Technically Legal

Remember Mr. and Mrs. Boring?  The Pennsylvanian couple making headlines? … no?

In 2008, they found out that Google Street View allowed users to see into their property from a private drive next to their home.  In response, they sued Google for invasion of privacy and trespass.  This week, they’re back in the news again.

For the last two and half years, the case has crawled through the legal system.  In February 2009, the District Court for the Western District of Pennsylvania granted a 12(b)(6) motion to dismiss  in favor of Google (read the order here), for failure to state a claim.  The Boring’s invasion of privacy claims were rather dubious from the start.  A plaintiff generally needs to establish that the invasive act caused “mental shame, suffering, or humiliation” that a person of “ordinary sensibilities” would have suffered in the same instance.  Without this, a mere photograph of a residential structure, even when taken from private property, without any visible persons, is not likely to pass the threshold motion to dismiss stage of a lawsuit.

The Borings appealed the dismissal to the 3rd Circuit, which partially reversed the District Court’s ruling in February 2010.  However, the only claim reversed was the trespass claim.  Common law trespass is a tort that governs interference with rights associated with real property,  personal property, and certain personal rights.  The Borings’ best claim here is that the Google car with the mounted camera committed trespass to land when it snapped the photographs.  In fact, the photographs appear to offer strong evidence in support of this theory since it would have been difficult for the photographs to have been taken by the vehicle from any area other than the private drive.  As I noted last February at the Citizen Media Law Blog, trespass to land claims aren’t much of a risk to the longevity of Google Street View, so long as Google cars aren’t driving across everyone’s front yard.

Trespass to land is simple to understand; it only requires that a person voluntarily enter the property of another without consent.  But, just because the Borings might have a “good case” on a trespass to land theory, it doesn’t mean they are entitled to millions of dollars.  The trespass by the Google car didn’t appear to have caused any actual harm to the property, structures or items on the property, or persons.  Also, since the Borings couldn’t establish that they any suffered mental shame, suffering, and humiliation, the fact that the Google car may have been trespassing on private property while capturing images doesn’t revive the invasion of privacy claims.

In these cases, if you really feel strongly about the “principle of the matter” as the Borings seem to, it’s possible to be awarded “nominal damages,” which is akin to saying: “yes, you’re technically correct, but you haven’t suffered any harm worthy of compensation, so here’s a token for the violation of your right.”  Considering how expensive it is to obtain a lawyer, file a lawsuit, and pay the associated costs of the filing the suit, it’s not very surprising that you don’t often hear about nominal damages being awarded these days.

One last thing.  The award of $1 in this case was actually a “consent judgment” which is procedurally distinct from the damage awards issued by juries that you probably hear about on the news.  Consent judgments are usually negotiated settlements between the parties that are adopted by the judge and recorded as part of the case.  One purpose of doing this is to bind the parties to the judgment and invoke res judicata on the claims — which prevents the Borings from suing Google again with identical legal claims based on the same facts.

On that note … I should get back to scanning for more sidewalk baby births caught by Google cameras while I finish lunch.  Happy Friday.

Comments Off Posted in: Commentary, Links on December 3, 2010

Apple gets a couple of scary design patents, AT&T thinks wireless is different, and Oracle sues the Java out of Google.

Please download the podcast or subscribe to the feed.  Feel free to e-mail us with comments and suggestions.

Apple Design Patents

Article (via TUAW)

Patent #s: D621848, D621849

AT&T on Net Neutrality

AT&T’s Statement

Oracle (d/b/a Sun) Sues Google Over Java (N.D.CA, No. 1418106)

Article (via Tech Crunch)

Complaint

Ben and David Lu!! are MIA this week.

2^6

Comments Off Posted in: Podcast on August 23, 2010

After just discussing the Google/China spat on our last podcast, this story emerged today.

According to several media stories, Google search results were unavailable on their Chinese website as of today.  Apparently, users could access the Google search page, but were unable to yield results when attempting to search.  This news comes just a week after Google began redirecting their http://google.cn site to their Hong Kong servers at http://google.hk where censorship restrictions are more lax.

Some reports were that China had begun blocking the GOOG through the Great Firewall.  However, it now appears that an internalized error was the cause of the problem.  Somehow an errant text string was inserting itself into the URL of search result pages and caused the search engine to display an error.

For the most current info on the effects of the larger dispute between Google and China dispute, Google has a website which is tracking the status of their online services in mainland China: http://www.google.com/prc/report.html

Comments Off Posted in: Links on March 30, 2010

Yesterday, we recorded a special edition of our podcast and devoted approximately 2/3 of the show to discussing the Viacom v. YouTube/Google arguments which were presented in their respective cross-motions for summary judgment. One of the most important pieces of the litigation is whether the DMCA section 512(c) safeharbor will apply to Google and whether Google might be secondarily liable for copyright infringement.  I felt it would be helpful to provide a quick and dirty guide to some of the liability principles at stake in the case.

Secondary liability, or “indirect liability,” attaches liability to certain intermediary entities and other persons who are not participating in an infringing act, but are somehow contributing, profiting, or inducing another person’s act of infringement. For example, this might apply to a person who owns and operates a website for the sole purpose of facilitating copyright infringement of song recordings–that operator is not downloading or uploading the sound recordings herself, and therefore is not directly infringing any copyrights, but is providing a medium for others to participate in infringing activities.  For you legal history afficionados, secondary liability dates has been recognized in various forms by courts at least as far back as the late 19th century (see e.g., Fishel v. Lueckel, 53 F. 499 (S.D.N.Y. 1892) (recognizing liability for profiting from infringement as a joint tortfeasor)).  Despite this, secondary liability has still not been codified in the Copyright Act.  Consequently, across federal jurisdictions the standards of secondary liability vary a little from court-to-court.  Nonetheless, secondary liability can be parsed into two categories: (1) contributory liability and (2) vicarious liability.

Scholars and practitioners devote hundreds of pages to discussing contributory and vicarious infringement.  I’m not here to make your eyes bleed.  So, please consider the following points a very broad overview:

Contributory Infringement: When a person, who has knowledge of a direct instance of infringement (e.g., another person uploading a unauthorized video), materially contributes to, *or*, actively induces the infringing conduct.

By a Materially Contribution: The contribution generally needs to add something to the original act of infringement.  For example, some courts have ruled that adding either software, hardware, and webspace, to provide a conduit to unlawfully exchange copyrighted works is enough.  In another case, the Ninth Circuit held the operators of a swap meet where independent vendors sold unauthorized copies of copyrighted works was sufficient to survive a motion to dismiss. Note, however, that under a contributory liability theory, a defendant must have knowledge that an act of infringement is occurring to be liable.

Or, by Inducement:  In 2005, the Supreme Court held in MGM v. Grokster that a person is liable for contributory infringement when she “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.”

Vicarious Infringement: When a person has the right and ability to supervise an infringing activity and derives a direct financial interest from the infringing activity.  Some courts have interpreted that this does not necessarily mean earned revenue, merely deriving some form of financial interest or financial incentives for tolerating unlawful from the infringing activity may suffice.   For example, check out the Napster litigation from 2001: A&M v. Napster, 239 F.3d 1004 (9th Cir. 2001).

As a final note, it’s important to remember that both the contributory and vicarious liability theories require there to be an original act of direct infringement.  In other words, there has to be another individual who violates the Copyright Act by directly misappropriating the exclusive rights of a copyright owner.

Enter Google, YouTube, and Viacom. Among the most interesting factoids which have surfaced from the summary judgment motions in the Viacom v. YouTube case, is that prior to Google’s acquisition, the founders and executives at YouTube were aware that the website was being used to upload unauthorized copyrighted content. Viacom’s motion quotes email excerpts from the executives who discuss the importance of allowing users to upload arguably infringing content because it was driving up website traffic, making the site an attractive acquisition target based on traffic metrics. Along one line of reasoning, the executives were inducing users to upload infringing content and may have actually participated in some of this. This would be the “smoking gun” argument. See, once YouTube was acquired by Google, Google has arguably assumed liability from actions which took place before the closing date–this is a very common occurrence in any corporate acquisition, but is often subject to the language in the agreement (buyer and seller can negotiate for certain terms and indemnity of liabilities).

What remains unclear, to some extent, is the amount of knowledge needed by the operators to impute secondary liability beyond the DMCA safeharbor. For instance, just because the YouTube executives knew that some videos were likely to have been uploaded without authorization that doesn’t mean they *actually* knew they were unauthorized. Consider this theory plausible deniability. Unless the executives took the time to check with the actual copyright owners, or unless they received a takedown notice or cease and desist notice, they arguably didn’t know with certainty that a particular upload was expressly unauthorized.

Here’s where the DMCA section 512 safeharbor comes into play.  In the past on our podcast and blog (here’s a more thorough overview I wrote), we’ve beaten to death the 17 U.S.C. 512(c) language, but it’s helpful to take a fresh look to see how the precise wording of the statute comes into play:

(c) Information Residing on Systems or Networks At Direction of Users.—

(1) In general.— A service provider shall not be liable for monetary relief, or, except as provided in subsection (j), for injunctive or other equitable relief, 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 service provider, if the service provider—

(A)

(i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing;

(ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or

(iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material;

(B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the service provider has the right and ability to control such activity; and

(C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.

Note 512(c)(1)(A)(i)-(iii), in bold above.  That’s the statutory language concerning the level of knowledge that potentially implicates a service provider with infringement by a user.   Of particular interest to me is (ii), which states that if a service provider is aware of “facts or circumstances from which infringing activity is apparent,” the service provider cannot take advantage of the safehabor.   Depending on how the court applies this language, Google might find themselves in hot water based on the email exchanges of the previous YouTube executives.   However, it’s not black and white.  Just last year, we saw the UMG v. Veoh case, in which a California Federal Court ruled that a “blanket notice” for the purposes of DMCA takedowns was insufficient to shift the burden of copyright policing to Veoh.  This is important, because if the Viacom and YouTube court decides to follow this reasoning,  it gives YouTube some of the aforementioned plausible deniability– if there were no notices specifically indicating the exact uploads which were infringing, it might be insufficient to impute actual knowledge on YouTube.

Google has separately argued in their motion that Viacom participated in stealth marketing tactics which would have made it very difficult to determine whether an upload was in fact authorized by Viacom but uploaded by another person.  Additionally, Google points to evidence that Viacom had disparate internal policies under which they allowed certain unauthorized videos to remain on YouTube, without flagging or sending any notices to YouTube.  This obviously would make it much more difficult for the YouTube executives to independently determine an upload to be infringing without notice.  You simply can’t act as a filter if you don’t actually know who is responsible for a particular file.

I do think this is a factually fascinating case and it’s too close to speculate what the court is likely to do.  There’s also more detail worthy of  discussion on this case that would make this post pages and pages long.  Check out the plethora of commentary from the legal blogosphere  for additional takes on this case.  It’s also worth listening to our show (which will post tonight, around 12AM EST) and hearing myself, Ben, and Dominik debate the merits from different points of view.  We dove into much deeper detail on the specifics.

Other Bloggers’ takes:

Ben Sheffner (Copyrights & Campaigns)

Eric Goldman (Technology Law and Marketing)

EFF (Deeplinks)

Mike Masnick (TechDirt)

Nate Anderson (Ars Technica)

Comments Off Posted in: Analysis, Commentary on March 22, 2010

On yesterday’s Podcast, we discussed how Rescuecom voluntarily withdrew their trademark infringement suit against Google’s Adwords program. Last week a similar suit against Google, Stratton Faxxon v. Google, was dismissed out of a Connecticut Superior Court. According to Eric Goldman, there have been approximately twelve similar lawsuits to date (primarily against Google) for the sale of trademarked phrases in the Adwords program.

Unlike Rescuecom, Stratton Faxon didn’t claim trademark infringement in this suit. Instead, their claims alleged interference of business relations and unfair competition. The details are somewhat unclear, and I don’t have access to the actual filings, but it appears that Google filed a “Motion for Judgment” which was granted last week. No order or opinion stating the reasoning for the dismissed seems to be publicly available. However, because Stratton Faxon did not sue on a theory of trademark infringement, they are not precluded from refiling another suit in Federal Court on a trademark theory.

The theory behind the bulk of these suits is fairly novel. To summarize, trademark owners are suing Google for selling their registered trademarks to competitors as search terms. After competitor successfully “buys” (or “bids” might be more appropriate) for a search term that consists of a registered trademark of another person, the competitor’s advertisement appears in the sponsored links section on the search Google search result page. This does not affect the organic results where you would presumably see any links related to the trademark owner. Rather, it only affects what appears as an advertisement which is clearly labeled “sponsored link.” The beef these trademark owners seem to have is that they don’t want any links to competitors, sponsored or not, appearing next to their organic search engine results. Unfortunately, not all uses of a trademarked phrase are protected by the law. See e.g., Nominative fair use.

As you might imagine, these suits have been challenged by Google and other defendants on a number of grounds. In an ordinary trademark infringement case, a plaintiff needs to establish that the defendant, (1) used his identical mark, or one that is confusingly similar, (2) in commerce, (3) in connection with the sale of goods or services, (4) and, that the use was causes a likelihood of confusion to the consumer. The two biggest points of contention that defendants have argued is that selling a trademarked phrase is not “in commerce” and that there is no “likelihood of confusion” that results from the sale of the mark. Before Rescuecom withdrew from litigation, the Second Circuit opined that the sale of trademarks in the Adwords program was enough to satisfy the “in commerce” requirement. As far as I know, no court has resolved the the “likelihood of confusion” issue on the merits. Nevertheless, it smells like an awfully tenuous argument given the layout and separation of sponsored links and organic search results.

Hat tip goes to Eric Goldman for his outstanding coverage on Google Adwords litigation.

Comments Off Posted in: Analysis on March 17, 2010

Several websites (see here, here and here)  have recently commented on the Google patent search portal, which was granted a patent (D599,372) this last Tuesday.  The application had been pending since 2004 and claims ownership over the design elements of the search page.  As with most Google search portals, the Google Patents page has 28 words or less—total.  Aside from  minimalist design, the patent only lays claim to its iconic  query field along with the two buttons “Search” and “I’m Feeling Lucky” as well as the typical hyperlinked text on a Google page.  In fact, the design claimed is the 2004 Google Patent page, but it differs little from its current state today.  Also, the Google logo is specifically disclaimed from the design.

What is most notable about this patent is not the audacity of the Mountainview company to claim these very basic portions of their webpage.  It’s that the vast majority of patents that are issued today are “utility patents,” which claim inventive ownership to products, processes, machines, compositions of matter, and manufacture.  Instead, this is a design patent, not a utility patent.

Design patents differ significantly from their cousins in the patent world.  As noted above, the utility patent covers a range of inventions that are encompassed in Section 101 under the Patent Act.  A utility patent protects the functional features of an invention, including use of the invention and method of functionality.  Design patents can be found under Section 171 of the Act and are described as “any new, original, and ornamental design for an article of manufacture.”  The most significant difference is that a design patent will only protect the ornamental features of a design, not any of its functional aspects.  Note, however, that a single invention can be the subject of both separate design and utility patents.

Unlike utility patents—which can have several claims—a design patent has only one claim: the drawings.  The protection afford focuses on the “visual appearance as a whole” claimed within the design patent with emphasis on “the visual impression it creates.” See Elmer v. ICC Fabricating, Inc. 67 F.3d 1571, 1577 (Fed. Cir. 1995), Durling v. Spectrum Furniture Co., 191 F.3d 100, 104-05 (Fed. Cir. 1996).  If an owner of a design patent were to enforce her rights via an infringement lawsuit, the court generally applies two tests to compare the two designs: the ordinary observer test and the point of novelty test.  In order to succeed, a plaintiff bears the burden of showing that both tests are satisfied.

The Supreme Court has explained the novelty test as the following:  “[I]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.”  Gorham v. White, 81 U.S. (14 Wall.) 511, 528 (1871).  The more modern point of novelty test requires that the “accused design appropriates the novelty which distinguishes the patented design from the prior art.”  See Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984).

Typically,  it is challenging to win design patent infringement cases because of the difficulty to meet the above tests.  The designs must be very similar to one another.  Hence, this is why people shouldn’t jump to the conclusion that search engines with similar interfaces are in immediate trouble just because the Google patent was issued this week.

Design patents do play an important role in the intellectual property world.  They pick up where copyright law might leave off.  Since copyright can be used to cover certain design features (any original expression fixed in a tangible medium) it would be a likely source of protection for elements on webpages.   However, copyright does not protect the “functional aspects” of a work.  Since certain elements on a webpage are arguably functional (think nearly any of the code or click feature design), there would be parts of a search engine interface that are not protected.  Design patents allow for the ornamental features of these functional designs to be protected.  So, maybe it’s not such a surprise, nor audacious, that Google opted to protect these elements by way of patent.

1 Comment Posted in: Commentary on September 4, 2009

In 2004, Rescuecom, a computer services franchise business which offers repair, consulting, networking, and various internet services, sued Google for selling its trademark as part of the Google AdWords program.  The company owns the domain Rescuecom.com, where it conducts a substantial amount of business.  Rescuecom registered the trademark “Rescuecom” with the USPTO in 1998.  The AdWords program works by having potential advertisers bid on keyword search terms.  When an internet user enters one of these search terms into Google’s search engine query, a sponsored link to the advertiser will appear at the top or to the right of the results list.  Essentially, an advertiser can bid for any search term in the AdWords program.  Additionally, Google recommends search terms based on search promixity to advertisers through it’s Keyword Suggestion Tool.    

Some competitors to Rescuecom purchased “rescuecom” as a keyword search term to display sponsored  links.  Google also recommended the “rescuecom” mark to competitors through the Keyword Suggestion Tool.  Rescuecom filed suit in New York challenging Google’s right to sell Rescuecom’s registered trademarks to competitors as search terms. The key principle at stake is whether a competitor should be allowed to purchase a search term, otherwise protected from certain uses under trademark law, for the purpose of triggering the display of their own advertisements on the Google search result page.  Until the Second Circuit’s decision, most courts have dismissed such lawsuits.

Before the District Court (N.D.N.Y.), Google filed, and was subsequently granted, a motion to dismiss for failure to state a claim (FRCP 12(b)(6)). The essence of this ruling was based on a precedent from a previous case, 1-800 Contacts v. WhenU.com, 414 F.3d 400 (2d Cir. 2005), involving pop-up advertising software which displays advertisements based on a user’s entry of text strings into an internet browser.  In the case, the alleged infringer’s software was triggering pop-up ads featuring competitively priced products when a computer user visiting the 1-800 Contacts website. The court ruled that the use of the trademark terms were “internal” to the alleged infringers advertising software, and therefore not a use in commerce. This rationale stems from the basic tenants of trademark law—to establish infringement under the Lanham Act (15 U.S.C. § 1114),  a plaintiff must prove an infringer: (1) used the plaintiff’s valid trademark, or one that is confusingly similar, (2) in commerce, (3) in connection with the offering of goods or services.  Google successfully argued in the motion to dismiss that the WhenU.com decision compelled the conclusion that the use of keyword search terms was not a use “in commerce” as required under the Lanham Act, and therefore the elements for an infringement cause of action had not been met.

Rescuecom appealed the N.D.N.Y.’s dismissal of their case to the Second Circuit, which reversed the District Court. The decision issued by the Second Circuit on April 3, 2009, distinguished WhenU.com case, and held that the use of trademarked terms could be a “use in commerce” for the purpose of trademark infringement. The Second Circuit explained that the WhenU.com case relied heavily on the fact that the defendant’s actual use of the trademarks at issue were not displayed to the computer user and the use of the trademarks were limited within the software. In contrast, the Second Circuit declared, “regardless of whether Google’s use of Rescuecom’s mark in its internal search algorithm could constitute an actionable trademark use, Google’s recommendation and sale of Rescuecom’s mark to its advertising customers are not internal uses.” Further, the court noted that, “an alleged infringer’s use of a trademark in an internal software program [does not insulate] the alleged infringer from a charge of infringement.”

Aside from the immediate effects on Rescuecom’s litigation, this decision calls into question several other cases within the Second Circuit’s jurisdiction which cite to the WhenU.com case to support similar conclusions as the N.D.N.Y. court came to.  However, this decision is not dispositive on the ultimate issue of whether Google’s actions amount to trademark infringement.

Comments Off Posted in: Analysis on April 9, 2009