In White v. West, attorneys Edward White and Kenneth Elan, on behalf of themselves and similarly situated attorneys, are suing the publishers of Westlaw.com and LexisNexis.com (those sites where we attorneys do all our research) for infringing on their copyrights in litigation documents, specifically briefs and memoranda.

As most lawyers know, LexisNexis and Westlaw is where you go to look up case opinions, legal forms, and sometimes the briefs and memoranda of counsel in cases similar to yours so that you can research (read: copy) their thoroughly researched arguments and the occasionally witty turns of phrase. I do not think most lawyers consider that such “innocent” copying would ever be actionable. Apparently, to an extent it is. I will not go into a detailed legal analysis of the copyright law as it relates to this matter — I will just link to a very good blog article that does it for me: Click here.

In short, it is fairly obvious — I think — that there is an element of copyrightable creativity even to legal briefs. Of course, LexisNexis and Westlaw will argue fair use — IMO a poor argument consider how much they charge us for access to their database. And, equally obvious, is that the copyright protection in most “legalese” will be weak at best — entire paragraphs of a legal briefs are wholesale copies of sections of relevant legal opinions.

A bigger hurdle for plaintiffs to surpass here is the question of who exactly owns the copyright to an attorney’s work? The attorney or the client? (I have yet to see a retainer agreement with a copyright clause, but I might certainly add one to mine after this lawsuit resolves.)

Proview registered the IPAD trademark with the EU, China, Singapore, Thailand, Mexico, South Korea, Vietnam, and Indonesia between 2000 thru 2004. In 2006 Proview’s attempt at selling a tablet computer was not a success. Moreover, Proview Electronics (Taiwan) – the parent company of Proview Technology (Shenzhen) opted to sell the global trademark to an incognito Apple subsidiary called IP Application Development (IPAD) for £35,000. Upon transfer the IPAD Company assigned all substantial rights to Apple.

Unfortunately for Apple, things went quite sour when Proview Technology (Shenzhen) denied the validity of the Agreement, alleging that Proview Electronics (parent company) did not retain the exclusive right to assign the trademark name. Therefore, Apple has no rights to the trademark in China. Subsequently, China’s State Intellectual Property Office (SIPO) refused to transfer the two of the marks registered to Proview Technology.

As a result, the clouds parted for Proview (Shenzhen) and impending dark skies overcastted Apple when it began raining injunctions. Proview (Shenzhen sought to bar the sale of Apple’s iPads within China. A court in Honk Kong sided with Apple and illustrated that the agreement between Proview and IPAD was valid. However, the court in the southland of China (Shenzhen) did not agree and ruled in favor of Proview, stipulating that the agreement covers only Taiwan. Last week, a substantial number of iPads were seized by authorities from Apple Stores across China (over 30 cities) barring the sale of this Apple product. Although the iPad is still available in some stores in China government officials have removed the tablet from authorized dealers and official Apple Stores.

According to Dow Jones, on Friday Mr. Yang Rongshan indicated at press briefing in Beijjing:

“If we are not compensated properly, then Apple doesn’t use the iPad trademark in mainland China,” said Mr. Yang, who is also the main shareholder of Proview International Holdings Ltd., a Hong Kong-listed company that has been suspended from trading.

The Contract: AKA “The Rotten Apple”

AllThingsd.com recently posted a myriad of images of what looks like the collective written agreement from three years ago coupled with emails indicating that Proview Shenzhen was privy this decision to sell the trademark.

When confronted, Proview Technology did not comment on these documents. A disclaimer whilst looking at these images –there is no way of authenticating whether this is the actual written agreement (although many argue it seems to be). Some of the points:

• £35,000 for the whole portfolio and the marks are all set forth in an appendix (Schedule A).
• The agreement unless missing pages is two pages long.
• The Post-execution responsibilities are indicated in Article 1, page 2 illustrating that in consideration for £35,000, Proview shall transfer all the marks for each jurisdiction. Additionally, Proview will provide IPAD with proper documents to the effect indicating that there has been a transfer of the marks in order for the trade mark offices to establish the legitimacy.
• The signatory is Taiwan Proview.

Comments:

Proview (Shenzhen) filed bankruptcy with China Minsheng (bank) and is currently in a bit of a financial mess. From my understanding Proview Electronics is not a subsidiary company but is a parent company which did not lose control of its rights and therefore, the transfer was legitimate. Moreover, Mr. Yang was involved with the original transfer and is the same person involved alleging that contract is invalid. Proview (Shenzhen) should be bound by this collective written agreement entered into by Mr. Yang and his companies. The creditors do not have any justifiable reasons to decline the transfer to Apple because a representative of Proview Shenzhen, Mr. Yang, was privy to the transfer agreement.

Furthermore, there are a few ways this could go: First, Apple doesn’t comply with Proview’s ridiculous $ 2 billion buy-off for the iPad trademark in China and Proview goes into bankruptcy. What we have here is a breach of contract – the items owed (Chinese trademarks) to Apple would be considered assets owed to creditors. Somehow China’s bankruptcy laws would have to determine who owns these company assets. I think it would be very hard to prove that Apple does not own or isn’t entitled to the asset. Secondly, Apple can continue using the iPad trademark illegally and someone would have to enforce the trademark. Therefore, once Proview goes bankrupt either Chinese government authorities, the trademark office or creditors (China Minsheng) would have to go through the legal system proving that Apple is using the trademark illegally. Only after the aforesaid can the iPad trademark be blocked from sale in China.

Guest author Michelle Addison is a law clerk on Tim’s internet law team at Handal & Morofsky, LLC. She is a graduate of the Queen Mary University of London School of Law (LLB Law, Honors), and is completing her US-based LLM at the Benjamin N. Cardozo School of Law.

The gist of the Complaint is that the record label contracts that artists like Rogers have provide a 50% royalty fee on music copyright licenses and a 10-20% royalty fee on music sales. Rogers is arguing that digital music downloads (e.g., via iTunes) are more akin to licenses since they do not require packaging, shipping or other “cost of goods sold” investment from the record company.

The Hollywood Reporter notes that other artists have brought several lawsuits against their labels on substantially the same grounds:

Universal Music Group is facing a class action from artists including Chuck D, Rob Zombie, and Rick James. Warner Music is confronting the same in a recently-filed class action by Sister Sledge and other musicians. Sony Music is no stranger to this type of litigation either, facing off against the Allman Brothers and Cheap Trick over online revenues.

Last year artist Eminem won an identical suit against Universal Music Group, with the District and Circuit Courts both holding that digital downloads are copyright licenses (granting Eminem the 50% royalty). The US Supreme Court denied cert. for appeal, so the Circuits remain split on this huge money-making copyright issue.

It will be interesting to see how Tennessee, an historically artist-friendly jurisdiction, rules in the Rogers case. In the iTunes context, especially, where iTunes specifically encodes music files to prevent customers sharing amongst each other (in contrast with customers being able to share and re-sell CD copies of music), it is easy to see how digital downloads can be construed as limited licenses.

The defendant, American Working Collie Association (AWCA), an Ohio non-profit corporation and its president, Jean Levitt, a Vermont resident constructed a series of articles examining the conditions and treatment the Plaintiff, SPCA of Upstate New York providefor collies. These articles were published by the Defendants on their website www.awca.net, wherein the president, Jean Levitt frequently provides a myriad of information, anecdotes, and photographs related to collies. However, the judgment emphasizes the issue of lack personal jurisdiction instead of whether the alleged defamatory statements injured the plaintiff. SPCA of Upstate New York, Inc. v. American Working Collie Association, — N.Y.S.3d — (N.Y. Ct. App. Feb. 10, 2012).

Chief Judge Lippman for the majority, went through an elaborate analysis of whether personal jurisdiction over a non-domiciliary could be obtained. Under CPLR 302 (a), long-arm jurisdiction for a defamation cause of action is the exception for “tortious act” jurisdiction because each State policy differs in the governance of freedom of expression and therefore, courts avoids setting disproportionate restrictions. Nevertheless, in order to proceed on with this claim non-domiciliaries must have transacted in business within the state to satisfy 302(a). The court cited McGowan v Smith, 52 NY2d 268, 271[1981] to interpret “some articulable nexus between the business transacted and the cause of action sued upon” or a substantial relationship. The Defendant, AWCA only visited SPCA several times in order to donate supplies and tour the facilities for several hours. Additionally, the phone calls between Jean Levitt and executive director of the SPCA, Cathy Cloutier were infrequent and limited. Therefore, AWCA’s activities in New York were limited and did not form substantial relationship between the parties constituting transactions in business.

Piggot J dissenting contends the aforesaid reasoning by the majority is flawed because it is sufficient to invoke jurisdiction when Defendant’s acts are “purposeful” thus creating a substantial relationship. The mission statement of the AWCA establishes the promotion of the “well-being of collies” and therefore, the nature of this statement insinuates New York is part of this endeavor to promote. Additionally, the AWCA volunteered to donate collars and leashes, donated money and purposely communicated with the SPCA – this would constitute a substantial relationship. Piggot J criticizes the majority’s concerns for “free speech” as misplaced because there is little danger of a chilling effect to occur whilst analyzing whether business transactions in New York were purposeful or whether there was a mere “libelous utterance.” Therefore, courts should be more open to practicing long-arm jurisdiction.

Internet defamation comes with a labyrinth of law and it almost seems impossible to maneuver through to ascertain a successful cause of action. Moreover, the Court’s apprehensiveness whilst extending personal jurisdiction to a defamation cause of action is troublesome. The “but for” requirement seeking to establish substantial relationship in business is no longer feasible because business practices are no longer confined to a certain forum because of the Internet. State policy does not govern freedom of expression on the Internet; therefore long-arm jurisdiction would be appropriate.

Similarly to Internet defamation the issue of cyber squatters and gripping sites still seem to be a hot-button topic in court and Congress. The Competitors Section 43 (d) of the Lanham Act provides an Anticybersquatting Consumer Protection Act (ACPA). This provision grants cause of action to trademark owners against individuals with bad faith and the intention to profit from by purchasing domain names. Moreover, individuals are allowed to register domain names to form gripping sites that criticize companies and businesses as long as there is no intent to profit or deceive the public. This issue seems to tie into Internet defamation because it seems that with this legislation Congress is essentially illustrating that making profits is inappropriate but registering a websites with domain names like blanksucks.com is okay.

Note from Tim: The last paragraph speaks to Michelle’s residency in the UK. In the US we have this thing called freedom of speech which, whilst making it okay for Congress to regulate commercial activity via the Lanham Act (e.g., profiting from deceptive domain names), it would be unconstitutional for Congress to make it inappropriate to register domains for “griping” activities

Guest author Michelle Addison is a law clerk on Tim’s internet law team at Handal & Morofsky, LLC. She is a graduate of the Queen Mary University of London School of Law (LLB Law, Honors), and is completing her US-based LLM at the Benjamin N. Cardozo School of Law.

“Privacy policies are a key consumer disclosure tool for app developers and important to establishing and maintaining consumer trust,” said Alan Chapell, Co-chair of the MMA Privacy & Advocacy Committee. “Our guidelines offer developers the foundation from which to craft a document that reflects the privacy practices of each of their apps and helps them stay in compliance with applicable law and industry standards. We urge app developers to consult with their legal counsel when adapting these guidelines for their purposes.”

The full privacy policy guidelines can be accessed here. The central recommendations seem to be the inclusion of opt-in and opt-out rights, as well as disclosure by the developer of its app’s data retention policies.

Developers should note that it is not enough to disclose a “good” privacy policy. The FTC will investigate and prosecute, under false advertising, any company that fails to abide by its disclosed policies.

The MediaPost reports that consumer advocacy groups have begun to urge the Federal Trade Commission to come up with rules to prevent marketing companies from utilizing the dark side of facial recognition technology without users’ express consent:

The advocacy group Consumers Union last week asked the Federal Trade Commission to set some ground rules aimed at giving people the chance to preserve their anonymity. “No clear standards currently exist for the use of facial identification software, which could allow industry to simply make up rules as they go along,” Consumers Union says in comments filed last week with the FTC.

Specifically, the group argues that companies shouldn’t use facial recognition software without people’s explicit consent.”Consumers should always be able to expressly opt in when the use of facial recognition technology is involved. The privacy risks surrounding facial recognition software are significant, and many consumers are likely to be uncomfortable with the use of this type of technology,” the group wrote.

Indeed, most if not all states already have privacy (aka right of publicity) laws on the books that make it illegal to use a person’s face, name or likeness for a commercial purpose without his or her express approval. See New York Civil Rights Law Sec. 50:

Right of privacy. A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.

It will be interesting how such laws play out in the context of using people’s faces to market things to them rather than using their faces to market things to others.

MediaPost reports:

The amendment would allow companies like Netflix to secure users’ consent to share information about movie rentals on an ongoing basis.

Leahy, who authored the VPPA, expressed concern that this change would blindside users. “When dominant corporate interests entice a check off in order to receive what may seem like a fun new app or service, they may not be presenting a realistic and informed choice to consumers,” he said.

Netflix’s proposal stems from its desire to partner with Facebook where it can play the now familiar social/share game with users’ video downloads. Some users don’t much care about sharing such information, while others would see it as a serious breach of personal privacy.

Lawmakers are concerned that revising the Video Privacy Protection Act to allow a blanket consent mechanism would allow companies to dishonestly induce users into sharing more private information than they realize.

The ruling is so major, in fact, that the IFPI (International Federation of the Phonographic Industry) has issued a press release:

Reacting to the judgment, IFPI CEO, Frances Moore, said: “This is a very important ruling for Russia. It shows that sites like vKontakte cannot build a business on making music available without licences from content owners. Such services are directly liable for the unlicensed music they make available. They cannot avoid liability by shifting responsibility on to their users.”

Frances Moore added that: “Russia is a market with the potential to develop a thriving legitimate music market, but this prospect is currently being undermined by unlicensed services such as vKontakte. Millions of unlicensed songs are freely available through vKontakte, competing unfairly with licensed services, and this must stop.”

It is definitely a big deal when notorious intellectual property infringement zones, like Russia, begin to enforce international copyright laws. Clearly Russia is beginning to guide itself toward a more copyright friendly policy. Additionally, this ruling might very well undermine the policy arguments in favor of the recently debated ACTA legislation.

Consumers who are logged into Google services won’t be able to opt out of the changes, which take effect March 1. And experts say the policy shift will invite greater scrutiny from federal regulators of the company’s privacy and competitive practices.

The move will help Google better tailor its ads to people’s tastes. If someone watches an NBA clip online and lives in Washington, the firm could advertise Washington Wizards tickets in that person’s Gmail account.

Google’s reasoning for this major privacy shift seems to be that its bottom line has decreased in comparison to Apple and Facebook which otherwise consolidate all of their respective products under one brand and policy. (One would argue that part of Google’s appeal is to serve as an alternative for consumers who do not like their private info mined by Facebook…)

In any event, the company, which recently settled a privacy complaint by the FTC, is now in the DOJ’s spotlight over the potential antitrust implications of its privacy consolidation:

Federal officials are also looking at whether Google is running afoul of antitrust rules by using its dominance in online searches to favor its other business lines.

We will be following up on the antitrust implications of Google’s move on the ABA blog shortly (link to be posted).

The Anti-Counterfeiting Trade Agreement (ACTA) is a groundbreaking initiative by key trading partners to strengthen the international legal framework for effectively combating global proliferation of commercial-scale counterfeiting and piracy. In addition to calling for strong legal frameworks, the agreement also includes innovative provisions to deepen international cooperation and to promote strong intellectual property rights (IPR) enforcement practices. Together, these provisions will help to support American jobs in innovative and creative industries against intellectual property theft.

Parties Involved

On October 1, 2011, the United States, Canada, Japan, New Zealand, Singapore, New Zealand, Korea, and Australia signed ACTA in Tokyo. However, other negotiating parties such as the European Union, Switzerland and Mexico have opted to wait on the ratification of this agreement.

Criticism

Is it a treaty or is it an executive agreement? ACTA was introduced during the Bush Administration and subsequently pursued by the Obama Administration. The White House insists that ACTA is an executive agreement therefore, no questions as to the constitutional validity should be entertained. However, critics in Congress have voiced their concern that ACTA could be interpreted as a treaty masquerading as an agreement. Moreover, the European Union has referred to the ACTA as a binding treaty. The effect of the aforesaid could mean ACTA should not have been approved in the manner it was in the US.

The European Union has voiced a myriad of concerns throughout the amending process which suggested that ACTA is ambiguous and possibly does not reconcile with EU directives. According to the US Trade Representative EU officials were present for the signing ceremony on October 1, 2011, they did not sign the agreement. Nevertheless, the EU seems to be on the path of ratification due to influence of other partners (US). Poland has played a key-role in the campaign for ACTA but with the negative response to SOPA many protesters have been attacking Poland’s support for ACTA.

Protesters primarily illustrate apprehension over the elusive nature, validity and censorship issues that evolve out of ACTA. Contributor E.D. Cain of Forbes stated:

• ACTA spans virtually all of the developed world, threatening the freedom of the internet as well as access to medication and food. The threat is every bit as real for those countries not involved in the process as the signatories themselves.
• ACTA has already been signed by many countries including the US, but requires ratification in the EU parliament and the US Senate.
• The entire monstrosity has been negotiated behind closed doors and kept secret from the public. Technocrats, beholden to the deep pockets of the entertainment lobby, have masked the agreement behind the misnomer of “anti-counterfeiting” when in fact it goes much, much further.

The US has already signed ACTA and post-SOPA the vast amount of STOP ACTA type petitions seem to be spreading like wildfire. The EU participation in this agreement could make or break the integrity of the framework. However, for us Americans I think it is important to question the constitutional validity of such “agreements” without the participation of the Senate.

Andrew Moshirnia of the Citizen Media Law Project makes a compelling analysis on the executive agreement:

When lobbyists and the USTR insist that ACTA won’t change laws very much, I feel like I’m taking crazy pills. Of course it changes the law, why else would it need to be negotiated in secret and why else would it attract so much industry attention and support….

Executive agreements essentially give the President a means to unilaterally control the foreign relations of the United States. Presidents have historically used accords with foreign nations to conclude international pacts without giving the Senate a meaningful opportunity to interfere. See The Destroyers for Bases Deal, Yalta, The Vietnam Peace Agreement of 1973. The constitutionality of this tool is somewhat dubious: the Constitution does not mention executive agreements, nor do the framers discuss the concept in either the constitutional convention or the Federalist Papers. The judiciary has defended the use of congressional-executive agreements*, provided that these do not conflict with the Constitution. See Reid v. Covert, 354 U.S. 1 (1957). But hopefully the Court would be more likely to strike down unilateral Executive Agreements. But see U.S. v. Pink 315 U. S. 203, 229 (1942). However, the prospect of an executive agreement is rarely an issue because the mere presence of an existing agreement places an incredible amount of pressure on Congress to go along with the deal.

There have been some congressional efforts to restrain the use of executive agreements and to reestablish the primacy of Congress’ Treaty Power. In 1954, the Bricker and George Amendments, which would have restricted the president’s power to craft executive agreements, failed to clear the Senate, the latter by only a single vote.

While the President has the power to utilize executive agreements, he is not to keep them secret. Eighteen years after the Bricker and George amendments barely failed, and only a few years after the discovery of covert executive agreements with Laos and South Korea, Congress passed the Case Act of 1972. The Act requires the Executive to disclose within 60 days the text of “any international agreement” in which the United States is involved. But this does little to redress the problem of unilateral executive agreements because presidents routinely ignore the statute.

Moshirnia contends due to the unpopularity of ACTA this could mean another interpretation of the validity of executive agreements:

So to sum up: I am terrified that ACTA is going to be as monstrous as I believe it to be and that the United States will join the agreement by executive fiat. But maybe some good will come out of this–maybe the deep unpopularity of ACTA (trust me, people want their Internet) will force Congress to finally reassert its long neglected Treaty Power and curtail the use of executive agreements. While the Congress has deferred to the President in matters of war, there is no need to maintain such deference if ACTA empowers national ISPs to sever domestic Internet connections. None of this worrying would be necessary if the administration would simply (1) make the ACTA negotiations public, and (2) agree to submit ACTA to the Senate for formal ratification as a treaty. The longer this remains secret, the more users will worry.

The full Anti-Counterfeiting Agreement can be found at: HERE

Guest author Michelle Addison is a law clerk on Tim’s internet law team at Handal & Morofsky, LLC. She is a graduate of the Queen Mary University of London School of Law (LLB Law, Honors), and is completing her US-based LLM at the Benjamin N. Cardozo School of Law.