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| Software and the Internet | ||||
New York v. Microsoft |
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| New York v. Microsoft | |
Practice Area | ||
On
January 29, 2008, District Court Judge Colleen Kollar-Kotelly issued a
ruling extending for two additional years the antitrust oversight of
Microsoft ordered in New York v. Microsoft Corporation, 224
F. Supp. 2d 76 (D.D.C. 2002). Judge Kollar-Kotelly cited
Microsoft’s “extreme and unforeseen delay” in making available
“complete, accurate, and useable technical documentation relating to
the Communications Protocols that Microsoft is required to make
available to licensees” under the Final Judgments, a delay caused by
insufficient allocation of employee and economic resources toward
generating the technical documentation. In the previous Remedy
Judgment, the Court explained that[t]he mandatory disclosure of the communications protocols relied upon by Microsoft’s PC operating system to interoperate with its server operating systems will advance the ability of non-Microsoft server operating systems to interoperate, or communicate, with the ubiquitous Windows PC client. Advancement of the communication between non-Microsoft server operating systems and Windows clients will further the ability of these non-Microsoft server operating systems to provide a platform which competes with Windows itself.New York v. Microsoft, 224 F. Supp. 2d at 172-173. The Court found that Microsoft’s delay in disclosing the communications protocols constituted changed circumstances preventing the Final Judgments from achieving their objectives and therefore warranted extending the remedy provisions two years. The plaintiffs, antitrust regulators from 10 states and the District of Columbia, had requested an extension of five years. New York v. Microsoft, 531 F. Supp. 2d 141 (D.D.C. 2008) |
Litigation and Alternative Dispute Resolution Software & the Internet Business Transactions and Organizations |
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| Bank Julius Baer & Co. Ltd. | |
Practice Area | ||
| In
November of 2007, “Wikileaks.org” proved itself more effective than the
Freedom of Information Act in providing information regarding the
United States military detention facilities at Guantánamo Bay, Cuba.
Since 2003, the Pentagon had resisted an American Civil Liberties Union
Freedom of Information Act request for the 238-page, “Camp Delta
Standard Operating Procedures” manual dated March 28, 2003. However, in
November of 2007, WikiLeaks.org anonymously published a copy of the
manual that the Pentagon grudgingly confirmed was authentic. WikiLeaks.org is an international website, formatted like the popular Wikipedia.com, with the goal of “developing an uncensorable Wikipedia for untraceable mass document leaking and analysis.” The site quickly became popular for some profound successes eluding court gag orders and providing a forum for whistleblowers. Contributors or organizers of the site include “Chinese dissidents, journalists, mathematicians and startup company technologists, from the US, Taiwan, Europe, Australia and South Africa,” and a “public Advisory Board,” consisting of “journalists, representatives from refugee communities, ethics and anti-corruption campaigners, including a former national head of Transparency International, human rights campaigners, lawyers and cryptographers. The site is also recently responsible for leaking several Bank Julius Baer documents from a Swiss banking whistleblower purportedly showing offshore tax evasion and money laundering by wealthy and politically sensitive clients from the US, Europe, China and Peru. The Bank succeeded in temporarily shutting down the site by obtaining what purported to be a “Permanent Injunction” issued on February 15, 2008, by District Court Judge Jeffery White of the California Northern District Court in San Francisco, by aiming their request for an injunction against the Domain Name Registrar, rather than the actual publishers of the material who would have been outside of the US jurisdiction. Apparently upon Dynadot’s (the Domain Name Registrar) stipulation, the court ordered Dynadot to use its access to the Internet website name registration system to delete the records for “Wikileaks.org” and to replace the content with a blank page. The Court also issued Temporary Restraining Orders preventing anyone aware of the injunction from linking to the site’s content. However, the site was almost immediately back up and running under its many “back-up” international sites and domain names despite the order. On February 29, 2008, the court reversed its prior orders after it was bombarded with several motions and briefs in support of the site and its right to operate. Twelve media organizations filed a joint Amici Curiae (“friends of the Court”) brief in support of the site opposing the “permanent” and temporary injunctions, including the Reporters Committee for the Freedom of the Press (RCFP), The American Society of Newspaper Editors (ASNE), The Associated Press (AP), Citizen Media Law Project, The E.W. Scripps Company (newspapers, TV, cable TV etc.), Gannet Co. Inc. (largest publisher of newspapers in the US, including USA Today), The Hearst Corporation (media conglomerate which publishes the San Francisco Chronicle), The Los Angeles Times, National Newspaper Association (NNA), Newspaper Association of America (NAA), The Radio-Television News Directors Association (RTNDA), and The Society of Professional Journalists (SPJ). The Public Citizen Group, founded by Ralph Nader and the California First Amendment Coalition (CFAC) also filed a separate brief in support of the site. Finally, The Electronic Freedom Foundation (EFF), the American Civil Liberties Union (ACLU), The Project on Government Oversight (POGO), and Jordan McCorckle (an individual at the University of Texas and user of WikiLeaks.org) filed their own motion to intervene as Defendants in the case. Among other arguments made in the briefs, those supporting WikiLeaks pointed to the overly broad nature of the injunction against the site’s total operation as an unconstitutional prior restraint on the public’s right to access information guaranteed by the First Amendment, tantamount to shutting down an entire newspaper because of the content of one article. The Court agreed, and dissolved the “permanent injunction” and declined to extend the temporary restraining orders previously issued, stating that neither was narrowly tailored enough to be appropriate even if a more limited injunction redacting personal information from specific documents may be constitutional given sufficient evidence. For copies of the Court’s February 15th and February 29th orders, go to 021508 Order, 021508 TRO, 012508 Order to Seal, and 022908 Order |
Litigation and Alternative Dispute Resolution Intellectual Property Software & the Internet Advertising, Marketing, Publishing, and Media Municipal and Public Disclosure Law |
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| Intellectual Property Act of 2007 | |
Practice Area | ||
| The House of Representatives has introduced the Prioritizing Resources and Organization for Intellectual Property Act of 2007
(PRO IP Act) (HR 4279). The Act seeks to establish the Office of
the US Intellectual Property Enforcement Representative to serve as the
president’s chief intellectual property advisor and create an
Intellectual Property Enforcement Division within the Department of
Justice. The Act is also intended to strengthen current IP
laws. To do so, it proposes increasing copyright damages
recoverable by allowing courts to “make either one or multiple awards
of statutory damages with respect to infringement of a compilation, or
of works that were lawfully included in a compilation, or a derivative
work and any preexisting works upon which it is based” based on a
consideration of “any facts it finds relevant relating to the infringed
works and the infringing conduct, including whether the infringed works
are distinct works having independent economic value.” The Act also
greatly increases the statutory damages for trademark infringement in
the form of commercial counterfeiting. The Act would also allow
the Department of Justice to seize and auction the computer or other
property used to facilitate copyright crime. In a December 13,
2007, hearing before the House Subcommittee on Courts, the Internet and
Intellectual Property, the act received the support of NBC Universal
executive vice president and general counsel Rick Cotton, Teamsters
president Jim Hoffa, who cited the need to dedicate more enforcement
resources to the growing problem of counterfeiting and piracy and the
loss of jobs attributable to counterfeit and pirated media.
Critics of the Act included Gigi B. Sohn, representing the public
interest group Public Knowledge, who noted that many of the provisions
would likely hurt ordinary consumers. A copy of the Act can be found here. |
Intellectual Property Software & the Internet Advertising, Marketing, Publishing, and Media The Arts, Entertainment and Sports |
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| Hormel Foods Corp. v. Spam Arrest, LLC | |
Practice Area | ||
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On November 28, 2007, Spam Arrest, LLC, a software and services
provider won a five-year legal battle against Hormel Foods Corp. that
sought to cancel Spam Arrest’s registered federal trademark.
Hormel Foods had initiated cancellation proceedings against Spam Arrest
claiming dilution of Hormel’s “SPAM” family of trademarks, including
the derivatives “SPAMTASTIC,” “SPAMBURGER,” “SPAMARAMA,” and “SPAM
JAM.” Hormel had argued that it uses its family of SPAM
trademarks to include, not just canned meat, but a variety of goods and
services such as clocks, knives, recipe books, mouse pads, and
entertainment celebrations, and has registered its mark for use on such
various goods as hand kitchen slicers, jewelry, playing cards, pens,
mugs, tennis balls, toys, wearing apparel, and the service of
participating in automobile races, and that because of this wide
variety of use, Spam Arrest’s mark would likely be confused with
Hormel’s mark and dilute the distinctiveness of Hormel’s mark. In defense of its application, Spam Arrest argued that “spam,” when used in relation to unsolicited commercial email, is generic, and acquiescence and estoppel on the part of Hormel due to postings on Hormel’s website explaining that Hormel did not object to the term “spam” being used in relation to unsolicited commercial email. The Trademark Trial and Appeal Board found that at least two dictionaries and even the United States Congress (“CANSPAM Act”) have defined the term “spam” in relation to unsolicited commercial emails. In finding no likelihood of confusion between the marks, the Board explained that the “dichotomy” between the undisputed fame of Hormel’s mark and “the generic meaning of that same term” would inform its analysis of the du Pont factors considered. After consideration of the similarities, the Board found that, when used on the type of goods Petitioner was marketing, software and computer related products, the term “spam” would be viewed as having the generic meaning relating to unsolicited email, rather than relating to Hormel’s meat product, even given Hormel’s collateral uses of the mark. Moreover, for dilution analysis, the Board recognized that, to the extent that the term had become generic by use in referring to unsolicited commercial email, the distinctiveness of Hormel’s mark had already been diluted before Spam Arrest either used or registered its mark, and could not be more diluted thereby. Hence, Hormel had not prevailed on either a likelihood of confusion or dilution claim against Spam Arrest’s registration. However, the Board noted that, had Spam Arrest not won on the dilution and likelihood of confusion analyses, it would not have had a defense of acquiescence since it could not show it either knew of or relied upon the statement on Hormel’s website. Hormel Foods Corp. v. Spam Arrest, LLC, Cancellation No. 92042134 (TTAB 2007) A copy of the opinion can be found here. |
Intellectual Property Business Disputes Software & the Internet |
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| International Profit Associates, Inc. v. Paisola | |
Practice Area | ||
| Plaintiff
consulting company brought action against representative of former
customer for violations of the Lanham Act, violation of the Illinois
statute prohibiting eavesdropping, and defamation. The consulting
company moved for a temporary restraining order (TRO) based on the
plaintiff’s Lanham Act claims that defendants were incorporating
plaintiff’s trademarks into the search terms used to lead people to its
website, using those trademarks in the domain name of one of its
websites, and using plaintiff’s trademarks in the content of its
websites. The United States District Court for the Northern District of
Illinois granted the plaintiff’s request for a TRO on the “cyberpiracy”
and “cybersquatting” claims that defendants’ website was using a domain
name that was likely to cause confusion among consumers between
plaintiff’s website, “ipaopinions.com” and defendants’ website,
“ipaopinion.com.” The court reasoned that plaintiff had established a
likelihood of success on these claims having shown that defendants had
started using the plaintiff’s trademarks only after plaintiff had
registered and began using “ipaopinions.com” and therefore the intent
to cause confusion was apparent, and actual confusion had apparently
occurred, and the damage to the goodwill of the plaintiff was
irreparable as it would be almost impossible to quantify. The
defendants were therefore ordered to cease making content available on
the Internet through the offending domain name, cease conducting
advertising using the trademarked terms, and cease from using
plaintiff's trademarks as keywords for any Internet advertising
service, including services run by Google or Yahoo. However, the court found that a limited injunction was appropriate for the plaintiff’s defamation claims because, though plaintiff had demonstrated a likelihood of success on this claim as well, only a TRO prohibiting defendants from publishing false statements was in the public’s interest. International Profit Associates, Inc. v. Paisola, No. 06 C 6154 (N.D. Ill. filed Nov. 14, 2006) |
Litigation and Alternative Dispute Resolution Intellectual Property Publicity, Privacy and Defamation Software & the Internet Advertising, Marketing, Publishing, and Media |
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| Wall Data Inc. v. Los Angeles County Sheriff’s Dep’t | |
Practice Area | ||
| The
Ninth Circuit Court of Appeals affirmed the district court’s order
entering a final judgment of copyright infringement against the Los
Angeles County Sheriff’s Department, following a jury trial, and
awarding Wall Data its attorneys’ fees and costs as the prevailing
party under the Copyright Act, 17 U.S.C. § 505. In that case, Wall Data
sued the Sheriff’s Department for copyright infringement after it
purchased 3,663 licenses for Wall Data’s computer software, but
installed the software on over 6,000 computers. Even though the
computers were configured in a way that the total number able to access
the software did not exceed the total number of licenses purchased, the
Appeals Court held that such use did not constitute fair use under the
Copyright Act and was thus not a defense to liability for infringement,
affirming the district court. Wall Data Inc. v. Los Angeles County Sheriff’s Dep’t, No. 03-56559 (9th Cir. filed May 17, 2006) |
Intellectual Property Software & the Internet |
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| Natural Wealth Real Estate, Inc. v. Cohen | |
Practice Area | ||
| Plaintiffs,
various financial institutions, brought a defamation claim and action
against prominent recording artist Leonard Cohen and other defendants
to enjoin defamatory statements published on Mr. Cohen’s website
regarding the loss of his funds allegedly at the hands of the
plaintiffs. Mr. Cohen hired plaintiff Tactical Allocation Services, LLC (“Tactical”) directed by the plaintiff Neal Greenberg to invest for him the assets placed into three charitable trusts. The assets were derived from the sales of Mr. Cohen’s intellectual property and were intended to provide long-term financial support. However, Mr. Cohen allegedly drew large sums from the trusts, depleting the principal amounts and impeding plaintiffs’ efforts to successfully invest. Mr. Greenberg warned defendant Kelley Lynch, Cohen’s manager, who oversaw and had power of attorney over Cohen’s financial dealings, and Cohen that he was spending too much and absent a change of habit would become destitute. Mr. Cohen proceeded to sell additional intellectual property and to convey the intellectual property to an entity of his creation called Traditional Holdings LLC, in which he held one percent interest and Ms. Lynch held 99%. Traditional Holdings sold the intellectual property to Sony Music and then served as an annuity for Mr. Cohen under Ms. Lynch’s management to enable Mr. Cohen to benefit from the sale without suffering adverse tax consequences. Traditional Holdings hired plaintiffs to invest its assets. Mr. Cohen instructed the plaintiffs to follow Ms. Lynch’s directions concerning management of Traditional Holdings’ assets and, purportedly at Mr. Cohen’s direction and on his behalf, Ms. Lynch continued to make unsustainable withdrawals from the trusts and from Traditional Holdings. In 2004, Mr. Cohen and Ms. Lynch parted ways and began issuing competing directives to plaintiffs, each blaming the other for Mr. Cohen’s financial distress. After allegedly attempting but failing to extort the lost sums from plaintiffs through plaintiffs’ insurance companies, defendants, using Mr. Cohen’s fame as a prominent recording artist, allegedly published defamatory statements about the plaintiffs, posting such defamatory statements on Mr. Cohen’s web site and submitting them to the press, blaming plaintiffs for the loss of the monies. Mr. Cohen instructed the plaintiffs to follow Ms. Lynch’s directions concerning management of Traditional Holdings’ assets and, purportedly at Mr. Cohen’s direction and on his behalf, Ms. Lynch continued to make unsustainable withdrawals from the trusts and from Traditional Holdings. In 2004, Mr. Cohen and Ms. Lynch parted ways and began issuing competing directives to plaintiffs, each blaming the other for Mr. Cohen’s financial distress. After allegedly attempting but failing to extort the lost sums from plaintiffs through plaintiffs’ insurance companies, defendants, using Mr. Cohen’s fame as a prominent recording artist, allegedly published defamatory statements about the plaintiffs, posting such defamatory statements on Mr. Cohen’s web site and submitting them to the press, blaming plaintiffs for the loss of the monies. On February 21, 2008, the Court granted plaintiffs’ motion for summary judgment as to Mr. Cohen’s breach of contract counterclaim, which contended plaintiffs had breached their contractual duty by sending monthly email reports that were false and misleading, which purportedly enabled Ms. Lynch to make unauthorized withdrawals. The Court determined that although defendant wants to blame plaintiffs for the depletion of the accounts, under the terms of the agreement with Tactical, both Mr. Cohen and Ms. Lynch were “the client.” The Court went on to paraphrase Justice Holmes in noting that the person reposing confidence in Ms. Lynch was not plaintiffs, but Mr. Cohen, and since the unauthorized transactions went on for a period of two years, plaintiffs could reasonably have expected Mr. Cohen to notice if anything was wrong; he could not, therefore, blame plaintiffs for his own negligence in this regard. Natural Wealth Real Estate, Inc. v. Cohen, No. 05-cv-01233-LTB-MJW (D. Colo. filed Dec. 4, 2006) |
Intellectual Property Business Transactions and Organizations Publicity, Privacy and Defamation Software & the Internet Business Transactions and Organizations |
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