Category Archives: Litigation

Why Garcia Matters: The Unraveling Of An Uneasy Bargain

It’s been a few days since Hon. Alex Kozinski, Chief Judge of the Ninth Circuit (Federal) Court of Appeals, issued his decision in Garcia v. Google et al, relating to whether or not an actress whose image and actions were used in an anti-Islam film polemic could insist that YouTube (owned by Google) take down the film. Hon. Kozinski decided that she could, finding, in an unusual procedural position (review of a denial of a motion for a preliminary injunction) that she likely has a cognizable copyright interest in her performance. The significance of her having a colorable copyright interest is that Google/YouTube is arguably liable for copyright infringement if it ignores her request to remove the infringing material. This exposure arises under the Digital Millenium Copyright Act, which provides a “safe-harbor” for companies hosting infringing materials, provided that they acted to remove the materials after notice. This is generally referred to as the DMCA takedown procedure.

So, to summarize, Google did not remove the video after her take-down requests (8 of them, in fact) because Google did not believe that she, as an actor in the film, had a protectible copyright interest. Hon. Kozinski found she did have such an interest. Thus, then, ergo, the film should be removed from Google’s service.

Many estimable scholars have written in the succeeding days about how wrong-headed this decision is, strictly on copyright grounds. I tend to agree. True, there is a mystifying (to me, at least) discussion about express and implied licenses which looks to be little more than a mechanism for allowing the Court to make the case that Ms. Garcia was taken advantage of, lied to, and is otherwise not at fault. I’ll leave that to scholars.

Under the facts set out by both the majority and minority decisions, Ms. Garcia has suffered a wrong. She was paid $500 for a part in a film that was never released. Instead her footage was repurposed into the objectionable work, and words she never spoke were overdubbed onto her performance. Because the film is ill-liked by certain interests, her participation resulted in death threats and other attacks that none of us sign up for.

What, then, was the wrong?

That’s the slippery problem here. Google harbored no demonstrable ill-will toward her: it was simply the platform by which the film was displayed. Ms. Garcia was duped by the people who filmed her and they carried out the ruse. She sued them. According to the 9th Circuit Opinion, they never answered. They have gone to ground. In common parlance, they are judgment proof, or at least aren’t willing to answer to Ms. Garcia in court. see footnote 1: ” Although Garcia’s suit also named the film’s producers, only Google,which owns YouTube, answered the complaint.”

Google answered. Google is unlikely to be legally responsible for bad things that happened to Ms. Garcia, because of section 230 of the Communications Decency Act which  says that “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider” (47 U.S.C. § 230). (emphasis supplied).

In other words, and to paint the strokes very broadly, Google can’t be responsible to Ms. Garcia for simply hosting the film on YouTube under theories of tort which she might have available for the doubtless personal anguish she has suffered. For example, she might have claims of misappropriation of her likeness, false light, libel (a stretch) or some other theory that would get at how she has suffered at the hands of the producers and filmmakers who put her in this position.

But not Google, thanks to section 230.

As the Electronic Frontier Foundation states:

 In other words, online intermediaries that host or republish speech are protected against a range of laws that might otherwise be used to hold them legally responsible for what others say and do. The protected intermediaries include not only regular Internet Service Providers (ISPs), but also a range of “interactive computer service providers,” including basically any online service that publishes third-party content. Though there are important exceptions for certain criminal and intellectual property-based claims, CDA 230 creates a broad protection that has allowed innovation and free speech online to flourish.

Can’t argue with that either… Section 230 has provided a means for all manner of hosted material, including some pretty heinous stuff (no, I refuse to link it) to be distributed without the hosts (YouTube, Twitter,  you name it) having legal exposure.

Except. Now look back at the EFF commentary above: “there are important exceptions for certain criminal and intellectual property-based claims”

Boom. Enter Hon. Kozinski, and Garcia’s counsel. It was necessary to carve out an identifiable copyright interest that Garcia could assert, so that Google would not enjoy the protections of Section 230.

Most would say that section 230 allowed the Modern Internet to grow, expand, and flourish. Back in the Internet Stone Age, there were cases litigated against Prodigy (look it up), Compuserve, and other hosts, and their flexibility in offering services was likely hindered by uncertainty of when and under what circumstances they could get tagged for allowing someone else to use their service to post, let’s say, libelous material. The story (allegedly) goes that the guy on whom Jonah Hill’s character was based in “Wolf of Wall Street” was incensed at a posting on Prodigy and sued Prodigy for libel in a third party post. Stratton Oakmont, Inc. et al. v. Prodigy Services Company, et al. 1995 N.Y. Misc. Lexis 229, (N.Y. Sup. Ct. Nassau Co., 1995) motion for renewal denied 1995 WL 805178 (Dec. 11, 1995).That was the environment before Section 230.

So, between section 230, and the DMCA copyright safe harbor, it seems there was an uneasy bargain struck (see the title of this post) to say, essentially, that people enabling internet services would not be responsible for “soft” injuries to persona, bad feelings, hurt feelings, harm to reputation, the kind of things that tort law covers. On the other hand, economic injuries, like copyright infringement, were fair game–but only if the DMCA safe harbor rules were ignored.

But, Hon. Kozinski has thrown a wrench into the works. Ms. Garcia’s harm is real, but is it economic? It is now, so long as Garcia stands. For years, the on-line world operated by the bargain struck above, but now a personal interest not to be duped or mis-presented has been characterized as an economic/copyright interest (“Garcia may assert a copyright interest only in the portion of “Innocence of Muslims” that represents her individual creativity“).

That’s what the fuss is about.

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Gnarly Problem Produces Peculiar Solutions

The scourge of Patent Trolls is much-discussed, and ill-understood. Not a day goes by when one or more solutions to the problem is not offered. Yet, suits by Non-Practicing Entities, the polite word for people who sue for a living, remains steady. Some say it’s an inefficient use of limited Court resources. Others say it’s just people cleverly making the U.S. Patent enforcement system work for them. The truth lies somewhere in the middle. Then again, a troll was sued this week for RICO violations, on the basis of allegedly frivolous claims filed in a number of Districts.

But, courts have taken notice, and I have personally seen it in my practice, even within the last few months.

Now, we learn of a Federal Judge in the Northern District of California, who has taken matters into his own hands. Apparently the (now) unfortunate troll, er, NPE, tried to gin up a sham office in East Texas, to try to get venue there. That failed, and when the case ended up in N.D. Cal, a judge there decided to drill a bit deeper.

In his order leading up to trial later this month of the patent infringement claims brought by non-practicing entity (“NPE” or “patent troll”) Network Protection Services, LLC (“NPS”), Judge Alsup suggested he’d allow the jury to hear evidence of how:

NPS manufactured venue in Texas via a sham. [NPS founders] Ramde and Lam rented a windlowless file-cabinet room with no employees in Texas and held it out as an ongoing business concern to the Texas judge. They also held out [alleged employee] Cuke as its ‘director of business development’ but this too was a sham, a contrivance to manufacture venue in the Eastern District of Texas.

WHY IP? WHY THINK IP?

Why Intellectual Property? It’s a question I get a lot, from people who know that IP issues are on the top of my professional mind.

(Fortunately, that’s not all that’s on my mind, but the question of why The Infamous Stringdusters are not as lauded as Beyonce is a question for another day.)

Well, let’s start here: ” intellectual property accounts for 20% of U.S. GDP, and nearly 40% of economic growth. Furthermore, IP industries account for 74% of the county’s exports, amounting to $1 trillion.”  Think that one over. We don’t make things here, much, anymore. We develop ideas and neat, efficient implementations of ideas. Even where we would seem to be leaders in manufacturing, such as the automotive industry, not a car would be made without parts outsourced from Mexico, China, Japan , you name it. The Chevy Aero has 98% of its parts sourced outside the U.S. The Ford Expedition? 50/50.  That’s where we are going. So, that is “Why IP?”

I recently rebranded this blog and my Twitter feed to THINKINGIP for that very reason. The kinds of knowledge based solutions (and problems) that arise in everyday life, and most certainly in the life of an IP attorney such as me are mind-numbing. Yet, they must be attended to. There is a burgeoning industry of court actions by “trolls” (more benignly known as Non-Practicing Entities)  who seek damages for new implementations of existing exclusively-protected rights (whether patent or copyright). One might conclude that we are essentially eating our young, but that’s what happens when things are built elsewhere.

To review the kinds of things I’ve discussed, or Tweeted about over the last few weeks:

Chuck Shumer promotes fashion design copyright now that Sandy is not a problem. http://dld.bz/bSCbm 

North Face tries to stop trademark parodies. http://dld.bz/bSBZZ 

Audi doesn’t get http://Audicity.com . No bad faith. http://dld.bz/bSuFG 

IP protection for aboriginal cultures. http://dld.bz/bSuEV 

Some gruel, please, sir? Copyright Office wants to hear what you think about “the state of play of orphaned works” http://dld.bz/bSuE2 

Easter Egg in iOs6 privacy policy? http://dld.bz/bSuEv  

Copyright trumps state law claims. http://dld.bz/bSuEg  

When a customer list can be a trade secret. In Cali. http://dld.bz/bRXV4 

How to brand your baby, PTO-sssstyle. http://dld.bz/bRXUu  #THINKINGIP

Three words. Cloud. Security. Nightmares. http://dld.bz/bRKFQ 

Republicans Retreat On Copyright Reform? http://shar.es/G95RM  via@sharethis

Updated post on GOP’s pulling Copyright Report for lack of “balance”https://frawleylegal.wordpress.com/2012/11/18/copyright-reform-just-dont-tell-mickey/ …

Wow, who saw this coming? (everybody) digital borrowers of book also buy books, a lot. http://dld.bz/bRKFh 

Twinkies to fold. http://dld.bz/bRKMu  Lots of sweet IP http://dld.bz/bRKMC 

Cy pres award to advocacy groups disfavored in some class action settlements. http://dld.bz/bRKE2  Plaintiff’s counsel still eat well.

And on and on.  So, that’s WHY IP? Please follow me @#THINKINGIP on Twitter. There are no discernible prizes (yet), but you might get a chuckle.

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Recognition

I am happy to announce  that my law practice has been ranked among the “2013 Best Law Firms” by U.S. News Media Group and Best Lawyers. The rankings, including 30,322 rankings of 8,782 law firms in 81 practice areas, will be featured in the November print issue of U.S.News & World Report.

These rankings, which are presented in tiers, showcase 9,633 different law firms ranked nationally in one or more of 75 major legal practice areas and in metropolitan or state rankings in one or more of 119 major legal practice areas. The Law Offices of Alfred C. Frawley III (that’s me!) received rankings in the following practice areas for Portland Maine:

Trademark Law

Copyright Law

Intellectual Property Litigation

“U.S. News is the world’s leading publisher of institutional rankings based on both objective data and peer evaluations,” says Steven Naifeh, President of Best Lawyers. “We are combining this expertise with Best Lawyers’ experience of providing rankings of individual lawyers based on peer reviews for almost three decades. By combining hard data with peer reviews, and client assessments, we believe that we are providing users with the most thorough, accurate, and helpful rankings of law firms ever developed.”

These reputational survey responses were combined with more than 3.1 million evaluations of individual lawyers in these firms in the most recent Best Lawyers survey of leading lawyers. Hard numbers were also used to develop the practice area rankings — data about numbers of lawyers and their previous experience, numbers of clients within different billing ranges, numbers of transactions and litigation matters at different dollar levels; pro-bono commitment, diversity, and other objective data.

About The Law Office of Alfred C. Frawley III

Alfred C. Frawley, III is an Intellectual Property attorney with over 30 years of experience in a wide range of legal fields. His concentration is in complex business litigation, intellectual property and technology law. Fred is one of Maine’s most experienced attorneys in intellectual property, antitrust, and trade regulation. More information about the firm is available at http://www.frawleylegal.com. Fred publishes frequently on his ThinkingIP blog (https://frawleylegal.wordpress.com/) and on Twitter @THINKINGIP

IS TRADEMARKING A VERB?

First off, this is not as silly a question as it may seem. The question arose during a spirited online discussion group exchange in response to an ABA Business Section advert concerning a CLE session they are holding.

The argument goes something like this. “Trademarking” is not a verb. What is being discussed in the shorthand of “securing a trademark” rather has to do with seeking a trademark registration. This is an important distinction, because, under the US system (common law) trademark rights arise based upon use in the marketplace. You can’t get a registration without use. And you can have protectible common law trademark rights through use, even without a registration. That’s not to say a business owner should not seek registration, it’s just that, at is core, a trademark is only as strong as the associations associated with the mark in the marketplace.

Think of it this way: the trademark law is the original consumer protection statute. Trademark law is designed to prevent confusion among consumers in the marketplace. Yes, trademark owners possess the rights, and yes, the owners can enforce the rights (for the most part). But I always quiver when a client wants to talk about the exclusive right to use a word. Try telling that to Delta Air Lines, Delta Dental, Delta Van Lines and Delta Faucets. At best a registration memorializes and (after incontestability  adheres a certain exclusive right to use a mark–but only with specific goods.

To take an extreme example from my own practice (identities changes to preserve client confidentiality), a plumbing supply distributor that we will call JEROME’S had an extensive retail and wholesale business throughout the Northeast U.S. They has been using the JEROME’S mark for thirty or more years and whenever a consumer heard the name JEROME’S, they thought of my client. Before my representation, JEROME’S had not thought to register their mark. Now they wanted to franchise some areas and the franchise consulted correctly reviewed their IP portfolio (which was empty of registrations). I did a search and discovered a registration for JEROME’S for plumbing supply services, based in Omaha Nebraska. That Jerome’s had offices in Omaha and across the Missouri River in Iowa. They were in Interstate Commerce and thus qualified for federal registration. Which they had secured in 1953. Incontestable since before my client was in business.

Yet, even then my client had recourse. The Federal nationwide registration was good, but there was never any use in the Northeast. So, we filed a concurrent use application, and after Omaha Jerome’s got a lawyer who knew what he was talking about, an accommodation was reached, for the opposing counsel knew that our use in the Northeast would trump their Nationwide registration. JEROME’S now has concurrent registrations. Usage counts.

Chambers and Partners-USA

Thanks to Chambers and Partners USA for recognizing my practice in the field of IP litigation for 2012-2013. You can see the description here.

From Chambers and Partners’ site: “Chambers USA ranks the leading firms and lawyers in an extensive range of practice areas throughout America. The research is in-depth and client focused and the guide is read by industry-leading companies and organizations throughout the US and worldwide. It is also widely used by firms in all states for referral purposes.”

Most ranked attorneys are with established firms, so I am particularly grateful that Chambers continued to recognize me, as a sole practitioner (for now).

Making Something Common Distinctive as a Source Identifier

As anyone who has watch “Game of Thrones” knows, the red wax seal has been around forever (or at least since whenever “Game of Thrones” may have occurred). It was a common way of sealing correspondence and a mark that the correspondence authentically came for the writer.

Many years later, Maker’s Mark, which sells bourbon adopted the red seal on its bottle. The Sixth Circuit Court of Appeals has determined that the red wax seal that Maker’s Mark Distillery has registered as a trade dress element used on its Kentucky bourbon bottles is protected under trademark law due to its strength and distinctiveness in the marketplace, thus upholding a lower court ruling that Jose Cuervo infringed the mark by using a similar element on its tequila bottles. Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc., Nos. 10-5508/5586/5819 (6th Cir., decided May 9, 2012). With the apparent care of a connoisseur, the opinion’s author opens with a detailed history, part legend, of the birth of bourbon and explains how Maker’s Mark came to use the red dripping wax seal on its bottles. According to the court, the evidence fully supported the district court’s evaluation of the strength of the mark and its balancing of the factors regarding consumer confusion over Jose Cuervo’s similar mark. The court also upheld the lower court’s award of partial costs and fees to the plaintiff.

This is a lesson, I suppose, that even the most common or banal word or design (“Apple, anyone?), can operated as a powerful as a source identifier, if enough time and marketing capital is sunk into it and if the association holds true with the consuming public.