Computer Law – Douglas Isenberg Text: Software and Internet Law ISBN 0-7355-3654-6 COMMUNICATIONS DECENCY ACT OF 1996 (CDA) 47 U.S.C. §230........................................ 4 §230: Zeran v. AOL............................................................................................................... 4 ISPs ≠ Publishers under the Communications Decency Act ............................................................ 4 Blumenthal v. Drudge – drudge writes art of politician’s cheating on wife................ 4 CHILD ONLINE PROTECTION ACT (COPA) ............................................................................... 5 COPYRIGHT 17 USC (§102 DEFINES © LAW)............................................................................... 6 CHILD ONLINE PRIVACY PROTECTION ACT (COPPA) ............................................................ 6 CHILDREN’S INTERNET PROTECTION ACT (CIPA) ................................................................... 7 CONTROLLING THE ASSAULT OF NON-SOLICITED PORNOGRAPHY AND MARKETING ACT OF 2003 (CAN-SPAM).................................................................................................................. 7 PROTECT ACT............................................................................................................................ 7 UNIFORM DOMAIN NAME DISPUTER POLICY (UDRP)............................................................ 7 DOT KIDS ACT .............................................................................................................................. 7 CompuServe Incorporated v. Cyber Promotions, Inc. p. 921......................................... 7 DIGITAL MILLENNIUM COPYRIGHT ACT (DMCA) 17 USC §512 ........................................... 7 RIAA (Recording Industry Association of America) v. Verizon, 351 F. 3d 1229 (D.C. Cir. 2003) ............................................................................................................................... 7 Rule .................................................................................................................................................. 7 Universal City Studios, Inc. v. Reimerdes, p. 751 ............................................................ 8 Under DMCA, it is illegal to reverse-engineer the protections put in place that control access to a protected work .................................................................................................................................. 8 1-800 Contacts, Inc. v. WhenU.com, 309 F. Supp. 2d. 467 (2003) ................................... 9 Copyright issues with pop-ups.......................................................................................................... 9 Monica Franklin, Guest Lecturer, Turner Broadcasting; September 20, 2004.............. 9 Trademarks in Cyberspace ................................................................................................................ 9 Trademark Law.................................................................................................................................... 10 Panavision International, L.P. v. Toeppen, p,. 631......................................................... 10 Registration of a famous mark is commercial use even if use of the mark was not attached to a product ........................................................................................................................................... 10 Avery Dennison Corporation v. Sumpton, p. 638 ......................................................... 11 Dilution protection is only available for truly famous marks; dilution is not a factor of consideration in likelihood of confusion .......................................................................................... 11 ANTI-CYBERSQUATTING PROTECTION ACT (ACPA) 15 USC §1125D................................. 12 Planned Parenthood Federation of America, Inc. v. Bucci, p. 647............................... 13 Likelihood of Confusion between two marks will be determined based upon the Polaroid Factors . 13 Shields v. Zuccarini, p. 665................................................................................................ 13 A registrant of a domain who registers a domain that is distinctive and identical or confusingly similar to a trademark, or if such trademark is famous is identical or confusingly similar or dilutive, in bad faith with the intent to profit violates the ACPA................................................... 13 AOL v. John Zuccarini, a/k/a Cupcake Message, et. al. .............................................. 13 Unless a challenger has Trademark rights in a mark, then a UDRP Domain dispute will not transfer the domain from the registrant .......................................................................................... 13 Ticketmaster Corporation v. Bill Hicks, WIPO Arbitration and Mediation Center.. 13 Rule: ............................................................................................................................................... 13 Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Arbitration and Mediation Center................................................................................................................ 14 Rule ................................................................................................................................................ 14 Les Seagraves, guest speaker – Chief Privacy Officer, Asst. General Counsel......... 14 Earthlink Asst. General Counsel..................................................................................................... 14 In re Pharmatrak, Inc. Privacy Litigation, p. 859............................................................ 14 The Wiretap Act’s Exception applies to web-monitoring company’s interception of internet user’s use – the exception allows interception when one party has knowledge of the interception ........... 14 Smyth v. Pillsbury Co., p. 869 [914 F.Supp. 97].............................................................. 15 Employee in an at-will jurisdiction cannot state a claim for relief for wrongful discharge when discharged for transmitting inappropriate and unprofessional comments...................................... 15 Konop v. Hawaiian Airlines, Inc., p. 872 [302 F.3d 868 (2002)].................................... 15 People do not have a reasonable expectation of privacy when they post information on a website, even if the website is secure and requires permission to access it.................................................... 15 In re Geocities Online Website Opinion.......................................................................... 15 Use of membership application data without user consent was found to be an unfair and deceptive practice under the FTCA................................................................................................................. 15 Movie Buff case................................................................................................................... 16 Playboy v. Welles (2002) .................................................................................................... 16 TRADEMARK USE ON SEARCH ENGINES.................................................................................. 16 CONTRACT FORMATION, ENFORCEMENT AND WARRANTIES .............................................. 17 Contract Formation Cases.................................................................................................................... 17 Step-Saver Data Systems v. Wyse Technology............................................................... 17 Under UCC §2-207, an additional term on a box-top shrink-wrap license will not be incorporated into a contract between parties when the term’s addition to the contract would materially alter the parties’ agreement. .......................................................................................................................... 17 ProCD, Inc. v. Zeidenberg................................................................................................. 17 A shrink-wrap license agreement is enforceable so long as the SW vendor allows the buyer to return same if they do not agree with the license once they purchase and review the license – UCC §2-206 acceptance rules apply......................................................................................................... 17 Specht v. Netscape Communications Corp. ................................................................... 18 A contract offeree does not manifest assent to click-wrap terms located on a webpage where those terms are not conspicuous to the purchaser (person obtaining SW) ............................................... 18 Hill v. Gateway 2000, Inc................................................................................................... 18 Limited warranties contained as part of a SW and HW product bundle are enforceable when the consumer may rescind acceptance of the terms of the warranty ..................................................... 18 American Computer Trust Leasing v. Jack Farrell ........................................................ 18 A vendor may include self-help features, such as deactivation, when included in the terms of the license of the SW ............................................................................................................................. 18 Neilson Business Equipment Center, Inc. v. Monteleone............................................. 19 Computer system sales are sale of goods under UCC and implied warranty of fitness for particular purpose applies as well as warranty of merchantability.................................................................. 19 Vault Corp. v. Quaid Software Ltd. ................................................................................. 19 Rule ................................................................................................................................................ 19 SOFTWARE PATENTS................................................................................................................... 19 Gottschalk v. Benson, S. Ct. (1972) ................................................................................... 19 Algorithm is not patentable subject matter under 15 USC §101.................................................... 19 Diamond v. Diehr, S.Ct. (1981) ......................................................................................... 19 Embedded SW process of curing rubber that contains a mathematical algorithm is patentable when the claims as a whole are patentable under §101 and the algorithm is not claimed ........................ 19 State Street v. Signature Financial, Fed. Cir. (1998) ....................................................... 20 An algorithm is patentable under § 101 when it produces a useful, concrete, and tangible result. 20 AT&T v. Excel, Fed. Cir. (1999)......................................................................................... 20 Rule ................................................................................................................................................ 20 CAN-SPAM ACT....................................................................................................................... 20 EXAM REVIEW............................................................................................................................. 21 ♦ TLD – Top level domain [.com, .net, .org, .edu] 2nd level = cnn of cnn.com 3rd level domains = jobs of jobs.msn.com ♦ gTLDs – govt TLDs ♦ ccTLDs – country code TLDs [.us, .fr, .uk] COMMUNICAT IONS DECENCY ACT OF 1 9 96 (CDA) 47 U.S.C. § 23 0 §230: Zeran v. AOL ISPs ≠ Publishers under the Communications Decency Act ♦ The genesis of §230 was the Prodigy case where they promoted themselves as the family friendly service provider, also stated they edited and screened content, thus Prodigy held itself out more like an original publisher ♦ Immunizes ISPs to avoid liability for information on their systems ♦ Encourages ISPs to self-regulate their content without the possibility of liability; promotes dev of filtering/blocking tech ♦ ISPs CAN edit & self-reg content w/o liab as publ ♦ ISP cannot be cast in same light as person making the comment ♦ No liability upon notice to ISP of the defamatory material ♦ § 230 does not apply to copyrighted material Blumenthal v. Drudge – drudge writes art of politician’s cheating on wife ISPs still immune when it has editorial control over its contributing writers Not Just Immune to Defamation as a COA – Also immune to o Negl for allowing a user to sell porn o Online Auction immune from unfair competition/negl claims for inauthentic sports memorabilia o Nuisance claim against offensive speech banned o Kinko’s not liab for negligence when it provides terminals for web access o Public libraries not liable for not shielding indecent material from minors CDA does not apply to IP claims Reno v. ACLU, p. 809: Constitutional challenges to CDA o While CDA references, “indecent communications” and “patently offensive communications” Almost no debate regarding these provisions in the law o Ginsberg case = NY law not unconstitutional to require age minimums before selling certain materials o Pacifica case = may regulate specific broadcast because it is not the traditional content allowed; not punitive like CDA; broadcasts get lowest 1st amendment protection; risk of encountering offensive content is ≠ as high as broadcast o Renton case = allowed to regulate location of adult theaters because of secondary effect – distinguished here because not involved with content of the films shown o Miller case = test for obscenity Apply contemporary standards to determine if content appeals to community Content describes content already defined by state law as offensive Whether the work lacks serious literary, artistic and political value o Sexual expression by adults which is indecent but not obscene is protected by First Amendment o CDA is too vague Content based and subjective, not the typical “time, place, and manner” tests of constitutionality CDA is a Criminal statute which as a deterrent may chill speech too much o Sustained provisions: Indecency transmission/specific person provisions: Sustained in cases where the disseminator of the info knows all the recipients are minors o CDA regulates based on content o Since there are not many ways to confirm a person’s age (18 in the CDA) it creates a chilling effect o User-based filtering software is available and CHI LD ONL INE PROT ECTION ACT (COPA) Based on the MILLER test: no protection of obscene material, regardless of the medium – COPA takes it a step further by applying it specifically to minors o Knowingly and with knowledge of the material, in interstate commerce, by way of WWW, makes commercial communication available to a minor and which is harmful to minors = fined up to $50K, imprisoned up to 6 mos or both o Defines “harmful to minors” Includes community stds of what is obscene to minors of content pandering to prurient interests Patently offensive to minors – sexual acts whether actual or simulated, lewd exhibition of genitals/post-pubescent breasts o COPA is, like CDA, a criminal statute o Different because it distinguishes using the WWW to distribute Ashcroft v. ACLU – whether the community standard portion of COPA is facially unconstitutional o Ct held here that the community standard prong of the test was not overbroad on its face but limited its decision to that prong only – multiple concurrences/dissents in this case; ct leaves it to the ct app to view the issue of the community std along with the other parts of the law as a whole o How COPA differs from CDA CDA bans all electronically disseminated info – COPA only for WWW COPA is only for messages intended for commercial purposes COPA is only for material which is harmful to minors o COPA Defenses In good faith a person restricts access to materials harmful to minors by requiring a credit card, debit acct, access code, or adult ID Accepts digital certificate verifying age Any other reasonable means feasible under technology o COPA essentially was ignored because the other elements were not considered since the SupCt only reviewed the narrower issue of “community Standards” o Recently (2004) COPYRIGHT 1 7 USC (§ 10 2 DE F INES © LAW) “Original works of authorship fixed in any tangible medium of expression now known or later developed...” o Categories provided in statute: literary, music, graphic, pictorial, sculpture, motion pics, sound recording, architectural works o §106: exclusive rights provided to owner of copyright; rights to distribute, copy, create derivative works o §107: fair use – certain criteria will allow someone to avoid liability (nonexclusive work) Purpose and character of use Nature of the copyrighted work Amount and substantiality of the work Effect of the use upon potential market for or value of the copyrighted work MGM v. Grokster o Contributory and/or vicarious copyright infringement liability Kelly v. Arriba Soft Corp o Inline linking to protected images – full size o Thumbnails Religious Technology Center v. Netcom On-Line o Man hosted his BBS on Netcom o No direct liability o No summary judgment on contributory infringement claim A&M Records, Inc. v. Napster, Inc. o This case isn’t about file sharing as much as it stands for indirect infringement via direct infringement by others o The bigger issue is where the information and or index is maintained o Ct says they have actual and constructive knowledge of infringement o Integrated service: Had a search function and “hot list” function o Ct found Napster had right and ability to police its system and failed to exercise its rights to prevent exchange of infringing files Sony Case o No contributory infringement when the product has a legal, non-infringing use Indirect Copyright Infringement o Contributory Infringement: one who with knowledge of infringing activity, induces, causes or contributes to the infringement o Vicarious Infringement: has right an ability to supervise the activity and has a direct financial interest in such activities CHI LD ONL INE PRIVACY PROT ECT ION ACT (COPPA) ♦ CHI LDREN’ S INT ERNET PROT ECTION ACT (CIPA) ♦ CONTROL LING THE AS SAULT OF NON-SOLICI TED PORNOGRAPHY AND MARKETING ACT OF 2 00 3 (CAN-SPAM) ♦ PROTECT ACT ♦ UNI FORM DOMAIN NAME DI S PUT ER POLICY (UDRP) ♦ DOT KIDS ACT ♦ Law requiring domains registering .kids TLD to be authorized based on its content as an answer to the issue of CompuServe Incorporated v. Cyber Promotions, Inc. p. 921 CompuServe sought injunctive relief to keep defendants from using their servers to send SPAM to CompuServe subscribers Defendants, after notification by CompuServe with requests to cease such use, continued to send spam and use anonymous email addresses P sought injunctive relief on the basis that the D’s unauthorized use of their systems was a trespass to chattels o Rest. 2d of Torts §217(b): Trespass to chattels may be committed by intentionally using or intermeddling with the chattel in possession of another DIGITAL MI L L ENNIUM COPYRIGHT ACT (DMCA) 1 7 USC §5 12 ♦ ISPs with copyright infringing material shielded from liability, UNLESS they know about the existence of the © ♦ ISPs have a safe harbor provisions ♦ Illegal to circumvent a copy-protection technology RIAA (Recording Industry Association of America) v. Verizon, 351 F. 3d 1229 (D.C. Cir. 2003) Rule ♦ Suit to require Verizon as an ISP to provide identity information about its members based on their IP address ♦ Verizon refused to comply with the subpoena ♦ Subpoena issued pursuant to §512(h) of the DMCA ♦ After Sony, ISPs were given some immunity because they were not hosting infringing content on their servers ♦ RIAA then had to start going after individual content sharers because of the P2P technology made it difficult to pin it on the ISPs ♦ §512 ISP Safe Harbors Transitory Digital Network Communications: ISPs will not be held infringing by providing connections for transmissions initiated and directed by an internet user System Caching: immunity from liability for infringement of copyright by reason of the intermediate and temporary storage of material on a system or network controlled or operated by or for the ISP Information Residing on Systems/Networks at Direction of Users: safe harbor from liability for infringement of copyright by reason of the storage at the direction of a user of material that resides on a system or network controlled or operated by or for the ISP [ISP must have lack of knowledge concerning, no financial benefit from, efforts to remove, deny access to] Information Location Tools: Safe harbor from liability for infringement of copyright by reason of the provider referring or linking users to an online location containing infringing material or infringing activity by using information location tools such as index, directory, reference, pointer or hypertext link ♦ No longer required, upon notification by content owner, to take down content infringing ♦ §512 k – Defines an ISP as provider of online services or network access or operator of facilities therefore ♦ Hosting company must have an agent at the company who is identified to receive notice at the USPTO as designated agent for notice of copyright infringement – see http://pages.ebay.com/help/community/registered-agent.html Notice must comply with 17 usc § 512(c) 3A • ID of copyrighted work • ID of the material and is to be removed with info sufficient to allow ISP to remove it • Info to allow ISP to contact complaining party • Statement that complaining party has good faith belief that use is not auth by © owner, its agent or the law • Statement that the info in the notification is accurate, & under penalty of perjury that the complaining party is auth to act on behalf of the owner of an exclusive right that is allegedly infringed Universal City Studios, Inc. v. Reimerdes, p. 751 Under DMCA, it is illegal to reverse-engineer the protections put in place that control access to a protected work ♦ CSS is a 40-bit encryption key used to control access to the movie content ♦ DeCSS was designed for the sole purpose of violating copyright ♦ Linking is a form of trafficking – there is an anti-trafficking provision in DMCA ♦ Bright line rule – No injunction or liability for linking to a site containing unlawful circumvention technology Know at the time that the material is on the linked site Know that what you are linking to is circumvention technology Create or maintain the link for the purpose of disseminating that technology 1-800 Contacts, Inc. v. WhenU.com, 309 F. Supp. 2d. 467 (2003) Copyright issues with pop-ups ♦ Copying or modifying a portion of a copyrighted website ♦ Software that triggers a pop-up displaying an advertisement Monica Franklin, Guest Lecturer, Turner Broadcasting; September 20, 2004 Trademarks in Cyberspace ♦ Started practicing in TM law before it applied in cyberspace; TM infringement and dilution applied to the web but was not very effective and difficult to apply to the web because of commercial use and other principles ♦ 1996-1999: Corp practice was basically registration to protect from cyber squatters No matter how many names, someone could find something to register that was close to yours Turner tried to get its basic trade names registered ♦ ACPA and UDRP: Principles of law put in place to protect infringement over the internet Companies can go out and use their domain names and don’t have to worry as much about those coming in as bad-faith actors ♦ TLDs: Companies can use TM protection by registering TLDs Country TLDs (CC TLDs: .uk, .br) Companies are moving to target market by regions • Not as often moving to .net, .org, and other SLD • Turner wants to stick with the single TLD as the basic ones (GTLD) and CC TLDs (up to 3500 which is a very administrative-intense undertaking) o Mark Monitor o All Domains ♦ In-house Clients Turner businesses – companies within Turner • CNN • Cartoon Network • AdultSwim.com • TBSFunny/TBS • Turner promotions ♦ Domain protection Audit: Watch services, employees, third-party notification Investigate: Visit the site, review/capture content, investigate registrant Prioritize: 1st priority = damaging & derogatory sites; 2nd priority = sites offering competing goods/svcs similar to Turner (e.g., CNN as Canadian News Network); 3rd priority = dissimilar commercial svcs and/or free ride sites (hardly ever have time to go after these); 4th priority = non-commercial fan sites, noncommeercia sites whose registrants assert first amendment defenses (likely never to go after these sites) Consider factors & take action ♦ UDRP – this is equitable action: ICANN Jurisdiction: • Registrant agrees to this procedure @time of registration o If TM owner • Available only for gTLDs and certain ccTLDs • No jurisdictional or service hurdles Would not want this for damages claims – use ACPA for civil court Single-member panel $1150-2000 depending on number of domain names and dispute provider Three-member panel 1250-2500 depending on number of domain names and dispute provider If more than 10 domains, fees vary ♦ ACPA Bad faith users Civil action for damages (statutory of $1K – $100K) Transfer or cancellation of domain name Injunctive relief (TRO) ♦ GA Bar – IP and Cyberspace sections Conferences and other networking International Trademark Assn – www.inta.org TRADEMARK LAW ♦ 15 USC §1125(c) Dilution elements: Famous mark Commercial Use Defendant’s use after the mark became famous Defendant’s use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish the goods and services Panavision International, L.P. v. Toeppen, p,. 631 Registration of a famous mark is commercial use even if use of the mark was not attached to a product ♦ Toeppen registered Panavision.com and put a picture of Pana, Illinois; tried to sell it to Panavision when it wanted to register the panavision.com domain, sent them a letter asking for $$ ♦ Trademark Dilution Claim No issue as to famousness or use after mark became famousness Commercial use happened when Toeppen’s business was to register domains and sell them to companies rightfully owning the mark; domains are not the same as phone #s because they are words and more identifiable and synonymous with the TM; doesn’t matter if you don’t attach the mark to a product – still commercial use Dilution – capacity lessened because company cannot readily identify its goods and services on the internet to consumers; using another TLD ≠ valid argument because using company name.com facilitates communication with the consumer; also puts mark @mercy of Toeppen Avery Dennison Corporation v. Sumpton, p. 638 Dilution protection is only available for truly famous marks; dilution is not a factor of consideration in likelihood of confusion ♦ Here, the famousness of the Avery Dennison mark was challenged How famous will depend on the Polaroid factors (inherent distinctiveness, duration and extent of advertising, degree of recognition) ♦ Registration provides a presumption of distinctiveness ♦ Acquired secondary meaning associated with a mark does not always meet the famousness prong of a dilution claim (which happened here) ♦ Here, there is no overlap in the customer base of the two companies since Sumpton’s business was to register vanity domains for people and avery’s company was office products ♦ Just because a mark is used and advertised world wide does not mean that it is famous ♦ LIKELIHOOD OF CONFUSION IS NOT A FACTOR IN DILUTION under FEDERAL TRADEMARK DILUTION ACT ♦ Commercial Use In any cybersquatter case, the use of a trademark is a commercial use if the registrant registered it with the “intention to arbitrage” or “trade in the value of the mark” Here, since Sumpter didn’t trade on avery’s name but registered surnames which just happened to be trademarked ♦ Dilution: diminished capacity to identify and distinguish the goods and services on the internet This was an appeal of a summary judgment -A fact finder could have found that dilution does not occur with a TM.net registration ♦ Tarnishment: defendant’s use of a mark similar to TM presents danger that consumers will form unfavorable associations with the mark Whether use of the TM domain presents a danger of tarnishment is a question of fact and summary judgment was not proper ANTI -CY BERSQUATT ING PROT ECTION ACT (ACPA) 15 USC § 11 25D ♦ Elements: Bad faith intent to profit Registrant of domain name has to register, traffic in, or use a domain name: • If mark is distinctive, then identical or confusingly similar, or • If famous, identical or confusingly similar or dilutive, or • Otherwise is a mark protected by statute (Red Cross, Olympics, etc.) ♦ Cts interested in protecting the rights of those whose trademarks infringed ♦ Amended the Lanham Act ♦ Also new law – Truth in Domain Names Act Illegal to register misspellings of domain names and to provide inaccurate domain registrant data $ verdicts and criminal prosecution ICANN: Internet Corporation for Assigned Names and Numbers Corp under CA State Law ♦ Board of Directors and staff composed of people world wide ♦ Charter ♦ Registry – for each TLD (.com, .net, .org, .edu, .info, .fr) has 1 registry organization to maintain a DB of all domains; e.g., NetSol is such company which has a contract with ICANN ♦ Registrar -Accrediting and approving all domain name registrars for TLDs (Network Solutions) Contract with ICANN requires them to require registrant to agree to be bound by UDRP which was drafted by ICANN ♦ Registrant – me, gsu.edu, anyonewithdomain.com ♦ UDRP Complaint Filing ♦ UDRP Dispute Resolution Services (ICANN approves them) WIPO – World Intellectual Property Organization National Arbitration Forum American Arbitration Administration ♦ Panelists appointed – TM attorneys who serve as domain name panelists who issue a decision: Transfer the domain or Do not transfer the domain • If the TM owner loses his bid to get the TM domain back he can then seek remedy de novo in Fed ct 10 day period if order to transfer domain to a TM owner • Then the original registrant can file suit which will keep the transfer from going through (about $1500 in court costs – depends on # domains involved and ) Can request 1-3 panelists • If only 1 – then the registrant can elect to have 3 and pay its own fee for the additional panelists ♦ UDRP Policy – ICANN ♦ UDRP Rules – ICANN ♦ Supplemental Rules – adopted by WIPO or NAF (National Arbitration Forum) ♦ FOR THE EXAM – WE NEED TO KNOW: Why to file a UDRP compared to a private claim Planned Parenthood Federation of America, Inc. v. Bucci, p. 647 Likelihood of Confusion between two marks will be determined based upon the Polaroid Factors ♦ Lanham Act is applicable when a website is using a trademark and meets the use in commerce: Registration of another’s trademark precludes them from offering products or services Internet users must use phone and network lines to transmit information and interstate commerce Plugging the book “The Cost of Abortion” which was a commercial venture Website was only one portion of the overall commercial venture in connection with his catholic counseling services from which he solicits funds Prevents users from being able to access the TM site ♦ Dilution Met because he is commercially using the mark Defendant’s efforts are designed to and do harm to plaintiff commercially Shields v. Zuccarini, p. 665 A registrant of a domain who registers a domain that is distinctive and identical or confusingly similar to a trademark, or if such trademark is famous is identical or confusingly similar or dilutive, in bad faith with the intent to profit violates the ACPA ♦ Joe Cartoon – Zuccarini registered 5 domains that were variants of JoeCartoon.com ♦ Bad faith will not be found when the person shows he believed and had reasonable grounds to believe that it was a fair use or otherwise lawful AOL v. John Zuccarini, a/k/a Cupcake Message, et. al. Unless a challenger has Trademark rights in a mark, then a UDRP Domain dispute will not transfer the domain from the registrant ♦ UDRP Test: Identical or confusing similar to TM in which someone has rights • But confusingly similar in UDRP terms looks @how similar the TM is to the domain name (word-for-word) Reg has no rights or legitimate interests in domain name and Domain name registered and is being used in bad faith ♦ Fed Reg is not required – just TM rights Ticketmaster Corporation v. Bill Hicks, WIPO Arbitration and Mediation Center Rule: ♦ Facts Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Arbitration and Mediation Center Rule ♦ Jeff Burger registered the domain brucespringsteen.com as a redirect site to list celebrities celebrities1000.com ♦ Jeff Burger obtained rights to the domain through use (common law) while Bruce Springsteen obtained rights through use as well ♦ Brucespringsteen.com is comfusingly similar and identical to Bruce Springsteen ♦ Jeff Burger has legitimate rights be Les Seagraves, guest speaker – Chief Privacy Officer, Asst. General Counsel Earthlink Asst. General Counsel ♦ Privacy In re Pharmatrak, Inc. Privacy Litigation, p. 859 The Wiretap Act’s Exception applies to web-monitoring company’s interception of internet user’s use – the exception allows interception when one party has knowledge of the interception ♦ Wiretap Act Exceptions: act designed to keep the gov’t from tapping people’s phones When one of the parties to the communication authorize the interception 3rd Party authorized by one of the parties to the communication • Here this was the monitoring company authorized by the Pharma companies Consent ♦ Specifically, medical information and privacy information HIPPA is specifically tailored to privacy information related to medical information ♦ Stored Wire and Electronic Communications and Transactional Records Act: designed to protect from hacking Requirement is that access be to a “facility” End users do not generally use their computers as “facilities through which an electronic communication service is provided” thus they are not the same as “facilities” as described under the act ♦ Computer Fraud and Abuse Act (CFAA): permits recovery to those who suffer damage or loss by reason of a violation of the Act; Damage defined as any impairment to the integrity or availability of data, a program, a system, or information that causes loss aggregating at least $5000 • The $5000 provision for damage suffered was not met here ♦ End-users must have notice, provide authorization, choice to opt out, access to the information in order to maintain it [the end user]; reasonable security; must have method of enforcement ♦ Spyware Bills: Any website allowing the installation of spyware downloads will not be allowed to install something on a computer without allowing the person to consent before installation and to provide methods for removal Smyth v. Pillsbury Co., p. 869 [914 F.Supp. 97] Employee in an at-will jurisdiction cannot state a claim for relief for wrongful discharge when discharged for transmitting inappropriate and unprofessional comments ♦ At-will employees may bring a claim for wrongful discharge when the discharge threatens or violates a clear mandate of public policy (something that strikes @the heart of citizen’s social right, duties and responsibilities) ♦ Termination of at-will employee for transmitting inappropriate and unprofessional comments over employer’s e-mail system did not violate public policy Once an employee communicates a comment over e-mail system utilized by entire company a reasonable expectation of privacy was lost Konop v. Hawaiian Airlines, Inc., p. 872 [302 F.3d 868 (2002)] People do not have a reasonable expectation of privacy when they post information on a website, even if the website is secure and requires permission to access it ♦ Pilot has his own website where he puts up blogs critical of the airline; boss gets access to the website under false pretenses and then fires pilot because of the postings ♦ Wiretap Act: Secure website is not intercepted under the Wiretap Act – it has to be data in transit and not data sitting on a hard drive Impossible for e-mail to ever be under the guise of the wiretap act ♦ Stored Communications Act: As long as someone provides a third party consent to access the information; ct looks @who a “user” is under the act – someone actually using the storage or someone who has authorization to access it ♦ FTC: can’t do anything unfair or deceptive In re Geocities Online Website Opinion Use of membership application data without user consent was found to be an unfair and deceptive practice under the FTCA ♦ Geocities required applications for its online homesteads Information was misrepresented as not being shared with others Information was misrepresented as not being sold to others ♦ One particular area violated COPPA – Child Online Privacy Protection Act – no gathering of identifiable data about kids (those 13 and under) COPPA – websites for kids or targeted to kids • Can’t give certain info to kids without disclosure or limiting their access? • Can’t condition a kid’s access on providing more information than is reasonably necessary • Protect the confidentiality and security of kids Movie Buff case ♦ Initial interest confusion – actionable under the Lanham Act ♦ Initial interest confusion -initial interest in the infringer’s product because consumer thinks that it comes from someone else Playboy v. Welles (2002) ♦ Use of the terms “playboy playmate of the year 1981” and use of other TM terms on website and in metatags ♦ PEI claimed the use of the marks constituted TM infringement, dilution, false designation of origin, and unfair competition ♦ Trademark Infringment ♦ Use of TM “Playmate of the Year” was permissible where it is nominative (she was the POY) ♦ Where D’ raises a nominative use defense the Test employed: Factors used to determine Fair Use adopted into Nominative Use Test: • The product or service in question must be one not readily identifiable w/o use of the TM • Only so much of the mark or marks may be used as is reasonably necessary to id the product or service • The user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the TM holder • A Nominative use may also be a commercial one ♦ HOLD: Nominative: • Use in headlines, banner ads and metatags • Use in wall-paper not nominative – repetition not necessary to describe her Other • Contractually bind them not to use the designation • Use in commerce/Role of the Disclaimer? TRADEMARK US E ON SEARCH ENGINE S ♦ Google Trademark Complaint Procedure Go talk to the advertiser Concerns the text of the ad and not the text in the results of the search Does not have to do with the keywords used to search ♦ Will not disable keywords ♦ US/Canada v. Everywhere Else In the US and Canada, they will ask the advertiser to remove the TM’d term from the content of the ad Applies the policy depending on where the user is conducting the search – inside or outside the search TM Owner can get an infringer to get the term removed from the ad (when within the US) CONTRACT FORMAT ION, ENFORCEMENT AND WARRANTI E S CONTRACT FORMATION CASES ♦ Shrinkwrap Licenses ♦ Clickwrap Licenses, Browserwrap Licenses, Electronic Commerce ♦ Self-Help ♦ Warranties and Disclaimers ♦ Boundary between Contract and IP Step-Saver Data Systems v. Wyse Technology Under UCC §2-207, an additional term on a box-top shrink-wrap license will not be incorporated into a contract between parties when the term’s addition to the contract would materially alter the parties’ agreement. ♦ Facts Limited Use License Agreement shrink-wrap license @issue Step Saver bought TSL’s SW and integrated it with their own SW; when it had problems, TSL invoked their shrink-wrap Limited Warranty which was present on all packages shipped to Step Saver All orders placed via phone ♦ Analysis TSL did not renegotiate to ensure that the Shrink-wrap license was integrated into their agreement, so by conduct of the parties it was not integrated as a writing of the K UCC §2-207: Even if a party continues to perform under the K after receiving a writing that attempts to alter the terms of the K, if that is not the intent of the parties or those terms materially alter the agreement, differ from the agreement of the parties’ earlier writings or discussions, then • Absent a party’s express assent to those new terms of the writing, §2-207 provides default rule that the parties only agrees to those terms that both have agreed to and not the terms of the new writing ♦ TSL failed to get Step Saver to sign agreements containing disclaimer and limited warranty terms, so express assent was not present for the shrink-wrap license ♦ Differs from disclaimers displayed on an item [herbicide] sold from a retailer because at time of purchase, law implies assent to the terms of the disclaimer ProCD, Inc. v. Zeidenberg A shrink-wrap license agreement is enforceable so long as the SW vendor allows the buyer to return same if they do not agree with the license once they purchase and review the license – UCC §2-206 acceptance rules apply. ♦ Facts: Buyer of a database directory ignores the shrink-wrap license and uses it for commercial use; buys 3 copies – knowledge from purchase of first copy does not transfer to the second or third purchase (each transaction is distinct from each other) ♦ Although license is located within the packaging and on the CDROM itself, under UCC § 2-206 “acceptance of goods” conditions acceptance of goods on the buyer’s ability to inspect the license terms §2-206(1)(b): after an opportunity to inspect, should a buyer fail to reject the product, the product is deemed acceptable to the buyer under the terms of the purchase – here Pro CD allowed users to return the merchandise upon review of the license agreement ♦ CF – Shrink-wrap licenses are not contracts of adhesion – also; Contract of adhesion is generally enforceable unless factors such as unconscionability are also present Specht v. Netscape Communications Corp. A contract offeree does not manifest assent to click-wrap terms located on a webpage where those terms are not conspicuous to the purchaser (person obtaining SW) ♦ Facts Click-wrap agreements on website for a plug-in or add-on which contained an arbitration clause located below the “download” button Hill v. Gateway 2000, Inc. Limited warranties contained as part of a SW and HW product bundle are enforceable when the consumer may rescind acceptance of the terms of the warranty ♦ Bundled SW with HW purchases of computers How can purchasers determine whether the terms of a warranty are agreeable before purchase if those terms are bundled HW and SW (as in ProCD included in a Gateway computer) ♦ Consumers were able to obtain copies of the Limited Warranty before purchase Ask vendor to mail them copies of the warranties before purchase [Magnuson-Moss Warranty Act 15 USC §2302(b)(1)(a) requires vendor to provide it upon request] Consult public sources – computer magazines, consumer reports Inspect documents after delivery for a reasonable amount of time • Here, they were allowed to inspect and use the computer for 30 days and after the 30 day period, the terms were deemed accepted by the consumer American Computer Trust Leasing v. Jack Farrell A vendor may include self-help features, such as deactivation, when included in the terms of the license of the SW ♦ Facts: SW company deactivated a client company’s SW when they didn’t pay for their license ♦ Client company claimed extortion – CT said NO b/c RICO is “obtaining the property of another, without his consent, induced by wrongful use of actual or threatened force, violence, or fear, or under color of official right.” Neilson Business Equipment Center, Inc. v. Monteleone Computer system sales are sale of goods under UCC and implied warranty of fitness for particular purpose applies as well as warranty of merchantability ♦ Facts Physician Vault Corp. v. Quaid Software Ltd. Rule ♦ Facts Protection of information on diskettes SOFTWARE PAT ENTS ♦ Requirements for a patent 35 USC §101 – Patentable subject matter and utility §102(a) – Novel in relation to the prior art as of time of invention §102(b) – Application filed within one year of public disclosure/use/sale §103 – Nonobvious to a person skilled in the art §112 – Enable through written description including the best mode ♦ Trade Secret also applies ♦ Particular to SW Embodied on a computer readable medium Functional ♦ Basic Patent Concepts Infringement – both literal and under the doctrine of equivalents Gottschalk v. Benson, S. Ct. (1972) Algorithm is not patentable subject matter under 15 USC §101 ♦ Can’t patent natural laws Diamond v. Diehr, S.Ct. (1981) Embedded SW process of curing rubber that contains a mathematical algorithm is patentable when the claims as a whole are patentable under §101 and the algorithm is not claimed ♦ The fact that the Arrhenius equation was part of the process, but because the claims were not for the equation and the claims as a whole were patentable subject matter State Street v. Signature Financial, Fed. Cir. (1998) An algorithm is patentable under § 101 when it produces a useful, concrete, and tangible result ♦ Calculation of share prices in a hub and spoke mutual fund using a computer is a machine claim – and thus is patentable AT&T v. Excel, Fed. Cir. (1999) Rule ♦ Facts CAN-SPAM ACT ♦ Specifics about the Act Does not preempt state anti-spam laws to the extent that they address fraud in the email ♦ Spam – unsolicited, annoying bulk e-mail Bulk aspect – user should not have to look at whether other users have received the message Commercial aspect – commercial speech less protected under first amendment, political speech is protected; body of law exists that says that a private actor seeking governmental action to chill political speech it becomes pseudo-state action Computers and servers of the ISP are property of the ISP ♦ Cost of SPAM Resources • Employees • Approximately $1 per e-mail • Spammers send out billions of e-mails per year Lost subscribers due to spam • Loss of goodwill of an ISP • Loss of brand ♦ Proof of Damages How to prove how many e-mails a spammer sent out Stolen user accounts used to send spam (lifespan of account approx 2.5) Script-based sign-on Same password for all accounts 857 million e-mails = $857,000 Admin overhead • Fraud and abuse department • Anti-spam costs • Bright-mail filters, enterprise-level spam filters ♦ Fight against spam Technology User education Law ♦ Civil Remedies Under Can Spam Civil RICO Claim – Wire fraud and identity theft • Federal RICO = 3 x damages • Punitive x 2 = discretionary by judge ♦ Spamming Criminal Act Trespass Computer Fraud and Abuse Act • Prohibits unauthorized access that does damage to computer • Federal criminal statute with civil action provision o Difference between the civil and criminal actions is the burden of proof Unfair Competition Dilution – Lanham Act Breach of Terms of Service GA Computer Systems Protection Act Unjust Enrichment CAN SPAM EXAM REVI EW ♦ Will cover those things talked about in class ♦ 3 essay questions, closed book ♦ Spot issues ♦ Questions may indicate whether they have differing weight