October 2006
From the editors of Wolters Kluwer Law & Business, this update describes
important developments from CCH and Aspen Publishers intellectual property
and computer law publications.
If you have any comments or suggestions concerning the information provided or the format used, we'd like to hear from you. Please send your comments to john.arden@wolterskluwer.com.
COPYRIGHT
Supreme Court Asked to Review Similarity
in Da Vinci Code Case
The U.S. Supreme Court has been
asked to review a ruling of the U.S. Court of Appeals in New York City
that books based on the same premise were not substantially similar for
copyright infringement purposes (2006 Copyright Law Decisions ¶29,249).
The petition in Perdue v. Brown, Dkt. No. 06-213, asked the Court:
“When deciding whether part of a literary work is `substantially
similar’ to protected expression in a previously copyrighted work,
should a court look to the two works alone, or should it also consider
expert affidavits?” The federal district court in New York City
had declared that The Da Vinci Code did not infringe copyrights in two
earlier novels—The Da Vinci Legacy and Daughter of God
—because the books were not substantially similar (2006 Copyright
Law Decisions ¶29,248). Although the underlying premise of the works
was the same—a mystery thriller against a religious backdrop—the
other similarities between the works were unprotectable ideas, historical
facts, and general themes that did not represent any original elements
in the author's work. Similarities between the works in such aspects as
total concept, feel, theme, characters, plot, sequence, pace, and setting
also were not protectable. The expression of the religious themes in The
Da Vinci Code differed markedly from the complaining author's expression
of his themes. Moreover, the The Da Vinci Code was an intellectual,
complex treasure hunt, while the complaining author's work was more action-packed.
The plot, characters, sequence, pace, and setting were also different.
Photo, Sculpture Expressing Same Idea
Not Substantially Similar
Although a wildlife photographer's
photo, entitled "Mother Mountain Lion with Baby in Mouth," and
an artist's subsequent sculpture of a mother mountain lion with a kitten
in her mouth had the same subject matter, the artist was not liable for
copying the photo, the federal district court in Phoenix ruled. The similarities
between the works were confined to non-protectable ideas and general concepts.
Accordingly, the artist was granted summary judgment on the issue of liability.
The artist had access to the photograph, and evidence showed that there
was virtually no difference in concept between the artist's sculpture
and the photo. The similarities between the works included: (1) the idea
of the protective nature of a mother lion with her kitten; (2) the intent
to portray the protective nature of the mother lion; and (3) the focal
point of the mother lion holding the kitten in her mouth. However, these
similarities were ideas not protected by copyright, the court held. The
"intent" to show the lion's protective nature was not protectable
because it arose from the use of a common idea. The concept of the mother
lion picking up her kitten was inseparable from the idea. The "focal
point" of the works was not protectable because the image of a mother
lion holding her kitten in her mouth was expressed by nature such that
it was the "common heritage of humankind," which no artist could
prevent others from depicting. Once the unprotected similarities were
filtered out, the works were not substantially similar (Dyer v. Napier,
D. Ariz, CCH Copyright Law Reports ¶29,242).
New Law Clarifies Role of Copyright
Royalty Judges
The Copyright Royalty Judges
Program Technical Corrections Act (P.L. 109-303), which amends the Copyright
Royalty and Distribution Reform Act of 2004 to clarify roles and responsibilities
of Copyright Royalty Judges, was signed into law by the President on October
6, 2006. The Act provides that the Copyright Royalty Judges are subject
to the Administrative Procedure Act; that they must consider certain Copyright
Arbitration Royalty Panel determinations and interpretations among precedents;
that they allow certain petitioners to participate in a proceeding without
a filing fee; that they may make a partial distribution of cable and satellite
royalty fees after the filing of claims for distribution of such fees;
and that they may issue an amendment to a written determination concerning
technical and clerical errors and to modify terms under certain conditions.
TRADEMARK
Dilution Revision Act Signed by President
Bush
The "Trademark Dilution
Revision Act of 2006," which amends the Lanham Act to provide for
injunctive relief in cases where use of a mark is likely to cause dilution
by blurring or by tarnishment of a famous trademark, was signed by President
Bush on October 6, 2006. The measure (H.R. 683) replaces the "actual
dilution" requirement established by the U.S. Supreme Court in Moseley
v. V Secret Catalogue, Inc. (CCH Trademark Law Guide ¶60,064) with
a "likelihood of dilution" standard. As amended by the new law,
Sec. 43(c) of the Lanham Act now provides that "dilution by blurring"
is an association arising from the similarity between a designation of
source and a famous mark that impairs the distinctiveness of the famous
mark. It also specifically includes a cause of action for tarnishment,
and states that "dilution by tarnishment" is an association
arising from the similarity between a designation of source and a famous
mark that harms the reputation of the famous mark. The law excludes "fair
use" in comparative advertising, noncommercial use, and all forms
of news reporting or commentary. In addition to providing for injunctive
relief, the amended law specifies that, in cases in which the defendant
willfully intended to trade on the recognition or reputation of the famous
mark, the owner of the famous mark is entitled to seek damages, profits,
and costs under Sec. 35(a) of the Lanham Act, as well as an order for
destruction of the diluting articles under Sec. 36. Ownership of a valid
registration is a complete bar to action. The full text of Sec. 43(c),
as amended by H.R. 683, is reproduced at CCH Trademark Law Guide
¶10,100.43.
Google’s Sale of Ad Keywords
Was Not Trademark Use
Search engine operator Google's
sale of advertising keywords featuring the well-known trademark of a computer
services franchisor (Rescuecom) did not constitute a trademark use for
purposes of the Lanham Act, according to the federal district court in
Syracuse, New York. Google's AdWords program enabled advertisers (Rescuecom's
competitors) to purchase or bid on certain keywords. When Internet users
typed those words in Google's search engine, the program generated "sponsored
links" to the advertiser's websites. Google also promoted its advertising
services via a "Keyword Suggestion Tool," which identified "Rescuecom"
as an effective search term. This internal use of "Rescuecom"
to trigger sponsored links was not a trademark use because Google did
not place the mark on goods, displays, containers, or advertisements,
or use the mark in any way to indicate source or origin, the court said.
In addition, the alteration of search results was not a trademark use
because there was no allegation that Rescuecom's mark was displayed in
any of the sponsored links results. Rescuecom's trademark infringement,
false designation of origin, and dilution claims were dismissed (Rescuecom
Corp., N.D. N.Y., CCH Trademark Law Guide ¶60,900).
Shirt Designs Infringed Universities’
Colors, Logos
Four universities (Louisiana
State University, the University of Oklahoma, Ohio State University, and
the University of Southern California) established that an apparel seller
engaged in trademark infringement by marketing a line of shirts bearing
the universities' color schemes, logos, and designs, the federal district
court in New Orleans has ruled. The apparel seller's conduct was likely
to cause confusion. The universities' marks were extremely strong, were
not functional, and had no demonstrated value other than as source identifiers.
The colors, logos, and designs used by the apparel seller were virtually
identical to the universities' marks, the court said. Both parties sold
apparel through similar trade channels to the same classes of customers.
The apparel manufacturer admitted that it selected the color schemes,
logos, and designs for its shirts in order to refer to the universities.
(Board of Supervisors of the Louisiana State University and Agricultural
and Mechanical College, E.D. La., CCH Trademark Law Guide
¶60,885)
Law Firms Settle Dispute Over Use of
Name as Mark
A trademark infringement dispute
between law firms Foley Hoag LLP and Foley & Lardner LLP over the
right to use the term "Foley" as a mark has been settled, it
was announced October 3, 2006. According to a press release issued by
Foley Hoag, Foley & Lardner has agreed not to use a logo with the
single word "Foley" that does not also have "Foley &
Lardner" in close proximity and prominence. Foley & Lardner also
agreed not to use the term "Foley" in written or oral communications
unless the term is used in a context reasonably understood to be referring
to Foley & Lardner. Foley Hoag had filed a civil action against Foley
& Lardner in the United States District Court in Boston in October
2005, seeking to stop Foley & Lardner from using the term "Foley"
in advertising materials. An application by Foley & Lardner to register
FOLEY as a service mark was denied by the U.S. Patent and Trademark Office
in 2004 on likelihood of confusion grounds, since Foley Hoag had registered
its name as a service mark in 2002.
COMPUTER & INTERNET LAW
Virginia Spam Law Conviction Survives
Jurisdictional, Constitutional Attack
A South Carolina e-mail marketer
was subject to jurisdiction in Virginia and appropriately convicted for
violating the unsolicited bulk electronic mail provisions of the Virginia
Computer Crimes Act, a Virginia appeals court has ruled. The marketer
was convicted on three counts of violating the statute and sentenced to
nine years in prison for sending more than 10,000 e-mails on three different
days to America Online subscribers. The marketer asserted that the court
lacked jurisdiction over him and law was unconstitutional. However, the
court held that the marketer was subject to jurisdiction in Virginia because
he directed his felonious conduct to the forum by knowingly sending the
e-mails addressed to AOL subscribers at "@aol.com." In order
for the e-mails to arrive at the destination intended by the marketer,
the messages had to pass through AOL's e-mail servers, all of which were
located within Virginia. The marketer further argued that the statute
violated the First Amendment because it proscribed the sending of anonymous
e-mails of a noncommercial nature. According to the court, the statute
did not proscribe speech. It merely proscribed intentional falsity in
the use of the private property of an electronic mail service provider—an
activity that merited no First Amendment protection. A claim that the
statute violated the Dormant Commerce Clause of the U.S. Constitution
because it regulated transactions taking place outside of Virginia was
rejected, since (1) the state clearly had a significant local interest
in protecting residents and service providers from the cost of handling
spam and (2) the statute's burden on interstate commerce was minimal.
The court also rejected the marketer’s assertion that the statute
was unconstitutionally vague. Among states with spam laws, "unsolicited"
has a practically universal definition. The word "bulk" was
not vague, since the statute defines “bulk” as the sending
of more than 10,000 e-mails within a 24 hour period (Jaynes v. Virginia,
Va. Ct. App, CCH Guide to Computer Law ¶49,194)
File-Sharing Software “Induced”
Copyright Infringement by Users
StreamCast Networks, a file-sharing
company that distributed the popular Morpheus file-sharing software, engaged
in copyright infringement by intentionally inducing users of its network
to share music, movies, and other copyrighted works without authorization,
the federal district court in Los Angeles has held. The ruling—granting
summary judgment in favor of the entertainment industry and against StreamCast
as the remaining defendant in the litigation originally involving Grokster
and Sharman Networks—was issued 15 months after the U.S. Supreme
Court remanded the case for consideration of liability based on an "inducement"
theory of secondary copyright infringement. (Metro-Goldwyn-Mayer Studios
Inc. v. Grokster, Ltd., U.S. SCt, (2005), 11 CCH COMPUTER CASES ¶48,946)
Under the inducement theory of infringement set forth in by the Supreme
Court in Grokster, "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 of infringement by third parties." StreamCast
argued that even if it had distributed peer-to-peer software with the
intent for it to be used for infringement, liability would not attach
unless it took further actions, such as offering instructions on infringing
uses that actually caused specific acts of infringement. However, this
legal theory was plainly contrary to Grokster, the court determined. According
to the Supreme Court, "the distribution of a product can itself give
rise to liability where evidence shows that the distributor intended and
encouraged the product to be used to infringe. In such a case, the culpable
conduct is not merely the encouragement of infringement but also the distribution
of the tool intended for infringing use." Thus, the copyright owners
did not have to show that StreamCast undertook specific actions, beyond
product distribution, that caused specific acts of infringement. Instead,
they needed prove only that StreamCast distributed the product with the
intent to encourage infringement (Metro-Goldwyn-Mayer Studios, Inc.
v. Grokster, Ltd., CD Cal, CCH Guide to Computer Law ¶49,196).
Computer and Internet Integrated Library
Available from CCH
A new electronic library for computer and Internet law is now available
on the CCH Internet Research Network. The Computer and Internet Law
Integrated Library brings together news, analysis, commentary, and
full text reporting of laws, regulations, and court decisions. The core
library consists of CCH Guide to Computer Law and five treatises
from Aspen Publishers—Law of the Internet, Drafting Internet
Agreements, Law of Electronic Commerce, Scott on Computer Law, and
Scott on Multimedia Law. Subscribers to the core library will
receive Computer and Internet News Alert e-mails, Advance Release Documents,
Practitioners Perspective columns, and two Aspen monthly journals—The
Journal of Internet Law and The Computer & Internet Lawyer.
Seven optional add-on publications will enable subscribers to customize
their libraries to suit their practices. For further information, pricing,
or a demonstration of the library, contact your Account Representative
by calling 888-224-7377.
Blog Provides News, Views on Trade
Regulation Law
The CCH Trade Regulation group
has launched a new blog—Trade Regulation Talk—to
provide news and views in the areas of antitrust, franchising, consumer
protection, advertising, and civil RICO law. The blog will make available
news developments in “real time” and enable readers to post
responses almost immediately. In addition to publishing information more
quickly than ever before, Trade Regulation Talk will host discussions
among practitioners, government enforcers, students, and scholars. The
blog may be found at www.traderegulation.blogspot.com.
Besides reading the content directly on the blog, interested persons may
sign up for e-mail delivery of postings.