Archive for the ‘Internet Law’ Category

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Ask Dr. Copyright . . .

Monday, April 30th, 2012

copyright question Dear Doc:

I hear a lot about storing files on “the cloud” these days. From your perspective, do I lose any rights when I use such a service?  They sure are convenient!

Signed,

Will Robinson

DANGER, WILL ROBINSON!!! DANGER!!!

The “Doc” has reviewed the terms and conditions of the license agreements of a few “cloud” storage services, and here is what he found…

DROPBOX: “By using our Services you provide us with information, files, and folders that you submit to Dropbox (together, “your stuff”). You retain full ownership to your stuff. We don’t claim any ownership to any of it. These Terms do not grant us any rights to your stuff or intellectual property except for the limited rights that are needed to run the Services, as explained below.”

MICROSOFT SKYDRIVE: “Except for material that we license to you, we don’t claim ownership of the content you provide on the service. Your content remains your content. We also don’t control, verify, or endorse the content that you and others make available on the service.”

APPLE iCLOUD: “Apple does not claim ownership of the materials and/or Content you submit or make available on the Service. However, by submitting or posting such Content on areas of the Service that are accessible by the public or other users with whom you consent to share such Content, you grant Apple a worldwide, royalty-free, non-exclusive license to use, distribute, reproduce, modify, adapt, publish, translate, publicly perform and publicly display such Content on the Service solely for the purpose for which such Content was submitted or made available, without any compensation or obligation to you.”

GOOGLE DRIVE: “When you upload or otherwise submit content to our Services, you give Google (and those we work with) a worldwide license to use, host, store, reproduce, modify, create derivative works (such as those resulting from translations, adaptations or other changes we make so that your content works better with our Services), communicate, publish, publicly perform, publicly display and distribute such content.”

For comparison, here are the terms for Google’s incredibly popular GMail service:

GMAIL: “Google claims no ownership or control over any Content submitted, posted or displayed by you on or through Google services. You or a third party licensor, as appropriate, retain all patent, trademark and copyright to any Content you submit, post or display on or through Google services and you are responsible for protecting those rights, as appropriate. By submitting, posting or displaying Content on or through Google services which are intended to be available to the members of the public, you grant Google a worldwide, non-exclusive, royalty-free license to reproduce, adapt, modify, publish and distribute such Content on Google services for the purpose of displaying, distributing and promoting Google services. Google reserves the right to syndicate Content submitted, posted or displayed by you on or through Google services and use that Content in connection with any service offered by Google.”

So, Will, of all of these services, the new Google Drive service is the one to avoid (for now) because anything you put on that service may be used by Google in any way (public performance?) whether you intend to make it public or not.  The “Doc” uses some of these services, but NEVER puts anything confidential on them without first encrypting the information using a very strong public key encryption program (GPG) using a 2048 bit key.  By the way, if you’re a lawyer, accountant or medical doctor, you have other professional rules that may limit your use of cloud services.  Be careful of those, too. The “Doc” may be paranoid, but remember the old saying, “Just because you’re paranoid, it doesn’t mean that they’re NOT out to get you!”  You’ve been warned.  Now remember to turn on the force field before you go to bed.

The “Doc”

– Lawrence A Husick, Esq.

Posted in Copyright, Internet Law | No Comments »

A Book By Any Other Name

Thursday, March 29th, 2012

bookReaders of this newsletter will recall that trademark rights in the United States are established by use, not by registration. There are benefits to registration, of course, but rights arise by the actual use of a mark in commerce in conjunction with a product or service. Often, the assertion of a trademark use is indicated by the placement of the letters TM adjacent the mark. These letters let the public know that the user is claiming trademark rights.

Another generally established principal of trademark law is that one can not, by asserting a trademark right in a word, remove that word from its common language use. In other words, one can not extract from the language the common use of a word by claiming trademark rights in it. However, it is possible to assert a trademark right to a word in the limited context of a particular association or use.

Facebook has been very proactive in trying to establish trademark rights to words it uses in association with its social networking site. For instance as of March 26, 2012, the United State Patent and Trademark Office has granted trademark registrations for FACEBOOK and WALL. Pending applications include: LIKE and FB among others. The use of FACE as a trademark has also been approved by the USPTO.  Registration is awaiting proof from Facebook that it actually has used the mark in commerce.

To establish trademark rights to a word, it is useful to demonstrate that the public associates the use of the word with a product or service. Which brings us to the present interesting attempt by Facebook to begin to establish rights to the word “BOOK.” The recently proposed Facebook user agreement open for public comment states: “You will not use our copyrights or trademarks (including Facebook, the Faceboo, and F Logos, FB, Face, Poke, Book and Wall) or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.” So, following these guidelines, use of your Facebook account mandates that you recognize BOOK as a trademark belonging to Facebook. This may be an end run by Facebook to bolster future argument against other users of the word BOOK that Facebook has already established in the public’s mind an association between the word BOOK with Facebook. What do you think of this strategy?

– Laurence Weinberger, Esq.

Posted in Internet Law, Privacy Law | No Comments »

Is Facebook Your Friend?

Wednesday, February 29th, 2012

facebookDo you have a Facebook Account?  Do you realize that every time you click the “Like” button for a product, service or website,  Facebook may distribute a paid advertisement (“a sponsored story”) using your name to all of your “Friends” suggesting that you are recommending the product or service?  While Facebook is described in the popular media as a social networking site, it is, in reality, an advertising business generating its revenue  through the sale of advertising. Zuckerberg (CEO of Facebook) has said: “…nothing influences people more than a recommendation from a trusted friend. A trusted referral influences people more than the best broadcaster message. A trusted referral is the Holy Grail of advertising.” Facebook’s COO has said: “…making your customers your marketers”…”is the illusive goal we’ve been searching for.” Consequently, Facebook is able to charge a higher rate for the “sponsored stories.”

Now Facebook has been sued in Federal Court in California over its “sponsored story” advertising practice under statutory provisions governing the right of publicity, unfair competition and fraudulent and deceptive practices. California has a law on the books that says everyone has the right to control how their name, photo, likeness, and identity is used for commercial purposes, and such use may not be done without their consent and a minimum ($750) payment. The complaint makes several interesting points, not the least of which is that Facebook employs a unique lexicon of doublespeak by intentionally distorting the everyday meaning of words and misleading members.  Terms such as “friends,” “like,” “stories,” and “sponsor” may not mean the same to us as they do to Facebook. On Facebook, “friends” are not really limited to close or intimate associates; “like” does not necessarily imply an affinity for the site/item; “sponsors” are really advertisers paying for the ads; and “stories” are not written tales but are either items of friends doings, or in the case of  “sponsored stories” the advertisements generated from members clicking the “Like” button. In addition, plaintiffs allege that Facebook provides no avenue for opting out of the sponsored stories.

An interesting side light to the case is that minors are allowed to become members and have their names and images used in the advertisements without requiring the consent of their parents or guardians. Needless to say, Facebook has mounted a vigorous legal challenge on both procedural and legal grounds to the accusations, asserting a laundry list of defenses including: consent upon registering under Facebook’s terms;  protection under the Federal Communications Decency Act; First Amendment legitimate interest protection under the Constitution; and protection under the “newsworthy exception” for reporting on the activities of famous people.  (Would you believe that Facebook asserts that that members are famous to their friends?)

On December 16, 2011, ruling on Facebook’s motion to dismiss the lawsuit, the Court refused to accept most of Facebook’s arguments, finding that plaintiffs had asserted valid causes of action under the law. The Court reserved the question of whether members consented to Facebook’s practices   The case is now in its discovery phase.

In an interesting twist, just last week, two of the plaintiffs asked to drop out of the case after Facebook’s lawyers demanded discovery depositions that threatened the plaintiffs with even more loss of privacy. As of this writing, the Court has not ruled on their request.

– Laurence Weinberger, Esq.

Posted in Internet Law, Privacy Law, Technology | No Comments »

Privacy We Give Up for Cell Phone Convenience

Wednesday, November 30th, 2011

privacyMost of us use our cell phones for business and personal use. For instance, in the car returning from a family Thanksgiving celebration, my wife read her business e-mail, checked the weather, referred to a map for our location, and browsed for Black Friday sales. We all assume such phone activities are relatively private, but are they?

Recently, the ACLU obtained from the Justice Department a document guide for law enforcement that describes how major cell phone companies handle data and location information for phones using their service. It turns out that most carriers store usage information, albeit the kinds of data and the length of time the data is stored differs among carriers.

While carriers don’t record calls, they keep a record of calls made and received. Verizon also stores for a year the identity of cell tower connections a phone makes; AT&T has accumulated the same data since 2008. These data may be used to accurately determine where a phone is physically located at any moment during the day or night.

Web browsing information is not maintained by T-Mobile, but Verizon stores some web site identity information for up to a year. Sprint Nextel stores text messages for three months while Verizon only for three to five days. Other carriers do not keep text content, but instead store records of who texted who for a year or more.  AT&T preserves such data for seven years.

The ACLU takes the position that we all have a right to know how long records are kept. Do you agree?

– Laurence Weinberger, Esq.

Posted in Business, Internet Law, Privacy Law | No Comments »

Copyright Infringement and The Vanishing Corporate Veil

Friday, August 26th, 2011

copyrightProtecting oneself from personal liability is top on the list when a business owner forms a corporation or similar entity.  Lawyers and courts refer to this protection as the “corporate veil”.  Be careful, though, because your corporate veil is not armor clad.  Larry Chasin, president of Ideal Diamond Solutions, Inc. (IDS), learned this the hard way when a competitor, Blue Nile, Inc. (Blue Nile), sued him and his company for copyright infringement.  Apparently, IDS, which provided e-commerce solutions for jewelry stores, maintained certain websites on which were displayed images of diamonds and other jewelry copied directly from Blue Nile’s web site.  Blue Nile, an online jewelry and diamond retailer, sued Chasin for copyright infringement and other claims in the U.S. District Court for the Western District of Washington in Seattle.  Blue Nile, Inc. v. Ideal Diamond Solutions, Inc., et al., No. C10-380Z (August 3, 2011). [link]

Chasin argued against his being held liable for copyright infringement: his was a small company, he had no role in creating the infringing websites, and he had no knowledge that the content was copyrighted by Blue Nile.  The court listened but was unconvinced, noting that Chasin was the man in charge: Chasin was the “brainchild” and he “controlled the corporate affairs.”  According to the court, he may have been an innocent infringer — that is, without knowledge that images were infringing — but lack of knowledge did not protect him from liability (although it may be relevant to damages).  The court wrote,

Copyright is a strict liability tort; therefore there is no corporate veil and all individuals who participate are jointly and severally liable . . . It is well established that a corporate officer will be liable as a joint tortfeasor with the Corporation in a copyright infringement case where the officer was the dominant influence in the Corporation, and determined the policies which resulted in infringement.

The Blue Nile case teaches important lessons for both the copyright holder and the user of copyrighted materials.  For the holder, it demonstrates the importance of registering your copyrights.  Copyright Registration gave Blue Nile the right to sue in federal court and to collect statutory damages (and attorneys fees).  For users of copyrighted material, Blue Nile also carries an important warning.  Corporate officers, whether your company is big or small, may be personally liable for the infringing activities of the company.  If you are using content created by others be sure that you have the appropriate rights to copy it.  If you don’t know, hire a copyright lawyer to advise you.

–Adam G. Garson, Esq.

Posted in Copyright, Internet Law, Litigation | No Comments »

LWH Tests Facebook’s Intellectual Property Protection Program

Thursday, July 28th, 2011

facebookBack in June 2009, we wrote about protecting trademarks under Facebook’s new URL redesign, which permitted a member to use a personal name as part of his or her Facebook address.  Aware that the redesign offered new opportunities for trademark infringement, Facebook simultaneously issued guidelines for protecting trademark rights should a Facebook owner steal a mark by using it in his or her Facebook address.  It is important to note now that Facebook’s policies extend beyond the protection of intellectual property misuse in Facebook addresses.  Indeed, Facebook writes that it is, in the general sense, “committed to protecting the intellectual property of third parties” and publishes guidelines and provides opportunities for intellectual property owners to protect their rights in the vast Facebook community.  The focus of Facebook’s polices is copyright protection, which is to be expected; but the rules also provide protection for other kinds of intellectual property, including trademarks.  But how effective are these policies?  Well, we recently had the opportunity to test them.

One of our clients owns a chain (soon to be a national franchise) of ice-cream restaurants under a catchy name (sorry, we have to protect our client’s identity) for which it has a United States trademark registration. The name is so catchy, that it is currently involved in several trademark infringement disputes in different parts of the country.  (Remember, a trademark owner has a duty to enforce its trademark rights.)  The infringers tend to be small local ice-cream establishments whose only presence on the Internet is on Facebook. In addition to sending the infringers cease-and-desist letters and in one case filing suit against it in federal court, our client requested us to try to take down their Facebook web pages in which they freely infringe its mark. To accomplish this, we visited  Facebook and followed its guidelines for filing a complaint. Within 24 hours we received a message from the Facebook User Operations Department asking us for further details about our client’s trademark rights. In response, we submitted to Facebook an explanation of how the infringer’s Facebook pages created confusion in the marketplace, a copy of our client’s trademark registration certificate, and a copy of the complaint filed against one of the infringers in federal court. Within 24 more hours, we were notified by Facebook that the infringing content was removed. We checked and, sure enough, the offending Facebook pages were no longer online.

The efficiency and speed of the Facebook intellectual property procedures were impressive. Keep this in mind if your intellectual property rights are being infringed by a Facebook member and you can demonstrate to Facebook that you own those rights.  Let us know if we can help.

– Adam G. Garson, Esq.

Posted in Internet Law, Trademark | No Comments »

LWH Reclaims Domain Name from Marchex Sales

Wednesday, June 29th, 2011

domainsYour trademarks are among your company’s most valuable assets; controlling them is a necessity for successful branding.  Domain names, particularly if they incorporate your trademarks, are part of your intellectual property portfolio and demand as much attention as your other assets.

Sometimes, through no fault of your own,  another company owns a domain name, which flatly infringes your trademark.  Such was the case with a client who recently retained Adam Garson of Lipton, Weinberger & Husick to reclaim a domain name from Marchex Sales, Inc. (Marchex), a public company in the business of acquiring huge portfolios of domains for Internet marketing.  It owns such domains as videocamera.com, Debts.com, LasVegasVacations.com, CareerInfo.com and RentGuide.com.  Marchex was running a website using our client’s trademark as its domain name.  The web site contained various links to related goods and services including our client’s competitors.

Our client’s trademark, which cannot be disclosed here for confidentiality reasons, was only recently registered with United States Patent and Trademark Office.  Nevertheless, it had been using the mark since the 1990′s and could prove continuous use until the present.

To rescue our client’s domain name, LWH filed an administrative action with the National Arbitration Forum (NAF) under the Uniform Domain-Name Dispute Resolution Policy (UDRP).  The UDRP is a procedure sanctioned by the Internet Corporation for Assigned Names and Numbers and is available to anyone who has a domain name dispute.  The UDRP may be used to obtain an order directing a domain’s registrar to transfer the domain to its rightful owner.

To succeed, the plaintiff — in this case our client — is required to prove the following:

(i) its domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) it has no rights or legitimate interests in respect of the domain name; and

(iii) its domain name has been registered and is being used in bad faith.

The process involves eight steps, from filing a complaint to final review.  In our situation, it took 60 days after filing the complaint for the NAF to render an opinion.  The panel found in favor of our client on all three counts.  Marchex, the Respondent, argued that at the time it acquired the domain name, our client possessed no trademark rights because the trademark was generic and descriptive.  The Panel rejected that argument.  Here’s a sample from the panel’s 24-page opinion:

Complainant’s uncontested relevant evidence presented in support of Complainant’s having timely common law trademark rights in the at-issue mark are sufficient to demonstrate secondary meaning and overcome any presumption that the … mark is generic notwithstanding that each of the component words may be generic when taken discretely.

…

Respondent takes no steps to avoid holding or using trademarked domain names when it would be a simple matter to screen domain names prior to registration or acquisition to determine if they contain registered trademarks or marks in which there is likely a claim of rights such as the … mark.  With even less trouble the Respondent might, after finding out that a trademarked domain name such as Complainant’s was registered as a domain name, cancel the trademarked domain name or voluntarily transfer registration, rather than link it do the mark holder’s competition.

….

It thus seems disingenuous for Respondent to claim it acquires domains because of the target domain name’s descriptive value. And even if Respondent’s motivation is as stated, the fact that Respondent cares not that it also is acquiring trademarked names is troubling and further calls into question the bona fide nature of Respondent’s endeavors….Registrants of large numbers of domain names or those acquiring domain names in bulk must be particularly careful in respect of the rights of third parties.

The case demonstrates that trademark owners who can establish common law trademark rights can prevail against large corporations even when the odds do not seem particularly favorable.  Let us know if we can assist you with your efforts at reclaiming your trademarks and domain names.

– Adam G. Garson, Esq.

Posted in Domain Names, Internet Law, Lipton Weinberger & Husick, Litigation | 5 Comments »

ICAAN Changes the Web!

Wednesday, June 29th, 2011

ICANNIt is not an understatement to suggest that the Internet Corporation for Assigned Names and Numbers’ (ICANN) new plan to increase the number of top level domains is one of the biggest changes to the Domain Name System since it was founded.   Top Level Domains (gTLDs) are those domain names at the the highest level of the Internet’s hierarchical domain name system.

Evolution of the domain naming system has been slow relative to changes in Internet technology. In the 1980s, only seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) existed and in the following years, ICANN slowly added new domains such as .biz, .info, .name, .pro and so on.  More recently, a .xxx was added, totaling 22 top level domains.   Now all that has changed.  On June June 20, 2011, ICANN’s board voted to permit top level domain names to “end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways.”  ICANN’s description of the new changes were nothing less than ecstatic.  Here’s a sample:

ICANN has opened the Internet’s naming system to unleash the global human imagination. Today’s decision respects the rights of groups to create new Top Level Domains in any language or script. We hope this allows the domain name system to better serve all of mankind,” said Rod Beckstrom, President and Chief Executive Officer of ICANN.

Today’s decision will usher in a new Internet age,” said Peter Dengate Thrush, Chairman of ICANN’s Board of Directors. “We have provided a platform for the next generation of creativity and inspiration.

Getting one of those new names is not going to be simple or inexpensive.  First, there will be an extensive evaluation period for each applicant and second, there will be some hefty fees.  The proposed evaluation fee will be $185,000 plus a $25,000 annual maintenance fee.  Without a doubt, the big players in the branding world will be quick to take advantage of the new system.  Expect to see domain names like cameras.nikon or shoes.nike.   Clearly, the advantage of the new naming system for small businesses will be few. If you’re interested in the details, here is a link to ICANN’s guidebook to the new gTLD system. You’ll want to monitor ICANN’s web site because the new gTLD’s will only be offered during a set period of time with later rounds at future dates.  Click here for the fact sheet.

– Adam G. Garson, Esq.

Posted in Domain Names, Internet Law | No Comments »

Protecting Your Trademark from XXX

Thursday, May 26th, 2011

xxx To bring some protection from unintended exposure to pornographic websites, the international body that administers the Internet Domain Name system has approved a new domain: .xxx (dot triple-x). New to this domain will be a way to block the triple-x registration of certain domains, without actually having to acquire them, as is now the norm for other Internet domains.  Thus, instead of the of a trademark owner having to actually own the “trademark.xxx” domain, the owner may simply pay a one-time fee to prevent others from registering the trademark as a triple-x site.

The registrar for triple-x expects to use a “sunrise” period in early September 2011.  For 30 days, those having registered trademarks and wishing to register actual triple-x domains will be able to participate in the “Sunrise A” process.  At the same time, those wishing to block triple-x registration will participate in the “Sunrise B” process.  After the 30 day sunrise period, there will be a “landrush” period of 14 days for anyone to register in triple-x.  Thus, for adult websites with registered trademarks that now operate in other domains, they will be able to claim the same name in triple-x, and for those who never want to have their mark associated with anything in triple-x, they may block future registrations.  Miss the window, and you may have to resort to the standard domain name dispute process to reclaim your trademark rights.

To register for the block in Sunrise B, a trademark owner must have at least one national trademark registration for the exact word to be blocked.  Thus, Coca Cola may block “Coke.xxx” but not “CokePorn.xxx”. Those who want to block registrations but who don’t have a registration of the trademark may want to consider a quick foreign registration, because backlogs at the United States Trademark Office extend beyond the Sunrise B period at present.

The expected fee for blocking during Sunrise B is in the range of $200-$300, but final pricing has not been announced.

For more detailed information on how to protect your trademark, contact one of the attorneys at LW&H.  For information about the triple-x blocking process, you may check the site www.XXXempt.com.

– Lawrence A. Husick, Esq.

Posted in Internet Law, Trademark | No Comments »

Lawrence Husick to Present on “Understanding Cyberspace as a Battlefield”

Thursday, January 27th, 2011

On Friday, February 11, 2011 from 11:30 a.m. – 12:30 p.m. at the Foreign Policy Research Institute (“FPRI”), Lawrence Husick will be presenting on the subject of “Understanding Cyberspace as a Battlefield.”  The FPRI describes Lawrence’s presentation as follows:

Cyberwar, as Richard Clarke recently explained to FPRI’s members, is the next great threat to national security. It is a threat to military capabilities, but even more so, to civilian systems and infrastructure. Cyberspace is likely to be the theater of our next war, and that war may already be underway. Because cyberwar weapons are computers, networks, routers and compilers, there are few who genuinely understand the battlefield, and fewer who understand the goals, strategies and tactics necessary to develop both an offensive capability and a defensive stance. Lawrence Husick, FPRI’s resident tech-geek, will discuss cyberwar in the context of value-based threat models. How can we identify the likely targets, evaluate the consequences of successful attacks, and implement a competent defense? More importantly, how likely is the US to actually do so?

To learn more, visit the FPRI website.

Posted in Computer Law, Internet Law, Lipton Weinberger & Husick | No Comments »

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