The 9th circuit recently held that the re-registration of a domain name was not the same as an initial registration for purposes of forming bad faith in a cybersquatting claim. The defendant in GoPets Ltd.v Hise, 657 F.3rd 1024 (9th Cir. 2011) registered the domain name "gopets.com" for a school related marketing project. After the registration, the plaintiff started a business called GoPets and tried to purchase the domain name from the defendant. Because the registraiton occured prior to the founding of GoPets, the defendant did not have bad faith for cybersquatting purposes. Later, the defendant transferred the domain name to his corporation and the plaintiff filed a cybersquatting case against the defendent.
The court noted that the words "register" and "registration" are not defined in the AntiCybersquatting Consumer Protection Act. The court went on to list the various scenarios which could arguably constitute a registration such as changing the administrative contact, making the registration private, switching registristrars and even renewing the registration. The court opted not to permit such a broad view of the registration in holding for the defendant. This contrasts Schmidheiny v. Weber, 319 F.3rd 581 (3d. Cir. 2003). However, the Schmidheiny decision related to re-registration of a registration that occurred before the enactment of the ACPA and also related to registrations of the names of living people.
California Governor Jerry Brown recently signed into law a California Labor Code addition called Employer Use of Social Media. The new law is aimed at employers who request social media account access or content from employees or employment candidates. It loosely follows the format of similar legislation in Illinois and Maryland.
The core prohibitions of the California law are fairly basic. An employer may not require or request an employee or applicant to disclosure username and password, access social media in the presence of the employer or divulge any personal social media. However, the Californa law contains a singificant exception for employers. The employer may request an employee to share social media if it is reasonably believed to be relevant to an investigation of imployee misconduct or violation of law. This exception is more broad than Maryland's exception for securities fraud and trade secrets. Illinois has no exception. Also, the California exception does not apply to job candidates.
One other interesting aspect of this law is that social media is defined as "an electronic service or account, or electronic content, including, but not limited to videos, still photographs, blogs, video blogs, podcasts, instant and text message, email, online services or accounts, or Internet Web site profiles or locations." This definition appears to be broad enough to cover a wide variety of internet activities without regard to whether most people would view them as "social media" or not.
Employers in California should review this new law and update their social media employment policies and practices accordingly. Keep in mind that the exception does not specifically permit the employer to require the employee to divulge passwords. Employers in other states should stay tuned for the expected wave of state and federal legislation in this area.
The ever expanding list of available generic top-level internet domains (gTLDs) is about to get longer. Popular gTLDs include the familiar .com, .net and .org, but the total list has now grown to 22, including .info, .biz, and .pro. In addition, the proliferation of country-code top-level domains (ccTLDs) such as .co, .eu, and .uk has expanded beyond 300, leaving trademark holders with a seemingly overwhelming list of potential top-level domains to consider in terms of defensive registration or monitoring.
To add to the list, ICANN (the International Corporation for Assigned Names and Numbers) has begun accepting applications from private entities for new gTLDs. There are very few restrictions on what may comprise a new gTLD. This means that private entities will likely own and control gTLDs that consist of their own trademarks, such as .ford or .coke, and generic words that describe an industry, such as .car or .bank. Each applicant must meet certain technical requirements, file an application by April 12, 2012, and pay an initial fee of $185,000. There is no opportunity for trademark owners to exclude their marks from the list of potential new gTLDs. However, after the applications for gTLDs have been published, trademark owners will have the opportunity to object to the registration of a particular gTLD.
Although the prospect of proposing and hosting a new gTLD will not be a viable alternative for the vast majority of trademark holders, each new gTLD that is approved and ultimately adopted will add to the list of potentially infringing and problematic domains that must either be purchased and maintained as a preventative measure or monitored for potentially infringing uses.
Accordingly, it is increasingly important to have in place a trademark enforcement and domain name management policy that addresses the defensive registration of strategic gTLDs, and the appropriate monitoring of others. We generally recommend that clients consider the registration of key trademarks and trade names with the following TLDs: (i) the most popular generic top-level domains (.com, .net, .org, and .info); (ii) country-code top-level domains for any countries where significant business is currently conducted, or which are of particular strategic importance; and (iii) the most popular country-code top-level domains. The following is a recent "top ten" listing of ccTLDs based on number of registrations:
- .de (Germany)
- .uk (United Kingdom)
- .nl (Netherlands)
- .eu (European Union)
- .cn (China)
- .ru ( Russia)
- .br (Brazil)
- .ar (Argentina)
- .it (Italy)
- .pl (Poland)
Defensive registration is just one component of a comprehensive trademark enforcement and domain name management policy.
Elizabeth Tassi contributed to this post.
The always excellent TTAB Blog has published its compilation of the 37 precedential decisions from the Trademark Trial and Appeal board from 2011. Blog post here. Highlights include a decision finding the design of a bottle in the shape of a fist with a raised middle finger to be scandalous or immoral, and another finding that NKJV has achieved acquired distinctiveness for bibles. Also, noteworthy, rulings have been made in the new REDSKINS disparagement case (the previous case, based on essentially the same substantive grounds, was tossed by the U.S. Court of Appeals for the District of Columbia Circuit ultimately (in 2009) when it affirmed the lower court's ruling that the disparagement claims of the Native American plaintiffs were barred by laches. In this case, the plaintiffs are American Indians who just recently reached the age of majority, the point at which the earlier case had determined that laches begins to run.
Ever wonder what happens when a domain name expires? If the domain name registration, reservation, renewal and expiration process seems a little murky to you, you are not alone. The "expiration" process is particularly misunderstood (and complicated), and it is very helpful to know how it works, particularly when watching a parked domain, or one that is pending deletion, and determining whether to try and buy it from the domain owner, or put it on "back-order" with one of the registrars, or take some other action.
There is an entire industry that does nothing but try to exploit expiring domain names, and the process and nomenclature is explained in excellent detail at this site.
Here is a quick summary from the reference site (at least for .com/.net/.org/.info/.biz/.us. domains):
Generally speaking, once a domain expires, the owner has 1-75 days to renew it, and the costs associated with a renewal usually increase as the domain moves from Hold (Registrar-Hold) to RGP (Redemption Grace Period).
During the Hold and RGP stage, the DNS, e-mail and web services cease to work for the expired domain. The domain gets removed from the zone file and does not appear to resolve (cannot find server error is displayed in the browser).
Once a domain reaches the deletion stage in the cycle (also known as PendingDelete) it can no longer be renewed and is marked for deletion by the registry. There are approximately 35,000 domains that go through the PendingDelete cycle daily.
After the 5 day PendingDelete cycle (or if a registrar chooses to immediately delete a domain), a domain drops and once again becomes available for registration.
Here are some interesting facts about the domain drop cycle:
- 120,000 to 200,000 domains expire daily due to non-renewals. Many of these are renewed as soon as the registrant realizes that their e-mail or site no longer works.
- 25,500 to 60,000 domains drop (become available) daily as part of the regular drop cycle.
- Approximately 1.5 million domains are registered and dropped daily as part of domain tasting.
- The official drop time for .com/.net is between 11 AM and 2 PM Pacific time (domains are deleted in batches throughout this period).
With the launch of the .XXX sunrise period just a few weeks away, the ICM Registry has finally announced the details of its rapid domain name takedown service, which promises to discourage cybersquatters in the .xxx top-level domain. The Rapid Evaluation Service, as it is known, is essentially a beefed-up version of the UDRP that gives legit trademark holders a bigger and faster hammer. Using RES, brand owners will be able to get a domain temporarily suspended in less than a week, and later have it switched off for good, by placing it into "registry-reserved status". The complainant does not get control of the domain, but they do not have to pay recurring renewal fees to keep it out of reach.
The mechanics and merits of the Rapid Evaluation Service follow the UDRP in many respects, but in others, it is new and improved, taking some cues from recent case law. In other respects it has a somewhat narrower scope in terms of who may claim rights using the service. For the most part, it looks like federally registered/actively used trademarks will be required. Common law rights may not suffice under this new service. Also noteworthy, the arbitrators under this new system will not be publishing their full decisions. Only summaries will be available. It should be interesting. We would love to see the UDRP adopt some of these expedited procedures for disputes involving some of the more unsavory infringing uses of the .com and other domains we see.
More detail from the ICM Registry here.
Photo Credit Andrea
For years, one tool available to testifying experts in evaluating royalty rates as a basis for damages in patent litigation has been the "25 percent rule of thumb," although the Federal Circuit has been unclear in precisely how it viewed the rule. Various cases have alternatively allowed or excluded damage theories based on the rule without much rhyme or reason. Basically, the rule posits that a licensee would, as a rule of thumb, pay 25 percent of its expected profits for the product that incorporates the intellectual property at issue, and support for the rule traces back to published empircal studies from the 1970's which analyzed 1,500 licenses from fifteen industries, and found a median royalty rate of 22.6 percent, and the majority of royalty rates between 21 and 40 percent.
In the recent decision of Uniloc USA, Inc. et al v Microsoft Corporation, the CAFC definitively ruled as follows:
The FTC reported yesterday its endorsement of a "Do Not Track" mechanism to provide consumers with a means to avoid the collection of browser data regarding online product and service browsing. Such data is often used for online targeted ads. In examining the need for a new framework, the FTC cited slow progress in online industry self-regulation.
The specific implementation method discussed was an opt-out using a persistent browser cookie that would notify advertisers of the user's privacy options.
The FTC report also touched upon some other interesting privacy protection ideas including standardized notices and access to consumer data held by data brokers. The report recognizes that companies need not seek consent for common practices related to specific transactions, legal compliance, service improvement, prevention of fraud, and first-party marketing. Presumably, this means that websites will be able to ignore the "Do Not Track" cookie when engaging in such practices.
The report also contains significant discussion of privacy practices that transcend the online world. The FTC advocates a "privacy by design" approach (http://www.privacybydesign.ca). Under this approach, companies should build privacy protections such as security, limited collection, limited retention, proper disposal, and accuracy procedures into their daily business practices. This approach will present an interesting twist for many companies who have relied on past authority to clearly state in their online privacy policies that such policies do not apply to information collected offline.
A California district judge recently upheld a user ban by Facebook against a user who violated facebook rules by friending people she did not know. She was engaged in some outspoken commentary supportive of President Obama and increased her activity on Facebook in response to harrassment from other Facebook users.
The plaintiff raised a number of interesting, but ultimatly unconvincing arguments against Facebook. She tried to claim a First Amendment violation by arguing that Facebook was a state actor. That argument focused on the fact that Facebook contracts with the government to permit Facebook pages for federal agencies. She also argued that Facebook violated the implied duty of good faith and fair dealing. The judge ruled in favor of Facebook's enforcement of its policies although it did perserve the suggestion that bad faith or arbitratrary termination could give rise to a claim. According to Judge Fogel, the plaintiff instead argued that she was deprived of human interaction by Facebook. Even Brown has a nice summary of all of her positions and the decision at Internet Cases.
At a time when a sideways economy seemingly coincides with a rise in software compliance audits, licensees have another reason to carefully review their software use. In The Compliance Source, Inc. v. GreenPoint Mortgage Funding, Inc. ((2010 WL 4056112, No. 09-10726 (5th Cir. Oct. 18, 2010)), the Fifth Circuit ruled in favor of narrow interpretation of a license agreement when it came to use by a third party on behalf of the licensee.
GreenPoint had permitted its attorneys to use the licensor's loan documentation software to prepare loans on GreenPoint's behalf. The district court held that the use by the attorneys on behalf of GreenPoint did not constitute a transfer or sublicense of the agreement in violation of the terms of the license. The district court also focused on two prior decisions for the proposition that a court can look past the specific license language of the license grant to "absolve a licensee who grants third-party access merely because the access is on behalf of or inures to the benefit of, the licensee."
The circuit court distinguished the two prior decisions on the basis that the contracts contained language that explicitly permitted limited access by certain third parties. The circuit court, however, found that the Compliance Source contract did not contain such permissive language from which to extrapolate a more general third party right. The circuit court instead held that the agreement did not permit use by third parties even if such use is on behalf of the licensee.
Aside from the obvious compliance issues this case raises, it contains a couple of important practice pointers for licensors as well. The first is to be precise in drafting exceptions as they can help define the rule. The Compliance Source agreement has a specific but limited third party use right for originating lenders. The circuit court specifically mentioned the originating lender language as a specifically tailored provision that precluded the finding of a more expansive implied right. Also, the circuit court emphasized, in the opinion, that the agreement "expressly prohibited the use of the licensed technology not explicitly permitted by the agreement itself." Time to dust off the boilerplate.
The 7th Circuit recently ruled on a wiretap case involving an employee who set up an Outlook auto forward rule to intercept email communications from his boss. US v. Szymuszkewicz (7th Circuit, 2010). The Court correctly ruled that this sort of email interception violated the Wiretap Act. However, dicta from Judge Eastbrook in the case has raised some interesting discussion regarding the requirement of contemporaneousness, or the lack thereof, under the Wiretap Act. In other words, does the interception of data need to occur at the same time as its transmission? Judge Eastbrook presented an interesting analogy comparing inbox access to using a code to intercept messages on an old fashioned answering machine. He concluded that such use could violate the Wiretap Act and thus contemporaneousness was not required. Courts and commentators disagree on this issue.
Orin Kerr presents an interesting analysis of the contemporaneousness requirement by discussing the history of the Wiretap Act, its purpose as a criminal procedure statute and its relationship to the Stored Communications Act. Kerr points out that the original Wiretap Act was passed in response to the landmark Berger v New Yorkcase, giving special privacy concerns to real time wiretapping. He discusses the procedure required for the government to obtain a court order permitting wiretapping and the fact that such an order is necessarily specified to cover a defined period of time. Thus, the Wiretap Act is meant to address active transmissions during a set time period. This contrasts with the Stored Communications Act, which addresses government access to computer data in storage.
From a practitioner’s context in an employment matter, whether the Wiretap Act has a contemporaneous requirement and overlaps the Stored Communications Act is somewhat a matter of semantics. However, the statutes are viewed as codes of criminal procedure, as Kerr points out, and an interpretation that makes them overlap could produce odd results. For example, a properly obtained warrant under the Stored Communications Act could, at the same time, violate the Wiretap Act if the Wiretap Act is read to be broad enough to prohibit access to stored information. The practitioner should keep this controversy in mind when considering violations by employees under the statutes.
Evan Brown reportson an interesting discrimination claim involving Facebook. In Jabbar v Travel Services, Inc., 2010 WL 3563112, (D. Puerto Rico, September 10, 2010) the court granted summary judgment in favor of the defendant in a client case involving a hostile workplace claim. The plaintiff asserted that a discriminatory comment was posted by another employee in regards to a Facebook photo taken at a company event. The court found that there were not sufficient facts to show who owned the Facebook account or regarding any company policy of uploading photos to the Facebook service.
Although the court ruled in favor of the employer, the negative implication of this is that discrimination involving social networking may present an issue for employers in the future where a company connection to Facebook accounts or posted images can be shown. Obviously, comments from employees posted to Facebook are difficult, if not impossible, to police.
2010’s version of the Blackberry patent troll scare just hit the courts this week. Oracle filed a lawsuit against Google alleging infringement by the Android operating system of Java patents and copyrights. This time, the stakes are a little different. Google can’t rely on the fact that the government might shut down if Android phones bite the dust given that there are actually viable alternatives these days. The case also presents an interesting threat to the open source community because Java includes both patented and open source elements, forcing Google to defend both the patent monopoly and the free nature of open source at the same time.
Cnet recently reported a new case against Ascentive, the company that provides computer support applications under the slogan "Finally Fast." The case is interesting not because another company steps in the long line of trademark holders upset with Google's adword policies. Rather, it demonstrates the power that Google wields over the gateway to the Internet. Ascentive's complaint also alleges that Google inappropriately cut Ascentive from search results based on a couple of complaints from StopBadware.org.
I ran across three related news stories this week loosely tied to this common theme. The first is this article in Computerworld which posits that China's relentless focus on science and technology could ultimately lead to it becoming the world leader in technology. The article gives five reasons why China may be unstoppable in this regard, one being that China is receiving almost all of the U.S.'s technology and succeeding in creating what it calls an "indigenous innovation policy." U.S. Commerce Secretary Gary Locke has said that this policy is designed to encourage technology transfer and force U.S. companies to transfer their research operations to China in exchange for access to its markets.
Then there was an article in the Atlantic on What's Wrong With the American University System which persuasively demonstrates what we all suspect – that the US system of tenure and sabbaticals does very little to enhance students education, and shows that more often than not, American students are being neglected by celebrity professors, shortchanged by rising tuitions, and led astray by a disproportionate focus on college football.
Finally was the article from Newsweek, titled "The Creativity Crisis". This article blames the absence of creativity cultivation in US schools for a steady decline in measured creativity among US children in kindergarten through the sixth grade. According to the article, creativity can be injected into current curriculum standards without negatively impacting current curriculum goals. Research shows that free play and fantasy world creation are associated with high creativity in young children. By the fourth grade, researching and studying become an integral part of devising useful solutions, and these fact finding and deep researching tasks are key parts of the creative process, and are tools that can be integrated into existing curriculum standards to help cultivate creativity.
This all reminded me of one of the most outstanding TED presentation by Ken Robinson who entertains and educates in this presentation explaining precisely how our schools kill creativity. This is absolutely worth 20 minutes of your time.
Perhaps we are reaching a tipping point on the awareness of this issue, and potential impact on the future of Tech and Innovation in the US.