfair Competition Act (Gesetz gegen den unlauteren Wettbewerb, or UWG)
A rough translation of the German statute into English is available through Google translate as Law against the mean competition.

In the US, cases against Claria are pending, after they were consolidated by the Judicial Panel on Multidistrict Litigation.

In cases against pop-up advertiser WhenU, courts have reached divergent results. In the Southern District of NY, 1-800 Contacts obtained a preliminary injunction against WhenU and VisionDirect on trademark grounds. In the Eastern District of Michigan, U-Haul was denied a preliminary injunction against WhenU.

(via The Trademark Blog)

File Sharing, Eh

Some reactions on and commentaries about the Canadian decision finding that placing files in a shared folder is not copyright infringement in BMG v. Doe:

LA Times: File Sharing Ruled Legal in Canada

Judge Konrad von Finckenstein's legal blessing was an unexpected setback to the music industry's expanding international effort to stop free and unauthorized downloads. But experts said the judge's ruling hinged on elements of Canadian law not found in many other countries, including the United States.

Vancouver Sun: Sharing music over Internet not illegal, Federal Court rules

Matthew Skala: BMG v. Doe: File sharing legal??

The media reports are saying that file sharing is now 100% A-okay in Canada; the decision is much less broad than that. The case at this point is only about revealing identities of ISP subscribers, not really the larger question of file sharing; a lot of the basis for the decision against BMG et al. came from procedural issues rather than the file sharing question that interests everybody; and it's subject to appeal and I fear will not stand anyway. Don't rejoice too much yet!

Wendy Seltzer: Time to Move to Canada

Ernest Miller: An Unenthusiastic Response to the Canadian Filesharing Decision

The second point [Placing personal copies into a shared directory is not "distributing" or "authorizing the reproduction" of sound recordings] is actually rather dangerous if interpreted broadly, that is, if you believe in the continued value of copyright law on the internet.