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Copyright: Ebay ordered to identify alleged infringers

Posted by on 11:19 am in Articles, Cases, News | Comments Off on Copyright: Ebay ordered to identify alleged infringers

Copyright: Ebay ordered to identify alleged infringers

The Digital Millennium Copyright Act (“DMCA”) provides a statutory scheme for copyright holders to notify internet service providers of the existence of allegedly copyrighted material on their servers. A “safe harbor” is provided to service providers who remove or disable access to allegedly infringing material following receipt of a DMCA notice. The copyright holder may wish to pursue the parties who placed the material with the service provider so the DMCA also provides that a copyright owner or a person authorized to act on the owner’s behalf may request the clerk of any United States district court to issue a subpoena to a service provider for identification of an alleged infringer. Barry Rosen obtained a subpoena based on approximately 92 such notifications emailed to eBay regarding allegedly infringing content posted by 61 eBay usernames for dates ranging from January 5, 2012, to March 9, 2015.  The  subpoena sought information regarding the persons using the 61 identified eBay usernames. eBay challenged the subpoena using a motion to quash filed with the court.  According to eBay, upon receipt of each notification, eBay investigated the identified listings and disabled access to them. By the time the subpoena was received by eBay on March 27, 2015, eBay asserts that no relevant infringing material pertaining to those notifications was available. Thus,  eBay asserted that the subpoena was invalid because at the time it was obtained and served, access to the allegedly infringing materials had been removed. Relying on Section 512(h)(5 ) of the DMCA the court found  that a DMCA subpoena is valid whether served simultaneously with a satisfactory DMCA notification or after a satisfactory DMCA notification is served. A satisfactory DMCA notification requires that the allegedly infringing material is present at the time the notification is served. The subpoena is valid and enforceable regardless of whether the provider acts in response to the notification. By responding to the takedown notice, the provider gains the safe harbor. The provider’s safe harbor does not shield the alleged infringer. After considering the scope of the information requested in the subpoena, the court decided that eBay should produce information sufficient to identify the alleged infringers and ordered eBay to produce to Rosen the name, last known address, last know telephone number, any electronic mail addresses associated with each account from January 1, 2012, to the date of the subpoena and any logs of Internet Protocol addresses used to access the subject accounts from January 1, 2012, to the date of the subpoena. The take away to ISP’s and others in the position of eBay is that you can’t protect your customers and comply with the law too.  If you have the information requested by a party like Russo, you will have to divulge...

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Design Patent: Apple bites Samsung

Posted by on 10:33 am in Articles, Cases | Comments Off on Design Patent: Apple bites Samsung

Design Patent: Apple bites Samsung

After a jury in the U.S. District Court for the Northern District of California found that Samsung infringed Apple’s design and utility patents  and awarded Apple  $$290,456,793 in damages, Samsung appealed to the United States Court of Appeals for the Federal Circuit. The original damages award had been $639,403,248, but a retrial at the district court level reduced the award. A design patent is infringed if an ordinary observer would have been deceived: “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.” An infringement analysis must include a comparison of the asserted design against the prior art: “[i]f the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing.”  However, for design patent infringement actual deception is not required. The design patents on appeal at the Federal Circuit claim certain design elements embodied in the iPhone. The D′677 patent focuses on design elements on the front face of the iPhone. The D′087 patent claims another set of design features that extend to the bezel of the iPhone. The D′305 patent claims “the ornamental design for a graphical user interface for a display screen or portion thereof”.  In its appeal Samsung argued that the district court legally erred in allowing the jury to award as damages Samsung’s entire profits on its infringing smartphones With regard to the design patents, Samsung argued that the design patent damages  should have been limited to the profit attributable to the infringement because of “basic causation principles contending that “Apple failed to establish that infringement of its limited design patents … caused any Samsung sales or profits.”  Samsung further contended that consumers chose Samsung based on a host of other factors. Section 289 of the Patent Law  provides: “Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.” The Court of Appeals for the Federal Circuit ruled :”The clear statutory language prevents us from adopting a “causation” rule as Samsung urges….The innards of Samsung’s smartphones were not sold separately from their shells as distinct articles of manufacture to ordinary purchasers. We thus do not agree with Samsung that these Second Circuit cases required the district court to limit the damages for design patent infringement in this case.… We therefore affirm the damages awarded for design patent infringements.” This case teaches that having a new and non-obvious ornamental design for a product whose main value lies in its functional aspects can be extremely important.  The functional aspects of the I-phone may have been protected...

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False Connection or Royal Treatment

Posted by on 4:57 pm in Cases, News | Comments Off on False Connection or Royal Treatment

False Connection or Royal Treatment

The false connection prong of the United States Trademark Law can prevent registration of a mark even if that mark is not actually being used by the entity to whom it seems to refer. A New York business filed an intent to use application to register the trademark PRINCESS KATE for a number of goods generally described as: cosmetics; watches and jewelry; pouches and bags; bedding; and Apparel. The application contained a statement that “the name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular living individual.” The Trademark Examining Attorney refused to register Applicant’s mark on the ground that PRINCESS KATE falsely suggests a connection with Catherine, Duchess of Cambridge, also known as Kate Middleton. The Trademark Examining Attorney also refused to register Applicant’s mark on the ground that PRINCESS KATE consists of a name identifying a particular living individual whose written consent to register the mark is not of record. On appeal, the Trademark Trial and Appeal Board stated that the analysis of the false connection question requires consideration of (1) Whether Applicant’s mark PRINCESS KATE is the same as or a close approximation of Kate Middleton’s previously used name or identity; (2) Whether Applicant’s mark PRINCESS KATE would be recognized as such by purchasers, in that the mark points uniquely and unmistakably to Kate Middleton; (3) Whether Kate Middleton is not connected with the goods that will be sold by Applicant under its mark; and (4) Whether Kate Middleton’s name or identity is of sufficient fame or reputation that when Applicant’s mark is used on Applicant’s goods, a connection with Kate Middleton would be presumed. Answering the first of these the Board drew on precedent to reason, “The right of publicity has developed to protect the commercial interest of celebrities in their identities. Under this right, the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity. If the celebrity’s identity is commercially exploited without the consent of the celebrity, there has been an invasion of his/her right, regardless of whether his/her “name or likeness” is used.” The Board emphasized “the first prong of the false suggestion of a connection test inquires into whether applicant’s mark is the same as or a close approximation of the name or identity of a particular person other than the applicant, whether or not the person actually “used” the name or identity himself or herself.” The remaining factors fell into place in part by virtue of the media usage of Princess Kate to identify the Duchess of Cambridge and by the fact that she was not connected with the trademark applicant or goods. The Board affirmed the refusal to register the mark on this basis stating: “(i) Applicant’s proposed mark PRINCESS KATE is a close approximation of Kate Middleton’s identity, (ii) the PRINCESS KATE mark points uniquely and unmistakably to Kate Middleton, (iii) Kate Middleton has no actual or commercial connection with Applicant, and (iv) Kate Middleton’s identity is of sufficient fame or reputation that if Applicant’s mark PRINCESS KATE were used in connection with the goods listed in the application, the relevant consuming public would presume a connection with Kate Middleton. Therefore, we find that Applicant’s mark PRINCESS KATE for the goods listed in the application falsely suggests a connection...

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Browsewrap Trumps Copyright Transfer

Posted by on 4:06 pm in Cases, News | Comments Off on Browsewrap Trumps Copyright Transfer

Browsewrap Trumps Copyright Transfer

Ownership of copyrights in creative works are transferred by written documents.  However, a court recently ruled that a “browsewrap” agreement was sufficient to transfer a copyright in a work posted on a webpage by an angry consumer.  There are two types of contracts formed online: “clickwrap” and “browsewrap” agreements. In a clickwrap agreement, users must select a check box or radio button to indicate that they agree to the website’s terms and conditions. In contrast, browsewrap agreements do “not require the user to manifest assent to the terms and conditions expressly. A party instead gives his assent simply by using the website.” Clickwrap agreements are generally upheld because they require affirmative action on the part of the user. Because no affirmative action is required by a website user to agree to the terms of a browsewrap contract other than his or her use of the website, the determination of the validity of a browsewrap contract depends on whether the user has actual or constructive notice of a website’s terms and conditions. Xcentric operates a website called the RipoffReport.com (“ROR”) which is an interactive website providing an online consumer advocacy forum allowing users to post free complaints, called “reports,” about companies and individuals whom they feel have wronged them in some manner. After providing his or her name, address, posting pseudonym, email address and telephone number, the user provides details regarding the company or individual at issue and writes his or her report. Then the user encounters a screen that says “Submit your Report” and “File a Report,” and  a box titled “Terms and Conditions”. One of the terms, which is not visible unless a user employs the scroll bar, provides that “[b]y posting information or content to any public area of [the website], you automatically grant and you represent and warrant that you have the right to grant to Xcentric an irrevocable, perpetual, fully paid, worldwide exclusive license to use, copy, perform, display and distribute such information and content ….”  Next an associated check box is text that provides, in relevant part: “By posting this report/rebuttal, I attest this report is valid. I am giving RipOff Report irrevocable rights to post it on the website. I acknowledge that once I post my report, it will not be removed, even at my request.” A user posted two reports alleging that an attorney engaged in improper conduct in his professional and personal life.  The attorney sued the user in state court  for libel and interference with prospective contractual relations, obtained orders appointing himself attorney in fact for the user and purporting to transfer to the attorney the copyright in the reports which he then assigned to the plaintiff.  The attorney then sued Xcentric in the US District Court for Massachusetts and ownership of the copyrights became an issue. There was no dispute that the user did not read the terms and conditions and the court found that because the terms accompanying the check box do not state that “I agree to the terms and conditions” or other such language indicating express accord, by checking the box, the user agreed only to the terms accompanying the check box. This means that the terms and conditions, including the grant of an exclusive license, which is paramount to a copyright transfer, constitute a browsewrap agreement. The court concluded that a reasonably prudent user was on...

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Copyright Infringement: A Bad Rap on Social Media

Posted by on 11:07 am in Articles, Cases, News | Comments Off on Copyright Infringement: A Bad Rap on Social Media

Copyright Infringement:  A Bad Rap on Social Media

A recent decision by a Federal District Court shows the danger of copyright infringement in the creation of social media as well as other aspects of advertising.  The court found the following scenario to be factual: As part of its marketing efforts, Monster Energy organizes and sponsors an annual event called the “Ruckus in the Rockies,” namely a snowboarding competition and an after party.  On May 5, 2012, Monster held the second annual Ruckus in the Rockies at Lake Louise in Alberta, Canada.  Monster booked various disc jockeys to perform at the after party, including “ZTrip.”   ZTrip had entered into an agreement with the Beastie Boys to create a remix of some of their songs to promote the group’s then upcoming album.  ZTrip was authorized to offer the remix for free as a promotional item. However, ZTrip did not have the right to sell or license the remix, or to authorize third parties to use it. At the 2012 after party, ZTrip and other DJs played music by the Beastie Boys.  After the Ruckus, Monster’s regional marketing director worked with a videographer to create a recap video with highlights from the event to promote the Monster brand.  The videographer was instructed to use excerpts from ZTrip’s Megamix of Beastie Boys songs. Monster never obtained, or attempted to obtain, permission from the Beastie Boys or their management to use the Beastie Boys’ music in the video.  At trial the marketing director testified that he believed that ZTrip, by his words and conduct, had authorized Phillips to use the Megamix, including the underlying Beastie Boys’ songs, in Monster’s promotional video. Monster’s promotional video is just over four minutes long and consists of footage from the 2012 Ruckus, including a road trip to Lake Louise, the snowboarding competition, and the after party. The video’s soundtrack consists of excerpts from five Beastie Boys songs which fill all but 32 seconds of the video.  On May 9, 2012, Monster posted the video on its website, YouTube channel, and Facebook page. Monster also sent press releases to various snowboarding magazines. A few weeks later, Monster received a letter from counsel for the Beastie Boys, which stated that Monster did not have permission to use the Beastie Boys’ music in the video and Monster immediately removed the video from its YouTube channel.  Monster later edited the video, to replace the music and then reposted it. Monster conceded liability as to the claims of copyright infringement, so, trial focused on damages.  A musical composition can be the subject of a copyright and a sound recording of that composition can be the subject of a separate copyright. When a single entity owns the copyright to a musical composition and the copyright to a sound recording, the Copyright Act treats those two copyrights as one and permits only one award of statutory damages.  But when distinct entities hold the composition and sound recording copyrights to a single song, even if those entities are related, each entity is entitled to an award of statutory damages. Brooklyn Dust owned a musical composition copyright in each of the five songs.  The jury awarded $120,000 in statutory damages for each of the infringement of the musical composition copyrights and the sound recording copyrights, for a total of $1.2 million. The jury found, and...

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Use Mark in Commerce or Don’t Bank on It.

Posted by on 8:34 am in Cases, News | Comments Off on Use Mark in Commerce or Don’t Bank on It.

Use Mark in Commerce or Don’t Bank on It.

Although a Federal Trademark Registration affords presumption of ownership of the registered mark, the law requires that the Registrant actually use the mark to maintain ownership of the registration.  The nature of that ownership fell short in a recent case in which a large pension fund headquartered in Ontario, Canada” and which manages approximately US$65 billion in assets, including  approximately US$16 billion in property located in the United States for OMERS with approximately 1,300 employees located in Canada, the United States and elsewhere was found not to have used its registered TREASURYNET mark in commerce and was deemed to have abandoned the mark. The pension fund  owns an intranet website by which  the fund’s employees may access an informational database identified as “TreasuryNet.” The database contains financial information concerning the various properties owned or co-owned by OMERS and/or managed by the fund.  Third parties cannot directly access the information in the company’s TREASURYNET database; rather, only the fund’s employees have access to the intranet site and the TREASURYNET database. In order for third parties to access any information from the TREASURYNET database, they would have to speak to one of the fund’s property managers and they would  get a report that’s generated based on TreasuryNet.   There was no evidence that TREASURYNET was even identified or mentioned on respondent’s external website prior to end of 2010, or that third parties regard the fund’s use of TREASURYNET as a service mark used in connection with the recited services. City National Bank filed a petition in the United States Trademark Office  for cancellation of the TRESUARYNET trademark registration owned by OPGI Management GP Inc./Gestion OPGI Inc.  on grounds of lack of bona fide intent to use mark in commerce, and abandonment.  The Trademark Trial and Appeal Board addressed the nature of the use of the mark by the pension fund and the requirements for “use in commerce” necessary to maintain a federal trademark registration. The Board noted that the law requires “[T]he bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. … a mark shall be deemed to be in use in commerce— … on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”  The Board then looked at the Trademark Manual of Examining Procedure and the case law on services and noted: “The current, relevant section of the TMEP elaborates: To be a service, an activity must be primarily for the benefit of someone other than the applicant…. [A] company that sets up a personnel department to employ workers for itself is merely facilitating the conduct of its own business, while a company whose business is to recruit and place workers for other companies is performing employment agency services.   The controlling question is who primarily benefits from the activity for which registration [of the mark] is sought…. if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit. After finding that the pension fund’s use of TREASURYNET was only for the internal use of its...

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Ninth Circuit Court of Appeals Dunks BitTorrent Firm in Copyright Case

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Ninth Circuit Court of Appeals Dunks BitTorrent Firm in Copyright Case

In a case which the Ninth Circuit characterized as ” concerning the application of established intellectual property concepts to new technologies”  the court affirmed a lower court’s ruling of copyright infringement based on  inducement of  third parties to download infringing copies of various major  studios’ copyrighted works. (Columbia Pictures Industries Inc. v. Fung, 710 F3d 1020 (CA9 2013)) Although the defendant did not create the bitTorrent system of file sharing, the lower court and appeals court agreed that defendant’s use of the system infringed the studios’ copyrights. Three of Defendant’s websites are torrent sites which collect and organize torrent files and permit users to browse in and search their collections. Searching is done via keyword; users can also browse by category (movies, television shows, music, etc As torrent files are added, one of the accued websites used an automated process that attempts to place the torrent file in the appropriate category by looking for certain keywords. Torrent files with the keywords “DVD” and “cam,” for instance—the latter of which refers to a recording of a movie made with a handheld camcorder—would be categorized as movies. The website went a step beyond merely collecting and organizing torrent files. Each time a torrent file is added, the website automatically modifies the torrent file by adding additional backup trackers to it. That way, if the primary tracker is down, the users’ BitTorrent client program will contact the backup trackers, making it more likely that the user will be successful in downloading the content sought. In other words, the website alters the torrent files it hosts, making them more reliable than when they are uploaded to the site.  Two ofher of Defendant’s websites, in addition to being torrent sites, run associated trackers. Every torrent file available on these websites is tracked by the trackers. The websites both have continually-updated lists of, inter alia, the “Top 20 TV Shows,” the “Top 20 Movies,” and the “Top 20 Most Active Torrents.” These rankings are based on the number of seeders and leechers for each particular torrent file, as measured by the trackers. The first website also hosts an electronic message board, or “forum,” where users can post comments, queries, and the like. In addition to posting to the forum the Defendant also had some role in moderating posts to the forum In deciding the appeal, the 9th Circuit looked back to Supreme Court precedent of treatment of technological advancement from the 1980’s to date.  Looking at the case involving the Betamax video tape recorder, the 9th Circuit noted that the Supreme Court had held that ” the sale of copying equipment, like the sale of other articles of commerce, does not constitute contributory infringement if the product is widely used for legitimate, unobjectionable purposes. Indeed, it need merely be capable of substantial non-infringing uses.”  The 9th Circuit then noted the evolution of the inducement law in the Grokster case in which the Supreme Court found:  “Thus, where evidence goes beyond a product’s characteristics or the knowledge that it may be put to infringing uses, and shows statements or actions directed to promoting infringement, Sony’s staple-article rule will not preclude liability ”and  “one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts...

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Monsanto Plows Under Bean Farmer

Posted by on 7:56 am in Cases, News | Comments Off on Monsanto Plows Under Bean Farmer

Monsanto Plows Under Bean Farmer

A long running battle between agricultural giant Monsanto and a soybean farmer ended in the United States Supreme Court on May 13, 2013.  Monsanto invented a genetic modification that enables soybean plants to survive exposure to Roundup and other herbicides containing the same active ingredient. Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosate-based herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration. Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who agree to a special licensing agreement that permits a grower to plant the purchased seeds in one (and only one) season. Under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose. Vernon Bowman is a farmer in Indiana who purchased Roundup Ready soybean seed each year, from a company affiliated with Monsanto, for his first crop of the season. In accord with the agreement just described, he used all of that seed for planting, and sold his entire crop to a grain elevator.  For  his second crop of each season, Bowman went to a grain elevator where he purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields.  Bowman anticipated that many of the purchased soybeans would contain Monsanto’s patented technology. When he applied a Roundup type herbicide to his fields,  a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way. Each year, that is, he planted saved seed from the year before (sometimes adding more soybeans bought from the grain elevator), sprayed his fields with glyphosate to kill weeds and any non-resistant soybean plants, and produced a new crop of glyphosate-resistant—i.e., Roundup Ready—soybeans. Monsanto sued Bowman for infringing its patents on Roundup Ready seed. Bowman raised patent exhaustion as a defense, arguing that Monsanto could not control his use of the soybeans because they were the subject of a prior authorized sale from local farmers to the grain elevator.  The lower Federal Courts agreed with Monsanto and now the US Supreme Court has also agreed. The Court explained that the doctrine of patent exhaustion limits a patentee’s right to control what others can do with an article embodying or containing an invention such that the initial authorized sale of a patented item terminates all patent rights to that item and by exhausting the patentee’s monopoly in that item, the sale confers on the purchaser, or any subsequent owner, the right to use or sell the item  as he sees fit. The Patent Act grants a patentee the “right to exclude others from making, using, offering for sale, or selling the invention.” Consistent with that rationale, the doctrine restricts a patentee’s rights only as to the “particular article” sold, and leaves untouched the patentee’s ability to prevent a buyer from making new copies of the patented item. That is because...

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