In a case that confirms the advisability of registering your copyright in software and websites, the Ninth Circuit Court of Appeals has denied statutory damages in the context of a continuing infringement.  The copyright act does not allow statutory damages or attorney’s fees if the infringement “commenced” prior to the registration of the copyright (subject to a 3 month relation back exception for newly published works). 17 U.S.C. Sec. 412.

In Derek Andrews v. Poof Apparel, the defendant had copied the decorative tags that the plaintiff attached to its clothing items, and attached them to its own clothing line.  The tags gave rise to the copyright claim (the case also involved trademark infringement claims).  On the copyright claim, the District Court awarded the plaintiff $15,000 in statutory damages and  $296,090.50 in attorneys' fees.  The Court of Appeals stated that the Copyright Act leaves no room for discretion on this point: “in order to recover statutory damages, the copyrighted work must have been registered prior to commencement of the infringement, unless the registration is made within three months after first publication of the work.”  The court noted that other courts have construed Section 412 in a similar manner, finding that infringement commences for the purposes of § 412 when the first act in a series of acts constituting continuing infringement occurs. Accordingly, “the first act of infringement in a series of ongoing infringements of the same kind marks the commencement of one continuing infringement under § 412.”

The case highlights the importance of registering copyrights early.  One of the most frequent areas of copyright infringement we see involves software and content from websites (or entire websites themselves).  In these situations actual damages can be very difficult to prove, and the availability of attorneys fees and statutory damages greatly enhances your case, and ability to resolve these issues quickly and on favorable terms.

Let’s assume that you have an un-pickable lock on an impenetrable freezer in your basement, and assume further that freezer is full of body parts from your victims (these are assumptions – right?). The Feds think they know what's in there, but they can’t get in unless you unlock it. Can they legally compel you to open it, or can you avoid being so compelled by invoking your 5^th Amendment right to not incriminate yourself?

The equivalent of this scenario is playing out in child pornography cases around the country, where the alleged pornographers have used widely available public encryption products (which are very secure), to lock up the damning content on their computers. Without the magic words (or encryption key), law enforcement will, as a practical matter, never know what is on that drive. Law enforcement argues that where the intent is purely to hide evidence of a crime, there needs to be some way for the courts to allow law enforcement to access the evidence.  They are starting to ask the courts to compel the bad guys to cough up the passwords. 

Interestingly, in the case that is currently getting all of the attention on this, US v. Boucher, federal Magistrate Judge Jerome J. Niedermeier has addressed the “opening of the safe” analogy, concluding that if the safe requires a physical key, a suspect can be compelled to turn it over, but if it is a combination that exists in the persons head, disclosing that is tantamount to a “testimonial act” implicating the 5^th Amendment. Therefore, he ruled that requiring the suspect to enter his password would violate his right against self-incrimination. (So what if the combination is written down – is that writing the equivalent to a physical key? And even if it is the same as a physical key, isn’t the knowledge of the location of the writing in that person's head - the disclosure of which would involve a “testimonial act”, and on and on). The government has appealed, and the case is currently being investigated by a grand jury.

The case is unique to digital information, because the analogy that there is just no other way to get the evidence does not really hold up in the physical world. There is always some way to get into the safe. However, using widely available open source encryption software, such as PGP, it is virtually impossible to unencrypt files without the password. The only thing to do is to use automated guessing software, that systematically and repeatedly guesses at the password - a process that could take many years, even with a lot of computing power. The Feds are scared, because an adverse ruling here could create a safe harbor for information that would be essentially unreachable, potentially benefiting drug dealers, terrorists, and the child pornography industry. Civil Liberty groups such as the EFF say unbreakable encryption “is one of the few ways people can protect what they write, read and watch online,” and support the application of 5^th Amendment rights in cases such as these.  This will be interesting to follow.  It is definitely one where the new technology is creating some interesting challenges for the application of existing laws.

The Washington Post article on this topic is here.

Related New York Times article is here.

Photo complements of Colin Ashe under creative commons

The lists are starting to roll in.  Check out Pogo's Chronicles of Dissent: Top Ten Privacy Breaches of 2007, and Threat Level's look at the year 2007  from a privacy/security perspective.  The Metropolitan Counsel provides us with the Advertising, Marketing And Promotions Law Year In Review,   and the USPTO Announces it's year end results, touting "historic improvement in the quality of patent and trademark reviews and subsequently the quality of issued patents and registered trademarks."  Euclid Managers offers its Predictions for 2008 Security Threats, PatentlyO offers Ten Ways to Spend your Holiday Bonus (I got the Nuvi), the TTAB Blog reports that the Leo Stoller Blog Has Returned, and Chevy Chase reports that Generalissimo Francisco Franco is Still Dead. 

Happy Holidays, and Best Wishes for a prosperous 2008 from the TechKnowledgy Blog!

Updated Oct. 26, 2007  to add a link to the document - see:  Principles for User Generated Content Services

Several of the largest media companies have agreed to use technology to eliminate copyright-infringing content uploaded by Web users and to block any pirated material before it is publicly accessible.  That is part of a set of principles designed to "offer a road map for unlocking the enormous potential of online video and user-generated content," Disney Chief Executive Bob Iger said in a statement issued by the participating companies.

Some of the other companies involved are Viacom Inc, Walt Disney Co, Microsoft Corp, News Corp's Fox and MySpace units, CBS Corp, General Electric Co's NBC Universal, and online video services such as Veoh Networks and Dailymotion.  Notably absent was Google, owner of YouTube.

Essentially, the copyright holders in the group have agreed not to pursue Internet companies for infringement claims if their sites adhere to certain principles. Those principles include eliminating copyright-infringing content uploaded by users to Web sites, and blocking any infringing material before it is publicly accessible.  The pact reportedly is not legally binding, but more of a trust-building exercise among the companies, according to the Wall Street Journal report. 

On Wednesday, a federal judge in California granted class-action status to a lawsuit against Target Corp. filed by the Baltimore-based National Federation for the Blind under the American's with Disabilities Act and two state law claims. 

"This is a tremendous step forward for blind people throughout the country who for too long have been denied equal access to the Internet economy," said Marc Maurer, president of the NFB. "All e-commerce businesses should take note of this decision and immediately take steps to open their doors to the blind."

This comes on the heels of the DOJ settlement with Sylvan Learning Centers, and bodes well for increased accessibility for blind web surfers.  Want to make your website more accessible?  Check out the World Wide Web Consortium Web Content Accessibility Guidelines.

Here's the E-Commerce Times Article with more details.

The TechLawJournal has two articles today that do an excellent job of summarizing the state of the law as it applies to web sites and the ADA, and the recent settlement agreement between the Department of Justice and Sylvan Learning Centers.  The settlement agreement imposes on Sylvan obligations of public accommodation under the Americans with Disabilities Act.  This is not necessarily consistent with the limited judicial precedent on the topic.  The articles are reproduced below with permission from the TLJ.  By the way, although much of it is subscription based, this type of excellent content is typical of what you will find at David Carney's TLJ.

Click to read more ...

AltLaw is a web searchable database of federal court opinions.  Pretty handy.  Here's what it says about itself:

AltLaw is a joint project of Columbia Law School’s Program on Law and Technology, and the Silicon Flatirons Program at the University of Colorado Law School. AltLaw was written by Stuart Sierra and Paul Ohm, with help from Luis Villa, and produced by Tim Wu.

For most courts, opinions are available from mid 1990's to April of 2007, and recent opinions should be available soon.  Before long, the site expects to be able to offer opinions within 24 hours of publication by the courts.  More from the site:

The law is meant to belong to the people, but it can be surprisingly hard to find. Case reports, a major part of the laws of the United States, are hard to get at, and even when on the Internet, rarely searchable. To get full access you generally need either a library of law reports, or an expensive subscription to an online database, which can cost hundreds of dollars per hour.

AltLaw is a small effort to change that—to make the common law a bit more common. AltLaw provides the first free, full-text searchable database of Supreme Court and Federal Appellate case reports. It is a resource for attorneys, legal scholars, and the general public.

Features

• Full text search of the last decade or so of federal appellate and Supreme Court opinions.
• Advanced search options (proximity searching, Boolean, concentration, wildcards, etc.)
• Fast and free
• Updated daily (not yet, work in progress)

Limits

• Coverage, for most Circuits, limited to about the last 10 to 15 years.
• West Reporter Citations (i.e., 23 F.3d 178) not yet available (work in progress)
• As of yet, no state law or district court cases.

Watch out Westlaw and Lexis . . ..

Search engines and ISP's have widened the moat with this decision from the 9th Circuit, which essentially holds that Google's practice of copying thumbnail versions of photographs from third party web sites, with "in-line linking" to the full size version of those photos at their original location on the web, constitutes fair use.  Goldman's summary here.

Imagine the scene: In house counsel from Google, Microsoft, AOL and Yahoo rise to explain to the restless crowd of several hundred owners and protectors of famous trademarks, just why it is that they allow competitors to bid on those famous trademarks to trigger ads for the competitor's products. The phrase "smoothing ruffled feathers" was used more than once in the ninety minute presentation. The brave presenters were Peter Becker of Microsoft, Laura Covington of Yahoo, Lauren Fisher of AOL, and Rose Hagan of Google.

Kudos to INTA for pulling that one off, but perhaps it's not so surprising that these lawyers would face a seemingly hostile crowd. The search engines have a sizable PR and education job to do when it comes to the emotionally charged issue of keyword advertising, and what better venue than an audience of trademark holders to make their case.

In fairness, the search engines are attempting to operate within the law and balance the rights of consumers, advertisers, and trademark holders, and the law is currently evolving on the topic. And, they have some very good basic points. One common theme is that they should be able to operate under the same that apply in the brick and mortar world. Some good analogies were made (ones I've made in the past) such as the right to purchase shelf space in the supermarket next to a competitor, or the practice of printing coupons for competing products on the back of receipts at the super market (i.e., you buy some Pampers, and get a coupon for for Huggies). These things are tolerated in the "real" world, but in the intangible world of online commerce, keyword advertising draws a much more visceral response.

The most striking thing gleaned from the presentations from my perspective is just how differently the search engines treat the issue of keyword advertising as a matter of policy.  Google is clearly the most aggressive of the crew, and they allow the purchase of trademarks to trigger the ads of competitors, with the caveat that the text of the sponsored ad must not use the trademarked trigger term. The theory is, I believe, that Google thinks it has a winner on the argument that the use of trademarks to trigger ads is not "trademark use."  Because you need such trademark use, together with a likelihood of confusion to make a trademark infringement case, you can never get there with Google's approach.  If the trademark is never used in the triggered ad, and the use of the trademark as a trigger does not count for trademark purposes, no infringement issues.  It also has the benefit of being very clean, and very easy to implement.  No judgement is involved, and it can all be automated.  Very scalable.

Yahoo, AOL and Microsoft on the other hand, all take a more measured (and less scalable) approach, and allow for the purchase of trademarks to trigger ads only if the triggered ad clearly involves a fair use of the trademarked term. Yahoo (I believe) goes even further and actually requires that the trademarked term be used in the text of the sponsored ad.  The theory here is that if the ad is truly fair use (such as comparative advertising), that is most clearly demonstrated by the appropriate use of the trademark in the sponsored ad (for example "Thinking about a Dodge Durango? Compare the safety rating of the Toyota Tundra before you buy." )

In the end, it was clear that the search engines are attempting to operate within the law, or as near to the fringe as they can tolerate, and to perhaps push the line a bit. It was little solace to many in the audience, as a number of the follow up "questions" demonstrated the continuing frustration of trademark holders. They can't stand the idea that competitors can get in front of their customers by purchasing THEIR TRADEMARKS!  (even though across the hall the marketing department is probably doing the same thing to their competitors.)  If you can't beat em' . . ..

Clashes of new technology and old laws are what make this area of the practice interesting. The latest challenge for open meeting advocates appears to be virtual meetings held via instant messaging and group e-mail discussions. The issue arises when applicable open meeting laws provide that any time a quorum of a city council or similar body is present and discussing governmental business, such must be conducted in an open meeting where the public has the opportunity to be present and possibly participate.  The issue arose recently in Sioux City Iowa, where open meeting advocates claim that technology is assisting city council members in their efforts to sidestep the open meeting laws.  Read the story in the Sioux City Journal here.

A few courts have touched on the issue in the context of e-mail communications, such as Wood v. Battle Ground School District, and Beck v. Shelton, but there is certainly no definitive word on the subject.  The Beck court focused on whether the e-mails involved virtually simultaneous interaction, suggesting that instant messaging is more likely to result in a virtual meeting than the passive receipt of emails.

In any event, this issue will be one to watch as our "always-on" communications technology continues to permeate our daily lives.

Photo courtesy of David Elliott and Friends under Creative Commons