Institute for Information Law & Policy

IILP Students Published in International Free and Open Source Software Law Review

2010-06-21T14:40:56-05:00

The Institute for Information Law & Policy would like to congratulate Student Research Fellow Marc Miller '10 and Student Associate Omar Johnny '11 on the recent publication of their article Copyright in Open Source Software - Understanding the Boundaries in the International Free and Open Source Software Law Review.

The students wrote the article for their Techlaw Lab project under the guidance of Mark Webbink, Executive Director of the Center for Patent Innovations.

From the Student Research Fellows Blog: Two of my Favorite Things

2010-03-04T10:13:08-06:00

Craft beer and intellectual property are two of my favorite things. Recently, they've been running into one another more often, for better or worse. More broadly, the beverage industry holds many opportunities for students of IP and information law. Trademark law has recently brought to light issues over the scope of protection, dueling marks within registration classes, and plenty of name disputes. Other interesting areas of law that are involved include commercial speech, advertising, and administrative law. For example, does the New York State Liquor Authority have the power to prohibit a brewery from using a frog giving the finger as its logo? Or to get between me and my Freaky Ice? At the federal agency level, can the Bureau of Alcohol, Tobacco, and Firearms prevent a brewery from using the name of its town on a bottle cap? In 2008, they tried.

Issues can be broken into three loose categories: a company seeking broad protection for a style or drink name, the "did you ask your lawyer first" category, and established brands policing uses of similar marks. The first category traces its roots to the famous 1977 decision finding the use of "Lite" in reference to low-calorie beer to be a generic term. There's been recent chatter in some online forums about conflicts over brewers using the same style of beer in a product's name, for example the many "90 Shilling Ales" on the market. However, none of the disputes have really escalated. Moving over to the mixed drink category, Goslings Rum Company's trademark registration for "Dark 'n' Stormy", a popular mixed drink combining ginger beer and dark rum, caused a bit of a stir (pardon the pun) thanks to a July 2009 New York Times article. Enforcement seems highly impractical, and one blogger suggested there's a naked licensing issue since the recipe is widely available to customers who then request bartenders to make the drink.

It's hard to keep track of all the recent naming disputes in the beer industry. A Belgian brewery recently asserted their US-registered mark for "Brugse Zot" against Pennsylvania brewer Weyerbacher's "Zotten." Rather than fight it out, Weyerbacher changed the name. Another currently pending case involves Bear Republic Brewing Co.'s complaint against Central City Brewing Co. for infringement of their RACER and RED ROCKET marks and associated trade dress. The complaint provides illustrations of plaintiff's marks and defendant's allegedly infringing RED RACER marks. You be the judge. This article on the appropriately re-named Disputin notes a few more similar situations. Maybe law isn't the answer, as the Avery Collaboration not Litigation Ale demonstrates.

Bridging categories two and three is an example that illustrates the importance of fair use and the limits of trademark rights, and the legitimate interests of larger companies with well-known trademarks. New England Brewing Co. got a letter about their Imperial Storm Trooper Stout from a certain Mr. Lucas, who didn't think much of the brewery's (fair?) use. An $8 billion licensing program doesn't take these things lightly. It's not like they were creating a missile defense system or anything. To be fair to Lucasfilm, which just suffered a serious legal setback in the UK, the brewery used more than just a recognizable reference in the beer's name. See photo here.

Finally, we come to the dispute between Monster Energy Drink and Rock Art Brewery over the latter's "Vermonster" beer. While the two companies eventually reached an agreement over use of their respective marks, the controversy got the attention of Vermont Senator Patrick Leahy, whose recently introduced trademark reform bill would require a study of "whether large corporations are misusing the trademark laws to harass small businesses by exaggerating the scope of their trademark protection." At the same time, we can't forget that larger corporations have strong interests and in some cases legal and/or shareholder obligations to enforce the strength of their mark.

We'll be continuing the dialogue and debate on these and other issues in the beer, beverage, and food industry on March 18, thanks to the indispensable work of Student Research Fellows Marc Miller and Kaydi Osowski. We hope you'll join us. The details are below.

-Joe Merante

IP Surprise: Beer & Beverage, Business, and Trademark Reform

The IILP is excited to welcome Rock Art's attorney, Douglas K. Riley of Lisman, Webster & Leckerling, PC of Burlington, VT for a discussion of of his intellectual property practice, which includes many interesting issues related to Vermont's burgeoning "artisan foods" industry. Joining him will be Lauren Mandell, Senior IP Counsel at Diageo North America, one of the largest alcoholic beverage brand owners in the world, to discuss her practice. Professor Dan Hunter will moderate this practice and policy oriented discussion of the trademark interests of small businesses versus those of large brands, how to reform and refine the rules to accommodate both interests more equitably, and the ways that trademark law and litigation affect the results.

The event will take place Thursday, March 18 from 6-8pm in Room W402 @ New York Law School, 185 West Broadway, Manhattan. Please RSVP to Naomi Allen, naomi.allen@nyls.edu

From The Student Research Fellows Blog: From Totes to Suits

2010-02-10T15:16:48-06:00

Trade dress has been brought out of the proverbial legal closet once more to protect a fashion designer, from, who else...another fashion designer. This time, the trade dress infringement claim is accompanied by trademark infringement and unfair competition claims. The Lanham Act covers all three claims, allowing fashion designers to protect the packaging of the product itself via trade dress and their brand and reputation via trademark and unfair competition claims. The question of consumer confusion is what the courts are forced to determine, and with the two totes below, the judge that gets this case will have some interesting similarities to consider.

They may be casual tote bags, but a serious suit has come from them. Designer Christian Audigier's Nervous Tattoo, Inc. is being sued by Marc Jacobs’ company for trade dress and trademark infringement. Audigier produced nylon totes that appear to be a copy of the popular Marc Jacobs' nylon totes - from the shape, size, and overall design of the bag down to the actual trademarks stitched throughout.

The trade dress infringement claim is based on the "unique, distinctive, and non-functional Marc Jacobs Pretty Nylon Tote Trade Dress." The trademark infringement claim states Audigier's marks "unlawfully bear marks confusingly similar to the Marc Jacobs Scrambled Trademark". Marc Jacobs threw in an unfair competition claim as well, just to cover all his bases.

Marc Jacobs may have a stronger claim with the trade dress infringement because, his design for a nylon tote bag, with the handles knotted at the top of the bag and tall, narrow pockets along each side is original - hence its popularity. But what about the trademark infringement claim? Audigier's marks may be very similar to Jacobs' marks in font type and size, but Audigier's marks clearly read "ED HARDY". The consumer will know the source of the tote bag even though the two bags look alike. So where's the confusion? We'll have to wait and see what the court has to say.

From the Student Research Fellows Blog: The Biggest UDRP Proceeding So Far?

2010-01-27T14:37:48-06:00

The Uniform Dispute Resolution Policy (UDRP) is the agreement that all domain name holders must agree to when they register a name. The UDRP is administered by the WIPO Arbitration and Mediation Center and offers an expedited process for trademark owners to recapture domain names that incorporate their marks. The policy lists the three factors that must be shown by a complainant: 1) the registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, 2) respondent has no rights or legitimate interests in the domain name, and 3) the domain name has been registered and is being used in bad faith.

Although not binding "law," UDRP panel opinions discuss prior decisions as if they were. In other words, the decisions read like cases and rely on past ones as authority. There are a few guides that summarize the results of panel decisions on certain issues, see here and here. Over the last year or so the WIPO website has added a ton of information, including a database of panel decisions, statistics, and model complaints and responses. The top 25 UDRP decisions cited by complainants and respondents are also listed. In December 2009, WIPO launched a paperless complaint filing system.

Since its inception, the average number of domain names per case has been between 1.00 and 2.27 per year. In what appears to be the most domain names ever involved in a UDRP proceeding, a recent complaint by the Inter-Continental Hotels Corporation and Six Continents Hotels, Inc., two related companies, sought transfer of 1,542 domain names registered by the respondent that include the names of a handful of their hotel brands. For example, domain names incorporating the Candlewood Hotels brand were registered in typical bulk-registration fashion by the respondent for candlewood-brentwood.com, candlewood-burlington.com, and on down a list of cities. Other trademarks involved include Holiday Inn and Crowne Plaza. The Appendix of the panelist's opinion lists all of the disputed domain names.

The panel noted that the UDRP clearly provides for a complaint involving multiple domain names if they are registered by the same "defendant" entity. Although not expressly mentioned in the UDRP, the panelist in this case cited previous UDRP proceedings to support his conclusion that multiple entities under the same corporate parent may bring their complaints against a single party in one proceeding to recover domain names related to multiple registered marks.

The panelist grouped the disputed domain names into four categories: trademark plus geographic term, trademark plus descriptive term, part of a trademark plus geographic or generic term, and disputed domains not containing any of complainant's marks. The last category contained, for example, domains including "Holiday" without "Inn." For the vast majority of the domain names, the complainant satisfied the factors and 1,519 of the disputed domain names were transferred. A handful of domain names were withdrawn and others didn't satisfy the three factors. The number of domain names and the speedy decision (less than two months from filing) in this case highlight the importance of the UDRP for trademark holders and the idiocy of cybersquatters.

Dan Hunter, IILP Director and UDRP panelist (not on this case), noted that although the decision is typical in terms of its substantive discussion, he's never seen a proceeding of this scale. A quick scroll through this list and other available resources on the WIPO site reveals no other decision that comes close to the number of domain names involved here. More important, the development of UDRP "law" and its critical function is an important area for students and attorneys to keep an eye on. You can subscribe to emails from WIPO about the UDRP dispute resolution process here.

-Joe Merante

From the Student Research Fellows Blog: Jacobsen v. Katzer and Copyright Management Information

2010-01-10T15:09:04-06:00

A recent development in Jacobsen v. Katzer has given slightly more guidance on a rarely invoked section of the DMCA, 17 U.S.C. § 1202(b). The case involves defendant Katzer’s use of the Java Model Railroad Interface (JMRI) software, which plaintiff Jacobsen is a leading contributor to, without adhering to the terms of its license. The Federal Circuit’s August 2008 decision in Katzer was a landmark case for the open source licensing community because of its holding that violations of an open source license could be considered copyright infringement, rather than merely breach of contract. The case also provided important language about the validity and enforceability of such licenses.

On remand for the copyright infringement and other claims this past December, the Northern District of California ruled on cross-motions for summary judgment. The court granted summary judgment in favor Jacobsen on his copyright infringement claim as to liability, but not damages. The court also granted plaintiff’s motion for summary judgment on his cybersquatting claiming under the ACPA. What I find notable about the decision is its exposition of 17 U.S.C. § 1202(b):

"(b) Removal or Alteration of Copyright Management Information.—
No person shall, without the authority of the copyright owner or the law—
(1) intentionally remove or alter any copyright management information,

(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or

(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law,

knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title."

§1202(c) broadly defines “copyright management information” (“CMI”) to include information commonly thought of as meta-data, including the name of the author or other identifying information about the work, “[t]erms and conditions for use of the work[,]" and “[i]dentifying numbers or symbols referring to such information or links to such information.” §1202 is an implementation of the 1996 WIPO Copyright Treaty, Article 12, which requires parties to provide for remedies if persons are found “to remove or alter any electronic rights management information without authority.”

A few cases have explored the contours of §1202(b). In Textile Secrets v. Ya-Ya, the court held §1202(b) inapplicable to a copyrighted fabric design. 524 F.Supp. 2d 1184 (C.D. Cal. 2007). The design had a copyright notice on the fabric’s “selvage,” the edge of the fabric that is meant to be cut away and discarded, and a tag on the fabric also stated it is a registered work of the plaintiff. The tag could be physically removed. After a thorough discussion of the legislative history and purposes of the DMCA, the court refused to “find that the provision [§1202] was intended to apply to circumstances that have no relation to the Internet, electronic commerce, automated copyright protections or management systems, public registers, or other technological measures or processes as contemplated in the DMCA as a whole.”

In IQ Group, Ltd. v. Wiesner Pub., the court relied completely on secondary sources, since there weren’t yet any reported cases, and denied CMI protection to removal of an advertiser’s logo and hyperlink to copyright information contained in an email, holding that the CMI protected by the DMCA is limited to components of technological measures used to protect copyrights in automated systems. 409 F.Supp.2d 587 (D.N.J.2006). In a different case, the Southern District of New York, deciding on Rule 12 motions, rejected this "automated systems" interpretation as having no basis in the text of the statute and no other support. Associated Press v. All Headline News Corp., 608 F.Supp.2d 454 (S.D.N.Y. 2009).

In another case, the Southern District of Florida found §1202 liability based on the defendant’s intentional removal from a multimedia presentation without permission the copyright notice, title of the work, information identifying the copyright holder company and its President who was credited in the work. Stockwire Research Group, Inc. v. Lebed, 577 F.Supp.2d 1262, 1265 (S.D.Fla. 2008). Agreeing with McClatchey, discussed below, the court held that the available statutory damages for “each violation” of §1202 applied to the number of times the defendants posted the unauthorized work online for distribution, rather than the number of unlawful end-recipients of the unauthorized work. Stockwire at 1266, citing §1202(c)(3)(B). Contrast this with the measure of statutory damages for copyright infringement, which is calculated per work infringed regardless of the number of copies made or distributed. See, e.g. Mason v. Montgomery Data, 967 F.2d 135, 143,144 (5th Cir. 1992).

Regarding CMI and photographs, the Associated Press is familiar with arguments for and against application of §1202(b). Victoria McClatchey sued the AP for photographing one of her photographs, cropping the new image to eliminate her notice of copyright, and distributing the photo without her permission. The court rejected the AP’s motion for summary judgment that §1202 did not apply, finding that the “technological process” of using a computer to add the copyright notice to her photograph fell within §1202(c), and thus §1202(b) applied. McClatchey v. The Associated Press, 2007 WL 776103 (W.D.Pa. 2007). The AP invoked the section against Shepard Fairey in their dispute over the Obama “Hope” poster. A discussion of §1202’s application in that case is available from the EFF.

In Katzer, the Northern District of California's December 2009 decision found “that there has been some technological process employed to protect the author’s name, a title, a reference to the license and where to find the license, a copyright notice, and the copyright owner of Plaintiff’s work. Further, there is no dispute that Defendants employed a tool to translate the JMRI files to a format for their own use without copying this attribution information.” However, the court only granted partial summary judgment to the Plaintiff on the DMCA claim because “as Plaintiff concede[d], there remain disputed and therefore triable issues of fact regarding Defendants’ knowledge and intent.” Contrast this with a claim for copyright infringement, which does not necessarily require proof of defendant's intent (considerations of willful infringement aside).

With the increasing ubiquity of works under copyleft or open source licenses that often include and/or require preservation of either a link to their license, a copy of the license itself, or a “machine-readable” version of the license, §1202 can serve as an additional tool to ensure enforceability of license terms. In the context of free and open source software, a definitive holding on the contours of §1202 could help practitioners advising clients on compliance with open source and copyleft licenses. If the parties don’t settle, a later ruling could play a role in future filesharing and user-generated content cases as well.

-Joseph Merante

From the Student Research Fellows Blog: E-Reader Comparisons

2010-01-03T11:51:08-06:00

Perhaps this post should have gone up before the holiday season, but it should be just as useful for those who have recently purchased or are considering purchasing an e-reader. The net has been abuzz with comparisons of the features of e-readers, with the Amazon Kindle, Sony eReader, Barnes & Noble Nook, and open source eSlick Reader leading the pack. Each has received its share of the spotlight for various reasons, including DRM, availability, interoperability, etc. Following a recent comparison of the privacy features of these devices by the E.F.F., and a provocative post by Chip Rosenthal about “calculating the DRM tax” before purchasing a Kindle, I’ve provided a chart comparing the warranties (as of 12/30/09) of some currently (or soon to be) available devices, as well as their prices and some other neat features. Since the chart in all of its hyper-linked glory didn’t translate well into our blog platform, I’ve posted it on a separate page – check it out here. There are also some notes and further links. Happy New Year! -Joe Merante

From the Student Research Fellows Blog: Perspectives on Digital Authorship

2009-12-03T12:10:14-06:00

Comedy Central has done a great job of making shows like the Daily Show and Colbert Nation available online. Recently on Colbert Nation, the winner of the National Book Award, Sherman Alexie, made some interesting points about digital culture and why his new book won’t be coming to a Kindle near you anytime soon. Alexie’s focus on the dangers of piracy, privacy, and even the U.S. government’s desire to take from him as a Native American suggest a genuine but unfortunate disdain for e-books, which he later claims eliminate jobs. Alexie doesn't want his books to suffer the fate of music online, and notes that “depending on the study… somewhere between seventy-five and ninety-five percent of music is pirated; nobody makes money off their music anymore, their CDs. Everything is about the live show.” That's quite a range, but still eye-popping if true on the low end. Colbert rightly wonders why digital distribution would prevent Alexie from continuing his book tours. If the demise of independent, and even chain, record store is any indication, there is something to be worried about. Much digital ink has been spilled over the movement of such communities online, in addition to their potential for better aggregating groups in the real world (see, e.g. meetup.com). In any event, Mr. Alexie's highly respectable desire for a personal connection with his fans is overshadowed by the broad brush with which he paints.

Mr. Alexie’s website is well-organized and informative, although some of the links to articles or to purchase physical copies of his books were broken at the time of this writing. His impressive resume made his concerns about the power of technology seem perfectly reasonable until he said something that terrified Stephen Colbert: “with the open source culture on the internet, the idea of ownership, of artistic ownership goes away.” In context this sounded like a call for some form of moral rights on the internet. It is unfortunate that Mr. Alexie hasn’t fully explored the "open source culture of the internet” and the near-universal requirement of attribution in copyleft or Creative Commons-type licensing. He noted he would eventually adapt to the opportunities available online, and Colbert does a great job, as always, of bringing out the tensions raised by Mr. Alexie’s arguments. The bold statement to close the interview makes it well worth watching.

-Joe Merante

NYLS Professor James Grimmelmann in Publisher’s Weekly

2009-11-23T13:36:51-06:00

Professor James Grimmelmann's blog has been the go-to source for information and commentary about the proposed Google Books settlement since it was first announced in October 2008. In addition, he has written numerous papers, organized the October 2009 "D is for Digitize" conference at NYLS, and led a group of students in putting together The Public Index, an interactive website containing anything and everything about the Settlement.

Publisher's Weekly recently published an editorial titled The Google Settlement: Why it Matters by Professor Grimmelmann describing the amended settlement, recently filed by the parties. According to Grimmelmann, the Google Books initiative may be good for society in the sense that it "empowers users to seek out whatever they want to learn," but the settlement terms are part and parcel of this benefit and they require careful examination. He states three areas of concern regarding the settlement: (1) whether a handful of lawyers negotiating it can adequately represent the class members and the public interest; (2) the effective orphan works monopoly granted to Google; and (3) the risks presented by use of an opt-out class action mechanism and whether legislation is a more appropriate response.

Publisher's Weekly editorial

The Public Index

The Laboratorium

From the Student Research Fellow Blog: “IP Surprise: Roller Derby” Follow-Up

2009-11-17T11:57:32-06:00

The IILP hosted “IP Surprise: Roller Derby” this past Thursday, November 12, 2009 at NYLS. Our guest lecturer was Ms. Quinn Heraty, a 2000 graduate of NYLS, and the founder of Heraty Law PLLC. Ms. Heraty focuses her legal practice on negotiating deals, advising clients about business issues, and dealing with trademark, copyright, licensing, and other intellectual property matters.

Ms. Heraty’s presentation began with the history of Roller Derby in the U.S. Did you know that Roller Derby evolved from Depression-era “Dance Marathons” where out-of-work contestants attempted to stay on their feet long enough to outlast the competition for a cash prize? Neither did we!

Ms. Heraty, represents various Roller Derby leagues, as well as the Women’s Flat Track Derby Association, the governing body for Roller Derby in the U.S. In her role as counsel to New York’s Gotham Girls Roller Derby league, Ms. Heraty spearheaded the case that allowed the league to use the “Roller Derby” trademark. While researching the origin of the trademark, she discovered that the original owners were no longer using the mark in commerce – and had therefore lost the right to prohibit its use.

Ms. Heraty has also represented individual teams and skaters in trademark matters, for example:

Seattlle’s Rat City Rollergirls’s dispute with Starbucks over their logo:

Colleen “Crackerjack” Bell’s dispute with Frito-Lay over her nickname.

Alexander McQueen and the re-emergence of trade dress

2009-11-02T09:32:33-06:00

The fashion industry loves bringing back trends of season past (leggings, dramatic shoulders…essentially the better part of the Balmain Winter 09/10 collection), and this time it is Alexander McQueen who is reviving another trend: the trade dress claim. In October 2009, the fashion house filed a trade dress infringement claim down the block from New York Law School at the U.S. District Court in Manhattan accusing popular shoe manufacturer Steve Madden, Ltd. of infringing on McQueen’s trade dress with the production of a motorcycle jacket inspired bootie.

McQueen produced the “Faithful” bootie in January 2009, and claims the bootie achieved the “distinctiveness” requirement of the trade dress section of the Lanham Act by the “wide spread media attention” it has received by being photographed on society’s trend setting fashionistas. (Interesting side note: does a shoe meet the non-functionality requirement of the Lanham Act?)

The trade dress claim is rarely brought when dealing with copycat designs, but Alexander McQueen was left with little legal alternatives. According to Women’s Wear Daily, the lawyers for Alexander McQueen state, “ In fact, the only design element of the ‘Faithful Bootie’ that Madden did not deliberately copy is the zipper pull that contains the ‘Alexander McQueen’ trademark,”. It looks as though Steve Madden designed his bootie with not just the Alexander McQueen shoe in mind, but also the McQueen legal department as well.