Technically Legal

Copyrighting movie times, trademarking the word Edge with regard to games, and first sale and computer programs.

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Copyrighting Movie Times

Can You Copyright Movie Times
Feist Publications v. Rural Telephone Service
17 USC 102

Edge Copyright

EA, DICE File Complaint To End Trademark Issues Over Mirror’s Edge
Incontestability

AutoDesk and First Sale

Vernor v. Autodesk – Cross Motions to Dismiss – First Sale Case – Updated
It’s Still A Duck: Court Re-Affirms That First Sale Doctrine Can Apply to “Licensed” Software
The Order
17 USC 109, First Sale
17 USC 117, Limitations on Rights

1 Comment Posted in: Podcast on October 6, 2009

Google Antitrust Investigations, Microsoft Bing and Kayak, Posner on Copyright, and Developers and the GPL.

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Google Anti-Trust Investigation

Google Makes a Case That It Isn’t So Big

Microsoft Bing and Kayak

Kayak to Bing: Stop Copying Us!
Kayak.com
Bing Travel

Posner on Copyright

The Future of Newspapers–Posner

Developers and the GPL

GPL
Getting Pretty Lonely [Red Sweater Blog]

We promised to talk about this story: College Stars Sue Over Likenesses in Video Games, but didn’t get to it.

1 Comment Posted in: Podcast on July 6, 2009

Google Lawsuit, iTunes App Store, Online Harassment Laws and Reporters on Facebook.

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Google Sued Again for Trademark Infringement–Soaring Helmet v. Leatherup.com

Tim Langdell: The EDGE of Insanity?

Texas Lawmakers Crack Down On Fake Profiles

iAWFUL

AP Reporter Reprimanded For Facebook Post; Union Protests

Comments Off Posted in: Podcast on June 15, 2009

Eric Goldman reports on a class action law suit filed against Google over trademark infringement. Professor Goldman hits the nail on the head when he says that the suit isn’t likely to go very far. Class actions involving trademarks rarely get past initial stages, because unlike most class action cases, where the harm is exactly the same to each class member, it rarely is the case in trademarks. Because damages would be different in each case, the Court is likely to find that they won’t save any time or resources by allowing the class action to go forward, as opposed to litigating each case individually.

Comments Off Posted in: Links on June 15, 2009

Tony LaRussa sues Twitter, Yahoo sues the NFL, and patents go to the Supreme Court.

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Supreme Court Grants Cert. in Bilski

Method Men? Handicapping Bilski at the Supreme Court [The Prior Art]
Bilski v. Doll [ScotusWiki]

Yahoo Sues NFL Players Association

Yahoo sues NFL Players Association [SiliconValley.com]
The Complaint [scribd.com]

Tony LaRussa Sues Twitter

Tony La Russa Sues Twitter Over Alleged Fake Page [New York Times]
Not Playing Ball [twitter.com]
The Complaint

1 Comment Posted in: Podcast on June 9, 2009

Keir Thomas, of PC World, recently posted Trademarks: The Hidden Menace, arguing that trademark rights conflict with open source software.

Shortly after Mr. Thomas released the Ubuntu Pocket Guide and Reference, he designed a website to promote his book. He wanted his website to appear familiar to users of Ubuntu, and so used both the Ubuntu name and logo extensively.

But, during a friendly conversation, a person from Ubuntu gently told Keir that he had gone too far, using Ubuntu’s logo more often than he should have — or, legally, could have.

Mr. Thomas expressed dismay and penned his article. Is his analysis correct?

Purpose of Trademark Law. Before we go on, let’s define why we have trademark law. Trademark law serves two goals:

1. Protect companies’ goodwill in their names and marks.
2. Protect consumers from confusion in the marketplace.

For example, Coca-Cola has spent a lot of money developing its trademark, generating a lot of goodwill towards the mark. Trademark law protects Coca-Cola, so that some company out of nowhere can’t use the Coca-Cola name or a confusingly similar name (e.g., Koka-Kola). Trademark law also protects consumers, like you and me, from accidentally buying a Coca-Cola knockoff, instead of the real deal.

Trademark law does not protect against fair uses of the mark. But trademark fair use — also called, nominative fair use — differs from copyright fair use. If I were to make and sell peanut butter cookies with Hershey Kisses in the middle, Hershey’s couldn’t stop me from saying that they were made with Hershey Kisses. I’m just using their trademark to accurately describe my product.

Keir Thomas’ use of Ubuntu in the title of his book was fair use. It is the Ubuntu Pocket Guide and Reference. There’s really no other way to describe what the book is a Pocket Guide and Reference for. He got into trouble when he started using the mark outside of this fair use.

The Straw Man. The first example he gives is a lawyer who, in 1994, law that Linux was unregistered. The Lawyer registered the mark, and sued. The mark was promptly, and properly, turned over to Linus Torvalds, who created Linux. Linus started a group to manage use of the mark, which now grants free licenses. This is just a bad example of trademark abuse. Here, a bad actor tried to exploit trademark law — not use it properly — and he failed.

A Contract Argument. The article also points out that Red Hat is engaged in some behavior that may go outside the proper scope of the trademark. Their “EULA does not permit User to distribute the Programs or their components using Red Hat’s trademarks, regardless of whether the copy has been modified.” This is an restriction by license or contract, and not a trademark law restriction. Trademark law would probably allow redistribution with the existing trademarks under fair use.

A Forking Argument. When the Debian folks forked the open source Firefox browser, Mozilla Foundation asked that they stop using the Firefox name on the product. Keir Thomas suggested this was an inappropriate use of trademark in open source. We disagree. It sounds like a great use of trademark. If the Mozilla foundation don’t have control over the forked source, they can’t control use of the mark. They also don’t have control of the quality or the source of the product. They cannot be blamed for not wanting their trade name attached to a product over which they have no control. Trying to assert trademark rights when you don’t have control over the goods usually results in loss of rights.

A Policy Argument. If we want open source software to become a robust and integral part of our future, strong trademark protection and policing is necessary. People don’t trust software, they trust sources of software. Trademarks allow makers of software to ensure that the goods they deliver are solid products, and they prevent people from modifying those goods and redistributing possibly unsecured or unstable software under the trademark.

It’s important to mention that trademark doesn’t prevent anyone from modifying open source software and recompiling it on your own computer. I just prevents you from doing that and then redistributing it under the same name. This is why changes get sent back to the project managers who decide if they are committed to the software or not. It’s their job to protect the trademark.

Comments Off Posted in: Commentary on May 21, 2009

The EFF has posted a new white paper on how to run a gripe site without it getting shutdown. In addition to their advice, here’s our two cents:

• If you get contacted about it, talk to the EFF or a lawyer before you talk with them.
  
• Under no circumstances do you offer to sell them the domain.
  

Comments Off Posted in: Links on May 19, 2009

Taser, maker of the Taser electroshock weapon, just sued Linden Lab, seeking to remove fake tasers from Second Life on trademark infringement grounds.

What’s Taser afraid of? In a word: genericide. Genericide happens when a trademark becomes generic for an entire product category. And once a trademark becomes generic, anyone can use it. An example: aspirin.

Taser worries that if it permits players in Second Life to use “taser” to describe their virtual electroshock weapons, soon everyone will start using “taser” — their trademark — instead of the generic mouthful of “electroshock weapon.” Taser’s solution? This lawsuit to assert its exclusive rights to the word Taser. When a mark becomes generic, lawsuits and publicity campaigns are the only way to reclaim the mark.

1 Comment Posted in: Links on April 24, 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