The Josh Kagan Blog

Biting Back at the Monster

I love reading about things like this.

Monster Cable Products Inc., a maker of audio/visual cables, recently sent a cease and desist letter to a much smaller company called Blue Jeans Cables.  Monster claims that Blue Jeans’ products infringe several of Monster’s design patents.

I’m not going to bother with legal commentary or any further explanation on this one because, as it turns out, the president of Blue Jeans happens to be an attorney with over two decades of litigation experience.  Audioholics reports that he responded with a rather pointed letter.  Here are the last few paragraphs of it:

            I have seen Monster Cable take untenable IP positions in various different scenarios in the past, and am generally familiar with what seems to be Monster Cable’s modus operandi in these matters.  I therefore think that it is important that, before closing, I make you aware of a few points.

            After graduating from the University of Pennsylvania Law School in 1985, I spent nineteen years in litigation practice, with a focus upon federal litigation involving large damages and complex issues.  My first seven years were spent primarily on the defense side, where I developed an intense frustration with insurance carriers who would settle meritless claims for nuisance value when the better long-term view would have been to fight against vexatious litigation as a matter of principle.  In plaintiffs’ practice, likewise, I was always a strong advocate of standing upon principle and taking cases all the way to judgment, even when substantial offers of settlement were on the table.  I am “uncompromising” in the most literal sense of the word.  If Monster Cable proceeds with litigation against me I will pursue the same merits-driven approach; I do not compromise with bullies and I would rather spend fifty thousand dollars on defense than give you a dollar of unmerited settlement funds.  As for signing a licensing agreement for intellectual property which I have not infringed: that will not happen, under any circumstances, whether it makes economic sense or not.

            I say this because my observation has been that Monster Cable typically operates in a hit-and-run fashion.  Your client threatens litigation, expecting the victim to panic and plead for mercy; and what follows is a quickie negotiation session that ends with payment and a licensing agreement.  Your client then uses this collection of licensing agreements to convince others under similar threat to accede to its demands.  Let me be clear about this: there are only two ways for you to get anything out of me.  You will either need to (1) convince me that I have infringed, or (2) obtain a final judgment to that effect from a court of competent jurisdiction.  It may be that my inability to see the pragmatic value of settling frivolous claims is a deep character flaw, and I am sure a few of the insurance carriers for whom I have done work have seen it that way; but it is how I have done business for the last quarter-century and you are not going to change my mind.  If you sue me, the case will go to judgment, and I will hold the court’s attention upon the merits of your claims–or, to speak more precisely, the absence of merit from your claims–from start to finish.  Not only am I unintimidated by litigation; I sometimes rather miss it.

          I will also point out to you that if you do choose to undertake litigation, your “upside” is tremendously limited.  If you somehow managed, despite the formidable obstacles in your way, to obtain a finding of infringement, and if you were successful at recovering a large licensing fee–say, ten cents per connector–as the measure of damages, your recovery to date would not reach four figures.  On the downside, I will advance defenses which, if successful, will substantially undermine your future efforts to use these patents and marks to threaten others with these types of actions; as you are of course aware, it is easier today for your competitors to use collateral estoppel offensively than it ever has been before.  Also, there is little doubt that making baseless claims of trade dress infringement and design patent infringement is an improper business tactic, which can give rise to unfair competition claims, and for a company of Monster’s size, potential antitrust violations with treble damages and attorneys’ fees.

            I look forward to receiving the information requested and will review it promptly as soon as it is received.

                                                            Sincerely,

                                                            Kurt Denke

Wonderful.  Absolutely wonderful.

Posted in Josh's Corner, Patent Problems | No Comments »

Briefly This Week

Here are some of the issues I’m following this week:

• A company named Psystar made headlines yesterday by offering to sell low-cost computers that are pre-loaded with the retail version of Mac OS X 10.5 “Leopard,” the next-generation operating system that Apple includes on new Macs and sells at retail as an upgrade for other Macs.  The problem is that Leopard’s EULA specifically forbids installing it on non-Apple hardware.  Now Psystar is threatening to challenge the enforceability of Leopard’s EULA if Apple mounts a legal action.  Probably a bad idea.
• Zango v. Kapersky: A software vendor is upset with the developer of an anti-spyware app that classified its product as malware.
• Elektra v. Barker: More on whether “making available” a copyrighted file constitutes infringement.

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CSS3 and Secondary Liability for Unauthorized Distribution of Fonts

The Internet has created interesting copyright law questions for many different kinds of media, from the photographs in Kelly v. Arriba Soft to the audio recordings in A&M Records v. Napster.  Typically these cases turn on whether the defendant–typically the trailblazing operator of some new Internet-based service–has distributed the plaintiff’s copyrighted material without authorization.

As Kelly illustrated, web pages are absolutely fair game for copyright infringement actions when they contain infringing materials.  Take a closer look at this very post as it appears in your computer’s web browser.  There are a few small graphics here and there such as the small “Linkedin” icon to the right, but the vast majority of this page is text.  As the author of the substance of this text–the “words” of it–I own the copyright to it and, by publishing it on this blog, I’m granting you a license to download, read, and use it under certain license terms that are outlined in the Creative Commons License that I’ve indicated at the bottom of the page.  But how about the “design” of the words?  I don’t own the copyright to the typography or font.  I certainly don’t have a right to distribute the font, and I’m certainly not authorized to convey any rights to you in that regard.  Luckily, thanks to the basic design of HTML and the Web, this has traditionally never been a problem.  No web page actually contains or distributes a copy of a font.  Web pages instead rely on tags written into the HTML which simply tell the receiving party’s computer’s web browser (in this case your web browser) which font or fonts to use for rendering the web page’s text.

So, for example, if I want the text of this post to display in the font called “Helvetica,” I insert a tag that tells your web browser to display that text in “Helvetica” and rely on your computer already having that font and using it to display the text.  If for some reason your computer does not have that font, your web browser will probably substitute the typeface with some other one, perhaps “Times New Roman.”  There’s no potential for copyright infringement here because the web standards in place simply don’t provide a mechanism for the distribution of a font; we’re merely using ones that you (the viewer) already have.

As you can imagine, this results in a frustrating situation for many web designers.  The inability to “push” fonts to visitors’ computers means that web designers are typically limited to a very small selection of “web-safe fonts,” or typefaces that are likely to be installed by default on wide variety of computers and operating systems.  Apple and others in the software business have recently been promoting a new standard for the web called CSS Level 3 (or “CSS3″) which provides, among many other things, a way for web designers to easily embed a copy of a font into a web page.  In theory, this would mean that a web designer could use any font he likes in his designs instead of being limited to only a handful of “web-safe” fonts.  The latest version of Safari, Apple’s freeware web browser application for Windows and Mac OS X, is among the first to support CSS3 and Apple has begun promoting this.  Specifically, the Safari website contains the following text as of this writing:

With CSS3 web fonts in Safari 3.1, web designers can go beyond web-safe fonts and use any font they want to create stunning new websites using standards-based technology. Safari automatically recognizes websites that use custom fonts and downloads them as they’re needed.

Typography designers are understandably disturbed by this sort of marketing because it could give some web designers the mistaken impression that it’s permissible to distribute copies of a font without authorization from the owner of the copyright in that font.  This sort of marketing language bears a scary resemblance to the U.S. Supreme Court’s holding in MGM v. Grokster, in which the Court unanimously declared that one who “actively induces” copyright infringement is secondarily liable for that infringement.  I don’t think it would be a stretch to call Apple’s “use any font they want to create stunning new websites” text an “active inducement” of that infringing activity.

Of course, there are obvious differences between the Grokster application and Safari.  Grokster was designed specifically to attract former users of Napster’s peer-to-peer network following that service’s annihilation, for the same purpose as Napster.  The Safari application is merely a cutting-edge web browser.  Indeed, Safari itself doesn’t provide for file distribution at all; it only provides a way to download information that has been posted.  There’s also a weak argument that Apple’s Safari website is aimed at end-users (communicating what they can expect from the application) and not web designers (telling them what they should do).  But, for the purposes of secondary liability, none of this matters.  At the end of the day, Apple’s Safari website is actively telling visitors that web designers can distribute any fonts they want for users to download through CSS3, and this sort of marketing language is dangerous.  There’s nothing wrong with offering CSS3 compatibility and advertising that fact, but in a post-Grokster world, Apple and other software companies with cutting-edge technology need to be more careful about publishing information that seems to promote use without regard to infringement.

Disclaimer: This weblog is an informational resource only. It is not designed to offer legal advice.

Update: I remembered this morning that PDFs can also include copies of the fonts used therein, depending on the settings of the software used to make them.  Some PDF creation software, like the one built into Mac OS X, seems to embed font files for every font used in a document.  Unless the PDF format provides some way to prevent end-users from accessing and using embedded fonts, this poses the same question as CSS3.

Posted in Copyright in the Digital Age, It Wasn't Me! Secondary Liability Online | No Comments »

Briefly This Week

Here’s a summary of the stories I’ve been following this week:

• Elektra v. Barker and London-Sire v. Doe:  Can merely “making available” a file on a P2P network constitute copyright infringement, or does infringement require that a plaintiff prove that the file was actually downloaded by a third party?  Maybe not.  Coincidentally, I’m currently working on a seminar paper on this very topic.
• Fair Housing Council of San Fernando Valley v. Roommates.com, LLC.:  Roommates.com was denied § 230 immunity by the Court of Appeals for the Ninth Circuit.  Eric Goldman comments on his blog.
  
• Perfect 10 v. Visa:  This is a secondary liability suit in which a copyright owner unsuccessfully sought damages from a group of credit card companies that process transactions for infringers overseas.  On appeal, the plaintiff has now been joined with an amicus brief filed by the MPAA, RIAA, and others, as well as another amicus brief filed by the an organization that polices with counterfeit apparel and sneakers.  I’ll comment on this sometime soon once I’ve had an opportunity to read the briefs.
• A class-action was settled by Apple last week after some consumers complained that the flat panel displays on their Apple notebook computers don’t display as many colors as they should, leading to inferior image quality.  This week, an identical suit was filed complaining that Apple’s “iMac” line of all-in-one desktop computers have the same problem.  Apple might settle again simply to avoid negative press, but the truth here is that all flat panel displays from all manufacturers have this issue.  No flat panel display can mimic every color that the human eye can see, so they all fake it using a technique called dithering.

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T-Mobile Claims to Own the Color Magenta

The writers of Engadget Mobile, a technology weblog that reports on wireless phones and carriers, reported today that they have received a letter from Deutsche Telekom, the parent company of T-Mobile.  In the letter, attorneys for Deutche Telekom ask that Engadget stop using the color magenta in the blog’s logo and headings because it threatens to dilute Deutche Telekom’s trademark.

Trademark law is intended to protect the public from confusion in the marketplace while protecting merchants who have spent time, energy, and money in presenting a product to the public.  A typical action for trademark infringement would require that there be some competition between the owner of the mark (here Deutche Telekom) and the using party, and–most importantly–some likelihood of confusion, mistake, or deception of consumers.  But here, T-Mobile and the Engadget blogs are not in competition with one another.  Each company provides very different products and services.  There’s also virtually no chance that a consumer could ever be confused about whether an Engadget blog was a service of T-Mobile, or vice versa.  Trademark infringement protects a trademark owner from having his or her mark used in connection with competing goods and services.  It does not, however, prohibit another from using that mark in connection with non-competing goods and services.  So long as the trademark is used in connection with goods and services that do not compete with the goods and services of the trademark owner, the trademark has not been infringed.  But Deutche Telekom is not claiming “infringement” here; they’re claiming “dilution.”  ”Dilution” under the U.S. Federal Trademark Dilution Act is a separate action that is available to provide protection even absent infringement, in response to trademark blurring and tarnishment of famous marks.

Let’s assume that the T-Mobile mark is sufficiently famous to qualify for protection under the Trademark Dilution Act.  To maintain a cause of action for trademark dilution, Deutche Telekom would need to show that Engadget Mobile’s use of the color magenta blurs the distinctiveness or tarnishes the trademark it holds.  The logo of the T-Mobile brand includes a solid magenta “T” with three horizontal gray squares; the logo of the Engadget Mobile blog includes the word “mobile” in graded magenta with three magenta rectangles in a vertical line that have been styled to mimic the signal bars on a wireless phone’s display.  ”Blurring,” the most basic kind of dilution, occurs when the use of a mark is “blurred” from association with only one market (here cellular phone services) to signify other products in other markets (here a weblog about mobile phones).  In Toys R Us v. Feinberg, the U.S. District Court for the Southern District of New York clarified that “blurring” occurs when a use of a mark lessens the capacity of a trademark owner’s identify and distinguish their goods or services.  26 F. Supp. 2d 639, 644.  Ergo, the obvious question here is whether the use of the color magenta in a blog about mobile phones would cause any “blurring” of T-Mobile’s mark.  Setting aside any feelings we might have about T-Mobile effectively claiming ownership over a color, does Engadget’s use of that color as an accent on its weblog affect the effectiveness of the magenta accent in T-Mobile’s branding?

Probably not.  The weblog’s use of magenta is not solid and pervasive like T-Mobile’s.  On my notebook computer’s display, it’s not even the same shade of magenta.  It is merely a one-off use of magenta in a logo.  Deutche Telekom might have a case if the Engadget Mobile weblog used design elements like gray squares in horizontal lines, or used magenta pervasively in the same way that T-Mobile’s materials use it, but the use of a similar shade of magenta probably would not be enough because it does not lessen the “punch” that T-Mobile’s magenta branding has on its website, stores, and marketing materials.  Under the controlling authority of Toys R Us and other dilution cases, a court would probably not allow Deutche Telekom to limit the ability of a non-competing website to use the color magenta in a way that does not mimic T-Mobile’s use of the color as a pervasive accent throughout its branding.

Disclaimer: This weblog is an informational resource only. It is not designed to offer legal advice.

Posted in Trademarks and E-Consumer Protection | No Comments »

JuicyCampus and the Limits of Section 230

JuicyCampus is an Internet forum that encourages visitors to post gossip and rumors relating to people at any of a number of colleges and universities in the U.S. (currently 59). The operators of the website purport to offer complete anonymity to posters by way of IP address masking and other policies; they claim that this fosters free speech that otherwise could not be possible. The website has been in service since sometime in August 2007. In the short period of time that has passed since then, it has already become a target of controversy because of its potential for anonymously spreading objectionable content like hate speech, libel, and privacy invasions. I have been periodically checking the website’s home page since I first learned of it two days ago; since then I have read front-page posts that purport to challenge particular students’ sexualities (typically called out by the targets’ full names), defend anti-Semitic viewpoints, and much more.

The most obvious potential for litigation against JuicyCampus, aside from the largely meritless consumer fraud action brewing against them in New Jersey, is a suit for libel by a hypothetical student who claims s/he has been defamed by something posted by a visitor to the website. Defamation is the communication of a false statement of fact that may harm the reputation of an individual. Courts have held that the posting of a defamatory statement to an Internet website is libel, the strongest form of defamation which is characterized by having the harmful statement published in a fixed medium. Section 230(c)(1) of the Communications Decency Act of 1996 provides immunity from certain kinds of civil liability, including defamation, for “providers of interactive computer services” who publish information provided by others. “Interactive computer services” includes website operators such as the operators of JuicyCampus. The relevant caselaw suggests that even when a website operator does not take steps to police content on his/her site, s/he will not be liable as a publisher for statements posted to the site by third-party visitors. The law instead views the website operator as more akin to an owner of a newsstand, distributing content written by others and not directly responsible for that content.

Section 230, a law that took effect in 1996, was inspired in part by Stratton Oakmont, Inc. v. Prodigy Services Co., a 1995 case in the New York State Supreme Court, in which a controversial opinion held that the defendant (an ISP and forum operator) could in fact be treated as the publisher of third-party postings to its Internet forum because it had an ability to police and delete messages that it found to be offensive. Service providers feared that the Stratton Oakmont decision would force them into one of two extreme positions, both of which were likely to cause backlash from users and would threaten the development of the Internet. On the one hand, service providers could opt to police Internet forums vigorously, filtering messages and aggressively deleting objectionable content to limit their liability. On the other hand, service providers could opt to shut their eyes entirely, refraining from moderating any posts whatsoever such that they could argue that they did not exercise any editorial control over the forum. With § 230, Congress gave service providers the safe harbor they required to build services like Internet forums free from fears of liability over content contributed by others. Section 230 also allowed for the proliferation of other Internet phenomena such as blogging, social networking, and content sharing. For example, could you imagine the burden that would be imposed on the authors of popular blogs if they were forced to moderate and research the accuracy of each and every comment that third parties post? In a world without § 230, it is likely that most popular bloggers would have preferred to disallow commenting entirely in order to avoid the burdens associated with it.

But JuicyCampus is not a blog. It is also not a typical Internet forum. There are at least two good reasons for this.

First, on most Internet websites that allow third-party contributions, users are required to identify themselves in some way. For example, if you choose to comment to this post on my blog, you are asked to provide an email address and choose a name. The name you choose may not be the name you use in real life, but it is designed to identify you in the discussion of comments that follows this post. This creates accountability in that your reputation–as pseudonymous as it may be–is attached to each comment you post. In contrast, JuicyCampus seems to make no such attributions. When a user writes a post on JuicyCampus, s/he has no incentive to warrant the accuracy or objectivity of the post. The website is entirely anonymous, which promotes a platform for posters who wish to recklessly disregard the truth, or worse.

Secondly, most Internet websites that allow third-party contributions keep certain logs about users that contribute content. For example, if you decide to leave a comment on this post as described above, the server that hosts this blog will also make note of your computer’s IP address, which is an identifier that could in most cases be used to accurately determine your identity if necessary. In the event that a plaintiff decides to bring an action against me as the publisher of information that you posted, I would be able to (and a court would probably order me to) provide the plaintiff with that information, helping the plaintiff to find the true publisher of the objectionable content. Ergo, although the plaintiff will not be successful in an action against me as publisher, the plaintiff might still have a cause of action against the third-party poster. In the case of this blog, that plaintiff still has a way to recover for his/her damages. But the same would not be true for an equivalent plaintiff bringing an action against JuicyCampus. Under the current body of caselaw associated with § 230, that plaintiff’s action against JuicyCampus would likely fail because the court would find that JuicyCampus is a mere distributor, and the plaintiff would probably not be able to ascertain the identity of third-party poster who is the proper defendant.

The operators of JuicyCampus would likely argue that their website is analogous to a big open area where anyone can speak without identifying himself. But, in the real world, even when people speak anonymously to strangers in an open area, they reveal certain aspects about themselves to that group, such as their voice and face. Internet posts often contain no such identifying characteristics. The consequences of this are clear: some victims of online torts may be left with absolutely no way to recover where the third-party poster–unquestionably the true tortfeasor–cannot be identified due to the anonymity policies of forums like JuicyCampus.

I’m not yet sure of the best solution to this problem. Should websites like JuicyCampus be prohibited from providing such complete anonymity to posters? Or, should they be required to give up some of their § 230 immunity in exchange for providing such anonymity? Or, can we as a society simply find it acceptable that, in this new age of technology, some plaintiffs simply will not be able to recover for their damages because of the anonymity required to allow free speech on sites like JuicyCampus?

Disclaimer: This weblog is an informational resource only. It is not designed to offer legal advice.

Posted in Defamation Online, It Wasn't Me! Secondary Liability Online | No Comments »

Hello, world.

There are millions of blogs on the Internet. A small percentage of those are about law, and an even smaller percentage of those focus on technology and Internet law. I find that annoying on a number of personal levels.

My goal here is to create the blog that I always wished existed for my own use. The theme is “technology and Internet law,” and the wording of that phrase is important.  I believe that technology will be driving many of the most  important legal questions to come in the near future, and so this will be, first and foremost, a blog about technology law and internet law.  Simple enough. I intend to present a summary, updated at least weekly, of the news relevant to the field, with commentary where possible.

But I can’t draw the line there and stop, because in the practice of law it isn’t enough to simply stay abreast of the law while ignoring the subject matter itself.  This is especially true where the subject matter is something as dynamic and complex as technology.  A good number of recent cases have been decided or at least colored by low-level misunderstandings of the technologies involved. Even when such cases still result in holdings that are just, they are unacceptable because they set precedents that can become dangerous in the future. To promote good public policy in this field and competently serve high technology clients, we as legal practitioners must remain lucid and competent in this area.  Ergo, this will also be a blog about technology.  Hard, cold, silicon and code technology. This includes current technology that poses potential legal questions as well as technology that is likely to arrive in the near future. Not so simple. But that’s our business: connecting strange new alien-looking concepts with old-fashioned traditional jurisprudence in ways that are meaningful for clients and judges alike…and no one can do that without a firm grip the industry and its trends.

Of course, at the end of the day, this is still only a blog. That means I’m likely to occasionally deviate from the themes above and post about something only tangentially relevant that came up in a conversation with a colleague, law professor, or friend. But that’s also why I think a blog like this can be so interesting. You, as the reader, are free to comment on any topic you like. Start a conversation. Or, better yet, you can write your own post on your own blog and track back, providing the other readers with an opposing or concurring viewpoint.

Hello, world.

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